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

Wed Aug 24 22:47:38 UTC 2016

With all due respect, aren't we supposed to defer discussion of this topic
until we are due to begin the UDRP review?  (I really say that only because
I, too, have comments of substance on these issues but did not raise them
because I thought it was not the right time to do so, per Phil's earlier
email.)

Doug

From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org]
On Behalf Of Steve Levy
Sent: Wednesday, August 24, 2016 6:28 PM
To: George Kirikos <icann at leap.com>; Scott Austin <SAustin at vlplawgroup.com>
Cc: gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] Questionable UDRPs & TM applications

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

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/> 

LinkedIn: www.linkedin.com/in/stevelevy43a/
<http://www.linkedin.com/in/stevelevy43a/>  
________________________________________
Notice: This communication, including attachments, may contain information
that is confidential and protected by the attorney/client or other
privileges. It constitutes non-public information intended to be conveyed
only to the designated recipient(s). If the reader or recipient of this
communication is not the intended recipient, an employee or agent of the
intended recipient who is responsible for delivering it to the intended
recipient, or you believe that you have received this communication in
error, please notify the sender immediately by return e-mail and promptly
delete this e-mail, including attachments without reading or saving them in
any manner. The unauthorized use, dissemination, distribution, or
reproduction of this e-mail, including attachments, is prohibited and may be
unlawful. Receipt by anyone other than the intended recipient(s) is not a
waiver of any attorney/client or other privilege.

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

_______________________________________________ gnso-rpm-wg mailing list

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

https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

This message contains information which may be confidential and legally

privileged. Unless you are the addressee, you may not use, copy or disclose

to anyone this message or any information contained in the message. If you

have received this message in error, please send me an email and delete this

message. Any tax advice provided by VLP is for your use only and cannot be

used to avoid tax penalties or for promotional or marketing purposes.

_______________________________________________

gnso-rpm-wg mailing list

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

https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20160824/42701efb/attachment-0001.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 17053 bytes
Desc: not available
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20160824/42701efb/image001-0001.png>