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The Governmental Advisory Committee (GAC), which represents states at ICANN, primarily advises on public health issues and the interplay between ICANN policies and national or international law standards. At the draw of each ICANN meet, GAC issues a Communiqué summarizing the latest developments and requests. The GAC Communiqué of October 16, 2014 mainly addresses issues related to the transition of the US Stewardship in overseeing the functions of the Internet Assigned Numbers Authority (IANA) and recommendations concerning safeguards applicable to new gTLDs.

The first recommendation submitted to ICANN concerns Internet governance and considers how the IANA stewardship transition should be structured. The GAC is also committed to work on ICANN’s governance and accountability. Thus, this process should be guided by consensus based decisions taking into account the public interest. The goal is to cater for a more general interest rather than that of the communities or groups immediately affected by Internet governance. This process should include all stakeholders in order to be legitimate for all everyone.

The second part of the recommendations reflects the concerns of GAC in relation to the manner in which the New gTLD Program Committee (NGPC) managed the previous recommendations made in the Beijing, Singapore and London Communiqués as regards consumer protection, sensitive strings and non-discriminatory registration policies. These recommendations are set out extensively in the Beijing Communiqué where the safeguards are classified into two categories.

Category 1 sensitive strings raises concerns as regards consumer protection and regulated markets. The GAC advises that registries should include, in their terms of use, the obligation on registrants to comply with all applicable laws and to assure that sensitive data is stored securely. It also establishes a non-exhaustive list of extensions to which these safeguards should be applied, such as .kids, .university, .care.

Category 2 comprises generic extensions which are for restricted use. With reference to registration policies, GAC recommends that registration limits be proportionate to the types of risks associated with TLD extensions. These include extensions such as .tires or .hotel.

GAC insists that ICANN should focus on implementing WHOIS related safeguards and transparency measures and on complementing the existing assessment on this issue.

The GAC also recommends that an interim mechanism be put in place to respond to security issues. The PICDRP (Public Interest Commitment Dispute Resolution Process) should be amended to address urgent cases more expeditiously. The GAC deems that the NGPC should verify the credentials of registrants in an effort to supplement the safeguards for Category 1 Strings.

For extensions falling under Category 2 safeguards, the GAC recommendation emphasizes the need to ensure that nondiscriminatory registration policies are enforced for new gTLDs.

To be followed…

The greatly anticipated launching phase of TLD .paris is ongoing since September the 9^thand will end on November the 11^th at 1pm (UTC). The activation of the names and general availability will occur starting from December the 2^nd at 1pm (UTC).

The launch of .paris will proceed during a period of 63 days for which five categories of applications will be accepted, following the present order of priority:

• category 1 : rights holders of TMCH-registered trademarks ;
• category 2 : public authorities from the Greater Parisian ;
• category 3 : rights holders of local French trademarks or geographical indication holders ;
• category 4 : other rights holders ;
• category 5 : landrush period.

Applicants must satisfy the following criteria of eligibility established by the .paris:

• Residing in the Parisian region ;
• To pursue professional, personal, commercial or cultural activities in the Greater area of Paris ;
• Justify of any other affiliation be it direct or indirect with the Greater area of Paris.

The applicants under all five categories will be simultaneously accepted and allocated at the end of the Launch Phase by order of priority of each category.


Category 1 : trademarks registered in the TMCH and protected in France

The Sunrise period is open for trademarks validated by the TMCH system. Local Trademark holders, international trade marks registered in France or community trademarks that are validated by the said system will have priority over non-local trademarks.
In the assumption of multiple eligible applications for the same domain name, the following criteria of attribution will be applied:

1. The application corresponding to a local trademark (operating in France) will have priority over non-local trademarks.
2. For trademarks sharing the same category, the oldest registered trademark will succeed.
3. If two trademarks from the same category were registered on the same day, the attribution will be resolved by auction.

Category 2 : public authorities from the Parisian region

This category allows public authorities from the Parisian region to reserve three types of names:

• Their own names, including any variation or alias generally used to describe them;
• The names of public services they are responsible for ;
• Geographical names that can be related to any location of the Parisian region, its monuments, symbols, noticeable places or any locally-relevant or iconic name for which they are the relevant authority. This condition is also applied to variations and abbreviations of such names.

This category is still awaiting a validation from Icann.


Category 3 : trademarks protected in France not validated in the TMCH

Are entitled to this category:

• Local trademark holders that are not validated in the TMCH, which includes French trademarks, community trademarks and international trademarks registered in France ;
• geographical indications recognized by International treaties, EU regulations or French legislation.

In the assumption of multiple eligible applications for the same domain name, the applicant holding the oldest trademark registration will succeed.


Category 4 : legal entities established in the Parisian Region

Are entitled to this category:

• corporate names, trade names including clear variations and/or abbreviations with a legal seat or place of business in the Greater area of Paris ;
• non-for-profit legal entities with a legal seat or place of business in the Greater area of Paris.

In the assumption of multiple applications for the same domain name in this category, attribution will be resolved by auction.


Category 5 : landrush period

This period enables all eligible applicants to apply for one or multiple domain names with the .paris extension that were not claimed by category members from 1 to 4. In the assumption of multiple applications for the same domain name in this category, attribution will be resolved by an auction.
 
It is advisable to make applications as soon as possible given the unusual nature of the Sunrise. Take this opportunity to register your personal domain name under the new .paris extension. Dreyfus can assist you in the reservation of domain names and in strategies regarding the new gTLDs.

On May 14, 2014, Japan announced the adoption of new amendments pertaining to trademark law. These provisions, which will be effective from April 1, 2015, will broaden the scope of trademark protection in Japan.

The following are covered by the latest amendment:

– trademarks consisting of sounds, colors, holograms, motion and position;

– regional collective trademarks.

1. The new trademarks

New distinctive signs can be protected namely sounds, colors, holograms, motion and position trademarks.

Sound marks, which can be composed of musical or non-musical sounds, were already acknowledged by the former Japanese law. The protection provided to sound trademarks will now be extended to very brief sound clips. Colours, even if primary or plain, may be protected given that they are sufficiently distinctive.

The protection of figurative marks will encompass moving objects and animated images. The Japanese Ministry of Economy, Trade and Industry (METI) will be responsible for defining the scope of the applicable provisions.

Touch, olfactory, taste or multimedia marks are not mentioned in the new provisions, but may be added later by METI without resorting to an amendment.

2. Regional collective trademarks

Japan has moved towards an increased protection of regional collective trademarks.

Composed of a regional appellation appended to the name of the product, such signs were rejected, due to their lack of distinctive character. Only some associations which meet specific criteria could overcome the ban.

As from April 2015, a greater number of associations and companies can file an application for a regional collective mark, such as chambers and societies of commerce and industry, or even some foreign legal entities.

This new amendment denotes Japan’s determination to align its legal regime with international trademark law.

In April 2013, the Government of the British Virgin Islands adopted a new law to revamp its trademark regime established in the 19th century.

A year later, the draft Trademark Rules has finally been released. The passage of the new Rules is expected later this year.

The draft Rules aims to implement the following changes:

– Electronic filing at the Registrar’s discretion will be possible;

– The Registrar will be required to provide a notice of irregularities for each application, should there be any.

The applicant will have to respond within 2 months of the receipt of the notice, failing which his application will be deemed abandoned;

– An immediate opposition period of three months. If the applicant does not respond, the application will be deemed canceled. The Registrar may require security for costs from the opponent, however this could be done only if the latter does not reside or carry on business in the British Virgin Islands;

– The Registrar may, at its sole discretion, reclassify the specification of a registered mark if it is not in accordance with the Nice Classification. The applicant must then submit any objections he may have within 2 months; after that period the Registrar will proceed with executing the changes it considers appropriate. Third parties may object to the filing of the trademark within one month in the case of a new application, or within 2 months if the trademark was already registered.

Once again, the Registrar may require security for costs if they do not reside or carry on business in the British Virgin Islands;

– The Registrar may order extensions of time up to two months for opposition procedures;

– The Registrar may restore non-renewed trademarks within 6 months of their expiration date upon payment of penalty fees;

– In addition to all that, the draft Rules provides instructions on the procedure for approval as a trademark agent.

These provisions are likely to be amended before the final Trade Mark Rules are passed in the British Virgin Islands.

“You may create what you wish as long as you respect the trends…”

It is expected from stylists to make dramatic changes to the fashion world through evermore extravagant clothing lines, yet it is common for their inspiration to be restrained by the commercial pressure of ongoing trends. And by doing so, this can blur the line between imitation and original creations. A conference will take place to discuss the legal issues regarding this paradox on Friday 7^th of November at the Library of the Paris Bar Association.

The conference will be chaired by the Joseph Ltd legal director Catherine Palmer, as well as many participants.

Most notably, Nicolas Martin Director of Intellectual Property Hermès, Fabrizio Jacobacci, Attorney-at-law and founder of the firm Jacobacci & Associati as well as an expert on issues relative to the protection of fashion products. But also Nathalie Dreyfus, Founder of the firm Dreyfus & Associés, and expert of the Arbitration and Mediation Centre , WIPO and the National Arbitration Forum (NAF), Alexander Rozycki, Barrister specializing intellectual property law, 4-5 Gray’s Inn Square and finally Annabelle Gauberti, Founder of Crefovi law firm, specializing in fashion and luxury law (Paris and London), and president of the International Association of Lawyers for Creative Industries (ialci).

It is safe to say that the future of fashion, on the intellectual property perspective but also its creativity may become a serious concern…

The Internet revolution is at its peak with the advent of new generic top level domain names. The possibility to register new gTLDs opens new avenues for significant trade and economic prospects. Internet stakeholders are engaged in a raging battle to secure the most promising gTLDs.

In this ferociously competitive setting, it is not uncommon that a TLD is coveted by several applicants. A string contention then occurs, where two or more applicants successfully pass the stages of the evaluation process for domain names, which are identical or similar.

Module 4 of the ICANN’s New gTLDs Applicant Guidebook provides that the String Similarity Panel identifies contention sets.While identical gTLDs will automatically be assigned to the same contention set, similar gTLDs will only be placed in the same contention set when this similarity is such that it may create probability of confusion thus impacting the visibility of the gTLDs.

When such a string contention occurs, the applicants are invited to reach an amicable settlement. If they are unable to do so, the Applicant Guidebook provides for an auction as a means of last resort allowing to distinguish between applicants for a gTLD string belonging to the same contention set.The winner will then be able to proceed to the stage of contract execution, subject to meeting the requisite criteria.

An auction was held on September 17 in a view to resolving string contention sets for three new  gTLDs:the <.buy>, <.tech> and <.vip> gTLDs, which were sought by 4, 6 and 5 applicants respectively.During the auction which was facilitated by Power Auctions LLC, an auction service provider appointed by ICANN, Amazon won <.buy> for $ 4,588,888, while Dot Tech LLC acquired <.tech> for $ 6,760,000 and <.vip> was secured by Top Level Domain Holdings for $ 3,000,888.

The sums at stake are indicative of the high level of competition, which piques internet stakeholders and the economic significance attributed to the new  gTLDs.

The auction system is a recent one: as at 17 September, only one auction had taken place, on June 4 this year, Beijing Tele-Info Network Technology Co. LTD won the <.信息> gTLD for $ 600 000.Auctions will take place every month until March 2015. For instance, 108, 134, 106 and 208 applicants are competing for the <.law>, <.sucks>, <.music> and <.forum> gTLDs respectively…Nonetheless, it is unlikely that all of the above mentioned applicants will be participating in the auction: while some will voluntarily withdraw themselves, others will be evicted during the more extensive evaluation phases.

It is noteworthy that the significant proceeds from these auctions have not yet been assigned to any particular purpose; the proceeds collected will therefore be separated from the traditional proceeds of ICANN. It remains to determine how they will be used.

Following the separation of Sudan and South Sudan in 2011, a trademark must be subject to dual protection so as to be safeguarded throughout the territory of the two countries. Trademarks registered in Sudan are no longer protected in South Sudan. Thus, it is advisable to have two distinct registrations.

