[gnso-rpm-wg] URS / UDRP proposals -- data on registrar/registry compliance costs

Fri Sep 7 14:20:59 UTC 2018

Paul,

I think the misunderstanding here is that when I say "lifetime lock", I'm
only referring to the fact that, under 10.2 of the URS Procudures (
http://newgtlds.icann.org/en/applicants/urs/procedure-01mar13-en.pdf), when
a party prevails in a URS case, the domain is locked for the life of the
domain registration: "Immediately upon receipt of the Determination, the
Registry Operator shall suspend the domain name, *which shall remain
suspended for the balance of the registration period* and would not resolve
to the original web site. "

I merely pointed this out to show a potential conflict with the rules of a
subsequently filed UDRP.   And I was only pointing it out to support
George's point that the registry operators / registrars are sustaining
costs associated with administration, and should be equally entitled to
cost recovery as WIPO/NAF.

This seems like common sense to me.

Jonathan

On Fri, Sep 7, 2018 at 10:12 AM Paul Keating <paul at law.es> wrote:

> The idea of an unlimited lock on a domain is absurd.
>
> Trademarks are limited both jurisdictionally and bu goods/services
> classification.
>
> To justify a permanent lock the trademark holder would have to satisfy a
> huge burden. Essentially having to prove the following:
>
> 1   the mark is registered globally in all jurisdictions.
>
> 2.  The mark is globally famous such that it’s recognition transcends any
> and all goods/services classifications.  The mark must truly be a household
> name.  (Think Coca Cola blue jeans. There are not many marks that would
> satisfy these requirements.
>
> 3. Even if famous jurisdictions differ widely in the applicable law and
> factors necessary to determine fame.
>
> 3. The URS/UDRP is simply NOT an appropriate forum for such a
> determination.
>
> 4. Any limitation based upon time is insufficient. First a trademark lapses
> Only as a result of non-use or failure to renew. It is not like a parent
> or copyright - both both of which were designed to be of limited duration.
>   This any absolute time reference would require one to constantly monitor
> continued validity.
>
> 5. Given that there are non-conflicting uses for a phrase that is also a
> trademark such a rule would both provide an unfair advantage to the
> trademark holder and limit the rights of others who may wish to use the
> same phrase for non conflicting purposes.
>
> 6. Many non infringing use cases exist - the basis of fair use. Fair use
> is present in virtually every Trulaw underlying trademarks.
>
> 7.   The original WIPO White Paper issued in 1999 clearly formulated the
> foundational policy that the UDRP was NOT intended to expand trademark
> rights beyond those which existed outside the Internet. I see no reason to
> question the logic of that foundational policy statement. I further cannot
> see any reason why the URS should be treated differently.
>
> Let’s stop this silly discussion. It is an example of gross over reaching.
>
> Paul Keating.
>
> Sent from my iPhone
>
> On 6 Sep 2018, at 21:03, Jonathan Frost <jonathan at get.club> wrote:
>
> Your point about the 10 year max is well taken, Maxim.  I would venture a
> guess that most domains that are the subject of abuse are not registered
> for long periods though.
>
> I would be concerned about the operational overhead of removing locks from
> the domains on a specific date.  While you're right that a lock (or any
> requirement whatever) can be overridden by the order of a court of
> competent jurisdiction, I think that building in specific dates in the
> distant future where a lock should be removed could increase operational
> overhead.
>
> Jonathan
>
> On Thu, Sep 6, 2018 at 12:45 PM Maxim Alzoba <m.alzoba at gmail.com> wrote:
>
>> Hello Jonathan,
>>
>> I am resending it (was not processed by gnso-rpm-wg@ list).
>>
>> I think lifetime lock (if at all) should be limited to the lifetime of
>> the TM registration,
>> to avoid dumping of some strings for no reason (when there is no TM
>> holder to protect,
>> what is the reason for locking?)
>>
>> Also, all registrations terms are limited to the time of Registry
>> contract with ICANN (10 years), so at the best it can be 10 years, and not
>> a single day more.
>>
>> So either we do not use this idea, or we will have to create mechanism of
>> removing such lifetime-10years-lock, preferably using the current system
>> (for example, TM database to which URS complainant of that time referred
>> to , does not have the entry no more,
>> so the party seeking for the registration can start a process, might be
>> even with the same price of filing via the same URS provider, or it's
>> successor).
>>
>> p.s: any kind of such lock can be overridden by a simple village court in
>> the same jurisdiction as the particular registry is based.
>>
>> Sincerely Yours,
>>
>> Maxim Alzoba
>> Special projects manager,
>> International Relations Department,
>> FAITID
>>
>> m. +7 916 6761580(+whatsapp)
>> skype oldfrogger
>>
>> Current UTC offset: +3.00 (.Moscow)
>>
>>
>>
>> On 5 Sep 2018, at 20:59, Jonathan Frost <jonathan at get.club> wrote:
>>
>> For instance, there is ambiguity about what action a registry should take
>> when a domain which is already the subject of a URS judgement & lifetime
>> lock receives a UDPR judgement that requires unlock & transfer.  The URS
>> rules don't account for this situation, and by their letter, require that
>> the domain not be unlocked.  However, the registries are also required to
>> comply with consensus policies (such as UDRP).
>>
>> Jonathan
>>
>> On Wed, Sep 5, 2018 at 1:47 PM Doug Isenberg <Doug at giga.law> wrote:
>>
>>> What are some of the “ambiguities in complying with the rules”?
>>>
>>>
>>>
>>> Doug
>>>
>>>
>>>
>>>
>>>
>>> *From:* gnso-rpm-wg <gnso-rpm-wg-bounces at icann.org> *On Behalf Of *Jonathan
>>> Frost
>>> *Sent:* Wednesday, September 5, 2018 1:15 PM
>>> *To:* icann at leap.com
>>> *Cc:* gnso-rpm-wg <gnso-rpm-wg at icann.org>
>>> *Subject:* Re: [gnso-rpm-wg] URS / UDRP proposals -- data on
>>> registrar/registry compliance costs
>>>
>>>
>>>
>>> I agree that Registries and Registrars need to be able to recover the
>>> cost of administering the URS/UDRPs, as part of the filing fee.
>>>
>>>
>>>
>>> The costs that the Registries/Registrars bear actually goes beyond what
>>> Reg has said.  There are situations where we have to go to outside counsel
>>> or even ICANN to resolve ambiguities in complying with the rules.
>>> Additionally, the 24 hour action requirement on locking a domain that has
>>> received a URS complaint actually increases the resources that have to be
>>> dedicated, beyond the actual number of minutes per complaint, because
>>> compliance personal has to allocate/reserve a certain time per day to
>>> perform the tasks, even if no complaint is received that day.
>>>
>>>
>>>
>>> Just like the arbitration administrators charge a cost recovery fee for
>>> administration as part of the filing fee, it's just common since that the
>>> Registries/Registrars would too.
>>>
>>>
>>>
>>> Jonathan Frost
>>> _______________________________________________
>>> gnso-rpm-wg mailing list
>>> gnso-rpm-wg at icann.org
>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>
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