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

Sun Apr 23 17:10:29 UTC 2017

+1

On Thu, 20 Apr 2017 at 22:26 Cyntia King <cking at modernip.com> wrote:

> 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
>
> [image: MIP Composite (Email)]
>
>
>
> *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
>
>
>
> 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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>
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-- 
jonathan matkowsky, vp - ip & head of global brand threat mitigation
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