The Ministry of Justice of South Sudan is responsible for the completion of formalities under the 1969 Sudanese law. The existing system is expeditious (2 to 3 months to secure a registration certificate) but requires that an application to be filed for each proposed class (mono class system).

Once registered, the trademark will be protected for a renewable period of 10 years in the territory of South Sudan.

Any application filed today will only be legally enforceable once the new law, which is currently being debated in Parliament, shall come into force. However, protection will run retroactively from the filing date.

With the rapid proliferation of social networks and the increased access to virtual currencies, it was inevitable that the two would merge at some point. Indeed, virtual currencies are being increasingly used in networks, particularly for the payment of premium services.

Virtual currencies are characterized by their digital nature. They are stored on electronic media and used by electronic devices. They serve the same purpose as real money, that is, to purchase goods and services. However, they are private currencies and are thus not controlled or regulated by the state. They may be used either for profit or for charity.

These new currencies, which work in parallel with real money, are often network-specific. Facebook Credits and Twitter’s Twollars are amongst the most popular. They have also established themselves in other media, particularly in video games.

There are two systems of virtual currencies:

–       open systems where real money can be converted into virtual currency and vice versa;

–       closed systems where virtual currency cannot be reconverted back into real money.

In connection with these currencies, new payment methods can be found which are specifically designed for social networks like, for instance, Dwolla. At the same time, “likes”, followers and tweets are being monetized. This concept was used in Marc Jacobs’ pop-up store during the Fashion Week in New York where customers could pay through tweets by using the hashtag #MJDaisychain.

Currently, these currencies are not regulated. However, their evolution and the stakes involved make it very important for a related legal framework to be established. Given their lack of territoriality, an international solution should be found for these currencies to be effectively monitored. This makes the issue a complex one.

Dorothy M. Hartman, a retired science teacher and the CEO of the ABFY SELLERS group, claims that her contributions towards The Internet 2 were stolen by the federal government through its Small Business Innovation Programs and the National Science Foundation. According to Hartman, after her patent application was fraudulently prosecuted by the United States Patent and Trademark Office, she responded by filing writs in the United States Supreme Court.  The Internet 2, which has brought enormous change around the globe in terms of how people do business, and has turned into to a trillion dollar industry, is certainly worth fighting for, especially considering Hartman’s current business ventures are struggling.

As a background, if you are unaware of the drastic differences between the Internet 1 and the Internet 2, and don’t want to delve in-depth into technical details, imagine the difference between a line and a circle.  Before the invention of the Internet 2, the internet was more or less seen as a tool for business and utility.  Websites, created by webmasters could be visited by online users.  However, communication remained fixed between these two actors in a linear relationship.  If we compare this to the advent of The Internet 2, which has become more about social media, commercial transactions, and online interactions, amongst various parties together, the complexities of these differences become evident.  It is now circular, with webmasters, online users and other online users all in a circle of communication together. In linking her ideas to the success of The Internet 2, Hartman says it took her insight of the web to realize these interactive transformations.

It has now been 24 years that Hartman’s voice has been ignored.  At the time, Hartman was 46 years old when she submitted a business plan to the government with the goal of obtaining funding for a telecommunications services prototype company.  Her plan, which was dismissed by the government, was apparently stolen to enrich the Internet 1 and those already in the internet industry.  The battle for her intellectual property has felt like an up-hill battle to the now senior Hartman, who no longer feels she has the strength to fight against the power of the government and massive multinational companies.

Hartman rejects the reasoning of the U.S. Court of Appeals for the Federal Circuit in the 2013 case on the following grounds:

• She claims that the Court did not distinguish between the Internet 1 and the Internet 2 and that the difference is definite;
• the Court did not acknowledge the, what she claims to be, fraudulent behavior of the United States Patent and Trademark Office;
• the Patent Office argument was invalid in its assertion of “indefiniteness.”

