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

[stephvg@xxxxxxxxx]

+1

Thanks for bringing this perspective to the discussion Andy. Very interesting.

Stéphane Van Gelder
Chairman and Managing Director/Fondateur
STEPHANE VAN GELDER CONSULTING

T (FR): +33 (0)6 20 40 55 89
T (UK): +44 (0)7583 457053
Skype: SVANGELDER
www.StephaneVanGelder.com
----------------
Follow us on Twitter: @stephvg and "like" us on Facebook: 
www.facebook.com/DomainConsultant
LinkedIn: fr.linkedin.com/in/domainconsultant/

Le 6 août 2013 à 02:25, J. Scott Evans <jscottevans@xxxxxxxxx> a écrit :

> Andy:
> 
> Interesting thoughts . . . .
>  
> j. scott evans -  head of global brand, domains & copyright - Yahoo! Inc. - 
> 408.349.1385 - jscottevans@xxxxxxxxx
> 
> 
> From: Andy Abrams <abrams@xxxxxxxxxx>
> To: Phil Corwin <psc@xxxxxxxxxxx>; "jscottevans@xxxxxxxxx" 
> <jscottevans@xxxxxxxxx>; bc - GNSO list <bc-gnso@xxxxxxxxx> 
> Sent: Monday, August 5, 2013 5:21 PM
> Subject: Re: [bc-gnso] FW: New ICA Post on the LRO
> 
> Thanks to Phil for forwarding us his article - it captures the LRO process 
> well.  For what it's worth, I'm another trademark attorney that agrees with 
> J. Scott that the system is actually working well, and brand owners shouldn't 
> expect to preemptively stop the use of a generic term for an open TLD prior 
> to any commercial activity.  However, an interesting side-issue is whether 
> the UDRP and URS panels will start to include TLDs as a factor in determining 
> cybersquatting at the second level (e.g., cross-dot trademarks such as 
> federal.express or you.tube).  And if so, perhaps cross-dot trademarks should 
> be included in Sunrise?
> 
> Andy
> 
> 
> On Mon, Aug 5, 2013 at 8:08 AM, J. Scott Evans <jscottevans@xxxxxxxxx> wrote:
> Phil:
> 
> The remedy provided is not more narrow than that provided under current 
> national and international laws.  If trademark owners want an absolute 
> monopoly on a term then, yes, they will have to file for a top level domain 
> in round two.  Paul McGrady has been saying that the first come, first served 
> method of distribution of top level domains by ICANN could lead to "permanent 
> string preclusion" for those brands who have a dictionary term as a 
> trademark.  He has been saying this since 2008.  Unfortunately, some brands 
> don't listen.  Go figure!
>  
> 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: Monday, August 5, 2013 7:58 AM
> Subject: RE: [bc-gnso] FW: New ICA Post on the LRO
> 
> Agree that it’s working as intended, but doubt that most perceived how narrow 
> a remedy it would be.
>  
> Main takeaway for TM owners is that if you want to control your generic brand 
> or product at top level of the DNS you need to submit a defensive application 
> in 2nd round.
>  
> As for adding LRO to acronym list – well of course!
>  
> 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
>  
> From: J. Scott Evans [mailto:jscottevans@xxxxxxxxx] 
> Sent: Sunday, August 04, 2013 11:41 PM
> To: Phil Corwin
> Cc: bc-gnso@xxxxxxxxx
> Subject: Re: [bc-gnso] FW: New ICA Post on the LRO
>  
> 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
>  
> 
> No virus found in this message.
> Checked by AVG - www.avg.com
> Version: 2013.0.3392 / Virus Database: 3209/6545 - Release Date: 08/02/13
> 
> No virus found in this message.
> Checked by AVG - www.avg.com
> Version: 2013.0.3392 / Virus Database: 3209/6545 - Release Date: 08/02/13
> -- 
> You received this message because you are subscribed to the Google Groups 
> "ICA Mail" group.
> To unsubscribe from this group and stop receiving emails from it, send an 
> email to ica-mail+unsubscribe@xxxxxxxxxxxxxxxx.
> To post to this group, send email to ica-mail@xxxxxxxxxxxxxxxx.
> Visit this group at http://groups.google.com/group/ica-mail.
> To view this discussion on the web visit 
> https://groups.google.com/d/msgid/ica-mail/8E84A14FB84B8141B0E4713BAFF5B84E0D79FDEB%40Exchange.sierracorporation.com.
> For more options, visit https://groups.google.com/groups/opt_out.
>  
>  
> 
> [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/
>  
> No virus found in this message.
> Checked by AVG - www.avg.com
> Version: 2013.0.3392 / Virus Database: 3209/6545 - Release Date: 08/02/13
> 
> 
> 
> 
> 
> -- 
> Andy Abrams | Trademark Counsel
> Google | 1600 Amphitheatre Parkway, Mountain View, CA 94043
> (650) 669-8752
> 
>