[gnso-rpm-wg] Updated TMCH Charter Questions tabulated categories document - 2 December 2016

Greg Shatan gregshatanipc at gmail.com
Mon Dec 19 16:38:19 UTC 2016


Let's also remember that the TMCH is just a registry.  The policies that
use the TMCH should be discussed separately.

On Mon, Dec 19, 2016 at 11:10 AM, jonathan matkowsky <
jonathan.matkowsky at riskiq.net> wrote:

> +1 - Physical property is not the only type of *asset* recognized under international
> accounting standards <http://www.iasplus.com/en/standards/ias/ias38>.
> Before someone acquires a domain asset, they are being put on notice that
> someone may already have a different type of relevant asset, namely a
> trademark right.  It's just a clearinghouse, not an arbiter of rights.
>
>
> <http://riskiq.com/>
>
>
>
> *jonathan matkowsky*,
>
> vp – ip & brand security
>
> usa:: 1.347.467.1193 <(347)%20467-1193> | office:: +972-(0)8-926-2766
> <+972%208-926-2766>
>
> emergency mobile:: +972-(0)54-924-0831 <+972%2054-924-0831>
>
> company reg. no. 514805332
> <http://havarot.justice.gov.il/CompaniesDetails.aspx?id=514805332>
>
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>
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> <https://plus.google.com/+Riskiq/posts>
>
>
>
> On Mon, Dec 19, 2016 at 10:28 AM, J. Scott Evans <jsevans at adobe.com>
> wrote:
>
>> Paul:
>>
>> I disagree. A trademark is in fact a property right.
>>
>> Sent from my iPhone
>>
>> On Dec 18, 2016, at 10:59 PM, Paul at law.es ZIMBRA <paul at law.es> wrote:
>>
>> I'm replying to a few of the top emails
>>
>> First, you do t know the use of the domain.  That is rather the point.
>> By allowing the T,CH to be used as a preventative tool we must weigh the
>> balances of the exclusive right of use represented un the trademark and the
>> rights of domain registrants to use the domain for any other purpose.
>>
>> Second, Marie, a trademark is NOT a property right.  It is a right of
>> exclusive use granted by governmental authority over the use of a term,
>> word, or other element in association with a specific product or service.
>> AND that right is LIMITED jurisdictionally.
>>
>> But, again, at this juncture we are getting ahead of ourselves in this
>> discussion.
>>
>> Paul Keating
>>
>> On 19 Dec 2016, at 7:16 AM, Jonathan Agmon <jonathan.agmon at ip-law.legal>
>> wrote:
>>
>> How do you know what the intended use of the domain name will be? How
>> will you ensure the intended use is maintained?
>>
>>
>>
>>
>>
>>
>>
>> <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png>
>>
>> Jonathan Agmon (胡韩森)
>>
>> Advocate, Director
>>
>> Attorney and Counsellor at Law (admitted in New York)
>>
>> jonathan.agmon at ip-law.legal
>>
>> www.ip-law.legal
>>
>> *T* SG +65 6532 2577 <+65%206532%202577>
>>
>> *T* US +1 212 999 6180 <(212)%20999-6180>
>>
>> *T* IL +972 9 950 7000 <+972%209-950-7000>
>>
>> *F *IL +972 9 950 5500 <+972%209-950-5500>
>>
>> Soroker Agmon Nordman Pte Ltd.
>>
>> 133 New Bridge Road, #13-02, 059413 SINGAPORE
>>
>> 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
>>
>> This message is confidential. It may also be privileged or otherwise
>> protected by work product immunity or other legal rules. If you have
>> received it by mistake, please let us know by e-mail reply and delete it
>> from your system; you may not copy this message or disclose its contents to
>> anyone. Please send us by fax any message containing deadlines as incoming
>> e-mails are not screened for response deadlines. The integrity and security
>> of this message cannot be guaranteed on the Internet.
