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

Sat Aug 20 22:05:49 UTC 2016

Greg,  do you feel better now?

Can we move on?

Paul Keating

> On 20 Aug 2016, at 7:43 PM, Greg Shatan <gregshatanipc at gmail.com> wrote:
> 
> I had drafted a lengthy response to some of the earlier emails in this thread, but out of respect for our co-Chair's request, I'll "bookmark" it in my drafts folder for the appropriate time -- in spite of Paul McGrady's wise counsel that "in ICANNland, bad ideas get traction unless immediately confronted."
> 
> As for "playing nice," I will point out that Paul McGrady's email regarding potentially requiring financial disclosures by domain name applicants was in response to George's email suggestion to require financial disclosures by UDRP complainants, not (as assumed) the earlier "proof of use" suggestion.  Thus, the scolding to "play nice" was predicated on a false premise and completely uncalled-for.  On a topic where passions run high and imaginations run unchecked, it's probably a wise thing to check what people are responding to before responding to them.
> 
> I find it amusing that the command to "play nice" was issued almost the first time somebody said something remotely unfavorable to respondents, on a thread previously devoted almost entirely to impugning, narrowing the rights of and raising the bar for trademark owners -- often based on statements that were far more deserving of that cautionary command.  While many of these statements were highly rebuttable (to say the least...), I'll hold the catalogue of rebuttals for when the time comes.
> 
> Greg
> 
>> On Sat, Aug 20, 2016 at 12:58 PM, Paul McGrady <policy at paulmcgrady.com> wrote:
>> Thanks Paul K.,
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>> 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. 
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>> Best,
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>> Paul
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>> Paul D. McGrady, Jr.
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>> policy at paulmcgrady.com
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>> 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
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>> Paul,
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>> 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.
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>> 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> 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
>> 
>> 
>> 
>> -----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
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>> want to wade in on the substance at this time, we should note that
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>> what is being suggested here is that ICANN give preference to certain
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>> national trademark regimes and disregard others.  Tricky topic in
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>> ICANNland for sure, especially these days.
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>> Best to all,
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>> Paul
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>> Paul D. McGrady, Jr.
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>> policy at paulmcgrady.com
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>> From: gnso-rpm-wg-bounces at icann.org
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>> [mailto:gnso-rpm-wg-bounces at icann.org]
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>> On Behalf Of Edward Morris
>> 
>> Sent: Friday, August 19, 2016 6:53 PM
>> 
>> To: Phil Corwin <psc at vlaw-dc.com>
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>>  
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>> Cc: gnso-rpm-wg at icann.org
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>> Subject: Re: [gnso-rpm-wg] Questionable UDRPs & TM applications
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>> Excellent point, Phil.
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>> Sent from my iPhone
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>> On 20 Aug 2016, at 00:49, Phil Corwin <psc at vlaw-dc.com> wrote:
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>> This suggests to me that all trademarks are not created equal, and
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>> that when we reach our UDRP work we may wish to address the issue of
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>> whether a certain quality of trademark should be required for filing a UDRP.
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>> Philip S. Corwin, Founding Principal
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>> Virtualaw LLC
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>> 1155 F Street, NW
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>> Suite 1050
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>> Washington, DC 20004
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>> 202-559-8597/Direct
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>> 202-559-8750/Fax
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>> 202-255-6172/Cell
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>> Twitter: @VlawDC
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>> "Luck is the residue of design" -- Branch Rickey
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>> From: gnso-rpm-wg-bounces at icann.org
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>> [mailto:gnso-rpm-wg-bounces at icann.org]
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>> 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
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>> Paul, thank you for appreciating my concern.
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>> I am very pleased to see that I can bring value in this exclusive
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>> community of professionals.
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>> In the last 12 years I've seen a lot of cases where legitimate SMEs
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>> get bullied with the "we'll get your domain" threat based on abusive
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>> TM registrations, mostly postdating the domain name registration
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>> dates. In some cases I am very familiar with the patterns - as in how
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>> relatively established website owners try to game the system - concrete ways.
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>>  
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>> This is a major problem in certain countries of Europe (eastern block)
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>> and outside Europe (countries like Tunisia let's say) where you can
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>> theoretically register any trademark even if it is not necessarily
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>> distinctive, special nor recognizable.
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>> On 20 Aug 2016 00:15, Paul Keating <Paul at law.es> wrote:
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>> This and comments such as George's should not be lost.  These comments
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>> need to be retained and specifically addressed during the UDRP portion of the WG.
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>> From: <gnso-rpm-wg-bounces at icann.org> on behalf of Emil <emil at cv.ro>
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>> 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
>> 
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>> George, often TM registrations are granted on bogus or strange claims.
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>> For example Christian Louboutin was granted a TM for red shoes
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>> outsole. By this logic BMW could be granted a TM for silver cars.
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>>  
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>> In the domain world:
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>> There is a car rental company called economycarrentals.com. They tried
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>> to obtain a TM at European level for "economy car rentals", a super
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>> generic term used by thousands of rental agencies. Why? So that they
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>> can claim economyrentacar.com and economyrentalcars.com in WIPO - the
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>> EMD of their main competitor.
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>>  
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>> They were refused (now twice) an EM Europe Wide trademark for lack of
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>> distinctiveness but went on and tried at country level. A handfull of
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>> countries allowed them to register a word (not figurative) trademark
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>> on "economy car rentals" a dictionary super generic formulation. Now
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>> they will threaten & hussle with a WIPO arbitration all the local TLD
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>> owners for those particular countries.
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>>  
>> 
>> Emil
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>>  
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>> _______________________________________________ gnso-rpm-wg mailing
>> 
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>> 
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