Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Forwarding to match. If you think that lots of people have valid uses--including rights--in those terms, then when they stop trying to register those terms, that is overdeterrence. I think what I said was clear. Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 11:03 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:
Your guess -- and overdeterrence is just a guess, with nothing to back it up -- is as good as mine. My guess is that it absolutely is not overdeterrence.
And my point was that your statement was a mischaracterization of the way the TMCH, Sunrise and Claims work, as well as a mischaracterization of how trademarks work. So I don't think "My point exactly" is what you meant to say (though I wish it were).
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Wed, Apr 26, 2017 at 10:57 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
My point exactly. So what explains the over 90% abandonment rate, other than overdeterrence, especially with those most returned terms? Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 10:53 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:
"Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms."
That is clearly and absolutely not the basis of trademark rights, trademark registration or entry into the TMCH. Nor is it the way Sunrise or Claims work. Ridiculous.
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Yes, because we don't have good survey evidence, one of the questions is what we can infer from the circumstantial evidence available to us, particularly the over 90% abandonment rate combined with the top queries being words like forex, cloud, and love. Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms. But I doubt it. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 10:37 PM, icannlists <icannlists@winston.com> wrote:
Thanks Rebecca. I've never heard of a trademark owner being deterred by a claims notice since one of the explicit defenses in the UDRP is when a registrant has rights or legitimate interests in a corresponding trademark. So, I think that one may be a bit of a red herring.
However, your comment about avoiding overreach is well received and we should keep it in mind while at the same time not under-reaching either - when we do that, Grandma gets phished.
Best, Paul
-----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 9:17 PM To: icannlists <icannlists@winston.com> Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Avoiding overreaching is pro-trademark, as the public reaction to SOPA/PIPA and patent trolls has shown with respect to copyright and patent. There are also the interests of trademark owners who aren't participating in this process but may want to register domain names that are perfectly legitimate for their goods/services and jurisdictions. Some of them may inevitably receive notices and be deterred, but there are steps we can take to limit that problem. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 9:50 PM, icannlists <icannlists@winston.com> wrote:
Thanks Rebecca. I'm not characterizing you as anti-trademark; just your arguments and positions to date on this list. We would very much welcome anything favorable to trademarks that you wish to add to the discourse.
Best, Paul
-----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 8:00 PM To: icannlists <icannlists@winston.com> Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Please don't characterize me as anti-trademark; I strongly believe in the consumer protection function of trademarks, and also in trademark protection in some circumstances for business purposes. See
https://harvardlawreview.org/2017/01/registering-disagreement-registra tion-in-modern-american-trademark-law/
Asking again: for those of you who think it doesn't matter if claimants who don't own relevant rights get to use the TMCH, what then did ICANN mean by its stated intent not to expand trademark rights? Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 8:46 PM, icannlists <icannlists@winston.com> wrote: > Thanks Rebecca. There is not much new here. Whomever registers a > second level domain name first (Sunrise - TM owner), Premium (Rich > person) > or Landrush (TM owner who didn't want to pay the Sunrise shakedown > price or > regular folks like all of us), someone gets the exclusive rights to > that > second level. So, it is not just a question of if, but of when and > who. I > think it is OK to just say "I don't want it to be a trademark > owner." > Others will disagree, but we don't have to keep this in a > mysterious context > or otherwise try to layer on some free speech issue that doesn't > exist. > Trademark owners want them first in order to protect their brands > and > consumers. Others who are anti-trademarks don't want them to have > them > first and would prefer someone else gets the exclusive right. Fair > enough. > Now we see if we can get to consensus on changing the AGB. I doubt > we will, > but at least the free speech veneer is pulled back. > > 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, April 26, 2017 3:11 PM > To: Silver, Bradley <Bradley.Silver@timewarner.com> > Cc: gnso-rpm-wg@icann.org > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 > (Design Mark and Appropriate Balance) > > By that logic the mandate not to expand on trademark rights would > have been pointless because no activity in domain name space could > ever have expanded trademark rights. Call it a right, call it a > privilege, call it an alien from Xenon if you like, but ICANN did > not > want trademark owners to be able to assert control over domain > names > in excess of what underlying trademark law would have allowed. > Under > the "nothing in domain names can expand trademark rights because > they're never exclusive" logic, was the ICANN direction completely > meaningless, or did it have some meaning? (Trademark rights, of > course, are never "exclusive" either, which is why we can use any > examples we want in this discussion.) Rebecca Tushnet Georgetown > Law > 703 593 6759 > > > On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg > <gnso-rpm-wg@icann.org> wrote: >> Jeremy - the TMCH does not allow exclusive rights in domains. >> Having >> a mark in the TMCH affords nothing close an exclusive right. >> That's a basic >> truth which shouldn’t be ignored. >> >> -----Original Message----- >> From: gnso-rpm-wg-bounces@icann.org >> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm >> Sent: Wednesday, April 26, 2017 1:32 PM >> To: gnso-rpm-wg@icann.org >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 >> (Design Mark and Appropriate Balance) >> >> On 26/4/17 9:00 am, Colin O'Brien wrote: >>> Nice try Rebecca but I'm not attempting to overturn the apple >>> cart. >>> If you have actual examples of problems then provide them >>> otherwise this is >>> an indulgent academic exercise. >> >> The fact that the TMCH is allowing exclusive rights in domains >> that >> go beyond the equivalent rights in domestic trademark law is >> itself a >> problem if we accept that the TMCH was meant to track trademark >> law. >> >> -- >> Jeremy Malcolm >> Senior Global Policy Analyst >> Electronic Frontier Foundation >> https://eff.org >> jmalcolm@eff.org >> >> Tel: 415.436.9333 ext 161 >> >> :: Defending Your Rights in the Digital World :: >> >> Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt >> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 >> >> >> >> ==================================================================== >> = >> = >> >> >> >> Reminder: Any email that requests your login credentials or that >> asks you to click on a link could be a phishing attack. If you >> have >> any questions regarding the authenticity of this email or its >> sender, please contact the IT Service Desk at 212.484.6000 or via >> email at ITServices@timewarner.com >> >> >> >> >> ================================================================= >> This message is the property of Time Warner Inc. and is intended >> only for the use of the >> addressee(s) and may be legally privileged and/or confidential. If >> the reader of this message is not the intended recipient, or the >> employee or agent responsible to deliver it to the intended >> recipient, he or she is hereby notified that any dissemination, >> distribution, printing, forwarding, or any method of copying of >> this >> information, and/or the taking of any action in reliance on the >> information herein is strictly prohibited except by the intended >> recipient or those to whom he or she intentionally distributes >> this >> message. If you have received this communication in error, please >> immediately notify the sender, and delete the original message and >> any >> copies from your computer or storage system. Thank you. >> ================================================================= >> >> _______________________________________________ >> 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 > > ________________________________ > 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.
gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
We have no idea who abandoned these registration attempts, or even if it was done by humans, much less rightsholders. If we want to make assumptions that support arguments, rather than engaging in evidence-based inquiry, I'll offer the assumption that all the abandoned carts were started by cybersquatters that intended to use the domains to engage in spam, malware, phishing, spearphishing, fraud, theft and botnet farming. Greg On Wed, Apr 26, 2017 at 11:27 PM Rebecca Tushnet < Rebecca.Tushnet@law.georgetown.edu> wrote:
Forwarding to match.
If you think that lots of people have valid uses--including rights--in those terms, then when they stop trying to register those terms, that is overdeterrence. I think what I said was clear.
Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 11:03 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:
Your guess -- and overdeterrence is just a guess, with nothing to back it up -- is as good as mine. My guess is that it absolutely is not overdeterrence.
And my point was that your statement was a mischaracterization of the way the TMCH, Sunrise and Claims work, as well as a mischaracterization of how trademarks work. So I don't think "My point exactly" is what you meant to say (though I wish it were).
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Wed, Apr 26, 2017 at 10:57 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
My point exactly. So what explains the over 90% abandonment rate, other than overdeterrence, especially with those most returned terms? Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 10:53 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:
"Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms."
That is clearly and absolutely not the basis of trademark rights, trademark registration or entry into the TMCH. Nor is it the way Sunrise or Claims work. Ridiculous.
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Yes, because we don't have good survey evidence, one of the questions is what we can infer from the circumstantial evidence available to
us,
particularly the over 90% abandonment rate combined with the top queries being words like forex, cloud, and love. Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms. But I doubt it. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 10:37 PM, icannlists <icannlists@winston.com
wrote:
Thanks Rebecca. I've never heard of a trademark owner being deterred by a claims notice since one of the explicit defenses in the UDRP is when a registrant has rights or legitimate interests in a corresponding trademark. So, I think that one may be a bit of a red herring.
However, your comment about avoiding overreach is well received and we should keep it in mind while at the same time not under-reaching either - when we do that, Grandma gets phished.
Best, Paul
-----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 9:17 PM To: icannlists <icannlists@winston.com> Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Avoiding overreaching is pro-trademark, as the public reaction to SOPA/PIPA and patent trolls has shown with respect to copyright and patent. There are also the interests of trademark owners who aren't participating in this process but may want to register domain names that are perfectly legitimate for their goods/services and jurisdictions. Some of them may inevitably receive notices and be deterred, but there are steps we can take to limit that problem. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 9:50 PM, icannlists < icannlists@winston.com> wrote: > Thanks Rebecca. I'm not characterizing you as anti-trademark; just > your arguments and positions to date on this list. We would very > much > welcome anything favorable to trademarks that you wish to add to the > discourse. > > Best, > Paul > > > > -----Original Message----- > From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] > Sent: Wednesday, April 26, 2017 8:00 PM > To: icannlists <icannlists@winston.com> > Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; > gnso-rpm-wg@icann.org > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 > (Design Mark and Appropriate Balance) > > Please don't characterize me as anti-trademark; I strongly believe > in > the consumer protection function of trademarks, and also in > trademark > protection in some circumstances for business purposes. See > > https://harvardlawreview.org/2017/01/registering-disagreement-registra > tion-in-modern-american-trademark-law/ > > Asking again: for those of you who think it doesn't matter if > claimants > who don't own relevant rights get to use the TMCH, what then did > ICANN mean > by its stated intent not to expand trademark rights? > Rebecca Tushnet > Georgetown Law > 703 593 6759 > > > On Wed, Apr 26, 2017 at 8:46 PM, icannlists < icannlists@winston.com> > wrote: >> Thanks Rebecca. There is not much new here. Whomever registers a >> second level domain name first (Sunrise - TM owner), Premium (Rich >> person) >> or Landrush (TM owner who didn't want to pay the Sunrise shakedown >> price or >> regular folks like all of us), someone gets the exclusive rights to >> that >> second level. So, it is not just a question of if, but of when and >> who. I >> think it is OK to just say "I don't want it to be a trademark >> owner." >> Others will disagree, but we don't have to keep this in a >> mysterious context >> or otherwise try to layer on some free speech issue that doesn't >> exist. >> Trademark owners want them first in order to protect their brands >> and >> consumers. Others who are anti-trademarks don't want them to have >> them >> first and would prefer someone else gets the exclusive right. Fair >> enough. >> Now we see if we can get to consensus on changing the AGB. I doubt >> we will, >> but at least the free speech veneer is pulled back. >> >> 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, April 26, 2017 3:11 PM >> To: Silver, Bradley <Bradley.Silver@timewarner.com> >> Cc: gnso-rpm-wg@icann.org >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 >> (Design Mark and Appropriate Balance) >> >> By that logic the mandate not to expand on trademark rights would >> have been pointless because no activity in domain name space could >> ever have expanded trademark rights. Call it a right, call it a >> privilege, call it an alien from Xenon if you like, but ICANN did >> not >> want trademark owners to be able to assert control over domain >> names >> in excess of what underlying trademark law would have allowed. >> Under >> the "nothing in domain names can expand trademark rights because >> they're never exclusive" logic, was the ICANN direction completely >> meaningless, or did it have some meaning? (Trademark rights, of >> course, are never "exclusive" either, which is why we can use any >> examples we want in this discussion.) Rebecca Tushnet Georgetown >> Law >> 703 593 6759 >> >> >> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg >> <gnso-rpm-wg@icann.org> wrote: >>> Jeremy - the TMCH does not allow exclusive rights in domains. >>> Having >>> a mark in the TMCH affords nothing close an exclusive right. >>> That's a basic >>> truth which shouldn’t be ignored. >>> >>> -----Original Message----- >>> From: gnso-rpm-wg-bounces@icann.org >>> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm >>> Sent: Wednesday, April 26, 2017 1:32 PM >>> To: gnso-rpm-wg@icann.org >>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 >>> (Design Mark and Appropriate Balance) >>> >>> On 26/4/17 9:00 am, Colin O'Brien wrote: >>>> Nice try Rebecca but I'm not attempting to overturn the apple >>>> cart. >>>> If you have actual examples of problems then provide them >>>> otherwise this is >>>> an indulgent academic exercise. >>> >>> The fact that the TMCH is allowing exclusive rights in domains >>> that >>> go beyond the equivalent rights in domestic trademark law is >>> itself a >>> problem if we accept that the TMCH was meant to track trademark >>> law. >>> >>> -- >>> Jeremy Malcolm >>> Senior Global Policy Analyst >>> Electronic Frontier Foundation >>> https://eff.org >>> jmalcolm@eff.org >>> >>> Tel: 415.436.9333 ext 161 >>> >>> :: Defending Your Rights in the Digital World :: >>> >>> Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt >>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 >>> >>> >>> >>> ==================================================================== >>> = >>> = >>> >>> >>> >>> Reminder: Any email that requests your login credentials or that >>> asks you to click on a link could be a phishing attack. If you >>> have >>> any questions regarding the authenticity of this email or its >>> sender, please contact the IT Service Desk at 212.484.6000 or via >>> email at ITServices@timewarner.com >>> >>> >>> >>> >>> ================================================================= >>> This message is the property of Time Warner Inc. and is intended >>> only for the use of the >>> addressee(s) and may be legally privileged and/or confidential. If >>> the reader of this message is not the intended recipient, or the >>> employee or agent responsible to deliver it to the intended >>> recipient, he or she is hereby notified that any dissemination, >>> distribution, printing, forwarding, or any method of copying of >>> this >>> information, and/or the taking of any action in reliance on the >>> information herein is strictly prohibited except by the intended >>> recipient or those to whom he or she intentionally distributes >>> this >>> message. If you have received this communication in error, please >>> immediately notify the sender, and delete the original message and >>> any >>> copies from your computer or storage system. Thank you. >>> ================================================================= >>> >>> _______________________________________________ >>> 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 >> >> ________________________________ >> 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.
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
-- *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
What would lead cybersquatters to choose common terms that, while protectable for specific goods or services, are not generally known for those meanings, as opposed to APPLE or MICROSOFT or other strong marks? That seems like a poor cybersquatting strategy, especially done retail rather than wholesale. Circumstantial evidence is evidence too. Rebecca Tushnet Georgetown Law 703 593 6759 On Thu, Apr 27, 2017 at 1:03 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
We have no idea who abandoned these registration attempts, or even if it was done by humans, much less rightsholders.
If we want to make assumptions that support arguments, rather than engaging in evidence-based inquiry, I'll offer the assumption that all the abandoned carts were started by cybersquatters that intended to use the domains to engage in spam, malware, phishing, spearphishing, fraud, theft and botnet farming.
Greg
On Wed, Apr 26, 2017 at 11:27 PM Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Forwarding to match.
If you think that lots of people have valid uses--including rights--in those terms, then when they stop trying to register those terms, that is overdeterrence. I think what I said was clear.
Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 11:03 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:
Your guess -- and overdeterrence is just a guess, with nothing to back it up -- is as good as mine. My guess is that it absolutely is not overdeterrence.
And my point was that your statement was a mischaracterization of the way the TMCH, Sunrise and Claims work, as well as a mischaracterization of how trademarks work. So I don't think "My point exactly" is what you meant to say (though I wish it were).
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Wed, Apr 26, 2017 at 10:57 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
My point exactly. So what explains the over 90% abandonment rate, other than overdeterrence, especially with those most returned terms? Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 10:53 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:
"Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms."
That is clearly and absolutely not the basis of trademark rights, trademark registration or entry into the TMCH. Nor is it the way Sunrise or Claims work. Ridiculous.
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Yes, because we don't have good survey evidence, one of the questions is what we can infer from the circumstantial evidence available to us, particularly the over 90% abandonment rate combined with the top queries being words like forex, cloud, and love. Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms. But I doubt it. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 10:37 PM, icannlists <icannlists@winston.com> wrote: > Thanks Rebecca. I've never heard of a trademark owner being > deterred > by > a claims notice since one of the explicit defenses in the UDRP is > when a > registrant has rights or legitimate interests in a corresponding > trademark. > So, I think that one may be a bit of a red herring. > > However, your comment about avoiding overreach is well received > and > we > should keep it in mind while at the same time not under-reaching > either - > when we do that, Grandma gets phished. > > Best, > Paul > > > > -----Original Message----- > From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] > Sent: Wednesday, April 26, 2017 9:17 PM > To: icannlists <icannlists@winston.com> > Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; > gnso-rpm-wg@icann.org > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 > (Design Mark and Appropriate Balance) > > Avoiding overreaching is pro-trademark, as the public reaction to > SOPA/PIPA and patent trolls has shown with respect to copyright > and > patent. > There are also the interests of trademark owners who aren't > participating in > this process but may want to register domain names that are > perfectly > legitimate for their goods/services and jurisdictions. Some of > them > may > inevitably receive notices and be deterred, but there are steps we > can take > to limit that problem. > Rebecca Tushnet > Georgetown Law > 703 593 6759 > > > On Wed, Apr 26, 2017 at 9:50 PM, icannlists > <icannlists@winston.com> > wrote: >> Thanks Rebecca. I'm not characterizing you as anti-trademark; >> just >> your arguments and positions to date on this list. We would very >> much >> welcome anything favorable to trademarks that you wish to add to >> the >> discourse. >> >> Best, >> Paul >> >> >> >> -----Original Message----- >> From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] >> Sent: Wednesday, April 26, 2017 8:00 PM >> To: icannlists <icannlists@winston.com> >> Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; >> gnso-rpm-wg@icann.org >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >> #16 >> (Design Mark and Appropriate Balance) >> >> Please don't characterize me as anti-trademark; I strongly >> believe >> in >> the consumer protection function of trademarks, and also in >> trademark >> protection in some circumstances for business purposes. See >> >> >> https://harvardlawreview.org/2017/01/registering-disagreement-registra >> tion-in-modern-american-trademark-law/ >> >> Asking again: for those of you who think it doesn't matter if >> claimants >> who don't own relevant rights get to use the TMCH, what then did >> ICANN mean >> by its stated intent not to expand trademark rights? >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759 >> >> >> On Wed, Apr 26, 2017 at 8:46 PM, icannlists >> <icannlists@winston.com> >> wrote: >>> Thanks Rebecca. There is not much new here. Whomever registers >>> a >>> second level domain name first (Sunrise - TM owner), Premium >>> (Rich >>> person) >>> or Landrush (TM owner who didn't want to pay the Sunrise >>> shakedown >>> price or >>> regular folks like all of us), someone gets the exclusive rights >>> to >>> that >>> second level. So, it is not just a question of if, but of when >>> and >>> who. I >>> think it is OK to just say "I don't want it to be a trademark >>> owner." >>> Others will disagree, but we don't have to keep this in a >>> mysterious context >>> or otherwise try to layer on some free speech issue that doesn't >>> exist. >>> Trademark owners want them first in order to protect their >>> brands >>> and >>> consumers. Others who are anti-trademarks don't want them to >>> have >>> them >>> first and would prefer someone else gets the exclusive right. >>> Fair >>> enough. >>> Now we see if we can get to consensus on changing the AGB. I >>> doubt >>> we will, >>> but at least the free speech veneer is pulled back. >>> >>> 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, April 26, 2017 3:11 PM >>> To: Silver, Bradley <Bradley.Silver@timewarner.com> >>> Cc: gnso-rpm-wg@icann.org >>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >>> #16 >>> (Design Mark and Appropriate Balance) >>> >>> By that logic the mandate not to expand on trademark rights >>> would >>> have been pointless because no activity in domain name space >>> could >>> ever have expanded trademark rights. Call it a right, call it a >>> privilege, call it an alien from Xenon if you like, but ICANN >>> did >>> not >>> want trademark owners to be able to assert control over domain >>> names >>> in excess of what underlying trademark law would have allowed. >>> Under >>> the "nothing in domain names can expand trademark rights because >>> they're never exclusive" logic, was the ICANN direction >>> completely >>> meaningless, or did it have some meaning? (Trademark rights, of >>> course, are never "exclusive" either, which is why we can use >>> any >>> examples we want in this discussion.) Rebecca Tushnet Georgetown >>> Law >>> 703 593 6759 >>> >>> >>> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg >>> <gnso-rpm-wg@icann.org> wrote: >>>> Jeremy - the TMCH does not allow exclusive rights in domains. >>>> Having >>>> a mark in the TMCH affords nothing close an exclusive right. >>>> That's a basic >>>> truth which shouldn’t be ignored. >>>> >>>> -----Original Message----- >>>> From: gnso-rpm-wg-bounces@icann.org >>>> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy >>>> Malcolm >>>> Sent: Wednesday, April 26, 2017 1:32 PM >>>> To: gnso-rpm-wg@icann.org >>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >>>> #16 >>>> (Design Mark and Appropriate Balance) >>>> >>>> On 26/4/17 9:00 am, Colin O'Brien wrote: >>>>> Nice try Rebecca but I'm not attempting to overturn the apple >>>>> cart. >>>>> If you have actual examples of problems then provide them >>>>> otherwise this is >>>>> an indulgent academic exercise. >>>> >>>> The fact that the TMCH is allowing exclusive rights in domains >>>> that >>>> go beyond the equivalent rights in domestic trademark law is >>>> itself a >>>> problem if we accept that the TMCH was meant to track trademark >>>> law. >>>> >>>> -- >>>> Jeremy Malcolm >>>> Senior Global Policy Analyst >>>> Electronic Frontier Foundation >>>> https://eff.org >>>> jmalcolm@eff.org >>>> >>>> Tel: 415.436.9333 ext 161 >>>> >>>> :: Defending Your Rights in the Digital World :: >>>> >>>> Public key: >>>> https://www.eff.org/files/2016/11/27/key_jmalcolm.txt >>>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF >>>> 1122 >>>> >>>> >>>> >>>> >>>> ==================================================================== >>>> = >>>> = >>>> >>>> >>>> >>>> Reminder: Any email that requests your login credentials or >>>> that >>>> asks you to click on a link could be a phishing attack. If you >>>> have >>>> any questions regarding the authenticity of this email or its >>>> sender, please contact the IT Service Desk at 212.484.6000 or >>>> via >>>> email at ITServices@timewarner.com >>>> >>>> >>>> >>>> >>>> >>>> ================================================================= >>>> This message is the property of Time Warner Inc. and is >>>> intended >>>> only for the use of the >>>> addressee(s) and may be legally privileged and/or confidential. >>>> If >>>> the reader of this message is not the intended recipient, or >>>> the >>>> employee or agent responsible to deliver it to the intended >>>> recipient, he or she is hereby notified that any dissemination, >>>> distribution, printing, forwarding, or any method of copying of >>>> this >>>> information, and/or the taking of any action in reliance on the >>>> information herein is strictly prohibited except by the >>>> intended >>>> recipient or those to whom he or she intentionally distributes >>>> this >>>> message. If you have received this communication in error, >>>> please >>>> immediately notify the sender, and delete the original message >>>> and >>>> any >>>> copies from your computer or storage system. Thank you. >>>> >>>> ================================================================= >>>> >>>> _______________________________________________ >>>> 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 >>> >>> ________________________________ >>> 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. _______________________________________________ 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
--
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
Greg, a similar line of thinking was used by WIPO in response to the initial Report on IGO Access to Curative Rights Protection Mechanisms. https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/m... It is troubling if this line of thinking is held within the wider ICANN community, especially so, if this line of thinking is held by those seeking to change the current RPMs. A much better understanding of the underlying issues is needed if we are to better protect the goods and services of all rights holders through better RPMs and at the same time build a more equitable framework for all. My reply https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/m... to WIPO’s comments demonstrates on a very simple level how your assumptions set an incorrect narrative which sends people off in the wrong direction when seeking to solve the problem. RPMs are not the best way of dealing with the kind of bad behaviour you cite. A far better approach is to use section 3.18 of the 2013 Registrar Accreditation Agreement (RAA) which requires registrars to take action against this sort of behaviour. The advantage of using the 3.18 approach is it doesn’t require any domain name infringement to take action which means all of the bad behaviour involving a domain cited by yourself and WIPO can easily be dealt with and without any costs beyond the time spent identifying offending sites and requesting their suspension. Paul On Thu, Apr 27, 2017 at 6:08 AM, Rebecca Tushnet < Rebecca.Tushnet@law.georgetown.edu> wrote:
What would lead cybersquatters to choose common terms that, while protectable for specific goods or services, are not generally known for those meanings, as opposed to APPLE or MICROSOFT or other strong marks? That seems like a poor cybersquatting strategy, especially done retail rather than wholesale.
Circumstantial evidence is evidence too. Rebecca Tushnet Georgetown Law 703 593 6759
On Thu, Apr 27, 2017 at 1:03 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
We have no idea who abandoned these registration attempts, or even if it was done by humans, much less rightsholders.
If we want to make assumptions that support arguments, rather than engaging in evidence-based inquiry, I'll offer the assumption that all the abandoned carts were started by cybersquatters that intended to use the domains to engage in spam, malware, phishing, spearphishing, fraud, theft and botnet farming.
Greg
On Wed, Apr 26, 2017 at 11:27 PM Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Forwarding to match.
If you think that lots of people have valid uses--including rights--in those terms, then when they stop trying to register those terms, that is overdeterrence. I think what I said was clear.
Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 11:03 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:
Your guess -- and overdeterrence is just a guess, with nothing to back it up -- is as good as mine. My guess is that it absolutely is not overdeterrence.
And my point was that your statement was a mischaracterization of the way the TMCH, Sunrise and Claims work, as well as a mischaracterization of how trademarks work. So I don't think "My point exactly" is what you
meant
to say (though I wish it were).
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Wed, Apr 26, 2017 at 10:57 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
My point exactly. So what explains the over 90% abandonment rate, other than overdeterrence, especially with those most returned terms? Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 10:53 PM, Greg Shatan <
gregshatanipc@gmail.com>
wrote:
"Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms."
That is clearly and absolutely not the basis of trademark rights, trademark registration or entry into the TMCH. Nor is it the way Sunrise or Claims work. Ridiculous.
