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

[Konstantinos Komaitis <k.komaitis@xxxxxxxxxxxx>]

All,

This note is on my personal capacity rather than that of NCUC or NCSG.

A couple of thoughts that I think are relevant in our discussions. First I 
think that it is not wise to start referring to national legislation as this is 
not very helpful in this context – the only legal instruments we really should 
be looking at in determining the types of protection for those names are the 
international ones. However, because there was some reference to the Greek law 
2598/1998, this law seeks to protect the commercial use of the mark (as 
reflected in the Nairobi Treaty) and any use of the mark along with the term 
"Athens 2004". When paragraph 7 talks about domain names, it refers to domain 
names incorporating the mark along with the term "Athens 2004".

"7. The name and the distinctive title of the Company, established in the 
article 2 of the present Law, and its subsidiaries, and especially the terms 
“Athens 2004”, “Olympic Games - Athens 2004”, “Olympic Games 2004”, “Olympic 
Games-Greece” and any other relevant terms in Greek or any language, are under 
the protection of the present article. The relevant prohibition is also 
extended in the use of these terms as domain names on the internet."

The second point is that it is the commercial use of these marks that is 
prohibited, a point which is also crucial. Are we therefore suggesting that if 
a Greek community  wanted to register a name for community purposes or 
non-commercial ones they would still have to have an authorization from the 
IOC? This is unreasonable and we need to be cautious as to the kind of powers 
we are granting here and the extent of protection we are willing to provide. A 
community should be allowed to register the term even if IOC for instance 
decides not to, as long as it does not seek to infringe upon the Olympic mark 
as reflected in the Nairobi Treaty.

I would also like to draw your attention to the various international 
conventions on the protection of Greece's cultural heritage by UNESCO.


Thanks

Konstantinos


--
Dr. Konstantinos Komaitis,
Senior Lecturer in Law,
Director of LLM in Information Technology and Telems. Law,
Director of Postgraduate Instructional Courses,
ICANN NCUC Chair
University of Strathclyde,
Graham Hills Bld.
50 George Street,
Glasgow, G1 1BA,
UK
tel: +44 (0)141 548 4306
email: k.komaitis@xxxxxxxxxxxx

From: Jim Bikoff <jbikoff@xxxxxxxxx<mailto:jbikoff@xxxxxxxxx>>
Reply-To: Jim Bikoff <jbikoff@xxxxxxxxx<mailto:jbikoff@xxxxxxxxx>>
Date: Sat, 18 Feb 2012 01:21:31 +0000
To: Chuck Gomes <cgomes@xxxxxxxxxxxx<mailto:cgomes@xxxxxxxxxxxx>>, Jeff Neuman 
<Jeff.Neuman@xxxxxxxxxx<mailto:Jeff.Neuman@xxxxxxxxxx>>, 
"gnso-iocrc-dt@xxxxxxxxx<mailto:gnso-iocrc-dt@xxxxxxxxx>" 
<gnso-iocrc-dt@xxxxxxxxx<mailto:gnso-iocrc-dt@xxxxxxxxx>>
Subject: [gnso-iocrc-dt] Re: Summing up Option 7

Chuck, I am suggesting that. The protection granted we believe applies to 
identical matches whether or not the names are registered by the protected 
entities.

Best,

Jim
Sent via BlackBerry by AT&T
________________________________
From: "Gomes, Chuck" <cgomes@xxxxxxxxxxxx<mailto:cgomes@xxxxxxxxxxxx>>
Date: Sat, 18 Feb 2012 00:58:10 +0000
To: Jim Bikoff<jbikoff@xxxxxxxxx<mailto:jbikoff@xxxxxxxxx>>; Neuman, Jeff 
(Jeff.Neuman@xxxxxxxxxx<mailto:Jeff.Neuman@xxxxxxxxxx>)<Jeff.Neuman@xxxxxxxxxx<mailto:Jeff.Neuman@xxxxxxxxxx>>;
 
gnso-iocrc-dt@xxxxxxxxx<mailto:gnso-iocrc-dt@xxxxxxxxx><gnso-iocrc-dt@xxxxxxxxx<mailto:gnso-iocrc-dt@xxxxxxxxx>>
Subject: 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> 
[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<mailto:Jeff.Neuman@xxxxxxxxxx>); 
gnso-iocrc-dt@xxxxxxxxx<mailto: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>