The ABCs of Alphabet

So, what is Alphabet? Alphabet is Google 每 sort of. As by Alphabet CEO and Google cofounder Larry Page, Alphabet is a collection of companies, the largest of which is?Google, now a subsidiary of the new company. Google in turn has ※slimmed down§ and moved its non-internet projects?to Alphabet 每 similar to?lifespan research company??or investment-focused . According to Page, ※This new structure will allow us to keep tremendous focus on the extraordinary opportunities we have inside of Google.§

BMW is No Crash-Test Dummy

For BMW, ※alphabet§ has quite a different meaning. The trademark and .com address are owned by a subsidiary of the German automaker, which provides corporate car fleet services. Presumably, Page and colleagues?(wait for it) googled their desired?name before the?big reveal, yet BMW informed the??that they were never contacted by Google prior to the Internet giant＊s announcement. Also, BMW＊s spokesperson, Micaela Sandstede,?told?the ?that BMW has no plan to sell the domain to Google, as the website is?a ※very active§ part of (BMW＊s) Alphabet＊s business.?However,?BMW is investigating into whether any trademark infringement indeed occurred.

Is BMW Geared-Up and Ready to Go??

The big question is: does BMW have a case and will it pursue it? Under US , infringement occurs when a registered mark is used in a way that will likely ※cause confusion, or cause mistake, or to deceive.§ In other words, having two companies with the same name is okay, as long as there is no possibility that consumers could become confused.

This is where the road gets rocky. Google＊s Alphabet is located at , but BMW＊s ?experienced a huge spike in visits after Page＊s announcement 每 so?significant?that it was? that BMW＊s site crashed. The traffic spike?might?be indicative to a court of?confusion among many investors and curious minds as to where they might access Google＊s Alphabet online. Furthermore,?it was? that there is a connection between the services of Google and BMW, as BMW is a car manufacturer and Google has a line of self-driving cars. This could potentially be submitted as evidence under the ※likelihood of confusion§ test.

Although BMW may be annoyed, I think it is rather?unlikely they will pursue legal action, no matter what their?investigations may uncover. It has been made clear that Alphabet Inc. is purely a parent company and will not sell?products or brands built under its name. There should?be no confusion between the products and services of Alphabet (Google) and Alphabet (BMW), as Google＊s Alphabet technically has neither. Further, Google and BMW are?each?titans in their respective industries, and I think it would be difficult to prove that the average Joe could?not differentiate between the ABCs both companies spell out.

That said, this editor also (wait for it again)?googled ※how many 'alphabets' are there in the world?§ Although the answer was?not confirmed, a quick search of the ?revealed that over one hundred registered marks with some use of the word ※alphabet§ exist. It is unknown if?any of these companies could?be impacted by the?new Alphabet, and what the fall-out, if any, might?be. As reported by the , it is possible that?some ※Alphabet§ companies sell their domain names, while others may be?concerned about their Google result priority, which could affect?their online presence. Regardless, the harsh reality is that these smaller entities are unlikely to?gear up for battle, because (in the words of an alphabet-named business owner): ※Who sues Google?§ (Note: this editor also googled this question and over 5 million results appeared in 0.37 seconds, although I did not include the?search term ※successfully§).

This will be an exciting case to follow should a lawsuit unfold; however, as of today, BMW＊s decision on the issue is unknown. You can be sure that I will google it again tomorrow.

Jaimie Franks is an?IPilogue editor and JD candidate at Osgoode Hall Law School.?

The post Will Google＊s Alphabet Begin with B-M-W? appeared first on IPOsgoode.

The Issue at Hand

According to the , in 2008 WREAL registered its FyreTV? and FyreTV.com? trade-marks for its on-demand pornography streaming service. Its service is accessible through the FyreTV? website, set-top box, and a few third-parties. On April 2, 2014, Amazon launched its set-top box named .?It is described as ※a tiny box you connect to your HDTV§ with video streaming capabilities and other features like child-friendly profiles and voice activated controls. WREAL contends that Amazon＊s Fire TV performs ※a substantially similar, if not identical, function§ to the FyreTV? set-top box. This ※function§ is identified as access to a library of streaming videos that can be accessed by a consumer at home. WREAL argues that Amazon＊s use of the Fire TV name has, and will, continue to cause serious and irreparable harm to WREAL＊s established business.

Trade-mark Infringement and the U.S. Law

Under 15 USC ∫ 1114 of the ,?trade-mark infringement occurs when ※any reproduction, counterfeit, copy, or colorable imitation of a registered mark§ is used in the sale, distribution or advertising of a good or service, or in connection with a use that is likely to ※cause confusion, or cause mistake, or to deceive.§ To determine if a registered mark has been infringed, American courts look to the ※likelihood of confusion§ test. The test considers eight factors, recognized as the ※Polaroid Factors§ as established in .

Will FyreTV Sizzle or Succeed?

?According to WREAL＊s , it seems as if the company＊s primary points of contention with Amazon are the similarities between ※FyreTV§ and ※Fire TV§, and the documented confusion amongst consumers regarding the two names 每 similarity and confusion being two important ※.§ Such factors are aggravated by the wide reach of Amazon＊s marketing capabilities compared to the smaller market-influence of WREAL. As such, confusion has allegedly led many consumers to assume that ※Fire TV§ belongs to Amazon, leading to the possibility of WREAL＊s products being viewed as lesser-valued imitations.

FyreTV? and Fire TV are very similar language-wise. Despite the spelling difference, both are pronounced in the same way. ?The possibility for confusion is perpetuated by the fact that FyreTV? owns ※FireTV.com.§ As a result, if FireTV.com is typed into an Internet browser (Warning: DO NOT try this at work), it redirects to FyreTV.com?. WREAL included in its complaint various examples of consumers identifying the FireTV.com redirect and being confused as to whether WREAL and Amazon had merged. CNBC also ran an article on the day of Amazon＊s Fire TV launch entitled ※.§ With so much immediate discussion by media and consumers alike, it is arguably difficult for Amazon to deny that confusion was created by the launch of its set-top box with the Fire TV name.

