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

_______________________________________________ gnso-rpm-wg mailing list 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 Version: 2016.0.7752 / Virus Database: 4633/12811 - Release Date: 08/15/16 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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 <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

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

_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

________________________________

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_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. Any tax advice provided by VLP is for your use only and cannot be used to avoid tax penalties or for promotional or marketing purposes.

George, I don’t see where anyone has directly addressed your points 2 or 3. As someone who regularly files UDRP cases and has a strong interest in the fairness of the process, I’d like to hear your thoughts on the common causes for this problem. When I send demand letters or pre-filing copies of complaints to registrants I use the email address listed in the whois record. If the resolving website has a “Contact Us” page or form I’ll use that as well. In some cases I’ve picked up the phone and tried calling registrants. The few times I’ve heard from a registrant after they were formally served with the complaint they’ve said things like “I thought your message was spam”, “my privacy service never forwarded your email to me”, or “your email got caught in my spam filter.” Do you have any suggestions for improving pre-complaint communication with registrants, especially those who use privacy services? If I could get in touch with folks before filing a complaint it could save my clients a bunch of money and even possibly lead to negotiated purchases of some accused domains, thus benefiting both sides. Regards, Steve [cid:52D5B2CC-E34D-4F64-9E81-94F42FEA419A] Steven M. Levy, Esq. Accent Law Group, Inc. 301 Fulton St. Philadelphia, PA 19147 United States Phone: +1-215-327-9094 Email: slevy@AccentLawGroup.com<mailto:slevy@accentlawgroup.com> Website: www.AccentLawGroup.com<http://www.accentlawgroup.com/> <http://www.accentlawgroup.com/>LinkedIn: www.linkedin.com/in/stevelevy43a/<http://www.linkedin.com/in/stevelevy43a/> ________________________________________ Notice: This communication, including attachments, may contain information that is confidential and protected by the attorney/client or other privileges. It constitutes non-public information intended to be conveyed only to the designated recipient(s). If the reader or recipient of this communication is not the intended recipient, an employee or agent of the intended recipient who is responsible for delivering it to the intended recipient, or you believe that you have received this communication in error, please notify the sender immediately by return e-mail and promptly delete this e-mail, including attachments without reading or saving them in any manner. The unauthorized use, dissemination, distribution, or reproduction of this e-mail, including attachments, is prohibited and may be unlawful. Receipt by anyone other than the intended recipient(s) is not a waiver of any attorney/client or other privilege. On 8/20/16, 10:04 AM, "gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> on behalf of George Kirikos" <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> on behalf of icann@leap.com<mailto:icann@leap.com>> wrote: 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<mailto: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<mailto:icann@leap.com>> Date: Sat, Aug 20, 2016, 9:19 AM To: gnso-rpm-wg@icann.org<mailto: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<mailto: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<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. 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 _______________________________________________ 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 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 _______________________________________________ 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 _______________________________________________ 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 This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. Any tax advice provided by VLP is for your use only and cannot be used to avoid tax penalties or for promotional or marketing purposes. _______________________________________________ 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

Good point, Doug. And I didn’t mean to raise this as a discussion topic for debate by the WG (perhaps I should have privately emailed George). However, the UDRP review is a couple of years off (though the URS is sooner) and if there are suggestions on how to better reach registrants I’d like to hear them as soon as possible so as to maximize the benefit to brand owners and registrants alike. To that end, I welcome any and all suggestions through private email. Regards, Steve From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Doug Isenberg <disenberg@gigalawfirm.com<mailto:disenberg@gigalawfirm.com>> Reply-To: "disenberg@gigalawfirm.com<mailto:disenberg@gigalawfirm.com>" <disenberg@gigalawfirm.com<mailto:disenberg@gigalawfirm.com>> Date: Wednesday, August 24, 2016 at 6:47 PM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Questionable UDRPs & TM applications 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 From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Steve Levy Sent: Wednesday, August 24, 2016 6:28 PM To: George Kirikos <icann@leap.com<mailto:icann@leap.com>>; Scott Austin <SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Questionable UDRPs & TM applications George, I don’t see where anyone has directly addressed your points 2 or 3. As someone who regularly files UDRP cases and has a strong interest in the fairness of the process, I’d like to hear your thoughts on the common causes for this problem. When I send demand letters or pre-filing copies of complaints to registrants I use the email address listed in the whois record. If the resolving website has a “Contact Us” page or form I’ll use that as well. In some cases I’ve picked up the phone and tried calling registrants. The few times I’ve heard from a registrant after they were formally served with the complaint they’ve said things like “I thought your message was spam”, “my privacy service never forwarded your email to me”, or “your email got caught in my spam filter.” Do you have any suggestions for improving pre-complaint communication with registrants, especially those who use privacy services? If I could get in touch with folks before filing a complaint it could save my clients a bunch of money and even possibly lead to negotiated purchases of some accused domains, thus benefiting both sides. Regards, Steve [cid:image001.png@01D1FE37.FC4F0AF0] Steven M. Levy, Esq. Accent Law Group, Inc. 301 Fulton St. Philadelphia, PA 19147 United States Phone: +1-215-327-9094 Email: slevy@AccentLawGroup.com<mailto:slevy@accentlawgroup.com> Website: www.AccentLawGroup.com<http://www.accentlawgroup.com/> LinkedIn: www.linkedin.com/in/stevelevy43a/<http://www.linkedin.com/in/stevelevy43a/> ________________________________________ Notice: This communication, including attachments, may contain information that is confidential and protected by the attorney/client or other privileges. It constitutes non-public information intended to be conveyed only to the designated recipient(s). If the reader or recipient of this communication is not the intended recipient, an employee or agent of the intended recipient who is responsible for delivering it to the intended recipient, or you believe that you have received this communication in error, please notify the sender immediately by return e-mail and promptly delete this e-mail, including attachments without reading or saving them in any manner. The unauthorized use, dissemination, distribution, or reproduction of this e-mail, including attachments, is prohibited and may be unlawful. Receipt by anyone other than the intended recipient(s) is not a waiver of any attorney/client or other privilege. On 8/20/16, 10:04 AM, "gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> on behalf of George Kirikos" <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> on behalf of icann@leap.com<mailto:icann@leap.com>> wrote: 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<mailto: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<mailto:icann@leap.com>> Date: Sat, Aug 20, 2016, 9:19 AM To: gnso-rpm-wg@icann.org<mailto: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<mailto: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<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. 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 _______________________________________________ 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 _______________________________________________ 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 _______________________________________________ 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 This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. Any tax advice provided by VLP is for your use only and cannot be used to avoid tax penalties or for promotional or marketing purposes. _______________________________________________ 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

My apologies. I’m now discussing with George privately. Steve From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> Date: Thursday, August 25, 2016 at 10:52 AM To: "disenberg@gigalawfirm.com<mailto:disenberg@gigalawfirm.com>" <disenberg@gigalawfirm.com<mailto:disenberg@gigalawfirm.com>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Questionable UDRPs & TM applications 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 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 Doug Isenberg Sent: Wednesday, August 24, 2016 6:48 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Questionable UDRPs & TM applications 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 From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Steve Levy Sent: Wednesday, August 24, 2016 6:28 PM To: George Kirikos <icann@leap.com<mailto:icann@leap.com>>; Scott Austin <SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Questionable UDRPs & TM applications George, I don’t see where anyone has directly addressed your points 2 or 3. As someone who regularly files UDRP cases and has a strong interest in the fairness of the process, I’d like to hear your thoughts on the common causes for this problem. When I send demand letters or pre-filing copies of complaints to registrants I use the email address listed in the whois record. If the resolving website has a “Contact Us” page or form I’ll use that as well. In some cases I’ve picked up the phone and tried calling registrants. The few times I’ve heard from a registrant after they were formally served with the complaint they’ve said things like “I thought your message was spam”, “my privacy service never forwarded your email to me”, or “your email got caught in my spam filter.” Do you have any suggestions for improving pre-complaint communication with registrants, especially those who use privacy services? If I could get in touch with folks before filing a complaint it could save my clients a bunch of money and even possibly lead to negotiated purchases of some accused domains, thus benefiting both sides. Regards, Steve [cid:image001.png@01D1FEBE.D484F660] Steven M. Levy, Esq. Accent Law Group, Inc. 301 Fulton St. Philadelphia, PA 19147 United States Phone: +1-215-327-9094 Email: slevy@AccentLawGroup.com<mailto:slevy@accentlawgroup.com> Website: www.AccentLawGroup.com<http://www.accentlawgroup.com/> LinkedIn: www.linkedin.com/in/stevelevy43a/<http://www.linkedin.com/in/stevelevy43a/> ________________________________________ Notice: This communication, including attachments, may contain information that is confidential and protected by the attorney/client or other privileges. It constitutes non-public information intended to be conveyed only to the designated recipient(s). If the reader or recipient of this communication is not the intended recipient, an employee or agent of the intended recipient who is responsible for delivering it to the intended recipient, or you believe that you have received this communication in error, please notify the sender immediately by return e-mail and promptly delete this e-mail, including attachments without reading or saving them in any manner. The unauthorized use, dissemination, distribution, or reproduction of this e-mail, including attachments, is prohibited and may be unlawful. Receipt by anyone other than the intended recipient(s) is not a waiver of any attorney/client or other privilege. On 8/20/16, 10:04 AM, "gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> on behalf of George Kirikos" <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> on behalf of icann@leap.com<mailto:icann@leap.com>> wrote: 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<mailto: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<mailto:icann@leap.com>> Date: Sat, Aug 20, 2016, 9:19 AM To: gnso-rpm-wg@icann.org<mailto: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<mailto: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<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. 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 _______________________________________________ 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 _______________________________________________ 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 _______________________________________________ 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 This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. Any tax advice provided by VLP is for your use only and cannot be used to avoid tax penalties or for promotional or marketing purposes. _______________________________________________ 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 Internal Virus Database is out of date.

Paul, Let's play nice. Proof of use is certainly not a financial disclosure and I would think any trademark holder acting in good faith should have no problem, showing actual use. At any rate lets table this for the appropriate moment. Paul Keating

On 20 Aug 2016, at 4:45 PM, Paul McGrady <policy@paulmcgrady.com> wrote:

Thanks George. An interesting idea. I wonder how Respondents would feel about a reciprocal requirement that they turn over audited financial statements in order to have standing to register a domain name? You might have finally cooked up the deterrent to cybersquatting in the first place!

Regards, Paul

Paul D. McGrady, Jr. policy@paulmcgrady.com

-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Saturday, August 20, 2016 8:20 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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I had drafted a lengthy response to some of the earlier emails in this thread, but out of respect for our co-Chair's request, I'll "bookmark" it in my drafts folder for the appropriate time -- in spite of Paul McGrady's wise counsel that "in ICANNland, bad ideas get traction unless immediately confronted." As for "playing nice," I will point out that Paul McGrady's email regarding potentially requiring financial disclosures by domain name applicants was in response to George's email suggestion to require financial disclosures by UDRP complainants, not (as assumed) the earlier "proof of use" suggestion. Thus, the scolding to "play nice" was predicated on a false premise and completely uncalled-for. On a topic where passions run high and imaginations run unchecked, it's probably a wise thing to check what people are responding to before responding to them. I find it amusing that the command to "play nice" was issued almost the first time somebody said something remotely unfavorable to respondents, on a thread previously devoted almost entirely to impugning, narrowing the rights of and raising the bar for trademark owners -- often based on statements that were far more deserving of that cautionary command. While many of these statements were highly rebuttable (to say the least...), I'll hold the catalogue of rebuttals for when the time comes. Greg On Sat, Aug 20, 2016 at 12:58 PM, Paul McGrady <policy@paulmcgrady.com> wrote:

Thanks Paul K.,

Your suggestion of tabling this is very welcome. Even so, I think we have to make sure that we don’t imply other thinkers aren’t “playing nice” if we try to find the right balance of reciprocal obligations in UDRP reform (assuming the UDRP is ever diagnosed as needing reform). I expect this will become a topic when these issues are visited at the proper time. We will all have to be very patient, at that time, with the long wish lists that appear to have been growing over the last decade.

Best,

Paul

Paul D. McGrady, Jr.

policy@paulmcgrady.com

*From:* Paul@law.es ZIMBRA [mailto:paul@law.es] *Sent:* Saturday, August 20, 2016 11:18 AM *To:* Paul McGrady <policy@paulmcgrady.com> *Cc:* George Kirikos <icann@leap.com>; gnso-rpm-wg@icann.org

*Subject:* Re: [gnso-rpm-wg] Questionable UDRPs & TM applications

Paul,

Let's play nice. Proof of use is certainly not a financial disclosure and I would think any trademark holder acting in good faith should have no problem, showing actual use.

At any rate lets table this for the appropriate moment.

Paul Keating

On 20 Aug 2016, at 4:45 PM, Paul McGrady <policy@paulmcgrady.com> wrote:

Thanks George. An interesting idea. I wonder how Respondents would feel about a reciprocal requirement that they turn over audited financial statements in order to have standing to register a domain name? You might have finally cooked up the deterrent to cybersquatting in the first place!

Regards, Paul

Paul D. McGrady, Jr. policy@paulmcgrady.com

-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org <gnso-rpm-wg-bounces@icann.org>] On Behalf Of George Kirikos Sent: Saturday, August 20, 2016 8:20 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 <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 <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

_______________________________________________ gnso-rpm-wg mailing

list gnso-rpm-wg@icann.org

https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

________________________________

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Wow. Not sure what I did to merit _that_ email. I thought we were supposed to "play nice." Clearly, I didn't write that email to "feel better." I did it to put a marker down that there were allegations made in this thread that can and will be rebutted when the time comes. Our co-Chair asked us to move on and I respected that request. But I didn't want anyone to think these statements were correct or generally agreed to just because there was no substantive response on this thread. We can move on now (in fact, I thought we already had -- that was kind of the point of the prior email). But we'll be back. On Saturday, August 20, 2016, Paul@law.es ZIMBRA <paul@law.es> wrote:

Greg, do you feel better now?

Can we move on?

Paul Keating

On 20 Aug 2016, at 7:43 PM, Greg Shatan <gregshatanipc@gmail.com <javascript:_e(%7B%7D,'cvml','gregshatanipc@gmail.com');>> wrote:

I had drafted a lengthy response to some of the earlier emails in this thread, but out of respect for our co-Chair's request, I'll "bookmark" it in my drafts folder for the appropriate time -- in spite of Paul McGrady's wise counsel that "in ICANNland, bad ideas get traction unless immediately confronted."

As for "playing nice," I will point out that Paul McGrady's email regarding potentially requiring financial disclosures by domain name applicants was in response to George's email suggestion to require financial disclosures by UDRP complainants, not (as assumed) the earlier "proof of use" suggestion. Thus, the scolding to "play nice" was predicated on a false premise and completely uncalled-for. On a topic where passions run high and imaginations run unchecked, it's probably a wise thing to check what people are responding to before responding to them.

I find it amusing that the command to "play nice" was issued almost the first time somebody said something remotely unfavorable to respondents, on a thread previously devoted almost entirely to impugning, narrowing the rights of and raising the bar for trademark owners -- often based on statements that were far more deserving of that cautionary command. While many of these statements were highly rebuttable (to say the least...), I'll hold the catalogue of rebuttals for when the time comes.

Greg

On Sat, Aug 20, 2016 at 12:58 PM, Paul McGrady <policy@paulmcgrady.com <javascript:_e(%7B%7D,'cvml','policy@paulmcgrady.com');>> wrote:

...

Thanks Paul K.,

Your suggestion of tabling this is very welcome. Even so, I think we have to make sure that we don’t imply other thinkers aren’t “playing nice” if we try to find the right balance of reciprocal obligations in UDRP reform (assuming the UDRP is ever diagnosed as needing reform). I expect this will become a topic when these issues are visited at the proper time. We will all have to be very patient, at that time, with the long wish lists that appear to have been growing over the last decade.

Best,

Paul

Paul D. McGrady, Jr.

policy@paulmcgrady.com <javascript:_e(%7B%7D,'cvml','policy@paulmcgrady.com');>

*From:* Paul@law.es <javascript:_e(%7B%7D,'cvml','Paul@law.es');> ZIMBRA [mailto:paul@law.es <javascript:_e(%7B%7D,'cvml','paul@law.es');>] *Sent:* Saturday, August 20, 2016 11:18 AM *To:* Paul McGrady <policy@paulmcgrady.com <javascript:_e(%7B%7D,'cvml','policy@paulmcgrady.com');>> *Cc:* George Kirikos <icann@leap.com <javascript:_e(%7B%7D,'cvml','icann@leap.com');>>; gnso-rpm-wg@icann.org <javascript:_e(%7B%7D,'cvml','gnso-rpm-wg@icann.org');>

*Subject:* Re: [gnso-rpm-wg] Questionable UDRPs & TM applications

Paul,

Let's play nice. Proof of use is certainly not a financial disclosure and I would think any trademark holder acting in good faith should have no problem, showing actual use.

At any rate lets table this for the appropriate moment.

Paul Keating

On 20 Aug 2016, at 4:45 PM, Paul McGrady <policy@paulmcgrady.com <javascript:_e(%7B%7D,'cvml','policy@paulmcgrady.com');>> wrote:

Thanks George. An interesting idea. I wonder how Respondents would feel about a reciprocal requirement that they turn over audited financial statements in order to have standing to register a domain name? You might have finally cooked up the deterrent to cybersquatting in the first place!

