Thanks Paul K.,
Your suggestion of tabling this is very welcome. Even so, I think we have to make sure that we don’t imply other thinkers aren’t “playing nice” if we try to find the right balance of reciprocal obligations in UDRP reform (assuming the UDRP is ever diagnosed as needing reform). I expect this will become a topic when these issues are visited at the proper time. We will all have to be very patient, at that time, with the long wish lists that appear to have been growing over the last decade.
Best,
Paul
Paul D. McGrady, Jr.
From: Paul@law.es ZIMBRA [mailto:paul@law.es]
Sent: Saturday, August 20, 2016 11:18 AM
To: Paul McGrady <policy@paulmcgrady.com>
Cc: George Kirikos <icann@leap.com>; gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Questionable UDRPs & TM applications
Paul,
Let's play nice. Proof of use is certainly not a financial disclosure and I would think any trademark holder acting in good faith should have no problem, showing actual use.
At any rate lets table this for the appropriate moment.
Paul Keating
On 20 Aug 2016, at 4:45 PM, Paul McGrady <policy@paulmcgrady.com> wrote:Thanks George. An interesting idea. I wonder how Respondents would feel about a reciprocal requirement that they turn over audited financial statements in order to have standing to register a domain name? You might have finally cooked up the deterrent to cybersquatting in the first place!
Regards,
Paul
Paul D. McGrady, Jr.
policy@paulmcgrady.com
-----Original Message-----
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org ] On Behalf Of George Kirikos
Sent: Saturday, August 20, 2016 8:20 AM
To: gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Questionable UDRPs & TM applications
To participate in a new gTLD sunrise period, a TMCH markholder must submit a proof of use, see question/answer 2.2 through 2.4 of:
https://newgtlds.icann.org/en/about/trademark-clearinghouse/ faqs
The justification for that requirement was to prevent gaming. This rule was established before sunrise periods even came about for new gTLDs, as folks expected abuse if the proof of use requirement did not exist (and they saw what happened in the .EU sunrise).
The same principle should apply to the UDRP, given the *actual* abuse we're observing, as folks exploit gaping loopholes in the policy. In the 1990s, the drafters of the UDRP either did not contemplate these kinds of attacks, or did not appreciate the potential severity of the problem. To not eliminate those loopholes would invite further abuse of domain name registrants.
We're not at that disussion point yet, but when we get there I will suggest going much further than simply using "proof of use" for standing requirements of the UDRP. If there was an actual lawsuit, it's almost a certainty that revenues generated by the trademarked goods/services would need to be presented to the courts. If UDRP complainants had to file audited financials relating to actual revenues generated from their mark, that would go a long way to eliminating abuse of the procedure by trademark trolls.
Sincerely,
George Kirikos
416-588-0269
http://www.leap.com/
On Sat, Aug 20, 2016 at 8:52 AM, Paul McGrady <policy@paulmcgrady.com> wrote:While I think this subject is several months premature, and I don’t
want to wade in on the substance at this time, we should note that
what is being suggested here is that ICANN give preference to certain
national trademark regimes and disregard others. Tricky topic in
ICANNland for sure, especially these days.
Best to all,
Paul
Paul D. McGrady, Jr.
On Behalf Of Edward Morris
Sent: Friday, August 19, 2016 6:53 PM
To: Phil Corwin <psc@vlaw-dc.com>
Subject: Re: [gnso-rpm-wg] Questionable UDRPs & TM applications
Excellent point, Phil.
Sent from my iPhone
On 20 Aug 2016, at 00:49, Phil Corwin <psc@vlaw-dc.com> wrote:
This suggests to me that all trademarks are not created equal, and
that when we reach our UDRP work we may wish to address the issue of
whether a certain quality of trademark should be required for filing a UDRP.
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
On Behalf Of Emil
Sent: Friday, August 19, 2016 5:44 PM
To: Paul Keating
Subject: Re: [gnso-rpm-wg] Questionable UDRPs & TM applications
Paul, thank you for appreciating my concern.
I am very pleased to see that I can bring value in this exclusive
community of professionals.
In the last 12 years I've seen a lot of cases where legitimate SMEs
get bullied with the "we'll get your domain" threat based on abusive
TM registrations, mostly postdating the domain name registration
dates. In some cases I am very familiar with the patterns - as in how
relatively established website owners try to game the system - concrete ways.
This is a major problem in certain countries of Europe (eastern block)
and outside Europe (countries like Tunisia let's say) where you can
theoretically register any trademark even if it is not necessarily
distinctive, special nor recognizable.
On 20 Aug 2016 00:15, Paul Keating <Paul@law.es> wrote:
This and comments such as George's should not be lost. These comments
need to be retained and specifically addressed during the UDRP portion of the WG.
From: <gnso-rpm-wg-bounces@icann.org
> on behalf of Emil <emil@cv.ro> Date: Friday, August 19, 2016 4:30 PM
To: George Kirikos <icann@leap.com>
Cc: <gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] Questionable UDRPs & TM applications
George, often TM registrations are granted on bogus or strange claims.
For example Christian Louboutin was granted a TM for red shoes
outsole. By this logic BMW could be granted a TM for silver cars.
In the domain world:
There is a car rental company called economycarrentals.com. They tried
to obtain a TM at European level for "economy car rentals", a super
generic term used by thousands of rental agencies. Why? So that they
can claim economyrentacar.com and economyrentalcars.com in WIPO - the
EMD of their main competitor.
They were refused (now twice) an EM Europe Wide trademark for lack of
distinctiveness but went on and tried at country level. A handfull of
countries allowed them to register a word (not figurative) trademark
on "economy car rentals" a dictionary super generic formulation. Now
they will threaten & hussle with a WIPO arbitration all the local TLD
owners for those particular countries.
Emil
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