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 <https://www.thedomains.com/author/michael-berkens/> 5 Comments <https://www.thedomains.com/2017/02/01/the-trademark-clearinghouse-worked-so-...> The Trademark ClearingHouse (TMCH) <http://www.trademark-clearinghouse.com/> 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 <https://en.wikipedia.org/wiki/Most_common_words_in_English>. 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
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<https://www.thedomains.com/author/michael-berkens/> 5 Comments<https://www.thedomains.com/2017/02/01/the-trademark-clearinghouse-worked-so-...> The Trademark ClearingHouse (TMCH)<http://www.trademark-clearinghouse.com/> 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<https://en.wikipedia.org/wiki/Most_common_words_in_English>. 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 ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17
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...> 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: <mailto:jonathan@get.club> jonathan@get.club Website: <http://www.get.club/> www.get.club <https://app.getsignals.com/link?url=http%3a%2f%2fwww.nic.club%2f&ukey=agxzfn...> Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at <mailto:jonathan@get.club> jonathan@get.club and delete the original message. 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> [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 <https://www.thedomains.com/author/michael-berkens/> 5 Comments <https://www.thedomains.com/2017/02/01/the-trademark-clearinghouse-worked-so-...> The Trademark ClearingHouse (TMCH) <http://www.trademark-clearinghouse.com/> 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 <https://en.wikipedia.org/wiki/Most_common_words_in_English> . 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 _____ No virus found in this message. Checked by AVG - www.avg.com <http://www.avg.com/email-signature> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17
There is no system or program in the world that cannot be, and is not, gamed. That does not mean that the system or program has no value or that there is necessarily a better system or program. The risk of gaming is inherent in any system. That said, obviously the goal for any system or program should be to minimize the risk of gaming to the extent possible without sacrificing the goal and benefits of the system or program. 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<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jonathan Frost Sent: Thursday, February 02, 2017 10:03 AM To: 'Phil Corwin'; 'Jon Nevett'; 'gnso-rpm-wg' Subject: Re: [gnso-rpm-wg] TMCH Blog These TMCH gaming issues have been well documented all the way back to 2014 .https://urldefense.proofpoint.com/v2/url?u=http-3A__domainnamewire.com_2014_... <https://urldefense.proofpoint.com/v2/url?u=http-3A__domainnamewire.com_2014_...> 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<mailto:jonathan@get.club> Website: www.get.club<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.get.club_&d=DwMFaQ&c...> [club]<https://urldefense.proofpoint.com/v2/url?u=https-3A__app.getsignals.com_link...> Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at jonathan@get.club<mailto:jonathan@get.club> and delete the original message. From: gnso-rpm-wg-bounces@icann.org<mailto: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<mailto:jon@donuts.email>>; gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto: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> [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.com_2017... <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.thedomains.com_2017...> The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The” February 1, 2017 by Michael Berkens<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.thedomains.com_auth...> 5 Comments<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.thedomains.com_2017...> The Trademark ClearingHouse (TMCH)<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearing...> 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<https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.org_wiki_M...>. 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 ________________________________ No virus found in this message. Checked by AVG - www.avg.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.avg.com_email-2Dsign...> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17 ---------------------------------------------------------------------- If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com, and do not use or disseminate such information.
+1 Sent from my iPhone On Feb 2, 2017, at 8:09 AM, "trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>" <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> wrote: There is no system or program in the world that cannot be, and is not, gamed. That does not mean that the system or program has no value or that there is necessarily a better system or program. The risk of gaming is inherent in any system. That said, obviously the goal for any system or program should be to minimize the risk of gaming to the extent possible without sacrificing the goal and benefits of the system or program. 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<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> <image001.jpg> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jonathan Frost Sent: Thursday, February 02, 2017 10:03 AM To: 'Phil Corwin'; 'Jon Nevett'; 'gnso-rpm-wg' Subject: Re: [gnso-rpm-wg] TMCH Blog 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-shopping-ended-up-in-the-trademark-clearinghouse-for-new-tlds/<https://urldefense.proofpoint.com/v2/url?u=http-3A__domainnamewire.com_2014_02_10_how-2Dcommon-2Dwords-2Dlike-2Dpizza-2Dmoney-2Dand-2Dshopping-2Dended-2Dup-2Din-2Dthe-2Dtrademark-2Dclearinghouse-2Dfor-2Dnew-2Dtlds_&d=DwMFaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=OKMkQrneYX-CtA7AtUlUoYBf_3P3FyXg4Eiefy4GzSM&s=x78nQ0uAUek7apfpDY1TqfvruWlFiDa2HVbePuVZxJM&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<mailto:jonathan@get.club> Website: www.get.club<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.get.club_&d=DwMFaQ&c...> <image002.jpg><https://urldefense.proofpoint.com/v2/url?u=https-3A__app.getsignals.com_link...> Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at jonathan@get.club<mailto:jonathan@get.club> and delete the original message. From: gnso-rpm-wg-bounces@icann.org<mailto: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<mailto:jon@donuts.email>>; gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto: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> [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-well-one-company-got-24-new-gtld-using-the-famous-trademark-the/<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.thedomains.com_2017_02_01_the-2Dtrademark-2Dclearinghouse-2Dworked-2Dso-2Dwell-2Done-2Dcompany-2Dgot-2D24-2Dnew-2Dgtld-2Dusing-2Dthe-2Dfamous-2Dtrademark-2Dthe_&d=DwMFaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=OKMkQrneYX-CtA7AtUlUoYBf_3P3FyXg4Eiefy4GzSM&s=2Onc8hXvWGoYPz_rnFf68vildBkXJ6WITb4tIxG41fs&e=> The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The” February 1, 2017 by Michael Berkens<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.thedomains.com_auth...> 5 Comments<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.thedomains.com_2017...> The Trademark ClearingHouse (TMCH)<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearing...> 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<https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.org_wiki_M...>. The world-famous trademark for the word “the” was obtained by Goallover Limited of London who according to DomainTools.com<http://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<http://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 ________________________________ No virus found in this message. Checked by AVG - www.avg.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.avg.com_email-2Dsign...> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17 ________________________________ If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com<mailto:postmaster@gtlaw.com>, and do not use or disseminate such information. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
We all knew full well that this sort of thing was going to happen with the TMCH, it was widely discussed during development. Thus it was decided to require at least nominal proof of use, even if the trademark office hadn't required it. But still we knew that could be gamed as well. The ultimate question is whether the benefit to internet users and trademark owners has outweighed the detriment to domain investors from this sort of gaming. Personally I think that answer is fairly clear, that it has done so, and would be a lot more clear if the TMCH was less expensive, better publicized to trademark owners, and we developed some further controls against this sort of gaming. For example, we could design a requirement that TMCH rights do not apply to entirely inapposite trademarks. If "THE" is registered for pizza, then the.pizza is somewhat fair, the.shop less so but probably still fair, but the.car -- no way. Mike Rodenbaugh RODENBAUGH LAW tel/fax: +1.415.738.8087 http://rodenbaugh.com On Thu, Feb 2, 2017 at 8:09 AM, <trachtenbergm@gtlaw.com> wrote:
There is no system or program in the world that cannot be, and is not, gamed. That does not mean that the system or program has no value or that there is necessarily a better system or program. The risk of gaming is inherent in any system. That said, obviously the goal for any system or program should be to minimize the risk of gaming to the extent possible without sacrificing the goal and benefits of the system or program.
Best regards,
*Marc H. Trachtenberg* Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 <(312)%20456-1020>
Mobile 773.677.3305 <(773)%20677-3305>
trachtenbergm@gtlaw.com | www.gtlaw.com
[image: Greenberg Traurig]
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org] *On Behalf Of *Jonathan Frost *Sent:* Thursday, February 02, 2017 10:03 AM *To:* 'Phil Corwin'; 'Jon Nevett'; 'gnso-rpm-wg' *Subject:* Re: [gnso-rpm-wg] TMCH Blog
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-shopping-ended-up-in-the-trademark- clearinghouse-for-new-tlds/ <https://urldefense.proofpoint.com/v2/url?u=http-3A__domainnamewire.com_2014_...>
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 <(877)%20707-5752>
100 SE 3rd Avenue, #1310
Fort Lauderdale, FL 33394
E-Mail: jonathan@get.club
Website: www.get.club <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.get.club_&d=DwMFaQ&c...>
[image: club] <https://urldefense.proofpoint.com/v2/url?u=https-3A__app.getsignals.com_link...>
Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 <(877)%20707-5752> or by email at jonathan@get.club and delete the original message.
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org <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 <(202)%20559-8597>/Direct*
*202-559-8750 <(202)%20559-8750>/Fax*
*202-255-6172 <(202)%20255-6172>/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 <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-well-one-company-got-24-new-gtld- using-the-famous-trademark-the/ <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.thedomains.com_2017...>
The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The”
February 1, 2017 by Michael Berkens <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.thedomains.com_auth...> 5 Comments <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.thedomains.com_2017...>
The Trademark ClearingHouse (TMCH) <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearing...> 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 <https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.org_wiki_M...> .
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
------------------------------
No virus found in this message. Checked by AVG - www.avg.com <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.avg.com_email-2Dsign...> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17 ------------------------------ If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com, and do not use or disseminate such information.
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
But who would determine if the mark was inapposite to the TLD? 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<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: Mike Rodenbaugh [mailto:mike@rodenbaugh.com] Sent: Thursday, February 02, 2017 11:12 AM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech) Cc: Jonathan Frost; Phil Corwin; Jonathon Nevett; David A. Tait Subject: Re: [gnso-rpm-wg] TMCH Blog We all knew full well that this sort of thing was going to happen with the TMCH, it was widely discussed during development. Thus it was decided to require at least nominal proof of use, even if the trademark office hadn't required it. But still we knew that could be gamed as well. The ultimate question is whether the benefit to internet users and trademark owners has outweighed the detriment to domain investors from this sort of gaming. Personally I think that answer is fairly clear, that it has done so, and would be a lot more clear if the TMCH was less expensive, better publicized to trademark owners, and we developed some further controls against this sort of gaming. For example, we could design a requirement that TMCH rights do not apply to entirely inapposite trademarks. If "THE" is registered for pizza, then the.pizza is somewhat fair, the.shop less so but probably still fair, but the.car -- no way. Mike Rodenbaugh RODENBAUGH LAW tel/fax: +1.415.738.8087 https://urldefense.proofpoint.com/v2/url?u=http-3A__rodenbaugh.com&d=DwIGaQ&... <https://urldefense.proofpoint.com/v2/url?u=http-3A__rodenbaugh.com&d=DwMFaQ&...> On Thu, Feb 2, 2017 at 8:09 AM, <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> wrote: There is no system or program in the world that cannot be, and is not, gamed. That does not mean that the system or program has no value or that there is necessarily a better system or program. The risk of gaming is inherent in any system. That said, obviously the goal for any system or program should be to minimize the risk of gaming to the extent possible without sacrificing the goal and benefits of the system or program. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020<tel:(312)%20456-1020> Mobile 773.677.3305<tel:(773)%20677-3305> trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Jonathan Frost Sent: Thursday, February 02, 2017 10:03 AM To: 'Phil Corwin'; 'Jon Nevett'; 'gnso-rpm-wg' Subject: Re: [gnso-rpm-wg] TMCH Blog These TMCH gaming issues have been well documented all the way back to 2014 .https://urldefense.proofpoint.com/v2/url?u=http-3A__domainnamewire.com_2014_... <https://urldefense.proofpoint.com/v2/url?u=http-3A__domainnamewire.com_2014_...> 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<tel:(877)%20707-5752> 100 SE 3rd Avenue, #1310 Fort Lauderdale, FL 33394 E-Mail: jonathan@get.club<mailto:jonathan@get.club> Website: www.get.club<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.get.club_&d=DwMFaQ&c...> [club]<https://urldefense.proofpoint.com/v2/url?u=https-3A__app.getsignals.com_link...> Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752<tel:(877)%20707-5752> or by email at jonathan@get.club<mailto:jonathan@get.club> and delete the original message. From: gnso-rpm-wg-bounces@icann.org<mailto: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<mailto:jon@donuts.email>>; gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto: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<tel:(202)%20559-8597>/Direct 202-559-8750<tel:(202)%20559-8750>/Fax 202-255-6172<tel:(202)%20255-6172>/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> [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.com_2017... <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.thedomains.com_2017...> The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The” February 1, 2017 by Michael Berkens<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.thedomains.com_auth...> 5 Comments<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.thedomains.com_2017...> The Trademark ClearingHouse (TMCH)<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearing...> 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<https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.org_wiki_M...>. 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 ________________________________ No virus found in this message. Checked by AVG - www.avg.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.avg.com_email-2Dsign...> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17 ________________________________ If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com<mailto:postmaster@gtlaw.com>, and do not use or disseminate such information. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li... <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...>
The same gaming goes on in the DNS and has in every expansion since 2000. I hear no calls to limit top level domains to the original TLDs due to the gaming and fraud that has and continues to take place. 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<mailto:jsevans@adobe.com> www.adobe.com From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Mike Rodenbaugh <mike@rodenbaugh.com<mailto:mike@rodenbaugh.com>> Date: Thursday, February 2, 2017 at 9:11 AM To: "Marc H. Trachtenberg" <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Cc: "David A. Tait" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH Blog We all knew full well that this sort of thing was going to happen with the TMCH, it was widely discussed during development. Thus it was decided to require at least nominal proof of use, even if the trademark office hadn't required it. But still we knew that could be gamed as well. The ultimate question is whether the benefit to internet users and trademark owners has outweighed the detriment to domain investors from this sort of gaming. Personally I think that answer is fairly clear, that it has done so, and would be a lot more clear if the TMCH was less expensive, better publicized to trademark owners, and we developed some further controls against this sort of gaming. For example, we could design a requirement that TMCH rights do not apply to entirely inapposite trademarks. If "THE" is registered for pizza, then the.pizza is somewhat fair, the.shop less so but probably still fair, but the.car -- no way. Mike Rodenbaugh RODENBAUGH LAW tel/fax: +1.415.738.8087 http://rodenbaugh.com On Thu, Feb 2, 2017 at 8:09 AM, <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> wrote: There is no system or program in the world that cannot be, and is not, gamed. That does not mean that the system or program has no value or that there is necessarily a better system or program. The risk of gaming is inherent in any system. That said, obviously the goal for any system or program should be to minimize the risk of gaming to the extent possible without sacrificing the goal and benefits of the system or program. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020<tel:(312)%20456-1020> Mobile 773.677.3305<tel:(773)%20677-3305> trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Jonathan Frost Sent: Thursday, February 02, 2017 10:03 AM To: 'Phil Corwin'; 'Jon Nevett'; 'gnso-rpm-wg' Subject: Re: [gnso-rpm-wg] TMCH Blog 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-shopping-ended-up-in-the-trademark-clearinghouse-for-new-tlds/<https://urldefense.proofpoint.com/v2/url?u=http-3A__domainnamewire.com_2014_02_10_how-2Dcommon-2Dwords-2Dlike-2Dpizza-2Dmoney-2Dand-2Dshopping-2Dended-2Dup-2Din-2Dthe-2Dtrademark-2Dclearinghouse-2Dfor-2Dnew-2Dtlds_&d=DwMFaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=OKMkQrneYX-CtA7AtUlUoYBf_3P3FyXg4Eiefy4GzSM&s=x78nQ0uAUek7apfpDY1TqfvruWlFiDa2HVbePuVZxJM&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<tel:(877)%20707-5752> 100 SE 3rd Avenue, #1310 Fort Lauderdale, FL 33394 E-Mail: jonathan@get.club<mailto:jonathan@get.club> Website: www.get.club<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.get.club_&d=DwMFaQ&c...> [club]<https://urldefense.proofpoint.com/v2/url?u=https-3A__app.getsignals.com_link...> Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752<tel:(877)%20707-5752> or by email at jonathan@get.club<mailto:jonathan@get.club> and delete the original message. From:gnso-rpm-wg-bounces@icann.org<mailto: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<mailto:jon@donuts.email>>; gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto: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<tel:(202)%20559-8597>/Direct 202-559-8750<tel:(202)%20559-8750>/Fax 202-255-6172<tel:(202)%20255-6172>/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> [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-well-one-company-got-24-new-gtld-using-the-famous-trademark-the/<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.thedomains.com_2017_02_01_the-2Dtrademark-2Dclearinghouse-2Dworked-2Dso-2Dwell-2Done-2Dcompany-2Dgot-2D24-2Dnew-2Dgtld-2Dusing-2Dthe-2Dfamous-2Dtrademark-2Dthe_&d=DwMFaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=OKMkQrneYX-CtA7AtUlUoYBf_3P3FyXg4Eiefy4GzSM&s=2Onc8hXvWGoYPz_rnFf68vildBkXJ6WITb4tIxG41fs&e=> The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The” February 1, 2017 by Michael Berkens<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.thedomains.com_auth...> 5 Comments<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.thedomains.com_2017...> The Trademark ClearingHouse (TMCH)<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearing...> 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<https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.org_wiki_M...>. 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 ________________________________ No virus found in this message. Checked by AVG - www.avg.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.avg.com_email-2Dsign...> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17 ________________________________ If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com<mailto:postmaster@gtlaw.com>, and do not use or disseminate such information. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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<mailto: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<mailto:jonathan@get.club> Website: www.get.club<http://www.get.club/> <image002.jpg><https://app.getsignals.com/link?url=http%3a%2f%2fwww.nic.club%2f&ukey=agxzfn...> Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at jonathan@get.club<mailto:jonathan@get.club> and delete the original message. From: gnso-rpm-wg-bounces@icann.org<mailto: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<mailto:jon@donuts.email>>; gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto: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> [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<https://www.thedomains.com/author/michael-berkens/> 5 Comments<https://www.thedomains.com/2017/02/01/the-trademark-clearinghouse-worked-so-...> The Trademark ClearingHouse (TMCH)<http://www.trademark-clearinghouse.com/> 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<https://en.wikipedia.org/wiki/Most_common_words_in_English>. The world-famous trademark for the word "the" was obtained by Goallover Limited of London who according to DomainTools.com<http://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<http://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 ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
+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<mailto: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<mailto:jonathan@get.club> Website: www.get.club<http://www.get.club/> <image002.jpg><https://app.getsignals.com/link?url=http%3a%2f%2fwww.nic.club%2f&ukey=agxzfn...> Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at jonathan@get.club<mailto:jonathan@get.club> and delete the original message. From: gnso-rpm-wg-bounces@icann.org<mailto: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<mailto:jon@donuts.email>>; gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto: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> [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<https://www.thedomains.com/author/michael-berkens/> 5 Comments<https://www.thedomains.com/2017/02/01/the-trademark-clearinghouse-worked-so-...> The Trademark ClearingHouse (TMCH)<http://www.trademark-clearinghouse.com/> 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<https://en.wikipedia.org/wiki/Most_common_words_in_English>. The world-famous trademark for the word “the” was obtained by Goallover Limited of London who according to DomainTools.com<http://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<http://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 ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. Any tax advice provided by VLP is for your use only and cannot be used to avoid tax penalties or for promotional or marketing purposes.
The challenge mechanism is a cancellation action filed in the registration office where the mark is registered. If one were blocked by a registration on the TMCH, wouldn't they just challenge the registration in the applicable national trademark registration office and then once the registration is cancelled, provide proof of the cancellation to the TMCH? I thought we were trying to avoid having the TMCH make trademark validity decisions. Renee From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Scott Austin Sent: Thursday, February 02, 2017 10:22 AM To: J. Scott Evans; Jonathan Frost Cc: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog +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<mailto:gnso-rpm-wg@icann.org>> Date: Thu, Feb 2, 2017, 11:10 AM To: Jonathan Frost <jonathan@get.club<mailto:jonathan@get.club>> CC: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto: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<mailto: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<mailto:jonathan@get.club> Website: www.get.club<http://www.get.club/> <image002.jpg><https://app.getsignals.com/link?url=http%3a%2f%2fwww.nic.club%2f&ukey=agxzfn...> Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at jonathan@get.club<mailto:jonathan@get.club> and delete the original message. From: gnso-rpm-wg-bounces@icann.org<mailto: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<mailto:jon@donuts.email>>; gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto: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> [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<https://www.thedomains.com/author/michael-berkens/> 5 Comments<https://www.thedomains.com/2017/02/01/the-trademark-clearinghouse-worked-so-...> The Trademark ClearingHouse (TMCH)<http://www.trademark-clearinghouse.com/> 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<https://en.wikipedia.org/wiki/Most_common_words_in_English>. The world-famous trademark for the word "the" was obtained by Goallover Limited of London who according to DomainTools.com<http://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<http://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 ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. Any tax advice provided by VLP is for your use only and cannot be used to avoid tax penalties or for promotional or marketing purposes. ________________________________ CONFIDENTIALITY NOTICE: This e-mail and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed and may contain confidential and privileged information protected by law. If you received this e-mail in error, any review, use, dissemination, distribution, or copying of the e-mail is strictly prohibited. Please notify the sender immediately by return e-mail and delete all copies from your system.
+1 Marie Sent from my iPhone, sorry for typos
On 2 Feb 2017, at 18:15, Reuter, Renee M <Renee.M.Reuter@ehi.com> wrote:
The challenge mechanism is a cancellation action filed in the registration office where the mark is registered.
If one were blocked by a registration on the TMCH, wouldn’t they just challenge the registration in the applicable national trademark registration office and then once the registration is cancelled, provide proof of the cancellation to the TMCH?
I thought we were trying to avoid having the TMCH make trademark validity decisions.
Renee
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Scott Austin Sent: Thursday, February 02, 2017 10:22 AM To: J. Scott Evans; Jonathan Frost Cc: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog
+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
<image002.jpg>
Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at jonathan@get.club and delete the original message.
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
No virus found in this message. Checked by AVG - www.avg.com Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. Any tax advice provided by VLP is for your use only and cannot be used to avoid tax penalties or for promotional or marketing purposes.
CONFIDENTIALITY NOTICE: This e-mail and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed and may contain confidential and privileged information protected by law. If you received this e-mail in error, any review, use, dissemination, distribution, or copying of the e-mail is strictly prohibited. Please notify the sender immediately by return e-mail and delete all copies from your system.
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And +1. Pascal Pascal Böhner Rechtsanwalt Fachanwalt für gewerblichen Rechtsschutz BARDEHLE PAGENBERG Pascal Böhner Prinzregentenplatz 7 81675 München T +49.(0)89.928 05-0 F +49.(0)89.928 05-444 pascal.boehner@bardehle.de | vCard<http://www.bardehle.com/de/team/detail/p/boehner-pascal-1/vcard.vcf> | Profile<http://www.bardehle.com/de/team/detail/person/boehner-pascal-1.html> www.bardehle.com BARDEHLE PAGENBERG Partnerschaft mbB Patentanwälte Rechtsanwälte Amtsgericht München Partnerschaftsregister 1152 "Law Firm of the Year" 2016 for Intellectual Property Law – named by Best Lawyers® and Handelsblatt "TOP-KANZLEI Patentrecht 2015" – awarded by WirtschaftsWoche Von: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] Im Auftrag von Marie Pattullo Gesendet: Donnerstag, 2. Februar 2017 18:23 An: Reuter, Renee M <Renee.M.Reuter@ehi.com> Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org> Betreff: Re: [gnso-rpm-wg] TMCH Blog +1 Marie Sent from my iPhone, sorry for typos On 2 Feb 2017, at 18:15, Reuter, Renee M <Renee.M.Reuter@ehi.com<mailto:Renee.M.Reuter@ehi.com>> wrote: The challenge mechanism is a cancellation action filed in the registration office where the mark is registered. If one were blocked by a registration on the TMCH, wouldn’t they just challenge the registration in the applicable national trademark registration office and then once the registration is cancelled, provide proof of the cancellation to the TMCH? I thought we were trying to avoid having the TMCH make trademark validity decisions. Renee From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Scott Austin Sent: Thursday, February 02, 2017 10:22 AM To: J. Scott Evans; Jonathan Frost Cc: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog +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<mailto:gnso-rpm-wg@icann.org>> Date: Thu, Feb 2, 2017, 11:10 AM To: Jonathan Frost <jonathan@get.club<mailto:jonathan@get.club>> CC: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto: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<mailto: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<mailto:jonathan@get.club> Website: www.get.club<http://www.get.club/> <image002.jpg><https://app.getsignals.com/link?url=http%3a%2f%2fwww.nic.club%2f&ukey=agxzfn...> Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at jonathan@get.club<mailto:jonathan@get.club> and delete the original message. From: gnso-rpm-wg-bounces@icann.org<mailto: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<mailto:jon@donuts.email>>; gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto: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> [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<https://www.thedomains.com/author/michael-berkens/> 5 Comments<https://www.thedomains.com/2017/02/01/the-trademark-clearinghouse-worked-so-...> The Trademark ClearingHouse (TMCH)<http://www.trademark-clearinghouse.com/> 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<https://en.wikipedia.org/wiki/Most_common_words_in_English>. The world-famous trademark for the word “the” was obtained by Goallover Limited of London who according to DomainTools.com<http://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<http://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 ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. Any tax advice provided by VLP is for your use only and cannot be used to avoid tax penalties or for promotional or marketing purposes. ________________________________ CONFIDENTIALITY NOTICE: This e-mail and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed and may contain confidential and privileged information protected by law. If you received this e-mail in error, any review, use, dissemination, distribution, or copying of the e-mail is strictly prohibited. Please notify the sender immediately by return e-mail and delete all copies from your system. !DSPAM:5893695d17191564615913! _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg !DSPAM:5893695d17191564615913! ________________________________ Important: The information contained in this communication is attorney-client-privileged and confidential information intended only for the use of the individual or entity named above. If the reader of this communication is not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, he or she is hereby notified that any dissemination, distribution, or copying of the communication is strictly prohibited. If you have received the communication in error, please immediately notify us by telephone and return the original to us at the above address and then delete the communication. 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Further to my comment on the call yesterday, and noting the below and Marc's comment about the impossibility of preventing gaming altogether, it may be worth recalling that the gaming being flagged here is that of a sunrise being undertaken in the name of domain registration speculation purposes. This should not be mistaken for the scenario whereby a trademark owner obtains, for a premium fee, a sunrise registration for defensive, i.e., unwanted (though the same holds even if it would be for a "positive" use) purposes, which is simply part of the compromise agreed by the ICANN community during the new gTLD policy development process. It is perfectly legitimate for this Working Group to consider/seek to address the former scenario - which seems to be occasioned by the speculative domain name market - but again, trademark owners with legitimately obtained registrations should not be penalized in the process (never mind the fact of having to already pay for a TMCH entry, sunrise registration, and ongoing defensive registration). Regards, Brian Brian Beckham | Head, Internet Dispute Resolution Section | WIPO Arbitration and Mediation Center 34 chemin des Colombettes, 1211 Geneva 20, Switzerland | T +4122 338 8247 | E brian.beckham@wipo.int<mailto:brian.beckham@wipo.int> | www.wipo.int<http://www.wipo.int/> From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Reuter, Renee M Sent: Thursday, February 02, 2017 6:15 PM To: Scott Austin; J. Scott Evans; Jonathan Frost Cc: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog The challenge mechanism is a cancellation action filed in the registration office where the mark is registered. If one were blocked by a registration on the TMCH, wouldn't they just challenge the registration in the applicable national trademark registration office and then once the registration is cancelled, provide proof of the cancellation to the TMCH? I thought we were trying to avoid having the TMCH make trademark validity decisions. Renee From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Scott Austin Sent: Thursday, February 02, 2017 10:22 AM To: J. Scott Evans; Jonathan Frost Cc: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog +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<mailto:gnso-rpm-wg@icann.org>> Date: Thu, Feb 2, 2017, 11:10 AM To: Jonathan Frost <jonathan@get.club<mailto:jonathan@get.club>> CC: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto: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<mailto: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<mailto:jonathan@get.club> Website: www.get.club<http://www.get.club/> <image002.jpg><https://app.getsignals.com/link?url=http%3a%2f%2fwww.nic.club%2f&ukey=agxzfn...> Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at jonathan@get.club<mailto:jonathan@get.club> and delete the original message. From: gnso-rpm-wg-bounces@icann.org<mailto: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<mailto:jon@donuts.email>>; gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto: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> [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<https://www.thedomains.com/author/michael-berkens/> 5 Comments<https://www.thedomains.com/2017/02/01/the-trademark-clearinghouse-worked-so-...> The Trademark ClearingHouse (TMCH)<http://www.trademark-clearinghouse.com/> 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<https://en.wikipedia.org/wiki/Most_common_words_in_English>. The world-famous trademark for the word "the" was obtained by Goallover Limited of London who according to DomainTools.com<http://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<http://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 ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. Any tax advice provided by VLP is for your use only and cannot be used to avoid tax penalties or for promotional or marketing purposes. ________________________________ CONFIDENTIALITY NOTICE: This e-mail and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed and may contain confidential and privileged information protected by law. If you received this e-mail in error, any review, use, dissemination, distribution, or copying of the e-mail is strictly prohibited. Please notify the sender immediately by return e-mail and delete all copies from your system. World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
+1 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<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Beckham, Brian Sent: Thursday, February 02, 2017 11:38 AM To: Reuter, Renee M; Scott Austin; J. Scott Evans; Jonathan Frost Cc: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog Further to my comment on the call yesterday, and noting the below and Marc's comment about the impossibility of preventing gaming altogether, it may be worth recalling that the gaming being flagged here is that of a sunrise being undertaken in the name of domain registration speculation purposes. This should not be mistaken for the scenario whereby a trademark owner obtains, for a premium fee, a sunrise registration for defensive, i.e., unwanted (though the same holds even if it would be for a "positive" use) purposes, which is simply part of the compromise agreed by the ICANN community during the new gTLD policy development process. It is perfectly legitimate for this Working Group to consider/seek to address the former scenario - which seems to be occasioned by the speculative domain name market - but again, trademark owners with legitimately obtained registrations should not be penalized in the process (never mind the fact of having to already pay for a TMCH entry, sunrise registration, and ongoing defensive registration). Regards, Brian Brian Beckham | Head, Internet Dispute Resolution Section | WIPO Arbitration and Mediation Center 34 chemin des Colombettes, 1211 Geneva 20, Switzerland | T +4122 338 8247 | E brian.beckham@wipo.int<mailto:brian.beckham@wipo.int> | www.wipo.int<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_&d=DwMFAg&c...> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Reuter, Renee M Sent: Thursday, February 02, 2017 6:15 PM To: Scott Austin; J. Scott Evans; Jonathan Frost Cc: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog The challenge mechanism is a cancellation action filed in the registration office where the mark is registered. If one were blocked by a registration on the TMCH, wouldn't they just challenge the registration in the applicable national trademark registration office and then once the registration is cancelled, provide proof of the cancellation to the TMCH? I thought we were trying to avoid having the TMCH make trademark validity decisions. Renee From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Scott Austin Sent: Thursday, February 02, 2017 10:22 AM To: J. Scott Evans; Jonathan Frost Cc: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog +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<mailto:gnso-rpm-wg@icann.org>> Date: Thu, Feb 2, 2017, 11:10 AM To: Jonathan Frost <jonathan@get.club<mailto:jonathan@get.club>> CC: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto: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<mailto: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.com_2014_... <https://urldefense.proofpoint.com/v2/url?u=http-3A__domainnamewire.com_2014_...> 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<mailto:jonathan@get.club> Website: www.get.club<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.get.club_&d=DwMFAg&c...> <image002.jpg><https://urldefense.proofpoint.com/v2/url?u=https-3A__app.getsignals.com_link...> Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at jonathan@get.club<mailto:jonathan@get.club> and delete the original message. From: gnso-rpm-wg-bounces@icann.org<mailto: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<mailto:jon@donuts.email>>; gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto: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> [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.com_2017... <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.thedomains.com_2017...> The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark "The" February 1, 2017 by Michael Berkens<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.thedomains.com_auth...> 5 Comments<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.thedomains.com_2017...> The Trademark ClearingHouse (TMCH)<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearing...> 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<https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.org_wiki_M...>. The world-famous trademark for the word "the" was obtained by Goallover Limited of London who according to DomainTools.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__DomainTools.com&d=DwMFAg...> 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<https://urldefense.proofpoint.com/v2/url?u=http-3A__The.Com&d=DwMFAg&c=2s2mv...> 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 ________________________________ No virus found in this message. Checked by AVG - www.avg.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.avg.com_email-2Dsign...> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li... <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...> This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. Any tax advice provided by VLP is for your use only and cannot be used to avoid tax penalties or for promotional or marketing purposes. ________________________________ CONFIDENTIALITY NOTICE: This e-mail and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed and may contain confidential and privileged information protected by law. If you received this e-mail in error, any review, use, dissemination, distribution, or copying of the e-mail is strictly prohibited. Please notify the sender immediately by return e-mail and delete all copies from your system. World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using. ---------------------------------------------------------------------- If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com, and do not use or disseminate such information.
+1 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<mailto:jsevans@adobe.com> www.adobe.com From: "Beckham, Brian" <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> Date: Thursday, February 2, 2017 at 9:38 AM To: "Reuter, Renee M" <Renee.M.Reuter@ehi.com<mailto:Renee.M.Reuter@ehi.com>>, Scott Austin <SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>>, "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>>, Jonathan Frost <jonathan@get.club<mailto:jonathan@get.club>> Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [gnso-rpm-wg] TMCH Blog Further to my comment on the call yesterday, and noting the below and Marc’s comment about the impossibility of preventing gaming altogether, it may be worth recalling that the gaming being flagged here is that of a sunrise being undertaken in the name of domain registration speculation purposes. This should not be mistaken for the scenario whereby a trademark owner obtains, for a premium fee, a sunrise registration for defensive, i.e., unwanted (though the same holds even if it would be for a “positive” use) purposes, which is simply part of the compromise agreed by the ICANN community during the new gTLD policy development process. It is perfectly legitimate for this Working Group to consider/seek to address the former scenario – which seems to be occasioned by the speculative domain name market – but again, trademark owners with legitimately obtained registrations should not be penalized in the process (never mind the fact of having to already pay for a TMCH entry, sunrise registration, and ongoing defensive registration). Regards, Brian Brian Beckham|Head, Internet Dispute Resolution Section|WIPO Arbitration and Mediation Center 34 chemin des Colombettes, 1211 Geneva 20, Switzerland|T +4122 338 8247|E brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>|www.wipo.int<http://www.wipo.int/> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Reuter, Renee M Sent: Thursday, February 02, 2017 6:15 PM To: Scott Austin; J. Scott Evans; Jonathan Frost Cc: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog The challenge mechanism is a cancellation action filed in the registration office where the mark is registered. If one were blocked by a registration on the TMCH, wouldn’t they just challenge the registration in the applicable national trademark registration office and then once the registration is cancelled, provide proof of the cancellation to the TMCH? I thought we were trying to avoid having the TMCH make trademark validity decisions. Renee From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Scott Austin Sent: Thursday, February 02, 2017 10:22 AM To: J. Scott Evans; Jonathan Frost Cc: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog +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<mailto:gnso-rpm-wg@icann.org>> Date: Thu, Feb 2, 2017, 11:10 AM To: Jonathan Frost <jonathan@get.club<mailto:jonathan@get.club>> CC: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto: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<mailto: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<mailto:jonathan@get.club> Website: www.get.club<http://www.get.club/> <image002.jpg><https://app.getsignals.com/link?url=http%3a%2f%2fwww.nic.club%2f&ukey=agxzfn...> Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at jonathan@get.club<mailto:jonathan@get.club> and delete the original message. From:gnso-rpm-wg-bounces@icann.org<mailto: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<mailto:jon@donuts.email>>; gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto: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> [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<https://www.thedomains.com/author/michael-berkens/> 5 Comments<https://www.thedomains.com/2017/02/01/the-trademark-clearinghouse-worked-so-...> The Trademark ClearingHouse (TMCH)<http://www.trademark-clearinghouse.com/> 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<https://en.wikipedia.org/wiki/Most_common_words_in_English>. The world-famous trademark for the word “the” was obtained by Goallover Limited of London who according to DomainTools.com<http://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<http://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 ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. Any tax advice provided by VLP is for your use only and cannot be used to avoid tax penalties or for promotional or marketing purposes. ________________________________ CONFIDENTIALITY NOTICE: This e-mail and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed and may contain confidential and privileged information protected by law. If you received this e-mail in error, any review, use, dissemination, distribution, or copying of the e-mail is strictly prohibited. Please notify the sender immediately by return e-mail and delete all copies from your system. World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
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
<image002.jpg>
Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at jonathan@get.club and delete the original message.
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
________________________________
No virus found in this message. Checked by AVG - www.avg.com Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. Any tax advice provided by VLP is for your use only and cannot be used to avoid tax penalties or for promotional or marketing purposes.
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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
<image002.jpg>
Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at jonathan@get.club and delete the original message.
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
________________________________
No virus found in this message. Checked by AVG - www.avg.com Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. Any tax advice provided by VLP is for your use only and cannot be used to avoid tax penalties or for promotional or marketing purposes.
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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-2Db... 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... 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
<image002.jpg>
Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at jonathan@get.club and delete the original message.
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
________________________________
No virus found in this message. Checked by AVG - www.avg.com Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mail man_listinfo_gnso-2Drpm-2Dwg&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7 eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=4PK5UuYljzArBjy5tIDLovRAhINmt mr4XXMj97J-0WQ&s=APWi9pBG7PHEXsD84LvAKWjw4NOB16C30Y-XuXM25sY&e=
This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. Any tax advice provided by VLP is for your use only and cannot be used to avoid tax penalties or for promotional or marketing purposes.
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mail man_listinfo_gnso-2Drpm-2Dwg&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7 eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=4PK5UuYljzArBjy5tIDLovRAhINmt mr4XXMj97J-0WQ&s=APWi9pBG7PHEXsD84LvAKWjw4NOB16C30Y-XuXM25sY&e=
gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li... ---------------------------------------------------------------------- If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com, and do not use or disseminate such information.
Agreed. 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 On 2/2/17, 9:31 AM, "gnso-rpm-wg-bounces@icann.org on behalf of trachtenbergm@gtlaw.com" <gnso-rpm-wg-bounces@icann.org on behalf of 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 don¹t 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-2 Dbe-2Dconfused-2Dabout-2Dwhether-2Dyour-2Dtrademark-2Dis-2Dused_&d=DwIGaQ& c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=4 PK5UuYljzArBjy5tIDLovRAhINmtmr4XXMj97J-0WQ&s=hdnKxcys8EdogaH3c0lDkr6q5Wqxt KOnSwHCT8dqeek&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= 4PK5UuYljzArBjy5tIDLovRAhINmtmr4XXMj97J-0WQ&s=vtt5wji_N4uRw7Cx_7ARATR_dMaQ YhTAGMHfczMY7gE&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
<image002.jpg>
Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at jonathan@get.club and delete the original message.
