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

Sat Aug 20 15:45:22 UTC 2016

Thanks George.  An interesting idea.  I wonder how Respondents would feel about a reciprocal requirement that they turn over audited financial statements in order to have standing to register a domain name?  You might have finally cooked up the deterrent to cybersquatting in the first place!  

Regards,
Paul

Paul D. McGrady, Jr.
policy at paulmcgrady.com

-----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 8:20 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
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> 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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