Actually it is more than a year premature, as we aren’t scheduled to start UDRP review until early 2018. That said, the TMCH has qualitative standards for the marks that can establish sunrise registration rights (as George just noted in a separate email as I was typing this), so there is some precedent for minimum standards for certain purposes. Now back to the work at hand – PDDRP, and getting ready for kicking off TMCH review. 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: Paul McGrady [mailto:policy@paulmcgrady.com] Sent: Saturday, August 20, 2016 8:52 AM To: 'Edward Morris'; Phil Corwin Cc: gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] Questionable UDRPs & TM applications 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<http://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<http://economyrentacar.com> and economyrentalcars.com<http://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. Checked by AVG - www.avg.com<http://www.avg.com> Version: 2016.0.7752 / Virus Database: 4633/12811 - Release Date: 08/15/16 _______________________________________________ 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. Checked by AVG - www.avg.com<http://www.avg.com> Version: 2016.0.7752 / Virus Database: 4633/12811 - Release Date: 08/15/16