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

Sat Aug 20 14:04:38 UTC 2016

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 at 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 at leap.com>
> Date: Sat, Aug 20, 2016, 9:19 AM
> To: gnso-rpm-wg at 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 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
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>>
>>
>>
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