[GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies

[Greg Shatan]

As it now stands, the “variations” service is available only during the
“ongoing notice period” and not during the Trademark Claims Period (first
90 days of GA).  This suggests that an option to consider is putting the
variations service into the Trademark Claims Period as well.  That would
raise questions about whether the notice will go to the applicant during
that period, and whether there should be any cost for the service during
Trademark Claims.  Finally, this raises the question of how the specific
variations available now from the TMCH stack up against the non-exact-match
proposals.

Best regards,

Greg

On Thu, May 9, 2019 at 3:02 PM Paul Tattersfield <gpmgroup at gmail.com> wrote:

> Hi Phil,
>
> Sorry for the less than clear reply earlier, not helpful. For non-exact
> match domain registrations an optional notification service is already
> available to mark holders so I was curious to know given the service is
> optional, was Michael aware of it before making his proposal? And if not
> would such a service go anyway to meeting his concerns? I was hoping it
> would because to issue TMCH notices to would-be registrants on every
> non-exact-match domain registration has the potential to cause a lot of
> unnecessary anxiety with well intentioned registrants while providing very
> little deterrent effect for persistent miscreants and especially so on
> shorter marks.
>
> Best regards,
>
>
> Paul
>
>
> On Thu, May 9, 2019 at 6:12 PM Corwin, Philip <pcorwin at verisign.com>
> wrote:
>
>> Paul T:
>>
>>
>>
>> To clarify, are you proposing that Claims Notices should continue to be
>> generated only in response to prospective registrations of domains where
>> the name is an exact match for a TMCH-registered mark, but that the TMCH
>> notification service should be expanded to provide the mark holder with
>> notice whenever a domain name that includes the exact match is registered?
>>
>>
>>
>> Thanks, Philip
>>
>>
>>
>> Philip S. Corwin
>>
>> Policy Counsel
>>
>> VeriSign, Inc.
>>
>> 12061 Bluemont Way
>> <https://maps.google.com/?q=12061+Bluemont+Way+%0D%0AReston,+VA+20190&entry=gmail&source=g>
>> Reston, VA 20190
>> <https://maps.google.com/?q=12061+Bluemont+Way+%0D%0AReston,+VA+20190&entry=gmail&source=g>
>>
>> 703-948-4648/Direct
>>
>> 571-342-7489/Cell
>>
>>
>>
>> *"Luck is the residue of design" -- Branch Rickey*
>>
>>
>>
>> *From:* GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> * On Behalf Of *Paul
>> Tattersfield
>> *Sent:* Thursday, May 09, 2019 12:27 PM
>> *To:* BECKHAM, Brian <brian.beckham at wipo.int>
>> *Cc:* gnso-rpm-wg at icann.org
>> *Subject:* [EXTERNAL] Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice
>> Sub Team -- Proposal for Submission and Apologies
>>
>>
>>
>> Thanks for the link Brian, my question to Michael was really to see if
>> the the issues for non-match domains could be met with jsut an email to the
>> TM holder rather than a notice to every domain appliclicant with a TM
>> substring in it.
>>
>>
>>
>> On Thu, May 9, 2019 at 5:17 PM BECKHAM, Brian <brian.beckham at wipo.int>
>> wrote:
>>
>> Paul, and Paul,
>>
>>
>>
>> This is already provided by the TMCH:
>>
>>
>>
>> https://www.trademark-clearinghouse.com/content/ongoing-notifications
>>
>>
>>
>> Brian
>>
>>
>>
>> *From:* GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> *On Behalf Of *Paul
>> Keating
>> *Sent:* Thursday, May 9, 2019 12:47 PM
>> *To:* Paul Tattersfield <gpmgroup at gmail.com>
>> *Cc:* gnso-rpm-wg at icann.org
>> *Subject:* Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team
>> -- Proposal for Submission and Apologies
>>
>>
>>
>> Excellent idea Paul!
>>
>>
>>
>> This is a service that the TMCH could easily implement.  It would then
>> allow the trademark holder to deal with the issue in a responsible manner
>> instead of having a knee-jerk and chilling email sent to the registrant.
>>
>>
>>
>> Paul. Keating
>>
>>
>>
>> *From: *Paul Tattersfield <gpmgroup at gmail.com>
>> *Date: *Thursday, May 9, 2019 at 1:48 AM
>> *To: *Paul Keating <Paul at law.es>
>> *Cc: *"Michael Graham (ELCA)" <migraham at expediagroup.com>, Julie Hedlund
>> <julie.hedlund at icann.org>, "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org
>> >
>> *Subject: *Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team
>> -- Proposal for Submission and Apologies
>>
>>
>>
>> Hi Michael,
>>
>> Couple of quick questions
>>
>>
>> Wouldn't single letter marks generate a lot of notices especially an 'a'
>> or 'e' ?
>>
>> Would it be possible to just send a notfication email to the mark holder
>> so they could remain informed of new registrations and be able to montior
>> the new domains and thereby avoid the chilling effect of lots of TMCH
>> notices to gwnuine registrants?
>>
>> Best regards,
>>
>> Paul.
>>
>>
>>
>> On Wed, May 8, 2019 at 5:14 PM Paul Keating <Paul at law.es> wrote:
>>
>> With all respect to Michael, I do not believe this proposal should be
>> accepted at this time.
>>
>>
>>
>> Questions 7 and 8 remain unanswered.  These are important threshold
>> questions that the proponent should complete prior to submission.
>> Otherwise the work group is bogged down considering or perhaps even
>> assisting in the development of basic rationale for the proposal.  This
>> should be undertaken by the proponent.
>>
>>
>>
>> Thus, here we have a proposal to significantly expand the scope of
>> notification.  It would, for example, trigger a notice for Apple Computers
>> if I wanted to register Pineapple. xyz or a trademark holder for “THE” if I
>> wanted to register Theater.club or for Nike if I wanted to register
>> Airplane.xyz
>>
>>
>>
>> The proposal provides no evidence that would support the proposal
>> (Question 7).
>>
>>
>>
>> Nor does it reference any data reviewed by the Sub Team that show any
>> need to address the issue (Question 8).
>>
>>
>>
>>
>>
>> With a properly completed questionnaire this may become a legitimate
>> request but it currently does not meet the requirements IMHO.
>>
>>
>>
>> Paul Keating
>>
>>
>>
>> *From: *GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> on behalf of
>> "Michael Graham (ELCA) via GNSO-RPM-WG" <gnso-rpm-wg at icann.org>
>> *Reply-To: *"Michael Graham (ELCA)" <migraham at expediagroup.com>
>> *Date: *Wednesday, May 8, 2019 at 5:40 PM
>> *To: *Julie Hedlund <julie.hedlund at icann.org>, "gnso-rpm-wg at icann.org" <
>> gnso-rpm-wg at icann.org>
>> *Subject: *[GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team --
>> Proposal for Submission and Apologies
>>
>>
>>
>> Unfortunately, I will not be able to attend the call today due to
>> pressing business matters.  Because the schedule calls for discussion of
>> answers and proposals regarding Question 4 regarding whether the Exact
>> Match standard for sending Claims Notices should be extended, and I wish to
>> resubmit my “Exact Match Plus” proposal for either the Sub Team’s approval
>> or approval for placing before the community for Public Comment, I am
>> attaching my proposal – which I have revised to the form for submission of
>> proposals.  I have not completed the references to Evidence, and had hoped
>> to do so in part today during our call.  I shall, however, complete this if
>> granted time to do so before our next call.
>>
>>
>>
>> Thank you all for your consideration and indulgence,
>>
>> Michael R.
>>
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