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

April 8, 2017

      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@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin
Sent: Thursday, April 06, 2017 9:33 AM
To: J. Scott Evans <jsevans@adobe.com>; George Kirikos <icann@leap.com>
Cc: gnso-rpm-wg@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:  <mailto:gnso-rpm-wg-bounces@icann.org> gnso-rpm-wg-bounces@icann.org [ <mailto:gnso-rpm-wg-bounces@icann.org> mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of J. Scott Evans via gnso-rpm-wg

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

To: George Kirikos

Cc:  <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg@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
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On Apr 6, 2017, at 5:44 AM, George Kirikos < <mailto:icann@leap.com> icann@leap.com> wrote:
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I'm not sure where J. Scott is getting his "facts", but my company
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doesn't "arbitrage" nor has it registered *any* new gTLD domain names
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(and I have no desire for any), nor is it a "bad actor." If you have
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proof that my company is a "bad actor", put it forward, rather than
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sling unsupported innuendo.
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The whole point is that the "barriers" are put forth as *required* to
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deal with so-called "bad actors", but are instead used to advantage
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certain groups, far beyond the "damage" that is claimed to be caused
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by the "bad actors."
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I don't want to delve into politics, but some might see parallels to
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certain government measures in some countries, where a "problem" is
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claimed, but a Draconian solution is applied to deal with it.
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When it comes to the sunrise periods for new gTLDs, the "problem" is
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claimed to be cybersquatting, but instead of relying on curative
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rights, the Sunrise policy went too far and gave too many advantages
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to TM holders, essentially creating an unlevel playing field between
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*good actors* and TM holders.
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Free speech means *no prior restraints* (with very rare exceptions),
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but harsh penalties for unlawful speech (curative rights).
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<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.l> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.l
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aw.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811dc6e843724
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5583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63627
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0794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g%2FOWfCH7s%
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3D&reserved=0
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Sincerely,
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George Kirikos
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416-588-0269
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<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.le> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.le
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ap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30%7Cfa7b1b5
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a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata=6BJPNxolm
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CYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0
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On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans < <mailto:jsevans@adobe.com> jsevans@adobe.com> wrote:
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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.
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Sent from my iPhone
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On Apr 6, 2017, at 4:59 AM, George Kirikos < <mailto:icann@leap.com> icann@leap.com> wrote:
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Hi folks,
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On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian < <mailto:brian.beckham@wipo.int> brian.beckham@wipo.int> wrote:
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Finally, since the chart references the EFF letter, it is worth
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mentioning here that the fact that a trademark owner may pay
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(sometimes extremely high
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amounts) to defensively register a domain name exactly matching its
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trademark in a Sunrise process (and thereby taking it “off the
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market”) does not prevent free expression, which may be undertaken
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in countless other ways.  The number of terms that may be appended
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to a trademark (not to mention typos) to engage in all manner of
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speech – fair or otherwise – is, practically-speaking, all but limitless.
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By that "logic", the number of terms that may be appended to a
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common dictionary word (not to mention typos) to create a
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trademarkable brand is, practically-speaking, all but limitless. :-)
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In other words, those creating a new brand/trademark certainly had
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the opportunity to create a longer (and thus inferior) alternative
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to a commonly used dictionary word or other common term. The fact
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that they decided instead to choose a common term that is widely
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used by the public shouldn't give them any priority access in a
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launch of a new gTLD.
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"I created a problem for myself, and I want ICANN to fix it" is the
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essence of the sunrise argument for commonly used terms, like
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dictionary words and short acronyms.
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Sincerely,
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George Kirikos
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416-588-0269
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<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.
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leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46e63%7Cfa7
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b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418&sdata=6px
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9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0
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Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today

Paul McGrady