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

[Alan Greenberg <greenberg.alan@xxxxxxxxx>]

Jim,

My first reaction to Chuck question was similar to yours, however, 
on  thinking about it, how would we handle that situation where the 
organization who has the absolute rights to those strings chooses to, 
for whatever reasons, wants to have a third-party take responsibility for it.
Alan

At 20/02/2012 05:41 PM, Jim Bikoff wrote:
> Chuck,
>
> If there was such an application a letter of non-objection or 
> support would probably not be issued since for exact matches, as 
> contrasted with the proposal for similar strings,  the words have 
> been provided absolute protection.
> Best,
> 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
> <mailto:jbikoff@xxxxxxxxx>jbikoff@xxxxxxxxx
>
>
>
> From: "Gomes, Chuck" Date: February 20, 2012 3:12:11 PM EST
> To: Jim Bikoff <<mailto:jbikoff@xxxxxxxxx>jbikoff@xxxxxxxxx>, 
> "Neuman, Jeff 
> (<mailto:Jeff.Neuman@xxxxxxxxxx>Jeff.Neuman@xxxxxxxxxx)" >, " 
> <<mailto:gnso-iocrc-dt@xxxxxxxxx>gnso-iocrc-dt@xxxxxxxxx>
> Subject: RE: Summing up Option 7
>
> Jim,
>
> I have one more clarifying question about this:  In the case of an 
> exact match, would you support registration by another entity if the 
> IOC or RC provided a letter of support or non-objection?
> Chuck
>
> From: Jim Bikoff [mailto:jbikoff@xxxxxxxxx]
> Sent: Friday, February 17, 2012 8:22 PM
> To: Gomes, Chuck; Neuman, Jeff 
> (<mailto:Jeff.Neuman@xxxxxxxxxx>Jeff.Neuman@xxxxxxxxxx); 
> <mailto:gnso-iocrc-dt@xxxxxxxxx>gnso-iocrc-dt@xxxxxxxxx
> Subject: 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" <<mailto:cgomes@xxxxxxxxxxxx>cgomes@xxxxxxxxxxxx>
> Date: Sat, 18 Feb 2012 00:58:10 +0000
> To: Jim Bikoff<<mailto:jbikoff@xxxxxxxxx>jbikoff@xxxxxxxxx>; Neuman, 
> Jeff 
> (<mailto:Jeff.Neuman@xxxxxxxxxx>Jeff.Neuman@xxxxxxxxxx)<<mailto:Jeff.Neuman@xxxxxxxxxx>Jeff.Neuman@xxxxxxxxxx>; 
> <mailto:gnso-iocrc-dt@xxxxxxxxx>gnso-iocrc-dt@xxxxxxxxx<<mailto:gnso-iocrc-dt@xxxxxxxxx>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: 
> <mailto:owner-gnso-iocrc-dt@xxxxxxxxx>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 
> (<mailto:Jeff.Neuman@xxxxxxxxxx>Jeff.Neuman@xxxxxxxxxx); 
> <mailto:gnso-iocrc-dt@xxxxxxxxx>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
> <mailto:jbikoff@xxxxxxxxx>jbikoff@xxxxxxxxx