[gnso-rpm-wg] TMCH Blog

Fri Feb 3 01:41:57 UTC 2017

My apologies --- the 97% statistic is on page 2 of the Powerpoint, not page
3.

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/

On Thu, Feb 2, 2017 at 8:34 PM, George Kirikos <icann at leap.com> wrote:

> Hi folks,
>
> Greg wrote " If you go to the USPTO Pilot Project report itself, you will
> see that* 84%* of the 500 registrations in the pilot stayed on the
> trademark register, while 16% failed to respond and were cancelled..  In
> other words, all of those who actually responded were able to maintain
> their trademark registrations, although some had to delete some goods
> and/or services from their registrations due to non-use of those particular
> goods and/or services."
>
> That "in other words" part is actually not correct. It might not be
> evident from the language in that report, but if you dig deeper and go to
> the earlier roundtable at:
>
> https://www.uspto.gov/trademark/trademark-updates-and-announcements/uspto-
> roundtable-ensuring-accuracy-and-integrity
>
> and download the Powerpoint report, on page 3 it states that "97% (486) of
> registrations completed the pilot." So, it's not correct to say that only
> those who didn't respond had their marks cancelled.
>
> The precise language of the report was that: "In another 78 registrations,
> or 16%, the trademark owner failed to respond to the requirements of the
> pilot and any other issues raised during examination of the underlying
> maintenance filing, resulting in cancellation of the registration."
>
> That's quite different from saying that 16% didn't respond at all
> (especially knowing from the PowerPoint that 97% actually responded, which
> I didn't link to before). What it means is that 16% didn't provide a good
> enough response to meet the requirements of the pilot study -- i.e. it
> failed to meet the *requirements*.
>
> Here's an open question --- what's an acceptable level of "gamed marks" in
> the TMCH? And equally valid, what's an acceptable level of cybersquatting
> amongst registered domains. Is 10% of domains being cybersquatting
> considered "acceptable"? We have statistics on invalid WHOIS, for example
> --- and those shape ICANN policy. Without actually auditing the TMCH to
> determine the number of gamed marks (as was done for the WHOIS database),
> how do we know whether we're meeting that "acceptable level"?? How do we
> make policy determinations without that data?
>
> And to respond to Lori's earlier post, one simple proposal to move things
> forward would be to separate out the fees for the TMCH sunrise access.
> Right now, people are paying for sunrise services:
>
> http://www.trademark-clearinghouse.com/content/
> trademark-clearinghouse-fees
>
> whether they want them or not. And it's clear from the actual registration
> stats that most markholders registered for the TMCH aren't using the
> sunrise periods. One can lower the TMCH fees for those markholders who
> don't want the sunrise period access (yippee, saving people money!) and
> raise the fees for the subset of markholders who do use the sunrise
> periods. In other words, right now the large majority of markholders who
> aren't using sunrise periods are subsidizing those who are using the
> sunrise.
>
> By raising the fees on those markholders who do use the sunrise periods
> (whose costs are higher due to the extra verification needed for "use"),
> and subjecting that subsetto greater scrutiny, one also reduces the
> "gaming" problem.
>
> Sincerely,
>
> George Kirikos
> 416-588-0269
> http://www.leap.com/
>
>
> On Thu, Feb 2, 2017 at 7:37 PM, Greg Shatan <gregshatanipc at gmail.com>
> wrote:
>
>> What she said+1.
>>
>> On the other point, regarding the USPTO pilot study,  the "alarming
>> statistics" are a false alarm.  If you go to the USPTO Pilot Project report
>> itself, you will see that* 84%* of the 500 registrations in the pilot
>> stayed on the trademark register, while 16% failed to respond and were
>> cancelled..  In other words, all of those who actually responded were able
>> to maintain their trademark registrations, although some had to delete some
>> goods and/or services from their registrations due to non-use of those
>> particular goods and/or services.
