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

Thu Apr 27 03:13:46 UTC 2017

Sorry, meant to send this to the entire list.

Greg

---------- Forwarded message ----------
From: Greg Shatan <gregshatanipc at gmail.com>
Date: Wed, Apr 26, 2017 at 11:03 PM
Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design
Mark and Appropriate Balance)
To: Rebecca Tushnet <Rebecca.Tushnet at law.georgetown.edu>

Your guess -- and overdeterrence is just a guess, with nothing to back it
up -- is as good as mine.  My guess is that it absolutely is not
overdeterrence.

And my point was that your statement was a mischaracterization of the way
the TMCH, Sunrise and Claims work, as well as a mischaracterization of how
trademarks work.  So I don't think "My point exactly" is what you meant to
say (though I wish it were).

Greg

*Greg Shatan *C: 917-816-6428 <(917)%20816-6428>
S: gsshatan
Phone-to-Skype: 646-845-9428 <(646)%20845-9428>
gregshatanipc at gmail.com

On Wed, Apr 26, 2017 at 10:57 PM, Rebecca Tushnet <Rebecca.Tushnet at law.
georgetown.edu> wrote:

> 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-disagreemen
> t-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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