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
I¹m tempted to say that is one of *** craziest things I¹ve 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 ³The²
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 ³the²
Actually there maybe no better example than those domain names obtained on the world-famous trademarks as of the word²the², which is the most used word in the English language.
The world-famous trademark for the word ³the² 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 gTLD¹s using their globally well-known trademark on the word ³the² 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 ³the² new gTLD domain names in Sunrise but apparently did not apply for more.
Somehow the company doesn¹t 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
________________________________
No virus found in this message. Checked by AVG - www.avg.com Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mail man_listinfo_gnso-2Drpm-2Dwg&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7 eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=4PK5UuYljzArBjy5tIDLovRAhINmt mr4XXMj97J-0WQ&s=APWi9pBG7PHEXsD84LvAKWjw4NOB16C30Y-XuXM25sY&e=
This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. Any tax advice provided by VLP is for your use only and cannot be used to avoid tax penalties or for promotional or marketing purposes.
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mail man_listinfo_gnso-2Drpm-2Dwg&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7 eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=4PK5UuYljzArBjy5tIDLovRAhINmt mr4XXMj97J-0WQ&s=APWi9pBG7PHEXsD84LvAKWjw4NOB16C30Y-XuXM25sY&e=
gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_ listinfo_gnso-2Drpm-2Dwg&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCX D4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=4PK5UuYljzArBjy5tIDLovRAhINmtmr4XXMj97J-0 WQ&s=APWi9pBG7PHEXsD84LvAKWjw4NOB16C30Y-XuXM25sY&e=
---------------------------------------------------------------------- If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com, and do not use or disseminate such information. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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-2Db...
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...
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
<image002.jpg>
Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at jonathan@get.club and delete the original message.
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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George, I think you are trying to apply domain speculation thinking where it is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing. If life isn’t fair is an acceptable justification then why change the current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can’t have it both ways. 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: George Kirikos [mailto:icann@leap.com] Sent: Thursday, February 02, 2017 11:46 AM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech) Cc: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog 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 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIFaQ&c... 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_do nt-2Dbe-2Dconfused-2Dabout-2Dwhether-2Dyour-2Dtrademark-2Dis-2Dused_&d =DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3N jBzCxm1c&m=4PK5UuYljzArBjy5tIDLovRAhINmtmr4XXMj97J-0WQ&s=hdnKxcys8Edog aH3c0lDkr6q5WqxtKOnSwHCT8dqeek&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=Dw IGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBz Cxm1c&m=4PK5UuYljzArBjy5tIDLovRAhINmtmr4XXMj97J-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.c o m_2014_02_10_how-2Dcommon-2Dwords-2Dlike-2Dpizza-2Dmoney-2Dand-2Dshop p ing-2Dended-2Dup-2Din-2Dthe-2Dtrademark-2Dclearinghouse-2Dfor-2Dnew-2 D tlds_&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKX t 7T1dG3NjBzCxm1c&m=4PK5UuYljzArBjy5tIDLovRAhINmtmr4XXMj97J-0WQ&s=gUS0Y 1 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
<image002.jpg>
Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at jonathan@get.club and delete the original message.
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.c o m_2017_02_01_the-2Dtrademark-2Dclearinghouse-2Dworked-2Dso-2Dwell-2Do n e-2Dcompany-2Dgot-2D24-2Dnew-2Dgtld-2Dusing-2Dthe-2Dfamous-2Dtrademar k -2Dthe_&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3Jr K Xt7T1dG3NjBzCxm1c&m=4PK5UuYljzArBjy5tIDLovRAhINmtmr4XXMj97J-0WQ&s=vS2 e 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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Hello, (and trying to combine multiple responses in one email) On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com> wrote:
I think you are trying to apply domain speculation thinking where it is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing.
If life isn’t fair is an acceptable justification then why change the current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can’t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement. 2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place). 3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour. 4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing. While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere. 5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational. 6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse). In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
Recognition of the importance of protecting trademark rights in the DNS has been essential to ICANN’s policymaking since before ICANN was organized. Per J Scott’s note, trademark rights are government granted rights. Domain names are not. While some domain names can function as trademarks in the legal sense of the word, domain names are licensed assets with no inherent vested rights. This makes them fundamentally different than trademarks. The difference creates the tensions that we see when discussing how trademark rights should be addressed/recognized within the domain system. The UDRP/URS were designed to keep costs down for both sides of a domain dispute as the administrative process contemplated is much less expensive and onerous than a court driven process. Having managed very large and very small portfolios of trademarks and domains throughout my career, I can tell you that this is empirically true no matter the size of the business either as a plaintiff or defendant in a dispute. Forcing trademark owners into court will force domain registrants there too and in much higher number than we see today. The UDRP is a reasonable alternative to what would otherwise be an endless stream of lawsuits overloading already burdened court systems. The use issue forms the fundamental core of trademark protection and different jurisdictions have different standards for when use must be demonstrated and what qualifies as good use. This requires deep expertise and knowledge of trademark law. If we were to create some kind of use test in the TMCH beyond what is already there, costs would significantly increase as you would need essentially a trademark office-like system for review and dispute resolution. In terms of gaming the system, so far, I have seen much more gaming by investors than I have seen by brands…as brands have been targeted by the investors in very well publicized instances. In terms of your math, George, I would be absolutely be in favor of lowering the costs of a UDRP as it would lower barriers of entry for small businesses and noncommercial organization who are continually victimized by cyber squatters. Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman [cid:image005.jpg@01D270D2.1801CD20] From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 1:36 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH Blog Hello, (and trying to combine multiple responses in one email) On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com%3e> wrote:
I think you are trying to apply domain speculation thinking where it is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing.
If life isn’t fair is an acceptable justification then why change the current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can’t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement. 2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place). 3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour. 4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing. While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere. 5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational. 6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse). In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________
+1 Well said! Best Regards, Marc H.Trachtenberg Shareholder Greenberg Traurig, LLP 77 West Wacker Drive Chicago, IL 60601 Office (312) 456-1020 Mobile (773) 677-3305 On Feb 2, 2017, at 12:53 PM, Lori Schulman <lschulman@inta.org<mailto:lschulman@inta.org>> wrote: Recognition of the importance of protecting trademark rights in the DNS has been essential to ICANN’s policymaking since before ICANN was organized. Per J Scott’s note, trademark rights are government granted rights. Domain names are not. While some domain names can function as trademarks in the legal sense of the word, domain names are licensed assets with no inherent vested rights. This makes them fundamentally different than trademarks. The difference creates the tensions that we see when discussing how trademark rights should be addressed/recognized within the domain system. The UDRP/URS were designed to keep costs down for both sides of a domain dispute as the administrative process contemplated is much less expensive and onerous than a court driven process. Having managed very large and very small portfolios of trademarks and domains throughout my career, I can tell you that this is empirically true no matter the size of the business either as a plaintiff or defendant in a dispute. Forcing trademark owners into court will force domain registrants there too and in much higher number than we see today. The UDRP is a reasonable alternative to what would otherwise be an endless stream of lawsuits overloading already burdened court systems. The use issue forms the fundamental core of trademark protection and different jurisdictions have different standards for when use must be demonstrated and what qualifies as good use. This requires deep expertise and knowledge of trademark law. If we were to create some kind of use test in the TMCH beyond what is already there, costs would significantly increase as you would need essentially a trademark office-like system for review and dispute resolution. In terms of gaming the system, so far, I have seen much more gaming by investors than I have seen by brands…as brands have been targeted by the investors in very well publicized instances. In terms of your math, George, I would be absolutely be in favor of lowering the costs of a UDRP as it would lower barriers of entry for small businesses and noncommercial organization who are continually victimized by cyber squatters. Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman <image001.jpg> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 1:36 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH Blog Hello, (and trying to combine multiple responses in one email) On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com%3e> wrote:
I think you are trying to apply domain speculation thinking where it is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing.
If life isn’t fair is an acceptable justification then why change the current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can’t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement. 2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place). 3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour. 4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing. While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere. 5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational. 6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse). In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors. Sincerely, George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIF-g&c... <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwMFaQ&c...> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li... <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li... ---------------------------------------------------------------------- If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com, and do not use or disseminate such information.
All: Lori makes excellent points here. Back in 1999, I suggested a possible solution to this issue that I thought would end all the trouble. It was during a conference call the commercial and business community had with the ICANN Board member selected to represent our interest on the original board of directors for ICANN. I believe the gentleman was from Dun & Bradstreet. Here is my proposal: Why not have a directory system not a first-come, first-served system? That is, anyone can get any name in any space. This system accommodates duplicate identical strings. As soon as two or more holders register the domain, it is redirected to directory page (similar to the way scrabble.com is handled). On that page, you’d find all the identical domains with a brief description. For example: Dominos.com: A large sugar and confectionary manufacture located in Sugarland, Texas. Dominos.com: A pizza restaurant chain offering the best home delivery pizza in the business. Dominos.com: The International Association of Domino Players organization. A non-profit group promoting the fun and benefit of playing domino games. Of course, the first-come, first-serve system pushes artificial scarcity and allows speculators to run a robust (some might say extortionist) market for highly sought after domains. Again, I will repeat, that the entire public justification for expanding the DNS was that, “all the good domain names were gone” and that SME’s and emerging economies were suffering due to the lack of short, pithy domains. However, in the implementation of the expansion ICANN allowed all new registries to create “PREMIUM NAMES” specific to their top level domain. Basically, registries reserved all the dictionary terms that might be most relevant to their top level domain. These registries then charged premium prices or auctioned these domain names off to speculators who then sought to sell them in the secondary market. The problem is that ICANN has never tackled the REAL problem (IMHO) which is that domains are a commodity and the companies that run the system are also speculators in the market creating huge conflicts of interest and a desire to retain artificial scarcity to keep prices on the secondary market high. 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<mailto:jsevans@adobe.com> www.adobe.com From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Lori Schulman <lschulman@inta.org<mailto:lschulman@inta.org>> Date: Thursday, February 2, 2017 at 10:53 AM To: George Kirikos <icann@leap.com<mailto:icann@leap.com>>, gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH Blog Recognition of the importance of protecting trademark rights in the DNS has been essential to ICANN’s policymaking since before ICANN was organized. Per J Scott’s note, trademark rights are government granted rights. Domain names are not. While some domain names can function as trademarks in the legal sense of the word, domain names are licensed assets with no inherent vested rights. This makes them fundamentally different than trademarks. The difference creates the tensions that we see when discussing how trademark rights should be addressed/recognized within the domain system. The UDRP/URS were designed to keep costs down for both sides of a domain dispute as the administrative process contemplated is much less expensive and onerous than a court driven process. Having managed very large and very small portfolios of trademarks and domains throughout my career, I can tell you that this is empirically true no matter the size of the business either as a plaintiff or defendant in a dispute. Forcing trademark owners into court will force domain registrants there too and in much higher number than we see today. The UDRP is a reasonable alternative to what would otherwise be an endless stream of lawsuits overloading already burdened court systems. The use issue forms the fundamental core of trademark protection and different jurisdictions have different standards for when use must be demonstrated and what qualifies as good use. This requires deep expertise and knowledge of trademark law. If we were to create some kind of use test in the TMCH beyond what is already there, costs would significantly increase as you would need essentially a trademark office-like system for review and dispute resolution. In terms of gaming the system, so far, I have seen much more gaming by investors than I have seen by brands…as brands have been targeted by the investors in very well publicized instances. In terms of your math, George, I would be absolutely be in favor of lowering the costs of a UDRP as it would lower barriers of entry for small businesses and noncommercial organization who are continually victimized by cyber squatters. Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman [cid:image005.jpg@01D270D2.1801CD20] From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 1:36 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH Blog Hello, (and trying to combine multiple responses in one email) On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com%3e> wrote:
I think you are trying to apply domain speculation thinking where it is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing.
If life isn’t fair is an acceptable justification then why change the current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can’t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement. 2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place). 3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour. 4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing. While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere. 5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational. 6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse). In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
As for J. Scott's proposal, 1. it ignores the requirement for uniqueness, an important requirement for a namespace, and 2. it creates a single point of failure intermediary to redirect folks to a final desired destination 3. there's more to the internet than port 80 (i.e. the web). That system wouldn't work for email, etc.; there'd still need to be a way to *uniquely* identify a final destination (i.e. see point 1), especially for machine-to-machine communications without human intervention 4. Some domain names will always be better than others! Economics 101! Even MarkMonitor believes that, given they're now (shockingly!) selling their clients' surplus domains, at differing prices, rather than letting them expire: http://dotweekly.com/markmonitor-client-domains-sale-2/ https://www.markmonitor.com/domains-for-sale/top-level-domains/ 5. Why are some folks upset that some domain names are worth more than others, yet are not upset when trademarks, copyrights, and other intangibles are sold by companies for their market value, in IP sales, secondary market, etc.? We either live in a capitalist society, or we don't (and where I'm sitting, it's still a capitalist society). While other economic systems have been tried, they've failed miserably. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Thu, Feb 2, 2017 at 2:08 PM, J. Scott Evans <jsevans@adobe.com> wrote:
All:
Lori makes excellent points here.
Back in 1999, I suggested a possible solution to this issue that I thought would end all the trouble. It was during a conference call the commercial and business community had with the ICANN Board member selected to represent our interest on the original board of directors for ICANN. I believe the gentleman was from Dun & Bradstreet.
Here is my proposal:
Why not have a directory system not a first-come, first-served system? That is, anyone can get any name in any space. This system accommodates duplicate identical strings. As soon as two or more holders register the domain, it is redirected to directory page (similar to the way scrabble.com is handled). On that page, you’d find all the identical domains with a brief description.
For example:
*D**ominos.com <http://ominos.com>*: A large sugar and confectionary manufacture located in Sugarland, Texas.
*D**ominos.com <http://ominos.com>*: A pizza restaurant chain offering the best home delivery pizza in the business.
*Dominos.com:* The International Association of Domino Players organization. A non-profit group promoting the fun and benefit of playing domino games.
Of course, the first-come, first-serve system pushes artificial scarcity and allows speculators to run a robust (some might say extortionist) market for highly sought after domains. Again, I will repeat, that the entire public justification for expanding the DNS was that, “all the good domain names were gone” and that SME’s and emerging economies were suffering due to the lack of short, pithy domains. However, in the implementation of the expansion ICANN allowed all new registries to create “PREMIUM NAMES” specific to their top level domain. Basically, registries reserved all the dictionary terms that might be most relevant to their top level domain. These registries then charged premium prices or auctioned these domain names off to speculators who then sought to sell them in the secondary market. The problem is that ICANN has never tackled the REAL problem (IMHO) which is that domains are a commodity and the companies that run the system are also speculators in the market creating huge conflicts of interest and a desire to retain artificial scarcity to keep prices on the secondary market high.
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: <gnso-rpm-wg-bounces@icann.org> on behalf of Lori Schulman < lschulman@inta.org> Date: Thursday, February 2, 2017 at 10:53 AM To: George Kirikos <icann@leap.com>, gnso-rpm-wg <gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] TMCH Blog
Recognition of the importance of protecting trademark rights in the DNS has been essential to ICANN’s policymaking since before ICANN was organized. Per J Scott’s note, trademark rights are government granted rights. Domain names are not. While some domain names can function as trademarks in the legal sense of the word, domain names are licensed assets with no inherent vested rights. This makes them fundamentally different than trademarks. The difference creates the tensions that we see when discussing how trademark rights should be addressed/recognized within the domain system. The UDRP/URS were designed to keep costs down for both sides of a domain dispute as the administrative process contemplated is much less expensive and onerous than a court driven process. Having managed very large and very small portfolios of trademarks and domains throughout my career, I can tell you that this is empirically true no matter the size of the business either as a plaintiff or defendant in a dispute. Forcing trademark owners into court will force domain registrants there too and in much higher number than we see today. The UDRP is a reasonable alternative to what would otherwise be an endless stream of lawsuits overloading already burdened court systems. The use issue forms the fundamental core of trademark protection and different jurisdictions have different standards for when use must be demonstrated and what qualifies as good use. This requires deep expertise and knowledge of trademark law. If we were to create some kind of use test in the TMCH beyond what is already there, costs would significantly increase as you would need essentially a trademark office-like system for review and dispute resolution. In terms of gaming the system, so far, I have seen much more gaming by investors than I have seen by brands…as brands have been targeted by the investors in very well publicized instances.
In terms of your math, George, I would be absolutely be in favor of lowering the costs of a UDRP as it would lower barriers of entry for small businesses and noncommercial organization who are continually victimized by cyber squatters.
Lori S. Schulman
Senior Director, Internet Policy
*International Trademark Association (INTA)*
+1-202-704-0408, Skype: lsschulman
[image: cid:image005.jpg@01D270D2.1801CD20]
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *George Kirikos *Sent:* Thursday, February 02, 2017 1:36 PM *To:* gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] TMCH Blog
Hello,
(and trying to combine multiple responses in one email)
On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com> wrote:
I think you are trying to apply domain speculation thinking where it is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing.
If life isn’t fair is an acceptable justification then why change the current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can’t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement.
2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place).
3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour.
4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing.
While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere.
5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational.
6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse).
In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
I didn't see anybody "upset" here. However, the value of trademarks is derived from the goodwill and reputation associated with the mark by virtue of the quality and reputation of the underlying goods and services and that of the company itself. While some trademarks are stronger than others from a legal standpoint, no trademark is more valuable than another until the associated goodwill, etc. (or lack thereof) is taken into account. Looked at another way, the value of a brand is directly correlated to the brandowner's time, money and efforts to increase goodwill, reputation, recognition, secondary meaning, and association with the underlying goods, services, and/or business. While there are internal factors relating to the brand (string, logo, etc.) that will contribute to (or detract from) that value, that is a fairly modest "delta" and can be unpredictable (e.g., "With a name like Smucker's, it has to be good" was a slogan that took an "unattractive" word mark and made it a positive attribute. In any event, the value of the Smucker's brand is primarily related to the goodwill associated with their products and related elements such as customer service, etc.). I think that can be contrasted with the levers that affect value of a domain name. While it's my understanding there are things that a domain name investor can do to maximize the value (or at least, the price) of a given domain name, nearly all the value in a domain seems to be inherent in the string itself (including the associated TLD). That does not discount the work and money that goes into selecting and acquiring high-value domains, maintaining the portfolio, or determining how and when it's best to sell them to get the best price. If it was really easy, more people would be doing it (or at least, doing it well). But the fact remains that the value of a domain name is largely inherent in the domain name, while the value of a trademark is largely a result of the work done to build the product or service or business. One could contrast stock trading vs. owning businesses. If I bought Apple stock 20 years ago and sold it now, that would be a great thing, But what did I do to increase the value of that stock? And what did Apple do to increase the value of its stock and its brand? But I digress.... Greg On Thu, Feb 2, 2017 at 2:32 PM, George Kirikos <icann@leap.com> wrote:
As for J. Scott's proposal,
1. it ignores the requirement for uniqueness, an important requirement for a namespace, and
2. it creates a single point of failure intermediary to redirect folks to a final desired destination
3. there's more to the internet than port 80 (i.e. the web). That system wouldn't work for email, etc.; there'd still need to be a way to *uniquely* identify a final destination (i.e. see point 1), especially for machine-to-machine communications without human intervention
4. Some domain names will always be better than others! Economics 101! Even MarkMonitor believes that, given they're now (shockingly!) selling their clients' surplus domains, at differing prices, rather than letting them expire:
http://dotweekly.com/markmonitor-client-domains-sale-2/ https://www.markmonitor.com/domains-for-sale/top-level-domains/
5. Why are some folks upset that some domain names are worth more than others, yet are not upset when trademarks, copyrights, and other intangibles are sold by companies for their market value, in IP sales, secondary market, etc.? We either live in a capitalist society, or we don't (and where I'm sitting, it's still a capitalist society). While other economic systems have been tried, they've failed miserably.
Sincerely,
George Kirikos 416-588-0269 <(416)%20588-0269> http://www.leap.com/
On Thu, Feb 2, 2017 at 2:08 PM, J. Scott Evans <jsevans@adobe.com> wrote:
All:
Lori makes excellent points here.
Back in 1999, I suggested a possible solution to this issue that I thought would end all the trouble. It was during a conference call the commercial and business community had with the ICANN Board member selected to represent our interest on the original board of directors for ICANN. I believe the gentleman was from Dun & Bradstreet.
Here is my proposal:
Why not have a directory system not a first-come, first-served system? That is, anyone can get any name in any space. This system accommodates duplicate identical strings. As soon as two or more holders register the domain, it is redirected to directory page (similar to the way scrabble.com is handled). On that page, you’d find all the identical domains with a brief description.
For example:
*D**ominos.com <http://ominos.com>*: A large sugar and confectionary manufacture located in Sugarland, Texas.
*D**ominos.com <http://ominos.com>*: A pizza restaurant chain offering the best home delivery pizza in the business.
*Dominos.com:* The International Association of Domino Players organization. A non-profit group promoting the fun and benefit of playing domino games.
Of course, the first-come, first-serve system pushes artificial scarcity and allows speculators to run a robust (some might say extortionist) market for highly sought after domains. Again, I will repeat, that the entire public justification for expanding the DNS was that, “all the good domain names were gone” and that SME’s and emerging economies were suffering due to the lack of short, pithy domains. However, in the implementation of the expansion ICANN allowed all new registries to create “PREMIUM NAMES” specific to their top level domain. Basically, registries reserved all the dictionary terms that might be most relevant to their top level domain. These registries then charged premium prices or auctioned these domain names off to speculators who then sought to sell them in the secondary market. The problem is that ICANN has never tackled the REAL problem (IMHO) which is that domains are a commodity and the companies that run the system are also speculators in the market creating huge conflicts of interest and a desire to retain artificial scarcity to keep prices on the secondary market high.
J. Scott
*J. Scott Evans* *| Associate General Counsel - Trademarks, Copyright, Domains & Marketing |*
*Adobe *
345 Park Avenue
San Jose, CA 95110 408.536.5336 <(408)%20536-5336> (tel), 408.709.6162 <(408)%20709-6162> (cell) jsevans@adobe.com
www.adobe.com
From: <gnso-rpm-wg-bounces@icann.org> on behalf of Lori Schulman < lschulman@inta.org> Date: Thursday, February 2, 2017 at 10:53 AM To: George Kirikos <icann@leap.com>, gnso-rpm-wg <gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] TMCH Blog
Recognition of the importance of protecting trademark rights in the DNS has been essential to ICANN’s policymaking since before ICANN was organized. Per J Scott’s note, trademark rights are government granted rights. Domain names are not. While some domain names can function as trademarks in the legal sense of the word, domain names are licensed assets with no inherent vested rights. This makes them fundamentally different than trademarks. The difference creates the tensions that we see when discussing how trademark rights should be addressed/recognized within the domain system. The UDRP/URS were designed to keep costs down for both sides of a domain dispute as the administrative process contemplated is much less expensive and onerous than a court driven process. Having managed very large and very small portfolios of trademarks and domains throughout my career, I can tell you that this is empirically true no matter the size of the business either as a plaintiff or defendant in a dispute. Forcing trademark owners into court will force domain registrants there too and in much higher number than we see today. The UDRP is a reasonable alternative to what would otherwise be an endless stream of lawsuits overloading already burdened court systems. The use issue forms the fundamental core of trademark protection and different jurisdictions have different standards for when use must be demonstrated and what qualifies as good use. This requires deep expertise and knowledge of trademark law. If we were to create some kind of use test in the TMCH beyond what is already there, costs would significantly increase as you would need essentially a trademark office-like system for review and dispute resolution. In terms of gaming the system, so far, I have seen much more gaming by investors than I have seen by brands…as brands have been targeted by the investors in very well publicized instances.
In terms of your math, George, I would be absolutely be in favor of lowering the costs of a UDRP as it would lower barriers of entry for small businesses and noncommercial organization who are continually victimized by cyber squatters.
Lori S. Schulman
Senior Director, Internet Policy
*International Trademark Association (INTA)*
+1-202-704-0408 <(202)%20704-0408>, Skype: lsschulman
[image: cid:image005.jpg@01D270D2.1801CD20]
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ic ann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *George Kirikos *Sent:* Thursday, February 02, 2017 1:36 PM *To:* gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] TMCH Blog
Hello,
(and trying to combine multiple responses in one email)
On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com> wrote:
I think you are trying to apply domain speculation thinking where it is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing.
If life isn’t fair is an acceptable justification then why change the current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can’t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement.
2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place).
3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour.
4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing.
While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere.
5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational.
6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse).
In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors.
Sincerely,
George Kirikos 416-588-0269 <(416)%20588-0269> http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
I think you are describing Google here. Seriously though, in many asian countries domains are not that relevant, search engine ranking is. Ads show no domain names but SEO optimised search results. Domains as unique identifiers are different and rightly so. Volker Am 02.02.2017 um 20:08 schrieb J. Scott Evans via gnso-rpm-wg:
All:
Lori makes excellent points here.
Back in 1999, I suggested a possible solution to this issue that I thought would end all the trouble. It was during a conference call the commercial and business community had with the ICANN Board member selected to represent our interest on the original board of directors for ICANN. I believe the gentleman was from Dun & Bradstreet.
Here is my proposal:
Why not have a directory system not a first-come, first-served system? That is, anyone can get any name in any space. This system accommodates duplicate identical strings. As soon as two or more holders register the domain, it is redirected to directory page (similar to the way scrabble.com is handled). On that page, you’d find all the identical domains with a brief description.
For example:
*D**ominos.com*: A large sugar and confectionary manufacture located in Sugarland, Texas.
*D**ominos.com*: A pizza restaurant chain offering the best home delivery pizza in the business.
*Dominos.com:* The International Association of Domino Players organization. A non-profit group promoting the fun and benefit of playing domino games.
Of course, the first-come, first-serve system pushes artificial scarcity and allows speculators to run a robust (some might say extortionist) market for highly sought after domains. Again, I will repeat, that the entire public justification for expanding the DNS was that, “all the good domain names were gone” and that SME’s and emerging economies were suffering due to the lack of short, pithy domains. However, in the implementation of the expansion ICANN allowed all new registries to create “PREMIUM NAMES” specific to their top level domain. Basically, registries reserved all the dictionary terms that might be most relevant to their top level domain. These registries then charged premium prices or auctioned these domain names off to speculators who then sought to sell them in the secondary market. The problem is that ICANN has never tackled the REAL problem (IMHO) which is that domains are a commodity and the companies that run the system are also speculators in the market creating huge conflicts of interest and a desire to retain artificial scarcity to keep prices on the secondary market high.
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 <mailto:jsevans@adobe.com>
www.adobe.com
From: <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Lori Schulman <lschulman@inta.org <mailto:lschulman@inta.org>> Date: Thursday, February 2, 2017 at 10:53 AM To: George Kirikos <icann@leap.com <mailto:icann@leap.com>>, gnso-rpm-wg <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH Blog
Recognition of the importance of protecting trademark rights in the DNS has been essential to ICANN’s policymaking since before ICANN was organized. Per J Scott’s note, trademark rights are government granted rights. Domain names are not. While some domain names can function as trademarks in the legal sense of the word, domain names are licensed assets with no inherent vested rights. This makes them fundamentally different than trademarks. The difference creates the tensions that we see when discussing how trademark rights should be addressed/recognized within the domain system. The UDRP/URS were designed to keep costs down for both sides of a domain dispute as the administrative process contemplated is much less expensive and onerous than a court driven process. Having managed very large and very small portfolios of trademarks and domains throughout my career, I can tell you that this is empirically true no matter the size of the business either as a plaintiff or defendant in a dispute. Forcing trademark owners into court will force domain registrants there too and in much higher number than we see today. The UDRP is a reasonable alternative to what would otherwise be an endless stream of lawsuits overloading already burdened court systems. The use issue forms the fundamental core of trademark protection and different jurisdictions have different standards for when use must be demonstrated and what qualifies as good use. This requires deep expertise and knowledge of trademark law. If we were to create some kind of use test in the TMCH beyond what is already there, costs would significantly increase as you would need essentially a trademark office-like system for review and dispute resolution. In terms of gaming the system, so far, I have seen much more gaming by investors than I have seen by brands…as brands have been targeted by the investors in very well publicized instances.
In terms of your math, George, I would be absolutely be in favor of lowering the costs of a UDRP as it would lower barriers of entry for small businesses and noncommercial organization who are continually victimized by cyber squatters.
Lori S. Schulman
Senior Director, Internet Policy
*International Trademark Association (INTA)*
+1-202-704-0408, Skype: lsschulman
cid:image005.jpg@01D270D2.1801CD20
*From:*gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *George Kirikos *Sent:* Thursday, February 02, 2017 1:36 PM *To:* gnso-rpm-wg <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> *Subject:* Re: [gnso-rpm-wg] TMCH Blog
Hello,
(and trying to combine multiple responses in one email)
On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com> <mailto:trachtenbergm@gtlaw.com%3e> wrote:
I think you are trying to apply domain speculation thinking where it is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing.
If life isn’t fair is an acceptable justification then why change the current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can’t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement.
2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place).
3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour.
4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing.
While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere.
5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational.
6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse).
In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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All that follows is personal and not in my role as a co-chair: Let me say that I am a member of INTA’s Internet Committee who has contributed quite a lot to its work since being honored with a request to join it three years ago. That said, I cannot fully agree with statement that “domain names are licensed assets with no inherent vested rights” to the extent that domain registrants do have rights and those rights are often found in trademark law. For example, the US Anticybersquatting Consumer Protection Act has been successfully used by domain registrants to appeal erroneous UDRP decisions and maintain their ownership of valuable domains while reversing an initial finding of cybersquatting. My view is that trademarks and domains both constitute different classes of valuable intangible assets. The difference is that trademarks have the advantage of being recognized in commercial law for a long period of years, while domains have only been used commercially for two decades and hence their legal framework is far less developed. So far as lower erring the cost of the UDRP, that can certainly be looked at in phase 2 of the WG’s efforts when we reach the UDRP but I am doubtful that we can get below the $1500 threshold that seems to be the low bar to cover DRP administrative costs and the time of a single expert panelist. The URS sets a lower bar of around $500 because it is restricted to black-and-white, slam dunk cases of blatantly obvious infringement and the WG will be considering whether to recommend if it should become Consensus Policy and thereby available at legacy gTLDs. Both the UDRP and URS baseline costs are far below those of TM litigation and I can’t imagine the WG recommending that TM owners should be forced into court. But I am dubious that it’s feasible to lower UDRP costs and still have an RPM that is credible in its administration and results concerning shades of grey cases. Best to all 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 Lori Schulman Sent: Thursday, February 02, 2017 1:53 PM To: George Kirikos; gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog Recognition of the importance of protecting trademark rights in the DNS has been essential to ICANN’s policymaking since before ICANN was organized. Per J Scott’s note, trademark rights are government granted rights. Domain names are not. While some domain names can function as trademarks in the legal sense of the word, domain names are licensed assets with no inherent vested rights. This makes them fundamentally different than trademarks. The difference creates the tensions that we see when discussing how trademark rights should be addressed/recognized within the domain system. The UDRP/URS were designed to keep costs down for both sides of a domain dispute as the administrative process contemplated is much less expensive and onerous than a court driven process. Having managed very large and very small portfolios of trademarks and domains throughout my career, I can tell you that this is empirically true no matter the size of the business either as a plaintiff or defendant in a dispute. Forcing trademark owners into court will force domain registrants there too and in much higher number than we see today. The UDRP is a reasonable alternative to what would otherwise be an endless stream of lawsuits overloading already burdened court systems. The use issue forms the fundamental core of trademark protection and different jurisdictions have different standards for when use must be demonstrated and what qualifies as good use. This requires deep expertise and knowledge of trademark law. If we were to create some kind of use test in the TMCH beyond what is already there, costs would significantly increase as you would need essentially a trademark office-like system for review and dispute resolution. In terms of gaming the system, so far, I have seen much more gaming by investors than I have seen by brands…as brands have been targeted by the investors in very well publicized instances. In terms of your math, George, I would be absolutely be in favor of lowering the costs of a UDRP as it would lower barriers of entry for small businesses and noncommercial organization who are continually victimized by cyber squatters. Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman [cid:image005.jpg@01D270D2.1801CD20] From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 1:36 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH Blog Hello, (and trying to combine multiple responses in one email) On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com%3e> wrote:
I think you are trying to apply domain speculation thinking where it is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing.
If life isn’t fair is an acceptable justification then why change the current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can’t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement. 2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place). 3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour. 4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing. While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere. 5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational. 6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse). In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17
Phil, Good points. Lori Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman [cid:image005.jpg@01D270D2.1801CD20] From: Phil Corwin [mailto:psc@vlaw-dc.com] Sent: Thursday, February 02, 2017 2:24 PM To: Lori Schulman <lschulman@inta.org>; George Kirikos <icann@leap.com>; gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] TMCH Blog All that follows is personal and not in my role as a co-chair: Let me say that I am a member of INTA’s Internet Committee who has contributed quite a lot to its work since being honored with a request to join it three years ago. That said, I cannot fully agree with statement that “domain names are licensed assets with no inherent vested rights” to the extent that domain registrants do have rights and those rights are often found in trademark law. For example, the US Anticybersquatting Consumer Protection Act has been successfully used by domain registrants to appeal erroneous UDRP decisions and maintain their ownership of valuable domains while reversing an initial finding of cybersquatting. My view is that trademarks and domains both constitute different classes of valuable intangible assets. The difference is that trademarks have the advantage of being recognized in commercial law for a long period of years, while domains have only been used commercially for two decades and hence their legal framework is far less developed. So far as lower erring the cost of the UDRP, that can certainly be looked at in phase 2 of the WG’s efforts when we reach the UDRP but I am doubtful that we can get below the $1500 threshold that seems to be the low bar to cover DRP administrative costs and the time of a single expert panelist. The URS sets a lower bar of around $500 because it is restricted to black-and-white, slam dunk cases of blatantly obvious infringement and the WG will be considering whether to recommend if it should become Consensus Policy and thereby available at legacy gTLDs. Both the UDRP and URS baseline costs are far below those of TM litigation and I can’t imagine the WG recommending that TM owners should be forced into court. But I am dubious that it’s feasible to lower UDRP costs and still have an RPM that is credible in its administration and results concerning shades of grey cases. Best to all 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> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Lori Schulman Sent: Thursday, February 02, 2017 1:53 PM To: George Kirikos; gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog Recognition of the importance of protecting trademark rights in the DNS has been essential to ICANN’s policymaking since before ICANN was organized. Per J Scott’s note, trademark rights are government granted rights. Domain names are not. While some domain names can function as trademarks in the legal sense of the word, domain names are licensed assets with no inherent vested rights. This makes them fundamentally different than trademarks. The difference creates the tensions that we see when discussing how trademark rights should be addressed/recognized within the domain system. The UDRP/URS were designed to keep costs down for both sides of a domain dispute as the administrative process contemplated is much less expensive and onerous than a court driven process. Having managed very large and very small portfolios of trademarks and domains throughout my career, I can tell you that this is empirically true no matter the size of the business either as a plaintiff or defendant in a dispute. Forcing trademark owners into court will force domain registrants there too and in much higher number than we see today. The UDRP is a reasonable alternative to what would otherwise be an endless stream of lawsuits overloading already burdened court systems. The use issue forms the fundamental core of trademark protection and different jurisdictions have different standards for when use must be demonstrated and what qualifies as good use. This requires deep expertise and knowledge of trademark law. If we were to create some kind of use test in the TMCH beyond what is already there, costs would significantly increase as you would need essentially a trademark office-like system for review and dispute resolution. In terms of gaming the system, so far, I have seen much more gaming by investors than I have seen by brands…as brands have been targeted by the investors in very well publicized instances. In terms of your math, George, I would be absolutely be in favor of lowering the costs of a UDRP as it would lower barriers of entry for small businesses and noncommercial organization who are continually victimized by cyber squatters. Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman [cid:image005.jpg@01D270D2.1801CD20] From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 1:36 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH Blog Hello, (and trying to combine multiple responses in one email) On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com%3e> wrote:
I think you are trying to apply domain speculation thinking where it is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing.
If life isn’t fair is an acceptable justification then why change the current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can’t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement. 2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place). 3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour. 4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing. While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere. 5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational. 6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse). In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17 ________________________________
Thanks Lori 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: Lori Schulman [mailto:lschulman@inta.org] Sent: Thursday, February 02, 2017 2:46 PM To: Phil Corwin; George Kirikos; gnso-rpm-wg Subject: RE: [gnso-rpm-wg] TMCH Blog Phil, Good points. Lori Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman [cid:image005.jpg@01D270D2.1801CD20] From: Phil Corwin [mailto:psc@vlaw-dc.com] Sent: Thursday, February 02, 2017 2:24 PM To: Lori Schulman <lschulman@inta.org<mailto:lschulman@inta.org>>; George Kirikos <icann@leap.com<mailto:icann@leap.com>>; gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [gnso-rpm-wg] TMCH Blog All that follows is personal and not in my role as a co-chair: Let me say that I am a member of INTA’s Internet Committee who has contributed quite a lot to its work since being honored with a request to join it three years ago. That said, I cannot fully agree with statement that “domain names are licensed assets with no inherent vested rights” to the extent that domain registrants do have rights and those rights are often found in trademark law. For example, the US Anticybersquatting Consumer Protection Act has been successfully used by domain registrants to appeal erroneous UDRP decisions and maintain their ownership of valuable domains while reversing an initial finding of cybersquatting. My view is that trademarks and domains both constitute different classes of valuable intangible assets. The difference is that trademarks have the advantage of being recognized in commercial law for a long period of years, while domains have only been used commercially for two decades and hence their legal framework is far less developed. So far as lower erring the cost of the UDRP, that can certainly be looked at in phase 2 of the WG’s efforts when we reach the UDRP but I am doubtful that we can get below the $1500 threshold that seems to be the low bar to cover DRP administrative costs and the time of a single expert panelist. The URS sets a lower bar of around $500 because it is restricted to black-and-white, slam dunk cases of blatantly obvious infringement and the WG will be considering whether to recommend if it should become Consensus Policy and thereby available at legacy gTLDs. Both the UDRP and URS baseline costs are far below those of TM litigation and I can’t imagine the WG recommending that TM owners should be forced into court. But I am dubious that it’s feasible to lower UDRP costs and still have an RPM that is credible in its administration and results concerning shades of grey cases. Best to all 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> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Lori Schulman Sent: Thursday, February 02, 2017 1:53 PM To: George Kirikos; gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog Recognition of the importance of protecting trademark rights in the DNS has been essential to ICANN’s policymaking since before ICANN was organized. Per J Scott’s note, trademark rights are government granted rights. Domain names are not. While some domain names can function as trademarks in the legal sense of the word, domain names are licensed assets with no inherent vested rights. This makes them fundamentally different than trademarks. The difference creates the tensions that we see when discussing how trademark rights should be addressed/recognized within the domain system. The UDRP/URS were designed to keep costs down for both sides of a domain dispute as the administrative process contemplated is much less expensive and onerous than a court driven process. Having managed very large and very small portfolios of trademarks and domains throughout my career, I can tell you that this is empirically true no matter the size of the business either as a plaintiff or defendant in a dispute. Forcing trademark owners into court will force domain registrants there too and in much higher number than we see today. The UDRP is a reasonable alternative to what would otherwise be an endless stream of lawsuits overloading already burdened court systems. The use issue forms the fundamental core of trademark protection and different jurisdictions have different standards for when use must be demonstrated and what qualifies as good use. This requires deep expertise and knowledge of trademark law. If we were to create some kind of use test in the TMCH beyond what is already there, costs would significantly increase as you would need essentially a trademark office-like system for review and dispute resolution. In terms of gaming the system, so far, I have seen much more gaming by investors than I have seen by brands…as brands have been targeted by the investors in very well publicized instances. In terms of your math, George, I would be absolutely be in favor of lowering the costs of a UDRP as it would lower barriers of entry for small businesses and noncommercial organization who are continually victimized by cyber squatters. Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman [cid:image005.jpg@01D270D2.1801CD20] From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 1:36 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH Blog Hello, (and trying to combine multiple responses in one email) On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com%3e> wrote:
I think you are trying to apply domain speculation thinking where it is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing.
If life isn’t fair is an acceptable justification then why change the current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can’t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement. 2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place). 3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour. 4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing. While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere. 5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational. 6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse). In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17 ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17
Phil, While both trademarks and domain names might be intangible assets, one significant difference between them is that a trademark gives one legal rights to prohibit others from using the same or confusingly similar trademark in any medium (print, online, radio, TLDs, a sign, etc) generally (the law is different in every jurisdiction) when such use is likely to cause confusion as to source, sponsorship, or affiliation with the holder of the trademark registration. A domain name (at least gTLDs) on the other hand, conveys no similar rights. Any rights to the domain name are contractual in nature only and based on the registration agreement with the registrar (which by the way usually permits the registrar to cancel, modify, or suspend the domain name basically at will) and only prohibit others from registering the same exact domain name because the structure of the DNS requires uniqueness in domain names. 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<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Thursday, February 02, 2017 1:24 PM To: Lori Schulman; George Kirikos; gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog All that follows is personal and not in my role as a co-chair: Let me say that I am a member of INTA’s Internet Committee who has contributed quite a lot to its work since being honored with a request to join it three years ago. That said, I cannot fully agree with statement that “domain names are licensed assets with no inherent vested rights” to the extent that domain registrants do have rights and those rights are often found in trademark law. For example, the US Anticybersquatting Consumer Protection Act has been successfully used by domain registrants to appeal erroneous UDRP decisions and maintain their ownership of valuable domains while reversing an initial finding of cybersquatting. My view is that trademarks and domains both constitute different classes of valuable intangible assets. The difference is that trademarks have the advantage of being recognized in commercial law for a long period of years, while domains have only been used commercially for two decades and hence their legal framework is far less developed. So far as lower erring the cost of the UDRP, that can certainly be looked at in phase 2 of the WG’s efforts when we reach the UDRP but I am doubtful that we can get below the $1500 threshold that seems to be the low bar to cover DRP administrative costs and the time of a single expert panelist. The URS sets a lower bar of around $500 because it is restricted to black-and-white, slam dunk cases of blatantly obvious infringement and the WG will be considering whether to recommend if it should become Consensus Policy and thereby available at legacy gTLDs. Both the UDRP and URS baseline costs are far below those of TM litigation and I can’t imagine the WG recommending that TM owners should be forced into court. But I am dubious that it’s feasible to lower UDRP costs and still have an RPM that is credible in its administration and results concerning shades of grey cases. Best to all 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> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Lori Schulman Sent: Thursday, February 02, 2017 1:53 PM To: George Kirikos; gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog Recognition of the importance of protecting trademark rights in the DNS has been essential to ICANN’s policymaking since before ICANN was organized. Per J Scott’s note, trademark rights are government granted rights. Domain names are not. While some domain names can function as trademarks in the legal sense of the word, domain names are licensed assets with no inherent vested rights. This makes them fundamentally different than trademarks. The difference creates the tensions that we see when discussing how trademark rights should be addressed/recognized within the domain system. The UDRP/URS were designed to keep costs down for both sides of a domain dispute as the administrative process contemplated is much less expensive and onerous than a court driven process. Having managed very large and very small portfolios of trademarks and domains throughout my career, I can tell you that this is empirically true no matter the size of the business either as a plaintiff or defendant in a dispute. Forcing trademark owners into court will force domain registrants there too and in much higher number than we see today. The UDRP is a reasonable alternative to what would otherwise be an endless stream of lawsuits overloading already burdened court systems. The use issue forms the fundamental core of trademark protection and different jurisdictions have different standards for when use must be demonstrated and what qualifies as good use. This requires deep expertise and knowledge of trademark law. If we were to create some kind of use test in the TMCH beyond what is already there, costs would significantly increase as you would need essentially a trademark office-like system for review and dispute resolution. In terms of gaming the system, so far, I have seen much more gaming by investors than I have seen by brands…as brands have been targeted by the investors in very well publicized instances. In terms of your math, George, I would be absolutely be in favor of lowering the costs of a UDRP as it would lower barriers of entry for small businesses and noncommercial organization who are continually victimized by cyber squatters. Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman [cid:image005.jpg@01D270D2.1801CD20] From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 1:36 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH Blog Hello, (and trying to combine multiple responses in one email) On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com%3e> wrote:
I think you are trying to apply domain speculation thinking where it is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing.
If life isn’t fair is an acceptable justification then why change the current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can’t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement. 2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place). 3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour. 4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing. While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere. 5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational. 6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse). In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors. Sincerely, George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIGaQ&c... <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwMGaQ&c...> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li... <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...> ________________________________ No virus found in this message. Checked by AVG - www.avg.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.avg.com_email-2Dsign...> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17 ---------------------------------------------------------------------- If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com, and do not use or disseminate such information.
The problem of ICANNs solution seems to be that they are sometimes overdesigned and overprotect certain rights while at the same time discriminating against legitimate use. For example, while trade marks must be reasonable protected against reasonable abuse, that does not necessarily equate to early exclusive sunrise access as that "solution" frustrates all potential registrants who would also have have a legitimate right to register and use of the domain name string without infringing upon any trademark rights for the same string, yet the trade mark holder is given prefered access. With the protection mechanisms currently in place, the community has essentially accepted overprotection and given trademark holders rights that go beyond the legal protections and rights trademark holders enjoy. The positive trade-off is substantial savings on the side of TM holders as they can pro-actively prevent certain abusive uses instead of having to taking a reactive and costly legal approach after the fact. And of course the current approach also enables abuse by trademark shopping by encouraging registrations of trash marks just to get access to certain desirable domain names. Volker Am 02.02.2017 um 19:53 schrieb Lori Schulman:
Recognition of the importance of protecting trademark rights in the DNS has been essential to ICANN’s policymaking since before ICANN was organized. Per J Scott’s note, trademark rights are government granted rights. Domain names are not. While some domain names can function as trademarks in the legal sense of the word, domain names are licensed assets with no inherent vested rights. This makes them fundamentally different than trademarks. The difference creates the tensions that we see when discussing how trademark rights should be addressed/recognized within the domain system. The UDRP/URS were designed to keep costs down for both sides of a domain dispute as the administrative process contemplated is much less expensive and onerous than a court driven process. Having managed very large and very small portfolios of trademarks and domains throughout my career, I can tell you that this is empirically true no matter the size of the business either as a plaintiff or defendant in a dispute. Forcing trademark owners into court will force domain registrants there too and in much higher number than we see today. The UDRP is a reasonable alternative to what would otherwise be an endless stream of lawsuits overloading already burdened court systems. The use issue forms the fundamental core of trademark protection and different jurisdictions have different standards for when use must be demonstrated and what qualifies as good use. This requires deep expertise and knowledge of trademark law. If we were to create some kind of use test in the TMCH beyond what is already there, costs would significantly increase as you would need essentially a trademark office-like system for review and dispute resolution. In terms of gaming the system, so far, I have seen much more gaming by investors than I have seen by brands…as brands have been targeted by the investors in very well publicized instances.
In terms of your math, George, I would be absolutely be in favor of lowering the costs of a UDRP as it would lower barriers of entry for small businesses and noncommercial organization who are continually victimized by cyber squatters.
Lori S. Schulman
Senior Director, Internet Policy
*International Trademark Association (INTA)*
+1-202-704-0408, Skype: lsschulman
cid:image005.jpg@01D270D2.1801CD20
*From:*gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *George Kirikos *Sent:* Thursday, February 02, 2017 1:36 PM *To:* gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] TMCH Blog
Hello,
(and trying to combine multiple responses in one email)
On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com> <mailto:trachtenbergm@gtlaw.com%3e> wrote:
I think you are trying to apply domain speculation thinking where it is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing.
If life isn’t fair is an acceptable justification then why change the current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can’t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement.
2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place).
3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour.
4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing.
While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere.
5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational.
6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse).
In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
-- Bei weiteren Fragen stehen wir Ihnen gerne zur Verfügung. Mit freundlichen Grüßen, Volker A. Greimann - Rechtsabteilung - Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net Web: www.key-systems.net / www.RRPproxy.net www.domaindiscount24.com / www.BrandShelter.com Folgen Sie uns bei Twitter oder werden Sie unser Fan bei Facebook: www.facebook.com/KeySystems www.twitter.com/key_systems Geschäftsführer: Alexander Siffrin Handelsregister Nr.: HR B 18835 - Saarbruecken Umsatzsteuer ID.: DE211006534 Member of the KEYDRIVE GROUP www.keydrive.lu Der Inhalt dieser Nachricht ist vertraulich und nur für den angegebenen Empfänger bestimmt. Jede Form der Kenntnisgabe, Veröffentlichung oder Weitergabe an Dritte durch den Empfänger ist unzulässig. Sollte diese Nachricht nicht für Sie bestimmt sein, so bitten wir Sie, sich mit uns per E-Mail oder telefonisch in Verbindung zu setzen. -------------------------------------------- Should you have any further questions, please do not hesitate to contact us. Best regards, Volker A. Greimann - legal department - Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net Web: www.key-systems.net / www.RRPproxy.net www.domaindiscount24.com / www.BrandShelter.com Follow us on Twitter or join our fan community on Facebook and stay updated: www.facebook.com/KeySystems www.twitter.com/key_systems CEO: Alexander Siffrin Registration No.: HR B 18835 - Saarbruecken V.A.T. ID.: DE211006534 Member of the KEYDRIVE GROUP www.keydrive.lu This e-mail and its attachments is intended only for the person to whom it is addressed. Furthermore it is not permitted to publish any content of this email. You must not use, disclose, copy, print or rely on this e-mail. If an addressing or transmission error has misdirected this e-mail, kindly notify the author by replying to this e-mail or contacting us by telephone.
Volker, I agree with your description. However, the missing point is the value if any to the non-Trademark Holders (I don¹t see any benefit). IMHO the trademark holders are getting increased rights AND the benefit of low cost dispute resolution. Paul From: <gnso-rpm-wg-bounces@icann.org> on behalf of Volker Greimann <vgreimann@key-systems.net> Date: Friday, February 3, 2017 at 11:11 AM To: <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH Blog
The problem of ICANNs solution seems to be that they are sometimes overdesigned and overprotect certain rights while at the same time discriminating against legitimate use. For example, while trade marks must be reasonable protected against reasonable abuse, that does not necessarily equate to early exclusive sunrise access as that "solution" frustrates all potential registrants who would also have have a legitimate right to register and use of the domain name string without infringing upon any trademark rights for the same string, yet the trade mark holder is given prefered access.
With the protection mechanisms currently in place, the community has essentially accepted overprotection and given trademark holders rights that go beyond the legal protections and rights trademark holders enjoy. The positive trade-off is substantial savings on the side of TM holders as they can pro-actively prevent certain abusive uses instead of having to taking a reactive and costly legal approach after the fact.
And of course the current approach also enables abuse by trademark shopping by encouraging registrations of trash marks just to get access to certain desirable domain names.
Volker
Am 02.02.2017 um 19:53 schrieb Lori Schulman:
Recognition of the importance of protecting trademark rights in the DNS has been essential to ICANN¹s policymaking since before ICANN was organized. Per J Scott¹s note, trademark rights are government granted rights. Domain names are not. While some domain names can function as trademarks in the legal sense of the word, domain names are licensed assets with no inherent vested rights. This makes them fundamentally different than trademarks. The difference creates the tensions that we see when discussing how trademark rights should be addressed/recognized within the domain system. The UDRP/URS were designed to keep costs down for both sides of a domain dispute as the administrative process contemplated is much less expensive and onerous than a court driven process. Having managed very large and very small portfolios of trademarks and domains throughout my career, I can tell you that this is empirically true no matter the size of the business either as a plaintiff or defendant in a dispute. Forcing trademark owners into court will force domain registrants there too and in much higher number than we see today. The UDRP is a reasonable alternative to what would otherwise be an endless stream of lawsuits overloading already burdened court systems. The use issue forms the fundamental core of trademark protection and different jurisdictions have different standards for when use must be demonstrated and what qualifies as good use. This requires deep expertise and knowledge of trademark law. If we were to create some kind of use test in the TMCH beyond what is already there, costs would significantly increase as you would need essentially a trademark office-like system for review and dispute resolution. In terms of gaming the system, so far, I have seen much more gaming by investors than I have seen by brandsas brands have been targeted by the investors in very well publicized instances.
In terms of your math, George, I would be absolutely be in favor of lowering the costs of a UDRP as it would lower barriers of entry for small businesses and noncommercial organization who are continually victimized by cyber squatters.
Lori S. Schulman
Senior Director, Internet Policy
International Trademark Association (INTA)
+1-202-704-0408, Skype: lsschulman
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 1:36 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org> <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH Blog
Hello,
(and trying to combine multiple responses in one email)
On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com> <mailto:trachtenbergm@gtlaw.com%3e> wrote:
I think you are trying to apply domain speculation thinking where it is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing.
If life isn¹t fair is an acceptable justification then why change the current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can¹t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement.
2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place).
3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour.
4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing.
While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere.
5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational.
6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse).
In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.orghttps://mm.icann.org/mailman/listinfo/gnso-rpm-wg
-- Bei weiteren Fragen stehen wir Ihnen gerne zur Verfügung.
Mit freundlichen Grüßen,
Volker A. Greimann - Rechtsabteilung -
Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net
Web: www.key-systems.net <http://www.key-systems.net> / www.RRPproxy.net <http://www.RRPproxy.net> www.domaindiscount24.com <http://www.domaindiscount24.com> / www.BrandShelter.com <http://www.BrandShelter.com>
Folgen Sie uns bei Twitter oder werden Sie unser Fan bei Facebook: www.facebook.com/KeySystems <http://www.facebook.com/KeySystems> www.twitter.com/key_systems <http://www.twitter.com/key_systems>
Geschäftsführer: Alexander Siffrin Handelsregister Nr.: HR B 18835 - Saarbruecken Umsatzsteuer ID.: DE211006534
Member of the KEYDRIVE GROUP www.keydrive.lu <http://www.keydrive.lu>
Der Inhalt dieser Nachricht ist vertraulich und nur für den angegebenen Empfänger bestimmt. Jede Form der Kenntnisgabe, Veröffentlichung oder Weitergabe an Dritte durch den Empfänger ist unzulässig. Sollte diese Nachricht nicht für Sie bestimmt sein, so bitten wir Sie, sich mit uns per E-Mail oder telefonisch in Verbindung zu setzen.
--------------------------------------------
Should you have any further questions, please do not hesitate to contact us.
Best regards,
Volker A. Greimann - legal department -
Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net
Web: www.key-systems.net <http://www.key-systems.net> / www.RRPproxy.net <http://www.RRPproxy.net> www.domaindiscount24.com <http://www.domaindiscount24.com> / www.BrandShelter.com <http://www.BrandShelter.com>
Follow us on Twitter or join our fan community on Facebook and stay updated: www.facebook.com/KeySystems <http://www.facebook.com/KeySystems> www.twitter.com/key_systems <http://www.twitter.com/key_systems>
CEO: Alexander Siffrin Registration No.: HR B 18835 - Saarbruecken V.A.T. ID.: DE211006534
Member of the KEYDRIVE GROUP www.keydrive.lu <http://www.keydrive.lu>
This e-mail and its attachments is intended only for the person to whom it is addressed. Furthermore it is not permitted to publish any content of this email. You must not use, disclose, copy, print or rely on this e-mail. If an addressing or transmission error has misdirected this e-mail, kindly notify the author by replying to this e-mail or contacting us by telephone.
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
To continue the "economics tutorial", this is all directly related to the concept of signalling: https://en.wikipedia.org/wiki/Signalling_(economics) The classic example comes from the education credentials market. How does a job candidate signal that they're a high quality hire? The idea is that high quality job candidates can obtain good degrees, and it's much costlier for low quality job candidates to get those same credentials. Let's apply this to the TMCH -- implicitly, trademark holders are jumping through hoops at present to determine that their marks are "worthy" of protection. The hoops they're jumping through are: 1. pay the TMCH fees, and 2. show evidence of national TM registration in a jurisdiction, and 3. show proof of use However, unlike the academic credentials market above, where "good" and "bad" job candidates face different costs, in the TMCH the "good" and "bad" trademark holders face essentially the SAME costs! (i.e. the fees are the same, one can get a Pakistani TM for under $10, and one can throw up a webpage for free to show "proof of use"). In other words, the mechanisms for signalling are entirely broken in the TMCH. Economics 101. The "bad guys" certainly know it's broken. As a policymaking body, we should understand *why* it's broken, and either (1) make stronger signals to differentiate and distinguish between worthy and unworthy marks, or (2) as I suggested earlier, set an explicit direct price to change the balance and behaviour directly. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Thu, Feb 2, 2017 at 1:36 PM, George Kirikos <icann@leap.com> wrote:
Hello,
(and trying to combine multiple responses in one email)
On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com> wrote:
I think you are trying to apply domain speculation thinking where it is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing.
If life isn’t fair is an acceptable justification then why change the current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can’t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement.
2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place).
3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour.
4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing.
While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere.
5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational.
6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse).
In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
George, Thank you for your economics tutorial based on Wikipedia - certainly an authoritative source. Regardless I don’t think your application of this to the TMCH is appropriate and disagree with your description of how the TMCH functions. When trademark holders submit their registrations to the TMCH, they are not trying to prove that their marks are "worthy" of protection. The fact that they have registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction. 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 12:58 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog To continue the "economics tutorial", this is all directly related to the concept of signalling: https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.org_wiki_S... The classic example comes from the education credentials market. How does a job candidate signal that they're a high quality hire? The idea is that high quality job candidates can obtain good degrees, and it's much costlier for low quality job candidates to get those same credentials. Let's apply this to the TMCH -- implicitly, trademark holders are jumping through hoops at present to determine that their marks are "worthy" of protection. The hoops they're jumping through are: 1. pay the TMCH fees, and 2. show evidence of national TM registration in a jurisdiction, and 3. show proof of use However, unlike the academic credentials market above, where "good" and "bad" job candidates face different costs, in the TMCH the "good" and "bad" trademark holders face essentially the SAME costs! (i.e. the fees are the same, one can get a Pakistani TM for under $10, and one can throw up a webpage for free to show "proof of use"). In other words, the mechanisms for signalling are entirely broken in the TMCH. Economics 101. The "bad guys" certainly know it's broken. As a policymaking body, we should understand *why* it's broken, and either (1) make stronger signals to differentiate and distinguish between worthy and unworthy marks, or (2) as I suggested earlier, set an explicit direct price to change the balance and behaviour directly. Sincerely, George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIGaQ&c... On Thu, Feb 2, 2017 at 1:36 PM, George Kirikos <icann@leap.com> wrote:
Hello,
(and trying to combine multiple responses in one email)
On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com> wrote:
I think you are trying to apply domain speculation thinking where it is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing.
If life isn’t fair is an acceptable justification then why change the current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can’t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement.
2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place).
3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour.
4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing.
While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere.
5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational.
6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse).
In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors.
Sincerely,
George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=Dw IGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBz Cxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r2 4YJ9m6g71cr0vEGbww0X9qgsNDU&e=
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Marc: I used the Wikipedia link as a fairly neutral starting point for the theory of signalling, and not "authoritative". Would you consider the Nobel Prize in Economics for work on signalling to be "authoritative" enough for you? http://www.nobelprize.org/nobel_prizes/economic-sciences/laureates/2001/pres... Or should I have provided (like most of the posts to this list) no external references at all, and simply allow people to go to Google on their own? Which aspect of the concept of signalling do you disagree with? As for "registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction." Hmmm, that's not correct, given that TM registrations can be and are disputed and cancelled. Trademark registration is *evidence* and *notice* of a *claim* to a trademark right (perhaps even a strong claim), but are not "proof" of anything as a "fact." Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Thu, Feb 2, 2017 at 2:06 PM, <trachtenbergm@gtlaw.com> wrote:
George,
Thank you for your economics tutorial based on Wikipedia - certainly an authoritative source.
Regardless I don’t think your application of this to the TMCH is appropriate and disagree with your description of how the TMCH functions. When trademark holders submit their registrations to the TMCH, they are not trying to prove that their marks are "worthy" of protection. The fact that they have registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction.
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 12:58 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog
To continue the "economics tutorial", this is all directly related to the concept of signalling:
https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.org_wiki_S...
The classic example comes from the education credentials market. How does a job candidate signal that they're a high quality hire? The idea is that high quality job candidates can obtain good degrees, and it's much costlier for low quality job candidates to get those same credentials.
Let's apply this to the TMCH -- implicitly, trademark holders are jumping through hoops at present to determine that their marks are "worthy" of protection. The hoops they're jumping through are:
1. pay the TMCH fees, and 2. show evidence of national TM registration in a jurisdiction, and 3. show proof of use
However, unlike the academic credentials market above, where "good" and "bad" job candidates face different costs, in the TMCH the "good" and "bad" trademark holders face essentially the SAME costs! (i.e. the fees are the same, one can get a Pakistani TM for under $10, and one can throw up a webpage for free to show "proof of use").
In other words, the mechanisms for signalling are entirely broken in the TMCH. Economics 101. The "bad guys" certainly know it's broken. As a policymaking body, we should understand *why* it's broken, and either (1) make stronger signals to differentiate and distinguish between worthy and unworthy marks, or (2) as I suggested earlier, set an explicit direct price to change the balance and behaviour directly.
Sincerely,
George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIGaQ&c...
On Thu, Feb 2, 2017 at 1:36 PM, George Kirikos <icann@leap.com> wrote:
Hello,
(and trying to combine multiple responses in one email)
On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com> wrote:
I think you are trying to apply domain speculation thinking where it is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing.
If life isn’t fair is an acceptable justification then why change the current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can’t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement.
2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place).
3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour.
4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing.
While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere.
5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational.
6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse).
In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors.
Sincerely,
George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=Dw IGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBz Cxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r2 4YJ9m6g71cr0vEGbww0X9qgsNDU&e=
gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...
---------------------------------------------------------------------- If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com, and do not use or disseminate such information.
George: The evidentiary weight of a trademark registration differs from jurisdiction to jurisdiction. In the US, a certificate of registration from the USPTO does have some proof value, that is subject to certain defenses for 5 years and a lesser set of defenses should the mark reach incontestable status after 5 years. I think making sweeping statements like those contained in your closing paragraph are not helpful. 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 On 2/2/17, 11:19 AM, "gnso-rpm-wg-bounces@icann.org on behalf of George Kirikos" <gnso-rpm-wg-bounces@icann.org on behalf of icann@leap.com> wrote:
Marc: I used the Wikipedia link as a fairly neutral starting point for the theory of signalling, and not "authoritative". Would you consider the Nobel Prize in Economics for work on signalling to be "authoritative" enough for you?
http://www.nobelprize.org/nobel_prizes/economic-sciences/laureates/2001/pr ess.html
Or should I have provided (like most of the posts to this list) no external references at all, and simply allow people to go to Google on their own? Which aspect of the concept of signalling do you disagree with?
As for "registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction."
Hmmm, that's not correct, given that TM registrations can be and are disputed and cancelled. Trademark registration is *evidence* and *notice* of a *claim* to a trademark right (perhaps even a strong claim), but are not "proof" of anything as a "fact."
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Thu, Feb 2, 2017 at 2:06 PM, <trachtenbergm@gtlaw.com> wrote:
George,
Thank you for your economics tutorial based on Wikipedia - certainly an authoritative source.
Regardless I don¹t think your application of this to the TMCH is appropriate and disagree with your description of how the TMCH functions. When trademark holders submit their registrations to the TMCH, they are not trying to prove that their marks are "worthy" of protection. The fact that they have registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction.
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 12:58 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog
To continue the "economics tutorial", this is all directly related to the concept of signalling:
https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.org_wik i_Signalling-5F-28economics-29&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7e HT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3J WuGXUa1FwI&s=_-ZU3Mu11NJjQnuoQdYhV9epeypY8SYFTzL35TJgjqs&e=
The classic example comes from the education credentials market. How does a job candidate signal that they're a high quality hire? The idea is that high quality job candidates can obtain good degrees, and it's much costlier for low quality job candidates to get those same credentials.
Let's apply this to the TMCH -- implicitly, trademark holders are jumping through hoops at present to determine that their marks are "worthy" of protection. The hoops they're jumping through are:
1. pay the TMCH fees, and 2. show evidence of national TM registration in a jurisdiction, and 3. show proof of use
However, unlike the academic credentials market above, where "good" and "bad" job candidates face different costs, in the TMCH the "good" and "bad" trademark holders face essentially the SAME costs! (i.e. the fees are the same, one can get a Pakistani TM for under $10, and one can throw up a webpage for free to show "proof of use").
In other words, the mechanisms for signalling are entirely broken in the TMCH. Economics 101. The "bad guys" certainly know it's broken. As a policymaking body, we should understand *why* it's broken, and either (1) make stronger signals to differentiate and distinguish between worthy and unworthy marks, or (2) as I suggested earlier, set an explicit direct price to change the balance and behaviour directly.
Sincerely,
George Kirikos 416-588-0269
https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIGa Q&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c& m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r24YJ9m6g71 cr0vEGbww0X9qgsNDU&e=
On Thu, Feb 2, 2017 at 1:36 PM, George Kirikos <icann@leap.com> wrote:
Hello,
(and trying to combine multiple responses in one email)
On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com> wrote:
I think you are trying to apply domain speculation thinking where it is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing.
If life isn¹t fair is an acceptable justification then why change the current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can¹t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement.
2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place).
3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour.
4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing.
While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere.
5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational.
6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse).
In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors.
Sincerely,
George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=Dw IGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBz Cxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r2 4YJ9m6g71cr0vEGbww0X9qgsNDU&e=
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https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman _listinfo_gnso-2Drpm-2Dwg&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-Uo CXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXU a1FwI&s=g9D6x_5yyONXbDzXKuaVg7WsGRorHP9u7RikcGTnhtY&e=
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J. Scott (and others who replied afterwards), On Thu, Feb 2, 2017 at 2:23 PM, J. Scott Evans <jsevans@adobe.com> wrote:
The evidentiary weight of a trademark registration differs from jurisdiction to jurisdiction. In the US, a certificate of registration from the USPTO does have some proof value, that is subject to certain defenses for 5 years and a lesser set of defenses should the mark reach incontestable status after 5 years. I think making sweeping statements like those contained in your closing paragraph are not helpful.
I was simply responding to Marc's "sweeping statement" (and assertion of "fact"), which I note you were not quick to characterize as "not helpful". It's a fact that TM registrations can be and are disputed. Where are alleged TM rights enforced against alleged infringers? Answer: the courts. It's in the courts where *claims*, as *evidenced* by a TM registration (but not "proven" by any means) are put to the test. That's where facts are determined. "Facts" aren't determined by a piece of paper sent to a Pakistani TM office along with $10, despite what some might have us believe. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
One trademark registration in most countries costs significantly more than $10. -----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 1:43 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog J. Scott (and others who replied afterwards), On Thu, Feb 2, 2017 at 2:23 PM, J. Scott Evans <jsevans@adobe.com> wrote:
The evidentiary weight of a trademark registration differs from jurisdiction to jurisdiction. In the US, a certificate of registration from the USPTO does have some proof value, that is subject to certain defenses for 5 years and a lesser set of defenses should the mark reach incontestable status after 5 years. I think making sweeping statements like those contained in your closing paragraph are not helpful.
I was simply responding to Marc's "sweeping statement" (and assertion of "fact"), which I note you were not quick to characterize as "not helpful". It's a fact that TM registrations can be and are disputed. Where are alleged TM rights enforced against alleged infringers? Answer: the courts. It's in the courts where *claims*, as *evidenced* by a TM registration (but not "proven" by any means) are put to the test. That's where facts are determined. "Facts" aren't determined by a piece of paper sent to a Pakistani TM office along with $10, despite what some might have us believe. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ CONFIDENTIALITY NOTICE: This e-mail and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed and may contain confidential and privileged information protected by law. If you received this e-mail in error, any review, use, dissemination, distribution, or copying of the e-mail is strictly prohibited. Please notify the sender immediately by return e-mail and delete all copies from your system.
Folks: I feel like we've gotten off on quite a tangent (or 10), at least in relation to the original post. Without arguing the fundamentals of what a trademark is or what rights it bestows, is there anyone out there who thinks that the example in the blog is how the TMCH is intended to work? Allowing this registrant/mark holder to obtain those "the.example" names seems absolutely exploitative. To say that "any system can be gamed, so why bother fixing it" - that analysis works for any number of examples this group will come across (premium pricing of sunrise domains comes to mind) and doesn't advance the conversation constructively. To me the question is, is this exploitation something that we should look at fixing or addressing within this group? Brian Brian Cimbolic Deputy General Counsel, Public Interest Registry Office: +1 703 889-5752| Mobile: + 1 571 385-7871| www.pir.org | Facebook | Twitter | Instagram | YouTube Confidentiality Note: Proprietary and confidential to Public Interest Registry. If received in error, please inform sender and then delete. -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Reuter, Renee M Sent: Thursday, February 02, 2017 2:47 PM To: George Kirikos <icann@leap.com>; gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH Blog One trademark registration in most countries costs significantly more than $10. -----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 1:43 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog J. Scott (and others who replied afterwards), On Thu, Feb 2, 2017 at 2:23 PM, J. Scott Evans <jsevans@adobe.com> wrote:
The evidentiary weight of a trademark registration differs from jurisdiction to jurisdiction. In the US, a certificate of registration from the USPTO does have some proof value, that is subject to certain defenses for 5 years and a lesser set of defenses should the mark reach incontestable status after 5 years. I think making sweeping statements like those contained in your closing paragraph are not helpful.
I was simply responding to Marc's "sweeping statement" (and assertion of "fact"), which I note you were not quick to characterize as "not helpful". It's a fact that TM registrations can be and are disputed. Where are alleged TM rights enforced against alleged infringers? Answer: the courts. It's in the courts where *claims*, as *evidenced* by a TM registration (but not "proven" by any means) are put to the test. That's where facts are determined. "Facts" aren't determined by a piece of paper sent to a Pakistani TM office along with $10, despite what some might have us believe. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ CONFIDENTIALITY NOTICE: This e-mail and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed and may contain confidential and privileged information protected by law. If you received this e-mail in error, any review, use, dissemination, distribution, or copying of the e-mail is strictly prohibited. Please notify the sender immediately by return e-mail and delete all copies from your system. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Brian, Just to clarify, I never said "any system can be gamed, so why bother fixing it" and do not think anyone else did either. Rather, I said that the goal for any system or program should be to minimize the risk of gaming to the extent possible without sacrificing the goal and benefits of the system or program. 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 Brian F. Cimbolic Sent: Thursday, February 02, 2017 1:56 PM To: Reuter, Renee M; George Kirikos; gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog Folks: I feel like we've gotten off on quite a tangent (or 10), at least in relation to the original post. Without arguing the fundamentals of what a trademark is or what rights it bestows, is there anyone out there who thinks that the example in the blog is how the TMCH is intended to work? Allowing this registrant/mark holder to obtain those "the.example" names seems absolutely exploitative. To say that "any system can be gamed, so why bother fixing it" - that analysis works for any number of examples this group will come across (premium pricing of sunrise domains comes to mind) and doesn't advance the conversation constructively. To me the question is, is this exploitation something that we should look at fixing or addressing within this group? Brian Brian Cimbolic Deputy General Counsel, Public Interest Registry Office: +1 703 889-5752| Mobile: + 1 571 385-7871| www.pir.org | Facebook | Twitter | Instagram | YouTube Confidentiality Note: Proprietary and confidential to Public Interest Registry. If received in error, please inform sender and then delete. -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Reuter, Renee M Sent: Thursday, February 02, 2017 2:47 PM To: George Kirikos <icann@leap.com>; gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH Blog One trademark registration in most countries costs significantly more than $10. -----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 1:43 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog J. Scott (and others who replied afterwards), On Thu, Feb 2, 2017 at 2:23 PM, J. Scott Evans <jsevans@adobe.com> wrote:
The evidentiary weight of a trademark registration differs from jurisdiction to jurisdiction. In the US, a certificate of registration from the USPTO does have some proof value, that is subject to certain defenses for 5 years and a lesser set of defenses should the mark reach incontestable status after 5 years. I think making sweeping statements like those contained in your closing paragraph are not helpful.
I was simply responding to Marc's "sweeping statement" (and assertion of "fact"), which I note you were not quick to characterize as "not helpful". It's a fact that TM registrations can be and are disputed. Where are alleged TM rights enforced against alleged infringers? Answer: the courts. It's in the courts where *claims*, as *evidenced* by a TM registration (but not "proven" by any means) are put to the test. That's where facts are determined. "Facts" aren't determined by a piece of paper sent to a Pakistani TM office along with $10, despite what some might have us believe. Sincerely, George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIFAw&c... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li... ________________________________ CONFIDENTIALITY NOTICE: This e-mail and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed and may contain confidential and privileged information protected by law. If you received this e-mail in error, any review, use, dissemination, distribution, or copying of the e-mail is strictly prohibited. Please notify the sender immediately by return e-mail and delete all copies from your system. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li... ---------------------------------------------------------------------- If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com, and do not use or disseminate such information.
+1 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 -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Brian F. Cimbolic Sent: Thursday, February 02, 2017 2:56 PM To: Reuter, Renee M; George Kirikos; gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog Folks: I feel like we've gotten off on quite a tangent (or 10), at least in relation to the original post. Without arguing the fundamentals of what a trademark is or what rights it bestows, is there anyone out there who thinks that the example in the blog is how the TMCH is intended to work? Allowing this registrant/mark holder to obtain those "the.example" names seems absolutely exploitative. To say that "any system can be gamed, so why bother fixing it" - that analysis works for any number of examples this group will come across (premium pricing of sunrise domains comes to mind) and doesn't advance the conversation constructively. To me the question is, is this exploitation something that we should look at fixing or addressing within this group? Brian Brian Cimbolic Deputy General Counsel, Public Interest Registry Office: +1 703 889-5752| Mobile: + 1 571 385-7871| www.pir.org | Facebook | Twitter | Instagram | YouTube Confidentiality Note: Proprietary and confidential to Public Interest Registry. If received in error, please inform sender and then delete. -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Reuter, Renee M Sent: Thursday, February 02, 2017 2:47 PM To: George Kirikos <icann@leap.com>; gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH Blog One trademark registration in most countries costs significantly more than $10. -----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 1:43 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog J. Scott (and others who replied afterwards), On Thu, Feb 2, 2017 at 2:23 PM, J. Scott Evans <jsevans@adobe.com> wrote:
The evidentiary weight of a trademark registration differs from jurisdiction to jurisdiction. In the US, a certificate of registration from the USPTO does have some proof value, that is subject to certain defenses for 5 years and a lesser set of defenses should the mark reach incontestable status after 5 years. I think making sweeping statements like those contained in your closing paragraph are not helpful.
I was simply responding to Marc's "sweeping statement" (and assertion of "fact"), which I note you were not quick to characterize as "not helpful". It's a fact that TM registrations can be and are disputed. Where are alleged TM rights enforced against alleged infringers? Answer: the courts. It's in the courts where *claims*, as *evidenced* by a TM registration (but not "proven" by any means) are put to the test. That's where facts are determined. "Facts" aren't determined by a piece of paper sent to a Pakistani TM office along with $10, despite what some might have us believe. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ CONFIDENTIALITY NOTICE: This e-mail and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed and may contain confidential and privileged information protected by law. If you received this e-mail in error, any review, use, dissemination, distribution, or copying of the e-mail is strictly prohibited. Please notify the sender immediately by return e-mail and delete all copies from your system. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ----- No virus found in this message. Checked by AVG - www.avg.com Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17
Sorry George. While it is true that TM registrations can be and are disputed and cancelled, while they are in force they are protected under the law of the issuing jurisdiction. The fact that a trademark, law, or even a contract for that matter may at some point be challenged and/or terminated/repealed does not mean that the trademark, law, or contract does not have any effect while still active/in force. Under your thinking there is no obligation to abide by any law or contract because there is the possibility that at some point in the future it may be challenged or repealed. Good luck with that argument in court! 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 1:19 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog Marc: I used the Wikipedia link as a fairly neutral starting point for the theory of signalling, and not "authoritative". Would you consider the Nobel Prize in Economics for work on signalling to be "authoritative" enough for you? https://urldefense.proofpoint.com/v2/url?u=http-3A__www.nobelprize.org_nobel... Or should I have provided (like most of the posts to this list) no external references at all, and simply allow people to go to Google on their own? Which aspect of the concept of signalling do you disagree with? As for "registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction." Hmmm, that's not correct, given that TM registrations can be and are disputed and cancelled. Trademark registration is *evidence* and *notice* of a *claim* to a trademark right (perhaps even a strong claim), but are not "proof" of anything as a "fact." Sincerely, George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIGaQ&c... On Thu, Feb 2, 2017 at 2:06 PM, <trachtenbergm@gtlaw.com> wrote:
George,
Thank you for your economics tutorial based on Wikipedia - certainly an authoritative source.