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote: > > Yes, because we don't have good survey evidence, one of the > questions > is what we can infer from the circumstantial evidence available to > us, > particularly the over 90% abandonment rate combined with the top > queries being words like forex, cloud, and love. Maybe absolutely > no > one else besides the TMCH entrant/s had a legitimate business using > those terms. But I doubt it. > Rebecca Tushnet > Georgetown Law > 703 593 6759 > > > On Wed, Apr 26, 2017 at 10:37 PM, icannlists > <icannlists@winston.com> > wrote: > > Thanks Rebecca. I've never heard of a trademark owner being > > deterred > > by > > a claims notice since one of the explicit defenses in the UDRP is > > when a > > registrant has rights or legitimate interests in a corresponding > > trademark. > > So, I think that one may be a bit of a red herring. > > > > However, your comment about avoiding overreach is well received > > and > > we > > should keep it in mind while at the same time not under-reaching > > either - > > when we do that, Grandma gets phished. > > > > Best, > > Paul > > > > > > > > -----Original Message----- > > From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law. georgetown.edu] > > Sent: Wednesday, April 26, 2017 9:17 PM > > To: icannlists <icannlists@winston.com> > > Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; > > gnso-rpm-wg@icann.org > > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 > > (Design Mark and Appropriate Balance) > > > > Avoiding overreaching is pro-trademark, as the public reaction to > > SOPA/PIPA and patent trolls has shown with respect to copyright > > and > > patent. > > There are also the interests of trademark owners who aren't > > participating in > > this process but may want to register domain names that are > > perfectly > > legitimate for their goods/services and jurisdictions. Some of > > them > > may > > inevitably receive notices and be deterred, but there are steps we > > can take > > to limit that problem. > > Rebecca Tushnet > > Georgetown Law > > 703 593 6759 > > > > > > On Wed, Apr 26, 2017 at 9:50 PM, icannlists > > <icannlists@winston.com> > > wrote: > >> Thanks Rebecca. I'm not characterizing you as anti-trademark; > >> just > >> your arguments and positions to date on this list. We would very > >> much > >> welcome anything favorable to trademarks that you wish to add to > >> the > >> discourse. > >> > >> Best, > >> Paul > >> > >> > >> > >> -----Original Message----- > >> From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law. georgetown.edu] > >> Sent: Wednesday, April 26, 2017 8:00 PM > >> To: icannlists <icannlists@winston.com> > >> Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; > >> gnso-rpm-wg@icann.org > >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and > >> #16 > >> (Design Mark and Appropriate Balance) > >> > >> Please don't characterize me as anti-trademark; I strongly > >> believe > >> in > >> the consumer protection function of trademarks, and also in > >> trademark > >> protection in some circumstances for business purposes. See > >> > >> > >> https://harvardlawreview.org/2017/01/registering- disagreement-registra > >> tion-in-modern-american-trademark-law/ > >> > >> Asking again: for those of you who think it doesn't matter if > >> claimants > >> who don't own relevant rights get to use the TMCH, what then did > >> ICANN mean > >> by its stated intent not to expand trademark rights? > >> Rebecca Tushnet > >> Georgetown Law > >> 703 593 6759 > >> > >> > >> On Wed, Apr 26, 2017 at 8:46 PM, icannlists > >> <icannlists@winston.com> > >> wrote: > >>> Thanks Rebecca. There is not much new here. Whomever registers > >>> a > >>> second level domain name first (Sunrise - TM owner), Premium > >>> (Rich > >>> person) > >>> or Landrush (TM owner who didn't want to pay the Sunrise > >>> shakedown > >>> price or > >>> regular folks like all of us), someone gets the exclusive rights > >>> to > >>> that > >>> second level. So, it is not just a question of if, but of when > >>> and > >>> who. I > >>> think it is OK to just say "I don't want it to be a trademark > >>> owner." > >>> Others will disagree, but we don't have to keep this in a > >>> mysterious context > >>> or otherwise try to layer on some free speech issue that doesn't > >>> exist. > >>> Trademark owners want them first in order to protect their > >>> brands > >>> and > >>> consumers. Others who are anti-trademarks don't want them to > >>> have > >>> them > >>> first and would prefer someone else gets the exclusive right. > >>> Fair > >>> enough. > >>> Now we see if we can get to consensus on changing the AGB. I > >>> doubt > >>> we will, > >>> but at least the free speech veneer is pulled back. > >>> > >>> 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, April 26, 2017 3:11 PM > >>> To: Silver, Bradley <Bradley.Silver@timewarner.com> > >>> Cc: gnso-rpm-wg@icann.org > >>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and > >>> #16 > >>> (Design Mark and Appropriate Balance) > >>> > >>> By that logic the mandate not to expand on trademark rights > >>> would > >>> have been pointless because no activity in domain name space > >>> could > >>> ever have expanded trademark rights. Call it a right, call it a > >>> privilege, call it an alien from Xenon if you like, but ICANN > >>> did > >>> not > >>> want trademark owners to be able to assert control over domain > >>> names > >>> in excess of what underlying trademark law would have allowed. > >>> Under > >>> the "nothing in domain names can expand trademark rights because > >>> they're never exclusive" logic, was the ICANN direction > >>> completely > >>> meaningless, or did it have some meaning? (Trademark rights, of > >>> course, are never "exclusive" either, which is why we can use > >>> any > >>> examples we want in this discussion.) Rebecca Tushnet Georgetown > >>> Law > >>> 703 593 6759 > >>> > >>> > >>> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg > >>> <gnso-rpm-wg@icann.org> wrote: > >>>> Jeremy - the TMCH does not allow exclusive rights in domains. > >>>> Having > >>>> a mark in the TMCH affords nothing close an exclusive right. > >>>> That's a basic > >>>> truth which shouldn’t be ignored. > >>>> > >>>> -----Original Message----- > >>>> From: gnso-rpm-wg-bounces@icann.org > >>>> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy > >>>> Malcolm > >>>> Sent: Wednesday, April 26, 2017 1:32 PM > >>>> To: gnso-rpm-wg@icann.org > >>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and > >>>> #16 > >>>> (Design Mark and Appropriate Balance) > >>>> > >>>> On 26/4/17 9:00 am, Colin O'Brien wrote: > >>>>> Nice try Rebecca but I'm not attempting to overturn the apple > >>>>> cart. > >>>>> If you have actual examples of problems then provide them > >>>>> otherwise this is > >>>>> an indulgent academic exercise. > >>>> > >>>> The fact that the TMCH is allowing exclusive rights in domains > >>>> that > >>>> go beyond the equivalent rights in domestic trademark law is > >>>> itself a > >>>> problem if we accept that the TMCH was meant to track trademark > >>>> law. > >>>> > >>>> -- > >>>> Jeremy Malcolm > >>>> Senior Global Policy Analyst > >>>> Electronic Frontier Foundation > >>>> https://eff.org > >>>> jmalcolm@eff.org > >>>> > >>>> Tel: 415.436.9333 ext 161 > >>>> > >>>> :: Defending Your Rights in the Digital World :: > >>>> > >>>> Public key: > >>>> https://www.eff.org/files/2016/11/27/key_jmalcolm.txt > >>>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF > >>>> 1122 > >>>> > >>>> > >>>> > >>>> > >>>> ============================================================ ======== > >>>> = > >>>> = > >>>> > >>>> > >>>> > >>>> Reminder: Any email that requests your login credentials or > >>>> that > >>>> asks you to click on a link could be a phishing attack. If you > >>>> have > >>>> any questions regarding the authenticity of this email or its > >>>> sender, please contact the IT Service Desk at 212.484.6000 or > >>>> via > >>>> email at ITServices@timewarner.com > >>>> > >>>> > >>>> > >>>> > >>>> > >>>> ============================================================ ===== > >>>> This message is the property of Time Warner Inc. and is > >>>> intended > >>>> only for the use of the > >>>> addressee(s) and may be legally privileged and/or confidential. > >>>> If > >>>> the reader of this message is not the intended recipient, or > >>>> the > >>>> employee or agent responsible to deliver it to the intended > >>>> recipient, he or she is hereby notified that any dissemination, > >>>> distribution, printing, forwarding, or any method of copying of > >>>> this > >>>> information, and/or the taking of any action in reliance on the > >>>> information herein is strictly prohibited except by the > >>>> intended > >>>> recipient or those to whom he or she intentionally distributes > >>>> this > >>>> message. If you have received this communication in error, > >>>> please > >>>> immediately notify the sender, and delete the original message > >>>> and > >>>> any > >>>> copies from your computer or storage system. Thank you. > >>>> > >>>> ============================================================ ===== > >>>> > >>>> _______________________________________________ > >>>> 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 > >>> > >>> ________________________________ > >>> 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. > _______________________________________________ > 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
--
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Paul, It is important to look at the actual language of section 3.18 of the RAA. This provides that registrars “shall take reasonable and prompt steps to investigate and respond” to allegations of illegal activity. Looking at this carefully crafted contract language, it is easy to see that taking reasonable steps is subject to interpretation, just as is the corresponding obligation to investigate and respond. This is in no way meant to suggest that registrars are not complying with their ICANN obligations, but whether those obligations necessarily address the claimed illegal behavior and achieve the result sought is another matter altogether. RPMs on the other hand are specifically designed with criteria to assist a substantive determination (which the registrar need only implement). Indeed, the very fact that we have a working group dedicated to address ongoing claims of trademark abuse suggests that some claimed abuse is not being addressed through this RAA provision (which by the way is titled – my emphasis: “Registrar’s Abuse Contact and Duty to Investigate Reports of Abuse”). Quickly: searching WIPO’s public case database for the term “fraud” produces 1066 results (http://www.wipo.int/amc/en/domains/search/fulltext_decisions.jsp?tab=1&q=fra...), searching for “phishing” yields 659 results (http://www.wipo.int/amc/en/domains/search/fulltext_decisions.jsp?tab=1&q=phi...), etc. If those instances of claimed abuse could be solved with a simple request to the registrar, trademark owners might be saved the time and expense of invoking RPMs. It is therefore difficult to see what is “incorrect” about this “narrative” which is based on actual cases, not assumptions. Best regards, Brian From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Tattersfield Sent: Thursday, April 27, 2017 11:16 AM To: Rebecca Tushnet Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Greg, a similar line of thinking was used by WIPO in response to the initial Report on IGO Access to Curative Rights Protection Mechanisms. https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/m... It is troubling if this line of thinking is held within the wider ICANN community, especially so, if this line of thinking is held by those seeking to change the current RPMs. A much better understanding of the underlying issues is needed if we are to better protect the goods and services of all rights holders through better RPMs and at the same time build a more equitable framework for all. My reply https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/m... to WIPO’s comments demonstrates on a very simple level how your assumptions set an incorrect narrative which sends people off in the wrong direction when seeking to solve the problem. RPMs are not the best way of dealing with the kind of bad behaviour you cite. A far better approach is to use section 3.18 of the 2013 Registrar Accreditation Agreement (RAA) which requires registrars to take action against this sort of behaviour. The advantage of using the 3.18 approach is it doesn’t require any domain name infringement to take action which means all of the bad behaviour involving a domain cited by yourself and WIPO can easily be dealt with and without any costs beyond the time spent identifying offending sites and requesting their suspension. Paul On Thu, Apr 27, 2017 at 6:08 AM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote: What would lead cybersquatters to choose common terms that, while protectable for specific goods or services, are not generally known for those meanings, as opposed to APPLE or MICROSOFT or other strong marks? That seems like a poor cybersquatting strategy, especially done retail rather than wholesale. Circumstantial evidence is evidence too. Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759> On Thu, Apr 27, 2017 at 1:03 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:
We have no idea who abandoned these registration attempts, or even if it was done by humans, much less rightsholders.
If we want to make assumptions that support arguments, rather than engaging in evidence-based inquiry, I'll offer the assumption that all the abandoned carts were started by cybersquatters that intended to use the domains to engage in spam, malware, phishing, spearphishing, fraud, theft and botnet farming.
Greg
On Wed, Apr 26, 2017 at 11:27 PM Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote:
Forwarding to match.
If you think that lots of people have valid uses--including rights--in those terms, then when they stop trying to register those terms, that is overdeterrence. I think what I said was clear.
Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>
On Wed, Apr 26, 2017 at 11:03 PM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:
Your guess -- and overdeterrence is just a guess, with nothing to back it up -- is as good as mine. My guess is that it absolutely is not overdeterrence.
And my point was that your statement was a mischaracterization of the way the TMCH, Sunrise and Claims work, as well as a mischaracterization of how trademarks work. So I don't think "My point exactly" is what you meant to say (though I wish it were).
Greg
Greg Shatan C: 917-816-6428<tel:917-816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:646-845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>
On Wed, Apr 26, 2017 at 10:57 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote:
My point exactly. So what explains the over 90% abandonment rate, other than overdeterrence, especially with those most returned terms? Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>
On Wed, Apr 26, 2017 at 10:53 PM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:
"Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms."
That is clearly and absolutely not the basis of trademark rights, trademark registration or entry into the TMCH. Nor is it the way Sunrise or Claims work. Ridiculous.
Greg
Greg Shatan C: 917-816-6428<tel:917-816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:646-845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>
On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote:
Yes, because we don't have good survey evidence, one of the questions is what we can infer from the circumstantial evidence available to us, particularly the over 90% abandonment rate combined with the top queries being words like forex, cloud, and love. Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms. But I doubt it. Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>
On Wed, Apr 26, 2017 at 10:37 PM, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: > Thanks Rebecca. I've never heard of a trademark owner being > deterred > by > a claims notice since one of the explicit defenses in the UDRP is > when a > registrant has rights or legitimate interests in a corresponding > trademark. > So, I think that one may be a bit of a red herring. > > However, your comment about avoiding overreach is well received > and > we > should keep it in mind while at the same time not under-reaching > either - > when we do that, Grandma gets phished. > > Best, > Paul > > > > -----Original Message----- > From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>] > Sent: Wednesday, April 26, 2017 9:17 PM > To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> > Cc: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>>; > gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 > (Design Mark and Appropriate Balance) > > Avoiding overreaching is pro-trademark, as the public reaction to > SOPA/PIPA and patent trolls has shown with respect to copyright > and > patent. > There are also the interests of trademark owners who aren't > participating in > this process but may want to register domain names that are > perfectly > legitimate for their goods/services and jurisdictions. Some of > them > may > inevitably receive notices and be deterred, but there are steps we > can take > to limit that problem. > Rebecca Tushnet > Georgetown Law > 703 593 6759<tel:703%20593%206759> > > > On Wed, Apr 26, 2017 at 9:50 PM, icannlists > <icannlists@winston.com<mailto:icannlists@winston.com>> > wrote: >> Thanks Rebecca. I'm not characterizing you as anti-trademark; >> just >> your arguments and positions to date on this list. We would very >> much >> welcome anything favorable to trademarks that you wish to add to >> the >> discourse. >> >> Best, >> Paul >> >> >> >> -----Original Message----- >> From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>] >> Sent: Wednesday, April 26, 2017 8:00 PM >> To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> >> Cc: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>>; >> gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >> #16 >> (Design Mark and Appropriate Balance) >> >> Please don't characterize me as anti-trademark; I strongly >> believe >> in >> the consumer protection function of trademarks, and also in >> trademark >> protection in some circumstances for business purposes. See >> >> >> https://harvardlawreview.org/2017/01/registering-disagreement-registra >> tion-in-modern-american-trademark-law/ >> >> Asking again: for those of you who think it doesn't matter if >> claimants >> who don't own relevant rights get to use the TMCH, what then did >> ICANN mean >> by its stated intent not to expand trademark rights? >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759<tel:703%20593%206759> >> >> >> On Wed, Apr 26, 2017 at 8:46 PM, icannlists >> <icannlists@winston.com<mailto:icannlists@winston.com>> >> wrote: >>> Thanks Rebecca. There is not much new here. Whomever registers >>> a >>> second level domain name first (Sunrise - TM owner), Premium >>> (Rich >>> person) >>> or Landrush (TM owner who didn't want to pay the Sunrise >>> shakedown >>> price or >>> regular folks like all of us), someone gets the exclusive rights >>> to >>> that >>> second level. So, it is not just a question of if, but of when >>> and >>> who. I >>> think it is OK to just say "I don't want it to be a trademark >>> owner." >>> Others will disagree, but we don't have to keep this in a >>> mysterious context >>> or otherwise try to layer on some free speech issue that doesn't >>> exist. >>> Trademark owners want them first in order to protect their >>> brands >>> and >>> consumers. Others who are anti-trademarks don't want them to >>> have >>> them >>> first and would prefer someone else gets the exclusive right. >>> Fair >>> enough. >>> Now we see if we can get to consensus on changing the AGB. I >>> doubt >>> we will, >>> but at least the free speech veneer is pulled back. >>> >>> Best, >>> Paul >>> >>> >>> >>> -----Original Message----- >>> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> >>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Rebecca >>> Tushnet >>> Sent: Wednesday, April 26, 2017 3:11 PM >>> To: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>> >>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >>> #16 >>> (Design Mark and Appropriate Balance) >>> >>> By that logic the mandate not to expand on trademark rights >>> would >>> have been pointless because no activity in domain name space >>> could >>> ever have expanded trademark rights. Call it a right, call it a >>> privilege, call it an alien from Xenon if you like, but ICANN >>> did >>> not >>> want trademark owners to be able to assert control over domain >>> names >>> in excess of what underlying trademark law would have allowed. >>> Under >>> the "nothing in domain names can expand trademark rights because >>> they're never exclusive" logic, was the ICANN direction >>> completely >>> meaningless, or did it have some meaning? (Trademark rights, of >>> course, are never "exclusive" either, which is why we can use >>> any >>> examples we want in this discussion.) Rebecca Tushnet Georgetown >>> Law >>> 703 593 6759<tel:703%20593%206759> >>> >>> >>> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg >>> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: >>>> Jeremy - the TMCH does not allow exclusive rights in domains. >>>> Having >>>> a mark in the TMCH affords nothing close an exclusive right. >>>> That's a basic >>>> truth which shouldn’t be ignored. >>>> >>>> -----Original Message----- >>>> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> >>>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Jeremy >>>> Malcolm >>>> Sent: Wednesday, April 26, 2017 1:32 PM >>>> To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >>>> #16 >>>> (Design Mark and Appropriate Balance) >>>> >>>> On 26/4/17 9:00 am, Colin O'Brien wrote: >>>>> Nice try Rebecca but I'm not attempting to overturn the apple >>>>> cart. >>>>> If you have actual examples of problems then provide them >>>>> otherwise this is >>>>> an indulgent academic exercise. >>>> >>>> The fact that the TMCH is allowing exclusive rights in domains >>>> that >>>> go beyond the equivalent rights in domestic trademark law is >>>> itself a >>>> problem if we accept that the TMCH was meant to track trademark >>>> law. >>>> >>>> -- >>>> Jeremy Malcolm >>>> Senior Global Policy Analyst >>>> Electronic Frontier Foundation >>>> https://eff.org >>>> jmalcolm@eff.org<mailto:jmalcolm@eff.org> >>>> >>>> Tel: 415.436.9333 ext 161<tel:415.436.9333%20ext%20161> >>>> >>>> :: Defending Your Rights in the Digital World :: >>>> >>>> Public key: >>>> https://www.eff.org/files/2016/11/27/key_jmalcolm.txt >>>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF >>>> 1122 >>>> >>>> >>>> >>>> >>>> ==================================================================== >>>> = >>>> = >>>> >>>> >>>> >>>> Reminder: Any email that requests your login credentials or >>>> that >>>> asks you to click on a link could be a phishing attack. If you >>>> have >>>> any questions regarding the authenticity of this email or its >>>> sender, please contact the IT Service Desk at 212.484.6000 or >>>> via >>>> email at ITServices@timewarner.com<mailto:ITServices@timewarner.com> >>>> >>>> >>>> >>>> >>>> >>>> ================================================================= >>>> This message is the property of Time Warner Inc. and is >>>> intended >>>> only for the use of the >>>> addressee(s) and may be legally privileged and/or confidential. >>>> If >>>> the reader of this message is not the intended recipient, or >>>> the >>>> employee or agent responsible to deliver it to the intended >>>> recipient, he or she is hereby notified that any dissemination, >>>> distribution, printing, forwarding, or any method of copying of >>>> this >>>> information, and/or the taking of any action in reliance on the >>>> information herein is strictly prohibited except by the >>>> intended >>>> recipient or those to whom he or she intentionally distributes >>>> this >>>> message. If you have received this communication in error, >>>> please >>>> immediately notify the sender, and delete the original message >>>> and >>>> any >>>> copies from your computer or storage system. Thank you. >>>> >>>> ================================================================= >>>> >>>> _______________________________________________ >>>> 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 >>> >>> ________________________________ >>> 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. _______________________________________________ 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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--
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>
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 IP Day 2017 – Join the conversation Web: www.wipo.int/ipday Facebook: www.facebook.com/worldipday 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.
A letter or call to a registrar is FAR more complex at effective than a UDRP action. Unfortunately, the former rarely results in the behavior being stopped and the later does. Sent from my iPhone On Apr 27, 2017, at 3:14 AM, Beckham, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Paul, It is important to look at the actual language of section 3.18 of the RAA. This provides that registrars “shall take reasonable and prompt steps to investigate and respond” to allegations of illegal activity. Looking at this carefully crafted contract language, it is easy to see that taking reasonable steps is subject to interpretation, just as is the corresponding obligation to investigate and respond. This is in no way meant to suggest that registrars are not complying with their ICANN obligations, but whether those obligations necessarily address the claimed illegal behavior and achieve the result sought is another matter altogether. RPMs on the other hand are specifically designed with criteria to assist a substantive determination (which the registrar need only implement). Indeed, the very fact that we have a working group dedicated to address ongoing claims of trademark abuse suggests that some claimed abuse is not being addressed through this RAA provision (which by the way is titled – my emphasis: “Registrar’s Abuse Contact and Duty to Investigate Reports of Abuse”). Quickly: searching WIPO’s public case database for the term “fraud” produces 1066 results (http://www.wipo.int/amc/en/domains/search/fulltext_decisions.jsp?tab=1&q=fraud&rows=20<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.int%2Famc%2Fen%2Fdomains%2Fsearch%2Ffulltext_decisions.jsp%3Ftab%3D1%26q%3Dfraud%26rows%3D20&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=ObK9VTHBPGrufXw9rVbAeMSmPR4LDiAFv6UouawPAgw%3D&reserved=0>), searching for “phishing” yields 659 results (http://www.wipo.int/amc/en/domains/search/fulltext_decisions.jsp?tab=1&q=phishing&rows=20<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.int%2Famc%2Fen%2Fdomains%2Fsearch%2Ffulltext_decisions.jsp%3Ftab%3D1%26q%3Dphishing%26rows%3D20&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=EPAoSFpvzSW0q%2BAll7SLMLN62KSXT8rpyo9IUPlRtIA%3D&reserved=0>), etc. If those instances of claimed abuse could be solved with a simple request to the registrar, trademark owners might be saved the time and expense of invoking RPMs. It is therefore difficult to see what is “incorrect” about this “narrative” which is based on actual cases, not assumptions. Best regards, Brian From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Tattersfield Sent: Thursday, April 27, 2017 11:16 AM To: Rebecca Tushnet Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Greg, a similar line of thinking was used by WIPO in response to the initial Report on IGO Access to Curative Rights Protection Mechanisms. https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/msg00000.html<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fforum.icann.org%2Flists%2Fcomments-igo-ingo-crp-access-initial-20jan17%2Fmsg00000.html&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=JbNkJvGhH91k%2BoSORw6sLtAIFc%2Bb8pRJeBnZ2nBu67g%3D&reserved=0> It is troubling if this line of thinking is held within the wider ICANN community, especially so, if this line of thinking is held by those seeking to change the current RPMs. A much better understanding of the underlying issues is needed if we are to better protect the goods and services of all rights holders through better RPMs and at the same time build a more equitable framework for all. My reply https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/msg00038.html<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fforum.icann.org%2Flists%2Fcomments-igo-ingo-crp-access-initial-20jan17%2Fmsg00038.html&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=PhO4Rkkg5jPCnI0AZtXula%2FnZ3cx834B3tUc5xAXSqQ%3D&reserved=0> to WIPO’s comments demonstrates on a very simple level how your assumptions set an incorrect narrative which sends people off in the wrong direction when seeking to solve the problem. RPMs are not the best way of dealing with the kind of bad behaviour you cite. A far better approach is to use section 3.18 of the 2013 Registrar Accreditation Agreement (RAA) which requires registrars to take action against this sort of behaviour. The advantage of using the 3.18 approach is it doesn’t require any domain name infringement to take action which means all of the bad behaviour involving a domain cited by yourself and WIPO can easily be dealt with and without any costs beyond the time spent identifying offending sites and requesting their suspension. Paul On Thu, Apr 27, 2017 at 6:08 AM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote: What would lead cybersquatters to choose common terms that, while protectable for specific goods or services, are not generally known for those meanings, as opposed to APPLE or MICROSOFT or other strong marks? That seems like a poor cybersquatting strategy, especially done retail rather than wholesale. Circumstantial evidence is evidence too. Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759> On Thu, Apr 27, 2017 at 1:03 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:
We have no idea who abandoned these registration attempts, or even if it was done by humans, much less rightsholders.
If we want to make assumptions that support arguments, rather than engaging in evidence-based inquiry, I'll offer the assumption that all the abandoned carts were started by cybersquatters that intended to use the domains to engage in spam, malware, phishing, spearphishing, fraud, theft and botnet farming.
Greg
On Wed, Apr 26, 2017 at 11:27 PM Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote:
Forwarding to match.
If you think that lots of people have valid uses--including rights--in those terms, then when they stop trying to register those terms, that is overdeterrence. I think what I said was clear.
Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>
On Wed, Apr 26, 2017 at 11:03 PM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:
Your guess -- and overdeterrence is just a guess, with nothing to back it up -- is as good as mine. My guess is that it absolutely is not overdeterrence.
And my point was that your statement was a mischaracterization of the way the TMCH, Sunrise and Claims work, as well as a mischaracterization of how trademarks work. So I don't think "My point exactly" is what you meant to say (though I wish it were).
Greg
Greg Shatan C: 917-816-6428<tel:917-816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:646-845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>
On Wed, Apr 26, 2017 at 10:57 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote:
My point exactly. So what explains the over 90% abandonment rate, other than overdeterrence, especially with those most returned terms? Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>
On Wed, Apr 26, 2017 at 10:53 PM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:
"Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms."
That is clearly and absolutely not the basis of trademark rights, trademark registration or entry into the TMCH. Nor is it the way Sunrise or Claims work. Ridiculous.
Greg
Greg Shatan C: 917-816-6428<tel:917-816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:646-845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>
On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote:
Yes, because we don't have good survey evidence, one of the questions is what we can infer from the circumstantial evidence available to us, particularly the over 90% abandonment rate combined with the top queries being words like forex, cloud, and love. Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms. But I doubt it. Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>
On Wed, Apr 26, 2017 at 10:37 PM, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: > Thanks Rebecca. I've never heard of a trademark owner being > deterred > by > a claims notice since one of the explicit defenses in the UDRP is > when a > registrant has rights or legitimate interests in a corresponding > trademark. > So, I think that one may be a bit of a red herring. > > However, your comment about avoiding overreach is well received > and > we > should keep it in mind while at the same time not under-reaching > either - > when we do that, Grandma gets phished. > > Best, > Paul > > > > -----Original Message----- > From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>] > Sent: Wednesday, April 26, 2017 9:17 PM > To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> > Cc: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>>; > gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 > (Design Mark and Appropriate Balance) > > Avoiding overreaching is pro-trademark, as the public reaction to > SOPA/PIPA and patent trolls has shown with respect to copyright > and > patent. > There are also the interests of trademark owners who aren't > participating in > this process but may want to register domain names that are > perfectly > legitimate for their goods/services and jurisdictions. Some of > them > may > inevitably receive notices and be deterred, but there are steps we > can take > to limit that problem. > Rebecca Tushnet > Georgetown Law > 703 593 6759<tel:703%20593%206759> > > > On Wed, Apr 26, 2017 at 9:50 PM, icannlists > <icannlists@winston.com<mailto:icannlists@winston.com>> > wrote: >> Thanks Rebecca. I'm not characterizing you as anti-trademark; >> just >> your arguments and positions to date on this list. We would very >> much >> welcome anything favorable to trademarks that you wish to add to >> the >> discourse. >> >> Best, >> Paul >> >> >> >> -----Original Message----- >> From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>] >> Sent: Wednesday, April 26, 2017 8:00 PM >> To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> >> Cc: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>>; >> gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >> #16 >> (Design Mark and Appropriate Balance) >> >> Please don't characterize me as anti-trademark; I strongly >> believe >> in >> the consumer protection function of trademarks, and also in >> trademark >> protection in some circumstances for business purposes. See >> >> >> https://harvardlawreview.org/2017/01/registering-disagreement-registra<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fharvardlawreview.org%2F2017%2F01%2Fregistering-disagreement-registra&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=iu0yMvKbDyZebmCpHx42pp%2BuQGNY3aNnUVn7YgzLoA8%3D&reserved=0> >> tion-in-modern-american-trademark-law/ >> >> Asking again: for those of you who think it doesn't matter if >> claimants >> who don't own relevant rights get to use the TMCH, what then did >> ICANN mean >> by its stated intent not to expand trademark rights? >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759<tel:703%20593%206759> >> >> >> On Wed, Apr 26, 2017 at 8:46 PM, icannlists >> <icannlists@winston.com<mailto:icannlists@winston.com>> >> wrote: >>> Thanks Rebecca. There is not much new here. Whomever registers >>> a >>> second level domain name first (Sunrise - TM owner), Premium >>> (Rich >>> person) >>> or Landrush (TM owner who didn't want to pay the Sunrise >>> shakedown >>> price or >>> regular folks like all of us), someone gets the exclusive rights >>> to >>> that >>> second level. So, it is not just a question of if, but of when >>> and >>> who. I >>> think it is OK to just say "I don't want it to be a trademark >>> owner." >>> Others will disagree, but we don't have to keep this in a >>> mysterious context >>> or otherwise try to layer on some free speech issue that doesn't >>> exist. >>> Trademark owners want them first in order to protect their >>> brands >>> and >>> consumers. Others who are anti-trademarks don't want them to >>> have >>> them >>> first and would prefer someone else gets the exclusive right. >>> Fair >>> enough. >>> Now we see if we can get to consensus on changing the AGB. I >>> doubt >>> we will, >>> but at least the free speech veneer is pulled back. >>> >>> Best, >>> Paul >>> >>> >>> >>> -----Original Message----- >>> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> >>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Rebecca >>> Tushnet >>> Sent: Wednesday, April 26, 2017 3:11 PM >>> To: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>> >>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >>> #16 >>> (Design Mark and Appropriate Balance) >>> >>> By that logic the mandate not to expand on trademark rights >>> would >>> have been pointless because no activity in domain name space >>> could >>> ever have expanded trademark rights. Call it a right, call it a >>> privilege, call it an alien from Xenon if you like, but ICANN >>> did >>> not >>> want trademark owners to be able to assert control over domain >>> names >>> in excess of what underlying trademark law would have allowed. >>> Under >>> the "nothing in domain names can expand trademark rights because >>> they're never exclusive" logic, was the ICANN direction >>> completely >>> meaningless, or did it have some meaning? (Trademark rights, of >>> course, are never "exclusive" either, which is why we can use >>> any >>> examples we want in this discussion.) Rebecca Tushnet Georgetown >>> Law >>> 703 593 6759<tel:703%20593%206759> >>> >>> >>> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg >>> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: >>>> Jeremy - the TMCH does not allow exclusive rights in domains. >>>> Having >>>> a mark in the TMCH affords nothing close an exclusive right. >>>> That's a basic >>>> truth which shouldn’t be ignored. >>>> >>>> -----Original Message----- >>>> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> >>>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Jeremy >>>> Malcolm >>>> Sent: Wednesday, April 26, 2017 1:32 PM >>>> To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >>>> #16 >>>> (Design Mark and Appropriate Balance) >>>> >>>> On 26/4/17 9:00 am, Colin O'Brien wrote: >>>>> Nice try Rebecca but I'm not attempting to overturn the apple >>>>> cart. >>>>> If you have actual examples of problems then provide them >>>>> otherwise this is >>>>> an indulgent academic exercise. >>>> >>>> The fact that the TMCH is allowing exclusive rights in domains >>>> that >>>> go beyond the equivalent rights in domestic trademark law is >>>> itself a >>>> problem if we accept that the TMCH was meant to track trademark >>>> law. >>>> >>>> -- >>>> Jeremy Malcolm >>>> Senior Global Policy Analyst >>>> Electronic Frontier Foundation >>>> https://eff.org<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=KzOy4znSpz0a9ehfGktwBDMo2ewTzNlJvPB42cYQEiE%3D&reserved=0> >>>> jmalcolm@eff.org<mailto:jmalcolm@eff.org> >>>> >>>> Tel: 415.436.9333 ext 161<tel:415.436.9333%20ext%20161> >>>> >>>> :: Defending Your Rights in the Digital World :: >>>> >>>> Public key: >>>> https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=xkQT0KuikbckR%2B74w%2Fz94XQg5UvkhiHvIw%2F7a4v5%2BjI%3D&reserved=0> >>>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF >>>> 1122 >>>> >>>> >>>> >>>> >>>> ==================================================================== >>>> = >>>> = >>>> >>>> >>>> >>>> Reminder: Any email that requests your login credentials or >>>> that >>>> asks you to click on a link could be a phishing attack. 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--
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>
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Brian, The idea that Claims Notices were sent out only to those looking to “engage in spam, malware, phishing, spearphishing, fraud, theft and botnet farming” and the idea that Claims Notices can be used to be used to effectively deal with a majority of this illegal behaviour sets a narrative. This wrongly creates an impression that simply extending the RPMs could lead to a significant reduction in the overall levels of the kinds of behaviour cited. I would suggest that it would not matter what changes were made to Claims Notices as this would have zero impact on the levels of the kind of behaviour cited. The deterrent value of Claims Notices comes from (a) those looking to start a new business with a similar name and (b) the fact that they serve notice of a mark on those looking to benefit from either advertising or trying to sell the domain back to the mark owner. With respect to the other kinds of behaviour cited. I believe 3.18 has more teeth than you are suggesting, rather requiring a registrar to take action for activity deemed illegal within their jurisdiction. 3.18(1) “…Registrar shall take reasonable and prompt steps to investigate and respond appropriately to any reports of abuse.” 3.18(2) “…Well-founded reports of Illegal Activity submitted to these contacts must be reviewed within 24 hours by an individual who is empowered by Registrar to take necessary and appropriate actions in response to the report. In responding to any such reports, Registrar will not be required to take any action in contravention of applicable law.” Briefly, with respect to making changes to the other RPMs, clearly they will have some effect. The questions are; whether changes simply move rather than reduce the behaviour and if the level of reduction is significant in the over all scheme of things. What we need to focus on is identifying the best tools for the right job and then improving those tools to make them more effective. We would be ill advised to create tools that give bad actors more scope to overreach while at the same time have little impact on the problem we are looking to solve. Best regards, Paul. On Thu, Apr 27, 2017 at 12:30 PM, J. Scott Evans <jsevans@adobe.com> wrote:
A letter or call to a registrar is FAR more complex at effective than a UDRP action. Unfortunately, the former rarely results in the behavior being stopped and the later does.
Sent from my iPhone
On Apr 27, 2017, at 3:14 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Paul,
It is important to look at the actual language of section 3.18 of the RAA. This provides that registrars “shall take reasonable and prompt steps to investigate and respond” to allegations of illegal activity.
Looking at this carefully crafted contract language, it is easy to see that taking reasonable steps is subject to interpretation, just as is the corresponding obligation to investigate and respond. This is in no way meant to suggest that registrars are not complying with their ICANN obligations, but whether those obligations necessarily address the claimed illegal behavior and achieve the result sought is another matter altogether. RPMs on the other hand are specifically designed with criteria to assist a substantive determination (which the registrar need only implement).
