[Gnso-igo-ingo-crp] Fwd: HMRC recover two domain names using their trademark

[Paul Keating]

There is no post domain dispute ³appeal² right in the UK after the Air
Emirates decision.  Although that case dealt with a post DRS .co.uk domain,
the reasoning applies to the UDRP just as well (regardless of what I might
think of the judge¹s logic).

This is a continuing issue for UDRP purposes.   The language as written
simply presumed that a post UDRP claim of sorts existed ³just like in the
US².  This is hardly the case.

 It is for this reason that I long ago reversed my original advise to
clients regarding where to register.  I advise registering all valuable
domains with a US registrar.  This serves several purposes:

1. It gives them the ability to file post-UDRP under the ACPA
2. It gives them a virtual slam dunk on any claim involving a non-use
registered trademark
3. It gives them the ability to challenge the distinctive nature of the
underlying trademark
4. It gives them the ability to seek damages
5. They can still opt NOT to pursue the claim if they are concerned about a
possible counterclaim.


I continue to cringe on ICANN  Working Group calls whenever I hear US
attorneys speak up.  They repeatedly fail to understand that the real world
is not like ³their² world.


PRK

From:  <gnso-igo-ingo-crp-bounces at icann.org> on behalf of Phil Corwin
<psc at vlaw-dc.com>
Date:  Wednesday, May 3, 2017 at 8:23 PM
To:  "gnso-igo-ingo-crp at icann.org" <gnso-igo-ingo-crp at icann.org>
Subject:  [Gnso-igo-ingo-crp] Fwd: HMRC recover two domain names using their
trademark

> FYI, here's a just published WIPO UDRP decision in which the UK's taxing
> authority successfully recovered two domains.
> 
> While the respondent resided in the UK and thus any "appeal" would have been
> to a UK court (presuming that the registrars were similarly situated) this
> filing still involved acceptance of the mutual jurisdiction clause by a
> sovereign entity.
> 
> 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
> 
> Sent from my iPad
> 
> Begin forwarded message:
> 
>> From: Phil Corwin <psc at vlaw-dc.com>
>> Date: May 3, 2017 at 2:18:33 PM EDT
>> To: Phil Corwin <psc at vlaw-dc.com>
>> Subject: HMRC recover two domain names using their trademark
>> 
>> 
>> http://www.trademarksandbrandsonline.com/news/hmrc-recover-two-domain-names-u
>> sing-their-trademark-4988?utm_source=World+IP+Review&utm_campaign=3247f97d3b-
>> TBO_Digital_Newsletter_19_04_2017&utm_medium=email&utm_term=0_d76dcadc01-3247
>> f97d3b-27370301
>> 
>> 
>> 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
>> 
>> Sent from my iPad
> _______________________________________________ Gnso-igo-ingo-crp mailing list
> Gnso-igo-ingo-crp at icann.org
> https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp


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