[gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today

Thu Apr 13 17:48:43 UTC 2017

Georges,

Sorry but I have read them very carefully.  All I have seen are assertions
but never evidence.  And, as noted by Mr. Kirkos, the evidence of
contractual restriction is directly contradicted by the language of their
own TOS.  

 I include the following which was just published by Mary at ICANN.  Please
let me know where this supports a conclusion that this WG – tasked as we are
tasked – are prohibited from seeing a list of the actual trademarks in the
TMCH together with their respective basis for registration.

Regards,

From:  Georges Nahitchevansky <ghn at kilpatricktownsend.com>
Date:  Thursday, April 13, 2017 at 7:26 PM
To:  Paul Keating <paul at law.es>
Cc:  "J. Scott Evans" <jsevans at adobe.com>, Bret Fausett
<bret at uniregistry.com>, "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
Subject:  RE: [gnso-rpm-wg] Action Items, Slides and Notes from the Working
Group call held earlier today

> Paul:
> 
> 
> With all due respect, you are just wrong on that point.  I and others have
> responded to the alleged “evidence.”  Go back and read all of the prior
> emails.  What evidence exists is that at most a speculator gamed the system
> with some filings, but not any evidence of widespread or systematic abuse of
> the TMCH by brand owners.  I guess it’s like the old political trick that if
> you repeat something that’s not true enough times, then folks will ultimately
> assume such is a fact.  Now we can go over all of this yet again, but I think
> that this is not productive.  If anything has been discredited, it is the
> insistence by you and others that there is a grand pattern of abuse by
> trademark owners.  Many have suggested that we focus on a fix/tweek to the
> system to address the speculator issue and the remedy of sunrise challenges.
> I support such, but going on a fishing expedition with you on flimsy evidence
> is something that neither I nor others are willing to do.
>  
> 
> From: Paul Keating [mailto:paul at law.es]
> Sent: Thursday, April 13, 2017 1:11 PM
> To: Nahitchevansky, Georges
> Cc: J. Scott Evans; Bret Fausett; gnso-rpm-wg at icann.org
> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working
> Group call held earlier today
>  
> 
> You keep referencing prior articulations.
> 
>  
> 
> "(for the reasons that have already been articulated extensively over the past
> several days)"
> 
>  
> 
> I hae not seen anything but assertions that have been completely discredited
> by the actual evidence.  Care to articulate?
> 
> 
> Sent from my iPad
> 
> 
> On 13 Apr 2017, at 18:23, Nahitchevansky, Georges <ghn at kilpatricktownsend.com>
> wrote:
>> 
>> I likewise agree.  If the goal is to give the aggrieved party a bona fide
>> remedy, then there should be no issue.  The alleged abuse could be challenged
>> just like tm owners can challenge alleged bogus and infringing domain names
>> (as J.S has said).  I would support such a fix in the system.  But beyond
>> that I see no need of opening the TMCH database (for the reasons that have
>> already been articulated extensively over the past several days)
>> 
>>  
>>  
>> From:gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On
>> Behalf Of J. Scott Evans via gnso-rpm-wg
>> Sent: Thursday, April 13, 2017 12:08 PM
>> To: Bret Fausett; gnso-rpm-wg at icann.org
>> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working
>> Group call held earlier today
>>  
>> Agreed. Obtaining the domain is the goal and the system should be designed to
>> allow an aggrieved party to achieve that goal.
>>  
>>  
>> <image001.gif>
>> J. Scott Evans408.536.5336 (tel)345 Park Avenue, Mail Stop W11-544
>> Director, Associate General Counsel408.709.6162 (cell)San Jose, CA, 95110,
>> USA
>> Adobe. Make It an Experience.jsevans at adobe.comwww.adobe.com
>> <http://www.adobe.com>
>>  
>>  
>>  
>>  
>> 
>> From: <gnso-rpm-wg-bounces at icann.org> on behalf of Bret Fausett
>> <bret at uniregistry.com>
>> Date: Thursday, April 13, 2017 at 9:05 AM
>> To: "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
>> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working
>> Group call held earlier today
