Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies
With all respect to Michael, I do not believe this proposal should be accepted at this time. Questions 7 and 8 remain unanswered. These are important threshold questions that the proponent should complete prior to submission. Otherwise the work group is bogged down considering or perhaps even assisting in the development of basic rationale for the proposal. This should be undertaken by the proponent. Thus, here we have a proposal to significantly expand the scope of notification. It would, for example, trigger a notice for Apple Computers if I wanted to register Pineapple. xyz or a trademark holder for “THE” if I wanted to register Theater.club or for Nike if I wanted to register Airplane.xyz The proposal provides no evidence that would support the proposal (Question 7). Nor does it reference any data reviewed by the Sub Team that show any need to address the issue (Question 8). With a properly completed questionnaire this may become a legitimate request but it currently does not meet the requirements IMHO. Paul Keating From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of "Michael Graham (ELCA) via GNSO-RPM-WG" <gnso-rpm-wg@icann.org> Reply-To: "Michael Graham (ELCA)" <migraham@expediagroup.com> Date: Wednesday, May 8, 2019 at 5:40 PM To: Julie Hedlund <julie.hedlund@icann.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies Unfortunately, I will not be able to attend the call today due to pressing business matters. Because the schedule calls for discussion of answers and proposals regarding Question 4 regarding whether the Exact Match standard for sending Claims Notices should be extended, and I wish to resubmit my “Exact Match Plus” proposal for either the Sub Team’s approval or approval for placing before the community for Public Comment, I am attaching my proposal – which I have revised to the form for submission of proposals. I have not completed the references to Evidence, and had hoped to do so in part today during our call. I shall, however, complete this if granted time to do so before our next call. Thank you all for your consideration and indulgence, Michael R. _______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Hi Michael, Couple of quick questions Wouldn't single letter marks generate a lot of notices especially an 'a' or 'e' ? Would it be possible to just send a notfication email to the mark holder so they could remain informed of new registrations and be able to montior the new domains and thereby avoid the chilling effect of lots of TMCH notices to gwnuine registrants? Best regards, Paul. On Wed, May 8, 2019 at 5:14 PM Paul Keating <Paul@law.es> wrote:
With all respect to Michael, I do not believe this proposal should be accepted at this time.
Questions 7 and 8 remain unanswered. These are important threshold questions that the proponent should complete prior to submission. Otherwise the work group is bogged down considering or perhaps even assisting in the development of basic rationale for the proposal. This should be undertaken by the proponent.
Thus, here we have a proposal to significantly expand the scope of notification. It would, for example, trigger a notice for Apple Computers if I wanted to register Pineapple. xyz or a trademark holder for “THE” if I wanted to register Theater.club or for Nike if I wanted to register Airplane.xyz
The proposal provides no evidence that would support the proposal (Question 7).
Nor does it reference any data reviewed by the Sub Team that show any need to address the issue (Question 8).
With a properly completed questionnaire this may become a legitimate request but it currently does not meet the requirements IMHO.
Paul Keating
*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of "Michael Graham (ELCA) via GNSO-RPM-WG" <gnso-rpm-wg@icann.org> *Reply-To: *"Michael Graham (ELCA)" <migraham@expediagroup.com> *Date: *Wednesday, May 8, 2019 at 5:40 PM *To: *Julie Hedlund <julie.hedlund@icann.org>, "gnso-rpm-wg@icann.org" < gnso-rpm-wg@icann.org> *Subject: *[GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies
Unfortunately, I will not be able to attend the call today due to pressing business matters. Because the schedule calls for discussion of answers and proposals regarding Question 4 regarding whether the Exact Match standard for sending Claims Notices should be extended, and I wish to resubmit my “Exact Match Plus” proposal for either the Sub Team’s approval or approval for placing before the community for Public Comment, I am attaching my proposal – which I have revised to the form for submission of proposals. I have not completed the references to Evidence, and had hoped to do so in part today during our call. I shall, however, complete this if granted time to do so before our next call.
Thank you all for your consideration and indulgence,
Michael R.
_______________________________________________ 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
Excellent idea Paul! This is a service that the TMCH could easily implement. It would then allow the trademark holder to deal with the issue in a responsible manner instead of having a knee-jerk and chilling email sent to the registrant. Paul. Keating From: Paul Tattersfield <gpmgroup@gmail.com> Date: Thursday, May 9, 2019 at 1:48 AM To: Paul Keating <Paul@law.es> Cc: "Michael Graham (ELCA)" <migraham@expediagroup.com>, Julie Hedlund <julie.hedlund@icann.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies Hi Michael, Couple of quick questions Wouldn't single letter marks generate a lot of notices especially an 'a' or 'e' ? Would it be possible to just send a notfication email to the mark holder so they could remain informed of new registrations and be able to montior the new domains and thereby avoid the chilling effect of lots of TMCH notices to gwnuine registrants? Best regards, Paul. On Wed, May 8, 2019 at 5:14 PM Paul Keating <Paul@law.es> wrote: With all respect to Michael, I do not believe this proposal should be accepted at this time. Questions 7 and 8 remain unanswered. These are important threshold questions that the proponent should complete prior to submission. Otherwise the work group is bogged down considering or perhaps even assisting in the development of basic rationale for the proposal. This should be undertaken by the proponent. Thus, here we have a proposal to significantly expand the scope of notification. It would, for example, trigger a notice for Apple Computers if I wanted to register Pineapple. xyz or a trademark holder for “THE” if I wanted to register Theater.club or for Nike if I wanted to register Airplane.xyz The proposal provides no evidence that would support the proposal (Question 7). Nor does it reference any data reviewed by the Sub Team that show any need to address the issue (Question 8). With a properly completed questionnaire this may become a legitimate request but it currently does not meet the requirements IMHO. Paul Keating From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of "Michael Graham (ELCA) via GNSO-RPM-WG" <gnso-rpm-wg@icann.org> Reply-To: "Michael Graham (ELCA)" <migraham@expediagroup.com> Date: Wednesday, May 8, 2019 at 5:40 PM To: Julie Hedlund <julie.hedlund@icann.