Just to followup on my own post, one of the immediate benefits of auctioning off the "sunrise slots" (or setting a high price of $50,000+ for that privilege) is that the "proof of use" requirement for the TMCH (a high administrative cost for all TMCH applicants) is essentially eliminated for all but those obtaining the sunrise privilege. This elimination of the proof of use would likely then LOWER the operational costs of the TMCH substantially for the 95% of TMCH recordals that aren't using the sunrise system. Those savings can be passed along as lower costs for TMCH applicants. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Thu, Feb 2, 2017 at 12:23 PM, George Kirikos <icann@leap.com> wrote:
I think I might have posted a link to this article before, but it makes sense to post it again:
http://www.fr.com/news/dont-be-confused-about-whether-your-trademark-is-used...
regarding bona fide use vs. "de minimis" uses. As the article correctly states "Plainly, mere token use made solely to reserve a right in a mark can no longer meet the statutory definition."
If one thinks about the economics, suppose a TM has a value of $X, and the value of a sunrise registration of a domain name has a value of $Y. The "gaming" we are seeing, in this framework, happens when very marginal trademarks (i.e. X is close to zero) are used to obtain domain names in sunrise periods, where Y is (much) greater than X.
Indeed, the trademark registrations exist not for protection of commerce in an ordinary trade, but instead solely for the purpose of obtaining the more valuable domain names.
The only way to remove these incentives to game the system is to set the bar high enough so that only marks with "high" values of X are allowed to participate in the sunrise periods (low values of X could still participate in other aspects of the TMCH, e.g. getting notification of domains that match those marks, etc.).
How do we know which marks have "high" values of X? We can see "obvious" ones like Apple, Google, Microsoft, Lego, Verizon, Yahoo, Adobe, Disney, etc., but where does one draw the line between them and the marginal marks, etc.? Economics tells us there is one way --- set a price, or have the market set that price.
If one sets the price high enough (say $50,000+), that wouldn't deter the "superbrands" like those mentioned above, but it would price out the marginal ones. Of course, every owner of a "marginal" brand likes to think of their own mark as a "superbrand" in their eyes (i.e. some in the IP community cling to the mantra of "a trademark is a trademark is a trademark", as if their marks are as strong or as valuable as the superbrands above).
The other option is to have the market set a price, via some auction mechanism. In order to protect the brands most subject to cybersquatting, sunrise "privileges" were granted by ICANN (although these privileges do NOT exist in trademark law, requiring first dibs, etc.; TM law provides curative measures, not prior restraint). A quota can be set, perhaps 500 or 1000 marks in total that are protected with sunrise privileges (in line with the typical number of sunrise registrations we've observed). The TMCH (or ICANN) could then auction off those slots. Companies that experience a lot of cybersquatting (and would want sunrise protection, to reduce future UDRP/URS or other legal costs) and that have a high value of X would bid high enough to obtain that privilege. Companies that don't experience a lot of cybersquatting wouldn't value that sunrise privilege, and thus wouldn't bid (or would bid a lower amount).
Importantly, marginal TM holders (low values of X) that game the existing system would be priced out under either of the options above --- the economics of their behaviour have been ruined.
In conclusion, one really needs to think about the economics, and using the market mechanism to drive out the unwanted behaviour. Bad actors are usually rational, and are driven by economics. It's time that policy designers (us!) take these economics explicitly into account.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Thu, Feb 2, 2017 at 11:21 AM, Scott Austin <SAustin@vlplawgroup.com> wrote:
+1. As if recent events involving Pakistan based filings were not enough to signal a need for reform. Scott
-------- Original Message -------- From: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg@icann.org> Date: Thu, Feb 2, 2017, 11:10 AM To: Jonathan Frost <jonathan@get.club> CC: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: 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-s...
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: jonathan@get.club
Website: www.get.club
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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
I’m tempted to say that is one of *** craziest things I’ve 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
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"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-...
The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The”
February 1, 2017 by Michael Berkens 5 Comments
The Trademark ClearingHouse (TMCH) 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 word”the”, which is the most used word in the English language.
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 gTLD’s 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 doesn’t 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
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