[gnso-iocrc-dt] Protecting the Olympic Names at the Second Level of New gTLDs
Dear All,
Last night, Jim Bikoff sent out the attached answers to the Group's questions
about protecting the Olympic names at the second level of new gTLDs.
There is some question as to whether everyone received the email, due the size
of its three attachments.
We are therefore resending the email to you, with two of the attachments to
follow separately.
David K. Heasley
Silverberg, Goldman & Bikoff, LLP
1101 30th Street, N.W.
Suite 120
Washington, D.C. 20007
Tel. 202.944.2339
Fax 202.944.3306
dheasley@xxxxxxxxx
________________________________
From: Jim Bikoff
Sent: Tuesday, April 17, 2012 9:37 PM
To: Neuman, Jeff (Jeff.Neuman@xxxxxxxxxx); gnso-iocrc-dt@xxxxxxxxx
Cc: David Heasley; Kiran Malancharuvil
Subject: Protecting the Olympic Names at the Second Level of New gTLDs
Introduction-- The ICANN Board recently resolved to leave unchanged the
protections it has provided to the Olympic and Red Cross names at the top level
in Section 2.2.1.2.3 of the Applicant Guidebook. That Section of the Applicant
Guidebook is based on the ICANN Board's Singapore resolution to protect the
Olympic and Red Cross names, and will govern the first round of generic Top
Level Domain applications, soon to be revealed. It may be modified in the
future, based upon experience.
The Drafting Team's present task is to implement the Governmental
Advisory Committee's proposal for protection at the second level of new generic
Top Level Domains. This proposal, as implemented, should complement the
protection at the top level.
At our last Drafting Team teleconference, the group members identified
four key questions, the answers to which will inform our discussion about
protecting the Olympic names at the second level of new gTLDs.
1. How significant is the problem posed by unauthorized registrations of
Olympic domain names?
Every month, hundreds of unauthorized persons register Olympic domain
names at the second level. The attached search reports, taken from two
representative months in 2011, show hundreds of unauthorized second-level
Olympic domain name registrations. Even though this is a violation of national
laws protecting the Olympic marks, cybersquatters continue to prey upon the
Olympic marks, and the demand for Olympic domain names continues unabated. This
infringement is currently taking place in the 22 existing top-level domains. If
the number of top-level domains is increased by 500 to one thousand, there will
undoubtedly be a corresponding increase in unauthorized registrations of
Olympic domains at the second level.
These unauthorized registrations--often for pornographic, gambling or
auction sites--dilute and tarnish the Olympic trademarks, and attempt to
exploit for commercial gain the good will created by the Olympic Movement. The
unauthorized domains already oblige the IOC and its National Olympic Committees
to expend significant amounts of time and money on monitoring and enforcement
activities.
2. Why are the existing Rights Protection Mechanisms inadequate to address
this harm?
The sheer volume of unauthorized registrations renders the Rights
Protection Mechanisms costly, burdensome, and ineffective. In the year 2000,
the IOC filed an action under the U.S. Anti-Cybersquatting Consumer Protection
Act against 1,800 unauthorized Olympic domain names. (See attached Complaint.)
Although the suit resulted in a judgment in the IOC's favor, and almost all of
the unauthorized domain names were canceled, the cybersquatters returned,
registering hundreds more unauthorized Olympic domains every month (see the
attached monthly monitoring reports). If hundreds or thousands of infringing,
unauthorized Olympic domain names are registered at the second level in 500 to
1,000 new top level domains, the cost of monitoring and attempting to curtail
the rampant infringement of the Olympic marks would be prohibitive.
The least expensive Rights Protection Mechanism, the Uniform Rapid
Suspension system, would cost an estimated $300 to $500 per proceeding; given
the burgeoning number of unauthorized Olympic second level domain names, URS
proceedings would cost hundreds of thousands of dollars every year. If one adds
the cost of time expended by attorneys and other personnel required to monitor
the infringing domains and bring enforcement actions--an undertaking that would
require a full-time staff dedicated solely to that task--it becomes apparent
that enforcement through this rights protection mechanism would be
prohibitively expensive.
The sui generis legislation that the GAC has cited single out the Olympic
Movement for protection because governments have recognized the Olympic
Movement's unique visibility and heightened risk of infringement. Ordinary
trademark rights protection mechanisms would divert the Olympic Movement's
resources away from its mission.
Thus, the Rights Protection Mechanisms would be outstripped by the volume of
infringing second-level Olympic domains; that is why they are inadequate to
address the harm.
3. What effect would the limited protection proposed by the GAC have on
addressing the harms identified?
We agree that the current proposal, protecting against identical matches of
OLYMPIC and OLYMPIAD, would not, at first, cover all infringing second-level
domain name registrations. But this initial protection in 500 to one thousand
new top-level domains would prevent registration of as many as two thousand
Olympic domain names. That alone is a great benefit. The scope of protection at
the second level could be evaluated and modified based on experience. And new
registries can be encouraged to provide broader protection of similar strings
and protection in additional languages.
4. To what extent does the IOC have registrations of the OLYMPIC and
OLYMPIAD marks in the six United Nations languages?
The table below illustrates protection of the Olympic marks in trademark
registrations. We are still working to identify registration numbers in Arabic
and Russian, and will supplement them below as soon as possible.
Language
Protection
Word(s) Protected
English
U.S. Trademark Reg. No. 2,777,890
Olympic
New Zealand Reg.No. 810307
Olympiad
U.K. Reg.No. 2340841
Olympiad
Chinese
Chinese Trademark Reg.No. 623897
Olympic (奧林匹克)
Chinese Trademark Reg.No. 623896
Olympiad (奧林匹亞)
Chinese Trademark Reg.No. 623898
Olympic Games
(奧林匹克運動會)
French
Swiss Trademark Reg.No. P408297
Olympique
Swiss Trademark Reg.No. P410106
Olympiade
Spanish
Spanish Trademark Reg. No. MO796125
Juegos Olimpicos
Spanish Trademark Reg. No. MO795576
Olimpiada
Arabic
TBD
TBD
Russian
TBD
TBD
Best regards,
Jim
Attachment:
Olympic Marks Thomson Watch Service Report April 2011.zip |