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

gmlevine gmlevine at researchtheworld.com
Tue Oct 16 22:54:25 UTC 2018


I disagree with Georges in exaggerating the % of the "handful" of dreadfuls, that they "probably represent less than one percent of all decisions that have issued." The figure is probably closer to 1/10th of 1% of all decisions and more likely less than that. Gml 

-----Original Message-----
From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Nahitchevansky, Georges
Sent: Tuesday, October 16, 2018 5:43 PM
To: George Kirikos <icann at leap.com>; gnso-rpm-wg <gnso-rpm-wg at icann.org>
Subject: Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12

George K

You just insist on ignoring the purpose of the UDRP as a streamlined procedure.  Your go to the court approach is simply not a workable solution.  First, if you read my example, you would see that a court proceeding is often not realistic.  That is particularly so depending on where a party claims to be based or where the registrar is located (by the way, I plan on responding to Paul K's series of emails on jurisdiction issues, but have not had the time to do so yet).  Litigating in certain jurisdictions can be a nightmare, take years and be quite expensive.  The UDRP/URS are designed to provide a meaningful and expedited remedy -- unless, of course, you prefer a system that allows bad faith actors to act with impunity and little risk (all to the detriment of consumers). 

Second, your contention that the URS and UDRP are flawed and are increasingly being used for situations they were not intended for is in and of itself a flawed proposition. If you did a serious review of all UDRP cases, as opposed to spending your day looking for a handful of outlier cases, you would see that the UDRP and URS are working quite well overall.  The two RPMs effectively address many clear cut instances of abuse, and most Panelists have gotten quite sophisticated about the issues in UDRP and URS cases to create a fairly predictable system overall (one that benefits domain name owners as well as rights holders).  In that regard, keep in mind that there are panelist meetings to discuss and debate issues of concern, as well as scholarly overviews and treatises by serious organizations and people looking at the cases and what can be gleaned from them.  Above all, panelists these days are not hesitant to ding Complainants that overreach and do not prove their cases -- and/or who try to use, for example, the UDRP to address issues outside the scope of the RPM.  Just spend the time and read the over 50,000 UDRP decisions, or at least just the 6,000 or more decisions of the past two years.  

I am not going to disagree with you that there have been some isolated bad decisions, but that is simply not the rule overall.  A handful of bad decisions get way more airplay than the hundreds, if not thousands,  of good and well-reasoned decisions that issue.  To take that handful (which probably represent less than one percent of all decisions that have issued ) to then argue that the system is broken is really over reaching.  By that same analysis, then every court system in the world is broken.  There are certainly many court decisions that are not well-reasoned and/or are blatantly bad decisions -- particularly when you consider the number of bad judges around the world who are political hack appointments who know little about the law they purport to rule on, or make rulings based on political reasons.   Again, the point of the UDRP/URS is to create streamlined proceedings  -- proceedings that I think most would agree have been working well overall and provide predictability.  Proposals such as your date of creation proposal are essentially proposals that aim to gut these RPMs and make them useless.  How can there be balance when you threaten to open up a huge loophole that you know will get exploited by some bad actors and their representatives.  Now I am all in favor of reasonable tweaks to the RPMs, but many of the proposals I am seeing are not reasonable and clearly display a not so subtle agenda for the benefit of a few at the expense of many (and ultimately consumers).  

What I find particularly distasteful is the claim that panelists are constantly expanding rights.  Read all the cases and you will find that is not true.  You will also find that some of the nascent expansions, such as the Octagen line of cases, have been squarely criticized and rejected by Panelists and providers.  As for decisions you don't like, you should stop assuming right off the bat that these were wrongly decided.  There are representatives of both complainants and respondents that utterly fail to prove their cases, put in questionable or fabricated evidence or who simply lie about or mischaracterize facts.  Without the actual case file in front of you, it is hard for you to say what was put in front a panel.  Reading a decision may tell you something about what was  presented or not presented, but you don't know what was actually submitted.  Panelists need to make an assessment of what is in front of them and are generally conscientious in fairly evaluating the evidence submitted.  And by the way, these matters are not money making propositions, but essentially pro bono work.  Even the providers are not really making any money.   So in all, this type of rhetoric is as unproductive as someone claiming that domainers are only interested in making more money by increasingly finding ways to take advantage of the rights of others.  Such rhetoric has no place here and we should be trying to improve an already working system as opposed to trying to emasculate it for the benefit of a few. 


-----Original Message-----
From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> On Behalf Of George Kirikos
Sent: Tuesday, October 16, 2018 3:08 PM
To: gnso-rpm-wg <gnso-rpm-wg at icann.org>
Subject: Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12

Hi Georges N,

You seem to be responding to an older email, ignoring the Gopets citation discussed since then.

Creation date standard is not a "windfall", since bad faith use can still be handled by the courts. These are no longer "clear cut" cases, and the UDRP/URS was not designed for all types of TM infringement.
That's exactly why the UDRP/URS has been flawed, as complainants increasingly try to use it for situations where it was never intended.
Pro-complainant panelists and providers are all too happy to take on those cases, in order to make more money. It's up to us as policy-makers to establish a fair balance, to ensure that registrants'
concerns about this constant "expansion" of rights beyond real-world offline rights in the national courts is addressed.

