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

Tue Oct 16 17:22:29 UTC 2018

Hi Gerald,

But the decision in GoPets went further than just a "transfer within
the family", or inheritance. The court, as I quoted, looked at the
larger question, and decided:

*****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.****

That's *any* new owner. Has WIPO been observing that standard? Of
course not. My proposal brings things into perfect alignment with the
above, namely that when someone assigns the rights to a domain name to
someone else (lawful transfer), the new owner gets *all* the rights
that come along with the domain name, including the priority date
(i.e. creation date). Just like what happens when copyrights, patents,
or other intellectual property (or "intangible assets", for those who
don't agree that domains are intellectual property, or "property" for
that matter).

So, let's be specific:

A registers Example.com in 2001.
B registers a TM for "Example" in 2005, with first use in commerce in 2005.
B would not win a UDRP against A, since they couldn't win the
"registered in bad faith prong."
A transfers the domain name to C, in 2017.

B files a UDRP against C in 2018.

Under my proposal, like the precedent established in Gopets, B can
*still* not prevail in a UDRP, because that 2001 priority date is also
fully transferred to C.

Sincerely,

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

On Tue, Oct 16, 2018 at 1:10 PM,  <gmlevine at researchtheworld.com> wrote:
> George, The language you quote from GoPets must be read in the context of the facts in the case.  The underlying UDRP also found in Hise's favor. The transfer was within the family--a continuation of the original registration.  A fairly recent UDRP confirmed that transfer as a matter of law (inheritance in this case) did not trigger a new start date for measuring bad faith registration,  Kitchens To Go, LLC v. KTG.COM, Whoisguard Protected / HUKU LLC, D2017-2241 (WIPO February 6, 2018) (<ktg.com>. “[T]he Panel does not accept the Complainant’s submission that, on inheriting a large portfolio of domain names, this imposed on Mrs. Haggippavlou a duty of due diligence to search worldwide to see if any of them might infringe any third party rights, prior to registering them in her name.”)
>
> As I said in my earlier email, "in construing the Policy, the panelists got it right."  Gml
>
> -----Original Message-----
> From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> On Behalf Of George Kirikos
> Sent: Tuesday, October 16, 2018 12:43 PM
> To: gnso-rpm-wg <gnso-rpm-wg at icann.org>
> Subject: Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12
>
> 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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