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

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

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> 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>

Date: Sat, Aug 20, 2016, 9:19 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.

 

policy@paulmcgrady.com

 

 

 

 

 

 

 

From: 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>

 

 

Cc: 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> 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]

On Behalf Of Emil

Sent: Friday, August 19, 2016 5:44 PM

To: Paul Keating

Cc: 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> 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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