RE: [gnso-sti] Comments with respect to BC position

["Zahid Jamil" <zahid@xxxxxxxxx>]

We would support these suggestions.


Sincerely,


Zahid Jamil
Barrister-at-law
Jamil & Jamil
Barristers-at-law
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Merewether Road, Karachi. Pakistan
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-----Original Message-----
From: owner-gnso-sti@xxxxxxxxx [mailto:owner-gnso-sti@xxxxxxxxx] On Behalf
Of Alan Greenberg
Sent: Wednesday, December 09, 2009 6:30 PM
To: gnso sti
Subject: [gnso-sti] Comments with respect to BC position
Importance: High


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