>>
>>
>>
>> *From:* Reg Levy [mailto:reg at mmx.co <reg at mmx.co>]
>> *Sent:* Monday, December 19, 2016 8:09 AM
>> *To:* Marie Pattullo <marie.pattullo at aim.be>
>> *Cc:* John C. McElwaine <john.mcelwaine at nelsonmullins.com>; Philip S.
>> Corwin <psc at vlaw-dc.com>; J. Scott Evans <jsevans at adobe.com>; Paul
>> Keating <Paul at law.es>; Jonathan Agmon <jonathan.agmon at ip-law.legal>;
>> James Brian Beckham <brian.beckham at wipo.int>; George Kirikos <
>> icann at leap.com>; gnso-rpm-wg at icann.org
>> *Subject:* Re: [gnso-rpm-wg] Updated TMCH Charter Questions tabulated
>> categories document - 2 December 2016
>>
>>
>>
>> I agree. Limiting domain names that match trademarks to only their uses
>> in the offline world (no apple.food) also would violate the stated purpose
>> of the New gTLD Program—to promote competition and consumer choice. If the
>> TMCH is just going to create a carbon copy of .com in every TLD, we’ve all
>> wasted a number of years.
>>
>>
>>
>> /R
>>
>>
>>
>> Reg Levy
>> VP Compliance + Policy | Minds + Machines Group Limited
>> C: +1-310-963-7135 <(310)%20963-7135>
>> S: RegLevy2
>>
>> Current UTC offset: -8
>>
>>
>>
>> On 13 Dec 2016, at 07:34, Marie Pattullo <marie.pattullo at aim.be> wrote:
>>
>>
>>
>> I’ve spent the afternoon back reading the threads here and I have to hold
>> my hands up and admit I’m confused. We all know that ICANN isn’t a
>> legislative body, and we all know that it can’t (and I very much doubt it
>> would want to!) make law. Various laws in the various jurisdictions around
>> the world include various TM laws, which in turn include rules and
>> practises for how and why TMs are granted. That’s what the TMCH is - a
>> repository of TMs that have been legally granted. No?
>>
>>
>>
>> And unless and until a TM lapses, or is cancelled, it’s as much a legal
>> property right as any other. It can’t be OK for an independent
>> administrative repository of TMs to decide to ignore some legal property
>> rights, surely? If the TMCH were just a private list with no function then
>> we’d be on different ground, but given that it’s the gatekeeper for
>> accessing certain RPMs I can’t see under what basis this administrative
>> repository could be allowed to choose which property rights are allowed
>> through the gate and which aren’t.
>>
>>
>>
>> I’m sorry if this is naïve, but I honestly don’t understand how the TMCH
>> can be the court of appeal for the legality of TM rights. Isn’t that why we
>> have actual courts? And holding it out to be some form of appeal body is
>> surely only going to confuse non-TM people, like most registrants, as to
>> its “powers”.
>>
>>
>>
>> Following that, and John’s questions, what are we trying to do? Limit any
>> DN containing a TM to uses that the TM has in the offline world? But not
>> limiting any other word to uses it may have offline? So isn’t that actually
>> discriminating against words that are in TMs against words that aren’t -
>> dictionary, arbitrary, proper or just plain made up? What are we actually
>> trying to do?
>>
>>
>>
>> I’m sorry for the TLDR post and sorry also for my confusion. I plead
>> fuzziness of brain brought on by sociable Belgian cold viruses.
>>
>>
>>
>> Thanks
>>
>>
>>
>> Marie
>>
>>
>>
>> <image007.png>
>>
>>
>>
>> *Marie Pattullo*
>>
>> *Senior Trade Marks and Brand Protection Manager*
>>
>> *AIM** - **European Brands Association*
>>
>>
>>
>> *9 avenue des Gaulois B-1040 Brussels Tel : + 32 2 736 03 05
>> <+32%202%20736%2003%2005> *
>>
>> *Mobile: + 32 496 61 03 95 <+32%20496%2061%2003%2095>*
>>
>> *EU Transparency register ID no.: 1074382679-01*
>>
>> *Visit our web site at **www.aim.be* <http://www.aim.be/>
>>
>> *Follow us on:*
>>
>> <image008.png> <http://twitter.com/AIMbrands>  <image009.png>
>> <http://www.linkedin.com/company/aim---european-brands-association?trk=company_name>
>>
>>
>>
>>
>>
>>
>>
>> -----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 John McElwaine
>> Sent: mardi 13 décembre 2016 16:06
>> To: Phil Corwin; J. Scott Evans; Paul Keating; Jonathan Agmon; Beckham,
>> Brian; George Kirikos; gnso-rpm-wg at icann.org
>> Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated
>> categories document - 2 December 2016
>>
>>
>>
>> Phil,
>>
>>
>>
>> Thanks for this.  I'm just seeking some clarification:   Does this
>> question seek whether the TMCH should be limited in its application to
>> Trademark Claims Notices and Sunrise Processes in which the domain name
>> being registered is going to be used in a manner that relates to the goods
>> and services contained in the registration, if the registration consists of
>> a word found in a dictionary?
>>
>>
>>
>> Kind regards,
>>
>>
>>
>> John
>>
>>
>>
>> -----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 Phil Corwin
>>
>> Sent: Tuesday, December 13, 2016 8:58 AM
>>
>> To: J. Scott Evans; Paul Keating; Jonathan Agmon; Beckham, Brian; George
>> Kirikos; gnso-rpm-wg at icann.org
>>
>> Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated
>> categories document - 2 December 2016
>>
>>
>>
>> Good day to all. I have been tied up this morning on the call of the WS2
>> Jurisdiction subgroup.
>>
>>
>>
>> The proposed compromise language agreed upon by the co-chairs and
>> suggested for your consideration as a path forward so we can get the
>> questions out and get on to the work of reviewing and understanding the
>> answers is as follows:
>>
>>
>>
>>         Should the scope of the TMCH be limited to apply only to the
>> categories of goods and services in which the dictionary term(s) within a
>> trademark are protected? If so, how?  In responding to this question, you
>> should note that the original submitters of the related       charter
>> questions seem to be been particularly concerned about "generic terms"
>> representing the common or class name for the    goods and services.
>>
>>
>>
>> We hope this proposed formulation will prove acceptable to members of
>> this WG. Thanks for your consideration.
>>
>>
>>
>> Best to all, Philip
>>
>>
>>
>> Philip S. Corwin, Founding Principal
>>
>> Virtualaw LLC
>>
>> 1155 F Street, NW
>>
>> Suite 1050
>>
>> Washington, DC 20004
>>
>> 202-559-8597 <(202)%20559-8597>/Direct
>>
>> 202-559-8750 <(202)%20559-8750>/Fax
>>
>> 202-255-6172 <(202)%20255-6172>/Cell
>>
>>
>>
>> Twitter: @VlawDC
>>
>>
>>
>> "Luck is the residue of design" -- Branch Rickey
>>
>>
>>
>>
>>
>> -----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 J. Scott Evans
>>
>> Sent: Tuesday, December 13, 2016 7:24 AM
>>
>> To: Paul Keating; Jonathan Agmon; Beckham, Brian; George Kirikos;
>> gnso-rpm-wg at icann.org
>>
>> Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated
>> categories document - 2 December 2016
>>
>> Importance: High
>>
>>
>>
>> Phil?
