[GNSO-RPM-WG] Revised Version of URS Proposal #12

George Kirikos icann at leap.com
Tue Oct 16 16:43:11 UTC 2018


Hi Brian:

I refer you to the following case in the California courts, that
referenced this exact topic:

GOPETS v. Hise,

http://cdn.ca9.uscourts.gov/datastore/opinions/2011/09/22/08-56110.pdf

(also listed on the WIPO Website at:
http://www.wipo.int/export/sites/www/amc/en/docs/d20060636circuitdecision.pdf
linked from http://www.wipo.int/amc/en/domains/challenged/  )

“”The primary question before us is whether the term “registration”
applies only to the initial registration of the domain name, or
whether it also applies to a re-registration of a currently registered
domain name by a new registrant. We hold that such re-registration is
not a “registration” within the meaning of § 1125(d)(1).”"

[5] Like the text of § 8131(1)(A), the text of § 1125(d)(1) considered
in isolation does not answer the question whether “registration”
includes re-registration. Looking at ACPA in light of traditional
property law, however, we conclude that Congress meant “registration”
to refer only to the initial registration. It is undisputed that
Edward Hise could have retained all of his rights to gopets.com
indefinitely if he had main-
tained the registration of the domain name in his own name. *****We
see no basis in ACPA to conclude that a right that belongs to an
initial registrant of a currently registered domain name is lost when
that name is transferred to another owner. The general rule is that a
property owner may sell all of the rights he holds in property.****
GoPets Ltd.’s proposed rule would make rights to many domain names
effectively inalienable, whether the alienation is by gift,
inheritance, sale, or other form of transfer. Nothing in the text or
structure of the statute indi-
cates that Congress intended that rights in domain names should be inalienable.

[6] We therefore hold that Digital Overture’s re-registration of
gopets.com was not a registration within the meaning of § 1125(d)(1).
Because Edward Hise registered gopets.com in 1999, long before GoPets
Ltd. registered its service mark, Digital Overture’s re-registration
and continued ownership of gopets.com does not violate § 1125(d)(1).

There you have it. Have WIPO panels been observing this court
precedent? Has WIPO updated their "WIPO Views"? Of course not, even
though it's been published on WIPO's own website! Perhaps WIPO will
take steps to remove that case from their website, just like they
removed the PUPA.COM case involving my company??

It's time to remove the ambiguity once and for all, and my proposal
does just that, and furthermore aligns it with court precedent and
common sense. I probably should have added this case to my revised
proposal. I'll do that shortly, and send it again.

Sincerely,

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



On Tue, Oct 16, 2018 at 12:13 PM, BECKHAM, Brian <brian.beckham at wipo.int> wrote:
> Speaking in my non-chair capacity, and mindful of the "low bar" that has been set for inclusion in the Initial Report, I would like to register the strongest of objections to this proposal.
>
> Not only would it give carte blanche to later-acquiring registrants to infringe a complainant's mark, but moreover, the claimed ambiguity blatantly mischaracterizes panel consensus described in the WIPO Overview, which does not reflect any "ambiguity" in how panels assess the applicable registration date.
>
> Perhaps one or two panelists or counsel who are members of this WG could add their views.
>
> Brian
> ________________________________________
> From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> on behalf of George Kirikos <icann at leap.com>
> Sent: Tuesday, October 16, 2018 4:35 PM
> To: gnso-rpm-wg; Ariel Liang
> Subject: [GNSO-RPM-WG] Revised Version of URS Proposal #12
>
> [re-sending from my correct email address]
>
> Hi folks,
>
> Attached is the revised version of URS Proposal #12, after discussions
> with Rebecca on how to handle the unintended consequences she
> identified in the original proposal. Many thanks to Rebecca for
> identifying the issue and the solution.
>
> Sincerely,
>
> George Kirikos
> 416-588-0269
> http://www.leap.com/
>
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