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies Unfortunately, I will not be able to attend the call today due to pressing business matters. Because the schedule calls for discussion of answers and proposals regarding Question 4 regarding whether the Exact Match standard for sending Claims Notices should be extended, and I wish to resubmit my “Exact Match Plus” proposal for either the Sub Team’s approval or approval for placing before the community for Public Comment, I am attaching my proposal – which I have revised to the form for submission of proposals. I have not completed the references to Evidence, and had hoped to do so in part today during our call. I shall, however, complete this if granted time to do so before our next call. Thank you all for your consideration and indulgence, Michael R. _______________________________________________ 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
Paul, and Paul, This is already provided by the TMCH: https://www.trademark-clearinghouse.com/content/ongoing-notifications Brian From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Paul Keating Sent: Thursday, May 9, 2019 12:47 PM To: Paul Tattersfield <gpmgroup@gmail.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies Excellent idea Paul! This is a service that the TMCH could easily implement. It would then allow the trademark holder to deal with the issue in a responsible manner instead of having a knee-jerk and chilling email sent to the registrant. Paul. Keating From: Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> Date: Thursday, May 9, 2019 at 1:48 AM To: Paul Keating <Paul@law.es<mailto:Paul@law.es>> Cc: "Michael Graham (ELCA)" <migraham@expediagroup.com<mailto:migraham@expediagroup.com>>, Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies Hi Michael, Couple of quick questions Wouldn't single letter marks generate a lot of notices especially an 'a' or 'e' ? Would it be possible to just send a notfication email to the mark holder so they could remain informed of new registrations and be able to montior the new domains and thereby avoid the chilling effect of lots of TMCH notices to gwnuine registrants? Best regards, Paul. On Wed, May 8, 2019 at 5:14 PM Paul Keating <Paul@law.es<mailto:Paul@law.es>> wrote: With all respect to Michael, I do not believe this proposal should be accepted at this time. Questions 7 and 8 remain unanswered. These are important threshold questions that the proponent should complete prior to submission. Otherwise the work group is bogged down considering or perhaps even assisting in the development of basic rationale for the proposal. This should be undertaken by the proponent. Thus, here we have a proposal to significantly expand the scope of notification. It would, for example, trigger a notice for Apple Computers if I wanted to register Pineapple. xyz or a trademark holder for “THE” if I wanted to register Theater.club or for Nike if I wanted to register Airplane.xyz The proposal provides no evidence that would support the proposal (Question 7). Nor does it reference any data reviewed by the Sub Team that show any need to address the issue (Question 8). With a properly completed questionnaire this may become a legitimate request but it currently does not meet the requirements IMHO. Paul Keating From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of "Michael Graham (ELCA) via GNSO-RPM-WG" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Reply-To: "Michael Graham (ELCA)" <migraham@expediagroup.com<mailto:migraham@expediagroup.com>> Date: Wednesday, May 8, 2019 at 5:40 PM To: Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies Unfortunately, I will not be able to attend the call today due to pressing business matters. Because the schedule calls for discussion of answers and proposals regarding Question 4 regarding whether the Exact Match standard for sending Claims Notices should be extended, and I wish to resubmit my “Exact Match Plus” proposal for either the Sub Team’s approval or approval for placing before the community for Public Comment, I am attaching my proposal – which I have revised to the form for submission of proposals. I have not completed the references to Evidence, and had hoped to do so in part today during our call. I shall, however, complete this if granted time to do so before our next call. Thank you all for your consideration and indulgence, Michael R. _______________________________________________ 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 _______________________________________________ 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 World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
Thank you. I was not aware. If this is the case then I really do not see a need to consider the proposal being suggested. Paul From: "BECKHAM, Brian" <brian.beckham@wipo.int> Date: Thursday, May 9, 2019 at 6:18 PM To: Paul Keating <Paul@law.es>, Paul Tattersfield <gpmgroup@gmail.com> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: RE: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies Paul, and Paul, This is already provided by the TMCH: https://www.trademark-clearinghouse.com/content/ongoing-notifications Brian From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Paul Keating Sent: Thursday, May 9, 2019 12:47 PM To: Paul Tattersfield <gpmgroup@gmail.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies Excellent idea Paul! This is a service that the TMCH could easily implement. It would then allow the trademark holder to deal with the issue in a responsible manner instead of having a knee-jerk and chilling email sent to the registrant. Paul. Keating From: Paul Tattersfield <gpmgroup@gmail.com> Date: Thursday, May 9, 2019 at 1:48 AM To: Paul Keating <Paul@law.es> Cc: "Michael Graham (ELCA)" <migraham@expediagroup.com>, Julie Hedlund <julie.hedlund@icann.