[bc-gnso] Codes and Communications -- question about ensuring communication

[Marilyn Cade <marilynscade@xxxxxxxxxxx>]

I am finding this a fascinating discussion, but take note that many are perhaps 
not familiar with some of the  'acronyms'. [they are defined in original 
article].  
The BC in fact has a leading role [thanks to Chris Chaplow, V.Chair, Operations 
and Finance and a few members] in creating the acronym 'buster'.
Do J.Scott and Phil think that LRO rises to the level of needing to be added to 
th acronym Buster? I wasn't sure, but 
Chris,  if one wanted  to add a term to the Acronym Buster, is there a process? 
The Acronym buster is used by the CSG and by many in the ICANN community, so I 
am not asking just because of 'us' but also about the larger community's 
'understanding'.
I was recently with AfiCTA in Nigeria, speaking to ten associations from across 
Africa, and earlier in Jordan, speaking to 22 countries at MENA ICT week -- in 
both cases -- to businesses.  The Acronym Buster was a real 'hit' to decoding 
ICANN. 
Just a question about adding in some of the complex terms that help to decode 
ICANN to business users. 
Marilyn Cade
Date: Sun, 4 Aug 2013 20:40:38 -0700
From: jscottevans@xxxxxxxxx
Subject: Re: [bc-gnso] FW: New ICA Post on the LRO
To: psc@xxxxxxxxxxx
CC: bc-gnso@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/