[gnso-rpm-wg] Questionable UDRPs & TM applications

Sat Aug 20 12:52:15 UTC 2016

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 at paulmcgrady.com

From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Edward Morris
Sent: Friday, August 19, 2016 6:53 PM
To: Phil Corwin <psc at vlaw-dc.com>
Cc: gnso-rpm-wg at 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 at vlaw-dc.com <mailto:psc at 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 at icann.org <mailto:gnso-rpm-wg-bounces at icann.org>  [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Emil
Sent: Friday, August 19, 2016 5:44 PM
To: Paul Keating
Cc: gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at 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 at law.es <mailto:Paul at 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 at icann.org <mailto:gnso-rpm-wg-bounces at icann.org> > on behalf of Emil <emil at cv.ro <mailto:emil at cv.ro> >
Date: Friday, August 19, 2016 4:30 PM
To: George Kirikos <icann at leap.com <mailto:icann at leap.com> >
Cc: <gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at 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

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