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

Sat May 7 16:56:07 UTC 2016

Oops, I made a typo. In #4, I meant to say:

"Someone else in the UK owns UK and *EUROPEAN** trademark registrations..."

Sincerely,

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

On Sat, May 7, 2016 at 12:52 PM, George Kirikos <icann at leap.com> wrote:
> 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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