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

Thu Jan 16 20:31:45 UTC 2020

dear all,

I received some correspondence last night after I sent my last note, and I
am aware of the additional list traffic today.

Please kindly allow me to clarify status. I think its OK that we have minor
substantive discussion so long as it is within the parameters of
considering whether a proposal should be posted for public comment, as
noted by Brian. In fact, the only reason I sent the email last night is
because there was substantive discussion during last week's call and I
wasn't on that call to respond.

Here is the text of Proposal #6: *"*The recommendation is to permit
multiple unrelated complainants to bring a single complaint jointly against
a single domain name registrant (or related registrants) who has registered
multiple domain names,* by deleting the following procedural element within
Section 1.1.3 of the URS Procedure: "One Complaint is acceptable for
multiple related companies against one Registrant, but only if the
companies complaining are related." (emphasis added)*

Accordingly, under the existing URS rules, Section 1.1.3 already permits
multiple *related* companies to consolidate against a registrant. In order
to consolidate their claims, Section 1.1.3 sets forth that the complainants
establish and prove to the panelist that they are all related companies.

Under this scenario, some of the companies (or organizations) may appear to
be related because the various companies use the same or similar names,
trademarks, trade names, logos, shop signs, and/or other business
identifiers.

However, under this same scenario, some of companies *may not* appear
to be related,
because the various companies (which are in fact legally related) use
trademarks,
trade names, logos, shop signs, and/or other business identifiers that *are
not* similar.

In other words, under the existing URS rules, there is no requirement that
the legally-related companies use the same or similar trademarks, trade
names, logos, shop signs, or other related business identifiers.

For example, a parent company may be called "X" and use trademark "Y", and
its subsidiary, affiliate, joint-partnership, sister company, etc. may be
called "W" and use trademark "Z". What makes them "related companies" has
nothing to do with the name of the company, or which trademarks they have
acquired rights to, it is purely a matter of the corporate form and other
legal considerations relevant under the laws of the respective jurisdiction
in which the companies are incorporated, operate, or are otherwise
established.

What has to happen is these cases, is for the panelist to confirm at least
the following matters: 1) ownership of the trademarks; 2) the registrant is
one entity or person (or related entities or persons); 3) the domain names
have been registered and used in bad faith (under the clear and convincing
standard); and 4) the companies are all related companies, which naturally
requires the panelist to examine the underlying documentary evidence that
is provided by the complainants, such as their trademark registrations
certificates, and/or other corporate documentation that establishes the
companies are in fact legally related to one another.

However under the existing URS rules, Section 1.1.3, *unrelated* companies *are
not* permitted to consolidate. This is because the rule is hard-coded into
the URS, as specified in Section 1.1.3.

The proposal seeks to simply delete Section 1.1.3, which currently prevents
unrelated companies to consolidate their complaints.

In all cases, the ownership of the trademark(s) must be established, along
with the fact that the registrant (or related registrants) is the
registrant of the domain names subject of the complaint, and that the
respective domain name are registered and used in bad faith.

The reason I propose to delete this entire section (1.1.3) is because I
support the approach that Gerry described so well, which is that something
of this nature should come about as a matter of jurisprudence under the
procedure, the same way it has under the UDRP. In both situations, the
panelist has to perform the same exact steps and the Providers are
permitted to impose additional fees that correspond to the number of domain
names that are subject to the complaint.

Whether the companies are related or unrelated entities does not go to the
issue of which names they operate under, and which trademarks they use in
commerce. As outline above, related companies may be using different names
and different trademarks in the marketplace, and unrelated companies may be
using similar names and similar trademarks (but in terms of trademark law,
they are generally not permitted to use confusingly-similar trademarks,
unless there is an co-existence agreement and other issues that I don't
think we need to go into here).

I wanted to take a brief moment to thank Brian and Cyntia for providing
helpful illustrative examples of why it would make sense to permit
consolidation of complainants in practical terms, even when the
complainants are not *legally-related* companies, e.g. their relationship
comes about because they are in the same industry or other facts which
indicate they have been commonly-targeted by the cybersquatter. The
specific contours of which situations make sense to permit consolidation is
something better left to the jurisprudence of the particular procedure, and
therefore I believe it is wholly appropriate to delete Section 1.1.3 as
proposed in Proposal #6.

I'm sorry for the long note, but I hope it helps to clarify the existing
landscape and the intent of what is being proposed. I believe the URS is
under-utilized for significantly more vital reasons than the subject matter
of proposal #6, including the remedy and related issues that are the
subject of the other proposals. My intent is not to open up a wide ranging
discussion, I just wanted to provide a response because I didn't want to
leave these questions lingering for several months while the public
comments came through.

Cheers,
Claudio

On Wed, Jan 15, 2020 at 5:34 PM claudio di gangi <ipcdigangi at gmail.com>
wrote:

> 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
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20200116/64301d1f/attachment.html>