[gnso-rpm-wg] TMCH Blog

[J. Scott Evans]

George:

I disagree with your conclusion about Brian¹s comment. But, let¹s assume
you are correct. It is trademark-centric because the TMCH is a tool to
assist trademark owners, so by design the TMCH is trademark-centric. As to
the superiority of trademarks, I think the terms ³superiority² is
emotionally charged and used to illicit a knee-jerk reaction from certain
factions within the Internet stakeholder community. In reality, trademarks
are terms (in this case b/c word marks are all that is eligible for
registration in the TMCH) that a sovereign government (in many cases
several sovereign governments) have granted certain protections because
the owner of the trademark has successfully fulfilled whatever
requirements the issuing government has put in place. They aren¹t
necessarily ³superior² but that are not ³on par² with domain names. They
are different and should be treated differently in line with established
laws and international treaties.

J. Scott

J. Scott Evans | Associate General Counsel - Trademarks, Copyright,
Domains & Marketing |
Adobe 
345 Park Avenue
San Jose, CA 95110
408.536.5336 (tel), 408.709.6162 (cell)
jsevans at adobe.com
www.adobe.com








On 2/2/17, 9:58 AM, "George Kirikos" <icann at leap.com> wrote:

>Hi Brian,
>
>"I agree with the points raised by J. Scott and others: the TMCH is
>not the place to challenge underlying trademark registrations.  The
>appropriate recourse is to challenge the registration at the
>appropriate national or regional trademark office."
>
>That's a very TM-centric view of things, which assumes that TMs are
>inherently "superior" to domain name rights.
>
>Put yourself in the shoes of the "other side". By your "logic", for
>those who say that domain name rights are "superior", there should be
>no TMCH at all. Instead, the "appropriate recourse" to a domain name
>dispute is for the TM holder to challenge the domain name registration
>in the appropriate national courts.
>
>In other words, there's a double-standard. Domain name registrants are
>subject to excess scrutiny (i.e. there's no assumption of good faith
>for them, whereas TMs are always assumed to be "valid", subject to an
>appropriate challenge in a national court or by whoever granted that
>national TM right).
>
>If one follows that "logic" to its natural progression, it argues for
>the elimination of the UDRP/URS/TMCH/etc., and let only the national
>courts decide everything.
>
>Sincerely,
>
>George Kirikos
>416-588-0269
>http://www.leap.com/