[gnso-rpm-wg] Inferences (was Re: Mp3, Attendance, AC recording & AC Chat Review of all Rights Protection Mechanisms (RPMs) PDP Working Group)

[Greg Shatan]

Jon,

The linked articles you provide show the danger of jumping to conclusions
about what constitutes an "abuse of the TMCH" and who qualifies as an
abuser of the TMCH.  Also, what constitutes "plenty" of abuses.

The first article discusses only the sunrise registrations secured by one
entity based on their registration of the term THE.  The entity, Goallover
Limited, seems to be associated with various tools used in buying and
maintaining personal data (a/k/a "leads") -- the most prominent being
LolaGrove.  They seem to have a somewhat legitimate set of businesses, and
yet there's no indication they use the word "THE" as a brand in any
meaningful way.  One would be more shocked if a little more searching
didn't reveal that Goallover Limited is not new to this type of scheme.  A
search reveals the following tidbit from 2006:

Memorex wins in first wave of '.eu' cybersquatting cases
<http://www.worldtrademarkreview.com/Daily/Detail.aspx?g=e65decb0-3c4d-427f-9e4e-45832f65a97a>
 (Legal updates)
*07 September 2006*

While the first round of '.eu' domain name decisions were against the '.eu'
registry, trademark owners are now successfully challenging cybersquatters.
In Memorex Products Europe Limited v Goallover Limited, the panel was faced
with a respondent who had registered the trademark MEMO REX the day before
it applied for the domain name 'memorex.eu', and had 132 similar sunrise
applications.

This does appear to be a form of "TMCH abuse," but its hard to discern what
makes their claim to trademark rights bona fide.

The second article casts a wider net.  Unfortunately, it captures
legitimate brandowners along with likely abusers.

The first one, HOSTING, was registered by a domain name registrar and
hosting provider called Hosting Concepts BV, which appears to do business
as Openprovider (see, e.g., www.openprovider.com).  On their LinkedIn page
they state "Since july 1st 2012 the only brand of Hosting Concepts is:
  Openprovider:
 https://www.openprovider.nl  https://www.openprovider.co.uk
https://www.openprovider.es"  It might be interesting to know how they use
HOSTING as a trademark (which they claim is for rubber and plastic products
(of unknown type), but not for their actual business, which is hosting).
As an apparently legitimate registrar and hosting provider business, it
does raise concerns that they appear to have a side-business in filing
questionable trademark applications.

The second one, GOLD, is a horse of a different color.  The owner, This is
Global Limited (now known as Global Media & Entertainment Limited) is a UK
based media company (http://www.global.com/) which identifies itself as the
UK's largest commercial radio business -- one of their "formats", with a
number of radio stations operating under the mark, is called GOLD (see
https://en.wikipedia.org/wiki/Gold_(radio) or
http://www.global.com/radio/gold/)  It's subtitled "Greatest Hits of All
Time," and appears to be an "oldies" format.  They filed for the trademark
back in 2009 (UK00002515362).  This is an entirely legitimate trademark and
use, being unfairly accused of "TMCH abuse."

The next one "biG" is also a "false positive" for "TMCH abuse."  biG is a
trademark of S.p.A. Egidio Galbani, a large Italian cheesemaker, with sales
in numerous countries, doing business as Gruppo Lactalis.  Their website
http://www.gruppolactalisitalia.com/locator.cfm?sectionid=974 reveals the
following about the business carried out under this mark:

biG: Una grande società per una grande distribuzione

*biG Srl è la società nata nel 2004 per la distribuzione e vendita di tutti
i prodotti Galbani in Italia*. È caratterizzata dal più capillare network
di distribuzione di prodotti freschi su tutto nel nostro Paese con *1.130
tra venditori e agenti,oltre  1.000 camioncini e 108 depositi territoriali.*

*Dal 2009 si occupa di tutto il portafoglio prodotti del Gruppo Lactalis
Italia* (tutti i marchi Galbani, Vallelata, Invernizzi, Locatelli,
Cademartori, Président) per garantirne una gestione integrata e sinergica
ed una maggiore efficienza e sviluppo nei diversi *Canali di Vendita. *Il
mercato dei formaggi in Italia rappresenta infatti il 1° a valore nel
reparto del fresco e garantisce il maggior contributo alla crescita di
fatturato dei vari punti vendita.

which, courtesy of Google Translate, says something like this:

biG: A great company for a large distribution

*biG Srl is the company formed in 2004 for the distribution and sale of all
Galbani products in Italy* . It is characterized by the most extensive
distribution network of fresh produce throughout our country by *1130
between sellers and agents, more than 1,000 trucks and 108 local deposits.*

*Since 2009 deals with all the Group's product portfolio Lactalis Italy* (all
Galbani brands, Vallelata, Invernizzi, Locatelli, Cademartori, Président)
to ensure an integrated and synergic management and greater efficiency and
development in various *Sales Channels. *The cheese market in Italy
represents the 1st value in the fresh department and ensures the greatest
contribution to growth in sales of the various sales outlets.
Again, an entirely legitimate trademark and trademark owner being tarred by
false charges of "TMCH abuse."

