[gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
brian.beckham at wipo.int
Tue Dec 13 09:22:01 UTC 2016
It seems that your question speaks to the eligibility criteria for a particular TLD operator (whether in sunrise or thereafter), not to the TMCH – which again is meant to be a central repository on which registries/RPMs can draw. In that case, also noting the broader RPM and TMCH policy development history, again we must be mindful to avoid the TMCH being in a position of “rendering a decision” on a previously-obtained valid trademark registration.
As to the information from Mr. Kirikos, these ccTLD-specific colloquial uses of the term “generic”, notably in the context of respondent defenses, are occurring (as applied to this context) downstream from the TMCH. In other words, we should avoid crafting (restrictive) rules for the TMCH which may already prejudge a particular legal application (here, in the dispute resolution context), but should allow sufficient flexibility for panel assessment of the potential applicability of arguments about the strength of a particular mark in the dispute resolution process itself.
Brian Beckham | Head, Internet Dispute Resolution Section | WIPO Arbitration and Mediation Center
34 chemin des Colombettes, 1211 Geneva 20, Switzerland | T +4122 338 8247 | E brian.beckham at wipo.int<mailto:brian.beckham at wipo.int> | www.wipo.int
From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Paul Tattersfield
Sent: Tuesday, December 13, 2016 12:37 AM
To: Paul Keating
Cc: gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Would this wording get to the root of the issue without the contention perhaps?
Should the scope of the TMCH be limited to apply only to the categories of goods and services in which the words within a trademark can enjoy protection? If so, how?
On Mon, Dec 12, 2016 at 9:23 PM, Paul Keating <Paul at law.es<mailto:Paul at law.es>> wrote:
But it does show that it is not so much rocket science.
On 12/12/16, 10:11 PM, "J. Scott Evans" <gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org> on
behalf of jsevans at adobe.com<mailto:jsevans at adobe.com>> wrote:
>That don¹t make it right.
>J. Scott Evans | Associate General Counsel - Trademarks, Copyright,
>Domains & Marketing |
>345 Park Avenue
>San Jose, CA 95110
>408.536.5336<tel:408.536.5336> (tel), 408.709.6162<tel:408.709.6162> (cell)
>jsevans at adobe.com<mailto:jsevans at adobe.com>
>On 12/12/16, 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>>
>>FYI, re: "generic", both the .uk and the .nz dispute policies
>>reference "generic" domain names, see:
>>"8.1.2 The Domain Name is generic or descriptive and the Respondent is
>>making fair use of it;"
>>"Generic Term means a word or phrase that is a common name in general
>>public use for a product, service, profession, place or thing. For
>>example: toy; shop; cleaner; lawyers; Wellington; sparkling-wine"
>>"6.1.2. The Domain Name is generic or descriptive and the Respondent
>>is making fair use of it in a way which is consistent with its generic
>>or descriptive character;"
>>gnso-rpm-wg mailing list
>>gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
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