Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH
There are only possible gaming scenarios: 1.) A party wanting to speculate with a name and wanting to ensure it gets the name files for a trademark registration is a jurisdiction where proving use to obtain registration is not require (96% of the jurisdictions). This party gets such a registration, dummies up some use and registers the trademark in the Clearinghouse; or 2.) A trademark owner has taken the decision that it must own its trademark in all new TLDs. While perfectly within the rights of a registrant in the Clearinghouse, this may be seen as overreaching by many parties. The examples that you and Rebecca and George have mentions (e.g., CLOUD, HOTEL) are dictionary terms. These could be genuine trademarks, but could also be more in the Category 1 above. So it seems to me that we need to come up with reasonable, efficient solutions that will solve these two issues. I don’t think you need to know the top 500 trademarks registered in the TMCH. The confidentiality question has been asked and answered. There is NO CONSENSUS to open the database to the public. There is consensus that issues appear to exist. So, let’s work on the parts where we have clear consensus. J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com On 4/13/17, 3:30 PM, "gnso-rpm-wg-bounces@icann.org on behalf of Paul Keating" <gnso-rpm-wg-bounces@icann.org on behalf of paul@law.es> wrote: So wE are to presume there is gaming/abuse, guess at what types of gaming/abuse have occurred, Then propose a solution based upon the above? And all because of an argument that the TMCH database is confidential notwithstanding there being neither contractual nor a legal basis for such an argument? And when one side proposes limitations on the type of TMCH data being requested (to address the confidentiality argument) opposition says it ism"chasing a rathole"? Now it is suggested that we merely rely upon peoples memory and presumptions.... Doesn't sound like an effective (or correct) way to co duct our affairs. Sent from my iPad > On 13 Apr 2017, at 20:59, George Kirikos <icann@leap.com> wrote: > > Hi folks, > > (changing the subject accordingly) > > On Thu, Apr 13, 2017 at 2:15 PM, J. Scott Evans via gnso-rpm-wg > <gnso-rpm-wg@icann.org> wrote: >> I think all of this is a huge red herring. If my memory serves me, there >> have only been about 130 Sunrise Registrations. That is a very small number >> when compared to the number of second level domains registered in the new >> TLDs. I think it is safe to assume that there has been some gaming. We don’t >> need to do an exhaustive investigation. What we need to do is look at >> reasonable solutions to the gaming problem. I have not seen any proposals >> for you on how to handle the problem. We need to close down this >> unproductive discussion and move on to finding solutions to the problem of >> gaming. > > These numbers stand for the proposition that the sunrise period should > be entirely eliminated, given that folks concede it "is a very small > number", and thus is not conferring many benefits to those who > register them defensively, since they're not utilizing the procedure. > And the gaming that does exist is amplified, since it means that a > higher percentage of the sunrise registrations are gamed. It could be > that 30%, or even 50% of sunrise registrations are gamed, given the > various blog posts and examples provided to this mailing list already > (and how many others might exist "under the radar", that some folks > are trying to keep hidden due to the lack of transparency of the > TMCH). > > Consider a "thought experiment" as to what would happen if Sunrise > registrations and the TMCH were eliminated. Those 130 registrations > would shift to either landrush or to general availability. > > For those who are "gaming" the sunrise, they'd now be on an equal > footing as everyone else. > > For those legitimate TM holders, they can either register in landrush > (or general availability), *or* they have curative rights protection > mechanisms (courts, cease and desist letters, UDRP, URS, etc.) *if* > domains which conflict with their TM rights are registered by someone > else and misused. > > I could even support a "hybrid" (horse trading, as Phil called it > yesterday) model, where landrush imposed **additional burdens** on > registrants, e.g. paying costs if they lose a UDRP), but then that > extra burden is eliminated during general availability (as it is > today). This way, TM holders and legitimate end users who don't have > trademarks but have non-conflicting uses, etc. are on equal footing > during a landrush. > > I think many people are overly protective of the TMCH & sunrise period > not because it's "working", but because it's an opportunity for extra > consulting, revenue streams, etc. e.g. lawyers can tell their clients > "get registered", and they can make money from the filing fees, etc. > There's a huge amount of money being wasted, in my voice, that can be > redirected to other things (like curative rights, better education, > etc.). > > Suppose that of the 130 sunrise registrations, half of them got > registered by legitimate TM owners in landrush. Of the 65 that were > registered by someone else, how many of those would actually be cases > of cybersquatting? I would suggest it's a small number, given the > overall stats of UDRPs relative to registrations. Even if it was a > massive 2% (actual percentage is much, much lower), that might mean 1 > extra UDRP per TLD? With 1000+ TLDs launched over 4 years, that might > mean an extra 250 UDRPs per year. That's a relatively negligible > amount. > > If the "all-in" costs of those 250 UDRPs (lawyers fees + filing fees) > is $5,000 or so, that's $1.25 million/yr. > > TMCH revenues, by contrast, are on the order of $5 million/yr for > Deloitte. And perhaps another $5 million or more per year for all the > TM agents, etc. filing on behalf of clients. Let's call it $10 > million+ for TMCH-related fees on those using that system. > > Trading $10 million/yr in "preventive" costs for $1.25 million/yr in > "enforcement" costs -- that's a no-brainer for TM holders. > > And if, as I argued above, if some of those UDRP enforcement costs are > shifted to the losers (for landrush registrations), then the economics > are even that much stronger for the elimination of the sunrise period > (since that $1.25 million becomes even lower, due to cost recovery). > > And of course, a system that has no landrush definitely benefits > ordinary registrants and prospective registrants who simply want a > "good" name, or at least a fair chance at one, and don't want to see > "THE" or "FLOWERS" or "HOTEL" or all of the other common words being > grabbed in sunrise. > > Processes would be simplified for registry operators and registrars, > if sunrises and TMCH were eliminated, which saves them money (which > gets passed along as savings for consumers). TLDs would launch faster, > too. The best second-level strings would be "spread around" more, > which is probably a good thing (except to some who feel, wrongly, that > they have exclusive rights to common dictionary terms, etc., which is > not something the law supports). > > So, I hope folks will give serious consideration to what would happen > if sunrise was completely eliminated. With a few small tweaks (as > noted above), it could be much better than we have for most people > (except for those exploiting the current system). > > Sincerely, > > George Kirikos > 416-588-0269 > https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.com... > > P.S. I know I've not written much above about the TM Claims notice > aspect of the TMCH, but those are obviously have a chilling effect, > with a 96%+ abandonment rate of registrations. A 90 day claims notice, > which determined cybersquatters are going to ignore anyway, simply > confuses legitimate registrants. The "ongoing notifications service" > aspect of the TMCH is available through other companies, e.g. > DomainTools or other domain monitoring services. > > P.P.S. Some might argue that you can never collect $5K from > registrants if they lose a UDRP. Shift some of that to the registrar, > who can then police their own clients, a sort of "know your client" > rule for those participating in landrushes. One can even envision a > system of insurance, so that those who are involved in risky domain > name registrations pay higher "insurance" (to indemnify their > registrars) than less risky registrants who don't engage in > cybersquatting. Or require a deposit at the start of the UDRP process > (if one side doesn't post a deposit, they'd be in default). > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > 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...
I have to say that I don't think that number 2 is gaming or abuse. A "waste of money" perhaps. I had one client with a mark in the TMCH. There was at least one other TMCH registrant of the same mark. It appeared that the other registrant was extremely active in sunrises. I could only watch and be amused when I received the notifications. I would not and did not advise my client to do anything of the sort; we may have done one or two pertinent sunrises but that was it. Nonetheless, they were within their rights.... I would not consider number 1 to be a "good faith" trademark applicant/registrant. Whether that could lead to cancellation of the TM registration probably depends on the law of the jurisdiction (and perhaps how good the applicant was at being a fake). Greg *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Thu, Apr 13, 2017 at 6:51 PM, J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org> wrote:
There are only possible gaming scenarios:
1.) A party wanting to speculate with a name and wanting to ensure it gets the name files for a trademark registration is a jurisdiction where proving use to obtain registration is not require (96% of the jurisdictions). This party gets such a registration, dummies up some use and registers the trademark in the Clearinghouse; or 2.) A trademark owner has taken the decision that it must own its trademark in all new TLDs. While perfectly within the rights of a registrant in the Clearinghouse, this may be seen as overreaching by many parties.
The examples that you and Rebecca and George have mentions (e.g., CLOUD, HOTEL) are dictionary terms. These could be genuine trademarks, but could also be more in the Category 1 above. So it seems to me that we need to come up with reasonable, efficient solutions that will solve these two issues. I don’t think you need to know the top 500 trademarks registered in the TMCH.
The confidentiality question has been asked and answered. There is NO CONSENSUS to open the database to the public. There is consensus that issues appear to exist. So, let’s work on the parts where we have clear consensus.
J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com
On 4/13/17, 3:30 PM, "gnso-rpm-wg-bounces@icann.org on behalf of Paul Keating" <gnso-rpm-wg-bounces@icann.org on behalf of paul@law.es> wrote:
So wE are to
presume there is gaming/abuse,
guess at what types of gaming/abuse have occurred,
Then propose a solution based upon the above?
And all because of an argument that the TMCH database is confidential notwithstanding there being neither contractual nor a legal basis for such an argument?
And when one side proposes limitations on the type of TMCH data being requested (to address the confidentiality argument) opposition says it ism"chasing a rathole"?