Indeed, the very fact that we have a working group dedicated to address ongoing claims of trademark abuse suggests that some claimed abuse is not being addressed through this RAA provision (which by the way is titled – my emphasis: “Registrar’s Abuse Contact and *Duty to Investigate* Reports of Abuse”).
Quickly: searching WIPO’s public case database for the term “fraud” produces 1066 results (http://www.wipo.int/amc/en/domains/search/fulltext_ decisions.jsp?tab=1&q=fraud&rows=20 <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.int...>), searching for “phishing” yields 659 results (http://www.wipo.int/amc/en/ domains/search/fulltext_decisions.jsp?tab=1&q=phishing&rows=20 <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.int...>), etc.
If those instances of claimed abuse could be solved with a simple request to the registrar, trademark owners might be saved the time and expense of invoking RPMs. It is therefore difficult to see what is “incorrect” about this “narrative” which is based on actual cases, not assumptions.
Best regards,
Brian
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *Paul Tattersfield *Sent:* Thursday, April 27, 2017 11:16 AM *To:* Rebecca Tushnet *Cc:* gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Greg, a similar line of thinking was used by WIPO in response to the initial Report on IGO Access to Curative Rights Protection Mechanisms. https://forum.icann.org/lists/comments-igo-ingo-crp-access- initial-20jan17/msg00000.html <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fforum.icann...>
It is troubling if this line of thinking is held within the wider ICANN community, especially so, if this line of thinking is held by those seeking to change the current RPMs.
A much better understanding of the underlying issues is needed if we are to better protect the goods and services of all rights holders through better RPMs and at the same time build a more equitable framework for all.
My reply https://forum.icann.org/lists/comments-igo-ingo-crp-access- initial-20jan17/msg00038.html <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fforum.icann...> to WIPO’s comments demonstrates on a very simple level how your assumptions set an incorrect narrative which sends people off in the wrong direction when seeking to solve the problem.
RPMs are not the best way of dealing with the kind of bad behaviour you cite. A far better approach is to use section 3.18 of the 2013 Registrar Accreditation Agreement (RAA) which requires registrars to take action against this sort of behaviour.
The advantage of using the 3.18 approach is it doesn’t require any domain name infringement to take action which means all of the bad behaviour involving a domain cited by yourself and WIPO can easily be dealt with and without any costs beyond the time spent identifying offending sites and requesting their suspension.
Paul
On Thu, Apr 27, 2017 at 6:08 AM, Rebecca Tushnet <Rebecca.Tushnet@law. georgetown.edu> wrote:
What would lead cybersquatters to choose common terms that, while protectable for specific goods or services, are not generally known for those meanings, as opposed to APPLE or MICROSOFT or other strong marks? That seems like a poor cybersquatting strategy, especially done retail rather than wholesale.
Circumstantial evidence is evidence too. Rebecca Tushnet Georgetown Law 703 593 6759
On Thu, Apr 27, 2017 at 1:03 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
We have no idea who abandoned these registration attempts, or even if it was done by humans, much less rightsholders.
If we want to make assumptions that support arguments, rather than engaging in evidence-based inquiry, I'll offer the assumption that all the abandoned carts were started by cybersquatters that intended to use the domains to engage in spam, malware, phishing, spearphishing, fraud, theft and botnet farming.
Greg
On Wed, Apr 26, 2017 at 11:27 PM Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Forwarding to match.
If you think that lots of people have valid uses--including rights--in those terms, then when they stop trying to register those terms, that is overdeterrence. I think what I said was clear.
Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 11:03 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:
Your guess -- and overdeterrence is just a guess, with nothing to back it up -- is as good as mine. My guess is that it absolutely is not overdeterrence.
And my point was that your statement was a mischaracterization of the way the TMCH, Sunrise and Claims work, as well as a mischaracterization of how trademarks work. So I don't think "My point exactly" is what you
meant
to say (though I wish it were).
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Wed, Apr 26, 2017 at 10:57 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
My point exactly. So what explains the over 90% abandonment rate, other than overdeterrence, especially with those most returned terms? Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 10:53 PM, Greg Shatan <
gregshatanipc@gmail.com>
wrote:
"Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms."
That is clearly and absolutely not the basis of trademark rights, trademark registration or entry into the TMCH. Nor is it the way Sunrise or Claims work. Ridiculous.
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote: > > Yes, because we don't have good survey evidence, one of the > questions > is what we can infer from the circumstantial evidence available to > us, > particularly the over 90% abandonment rate combined with the top > queries being words like forex, cloud, and love. Maybe absolutely > no > one else besides the TMCH entrant/s had a legitimate business using > those terms. But I doubt it. > Rebecca Tushnet > Georgetown Law > 703 593 6759 > > > On Wed, Apr 26, 2017 at 10:37 PM, icannlists > <icannlists@winston.com> > wrote: > > Thanks Rebecca. I've never heard of a trademark owner being > > deterred > > by > > a claims notice since one of the explicit defenses in the UDRP is > > when a > > registrant has rights or legitimate interests in a corresponding > > trademark. > > So, I think that one may be a bit of a red herring. > > > > However, your comment about avoiding overreach is well received > > and > > we > > should keep it in mind while at the same time not under-reaching > > either - > > when we do that, Grandma gets phished. > > > > Best, > > Paul > > > > > > > > -----Original Message----- > > From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law. georgetown.edu] > > Sent: Wednesday, April 26, 2017 9:17 PM > > To: icannlists <icannlists@winston.com> > > Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; > > gnso-rpm-wg@icann.org > > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 > > (Design Mark and Appropriate Balance) > > > > Avoiding overreaching is pro-trademark, as the public reaction to > > SOPA/PIPA and patent trolls has shown with respect to copyright > > and > > patent. > > There are also the interests of trademark owners who aren't > > participating in > > this process but may want to register domain names that are > > perfectly > > legitimate for their goods/services and jurisdictions. Some of > > them > > may > > inevitably receive notices and be deterred, but there are steps we > > can take > > to limit that problem. > > Rebecca Tushnet > > Georgetown Law > > 703 593 6759 > > > > > > On Wed, Apr 26, 2017 at 9:50 PM, icannlists > > <icannlists@winston.com> > > wrote: > >> Thanks Rebecca. I'm not characterizing you as anti-trademark; > >> just > >> your arguments and positions to date on this list. We would very > >> much > >> welcome anything favorable to trademarks that you wish to add to > >> the > >> discourse. > >> > >> Best, > >> Paul > >> > >> > >> > >> -----Original Message----- > >> From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law. georgetown.edu] > >> Sent: Wednesday, April 26, 2017 8:00 PM > >> To: icannlists <icannlists@winston.com> > >> Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; > >> gnso-rpm-wg@icann.org > >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and > >> #16 > >> (Design Mark and Appropriate Balance) > >> > >> Please don't characterize me as anti-trademark; I strongly > >> believe > >> in > >> the consumer protection function of trademarks, and also in > >> trademark > >> protection in some circumstances for business purposes. See > >> > >> > >> https://harvardlawreview.org/2017/01/registering- disagreement-registra <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fharvardlawr...> > >> tion-in-modern-american-trademark-law/ > >> > >> Asking again: for those of you who think it doesn't matter if > >> claimants > >> who don't own relevant rights get to use the TMCH, what then did > >> ICANN mean > >> by its stated intent not to expand trademark rights? > >> Rebecca Tushnet > >> Georgetown Law > >> 703 593 6759 > >> > >> > >> On Wed, Apr 26, 2017 at 8:46 PM, icannlists > >> <icannlists@winston.com> > >> wrote: > >>> Thanks Rebecca. There is not much new here. Whomever registers > >>> a > >>> second level domain name first (Sunrise - TM owner), Premium > >>> (Rich > >>> person) > >>> or Landrush (TM owner who didn't want to pay the Sunrise > >>> shakedown > >>> price or > >>> regular folks like all of us), someone gets the exclusive rights > >>> to > >>> that > >>> second level. So, it is not just a question of if, but of when > >>> and > >>> who. I > >>> think it is OK to just say "I don't want it to be a trademark > >>> owner." > >>> Others will disagree, but we don't have to keep this in a > >>> mysterious context > >>> or otherwise try to layer on some free speech issue that doesn't > >>> exist. > >>> Trademark owners want them first in order to protect their > >>> brands > >>> and > >>> consumers. Others who are anti-trademarks don't want them to > >>> have > >>> them > >>> first and would prefer someone else gets the exclusive right. > >>> Fair > >>> enough. > >>> Now we see if we can get to consensus on changing the AGB. I > >>> doubt > >>> we will, > >>> but at least the free speech veneer is pulled back. > >>> > >>> 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, April 26, 2017 3:11 PM > >>> To: Silver, Bradley <Bradley.Silver@timewarner.com> > >>> Cc: gnso-rpm-wg@icann.org > >>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and > >>> #16 > >>> (Design Mark and Appropriate Balance) > >>> > >>> By that logic the mandate not to expand on trademark rights > >>> would > >>> have been pointless because no activity in domain name space > >>> could > >>> ever have expanded trademark rights. Call it a right, call it a > >>> privilege, call it an alien from Xenon if you like, but ICANN > >>> did > >>> not > >>> want trademark owners to be able to assert control over domain > >>> names > >>> in excess of what underlying trademark law would have allowed. > >>> Under > >>> the "nothing in domain names can expand trademark rights because > >>> they're never exclusive" logic, was the ICANN direction > >>> completely > >>> meaningless, or did it have some meaning? (Trademark rights, of > >>> course, are never "exclusive" either, which is why we can use > >>> any > >>> examples we want in this discussion.) Rebecca Tushnet Georgetown > >>> Law > >>> 703 593 6759 > >>> > >>> > >>> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg > >>> <gnso-rpm-wg@icann.org> wrote: > >>>> Jeremy - the TMCH does not allow exclusive rights in domains. > >>>> Having > >>>> a mark in the TMCH affords nothing close an exclusive right. > >>>> That's a basic > >>>> truth which shouldn’t be ignored. > >>>> > >>>> -----Original Message----- > >>>> From: gnso-rpm-wg-bounces@icann.org > >>>> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy > >>>> Malcolm > >>>> Sent: Wednesday, April 26, 2017 1:32 PM > >>>> To: gnso-rpm-wg@icann.org > >>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and > >>>> #16 > >>>> (Design Mark and Appropriate Balance) > >>>> > >>>> On 26/4/17 9:00 am, Colin O'Brien wrote: > >>>>> Nice try Rebecca but I'm not attempting to overturn the apple > >>>>> cart. > >>>>> If you have actual examples of problems then provide them > >>>>> otherwise this is > >>>>> an indulgent academic exercise. > >>>> > >>>> The fact that the TMCH is allowing exclusive rights in domains > >>>> that > >>>> go beyond the equivalent rights in domestic trademark law is > >>>> itself a > >>>> problem if we accept that the TMCH was meant to track trademark > >>>> law. > >>>> > >>>> -- > >>>> Jeremy Malcolm > >>>> Senior Global Policy Analyst > >>>> Electronic Frontier Foundation > >>>> https://eff.org <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&dat...> > >>>> jmalcolm@eff.org > >>>> > >>>> Tel: 415.436.9333 ext 161 > >>>> > >>>> :: Defending Your Rights in the Digital World :: > >>>> > >>>> Public key: > >>>> https://www.eff.org/files/2016/11/27/key_jmalcolm.txt <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org...> > >>>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF > >>>> 1122 > >>>> > >>>> > >>>> > >>>> > >>>> ============================================================ ======== > >>>> = > >>>> = > >>>> > >>>> > >>>> > >>>> Reminder: Any email that requests your login credentials or > >>>> that > >>>> asks you to click on a link could be a phishing attack. 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Paul, Your view of Section 3.18 and its teeth is based on your never having tried to rely on it to get illegal and problematic behavior stopped. As anyone who has tried and/or has engaged in discussions with ICANN and registrars with regard to what this language means can tell you, there is a very wide disparity in views on what “reasonable and prompt steps to investigate and respond” means and what it requires which is determined by what your role is. You may not be surprised to learn that it is the view of registrars that their responsibilities under 3.18 are limited. With respect to ICANN Compliance, they have historically refused to take a position on this. As any teeth would be in the form of ICANN compliance action, this means that to the extent that there are any obligations here, there are no teeth to them as ICANN Compliance will not get involved. You should also note that 3.18(2) only applies to law enforcement. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Tattersfield Sent: Thursday, April 27, 2017 9:16 AM To: J. Scott Evans Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Brian, The idea that Claims Notices were sent out only to those looking to “engage in spam, malware, phishing, spearphishing, fraud, theft and botnet farming” and the idea that Claims Notices can be used to be used to effectively deal with a majority of this illegal behaviour sets a narrative. This wrongly creates an impression that simply extending the RPMs could lead to a significant reduction in the overall levels of the kinds of behaviour cited. I would suggest that it would not matter what changes were made to Claims Notices as this would have zero impact on the levels of the kind of behaviour cited. The deterrent value of Claims Notices comes from (a) those looking to start a new business with a similar name and (b) the fact that they serve notice of a mark on those looking to benefit from either advertising or trying to sell the domain back to the mark owner. With respect to the other kinds of behaviour cited. I believe 3.18 has more teeth than you are suggesting, rather requiring a registrar to take action for activity deemed illegal within their jurisdiction. 3.18(1) “…Registrar shall take reasonable and prompt steps to investigate and respond appropriately to any reports of abuse.” 3.18(2) “…Well-founded reports of Illegal Activity submitted to these contacts must be reviewed within 24 hours by an individual who is empowered by Registrar to take necessary and appropriate actions in response to the report. In responding to any such reports, Registrar will not be required to take any action in contravention of applicable law.” Briefly, with respect to making changes to the other RPMs, clearly they will have some effect. The questions are; whether changes simply move rather than reduce the behaviour and if the level of reduction is significant in the over all scheme of things. What we need to focus on is identifying the best tools for the right job and then improving those tools to make them more effective. We would be ill advised to create tools that give bad actors more scope to overreach while at the same time have little impact on the problem we are looking to solve. Best regards, Paul. On Thu, Apr 27, 2017 at 12:30 PM, J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> wrote: A letter or call to a registrar is FAR more complex at effective than a UDRP action. Unfortunately, the former rarely results in the behavior being stopped and the later does. Sent from my iPhone On Apr 27, 2017, at 3:14 AM, Beckham, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Paul, It is important to look at the actual language of section 3.18 of the RAA. This provides that registrars “shall take reasonable and prompt steps to investigate and respond” to allegations of illegal activity. Looking at this carefully crafted contract language, it is easy to see that taking reasonable steps is subject to interpretation, just as is the corresponding obligation to investigate and respond. This is in no way meant to suggest that registrars are not complying with their ICANN obligations, but whether those obligations necessarily address the claimed illegal behavior and achieve the result sought is another matter altogether. RPMs on the other hand are specifically designed with criteria to assist a substantive determination (which the registrar need only implement). Indeed, the very fact that we have a working group dedicated to address ongoing claims of trademark abuse suggests that some claimed abuse is not being addressed through this RAA provision (which by the way is titled – my emphasis: “Registrar’s Abuse Contact and Duty to Investigate Reports of Abuse”). Quickly: searching WIPO’s public case database for the term “fraud” produces 1066 results (https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_amc_en_doma... <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti...>), searching for “phishing” yields 659 results (https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_amc_en_doma... <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti...>), etc. If those instances of claimed abuse could be solved with a simple request to the registrar, trademark owners might be saved the time and expense of invoking RPMs. It is therefore difficult to see what is “incorrect” about this “narrative” which is based on actual cases, not assumptions. Best regards, Brian From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Tattersfield Sent: Thursday, April 27, 2017 11:16 AM To: Rebecca Tushnet Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Greg, a similar line of thinking was used by WIPO in response to the initial Report on IGO Access to Curative Rights Protection Mechanisms. https://urldefense.proofpoint.com/v2/url?u=https-3A__forum.icann.org_lists_c... <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti...> It is troubling if this line of thinking is held within the wider ICANN community, especially so, if this line of thinking is held by those seeking to change the current RPMs. A much better understanding of the underlying issues is needed if we are to better protect the goods and services of all rights holders through better RPMs and at the same time build a more equitable framework for all. My reply https://urldefense.proofpoint.com/v2/url?u=https-3A__forum.icann.org_lists_c... <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti...> to WIPO’s comments demonstrates on a very simple level how your assumptions set an incorrect narrative which sends people off in the wrong direction when seeking to solve the problem. RPMs are not the best way of dealing with the kind of bad behaviour you cite. A far better approach is to use section 3.18 of the 2013 Registrar Accreditation Agreement (RAA) which requires registrars to take action against this sort of behaviour. The advantage of using the 3.18 approach is it doesn’t require any domain name infringement to take action which means all of the bad behaviour involving a domain cited by yourself and WIPO can easily be dealt with and without any costs beyond the time spent identifying offending sites and requesting their suspension. Paul On Thu, Apr 27, 2017 at 6:08 AM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote: What would lead cybersquatters to choose common terms that, while protectable for specific goods or services, are not generally known for those meanings, as opposed to APPLE or MICROSOFT or other strong marks? That seems like a poor cybersquatting strategy, especially done retail rather than wholesale. Circumstantial evidence is evidence too. Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759> On Thu, Apr 27, 2017 at 1:03 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:
We have no idea who abandoned these registration attempts, or even if it was done by humans, much less rightsholders.
If we want to make assumptions that support arguments, rather than engaging in evidence-based inquiry, I'll offer the assumption that all the abandoned carts were started by cybersquatters that intended to use the domains to engage in spam, malware, phishing, spearphishing, fraud, theft and botnet farming.
Greg
On Wed, Apr 26, 2017 at 11:27 PM Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote:
Forwarding to match.
If you think that lots of people have valid uses--including rights--in those terms, then when they stop trying to register those terms, that is overdeterrence. I think what I said was clear.
Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>
On Wed, Apr 26, 2017 at 11:03 PM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:
Your guess -- and overdeterrence is just a guess, with nothing to back it up -- is as good as mine. My guess is that it absolutely is not overdeterrence.
And my point was that your statement was a mischaracterization of the way the TMCH, Sunrise and Claims work, as well as a mischaracterization of how trademarks work. So I don't think "My point exactly" is what you meant to say (though I wish it were).
Greg
Greg Shatan C: 917-816-6428<tel:917-816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:646-845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>
On Wed, Apr 26, 2017 at 10:57 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote:
My point exactly. So what explains the over 90% abandonment rate, other than overdeterrence, especially with those most returned terms? Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>
On Wed, Apr 26, 2017 at 10:53 PM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:
"Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms."
That is clearly and absolutely not the basis of trademark rights, trademark registration or entry into the TMCH. Nor is it the way Sunrise or Claims work. Ridiculous.
Greg
Greg Shatan C: 917-816-6428<tel:917-816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:646-845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>
On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote:
Yes, because we don't have good survey evidence, one of the questions is what we can infer from the circumstantial evidence available to us, particularly the over 90% abandonment rate combined with the top queries being words like forex, cloud, and love. Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms. But I doubt it. Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>
On Wed, Apr 26, 2017 at 10:37 PM, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: > Thanks Rebecca. I've never heard of a trademark owner being > deterred > by > a claims notice since one of the explicit defenses in the UDRP is > when a > registrant has rights or legitimate interests in a corresponding > trademark. > So, I think that one may be a bit of a red herring. > > However, your comment about avoiding overreach is well received > and > we > should keep it in mind while at the same time not under-reaching > either - > when we do that, Grandma gets phished. > > Best, > Paul > > > > -----Original Message----- > From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>] > Sent: Wednesday, April 26, 2017 9:17 PM > To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> > Cc: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>>; > gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 > (Design Mark and Appropriate Balance) > > Avoiding overreaching is pro-trademark, as the public reaction to > SOPA/PIPA and patent trolls has shown with respect to copyright > and > patent. > There are also the interests of trademark owners who aren't > participating in > this process but may want to register domain names that are > perfectly > legitimate for their goods/services and jurisdictions. Some of > them > may > inevitably receive notices and be deterred, but there are steps we > can take > to limit that problem. > Rebecca Tushnet > Georgetown Law > 703 593 6759<tel:703%20593%206759> > > > On Wed, Apr 26, 2017 at 9:50 PM, icannlists > <icannlists@winston.com<mailto:icannlists@winston.com>> > wrote: >> Thanks Rebecca. I'm not characterizing you as anti-trademark; >> just >> your arguments and positions to date on this list. We would very >> much >> welcome anything favorable to trademarks that you wish to add to >> the >> discourse. >> >> Best, >> Paul >> >> >> >> -----Original Message----- >> From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>] >> Sent: Wednesday, April 26, 2017 8:00 PM >> To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> >> Cc: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>>; >> gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >> #16 >> (Design Mark and Appropriate Balance) >> >> Please don't characterize me as anti-trademark; I strongly >> believe >> in >> the consumer protection function of trademarks, and also in >> trademark >> protection in some circumstances for business purposes. See >> >> >> https://urldefense.proofpoint.com/v2/url?u=https-3A__harvardlawreview.org_20... <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti...> >> tion-in-modern-american-trademark-law/ >> >> Asking again: for those of you who think it doesn't matter if >> claimants >> who don't own relevant rights get to use the TMCH, what then did >> ICANN mean >> by its stated intent not to expand trademark rights? >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759<tel:703%20593%206759> >> >> >> On Wed, Apr 26, 2017 at 8:46 PM, icannlists >> <icannlists@winston.com<mailto:icannlists@winston.com>> >> wrote: >>> Thanks Rebecca. There is not much new here. Whomever registers >>> a >>> second level domain name first (Sunrise - TM owner), Premium >>> (Rich >>> person) >>> or Landrush (TM owner who didn't want to pay the Sunrise >>> shakedown >>> price or >>> regular folks like all of us), someone gets the exclusive rights >>> to >>> that >>> second level. So, it is not just a question of if, but of when >>> and >>> who. I >>> think it is OK to just say "I don't want it to be a trademark >>> owner." >>> Others will disagree, but we don't have to keep this in a >>> mysterious context >>> or otherwise try to layer on some free speech issue that doesn't >>> exist. >>> Trademark owners want them first in order to protect their >>> brands >>> and >>> consumers. Others who are anti-trademarks don't want them to >>> have >>> them >>> first and would prefer someone else gets the exclusive right. >>> Fair >>> enough. >>> Now we see if we can get to consensus on changing the AGB. I >>> doubt >>> we will, >>> but at least the free speech veneer is pulled back. >>> >>> Best, >>> Paul >>> >>> >>> >>> -----Original Message----- >>> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> >>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Rebecca >>> Tushnet >>> Sent: Wednesday, April 26, 2017 3:11 PM >>> To: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>> >>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >>> #16 >>> (Design Mark and Appropriate Balance) >>> >>> By that logic the mandate not to expand on trademark rights >>> would >>> have been pointless because no activity in domain name space >>> could >>> ever have expanded trademark rights. Call it a right, call it a >>> privilege, call it an alien from Xenon if you like, but ICANN >>> did >>> not >>> want trademark owners to be able to assert control over domain >>> names >>> in excess of what underlying trademark law would have allowed. >>> Under >>> the "nothing in domain names can expand trademark rights because >>> they're never exclusive" logic, was the ICANN direction >>> completely >>> meaningless, or did it have some meaning? (Trademark rights, of >>> course, are never "exclusive" either, which is why we can use >>> any >>> examples we want in this discussion.) Rebecca Tushnet Georgetown >>> Law >>> 703 593 6759<tel:703%20593%206759> >>> >>> >>> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg >>> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: >>>> Jeremy - the TMCH does not allow exclusive rights in domains. >>>> Having >>>> a mark in the TMCH affords nothing close an exclusive right. >>>> That's a basic >>>> truth which shouldn’t be ignored. >>>> >>>> -----Original Message----- >>>> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> >>>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Jeremy >>>> Malcolm >>>> Sent: Wednesday, April 26, 2017 1:32 PM >>>> To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >>>> #16 >>>> (Design Mark and Appropriate Balance) >>>> >>>> On 26/4/17 9:00 am, Colin O'Brien wrote: >>>>> Nice try Rebecca but I'm not attempting to overturn the apple >>>>> cart. >>>>> If you have actual examples of problems then provide them >>>>> otherwise this is >>>>> an indulgent academic exercise. >>>> >>>> The fact that the TMCH is allowing exclusive rights in domains >>>> that >>>> go beyond the equivalent rights in domestic trademark law is >>>> itself a >>>> problem if we accept that the TMCH was meant to track trademark >>>> law. >>>> >>>> -- >>>> Jeremy Malcolm >>>> Senior Global Policy Analyst >>>> Electronic Frontier Foundation >>>> https://urldefense.proofpoint.com/v2/url?u=https-3A__eff.org&d=DwIGaQ&c=2s2m... <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti...> >>>> jmalcolm@eff.org<mailto:jmalcolm@eff.org> >>>> >>>> Tel: 415.436.9333 ext 161<tel:415.436.9333%20ext%20161> >>>> >>>> :: Defending Your Rights in the Digital World :: >>>> >>>> Public key: >>>> https://urldefense.proofpoint.com/v2/url?u=https-3A__www.eff.org_files_2016_... <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti...> >>>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF >>>> 1122 >>>> >>>> >>>> >>>> >>>> ==================================================================== >>>> = >>>> = >>>> >>>> >>>> >>>> Reminder: Any email that requests your login credentials or >>>> that >>>> asks you to click on a link could be a phishing attack. 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Thanks Paul, With this, I think you’ll find a great deal of agreement in the WG: “We would be ill advised to create tools that give bad actors more scope to overreach while at the same time have little impact on the problem we are looking to solve.” With respect to the RAA, J Scott, Paul Keating, and Marc Tractenberg have I think addressed this in sufficient detail. I think we all look forward to continuing to focus on the positive aspects of the former. Best, Brian From: Paul Tattersfield [mailto:gpmgroup@gmail.com] Sent: Thursday, April 27, 2017 4:16 PM To: J. Scott Evans Cc: Beckham, Brian; Rebecca Tushnet; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Brian, The idea that Claims Notices were sent out only to those looking to “engage in spam, malware, phishing, spearphishing, fraud, theft and botnet farming” and the idea that Claims Notices can be used to be used to effectively deal with a majority of this illegal behaviour sets a narrative. This wrongly creates an impression that simply extending the RPMs could lead to a significant reduction in the overall levels of the kinds of behaviour cited. I would suggest that it would not matter what changes were made to Claims Notices as this would have zero impact on the levels of the kind of behaviour cited. The deterrent value of Claims Notices comes from (a) those looking to start a new business with a similar name and (b) the fact that they serve notice of a mark on those looking to benefit from either advertising or trying to sell the domain back to the mark owner. With respect to the other kinds of behaviour cited. I believe 3.18 has more teeth than you are suggesting, rather requiring a registrar to take action for activity deemed illegal within their jurisdiction. 3.18(1) “…Registrar shall take reasonable and prompt steps to investigate and respond appropriately to any reports of abuse.” 3.18(2) “…Well-founded reports of Illegal Activity submitted to these contacts must be reviewed within 24 hours by an individual who is empowered by Registrar to take necessary and appropriate actions in response to the report. In responding to any such reports, Registrar will not be required to take any action in contravention of applicable law.” Briefly, with respect to making changes to the other RPMs, clearly they will have some effect. The questions are; whether changes simply move rather than reduce the behaviour and if the level of reduction is significant in the over all scheme of things. What we need to focus on is identifying the best tools for the right job and then improving those tools to make them more effective. We would be ill advised to create tools that give bad actors more scope to overreach while at the same time have little impact on the problem we are looking to solve. Best regards, Paul. On Thu, Apr 27, 2017 at 12:30 PM, J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> wrote: A letter or call to a registrar is FAR more complex at effective than a UDRP action. Unfortunately, the former rarely results in the behavior being stopped and the later does. Sent from my iPhone On Apr 27, 2017, at 3:14 AM, Beckham, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Paul, It is important to look at the actual language of section 3.18 of the RAA. This provides that registrars “shall take reasonable and prompt steps to investigate and respond” to allegations of illegal activity. Looking at this carefully crafted contract language, it is easy to see that taking reasonable steps is subject to interpretation, just as is the corresponding obligation to investigate and respond. This is in no way meant to suggest that registrars are not complying with their ICANN obligations, but whether those obligations necessarily address the claimed illegal behavior and achieve the result sought is another matter altogether. RPMs on the other hand are specifically designed with criteria to assist a substantive determination (which the registrar need only implement). Indeed, the very fact that we have a working group dedicated to address ongoing claims of trademark abuse suggests that some claimed abuse is not being addressed through this RAA provision (which by the way is titled – my emphasis: “Registrar’s Abuse Contact and Duty to Investigate Reports of Abuse”). Quickly: searching WIPO’s public case database for the term “fraud” produces 1066 results (http://www.wipo.int/amc/en/domains/search/fulltext_decisions.jsp?tab=1&q=fraud&rows=20<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.int%2Famc%2Fen%2Fdomains%2Fsearch%2Ffulltext_decisions.jsp%3Ftab%3D1%26q%3Dfraud%26rows%3D20&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=ObK9VTHBPGrufXw9rVbAeMSmPR4LDiAFv6UouawPAgw%3D&reserved=0>), searching for “phishing” yields 659 results (http://www.wipo.int/amc/en/domains/search/fulltext_decisions.jsp?tab=1&q=phishing&rows=20<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.int%2Famc%2Fen%2Fdomains%2Fsearch%2Ffulltext_decisions.jsp%3Ftab%3D1%26q%3Dphishing%26rows%3D20&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=EPAoSFpvzSW0q%2BAll7SLMLN62KSXT8rpyo9IUPlRtIA%3D&reserved=0>), etc. If those instances of claimed abuse could be solved with a simple request to the registrar, trademark owners might be saved the time and expense of invoking RPMs. It is therefore difficult to see what is “incorrect” about this “narrative” which is based on actual cases, not assumptions. Best regards, Brian From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Tattersfield Sent: Thursday, April 27, 2017 11:16 AM To: Rebecca Tushnet Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Greg, a similar line of thinking was used by WIPO in response to the initial Report on IGO Access to Curative Rights Protection Mechanisms. https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/msg00000.html<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fforum.icann.org%2Flists%2Fcomments-igo-ingo-crp-access-initial-20jan17%2Fmsg00000.html&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=JbNkJvGhH91k%2BoSORw6sLtAIFc%2Bb8pRJeBnZ2nBu67g%3D&reserved=0> It is troubling if this line of thinking is held within the wider ICANN community, especially so, if this line of thinking is held by those seeking to change the current RPMs. A much better understanding of the underlying issues is needed if we are to better protect the goods and services of all rights holders through better RPMs and at the same time build a more equitable framework for all. My reply https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/msg00038.html<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fforum.icann.org%2Flists%2Fcomments-igo-ingo-crp-access-initial-20jan17%2Fmsg00038.html&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=PhO4Rkkg5jPCnI0AZtXula%2FnZ3cx834B3tUc5xAXSqQ%3D&reserved=0> to WIPO’s comments demonstrates on a very simple level how your assumptions set an incorrect narrative which sends people off in the wrong direction when seeking to solve the problem. RPMs are not the best way of dealing with the kind of bad behaviour you cite. A far better approach is to use section 3.18 of the 2013 Registrar Accreditation Agreement (RAA) which requires registrars to take action against this sort of behaviour. The advantage of using the 3.18 approach is it doesn’t require any domain name infringement to take action which means all of the bad behaviour involving a domain cited by yourself and WIPO can easily be dealt with and without any costs beyond the time spent identifying offending sites and requesting their suspension. Paul On Thu, Apr 27, 2017 at 6:08 AM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote: What would lead cybersquatters to choose common terms that, while protectable for specific goods or services, are not generally known for those meanings, as opposed to APPLE or MICROSOFT or other strong marks? That seems like a poor cybersquatting strategy, especially done retail rather than wholesale. Circumstantial evidence is evidence too. Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759> On Thu, Apr 27, 2017 at 1:03 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:
We have no idea who abandoned these registration attempts, or even if it was done by humans, much less rightsholders.
