[ALAC] BGC decision of NCSG reconsideration request on TM+50

[Alan Greenberg]

At 22/05/2013 02:33 AM, Hong Xue wrote:

>Option a) 50+ records in TMCH are the domain name strings (for 
>example <http://yahoosuchs.com>yahoosuchs.com or 
><http://prada-for-sale.com>prada-for-sale.com) that had been either 
>transferred or deleted in UDRP proceeds. But, many well-known marks 
>have already won more than 50 UDRP decisions. It is arbitrary to 
>limit to 50. How to limit to 50?

50 was clearly an arbitrary number. But how to limit to 50 PER MARK 
is a problem, since I don't think that it will be clear from records 
presented to TMCH that (for example) OUTLOOK registered to Microsoft 
US is the same TM as OUTLOOK registered to Microsoft Canada, but 
different from the fictitious OUTLOOK registered to Hong Xue in 
China. The only way I see is to limit by rule and have the TM holder 
assert that the marks are different if they are (with penalties for 
not being honest). But that is far better than ignoring the issue.


>Option b) an owner of a mark that has been "abused" in a UDRP 
>proceeding (for example <http://geogle.com>geogle.com) may choose to 
>submit up to 50 "variations" of its marks (for example Gooogle, 
>Gooooooogle, etc). It is definitely arbitrary if variations are 
>subject to the mark holder's choice. Some years ago, CNN claims that 
>CNNIC is confusingly similar to it-:)
>
>BUT, UDRP has no finality and its decision may be overruled by the 
>competent court. Shouldn't the final judicial decision count, rather 
>than the UDRP award that has been set aside?

I would presume that an overturned UDRP decision no longer stands and 
a TM holder could not submit it.


>AND, UDRP is also applied to a number of ccTLDs. Would 50+ be 
>extended to the UDRP cases regarding ccTLD domain names?

Again, the devil is in the details, which we have not seen, but my 
presumption is that the term UDRP in this case referd to ICANN's UDRP 
and not a similar process for a ccTLD.


>TMCH implementation is now completely messy and its two appointed 
>providers are not even ready to handle the "exact mark" (without IDN 
>variants), let alone this 50+. If 50+ is indeed implementation, 
>there still need further guidance or clarifications to enable it.

How could I argue with that?

Alan

>
>
>Hong