[bc-gnso] RE: Cross-dot Cybersquatting Cases

[Phil Corwin <psc@xxxxxxxxxxx>]

Thanks for your insights, Mary Jo.  I agree with your observations.

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, October 15, 2013 1:07 PM
To: Phil Corwin; 'Andy Abrams'
Cc: 'bc - GNSO list'
Subject: RE: Cross-dot Cybersquatting Cases

Phil:

As of last year I can assure you that WIPO was definitely giving this issue 
consideration.  I think it is safe to say that, yes, a typo of or common word 
Trademark registered at the corresponding gTLD will definitely be presumed to 
be evidence of bad faith, heightening the burden on the registrant.  
Registration at a gTLD not fully corresponding to the TM will more likely fall 
within the more normal question of "how is the domain being used" in order to 
help determine the underlying intent at registration.  Wal.mart is still 
walmart no matter how you look at it; infinity.cars is very different from 
infinity.restaurant and .restaurant may be legitimately used. (So might .cars, 
but Nissan definitely has the stronger argument on that one.)

mj

From: Phil Corwin [mailto:psc@xxxxxxxxxxx]
Sent: Tuesday, October 15, 2013 12:00 PM
To: Andy Abrams
Cc: Mari Jo Keukelaar; jscottevans@xxxxxxxxx<mailto:jscottevans@xxxxxxxxx>; bc 
- GNSO list
Subject: RE: Cross-dot Cybersquatting Cases

Andy:

I had noticed the same post at The Domains and appreciate you bringing it to 
the BC's attention.

As post-new gTLD UDRP and URS practice develops I will be matching to see 
whether , in addition to cases where the top-level suffix forms part of the 
relevant trademark, examiners also consider whether the gTLD label is congruent 
with or distinct from the goods and services for the trademark is registered. 
That is, if one registers a generic word domain, or even a possible 
typo-variation of a distinct trademark, will registration at a gTLD string that 
encompasses any of the relevant products and services be considered as evidence 
of bad faith - and, similarly, will registration at a gTLD that bears no 
relation to the covered product and service lines mitigate against such a 
finding? As you noted, where there is no doctrine of strict precedential effect 
in UDRP practice, there are distinct trends.

Time will tell.

Very 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: Andy Abrams [mailto:abrams@xxxxxxxxxx]
Sent: Monday, October 14, 2013 5:27 PM
To: Phil Corwin
Cc: Mari Jo Keukelaar; jscottevans@xxxxxxxxx<mailto:jscottevans@xxxxxxxxx>; bc 
- GNSO list
Subject: Cross-dot Cybersquatting Cases

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<mailto: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<http://six.net> and channel.tv<http://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<tel:202-559-8597>/Direct
202-559-8750<tel:202-559-8750>/Fax
202-255-6172<tel:202-255-6172>/cell

Twitter: @VlawDC

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

From: Mari Jo Keukelaar 
[mailto:mj@xxxxxxxxxxxxxxxxx<mailto:mj@xxxxxxxxxxxxxxxxx>]
Sent: Tuesday, August 06, 2013 1:14 PM
To: Phil Corwin; 'Andy Abrams'; 
jscottevans@xxxxxxxxx<mailto: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<http://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://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<http://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<http://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> 
[mailto:owner-bc-gnso@xxxxxxxxx] On Behalf Of Phil Corwin
Sent: Tuesday, August 06, 2013 6:25 AM
To: Andy Abrams; jscottevans@xxxxxxxxx<mailto: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<tel:202-559-8597>/Direct
202-559-8750<tel:202-559-8750>/Fax
202-255-6172<tel:202-255-6172>/cell

Twitter: @VlawDC

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

From: Andy Abrams [mailto:abrams@xxxxxxxxxx]
Sent: Monday, August 05, 2013 8:22 PM
To: Phil Corwin; jscottevans@xxxxxxxxx<mailto: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<mailto: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<tel:408.349.1385> - 
jscottevans@xxxxxxxxx<mailto:jscottevans@xxxxxxxxx>

________________________________
From: Phil Corwin <psc@xxxxxxxxxxx<mailto:psc@xxxxxxxxxxx>>
To: J. Scott Evans <jscottevans@xxxxxxxxx<mailto:jscottevans@xxxxxxxxx>>
Cc: "bc-gnso@xxxxxxxxx<mailto:bc-gnso@xxxxxxxxx>" 
<bc-gnso@xxxxxxxxx<mailto: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<tel:202-559-8597>/Direct
202-559-8750<tel:202-559-8750>/Fax
202-255-6172<tel:202-255-6172>/cell

Twitter: @VlawDC

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

From: J. Scott Evans 
[mailto:jscottevans@xxxxxxxxx<mailto:jscottevans@xxxxxxxxx>]
Sent: Sunday, August 04, 2013 11:41 PM
To: Phil Corwin
Cc: bc-gnso@xxxxxxxxx<mailto: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<tel:408.349.1385> - 
jscottevans@xxxxxxxxx<mailto:jscottevans@xxxxxxxxx>

________________________________
From: Phil Corwin <psc@xxxxxxxxxxx<mailto:psc@xxxxxxxxxxx>>
To: J. Scott Evans <jscottevans@xxxxxxxxx<mailto:jscottevans@xxxxxxxxx>>
Cc: "bc-gnso@xxxxxxxxx<mailto:bc-gnso@xxxxxxxxx>" 
<bc-gnso@xxxxxxxxx<mailto: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<tel: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<mailto: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<mailto:psc@xxxxxxxxxxx>>;
To: bc-gnso@xxxxxxxxx<mailto:bc-gnso@xxxxxxxxx> 
<bc-gnso@xxxxxxxxx<mailto: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<http://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<http://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<http://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>
________________________________
No virus found in this message.
Checked by AVG - www.avg.com<http://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<http://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>
________________________________
No virus found in this message.
Checked by AVG - www.avg.com<http://www.avg.com>
Version: 2013.0.3392 / Virus Database: 3222/6638 - Release Date: 09/04/13
Internal Virus Database is out of date.
________________________________
No virus found in this message.
Checked by AVG - www.avg.com<http://www.avg.com>
Version: 2013.0.3392 / Virus Database: 3222/6638 - Release Date: 09/04/13
Internal Virus Database is out of date.