If we want to make assumptions that support arguments, rather than engaging in evidence-based inquiry, I'll offer the assumption that all the abandoned carts were started by cybersquatters that intended to use the domains to engage in spam, malware, phishing, spearphishing, fraud, theft and botnet farming.
Greg
On Wed, Apr 26, 2017 at 11:27 PM Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote:
Forwarding to match.
If you think that lots of people have valid uses--including rights--in those terms, then when they stop trying to register those terms, that is overdeterrence. I think what I said was clear.
Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>
On Wed, Apr 26, 2017 at 11:03 PM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:
Your guess -- and overdeterrence is just a guess, with nothing to back it up -- is as good as mine. My guess is that it absolutely is not overdeterrence.
And my point was that your statement was a mischaracterization of the way the TMCH, Sunrise and Claims work, as well as a mischaracterization of how trademarks work. So I don't think "My point exactly" is what you meant to say (though I wish it were).
Greg
Greg Shatan C: 917-816-6428<tel:917-816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:646-845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>
On Wed, Apr 26, 2017 at 10:57 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote:
My point exactly. So what explains the over 90% abandonment rate, other than overdeterrence, especially with those most returned terms? Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>
On Wed, Apr 26, 2017 at 10:53 PM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:
"Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms."
That is clearly and absolutely not the basis of trademark rights, trademark registration or entry into the TMCH. Nor is it the way Sunrise or Claims work. Ridiculous.
Greg
Greg Shatan C: 917-816-6428<tel:917-816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:646-845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>
On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote:
Yes, because we don't have good survey evidence, one of the questions is what we can infer from the circumstantial evidence available to us, particularly the over 90% abandonment rate combined with the top queries being words like forex, cloud, and love. Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms. But I doubt it. Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>
On Wed, Apr 26, 2017 at 10:37 PM, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: > Thanks Rebecca. I've never heard of a trademark owner being > deterred > by > a claims notice since one of the explicit defenses in the UDRP is > when a > registrant has rights or legitimate interests in a corresponding > trademark. > So, I think that one may be a bit of a red herring. > > However, your comment about avoiding overreach is well received > and > we > should keep it in mind while at the same time not under-reaching > either - > when we do that, Grandma gets phished. > > Best, > Paul > > > > -----Original Message----- > From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>] > Sent: Wednesday, April 26, 2017 9:17 PM > To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> > Cc: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>>; > gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 > (Design Mark and Appropriate Balance) > > Avoiding overreaching is pro-trademark, as the public reaction to > SOPA/PIPA and patent trolls has shown with respect to copyright > and > patent. > There are also the interests of trademark owners who aren't > participating in > this process but may want to register domain names that are > perfectly > legitimate for their goods/services and jurisdictions. Some of > them > may > inevitably receive notices and be deterred, but there are steps we > can take > to limit that problem. > Rebecca Tushnet > Georgetown Law > 703 593 6759<tel:703%20593%206759> > > > On Wed, Apr 26, 2017 at 9:50 PM, icannlists > <icannlists@winston.com<mailto:icannlists@winston.com>> > wrote: >> Thanks Rebecca. I'm not characterizing you as anti-trademark; >> just >> your arguments and positions to date on this list. We would very >> much >> welcome anything favorable to trademarks that you wish to add to >> the >> discourse. >> >> Best, >> Paul >> >> >> >> -----Original Message----- >> From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>] >> Sent: Wednesday, April 26, 2017 8:00 PM >> To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> >> Cc: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>>; >> gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >> #16 >> (Design Mark and Appropriate Balance) >> >> Please don't characterize me as anti-trademark; I strongly >> believe >> in >> the consumer protection function of trademarks, and also in >> trademark >> protection in some circumstances for business purposes. See >> >> >> https://harvardlawreview.org/2017/01/registering-disagreement-registra<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fharvardlawreview.org%2F2017%2F01%2Fregistering-disagreement-registra&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=iu0yMvKbDyZebmCpHx42pp%2BuQGNY3aNnUVn7YgzLoA8%3D&reserved=0> >> tion-in-modern-american-trademark-law/ >> >> Asking again: for those of you who think it doesn't matter if >> claimants >> who don't own relevant rights get to use the TMCH, what then did >> ICANN mean >> by its stated intent not to expand trademark rights? >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759<tel:703%20593%206759> >> >> >> On Wed, Apr 26, 2017 at 8:46 PM, icannlists >> <icannlists@winston.com<mailto:icannlists@winston.com>> >> wrote: >>> Thanks Rebecca. There is not much new here. Whomever registers >>> a >>> second level domain name first (Sunrise - TM owner), Premium >>> (Rich >>> person) >>> or Landrush (TM owner who didn't want to pay the Sunrise >>> shakedown >>> price or >>> regular folks like all of us), someone gets the exclusive rights >>> to >>> that >>> second level. So, it is not just a question of if, but of when >>> and >>> who. I >>> think it is OK to just say "I don't want it to be a trademark >>> owner." >>> Others will disagree, but we don't have to keep this in a >>> mysterious context >>> or otherwise try to layer on some free speech issue that doesn't >>> exist. >>> Trademark owners want them first in order to protect their >>> brands >>> and >>> consumers. Others who are anti-trademarks don't want them to >>> have >>> them >>> first and would prefer someone else gets the exclusive right. >>> Fair >>> enough. >>> Now we see if we can get to consensus on changing the AGB. I >>> doubt >>> we will, >>> but at least the free speech veneer is pulled back. >>> >>> Best, >>> Paul >>> >>> >>> >>> -----Original Message----- >>> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> >>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Rebecca >>> Tushnet >>> Sent: Wednesday, April 26, 2017 3:11 PM >>> To: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>> >>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >>> #16 >>> (Design Mark and Appropriate Balance) >>> >>> By that logic the mandate not to expand on trademark rights >>> would >>> have been pointless because no activity in domain name space >>> could >>> ever have expanded trademark rights. Call it a right, call it a >>> privilege, call it an alien from Xenon if you like, but ICANN >>> did >>> not >>> want trademark owners to be able to assert control over domain >>> names >>> in excess of what underlying trademark law would have allowed. >>> Under >>> the "nothing in domain names can expand trademark rights because >>> they're never exclusive" logic, was the ICANN direction >>> completely >>> meaningless, or did it have some meaning? (Trademark rights, of >>> course, are never "exclusive" either, which is why we can use >>> any >>> examples we want in this discussion.) Rebecca Tushnet Georgetown >>> Law >>> 703 593 6759<tel:703%20593%206759> >>> >>> >>> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg >>> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: >>>> Jeremy - the TMCH does not allow exclusive rights in domains. >>>> Having >>>> a mark in the TMCH affords nothing close an exclusive right. >>>> That's a basic >>>> truth which shouldn’t be ignored. >>>> >>>> -----Original Message----- >>>> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> >>>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Jeremy >>>> Malcolm >>>> Sent: Wednesday, April 26, 2017 1:32 PM >>>> To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >>>> #16 >>>> (Design Mark and Appropriate Balance) >>>> >>>> On 26/4/17 9:00 am, Colin O'Brien wrote: >>>>> Nice try Rebecca but I'm not attempting to overturn the apple >>>>> cart. >>>>> If you have actual examples of problems then provide them >>>>> otherwise this is >>>>> an indulgent academic exercise. >>>> >>>> The fact that the TMCH is allowing exclusive rights in domains >>>> that >>>> go beyond the equivalent rights in domestic trademark law is >>>> itself a >>>> problem if we accept that the TMCH was meant to track trademark >>>> law. >>>> >>>> -- >>>> Jeremy Malcolm >>>> Senior Global Policy Analyst >>>> Electronic Frontier Foundation >>>> https://eff.org<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=KzOy4znSpz0a9ehfGktwBDMo2ewTzNlJvPB42cYQEiE%3D&reserved=0> >>>> jmalcolm@eff.org<mailto:jmalcolm@eff.org> >>>> >>>> Tel: 415.436.9333 ext 161<tel:415.436.9333%20ext%20161> >>>> >>>> :: Defending Your Rights in the Digital World :: >>>> >>>> Public key: >>>> https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=xkQT0KuikbckR%2B74w%2Fz94XQg5UvkhiHvIw%2F7a4v5%2BjI%3D&reserved=0> >>>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF >>>> 1122 >>>> >>>> >>>> >>>> >>>> ==================================================================== >>>> = >>>> = >>>> >>>> >>>> >>>> Reminder: Any email that requests your login credentials or >>>> that >>>> asks you to click on a link could be a phishing attack. 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This should be a serious matter for ICANN compliance. On Thu, Apr 27, 2017 at 12:30 PM, J. Scott Evans <jsevans@adobe.com> wrote:
A letter or call to a registrar is FAR more complex at effective than a UDRP action. Unfortunately, the former rarely results in the behavior being stopped and the later does.
Sent from my iPhone
On Apr 27, 2017, at 3:14 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Paul,
It is important to look at the actual language of section 3.18 of the RAA. This provides that registrars “shall take reasonable and prompt steps to investigate and respond” to allegations of illegal activity.
Looking at this carefully crafted contract language, it is easy to see that taking reasonable steps is subject to interpretation, just as is the corresponding obligation to investigate and respond. This is in no way meant to suggest that registrars are not complying with their ICANN obligations, but whether those obligations necessarily address the claimed illegal behavior and achieve the result sought is another matter altogether. RPMs on the other hand are specifically designed with criteria to assist a substantive determination (which the registrar need only implement).
Indeed, the very fact that we have a working group dedicated to address ongoing claims of trademark abuse suggests that some claimed abuse is not being addressed through this RAA provision (which by the way is titled – my emphasis: “Registrar’s Abuse Contact and *Duty to Investigate* Reports of Abuse”).
Quickly: searching WIPO’s public case database for the term “fraud” produces 1066 results (http://www.wipo.int/amc/en/domains/search/fulltext_ decisions.jsp?tab=1&q=fraud&rows=20 <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.int...>), searching for “phishing” yields 659 results (http://www.wipo.int/amc/en/ domains/search/fulltext_decisions.jsp?tab=1&q=phishing&rows=20 <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.int...>), etc.
If those instances of claimed abuse could be solved with a simple request to the registrar, trademark owners might be saved the time and expense of invoking RPMs. It is therefore difficult to see what is “incorrect” about this “narrative” which is based on actual cases, not assumptions.
Best regards,
Brian
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *Paul Tattersfield *Sent:* Thursday, April 27, 2017 11:16 AM *To:* Rebecca Tushnet *Cc:* gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Greg, a similar line of thinking was used by WIPO in response to the initial Report on IGO Access to Curative Rights Protection Mechanisms. https://forum.icann.org/lists/comments-igo-ingo-crp-access- initial-20jan17/msg00000.html <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fforum.icann...>
It is troubling if this line of thinking is held within the wider ICANN community, especially so, if this line of thinking is held by those seeking to change the current RPMs.
A much better understanding of the underlying issues is needed if we are to better protect the goods and services of all rights holders through better RPMs and at the same time build a more equitable framework for all.
My reply https://forum.icann.org/lists/comments-igo-ingo-crp-access- initial-20jan17/msg00038.html <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fforum.icann...> to WIPO’s comments demonstrates on a very simple level how your assumptions set an incorrect narrative which sends people off in the wrong direction when seeking to solve the problem.
RPMs are not the best way of dealing with the kind of bad behaviour you cite. A far better approach is to use section 3.18 of the 2013 Registrar Accreditation Agreement (RAA) which requires registrars to take action against this sort of behaviour.
The advantage of using the 3.18 approach is it doesn’t require any domain name infringement to take action which means all of the bad behaviour involving a domain cited by yourself and WIPO can easily be dealt with and without any costs beyond the time spent identifying offending sites and requesting their suspension.
Paul
On Thu, Apr 27, 2017 at 6:08 AM, Rebecca Tushnet <Rebecca.Tushnet@law. georgetown.edu> wrote:
What would lead cybersquatters to choose common terms that, while protectable for specific goods or services, are not generally known for those meanings, as opposed to APPLE or MICROSOFT or other strong marks? That seems like a poor cybersquatting strategy, especially done retail rather than wholesale.
Circumstantial evidence is evidence too. Rebecca Tushnet Georgetown Law 703 593 6759
On Thu, Apr 27, 2017 at 1:03 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
We have no idea who abandoned these registration attempts, or even if it was done by humans, much less rightsholders.
If we want to make assumptions that support arguments, rather than engaging in evidence-based inquiry, I'll offer the assumption that all the abandoned carts were started by cybersquatters that intended to use the domains to engage in spam, malware, phishing, spearphishing, fraud, theft and botnet farming.
Greg
On Wed, Apr 26, 2017 at 11:27 PM Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Forwarding to match.
If you think that lots of people have valid uses--including rights--in those terms, then when they stop trying to register those terms, that is overdeterrence. I think what I said was clear.
Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 11:03 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:
Your guess -- and overdeterrence is just a guess, with nothing to back it up -- is as good as mine. My guess is that it absolutely is not overdeterrence.
And my point was that your statement was a mischaracterization of the way the TMCH, Sunrise and Claims work, as well as a mischaracterization of how trademarks work. So I don't think "My point exactly" is what you
meant
to say (though I wish it were).
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Wed, Apr 26, 2017 at 10:57 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
My point exactly. So what explains the over 90% abandonment rate, other than overdeterrence, especially with those most returned terms? Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 10:53 PM, Greg Shatan <
gregshatanipc@gmail.com>
wrote:
"Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms."
That is clearly and absolutely not the basis of trademark rights, trademark registration or entry into the TMCH. Nor is it the way Sunrise or Claims work. Ridiculous.
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote: > > Yes, because we don't have good survey evidence, one of the > questions > is what we can infer from the circumstantial evidence available to > us, > particularly the over 90% abandonment rate combined with the top > queries being words like forex, cloud, and love. Maybe absolutely > no > one else besides the TMCH entrant/s had a legitimate business using > those terms. But I doubt it. > Rebecca Tushnet > Georgetown Law > 703 593 6759 > > > On Wed, Apr 26, 2017 at 10:37 PM, icannlists > <icannlists@winston.com> > wrote: > > Thanks Rebecca. I've never heard of a trademark owner being > > deterred > > by > > a claims notice since one of the explicit defenses in the UDRP is > > when a > > registrant has rights or legitimate interests in a corresponding > > trademark. > > So, I think that one may be a bit of a red herring. > > > > However, your comment about avoiding overreach is well received > > and > > we > > should keep it in mind while at the same time not under-reaching > > either - > > when we do that, Grandma gets phished. > > > > Best, > > Paul > > > > > > > > -----Original Message----- > > From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law. georgetown.edu] > > Sent: Wednesday, April 26, 2017 9:17 PM > > To: icannlists <icannlists@winston.com> > > Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; > > gnso-rpm-wg@icann.org > > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 > > (Design Mark and Appropriate Balance) > > > > Avoiding overreaching is pro-trademark, as the public reaction to > > SOPA/PIPA and patent trolls has shown with respect to copyright > > and > > patent. > > There are also the interests of trademark owners who aren't > > participating in > > this process but may want to register domain names that are > > perfectly > > legitimate for their goods/services and jurisdictions. Some of > > them > > may > > inevitably receive notices and be deterred, but there are steps we > > can take > > to limit that problem. > > Rebecca Tushnet > > Georgetown Law > > 703 593 6759 > > > > > > On Wed, Apr 26, 2017 at 9:50 PM, icannlists > > <icannlists@winston.com> > > wrote: > >> Thanks Rebecca. I'm not characterizing you as anti-trademark; > >> just > >> your arguments and positions to date on this list. We would very > >> much > >> welcome anything favorable to trademarks that you wish to add to > >> the > >> discourse. > >> > >> Best, > >> Paul > >> > >> > >> > >> -----Original Message----- > >> From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law. georgetown.edu] > >> Sent: Wednesday, April 26, 2017 8:00 PM > >> To: icannlists <icannlists@winston.com> > >> Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; > >> gnso-rpm-wg@icann.org > >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and > >> #16 > >> (Design Mark and Appropriate Balance) > >> > >> Please don't characterize me as anti-trademark; I strongly > >> believe > >> in > >> the consumer protection function of trademarks, and also in > >> trademark > >> protection in some circumstances for business purposes. See > >> > >> > >> https://harvardlawreview.org/2017/01/registering- disagreement-registra <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fharvardlawr...> > >> tion-in-modern-american-trademark-law/ > >> > >> Asking again: for those of you who think it doesn't matter if > >> claimants > >> who don't own relevant rights get to use the TMCH, what then did > >> ICANN mean > >> by its stated intent not to expand trademark rights? > >> Rebecca Tushnet > >> Georgetown Law > >> 703 593 6759 > >> > >> > >> On Wed, Apr 26, 2017 at 8:46 PM, icannlists > >> <icannlists@winston.com> > >> wrote: > >>> Thanks Rebecca. There is not much new here. Whomever registers > >>> a > >>> second level domain name first (Sunrise - TM owner), Premium > >>> (Rich > >>> person) > >>> or Landrush (TM owner who didn't want to pay the Sunrise > >>> shakedown > >>> price or > >>> regular folks like all of us), someone gets the exclusive rights > >>> to > >>> that > >>> second level. So, it is not just a question of if, but of when > >>> and > >>> who. I > >>> think it is OK to just say "I don't want it to be a trademark > >>> owner." > >>> Others will disagree, but we don't have to keep this in a > >>> mysterious context > >>> or otherwise try to layer on some free speech issue that doesn't > >>> exist. > >>> Trademark owners want them first in order to protect their > >>> brands > >>> and > >>> consumers. Others who are anti-trademarks don't want them to > >>> have > >>> them > >>> first and would prefer someone else gets the exclusive right. > >>> Fair > >>> enough. > >>> Now we see if we can get to consensus on changing the AGB. I > >>> doubt > >>> we will, > >>> but at least the free speech veneer is pulled back. > >>> > >>> 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, April 26, 2017 3:11 PM > >>> To: Silver, Bradley <Bradley.Silver@timewarner.com> > >>> Cc: gnso-rpm-wg@icann.org > >>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and > >>> #16 > >>> (Design Mark and Appropriate Balance) > >>> > >>> By that logic the mandate not to expand on trademark rights > >>> would > >>> have been pointless because no activity in domain name space > >>> could > >>> ever have expanded trademark rights. Call it a right, call it a > >>> privilege, call it an alien from Xenon if you like, but ICANN > >>> did > >>> not > >>> want trademark owners to be able to assert control over domain > >>> names > >>> in excess of what underlying trademark law would have allowed. > >>> Under > >>> the "nothing in domain names can expand trademark rights because > >>> they're never exclusive" logic, was the ICANN direction > >>> completely > >>> meaningless, or did it have some meaning? (Trademark rights, of > >>> course, are never "exclusive" either, which is why we can use > >>> any > >>> examples we want in this discussion.) Rebecca Tushnet Georgetown > >>> Law > >>> 703 593 6759 > >>> > >>> > >>> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg > >>> <gnso-rpm-wg@icann.org> wrote: > >>>> Jeremy - the TMCH does not allow exclusive rights in domains. > >>>> Having > >>>> a mark in the TMCH affords nothing close an exclusive right. > >>>> That's a basic > >>>> truth which shouldn’t be ignored. > >>>> > >>>> -----Original Message----- > >>>> From: gnso-rpm-wg-bounces@icann.org > >>>> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy > >>>> Malcolm > >>>> Sent: Wednesday, April 26, 2017 1:32 PM > >>>> To: gnso-rpm-wg@icann.org > >>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and > >>>> #16 > >>>> (Design Mark and Appropriate Balance) > >>>> > >>>> On 26/4/17 9:00 am, Colin O'Brien wrote: > >>>>> Nice try Rebecca but I'm not attempting to overturn the apple > >>>>> cart. > >>>>> If you have actual examples of problems then provide them > >>>>> otherwise this is > >>>>> an indulgent academic exercise. > >>>> > >>>> The fact that the TMCH is allowing exclusive rights in domains > >>>> that > >>>> go beyond the equivalent rights in domestic trademark law is > >>>> itself a > >>>> problem if we accept that the TMCH was meant to track trademark > >>>> law. > >>>> > >>>> -- > >>>> Jeremy Malcolm > >>>> Senior Global Policy Analyst > >>>> Electronic Frontier Foundation > >>>> https://eff.org <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&dat...> > >>>> jmalcolm@eff.org > >>>> > >>>> Tel: 415.436.9333 ext 161 > >>>> > >>>> :: Defending Your Rights in the Digital World :: > >>>> > >>>> Public key: > >>>> https://www.eff.org/files/2016/11/27/key_jmalcolm.txt <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org...> > >>>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF > >>>> 1122 > >>>> > >>>> > >>>> > >>>> > >>>> ============================================================ ======== > >>>> = > >>>> = > >>>> > >>>> > >>>> > >>>> Reminder: Any email that requests your login credentials or > >>>> that > >>>> asks you to click on a link could be a phishing attack. If you > >>>> have > >>>> any questions regarding the authenticity of this email or its > >>>> sender, please contact the IT Service Desk at 212.484.6000 <(212)%20484-6000> or > >>>> via > >>>> email at ITServices@timewarner.com > >>>> > >>>> > >>>> > >>>> > >>>> > >>>> ============================================================ ===== > >>>> This message is the property of Time Warner Inc. and is > >>>> intended > >>>> only for the use of the > >>>> addressee(s) and may be legally privileged and/or confidential. > >>>> If > >>>> the reader of this message is not the intended recipient, or > >>>> the > >>>> employee or agent responsible to deliver it to the intended > >>>> recipient, he or she is hereby notified that any dissemination, > >>>> distribution, printing, forwarding, or any method of copying of > >>>> this > >>>> information, and/or the taking of any action in reliance on the > >>>> information herein is strictly prohibited except by the > >>>> intended > >>>> recipient or those to whom he or she intentionally distributes > >>>> this > >>>> message. If you have received this communication in error, > >>>> please > >>>> immediately notify the sender, and delete the original message > >>>> and > >>>> any > >>>> copies from your computer or storage system. Thank you. > >>>> > >>>> ============================================================ ===== > >>>> > >>>> _______________________________________________ > >>>> gnso-rpm-wg mailing list > >>>> gnso-rpm-wg@icann.org > >>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...> > >>> _______________________________________________ > >>> gnso-rpm-wg mailing list > >>> gnso-rpm-wg@icann.org > >>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...> > >>> > >>> ________________________________ > >>> 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. > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...>
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J Scott wrote: "A letter or call to a registrar is FAR more complex at effective than a UDRP action. Unfortunately, the former rarely results in the behavior being stopped and the later does" This should be a serious matter for ICANN compliance. Best regards, Paul. On Thu, Apr 27, 2017 at 3:21 PM, Paul Tattersfield <gpmgroup@gmail.com> wrote:
This should be a serious matter for ICANN compliance.
On Thu, Apr 27, 2017 at 12:30 PM, J. Scott Evans <jsevans@adobe.com> wrote:
A letter or call to a registrar is FAR more complex at effective than a UDRP action. Unfortunately, the former rarely results in the behavior being stopped and the later does.
Sent from my iPhone
On Apr 27, 2017, at 3:14 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Paul,
It is important to look at the actual language of section 3.18 of the RAA. This provides that registrars “shall take reasonable and prompt steps to investigate and respond” to allegations of illegal activity.
Looking at this carefully crafted contract language, it is easy to see that taking reasonable steps is subject to interpretation, just as is the corresponding obligation to investigate and respond. This is in no way meant to suggest that registrars are not complying with their ICANN obligations, but whether those obligations necessarily address the claimed illegal behavior and achieve the result sought is another matter altogether. RPMs on the other hand are specifically designed with criteria to assist a substantive determination (which the registrar need only implement).
Indeed, the very fact that we have a working group dedicated to address ongoing claims of trademark abuse suggests that some claimed abuse is not being addressed through this RAA provision (which by the way is titled – my emphasis: “Registrar’s Abuse Contact and *Duty to Investigate* Reports of Abuse”).
Quickly: searching WIPO’s public case database for the term “fraud” produces 1066 results (http://www.wipo.int/amc/en/do mains/search/fulltext_decisions.jsp?tab=1&q=fraud&rows=20 <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.int...>), searching for “phishing” yields 659 results ( http://www.wipo.int/amc/en/domains/search/fulltext_decision s.jsp?tab=1&q=phishing&rows=20 <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.int...>), etc.
If those instances of claimed abuse could be solved with a simple request to the registrar, trademark owners might be saved the time and expense of invoking RPMs. It is therefore difficult to see what is “incorrect” about this “narrative” which is based on actual cases, not assumptions.
Best regards,
Brian
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ic ann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *Paul Tattersfield *Sent:* Thursday, April 27, 2017 11:16 AM *To:* Rebecca Tushnet *Cc:* gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Greg, a similar line of thinking was used by WIPO in response to the initial Report on IGO Access to Curative Rights Protection Mechanisms. https://forum.icann.org/lists/comments-igo-ingo-crp-access-i nitial-20jan17/msg00000.html <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fforum.icann...>
It is troubling if this line of thinking is held within the wider ICANN community, especially so, if this line of thinking is held by those seeking to change the current RPMs.
A much better understanding of the underlying issues is needed if we are to better protect the goods and services of all rights holders through better RPMs and at the same time build a more equitable framework for all.
My reply https://forum.icann.org/lists/comments-igo-ingo-crp-access-i nitial-20jan17/msg00038.html <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fforum.icann...> to WIPO’s comments demonstrates on a very simple level how your assumptions set an incorrect narrative which sends people off in the wrong direction when seeking to solve the problem.
RPMs are not the best way of dealing with the kind of bad behaviour you cite. A far better approach is to use section 3.18 of the 2013 Registrar Accreditation Agreement (RAA) which requires registrars to take action against this sort of behaviour.
The advantage of using the 3.18 approach is it doesn’t require any domain name infringement to take action which means all of the bad behaviour involving a domain cited by yourself and WIPO can easily be dealt with and without any costs beyond the time spent identifying offending sites and requesting their suspension.
Paul
On Thu, Apr 27, 2017 at 6:08 AM, Rebecca Tushnet < Rebecca.Tushnet@law.georgetown.edu> wrote:
What would lead cybersquatters to choose common terms that, while protectable for specific goods or services, are not generally known for those meanings, as opposed to APPLE or MICROSOFT or other strong marks? That seems like a poor cybersquatting strategy, especially done retail rather than wholesale.
Circumstantial evidence is evidence too. Rebecca Tushnet Georgetown Law 703 593 6759
On Thu, Apr 27, 2017 at 1:03 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
We have no idea who abandoned these registration attempts, or even if it was done by humans, much less rightsholders.
If we want to make assumptions that support arguments, rather than engaging in evidence-based inquiry, I'll offer the assumption that all the abandoned carts were started by cybersquatters that intended to use the domains to engage in spam, malware, phishing, spearphishing, fraud, theft and botnet farming.
Greg
On Wed, Apr 26, 2017 at 11:27 PM Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Forwarding to match.
If you think that lots of people have valid uses--including rights--in those terms, then when they stop trying to register those terms, that is overdeterrence. I think what I said was clear.
Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 11:03 PM, Greg Shatan <gregshatanipc@gmail.com
wrote:
Your guess -- and overdeterrence is just a guess, with nothing to back it up -- is as good as mine. My guess is that it absolutely is not overdeterrence.
And my point was that your statement was a mischaracterization of the way the TMCH, Sunrise and Claims work, as well as a mischaracterization of how trademarks work. So I don't think "My point exactly" is what you meant to say (though I wish it were).
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Wed, Apr 26, 2017 at 10:57 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
My point exactly. So what explains the over 90% abandonment rate, other than overdeterrence, especially with those most returned
terms?
Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 10:53 PM, Greg Shatan < gregshatanipc@gmail.com> wrote: > "Maybe absolutely no one else besides the TMCH entrant/s had a > legitimate > business using those terms." > > That is clearly and absolutely not the basis of trademark rights, > trademark > registration or entry into the TMCH. Nor is it the way Sunrise or > Claims > work. Ridiculous. > > Greg > > Greg Shatan > C: 917-816-6428 > S: gsshatan > Phone-to-Skype: 646-845-9428 > gregshatanipc@gmail.com > > > On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet > <Rebecca.Tushnet@law.georgetown.edu> wrote: >> >> Yes, because we don't have good survey evidence, one of the >> questions >> is what we can infer from the circumstantial evidence available to >> us, >> particularly the over 90% abandonment rate combined with the top >> queries being words like forex, cloud, and love. Maybe absolutely >> no >> one else besides the TMCH entrant/s had a legitimate business using >> those terms. But I doubt it. >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759 >> >> >> On Wed, Apr 26, 2017 at 10:37 PM, icannlists >> <icannlists@winston.com> >> wrote: >> > Thanks Rebecca. I've never heard of a trademark owner being >> > deterred >> > by >> > a claims notice since one of the explicit defenses in the UDRP is >> > when a >> > registrant has rights or legitimate interests in a corresponding >> > trademark. >> > So, I think that one may be a bit of a red herring. >> > >> > However, your comment about avoiding overreach is well received >> > and >> > we >> > should keep it in mind while at the same time not under-reaching >> > either - >> > when we do that, Grandma gets phished. >> > >> > Best, >> > Paul >> > >> > >> > >> > -----Original Message----- >> > From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.ge orgetown.edu] >> > Sent: Wednesday, April 26, 2017 9:17 PM >> > To: icannlists <icannlists@winston.com> >> > Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; >> > gnso-rpm-wg@icann.org >> > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 >> > (Design Mark and Appropriate Balance) >> > >> > Avoiding overreaching is pro-trademark, as the public reaction to >> > SOPA/PIPA and patent trolls has shown with respect to copyright >> > and >> > patent. >> > There are also the interests of trademark owners who aren't >> > participating in >> > this process but may want to register domain names that are >> > perfectly >> > legitimate for their goods/services and jurisdictions. Some of >> > them >> > may >> > inevitably receive notices and be deterred, but there are steps we >> > can take >> > to limit that problem. >> > Rebecca Tushnet >> > Georgetown Law >> > 703 593 6759 >> > >> > >> > On Wed, Apr 26, 2017 at 9:50 PM, icannlists >> > <icannlists@winston.com> >> > wrote: >> >> Thanks Rebecca. I'm not characterizing you as anti-trademark; >> >> just >> >> your arguments and positions to date on this list. We would very >> >> much >> >> welcome anything favorable to trademarks that you wish to add to >> >> the >> >> discourse. >> >> >> >> Best, >> >> Paul >> >> >> >> >> >> >> >> -----Original Message----- >> >> From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.ge orgetown.edu] >> >> Sent: Wednesday, April 26, 2017 8:00 PM >> >> To: icannlists <icannlists@winston.com> >> >> Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; >> >> gnso-rpm-wg@icann.org >> >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >> >> #16 >> >> (Design Mark and Appropriate Balance) >> >> >> >> Please don't characterize me as anti-trademark; I strongly >> >> believe >> >> in >> >> the consumer protection function of trademarks, and also in >> >> trademark >> >> protection in some circumstances for business purposes. See >> >> >> >> >> >> https://harvardlawreview.org/2017/01/registering-disagreemen t-registra <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fharvardlawr...> >> >> tion-in-modern-american-trademark-law/ >> >> >> >> Asking again: for those of you who think it doesn't matter if >> >> claimants >> >> who don't own relevant rights get to use the TMCH, what then did >> >> ICANN mean >> >> by its stated intent not to expand trademark rights? >> >> Rebecca Tushnet >> >> Georgetown Law >> >> 703 593 6759 >> >> >> >> >> >> On Wed, Apr 26, 2017 at 8:46 PM, icannlists >> >> <icannlists@winston.com> >> >> wrote: >> >>> Thanks Rebecca. There is not much new here. Whomever registers >> >>> a >> >>> second level domain name first (Sunrise - TM owner), Premium >> >>> (Rich >> >>> person) >> >>> or Landrush (TM owner who didn't want to pay the Sunrise >> >>> shakedown >> >>> price or >> >>> regular folks like all of us), someone gets the exclusive rights >> >>> to >> >>> that >> >>> second level. So, it is not just a question of if, but of when >> >>> and >> >>> who. I >> >>> think it is OK to just say "I don't want it to be a trademark >> >>> owner." >> >>> Others will disagree, but we don't have to keep this in a >> >>> mysterious context >> >>> or otherwise try to layer on some free speech issue that doesn't >> >>> exist. >> >>> Trademark owners want them first in order to protect their >> >>> brands >> >>> and >> >>> consumers. Others who are anti-trademarks don't want them to >> >>> have >> >>> them >> >>> first and would prefer someone else gets the exclusive right. >> >>> Fair >> >>> enough. >> >>> Now we see if we can get to consensus on changing the AGB. I >> >>> doubt >> >>> we will, >> >>> but at least the free speech veneer is pulled back. >> >>> >> >>> 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, April 26, 2017 3:11 PM >> >>> To: Silver, Bradley <Bradley.Silver@timewarner.com> >> >>> Cc: gnso-rpm-wg@icann.org >> >>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >> >>> #16 >> >>> (Design Mark and Appropriate Balance) >> >>> >> >>> By that logic the mandate not to expand on trademark rights >> >>> would >> >>> have been pointless because no activity in domain name space >> >>> could >> >>> ever have expanded trademark rights. Call it a right, call it a >> >>> privilege, call it an alien from Xenon if you like, but ICANN >> >>> did >> >>> not >> >>> want trademark owners to be able to assert control over domain >> >>> names >> >>> in excess of what underlying trademark law would have allowed. >> >>> Under >> >>> the "nothing in domain names can expand trademark rights because >> >>> they're never exclusive" logic, was the ICANN direction >> >>> completely >> >>> meaningless, or did it have some meaning? (Trademark rights, of >> >>> course, are never "exclusive" either, which is why we can use >> >>> any >> >>> examples we want in this discussion.) Rebecca Tushnet Georgetown >> >>> Law >> >>> 703 593 6759 >> >>> >> >>> >> >>> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg >> >>> <gnso-rpm-wg@icann.org> wrote: >> >>>> Jeremy - the TMCH does not allow exclusive rights in domains. >> >>>> Having >> >>>> a mark in the TMCH affords nothing close an exclusive right. >> >>>> That's a basic >> >>>> truth which shouldn’t be ignored. >> >>>> >> >>>> -----Original Message----- >> >>>> From: gnso-rpm-wg-bounces@icann.org >> >>>> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy >> >>>> Malcolm >> >>>> Sent: Wednesday, April 26, 2017 1:32 PM >> >>>> To: gnso-rpm-wg@icann.org >> >>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >> >>>> #16 >> >>>> (Design Mark and Appropriate Balance) >> >>>> >> >>>> On 26/4/17 9:00 am, Colin O'Brien wrote: >> >>>>> Nice try Rebecca but I'm not attempting to overturn the apple >> >>>>> cart. >> >>>>> If you have actual examples of problems then provide them >> >>>>> otherwise this is >> >>>>> an indulgent academic exercise. >> >>>> >> >>>> The fact that the TMCH is allowing exclusive rights in domains >> >>>> that >> >>>> go beyond the equivalent rights in domestic trademark law is >> >>>> itself a >> >>>> problem if we accept that the TMCH was meant to track trademark >> >>>> law. >> >>>> >> >>>> -- >> >>>> Jeremy Malcolm >> >>>> Senior Global Policy Analyst >> >>>> Electronic Frontier Foundation >> >>>> https://eff.org <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&dat...> >> >>>> jmalcolm@eff.org >> >>>> >> >>>> Tel: 415.436.9333 ext 161 >> >>>> >> >>>> :: Defending Your Rights in the Digital World :: >> >>>> >> >>>> Public key: >> >>>> https://www.eff.org/files/2016/11/27/key_jmalcolm.txt <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org...> >> >>>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF >> >>>> 1122 >> >>>> >> >>>> >> >>>> >> >>>> >> >>>> ============================== ====================================== >> >>>> = >> >>>> = >> >>>> >> >>>> >> >>>> >> >>>> Reminder: Any email that requests your login credentials or >> >>>> that >> >>>> asks you to click on a link could be a phishing attack. If you >> >>>> have >> >>>> any questions regarding the authenticity of this email or its >> >>>> sender, please contact the IT Service Desk at 212.484.6000 <(212)%20484-6000> or >> >>>> via >> >>>> email at ITServices@timewarner.com >> >>>> >> >>>> >> >>>> >> >>>> >> >>>> >> >>>> ============================== =================================== >> >>>> This message is the property of Time Warner Inc. and is >> >>>> intended >> >>>> only for the use of the >> >>>> addressee(s) and may be legally privileged and/or confidential. >> >>>> If >> >>>> the reader of this message is not the intended recipient, or >> >>>> the >> >>>> employee or agent responsible to deliver it to the intended >> >>>> recipient, he or she is hereby notified that any dissemination, >> >>>> distribution, printing, forwarding, or any method of copying of >> >>>> this >> >>>> information, and/or the taking of any action in reliance on the >> >>>> information herein is strictly prohibited except by the >> >>>> intended >> >>>> recipient or those to whom he or she intentionally distributes >> >>>> this >> >>>> message. 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Thank you. >> >>>> >> >>>> ============================== =================================== >> >>>> >> >>>> _______________________________________________ >> >>>> gnso-rpm-wg mailing list >> >>>> gnso-rpm-wg@icann.org >> >>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...> >> >>> _______________________________________________ >> >>> gnso-rpm-wg mailing list >> >>> gnso-rpm-wg@icann.org >> >>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...> >> >>> >> >>> ________________________________ >> >>> 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. >> _______________________________________________ >> gnso-rpm-wg mailing list >> gnso-rpm-wg@icann.org >> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...> > >
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Greg Shatan C: 917-816-6428 <(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428 <(646)%20845-9428> gregshatanipc@gmail.com
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I meant write "cost effective". Typing with thumbs before 5 AM 😄. Sorry to confuse. Sent from my iPhone On Apr 27, 2017, at 7:23 AM, Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> wrote: J Scott wrote: "A letter or call to a registrar is FAR more complex at effective than a UDRP action. Unfortunately, the former rarely results in the behavior being stopped and the later does" This should be a serious matter for ICANN compliance. Best regards, Paul. On Thu, Apr 27, 2017 at 3:21 PM, Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> wrote: This should be a serious matter for ICANN compliance. On Thu, Apr 27, 2017 at 12:30 PM, J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> wrote: A letter or call to a registrar is FAR more complex at effective than a UDRP action. Unfortunately, the former rarely results in the behavior being stopped and the later does. Sent from my iPhone On Apr 27, 2017, at 3:14 AM, Beckham, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Paul, It is important to look at the actual language of section 3.18 of the RAA. This provides that registrars “shall take reasonable and prompt steps to investigate and respond” to allegations of illegal activity. Looking at this carefully crafted contract language, it is easy to see that taking reasonable steps is subject to interpretation, just as is the corresponding obligation to investigate and respond. This is in no way meant to suggest that registrars are not complying with their ICANN obligations, but whether those obligations necessarily address the claimed illegal behavior and achieve the result sought is another matter altogether. RPMs on the other hand are specifically designed with criteria to assist a substantive determination (which the registrar need only implement). Indeed, the very fact that we have a working group dedicated to address ongoing claims of trademark abuse suggests that some claimed abuse is not being addressed through this RAA provision (which by the way is titled – my emphasis: “Registrar’s Abuse Contact and Duty to Investigate Reports of Abuse”). Quickly: searching WIPO’s public case database for the term “fraud” produces 1066 results (http://www.wipo.int/amc/en/domains/search/fulltext_decisions.jsp?tab=1&q=fraud&rows=20<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.int%2Famc%2Fen%2Fdomains%2Fsearch%2Ffulltext_decisions.jsp%3Ftab%3D1%26q%3Dfraud%26rows%3D20&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=ObK9VTHBPGrufXw9rVbAeMSmPR4LDiAFv6UouawPAgw%3D&reserved=0>), searching for “phishing” yields 659 results (http://www.wipo.int/amc/en/domains/search/fulltext_decisions.jsp?tab=1&q=phishing&rows=20<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.int%2Famc%2Fen%2Fdomains%2Fsearch%2Ffulltext_decisions.jsp%3Ftab%3D1%26q%3Dphishing%26rows%3D20&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=EPAoSFpvzSW0q%2BAll7SLMLN62KSXT8rpyo9IUPlRtIA%3D&reserved=0>), etc. If those instances of claimed abuse could be solved with a simple request to the registrar, trademark owners might be saved the time and expense of invoking RPMs. It is therefore difficult to see what is “incorrect” about this “narrative” which is based on actual cases, not assumptions. Best regards, Brian From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Tattersfield Sent: Thursday, April 27, 2017 11:16 AM To: Rebecca Tushnet Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Greg, a similar line of thinking was used by WIPO in response to the initial Report on IGO Access to Curative Rights Protection Mechanisms. https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/msg00000.html<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fforum.icann.org%2Flists%2Fcomments-igo-ingo-crp-access-initial-20jan17%2Fmsg00000.html&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=JbNkJvGhH91k%2BoSORw6sLtAIFc%2Bb8pRJeBnZ2nBu67g%3D&reserved=0> It is troubling if this line of thinking is held within the wider ICANN community, especially so, if this line of thinking is held by those seeking to change the current RPMs. A much better understanding of the underlying issues is needed if we are to better protect the goods and services of all rights holders through better RPMs and at the same time build a more equitable framework for all. My reply https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/msg00038.html<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fforum.icann.org%2Flists%2Fcomments-igo-ingo-crp-access-initial-20jan17%2Fmsg00038.html&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=PhO4Rkkg5jPCnI0AZtXula%2FnZ3cx834B3tUc5xAXSqQ%3D&reserved=0> to WIPO’s comments demonstrates on a very simple level how your assumptions set an incorrect narrative which sends people off in the wrong direction when seeking to solve the problem. RPMs are not the best way of dealing with the kind of bad behaviour you cite. A far better approach is to use section 3.18 of the 2013 Registrar Accreditation Agreement (RAA) which requires registrars to take action against this sort of behaviour. The advantage of using the 3.18 approach is it doesn’t require any domain name infringement to take action which means all of the bad behaviour involving a domain cited by yourself and WIPO can easily be dealt with and without any costs beyond the time spent identifying offending sites and requesting their suspension. Paul On Thu, Apr 27, 2017 at 6:08 AM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote: What would lead cybersquatters to choose common terms that, while protectable for specific goods or services, are not generally known for those meanings, as opposed to APPLE or MICROSOFT or other strong marks? That seems like a poor cybersquatting strategy, especially done retail rather than wholesale. Circumstantial evidence is evidence too. Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759> On Thu, Apr 27, 2017 at 1:03 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:
We have no idea who abandoned these registration attempts, or even if it was done by humans, much less rightsholders.
If we want to make assumptions that support arguments, rather than engaging in evidence-based inquiry, I'll offer the assumption that all the abandoned carts were started by cybersquatters that intended to use the domains to engage in spam, malware, phishing, spearphishing, fraud, theft and botnet farming.
Greg
On Wed, Apr 26, 2017 at 11:27 PM Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote:
Forwarding to match.
If you think that lots of people have valid uses--including rights--in those terms, then when they stop trying to register those terms, that is overdeterrence. I think what I said was clear.
Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>
On Wed, Apr 26, 2017 at 11:03 PM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:
Your guess -- and overdeterrence is just a guess, with nothing to back it up -- is as good as mine. My guess is that it absolutely is not overdeterrence.
And my point was that your statement was a mischaracterization of the way the TMCH, Sunrise and Claims work, as well as a mischaracterization of how trademarks work. So I don't think "My point exactly" is what you meant to say (though I wish it were).
Greg
Greg Shatan C: 917-816-6428<tel:917-816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:646-845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>
On Wed, Apr 26, 2017 at 10:57 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote:
My point exactly. So what explains the over 90% abandonment rate, other than overdeterrence, especially with those most returned terms? Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>
On Wed, Apr 26, 2017 at 10:53 PM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:
"Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms."
That is clearly and absolutely not the basis of trademark rights, trademark registration or entry into the TMCH. Nor is it the way Sunrise or Claims work. Ridiculous.
Greg
Greg Shatan C: 917-816-6428<tel:917-816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:646-845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>
On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote:
Yes, because we don't have good survey evidence, one of the questions is what we can infer from the circumstantial evidence available to us, particularly the over 90% abandonment rate combined with the top queries being words like forex, cloud, and love. Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms. But I doubt it. Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>
On Wed, Apr 26, 2017 at 10:37 PM, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: > Thanks Rebecca. I've never heard of a trademark owner being > deterred > by > a claims notice since one of the explicit defenses in the UDRP is > when a > registrant has rights or legitimate interests in a corresponding > trademark. > So, I think that one may be a bit of a red herring. > > However, your comment about avoiding overreach is well received > and > we > should keep it in mind while at the same time not under-reaching > either - > when we do that, Grandma gets phished. > > Best, > Paul > > > > -----Original Message----- > From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>] > Sent: Wednesday, April 26, 2017 9:17 PM > To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> > Cc: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>>; > gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 > (Design Mark and Appropriate Balance) > > Avoiding overreaching is pro-trademark, as the public reaction to > SOPA/PIPA and patent trolls has shown with respect to copyright > and > patent. > There are also the interests of trademark owners who aren't > participating in > this process but may want to register domain names that are > perfectly > legitimate for their goods/services and jurisdictions. Some of > them > may > inevitably receive notices and be deterred, but there are steps we > can take > to limit that problem. > Rebecca Tushnet > Georgetown Law > 703 593 6759<tel:703%20593%206759> > > > On Wed, Apr 26, 2017 at 9:50 PM, icannlists > <icannlists@winston.com<mailto:icannlists@winston.com>> > wrote: >> Thanks Rebecca. I'm not characterizing you as anti-trademark; >> just >> your arguments and positions to date on this list. We would very >> much >> welcome anything favorable to trademarks that you wish to add to >> the >> discourse. >> >> Best, >> Paul >> >> >> >> -----Original Message----- >> From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>] >> Sent: Wednesday, April 26, 2017 8:00 PM >> To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> >> Cc: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>>; >> gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >> #16 >> (Design Mark and Appropriate Balance) >> >> Please don't characterize me as anti-trademark; I strongly >> believe >> in >> the consumer protection function of trademarks, and also in >> trademark >> protection in some circumstances for business purposes. See >> >> >> https://harvardlawreview.org/2017/01/registering-disagreement-registra<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fharvardlawreview.org%2F2017%2F01%2Fregistering-disagreement-registra&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=iu0yMvKbDyZebmCpHx42pp%2BuQGNY3aNnUVn7YgzLoA8%3D&reserved=0> >> tion-in-modern-american-trademark-law/ >> >> Asking again: for those of you who think it doesn't matter if >> claimants >> who don't own relevant rights get to use the TMCH, what then did >> ICANN mean >> by its stated intent not to expand trademark rights? >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759<tel:703%20593%206759> >> >> >> On Wed, Apr 26, 2017 at 8:46 PM, icannlists >> <icannlists@winston.com<mailto:icannlists@winston.com>> >> wrote: >>> Thanks Rebecca. There is not much new here. Whomever registers >>> a >>> second level domain name first (Sunrise - TM owner), Premium >>> (Rich >>> person) >>> or Landrush (TM owner who didn't want to pay the Sunrise >>> shakedown >>> price or >>> regular folks like all of us), someone gets the exclusive rights >>> to >>> that >>> second level. So, it is not just a question of if, but of when >>> and >>> who. I >>> think it is OK to just say "I don't want it to be a trademark >>> owner." >>> Others will disagree, but we don't have to keep this in a >>> mysterious context >>> or otherwise try to layer on some free speech issue that doesn't >>> exist. >>> Trademark owners want them first in order to protect their >>> brands >>> and >>> consumers. Others who are anti-trademarks don't want them to >>> have >>> them >>> first and would prefer someone else gets the exclusive right. >>> Fair >>> enough. >>> Now we see if we can get to consensus on changing the AGB. I >>> doubt >>> we will, >>> but at least the free speech veneer is pulled back. >>> >>> Best, >>> Paul >>> >>> >>> >>> -----Original Message----- >>> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> >>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Rebecca >>> Tushnet >>> Sent: Wednesday, April 26, 2017 3:11 PM >>> To: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>> >>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >>> #16 >>> (Design Mark and Appropriate Balance) >>> >>> By that logic the mandate not to expand on trademark rights >>> would >>> have been pointless because no activity in domain name space >>> could >>> ever have expanded trademark rights. Call it a right, call it a >>> privilege, call it an alien from Xenon if you like, but ICANN >>> did >>> not >>> want trademark owners to be able to assert control over domain >>> names >>> in excess of what underlying trademark law would have allowed. >>> Under >>> the "nothing in domain names can expand trademark rights because >>> they're never exclusive" logic, was the ICANN direction >>> completely >>> meaningless, or did it have some meaning? (Trademark rights, of >>> course, are never "exclusive" either, which is why we can use >>> any >>> examples we want in this discussion.) Rebecca Tushnet Georgetown >>> Law >>> 703 593 6759<tel:703%20593%206759> >>> >>> >>> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg >>> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: >>>> Jeremy - the TMCH does not allow exclusive rights in domains. >>>> Having >>>> a mark in the TMCH affords nothing close an exclusive right. >>>> That's a basic >>>> truth which shouldn’t be ignored. >>>> >>>> -----Original Message----- >>>> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> >>>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Jeremy >>>> Malcolm >>>> Sent: Wednesday, April 26, 2017 1:32 PM >>>> To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >>>> #16 >>>> (Design Mark and Appropriate Balance) >>>> >>>> On 26/4/17 9:00 am, Colin O'Brien wrote: >>>>> Nice try Rebecca but I'm not attempting to overturn the apple >>>>> cart. >>>>> If you have actual examples of problems then provide them >>>>> otherwise this is >>>>> an indulgent academic exercise. >>>> >>>> The fact that the TMCH is allowing exclusive rights in domains >>>> that >>>> go beyond the equivalent rights in domestic trademark law is >>>> itself a >>>> problem if we accept that the TMCH was meant to track trademark >>>> law. >>>> >>>> -- >>>> Jeremy Malcolm >>>> Senior Global Policy Analyst >>>> Electronic Frontier Foundation >>>> https://eff.org<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=KzOy4znSpz0a9ehfGktwBDMo2ewTzNlJvPB42cYQEiE%3D&reserved=0> >>>> jmalcolm@eff.org<mailto:jmalcolm@eff.org> >>>> >>>> Tel: 415.436.9333 ext 161<tel:415.436.9333%20ext%20161> >>>> >>>> :: Defending Your Rights in the Digital World :: >>>> >>>> Public key: >>>> https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=xkQT0KuikbckR%2B74w%2Fz94XQg5UvkhiHvIw%2F7a4v5%2BjI%3D&reserved=0> >>>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF >>>> 1122 >>>> >>>> >>>> >>>> >>>> ==================================================================== >>>> = >>>> = >>>> >>>> >>>> >>>> Reminder: Any email that requests your login credentials or >>>> that >>>> asks you to click on a link could be a phishing attack. 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Several comments on this thread. 1. The RA is not a curative rights mechanism. It obligates Registrars to investigate and respond. It does not require any curative action nor should it for that would make the rights holder the prosecutor as well as judge and jury.. Nor from a practical point of view do registrars make enough money to expect them to police the issue. 2. >@Greg wrote: If we want to make assumptions that support arguments, rather than engaging in evidence-based inquiry,..² With all respect, lets stop this line as it leads nowhere. We need facts and we should be focussing on identifying the sources of evidence so that we can have an intelligent conversation and reach reasoned decisions. We should try not to be advocates for our respective positions by, for example, attempting to block investigative efforts for fear of what they might uncover. PRK From: <gnso-rpm-wg-bounces@icann.org> on behalf of Paul Tattersfield <gpmgroup@gmail.com> Date: Thursday, April 27, 2017 at 4:23 PM To: "J. Scott Evans" <jsevans@adobe.com> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
J Scott wrote:
"A letter or call to a registrar is FAR more complex at effective than a UDRP action. Unfortunately, the former rarely results in the behavior being stopped and the later does"
This should be a serious matter for ICANN compliance.
Best regards,
Paul.
On Thu, Apr 27, 2017 at 3:21 PM, Paul Tattersfield <gpmgroup@gmail.com> wrote:
This should be a serious matter for ICANN compliance.
On Thu, Apr 27, 2017 at 12:30 PM, J. Scott Evans <jsevans@adobe.com> wrote:
A letter or call to a registrar is FAR more complex at effective than a UDRP action. Unfortunately, the former rarely results in the behavior being stopped and the later does.
Sent from my iPhone
On Apr 27, 2017, at 3:14 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Paul,
It is important to look at the actual language of section 3.18 of the RAA. This provides that registrars ³shall take reasonable and prompt steps to investigate and respond² to allegations of illegal activity.
Looking at this carefully crafted contract language, it is easy to see that taking reasonable steps is subject to interpretation, just as is the corresponding obligation to investigate and respond. This is in no way meant to suggest that registrars are not complying with their ICANN obligations, but whether those obligations necessarily address the claimed illegal behavior and achieve the result sought is another matter altogether. RPMs on the other hand are specifically designed with criteria to assist a substantive determination (which the registrar need only implement).
Indeed, the very fact that we have a working group dedicated to address ongoing claims of trademark abuse suggests that some claimed abuse is not being addressed through this RAA provision (which by the way is titled my emphasis: ³Registrar¹s Abuse Contact and Duty to Investigate Reports of Abuse²).
Quickly: searching WIPO¹s public case database for the term ³fraud² produces 1066 results (http://www.wipo.int/amc/en/domains/search/fulltext_decisions.jsp?tab=1&q=f raud&rows=20 <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.i nt%2Famc%2Fen%2Fdomains%2Fsearch%2Ffulltext_decisions.jsp%3Ftab%3D1%26q%3Df raud%26rows%3D20&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1 b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=ObK9VTHBPGru fXw9rVbAeMSmPR4LDiAFv6UouawPAgw%3D&reserved=0> ), searching for ³phishing² yields 659 results (http://www.wipo.int/amc/en/domains/search/fulltext_decisions.jsp?tab=1&q=p hishing&rows=20 <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.i nt%2Famc%2Fen%2Fdomains%2Fsearch%2Ffulltext_decisions.jsp%3Ftab%3D1%26q%3Dp hishing%26rows%3D20&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa 7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=EPAoSFpvz SW0q%2BAll7SLMLN62KSXT8rpyo9IUPlRtIA%3D&reserved=0> ), etc.
If those instances of claimed abuse could be solved with a simple request to the registrar, trademark owners might be saved the time and expense of invoking RPMs. It is therefore difficult to see what is ³incorrect² about this ³narrative² which is based on actual cases, not assumptions.
Best regards,
Brian
From:gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Tattersfield Sent: Thursday, April 27, 2017 11:16 AM To: Rebecca Tushnet Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Greg, a similar line of thinking was used by WIPO in response to the initial Report on IGO Access to Curative Rights Protection Mechanisms. https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/ msg00000.html <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fforum.ica nn.org%2Flists%2Fcomments-igo-ingo-crp-access-initial-20jan17%2Fmsg00000.ht ml&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794a ed2c178decee1%7C0%7C0%7C636288848838788516&sdata=JbNkJvGhH91k%2BoSORw6sLtAI Fc%2Bb8pRJeBnZ2nBu67g%3D&reserved=0>
It is troubling if this line of thinking is held within the wider ICANN community, especially so, if this line of thinking is held by those seeking to change the current RPMs.
A much better understanding of the underlying issues is needed if we are to better protect the goods and services of all rights holders through better RPMs and at the same time build a more equitable framework for all.
My reply https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/ msg00038.html <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fforum.ica nn.org%2Flists%2Fcomments-igo-ingo-crp-access-initial-20jan17%2Fmsg00038.ht ml&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794a ed2c178decee1%7C0%7C0%7C636288848838788516&sdata=PhO4Rkkg5jPCnI0AZtXula%2Fn Z3cx834B3tUc5xAXSqQ%3D&reserved=0> to WIPO¹s comments demonstrates on a very simple level how your assumptions set an incorrect narrative which sends people off in the wrong direction when seeking to solve the problem.
RPMs are not the best way of dealing with the kind of bad behaviour you cite. A far better approach is to use section 3.18 of the 2013 Registrar Accreditation Agreement (RAA) which requires registrars to take action against this sort of behaviour.
The advantage of using the 3.18 approach is it doesn¹t require any domain name infringement to take action which means all of the bad behaviour involving a domain cited by yourself and WIPO can easily be dealt with and without any costs beyond the time spent identifying offending sites and requesting their suspension.
Paul
On Thu, Apr 27, 2017 at 6:08 AM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote: What would lead cybersquatters to choose common terms that, while protectable for specific goods or services, are not generally known for those meanings, as opposed to APPLE or MICROSOFT or other strong marks? That seems like a poor cybersquatting strategy, especially done retail rather than wholesale.
Circumstantial evidence is evidence too. Rebecca Tushnet Georgetown Law 703 593 6759 <tel:703%20593%206759>
On Thu, Apr 27, 2017 at 1:03 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
We have no idea who abandoned these registration attempts, or even if it was done by humans, much less rightsholders.
If we want to make assumptions that support arguments, rather than engaging in evidence-based inquiry, I'll offer the assumption that all the abandoned carts were started by cybersquatters that intended to use the domains to engage in spam, malware, phishing, spearphishing, fraud, theft and botnet farming.