Regardless I don’t think your application of this to the TMCH is appropriate and disagree with your description of how the TMCH functions. When trademark holders submit their registrations to the TMCH, they are not trying to prove that their marks are "worthy" of protection. The fact that they have registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction.
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 12:58 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog
To continue the "economics tutorial", this is all directly related to the concept of signalling:
https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.org_ wiki_Signalling-5F-28economics-29&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r= L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-WyHhwMfs41u WqUos4g3JWuGXUa1FwI&s=_-ZU3Mu11NJjQnuoQdYhV9epeypY8SYFTzL35TJgjqs&e=
The classic example comes from the education credentials market. How does a job candidate signal that they're a high quality hire? The idea is that high quality job candidates can obtain good degrees, and it's much costlier for low quality job candidates to get those same credentials.
Let's apply this to the TMCH -- implicitly, trademark holders are jumping through hoops at present to determine that their marks are "worthy" of protection. The hoops they're jumping through are:
1. pay the TMCH fees, and 2. show evidence of national TM registration in a jurisdiction, and 3. show proof of use
However, unlike the academic credentials market above, where "good" and "bad" job candidates face different costs, in the TMCH the "good" and "bad" trademark holders face essentially the SAME costs! (i.e. the fees are the same, one can get a Pakistani TM for under $10, and one can throw up a webpage for free to show "proof of use").
In other words, the mechanisms for signalling are entirely broken in the TMCH. Economics 101. The "bad guys" certainly know it's broken. As a policymaking body, we should understand *why* it's broken, and either (1) make stronger signals to differentiate and distinguish between worthy and unworthy marks, or (2) as I suggested earlier, set an explicit direct price to change the balance and behaviour directly.
Sincerely,
George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=Dw IGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBz Cxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r2 4YJ9m6g71cr0vEGbww0X9qgsNDU&e=
On Thu, Feb 2, 2017 at 1:36 PM, George Kirikos <icann@leap.com> wrote:
Hello,
(and trying to combine multiple responses in one email)
On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com> wrote:
I think you are trying to apply domain speculation thinking where it is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing.
If life isn’t fair is an acceptable justification then why change the current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can’t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement.
2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place).
3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour.
4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing.
While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere.
5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational.
6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse).
In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors.
Sincerely,
George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=D w IGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjB z Cxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r 2 4YJ9m6g71cr0vEGbww0X9qgsNDU&e=
gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mail man_listinfo_gnso-2Drpm-2Dwg&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7 eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos 4g3JWuGXUa1FwI&s=g9D6x_5yyONXbDzXKuaVg7WsGRorHP9u7RikcGTnhtY&e=
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As a clarification to the point of law, TM rights are presumed until they are challenged. George, to your point, TM rights may certainly be challenged. However, the presumption is with the owner of the TM registration until such challenge prevails. Under U.S. law, TM registrations are proof of right. They are more than a notice of claim. An application is the notice of claim, the resulting registration presumes the right. I certainly welcome trademark practitioners from jurisdictions to weigh in on whether registrations are “notice of a claim” or considered proof of ownership until otherwise successfully challenged. Lori Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman [cid:image005.jpg@01D270D2.1801CD20] From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 2:19 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH Blog Marc: I used the Wikipedia link as a fairly neutral starting point for the theory of signalling, and not "authoritative". Would you consider the Nobel Prize in Economics for work on signalling to be "authoritative" enough for you? http://www.nobelprize.org/nobel_prizes/economic-sciences/laureates/2001/pres... Or should I have provided (like most of the posts to this list) no external references at all, and simply allow people to go to Google on their own? Which aspect of the concept of signalling do you disagree with? As for "registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction." Hmmm, that's not correct, given that TM registrations can be and are disputed and cancelled. Trademark registration is *evidence* and *notice* of a *claim* to a trademark right (perhaps even a strong claim), but are not "proof" of anything as a "fact." Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Thu, Feb 2, 2017 at 2:06 PM, <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com%3e> wrote:
George,
Thank you for your economics tutorial based on Wikipedia - certainly an authoritative source.
Regardless I don’t think your application of this to the TMCH is appropriate and disagree with your description of how the TMCH functions. When trademark holders submit their registrations to the TMCH, they are not trying to prove that their marks are "worthy" of protection. The fact that they have registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction.
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<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com>
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 12:58 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog
To continue the "economics tutorial", this is all directly related to the concept of signalling:
https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.org_wiki_S...
The classic example comes from the education credentials market. How does a job candidate signal that they're a high quality hire? The idea is that high quality job candidates can obtain good degrees, and it's much costlier for low quality job candidates to get those same credentials.
Let's apply this to the TMCH -- implicitly, trademark holders are jumping through hoops at present to determine that their marks are "worthy" of protection. The hoops they're jumping through are:
1. pay the TMCH fees, and 2. show evidence of national TM registration in a jurisdiction, and 3. show proof of use
However, unlike the academic credentials market above, where "good" and "bad" job candidates face different costs, in the TMCH the "good" and "bad" trademark holders face essentially the SAME costs! (i.e. the fees are the same, one can get a Pakistani TM for under $10, and one can throw up a webpage for free to show "proof of use").
In other words, the mechanisms for signalling are entirely broken in the TMCH. Economics 101. The "bad guys" certainly know it's broken. As a policymaking body, we should understand *why* it's broken, and either (1) make stronger signals to differentiate and distinguish between worthy and unworthy marks, or (2) as I suggested earlier, set an explicit direct price to change the balance and behaviour directly.
Sincerely,
George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIGaQ&c...
On Thu, Feb 2, 2017 at 1:36 PM, George Kirikos <icann@leap.com><mailto:icann@leap.com%3e> wrote:
Hello,
(and trying to combine multiple responses in one email)
On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com%3e> wrote:
I think you are trying to apply domain speculation thinking where it is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing.
If life isn’t fair is an acceptable justification then why change the current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can’t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement.
2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place).
3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour.
4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing.
While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere.
5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational.
6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse).
In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors.
Sincerely,
George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=Dw IGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBz Cxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r2 4YJ9m6g71cr0vEGbww0X9qgsNDU&e=
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In US, one of the benefits of registration is a presumption of validity of ownership, and exclusivity with respect to the goods/services covered by the registration. Only by successfully challenging the registration would the owner lose that benefit. After 5 years, assuming certain documents are filed, the registration becomes conclusive evidence in certain respects. On Thu, 2 Feb 2017 at 21:25 Lori Schulman <lschulman@inta.org> wrote:
As a clarification to the point of law, TM rights are presumed until they are challenged. George, to your point, TM rights may certainly be challenged. However, the presumption is with the owner of the TM registration until such challenge prevails. Under U.S. law, TM registrations are proof of right. They are more than a notice of claim. An application is the notice of claim, the resulting registration presumes the right. I certainly welcome trademark practitioners from jurisdictions to weigh in on whether registrations are “notice of a claim” or considered proof of ownership until otherwise successfully challenged.
Lori
Lori S. Schulman
Senior Director, Internet Policy
*International Trademark Association (INTA)*
+1-202-704-0408, Skype: lsschulman
[image: cid:image005.jpg@01D270D2.1801CD20]
*From:* gnso-rpm-wg-bounces@icann.org [mailto: gnso-rpm-wg-bounces@icann.org] *On Behalf Of *George Kirikos *Sent:* Thursday, February 02, 2017 2:19 PM *To:* gnso-rpm-wg <gnso-rpm-wg@icann.org>
*Subject:* Re: [gnso-rpm-wg] TMCH Blog
Marc: I used the Wikipedia link as a fairly neutral starting point for the theory of signalling, and not "authoritative". Would you consider the Nobel Prize in Economics for work on signalling to be "authoritative" enough for you?
http://www.nobelprize.org/nobel_prizes/economic-sciences/laureates/2001/pres...
Or should I have provided (like most of the posts to this list) no external references at all, and simply allow people to go to Google on their own? Which aspect of the concept of signalling do you disagree with?
As for "registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction."
Hmmm, that's not correct, given that TM registrations can be and are disputed and cancelled. Trademark registration is *evidence* and *notice* of a *claim* to a trademark right (perhaps even a strong claim), but are not "proof" of anything as a "fact."
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Thu, Feb 2, 2017 at 2:06 PM, <trachtenbergm@gtlaw.com> wrote:
George,
Thank you for your economics tutorial based on Wikipedia - certainly an authoritative source.
Regardless I don’t think your application of this to the TMCH is appropriate and disagree with your description of how the TMCH functions. When trademark holders submit their registrations to the TMCH, they are not trying to prove that their marks are "worthy" of protection. The fact that they have registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction.
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 <gnso-rpm-wg-bounces@icann.org>] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 12:58 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog
To continue the "economics tutorial", this is all directly related to the concept of signalling:
https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.org_wiki_S...
The classic example comes from the education credentials market. How
does a job candidate signal that they're a high quality hire? The idea is that high quality job candidates can obtain good degrees, and it's much costlier for low quality job candidates to get those same credentials.
Let's apply this to the TMCH -- implicitly, trademark holders are
jumping through hoops at present to determine that their marks are "worthy" of protection. The hoops they're jumping through are:
1. pay the TMCH fees, and 2. show evidence of national TM registration in a jurisdiction, and 3.
show proof of use
However, unlike the academic credentials market above, where "good" and "bad" job candidates face different costs, in the TMCH the "good" and "bad" trademark holders face essentially the SAME costs! (i.e. the
fees are the same, one can get a Pakistani TM for under $10, and one can throw up a webpage for free to show "proof of use").
In other words, the mechanisms for signalling are entirely broken in the
TMCH. Economics 101. The "bad guys" certainly know it's broken. As a policymaking body, we should understand *why* it's broken, and either (1) make stronger signals to differentiate and distinguish between worthy and unworthy marks, or (2) as I suggested earlier, set an explicit direct price to change the balance and behaviour directly.
Sincerely,
George Kirikos 416-588-0269
https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIGaQ&c...
On Thu, Feb 2, 2017 at 1:36 PM, George Kirikos <icann@leap.com> wrote:
Hello,
(and trying to combine multiple responses in one email)
On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com> wrote:
I think you are trying to apply domain speculation thinking where it
is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing.
If life isn’t fair is an acceptable justification then why change the
current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can’t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement.
2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place).
3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour.
4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing.
While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere.
5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational.
6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse).
In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors.
Sincerely,
George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=Dw IGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBz Cxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r2 4YJ9m6g71cr0vEGbww0X9qgsNDU&e=
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https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...
---------------------------------------------------------------------- If you are not an intended recipient of confidential and privileged
information in this email, please delete it, notify us immediately at postmaster@gtlaw.com, and do not use or disseminate such information. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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-- jonathan matkowsky, vp - ip & head of global brand threat mitigation
Without belabouring the obvious: 1. "Incontestability" is less absolute than it sounds. Since Marc appears to dislike links to Wikipedia, let me choose a reference that he might prefer, namely INTA: http://www.inta.org/INTABulletin/Pages/IncontestabilityDoesAnybodyReallyUnde... "Despite the name, incontestability does not provide the registration with a complete shield against attack. Registrations are subject to cancellation at any time based on any of the following: (1) genericness; (2) functionality; (3) abandonment; (4) fraud on the USPTO; (5) immorality, deception or scandalousness; (6) disparagement; (7) false suggestion of a connection; (8) geographical indications on wines or spirits meeting certain requirements; (9) representation of a flag or coat of arms of any nation; or (10) representation or name of a living person without his or her consent or of a deceased president without the consent of his widow. So the shield of incontestability has been likened to the proverbial armor made of Swiss cheese rather than a coat made of metal." Let me repeat the "takeaway", namely "armor made of Swiss cheese." 2. As for what is "fact" vs "evidence" re: the meaning of a TM registration, let me remind folks of some alarming statistics posted to this list last August: http://mm.icann.org/pipermail/gnso-rpm-wg/2016-August/000474.html "The results of the pilot program indicate that a substantial majority of foreign registrants, 73% under the Madrid Protocol and 65% under the Paris Convention, have submitted false declarations of use and have therefore received trademark protection to which they are not entitled in the United States." "During the two-year pilot program, the USPTO found that 51% of the audited registration owners were unable to satisfy these additional proof requirements. The USPTO cancelled 16% of the audited registrations in their entirety because the registration owners failed to respond to the request for additional proof or any other issues raised during the examination of the original affidavit. In addition, 35% of the audited registration owners requested that some of the goods or services be deleted from their registration." "A register that does not accurately reflect marks in use in the United States for the goods/services identified in registrations imposes costs and burdens on the public." In order to have a balanced and thorough review of the TMCH, we need to keep these things in mind. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Thu, Feb 2, 2017 at 3:08 PM, jonathan matkowsky <jonathan.matkowsky@riskiq.net> wrote:
In US, one of the benefits of registration is a presumption of validity of ownership, and exclusivity with respect to the goods/services covered by the registration. Only by successfully challenging the registration would the owner lose that benefit. After 5 years, assuming certain documents are filed, the registration becomes conclusive evidence in certain respects.
On Thu, 2 Feb 2017 at 21:25 Lori Schulman <lschulman@inta.org> wrote:
As a clarification to the point of law, TM rights are presumed until they are challenged. George, to your point, TM rights may certainly be challenged. However, the presumption is with the owner of the TM registration until such challenge prevails. Under U.S. law, TM registrations are proof of right. They are more than a notice of claim. An application is the notice of claim, the resulting registration presumes the right. I certainly welcome trademark practitioners from jurisdictions to weigh in on whether registrations are “notice of a claim” or considered proof of ownership until otherwise successfully challenged.
Lori
Lori S. Schulman
Senior Director, Internet Policy
International Trademark Association (INTA)
+1-202-704-0408, Skype: lsschulman
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 2:19 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] TMCH Blog
Marc: I used the Wikipedia link as a fairly neutral starting point for the theory of signalling, and not "authoritative". Would you consider the Nobel Prize in Economics for work on signalling to be "authoritative" enough for you?
http://www.nobelprize.org/nobel_prizes/economic-sciences/laureates/2001/pres...
Or should I have provided (like most of the posts to this list) no external references at all, and simply allow people to go to Google on their own? Which aspect of the concept of signalling do you disagree with?
As for "registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction."
Hmmm, that's not correct, given that TM registrations can be and are disputed and cancelled. Trademark registration is *evidence* and *notice* of a *claim* to a trademark right (perhaps even a strong claim), but are not "proof" of anything as a "fact."
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Thu, Feb 2, 2017 at 2:06 PM, <trachtenbergm@gtlaw.com> wrote:
George,
Thank you for your economics tutorial based on Wikipedia - certainly an authoritative source.
Regardless I don’t think your application of this to the TMCH is appropriate and disagree with your description of how the TMCH functions. When trademark holders submit their registrations to the TMCH, they are not trying to prove that their marks are "worthy" of protection. The fact that they have registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction.
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 12:58 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog
To continue the "economics tutorial", this is all directly related to the concept of signalling:
https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.org_wiki_S...
The classic example comes from the education credentials market. How does a job candidate signal that they're a high quality hire? The idea is that high quality job candidates can obtain good degrees, and it's much costlier for low quality job candidates to get those same credentials.
Let's apply this to the TMCH -- implicitly, trademark holders are jumping through hoops at present to determine that their marks are "worthy" of protection. The hoops they're jumping through are:
1. pay the TMCH fees, and 2. show evidence of national TM registration in a jurisdiction, and 3. show proof of use
However, unlike the academic credentials market above, where "good" and "bad" job candidates face different costs, in the TMCH the "good" and "bad" trademark holders face essentially the SAME costs! (i.e. the fees are the same, one can get a Pakistani TM for under $10, and one can throw up a webpage for free to show "proof of use").
In other words, the mechanisms for signalling are entirely broken in the TMCH. Economics 101. The "bad guys" certainly know it's broken. As a policymaking body, we should understand *why* it's broken, and either (1) make stronger signals to differentiate and distinguish between worthy and unworthy marks, or (2) as I suggested earlier, set an explicit direct price to change the balance and behaviour directly.
Sincerely,
George Kirikos 416-588-0269
https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIGaQ&c...
On Thu, Feb 2, 2017 at 1:36 PM, George Kirikos <icann@leap.com> wrote:
Hello,
(and trying to combine multiple responses in one email)
On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com> wrote:
I think you are trying to apply domain speculation thinking where it is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing.
If life isn’t fair is an acceptable justification then why change the current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can’t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement.
2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place).
3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour.
4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing.
While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere.
5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational.
6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse).
In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors.
Sincerely,
George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=Dw IGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBz Cxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r2 4YJ9m6g71cr0vEGbww0X9qgsNDU&e=
gnso-rpm-wg mailing list gnso-rpm-wg@icann.org
https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...
---------------------------------------------------------------------- If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com, and do not use or disseminate such information.
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-- jonathan matkowsky, vp - ip & head of global brand threat mitigation
George, I didn’t raise incontestability. And once again, incontestability only applies to U.S. trademark registrations. Trademark rights are territorial and the law of every country and scope/effect of having a trademark registration differs by country. 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 2:24 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog Without belabouring the obvious: 1. "Incontestability" is less absolute than it sounds. Since Marc appears to dislike links to Wikipedia, let me choose a reference that he might prefer, namely INTA: https://urldefense.proofpoint.com/v2/url?u=http-3A__www.inta.org_INTABulleti... "Despite the name, incontestability does not provide the registration with a complete shield against attack. Registrations are subject to cancellation at any time based on any of the following: (1) genericness; (2) functionality; (3) abandonment; (4) fraud on the USPTO; (5) immorality, deception or scandalousness; (6) disparagement; (7) false suggestion of a connection; (8) geographical indications on wines or spirits meeting certain requirements; (9) representation of a flag or coat of arms of any nation; or (10) representation or name of a living person without his or her consent or of a deceased president without the consent of his widow. So the shield of incontestability has been likened to the proverbial armor made of Swiss cheese rather than a coat made of metal." Let me repeat the "takeaway", namely "armor made of Swiss cheese." 2. As for what is "fact" vs "evidence" re: the meaning of a TM registration, let me remind folks of some alarming statistics posted to this list last August: https://urldefense.proofpoint.com/v2/url?u=http-3A__mm.icann.org_pipermail_g... "The results of the pilot program indicate that a substantial majority of foreign registrants, 73% under the Madrid Protocol and 65% under the Paris Convention, have submitted false declarations of use and have therefore received trademark protection to which they are not entitled in the United States." "During the two-year pilot program, the USPTO found that 51% of the audited registration owners were unable to satisfy these additional proof requirements. The USPTO cancelled 16% of the audited registrations in their entirety because the registration owners failed to respond to the request for additional proof or any other issues raised during the examination of the original affidavit. In addition, 35% of the audited registration owners requested that some of the goods or services be deleted from their registration." "A register that does not accurately reflect marks in use in the United States for the goods/services identified in registrations imposes costs and burdens on the public." In order to have a balanced and thorough review of the TMCH, we need to keep these things in mind. Sincerely, George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIGaQ&c... On Thu, Feb 2, 2017 at 3:08 PM, jonathan matkowsky <jonathan.matkowsky@riskiq.net> wrote:
In US, one of the benefits of registration is a presumption of validity of ownership, and exclusivity with respect to the goods/services covered by the registration. Only by successfully challenging the registration would the owner lose that benefit. After 5 years, assuming certain documents are filed, the registration becomes conclusive evidence in certain respects.
On Thu, 2 Feb 2017 at 21:25 Lori Schulman <lschulman@inta.org> wrote:
As a clarification to the point of law, TM rights are presumed until they are challenged. George, to your point, TM rights may certainly be challenged. However, the presumption is with the owner of the TM registration until such challenge prevails. Under U.S. law, TM registrations are proof of right. They are more than a notice of claim. An application is the notice of claim, the resulting registration presumes the right. I certainly welcome trademark practitioners from jurisdictions to weigh in on whether registrations are “notice of a claim” or considered proof of ownership until otherwise successfully challenged.
Lori
Lori S. Schulman
Senior Director, Internet Policy
International Trademark Association (INTA)
+1-202-704-0408, Skype: lsschulman
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 2:19 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] TMCH Blog
Marc: I used the Wikipedia link as a fairly neutral starting point for the theory of signalling, and not "authoritative". Would you consider the Nobel Prize in Economics for work on signalling to be "authoritative" enough for you?
https://urldefense.proofpoint.com/v2/url?u=http-3A__www.nobelprize.or g_nobel-5Fprizes_economic-2Dsciences_laureates_2001_press.html&d=DwIG aQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzC xm1c&m=yVC1lcmqKMgjHxHMaFA2zU46ZabiDfEJAR1tU19JLPg&s=rWvsRryv-AAPtemi ChL6rNx0-U7vdZcr1UOk548ElwE&e=
Or should I have provided (like most of the posts to this list) no external references at all, and simply allow people to go to Google on their own? Which aspect of the concept of signalling do you disagree with?
As for "registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction."
Hmmm, that's not correct, given that TM registrations can be and are disputed and cancelled. Trademark registration is *evidence* and *notice* of a *claim* to a trademark right (perhaps even a strong claim), but are not "proof" of anything as a "fact."
Sincerely,
George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=D wIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3Nj BzCxm1c&m=yVC1lcmqKMgjHxHMaFA2zU46ZabiDfEJAR1tU19JLPg&s=EFnpwRIk54NGT ZFX_g4xbg6nKJFEyZ12Pi9ULfswmoI&e=
On Thu, Feb 2, 2017 at 2:06 PM, <trachtenbergm@gtlaw.com> wrote:
George,
Thank you for your economics tutorial based on Wikipedia - certainly an authoritative source.
Regardless I don’t think your application of this to the TMCH is appropriate and disagree with your description of how the TMCH functions. When trademark holders submit their registrations to the TMCH, they are not trying to prove that their marks are "worthy" of protection. The fact that they have registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction.
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 12:58 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog
To continue the "economics tutorial", this is all directly related to the concept of signalling:
https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.o rg_wiki_Signalling-5F-28economics-29&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol 9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-Wy HhwMfs41uWqUos4g3JWuGXUa1FwI&s=_-ZU3Mu11NJjQnuoQdYhV9epeypY8SYFTzL3 5TJgjqs&e=
The classic example comes from the education credentials market. How does a job candidate signal that they're a high quality hire? The idea is that high quality job candidates can obtain good degrees, and it's much costlier for low quality job candidates to get those same credentials.
Let's apply this to the TMCH -- implicitly, trademark holders are jumping through hoops at present to determine that their marks are "worthy" of protection. The hoops they're jumping through are:
1. pay the TMCH fees, and 2. show evidence of national TM registration in a jurisdiction, and 3. show proof of use
However, unlike the academic credentials market above, where "good" and "bad" job candidates face different costs, in the TMCH the "good" and "bad" trademark holders face essentially the SAME costs! (i.e. the fees are the same, one can get a Pakistani TM for under $10, and one can throw up a webpage for free to show "proof of use").
In other words, the mechanisms for signalling are entirely broken in the TMCH. Economics 101. The "bad guys" certainly know it's broken. As a policymaking body, we should understand *why* it's broken, and either (1) make stronger signals to differentiate and distinguish between worthy and unworthy marks, or (2) as I suggested earlier, set an explicit direct price to change the balance and behaviour directly.
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-UoCXD4iA3c7Sm3JrKXt7T1d G3NjBzCxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ- jCOYyo9r24YJ9m6g71cr0vEGbww0X9qgsNDU&e=
On Thu, Feb 2, 2017 at 1:36 PM, George Kirikos <icann@leap.com> wrote:
Hello,
(and trying to combine multiple responses in one email)
On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com> wrote:
I think you are trying to apply domain speculation thinking where it is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing.
If life isn’t fair is an acceptable justification then why change the current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can’t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement.
2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place).
3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour.
4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing.
While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere.
5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational.
6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse).
In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors.
Sincerely,
George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_& d=Dw IGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3 NjBz Cxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYy o9r2 4YJ9m6g71cr0vEGbww0X9qgsNDU&e=
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-- jonathan matkowsky, vp - ip & head of global brand threat mitigation
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Marc: I didn't say you raised the issue of incontestability (others did). You only disliked my link to Wikipedia earlier today. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Thu, Feb 2, 2017 at 3:28 PM, <trachtenbergm@gtlaw.com> wrote:
George,
I didn’t raise incontestability. And once again, incontestability only applies to U.S. trademark registrations. Trademark rights are territorial and the law of every country and scope/effect of having a trademark registration differs by country.
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 2:24 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog
Without belabouring the obvious:
1. "Incontestability" is less absolute than it sounds. Since Marc appears to dislike links to Wikipedia, let me choose a reference that he might prefer, namely INTA:
https://urldefense.proofpoint.com/v2/url?u=http-3A__www.inta.org_INTABulleti...
"Despite the name, incontestability does not provide the registration with a complete shield against attack. Registrations are subject to cancellation at any time based on any of the following: (1) genericness; (2) functionality; (3) abandonment; (4) fraud on the USPTO; (5) immorality, deception or scandalousness; (6) disparagement; (7) false suggestion of a connection; (8) geographical indications on wines or spirits meeting certain requirements; (9) representation of a flag or coat of arms of any nation; or (10) representation or name of a living person without his or her consent or of a deceased president without the consent of his widow. So the shield of incontestability has been likened to the proverbial armor made of Swiss cheese rather than a coat made of metal."
Let me repeat the "takeaway", namely "armor made of Swiss cheese."
2. As for what is "fact" vs "evidence" re: the meaning of a TM registration, let me remind folks of some alarming statistics posted to this list last August:
https://urldefense.proofpoint.com/v2/url?u=http-3A__mm.icann.org_pipermail_g...
"The results of the pilot program indicate that a substantial majority of foreign registrants, 73% under the Madrid Protocol and 65% under the Paris Convention, have submitted false declarations of use and have therefore received trademark protection to which they are not entitled in the United States."
"During the two-year pilot program, the USPTO found that 51% of the audited registration owners were unable to satisfy these additional proof requirements. The USPTO cancelled 16% of the audited registrations in their entirety because the registration owners failed to respond to the request for additional proof or any other issues raised during the examination of the original affidavit. In addition, 35% of the audited registration owners requested that some of the goods or services be deleted from their registration."
"A register that does not accurately reflect marks in use in the United States for the goods/services identified in registrations imposes costs and burdens on the public."
In order to have a balanced and thorough review of the TMCH, we need to keep these things in mind.
Sincerely,
George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIGaQ&c...
On Thu, Feb 2, 2017 at 3:08 PM, jonathan matkowsky <jonathan.matkowsky@riskiq.net> wrote:
In US, one of the benefits of registration is a presumption of validity of ownership, and exclusivity with respect to the goods/services covered by the registration. Only by successfully challenging the registration would the owner lose that benefit. After 5 years, assuming certain documents are filed, the registration becomes conclusive evidence in certain respects.
On Thu, 2 Feb 2017 at 21:25 Lori Schulman <lschulman@inta.org> wrote:
As a clarification to the point of law, TM rights are presumed until they are challenged. George, to your point, TM rights may certainly be challenged. However, the presumption is with the owner of the TM registration until such challenge prevails. Under U.S. law, TM registrations are proof of right. They are more than a notice of claim. An application is the notice of claim, the resulting registration presumes the right. I certainly welcome trademark practitioners from jurisdictions to weigh in on whether registrations are “notice of a claim” or considered proof of ownership until otherwise successfully challenged.
Lori
Lori S. Schulman
Senior Director, Internet Policy
International Trademark Association (INTA)
+1-202-704-0408, Skype: lsschulman
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 2:19 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] TMCH Blog
Marc: I used the Wikipedia link as a fairly neutral starting point for the theory of signalling, and not "authoritative". Would you consider the Nobel Prize in Economics for work on signalling to be "authoritative" enough for you?
https://urldefense.proofpoint.com/v2/url?u=http-3A__www.nobelprize.or g_nobel-5Fprizes_economic-2Dsciences_laureates_2001_press.html&d=DwIG aQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzC xm1c&m=yVC1lcmqKMgjHxHMaFA2zU46ZabiDfEJAR1tU19JLPg&s=rWvsRryv-AAPtemi ChL6rNx0-U7vdZcr1UOk548ElwE&e=
Or should I have provided (like most of the posts to this list) no external references at all, and simply allow people to go to Google on their own? Which aspect of the concept of signalling do you disagree with?
As for "registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction."
Hmmm, that's not correct, given that TM registrations can be and are disputed and cancelled. Trademark registration is *evidence* and *notice* of a *claim* to a trademark right (perhaps even a strong claim), but are not "proof" of anything as a "fact."
Sincerely,
George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=D wIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3Nj BzCxm1c&m=yVC1lcmqKMgjHxHMaFA2zU46ZabiDfEJAR1tU19JLPg&s=EFnpwRIk54NGT ZFX_g4xbg6nKJFEyZ12Pi9ULfswmoI&e=
On Thu, Feb 2, 2017 at 2:06 PM, <trachtenbergm@gtlaw.com> wrote:
George,
Thank you for your economics tutorial based on Wikipedia - certainly an authoritative source.
Regardless I don’t think your application of this to the TMCH is appropriate and disagree with your description of how the TMCH functions. When trademark holders submit their registrations to the TMCH, they are not trying to prove that their marks are "worthy" of protection. The fact that they have registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction.
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 12:58 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog
To continue the "economics tutorial", this is all directly related to the concept of signalling:
https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.o rg_wiki_Signalling-5F-28economics-29&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol 9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-Wy HhwMfs41uWqUos4g3JWuGXUa1FwI&s=_-ZU3Mu11NJjQnuoQdYhV9epeypY8SYFTzL3 5TJgjqs&e=
The classic example comes from the education credentials market. How does a job candidate signal that they're a high quality hire? The idea is that high quality job candidates can obtain good degrees, and it's much costlier for low quality job candidates to get those same credentials.
Let's apply this to the TMCH -- implicitly, trademark holders are jumping through hoops at present to determine that their marks are "worthy" of protection. The hoops they're jumping through are:
1. pay the TMCH fees, and 2. show evidence of national TM registration in a jurisdiction, and 3. show proof of use
However, unlike the academic credentials market above, where "good" and "bad" job candidates face different costs, in the TMCH the "good" and "bad" trademark holders face essentially the SAME costs! (i.e. the fees are the same, one can get a Pakistani TM for under $10, and one can throw up a webpage for free to show "proof of use").
In other words, the mechanisms for signalling are entirely broken in the TMCH. Economics 101. The "bad guys" certainly know it's broken. As a policymaking body, we should understand *why* it's broken, and either (1) make stronger signals to differentiate and distinguish between worthy and unworthy marks, or (2) as I suggested earlier, set an explicit direct price to change the balance and behaviour directly.
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-UoCXD4iA3c7Sm3JrKXt7T1d G3NjBzCxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ- jCOYyo9r24YJ9m6g71cr0vEGbww0X9qgsNDU&e=
On Thu, Feb 2, 2017 at 1:36 PM, George Kirikos <icann@leap.com> wrote:
Hello,
(and trying to combine multiple responses in one email)
On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com> wrote:
I think you are trying to apply domain speculation thinking where it is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing.
If life isn’t fair is an acceptable justification then why change the current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can’t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement.
2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place).
3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour.
4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing.
While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere.
5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational.
6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse).
In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors.
Sincerely,
George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_& d=Dw IGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3 NjBz Cxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYy o9r2 4YJ9m6g71cr0vEGbww0X9qgsNDU&e=
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-- jonathan matkowsky, vp - ip & head of global brand threat mitigation
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George: Are you a trademark attorney? Are you an attorney? If not, I think it would be best if you refrain from practicing law. If you are, I point you to McCarthy on Trademarks & Unfair Competition for US practice and Trademarks Throughout the World for a glimpse of international trademark laws. 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 On 2/2/17, 12:23 PM, "gnso-rpm-wg-bounces@icann.org on behalf of George Kirikos" <gnso-rpm-wg-bounces@icann.org on behalf of icann@leap.com> wrote:
Without belabouring the obvious:
1. "Incontestability" is less absolute than it sounds. Since Marc appears to dislike links to Wikipedia, let me choose a reference that he might prefer, namely INTA:
http://www.inta.org/INTABulletin/Pages/IncontestabilityDoesAnybodyReallyUn derstandIt.aspx
"Despite the name, incontestability does not provide the registration with a complete shield against attack. Registrations are subject to cancellation at any time based on any of the following: (1) genericness; (2) functionality; (3) abandonment; (4) fraud on the USPTO; (5) immorality, deception or scandalousness; (6) disparagement; (7) false suggestion of a connection; (8) geographical indications on wines or spirits meeting certain requirements; (9) representation of a flag or coat of arms of any nation; or (10) representation or name of a living person without his or her consent or of a deceased president without the consent of his widow. So the shield of incontestability has been likened to the proverbial armor made of Swiss cheese rather than a coat made of metal."
Let me repeat the "takeaway", namely "armor made of Swiss cheese."
2. As for what is "fact" vs "evidence" re: the meaning of a TM registration, let me remind folks of some alarming statistics posted to this list last August:
http://mm.icann.org/pipermail/gnso-rpm-wg/2016-August/000474.html
"The results of the pilot program indicate that a substantial majority of foreign registrants, 73% under the Madrid Protocol and 65% under the Paris Convention, have submitted false declarations of use and have therefore received trademark protection to which they are not entitled in the United States."
"During the two-year pilot program, the USPTO found that 51% of the audited registration owners were unable to satisfy these additional proof requirements. The USPTO cancelled 16% of the audited registrations in their entirety because the registration owners failed to respond to the request for additional proof or any other issues raised during the examination of the original affidavit. In addition, 35% of the audited registration owners requested that some of the goods or services be deleted from their registration."
"A register that does not accurately reflect marks in use in the United States for the goods/services identified in registrations imposes costs and burdens on the public."
In order to have a balanced and thorough review of the TMCH, we need to keep these things in mind.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Thu, Feb 2, 2017 at 3:08 PM, jonathan matkowsky <jonathan.matkowsky@riskiq.net> wrote:
In US, one of the benefits of registration is a presumption of validity of ownership, and exclusivity with respect to the goods/services covered by the registration. Only by successfully challenging the registration would the owner lose that benefit. After 5 years, assuming certain documents are filed, the registration becomes conclusive evidence in certain respects.
On Thu, 2 Feb 2017 at 21:25 Lori Schulman <lschulman@inta.org> wrote:
As a clarification to the point of law, TM rights are presumed until they are challenged. George, to your point, TM rights may certainly be challenged. However, the presumption is with the owner of the TM registration until such challenge prevails. Under U.S. law, TM registrations are proof of right. They are more than a notice of claim. An application is the notice of claim, the resulting registration presumes the right. I certainly welcome trademark practitioners from jurisdictions to weigh in on whether registrations are ³notice of a claim² or considered proof of ownership until otherwise successfully challenged.
Lori
Lori S. Schulman
Senior Director, Internet Policy
International Trademark Association (INTA)
+1-202-704-0408, Skype: lsschulman
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 2:19 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] TMCH Blog
Marc: I used the Wikipedia link as a fairly neutral starting point for the theory of signalling, and not "authoritative". Would you consider the Nobel Prize in Economics for work on signalling to be "authoritative" enough for you?
http://www.nobelprize.org/nobel_prizes/economic-sciences/laureates/2001/ press.html
Or should I have provided (like most of the posts to this list) no external references at all, and simply allow people to go to Google on their own? Which aspect of the concept of signalling do you disagree with?
As for "registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction."
Hmmm, that's not correct, given that TM registrations can be and are disputed and cancelled. Trademark registration is *evidence* and *notice* of a *claim* to a trademark right (perhaps even a strong claim), but are not "proof" of anything as a "fact."
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Thu, Feb 2, 2017 at 2:06 PM, <trachtenbergm@gtlaw.com> wrote:
George,
Thank you for your economics tutorial based on Wikipedia - certainly an authoritative source.
Regardless I don¹t think your application of this to the TMCH is appropriate and disagree with your description of how the TMCH functions. When trademark holders submit their registrations to the TMCH, they are not trying to prove that their marks are "worthy" of protection. The fact that they have registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction.
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 12:58 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog
To continue the "economics tutorial", this is all directly related to the concept of signalling:
https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.org_wi ki_Signalling-5F-28economics-29&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB 7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4 g3JWuGXUa1FwI&s=_-ZU3Mu11NJjQnuoQdYhV9epeypY8SYFTzL35TJgjqs&e=
The classic example comes from the education credentials market. How does a job candidate signal that they're a high quality hire? The
that high quality job candidates can obtain good degrees, and it's much costlier for low quality job candidates to get those same credentials.
Let's apply this to the TMCH -- implicitly, trademark holders are jumping through hoops at present to determine that their marks are "worthy" of protection. The hoops they're jumping through are:
1. pay the TMCH fees, and 2. show evidence of national TM registration in a jurisdiction, and
idea is 3.
show proof of use
However, unlike the academic credentials market above, where "good" and "bad" job candidates face different costs, in the TMCH the "good" and "bad" trademark holders face essentially the SAME costs! (i.e. the fees are the same, one can get a Pakistani TM for under $10, and one can throw up a webpage for free to show "proof of use").
In other words, the mechanisms for signalling are entirely broken in the TMCH. Economics 101. The "bad guys" certainly know it's broken. As a policymaking body, we should understand *why* it's broken, and either (1) make stronger signals to differentiate and distinguish between worthy and unworthy marks, or (2) as I suggested earlier, set an explicit direct price to change the balance and behaviour directly.
