The use of Trademarks on the Internet: Problems and solutions

1. The use of Trademarks on the Internet: Problems and solutions Trademark owners’ perspective Marques cyberspace team

2. Agenda - Marques view on the role and responsibility of Internet intermediaries in the field of trademarks- Focus on N&A procedures in Europe - Focus on challenges raised by the new gTLDs

3. Role and responsibility of Internet intermediaries • Internet landscape has changed dramatically • New intermediaries have emerged • Current situation / Liability of intermediaries • - Primary liability quite harmonised within the EU • - Legal uncertainty/fragmentation on secondory liability: questions of national law • Clear and detailed guidance needed

4. Role and responsibility of Internet intermediaries E-commerce Directive 2000/31/EC Need for clear definitions of hosting, actual knowledge, awareness, expeditiously etc

5. Notice and action procedures in Europe • Self regulation to be encouraged and developed Current situation: • - Actions against illegal content deemed to be ineffective and too slow • - Too much legal fragmentation and uncertainty for hosting service providers and notice providers • - Notion of hosting, actual knowledge, awareness, expeditiously not clear • Neither easy to find nor to use pages or tools to notify illegal content

6. Approach recommended • All hosting service providers should have a notification illegal content procedure in place • Harmonisation of N&A procedures • Complainants should: - provide sufficient details - clearly identify the alleged illegal content • Evidence that the content provider could not be contacted before contacting the hosting provider or that the content provider was contacted first but did not act?

7. Approach recommended • Abusive/unjustified notifications shouldbeprevented and sanctioned - Cleardefinition of abusive/unjustified notifications needed • Detailed notices to berequired • Easy and accessible appealprocedures to beprovided • Hosting service provider shouldconsult the providers of allegedillegal content but the content shouldberemovedbeforeinformingsaid providers to avoiddelay • Hosting service provider shouldprovide feedback to notice providers about the status of their notice

8. Approach recommended • Content to beremoved or disableddepending on circumstances - complainantshouldbe able to select option • Content to beremoved or disabled as fast as possible depending on circumstances • Exclusion of online intermediariesliability in case of removal of content whichwasnotified and laterfound to belegal

9. Focus - New gTLDs and challenges for brand owners • New shape of the Internet with unlimited number of new generic Top-Level Domains (gTLD) now allowed • Around 1200 gTLD registries expected to open in 2013 vs about 275 ccTLD domain registries and 21 gTLD registries : increase of at least 300%

10. Focus - New gTLDs and challenges for brand owners • Main issue: protection at the second level / cybersquatting • Defensive registrations not affordable • TrademarkClearinghouse and RPMs (URS, PDDRP and UDRP) not sufficient • Liability of registrars and registries with regard to the new gTLDs

11. Focus - New gTLDs and Marques recommendation • Disclosure by the registrars of the registrants’ details using whois privacy services • All registries, gTLDs and ccTLDs, should adopt a version of the URS • Loser Pays • Allow the transfer of a domain to a winning complainant following a URS complaint and speed up the URS to a maximum of 10 working days.

12. Focus - New gTLDs and Marques recommendation • Block on the string corresponding to a mark at the second level in all registries for trademark owner which has filed 10 or more successful procedures to reclaim said mark • Registries which support domain names at the second level which feature in more than 120 URS or UDRP cases in a year should be required to develop and implement stronger rights protection measures or face suspension of their registries or financial penalties

13. Thank you!! abis.s@pg.com info@marques.org