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

Paul Keating Paul at law.es
Fri Apr 21 11:01:40 UTC 2017


+1

From:  <gnso-rpm-wg-bounces at icann.org> on behalf of Phil Corwin
<psc at vlaw-dc.com>
Date:  Friday, April 21, 2017 at 5:29 AM
To:  "Michael Graham (ELCA)" <migraham at expedia.com>
Cc:  "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
Subject:  Re: [gnso-rpm-wg] Recommendation for Question#10 (Appropriate
Strings for Notification)

> As we are tasked with reviewing RIGHTS Protection Mechanisms, my threshold
> question to those proposing expansion of the RPMs rooted in the TMCH is what
> Rights exist in trademark+ terms?
> I make this inquiry with a firm belief that ICANN should make reasonable
> accommodation to protect recognized legal rights, coupled to a strong view
> that ICANN is not a legislature for the DNS and has no remit to confer rights
> that go beyond existing law.
> 
> Philip S. Corwin, Founding Principal
> Virtualaw LLC
> 1155 F Street, NW
> Suite 1050
> Washington, DC 20004
> 202-559-8597/Direct
> 202-559-8750/Fax
> 202-255-6172/Cell
> 
> Twitter: @VLawDC
> 
> "Luck is the residue of design" -- Branch Rickey
> 
> Sent from my iPad
> 
> On Apr 20, 2017, at 11:49 AM, Michael Graham (ELCA) <migraham at expedia.com>
> wrote:
> 
>>  
>> 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
>>  
>> 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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