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

[George Kirikos]

Hi again,

Attached is the updated revised version of URS Proposal #12, simply
adding the Gopets v. Hise case citation in section #8. Thanks to Brian
for his "strong objection", otherwise I wouldn't have remembered that
there was case law to show that this proposal would align the UDRP
with the law.

Sincerely,

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


On Tue, Oct 16, 2018 at 12:43 PM, George Kirikos <icann at leap.com> wrote:
> Hi Brian:
>
> I refer you to the following case in the California courts, that
> referenced this exact topic:
>
> GOPETS v. Hise,
>
> http://cdn.ca9.uscourts.gov/datastore/opinions/2011/09/22/08-56110.pdf
>
> (also listed on the WIPO Website at:
> http://www.wipo.int/export/sites/www/amc/en/docs/d20060636circuitdecision.pdf
> linked from http://www.wipo.int/amc/en/domains/challenged/  )
>
> “”The primary question before us is whether the term “registration”
> applies only to the initial registration of the domain name, or
> whether it also applies to a re-registration of a currently registered
> domain name by a new registrant. We hold that such re-registration is
> not a “registration” within the meaning of § 1125(d)(1).”"
>
> [5] Like the text of § 8131(1)(A), the text of § 1125(d)(1) considered
> in isolation does not answer the question whether “registration”
> includes re-registration. Looking at ACPA in light of traditional
> property law, however, we conclude that Congress meant “registration”
> to refer only to the initial registration. It is undisputed that
> Edward Hise could have retained all of his rights to gopets.com
> indefinitely if he had main-
> tained the registration of the domain name in his own name. *****We
> see no basis in ACPA to conclude that a right that belongs to an
> initial registrant of a currently registered domain name is lost when
> that name is transferred to another owner. The general rule is that a
> property owner may sell all of the rights he holds in property.****
> GoPets Ltd.’s proposed rule would make rights to many domain names
> effectively inalienable, whether the alienation is by gift,
> inheritance, sale, or other form of transfer. Nothing in the text or
> structure of the statute indi-
> cates that Congress intended that rights in domain names should be inalienable.
>
> [6] We therefore hold that Digital Overture’s re-registration of
> gopets.com was not a registration within the meaning of § 1125(d)(1).
> Because Edward Hise registered gopets.com in 1999, long before GoPets
> Ltd. registered its service mark, Digital Overture’s re-registration
> and continued ownership of gopets.com does not violate § 1125(d)(1).
>
> There you have it. Have WIPO panels been observing this court
> precedent? Has WIPO updated their "WIPO Views"? Of course not, even
> though it's been published on WIPO's own website! Perhaps WIPO will
> take steps to remove that case from their website, just like they
> removed the PUPA.COM case involving my company??
>
> It's time to remove the ambiguity once and for all, and my proposal
> does just that, and furthermore aligns it with court precedent and
> common sense. I probably should have added this case to my revised
> proposal. I'll do that shortly, and send it again.
>
> Sincerely,
>
> George Kirikos
> 416-588-0269
> http://www.leap.com/
>
>
>
> On Tue, Oct 16, 2018 at 12:13 PM, BECKHAM, Brian <brian.beckham at wipo.int> wrote:
>> Speaking in my non-chair capacity, and mindful of the "low bar" that has been set for inclusion in the Initial Report, I would like to register the strongest of objections to this proposal.
>>
>> Not only would it give carte blanche to later-acquiring registrants to infringe a complainant's mark, but moreover, the claimed ambiguity blatantly mischaracterizes panel consensus described in the WIPO Overview, which does not reflect any "ambiguity" in how panels assess the applicable registration date.
>>
>> Perhaps one or two panelists or counsel who are members of this WG could add their views.
>>
>> Brian
>> ________________________________________
>> From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> on behalf of George Kirikos <icann at leap.com>
>> Sent: Tuesday, October 16, 2018 4:35 PM
>> To: gnso-rpm-wg; Ariel Liang
>> 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/
>>
>> World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
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