[gnso-rpm-wg] Two URS decisions of note

[George Kirikos]

Hi Doug,

On Wed, Feb 7, 2018 at 3:53 PM, Doug Isenberg <Doug at giga.law> wrote:
> I don’t think this is a case of a “2nd bite at the apple” since the complainant won the first URS proceeding and lost the second one.  So, presumably, the domain name was re-registered by the respondent after the URS suspension expired in the first case.  It would be fascinating to know if the complainant/trademark owner tried to register the domain name fr itself after the suspension expired but was unable to do so before the respondent got it again – that’s certainly a significant limitation/hazard of the URS.

Actually, that presumption turns out to be incorrect. Via the WHOIS
history at DomainTools:

https://research.domaintools.com/research/whois-history/search/?q=boucheron.pub&date=2016-05-10&origin=permalink

on May 10, 2016, the domain name was still suspended using the
ursns[1/2].adrforum.com nameservers:

Domain Name: boucheron.pub
Updated Date: 2015-11-02T18:08:11Z
Creation Date: 2015-05-12T19:58:24Z
Registry Expiry Date: 2016-05-12T19:58:24Z
Sponsoring Registrar: Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn)
Domain Status: serverDeleteProhibited
https://icann.org/epp#serverDeleteProhibited
Domain Status: serverTransferProhibited
https://icann.org/epp#serverTransferProhibited
Domain Status: serverUpdateProhibited
https://icann.org/epp#serverUpdateProhibited
Registrant Name: zhouhaotian
Registrant Organization: zhouhaotian
Name Server: ursns1.adrforum.com
Name Server: ursns2.adrforum.com

(I removed various uninteresting fields from the above historical WHOIS record)

Then, on May 14, 2016, the WHOIS history at DomainTools shows the
domain name had expired (note the creation date above was May 12,
2015, so more than 1 year had passed), and the nameservers switched to
the registrars' default expiration nameservers, as it went into the
auto-renew period:

https://research.domaintools.com/research/whois-history/search/?q=boucheron.pub&date=2016-05-14&origin=permalink

Domain Name: boucheron.pub
Domain Status: autoRenewPeriod https://icann.org/epp#autoRenewPeriod
Updated Date: 2016-05-13T20:00:39Z
Creation Date: 2015-05-12T19:58:24Z
Registry Expiry Date: 2017-05-12T19:58:24Z
Name Server: expirens4.hichina.com
Name Server: expirens3.hichina.com

The 2nd URS was filed on May 25, 2016, during that auto-renew period!
Had the TM holder done nothing at all, it would have simply not been
renewed by the registrant. e.g. on May 24, 2016, the WHOIS was still
like the above, with the same expired nameservers and autorenewperiod
status.

Then, as we know, the 2nd URS was unsuccessful. After that, the domain
name did get deleted as per the normal deletion cycle, and as the
current WHOIS demonstrates:

https://whois.domaintools.com/boucheron.pub

Boucheron registered the domain name via Com Laude with a creation
date of July 25, 2016 (after the domain name went through the normal
redemption grace period, and got deleted at Alibaba's registrar).

So, the 2nd URS appears to have been triggered by (1) the registrar
changing the nameservers at expiry away from the URS Suspension ones
(perhaps this is a policy issue with regards to how the URS is
implemented post-expiry), and (2) Boucheron not realizing that the
name was simply going through the normal expiration and deletion
cycle.

It makes Boucheron's 2nd URS pleading look silly, e.g. the statement
by the panelist:

"Complainant lastly alleges that the subject domain name, “ … was
acquired in bad faith on the following grounds: since its purchase in
May 2015 nothing has appeared on the website under this domain name."

Well, of course not, given that the domain name was suspended for most
of that time!

It's possible that the first URS was wrongly decided using the basis
of "non-use" as proof of "bad faith use" (which the 2nd URS correctly
rejected), but we don't know for sure given the lack of any
detail/reasoning in the first URS decision. Had there actually been
real bad faith usage (beyond non-use), presumably Boucheron would have
just recycled their evidence from the first URS, and presented it at
the 2nd URS. But, they didn't, so I think it's likely that real bad
faith usage didn't exist at any time.

Sincerely,

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