FW: INTA Request for Action on Internet Issues

[Dr. Szigeti Éva <szigeti@xxxxxxxxxx>]

Dear Sirs,

 

According to the requests of INTA External Relations Manager, Mr. Claudio Di 
Gangi in his e-mail of 11 January 2010 sent to Dr. Éva Szigeti, we hereby send 
you our remarks on the Special Trademark Issues Work Team Recommendations:

 

Basically we agree with the concepts and the suggestions contained in the 
Recommendations, however, we would like to point out our minority report on 
some issues. 

 

Regarding point 4.1 of the Trademark Clearinghouse Proposal, we would like to 
underline that in our point of view “design marks” shall also be included in 
the TC database, if the design mark consists of determining of the word, which 
would be protected, if the trademark would be a “text mark”, i.e. if the 
dominant element of the design mark is a word. In this event the “design marks” 
can also be infringed or abused by a domain name, therefore in our point of 
view it is very important to secure adequate protection for these device marks 
in this regard.

 

In connection with point 4.3 (d) of the Trademark Clearinghouse Proposal, we 
emphasize that in our point of view not just those domain names can be abusive 
or infringing, which are character-by-character identical with the concerned 
trademarks. According to our opinion those tail-pieces in domain names, which 
refers only to the quality, quantity or any other parameter of goods or 
services, or to a geographical region, have no distinctive characteristic 
within the course of examining the similarity of a domain name and a trademark. 
We know that it is hard to filter out all the possibilities, however it is very 
important that this practice of UDRP providers would prevail in the URS 
procedure as well. In this regard we agree with the minority report and the 
suggestions of the Commercial and Business Users Constituency and At-Large 
Advisory Committee.

 

Respectfully submitted, 

 

Éva SZIGETI, Dr.

Partner, LL. M. Director of Trademark Operation

 

DANUBIA Patent & Law Office LLC

H-1368 Budapest 5, POB 198

Str. Addr.: 16 Bajcsy-Zs. út, H-1051 Budapest, Hungary

Fax: 36 1 3171025

Phone:(+36 1) 411-8720

e-mail: szigeti@xxxxxxxxxxx <mailto:szigeti@xxxxxxxxxxx>   
<mailto:szigeti@xxxxxxxxxxx <mailto:szigeti@xxxxxxxxxxx> >

 

website: www.danubia.com <http://www.danubia.com>  <http://www.danubia.com 
<http://www.danubia.com> > 
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From: Claudio Di Gangi [mailto:cdigangi@xxxxxxxx] 
Sent: Monday, January 11, 2010 11:24 PM
To: Tm. Kiss Attila Balázs
Subject: INTA Request for Action on Internet Issues

 

 

Dear INTA Members,

The following notice is to bring to your attention two Internet domain name 
system developments that warrant your consideration and potential action. 

     1. ICANN is Soliciting Input: Should it Proceed with Pre-Registrations for 
New gTLDs?

The Internet Corporation for Assigned Names and Numbers (ICANN) is seeking 
community views, including input from trademark owners and their 
representatives, on whether it should begin accepting "pre-registrations" for 
new generic Top Level Domains (gTLDs). Please click here 
<http://cl.publicaster.com/ClickThru.aspx?pubids=6590%7c65850%7c95974&digest=hjcuvtRG3xImvvXgIsB7wg>
  for the ICANN announcement.

INTA's Internet Committee will submit comments opposing pre-registration, but 
it is important that ICANN also hear from trademark owners directly. Your 
comment can be as brief as stating whether you do or do not support ICANN 
accepting pre-registrations for new gTLDs.

ICANN is accepting input from the community on the proposed pre-registrations 
until Wednesday January 27, 2010.

Please submit your input to ICANN by sending an email to 
draft-eoi-model@xxxxxxxxx and make sure to follow the email confirmation 
process after submitting your comment.

Background

ICANN continues to set no limits on the number of new gTLDs it intends to add 
to the Internet's addressing system.  Due to complexities in implementing its 
unlimited new gTLD program, ICANN recently announced it would no longer 
estimate when it would accept applications.

However, at the same time, ICANN is now seeking community input on whether it 
should proceed with accepting pre-registrations for new gTLDs, at the rate of 
US $55,000 each.  According to the draft model's terms, only those entities 
that participate in pre-registration will be eligible to apply for a new gTLD 
in the first round.

ICANN has publicly committed to resolving what it considers to be the 
overarching issues with its unlimited new gTLD program, including trademark 
protection, economic demand and impact, root zone scaling, and malicious 
conduct, before it would introduce any new gTLDs.

However, INTA continues to believe these overarching issues remain unresolved 
and that ICANN has not done the necessary work to demonstrate that the 
potential benefits of its unlimited new gTLD program outweigh the risks, harms 
and costs to the domain name system and to the public. Therefore, INTA believes 
that it is premature for ICANN to accept pre-registrations, and that the 
proposed pre-registration process will have harmful ramifications such as 
forcing trademark owners to defensively pre-register to protect their 
trademarks.

     2. ICANN is Soliciting Your Input on: Special Trademark Issues (STI) 
Recommendations

ICANN has also recently released the Special Trademark Issues Review Team 
Recommendations 
<http://cl.publicaster.com/ClickThru.aspx?pubids=6590%7c65851%7c95974&digest=NYv1FzQU8%2fRqSxGMUSZXzw>
  for public comment, which includes recommendations for creating a "Trademark 
Clearinghouse" and "Uniform Rapid Suspension" procedure to protect trademarks 
in ICANN's new gTLD program (please click on the above link for a copy of the 
report).

The report contains minority views from several constituencies with suggested 
improvements, and ICANN's Intellectual Property Constituency (IPC) submitted a 
letter 
<http://cl.publicaster.com/ClickThru.aspx?pubids=6590%7c65852%7c95974&digest=zwetuwVie1vcwrp426Fcig>
  highlighting several concerns with the STI recommendations.

INTA's Internet Committee is commenting on the STI report, but it is very 
important for ICANN to hear from INTA members directly on whether you believe 
the recommendations will be effective in protecting your organization's 
trademarks in an unlimited expansion of new gTLDs as proposed by ICANN.

Your comments can be submitted on the STI report until Tuesday, January 26, 
2010.

You can submit your views to ICANN by sending an email to 
sti-report-2009@xxxxxxxxx. Please make sure to follow the email confirmation 
process after submitting your comment.

Please click here 
<http://cl.publicaster.com/ClickThru.aspx?pubids=6590%7c65853%7c95974&digest=ixgCMlgNaPHNRxvRCdAewQ>
  for the ICANN announcement.

Should you have any questions regarding these issues, please contact INTA 
External Relations Manager, Claudio DiGangi, at cdigangi@xxxxxxxx. 

________________________________

INTA - Representing Trademark Owners Since 1878 

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