Re: [bc-gnso] FW: New ICA Post on the LRO

["J. Scott Evans" <jscottevans@xxxxxxxxx>]

That's correct you don't, but the article seems to imply that the LRO sets too 
high a burden or is somehow flawed and, for this reason, trademark owners are 
getting the proverbial "shaft."  I think a LRO would work if a trademark owner 
could prove a likelihood of confusion or some actual harm.  I don't think you 
are sufficiently harmed just because someone plans to use the a generic term 
(that may also serve as someone's trademark) for non-infringing purposes.  I 
would argue to you the the LRO is working perfectly, much like the UDRP works 
perfectly when trademark owners that can meet the high burden win.

In sum, I think the system is working as it was intended.  I know these results 
are making some trademark owners unhappy, but trademark law is basically a 
consumer protection statute, so a complainant should have to show some consumer 
harm or confusion, not the angst of a marketing department that was asleep at 
the wheel since June 2008.

J. Scott
 
j. scott evans -  head of global brand, domains & copyright - Yahoo! Inc. - 
408.349.1385 - jscottevans@xxxxxxxxx




________________________________
 From: Phil Corwin <psc@xxxxxxxxxxx>
To: J. Scott Evans <jscottevans@xxxxxxxxx> 
Cc: "bc-gnso@xxxxxxxxx" <bc-gnso@xxxxxxxxx> 
Sent: Sunday, August 4, 2013 8:14 PM
Subject: Re: [bc-gnso] FW: New ICA Post on the LRO
 


I don't disagree, and never said they were. 

Philip S. Corwin, Founding Principal 
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell

Twitter: @VLawDC

"Luck is the residue of design" -- Branch Rickey

Sent from my iPad

On Aug 4, 2013, at 10:51 PM, "J. Scott Evans" <jscottevans@xxxxxxxxx> wrote:


