[gnso-rpm-wg] Recommendation for Question#10 (Appropriate Strings for Notification)

Fri Apr 21 16:00:08 UTC 2017

Rebecca:  You and Paul bring up a good point that I agree should be considered -- i.e. how to prevent what I'll call "over-alerts".  I think it will be very useful to address such concerns in the final proposal, and hope you will join me in considering how to do so -- including wordcrafting. A review of UDRP decisions supports the desirability of the proposed expansion, but if possible it should not create an inverse burden. 

Michael R.

-----Original Message-----
From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Rebecca Tushnet
Sent: Friday, April 21, 2017 4:56 AM
To: Paul Keating <Paul at law.es>
Cc: gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] Recommendation for Question#10 (Appropriate Strings for Notification)

The problem is worse than just "red" matches, of course: a valid TMCH registration for Elle for magazines would lead to a notice for Cottonelle, mademoiselle, seller, belled, etc. A TMCH registration for Louis Vuitton's LV for handbags would lead to a notice for salve, silver, absolve, evolve, revolver, velvet, shelves, etc.

Given what we now know is in the TMCH, we can also anticipate notices going to anyone whose domain name refers to cloud services, rather than the current match on cloud.gTLD alone; hotel for anyone whose domain name refers to hotel services, such as radissonhotel.gTLD; etc.

A flood of irrelevant matches is no good for trademark owners (including the SMEs who might have just one hotel).  To the extent that people might learn to ignore Claims Notices because a lot of the time they’re just irrelevant, that seems to make them much worse deterrents.  On the other hand, if people continue the abandonment rate of over 90%, that makes the new gTLDs much less predictable and available for no clear reason.  I might be able to support a proposal to extend matches in a case in which a competent authority, whether a court or an administrative agency, had determined that a mark was a coined term, not just arbitrary, suggestive, or descriptive with secondary meaning, which could at least justify more worry about any given string, though I’d also be concerned about two-,  three-, or four-letter combinations that might be deemed “unique” and thus coined on their own but could be incorporated in larger, ordinary words.

Separately: in order to fully evaluate this proposal, 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).
What resources do we have to obtain this information?
Rebecca Tushnet
Georgetown Law
703 593 6759

On Fri, Apr 21, 2017 at 6:21 AM, Paul Keating <Paul at law.es> wrote:
> My apologies for the typo.  It was meant to say “fallacy” but 
> apparently I did not catch the autocorrection on my iPad.
>
> I will use either example.  If the mark is “Red” then the notices 
> would go to all that had that phrase, including
>
> Redhead.com
> Redflag.com
> ColorRed.com
>
> Etc.
>
> The continuing issuance of notices is troubling.  It is based upon a 
> presumption that any domain containing the string is confusingly 
> similar to the mark (if that is not the presumption then there is no 
> basis to support issuing the notice).  Further, the notice may well 
> discourage a legitimate domain registrant, the majority are not as 
> sophisticated or knowledgeable as you are and who have neither the 
> stomach nor the funds to incur the expense of hiring counsel and being 
> exposed to the risks litigation let alone defending a UDRP.
>
> Put simply, this is over-the-top protectionism.
>
> Respectfully,
>
> Paul Keating
>
> From: Greg Shatan <gregshatanipc at gmail.com>
> Date: Thursday, April 20, 2017 at 8:41 PM
> To: Paul Keating <paul at law.es>
> Cc: "Michael Graham (ELCA)" <migraham at expedia.com>, "gnso-rpm-wg at icann.org"
> <gnso-rpm-wg at icann.org>
> Subject: Re: [gnso-rpm-wg] Recommendation for Question#10 (Appropriate 
> Strings for Notification)
>
> Michael,
>
> Thanks for your proposal.  This seems reasonable and appropriate.  I 
> would note that the criticism just received is misplaced.
>
> First, nowhere does this proposal state or imply "the flaky [sic] that 
> the inclusion of a trademarked string within a larger domain 
> registration string, is per se confusion."  A claims notice is not a 
> notice or claim of per se anything.  (Actually, there's fairly little 
> that is per se anything in any legal system for any type of claim, 
> that I know of -- but I digress.) It's merely a notification of a 
> match.  The applicant can then make a more informed decision, as noted 
> by Michael, to the benefit of both the applicant and the TMCH registrant.
>
> Second, the example given, "The mark: "BOB's Red Barn" triggering 
> notices for any combination of the above," appears to be the opposite 
> of the way the proposal would work.  Rather than triggering a notice 
> for any combination of Bob's and/or Red and/or Barn, the notice would 
> only be triggered when the entire string "Bob's Red Barn" appears in 
> an attempted application plus additional characters (e.g., "Bob's Red 
> Barn Tomatoes").  (Of course, I could be parsing the example 
> incorrectly, since the phrasing is ambiguous.)
>
> Since the notice will show the mark, it should be clear to the 
> potential applicant whether there is a real issue.  If the 
> registration is for a furniture store, then the applicant should feel 
> a heightened degree of comfort in continuing to registration.  On the 
> other hand, if it's for fresh produce, the degree of comfort would be 
> lower. [Disclaimer: this not legal advice and no attorney/client 
> relationship is formed by reading this email.]
>
> Greg
>
> Greg Shatan
> C: 917-816-6428
> S: gsshatan
> Phone-to-Skype: 646-845-9428
> gregshatanipc at gmail.com
>
>
> On Thu, Apr 20, 2017 at 2:05 PM, Paul Keating <paul at law.es> wrote:
>>
>>  Michael,
>>
>> I cannot agree to your proposed expansion.
>>
>> "The TMCH Rules should be revised to require Trademark Claims Notices 
>> be issued not only for Domain Names that consist of the Exact string 
>> of TMCH Trademarks, but also of any Domain Name that includes 
>> anywhere in the string the Exact string of TMCH Trademarks."
>>
>>
>> Not only does this continue the flaky that the inclusion of a 
>> trademarked string within a larger domain registration string, is per se confusion.
>>
>>  This would also  led to numerous nonsensical notices such as:
>>
>> The mark: "BOB's Red Barn" triggering notices for any combination of 
>> the above.
>>
>> Sent from my iPad
>>
>> On 20 Apr 2017, at 19:29, Michael Graham (ELCA) 
>> <migraham at expedia.com>
>> wrote:
>>
>>     The TMCH Rules should be revised to require Trademark Claims 
>> Notices be issued not only for Domain Names that consist of the Exact 
>> string of TMCH Trademarks, but also of any Domain Name that includes 
>> anywhere in the string the Exact string of TMCH Trademarks
>>
>>
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>
>
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