Re: [gnso-rpm-wg] Recommendation for Question#10 (Appropriate Strings for Notification)
To be clear: I submitted the following proposals in my personal capacity – and not as a representative of or on behalf of either Expedia, Inc., the Intellectual Property Constituency or any other entity. Michael R. Graham Michael R. Graham Senior Corporate Counsel Global Director, Intellectual Property Expedia Legal & Corporate Affairs T +1 425.679.4330 | F +1 425.679.7251 M +1 425.241.1459 Expedia, Inc. 333 108th Avenue NE | Bellevue | WA 98004 MiGraham@Expedia.com<mailto:MiGraham@Expedia.com> From: Michael Graham (ELCA) Sent: Thursday, April 20, 2017 8:49 AM To: gnso-rpm-wg@icann.org Subject: Recommendation for Question#10 (Appropriate Strings for Notification) Pardon the brevity and lateness of the following, but I wanted to submit the following Rationale and Proposals in regard to Question 10 with the understanding that they will undoubtedly be subject of discussion and exposition. The intent of this Proposal is to expand the scope of domain name strings subject to Trademark Claims Service notices in order to help good faith domain name applicants avoid possible conflict and expense when they inadvertently seek to register a domain name that includes and could create confusion with a Trademark registered in the TMCH. This will avoid unnecessary cost to the Applicant, and enable it to either prepare for or ensure that its planned use of a domain name will not lead to conflict. For the same reasons – and because of the success of the Trademark Claims procedure in deterring bad faith domain name registrations in the new gTLDs in the interests of both trademark owners and Internet users – I also propose expanding the scope of the Trademark Claims Service. Michael R. Graham Michael R. Graham Senior Corporate Counsel Global Director, Intellectual Property Expedia Legal & Corporate Affairs T +1 425.679.4330 | F +1 425.679.7251 M +1 425.241.1459 Expedia, Inc. 333 108th Avenue NE | Bellevue | WA 98004 MiGraham@Expedia.com<mailto:MiGraham@Expedia.com> Rationale and Proposal: We (the RPM Working Group) have identified a minor change in current TMCH Trademark Claims Service practices that could benefit both Domain Name Applicants and Trademark Owners: 1. We have become aware that Domain Name Applicants (Applicants) and Trademark Owners who have registered their trademarks in the TMCH (TMCH Trademarks) have both sustained unnecessary expense in time, effort, and planning when Domain Names that have proceeded to registration contain strings that are confusingly similar to TMCH Trademarks are challenged after their registration. 2. Current Trademark Claims Notice rules limit the issuance of Notifications to applications that consist solely of the exact TMCH Trademark. 3. As a result, Applicants are unaware of potential conflicts and may proceed with expending time, money and planning on the use of Domain Names that may be challenged. 4. Applicants should have the ability to consider whether to proceed with their planning and use of Domain Names in light of TMCH Trademarks at the earliest opportunity in order to conserve fees and planning efforts. 5. Trademark Owners should have the ability to identify both Domain Names that could create confusion and those that will not at the earliest opportunity. Proposal: 1. 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. In addition, we believe the success of the Trademark Claims Service in enabling both trademark owners and domain name applicants to learn of potential conflicts from an early stage in the application process -- when changes can be made or applications either abandoned or continued with the least expense of time, effort, or disruption – would support expansion of the service beyond the new gTLDs. For the same reasons, we propose the following: Proposal: The Trademark Claims Service and TMCH registration program should be expanded to apply to all Legacy TLDs as well as New gTLDs.
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
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 On Thu, Apr 20, 2017 at 2:05 PM, Paul Keating <paul@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@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
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Thought: This could pose burden on small businesses & could become an overwhelming chore for some brand owners. Perhaps there’s a way the TMCH could allow options to brand owners for the returns they want (full string unlimited characters, registrant country, etc.)? * Google has TMs for “Blogger” * There are hundreds of millions of bloggers worldwide Google may not want to monitor every domain that includes “blogger”, rather, they may want to monitor a smaller set of exact matches. * It may be beneficial for them to be able to limit the string to 12 characters, rather than receiving a warning for every iteration of “blogger” like ShakespearePoemsBlogger.com. Likewise a local, single-location restaurant w/ a trademark for “Burger Man” may only be concerned w/ results inside his/her home country. Simple string queries could work. I understand this would require some programmingat TMCH, but it could significantly reduce the numbers of human work-hours for notices, clarifications & responses for both brand owners & domain registrants. Cyntia King E: cking@modernip O: +1 81-ModernIP C: +1 818.209.6088 From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Greg Shatan Sent: Thursday, April 20, 2017 1:42 PM To: Paul Keating <paul@law.es> Cc: 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 <mailto:gregshatanipc@gmail.com> gregshatanipc@gmail.com On Thu, Apr 20, 2017 at 2:05 PM, Paul Keating <paul@law.es <mailto:paul@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@expedia.com <mailto: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 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Good point, Cyntia – though I think most trademark registrants would prefer the burden of reviewing notices to delayed knowledge. Your idea of offering variable length and geographic scopes might create an additional burden for TMCH, but is interesting – they could always charge a premium. Michael R. From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Cyntia King Sent: Thursday, April 20, 2017 12:26 PM To: 'Greg Shatan' <gregshatanipc@gmail.com>; 'Paul Keating' <paul@law.es> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Question#10 (Appropriate Strings for Notification) Thought: This could pose burden on small businesses & could become an overwhelming chore for some brand owners. Perhaps there’s a way the TMCH could allow options to brand owners for the returns they want (full string unlimited characters, registrant country, etc.)? * Google has TMs for “Blogger” * There are hundreds of millions of bloggers worldwide Google may not want to monitor every domain that includes “blogger”, rather, they may want to monitor a smaller set of exact matches. * It may be beneficial for them to be able to limit the string to 12 characters, rather than receiving a warning for every iteration of “blogger” like ShakespearePoemsBlogger.com. Likewise a local, single-location restaurant w/ a trademark for “Burger Man” may only be concerned w/ results inside his/her home country. Simple string queries could work. I understand this would require some programmingat TMCH, but it could significantly reduce the numbers of human work-hours for notices, clarifications & responses for both brand owners & domain registrants. Cyntia King E: cking@modernip O: +1 81-ModernIP C: +1 818.209.6088 [MIP Composite (Email)] From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Greg Shatan Sent: Thursday, April 20, 2017 1:42 PM To: Paul Keating <paul@law.es<mailto:paul@law.es>> Cc: gnso-rpm-wg@icann.org<mailto: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<mailto:gregshatanipc@gmail.com> On Thu, Apr 20, 2017 at 2:05 PM, Paul Keating <paul@law.es<mailto:paul@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@expedia.com<mailto: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 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
+1 Excellent idea Cyntia. From: Cyntia King <cking@modernip.com> Date: Thursday, April 20, 2017 at 9:25 PM To: 'Greg Shatan' <gregshatanipc@gmail.com>, Paul Keating <paul@law.es> Cc: <gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] Recommendation for Question#10 (Appropriate Strings for Notification)
Thought: This could pose burden on small businesses & could become an overwhelming chore for some brand owners. Perhaps there¹s a way the TMCH could allow options to brand owners for the returns they want (full string unlimited characters, registrant country, etc.)?
* Google has TMs for ³Blogger² * There are hundreds of millions of bloggers worldwide Google may not want to monitor every domain that includes ³blogger², rather, they may want to monitor a smaller set of exact matches. * It may be beneficial for them to be able to limit the string to 12 characters, rather than receiving a warning for every iteration of ³blogger² like ShakespearePoemsBlogger.com.
Likewise a local, single-location restaurant w/ a trademark for ³Burger Man² may only be concerned w/ results inside his/her home country.
Simple string queries could work. I understand this would require some programmingat TMCH, but it could significantly reduce the numbers of human work-hours for notices, clarifications & responses for both brand owners & domain registrants.
