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

icannlists icannlists at winston.com
Wed May 17 22:09:27 UTC 2017

Thanks Rebecca,

The point I was trying to get at is that even if we are dataless on the false positives from Round 1 (harm to potentially chilled registrants) we aren't dataless on the harm to trademark owners and the consumers they protect.  Say we pick a mark and add to it the product terms contained in its statement of services, we can then check that against the URS and UDRP records for new gTLDs to see if they would have triggered a claims notice.  So that part, at least, is knowable (although quite the job for anyone trying to dig into the data).

I'm looking forward to Staff's reply on whether or not there is a list of domain names abandoned after claims notice.  I'm pretty sure the answer is "no" but let's be safe.  If no, then we have to ask should we continue to allow the harms evidence by UDRP & URS decisions just because we forgot to collect data on abandonments following claims, or so we rely on the UDRP & URS analysis to say we need to enhance claims (and then collect the data in the second round to see if the enhanced claims need further tweaking either up or down).

Hopefully, we will hear from Staff soon.


-----Original Message-----
From: Rebecca Tushnet [mailto:Rebecca.Tushnet at law.georgetown.edu] 
Sent: Wednesday, May 17, 2017 5:01 PM
To: icannlists <icannlists at winston.com>
Subject: Re: [gnso-rpm-wg] Data on non exact matches

Paul, I don't think that the idea that UDRP/URS decisions are relevant evidence is true across the board; even after excluding those with common-law rights only, we'd still have to look at which ones would have gotten a notice if the match process had been in place.

Also, consumers have interests in the websites of legitimate registrants; consumer interests do not line up exactly with trademark owners' interests.

Separately, the percentage of false positives is important to trademark owners too; if 80% of attempts trigger a match notice, that is likely to diminish the deterrent effect--the way we click through a number of other warnings that don't seem particularly targeted to our activity.
Rebecca Tushnet
Georgetown Law
703 593 6759

On Wed, May 17, 2017 at 5:48 PM, icannlists <icannlists at winston.com> wrote:
> Thanks Rebecca.
> Staff, does the information that Rebecca is seeking in existence?  I thought that there was no record of the specific domain names which were non-registered after receiving a notice of claim.
> Rebecca, I think your question has more to do with harm to potentially chilled registrants rather than harm to trademark owners/consumers, correct?  Harm to trademark owners/consumers can be evidenced by UDRP/URS decisions for domain names that would fall into the next expanded category.  Thanks in advance for your thoughts on that.
> 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, May 17, 2017 1:36 PM
> To: gnso-rpm-wg at icann.org
> Subject: [gnso-rpm-wg] Data on non exact matches
> Reposting per J. Scott's request on the call:
> In order to fully evaluate the proposal to extend the match criteria, we really need information on the harm it is supposed to address, including (1) the number of registration attempts that included but were not limited to the text of an entry in the TMCH and (2) the number of such registrations that led to a trademark owner challenge after the fact (therefore excluding URS actions against, for example, typosquatting).
> To the extent that the proposal becomes more limited to specific goods 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.
> Rebecca Tushnet
> Georgetown Law
> 703 593 6759
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