My apologies. I’m now discussing with George privately. Steve From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> Date: Thursday, August 25, 2016 at 10:52 AM To: "disenberg@gigalawfirm.com<mailto:disenberg@gigalawfirm.com>" <disenberg@gigalawfirm.com<mailto:disenberg@gigalawfirm.com>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Questionable UDRPs & TM applications Yes, please defer them until we get into the UDRP. You’ll only have to restate them, new data may be available by then, and meantime all WG members are receiving emails on a subject that is non-germane to our current work. Thanks 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 From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Doug Isenberg Sent: Wednesday, August 24, 2016 6:48 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Questionable UDRPs & TM applications With all due respect, aren’t we supposed to defer discussion of this topic until we are due to begin the UDRP review? (I really say that only because I, too, have comments of substance on these issues but did not raise them because I thought it was not the right time to do so, per Phil’s earlier email.) Doug From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Steve Levy Sent: Wednesday, August 24, 2016 6:28 PM To: George Kirikos <icann@leap.com<mailto:icann@leap.com>>; Scott Austin <SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Questionable UDRPs & TM applications George, I don’t see where anyone has directly addressed your points 2 or 3. As someone who regularly files UDRP cases and has a strong interest in the fairness of the process, I’d like to hear your thoughts on the common causes for this problem. When I send demand letters or pre-filing copies of complaints to registrants I use the email address listed in the whois record. If the resolving website has a “Contact Us” page or form I’ll use that as well. In some cases I’ve picked up the phone and tried calling registrants. The few times I’ve heard from a registrant after they were formally served with the complaint they’ve said things like “I thought your message was spam”, “my privacy service never forwarded your email to me”, or “your email got caught in my spam filter.” Do you have any suggestions for improving pre-complaint communication with registrants, especially those who use privacy services? If I could get in touch with folks before filing a complaint it could save my clients a bunch of money and even possibly lead to negotiated purchases of some accused domains, thus benefiting both sides. Regards, Steve [cid:image001.png@01D1FEBE.D484F660] Steven M. Levy, Esq. Accent Law Group, Inc. 301 Fulton St. Philadelphia, PA 19147 United States Phone: +1-215-327-9094 Email: slevy@AccentLawGroup.com<mailto:slevy@accentlawgroup.com> Website: www.AccentLawGroup.com<http://www.accentlawgroup.com/> LinkedIn: www.linkedin.com/in/stevelevy43a/<http://www.linkedin.com/in/stevelevy43a/> ________________________________________ Notice: This communication, including attachments, may contain information that is confidential and protected by the attorney/client or other privileges. It constitutes non-public information intended to be conveyed only to the designated recipient(s). 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On 8/20/16, 10:04 AM, "gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> on behalf of George Kirikos" <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> on behalf of icann@leap.com<mailto:icann@leap.com>> wrote: Hi Scott, If there were greater safeguards to ensure that registrants were *actually* properly served with the complaint, and had ample time to retain counsel and prepare a response, that might be something to consider. i.e. the 3 biggest reasons for a respondent default are: 1. egregious cybersquatting, where the case is unwinnable (I'd call this "active" default, since the respondent is making the active choice to not defend the dispute), 2. they never received actual notice of the complaint, and 3. they received notice of the complaint, but couldn't prepare a response in time If we can take care of #1, while properly protecting against "inadvertent" defaults in scenarios #2 and #3 (i.e. prevent those from being gamed by complainants), then my concerns would be reduced. The panelists would still need to scrutinize the complaint's evidence and arguments, though, and not simply accept it "blindly" (i.e. evidence and arguments sufficient to pass the minimum pleading requirements that would pass the UDRP's 3-part test; some complaints are entirely deficient, so shouldn't be accepted if the other side doesn't show up). Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Sat, Aug 20, 2016 at 9:41 AM, Scott Austin <SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>> wrote: Thank you George, excellent points. You may also want to consider adding a true default rule (as in the courts and TTAB ) to that list to avoid panelists becoming public defenders or engaging in judicial activism to championv no-show respondents. -------- Original Message -------- From: George Kirikos <icann@leap.com<mailto:icann@leap.com>> Date: Sat, Aug 20, 2016, 9:19 AM To: gnso-rpm-wg@icann.org<mailto: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<mailto: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. policy@paulmcgrady.com<mailto:policy@paulmcgrady.com> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Edward Morris Sent: Friday, August 19, 2016 6:53 PM To: Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> 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<mailto: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 From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Emil Sent: Friday, August 19, 2016 5:44 PM To: Paul Keating Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> 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<mailto: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<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Emil <emil@cv.ro<mailto:emil@cv.ro>> Date: Friday, August 19, 2016 4:30 PM To: George Kirikos <icann@leap.com<mailto:icann@leap.com>> Cc: <gnso-rpm-wg@icann.org<mailto: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 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ No virus found in this message. 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