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Proposed Rights Protection Mechanisms in New gTLDs

  • To: <proposed-protection-mechanisms@xxxxxxxxx>
  • Subject: Proposed Rights Protection Mechanisms in New gTLDs
  • From: "Julian Crump" <julian.crump@xxxxxxxxx>
  • Date: Sat, 21 Nov 2009 11:39:26 -0000



Saturday, 21 November 2009


FICPI, the International Federation of Intellectual Property Attorneys,
broadly representative of the free profession throughout the World comments
on the Proposed Rights Protection Mechanisms in New gTLDs as follows:


FICPI is pleased that ICANN continues to take seriously on the Rights
Protection Mechanisms (RPMs) in the new gTLDs, and notes that considerable
efforts have been made in order to resolve this essential matter before the
introduction of any new gTLDs, but regrets that the latest proposals seem to
indicate a weaker position and a more uncertain RPM solution than the
original recommendations in the IRT Final Report.


Overall, FICPI strongly supports the adoption of the recommendations
contained in the IRT Final Report. 


While we can understand some of the reasons for not including the proposed
Globally Protected Marks List (GPML), namely the difficulties in finding
uniformly acceptable standards to properly identifying the rather limited
number of "Supermarks" that would fit into such list,  we do not agree with
the conclusion that the GPML would lead to the creation of new rights.
Actually these trademarks already are in a special position with enhanced
legal protection based on years of extensive global use.

As to the Clearinghouse, FICPI suggests to stay with the IRT recommendation
and to call it an "IP Clearinghouse", for the following reason: 


The purpose of the Clearinghouse should be to list a number of different
"name" rights that, depending on the jurisdiction, could constitute an
obstacle to a certain domain name. A Complainant in a .eu domain name
dispute case can rely on, inter alia, registered national and community
trademarks and, insofar they are protected under national law in the Member
State where they are held, unregistered trademarks, trade names, business
identifiers, company names, family names, and distinctive titles of
protected literary and artistic works (Article 10 (1) of the European
Commission regulation 874/2004). The Clearinghouse should allow collection
of such prior rights, whereas it will be up to each gTLD provider to dictate
whether only registered and common law trademark rights count or whether
other nationally protected name rights count as well.


It is important to create one global Clearinghouse, not a number of regional
entities, to keep the goal of the clearinghouse proposal, namely to simplify
the collection of data from the right holders. If several different
clearinghouses are established, the rights holder will have to provide the
same data over and over again.


FICPI urges ICANN to make the Uniform Rapid Suspension (URS) system
mandatory, as recommended by the IRT. If the URS is introduced as best
practice, there is an obvious risk that, while Registries with a clear aim
to play fair will adopt it, less organized gTLDs will offer no such URS and
thereby leave rights holders with no alternative than to take the dispute to
a court in another country, with extensive costs and lengthy proceedings as
result. As pointed out in the Draft Summary of Differences between IRT
Recommendations and DAG v3, the applicant can choose to have no URS and
still comply with the process.  


Respectfully submitted,


JCrump Formal



c/o Mintz, Levin, Cohn, Ferris, Glovsky and Popeo Intellectual Property, LLP
Alder Castle | 10 Noble Street | London, EC2V 7JX  England
Phone: +44 (0)20 7776 7302 | Fax: +44 (0)20 7776 7301 

Email:  <mailto:jrcrump@xxxxxxxxx> jrcrump@xxxxxxxxx

Web: www ficpi.org


Note your diary and register now :

FICPI India Symposium, December 9-11, 2009

Taj Palace Hotel, New Delhi, India

Full information and on-line registration available on
<http://www.ficpi.org> www.ficpi.org


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