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

[Nicolas Adam]

Hi Sam,

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.

I am curious as to why you would say that "The IP community opinion is 
that this language is unnecessary (...)" though?

Thanks

Nicolas

On 27/12/2014 11:53 AM, Kathy Kleiman wrote:
> 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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