[gnso-rpm-wg] TMCH Blog

Marie Pattullo marie.pattullo at aim.be
Fri Feb 3 14:09:42 UTC 2017

Paul – while this may seem simple, in practice it would limit access to Sunrise to all but a very few of the world’s largest brand owners, contrary to the entire reasoning behind the roll out of the new gTLD programme.
Famous (well-known) marks are dealt with case-by-case, and of course jurisdiction-by-jurisdiction as TMs are territorial – “multi-jurisdictional use” isn’t a criteria in most TM systems. And wouldn’t “revenue levels” or an “auction system” by default disadvantage, if not totally exclude, SMEs?
The test for being “well-known” will generally depend on being well-known in that territory, and to those consumers: a well-known mark in Finland may mean nothing to a consumer in Ghana. China insists that the mark be well-known in China, but then tends to hold that nothing in Latin script is well-known to their citizens who do not use (read, understand..) that script, so you have arguments about likelihood of confusion based on phonetics. There are also split marks: consumers may know of (e.g.) a brand of laundry detergent, but will not know that the name is split between 2 companies who have different territorial rights – which company can claim to be the owner of the “well-known” TM?  Add in the disadvantaged SME who owns a mark in one class that is the same as a more well-known mark in another: e.g. Lotus (paper tissues) and Lotus (cars). So cars could be in the TMCH, tissues couldn’t – is that fair? At the moment, whoever gets there first gets the recordal – what benefit would changing that bring?
And the kicker - who decides what is well-known? To whom? Where? And when? (TMs generally aren’t well-known when they’re registered, and may not even be so a couple of months before they become the darling of a certain magazine or personality, when sales may go through the roof – or the alternative when they become vilified for similar reasons).
We should, I think, look at proportionality: the balance in preventing “gaming” in Sunrise (are you including premium pricing here, by the way?) and preventing any but the world’s largest and richest TM owners from even being able to choose whether they want to pay to be in the TMCH then pay to register a DN in Sunrise.
Kind regards
From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Paul Keating
Sent: vendredi 3 février 2017 03:51
To: J. Scott Evans
Cc: gnso-rpm-wg
Subject: Re: [gnso-rpm-wg] TMCH Blog
I suggest considering the following. 
Examination of what constitutes evidence of use. I suspect the threshold is quite low. 
I am troubled by sunrise programs because they are always gamed. Thus we should consider limiting access to sunrise reservation to famous marks. The mere existence of the trademark doesn't preclude non infringing use unless the mark is indeed  famous.   If the domain is registered by another and infringing use occurs the mark owner has the URD and UDRP (not to mention the judicial process). 
Perhaps fame could be limited to those having been recognized as such by a competent judicial authority.   Otherwise we are left to factors such as multi jurisdictional use or revenue levels. 
If fame cannot be determined then as suggested we should consider examining an auction system. 
 While having the TMCH become a judicial body is not desired in terms of validity of the mark there is no reason IMO that it could not entertain challenges to the mark's participation in the TMCH program itself. 
We should examine any requirement to periodically re-certify both continued validity and use.  I suggest 3 yrs. 
Also we might consider imposing a forfeiture rule for abandonment, invalidity etc. After all the registration was awarded on the basis of the trademark. 
Paul Keating, Esq.

