[gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

[icannlists]

Thanks Jeremy.

As to claims, it provides absolutely nothing that doesn't already exist as a matter of law which already holds (at least for the US) that there is constructive notice of a trademark registrant's rights if the mark appears on the principal register:

"§1072 REGISTRATION AS CONSTRUCTIVE NOTICE OF CLAIM OF OWNERSHIP

Registration of a mark on the principal register provided by this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, shall be constructive notice of the registrant's claim of ownership thereof."

The TMCH + Claims are purely a service to the potential registrant which might deter the occasional act of cybersquatting, thus reducing liability for the would be registrant, nuisance and costs for the brand owners, and headaches for deceived consumers.  They don't result in any new rights whatsoever - just a second source of information about trademark rights that a registrant should be aware of before forking over $14.99 to GoDaddy.

As to Sunrise, either way once a domain name is registered, the registrant has the exclusive right to that particular second level domain name for the length of their contract with the registrar, and subject to good behavior, etc.  Whether it is the trademark right holder via Sunrise or a rich person via "premium" or a garden variety person like me via landrush, someone ends up with the "exclusive right."

So, I think we can move off the "exclusive rights" idea and talk more plainly - I think you just don't think brand owners should have any particular right to go first.  Correct?

Best,
Paul



-----Original Message-----
From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Jeremy Malcolm
Sent: Wednesday, April 26, 2017 12:47 PM
To: Silver, Bradley <Bradley.Silver at timewarner.com>; gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

On 26/4/17 10:41 am, Silver, Bradley wrote:
> Jeremy - the TMCH does not allow exclusive rights in domains.  Having a mark in the TMCH affords nothing close an exclusive right.  That's a basic truth which shouldn’t be ignored.

The sunrise period can allow the owner of (to use Rebecca's example) the PARENTS stylized mark to seize the parents.forum domain to the exclusion of someone who wants to run a parenting forum.  Call it an exclusive right or whatever you want, but it goes further than trademark law.  A rose by any other name...

--
Jeremy Malcolm
Senior Global Policy Analyst
Electronic Frontier Foundation
https://eff.org
jmalcolm at eff.org

Tel: 415.436.9333 ext 161

:: Defending Your Rights in the Digital World ::

Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt
PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122



________________________________
The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations.