[gnso-rpm-wg] RPM Group <> Re: DomainNameWire ~ CentralNic to nuke a handful of pseudo-domain names

Sat May 7 16:52:15 UTC 2016

Graham:

[apologies for the long email, but I think by dealing with this now,
we'll all save ourselves lots of time later]

With respect, I don't think your specific grievance is well-suited to
this working group, which is intended for general policy-making. If
you have a concern/observation, it really needs to be framed in such a
way as impacting that general policy.

I'm not a lawyer, and this isn't legal advice, but here's what I
observe (correct me if I'm wrong):

1. The UDRP and other dispute resolution procedures/policies created
by ICANN complement, but do not replace, the courts. If someone has a
dispute, they are free to take their case to the courts, instead of
using the UDRP.

2. The UDRP wasn't designed to handle all possible domain name
disputes. It's a streamlined procedure intended to apply to a subset,
the "clear cut" circumstances, under a very narrowly defined set of
criteria (i.e. the 3-pronged test).

3. Your specific (and rather complex) dispute appears to center around
your registration of the LandCruise.com domain name (and the
associated business). You have "LandCruise" trademarks registered in
Canada and the USA. according to a TMView search:

https://www.tmdn.org/tmview/welcome

(by the way, the Landcruise.ca domain name is unregistered -- might be
worth grabbing that one for yourself; if you've read this far, it's
been worth your time!)

Trademark registrations are of course only applicable to specific
geographic regions. There is no "global trademark registration", and
many identical marks coexist in multiple regions, owned by different
owners/users.

4. Someone else in the UK owns UK and British trademark registrations
for LandCruise (as per TMView above). They also own the
LandCruise.co.uk ccTLD domain name, and are also using the 3rd-level
subdomain (licensed from CentralNic, itself a UK company)
LandCruise.uk.com.

5. From the US lawsuit you filed against ICANN (among others), which
has been dismissed:

https://www.icann.org/resources/pages/schreiber-v-dunabin-2012-09-11-en

it appears you ultimately want the use of that LandCruise.uk.com
subdomain to be terminated (among other things, but I think that's the
essence, at least from a domain name perspective).

6. If you filed a UDRP against the UK.com domain name itself, you'd
likely not meet the criteria for the "3-pronged" test, because "UK" is
not confusingly similar to "LandCruise". Furthermore, "bad faith
registration" wouldn't be demonstrable, given they had a good faith
reason to register the UK.com domain name. [whether the subdomain is a
bad faith *use* or not is irrelevant, if they pass the good faith
registration part of the test]

7. You normally can't file a UDRP against the subdomain
LandCruise.uk.com, as that's not something contemplated by the UDRP.
Furthermore, even if you did, the existence of those UK and European
trademarks would likely be sufficient to successfully defend such a
dispute, since the other side would be able to demonstrate they do
have "rights" or "legitimate interests" in the term.

8. While CentralNic has its own dispute resolution policy for 3rd
level domains, it's only binding on its own licensees, and has nothing
whatsoever to do with ICANN or this working group. Even then, it's a
UK company that has a UK trademark licensing the 3rd level domain name
from a 2nd-level domain name owner who is in the UK. It would be quite
difficult to overcome these facts, in my opinion.

9. Ultimately, in my opinion, the "other side" in your dispute is
perfectly shielded by their European and UK trademarks, to the extent
that their use of the term is in commerce in the UK and Europe. Unless
those trademarks are successfully challenged and overturned in a court
of law, you're just out of luck. Even a powerful company like Google
had no success overturning a valid German trademark for "GMail", and
ultimately appeared to purchase the trademark:

http://techcrunch.com/2012/04/14/google-finally-gets-right-to-gmail-trademark-in-germany/

You'll note even Apple lost a TM case in China over the term "iPhone" recently:

http://www.bbc.com/news/business-36200481

(although that case is under appeal)

10. While you might be disappointed or disheartened by #9, your only
true recourse is with the UK and European courts. This working group
isn't the proper venue for determining the validity of those
trademarks.