The fourth and last mark cited is the infamous THE registered by the
infamous GOALLOVER LIMITED.

So, the "plenty" of TMCH abuses adds up to one attempt by a registrar and
hosting provider to claim the mark HOSTING, one attempt by a serial "gamer"
to claim the mark THE, one false accusation against a brandowner for GOLD
for a bona fide radio station business and one false accusation against a
brandowner for biG for a bona fide food distribution business.

Even more concerning is that these claims are thrown out there and then
adopted and further transmitted by people who I sincerely believe are
trying to have an informed good-faith discussion about their concerns.
Nonetheless, it took me less than an hour to discern that half of the
"plenty" of instances were false.  That makes it harder than it should be
to discuss these concerns in a productive way.

We need to strive for a discussion and a solution that is aimed at actors
like OpenProvider and Goallover, which appear to be clear instances of
"gaming" rather than bona fide uses of the marks, while not pulling in
legitimate brands and brandowners like Global Media & Entertainment and
Galbani.

I agree that there is a challenge in creating the right filter that would
separate the wheat from the chaff.  But that doesn't mean it can't be done.

Greg

On Thu, Jul 13, 2017 at 10:25 AM, Jon Nevett <jon at donuts.email> wrote:

> Georges:  Denying that there were abuses of the TMCH won't help either.
> There have been plenty presented to date (see below).  Let's try to solve
> the problems and not deny that they exist.  Obviously, there is some
> abandonment based on the notices -- let's work to minimize the rate of
> abandonment by legitimate registrants without unduly hurting the
> protections afforded to legitimate rights holders.  Jon
>
> 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://www.thedomains.com/2014/03/22/tmch-has-plenty-of-
> trademarks-of-generic-words/
>
>
> On Jul 13, 2017, at 9:37 AM, Nahitchevansky, Georges <
> ghn at kilpatricktownsend.com> wrote:
>
> I think the basis problem has been and remains that the basis for all this
> hunting around and data requests is an unfounded claim that there  is an
> abundance of “abusive and overreaching tmch registrations.” The evidence
> of such alleged widespread abuse has not been presented, because it doesn’t
> exist.  What all this sound and fury about data etc. reminds me of is
> Donald Trump claiming with basically no evidence that there was widespread
> voter fraud to explain why he do not get the majority of the popular vote
> in the US and then setting up a special commission to investigate the
> matter in the hope of cobbling together some sort of proof.  In the end
> it’s a waste of everybody’s time and money.
>
>
>
>
>
>
>
> *From:* gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces@
> icann.org <gnso-rpm-wg-bounces at icann.org>] *On Behalf Of *Paul Keating
> *Sent:* Thursday, July 13, 2017 9:23 AM
> *To:* Kurt Pritz
> *Cc:* gnso-rpm-wg at icann.org
> *Subject:* Re: [gnso-rpm-wg] Inferences (was Re: Mp3, Attendance, AC
> recording & AC Chat Review of all Rights Protection Mechanisms (RPMs) PDP
> Working Group)
>
>
>
> Well i want to do a short review here.
>
>
>
> The issue.  Is the tmch function resulting in overkill - in other words is
> it overly protecting mark holders at the expense of the public.
>
>
>
> 1st many were asking for a list of marks registered with the tmch.  The
> point here was to understand what type of marks were actually being
> registered and under what conditions.
>
>
>
> This was met with loud objections by a few members who asserted
> confidentiality.   I seem to recall that the tmch agreement itself
> contradicted any assertion of confidentiality.  I suggested the list be
> made known without indication of registrant identification.  I also
> suggested the list be provided to a 3rd party under confidentiality so they
> could report to the group.  There was no vote or attempt to measure
> consensus.
>
>
>
> 2nd we then considered the post-notice abandonment rate.  This was a 2nd
> best data source trying to figure out the same original issue.
>
>
>
> Now it turns out that the data set was not stellar.  People are not
> asserting this should be abandoned.  This argument is being made by the
> same small group that objected to release of the marks registered with
> TMCH.
>
>
>
> Now the suggestion is to abandon any investigation into what is in TMCH or
> the statistical abandonment rate and instead look at the language of the
> notice itself.  This does not solve the problem.  It is simply unacceptable
> to allow abusive and overreaching tmch registrations just because the
> notice can be watered down or improved.
>
>
>
