[gnso-rpm-wg] TMCH Blog

Greg Shatan gregshatanipc at gmail.com
Thu Feb 2 19:24:26 UTC 2017


Agree with everything Lori and J Scott said.

In addition, jacking up fees for the TMCH to keep out gaming would punish
the very entities the TMCH is designed to protect -- trademark owners.
It's not aimed at the "bad actors"; it's completely indiscriminate. The
result would be far fewer TMCH registrations, which is directly counter to
the reason the TMCH was created in the first place.  The primary
beneficiaries would be the cybersquatters, who would have a much easier
time registering without all those pesky claims notices.  This would force
more cases into the UDRP/URS systems, exacting a further pile of cash from
trademark owners.  Meanwhile, we would just end up with a better class of
crook in the gaming end of things.

If we're going to attack "gaming" it's best to attack it at the root -- the
trademark registrations that are being leveraged by the "gamers."  A
challenge system at the TMCH shouldn't be dismissed out of hand, but the
issues of creating another DRP can't be underestimated.

The "Law & Economics" movement has been around for at least 60 years, and
became quite fashionable in the 1980's, with the Chicago School economists
and Judge Posner on the 7th Circuit as thought leaders in the area.  At
some point, the movement spun out of control, promoting the idea that
everything can be analyzed through an economic prism.  Fortunately, the
pendulum has swung back and the application of economic thinking to legal
issues has become much more mature and limited.  However, I think even the
most overheated economic analysis would not support a "solution" that
punished lawful and unlawful actors equally (sort of a "Kill 'em all, and
let God sort 'em out" approach).

On another point, you said:

While some constituencies in the GNSO might be fine with that balance
(i.e. accept every TM, and allow all kinds of abuse of the sunrise
periods), other constituencies might draw the line for that balance

I don't know of any constituency in the GNSO that would be fine with
"allowing all kinds of abuse of the sunrise periods".  What constituencies
were you thinking of, and why?


On Thu, Feb 2, 2017 at 2:06 PM, <trachtenbergm at gtlaw.com> wrote:

> George,
> Thank you for your economics tutorial based on Wikipedia - certainly an
> authoritative source.
> Regardless I don’t think your application of this to the TMCH is
> appropriate and disagree with your description  of how the TMCH functions.
> When trademark holders submit their registrations to the TMCH,  they are
> not trying to prove that their marks are "worthy" of protection.  The fact
> that they have registrations is proof that the marks are not only worthy of
> protection, but that they are in fact protected under the law of the
> issuing jurisdiction.
> 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 at icann.org]
> On Behalf Of George Kirikos
> Sent: Thursday, February 02, 2017 12:58 PM
> To: gnso-rpm-wg
> Subject: Re: [gnso-rpm-wg] TMCH Blog
> To continue the "economics tutorial", this is all directly related to the
> concept of signalling:
> https://urldefense.proofpoint.com/v2/url?u=https-3A__en.
> wikipedia.org_wiki_Signalling-5F-28economics-29&d=DwIGaQ&c=
> 2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzC
> xm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=_-
> ZU3Mu11NJjQnuoQdYhV9epeypY8SYFTzL35TJgjqs&e=
> The classic example comes from the education credentials market. How does
> a job candidate signal that they're a high quality hire? The idea is that
> high quality job candidates can obtain good degrees, and it's much costlier
> for low quality job candidates to get those same credentials.
> Let's apply this to the TMCH -- implicitly, trademark holders are jumping
> through hoops at present to determine that their marks are "worthy" of
> protection. The hoops they're jumping through are:
> 1. pay the TMCH fees, and
> 2. show evidence of national TM registration in a jurisdiction, and 3.
> show proof of use
> However, unlike the academic credentials market above, where "good"
> and "bad" job candidates face different costs, in the TMCH the "good"
> and "bad" trademark holders face essentially the SAME costs! (i.e. the
> fees are the same, one can get a Pakistani TM for under $10, and one can
> throw up a webpage for free to show "proof of use").
> In other words, the mechanisms for signalling are entirely broken in the
> TMCH. Economics 101. The "bad guys" certainly know it's broken. As a
> policymaking body, we should understand *why* it's broken, and either (1)
> make stronger signals to differentiate and distinguish between worthy and
> unworthy marks, or (2) as I suggested earlier, set an explicit direct price
> to change the balance and behaviour directly.
> 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=LGFzEnWv-myJ-
> WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r24YJ9m6g71cr0vEGbww0X9
> qgsNDU&e=
> On Thu, Feb 2, 2017 at 1:36 PM, George Kirikos <icann at leap.com> wrote:
> > Hello,
> >
> > (and trying to combine multiple responses in one email)
> >
> > On Thu, Feb 2, 2017 at 12:51 PM,  <trachtenbergm at gtlaw.com> wrote:
> >> I think you are trying to apply domain speculation thinking where it is
> all about monetary value to protection of trademark rights, which is not
> necessary focused or valued in terms of specific monetary value.  They are
> not the same thing.
> >>
> >> If life isn’t fair is an acceptable justification then why change the
> current system because it is not fair that some may have gamed it by using
> trademark registrations obtained solely for the purpose of registering
> valuable domain names during sunrise?  You can’t have it both ways.
> >
> > 1. The "domain speculation thinking" is your term for what is simply
> > rational economic decision-making. Even for trademark protection,
> > rational trademark holders prioritize enforcement based on a
> > comparison between the economic benefit of stopping the abuse relative
> > to the economic cost of that enforcement.
> >
> > 2. The "life isn't fair" in my statement was referencing the fact that
> > not everyone has the same wealth. That is entirely different from
> > those misusing trademark registrations obtained solely for the purpose
> > of registering valuable domain names -- those TMs would be invalid in
> > jurisdictions requiring use (and thus shouldn't have been granted in
> > the first place).
> >
> > 3. Some folks continue to dance around the issue, and ignore the
> > economics completely. Each and every time you try to add a wrinkle to
> > the procedure (i.e. "tweaks" that seek to give better proof of use, or
> > other modifications), all that does is slightly change the "costs" for
> > some actors, but doesn't change the underlying economics by much. i.e.
> > it attempts to impose a "price" indirectly, rather than explicitly and
> > directly setting a price that would actually change behaviour.
> >
> > 4. For those saying "small" trademark holders would be affected ---
> > fine, change the economics accordingly --- should the quota be 10,000
> > marks? Should the cost be $1? Once you make the cost explicitly be $1,
> > that just says "Fine, we're going to accept all the gaming behaviour,
> > because we're prepared to look the other way!" That's an invitation to
> > those who are misusing the sunrise periods to continue doing what
> > they're doing.
> >
> > While some constituencies in the GNSO might be fine with that balance
> > (i.e. accept every TM, and allow all kinds of abuse of the sunrise
> > periods), other constituencies might draw the line for that balance
> > elsewhere.
> >
> > 5. Let me give you an example -- ACPA allows damages of up to $100,000
> > for cybersquatting. That's an explicit cost on cybersquatters that
> > they take into account, and has a deterrent effect. What if that limit
> > instead was $500? Behaviour would obviously change accordingly,
> > because cybersquatters are rational.
> >
> > 6. A further example -- it costs $1000+ to file a UDRP (on top of
> > legal costs, so a number like $5000 might be more relevant for those
> > who use lawyers). If the total costs were $300, there would be a lot
> > more filings (which would reduce the benefits of cybersquatting, and
> > thus change the economics of abuse).
> >
> > In conclusion, the economics of all the actors are paramount, and seem
> > to be mostly ignored. By focusing on those economics directly, as
> > policymakers we can precision-target the policies to directly target
> > those behaviours, and reduce all the "collateral damage" on the
> > innocent actors.
> >
> > Sincerely,
> >
> > George Kirikos
> > 416-588-0269
> > https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=Dw
> > IGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBz
> > Cxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r2
> > 4YJ9m6g71cr0vEGbww0X9qgsNDU&e=
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