Claims UDRP has cost over $360 million so far

Trademark owners have splashed out over $360 million on UDRP cases over the 20 years the policy has been active, according to an intellectual property trade group.
Marques, a European body representing trademark owners, reckons $360 million is a “conservative” estimate.
It reached the figure by multiplying the number of UDRP complaints filed to the end of 2018 — 72,038 — by the $5,000 estimated total cost of each complaint.
The World Intellectual Property Organization, which handles well over half of all UDRP cases, charges at least $1,500 per case, but trademark owners have other fees, such as paying lawyers to draft the complaints.
WIPO, which basically designed and wrote the UDRP back in 1998, has been paid at least $63.8 million in filing fees to date, Marques calculates.
Across all UDRP providers, well over 100,000 individual domain names have been subject to UDRP. It’s likely much more, but the National Arbitration Forum does not publish data on unique domains.
The Marques claims were made in a letter (pdf) from council member (and Com Laude managing director) Nick Wood to ICANN last week, part of IP lobbying efforts in the face of UDRP reform efforts. He wrote:

This lowest-case estimate of $360m is a very significant financial burden. Registrants, on the other hand, pay only for their own defence, if any. They do not pay damages, or even contribute to the provider fees, if they lose – which across the five active panel providers appears to be majority of the time.

One proposal that has been put forward by IP owners is for registrants to pay a $500 fee when they are hit by a UDRP complaint, which would be refundable if they prevail.
I can see this idea going down like a cup of iced sick in the domainer community.
Rather than lobbying for any specific proposal, however, Marques is asking ICANN to create an “independent expert group” outside of the usual Policy Development Process, to highlight “priority issues and possible solutions” for the PDP to consider.
Marques thinks the group should comprise a small number of trademark interests, registries and registrars, and registrant rights groups. It wants WIPO to chair it.
It also wants ICANN to coordinate UDRP providers in the creation of a unified set of data on UDRP cases processed to date, to help with future reform discussions.
ICANN community volunteers have been working on the “PDP Review of All Rights Protection Mechanisms in All gTLDs” — the RPM WG — since March 2016.
The RPM WG expects to put out its “Phase One” initial report, comprising recommendations for reform of the Trademark Clearinghouse, Trademark Claims and Sunrise policies, in early June this year.
Only then will it turns its attention to UDRP, in “Phase Two”, with talks due to begin at the ICANN 65 meeting in Marrakech later that month.
The working group has been beset by all kinds of personal drama among volunteers recently, which continues to add friction to discussions.

Cybersquatting cases up because of .com

The World Intellectual Property Organization handled cybersquatting cases covering almost a thousand extra domain names in 2017 over the previous year, but almost all of the growth came from complaints about .com names, according to the latest WIPO stats.
There were 3,074 UDRP cases filed with WIPO in 2017, up about 1.2% from the 3,036 cases heard in 2016, WIPO said in its annual roundup last week.
That’s slower growth than 2016, which saw a 10% increase in cases over the previous year.
But the number domains complained about in UDRP was up more sharply — 6,370 domains versus 5,374 in 2016.

WIPO said that 12% of its 2017 cases covered domains registered in new gTLDs, down from 16% in 2016.
If you drill into its numbers, you see that 3,997 .com domains were complained about in 2017, up by 862 domains or 27% from the 3,135 seen in 2016.
.com accounted for 66% of UDRP’d domains in 2016 and 70% in 2017. The top four domains in WIPO’s table are all legacy gTLDs.
As usual when looking at stats for basically anything in the domain business in the last few years, the tumescent rise and meteoric fall of .xyz and .top have a lot to say about the numbers.
In 2016, they accounted for 321 and 153 of WIPO’s UDRP domains respectively, but they were down to 66 and 24 domains in 2017.
Instead, three Radix TLDs — .store, .site and .online — took the honors as the most complained-about new gTLDs, with 98, 79, and 74 domains respectively. Each of those three TLDs saw dozens more complained-about domains in 2017 than in 2016.
As usual, interpreting WIPO’s annual numbers requires caution for a number of reasons, among them: WIPO is not the only dispute resolution provider to handle UDRP cases, rises and falls in UDRP filings do not necessarily equate to rises and falls in cybersquatting, and comparisons between .com and new gTLDs do not take into account that new gTLDs also have the URS as an alternative dispute mechanism.

