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

Rebecca Tushnet Rebecca.Tushnet at law.georgetown.edu
Thu Apr 27 02:57:43 UTC 2017


My point exactly.  So what explains the over 90% abandonment rate,
other than overdeterrence, especially with those most returned terms?
Rebecca Tushnet
Georgetown Law
703 593 6759


On Wed, Apr 26, 2017 at 10:53 PM, Greg Shatan <gregshatanipc at gmail.com> wrote:
> "Maybe absolutely no one else besides the TMCH entrant/s had a legitimate
> business using those terms."
>
> That is clearly and absolutely not the basis of trademark rights, trademark
> registration or entry into the TMCH.  Nor is it the way Sunrise or Claims
> work.  Ridiculous.
>
> 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 10:45 PM, Rebecca Tushnet
> <Rebecca.Tushnet at law.georgetown.edu> wrote:
>>
>> Yes, because we don't have good survey evidence, one of the questions
>> is what we can infer from the circumstantial evidence available to us,
>> particularly the over 90% abandonment rate combined with the top
>> queries being words like forex, cloud, and love.  Maybe absolutely no
>> one else besides the TMCH entrant/s had a legitimate business using
>> those terms.  But I doubt it.
>> Rebecca Tushnet
>> Georgetown Law
>> 703 593 6759
>>
>>
>> On Wed, Apr 26, 2017 at 10:37 PM, icannlists <icannlists at winston.com>
>> wrote:
>> > Thanks Rebecca.  I've never heard of a trademark owner being deterred by
>> > a claims notice since one of the explicit defenses in the UDRP is when a
>> > registrant has rights or legitimate interests in a corresponding trademark.
>> > So, I think that one may be a bit of a red herring.
>> >
>> > However, your comment about avoiding overreach is well received and we
>> > should keep it in mind while at the same time not under-reaching either -
>> > when we do that, Grandma gets phished.
>> >
>> > Best,
>> > Paul
>> >
>> >
>> >
>> > -----Original Message-----
>> > From: Rebecca Tushnet [mailto:Rebecca.Tushnet at law.georgetown.edu]
>> > Sent: Wednesday, April 26, 2017 9:17 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)
>> >
>> > 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-registra
>> >> tion-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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