>>
>>
>>
>>
>>
>> J. Scott Evans | Associate General Counsel - Trademarks, Copyright,
>> Domains & Marketing | Adobe
>>
>> 345 Park Avenue
>>
>> San Jose, CA 95110
>>
>> 408.536.5336 <(408)%20536-5336> (tel), 408.709.6162 <(408)%20709-6162>
>> (cell)
>>
>> jsevans at adobe.com
>>
>> www.adobe.com
>>
>>
>>
>>
>>
>>
>>
>>
>>
>>
>>
>>
>>
>>
>>
>>
>>
>> On 12/13/16, 4:18 AM, "Paul Keating" <Paul at law.es> wrote:
>>
>>
>>
>> >Please circulate it prior to the call.
>>
>> >
>>
>> >On 12/13/16, 1:10 PM, "J. Scott Evans" <jsevans at adobe.com> wrote:
>>
>> >
>>
>> >>The Co-Chairs have a proposed compromise revision drafted by Phil that
>>
>> >>we will propose to the group.
>>
>> >>
>>
>> >>J. Scott
>>
>> >>
>>
>> >>J. Scott Evans | Associate General Counsel - Trademarks, Copyright,
>>
>> >>Domains & Marketing | Adobe
>>
>> >>345 Park Avenue
>>
>> >>San Jose, CA 95110
>>
>> >>408.536.5336 <(408)%20536-5336> (tel), 408.709.6162 <(408)%20709-6162>
>> (cell) jsevans at adobe.com
>>
>> >>www.adobe.com
>>
>> >>
>>
>> >>
>>
>> >>
>>
>> >>
>>
>> >>
>>
>> >>
>>
>> >>
>>
>> >>
>>
>> >>On 12/13/16, 4:06 AM, "Paul Keating" <Paul at law.es> wrote:
>>
>> >>
>>
>> >>>Good suggestion J. Scott.
>>
>> >>>
>>
>> >>>Can we live with the question as follows?
>>
>> >>>
>>
>> >>>Should the scope of the TMCH be limited in its application to
>>
>> >>>trademarks containing dictionary terms which are generic or
>>
>> >>>descriptive?  If so how?
>>
>> >>>
>>
>> >>>
>>
>> >>>
>>
>> >>>Paul
>>
>> >>>
>>
>> >>>
>>
>> >>>On 12/13/16, 12:51 PM, "J. Scott Evans" <jsevans at adobe.com> wrote:
>>
>> >>>
>>
>> >>>>Again, and at the risk of repeating myself. And, as Brian Beckham
>>
>> >>>>pointed out this morning, there are quite a few of us in the ICANN
>>
>> >>>>community and on the list that understand the nuances of generic,
>>
>> >>>>descriptive, arbitrary and fanciful marks as land out in Abercrombie
>>
>> >>>>by Learned Hand oh so long ago. However, in the bigger picture
>>
>> >>>>policy debate most stakeholders do not understand. They believe that
>>
>> >>>>a term is "generic" if it is a WORD with a meaning and are quite
>>
>> >>>>frustrated when they find that they cannot own ACETOOLS.COM for
>>
>> >>>>their site that is for really cool tools. This misunderstanding is
>>
>> >>>>then conflated in the policy debate and causes all kinds of
>>
>> >>>>confusion and misunderstanding. Hence, I believe the better term is
>>
>> >>>>"dictionary term" which under the Abercrombie factors can be either
>>
>> >>>>generic, descriptive or arbitrary depending on the circumstances.
>>
>> >>>>
>>
>> >>>>J. Scott
>>
>> >>>>
>>
>> >>>>J. Scott Evans | Associate General Counsel - Trademarks, Copyright,
>>
>> >>>>Domains & Marketing | Adobe
>>
>> >>>>345 Park Avenue
>>
>> >>>>San Jose, CA 95110
>>
>> >>>>408.536.5336 <(408)%20536-5336> (tel), 408.709.6162
>> <(408)%20709-6162> (cell) jsevans at adobe.com
>>
>> >>>>www.adobe.com
>>
>> >>>>
>>
>> >>>>
>>
>> >>>>
>>
>> >>>>
>>
>> >>>>
>>
>> >>>>
>>
>> >>>>
>>
>> >>>>
>>
>> >>>>On 12/13/16, 3:44 AM, "Paul Keating" <Paul at law.es> wrote:
>>
>> >>>>
>>
>> >>>>>Jonathan,
>>
>> >>>>>
>>
>> >>>>>Not to be nit-picky but your definition is incorrect.
