This raises again the issue discussed during the call. Unless I am mistaken the issue arises in the context of repeated infringements in which the registry is culpable - beyond merely receiving consideration for the sale/registration of the domain. The current discussion emphasizes that the violation is fact-specific. That is absent a truly famous trademark - of which there are very very few, the mere registration of a domain without conflicting use does not infringe upon the rights of any trademark holder. We must remember that trademark registration is by class and registration of an identical mark in a nonconflicting class is expressly permissible. The limitations period should run from the date that the complainant knew or, with use of reasonable diligence, including monitoring services, could have known. The period should be limited accordingly . I suggest 1 year. Further, to the extent the claim is based upon other acts of the registry those claims must meet the same statute of limitations. The reason for my position is that statutes of limitations serve two functions. They prevent the raising of stale claims as to which evidence is lost or unavailable over time and they place upon the injured party both an obligation to police and to bring a claim within a reasonable period so as to prevent the first possibility from occurring. Paul Keating

On 20 Jul 2016, at 8:12 PM, Reuter, Renee M <Renee.M.Reuter@ehi.com> wrote:

If a time statute of limitation is added, I would recommend the time toll from the time that the complainant learned about the problematic registration rather than tolling from the date of the registration. An domain may not be a problem if it is not put in use. Having the statute of limitation tolling from the time of the registration puts a trademark owner at an unfair advantage, and could encourage domain owners to hold onto a domain for a period of time before putting it to abusive use.

Sincerely,

<image001.gif>

Renee Reuter Intellectual Property Counsel Legal Department 314-512-3234

From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Steve Levy Sent: Wednesday, July 20, 2016 12:59 PM To: George Kirikos; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] PDDRP topics -- limitation period to bring a PDDRP

George,

I understand the foundation of your idea - that parties should not have greater rights through the PDDRP than they would in a court of law. But, by the same token, they shouldn't have lesser rights either.

As such, I suggest revising your recommendation so that any time limit for bringing a PDDRP claim would be the longer of the applicable statute of limitations for such a claim in the complainant’s or respondent's jurisdictions if such claim were to have been brought in the courts.

Regards, Steve

<image002.png> 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 Website: www.AccentLawGroup.com LinkedIn: 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 7/20/16, 1:49 PM, "gnso-rpm-wg-bounces@icann.org on behalf of George Kirikos" <gnso-rpm-wg-bounces@icann.org on behalf of icann@leap.com> wrote:

Hi folks,

I don't think this was brought up before yet in the context of the PDDRP, but perhaps it can be added to the list of topics.

It would be very odd if complainants were allowed to bring a PDDRP for a matter that was not able to be brought by them in a court of law, because it was barred by the relevant statute of limitations. I think amending the PDDRP to explicitly add a time limit for bringing a PDDRP would make sense, to handle this situation. 2 years would be a suitable limit, in my opinion, and would help ensure that complaints are brought in a timely fashion.

Thoughts?

Sincerely,

George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

CONFIDENTIALITY NOTICE: This e-mail and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed and may contain confidential and privileged information protected by law. If you received this e-mail in error, any review, use, dissemination, distribution, or copying of the e-mail is strictly prohibited. Please notify the sender immediately by return e-mail and delete all copies from your system.

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I agree that a mutual jurisdiction should be specified. HOWEVER, as we have seen in the context of the UDRP there are many jurisdictions that satisfy the conduction for being a "mutual jurisdiction" but that do not recognize the underlying claim as a valid cause of action. In the UDRP context this often leaves the respondent in a position in which it may obtain the automatic suspension of decision only by filing in a jurisdiction that does not recognize its right to do so. Paul Keating

On 20 Jul 2016, at 8:26 PM, George Kirikos <icann@leap.com> wrote:

Steve brings up (indirectly) an interesting topic, namely that there is no "mutual jurisdiction" clause to the PDDRP (21.3 only says a "court of competent jurisdiction"). If a complaint (or appeal) was brought by one side in a jurisdiction that the other side doesn't accept, how would it be resolved?

