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

Sun Aug 21 16:46:20 UTC 2016

Let’s all hug it out and enjoy our Sunday ;-)

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 Greg Shatan
Sent: Sunday, August 21, 2016 3:15 AM
To: Paul at law.es ZIMBRA
Cc: Zahid Jamil-IG via gnso-rpm-wg
Subject: Re: [gnso-rpm-wg] Questionable UDRPs & TM applications

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<mailto:Paul at law.es> ZIMBRA <paul at law.es<mailto: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<tel: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<tel:202-559-8597>/Direct

202-559-8750<tel:202-559-8750>/Fax

202-255-6172<tel: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<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

_______________________________________________ gnso-rpm-wg mailing
list gnso-rpm-wg at icann.org<javascript:_e(%7B%7D,'cvml','gnso-rpm-wg at icann.org');>
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

________________________________

No virus found in this message.
Checked by AVG - www.avg.com<http://www.avg.com>
Version: 2016.0.7752 / Virus Database: 4633/12811 - Release Date:
08/15/16

_______________________________________________
gnso-rpm-wg mailing list
gnso-rpm-wg at icann.org<javascript:_e(%7B%7D,'cvml','gnso-rpm-wg at icann.org');>
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

_______________________________________________
gnso-rpm-wg mailing list
gnso-rpm-wg at icann.org<javascript:_e(%7B%7D,'cvml','gnso-rpm-wg at icann.org');>
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________
gnso-rpm-wg mailing list
gnso-rpm-wg at icann.org<javascript:_e(%7B%7D,'cvml','gnso-rpm-wg at icann.org');>
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

_______________________________________________
gnso-rpm-wg mailing list
gnso-rpm-wg at icann.org<javascript:_e(%7B%7D,'cvml','gnso-rpm-wg at icann.org');>
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

_______________________________________________
gnso-rpm-wg mailing list
gnso-rpm-wg at icann.org<javascript:_e(%7B%7D,'cvml','gnso-rpm-wg at icann.org');>
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

________________________________
No virus found in this message.
Checked by AVG - www.avg.com<http://www.avg.com>
Version: 2016.0.7752 / Virus Database: 4633/12811 - Release Date: 08/15/16
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20160821/aa0a7b54/attachment-0001.html>