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

Thu Apr 27 03:27:31 UTC 2017

Forwarding to match.

If you think that lots of people have valid uses--including rights--in
those terms, then when they stop trying to register those terms, that
is overdeterrence.  I think what I said was clear.

Rebecca Tushnet
Georgetown Law
703 593 6759

On Wed, Apr 26, 2017 at 11:03 PM, Greg Shatan <gregshatanipc at gmail.com> wrote:
> 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
> S: gsshatan
> Phone-to-Skype: 646-845-9428
> 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-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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>