1. The use of Trademarks on the Internet: Problems and solutions Trademark owners perspective Marques cyberspace team September 2012

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 September 2012

3. Role and responsibility of Internet intermediaries o Internet landscape has changed dramatically o New intermediaries have emerged o Current situation / Liability of intermediaries o - Primary liability quite harmonised within the EU o - Legal uncertainty/fragmentation on secondory liability: questions of national law o Clear and detailed guidance needed September 2012

4. Role and responsibility of Internet intermediaries E-commerce Directive 2000/31/EC Need for clear definitions of hosting, actual knowledge, awareness, expeditiously etc September 2012

5. Notice and action procedures in Europe o Self regulation to be encouraged and developed Current situation: o - Actions against illegal content deemed to be ineffective and too slow o - Too much legal fragmentation and uncertainty for hosting service providers and notice providers o - Notion of hosting, actual knowledge, awareness, expeditiously not clear o Neither easy to find nor to use pages or tools to notify illegal content September 2012

6. Approach recommended o All hosting service providers should have a notification illegal content procedure in place o Harmonisation of N&A procedures o Complainants should: - provide sufficient details - clearly identify the alleged illegal content o 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? September 2012

7. Approach recommended o Abusive/unjustified notifications should be prevented and sanctioned - Clear definition of abusive/unjustified notifications needed - Detailed notices to be required - Easy and accessible appeal procedures to be provided o Hosting service provider should consult the providers of alleged illegal content but the content should be removed before informing said providers to avoid delay o Hosting service provider should provide feedback to notice providers about the status of their notice September 2012

8. Approach recommended o Content to be removed or disabled depending on circumstances - complainant should be able to select option o Content to be removed or disabled as fast as possible depending on circumstances o Exclusion of online intermediaries liability in case of removal of content which was notified and later found to be legal September 2012

9. Focus - New gTLDs and challenges for brand owners o New shape of the Internet with unlimited number of new generic Top-Level Domains (gTLD) now allowed o Around 1200 gTLD registries expected to open in 2013 vs about 275 ccTLD domain registries and 21 gTLD registries : increase of at least 300% September 2012

10. Focus - New gTLDs and challenges for brand owners o Main issue: protection at the second level / cybersquatting o Defensive registrations not affordable o Trademark Clearinghouse and RPMs (URS, PDDRP and UDRP) not sufficient o Liability of registrars and registries with regard to the new gTLDs September 2012

11. Focus - New gTLDs and Marques recommendation o Disclosure by the registrars of the registrants details using whois privacy services o All registries, gTLDs and ccTLDs, should adopt a version of the URS o Loser Pays o 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. September 2012

12. Focus - New gTLDs and Marques recommendation o 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 o 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 September 2012

13. Thank you!! abis.s@pg.com info@marques.org September 2012