Panel doesn’t consider TLD in the first-ever new gTLD UDRP case

The first new gTLD domain name has been lost to a UDRP complaint.
The famous German bike maker Canyon Bicycles won canyon.bike from a registrant who said he’d bought the name — and others — in order to protect the company from cybersquatters.
The panelist in the case, WIPO’s Andrew Lothian, declined to consider the fact that the TLD was related to Canyon’s business in making his decision. Finding confusing similarity, he wrote:

The Panel finds that, given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the Policy that would preclude such an approach. However, the Panel considers that it is not necessary to do so in the present case.

Canyon had argued that the fact that it’s a .bike domain reinforced the similarity between the domain and the mark, but it’s longstanding WIPO policy that the TLD is irrelevant when determining confusing similarity.
The domain was registered under Whois privacy but, when it was lifted, Canyon looked the registrant up on social media and discovered he was very familiar with the world of bikes.
The registrant told WIPO that he’s registered Canyon’s mark “with the best of intentions”.
Apparently, he’s registered more than one famous brand in a new gTLD in the belief that the existence of the program was not wildly known, in order to transfer the domains to the mark holders.
He claimed “that many companies have been content with his actions” according to the decision.
But the fact that he’d asked for money from Canyon was — of course — enough for Lothan to find bad faith.
He also chose to use the fact that the registrant had made no attempt to remove the default Go Daddy parking page — which the registrar monetizes with PPC — as further evidence of bad faith.
The domain is to be transferred.

Roussos loses last .music LRO

Constantine Roussos’ DotMusic Ltd has lost its seventh and final Legal Rights Objection against rival .music applicants.
In the decision in DotMusic Ltd v DotMusic Inc, published (pdf) this hour, WIPO panelist Mark Partridge ruled:

the Panel is compelled to conclude that the Objector lacks enforceable rights. The term “.music” (or “dotMusic”) would in the Panel’s opinion be recognized as a generic designation for a top-level domain name directed at or relating to music and music-related services. As a result, the Panel is of the opinion that the Objector cannot own trademark rights in the terms “.music” (or “dotMusic”) per se as a matter of law, even if it has developed awareness of that term as being associated with it as the name of an entity.

That’s roughly in keeping with the first six DotMusic decisions and a not remotely surprising result.
The objections phase for .music is not over yet, however. There are still seven Community Objections pending, most of them filed by American Association of Independent Music, which is affiliated with Roussos’ bid.
There’s also the possibility that DotMusic and/or .music LLC (which also has industry backing) could apply for a Community Priority Evaluation, which would kill off all rivals at a stroke.
I’ve yet to hear a convincing argument why either application could win a CPE, so my guess is that .music is, eventually, heading to auction.

.vip and .now clear objections

The latest batch of Legal Rights Objection results has seen two proposed new gTLDs — .vip and .now — emerge unscathed from the objections phase of the new gTLD program.
There are six applications for .vip and one of the applicants, I-Registry, had filed LROs against its competitors.
Starbucks (HK), a cable company rather than a coffee chain, had also filed LROs against each of its five rivals for .now.
With yesterday’s decisions, all 10 objections have now been rejected.
In the case of .vip, every applicant wants to run it as a generic term, but I-Registry had obtained a European trademark on its proposed brand.
But Starbucks’ .now was to be a dot-brand reflecting a pre-existing mark unrelated to domain names. WIPO panelists found that trademark did not trump the proposed generic use by other applicants, however.
Both strings will now head to contention resolution, where an auction seems the most likely way to decide the winners.