Obviously it would have to be resolved by the court in which the law suit was brought (i.e as a defense to the action) and/or some other "superior" jurisdiction. [Perhaps some of the registrars, who have similar "court of competent jurisdiction" language in their registrar agreements might want to chime in......I hope that Tucows, for example, would ignore any orders from a Turkish or Iranian court for a Canadian or US-based registrant who obeys Canadian/US laws.]

So, if we modified the time limit in the manner he suggests, we have to be very careful to phrase things in such a manner as to not assume that a certain jurisdiction's time limits would actually apply. i.e. the location of the registry operator would definitely be a valid jurisdiction to bring an action against them. The preferred location of the TM holder / PDDRP complainant may or may not be a valid jurisdiction.

Sincerely,

George Kirikos 416-588-0269 http://www.leap.com/

...

On Wed, Jul 20, 2016 at 1:59 PM, Steve Levy <slevy@accentlawgroup.com> wrote: George,

I understand the foundation of your idea - that parties should not have greater rights through the PDDRP than they would in a court of law. But, by the same token, they shouldn't have lesser rights either.

As such, I suggest revising your recommendation so that any time limit for bringing a PDDRP claim would be the longer of the applicable statute of limitations for such a claim in the complainant’s or respondent's jurisdictions if such claim were to have been brought in the courts.

Regards, Steve

<Accent Law Logo NEW Very Small[4].png> 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 Website: www.AccentLawGroup.com LinkedIn: 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 7/20/16, 1:49 PM, "gnso-rpm-wg-bounces@icann.org on behalf of George Kirikos" <gnso-rpm-wg-bounces@icann.org on behalf of icann@leap.com> wrote:

Hi folks,

I don't think this was brought up before yet in the context of the PDDRP, but perhaps it can be added to the list of topics.

It would be very odd if complainants were allowed to bring a PDDRP for a matter that was not able to be brought by them in a court of law, because it was barred by the relevant statute of limitations. I think amending the PDDRP to explicitly add a time limit for bringing a PDDRP would make sense, to handle this situation. 2 years would be a suitable limit, in my opinion, and would help ensure that complaints are brought in a timely fashion.

Thoughts?

Sincerely,

George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ 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

Actually, just to followup on my prior comment, the jurisdiction question is a bit more complex for the PDDRP than I earlier indicated. The actual PDDRP policy https://newgtlds.icann.org/en/program-status/pddrp https://newgtlds.icann.org/en/applicants/agb/pddrp-04jun12-en.pdf mentions "court of competent jurisdiction challenging the Expert Determination of liability against the registry operator" in section 21.3 However, if you scroll down on that page, there's a newer document (PDF is undated) from October 2013 with the exact rules of the procedure. https://newgtlds.icann.org/en/applicants/agb/pddrp-rules-15oct13-en.pdf Those rules *do* mention a specific jurisdiction, as per section 3(b)(x), namely: "Complainant will submit, with respect to any challenges to a decision in the administrative proceeding, to the jurisdiction of the courts where the Registry has its principle place of business". So, if we add a limitation period to the PDDRP, it should be that of the location of the Registry. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Wed, Jul 20, 2016 at 2:26 PM, George Kirikos <icann@leap.com> wrote:

Steve brings up (indirectly) an interesting topic, namely that there is no "mutual jurisdiction" clause to the PDDRP (21.3 only says a "court of competent jurisdiction"). If a complaint (or appeal) was brought by one side in a jurisdiction that the other side doesn't accept, how would it be resolved?

Obviously it would have to be resolved by the court in which the law suit was brought (i.e as a defense to the action) and/or some other "superior" jurisdiction. [Perhaps some of the registrars, who have similar "court of competent jurisdiction" language in their registrar agreements might want to chime in......I hope that Tucows, for example, would ignore any orders from a Turkish or Iranian court for a Canadian or US-based registrant who obeys Canadian/US laws.]

