[gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

Thu Apr 27 02:53:49 UTC 2017

"Maybe absolutely no one else besides the TMCH entrant/s had a legitimate
business using those terms."

That is clearly and absolutely *not* the basis of trademark rights,
trademark registration or entry into the TMCH.  Nor is it the way Sunrise
or Claims work.  Ridiculous.

Greg

*Greg Shatan *C: 917-816-6428
S: gsshatan
Phone-to-Skype: 646-845-9428
gregshatanipc at gmail.com

On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet <
Rebecca.Tushnet at law.georgetown.edu> wrote:

> Yes, because we don't have good survey evidence, one of the questions
> is what we can infer from the circumstantial evidence available to us,
> particularly the over 90% abandonment rate combined with the top
> queries being words like forex, cloud, and love.  Maybe absolutely no
> one else besides the TMCH entrant/s had a legitimate business using
> those terms.  But I doubt it.
> Rebecca Tushnet
> Georgetown Law
> 703 593 6759
>
>
> On Wed, Apr 26, 2017 at 10:37 PM, icannlists <icannlists at winston.com>
> wrote:
> > Thanks Rebecca.  I've never heard of a trademark owner being deterred by
> a claims notice since one of the explicit defenses in the UDRP is when a
> registrant has rights or legitimate interests in a corresponding
> trademark.  So, I think that one may be a bit of a red herring.
> >
> > However, your comment about avoiding overreach is well received and we
> should keep it in mind while at the same time not under-reaching either -
> when we do that, Grandma gets phished.
> >
> > Best,
> > Paul
> >
> >
> >
> > -----Original Message-----
> > From: Rebecca Tushnet [mailto:Rebecca.Tushnet at law.georgetown.edu]
> > Sent: Wednesday, April 26, 2017 9:17 PM
> > To: icannlists <icannlists at winston.com>
> > Cc: Silver, Bradley <Bradley.Silver at timewarner.com>;
> gnso-rpm-wg at icann.org
> > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16
> (Design Mark and Appropriate Balance)
> >
> > Avoiding overreaching is pro-trademark, as the public reaction to
> SOPA/PIPA and patent trolls has shown with respect to copyright and patent.
> There are also the interests of trademark owners who aren't participating
> in this process but may want to register domain names that are perfectly
> legitimate for their goods/services and jurisdictions.  Some of them may
> inevitably receive notices and be deterred, but there are steps we can take
> to limit that problem.
> > Rebecca Tushnet
> > Georgetown Law
> > 703 593 6759
> >
> >
> > On Wed, Apr 26, 2017 at 9:50 PM, icannlists <icannlists at winston.com>
> wrote:
> >> Thanks Rebecca.  I'm not characterizing you as anti-trademark; just
> your arguments and positions to date on this list.  We would very much
> welcome anything favorable to trademarks that you wish to add to the
> discourse.
> >>
> >> Best,
> >> Paul
> >>
> >>
> >>
> >> -----Original Message-----
> >> From: Rebecca Tushnet [mailto:Rebecca.Tushnet at law.georgetown.edu]
> >> Sent: Wednesday, April 26, 2017 8:00 PM
> >> To: icannlists <icannlists at winston.com>
> >> Cc: Silver, Bradley <Bradley.Silver at timewarner.com>;
> >> gnso-rpm-wg at icann.org
> >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16
> >> (Design Mark and Appropriate Balance)
> >>
> >> Please don't characterize me as anti-trademark; I strongly believe in
> >> the consumer protection function of trademarks, and also in trademark
> >> protection in some circumstances for business purposes.  See
> >> https://harvardlawreview.org/2017/01/registering-disagreement-registra
> >> tion-in-modern-american-trademark-law/
> >>
> >> Asking again: for those of you who think it doesn't matter if claimants
> who don't own relevant rights get to use the TMCH, what then did ICANN mean
> by its stated intent not to expand trademark rights?
> >> Rebecca Tushnet
> >> Georgetown Law
> >> 703 593 6759
> >>
> >>
> >> On Wed, Apr 26, 2017 at 8:46 PM, icannlists <icannlists at winston.com>
> wrote:
> >>> Thanks Rebecca.  There is not much new here.  Whomever registers a
> second level domain name first (Sunrise - TM owner), Premium (Rich person)
> or Landrush (TM owner who didn't want to pay the Sunrise shakedown price or
> regular folks like all of us), someone gets the exclusive rights to that
> second level.  So, it is not just a question of if, but of when and who.  I
> think it is OK to just say "I don't want it to be a trademark owner."
> Others will disagree, but we don't have to keep this in a mysterious
> context or otherwise try to layer on some free speech issue that doesn't
> exist.  Trademark owners want them first in order to protect their brands
> and consumers.  Others who are anti-trademarks don't want them to have them
> first and would prefer someone else gets the exclusive right.  Fair
> enough.  Now we see if we can get to consensus on changing the AGB.  I
> doubt we will, but at least the free speech veneer is pulled back.
> >>>
> >>> 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, April 26, 2017 3:11 PM
> >>> To: Silver, Bradley <Bradley.Silver at timewarner.com>
> >>> Cc: gnso-rpm-wg at icann.org
> >>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16
> >>> (Design Mark and Appropriate Balance)
> >>>
> >>> By that logic the mandate not to expand on trademark rights would
> >>> have been pointless because no activity in domain name space could
> >>> ever have expanded trademark rights.  Call it a right, call it a
> >>> privilege, call it an alien from Xenon if you like, but ICANN did not
> >>> want trademark owners to be able to assert control over domain names
> >>> in excess of what underlying trademark law would have allowed.  Under
> >>> the "nothing in domain names can expand trademark rights because
> >>> they're never exclusive" logic, was the ICANN direction completely
> >>> meaningless, or did it have some meaning?  (Trademark rights, of
> >>> course, are never "exclusive" either, which is why we can use any
> >>> examples we want in this discussion.) Rebecca Tushnet Georgetown Law
> >>> 703 593 6759
> >>>
> >>>
> >>> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg <
> gnso-rpm-wg at icann.org> wrote:
> >>>> Jeremy - the TMCH does not allow exclusive rights in domains.  Having
> a mark in the TMCH affords nothing close an exclusive right.  That's a
> basic truth which shouldn’t be ignored.
> >>>>
> >>>> -----Original Message-----
> >>>> From: gnso-rpm-wg-bounces at icann.org
> >>>> [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Jeremy Malcolm
> >>>> Sent: Wednesday, April 26, 2017 1:32 PM
> >>>> To: gnso-rpm-wg at icann.org
> >>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16
> >>>> (Design Mark and Appropriate Balance)
> >>>>
> >>>> On 26/4/17 9:00 am, Colin O'Brien wrote:
> >>>>> Nice try Rebecca but I'm not attempting to overturn the apple cart.
> If you have actual examples of problems then provide them otherwise this is
> an indulgent  academic exercise.
> >>>>
> >>>> The fact that the TMCH is allowing exclusive rights in domains that
> go beyond the equivalent rights in domestic trademark law is itself a
> problem if we accept that the TMCH was meant to track trademark law.
> >>>>
> >>>> --
> >>>> Jeremy Malcolm
> >>>> Senior Global Policy Analyst
> >>>> Electronic Frontier Foundation
> >>>> https://eff.org
> >>>> jmalcolm at eff.org
> >>>>
> >>>> Tel: 415.436.9333 ext 161
> >>>>
> >>>> :: Defending Your Rights in the Digital World ::
> >>>>
> >>>> Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt
> >>>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122
> >>>>
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