WREAL further contends that Amazon knew that FyreTV? was a registered mark. WREAL submits that had Amazon followed its past practice of registering domain names for major products, as it did for the Kindle, it would have likely attempted to register FireTV.com. Consequently, Amazon would have visited the domain name and seen the redirect. They would also have searched the name on the (TESS), finding that when ※FireTV§ is searched FyreTV? and FyreTV.com? appear 每 a result I was able to duplicate myself.

How May Amazon Respond?

Amazon may reply that there is a significant difference between the two products, as FyreTV? strictly streams adult entertainment. However, WREAL does state in its complaint that they have no intention of limiting the FyreTV? brand to adult content. Furthermore, CNBC that when Fire TV was launched WREAL did not mention its device on its website, and that silence from the corporation had many believing that WREAL had folded. We can possibly speculate that "FyreTV§ was not considered to be an active brand, or specifically an available-for-purchase video streaming device, and thus not a problem in Amazon＊s eyes.

Conclusion

So who will emerge from the flames victorious? In my opinion, the evidence does seem stacked against Amazon. The clear confusion demonstrated by various consumers and media as soon as Fire TV was launched, along with the apparent lack of due diligence by Amazon in searching "Fire TV" both on the Internet and TESS, leads to my conclusion that Amazon has not responded to the complaint because it is trying to figure out how to put out this fire. We must ask, however, how Amazon＊s size and power may influence the outcome of this case. Will Amazon push for a settlement, which the admittedly smaller and less-influential WREAL will be drawn to? What does that mean for cases between larger companies infringing on the registered marks of smaller organizations? Can the value of a smaller group＊s mark really be protected; can they really win the battle? Or, does the publicity that cases like this bring benefit?smaller companies?as a way to ensure that grand corporations like Amazon follow the rules? Maybe these questions will be answered as this case progresses, but either way I know I＊ll be tuned into this channel to see which ※fire§ is put out.

Jaimie Franks is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

The post Will Amazon Get Burned for Playing with Fyre? appeared first on IPOsgoode.

The aforementioned decisions show how awkwardly the CIRA dispute resolution framework functions when applied to a new situation: a complaint based on the bad faith use of a personal name as a domain name. The (CDRP) typically contemplates complaints based on financial interests rooted in valid trade-mark rights, not simply in the valid personal interests of complainants. This situation is unfortunate, as these types of proceedings may become more frequent in the future.

Background: Revenge on the Internet

The two decisions, heard together, involve two Complainants - a working in Client Relations at Manulife Financial Affinity Markets?and?acting as General Counsel for the same company - and a single Registrant,?a former customer of the Complainants＊ employer.

The Registrant (who took no part in the proceedings) was unhappy with certain decisions made by Manulife which may have cost him money. In response to his dissatisfaction with the company, and with the Vice President in particular, he registered the Vice President＊s personal name as a domain name, and threatened to use the domain to harm the Complainant＊s reputation.

At the time of the complaint, the domain name had resolved to a website which displayed pornographic images. The Registrant also allegedly promised to drop by the Vice President＊s home to discuss the matter, and made other comments which were described by the Panelist as ※threats§ which ※had a personal tone.§

In response,?the lawyer working for Manulife sent the dissatisfied customer an email addressing the registration of the domain name and?advising him that a visit to the Vice President＊s house would be treated as a trespass. The issue was not resolved, and the Registrant soon registered another domain name, this time using the personal name of the lawyer. He threatened to provide personal information about her and her family on the new website.

The email exchanges between the Registrant and the lawyer, while not publicly available, were described by the Panel as ※angry and condescending.§ Exchanges between the lawyer and the dissatisfied customer apparently included statements by the customer that the Internet was a ※dangerous place,§ and carried the implication that information included on the website about the lawyer and her children could cause them harm.

Both the General Counsel and the Vice President filed complaints against the former customer on 13 November 2013, seeking to have the domain name transferred to avoid further threats and potential damage to their reputations.

The Policy, the Law and the Problem of Personal Names

The (CDRP) can allow for the transfer of ownership of a domain name registration under paragraph 3.1 where

1. The Registrant＊s dot-ca domain name is confusingly similar to a Mark in which the complainant had Rights prior to the date of registration of the domain name and continues to have such Rights;
2. The Registrant has no legitimate interest in the domain name (as described in the CDRP); and
3. The Registrant has registered the domain name in bad faith (also as described in the CDRP)
   
   

The term ※Mark§ also has a specific definition under paragraph 3.2 of the CDRP. This definition closely tracks definitions in ss. 2 and 4 of the Trade-marks Act (), in that it requires that the Mark be used for the purpose of distinguishing one＊s goods and services from those of another.

Both the CDRP and the Trade-marks Act are concerned about preserving the use of one＊s personal name from protection, in order to enable people to honestly conduct business under their actual names. However, both the Act and the CDRP address this defensively:

• The Trade-mark Act provides that a Mark is not registrable if it is primarily merely the name or surname of an individual who is?living or who has died within thirty years of an application (under ).
• The CDRP protects the ability of Registrants to operate websites under their own name in subparagraph 3.1(b), where the personal name of the Registrant constitutes a ※legitimate interest§ under subparagraph 3.4(e).
  
  

Neither the CDRP nor the Trade-marks Act recognize a form of rights which arise from one＊s personal name outside the use of that name for the purpose of distinguishing one＊s goods and services from another. Essentially, the CDRP lays out a procedure for protecting the commercial interests of trade-marks or trade names, and minimizes those protections where the Registrant of a domain name operates a website that is, in fact, his or her name (or a name by which he or she is commonly known).

Under the CDRP, as under the Trade-marks Act, a personal name can be used to block or reduce the scope of protection afforded to a Mark, but cannot necessarily be used as a sufficient basis to give rise to trade-mark-like rights on its own. To establish rights, the crucial factor is the presence of distinctiveness in the context of commercial activity, not the legal name of persons involved in a proceeding.

Solving the Problem Using the CDRP

The approach taken by the CDRP and the Trade-marks Act leads to a problem. In order to obtain relief under the CDRP, a person whose name has been registered in bad faith as a domain must prove that his or her name is a ※Mark§ using the same kind of evidence and reasoning that he or she would use to prevent his or her name from becoming a ※Mark§ under the Trade-marks Act.