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies Hi Michael, Couple of quick questions Wouldn't single letter marks generate a lot of notices especially an 'a' or 'e' ? Would it be possible to just send a notfication email to the mark holder so they could remain informed of new registrations and be able to montior the new domains and thereby avoid the chilling effect of lots of TMCH notices to gwnuine registrants? Best regards, Paul. On Wed, May 8, 2019 at 5:14 PM Paul Keating <Paul@law.es> wrote: With all respect to Michael, I do not believe this proposal should be accepted at this time. Questions 7 and 8 remain unanswered. These are important threshold questions that the proponent should complete prior to submission. Otherwise the work group is bogged down considering or perhaps even assisting in the development of basic rationale for the proposal. This should be undertaken by the proponent. Thus, here we have a proposal to significantly expand the scope of notification. It would, for example, trigger a notice for Apple Computers if I wanted to register Pineapple. xyz or a trademark holder for “THE” if I wanted to register Theater.club or for Nike if I wanted to register Airplane.xyz The proposal provides no evidence that would support the proposal (Question 7). Nor does it reference any data reviewed by the Sub Team that show any need to address the issue (Question 8). With a properly completed questionnaire this may become a legitimate request but it currently does not meet the requirements IMHO. Paul Keating From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of "Michael Graham (ELCA) via GNSO-RPM-WG" <gnso-rpm-wg@icann.org> Reply-To: "Michael Graham (ELCA)" <migraham@expediagroup.com> Date: Wednesday, May 8, 2019 at 5:40 PM To: Julie Hedlund <julie.hedlund@icann.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies Unfortunately, I will not be able to attend the call today due to pressing business matters. Because the schedule calls for discussion of answers and proposals regarding Question 4 regarding whether the Exact Match standard for sending Claims Notices should be extended, and I wish to resubmit my “Exact Match Plus” proposal for either the Sub Team’s approval or approval for placing before the community for Public Comment, I am attaching my proposal – which I have revised to the form for submission of proposals. I have not completed the references to Evidence, and had hoped to do so in part today during our call. I shall, however, complete this if granted time to do so before our next call. Thank you all for your consideration and indulgence, Michael R. _______________________________________________ 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 World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
Thanks for the link Brian, my question to Michael was really to see if the the issues for non-match domains could be met with jsut an email to the TM holder rather than a notice to every domain appliclicant with a TM substring in it. On Thu, May 9, 2019 at 5:17 PM BECKHAM, Brian <brian.beckham@wipo.int> wrote:
Paul, and Paul,
This is already provided by the TMCH:
https://www.trademark-clearinghouse.com/content/ongoing-notifications
Brian
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> * On Behalf Of *Paul Keating *Sent:* Thursday, May 9, 2019 12:47 PM *To:* Paul Tattersfield <gpmgroup@gmail.com> *Cc:* gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies
Excellent idea Paul!
This is a service that the TMCH could easily implement. It would then allow the trademark holder to deal with the issue in a responsible manner instead of having a knee-jerk and chilling email sent to the registrant.
Paul. Keating
*From: *Paul Tattersfield <gpmgroup@gmail.com> *Date: *Thursday, May 9, 2019 at 1:48 AM *To: *Paul Keating <Paul@law.es> *Cc: *"Michael Graham (ELCA)" <migraham@expediagroup.com>, Julie Hedlund < julie.hedlund@icann.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> *Subject: *Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies
Hi Michael,
Couple of quick questions
Wouldn't single letter marks generate a lot of notices especially an 'a' or 'e' ?
Would it be possible to just send a notfication email to the mark holder so they could remain informed of new registrations and be able to montior the new domains and thereby avoid the chilling effect of lots of TMCH notices to gwnuine registrants?
Best regards,
Paul.
On Wed, May 8, 2019 at 5:14 PM Paul Keating <Paul@law.es> wrote:
With all respect to Michael, I do not believe this proposal should be accepted at this time.
Questions 7 and 8 remain unanswered. These are important threshold questions that the proponent should complete prior to submission. Otherwise the work group is bogged down considering or perhaps even assisting in the development of basic rationale for the proposal. This should be undertaken by the proponent.
Thus, here we have a proposal to significantly expand the scope of notification. It would, for example, trigger a notice for Apple Computers if I wanted to register Pineapple. xyz or a trademark holder for “THE” if I wanted to register Theater.club or for Nike if I wanted to register Airplane.xyz
The proposal provides no evidence that would support the proposal (Question 7).
Nor does it reference any data reviewed by the Sub Team that show any need to address the issue (Question 8).
With a properly completed questionnaire this may become a legitimate request but it currently does not meet the requirements IMHO.
Paul Keating
*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of "Michael Graham (ELCA) via GNSO-RPM-WG" <gnso-rpm-wg@icann.org> *Reply-To: *"Michael Graham (ELCA)" <migraham@expediagroup.com> *Date: *Wednesday, May 8, 2019 at 5:40 PM *To: *Julie Hedlund <julie.hedlund@icann.org>, "gnso-rpm-wg@icann.org" < gnso-rpm-wg@icann.org> *Subject: *[GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies
Unfortunately, I will not be able to attend the call today due to pressing business matters. Because the schedule calls for discussion of answers and proposals regarding Question 4 regarding whether the Exact Match standard for sending Claims Notices should be extended, and I wish to resubmit my “Exact Match Plus” proposal for either the Sub Team’s approval or approval for placing before the community for Public Comment, I am attaching my proposal – which I have revised to the form for submission of proposals. I have not completed the references to Evidence, and had hoped to do so in part today during our call. I shall, however, complete this if granted time to do so before our next call.
Thank you all for your consideration and indulgence,
Michael R.
