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

Tue Oct 16 17:31:57 UTC 2018

Brian:

There's still an "ambiguity", as "registered" has never been explicity
defined in the policy (it's been interpreted by panels differently, as
you yourself admit). I'm proposing resolving that ambiguity in the
same was as the Gopets court case, once and for all.

I can understand why pro-TM maximalists want to resolve the ambiguity
in a different manner, consistent with the way pro-complainant
panelists have been resolving it for nearly 20 years, because they
want TM rights to be superior to domain name rights. But, as I state
in the proposal, that interpretation by UDRP/URS panelists has been
incorrect. It's time to resolve it correctly, so that a "property
owner may sell all of the rights he holds in property" (inclusive of
priority date, i.e. creation date).

Tell me, Brian. When a TM is assigned to a new owner, what's the
"priority" date of that TM? Does it reset to the date that the new
owner acquired the TM?*** Why should domain name transfers/assignment
be any different?? i.e. why do you disagree with the Gopets ruling?

Sincerely,

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

P.S. ***Answer is obvious, namely "No", the date doesn't reset.

On Tue, Oct 16, 2018 at 1:22 PM, BECKHAM, Brian <brian.beckham at wipo.int> wrote:
> George,
>
> To set the record straight, any ambiguity (which as stated below occurred in a mere handful of the now almost 42,000 cases) has been put to rest, see e.g., the relevant section in the WIPO Overview:
>
> "NB, a number of cases in 2009 and 2010 (including Mummygold, Octogen, Parvi, and Jappy) explored application of registrant representations in UDRP paragraph 2 in finding so-called “retroactive” bad faith registration; while this particular concept has not been followed in subsequent cases, UDRP paragraph 2 may be relevant on its own terms."
>
> In fact, the ICA wrote about the settling of this issue over a year ago, applauding WIPO for its clarification:
>
> https://www.internetcommerce.org/udrp-better-late-than-never-ica-applauds-wipo-for-removing-misguided-retroactive-bad-faith/
>
> Regards,
>
> ________________________________________
> 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 7:12 PM
> To: gnso-rpm-wg
> Subject: Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12
>
> Hi Brian,
>
> Since the court in Gopets was fully aware of the older (2003)
> Schmidheiny case, there's no need for me to revise my proposal.
> Furthermore, there was a complicating issue, as to what was the
> correct date because the domain name had been created *prior* to the
> ACPA.
>
> As for whether or not there's "ambiguity", it's clear that there has
> been an ambiguity, otherwise the entire "renewal is a re-registration"
> debacle wouldn't have transpired. My proposal eliminates the
> ambiguity, and aligns the clear definition with that in Gopets.
>
> Sincerely,
>
> George Kirikos
> 416-588-0269
> http://www.leap.com/
>
>
>
> On Tue, Oct 16, 2018 at 12:56 PM, BECKHAM, Brian <brian.beckham at wipo.int> wrote:
>> George,
>>
>> I believe there is a conflicting case in the Third Circuit (Schmidheiny, 319 F.3d at 583), and again, there is no ambiguity under the UDRP.
>>
>> See inter alia the discussion at (http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2018-0738):
>>
>> "Although the disputed domain name was first registered in 1995, it was not registered by the Respondent then. As noted above, the Respondent first acquired rights to the disputed domain name in February 2017. That does not appear to have been as part of the continuation of an existing business such as a transfer between related parties in conjunction with an internal re-organization. Rather, it appears to have been an arm's length transaction between independent parties. In any event, the Respondent has not claimed it was anything other than an arm's length transaction.
>>
>> In support of its position, the Respondent cites a decision of the Ninth Circuit Court of Appeals in the United States, GoPets Ltd. v. Hise, et al., 657 F.3d 1024 (9th Cir. 2011). That was a decision under the Anticybersquatting Consumer Protection Act ("ACPA"). In Hise, the Ninth Circuit ruled that the "registration" of a domain name subject to the tests under ACPA was only the initial registration and not a subsequent re-registration by someone as successor in title to the first registrant.
>>
>> The usual rule under the Policy, however, is that a registration in a new, independent person's name, albeit a re-registration of an existing domain name, is treated as a separate act and to be assessed as such. See WIPO Overview 3.0, section 3.2 (in the context of the third limb of the Policy).
>>
>> The Panel notes that the circumstances in the Hise case, although not the basis of the Ninth Circuit's ruling, are consistent with the approach taken by Panels under the Policy. The original registration of the domain name in issue was by a Mr. Hise. The re-registration was as a result of his transfer of the domain name to a corporation controlled by him and his brother. That is arguably consistent with the type of transfer which would be treated as not involving a change in the underlying registrant under the Policy.
>>
>> The Panel also notes that the Hise court recognised the Third Circuit Court of Appeals had reached a different conclusion in Schmidheiny v. Weber, 319 F.3d 581 (3rd Cir. 2003). The Schmidheiny case involved different legislation, but the Ninth Circuit considered its decision was based on a wrong premise.
>>
>> In these circumstances, the Panel considers it is appropriate not to depart from the usual rule under the Policy as it has been interpreted by many Panels. The Policy operates in an international sphere between parties often in very different jurisdictions which have, or may have, different approaches or concerns.
>>
>> Accordingly, the registration of the disputed domain name by the Respondent will be treated as a new registration. Therefore, for the purposes of the Policy, the Respondent is treated as having registered the disputed domain name after the Complainant came into existence."
>>
>> --
>>
>> If only for completeness, this may be relevant to any further revisions.
>>
>> 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 6:54 PM
>> To: gnso-rpm-wg; Ariel Liang
>> Subject: Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12
>>
>> 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/
>>>>
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