The CDRP was not written to protect the personal or reputational interests Complainants may have in registered domain names. Even though this problem may be an issue which needs to be addressed, and which poses a substantial problem that should be resolved?in the interests of public policy, the situation which the CDRP was meant to address is in fact more narrow. The CDRP protects the valid commercial interests of firms or people operating under a distinctive name. It does not explicitly protect other valid, personal interests individuals may have in registered domain names.

The panel reasoned around this problem by positing that certain kinds of professionals use their personal names in the promotion of their services, and as the professionals in question have promoted their services under this personal name, that name has effectively acquired distinctiveness. In this manner, ※professionals treat personal names as trade names or trade-marks.§ Thus, the decision of the panel seems to closely track a ※acquired distinctiveness§ argument for allowing a mark which is barred from registration under s 12(1)(a) and (b).

Problems for the Future

Here, it would have been unacceptable to the Panelist (and most likely to the public at large) to allow the Registrant to continue abusing the domain name system in this manner. However, the Panelist was confined within the parameters of a policy that was ill-equipped to solve disputes of such a?personal?nature. Using the restrictive definitions of the CDRP, the Panelist achieved the best outcome by avoiding the deficiencies of the CDRP entirely, and holding that the Complainants had common law trade-mark rights in their personal names. Yet the decision shows that the policy itself contains a major flaw, and the workaround may have unintended consequences in the future.

For instance, if a private individual is not part of a professional class in which a member uses his or her name to promote a service, does that mean this person cannot use the CDRP to transfer a domain name registered in bad faith for the purpose of spreading sensitive, personal information about that individual on the Internet?

In addition, if a Registrant provides evidence that a large number of professionals share a name with a complainant, would this mean that the complainant cannot prevent the bad faith registrant from maintaining control of the domain name and continuing to operate a hate site, since for that professional the name lacks sufficient distinctiveness?

Libel laws and privacy laws may help fill in some of the gaps, but unlike the administrative proceedings offered by CIRA, civil actions are often prohibitively expensive for private individuals. Ultimately, the new realities of the Internet era show that the CDRP may have been too narrowly drafted 每 and there are legitimate needs which the policy may not address.

David Bowden is an IPilogue editor and a JD Candidate at Osgoode Hall Law School.

The post Revenge and Domain Name Seizure: CIRA Allows Transfer of Registration of Domain Names Used for Personal Attacks appeared first on IPOsgoode.

Stakeholders from all of the above-mentioned groups and more gathered at the in Indonesia, October 22-25, 2013, to discuss all manner of issues related to including online surveillance, privacy, big data, online child protection, youth perspectives, cybersecurity and cybercrime, freedom of expression, ?and?access to information, human rights in context of the Internet, jurisdictional conflicts and harmonization, international development, and of course, intellectual property (relating mostly to copyright and domain names). First convened by the United Nations in 2006, the IGF is the world's largest and highest-profile conference wholly dedicated to the betterment of the Internet and its continued governance and preservation. With no binding goals, negotiations, or decision , the ostensibly affair provides a platform for otherwise-rare direct dialogue between multiple cross-sections of society and mass cross-pollination of ideas, general principles, and best practices, which can be taken back by members to be used in their own decision-making processes.

This year, the Indonesian government〞whose national population includes over 63 million Internet users〞hosted approximately 2000 delegates from 111 countries, who explored this year's across 135 workshops, focus sessions, open forums, roundtables, and panels (with more participating remotely and millions checking in on Twitter). Organizers made a concerted effort to integrate into the sessions more tangible policy outcomes that participants could take away with them, as well as attention to initiatives. Meanwhile, ※ § and ※§ constituted an underlying all discussions, while ※§ and ※§ infused electric static into the air.

As providing complete coverage of all news, events, discussions, and ideas that emerged during the week-long IGF within one post would be impossible, this article will restrict itself to highlighting certain issues directly encompassed by intellectual property law, particularly those explored in a titled, ※§.

1. Square Laws in Round Processes: Has Copyright Policy Gone Awry With Respect To Technological Reality?

This question challenges the notion that current and trending copyright legal frameworks are at all suitable for the way Internet infrastructures and associated technologies work today, suggesting increasing misalignment between laws designed in a more analog world and technological processes where copying is strictly incidental to otherwise legitimate use of the work. Glenn Deen of NBCUniversal asserted that technology should be ※policy-neutral§, as in developed without any particular policy favoured or hindered by or coded into the technology itself. In other words, copyright policies should be created such that they fit the technology, rather than the other way around. Other panellists agreed but maintained this is currently not the case〞technology has not been made policy-neutral, and through phenomena such as institutional capture of standards fora, it has in fact been designed to promote and enforce certain policies (examples of this are technological protection measures (TPM) and digital rights management (DRM) systems). , argues , takes the Internet for granted and distorts its basic architecture, such as by turning neutral online intermediaries into unofficial law enforcement entities with respect to user behaviour.

2. The Librarians Strike Back: This Isn't the Copying You're Looking For

of the made a compelling case for copyright law to pay closer attention to the kind of copying involved in different situations. Sharing others' concerns over unbalanced copyright frameworks, she explained how in a library research access context provides a clear illustration of copyright laws not fitting an Internet environment. According to Broad, text and data mining is one of several ※productive, non-harmful uses§ that operated freely outside the realm of copyright in a print environment, but are now captured by copyright frameworks purely through the incidental copying that occurs as part of Internet-enabled technological processes today. She compared licensing text and data mining, in essence the extraction of information, to ※placing a toll on the information highway§.

While Article 5.1 of the exempts "[t]emporary acts of reproduction...which are transient or incidental [and] an integral and essential part of a technological process,§ in transmitting content between computers, this is a narrow exception that will not encompass all cases that require protection, such as text and data mining. Furthermore, as Broad points out, such a framework presumes infringement unless proven otherwise; one must make an exception rather than find the use not infringing at all to begin with.