> The problem remains.  In order to measure the success or appropriateness
> of the TMCH (which this group is required to do) we must have access to the
> underlying data.
>
>
>
> I remain willing to work with people to provide reasonable protection for
> confidentiality.  I reiterate my suggestions that the data be anonymized or
> provided to a neutral expert to review, categorize and report on.
>
>
>
> If this is not acceptable, then the only alternative is for someone to
> essentially reverse engineer the list by trial and error.  This can
> certainly be done on an automated basis.  However, neither side would win
> by this.   It would be a silly waste of time and resources.  It would also
> result in publication of the results.  It seems neither side would want
> such a result.  I am sure we can find a compromise.
>
>
>
> Anyone  willing to work on this with me?
>
> Sent from my iPad
>
>
> On 13 Jul 2017, at 12:22, Kurt Pritz <kurt at kjpritz.com> wrote:
>
> I agree with Susan.
>
>
>
> I think the Analysis Group was at least negligent in their duties when
> they reported the 93% abandonment rate. It was misleading despite the
> disclaimers attached. Whenever any number is reported, it tends to gain
> traction and, as a result, we find ourselves struggling to attach some type
> of meaning to it. The Analysis report has led to false conclusions and a
> waste of time.
>
>
>
> We are best off never mentioning the number again. We should agree that we
> have no understanding, information or data on the issue of how abandonment
> rate was effected by claims notices.
>
>
>
> George has identified a couple ways to approximate the effect. If
> additional data gathering is undertaken along the lines that George or
> anyone else suggests, that work would be to get an understanding of
> abandonment rates and not to test the reported number by Analysis.
>
>
>
> Susan’s last and penultimate paragraphs below put it best. In addition to
> identifying data be collected in the next round, we could look at the
> language and display of the current notices to ensure that the notices are
> designed to achieve the goal of the claims notice program: to properly
> inform without intimidating.
>
>
>
> Kurt
>
> ________________
>
> Kurt Pritz
>
> kurt at kjpritz.com
>
> +1.310.400.4184 <(310)%20400-4184>
>
> Skype: kjpritz
>
>
>
>
>
>
>
>
>
>
>
> On Jul 13, 2017, at 10:28 AM, Susan Payne <susan.payne at valideus.com>
> wrote:
>
>
>
> Correct, the data for *two* registrars was excluded because of concerns
> about mining, but Analysis Group clearly were not confident that fully
> addressed the concern:
>
> Page 7:
>
> "However, due to limitations of the data (discussed in more detail below),
> our analyses of the data require an assumption that each download is
> associated with a registration attempt (and was not downloaded by a
> registrar for a purpose unrelated to domain name registrations). If this
> assumption is incorrect, then our results will exaggerate the size of any
> observable registration-deterrent Claims Service effect."
>
>
>
> Page 16:
>
> "These results should not be relied upon to make policy recommendations.
> We find that the vast majority of registration attempts are not completed
> after receiving a Claims Service notification (94% abandonment rate). This
> abandonment rate seems quite high, however there are several caveats to
> this result, which include our inability to determine the abandonment rate
> that would occur if no Claims Service notifications were sent and
> limitations of our data set, which require us to assume that every
> registrar download from the TMDB represents a registration attempt.54 We
> therefore cannot determine whether Claims Service notifications are the
> direct cause for the abandonment rate that we observe."
>
>
>
> I believe this is a fruitless exercise.  Analysis Group are meant to be
> professionals at this, were paid a tidy sum by ICANN to carry out this
> review, presumably had the benefit of being an independent third party
> which ought to have removed some of the confidentiality concerns that we
> have faced, and should have had the support of whatever ICANN contractual
> provisions there are requiring co-operation in economic studies.  They
> still produced a report which repeatedly cites the paucity of data, the
> resulting reliance on assumptions, and that their “results” were
> consequently inadequate and should not be relied upon to make policy.
>
>
>
> We are wasting our time with this.  What would not be a waste of time
> would be to identify the data that we wish we had and make recommendations
> such that any future review would not be similarly hampered.
>
>
>
> Susan Payne
>
> Head of Legal Policy | Valideus Ltd
>
>
>
> E: susan.payne at valideus.com
