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

Greg Shatan gregshatanipc at gmail.com
Thu Apr 27 02:28:40 UTC 2017


Overreaching is in the eye of the beholder.  If a TMCH that only contains
anything other than fanciful (coined) marks in "standard form" (text
without any font or stylization) is overreaching, then I would be
hard-pressed to call that pro-trademark.  That's what I perceive to be your
desired TMCH; if I'm wrong, it would be helpful to know.

I am sure there were many trademark owners who sought to register domains
consisting of or including their mark and inevitably received Claims
notices.  Whether any of them were deterred is questionable -- and
certainly not inevitable.  Revising the Claims notice to make it more
understandable and less "scary" (but still appropriately pause-worthy) is a
concept that I don't think will be all that controversial (not sure what
steps you were contemplating, but perhaps that's some lower-hanging fruit
for the group).

Finally, the vast majority of trademark owners aren't participating in the
TMCH (I assume that's what you mean by the "process") and even most of
those that are have marks that they did not put in the TMCH.  Also, even
for "participating" trademark owners with marks in the TMCH, the fact that
the TMCH is non-exclusive means that those owners will receive Claims
notices when they attempt to register those marks.  I want to dispel any
notion that the TMCH is somehow the plaything of a cabal of "participating"
trademark owners.

Greg




*Greg Shatan *C: 917-816-6428
S: gsshatan
Phone-to-Skype: 646-845-9428
gregshatanipc at gmail.com


On Wed, Apr 26, 2017 at 10:16 PM, Rebecca Tushnet <
Rebecca.Tushnet at law.georgetown.edu> wrote:

> Avoiding overreaching is pro-trademark, as the public reaction to
> SOPA/PIPA and patent trolls has shown with respect to copyright and
> patent. There are also the interests of trademark owners who aren't
> participating in this process but may want to register domain names
> that are perfectly legitimate for their goods/services and
> jurisdictions.  Some of them may inevitably receive notices and be
> deterred, but there are steps we can take to limit that problem.
> Rebecca Tushnet
> Georgetown Law
> 703 593 6759
>
>
> On Wed, Apr 26, 2017 at 9:50 PM, icannlists <icannlists at winston.com>
> wrote:
> > Thanks Rebecca.  I'm not characterizing you as anti-trademark; just your
> arguments and positions to date on this list.  We would very much welcome
> anything favorable to trademarks that you wish to add to the discourse.
> >
> > Best,
> > Paul
> >
> >
> >
> > -----Original Message-----
> > From: Rebecca Tushnet [mailto:Rebecca.Tushnet at law.georgetown.edu]
> > Sent: Wednesday, April 26, 2017 8:00 PM
> > To: icannlists <icannlists at winston.com>
> > Cc: 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)
> >
> > Please don't characterize me as anti-trademark; I strongly believe in
> the consumer protection function of trademarks, and also in trademark
> protection in some circumstances for business purposes.  See
> https://harvardlawreview.org/2017/01/registering-
> disagreement-registration-in-modern-american-trademark-law/
> >
> > Asking again: for those of you who think it doesn't matter if claimants
> who don't own relevant rights get to use the TMCH, what then did ICANN mean
> by its stated intent not to expand trademark rights?
> > Rebecca Tushnet
> > Georgetown Law
> > 703 593 6759
> >
> >
> > On Wed, Apr 26, 2017 at 8:46 PM, icannlists <icannlists at winston.com>
> wrote:
> >> Thanks Rebecca.  There is not much new here.  Whomever registers a
> second level domain name first (Sunrise - TM owner), Premium (Rich person)
> or Landrush (TM owner who didn't want to pay the Sunrise shakedown price or
> regular folks like all of us), someone gets the exclusive rights to that
> second level.  So, it is not just a question of if, but of when and who.  I
> think it is OK to just say "I don't want it to be a trademark owner."
> Others will disagree, but we don't have to keep this in a mysterious
> context or otherwise try to layer on some free speech issue that doesn't
> exist.  Trademark owners want them first in order to protect their brands
> and consumers.  Others who are anti-trademarks don't want them to have them
> first and would prefer someone else gets the exclusive right.  Fair
> enough.  Now we see if we can get to consensus on changing the AGB.  I
> doubt we will, but at least the free speech veneer is pulled back.
> >>
> >> Best,
> >> Paul
> >>
> >>
> >>
> >> -----Original Message-----
> >> From: gnso-rpm-wg-bounces at icann.org
> >> [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Rebecca Tushnet
> >> Sent: Wednesday, April 26, 2017 3:11 PM
> >> To: Silver, Bradley <Bradley.Silver at timewarner.com>
> >> Cc: gnso-rpm-wg at icann.org
> >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16
> >> (Design Mark and Appropriate Balance)
> >>
> >> By that logic the mandate not to expand on trademark rights would have
> >> been pointless because no activity in domain name space could ever
> >> have expanded trademark rights.  Call it a right, call it a privilege,
> >> call it an alien from Xenon if you like, but ICANN did not want
> >> trademark owners to be able to assert control over domain names in
> >> excess of what underlying trademark law would have allowed.  Under the
> >> "nothing in domain names can expand trademark rights because they're
> >> never exclusive" logic, was the ICANN direction completely
> >> meaningless, or did it have some meaning?  (Trademark rights, of
> >> course, are never "exclusive" either, which is why we can use any
> >> examples we want in this discussion.) Rebecca Tushnet Georgetown Law
> >> 703 593 6759
> >>
> >>
> >> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg <
> gnso-rpm-wg at icann.org> 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.
> >>>
> >>> -----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 1:32 PM
> >>> To: 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 9:00 am, Colin O'Brien wrote:
> >>>> Nice try Rebecca but I'm not attempting to overturn the apple cart.
> If you have actual examples of problems then provide them otherwise this is
> an indulgent  academic exercise.
> >>>
> >>> The fact that the TMCH is allowing exclusive rights in domains that go
> beyond the equivalent rights in domestic trademark law is itself a problem
> if we accept that the TMCH was meant to track trademark law.
> >>>
> >>> --
> >>> 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
> >>>
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