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

Wed Jul 20 19:08:27 UTC 2016

Bearing in mind that the PDDRP panel may not award damages, and that the remedy needs to consider the question of “ongoing harm”, what is the need for a time limitation?  I would argue there is an inherent balance in the way the PDDRP is currently structured that obviates the need for a specific time limitation for when the PDDRP can be brought.  And even if the harm was not ongoing, there may be an interest on the part of the trademark owner to ensure that the registry is directed to take steps to ensure prevention of future infringing registrations.   Ultimately, the equities will be balanced by the expert panel in making its determination.

I would also be interested in whether there was a specific reason why the question of time limitations wasn’t addressed in the PDDRP when it was first drafted.  Perhaps that can shed some light on whether we need to retread those steps.

Bradley

From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of George Kirikos
Sent: Wednesday, July 20, 2016 2:26 PM
To: gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] PDDRP topics -- limitation period to bring a PDDRP

Steve brings up (indirectly) an interesting topic, namely that there is no "mutual jurisdiction" clause to the PDDRP (21.3 only says a "court of competent jurisdiction"). If a complaint (or appeal) was brought by one side in a jurisdiction that the other side doesn't accept, how would it be resolved?
Obviously it would have to be resolved by the court in which the law suit was brought (i.e as a defense to the action) and/or some other "superior" jurisdiction. [Perhaps some of the registrars, who have similar "court of competent jurisdiction" language in their registrar agreements might want to chime in......I hope that Tucows, for example, would ignore any orders from a Turkish or Iranian court for a Canadian or US-based registrant who obeys Canadian/US laws.]
So, if we modified the time limit in the manner he suggests, we have to be very careful to phrase things in such a manner as to not assume that a certain jurisdiction's time limits would actually apply. i.e. the location of the registry operator would definitely be a valid jurisdiction to bring an action against them. The preferred location of the TM holder / PDDRP complainant may or may not be a valid jurisdiction.

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

On Wed, Jul 20, 2016 at 1:59 PM, Steve Levy <slevy at accentlawgroup.com<mailto:slevy at accentlawgroup.com>> wrote:
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

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Steven M. Levy, Esq.

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On 7/20/16, 1:49 PM, "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 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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