By Trevor Little
March 06 2012
ICANN has opened a public comment period on proposals to protect the International Red Cross and International Olympic Committee (IOC) names at the top level in new gTLDs. While top-level protection would be a positive development for the two organisations, the move has been characterised as a bid to “tidy up loose ends” – and it is the second level that will be the prime concern.
WTR previously reported on the Government Advisory Committee’s (GAC) efforts to encourage ICANN to commit to a list of almost 40 terms that will be banned from the first round of gTLD applications, with variants of the Olympic, Olympiad, Red Cross and Red Crescent trademarks among the so-called ‘Strings Ineligible for Delegation’.
The argument for additional protection is based on the premise that the Red Cross and IOC “are unique, international, non-profit and humanitarian movements that have been accorded special legal protection by international legislation and treaties” and, with a month to go until the application window closes, public comment is being sought by the IOC/Red Cross drafting team (the move also comes a week before the ICANN meeting in Costa Rica, where these recommendations may be the subject of possible action by the Generic Names Supporting Organisation Council).
The few comments that have been submitted since Friday are firmly in the ‘against additional protection’ camp, arguing that sufficient rights protection mechanisms are currently in place. However, considering the call for public comment, Nick Wood, managing director of Com Laude, argues that all organisations should not necessarily be viewed in the same way: “A major weakness of the new gTLD process has been that ICANN set out to treat all organisations equally. Thus there is only one set of application questions that you must complete whether you are a community or a domain investor, a publicly listed corporation or a not-for-profit. ICANN began to realise the folly of this strategy last year when they announced that the application fees were too high for organisations from the developing world and offered subsidies. In looking again at the Red Cross and the Olympics they are trying to now tidy up some loose ends before the application period closes.”
As to whether these organisations should receive additional protection, Wood acknowledges: “It’s a difficult issue. I’d prefer to see a process that allowed all types of organisation to step forward and obtain a block, including humanitarian not-for-profits and, for example, rights owners which have filed more than a dozen UDRPs. The Implementation Recommendation Team, which I was a part of, proposed that ICANN look at a blocking measure back in May 2009, arguing that there are some organisations that are repeatedly infringed which should be blocked from registration at the second level unless non-infringing use can be demonstrated. ICANN promised to investigate the viability of this ‘globally protected marks list’, then quietly dropped it. I think this was a mistake – a universally applicable blocking programme as a proof of concept in the first round would have complemented the trademark clearinghouse and the URS.”
Crucially, this second-level protection is the real concern for trademark owners, and the current comment period doesn’t touch on this issue for the IOC or Red Cross. Wood expands: “ICANN trumpeted protections at the top level for these organisations last June when really they were offering very little because no right-thinking person would seek to register either Red Cross or Olympics at the top level. What both these organisations really needed was protection at the second level across the thousands of new registries that will be created.”
They are not alone in this respect, and second-level protection will no doubt be high on the agenda for trademark constituents at next week’s ICANN meeting in Costa Rica.
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