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

[Edward Morris]

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
via<http://support.google.com/mail/bin/answer.py?hl=en&ctx=mail&answer=1311182>
 alumni.usc.edu
 8:48 PM (1 hour ago)
   to NCSG-DISCUSS
 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<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
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