>
> D: +44 20 7421 8255 <+44%2020%207421%208255>
>
> T: +44 20 7421 8299 <+44%2020%207421%208299>
>
> M: +44 7971 661175 <+44%207971%20661175>
>
>
>
>
>
> -----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: 12 July 2017 21:30
> To: gnso-rpm-wg at icann.org
> Subject: Re: [gnso-rpm-wg] Inferences (was Re: Mp3, Attendance, AC
> recording & AC Chat Review of all Rights Protection Mechanisms (RPMs) PDP
> Working Group)
>
>
>
> Hi again,
>
>
>
> Just to followup on my prior email, The Analysis Group *already* adjusted
> the stats to attempt to take into account the "mining" theory that Jeff
> spoke about. i.e. the 93.7% abandonment figure that we've been talking
> about is a figure obtained *after* making the adjustments! Without the
> adjustment (which eliminated 62.2% of the observations), the abandonment
> rate would have been 99%! See:
>
>
>
> https://community.icann.org/download/attachments/64066042/
> Analysis%20Group%20Revised%20TMCH%20Report%20-%20March%
> 202017.pdf?version=1&modificationDate=1490349029000&api=v2
>
>
>
> (a) page 17 (footnote 55)
>
>
>
> ""As discussed in Section IV, there are two registrars that averaged
> downloads of more than 20 trademark strings per download, which is large
> compared to the average of fewer than five trademark strings in the
> downloads of other registrars. We also exclude downloads made by ICANN’s
> monitoring system. The exclusion of the two registrars does not
> significantly impact our results. Inclusion of the two registrars shows
> that 99% of registrations are abandoned and 0.5% of completed registrations
> are disputed."
>
>
>
> (b) page 18, note [2]
>
>
>
> "[2] A bulk download is defined as a download from the TMCH of multiple
> strings by the same registrar with exactly the same time stamp. Downloads
> by two registrars are excluded from this analysis because of a potentially
> high prevalence of bulk downloads (98.7% and 81.9% of downloads,
> respectively) by each of these two registrars. The average size of the
> “bulk downloads” by these two registrars (approximately 23 and 35 strings,
> respectively) is much larger than the average “bulk download” size of other
> registrars (other registrars in the Claims Service data download 5 strings
> or less on average).
>
> This exclusion results in an exclusion of 62.2% of the observations in the
> original Claims Service data received from IBM after excluding downloads by
> ICANN's monitoring system."
>
>
>
> Sincerely,
>
>
>
> George Kirikos
>
> 416-588-0269 <(416)%20588-0269>
>
> http://www.leap.com/
>
>
>
>
>
>
>
> On Wed, Jul 12, 2017 at 4:10 PM, George Kirikos <icann at leap.com> wrote:
>
> > Hi folks,
>
> >
>
> > Just following up on some statements from today's transcript:
>
> >
>
> > On Wed, Jul 12, 2017 at 3:51 PM, Terri Agnew <terri.agnew at icann.org>
> wrote:
>
> >> Adobe Connect chat transcript for 12 July 2017:
>
> > ...
>
> >>   Jeff Neuman:My belief is that we have a huge rate of people
>
> >> abandoning is because (i) registrars were mining the system, (ii)
>
> >> registrants were mining the system to see what was valuable, and to a
>
> >> lesser extent as a result of the claim (either legitimiate or not)
>
> >>
>
> >>   Jeff Neuman:But I cant prove any of those theories
>
> >>
>
> >>   Kathy Kleiman:@Jeff: we have gathered evidence already from
>
> >> registries; there is probably more
>
> >>
>
> >>   Jeff Neuman:There just is no way to do so on a backwards basis
>
> >
>
> > If one had access to the raw data (and presumably The Analysis Group
>
> > would have had it, to generate their reports), one could filter such
>
> > "mining" by examining abandonment rates by (1) registrar and (2) by
>
> > time relative to the launch date.
>
> >
>
> > i.e. presumably those were "mining" the system were not spreading out
>
> > their queries across all registrars equally. It would be easy to
>
> > identify the outliers. Furthermore, registrants would be also focused
>
> > on a few registrars that permit those bulk lookups, and they wouldn't
>
> > spread their queries over time equally --- they'd be focused at the
>
> > launch (i.e. the beginning, first few days, etc.) of a TLD.
>
> >
>
> > Of course, if need be, one could anonymize the data by registrar (i.e.
>
> > Registrar 1, Registrar 2, etc.), if there are any concerns about
>
> > revealing their individual abandonment rates.
>
> >
>
> > Registry operators and registrars both have technology to block WHOIS
>
> > access to those who are "mining" that data. One can use similar
>
> > detection techniques in this instance.
>
> >
>
> > Sincerely,
>
> >
>
> > George Kirikos
>
> > 416-588-0269 <(416)%20588-0269>
>
> > 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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