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

George Kirikos icann at leap.com
Tue Oct 16 21:45:22 UTC 2018


Any deviation from the law simply means there will be more litigation
in the courts, not less litigation, increasing expenses for all
concerned.

To give an example of a real domain dispute that has been "caught" by
the current interpretation, consider LegalSupply.com:

http://www.adrforum.com/domaindecisions/1438796.htm
https://www.thedomains.com/2012/05/24/legalsupply-com-lost-to-elegalsupply-com-the-transfer-of-a-domain-is-equivalent-to-a-new-registration/

Complainant registers a "worthless" TM for "eLegalSupply.com" long
after the LegalSupply.com domain name is created. Domain name changes
hands, and then the owner of the worthless "eLegalSupply.com goes for
the "domain upgrade" via UDRP. And they win the UDRP, demonstrating
how companies are exploiting the current incorrect interpretation (see
the blog post for the reaction).

This is the state of the UDRP today, and it must change.

Sincerely,

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






On Tue, Oct 16, 2018 at 5:33 PM, Greg Shatan <gregshatanipc at gmail.com> wrote:
> At best, what we have here with Hise and Schmidheiny is a split between the
> circuits.  Hise is not more correct simply because it was decided later.
> And Schmidheiny is not less correct because Hise disagreed with it.
>
> To the extent there’s any ambiguity here, the simpler solution would be to
> clarify once and for all that re-registration is registration.  This would
> be “perfectly aligned” with Schmidheiny and past practice with regard to
> domain names.  All in all, an objectively better result.
>
> An even simpler solution would be to eliminate the registration prong
> entirely.  Any purported ambiguities around “registration” or “creation”
> would be irrelevant and panels could focus on determining the actions of the
> domain name owner, without needing to look back at the one or another point
> in history.
>
> Both of these alternatives should be stated for consideration if this
> proposal proceeds to publication.
>
> Briefly, on other points.  Those SEC filings were just more agreements, so
> all that I said (and Gerald said) about that point still stands.  Domain
> names are not IP.  And the many “rationales” predicated on the idea that
> domain names are IP must be dismissed as based on a false premise.
>
> The language quoted from ACPA does not magically turn it from disjunctive to
> conjunctive.  It does not change “or” to “and.”  ACPA is still disjunctive —
> critical in terms of the elements of proof under both regimes.
>
> The Proposal seeks to exploit a claimed ambiguity to create a class of
> “immunized” domain names that can be used by anyone at any time in even the
> most flagrant abusive fashion without fear of a UDRP proceeding, simply
> because their initial registration was not in bad faith.  These weaponized
> domains would be more attractive to malfeasors, thus creating added value
> for the registrant —  the windfall referred to earlier.
>
> There’s no need to respond in more detail, given the detailed responses from
> Georges, Gerald, Brian and Scott, with which I agree.  In particular I agree
> that panelists originally and repeatedly have gotten this right, as did
> Schmidheiny, and this was never an “error” or a “mistake.”  Hise is the
> outlier, as was the Voyuer case, which did not actually examine the issue
> since the Complainant was found not to have a trademark (so the issue of
> registration date was essentially moot).
>
> I also agree that, even with the “low bar” for publication of submissions,
> this is one that should not be put forward.
>
> Best regards,
>
> Greg
>
>
> On Tue, Oct 16, 2018 at 3:57 PM George Kirikos <icann at leap.com> wrote:
>>
>> Hi Scott,
>>
>> Responding to the issues you raised in order:
>>
>> 1.A. Not going to get into the whole "who is a registrant" issue,
>> given the GDPR. Certainly we all understand that affects all disputes,
>> and is not limited to my proposal.
>> 1.B. Creation date is visible in WHOIS, e.g. for EXAMPLE.COM it's at:
>>
>> https://reports.internic.net/cgi/whois?whois_nic=example.com&type=domain
>>
>> Creation Date: 1995-08-14T04:00:00Z
>>
>> for Math.com it is at:
>> https://reports.internic.net/cgi/whois?whois_nic=math.com&type=domain
>>
>> Creation Date: 1998-09-10T04:00:00Z
>>
>> This is not open to interpretation/misinterpretation like "Registration
>> Date"
>>
>> 1.C. Transfer dates are not stored in WHOIS currently, for *existing*
>> disputes (where transfer of ownership is claimed as the new date).
>> Folks who respond can document things accordingly. Or, heck,
