[gnso-rpm-wg] PDDRP topics -- limitation period to bring a PDDRP

Wed Jul 20 18:59:56 UTC 2016

This raises again the issue discussed during the call.  Unless I am mistaken the issue arises in the context of repeated infringements in which the registry is culpable - beyond merely receiving consideration for the sale/registration of the domain.

The current discussion emphasizes that the violation is fact-specific.  That is absent a truly famous trademark - of which there are very very few, the mere registration of a domain without conflicting use does not infringe upon the rights of any trademark holder.  We must remember that trademark registration is by class and  registration of an identical mark in a nonconflicting class is expressly permissible.

The limitations period should run from the date that the complainant knew or, with use of reasonable diligence, including monitoring services, could have known. 

The period should be limited accordingly .  I suggest 1 year.

Further, to the extent the claim is based upon other acts of the registry those claims must meet the same statute of limitations.

The reason for my position is that statutes of limitations serve two functions.  They prevent the raising of stale claims as to which evidence is lost or unavailable over time and they place upon the injured party both an obligation to police and to bring a claim within a reasonable period so as to prevent the first possibility from occurring.

Paul Keating

> On 20 Jul 2016, at 8:12 PM, Reuter, Renee M <Renee.M.Reuter at ehi.com> wrote:
> 
> If a time statute of limitation is added, I would recommend the time toll from the time that the complainant learned about the problematic registration rather than tolling from the date of the registration.  An domain may not be a problem if it is not put in use.  Having the statute of limitation tolling from the time of the registration puts a trademark owner at an unfair advantage, and could encourage domain owners to hold onto a domain for a period of time before putting it to abusive use.
>  
> Sincerely,
>  
>  
> <image001.gif>
>  
> Renee Reuter
> Intellectual Property Counsel
> Legal Department
> 314-512-3234
> 
>  
>  
>  
> From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Steve Levy
> Sent: Wednesday, July 20, 2016 12:59 PM
> To: George Kirikos; gnso-rpm-wg at icann.org
> Subject: Re: [gnso-rpm-wg] PDDRP topics -- limitation period to bring a PDDRP
>  
> George,
>  
> I understand the foundation of your idea - that parties should not have greater rights through the PDDRP than they would in a court of law.  But, by the same token, they shouldn't have lesser rights either.
>  
> As such, I suggest revising your recommendation so that any time limit for bringing a PDDRP claim would be the longer of the applicable statute of limitations for such a claim in the complainant’s or respondent's  jurisdictions if such claim were to have been brought in the courts.
>  
> Regards,
> Steve
>  
> <image002.png>
> 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
> Website: www.AccentLawGroup.com
> LinkedIn: www.linkedin.com/in/stevelevy43a/ 
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>  
> On 7/20/16, 1:49 PM, "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:
>  
> Hi folks,
>  
> I don't think this was brought up before yet in the context of the
> PDDRP, but perhaps it can be added to the list of topics.
>  
> It would be very odd if complainants were allowed to bring a PDDRP for
> a matter that was not able to be brought by them in a court of law,
> because it was barred by the relevant statute of limitations. I think
> amending the PDDRP to explicitly add a time limit for bringing a PDDRP
> would make sense, to handle this situation. 2 years would be a
> suitable limit, in my opinion, and would help ensure that complaints
> are brought in a timely fashion.
>  
> Thoughts?
>  
> Sincerely,
>  
> George Kirikos
> 416-588-0269
> http://www.leap.com/
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