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GNSO gives thumbs down to Olympic trademark protections in shock vote

Kevin Murphy, November 15, 2012, 13:20:38 (UTC), Domain Policy

ICANN’s GNSO Council voted against providing special brand protection to the Olympics and Red Cross today, in a shock vote that swung on a trademark lawyer’s conflict of interest.

A motion before the Council today would have temporarily protected the words “Olympic”, “Red Cross” and “Red Crescent” in various languages in all newly approved gTLDs.

The protections would be at the second level, in addition to the top-level blocks already in place.

The motion merely needed to secure a simple majority in both of the GNSO houses to pass, but it failed to do so despite having the unanimous support of registries and registrars.

Remarkably, the motion secured 100% support in the contracted parties house (registries and registrars) but only managed to scrape 46.2% of the vote in the non-contracted parties house, just one vote shy of a majority.

While the Non-Commercial Users Constituency predictably voted against the extra protections, it was an unnecessary abstention by an Intellectual Property Constituency representative that made the difference.

Trademark lawyer Brian Winterfeldt explained that he was abstaining — which essentially counts as a “no” vote — because the American Red Cross is his client so he had a conflict of interest.

The second IPC representative, newcomer Petter Rindforth, accidentally abstained also, before changing his vote to “yes” after it was explained that abstention was not an official constituency position.

Another member of the non-contracted parties house was absent from the meeting, potentially costing the motion another vote.

Half an hour later, when the Council had switched its attention to other business, Winterfeldt realized that his conflict of interest didn’t actually bar him from voting and asked if he could switch to a “yes”, kicking off a lengthy procedural debate about whether the vote should be re-opened.

In-at-the-deep-end Council chair Jonathan Robinson, in his first full meeting since taking over from Stephane Van Gelder last month, eventually concluded that because some councilors had already left the meeting it would be inappropriate to reopen the vote.

So the decision stands, for now at least: no special protections at the second level for the Olympics or Red Cross.

The Council is due to meet again December 20, when it may choose to revisit the issue. If it does, proponents of the motion had better hope the NCUC doesn’t request a deferral.

If today’s “no” vote is still in effect January 31, the ICANN board of directors may feel obliged to overrule the GNSO in order to approve the second-level reservations.

This wouldn’t look great for the vaunted bottom-up decision-making process, but the board is under a lot of pressure from the Governmental Advisory Committee to protect these two organizations, and it has already said that it favors temporary protections.

I suspect that the damage done today is not to the Olympics or Red Cross, which will probably get what they’ve been lobbying for for the last few years, but to the GNSO Council, which seems to have kicked off its new year on a divisive and embarrassingly bureaucratic note.

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Comments (10)

  1. IOC wanted protection on all of their trademarks. They have 700+ trademarks on the US alone. Sorry but this can’t just happen. They even have trademarks on “USA”.
    That was a good vote in my opinion. That will stop all other companies requesting the same treatment in the future. Olympic is used by thousands of companies around the world. Especially in Greece where the word Olympic came from.

    I bet Red Cross picked Brian Winterfeldt because of his status. They got what they deserved.

  2. Volker Greimann says:

    The motion did not call for the reservation of the terms for the RC/IOC, but rather for a temporary banning of any registration of the terms until the issue is resolved by a PDP., i.e. if the PDP came out against protection anyone would be able to register these names.

    However, while I voted for the motion, i made a statement that I would prefer a solution that would allow rights holders to apply for these domain names in the Sunrise even though the domain name could not yet be assigned, effectively allowing a queueing of registrations of these terms as domain names in an attempt to avoid disenfranchising rights holders from exercising these rights in the Sunrise.

    Maybe the road is now clear for such a solution.

  3. jon says:

    The ‘Olympic’ trademark (the IOC one) is probably the single most well-protected mark on the planet. Using ICANN to create a ‘super trademark’ is fundamentally wrong on so many levels. I really don’t get why the ICRC is spending money on this nonsense that they could be using to save lives. Shame on them.

    • Maria Farrell says:

      I understand that the IOC is a large, commercial licensing organisation, but I fail to see how spending tens of thousands of dollars on special interest pleading by the ICRC for demonstrably unnecessary ‘protections’ is a good way to spend donor money.

  4. Sorry but I don’t understand what is so special about RC/IOC that the PDP has to make special arrangements for their protection. There have been many gTLD Sunrises.

    I also don’t understand what a temporary banning would do since the gTLDs are not live yet. Wouldn’t the PDP have made a decision by then? Why would the domains not be able to be assigned at Sunrise?

    And what would the PDP decipe upon? Weather to assign the domains to RC/IOC directly without the Sunrise process or block the domains entirely?

    This all seems very strange to me.

  5. Sedari says:

    What a debacle! The GNSO has done, accidentally, what should have been done right at the very beginning of the special lobbying and petitioning that should never have been allowed through the system.

    Of course, this now begs the question about what happens to a PDP that is ongoing. How does one stop that train from leaving the station?

  6. Roberto Gaetano says:

    While I am personally against the concesion of special conditions to IOC/RC (I posted comments during the process to explain why) we are now in a critical situation, where credibility of ICANN is at stake.
    I like Volker’s solution as it can save the principle that unless a PDP concludes otherwise, no exceptions to the general rule are allowed by “fiat” of the Board. This is not only an “elegant” solution, as Volker himself quotes in the Council meeting, but the only one that can reduce the damage.

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