Now it is suggested that we merely rely upon peoples memory and presumptions....
Doesn't sound like an effective (or correct) way to co duct our affairs.
Sent from my iPad
> On 13 Apr 2017, at 20:59, George Kirikos <icann@leap.com> wrote: > > Hi folks, > > (changing the subject accordingly) > > On Thu, Apr 13, 2017 at 2:15 PM, J. Scott Evans via gnso-rpm-wg > <gnso-rpm-wg@icann.org> wrote: >> I think all of this is a huge red herring. If my memory serves me, there >> have only been about 130 Sunrise Registrations. That is a very small number >> when compared to the number of second level domains registered in the new >> TLDs. I think it is safe to assume that there has been some gaming. We don’t >> need to do an exhaustive investigation. What we need to do is look at >> reasonable solutions to the gaming problem. I have not seen any proposals >> for you on how to handle the problem. We need to close down this >> unproductive discussion and move on to finding solutions to the problem of >> gaming. > > These numbers stand for the proposition that the sunrise period should > be entirely eliminated, given that folks concede it "is a very small > number", and thus is not conferring many benefits to those who > register them defensively, since they're not utilizing the procedure. > And the gaming that does exist is amplified, since it means that a > higher percentage of the sunrise registrations are gamed. It could be > that 30%, or even 50% of sunrise registrations are gamed, given the > various blog posts and examples provided to this mailing list already > (and how many others might exist "under the radar", that some folks > are trying to keep hidden due to the lack of transparency of the > TMCH). > > Consider a "thought experiment" as to what would happen if Sunrise > registrations and the TMCH were eliminated. Those 130 registrations > would shift to either landrush or to general availability. > > For those who are "gaming" the sunrise, they'd now be on an equal > footing as everyone else. > > For those legitimate TM holders, they can either register in landrush > (or general availability), *or* they have curative rights protection > mechanisms (courts, cease and desist letters, UDRP, URS, etc.) *if* > domains which conflict with their TM rights are registered by someone > else and misused. > > I could even support a "hybrid" (horse trading, as Phil called it > yesterday) model, where landrush imposed **additional burdens** on > registrants, e.g. paying costs if they lose a UDRP), but then that > extra burden is eliminated during general availability (as it is > today). This way, TM holders and legitimate end users who don't have > trademarks but have non-conflicting uses, etc. are on equal footing > during a landrush. > > I think many people are overly protective of the TMCH & sunrise period > not because it's "working", but because it's an opportunity for extra > consulting, revenue streams, etc. e.g. lawyers can tell their clients > "get registered", and they can make money from the filing fees, etc. > There's a huge amount of money being wasted, in my voice, that can be > redirected to other things (like curative rights, better education, > etc.). > > Suppose that of the 130 sunrise registrations, half of them got > registered by legitimate TM owners in landrush. Of the 65 that were > registered by someone else, how many of those would actually be cases > of cybersquatting? I would suggest it's a small number, given the > overall stats of UDRPs relative to registrations. Even if it was a > massive 2% (actual percentage is much, much lower), that might mean 1 > extra UDRP per TLD? With 1000+ TLDs launched over 4 years, that might > mean an extra 250 UDRPs per year. That's a relatively negligible > amount. > > If the "all-in" costs of those 250 UDRPs (lawyers fees + filing fees) > is $5,000 or so, that's $1.25 million/yr. > > TMCH revenues, by contrast, are on the order of $5 million/yr for > Deloitte. And perhaps another $5 million or more per year for all the > TM agents, etc. filing on behalf of clients. Let's call it $10 > million+ for TMCH-related fees on those using that system. > > Trading $10 million/yr in "preventive" costs for $1.25 million/yr in > "enforcement" costs -- that's a no-brainer for TM holders. > > And if, as I argued above, if some of those UDRP enforcement costs are > shifted to the losers (for landrush registrations), then the economics > are even that much stronger for the elimination of the sunrise period > (since that $1.25 million becomes even lower, due to cost recovery). > > And of course, a system that has no landrush definitely benefits > ordinary registrants and prospective registrants who simply want a > "good" name, or at least a fair chance at one, and don't want to see > "THE" or "FLOWERS" or "HOTEL" or all of the other common words being > grabbed in sunrise. > > Processes would be simplified for registry operators and registrars, > if sunrises and TMCH were eliminated, which saves them money (which > gets passed along as savings for consumers). TLDs would launch faster, > too. The best second-level strings would be "spread around" more, > which is probably a good thing (except to some who feel, wrongly, that > they have exclusive rights to common dictionary terms, etc., which is > not something the law supports). > > So, I hope folks will give serious consideration to what would happen > if sunrise was completely eliminated. With a few small tweaks (as > noted above), it could be much better than we have for most people > (except for those exploiting the current system). > > Sincerely, > > George Kirikos > 416-588-0269 > https://na01.safelinks.protection.outlook.com/?url= http%3A%2F%2Fwww.leap.com%2F&data=02%7C01%7C% 7Ccdca1b956d664e6ce60f08d482bcc018%7Cfa7b1b5a7b34438794aed2c178de cee1%7C0%7C0%7C636277194605080892&sdata=W4I2yUs1BNWQrbVtJJKCvZ5ErVeoW5 c1xPFf2vQwiOU%3D&reserved=0 > > P.S. I know I've not written much above about the TM Claims notice > aspect of the TMCH, but those are obviously have a chilling effect, > with a 96%+ abandonment rate of registrations. A 90 day claims notice, > which determined cybersquatters are going to ignore anyway, simply > confuses legitimate registrants. The "ongoing notifications service" > aspect of the TMCH is available through other companies, e.g. > DomainTools or other domain monitoring services. > > P.P.S. Some might argue that you can never collect $5K from > registrants if they lose a UDRP. Shift some of that to the registrar, > who can then police their own clients, a sort of "know your client" > rule for those participating in landrushes. One can even envision a > system of insurance, so that those who are involved in risky domain > name registrations pay higher "insurance" (to indemnify their > registrars) than less risky registrants who don't engage in > cybersquatting. Or require a deposit at the start of the UDRP process > (if one side doesn't post a deposit, they'd be in default). > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://na01.safelinks.protection.outlook.com/?url= https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso- rpm-wg&data=02%7C01%7C%7Ccdca1b956d664e6ce60f08d482bcc018% 7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636277194605080892&sdata= Nk9gHw9LBMwXBWHOjflgWWBLwHeGy%2BLB0Kam4Zx7BCY%3D&reserved=0 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url= https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso- rpm-wg&data=02%7C01%7C%7Ccdca1b956d664e6ce60f08d482bcc018% 7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636277194605080892&sdata= Nk9gHw9LBMwXBWHOjflgWWBLwHeGy%2BLB0Kam4Zx7BCY%3D&reserved=0
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Greg: I don’t necessarily disagree with your assessment. That said, there are others in this group that might see it as at least overreaching. I was trying to be balanced. I think there is a solution to case no. 2. [ttps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif] J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com From: Greg Shatan <gregshatanipc@gmail.com> Date: Thursday, April 13, 2017 at 4:19 PM To: J Scott Evans <jsevans@adobe.com> Cc: Paul Keating <paul@law.es>, George Kirikos <icann@leap.com>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH I have to say that I don't think that number 2 is gaming or abuse. A "waste of money" perhaps. I had one client with a mark in the TMCH. There was at least one other TMCH registrant of the same mark. It appeared that the other registrant was extremely active in sunrises. I could only watch and be amused when I received the notifications. I would not and did not advise my client to do anything of the sort; we may have done one or two pertinent sunrises but that was it. Nonetheless, they were within their rights.... I would not consider number 1 to be a "good faith" trademark applicant/registrant. Whether that could lead to cancellation of the TM registration probably depends on the law of the jurisdiction (and perhaps how good the applicant was at being a fake). Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Thu, Apr 13, 2017 at 6:51 PM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: There are only possible gaming scenarios: 1.) A party wanting to speculate with a name and wanting to ensure it gets the name files for a trademark registration is a jurisdiction where proving use to obtain registration is not require (96% of the jurisdictions). This party gets such a registration, dummies up some use and registers the trademark in the Clearinghouse; or 2.) A trademark owner has taken the decision that it must own its trademark in all new TLDs. While perfectly within the rights of a registrant in the Clearinghouse, this may be seen as overreaching by many parties. The examples that you and Rebecca and George have mentions (e.g., CLOUD, HOTEL) are dictionary terms. These could be genuine trademarks, but could also be more in the Category 1 above. So it seems to me that we need to come up with reasonable, efficient solutions that will solve these two issues. I don’t think you need to know the top 500 trademarks registered in the TMCH. The confidentiality question has been asked and answered. There is NO CONSENSUS to open the database to the public. There is consensus that issues appear to exist. So, let’s work on the parts where we have clear consensus. J. Scott Evans 408.536.5336<tel:408.536.5336> (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162<tel:408.709.6162> (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com> On 4/13/17, 3:30 PM, "gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> on behalf of Paul Keating" <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> on behalf of paul@law.es<mailto:paul@law.es>> wrote: So wE are to presume there is gaming/abuse, guess at what types of gaming/abuse have occurred, Then propose a solution based upon the above? And all because of an argument that the TMCH database is confidential notwithstanding there being neither contractual nor a legal basis for such an argument? And when one side proposes limitations on the type of TMCH data being requested (to address the confidentiality argument) opposition says it ism"chasing a rathole"? Now it is suggested that we merely rely upon peoples memory and presumptions.... Doesn't sound like an effective (or correct) way to co duct our affairs. Sent from my iPad > On 13 Apr 2017, at 20:59, George Kirikos <icann@leap.com<mailto:icann@leap.com>> wrote: > > Hi folks, > > (changing the subject accordingly) > > On Thu, Apr 13, 2017 at 2:15 PM, J. Scott Evans via gnso-rpm-wg > <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: >> I think all of this is a huge red herring. If my memory serves me, there >> have only been about 130 Sunrise Registrations. That is a very small number >> when compared to the number of second level domains registered in the new >> TLDs. I think it is safe to assume that there has been some gaming. We don’t >> need to do an exhaustive investigation. What we need to do is look at >> reasonable solutions to the gaming problem. I have not seen any proposals >> for you on how to handle the problem. We need to close down this >> unproductive discussion and move on to finding solutions to the problem of >> gaming. > > These numbers stand for the proposition that the sunrise period should > be entirely eliminated, given that folks concede it "is a very small > number", and thus is not conferring many benefits to those who > register them defensively, since they're not utilizing the procedure. > And the gaming that does exist is amplified, since it means that a > higher percentage of the sunrise registrations are gamed. It could be > that 30%, or even 50% of sunrise registrations are gamed, given the > various blog posts and examples provided to this mailing list already > (and how many others might exist "under the radar", that some folks > are trying to keep hidden due to the lack of transparency of the > TMCH). > > Consider a "thought experiment" as to what would happen if Sunrise > registrations and the TMCH were eliminated. Those 130 registrations > would shift to either landrush or to general availability. > > For those who are "gaming" the sunrise, they'd now be on an equal > footing as everyone else. > > For those legitimate TM holders, they can either register in landrush > (or general availability), *or* they have curative rights protection > mechanisms (courts, cease and desist letters, UDRP, URS, etc.) *if* > domains which conflict with their TM rights are registered by someone > else and misused. > > I could even support a "hybrid" (horse trading, as Phil called it > yesterday) model, where landrush imposed **additional burdens** on > registrants, e.g. paying costs if they lose a UDRP), but then that > extra burden is eliminated during general availability (as it is > today). This way, TM holders and legitimate end users who don't have > trademarks but have non-conflicting uses, etc. are on equal footing > during a landrush. > > I think many people are overly protective of the TMCH & sunrise period > not because it's "working", but because it's an opportunity for extra > consulting, revenue streams, etc. e.g. lawyers can tell their clients > "get registered", and they can make money from the filing fees, etc. > There's a huge amount of money being wasted, in my voice, that can be > redirected to other things (like curative rights, better education, > etc.). > > Suppose that of the 130 sunrise registrations, half of them got > registered by legitimate TM owners in landrush. Of the 65 that were > registered by someone else, how many of those would actually be cases > of cybersquatting? I would suggest it's a small number, given the > overall stats of UDRPs relative to registrations. Even if it was a > massive 2% (actual percentage is much, much lower), that might mean 1 > extra UDRP per TLD? With 1000+ TLDs launched over 4 years, that might > mean an extra 250 UDRPs per year. That's a relatively negligible > amount. > > If the "all-in" costs of those 250 UDRPs (lawyers fees + filing fees) > is $5,000 or so, that's $1.25 million/yr. > > TMCH revenues, by contrast, are on the order of $5 million/yr for > Deloitte. And perhaps another $5 million or more per year for all the > TM agents, etc. filing on behalf of clients. Let's call it $10 > million+ for TMCH-related fees on those using that system. > > Trading $10 million/yr in "preventive" costs for $1.25 million/yr in > "enforcement" costs -- that's a no-brainer for TM holders. > > And if, as I argued above, if some of those UDRP enforcement costs are > shifted to the losers (for landrush registrations), then the economics > are even that much stronger for the elimination of the sunrise period > (since that $1.25 million becomes even lower, due to cost recovery). > > And of course, a system that has no landrush definitely benefits > ordinary registrants and prospective registrants who simply want a > "good" name, or at least a fair chance at one, and don't want to see > "THE" or "FLOWERS" or "HOTEL" or all of the other common words being > grabbed in sunrise. > > Processes would be simplified for registry operators and registrars, > if sunrises and TMCH were eliminated, which saves them money (which > gets passed along as savings for consumers). TLDs would launch faster, > too. The best second-level strings would be "spread around" more, > which is probably a good thing (except to some who feel, wrongly, that > they have exclusive rights to common dictionary terms, etc., which is > not something the law supports). > > So, I hope folks will give serious consideration to what would happen > if sunrise was completely eliminated. With a few small tweaks (as > noted above), it could be much better than we have for most people > (except for those exploiting the current system). > > Sincerely, > > George Kirikos > 416-588-0269 > https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.leap.com... > > P.S. I know I've not written much above about the TM Claims notice > aspect of the TMCH, but those are obviously have a chilling effect, > with a 96%+ abandonment rate of registrations. A 90 day claims notice, > which determined cybersquatters are going to ignore anyway, simply > confuses legitimate registrants. The "ongoing notifications service" > aspect of the TMCH is available through other companies, e.g. > DomainTools or other domain monitoring services. > > P.P.S. Some might argue that you can never collect $5K from > registrants if they lose a UDRP. Shift some of that to the registrar, > who can then police their own clients, a sort of "know your client" > rule for those participating in landrushes. One can even envision a > system of insurance, so that those who are involved in risky domain > name registrations pay higher "insurance" (to indemnify their > registrars) than less risky registrants who don't engage in > cybersquatting. Or require a deposit at the start of the UDRP process > (if one side doesn't post a deposit, they'd be in default). > _______________________________________________ > 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... _______________________________________________ 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... _______________________________________________ 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=02%7C01%7C%7C3ff61e88f95940ac2bbc08d482c38e86%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636277223811719237&sdata=003wN3NDokODF1GudLV%2BYci%2BvKngTSlGtwRZb2UwVpE%3D&reserved=0>
While we're horse trading, let me bring up an additional thought. Someone
else had brought up the (old) topic of a globally protected marks list. While that's been controversial, I think what could be done, if it's in conjunction with the changes I've suggested, is the development of a "globally abused" marks list, with an algorithm for pattern matching. This would be for the smallest number of truly abused terms (e.g. "paypal", and other financial institutions), with evidence of past fraud, large history of numerous UDRP/URS cases, etc. For those terms (say 100 or another 'small' number we can form a consensus around), registrations would not be blocked. Instead, domains that are triggered by the algorithm would not resolve for a certain period after registration (say 2 weeks). This allows for investigation by the various companies of new registrations, to take action before the domains resolve. It would also act as a deterrent, by reducing the benefits of registering them in the first place (i.e. register throwaway domain, abuse it immediately, then throw it away after being confronted). Those domains could get registration of 1 year + 2 weeks or (slightly longer), by the way, to ensure the inconvenienced registrant is made "whole". There'd need to be a 'balancing" to prevent overreaching of which marks make the list (perhaps with human oversight, with balanced representation of stakeholders), and creation of false positives, but this would be another way to change the economics of cybersquatting and enforcement. Perhaps higher registrant validation (more than just testing that their email works) for those who can't wait 2 weeks. Thoughts? George Kirikos 416-588-0269 http://www.leap.com/
I am hating myself for wading back into this never-ending quagmire but two brief comments anyway… 1. The Globally Protected Marks List will never work and has always been DOA when discussed because: a. People can ever agree on who should make the list; and b. It penalizes the vast majority of trademark owners that have been granted protection by the relevant authority but are not the biggest 100 brands in the world 2. Your two week (or whatever the term is) proposal will not work for a variety of reasons including: a. Online abuse is increasingly in the form of email addresses created on the domain names, not content; and b. That requires all trademark owners to constantly monitor and take action against every potentially infringing domain name within 2 weeks, which is an unreasonable burden. When they don’t the infringers will just start their infringing conduct at the beginning of the third week (or whatever period); c. Who will create this algorithm – ICANN? Will it work as well as the string similarity algorithm for new gTLDS? 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 George Kirikos Sent: Thursday, April 13, 2017 6:56 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH While we're horse trading, let me bring up an additional thought. Someone else had brought up the (old) topic of a globally protected marks list. While that's been controversial, I think what could be done, if it's in conjunction with the changes I've suggested, is the development of a "globally abused" marks list, with an algorithm for pattern matching. This would be for the smallest number of truly abused terms (e.g. "paypal", and other financial institutions), with evidence of past fraud, large history of numerous UDRP/URS cases, etc. For those terms (say 100 or another 'small' number we can form a consensus around), registrations would not be blocked. Instead, domains that are triggered by the algorithm would not resolve for a certain period after registration (say 2 weeks). This allows for investigation by the various companies of new registrations, to take action before the domains resolve. It would also act as a deterrent, by reducing the benefits of registering them in the first place (i.e. register throwaway domain, abuse it immediately, then throw it away after being confronted). Those domains could get registration of 1 year + 2 weeks or (slightly longer), by the way, to ensure the inconvenienced registrant is made "whole". There'd need to be a 'balancing" to prevent overreaching of which marks make the list (perhaps with human oversight, with balanced representation of stakeholders), and creation of false positives, but this would be another way to change the economics of cybersquatting and enforcement. Perhaps higher registrant validation (more than just testing that their email works) for those who can't wait 2 weeks. Thoughts? 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=DwMFaQ&c...> ---------------------------------------------------------------------- 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.
