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

[icannlists]

+1 Greg.

The TMCH should keep pace not only for brand owners but for those who attempt to register brand + related key words who will shortly thereafter lose their investment in a UDRP, URD, or ACPA lawsuit.  While I do understand a desire to fine tune the Claims Notice (even the best writing by the best writers needs an update from time to time   ☺   ), I don’t understand the desire to hide the trademark ball from would-be registrants who can avoid trouble if they get one.

Best,
Paul



From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Greg Shatan
Sent: Tuesday, April 25, 2017 3:45 PM
To: Paul Keating <paul at law.es>; Rebecca Tushnet <Rebecca.Tushnet at law.georgetown.edu>
Cc: 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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