Tag Archives: intellectual property

Q. What Unites Esther Dyson And YMCA? A. Opposition To New gTLDs

A representative of the Young Men’s Christian Association of the United States of America (YMCA) and Esther Dyson will appear before the U.S. Senate Committee on Commerce, Science, and Transportation a full committee hearing on ICANN’s expansion of top level domains today (Thursday).Others who will be appearing include ICANN’s Kurt Pritz, Fiona Alexander from the National Telecommunications and Information Administration (NTIA), Dan Jaffe from the Association of National Advertisers and the Coalition for Responsible Internet Domain Oversight.While it is predictable that Jaffe will rant against the introduction of new gTLDs, it is to be hoped the committee will ask why the organisation has only belatedly come to the party in opposing new gTLDs.The proposal for new gTLDs has been around since the mid-2000s and the ANA has even submitted comments on the proposal around 2008. Something Robert Liodice, the organisation’s president and CEO, forgot when writing his ill-informed letter to ICANN’s CEO and president in August 2011. Embarrassingly for the ANA and Liodice, Beckstrom refuted many of the issues noted in their letter and outlined how comments including the ANA’s had been taken into account when formulating new gTLD policy.Esther Dyson is an oddity. She was ICANN’s inaugural chair and has become a vocal opponent of new gTLDs, in an article she wrote for the Project Syndicate in August that new gTLDs do not “actually create any new value.””The value is in people’s heads – in the meanings of the words and the brand associations – not in the expanded namespace. In fact, the new approach carves up the namespace: the value formerly associated with Apple could now be divided into Apple.computers, apple.phone, ipod.apple, and so on.”Dyson believes “this sounds confusing [and] that is because it is.”Possibly, on the face of it, strangest appearance will be from Angela Williams, the General Counsel of the YMCA in the US. Kieren McCarthy on his dotNXT blog has dug a little deeper. McCarthy notes that the reason they are appearing is solely because of the intellectual property lobby.”The YMCA turned up for the first time at an ICANN meeting at the most recent meeting in Dakar just over a month ago,” wrote McCarthy. “Incredibly its representative, Michael Carson, immediately became the person in charge of both communication and membership for the newly formed Not-for-Profit Operational Concerns Constituency (NPOC).””Michael’s sudden elevation is thanks to the NPOC’s chair, Debra Hughes. Debra represents the Red Cross but is viewed by some in the ICANN constituency she represents – the non-commercial stakeholders group – as a Trojan Horse for intellectual property interests.”

US Prosecutors Request Spanish Domains Seized in Piracy Crackdown Not To Be Returned

The fight in courts over the US government’s seizure of gambling-related domain names is continuing with Wired reporting “federal prosecutors are asking a judge not to return the domain names of one of Spain’s most popular websites, seized as part of a major US crackdown on internet piracy.””The legal filing over Rojadirecta.com represents the government’s first legal response to a lawsuit challenging ‘Operation in Our Sites.'”The US Immigration and Customs Enforcement seized as many as 208 domains the authorities claim are linked to intellectual-property fraud, Wired reports, with the first seizures taking place in 2010. “The court-ordered seizures are aimed at web sites that sell counterfeited goods, as well as sites that facilitate illegal music, film and broadcast piracy.””The Rojadirecta .com and .org domains were seized in January along with eight others connected to broadcasting pirated streams of professional sports.”To read the Wired report in full, see:
www.wired.com/threatlevel/2011/07/domain-seizures-defended/

