[At-Large] R: IGO names: is this worth war?

[bzs at TheWorld.com]

On November 2, 2016 at 21:58 johnl at iecc.com (John R. Levine) wrote:
 > > That is exactly the position of GNSO - there are already protection
 > > mechanisms in place for intellectual property protection in the
 > > procedures. Somehow some IGO's just seem to want to be special.
 > 
 > Unless I've missed something, the TMCH et al are for trademarks.  IGO 
 > names typically aren't trademarks.

Under US law, and no doubt others', IGO names would be trademarks,
they just might not be registered trademarks.

The difference is not that great (we could quibble "great".)

You can't seek certain reliefs (under US law, again probably others)
for unregistered trademarks but you certainly can stop someone from
using your mark in a "confusingly similar manner" and even pursue
damages.

There's more to that of course, there are thousands of pages of case
law etc detailing the differences. But that's the usual 2 cent
summary.

One always has to go back to the base principle that the ultimate
purpose of trademark law is to protect consumers, not to create
intellectual landfill.

So if you buy a bottle labeled Coca-Cola you have some reasonable
confidence it was the product (direct or by their approval) of the
Coca-Cola Bottling Company.

  N.B. By this reasoning domains as commonly defended are a bizarre
  aberration of trademark tradition. But that's a different
  discussion.

I have no idea why IGOs wouldn't register their marks but perhaps
there is some reasoning.

That said TMCH is certainly weighted towards registered trademarks
(WIPO, USPTO, etc) though if you read their rules thoroughly there are
other validations of a mark possible.

But one possible proposal, assuming this power exists under the
contract, is to tell TMCH here's a list of marks along with other
identifying information which we want you to treat as registered in
the TMCH.

I'm not sure that will be satisfactory. Obviously one would have to
ask the IGOs et al of course.

For example all that TMCH entry gives you is access to sunrise
registration and, failing the exercise of that, notification when
someone registers an exact match such as WHO.BICYCLES.

And if registered under sunrise the organization would still have to
pay sunrise registration fees (as stands) which vary from around
US$200 to US$2500 or more in a few cases.

Most are closer to the low number in price.

But even at US$200 per each 1,000 of them would be US$200,000 in
sunrise registration fees, per string. Yearly renewals would generally
be somewhat lower.

And a warning to and sign-off from whoever else registers WHO.BICYCLES
if it's not registered by the TMCH entrant. The registrant will get a
notice when they try to register a mark which is an exact string match
in the TMCH database.

Notice that as it works now that will not give WHO (just an example)
anything regarding strings like WHO-UN.BICYCLES or even
WORLDHEALTHORGANIZATION.BICYCLES unless they are each separately put
into the TMCH database.

There's no accommodation for a regular expression or other similarity
test and to my knowledge TMCH has no process if you find a
registration you feel is confusingly similar but not an exact string
match. That would be outside of their purview.

The recommended pursuit of relief would be to file a URS complaint
(for nGTLDs) and/or seek redress via a court of competent
jurisdiction.

As I said earlier, the devil is in those details.

And only the IGOs making these requests can really address those
issues.


 > Regards,
 > John Levine, johnl at iecc.com, Primary Perpetrator of "The Internet for Dummies",
 > Please consider the environment before reading this e-mail. https://jl.ly
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-- 
        -Barry Shein

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