Completely agree. Paul Keating
On 26 Sep 2016, at 9:28 PM, Salvador Camacho Hernández <salvadorcamachohernandez@gmail.com> wrote:
Hi Paul,
Sorry for the possible misunderstood on my comment. I agree with you on what you state about the "famous" trademark. Indeed the famous TM trascends the original and specific goods/services for which the TM was registered.
What I meant, it was that the recognition of that trascendence has to be issued by an jurisdictional authority on the matter (USPTO, IMPI, INAPI, etc) and not only based on what the rights holder believes.
Best,
Salvador.
2016-09-26 13:37 GMT-05:00 Paul@law.es ZIMBRA <paul@law.es>:
Salvador,
I would like to correct your statement.
A "famous" trademark is one that transcends the specific classes of goods/services for which it was originally registered so as to be a recognized source indicator for other unrelated goods/services. It may be so famous as to effectively preclude a third party from using the same mark on unrelated goods/services. Think NIKE registered for sports gear now being applied to cars or Catapillar (tractors) as applied to shoes, pants etc....
Paul Keating
On 26 Sep 2016, at 8:12 PM, Salvador Camacho Hernández <salvadorcamachohernandez@gmail.com> wrote:
Hello everybody,
I just want to say that according to Paris Convention a trademark become famous when it's recognized and determined as one from jurisdiction to jurisdiction and no when the rights holder believes or perceives it. Not even a Panelist in a UDRP/LDRP procedure could determine if the trademark is famous or not.
Best regards,
Salvador.
2016-09-26 13:00 GMT-05:00 Paul Keating <Paul@law.es>:
2 points awarded notwithstanding, I did use NIKE as a famous brand example. We cannot say that about every trademark that the rights holder perceives as “famous”.
From: <gnso-rpm-wg-bounces@icann.org> on behalf of Steve Levy <slevy@accentlawgroup.com> Date: Monday, September 26, 2016 at 7:24 PM To: Volker Greimann <vgreimann@key-systems.net>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] TMCH review objectives
Volker,
Having represented Nike in some of its anticybersquatting efforts, I wish I had an extra dollar for every time a domain owner instantly became a big fan of this Greek goddess when responding to my demand letter!
Steve
From: <gnso-rpm-wg-bounces@icann.org> on behalf of Volker Greimann <vgreimann@key-systems.net> Date: Monday, September 26, 2016 at 4:49 AM To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH review objectives
And even with this famous name, there is a wikipedia disambiguation page of over half a dozen other uses which may have something to do with this famous mark originally being the name of a Greek Goddess personifying victory. ;-)
Volker
Am 23.09.2016 um 17:53 schrieb Paul Keating: Steven,
With all due respect when will “protection” find its limits. Just because the right to use something is high does not equate with a denial of rights. Unless a domain name is subject to only one passible use (that of the brand owner) and no other uses, then it remains an asset of the registry to sell as it deems fit. If the brand owner – who is only one of a number of users – is unable to afford the price, such is life. AND when I say one possible use I really mean it. The name would not only have to be coined but famous. A coined term is one that was invented but history teaches that inventions are not unique. They are often repeated. A famous mark is one that transcends use and extents to completely unrelated commercial monetization. An example – one of the few I can think of - would be NIKE.
Lets stay focussed and reasonable please. Just because something is expensive does not equate to something that infringes.
Sincerely,
Paul Raynor Keating, Esq.
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From: <gnso-rpm-wg-bounces@icann.org> on behalf of Steve Levy <slevy@accentlawgroup.com> Date: Friday, September 23, 2016 at 5:40 PM To: Phil Corwin <psc@vlaw-dc.com>, Rebecca Tushnet <rlt26@law.georgetown.edu>, "Silver, Bradley" <Bradley.Silver@timewarner.com>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH review objectives
I’d also like to add my view that “protection” can take a number of different forms. Stopping someone from infringing upon one’s trademark is the most obvious one but protecting brand owners from having their trademarks held for ransom at an unreasonably high premium price is another. If, for example, [brand].TLD is priced at US$50000 as a premium domain it effectively prevents the brand owner from purchasing that domain and the website remains either non-resolved or perhaps as a registry advertisement. The public may then see this site and mistakenly believe that the brand owner has either gone out of business or is not devoting sufficient resources to promoting its brand online. Preventing this type of negative impact on the brand is another form of “protection”.