Cyntia King E: cking@modernip O: +1 81-ModernIP C: +1 818.209.6088
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Greg Shatan Sent: Thursday, April 20, 2017 1:42 PM To: Paul Keating <paul@law.es> Cc: 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 <mailto:gregshatanipc@gmail.com>
On Thu, Apr 20, 2017 at 2:05 PM, Paul Keating <paul@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@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
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
+1 On Thu, 20 Apr 2017 at 22:26 Cyntia King <cking@modernip.com> wrote:
Thought:
This could pose burden on small businesses & could become an overwhelming chore for some brand owners.
Perhaps there’s a way the TMCH could allow options to brand owners for the returns they want (full string unlimited characters, registrant country, etc.)?
- Google has TMs for “Blogger” - There are hundreds of millions of bloggers worldwide
Google may not want to monitor every domain that includes “blogger”, rather, they may want to monitor a smaller set of exact matches.
- It may be beneficial for them to be able to limit the string to 12 characters, rather than receiving a warning for every iteration of “blogger” like ShakespearePoemsBlogger.com.
Likewise a local, single-location restaurant w/ a trademark for “Burger Man” may only be concerned w/ results inside his/her home country.
Simple string queries could work.
I understand this would require some programmingat TMCH, but it could significantly reduce the numbers of human work-hours for notices, clarifications & responses for both brand owners & domain registrants.
*Cyntia King*
E: cking@modernip
O: +1 81-ModernIP
C: +1 818.209.6088
[image: MIP Composite (Email)]
*From:* gnso-rpm-wg-bounces@icann.org [mailto: gnso-rpm-wg-bounces@icann.org] *On Behalf Of *Greg Shatan *Sent:* Thursday, April 20, 2017 1:42 PM *To:* Paul Keating <paul@law.es> *Cc:* 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
On Thu, Apr 20, 2017 at 2:05 PM, Paul Keating <paul@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@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
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
-- jonathan matkowsky, vp - ip & head of global brand threat mitigation
My apologies for the typo. It was meant to say ³fallacy² but apparently I did not catch the autocorrection on my iPad. I will use either example. If the mark is ³Red² 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@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 <mailto:gregshatanipc@gmail.com>
On Thu, Apr 20, 2017 at 2:05 PM, Paul Keating <paul@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@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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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@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@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
On Thu, Apr 20, 2017 at 2:05 PM, Paul Keating <paul@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@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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Rebecca, +1 And thank you for stating this issue far more eloquently than I did. Paul On 4/21/17, 1:55 PM, "Rebecca Tushnet" <Rebecca.Tushnet@law.georgetown.edu> wrote:
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 they¹re 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 I¹d also be concerned about two-, three-, or four-letter combinations that might be deemed ³unique² 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@law.es> wrote:
My apologies for the typo. It was meant to say ³fallacy² but apparently I did not catch the autocorrection on my iPad.
I will use either example. If the mark is ³Red² 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@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
On Thu, Apr 20, 2017 at 2:05 PM, Paul Keating <paul@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@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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Agree with Professor Tushnet on this one. Also, we haven't seen conclusive evidence that the Claims notices were particularly effective -- not sure why we would expand their use. On the other hand, we do have evidence that they are operationally difficult and many registrars just chose to sit it out and wait the 90 days. Expanding the use of the notices would just lead to more registrars sitting on the sidelines. Jon
On Apr 21, 2017, at 7:55 AM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
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@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@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
On Thu, Apr 20, 2017 at 2:05 PM, Paul Keating <paul@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@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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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@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Friday, April 21, 2017 4:56 AM To: Paul Keating <Paul@law.es> Cc: gnso-rpm-wg@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@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@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
On Thu, Apr 20, 2017 at 2:05 PM, Paul Keating <paul@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@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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Paul: Thanks for your comments, but see Greg’s email, which I think is right on target in answering your criticisms. Michael R. From: Paul Keating [mailto:paul@law.es] Sent: Thursday, April 20, 2017 11:06 AM To: Michael Graham (ELCA) <migraham@expedia.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Question#10 (Appropriate Strings for Notification) 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<mailto: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
participants (7)
-
Cyntia King -
Greg Shatan -
Jon Nevett -
jonathan matkowsky -
Michael Graham (ELCA) -
Paul Keating -
Rebecca Tushnet