That’s all folks, no more LRO news

The results of Legal Rights Objections against new gTLD applications are no longer news.
That’s the decision handed down by the editor here at DI’s Global World International Headquarters today.
“Hey, Keith,” she barked from her ermine-carpeted corner office. “This LRO stuff is getting a bit old, don’t you think?”
“My name’s Kevin,” I said.
“Whatever,” she said. “LRO is now dog-bites-man. I decree it thus. No more of it, understand? Write more about Go Daddy girls.”
She has a point (she’s a great editor and I love her dearly).
The Legal Rights Objection has, I think, said pretty much everything it’s going to say in this new gTLD application round. I’m feeling pretty confident we can predict that all outstanding LROs will fail.
This prediction is based largely on the fact that the 69 LROs filed in this round all pretty much fall into three categories.

• Front-running. These are the cases where the objector is an applicant that secured a trademark on its chosen gTLD string, usually with the dot, just in order to game the LRO process. These have all been rejected so far. I thought Constantine Roussos’ .music objection was the only one with a sliver of a chance; now that it’s been rejected I think the chances of any outstanding objections of this type prevailing are zero.
• Brand v Brand. The objector may or may not be an applicant too, but both it and the respondent both own legit trademarks on the string in question. WIPO’s LRO panelists have made it clear, most recently yesterday in Merck v Merck (pdf) and Merck v Merck (pdf), that having a famous brand does not give you the right to block somebody else from owning a matching famous brand as a gTLD.
• Generic trademarks. Cases where an owner of a legit brand that matches a dictionary word files an objection against an applicant for the same string that proposes to use it in its generic sense. See Express v Donuts, for example. Panelists have found that unless there’s some nefarious intent by the applicant, the mandatory second-level rights protection mechanisms new gTLD registries must abide by are sufficient to protect trademark rights. As I don’t believe any applicants have a nefarious intent, I don’t believe any of these LROs will succeed.

In short, the LRO may be one of many deterrents to top-level cybersquatting, but has proven itself an essentially useless cash sink if you want to prevent the use of a trademark at the top level.
The impact of this, I believe, will be to give new gTLD consultants another excellent reason to push defensive gTLD applications on big brands in future new gTLD rounds.
Whether it will inspire unsavory types to apply for generic terms in future, in order to extort money from matching brands, will depend to a large extent on whether applicants in this round wind up making lucrative deals with the brands they’re competing against.
In any event, it seems certain that the LRO-to-application ratio will be far lower in future rounds.
DI will of course continue to peruse each new LRO as it is published and will report on any genuinely interesting developments, but we will not cover each decision as a matter of course.
Decisions are published by WIPO daily here and email notifications are sent along with WIPO’s daily UDRP newsletter.
Information about Go Daddy girls can, from now on, be found here.

DotMusic loses LRO, and four other cases rejected

Constantine Roussos has lost his first Legal Rights Objection over the flagship .music gTLD.
The case, DotMusic v Charleston Road Registry (pdf) was actually thrown out on a technicality — DotMusic didn’t present any evidence to show that it was the owner of the trademarks in question.
But the WIPO panelist handling the case made it pretty clear that DotMusic wouldn’t have won on the merits anyway.
If any applicant can be said to have built a brand around a proposed generic-term gTLD, it’s Roussos. DotMusic has been promoting .music on social media an in the music industry for years.
The company also owns the string “music” in a number of second-tier TLDs such as .co, .biz and .fm.
It’s not a bogus, last-minute attempt to game the system, like the .home cases — filed using Roussos-acquired trademarks — that have been thrown out repeatedly over the last couple of weeks.
The panelist addressed this directly:

On the one hand, the Panel recognizes that there has been a real investment by the Objector and associated parties in the trademark registrations, domain name registrations, sponsorship and branding to create consumer recognition and goodwill entitled to protection. On the other hand, there is a circularity in the Objector’s position in that the rights upon which the Objector relies to defeat the application are to a certain extent conditional on the defeat of the Applicant and the Objector’s success in obtaining the <.music> gTLD string.

In other words, Catch-22.
The panelist decided that .music is generic, that Google’s proposed use of it is generic, and that obtaining a trademark on a gTLD should not be a legit way to exclude rival applicants for that gTLD.

One objective of the Objector has been to obtain precisely the type of competitive advantage (in this case in the application process for the <.music> gTLD string) that the doctrine of generic names is designed to prevent. However, as the Applicant proposes to use the <.music> gTLD string in a generic sense it is immune from this challenge.

