[gnso-rpm-wg] TMCH review objectives

Fri Sep 23 16:35:56 UTC 2016

Phillip,

The TMCH was created as a centralized database to simplify the ability to
trademark holders to register their trademarks so that they might
participate in the Sunrise process in an efficient manner.  Prior to the
Ngtld process, each launch had its own ³TMCH² process (remember .EU?) in
which each trademark holder had to submit ³proof² in whatever format the
registry demanded.  The TMCH was created to render the trademark/Sunrise
submission uniform in nature.  Nothing more.  This then expanded to include
³equivalence² - and hence the +10/50 .   The net effect has been that the
TMCH has become "THE² only way to participate in Sunrise.   Thus, if one
were to argue for ³rights holders² it should be over the pricing of TMCH
which acts to preclude those trademark holders who cannot afford the cost of
registration within the TMCH structure (not to m mention common law rights
holders who have no registration).

The protection offered  by Sunrise was to permit those holding trademarks to
 on 1st come-1st served basis  participate in a registration process in
which only TMCH registered trademark holders could play.  Just because one
held a trademark did not guaranty registration if others held identical
trademarks registered from other jurisdictions and registered the domain
first.  

The Sunrise was a huge benefit because it afforded a ³priority² to trademark
holders EVEN IF the asserted trademark could be used by a non-trademark
holder for non-infringing purposes.  The benefit of participating in Sunrise
can be thus summarized:

1. Pre-emptive right to register before:
A. All REGISTERED trademark holders who had NOT paid to be in TMCH
B. ALL COMMON LAW trademark holders who could not participate in TMCH.
C. ALL non-infringing non-trademark users

In addition, trademark holders obviously retain the following:

1. Curative Right to obtain transfer or cancellation per the UDRP/URS.

2. Curative Right to obtain transfer, cancellation and damages per court
action.

What is a reasonable price for the Pre-emptive benefit of #1?  That of
course depends on the extension at issue.  Why should we be concerned about
pricing in this instance?

Having a trademark comes at a price.  After all the mark is a monopoly
protected using public resources.  That the rights holders are burdened with
the cost of protection is not per se unreasonable.  For example, the
trademark registration fees set by various jurisdictions are solely within
the power/authority of each jurisdiction.  Nations are free to set their
fees for registration/maintenance of trademark rights.  They can set high
registration/maintenance fees if they perceive the monopolistic right to be
valuable.  Any nation could, for example, set registration/maintenance fees
to be a % of revenues.  That is the sole purview of the nation.  Why should
registries be held to any different standard?

Will there be gamesmanship and instances of unfairness?  With reference to
.SUCKS were they seeking high prices?  Sure.  Was it unfair towards rights
holders?  No.  Pricing is relative.  My cost (as a percentage of disposable
income) for KEATING.SUCKS is certainly higher than the price for COKE.SUCKS.
Is it something that we should be concerned with?  No.  There is no logical
or philosophical basis for limiting pricing.  In a capitalist system we rely
upon the market to determine the fair price  (even in a communist system
prices are set at the level to benefit the greater society and not an
individual group).  Trademark rights holders (and others) already have legal
rights (e.g. defamation, unfair competition, etc).   They may be difficult
claims to prevail upon and it may cost money to press a successful claim.
However, such is the legal system.

It is not our place to create a utopia for trademark holders.

Stepping off soapbox nowŠŠŠŠŠ

Sincerely,

Paul Raynor Keating, Esq.

Law.es <http://law.es/>

Tel. +34 93 368 0247 (Spain)

Tel. +44.7531.400.177 (UK)
Tel. +1.415.937.0846 (US)

Fax. (Europe) +34 93 396 0810

Fax. (US)(415) 358.4450

Skype: Prk-Spain

email:  Paul at law.es

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From:  <gnso-rpm-wg-bounces at icann.org> on behalf of Thomas Brackey
<tom at bmail.build>
Date:  Friday, September 23, 2016 at 5:52 PM
To:  Phil Corwin <psc at vlaw-dc.com>
Cc:  "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
Subject:  Re: [gnso-rpm-wg] TMCH review objectives