>>
>> Also, all of the trademark registration in the pilot project were valid
>> trademark registrations, and were entitled to continuing as registrations.
>> The owners of all 500 registrations had been able to show use of the
>> trademark on at least one good/service in each class in the registration
>> when they filed the initial Declaration of Use at the beginning of the
>> study.  The pilot program asked for proof of use of two *additional* goods or
>> services per class.  This exceeds the current PTO practice, where a
>> specimen demonstrating use of a mark on a single good or service within a
>> class is sufficient to maintain registration for an entire class.  In other
>> words, owners of registrations selected under the pilot study were subject
>> to an enhanced level of scrutiny.
>>
>> So, the 51% number is quite misleading -- it only represents those
>> participants that were unable to show use of the *additional *goods and
>> services requested in the pilot, or who failed to respond at all.
>>
>> In addition, the following should be kept in mind:
>>
>> 1.  This represents a limited subset of US trademarks -- trademark
>> registrations that are primarily based on rights from outside the US (from
>> Paris Convention or Madrid Protocol countries).  So, even if the US
>> registration was cancelled, it's highly likely that their "home" trademark
>> registration was still valid.
>> 2.  Most US trademarks do not fall into this category, so it teaches us
>> nothing about trademarks where the original filing was in the US.
>> 3.  In many other countries, trademark filings tend to list all the goods
>> in a class, even where the use is only on certain goods.  The US practice
>> is to file only for the goods where there is (or will be) actual use.  The
>> result is that these foreign registrants were very vulnerable to being
>> tripped up by this pilot study.  If you have a list of 30 goods in a class,
>> and you provide proof of use for one of them, that' s usually
>> satisfactory.  In the pilot, the USPTO randomly chose two of the other
>> goods (i.e, 2 of the 29 in this example).  If the registrant didn't have
>> use of these two goods, they went into the 51% -- even if they had use of
>> some or all of the other goods in the class.  If they deleted these goods
>> for non-use, they were then subject to further proof of use requirements in
>> order to maintain their registration.  Every registrant responded
>> successfully.
>>
>> In the end, the only "takeaway" from this study is that foreign filings
>> with long lists of goods may include some goods for which use cannot be
>> proven, in spite of signing off on the standard declaration that the marks
>> are in use for all goods on the registaration.  This is the so-called
>> "deadwood" problem.  It's still a problem, but it is not the problem you
>> thought it was.  The "trademark protection to which [the registrants] are
>> not entitled in the United States" refers to these additional goods in the
>> registration for which there is no use.  It does *not* refer to the
>> registration as a whole.
>>
>> Notably, it has little if any application to the TMCH.  First, it's  best
>> practice to use a "home country" registration for the TMCH, so these types
>> of "foreign filings" are unlikely to be used for the TMCH.  Second, the
>> registrants were able to prove use for at least one good or service per
>> class; so, if these registrations were used in the TMCH, they would have
>> been accepted, and appropriately so.
>>
>> I hope that clears up the confusion about what this study does and does
>> not mean.
>>
>> Best regards,
>>
>> Greg
>>
>> On Thu, Feb 2, 2017 at 5:23 PM, J. Scott Evans via gnso-rpm-wg <
>> gnso-rpm-wg at icann.org> wrote:
>>
>>> What she said . . . .