Despite her age, Hartman claims she will continue to fight for justice and for what she deserves for producing an invention which has without doubt changed the world.  Numerous media outlets have begun describing this case and the injustice to which Hartman is being subjected to in relation to Hartman’s status as a black female operating in a male dominated industry.  Regardless of this, it can surely be said that whoever the inventor of the Internet 2 is, they deserve credit for what could be said to be the 20^th century’s greatest invention.

Three post-delegation dispute resolution procedures (PDDRP)for the new extensions have been implemented :

• The TM-PDDRP on trademark infringement;
• The RRDRP which comes into play when the registry of a new community extension goes beyond the restrictions contained in its registry agreement;
• The PICDRP.

The Public Interest Commitments Dispute Resolution Procedure (PICDRP) was developed to ensure the compliance of the registries with the commitments undertaken in their registry agreement with ICANN.

What does the procedure sanction?

By signing the registry agreement with ICANN, companies applying for new domain name extensions subjected themselves to numerous technical, financial and legal obligations. The duty to comply with public interest commitments (PICs) as well as the duty to comply with Specification 11 of the registry agreement (see below) form part of these obligations. The PICDRP therefore sanctions the registries’ non-compliance with their commitments in this respect.

Like all post-delegation dispute resolution procedures, the PICDRP sanctions the very behavior of the extension registry. It thus differs significantly from the UDRP procedure, for instance, which targets domain names registrants.

What are PICs?

As from March 5, 2013, applicants for new gTLDs were given twenty-eight days to make public interest commitments. They were thus afforded the opportunity to specifically define the commitments they intended to take (or not), either by referring to their application file, or by undertaking completely new obligations.

For example, Donuts Inc, the applicant with the largest number of filed applications, undertook that the domain name .lawyer be only open to legal professionals, with a view to protecting consumers. Donuts may thus be liable if it decides to make the .lawyer extension accessible to all internet users.

“These are commitments made to the community, to governments, and to all those who could oppose applications – they are not commitments to ICANN,” said the President of the Global Domains Division at ICANN, Akram Atallah, at the time. And of course, it is these same commitments that the PICRDP will sanction in the event of non-compliance.

What is Specification 11?

Inserted in the registry agreements entered into with ICANN, Specification 11 requires registry operators of new gTLDs inter alia not to impose eligibility criteria for the registration of domain names which would limit the registrations to a single person/entity or affiliated persons/entities.

Specification 11 results from the opinions emanating from the GAC, the ICANN body representing governments. The GAC had identified gTLDs reflecting regulated or restricted industries, as well as generic extensions which applicants wish to make exclusive use of (known as “closed generic TLDs”). The GAC thus made several proposals in an effort to protect public interest in relation to these extensions which took the form of Specification 11. This document is attached to the registry agreement.

The obligation of registries to sign the RAA 2013 (the latest version of the Registrar Accreditation Agreement) with the registrars or that to publish and comply with the registration rules are also included in Specification 11.

What is the procedure?

The PICDRP is the mechanism through which ICANN intends to enforce public interest commitments. Any person who deems that PICs or provisions of Specification 11 have not been complied with by an extension registry can lodge a complaint with ICANN stating:

–       The basis of the complaint;

–       The way in which the registry did not comply with its commitments;

–       The resulting loss.

After a preliminary assessment, ICANN forwards the complaint to the relevant extension registry. The latter then has 30 days to liaise with the complainant and try to find a solution. Beyond this deadline, the registry will have to explain to ICANN how it complies with public interest commitments. ICANN will have investigation powers and, at its sole discretion, will have the power to appoint three experts who will investigate and assess whether the registry has breached its commitments. If the behavior of the registry does not comply with the PICs or Specification 11, ICANN may require it to take corrective measures within 30 days and could thereafter adopt measures culminating in the termination of the registry agreement.

Which TLDs does the procedure apply to?

The PICDRP is solely intended for new domain name extensions. Therefore, neither national extensions known as ccTLDs (such as .fr or .uk) nor traditional gTLDs (such as .com, .info, .net or .org) are covered.

Dreyfus specializes in the resolution of Internet disputes, particularly in relation to new domain name extensions. Please do not hesitate to contact us for any queries.