Data on non exact matches
Reposting per J. Scott's request on the call: In order to fully evaluate the proposal to extend the match criteria, 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). To the extent that the proposal becomes more limited to specific goods and services, the evidence of need should be likewise limited. Then, as George K. eloquently explained, we'd also want to see how many attempts/registrations would have been flagged in an expanded match system, to get a sense of the potential for false positives. Rebecca Tushnet Georgetown Law 703 593 6759
Another thought on the data front. As I suggested on the call, I wonder if ICANN staff has the technical capacity to take a dozen or so well-known 2 and 3 letter acronyms that are registered as trademarks and therefore eligible for TMCH registration (e.g., GM, HP, LV, UA, IBM, GE), run them against standard dictionaries for major ASCII languages ( at least English, French, Spanish, & German), and provide us with the list of words that if attempted to be registered as domains would generate claims notice under a 'mark contained' approach (e.g., frogman.tld) generates a notice based on GM in the TMCH). I think the results would be quite illuminating as regards the scope of false positive matches that are unrelated to the goods and services associated with the mark. Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Wednesday, May 17, 2017 2:35 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Data on non exact matches Reposting per J. Scott's request on the call: In order to fully evaluate the proposal to extend the match criteria, 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). To the extent that the proposal becomes more limited to specific goods and services, the evidence of need should be likewise limited. Then, as George K. eloquently explained, we'd also want to see how many attempts/registrations would have been flagged in an expanded match system, to get a sense of the potential for false positives. Rebecca Tushnet Georgetown Law 703 593 6759 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ----- No virus found in this message. Checked by AVG - www.avg.com Version: 2016.0.8012 / Virus Database: 4776/14441 - Release Date: 05/06/17 Internal Virus Database is out of date.
Hi folks, On Wed, May 17, 2017 at 2:35 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
and services, the evidence of need should be likewise limited. Then, as George K. eloquently explained, we'd also want to see how many attempts/registrations would have been flagged in an expanded match system, to get a sense of the potential for false positives.
(1) Just to expand on this while it's still fresh in my mind, one can run a simulation using a proposed expanded matching rule, to test what the increased number of claims notices would be. If, for example, the frequency of claims notices increased from 30% to 31%, that would be a more acceptable situation compared to an increase from 30% to 80% or 90%. To run those simulations, one would need an appropriate data set on historical *attempted* registrations. Or, one would have to start collecting that data, if it's not already being done. One could, in the alternative, run it against the .com zone file, or another similar data set, but that'd be imperfect (since the .com zone file never had claims notices to begin with, doesn't match *attempted* registrations, etc.). (2) For those advocating for "expanded notices", a public TMCH database would allow good faith registrants to do their own checks for plurals, or other types of "expanded matches" on their own. (3) As I noted during the call, for longer domain name registrations, there could be multiple TM claims notices for a single domain name. e.g. MAGMA.TLD could trigger: (i) MAGMA -- http://tsdr.uspto.gov/#caseNumber=86888435&caseType=SERIAL_NO&searchType=sta... (ii) GM -- General Motors, obviously (iii) MAG -- http://tsdr.uspto.gov/#caseNumber=87065941&caseType=SERIAL_NO&searchType=sta... (iv) AG -- http://tsdr.uspto.gov/#caseNumber=85293626&caseType=SERIAL_NO&searchType=sta... (v) AGM -- http://tsdr.uspto.gov/#caseNumber=77181108&caseType=SERIAL_NO&searchType=sta... (vi) GMA -- http://tsdr.uspto.gov/#caseNumber=75268825&caseType=SERIAL_NO&searchType=sta... (and maybe others!) and that was just for an innocuous 5-letter domain. Imagine the matches for a 10 or 15 character domain? Registrants might need to check 15, 20, or more TM claims notices, before being allowed to register a domain. The TM+50 trade-off seemed to recognize this situation. (4) Another solution, although it has issues amongst some TM holders, would be to limit expanded matches only to those marks that are most damaged by cybersquatting, i.e. auction off a limited number (say 50 or 100) of slots that get the expanded notice privilege. Financial firms like Paypal, or other firms that are often the targets of cybersquatting, e.g. Microsoft, Google, Yahoo would likely be the winners of those auctions. The auctions could be held every 6 months or a year, so the market would determine the "value" of those slots (e.g. a firm that sees it doesn't get much benefit wouldn't bid as much the next time, and some other firm would win the slot, etc.). This solution recognizes the reality that not all marks are equal in strength or in economic value, or are equally at risk for cybersquatting. It avoids defining what is a so-called "famous" mark, by allowing the market mechanism (auctions) to allocate the slots. With strict limits as to the number of slots, it also helps reduce the "false positives" above (i.e. the simulation in the first paragraph of point 1 above wouldn't change as much when it's only 50 or 100 marks, compared to the entire TMCH database of 40,000+ marks). Proceeds from such a routine auction might also be allocated to causes related to reducing reverse domain name hijacking (to directly balance against the expansion of TM claims notices). Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
George: As regards your magma.tld example, if I was an ordinary domain registrant unversed in trademark law or UDRP/URS practice and received five separate claims notices of potential infringement, I doubt that I would proceed to complete the registration -- even if the domain was intended to be informational in regard to geology or volcanoes. Best, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Wednesday, May 17, 2017 3:10 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] Data on non exact matches Hi folks, On Wed, May 17, 2017 at 2:35 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
and services, the evidence of need should be likewise limited. Then, as George K. eloquently explained, we'd also want to see how many attempts/registrations would have been flagged in an expanded match system, to get a sense of the potential for false positives.
