RE: [bc-gnso] CircleID Article on USG's Proposed Scorecard
- To: Steve DelBianco <sdelbianco@xxxxxxxxxxxxx>
- Subject: RE: [bc-gnso] CircleID Article on USG's Proposed Scorecard
- From: Phil Corwin <pcorwin@xxxxxxxxxxxxxxxxxx>
- Date: Thu, 3 Feb 2011 22:42:00 +0000
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
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
http://www.NetChoice.org and http://blog.netchoice.org
From: Phil Corwin
Date: Wed, 2 Feb 2011 23:13:16 +0000
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
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 S. Corwin
Butera & Andrews
1301 Pennsylvania Ave., NW
Washington, DC 20004
"Luck is the residue of design." -- Branch Rickey