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<pre style="margin: 0em;">NCSG Colleagues,
</pre>
<tt>NPOC is completing its internal stakeholder consultation on </tt><tt>the
following issue. NPOC will submit a request to the </tt><tt>European
Union and asking them to </tt><tt>remove some problematic wording
in their proposed revision ofthe </tt><tt>European Union
Regulation on the Community Trade Mark and the European </tt><tt>Union
Directive Relating to Trade Marks. The issue context, background,
</tt><tt>analysis and proposed NPOC response are contained below:
<br>
<br>
</tt><tt>*/Issue Context:/* There are Internet domain name policy
discussions </tt><tt>going on in the European Union (EU) that can
have a serious negative </tt><tt>impact on the ability of
not-for-profit and civil society organizations </tt><tt>to select
appropriate website/domain names and email address strings.</tt><tt>There
is a window of </tt><tt>opportunity to object to the draft
proposals via public comment </tt><tt>submissions to the final
discussions. The chances for successful </tt><tt>objection are
good. Most of the intent of the wording can be achieved by </tt><tt>existing
legislation that does not pose problems for the not-for-profit </tt><tt>and
civil society community. This same issue is being discussion in
the </tt><tt>Internet Intellectual Property community since it
also has negative </tt><tt>consequences for commercial
organizations. Feel free to share this </tt><tt>information.
<br>
<br>
</tt><tt>*/Background:/* The EU is engaged in an ongoing reformation
of the </tt><tt>European Union Regulation on the Community Trade
Mark ("the Regulation") </tt><tt>and the European Union Directive
Relating to Trade Marks ("the </tt><tt>Directive"). Both have
potentially severe impacts on the internet and </tt><tt>the
domain name industry.
</tt><tt>In their present codification, the Regulation and the
Directive describe </tt><tt>the rights conferred by ownership of
a Community Trade Mark (a.k.a. </tt><tt>sign) and attempt to
harmonize national and local trade mark regimes. </tt><tt>The
existing Regulation and Directive prohibit the following types of
</tt><tt>listed conduct by one who does not own the trade mark
(sign):<br>
<br>
</tt>
<pre style="margin: 0em;"> . Affixing the sign to the goods or to the packaging thereof
. Offering the goods, putting them on the market or stocking them
for these purposes under that sign, or offering or supplying services thereunder;
. Importing or exporting the goods under that sign
. Using the sign on business papers and in advertising
</pre>
<tt>The proposed revisions by the European Council explicitly insert
</tt><tt>prohibitions concerning domain names. The more important
wording is </tt><tt>below after the /[...]and in italics/.
</tt>
<pre style="margin: 0em;"> /. /Using the sign as a trade or company name/[...], <i>or as a domain name, or as a part thereof.</i> [<i>emphasis added</i>]
</pre>
<tt>The IP community opinion is that this language is unnecessary, </tt><tt>superfluous,
sloppy and poorly suited for the dynamic nature of the </tt><tt>Internet,
as well as adequately covered under existing rights conferred </tt><tt>by
a Community Trade Mark that already extend to Internet domain
names. </tt><tt>The fear is that among other problems the
proposed amendment would likely:<br>
<br>
</tt>
<pre style="margin: 0em;"> 1.Embolden spurious complaints against non-commercial uses, improperly elevating all domain names as being analogous to "a trade or company name";
2.Have a chilling effect on non-commercial expression by registrants in the European Union; and
3.Result in an aggregate negative impact on domain name registration and renewal rates among registrants, including NPO/Civil Society registrants, in the European Union.
</pre>
<tt>There is time to weigh in and oppose this proposed amendment.
Final </tt><tt>negotiations recently began between the European
Parliament (EP) and the </tt><tt>European Council (EC), with the
European Commission serving as a </tt><tt>quasi-mediator. These
"Trilogue" negotiations will likely continue until </tt><tt>early
2015.
<br>
<br>
</tt><tt>*/Analysis:/*[by Sam Lanfranco] While this amendment is
talking about EU </tt><tt>regulations I will use an Africa
example where I am personally involved </tt><tt>to underscore the
nature of the problem. I am the Director of ICT for </tt><tt>science,
technology and development (ICT4STD) in the /Society for the </tt><tt>Advancement
of Science in Africa (/SASA/)/ The SASA acronym is widely </tt><tt>used
just in South Africa alone: South African Sugar Association; South
</tt><tt>African Statistical Association; South African Society of </tt><tt>Anaesthesiologists;
and the long established South African Society of </tt><tt>Artists.
It has wide use elsewhere. The SASA I work with is an NPO and </tt><tt>owns
the sasascience.org domain name.
</tt><tt><br>
<br>
Currently SA SA Overseas Ltd, an Asian clothing company, owns the
global </tt><tt>rights to SASA. At the time of registering the
trademark it even wrongly </tt><tt>claimed that the word "sasa"
had no meaning in foreign languages. In </tt><tt>Swahili SASA has
a meaning a bit like "now, or "alive". It also has a </tt><tt>Samoan
meaning. [/That highlights another problem with elevating words </tt><tt>to
"signs"in the domain name world./]
</tt><tt><br>
<br>
The proposed EU legislation could pose problems for the
sasascience.org </tt><tt>domain name since it is using the
trademarked SASA as a part of a domain </tt><tt>name. Should it,
for example, buy sasa.net -- which is for sale -- it </tt><tt>could
likewise be at risk under the proposed legislation. It is </tt><tt>impossible
to assess if that risk is high or low, but it would expose </tt><tt>SASA
the NPO to risks from internet trolls and other trademark owners.
</tt><tt>There is also a risk that this proposed wording could be
understood as </tt><tt>the EU unilaterally expanding the rights
conferred by a Community Trade </tt><tt>Mark.
</tt><tt><br>
<br>
Whether or not this exposes NPO/Civil Society domain names to risk
only </tt><tt>within the boundaries of the EU, or opens up the
option for EU serving </tt><tt>as a litigation site that puts
such domain names at risk everywhere is </tt><tt>unclear. What
appears clear is that the wording does pose risks for </tt><tt>NPO/Civil
Society organizations, and that the wording is unnecessary </tt><tt>given
the existing rights of a Community Trade Mark.<br>
-------------------<br>
<br>
Sam <br>
</tt>
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