_______________________________________________ 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
World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
Hello again Working Group members, As this topic remains under discussion in the Trademark Claims Notice Sub Team, staff would like to suggest that you provide any feedback and ideas directly to that Sub Team to facilitate their deliberations and to avoid duplication of discussions. You may review the Sub Team’s meeting records and draft documents on their wiki space here: https://community.icann.org/display/RARPMRIAGPWG/Documents%2C+drafts%2C+resp... (please use the navigation bar on the left to click through to the recordings of each Sub Team meeting). You may also refer to the Sub Team’s weekly status report that is sent to this Working Group list for additional information. Thanks and cheers Julie, Ariel & Mary From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Paul Tattersfield <gpmgroup@gmail.com> Date: Thursday, May 9, 2019 at 12:27 To: "BECKHAM, Brian" <brian.beckham@wipo.int> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies Thanks for the link Brian, my question to Michael was really to see if the the issues for non-match domains could be met with jsut an email to the TM holder rather than a notice to every domain appliclicant with a TM substring in it. On Thu, May 9, 2019 at 5:17 PM BECKHAM, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Paul, and Paul, This is already provided by the TMCH: https://www.trademark-clearinghouse.com/content/ongoing-notifications [trademark-clearinghouse.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.trademark-2Dclearin...> Brian From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Paul Keating Sent: Thursday, May 9, 2019 12:47 PM To: Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies Excellent idea Paul! This is a service that the TMCH could easily implement. It would then allow the trademark holder to deal with the issue in a responsible manner instead of having a knee-jerk and chilling email sent to the registrant. Paul. Keating From: Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> Date: Thursday, May 9, 2019 at 1:48 AM To: Paul Keating <Paul@law.es<mailto:Paul@law.es>> Cc: "Michael Graham (ELCA)" <migraham@expediagroup.com<mailto:migraham@expediagroup.com>>, Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies Hi Michael, Couple of quick questions Wouldn't single letter marks generate a lot of notices especially an 'a' or 'e' ? Would it be possible to just send a notfication email to the mark holder so they could remain informed of new registrations and be able to montior the new domains and thereby avoid the chilling effect of lots of TMCH notices to gwnuine registrants? Best regards, Paul. On Wed, May 8, 2019 at 5:14 PM Paul Keating <Paul@law.es<mailto:Paul@law.es>> wrote: With all respect to Michael, I do not believe this proposal should be accepted at this time. Questions 7 and 8 remain unanswered. These are important threshold questions that the proponent should complete prior to submission. Otherwise the work group is bogged down considering or perhaps even assisting in the development of basic rationale for the proposal. This should be undertaken by the proponent. Thus, here we have a proposal to significantly expand the scope of notification. It would, for example, trigger a notice for Apple Computers if I wanted to register Pineapple. xyz or a trademark holder for “THE” if I wanted to register Theater.club or for Nike if I wanted to register Airplane.xyz The proposal provides no evidence that would support the proposal (Question 7). Nor does it reference any data reviewed by the Sub Team that show any need to address the issue (Question 8). With a properly completed questionnaire this may become a legitimate request but it currently does not meet the requirements IMHO. Paul Keating From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of "Michael Graham (ELCA) via GNSO-RPM-WG" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Reply-To: "Michael Graham (ELCA)" <migraham@expediagroup.com<mailto:migraham@expediagroup.com>> Date: Wednesday, May 8, 2019 at 5:40 PM To: Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies Unfortunately, I will not be able to attend the call today due to pressing business matters. Because the schedule calls for discussion of answers and proposals regarding Question 4 regarding whether the Exact Match standard for sending Claims Notices should be extended, and I wish to resubmit my “Exact Match Plus” proposal for either the Sub Team’s approval or approval for placing before the community for Public Comment, I am attaching my proposal – which I have revised to the form for submission of proposals. I have not completed the references to Evidence, and had hoped to do so in part today during our call. I shall, however, complete this if granted time to do so before our next call. Thank you all for your consideration and indulgence, Michael R. _______________________________________________ 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 _______________________________________________ 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 World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
Paul T: To clarify, are you proposing that Claims Notices should continue to be generated only in response to prospective registrations of domains where the name is an exact match for a TMCH-registered mark, but that the TMCH notification service should be expanded to provide the mark holder with notice whenever a domain name that includes the exact match is registered? Thanks, Philip Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Paul Tattersfield Sent: Thursday, May 09, 2019 12:27 PM To: BECKHAM, Brian <brian.beckham@wipo.int> Cc: gnso-rpm-wg@icann.org Subject: [EXTERNAL] Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies Thanks for the link Brian, my question to Michael was really to see if the the issues for non-match domains could be met with jsut an email to the TM holder rather than a notice to every domain appliclicant with a TM substring in it. On Thu, May 9, 2019 at 5:17 PM BECKHAM, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Paul, and Paul, This is already provided by the TMCH: https://www.trademark-clearinghouse.com/content/ongoing-notifications Brian From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Paul Keating Sent: Thursday, May 9, 2019 12:47 PM To: Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies Excellent idea Paul! This is a service that the TMCH could easily implement. It would then allow the trademark holder to deal with the issue in a responsible manner instead of having a knee-jerk and chilling email sent to the registrant. Paul. Keating From: Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> Date: Thursday, May 9, 2019 at 1:48 AM To: Paul Keating <Paul@law.es<mailto:Paul@law.es>> Cc: "Michael Graham (ELCA)" <migraham@expediagroup.com<mailto:migraham@expediagroup.com>>, Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies Hi Michael, Couple of quick questions Wouldn't single letter marks generate a lot of notices especially an 'a' or 'e' ? Would it be possible to just send a notfication email to the mark holder so they could remain informed of new registrations and be able to montior the new domains and thereby avoid the chilling effect of lots of TMCH notices to gwnuine registrants? Best regards, Paul. On Wed, May 8, 2019 at 5:14 PM Paul Keating <Paul@law.es<mailto:Paul@law.es>> wrote: With all respect to Michael, I do not believe this proposal should be accepted at this time. Questions 7 and 8 remain unanswered. These are important threshold questions that the proponent should complete prior to submission. Otherwise the work group is bogged down considering or perhaps even assisting in the development of basic rationale for the proposal. This should be undertaken by the proponent. Thus, here we have a proposal to significantly expand the scope of notification. It would, for example, trigger a notice for Apple Computers if I wanted to register Pineapple. xyz or a trademark holder for “THE” if I wanted to register Theater.club or for Nike if I wanted to register Airplane.xyz The proposal provides no evidence that would support the proposal (Question 7). Nor does it reference any data reviewed by the Sub Team that show any need to address the issue (Question 8). With a properly completed questionnaire this may become a legitimate request but it currently does not meet the requirements IMHO. Paul Keating From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of "Michael Graham (ELCA) via GNSO-RPM-WG" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Reply-To: "Michael Graham (ELCA)" <migraham@expediagroup.com<mailto:migraham@expediagroup.com>> Date: Wednesday, May 8, 2019 at 5:40 PM To: Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies Unfortunately, I will not be able to attend the call today due to pressing business matters. Because the schedule calls for discussion of answers and proposals regarding Question 4 regarding whether the Exact Match standard for sending Claims Notices should be extended, and I wish to resubmit my “Exact Match Plus” proposal for either the Sub Team’s approval or approval for placing before the community for Public Comment, I am attaching my proposal – which I have revised to the form for submission of proposals. I have not completed the references to Evidence, and had hoped to do so in part today during our call. I shall, however, complete this if granted time to do so before our next call. Thank you all for your consideration and indulgence, Michael R. _______________________________________________ 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 _______________________________________________ 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 World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
Hi Phil, Sorry for the less than clear reply earlier, not helpful. For non-exact match domain registrations an optional notification service is already available to mark holders so I was curious to know given the service is optional, was Michael aware of it before making his proposal? And if not would such a service go anyway to meeting his concerns? I was hoping it would because to issue TMCH notices to would-be registrants on every non-exact-match domain registration has the potential to cause a lot of unnecessary anxiety with well intentioned registrants while providing very little deterrent effect for persistent miscreants and especially so on shorter marks. Best regards, Paul On Thu, May 9, 2019 at 6:12 PM Corwin, Philip <pcorwin@verisign.com> wrote:
Paul T:
To clarify, are you proposing that Claims Notices should continue to be generated only in response to prospective registrations of domains where the name is an exact match for a TMCH-registered mark, but that the TMCH notification service should be expanded to provide the mark holder with notice whenever a domain name that includes the exact match is registered?
