-------- 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