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

[Paul Keating]

Rebecca,

+1

And thank you for stating this issue far more eloquently than I did.

Paul

On 4/21/17, 1:55 PM, "Rebecca Tushnet"
<Rebecca.Tushnet at law.georgetown.edu> wrote:

>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 they¹re 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 I¹d also be concerned about two-,  three-, or
>four-letter combinations that might be deemed ³unique² 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 ³fallacy² but
>>apparently I
>> did not catch the autocorrection on my iPad.
>>
>> I will use either example.  If the mark is ³Red² 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
>>>
>>>
>>> _______________________________________________
>>> gnso-rpm-wg mailing list
>>> gnso-rpm-wg at icann.org
>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>
>>
>>
>> _______________________________________________
>> gnso-rpm-wg mailing list
>> gnso-rpm-wg at icann.org
>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg