+1 Brian.

From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Winterfeldt, Brian J.
Sent: Tuesday, April 25, 2017 3:17 PM
To: Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu>
Cc: gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Recommendation for Question#10 (Appropriate Strings for Notification)

Hi Rebecca and all,

We do believe there is merit in expanding the matching rules for the TMCH, at least with respect to Trademark Claims services. We would support expanded matching for Trademark Claims such that any requested domain name registration containing the TMCH-recorded mark, and not just exact matches, would receive a Claims Notice, and where such a registration were to be completed, the mark owner would receive a corresponding Notice of Registered Name (NORN). To illustrate, if the recorded mark is EXXON, we would support Trademark Claims/NORNs for such potential domain name registrations as:

· EXXON.TLD (exact match)

· WWWEXXON1.TLD (mark contained)

· EXXONGAS.TLD (mark + keyword / mark contained)

· EXXON-GAS.TLD (mark+keyword / mark contained)

· EXXONERATE.TLD (mark contained, possible typo)

Again, the Claims notice would merely apprise the prospective registrant of claimed rights in the trademark EXXON, and it would be up to the registrant whether to proceed or abandon the registration. Similarly, if the registrant were to proceed, and the trademark owner received the corresponding NORN, it would be aware of the registration and could determine if any enforcement action were necessary. This does not appear to be any expansion of existing trademark rights, as it merely triggers notices where the trademark is implicated.

Again, our thoughts as outlined above are limited to Trademark Claims. However, we would be interested in considering others’ thoughts on expanded matching rules for purposes of Sunrise, and take no specific position at this time either to reject this possibility or to support it.

Best regards,

Brian

Brian J. Winterfeldt

Co-Head of Global Brand Management and Internet Practice

Mayer Brown LLP

bwinterfeldt@mayerbrown.com

1999 K Street, NW

Washington, DC 20006-1101

202.263.3284 direct dial

202.830.0330 fax

1221 Avenue of the Americas

New York, New York 10020-1001

212.506.2345 direct dial

On Apr 25, 2017, at 2:32 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:

That's because it came from words that weren't mine.

If no one at all is interested in defending the "expanding the match"
proposal that this thread is supposed to cover, does that mean that we
have a consensus that it's not worth pursuing? I'm not sure what the
procedure for determining that would be.
Rebecca Tushnet
Georgetown Law
703 593 6759

On Tue, Apr 25, 2017 at 2:23 PM, Paul Keating <paul@law.es> wrote:

I'm sorry but these 2 statements seem to be in conflict with each other.....

I don't in fact think that the TMCH contains names of those individuals who've been wrongly deterred from registering domain names they had a right to register.

As has been discussed for a while, I think it contains other relevant evidence, like more words like "cloud" and "hotel" that prima facie don't seem likely to justify preemptive rights across new gTLDs.

I am more concerned about the latter but must say I really don't understand what is meant by the former.

Sent from my iPad

On 25 Apr 2017, at 16:22, Scott Austin <SAustin@vlplawgroup.com> wrote:

I don't in fact think that the

   TMCH contains names of those individuals who've been wrongly deterred

   from registering domain names they had a right to register. As has

   been discussed for a while, I think it contains other relevant

   evidence, like more words like "cloud" and "hotel" that prima facie

   don't seem likely to justify preemptive rights across new gTLDs.

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