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

Sun Apr 9 17:30:49 UTC 2017

Paul:

I have tended to think of cybersquatting as a form of TM infringement. However, as you point out, cybersquatting can but may but not necessarily constitute infringement, and infringement involving a  domain name may but not always will constitute cybersquatting. I have pasted some relevant language  from INTA’s TM Infringement Fact Sheet below and I will try to be more precise in my use of the terms in the future.

As to your suggestion that this WG consider the development of “an additional RPM that addresses infringement” I would think the proper time for any such consideration would be in Phase 2 of our work, when we focus on the UDRP. If you or others want to develop such a proposal that is of course your right. Speaking personally, however, I’d be skeptical about such an expansion of ICANN’s RPM role for several reasons.

First, in relationship to domain name disputes, it appears that such a proposal might involve elimination of the bad faith registration and use requirement that has been a bedrock part of the UDRP since its inception.

Second, not every form of infringement involving a  domain may be reasonably susceptible to non-judicial dispute resolution. Would a UDRP-like approach for addressing sales of counterfeit goods from domains that are not identical or confusingly similar to that of the TM holder associated with such goods be appropriate for ICANN to undertake? Are extinguishment or transfer of a domain the proper remedies when the domain is a social media, auction, or retail website that has multitudes of users?

Third, and perhaps most importantly, such a proposal would seem at odds with our strident efforts during the IANA transition phase to carefully circumscribe ICANN’s Mission and thereby prevent malignant and uncontrolled expansion of its remit. The policy grounding for why ICANN provides a UDRP alternative for use against domains that are identical or confusingly similar to a trademark is that it is the Internet Corporation for Assigned NAMES and Numbers and controls the allocation of right of the dot names to registries, and the  sale of left of the dot domain names by registrars. But ICANN is not some super-legislature of the Internet and has no responsibility or proper role in addressing every violation of law that may occur “on the Internet” – if that were the case, given that almost every commercial and social interchange now uses the Internet, ICANN could claim jurisdiction to address every wrong that occurs on or via the Internet.

It’s useful to reflect that the UDRP and URS are very narrow departures from ICANN’s general rule that disputes arising from the use of domains are to be settled in established regulatory and judicial forums. I would personally need a lot of convincing that it was appropriate or feasible for ICANN to provide an alternative means of addressing trademark violations beyond cybersquatting.

Best regards,
Philip

http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkInfringement.aspx

1. What is trademark infringement?

Trademark infringement is the interference with or violation of another party’s trademark rights through the unauthorized use of that party’s mark or a confusingly similar mark. The basic test for trademark infringement is whether the use of a trademark by one party is such that it can create a likelihood of confusion among consumers in the relevant marketplace in relation to an identical or similar trademark belonging to another party. A trademark does not have to be an exact copy of another mark in order to be considered infringing.

The legal definition of infringement varies from one jurisdiction to another. The most common standards for infringement are (a) close similarity of a mark and its associated goods and/or services to a prior mark and its associated goods and/or services; or (b) use of a mark that creates a likelihood of confusion, in the course of trade, with a prior mark among the relevant consumers. Trademark law in some jurisdictions incorporates both concepts.
4. How does trademark infringement differ from counterfeiting and cybersquatting?

Counterfeiting is the manufacture or sale of inauthentic goods under a spurious mark, both made to resemble the originals. Besides the available civil remedies for counterfeiting, some jurisdictions also allow criminal remedies.
Generally, counterfeit goods are sold under a mark that is identical to or substantially indistinguishable from a mark that is registered for the same goods, without the approval or oversight of the owner of the prior-registered mark. In contrast, trademark infringement or passing off can arise through the use of a mark that is similar for goods that are commercially related. With trademark infringement or passing off, the mark at issue does not have to be identical to or substantially indistinguishable from the prior mark, and the goods or services do not have to be identical to those identified by the prior mark. The manufacture, sale or distribution of counterfeit goods constitutes trademark infringement, even though not every instance of trademark infringement will involve counterfeit goods.
Cybersquatting is the practice of obtaining in bad faith domain name registrations that incorporate trademarks (or names of famous people) with which the registrant has no connection or in which it has no legitimate interest. Cybersquatting may not necessarily constitute trademark infringement, particularly if the registrant is not using the domain name (trademark) in connection with the bona fide sale of goods or services or otherwise in a manner that is likely to cause confusion. Trademark infringement involving a domain name may not necessarily constitute cybersquatting where there is an absence of bad faith. Statutory and regulatory regimes may provide a mechanism for trademark owners to use to address cybersquatting. (Emphasis added)

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: Paul McGrady [mailto:policy at paulmcgrady.com]
Sent: Saturday, April 08, 2017 11:39 AM
To: Phil Corwin; 'J. Scott Evans'; 'George Kirikos'
Cc: 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 Phil,

Without wading in on the ultimate issue of the strong-to-weak continuum, I offer the following thoughts:

You speak of infringement, but infringement has different elements than the UDRP and the ACPA which loosely reflect each other.  These are bad faith-based policy and law addressing cybersquatting, not infringement.  For example, someone could register windows.tld and use it to sell window repair and replacement services to homeowners, but if it were a direct competitor of Microsoft who did it, they would lose the domain name.  Neither the UDRP nor the ACPA limit the analysis to the goods or services contained in the trademark registration (and in fact the ACPA specifically says it is without regard to the goods or services of the parties.  So, let's not hang too much hat on that.

