[gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016

Tue Dec 13 11:46:21 UTC 2016

Paul, I agree, lets try to keep as much of the question as possible and deal
with all of this during the discussion.

PRK

From:  Paul Tattersfield <gpmgroup at gmail.com>
Date:  Tuesday, December 13, 2016 at 11:54 AM
To:  "Beckham, Brian" <brian.beckham at wipo.int>
Cc:  Paul Keating <paul at law.es>, "gnso-rpm-wg at icann.org"
<gnso-rpm-wg at icann.org>
Subject:  Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated
categories document - 2 December 2016

> Agreed Brian, however my intention is to re-work the question as little as
> possible rather than advocate for or against its flawed or otherwise
> contentions at this consideration of questions stage.
> 
> Best regards, Paul
> 
> On Tue, Dec 13, 2016 at 9:22 AM, Beckham, Brian <brian.beckham at wipo.int>
> wrote:
>> Paul, 
>>  
>> 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.
>>  
>> Regards,
>>  
>> Brian
>>  
>> Brian Beckham|Head, Internet Dispute Resolution Section|WIPO Arbitration and
>> Mediation Center
>> 34 chemin des Colombettes, 1211 Geneva 20, Switzerland|T +4122 338 8247
>> <tel:+41%2022%20338%2082%2047> |E brian.beckham at wipo.int|www.wipo.int
>> <http://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?
>> 
>> Yours sincerely,
>> 
>> Paul
>> 
>>  
>> 
>> On Mon, Dec 12, 2016 at 9:23 PM, Paul Keating <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 on
>> 
>> behalf of jsevans at adobe.com> wrote:
>> 
>>> >That don¹t make it right.
>>> >
>>> >J. Scott Evans | Associate General Counsel - Trademarks, Copyright,
>>> >Domains & Marketing |
>>> >Adobe
>>> >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
>>> >www.adobe.com <http://www.adobe.com>
>>> >
>>> >
>>> >
>>> >
>>> >
>>> >
>>> >
>>> >
>>> >On 12/12/16, 10:04 AM, "gnso-rpm-wg-bounces at icann.org on behalf of George
>>> >Kirikos" <gnso-rpm-wg-bounces at icann.org on behalf of icann at leap.com>
>>> >wrote:
>>> >
>>>> >>FYI, re: "generic", both the .uk and the .nz dispute policies
>>>> >>reference "generic" domain names, see:
>>>> >>
>>>> >>.uk:
>>>> >>http://nominet-prod.s3.amazonaws.com/wp-content/uploads/2016/08/Final-pro
>>>> >>p
>>>> >>osed-DRS-Policy.pdf
>>>> >>
>>>> >>"8.1.2 The Domain Name is generic or descriptive and the Respondent is
>>>> >>making fair use of it;"
>>>> >>
>>>> >>.nz: https://www.dnc.org.nz/resource-library/policies/65
>>>> >>
>>>> >>"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;"
>>>> >>
>>>> >>Sincerely,
>>>> >>
>>>> >>George Kirikos
>>>> >>416-588-0269 <tel:416-588-0269>
>>>> >>http://www.leap.com/
>>>> >>_______________________________________________
>>>> >>gnso-rpm-wg mailing list
>>>> >>gnso-rpm-wg at icann.org
>>>> >>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>> >
>>> >
>>> >________________________________
>>> >
>>> ><ACL>
>>> >_______________________________________________
>>> >gnso-rpm-wg mailing list
>>> >gnso-rpm-wg at icann.org
>>> >https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>> 
>> 
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>>  
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