Sincerely,

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


On Tue, Oct 16, 2018 at 2:50 PM, Nahitchevansky, Georges <ghn at kilpatricktownsend.com> wrote:
> This is a flawed proposal based on mischaracterizations.  The creation date standard proposed would essentially be a windfall to bad faith actors, by allowing parties to scoop up and use domain names in bad faith but rely on a shield of the creation date (as opposed to the date the name was acquired).
>
> The fact that something was registered in good faith by one party originally does not mean that the subsequent party did not acquire it in bad faith. George K argues that there is some sort of ambiguity in the registered in bad faith standard.  I beg to differ on that as UDRP Panels and the WIPO Overview are pretty clear on this issue (and protestations about Octagen, which is now dead and rejected, are misplaced).
>
> To begin, the argument on the assignability and transfer of domain names and trademarks mixes rights.  An assignment of a trademark requires the assignment of good will  that is appurtenant to that mark.  If a domain name correlates to a trademark then that assignment would cover that original domain transfer if the party acquiring the domain name also got the associated trademark rights.  In other words the new registrant would stand in the shoes of the prior owner.  The sale of a domain name can often just simply be a commercial transaction without any rights being passed (the buyer pays money and the seller gets the name like a commodity, and there is nothing said about rights being transferred).  In addition, it should be noted that trademarks require use of the mark with the specified goods and services or the rights can be lost.  So if a party acquired a trademark that has not been in use, then the purchaser might not have any rights in that mark and the rights might have to developed again  when use is established or a new application filed (in registration based countries).  In contrast a domain name can sit forever in a parked state without a per se risk of loss for non-use.  The point is that while domain names have value, they are likewise subject to certain requirements, namely that they are not being acquired to take advantage of or exploit another’s rights.
>
> But putting that aside, there is no ambiguity.  If one party owns a domain name and changes the ownership to another entity that he or she owns or controls, and shows in a proceeding  that this what happened, then that party's rights would run back to the original registration date (and Panel's consistently find accordingly).  Similarly if someone inherits an estate that contains some domain names, those rights would be viewed as running back to the original owner and would not be seen as a new registration.  And lastly in a situation where a party buys a domain name that connects to a trademark or business the party purchasing it would likewise step in the shoes of the predecessor.  The problem arises when domain names lapse, get sold in an auction or are simply sold as commodities between parties (not connected to a business or trademark).   The issue is whether the party acquiring the name is doing so in good faith or is doing so in bad faith to exploit the rights of another.   Let's say Party A registers widget.com in 2005 and used the name in Morocco for his or her widget business.  The business fails and is shut down in 2010 and the domain name then goes up for sale or is dropped and sold at auction (which depending on the registrar would maintain the creation date).  In 2007, Party B launches a new service in the US and Europe called widget that becomes quite successful in a number of countries.  In 2007, we all agree that Party B has no UDRP claim against widget.com, as Party A registered the domain name in 2005 before Party B adopted widget.   But now in 2010, Party C sees that widget.com is available and buys it and then uses it to take advantage of Party B's rights in widget (e.g. uses widget.com to defraud consumers of Party B).  Under George K's creation date proposal Party B would have no recourse because the domain name was originally created in 2005.  So Party C can essentially free ride on a prior registration date and register and use a domain name in bad faith.
>
> Now I know in George K's world he will say that Party B has recourse through the courts, but that is often not realistic and wildly expensive (and defeats the purpose of having a streamlined procedure to address abuse).  If Party C claims, for example, to be based in Nepal and uses a registrar in the Cayman Islands, then Party B may have little to no recourse (as Party B might need to litigate for years at a great expense to stop an active fraud).  The bottom line is that this proposal would create a major loophole that could easily be exploited by bad actors with impunity given the realities of the existing systems.  Panelists have been fairly consistent in their approach to bad faith registration and acquisition and Panelists have debated and thrown out limited doctrines that were seen at outliers (like Octagen).  So currently there is stability and much certainty as to what will be seen as a bad faith registration or acquisition.  While I am sure that some will disagree and site to outlier cases that are not the norm, I think this proposal will create way more problems than it purports to solve.  In particular it will create a major impediment and loophole in the conjunctive requirement of bad faith registration and use.  If anything, this proposal along with other ones being proposed to gut the URS and UDRP provides much more support to the notion that the existing conjunctive standard be dropped and that the standard of bad faith registration or use be adopted, as is already the case in a number of jurisdictions with UDRP like procedures.
>
>
>
>
> -----Original Message-----
> From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> On Behalf Of George 
> Kirikos
> Sent: Tuesday, October 16, 2018 10:36 AM
> To: gnso-rpm-wg <gnso-rpm-wg at icann.org>; Ariel Liang 
> <ariel.liang at icann.org>
> 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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