Lastly, e-books and their associated licensing regimes present ※a huge challenge§ in terms of access for consumers, academics, public libraries, and the visually impaired, among other user groups. With respect to the visually impaired, users must overcome obstacles by acquiring a right to remove from the content (recently enshrined in the universally lauded , the first-ever agreement to limit rather than expand copyright), and by possessing the technical ability to actually remove the TPM and access the content through assistive devices. In these respects, some at the IGF spoke of licensing regimes ※defeating the purposes of the Internet§, particularly in the context of , where public libraries can play a valuable role in providing access to information.

3. Say It to Belie It: The Language of Limits and Exceptions in Copyright Law

One current problem that IGF 2013 participants identified with current copyright law is its unbalanced nature: in many jurisdictions and on an international level, rather than balancing copyright against user/access rights as if the latter were of equal weight, laws provide for overarching copyright with specific exceptions that are explicitly carved out. The starting point of the law is not one where the limits and exceptions hold the same weight as copyright; this is reinforced by their being referred to precisely as ※limits§ and ※exceptions§ to an otherwise default backdrop of established copyright. Speakers suggested instituting a new international norm that would conceptually elevate rights of access and other ※limits§ or ※exceptions§ to the same level as copyright in order to better protect them, as seen in the Marrakesh Treaty. As asserted, ※We often talk about copyright substantive rights...and having carve-outs for limitations and exceptions.... [W]e should dispatch with that language and think about them as equal partners balancing each other.§

4. Meanwhile at WIPO: Additional Issues & Initiatives

Initiatives and ideas beyond those outlined above were featured in IGF 2013 presentations. These included - according to WIPO legal officer Paolo Lanteri - the ; a WIPO study on and a WIPO-compatible, world-standardized licence (to be released within the next few weeks). Regarding the latter, Ari Gema of Creative Commons Indonesia pointed out the need to educate the general population on the concept of copyright before introducing the Creative Commons license, hinting at cultural and regional differences in the significance and relevance of copyright, and the potential implications for corresponding law, regulation, and policy.

Lest the Marrakesh Treaty be a one-time in terms of internationally-accepted limitations to copyright, the IFLA is working on a , to establish ※a binding international instrument on copyright limitations and exceptions to enable libraries to preserve their collections, support education and research, and lend materials§.

Lastly, in keeping with the spirit of IGF, a panel titled, "" that "multistakeholderism" was the preferred approach to formulating internet copyright policy and frameworks going forward, despite drawbacks such as being potentially inefficient, time-consuming, or inconclusive.

5. Say 斕疑?to 攸戒抑抗.?????(aka Internationalized Domain Names)!

In a palpable boost to principles of multilingual access and globalization of the Internet, CEO Fadi Chehad谷 revealed at the IGF 2013 opening ceremony, to rousing applause, that Arabic, Russian, and Chinese i were delegated to the Internet root for the first time. This means that one can now register websites ending in ※dot [insert Arabic, Cyrillic, or Chinese characters here]§, resulting in expanded online accessibility for those who use technology〞including keyboards〞exclusively in one of the three languages added. This will likely have an impact on trademark law in different parts of the world, in the context of branding and domain names, although trademark as managed by the (TMCH) currently provide for ASCII (English and Latin) characters alone.

Logging Out

As mentioned above, this was but a peephole into the ongoings of IGF 2013. Even live, it could only be experienced in self-tailored slices given how much was going on at any given moment. For those who are interested in learning more, are available on the IGF website and further comments and insights abound on the Twitter backchannel, not to mention the multitude of papers, articles, blog posts, updates, and analyses written throughout and in response to the forum. If we care about preserving, protecting, and bettering the Internet as we know it, the least we can do is start by getting to know it.

Cynthia Khoo is a JD Candidate at the University of Victoria. She is currently completing an exchange semester at the National University of Singapore, Faculty of Law.?

The post When the Internet Has a Party, Everyone's Invited: IP Law Issues at the Internet Governance Forum 2013 appeared first on IPOsgoode.

Background

This LRO by the Objector was one of 14 objections that have so far been decided by , all of which have been rejected. For further coverage of these 14 decisions, and the framework that WIPO and the?Internet Corporation for Assigned Names and Numbers () works within, see past IPilogue coverage .

The Parties

Afilias Limited (the?) is a domain holding and development?organization based in Ireland that owns and manages many other domains, including .info, .mobi and .org. The Panel decision shows that?their intent in applying for the .mls domain is to develop it into a worldwide domain for the listing of real estate properties.

The Canadian Real Estate Association of Ottawa (the?) is a Canadian not-for-profit trade organization?involved?in the management of real estate professionals in Canada. The Objector also possesses a certification mark for MLS, which its members use to brand real estate advertisements.

The Meaning of MLS

The letters "MLS" are??as an?abbreviation?for Multiple Listing Service; services used for displaying residential and commercial real estate properties for sale or lease. The Panel discussed the nature of the term, and its usage across English and non-English speaking countries both as a generic term for a collection of real estate listings, but also its other meanings.

The Decision

The??included two findings: first, a determination of whether the Objector has a legal right adequate for an LRO; and second, whether that legal right was?sufficient?to block the registration of .mls by the Applicant.

The adequacy of the Objector's legal right was brought up by the Applicant, who challenged the Objector's certification mark in "MLS" as insufficient for an LRO under the . The Panel found that under interpretation of the Guide Book, a?certification?mark is a sufficient right with which to challenge a gTLD registration. The Panel relied upon the fact that such marks, in addition to unregistered?trade-marks?are all sufficient for domain name?objections?under the?. The Panel also found there is nothing indicating the intention of ICANN to exclude these types of rights as insufficient for providing standing to launch an LRO.

Once the Panel established the Objector had?standing?to challenge the application, they considered the Objection. There were three key findings that caused the Panel to reject the LRO.

The Panel first discussed what level of infringement is?required?for a?successful?objection. Here they adopted the approach used in?, in which the Panel interpreted the Guide Book as?requiring?a high level of infringement to the point of "untoward impairment" of the Objector's rights, or something "intolerable" in allowing the gTLD registration. Many have seen this as an exceeding high level of?infringement, making it very difficult to raise a successful Objection.

