[gnso-rpm-wg] Data on non exact matches

Phil Corwin psc at vlaw-dc.com
Wed May 17 19:16:36 UTC 2017


As regards your magma.tld example, if I was an ordinary domain registrant unversed in trademark law or UDRP/URS practice and received five separate claims notices of potential infringement, I doubt that I would proceed to complete the registration -- even if the domain was intended to be informational in regard to geology or volcanoes.

Best, Philip

Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
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Washington, DC 20004

Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey

-----Original Message-----
From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of George Kirikos
Sent: Wednesday, May 17, 2017 3:10 PM
To: gnso-rpm-wg
Subject: Re: [gnso-rpm-wg] Data on non exact matches

Hi folks,

On Wed, May 17, 2017 at 2:35 PM, Rebecca Tushnet <Rebecca.Tushnet at law.georgetown.edu> wrote:
> and services, the evidence of need should be likewise limited.  Then, 
> as George K. eloquently explained, we'd also want to see how many 
> attempts/registrations would have been flagged in an expanded match 
> system, to get a sense of the potential for false positives.

(1) Just to expand on this while it's still fresh in my mind, one can run a simulation using a proposed expanded matching rule, to test what the increased number of claims notices would be. If, for example, the frequency of claims notices increased from 30% to 31%, that would be a more acceptable situation compared to an increase from 30% to 80% or 90%.

To run those simulations, one would need an appropriate data set on historical *attempted* registrations. Or, one would have to start collecting that data, if it's not already being done. One could, in the alternative, run it against the .com zone file, or another similar data set, but that'd be imperfect (since the .com zone file never had claims notices to begin with, doesn't match *attempted* registrations, etc.).

(2) For those advocating for "expanded notices", a public TMCH database would allow good faith registrants to do their own checks for plurals, or other types of "expanded matches" on their own.

(3) As I noted during the call, for longer domain name registrations, there could be multiple TM claims notices for a single domain name.

e.g. MAGMA.TLD could trigger:

(i) MAGMA -- http://tsdr.uspto.gov/#caseNumber=86888435&caseType=SERIAL_NO&searchType=statusSearch
(ii) GM -- General Motors, obviously
(iii) MAG -- http://tsdr.uspto.gov/#caseNumber=87065941&caseType=SERIAL_NO&searchType=statusSearch
(iv) AG -- http://tsdr.uspto.gov/#caseNumber=85293626&caseType=SERIAL_NO&searchType=statusSearch
(v) AGM -- http://tsdr.uspto.gov/#caseNumber=77181108&caseType=SERIAL_NO&searchType=statusSearch
(vi) GMA -- http://tsdr.uspto.gov/#caseNumber=75268825&caseType=SERIAL_NO&searchType=statusSearch
(and maybe others!)

and that was just for an innocuous 5-letter domain. Imagine the matches for a 10 or 15 character domain? Registrants might need to check 15, 20, or more TM claims notices, before being allowed to register a domain. The TM+50 trade-off seemed to recognize this situation.

(4) Another solution, although it has issues amongst some TM holders, would be to limit expanded matches only to those marks that are most damaged by cybersquatting, i.e. auction off a limited number (say 50 or 100) of slots that get the expanded notice privilege. Financial firms like Paypal, or other firms that are often the targets of cybersquatting, e.g. Microsoft, Google, Yahoo would likely be the winners of those auctions. The auctions could be held every 6 months or a year, so the market would determine the "value" of those slots (e.g. a firm that sees it doesn't get much benefit wouldn't bid as much the next time, and some other firm would win the slot, etc.).

This solution recognizes the reality that not all marks are equal in strength or in economic value, or are equally at risk for cybersquatting. It avoids defining what is a so-called "famous" mark, by allowing the market mechanism (auctions) to allocate the slots.
With strict limits as to the number of slots, it also helps reduce the "false positives" above (i.e. the simulation in the first paragraph of point 1 above wouldn't change as much when it's only 50 or 100 marks, compared to the entire TMCH database of 40,000+ marks).

Proceeds from such a routine auction might also be allocated to causes related to reducing reverse domain name hijacking (to directly balance against the expansion of TM claims notices).


George Kirikos
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