[gnso-rpm-wg] URS "Loser Pays" proposal vs. TTAB Manual of Procedure

Wed Oct 3 15:29:50 UTC 2018

Thanks Paul (and Rebecca) for explaining the point I had attempted to make.

Indeed, in the fair and balanced "CDRP" for .ca disputes,

https://cira.ca/legal-policy-compliance/cdrp-process-and-decisions
https://cira.ca/cira-domain-name-dispute-resolution-policy

there are no penalties for the registrant beyond the loss of the
domain name, but Complainants face a penalty of up to CAD $5,000 for
complaints brought in bad faith, see Section 4.6 of the policy. That
balances the otherwise asymmetric nature of the dispute resolution
procedure, whereby a registrant has to something to lose, but, in the
absence of such a penalty, the complainant would have nothing of
consequence to lose.

Sincerely,

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

On Wed, Oct 3, 2018 at 11:14 AM, Paul Keating <Paul at law.es> wrote:
> Susan,
>
> Can you please name those fora that do so?
>
> I believe that George was referencing the PTO as an example in which even in a much more "due processs" oriented proceeding no such cost sharing is permitted.
>
> I agree with him.
>
> Paul
>
> On 10/3/18, 4:55 PM, "gnso-rpm-wg on behalf of Susan Payne" <gnso-rpm-wg-bounces at icann.org on behalf of susan.payne at valideus.com> wrote:
>
>     It's unclear to me what possible relevance the practice of the US trademark office has to this.  Plenty of fora utilise a mechanism whereby the losing party makes a contribution to the costs of the proceedings.
>
>
>     Susan Payne
>     Head of Legal Policy
>
>     Valideus
>     28-30 Little Russell Street
>     London WC1A 2HN
>     United Kingdom
>
>     D: +44 (0) 20 7421 8255
>     T: +44 (0) 20 7421 8299
>     M: +44 (0) 7971 661175
>     E: susan.payne at valideus.com
>     www.valideus.com
>
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>
>
>     -----Original Message-----
>     From: gnso-rpm-wg [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of George Kirikos
>     Sent: 02 October 2018 15:32
>     To: gnso-rpm-wg <gnso-rpm-wg at icann.org>
>     Subject: [gnso-rpm-wg] URS "Loser Pays" proposal vs. TTAB Manual of Procedure
>
>     Hi folks,
>
>     In addition to the past concerns expressed re: identity theft, and how it can lead to a denial of service attack if a loser pays policy was adopted for the URS:
>
>     https://mm.icann.org/pipermail/gnso-rpm-wg/2018-September/003291.html
>
>     I did some additional research today on the United States TTAB procedures, and found this:
>
>     https://tmep.uspto.gov/RDMS/TBMP/current#/current/sec-6f6dfee8-51e8-40b5-bc26-3068dffd4dcf.html
>
>     "Trademark Trial and Appeal Board Manual of Procedure
>     2018-06
>
>     502.05    Attorneys’ Fees, etc., on Motions
>
>     The Board will not hold any person in contempt, or award attorneys’
>     fees, other expenses, or damages to any party. [ Note 1.]
>
>     NOTES:
>
>      1.   37 C.F.R. § 2.127(f); NSM Resources Corp. v. Microsoft Corp.,
>     113 USPQ2d 1029, 1035 n.10 (TTAB 2014) (Board cannot assess monetary damage awards); General Mills Inc. v. Fage Dairy Processing Industries SA, 100 USPQ2d 1584, 1591 (TTAB 2011) (no authority to determine damages), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB
>     2014) (non-precedential); Kairos Institute of Sound Healing, LLC v.
>     Doolittle Gardens, LLC, 88 USPQ2d 1541, 1544 n.6 (2008); Central Manufacturing Inc. v. Third Millennium Technology Inc., 61 USPQ2d 1210, 1213 (TTAB 2001) ("although the Board does not impose monetary sanctions or award attorneys’ fees or other expenses, the Board has the authority to enter other appropriate sanctions"); Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 n.3 (TTAB 2000). See also
>     37 C.F.R. § 2.120(g)  and 37 C.F.R. § 2.120(h)(1). Note, however, that conduct in violation of the Disciplinary Rules set forth in 37 C.F.R.
>     Part 11 may be referred to the Office of Enrollment and Discipline
>     (OED) for appropriate action. See 37 C.F.R. § 11.19  et seq."
>
>     So, what is being proposed in regards to "loser pays" doesn't appear to exist in the US TTAB procedures.
>
>     Sincerely,
>
>     George Kirikos
>     416-588-0269
>     http://www.leap.com/
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