[gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH

Greg Shatan gregshatanipc at gmail.com
Thu Apr 13 23:19:37 UTC 2017


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 at gmail.com


On Thu, Apr 13, 2017 at 6:51 PM, J. Scott Evans via gnso-rpm-wg <
gnso-rpm-wg at 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 at adobe.com
> www.adobe.com
>
>
>
>
> On 4/13/17, 3:30 PM, "gnso-rpm-wg-bounces at icann.org on behalf of Paul
> Keating" <gnso-rpm-wg-bounces at icann.org on behalf of paul at 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 at 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 at 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
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>     >
>     > 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).
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