On that basis, the LRO would have failed, had DotMusic managed to demonstrate standing to object in the first place.
Unfortunately, DotMusic didn’t present any evidence that it actually owned the trademarks in question, which were applied for by Roussos and assigned to his company CGR E-Commerce.
The objection failed on that basis.
Defender Security, which obtained trademarks on “.home” from Roussos, ran into the same problems proving ownership of the trademarks in its LROs on the .home gTLD.
Four other LROs were decided this week:
.mail (United States Postal Service v. GMO Registry)
The case (pdf) turned on whether USPS owns a trademark that exactly matches the applied-for string (it doesn’t) and whether the word “mail” should be considered generic (it is) rather than a source identifier (it isn’t).
It’s pretty much the same logic applied in the two previous .mail LROs.
.food (Scripps Networks Interactive v. Dot Food, LLC)
This is the first of two competitive LROs filed by Scripps — which runs TV stations including the Food Network — against its .food applicant rivals to be decided.
Scripps has a bunch of trademarks containing the word “food”, including a November 2011 registration in the US for “Food” alone, covering entertainment services.
The WIPO panelist found (pdf) that the trademark was legit, but decided that it was not enough to prevent Dot Food using the matching string as a gTLD.
The fact that rights protection mechanisms exist in the new gTLD program was key:

to the extent that registration and use of a particular second-level domain within the <.food> gTLD actually creates a likelihood of confusion, then Objector will have remedies available to it, including the established Uniform Domain Name Dispute Resolution Policy, the forthcoming Uniform Rapid Suspension System and relevant laws. The fact that such disputes at the second level may arise is inherent in ICANN’s new gTLD program and is not in the circumstances of this case sufficient to uphold the present legal rights objection.
Objector’s rights in the FOOD mark do not confer upon it the exclusive right to use of the word “food” in all circumstances, particularly where, as here, Applicant intends to use the <.food> gTLD in connection with the food industry. Such intended use of the word would appear to be only for its dictionary meaning and not because of Objector’s trademark rights.

.vip (i-Registry v. Charleston Road Registry)
It’s the second objection by .vip applicant to get thrown out. In this case the respondent was Google.
Like the first time, the WIPO panelist found that the i-Registry trademark had been obtained for the purposes of the new gTLD program and that Google’s use of it in its generic sense would not infringe its rights.
.cam (AC Webconnecting Holding v. Dot Agency)
The second and final LRO decision (pdf) in the .cam contention set.
AC Webconnecting, an operator of webcam-based porn sites, lost again on the grounds that it applied for its trademark just a month before ICANN opened up the new gTLD application window in January last year.
The company didn’t have time to, and produced no evidence to suggest that, it had used the trademark and built up goodwill around “.cam” in the normal course of business.
In other words, front-running doesn’t pay.

Google beats USPS in LRO, Defender loses another

The United States Postal Service and Defender Security have both lost Legal Rights Objections over the new gTLDs .mail and .home, respectively.
In both cases it’s not the first LRO the objector has lost. USPS, losing here against Google, lost a similar objection against Amazon, while Defender has previously racked up six losses over .home.
The Defender case (pdf) this time was against .Home Registry Inc. The objection was rejected by the World Intellectual Property Organization panelist on pretty much the same grounds as the others — Defender acquired its trademark rights purely in order to be able to file LROs against its .home rivals.
In the USPS v Amazon case (pdf) the WIPO panelist also decided along the same lines as the previous case.
The decision turned on whether USPS, which owns trademarks on “U.S. Mail” but not “mail”, could be said to have rights in “mail” by virtue of the fact that it is the monopoly postal service in the US.
USPS argued that .mail is like .gov — internet users know a .gov domain is owned by the US government, so they’re likely to think .mail belongs to the official US mail service.
The panelist decided that users are more likely to associate the gTLD with email:

A consumer viewing the string <.mail> in the context of a domain name registration or an email address is presumably even more likely to think of the electronic (“email”) meaning, rather than the postal meaning, of the term “mail,”

WIPO has now decided 20 LRO cases. All have been rejected. Several more were terminated after the objector withdrew its objection.

