[gnso-iocrc-dt] Re: Summing up Option 7
Colleagues, As before, this comment is made only in my personal capacity. The Greek statute (Article 3 N. 2598/1998 as supplemented and in force by Article 2 of Law 2819/2000 and Article 16 para. 2-3 N. 2947/2001) is cited as an example of the strong international sui generis protection of the Olympic marks. The law is presently in effect, protects the literal words OLYMPIC and OLYMPIAD, and reserves their use to the International Olympic Committee and the Greek Olympic Committee. This has been confirmed by Greek counsel and is supported by Greek government officials. According to the GAC, "The proposal is based on the unique tapestry of legal protections provided.to the IOC through the Nairobi Treaty and through laws in multiple national jurisdictions." The Greek statute is cited in the attached September 14 GAC letter as one of the multiple national jurisdictions' laws protecting the Olympic marks. 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 ________________________________________ From: owner-gnso-iocrc-dt@xxxxxxxxx [owner-gnso-iocrc-dt@xxxxxxxxx] on behalf of Konstantinos Komaitis [k.komaitis@xxxxxxxxxxxx] Sent: Sunday, February 19, 2012 7:41 AM To: Jim Bikoff; Chuck Gomes; Jeff Neuman Subject: Re: [gnso-iocrc-dt] Re: Summing up Option 7 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> Attachment:
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