Owners of valid trademarks come in all sizes, and they can't be shut out of the system. We should not disadvantage smaller companies, or companies from developing nations where the value of a dollar or euro is vastly different than in highly developed economies. This seems more like another attempt to relieve trademark owners of their money, in larger and larger piles. Rather than being elegant, it's rather brutal. Deterring cybersquatting has a value both to the companies and a larger social value, and should be encouraged. It's simply incorrect to say that only the biggest companies have a real problem with cybersquatting. I have had a number of smaller clients (some very small) with cybersquatting problems, some of which were linked to phishing, spearphishing, attempted theft, etc. Pricing should go in the other direction (down), regardless of whether it is used for sunrise purposes or only for claims. The TMCH needs to promote inclusion, not exclusion, of brandowners of all sizes. Greg On Thu, Feb 2, 2017 at 12:45 PM, George Kirikos <icann@leap.com> wrote:
Marc: That's the elegance of the "market" mechanism --- no one has to agree to some "valuation" of the trademarks --- by setting an explicit price to the sunrise privilege (i.e. instead of that privilege costing merely $300 or whatever the TMCH fees are, it would be much higher), be design only the high value trademark owners would be prepared to pay that price, to deter cybersquatting.
One can't protect all trademarks from cybersquatting, nor can one protect all domain names during sunrise from being misappropriated or misallocated through misuse of marginal trademarks. By setting an appropriate price, a better balance is achieved than exists now.
"I don’t think your proposed auction system would be fair or practical for that matter and would create a system where only the biggest companies could protect their trademark rights in new gTLDS through the RPMs."
Life isn't "fair" -- some folks are wealthier than others. That will always be the case, in a capitalist society.
Furthermore, it's only the "biggest companies" that have a real problem with cybersquatting, in terms of economic costs. If 90% of the abuse happens with a relatively small proportion of markholders, the system should be targeted to where that abuse is actually happening, and filter it by the economic size (through an explicit price).
Where ICANN has it wrong at present is trying to design a "one size fits all" solution --- that left it wide open for gaming, where the marginal trademark registrations are being abused.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Thu, Feb 2, 2017 at 12:31 PM, <trachtenbergm@gtlaw.com> wrote:
George,
First of all, the article only discusses US trademark law. Trademark law is different in every country and in many countries use is not required, at least for registration.
With respect to you argument for setting a value on the trademark, how could anyone ever agree on the value of a mark, especially as the value might be different in different countries since trademark rights are territorial. I don’t think your proposed auction system would be fair or practical for that matter and would create a system where only the biggest companies could protect their trademark rights in new gTLDS through the RPMs.
Best regards,
Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com | www.gtlaw.com
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 11:24 AM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog
I think I might have posted a link to this article before, but it makes sense to post it again:
https://urldefense.proofpoint.com/v2/url?u=http-3A__www.fr. com_news_dont-2Dbe-2Dconfused-2Dabout-2Dwhether-2Dyour- 2Dtrademark-2Dis-2Dused_&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT- UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=4PK5UuYljzArBjy5tIDLovRAhINmtm r4XXMj97J-0WQ&s=hdnKxcys8EdogaH3c0lDkr6q5WqxtKOnSwHCT8dqeek&e=
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 https://urldefense.proofpoint.com/v2/url?u=http-3A__www. leap.com_&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT- UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=4PK5UuYljzArBjy5tIDLovRAhINmtm r4XXMj97J-0WQ&s=vtt5wji_N4uRw7Cx_7ARATR_dMaQYhTAGMHfczMY7gE&e=
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 .https://urldefense.proofpoint.com/v2/url?u=http-3A__domainnamewire.co m_2014_02_10_how-2Dcommon-2Dwords-2Dlike-2Dpizza-2Dmoney-2Dand-2Dshopp ing-2Dended-2Dup-2Din-2Dthe-2Dtrademark-2Dclearinghouse-2Dfor-2Dnew-2D tlds_&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt 7T1dG3NjBzCxm1c&m=4PK5UuYljzArBjy5tIDLovRAhINmtmr4XXMj97J-0WQ&s=gUS0Y1 qs0uQa-4UaqMZLVNrNDRB6CRaIHhnqaWFqBBA&e=
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
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://urldefense.proofpoint.com/v2/url?u=https-3A__www.thedomains.co m_2017_02_01_the-2Dtrademark-2Dclearinghouse-2Dworked-2Dso-2Dwell-2Don e-2Dcompany-2Dgot-2D24-2Dnew-2Dgtld-2Dusing-2Dthe-2Dfamous-2Dtrademark -2Dthe_&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrK Xt7T1dG3NjBzCxm1c&m=4PK5UuYljzArBjy5tIDLovRAhINmtmr4XXMj97J-0WQ&s=vS2e lEVmYi7ll3ryRYD15NBBzmsoyn2kruUg-iqKUPU&e=
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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