>>>
>>> *J. Scott Evans* *| Associate General Counsel - Trademarks, Copyright,
>>> Domains & Marketing |*
>>>
>>> *Adobe *
>>>
>>> 345 Park Avenue
>>>
>>> San Jose, CA 95110
>>> 408.536.5336 <(408)%20536-5336> (tel), 408.709.6162 <(408)%20709-6162>
>>> (cell)
>>> jsevans at adobe.com
>>>
>>> www.adobe.com
>>>
>>>
>>>
>>> From: Lori Schulman <lschulman at inta.org>
>>> Date: Thursday, February 2, 2017 at 2:17 PM
>>> To: George Kirikos <icann at leap.com>, "J. Scott Evans" <jsevans at adobe.com
>>> >
>>> Cc: gnso-rpm-wg <gnso-rpm-wg at icann.org>
>>> Subject: RE: [gnso-rpm-wg] TMCH Blog
>>>
>>> I am lawyer and I work for INTA so I will speak to INTA’s content.  Yes,
>>> per the information found on the INTA website, the armor has holes, however
>>> the legal threshold for contesting an incontestable mark in the U.S. is
>>> high.   It takes substantial effort and a high burden of proof to partake
>>> of the cheese.  As noted earlier in the thread, the presumption of validity
>>> rests with the trademark owner.   That said,  none of INTA’s content is
>>> intended to be construed as legal advice.  We provide information for brand
>>> owners and trademark professionals for whom it is incumbent to thoroughly
>>> research the merits of any particular action that they may be
>>> contemplating.   Reading provisions of statutes at face value without
>>> understanding the underlying principles and precedents that support the
>>> statute or the threshold of evidence required to successfully challenge a
>>> trademark registration under the statute can be dangerous because it may
>>> over simplify a complex area of the law.
>>>
>>> With regard to the US efforts to get rid of “dead wood” trademarks, its
>>> speaks to the integrity of the US Trademark system in a positive way.  The
>>> US understands that there is a problem and is taking the necessary steps to
>>> correct it.  While the statistics are useful to understand the
>>> inconsistencies in the US Federal Register, I think it is dangerous to use
>>> these statistics to support a theory that a trademark registration is
>>> inherently unreliable and such unreliability should be factored into ICANN
>>> policies.  It undermines carefully constructed national and international
>>> trademark regimes.   We need to trust that national, regional and global
>>> trademark offices are doing their job as they have mechanisms to challenge
>>> the validity of a trademark as well as internal checks such as the USPTO is
>>> undertaking.
>>>
>>>
>>>
>>> It’s clear that we can demonstrate flaws and inconsistencies in almost
>>> any system.  However, discounting the entire system because of bad actors
>>> undermines what we are trying to achieve in terms of taking actions
>>> consistent with recognized principles of law and fairness to all parties.
>>>
>>>
>>>
>>> If there is a reasonable way to curtail gaming without undermining an
>>> international system designed to protect consumers and promote innovation
>>> then I am certainly open to discussing it.
>>>
>>>
>>>
>>> Lori
>>>
>>>
>>>
>>> Lori S. Schulman
>>>
>>> Senior Director, Internet Policy
>>>
>>> *International Trademark Association (INTA)*
>>>
>>> +1-202-704-0408 <(202)%20704-0408>, Skype: lsschulman
>>>
>>>
>>>
>>> [image: cid:image005.jpg at 01D270D2.1801CD20]
>>>
>>>
>>>
>>> *From:* gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at ic
>>> ann.org <gnso-rpm-wg-bounces at icann.org>] *On Behalf Of *George Kirikos
>>> *Sent:* Thursday, February 02, 2017 3:37 PM
>>> *To:* J. Scott Evans <jsevans at adobe.com>
>>> *Cc:* gnso-rpm-wg <gnso-rpm-wg at icann.org>
>>> *Subject:* Re: [gnso-rpm-wg] TMCH Blog
>>>
>>>
>>>
>>> J. Scott: I'm not a lawyer, nor am I practising trademark law. I made
>>> a reference to INTA's website, and to the USPTO's own research, in
>>> furtherance of a discussion we're having on this list. What makes you
>>> think I'm not allowed to do so? If you have a problem with the content
>>> of my messages, dispute the content, rather than seeking to silence
>>> the speaker of that content.