Once this objectionable level of?infringement?was defined, the Panel considered if the infringement by the Applicant would rise to this level. Of key finding here was that the term "MLS" is widely considered a generic term, which would not qualify for trade-mark registration in many jurisdictions. Even in Canada, the Objector does not hold a trade-mark for the term, but a certification mark. The Panel also?found?that the Objector holds those rights only in Canada, and nowhere internationally where the term is used as a general term and not a trade-mark. While finding this, the Panel did acknowledge that the Objector does hold title to "MLS" in Canada, and that?impairment?of that mark?would?result from issuing the .mls domain to the Applicant. The Panel rejected, however, the objection as the?potential?infringement?failed to rise to the level adopted from?Right at Home.?

Commentary

Taken in context with the other 14 rejected LROs, this decision further bolsters future gTLD applicants in two ways. It first endorses the high bar for permissible infringement set out by?Right at Home, and second it?highlights?the difficulties any objector will have establishing an objection to the registration of a generic term when they possess a legal right in only limited jurisdictions. ?There is some good news for future Objectors?however, as the decision acknowledges both Certification Marks and Unregistered Marks as valid bases to propose an LROs. Given the exceedingly high allowance of ?permissible infringement, however,? it is difficult to see what will be required for a successful LRO. This paints an overall ominous future for other potential Objectors.

Alex Buonassisi is an IPilogue Editor and a JD Candidate at The University of British Columbia.

The post Canadian Objection to proposed .mls domain .rejected appeared first on IPOsgoode.

Background

The World Intellectual Property Organization () is a specialized UN agency focused on intellectual property. It operates an alternative dispute resolution () process for a variety of intellectual property disputes that may arise internationally, including disputes related to patents, copyrights, and trade-marks. WIPO also handles disputes related to the for the Internet Corporation for Assigned Names and Numbers (). ICANN is an American non-profit that manages IP addressing and domain name registration for the internet, essentially organizing every device and website that can be connected to over the internet. In 2011, ICANN decided to open up registration of new gTLDs. (More coverage by the IPilogue on this topic can be found , , , and .)

The Decisions So Far

For a successful LRO, the objector must prove on a balance of probabilities that the applied-for gTLD infringes an established legal right. (See the?, Module 3.5.2.) In doing so, there are two steps that need to be completed - first the objector must establish a legal right, and second the objector must demonstrate the proposed gTLD will infringe that right. Given the nature of domain names, trade-marks have been the only established rights currently used to challenge a proposed gTLD. The objections so far have been rejected for?either?failing to establish an existing right, or failing to demonstrate infringement of an established right.

Failing to Establish a Legal Right

These decisions involve a number of firms that seem to have applied for trade-mark registration for the purpose of objecting to gTLD applications, as in the case of? - an entity that objected to an application by a wholly-owned subsidiary of Google to register ".home". ,

※The attempted acquisition of trademark rights appears to have been undertaken to create a basis for filing the objection, or defending an application. There appears to have been no attempt to acquire rights in or use any marks until after the New gTLD Program had been announced.§

The US Postal Service (USPS) had a??when of .mail, as the USPS owns a trade-mark for "U.S. Mail", but not the word "mail". Some??these early decisions ruling there was no established right as bringing clarity and predictability to the process, while strongly rejecting any?perceived?abuses of the objection system.

Failing to Establish Infringement

The more controversial rejected objections have been those where the objector had a clearly established trade-mark, but failed to show the proposed gTLD would infringe their right. A legal analyst at Bloomberg?? and??as setting two precedents that will make it difficult to launch a successful trade-mark based LRO. the panelist in?Right at Home?sets an exceedingly high burden for demonstrating infringement that would justify an objection. It is also argued that?Express LLC reinforces that the registration of a mark for a common English word is?insufficient?to block a proposed gTLD. It is possible that these decisions and their subsequent endorsement make it almost impossible for an objector with a valid established right to successfully challenge a proposed gTLD.

Going Forward

If these legal commentators are correct, it will be all but impossible for mark holders to successfully challenge gTLD registrations. As a result, any further objections will have to be filed through the pre-existing Uniform Domain Name Dispute Resolution Policy on a domain-by-domain basis, where panelists will decide if a specific URL infringes a trade-mark. Given the good track record of success by many rights holders using this process, the same commentators??this will be the true mechanism for objectors to protect their intellectual property. Even with the complete shut-out of objectors, it is still too early to completely dismiss a successful LRO, and perhaps one of the outstanding 50 will set a precedent for what a?successful?LRO looks like.

Alex Buonassisi is an IPilogue Editor and a JD Candidate at Thompson Rivers University.

The post .shut-out for Legal Rights Objections in New gTLD Registrations appeared first on IPOsgoode.

-????????? The Public Citizen

Since the early days of the Internet, gripesites 每websites set up to criticize powerful institutions and individuals 每 have become a mainstay of online communication.? The Internet provides a lost-cost, readily accessible, global medium for those who seek to engage in such criticism.? The importance of low-cost speech forums can hardly be over-stated.? Particularly in countries where free speech is not constitutionally or governmentally guaranteed, the Internet provides a means for disgruntled and disenfranchised citizens to express their views often relying on the relative safety of an online cloak of anonymity.? While it is possible for free Internet speech to be abused through fraud, defamation and deceit, overall the importance of free speech cannot be discounted.? Generally, in a democratic society, it is better to encourage more speech, even if some of it is false and misleading, than to chill speech.

One of the key features of many gripesites is the use of a domain name that evokes or connotes the subject of the griping.? An example might be ※nikesucks.com§ for a website criticizing the Nike Corporation.? The domain name immediately labels the website as a gripesite by communicating to the audience that the subject of the griping is the Nike Corporation, and that something critical of the Nike Corporation is likely to be found on the website by the addition of the derogatory term ※sucks§.? There are many other ways to identify a gripesite, including relying on search engines to pick up website content about the subject matter.? However, typically search engine algorithms will prioritize websites with domain names that are relevant to a search query, so domain names remain important even in the age of sophisticated search engines.