I am not so sure any of these cases were wrongly decided. 
>
>Sent from Yahoo! Mail for iPhone 
>
>
>
>________________________________
> From: Phil Corwin <psc@xxxxxxxxxxx>; 
>To: bc-gnso@xxxxxxxxx <bc-gnso@xxxxxxxxx>; 
>Subject: [bc-gnso] FW: New ICA Post on the LRO 
>Sent: Sun, Aug 4, 2013 10:05:16 PM 
>
>
>FYI/BC members may find my latest opinion piece of some interest---
> 
>http://internetcommerce.org/LROlooksDOA
> 
>LRO Looks DOA
> 
>The Legal Rights Objection (LRO) mechanism administered by the World 
>Intellectual Property Organization (WIPO) on behalf of ICANN is starting to 
>look like the reverse FISA Court of domain name system (DNS) rights protection 
>mechanisms (RPMs) at the top level. In FISA Court, the government always wins 
>– at WIPO, the LRO complainant always loses.
>The FISA Court is of course the venue in which the U.S. government requests a 
>surveillance warrant against a suspected foreign intelligence agent and is 
>never denied (well, almost never – since the process started in 1979, 11 
>requests have been denied out of a total of 33,942  received through the end 
>of 2012[1]). FISA Court proceedings are secret and non-adversarial, with only 
>government lawyers presenting arguments. In contrast, the decisions resulting 
>from LRO proceedings are published, and both complainant and respondent have 
>equal ability to present their arguments. Yet, as of Friday, August 2nd all 28 
>of the decided LRO complaints, out of a total of 69 filed, resulted in losses 
>for the complainants[2]. 
>The lopsided results arouse suspicions that trademark interests may have been 
>fighting the last war and too intensely focused on potential cybersquatting at 
>the second level (a concern that we believe is overblown due to the low 
>traffic prospects for many new gTLDs). They consequently sought and obtained 
>the Trademark Clearinghouse (TMC), Uniform Rapid Suspension (URS) RPMs – and 
>also proposed other second level remedies such as a Global Protected Marks 
>List (GPML) that ICANN did not grant. Yet they may have failed to adequately 
>consider whether top level protections were sufficient, and in particular 
>whether the threshold standard for successfully prosecuting a LRO was 
>unattainably high. 
>As Thomas O’Toole observed in an excellent analysis recently posted on 
>Bloomberg BNA’s E-Commerce and Tech Law Blog[3]:
>[T]he only surprise the future might hold is the faint prospect that a WIPO 
>panelist might actually rule in favor of a trademark owner…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…
>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. 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…Obviously, it is going to be very difficult for any 
>trademark owner to demonstrate that a proposed domain is so fishy it satisfies 
>the "something untoward ... if not to the level of bad faith" standard…
>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…
>These two opinions, taken together, look like a terminal diagnosis for 
>trademark owners with rights in generic terms. Right at Home creates a very 
>permissive standard for what constitutes "unfair advantage" by a domain 
>applicant. Express LLC states, almost categorically, that it is "not 
>reasonable" to allow a trademark owner for a generic term to prevent that term 
>from being used as a top-level domain.
>O’Toole goes on to speculate that a trademark owner like Express LLC will have 
>equally poor chances of success if it attempts to block others’ use of such 
>hypothetical second level domains as clothing.express, fashion.express, or 
>shoes.express using the traditional UDRP or the new TMC and URS RPMs -- 
>because all of them focus on the domain name to the left of the dot and pay no 
>heed to the gTLD to the right – and because Express holds no trademark rights 
>in those hypothetical generic terms on the left side. We largely agree with 
>his analysis, and suspect that this could be the next big trademark protection 
>issue looming on ICANN’s horizon as brands complain about the necessity and 
>cost of registering relevant domains at a gTLD that matches one of its 
>trademarks but is operated by a third party (and, by the way, it’s not clear 
>that a brand like Express would have any special “sunrise” registration 
>priority for potential second level domains
 along the lines of O’Toole’s speculation). Other questions arise, such as 
whether Federal Express should have priority rights to, or a potential 
infringement claim against, federal.express.
>Of course, no one was reckless enough to pay a $185,000 gTLD application fee, 
>plus multiple related legal, consulting, and technical costs, to try to 
>“squat’ at the top level on a unique trademark like Google or Microsoft. But 
>when it comes to a dictionary word like Express, unless the applicant was so 
>clueless as to propose its use solely for fashionable clothing, the LRO is 
>essentially useless – and that may be the correct result. Indeed, short of 
>halting the program, it’s not really clear how one can have a generic word TLD 
>program without allowing the addition of top level domains that are identical 
>to someone’s trademark for something; and that alone is not sufficient to 
>prove trademark infringement.
>Domain industry observers such as Andrew Allemann have opined that “The LRO is 
>working just fine, thank you”[4], weighing in with this analysis:
>The LRO was created to assuage fears that someone would cybersquat on a top 
>level domain…Objections were filed against .VIP, .mail, and .home. Now, you 
>tell me: when you hear these terms, what brand do you think is being 
>cybersquatted?
>Many of the objections were filed by competing applicants that engaged in 
>trademark frontrunning by obtaining dubious trademarks for the string. Others, 
>such as the United States Postal Service’s objection to .mail, were based on 
>stretched interpretations of a trademark (and that’s being generous).
>Another industry analyst, Kevin Murphy, has just declared that he will no 
>longer report automatically on forthcoming WIPO decisions in LRO cases, 
>stating[5]:
>The Legal Rights Objection has, I think, said pretty much everything it’s 
>going to say in this new gTLD application round. I’m feeling pretty confident 
>we can predict that all outstanding LROs will fail.
>This prediction is based largely on the fact that the 69 LROs filed in this 
>round all pretty much fall into three categories.
>·         Front-running.These are the cases where the objector is an applicant 
>that secured a trademark on its chosen gTLD string, usually with the dot, just 
>in order to game the LRO process…
>·         Brand v Brand.The objector may or may not be an applicant too, but 
>both it and the respondent both own legit trademarks on the string in 
>question. WIPO’s LRO panelists have made it clear, most recently yesterday in 
>Merck v Merck (pdf) and Merck v Merck (pdf), that having a famous brand does 
>not give you the right to block somebody else from owning a matching famous 
>brand as a gTLD.
>·         Generic trademarks.Cases where an owner of a legit brand that 
