[bc-gnso] Suggested Reading for all BC Members

Phil Corwin psc at vlaw-dc.com
Wed Jul 24 05:39:55 UTC 2013


[Fair Use excerpt to facilitate discussion of the LRO process as it is now playing out...]

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. Proposed domains for dozens of generic terms (e.g., .academy, .blue, .cam, .coach, .direct, .food, .music, .now, .song) and many others all appear highly likely to emerge unscathed from the legal rights objections process. Law is a "never say never" profession but, seriously, the adverse results in the .express and .mail proceedings ought be be writing on the wall for the remaining trademark-based challengers to generic string domains...

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...

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.

Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004

Twitter: @VlawDC

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

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