>>
>> >>>>>
>>
>> >>>>>Generic:  Relating to or characteristic of a whole group or class;
>>
>> >>>>>general, as opposed to specific or special.  (Black's Law
>>
>> >>>>>Dictionary)
>>
>> >>>>>
>>
>> >>>>>A 'generic term" is one which is commonly used as the name or
>>
>> >>>>>description of a kind of goods and it is generally accepted that a
>>
>> >>>>>generic term is incapable of achieving trade name protection.  For
>>
>> >>>>>example, any single seller can not have trademark rights in
>>
>> >>>>>"television" or "oven." When a seller is given exclusive rights to
>>
>> >>>>>call something by its recognized name, it would amount to a
>>
>> >>>>>practical monopoly on selling that type of product.
>>
>> >>>>>Even established trademarks can lose their protection if they are
>>
>> >>>>>used generically. For example (in U.S.), thermos and aspirin.
>>
>> >>>>>
>>
>> >>>>>A descriptive term (which many people refer to as a "dictionary
>>
>> >>>>>term") is merely that - a term used in its descriptive sense (e.g.
>>
>> >>>>>"Redbarn" is descriptive for selling red barns but not for hotels).
>>
>> >>>>>
>>
>> >>>>>Treatment in differing jurisdictions complicates matters.  For
>>
>> >>>>>example, the term "donut" is a trademark in Spain for donuts.  It
>>
>> >>>>>was obtained way back when when the registrant saw donuts during a
>>
>> >>>>>visit to the US, returned to Spain and began producing them and
>>
>> >>>>>registered the trademark.
>>
>> >>>>>
>>
>> >>>>>Thus, the term has nothing to do with consumer perception of source.
>>
>> >>>>>
>>
>> >>>>>Moreover, most generic terms are by definition "in the dictionary".
>>
>> >>>>>
>>
>> >>>>>The problem I encounter most with generic/descriptive terms are in
>>
>> >>>>>the context of figurative marks.  Although the USPTO is getting
>>
>> >>>>>better at requiring disclaimers, they were not so diligent in the
>>
>> >>>>>future.  In my experience, most other jurisdictions do not
>>
>> >>>>>rigorously impose disclaimer obligations.
>>
>> >>>>>
>>
>> >>>>>Another source of constant frustration is with Section 2(f).
>>
>> >>>>>Again, while the USPTO appears to becoming more diligent they were
>>
>> >>>>>simply horrible in the past.  Other jurisdictions do not have a
>>
>> >>>>>similar provision and, for example, France, has a terrible
>>
>> >>>>>reputation for registering even the most descriptive (and even
>>
>> >>>>>generic) terms.
>>
>> >>>>>
>>
>> >>>>>
>>
>> >>>>>I think the question regarding generic marks in the TMCH has merit
>>
>> >>>>>and should be discussed and this thread is but one example of why.
>>
>> >>>>>Again, whether we reach conclusions as to the question is a
>>
>> >>>>>different issue for a different day.
>>
>> >>>>>
>>
>> >>>>>
>>
>> >>>>>Paul Keating
>>
>> >>>>>
>>
>> >>>>>
>>
>> >>>>>On 12/13/16, 12:12 PM, "Jonathan Agmon"
>>
>> >>>>><jonathan.agmon at ip-law.legal>
>>
>> >>>>>wrote:
>>
>> >>>>>
>>
>> >>>>>>All,
>>
>> >>>>>>
>>
>> >>>>>>Just to contribute another angle and perhaps a helpful example.