>matches a dictionary word files an objection against an applicant for the same 
>string that proposes to use it in its generic sense. See Express v Donuts, for 
>example. Panelists have found that unless there’s some nefarious intent by the 
>applicant, the mandatory second-level rights protection mechanisms new gTLD 
>registries must abide by are sufficient to protect trademark rights.
>In short, the LRO may be one of many deterrents to top-level cybersquatting, 
>but has proven itself an essentially useless cash sink if you want to prevent 
>the use of a trademark at the top level.
>The impact of this, I believe, will be to give new gTLD consultants another 
>excellent reason to push defensive gTLD applications on big brands in future 
>new gTLD rounds.
> 
>We largely agree with Murphy’s analysis. There may well be a few cases in the 
>remaining objections to be adjudicated by WIPO in which the complainant 
>prevails. But we suspect that they will be such unique outliers that they will 
>actually reinforce what an exceedingly narrow remedy the LRO has turned out to 
>be. That limited utility has already led one disgruntled complainant/competing 
>applicant to declare, “Seems the entire WIPO LRO process was set-up to fail by 
>ICANN with the guidelines they gave the Panelists.”[6]
>And, as Murphy observes, filing a LRO with WIPO is not inexpensive. Total 
>filing fees for a single objection to a single new gTLD application can range 
>from $10,000 for a single-expert panel, and up to $23,000 for a 3-expert 
>panel[7]. On top of the fees there are of course legal costs for the attorney 
>preparing the complaint and related expenses for amassing documentation. If 
>the LRO continues to be a preordained shutout for complainants then it is 
>unlikely that it will be used very much at all in the second round of gTLD 
>applications unless significant – and undoubtedly controversial – changes are 
>made in the adjudication standard to give complainants a higher probability of 
>prevailing.
>As for the other objection procedure available to third parties, the Community 
>Objection[8] administered by the International Centre for Expertise of the ICC 
>(International Chamber of Commerce), no judgment can yet be rendered on its 
>efficacy because the Center has yet to issue a single decision on the dozens 
>of cases[9] filed with it. However, with standing limited to established 
>institutions associated within a clearly defined community objectors first 
>have to surmount that procedural hurdle, and then make the string substantive  
>case that there is substantial opposition to the gTLD application from a 
>significant portion of the community to which the gTLD string may be 
>explicitly or implicitly targeted. Additionally, complaints were voiced at the 
>recent Public Forum in Durban that ICC fees[10] , which begin at 17,000 Euro 
>but can quickly mount given the 450 Euro hourly rate for expert arbitrators, 
>are not affordable for many community organizations.
>Summing up, the LRO may well have been an effective deterrent against 
>applications for unique trademarked terms but has so far been useless in 
>regard to applications for generic word trademarks, regardless of the 
>trademark’s strength and legitimacy. Its lack of general applicability also 
>seems to be setting up a series of second level domain disputes that may well 
>be outside the existing scope of the UDRP, URS, TMC, or other available rights 
>protection and prioritization mechanisms. All of this may lead to further 
>debate within ICANN on the appropriate scope of trademark rights protections– 
>as well as litigation being filed by unsuccessful complainants who refuse to 
>take WIPO’s decision as the final judgment on their claims. 
>The clear lesson to brand owners of generic word trademarks is this: If and 
>when the second round of new gTLD applications commences, if you wish to own 
>your trademark at the top level of the DNS (or at least stop others from 
>owning it) you had better open your wallet and apply for it. That compulsion 
>toward unwanted defensive registrations is almost sure to generate further 
>controversy amid charges that ICANN has developed a Midas Touch-like mechanism 
>for generating perpetual revenues for application and use fees for the 
>protection of dictionary words. 
>Of course, the inflow of defensive applications for generic word trademarks 
>could be a mere trickle compared to the potential surge of defensive and 
>offensive applications for non-trademarked generic words if ICANN ultimately 
>spurs the Governmental Advisory Committee (GAC) advice to prohibit “closed 
>generic” gTLDs unless they satisfy a high public interest standard. In that 
>scenario, every company of any heft will have to seriously consider gTLD 
>applications for the major language words describing its key activities and 
>products, lest a competitor do so first and lock them away. But that’s an 
>issue falling outside any trademark protection debate and a discussion for 
>another day.
>[1]http://en.wikipedia.org/wiki/FISA_Court
>[2]http://www.wipo.int/amc/en/domains/lro/cases/
>[3]http://www.bna.com/icann-legal-rights-b17179875369/
>[4]http://domainnamewire.com/2013/08/01/the-lro-is-working-just-fine-thank-you/
>[5]http://domainincite.com/13949-thats-all-folks-no-more-lro-news
>[6]http://www.thedomains.com/2013/07/31/constantinos-roussos-of-dotmusic-limited-the-entire-wipo-lro-process-was-set-up-to-fail-by-icann/
>[7]http://www.wipo.int/amc/en/domains/lro/fees/
>[8]http://www.iccwbo.org/products-and-services/arbitration-and-adr/expertise/introduction-to-icann-new-gtld-dispute-resolution/
>[9]http://www.iccwbo.org/WorkArea/DownloadAsset.aspx?id=19327354883
>[10]http://www.iccwbo.org/products-and-services/arbitration-and-adr/expertise/icann-new-gtld-dispute-resolution/costs-and-payments/
> 
> 
>Philip S. Corwin, Founding Principal
>Virtualaw LLC
>1155 F Street, NW
>Suite 1050
>Washington, DC 20004
>202-559-8597/Direct
>202-559-8750/Fax
>202-255-6172/cell
> 
>Twitter: @VlawDC
> 
>"Luck is the residue of design" -- Branch Rickey
> 
>
>
>
>________________________________
> 
>
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>>________________________________
> 
>[1] http://en.wikipedia.org/wiki/FISA_Court 
>[2] http://www.wipo.int/amc/en/domains/lro/cases/ 
>[3] http://www.bna.com/icann-legal-rights-b17179875369/ 
>[4] 
>http://domainnamewire.com/2013/08/01/the-lro-is-working-just-fine-thank-you/ 
>[5] http://domainincite.com/13949-thats-all-folks-no-more-lro-news 
>[6] 
>http://www.thedomains.com/2013/07/31/constantinos-roussos-of-dotmusic-limited-the-entire-wipo-lro-process-was-set-up-to-fail-by-icann/
> 
>[7] http://www.wipo.int/amc/en/domains/lro/fees/ 
>[8] 
>http://www.iccwbo.org/products-and-services/arbitration-and-adr/expertise/introduction-to-icann-new-gtld-dispute-resolution/
> 
>[9] http://www.iccwbo.org/WorkArea/DownloadAsset.aspx?id=19327354883 
>[10] 
>http://www.iccwbo.org/products-and-services/arbitration-and-adr/expertise/icann-new-gtld-dispute-resolution/costs-and-payments/
>