On Feb 2, 2017, at 10:52 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg at icann.org> wrote:
I also note it is NOT a big brand abusing the system, but a domain speculator. The same group of bad actors (i.e., rogue domain speculators) that abuse brands in the DNS.
J. Scott
J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing |
345 Park Avenue
San Jose, CA 95110
408.536.5336 (tel), 408.709.6162 (cell)
 <mailto:jsevans at adobe.com> jsevans at adobe.com
From: Brian Winterfeldt <BWinterfeldt at mayerbrown.com>
Date: Thursday, February 2, 2017 at 9:49 AM
To: "J. Scott Evans" <jsevans at adobe.com>
Cc: Jonathan Frost <jonathan at get.club>, gnso-rpm-wg <gnso-rpm-wg at icann.org>
Subject: Re: [gnso-rpm-wg] TMCH Blog
Hi all,
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.  The TMCH must record any mark that satisfies the validation criteria, including proof of use requirements for access to Sunrise services.  It is important to remember that Sunrise registrations are only permitted where the mark owner has submitted acceptable proof of use to the TMCH (otherwise, a recorded mark is only eligible for Trademark Claims service).  I support examining the criteria for proof of use to see if we can improve them to minimize acceptance of insufficient or mere “token” specimens of use, but let’s not be overbroad in decrying the TMCH because some gaming is occurring.  Also, a mark need not be “famous” or “well-known” in order to be protected and this is not, nor should it be, a requirement of TMCH recordal of an otherwise valid trademark. 
Looking forward to discussing these issues at greater length at the appropriate time.
Best regards,
Brian J. Winterfeldt
Co-Head of Global Brand Management and Internet Practice
Mayer Brown LLP
bwinterfeldt at mayerbrown.com
1999 K Street, NW <x-apple-data-detectors://2/2> 
Washington, DC <x-apple-data-detectors://2/2>   20006-1101
202.263.3284 direct dial
202.830.0330 fax
1221 Avenue of the Americas <x-apple-data-detectors://3/0> 
New York, New York <x-apple-data-detectors://3/0>   10020-1001
212.506.2345 direct dial

On Feb 2, 2017, at 11:10 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg at icann.org> wrote:
In most jurisdictions in the world you can obtain a valid and enforceable trademark registration with no demonstration of use. If the system is being abused, then we need to put the n fail safes. We could have a challenge mechanism. In the US, which requires "use", token (fake use) is not deemed sufficient.

Sent from my iPhone

On Feb 2, 2017, at 8:03 AM, Jonathan Frost <jonathan at get.club> wrote:
These TMCH gaming issues have been well documented all the way back to 2014 . <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fdomainnamewire.com%2F2014%2F02%2F10%2Fhow-common-words-like-pizza-money-and-shopping-ended-up-in-the-trademark-clearinghouse-for-new-tlds%2F&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cc2c40107ac76460617a808d44b86004e%7C09131022b7854e6d8d42916975e51262%7C0&sdata=%2BLJMOFvYZMT4q%2FIm67ue9OvYUJ8l5UbmI%2FKLBscT1H4%3D&reserved=0> http://domainnamewire.com/2014/02/10/how-common-words-like-pizza-money-and-shopping-ended-up-in-the-trademark-clearinghouse-for-new-tlds/
Gaming the TMCH is as easy as starting an ecommerce store on a template and selling various products like t-shirts and pens with the arbitrary use of a common/valuable term (e.g.. pizza pen shop). This allows registration of the trademark for the term in any number of jurisdictions and subsequent registration in the TMCH.
Jonathan Frost
General Counsel
Telephone: (+1)877-707-5752
100 SE 3rd Avenue, #1310
Fort Lauderdale, FL 33394
E-Mail:  <mailto:jonathan at get.club> jonathan at get.club
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From:gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Phil Corwin
Sent: Thursday, February 2, 2017 9:13 AM
To: Jon Nevett <jon at donuts.email>; gnso-rpm-wg <gnso-rpm-wg at icann.org>
Subject: Re: [gnso-rpm-wg] TMCH Blog
I’m tempted to say that is one of *** craziest things I’ve ever seen, but if I use *** word *** I might be cited for infringement or have to pay a licensing fee ;-)
Seriously, it would be interesting to know in what jurisdiction the trademark was granted in and whether they professed to demonstrate use in commerce.
Also seems to be an example of a situation where everyone in general but no one in particular has an incentive to challenge the acceptance of the mark by the TMCH.
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] On Behalf Of Jon Nevett
Sent: Thursday, February 02, 2017 8:55 AM
To: gnso-rpm-wg
Subject: [gnso-rpm-wg] TMCH Blog
FYI -- for those who haven't seen this blog:
https://www.thedomains.com/2017/02/01/the-trademark-clearinghouse-worked-so-well-one-company-got-24-new-gtld-using-the-famous-trademark-the/ <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.thedomains.com%2F2017%2F02%2F01%2Fthe-trademark-clearinghouse-worked-so-well-one-company-got-24-new-gtld-using-the-famous-trademark-the%2F&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cc2c40107ac76460617a808d44b86004e%7C09131022b7854e6d8d42916975e51262%7C0&sdata=4lcxQjpKBoMoFyzyYE%2Bg0YfIjBT1TaHx7oVQMQ1SV3U%3D&reserved=0> 

