[gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today

Thu Apr 13 16:22:58 UTC 2017

I likewise agree.  If the goal is to give the aggrieved party a bona fide remedy, then there should be no issue.  The alleged abuse could be challenged just like tm owners can challenge alleged bogus and infringing domain names (as J.S has said).  I would support such a fix in the system.  But beyond that I see no need of opening the TMCH database (for the reasons that have already been articulated extensively over the past several days)

From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of J. Scott Evans via gnso-rpm-wg
Sent: Thursday, April 13, 2017 12:08 PM
To: Bret Fausett; gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today

Agreed. Obtaining the domain is the goal and the system should be designed to allow an aggrieved party to achieve that goal.

[ttps://inside.corp.adobe.com/content/dam/brandcenter/images/image002.gif]

J. Scott Evans

408.536.5336 (tel)

345 Park Avenue, Mail Stop W11-544

Director, Associate General Counsel

408.709.6162 (cell)

San Jose, CA, 95110, USA

Adobe. Make It an Experience.

jsevans at adobe.com<mailto:jsevans at adobe.com>

www.adobe.com<http://www.adobe.com>

From: <gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org>> on behalf of Bret Fausett <bret at uniregistry.com<mailto:bret at uniregistry.com>>
Date: Thursday, April 13, 2017 at 9:05 AM
To: "gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>" <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today

You’ll get no quarrel from me on imposing a cost. There are real costs involved for the companies that are required to review and adjudicate these disputes, so those costs should be reimbursed. I think challengers would be fine with the costs if the rewards were adjusted to ensure they had a better outcome (the domain in question). If they don’t get the domain at the end of the process, we are just counting on them to be working for the public good.

       Bret

On Apr 13, 2017, at 9:00 AM, J. Scott Evans <jsevans at adobe.com<mailto:jsevans at adobe.com>> wrote:

First, if a person challenges a Sunrise Registration at the registry and wins, they should be awarded the domain name. Why is it the cost of obtaining a domain name from a bad-faith Sunrise registrant gets everyone up in arms, but the enormous cost of preventing fraud and consumer confusion borne by trademark owners is seen as “just the cost of doing business in the online world”? I am all for finding cost-effective mechanism for a good faith registrant to obtain a domain name the was improperly registered under Sunrise, but there is going to be a cost.

J. Scott

<image001.gif>

J. Scott Evans

408.536.5336 (tel)

345 Park Avenue, Mail Stop W11-544

Director, Associate General Counsel

408.709.6162 (cell)

San Jose, CA, 95110, USA

Adobe. Make It an Experience.

jsevans at adobe.com<mailto:jsevans at adobe.com>

www.adobe.com<http://www.adobe.com/>

From: <gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org>> on behalf of Bret Fausett <bret at uniregistry.com<mailto:bret at uniregistry.com>>
Date: Thursday, April 13, 2017 at 8:55 AM
To: "gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>" <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today

to the extent there are issues with the bona fides of individual registrations, the underlying trademark registration, and its recordal in the TMCH (www.trademark‑clearinghouse.com/dispute<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fclearinghouse.com%2Fdispute&data=02%7C01%7C%7Cd34c513ef31a415c792b08d482858b3f%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636276957460088884&sdata=XBslWFTeBK1aE23jA09owCwmDa7iiVCRfvuev0%2FVVhU%3D&reserved=0>) are already subject to challenge.  Would you be able to help this group understand why you view these as insufficient measures?

I think any challenge mechanism that relies on good samaritans for enforcement is insufficient.

If I am pre-empted in my registration of “internet.TLD” or “online.TLD,” because someone had registered them in sunrise with “marks” that should not have been approved, my options at that point are to file a TMCH dispute, which costs at least $200 and will last for at least a month. At the end of that process, even if I am right, the trademark is marked as invalid, but I don’t get the domain name that I was blocked from registering.

If I want to file a sunrise challenge with the registry, depending on the registry’s policy, I may be awarded the domain name, but I am not guaranteed to be awarded the domain name. Those processes also take time and money.

So it really takes a determined individual or company, with time and money, to pursue these challenges.

If I were adjusting these processes for Round 2, I would give the complainant a presumptive right to register the challenged domains if and after the TMCH registration was deemed invalid. That would provide better motivation to pursue the existing remedies.

      - Bret

________________________________

Confidentiality Notice:
This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner.

________________________________

***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20170413/f17f565e/attachment-0001.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.gif
Type: image/gif
Size: 1576 bytes
Desc: image001.gif
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20170413/f17f565e/image001-0001.gif>