[gnso-rpm-wg] TMCH Blog

Thu Feb 2 17:42:36 UTC 2017

Agreed.

J. Scott Evans | Associate General Counsel - Trademarks, Copyright,
Domains & Marketing |
Adobe 
345 Park Avenue
San Jose, CA 95110
408.536.5336 (tel), 408.709.6162 (cell)
jsevans at adobe.com
www.adobe.com

On 2/2/17, 9:31 AM, "gnso-rpm-wg-bounces at icann.org on behalf of
trachtenbergm at gtlaw.com" <gnso-rpm-wg-bounces at icann.org on behalf of
trachtenbergm at gtlaw.com> wrote:

>George,
>
>First of all, the article only discusses US trademark law.  Trademark law
>is different in every country and in many countries use is not required,
>at least for registration.
>
>With respect to you argument for setting a value on the trademark, how
>could anyone ever agree on the value of a mark, especially as the value
>might be different in different countries since trademark rights are
>territorial.  I don¹t think your proposed auction system would be fair or
>practical for that matter and would create a system where only the
>biggest companies could protect their trademark rights in new gTLDS
>through the RPMs.
>
> Best regards,
>
>Marc H. Trachtenberg
>Shareholder 
>Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL
>60601
>Tel 312.456.1020 
>Mobile 773.677.3305
>trachtenbergm at gtlaw.com | www.gtlaw.com
>
>
>
>
>
>-----Original Message-----
>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 11:24 AM
>To: gnso-rpm-wg
>Subject: Re: [gnso-rpm-wg] TMCH Blog
>
>I think I might have posted a link to this article before, but it makes
>sense to post it again:
>
>https://urldefense.proofpoint.com/v2/url?u=http-3A__www.fr.com_news_dont-2
>Dbe-2Dconfused-2Dabout-2Dwhether-2Dyour-2Dtrademark-2Dis-2Dused_&d=DwIGaQ&
>c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=4
>PK5UuYljzArBjy5tIDLovRAhINmtmr4XXMj97J-0WQ&s=hdnKxcys8EdogaH3c0lDkr6q5Wqxt
>KOnSwHCT8dqeek&e= 
>
>regarding bona fide use vs. "de minimis" uses. As the article correctly
>states "Plainly, mere token use made solely to reserve a right in a mark
>can no longer meet the statutory definition."
>
>If one thinks about the economics, suppose a TM has a value of $X, and
>the value of a sunrise registration of a domain name has a value of $Y.
>The "gaming" we are seeing, in this framework, happens when very marginal
>trademarks (i.e. X is close to zero) are used to obtain domain names in
>sunrise periods, where Y is (much) greater than X.
>
>Indeed, the trademark registrations exist not for protection of commerce
>in an ordinary trade, but instead solely for the purpose of obtaining the
>more valuable domain names.
>
>The only way to remove these incentives to game the system is to set the
>bar high enough so that only marks with "high" values of X are allowed to
>participate in the sunrise periods (low values of X could still
>participate in other aspects of the TMCH, e.g. getting notification of
>domains that match those marks, etc.).
>
>How do we know which marks have "high" values of X? We can see "obvious"
>ones like Apple, Google, Microsoft, Lego, Verizon, Yahoo, Adobe, Disney,
>etc., but where does one draw the line between them and the marginal
>marks, etc.? Economics tells us there is one way --- set a price, or have
>the market set that price.
>
>If one sets the price high enough (say $50,000+), that wouldn't deter the
>"superbrands" like those mentioned above, but it would price out the
>marginal ones. Of course, every owner of a "marginal" brand likes to
>think of their own mark as a "superbrand" in their eyes (i.e. some in the
>IP community cling to the mantra of "a trademark is a trademark is a
>trademark", as if their marks are as strong or as valuable as the
>superbrands above).
>
>The other option is to have the market set a price, via some auction
>mechanism. In order to protect the brands most subject to cybersquatting,
>sunrise "privileges" were granted by ICANN (although these privileges do
>NOT exist in trademark law, requiring first dibs, etc.; TM law provides
>curative measures, not prior restraint). A quota can be set, perhaps 500
>or 1000 marks in total that are protected with sunrise privileges (in
>line with the typical number of sunrise registrations we've observed).
>The TMCH (or ICANN) could then auction off those slots. Companies that
>experience a lot of cybersquatting (and would want sunrise protection, to
>reduce future UDRP/URS or other legal costs) and that have a high value
>of X would bid high enough to obtain that privilege. Companies that don't
>experience a lot of cybersquatting wouldn't value that sunrise privilege,
