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

[Greg Shatan]

Neither “citation” provides support for the supposition that  “Domain name
[sic] are intellectual property.”

The first is a definition of “Intellectual Property” contained in a license
agreement; such definitions are only for use in and purposes of the
agreement and the convenience of drafting, and does not stand for any
absolute truth that each named item is an article of intellectual property
in the eyes of the law or in fact.

The second is a slogan contained in a registered trademark, and (I presume)
is intended to promote the idea that a registrar affiliated with an
intellectual property law firm will provide superior service because of the
connection between domain names and intellectual property (specifically,
trademarks).

What these “citations” tend to show is that domain names are often lumped
in with intellectual property, that they are a use of intellectual
property, that domain names tend to be licensed along with the intellectual
property they use, that registration and management of domain names
arguably benefits from awareness of and experience with intellectual
property concerns, and that Googling (sorry, Google <brand> searching) does
not prove anything without further analysis, and that “fun” is not relevant
to the probative value of a “citation.”

Best regards,

Greg

On Tue, Oct 16, 2018 at 11:19 AM George Kirikos <icann at leap.com> wrote:

> Hi Gerald,
>
> Domain name are intellectual property. As I cited in the proposal itself:
>
>
> https://www.sec.gov/Archives/edgar/data/1645194/000119312515394008/d30149dex99h4.htm
>
> " “Intellectual Property” shall mean all (a) trademarks, service
> marks, ****domain names****, trade dress, logos and trade names and
> registrations and applications for registration thereof, (b)
> copyrights and registrations and applications for registration
> thereof, (c) trade secrets and confidential business information,
> including data, methodologies and algorithms relating to market
> indices, and (d) other proprietary rights relating to any of the
> foregoing. " (emphasis added)
>
> I'm happy to provide you with more citations, if you'd like. Here's a
> particularly fun one:
>
>
> http://tsdr.uspto.gov/#caseNumber=78352055&caseType=SERIAL_NO&searchType=statusSearch
>
> Mark: LADASDOMAINS DOMAIN NAMES ARE INTELLECTUAL PROPERTY
>
> :-)
>
> As for the Voyuer.com case, the following finding is the relevant part:
>
> "As to Respondent’s right to the mark, since Respondent has
> demonstrated conclusively that it registered its domain name before a
> registration of the trademark was ever attempted. "
>
> The registration of the trademark was attempted on the application
> filing date, December 15, 1998:
>
>
> http://tsdr.uspto.gov/#caseNumber=75605968&caseType=SERIAL_NO&searchType=statusSearch
>
> Xedoc Holdings acquired the domain name in dispute, Voyuer.com in
> January of 2005, from the prior owner, and the domain's creation date
> was in 1997.
>
> Thus, the panel's finding that it "registered its domain name before a
> registration of the trademark was ever attempted" is true only if
> "registered its domain name" refers to the creation date (in 1997),
> since we've already established that the trademark was filed on
> December 15, 1998. The panel clearly did not find that January 2005
> was the time it "registered its domain name" for the purpose of the
> relevant bad faith test.
>
> Sincerely,
>
> George Kirikos
> 416-588-0269
> http://www.leap.com/
>
>
>
> On Tue, Oct 16, 2018 at 11:02 AM,  <gmlevine at researchtheworld.com> wrote:
> > Domain names, valuable or not, are not intellectual property. The
> referenced Virtual Dates (Forum 2005) decision did not rest on a finding
> that the new owner was a successor in interest.  GmLevine
> >
> > -----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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