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

Fri Apr 14 17:47:48 UTC 2017

+1 Marina's explanation.

More importantly, I think we need to revisit what exactly is meant by "gaming".  For example: Registering a TMCH registered and use-established trademark in a new Registry during the Sunrise Period is not "gaming" the TMCH/RPM system even if the trademark is not registered or used by its owner for goods/services related to or described by the New gTLD.

NOTE: I am not defending other types of "gaming" that may occur, such as registration of trademarks with the sole purpose of TMCH registration for Sunrise periods.

Michael R. Graham

From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Marina Lewis
Sent: Friday, April 14, 2017 10:24 AM
To: Jeremy Malcolm <jmalcolm at eff.org>; gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH

Jeremy,

Except that real life doesn't pan out like that.  In my experience as a trademark practitioner, my clients are not interested in gobbling up domain names for registration's sake - and absorbing the administrative and financial headaches that this entails.  Rather, most brand owners are primarily concerned with stopping the registration of domains names that genuinely cause confusion with consumers, or which pose a potential threat to consumer and public safety (e.g., phishing, malware, etc.).  A domain name registration along the lines you suggest below simply does not reflect that business reality.

That said, I am not so naïve to suppose that this never happens by a trademark owner acting in bad faith, but I am not aware of any evidence to suggest this is the norm.  Moreover, the greater threat are the instances where domain investors/resellers/scalpers (choose your preferred terminology) register domain names which they have no bona fide interest in using, apart from reselling it at a profit to a party interested in using it for legitimate purposes - aka, a brand owner.  This is exactly the type of "abuse" the TMCH was designed to prevent.

Marina

-----Original Message-----
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 Jeremy Malcolm
Sent: Friday, April 14, 2017 10:12 AM
To: gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: Re: [gnso-rpm-wg] A Brave New World Without Sunrises or the TMCH

On 13/4/17 8:47 pm, Greg Shatan wrote:

> 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.

So there's nothing wrong with a company that has a trademark for computers sunrise registering that trademark in a gTLD that relates to fruit on the strength of its computer trademark, locking out those who would actually use that domain name to sell fruit?  Sounds like abuse to me.

--

Jeremy Malcolm

Senior Global Policy Analyst

Electronic Frontier Foundation

https://eff.org

jmalcolm at eff.org<mailto:jmalcolm at eff.org>

Tel: 415.436.9333 ext 161

:: Defending Your Rights in the Digital World ::

Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt

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