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

Paul McGrady policy at paulmcgrady.com
Sat Aug 20 16:58:12 UTC 2016


Thanks Paul K.,

 

Your suggestion of tabling this is very welcome.  Even so, I think we have to make sure that we don’t imply other thinkers aren’t “playing nice” if we try to find the right balance of reciprocal obligations in UDRP reform (assuming the UDRP is ever diagnosed as needing reform).  I expect this will become a topic when these issues are visited at the proper time.  We will all have to be very patient, at that time, with the long wish lists that appear to have been growing over the last decade.  

 

Best,

Paul

 

 

Paul D. McGrady, Jr.

policy at paulmcgrady.com

 

 

 

From: Paul at law.es ZIMBRA [mailto:paul at law.es] 
Sent: Saturday, August 20, 2016 11:18 AM
To: Paul McGrady <policy at paulmcgrady.com>
Cc: George Kirikos <icann at leap.com>; gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] Questionable UDRPs & TM applications

 

Paul,

 

Let's play nice.  Proof of use is certainly not a financial disclosure and I would think any trademark holder acting in good faith should have no problem, showing actual use.

 

At any rate lets table this for the appropriate moment. 

Paul Keating


On 20 Aug 2016, at 4:45 PM, Paul McGrady <policy at paulmcgrady.com <mailto:policy at paulmcgrady.com> > wrote:

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 <mailto:policy at paulmcgrady.com> 



-----Original Message-----
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 George Kirikos
Sent: Saturday, August 20, 2016 8:20 AM
To: gnso-rpm-wg at icann.org <mailto: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 <mailto: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 <mailto:policy at paulmcgrady.com> 

 

 

 

 

 

 

 

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 Edward Morris

Sent: Friday, August 19, 2016 6:53 PM

To: Phil Corwin <psc at vlaw-dc.com <mailto:psc at vlaw-dc.com> >

 

 

Cc: gnso-rpm-wg at icann.org <mailto: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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