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

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.

From: Greg Shatan <gregshatanipc@gmail.com>
Date: Thursday, April 20, 2017 at 8:41 PM
To: Paul Keating <paul@law.es>
Cc: "Michael Graham (ELCA)" <migraham@expedia.com>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@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@gmail.com

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@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