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

Sat Aug 20 14:57:00 UTC 2016

George and WG members:

Speaking only for myself and in my capacity as one of the co-chairs, I would not favor a separate opt-in WG email list for premature discussion of UDRP matters. 

I expect that in the second half of 2017, when we are completing work on our report and recommendations related to new gTLD RPMs, the WG may well embark on targeted fact-finding to prepare for our phase 2 UDRP inquiry. But while a separate UDRP-related discussion list established now might be billed as "opt-in" many WG members may feel obliged to participate because of the great interest in the UDRP, and out of concern that failing to participate could tee up certain UDRP matters in a manner they do not favor. 

Also, while our work on the PDDRP has not been that straining, I expect that when we commence discussions of the TMCH and its related protections, and after that the URS, the work will become more demanding and the possibility of heated divergence more likely. Given that, I do not favor the attention of WG members being diverted, or their passions further catalyzed, by a separate out-of-phase officially sanctioned dialogue on UDRP matters.

That said, this WG has no right or ability to prevent any of its individual members from pursuing their own preparations for the UDRP review that will commence in 2018. But, again, I do not believe that such discussions should take place on a WG-sanctioned and maintained email list, opt-in or otherwise.

Regards, Philip 

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

-----Original Message-----
From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of George Kirikos
Sent: Saturday, August 20, 2016 10:16 AM
To: gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] Questionable UDRPs & TM applications

Sorry, just saw this post by Phil after I already completed the other email.

Some of the issues re: trademark trolls might also occur within the PDDRP and/or TMCH in the future, since "gaming" behaviour affects all of the DRPs. What we're seeing now in the UDRP can migrate to the PDDRP if not addressed.

Perhaps we might consider a parallel "opt-in" mailing list devoted to the UDRP, so that informal data can be shared by those who have an active interest in the topic, in preparation for 2018? Since it would be entirely "opt-in", it wouldn't burden anyone who didn't want to participate in it who was a member of the "main" PDP mailing list.

By having such an opt-in mailing list on an informal basis, it might allow the main PDP to get off to a running start in 2018, since some of the topics might have already been raised in the informal parallel list, i.e. we'd be creating a knowledge base or repository on an informal basis that the main group could draw upon at their discretion.

Sincerely,

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

On Sat, Aug 20, 2016 at 10:02 AM, Phil Corwin <psc at vlaw-dc.com> wrote:
> As one of the Co-Chairs, I am now issuing a personal mea culpa for 
> responding substantively on this topic. It is certainly one that may 
> merit discussion when we enter into our UDRP review in 2018, and I 
> note that I am for any legitimate topic related to our Charter 
> assignment being in order, but am not advocating any particular outcome at this premature stage.
>
>
>
> That said, we should be sticking to online discussions of issues 
> currently before the WG and not those that may arise months much less 
> years away, to avoid unduly burdening WG members with extraneous 
> emails as well as engaging in discussions that are outside of the 
> broader context they should be engaged in.
>
>
>
> So I will not be opining further on the substance of this matter -- 
> and hereby request that other members of the WG likewise keep their 
> powder dry on UDRP matters until we have embarked on phase 2 of our lengthy project.
>
>
>
> Thank you.
>
>
>
> 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 Phil Corwin
> Sent: Saturday, August 20, 2016 9:25 AM
> To: Paul McGrady; 'Edward Morris'
>
>
> Cc: gnso-rpm-wg at icann.org
> Subject: Re: [gnso-rpm-wg] Questionable UDRPs & TM applications
>
>
>
> Actually it is more than a year premature, as we aren’t scheduled to 
> start UDRP review until early 2018.
>
>
>
> That said, the TMCH has qualitative standards for the marks that can 
> establish sunrise registration rights (as George just noted in a 
> separate email as I was typing this), so there is some precedent for 
> minimum standards for certain purposes.
>
>
>
> Now back to the work at hand – PDDRP, and getting ready for kicking 
> off TMCH review.
>
>
>
> 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: Paul McGrady [mailto:policy at paulmcgrady.com]
> Sent: Saturday, August 20, 2016 8:52 AM
> To: 'Edward Morris'; Phil Corwin
> Cc: gnso-rpm-wg at icann.org
> Subject: RE: [gnso-rpm-wg] Questionable UDRPs & TM applications
>
>
>
> 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
>
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