[PC-NCSG] draft UDRP/RPM Comments - Last Questions

[Sam Lanfranco]

Kathy,

Given what little trademark law I (economist not lawyer) know, I think 
that in the long run national law would dominate here, country by 
country, since there are statutes of limitation (SOL) for copyright 
infringement depending on the country.

For example, in the U.S. SOL appears to be within three years after the 
claim accrued for civil actions, and within 5 years after the cause of 
action arose for criminal cases. In Canada proceedings for infringement 
must commenced within three years after the time when the plaintiff 
first knew, or could reasonably have been expected to know of the 
infringement.

While ICANN could probably maintain a Tradmark claims period and process 
in those first ninety days as part of the gTLD contracts, I don't see 
how it could have jurisdiction over the remaining three years unless 
there was mutual agreement on the part of the plaintiff and the 
defendant. Not clear staff considered that factor.

Who is going to do the PDF w/signatures?

Sam

On 29/11/2015 8:59 PM, Kathy Kleiman wrote:
> Hi Sam,
> Tx you very much, the comments look good!
>
> Re: (p.5) "Should the STI consensus be reversed to allow Trademark
> claims period to be extended beyond ninety days?", my thought was the
> ongoing push of the some stakeholders and the ICANN Staff to extend the
> mandatory Trademark Claims period beyond 90 days. At the time the STI
> adopted this compromise, we (NCSG) argued that Trademark Claims (which I
> will define loosely as a notice from the Trademark Clearinghouse to the
> trademark holder registered within the Trademark Clearinghouse that
> something identical to its trademark has just been registered in a New
> gTLD. We urged a limited Trademark Claims period - a balance between the
> needs of the trademark owner and the rights of the trademark owner -- to
> avoid "chilling effects" to the registrant (the concept Wendy Seltzer
> helped to coin and codify in her/EFF's Chilling Effects Database).
>
> I am still very concerned whether I see ICANN seeking to expand this
> mandatory term. It is one of the changes this Issues Report seeks to
> introduce.
>
> The fact that the Trademark Clearinghouse is doing this voluntarily is
> shocking...
> Best,
> Kathy