Thanks, Philip
Philip S. Corwin
Policy Counsel
VeriSign, Inc.
12061 Bluemont Way Reston, VA 20190
703-948-4648/Direct
571-342-7489/Cell
*"Luck is the residue of design" -- Branch Rickey*
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> * On Behalf Of *Paul Tattersfield *Sent:* Thursday, May 09, 2019 12:27 PM *To:* BECKHAM, Brian <brian.beckham@wipo.int> *Cc:* gnso-rpm-wg@icann.org *Subject:* [EXTERNAL] Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies
Thanks for the link Brian, my question to Michael was really to see if the the issues for non-match domains could be met with jsut an email to the TM holder rather than a notice to every domain appliclicant with a TM substring in it.
On Thu, May 9, 2019 at 5:17 PM BECKHAM, Brian <brian.beckham@wipo.int> wrote:
Paul, and Paul,
This is already provided by the TMCH:
https://www.trademark-clearinghouse.com/content/ongoing-notifications
Brian
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Paul Keating *Sent:* Thursday, May 9, 2019 12:47 PM *To:* Paul Tattersfield <gpmgroup@gmail.com> *Cc:* gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies
Excellent idea Paul!
This is a service that the TMCH could easily implement. It would then allow the trademark holder to deal with the issue in a responsible manner instead of having a knee-jerk and chilling email sent to the registrant.
Paul. Keating
*From: *Paul Tattersfield <gpmgroup@gmail.com> *Date: *Thursday, May 9, 2019 at 1:48 AM *To: *Paul Keating <Paul@law.es> *Cc: *"Michael Graham (ELCA)" <migraham@expediagroup.com>, Julie Hedlund < julie.hedlund@icann.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> *Subject: *Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies
Hi Michael,
Couple of quick questions
Wouldn't single letter marks generate a lot of notices especially an 'a' or 'e' ?
Would it be possible to just send a notfication email to the mark holder so they could remain informed of new registrations and be able to montior the new domains and thereby avoid the chilling effect of lots of TMCH notices to gwnuine registrants?
Best regards,
Paul.
On Wed, May 8, 2019 at 5:14 PM Paul Keating <Paul@law.es> wrote:
With all respect to Michael, I do not believe this proposal should be accepted at this time.
Questions 7 and 8 remain unanswered. These are important threshold questions that the proponent should complete prior to submission. Otherwise the work group is bogged down considering or perhaps even assisting in the development of basic rationale for the proposal. This should be undertaken by the proponent.
Thus, here we have a proposal to significantly expand the scope of notification. It would, for example, trigger a notice for Apple Computers if I wanted to register Pineapple. xyz or a trademark holder for “THE” if I wanted to register Theater.club or for Nike if I wanted to register Airplane.xyz
The proposal provides no evidence that would support the proposal (Question 7).
Nor does it reference any data reviewed by the Sub Team that show any need to address the issue (Question 8).
With a properly completed questionnaire this may become a legitimate request but it currently does not meet the requirements IMHO.
Paul Keating
*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of "Michael Graham (ELCA) via GNSO-RPM-WG" <gnso-rpm-wg@icann.org> *Reply-To: *"Michael Graham (ELCA)" <migraham@expediagroup.com> *Date: *Wednesday, May 8, 2019 at 5:40 PM *To: *Julie Hedlund <julie.hedlund@icann.org>, "gnso-rpm-wg@icann.org" < gnso-rpm-wg@icann.org> *Subject: *[GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies
Unfortunately, I will not be able to attend the call today due to pressing business matters. Because the schedule calls for discussion of answers and proposals regarding Question 4 regarding whether the Exact Match standard for sending Claims Notices should be extended, and I wish to resubmit my “Exact Match Plus” proposal for either the Sub Team’s approval or approval for placing before the community for Public Comment, I am attaching my proposal – which I have revised to the form for submission of proposals. I have not completed the references to Evidence, and had hoped to do so in part today during our call. I shall, however, complete this if granted time to do so before our next call.
Thank you all for your consideration and indulgence,
Michael R.
