[gnso-iocrc-dt] International Olympic Committee Submission

[Kiran Malancharuvil <kmalancharuvil@xxxxxxxxx>]

It has come to our attention that the email from Jim Bikoff, below, was not 
received by many group members when we sent it out yesterday afternoon.  Please 
accept our apologies.  I will send the attachments (referenced in our answer to 
Question 1) separately in the hope that will solve the problem.

Best regards,

Kiran

Kiran J. Malancharuvil
Silverberg, Goldman & Bikoff, L.L.P.
1101 30th Street NW, Suite 120
Washington, DC 20007
202-944-3307 (office)
619-972-7810 (mobile)

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______________________________________________________________________________________________________________________________________________________________________________________________________

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>