Regards, Paul

Paul D. McGrady, Jr. policy@paulmcgrady.com <javascript:_e(%7B%7D,'cvml','policy@paulmcgrady.com');>

-----Original Message----- From: gnso-rpm-wg-bounces@icann.org <javascript:_e(%7B%7D,'cvml','gnso-rpm-wg-bounces@icann.org');> [ mailto:gnso-rpm-wg-bounces@icann.org <javascript:_e(%7B%7D,'cvml','gnso-rpm-wg-bounces@icann.org');>] On Behalf Of George Kirikos Sent: Saturday, August 20, 2016 8:20 AM To: gnso-rpm-wg@icann.org <javascript:_e(%7B%7D,'cvml','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 <javascript:_e(%7B%7D,'cvml','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 <javascript:_e(%7B%7D,'cvml','policy@paulmcgrady.com');>

From: gnso-rpm-wg-bounces@icann.org <javascript:_e(%7B%7D,'cvml','gnso-rpm-wg-bounces@icann.org');>

[mailto:gnso-rpm-wg-bounces@icann.org <javascript:_e(%7B%7D,'cvml','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 <javascript:_e(%7B%7D,'cvml','psc@vlaw-dc.com');>>

Cc: gnso-rpm-wg@icann.org <javascript:_e(%7B%7D,'cvml','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 <javascript:_e(%7B%7D,'cvml','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 <javascript:_e(%7B%7D,'cvml','gnso-rpm-wg-bounces@icann.org');>

[mailto:gnso-rpm-wg-bounces@icann.org <javascript:_e(%7B%7D,'cvml','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 <javascript:_e(%7B%7D,'cvml','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 <javascript:_e(%7B%7D,'cvml','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 <javascript:_e(%7B%7D,'cvml','gnso-rpm-wg-bounces@icann.org');>> on behalf of Emil <emil@cv.ro <javascript:_e(%7B%7D,'cvml','emil@cv.ro');>>

Date: Friday, August 19, 2016 4:30 PM

To: George Kirikos <icann@leap.com <javascript:_e(%7B%7D,'cvml','icann@leap.com');>>

Cc: <gnso-rpm-wg@icann.org <javascript:_e(%7B%7D,'cvml','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

_______________________________________________ gnso-rpm-wg mailing

list gnso-rpm-wg@icann.org <javascript:_e(%7B%7D,'cvml','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

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08/15/16

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I am cognizant of Phil’s admonition to refrain from prematurely discussing topics -- but, like Paul and Greg, I do not think it is wise for anyone to leave unsupported allegations unaddressed. So, briefly, I would only add that the numerous broad statements and allegations that have been posted in this thread, without citation to any authority (such as UDRP decisions or statistics) seems inappropriate. For example, none of the following were accompanied by any authority: * “given the *actual* abuse we’re observing” * “folks exploit gaping loopholes in the policy” * “abuse of the procedure by trademark trolls” * “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” * “panelists becoming public defenders or engaging in judicial activism to champion no-show respondents” * “the 3 biggest reasons for a respondent default” And, the one actual domain name dispute that was mentioned (economyrentacar.com and economyrentalcars.com) does not, in fact, appear to be an actual domain name dispute at WIPO, despite the implication that it is or was a real WIPO case. When the appropriate time comes to discuss these issues, I think we would all be well-served by referring to actual examples, not hypotheticals or general understandings that may or may not have any basis in fact. Sincerely yours, Douglas M. Isenberg Attorney at Law <http://www.gigalaw.com/> “When your brand is on the line, The GigaLaw Firm protects your brand online.” Learn more: <http://www.gigalaw.com/> www.GigaLaw.com

Come on guys, play nice! VG Am 21.08.2016 um 09:15 schrieb Greg Shatan:

Wow. Not sure what I did to merit _that_ email. I thought we were supposed to "play nice."

Clearly, I didn't write that email to "feel better." I did it to put a marker down that there were allegations made in this thread that can and will be rebutted when the time comes. Our co-Chair asked us to move on and I respected that request. But I didn't want anyone to think these statements were correct or generally agreed to just because there was no substantive response on this thread.

We can move on now (in fact, I thought we already had -- that was kind of the point of the prior email). But we'll be back.

On Saturday, August 20, 2016, Paul@law.es <mailto:Paul@law.es> ZIMBRA <paul@law.es <mailto:paul@law.es>> wrote:

Greg, do you feel better now?

Can we move on?

Paul Keating

On 20 Aug 2016, at 7:43 PM, Greg Shatan <gregshatanipc@gmail.com <javascript:_e(%7B%7D,'cvml','gregshatanipc@gmail.com');>> wrote:

...

I had drafted a lengthy response to some of the earlier emails in this thread, but out of respect for our co-Chair's request, I'll "bookmark" it in my drafts folder for the appropriate time -- in spite of Paul McGrady's wise counsel that "in ICANNland, bad ideas get traction unless immediately confronted."

