RE: [bc-gnso] CircleID Article on USG's Proposed Scorecard

[Phil Corwin <pcorwin@xxxxxxxxxxxxxxxxxx>]

Thanks very much, Steve, for the kind remarks on my writing style.

My problem with the typographical variants proposal is that I don't know what 
it means because this is the first time I've ever seen it -- but there doesn't 
seem to be any limit on the scope of the claim that a trademark owner could 
assert for clearinghouse registration purposes. At least with the IRT 
recommendations there was a final report and a variety of forums to assist in 
understanding all the nuances, but the USG has put some ideas on the table that 
have never received that kind of debate and analysis.

If you have a trademark and put it through a name-spinning program (the type 
that domain tasters used to use before ICANN policy effectively eradicated most 
of it) and then do the math on all the possible variants (alternate letters, 
additional letters, deleted letters, inserted numbers, etc.) you can quickly 
reach a list of hundreds of  thousands, or even millions, of potential variants 
for a single trademarked term. For example, for just a four letter trademark, 
let's say "ACME", if you registered all the variants of just substituting a 
different letter in each of the four positions, the number of potential 
variants in the English alphabet would be 26x26x26x26=456,976!  None of these 
variants on their own is necessarily infringing under trademark law, especially 
if they are being used for a good or service that has nothing to do with the 
base trademark. Yet the receipt of that warning letter may be enough to spook a 
potential registrant into not registering the domain even if they intended and 
would be committing no infringement. I don't think that trademark owners should 
be permitted to file preemptive  claims on vast swaths of potential domain 
names in this manner.

Put another way, if .com was subject to this type of clearinghouse, and if 
there were no limitations on the variations a trademark owner could file, then 
there's a good chance we might never have had google.com or lots of other made 
up names of Internet companies because they would have been some registered 
variant of an existing trademark and would have received that warning letter.

As for the subsequent effect of receipt of a warning letter in a subsequent URS 
or UDRP proceeding, that's something else we don't know - but I wouldn't be 
surprised to see some attorneys argue that ignoring it and proceeding with the 
registration was evidence of bad faith.

I don't know that there's any magic formula for determining when a given domain 
is "confusingly similar" to a trademark, but it's my hope that any UDRP reform 
effort will at least look at the subject and see if there's some "degrees of 
separation" test that can be devised to provide a presumption that would weigh 
against a registrant when there's close proximity (in combination with other 
factors relevant to infringement), and in favor of the registrant as the 
proximity decreases. I think that kind of semi-bright line test would be 
helpful to both complainants and registrants, but it will take a lot of 
exploratory work to see if it's viable.



From: Steve DelBianco [mailto:sdelbianco@xxxxxxxxxxxxx]
Sent: Thursday, February 03, 2011 2:06 PM
To: Phil Corwin
Cc: 'bc - GNSO list'
Subject: Re: [bc-gnso] CircleID Article on USG's Proposed Scorecard

Phil - well written piece, as usual.

But please help me understand one of the  'alarms' you sounded in here.

The USG is saying that TM owners could add typographical variants (and TMs 
without substantive review) into the Clearinghouse database.    One effect of 
this would be that registries would send more automated emails form their TM 
Claims Service - and the USG says this service should continue after sunrise 
period.

But I don't see how those typographical variants could also be used in URS or 
UDRP actions, as you suggest in your article.

In other words, does a string entered in the Clearinghouse database somehow 
acquire legal stature of a registered trademarks?

If not, what's the real harm of sending more TM Claims warning emails to 
registrants?

Thanks,
Steve

--
Steve DelBianco
Executive Director
NetChoice
http://www.NetChoice.org and http://blog.netchoice.org
+1.202.420.7482


From: Phil Corwin 
<pcorwin@xxxxxxxxxxxxxxxxxx<mailto:pcorwin@xxxxxxxxxxxxxxxxxx>>
Date: Wed, 2 Feb 2011 23:13:16 +0000
To: "bc-gnso@xxxxxxxxx<mailto:bc-gnso@xxxxxxxxx>" 
<bc-gnso@xxxxxxxxx<mailto:bc-gnso@xxxxxxxxx>>
Subject: [bc-gnso] CircleID Article on USG's Proposed Scorecard

BC members should be aware that I have posted an article regarding the USG's 
proposed "scorecard" at 
http://www.circleid.com/posts/us_scorecard_for_brussels_draconian_trademark_rules_end_of_privates_sector/

Those who agree or disagree with any part (or all) of it should feel free to 
post comments at the Circle ID website, as well as on this list. Two comments 
have already been posted since it was posted this afternoon.

Regards to all,
Philip

Philip S. Corwin
Partner
Butera & Andrews
1301 Pennsylvania Ave., NW
Suite 500
Washington, DC 20004
202-347-6875 (office)
202-347-6876 (fax)
202-255-6172 (cell)
"Luck is the residue of design." -- Branch Rickey