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

["Mari Jo Keukelaar" <mj@xxxxxxxxxxxxxxxxx>]

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; 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; 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
<http://www.wipo.int/amc/en/domains/search/overview2.0/index.html#20> WIPO
Overview 2.0 clearly contemplates the TLD being taken into account. There is
nothing novel or improper in doing so. ... At
<http://www.wipo.int/amc/en/domains/search/overview2.0/index.html#12>
paragraph 1.2, 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] 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] 
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 <https://us-mg6.mail.yahoo.com/neo/#_ftn1> [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 <https://us-mg6.mail.yahoo.com/neo/#_ftn2> [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
<https://us-mg6.mail.yahoo.com/neo/#_ftn3> [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 <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" <https://us-mg6.mail.yahoo.com/neo/#_ftn4>
[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 <https://us-mg6.mail.yahoo.com/neo/#_ftn5> [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
<http://www.wipo.int/export/sites/www/amc/en/domains/lro/docs/lro2013-0068.p
df> ) and Merck v Merck (pdf
<http://www.wipo.int/export/sites/www/amc/en/domains/lro/docs/lro2013-0069.p
df> ), 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." <https://us-mg6.mail.yahoo.com/neo/#_ftn6> [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 <https://us-mg6.mail.yahoo.com/neo/#_ftn7> [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 <https://us-mg6.mail.yahoo.com/neo/#_ftn8> [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 <https://us-mg6.mail.yahoo.com/neo/#_ftn9> [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 <https://us-mg6.mail.yahoo.com/neo/#_ftn10> [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>
http://en.wikipedia.org/wiki/FISA_Court

[2] <http://www.wipo.int/amc/en/domains/lro/cases/>
http://www.wipo.int/amc/en/domains/lro/cases/

[3] <http://www.bna.com/icann-legal-rights-b17179875369/>
http://www.bna.com/icann-legal-rights-b17179875369/

[4]
<http://domainnamewire.com/2013/08/01/the-lro-is-working-just-fine-thank-you
/>
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>
http://domainincite.com/13949-thats-all-folks-no-more-lro-news

[6]
<http://www.thedomains.com/2013/07/31/constantinos-roussos-of-dotmusic-limit
ed-the-entire-wipo-lro-process-was-set-up-to-fail-by-icann/>
http://www.thedomains.com/2013/07/31/constantinos-roussos-of-dotmusic-limite
d-the-entire-wipo-lro-process-was-set-up-to-fail-by-icann/

[7] <http://www.wipo.int/amc/en/domains/lro/fees/>
http://www.wipo.int/amc/en/domains/lro/fees/

[8]
<http://www.iccwbo.org/products-and-services/arbitration-and-adr/expertise/i
ntroduction-to-icann-new-gtld-dispute-resolution/>
http://www.iccwbo.org/products-and-services/arbitration-and-adr/expertise/in
troduction-to-icann-new-gtld-dispute-resolution/

[9] <http://www.iccwbo.org/WorkArea/DownloadAsset.aspx?id=19327354883>
http://www.iccwbo.org/WorkArea/DownloadAsset.aspx?id=19327354883

[10]
<http://www.iccwbo.org/products-and-services/arbitration-and-adr/expertise/i
cann-new-gtld-dispute-resolution/costs-and-payments/>
http://www.iccwbo.org/products-and-services/arbitration-and-adr/expertise/ic
ann-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

-- 
You received this message because you are subscribed to the Google Groups
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For more options, visit https://groups.google.com/groups/opt_out.
 
 




  _____  

[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-limite
d-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/in
troduction-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/ic
ann-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

 <https://www.google.com/voice#phones> (650) 669-8752

  _____  

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

 <https://www.google.com/voice#phones> (650) 669-8752

  _____  

No virus found in this message.
Checked by AVG - www.avg.com
Version: 2013.0.3392 / Virus Database: 3222/6638 - Release Date: 09/04/13
Internal Virus Database is out of date.