[bc-gnso] Suggested Reading for all BC Members

[Phil Corwin <psc@xxxxxxxxxxx>]

http://www.bna.com/icann-legal-rights-b17179875369/?utm_content=bufferd19c5&utm_source=buffer&utm_medium=twitter&utm_campaign=Buffer

[Fair Use excerpt to facilitate discussion of the LRO process as it is now 
playing out...]

The biggest lesson so far has been that the Legal Rights Objection process is 
wholly ineffective for trademark owners seeking to knock down proposed domains 
containing generic strings. In many cases, companies owning marks for terms 
such as EXPRESS, HOME, VIP, LIMITED, MAIL, TUNES have lost LROs to domain 
applicants with no intellectual property rights in those terms whatsoever. 
Pinterest's failed challenge to Amazon's proposed .pin domain was particularly 
ominous for mark owners, because Amazon seems pretty clearly to be moving in on 
Pinterest's business. Proposed domains for dozens of generic terms (e.g., 
.academy, .blue, .cam, .coach, .direct, .food, .music, .now, .song) and many 
others all appear highly likely to emerge unscathed from the legal rights 
objections process. Law is a "never say never" profession but, seriously, the 
adverse results in the .express and .mail proceedings ought be be writing on 
the wall for the remaining trademark-based challengers to generic string 
domains...

The reason for this dour outlook can be found in passages from two early LRO 
rulings: the first one, Right at Home v. Johnson Shareholdings Inc., No. 
LRO2013-0300 (WIPO, July 3, 2013); and the second, my favorite, Express LLC v. 
Sea Sunset LLC, No. LRO2013-0022 (WIPO, July 9, 2013).

In Right at Home, panelist Robert A. Badgley offered the first interpretation 
of key terms in Section 3.5 of ICANN's New gTLD Applicant 
Guidebook<http://newgtlds.icann.org/en/applicants/agb>. The guidebook uses 
highly qualified language, directing LRO panelists to decide whether the 
proposed new domain "takes unfair advantage" of the trademark owner's rights, 
or "unjustifiably impairs" the value of the mark, or creates an "impermissible 
likelihood of confusion" between the mark and the proposed domain.
In Badgley's view, this language creates a very high burden for trademark-based 
objections...


The second opinion, Express LLC v. Sea Sunset LLC, was one of the better 
opinions (and I am including the federal court stuff that we wade through every 
day) I have read in a while. Panelist Frederick M. Abbott carefully summarized 
the arguments on each side (there are good lessons here for attorneys working 
on the next round of legal rights objections), and the law that he was required 
to apply to the dispute. When Abbott turned to the reasoning behind his 
decision to reject Express LCC's objection to the proposed .express top-level 
domain, I got that sense that this panelist was a teeny bit irked that ICANN 
itself had not made the hard policy choices that the LRO had just dropped in 
his lap. It's one thing to ask a panelist to transfer a domain name that might 
have cost the registrant $10 or so; and it's quite another to ask a panelist to 
upset an investment of at least a half-million dollars in a new top-level 
domain. All based on a trademark registration for a generic term, in a single 
market, issued by a single government entity. Abbott declined to do it.


Philip S. Corwin, Founding Principal
Virtualaw LLC
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Suite 1050
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Twitter: @VlawDC

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