NPO/Civil Society Issue in European Union Proposals for Internet Domain Name Policy

[Milton L Mueller]

A great initiative, good to see NPOC taking the lead on this, I know you have some expert TM people (e.g., Lori). I think NCSG as a whole should be able to get behind this.

--MM

From: NCSG-Discuss [mailto:NCSG-DISCUSS at LISTSERV.SYR.EDU] On Behalf Of Sam Lanfranco
Sent: Friday, December 26, 2014 10:56 PM
To: NCSG-DISCUSS at LISTSERV.SYR.EDU
Subject: [NCSG-Discuss] NPO/Civil Society Issue in European Union Proposals for Internet Domain Name Policy


NCSG Colleagues,


NPOC is completing its internal stakeholder consultation on the following issue. NPOC will submit a request to the European Union and asking them to remove some problematic wording in their proposed revision ofthe European Union Regulation on the Community Trade Mark and the European Union Directive Relating to Trade Marks. The issue context, background, analysis and proposed NPOC response are contained below:

*/Issue Context:/* There are Internet domain name policy discussions going on in the European Union (EU) that can have a serious negative impact on the ability of not-for-profit and civil society organizations to select appropriate website/domain names and email address strings.There is a window of opportunity to object to the draft proposals via public comment submissions to the final discussions. The chances for successful objection are good. Most of the intent of the wording can be achieved by existing legislation that does not pose problems for the not-for-profit and civil society community. This same issue is being discussion in the Internet Intellectual Property community since it also has negative consequences for commercial organizations. Feel free to share this information.

*/Background:/* The EU is engaged in an ongoing reformation of the European Union Regulation on the Community Trade Mark ("the Regulation") and the European Union Directive Relating to Trade Marks ("the Directive"). Both have potentially severe impacts on the internet and the domain name industry. In their present codification, the Regulation and the Directive describe the rights conferred by ownership of a Community Trade Mark (a.k.a. sign) and attempt to harmonize national and local trade mark regimes. The existing Regulation and Directive prohibit the following types of listed conduct by one who does not own the trade mark (sign):

   . 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


The proposed revisions by the European Council explicitly insert prohibitions concerning domain names. The more important wording is below after the /[...]and in italics/.

   /. /Using the sign as a trade or company name/[...], or as a domain name, or as a part thereof. [emphasis added]


The IP community opinion is that this language is unnecessary, superfluous, sloppy and poorly suited for the dynamic nature of the Internet, as well as adequately covered under existing rights conferred by a Community Trade Mark that already extend to Internet domain names. The fear is that among other problems the proposed amendment would likely:

   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.


There is time to weigh in and oppose this proposed amendment. Final negotiations recently began between the European Parliament (EP) and the European Council (EC), with the European Commission serving as a quasi-mediator. These "Trilogue" negotiations will likely continue until early 2015.

*/Analysis:/*[by Sam Lanfranco] While this amendment is talking about EU regulations I will use an Africa example where I am personally involved to underscore the nature of the problem. I am the Director of ICT for science, technology and development (ICT4STD) in the /Society for the Advancement of Science in Africa (/SASA/)/ The SASA acronym is widely used just in South Africa alone: South African Sugar Association; South African Statistical Association; South African Society of Anaesthesiologists; and the long established South African Society of Artists. It has wide use elsewhere. The SASA I work with is an NPO and owns the sasascience.org domain name.

Currently SA SA Overseas Ltd, an Asian clothing company, owns the global rights to SASA. At the time of registering the trademark it even wrongly claimed that the word "sasa" had no meaning in foreign languages. In Swahili SASA has a meaning a bit like "now, or "alive". It also has a Samoan meaning. [/That highlights another problem with elevating words to "signs"in the domain name world./]

The proposed EU legislation could pose problems for the sasascience.org domain name since it is using the trademarked SASA as a part of a domain name. Should it, for example, buy sasa.net -- which is for sale -- it could likewise be at risk under the proposed legislation. It is impossible to assess if that risk is high or low, but it would expose SASA the NPO to risks from internet trolls and other trademark owners. There is also a risk that this proposed wording could be understood as the EU unilaterally expanding the rights conferred by a Community Trade Mark.

Whether or not this exposes NPO/Civil Society domain names to risk only within the boundaries of the EU, or opens up the option for EU serving as a litigation site that puts such domain names at risk everywhere is unclear. What appears clear is that the wording does pose risks for NPO/Civil Society organizations, and that the wording is unnecessary given the existing rights of a Community Trade Mark.
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Sam
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