I hope this clarifies things.

PS: If we want to develop an additional RPM that addresses infringement, I would be happy to assist in the effort.  It would make sense to do so that the clear language of paragraph 2 of the UDRP could finally be implemented.  "By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights."

Best,
Paul

-----Original Message-----
From: gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org> [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Phil Corwin
Sent: Thursday, April 06, 2017 9:33 AM
To: J. Scott Evans <jsevans at adobe.com<mailto:jsevans at adobe.com>>; George Kirikos <icann at leap.com<mailto:icann at leap.com>>
Cc: gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today

I must take some exception to the statement that an exact match is trademark infringement, presuming that this refers to a domain name that is an exact match of a TM.

This is generally true when the trademark is a distinctive term that is not a descriptive dictionary word. For example, registration of microsoft.tld by any party other than Microsoft would likely be susceptible to a successful UDRP or URS action. (microsoftsucks.tld is an entirely different matter that raises free speech and fair use issues).

But the registration of windows.tld would not infringe Microsoft's trademark unless the related website contained content related to computer software and any other goods and services for which Microsoft has registered the mark. It can be freely registered, for example, by a company offering window repair and replacement services to homeowners.

Given that nearly every dictionary word (at least in English) has been registered as a trademark for something, registration of an exact match for a totally unrelated purpose cannot be regarded as per se infringement. If that were the case then trademark owners would effectively control the use of dictionary words for domain registration purposes and that would have worrisome free speech implications. Fortunately, TM law does not grant such broad rights, and limits protections to the goods and services for which the mark is used.

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

-----Original Message-----

From: gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org> [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of J. Scott Evans via gnso-rpm-wg

Sent: Thursday, April 06, 2017 8:49 AM

To: George Kirikos

Cc: gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>

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

The law is clear: an exact match isn't free speech. It is trademark infringement. A domain that coveys a message (e.g., hotels suck.com) is free speech and protected accordingly. Also, "free speech" is a US constitutional concept adopted by some countries, but it is not a universal legal concept. Perhaps universal free speech is aspirational, but it is not reality.

Sent from my iPhone

> On Apr 6, 2017, at 5:44 AM, George Kirikos <icann at leap.com<mailto:icann at leap.com>> wrote:

>

> I'm not sure where J. Scott is getting his "facts", but my company

> doesn't "arbitrage" nor has it registered *any* new gTLD domain names

> (and I have no desire for any), nor is it a "bad actor." If you have

> proof that my company is a "bad actor", put it forward, rather than

> sling unsupported innuendo.

>

> The whole point is that the "barriers" are put forth as *required* to

> deal with so-called "bad actors", but are instead used to advantage

> certain groups, far beyond the "damage" that is claimed to be caused

> by the "bad actors."

>

> I don't want to delve into politics, but some might see parallels to

> certain government measures in some countries, where a "problem" is

> claimed, but a Draconian solution is applied to deal with it.

>

> When it comes to the sunrise periods for new gTLDs, the "problem" is

> claimed to be cybersquatting, but instead of relying on curative

> rights, the Sunrise policy went too far and gave too many advantages

> to TM holders, essentially creating an unlevel playing field between

> *good actors* and TM holders.

>

> Free speech means *no prior restraints* (with very rare exceptions),

> but harsh penalties for unlawful speech (curative rights).

>

> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.l

> aw.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811dc6e843724

> 5583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63627

> 0794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g%2FOWfCH7s%

> 3D&reserved=0

>

> Sincerely,

>

> George Kirikos

> 416-588-0269

> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.le

> ap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30%7Cfa7b1b5

> a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata=6BJPNxolm

> CYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0

>

>

>> On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans at adobe.com<mailto:jsevans at adobe.com>> wrote:

>> The same logic applies to you and other domaines, cybersquatters, speculators and small businesses. The fact that you want to arbitrage in terms that are also trademarks is your choice and you have to deal with the barriers put in place to deal with the bad actors.

>>

>> Sent from my iPhone

>>

>>> On Apr 6, 2017, at 4:59 AM, George Kirikos <icann at leap.com<mailto:icann at leap.com>> wrote:

>>>

>>> Hi folks,

>>>

>>>> On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <brian.beckham at wipo.int<mailto: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

>>> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.

>>> leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46e63%7Cfa7

>>> b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418&sdata=6px

>>> 9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0

>>> _______________________________________________

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