Some reactive personal observations:

· Even TM+50 requires the TM owner to pay a separate TMCH registration fee for each registered term that was previously recovered in a UDRP or a judicial action. At $150 each, registration of each of the 474 domains suspended by this URS would have cost $71,100 – which is a pretty steep price to pay for the dubious benefits of a sunrise registration (more expense, although not so much at the particular registry involved in this case) and the generation of a claims notice.

· IMHO, receipt of a claims notice is unlikely to stop a determined cybersquatter from completing an infringing domain registration.

· The complainant was able to identify and proceed against all these domains absent receipt of a notice from the TMCH of the registrations, probably by using a commercial monitoring service at far lower cost than registering the 474 domain names in the TMCH.

· Generation of a claims notice whenever a TM+something appears in a domain name, and not just when there is an exact match, would be a very substantial change in the claims notice procedure and goes beyond previous suggestions that a TM+keyword should be able to be registered in the TMCH. All such suggestions are of course open for consideration and debate when we reach the appropriate point in our work, but IMHO this one should be considered in the context of our finding that receipt of a claims notice results in registration abandonment in 94% of instances.

Philip S. Corwin, Founding Principal

Virtualaw LLC

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Suite 1050

Washington, DC 20004

202-559-8597/Direct

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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 Greg Shatan
Sent: Tuesday, January 03, 2017 2:34 PM
To: jonathan matkowsky
Cc: Zahid Jamil-IG via gnso-rpm-wg
Subject: Re: [gnso-rpm-wg] Largest URS Filing/Decision in History

As to whether something is "working", it's probably dangerous to extrapolate from a sample of 1. I don't think this shows much, other than that the URS worked in this instance. It would be interesting to know more about how the claimant felt this worked (and as Jon points out, why they chose URS over UDRP).

From the point of view of this group, an interesting aspect of the case is that all 474 domain names were registered in .xyz.

This type of wholesale registration may indicate that the Claims Notices are not working. It's likely that the registrant received few if any claims notices since their domains are almost all "mark+" domains. It would probably make more sense for Claims Notices to go out whenever the registered string appears in the domain string, not only when the registered string matches the domain string.

It's also interesting to think about what would happen if the claimant here wanted to initiate a PDDRP against .xyz. While 474 domains is huge in the context of a single URS proceeding, it's a drop in the bucket compared to the 6 million (and dropping) domains registered in .xyz. Is 474 domains enough to file a PDDRP claim? Enough to win? What else would be needed, if this is not enough to win (or to file)?

Greg

On Tue, Jan 3, 2017 at 2:16 PM, jonathan matkowsky <jonathan.matkowsky@riskiq.net> wrote:

I totally agree. The blog post was interesting read, but really is a distraction from the issues.

jonathan matkowsky,

vp – ip & brand security

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11/1 nachal chever, modiin israel

On Tue, Jan 3, 2017 at 9:12 PM, <trachtenbergm@gtlaw.com> wrote:

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