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

Paul Tattersfield gpmgroup at gmail.com
Thu Apr 27 09:15:32 UTC 2017


Greg, a similar line of thinking was used by WIPO in response to the
initial Report on IGO Access to Curative Rights Protection Mechanisms.
https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/msg00000.html

It is troubling if this line of thinking is held within the wider ICANN
community, especially so, if this line of thinking is held by those seeking
to change the current RPMs.

A much better understanding of the underlying issues is needed if we are to
better protect the goods and services of all rights holders through better
RPMs and at the same time build a more equitable framework for all.

My reply
https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/msg00038.html
to WIPO’s comments demonstrates on a very simple level how your assumptions
set an incorrect narrative which sends people off in the wrong direction
when seeking to solve the problem.

RPMs are not the best way of dealing with the kind of bad behaviour you
cite. A far better approach is to use section 3.18 of the 2013 Registrar
Accreditation Agreement (RAA) which requires registrars to take action
against this sort of behaviour.

The advantage of using the 3.18 approach is it doesn’t require any domain
name infringement to take action which means all of the bad behaviour
involving a domain cited by yourself and WIPO can easily be dealt with and
without any costs beyond the time spent identifying offending sites and
requesting their suspension.

Paul

On Thu, Apr 27, 2017 at 6:08 AM, Rebecca Tushnet <
Rebecca.Tushnet at law.georgetown.edu> wrote:

> What would lead cybersquatters to choose common terms that, while
> protectable for specific goods or services, are not generally known
> for those meanings, as opposed to APPLE or MICROSOFT or other strong
> marks?  That seems like a poor cybersquatting strategy, especially
> done retail rather than wholesale.
>
> Circumstantial evidence is evidence too.
> Rebecca Tushnet
> Georgetown Law
> 703 593 6759
>
>
> On Thu, Apr 27, 2017 at 1:03 AM, Greg Shatan <gregshatanipc at gmail.com>
> wrote:
> > We have no idea who abandoned these registration attempts, or even if it
> was
> > done by humans, much less rightsholders.
> >
> > If we want to make assumptions that support arguments, rather than
> engaging
> > in evidence-based inquiry, I'll offer the assumption that all the
> abandoned
> > carts were started by cybersquatters that intended to use the domains to
> > engage in spam, malware, phishing, spearphishing, fraud, theft and botnet
> > farming.
> >
> > Greg
> >
> >
> > On Wed, Apr 26, 2017 at 11:27 PM Rebecca Tushnet
> > <Rebecca.Tushnet at law.georgetown.edu> wrote:
> >>
> >> 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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> > --
> >
> > Greg Shatan
> > C: 917-816-6428
> > S: gsshatan
> > Phone-to-Skype: 646-845-9428
> > gregshatanipc at gmail.com
> _______________________________________________
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