This article considers the relevance of domain names to gripesites, with particular emphasis on the impact of ICANN＊s[2] new gTLD[3] process, unveiled in early 2012.? It suggests that despite the importance of search engines as search tools to draw customers to gripesites, domain names nevertheless retain an important place in this context.? The continuing importance of domain names for gripesites is evidenced by the fact that several applications were made to establish registries for proposed new ※.sucks§ and ※.gripe§ gTLDs in the first round of applications under the new gTLD process.

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(To those unfamiliar with the Internet Corporation for Assigned Names and Numbers (ICANN), their meeting structure, and the goals of the organization, a fellow IPilogue writer has written a covering this.)

This article takes an inquisitive approach to the content of three important sessions that were held during the Toronto ICANN meeting. Below you will find a summary of the important points that were laid down during each of the presentations, the questions that were asked by members of the IP and tech community, and a discussion of the challenges that ICANN will have to resolve before the new gTLD (generic Top Level Domain) program is fully rolled out.

The Trade-mark Clearinghouse (TMCH) has been developed by ICANN as a that will be used for gLTD registrations. It has been envisioned as a ※one-stop-shop§ for trade-mark data and as such will have several important functions, specifically: to perform verification of trade-marks, to maintain a database of this information, and to support rights protection mechanisms of new gTLDs. On June 1^st, 2012, ICANN that they would be working with Deloitte and IBM (which in turn subcontracted IPClearingHouse) to provide the TMCH services in support of the new gTLDs.

A representative from Deloitte made a presentation concerning the implementation of the TMCH. The following is a quick break-down of the main topics discussed within the presentation:

• To be eligible for registration with the TMCH, one has to be an agent of a mark holder or be the mark holder themselves. However, only the holders of certain marks can register (for example, marks containing a ※.§ are ineligible to register). Submissions would have to include appropriate proof of use of the mark in order to be eligible.
• The domain name applied for must be identical to the textual elements of the trade-mark. With the exception of ※@§ and ※&§ that have been permitted to be spelled out in text, other special characters need to be omitted or replaced with a hyphen.
• In aiding the dispute resolution process, the TMCH will provide notices to registrants and mark holders when discrepancies in applications arise. There are 3 ways in which disputes can arise: 1. The applicant does not agree with the verification; 2. A 3^rd party does not agree with the verification; or 3. A 3^rd party has become aware of new info that will impact a valid trade-mark record.
• Lastly covered in the presentation was a demonstration of the working .

However, an important objective of ICANN is to generate community discussion and incorporate suggestions from the different groups involved in the process. The most important issues that came up during this period were: 1) What stops a fraudulent registration from occurring? 2) How can a trade-mark agent register on behalf of their clients and provide the mark holders access to while keeping information of other clients secret? and 3)?How would 3^rd parties even know about registration of certain marks in order to file a dispute?

With respect to the first?issue, the panelists stated that the process would not be completely automated and therefore some human element would be involved in fact-checking registrations. However, I would expect the potential number of trade-marks being registered would create a large quantity of work for TMCH verifiers should every case require this human element. The second?issue had been previously discussed and ICANN has been trying to implement a technical work-around to this problem. However, the panelists did not, in my opinion, have a good answer to the third?issue raised. In summary, they stated that individuals might stumble onto information which they know is incorrect and then file a dispute as a result. Given the number of trade-marks that will be involved in the system and the international nature of the TMCH, I don't think that this sequence of events would occur very often in practice.

In this session, much of the discussion centered on the ways in which the TMCH would be interacting with other groups during the sunrise and trade-mark claims processes.

In order to register during the sunrise period, ICANN has developed a model where public and private encryption keys are used to verify mark details. The TMCH (the asserter) will provide mark holders with a Signed Mark Data (SMD) file which has been digitally signed with a private key. The SMD is then forwarded to the applicable registry (the verifier) which has a public key. This public key will determine the validity of the digital signature but does not contain any important information (hence, being the ※public§ key). If the SMD is altered, modified, or signed by the incorrect private key, the public key will show that the info is unverified and action can be taken as necessary. One of the main benefits to this system is that verification of the initial trade-mark data need only be done by the TMCH once. As a result, the process is ※decoupled§ (there would be little to no reliance on the TMCH by the registries) which is one of the main goals for the process.

One of the attendees described the idea as ※lightning in a bottle§ and few clear issues with the process were brought up. However, it was suggested that if mark holders wanted to only use one SMD for all registries, those registries would have to determine the standard information needed to be included in the SMD file.

Concerning the trade-mark claims period, the spotlight was on the differences between a centralized and a decentralized model of the TMCH. The current ICANN model is a decentralized approach which has registries being provided with encrypted info, allowing greater decoupling of the entities but potentially putting the information at greater risk. The centralized model has the TMCH retaining all relevant info, making it slightly easier for them to control the flow of this information but increasing reliance of the registries on the TMCH as a result. While there is really no right or wrong answer to this question, different players in the process have different beliefs on how this should be approached. As an example, one panelist mentioned that as a representative of a registry, he would rather have a centralized model where less responsibility is placed on his shoulders. It is important to keep in mind that while mark data is public information as a part of its nature, the aggregate mark information could be viewed as very valuable, putting it at risk of potential data mining.

While it places a greater burden on the TMCH, I think the centralized model seems to be the direction ICANN needs to head towards. This model allows for greater flexibility in the future, providing better opportunities to expand and to alter their approach to registration and mark protection. As noted by one of the panelists at the conclusion of the session, it will be up to each business to decide whether or not to put their marks in the TMCH. By doing so, they will have to understand the risks involved as well as the benefits and evaluate if submitting to the TMCH is the correct decision for the business.

The last session that I will comment on concerned the URS process that ICANN has adopted to cheaply and efficiently resolve clear cut cases of registration abuse (such as cybersquatting). The National Arbitration FORUM, WIPO, and Brad Bertoglio (a legal process outsourcing expert) made presentations with respect to the URS process that was proposed to ICANN in the . While there was some disagreement between the presenters as to whether the pricing goals for this process could be met, all of them commented that there was still work needed to be done to flesh out the policy documents. It was also noted by WIPO and Mr. Bertoglio that we would have to automate the process as much as possible to arrive close to the suggested price point. WIPO presented a model () that would require supplemental fees in the case of contested disputes. This model could serve as an option to efficient and cheap resolution while still allowing for more complex matters to be determined appropriately.