>>
>> >>>>>>
>>
>> >>>>>>I think that dictionary words and generic terms are two different
>>
>> >>>>>>species. A dictionary word is a word that is defined in the
>>
>> >>>>>>dictionary.
>>
>> >>>>>>For example the word "apple" is defined as "a fruit (as a star
>>
>> >>>>>>apple) or other vegetative growth". A generic term is a legal
>>
>> >>>>>>standard in trademark law denoting a mark whose source cannot be
>>
>> >>>>>>identified by consumers.
>>
>> >>>>>>And
>>
>> >>>>>>if consumers think that a single source exists for that term then
>>
>> >>>>>>by law the term is not generic. Therefore, in this example, APPLE,
>>
>> >>>>>>a dictionary word by all accounts, may be a dictionary word for
>>
>> >>>>>>fruit, is not a generic term and will in all likelihood be
>>
>> >>>>>>considered a strong trademark for computers.
>>
>> >>>>>>
>>
>> >>>>>>This is just one example and you should consider that the term
>>
>> >>>>>>"generic"
>>
>> >>>>>>as a term of art in trademark law. It has nothing to do with
>>
>> >>>>>>dictionary words. Moreover, some dictionary words can be weak
>>
>> >>>>>>trademarks at one time and strong trademarks at another time.
>>
>> >>>>>>
>>
>> >>>>>>You can consider for example the marks NYLON or XEROX. You can
>>
>> >>>>>>find both of them in the dictionary. The term NYLON was an
>>
>> >>>>>>invented mark, invented in 1935 by DuPont. It arguably became
>>
>> >>>>>>generic (from a trademark
>>
>> >>>>>>perspective) when consumers all started referring to synthetic
>>
>> >>>>>>polymers from every manufacture (not just DuPont) as Nylon.  XEROX
>>
>> >>>>>>invented a photocopying machine. The term came close to turning
>>
>> >>>>>>generic when in the eighties consumers used the verb "Xeroxing"
>>
>> >>>>>>instead of "photocopying".
>>
>> >>>>>>Xeorx, the company changed that and today by all accounts the mark
>>
>> >>>>>>XEROX is not generic but rather a trademark for photocopying
>>
>> >>>>>>machines.
>>
>> >>>>>>
>>
>> >>>>>>Taking the above into account ,the policies below state "generic
>>
>> >>>>>>or descriptive" not generic or dictionary words. The term
>>
>> >>>>>>descriptive is another term of art in trademark law, which refers
>>
>> >>>>>>to a trademark that describes the goods it is applied to. The
>>
>> >>>>>>examples of "toy, shop, cleaner, lawyer..." are only descriptive
>>
>> >>>>>>for the relevant goods or services they are attached to.
>>
>> >>>>>>Non-lawyers would immediately associate these terms with their
>>
>> >>>>>>respective meaning.  But, these terms can serve as trademarks too.
>>
>> >>>>>>It all depends on the circumstances and consumer perception. One
>>
>> >>>>>>last example would be the use of TOY on a yogurt product.
>>
>> >>>>>>Check out the attachment - the term JOY is applied to a yogurt
>>
>> >>>>>>product.
>>
>> >>>>>>While the term JOY can be descriptive of a feeling, it is not
>>
>> >>>>>>descriptive for yogurt products. So long as consumers don't call
>>
>> >>>>>>any yogurt product JOY, then it is also not generic.
>>
>> >>>>>>
>>
>> >>>>>>I hope this helps.
>>
>> >>>>>>
>>
>> >>>>>>
>>
>> >>>>>>
>>
>> >>>>>>
>>
>> >>>>>>
>>
>> >>>>>>
>>
>> >>>>>>
>>
>> >>>>>>
>>
>> >>>>>>Jonathan Agmon(???)
>>
>> >>>>>>Advocate, PARTNER
>>
>> >>>>>>jonathan.agmon at ip-law.legal
>>
>> >>>>>>www.ip-law.legal
>>
>> >>>>>>Soroker Agmon Nordman Pte Ltd.