>> complainants can send a C&D first, actually reach out to the domain
>> owner, instead of using UDRP as a *first* resort. WHOIS history at
>> places like DomainTools can also be used to guess at these dates, as
>> is done today. The "years of precedent" that you point to were all
>> wrongly decided, as the Gopets decision demonstrates.
>>
>> 2. Use is an entirely separate part of the 3rd prong of bad faith.
>>
>> 3. Whether or not domain names are "intellectual property" doesn't
>> affect the proposal. See GoPets or Voyuer.com, i.e. how a
>> successor-in-interest is passed *all* the rights of the predecessor,
>> including priority rights. Also, a domain name right doesn't need to
>> be linked to trademark rights to still be considered IP. Take a look
>> at copyrights that can't be TMs. Yet copyrights are still IP (a
>> different type of IP).
>>
>> 4. You can use the courts, to go after *use* in bad faith (as you can
>> today, even for domains that are not registered in bad faith faith).
>> Your remedies would be different (e.g. not necessarily transfer of the
>> domain name, but ordering the registrant to cease the infringing use).
>> Furthermore, you can still go after obviously-malicious domains that
>> are never used early, if they have no conceivably good faith use,
>> today. e.g. google-registration-2018.horse need not be used at all, to
>> lose a UDRP/URS.
>>
>> 5. You seem to be very critical of the courts. Which specific national
>> courts do you have a problem with? Canada? USA? UK? France? China?
>> Japan? Here's a list of all the countries that have registrars (for
>> "mutual jurisdiction" purposes):
>>
>> https://www.internic.net/origin.html
>>
>> Tell me which ones are "rogue" in your eyes.
>>
>> What's funny is that often the same folks who are critical of national
>> courts are entirely uncritical when asked "Which nation's TMs should
>> be barred from the TMCH?" There, the answer is "A TM is a TM is a TM"
>> and that if one has a problem with that TM, take it up with "the
>> courts"!! (e.g. all the dubious TMs being used in the sunrise period
>> to game the system)
>>
>> Sincerely,
>>
>> George Kirikos
>> 416-588-0269
>> http://www.leap.com/
>>
>> On Tue, Oct 16, 2018 at 2:58 PM, Scott Austin <SAustin at vlplawgroup.com>
>> wrote:
>> > George:
>> > Thanks for the update. Per Brian's reality check I see the following
>> > showstopper issues (for me anyway) and do not support the proposal on
>> > these
>> > grounds:
>> > 1. Text of proposal creates, not clarifies ambiguity.
>> > The URS and UDRP policies shall be changed to require that complainants
>> > (excluding prior registrants of the domain name) prove that a domain
>> > name
>> > was created in bad faith (with the creation date of the domain name
>> > being
>> > the relevant date), replacing the current ambiguous registered in bad
>> > faith
>> > standard. In the event that a prior registrant of the domain name brings
>> > a
>> > dispute as complainant, they instead need only prove that a domain name
>> > was
>> > acquired in bad faith (with the acquisition date of the domain name by
>> > the
>> > current registrant being the relevant date). All other remaining prongs
>> > of
>> > the 3-part test shall continue as before (e.g. use in bad faith, no
>> > legitimate interest, confusingly similar to a TM).
>> >
>> >
>> > “Prior registrants” - in this instance you refer to registrant but you
>> > dismiss the term registered as ambiguous. Yet one becomes a registrant
>> > by
>> > registering a domain name on a date certain. However where do you look
>> > online (especially after GDPR) to confirm someone is a "prior
>> > registrant"?
>> > There is no grantor/grantee deed index at the local county recorder
>> > office
>> > that publicly discloses not only the current registrant, but each
>> > registrant
>> > prior to the current one where a change in ownership has occurred. And
>> > what
>> > is to preclude an original registrant from using an alias or dba and
>> > just
>> > changing ownership in the underlying “original” registrant organization.
>> > None of ownership data is authenticated or policed, except at the credit
>> > card swipe stage. Maybe creation should be tied and displayed based on
>> > that.
>> > “creation” and “creation date” – how is this more accurate than
>> > “registration date or initial registration date. Is creation an earlier
>> > moment, when the domain is approved in a board room, purchased by a
>> > promoter
>> > to be assigned to the company that will use it, requested? Searched for
>> > availability on whois? I could make a case filled with unique time
>> > consuming