> +1
> 
>> On Sep 23, 2016, at 8:33 AM, Phil Corwin <psc at vlaw-dc.com> wrote:
>> 
>> Thanks for your input, Bradley and Rebecca.
>>  
>> Here is my personal view at this time, subject to further discussion with the
>> other Co-Chairs and the WG members‹
>>  
>> The TMCH is a means to an end. It is a database of trademarks meeting certain
>> minimum levels of verified quality. While the TMCH is regarded as a RPM it
>> provides no protection in and of itself  the protections come from two
>> related RPMs, Sunrise Registrations and the TM Claims Notice (recognizing
>> that certain other private protection measures, such as Donuts¹ DPML, are
>> also tied to TMCH registration).
>>  
>> The protection offered by Sunrise Registration is to give rights holders¹ the
>> ability to secure a domain in a new gTLD that is an exact match of their TM
>> prior to general availability of registrations, and thereby eliminate the
>> ability of a third party with no legitimate rights or interest to secure the
>> same domain for infringing purposes. If that domain name has been designated
>> as a Premium one by the registry operator then pricing can clearly have some
>> practical impact on the availability of the protection, with the degree of
>> impact varying with the price point.
>>  
>> Taking an extreme hypothetical, if initial registration of a particular
>> Premium domain  were set by the RO at $50,000 then the rights holder might
>> naturally feel that the protection held out by the availability of Sunrise
>> registration has been substantially diluted by the pricing, and decide that
>> it would be prudent to wait for general availability and try to secure the
>> domain then, or decline to register at all and simply file a URS or UDRP
>> action if another party secures the domain and uses it for infringing
>> purposes. And, as we know, the feeling among rights holders that Sunrise
>> Registrations are being used to unreasonably exploit them increases when
>> there is a very wide difference between the price set for the Sunrise period
>> versus that in  general availability, or if the Premium domain is a unique
>> non-dictionary term associated with a company or brand.
>>  
>> But is pricing within the remit of our WG, and if not is it within the remit
>> of the parallel Subsequent Procedures WG?
>>  
>> I will not answer the latter question because we have members and Co-Chairs
>> of that WG participating in this one and they are quite capable of sharing
>> their views. My own view is that it is probably not within the remit of this
>> WG to analyze or change the ³hands off² pricing policy established for the
>> new gTLD program, which has led to a very broad spectrum of registry pricing
>> and business models (it seems to be more of a subsequent procedures program
>> and applicant guidebook matter, rather than a direct RPM concern) .
>>  
>> However, I think it  may well be within the remit of this WG to analyze and
>> comment upon the impact of certain registry¹s Sunrise pricing models on the
>> effectiveness of Sunrise Registrations as an RPM, and it may also be within
>> the remit of this WG to recommend a system through which rights holders can
>> register concerns about certain registry pricing practices that dilute the
>> RPM¹s effectiveness (how the RO or ICANN should respond to such concerns is a
>> separate issue).
>>  
>> I hope those remarks spur some further discussion within this WG.
>>  
>> Best to all, Philip
>>  
>>  
>>  
>>  
>>  
>>  
>> Philip S. Corwin, Founding Principal
>> Virtualaw LLC
>> 1155 F Street, NW
>> Suite 1050
>> Washington, DC 20004
>> 202-559-8597/Direct
>> 202-559-8750/Fax
>> 202-255-6172/Cell
>>  
>> 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 Silver, Bradley
>> Sent: Friday, September 23, 2016 11:00 AM
>> To: Rebecca Tushnet; gnso-rpm-wg at icann.org
>> Subject: Re: [gnso-rpm-wg] TMCH review objectives
>>  
>> I would add that the question of pricing feeds into the concept of
>> effectiveness, because if the TMCH is serving as a database for registries to
>> target brand owners for higher pricing based on the value of their brands,
>> then this is antithetical to the TMCH¹s primary goal to provide protection
>> for verified right holders.
>>  
>> From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On
>> Behalf Of Rebecca Tushnet
>> Sent: Friday, September 23, 2016 10:26 AM
>> To: gnso-rpm-wg at icann.org
>> Subject: [gnso-rpm-wg] TMCH review objectives
>>  
>> Hello, all.  On the last WG call, concerns about pricing of domain names
>> during the Sunrise Period arose. This led to a question of whether pricing is
>> within the remit of this WG  and the broader question of what the purpose of
>> our TMCH review is.  There seemed to be a desire to focus on the TMCH¹s
>> effectiveness. The predicate question, then, is: effectiveness at what?  Here
>> are some suggestions for discussion: (1) minimizing the cost of operating the
>> system for all concerned; (2) minimizing the number of actions that
>> ultimately need to be brought against infringing registrants; (3) minimizing
>> the number of noninfringing registrants whose legitimate uses are blocked or
>> deterred.  If the system is reasonably balancing those objectives, I suggest,
>> then it is effective; potential changes should be directly related to
>> improving performance on one or more of these metrics without unduly
>> hampering the others.
>>  
>> Yours,
>> Rebecca Tushnet
>>  
>> Rebecca Tushnet
>> Georgetown Law
>> 703 593 6759
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