RE: [gnso-iocrc-dt] RE: Summing up Option 7

["Shatan, Gregory S." <GShatan@xxxxxxxxxxxxx>]

That would make sense to me, since these are supposed to be "reserved
names" (except if the IOC/RC wants to register them).
 
Greg

________________________________

From: owner-gnso-iocrc-dt@xxxxxxxxx
[mailto:owner-gnso-iocrc-dt@xxxxxxxxx] On Behalf Of Gomes, Chuck
Sent: Friday, February 17, 2012 7:58 PM
To: Jim Bikoff; Neuman, Jeff (Jeff.Neuman@xxxxxxxxxx);
gnso-iocrc-dt@xxxxxxxxx
Subject: [gnso-iocrc-dt] RE: Summing up Option 7



I have one question Jim:  Are you suggesting that an exact match of one
of the names should not be allowed to be registered by another entity
even if the RC or IOC does not elect to register the names?

 

Chuck

 

From: owner-gnso-iocrc-dt@xxxxxxxxx
[mailto:owner-gnso-iocrc-dt@xxxxxxxxx] On Behalf Of Jim Bikoff
Sent: Friday, February 17, 2012 5:22 PM
To: Neuman, Jeff (Jeff.Neuman@xxxxxxxxxx); gnso-iocrc-dt@xxxxxxxxx
Subject: [gnso-iocrc-dt] Summing up Option 7

 

Jeff, 

 

This note, like yours, is made not as an IPC member, but rather in my
individual capacity. 

 

This note includes the Olympic and Red Cross terms, although we
understand that the IRC will submit its own comments on the options.  

 

The first parts of Option 7 look appropriate as you have summarized
them, i.e.:

 

"Option 7:  Treat the terms set forth in Section 2.2.1.2.3 as "modified
reserved names" meaning: 

 

    a)      The names are available as gTLD strings to the International
Olympic Committee, International Red Cross and Red Crescent Movement, as
applicable. 

 

    b)      Applied-for gTLD strings are reviewed during the String
Similarity review to determine whether they are similar to those in
Section 2.2.1.2.3. An application for a gTLD

             string that is identified as too similar to a Reserved Name
will not pass this initial review." 

 

In section c), the core issue is, if an application fails to pass
initial string similarity review, what standard should be used  for an
applicant to try to overcome the adverse review?  I suggest: 

 

        (1) If the applied-for TLD matches any of the terms in 2.2.1.2.3
(e.g., ".Olympic" or ".RedCross"), it cannot be registered by anyone
other than the IOC/RC. 

 

        (2) If the applied-for TLD is not identical to any of the terms
in 2.2.1.2.3, but fails initial string similarity review with one of
those protected terms, the applicant may attempt to: 

    

            (a) obtain a letter of non-objection from the IOC or Red
Cross; or

             

            (b) claim that it has a legitimate interest in the string;
and

 

            (c) explain why it believes that the new TLD is not
confusingly similar to one of the protected strings and makes evident
that it does not refer to the IOC, the Red Cross, or any Olympic or Red
Cross activity. 

 

                (d) A determination in favor of the applicant under this
provision would not preclude the IOC, the Red Cross, or other interested
parties from bringing a legal rights objection or otherwise contesting
the determination.

 

{Explanation: 

 

In (b), a claim of "legitimate interest" would encompass a broad range
of attempted justifications (including, as you have noted,"traditional
knowledge and cultural heritage,"), without unduly suggesting that the
applicant has "rights," or that the claim of legitimacy would prevail
over the protected terms. A showing of ordinary trademark rights would
not typically suffice to overcome the protections afforded the Olympic
and Red Cross marks, because they are afforded superior legislative
protection that trumps ordinary trademark rights. This was enunciated by
the U.S. Supreme Court in San Francisco Arts & Athletics v. United
States Olympic Committee and International Olympic Committee, 483 U.S.
522 (1987).  See also the Greek Statute Article 3 Law 2598/1998, a
translation of which is attached, reserving the right to use the terms
"Olympic" and "Olympiad" to the Olympic Committee. 

 

In (c), by the same token, the IOC and Red Cross are afforded a high
level of statutory protection against dilution of their trademarks
through use by unauthorized parties, even in the absence of confusing
similarity. See e.g., San Francisco Arts & Athletics, supra. So a
showing that an applied-for TLD is not confusingly similar to a
protected string would not, standing alone, overcome an initial refusal.


 

If, on the other hand,  in an exceptional case, an applicant can
demonstrate that it has an established legitimate interest in its
applied-for TLD string, and that the TLD is not confusingly similar to
one of the protected strings and makes evident that it does not refer to
the IOC, the Red Cross, or any Olympic or Red Cross activity, then that
might constitute an appropriate basis for an appeal, to be considered on
a case by case basis. 

 

In (d), the provisions allowing an applicant to seek recourse from an
adverse initial string similarity review permit the applicant to express
its claims fully.  These provisions should not be construed to imply
that an applicant's claims would  necessarily prevail over the protected
terms, nor should they be construed  to prejudice, restrict or diminish
in any way the IOC 's,  Red Cross' or other interested parties' ability
to enforce their legal rights and contest an application.}   

 

Best regards, 

 

Jim

 

James L. Bikoff

Silverberg, Goldman & Bikoff, LLP

1101 30th Street, NW

Suite 120

Washington, DC 20007

Tel: 202-944-3303

Fax: 202-944-3306

jbikoff@xxxxxxxxx <mailto:jbikoff@xxxxxxxxx> 
 
* * *
 
This E-mail, along with any attachments, is considered confidential and may 
well be legally privileged. If you have received it in error, you are on notice 
of its status. Please notify us immediately by reply e-mail and then delete 
this message from your system. Please do not copy it or use it for any 
purposes, or disclose its contents to any other person. Thank you for your 
cooperation.
* * *
To ensure compliance with Treasury Department regulations, we inform you that, 
unless otherwise indicated in writing, any U.S. Federal tax advice contained in 
this communication  (including any attachments) is not intended or written to 
be used, and cannot be used, for the purpose of (1) avoiding penalties under 
the Internal Revenue Code or applicable state and local provisions or (2) 
promoting, marketing or recommending to another party any tax-related matters 
addressed herein.
Disclaimer Version RS.US.1.01.03
pdc1