At 29/11/2009 10:14 PM, Hong Xue wrote:
Thanks so much to Alan and his team for doing such a wonderful job. I went through the two strawman proposals carefully and found that many of the ALAC's suggestions are properly reflected.
I've the following thoughts for the community to consider.
1. With respect to the Strawman proposal on Clearing House, I can see significant improvements, such as the item on "identical match", which is basically consistent at-large discussions.
But the following issue still concerns me:
"Nationally Registered Marks, from all jurisdictions, including countries where there is no substantive evaluation, and no common law rights except for court validated common law marks (with appropriate fees for validation)."
When comparing nationally registered marks and common law marks, I mentioned that the advantage of adopting "nationally registered marks" is that they have clear specifications (territory, presentation of the mark, classes of goods or services, term of protection) shown on the registration certificates and can easily be tabled into the database.
The common law rights are comparatively ambiguous. If a court validation can remedy their ambiguity, then it is not the "appropriate fees" but clear decisions with the reasons of validation of the marks, from which we can see the goods or services on which the marks are used, duration of use and territorial protection (nationally or only locally).
I suggest change into "except for court validated common law marks (with appropriate reasons for validation)"
We seem to be using the same word in two different contexts. The fees were not in relation to the court validation, but rather the validation of the TM that the Clearinghouse would have to do. The reason that was included is that for the Clearinghouse to validate a regular registered trademark is a relatively simple process. To validate a court-"validated" trademark means reviewing the entire court judgement that might be quite large, and verifying that there was not a subsequent appeal of this court decision. This is a far more expensive process, and we wanted to make sure that such a process was not funded by those submitting registered trademarks. Overall, I do not think that this is a process that will be followed by many. Some people on the group felt strongly that they should be included, so they were (with the proviso that the fees charged cover the cost of doing so. Regarding geographic area, presumably it would be for whatever the jurisdiction is of the court, which could be national or even a region of the country (in Canada we have provincial courts with jurisdiction only in Quebec). So the geographic area is no wider than it would be with a national trademark. Does this help any?
2. With respect to the URS, I can see improvements, such as 20-day notice, applicable to registered marks only and specially "answers after default."
On the other hand, I have still a couple questions and concerns.
a) Mandatory URS
Although it seems consenually agreed by all the stakeholder, I still believe it should be best-practice rather than mandatory.
Understood. This was a point of contention, but the reality is that if it is deemed a "best practice", then any registry which does not implement it could be held liable. Specifically, safe harbor provisions in their contracts (I think that is the correct term - my not being a lawyer is showing) are only applicable if they have taken all reasonable measures. In the end it seemed that this was a acceptable compromise.
b) Element of complaint & evaluation
Interestingly, Rule 56 of U.S. Fed. Rule of Civil Procedure on summary judgment is cited as the standard of evaluation. Summary judgments are not common in civil proceedings of all jurisdictions, It is puzzling to adopt such an American-center approach. In addition, evaluation standards involve not only procedures but substances. Does Citation of Rule 56 of U.S. Fed. Rule of Civil Procedure mean that the Examiners of a service provider will only make decisions procedurally?
Previously, the standards were focusing on "clear-cut" cybersquatting cases, which are inherently and inevitably controversial but at least combine both procedural and substantive elements. I therefore suggest the "standards" be resumed to "clear-cut cases" subject to thoughtful definition.
In addition, I wonder the feasibility of applying Rule 56 of U.S. Fed. Rule of Civil Procedure. The prerequisite of summary judgment proceeding is that there is "no genuine issue for trial" so that the court may quickly move to judgment based on both parties' submissions (even without supporting affidavits). However, there will be several issues or material facts that need to be verified in URS. Most obviously, how would the examiner assess the elements of complaints (domain name is identical or confusingly similar to a mark in which Complainant holds a valid registration issued by a jursidction that conducts a substantive examination of trademark applications prior to registration and The Registrant has no legitimate right or interest to the domain name; and/or the the domain was registered and is being used in bad faith) in a contested case?
This provision needs to be fleshed out. Reference to Rule 56 was not meant as invoking a US law, but rather a shorthand to illustrate the intent. In short, to address the substantive issues that you raise, the intent of the URS is not to consider complex cases of "confusingly similar" but to address the really clear-cut cases as you suggest. The short-hand that I use is that if the case is not immediately obvious, it should not win a URS. Validation of the TM is part of the process, although I believe the IRT suggested that registration with the Clearinghouse (which must do its own validation) could cover that part. As I understand it, a large part of the recognition of bad faith would be the contents of the web site.
c) Appeal
I don't understand the complicated appeal system. In previous version, a URS decision can be appealed externally to an Ombudsman or a court. Now is there appealing system available internally? Will it be maintained by the same service provider?
After a decision in any case (default or contested), either party has a right to seek a de novo appeal within the URS process for a reasonable fee to cover the costs of the appeal.
Same service provider? Good question. Not yet discussed, but I suspect the answer is yes. But a three person panel instead of one examiner. Ombusdman was very strongly objected to by NCSG. Court option is still available in jurisdictions that allow it.
Since we have only limited time to respond, I tried to write down all I thought about for further modifications and criticisms.
Hong