I suggest considering the following. Examination of what constitutes evidence of use. I suspect the threshold is quite low. I am troubled by sunrise programs because they are always gamed. Thus we should consider limiting access to sunrise reservation to famous marks. The mere existence of the trademark doesn't preclude non infringing use unless the mark is indeed famous. If the domain is registered by another and infringing use occurs the mark owner has the URD and UDRP (not to mention the judicial process). Perhaps fame could be limited to those having been recognized as such by a competent judicial authority. Otherwise we are left to factors such as multi jurisdictional use or revenue levels. If fame cannot be determined then as suggested we should consider examining an auction system. While having the TMCH become a judicial body is not desired in terms of validity of the mark there is no reason IMO that it could not entertain challenges to the mark's participation in the TMCH program itself. We should examine any requirement to periodically re-certify both continued validity and use. I suggest 3 yrs. Also we might consider imposing a forfeiture rule for abandonment, invalidity etc. After all the registration was awarded on the basis of the trademark. Sincerely, Paul Keating, Esq.
On Feb 2, 2017, at 10:52 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:
I also note it is NOT a big brand abusing the system, but a domain speculator. The same group of bad actors (i.e., rogue domain speculators) that abuse brands in the DNS.
J. Scott
J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336 (tel), 408.709.6162 (cell) jsevans@adobe.com www.adobe.com
From: Brian Winterfeldt <BWinterfeldt@mayerbrown.com> Date: Thursday, February 2, 2017 at 9:49 AM To: "J. Scott Evans" <jsevans@adobe.com> Cc: Jonathan Frost <jonathan@get.club>, gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH Blog
Hi all,
I agree with the points raised by J. Scott and others: the TMCH is not the place to challenge underlying trademark registrations. The appropriate recourse is to challenge the registration at the appropriate national or regional trademark office. The TMCH must record any mark that satisfies the validation criteria, including proof of use requirements for access to Sunrise services. It is important to remember that Sunrise registrations are only permitted where the mark owner has submitted acceptable proof of use to the TMCH (otherwise, a recorded mark is only eligible for Trademark Claims service). I support examining the criteria for proof of use to see if we can improve them to minimize acceptance of insufficient or mere “token” specimens of use, but let’s not be overbroad in decrying the TMCH because some gaming is occurring. Also, a mark need not be “famous” or “well-known” in order to be protected and this is not, nor should it be, a requirement of TMCH recordal of an otherwise valid trademark.
Looking forward to discussing these issues at greater length at the appropriate time.
Best regards,
Brian
Brian J. Winterfeldt Co-Head of Global Brand Management and Internet Practice Mayer Brown LLP bwinterfeldt@mayerbrown.com 1999 K Street, NW Washington, DC 20006-1101 202.263.3284 direct dial 202.830.0330 fax
1221 Avenue of the Americas New York, New York 10020-1001 212.506.2345 direct dial
On Feb 2, 2017, at 11:10 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:
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 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-...
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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