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[gnso-sti] Comments with respect to BC position

  • To: gnso sti <gnso-sti@xxxxxxxxx>
  • Subject: [gnso-sti] Comments with respect to BC position
  • From: Alan Greenberg <alan.greenberg@xxxxxxxxx>
  • Date: Wed, 09 Dec 2009 08:30:25 -0500

Although like others, I am rather distressed by the tone of the BC statements, I can lend some level of support for their proposals. Specifically:

Transfer after a successful URS

Our initial position was clear that we supported this assuming it could be done without totally unreasonable effort by registrars/registries and assuming it was not done until a reasonable opportunity for the Registrant to submit a late reply or an appeal. We in particular feel that a transfer at end-of registration is appropriate, and since the domain is explicitly flagged as being the subject of a successful URS, this should not be onerous. To argue that we need the differentiation between the URS and the UDRP is artificial and that the TM holder should file a UDRP to do the transfer is (in my mind) rather mean-spirited. Similarly, to argue that the IRT did not include this provision is rather meaningless since we a have already changed much from the IRT proposal.

Barring that being accepted, we have suggested that a transfer be allowed after a second successful URS. The main argument against that (if I remember correctly) was that it would be difficult to implement with respect to record keeping. I beg to differ. The Claimant could indicate that this is a second URS when filing the URS (and give a case number), indicating that if successful, they want a transfer. There is virtually no record keeping needed, other than by the TM holder.

Additional Marks in the Clearinghouse

Although At-Large does not support opening the Clearing house to all common-law marks (although some of our group does support this), both Olivier and I have come to believe that there may be merit in including some types of "marks contained" for sunrise purposes when the associated words are linked to the types of goods specified in the trademark, or are dictionary words that the TM holder can demonstrate are regularly used in conjunction with its mark. With careful wording this will eliminate the cases raised of "enom" precluding "venom" (where v is not a word, and moreover, the defined meaning is completely changed) and apple-sucks where the combination is not used together by the company in question. There would obviously need to be some penalty for fraudulently entering such combinations into the database.

Our rationale is completely one of user confusion. To have combinations of a trademark and another word which is recognizable as being linked to the TM owner, and have it registered by some other party is at the very least likely to lead to user confusion.

This last proposal is not a formal At-large position, but we are prepared to ask for approval.

Alan and Olivier

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