The Squared Circle: Fitting Trademark Law Principles into ICANNs - PowerPoint PPT Presentation

The Squared Circle: Fitting Trademark Law Principles into ICANN’s Rights Protection Mechanisms G REG S HATAN M OSES & S INGER LLP A PRIL 24, 2019

2 “It has become apparent to all that a considerable amount of tension has unwittingly been created between, on the one hand, addresses on the Internet in a human-friendly form which carry the power of connotation and identification and, on the other hand, the recognized rights of identification in the real world….” Final Report of the WIPO Internet Domain Name Process, April 30, 1999

The Circle and the Square 3 Real World ICANN World • The intellectual property • The DNS is largely rights system is publicly privately administered administered on a territorial and gives rise to basis and gives rise to rights registrations that result that are exercisable only in a global presence, within the territory[ies] accessible from concerned. anywhere in the world. “In this respect, the intersection of the DNS and the intellectual property system is but one example of a larger phenomenon – the intersection of a global medium in which traffic circulates without cognizance of borders with historical, territorially based systems that emanate from the sovereign authority of the territory.” WIPO Final Report

Fitting the Circle to the Square: 4 A Question of Balance • On the one hand, trademark rights should not be expanded, or new rights created • On the other hand, trademark rights should not be diminished, nor should rights be taken away • In addition, trademark rights need to be balanced against other rights, such as freedom of expression, fair use and other legitimate uses of the “string”

Real World vs. ICANN World 5

Contours of the Trademark Right 6

7 Confusing Similarity vs. Exact Match ICANN World Real World • Generally, protection covers exact • Protection covers all confusingly matches only similar words and phrases, not • In UDRP/URS, this extends to exact just “exact match” matches plus generic words (e.g., acme + furniture), but the exact match of the • Scope may vary depending on string itself varies only due to strength of plaintiff mark, among typosquatting, homoglyphs, etc. other things • In other contexts (e.g., Sunrise or Trademark Claims), only the exact match is covered • “Previously abused strings” are minor exception • Significantly narrower than in the “real world”

8 Goods and Services Limitation ICANN World Real World • Protection covers related goods • Protection is not limited by and services goods and services • Breadth may vary depending on strength of plaintiff mark, among • Relatedness of goods and other things services, or reference to • May include natural areas of trademark owner’s goods and expansion services, is a strong factor in • International Class not particularly relevant ( some would say “wholly looking for “use in bad faith” in irrelevant”) UDRP. • The more similar the marks, the less similar the goods and services need to be

Territory 9 ICANN World Real World • Rights are limited by Territory • Rights are not limited by • Breadth may vary depending on strength Territory of plaintiff mark, among other things • Trademark owner and third party • May include natural areas of expansion • International Class not particularly can be anywhere relevant (some would say “wholly irrelevant ”) • The more similar the marks, the less similar the goods and services need to be • Many trademarks are registered in multiple territories.

Seniority 10 ICANN World Real World • Seniority is (largely) irrelevant • Seniority is strength, and a very • All legitimate trademark users are on a significant facet of trademark level playing field without regard to protection seniority • No advantage in Sunrise • Seniority is often dispositive in a • In UDRP, respondent must have “no rights dispute with a Junior User or legitimate interest” in the domain and must have registered and used in “bad faith” • Lack of seniority can be damaging to the trademark owner in one instance – if a domain registration predates a UDRP complainant’s rights, the complainant can be found to have engaged in Reverse Domain Name Hijacking (RDNH)

A Holistic View: The Big Trade-Off 11 REAL WORLD ICANN WORLD • Only Exact Match is • Confusingly Similar TERMS COVERED covered Terms are covered • NARROWER THAN • BROADER THAN REAL WORLD ICANN WORLD • Protection covers • Protection is not GOODS AND only “related” goods limited by goods and SERVICES and services services COVERED • Relatedness requires • But relatedness may a substantive analysis factor into “bad faith” and determination analysis in UDRP • NARROWER THAN • BROADER THAN REAL ICANN WORLD WORLD