11. As per point #3 above, you can certainly go to the US or Canadian
courts if the "other side" is using those marks in commerce in the US
or Canada, i.e. outside the geographic areas that their own trademarks
apply in. It appears you've attempted to do that in the US courts (see
point #5 above), at least, without success. This working group, or a
UDRP panel, isn't going to disturb a valid court ruling. UDRP is also
no replacement for the courts (courts are certainly the more "senior"
venue).

12. This might be difficult to hear, but if you've exhausted the court
system, you must accept that outcome, and adapt accordingly. If you
believe you're "locked out" of the UK or European markets because you
can't use the term "LandCruise" there, it might be prudent to create a
2nd website using a different domain name for those regions, using a
mark that you can trademark there. Google did that with their
"Googlemail", for example, as the alternative to "Gmail" in Germany.
If you can't accept that legal outcome and move on, you'll ultimately
expend a lot of time, money and energy trying to undo something that
can't be undone.

13. Just to cover some of your specifics, CentralNic (acting as a
registrant) is free to create any "policy" it wants for dispute
resolution of its 3rd-level domains, but they're certainly not binding
on anyone (except perhaps their own licensees of 3rd level domains). I
could write on my own website that "If you have a dispute over the use
of Math.com, you must send us 314 apple pies, and deliver them on Pi
Day (March 14th), for it to be considered." That would have the same
binding effect on a complainant as the CentralNic policy (i.e. it
would have no binding effect whatsoever). As to the RAA, it doesn't
apply when CentralNic is licensing 3rd-level subdomains of its own
2nd-level domains. Furthermore, this working group's scope doesn't
include the RAA.

14. As for the statement "Should you opt not to help enforce the ACPA
law, I will consider that as Collaboration with CentralNic, going
forward.", it's really not for us to enforce the ACPA or the laws of
any particular country. That's the role of the courts. If you obtain a
valid court order against those entities, and it's not followed, then
you can go back to the courts to have them found in contempt of court,
seek damages, etc. If you can't obtain such a court order, see point
#12 above.

15. In light of the above, I think you should take some time to
carefully consider what you hope to achieve through this working
group. If your participation is intended to "relitigate" an existing
or past dispute, it's really not the right venue. If instead you wish
to bring to light scenarios in which the UDRP can be improved for a
*large* number of "clear cut" disputes (not just your specific and
complex dispute), where those scenarios are widely recognized in the
legal systems of the world (since the UDRP isn't meant to create new
law), then that kind of participation might be helpful to the group.

