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

Fri Apr 21 11:55:30 UTC 2017

The problem is worse than just "red" matches, of course: a valid TMCH
registration for Elle for magazines would lead to a notice for
Cottonelle, mademoiselle, seller, belled, etc. A TMCH registration for
Louis Vuitton's LV for handbags would lead to a notice for salve,
silver, absolve, evolve, revolver, velvet, shelves, etc.

Given what we now know is in the TMCH, we can also anticipate notices
going to anyone whose domain name refers to cloud services, rather
than the current match on cloud.gTLD alone; hotel for anyone whose
domain name refers to hotel services, such as radissonhotel.gTLD; etc.

A flood of irrelevant matches is no good for trademark owners
(including the SMEs who might have just one hotel).  To the extent
that people might learn to ignore Claims Notices because a lot of the
time they’re just irrelevant, that seems to make them much worse
deterrents.  On the other hand, if people continue the abandonment
rate of over 90%, that makes the new gTLDs much less predictable and
available for no clear reason.  I might be able to support a proposal
to extend matches in a case in which a competent authority, whether a
court or an administrative agency, had determined that a mark was a
coined term, not just arbitrary, suggestive, or descriptive with
secondary meaning, which could at least justify more worry about any
given string, though I’d also be concerned about two-,  three-, or
four-letter combinations that might be deemed “unique” and thus coined
on their own but could be incorporated in larger, ordinary words.

Separately: in order to fully evaluate this proposal, we really need
information on the harm it is supposed to address, including (1) the
number of registration attempts that included but were not limited to
the text of an entry in the TMCH and (2) the number of such
registrations that led to a trademark owner challenge after the fact
(therefore excluding URS actions against, for example, typosquatting).
What resources do we have to obtain this information?
Rebecca Tushnet
Georgetown Law
703 593 6759

On Fri, Apr 21, 2017 at 6:21 AM, Paul Keating <Paul at law.es> wrote:
> My apologies for the typo.  It was meant to say “fallacy” but apparently I
> did not catch the autocorrection on my iPad.
>
> I will use either example.  If the mark is “Red” then the notices would go
> to all that had that phrase, including
>
> Redhead.com
> Redflag.com
> ColorRed.com
>
> Etc.
>
> The continuing issuance of notices is troubling.  It is based upon a
> presumption that any domain containing the string is confusingly similar to
> the mark (if that is not the presumption then there is no basis to support
> issuing the notice).  Further, the notice may well discourage a legitimate
> domain registrant, the majority are not as sophisticated or knowledgeable as
> you are and who have neither the stomach nor the funds to incur the expense
> of hiring counsel and being exposed to the risks litigation let alone
> defending a UDRP.
>
> Put simply, this is over-the-top protectionism.
>
> Respectfully,
>
> Paul Keating
>
> From: Greg Shatan <gregshatanipc at gmail.com>
> Date: Thursday, April 20, 2017 at 8:41 PM
> To: Paul Keating <paul at law.es>
> Cc: "Michael Graham (ELCA)" <migraham at expedia.com>, "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)
>
> 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
>>
>>
>> _______________________________________________
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>> gnso-rpm-wg at icann.org
>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>
>
>
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