[GNSO-RPM-WG] WG discussion on proposal #6 - last week

[BECKHAM, Brian]

Thanks Claudio,

This supplemental clarification fits with what I have understood the proposal to say all along.  (For example, the NFL<https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0128.html> or Major League Baseball<https://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0985.html> could bring a consolidated claim<https://www.wipo.int/amc/en/domains/search/overview3.0/#item411> on behalf of the teams in their respective league.)

Thank you for this – which should allow us to consider this particular discussion closed – as we move towards drafting the Initial Report.

Brian

From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> On Behalf Of claudio di gangi
Sent: Wednesday, January 15, 2020 11:35 PM
To: Terri Agnew <terri.agnew at icann.org>
Cc: gnso-rpm-wg at icann.org
Subject: [GNSO-RPM-WG] WG discussion on proposal #6 - last week

hi all,

I just had a chance to catch up on last week's WG call, when we discussed proposal #6 among other topics.

Thanks for the robust discussion on this proposal. Since I wasn't able to join, I am writing to clarify and respond to members' questions about how the proposal is intended to align with the overall design of the URS procedure.

Under the existing URS procedure, multiple companies, i.e. complainants, are permitted to consolidate their claims against a single domain name registrant who has registered multiple domain names, but only when they can establish to the panelist that they are all related companies.

Under the UDRP, multiple unrelated companies are permitted to consolidate their claim in one proceeding against a single domain name registrant who has registered multiple domain names.

So the proposal harmonizes the URS with the UDRP in this one respect, by allowing unrelated companies to consolidate the same way they are permitted to consolidate under the UDRP.

Under the existing URS, importantly there is no requirement that the related companies use the same or similar trademarks or other business identifiers in commerce. So the way things exist today the related companies can appear to be unrelated entities on the surface (because they use different trademarks, trade names, and business identifiers) until their trademark registration certificates (and/or other legal documentation) are reviewed by the panelist in order to establish that the various companies are in fact related and all fall under the same corporate 'umbrella'. This documentation must be provided by the complainants and reviewed by the panelist under the existing rules.

Proposal #6 proposes to eliminate this step or requirement, i.e. that the companies are related, because it serves no practical purpose, in order to generate efficiencies and reduce costs.

Moreover, in terms of the number of domain names in a particular case:

the Providers charge additional fees based on the number of domain names per case, with additional fees when the complaint involves over a certain number of domain names. So the proposal does not touch upon this issue or recommend any changes in this respect.

I hope this explanation is helpful, and if there are any further questions please do not hesitate to let me know. Thanks in advance for your time.

Cheers,
Claudio


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