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@icann.org] On Behalf Of George Kirikos Sent: Thursday, November 30, 2017 11:04 AM To: gnso-rpm-wg <gnso-rpm-wg@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-of.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/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner. ________________________________ ***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.