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

Greg Shatan gregshatanipc at gmail.com
Thu Apr 20 18:41:55 UTC 2017


Michael,

Thanks for your proposal.  This seems reasonable and appropriate.  I would
note that the criticism just received is misplaced.

First, nowhere does this proposal state or imply "the flaky [sic] that the
inclusion of a trademarked string within a larger domain registration
string, is per se confusion."  A claims notice is not a notice or claim of
per se anything.  (Actually, there's fairly little that is per se anything
in any legal system for any type of claim, that I know of -- but I
digress.)  It's merely a notification of a match.  The applicant can then
make a more informed decision, as noted by Michael, to the benefit of both
the applicant and the TMCH registrant.

Second, the example given, "The mark: "BOB's Red Barn" triggering notices
for any combination of the above," appears to be the *opposite* of the way
the proposal would work.  Rather than triggering a notice for any
combination of Bob's and/or Red and/or Barn, the notice would *only* be
triggered when the *entire* string "Bob's Red Barn" appears in an attempted
application *plus* additional characters (e.g., "Bob's Red Barn Tomatoes").
 (Of course, I could be parsing the example incorrectly, since the phrasing
is ambiguous.)

Since the notice will show the mark, it should be clear to the potential
applicant whether there is a real issue.  If the registration is for a
furniture store, then the applicant should feel a heightened degree of
comfort in continuing to registration.  On the other hand, if it's for
fresh produce, the degree of comfort would be lower. [Disclaimer: this not
legal advice and no attorney/client relationship is formed by reading this
email.]

Greg


*Greg Shatan *C: 917-816-6428
S: gsshatan
Phone-to-Skype: 646-845-9428
gregshatanipc at gmail.com


On Thu, Apr 20, 2017 at 2:05 PM, Paul Keating <paul at law.es> wrote:

>  Michael,
>
> I cannot agree to your proposed expansion.
>
> "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."
>
>
> Not only does this continue the flaky that the inclusion of a trademarked
> string within a larger domain registration string, is per se confusion.
>
>  This would also  led to numerous nonsensical notices such as:
>
> The mark: "BOB's Red Barn" triggering notices for any combination of the
> above.
>
> Sent from my iPad
>
> On 20 Apr 2017, at 19:29, Michael Graham (ELCA) <migraham at expedia.com>
> wrote:
>
>     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
>
>
> _______________________________________________
> gnso-rpm-wg mailing list
> gnso-rpm-wg at icann.org
> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20170420/62463aae/attachment.html>


More information about the gnso-rpm-wg mailing list