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

Thu Apr 6 14:57:28 UTC 2017

Hi George,

You mentioned the position of your company in your e mail. I am sorry that I am not familiar with your company businesses. I went to http://www.leap.com/ but there is no inofrmation in this web page. Could you give me more information about LEAP in order to better understand your interest in this matter? 

Best Regards,

Hector

Héctor Ariel Manoff
Vitale, Manoff & Feilbogen
Viamonte 1145 10º Piso
C1053ABW Buenos Aires
República Argentina
Te: (54-11) 4371-6100
Fax: (54-11) 4371-6365
E-mail: amanoff at vmf.com.ar
Web: http://www.vmf.com.ar

-----Mensaje original-----
De: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] En nombre de George Kirikos
Enviado el: jueves, 6 de abril de 2017 11:11
Para: gnso-rpm-wg at icann.org
Asunto: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today

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-ne
> w-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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