FW: [NCSG-Discuss] Return of the Globally Protected Marks List - now called HARM "High At-Risk Marks)

Sun Aug 19 22:28:29 CEST 2012

At least they should get credit for picking an appropriate acronym, despite
their intentions.  This certainly would HARM society.  I guess that makes it
"confusingly similar" :-(

Does make one wonder if the same effort (and extortion) is being applied in
the assignment of telephone numbers.

Consider that the U.S. has a well-developed method of mapping words to phone
numbers.  1-800-BUY-DOGS (800 is a freephone prefix) can be a
highly-valuable commodity.  Of course, it conflicts with 1-800-BUY-ENGR.  Is
this confusingly similar?  Certainly assigning 1-800-289-3647 to either
deprives the other...

When all the 800 numbers were assigned, the 888 prefix was introduced.  I
don't recall defensive registrations.  But with 877, 866 and 855 active in
the NANP (and 844, 833, 822, 880-887, 889 reserved) there's plenty of time
for a sunrise period.  There is a vibrant fraud industry (e.g. 876 is the
country code for Jamaica).

Even without the name -> number mapping, some companies feel that they have
substantial brand equity in telephone numbers (freephone or not.)  And there
are the whole "Local Number Portability" / "Full Mobile Number Portability"
requirements that have rendered "local number" and "mobile number"
meaningless.

There is a lot of precedent (and twisted humor) to be found in analogies
between the telephone and internet addressing systems... Perhaps we should
start using them when pointing out the pitfalls (and absurdities) of these
DNA proposals.

Yes, this is at least 47% serious.
Timothe Litt
ACM Distinguished Engineer
---------------------------------------------------------
This communication may not represent the ACM or my employer's views,
if any, on the matters discussed.

  _____

From: NCSG-Discuss [mailto:NCSG-DISCUSS at LISTSERV.SYR.EDU] On Behalf Of Robin
Gross
Sent: Sunday, August 19, 2012 13:32
To: NCSG-DISCUSS at LISTSERV.SYR.EDU
Subject: Re: [NCSG-Discuss] Return of the Globally Protected Marks List -
now called HARM "High At-Risk Marks)

What is amazing is how trademark law becomes so contorted to commercial
interests at ICANN.  This proposed list a good example.

What is supposed to be a mechanism to protect consumers from confusion about
competing goods winds up becoming the creation of a list to prohibit a
word's use all together in a name space, for a fee of course.  Actual
trademark rights and their boundaries, limitations, etc. are irrelevant.

Robin

On Aug 19, 2012, at 7:07 AM, Milton L Mueller wrote:

Excellent points, Edward.

From: NCSG-Discuss [mailto:NCSG-DISCUSS at LISTSERV.SYR.EDU] On Behalf Of
Edward Morris
Sent: Friday, August 17, 2012 5:11 PM

Thank you for the heads up Kathy. This proposal is dangerous not only in
terms of intent but also in terms of proposed implementation.
Melbourne IT proposes replication of the .XXX Sunrise B rollout for famous
marks. Sunrise B allowed those claiming interest in a word / mark to make it
disappear from the .XXX world by paying a one time fee that would lead ICM
to disappear the word forever. If the brand owner later wanted to resurrect
the word for use in commerce: no luck.
Forget transparency: there is no public record of who paid to disappear the
word and, in fact, if the three Deltas (faucet, airline, dental) each wanted
to disappear the word in conjunction with .XXX,  ICM would gladly pocket the
fee from each of the three with no one being the wiser. In ICM's ideal world
all businesses would be call "Smith", all Smith's would pay to disappear the
word and ICM would be very rich for doing nothing more than delisting a
single moniker.
For those of us who live in jurisdictions with use requirements for
trademarks,  this novel means of 'defensive registration' turns that concept
on the head with a 'nonuse' requirement. Once delisted the mark can never be
used.  This does not so much help consumers avoid confusion as it does
reduce competition and reduce linguistic possibilities. It is the
anti-trademark or, if you will, the 'nonuse' trademark.
Trademarks historically are limited by geography and product class. The
internet disrupted these concepts, concepts that  are somewhat akin to fair
dealing in other i.p. worlds. The introduction of new gTld's presented a
great opportunity to reintroduce the concept of product class to the online
environment. Politics being what they are that did not happen. Instead we
are once again faced with an attempt by intellectual property owners to
expand i.p. rights online  in a way they could not and have not been able to
achieve offline.
These efforts must be resisted. If not, let me introduce you to the 'domain
name navigation right' : one of several new magically created i.p. rights
that are being bantered about in the i.p. community. If they can achieve in
ICANN a list of famous marks, something brand owners have been trying to do
since 6bis was introduced to the Paris Convention in the '20's, who can
blame them for turning to ICANN whenever their attempts to expand i.p.
protection fail elsewhere?
--

