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

[Alan Greenberg <alan.greenberg@xxxxxxxxx>]

Jim, is this different from the version you sent around last night?  Alan

At 18/04/2012 12:08 PM, Jim Bikoff wrote:
> 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.
>    *  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 ($BT|NSI$9n(B)
>
> Chinese Trademark Reg.No. 623896
> Olympiad ($BT|NSI$P3(B)
>
> Chinese Trademark Reg.No. 623898
> Olympic Games
> ($BT|NSI$9n1?F0Pr(B)
> 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