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

Michael Graham (ELCA) migraham at expedia.com
Fri Apr 21 07:49:31 UTC 2017


Good point, Cyntia – though I think most trademark registrants would prefer the burden of reviewing notices to delayed knowledge.  Your idea of offering variable length and geographic scopes might create an additional burden for TMCH, but is interesting – they could always charge a premium.

Michael R.

From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Cyntia King
Sent: Thursday, April 20, 2017 12:26 PM
To: 'Greg Shatan' <gregshatanipc at gmail.com>; 'Paul Keating' <paul at law.es>
Cc: gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] Recommendation for Question#10 (Appropriate Strings for Notification)

Thought:
This could pose burden on small businesses & could become an overwhelming chore for some brand owners.
Perhaps there’s a way the TMCH could allow options to brand owners for the returns they want (full string unlimited characters, registrant country, etc.)?


  *   Google has TMs for “Blogger”
  *   There are hundreds of millions of bloggers worldwide
Google may not want to monitor every domain that includes “blogger”, rather, they may want to monitor a smaller set of exact matches.

  *   It may be beneficial for them to be able to limit the string to 12 characters, rather than receiving a warning for every iteration of “blogger” like ShakespearePoemsBlogger.com.

Likewise a local, single-location restaurant w/ a trademark for “Burger Man” may only be concerned w/ results inside his/her home country.

Simple string queries could work.
I understand this would require some programmingat TMCH, but it could significantly reduce the numbers of human work-hours for notices, clarifications & responses for both brand owners & domain registrants.


Cyntia King
E:  cking at modernip
O:  +1 81-ModernIP
C:  +1 818.209.6088
[MIP Composite (Email)]

From: gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org> [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Greg Shatan
Sent: Thursday, April 20, 2017 1:42 PM
To: Paul Keating <paul at law.es<mailto:paul at law.es>>
Cc: gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: Re: [gnso-rpm-wg] Recommendation for Question#10 (Appropriate Strings for Notification)

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<mailto:gregshatanipc at gmail.com>

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

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