Kathy Kleiman kathy at kathykleiman.com
<http://support.google.com/mail/bin/answer.py?hl=en&ctx=mail&answer=1311182>
via alumni.usc.edu
8:48 PM (1 hour ago)
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to NCSG-DISCUSS
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Hi All,
I don't know how many people remember our work on the GPML - the Globally
Protected Marks List. It was a proposal of the intellectual property
community to create a "reserved list" of words that would be ineligible for
registration as second-level domain names in the new gTLDs. At least, not
until the user first proved that there was no remote likelihood of confusion
with any of the trademark owner's users.

Needless to say, this is not ICANN's balliwick. It's not a word smith, or a
trademark forum, it's a technical organization. So we, NCUC, responded that
the right place to create protections for "famous marks" is somewhere other
than ICANN.

We pointed out that while trademarks have international protections via
treaty, famous marks don't. There is simply no consensus internationally on
famous marks, no international list of famous marks, and no international
standard of protection on famous marks.   So Orange, Caterpillar and Virgin
are famous marks to some, and normal words to others.

So, sigh, the issue rears its head again. Melbourne IT released a paper
called Minimizing HARM where it posits the creation of an infinite number of
"High At-Risk Marks (HARM)," their new term for Famous Marks, and a
permanent protection in all new gTLDs -- including takedown by the URS
dispute process in two days (2 days!) unless the registrant responds **and
pays**.  We fought against two weeks as too short -- especially for the many
new gTLD domain names that will be registered by individuals, small
organizations, small businesses, and people from countries where English is
neither a first (nor second) language. Two days!!??

One bright note is that new "HARM" famous marks are supposed to "be
distinctive" and "not match common words," but the paper notes that "marks
like Apple or Gap may not be eligible."  The use of the word "may" instead
of
will-definitely-not-be-eligible-because-they-are-normal-words-used-by-everyo
ne suggests to me that the "slippery slope" of expansion has already begun.

Plus there's no limit -- infinite numbers of these new soon-to-be-famous
registrations possible.

So let the fun begin, a new proposal to massively expand intellectual
property rights now takes the floor.

Press release by Melbourne IT is posted by Reuters at
<http://www.reuters.com/article/2012/08/16/idUS121841+16-Aug-2012+BW20120816
>
http://www.reuters.com/article/2012/08/16/idUS121841+16-Aug-2012+BW20120816.
It includes a link to the "Minimizing HARM" paper released yesterday.

Sigh and best,
Kathy

Kathy Kleiman, Esq.
Internet Counsel, Fletcher, Heald & Hildreth, Arlington, Virginia, US
Co-Lead Internet Law and Policy Group
 <mailto:kleiman at fhhlaw.com> kleiman at fhhlaw.com

IP JUSTICE
Robin Gross, Executive Director
1192 Haight Street, San Francisco, CA  94117  USA
p: +1-415-553-6261    f: +1-415-462-6451
w: http://www.ipjustice.org     e: robin at ipjustice.org

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