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

[Greg Shatan]

Wow.  Not sure what I did to merit _that_ email.  I thought we were
supposed to "play nice."

Clearly, I didn't write that email to "feel better." I did it to put a
marker down that there were allegations made in this thread that can and
will be rebutted when the time comes.  Our co-Chair asked us to move on
and I respected that request.  But I didn't want anyone to think these
statements were correct or generally agreed to just because there was no
substantive response on this thread.

We can move on now (in fact, I thought we already had -- that was kind of
the point of the prior email). But we'll be back.

On Saturday, August 20, 2016, Paul at law.es ZIMBRA <paul at law.es> wrote:

> 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
> <javascript:_e(%7B%7D,'cvml','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
> <javascript:_e(%7B%7D,'cvml','policy at paulmcgrady.com');>> wrote:
>
>> 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
>> <javascript:_e(%7B%7D,'cvml','policy at paulmcgrady.com');>
>>
>>
>>
>>
>>
>>
>>
>> *From:* Paul at law.es <javascript:_e(%7B%7D,'cvml','Paul at law.es');> ZIMBRA
>> [mailto:paul at law.es <javascript:_e(%7B%7D,'cvml','paul at law.es');>]
>> *Sent:* Saturday, August 20, 2016 11:18 AM
>> *To:* Paul McGrady <policy at paulmcgrady.com
>> <javascript:_e(%7B%7D,'cvml','policy at paulmcgrady.com');>>
>> *Cc:* George Kirikos <icann at leap.com
>> <javascript:_e(%7B%7D,'cvml','icann at leap.com');>>; gnso-rpm-wg at icann.org
>> <javascript:_e(%7B%7D,'cvml','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
>> <javascript:_e(%7B%7D,'cvml','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
>> <javascript:_e(%7B%7D,'cvml','policy at paulmcgrady.com');>
>>
>>
>>
>> -----Original Message-----
>> From: gnso-rpm-wg-bounces at icann.org
>> <javascript:_e(%7B%7D,'cvml','gnso-rpm-wg-bounces at icann.org');> [
>> mailto:gnso-rpm-wg-bounces at icann.org
>> <javascript:_e(%7B%7D,'cvml','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
>> <javascript:_e(%7B%7D,'cvml','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
>> <javascript:_e(%7B%7D,'cvml','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
>> <javascript:_e(%7B%7D,'cvml','policy at paulmcgrady.com');>
>>
>>
>>
>>
>>
>>
>>
>>
>>
>>
>>
>>
>>
>>
>>
>> From: gnso-rpm-wg-bounces at icann.org
>> <javascript:_e(%7B%7D,'cvml','gnso-rpm-wg-bounces at icann.org');>
>>
>> [mailto:gnso-rpm-wg-bounces at icann.org
>> <javascript:_e(%7B%7D,'cvml','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
>> <javascript:_e(%7B%7D,'cvml','psc at vlaw-dc.com');>>
>>
>>
>>
>>
>>
>> Cc: gnso-rpm-wg at icann.org
>> <javascript:_e(%7B%7D,'cvml','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
>> <javascript:_e(%7B%7D,'cvml','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
>> <javascript:_e(%7B%7D,'cvml','gnso-rpm-wg-bounces at icann.org');>
>>
>> [mailto:gnso-rpm-wg-bounces at icann.org
>> <javascript:_e(%7B%7D,'cvml','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
>> <javascript:_e(%7B%7D,'cvml','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
>> <javascript:_e(%7B%7D,'cvml','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
>> <javascript:_e(%7B%7D,'cvml','gnso-rpm-wg-bounces at icann.org');>> on
>> behalf of Emil <emil at cv.ro <javascript:_e(%7B%7D,'cvml','emil at cv.ro');>>
>>
>> Date: Friday, August 19, 2016 4:30 PM
>>
>> To: George Kirikos <icann at leap.com
>> <javascript:_e(%7B%7D,'cvml','icann at leap.com');>>
>>
>> Cc: <gnso-rpm-wg at icann.org
>> <javascript:_e(%7B%7D,'cvml','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
>>
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>>
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>>
>>
>>
>>
>>
>>
>>
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