[gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today

Thu Apr 6 14:10:55 UTC 2017

1. My company was not in favour of new gTLDs, and was very outspoken
against them. To imply otherwise is ridiculous and incorrect. Don't
lump me in with those guys who were in favour of them. If I'm making
arguments that happen to be aligned with new gTLD registry operators
or TM holders or other parties on some particular issue, that doesn't
mean I'm aligned with all of their issues. I argue for what I see is
right and justified, based on facts, law and supporting evidence. e.g.
I recognize TM rights, but don't recognize ever-expansive claims that
go beyond the law. I've pushed for lower TMCH fees (if the TMCH is to
even be continued) harder than some members of the IPC, and that's
*their* issue. I've pushed for lower registry TMCH fees harder than
the registry operators! I don't even plan to ever use the TMCH, and am
against its use for sunrise periods, but if it exists, it should be
operated at low cost and efficiently.

2. I don't know who actually wants new gTLDs (their registry operators
seem to be constantly complaining about losing money, etc., asking for
ICANN bailouts), but the horde of "consultants" seem to suggest that
it's brands that want new gTLDs.

http://www.circleid.com/posts/20170213_2017_the_year_of_dotbrand/

"2017 seems poised to be the Year of dotBrand!"

"That's why there is a growing pressure on ICANN to open a new round
for the "have-not" companies. "

3. The ICANN commissioned studies were junk:

http://forum.icann.org/lists/5gtld-guide/msg00015.html

"Economic "Study" Phase II does not make the case for new TLDs - ICANN
and authors should be ashamed to present this "work" to the public"

I wasn't the only one to say so. KC Claffy (member of ICANN SSAC at
the time) wrote:

http://forum.icann.org/lists/economic-framework/msg00004.html

"(1) Like the Carlton report, the authors still seem to think one
way to "evaluate" concerns raised by others is to dismiss them
without further study.  George Kirikos observed one reason for the
similarity between the two reports -- there was overlap in authorship.
Despite the loud complaints that the previous report was not
sufficiently objective, ICANN commissioned a second report that was
ultimately co-authored by the same company as the first report, a
fact hidden by ICANN's emphasis on only the Stanford and Berkeley
co-authors in the report's description on the ICANN web site."

....(and many more good points, read the entire post...)

(9) George Kirikos also points out in his scathing comments
[ http://forum.icann.org/lists/economic-framework/msg00000.html ]
that the ICANN-commissioned report, despite having academic
authors, seems to eschew scholarship, by failing to cite related
work and how it compares to the authors' own results, and avoiding
discussion of (or discounting) empirical data that sheds doubt on
the wisdom of what ICANN has made clear it plans to do anyway."

I, and many others can say "we told you so."

Indeed, even *outside* of ICANN, these "experts" are criticized, see
the article at:

https://www.propublica.org/article/these-professors-make-more-than-thousand-bucks-hour-peddling-mega-mergers

"The economists are leveraging their academic prestige with secret
reports justifying corporate concentration. Their predictions are
often wrong and consumers pay the price."

which explicitly covers Compass Lexecon and Dennis Carlton

4. The problem I mentioned wasn't the introduction of new gTLDs -- it
was the choice as a trademark by the brand owner of a widely used
term. They could have chosen something else. It's unrealistic for that
brand owner to expect that they have exclusivity or priority rights to
a term that is commonly used or has many prospective good faith
owners.

5. There are better examples that are right on point re: "exact
match", e.g. the Canadian.biz lawsuit, where a brewery in Canada
wanted the exact match .biz domain:

https://www.canlii.org/en/on/onsc/doc/2002/2002canlii49493/2002canlii49493.html

or the famous and ongoing Nissan.com saga.

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/

On Thu, Apr 6, 2017 at 9:42 AM, Beckham, Brian <brian.beckham at wipo.int> wrote:
> George, with respect, your conclusion is unhelpfully dismissive, and
> moreover, it is highly inaccurate.
>
>
>
> It was registration interests, not brand owners, who were clamoring for new
> gTLDs.  Merely as one illustrative example of this, in July 2009, INTA wrote
> to ICANN suggesting that work remained to be done in order to minimize
> trademark abuse and consumer confusion in an expanding gTLD space:
> https://www.icann.org/en/system/files/files/drewsen-to-beckstrom-24jul09-en.pdf.
>
>
>
> In this same regard, you may also recall that even an ICANN‑commissioned
> study
> (https://archive.icann.org/en/topics/new-gtlds/economic-analysis-of-new-gtlds-16jun10-en.pdf)
> suggested that any introduction of new gTLDs proceed cautiously, namely: "it
> may be wise to continue ICANN’s practice of introducing new gTLDs in
> discrete, limited rounds. It is impossible to predict the costs and benefits
> of new gTLDs accurately. By proceeding with multiple rounds, the biggest
> likely costs—consumer confusion and trademark protection—can be evaluated".
>
>
>
> ICANN opted however to proceed in a more unlimited manner, and we are where
> we are.
>
>
>
> In any event, it is simply unsupportable to suggest that the present rights
> protection discussions are somehow a "problem" created by trademark owners.
> Nor are these issues exclusive to brand owners using dictionary terms in an
> arbitrary sense (e.g., "apple").  To protect their brand/reputation and
> indeed the consumers relying on them, even brand owners with fanciful
> (coined/unique) trademarks such as XEROX, EXXON, and KODAK have had occasion
> to engage in enforcement actions such as UDRP cases.
>
>
>
> Finally, even the Toyota v. Tabari case cited in your later email seems to
> support the principal/availability of sunrise protection;  there the court
> states: “Of course a domain name containing a mark cannot be nominative fair
> use if it suggests sponsorship or endorsement by the trademark holder.
> We've already explained why trademark.com domains have that effect.”
>
>
>
> Best regards,
>
>
>
> Brian
>
>
>
> -----Original Message-----
> From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org]
> On Behalf Of George Kirikos
> Sent: Thursday, April 06, 2017 2:00 PM
> To: gnso-rpm-wg at icann.org
> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working
> Group call held earlier today
>
>
>
> Hi folks,
>
>
>
> On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <brian.beckham at wipo.int>
> wrote:
>
>> Finally, since the chart references the EFF letter, it is worth
>
>> mentioning here that the fact that a trademark owner may pay
>
>> (sometimes extremely high
>
>> amounts) to defensively register a domain name exactly matching its
>
>> trademark in a Sunrise process (and thereby taking it “off the
>
>> market”) does not prevent free expression, which may be undertaken in
>
>> countless other ways.  The number of terms that may be appended to a
>
>> trademark (not to mention typos) to engage in all manner of speech –
>
>> fair or otherwise – is, practically-speaking, all but limitless.
>
>
>
> By that "logic", the number of terms that may be appended to a common
> dictionary word (not to mention typos) to create a trademarkable brand is,
> practically-speaking, all but limitless. :-)
>
>
>
> In other words, those creating a new brand/trademark certainly had the
> opportunity to create a longer (and thus inferior) alternative to a commonly
> used dictionary word or other common term. The fact that they decided
> instead to choose a common term that is widely used by the public shouldn't
> give them any priority access in a launch of a new gTLD.
>
>
>
> "I created a problem for myself, and I want ICANN to fix it" is the essence
> of the sunrise argument for commonly used terms, like dictionary words and
> short acronyms.
>
>
>
> Sincerely,
>
>
>
> George Kirikos
>
> 416-588-0269
>
> http://www.leap.com/
>
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