>>>
>>> Sincerely,
>>>
>>> George Kirikos
>>> 416-588-0269 <(416)%20588-0269>
>>> http://www.leap.com/
>>>
>>>
>>>
>>>
>>>
>>>
>>>
>>>
>>>
>>> On Thu, Feb 2, 2017 at 3:29 PM, J. Scott Evans <jsevans at adobe.com>
>>> wrote:
>>> > George:
>>> >
>>> > Are you a trademark attorney? Are you an attorney? If not, I think it
>>> > would be best if you refrain from practicing law. If you are, I point
>>> you
>>> > to McCarthy on Trademarks & Unfair Competition for US practice and
>>> > Trademarks Throughout the World for a glimpse of international
>>> trademark
>>> > laws.
>>> >
>>> > J. Scott
>>> >
>>> > J. Scott Evans | Associate General Counsel - Trademarks, Copyright,
>>> > Domains & Marketing |
>>> > Adobe
>>> > 345 Park Avenue
>>> > San Jose, CA 95110
>>> > 408.536.5336 <(408)%20536-5336> (tel), 408.709.6162 <(408)%20709-6162>
>>> (cell)
>>> > jsevans at adobe.com
>>> > www.adobe.com
>>> >
>>> >
>>> >
>>> >
>>> >
>>> >
>>> >
>>> >
>>> > On 2/2/17, 12:23 PM, "gnso-rpm-wg-bounces at icann.org on behalf of
>>> George
>>> > Kirikos" <gnso-rpm-wg-bounces at icann.org on behalf of icann at leap.com>
>>> wrote:
>>> >
>>> >>Without belabouring the obvious:
>>> >>
>>> >>1. "Incontestability" is less absolute than it sounds. Since Marc
>>> >>appears to dislike links to Wikipedia, let me choose a reference that
>>> >>he might prefer, namely INTA:
>>> >>
>>> >>http://www.inta.org/INTABulletin/Pages/IncontestabilityDoe
>>> sAnybodyReallyUn
>>> >>derstandIt.aspx
>>> >>
>>> >>"Despite the name, incontestability does not provide the registration
>>> >>with a complete shield against attack. Registrations are subject to
>>> >>cancellation at any time based on any of the following: (1)
>>> >>genericness; (2) functionality; (3) abandonment; (4) fraud on the
>>> >>USPTO; (5) immorality, deception or scandalousness; (6) disparagement;
>>> >>(7) false suggestion of a connection; (8) geographical indications on
>>> >>wines or spirits meeting certain requirements; (9) representation of a
>>> >>flag or coat of arms of any nation; or (10) representation or name of
>>> >>a living person without his or her consent or of a deceased president
>>> >>without the consent of his widow. So the shield of incontestability
>>> >>has been likened to the proverbial armor made of Swiss cheese rather
>>> >>than a coat made of metal."
>>> >>
>>> >>Let me repeat the "takeaway", namely "armor made of Swiss cheese."
>>> >>
>>> >>2. As for what is "fact" vs "evidence" re: the meaning of a TM
>>> >>registration, let me remind folks of some alarming statistics posted
>>> >>to this list last August:
>>> >>
>>> >>http://mm.icann.org/pipermail/gnso-rpm-wg/2016-August/000474.html
>>> >>
>>> >>"The results of the pilot program indicate that a substantial majority
>>> >>of foreign registrants, 73% under the Madrid Protocol and 65% under
>>> >>the Paris Convention, have submitted false declarations of use and
>>> >>have therefore received trademark protection to which they are not
>>> >>entitled in the United States."
>>> >>
>>> >>"During the two-year pilot program, the USPTO found that 51% of the
>>> >>audited registration owners were unable to satisfy these additional
>>> >>proof requirements. The USPTO cancelled 16% of the audited
>>> >>registrations in their entirety because the registration owners failed
>>> >>to respond to the request for additional proof or any other issues
>>> >>raised during the examination of the original affidavit. In addition,
>>> >>35% of the audited registration owners requested that some of the
>>> >>goods or services be deleted from their registration."