(1) Just to expand on this while it's still fresh in my mind, one can run a simulation using a proposed expanded matching rule, to test what the increased number of claims notices would be. If, for example, the frequency of claims notices increased from 30% to 31%, that would be a more acceptable situation compared to an increase from 30% to 80% or 90%. To run those simulations, one would need an appropriate data set on historical *attempted* registrations. Or, one would have to start collecting that data, if it's not already being done. One could, in the alternative, run it against the .com zone file, or another similar data set, but that'd be imperfect (since the .com zone file never had claims notices to begin with, doesn't match *attempted* registrations, etc.). (2) For those advocating for "expanded notices", a public TMCH database would allow good faith registrants to do their own checks for plurals, or other types of "expanded matches" on their own. (3) As I noted during the call, for longer domain name registrations, there could be multiple TM claims notices for a single domain name. e.g. MAGMA.TLD could trigger: (i) MAGMA -- http://tsdr.uspto.gov/#caseNumber=86888435&caseType=SERIAL_NO&searchType=sta... (ii) GM -- General Motors, obviously (iii) MAG -- http://tsdr.uspto.gov/#caseNumber=87065941&caseType=SERIAL_NO&searchType=sta... (iv) AG -- http://tsdr.uspto.gov/#caseNumber=85293626&caseType=SERIAL_NO&searchType=sta... (v) AGM -- http://tsdr.uspto.gov/#caseNumber=77181108&caseType=SERIAL_NO&searchType=sta... (vi) GMA -- http://tsdr.uspto.gov/#caseNumber=75268825&caseType=SERIAL_NO&searchType=sta... (and maybe others!) and that was just for an innocuous 5-letter domain. Imagine the matches for a 10 or 15 character domain? Registrants might need to check 15, 20, or more TM claims notices, before being allowed to register a domain. The TM+50 trade-off seemed to recognize this situation. (4) Another solution, although it has issues amongst some TM holders, would be to limit expanded matches only to those marks that are most damaged by cybersquatting, i.e. auction off a limited number (say 50 or 100) of slots that get the expanded notice privilege. Financial firms like Paypal, or other firms that are often the targets of cybersquatting, e.g. Microsoft, Google, Yahoo would likely be the winners of those auctions. The auctions could be held every 6 months or a year, so the market would determine the "value" of those slots (e.g. a firm that sees it doesn't get much benefit wouldn't bid as much the next time, and some other firm would win the slot, etc.). This solution recognizes the reality that not all marks are equal in strength or in economic value, or are equally at risk for cybersquatting. It avoids defining what is a so-called "famous" mark, by allowing the market mechanism (auctions) to allocate the slots. With strict limits as to the number of slots, it also helps reduce the "false positives" above (i.e. the simulation in the first paragraph of point 1 above wouldn't change as much when it's only 50 or 100 marks, compared to the entire TMCH database of 40,000+ marks). Proceeds from such a routine auction might also be allocated to causes related to reducing reverse domain name hijacking (to directly balance against the expansion of TM claims notices). Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ----- No virus found in this message. Checked by AVG - www.avg.com Version: 2016.0.8012 / Virus Database: 4776/14441 - Release Date: 05/06/17 Internal Virus Database is out of date.
Hi folks, On Wed, May 17, 2017 at 3:16 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
As regards your magma.tld example, if I was an ordinary domain registrant unversed in trademark law or UDRP/URS practice and received five separate claims notices of potential infringement, I doubt that I would proceed to complete the registration -- even if the domain was intended to be informational in regard to geology or volcanoes.
