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

Wed Aug 24 22:28:17 UTC 2016

George,

I don’t see where anyone has directly addressed your points 2 or 3.  As someone who regularly files UDRP cases and has a strong interest in the fairness of the process, I’d like to hear your thoughts on the common causes for this problem.  When I send demand letters or pre-filing copies of complaints to registrants I use the email address listed in the whois record. If the resolving website has a “Contact Us” page or form I’ll use that as well.  In some cases I’ve picked up the phone and tried calling registrants.

The few times I’ve heard from a registrant after they were formally served with the complaint they’ve said things like “I thought your message was spam”, “my privacy service never forwarded  your email to me”, or “your email got caught in my spam filter.”

Do you have any suggestions for improving pre-complaint communication with registrants, especially those who use privacy services?  If I could get in touch with folks before filing a complaint it could save my clients a bunch of money and even possibly lead to negotiated purchases of some accused domains, thus benefiting both sides.

Regards,
Steve

[cid:52D5B2CC-E34D-4F64-9E81-94F42FEA419A]

Steven M. Levy, Esq.

Accent Law Group, Inc.
301 Fulton St.
Philadelphia, PA 19147

United States

Phone: +1-215-327-9094
Email: slevy at AccentLawGroup.com<mailto:slevy at accentlawgroup.com>

Website: www.AccentLawGroup.com<http://www.accentlawgroup.com/>

<http://www.accentlawgroup.com/>LinkedIn: www.linkedin.com/in/stevelevy43a/<http://www.linkedin.com/in/stevelevy43a/>
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On 8/20/16, 10:04 AM, "gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org> on behalf of George Kirikos" <gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org> on behalf of icann at leap.com<mailto:icann at leap.com>> wrote:

Hi Scott,

If there were greater safeguards to ensure that registrants were
*actually* properly served with the complaint, and had ample time to
retain counsel and prepare a response, that might be something to
consider.

i.e. the 3 biggest reasons for a respondent default are:

1. egregious cybersquatting, where the case is unwinnable (I'd call
this "active" default, since the respondent is making the active
choice to not defend the dispute),
2.  they never received actual notice of the complaint, and
3.  they received notice of the complaint, but couldn't prepare a
response in time

If we can take care of #1, while properly protecting against
"inadvertent" defaults in scenarios #2 and #3 (i.e. prevent those from
being gamed by complainants), then my concerns would be reduced.

The panelists would still need to scrutinize the complaint's evidence
and arguments, though, and not simply accept it "blindly" (i.e.
evidence and arguments sufficient to pass the minimum pleading
requirements that would pass the UDRP's 3-part test; some complaints
are entirely deficient, so shouldn't be accepted if the other side
doesn't show up).

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/

On Sat, Aug 20, 2016 at 9:41 AM, Scott Austin <SAustin at vlplawgroup.com<mailto:SAustin at vlplawgroup.com>> wrote:
Thank you George, excellent points. You may also want to consider adding a
true default rule (as in the courts and TTAB ) to that list to avoid
panelists becoming public defenders or engaging in judicial activism to
championv no-show respondents.

-------- Original Message --------
From: George Kirikos <icann at leap.com<mailto:icann at leap.com>>
Date: Sat, Aug 20, 2016, 9:19 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. 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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