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

[Milton L Mueller]

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<mailto:kathy at kathykleiman.com> via<http://support.google.com/mail/bin/answer.py?hl=en&ctx=mail&answer=1311182> alumni.usc.edu<http://alumni.usc.edu>


8:48 PM (1 hour ago)
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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-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<mailto:kleiman at fhhlaw.com>
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