>>
>> >>>>>>133 New Bridge Road, #13-02, 059413 SINGAPORE
>>
>> >>>>>>8 Hahoshlim Street, 4672408 Herzliya, ISRAEL T SG +65 6532 2577
>> <+65%206532%202577> T
>>
>> >>>>>>US +1 212 999 6180 <(212)%20999-6180> T IL +972 9 950 7000
>> <+972%209-950-7000> F IL +972 9 950 5500 <+972%209-950-5500>
>>
>> >>>>>>
>>
>> >>>>>>This message is confidential. It may also be privileged or
>>
>> >>>>>>otherwise protected by work product immunity or other legal rules.
>>
>> >>>>>>If you have received it by mistake, please let us know by e-mail
>>
>> >>>>>>reply and delete it from your system; you may not copy this
>>
>> >>>>>>message or disclose its contents to anyone. Please send us by fax
>>
>> >>>>>>any message containing deadlines as incoming e-mails are not
>>
>> >>>>>>screened for response deadlines. The integrity and security of
>>
>> >>>>>>this message cannot be guaranteed on the Internet.-----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 Beckham, Brian
>>
>> >>>>>>Sent: Tuesday, December 13, 2016 5:42 PM
>>
>> >>>>>>To: Paul Keating <Paul at law.es>; J. Scott Evans
>>
>> >>>>>><jsevans at adobe.com>; George Kirikos <icann at leap.com>;
>>
>> >>>>>>gnso-rpm-wg at icann.org
>>
>> >>>>>>Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions
>>
>> >>>>>>tabulated categories document - 2 December 2016
>>
>> >>>>>>
>>
>> >>>>>>Paul, all,
>>
>> >>>>>>
>>
>> >>>>>>A timely post on CircleID speaks to (intentional) confusion on the
>>
>> >>>>>>"generic"/dictionary dichotomy:
>>
>> >>>>>>http://www.circleid.com/posts/20161212_appearing_respondents_calle
>>
>> >>>>>>d_o
>>
>> >>>>>>u
>>
>> >>>>>>t
>>
>> >>>>>>_
>>
>> >>>>>>a
>>
>> >>>>>>s
>>
>> >>>>>>_cybersquatters/
>>
>> >>>>>>
>>
>> >>>>>>In that post, Mr. Levine notes:
>>
>> >>>>>>
>>
>> >>>>>>"There's continuing confusion among domain buyers (not likely to
>>
>> >>>>>>be professional investors) that dictionary words are 'generic'
>>
>> >>>>>>therefore available to the first to register them. That's not the
>> case at all.
>>
>> >>>>>>There are numerous trademarks composed of common words; weak
>>
>> >>>>>>perhaps, and vulnerable when combined with other common words but
>>
>> >>>>>>nevertheless protectable with sufficient proof of bad faith."
>>
>> >>>>>>
>>
>> >>>>>>Brian
>>
>> >>>>>>
>>
>> >>>>>>-----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 Paul Keating
>>
>> >>>>>>Sent: Monday, December 12, 2016 10:24 PM
>>
>> >>>>>>To: J. Scott Evans; George Kirikos; gnso-rpm-wg at icann.org
>>
>> >>>>>>Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions
>>
>> >>>>>>tabulated categories document - 2 December 2016
>>
>> >>>>>>
>>
>> >>>>>>But it does show that it is not so much rocket science.
>>
>> >>>>>>
>>
>> >>>>>>On 12/12/16, 10:11 PM, "J. Scott Evans"
>>
>> >>>>>><gnso-rpm-wg-bounces at icann.org
>>
>> >>>>>>on
>>
>> >>>>>>behalf of jsevans at adobe.com> wrote:
>>
>> >>>>>>
>>
>> >>>>>>>That don¹t make it right.
