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

George Kirikos icann at leap.com
Sat Aug 20 13:19:45 UTC 2016


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 at 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 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> 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]
> On Behalf Of Emil
> Sent: Friday, August 19, 2016 5:44 PM
> To: Paul Keating
> Cc: 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> 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> on behalf of Emil <emil at cv.ro>
> Date: Friday, August 19, 2016 4:30 PM
> To: George Kirikos <icann at leap.com>
> Cc: <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. 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 at 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 at icann.org
> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>
>
> _______________________________________________
> gnso-rpm-wg mailing list
> gnso-rpm-wg at icann.org
> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg


More information about the gnso-rpm-wg mailing list