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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