[bc-gnso] Dentate - Thrush says final guidebook due after amman

["Frederick Felman" <Frederick.Felman@xxxxxxxxxxxxxxx>]

At the IP-oriented McCarthy Symposium in Seattle. 

Sent from my mobile +1(415)606-3733

(please excuse any content I might blame on apple's absurd and comical 
autocorrect  including but not limited to typos)

On Feb 3, 2011, at 2:44 PM, "Phil Corwin" <pcorwin@xxxxxxxxxxxxxxxxxx> wrote:

> 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>
> Date: Wed, 2 Feb 2011 23:13:16 +0000
> To: "bc-gnso@xxxxxxxxx" <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
>