Six more LROs kicked out, most for “front-running”

Six more new gTLD Legal Rights Objections, six more rejected objections.
The World Intellectual Property Organization is chewing through its caseload of LROs at a regular pace now, made all the more easier by the fact that a body of precedent is being accumulated.
Objections rejected in decisions published last week cover the gTLDs .home, .song, .yellowpages, .gmbh and .cam.
All but one were thrown out, with slightly different panelist reasoning, because they had engaged in some measure of “front-running” — applying for a trademark just in order to protect a gTLD application.
Here’s a quick summary of each decision, starting with what looks to be the most interesting:
.yellowpages (hibu (UK) v. Telstra)
Last week somebody asked me on Twitter which LROs I thought might actually succeed. I replied:

@ManagingIP Just based on the list of strings and objectors, only .delmonte, .merck and .yellowpages jump out at me.

— Kevin Murphy (@DomainIncite) July 23, 2013

Well, my initial hunch on .yellowpages was wrong, and I think I’m very likely to have been wrong about the other two also.
This case is interesting because it specifically addresses the issue of two matching trademarks happily living side-by-side in the trademark world but clashing horribly in the unique gTLD space.
The objector in this case, hibu, publishes the Yellow Pages phone book in the UK and has a big portfolio of trademarks and case law protecting its brand. If anyone has rights, it’s these guys.
But the “Yellow Pages” brand is used in several countries by several companies. In the US, there’s some case law suggesting that the term is now generic, but that’s not the case in the UK or Australia.
On the receiving end of the objection was the Australian telecoms firm Telstra, which is the publisher of the Aussie version of the Yellow Pages and, luckily for it, the only applicant for .yellowpages.
The British company argued that “no party should be entitled to register the Applied-for gTLD”, due to the potential for confusion between the same brand being owned by different companies in different countries.
The panel concluded that brands will clash in the new gTLD space, and that that’s okay:

It is inherent in the nature of the gTLD regime that those applicants who are granted gTLDs will have first-level power extending throughout the Internet and across jurisdictions. The prospect of coincidence of brand names and a likelihood of confusion exists.
…
The critical issue in this LRO proceeding is whether the Objector’s territorial rights in the term “YELLOW PAGES” (and the prospect of other non-objecting third parties’ territorial right) means that the applicant (or anyone else for that matter) should not be entitled to the Applied-for gTLD.

The panelist uses the eight-criteria test in the Applicant Guidebook to make his decision, but he chose to highlight two words:

the Panel finds that the Objector has failed to establish, as it alleges, that the potential use of the Applied-for gTLD by the applicant… unjustifiably impairs the distinctive character or the reputation of the objector’s mark… or creates an impermissible likelihood of confusion between the applied for gTLD and the Objector’s mark.

Because Telstra has rights to “Yellow Pages” too, and because it’s promising to respect trademark rights at the second level, the panelist concluded that its application should be allowed to proceed.
It’s the third instance of a clash between rights holders in the LRO process and the third time that the WIPO panelist has adopted a laissez faire approach to new gTLDs.
And as I’ve said twice before, if this type of decision becomes the norm — and I think it will — we’re likely to see many more defensive applications for brand names in future new gTLD rounds.
The LRO is not shaping up to be an alternative to applying for a gTLD as a means to defend a legitimate brand. Applying for a gTLD matching your trademark and then fighting through the application process may turn out to be the only way to make sure nobody else gets that gTLD.
.cam (AC Webconnecting Holding v. United TLD Holdco)
Both sides of this case are applicants for .cam. United TLD is a Demand Media subsidiary while AC Webconnecting is a Netherlands-based operator of several webcam-based porn sites.
Like so many other applicants, AC Webconnecting applied for its European trademark registration for “.cam” and a matching logo in December 2011, just before the ICANN application window opened.
The panelist decided that its trademark was acquired in a bona fide fashion, he also decided that the company had not had enough time to build up a “distinctive character” or “reputation” of its marks.
That meant the Demand Media application could not be said to take “unfair advantage” of the marks. The panelist wrote:

Given the relatively short existence of these trademarks, it is unlikely that either [trademark] has developed a reputation.
…
In the Panel’s opinion, replication of a trademark does not, of itself, amount to taking unfair advantage of the trademark – something more is required.
…
the Panel considers that this something more in the present context needs to be along the lines of an act that has a commercial effect on a trademark which is undertaken in bad faith – such as free riding on the goodwill of the trademark, for commercial benefit, in a manner that is contrary to honest commercial practices.

