[gnso-rpm-wg] TMCH review objectives

Fri Sep 23 16:56:33 UTC 2016

Steve,

Thanks for the comments.  I always enjoy our thought provoking
conversations..

First, gouging is not equivalent to a violation of any legal right.  The
rights holder remains free not to purchase at the gouging price and instead
rely upon curative rights.  It is an economic decision as to which costs
more.

Just because the domain could potentially be used in an infringing manner is
insufficient.  That amounts to a ³preemptive² (not preventative - my error
below) restriction.  This is a prior restraint imposed in advance of the
factual situation that MAY otherwise justify restraint.  The prior nature of
the restraint is what I am objecting to.  IF (and I say IF) the use becomes
infringing, THEN (and only then) do curative rights come into play.

Second, with the swatch.watch example, the rights holder has ample curative
rights.

More importantly, we must prepare our report and recommendations at the
50,000 foot level.  We cannot draft suggestions based upon unique factual
situations.  That is the panelists job in the curative process (UDRP/URS).

Be well.

Paul

From:  Steve Levy <slevy at accentlawgroup.com>
Date:  Friday, September 23, 2016 at 6:08 PM
To:  Paul Keating <paul at law.es>, Phil Corwin <psc at vlaw-dc.com>, Rebecca
Tushnet <rlt26 at law.georgetown.edu>, "Silver, Bradley"
<Bradley.Silver at timewarner.com>, "gnso-rpm-wg at icann.org"
<gnso-rpm-wg at icann.org>
Subject:  Re: [gnso-rpm-wg] TMCH review objectives

