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

Fri Apr 21 10:42:12 UTC 2017

+1

Excellent idea Cyntia.

From:  Cyntia King <cking at modernip.com>
Date:  Thursday, April 20, 2017 at 9:25 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 there¹s 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 ³Blogger²
> * There are hundreds of millions of bloggers worldwide
> Google may not want to monitor every domain that includes ³blogger², 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 ³blogger²
> like ShakespearePoemsBlogger.com.
>  
> Likewise a local, single-location restaurant w/ a trademark for ³Burger Man²
> 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
>  
> From: 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>
> Cc: 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> 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/20170421/a7dcf974/attachment-0001.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 5425 bytes
Desc: not available
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20170421/a7dcf974/image001-0001.png>