Return of the Globally Protected Marks List - now called HARM "High At-Risk Marks)

[Kathy Kleiman]

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-everyone
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.
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
kleiman at fhhlaw.com