Emilia Petrossian
Emilia is a UK Chartered Trade Mark and Design Attorney with expertise in trade mark and design portfolio management including clearance searches, advising on worldwide filing strategies and the prosecution of UK, European Union and International trade mark applications through to registration, including opposition and cancellation proceedings. Emilia has a proactive approach and likes to ‘think outside the box’, resulting in a ‘can do’ attitude that clients appreciate.
Emilia acts on behalf of clients in a broad range of industries including cosmetic, beauty, entertainment, finance, insurance, accounting and telecommunications.
Practice Area
Panel
- Contributing Author
Qualified Year
- 2021
Experience
- Deloitte Legal (2021 - 2021)
- Kemp Little LLP (2019 - 2021)
- Gill Jennings & Every LLP (2018 - 2018)
- Barker Botts (2016 - 2017)
Membership
- INTA
- CITMA
- ECTA
Qualifications
- Trade Mark Practice Professional Certificate (2021)
- LPC (2012)
- LLB (2008)
Education
- Nottingham Trent University (2021)
- Queen Mary University of London (2020)
- BPP Law School (2012)
- University of Westminster (2008)
5 Contributions by Emilia Petrossian
PRACTICE NOTES
Before filing a UDRP complaint: suitability, merits, WHOIS/GDPR, contacting registrants, negotiations and a practical pre-filing checklist
Practice Note
This Practice Note sets out the factors to weigh before preparing a Uniform Domain Name Dispute Resolution Policy (UDRP) complaint in a prospective domain name dispute.
It covers:
Preliminary considerations
Is UDRP the right option?
Assessing the merits
Identifying the Registrant
Contacting the Registrant
Pre-UDRP checklist
See also Precedents: Letter of claim—abusive domain name registration (UDRP) and UDRP complaint.
Preparing a UDRP complaint should not be your first move when managing a potential domain name dispute. This Practice Note guides you through what to consider before you begin. By following these steps, many prospective disputes may fall away—saving you or your client time and money; and if you do proceed to draft a UDRP complaint, you can be more confident that you have laid the groundwork for some of the more challenging aspects. This Practice Note and its accompanying precedents draw on guidance and decisions issued by the World Intellectual Property Organisation (WIPO)...
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PRECEDENTS
Drafting a WIPO UDRP Complaint: Practitioner’s Step-by-Step Guide and Template
IMPORTANT NOTE
This guide is based on the WIPO model complaint (https://www.wipo.int/amc/en/domains/complainant/) and aligns with the Uniform Domain Name Dispute Resolution Policy (the Policy) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on 24 October 1999, the Rules for the Uniform Domain Name Dispute Resolution Policy (the Rules) approved by ICANN on 28 September 2013 and effective from 31 July 2015, and the WIPO Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules) in force from 31 July 2015.
Different UDRP variants can govern a specific disputed domain, so confirm the applicable regime. For example, the .nl (Netherlands) and .ir (Iran) ccTLDs apply their own UDRP adaptations (and for Iran, important sanctions regimes may sometimes apply—ensure ownership and trading via a given ccTLD is permitted), each with separate procedural features. See https://www.wipo.int/amc/en/domains/cctld/nl/index.html and https://www.wipo.int/amc/en/domains/cctld/ir/index.html respectively.
Under the Supplemental Rules, submissions under Rules paragraphs 3(b)(ix) and 5(c)(i) are restricted to 5000 words. The overall size of any Complaint or response (including annexes) filed in a UDRP dispute must...
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PRECEDENTS
Precedent DRS Complaint (Nominet .uk): Establishing Rights, Identical or Similar Domain Names, Abusive Registration Grounds, Evidence and Remedy
1 Rights in the domain name
Relying on [ a WHOIS enquiry undertaken on [ date of Nominet WHOIS search ] OR Nominet’s reply to a data release request as enclosed as [ insert details of attachment ] ], the domain name [ insert domain name ] (Domain Name) is shown as registered to the Respondent. The outcome of that enquiry is enclosed as [ insert details of attachment ] with this Complaint. The Complainant is the proprietor of [ insert details of trade marks, domain names, brand names, contractual rights, personal names etc ] (Rights). Additional information regarding these Rights is set out below...
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PRECEDENTS
UDRP letter before action for abusive domain name registration: cease, deactivate and transfer
[ date ] Dispatched by [ recorded delivery ] [ email ] to [ insert Respondent’s email address ][ Respondent’s name ][ Respondent’s address ]
Re: [ Disputed Domain Name ]—unauthorised use of [ Marks ]
Dear [ insert organisation name ]
We act on behalf of [ insert Client name and a brief description of its business ]. We are contacting you via the [ email address OR registered office address ] [ shown on the website (the Website) hosted by the domain [ insert details ] OR provided via Nominet in relation to a data release request ]. Our client is the owner of a number of registered [ and unregistered ] trade marks, including:
[ insert trade mark details including proprietor name, filing date, registration number, territory, classes covered, and mark details ]
Enclosed with this letter, as Annex 1, are copies of our client’s trade mark registrations together with examples evidencing use. [ Client name ] also holds the domain name [ Client’s domain name ] (‘ Client’s Domain ’)…
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PRECEDENTS
URS Domain Name Complaint Template and Practitioner Guidance: Proving Confusing Similarity, No Legitimate Interest, and Bad Faith, with Sample Pleadings and Evidence Requirements
Identical or confusingly similar
The disputed domain is [ identical OR confusingly similar ] to a word mark that the Complainant owns through valid national or regional registrations and which remains in current use (URS 1.2.6.1). Evidence supporting the Complainant’s trade mark registrations is attached. These registrations relate to the word mark [ insert ] (the Mark) [ which is [ identical ] OR [ if not identical then set out how the domain and the Mark are alike visually, aurally, and conceptually, and explain why confusion is probable ]. ] [ The Mark has also been recorded with the Trade Mark Clearinghouse [ insert details and include in attachment ]. ] For a period of at least [ insert number ] years, the Complainant has deployed the Mark extensively across print media, television, and the internet. The Complainant’s advertising expenditure was £[ insert ] in [ year ] [ [ insert further spending years ] ] ...
TMT
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