Yes, it implicitly attempts to shift the burden of proof from "TM holder needs to prove registrant is cybersquatting" to "registrant needs to prove they're not cybersquatting." That's a chilling effect for registrants. Typically, the really bad actors are going to ignore the claims notices, i.e. the really bad actors are intentionally looking to infringe upon those famous marks, so the burden is disproportionately felt by the innocent. Furthermore, if there was expanded matching and the domain name was registered (a big 'if', as you rightly note!), then 6 (or more!) TM owners would get an email from the TMCH saying that "MAGMA.TLD" was registered, and have to deal with those notices, which creates a cost for them. Recall, TM holders can (and probably already do) do such expanded matching on their own, using domain registration monitoring tools like those from DomainTools and others (or by monitoring the zone files themselves). A quick cease and desist email/letter within the first few days of registration might be satisfactory, instead. (although even that can be overreach, if done on an automated basis -- there have been notorious and dubious C&Ds that have been sent out in the past). Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
Thanks George. I'm not a fan of finding new ways to tax brand owners to subsidize the industry (auction of claims +, etc.), so I won't address much in your email. However, I do think they idea of running a simulation is very clever. Could you expand on what that would look like and the kind of vendor that could do it? Best, Paul -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Wednesday, May 17, 2017 2:10 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Data on non exact matches Hi folks, On Wed, May 17, 2017 at 2:35 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
and services, the evidence of need should be likewise limited. Then, as George K. eloquently explained, we'd also want to see how many attempts/registrations would have been flagged in an expanded match system, to get a sense of the potential for false positives.
(1) Just to expand on this while it's still fresh in my mind, one can run a simulation using a proposed expanded matching rule, to test what the increased number of claims notices would be. If, for example, the frequency of claims notices increased from 30% to 31%, that would be a more acceptable situation compared to an increase from 30% to 80% or 90%. To run those simulations, one would need an appropriate data set on historical *attempted* registrations. Or, one would have to start collecting that data, if it's not already being done. One could, in the alternative, run it against the .com zone file, or another similar data set, but that'd be imperfect (since the .com zone file never had claims notices to begin with, doesn't match *attempted* registrations, etc.). (2) For those advocating for "expanded notices", a public TMCH database would allow good faith registrants to do their own checks for plurals, or other types of "expanded matches" on their own. (3) As I noted during the call, for longer domain name registrations, there could be multiple TM claims notices for a single domain name. e.g. MAGMA.TLD could trigger: (i) MAGMA -- http://tsdr.uspto.gov/#caseNumber=86888435&caseType=SERIAL_NO&searchType=sta... (ii) GM -- General Motors, obviously (iii) MAG -- http://tsdr.uspto.gov/#caseNumber=87065941&caseType=SERIAL_NO&searchType=sta... (iv) AG -- http://tsdr.uspto.gov/#caseNumber=85293626&caseType=SERIAL_NO&searchType=sta... (v) AGM -- http://tsdr.uspto.gov/#caseNumber=77181108&caseType=SERIAL_NO&searchType=sta... (vi) GMA -- http://tsdr.uspto.gov/#caseNumber=75268825&caseType=SERIAL_NO&searchType=sta... (and maybe others!) and that was just for an innocuous 5-letter domain. Imagine the matches for a 10 or 15 character domain? Registrants might need to check 15, 20, or more TM claims notices, before being allowed to register a domain. The TM+50 trade-off seemed to recognize this situation. (4) Another solution, although it has issues amongst some TM holders, would be to limit expanded matches only to those marks that are most damaged by cybersquatting, i.e. auction off a limited number (say 50 or 100) of slots that get the expanded notice privilege. Financial firms like Paypal, or other firms that are often the targets of cybersquatting, e.g. Microsoft, Google, Yahoo would likely be the winners of those auctions. The auctions could be held every 6 months or a year, so the market would determine the "value" of those slots (e.g. a firm that sees it doesn't get much benefit wouldn't bid as much the next time, and some other firm would win the slot, etc.). This solution recognizes the reality that not all marks are equal in strength or in economic value, or are equally at risk for cybersquatting. It avoids defining what is a so-called "famous" mark, by allowing the market mechanism (auctions) to allocate the slots. With strict limits as to the number of slots, it also helps reduce the "false positives" above (i.e. the simulation in the first paragraph of point 1 above wouldn't change as much when it's only 50 or 100 marks, compared to the entire TMCH database of 40,000+ marks). Proceeds from such a routine auction might also be allocated to causes related to reducing reverse domain name hijacking (to directly balance against the expansion of TM claims notices). Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations.
Thanks Rebecca. Staff, does the information that Rebecca is seeking in existence? I thought that there was no record of the specific domain names which were non-registered after receiving a notice of claim. Rebecca, I think your question has more to do with harm to potentially chilled registrants rather than harm to trademark owners/consumers, correct? Harm to trademark owners/consumers can be evidenced by UDRP/URS decisions for domain names that would fall into the next expanded category. Thanks in advance for your thoughts on that. Best, Paul -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Wednesday, May 17, 2017 1:36 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Data on non exact matches Reposting per J. Scott's request on the call: In order to fully evaluate the proposal to extend the match criteria, 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). To the extent that the proposal becomes more limited to specific goods and services, the evidence of need should be likewise limited. Then, as George K. eloquently explained, we'd also want to see how many attempts/registrations would have been flagged in an expanded match system, to get a sense of the potential for false positives. Rebecca Tushnet Georgetown Law 703 593 6759 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations.
participants (4)
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George Kirikos -
icannlists -
Phil Corwin -
Rebecca Tushnet