[gnso-rpm-wg] TMCH Blog

Thu Feb 2 17:54:04 UTC 2017

Owners of valid trademarks come in all sizes, and they can't be shut out of
the system.  We should not disadvantage smaller companies, or companies
from developing nations where the value of a dollar or euro is vastly
different than in highly developed economies.  This seems more like another
attempt to relieve trademark owners of their money, in larger and larger
piles.  Rather than being elegant, it's rather brutal.  Deterring
cybersquatting has a value both to the companies and a larger social value,
and should be encouraged.

It's simply incorrect to say that only the biggest companies have a real
problem with cybersquatting.  I have had a number of smaller clients (some
very small) with cybersquatting problems, some of which were linked to
phishing, spearphishing, attempted theft, etc.

Pricing should go in the other direction (down), regardless of whether it
is used for sunrise purposes or only for claims.  The TMCH needs to promote
inclusion, not exclusion, of brandowners of all sizes.

Greg

On Thu, Feb 2, 2017 at 12:45 PM, George Kirikos <icann at leap.com> wrote:

> Marc: That's the elegance of the "market" mechanism --- no one has to
> agree to some "valuation" of the trademarks --- by setting an explicit
> price to the sunrise privilege (i.e. instead of that privilege costing
> merely $300 or whatever the TMCH fees are, it would be much higher),
> be design only the high value trademark owners would be prepared to
> pay that price, to deter cybersquatting.
>
> One can't protect all trademarks from cybersquatting, nor can one
> protect all domain names during sunrise from being misappropriated or
> misallocated through misuse of marginal trademarks. By setting an
> appropriate price, a better balance is achieved than exists now.
>
> "I don’t think your proposed auction system would be fair or practical
> for that matter and would create a system where only the biggest
> companies could protect their trademark rights in new gTLDS through
> the RPMs."
>
> Life isn't "fair" -- some folks are wealthier than others. That will
> always be the case, in a capitalist society.
>
> Furthermore, it's only the "biggest companies" that have a real
> problem with cybersquatting, in terms of economic costs. If 90% of the
> abuse happens with a relatively small proportion of markholders, the
> system should be targeted to where that abuse is actually happening,
> and filter it by the economic size (through an explicit price).
>
> Where ICANN has it wrong at present is trying to design a "one size
> fits all" solution --- that left it wide open for gaming, where the
> marginal trademark registrations are being abused.
>
> Sincerely,
>
> George Kirikos
> 416-588-0269
> http://www.leap.com/
>
>
>
> On Thu, Feb 2, 2017 at 12:31 PM,  <trachtenbergm at gtlaw.com> wrote:
> > George,
> >
> > First of all, the article only discusses US trademark law.  Trademark
> law is different in every country and in many countries use is not
> required, at least for registration.
> >
> > With respect to you argument for setting a value on the trademark, how
> could anyone ever agree on the value of a mark, especially as the value
> might be different in different countries since trademark rights are
> territorial.  I don’t think your proposed auction system would be fair or
> practical for that matter and would create a system where only the biggest
> companies could protect their trademark rights in new gTLDS through the
> RPMs.
> >
> >  Best regards,
> >
> > Marc H. Trachtenberg
> > Shareholder
> > Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL
> 60601
> > Tel 312.456.1020
> > Mobile 773.677.3305
> > trachtenbergm at gtlaw.com | www.gtlaw.com
> >
> >
> >
> >
> >
> > -----Original Message-----
> > From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces@
> icann.org] On Behalf Of George Kirikos
> > Sent: Thursday, February 02, 2017 11:24 AM
> > To: gnso-rpm-wg
> > Subject: Re: [gnso-rpm-wg] TMCH Blog
> >
> > I think I might have posted a link to this article before, but it makes
> sense to post it again:
> >
> > https://urldefense.proofpoint.com/v2/url?u=http-3A__www.fr.
> com_news_dont-2Dbe-2Dconfused-2Dabout-2Dwhether-2Dyour-
> 2Dtrademark-2Dis-2Dused_&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-
> UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=4PK5UuYljzArBjy5tIDLovRAhINmtm
> r4XXMj97J-0WQ&s=hdnKxcys8EdogaH3c0lDkr6q5WqxtKOnSwHCT8dqeek&e=
> >
> > regarding bona fide use vs. "de minimis" uses. As the article correctly
> states "Plainly, mere token use made solely to reserve a right in a mark
> can no longer meet the statutory definition."
> >
> > If one thinks about the economics, suppose a TM has a value of $X, and
> the value of a sunrise registration of a domain name has a value of $Y. The
> "gaming" we are seeing, in this framework, happens when very marginal
> trademarks (i.e. X is close to zero) are used to obtain domain names in
> sunrise periods, where Y is (much) greater than X.
> >
> > Indeed, the trademark registrations exist not for protection of commerce
> in an ordinary trade, but instead solely for the purpose of obtaining the
> more valuable domain names.
> >
> > The only way to remove these incentives to game the system is to set the
> bar high enough so that only marks with "high" values of X are allowed to
> participate in the sunrise periods (low values of X could still participate
> in other aspects of the TMCH, e.g. getting notification of domains that
> match those marks, etc.).
> >
> > How do we know which marks have "high" values of X? We can see "obvious"
> ones like Apple, Google, Microsoft, Lego, Verizon, Yahoo, Adobe, Disney,