Hi Marc, Thanks for taking the time to wade in. See responses below: On Thu, Apr 13, 2017 at 8:16 PM, <trachtenbergm@gtlaw.com> wrote:
1. The Globally Protected Marks List will never work and has always been DOA when discussed because:
a. People can ever agree on who should make the list; and
b. It penalizes the vast majority of trademark owners that have been granted protection by the relevant authority but are not the biggest 100 brands in the world
For 1(a), if an "objective" standard can't be agreed to using an algorithm, the easiest way to allocate it is to auction off the slots (sealed bid auction, regular basis, and the 100th highest bid sets the price for everyone who bid that much or higher, if it's 100 slots). Presumably, the brands who benefit the most from being on it (e.g. Paypal, some other banks, etc.) would bid the most (and rationally, they'd bid an amount *less* than the incremental benefit it would deliver, so they'd each still be better of than the "status quo" of "do nothing"). For 1 (b), it doesn't "penalize" them -- the status quo would still be the status quo for them. If we're trying to find solutions for everyone, we're never going to get anywhere. Let's try going after lower hanging fruit.
2. Your two week (or whatever the term is) proposal will not work for a variety of reasons including:
a. Online abuse is increasingly in the form of email addresses created on the domain names, not content; and
b. That requires all trademark owners to constantly monitor and take action against every potentially infringing domain name within 2 weeks, which is an unreasonable burden. When they don’t the infringers will just start their infringing conduct at the beginning of the third week (or whatever period);
c. Who will create this algorithm – ICANN? Will it work as well as the string similarity algorithm for new gTLDS?
For 2(a), if the domain name is not registered, but not in the zone file (no nameservers), then the email address won't be able to receive incoming email. And, outgoing email purporting to be from that domain would be easily caught in spam filters (i.e. just like a sender sending email with a "from" of a non-existent existent domain name today). For 2(b), this is only for the "top" abused marks, who presumably are *already* monitoring freshly registered domain names to assess their "riskiness". Miscreants have the advantage currently of a real-time registration system. Reduce that advantage, for those top abused marks, and their economics change. You don't need to actually *see* the abusive behaviour on certain domain names, to know that they're abusive -- often you can tell just by looking at the domain name itself (e.g. domains that have variations of Paypal with hyphens, extra words, etc.). For 2(c), definitely not ICANN! (nor the people who designed SWORD!) Hold a competition. There are certainly algorithms out there used to assess risk already, and assign a risk score to a domain name. Have them duke it out, on a regular basis. With artificial intelligence and deep learning these days, it's a different world than 10 years ago. Artificial intelligence can identify videos of cats, and can nearly drive! Abusive domain names are much simpler problem sets. Establish training sets, and automated systems can do a pretty good job of identifying potentially malicious domain names before they're even used. As an example, go to: http://www.wipo.int/amc/en/domains/casesx/list.jsp?prefix=D&year=2017&seq_mi... to see the first 200 UDRPs filed at WIPO in 2017, and hide all but the 2nd column. I'm confident you can predict the outcome successfully in most cases, just by looking at the domain name itself, and nothing more (not even knowing the complainant, not even knowing the TM involved, registrar, etc.). Do an "out of sample" test with 200 upcoming UDRPs, and I'm sure you'd get similar results. You've developed heuristics, and those can be taught to a machine. For a freshly domain name risk score, one has potentially even more information than just the domain name (e.g. the fields in the WHOIS) with which to refine the risk assessment. e.g see: https://www.domaintools.com/products/reputation-scoring/ (I'm sure there are others) Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
George, This is not realistic nor fair. Basically you are doling out protection based solely on ability to pay, which is contradictory and unfair to the trademark owners with statutory and other rights granted by the relevant governmental authorities. It also does not reflect the status quo - the status quo is the RPMs as they currently exist. With that, let's agree to disagree as I do not feel like getting 500 emails from you over the rest of the week. 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, April 13, 2017 8:00 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH Hi Marc, Thanks for taking the time to wade in. See responses below: On Thu, Apr 13, 2017 at 8:16 PM, <trachtenbergm@gtlaw.com> wrote:
1. The Globally Protected Marks List will never work and has always been DOA when discussed because:
a. People can ever agree on who should make the list; and
b. It penalizes the vast majority of trademark owners that have been granted protection by the relevant authority but are not the biggest 100 brands in the world
For 1(a), if an "objective" standard can't be agreed to using an algorithm, the easiest way to allocate it is to auction off the slots (sealed bid auction, regular basis, and the 100th highest bid sets the price for everyone who bid that much or higher, if it's 100 slots). Presumably, the brands who benefit the most from being on it (e.g. Paypal, some other banks, etc.) would bid the most (and rationally, they'd bid an amount *less* than the incremental benefit it would deliver, so they'd each still be better of than the "status quo" of "do nothing"). For 1 (b), it doesn't "penalize" them -- the status quo would still be the status quo for them. If we're trying to find solutions for everyone, we're never going to get anywhere. Let's try going after lower hanging fruit.
2. Your two week (or whatever the term is) proposal will not work for a variety of reasons including:
a. Online abuse is increasingly in the form of email addresses created on the domain names, not content; and
b. That requires all trademark owners to constantly monitor and take action against every potentially infringing domain name within 2 weeks, which is an unreasonable burden. When they don’t the infringers will just start their infringing conduct at the beginning of the third week (or whatever period);
c. Who will create this algorithm – ICANN? Will it work as well as the string similarity algorithm for new gTLDS?
For 2(a), if the domain name is not registered, but not in the zone file (no nameservers), then the email address won't be able to receive incoming email. And, outgoing email purporting to be from that domain would be easily caught in spam filters (i.e. just like a sender sending email with a "from" of a non-existent existent domain name today). For 2(b), this is only for the "top" abused marks, who presumably are *already* monitoring freshly registered domain names to assess their "riskiness". Miscreants have the advantage currently of a real-time registration system. Reduce that advantage, for those top abused marks, and their economics change. You don't need to actually *see* the abusive behaviour on certain domain names, to know that they're abusive -- often you can tell just by looking at the domain name itself (e.g. domains that have variations of Paypal with hyphens, extra words, etc.). For 2(c), definitely not ICANN! (nor the people who designed SWORD!) Hold a competition. There are certainly algorithms out there used to assess risk already, and assign a risk score to a domain name. Have them duke it out, on a regular basis. With artificial intelligence and deep learning these days, it's a different world than 10 years ago. Artificial intelligence can identify videos of cats, and can nearly drive! Abusive domain names are much simpler problem sets. Establish training sets, and automated systems can do a pretty good job of identifying potentially malicious domain names before they're even used. As an example, go to: https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_amc_en_doma... to see the first 200 UDRPs filed at WIPO in 2017, and hide all but the 2nd column. I'm confident you can predict the outcome successfully in most cases, just by looking at the domain name itself, and nothing more (not even knowing the complainant, not even knowing the TM involved, registrar, etc.). Do an "out of sample" test with 200 upcoming UDRPs, and I'm sure you'd get similar results. You've developed heuristics, and those can be taught to a machine. For a freshly domain name risk score, one has potentially even more information than just the domain name (e.g. the fields in the WHOIS) with which to refine the risk assessment. e.g see: https://urldefense.proofpoint.com/v2/url?u=https-3A__www.domaintools.com_pro... (I'm sure there are others) Sincerely, George Kirikos 416-588-0269 https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIGaQ&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... ---------------------------------------------------------------------- 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.
J Scott, I appreciate your need to be balanced in your role as chair. And I recognize there are some who who would seek to define "gaming" or "abuse" much more expansively than I would. However, I don't think number 2 qualifies as gaming or abuse -- except to the extent the trademark owner is being gamed or abused. Indeed, one of the failed assumptions of the New gTLD Program seems to have been that trademark owners would buy even more defensive registrations than they did. In that vein, the ability to register all the domains you don't want in order to protect your interests (along with registering the domains you do want) it is hardly a great result for trademark owners, so a solution would be a great idea. Of course, it needs to be a solution that's an improvement on the current situation, and I haven't seen one yet (including on this thread). Greg *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Thu, Apr 13, 2017 at 7:34 PM, J. Scott Evans <jsevans@adobe.com> wrote:
Greg:
I don’t necessarily disagree with your assessment. That said, there are others in this group that might see it as at least overreaching. I was trying to be balanced. I think there is a solution to case no. 2.
[image: ttps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif]
*J. Scott Evans*
408.536.5336 <(408)%20536-5336> (tel)
345 Park Avenue, Mail Stop W11-544
Director, Associate General Counsel
408.709.6162 <(408)%20709-6162> (cell)
San Jose, CA, 95110, USA
Adobe. Make It an Experience.
jsevans@adobe.com
www.adobe.com
*From: *Greg Shatan <gregshatanipc@gmail.com> *Date: *Thursday, April 13, 2017 at 4:19 PM *To: *J Scott Evans <jsevans@adobe.com> *Cc: *Paul Keating <paul@law.es>, George Kirikos <icann@leap.com>, " gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> *Subject: *Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH
I have to say that I don't think that number 2 is gaming or abuse. A "waste of money" perhaps.