Greg
On Wed, Apr 26, 2017 at 11:27 PM Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote: >> >> Forwarding to match. >> >> If you think that lots of people have valid uses--including rights--in >> those terms, then when they stop trying to register those terms, that >> is overdeterrence. I think what I said was clear. >> >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759 <tel:703%20593%206759> >> >> >> On Wed, Apr 26, 2017 at 11:03 PM, Greg Shatan <gregshatanipc@gmail.com> >> wrote: > >> > Your guess -- and overdeterrence is just a guess, with nothing to back > >> > it up > >> > -- is as good as mine. My guess is that it absolutely is not > >> > overdeterrence. > >> > > >> > And my point was that your statement was a mischaracterization of the > >> > way > >> > the TMCH, Sunrise and Claims work, as well as a mischaracterization of > >> > how > >> > trademarks work. So I don't think "My point exactly" is what you > meant > >> > to > >> > say (though I wish it were). > >> > > >> > Greg > >> > > >> > Greg Shatan > >> > C: 917-816-6428 <tel:917-816-6428> > >> > S: gsshatan > >> > Phone-to-Skype: 646-845-9428 <tel:646-845-9428> > >> > gregshatanipc@gmail.com > >> > > >> > > >> > On Wed, Apr 26, 2017 at 10:57 PM, Rebecca Tushnet > >> > <Rebecca.Tushnet@law.georgetown.edu> wrote: >> >> >> >> >> >> My point exactly. So what explains the over 90% abandonment rate, >> >> >> other than overdeterrence, especially with those most returned >> terms? >> >> >> Rebecca Tushnet >> >> >> Georgetown Law >> >> >> 703 593 6759 <tel:703%20593%206759> >> >> >> >> >> >> >> >> >> On Wed, Apr 26, 2017 at 10:53 PM, Greg Shatan >> <gregshatanipc@gmail.com> >> >> >> wrote: >>> >> >> > "Maybe absolutely no one else besides the TMCH entrant/s had a >>> >> >> > legitimate >>> >> >> > business using those terms." >>> >> >> > >>> >> >> > That is clearly and absolutely not the basis of trademark rights, >>> >> >> > trademark >>> >> >> > registration or entry into the TMCH. Nor is it the way >>> Sunrise or >>> >> >> > Claims >>> >> >> > work. Ridiculous. >>> >> >> > >>> >> >> > Greg >>> >> >> > >>> >> >> > Greg Shatan >>> >> >> > C: 917-816-6428 <tel:917-816-6428> >>> >> >> > S: gsshatan >>> >> >> > Phone-to-Skype: 646-845-9428 <tel:646-845-9428> >>> >> >> > gregshatanipc@gmail.com >>> >> >> > >>> >> >> > >>> >> >> > On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet >>> >> >> > <Rebecca.Tushnet@law.georgetown.edu> wrote: >>>> >> >> >> >>>> >> >> >> Yes, because we don't have good survey evidence, one of the >>>> >> >> >> questions >>>> >> >> >> is what we can infer from the circumstantial evidence >>>> available to >>>> >> >> >> us, >>>> >> >> >> particularly the over 90% abandonment rate combined with the top >>>> >> >> >> queries being words like forex, cloud, and love. Maybe >>>> absolutely >>>> >> >> >> no >>>> >> >> >> one else besides the TMCH entrant/s had a legitimate >>>> business using >>>> >> >> >> those terms. But I doubt it. >>>> >> >> >> Rebecca Tushnet >>>> >> >> >> Georgetown Law >>>> >> >> >> 703 593 6759 <tel:703%20593%206759> >>>> >> >> >> >>>> >> >> >> >>>> >> >> >> On Wed, Apr 26, 2017 at 10:37 PM, icannlists >>>> >> >> >> <icannlists@winston.com> >>>> >> >> >> wrote: >>>>> >> >> >> > Thanks Rebecca. I've never heard of a trademark owner being >>>>> >> >> >> > deterred >>>>> >> >> >> > by >>>>> >> >> >> > a claims notice since one of the explicit defenses in the UDRP is >>>>> >> >> >> > when a >>>>> >> >> >> > registrant has rights or legitimate interests in a >>>>> corresponding >>>>> >> >> >> > trademark. >>>>> >> >> >> > So, I think that one may be a bit of a red herring. >>>>> >> >> >> > >>>>> >> >> >> > However, your comment about avoiding overreach is well received >>>>> >> >> >> > and >>>>> >> >> >> > we >>>>> >> >> >> > should keep it in mind while at the same time not >>>>> under-reaching >>>>> >> >> >> > either - >>>>> >> >> >> > when we do that, Grandma gets phished. >>>>> >> >> >> > >>>>> >> >> >> > Best, >>>>> >> >> >> > Paul >>>>> >> >> >> > >>>>> >> >> >> > >>>>> >> >> >> > >>>>> >> >> >> > -----Original Message----- >>>>> >> >> >> > From: Rebecca Tushnet >>>>> [mailto:Rebecca.Tushnet@law.georgetown.edu] >>>>> >> >> >> > Sent: Wednesday, April 26, 2017 9:17 PM >>>>> >> >> >> > To: icannlists <icannlists@winston.com> >>>>> >> >> >> > Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; >>>>> >> >> >> > gnso-rpm-wg@icann.org >>>>> >> >> >> > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 >>>>> >> >> >> > (Design Mark and Appropriate Balance) >>>>> >> >> >> > >>>>> >> >> >> > Avoiding overreaching is pro-trademark, as the public >>>>> reaction to >>>>> >> >> >> > SOPA/PIPA and patent trolls has shown with respect to copyright >>>>> >> >> >> > and >>>>> >> >> >> > patent. >>>>> >> >> >> > There are also the interests of trademark owners who aren't >>>>> >> >> >> > participating in >>>>> >> >> >> > this process but may want to register domain names that are >>>>> >> >> >> > perfectly >>>>> >> >> >> > legitimate for their goods/services and jurisdictions. Some of >>>>> >> >> >> > them >>>>> >> >> >> > may >>>>> >> >> >> > inevitably receive notices and be deterred, but there are steps we >>>>> >> >> >> > can take >>>>> >> >> >> > to limit that problem. >>>>> >> >> >> > Rebecca Tushnet >>>>> >> >> >> > Georgetown Law >>>>> >> >> >> > 703 593 6759 <tel:703%20593%206759> >>>>> >> >> >> > >>>>> >> >> >> > >>>>> >> >> >> > On Wed, Apr 26, 2017 at 9:50 PM, icannlists >>>>> >> >> >> > <icannlists@winston.com> >>>>> >> >> >> > wrote: >>>>>> >> >> >> >> Thanks Rebecca. I'm not characterizing you as >>>>>> anti-trademark; >>>>>> >> >> >> >> just >>>>>> >> >> >> >> your arguments and positions to date on this list. We would very >>>>>> >> >> >> >> much >>>>>> >> >> >> >> welcome anything favorable to trademarks that you wish to add to >>>>>> >> >> >> >> the >>>>>> >> >> >> >> discourse. >>>>>> >> >> >> >> >>>>>> >> >> >> >> Best, >>>>>> >> >> >> >> Paul >>>>>> >> >> >> >> >>>>>> >> >> >> >> >>>>>> >> >> >> >> >>>>>> >> >> >> >> -----Original Message----- >>>>>> >> >> >> >> From: Rebecca Tushnet >>>>>> [mailto:Rebecca.Tushnet@law.georgetown.edu] >>>>>> >> >> >> >> Sent: Wednesday, April 26, 2017 8:00 PM >>>>>> >> >> >> >> To: icannlists <icannlists@winston.com> >>>>>> >> >> >> >> Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; >>>>>> >> >> >> >> gnso-rpm-wg@icann.org >>>>>> >> >> >> >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >>>>>> >> >> >> >> #16 >>>>>> >> >> >> >> (Design Mark and Appropriate Balance) >>>>>> >> >> >> >> >>>>>> >> >> >> >> Please don't characterize me as anti-trademark; I strongly >>>>>> >> >> >> >> believe >>>>>> >> >> >> >> in >>>>>> >> >> >> >> the consumer protection function of trademarks, and also in >>>>>> >> >> >> >> trademark >>>>>> >> >> >> >> protection in some circumstances for business purposes. See >>>>>> >> >> >> >> >>>>>> >> >> >> >> >>>>>> >> >> >> >> >>>>>> https://harvardlawreview.org/2017/01/registering-disagreement-regis >>>>>> tra >>>>>> <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fh >>>>>> arvardlawreview.org%2F2017%2F01%2Fregistering-disagreement-registra >>>>>> &data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b344 >>>>>> 38794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=iu0yMvKbDyZe >>>>>> bmCpHx42pp%2BuQGNY3aNnUVn7YgzLoA8%3D&reserved=0> >>>>>> >> >> >> >> tion-in-modern-american-trademark-law/ >>>>>> >> >> >> >> >>>>>> >> >> >> >> Asking again: for those of you who think it doesn't matter if >>>>>> >> >> >> >> claimants >>>>>> >> >> >> >> who don't own relevant rights get to use the TMCH, what then did >>>>>> >> >> >> >> ICANN mean >>>>>> >> >> >> >> by its stated intent not to expand trademark rights? >>>>>> >> >> >> >> Rebecca Tushnet >>>>>> >> >> >> >> Georgetown Law >>>>>> >> >> >> >> 703 593 6759 <tel:703%20593%206759> >>>>>> >> >> >> >> >>>>>> >> >> >> >> >>>>>> >> >> >> >> On Wed, Apr 26, 2017 at 8:46 PM, icannlists >>>>>> >> >> >> >> <icannlists@winston.com> >>>>>> >> >> >> >> wrote: >>>>>>> >> >> >> >>> Thanks Rebecca. There is not much new here. >>>>>>> Whomever registers >>>>>>> >> >> >> >>> a >>>>>>> >> >> >> >>> second level domain name first (Sunrise - TM owner), Premium >>>>>>> >> >> >> >>> (Rich >>>>>>> >> >> >> >>> person) >>>>>>> >> >> >> >>> or Landrush (TM owner who didn't want to pay the Sunrise >>>>>>> >> >> >> >>> shakedown >>>>>>> >> >> >> >>> price or >>>>>>> >> >> >> >>> regular folks like all of us), someone gets the >>>>>>> exclusive rights >>>>>>> >> >> >> >>> to >>>>>>> >> >> >> >>> that >>>>>>> >> >> >> >>> second level. So, it is not just a question of if, but of when >>>>>>> >> >> >> >>> and >>>>>>> >> >> >> >>> who. I >>>>>>> >> >> >> >>> think it is OK to just say "I don't want it to be a trademark >>>>>>> >> >> >> >>> owner." >>>>>>> >> >> >> >>> Others will disagree, but we don't have to keep this in a >>>>>>> >> >> >> >>> mysterious context >>>>>>> >> >> >> >>> or otherwise try to layer on some free speech issue that doesn't >>>>>>> >> >> >> >>> exist. >>>>>>> >> >> >> >>> Trademark owners want them first in order to protect their >>>>>>> >> >> >> >>> brands >>>>>>> >> >> >> >>> and >>>>>>> >> >> >> >>> consumers. Others who are anti-trademarks don't want them to >>>>>>> >> >> >> >>> have >>>>>>> >> >> >> >>> them >>>>>>> >> >> >> >>> first and would prefer someone else gets the >>>>>>> exclusive right. >>>>>>> >> >> >> >>> Fair >>>>>>> >> >> >> >>> enough. >>>>>>> >> >> >> >>> Now we see if we can get to consensus on changing the AGB. I >>>>>>> >> >> >> >>> doubt >>>>>>> >> >> >> >>> we will, >>>>>>> >> >> >> >>> but at least the free speech veneer is pulled back. >>>>>>> >> >> >> >>> >>>>>>> >> >> >> >>> 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, April 26, 2017 3:11 PM >>>>>>> >> >> >> >>> To: Silver, Bradley <Bradley.Silver@timewarner.com> >>>>>>> >> >> >> >>> Cc: gnso-rpm-wg@icann.org >>>>>>> >> >> >> >>> Subject: Re: [gnso-rpm-wg] Recommendation for >>>>>>> Questions #7 and >>>>>>> >> >> >> >>> #16 >>>>>>> >> >> >> >>> (Design Mark and Appropriate Balance) >>>>>>> >> >> >> >>> >>>>>>> >> >> >> >>> By that logic the mandate not to expand on trademark rights >>>>>>> >> >> >> >>> would >>>>>>> >> >> >> >>> have been pointless because no activity in domain name space >>>>>>> >> >> >> >>> could >>>>>>> >> >> >> >>> ever have expanded trademark rights. Call it a >>>>>>> right, call it a >>>>>>> >> >> >> >>> privilege, call it an alien from Xenon if you like, but ICANN >>>>>>> >> >> >> >>> did >>>>>>> >> >> >> >>> not >>>>>>> >> >> >> >>> want trademark owners to be able to assert control over domain >>>>>>> >> >> >> >>> names >>>>>>> >> >> >> >>> in excess of what underlying trademark law would have allowed. >>>>>>> >> >> >> >>> Under >>>>>>> >> >> >> >>> the "nothing in domain names can expand trademark >>>>>>> rights because >>>>>>> >> >> >> >>> they're never exclusive" logic, was the ICANN direction >>>>>>> >> >> >> >>> completely >>>>>>> >> >> >> >>> meaningless, or did it have some meaning? (Trademark rights, of >>>>>>> >> >> >> >>> course, are never "exclusive" either, which is why we can use >>>>>>> >> >> >> >>> any >>>>>>> >> >> >> >>> examples we want in this discussion.) Rebecca Tushnet Georgetown >>>>>>> >> >> >> >>> Law >>>>>>> >> >> >> >>> 703 593 6759 <tel:703%20593%206759> >>>>>>> >> >> >> >>> >>>>>>> >> >> >> >>> >>>>>>> >> >> >> >>> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg >>>>>>> >> >> >> >>> <gnso-rpm-wg@icann.org> wrote: >>>>>>>> >> >> >> >>>> Jeremy - the TMCH does not allow exclusive rights in domains. >>>>>>>> >> >> >> >>>> Having >>>>>>>> >> >> >> >>>> a mark in the TMCH affords nothing close an >>>>>>>> exclusive right. >>>>>>>> >> >> >> >>>> That's a basic >>>>>>>> >> >> >> >>>> truth which shouldn¹t be ignored. >>>>>>>> >> >> >> >>>> >>>>>>>> >> >> >> >>>> -----Original Message----- >>>>>>>> >> >> >> >>>> From: gnso-rpm-wg-bounces@icann.org >>>>>>>> >> >> >> >>>> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy >>>>>>>> >> >> >> >>>> Malcolm >>>>>>>> >> >> >> >>>> Sent: Wednesday, April 26, 2017 1:32 PM >>>>>>>> >> >> >> >>>> To: gnso-rpm-wg@icann.org >>>>>>>> >> >> >> >>>> Subject: Re: [gnso-rpm-wg] Recommendation for >>>>>>>> Questions #7 and >>>>>>>> >> >> >> >>>> #16 >>>>>>>> >> >> >> >>>> (Design Mark and Appropriate Balance) >>>>>>>> >> >> >> >>>> >>>>>>>> >> >> >> >>>> On 26/4/17 9:00 am, Colin O'Brien wrote: >>>>>>>>> >> >> >> >>>>> Nice try Rebecca but I'm not attempting to >>>>>>>>> overturn the apple >>>>>>>>> >> >> >> >>>>> cart. >>>>>>>>> >> >> >> >>>>> If you have actual examples of problems then provide them >>>>>>>>> >> >> >> >>>>> otherwise this is >>>>>>>>> >> >> >> >>>>> an indulgent academic exercise. >>>>>>>> >> >> >> >>>> >>>>>>>> >> >> >> >>>> The fact that the TMCH is allowing exclusive rights in domains >>>>>>>> >> >> >> >>>> that >>>>>>>> >> >> >> >>>> go beyond the equivalent rights in domestic >>>>>>>> trademark law is >>>>>>>> >> >> >> >>>> itself a >>>>>>>> >> >> >> >>>> problem if we accept that the TMCH was meant to >>>>>>>> track trademark >>>>>>>> >> >> >> >>>> law. >>>>>>>> >> >> >> >>>> >>>>>>>> >> >> >> >>>> -- >>>>>>>> >> >> >> >>>> Jeremy Malcolm >>>>>>>> >> >> >> >>>> Senior Global Policy Analyst >>>>>>>> >> >> >> >>>> Electronic Frontier Foundation >>>>>>>> >> >> >> >>>> https://eff.org >>>>>>>> <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2 >>>>>>>> Feff.org&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7 >>>>>>>> b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata= >>>>>>>> KzOy4znSpz0a9ehfGktwBDMo2ewTzNlJvPB42cYQEiE%3D&reserved=0> >>>>>>>> >> >> >> >>>> jmalcolm@eff.org >>>>>>>> >> >> >> >>>> >>>>>>>> >> >> >> >>>> Tel: 415.436.9333 ext 161 >>>>>>>> <tel:415.436.9333%20ext%20161> >>>>>>>> >> >> >> >>>> >>>>>>>> >> >> >> >>>> :: Defending Your Rights in the Digital World :: >>>>>>>> >> >> >> >>>> >>>>>>>> >> >> >> >>>> Public key: >>>>>>>> >> >> >> >>>> >>>>>>>> https://www.eff.org/files/2016/11/27/key_jmalcolm.txt >>>>>>>> <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2 >>>>>>>> Fwww.eff.org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02% >>>>>>>> 7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794ae >>>>>>>> d2c178decee1%7C0%7C0%7C636288848838788516&sdata=xkQT0KuikbckR%2B7 >>>>>>>> 4w%2Fz94XQg5UvkhiHvIw%2F7a4v5%2BjI%3D&reserved=0> >>>>>>>> >> >> >> >>>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF >>>>>>>> >> >> >> >>>> 1122 >>>>>>>> >> >> >> >>>> >>>>>>>> >> >> >> >>>> >>>>>>>> >> >> >> >>>> >>>>>>>> >> >> >> >>>> >>>>>>>> >> >> >> >>>> >>>>>>>> ==================================================================== >>>>>>>> >> >> >> >>>> = >>>>>>>> >> >> >> >>>> = >>>>>>>> >> >> >> >>>> >>>>>>>> >> >> >> >>>> >>>>>>>> >> >> >> >>>> >>>>>>>> >> >> >> >>>> Reminder: Any email that requests your login >>>>>>>> credentials or >>>>>>>> >> >> >> >>>> that >>>>>>>> >> >> >> >>>> asks you to click on a link could be a phishing >>>>>>>> attack. 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Again, I am sure that Jamie Hedlund would be interested in your views. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Tattersfield Sent: Thursday, April 27, 2017 9:24 AM To: J. Scott Evans Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) J Scott wrote: "A letter or call to a registrar is FAR more complex at effective than a UDRP action. Unfortunately, the former rarely results in the behavior being stopped and the later does" This should be a serious matter for ICANN compliance. Best regards, Paul. On Thu, Apr 27, 2017 at 3:21 PM, Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> wrote: This should be a serious matter for ICANN compliance. On Thu, Apr 27, 2017 at 12:30 PM, J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> wrote: A letter or call to a registrar is FAR more complex at effective than a UDRP action. Unfortunately, the former rarely results in the behavior being stopped and the later does. Sent from my iPhone On Apr 27, 2017, at 3:14 AM, Beckham, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Paul, It is important to look at the actual language of section 3.18 of the RAA. This provides that registrars “shall take reasonable and prompt steps to investigate and respond” to allegations of illegal activity. Looking at this carefully crafted contract language, it is easy to see that taking reasonable steps is subject to interpretation, just as is the corresponding obligation to investigate and respond. This is in no way meant to suggest that registrars are not complying with their ICANN obligations, but whether those obligations necessarily address the claimed illegal behavior and achieve the result sought is another matter altogether. RPMs on the other hand are specifically designed with criteria to assist a substantive determination (which the registrar need only implement). Indeed, the very fact that we have a working group dedicated to address ongoing claims of trademark abuse suggests that some claimed abuse is not being addressed through this RAA provision (which by the way is titled – my emphasis: “Registrar’s Abuse Contact and Duty to Investigate Reports of Abuse”). Quickly: searching WIPO’s public case database for the term “fraud” produces 1066 results (https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_amc_en_doma... <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti...>), searching for “phishing” yields 659 results (https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_amc_en_doma... <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti...>), etc. If those instances of claimed abuse could be solved with a simple request to the registrar, trademark owners might be saved the time and expense of invoking RPMs. It is therefore difficult to see what is “incorrect” about this “narrative” which is based on actual cases, not assumptions. Best regards, Brian From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Tattersfield Sent: Thursday, April 27, 2017 11:16 AM To: Rebecca Tushnet Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Greg, a similar line of thinking was used by WIPO in response to the initial Report on IGO Access to Curative Rights Protection Mechanisms. https://urldefense.proofpoint.com/v2/url?u=https-3A__forum.icann.org_lists_c... <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti...> It is troubling if this line of thinking is held within the wider ICANN community, especially so, if this line of thinking is held by those seeking to change the current RPMs. A much better understanding of the underlying issues is needed if we are to better protect the goods and services of all rights holders through better RPMs and at the same time build a more equitable framework for all. My reply https://urldefense.proofpoint.com/v2/url?u=https-3A__forum.icann.org_lists_c... <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti...> to WIPO’s comments demonstrates on a very simple level how your assumptions set an incorrect narrative which sends people off in the wrong direction when seeking to solve the problem. RPMs are not the best way of dealing with the kind of bad behaviour you cite. A far better approach is to use section 3.18 of the 2013 Registrar Accreditation Agreement (RAA) which requires registrars to take action against this sort of behaviour. The advantage of using the 3.18 approach is it doesn’t require any domain name infringement to take action which means all of the bad behaviour involving a domain cited by yourself and WIPO can easily be dealt with and without any costs beyond the time spent identifying offending sites and requesting their suspension. Paul On Thu, Apr 27, 2017 at 6:08 AM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote: What would lead cybersquatters to choose common terms that, while protectable for specific goods or services, are not generally known for those meanings, as opposed to APPLE or MICROSOFT or other strong marks? That seems like a poor cybersquatting strategy, especially done retail rather than wholesale. Circumstantial evidence is evidence too. Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759> On Thu, Apr 27, 2017 at 1:03 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:
We have no idea who abandoned these registration attempts, or even if it was done by humans, much less rightsholders.
If we want to make assumptions that support arguments, rather than engaging in evidence-based inquiry, I'll offer the assumption that all the abandoned carts were started by cybersquatters that intended to use the domains to engage in spam, malware, phishing, spearphishing, fraud, theft and botnet farming.
Greg
On Wed, Apr 26, 2017 at 11:27 PM Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote:
Forwarding to match.
If you think that lots of people have valid uses--including rights--in those terms, then when they stop trying to register those terms, that is overdeterrence. I think what I said was clear.
Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>
On Wed, Apr 26, 2017 at 11:03 PM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:
Your guess -- and overdeterrence is just a guess, with nothing to back it up -- is as good as mine. My guess is that it absolutely is not overdeterrence.
And my point was that your statement was a mischaracterization of the way the TMCH, Sunrise and Claims work, as well as a mischaracterization of how trademarks work. So I don't think "My point exactly" is what you meant to say (though I wish it were).
Greg
Greg Shatan C: 917-816-6428<tel:917-816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:646-845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>
On Wed, Apr 26, 2017 at 10:57 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote:
My point exactly. So what explains the over 90% abandonment rate, other than overdeterrence, especially with those most returned terms? Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>
On Wed, Apr 26, 2017 at 10:53 PM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:
"Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms."
That is clearly and absolutely not the basis of trademark rights, trademark registration or entry into the TMCH. Nor is it the way Sunrise or Claims work. Ridiculous.
Greg
Greg Shatan C: 917-816-6428<tel:917-816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:646-845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>
On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote:
Yes, because we don't have good survey evidence, one of the questions is what we can infer from the circumstantial evidence available to us, particularly the over 90% abandonment rate combined with the top queries being words like forex, cloud, and love. Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms. But I doubt it. Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>
On Wed, Apr 26, 2017 at 10:37 PM, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: > Thanks Rebecca. I've never heard of a trademark owner being > deterred > by > a claims notice since one of the explicit defenses in the UDRP is > when a > registrant has rights or legitimate interests in a corresponding > trademark. > So, I think that one may be a bit of a red herring. > > However, your comment about avoiding overreach is well received > and > we > should keep it in mind while at the same time not under-reaching > either - > when we do that, Grandma gets phished. > > Best, > Paul > > > > -----Original Message----- > From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>] > Sent: Wednesday, April 26, 2017 9:17 PM > To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> > Cc: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>>; > gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 > (Design Mark and Appropriate Balance) > > Avoiding overreaching is pro-trademark, as the public reaction to > SOPA/PIPA and patent trolls has shown with respect to copyright > and > patent. > There are also the interests of trademark owners who aren't > participating in > this process but may want to register domain names that are > perfectly > legitimate for their goods/services and jurisdictions. Some of > them > may > inevitably receive notices and be deterred, but there are steps we > can take > to limit that problem. > Rebecca Tushnet > Georgetown Law > 703 593 6759<tel:703%20593%206759> > > > On Wed, Apr 26, 2017 at 9:50 PM, icannlists > <icannlists@winston.com<mailto:icannlists@winston.com>> > wrote: >> Thanks Rebecca. I'm not characterizing you as anti-trademark; >> just >> your arguments and positions to date on this list. We would very >> much >> welcome anything favorable to trademarks that you wish to add to >> the >> discourse. >> >> Best, >> Paul >> >> >> >> -----Original Message----- >> From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>] >> Sent: Wednesday, April 26, 2017 8:00 PM >> To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> >> Cc: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>>; >> gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >> #16 >> (Design Mark and Appropriate Balance) >> >> Please don't characterize me as anti-trademark; I strongly >> believe >> in >> the consumer protection function of trademarks, and also in >> trademark >> protection in some circumstances for business purposes. See >> >> >> https://urldefense.proofpoint.com/v2/url?u=https-3A__harvardlawreview.org_20... <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti...> >> tion-in-modern-american-trademark-law/ >> >> Asking again: for those of you who think it doesn't matter if >> claimants >> who don't own relevant rights get to use the TMCH, what then did >> ICANN mean >> by its stated intent not to expand trademark rights? >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759<tel:703%20593%206759> >> >> >> On Wed, Apr 26, 2017 at 8:46 PM, icannlists >> <icannlists@winston.com<mailto:icannlists@winston.com>> >> wrote: >>> Thanks Rebecca. There is not much new here. Whomever registers >>> a >>> second level domain name first (Sunrise - TM owner), Premium >>> (Rich >>> person) >>> or Landrush (TM owner who didn't want to pay the Sunrise >>> shakedown >>> price or >>> regular folks like all of us), someone gets the exclusive rights >>> to >>> that >>> second level. So, it is not just a question of if, but of when >>> and >>> who. I >>> think it is OK to just say "I don't want it to be a trademark >>> owner." >>> Others will disagree, but we don't have to keep this in a >>> mysterious context >>> or otherwise try to layer on some free speech issue that doesn't >>> exist. >>> Trademark owners want them first in order to protect their >>> brands >>> and >>> consumers. Others who are anti-trademarks don't want them to >>> have >>> them >>> first and would prefer someone else gets the exclusive right. >>> Fair >>> enough. >>> Now we see if we can get to consensus on changing the AGB. I >>> doubt >>> we will, >>> but at least the free speech veneer is pulled back. >>> >>> Best, >>> Paul >>> >>> >>> >>> -----Original Message----- >>> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> >>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Rebecca >>> Tushnet >>> Sent: Wednesday, April 26, 2017 3:11 PM >>> To: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>> >>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >>> #16 >>> (Design Mark and Appropriate Balance) >>> >>> By that logic the mandate not to expand on trademark rights >>> would >>> have been pointless because no activity in domain name space >>> could >>> ever have expanded trademark rights. Call it a right, call it a >>> privilege, call it an alien from Xenon if you like, but ICANN >>> did >>> not >>> want trademark owners to be able to assert control over domain >>> names >>> in excess of what underlying trademark law would have allowed. >>> Under >>> the "nothing in domain names can expand trademark rights because >>> they're never exclusive" logic, was the ICANN direction >>> completely >>> meaningless, or did it have some meaning? (Trademark rights, of >>> course, are never "exclusive" either, which is why we can use >>> any >>> examples we want in this discussion.) Rebecca Tushnet Georgetown >>> Law >>> 703 593 6759<tel:703%20593%206759> >>> >>> >>> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg >>> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: >>>> Jeremy - the TMCH does not allow exclusive rights in domains. >>>> Having >>>> a mark in the TMCH affords nothing close an exclusive right. >>>> That's a basic >>>> truth which shouldn’t be ignored. >>>> >>>> -----Original Message----- >>>> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> >>>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Jeremy >>>> Malcolm >>>> Sent: Wednesday, April 26, 2017 1:32 PM >>>> To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >>>> #16 >>>> (Design Mark and Appropriate Balance) >>>> >>>> On 26/4/17 9:00 am, Colin O'Brien wrote: >>>>> Nice try Rebecca but I'm not attempting to overturn the apple >>>>> cart. >>>>> If you have actual examples of problems then provide them >>>>> otherwise this is >>>>> an indulgent academic exercise. >>>> >>>> The fact that the TMCH is allowing exclusive rights in domains >>>> that >>>> go beyond the equivalent rights in domestic trademark law is >>>> itself a >>>> problem if we accept that the TMCH was meant to track trademark >>>> law. >>>> >>>> -- >>>> Jeremy Malcolm >>>> Senior Global Policy Analyst >>>> Electronic Frontier Foundation >>>> https://urldefense.proofpoint.com/v2/url?u=https-3A__eff.org&d=DwIGaQ&c=2s2m... <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti...> >>>> jmalcolm@eff.org<mailto:jmalcolm@eff.org> >>>> >>>> Tel: 415.436.9333 ext 161<tel:415.436.9333%20ext%20161> >>>> >>>> :: Defending Your Rights in the Digital World :: >>>> >>>> Public key: >>>> https://urldefense.proofpoint.com/v2/url?u=https-3A__www.eff.org_files_2016_... <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti...> >>>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF >>>> 1122 >>>> >>>> >>>> >>>> >>>> ==================================================================== >>>> = >>>> = >>>> >>>> >>>> >>>> Reminder: Any email that requests your login credentials or >>>> that >>>> asks you to click on a link could be a phishing attack. If you >>>> have >>>> any questions regarding the authenticity of this email or its >>>> sender, please contact the IT Service Desk at 212.484.6000<tel:(212)%20484-6000> or >>>> via >>>> email at ITServices@timewarner.com<mailto:ITServices@timewarner.com> >>>> >>>> >>>> >>>> >>>> >>>> ================================================================= >>>> This message is the property of Time Warner Inc. and is >>>> intended >>>> only for the use of the >>>> addressee(s) and may be legally privileged and/or confidential. >>>> If >>>> the reader of this message is not the intended recipient, or >>>> the >>>> employee or agent responsible to deliver it to the intended >>>> recipient, he or she is hereby notified that any dissemination, >>>> distribution, printing, forwarding, or any method of copying of >>>> this >>>> information, and/or the taking of any action in reliance on the >>>> information herein is strictly prohibited except by the >>>> intended >>>> recipient or those to whom he or she intentionally distributes >>>> this >>>> message. 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Paul: Brian’s ability to quickly compile UDRP cases addressing specific abuses raises a good point and a related question. Where do we find the equivalent database of ICANN compliance decisions on Registrar violations of section 3.18 of the RAA? I was told that Registrars are occasionally confronted with accreditation hearings for wrongdoing but do not know if these are available for review or even if public notice is kept of such hearings. My experience with DMCA takedowns and registrars listed in Whois for the DN of an offending content website (who also usually also have a DMCA registered agent) is that a demand letter to their “abuse@” email frequently results in a finger pointing contest to the host server OSP (wherever they may be found) and whack a mole begins. Do you or others on this list believe increased enforcement of Section 3.18 would be a more effective RPM for DMCA copyright protection. Best regards, Scott [vlp_logo][IntellectualPropertyLaw 100] [microbadge[1]] <http://www.avvo.com/attorneys/33308-fl-scott-austin-1261914.html> Scott R. Austin | Board Certified Intellectual Property Attorney | VLP Law Group LLP 101 NE Third Avenue, Suite 1500, Fort Lauderdale, FL 33301 Phone: (954) 204-3744 | Fax: (954) 320-0233 | SAustin@VLPLawGroup.com<mailto:SAustin@VLPLawGroup.com> From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Tattersfield Sent: Thursday, April 27, 2017 10:24 AM To: J. Scott Evans <jsevans@adobe.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) J Scott wrote: "A letter or call to a registrar is FAR more complex at effective than a UDRP action. Unfortunately, the former rarely results in the behavior being stopped and the later does" This should be a serious matter for ICANN compliance. Best regards, Paul. On Thu, Apr 27, 2017 at 3:21 PM, Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> wrote: This should be a serious matter for ICANN compliance. On Thu, Apr 27, 2017 at 12:30 PM, J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> wrote: A letter or call to a registrar is FAR more complex at effective than a UDRP action. Unfortunately, the former rarely results in the behavior being stopped and the later does. Sent from my iPhone On Apr 27, 2017, at 3:14 AM, Beckham, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Paul, It is important to look at the actual language of section 3.18 of the RAA. This provides that registrars “shall take reasonable and prompt steps to investigate and respond” to allegations of illegal activity. Looking at this carefully crafted contract language, it is easy to see that taking reasonable steps is subject to interpretation, just as is the corresponding obligation to investigate and respond. This is in no way meant to suggest that registrars are not complying with their ICANN obligations, but whether those obligations necessarily address the claimed illegal behavior and achieve the result sought is another matter altogether. RPMs on the other hand are specifically designed with criteria to assist a substantive determination (which the registrar need only implement). Indeed, the very fact that we have a working group dedicated to address ongoing claims of trademark abuse suggests that some claimed abuse is not being addressed through this RAA provision (which by the way is titled – my emphasis: “Registrar’s Abuse Contact and Duty to Investigate Reports of Abuse”). Quickly: searching WIPO’s public case database for the term “fraud” produces 1066 results (http://www.wipo.int/amc/en/domains/search/fulltext_decisions.jsp?tab=1&q=fraud&rows=20<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.int%2Famc%2Fen%2Fdomains%2Fsearch%2Ffulltext_decisions.jsp%3Ftab%3D1%26q%3Dfraud%26rows%3D20&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=ObK9VTHBPGrufXw9rVbAeMSmPR4LDiAFv6UouawPAgw%3D&reserved=0>), searching for “phishing” yields 659 results (http://www.wipo.int/amc/en/domains/search/fulltext_decisions.jsp?tab=1&q=phishing&rows=20<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.int%2Famc%2Fen%2Fdomains%2Fsearch%2Ffulltext_decisions.jsp%3Ftab%3D1%26q%3Dphishing%26rows%3D20&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=EPAoSFpvzSW0q%2BAll7SLMLN62KSXT8rpyo9IUPlRtIA%3D&reserved=0>), etc. If those instances of claimed abuse could be solved with a simple request to the registrar, trademark owners might be saved the time and expense of invoking RPMs. It is therefore difficult to see what is “incorrect” about this “narrative” which is based on actual cases, not assumptions. Best regards, Brian From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Tattersfield Sent: Thursday, April 27, 2017 11:16 AM To: Rebecca Tushnet Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Greg, a similar line of thinking was used by WIPO in response to the initial Report on IGO Access to Curative Rights Protection Mechanisms. https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/msg00000.html<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fforum.icann.org%2Flists%2Fcomments-igo-ingo-crp-access-initial-20jan17%2Fmsg00000.html&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=JbNkJvGhH91k%2BoSORw6sLtAIFc%2Bb8pRJeBnZ2nBu67g%3D&reserved=0> It is troubling if this line of thinking is held within the wider ICANN community, especially so, if this line of thinking is held by those seeking to change the current RPMs. A much better understanding of the underlying issues is needed if we are to better protect the goods and services of all rights holders through better RPMs and at the same time build a more equitable framework for all. My reply https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/msg00038.html<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fforum.icann.org%2Flists%2Fcomments-igo-ingo-crp-access-initial-20jan17%2Fmsg00038.html&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=PhO4Rkkg5jPCnI0AZtXula%2FnZ3cx834B3tUc5xAXSqQ%3D&reserved=0> to WIPO’s comments demonstrates on a very simple level how your assumptions set an incorrect narrative which sends people off in the wrong direction when seeking to solve the problem. RPMs are not the best way of dealing with the kind of bad behaviour you cite. A far better approach is to use section 3.18 of the 2013 Registrar Accreditation Agreement (RAA) which requires registrars to take action against this sort of behaviour. The advantage of using the 3.18 approach is it doesn’t require any domain name infringement to take action which means all of the bad behaviour involving a domain cited by yourself and WIPO can easily be dealt with and without any costs beyond the time spent identifying offending sites and requesting their suspension. Paul On Thu, Apr 27, 2017 at 6:08 AM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote: What would lead cybersquatters to choose common terms that, while protectable for specific goods or services, are not generally known for those meanings, as opposed to APPLE or MICROSOFT or other strong marks? That seems like a poor cybersquatting strategy, especially done retail rather than wholesale. Circumstantial evidence is evidence too. Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759> On Thu, Apr 27, 2017 at 1:03 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:
We have no idea who abandoned these registration attempts, or even if it was done by humans, much less rightsholders.
