[gnso-rpm-wg] TMCH Blog

Lori Schulman lschulman at inta.org
Thu Feb 2 19:46:20 UTC 2017


Good points.


Lori S. Schulman
Senior Director, Internet Policy
International Trademark Association (INTA)
+1-202-704-0408, Skype: lsschulman

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From: Phil Corwin [mailto:psc at vlaw-dc.com]
Sent: Thursday, February 02, 2017 2:24 PM
To: Lori Schulman <lschulman at inta.org>; George Kirikos <icann at leap.com>; gnso-rpm-wg <gnso-rpm-wg at icann.org>
Subject: RE: [gnso-rpm-wg] TMCH Blog

All that follows is personal and not in my role as a co-chair:

Let me say that I am a member of INTA’s Internet Committee who has contributed quite a lot to its work since being honored with a request to join it three years ago.

That said, I cannot fully agree with statement that “domain names are licensed assets with no inherent vested rights” to the extent that domain registrants do have rights and those rights are often found in trademark law. For example, the US Anticybersquatting Consumer Protection Act has been successfully used by domain registrants to appeal erroneous UDRP decisions and maintain their ownership of valuable domains while reversing an initial finding of cybersquatting.

My view is that trademarks and domains both constitute different classes of valuable intangible assets. The difference is that trademarks have the advantage of being recognized in commercial law for a long period of years, while domains have only been used commercially for two decades and hence their legal framework is far less developed.

So far as lower erring the cost of the UDRP, that can certainly be looked at in phase 2 of the WG’s efforts when we reach the UDRP but I am doubtful that we can get below the $1500 threshold that seems to be the low bar to cover DRP administrative costs and the time of a single expert panelist. The URS sets a lower bar of around $500 because it is restricted to black-and-white, slam dunk cases of blatantly obvious infringement and the WG will be considering whether to recommend if it should become Consensus Policy and thereby available at legacy gTLDs.

Both the UDRP and URS baseline costs are far below those of TM litigation and I can’t imagine the WG recommending that TM owners should be forced into court. But I am dubious that it’s feasible to lower UDRP costs and still have an RPM that is credible in its administration and results concerning shades of grey cases.

Best to all

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 Lori Schulman
Sent: Thursday, February 02, 2017 1:53 PM
To: George Kirikos; gnso-rpm-wg
Subject: Re: [gnso-rpm-wg] TMCH Blog

Recognition of the importance of protecting trademark rights in the DNS has been essential to ICANN’s policymaking since before ICANN was organized.   Per J Scott’s note, trademark rights are government granted rights.  Domain names are not.  While some domain names can function as trademarks in the legal sense of the word, domain names are licensed assets with no inherent vested rights.  This makes them fundamentally different than trademarks.  The difference creates the tensions that we see when discussing how trademark rights should be addressed/recognized within the domain system.  The UDRP/URS were designed to keep costs down for both sides of a domain dispute as the administrative process contemplated is much less expensive and onerous than a court driven process.  Having managed very large and very small portfolios of trademarks and domains throughout my career, I can tell you that this is empirically true no matter the size of the business either as a plaintiff or defendant in a dispute.    Forcing trademark owners into court will force domain registrants there too and in much higher number than we see today.   The UDRP is a reasonable alternative to what would otherwise be an endless stream of lawsuits overloading already burdened court systems.  The use issue forms the fundamental core of trademark protection and different jurisdictions have different standards for when use must be demonstrated and what qualifies as good use.  This requires deep expertise and knowledge of trademark law.  If we were to create some kind of  use test in the TMCH beyond what is already there, costs would significantly increase as you would need essentially a trademark office-like system for review and dispute resolution.  In terms of gaming the system, so far, I have seen much more gaming by investors than I have seen by brands…as brands have been targeted by the investors in very well publicized instances.

In terms of your math, George, I would be absolutely be in favor of lowering the costs of a UDRP as it would lower barriers of entry for small businesses and noncommercial organization who are continually victimized by cyber squatters.

Lori S. Schulman
Senior Director, Internet Policy
International Trademark Association (INTA)
+1-202-704-0408, Skype: lsschulman

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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 George Kirikos
Sent: Thursday, February 02, 2017 1:36 PM
To: gnso-rpm-wg <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
Subject: Re: [gnso-rpm-wg] TMCH Blog


(and trying to combine multiple responses in one email)

On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm at gtlaw.com><mailto:trachtenbergm at gtlaw.com%3e> 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

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.


George Kirikos
gnso-rpm-wg mailing list
gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
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