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

Tue Apr 25 21:00:37 UTC 2017

Dear all,

To facilitate the Working Group’s deliberation of this proposal (to expand the TMCH matching rules for Claims Notices), staff offers the following notes:

o    The “identical match” test was proposed in the first IRT Report (April 2009) and retained throughout the development of the Applicant Guidebook

o    In the various public comment periods for the AGB and, most recently, for the RPM Staff Paper (February 2015) and the Issue Report for this PDP (October 2015), numerous comments were received supporting expansion of the matching rules to include plurals, mark+keyword, “mark contained”, etc.

o    The GAC, in requesting an independent review of the TMCH in 2011, had specifically raised the question of matching rules for consideration

o    The recent (February 2017) revised report from the Analysis Group reviewing the TMCH found that it was not able to find clear evidence – based on the data available to it and the analysis it performed – that the benefits outweighed the costs of expansion. They did, however, note that if trademark owners value registrations that are variants of their marks but are unable to monitor these registrations, expansion may be useful.

In discussing the proposal for TMCH Question 10, will it be helpful to review the Analysis Group data and findings, and to consider what, if any, are the increased needs or new or additional concerns over the past few years that may support expansion, or the contrary?

Cheers
Mary

From: <gnso-rpm-wg-bounces at icann.org> on behalf of Greg Shatan <gregshatanipc at gmail.com>
Date: Tuesday, April 25, 2017 at 16:45
To: Paul Keating <paul at law.es>, Rebecca Tushnet <Rebecca.Tushnet at law.georgetown.edu>
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)

Clearly, we have people who are interested in defending the proposal.  Paul McGrady has done so on this thread.  I'm certain the proposer is "interested," as well.  We've also had some responses that are interested in variations on the proposal, but still going beyond exact match.  We've had almost nobody "interested" in disagreeing with the proposal.  The upcoming meetings of the WG will be used to open up the discussion of the various proposals, including this one.  I believe that was the game plan all along.  So at best, it's both incorrect and premature to attempt to call consensus in one direction or the other.  At worst, it seems like an attempt to drown the proposal in the bathtub while nobody's watching.  The general approach in ICANN WGs is to give any proposal a full and fair hearing and opportunity for discussion, across at least a couple of meetings.  Summary execution is not consistent with that approach.  I'll give you the benefit of the doubt and believe that you were "shaking the tree" rather than intended to cut off discussion before it even started.  It seem that has been the effect.  If that was your intent, thank you for focusing us.

I would support an expansion beyond exact match for matching rules.  I would suggest modifying the proposal to have more defined methods of matching.  For example, typos of the mark and mark+keywords.  Keywords could be derived from the trademark registration description or from either registrant-defined or pre-defined lists of keywords, based on the goods and services.  Typos could simply be determined in a fashion, either by the registrant or by some formula or process.  Domain hacks should also be considered (e.g., the trademark SALAD NINJA would be a match with salad.ninja, as well as saladninja.ninja.  This would not require that variations be registered in the TMCH.

This is consistent with the type of harms seen in the marketplace.  While early UDRPs largely dealt with "exact match", the trend for quite some time has been toward typosquats and mark+keyword violations.  The first wave of UDRPs has seen more exact matches, but we can expect history to repeat itself.  The TMCH should keep pace.

Greg

On Tue, Apr 25, 2017 at 2:32 PM Rebecca Tushnet <Rebecca.Tushnet at law.georgetown.edu<mailto:Rebecca.Tushnet at law.georgetown.edu>> wrote:
That's because it came from words that weren't mine.

If no one at all is interested in defending the "expanding the match"
proposal that this thread is supposed to cover, does that mean that we
have a consensus that it's not worth pursuing?  I'm not sure what the
procedure for determining that would be.
Rebecca Tushnet
Georgetown Law
703 593 6759

On Tue, Apr 25, 2017 at 2:23 PM, Paul Keating <paul at law.es<mailto:paul at law.es>> wrote:
> I'm sorry but these 2 statements seem to be in conflict with each other.....
>
> I don't in fact think that the TMCH contains names of those individuals who've been wrongly deterred from registering domain names they had a right to register.
>
> As has been discussed for a while, I think it contains other relevant evidence, like more words like "cloud" and "hotel" that prima facie don't seem likely to justify preemptive rights across new gTLDs.
>
> I am more concerned about the latter but must say I really don't understand what is meant by the former.
>
>
> Sent from my iPad
>
>> On 25 Apr 2017, at 16:22, Scott Austin <SAustin at vlplawgroup.com<mailto:SAustin at vlplawgroup.com>> wrote:
>>
>> I don't in fact think that the
>>     TMCH contains names of those individuals who've been wrongly deterred
>>     from registering domain names they had a right to register.  As has
>>     been discussed for a while, I think it contains other relevant
>>     evidence, like more words like "cloud" and "hotel" that prima facie
>>     don't seem likely to justify preemptive rights across new gTLDs.
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Greg Shatan
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