> Thanks for your comment, Paul.  If a domain consists of a generic term with no
> other content that implicates the brand, in most cases I would agree that the
> registry can sell it as it sees fit.  However, if other terms clearly
> implicate the brand then I¹d say the registry is simply gouging.  For example,
> swatch.xyz has the potential to be used by someone in the fabric business and
> any future improper use (ex. hosting a website featuring Timex watches) could
> be dealt with through the UDRP.  However, if the domain is swatch.watch I
> don¹t see how a registry could claim that this implicates anything other than
> the wristwatch trademark. As such, gouge pricing would be improper as a
> transparent attempt to profit from the brand and the debate of whether this is
> a preventative or curative right becomes academic.
> 
> Regards,
> Steve
> 
> From: <gnso-rpm-wg-bounces at icann.org> on behalf of Paul Keating <Paul at law.es>
> Date: Friday, September 23, 2016 at 12:04 PM
> To: Phil Corwin <psc at vlaw-dc.com>, Rebecca Tushnet <rlt26 at law.georgetown.edu>,
> "Silver, Bradley" <Bradley.Silver at timewarner.com>, "gnso-rpm-wg at icann.org"
> <gnso-rpm-wg at icann.org>
> Subject: Re: [gnso-rpm-wg] TMCH review objectives
> 
> Phil,
> 
> In furtherance to my last email responding to Mr. Levy, even an unreasonably
> priced domain is not infringing.  It is important that we not mix up the
> concepts at issue.  We are discussing both ³preventative rights: and ³curative
> rights².  The preventative rights mechanism should be severely limited because
> it acts as a restraint of market tendencies in the absence of actual
> infringement.  Imposing preventative measures is akin to imposing a ³prior
> restraint² which (certainly in the area of speech)  is disfavored as a matter
> of public policy.  The curative rights mechanism is the 2nd tool which permits
> rights holders to rectify an infringement that has actually occurred.
> 
> Rights holders already have the ability to pursue legal claims against a
> registry who is intentionally targeting them by restricting access to domains
> other than by way of exorbitant pricing.  The hurdles that the rights holders
> must overcome to succeed on such claims are understandably high  just as they
> are with any other claimant faced with a similar situation in a
> non-domain-related situation.  However, such is life.  It is not our place to
> alter the legal environment and create contractually-based claims that do not
> already exist in the law.
> 
> I believe this was the import of the comment made during the last call asking
> to differentiate economic costs from ³rights².
> 
> Sincerely,
> 
> Paul Raynor Keating, Esq.
> 
> Law.es <http://law.es/>
> 
> Tel. +34 93 368 0247 (Spain)
> 
> Tel. +44.7531.400.177 (UK)
> Tel. +1.415.937.0846 (US)
> 
> Fax. (Europe) +34 93 396 0810
> 
> Fax. (US)(415) 358.4450
> 
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> 
> email:  Paul at law.es
> 
>  
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> From: <gnso-rpm-wg-bounces at icann.org> on behalf of Phil Corwin
> <psc at vlaw-dc.com>
> Date: Friday, September 23, 2016 at 5:39 PM
> To: Rebecca Tushnet <rlt26 at law.georgetown.edu>, "Silver, Bradley"
> <Bradley.Silver at timewarner.com>, "gnso-rpm-wg at icann.org"
> <gnso-rpm-wg at icann.org>
> Subject: Re: [gnso-rpm-wg] TMCH review objectives
> 
>> I believe I just addressed that question in the email I posted  if
>> unreasonably high sunrise pricing deters a rights holder from registering a
>> domain corresponding to a verified TM registered in the TMCH then it may be
>> registered in the general availability period by an infringer, which in turn
>> imposes a variety of costs on the TM owner (including those of bringing a
>> subsequent URS, UDRP, or judicial action) and also creates the possibility of
>> confusion and harm for the general public.
>>  
>> This is not to say that all Premium pricing is unreasonable, as it is
>> generally recognized that certain words and terms have inherent additional
>> value in the DNS context  it really requires a case by case analysis.
>>  
>> 
>> Philip S. Corwin, Founding Principal
>> Virtualaw LLC
>> 1155 F Street, NW
>> Suite 1050
>> Washington, DC 20004
>> 202-559-8597/Direct
>> 202-559-8750/Fax
>> 202-255-6172/Cell
>>  
>> Twitter: @VlawDC
>>  
>> "Luck is the residue of design" -- Branch Rickey
>>  
>> 
>> From:gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On
>> Behalf Of Rebecca Tushnet
>> Sent: Friday, September 23, 2016 11:10 AM
>> To: Silver, Bradley; gnso-rpm-wg at icann.org
>> Subject: Re: [gnso-rpm-wg] TMCH review objectives
>>  
>> TMCH¹s goal of ³protection² against what, though?  How does high pricing
>> contribute to trademark infringement?  High pricing may deter purchases of
>> domain names, no doubt, but with what result for the system overall?
>>  
>> 
>> Rebecca Tushnet
>> Georgetown Law
>> 703 593 6759
>>  
>> 
>> From: Silver, Bradley [mailto:Bradley.Silver at timewarner.com]
>> Sent: Friday, September 23, 2016 11:00 AM
>> To: Rebecca Tushnet; gnso-rpm-wg at icann.org
>> Subject: RE: TMCH review objectives
>>  
>> I would add that the question of pricing feeds into the concept of
>> effectiveness, because if the TMCH is serving as a database for registries to
>> target brand owners for higher pricing based on the value of their brands,
>> then this is antithetical to the TMCH¹s primary goal to provide protection
>> for verified right holders.
>>  
>> 
>> From:gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On
>> Behalf Of Rebecca Tushnet
>> Sent: Friday, September 23, 2016 10:26 AM
>> To: gnso-rpm-wg at icann.org
>> Subject: [gnso-rpm-wg] TMCH review objectives
>>  
>> Hello, all.  On the last WG call, concerns about pricing of domain names
>> during the Sunrise Period arose. This led to a question of whether pricing is
>> within the remit of this WG  and the broader question of what the purpose of
>> our TMCH review is.  There seemed to be a desire to focus on the TMCH¹s
>> effectiveness. The predicate question, then, is: effectiveness at what?  Here
>> are some suggestions for discussion: (1) minimizing the cost of operating the
>> system for all concerned; (2) minimizing the number of actions that
>> ultimately need to be brought against infringing registrants; (3) minimizing
>> the number of noninfringing registrants whose legitimate uses are blocked or
>> deterred.  If the system is reasonably balancing those objectives, I suggest,
>> then it is effective; potential changes should be directly related to
>> improving performance on one or more of these metrics without unduly
>> hampering the others.
>>  
>> Yours,
>> Rebecca Tushnet
>>  
>> 
>> Rebecca Tushnet
>> Georgetown Law
>> 703 593 6759
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