The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The”

February 1, 2017 by Michael Berkens <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.thedomains.com%2Fauthor%2Fmichael-berkens%2F&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cc2c40107ac76460617a808d44b86004e%7C09131022b7854e6d8d42916975e51262%7C0&sdata=j1oolizppFPQsqfk3Cl8jaM6x1uA2ofz9Dbqq4kBlok%3D&reserved=0>  5 Comments <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.thedomains.com%2F2017%2F02%2F01%2Fthe-trademark-clearinghouse-worked-so-well-one-company-got-24-new-gtld-using-the-famous-trademark-the%2F%23comments&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cc2c40107ac76460617a808d44b86004e%7C09131022b7854e6d8d42916975e51262%7C0&sdata=9IKsG3t%2BF3CQZvxBcFVy8%2BGvmUOP6hA6zqv97L6ykIk%3D&reserved=0>  
The Trademark ClearingHouse (TMCH) <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.trademark-clearinghouse.com%2F&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cc2c40107ac76460617a808d44b86004e%7C09131022b7854e6d8d42916975e51262%7C0&sdata=57ncR1jkvpQK1H1CZoRj%2FWVjy3eRF4yGp1XfxJUt29M%3D&reserved=0>  which was set up/ contracted by ICANN to protect those famous worldwide brand names from abuse by those nasty domain name squatters resulted in a whole new industry.
Those playing the TMCH for their own benefit to get first jump at new gTLD domain names to get registered in Sunrise ahead of all other under common words like “the”
Actually there maybe no better example than those domain names obtained on the world-famous trademarks as of the word”the”,  which is the most used word in the English language <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fen.wikipedia.org%2Fwiki%2FMost_common_words_in_English&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cc2c40107ac76460617a808d44b86004e%7C09131022b7854e6d8d42916975e51262%7C0&sdata=8oloVrvxeCOU3m6f6CeSECXKmwoXxzaNTA2NW22xZsc%3D&reserved=0> .
The world-famous trademark for the word “the” was obtained by Goallover Limited of London who according to DomainTools.com <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2FDomainTools.com&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cc2c40107ac76460617a808d44b86004e%7C09131022b7854e6d8d42916975e51262%7C0&sdata=mviW6PO16d4l7J0kXAFukFOKxwgPVFtpswkG%2FyfBfkQ%3D&reserved=0>  owns an amazing amount of domain names approaching nearly 100, but was able to get all of the following new gTLD’s using their globally well-known trademark on the word “the” under the ICANN trademark clearinghouse rules which  allows them to obtain the domain names ahead of all other applicants.
Of course the company could have had obtained even more “the” new gTLD domain names in Sunrise but apparently did not apply for more.
Somehow the company doesn’t appear to own the domain name The.Com <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2FThe.Com&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cc2c40107ac76460617a808d44b86004e%7C09131022b7854e6d8d42916975e51262%7C0&sdata=kmoRjEhKOojx%2FIX%2Fl%2FhlKMn%2FiuXTBJmlHse4wgKWlF0%3D&reserved=0> 
For all Trademark Holders its nice to know the world is a safer place:


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