Hi All, John Berryhill (who joined us as one of the two URS experts in our educational session) has asked me to share with you a URS complaint and response. He also shares concerns about sending of the .smd file as proof of use because it is not able to be opened by the URS Examiner or registrant, problems with the online filing system of at least one of the Providers, use of the URS for common words, basis of URS proceedings on figurative marks, and other issues (please see below). As we dive into our discussion of what data we need to answer our high level URS topics, his input and examples may be of interest and value. Best, Kathy -------- Forwarded Message -------- Subject: A URS Complaint and Response From: John Berryhill, Ph.d., Esq. <john@johnberryhill.com> To: Kathy Kleiman <Kathy@KathyKleiman.com> Kathy, I am attaching a URS complaint and response as an example you may share with the group, which illustrates several aspects of how the URS functions on a practical level. You may also provide the following explanatory notes: This proceeding concerns hello.photo, which is no longer registered to the respondent in that proceeding and, in fact, was later sold. The decision is posted here: http://www.adrforum.com/domaindecisions/1570171F.htm Notes: 1. The Complaint submission consists of the "Complaint" file, the "Trademark Information" file, and the TMCH .smd file. It is worth understanding the TMCH .smd file, and its practical consequences, because the URS sets up a trap for the unwary in that regard. The URS deems a TMCH .smd file as proof of use of the mark. In URS proceedings involving a TMCH record, complainants will dutifully attach the required .smd file (as I have here). The thing is, nobody really knows what to use to open the smd file - certainly not the respondent, and certainly not the panelists either. As the decision notes, "...Complainant has failed to provide evidence of the current use of the trademark" even though the point of the TMCH .smd file is to establish proof of use. It is one of several examples of a disconnect between the Policy (which suggests the TMCH record is good enough), and the practical reality that nobody knows what to do with the TMCH data file that the Policy invites, or what the data file proves. In other words, if a Complainant relies on the TMCH smd file as "proof of use", then nobody is going to know what it is supposed to prove, regardless of what the policy actually says. There are at least two URS decisions I've seen which point out this flaw in the system as implemented - the policy invites a piece of evidence which is meaningless to everyone else involved and which likewise renders one of the supposed benefits of the TMCH to be worthless. 2. The NAF requires online filing, which does not allow text formatting, even simple paragraph breaks. After entry of text in the various fields of the online system, the system then formats the text as shown in the Response file. To render filings to be actually readable, it is advisable to (a) prepare the filing offline, (b) copy and paste the sections into the online form, and (c) provide a formatted copy of the filings as an exhibit. Compare, for example, the NAF system's rendering of the Response with the formatted copy of the text in Respondent's Exhibit D. Which one would anyone prefer to read? 3. This proceeding demonstrates that common words are often the subject of multiple TMCH filings. For the word "HELLO" there are two TMCH records, but in the course of reviewing stored TMCH data obtained from bulk registration, I've seen as many as five TMCH claims on the same dictionary word. As shown in the exhibits to the response, the registrant in this instance maintains a record of TMCH claims obtained for names which it registered, for future reference in order to avoid use of the name for purposes claimed in the TMCH record. 4. The actual mark in question is a figurative mark which survived two oppositions and an appeal. Undoubtedly, while the TM claimant likely relied on the figurative presentation in those proceedings, the reduction of a hard-won and narrow figurative mark to a "claim on the word in general" was invited when the TMCH system was modified from its original proposal of "text only" marks, to whatever unpublished criterion the TMCH uses to determine whether a textual component is "dominant". 5. While the word limit on URS complaints is cramped, as the URS is intended for obvious situations which do not require detailed explanation, this proceeding also demonstrates the perfunctory types of complaints which are often filed in domain dispute proceedings generally. 6. One point made by the Examiner is worth considering, as it relates to general examiner experience, qualifications and training. This examiner had zero prior experience with domain name dispute adjudication prior to the URS, and this was the second case handled by this Examiner. This case was the second URS case this examiner had ever touched. In the discussion portion of the decision, the Examiner states in relation to "dictionary word" cases: "In such cases, for the complainant to prevail, there must be some other proof to evidence bad faith, such as actual notice of trademark prior to registration..." Well, duh. That was the entire point of the TMCH system - to provide actual notice of trademark claims prior to registration, and which served its function here. The effect of that prior notice is discussed extensively in the Response - i.e. that the TMCH claims system provides the registrant with notice of what uses of a domain name to avoid. The Examiner reached the correct result, that the name is a dictionary word not being used for an infringing purpose. But, the Examiner's reasoning demonstrates a lack of very basic understanding of the role of the TMCH claims system, which is "wired in" to the way the URS is supposed to work, in providing prior notice of trademark claims, which the Examiner apparently failed to grasp despite the Complainant's submission of a TMCH record, and the Respondent's discussion of having had prior notice of the claim in connection with magazines. The Examiner's suggestion that prior notice was absent indicates that the Examiner (a) does not know that TMCH claims are presented to registrants during launch phase registrations, (b) does not understand why the Complainant submitted a TMCH smd file, and/or (c) did not bother to read the material of record on that very point of prior notice. Correct result, but breathtakingly inept reasoning by an Examiner with zero relevant experience in domain disputes (or any other relevant professional experience in IP law generally), or in how the new gTLD policies were constructed to provide precisely the prior notice which he appears to believe was absent in this case. -- John Berryhill, Ph.d. Esq. 204 East Chester Pike First Floor, Suite 3 Ridley Park, PA 19078 +1.610.565.5601 +1.267.386.8115 fax john@johnberryhill.com