A Holistic View: The Big Trade-Off 12 REAL WORLD ICANN WORLD • The twin factors of “Terms TERMS Confusingly Exact Match COVERED Covered” and “Goods and Services Similar Covered” together define the GOODS “penumbra” of the plaintiff mark. Related No Goods and AND Goods and Services SERVICES • The “Real World” and “ICANN COVERED Services Limitation World” pairs are both balanced in an analogous fashion, even though the pairs are not identical. • A change to only one side of the ICANN World pair (or the Real World pair) would upset the balance. • Therefore, if one side of the ICANN World pair is changed to be “narrower,” the other side must be changed to be “broader” to maintain that balance.

A Holistic View: Other Factors 13 REAL WORLD ICANN WORLD • Rights are limited • Rights are not limited TERRITORY by Territory by Territory • BROADER THAN REAL • NARROWER THAN WORLD ICANN WORLD • Seniority is very • Seniority is (largely) SENIORITY significant irrelevant between trademark users, and • BROADER THAN ICANN WORLD may help or hurt in UDRP/URS matters • NARROWER THAN ICANN WORLD

A Holistic View: Other Factors 14 REAL WORLD ICANN WORLD • Territory and Seniority define the • Rights • Rights not TERRITORY strength and “reach” of the plaintiff limited by limited by mark. Again the pairs are balanced Territory Territory in an analogous, but not identical, fashion. • While not as robust a pairing as • Seniority is • Seniority is SENIORITY Terms/Goods & Services, if change very (largely) is considered on one side of the significant irrelevant pair, an equal but opposite change should be considered on the other side of the Territory/Seniority pair. • In addition, these two pairs need to be considered together and in the context of the various ICANN RPMs and their relationship to “Real World” dispute resolution mechanisms, discussed on the following slides. • Overall, this is a system of interlocking parts, and maintaining balance is a key when considering any changes to ICANN’s RPMs.

Dispute Resolution 15

Dispute Resolution 16 ICANN World Real World • Target: cybersquatters • Target: infringers • “Confusing similarity” is much more • Trademark owner must show narrowly construed than in trademark infringement cases: that the defendant is using a “While each case is judged on its confusingly similar mark in such own merits, in cases where a a way that it creates a likelihood domain name incorporates the entirety of a trademark, or where of confusion, mistake, and/or at least a dominant feature of the deception with the consuming relevant mark is recognizable in the domain name, the domain name public. will normally be considered confusingly similar to that mark for purposes of UDRP standing .” (WIPO Overview 3.0)

Dispute Resolution 17 ICANN World Real World • “Likelihood of confusion” factors • UDRP and URS use a 3-prong test commonly include : • Domain must be identical or 1. Similarity or dissimilarity of the marks confusingly similar to a trademark in their entireties as to sight, sound, meaning and commercial impression. or service mark in which the 2. Relatedness of parties ’ goods and complainant has rights services. • The domain owner has no rights or 3. Similarity or dissimilarity of established, likely-to-continue trade legitimate interest in respect of the channels. domain name; and 4. Purchasing conditions, i.e., impulse • The domain name has been buyer vs. sophisticated buyer. registered and is being used in bad 5. Number and nature of similar marks in use on similar goods and services faith.

Dispute Resolution 18 ICANN World Real World • Defendant could have some • UDRP and URS use a 3-prong test “rights or legitimate interest” in • Domain must be identical or their mark, but for the plaintiff’s confusingly similar to a trademark or service mark in which the senior/superior rights. complainant has rights • “Bad faith” is not a requirement in • The domain owner has no rights or an infringement case. It is legitimate interest in respect of the required in ACPA cases, but ACPA domain name; and only requires bad faith use or • The domain name has been registration. registered and is being used in bad faith.