[npoc-voice] NPOC Issue in European Union Proposals for Internet Domain Name Policy

[Sam Lanfranco <lanfran@xxxxxxxx>]

Dear NPOC members:

*NPOC Proposal:*As Chair of the NPOC Policy Committee I am presenting 
the following proposal for online consultation with NPOC members via 
npoc-voice. The proposal is to go to the European Union and asks them to 
remove some problematic wording in their proposed revision ofthe 
European Union Regulation on the Community Trade Mark and the European 
Union Directive Relating to Trade Marks. The issue context, background, 
analysis and NPOC proposal are contained below:
*/Issue Context:/* There are Internet domain name policy discussions 
going on in the European Union (EU) that can have a serious negative 
impact on the ability of not-for-profit and civil society organizations 
to select appropriate website/domain names and email address strings. 
This is a brief background email to promote dialogue within the NPOC 
community and to determine an NPOC response. There is a window of 
opportunity to object to the draft proposals via public comment 
submissions to the final discussions. The chances for successful 
objection are good. Most of the intent of the wording can be achieved by 
existing legislation that does not pose problems for the not-for-profit 
and civil society community. This same issue is being discussion in the 
Internet Intellectual Property community since it also has negative 
consequences for commercial organizations. Feel free to share this 
information.
*/Background:/* The EU is engaged in an ongoing reformation of the 
European Union Regulation on the Community Trade Mark ("the Regulation") 
and the European Union Directive Relating to Trade Marks ("the 
Directive"). Both have potentially severe impacts on the internet and 
the domain name industry.
In their present codification, the Regulation and the Directive describe 
the rights conferred by ownership of a Community Trade Mark (a.k.a. 
sign) and attempt to harmonize national and local trade mark regimes. 
The existing Regulation and Directive prohibit the following types of 
listed conduct by one who does not own the trade mark (sign):
   . Affixing the sign to the goods or to the packaging thereof
   . Offering the goods, putting them on the market or stocking them
   for these purposes under that sign, or offering or supplying
   services thereunder;
   . Importing or exporting the goods under that sign
   . Using the sign on business papers and in advertising

The proposed revisions by the European Council explicitly insert 
prohibitions concerning domain names. The more important wording is 
below after the /[...]and in italics/.
   /. /Using the sign as a trade or company name/[...], or as a domain
   name, or as a part thereof. /

The IP community opinion is that this language is unnecessary, 
superfluous, sloppy and poorly suited for the dynamic nature of the 
Internet, as well as adequately covered under existing rights conferred 
by a Community Trade Mark that already extend to Internet domain names. 
The fear is that among other problems the proposed amendment would likely:
   1.Embolden spurious complaints against non-commercial uses,
   improperly elevating all domain names as being analogous to "a trade
   or company name";
   2.Have a chilling effect on non-commercial expression by registrants
   in the European Union; and
   3.Result in an aggregate negative impact on domain name registration
   and renewal rates among registrants, including NPO/Civil Society
   registrants, in the European Union.

There is time to weigh in and oppose this proposed amendment. Final 
negotiations recently began between the European Parliament (EP) and the 
European Council (EC), with the European Commission serving as a 
quasi-mediator. These "Trilogue" negotiations will likely continue until 
early 2015.
*/Analysis:/*[by Sam Lanfranco] While this amendment is talking about EU 
regulations I will use an Africa example where I am personally involved 
to underscore the nature of the problem. I am the Director of ICT for 
science, technology and development (ICT4STD) in the /Society for the 
Advancement of Science in Africa (/SASA/)/ The SASA acronym is widely 
used just in South Africa alone: South African Sugar Association; South 
African Statistical Association; South African Society of 
Anaesthesiologists; and the long established South African Society of 
Artists. It has wide use elsewhere. The SASA I work with is an NPO and 
owns the sasascience.org domain name.
Currently SA SA Overseas Ltd, an Asian clothing company, owns the global 
rights to SASA. At the time of registering the trademark it even wrongly 
claimed that the word "sasa" had no meaning in foreign languages. In 
Swahili SASA has a meaning a bit like "now, or "alive". It also has a 
Samoan meaning. [/That highlights another problem with elevating words 
to "signs"in the domain name world./]
The proposed EU legislation could pose problems for the sasascience.org 
domain name since it is using the trademarked SASA as a part of a domain 
name. Should it, for example, buy sasa.net -- which is for sale -- it 
could likewise be at risk under the proposed legislation. It is 
impossible to assess if that risk is high or low, but it would expose 
SASA the NPO to risks from internet trolls and other trademark owners. 
There is also a risk that this proposed wording could be understood as 
the EU unilaterally expanding the rights conferred by a Community Trade 
Mark.
Whether or not this exposes NPO/Civil Society domain names to risk only 
within the boundaries of the EU, or opens up the option for EU serving 
as a litigation site that puts such domain names at risk everywhere is 
unclear. What appears clear is that the wording does pose risks for 
NPO/Civil Society organizations, and that the wording is unnecessary 
given the existing rights of a Community Trade Mark.
*NPOC Proposal:*As Chair of the NPOC Policy Committee I propose the 
following:
NPOC draft a public comment to the EU trilogue asking for the removing 
the proposed wording.
As process, NPOC conducts a one week npoc-voice member consultation on 
the proposal. Following NPOC member agreement the NPOC Executive, with 
assistance from the ICANN IP constituency, drafts a public comment to 
the EU. That draft public comment is circulated on npoc-voice for final 
consultation (ending December 19, 2014). The consensus worded public 
comment is sent to the EU trilogue and released for wide circulation. 
[time lines are imposed by EP/EC/EU deadlines]
---------------------------
Sam Lanfranco, Policy Committee Chair
NPOC