[gnso-rpm-wg] TMCH review objectives

Fri Sep 23 17:11:42 UTC 2016

As I said, Paul, what is "unreasonably high" is a subjective call.

But one thing this WG can definitely inquire into is whether certain ROs have obtained TMCH listings via various means for the express purpose of linking high prices to TMCH registered terms. If we find that to have gone on then it might well have deterred some TM owners from even registering in the TMCH.

Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell

Twitter: @VlawDC

"Luck is the residue of design" -- Branch Rickey

From: Paul Keating [mailto:Paul at law.es]
Sent: Friday, September 23, 2016 12:48 PM
To: Phil Corwin; Rebecca Tushnet; Silver, Bradley; gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] TMCH review objectives

Phil,

There is no such thing as an "unreasonably high premium price".    The premium price is a combination of the price of the domain, plus the value of the exclusive option to purchase.

If offered in 1977-78, FORD.com could have a premium price of $1M.  The obvious "trademark holder" would be Ford Motor Co.   However, the domain could be more valuable to Gerald Ford who was running for president or the Ford Foundation which has 12.5 BILLION under management endowment.

Again, lets focus the subject properly.

TMCH = preemptive rights / Prior restraint (absolute restriction, no use context or no bad faith required)

UDRP/URS - Curative rights (use specific e.g. Some sort of bad faith)

PRK
From: Phil Corwin <psc at vlaw-dc.com<mailto:psc at vlaw-dc.com>>
Date: Friday, September 23, 2016 at 6:14 PM
To: Paul Keating <paul at law.es<mailto:paul at law.es>>, Rebecca Tushnet <rlt26 at law.georgetown.edu<mailto:rlt26 at law.georgetown.edu>>, "Silver, Bradley" <Bradley.Silver at timewarner.com<mailto:Bradley.Silver at timewarner.com>>, "gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>" <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
Subject: RE: [gnso-rpm-wg] TMCH review objectives

I agree Paul, and that is why I said in a prior email that there can't be a general rule and each instance requires its own analysis.

Unreasonably high premium pricing (and I realize that's a subjective call) of a TMCH-registered term is not equivalent to infringing. However, it may lead to additional infringement if it deters a rights holder from making the sunrise registration and the domain is subsequently acquired in general availability and used  for infringement (recognizing here that a wide variety of dictionary words have inherent DNS value and can be used in legitimate non-infringing ways).

TM owners have legal rights as well as a right to expect some level of reasonable effectiveness (not perfection) from the available RPMs. Registry operators have a right to set their own prices, but that doesn't render them immune from criticism and perhaps corrective action if they abuse it. Ad domain registrants have a right to register and use domain names (including at least all dictionary words registered in the TMCH)so long as they don't engage in unlawful practices, including TM infringement.

Our WG's job is to review the effectiveness of RPMs within this broad context of all the affected parties and their separate and overlapping rights.

Best, Philip

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: Paul Keating [mailto:Paul at law.es]
Sent: Friday, September 23, 2016 12:04 PM
To: Phil Corwin; Rebecca Tushnet; Silver, Bradley; gnso-rpm-wg at icann.org<mailto: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 "preventative rights: and "curative rights".  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 "prior restraint" 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 "rights".

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
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email:  Paul at law.es<mailto:Paul at law.es>

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From: <gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org>> on behalf of Phil Corwin <psc at vlaw-dc.com<mailto:psc at vlaw-dc.com>>
Date: Friday, September 23, 2016 at 5:39 PM
To: Rebecca Tushnet <rlt26 at law.georgetown.edu<mailto:rlt26 at law.georgetown.edu>>, "Silver, Bradley" <Bradley.Silver at timewarner.com<mailto:Bradley.Silver at timewarner.com>>, "gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>" <gnso-rpm-wg at icann.org<mailto: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> [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<mailto:gnso-rpm-wg at icann.org>
Subject: Re: [gnso-rpm-wg] TMCH review objectives

TMCH's goal of "protection" against what, though?  How does high pricing contribute to trademark infringement?  High pricing may deter purchases of domain names, no doubt, but with what result for the system overall?

Rebecca Tushnet
Georgetown Law
703 593 6759

From: Silver, Bradley [mailto:Bradley.Silver at timewarner.com]
Sent: Friday, September 23, 2016 11:00 AM
To: Rebecca Tushnet; gnso-rpm-wg at icann.org<mailto: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 TMCH's 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> [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<mailto: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 TMCH's effectiveness. The predicate question, then, is: effectiveness at what?  Here are some suggestions for discussion: (1) minimizing the cost of operating the system for all concerned; (2) minimizing the number of actions that ultimately need to be brought against infringing registrants; (3) minimizing the number of noninfringing registrants whose legitimate uses are blocked or deterred.  If the system is reasonably balancing those objectives, I suggest, then it is effective; potential changes should be directly related to improving performance on one or more of these metrics without unduly hampering the others.

Yours,
Rebecca Tushnet

Rebecca Tushnet
Georgetown Law
703 593 6759

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