+1. Marie From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Pascal Böhner Sent: jeudi 2 février 2017 17:23 To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] TMCH Blog Thats an interesting discussion as it brings us, again, to the question what the role of the TMCH is. Are they to decide on the requirements for protection of the mark? I dont think so. If you are able to register the mark THE somewhere (in line with the requirements of that jurisdiction) the TMCH has to accept protection of that mark. They should an can not supervise TM offices. If someone else is of the opinion that the mark shall not exist, it is the mark to be challenged. The only role I see for the TMCH is to provide mechanisms for treating challenged or cancelled marks, or maybe even its own challenge mechanism (where the TMCH still should not decide on registrability of a mark). Best regards Pascal Böhner Rechtsanwalt Fachanwalt für gewerblichen Rechtsschutz BARDEHLE PAGENBERG Pascal Böhner Prinzregentenplatz 7 81675 München T +49.(0)89.928 05-0 F +49.(0)89.928 05-444 pascal.boehner@bardehle.de | <http://www.bardehle.com/de/team/detail/p/boehner-pascal-1/vcard.vcf> vCard | <http://www.bardehle.com/de/team/detail/person/boehner-pascal-1.html> Profile www.bardehle.com BARDEHLE PAGENBERG Partnerschaft mbB Patentanwälte Rechtsanwälte Amtsgericht München Partnerschaftsregister 1152 "Law Firm of the Year" 2016 for Intellectual Property Law named by Best Lawyers® and Handelsblatt "TOP-KANZLEI Patentrecht 2015" awarded by WirtschaftsWoche Von: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] Im Auftrag von J. Scott Evans via gnso-rpm-wg Gesendet: Donnerstag, 2. Februar 2017 17:10 An: Jonathan Frost <jonathan@get.club> Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org> Betreff: Re: [gnso-rpm-wg] TMCH Blog In most jurisdictions in the world you can obtain a valid and enforceable trademark registration with no demonstration of use. If the system is being abused, then we need to put the n fail safes. We could have a challenge mechanism. In the US, which requires "use", token (fake use) is not deemed sufficient. Sent from my iPhone On Feb 2, 2017, at 8:03 AM, Jonathan Frost <jonathan@get.club> wrote: These TMCH gaming issues have been well documented all the way back to 2014 . <http://domainnamewire.com/2014/02/10/how-common-words-like-pizza-money-and- shopping-ended-up-in-the-trademark-clearinghouse-for-new-tlds/> http://domainnamewire.com/2014/02/10/how-common-words-like-pizza-money-and-s hopping-ended-up-in-the-trademark-clearinghouse-for-new-tlds/ Gaming the TMCH is as easy as starting an ecommerce store on a template and selling various products like t-shirts and pens with the arbitrary use of a common/valuable term (e.g.. pizza pen shop). This allows registration of the trademark for the term in any number of jurisdictions and subsequent registration in the TMCH. Jonathan Frost General Counsel Telephone: (+1)877-707-5752 100 SE 3rd Avenue, #1310 Fort Lauderdale, FL 33394 E-Mail: <mailto:jonathan@get.club> jonathan@get.club Website: <http://www.get.club/> www.get.club <https://app.getsignals.com/link?url=http%3a%2f%2fwww.nic.club%2f&ukey=agxzf nNpZ25hbHNjcnhyGAsSC1VzZXJQcm9maWxlGICAgMCxgJ8KDA&k=00a65763b45344369d292997 60b3ae45> <image002.jpg> Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at <mailto:jonathan@get.club> jonathan@get.club and delete the original message. From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Thursday, February 2, 2017 9:13 AM To: Jon Nevett <jon@donuts.email>; gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH Blog Im tempted to say that is one of *** craziest things Ive ever seen, but if I use *** word *** I might be cited for infringement or have to pay a licensing fee ;-) Seriously, it would be interesting to know in what jurisdiction the trademark was granted in and whether they professed to demonstrate use in commerce. Also seems to be an example of a situation where everyone in general but no one in particular has an incentive to challenge the acceptance of the mark by the TMCH. Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jon Nevett Sent: Thursday, February 02, 2017 8:55 AM To: gnso-rpm-wg Subject: [gnso-rpm-wg] TMCH Blog FYI -- for those who haven't seen this blog: https://www.thedomains.com/2017/02/01/the-trademark-clearinghouse-worked-so- well-one-company-got-24-new-gtld-using-the-famous-trademark-the/ The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark The February 1, 2017 by Michael Berkens <https://www.thedomains.com/author/michael-berkens/> 5 Comments <https://www.thedomains.com/2017/02/01/the-trademark-clearinghouse-worked-so -well-one-company-got-24-new-gtld-using-the-famous-trademark-the/#comments> The Trademark ClearingHouse (TMCH) <http://www.trademark-clearinghouse.com/> which was set up/ contracted by ICANN to protect those famous worldwide brand names from abuse by those nasty domain name squatters resulted in a whole new industry. Those playing the TMCH for their own benefit to get first jump at new gTLD domain names to get registered in Sunrise ahead of all other under common words like the Actually there maybe no better example than those domain names obtained on the world-famous trademarks as of the wordthe, which is the most used word in the English language <https://en.wikipedia.org/wiki/Most_common_words_in_English> . The world-famous trademark for the word the was obtained by Goallover Limited of London who according to DomainTools.com owns an amazing amount of domain names approaching nearly 100, but was able to get all of the following new gTLDs using their globally well-known trademark on the word the under the ICANN trademark clearinghouse rules which allows them to obtain the domain names ahead of all other applicants. Of course the company could have had obtained even more the new gTLD domain names in Sunrise but apparently did not apply for more. Somehow the company doesnt appear to own the domain name The.Com For all Trademark Holders its nice to know the world is a safer place: the.car the.career the.cars the.casino the.doctor the.earth the.foundation the.furniture the.game the.group the.ltd the.mba the.pub the.report the.run the.school the.services the.storage the.tools the.university the.watch the.wine _____ No virus found in this message. Checked by AVG - www.avg.com <http://www.avg.com/email-signature> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _____ Important: The information contained in this communication is attorney-client-privileged and confidential information intended only for the use of the individual or entity named above. 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