Sincerely,
George Kirikos 416-588-0269
https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIG aQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1 c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r24YJ9m6 g71cr0vEGbww0X9qgsNDU&e=
On Thu, Feb 2, 2017 at 1:36 PM, George Kirikos <icann@leap.com>
wrote:
Hello,
(and trying to combine multiple responses in one email)
On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com> wrote:
I think you are trying to apply domain speculation thinking where it is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing.
If life isn¹t fair is an acceptable justification then why change the current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can¹t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement.
2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place).
3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour.
4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing.
While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere.
5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational.
6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse).
In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors.
Sincerely,
George Kirikos 416-588-0269
https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=Dw
IGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBz
Cxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r2
4YJ9m6g71cr0vEGbww0X9qgsNDU&e=
gnso-rpm-wg mailing list gnso-rpm-wg@icann.org
https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailma n_listinfo_gnso-2Drpm-2Dwg&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT- UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWu GXUa1FwI&s=g9D6x_5yyONXbDzXKuaVg7WsGRorHP9u7RikcGTnhtY&e=
----------------------------------------------------------------------
If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com, and do not use or disseminate such information.
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_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
-- jonathan matkowsky, vp - ip & head of global brand threat mitigation
gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
J. Scott: I'm not a lawyer, nor am I practising trademark law. I made a reference to INTA's website, and to the USPTO's own research, in furtherance of a discussion we're having on this list. What makes you think I'm not allowed to do so? If you have a problem with the content of my messages, dispute the content, rather than seeking to silence the speaker of that content. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Thu, Feb 2, 2017 at 3:29 PM, J. Scott Evans <jsevans@adobe.com> wrote:
George:
Are you a trademark attorney? Are you an attorney? If not, I think it would be best if you refrain from practicing law. If you are, I point you to McCarthy on Trademarks & Unfair Competition for US practice and Trademarks Throughout the World for a glimpse of international trademark laws.
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
On 2/2/17, 12:23 PM, "gnso-rpm-wg-bounces@icann.org on behalf of George Kirikos" <gnso-rpm-wg-bounces@icann.org on behalf of icann@leap.com> wrote:
Without belabouring the obvious:
1. "Incontestability" is less absolute than it sounds. Since Marc appears to dislike links to Wikipedia, let me choose a reference that he might prefer, namely INTA:
http://www.inta.org/INTABulletin/Pages/IncontestabilityDoesAnybodyReallyUn derstandIt.aspx
"Despite the name, incontestability does not provide the registration with a complete shield against attack. Registrations are subject to cancellation at any time based on any of the following: (1) genericness; (2) functionality; (3) abandonment; (4) fraud on the USPTO; (5) immorality, deception or scandalousness; (6) disparagement; (7) false suggestion of a connection; (8) geographical indications on wines or spirits meeting certain requirements; (9) representation of a flag or coat of arms of any nation; or (10) representation or name of a living person without his or her consent or of a deceased president without the consent of his widow. So the shield of incontestability has been likened to the proverbial armor made of Swiss cheese rather than a coat made of metal."
Let me repeat the "takeaway", namely "armor made of Swiss cheese."
2. As for what is "fact" vs "evidence" re: the meaning of a TM registration, let me remind folks of some alarming statistics posted to this list last August:
http://mm.icann.org/pipermail/gnso-rpm-wg/2016-August/000474.html
"The results of the pilot program indicate that a substantial majority of foreign registrants, 73% under the Madrid Protocol and 65% under the Paris Convention, have submitted false declarations of use and have therefore received trademark protection to which they are not entitled in the United States."
"During the two-year pilot program, the USPTO found that 51% of the audited registration owners were unable to satisfy these additional proof requirements. The USPTO cancelled 16% of the audited registrations in their entirety because the registration owners failed to respond to the request for additional proof or any other issues raised during the examination of the original affidavit. In addition, 35% of the audited registration owners requested that some of the goods or services be deleted from their registration."
"A register that does not accurately reflect marks in use in the United States for the goods/services identified in registrations imposes costs and burdens on the public."
In order to have a balanced and thorough review of the TMCH, we need to keep these things in mind.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Thu, Feb 2, 2017 at 3:08 PM, jonathan matkowsky <jonathan.matkowsky@riskiq.net> wrote:
In US, one of the benefits of registration is a presumption of validity of ownership, and exclusivity with respect to the goods/services covered by the registration. Only by successfully challenging the registration would the owner lose that benefit. After 5 years, assuming certain documents are filed, the registration becomes conclusive evidence in certain respects.
On Thu, 2 Feb 2017 at 21:25 Lori Schulman <lschulman@inta.org> wrote:
As a clarification to the point of law, TM rights are presumed until they are challenged. George, to your point, TM rights may certainly be challenged. However, the presumption is with the owner of the TM registration until such challenge prevails. Under U.S. law, TM registrations are proof of right. They are more than a notice of claim. An application is the notice of claim, the resulting registration presumes the right. I certainly welcome trademark practitioners from jurisdictions to weigh in on whether registrations are ³notice of a claim² or considered proof of ownership until otherwise successfully challenged.
Lori
Lori S. Schulman
Senior Director, Internet Policy
International Trademark Association (INTA)
+1-202-704-0408, Skype: lsschulman
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 2:19 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] TMCH Blog
Marc: I used the Wikipedia link as a fairly neutral starting point for the theory of signalling, and not "authoritative". Would you consider the Nobel Prize in Economics for work on signalling to be "authoritative" enough for you?
http://www.nobelprize.org/nobel_prizes/economic-sciences/laureates/2001/ press.html
Or should I have provided (like most of the posts to this list) no external references at all, and simply allow people to go to Google on their own? Which aspect of the concept of signalling do you disagree with?
As for "registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction."
Hmmm, that's not correct, given that TM registrations can be and are disputed and cancelled. Trademark registration is *evidence* and *notice* of a *claim* to a trademark right (perhaps even a strong claim), but are not "proof" of anything as a "fact."
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Thu, Feb 2, 2017 at 2:06 PM, <trachtenbergm@gtlaw.com> wrote:
George,
Thank you for your economics tutorial based on Wikipedia - certainly an authoritative source.
Regardless I don¹t think your application of this to the TMCH is appropriate and disagree with your description of how the TMCH functions. When trademark holders submit their registrations to the TMCH, they are not trying to prove that their marks are "worthy" of protection. The fact that they have registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction.
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 12:58 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog
To continue the "economics tutorial", this is all directly related to the concept of signalling:
https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.org_wi ki_Signalling-5F-28economics-29&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB 7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4 g3JWuGXUa1FwI&s=_-ZU3Mu11NJjQnuoQdYhV9epeypY8SYFTzL35TJgjqs&e=
The classic example comes from the education credentials market. How does a job candidate signal that they're a high quality hire? The
that high quality job candidates can obtain good degrees, and it's much costlier for low quality job candidates to get those same credentials.
Let's apply this to the TMCH -- implicitly, trademark holders are jumping through hoops at present to determine that their marks are "worthy" of protection. The hoops they're jumping through are:
1. pay the TMCH fees, and 2. show evidence of national TM registration in a jurisdiction, and
idea is 3.
show proof of use
However, unlike the academic credentials market above, where "good" and "bad" job candidates face different costs, in the TMCH the "good" and "bad" trademark holders face essentially the SAME costs! (i.e. the fees are the same, one can get a Pakistani TM for under $10, and one can throw up a webpage for free to show "proof of use").
In other words, the mechanisms for signalling are entirely broken in the TMCH. Economics 101. The "bad guys" certainly know it's broken. As a policymaking body, we should understand *why* it's broken, and either (1) make stronger signals to differentiate and distinguish between worthy and unworthy marks, or (2) as I suggested earlier, set an explicit direct price to change the balance and behaviour directly.
Sincerely,
George Kirikos 416-588-0269
https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIG aQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1 c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r24YJ9m6 g71cr0vEGbww0X9qgsNDU&e=
On Thu, Feb 2, 2017 at 1:36 PM, George Kirikos <icann@leap.com>
wrote:
Hello,
(and trying to combine multiple responses in one email)
On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com> wrote: > I think you are trying to apply domain speculation thinking where it > is all about monetary value to protection of trademark rights, which is not > necessary focused or valued in terms of specific monetary value. They are > not the same thing. > > If life isn¹t fair is an acceptable justification then why change the > current system because it is not fair that some may have gamed it by using > trademark registrations obtained solely for the purpose of registering > valuable domain names during sunrise? You can¹t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement.
2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place).
3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour.
4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing.
While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere.
5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational.
6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse).
In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors.
Sincerely,
George Kirikos 416-588-0269
https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=Dw
IGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBz
Cxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r2
4YJ9m6g71cr0vEGbww0X9qgsNDU&e=
gnso-rpm-wg mailing list gnso-rpm-wg@icann.org
https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailma n_listinfo_gnso-2Drpm-2Dwg&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT- UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWu GXUa1FwI&s=g9D6x_5yyONXbDzXKuaVg7WsGRorHP9u7RikcGTnhtY&e=
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-- jonathan matkowsky, vp - ip & head of global brand threat mitigation
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George, I believe that your mention about exceptions to incontestability in US is universally accepted as ground to cancel rights: bad faith and fraud. Gaming the system basically is using a legal system to do something that is wrong for the right of others. The fact that some trademark owners can behave bad is nothing that can be used for create or correct the international domain legal system. Hector Héctor Ariel Manoff Vitale, Manoff & Feilbogen Viamonte 1145 10º Piso C1053ABW Buenos Aires República Argentina Te: (54-11) 4371-6100 Fax: (54-11) 4371-6365 E-mail: amanoff@vmf.com.ar Web: http://www.vmf.com.ar **************************************************************************************************************************************************** Esta comunicación tiene como destinatario a la persona o empresa a la cual está dirigida y puede contener información confidencial y reservada. Si el lector de este mensaje no es el destinatario o sus empleados o representantes, deberá proceder a reenviar el presente a su remitente. La distribución, diseminación o copiado de este mensaje podría constituir violación a la ley. Gracias. This email and any files transmitted with it are intended only for the use of the individual or entity to which it is addressed, and may contain information that is privileged, confidential, and exempt from disclosure under applicable law. If the reader of this message is not the intended recipient, or the employee or agent responsible for delivering the message to recipient, you are hereby notified that any dissemination, distribution or copying of this communication in error, please notify us immediately by telephone and return the original message to us at the above address. Thank you. **************************************************************************************************************************************************** -----Mensaje original----- De: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] En nombre de George Kirikos Enviado el: jueves, 02 de febrero de 2017 17:37 Para: J. Scott Evans CC: gnso-rpm-wg Asunto: Re: [gnso-rpm-wg] TMCH Blog J. Scott: I'm not a lawyer, nor am I practising trademark law. I made a reference to INTA's website, and to the USPTO's own research, in furtherance of a discussion we're having on this list. What makes you think I'm not allowed to do so? If you have a problem with the content of my messages, dispute the content, rather than seeking to silence the speaker of that content. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Thu, Feb 2, 2017 at 3:29 PM, J. Scott Evans <jsevans@adobe.com> wrote:
George:
Are you a trademark attorney? Are you an attorney? If not, I think it would be best if you refrain from practicing law. If you are, I point you to McCarthy on Trademarks & Unfair Competition for US practice and Trademarks Throughout the World for a glimpse of international trademark laws.
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
On 2/2/17, 12:23 PM, "gnso-rpm-wg-bounces@icann.org on behalf of George Kirikos" <gnso-rpm-wg-bounces@icann.org on behalf of icann@leap.com> wrote:
Without belabouring the obvious:
1. "Incontestability" is less absolute than it sounds. Since Marc appears to dislike links to Wikipedia, let me choose a reference that he might prefer, namely INTA:
http://www.inta.org/INTABulletin/Pages/IncontestabilityDoesAnybodyReallyUn derstandIt.aspx
"Despite the name, incontestability does not provide the registration with a complete shield against attack. Registrations are subject to cancellation at any time based on any of the following: (1) genericness; (2) functionality; (3) abandonment; (4) fraud on the USPTO; (5) immorality, deception or scandalousness; (6) disparagement; (7) false suggestion of a connection; (8) geographical indications on wines or spirits meeting certain requirements; (9) representation of a flag or coat of arms of any nation; or (10) representation or name of a living person without his or her consent or of a deceased president without the consent of his widow. So the shield of incontestability has been likened to the proverbial armor made of Swiss cheese rather than a coat made of metal."
Let me repeat the "takeaway", namely "armor made of Swiss cheese."
2. As for what is "fact" vs "evidence" re: the meaning of a TM registration, let me remind folks of some alarming statistics posted to this list last August:
http://mm.icann.org/pipermail/gnso-rpm-wg/2016-August/000474.html
"The results of the pilot program indicate that a substantial majority of foreign registrants, 73% under the Madrid Protocol and 65% under the Paris Convention, have submitted false declarations of use and have therefore received trademark protection to which they are not entitled in the United States."
"During the two-year pilot program, the USPTO found that 51% of the audited registration owners were unable to satisfy these additional proof requirements. The USPTO cancelled 16% of the audited registrations in their entirety because the registration owners failed to respond to the request for additional proof or any other issues raised during the examination of the original affidavit. In addition, 35% of the audited registration owners requested that some of the goods or services be deleted from their registration."
"A register that does not accurately reflect marks in use in the United States for the goods/services identified in registrations imposes costs and burdens on the public."
In order to have a balanced and thorough review of the TMCH, we need to keep these things in mind.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Thu, Feb 2, 2017 at 3:08 PM, jonathan matkowsky <jonathan.matkowsky@riskiq.net> wrote:
In US, one of the benefits of registration is a presumption of validity of ownership, and exclusivity with respect to the goods/services covered by the registration. Only by successfully challenging the registration would the owner lose that benefit. After 5 years, assuming certain documents are filed, the registration becomes conclusive evidence in certain respects.
On Thu, 2 Feb 2017 at 21:25 Lori Schulman <lschulman@inta.org> wrote:
As a clarification to the point of law, TM rights are presumed until they are challenged. George, to your point, TM rights may certainly be challenged. However, the presumption is with the owner of the TM registration until such challenge prevails. Under U.S. law, TM registrations are proof of right. They are more than a notice of claim. An application is the notice of claim, the resulting registration presumes the right. I certainly welcome trademark practitioners from jurisdictions to weigh in on whether registrations are ³notice of a claim² or considered proof of ownership until otherwise successfully challenged.
Lori
Lori S. Schulman
Senior Director, Internet Policy
International Trademark Association (INTA)
+1-202-704-0408, Skype: lsschulman
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 2:19 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] TMCH Blog
Marc: I used the Wikipedia link as a fairly neutral starting point for the theory of signalling, and not "authoritative". Would you consider the Nobel Prize in Economics for work on signalling to be "authoritative" enough for you?
http://www.nobelprize.org/nobel_prizes/economic-sciences/laureates/2001/ press.html
Or should I have provided (like most of the posts to this list) no external references at all, and simply allow people to go to Google on their own? Which aspect of the concept of signalling do you disagree with?
As for "registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction."
Hmmm, that's not correct, given that TM registrations can be and are disputed and cancelled. Trademark registration is *evidence* and *notice* of a *claim* to a trademark right (perhaps even a strong claim), but are not "proof" of anything as a "fact."
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Thu, Feb 2, 2017 at 2:06 PM, <trachtenbergm@gtlaw.com> wrote:
George,
Thank you for your economics tutorial based on Wikipedia - certainly an authoritative source.
Regardless I don¹t think your application of this to the TMCH is appropriate and disagree with your description of how the TMCH functions. When trademark holders submit their registrations to the TMCH, they are not trying to prove that their marks are "worthy" of protection. The fact that they have registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction.
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 12:58 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog
To continue the "economics tutorial", this is all directly related to the concept of signalling:
https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.org_wi ki_Signalling-5F-28economics-29&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB 7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4 g3JWuGXUa1FwI&s=_-ZU3Mu11NJjQnuoQdYhV9epeypY8SYFTzL35TJgjqs&e=
The classic example comes from the education credentials market. How does a job candidate signal that they're a high quality hire? The
that high quality job candidates can obtain good degrees, and it's much costlier for low quality job candidates to get those same credentials.
Let's apply this to the TMCH -- implicitly, trademark holders are jumping through hoops at present to determine that their marks are "worthy" of protection. The hoops they're jumping through are:
1. pay the TMCH fees, and 2. show evidence of national TM registration in a jurisdiction, and
idea is 3.
show proof of use
However, unlike the academic credentials market above, where "good" and "bad" job candidates face different costs, in the TMCH the "good" and "bad" trademark holders face essentially the SAME costs! (i.e. the fees are the same, one can get a Pakistani TM for under $10, and one can throw up a webpage for free to show "proof of use").
In other words, the mechanisms for signalling are entirely broken in the TMCH. Economics 101. The "bad guys" certainly know it's broken. As a policymaking body, we should understand *why* it's broken, and either (1) make stronger signals to differentiate and distinguish between worthy and unworthy marks, or (2) as I suggested earlier, set an explicit direct price to change the balance and behaviour directly.
Sincerely,
George Kirikos 416-588-0269
https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIG aQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1 c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r24YJ9m6 g71cr0vEGbww0X9qgsNDU&e=
On Thu, Feb 2, 2017 at 1:36 PM, George Kirikos <icann@leap.com>
wrote:
Hello,
(and trying to combine multiple responses in one email)
On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com> wrote: > I think you are trying to apply domain speculation thinking where it > is all about monetary value to protection of trademark rights, which is not > necessary focused or valued in terms of specific monetary value. They are > not the same thing. > > If life isn¹t fair is an acceptable justification then why change the > current system because it is not fair that some may have gamed it by using > trademark registrations obtained solely for the purpose of registering > valuable domain names during sunrise? You can¹t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement.
2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place).
3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour.
4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing.
While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere.
5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational.
6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse).
In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors.
Sincerely,
George Kirikos 416-588-0269
https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=Dw
IGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBz
Cxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r2
4YJ9m6g71cr0vEGbww0X9qgsNDU&e=
gnso-rpm-wg mailing list gnso-rpm-wg@icann.org
https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailma n_listinfo_gnso-2Drpm-2Dwg&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT- UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWu GXUa1FwI&s=g9D6x_5yyONXbDzXKuaVg7WsGRorHP9u7RikcGTnhtY&e=
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-- jonathan matkowsky, vp - ip & head of global brand threat mitigation
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I am lawyer and I work for INTA so I will speak to INTA's content. Yes, per the information found on the INTA website, the armor has holes, however the legal threshold for contesting an incontestable mark in the U.S. is high. It takes substantial effort and a high burden of proof to partake of the cheese. As noted earlier in the thread, the presumption of validity rests with the trademark owner. That said, none of INTA's content is intended to be construed as legal advice. We provide information for brand owners and trademark professionals for whom it is incumbent to thoroughly research the merits of any particular action that they may be contemplating. Reading provisions of statutes at face value without understanding the underlying principles and precedents that support the statute or the threshold of evidence required to successfully challenge a trademark registration under the statute can be dangerous because it may over simplify a complex area of the law. With regard to the US efforts to get rid of "dead wood" trademarks, its speaks to the integrity of the US Trademark system in a positive way. The US understands that there is a problem and is taking the necessary steps to correct it. While the statistics are useful to understand the inconsistencies in the US Federal Register, I think it is dangerous to use these statistics to support a theory that a trademark registration is inherently unreliable and such unreliability should be factored into ICANN policies. It undermines carefully constructed national and international trademark regimes. We need to trust that national, regional and global trademark offices are doing their job as they have mechanisms to challenge the validity of a trademark as well as internal checks such as the USPTO is undertaking. It's clear that we can demonstrate flaws and inconsistencies in almost any system. However, discounting the entire system because of bad actors undermines what we are trying to achieve in terms of taking actions consistent with recognized principles of law and fairness to all parties. If there is a reasonable way to curtail gaming without undermining an international system designed to protect consumers and promote innovation then I am certainly open to discussing it. Lori Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman [cid:image005.jpg@01D270D2.1801CD20] From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 3:37 PM To: J. Scott Evans <jsevans@adobe.com> Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH Blog J. Scott: I'm not a lawyer, nor am I practising trademark law. I made a reference to INTA's website, and to the USPTO's own research, in furtherance of a discussion we're having on this list. What makes you think I'm not allowed to do so? If you have a problem with the content of my messages, dispute the content, rather than seeking to silence the speaker of that content. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Thu, Feb 2, 2017 at 3:29 PM, J. Scott Evans <jsevans@adobe.com><mailto:jsevans@adobe.com%3e> wrote:
George:
Are you a trademark attorney? Are you an attorney? If not, I think it would be best if you refrain from practicing law. If you are, I point you to McCarthy on Trademarks & Unfair Competition for US practice and Trademarks Throughout the World for a glimpse of international trademark laws.
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<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com>
On 2/2/17, 12:23 PM, "gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> on behalf of George Kirikos" <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> on behalf of icann@leap.com><mailto:icann@leap.com%3e> wrote:
Without belabouring the obvious:
1. "Incontestability" is less absolute than it sounds. Since Marc appears to dislike links to Wikipedia, let me choose a reference that he might prefer, namely INTA:
http://www.inta.org/INTABulletin/Pages/IncontestabilityDoesAnybodyReallyUn derstandIt.aspx
"Despite the name, incontestability does not provide the registration with a complete shield against attack. Registrations are subject to cancellation at any time based on any of the following: (1) genericness; (2) functionality; (3) abandonment; (4) fraud on the USPTO; (5) immorality, deception or scandalousness; (6) disparagement; (7) false suggestion of a connection; (8) geographical indications on wines or spirits meeting certain requirements; (9) representation of a flag or coat of arms of any nation; or (10) representation or name of a living person without his or her consent or of a deceased president without the consent of his widow. So the shield of incontestability has been likened to the proverbial armor made of Swiss cheese rather than a coat made of metal."
Let me repeat the "takeaway", namely "armor made of Swiss cheese."
2. As for what is "fact" vs "evidence" re: the meaning of a TM registration, let me remind folks of some alarming statistics posted to this list last August:
http://mm.icann.org/pipermail/gnso-rpm-wg/2016-August/000474.html
"The results of the pilot program indicate that a substantial majority of foreign registrants, 73% under the Madrid Protocol and 65% under the Paris Convention, have submitted false declarations of use and have therefore received trademark protection to which they are not entitled in the United States."
"During the two-year pilot program, the USPTO found that 51% of the audited registration owners were unable to satisfy these additional proof requirements. The USPTO cancelled 16% of the audited registrations in their entirety because the registration owners failed to respond to the request for additional proof or any other issues raised during the examination of the original affidavit. In addition, 35% of the audited registration owners requested that some of the goods or services be deleted from their registration."
"A register that does not accurately reflect marks in use in the United States for the goods/services identified in registrations imposes costs and burdens on the public."
In order to have a balanced and thorough review of the TMCH, we need to keep these things in mind.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Thu, Feb 2, 2017 at 3:08 PM, jonathan matkowsky <jonathan.matkowsky@riskiq.net><mailto:jonathan.matkowsky@riskiq.net%3e> wrote:
In US, one of the benefits of registration is a presumption of validity of ownership, and exclusivity with respect to the goods/services covered by the registration. Only by successfully challenging the registration would the owner lose that benefit. After 5 years, assuming certain documents are filed, the registration becomes conclusive evidence in certain respects.
On Thu, 2 Feb 2017 at 21:25 Lori Schulman <lschulman@inta.org><mailto:lschulman@inta.org%3e> wrote:
As a clarification to the point of law, TM rights are presumed until they are challenged. George, to your point, TM rights may certainly be challenged. However, the presumption is with the owner of the TM registration until such challenge prevails. Under U.S. law, TM registrations are proof of right. They are more than a notice of claim. An application is the notice of claim, the resulting registration presumes the right. I certainly welcome trademark practitioners from jurisdictions to weigh in on whether registrations are ³notice of a claim² or considered proof of ownership until otherwise successfully challenged.
Lori
Lori S. Schulman
Senior Director, Internet Policy
International Trademark Association (INTA)
+1-202-704-0408, Skype: lsschulman
From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:%3e%3e%3e%3e[mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 2:19 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org%3e>
Subject: Re: [gnso-rpm-wg] TMCH Blog
Marc: I used the Wikipedia link as a fairly neutral starting point for the theory of signalling, and not "authoritative". Would you consider the Nobel Prize in Economics for work on signalling to be "authoritative" enough for you?
http://www.nobelprize.org/nobel_prizes/economic-sciences/laureates/2001/ press.html
Or should I have provided (like most of the posts to this list) no external references at all, and simply allow people to go to Google on their own? Which aspect of the concept of signalling do you disagree with?
As for "registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction."
Hmmm, that's not correct, given that TM registrations can be and are disputed and cancelled. Trademark registration is *evidence* and *notice* of a *claim* to a trademark right (perhaps even a strong claim), but are not "proof" of anything as a "fact."
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Thu, Feb 2, 2017 at 2:06 PM, <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com%3e> wrote:
George,
Thank you for your economics tutorial based on Wikipedia - certainly an authoritative source.
Regardless I don¹t think your application of this to the TMCH is appropriate and disagree with your description of how the TMCH functions. When trademark holders submit their registrations to the TMCH, they are not trying to prove that their marks are "worthy" of protection. The fact that they have registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction.
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<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com>
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 12:58 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog
To continue the "economics tutorial", this is all directly related to the concept of signalling:
https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.org_wi ki_Signalling-5F-28economics-29&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB 7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4 g3JWuGXUa1FwI&s=_-ZU3Mu11NJjQnuoQdYhV9epeypY8SYFTzL35TJgjqs&e=
The classic example comes from the education credentials market. How does a job candidate signal that they're a high quality hire? The
that high quality job candidates can obtain good degrees, and it's much costlier for low quality job candidates to get those same credentials.
Let's apply this to the TMCH -- implicitly, trademark holders are jumping through hoops at present to determine that their marks are "worthy" of protection. The hoops they're jumping through are:
1. pay the TMCH fees, and 2. show evidence of national TM registration in a jurisdiction, and
idea is 3.
show proof of use
However, unlike the academic credentials market above, where "good" and "bad" job candidates face different costs, in the TMCH the "good" and "bad" trademark holders face essentially the SAME costs! (i.e. the fees are the same, one can get a Pakistani TM for under $10, and one can throw up a webpage for free to show "proof of use").
In other words, the mechanisms for signalling are entirely broken in the TMCH. Economics 101. The "bad guys" certainly know it's broken. As a policymaking body, we should understand *why* it's broken, and either (1) make stronger signals to differentiate and distinguish between worthy and unworthy marks, or (2) as I suggested earlier, set an explicit direct price to change the balance and behaviour directly.
Sincerely,
George Kirikos 416-588-0269
https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIG aQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1 c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r24YJ9m6 g71cr0vEGbww0X9qgsNDU&e=
On Thu, Feb 2, 2017 at 1:36 PM, George Kirikos <icann@leap.com><mailto:icann@leap.com%3e>
wrote:
Hello,
(and trying to combine multiple responses in one email)
On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com%3e> wrote: > I think you are trying to apply domain speculation thinking where it > is all about monetary value to protection of trademark rights, which is not > necessary focused or valued in terms of specific monetary value. They are > not the same thing. > > If life isn¹t fair is an acceptable justification then why change the > current system because it is not fair that some may have gamed it by using > trademark registrations obtained solely for the purpose of registering > valuable domain names during sunrise? You can¹t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement.
2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place).
3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour.
4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing.
While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere.
5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational.
6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse).
In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors.
Sincerely,
George Kirikos 416-588-0269
https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=Dw
IGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBz
Cxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r2
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What she said . . . . 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<mailto:jsevans@adobe.com> www.adobe.com From: Lori Schulman <lschulman@inta.org<mailto:lschulman@inta.org>> Date: Thursday, February 2, 2017 at 2:17 PM To: George Kirikos <icann@leap.com<mailto:icann@leap.com>>, "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>> Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [gnso-rpm-wg] TMCH Blog I am lawyer and I work for INTA so I will speak to INTA’s content. Yes, per the information found on the INTA website, the armor has holes, however the legal threshold for contesting an incontestable mark in the U.S. is high. It takes substantial effort and a high burden of proof to partake of the cheese. As noted earlier in the thread, the presumption of validity rests with the trademark owner. That said, none of INTA’s content is intended to be construed as legal advice. We provide information for brand owners and trademark professionals for whom it is incumbent to thoroughly research the merits of any particular action that they may be contemplating. Reading provisions of statutes at face value without understanding the underlying principles and precedents that support the statute or the threshold of evidence required to successfully challenge a trademark registration under the statute can be dangerous because it may over simplify a complex area of the law. With regard to the US efforts to get rid of “dead wood” trademarks, its speaks to the integrity of the US Trademark system in a positive way. The US understands that there is a problem and is taking the necessary steps to correct it. While the statistics are useful to understand the inconsistencies in the US Federal Register, I think it is dangerous to use these statistics to support a theory that a trademark registration is inherently unreliable and such unreliability should be factored into ICANN policies. It undermines carefully constructed national and international trademark regimes. We need to trust that national, regional and global trademark offices are doing their job as they have mechanisms to challenge the validity of a trademark as well as internal checks such as the USPTO is undertaking. It’s clear that we can demonstrate flaws and inconsistencies in almost any system. However, discounting the entire system because of bad actors undermines what we are trying to achieve in terms of taking actions consistent with recognized principles of law and fairness to all parties. If there is a reasonable way to curtail gaming without undermining an international system designed to protect consumers and promote innovation then I am certainly open to discussing it. Lori Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman [cid:image005.jpg@01D270D2.1801CD20] From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 3:37 PM To: J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH Blog J. Scott: I'm not a lawyer, nor am I practising trademark law. I made a reference to INTA's website, and to the USPTO's own research, in furtherance of a discussion we're having on this list. What makes you think I'm not allowed to do so? If you have a problem with the content of my messages, dispute the content, rather than seeking to silence the speaker of that content. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Thu, Feb 2, 2017 at 3:29 PM, J. Scott Evans <jsevans@adobe.com><mailto:jsevans@adobe.com%3e> wrote:
George:
Are you a trademark attorney? Are you an attorney? If not, I think it would be best if you refrain from practicing law. If you are, I point you to McCarthy on Trademarks & Unfair Competition for US practice and Trademarks Throughout the World for a glimpse of international trademark laws.
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<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com>
On 2/2/17, 12:23 PM, "gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> on behalf of George Kirikos" <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> on behalf of icann@leap.com><mailto:icann@leap.com%3e> wrote:
Without belabouring the obvious:
1. "Incontestability" is less absolute than it sounds. Since Marc appears to dislike links to Wikipedia, let me choose a reference that he might prefer, namely INTA:
http://www.inta.org/INTABulletin/Pages/IncontestabilityDoesAnybodyReallyUn derstandIt.aspx
"Despite the name, incontestability does not provide the registration with a complete shield against attack. Registrations are subject to cancellation at any time based on any of the following: (1) genericness; (2) functionality; (3) abandonment; (4) fraud on the USPTO; (5) immorality, deception or scandalousness; (6) disparagement; (7) false suggestion of a connection; (8) geographical indications on wines or spirits meeting certain requirements; (9) representation of a flag or coat of arms of any nation; or (10) representation or name of a living person without his or her consent or of a deceased president without the consent of his widow. So the shield of incontestability has been likened to the proverbial armor made of Swiss cheese rather than a coat made of metal."
Let me repeat the "takeaway", namely "armor made of Swiss cheese."
2. As for what is "fact" vs "evidence" re: the meaning of a TM registration, let me remind folks of some alarming statistics posted to this list last August:
http://mm.icann.org/pipermail/gnso-rpm-wg/2016-August/000474.html
"The results of the pilot program indicate that a substantial majority of foreign registrants, 73% under the Madrid Protocol and 65% under the Paris Convention, have submitted false declarations of use and have therefore received trademark protection to which they are not entitled in the United States."
"During the two-year pilot program, the USPTO found that 51% of the audited registration owners were unable to satisfy these additional proof requirements. The USPTO cancelled 16% of the audited registrations in their entirety because the registration owners failed to respond to the request for additional proof or any other issues raised during the examination of the original affidavit. In addition, 35% of the audited registration owners requested that some of the goods or services be deleted from their registration."
"A register that does not accurately reflect marks in use in the United States for the goods/services identified in registrations imposes costs and burdens on the public."
In order to have a balanced and thorough review of the TMCH, we need to keep these things in mind.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Thu, Feb 2, 2017 at 3:08 PM, jonathan matkowsky <jonathan.matkowsky@riskiq.net><mailto:jonathan.matkowsky@riskiq.net%3e> wrote:
In US, one of the benefits of registration is a presumption of validity of ownership, and exclusivity with respect to the goods/services covered by the registration. Only by successfully challenging the registration would the owner lose that benefit. After 5 years, assuming certain documents are filed, the registration becomes conclusive evidence in certain respects.
On Thu, 2 Feb 2017 at 21:25 Lori Schulman <lschulman@inta.org><mailto:lschulman@inta.org%3e> wrote:
As a clarification to the point of law, TM rights are presumed until they are challenged. George, to your point, TM rights may certainly be challenged. However, the presumption is with the owner of the TM registration until such challenge prevails. Under U.S. law, TM registrations are proof of right. They are more than a notice of claim. An application is the notice of claim, the resulting registration presumes the right. I certainly welcome trademark practitioners from jurisdictions to weigh in on whether registrations are ³notice of a claim² or considered proof of ownership until otherwise successfully challenged.
Lori
Lori S. Schulman
Senior Director, Internet Policy
International Trademark Association (INTA)
+1-202-704-0408, Skype: lsschulman
From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:%3e%3e%3e%3e[mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 2:19 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org%3e>
Subject: Re: [gnso-rpm-wg] TMCH Blog
Marc: I used the Wikipedia link as a fairly neutral starting point for the theory of signalling, and not "authoritative". Would you consider the Nobel Prize in Economics for work on signalling to be "authoritative" enough for you?
http://www.nobelprize.org/nobel_prizes/economic-sciences/laureates/2001/ press.html
Or should I have provided (like most of the posts to this list) no external references at all, and simply allow people to go to Google on their own? Which aspect of the concept of signalling do you disagree with?
As for "registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction."
Hmmm, that's not correct, given that TM registrations can be and are disputed and cancelled. Trademark registration is *evidence* and *notice* of a *claim* to a trademark right (perhaps even a strong claim), but are not "proof" of anything as a "fact."
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Thu, Feb 2, 2017 at 2:06 PM, <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com%3e> wrote:
George,
Thank you for your economics tutorial based on Wikipedia - certainly an authoritative source.
Regardless I don¹t think your application of this to the TMCH is appropriate and disagree with your description of how the TMCH functions. When trademark holders submit their registrations to the TMCH, they are not trying to prove that their marks are "worthy" of protection. The fact that they have registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction.
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<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com>
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 12:58 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog
To continue the "economics tutorial", this is all directly related to the concept of signalling:
https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.org_wi ki_Signalling-5F-28economics-29&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB 7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4 g3JWuGXUa1FwI&s=_-ZU3Mu11NJjQnuoQdYhV9epeypY8SYFTzL35TJgjqs&e=
The classic example comes from the education credentials market. How does a job candidate signal that they're a high quality hire? The
that high quality job candidates can obtain good degrees, and it's much costlier for low quality job candidates to get those same credentials.
Let's apply this to the TMCH -- implicitly, trademark holders are jumping through hoops at present to determine that their marks are "worthy" of protection. The hoops they're jumping through are:
1. pay the TMCH fees, and 2. show evidence of national TM registration in a jurisdiction, and
idea is 3.
show proof of use
However, unlike the academic credentials market above, where "good" and "bad" job candidates face different costs, in the TMCH the "good" and "bad" trademark holders face essentially the SAME costs! (i.e. the fees are the same, one can get a Pakistani TM for under $10, and one can throw up a webpage for free to show "proof of use").
In other words, the mechanisms for signalling are entirely broken in the TMCH. Economics 101. The "bad guys" certainly know it's broken. As a policymaking body, we should understand *why* it's broken, and either (1) make stronger signals to differentiate and distinguish between worthy and unworthy marks, or (2) as I suggested earlier, set an explicit direct price to change the balance and behaviour directly.
Sincerely,
George Kirikos 416-588-0269
https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIG aQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1 c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r24YJ9m6 g71cr0vEGbww0X9qgsNDU&e=
On Thu, Feb 2, 2017 at 1:36 PM, George Kirikos <icann@leap.com><mailto:icann@leap.com%3e>
wrote:
Hello,
(and trying to combine multiple responses in one email)
On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com%3e> wrote: > I think you are trying to apply domain speculation thinking where it > is all about monetary value to protection of trademark rights, which is not > necessary focused or valued in terms of specific monetary value. They are > not the same thing. > > If life isn¹t fair is an acceptable justification then why change the > current system because it is not fair that some may have gamed it by using > trademark registrations obtained solely for the purpose of registering > valuable domain names during sunrise? You can¹t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement.
2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place).
3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour.
4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing.
While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere.
5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational.
6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse).
In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors.
Sincerely,
George Kirikos 416-588-0269
https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=Dw
IGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBz
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-- jonathan matkowsky, vp - ip & head of global brand threat mitigation
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What she said+1. On the other point, regarding the USPTO pilot study, the "alarming statistics" are a false alarm. If you go to the USPTO Pilot Project report itself, you will see that* 84%* of the 500 registrations in the pilot stayed on the trademark register, while 16% failed to respond and were cancelled.. In other words, all of those who actually responded were able to maintain their trademark registrations, although some had to delete some goods and/or services from their registrations due to non-use of those particular goods and/or services. Also, all of the trademark registration in the pilot project were valid trademark registrations, and were entitled to continuing as registrations. The owners of all 500 registrations had been able to show use of the trademark on at least one good/service in each class in the registration when they filed the initial Declaration of Use at the beginning of the study. The pilot program asked for proof of use of two *additional* goods or services per class. This exceeds the current PTO practice, where a specimen demonstrating use of a mark on a single good or service within a class is sufficient to maintain registration for an entire class. In other words, owners of registrations selected under the pilot study were subject to an enhanced level of scrutiny. So, the 51% number is quite misleading -- it only represents those participants that were unable to show use of the *additional *goods and services requested in the pilot, or who failed to respond at all. In addition, the following should be kept in mind: 1. This represents a limited subset of US trademarks -- trademark registrations that are primarily based on rights from outside the US (from Paris Convention or Madrid Protocol countries). So, even if the US registration was cancelled, it's highly likely that their "home" trademark registration was still valid. 2. Most US trademarks do not fall into this category, so it teaches us nothing about trademarks where the original filing was in the US. 3. In many other countries, trademark filings tend to list all the goods in a class, even where the use is only on certain goods. The US practice is to file only for the goods where there is (or will be) actual use. The result is that these foreign registrants were very vulnerable to being tripped up by this pilot study. If you have a list of 30 goods in a class, and you provide proof of use for one of them, that' s usually satisfactory. In the pilot, the USPTO randomly chose two of the other goods (i.e, 2 of the 29 in this example). If the registrant didn't have use of these two goods, they went into the 51% -- even if they had use of some or all of the other goods in the class. If they deleted these goods for non-use, they were then subject to further proof of use requirements in order to maintain their registration. Every registrant responded successfully. In the end, the only "takeaway" from this study is that foreign filings with long lists of goods may include some goods for which use cannot be proven, in spite of signing off on the standard declaration that the marks are in use for all goods on the registaration. This is the so-called "deadwood" problem. It's still a problem, but it is not the problem you thought it was. The "trademark protection to which [the registrants] are not entitled in the United States" refers to these additional goods in the registration for which there is no use. It does *not* refer to the registration as a whole. Notably, it has little if any application to the TMCH. First, it's best practice to use a "home country" registration for the TMCH, so these types of "foreign filings" are unlikely to be used for the TMCH. Second, the registrants were able to prove use for at least one good or service per class; so, if these registrations were used in the TMCH, they would have been accepted, and appropriately so. I hope that clears up the confusion about what this study does and does not mean. Best regards, Greg On Thu, Feb 2, 2017 at 5:23 PM, J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org> wrote:
What she said . . . .
*J. Scott Evans* *| Associate General Counsel - Trademarks, Copyright, Domains & Marketing |*
*Adobe *
345 Park Avenue
San Jose, CA 95110 408.536.5336 <(408)%20536-5336> (tel), 408.709.6162 <(408)%20709-6162> (cell) jsevans@adobe.com
www.adobe.com
From: Lori Schulman <lschulman@inta.org> Date: Thursday, February 2, 2017 at 2:17 PM To: George Kirikos <icann@leap.com>, "J. Scott Evans" <jsevans@adobe.com> Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] TMCH Blog
I am lawyer and I work for INTA so I will speak to INTA’s content. Yes, per the information found on the INTA website, the armor has holes, however the legal threshold for contesting an incontestable mark in the U.S. is high. It takes substantial effort and a high burden of proof to partake of the cheese. As noted earlier in the thread, the presumption of validity rests with the trademark owner. That said, none of INTA’s content is intended to be construed as legal advice. We provide information for brand owners and trademark professionals for whom it is incumbent to thoroughly research the merits of any particular action that they may be contemplating. Reading provisions of statutes at face value without understanding the underlying principles and precedents that support the statute or the threshold of evidence required to successfully challenge a trademark registration under the statute can be dangerous because it may over simplify a complex area of the law.
With regard to the US efforts to get rid of “dead wood” trademarks, its speaks to the integrity of the US Trademark system in a positive way. The US understands that there is a problem and is taking the necessary steps to correct it. While the statistics are useful to understand the inconsistencies in the US Federal Register, I think it is dangerous to use these statistics to support a theory that a trademark registration is inherently unreliable and such unreliability should be factored into ICANN policies. It undermines carefully constructed national and international trademark regimes. We need to trust that national, regional and global trademark offices are doing their job as they have mechanisms to challenge the validity of a trademark as well as internal checks such as the USPTO is undertaking.
It’s clear that we can demonstrate flaws and inconsistencies in almost any system. However, discounting the entire system because of bad actors undermines what we are trying to achieve in terms of taking actions consistent with recognized principles of law and fairness to all parties.
If there is a reasonable way to curtail gaming without undermining an international system designed to protect consumers and promote innovation then I am certainly open to discussing it.
Lori
Lori S. Schulman
Senior Director, Internet Policy
*International Trademark Association (INTA)*
+1-202-704-0408 <(202)%20704-0408>, Skype: lsschulman
[image: cid:image005.jpg@01D270D2.1801CD20]
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *George Kirikos *Sent:* Thursday, February 02, 2017 3:37 PM *To:* J. Scott Evans <jsevans@adobe.com> *Cc:* gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] TMCH Blog
J. Scott: I'm not a lawyer, nor am I practising trademark law. I made a reference to INTA's website, and to the USPTO's own research, in furtherance of a discussion we're having on this list. What makes you think I'm not allowed to do so? If you have a problem with the content of my messages, dispute the content, rather than seeking to silence the speaker of that content.
Sincerely,
George Kirikos 416-588-0269 <(416)%20588-0269> http://www.leap.com/
On Thu, Feb 2, 2017 at 3:29 PM, J. Scott Evans <jsevans@adobe.com> wrote:
George:
Are you a trademark attorney? Are you an attorney? If not, I think it would be best if you refrain from practicing law. If you are, I point you to McCarthy on Trademarks & Unfair Competition for US practice and Trademarks Throughout the World for a glimpse of international trademark laws.
J. Scott
J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336 <(408)%20536-5336> (tel), 408.709.6162 <(408)%20709-6162> (cell) jsevans@adobe.com www.adobe.com
On 2/2/17, 12:23 PM, "gnso-rpm-wg-bounces@icann.org on behalf of George Kirikos" <gnso-rpm-wg-bounces@icann.org on behalf of icann@leap.com> wrote:
Without belabouring the obvious:
1. "Incontestability" is less absolute than it sounds. Since Marc appears to dislike links to Wikipedia, let me choose a reference that he might prefer, namely INTA:
http://www.inta.org/INTABulletin/Pages/IncontestabilityDoesAnybodyRea llyUn derstandIt.aspx
"Despite the name, incontestability does not provide the registration with a complete shield against attack. Registrations are subject to cancellation at any time based on any of the following: (1) genericness; (2) functionality; (3) abandonment; (4) fraud on the USPTO; (5) immorality, deception or scandalousness; (6) disparagement; (7) false suggestion of a connection; (8) geographical indications on wines or spirits meeting certain requirements; (9) representation of a flag or coat of arms of any nation; or (10) representation or name of a living person without his or her consent or of a deceased president without the consent of his widow. So the shield of incontestability has been likened to the proverbial armor made of Swiss cheese rather than a coat made of metal."
Let me repeat the "takeaway", namely "armor made of Swiss cheese."
2. As for what is "fact" vs "evidence" re: the meaning of a TM registration, let me remind folks of some alarming statistics posted to this list last August:
http://mm.icann.org/pipermail/gnso-rpm-wg/2016-August/000474.html
"The results of the pilot program indicate that a substantial majority of foreign registrants, 73% under the Madrid Protocol and 65% under the Paris Convention, have submitted false declarations of use and have therefore received trademark protection to which they are not entitled in the United States."
"During the two-year pilot program, the USPTO found that 51% of the audited registration owners were unable to satisfy these additional proof requirements. The USPTO cancelled 16% of the audited registrations in their entirety because the registration owners failed to respond to the request for additional proof or any other issues raised during the examination of the original affidavit. In addition, 35% of the audited registration owners requested that some of the goods or services be deleted from their registration."
"A register that does not accurately reflect marks in use in the United States for the goods/services identified in registrations imposes costs and burdens on the public."
In order to have a balanced and thorough review of the TMCH, we need to keep these things in mind.
Sincerely,
George Kirikos 416-588-0269 <(416)%20588-0269> http://www.leap.com/
On Thu, Feb 2, 2017 at 3:08 PM, jonathan matkowsky <jonathan.matkowsky@riskiq.net> wrote:
In US, one of the benefits of registration is a presumption of validity of ownership, and exclusivity with respect to the goods/services covered by the registration. Only by successfully challenging the registration would the owner lose that benefit. After 5 years, assuming certain documents are filed, the registration becomes conclusive evidence in certain respects.
On Thu, 2 Feb 2017 at 21:25 Lori Schulman <lschulman@inta.org> wrote:
As a clarification to the point of law, TM rights are presumed until they are challenged. George, to your point, TM rights may certainly be challenged. However, the presumption is with the owner of the TM registration until such challenge prevails. Under U.S. law, TM registrations are proof of right. They are more than a notice of claim. An application is the notice of claim, the resulting registration presumes the right. I certainly welcome trademark practitioners from jurisdictions to weigh in on whether registrations are ³notice of a claim² or
considered
proof of ownership until otherwise successfully challenged.
Lori
Lori S. Schulman
Senior Director, Internet Policy
International Trademark Association (INTA)
+1-202-704-0408 <(202)%20704-0408>, Skype: lsschulman
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 2:19 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] TMCH Blog
Marc: I used the Wikipedia link as a fairly neutral starting point for the theory of signalling, and not "authoritative". Would you consider the Nobel Prize in Economics for work on signalling to be "authoritative" enough for you?
http://www.nobelprize.org/nobel_prizes/economic- sciences/laureates/2001/ press.html
Or should I have provided (like most of the posts to this list) no external references at all, and simply allow people to go to Google on their own? Which aspect of the concept of signalling do you disagree with?
As for "registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction."
Hmmm, that's not correct, given that TM registrations can be and are disputed and cancelled. Trademark registration is *evidence* and *notice* of a *claim* to a trademark right (perhaps even a strong claim), but are not "proof" of anything as a "fact."
Sincerely,
George Kirikos 416-588-0269 <(416)%20588-0269> http://www.leap.com/
On Thu, Feb 2, 2017 at 2:06 PM, <trachtenbergm@gtlaw.com> wrote:
George,
Thank you for your economics tutorial based on Wikipedia - certainly an authoritative source.
Regardless I don¹t think your application of this to the TMCH is appropriate and disagree with your description of how the TMCH functions. When trademark holders submit their registrations to the TMCH, they are not trying to prove that their marks are "worthy" of protection. The fact that they have registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction.
Best regards,
Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 <(312)%20456-1020> Mobile 773.677.3305 <(773)%20677-3305> trachtenbergm@gtlaw.com | www.gtlaw.com
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org <gnso-rpm-wg-bounces@icann.org>] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 12:58 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog
To continue the "economics tutorial", this is all directly related to the concept of signalling:
https://urldefense.proofpoint.com/v2/url?u=https- 3A__en.wikipedia.org_wi ki_Signalling-5F-28economics-29&d=DwIGaQ&c= 2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB 7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ- WyHhwMfs41uWqUos4 g3JWuGXUa1FwI&s=_-ZU3Mu11NJjQnuoQdYhV9epeypY8SYFTzL35TJgjqs&e=
The classic example comes from the education credentials market. How does a job candidate signal that they're a high quality hire? The
that high quality job candidates can obtain good degrees, and it's much costlier for low quality job candidates to get those same credentials.
Let's apply this to the TMCH -- implicitly, trademark holders are jumping through hoops at present to determine that their marks are "worthy" of protection. The hoops they're jumping through are:
1. pay the TMCH fees, and 2. show evidence of national TM registration in a jurisdiction, and
idea is 3.
show proof of use
However, unlike the academic credentials market above, where "good" and "bad" job candidates face different costs, in the TMCH the "good" and "bad" trademark holders face essentially the SAME costs! (i.e. the fees are the same, one can get a Pakistani TM for under $10, and one can throw up a webpage for free to show "proof of use").
In other words, the mechanisms for signalling are entirely broken in the TMCH. Economics 101. The "bad guys" certainly know it's broken. As a policymaking body, we should understand *why* it's broken, and either (1) make stronger signals to differentiate and distinguish between worthy and unworthy marks, or (2) as I suggested earlier, set an explicit direct price to change the balance and behaviour directly.
Sincerely,
George Kirikos 416-588-0269 <(416)%20588-0269>
https://urldefense.proofpoint.com/v2/url?u=http- 3A__www.leap.com_&d=DwIG aQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzC xm1 c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI &s=A_wfuQ-jCOYyo9r24YJ9m6 g71cr0vEGbww0X9qgsNDU&e=
On Thu, Feb 2, 2017 at 1:36 PM, George Kirikos <icann@leap.com>
wrote:
> Hello, > > (and trying to combine multiple responses in one email) > > On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com> wrote: >> I think you are trying to apply domain speculation thinking where it >> is all about monetary value to protection of trademark rights, which is not >> necessary focused or valued in terms of specific monetary value. They are >> not the same thing. >> >> If life isn¹t fair is an acceptable justification then why change the >> current system because it is not fair that some may have gamed it by using >> trademark registrations obtained solely for the purpose of registering >> valuable domain names during sunrise? You can¹t have it both ways. > > 1. The "domain speculation thinking" is your term for what is simply > rational economic decision-making. Even for trademark protection, > rational trademark holders prioritize enforcement based on a > comparison between the economic benefit of stopping the abuse relative > to the economic cost of that enforcement. > > 2. The "life isn't fair" in my statement was referencing the fact that > not everyone has the same wealth. That is entirely different from > those misusing trademark registrations obtained solely for the purpose > of registering valuable domain names -- those TMs would be invalid in > jurisdictions requiring use (and thus shouldn't have been granted in > the first place). > > 3. Some folks continue to dance around the issue, and ignore the > economics completely. Each and every time you try to add a wrinkle to > the procedure (i.e. "tweaks" that seek to give better proof of use, or > other modifications), all that does is slightly change the "costs" for > some actors, but doesn't change the underlying economics by much. i.e. > it attempts to impose a "price" indirectly, rather than explicitly and > directly setting a price that would actually change behaviour. > > 4. For those saying "small" trademark holders would be affected --- > fine, change the economics accordingly --- should the quota be 10,000 > marks? Should the cost be $1? Once you make the cost explicitly be $1, > that just says "Fine, we're going to accept all the gaming behaviour, > because we're prepared to look the other way!" That's an invitation to > those who are misusing the sunrise periods to continue doing what > they're doing. > > While some constituencies in the GNSO might be fine with that balance > (i.e. accept every TM, and allow all kinds of abuse of the sunrise > periods), other constituencies might draw the line for that balance > elsewhere. > > 5. Let me give you an example -- ACPA allows damages of up to $100,000 > for cybersquatting. That's an explicit cost on cybersquatters that > they take into account, and has a deterrent effect. What if that limit > instead was $500? Behaviour would obviously change accordingly, > because cybersquatters are rational. > > 6. A further example -- it costs $1000+ to file a UDRP (on top of > legal costs, so a number like $5000 might be more relevant for those > who use lawyers). If the total costs were $300, there would be a lot > more filings (which would reduce the benefits of cybersquatting, and > thus change the economics of abuse). > > In conclusion, the economics of all the actors are paramount, and seem > to be mostly ignored. By focusing on those economics directly, as > policymakers we can precision-target the policies to directly target > those behaviours, and reduce all the "collateral damage" on the > innocent actors. > > Sincerely, > > George Kirikos > 416-588-0269 <(416)%20588-0269> > https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=Dw > IGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBz > Cxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r2 > 4YJ9m6g71cr0vEGbww0X9qgsNDU&e= _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org
https://urldefense.proofpoint.com/v2/url?u=https- 3A__mm.icann.org_mailma n_listinfo_gnso-2Drpm-2Dwg&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r= L7MB7eHT- UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ- WyHhwMfs41uWqUos4g3JWu GXUa1FwI&s=g9D6x_5yyONXbDzXKuaVg7WsGRorHP9u7RikcGTnhtY&e=
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Hi folks, Greg wrote " If you go to the USPTO Pilot Project report itself, you will see that* 84%* of the 500 registrations in the pilot stayed on the trademark register, while 16% failed to respond and were cancelled.. In other words, all of those who actually responded were able to maintain their trademark registrations, although some had to delete some goods and/or services from their registrations due to non-use of those particular goods and/or services." That "in other words" part is actually not correct. It might not be evident from the language in that report, but if you dig deeper and go to the earlier roundtable at: https://www.uspto.gov/trademark/trademark-updates-and-announcements/uspto-ro... and download the Powerpoint report, on page 3 it states that "97% (486) of registrations completed the pilot." So, it's not correct to say that only those who didn't respond had their marks cancelled. The precise language of the report was that: "In another 78 registrations, or 16%, the trademark owner failed to respond to the requirements of the pilot and any other issues raised during examination of the underlying maintenance filing, resulting in cancellation of the registration." That's quite different from saying that 16% didn't respond at all (especially knowing from the PowerPoint that 97% actually responded, which I didn't link to before). What it means is that 16% didn't provide a good enough response to meet the requirements of the pilot study -- i.e. it failed to meet the *requirements*. Here's an open question --- what's an acceptable level of "gamed marks" in the TMCH? And equally valid, what's an acceptable level of cybersquatting amongst registered domains. Is 10% of domains being cybersquatting considered "acceptable"? We have statistics on invalid WHOIS, for example --- and those shape ICANN policy. Without actually auditing the TMCH to determine the number of gamed marks (as was done for the WHOIS database), how do we know whether we're meeting that "acceptable level"?? How do we make policy determinations without that data? And to respond to Lori's earlier post, one simple proposal to move things forward would be to separate out the fees for the TMCH sunrise access. Right now, people are paying for sunrise services: http://www.trademark-clearinghouse.com/content/trademark-clearinghouse-fees whether they want them or not. And it's clear from the actual registration stats that most markholders registered for the TMCH aren't using the sunrise periods. One can lower the TMCH fees for those markholders who don't want the sunrise period access (yippee, saving people money!) and raise the fees for the subset of markholders who do use the sunrise periods. In other words, right now the large majority of markholders who aren't using sunrise periods are subsidizing those who are using the sunrise. By raising the fees on those markholders who do use the sunrise periods (whose costs are higher due to the extra verification needed for "use"), and subjecting that subsetto greater scrutiny, one also reduces the "gaming" problem. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Thu, Feb 2, 2017 at 7:37 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:
What she said+1.
On the other point, regarding the USPTO pilot study, the "alarming statistics" are a false alarm. If you go to the USPTO Pilot Project report itself, you will see that* 84%* of the 500 registrations in the pilot stayed on the trademark register, while 16% failed to respond and were cancelled.. In other words, all of those who actually responded were able to maintain their trademark registrations, although some had to delete some goods and/or services from their registrations due to non-use of those particular goods and/or services.
Also, all of the trademark registration in the pilot project were valid trademark registrations, and were entitled to continuing as registrations. The owners of all 500 registrations had been able to show use of the trademark on at least one good/service in each class in the registration when they filed the initial Declaration of Use at the beginning of the study. The pilot program asked for proof of use of two *additional* goods or services per class. This exceeds the current PTO practice, where a specimen demonstrating use of a mark on a single good or service within a class is sufficient to maintain registration for an entire class. In other words, owners of registrations selected under the pilot study were subject to an enhanced level of scrutiny.
So, the 51% number is quite misleading -- it only represents those participants that were unable to show use of the *additional *goods and services requested in the pilot, or who failed to respond at all.
In addition, the following should be kept in mind:
1. This represents a limited subset of US trademarks -- trademark registrations that are primarily based on rights from outside the US (from Paris Convention or Madrid Protocol countries). So, even if the US registration was cancelled, it's highly likely that their "home" trademark registration was still valid. 2. Most US trademarks do not fall into this category, so it teaches us nothing about trademarks where the original filing was in the US. 3. In many other countries, trademark filings tend to list all the goods in a class, even where the use is only on certain goods. The US practice is to file only for the goods where there is (or will be) actual use. The result is that these foreign registrants were very vulnerable to being tripped up by this pilot study. If you have a list of 30 goods in a class, and you provide proof of use for one of them, that' s usually satisfactory. In the pilot, the USPTO randomly chose two of the other goods (i.e, 2 of the 29 in this example). If the registrant didn't have use of these two goods, they went into the 51% -- even if they had use of some or all of the other goods in the class. If they deleted these goods for non-use, they were then subject to further proof of use requirements in order to maintain their registration. Every registrant responded successfully.
In the end, the only "takeaway" from this study is that foreign filings with long lists of goods may include some goods for which use cannot be proven, in spite of signing off on the standard declaration that the marks are in use for all goods on the registaration. This is the so-called "deadwood" problem. It's still a problem, but it is not the problem you thought it was. The "trademark protection to which [the registrants] are not entitled in the United States" refers to these additional goods in the registration for which there is no use. It does *not* refer to the registration as a whole.
Notably, it has little if any application to the TMCH. First, it's best practice to use a "home country" registration for the TMCH, so these types of "foreign filings" are unlikely to be used for the TMCH. Second, the registrants were able to prove use for at least one good or service per class; so, if these registrations were used in the TMCH, they would have been accepted, and appropriately so.
I hope that clears up the confusion about what this study does and does not mean.
Best regards,
Greg
On Thu, Feb 2, 2017 at 5:23 PM, J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org> wrote:
What she said . . . .
*J. Scott Evans* *| Associate General Counsel - Trademarks, Copyright, Domains & Marketing |*
*Adobe *
345 Park Avenue
San Jose, CA 95110 408.536.5336 <(408)%20536-5336> (tel), 408.709.6162 <(408)%20709-6162> (cell) jsevans@adobe.com
www.adobe.com
From: Lori Schulman <lschulman@inta.org> Date: Thursday, February 2, 2017 at 2:17 PM To: George Kirikos <icann@leap.com>, "J. Scott Evans" <jsevans@adobe.com> Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] TMCH Blog
I am lawyer and I work for INTA so I will speak to INTA’s content. Yes, per the information found on the INTA website, the armor has holes, however the legal threshold for contesting an incontestable mark in the U.S. is high. It takes substantial effort and a high burden of proof to partake of the cheese. As noted earlier in the thread, the presumption of validity rests with the trademark owner. That said, none of INTA’s content is intended to be construed as legal advice. We provide information for brand owners and trademark professionals for whom it is incumbent to thoroughly research the merits of any particular action that they may be contemplating. Reading provisions of statutes at face value without understanding the underlying principles and precedents that support the statute or the threshold of evidence required to successfully challenge a trademark registration under the statute can be dangerous because it may over simplify a complex area of the law.
With regard to the US efforts to get rid of “dead wood” trademarks, its speaks to the integrity of the US Trademark system in a positive way. The US understands that there is a problem and is taking the necessary steps to correct it. While the statistics are useful to understand the inconsistencies in the US Federal Register, I think it is dangerous to use these statistics to support a theory that a trademark registration is inherently unreliable and such unreliability should be factored into ICANN policies. It undermines carefully constructed national and international trademark regimes. We need to trust that national, regional and global trademark offices are doing their job as they have mechanisms to challenge the validity of a trademark as well as internal checks such as the USPTO is undertaking.
It’s clear that we can demonstrate flaws and inconsistencies in almost any system. However, discounting the entire system because of bad actors undermines what we are trying to achieve in terms of taking actions consistent with recognized principles of law and fairness to all parties.
If there is a reasonable way to curtail gaming without undermining an international system designed to protect consumers and promote innovation then I am certainly open to discussing it.
Lori
Lori S. Schulman
Senior Director, Internet Policy
*International Trademark Association (INTA)*
+1-202-704-0408 <(202)%20704-0408>, Skype: lsschulman
[image: cid:image005.jpg@01D270D2.1801CD20]
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ic ann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *George Kirikos *Sent:* Thursday, February 02, 2017 3:37 PM *To:* J. Scott Evans <jsevans@adobe.com> *Cc:* gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] TMCH Blog
J. Scott: I'm not a lawyer, nor am I practising trademark law. I made a reference to INTA's website, and to the USPTO's own research, in furtherance of a discussion we're having on this list. What makes you think I'm not allowed to do so? If you have a problem with the content of my messages, dispute the content, rather than seeking to silence the speaker of that content.
Sincerely,
George Kirikos 416-588-0269 <(416)%20588-0269> http://www.leap.com/
On Thu, Feb 2, 2017 at 3:29 PM, J. Scott Evans <jsevans@adobe.com> wrote:
George:
Are you a trademark attorney? Are you an attorney? If not, I think it would be best if you refrain from practicing law. If you are, I point you to McCarthy on Trademarks & Unfair Competition for US practice and Trademarks Throughout the World for a glimpse of international trademark laws.
J. Scott
J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336 <(408)%20536-5336> (tel), 408.709.6162 <(408)%20709-6162> (cell) jsevans@adobe.com www.adobe.com
On 2/2/17, 12:23 PM, "gnso-rpm-wg-bounces@icann.org on behalf of George Kirikos" <gnso-rpm-wg-bounces@icann.org on behalf of icann@leap.com> wrote:
Without belabouring the obvious:
1. "Incontestability" is less absolute than it sounds. Since Marc appears to dislike links to Wikipedia, let me choose a reference that he might prefer, namely INTA:
http://www.inta.org/INTABulletin/Pages/IncontestabilityDoe sAnybodyReallyUn derstandIt.aspx
"Despite the name, incontestability does not provide the registration with a complete shield against attack. Registrations are subject to cancellation at any time based on any of the following: (1) genericness; (2) functionality; (3) abandonment; (4) fraud on the USPTO; (5) immorality, deception or scandalousness; (6) disparagement; (7) false suggestion of a connection; (8) geographical indications on wines or spirits meeting certain requirements; (9) representation of a flag or coat of arms of any nation; or (10) representation or name of a living person without his or her consent or of a deceased president without the consent of his widow. So the shield of incontestability has been likened to the proverbial armor made of Swiss cheese rather than a coat made of metal."
Let me repeat the "takeaway", namely "armor made of Swiss cheese."
2. As for what is "fact" vs "evidence" re: the meaning of a TM registration, let me remind folks of some alarming statistics posted to this list last August:
http://mm.icann.org/pipermail/gnso-rpm-wg/2016-August/000474.html
"The results of the pilot program indicate that a substantial majority of foreign registrants, 73% under the Madrid Protocol and 65% under the Paris Convention, have submitted false declarations of use and have therefore received trademark protection to which they are not entitled in the United States."
"During the two-year pilot program, the USPTO found that 51% of the audited registration owners were unable to satisfy these additional proof requirements. The USPTO cancelled 16% of the audited registrations in their entirety because the registration owners failed to respond to the request for additional proof or any other issues raised during the examination of the original affidavit. In addition, 35% of the audited registration owners requested that some of the goods or services be deleted from their registration."
"A register that does not accurately reflect marks in use in the United States for the goods/services identified in registrations imposes costs and burdens on the public."
In order to have a balanced and thorough review of the TMCH, we need to keep these things in mind.
Sincerely,
George Kirikos 416-588-0269 <(416)%20588-0269> http://www.leap.com/
On Thu, Feb 2, 2017 at 3:08 PM, jonathan matkowsky <jonathan.matkowsky@riskiq.net> wrote:
In US, one of the benefits of registration is a presumption of validity of ownership, and exclusivity with respect to the goods/services covered by the registration. Only by successfully challenging the registration would the owner lose that benefit. After 5 years, assuming certain documents are filed, the registration becomes conclusive evidence in certain respects.
On Thu, 2 Feb 2017 at 21:25 Lori Schulman <lschulman@inta.org> wrote:
As a clarification to the point of law, TM rights are presumed until they are challenged. George, to your point, TM rights may certainly be challenged. However, the presumption is with the owner of the TM registration until such challenge prevails. Under U.S. law, TM registrations are proof of right. They are more than a notice of claim. An application is the notice of claim, the resulting registration presumes the right. I certainly welcome trademark practitioners from jurisdictions to weigh in on whether registrations are ³notice of a claim² or
considered
proof of ownership until otherwise successfully challenged.
Lori
Lori S. Schulman
Senior Director, Internet Policy
International Trademark Association (INTA)
+1-202-704-0408 <(202)%20704-0408>, Skype: lsschulman
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 2:19 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] TMCH Blog
Marc: I used the Wikipedia link as a fairly neutral starting point for the theory of signalling, and not "authoritative". Would you consider the Nobel Prize in Economics for work on signalling to be "authoritative" enough for you?
http://www.nobelprize.org/nobel_prizes/economic-sciences /laureates/2001/ press.html
Or should I have provided (like most of the posts to this list) no external references at all, and simply allow people to go to Google on their own? Which aspect of the concept of signalling do you disagree with?
As for "registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction."
Hmmm, that's not correct, given that TM registrations can be and are disputed and cancelled. Trademark registration is *evidence* and *notice* of a *claim* to a trademark right (perhaps even a strong claim), but are not "proof" of anything as a "fact."
Sincerely,
George Kirikos 416-588-0269 <(416)%20588-0269> http://www.leap.com/
On Thu, Feb 2, 2017 at 2:06 PM, <trachtenbergm@gtlaw.com> wrote: > George, > > Thank you for your economics tutorial based on Wikipedia - certainly an > authoritative source. > > Regardless I don¹t think your application of this to the TMCH is > appropriate and disagree with your description of how the TMCH functions. > When trademark holders submit their registrations to the TMCH, they are not > trying to prove that their marks are "worthy" of protection. The fact that > they have registrations is proof that the marks are not only worthy of > protection, but that they are in fact protected under the law of the issuing > jurisdiction. > > Best regards, > > Marc H. Trachtenberg > Shareholder > Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL > 60601 > Tel 312.456.1020 <(312)%20456-1020> > Mobile 773.677.3305 <(773)%20677-3305> > trachtenbergm@gtlaw.com | www.gtlaw.com > > > > > > -----Original Message----- > From: gnso-rpm-wg-bounces@icann.org > [mailto:gnso-rpm-wg-bounces@icann.org <gnso-rpm-wg-bounces@icann.org>] On Behalf Of George Kirikos > Sent: Thursday, February 02, 2017 12:58 PM > To: gnso-rpm-wg > Subject: Re: [gnso-rpm-wg] TMCH Blog > > To continue the "economics tutorial", this is all directly related to > the concept of signalling: > > > https://urldefense.proofpoint.com/v2/url?u=https-3A__en. wikipedia.org_wi ki_Signalling-5F-28economics-29&d=DwIGaQ&c=2s2mvbfY0UoSK kl6_Ol9wg&r=L7MB 7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-W yHhwMfs41uWqUos4 g3JWuGXUa1FwI&s=_-ZU3Mu11NJjQnuoQdYhV9epeypY8SYFTzL35TJgjqs&e= > > The classic example comes from the education credentials market. How > does a job candidate signal that they're a high quality hire? The idea is > that high quality job candidates can obtain good degrees, and it's much > costlier for low quality job candidates to get those same credentials. > > Let's apply this to the TMCH -- implicitly, trademark holders are > jumping through hoops at present to determine that their marks are "worthy" > of protection. The hoops they're jumping through are: > > 1. pay the TMCH fees, and > 2. show evidence of national TM registration in a jurisdiction, and 3. > show proof of use > > However, unlike the academic credentials market above, where "good" > and "bad" job candidates face different costs, in the TMCH the "good" > and "bad" trademark holders face essentially the SAME costs! (i.e. the > fees are the same, one can get a Pakistani TM for under $10, and one can > throw up a webpage for free to show "proof of use"). > > In other words, the mechanisms for signalling are entirely broken in the > TMCH. Economics 101. The "bad guys" certainly know it's broken. As a > policymaking body, we should understand *why* it's broken, and either (1) > make stronger signals to differentiate and distinguish between worthy and > unworthy marks, or (2) as I suggested earlier, set an explicit direct price > to change the balance and behaviour directly. > > Sincerely, > > George Kirikos > 416-588-0269 <(416)%20588-0269> > > https://urldefense.proofpoint.com/v2/url?u=http-3A__www. leap.com_&d=DwIG aQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrK Xt7T1dG3NjBzCxm1 c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_ wfuQ-jCOYyo9r24YJ9m6 g71cr0vEGbww0X9qgsNDU&e= > > > > > > > > > > > > > > > > > > > > > > > > On Thu, Feb 2, 2017 at 1:36 PM, George Kirikos <icann@leap.com> wrote: >> Hello, >> >> (and trying to combine multiple responses in one email) >> >> On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com> wrote: >>> I think you are trying to apply domain speculation thinking where it >>> is all about monetary value to protection of trademark rights, which is not >>> necessary focused or valued in terms of specific monetary value. They are >>> not the same thing. >>> >>> If life isn¹t fair is an acceptable justification then why change the >>> current system because it is not fair that some may have gamed it by using >>> trademark registrations obtained solely for the purpose of registering >>> valuable domain names during sunrise? You can¹t have it both ways. >> >> 1. The "domain speculation thinking" is your term for what is simply >> rational economic decision-making. Even for trademark protection, >> rational trademark holders prioritize enforcement based on a >> comparison between the economic benefit of stopping the abuse relative >> to the economic cost of that enforcement. >> >> 2. The "life isn't fair" in my statement was referencing the fact that >> not everyone has the same wealth. That is entirely different from >> those misusing trademark registrations obtained solely for the purpose >> of registering valuable domain names -- those TMs would be invalid in >> jurisdictions requiring use (and thus shouldn't have been granted in >> the first place). >> >> 3. Some folks continue to dance around the issue, and ignore the >> economics completely. Each and every time you try to add a wrinkle to >> the procedure (i.e. "tweaks" that seek to give better proof of use, or >> other modifications), all that does is slightly change the "costs" for >> some actors, but doesn't change the underlying economics by much. i.e. >> it attempts to impose a "price" indirectly, rather than explicitly and >> directly setting a price that would actually change behaviour. >> >> 4. For those saying "small" trademark holders would be affected
>> fine, change the economics accordingly --- should the quota be 10,000 >> marks? Should the cost be $1? Once you make the cost explicitly be $1, >> that just says "Fine, we're going to accept all the gaming behaviour, >> because we're prepared to look the other way!" That's an invitation to >> those who are misusing the sunrise periods to continue doing what >> they're doing. >> >> While some constituencies in the GNSO might be fine with that balance >> (i.e. accept every TM, and allow all kinds of abuse of the sunrise >> periods), other constituencies might draw the line for that balance >> elsewhere. >> >> 5. Let me give you an example -- ACPA allows damages of up to $100,000 >> for cybersquatting. That's an explicit cost on cybersquatters that >> they take into account, and has a deterrent effect. What if that limit >> instead was $500? Behaviour would obviously change accordingly, >> because cybersquatters are rational. >> >> 6. A further example -- it costs $1000+ to file a UDRP (on top of >> legal costs, so a number like $5000 might be more relevant for those >> who use lawyers). If the total costs were $300, there would be a lot >> more filings (which would reduce the benefits of cybersquatting, and >> thus change the economics of abuse). >> >> In conclusion, the economics of all the actors are paramount, and seem >> to be mostly ignored. By focusing on those economics directly, as >> policymakers we can precision-target the policies to directly target >> those behaviours, and reduce all the "collateral damage" on the >> innocent actors. >> >> Sincerely, >> >> George Kirikos >> 416-588-0269 <(416)%20588-0269> >> https://urldefense.proofpoint.com/v2/url?u=http-3A__www. leap.com_&d=Dw >> IGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3J rKXt7T1dG3NjBz >> Cxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_ wfuQ-jCOYyo9r2 >> 4YJ9m6g71cr0vEGbww0X9qgsNDU&e= > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > > https://urldefense.proofpoint.com/v2/url?u=https-3A__mm. icann.org_mailma n_listinfo_gnso-2Drpm-2Dwg&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_ Ol9wg&r=L7MB7eHT- UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-WyHhwM fs41uWqUos4g3JWu GXUa1FwI&s=g9D6x_5yyONXbDzXKuaVg7WsGRorHP9u7RikcGTnhtY&e= > > --------------------------------------------------------
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-- jonathan matkowsky, vp - ip & head of global brand threat mitigation
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My apologies --- the 97% statistic is on page 2 of the Powerpoint, not page 3. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Thu, Feb 2, 2017 at 8:34 PM, George Kirikos <icann@leap.com> wrote:
Hi folks,
Greg wrote " If you go to the USPTO Pilot Project report itself, you will see that* 84%* of the 500 registrations in the pilot stayed on the trademark register, while 16% failed to respond and were cancelled.. In other words, all of those who actually responded were able to maintain their trademark registrations, although some had to delete some goods and/or services from their registrations due to non-use of those particular goods and/or services."
That "in other words" part is actually not correct. It might not be evident from the language in that report, but if you dig deeper and go to the earlier roundtable at:
https://www.uspto.gov/trademark/trademark-updates-and-announcements/uspto- roundtable-ensuring-accuracy-and-integrity
and download the Powerpoint report, on page 3 it states that "97% (486) of registrations completed the pilot." So, it's not correct to say that only those who didn't respond had their marks cancelled.
The precise language of the report was that: "In another 78 registrations, or 16%, the trademark owner failed to respond to the requirements of the pilot and any other issues raised during examination of the underlying maintenance filing, resulting in cancellation of the registration."
That's quite different from saying that 16% didn't respond at all (especially knowing from the PowerPoint that 97% actually responded, which I didn't link to before). What it means is that 16% didn't provide a good enough response to meet the requirements of the pilot study -- i.e. it failed to meet the *requirements*.
Here's an open question --- what's an acceptable level of "gamed marks" in the TMCH? And equally valid, what's an acceptable level of cybersquatting amongst registered domains. Is 10% of domains being cybersquatting considered "acceptable"? We have statistics on invalid WHOIS, for example --- and those shape ICANN policy. Without actually auditing the TMCH to determine the number of gamed marks (as was done for the WHOIS database), how do we know whether we're meeting that "acceptable level"?? How do we make policy determinations without that data?
And to respond to Lori's earlier post, one simple proposal to move things forward would be to separate out the fees for the TMCH sunrise access. Right now, people are paying for sunrise services:
http://www.trademark-clearinghouse.com/content/ trademark-clearinghouse-fees
whether they want them or not. And it's clear from the actual registration stats that most markholders registered for the TMCH aren't using the sunrise periods. One can lower the TMCH fees for those markholders who don't want the sunrise period access (yippee, saving people money!) and raise the fees for the subset of markholders who do use the sunrise periods. In other words, right now the large majority of markholders who aren't using sunrise periods are subsidizing those who are using the sunrise.
By raising the fees on those markholders who do use the sunrise periods (whose costs are higher due to the extra verification needed for "use"), and subjecting that subsetto greater scrutiny, one also reduces the "gaming" problem.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Thu, Feb 2, 2017 at 7:37 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:
What she said+1.
On the other point, regarding the USPTO pilot study, the "alarming statistics" are a false alarm. If you go to the USPTO Pilot Project report itself, you will see that* 84%* of the 500 registrations in the pilot stayed on the trademark register, while 16% failed to respond and were cancelled.. In other words, all of those who actually responded were able to maintain their trademark registrations, although some had to delete some goods and/or services from their registrations due to non-use of those particular goods and/or services.
