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

[George Kirikos]

Hi folks,

On Wed, May 17, 2017 at 3:16 PM, Phil Corwin <psc at vlaw-dc.com> wrote:
> 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.

Yes, it implicitly attempts to shift the burden of proof from "TM
holder needs to prove registrant is cybersquatting" to "registrant
needs to prove they're not cybersquatting." That's a chilling effect
for registrants. Typically, the really bad actors are going to ignore
the claims notices, i.e. the really bad actors are intentionally
looking to infringe upon those famous marks, so the burden is
disproportionately felt by the innocent.

Furthermore, if there was expanded matching and the domain name was
registered (a big 'if', as you rightly note!), then 6 (or more!) TM
owners would get an email from the TMCH saying that "MAGMA.TLD" was
registered, and have to deal with those notices, which creates a cost
for them.

Recall, TM holders can (and probably already do) do such expanded
matching on their own, using domain registration monitoring tools like
those from DomainTools and others (or by monitoring the zone files
themselves). A quick cease and desist email/letter within the first
few days of registration might be satisfactory, instead. (although
even that can be overreach, if done on an automated basis -- there
have been notorious and dubious C&Ds that have been sent out in the
past).

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/