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

[Kathy Kleiman]

Hi Sam,
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.

Tx Sam for the heads-up!
Kathy

  :
> 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.
> -------------------
>
> Sam

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