On November 2, 2016 at 21:58 johnl@iecc.com (John R. Levine) wrote:
That is exactly the position of GNSO - there are already protection mechanisms in place for intellectual property protection in the procedures. Somehow some IGO's just seem to want to be special.
Unless I've missed something, the TMCH et al are for trademarks. IGO names typically aren't trademarks.
Under US law, and no doubt others', IGO names would be trademarks, they just might not be registered trademarks. The difference is not that great (we could quibble "great".) You can't seek certain reliefs (under US law, again probably others) for unregistered trademarks but you certainly can stop someone from using your mark in a "confusingly similar manner" and even pursue damages. There's more to that of course, there are thousands of pages of case law etc detailing the differences. But that's the usual 2 cent summary. One always has to go back to the base principle that the ultimate purpose of trademark law is to protect consumers, not to create intellectual landfill. So if you buy a bottle labeled Coca-Cola you have some reasonable confidence it was the product (direct or by their approval) of the Coca-Cola Bottling Company. N.B. By this reasoning domains as commonly defended are a bizarre aberration of trademark tradition. But that's a different discussion. I have no idea why IGOs wouldn't register their marks but perhaps there is some reasoning. That said TMCH is certainly weighted towards registered trademarks (WIPO, USPTO, etc) though if you read their rules thoroughly there are other validations of a mark possible. But one possible proposal, assuming this power exists under the contract, is to tell TMCH here's a list of marks along with other identifying information which we want you to treat as registered in the TMCH. I'm not sure that will be satisfactory. Obviously one would have to ask the IGOs et al of course. For example all that TMCH entry gives you is access to sunrise registration and, failing the exercise of that, notification when someone registers an exact match such as WHO.BICYCLES. And if registered under sunrise the organization would still have to pay sunrise registration fees (as stands) which vary from around US$200 to US$2500 or more in a few cases. Most are closer to the low number in price. But even at US$200 per each 1,000 of them would be US$200,000 in sunrise registration fees, per string. Yearly renewals would generally be somewhat lower. And a warning to and sign-off from whoever else registers WHO.BICYCLES if it's not registered by the TMCH entrant. The registrant will get a notice when they try to register a mark which is an exact string match in the TMCH database. Notice that as it works now that will not give WHO (just an example) anything regarding strings like WHO-UN.BICYCLES or even WORLDHEALTHORGANIZATION.BICYCLES unless they are each separately put into the TMCH database. There's no accommodation for a regular expression or other similarity test and to my knowledge TMCH has no process if you find a registration you feel is confusingly similar but not an exact string match. That would be outside of their purview. The recommended pursuit of relief would be to file a URS complaint (for nGTLDs) and/or seek redress via a court of competent jurisdiction. As I said earlier, the devil is in those details. And only the IGOs making these requests can really address those issues.
Regards, John Levine, johnl@iecc.com, Primary Perpetrator of "The Internet for Dummies", Please consider the environment before reading this e-mail. https://jl.ly _______________________________________________ At-Large mailing list At-Large@atlarge-lists.icann.org https://atlarge-lists.icann.org/mailman/listinfo/at-large
At-Large Official Site: http://atlarge.icann.org
-- -Barry Shein Software Tool & Die | bzs@TheWorld.com | http://www.TheWorld.com Purveyors to the Trade | Voice: +1 617-STD-WRLD | 800-THE-WRLD The World: Since 1989 | A Public Information Utility | *oo*