If we want to make assumptions that support arguments, rather than engaging in evidence-based inquiry, I'll offer the assumption that all the abandoned carts were started by cybersquatters that intended to use the domains to engage in spam, malware, phishing, spearphishing, fraud, theft and botnet farming.
Greg
On Wed, Apr 26, 2017 at 11:27 PM Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote:
Forwarding to match.
If you think that lots of people have valid uses--including rights--in those terms, then when they stop trying to register those terms, that is overdeterrence. I think what I said was clear.
Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>
On Wed, Apr 26, 2017 at 11:03 PM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:
Your guess -- and overdeterrence is just a guess, with nothing to back it up -- is as good as mine. My guess is that it absolutely is not overdeterrence.
And my point was that your statement was a mischaracterization of the way the TMCH, Sunrise and Claims work, as well as a mischaracterization of how trademarks work. So I don't think "My point exactly" is what you meant to say (though I wish it were).
Greg
Greg Shatan C: 917-816-6428<tel:917-816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:646-845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>
On Wed, Apr 26, 2017 at 10:57 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote:
My point exactly. So what explains the over 90% abandonment rate, other than overdeterrence, especially with those most returned terms? Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>
On Wed, Apr 26, 2017 at 10:53 PM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:
"Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms."
That is clearly and absolutely not the basis of trademark rights, trademark registration or entry into the TMCH. Nor is it the way Sunrise or Claims work. Ridiculous.
Greg
Greg Shatan C: 917-816-6428<tel:917-816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:646-845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>
On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote:
Yes, because we don't have good survey evidence, one of the questions is what we can infer from the circumstantial evidence available to us, particularly the over 90% abandonment rate combined with the top queries being words like forex, cloud, and love. Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms. But I doubt it. Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>
On Wed, Apr 26, 2017 at 10:37 PM, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: > Thanks Rebecca. I've never heard of a trademark owner being > deterred > by > a claims notice since one of the explicit defenses in the UDRP is > when a > registrant has rights or legitimate interests in a corresponding > trademark. > So, I think that one may be a bit of a red herring. > > However, your comment about avoiding overreach is well received > and > we > should keep it in mind while at the same time not under-reaching > either - > when we do that, Grandma gets phished. > > Best, > Paul > > > > -----Original Message----- > From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>] > Sent: Wednesday, April 26, 2017 9:17 PM > To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> > Cc: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>>; > gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 > (Design Mark and Appropriate Balance) > > Avoiding overreaching is pro-trademark, as the public reaction to > SOPA/PIPA and patent trolls has shown with respect to copyright > and > patent. > There are also the interests of trademark owners who aren't > participating in > this process but may want to register domain names that are > perfectly > legitimate for their goods/services and jurisdictions. Some of > them > may > inevitably receive notices and be deterred, but there are steps we > can take > to limit that problem. > Rebecca Tushnet > Georgetown Law > 703 593 6759<tel:703%20593%206759> > > > On Wed, Apr 26, 2017 at 9:50 PM, icannlists > <icannlists@winston.com<mailto:icannlists@winston.com>> > wrote: >> Thanks Rebecca. I'm not characterizing you as anti-trademark; >> just >> your arguments and positions to date on this list. We would very >> much >> welcome anything favorable to trademarks that you wish to add to >> the >> discourse. >> >> Best, >> Paul >> >> >> >> -----Original Message----- >> From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>] >> Sent: Wednesday, April 26, 2017 8:00 PM >> To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> >> Cc: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>>; >> gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >> #16 >> (Design Mark and Appropriate Balance) >> >> Please don't characterize me as anti-trademark; I strongly >> believe >> in >> the consumer protection function of trademarks, and also in >> trademark >> protection in some circumstances for business purposes. See >> >> >> https://harvardlawreview.org/2017/01/registering-disagreement-registra<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fharvardlawreview.org%2F2017%2F01%2Fregistering-disagreement-registra&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=iu0yMvKbDyZebmCpHx42pp%2BuQGNY3aNnUVn7YgzLoA8%3D&reserved=0> >> tion-in-modern-american-trademark-law/ >> >> Asking again: for those of you who think it doesn't matter if >> claimants >> who don't own relevant rights get to use the TMCH, what then did >> ICANN mean >> by its stated intent not to expand trademark rights? >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759<tel:703%20593%206759> >> >> >> On Wed, Apr 26, 2017 at 8:46 PM, icannlists >> <icannlists@winston.com<mailto:icannlists@winston.com>> >> wrote: >>> Thanks Rebecca. There is not much new here. Whomever registers >>> a >>> second level domain name first (Sunrise - TM owner), Premium >>> (Rich >>> person) >>> or Landrush (TM owner who didn't want to pay the Sunrise >>> shakedown >>> price or >>> regular folks like all of us), someone gets the exclusive rights >>> to >>> that >>> second level. So, it is not just a question of if, but of when >>> and >>> who. I >>> think it is OK to just say "I don't want it to be a trademark >>> owner." >>> Others will disagree, but we don't have to keep this in a >>> mysterious context >>> or otherwise try to layer on some free speech issue that doesn't >>> exist. >>> Trademark owners want them first in order to protect their >>> brands >>> and >>> consumers. Others who are anti-trademarks don't want them to >>> have >>> them >>> first and would prefer someone else gets the exclusive right. >>> Fair >>> enough. >>> Now we see if we can get to consensus on changing the AGB. I >>> doubt >>> we will, >>> but at least the free speech veneer is pulled back. >>> >>> Best, >>> Paul >>> >>> >>> >>> -----Original Message----- >>> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> >>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Rebecca >>> Tushnet >>> Sent: Wednesday, April 26, 2017 3:11 PM >>> To: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>> >>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >>> #16 >>> (Design Mark and Appropriate Balance) >>> >>> By that logic the mandate not to expand on trademark rights >>> would >>> have been pointless because no activity in domain name space >>> could >>> ever have expanded trademark rights. Call it a right, call it a >>> privilege, call it an alien from Xenon if you like, but ICANN >>> did >>> not >>> want trademark owners to be able to assert control over domain >>> names >>> in excess of what underlying trademark law would have allowed. >>> Under >>> the "nothing in domain names can expand trademark rights because >>> they're never exclusive" logic, was the ICANN direction >>> completely >>> meaningless, or did it have some meaning? (Trademark rights, of >>> course, are never "exclusive" either, which is why we can use >>> any >>> examples we want in this discussion.) Rebecca Tushnet Georgetown >>> Law >>> 703 593 6759<tel:703%20593%206759> >>> >>> >>> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg >>> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: >>>> Jeremy - the TMCH does not allow exclusive rights in domains. >>>> Having >>>> a mark in the TMCH affords nothing close an exclusive right. >>>> That's a basic >>>> truth which shouldn’t be ignored. >>>> >>>> -----Original Message----- >>>> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> >>>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Jeremy >>>> Malcolm >>>> Sent: Wednesday, April 26, 2017 1:32 PM >>>> To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >>>> #16 >>>> (Design Mark and Appropriate Balance) >>>> >>>> On 26/4/17 9:00 am, Colin O'Brien wrote: >>>>> Nice try Rebecca but I'm not attempting to overturn the apple >>>>> cart. >>>>> If you have actual examples of problems then provide them >>>>> otherwise this is >>>>> an indulgent academic exercise. >>>> >>>> The fact that the TMCH is allowing exclusive rights in domains >>>> that >>>> go beyond the equivalent rights in domestic trademark law is >>>> itself a >>>> problem if we accept that the TMCH was meant to track trademark >>>> law. >>>> >>>> -- >>>> Jeremy Malcolm >>>> Senior Global Policy Analyst >>>> Electronic Frontier Foundation >>>> https://eff.org<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=KzOy4znSpz0a9ehfGktwBDMo2ewTzNlJvPB42cYQEiE%3D&reserved=0> >>>> jmalcolm@eff.org<mailto:jmalcolm@eff.org> >>>> >>>> Tel: 415.436.9333 ext 161<tel:415.436.9333%20ext%20161> >>>> >>>> :: Defending Your Rights in the Digital World :: >>>> >>>> Public key: >>>> https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C90df5d6dcb74419126d508d48d56373b%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288848838788516&sdata=xkQT0KuikbckR%2B74w%2Fz94XQg5UvkhiHvIw%2F7a4v5%2BjI%3D&reserved=0> >>>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF >>>> 1122 >>>> >>>> >>>> >>>> >>>> ==================================================================== >>>> = >>>> = >>>> >>>> >>>> >>>> Reminder: Any email that requests your login credentials or >>>> that >>>> asks you to click on a link could be a phishing attack. 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Scott, ICANN's Compliance Notices can be found here https://www.icann.org/compliance/notices On Thu, Apr 27, 2017 at 7:26 PM, Scott Austin <SAustin@vlplawgroup.com> wrote:
Paul:
Brian’s ability to quickly compile UDRP cases addressing specific abuses raises a good point and a related question. Where do we find the equivalent database of ICANN compliance decisions on Registrar violations of section 3.18 of the RAA?
I was told that Registrars are occasionally confronted with accreditation hearings for wrongdoing but do not know if these are available for review or even if public notice is kept of such hearings.
My experience with DMCA takedowns and registrars listed in Whois for the DN of an offending content website (who also usually also have a DMCA registered agent) is that a demand letter to their “abuse@” email frequently results in a finger pointing contest to the host server OSP (wherever they may be found) and whack a mole begins. Do you or others on this list believe increased enforcement of Section 3.18 would be a more effective RPM for DMCA copyright protection.
Best regards,
Scott
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*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org] *On Behalf Of *Paul Tattersfield *Sent:* Thursday, April 27, 2017 10:24 AM *To:* J. Scott Evans <jsevans@adobe.com>
*Cc:* gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
J Scott wrote:
"A letter or call to a registrar is FAR more complex at effective than a UDRP action. Unfortunately, the former rarely results in the behavior being stopped and the later does"
This should be a serious matter for ICANN compliance.
Best regards,
Paul.
On Thu, Apr 27, 2017 at 3:21 PM, Paul Tattersfield <gpmgroup@gmail.com> wrote:
This should be a serious matter for ICANN compliance.
On Thu, Apr 27, 2017 at 12:30 PM, J. Scott Evans <jsevans@adobe.com> wrote:
A letter or call to a registrar is FAR more complex at effective than a UDRP action. Unfortunately, the former rarely results in the behavior being stopped and the later does.
Sent from my iPhone
On Apr 27, 2017, at 3:14 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Paul,
It is important to look at the actual language of section 3.18 of the RAA. This provides that registrars “shall take reasonable and prompt steps to investigate and respond” to allegations of illegal activity.
Looking at this carefully crafted contract language, it is easy to see that taking reasonable steps is subject to interpretation, just as is the corresponding obligation to investigate and respond. This is in no way meant to suggest that registrars are not complying with their ICANN obligations, but whether those obligations necessarily address the claimed illegal behavior and achieve the result sought is another matter altogether. RPMs on the other hand are specifically designed with criteria to assist a substantive determination (which the registrar need only implement).
Indeed, the very fact that we have a working group dedicated to address ongoing claims of trademark abuse suggests that some claimed abuse is not being addressed through this RAA provision (which by the way is titled – my emphasis: “Registrar’s Abuse Contact and *Duty to Investigate* Reports of Abuse”).
Quickly: searching WIPO’s public case database for the term “fraud” produces 1066 results (http://www.wipo.int/amc/en/domains/search/fulltext_ decisions.jsp?tab=1&q=fraud&rows=20 <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.int...>), searching for “phishing” yields 659 results (http://www.wipo.int/amc/en/ domains/search/fulltext_decisions.jsp?tab=1&q=phishing&rows=20 <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.int...>), etc.
If those instances of claimed abuse could be solved with a simple request to the registrar, trademark owners might be saved the time and expense of invoking RPMs. It is therefore difficult to see what is “incorrect” about this “narrative” which is based on actual cases, not assumptions.
Best regards,
Brian
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *Paul Tattersfield *Sent:* Thursday, April 27, 2017 11:16 AM *To:* Rebecca Tushnet *Cc:* gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Greg, a similar line of thinking was used by WIPO in response to the initial Report on IGO Access to Curative Rights Protection Mechanisms. https://forum.icann.org/lists/comments-igo-ingo-crp-access- initial-20jan17/msg00000.html <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fforum.icann...>
It is troubling if this line of thinking is held within the wider ICANN community, especially so, if this line of thinking is held by those seeking to change the current RPMs.
A much better understanding of the underlying issues is needed if we are to better protect the goods and services of all rights holders through better RPMs and at the same time build a more equitable framework for all.
My reply https://forum.icann.org/lists/comments-igo-ingo-crp-access- initial-20jan17/msg00038.html <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fforum.icann...> to WIPO’s comments demonstrates on a very simple level how your assumptions set an incorrect narrative which sends people off in the wrong direction when seeking to solve the problem.
RPMs are not the best way of dealing with the kind of bad behaviour you cite. A far better approach is to use section 3.18 of the 2013 Registrar Accreditation Agreement (RAA) which requires registrars to take action against this sort of behaviour.
The advantage of using the 3.18 approach is it doesn’t require any domain name infringement to take action which means all of the bad behaviour involving a domain cited by yourself and WIPO can easily be dealt with and without any costs beyond the time spent identifying offending sites and requesting their suspension.
Paul
On Thu, Apr 27, 2017 at 6:08 AM, Rebecca Tushnet <Rebecca.Tushnet@law. georgetown.edu> wrote:
What would lead cybersquatters to choose common terms that, while protectable for specific goods or services, are not generally known for those meanings, as opposed to APPLE or MICROSOFT or other strong marks? That seems like a poor cybersquatting strategy, especially done retail rather than wholesale.
Circumstantial evidence is evidence too. Rebecca Tushnet Georgetown Law 703 593 6759
On Thu, Apr 27, 2017 at 1:03 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
We have no idea who abandoned these registration attempts, or even if it was done by humans, much less rightsholders.
If we want to make assumptions that support arguments, rather than engaging in evidence-based inquiry, I'll offer the assumption that all the abandoned carts were started by cybersquatters that intended to use the domains to engage in spam, malware, phishing, spearphishing, fraud, theft and botnet farming.
Greg
On Wed, Apr 26, 2017 at 11:27 PM Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Forwarding to match.
If you think that lots of people have valid uses--including rights--in those terms, then when they stop trying to register those terms, that is overdeterrence. I think what I said was clear.
Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 11:03 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:
Your guess -- and overdeterrence is just a guess, with nothing to back it up -- is as good as mine. My guess is that it absolutely is not overdeterrence.
And my point was that your statement was a mischaracterization of the way the TMCH, Sunrise and Claims work, as well as a mischaracterization of how trademarks work. So I don't think "My point exactly" is what you
meant
to say (though I wish it were).
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Wed, Apr 26, 2017 at 10:57 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
My point exactly. So what explains the over 90% abandonment rate, other than overdeterrence, especially with those most returned terms? Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 10:53 PM, Greg Shatan <
gregshatanipc@gmail.com>
wrote:
"Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms."
That is clearly and absolutely not the basis of trademark rights, trademark registration or entry into the TMCH. Nor is it the way Sunrise or Claims work. Ridiculous.
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote: > > Yes, because we don't have good survey evidence, one of the > questions > is what we can infer from the circumstantial evidence available to > us, > particularly the over 90% abandonment rate combined with the top > queries being words like forex, cloud, and love. Maybe absolutely > no > one else besides the TMCH entrant/s had a legitimate business using > those terms. But I doubt it. > Rebecca Tushnet > Georgetown Law > 703 593 6759 > > > On Wed, Apr 26, 2017 at 10:37 PM, icannlists > <icannlists@winston.com> > wrote: > > Thanks Rebecca. I've never heard of a trademark owner being > > deterred > > by > > a claims notice since one of the explicit defenses in the UDRP is > > when a > > registrant has rights or legitimate interests in a corresponding > > trademark. > > So, I think that one may be a bit of a red herring. > > > > However, your comment about avoiding overreach is well received > > and > > we > > should keep it in mind while at the same time not under-reaching > > either - > > when we do that, Grandma gets phished. > > > > Best, > > Paul > > > > > > > > -----Original Message----- > > From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law. georgetown.edu] > > Sent: Wednesday, April 26, 2017 9:17 PM > > To: icannlists <icannlists@winston.com> > > Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; > > gnso-rpm-wg@icann.org > > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 > > (Design Mark and Appropriate Balance) > > > > Avoiding overreaching is pro-trademark, as the public reaction to > > SOPA/PIPA and patent trolls has shown with respect to copyright > > and > > patent. > > There are also the interests of trademark owners who aren't > > participating in > > this process but may want to register domain names that are > > perfectly > > legitimate for their goods/services and jurisdictions. Some of > > them > > may > > inevitably receive notices and be deterred, but there are steps we > > can take > > to limit that problem. > > Rebecca Tushnet > > Georgetown Law > > 703 593 6759 > > > > > > On Wed, Apr 26, 2017 at 9:50 PM, icannlists > > <icannlists@winston.com> > > wrote: > >> Thanks Rebecca. I'm not characterizing you as anti-trademark; > >> just > >> your arguments and positions to date on this list. We would very > >> much > >> welcome anything favorable to trademarks that you wish to add to > >> the > >> discourse. > >> > >> Best, > >> Paul > >> > >> > >> > >> -----Original Message----- > >> From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law. georgetown.edu] > >> Sent: Wednesday, April 26, 2017 8:00 PM > >> To: icannlists <icannlists@winston.com> > >> Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; > >> gnso-rpm-wg@icann.org > >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and > >> #16 > >> (Design Mark and Appropriate Balance) > >> > >> Please don't characterize me as anti-trademark; I strongly > >> believe > >> in > >> the consumer protection function of trademarks, and also in > >> trademark > >> protection in some circumstances for business purposes. See > >> > >> > >> https://harvardlawreview.org/2017/01/registering- disagreement-registra <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fharvardlawr...> > >> tion-in-modern-american-trademark-law/ > >> > >> Asking again: for those of you who think it doesn't matter if > >> claimants > >> who don't own relevant rights get to use the TMCH, what then did > >> ICANN mean > >> by its stated intent not to expand trademark rights? > >> Rebecca Tushnet > >> Georgetown Law > >> 703 593 6759 > >> > >> > >> On Wed, Apr 26, 2017 at 8:46 PM, icannlists > >> <icannlists@winston.com> > >> wrote: > >>> Thanks Rebecca. There is not much new here. Whomever registers > >>> a > >>> second level domain name first (Sunrise - TM owner), Premium > >>> (Rich > >>> person) > >>> or Landrush (TM owner who didn't want to pay the Sunrise > >>> shakedown > >>> price or > >>> regular folks like all of us), someone gets the exclusive rights > >>> to > >>> that > >>> second level. So, it is not just a question of if, but of when > >>> and > >>> who. I > >>> think it is OK to just say "I don't want it to be a trademark > >>> owner." > >>> Others will disagree, but we don't have to keep this in a > >>> mysterious context > >>> or otherwise try to layer on some free speech issue that doesn't > >>> exist. > >>> Trademark owners want them first in order to protect their > >>> brands > >>> and > >>> consumers. Others who are anti-trademarks don't want them to > >>> have > >>> them > >>> first and would prefer someone else gets the exclusive right. > >>> Fair > >>> enough. > >>> Now we see if we can get to consensus on changing the AGB. I > >>> doubt > >>> we will, > >>> but at least the free speech veneer is pulled back. > >>> > >>> 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, April 26, 2017 3:11 PM > >>> To: Silver, Bradley <Bradley.Silver@timewarner.com> > >>> Cc: gnso-rpm-wg@icann.org > >>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and > >>> #16 > >>> (Design Mark and Appropriate Balance) > >>> > >>> By that logic the mandate not to expand on trademark rights > >>> would > >>> have been pointless because no activity in domain name space > >>> could > >>> ever have expanded trademark rights. Call it a right, call it a > >>> privilege, call it an alien from Xenon if you like, but ICANN > >>> did > >>> not > >>> want trademark owners to be able to assert control over domain > >>> names > >>> in excess of what underlying trademark law would have allowed. > >>> Under > >>> the "nothing in domain names can expand trademark rights because > >>> they're never exclusive" logic, was the ICANN direction > >>> completely > >>> meaningless, or did it have some meaning? (Trademark rights, of > >>> course, are never "exclusive" either, which is why we can use > >>> any > >>> examples we want in this discussion.) Rebecca Tushnet Georgetown > >>> Law > >>> 703 593 6759 > >>> > >>> > >>> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg > >>> <gnso-rpm-wg@icann.org> wrote: > >>>> Jeremy - the TMCH does not allow exclusive rights in domains. > >>>> Having > >>>> a mark in the TMCH affords nothing close an exclusive right. > >>>> That's a basic > >>>> truth which shouldn’t be ignored. > >>>> > >>>> -----Original Message----- > >>>> From: gnso-rpm-wg-bounces@icann.org > >>>> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy > >>>> Malcolm > >>>> Sent: Wednesday, April 26, 2017 1:32 PM > >>>> To: gnso-rpm-wg@icann.org > >>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and > >>>> #16 > >>>> (Design Mark and Appropriate Balance) > >>>> > >>>> On 26/4/17 9:00 am, Colin O'Brien wrote: > >>>>> Nice try Rebecca but I'm not attempting to overturn the apple > >>>>> cart. > >>>>> If you have actual examples of problems then provide them > >>>>> otherwise this is > >>>>> an indulgent academic exercise. > >>>> > >>>> The fact that the TMCH is allowing exclusive rights in domains > >>>> that > >>>> go beyond the equivalent rights in domestic trademark law is > >>>> itself a > >>>> problem if we accept that the TMCH was meant to track trademark > >>>> law. > >>>> > >>>> -- > >>>> Jeremy Malcolm > >>>> Senior Global Policy Analyst > >>>> Electronic Frontier Foundation > >>>> https://eff.org <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&dat...> > >>>> jmalcolm@eff.org > >>>> > >>>> Tel: 415.436.9333 ext 161 > >>>> > >>>> :: Defending Your Rights in the Digital World :: > >>>> > >>>> Public key: > >>>> https://www.eff.org/files/2016/11/27/key_jmalcolm.txt <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org...> > >>>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF > >>>> 1122 > >>>> > >>>> > >>>> > >>>> > >>>> ============================================================ ======== > >>>> = > >>>> = > >>>> > >>>> > >>>> > >>>> Reminder: Any email that requests your login credentials or > >>>> that > >>>> asks you to click on a link could be a phishing attack. 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Paul, I think many on the list might agree. You should let Jaime Hedlund, SVP, Contractual Compliance & Consumer Safeguards know your views. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Tattersfield Sent: Thursday, April 27, 2017 9:21 AM To: J. Scott Evans Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) This should be a serious matter for ICANN compliance. On Thu, Apr 27, 2017 at 12:30 PM, J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> wrote: A letter or call to a registrar is FAR more complex at effective than a UDRP action. Unfortunately, the former rarely results in the behavior being stopped and the later does. Sent from my iPhone On Apr 27, 2017, at 3:14 AM, Beckham, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Paul, It is important to look at the actual language of section 3.18 of the RAA. This provides that registrars “shall take reasonable and prompt steps to investigate and respond” to allegations of illegal activity. Looking at this carefully crafted contract language, it is easy to see that taking reasonable steps is subject to interpretation, just as is the corresponding obligation to investigate and respond. This is in no way meant to suggest that registrars are not complying with their ICANN obligations, but whether those obligations necessarily address the claimed illegal behavior and achieve the result sought is another matter altogether. RPMs on the other hand are specifically designed with criteria to assist a substantive determination (which the registrar need only implement). Indeed, the very fact that we have a working group dedicated to address ongoing claims of trademark abuse suggests that some claimed abuse is not being addressed through this RAA provision (which by the way is titled – my emphasis: “Registrar’s Abuse Contact and Duty to Investigate Reports of Abuse”). Quickly: searching WIPO’s public case database for the term “fraud” produces 1066 results (https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_amc_en_doma... <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti...>), searching for “phishing” yields 659 results (https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_amc_en_doma... <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti...>), etc. If those instances of claimed abuse could be solved with a simple request to the registrar, trademark owners might be saved the time and expense of invoking RPMs. It is therefore difficult to see what is “incorrect” about this “narrative” which is based on actual cases, not assumptions. Best regards, Brian From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Tattersfield Sent: Thursday, April 27, 2017 11:16 AM To: Rebecca Tushnet Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Greg, a similar line of thinking was used by WIPO in response to the initial Report on IGO Access to Curative Rights Protection Mechanisms. https://urldefense.proofpoint.com/v2/url?u=https-3A__forum.icann.org_lists_c... <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti...> It is troubling if this line of thinking is held within the wider ICANN community, especially so, if this line of thinking is held by those seeking to change the current RPMs. A much better understanding of the underlying issues is needed if we are to better protect the goods and services of all rights holders through better RPMs and at the same time build a more equitable framework for all. My reply https://urldefense.proofpoint.com/v2/url?u=https-3A__forum.icann.org_lists_c... <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti...> to WIPO’s comments demonstrates on a very simple level how your assumptions set an incorrect narrative which sends people off in the wrong direction when seeking to solve the problem. RPMs are not the best way of dealing with the kind of bad behaviour you cite. A far better approach is to use section 3.18 of the 2013 Registrar Accreditation Agreement (RAA) which requires registrars to take action against this sort of behaviour. The advantage of using the 3.18 approach is it doesn’t require any domain name infringement to take action which means all of the bad behaviour involving a domain cited by yourself and WIPO can easily be dealt with and without any costs beyond the time spent identifying offending sites and requesting their suspension. Paul On Thu, Apr 27, 2017 at 6:08 AM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote: What would lead cybersquatters to choose common terms that, while protectable for specific goods or services, are not generally known for those meanings, as opposed to APPLE or MICROSOFT or other strong marks? That seems like a poor cybersquatting strategy, especially done retail rather than wholesale. Circumstantial evidence is evidence too. Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759> On Thu, Apr 27, 2017 at 1:03 AM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:
We have no idea who abandoned these registration attempts, or even if it was done by humans, much less rightsholders.
If we want to make assumptions that support arguments, rather than engaging in evidence-based inquiry, I'll offer the assumption that all the abandoned carts were started by cybersquatters that intended to use the domains to engage in spam, malware, phishing, spearphishing, fraud, theft and botnet farming.
Greg
On Wed, Apr 26, 2017 at 11:27 PM Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote:
Forwarding to match.
If you think that lots of people have valid uses--including rights--in those terms, then when they stop trying to register those terms, that is overdeterrence. I think what I said was clear.
Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>
On Wed, Apr 26, 2017 at 11:03 PM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:
Your guess -- and overdeterrence is just a guess, with nothing to back it up -- is as good as mine. My guess is that it absolutely is not overdeterrence.
And my point was that your statement was a mischaracterization of the way the TMCH, Sunrise and Claims work, as well as a mischaracterization of how trademarks work. So I don't think "My point exactly" is what you meant to say (though I wish it were).
Greg
Greg Shatan C: 917-816-6428<tel:917-816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:646-845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>
On Wed, Apr 26, 2017 at 10:57 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote:
My point exactly. So what explains the over 90% abandonment rate, other than overdeterrence, especially with those most returned terms? Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>
On Wed, Apr 26, 2017 at 10:53 PM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote:
"Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms."
That is clearly and absolutely not the basis of trademark rights, trademark registration or entry into the TMCH. Nor is it the way Sunrise or Claims work. Ridiculous.