Hustler Opposes .XXX, Protects Domains And IP

Hustler has prohibited ICM Registry, the operator of the .XXX registry, “from registering or selling to a third party any .XXX domain names that contain the famous Hustler trademark or other Hustler-related trademarks.”Hustler President Michael Klein said “it appears that the .XXX TLD will do nothing but drive up costs to the adult community and will force us to fight infringement on yet another front,” according to an XBix.com report.Hustler has made clear in writing several times “that any attempt to do so will constitute infringement of its intellectual property rights and that legal action will be taken, the company said.””Like many other companies in the adult industry, Hustler will not allow its trademarks to be bought, sold or used by any other entity nor will be we be shaken down by ICM,” Klein said. “We are prepared to take whatever legal action may be necessary.”The report also noted that attorneys for Hustler said they are continuing attempts to initiate dialogue with ICM, but the company has remained silent.”We are constantly policing the registration and use of domain names that attempt to capitalize on Hustler’s trademarks,” said Jonathan Brown, attorney for Hustler. “ICM’s silence is particularly disconcerting, especially in light of ICM’s supposed aim of ‘working proactively to balance the rights of existing domain name holders, and other trademark and intellectual property holders.'”In a separate report on AVN, the parent company of Brazzers, Manwin, also signalled its intention to assertively protect its online properties in a letter to ICM Registry last week demanding protection of its domain names and trademarks as the launch date for .XXX nears.

US Ninth Circuit Applies Nominative Use Defence to Domain Names

In a decision that will likely help define the boundaries of trademark owners’ rights in domain names, the Ninth Circuit Court of Appeals recently reversed and remanded a district court’s broad injunction prohibiting any use of the trademark LEXUS in domain names used by an independent auto broker legally helping to sell LEXUS automobiles. In Toyota Motor Sales, U.S.A., Inc. v. Farzad Tabari, et al., No. 07-55344 (9th Cir. July 8, 2010), a unanimous panel robustly applied the doctrine of nominative fair use to domain names. The decision was authored by Chief Judge Alex Kozinski, who invented the nominative use defence in the New Kids on the Block case 18 years ago, write Andrew Baum and Jeffrey A. Kobulnick in this article published on Mondaq, the online IP and technology legal blog.

Nominative fair use, the article notes, “provides protection to those who use another’s trademark for the purpose of identifying the brand without suggesting affiliation or sponsorship with the brand owner.”

The case centred around Toyota claiming that the use of “Lexus” in the domain names buy-a-lexus.com and buyorleaselexus.com infringed its trademark rights. Originally the district court supported Toyota “that prohibited the Tabaris (the registrants) from using ‘any … domain name, service mark, trademark, trade name, meta tag or other commercial indication of origin that includes the mark LEXUS.’ The Ninth Circuit reversed in light of the nominative fair use doctrine and First Amendment concerns.”

To read this article in full, free registration is required, but go to mondaq.com/unitedstates/article.asp?articleid=105948.

ICANN Threatened by Olympic Committee Over Intellectual Property Concerns

The International Olympic Committee appears to think it has the rights to all sport, given a recent letter to ICANN that raises concerns on the .SPORT gTLD proposal in particular, and new gTLDs in general.

A letter from Urs Lacotte, director general of the IOC, and Howard Stupp, the IOC’s Legal Affairs Director, says they wish to discuss with ICANN these issues with ICANN and notes the IOC has “serious concerns” regarding “intellectual property protection.”

The IOC wants Olympic properties added to a list of reserved trademarks and considers “the speculative benefits of unlimited expansion of the domain name system represented by the proposed new gTLDs are outweighed by the risks, harms and costs it poses to trademark owners and the public.” In other words, the IOC considers their concerns paramount when it comes to the domain name system!

The letter also notes the IOC wishes to discuss include ICANN’s structure and operations and concludes saying “these statements should not be taken as a waiver of the IOC’s right to proceed against ICANN for damages resulting to the IOC or the Olympic Movement from the implementation of an unlimited number of new gTLDs.”

The IOC already gets preferential treatment with Network Solutions forbidding any domain registrations with any domain name containing IOC trademarks, according to a Domain Incite report, and has agreements with Sedo, Go Daddy and eBay to withdraw any infringing domain name auctions.

The letter from the IOC to ICANN is available from:
icann.org/correspondence/lacotte-to-beckstrom-16mar10-en.pdf