Regards, Steve
Steven M. Levy, Esq. Accent Law Group, Inc. 301 Fulton St. Philadelphia, PA 19147 United States Phone: +1-215-327-9094 Email: slevy@AccentLawGroup.com Website: www.AccentLawGroup.com LinkedIn: www.linkedin.com/in/stevelevy43a/ ________________________________________ Notice: This communication, including attachments, may contain information that is confidential and protected by the attorney/client or other privileges. It constitutes non-public information intended to be conveyed only to the designated recipient(s). If the reader or recipient of this communication is not the intended recipient, an employee or agent of the intended recipient who is responsible for delivering it to the intended recipient, or you believe that you have received this communication in error, please notify the sender immediately by return e-mail and promptly delete this e-mail, including attachments without reading or saving them in any manner. The unauthorized use, dissemination, distribution, or reproduction of this e-mail, including attachments, is prohibited and may be unlawful. Receipt by anyone other than the intended recipient(s) is not a waiver of any attorney/client or other privilege.
From: <gnso-rpm-wg-bounces@icann.org> on behalf of Phil Corwin <psc@vlaw-dc.com> Date: Friday, September 23, 2016 at 11:39 AM To: Rebecca Tushnet <rlt26@law.georgetown.edu>, "Silver, Bradley" <Bradley.Silver@timewarner.com>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH review objectives
I believe I just addressed that question in the email I posted – if unreasonably high sunrise pricing deters a rights holder from registering a domain corresponding to a verified TM registered in the TMCH then it may be registered in the general availability period by an infringer, which in turn imposes a variety of costs on the TM owner (including those of bringing a subsequent URS, UDRP, or judicial action) and also creates the possibility of confusion and harm for the general public.
This is not to say that all Premium pricing is unreasonable, as it is generally recognized that certain words and terms have inherent additional value in the DNS context – it really requires a case by case analysis.
Philip S. Corwin, Founding Principal
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From:gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Friday, September 23, 2016 11:10 AM To: Silver, Bradley; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] TMCH review objectives
TMCH’s goal of “protection” against what, though? How does high pricing contribute to trademark infringement? High pricing may deter purchases of domain names, no doubt, but with what result for the system overall?
Rebecca Tushnet
Georgetown Law
703 593 6759
From: Silver, Bradley [mailto:Bradley.Silver@timewarner.com] Sent: Friday, September 23, 2016 11:00 AM To: Rebecca Tushnet; gnso-rpm-wg@icann.org Subject: RE: TMCH review objectives
I would add that the question of pricing feeds into the concept of effectiveness, because if the TMCH is serving as a database for registries to target brand owners for higher pricing based on the value of their brands, then this is antithetical to the TMCH’s primary goal to provide protection for verified right holders.
From:gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Friday, September 23, 2016 10:26 AM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] TMCH review objectives
Hello, all. On the last WG call, concerns about pricing of domain names during the Sunrise Period arose. This led to a question of whether pricing is within the remit of this WG – and the broader question of what the purpose of our TMCH review is. There seemed to be a desire to focus on the TMCH’s effectiveness. The predicate question, then, is: effectiveness at what? Here are some suggestions for discussion: (1) minimizing the cost of operating the system for all concerned; (2) minimizing the number of actions that ultimately need to be brought against infringing registrants; (3) minimizing the number of noninfringing registrants whose legitimate uses are blocked or deterred. If the system is reasonably balancing those objectives, I suggest, then it is effective; potential changes should be directly related to improving performance on one or more of these metrics without unduly hampering the others.
Yours,
Rebecca Tushnet
Rebecca Tushnet
Georgetown Law
703 593 6759
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