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

[Emil]

Dear Douglas,

 

I am leaving the example so that we can address it when the time will come. 

I fully agree that the time is not now, and out of respect for the people involved I never chased it further by posting a reply. 

However since it was seen inappropriate without further clarification, here I go:

 

To give you a concrete example to what I was referring (one of the statements quoted by you, belongs to me)

 

Diverging Trademark Registrations

 

On 28-09-2001 the Mexican Trademark office accepted a word trademark for “economy car rentals” which claims that the trademark is distinctive & well known.

On 11-08-2005 the Greek Trademark office accepted a word trademark for “economy car rentals” which claims that the trademark is distinctive & well known.

On 29-05-2009 the Brazilian Trademark office accepted a word trademark for “economy car rentals” which claims that the trademark is distinctive & well known.

On 29-11-2005 WIPO accepted a “logo only” figurative trademark on “economy car rentals”

On 22-10-2010 an EM European Wide “word” Trademark is rejected on “economy car rentals” for lack of distinctiveness. 

On 11-04-2009 the US Trademark office accepted a combined trademark for “economy rent a car” (Combined), so not protecting the actual word

On 2011-11-04 the Turkish Trademark office accepted a word trademark for “economy car rentals” which claims that the trademark is distinctive & well known.

On 2014-09-18 an EM European Wide “word” Trademark is rejected AGAIN on similar grounds & lack of distinctiveness. Same applicant.

On 2014-09-18 an EM European Wide “figurative / so just the logo” Trademark is accepted -  which again makes perfect sense.

On 19-09-2014 the Romanian Trademark office rejected the trademark for lack of distinctiveness

 

Now if I am right, The Mexican, Greek, Brazilian, and Turkish TM office decision is wrong, since the expression is super generic & non-descriptive, as both WIPO and the European Union Intellectual Property Office motivated in their decisions. Thus it could not be considered a word trademark in the first place.

 

So if the owner of the economy car rentals trademark can invoke it’s TM rights in an UDRP against the owner of economyrentalcars.com or economy-car-rentals.com let’s say, based on the BR, TR, GR and MX trademarks,  then something is probably not right. As far as I am seeing, they are already in court & they will definitely get to this step.

 

This was a case which raised my interest a couple of years ago. 

As a disclaimer I am not a lawyer, and I do not have the enormous experience & legal knowledge which some of the parties involved in our discussion do.

 

I never intended to make an “unsupported allegation”. I was merely asking a question and I do apologize if it felt inappropriate.

 

Emil

 

 

From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Doug Isenberg
Sent: 21 August 2016 20:09
To: gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] Questionable UDRPs & TM applications

 

I am cognizant of Phil’s admonition to refrain from prematurely discussing topics --  but, like Paul and Greg, I do not think it is wise for anyone to leave unsupported allegations unaddressed.  So, briefly, I would only add that the numerous broad statements and allegations that have been posted in this thread, without citation to any authority (such as UDRP decisions or statistics) seems inappropriate.  For example, none of the following were accompanied by any authority:

 

*         “given the *actual* abuse we’re observing”

*         “folks exploit gaping loopholes in the policy”

*         “abuse of the procedure by trademark trolls”

*         “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”

*         “panelists becoming public defenders or engaging in judicial activism to champion no-show respondents”

*         “the 3 biggest reasons for a respondent default”

 

And, the one actual domain name dispute that was mentioned (economyrentacar.com and economyrentalcars.com) does not, in fact, appear to be an actual domain name dispute at WIPO, despite the implication that it is or was a real WIPO case.

 

When the appropriate time comes to discuss these issues, I think we would all be well-served by referring to actual examples, not hypotheticals or general understandings that may or may not have any basis in fact.

 

Sincerely yours,

 


Douglas M. Isenberg

Attorney at Law

 <http://www.gigalaw.com/> 


“When your brand is on the line, The GigaLaw Firm protects your brand online.” Learn more:  <http://www.gigalaw.com/> www.GigaLaw.com

 

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20160821/3ffdbe92/attachment-0001.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 3549 bytes
Desc: not available
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20160821/3ffdbe92/image001-0001.png>