[gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
icannlists
icannlists at winston.com
Fri Apr 28 16:15:47 UTC 2017
He Rebecca,
Look at the domain name registration date in UDRP or URD decisions and compare it to the Claims start date and end date and extrinsic evidence of TMCH lodgements as noted in other decisions (or look for a Spec. 13 filing since a validated TMCH filing is necessary for one of those).
Today's daily example of the actual existence of cybersquatting in exact match second level domains:
Virginamerica.space http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2017-0426
Claims started (presumably) with Landrush: 1/19/2015 See https://www.webnames.ca/domain-registration/new-domain-name-launch-schedule.aspx
Domain name registration date: October 27, 2016 (outside of claims window)
At least as of March 26, 2016, Complainant had lodged a VIRGIN AMERICA mark in the TMCH. The TMCH validated the trademark. See http://www.adrforum.com/domaindecisions/1667149D.htm
Bottom line: there is some data out there to gather which is actually relevant to the question but it will take some effort to gather.
Best,
Paul
-----Original Message-----
From: Rebecca Tushnet [mailto:rlt26 at georgetown.edu]
Sent: Thursday, April 27, 2017 1:42 PM
To: McGrady, Paul D. <PMcGrady at winston.com>
Cc: icannlists <icannlists at winston.com>; Rebecca Tushnet <Rebecca.Tushnet at law.georgetown.edu>; Greg Shatan <gregshatanipc at gmail.com>; gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
I agree it exists. My questions: How can these examples be correlated with TMCH entries? With an exact match, was it subject to a claims notice or was the TM owner not a TMCH user? How many TMCH users would avoid subsequent proceedings by expanding claims notices versus the overdeterrence of over-matching or diluting the effects of a claims notice if people learn that false positives are ordinary?
Sent from my phone. Apologies for terseness/typos.
> On Apr 27, 2017, at 1:27 PM, McGrady, Paul D. <PMcGrady at winston.com> wrote:
>
> Further to my post below, today's example of exact mark cybersquatting
> in the <.cloud> and <.store> new gTLDs.
> http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2017-0323
>
>
> Best,
> Paul
>
>
>
> -----Original Message-----
> From: icannlists
> Sent: Thursday, April 27, 2017 6:43 AM
> To: 'Rebecca Tushnet' <Rebecca.Tushnet at law.georgetown.edu>; Greg
> Shatan <gregshatanipc at gmail.com>
> Cc: gnso-rpm-wg at icann.org
> Subject: RE: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and
> #16 (Design Mark and Appropriate Balance)
>
> Rebecca,
>
> At this point in the DNS' history there are literally thousands of UDRP and URS decisions attesting to the reality of cybersquatting as a phenomenon. I'm pretty sure it is going to be difficult to sell a fiction that cybersquatting doesn't exist. While I understand it might be frustrating that there is not a single example on the record of a person who abandoned after Claims by being "chilled", implying that cybersquatting is not really happening in the real world just isn't plausible. I know you have been asking for citations lately, so I will just refer you to http://www.adrforum.com/SearchDecisions and http://www.wipo.int/amc/en/domains/search/ where you can see cybersquatting decisions.
>
> 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: Thursday, April 27, 2017 12:09 AM
> To: Greg Shatan <gregshatanipc at gmail.com>
> Cc: gnso-rpm-wg at icann.org
> Subject: Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and
> #16 (Design Mark and Appropriate Balance)
>
> 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-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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>> --
>>
>> Greg Shatan
>> C: 917-816-6428
>> S: gsshatan
>> Phone-to-Skype: 646-845-9428
>> gregshatanipc at gmail.com
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