As for "playing nice," I will point out that Paul McGrady's email regarding potentially requiring financial disclosures by domain name applicants was in response to George's email suggestion to require financial disclosures by UDRP complainants, not (as assumed) the earlier "proof of use" suggestion. Thus, the scolding to "play nice" was predicated on a false premise and completely uncalled-for. On a topic where passions run high and imaginations run unchecked, it's probably a wise thing to check what people are responding to before responding to them.

I find it amusing that the command to "play nice" was issued almost the first time somebody said something remotely unfavorable to respondents, on a thread previously devoted almost entirely to impugning, narrowing the rights of and raising the bar for trademark owners -- often based on statements that were far more deserving of that cautionary command. While many of these statements were highly rebuttable (to say the least...), I'll hold the catalogue of rebuttals for when the time comes.

Greg

On Sat, Aug 20, 2016 at 12:58 PM, Paul McGrady <policy@paulmcgrady.com <javascript:_e(%7B%7D,'cvml','policy@paulmcgrady.com');>> wrote:

Thanks Paul K.,

Your suggestion of tabling this is very welcome. Even so, I think we have to make sure that we don’t imply other thinkers aren’t “playing nice” if we try to find the right balance of reciprocal obligations in UDRP reform (assuming the UDRP is ever diagnosed as needing reform). I expect this will become a topic when these issues are visited at the proper time. We will all have to be very patient, at that time, with the long wish lists that appear to have been growing over the last decade.

Best,

Paul

Paul D. McGrady, Jr.

policy@paulmcgrady.com <javascript:_e(%7B%7D,'cvml','policy@paulmcgrady.com');>

*From:*Paul@law.es <javascript:_e(%7B%7D,'cvml','Paul@law.es');> ZIMBRA [mailto:paul@law.es <javascript:_e(%7B%7D,'cvml','paul@law.es');>] *Sent:* Saturday, August 20, 2016 11:18 AM *To:* Paul McGrady <policy@paulmcgrady.com <javascript:_e(%7B%7D,'cvml','policy@paulmcgrady.com');>> *Cc:* George Kirikos <icann@leap.com <javascript:_e(%7B%7D,'cvml','icann@leap.com');>>; gnso-rpm-wg@icann.org <javascript:_e(%7B%7D,'cvml','gnso-rpm-wg@icann.org');>

*Subject:* Re: [gnso-rpm-wg] Questionable UDRPs & TM applications

Paul,

Let's play nice. Proof of use is certainly not a financial disclosure and I would think any trademark holder acting in good faith should have no problem, showing actual use.

At any rate lets table this for the appropriate moment.

Paul Keating

On 20 Aug 2016, at 4:45 PM, Paul McGrady <policy@paulmcgrady.com <javascript:_e(%7B%7D,'cvml','policy@paulmcgrady.com');>> wrote:

Thanks George. An interesting idea. I wonder how Respondents would feel about a reciprocal requirement that they turn over audited financial statements in order to have standing to register a domain name? You might have finally cooked up the deterrent to cybersquatting in the first place!

Regards, Paul

Paul D. McGrady, Jr. policy@paulmcgrady.com <javascript:_e(%7B%7D,'cvml','policy@paulmcgrady.com');>

-----Original Message----- From: gnso-rpm-wg-bounces@icann.org <javascript:_e(%7B%7D,'cvml','gnso-rpm-wg-bounces@icann.org');> [mailto:gnso-rpm-wg-bounces@icann.org <javascript:_e(%7B%7D,'cvml','gnso-rpm-wg-bounces@icann.org');>] On Behalf Of George Kirikos Sent: Saturday, August 20, 2016 8:20 AM To: gnso-rpm-wg@icann.org <javascript:_e(%7B%7D,'cvml','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 <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 <tel:416-588-0269> http://www.leap.com/

On Sat, Aug 20, 2016 at 8:52 AM, Paul McGrady <policy@paulmcgrady.com <javascript:_e(%7B%7D,'cvml','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 <javascript:_e(%7B%7D,'cvml','policy@paulmcgrady.com');>

From: gnso-rpm-wg-bounces@icann.org <javascript:_e(%7B%7D,'cvml','gnso-rpm-wg-bounces@icann.org');>

[mailto:gnso-rpm-wg-bounces@icann.org <javascript:_e(%7B%7D,'cvml','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 <javascript:_e(%7B%7D,'cvml','psc@vlaw-dc.com');>>

Cc: gnso-rpm-wg@icann.org <javascript:_e(%7B%7D,'cvml','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 <javascript:_e(%7B%7D,'cvml','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 <tel:202-559-8597>/Direct