Also, all of the trademark registration in the pilot project were valid trademark registrations, and were entitled to continuing as registrations. The owners of all 500 registrations had been able to show use of the trademark on at least one good/service in each class in the registration when they filed the initial Declaration of Use at the beginning of the study. The pilot program asked for proof of use of two *additional* goods or services per class. This exceeds the current PTO practice, where a specimen demonstrating use of a mark on a single good or service within a class is sufficient to maintain registration for an entire class. In other words, owners of registrations selected under the pilot study were subject to an enhanced level of scrutiny.
So, the 51% number is quite misleading -- it only represents those participants that were unable to show use of the *additional *goods and services requested in the pilot, or who failed to respond at all.
In addition, the following should be kept in mind:
1. This represents a limited subset of US trademarks -- trademark registrations that are primarily based on rights from outside the US (from Paris Convention or Madrid Protocol countries). So, even if the US registration was cancelled, it's highly likely that their "home" trademark registration was still valid. 2. Most US trademarks do not fall into this category, so it teaches us nothing about trademarks where the original filing was in the US. 3. In many other countries, trademark filings tend to list all the goods in a class, even where the use is only on certain goods. The US practice is to file only for the goods where there is (or will be) actual use. The result is that these foreign registrants were very vulnerable to being tripped up by this pilot study. If you have a list of 30 goods in a class, and you provide proof of use for one of them, that' s usually satisfactory. In the pilot, the USPTO randomly chose two of the other goods (i.e, 2 of the 29 in this example). If the registrant didn't have use of these two goods, they went into the 51% -- even if they had use of some or all of the other goods in the class. If they deleted these goods for non-use, they were then subject to further proof of use requirements in order to maintain their registration. Every registrant responded successfully.
In the end, the only "takeaway" from this study is that foreign filings with long lists of goods may include some goods for which use cannot be proven, in spite of signing off on the standard declaration that the marks are in use for all goods on the registaration. This is the so-called "deadwood" problem. It's still a problem, but it is not the problem you thought it was. The "trademark protection to which [the registrants] are not entitled in the United States" refers to these additional goods in the registration for which there is no use. It does *not* refer to the registration as a whole.
Notably, it has little if any application to the TMCH. First, it's best practice to use a "home country" registration for the TMCH, so these types of "foreign filings" are unlikely to be used for the TMCH. Second, the registrants were able to prove use for at least one good or service per class; so, if these registrations were used in the TMCH, they would have been accepted, and appropriately so.
I hope that clears up the confusion about what this study does and does not mean.
Best regards,
Greg
On Thu, Feb 2, 2017 at 5:23 PM, J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org> wrote:
What she said . . . .
*J. Scott Evans* *| Associate General Counsel - Trademarks, Copyright, Domains & Marketing |*
*Adobe *
345 Park Avenue
San Jose, CA 95110 408.536.5336 <(408)%20536-5336> (tel), 408.709.6162 <(408)%20709-6162> (cell) jsevans@adobe.com
www.adobe.com
From: Lori Schulman <lschulman@inta.org> Date: Thursday, February 2, 2017 at 2:17 PM To: George Kirikos <icann@leap.com>, "J. Scott Evans" <jsevans@adobe.com
Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] TMCH Blog
I am lawyer and I work for INTA so I will speak to INTA’s content. Yes, per the information found on the INTA website, the armor has holes, however the legal threshold for contesting an incontestable mark in the U.S. is high. It takes substantial effort and a high burden of proof to partake of the cheese. As noted earlier in the thread, the presumption of validity rests with the trademark owner. That said, none of INTA’s content is intended to be construed as legal advice. We provide information for brand owners and trademark professionals for whom it is incumbent to thoroughly research the merits of any particular action that they may be contemplating. Reading provisions of statutes at face value without understanding the underlying principles and precedents that support the statute or the threshold of evidence required to successfully challenge a trademark registration under the statute can be dangerous because it may over simplify a complex area of the law.
With regard to the US efforts to get rid of “dead wood” trademarks, its speaks to the integrity of the US Trademark system in a positive way. The US understands that there is a problem and is taking the necessary steps to correct it. While the statistics are useful to understand the inconsistencies in the US Federal Register, I think it is dangerous to use these statistics to support a theory that a trademark registration is inherently unreliable and such unreliability should be factored into ICANN policies. It undermines carefully constructed national and international trademark regimes. We need to trust that national, regional and global trademark offices are doing their job as they have mechanisms to challenge the validity of a trademark as well as internal checks such as the USPTO is undertaking.
It’s clear that we can demonstrate flaws and inconsistencies in almost any system. However, discounting the entire system because of bad actors undermines what we are trying to achieve in terms of taking actions consistent with recognized principles of law and fairness to all parties.
If there is a reasonable way to curtail gaming without undermining an international system designed to protect consumers and promote innovation then I am certainly open to discussing it.
Lori
Lori S. Schulman
Senior Director, Internet Policy
*International Trademark Association (INTA)*
+1-202-704-0408 <(202)%20704-0408>, Skype: lsschulman
[image: cid:image005.jpg@01D270D2.1801CD20]
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ic ann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *George Kirikos *Sent:* Thursday, February 02, 2017 3:37 PM *To:* J. Scott Evans <jsevans@adobe.com> *Cc:* gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] TMCH Blog
J. Scott: I'm not a lawyer, nor am I practising trademark law. I made a reference to INTA's website, and to the USPTO's own research, in furtherance of a discussion we're having on this list. What makes you think I'm not allowed to do so? If you have a problem with the content of my messages, dispute the content, rather than seeking to silence the speaker of that content.
Sincerely,
George Kirikos 416-588-0269 <(416)%20588-0269> http://www.leap.com/
On Thu, Feb 2, 2017 at 3:29 PM, J. Scott Evans <jsevans@adobe.com> wrote:
George:
Are you a trademark attorney? Are you an attorney? If not, I think it would be best if you refrain from practicing law. If you are, I point you to McCarthy on Trademarks & Unfair Competition for US practice and Trademarks Throughout the World for a glimpse of international trademark laws.
J. Scott
J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336 <(408)%20536-5336> (tel), 408.709.6162 <(408)%20709-6162> (cell) jsevans@adobe.com www.adobe.com
On 2/2/17, 12:23 PM, "gnso-rpm-wg-bounces@icann.org on behalf of George Kirikos" <gnso-rpm-wg-bounces@icann.org on behalf of icann@leap.com> wrote:
Without belabouring the obvious:
1. "Incontestability" is less absolute than it sounds. Since Marc appears to dislike links to Wikipedia, let me choose a reference that he might prefer, namely INTA:
http://www.inta.org/INTABulletin/Pages/IncontestabilityDoe sAnybodyReallyUn derstandIt.aspx
"Despite the name, incontestability does not provide the registration with a complete shield against attack. Registrations are subject to cancellation at any time based on any of the following: (1) genericness; (2) functionality; (3) abandonment; (4) fraud on the USPTO; (5) immorality, deception or scandalousness; (6) disparagement; (7) false suggestion of a connection; (8) geographical indications on wines or spirits meeting certain requirements; (9) representation of a flag or coat of arms of any nation; or (10) representation or name of a living person without his or her consent or of a deceased president without the consent of his widow. So the shield of incontestability has been likened to the proverbial armor made of Swiss cheese rather than a coat made of metal."
Let me repeat the "takeaway", namely "armor made of Swiss cheese."
2. As for what is "fact" vs "evidence" re: the meaning of a TM registration, let me remind folks of some alarming statistics posted to this list last August:
http://mm.icann.org/pipermail/gnso-rpm-wg/2016-August/000474.html
"The results of the pilot program indicate that a substantial majority of foreign registrants, 73% under the Madrid Protocol and 65% under the Paris Convention, have submitted false declarations of use and have therefore received trademark protection to which they are not entitled in the United States."
"During the two-year pilot program, the USPTO found that 51% of the audited registration owners were unable to satisfy these additional proof requirements. The USPTO cancelled 16% of the audited registrations in their entirety because the registration owners failed to respond to the request for additional proof or any other issues raised during the examination of the original affidavit. In addition, 35% of the audited registration owners requested that some of the goods or services be deleted from their registration."
"A register that does not accurately reflect marks in use in the United States for the goods/services identified in registrations imposes costs and burdens on the public."
In order to have a balanced and thorough review of the TMCH, we need to keep these things in mind.
Sincerely,
George Kirikos 416-588-0269 <(416)%20588-0269> http://www.leap.com/
On Thu, Feb 2, 2017 at 3:08 PM, jonathan matkowsky <jonathan.matkowsky@riskiq.net> wrote:
In US, one of the benefits of registration is a presumption of validity of ownership, and exclusivity with respect to the goods/services covered by the registration. Only by successfully challenging the registration would the owner lose that benefit. After 5 years, assuming certain documents are filed, the registration becomes conclusive evidence in certain respects.
On Thu, 2 Feb 2017 at 21:25 Lori Schulman <lschulman@inta.org> wrote: > > As a clarification to the point of law, TM rights are presumed until >they > are challenged. George, to your point, TM rights may certainly be > challenged. However, the presumption is with the owner of the TM > registration until such challenge prevails. Under U.S. law, TM > registrations are proof of right. They are more than a notice of >claim. An > application is the notice of claim, the resulting registration >presumes the > right. I certainly welcome trademark practitioners from jurisdictions >to > weigh in on whether registrations are ³notice of a claim² or considered > proof of ownership until otherwise successfully challenged. > > > > Lori > > > > Lori S. Schulman > > Senior Director, Internet Policy > > International Trademark Association (INTA) > > +1-202-704-0408 <(202)%20704-0408>, Skype: lsschulman > > > > > > From: gnso-rpm-wg-bounces@icann.org >[mailto:gnso-rpm-wg-bounces@icann.org] > On Behalf Of George Kirikos > Sent: Thursday, February 02, 2017 2:19 PM > To: gnso-rpm-wg <gnso-rpm-wg@icann.org> > > > Subject: Re: [gnso-rpm-wg] TMCH Blog > > > > Marc: I used the Wikipedia link as a fairly neutral starting point for > the theory of signalling, and not "authoritative". Would you consider > the Nobel Prize in Economics for work on signalling to be > "authoritative" enough for you? > > > >http://www.nobelprize.org/nobel_prizes/economic-sciences /laureates/2001/ >press.html > > Or should I have provided (like most of the posts to this list) no > external references at all, and simply allow people to go to Google on > their own? Which aspect of the concept of signalling do you disagree > with? > > As for "registrations is proof that the marks are not only worthy of > protection, but that they are in fact protected under the law of the > issuing jurisdiction." > > Hmmm, that's not correct, given that TM registrations can be and are > disputed and cancelled. Trademark registration is *evidence* and > *notice* of a *claim* to a trademark right (perhaps even a strong > claim), but are not "proof" of anything as a "fact." > > Sincerely, > > George Kirikos > 416-588-0269 <(416)%20588-0269> > http://www.leap.com/ > > > On Thu, Feb 2, 2017 at 2:06 PM, <trachtenbergm@gtlaw.com> wrote: > > George, > > > > Thank you for your economics tutorial based on Wikipedia - certainly >an > > authoritative source. > > > > Regardless I don¹t think your application of this to the TMCH is > > appropriate and disagree with your description of how the TMCH >functions. > > When trademark holders submit their registrations to the TMCH, they >are not > > trying to prove that their marks are "worthy" of protection. The >fact that > > they have registrations is proof that the marks are not only worthy >of > > protection, but that they are in fact protected under the law of the >issuing > > jurisdiction. > > > > Best regards, > > > > Marc H. Trachtenberg > > Shareholder > > Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | >Chicago, IL > > 60601 > > Tel 312.456.1020 <(312)%20456-1020> > > Mobile 773.677.3305 <(773)%20677-3305> > > trachtenbergm@gtlaw.com | www.gtlaw.com > > > > > > > > > > > > -----Original Message----- > > From: gnso-rpm-wg-bounces@icann.org > > [mailto:gnso-rpm-wg-bounces@icann.org <gnso-rpm-wg-bounces@icann.org>] On Behalf Of George Kirikos > > Sent: Thursday, February 02, 2017 12:58 PM > > To: gnso-rpm-wg > > Subject: Re: [gnso-rpm-wg] TMCH Blog > > > > To continue the "economics tutorial", this is all directly related to > > the concept of signalling: > > > > > > >https://urldefense.proofpoint.com/v2/url?u=https-3A__en. wikipedia.org_wi >ki_Signalling-5F-28economics-29&d=DwIGaQ&c=2s2mvbfY0UoSK kl6_Ol9wg&r=L7MB >7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-W yHhwMfs41uWqUos4 >g3JWuGXUa1FwI&s=_-ZU3Mu11NJjQnuoQdYhV9epeypY8SYFTzL35TJgjqs&e= > > > > The classic example comes from the education credentials market. How > > does a job candidate signal that they're a high quality hire? The >idea is > > that high quality job candidates can obtain good degrees, and it's >much > > costlier for low quality job candidates to get those same >credentials. > > > > Let's apply this to the TMCH -- implicitly, trademark holders are > > jumping through hoops at present to determine that their marks are >"worthy" > > of protection. The hoops they're jumping through are: > > > > 1. pay the TMCH fees, and > > 2. show evidence of national TM registration in a jurisdiction, and >3. > > show proof of use > > > > However, unlike the academic credentials market above, where "good" > > and "bad" job candidates face different costs, in the TMCH the "good" > > and "bad" trademark holders face essentially the SAME costs! (i.e. >the > > fees are the same, one can get a Pakistani TM for under $10, and one >can > > throw up a webpage for free to show "proof of use"). > > > > In other words, the mechanisms for signalling are entirely broken in >the > > TMCH. Economics 101. The "bad guys" certainly know it's broken. As a > > policymaking body, we should understand *why* it's broken, and >either (1) > > make stronger signals to differentiate and distinguish between >worthy and > > unworthy marks, or (2) as I suggested earlier, set an explicit >direct price > > to change the balance and behaviour directly. > > > > Sincerely, > > > > George Kirikos > > 416-588-0269 <(416)%20588-0269> > > > > >https://urldefense.proofpoint.com/v2/url?u=http-3A__www. leap.com_&d=DwIG >aQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrK Xt7T1dG3NjBzCxm1 >c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ -jCOYyo9r24YJ9m6 >g71cr0vEGbww0X9qgsNDU&e= > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > On Thu, Feb 2, 2017 at 1:36 PM, George Kirikos <icann@leap.com> >wrote: > >> Hello, > >> > >> (and trying to combine multiple responses in one email) > >> > >> On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com> wrote: > >>> I think you are trying to apply domain speculation thinking where >it > >>> is all about monetary value to protection of trademark rights, >which is not > >>> necessary focused or valued in terms of specific monetary value. >They are > >>> not the same thing. > >>> > >>> If life isn¹t fair is an acceptable justification then why change >the > >>> current system because it is not fair that some may have gamed it >by using > >>> trademark registrations obtained solely for the purpose of >registering > >>> valuable domain names during sunrise? You can¹t have it both ways. > >> > >> 1. The "domain speculation thinking" is your term for what is simply > >> rational economic decision-making. Even for trademark protection, > >> rational trademark holders prioritize enforcement based on a > >> comparison between the economic benefit of stopping the abuse >relative > >> to the economic cost of that enforcement. > >> > >> 2. The "life isn't fair" in my statement was referencing the fact >that > >> not everyone has the same wealth. That is entirely different from > >> those misusing trademark registrations obtained solely for the >purpose > >> of registering valuable domain names -- those TMs would be invalid >in > >> jurisdictions requiring use (and thus shouldn't have been granted in > >> the first place). > >> > >> 3. Some folks continue to dance around the issue, and ignore the > >> economics completely. Each and every time you try to add a wrinkle >to > >> the procedure (i.e. "tweaks" that seek to give better proof of use, >or > >> other modifications), all that does is slightly change the "costs" >for > >> some actors, but doesn't change the underlying economics by much. >i.e. > >> it attempts to impose a "price" indirectly, rather than explicitly >and > >> directly setting a price that would actually change behaviour. > >> > >> 4. For those saying "small" trademark holders would be affected
> >> fine, change the economics accordingly --- should the quota be >10,000 > >> marks? Should the cost be $1? Once you make the cost explicitly be >$1, > >> that just says "Fine, we're going to accept all the gaming >behaviour, > >> because we're prepared to look the other way!" That's an invitation >to > >> those who are misusing the sunrise periods to continue doing what > >> they're doing. > >> > >> While some constituencies in the GNSO might be fine with that >balance > >> (i.e. accept every TM, and allow all kinds of abuse of the sunrise > >> periods), other constituencies might draw the line for that balance > >> elsewhere. > >> > >> 5. Let me give you an example -- ACPA allows damages of up to >$100,000 > >> for cybersquatting. That's an explicit cost on cybersquatters that > >> they take into account, and has a deterrent effect. What if that >limit > >> instead was $500? Behaviour would obviously change accordingly, > >> because cybersquatters are rational. > >> > >> 6. A further example -- it costs $1000+ to file a UDRP (on top of > >> legal costs, so a number like $5000 might be more relevant for those > >> who use lawyers). If the total costs were $300, there would be a lot > >> more filings (which would reduce the benefits of cybersquatting, and > >> thus change the economics of abuse). > >> > >> In conclusion, the economics of all the actors are paramount, and >seem > >> to be mostly ignored. By focusing on those economics directly, as > >> policymakers we can precision-target the policies to directly target > >> those behaviours, and reduce all the "collateral damage" on the > >> innocent actors. > >> > >> Sincerely, > >> > >> George Kirikos > >> 416-588-0269 <(416)%20588-0269> > >> >https://urldefense.proofpoint.com/v2/url?u=http-3A__www. leap.com_&d=Dw > >> >IGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3J rKXt7T1dG3NjBz > >> >Cxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_ wfuQ-jCOYyo9r2 > >> 4YJ9m6g71cr0vEGbww0X9qgsNDU&e= > > _______________________________________________ > > gnso-rpm-wg mailing list > > gnso-rpm-wg@icann.org > > > > >https://urldefense.proofpoint.com/v2/url?u=https-3A__mm. icann.org_mailma >n_listinfo_gnso-2Drpm-2Dwg&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_O l9wg&r=L7MB7eHT- >UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-WyHhwM fs41uWqUos4g3JWu >GXUa1FwI&s=g9D6x_5yyONXbDzXKuaVg7WsGRorHP9u7RikcGTnhtY&e= > > > > >--------------------------------------------------------
> > If you are not an intended recipient of confidential and privileged > > information in this email, please delete it, notify us immediately at > > postmaster@gtlaw.com, and do not use or disseminate such information. > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
-- jonathan matkowsky, vp - ip & head of global brand threat mitigation
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George, you're still misreading the materials. The PowerPoint was presented at the same time as a status report on the pilot, before the pilot program was completed. As stated in the Final Report, "The pilot has concluded with all 500 registrations receiving either a notice of acceptance or a notice of cancellation." The 97% (486) number was an interim number; it has no relevance to the final outcome of the pilot project. When they refer to the 486 completing the pilot, that does not mean that the 486 responded; that means that 486 either successfully responded or didn't respond at all, with the remaining 14 registrants still incomplete. The pilot program registrants each received an Office Action which asked them to submit proof of use for two additional goods per class. These and virtually all other Office Actions must be responded to within six months. If you do not respond to a post-registration Office Action, your registration is cancelled for failure to respond. (For a pre-registration Office Action, your application will become abandoned.) That's exactly what happened to these 78 registrants -- they "failed to respond." This is a phrase that any lawyer or paralegal who does trademark prosecution or due diligence sees almost every working day of their life. it means that nothing was received from the registrant. It does not say they failed to meet the requirements. It says that they "failed to respond to the requirements of the pilot *and any other issues raised during examination of the underlying maintenance filing*" -- they didn't respond to anything in the Office Action. I stand by my understanding of the materials and the language used in the materials, based on 30 years of experience: "failed to respond to the requirements of the pilot and any other issues raised during examination of the underlying maintenance filing, resulting in cancellation of the registration." means they didn't respond at all and they got a "cancellation for failure to respond." That ends my "trademark tutorial" for the evening. As for your plan to punish the innocent to deter the guilty, I'll leave it to others to respond further. Greg On Thu, Feb 2, 2017 at 8:34 PM, George Kirikos <icann@leap.com> wrote:
Hi folks,
Greg wrote " If you go to the USPTO Pilot Project report itself, you will see that* 84%* of the 500 registrations in the pilot stayed on the trademark register, while 16% failed to respond and were cancelled.. In other words, all of those who actually responded were able to maintain their trademark registrations, although some had to delete some goods and/or services from their registrations due to non-use of those particular goods and/or services."
That "in other words" part is actually not correct. It might not be evident from the language in that report, but if you dig deeper and go to the earlier roundtable at:
https://www.uspto.gov/trademark/trademark-updates-and-announcements/uspto- roundtable-ensuring-accuracy-and-integrity
and download the Powerpoint report, on page 3 it states that "97% (486) of registrations completed the pilot." So, it's not correct to say that only those who didn't respond had their marks cancelled.
The precise language of the report was that: "In another 78 registrations, or 16%, the trademark owner failed to respond to the requirements of the pilot and any other issues raised during examination of the underlying maintenance filing, resulting in cancellation of the registration."
That's quite different from saying that 16% didn't respond at all (especially knowing from the PowerPoint that 97% actually responded, which I didn't link to before). What it means is that 16% didn't provide a good enough response to meet the requirements of the pilot study -- i.e. it failed to meet the *requirements*.
Here's an open question --- what's an acceptable level of "gamed marks" in the TMCH? And equally valid, what's an acceptable level of cybersquatting amongst registered domains. Is 10% of domains being cybersquatting considered "acceptable"? We have statistics on invalid WHOIS, for example --- and those shape ICANN policy. Without actually auditing the TMCH to determine the number of gamed marks (as was done for the WHOIS database), how do we know whether we're meeting that "acceptable level"?? How do we make policy determinations without that data?
And to respond to Lori's earlier post, one simple proposal to move things forward would be to separate out the fees for the TMCH sunrise access. Right now, people are paying for sunrise services:
http://www.trademark-clearinghouse.com/content/ trademark-clearinghouse-fees
whether they want them or not. And it's clear from the actual registration stats that most markholders registered for the TMCH aren't using the sunrise periods. One can lower the TMCH fees for those markholders who don't want the sunrise period access (yippee, saving people money!) and raise the fees for the subset of markholders who do use the sunrise periods. In other words, right now the large majority of markholders who aren't using sunrise periods are subsidizing those who are using the sunrise.
By raising the fees on those markholders who do use the sunrise periods (whose costs are higher due to the extra verification needed for "use"), and subjecting that subsetto greater scrutiny, one also reduces the "gaming" problem.
Sincerely,
George Kirikos 416-588-0269 <(416)%20588-0269> http://www.leap.com/
On Thu, Feb 2, 2017 at 7:37 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:
What she said+1.
On the other point, regarding the USPTO pilot study, the "alarming statistics" are a false alarm. If you go to the USPTO Pilot Project report itself, you will see that* 84%* of the 500 registrations in the pilot stayed on the trademark register, while 16% failed to respond and were cancelled.. In other words, all of those who actually responded were able to maintain their trademark registrations, although some had to delete some goods and/or services from their registrations due to non-use of those particular goods and/or services.
Also, all of the trademark registration in the pilot project were valid trademark registrations, and were entitled to continuing as registrations. The owners of all 500 registrations had been able to show use of the trademark on at least one good/service in each class in the registration when they filed the initial Declaration of Use at the beginning of the study. The pilot program asked for proof of use of two *additional* goods or services per class. This exceeds the current PTO practice, where a specimen demonstrating use of a mark on a single good or service within a class is sufficient to maintain registration for an entire class. In other words, owners of registrations selected under the pilot study were subject to an enhanced level of scrutiny.
So, the 51% number is quite misleading -- it only represents those participants that were unable to show use of the *additional *goods and services requested in the pilot, or who failed to respond at all.
In addition, the following should be kept in mind:
1. This represents a limited subset of US trademarks -- trademark registrations that are primarily based on rights from outside the US (from Paris Convention or Madrid Protocol countries). So, even if the US registration was cancelled, it's highly likely that their "home" trademark registration was still valid. 2. Most US trademarks do not fall into this category, so it teaches us nothing about trademarks where the original filing was in the US. 3. In many other countries, trademark filings tend to list all the goods in a class, even where the use is only on certain goods. The US practice is to file only for the goods where there is (or will be) actual use. The result is that these foreign registrants were very vulnerable to being tripped up by this pilot study. If you have a list of 30 goods in a class, and you provide proof of use for one of them, that' s usually satisfactory. In the pilot, the USPTO randomly chose two of the other goods (i.e, 2 of the 29 in this example). If the registrant didn't have use of these two goods, they went into the 51% -- even if they had use of some or all of the other goods in the class. If they deleted these goods for non-use, they were then subject to further proof of use requirements in order to maintain their registration. Every registrant responded successfully.
In the end, the only "takeaway" from this study is that foreign filings with long lists of goods may include some goods for which use cannot be proven, in spite of signing off on the standard declaration that the marks are in use for all goods on the registaration. This is the so-called "deadwood" problem. It's still a problem, but it is not the problem you thought it was. The "trademark protection to which [the registrants] are not entitled in the United States" refers to these additional goods in the registration for which there is no use. It does *not* refer to the registration as a whole.
Notably, it has little if any application to the TMCH. First, it's best practice to use a "home country" registration for the TMCH, so these types of "foreign filings" are unlikely to be used for the TMCH. Second, the registrants were able to prove use for at least one good or service per class; so, if these registrations were used in the TMCH, they would have been accepted, and appropriately so.
I hope that clears up the confusion about what this study does and does not mean.
Best regards,
Greg
On Thu, Feb 2, 2017 at 5:23 PM, J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org> wrote:
What she said . . . .
*J. Scott Evans* *| Associate General Counsel - Trademarks, Copyright, Domains & Marketing |*
*Adobe *
345 Park Avenue
San Jose, CA 95110 408.536.5336 <(408)%20536-5336> (tel), 408.709.6162 <(408)%20709-6162> (cell) jsevans@adobe.com
www.adobe.com
From: Lori Schulman <lschulman@inta.org> Date: Thursday, February 2, 2017 at 2:17 PM To: George Kirikos <icann@leap.com>, "J. Scott Evans" <jsevans@adobe.com
Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] TMCH Blog
I am lawyer and I work for INTA so I will speak to INTA’s content. Yes, per the information found on the INTA website, the armor has holes, however the legal threshold for contesting an incontestable mark in the U.S. is high. It takes substantial effort and a high burden of proof to partake of the cheese. As noted earlier in the thread, the presumption of validity rests with the trademark owner. That said, none of INTA’s content is intended to be construed as legal advice. We provide information for brand owners and trademark professionals for whom it is incumbent to thoroughly research the merits of any particular action that they may be contemplating. Reading provisions of statutes at face value without understanding the underlying principles and precedents that support the statute or the threshold of evidence required to successfully challenge a trademark registration under the statute can be dangerous because it may over simplify a complex area of the law.
With regard to the US efforts to get rid of “dead wood” trademarks, its speaks to the integrity of the US Trademark system in a positive way. The US understands that there is a problem and is taking the necessary steps to correct it. While the statistics are useful to understand the inconsistencies in the US Federal Register, I think it is dangerous to use these statistics to support a theory that a trademark registration is inherently unreliable and such unreliability should be factored into ICANN policies. It undermines carefully constructed national and international trademark regimes. We need to trust that national, regional and global trademark offices are doing their job as they have mechanisms to challenge the validity of a trademark as well as internal checks such as the USPTO is undertaking.
It’s clear that we can demonstrate flaws and inconsistencies in almost any system. However, discounting the entire system because of bad actors undermines what we are trying to achieve in terms of taking actions consistent with recognized principles of law and fairness to all parties.
If there is a reasonable way to curtail gaming without undermining an international system designed to protect consumers and promote innovation then I am certainly open to discussing it.
Lori
Lori S. Schulman
Senior Director, Internet Policy
*International Trademark Association (INTA)*
+1-202-704-0408 <(202)%20704-0408>, Skype: lsschulman
[image: cid:image005.jpg@01D270D2.1801CD20]
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ic ann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *George Kirikos *Sent:* Thursday, February 02, 2017 3:37 PM *To:* J. Scott Evans <jsevans@adobe.com> *Cc:* gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] TMCH Blog
J. Scott: I'm not a lawyer, nor am I practising trademark law. I made a reference to INTA's website, and to the USPTO's own research, in furtherance of a discussion we're having on this list. What makes you think I'm not allowed to do so? If you have a problem with the content of my messages, dispute the content, rather than seeking to silence the speaker of that content.
Sincerely,
George Kirikos 416-588-0269 <(416)%20588-0269> http://www.leap.com/
On Thu, Feb 2, 2017 at 3:29 PM, J. Scott Evans <jsevans@adobe.com> wrote:
George:
Are you a trademark attorney? Are you an attorney? If not, I think it would be best if you refrain from practicing law. If you are, I point you to McCarthy on Trademarks & Unfair Competition for US practice and Trademarks Throughout the World for a glimpse of international trademark laws.
J. Scott
J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336 <(408)%20536-5336> (tel), 408.709.6162 <(408)%20709-6162> (cell) jsevans@adobe.com www.adobe.com
On 2/2/17, 12:23 PM, "gnso-rpm-wg-bounces@icann.org on behalf of George Kirikos" <gnso-rpm-wg-bounces@icann.org on behalf of icann@leap.com> wrote:
Without belabouring the obvious:
1. "Incontestability" is less absolute than it sounds. Since Marc appears to dislike links to Wikipedia, let me choose a reference that he might prefer, namely INTA:
http://www.inta.org/INTABulletin/Pages/IncontestabilityDoe sAnybodyReallyUn derstandIt.aspx
"Despite the name, incontestability does not provide the registration with a complete shield against attack. Registrations are subject to cancellation at any time based on any of the following: (1) genericness; (2) functionality; (3) abandonment; (4) fraud on the USPTO; (5) immorality, deception or scandalousness; (6) disparagement; (7) false suggestion of a connection; (8) geographical indications on wines or spirits meeting certain requirements; (9) representation of a flag or coat of arms of any nation; or (10) representation or name of a living person without his or her consent or of a deceased president without the consent of his widow. So the shield of incontestability has been likened to the proverbial armor made of Swiss cheese rather than a coat made of metal."
Let me repeat the "takeaway", namely "armor made of Swiss cheese."
2. As for what is "fact" vs "evidence" re: the meaning of a TM registration, let me remind folks of some alarming statistics posted to this list last August:
http://mm.icann.org/pipermail/gnso-rpm-wg/2016-August/000474.html
"The results of the pilot program indicate that a substantial majority of foreign registrants, 73% under the Madrid Protocol and 65% under the Paris Convention, have submitted false declarations of use and have therefore received trademark protection to which they are not entitled in the United States."
"During the two-year pilot program, the USPTO found that 51% of the audited registration owners were unable to satisfy these additional proof requirements. The USPTO cancelled 16% of the audited registrations in their entirety because the registration owners failed to respond to the request for additional proof or any other issues raised during the examination of the original affidavit. In addition, 35% of the audited registration owners requested that some of the goods or services be deleted from their registration."
"A register that does not accurately reflect marks in use in the United States for the goods/services identified in registrations imposes costs and burdens on the public."
In order to have a balanced and thorough review of the TMCH, we need to keep these things in mind.
Sincerely,
George Kirikos 416-588-0269 <(416)%20588-0269> http://www.leap.com/
On Thu, Feb 2, 2017 at 3:08 PM, jonathan matkowsky <jonathan.matkowsky@riskiq.net> wrote:
In US, one of the benefits of registration is a presumption of validity of ownership, and exclusivity with respect to the goods/services covered by the registration. Only by successfully challenging the registration would the owner lose that benefit. After 5 years, assuming certain documents are filed, the registration becomes conclusive evidence in certain respects.
On Thu, 2 Feb 2017 at 21:25 Lori Schulman <lschulman@inta.org> wrote: > > As a clarification to the point of law, TM rights are presumed until >they > are challenged. George, to your point, TM rights may certainly be > challenged. However, the presumption is with the owner of the TM > registration until such challenge prevails. Under U.S. law, TM > registrations are proof of right. They are more than a notice of >claim. An > application is the notice of claim, the resulting registration >presumes the > right. I certainly welcome trademark practitioners from jurisdictions >to > weigh in on whether registrations are ³notice of a claim² or considered > proof of ownership until otherwise successfully challenged. > > > > Lori > > > > Lori S. Schulman > > Senior Director, Internet Policy > > International Trademark Association (INTA) > > +1-202-704-0408 <(202)%20704-0408>, Skype: lsschulman > > > > > > From: gnso-rpm-wg-bounces@icann.org >[mailto:gnso-rpm-wg-bounces@icann.org] > On Behalf Of George Kirikos > Sent: Thursday, February 02, 2017 2:19 PM > To: gnso-rpm-wg <gnso-rpm-wg@icann.org> > > > Subject: Re: [gnso-rpm-wg] TMCH Blog > > > > Marc: I used the Wikipedia link as a fairly neutral starting point for > the theory of signalling, and not "authoritative". Would you consider > the Nobel Prize in Economics for work on signalling to be > "authoritative" enough for you? > > > >http://www.nobelprize.org/nobel_prizes/economic-sciences /laureates/2001/ >press.html > > Or should I have provided (like most of the posts to this list) no > external references at all, and simply allow people to go to Google on > their own? Which aspect of the concept of signalling do you disagree > with? > > As for "registrations is proof that the marks are not only worthy of > protection, but that they are in fact protected under the law of the > issuing jurisdiction." > > Hmmm, that's not correct, given that TM registrations can be and are > disputed and cancelled. Trademark registration is *evidence* and > *notice* of a *claim* to a trademark right (perhaps even a strong > claim), but are not "proof" of anything as a "fact." > > Sincerely, > > George Kirikos > 416-588-0269 <(416)%20588-0269> > http://www.leap.com/ > > > On Thu, Feb 2, 2017 at 2:06 PM, <trachtenbergm@gtlaw.com> wrote: > > George, > > > > Thank you for your economics tutorial based on Wikipedia - certainly >an > > authoritative source. > > > > Regardless I don¹t think your application of this to the TMCH is > > appropriate and disagree with your description of how the TMCH >functions. > > When trademark holders submit their registrations to the TMCH, they >are not > > trying to prove that their marks are "worthy" of protection. The >fact that > > they have registrations is proof that the marks are not only worthy >of > > protection, but that they are in fact protected under the law of the >issuing > > jurisdiction. > > > > Best regards, > > > > Marc H. Trachtenberg > > Shareholder > > Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | >Chicago, IL > > 60601 > > Tel 312.456.1020 <(312)%20456-1020> > > Mobile 773.677.3305 <(773)%20677-3305> > > trachtenbergm@gtlaw.com | www.gtlaw.com > > > > > > > > > > > > -----Original Message----- > > From: gnso-rpm-wg-bounces@icann.org > > [mailto:gnso-rpm-wg-bounces@icann.org <gnso-rpm-wg-bounces@icann.org>] On Behalf Of George Kirikos > > Sent: Thursday, February 02, 2017 12:58 PM > > To: gnso-rpm-wg > > Subject: Re: [gnso-rpm-wg] TMCH Blog > > > > To continue the "economics tutorial", this is all directly related to > > the concept of signalling: > > > > > > >https://urldefense.proofpoint.com/v2/url?u=https-3A__en. wikipedia.org_wi >ki_Signalling-5F-28economics-29&d=DwIGaQ&c=2s2mvbfY0UoSK kl6_Ol9wg&r=L7MB >7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-W yHhwMfs41uWqUos4 >g3JWuGXUa1FwI&s=_-ZU3Mu11NJjQnuoQdYhV9epeypY8SYFTzL35TJgjqs&e= > > > > The classic example comes from the education credentials market. How > > does a job candidate signal that they're a high quality hire? The >idea is > > that high quality job candidates can obtain good degrees, and it's >much > > costlier for low quality job candidates to get those same >credentials. > > > > Let's apply this to the TMCH -- implicitly, trademark holders are > > jumping through hoops at present to determine that their marks are >"worthy" > > of protection. The hoops they're jumping through are: > > > > 1. pay the TMCH fees, and > > 2. show evidence of national TM registration in a jurisdiction, and >3. > > show proof of use > > > > However, unlike the academic credentials market above, where "good" > > and "bad" job candidates face different costs, in the TMCH the "good" > > and "bad" trademark holders face essentially the SAME costs! (i.e. >the > > fees are the same, one can get a Pakistani TM for under $10, and one >can > > throw up a webpage for free to show "proof of use"). > > > > In other words, the mechanisms for signalling are entirely broken in >the > > TMCH. Economics 101. The "bad guys" certainly know it's broken. As a > > policymaking body, we should understand *why* it's broken, and >either (1) > > make stronger signals to differentiate and distinguish between >worthy and > > unworthy marks, or (2) as I suggested earlier, set an explicit >direct price > > to change the balance and behaviour directly. > > > > Sincerely, > > > > George Kirikos > > 416-588-0269 <(416)%20588-0269> > > > > >https://urldefense.proofpoint.com/v2/url?u=http-3A__www. leap.com_&d=DwIG >aQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrK Xt7T1dG3NjBzCxm1 >c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ -jCOYyo9r24YJ9m6 >g71cr0vEGbww0X9qgsNDU&e= > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > On Thu, Feb 2, 2017 at 1:36 PM, George Kirikos <icann@leap.com> >wrote: > >> Hello, > >> > >> (and trying to combine multiple responses in one email) > >> > >> On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com> wrote: > >>> I think you are trying to apply domain speculation thinking where >it > >>> is all about monetary value to protection of trademark rights, >which is not > >>> necessary focused or valued in terms of specific monetary value. >They are > >>> not the same thing. > >>> > >>> If life isn¹t fair is an acceptable justification then why change >the > >>> current system because it is not fair that some may have gamed it >by using > >>> trademark registrations obtained solely for the purpose of >registering > >>> valuable domain names during sunrise? You can¹t have it both ways. > >> > >> 1. The "domain speculation thinking" is your term for what is simply > >> rational economic decision-making. Even for trademark protection, > >> rational trademark holders prioritize enforcement based on a > >> comparison between the economic benefit of stopping the abuse >relative > >> to the economic cost of that enforcement. > >> > >> 2. The "life isn't fair" in my statement was referencing the fact >that > >> not everyone has the same wealth. That is entirely different from > >> those misusing trademark registrations obtained solely for the >purpose > >> of registering valuable domain names -- those TMs would be invalid >in > >> jurisdictions requiring use (and thus shouldn't have been granted in > >> the first place). > >> > >> 3. Some folks continue to dance around the issue, and ignore the > >> economics completely. Each and every time you try to add a wrinkle >to > >> the procedure (i.e. "tweaks" that seek to give better proof of use, >or > >> other modifications), all that does is slightly change the "costs" >for > >> some actors, but doesn't change the underlying economics by much. >i.e. > >> it attempts to impose a "price" indirectly, rather than explicitly >and > >> directly setting a price that would actually change behaviour. > >> > >> 4. For those saying "small" trademark holders would be affected
> >> fine, change the economics accordingly --- should the quota be >10,000 > >> marks? Should the cost be $1? Once you make the cost explicitly be >$1, > >> that just says "Fine, we're going to accept all the gaming >behaviour, > >> because we're prepared to look the other way!" That's an invitation >to > >> those who are misusing the sunrise periods to continue doing what > >> they're doing. > >> > >> While some constituencies in the GNSO might be fine with that >balance > >> (i.e. accept every TM, and allow all kinds of abuse of the sunrise > >> periods), other constituencies might draw the line for that balance > >> elsewhere. > >> > >> 5. Let me give you an example -- ACPA allows damages of up to >$100,000 > >> for cybersquatting. That's an explicit cost on cybersquatters that > >> they take into account, and has a deterrent effect. What if that >limit > >> instead was $500? Behaviour would obviously change accordingly, > >> because cybersquatters are rational. > >> > >> 6. A further example -- it costs $1000+ to file a UDRP (on top of > >> legal costs, so a number like $5000 might be more relevant for those > >> who use lawyers). If the total costs were $300, there would be a lot > >> more filings (which would reduce the benefits of cybersquatting, and > >> thus change the economics of abuse). > >> > >> In conclusion, the economics of all the actors are paramount, and >seem > >> to be mostly ignored. By focusing on those economics directly, as > >> policymakers we can precision-target the policies to directly target > >> those behaviours, and reduce all the "collateral damage" on the > >> innocent actors. > >> > >> Sincerely, > >> > >> George Kirikos > >> 416-588-0269 <(416)%20588-0269> > >> >https://urldefense.proofpoint.com/v2/url?u=http-3A__www. leap.com_&d=Dw > >> >IGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3J rKXt7T1dG3NjBz > >> >Cxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_ wfuQ-jCOYyo9r2 > >> 4YJ9m6g71cr0vEGbww0X9qgsNDU&e= > > _______________________________________________ > > gnso-rpm-wg mailing list > > gnso-rpm-wg@icann.org > > > > >https://urldefense.proofpoint.com/v2/url?u=https-3A__mm. icann.org_mailma >n_listinfo_gnso-2Drpm-2Dwg&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_O l9wg&r=L7MB7eHT- >UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-WyHhwM fs41uWqUos4g3JWu >GXUa1FwI&s=g9D6x_5yyONXbDzXKuaVg7WsGRorHP9u7RikcGTnhtY&e= > > > > >--------------------------------------------------------
> > If you are not an intended recipient of confidential and privileged > > information in this email, please delete it, notify us immediately at > > postmaster@gtlaw.com, and do not use or disseminate such information. > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
-- jonathan matkowsky, vp - ip & head of global brand threat mitigation
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George, Agree with everything Lori and J Scott said. In addition, jacking up fees for the TMCH to keep out gaming would punish the very entities the TMCH is designed to protect -- trademark owners. It's not aimed at the "bad actors"; it's completely indiscriminate. The result would be far fewer TMCH registrations, which is directly counter to the reason the TMCH was created in the first place. The primary beneficiaries would be the cybersquatters, who would have a much easier time registering without all those pesky claims notices. This would force more cases into the UDRP/URS systems, exacting a further pile of cash from trademark owners. Meanwhile, we would just end up with a better class of crook in the gaming end of things. If we're going to attack "gaming" it's best to attack it at the root -- the trademark registrations that are being leveraged by the "gamers." A challenge system at the TMCH shouldn't be dismissed out of hand, but the issues of creating another DRP can't be underestimated. The "Law & Economics" movement has been around for at least 60 years, and became quite fashionable in the 1980's, with the Chicago School economists and Judge Posner on the 7th Circuit as thought leaders in the area. At some point, the movement spun out of control, promoting the idea that everything can be analyzed through an economic prism. Fortunately, the pendulum has swung back and the application of economic thinking to legal issues has become much more mature and limited. However, I think even the most overheated economic analysis would not support a "solution" that punished lawful and unlawful actors equally (sort of a "Kill 'em all, and let God sort 'em out" approach). On another point, you said: While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere. I don't know of any constituency in the GNSO that would be fine with "allowing all kinds of abuse of the sunrise periods". What constituencies were you thinking of, and why? Greg On Thu, Feb 2, 2017 at 2:06 PM, <trachtenbergm@gtlaw.com> wrote:
George,
Thank you for your economics tutorial based on Wikipedia - certainly an authoritative source.