>and thus wouldn't bid (or would bid a lower amount).
>
>Importantly, marginal TM holders (low values of X) that game the existing
>system would be priced out under either of the options above
>--- the economics of their behaviour have been ruined.
>
>In conclusion, one really needs to think about the economics, and using
>the market mechanism to drive out the unwanted behaviour. Bad actors are
>usually rational, and are driven by economics. It's time that policy
>designers (us!) take these economics explicitly into account.
>
>Sincerely,
>
>George Kirikos
>416-588-0269
>https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIGaQ
>&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=
>4PK5UuYljzArBjy5tIDLovRAhINmtmr4XXMj97J-0WQ&s=vtt5wji_N4uRw7Cx_7ARATR_dMaQ
>YhTAGMHfczMY7gE&e=
>
>
>
>
>
>
>On Thu, Feb 2, 2017 at 11:21 AM, Scott Austin <SAustin at vlplawgroup.com>
>wrote:
>> +1. As if recent events involving Pakistan based filings were not
>> +enough to
>> signal a need for reform.
>> Scott
>>
>>
>> -------- Original Message --------
>> From: "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg at icann.org>
>> Date: Thu, Feb 2, 2017, 11:10 AM
>> To: Jonathan Frost <jonathan at get.club>
>> CC: gnso-rpm-wg <gnso-rpm-wg at icann.org>
>> Subject: Re: [gnso-rpm-wg] TMCH Blog
>>
>> 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://urldefense.proofpoint.com/v2/url?u=http-3A__domainnamewire.co
>> m_2014_02_10_how-2Dcommon-2Dwords-2Dlike-2Dpizza-2Dmoney-2Dand-2Dshopp
>> ing-2Dended-2Dup-2Din-2Dthe-2Dtrademark-2Dclearinghouse-2Dfor-2Dnew-2D
>> tlds_&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt
>> 7T1dG3NjBzCxm1c&m=4PK5UuYljzArBjy5tIDLovRAhINmtmr4XXMj97J-0WQ&s=gUS0Y1
>> qs0uQa-4UaqMZLVNrNDRB6CRaIHhnqaWFqBBA&e=
>>
>>
>>
>> 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: jonathan at get.club
>>
>> Website: www.get.club
>>
>> <image002.jpg>
>>
>>
>>
>> Please be advised that this communication is confidential. The
>> information contained in this e-mail, and any attachments, may also be
>> attorney-client privileged and/or work product confidential.  If the
>> reader of this message is not the intended recipient, you are hereby
>> notified that any review, retransmission, dissemination or other use
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>> email at jonathan at get.club and delete the original message.
>>
>>
>>
>> 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
>>
>>
>>
>> I¹m tempted to say that is one of *** craziest things I¹ve 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
>>
>> 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 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://urldefense.proofpoint.com/v2/url?u=https-3A__www.thedomains.co
>> m_2017_02_01_the-2Dtrademark-2Dclearinghouse-2Dworked-2Dso-2Dwell-2Don
>> e-2Dcompany-2Dgot-2D24-2Dnew-2Dgtld-2Dusing-2Dthe-2Dfamous-2Dtrademark
>> -2Dthe_&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrK
>> Xt7T1dG3NjBzCxm1c&m=4PK5UuYljzArBjy5tIDLovRAhINmtmr4XXMj97J-0WQ&s=vS2e
>> lEVmYi7ll3ryRYD15NBBzmsoyn2kruUg-iqKUPU&e=
>>
>>
>>
>> The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD
>> using The Famous Trademark ³The²
>>
>> February 1, 2017 by Michael Berkens 5 Comments
>>
>> The Trademark ClearingHouse (TMCH) 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 ³the²
>>
>> Actually there maybe no better example than those domain names
>> obtained on the world-famous trademarks as of the word²the²,  which is
>> the most used word in the English language.
>>
>> The world-famous trademark for the word ³the² was obtained by
>> Goallover Limited of London who according to DomainTools.com owns an
>> amazing amount of domain names approaching nearly 100, but was able to
>> get all of the following new gTLD¹s using their globally well-known
>> trademark on the word ³the² 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 ³the² new gTLD
>> domain names in Sunrise but apparently did not apply for more.
>>
>> Somehow the company doesn¹t appear to own the domain name The.Com
>>
>> For all Trademark Holders its nice to know the world is a safer place:
>>
>> the.car
>> the.career
>> the.cars
>> the.casino
>> the.doctor
>> the.earth
>> the.foundation
>> the.furniture
>> the.game
>> the.group
>> the.ltd
>> the.mba
>> the.pub
>> the.report
>> the.run
>> the.school
>> the.services
>> the.storage
>> the.tools
>> the.university
>> the.watch
>> the.wine
>>
>>
>>
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