_______________________________________________ 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
World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
As it now stands, the “variations” service is available only during the “ongoing notice period” and not during the Trademark Claims Period (first 90 days of GA). This suggests that an option to consider is putting the variations service into the Trademark Claims Period as well. That would raise questions about whether the notice will go to the applicant during that period, and whether there should be any cost for the service during Trademark Claims. Finally, this raises the question of how the specific variations available now from the TMCH stack up against the non-exact-match proposals. Best regards, Greg On Thu, May 9, 2019 at 3:02 PM Paul Tattersfield <gpmgroup@gmail.com> wrote:
Hi Phil,
Sorry for the less than clear reply earlier, not helpful. For non-exact match domain registrations an optional notification service is already available to mark holders so I was curious to know given the service is optional, was Michael aware of it before making his proposal? And if not would such a service go anyway to meeting his concerns? I was hoping it would because to issue TMCH notices to would-be registrants on every non-exact-match domain registration has the potential to cause a lot of unnecessary anxiety with well intentioned registrants while providing very little deterrent effect for persistent miscreants and especially so on shorter marks.
Best regards,
Paul
On Thu, May 9, 2019 at 6:12 PM Corwin, Philip <pcorwin@verisign.com> wrote:
Paul T:
To clarify, are you proposing that Claims Notices should continue to be generated only in response to prospective registrations of domains where the name is an exact match for a TMCH-registered mark, but that the TMCH notification service should be expanded to provide the mark holder with notice whenever a domain name that includes the exact match is registered?
Thanks, Philip
Philip S. Corwin
Policy Counsel
VeriSign, Inc.
12061 Bluemont Way <https://maps.google.com/?q=12061+Bluemont+Way+%0D%0AReston,+VA+20190&entry=g...> Reston, VA 20190 <https://maps.google.com/?q=12061+Bluemont+Way+%0D%0AReston,+VA+20190&entry=g...>
703-948-4648/Direct
571-342-7489/Cell
*"Luck is the residue of design" -- Branch Rickey*
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> * On Behalf Of *Paul Tattersfield *Sent:* Thursday, May 09, 2019 12:27 PM *To:* BECKHAM, Brian <brian.beckham@wipo.int> *Cc:* gnso-rpm-wg@icann.org *Subject:* [EXTERNAL] Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies
Thanks for the link Brian, my question to Michael was really to see if the the issues for non-match domains could be met with jsut an email to the TM holder rather than a notice to every domain appliclicant with a TM substring in it.
On Thu, May 9, 2019 at 5:17 PM BECKHAM, Brian <brian.beckham@wipo.int> wrote:
Paul, and Paul,
This is already provided by the TMCH:
https://www.trademark-clearinghouse.com/content/ongoing-notifications
Brian
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Paul Keating *Sent:* Thursday, May 9, 2019 12:47 PM *To:* Paul Tattersfield <gpmgroup@gmail.com> *Cc:* gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies
Excellent idea Paul!
This is a service that the TMCH could easily implement. It would then allow the trademark holder to deal with the issue in a responsible manner instead of having a knee-jerk and chilling email sent to the registrant.
Paul. Keating
*From: *Paul Tattersfield <gpmgroup@gmail.com> *Date: *Thursday, May 9, 2019 at 1:48 AM *To: *Paul Keating <Paul@law.es> *Cc: *"Michael Graham (ELCA)" <migraham@expediagroup.com>, Julie Hedlund <julie.hedlund@icann.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org
*Subject: *Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies
Hi Michael,
Couple of quick questions
Wouldn't single letter marks generate a lot of notices especially an 'a' or 'e' ?
Would it be possible to just send a notfication email to the mark holder so they could remain informed of new registrations and be able to montior the new domains and thereby avoid the chilling effect of lots of TMCH notices to gwnuine registrants?
Best regards,
Paul.
On Wed, May 8, 2019 at 5:14 PM Paul Keating <Paul@law.es> wrote:
With all respect to Michael, I do not believe this proposal should be accepted at this time.
Questions 7 and 8 remain unanswered. These are important threshold questions that the proponent should complete prior to submission. Otherwise the work group is bogged down considering or perhaps even assisting in the development of basic rationale for the proposal. This should be undertaken by the proponent.
Thus, here we have a proposal to significantly expand the scope of notification. It would, for example, trigger a notice for Apple Computers if I wanted to register Pineapple. xyz or a trademark holder for “THE” if I wanted to register Theater.club or for Nike if I wanted to register Airplane.xyz
The proposal provides no evidence that would support the proposal (Question 7).
Nor does it reference any data reviewed by the Sub Team that show any need to address the issue (Question 8).
With a properly completed questionnaire this may become a legitimate request but it currently does not meet the requirements IMHO.
Paul Keating
*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of "Michael Graham (ELCA) via GNSO-RPM-WG" <gnso-rpm-wg@icann.org> *Reply-To: *"Michael Graham (ELCA)" <migraham@expediagroup.com> *Date: *Wednesday, May 8, 2019 at 5:40 PM *To: *Julie Hedlund <julie.hedlund@icann.org>, "gnso-rpm-wg@icann.org" < gnso-rpm-wg@icann.org> *Subject: *[GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies
Unfortunately, I will not be able to attend the call today due to pressing business matters. Because the schedule calls for discussion of answers and proposals regarding Question 4 regarding whether the Exact Match standard for sending Claims Notices should be extended, and I wish to resubmit my “Exact Match Plus” proposal for either the Sub Team’s approval or approval for placing before the community for Public Comment, I am attaching my proposal – which I have revised to the form for submission of proposals. I have not completed the references to Evidence, and had hoped to do so in part today during our call. I shall, however, complete this if granted time to do so before our next call.
Thank you all for your consideration and indulgence,
Michael R.
