[gnso-rpm-wg] TMCH Blog

Paul Keating Paul at law.es
Mon Feb 6 20:48:38 UTC 2017 

Volker,

I agree with your description.  However, the missing point is the value ­ if
any ­ to the non-Trademark Holders (I don¹t see any benefit).  IMHO  the
trademark holders are getting increased rights AND the benefit of low cost
dispute resolution.

Paul

From:  <gnso-rpm-wg-bounces at icann.org> on behalf of Volker Greimann
<vgreimann at key-systems.net>
Date:  Friday, February 3, 2017 at 11:11 AM
To:  <gnso-rpm-wg at icann.org>
Subject:  Re: [gnso-rpm-wg] TMCH Blog

>     
>  
> 
> 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 ICANN¹s policymaking since before ICANN was organized.
>> Per J Scott¹s 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 brandsŠas 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
>>  
>>  
>>  
>>  
>>  
>>  
>>  
>>  
>>  
>> 
>> 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> <mailto: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 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
>>  http://www.leap.com/
>>  _______________________________________________
>>  gnso-rpm-wg mailing list
>>  gnso-rpm-wg at icann.org
>>  https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>  
>>  
>>  
>>  
>>   
>>  
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>>  
>>  
>  
>  
> -- 
> Bei weiteren Fragen stehen wir Ihnen gerne zur Verfügung.
> 
> Mit freundlichen Grüßen,
> 
> Volker A. Greimann
> - Rechtsabteilung -
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> 
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