[gnso-iocrc-dt] International Olympic Committee Submission
Dear all,
In anticipation of tomorrow's telephone conference, here is an
updated response to the Discussion Group's four questions about protection of
the Olympic names at the second level.
Introduction
On May 10, 2012, the GNSO Council held its monthly teleconference, and
determined that this Discussion Group should press forward with its mission of
considering protection of the Olympic and Red Cross names at the second level,
as recommended by the GAC.
Therefore, we continue to be charged with the mandate of implementing the
Governmental Advisory Committee's proposal for protection at the second level
of new generic Top Level Domains. Our continuing task is to present a unified,
comprehensive package covering second level applications in the first round
that will, at the very least, complement the protection provided at the top
level through Section 2.2.1.2.3 of the Applicant Guidebook.
At our last Discussion Group teleconference, we began to discuss the
answers we have provided about protecting the Olympic names at the second
level. The answers demonstrate that it is imperative that the GNSO recommend
protection, at the very least, against identical matches in the six United
Nations languages.
1. How significant is the problem posed by unauthorized registrations of
Olympic domain names at the second level?
Every year, thousands of unauthorized persons register Olympic
domain names at the second level. The search reports we sent to the Discussion
Group on April 17 and 18, 2012 show hundreds of unauthorized second-level
Olympic domain name registrations each week. Attached are more recent reports.
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 two thousand, there will undoubtedly be a corresponding
increase in unauthorized registrations of Olympic domains at the second level.
These unauthorized registrations--often for pornographic, phishing,
gambling or parked 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 Complaint circulated
with April 17 and 18 emails.) 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. If hundreds or thousands of infringing, unauthorized Olympic
domain names are registered at the second level in 2,000 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. This cost is currently being questioned, and may be more
expensive. 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 of promoting humanitarian goals
through sports.
Thus, the volume of infringing second-level Olympic
domains would outstrip the Rights Protection Mechanisms; 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 two
thousand new top-level domains would prevent registration of as many as four
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.
One issue that arose earlier, concerning the top level, was whether
the recommendations would lead to licensing by the International Olympic
Committee. The answer is no, the recommendations only provide for a letter of
non-objection, where the IOC does not oppose the use of similar string in a
TLD, not for a license. This is a standard practice which allows similar
trademarks to co-exist, but it is not a license. If new registries provide
broader protection of similar strings at the second level, letters of
non-objection could be provided at that level, as well.
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 will supplement them below as soon as possible, although this is
not strictly necessary.
The Trademark Clearinghouse: Draft Implementation Model provides
that any mark is eligible for protection through Sunrise Registration and
Notification Services if it meets one of four requirements. One is
presentation of a valid trademark registration. Another is proof that a mark
is protected by statute or treaty. The International Olympic Committee intends
to use sui generis national legislation to register their marks in the
Trademark Clearinghouse. Transliterations of the words Olympic and Olympiad in
Arabic are protected by sui generis legislation in Lebanon. For purposes of
demonstrating use, the International Olympic Committee holds Arabic character
domain name registrations in the United Arab Emirates and the Palestinian
Territories.
It should be noted that although the Olympic marks are eligible for
protection in the Trademark Clearinghouse, this RPM is inadequate to protect
the International Olympic Committee, as discussed above, in the answer to
question 2. The burden of registering exact matches of the words Olympic and
Olympiad in all six UN languages during Sunrise Period in 2,000 plus new TLDs,
and the added burden of monitoring Clearinghouse notifications in the same,
would defeat the purpose of the unique sui generis protections afforded to the
International Olympic Committee.
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
Russian Reg. No. 2006730171
Olympic (ОЛИМПИЙСКИЙ)
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<mailto:jbikoff@xxxxxxxxx>
Attachment:
Olympic Domain Name Watch Report - May 04, 2012.pdf Attachment:
Olympic Domain Name Watch Report - May 18, 2012.pdf |