>>
>> >>>>>>>
>>
>> >>>>>>>J. Scott Evans | Associate General Counsel - Trademarks,
>>
>> >>>>>>>Copyright, Domains & Marketing | Adobe
>>
>> >>>>>>>345 Park Avenue
>>
>> >>>>>>>San Jose, CA 95110
>>
>> >>>>>>>408.536.5336 <(408)%20536-5336> (tel), 408.709.6162
>> <(408)%20709-6162> (cell) jsevans at adobe.com
>>
>> >>>>>>>www.adobe.com
>>
>> >>>>>>>
>>
>> >>>>>>>
>>
>> >>>>>>>
>>
>> >>>>>>>
>>
>> >>>>>>>
>>
>> >>>>>>>
>>
>> >>>>>>>
>>
>> >>>>>>>
>>
>> >>>>>>>On 12/12/16, 10:04 AM, "gnso-rpm-wg-bounces at icann.org on behalf
>>
>> >>>>>>>of George Kirikos" <gnso-rpm-wg-bounces at icann.org on behalf of
>>
>> >>>>>>>icann at leap.com>
>>
>> >>>>>>>wrote:
>>
>> >>>>>>>
>>
>> >>>>>>>>FYI, re: "generic", both the .uk and the .nz dispute policies
>>
>> >>>>>>>>reference "generic" domain names, see:
>>
>> >>>>>>>>
>>
>> >>>>>>>>.uk:
>>
>> >>>>>>>>http://nominet-prod.s3.amazonaws.com/wp-content/uploads/2016/08/
>>
>> >>>>>>>>Fin
>>
>> >>>>>>>>a
>>
>> >>>>>>>>l
>>
>> >>>>>>>>-
>>
>> >>>>>>>>pro
>>
>> >>>>>>>>p
>>
>> >>>>>>>>osed-DRS-Policy.pdf
>>
>> >>>>>>>>
>>
>> >>>>>>>>"8.1.2 The Domain Name is generic or descriptive and the
>>
>> >>>>>>>>Respondent is making fair use of it;"
>>
>> >>>>>>>>
>>
>> >>>>>>>>.nz: https://www.dnc.org.nz/resource-library/policies/65
>>
>> >>>>>>>>
>>
>> >>>>>>>>"Generic Term means a word or phrase that is a common name in
>>
>> >>>>>>>>general public use for a product, service, profession, place or
>>
>> >>>>>>>>thing. For
>>
>> >>>>>>>>example: toy; shop; cleaner; lawyers; Wellington; sparkling-wine"
>>
>> >>>>>>>>
>>
>> >>>>>>>>"6.1.2. The Domain Name is generic or descriptive and the
>>
>> >>>>>>>>Respondent is making fair use of it in a way which is consistent
>>
>> >>>>>>>>with its generic or descriptive character;"
>>
>> >>>>>>>>
>>
>> >>>>>>>>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
>>
>> >>>>>>>
>>
>> >>>>>>>
>>
>> >>>>>>>________________________________
>>
>> >>>>>>>
>>
>> >>>>>>><ACL>
>>
>> >>>>>>>_______________________________________________
>>
>> >>>>>>>gnso-rpm-wg mailing list
>>
>> >>>>>>>gnso-rpm-wg at icann.org
>>
>> >>>>>>>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>
>> >>>>>>
>>
>> >>>>>>
>>
>> >>>>>>_______________________________________________
>>
>> >>>>>>gnso-rpm-wg mailing list
>>
>> >>>>>>gnso-rpm-wg at icann.org
>>
>> >>>>>>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>
>> >>>>>>
>>
>> >>>>>>World Intellectual Property Organization Disclaimer: This
>>
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>> >>>>>>_______________________________________________
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>> >>>>>>
>>
>> >>>>>>******************************************************************
>>
>> >>>>>>***
>>
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>> >>
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>> >
>>
>> >
>>
>>
>>
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