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Hi Sam,<br>
<br>
I am very happy too about this NPOC initiative. Under the thrust of
some powerful NPOs, I sometimes was afraid that NPOC may not always
recognize the value of keeping TM away from domain names.<br>
<br>
I am curious as to why you would say that "<tt>The IP community
opinion is that this language is unnecessary (...)</tt>" though?<br>
<br>
Thanks<br>
<br>
Nicolas<br>
<br>
<div class="moz-cite-prefix">On 27/12/2014 11:53 AM, Kathy Kleiman
wrote:<br>
</div>
<blockquote cite="mid:549EE3F9.2060307@kathykleiman.com" type="cite">
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<div class="moz-cite-prefix">Hi Sam,<br>
What you write below is striking. These are issues we have dealt
with in ICANN for years - the concept that one company
(regardless of its trademark) does not "own" a string of letters
- be they words or acronyms. Organizations of all types and
individuals again and again use the same words, acronyms, and
terms. I agree with Sam analysis below and David's follow-up
that this is a great area for the whole of the NCSG to weigh
in. <br>
<br>
Tx Sam for the heads-up!<br>
Kathy<br>
<br>
:<br>
</div>
<blockquote cite="mid:549E2DC5.50407@yorku.ca" type="cite">
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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> </blockquote>
<br>
</blockquote>
<br>
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