[bc-gnso] Cross-dot Cybersquatting Cases

[Andy Abrams <abrams@xxxxxxxxxx>]

Resurrecting this earlier thread with an update:

http://www.thedomains.com/2013/10/09/in-a-udrp-with-wide-implications-in-new-gtlds-program-panel-awards-tes-co-to-tesco/

The decision is here:
http://www.wipo.int/amc/en/domains/search/text.jsp?case=DCO2013-0017

While UDRP decisions don't have direct precedential effect, I suspect that
this is the start of a trend to consider TLDs when determining
cybersquatting cases.  As stated by the panel:

Indeed, the WIPO Overview
2.0<http://www.wipo.int/amc/en/domains/search/overview2.0/index.html#20>
clearly
contemplates the TLD being taken into account. There is nothing novel or
improper in doing so. ... At paragraph
1.2<http://www.wipo.int/amc/en/domains/search/overview2.0/index.html#12>,
which deals with the test for identity or confusing similarity, it is said
“[…] *The applicable top-level suffix in the domain name (e.g., “.com”)
would usually be disregarded under the confusing similarity test (as it is
a technical requirement of registration), except in certain cases where the
applicable top-level suffix may itself form part of the relevant trademark*.”
[emphasis added].



On Tue, Aug 6, 2013 at 11:11 AM, Phil Corwin <psc@xxxxxxxxxxx> wrote:

>  Thanks for the input, Mary Jo; I’m gaining new knowledge and insight as
> this dialogue continues.****
>
> ** **
>
> Interesting that in the two non-.com cases that you cite six.net and
> channel.tv, the visual appearance was sufficient to clear the first UDRP
> hurdle but ultimately the respondent prevailed.  That was the point of my
> hypothetical federal.express example of a domain used to promote skateboard
> clothing, that visual similarity (in fact identical visual match but for
> the dot) is not sufficient to decide the elements of bad faith registration
> and use.****
>
> ** **
>
> With all the new genetic terms coming along as TLDs this will certainly be
> a most interesting area to watch and discuss – with preventing consumer
> confusion, much less exploitation, as the main goal.****
>
> ** **
>
> Best, Philip****
>
> ** **
>
> *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:* Mari Jo Keukelaar [mailto:mj@xxxxxxxxxxxxxxxxx]
> *Sent:* Tuesday, August 06, 2013 1:14 PM
> *To:* Phil Corwin; 'Andy Abrams'; jscottevans@xxxxxxxxx; 'bc - GNSO list'
>
> *Subject:* RE: [bc-gnso] FW: New ICA Post on the LRO****
>
>  ** **
>
> Phil, where you state that****
>
> ** **
>
> these “side issues” are complex and would represent a fundamental change
> in UDRP and subsidiary URS policy, which today only contemplates the name
> to the left or the dot with no consideration of the top level domain on the
> right side.****
>
> ** **
>
> The facts do not support your broad assertion to the effect that the UDRP
> "only contemplates the name to the left of the dot". There have been many
> cases in which that is just not an accurate assertion.****
>
> ** **
>
> In UDRP proceedings where a trademark ends in "NET", domain name
> registrations in the .net TLD have been determined "identical or
> confusingly similar" under the UDRP rules. For example, in WIPO Case No.
> D2000-0008, the domain name "SIX.NET" was found to be identical or
> confusingly similar to the registered trademark "SIXNET". That was in the
> first year of operation of the UDRP. While the case was decided on other
> grounds, it cleared the first element of the UDRP.****
>
> ** **
>
> In disputes under ".tv", which is one of the existing TLDs you mention,
> the fact that the TLD is perceived to communicate "television" has indeed
> been a factor in UDRP disputes involving .tv names. For example WIPO
> DTV2011-0008 involved a dispute over "channel.tv" -****
>
> http://www.wipo.int/amc/en/domains/search/text.jsp?case=DTV2011-0008 .
> While the domain registrant had excellent legal representation and
> prevailed on other grounds, under the first element of the Policy, the
> domain name "channel.tv" was indeed found to be "identical" to the
> alleged mark "Channel TV".****
>
> ** **
>
> What is generally true is that where the second-level domain name matches
> the alleged trademark, the TLD is typically ignored. That has been
> appropriate, since the bulk of disputes have involved .com names, and
> ".com" has no particular meaning. For example in Cello Holdings v.
> Lawrence-Dahl Cos., 89 F.Supp.2d 464, 472-75 (S.D.N.Y. 2000), the court
> discussed a hypothetical situation in which "apple.com" were used to sell
> apples, which would not violate the mark of the computer company. However,
> it should be apparent that in a circumstance where .computers was a TLD,
> and one was looking at the domain name apple.computers, then the TLD
> signifies a class of goods such that the entire domain name
> "apple.computers" unambiguously identifies a trademark owner. In other
> words, where TLD's have had little or no meaning apart from signifying an
> address of "something on the internet", they were not important. Likewise,
> in forward comparisons of a domain name to a mark, the TLD itself was
> generally not signaling anything of consequence. However, in "reverse"
> comparisons of a mark to a domain name, in an environment where TLD's do
> carry meaning, then it does not make sense to mechanically apply a rule
> that was developed under a different set of assumptions about TLD's
> themselves.****
>
> ** **
>
> There can be no question that domain names such as wal.mart or walm.art
> both "look like Wal-Mart". Outcomes under trademark law have always been
> based on consumer perception, not mechanical rules for parsing strings, and
> it is not reasonable to expect mechanical application of a perceived rule,
> when the rationale for the "general rule" is no longer valid.  I am certain
> that UDRP providers, and at least some panelists, have given this the
> consideration it deserves. ****
>
> ** **
>
> Just some thoughts, Mari Jo****
>
> ** **
>
> ** **
>
> *From:* owner-bc-gnso@xxxxxxxxx 
> [mailto:owner-bc-gnso@xxxxxxxxx<owner-bc-gnso@xxxxxxxxx>]
> *On Behalf Of *Phil Corwin
> *Sent:* Tuesday, August 06, 2013 6:25 AM
> *To:* Andy Abrams; jscottevans@xxxxxxxxx; bc - GNSO list
> *Subject:* RE: [bc-gnso] FW: New ICA Post on the LRO****
>
> ** **
>
> You are most welcome, Andy. I’m glad that you thought my post captured the
> LRO process well. ****
>
> ** **
>
> In regard to your comment – “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?’ – these “side issues” are
> complex and would represent a fundamental change in UDRP and subsidiary URS
> policy, which today only contemplates the name to the left or the dot with
> no consideration of the top level domain on the right side. Consideration
> of the right side in either UDRP or URS proceedings or as a matter of
> sunrise protection would be, I believe, a significant change in policy that
> requires extensive consideration, perhaps even a PDP, prior to any
> contemplated change in the scope of these protections. This isn’t just a
> new gTLD issue – there are existing TLDs, especially ccTLDs like .me and
> .tv, that can raise similar questions. So far as I know there was
> absolutely no consideration or discussion of inclusion of right of the dot
> considerations in the development of the URS or TMC. Changes of this
> consequence should not be considered, much less implemented, on the fly
> absent adequate consideration.****
>
> ** **
>
> The GNSO decided in December 2011 that any PDP related to alteration of
> the UDRP should not be initiated until eighteen months after the
> introduction of new gTLDs.  That may forestall any consideration of your
> suggestion unless there is a broad community desire to accelerate the
> timetable.****
>
> ** **
>
> Best regards,****
>
> Philip****
>
> ** **
>
> ** **
>
> *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:* Andy Abrams [mailto:abrams@xxxxxxxxxx <abrams@xxxxxxxxxx>]
> *Sent:* Monday, August 05, 2013 8:22 PM
> *To:* Phil Corwin; jscottevans@xxxxxxxxx; bc - GNSO list
> *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] <https://us-mg6.mail.yahoo.com/neo/#_ftn1>).
> 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] <https://us-mg6.mail.yahoo.com/neo/#_ftn2>.
> ****
>
> 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]<https://us-mg6.mail.yahoo.com/neo/#_ftn3>
> :****
>
> *[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 <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…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]<https://us-mg6.mail.yahoo.com/neo/#_ftn4>,
> 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] <https://us-mg6.mail.yahoo.com/neo/#_ftn5>:****
>
> *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<http://www.wipo.int/export/sites/www/amc/en/domains/lro/docs/lro2013-0068.pdf>)
> and Merck v Merck 
> (pdf<http://www.wipo.int/export/sites/www/amc/en/domains/lro/docs/lro2013-0069.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<http://domainincite.com/13691-donuts-beats-dot-brand-in-fight-over-express-gtld>,
> 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] <https://us-mg6.mail.yahoo.com/neo/#_ftn6>*****
>
> 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] <https://us-mg6.mail.yahoo.com/neo/#_ftn7>. 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] <https://us-mg6.mail.yahoo.com/neo/#_ftn8>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]<https://us-mg6.mail.yahoo.com/neo/#_ftn9>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]<https://us-mg6.mail.yahoo.com/neo/#_ftn10>, 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*
> ***
>
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>  ****
>
>
> ****
>    ------------------------------
>
> [1] <https://us-mg6.mail.yahoo.com/neo/#_ftnref1>
> http://en.wikipedia.org/wiki/FISA_Court ****
>
> [2] <https://us-mg6.mail.yahoo.com/neo/#_ftnref2>
> http://www.wipo.int/amc/en/domains/lro/cases/ ****
>
> [3] <https://us-mg6.mail.yahoo.com/neo/#_ftnref3>
> http://www.bna.com/icann-legal-rights-b17179875369/ ****
>
> [4] <https://us-mg6.mail.yahoo.com/neo/#_ftnref4>
> http://domainnamewire.com/2013/08/01/the-lro-is-working-just-fine-thank-you/
> ** **
>
> [5] <https://us-mg6.mail.yahoo.com/neo/#_ftnref5>
> http://domainincite.com/13949-thats-all-folks-no-more-lro-news ****
>
> [6] <https://us-mg6.mail.yahoo.com/neo/#_ftnref6>
> 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] <https://us-mg6.mail.yahoo.com/neo/#_ftnref7>
> http://www.wipo.int/amc/en/domains/lro/fees/ ****
>
> [8] <https://us-mg6.mail.yahoo.com/neo/#_ftnref8>
> http://www.iccwbo.org/products-and-services/arbitration-and-adr/expertise/introduction-to-icann-new-gtld-dispute-resolution/
> ****
>
> [9] <https://us-mg6.mail.yahoo.com/neo/#_ftnref9>
> http://www.iccwbo.org/WorkArea/DownloadAsset.aspx?id=19327354883 ****
>
> [10] <https://us-mg6.mail.yahoo.com/neo/#_ftnref10>
> 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
> *G**o**o**g**l**e* | 1600 Amphitheatre Parkway, Mountain View, CA 94043***
> *
>
> (650) 669-8752 <https://www.google.com/voice#phones>****
>   ------------------------------
>
> 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*
> ***
>



-- 
Andy Abrams | Trademark Counsel
*Google* | 1600 Amphitheatre Parkway, Mountain View, CA 94043
(650) 669-8752 <https://www.google.com/voice#phones>