I had one client with a mark in the TMCH. There was at least one other TMCH registrant of the same mark. It appeared that the other registrant was extremely active in sunrises. I could only watch and be amused when I received the notifications. I would not and did not advise my client to do anything of the sort; we may have done one or two pertinent sunrises but that was it. Nonetheless, they were within their rights....
I would not consider number 1 to be a "good faith" trademark applicant/registrant. Whether that could lead to cancellation of the TM registration probably depends on the law of the jurisdiction (and perhaps how good the applicant was at being a fake).
Greg
*Greg Shatan *C: 917-816-6428 <(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428 <(646)%20845-9428> gregshatanipc@gmail.com
On Thu, Apr 13, 2017 at 6:51 PM, J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org> wrote:
There are only possible gaming scenarios:
1.) A party wanting to speculate with a name and wanting to ensure it gets the name files for a trademark registration is a jurisdiction where proving use to obtain registration is not require (96% of the jurisdictions). This party gets such a registration, dummies up some use and registers the trademark in the Clearinghouse; or 2.) A trademark owner has taken the decision that it must own its trademark in all new TLDs. While perfectly within the rights of a registrant in the Clearinghouse, this may be seen as overreaching by many parties.
The examples that you and Rebecca and George have mentions (e.g., CLOUD, HOTEL) are dictionary terms. These could be genuine trademarks, but could also be more in the Category 1 above. So it seems to me that we need to come up with reasonable, efficient solutions that will solve these two issues. I don’t think you need to know the top 500 trademarks registered in the TMCH.
The confidentiality question has been asked and answered. There is NO CONSENSUS to open the database to the public. There is consensus that issues appear to exist. So, let’s work on the parts where we have clear consensus.
J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com
On 4/13/17, 3:30 PM, "gnso-rpm-wg-bounces@icann.org on behalf of Paul Keating" <gnso-rpm-wg-bounces@icann.org on behalf of paul@law.es> wrote:
So wE are to
presume there is gaming/abuse,
guess at what types of gaming/abuse have occurred,
Then propose a solution based upon the above?
And all because of an argument that the TMCH database is confidential notwithstanding there being neither contractual nor a legal basis for such an argument?
And when one side proposes limitations on the type of TMCH data being requested (to address the confidentiality argument) opposition says it ism"chasing a rathole"?
Now it is suggested that we merely rely upon peoples memory and presumptions....
Doesn't sound like an effective (or correct) way to co duct our affairs.
Sent from my iPad
> On 13 Apr 2017, at 20:59, George Kirikos <icann@leap.com> wrote: > > Hi folks, > > (changing the subject accordingly) > > On Thu, Apr 13, 2017 at 2:15 PM, J. Scott Evans via gnso-rpm-wg > <gnso-rpm-wg@icann.org> wrote: >> I think all of this is a huge red herring. If my memory serves me, there >> have only been about 130 Sunrise Registrations. That is a very small number >> when compared to the number of second level domains registered in the new >> TLDs. I think it is safe to assume that there has been some gaming. We don’t >> need to do an exhaustive investigation. What we need to do is look at >> reasonable solutions to the gaming problem. I have not seen any proposals >> for you on how to handle the problem. We need to close down this >> unproductive discussion and move on to finding solutions to the problem of >> gaming. > > These numbers stand for the proposition that the sunrise period should > be entirely eliminated, given that folks concede it "is a very small > number", and thus is not conferring many benefits to those who > register them defensively, since they're not utilizing the procedure. > And the gaming that does exist is amplified, since it means that a > higher percentage of the sunrise registrations are gamed. It could be > that 30%, or even 50% of sunrise registrations are gamed, given the > various blog posts and examples provided to this mailing list already > (and how many others might exist "under the radar", that some folks > are trying to keep hidden due to the lack of transparency of the > TMCH). > > Consider a "thought experiment" as to what would happen if Sunrise > registrations and the TMCH were eliminated. Those 130 registrations > would shift to either landrush or to general availability. > > For those who are "gaming" the sunrise, they'd now be on an equal > footing as everyone else. > > For those legitimate TM holders, they can either register in landrush > (or general availability), *or* they have curative rights protection > mechanisms (courts, cease and desist letters, UDRP, URS, etc.) *if* > domains which conflict with their TM rights are registered by someone > else and misused. > > I could even support a "hybrid" (horse trading, as Phil called it > yesterday) model, where landrush imposed **additional burdens** on > registrants, e.g. paying costs if they lose a UDRP), but then that > extra burden is eliminated during general availability (as it is > today). This way, TM holders and legitimate end users who don't have > trademarks but have non-conflicting uses, etc. are on equal footing > during a landrush. > > I think many people are overly protective of the TMCH & sunrise period > not because it's "working", but because it's an opportunity for extra > consulting, revenue streams, etc. e.g. lawyers can tell their clients > "get registered", and they can make money from the filing fees, etc. > There's a huge amount of money being wasted, in my voice, that can be > redirected to other things (like curative rights, better education, > etc.). > > Suppose that of the 130 sunrise registrations, half of them got > registered by legitimate TM owners in landrush. Of the 65 that were > registered by someone else, how many of those would actually be cases > of cybersquatting? I would suggest it's a small number, given the > overall stats of UDRPs relative to registrations. Even if it was a > massive 2% (actual percentage is much, much lower), that might mean 1 > extra UDRP per TLD? With 1000+ TLDs launched over 4 years, that might > mean an extra 250 UDRPs per year. That's a relatively negligible > amount. > > If the "all-in" costs of those 250 UDRPs (lawyers fees + filing fees) > is $5,000 or so, that's $1.25 million/yr. > > TMCH revenues, by contrast, are on the order of $5 million/yr for > Deloitte. And perhaps another $5 million or more per year for all the > TM agents, etc. filing on behalf of clients. Let's call it $10 > million+ for TMCH-related fees on those using that system. > > Trading $10 million/yr in "preventive" costs for $1.25 million/yr in > "enforcement" costs -- that's a no-brainer for TM holders. > > And if, as I argued above, if some of those UDRP enforcement costs are > shifted to the losers (for landrush registrations), then the economics > are even that much stronger for the elimination of the sunrise period > (since that $1.25 million becomes even lower, due to cost recovery). > > And of course, a system that has no landrush definitely benefits > ordinary registrants and prospective registrants who simply want a > "good" name, or at least a fair chance at one, and don't want to see > "THE" or "FLOWERS" or "HOTEL" or all of the other common words being > grabbed in sunrise. > > Processes would be simplified for registry operators and registrars, > if sunrises and TMCH were eliminated, which saves them money (which > gets passed along as savings for consumers). TLDs would launch faster, > too. The best second-level strings would be "spread around" more, > which is probably a good thing (except to some who feel, wrongly, that > they have exclusive rights to common dictionary terms, etc., which is > not something the law supports). > > So, I hope folks will give serious consideration to what would happen > if sunrise was completely eliminated. With a few small tweaks (as > noted above), it could be much better than we have for most people > (except for those exploiting the current system). > > Sincerely, > > George Kirikos > 416-588-0269 <(416)%20588-0269>
> https://na01.safelinks.protection.outlook.com/?url= http%3A%2F%2Fwww.leap.com%2F&data=02%7C01%7C% 7Ccdca1b956d664e6ce60f08d482bcc018%7Cfa7b1b5a7b34438794aed2c178de cee1%7C0%7C0%7C636277194605080892&sdata=W4I2yUs1BNWQrbVtJJKCvZ5ErVeoW5 c1xPFf2vQwiOU%3D&reserved=0 > > P.S. I know I've not written much above about the TM Claims notice > aspect of the TMCH, but those are obviously have a chilling effect, > with a 96%+ abandonment rate of registrations. A 90 day claims notice, > which determined cybersquatters are going to ignore anyway, simply > confuses legitimate registrants. The "ongoing notifications service" > aspect of the TMCH is available through other companies, e.g. > DomainTools or other domain monitoring services. > > P.P.S. Some might argue that you can never collect $5K from > registrants if they lose a UDRP. Shift some of that to the registrar, > who can then police their own clients, a sort of "know your client" > rule for those participating in landrushes. One can even envision a > system of insurance, so that those who are involved in risky domain > name registrations pay higher "insurance" (to indemnify their > registrars) than less risky registrants who don't engage in > cybersquatting. Or require a deposit at the start of the UDRP process > (if one side doesn't post a deposit, they'd be in default). > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://na01.safelinks.protection.outlook.com/?url= https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso- rpm-wg&data=02%7C01%7C%7Ccdca1b956d664e6ce60f08d482bcc018% 7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636277194605080892&sdata= Nk9gHw9LBMwXBWHOjflgWWBLwHeGy%2BLB0Kam4Zx7BCY%3D&reserved=0 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url= https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso- rpm-wg&data=02%7C01%7C%7Ccdca1b956d664e6ce60f08d482bcc018% 7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636277194605080892&sdata= Nk9gHw9LBMwXBWHOjflgWWBLwHeGy%2BLB0Kam4Zx7BCY%3D&reserved=0
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On 13/4/17 8:47 pm, Greg Shatan wrote:
However, I don't think number 2 qualifies as gaming or abuse -- except to the extent the trademark owner is being gamed or abused. Indeed, one of the failed assumptions of the New gTLD Program seems to have been that trademark owners would buy even more defensive registrations than they did.