202-559-8750 <tel:202-559-8750>/Fax

202-255-6172 <tel:202-255-6172>/Cell

Twitter: @VlawDC

"Luck is the residue of design" -- Branch Rickey

From: gnso-rpm-wg-bounces@icann.org <javascript:_e(%7B%7D,'cvml','gnso-rpm-wg-bounces@icann.org');>

[mailto:gnso-rpm-wg-bounces@icann.org <javascript:_e(%7B%7D,'cvml','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 <javascript:_e(%7B%7D,'cvml','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 <javascript:_e(%7B%7D,'cvml','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 <javascript:_e(%7B%7D,'cvml','gnso-rpm-wg-bounces@icann.org');>> on behalf of Emil <emil@cv.ro <javascript:_e(%7B%7D,'cvml','emil@cv.ro');>>

Date: Friday, August 19, 2016 4:30 PM

To: George Kirikos <icann@leap.com <javascript:_e(%7B%7D,'cvml','icann@leap.com');>>

Cc: <gnso-rpm-wg@icann.org <javascript:_e(%7B%7D,'cvml','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 <javascript:_e(%7B%7D,'cvml','gnso-rpm-wg@icann.org');>

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-- Bei weiteren Fragen stehen wir Ihnen gerne zur Verfügung. Mit freundlichen Grüßen, Volker A. Greimann - Rechtsabteilung - Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net Web: www.key-systems.net / www.RRPproxy.net www.domaindiscount24.com / www.BrandShelter.com Folgen Sie uns bei Twitter oder werden Sie unser Fan bei Facebook: www.facebook.com/KeySystems www.twitter.com/key_systems Geschäftsführer: Alexander Siffrin Handelsregister Nr.: HR B 18835 - Saarbruecken Umsatzsteuer ID.: DE211006534 Member of the KEYDRIVE GROUP www.keydrive.lu Der Inhalt dieser Nachricht ist vertraulich und nur für den angegebenen Empfänger bestimmt. Jede Form der Kenntnisgabe, Veröffentlichung oder Weitergabe an Dritte durch den Empfänger ist unzulässig. Sollte diese Nachricht nicht für Sie bestimmt sein, so bitten wir Sie, sich mit uns per E-Mail oder telefonisch in Verbindung zu setzen. -------------------------------------------- Should you have any further questions, please do not hesitate to contact us. Best regards, Volker A. Greimann - legal department - Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net Web: www.key-systems.net / www.RRPproxy.net www.domaindiscount24.com / www.BrandShelter.com Follow us on Twitter or join our fan community on Facebook and stay updated: www.facebook.com/KeySystems www.twitter.com/key_systems CEO: Alexander Siffrin Registration No.: HR B 18835 - Saarbruecken V.A.T. ID.: DE211006534 Member of the KEYDRIVE GROUP www.keydrive.lu This e-mail and its attachments is intended only for the person to whom it is addressed. Furthermore it is not permitted to publish any content of this email. You must not use, disclose, copy, print or rely on this e-mail. If an addressing or transmission error has misdirected this e-mail, kindly notify the author by replying to this e-mail or contacting us by telephone.

As one of the Co-Chairs, I am now issuing a personal mea culpa for responding substantively on this topic. It is certainly one that may merit discussion when we enter into our UDRP review in 2018, and I note that I am for any legitimate topic related to our Charter assignment being in order, but am not advocating any particular outcome at this premature stage. That said, we should be sticking to online discussions of issues currently before the WG and not those that may arise months much less years away, to avoid unduly burdening WG members with extraneous emails as well as engaging in discussions that are outside of the broader context they should be engaged in. So I will not be opining further on the substance of this matter -- and hereby request that other members of the WG likewise keep their powder dry on UDRP matters until we have embarked on phase 2 of our lengthy project. Thank you. 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 Phil Corwin Sent: Saturday, August 20, 2016 9:25 AM To: Paul McGrady; 'Edward Morris' Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Questionable UDRPs & TM applications 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<mailto: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 ________________________________ 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