What we’re seeing here is another example of a trademark front-runner losing, and of a panelist indicating that applicants need some kind of bad faith in order to lose and LRO.
.home (Defender Security Company v. DotHome Inc.)
Kicked out for the same reasons as the other Defender objections to rival .home — it was a transparent gaming attempt based on a flimsy, recently acquired trademark. See here and here.
DotHome Inc is the subsidiary Directi/Radix is using to apply for .home.
The decision (pdf) goes into a bit more detail than the other .home decisions we’ve seen to date, including information about how much Defender paid to acquire its trademarks ($75,000) and how many domains its bogus Go Daddy reseller site has sold (three).
.home (Defender Security Company v. Baxter Pike)
Ditto. This time the applicant was a Donuts subsidiary.
.song (DotMusic Limited v. Amazon)
Like the failed .home objections, the .song objection was based on a trademark acquired tactically in late 2012 by Constantine Roussos, whose company, CGR E-Commerce, is applying for .music.
This objection failed (pdf) for the same reasons as the same company’s objection to Amazon’s .tunes application failed last week — a trademark for “.SONG” is simply too generic and descriptive to give DotMusic exclusive rights to the matching gTLD.
Roussos has also filed seven LROs against his competitors for .music, none of which have yet been decided.
.gmbh (TLDDOT GmbH v. InterNetWire Web-Development)
Both objector and respondent here are applicants for .gmbh, which indicates limited liability companies in German-speaking countries.
TLDDOT registered its European trademark in “.gmbh” a few years ago.
Despite the fact that it was obviously acquired purely in order to secure the matching gTLD, the panelist in this case ruled that it was bona fide.
Despite this, the panelist concluded that for InternetWire to operate .gmbh in the generic, dictionary-word sense outlined in its application would not infringe these trademark rights.

LRO roundup: six more new gTLD objections rejected

While we were busy focusing on ICANN 47 last week, six new gTLD Legal Rights Objections were decided by the World Intellectual Property Organization.
These are the objections where the objector has trademark rights that it believes would be infringed by the delegation of a matching or confusingly similar gTLD.
All six cases, like the first six, were rejected for varying reasons. There has yet to be a decision in favor of an objector.
Here’s a rundown of the highlights of the decisions:
.home (Defender Security v Lifestyle Domain Holdings)
.home (Defender Security v Merchant Law Group)
.home (Defender Security v Uniregistry)
These cases are three of the nine filed by .home applicant Defender Security against its rival applicants. Defender had already lost one such objection, and these three were no different.
Defender acquired its trademarks and associated domains and companies from Constantine Roussos’ CGR E-Commerce shortly before the new gTLD application window opened.
The trademarks themselves, attached to hastily created Go Daddy reseller web sites, were obtained not much earlier.
Uniregistry, paraphrased by the WIPO panelist in its case, put the situation pretty close to the truth:

Objector is one of several parties who were solicited some months ago to purchase any of a number of cookie-cutter European trademark documents lacking any substantial basis in actual goodwill or commerce, which were filed solely to game this process, and do not reflect a bona fide acquisition of substantial rights.