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/

On Sat, May 7, 2016 at 10:05 AM, Graham Schreiber
<grahamschreiber at gmail.com> wrote:
> Hi Gentlemen & RPM Group:     Cc Garth:
>
>
>
> Further to the conversation in the RPM Meeting of May 4th, thank you Phil
> for the engaging in / expanding the dialog on CentralNic; and their ability
> to be exempt from ICANN’s RAA Rules.
>
>
> I’d like to thank George Kirikos for his statement to Phil:
>
> “I think Graham is talking about 3rd level dot-com domains (not ccTLDs).
> i.e. Landcruise .uk.com, vs. Landcruise.com”.
>
>
> Yes George, I am indeed curious how:  “That "special rule" by CentralNic is
> not something blessed by or authorized by ICANN.”  became such an accepted
> racket by ICANN; and why ICANN’s Contractual Compliance never
> shut-them-down?
>
>
> Thanks also to Greg, our ICANN IPC President for this link from:
>
>
> “ADR Forum's website: CentralNic is a second level domain registrant that
> sells third-level domains to users.
>
> Registration of a third level domain name in one of CentralNic’s second
> level domains requires agreement to CentralNic’s Dispute Resolution Policy.
> Prior to filing a CDRP, the complainant is required to attempt mediation by
> contacting CentralNic.
>
> The CDRP process is almost identical to the UDRP.
> http://www.adrforum.com/ThirdLevel”
>
>
> To all RPM Members:   Why must a .COM Domain Name Registrant mediate with
> their Contributory Infringer, another RAA Subject, Domain Name Registrant?
> Ask yourselves reflectively, these questions of ~ Third-Level Domain Names:
> at the ADR Forum. http://www.adrforum.com/ThirdLevel
>
>
> [ WHY ? ]  Ordinarily, domain name dispute resolution policies do not apply
> to third-level domain names.
>
>
> A few second-level domain name registrants have decided to [ e~VaED the ACPA
> ] sell third-level domain names like a Registry [ and allowed to place those
> accounts into / under the VeriSign, ICANN & NTIA’s  Root Zone of .COM in the
> DNS! ]  and have established dispute resolution policies to deal with any
> resulting disputes. [ which equates to Racketeering ! ]
>
>
>
> WHOIS History shows:   CentralNic’s uk.COM is a former; and long standing
> Domain Name Registrant of Network Solutions, under the ICANN & VeriSign
> “accredited” status .COM R[r]egistry / R[r]egistrar, subject to the RAA.
>
>
> This was prior to their Cyber-Flight to CentralNic’s own TLD Registrar
> Solutions, domiciled at CentralNic’s London address, and yet again prior
> before their Third [3rd] Cyber-flight to Demys, yet again, another  ICANN &
> VeriSign “accredited” .COM R[r]egistry / R[r]egistrar, where all are
> subjects to the RAA.
>
>
> Many of these observations or questions have been identified by another
> ICANN'er, Garth Bruen [Cc'd] in his book: “WHOIS Running the Internet:
> Protocol, Policy, and Privacy”   where reads will see that Garth eloquently
> dissects the problem.
> https://books.google.ca/books?id=mgmeCAAAQBAJ&pg=PA72&dq=centralnic+schreiber&hl=en&sa=X&redir_esc=y#v=onepage&q=centralnic%20schreiber&f=false
>
>
> Greg and Phil, let me be candid with you both.    Now that You’re being
> FUNDED BY revenues in large measure by ICANN’s .COM Domain Name Registrants
> to go Globe-trotting, I vigorously encourage you to stop being the batmen
> [soldier-servants] to CentralNic’s “handful of pseudo-domain names” [Quote
> from Domain Name Wire] and serve the needs of the .COM Registrant’s.
> Also, Philip Corwin, thanks for acknowledging Greg: “Thanks for that link,
> Greg” .
>
>
> Greg & Phil, I expect you both to take you’re ~ funded ~ leadership role’s
> seriously; and press ICANN to enforce the RAA on CentralNic.
>
>
> Further, I expect you both to deploy you’re given powers within ICANN; and
> to successfully petition the United States Justice Department to ask ICANN
> Et Al to answer the “Questions Presented” in SCOTUS 14-1480, as linked.
> https://forum.icann.org/lists/comments-cwg-naming-transition-01dec14/pdfFTOIefnB82.pdf
>
>
> Should you opt not to help enforce the ACPA law, I will consider that as
> Collaboration with CentralNic, going forward.
>
>
> To the Members of this RPM Group, who are aware of this scam, it’s time to
> stop harbouring this racketeering scheme; and oblige ICANN to enforce the
> RAA on CentralNic; and also to recognize beyond ICANN, that the cc.COMs are
> "misleading" and are a violation of established International Intellectual
> Property Treaties like WTO’s TRIPS.
>
>
> In closing, thanks again George for you’re help!   Given you’re article
> Loopholes and Ambiguities in Contracts that ICANN Oversees  Jan 10, 2013
> 12:06 AM PDT,    I’d appreciate having you share more of you’re knowledge &
> questions with the Group.
> http://www.circleid.com/posts/20130109_loopholes_and_ambiguities_in_contracts_that_icann_oversees/
>
>
> Thanks all, for reading this and engaging ICANN Et Al, to ensure that .COM
> Registrants ~ Rights Protections ~ are protected.
>
>
> Regards,
>
>
> Graham Schreiber.
>
>
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