>> 
>>  
>> 
>> You’ll get no quarrel from me on imposing a cost. There are real costs
>> involved for the companies that are required to review and adjudicate these
>> disputes, so those costs should be reimbursed. I think challengers would be
>> fine with the costs if the rewards were adjusted to ensure they had a better
>> outcome (the domain in question). If they don’t get the domain at the end of
>> the process, we are just counting on them to be working for the public good.
>> 
>>  
>> 
>>        Bret
>> 
>>  
>>  
>>> 
>>> On Apr 13, 2017, at 9:00 AM, J. Scott Evans <jsevans at adobe.com> wrote:
>>>  
>>> 
>>> First, if a person challenges a Sunrise Registration at the registry and
>>> wins, they should be awarded the domain name. Why is it the cost of
>>> obtaining a domain name from a bad-faith Sunrise registrant gets everyone up
>>> in arms, but the enormous cost of preventing fraud and consumer confusion
>>> borne by trademark owners is seen as “just the cost of doing business in the
>>> online world”? I am all for finding cost-effective mechanism for a good
>>> faith registrant to obtain a domain name the was improperly registered under
>>> Sunrise, but there is going to be a cost.
>>> 
>>>  
>>> 
>>> J. Scott
>>> 
>>>  
>>> 
>>>  
>>> <image001.gif>
>>> J. Scott Evans408.536.5336 (tel)345 Park Avenue, Mail Stop W11-544
>>> Director, Associate General Counsel408.709.6162 (cell)San Jose, CA, 95110,
>>> USA
>>> Adobe. Make It an Experience.jsevans at adobe.com <mailto:jsevans at adobe.com>
>>> www.adobe.com <http://www.adobe.com/>
>>>  
>>> 
>>>  
>>> 
>>>  
>>> 
>>>  
>>> 
>>> From: <gnso-rpm-wg-bounces at icann.org> on behalf of Bret Fausett
>>> <bret at uniregistry.com>
>>> Date: Thursday, April 13, 2017 at 8:55 AM
>>> To: "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
>>> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working
>>> Group call held earlier today
>>> 
>>>  
>>>> 
>>>> to the extent there are issues with the bona fides of individual
>>>> registrations, the underlying trademark registration, and its recordal in
>>>> the TMCH (www.trademark‑clearinghouse.com/dispute
>>>> <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fclearingho
>>>> use.com%2Fdispute&data=02%7C01%7C%7Cd34c513ef31a415c792b08d482858b3f%7Cfa7b
>>>> 1b5a7b34438794aed2c178decee1%7C0%7C0%7C636276957460088884&sdata=XBslWFTeBK1
>>>> aE23jA09owCwmDa7iiVCRfvuev0%2FVVhU%3D&reserved=0> ) are already subject to
>>>> challenge.  Would you be able to help this group understand why you view
>>>> these as insufficient measures?
>>> 
>>>  
>>> 
>>> I think any challenge mechanism that relies on good samaritans for
>>> enforcement is insufficient.
>>> 
>>>  
>>> 
>>> If I am pre-empted in my registration of “internet.TLD” or “online.TLD,”
>>> because someone had registered them in sunrise with “marks” that should not
>>> have been approved, my options at that point are to file a TMCH dispute,
>>> which costs at least $200 and will last for at least a month. At the end of
>>> that process, even if I am right, the trademark is marked as invalid, but I
>>> don’t get the domain name that I was blocked from registering.
>>> 
>>>  
>>> 
>>> If I want to file a sunrise challenge with the registry, depending on the
>>> registry’s policy, I may be awarded the domain name, but I am not guaranteed
>>> to be awarded the domain name. Those processes also take time and money.
>>> 
>>>  
>>> 
>>> So it really takes a determined individual or company, with time and money,
>>> to pursue these challenges.
>>> 
>>>  
>>> 
>>> If I were adjusting these processes for Round 2, I would give the
>>> complainant a presumptive right to register the challenged domains if and
>>> after the TMCH registration was deemed invalid. That would provide better
>>> motivation to pursue the existing remedies.
>>> 
>>>  
>>> 
>>>       - Bret
>>> 
>>>  
>>> 
>>>  
>>>  
>>>  
>>> 
>>> 
>>> 
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>>>> 
>>>> _______________________________________________
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>>>> gnso-rpm-wg at icann.org
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>> 

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