[PC-NCSG] European Proposed Regulations with regard to Domain Names and Trade Marks

[Sam Lanfranco]

NCSG Policy Committee

Last month as Chair of the NPOC Policy Committee I kicked off a 
discussion of proposed European Community regulations with regard to 
trademarks and domain names that, if enacted, would open a Pandora?s Box 
of problems with regard, in particular, to domain name use in the 
Not-for-Profit and Civil Society sectors. After some consultation and 
dialogue I have drafted an NPOC position which is attached. Time is 
short since the European trilogue is likely to start shortly and we want 
the members of that trilogue to have time to digest what we have to say. 
I am forwarding this to the NCSG Policy Committee for information and in 
case NCSG would like to take a position on the issue as well. The 
Intellectual Property constituency is also preparing comments.

The /attached draft version document/ will go to about ten relevant 
individual members of the European Parliament and representatives from 
European countries who will be engaged in the European Parliament?s 
trilogue process involved in the "Proposal for a Directive of the 
European Parliament and of the Council to approximate the laws of the 
Member States relating to trade marks?.  The trilogue process is very 
opaque informal tripartite process attended by representatives of the 
European Parliament, the European Council and the European Commission, 
and in which representatives of the EU?s three main institutions try to 
forge compromises on often-clashing positions. Here is a link to help 
understand it: https://euobserver.com/investigations/123555

The NPOC submission is concerned with one particular part of the Council 
of the European Union ?Proposal for a Directive of the European 
Parliament and of the Council to approximate the laws of the Member 
States relating to trade marks?. The proposal wording, reproduced below, 
can be found on page 35 of the document at: 
http://data.consilium.europa.eu/doc/document/ST-11827-2014-INIT/en/pdf:

Section 3: Rights conferred and limitations; Article 10: Rights 
conferred by a trade mark; Item 3: reads:

/    ?The following, in particular, may be prohibited under paragraph 2; 
[page 35]: (d) using the sign as a trade or company name, *or as a 
domain name, or as a part thereof*;?
/
NPOC recommends deleting ?*as a part thereof? *from the proposed 
regulations. Note: The Intellectual Property constituency and others are 
also submitting comments to the some members of the trilogue process.

This wording risks opening a Pandora?s Box of problems, including scope 
for predatory litigation, with regard to otherwise quite proper domain 
names. As well, it is an unnecessary regulation since domain name 
trademark violations are adequately covered under other normal trademark 
protections.


Sam Lanfranco, Chair, NPOC Policy Committee.




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