So there's nothing wrong with a company that has a trademark for computers sunrise registering that trademark in a gTLD that relates to fruit on the strength of its computer trademark, locking out those who would actually use that domain name to sell fruit? Sounds like abuse to me. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122
Jeremy, Except that real life doesn't pan out like that. In my experience as a trademark practitioner, my clients are not interested in gobbling up domain names for registration's sake - and absorbing the administrative and financial headaches that this entails. Rather, most brand owners are primarily concerned with stopping the registration of domains names that genuinely cause confusion with consumers, or which pose a potential threat to consumer and public safety (e.g., phishing, malware, etc.). A domain name registration along the lines you suggest below simply does not reflect that business reality. That said, I am not so naïve to suppose that this never happens by a trademark owner acting in bad faith, but I am not aware of any evidence to suggest this is the norm. Moreover, the greater threat are the instances where domain investors/resellers/scalpers (choose your preferred terminology) register domain names which they have no bona fide interest in using, apart from reselling it at a profit to a party interested in using it for legitimate purposes - aka, a brand owner. This is exactly the type of "abuse" the TMCH was designed to prevent. Marina -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Friday, April 14, 2017 10:12 AM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH On 13/4/17 8:47 pm, Greg Shatan wrote:
However, I don't think number 2 qualifies as gaming or abuse -- except
to the extent the trademark owner is being gamed or abused. Indeed,
one of the failed assumptions of the New gTLD Program seems to have
been that trademark owners would buy even more defensive registrations
than they did.
So there's nothing wrong with a company that has a trademark for computers sunrise registering that trademark in a gTLD that relates to fruit on the strength of its computer trademark, locking out those who would actually use that domain name to sell fruit? Sounds like abuse to me. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122
+ 1. Thanks Marina. Sent from my iPhone, sorry for typos
On 14 Apr 2017, at 19:24, Marina Lewis <marina@dns-law.com> wrote:
Jeremy,
Except that real life doesn't pan out like that. In my experience as a trademark practitioner, my clients are not interested in gobbling up domain names for registration's sake - and absorbing the administrative and financial headaches that this entails. Rather, most brand owners are primarily concerned with stopping the registration of domains names that genuinely cause confusion with consumers, or which pose a potential threat to consumer and public safety (e.g., phishing, malware, etc.). A domain name registration along the lines you suggest below simply does not reflect that business reality.
That said, I am not so naïve to suppose that this never happens by a trademark owner acting in bad faith, but I am not aware of any evidence to suggest this is the norm. Moreover, the greater threat are the instances where domain investors/resellers/scalpers (choose your preferred terminology) register domain names which they have no bona fide interest in using, apart from reselling it at a profit to a party interested in using it for legitimate purposes – aka, a brand owner. This is exactly the type of “abuse” the TMCH was designed to prevent.
Marina
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Friday, April 14, 2017 10:12 AM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH
On 13/4/17 8:47 pm, Greg Shatan wrote:
However, I don't think number 2 qualifies as gaming or abuse -- except to the extent the trademark owner is being gamed or abused. Indeed, one of the failed assumptions of the New gTLD Program seems to have been that trademark owners would buy even more defensive registrations than they did.
So there's nothing wrong with a company that has a trademark for computers sunrise registering that trademark in a gTLD that relates to fruit on the strength of its computer trademark, locking out those who would actually use that domain name to sell fruit? Sounds like abuse to me.
-- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org
Tel: 415.436.9333 ext 161
:: Defending Your Rights in the Digital World ::
Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122
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Agreed. Thanks Marina. [ttps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif] J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com From: <gnso-rpm-wg-bounces@icann.org> on behalf of Marie Pattullo <marie.pattullo@aim.be> Date: Friday, April 14, 2017 at 10:31 AM To: Marina Lewis <marina@dns-law.com> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH + 1. Thanks Marina. Sent from my iPhone, sorry for typos On 14 Apr 2017, at 19:24, Marina Lewis <marina@dns-law.com<mailto:marina@dns-law.com>> wrote: Jeremy, Except that real life doesn't pan out like that. In my experience as a trademark practitioner, my clients are not interested in gobbling up domain names for registration's sake - and absorbing the administrative and financial headaches that this entails. Rather, most brand owners are primarily concerned with stopping the registration of domains names that genuinely cause confusion with consumers, or which pose a potential threat to consumer and public safety (e.g., phishing, malware, etc.). A domain name registration along the lines you suggest below simply does not reflect that business reality. That said, I am not so naïve to suppose that this never happens by a trademark owner acting in bad faith, but I am not aware of any evidence to suggest this is the norm. Moreover, the greater threat are the instances where domain investors/resellers/scalpers (choose your preferred terminology) register domain names which they have no bona fide interest in using, apart from reselling it at a profit to a party interested in using it for legitimate purposes – aka, a brand owner. This is exactly the type of “abuse” the TMCH was designed to prevent. Marina -----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 Jeremy Malcolm Sent: Friday, April 14, 2017 10:12 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH On 13/4/17 8:47 pm, Greg Shatan wrote:
However, I don't think number 2 qualifies as gaming or abuse -- except
to the extent the trademark owner is being gamed or abused. Indeed,
one of the failed assumptions of the New gTLD Program seems to have
been that trademark owners would buy even more defensive registrations
than they did.
So there's nothing wrong with a company that has a trademark for computers sunrise registering that trademark in a gTLD that relates to fruit on the strength of its computer trademark, locking out those who would actually use that domain name to sell fruit? Sounds like abuse to me. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&data=02%7C01%7C%7C65e8e2ff71e64f7cde9308d4835c199b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636277878961247617&sdata=6B%2Fd4xJ%2BLcgNrVTYJwAsy0LfoiBPzPB7IhRTEw%2Ffhmk%3D&reserved=0> jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C65e8e2ff71e64f7cde9308d4835c199b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636277878961247617&sdata=gt6micFxvjhM4H1jblOivysceEsZjde6KupvwdDtKfs%3D&reserved=0> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 !DSPAM:58f105da17161890220640! _______________________________________________ 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=02%7C01%7C%7C65e8e2ff71e64f7cde9308d4835c199b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636277878961247617&sdata=WqsB2BHYwcHv8HoQoO0RmQuJ9WeywHONURSXkYG9brM%3D&reserved=0> !DSPAM:58f105da17161890220640!
Good points, thanks Marina for raising these. From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of J. Scott Evans via gnso-rpm-wg Sent: Friday, April 14, 2017 7:54 PM To: Marie Pattullo; Marina Lewis Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH Agreed. Thanks Marina. [ttps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif] J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com> From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> Date: Friday, April 14, 2017 at 10:31 AM To: Marina Lewis <marina@dns-law.com<mailto:marina@dns-law.com>> Cc: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH + 1. Thanks Marina. Sent from my iPhone, sorry for typos On 14 Apr 2017, at 19:24, Marina Lewis <marina@dns-law.com<mailto:marina@dns-law.com>> wrote: Jeremy, Except that real life doesn't pan out like that. In my experience as a trademark practitioner, my clients are not interested in gobbling up domain names for registration's sake - and absorbing the administrative and financial headaches that this entails. Rather, most brand owners are primarily concerned with stopping the registration of domains names that genuinely cause confusion with consumers, or which pose a potential threat to consumer and public safety (e.g., phishing, malware, etc.). A domain name registration along the lines you suggest below simply does not reflect that business reality. That said, I am not so naïve to suppose that this never happens by a trademark owner acting in bad faith, but I am not aware of any evidence to suggest this is the norm. Moreover, the greater threat are the instances where domain investors/resellers/scalpers (choose your preferred terminology) register domain names which they have no bona fide interest in using, apart from reselling it at a profit to a party interested in using it for legitimate purposes – aka, a brand owner. This is exactly the type of “abuse” the TMCH was designed to prevent. Marina -----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 Jeremy Malcolm Sent: Friday, April 14, 2017 10:12 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH On 13/4/17 8:47 pm, Greg Shatan wrote:
However, I don't think number 2 qualifies as gaming or abuse -- except
to the extent the trademark owner is being gamed or abused. Indeed,
one of the failed assumptions of the New gTLD Program seems to have
been that trademark owners would buy even more defensive registrations
than they did.
So there's nothing wrong with a company that has a trademark for computers sunrise registering that trademark in a gTLD that relates to fruit on the strength of its computer trademark, locking out those who would actually use that domain name to sell fruit? Sounds like abuse to me. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&data=02%7C01%7C%7C65e8e2ff71e64f7cde9308d4835c199b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636277878961247617&sdata=6B%2Fd4xJ%2BLcgNrVTYJwAsy0LfoiBPzPB7IhRTEw%2Ffhmk%3D&reserved=0> jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C65e8e2ff71e64f7cde9308d4835c199b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636277878961247617&sdata=gt6micFxvjhM4H1jblOivysceEsZjde6KupvwdDtKfs%3D&reserved=0> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 !DSPAM:58f105da17161890220640! _______________________________________________ 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=02%7C01%7C%7C65e8e2ff71e64f7cde9308d4835c199b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636277878961247617&sdata=WqsB2BHYwcHv8HoQoO0RmQuJ9WeywHONURSXkYG9brM%3D&reserved=0> !DSPAM:58f105da17161890220640! World IP Day 2017 – Join the conversation Web: www.wipo.int/ipday Facebook: www.facebook.com/worldipday 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 Jeremy. It’s a prior restriction on speech. Trademarks are a restriction on speech—one that may well be beneficial overall, but we must continue to be aware of this as we discuss extending those rights in the TLD space. Reg Levy VP Compliance + Policy | Minds + Machines Group Limited C: +1-310-963-7135 S: RegLevy2 Current UTC offset: -7
On 14 Apr 2017, at 10:24, Marina Lewis <marina@dns-law.com> wrote:
Jeremy,
Except that real life doesn't pan out like that. In my experience as a trademark practitioner, my clients are not interested in gobbling up domain names for registration's sake - and absorbing the administrative and financial headaches that this entails. Rather, most brand owners are primarily concerned with stopping the registration of domains names that genuinely cause confusion with consumers, or which pose a potential threat to consumer and public safety (e.g., phishing, malware, etc.). A domain name registration along the lines you suggest below simply does not reflect that business reality.