Conclusion

ICANN has opened the floor to community discussion on many of these topics on their . It will be necessary for them to receive this feedback in order to consider all facets of implementation and the implications their actions will have on the players of the industry. Even though there has been a lot of progress with respect to the development of the Trade-mark Clearinghouse and the new gTLD system, ICANN and its partners still have a lot of work ahead of them if they want the launch of these initiatives to be as smooth as possible.

Adam Del Gobbo is a JD Candidate at Osgoode Hall Law School.

The post The Sun Sets on ICANN 45 - Reviewing the gTLD Implementation Plan appeared first on IPOsgoode.

Toronto is ground zero for these domain debates. It＊s where this week the international domain regulatory body, the (ICANN) applications for new generic top-level domains (gTLDs), which are the suffixes of internet addresses.

The conflicts at play are outlined in two recent ICANN-related conference panels on new generic top-level domains (gTLDs). was hosted by the (NCUC) subgroup of ICANN in the days leading up to the conference and was hosted at the conference proper this past Sunday and featured Michele Jourdan, the Manager of New gTLD Communications for ICANN.

The good news story

The ultimate goal of the new top-level domain process is to increase choice and competition in the world of websites. To a greater extent, that is the purpose of ICANN. They have occasionally been releasing handfuls of new ones, such as .biz and .info, but this new round represents a significant increase of nearly 2000 applications for new domains.

※It＊s interesting times ahead,§ said Jourdan during her presentation.

The new domains will allow a wider variety of characters outside the current ones, which are largely based on the American Standard Code for Information Interchange (ASCII) computer language, which is biased toward the Latin alphabet. New domains will be available in a much broader range of character sets 每 for example Chinese, Arabic and Cyrillic 每 so that top-level endings of the domains will now match the characters used in the first part of the URLs.

Freedom of expression concerns

Freedom of domain expression is a hot-button issue. ICANN＊s current process for domain applications includes a significant subjective component. After ICANN receives the application and processes it 每 they can at this point refuse the application based on their own, somewhat objective evaluation guidelines 每 the application information is posted online .

According to panelist , a professor at the Syracuse University School of Information Studies and a founder of the Internet Governance Project, there is a censoring impact of crowd-sourcing portions of the domain application approval process that can result in ?mob mentality.

※The implied standard here is, if enough people make enough noise, they can block an application for any reason. It doesn＊t have to be specified. It doesn＊t have to be illegal. It can simply be threatened by the fact that a lot of people don＊t like it. Now to people who believe in freedom of expression, that whole standard, the community veto standard is completely problematic. It＊s anti-freedom at its core.§

Protecting the public interest

In theory, the increase in the supply of domain endings should reduce the demand or for any certain or specific ones; an increase in options should reduce competition. But more domain suffixes may actually create more conflict between corporate and public interests. Rather than arguing over a single website URL, the fights will be over entire gTLD sections of the internet. The stakes with gTLDs are far higher than for individual sites within the .com or .ca pre-established gTLD.

The .patagonia tug of war is a good example. American retailer Patagonia Inc. has submitted an application for .patagonia, despite it also being the name of a region in South America straddling Argentina and Chile. Argentina＊s representative to ICANN has understandably objected to the application, about a region＊s rights to possession of their gTLD.

Panelist Philip Corwin, a lawyer from the , expressed anti-trust concerns about the ability of leading internet search providers and web giants like Google and Amazon to control a disproportionate amount of domain digital real estate.

In his oped for the Domain Name News, , Corwin outlines the danger of consolidating popular domain endings in the hands of a few.

※The bids by [Amazon and Google] to acquire new domain names such as ＆.book,＊ ＆.shop＊ and ＆.movie＊ renewed fears among competitors that a powerful few will dominate the Internet marketplace of the future＃If Internet users embrace the new domains, the companies that control them could bear considerable influence on Web traffic.§

Problematic governments

But corporations are not the only interest to balance. Governments can also act as roadblocks to increasing internet choice and competition. Some more restrictive governments may block certain top-level domains entirely, which can also be referred to as taking ※fragmentary§ or ※cessation§ actions.

Moreover, some governments struggle with the technical components of the international regulatory regime said panelist and ICANN board member .

※One of the big challenges is that today the processes that are in place in the intermediaries or in the platforms, the processes that are used by the governments, are usually not documented enough, transparent enough, accountable, and worst of all 每 or most important of all ?每 they are not well interoperable.§

But countries do not necessarily lag by choice. There is an historic socio-economic, linguistic and regional dimension to internet technology development. These biases continue to manifest in ICANN and its processes, for example, as previously mentioned in terms of the lack of alphabet character diversity. Similarly, the gTLD application regions of origins are telling. , of the 1930 applications received during the last application window, only 17 were from Africa and only 24 were from Latin America. Europe and North America submitted 675 and 911 respectively.

?

What it all means

There seems to be general consensus among the digital classes that ICANN has the authority to continue and develop norms for assigning internet names and numbers. Having one established internet regime, no matter how much room there may be for improvement, is helpful to provide a single, credible forum to debate these crucial contemporary issues. The next job is increasing the diversity of voices in that forum.

There is still much to be done by way of reducing the commercial biases of ICANN and its processes, as well as creating more objective and transparent processes. To paraphrase from Professor Mueller, if ICANN is going to have a bias, then let it be for liberal democratic principles.

?

Getting involved

Those interested in promoting the public interest of domain assignment can visit the NCUC .

The Noncommercial Users Constituency (NCUC) is the home for civil society organizations and individuals in the Internet Corporation for Assigned Names and Numbers (ICANN) Generic Names Supporting Organization (GNSO). The NCUC is a Constituency within the Noncommercial Stakeholder Group (NCSG) at ICANN. With real voting power in ICANN's policy making and Board selection, it develops and supports positions that favor noncommercial communication and activity on the Internet. The NCUC is open to noncommercial organizations and individuals involved in education, community networking, public policy advocacy, development, promotion of the arts, children's welfare, religion, consumer protection, scientific research, human rights and many other areas. I agree to advocate a non-commercial public-interest position.