So, if we modified the time limit in the manner he suggests, we have to be very careful to phrase things in such a manner as to not assume that a certain jurisdiction's time limits would actually apply. i.e. the location of the registry operator would definitely be a valid jurisdiction to bring an action against them. The preferred location of the TM holder / PDDRP complainant may or may not be a valid jurisdiction.

Sincerely,

George Kirikos 416-588-0269 http://www.leap.com/

On Wed, Jul 20, 2016 at 1:59 PM, Steve Levy <slevy@accentlawgroup.com> wrote:

...

George,

I understand the foundation of your idea - that parties should not have greater rights through the PDDRP than they would in a court of law. But, by the same token, they shouldn't have lesser rights either.

As such, I suggest revising your recommendation so that any time limit for bringing a PDDRP claim would be the longer of the applicable statute of limitations for such a claim in the complainant’s or respondent's jurisdictions if such claim were to have been brought in the courts.

Regards, Steve

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 <slevy@accentlawgroup.com>

Website: www.AccentLawGroup.com <http://www.accentlawgroup.com/>

<http://www.accentlawgroup.com/>LinkedIn: 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 7/20/16, 1:49 PM, "gnso-rpm-wg-bounces@icann.org on behalf of George Kirikos" <gnso-rpm-wg-bounces@icann.org on behalf of icann@leap.com> wrote:

Hi folks,

I don't think this was brought up before yet in the context of the PDDRP, but perhaps it can be added to the list of topics.

It would be very odd if complainants were allowed to bring a PDDRP for a matter that was not able to be brought by them in a court of law, because it was barred by the relevant statute of limitations. I think amending the PDDRP to explicitly add a time limit for bringing a PDDRP would make sense, to handle this situation. 2 years would be a suitable limit, in my opinion, and would help ensure that complaints are brought in a timely fashion.

Thoughts?

Sincerely,

George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

Thank you, Paul. Perhaps I work with different contract forms as I've not seen many specific time limitations on addressing disputes (through arbitration or otherwise). On rare occasions I've seen use of terms like "promptly" or "without delay" but not a specified number of months/years. As for this situation, there's no reason why it must differ. I'm simply trying to propose common ground based on existing equitable considerations in the hope that we can reach a consensus and move on to more important issues as per our WG's timeline. Regards, Steve From: "Paul@law.es<mailto:Paul@law.es> ZIMBRA" <paul@law.es<mailto:paul@law.es>> Date: Wednesday, July 20, 2016 at 3:05 PM To: "Steven M. Levy, Esq." <slevy@accentlawgroup.com<mailto:slevy@accentlawgroup.com>> Cc: George Kirikos <icann@leap.com<mailto:icann@leap.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] PDDRP topics -- limitation period to bring a PDDRP Steve, Admirable comment but you will no doubt note that most contractual,arbitration provisions have a very limited "statute of limitations". Why then must this situation differ? Paul Keating On 20 Jul 2016, at 7:59 PM, Steve Levy <slevy@accentlawgroup.com<mailto:slevy@accentlawgroup.com>> wrote: George, I understand the foundation of your idea - that parties should not have greater rights through the PDDRP than they would in a court of law. But, by the same token, they shouldn't have lesser rights either. As such, I suggest revising your recommendation so that any time limit for bringing a PDDRP claim would be the longer of the applicable statute of limitations for such a claim in the complainant's or respondent's jurisdictions if such claim were to have been brought in the courts. Regards, Steve <Accent Law Logo NEW Very Small[4].png> 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 7/20/16, 1:49 PM, "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 folks, I don't think this was brought up before yet in the context of the PDDRP, but perhaps it can be added to the list of topics. It would be very odd if complainants were allowed to bring a PDDRP for a matter that was not able to be brought by them in a court of law, because it was barred by the relevant statute of limitations. I think amending the PDDRP to explicitly add a time limit for bringing a PDDRP would make sense, to handle this situation. 2 years would be a suitable limit, in my opinion, and would help ensure that complaints are brought in a timely fashion. Thoughts? Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ 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