> etc., but where does one draw the line between them and the marginal marks,
> etc.? Economics tells us there is one way --- set a price, or have the
> market set that price.
> >
> > If one sets the price high enough (say $50,000+), that wouldn't deter
> the "superbrands" like those mentioned above, but it would price out the
> marginal ones. Of course, every owner of a "marginal" brand likes to think
> of their own mark as a "superbrand" in their eyes (i.e. some in the IP
> community cling to the mantra of "a trademark is a trademark is a
> trademark", as if their marks are as strong or as valuable as the
> superbrands above).
> >
> > The other option is to have the market set a price, via some auction
> mechanism. In order to protect the brands most subject to cybersquatting,
> sunrise "privileges" were granted by ICANN (although these privileges do
> NOT exist in trademark law, requiring first dibs, etc.; TM law provides
> curative measures, not prior restraint). A quota can be set, perhaps 500 or
> 1000 marks in total that are protected with sunrise privileges (in line
> with the typical number of sunrise registrations we've observed). The TMCH
> (or ICANN) could then auction off those slots. Companies that experience a
> lot of cybersquatting (and would want sunrise protection, to reduce future
> UDRP/URS or other legal costs) and that have a high value of X would bid
> high enough to obtain that privilege. Companies that don't experience a lot
> of cybersquatting wouldn't value that sunrise privilege, and thus wouldn't
> bid (or would bid a lower amount).
> >
> > Importantly, marginal TM holders (low values of X) that game the
> existing system would be priced out under either of the options above
> > --- the economics of their behaviour have been ruined.
> >
> > In conclusion, one really needs to think about the economics, and using
> the market mechanism to drive out the unwanted behaviour. Bad actors are
> usually rational, and are driven by economics. It's time that policy
> designers (us!) take these economics explicitly into account.
> >
> > Sincerely,
> >
> > George Kirikos
> > 416-588-0269
> > https://urldefense.proofpoint.com/v2/url?u=http-3A__www.
> leap.com_&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-
> UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=4PK5UuYljzArBjy5tIDLovRAhINmtm
> r4XXMj97J-0WQ&s=vtt5wji_N4uRw7Cx_7ARATR_dMaQYhTAGMHfczMY7gE&e=
> >
> >
> >
> >
> >
> >
> > On Thu, Feb 2, 2017 at 11:21 AM, Scott Austin <SAustin at vlplawgroup.com>
> wrote:
> >> +1. As if recent events involving Pakistan based filings were not
> >> +enough to
> >> signal a need for reform.
> >> Scott
> >>
> >>
> >> -------- Original Message --------
> >> From: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg at icann.org>
> >> Date: Thu, Feb 2, 2017, 11:10 AM
> >> To: Jonathan Frost <jonathan at get.club>
> >> CC: gnso-rpm-wg <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> wrote:
> >>
> >> These TMCH gaming issues have been well documented all the way back to
> >> 2014
> >> .https://urldefense.proofpoint.com/v2/url?u=http-3A__domainnamewire.co
> >> m_2014_02_10_how-2Dcommon-2Dwords-2Dlike-2Dpizza-2Dmoney-2Dand-2Dshopp
> >> ing-2Dended-2Dup-2Din-2Dthe-2Dtrademark-2Dclearinghouse-2Dfor-2Dnew-2D
> >> tlds_&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt
> >> 7T1dG3NjBzCxm1c&m=4PK5UuYljzArBjy5tIDLovRAhINmtmr4XXMj97J-0WQ&s=gUS0Y1
> >> qs0uQa-4UaqMZLVNrNDRB6CRaIHhnqaWFqBBA&e=
> >>
> >>
> >>
> >> 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
> >>
> >> Website: www.get.club
> >>
> >> <image002.jpg>
> >>
> >>
> >>
> >> 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 and delete the original message.
> >>
> >>
> >>
> >> From: 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>; gnso-rpm-wg <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
> >>
> >> 202-559-8597/Direct
> >>
> >> 202-559-8750/Fax
> >>
> >> 202-255-6172/Cell
> >>
> >>
> >>
> >> 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]
> >> 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:
> >>
> >>
> >>
> >> https://urldefense.proofpoint.com/v2/url?u=https-3A__www.thedomains.co
> >> m_2017_02_01_the-2Dtrademark-2Dclearinghouse-2Dworked-2Dso-2Dwell-2Don
> >> e-2Dcompany-2Dgot-2D24-2Dnew-2Dgtld-2Dusing-2Dthe-2Dfamous-2Dtrademark
> >> -2Dthe_&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrK
> >> Xt7T1dG3NjBzCxm1c&m=4PK5UuYljzArBjy5tIDLovRAhINmtmr4XXMj97J-0WQ&s=vS2e
> >> lEVmYi7ll3ryRYD15NBBzmsoyn2kruUg-iqKUPU&e=
> >>
> >>
> >>
> >> The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD
> >> using The Famous Trademark “The”
> >>
> >> February 1, 2017 by Michael Berkens 5 Comments
> >>
> >> The Trademark ClearingHouse (TMCH) 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.
> >>
> >> The world-famous trademark for the word “the” was obtained by
> >> Goallover Limited of London who according to 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
> >>
> >> For all Trademark Holders its nice to know the world is a safer place:
> >>
> >> the.car
> >> the.career
> >> the.cars
> >> the.casino
> >> the.doctor
> >> the.earth
> >> the.foundation
> >> the.furniture
> >> the.game
> >> the.group
> >> the.ltd
> >> the.mba
> >> the.pub
> >> the.report
> >> the.run
> >> the.school
> >> the.services
> >> the.storage
> >> the.tools
> >> the.university
> >> the.watch
> >> the.wine
> >>
> >>
> >>
> >> ________________________________
> >>
> >> No virus found in this message.
> >> Checked by AVG - www.avg.com
> >> Version: 2016.0.7998 / Virus Database: 4749/13855 - Release Date:
> >> 01/28/17
> >>
> >> _______________________________________________
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