George and WG members: Speaking only for myself and in my capacity as one of the co-chairs, I would not favor a separate opt-in WG email list for premature discussion of UDRP matters. I expect that in the second half of 2017, when we are completing work on our report and recommendations related to new gTLD RPMs, the WG may well embark on targeted fact-finding to prepare for our phase 2 UDRP inquiry. But while a separate UDRP-related discussion list established now might be billed as "opt-in" many WG members may feel obliged to participate because of the great interest in the UDRP, and out of concern that failing to participate could tee up certain UDRP matters in a manner they do not favor. Also, while our work on the PDDRP has not been that straining, I expect that when we commence discussions of the TMCH and its related protections, and after that the URS, the work will become more demanding and the possibility of heated divergence more likely. Given that, I do not favor the attention of WG members being diverted, or their passions further catalyzed, by a separate out-of-phase officially sanctioned dialogue on UDRP matters. That said, this WG has no right or ability to prevent any of its individual members from pursuing their own preparations for the UDRP review that will commence in 2018. But, again, I do not believe that such discussions should take place on a WG-sanctioned and maintained email list, opt-in or otherwise. Regards, Philip 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 -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Saturday, August 20, 2016 10:16 AM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Questionable UDRPs & TM applications Sorry, just saw this post by Phil after I already completed the other email. Some of the issues re: trademark trolls might also occur within the PDDRP and/or TMCH in the future, since "gaming" behaviour affects all of the DRPs. What we're seeing now in the UDRP can migrate to the PDDRP if not addressed. Perhaps we might consider a parallel "opt-in" mailing list devoted to the UDRP, so that informal data can be shared by those who have an active interest in the topic, in preparation for 2018? Since it would be entirely "opt-in", it wouldn't burden anyone who didn't want to participate in it who was a member of the "main" PDP mailing list. By having such an opt-in mailing list on an informal basis, it might allow the main PDP to get off to a running start in 2018, since some of the topics might have already been raised in the informal parallel list, i.e. we'd be creating a knowledge base or repository on an informal basis that the main group could draw upon at their discretion. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Sat, Aug 20, 2016 at 10:02 AM, Phil Corwin <psc@vlaw-dc.com> wrote:

As one of the Co-Chairs, I am now issuing a personal mea culpa for responding substantively on this topic. It is certainly one that may merit discussion when we enter into our UDRP review in 2018, and I note that I am for any legitimate topic related to our Charter assignment being in order, but am not advocating any particular outcome at this premature stage.

That said, we should be sticking to online discussions of issues currently before the WG and not those that may arise months much less years away, to avoid unduly burdening WG members with extraneous emails as well as engaging in discussions that are outside of the broader context they should be engaged in.

So I will not be opining further on the substance of this matter -- and hereby request that other members of the WG likewise keep their powder dry on UDRP matters until we have embarked on phase 2 of our lengthy project.

Thank you.

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 Phil Corwin Sent: Saturday, August 20, 2016 9:25 AM To: Paul McGrady; 'Edward Morris'

Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Questionable UDRPs & TM applications

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

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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I think this kind of abuses should be solved by doing some changes in the rules of UDRP and URS. Meanwhile the arbitrators should be informed and educated about this new line of cases that can damage the reputation of the real trademarks. I believe that the IPC have a good possibility here to have a more active role to educate the arbitrators of NAF, WIPO, etc. Hector Héctor Ariel Manoff Vitale, Manoff & Feilbogen Viamonte 1145 10º Piso C1053ABW Buenos Aires República Argentina Te: (54-11) 4371-6100 Fax: (54-11) 4371-6365 E-mail: <mailto:amanoff@vmf.com.ar> amanoff@vmf.com.ar Web: <http://www.vmf.com.ar/> http://www.vmf.com.ar **************************************************************************************************************************************************** Esta comunicación tiene como destinatario a la persona o empresa a la cual está dirigida y puede contener información confidencial y reservada. Si el lector de este mensaje no es el destinatario o sus empleados o representantes, deberá proceder a reenviar el presente a su remitente. La distribución, diseminación o copiado de este mensaje podría constituir violación a la ley. Gracias. This email and any files transmitted with it are intended only for the use of the individual or entity to which it is addressed, and may contain information that is privileged, confidential, and exempt from disclosure under applicable law. If the reader of this message is not the intended recipient, or the employee or agent responsible for delivering the message to recipient, you are hereby notified that any dissemination, distribution or copying of this communication in error, please notify us immediately by telephone and return the original message to us at the above address. Thank you. **************************************************************************************************************************************************** De: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] En nombre de Paul McGrady Enviado el: sábado, 20 de agosto de 2016 9:52 Para: 'Edward Morris'; 'Phil Corwin' CC: gnso-rpm-wg@icann.org Asunto: 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 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 _______________________________________________ gnso-rpm-wg mailing list 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 Version: 2016.0.7752 / Virus Database: 4633/12811 - Release Date: 08/15/16 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg --- El software de antivirus Avast ha analizado este correo electrónico en busca de virus. https://www.avast.com/antivirus