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

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Tue Apr 25 21:33:36 UTC 2017


+1 Brian.

From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Winterfeldt, Brian J.
Sent: Tuesday, April 25, 2017 3:17 PM
To: 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)

Hi Rebecca and all,

We do believe there is merit in expanding the matching rules for the TMCH, at least with respect to Trademark Claims services.  We would support expanded matching for Trademark Claims such that any requested domain name registration containing the TMCH-recorded mark, and not just exact matches, would receive a Claims Notice, and where such a registration were to be completed, the mark owner would receive a corresponding Notice of Registered Name (NORN).  To illustrate, if the recorded mark is EXXON, we would support Trademark Claims/NORNs for such potential domain name registrations as:


*         EXXON.TLD (exact match)

*         WWWEXXON1.TLD (mark contained)

*         EXXONGAS.TLD (mark + keyword / mark contained)

*         EXXON-GAS.TLD (mark+keyword / mark contained)

*         EXXONERATE.TLD (mark contained, possible typo)

Again, the Claims notice would merely apprise the prospective registrant of claimed rights in the trademark EXXON, and it would be up to the registrant whether to proceed or abandon the registration.  Similarly, if the registrant were to proceed, and the trademark owner received the corresponding NORN, it would be aware of the registration and could determine if any enforcement action were necessary.  This does not appear to be any expansion of existing trademark rights, as it merely triggers notices where the trademark is implicated.

Again, our thoughts as outlined above are limited to Trademark Claims.  However, we would be interested in considering others' thoughts on expanded matching rules for purposes of Sunrise, and take no specific position at this time either to reject this possibility or to support it.

Best regards,

Brian

Brian J. Winterfeldt
Co-Head of Global Brand Management and Internet Practice
Mayer Brown LLP
bwinterfeldt at mayerbrown.com<mailto:bwinterfeldt at mayerbrown.com>
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On 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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