Regardless I don’t think your application of this to the TMCH is appropriate and disagree with your description of how the TMCH functions. When trademark holders submit their registrations to the TMCH, they are not trying to prove that their marks are "worthy" of protection. The fact that they have registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction.
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 12:58 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog
To continue the "economics tutorial", this is all directly related to the concept of signalling:
https://urldefense.proofpoint.com/v2/url?u=https-3A__en. wikipedia.org_wiki_Signalling-5F-28economics-29&d=DwIGaQ&c= 2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzC xm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=_- ZU3Mu11NJjQnuoQdYhV9epeypY8SYFTzL35TJgjqs&e=
The classic example comes from the education credentials market. How does a job candidate signal that they're a high quality hire? The idea is that high quality job candidates can obtain good degrees, and it's much costlier for low quality job candidates to get those same credentials.
Let's apply this to the TMCH -- implicitly, trademark holders are jumping through hoops at present to determine that their marks are "worthy" of protection. The hoops they're jumping through are:
1. pay the TMCH fees, and 2. show evidence of national TM registration in a jurisdiction, and 3. show proof of use
However, unlike the academic credentials market above, where "good" and "bad" job candidates face different costs, in the TMCH the "good" and "bad" trademark holders face essentially the SAME costs! (i.e. the fees are the same, one can get a Pakistani TM for under $10, and one can throw up a webpage for free to show "proof of use").
In other words, the mechanisms for signalling are entirely broken in the TMCH. Economics 101. The "bad guys" certainly know it's broken. As a policymaking body, we should understand *why* it's broken, and either (1) make stronger signals to differentiate and distinguish between worthy and unworthy marks, or (2) as I suggested earlier, set an explicit direct price to change the balance and behaviour directly.
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=LGFzEnWv-myJ- WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r24YJ9m6g71cr0vEGbww0X9 qgsNDU&e=
On Thu, Feb 2, 2017 at 1:36 PM, George Kirikos <icann@leap.com> wrote:
Hello,
(and trying to combine multiple responses in one email)
On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com> wrote:
I think you are trying to apply domain speculation thinking where it is all about monetary value to protection of trademark rights, which is not necessary focused or valued in terms of specific monetary value. They are not the same thing.
If life isn’t fair is an acceptable justification then why change the current system because it is not fair that some may have gamed it by using trademark registrations obtained solely for the purpose of registering valuable domain names during sunrise? You can’t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement.
2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place).
3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour.
4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing.
While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere.
5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational.
6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse).
In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors.
Sincerely,
George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=Dw IGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBz Cxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r2 4YJ9m6g71cr0vEGbww0X9qgsNDU&e=
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---------------------------------------------------------------------- If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com, and do not use or disseminate such information. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
What is the source/basis/explanation for the following statement: "it's only the 'biggest companies' that have a real problem with cybersquatting, in terms of economic costs"? While larger companies may be more well-known than smaller companies, and therefore more likely to attract cybersquatters, I've seen plenty of small companies suffer significantly as the result of only a single instance of cybersquatting. Doug Isenberg www.GigaLaw.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 2, 2017 12:46 PM To: trachtenbergm@gtlaw.com Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH Blog 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/
I have seen exactly the same with TM infringement & counterfeiting; it's the SMEs that suffer the most, not only as they may well only have one brand, they don't have the resources, or expert lawyers on hand, to be able to defend themselves. Marie -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Doug Isenberg Sent: jeudi 2 février 2017 18:53 To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog What is the source/basis/explanation for the following statement: "it's only the 'biggest companies' that have a real problem with cybersquatting, in terms of economic costs"? While larger companies may be more well-known than smaller companies, and therefore more likely to attract cybersquatters, I've seen plenty of small companies suffer significantly as the result of only a single instance of cybersquatting. Doug Isenberg www.GigaLaw.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 2, 2017 12:46 PM To: trachtenbergm@gtlaw.com Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH Blog 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/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg !DSPAM:589371ff17191564785748!
Completely agree. If anything, I think ICANN solutions have focused too much on 'big brand' problems without focusing enough on practical SME solutions. Mike Rodenbaugh RODENBAUGH LAW tel/fax: +1.415.738.8087 http://rodenbaugh.com On Thu, Feb 2, 2017 at 9:58 AM, Marie Pattullo <marie.pattullo@aim.be> wrote:
I have seen exactly the same with TM infringement & counterfeiting; it's the SMEs that suffer the most, not only as they may well only have one brand, they don't have the resources, or expert lawyers on hand, to be able to defend themselves. Marie
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Doug Isenberg Sent: jeudi 2 février 2017 18:53 To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog
What is the source/basis/explanation for the following statement: "it's only the 'biggest companies' that have a real problem with cybersquatting, in terms of economic costs"? While larger companies may be more well-known than smaller companies, and therefore more likely to attract cybersquatters, I've seen plenty of small companies suffer significantly as the result of only a single instance of cybersquatting.
Doug Isenberg www.GigaLaw.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 2, 2017 12:46 PM To: trachtenbergm@gtlaw.com Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH Blog
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/
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And, more importantly, the consumer suffers when they are duped. 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<mailto:jsevans@adobe.com> www.adobe.com From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Mike Rodenbaugh <mike@rodenbaugh.com<mailto:mike@rodenbaugh.com>> Date: Thursday, February 2, 2017 at 10:04 AM To: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH Blog Completely agree. If anything, I think ICANN solutions have focused too much on 'big brand' problems without focusing enough on practical SME solutions. Mike Rodenbaugh RODENBAUGH LAW tel/fax: +1.415.738.8087 http://rodenbaugh.com On Thu, Feb 2, 2017 at 9:58 AM, Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> wrote: I have seen exactly the same with TM infringement & counterfeiting; it's the SMEs that suffer the most, not only as they may well only have one brand, they don't have the resources, or expert lawyers on hand, to be able to defend themselves. Marie -----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Doug Isenberg Sent: jeudi 2 février 2017 18:53 To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog What is the source/basis/explanation for the following statement: "it's only the 'biggest companies' that have a real problem with cybersquatting, in terms of economic costs"? While larger companies may be more well-known than smaller companies, and therefore more likely to attract cybersquatters, I've seen plenty of small companies suffer significantly as the result of only a single instance of cybersquatting. Doug Isenberg www.GigaLaw.com<http://www.GigaLaw.com> -----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of George Kirikos Sent: Thursday, February 2, 2017 12:46 PM To: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH Blog 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<tel:416-588-0269> http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg !DSPAM:589371ff17191564785748! _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
In my personal capacity: SMEs suffer on both sides. Entrepreneurs newly naming their companies do not yet have trademarks; small businesses newly naming their products and services also do not yet have trademarks for them. I have seen SMEs, and indeed, entirely new industries, nearly wiped out by overly broad trademark protection in domain name policies (think back to the early days). It's the balance that is critical to protect everyone. Best, Kathy Kathy Kleiman www.fhhlaw.com On 2/2/2017 12:58 PM, Marie Pattullo wrote:
I have seen exactly the same with TM infringement & counterfeiting; it's the SMEs that suffer the most, not only as they may well only have one brand, they don't have the resources, or expert lawyers on hand, to be able to defend themselves. Marie
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Doug Isenberg Sent: jeudi 2 février 2017 18:53 To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog
What is the source/basis/explanation for the following statement: "it's only the 'biggest companies' that have a real problem with cybersquatting, in terms of economic costs"? While larger companies may be more well-known than smaller companies, and therefore more likely to attract cybersquatters, I've seen plenty of small companies suffer significantly as the result of only a single instance of cybersquatting.
Doug Isenberg www.GigaLaw.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 2, 2017 12:46 PM To: trachtenbergm@gtlaw.com Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH Blog
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/
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I have always advocated a balance. That said, the TMCH is merely a collection of data. It is the Sunrise Policy and Trademark Claims Notice that is the policy side of this and that is where balance can be sorted out. 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 On 2/2/17, 12:32 PM, "gnso-rpm-wg-bounces@icann.org on behalf of Kathy Kleiman" <gnso-rpm-wg-bounces@icann.org on behalf of kathy@kathykleiman.com> wrote:
In my personal capacity:
SMEs suffer on both sides. Entrepreneurs newly naming their companies do not yet have trademarks; small businesses newly naming their products and services also do not yet have trademarks for them.
I have seen SMEs, and indeed, entirely new industries, nearly wiped out by overly broad trademark protection in domain name policies (think back to the early days). It's the balance that is critical to protect everyone.
Best, Kathy
Kathy Kleiman www.fhhlaw.com
On 2/2/2017 12:58 PM, Marie Pattullo wrote:
I have seen exactly the same with TM infringement & counterfeiting; it's the SMEs that suffer the most, not only as they may well only have one brand, they don't have the resources, or expert lawyers on hand, to be able to defend themselves. Marie
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Doug Isenberg Sent: jeudi 2 février 2017 18:53 To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog
What is the source/basis/explanation for the following statement: "it's only the 'biggest companies' that have a real problem with cybersquatting, in terms of economic costs"? While larger companies may be more well-known than smaller companies, and therefore more likely to attract cybersquatters, I've seen plenty of small companies suffer significantly as the result of only a single instance of cybersquatting.
Doug Isenberg www.GigaLaw.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 2, 2017 12:46 PM To: trachtenbergm@gtlaw.com Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] TMCH Blog
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 don¹t 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/
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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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+1 Héctor Ariel Manoff Vitale, Manoff & Feilbogen Viamonte 1145 10º Piso C1053ABW Buenos Aires República Argentina Te: (54-11) 4371-6100 Fax: (54-11) 4371-6365 E-mail: <mailto:amanoff@vmf.com.ar> amanoff@vmf.com.ar Web: <http://www.vmf.com.ar/> http://www.vmf.com.ar **************************************************************************************************************************************************** Esta comunicación tiene como destinatario a la persona o empresa a la cual está dirigida y puede contener información confidencial y reservada. Si el lector de este mensaje no es el destinatario o sus empleados o representantes, deberá proceder a reenviar el presente a su remitente. La distribución, diseminación o copiado de este mensaje podría constituir violación a la ley. Gracias. This email and any files transmitted with it are intended only for the use of the individual or entity to which it is addressed, and may contain information that is privileged, confidential, and exempt from disclosure under applicable law. If the reader of this message is not the intended recipient, or the employee or agent responsible for delivering the message to recipient, you are hereby notified that any dissemination, distribution or copying of this communication in error, please notify us immediately by telephone and return the original message to us at the above address. Thank you. **************************************************************************************************************************************************** De: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] En nombre de Greg Shatan Enviado el: jueves, 02 de febrero de 2017 14:54 Para: George Kirikos CC: gnso-rpm-wg Asunto: Re: [gnso-rpm-wg] TMCH Blog 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-2Db... <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.fr.com_news_dont-2Db...> &d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=4PK5UuYljzArBjy5tIDLovRAhINmtmr4XXMj97J-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_ <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIGaQ&c...> &d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=4PK5UuYljzArBjy5tIDLovRAhINmtmr4XXMj97J-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
<image002.jpg>
Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at jonathan@get.club and delete the original message.
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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That's an interesting discussion as it brings us, again, to the question what the role of the TMCH is. Are they to decide on the requirements for protection of the mark? I don't think so. If you are able to register the mark "THE" somewhere (in line with the requirements of that jurisdiction) the TMCH has to accept protection of that mark. They should an can not supervise TM offices. If someone else is of the opinion that the mark shall not exist, it is the mark to be challenged. The only role I see for the TMCH is to provide mechanisms for treating challenged or cancelled marks, or maybe even its own challenge mechanism (where the TMCH still should not decide on registrability of a mark). Best regards Pascal Böhner Rechtsanwalt Fachanwalt für gewerblichen Rechtsschutz BARDEHLE PAGENBERG Pascal Böhner Prinzregentenplatz 7 81675 München T +49.(0)89.928 05-0 F +49.(0)89.928 05-444 pascal.boehner@bardehle.de | vCard<http://www.bardehle.com/de/team/detail/p/boehner-pascal-1/vcard.vcf> | Profile<http://www.bardehle.com/de/team/detail/person/boehner-pascal-1.html> www.bardehle.com BARDEHLE PAGENBERG Partnerschaft mbB Patentanwälte Rechtsanwälte Amtsgericht München Partnerschaftsregister 1152 "Law Firm of the Year" 2016 for Intellectual Property Law - named by Best Lawyers® and Handelsblatt "TOP-KANZLEI Patentrecht 2015" - awarded by WirtschaftsWoche Von: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] Im Auftrag von J. Scott Evans via gnso-rpm-wg Gesendet: Donnerstag, 2. Februar 2017 17:10 An: Jonathan Frost <jonathan@get.club> Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org> Betreff: 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<mailto: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<mailto:jonathan@get.club> Website: www.get.club<http://www.get.club/> <image002.jpg><https://app.getsignals.com/link?url=http%3a%2f%2fwww.nic.club%2f&ukey=agxzfn...> Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at jonathan@get.club<mailto:jonathan@get.club> and delete the original message. From: gnso-rpm-wg-bounces@icann.org<mailto: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<mailto:jon@donuts.email>>; gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto: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> [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<https://www.thedomains.com/author/michael-berkens/> 5 Comments<https://www.thedomains.com/2017/02/01/the-trademark-clearinghouse-worked-so-...> The Trademark ClearingHouse (TMCH)<http://www.trademark-clearinghouse.com/> 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<https://en.wikipedia.org/wiki/Most_common_words_in_English>. The world-famous trademark for the word "the" was obtained by Goallover Limited of London who according to DomainTools.com<http://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<http://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 ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ Important: The information contained in this communication is attorney-client-privileged and confidential information intended only for the use of the individual or entity named above. If the reader of this communication is not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, he or she is hereby notified that any dissemination, distribution, or copying of the communication is strictly prohibited. If you have received the communication in error, please immediately notify us by telephone and return the original to us at the above address and then delete the communication. Thank you. Our offices act legally independent from the other countries offices in each country and are not liable for those. ________________________________
+1. Marie From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Pascal Böhner Sent: jeudi 2 février 2017 17:23 To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] TMCH Blog Thats an interesting discussion as it brings us, again, to the question what the role of the TMCH is. Are they to decide on the requirements for protection of the mark? I dont think so. If you are able to register the mark THE somewhere (in line with the requirements of that jurisdiction) the TMCH has to accept protection of that mark. They should an can not supervise TM offices. If someone else is of the opinion that the mark shall not exist, it is the mark to be challenged. The only role I see for the TMCH is to provide mechanisms for treating challenged or cancelled marks, or maybe even its own challenge mechanism (where the TMCH still should not decide on registrability of a mark). Best regards Pascal Böhner Rechtsanwalt Fachanwalt für gewerblichen Rechtsschutz BARDEHLE PAGENBERG Pascal Böhner Prinzregentenplatz 7 81675 München T +49.(0)89.928 05-0 F +49.(0)89.928 05-444 pascal.boehner@bardehle.de | <http://www.bardehle.com/de/team/detail/p/boehner-pascal-1/vcard.vcf> vCard | <http://www.bardehle.com/de/team/detail/person/boehner-pascal-1.html> Profile www.bardehle.com BARDEHLE PAGENBERG Partnerschaft mbB Patentanwälte Rechtsanwälte Amtsgericht München Partnerschaftsregister 1152 "Law Firm of the Year" 2016 for Intellectual Property Law named by Best Lawyers® and Handelsblatt "TOP-KANZLEI Patentrecht 2015" awarded by WirtschaftsWoche Von: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] Im Auftrag von J. Scott Evans via gnso-rpm-wg Gesendet: Donnerstag, 2. Februar 2017 17:10 An: Jonathan Frost <jonathan@get.club> Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org> Betreff: 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- shopping-ended-up-in-the-trademark-clearinghouse-for-new-tlds/> http://domainnamewire.com/2014/02/10/how-common-words-like-pizza-money-and-s hopping-ended-up-in-the-trademark-clearinghouse-for-new-tlds/ 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: <mailto:jonathan@get.club> jonathan@get.club Website: <http://www.get.club/> www.get.club <https://app.getsignals.com/link?url=http%3a%2f%2fwww.nic.club%2f&ukey=agxzf nNpZ25hbHNjcnhyGAsSC1VzZXJQcm9maWxlGICAgMCxgJ8KDA&k=00a65763b45344369d292997 60b3ae45> <image002.jpg> Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at <mailto:jonathan@get.club> jonathan@get.club and delete the original message. 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 Im tempted to say that is one of *** craziest things Ive 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- well-one-company-got-24-new-gtld-using-the-famous-trademark-the/ The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark The February 1, 2017 by Michael Berkens <https://www.thedomains.com/author/michael-berkens/> 5 Comments <https://www.thedomains.com/2017/02/01/the-trademark-clearinghouse-worked-so -well-one-company-got-24-new-gtld-using-the-famous-trademark-the/#comments> The Trademark ClearingHouse (TMCH) <http://www.trademark-clearinghouse.com/> 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 wordthe, which is the most used word in the English language <https://en.wikipedia.org/wiki/Most_common_words_in_English> . 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 gTLDs 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 doesnt 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 _____ No virus found in this message. Checked by AVG - www.avg.com <http://www.avg.com/email-signature> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _____ Important: The information contained in this communication is attorney-client-privileged and confidential information intended only for the use of the individual or entity named above. If the reader of this communication is not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, he or she is hereby notified that any dissemination, distribution, or copying of the communication is strictly prohibited. If you have received the communication in error, please immediately notify us by telephone and return the original to us at the above address and then delete the communication. Thank you. Our offices act legally independent from the other countries offices in each country and are not liable for those. _____ !DSPAM:58935d2e17191455020017!
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<mailto:bwinterfeldt@mayerbrown.com> 1999 K Street, NW<x-apple-data-detectors://2/2> Washington, DC 20006-1101<x-apple-data-detectors://2/2> 202.263.3284<tel:202.263.3284> direct dial 202.830.0330<tel:202.830.0330> fax 1221 Avenue of the Americas<x-apple-data-detectors://3/0> New York, New York 10020-1001<x-apple-data-detectors://3/0> 212.506.2345<tel: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<mailto: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<mailto: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-shopping-ended-up-in-the-trademark-clearinghouse-for-new-tlds/<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fdomainnamewire.com%2F2014%2F02%2F10%2Fhow-common-words-like-pizza-money-and-shopping-ended-up-in-the-trademark-clearinghouse-for-new-tlds%2F&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cc2c40107ac76460617a808d44b86004e%7C09131022b7854e6d8d42916975e51262%7C0&sdata=%2BLJMOFvYZMT4q%2FIm67ue9OvYUJ8l5UbmI%2FKLBscT1H4%3D&reserved=0> 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<mailto:jonathan@get.club> Website: www.get.club<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.get.club...> <image002.jpg><https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fapp.getsign...> Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at jonathan@get.club<mailto:jonathan@get.club> and delete the original message. From: gnso-rpm-wg-bounces@icann.org<mailto: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<mailto:jon@donuts.email>>; gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto: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> [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-well-one-company-got-24-new-gtld-using-the-famous-trademark-the/<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.thedomains.com%2F2017%2F02%2F01%2Fthe-trademark-clearinghouse-worked-so-well-one-company-got-24-new-gtld-using-the-famous-trademark-the%2F&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cc2c40107ac76460617a808d44b86004e%7C09131022b7854e6d8d42916975e51262%7C0&sdata=4lcxQjpKBoMoFyzyYE%2Bg0YfIjBT1TaHx7oVQMQ1SV3U%3D&reserved=0> The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The” February 1, 2017 by Michael Berkens<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.thedoma...> 5 Comments<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.thedoma...> The Trademark ClearingHouse (TMCH)<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.trademar...> 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<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fen.wikipedi...>. The world-famous trademark for the word “the” was obtained by Goallover Limited of London who according to DomainTools.com<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2FDomainTools....> 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<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2FThe.Com&data...> 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 ________________________________ No virus found in this message. Checked by AVG - www.avg.com<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.avg.com%...> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cc2c40107ac76460617a808d44b86004e%7C09131022b7854e6d8d42916975e51262%7C0&sdata=n%2BWjVfeP0lu8H0O2%2B2XepXfoxpq8tpJ%2FpYhyB5Jv%2BYg%3D&reserved=0> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... __________________________________________________________________________ This email and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed. If you have received this email in error please notify the system manager. If you are not the named addressee you should not disseminate, distribute or copy this e-mail.
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<mailto:jsevans@adobe.com> www.adobe.com From: Brian Winterfeldt <BWinterfeldt@mayerbrown.com<mailto:BWinterfeldt@mayerbrown.com>> Date: Thursday, February 2, 2017 at 9:49 AM To: "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>> Cc: Jonathan Frost <jonathan@get.club<mailto:jonathan@get.club>>, gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto: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<mailto:bwinterfeldt@mayerbrown.com> 1999 K Street, NW<x-apple-data-detectors://2/2> Washington, DC 20006-1101<x-apple-data-detectors://2/2> 202.263.3284<tel:202.263.3284> direct dial 202.830.0330<tel:202.830.0330> fax 1221 Avenue of the Americas<x-apple-data-detectors://3/0> New York, New York 10020-1001<x-apple-data-detectors://3/0> 212.506.2345<tel: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<mailto: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<mailto: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-shopping-ended-up-in-the-trademark-clearinghouse-for-new-tlds/<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fdomainnamewire.com%2F2014%2F02%2F10%2Fhow-common-words-like-pizza-money-and-shopping-ended-up-in-the-trademark-clearinghouse-for-new-tlds%2F&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cc2c40107ac76460617a808d44b86004e%7C09131022b7854e6d8d42916975e51262%7C0&sdata=%2BLJMOFvYZMT4q%2FIm67ue9OvYUJ8l5UbmI%2FKLBscT1H4%3D&reserved=0> 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<mailto:jonathan@get.club> Website: www.get.club<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.get.club...> <image002.jpg><https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fapp.getsign...> Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at jonathan@get.club<mailto:jonathan@get.club> and delete the original message. From:gnso-rpm-wg-bounces@icann.org<mailto: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<mailto:jon@donuts.email>>; gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto: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> [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-well-one-company-got-24-new-gtld-using-the-famous-trademark-the/<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.thedomains.com%2F2017%2F02%2F01%2Fthe-trademark-clearinghouse-worked-so-well-one-company-got-24-new-gtld-using-the-famous-trademark-the%2F&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cc2c40107ac76460617a808d44b86004e%7C09131022b7854e6d8d42916975e51262%7C0&sdata=4lcxQjpKBoMoFyzyYE%2Bg0YfIjBT1TaHx7oVQMQ1SV3U%3D&reserved=0> The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The” February 1, 2017 by Michael Berkens<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.thedoma...> 5 Comments<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.thedoma...> The Trademark ClearingHouse (TMCH)<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.trademar...> 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<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fen.wikipedi...>. The world-famous trademark for the word “the” was obtained by Goallover Limited of London who according to DomainTools.com<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2FDomainTools....> 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<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2FThe.Com&data...> 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 ________________________________ No virus found in this message. Checked by AVG - www.avg.com<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.avg.com%...> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cc2c40107ac76460617a808d44b86004e%7C09131022b7854e6d8d42916975e51262%7C0&sdata=n%2BWjVfeP0lu8H0O2%2B2XepXfoxpq8tpJ%2FpYhyB5Jv%2BYg%3D&reserved=0> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... __________________________________________________________________________ This email and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed. 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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
<image002.jpg>
Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at jonathan@get.club and delete the original message.
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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Paul – while this may seem simple, in practice it would limit access to Sunrise to all but a very few of the world’s largest brand owners, contrary to the entire reasoning behind the roll out of the new gTLD programme. Famous (well-known) marks are dealt with case-by-case, and of course jurisdiction-by-jurisdiction as TMs are territorial – “multi-jurisdictional use” isn’t a criteria in most TM systems. And wouldn’t “revenue levels” or an “auction system” by default disadvantage, if not totally exclude, SMEs? The test for being “well-known” will generally depend on being well-known in that territory, and to those consumers: a well-known mark in Finland may mean nothing to a consumer in Ghana. China insists that the mark be well-known in China, but then tends to hold that nothing in Latin script is well-known to their citizens who do not use (read, understand..) that script, so you have arguments about likelihood of confusion based on phonetics. There are also split marks: consumers may know of (e.g.) a brand of laundry detergent, but will not know that the name is split between 2 companies who have different territorial rights – which company can claim to be the owner of the “well-known” TM? Add in the disadvantaged SME who owns a mark in one class that is the same as a more well-known mark in another: e.g. Lotus (paper tissues) and Lotus (cars). So cars could be in the TMCH, tissues couldn’t – is that fair? At the moment, whoever gets there first gets the recordal – what benefit would changing that bring? And the kicker - who decides what is well-known? To whom? Where? And when? (TMs generally aren’t well-known when they’re registered, and may not even be so a couple of months before they become the darling of a certain magazine or personality, when sales may go through the roof – or the alternative when they become vilified for similar reasons). We should, I think, look at proportionality: the balance in preventing “gaming” in Sunrise (are you including premium pricing here, by the way?) and preventing any but the world’s largest and richest TM owners from even being able to choose whether they want to pay to be in the TMCH then pay to register a DN in Sunrise. Kind regards Marie From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: vendredi 3 février 2017 03:51 To: J. Scott Evans Cc: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog 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) <mailto:jsevans@adobe.com> 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 <x-apple-data-detectors://2/2> Washington, DC <x-apple-data-detectors://2/2> 20006-1101 202.263.3284 direct dial 202.830.0330 fax 1221 Avenue of the Americas <x-apple-data-detectors://3/0> New York, New York <x-apple-data-detectors://3/0> 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 . <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fdomainnamewi...> 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: <mailto:jonathan@get.club> jonathan@get.club Website: <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.get.club...> www.get.club <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fapp.getsign...> <image002.jpg> Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at <mailto:jonathan@get.club> jonathan@get.club and delete the original message. 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-... <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.thedoma...> The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The” February 1, 2017 by Michael Berkens <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.thedoma...> 5 Comments <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.thedoma...> The Trademark ClearingHouse (TMCH) <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.trademar...> 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 <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fen.wikipedi...> . The world-famous trademark for the word “the” was obtained by Goallover Limited of London who according to DomainTools.com <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2FDomainTools....> 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 <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2FThe.Com&data...> 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 _____ No virus found in this message. Checked by AVG - www.avg.com <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.avg.com%...> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...> &data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cc2c40107ac76460617a808d44b86004e%7C09131022b7854e6d8d42916975e51262%7C0&sdata=n%2BWjVfeP0lu8H0O2%2B2XepXfoxpq8tpJ%2FpYhyB5Jv%2BYg%3D&reserved=0 __________________________________________________________________________ This email and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed. If you have received this email in error please notify the system manager. If you are not the named addressee you should not disseminate, distribute or copy this e-mail. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg !DSPAM:5893f05017191542767521!
Hi Brian, "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." That's a very TM-centric view of things, which assumes that TMs are inherently "superior" to domain name rights. Put yourself in the shoes of the "other side". By your "logic", for those who say that domain name rights are "superior", there should be no TMCH at all. Instead, the "appropriate recourse" to a domain name dispute is for the TM holder to challenge the domain name registration in the appropriate national courts. In other words, there's a double-standard. Domain name registrants are subject to excess scrutiny (i.e. there's no assumption of good faith for them, whereas TMs are always assumed to be "valid", subject to an appropriate challenge in a national court or by whoever granted that national TM right). If one follows that "logic" to its natural progression, it argues for the elimination of the UDRP/URS/TMCH/etc., and let only the national courts decide everything. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
George: I disagree with your conclusion about Brian¹s comment. But, let¹s assume you are correct. It is trademark-centric because the TMCH is a tool to assist trademark owners, so by design the TMCH is trademark-centric. As to the superiority of trademarks, I think the terms ³superiority² is emotionally charged and used to illicit a knee-jerk reaction from certain factions within the Internet stakeholder community. In reality, trademarks are terms (in this case b/c word marks are all that is eligible for registration in the TMCH) that a sovereign government (in many cases several sovereign governments) have granted certain protections because the owner of the trademark has successfully fulfilled whatever requirements the issuing government has put in place. They aren¹t necessarily ³superior² but that are not ³on par² with domain names. They are different and should be treated differently in line with established laws and international treaties. 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 On 2/2/17, 9:58 AM, "George Kirikos" <icann@leap.com> wrote:
Hi Brian,
"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."
That's a very TM-centric view of things, which assumes that TMs are inherently "superior" to domain name rights.
Put yourself in the shoes of the "other side". By your "logic", for those who say that domain name rights are "superior", there should be no TMCH at all. Instead, the "appropriate recourse" to a domain name dispute is for the TM holder to challenge the domain name registration in the appropriate national courts.
In other words, there's a double-standard. Domain name registrants are subject to excess scrutiny (i.e. there's no assumption of good faith for them, whereas TMs are always assumed to be "valid", subject to an appropriate challenge in a national court or by whoever granted that national TM right).
If one follows that "logic" to its natural progression, it argues for the elimination of the UDRP/URS/TMCH/etc., and let only the national courts decide everything.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
"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" I think that's a worthy suggestion 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 Winterfeldt, Brian J. Sent: Thursday, February 02, 2017 12:49 PM To: J. Scott Evans Cc: gnso-rpm-wg 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<mailto:bwinterfeldt@mayerbrown.com> 1999 K Street, NW<x-apple-data-detectors://2/2> Washington, DC 20006-1101<x-apple-data-detectors://2/2> 202.263.3284<tel:202.263.3284> direct dial 202.830.0330<tel:202.830.0330> fax 1221 Avenue of the Americas<x-apple-data-detectors://3/0> New York, New York 10020-1001<x-apple-data-detectors://3/0> 212.506.2345<tel: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<mailto: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<mailto: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-shopping-ended-up-in-the-trademark-clearinghouse-for-new-tlds/<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fdomainnamewire.com%2F2014%2F02%2F10%2Fhow-common-words-like-pizza-money-and-shopping-ended-up-in-the-trademark-clearinghouse-for-new-tlds%2F&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cc2c40107ac76460617a808d44b86004e%7C09131022b7854e6d8d42916975e51262%7C0&sdata=%2BLJMOFvYZMT4q%2FIm67ue9OvYUJ8l5UbmI%2FKLBscT1H4%3D&reserved=0> 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<mailto:jonathan@get.club> Website: www.get.club<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.get.club...> <image002.jpg><https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fapp.getsign...> Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential. If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited. If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at jonathan@get.club<mailto:jonathan@get.club> and delete the original message. From: gnso-rpm-wg-bounces@icann.org<mailto: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<mailto:jon@donuts.email>>; gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto: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> [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-well-one-company-got-24-new-gtld-using-the-famous-trademark-the/<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.thedomains.com%2F2017%2F02%2F01%2Fthe-trademark-clearinghouse-worked-so-well-one-company-got-24-new-gtld-using-the-famous-trademark-the%2F&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cc2c40107ac76460617a808d44b86004e%7C09131022b7854e6d8d42916975e51262%7C0&sdata=4lcxQjpKBoMoFyzyYE%2Bg0YfIjBT1TaHx7oVQMQ1SV3U%3D&reserved=0> The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark "The" February 1, 2017 by Michael Berkens<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.thedoma...> 5 Comments<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.thedoma...> The Trademark ClearingHouse (TMCH)<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.trademar...> 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<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fen.wikipedi...>. The world-famous trademark for the word "the" was obtained by Goallover Limited of London who according to DomainTools.com<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2FDomainTools....> 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<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2FThe.Com&data...> 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 ________________________________ No virus found in this message. Checked by AVG - www.avg.com<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.avg.com%...> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cc2c40107ac76460617a808d44b86004e%7C09131022b7854e6d8d42916975e51262%7C0&sdata=n%2BWjVfeP0lu8H0O2%2B2XepXfoxpq8tpJ%2FpYhyB5Jv%2BYg%3D&reserved=0> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... __________________________________________________________________________ This email and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed. If you have received this email in error please notify the system manager. If you are not the named addressee you should not disseminate, distribute or copy this e-mail. ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date: 01/28/17
So, this company owns a valid registration for the mark "the" and demonstrated use of the mark? Sent from my iPhone On Feb 2, 2017, at 5:54 AM, Jon Nevett <jon@donuts.email<mailto:jon@donuts.email>> wrote: 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<https://www.thedomains.com/author/michael-berkens/> 5 Comments<https://www.thedomains.com/2017/02/01/the-trademark-clearinghouse-worked-so-...> The Trademark ClearingHouse (TMCH)<http://www.trademark-clearinghouse.com/> 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<https://en.wikipedia.org/wiki/Most_common_words_in_English>. The world-famous trademark for the word "the" was obtained by Goallover Limited of London who according to DomainTools.com<http://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<http://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 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
participants (22)
-
Ariel Manoff -
Beckham, Brian -
Brian F. Cimbolic -
Doug Isenberg -
George Kirikos -
Greg Shatan -
J. Scott Evans -
Jon Nevett -
Jonathan Frost -
jonathan matkowsky -
Kathy Kleiman -
Lori Schulman -
Marie Pattullo -
Mike Rodenbaugh -
Pascal Böhner -
Paul Keating -
Phil Corwin -
Reuter, Renee M -
Scott Austin -
trachtenbergm＠gtlaw.com -
Volker Greimann -
Winterfeldt, Brian J.