That said, I am not so naïve to suppose that this never happens by a trademark owner acting in bad faith, but I am not aware of any evidence to suggest this is the norm. Moreover, the greater threat are the instances where domain investors/resellers/scalpers (choose your preferred terminology) register domain names which they have no bona fide interest in using, apart from reselling it at a profit to a party interested in using it for legitimate purposes – aka, a brand owner. This is exactly the type of “abuse” the TMCH was designed to prevent.
Marina <> -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Friday, April 14, 2017 10:12 AM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH
On 13/4/17 8:47 pm, Greg Shatan wrote:
However, I don't think number 2 qualifies as gaming or abuse -- except to the extent the trademark owner is being gamed or abused. Indeed, one of the failed assumptions of the New gTLD Program seems to have been that trademark owners would buy even more defensive registrations than they did.
So there's nothing wrong with a company that has a trademark for computers sunrise registering that trademark in a gTLD that relates to fruit on the strength of its computer trademark, locking out those who would actually use that domain name to sell fruit? Sounds like abuse to me.
-- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org <https://eff.org/> jmalcolm@eff.org <mailto:jmalcolm@eff.org>
Tel: 415.436.9333 ext 161
:: Defending Your Rights in the Digital World ::
Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt <https://www.eff.org/files/2016/11/27/key_jmalcolm.txt> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122
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But Reg, by that token any possession of any DN is a restriction of speech, as only one person can ever own a DN. I don't see it that way. Sent from my iPhone, sorry for typos
On 14 Apr 2017, at 19:34, Reg Levy <reg@mmx.co> wrote:
+1 Jeremy. It’s a prior restriction on speech. Trademarks are a restriction on speech—one that may well be beneficial overall, but we must continue to be aware of this as we discuss extending those rights in the TLD space.
Reg Levy VP Compliance + Policy | Minds + Machines Group Limited C: +1-310-963-7135 S: RegLevy2
Current UTC offset: -7
On 14 Apr 2017, at 10:24, Marina Lewis <marina@dns-law.com> wrote:
Jeremy,
Except that real life doesn't pan out like that. In my experience as a trademark practitioner, my clients are not interested in gobbling up domain names for registration's sake - and absorbing the administrative and financial headaches that this entails. Rather, most brand owners are primarily concerned with stopping the registration of domains names that genuinely cause confusion with consumers, or which pose a potential threat to consumer and public safety (e.g., phishing, malware, etc.). A domain name registration along the lines you suggest below simply does not reflect that business reality.
That said, I am not so naïve to suppose that this never happens by a trademark owner acting in bad faith, but I am not aware of any evidence to suggest this is the norm. Moreover, the greater threat are the instances where domain investors/resellers/scalpers (choose your preferred terminology) register domain names which they have no bona fide interest in using, apart from reselling it at a profit to a party interested in using it for legitimate purposes – aka, a brand owner. This is exactly the type of “abuse” the TMCH was designed to prevent.
Marina
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Friday, April 14, 2017 10:12 AM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH
On 13/4/17 8:47 pm, Greg Shatan wrote:
However, I don't think number 2 qualifies as gaming or abuse -- except to the extent the trademark owner is being gamed or abused. Indeed, one of the failed assumptions of the New gTLD Program seems to have been that trademark owners would buy even more defensive registrations than they did.
So there's nothing wrong with a company that has a trademark for computers sunrise registering that trademark in a gTLD that relates to fruit on the strength of its computer trademark, locking out those who would actually use that domain name to sell fruit? Sounds like abuse to me.
-- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org
Tel: 415.436.9333 ext 161
:: Defending Your Rights in the Digital World ::
Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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+1 Marie Marina A. Lewis (415) 290-1245 marina@dns-law.com<mailto:marina@dns-law.com> On Apr 14, 2017, at 10:37 AM, Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> wrote: But Reg, by that token any possession of any DN is a restriction of speech, as only one person can ever own a DN. I don't see it that way. Sent from my iPhone, sorry for typos On 14 Apr 2017, at 19:34, Reg Levy <reg@mmx.co<mailto:reg@mmx.co>> wrote: +1 Jeremy. It’s a prior restriction on speech. Trademarks are a restriction on speech—one that may well be beneficial overall, but we must continue to be aware of this as we discuss extending those rights in the TLD space. Reg Levy VP Compliance + Policy | Minds + Machines Group Limited C: +1-310-963-7135 S: RegLevy2 Current UTC offset: -7 On 14 Apr 2017, at 10:24, Marina Lewis <marina@dns-law.com<mailto:marina@dns-law.com>> wrote: Jeremy, Except that real life doesn't pan out like that. In my experience as a trademark practitioner, my clients are not interested in gobbling up domain names for registration's sake - and absorbing the administrative and financial headaches that this entails. Rather, most brand owners are primarily concerned with stopping the registration of domains names that genuinely cause confusion with consumers, or which pose a potential threat to consumer and public safety (e.g., phishing, malware, etc.). A domain name registration along the lines you suggest below simply does not reflect that business reality. That said, I am not so naïve to suppose that this never happens by a trademark owner acting in bad faith, but I am not aware of any evidence to suggest this is the norm. Moreover, the greater threat are the instances where domain investors/resellers/scalpers (choose your preferred terminology) register domain names which they have no bona fide interest in using, apart from reselling it at a profit to a party interested in using it for legitimate purposes – aka, a brand owner. This is exactly the type of “abuse” the TMCH was designed to prevent. Marina -----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 Jeremy Malcolm Sent: Friday, April 14, 2017 10:12 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH On 13/4/17 8:47 pm, Greg Shatan wrote:
However, I don't think number 2 qualifies as gaming or abuse -- except
to the extent the trademark owner is being gamed or abused. Indeed,
one of the failed assumptions of the New gTLD Program seems to have
been that trademark owners would buy even more defensive registrations
than they did.
So there's nothing wrong with a company that has a trademark for computers sunrise registering that trademark in a gTLD that relates to fruit on the strength of its computer trademark, locking out those who would actually use that domain name to sell fruit? Sounds like abuse to me. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org<https://eff.org/> jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 _______________________________________________ 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<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg !DSPAM:58f1082e17162128111151!
Reg: I think it a fundamental error to label trademarks as restrictions on speech: they are source identifiers and, as such, they need to be protected so that consumers can rely on them to accurately indicate the source of goods or services (or the particular goods or services) they either trust or wish to avoid. Actually, it seems to me that trademarks are no greater restrictions on speech than are the dictionary definitions of words that limit their meaning and use. They may even be considered far less restrictive of speech than are definitions. Michael R. Graham From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Reg Levy Sent: Friday, April 14, 2017 10:34 AM To: Marina Lewis <marina@dns-law.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH +1 Jeremy. It's a prior restriction on speech. Trademarks are a restriction on speech-one that may well be beneficial overall, but we must continue to be aware of this as we discuss extending those rights in the TLD space. Reg Levy VP Compliance + Policy | Minds + Machines Group Limited C: +1-310-963-7135 S: RegLevy2 Current UTC offset: -7 On 14 Apr 2017, at 10:24, Marina Lewis <marina@dns-law.com<mailto:marina@dns-law.com>> wrote: Jeremy, Except that real life doesn't pan out like that. In my experience as a trademark practitioner, my clients are not interested in gobbling up domain names for registration's sake - and absorbing the administrative and financial headaches that this entails. Rather, most brand owners are primarily concerned with stopping the registration of domains names that genuinely cause confusion with consumers, or which pose a potential threat to consumer and public safety (e.g., phishing, malware, etc.). A domain name registration along the lines you suggest below simply does not reflect that business reality. That said, I am not so naïve to suppose that this never happens by a trademark owner acting in bad faith, but I am not aware of any evidence to suggest this is the norm. Moreover, the greater threat are the instances where domain investors/resellers/scalpers (choose your preferred terminology) register domain names which they have no bona fide interest in using, apart from reselling it at a profit to a party interested in using it for legitimate purposes - aka, a brand owner. This is exactly the type of "abuse" the TMCH was designed to prevent. Marina -----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 Jeremy Malcolm Sent: Friday, April 14, 2017 10:12 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH On 13/4/17 8:47 pm, Greg Shatan wrote:
However, I don't think number 2 qualifies as gaming or abuse -- except
to the extent the trademark owner is being gamed or abused. Indeed,
one of the failed assumptions of the New gTLD Program seems to have
been that trademark owners would buy even more defensive registrations
than they did.
