[gnso-iocrc-dt] Protecting the Olympic Names at the Second Level of New gTLDs

[Jim Bikoff <jbikoff@xxxxxxxxx>]

Dear all,

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