>> > fact and circumstance checking that each one of those stages in the
>> > decision
>> > to acquire and use a domain was its “creation”. And why the carve out
>> > for
>> > prior registrants? Why not prior creators if that is the operative term.
>> > It
>> > doesn’t work.
>> > “Acquisition Date” – is this a date stated in a contract that a
>> > complainant
>> > can’t find. Registration date is the only date in whois that is
>> > available.
>> > This would undo or compromise years of precedent based on registration
>> > date
>> > and again creates the ambiguity of what circumstances demonstrate
>> > acquired
>> > and how do you investigate that. Unacceptable and no evidence this
>> > improves
>> > upon the status quo in clarity or effectiveness for intended purpose.
>> >
>> > And what about use – is this part of creation? Does your proposal open
>> > the
>> > door to the fatal disjunctive “registered or used” in bad faith,
>> > perceived
>> > as the death knell to the secondary market for domain names. Be careful
>> > what
>> > you wish for. I don’t see use mentioned anywhere in your proposal text,
>> > but
>> > see point E below.
>> > Domains as intellectual property. This is the biggest problem I have
>> > with
>> > your insistence that all domain names are created equally.  What about
>> > generic.com? Is a domain that cannot acquire trademark rights
>> > intellectual
>> > property? Sounds like merely what it is: a URL address licensed to a
>> > user by
>> > a registrar that conveniently converts machine readable numbers to text
>> > readable and more easily remembered by humans. Without your infusions of
>> > contract or trademark use this does not clearly fall under the category
>> > of
>> > IP and your argument fails.  As other’s have pointed out you frame your
>> > argument by conveniently using examples of domain names infused with
>> > intellectual property rights, either 1) by defining domain names as such
>> > in
>> > an agreement which in context could have added URLs or website addresses
>> > or
>> > maybe something more remote as long as agreed to by the parties; or 2) a
>> > “domain like” name comprised in part of an unregistered trademark term
>> > used
>> > as a component of a registered words plus design mark in a stylized font
>> > with a slogan. The slogan is a marketing device for an IP firm, not law
>> > or a
>> > ruling on domain names as intellectual property.
>> > If a string of serial domain acquisitions has renders the final
>> > successor
>> > beyond bad faith no matter how maliciously they use their purchased
>> > domain
>> > registration, what is the intent? Is the intent that domains like
>> > sleeper
>> > cells can be stockpiled in the thousands without use, so they do not
>> > come to
>> > the attention of rightsholders, which would first target use of a domain
>> > to
>> > support a phishing site or infringing site or even a parking site
>> > incorporating a deceptive misspelling of a trademark. Thus flying under
>> > the
>> > radar until sufficient repurchase and time elapse while they appear
>> > innocuous, they pass a date (your affiliated proposal suggests 2 years I
>> > believe) after which they can be sold on a secondary domain market to a
>> > successor registrant who now can spring into being putting a full blown
>> > phishing site, counterfeit site of the rights holder’s mark without
>> > worry of
>> > a summary proceeding as it is time barred or bad faith only applies to
>> > the
>> > initial registrant present at
>> > “creation” who financed the “sleeper period” but now can sell their
>> > vintage
>> > protected incontestable domains at a premium.
>> > But that’s not all. What your proposal’s Complainant/Respondent or
>> > rightsholder/disputed registrant two-dimensional approach fails to
>> > consider
>> > is that trademark rights are 3 dimensional. The trademark act in the US
>> > at
>> > least and I would venture most countries is a consumer protection act.
>> > You’ve left out consumers.  Why should consumers, those folks that TM
>> > and
>> > Circle R were “created” to protect from passed off inferior goods or
>> > services be subjected to confusion under your proposal because a
>> > rightsholder waited too long to protect its rights, or failed to get to
>> > a
>> > particular domain until it had changed hands multiple times while they
>> > used
>> > their limited resources to chase the most blatant offenders.  There is
>> > no
>> > evidence that the benefit to registrants afforded by your proposal
>> > outweighs
>> > the cost to rightsholders AND the consuming public. You have made it
>> > clear
>> > for some unsubstantiated, unproven reason the you want to make it hard
>> > for
