[gnso-rpm-wg] Is conventional wisdom that the strongest trademarks deserve greater protection simply wrong?

Nahitchevansky, Georges ghn at kilpatricktownsend.com
Thu Nov 30 17:28:28 UTC 2017


George K

You miss the point.  You are taking a square peg and trying to fit it into a round hole so that it fits your narrative.  If you read the article, then you understand that the article didn't consider online counterfeiting and the numerous domain name brand abuses that are well documented.  The INTA survey, which you obviously loathe because it actually detracts from your narrative, is far more useful in analyzing the RPMs for domain names.  But I understand that anything that might show why the RPMs are helpful or useful will always be flawed in your view.  If your baseline is to get rid of every RPM, then there can never be anything that remotely supports the need for RPMs to be considered valid.   

The point on the URS having less than 1000 cases is valid to the extent it shows that people are not using it as much as we might like.  Perhaps one reason for that is that it only provides a temporary solution, can be gamed and can ultimately end up in costing as much or more than a UDRP.  So perhaps we ought to focus on how to improve the URS and making it more useful.

Look, you and I are not going to agree on the basic point that there needs to be RPMs.  I have invited you on several occasions to work with me and others to find constructive solutions to improve the system (e.g. to prevent gaming etc.).  You have never taken me up on this so I assume your answer is no and that what you want to do is to continue arguing for scrapping the system altogether.  So be it, but then we will likely be doing this for months or years to come as opposed to finding creative and useful solutions for improving a system that others spent years debating to put in place.  Put another way, this RPM should be about improving the tools that are already in place and not be a forum for re-litigating issues that were discussed ad nauseum years ago (and basically making the same arguments yet again).  My sense is that most in the WG would like to move forward and get something done rather than keep on debating the same issue.

Georges N       


-----Original Message-----
From: gnso-rpm-wg [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of George Kirikos
Sent: Thursday, November 30, 2017 11:55 AM
To: gnso-rpm-wg <gnso-rpm-wg at icann.org>
Subject: Re: [gnso-rpm-wg] Is conventional wisdom that the strongest trademarks deserve greater protection simply wrong?

Georges: I actually did read the article, thank you very much. It's another input into our work that should not be dismissed so easily.
Unlike the questionable INTA study that has been presented to this PDP, this academic article was published in a serious peer reviewed academic law journal.

It challenges conventional dogma, which might make some uncomfortable who rely on that dogma, but is a well reasoned work in my view.

Conventional ICANN wisdom is that sunrise periods are needed (indeed, it's a policy), despite the fact that it's mostly the most famous brand owners who utilize them --- the ones the article argues need less protection, not more protection.

For the URS, there have only been less than 1000 cases in total. It might be interesting to actually measure (by going through all cases
manually) what percentage of the marks are "superstrong", to get a sense of whether the policy is geared towards those marks that the authors suggest need fewer protections.

Sincerely,

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




On Thu, Nov 30, 2017 at 11:43 AM, Nahitchevansky, Georges <ghn at kilpatricktownsend.com> wrote:
> George K
>
> You may want to read the article.  The issue they are discussing is somewhat different from what we are considering here in many instances.  The point is really about the protection afforded to a famous work versus a competitor who comes into the marketplace with another mark for a competing product.  A large part of the articles discusses and circles around the well-known Kenner case which concerned the marks PLAY-DOH versus FUNDOH for modeling compounds and the evaluation of likelihood of confusion regarding such.  In the domain name world, by contrast, a huge problem has been the use of domain names based on the identical mark of another and then held or used for profit.  There are well documented abuses involving phishing, fraud, passing off as connected to a brand owner, malware delivery, competitors offering the same services using the brands of others, typosquatting, holding names for resale at exorbitant prices  etc.   The types of abuses in the domain name world often center on the actual use of another's identical or quite similar name or brand.  The RPMs were created to address these types of abuses, which are staggeringly expensive, for brand owners and ultimately consumers.  In that regard, keep in mind that many consumers are defrauded on a daily basis by schemes that involve domain names based on the names and marks of others.  I think Greg and others collected a long list of articles on the issue.  So, in my mind, the RPMs also function as a way to help protect consumers.  This article that you reference, while academically interesting, does not really look at the primary issues we have to deal with in terms of domain name abuses.
>
> Georges N
>
>
> -----Original Message-----
> From: gnso-rpm-wg [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of 
> George Kirikos
> Sent: Thursday, November 30, 2017 11:04 AM
> To: gnso-rpm-wg <gnso-rpm-wg at icann.org>
> Subject: [gnso-rpm-wg] Is conventional wisdom that the strongest trademarks deserve greater protection simply wrong?
>
> Hi folks,
>
> There was a very interesting academic article mentioned last week on The TTABlog:
>
> http://thettablog.blogspot.ca/2017/11/profs-beebe-and-hemphill-scope-o
> f.html
>
> from the New York University Law Review by Professors Beebe and 
> Hemphill,  "The Scope of Strong Marks: Should Trademark Law Protect 
> the Strong More Than The Weak?," 92 N.Y.U. Law. Rev. 1390 (November
> 2017) [PDF with the full paper is linked to on the blog] which challenges conventional wisdom that underlies some of our own work.
>
> In their view, the scope of protection for the superstrong marks (e.g.
> the most famous ones, which tend to be the greatest beneficiaries of the RPMs created by ICANN, e.g. TMHC, URS, UDRP, etc.) should be **lower***, not higher.
>
> "n this article, we challenge this conventional wisdom. We argue that as a mark achieves very high levels of strength, the relation between strength and confusion turns negative. The very strength of such a superstrong mark operates to ensure that consumers will not mistake other marks for it. Thus, the scope of protection for such marks ought to be narrower compared to merely strong marks. If we are correct, then numerous trademark disputes involving the best-known marks should be resolved differently—in favor of defendants. Our approach draws support from case law of the Federal Circuit—developed but then suppressed by that court—and numerous foreign jurisdictions."
>
> These fresh insights should be kept in mind as we do our work, particularly as they draw from cutting edge research and cases from outside the USA.
>
> Sincerely,
>
> George Kirikos
> 416-588-0269
> http://www.leap.com/
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