>>> >>
>>> >>"A register that does not accurately reflect marks in use in the
>>> >>United States for the goods/services identified in registrations
>>> >>imposes costs and burdens on the public."
>>> >>
>>> >>In order to have a balanced and thorough review of the TMCH, we need
>>> >>to keep these things in mind.
>>> >>
>>> >>Sincerely,
>>> >>
>>> >>George Kirikos
>>> >>416-588-0269 <(416)%20588-0269>
>>> >>http://www.leap.com/
>>> >>
>>> >>
>>> >>
>>> >>On Thu, Feb 2, 2017 at 3:08 PM, jonathan matkowsky
>>> >><jonathan.matkowsky at riskiq.net> wrote:
>>> >>> In US, one of the benefits of registration is a presumption of
>>> validity
>>> >>>of
>>> >>> ownership, and exclusivity with respect to the goods/services covered
>>> >>>by the
>>> >>> registration. Only by successfully challenging the registration would
>>> >>>the
>>> >>> owner lose that benefit. After 5 years, assuming certain documents
>>> are
>>> >>> filed, the registration becomes conclusive evidence in certain
>>> respects.
>>> >>>
>>> >>>
>>> >>> On Thu, 2 Feb 2017 at 21:25 Lori Schulman <lschulman at inta.org>
>>> wrote:
>>> >>>>
>>> >>>> As a clarification to the point of law, TM rights are presumed until
>>> >>>>they
>>> >>>> are challenged. George, to your point, TM rights may certainly be
>>> >>>> challenged. However, the presumption is with the owner of the TM
>>> >>>> registration until such challenge prevails. Under U.S. law, TM
>>> >>>> registrations are proof of right. They are more than a notice of
>>> >>>>claim. An
>>> >>>> application is the notice of claim, the resulting registration
>>> >>>>presumes the
>>> >>>> right. I certainly welcome trademark practitioners from
>>> jurisdictions
>>> >>>>to
>>> >>>> weigh in on whether registrations are ³notice of a claim² or
>>> considered
>>> >>>> proof of ownership until otherwise successfully challenged.
>>> >>>>
>>> >>>>
>>> >>>>
>>> >>>> Lori
>>> >>>>
>>> >>>>
>>> >>>>
>>> >>>> Lori S. Schulman
>>> >>>>
>>> >>>> Senior Director, Internet Policy
>>> >>>>
>>> >>>> International Trademark Association (INTA)
>>> >>>>
>>> >>>> +1-202-704-0408 <(202)%20704-0408>, Skype: lsschulman
>>> >>>>
>>> >>>>
>>> >>>>
>>> >>>>
>>> >>>>
>>> >>>> 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 2:19 PM
>>> >>>> To: gnso-rpm-wg <gnso-rpm-wg at icann.org>
>>> >>>>
>>> >>>>
>>> >>>> Subject: Re: [gnso-rpm-wg] TMCH Blog
>>> >>>>
>>> >>>>
>>> >>>>
>>> >>>> Marc: I used the Wikipedia link as a fairly neutral starting point
>>> for
>>> >>>> the theory of signalling, and not "authoritative". Would you
>>> consider
>>> >>>> the Nobel Prize in Economics for work on signalling to be
>>> >>>> "authoritative" enough for you?
>>> >>>>
>>> >>>>
>>> >>>>
>>> >>>>http://www.nobelprize.org/nobel_prizes/economic-sciences
>>> /laureates/2001/
>>> >>>>press.html
>>> >>>>
>>> >>>> Or should I have provided (like most of the posts to this list) no
>>> >>>> external references at all, and simply allow people to go to Google
>>> on
>>> >>>> their own? Which aspect of the concept of signalling do you disagree
>>> >>>> with?
>>> >>>>
>>> >>>> As for "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."
