[gnso-rpm-wg] TMCH Blog

J. Scott Evans jsevans at adobe.com
Thu Feb 2 17:41:54 UTC 2017


J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing |


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San Jose, CA 95110
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From: "Beckham, Brian" <brian.beckham at wipo.int<mailto:brian.beckham at wipo.int>>
Date: Thursday, February 2, 2017 at 9:38 AM
To: "Reuter, Renee M" <Renee.M.Reuter at ehi.com<mailto:Renee.M.Reuter at ehi.com>>, Scott Austin <SAustin at vlplawgroup.com<mailto:SAustin at vlplawgroup.com>>, "J. Scott Evans" <jsevans at adobe.com<mailto:jsevans at adobe.com>>, Jonathan Frost <jonathan at get.club<mailto:jonathan at get.club>>
Cc: gnso-rpm-wg <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
Subject: RE: [gnso-rpm-wg] TMCH Blog

Further to my comment on the call yesterday, and noting the below and Marc’s comment about the impossibility of preventing gaming altogether, it may be worth recalling that the gaming being flagged here is that of a sunrise being undertaken in the name of domain registration speculation purposes.

This should not be mistaken for the scenario whereby a trademark owner obtains, for a premium fee, a sunrise registration for defensive, i.e., unwanted (though the same holds even if it would be for a “positive” use) purposes, which is simply part of the compromise agreed by the ICANN community during the new gTLD policy development process.

It is perfectly legitimate for this Working Group to consider/seek to address the former scenario – which seems to be occasioned by the speculative domain name market – but again, trademark owners with legitimately obtained registrations should not be penalized in the process (never mind the fact of having to already pay for a TMCH entry, sunrise registration, and ongoing defensive registration).



Brian Beckham|Head, Internet Dispute Resolution Section|WIPO Arbitration and Mediation Center
34 chemin des Colombettes, 1211 Geneva 20, Switzerland|T +4122 338 8247|E brian.beckham at wipo.int<mailto:brian.beckham at wipo.int>|www.wipo.int<http://www.wipo.int/>

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 Reuter, Renee M
Sent: Thursday, February 02, 2017 6:15 PM
To: Scott Austin; J. Scott Evans; Jonathan Frost
Cc: gnso-rpm-wg
Subject: Re: [gnso-rpm-wg] TMCH Blog

The challenge mechanism is a cancellation action filed in the registration office where the mark is registered.

If one were blocked by a registration on the TMCH, wouldn’t they just challenge the registration in the applicable national trademark registration office and then once the registration is cancelled, provide proof of the cancellation to the TMCH?

I thought we were trying to avoid having the TMCH make trademark validity decisions.


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 Scott Austin
Sent: Thursday, February 02, 2017 10:22 AM
To: J. Scott Evans; Jonathan Frost
Cc: gnso-rpm-wg
Subject: Re: [gnso-rpm-wg] TMCH Blog

+1. As if recent events involving Pakistan based filings were not enough to signal a need for reform.

-------- Original Message --------
From: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
Date: Thu, Feb 2, 2017, 11:10 AM
To: Jonathan Frost <jonathan at get.club<mailto:jonathan at get.club>>
CC: gnso-rpm-wg <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
Subject: Re: [gnso-rpm-wg] TMCH Blog
In most jurisdictions in the world you can obtain a valid and enforceable trademark registration with no demonstration of use. If the system is being abused, then we need to put the n fail safes. We could have a challenge mechanism. In the US, which requires "use", token (fake use) is not deemed sufficient.

Sent from my iPhone

On Feb 2, 2017, at 8:03 AM, Jonathan Frost <jonathan at get.club<mailto:jonathan at get.club>> wrote:
These TMCH gaming issues have been well documented all the way back to 2014 .http://domainnamewire.com/2014/02/10/how-common-words-like-pizza-money-and-shopping-ended-up-in-the-trademark-clearinghouse-for-new-tlds/

Gaming the TMCH is as easy as starting an ecommerce store on a template and selling various products like t-shirts and pens with the arbitrary use of a common/valuable term (e.g.. pizza pen shop). This allows registration of the trademark for the term in any number of jurisdictions and subsequent registration in the TMCH.

Jonathan Frost
General Counsel
Telephone: (+1)877-707-5752
100 SE 3rd Avenue, #1310
Fort Lauderdale, FL 33394
E-Mail: jonathan at get.club<mailto:jonathan at get.club>
Website: www.get.club<http://www.get.club/>

Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential.  If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited.  If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at jonathan at get.club<mailto:jonathan at get.club> and delete the 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 Phil Corwin
Sent: Thursday, February 2, 2017 9:13 AM
To: Jon Nevett <jon at donuts.email<mailto:jon at donuts.email>>; gnso-rpm-wg <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
Subject: Re: [gnso-rpm-wg] TMCH Blog

I’m tempted to say that is one of *** craziest things I’ve ever seen, but if I use *** word *** I might be cited for infringement or have to pay a licensing fee ;-)

Seriously, it would be interesting to know in what jurisdiction the trademark was granted in and whether they professed to demonstrate use in commerce.

Also seems to be an example of a situation where everyone in general but no one in particular has an incentive to challenge the acceptance of the mark by the TMCH.

Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004

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 Jon Nevett
Sent: Thursday, February 02, 2017 8:55 AM
To: gnso-rpm-wg
Subject: [gnso-rpm-wg] TMCH Blog

FYI -- for those who haven't seen this blog:


The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The”

February 1, 2017 by Michael Berkens<https://www.thedomains.com/author/michael-berkens/> 5 Comments<https://www.thedomains.com/2017/02/01/the-trademark-clearinghouse-worked-so-well-one-company-got-24-new-gtld-using-the-famous-trademark-the/#comments>
The Trademark ClearingHouse (TMCH)<http://www.trademark-clearinghouse.com/> which was set up/ contracted by ICANN to protect those famous worldwide brand names from abuse by those nasty domain name squatters resulted in a whole new industry.
Those playing the TMCH for their own benefit to get first jump at new gTLD domain names to get registered in Sunrise ahead of all other under common words like “the”
Actually there maybe no better example than those domain names obtained on the world-famous trademarks as of the word”the”,  which is the most used word in the English language<https://en.wikipedia.org/wiki/Most_common_words_in_English>.
The world-famous trademark for the word “the” was obtained by Goallover Limited of London who according to DomainTools.com<http://DomainTools.com> owns an amazing amount of domain names approaching nearly 100, but was able to get all of the following new gTLD’s using their globally well-known trademark on the word “the” under the ICANN trademark clearinghouse rules which  allows them to obtain the domain names ahead of all other applicants.
Of course the company could have had obtained even more “the” new gTLD domain names in Sunrise but apparently did not apply for more.
Somehow the company doesn’t appear to own the domain name The.Com<http://The.Com>
For all Trademark Holders its nice to know the world is a safer place:

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