The Squared Circle: Fitting Trademark Law Principles into ICANN’s Rights Protection Mechanisms GREG SHATAN MOSES & SINGER LLP APRIL 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 rights system is publicly • The DNS is largely administered on a territorial privately administered basis and gives rise to rights and gives rise to that are exercisable only registrations that result within the territory[ies] in a global presence, concerned. accessible from 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 Real World ICANN World • Protection covers all confusingly • Generally, protection covers exact similar words and phrases, not matches only • 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 Real World ICANN World • Protection covers related goods • Protection is not limited by and services • Breadth may vary depending on goods and services strength of plaintiff mark, among • Relatedness of goods and other things services, or reference to • May include natural areas of expansion trademark owner’s goods and • International Class not particularly services, is a strong factor in 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 Real World ICANN World • Rights are limited by Territory • Rights are not limited by • Breadth may vary depending on strength of plaintiff mark, among other things Territory • May include natural areas of expansion • Trademark owner and third party • 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 Real World ICANN World • Seniority is strength, and a very • Seniority is (largely) irrelevant • 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 TERMS • Confusingly Similar • Only Exact Match is COVERED Terms are covered covered • BROADER THAN • NARROWER THAN ICANN WORLD REAL WORLD GOODS • Protection covers • Protection is not AND SERVICES only “related” goods limited by goods and COVERED and services services • 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 TERMS Confusingly Exact Match • The twin factors of “Terms COVERED Similar Covered” and “Goods and Services Covered” together define the GOODS Related No Goods and AND “penumbra” of the plaintiff mark. SERVICES Goods and Services COVERED Services Limitation • The “Real World” and “ICANN 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 TERRITORY • Rights are limited • Rights are not limited by Territory by Territory • NARROWER THAN • BROADER THAN REAL ICANN WORLD WORLD SENIORITY • Seniority is very • Seniority is (largely) significant irrelevant between • BROADER THAN trademark users, and 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 • Rights • Rights not • Territory and Seniority define the limited by limited by strength and “reach” of the plaintiff Territory Territory mark. Again the pairs are balanced in an analogous, but not identical, fashion. SENIORITY • Seniority is • Seniority is • While not as robust a pairing as very (largely) Terms/Goods & Services, if change significant irrelevant is considered on one side of the 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 Real World ICANN World • Target: infringers • Target: cybersquatters • “Confusing similarity” is much more • Trademark owner must show narrowly construed than in that the defendant is using a trademark infringement cases: “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 public. domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” (WIPO Overview 3.0) Dispute Resolution 17 Real World ICANN World • “Likelihood of confusion” factors • UDRP and URS use a 3-prong test commonly include : 1. Similarity or dissimilarity of the marks • Domain must be identical or in their entireties as to sight, sound, confusingly similar to a trademark meaning and commercial impression. or service mark in which the 2. Relatedness of parties’ goods and services. complainant has rights 3. Similarity or dissimilarity of • The domain owner has no rights or established, likely-to-continue trade legitimate interest in respect of the channels. domain name; and 4. Purchasing conditions, i.e., impulse buyer vs. sophisticated buyer. • The domain name has been 5. Number and nature of similar marks registered and is being used in bad in use on similar goods and services faith. Dispute Resolution 18 Real World ICANN 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 senior/superior rights. or service mark in which the 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. Dispute Resolution 19 Real World ICANN World • Civil standard of proof is “preponderance • UDRP standard of proof is “preponderance of the evidence.” of the evidence” • Remedies may include injunctive relief, • But, URS standard of proof is heightened transfer or cancellation of the trademark, “clear and convincing evidence” money damages, destruction of infringing goods or other corrective action. • Remedy: Transfer of the domain (UDRP) or Attorneys fees may be awarded to the suspension (URS). No money damages or prevailing party in an “exceptional case.” attorneys fees are available. • Default will be awarded to plaintiff unless • Panel will substantively review case in the their papers are facially deficient. event of default. • Appeals give significant deference to trial • “Appeals” are really de novo cases, with court, especially on findings of fact. no deference to the UDRP panel’s decision. • Costs can be very significant. • Costs are quite low Other Rights Protection Mechanisms 20 Real World ICANN World • No equivalent. Sunrise was designed to • Sunrise: Trademark owners registered in the get ahead of cybersquatters. TMCH may acquire domains for a limited time in advance of general availability. • No equivalent. Claims was designed to inform applicants of potential issues. • Trademark Claims: Notice sent to potential applicant and to trademark owner registered • No equivalent.