[gnso-rpm-wg] TMCH Blog

Fri Feb 3 10:11:29 UTC 2017

The problem of ICANNs solution seems to be that they are sometimes 
overdesigned and overprotect certain rights while at the same time 
discriminating against legitimate use. For example, while trade marks 
must be reasonable protected against reasonable abuse, that does not 
necessarily equate to early exclusive sunrise access as that "solution" 
frustrates all potential registrants who would also have have a 
legitimate right to register and use of the domain name string without 
infringing upon any trademark rights for the same string, yet the trade 
mark holder is given prefered access.

With the protection mechanisms currently in place, the community has 
essentially accepted overprotection and given trademark holders rights 
that go beyond the legal protections and rights trademark holders enjoy. 
The positive trade-off is substantial savings on the side of TM holders 
as they can pro-actively prevent certain abusive uses instead of having 
to taking a reactive and costly legal approach after the fact.

And of course the current approach also enables abuse by trademark 
shopping by encouraging registrations of trash marks just to get access 
to certain desirable domain names.

Volker

Am 02.02.2017 um 19:53 schrieb Lori Schulman:
>
> 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
>
> cid:image005.jpg at 01D270D2.1801CD20
>
> *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 1:36 PM
> *To:* gnso-rpm-wg <gnso-rpm-wg at icann.org>
> *Subject:* Re: [gnso-rpm-wg] TMCH Blog
>
> Hello,
>
> (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
> 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
> http://www.leap.com/
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>
>
>
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