Greg
Greg Shatan C: 917-816-6428<tel:917-816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:646-845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>
On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>> wrote:
Yes, because we don't have good survey evidence, one of the questions is what we can infer from the circumstantial evidence available to us, particularly the over 90% abandonment rate combined with the top queries being words like forex, cloud, and love. Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms. But I doubt it. Rebecca Tushnet Georgetown Law 703 593 6759<tel:703%20593%206759>
On Wed, Apr 26, 2017 at 10:37 PM, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: > Thanks Rebecca. I've never heard of a trademark owner being > deterred > by > a claims notice since one of the explicit defenses in the UDRP is > when a > registrant has rights or legitimate interests in a corresponding > trademark. > So, I think that one may be a bit of a red herring. > > However, your comment about avoiding overreach is well received > and > we > should keep it in mind while at the same time not under-reaching > either - > when we do that, Grandma gets phished. > > Best, > Paul > > > > -----Original Message----- > From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>] > Sent: Wednesday, April 26, 2017 9:17 PM > To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> > Cc: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>>; > gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 > (Design Mark and Appropriate Balance) > > Avoiding overreaching is pro-trademark, as the public reaction to > SOPA/PIPA and patent trolls has shown with respect to copyright > and > patent. > There are also the interests of trademark owners who aren't > participating in > this process but may want to register domain names that are > perfectly > legitimate for their goods/services and jurisdictions. Some of > them > may > inevitably receive notices and be deterred, but there are steps we > can take > to limit that problem. > Rebecca Tushnet > Georgetown Law > 703 593 6759<tel:703%20593%206759> > > > On Wed, Apr 26, 2017 at 9:50 PM, icannlists > <icannlists@winston.com<mailto:icannlists@winston.com>> > wrote: >> Thanks Rebecca. I'm not characterizing you as anti-trademark; >> just >> your arguments and positions to date on this list. We would very >> much >> welcome anything favorable to trademarks that you wish to add to >> the >> discourse. >> >> Best, >> Paul >> >> >> >> -----Original Message----- >> From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu<mailto:Rebecca.Tushnet@law.georgetown.edu>] >> Sent: Wednesday, April 26, 2017 8:00 PM >> To: icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> >> Cc: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>>; >> gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >> #16 >> (Design Mark and Appropriate Balance) >> >> Please don't characterize me as anti-trademark; I strongly >> believe >> in >> the consumer protection function of trademarks, and also in >> trademark >> protection in some circumstances for business purposes. See >> >> >> https://urldefense.proofpoint.com/v2/url?u=https-3A__harvardlawreview.org_20... <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti...> >> tion-in-modern-american-trademark-law/ >> >> Asking again: for those of you who think it doesn't matter if >> claimants >> who don't own relevant rights get to use the TMCH, what then did >> ICANN mean >> by its stated intent not to expand trademark rights? >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759<tel:703%20593%206759> >> >> >> On Wed, Apr 26, 2017 at 8:46 PM, icannlists >> <icannlists@winston.com<mailto:icannlists@winston.com>> >> wrote: >>> Thanks Rebecca. There is not much new here. Whomever registers >>> a >>> second level domain name first (Sunrise - TM owner), Premium >>> (Rich >>> person) >>> or Landrush (TM owner who didn't want to pay the Sunrise >>> shakedown >>> price or >>> regular folks like all of us), someone gets the exclusive rights >>> to >>> that >>> second level. So, it is not just a question of if, but of when >>> and >>> who. I >>> think it is OK to just say "I don't want it to be a trademark >>> owner." >>> Others will disagree, but we don't have to keep this in a >>> mysterious context >>> or otherwise try to layer on some free speech issue that doesn't >>> exist. >>> Trademark owners want them first in order to protect their >>> brands >>> and >>> consumers. Others who are anti-trademarks don't want them to >>> have >>> them >>> first and would prefer someone else gets the exclusive right. >>> Fair >>> enough. >>> Now we see if we can get to consensus on changing the AGB. I >>> doubt >>> we will, >>> but at least the free speech veneer is pulled back. >>> >>> Best, >>> Paul >>> >>> >>> >>> -----Original Message----- >>> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> >>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Rebecca >>> Tushnet >>> Sent: Wednesday, April 26, 2017 3:11 PM >>> To: Silver, Bradley <Bradley.Silver@timewarner.com<mailto:Bradley.Silver@timewarner.com>> >>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >>> #16 >>> (Design Mark and Appropriate Balance) >>> >>> By that logic the mandate not to expand on trademark rights >>> would >>> have been pointless because no activity in domain name space >>> could >>> ever have expanded trademark rights. Call it a right, call it a >>> privilege, call it an alien from Xenon if you like, but ICANN >>> did >>> not >>> want trademark owners to be able to assert control over domain >>> names >>> in excess of what underlying trademark law would have allowed. >>> Under >>> the "nothing in domain names can expand trademark rights because >>> they're never exclusive" logic, was the ICANN direction >>> completely >>> meaningless, or did it have some meaning? (Trademark rights, of >>> course, are never "exclusive" either, which is why we can use >>> any >>> examples we want in this discussion.) Rebecca Tushnet Georgetown >>> Law >>> 703 593 6759<tel:703%20593%206759> >>> >>> >>> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg >>> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: >>>> Jeremy - the TMCH does not allow exclusive rights in domains. >>>> Having >>>> a mark in the TMCH affords nothing close an exclusive right. >>>> That's a basic >>>> truth which shouldn’t be ignored. >>>> >>>> -----Original Message----- >>>> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> >>>> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Jeremy >>>> Malcolm >>>> Sent: Wednesday, April 26, 2017 1:32 PM >>>> To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and >>>> #16 >>>> (Design Mark and Appropriate Balance) >>>> >>>> On 26/4/17 9:00 am, Colin O'Brien wrote: >>>>> Nice try Rebecca but I'm not attempting to overturn the apple >>>>> cart. >>>>> If you have actual examples of problems then provide them >>>>> otherwise this is >>>>> an indulgent academic exercise. >>>> >>>> The fact that the TMCH is allowing exclusive rights in domains >>>> that >>>> go beyond the equivalent rights in domestic trademark law is >>>> itself a >>>> problem if we accept that the TMCH was meant to track trademark >>>> law. >>>> >>>> -- >>>> Jeremy Malcolm >>>> Senior Global Policy Analyst >>>> Electronic Frontier Foundation >>>> https://urldefense.proofpoint.com/v2/url?u=https-3A__eff.org&d=DwIGaQ&c=2s2m... <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti...> >>>> jmalcolm@eff.org<mailto:jmalcolm@eff.org> >>>> >>>> Tel: 415.436.9333 ext 161<tel:415.436.9333%20ext%20161> >>>> >>>> :: Defending Your Rights in the Digital World :: >>>> >>>> Public key: >>>> https://urldefense.proofpoint.com/v2/url?u=https-3A__www.eff.org_files_2016_... <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti...> >>>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF >>>> 1122 >>>> >>>> >>>> >>>> >>>> ==================================================================== >>>> = >>>> = >>>> >>>> >>>> >>>> Reminder: Any email that requests your login credentials or >>>> that >>>> asks you to click on a link could be a phishing attack. If you >>>> have >>>> any questions regarding the authenticity of this email or its >>>> sender, please contact the IT Service Desk at 212.484.6000<tel:(212)%20484-6000> or >>>> via >>>> email at ITServices@timewarner.com<mailto:ITServices@timewarner.com> >>>> >>>> >>>> >>>> >>>> >>>> ================================================================= >>>> This message is the property of Time Warner Inc. and is >>>> intended >>>> only for the use of the >>>> addressee(s) and may be legally privileged and/or confidential. >>>> If >>>> the reader of this message is not the intended recipient, or >>>> the >>>> employee or agent responsible to deliver it to the intended >>>> recipient, he or she is hereby notified that any dissemination, >>>> distribution, printing, forwarding, or any method of copying of >>>> this >>>> information, and/or the taking of any action in reliance on the >>>> information herein is strictly prohibited except by the >>>> intended >>>> recipient or those to whom he or she intentionally distributes >>>> this >>>> message. 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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. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li... <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protecti...>
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Rebecca, At this point in the DNS' history there are literally thousands of UDRP and URS decisions attesting to the reality of cybersquatting as a phenomenon. I'm pretty sure it is going to be difficult to sell a fiction that cybersquatting doesn't exist. While I understand it might be frustrating that there is not a single example on the record of a person who abandoned after Claims by being "chilled", implying that cybersquatting is not really happening in the real world just isn't plausible. I know you have been asking for citations lately, so I will just refer you to http://www.adrforum.com/SearchDecisions and http://www.wipo.int/amc/en/domains/search/ where you can see cybersquatting decisions. Best, Paul -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Thursday, April 27, 2017 12:09 AM To: Greg Shatan <gregshatanipc@gmail.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) What would lead cybersquatters to choose common terms that, while protectable for specific goods or services, are not generally known for those meanings, as opposed to APPLE or MICROSOFT or other strong marks? That seems like a poor cybersquatting strategy, especially done retail rather than wholesale. Circumstantial evidence is evidence too. Rebecca Tushnet Georgetown Law 703 593 6759 On Thu, Apr 27, 2017 at 1:03 AM, Greg Shatan <gregshatanipc@gmail.com> wrote:
We have no idea who abandoned these registration attempts, or even if it was done by humans, much less rightsholders.
If we want to make assumptions that support arguments, rather than engaging in evidence-based inquiry, I'll offer the assumption that all the abandoned carts were started by cybersquatters that intended to use the domains to engage in spam, malware, phishing, spearphishing, fraud, theft and botnet farming.
Greg
On Wed, Apr 26, 2017 at 11:27 PM Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Forwarding to match.
If you think that lots of people have valid uses--including rights--in those terms, then when they stop trying to register those terms, that is overdeterrence. I think what I said was clear.
Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 11:03 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:
Your guess -- and overdeterrence is just a guess, with nothing to back it up -- is as good as mine. My guess is that it absolutely is not overdeterrence.
And my point was that your statement was a mischaracterization of the way the TMCH, Sunrise and Claims work, as well as a mischaracterization of how trademarks work. So I don't think "My point exactly" is what you meant to say (though I wish it were).
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Wed, Apr 26, 2017 at 10:57 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
My point exactly. So what explains the over 90% abandonment rate, other than overdeterrence, especially with those most returned terms? Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 10:53 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:
"Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms."
That is clearly and absolutely not the basis of trademark rights, trademark registration or entry into the TMCH. Nor is it the way Sunrise or Claims work. Ridiculous.
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Yes, because we don't have good survey evidence, one of the questions is what we can infer from the circumstantial evidence available to us, particularly the over 90% abandonment rate combined with the top queries being words like forex, cloud, and love. Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms. But I doubt it. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 10:37 PM, icannlists <icannlists@winston.com> wrote: > Thanks Rebecca. I've never heard of a trademark owner being > deterred by a claims notice since one of the explicit > defenses in the UDRP is when a registrant has rights or > legitimate interests in a corresponding trademark. > So, I think that one may be a bit of a red herring. > > However, your comment about avoiding overreach is well > received and we should keep it in mind while at the same time > not under-reaching either - when we do that, Grandma gets > phished. > > Best, > Paul > > > > -----Original Message----- > From: Rebecca Tushnet > [mailto:Rebecca.Tushnet@law.georgetown.edu] > Sent: Wednesday, April 26, 2017 9:17 PM > To: icannlists <icannlists@winston.com> > Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; > gnso-rpm-wg@icann.org > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 > and #16 (Design Mark and Appropriate Balance) > > Avoiding overreaching is pro-trademark, as the public > reaction to SOPA/PIPA and patent trolls has shown with > respect to copyright and patent. > There are also the interests of trademark owners who aren't > participating in this process but may want to register domain > names that are perfectly legitimate for their goods/services > and jurisdictions. Some of them may inevitably receive > notices and be deterred, but there are steps we can take to > limit that problem. > Rebecca Tushnet > Georgetown Law > 703 593 6759 > > > On Wed, Apr 26, 2017 at 9:50 PM, icannlists > <icannlists@winston.com> > wrote: >> Thanks Rebecca. I'm not characterizing you as >> anti-trademark; just your arguments and positions to date on >> this list. We would very much welcome anything favorable to >> trademarks that you wish to add to the discourse. >> >> Best, >> Paul >> >> >> >> -----Original Message----- >> From: Rebecca Tushnet >> [mailto:Rebecca.Tushnet@law.georgetown.edu] >> Sent: Wednesday, April 26, 2017 8:00 PM >> To: icannlists <icannlists@winston.com> >> Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; >> gnso-rpm-wg@icann.org >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 >> and >> #16 >> (Design Mark and Appropriate Balance) >> >> Please don't characterize me as anti-trademark; I strongly >> believe in the consumer protection function of trademarks, >> and also in trademark protection in some circumstances for >> business purposes. See >> >> >> https://harvardlawreview.org/2017/01/registering-disagreemen >> t-registra tion-in-modern-american-trademark-law/ >> >> Asking again: for those of you who think it doesn't matter >> if claimants who don't own relevant rights get to use the >> TMCH, what then did ICANN mean by its stated intent not to >> expand trademark rights? >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759 >> >> >> On Wed, Apr 26, 2017 at 8:46 PM, icannlists >> <icannlists@winston.com> >> wrote: >>> Thanks Rebecca. There is not much new here. Whomever >>> registers a second level domain name first (Sunrise - TM >>> owner), Premium (Rich >>> person) >>> or Landrush (TM owner who didn't want to pay the Sunrise >>> shakedown price or regular folks like all of us), someone >>> gets the exclusive rights to that second level. So, it is >>> not just a question of if, but of when and who. I think it >>> is OK to just say "I don't want it to be a trademark >>> owner." >>> Others will disagree, but we don't have to keep this in a >>> mysterious context or otherwise try to layer on some free >>> speech issue that doesn't exist. >>> Trademark owners want them first in order to protect their >>> brands and consumers. Others who are anti-trademarks don't >>> want them to have them first and would prefer someone else >>> gets the exclusive right. >>> Fair >>> enough. >>> Now we see if we can get to consensus on changing the AGB. >>> I doubt we will, but at least the free speech veneer is >>> pulled back. >>> >>> 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, April 26, 2017 3:11 PM >>> To: Silver, Bradley <Bradley.Silver@timewarner.com> >>> Cc: gnso-rpm-wg@icann.org >>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 >>> and >>> #16 >>> (Design Mark and Appropriate Balance) >>> >>> By that logic the mandate not to expand on trademark rights >>> would have been pointless because no activity in domain >>> name space could ever have expanded trademark rights. Call >>> it a right, call it a privilege, call it an alien from >>> Xenon if you like, but ICANN did not want trademark owners >>> to be able to assert control over domain names in excess of >>> what underlying trademark law would have allowed. >>> Under >>> the "nothing in domain names can expand trademark rights >>> because they're never exclusive" logic, was the ICANN >>> direction completely meaningless, or did it have some >>> meaning? (Trademark rights, of course, are never >>> "exclusive" either, which is why we can use any examples we >>> want in this discussion.) Rebecca Tushnet Georgetown Law >>> 703 593 6759 >>> >>> >>> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via >>> gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote: >>>> Jeremy - the TMCH does not allow exclusive rights in domains. >>>> Having >>>> a mark in the TMCH affords nothing close an exclusive right. >>>> That's a basic >>>> truth which shouldn’t be ignored. >>>> >>>> -----Original Message----- >>>> From: gnso-rpm-wg-bounces@icann.org >>>> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy >>>> Malcolm >>>> Sent: Wednesday, April 26, 2017 1:32 PM >>>> To: gnso-rpm-wg@icann.org >>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 >>>> and >>>> #16 >>>> (Design Mark and Appropriate Balance) >>>> >>>> On 26/4/17 9:00 am, Colin O'Brien wrote: >>>>> Nice try Rebecca but I'm not attempting to overturn the >>>>> apple cart. >>>>> If you have actual examples of problems then provide them >>>>> otherwise this is an indulgent academic exercise. >>>> >>>> The fact that the TMCH is allowing exclusive rights in >>>> domains that go beyond the equivalent rights in domestic >>>> trademark law is itself a problem if we accept that the >>>> TMCH was meant to track trademark law. >>>> >>>> -- >>>> Jeremy Malcolm >>>> Senior Global Policy Analyst Electronic Frontier >>>> Foundation https://eff.org jmalcolm@eff.org >>>> >>>> Tel: 415.436.9333 ext 161 >>>> >>>> :: Defending Your Rights in the Digital World :: >>>> >>>> Public key: >>>> https://www.eff.org/files/2016/11/27/key_jmalcolm.txt >>>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A >>>> EDDF >>>> 1122 >>>> >>>> >>>> >>>> >>>> ========================================================== >>>> ========== >>>> = >>>> = >>>> >>>> >>>> >>>> Reminder: Any email that requests your login credentials >>>> or that asks you to click on a link could be a phishing >>>> attack. If you have any questions regarding the >>>> authenticity of this email or its sender, please contact >>>> the IT Service Desk at 212.484.6000 or via email at >>>> ITServices@timewarner.com >>>> >>>> >>>> >>>> >>>> >>>> ========================================================== >>>> ======= This message is the property of Time Warner Inc. >>>> and is intended only for the use of the >>>> addressee(s) and may be legally privileged and/or confidential. >>>> If >>>> the reader of this message is not the intended recipient, >>>> or the employee or agent responsible to deliver it to the >>>> intended recipient, he or she is hereby notified that any >>>> dissemination, distribution, printing, forwarding, or any >>>> method of copying of this information, and/or the taking >>>> of any action in reliance on the information herein is >>>> strictly prohibited except by the intended recipient or >>>> those to whom he or she intentionally distributes this >>>> message. If you have received this communication in error, >>>> please immediately notify the sender, and delete the >>>> original message and any copies from your computer or >>>> storage system. Thank you. >>>> >>>> ========================================================== >>>> ======= >>>> >>>> _______________________________________________ >>>> 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 >>> >>> ________________________________ 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. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.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.
Can we please move from guessing to data-based decision making? To do so we need the data from TMCH. I really do not see any other means of getting to the end of this. And, I continue to find it humorous that those currently complaining about supposition appear to be the same group that objected to a review of the TMCH data. PRK On 4/27/17, 5:27 AM, "Rebecca Tushnet" <gnso-rpm-wg-bounces@icann.org on behalf of Rebecca.Tushnet@law.georgetown.edu> wrote:
Forwarding to match.
If you think that lots of people have valid uses--including rights--in those terms, then when they stop trying to register those terms, that is overdeterrence. I think what I said was clear.
Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 11:03 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:
Your guess -- and overdeterrence is just a guess, with nothing to back it up -- is as good as mine. My guess is that it absolutely is not overdeterrence.
And my point was that your statement was a mischaracterization of the way the TMCH, Sunrise and Claims work, as well as a mischaracterization of how trademarks work. So I don't think "My point exactly" is what you meant to say (though I wish it were).
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Wed, Apr 26, 2017 at 10:57 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
My point exactly. So what explains the over 90% abandonment rate, other than overdeterrence, especially with those most returned terms? Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 10:53 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:
"Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms."
That is clearly and absolutely not the basis of trademark rights, trademark registration or entry into the TMCH. Nor is it the way Sunrise or Claims work. Ridiculous.
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Yes, because we don't have good survey evidence, one of the
questions
is what we can infer from the circumstantial evidence available to us, particularly the over 90% abandonment rate combined with the top queries being words like forex, cloud, and love. Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms. But I doubt it. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 10:37 PM, icannlists <icannlists@winston.com> wrote:
Thanks Rebecca. I've never heard of a trademark owner being deterred by a claims notice since one of the explicit defenses in the UDRP is when a registrant has rights or legitimate interests in a corresponding trademark. So, I think that one may be a bit of a red herring.
However, your comment about avoiding overreach is well received and we should keep it in mind while at the same time not under-reaching either - when we do that, Grandma gets phished.
Best, Paul
-----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 9:17 PM To: icannlists <icannlists@winston.com> Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Avoiding overreaching is pro-trademark, as the public reaction to SOPA/PIPA and patent trolls has shown with respect to copyright and patent. There are also the interests of trademark owners who aren't participating in this process but may want to register domain names that are perfectly legitimate for their goods/services and jurisdictions. Some of them may inevitably receive notices and be deterred, but there are steps we can take to limit that problem. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 9:50 PM, icannlists <icannlists@winston.com> wrote: > Thanks Rebecca. I'm not characterizing you as anti-trademark; just > your arguments and positions to date on this list. We would very > much > welcome anything favorable to trademarks that you wish to add to the > discourse. > > Best, > Paul > > > > -----Original Message----- > From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] > Sent: Wednesday, April 26, 2017 8:00 PM > To: icannlists <icannlists@winston.com> > Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; > gnso-rpm-wg@icann.org > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 > (Design Mark and Appropriate Balance) > > Please don't characterize me as anti-trademark; I strongly believe > in > the consumer protection function of trademarks, and also in > trademark > protection in some circumstances for business purposes. See > > https://harvardlawreview.org/2017/01/registering-disagreement-registra > tion-in-modern-american-trademark-law/ > > Asking again: for those of you who think it doesn't matter if > claimants > who don't own relevant rights get to use the TMCH, what then did > ICANN mean > by its stated intent not to expand trademark rights? > Rebecca Tushnet > Georgetown Law > 703 593 6759 > > > On Wed, Apr 26, 2017 at 8:46 PM, icannlists <icannlists@winston.com> > wrote: >> Thanks Rebecca. There is not much new here. Whomever registers a >> second level domain name first (Sunrise - TM owner), Premium (Rich >> person) >> or Landrush (TM owner who didn't want to pay the Sunrise shakedown >> price or >> regular folks like all of us), someone gets the exclusive rights to >> that >> second level. So, it is not just a question of if, but of when and >> who. I >> think it is OK to just say "I don't want it to be a trademark >> owner." >> Others will disagree, but we don't have to keep this in a >> mysterious context >> or otherwise try to layer on some free speech issue that doesn't >> exist. >> Trademark owners want them first in order to protect their brands >> and >> consumers. Others who are anti-trademarks don't want them to have >> them >> first and would prefer someone else gets the exclusive right. Fair >> enough. >> Now we see if we can get to consensus on changing the AGB. I doubt >> we will, >> but at least the free speech veneer is pulled back. >> >> 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, April 26, 2017 3:11 PM >> To: Silver, Bradley <Bradley.Silver@timewarner.com> >> Cc: gnso-rpm-wg@icann.org >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 >> (Design Mark and Appropriate Balance) >> >> By that logic the mandate not to expand on trademark rights would >> have been pointless because no activity in domain name space could >> ever have expanded trademark rights. Call it a right, call it a >> privilege, call it an alien from Xenon if you like, but ICANN did >> not >> want trademark owners to be able to assert control over domain >> names >> in excess of what underlying trademark law would have allowed. >> Under >> the "nothing in domain names can expand trademark rights because >> they're never exclusive" logic, was the ICANN direction completely >> meaningless, or did it have some meaning? (Trademark rights, of >> course, are never "exclusive" either, which is why we can use any >> examples we want in this discussion.) Rebecca Tushnet Georgetown >> Law >> 703 593 6759 >> >> >> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg >> <gnso-rpm-wg@icann.org> wrote: >>> Jeremy - the TMCH does not allow exclusive rights in domains. >>> Having >>> a mark in the TMCH affords nothing close an exclusive right. >>> That's a basic >>> truth which shouldn¹t be ignored. >>> >>> -----Original Message----- >>> From: gnso-rpm-wg-bounces@icann.org >>> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm >>> Sent: Wednesday, April 26, 2017 1:32 PM >>> To: gnso-rpm-wg@icann.org >>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 >>> (Design Mark and Appropriate Balance) >>> >>> On 26/4/17 9:00 am, Colin O'Brien wrote: >>>> Nice try Rebecca but I'm not attempting to overturn the apple >>>> cart. >>>> If you have actual examples of problems then provide them >>>> otherwise this is >>>> an indulgent academic exercise. >>> >>> The fact that the TMCH is allowing exclusive rights in domains >>> that >>> go beyond the equivalent rights in domestic trademark law is >>> itself a >>> problem if we accept that the TMCH was meant to track trademark >>> law. >>> >>> -- >>> Jeremy Malcolm >>> Senior Global Policy Analyst >>> Electronic Frontier Foundation >>> https://eff.org >>> jmalcolm@eff.org >>> >>> Tel: 415.436.9333 ext 161 >>> >>> :: Defending Your Rights in the Digital World :: >>> >>> Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt >>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 >>> >>> >>> >>> ==================================================================== >>> = >>> = >>> >>> >>> >>> Reminder: Any email that requests your login credentials or that >>> asks you to click on a link could be a phishing attack. If you >>> have >>> any questions regarding the authenticity of this email or its >>> sender, please contact the IT Service Desk at 212.484.6000 or via >>> email at ITServices@timewarner.com >>> >>> >>> >>> >>> ================================================================= >>> This message is the property of Time Warner Inc. and is intended >>> only for the use of the >>> addressee(s) and may be legally privileged and/or confidential. If >>> the reader of this message is not the intended recipient, or the >>> employee or agent responsible to deliver it to the intended >>> recipient, he or she is hereby notified that any dissemination, >>> distribution, printing, forwarding, or any method of copying of >>> this >>> information, and/or the taking of any action in reliance on the >>> information herein is strictly prohibited except by the intended >>> recipient or those to whom he or she intentionally distributes >>> this >>> message. If you have received this communication in error, please >>> immediately notify the sender, and delete the original message and >>> any >>> copies from your computer or storage system. Thank you. >>> ================================================================= >>> >>> _______________________________________________ >>> 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 >> >> ________________________________ >> 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.
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
This old song again? Same answer as the many times before Paul K: The TMCH doesn't contain any record of the ever elusive chilled non-registrants after Claims. Best, Paul -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Thursday, April 27, 2017 6:42 AM To: Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Fwd: Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Can we please move from guessing to data-based decision making? To do so we need the data from TMCH. I really do not see any other means of getting to the end of this. And, I continue to find it humorous that those currently complaining about supposition appear to be the same group that objected to a review of the TMCH data. PRK On 4/27/17, 5:27 AM, "Rebecca Tushnet" <gnso-rpm-wg-bounces@icann.org on behalf of Rebecca.Tushnet@law.georgetown.edu> wrote:
Forwarding to match.
If you think that lots of people have valid uses--including rights--in those terms, then when they stop trying to register those terms, that is overdeterrence. I think what I said was clear.
Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 11:03 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:
Your guess -- and overdeterrence is just a guess, with nothing to back it up -- is as good as mine. My guess is that it absolutely is not overdeterrence.
And my point was that your statement was a mischaracterization of the way the TMCH, Sunrise and Claims work, as well as a mischaracterization of how trademarks work. So I don't think "My point exactly" is what you meant to say (though I wish it were).
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Wed, Apr 26, 2017 at 10:57 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
My point exactly. So what explains the over 90% abandonment rate, other than overdeterrence, especially with those most returned terms? Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 10:53 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:
"Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms."
That is clearly and absolutely not the basis of trademark rights, trademark registration or entry into the TMCH. Nor is it the way Sunrise or Claims work. Ridiculous.
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Wed, Apr 26, 2017 at 10:45 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Yes, because we don't have good survey evidence, one of the
questions
is what we can infer from the circumstantial evidence available to us, particularly the over 90% abandonment rate combined with the top queries being words like forex, cloud, and love. Maybe absolutely no one else besides the TMCH entrant/s had a legitimate business using those terms. But I doubt it. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 10:37 PM, icannlists <icannlists@winston.com> wrote:
Thanks Rebecca. I've never heard of a trademark owner being deterred by a claims notice since one of the explicit defenses in the UDRP is when a registrant has rights or legitimate interests in a corresponding trademark. So, I think that one may be a bit of a red herring.
However, your comment about avoiding overreach is well received and we should keep it in mind while at the same time not under-reaching either - when we do that, Grandma gets phished.
Best, Paul
-----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 9:17 PM To: icannlists <icannlists@winston.com> Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Avoiding overreaching is pro-trademark, as the public reaction to SOPA/PIPA and patent trolls has shown with respect to copyright and patent. There are also the interests of trademark owners who aren't participating in this process but may want to register domain names that are perfectly legitimate for their goods/services and jurisdictions. Some of them may inevitably receive notices and be deterred, but there are steps we can take to limit that problem. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 9:50 PM, icannlists <icannlists@winston.com> wrote: > Thanks Rebecca. I'm not characterizing you as anti-trademark; just > your arguments and positions to date on this list. We would > very much welcome anything favorable to trademarks that you > wish to add to the > discourse. > > Best, > Paul > > > > -----Original Message----- > From: Rebecca Tushnet > [mailto:Rebecca.Tushnet@law.georgetown.edu] > Sent: Wednesday, April 26, 2017 8:00 PM > To: icannlists <icannlists@winston.com> > Cc: Silver, Bradley <Bradley.Silver@timewarner.com>; > gnso-rpm-wg@icann.org > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 > (Design Mark and Appropriate Balance) > > Please don't characterize me as anti-trademark; I strongly believe > in > the consumer protection function of trademarks, and also in > trademark protection in some circumstances for business > purposes. See > > https://harvardlawreview.org/2017/01/registering-disagreement-registr a > tion-in-modern-american-trademark-law/ > > Asking again: for those of you who think it doesn't matter if > claimants who don't own relevant rights get to use the TMCH, > what then did ICANN mean by its stated intent not to expand > trademark rights? > Rebecca Tushnet > Georgetown Law > 703 593 6759 > > > On Wed, Apr 26, 2017 at 8:46 PM, icannlists <icannlists@winston.com> > wrote: >> Thanks Rebecca. There is not much new here. Whomever registers a >> second level domain name first (Sunrise - TM owner), Premium (Rich >> person) >> or Landrush (TM owner who didn't want to pay the Sunrise shakedown >> price or >> regular folks like all of us), someone gets the exclusive rights to >> that >> second level. So, it is not just a question of if, but of >> when and >> who. I >> think it is OK to just say "I don't want it to be a trademark >> owner." >> Others will disagree, but we don't have to keep this in a >> mysterious context or otherwise try to layer on some free >> speech issue that doesn't exist. >> Trademark owners want them first in order to protect their brands >> and >> consumers. Others who are anti-trademarks don't want them to have >> them >> first and would prefer someone else gets the exclusive right. Fair >> enough. >> Now we see if we can get to consensus on changing the AGB. I doubt >> we will, >> but at least the free speech veneer is pulled back. >> >> 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, April 26, 2017 3:11 PM >> To: Silver, Bradley <Bradley.Silver@timewarner.com> >> Cc: gnso-rpm-wg@icann.org >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 >> and #16 >> (Design Mark and Appropriate Balance) >> >> By that logic the mandate not to expand on trademark rights would >> have been pointless because no activity in domain name space could >> ever have expanded trademark rights. Call it a right, call >> it a privilege, call it an alien from Xenon if you like, but >> ICANN did >> not >> want trademark owners to be able to assert control over >> domain names in excess of what underlying trademark law would >> have allowed. >> Under >> the "nothing in domain names can expand trademark rights >> because they're never exclusive" logic, was the ICANN >> direction completely >> meaningless, or did it have some meaning? (Trademark rights, >> of course, are never "exclusive" either, which is why we can >> use any >> examples we want in this discussion.) Rebecca Tushnet >> Georgetown Law >> 703 593 6759 >> >> >> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via >> gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote: >>> Jeremy - the TMCH does not allow exclusive rights in domains. >>> Having >>> a mark in the TMCH affords nothing close an exclusive right. >>> That's a basic >>> truth which shouldn¹t be ignored. >>> >>> -----Original Message----- >>> From: gnso-rpm-wg-bounces@icann.org >>> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Jeremy Malcolm >>> Sent: Wednesday, April 26, 2017 1:32 PM >>> To: gnso-rpm-wg@icann.org >>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 >>> and #16 >>> (Design Mark and Appropriate Balance) >>> >>> On 26/4/17 9:00 am, Colin O'Brien wrote: >>>> Nice try Rebecca but I'm not attempting to overturn the >>>> apple cart. >>>> If you have actual examples of problems then provide them >>>> otherwise this is an indulgent academic exercise. >>> >>> The fact that the TMCH is allowing exclusive rights in >>> domains that go beyond the equivalent rights in domestic >>> trademark law is itself a problem if we accept that the TMCH >>> was meant to track trademark law. >>> >>> -- >>> Jeremy Malcolm >>> Senior Global Policy Analyst Electronic Frontier Foundation >>> https://eff.org jmalcolm@eff.org >>> >>> Tel: 415.436.9333 ext 161 >>> >>> :: Defending Your Rights in the Digital World :: >>> >>> Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt >>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A >>> EDDF 1122 >>> >>> >>> >>> ==================================================================== >>> = >>> = >>> >>> >>> >>> Reminder: Any email that requests your login credentials or that >>> asks you to click on a link could be a phishing attack. If >>> you have any questions regarding the authenticity of this >>> email or its sender, please contact the IT Service Desk at >>> 212.484.6000 or via >>> email at ITServices@timewarner.com >>> >>> >>> >>> >>> ================================================================= >>> This message is the property of Time Warner Inc. and is intended >>> only for the use of the >>> addressee(s) and may be legally privileged and/or confidential. If >>> the reader of this message is not the intended recipient, or the >>> employee or agent responsible to deliver it to the intended >>> recipient, he or she is hereby notified that any >>> dissemination, distribution, printing, forwarding, or any >>> method of copying of this information, and/or the taking of >>> any action in reliance on the information herein is strictly >>> prohibited except by the intended >>> recipient or those to whom he or she intentionally >>> distributes this message. If you have received this >>> communication in error, please >>> immediately notify the sender, and delete the original >>> message and >>> any >>> copies from your computer or storage system. Thank you. >>> ================================================================= >>> >>> _______________________________________________ >>> 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 >> >> ________________________________ 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.
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J. Scott Evans -
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Paul Tattersfield -
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