>>> >>>>
>>> >>>> Hmmm, that's not correct, given that TM registrations can be and are
>>> >>>> disputed and cancelled. Trademark registration is *evidence* and
>>> >>>> *notice* of a *claim* to a trademark right (perhaps even a strong
>>> >>>> claim), but are not "proof" of anything as a "fact."
>>> >>>>
>>> >>>> Sincerely,
>>> >>>>
>>> >>>> George Kirikos
>>> >>>> 416-588-0269 <(416)%20588-0269>
>>> >>>> http://www.leap.com/
>>> >>>>
>>> >>>>
>>> >>>> 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 don¹t 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 <(312)%20456-1020>
>>> >>>> > Mobile 773.677.3305 <(773)%20677-3305>
>>> >>>> > 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
>>> <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_wi
>>> >>>>ki_Signalling-5F-28economics-29&d=DwIGaQ&c=2s2mvbfY0UoSK
>>> kl6_Ol9wg&r=L7MB
>>> >>>>7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-W
>>> yHhwMfs41uWqUos4
>>> >>>>g3JWuGXUa1FwI&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 <(416)%20588-0269>
>>> >>>> >
>>> >>>> >
>>> >>>>https://urldefense.proofpoint.com/v2/url?u=http-3A__www.
>>> leap.com_&d=DwIG
>>> >>>>aQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrK
>>> Xt7T1dG3NjBzCxm1
>>> >>>>c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ
>>> -jCOYyo9r24YJ9m6
>>> >>>>g71cr0vEGbww0X9qgsNDU&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 isn¹t 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 can¹t 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 <(416)%20588-0269>
>>> >>>> >>
>>> >>>>https://urldefense.proofpoint.com/v2/url?u=http-3A__www.
>>> leap.com_&d=Dw
>>> >>>> >>
>>> >>>>IGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3J
>>> rKXt7T1dG3NjBz
>>> >>>> >>
>>> >>>>Cxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_
>>> wfuQ-jCOYyo9r2
>>> >>>> >> 4YJ9m6g71cr0vEGbww0X9qgsNDU&e=
>>> >>>> > _______________________________________________
>>> >>>> > gnso-rpm-wg mailing list
>>> >>>> > gnso-rpm-wg at icann.org
>>> >>>> >
>>> >>>> >
>>> >>>>https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.
>>> icann.org_mailma
>>> >>>>n_listinfo_gnso-2Drpm-2Dwg&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_O
>>> l9wg&r=L7MB7eHT-
>>> >>>>UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-WyHhwM
>>> fs41uWqUos4g3JWu
>>> >>>>GXUa1FwI&s=g9D6x_5yyONXbDzXKuaVg7WsGRorHP9u7RikcGTnhtY&e=
>>> >>>> >
>>> >>>> >
>>> >>>>--------------------------------------------------------
>>> --------------
>>> >>>> > If you are not an intended recipient of confidential and
>>> privileged
>>> >>>> > information in this email, please delete it, notify us
>>> immediately at
>>> >>>> > postmaster at gtlaw.com, and do not use or disseminate such
>>> information.
>>> >>>> _______________________________________________
>>> >>>> gnso-rpm-wg mailing list
>>> >>>> gnso-rpm-wg at icann.org
>>> >>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>> >>>>
>>> >>>> _______________________________________________
>>> >>>> gnso-rpm-wg mailing list
>>> >>>> gnso-rpm-wg at icann.org
>>> >>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>> >>>
>>> >>> --
>>> >>> jonathan matkowsky, vp - ip & head of global brand threat mitigation
>>> >>_______________________________________________
>>> >>gnso-rpm-wg mailing list
>>> >>gnso-rpm-wg at icann.org
>>> >>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>> >
>>> _______________________________________________
>>> gnso-rpm-wg mailing list
>>> gnso-rpm-wg at icann.org
>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>>
>>>
>>> _______________________________________________
>>> gnso-rpm-wg mailing list
>>> gnso-rpm-wg at icann.org
>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>>
>>
>>
>
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