The WIPO panelists did not disagree, with two of them finding that not only were the acquisition of trademark rights not bona fide, but also that there was a question as to whether Defender even owned the trademark.
One panelist wrote of “the misleading and sometimes deceptive presentation of the evidence in the Objection, and more generally the abusive nature of the Objection” and another said:

The [LRO] Procedure is not intended to provide a facility whereby existing or prospective applicants for a new gTLD may attempt to gain an advantage over other applicants for the same gTLD by way of the deliberate acquisition of trademark rights for no purpose other than to bring a Legal Rights Objection. It has not escaped the Panel’s notice that the evidence before it indicates that the present Objection might have been motivated by just such an attempt

All three cases were rejected largely on this basis.
The panelist in the Lifestyle Domain Holdings case decided that acquisition of the trademarks had in fact been bona fide, but rejected the objection anyway on the overall LRO test of whether the proposed gTLD would take “unfair advantage” of Defender’s trademark rights, stating:

If anyone has taken “unfair advantage,” it has been the Objector through its meritless Objection. The LRO process is not meant to be a game or crap shoot; rather, it should be invoked only when the applicant’s proposed string would “infringe” trademark rights. It is an abuse of the process to invoke an LRO against an applicant whose proposed use is clearly a fair use of a string for its descriptive meaning and not a use designed to “infringe” (that is, cause confusion as to source, authorization or affiliation). What is “unfair” here is that the Objector filed an Objection that is not only completely devoid of merit, causing the Respondent to waste time and effort defending its entirely appropriate application, but also full of misleading, deceptive, and demonstrably untrue statements and omissions

With the Roussos/Defender gaming strategy thus comprehensively trashed, I can only hope for Defender’s sake that there’s opportunity left for it to withdraw its remaining objections and ask for a refund.
.mail (United States Postal Service v Amazon)
Amazon is one of the many applicants for .mail, while USPS is the United States’ longstanding government-backed postal service and not an applicant.
USPS showed that it owned a wide array of trademarks that include the word “mail”, but not any for the word alone, and argued that internet users expect “mail” to mean the US mail.
Amazon said that the word is generic and that USPS is not the only organization to incorporate it in its trademarks.
Amazon said (ironically, given its intention to operate .mail as a closed generic) that USPS “improperly seeks to take the dictionary word ‘mail’ out of the English language for its exclusive use”.
The decision to reject the complaint hinged on whether USPS even has rights in .mail.
The WIPO panelist decided: “The fact that a nation’s postal system is vested by statute or otherwise associated with a single entity does not convert the generic term into a trademark.”
USPS has filed six more LROs against the other six .mail applicants, two of which have been terminated due to application withdrawals. We can only assume that the remaining four are also likely to fail.
.pin (Pinterest v Amazon)
Amazon is the only applicant for .pin. Again, it’s a closed generic for which the company has not explained its plans.
The objector, Pinterest, is a wildly popular photo-sharing service provider start-up, funded to the sum of $100 million by Amazon’s Japanese retail rival Rakuten.
It owns a US trademark for “Pinterest” and has applied for many more for “Pin” and “Pin It”.
The panelist, in ruling against Pinterest, decided that Pinterest, despite its popularity, failed to show that the dictionary word “pin” had acquired a secondary meaning beyond its usual descriptive sense.
.mls (Canadian Real Estate Association v. Afilias)
MLS, for readers based outside North America, means “multiple listing services”. It’s used by estate agents when aggregating lists of properties for sale.
The Canadian Real Estate Association — which has applied for .mls TWICE, one as a community once as a regular applicant — has owned a Canadian “certification mark” on the term “MLS” since 1960.
A substantial portion of the decision is devoted to examining whether this counts as a trademark for the purposes of an LRO, with the panelist deciding that “ownership of a certification trademark must confer the status of ‘rightsholder’.”
The case was therefore decided on the eight criteria specified for the LRO in the ICANN Applicant Guidebook. The panelist concluded:

The Panel cannot see the justification for refusing to allow the Applicant to operate in every country because the Objector has a certification mark for a generic term in Canada. Had the Objector’s certification been other than a generic term, its case might have been stronger but MLS it is a generic term used in English-speaking jurisdictions.

The decision cited the .rightathome case, in which the decision hinged on whether the new gTLD applicant had any nefarious intent in applying for the string in question.
A body of precedent seems to be emerging holding that a new gTLD application must be somewhat akin to a cybersquatting attempt in order for an objector to win.
While this may be fair, I think a likely impact is an increase in the number of dot-brand applications in future rounds, particularly in cases where the brand matches a dictionary word or collides with another trademark.
We’ve yet to see what a successful LRO looks like, but the standard appears to be high indeed.