So there's nothing wrong with a company that has a trademark for computers sunrise registering that trademark in a gTLD that relates to fruit on the strength of its computer trademark, locking out those who would actually use that domain name to sell fruit? Sounds like abuse to me. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org<https://eff.org/> jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 _______________________________________________ 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 Marina's explanation. More importantly, I think we need to revisit what exactly is meant by "gaming". For example: Registering a TMCH registered and use-established trademark in a new Registry during the Sunrise Period is not "gaming" the TMCH/RPM system even if the trademark is not registered or used by its owner for goods/services related to or described by the New gTLD. NOTE: I am not defending other types of "gaming" that may occur, such as registration of trademarks with the sole purpose of TMCH registration for Sunrise periods. Michael R. Graham From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Marina Lewis Sent: Friday, April 14, 2017 10:24 AM To: Jeremy Malcolm <jmalcolm@eff.org>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH Jeremy, Except that real life doesn't pan out like that. In my experience as a trademark practitioner, my clients are not interested in gobbling up domain names for registration's sake - and absorbing the administrative and financial headaches that this entails. Rather, most brand owners are primarily concerned with stopping the registration of domains names that genuinely cause confusion with consumers, or which pose a potential threat to consumer and public safety (e.g., phishing, malware, etc.). A domain name registration along the lines you suggest below simply does not reflect that business reality. That said, I am not so naïve to suppose that this never happens by a trademark owner acting in bad faith, but I am not aware of any evidence to suggest this is the norm. Moreover, the greater threat are the instances where domain investors/resellers/scalpers (choose your preferred terminology) register domain names which they have no bona fide interest in using, apart from reselling it at a profit to a party interested in using it for legitimate purposes - aka, a brand owner. This is exactly the type of "abuse" the TMCH was designed to prevent. Marina -----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 Jeremy Malcolm Sent: Friday, April 14, 2017 10:12 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH On 13/4/17 8:47 pm, Greg Shatan wrote:
However, I don't think number 2 qualifies as gaming or abuse -- except
to the extent the trademark owner is being gamed or abused. Indeed,
one of the failed assumptions of the New gTLD Program seems to have
been that trademark owners would buy even more defensive registrations
than they did.
So there's nothing wrong with a company that has a trademark for computers sunrise registering that trademark in a gTLD that relates to fruit on the strength of its computer trademark, locking out those who would actually use that domain name to sell fruit? Sounds like abuse to me. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122
+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 De: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] En nombre de Marina Lewis Enviado el: viernes, 14 de abril de 2017 14:24 Para: Jeremy Malcolm; gnso-rpm-wg@icann.org Asunto: Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH Jeremy, Except that real life doesn't pan out like that. In my experience as a trademark practitioner, my clients are not interested in gobbling up domain names for registration's sake - and absorbing the administrative and financial headaches that this entails. Rather, most brand owners are primarily concerned with stopping the registration of domains names that genuinely cause confusion with consumers, or which pose a potential threat to consumer and public safety (e.g., phishing, malware, etc.). A domain name registration along the lines you suggest below simply does not reflect that business reality. That said, I am not so naïve to suppose that this never happens by a trademark owner acting in bad faith, but I am not aware of any evidence to suggest this is the norm. Moreover, the greater threat are the instances where domain investors/resellers/scalpers (choose your preferred terminology) register domain names which they have no bona fide interest in using, apart from reselling it at a profit to a party interested in using it for legitimate purposes aka, a brand owner. This is exactly the type of abuse the TMCH was designed to prevent. Marina -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Friday, April 14, 2017 10:12 AM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH On 13/4/17 8:47 pm, Greg Shatan wrote:
However, I don't think number 2 qualifies as gaming or abuse -- except
to the extent the trademark owner is being gamed or abused. Indeed,
one of the failed assumptions of the New gTLD Program seems to have
been that trademark owners would buy even more defensive registrations
than they did.
So there's nothing wrong with a company that has a trademark for computers sunrise registering that trademark in a gTLD that relates to fruit on the strength of its computer trademark, locking out those who would actually use that domain name to sell fruit? Sounds like abuse to me. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation <https://eff.org> https://eff.org <mailto:jmalcolm@eff.org> jmalcolm@eff.org Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: <https://www.eff.org/files/2016/11/27/key_jmalcolm.txt> https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122
Jeremy: First, even in a .fruit there is no guarantee that apple.fruit would be used for supporting the benefits of the fruit. However, if someone would take responsibility for the use of the second level TLD, that would be different. I am sure a multi-national computer company would have no problem with folks registering and using domains for generic or descriptive purposes or for unrelated purposes. The problem that there is no easy way to thwart having to file an expensive UDRP or more expensive lawsuit to police the misuse of one’s mark. If registries and registrars would enforce the provision of their contracts where the registrant represents that its domain does not infringe on the rights of others that would be one thing, but they don’t. If all new TLDs were sponsored or chartered wherein registration in the TLD required upfront verification that the registrant was in the class of persons for whom the TLD operates (e.g., like a .bank) or if domains were not sold on a first come, first served basis (like Yellow Pages ads in the old phone books), then we wouldn’t have the issues we do. There are many cost-effective and efficient solutions beyond the Sunrise, but it also would greatly effect the artificial scarcity created by first come, first served sales and the bottom-line of registries that would actually need to take some responsibility to police their TLDs or at least assist TM owners by taking down infringements. J. Scott J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com On 4/14/17, 10:11 AM, "gnso-rpm-wg-bounces@icann.org on behalf of Jeremy Malcolm" <gnso-rpm-wg-bounces@icann.org on behalf of jmalcolm@eff.org> wrote: On 13/4/17 8:47 pm, Greg Shatan wrote: > However, I don't think number 2 qualifies as gaming or abuse -- except > to the extent the trademark owner is being gamed or abused. Indeed, > one of the failed assumptions of the New gTLD Program seems to have > been that trademark owners would buy even more defensive registrations > than they did. So there's nothing wrong with a company that has a trademark for computers sunrise registering that trademark in a gTLD that relates to fruit on the strength of its computer trademark, locking out those who would actually use that domain name to sell fruit? Sounds like abuse to me. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&dat... jmalcolm@eff.org Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org... PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122
@Jeremy: I'm just wondering: Would your concern be addressed if your "fruit selling" registry were established as a closed registry in which only fruit sellers could participate? Famous marks might still be permitted registration, but at present they do not enjoy that breadth of rights. Michael R. Graham -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm Sent: Friday, April 14, 2017 10:12 AM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH On 13/4/17 8:47 pm, Greg Shatan wrote:
However, I don't think number 2 qualifies as gaming or abuse -- except to the extent the trademark owner is being gamed or abused. Indeed, one of the failed assumptions of the New gTLD Program seems to have been that trademark owners would buy even more defensive registrations than they did.
So there's nothing wrong with a company that has a trademark for computers sunrise registering that trademark in a gTLD that relates to fruit on the strength of its computer trademark, locking out those who would actually use that domain name to sell fruit? Sounds like abuse to me. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122
Hi J. Scott, Trimming the part re: confidentiality of the existing TMCH, to not get side-tracked: On Thu, Apr 13, 2017 at 6:51 PM, J. Scott Evans <jsevans@adobe.com> wrote:
1.) A party wanting to speculate with a name and wanting to ensure it gets the name files for a trademark registration is a jurisdiction where proving use to obtain registration is not require (96% of the jurisdictions). This party gets such a registration, dummies up some use and registers the trademark in the Clearinghouse; or 2.) A trademark owner has taken the decision that it must own its trademark in all new TLDs. While perfectly within the rights of a registrant in the Clearinghouse, this may be seen as overreaching by many parties.
The examples that you and Rebecca and George have mentions (e.g., CLOUD, HOTEL) are dictionary terms. These could be genuine trademarks, but could also be more in the Category 1 above. So it seems to me that we need to come up with reasonable, efficient solutions that will solve these two issues. I don’t think you need to know the top 500 trademarks registered in the TMCH.
....So, let’s work on the parts where we have clear consensus.
Under my proposal (no sunrise, straight to landrush), there is no TMCH at all, so those iffy TM registrations in scenario 1 don't provide any benefit to the 'gamer'. One wouldn't need any TM at all to participate in the landrush. Thus, scenario 1 gaming is eliminated, since there's no presentation of any TMs at all to gain access to landrush. Under scenario 2, that ("legitimate", to separate it from scenario 1) trademark owner can simply outbid (if need be, if others even desire the term) the competition in the landrush. I wouldn't call that "overreaching" to try to do so under that level playing field, the TM doesn't give them any "bidding advantage" -- they'd have to pay more than anyone else, using money (instead of being giving "first dibs" under sunrise). Legitimate registrants without a TM are able to bid too. If Apple (the iPhone maker) wanted to outbid every single entity for Apple.menu, or Apple.recipes, they'd have the right to try. It's likely a waste of shareholders money, but at least every other good faith registrant had an equal chance on a level playing field to spend their money to do the same. I would see absolutely nothing wrong if they outbid everyone else. The list of top 500 TM claims terms is useful to get a sense as to whether people are trying to register terms like Verizon, Google, Yahoo, etc., or if they're trying to register common terms. So far, it seems from the evidence that we do have (the top 10), that people are trying to register common terms. In other words, are the TMCH claims notices scaring off mostly cybersquatters, or are they scaring off registrants who want to register common terms that are widely used by many entities? Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
participants (11)
-
Ariel Manoff -
Beckham, Brian -
George Kirikos -
Greg Shatan -
J. Scott Evans -
Jeremy Malcolm -
Marie Pattullo -
Marina Lewis -
Michael Graham (ELCA) -
Reg Levy -
trachtenbergm＠gtlaw.com