>> > rightsholders to protect their marks and consumers, or eliminate summary
>> > proceedings altogether, forcing rightholders to march into court in
>> > distant
>> > regions of the globe, in jurisdictions where courts may take years to
>> > hear a
>> > case or may not recognize the same luxuries of due process and review,
>> > shortened statutes of limitations, lack technical understanding, etc.
>> > This
>> > would be the case already with many ccTLDs. The prize here appears to be
>> > taking away from rightsholders well-established protections that apply
>> > to
>> > the most valuable TLD - .com. For the foregoing reasons, George, I
>> > object to
>> > and do not support proposal 12.
>> >
>> >
>> >
>> > Best regards,
>> > Scott
>> >
>> > Please click below to  use my booking calendar to schedule:
>> >   a 15-minute call    a 30-minute call    a 60-minute call
>> >
>> >
>> > Scott R. Austin | Board Certified Intellectual Property Attorney | VLP
>> > Law
>> > Group LLP
>> > 101 NE Third Avenue, Suite 1500, Fort Lauderdale, FL 33301
>> > Phone: (954) 204-3744 | Fax: (954) 320-0233 | SAustin at VLPLawGroup.com
>> >
>> > -----Original Message-----
>> > From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> On Behalf Of George
>> > Kirikos
>> > Sent: Tuesday, October 16, 2018 12:55 PM
>> > To: gnso-rpm-wg <gnso-rpm-wg at icann.org>; Ariel Liang
>> > <ariel.liang at icann.org>
>> > Subject: Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12
>> >
>> > Hi again,
>> >
>> > Attached is the updated revised version of URS Proposal #12, simply
>> > adding
>> > the Gopets v. Hise case citation in section #8. Thanks to Brian for his
>> > "strong objection", otherwise I wouldn't have remembered that there was
>> > case
>> > law to show that this proposal would align the UDRP with the law.
>> >
>> > Sincerely,
>> >
>> > George Kirikos
>> > 416-588-0269
>> >
>> > https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.leap.com%2f&c=E,1,zxbn2tiatvkzhTWqLCBws9UpWsXQfALYuHFBkumURXOj2rNgWiHDb5SMRHapRED2kjZosRrEKzbsY9tcDWr5CcimUjT0IDk9PVjMk-qYCiPPPXI,&typo=1
>> >
>> >
>> > On Tue, Oct 16, 2018 at 12:43 PM, George Kirikos <icann at leap.com> wrote:
>> >> 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:
>> >> https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.wipo.int%2fexpo
>> >> rt%2fsites%2fwww%2famc%2fen%2fdocs%2fd20060636circuitdecision.pdf&c=E,
>> >> 1,Zv_K5R1ftgPNTQiVMR_bC87QMECSVRKnYtZUp7s19bYEZH7pyDxPmrrOvZN6ZlDS9FKm
>> >> TiTxL85qJLS83LA35hYYYZF8-y0WVrn51dOwmgcDmr41b_c,&typo=1
>> >> linked from
>> >> https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.wipo.int%2famc%
>> >> 2fen%2fdomains%2fchallenged%2f&c=E,1,gY1N97-hyy-P1Z5o-hqKcm3Ev6O-wEnMX
>> >> K3X-J_odUWYxGSzItAGVRQrpZrjfHSUXXwaVvftXV_forYiX6DTYDuIAL5QM5UbZGRZmkF
>> >> f72p4SA,,&typo=1  )
>> >>
>> >> “”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
>> >> https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fgopets.com&c=E,1,-
>> >> VgBFYawV9wu9qv-RzSR6QGGiHEe8kEPwnaf4eVwHmF83L-LceMWXH7w_BufTEzBgmyTqVb
>> >> PGpeXPqQRX8e1sL405GqpLLfW5D6FlfnUebdsGCTO_nI,&typo=1
>> >> 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
>> >>
>> >>
>> >> https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fgopets.com&c=E,1,DF99RAI3ybmbOz_-PzuqFMbtBZxMird3X0lJuuBFBWtKjN6IZR7cxhqozpRUuNmZ6EoYyudU-jXFUy4RHpf70psnP--oxffVLFx8UXhZA5rUXw,,&typo=1
>> >> was not a registration within the meaning of § 1125(d)(1).
>> >> Because Edward Hise registered
>> >> https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fgopets.com&c=E,1,5
>> >>
>> >>
>> >> JfuZSC5tr8d1NGTRclG7SA5HCEZEhyUmxBmgSJCj4PXlEA01vhXIu9EVO_ENPhLeH4_zPIrZuAoMsg9-D0TQnIl7prICFDUhaVndrR_bcGdG5mg&typo=1
>> >> in 1999, long before GoPets Ltd. registered its service mark, Digital
>> >> Overture’s re-registration and continued ownership of
>> >>
>> >> https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fgopets.com&c=E,1,7pUeaPOYFpJL-G1dy4FHDNn4hOhKtBkTqZ6LNuK29a7LdNCY6CsvwYQ0Co-HIr8XKEH7rRwb_sQGBvhY5xGnOjo8Svxm2Fm5LGARyFhnjpGkH3LP2w,,&typo=1
>> >> 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
>> >> https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.leap.com%2f&c=E
>> >> ,1,6SO43nms3azu6w2FDDcjjOwLnUDLMqH8Z2fNCiOWXeSHJf1IOdbm13c7jIhwFaSCI8Y
>> >> y9ymQjmKdiDXPO4BXpuLrxUkJTeqAWXWt0JHnDcGA_zkbTg,,&typo=1
>> >>
>> >>
>> >>
>> >> 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
>> >>> https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.leap.com%2f&c=
>> >>> E,1,odex5M2U4U5zyFqLlSBUNNjAReeUc74WjuV6TUe9H1I6Hc4cYo2XGYHt5kUGAMCks
>> >>> 8t15KdME-B164MaOXo9-Gk-I72usQuOYvPYq8W60a4NlX9aQo-o&typo=1
>> >>>
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