_______________________________________________ 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
World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
_______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
It would also be very helpful if the Claims Notices could be generated in advance of the actual registration, say: at the time a pre-order for a domain is received. To reduce concerns with regard to changes to the database between the pre-order and the actual registration, it could be proposed that another database check is required at the time of registration, but no new notice would be required unless there is a change. Best, Volker Am 09.05.2019 um 19:12 schrieb Corwin, Philip via GNSO-RPM-WG:
Paul T:
To clarify, are you proposing that Claims Notices should continue to be generated only in response to prospective registrations of domains where the name is an exact match for a TMCH-registered mark, but that the TMCH notification service should be expanded to provide the mark holder with notice whenever a domain name that includes the exact match is registered?
Thanks, Philip
Philip S. Corwin
Policy Counsel
VeriSign, Inc.
12061 Bluemont Way Reston, VA 20190
703-948-4648/Direct
571-342-7489/Cell
/"Luck is the residue of design" -- Branch Rickey/
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Paul Tattersfield *Sent:* Thursday, May 09, 2019 12:27 PM *To:* BECKHAM, Brian <brian.beckham@wipo.int> *Cc:* gnso-rpm-wg@icann.org *Subject:* [EXTERNAL] Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies
Thanks for the link Brian, my question to Michael was really to see if the the issues for non-match domains could be met with jsut an email to the TM holder rather than a notice to every domain appliclicant with a TM substring in it.
On Thu, May 9, 2019 at 5:17 PM BECKHAM, Brian <brian.beckham@wipo.int <mailto:brian.beckham@wipo.int>> wrote:
Paul, and Paul,
This is already provided by the TMCH:
https://www.trademark-clearinghouse.com/content/ongoing-notifications
Brian
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>> *On Behalf Of *Paul Keating *Sent:* Thursday, May 9, 2019 12:47 PM *To:* Paul Tattersfield <gpmgroup@gmail.com <mailto:gpmgroup@gmail.com>> *Cc:* gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies
Excellent idea Paul!
This is a service that the TMCH could easily implement. It would then allow the trademark holder to deal with the issue in a responsible manner instead of having a knee-jerk and chilling email sent to the registrant.
Paul. Keating
*From: *Paul Tattersfield <gpmgroup@gmail.com <mailto:gpmgroup@gmail.com>> *Date: *Thursday, May 9, 2019 at 1:48 AM *To: *Paul Keating <Paul@law.es <mailto:Paul@law.es>> *Cc: *"Michael Graham (ELCA)" <migraham@expediagroup.com <mailto:migraham@expediagroup.com>>, Julie Hedlund <julie.hedlund@icann.org <mailto:julie.hedlund@icann.org>>, "gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> *Subject: *Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies
Hi Michael,
Couple of quick questions
Wouldn't single letter marks generate a lot of notices especially an 'a' or 'e' ?
Would it be possible to just send a notfication email to the mark holder so they could remain informed of new registrations and be able to montior the new domains and thereby avoid the chilling effect of lots of TMCH notices to gwnuine registrants?
Best regards,
Paul.
On Wed, May 8, 2019 at 5:14 PM Paul Keating <Paul@law.es <mailto:Paul@law.es>> wrote:
With all respect to Michael, I do not believe this proposal should be accepted at this time.
Questions 7 and 8 remain unanswered. These are important threshold questions that the proponent should complete prior to submission. Otherwise the work group is bogged down considering or perhaps even assisting in the development of basic rationale for the proposal. This should be undertaken by the proponent.
Thus, here we have a proposal to significantly expand the scope of notification. It would, for example, trigger a notice for Apple Computers if I wanted to register Pineapple. xyz or a trademark holder for “THE” if I wanted to register Theater.club or for Nike if I wanted to register Airplane.xyz
The proposal provides no evidence that would support the proposal (Question 7).
Nor does it reference any data reviewed by the Sub Team that show any need to address the issue (Question 8).
With a properly completed questionnaire this may become a legitimate request but it currently does not meet the requirements IMHO.
Paul Keating
*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of "Michael Graham (ELCA) via GNSO-RPM-WG" <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> *Reply-To: *"Michael Graham (ELCA)" <migraham@expediagroup.com <mailto:migraham@expediagroup.com>> *Date: *Wednesday, May 8, 2019 at 5:40 PM *To: *Julie Hedlund <julie.hedlund@icann.org <mailto:julie.hedlund@icann.org>>, "gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> *Subject: *[GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies
Unfortunately, I will not be able to attend the call today due to pressing business matters. Because the schedule calls for discussion of answers and proposals regarding Question 4 regarding whether the Exact Match standard for sending Claims Notices should be extended, and I wish to resubmit my “Exact Match Plus” proposal for either the Sub Team’s approval or approval for placing before the community for Public Comment, I am attaching my proposal – which I have revised to the form for submission of proposals. I have not completed the references to Evidence, and had hoped to do so in part today during our call. I shall, however, complete this if granted time to do so before our next call.
Thank you all for your consideration and indulgence,
Michael R.
_______________________________________________ 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
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-- Volker A. Greimann General Counsel and Policy Manager *KEY-SYSTEMS GMBH* T: +49 6894 9396901 M: +49 6894 9396851 F: +49 6894 9396851 W: www.key-systems.net Key-Systems GmbH is a company registered at the local court of Saarbruecken, Germany with the registration no. HR B 18835 CEO: Alexander Siffrin Part of the CentralNic Group PLC (LON: CNIC) a company registered in England and Wales with company number 8576358.
Maybe this recommendation is better addressed at Staff include to be included in the note that the subteam is proposing to send to the future IRT? Best, Volker Am 10.05.2019 um 13:13 schrieb Volker Greimann:
It would also be very helpful if the Claims Notices could be generated in advance of the actual registration, say: at the time a pre-order for a domain is received.
To reduce concerns with regard to changes to the database between the pre-order and the actual registration, it could be proposed that another database check is required at the time of registration, but no new notice would be required unless there is a change.
