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

Thu Apr 27 11:48:49 UTC 2017

This old song again?  Same answer as the many times before Paul K:  The TMCH doesn't contain any record of the ever elusive chilled non-registrants after Claims.

Best,
Paul

-----Original Message-----
From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Paul Keating
Sent: Thursday, April 27, 2017 6:42 AM
To: Rebecca Tushnet <Rebecca.Tushnet at law.georgetown.edu>; gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

Can we please move from guessing to data-based decision making?

To do so we need the data from TMCH.  I really do not see any other means of getting to the end of this.

And, I continue to find it humorous that those currently complaining about supposition appear to be the same group that objected to a review of the TMCH data.

PRK

On 4/27/17, 5:27 AM, "Rebecca Tushnet" <gnso-rpm-wg-bounces at icann.org on behalf of 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-registr
>>>a
>>> >> >> 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 shouldn¹t 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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