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

Thu Apr 27 14:21:09 UTC 2017

This should be a serious matter for ICANN compliance.

On Thu, Apr 27, 2017 at 12:30 PM, J. Scott Evans <jsevans at adobe.com> wrote:

> A letter or call to a registrar is FAR more complex at effective than a
> UDRP action. Unfortunately, the former rarely results in the behavior being
> stopped and the later does.
>
> Sent from my iPhone
>
> On Apr 27, 2017, at 3:14 AM, Beckham, Brian <brian.beckham at wipo.int>
> wrote:
>
> Paul,
>
>
>
> It is important to look at the actual language of section 3.18 of the
> RAA.  This provides that registrars “shall take reasonable and prompt steps
> to investigate and respond” to allegations of illegal activity.
>
>
>
> Looking at this carefully crafted contract language, it is easy to see
> that taking reasonable steps is subject to interpretation, just as is the
> corresponding obligation to investigate and respond.  This is in no way
> meant to suggest that registrars are not complying with their ICANN
> obligations, but whether those obligations necessarily address the claimed
> illegal behavior and achieve the result sought is another matter
> altogether.  RPMs on the other hand are specifically designed with criteria
> to assist a substantive determination (which the registrar need only
> implement).
>
>
>
> Indeed, the very fact that we have a working group dedicated to address
> ongoing claims of trademark abuse suggests that some claimed abuse is not
> being addressed through this RAA provision (which by the way is titled – my
> emphasis: “Registrar’s Abuse Contact and *Duty to Investigate* Reports of
> Abuse”).
>
>
>
> Quickly:  searching WIPO’s public case database for the term “fraud”
> produces 1066 results (http://www.wipo.int/amc/en/domains/search/fulltext_
> decisions.jsp?tab=1&q=fraud&rows=20
> <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.int%2Famc%2Fen%2Fdomains%2Fsearch%2Ffulltext_decisions.jsp%3Ftab%3D1%26q%3Dfraud%26rows%3D20&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=ObK9VTHBPGrufXw9rVbAeMSmPR4LDiAFv6UouawPAgw%3D&reserved=0>),
> searching for “phishing” yields 659 results (http://www.wipo.int/amc/en/
> domains/search/fulltext_decisions.jsp?tab=1&q=phishing&rows=20
> <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.int%2Famc%2Fen%2Fdomains%2Fsearch%2Ffulltext_decisions.jsp%3Ftab%3D1%26q%3Dphishing%26rows%3D20&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=EPAoSFpvzSW0q%2BAll7SLMLN62KSXT8rpyo9IUPlRtIA%3D&reserved=0>),
> etc.
>
>
>
> If those instances of claimed abuse could be solved with a simple request
> to the registrar, trademark owners might be saved the time and expense of
> invoking RPMs.  It is therefore difficult to see what is “incorrect” about
> this “narrative” which is based on actual cases, not assumptions.
>
>
>
> Best regards,
>
>
>
> Brian
>
>
>
> *From:* gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces@
> icann.org <gnso-rpm-wg-bounces at icann.org>] *On Behalf Of *Paul
> Tattersfield
> *Sent:* Thursday, April 27, 2017 11:16 AM
> *To:* Rebecca Tushnet
> *Cc:* gnso-rpm-wg at icann.org
> *Subject:* Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16
> (Design Mark and Appropriate Balance)
>
>
>
> 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
> <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fforum.icann.org%2Flists%2Fcomments-igo-ingo-crp-access-initial-20jan17%2Fmsg00000.html&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=JbNkJvGhH91k%2BoSORw6sLtAIFc%2Bb8pRJeBnZ2nBu67g%3D&reserved=0>
>
> 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
> <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fforum.icann.org%2Flists%2Fcomments-igo-ingo-crp-access-initial-20jan17%2Fmsg00038.html&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=PhO4Rkkg5jPCnI0AZtXula%2FnZ3cx834B3tUc5xAXSqQ%3D&reserved=0>
> 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
> <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fharvardlawreview.org%2F2017%2F01%2Fregistering-disagreement-registra&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=iu0yMvKbDyZebmCpHx42pp%2BuQGNY3aNnUVn7YgzLoA8%3D&reserved=0>
> >> >> >> >> 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
> <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=KzOy4znSpz0a9ehfGktwBDMo2ewTzNlJvPB42cYQEiE%3D&reserved=0>
> >> >> >> >>>> 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
> <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=xkQT0KuikbckR%2B74w%2Fz94XQg5UvkhiHvIw%2F7a4v5%2BjI%3D&reserved=0>
> >> >> >> >>>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF
> >> >> >> >>>> 1122
> >> >> >> >>>>
> >> >> >> >>>>
> >> >> >> >>>>
> >> >> >> >>>>
> >> >> >> >>>> ============================================================
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