Best,
Volker
Am 09.05.2019 um 19:12 schrieb Corwin, Philip via GNSO-RPM-WG:
Paul T:
To clarify, are you proposing that Claims Notices should continue to be generated only in response to prospective registrations of domains where the name is an exact match for a TMCH-registered mark, but that the TMCH notification service should be expanded to provide the mark holder with notice whenever a domain name that includes the exact match is registered?
Thanks, Philip
Philip S. Corwin
Policy Counsel
VeriSign, Inc.
12061 Bluemont Way Reston, VA 20190
703-948-4648/Direct
571-342-7489/Cell
/"Luck is the residue of design" -- Branch Rickey/
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Paul Tattersfield *Sent:* Thursday, May 09, 2019 12:27 PM *To:* BECKHAM, Brian <brian.beckham@wipo.int> *Cc:* gnso-rpm-wg@icann.org *Subject:* [EXTERNAL] Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies
Thanks for the link Brian, my question to Michael was really to see if the the issues for non-match domains could be met with jsut an email to the TM holder rather than a notice to every domain appliclicant with a TM substring in it.
On Thu, May 9, 2019 at 5:17 PM BECKHAM, Brian <brian.beckham@wipo.int <mailto:brian.beckham@wipo.int>> wrote:
Paul, and Paul,
This is already provided by the TMCH:
https://www.trademark-clearinghouse.com/content/ongoing-notifications
Brian
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>> *On Behalf Of *Paul Keating *Sent:* Thursday, May 9, 2019 12:47 PM *To:* Paul Tattersfield <gpmgroup@gmail.com <mailto:gpmgroup@gmail.com>> *Cc:* gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies
Excellent idea Paul!
This is a service that the TMCH could easily implement. It would then allow the trademark holder to deal with the issue in a responsible manner instead of having a knee-jerk and chilling email sent to the registrant.
Paul. Keating
*From: *Paul Tattersfield <gpmgroup@gmail.com <mailto:gpmgroup@gmail.com>> *Date: *Thursday, May 9, 2019 at 1:48 AM *To: *Paul Keating <Paul@law.es <mailto:Paul@law.es>> *Cc: *"Michael Graham (ELCA)" <migraham@expediagroup.com <mailto:migraham@expediagroup.com>>, Julie Hedlund <julie.hedlund@icann.org <mailto:julie.hedlund@icann.org>>, "gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> *Subject: *Re: [GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies
Hi Michael,
Couple of quick questions
Wouldn't single letter marks generate a lot of notices especially an 'a' or 'e' ?
Would it be possible to just send a notfication email to the mark holder so they could remain informed of new registrations and be able to montior the new domains and thereby avoid the chilling effect of lots of TMCH notices to gwnuine registrants?
Best regards,
Paul.
On Wed, May 8, 2019 at 5:14 PM Paul Keating <Paul@law.es <mailto:Paul@law.es>> wrote:
With all respect to Michael, I do not believe this proposal should be accepted at this time.
Questions 7 and 8 remain unanswered. These are important threshold questions that the proponent should complete prior to submission. Otherwise the work group is bogged down considering or perhaps even assisting in the development of basic rationale for the proposal. This should be undertaken by the proponent.
Thus, here we have a proposal to significantly expand the scope of notification. It would, for example, trigger a notice for Apple Computers if I wanted to register Pineapple. xyz or a trademark holder for “THE” if I wanted to register Theater.club or for Nike if I wanted to register Airplane.xyz
The proposal provides no evidence that would support the proposal (Question 7).
Nor does it reference any data reviewed by the Sub Team that show any need to address the issue (Question 8).
With a properly completed questionnaire this may become a legitimate request but it currently does not meet the requirements IMHO.
Paul Keating
*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of "Michael Graham (ELCA) via GNSO-RPM-WG" <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> *Reply-To: *"Michael Graham (ELCA)" <migraham@expediagroup.com <mailto:migraham@expediagroup.com>> *Date: *Wednesday, May 8, 2019 at 5:40 PM *To: *Julie Hedlund <julie.hedlund@icann.org <mailto:julie.hedlund@icann.org>>, "gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> *Subject: *[GNSO-RPM-WG] GNSO RPM-Trademark Claims Notice Sub Team -- Proposal for Submission and Apologies
Unfortunately, I will not be able to attend the call today due to pressing business matters. Because the schedule calls for discussion of answers and proposals regarding Question 4 regarding whether the Exact Match standard for sending Claims Notices should be extended, and I wish to resubmit my “Exact Match Plus” proposal for either the Sub Team’s approval or approval for placing before the community for Public Comment, I am attaching my proposal – which I have revised to the form for submission of proposals. I have not completed the references to Evidence, and had hoped to do so in part today during our call. I shall, however, complete this if granted time to do so before our next call.
Thank you all for your consideration and indulgence,
Michael R.
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-- Volker A. Greimann General Counsel and Policy Manager *KEY-SYSTEMS GMBH*
T: +49 6894 9396901 M: +49 6894 9396851 F: +49 6894 9396851 W: www.key-systems.net
Key-Systems GmbH is a company registered at the local court of Saarbruecken, Germany with the registration no. HR B 18835 CEO: Alexander Siffrin
Part of the CentralNic Group PLC (LON: CNIC) a company registered in England and Wales with company number 8576358.
-- Volker A. Greimann General Counsel and Policy Manager *KEY-SYSTEMS GMBH* T: +49 6894 9396901 M: +49 6894 9396851 F: +49 6894 9396851 W: www.key-systems.net Key-Systems GmbH is a company registered at the local court of Saarbruecken, Germany with the registration no. HR B 18835 CEO: Alexander Siffrin Part of the CentralNic Group PLC (LON: CNIC) a company registered in England and Wales with company number 8576358.
participants (7)
-
BECKHAM, Brian -
Corwin, Philip -
Greg Shatan -
Mary Wong -
Paul Keating -
Paul Tattersfield -
Volker Greimann