[gnso-rpm-wg] Recommendation for Question#10 (Appropriate Strings for Notification)

[Michael Graham (ELCA)]

To be clear:  I submitted the following proposals in my personal capacity – and not as a representative of or on behalf of either Expedia, Inc., the Intellectual Property Constituency or any other entity.

Michael R. Graham

Michael R. Graham
Senior Corporate Counsel
Global Director, Intellectual Property
Expedia Legal & Corporate Affairs
T +1 425.679.4330 | F +1 425.679.7251
M +1 425.241.1459
Expedia, Inc.
333 108th Avenue NE | Bellevue | WA 98004
MiGraham at Expedia.com<mailto:MiGraham at Expedia.com>



From: Michael Graham (ELCA)
Sent: Thursday, April 20, 2017 8:49 AM
To: gnso-rpm-wg at icann.org
Subject: Recommendation for Question#10 (Appropriate Strings for Notification)


Pardon the brevity and lateness of the following, but I wanted to submit the following Rationale and Proposals in regard to Question 10 with the understanding that they will undoubtedly be subject of discussion and exposition.  The intent of this Proposal is to expand the scope of domain name strings subject to Trademark Claims Service notices in order to help good faith domain name applicants avoid possible conflict and expense when they inadvertently seek to register a domain name that includes and could create confusion with a Trademark registered in the TMCH.  This will avoid unnecessary cost to the Applicant, and enable it to either prepare for or ensure that its planned use of a domain name will not lead to conflict.

For the same reasons – and because of the success of the Trademark Claims procedure in deterring bad faith domain name registrations in the new gTLDs in the interests of both trademark owners and Internet users – I also propose expanding the scope of the Trademark Claims Service.

Michael R. Graham

Michael R. Graham
Senior Corporate Counsel
Global Director, Intellectual Property
Expedia Legal & Corporate Affairs
T +1 425.679.4330 | F +1 425.679.7251
M +1 425.241.1459
Expedia, Inc.
333 108th Avenue NE | Bellevue | WA 98004
MiGraham at Expedia.com<mailto:MiGraham at Expedia.com>

Rationale and Proposal:

We (the RPM Working Group) have identified a minor change in current TMCH Trademark Claims Service practices that could benefit both Domain Name Applicants and Trademark Owners:


1.      We have become aware that Domain Name Applicants (Applicants) and Trademark Owners who have registered their trademarks in the TMCH (TMCH Trademarks) have both sustained unnecessary expense in time, effort, and planning when Domain Names that have proceeded to registration contain strings that are confusingly similar to TMCH Trademarks are challenged after their registration.

2.      Current Trademark Claims Notice rules limit the issuance of Notifications to applications that consist solely of the exact TMCH Trademark.

3.      As a result, Applicants are unaware of potential conflicts and may proceed with expending time, money and planning on the use of Domain Names that may be challenged.

4.      Applicants should have the ability to consider whether to proceed with their planning and use of Domain Names in light of TMCH Trademarks at the earliest opportunity in order to conserve fees and planning efforts.

5.      Trademark Owners should have the ability to identify both Domain Names that could create confusion and those that will not at the earliest opportunity.

Proposal:

1.      The TMCH Rules should be revised to require Trademark Claims Notices be issued not only for Domain Names that consist of the Exact string of TMCH Trademarks, but also of any Domain Name that includes anywhere in the string the Exact string of TMCH Trademarks.
In addition, we believe the success of the Trademark Claims Service in enabling both trademark owners and domain name applicants to learn of potential conflicts from an early stage in the application process -- when changes can be made or applications either abandoned or continued with the least expense of time, effort, or disruption – would support expansion of the service beyond the new gTLDs.  For the same reasons, we propose the following:

Proposal:  The Trademark Claims Service and TMCH registration program should be expanded to apply to all Legacy TLDs as well as New gTLDs.
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