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

[Thomas Rickert <rickert@xxxxxxxxxxx>]

Jim,
thanks for your proposal.

I have one question / suggestion for you.

>         (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.
To me, there is no reason why a party that has obtained a letter of 
non-objection needs to make explanations as required by (c) since I am certain 
that such explanations will be asked for prior to issuing the letter of 
non-objection.

In the light of this assumption I am not sure whether the wording reflects 
that. One may read it as either (a) or (b) needs to be present together with 
(c).

I therefore suggest you put (b) and (c) in one section so that the clause reads:

 
>      (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 
> 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. 
>  
>                 (c) 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.

Thanks,
Thomas

Am 21.02.2012 um 07:18 schrieb Alan Greenberg:

> 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
>> jbikoff@xxxxxxxxx
>>  
>> 
>> 
>> From: "Gomes, Chuck" Date: February 20, 2012 3:12:11 PM EST
>> To: Jim Bikoff <jbikoff@xxxxxxxxx>, "Neuman, Jeff (Jeff.Neuman@xxxxxxxxxx )" 
>> >, " <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 (Jeff.Neuman@xxxxxxxxxx); 
>> 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" <cgomes@xxxxxxxxxxxx> 
>> Date: Sat, 18 Feb 2012 00:58:10 +0000
>> To: Jim Bikoff<jbikoff@xxxxxxxxx>; Neuman, Jeff (Jeff.Neuman@xxxxxxxxxx 
>> )<Jeff.Neuman@xxxxxxxxxx >; 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: 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
>>  
>>  
>>  
>>  
>>  

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