MARQUES Comments in Support of RPM in the new gTLDs

["Perriard,Caroline,VEVEY,FC-IP" <Caroline.Perriard@xxxxxxxxxx>]

Comments from Marques on IRT Final Support

  

MARQUES is the European Association of Trade Mark Owners, representing
the interests of intellectual property owners and the communities that
identify with and trust their marks across a region that has over 600
million inhabitants. While many Marques members might not be in favor of
new gTLD's, Marques welcomes the opportunity to provide comments on the
final report of the IRT, we understand that the IRT's mission is not to
consider whether there should be new gTLD's, but to suggest
recommendations to protect the existing rights of trademark owners. 

 

Having said this, Marques supports the IRT recommendations of setting an
IP Clearinghouse as a platform for ensuring conformity with the IRT
objectives. Marques cheers that the IRT has suggested measures that
apply to both the top and second levels, taking into account that the
criteria might differ, both levels being essential.

We highly encourage the creation of the Globally Protected Marks List.
The standard for inclusion should be high and defined upon objectives
criteria (number of registrations) instead of upon concepts that have a
different meaning pursuant to national legislation. 

 

The URS is a significant innovation: it will allow trademark owners to
take active steps against cybersquatters who make financial gain without
any efforts thanks to the goodwill of a brand and the investments
engaged by its owner. The likelihood of infringement of a brand on
Internet is not comparable to the infringement made directly on the
market:  the Internet has created more opportunities for infringers than
in the "real world", because it is much easier to make money by simply
creating a website and benefit from the reputation of a brand, while
misusing the brand on look-alike products or through media like TV,
newspaper or radio is linked to a greater financial investment. That's
why it is fair and welcome to provide the brand owner with an additional
tool that will reduce the risk of infringement on Internet. 

 

Regarding the post-Delegation Dispute Mechanism, Marques believes that
the creation of a non-exhaustive list of activities that may constitute
"bad faith" is a good initiative and will surely have a deterrent effect
upon third parties who do not fully realize that their conduct is
infringing other parties' rights. 

 

A Thick Whois Model at the registry level is not only essential, but
mandatory for consumer's protection and IP owners. There are too many
cases where the data are not accurate and the registrant remains
unaffected. In order for the Thick Whois proposal to be as effective as
it is intended to be, private registration services must be prohibited.
Private registrations are a real nuisance to enforcement.  If there is
still some perceived need to have political protection, say for example
a protest group in one country, they can use a .com extension, but going
forward we should suppress new opportunity for Private Registration.

 

Marques agrees with the IRT comments on the string confusion review.
While dealing with the concept of trademark confusion, it is obvious to
apply the 3 criteria of visual, aural and commercial (conceptual)
similarity. 

 

 

We'd like to raise a few points that need clarification:

 

- The data transferred to the IP Clearinghouse: Requirements to update
the data must be defined. The trademark owner should have the
possibility to update the data once a year for all trademarks even if
the trademarks were not submitted at the same time. 

 

- Globally Protected Marks List: In case of combined marks, the text
elements constituting the GPM must not be disclaimed from the protection
of the trademark (known as "disclaimer of some parts of the mark"). 

The date of issuance of the trademark registration is an important
feature for the initial application of the top level domains.
Nevertheless a solution must be found for the second level domains in
respect of marks that will be become "globally protected" after the gTLD
is activated. 

 

- URS Pre-registration: is this feasible if there are 200 new gTLDs? Why
should the proposal "no pre-registration" cost more than the
pre-registered user fee? The pre-registration is an extra service and we
understand that it has its price, however if the brand owner decides not
to pre-register and submits the data each time he wishes to complaint,
he should not be penalized. 

 

- The fact that a domain will be "frozen" is an acceptable solution. It
is often the case that the brand owner does not want to add the domain
in its portfolio for its own use, but is currently doing it to avoid the
domain name from being re-registered immediately after it is cancelled.
On the other hand if the brand owner wants to register the domain name
but comes in second position, how can he recover the domain before the
domain lapses? Does he have to rely on UDRP?

 

- Marques understands that the URS is aimed to solve the most clear-cut
cases of trademark abuses. However we fear that should the form be too
standardized, cybersquatters will simply use general comments to justify
the registration and the whole benefit of the URS might vanish.

The sentence "not known by name" is too vague, because it could include
any "nickname" or "given name". We suggest to precise it with "family
name" or "commercial name". 

Regarding the Form Decision, we recommend to describe more precisely
terms like "pattern", "sold for commercial gain", "sold for profit",
etc.

 

 

Finally Marques would also like to draw ICANN's attention to the
importance of independent and accountable governance of the Internet. As
the US Senators have said in their letter of the 19th May 2009 and as
the European Commission has stated in its Communication in Internet
governance in June 2009, it is very significant if the trademark
proprietors are being heard by ICANN as a highly significant constituent
of the Internet community. The latter has been totally ignored up to now
in a way that is on the most charitable view an oversight but which can
more appropriately be characterised as an irresponsible denial of the
existence of the members of our constituency.

 

 

 

Submitted by Cyberspace team, Marques

03 July 2009