I'll try to answer your points, also with the disclaimer that
the following represents opinion, not legal fact.
As a business entity, Afilias
has the legal rights to make any contractual policy terms it wants with customers
(registrants), as long as these terms are not illegal and are uniformly enforced
(I won't go near that issue!). Of course, in this particular instance, as part of
.info's status as a TLD and Afilias' contract to provide it, ICANN must have sanctioned
everything first. As a policy decision therefore, Afilias (and in turn, ICANN) decided
to give trademark holders a first crack at domain names.
Now whether this was
a fair and equitable policy decision (and we all know the answer to this point!),
is strongly debatable. But the fact is, these contractual terms between parties are
not in themselves illegal. Afilias has decided to give first-come, first-served rights
to parties *as long as they have the trademark* (an important point) and one aspect
to this policy is that some companies simply had the trademark (or design mark) for
a generic word (extremely fortunate for them). Also one could argue that some trademarks
are easier to obtain in some countries, making it a very uneven playing field. However,
once again, this was Afilias' prerogative in establishing their policy rules.
that does not necessarily mean that Afilias can make whatever rules they wish, covering
any name they wish. A third party has rights, where the domain name in question violates
trademark law, especially 'passing off'. And of course, this is where the traditional
UDRP has come in, in the past.
Now the Sunrise challenge just makes its decisions
based on prima facie rights to a name, regardless of what it is and not on other
issues such its generic meaning, how famous it is, bad faith etc.; these issues have
been conventionally covered by the URDP.
Post-Sunrise-Challenge, as a third party
(with a trademark or not), I believe you simply would not win a challenge in any
court - WIPO or otherwise (an opinion based on my firm's experience) - where the
name itself was a widely-used generic name that did not have strong public recognition
with your company. This is because, inter alia, the onus would be on you (the challenger)
to prove that you had rights to that name above and beyond the respondent, that the
public would confuse the name with your mark, and that the respondent was using it
in bad faith. (An important point is that most courts do address these issues even
if there is no clear demarcation between them.)
I'd even go out on a limb to say
that even if a successful registrant on-sold a 'trademarked domain' to another party
with no trademark, as long as the original registrant abided by Afilias' rules and
policy, then a challenge would still not be successful due to the reasons above.
Remember, the policy rules only cover the original registrant, not successive registrants.
So unfortunately, challengers would be relatively unsuccessful in litigation against
other registrants, in these instances.
I could go on and on about the merits of
bringing action against ICANN or Afilias itself. If you could argue that the actual
policy was unlawful (such as Neulevel's alleged illegal lottery), then you may have
a case. However, I can't think of anything that Afilias has done that could be deemed
prima facie illegal. Even if you were to win, you'd receive neglible reward (no doubt
disproportionate to the cost of litigation) and you have no guarantee of winning
the name you want (the motives of Smiley were allegedly more to do with publicity
than winning the coveted 'radio.biz').
The long and the short of it is simply
this: The policy has been established and purported to be upheld. Therefore the simple
answer to your question is that trademark holders have been favored, even for generic
trademarked words. Extremely lucky companies have benefitted, and there's not much
that other hopeful registrants can do (short of undermining the initial policy to
begin with - a very long and expensive journey with little reward). One can only
hope that the execution of the new policy is enforced (i.e. 'the challenge of last
resort') in that the majority of trademark cheats are caught. If it is not, then
perhaps netizens could come together with a class action suit to ensure that it does
I appologize for the verbocity of my response and also if it's not the
answer that you were looking for. I personally have been following this whole debacle
and would have preferred to have seen a 'no trademark claim on common words' policy
enforced, but I do believe that many good names will come up again in 'LandRush II'.