[bc-gnso] CircleID Article on USG's Proposed Scorecard

[Phil Corwin]

PS-I think my math on the ACME example is correct, but if it's off then someone should chime in and correct it . But the point is the same - there are lots and lots of potential typo- variants of any given trademark, and the longer the trademark is in terms of number of letters the faster they multiply.

From: owner-bc-gnso at icann.org [mailto:owner-bc-gnso at icann.org] On Behalf Of Phil Corwin
Sent: Thursday, February 03, 2011 5:42 PM
To: Steve DelBianco
Cc: 'bc - GNSO list'
Subject: RE: [bc-gnso] CircleID Article on USG's Proposed Scorecard

Thanks very much, Steve, for the kind remarks on my writing style.

My problem with the typographical variants proposal is that I don't know what it means because this is the first time I've ever seen it -- but there doesn't seem to be any limit on the scope of the claim that a trademark owner could assert for clearinghouse registration purposes. At least with the IRT recommendations there was a final report and a variety of forums to assist in understanding all the nuances, but the USG has put some ideas on the table that have never received that kind of debate and analysis.

If you have a trademark and put it through a name-spinning program (the type that domain tasters used to use before ICANN policy effectively eradicated most of it) and then do the math on all the possible variants (alternate letters, additional letters, deleted letters, inserted numbers, etc.) you can quickly reach a list of hundreds of  thousands, or even millions, of potential variants for a single trademarked term. For example, for just a four letter trademark, let's say "ACME", if you registered all the variants of just substituting a different letter in each of the four positions, the number of potential variants in the English alphabet would be 26x26x26x26=456,976!  None of these variants on their own is necessarily infringing under trademark law, especially if they are being used for a good or service that has nothing to do with the base trademark. Yet the receipt of that warning letter may be enough to spook a potential registrant into not registering the domain even if they intended and would be committing no infringement. I don't think that trademark owners should be permitted to file preemptive  claims on vast swaths of potential domain names in this manner.

Put another way, if .com was subject to this type of clearinghouse, and if there were no limitations on the variations a trademark owner could file, then there's a good chance we might never have had google.com or lots of other made up names of Internet companies because they would have been some registered variant of an existing trademark and would have received that warning letter.

As for the subsequent effect of receipt of a warning letter in a subsequent URS or UDRP proceeding, that's something else we don't know - but I wouldn't be surprised to see some attorneys argue that ignoring it and proceeding with the registration was evidence of bad faith.

I don't know that there's any magic formula for determining when a given domain is "confusingly similar" to a trademark, but it's my hope that any UDRP reform effort will at least look at the subject and see if there's some "degrees of separation" test that can be devised to provide a presumption that would weigh against a registrant when there's close proximity (in combination with other factors relevant to infringement), and in favor of the registrant as the proximity decreases. I think that kind of semi-bright line test would be helpful to both complainants and registrants, but it will take a lot of exploratory work to see if it's viable.



From: Steve DelBianco [mailto:sdelbianco at netchoice.org]
Sent: Thursday, February 03, 2011 2:06 PM
To: Phil Corwin
Cc: 'bc - GNSO list'
Subject: Re: [bc-gnso] CircleID Article on USG's Proposed Scorecard

Phil - well written piece, as usual.

But please help me understand one of the  'alarms' you sounded in here.

The USG is saying that TM owners could add typographical variants (and TMs without substantive review) into the Clearinghouse database.    One effect of this would be that registries would send more automated emails form their TM Claims Service - and the USG says this service should continue after sunrise period.

But I don't see how those typographical variants could also be used in URS or UDRP actions, as you suggest in your article.

In other words, does a string entered in the Clearinghouse database somehow acquire legal stature of a registered trademarks?

If not, what's the real harm of sending more TM Claims warning emails to registrants?

Thanks,
Steve

--
Steve DelBianco
Executive Director
NetChoice
http://www.NetChoice.org and http://blog.netchoice.org
+1.202.420.7482


From: Phil Corwin <pcorwin at butera-andrews.com<mailto:pcorwin at butera-andrews.com>>
Date: Wed, 2 Feb 2011 23:13:16 +0000
To: "bc-gnso at icann.org<mailto:bc-gnso at icann.org>" <bc-gnso at icann.org<mailto:bc-gnso at icann.org>>
Subject: [bc-gnso] CircleID Article on USG's Proposed Scorecard

BC members should be aware that I have posted an article regarding the USG's proposed "scorecard" at http://www.circleid.com/posts/us_scorecard_for_brussels_draconian_trademark_rules_end_of_privates_sector/

Those who agree or disagree with any part (or all) of it should feel free to post comments at the Circle ID website, as well as on this list. Two comments have already been posted since it was posted this afternoon.

Regards to all,
Philip

Philip S. Corwin
Partner
Butera & Andrews
1301 Pennsylvania Ave., NW
Suite 500
Washington, DC 20004
202-347-6875 (office)
202-347-6876 (fax)
202-255-6172 (cell)
"Luck is the residue of design." -- Branch Rickey

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/bc-gnso/attachments/20110203/76496a49/attachment.html>