Denise Brunsdon is a JD/MBA candidate at Western University.

The post ICANN See Some Problems: New Domains and Freedom of XXXpression appeared first on IPOsgoode.

,?,??a??for stakeholder engagement along with his strategy and goals for what he called the ※new season§ of ICANN. ?Officials?,??and??were also on hand to welcome delegates both to the conference and Toronto.

What is ICANN?

Very simply, the Internet Corporation for Assigned Names and Numbers () is part of an ※ecosystem§ of organizations that collectively work to provide governance to the Internet.

Like the??itself, this ecosystem is decentralized and international.? No one person or organization governs the Internet.? Instead, governance is performed by a??network of interconnected groups which draw from civil society, the private sector, governments, academic and research communities, and national and international organizations. Other major organizations that are part of this ecosystem include?,?,?,?, the five?,?,?,?, and.

Together, these organizations aim to work cooperatively?within their respective roles to create shared policies and standards that maintain the Internet＊s global interoperability for .

Within this ecosystem, ICANN is responsible for coordinating the Internet's systems of unique identifiers and ※ensuring the systems＊ §.? In this role, it contributes to global Internet Policies which are the shared principles, norms, rules, decision-making procedures and programmes that shape the evolution of the Internet.? It also influences global Internet Standards which enable the interoperability of systems on the Internet by defining?,?,?, and?.

Like many internet governance organizations, ICANN takes a community- and consensus-driven, multi-stakeholder approach to its??and seeks to maintain a broad representation of the global online community.

What is ICANN 45?

ICANN45 is the third of three ICANN meetings held in 2012.? ICANN has generally held three??each year since 1999.??Attendance is open to the public and free to all registrants.? The??of these meetings is to provide an opportunity for ※an internationally diverse group of individuals and organizations to come together and discuss and develop policies for the Internet＊s naming systems§.? Remote participation is also available and also free to the public.

Re-Cap of The ICANN 45?Welcome Ceremony

, chairman of the?,?was the first to welcome?attendees to Toronto.? In his opening remarks he praised Canada＊s contribution to?the evolution of?global?.? He cited Canadian innovations such as (the world＊s first domestic satellite), (the Internet search engine), and the (the world's first public broadcaster to go online) as examples of Canadian contribution to global communication. ?Crocker also paid homage to University of Toronto＊s Dr. who coined the phrases ※§ and ※§ in the 1960s.? Two concepts, Crocker said, that continue to shape the way the online community about the Internet.

Crocker also provided an update on the activity of the board of directors, listing the renewal of the dot com registry in Prague and the passage of the budget as some recent milestones that were passed.

,??president and CEO,?was the second to welcome attendees to Toronto.? He briefly introduced ICANN President & CEO and highlighted the importance of the items on the agenda this week.

, president of the Canadian Treasury Board, was the last to welcome the members of ICANN to Toronto.? Speaking on behalf of the Canadian government, he gave a passionate endorsement of ICANN's multi-stakeholder model. ?He also outlined some of the steps the Canadian government has done to embrace online innovation in the public sector such as the government＊s?, a project that aims to make large amounts of government data available online, allowing citizens and researchers to analyze and combine data for various purposes.

Re-Cap of The President＊s Opening Session: A Bold New Vision

, current President & CEO of ICANN, then?took the stage?to run a one-hour working session on the objectives and goals for his three year term.? With the sudden , many in the online community have been to get a sense of the man who will be taking the helm of one of the web＊s largest policy and standards organizations.

In his opening remarks, Chehad谷 drew attention to?, the Pakastani schoolgirl who was??earlier this week presumably for her? promoting education for girls in Pakistan.

※I ask us all to keep her in our thoughts.? I, for sure, will offer my week, my successes, my failures, everything that happens this week, for her to be better and to get well.? But let＊s not forget that this is why we do this.? At the end of the day this is why we do this.§

Chehad谷 then got down to business, unveiling 4 objectives of the ICANN executive team, drawing attention to ICANN＊s?. He then outlined 16 specific goals the executive team has set to help achieve those objectives. ?The objectives and goals are as follows:

1. To continue to affirm the purpose of ICANN
   1. Deliver core Internet functions
   2. Act as steward of?public interest
   3. Engage in the Internet Governance ecosystem
   4. Deepen partnerships with Internet-organizations
2. To Continue to improve operations of ICANN
   1. Institutionalize management disciplines
   2. Embrace mature organization support functions
   3. Optimize R&R services
   4. Plan for scale, security, and continuity
3. To Continue to Internationalize ICANN
   1. Engage all stakeholders globally
   2. Communicate clearly & locally
   3. Integrate global/regional responsibility
   4. Evolve government relationships
4. To Continue To Model Evolution
1. Optimize policy develop process
2. Increase/ improve participation
3. Evolve supporting organization/advisory committee structures
4. Promote ethics & transparency

Release of MyICANN.org

Chehad谷 then unveiled , a new online tool designed to provide better access to the ICANN community and its operation systems. ?will be deployed in phases. The first phase will comprise mainly of the informational portal offering personal delivery of topical and timely information. Later phases will include the new community collaboration tools for working groups and operations systems, such as trouble tickets or compliance scorecards. The next beta will be released next year at ICANN 46 in Beijing.

Canadian Significance

In this seminal work, , Dr. McLuhan wrote that ※each medium, independent of the content it mediates, has its own intrinsic effects which are its unique message§ (Understanding Media, NY, 1964, p8). ? Certainly ICANN, minder of the Internet's unique identifiers,?is no stranger to this concept. As has already been pointed out by on this blog, the introduction gTLDs as a medium is as as the content of the websites that will be using them.

So as the leaves turn red in Toronto, the online community will be? to see what this new season at ICANN will bring.

Beatrice Sze is a JD Candidate at Osgoode Hall Law School.

The post "It's a New Season at ICANN": Chehad谷 to Focus on Public Interest, Internationalization, and Operational Efficiency appeared first on IPOsgoode.