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

[Robin Gross]

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 via alumni.usc.edu
> 8:48 PM (1 hour ago)
> <cleardot.gif>
> <cleardot.gif>
> <cleardot.gif>
> to NCSG-DISCUSS
> <cleardot.gif>
> 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




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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