[gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH
Greg Shatan
gregshatanipc at gmail.com
Fri Apr 14 03:47:37 UTC 2017
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 at gmail.com
On Thu, Apr 13, 2017 at 7:34 PM, J. Scott Evans <jsevans at 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 at adobe.com
>
> www.adobe.com
>
>
>
>
>
>
>
>
>
> *From: *Greg Shatan <gregshatanipc at gmail.com>
> *Date: *Thursday, April 13, 2017 at 4:19 PM
> *To: *J Scott Evans <jsevans at adobe.com>
> *Cc: *Paul Keating <paul at law.es>, George Kirikos <icann at leap.com>, "
> gnso-rpm-wg at icann.org" <gnso-rpm-wg at 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 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 <(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 at 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 at 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 at 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>
>
>
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20170413/ffa16ce7/attachment-0001.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.gif
Type: image/gif
Size: 1576 bytes
Desc: not available
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20170413/ffa16ce7/image001-0001.gif>
More information about the gnso-rpm-wg
mailing list