[gnso-rpm-wg] URS / UDRP proposals -- data on registrar/registry compliance costs
Mitch Stoltz
mitch at eff.org
Fri Sep 7 21:13:59 UTC 2018
Cybersquatting requires bad faith. (URS Procedure 1.2.6.3). A subsequent
user could use a domain name legitimately, even if a previous user did
not. The "doctrine of inevitable confusion" does not transform a
trademark into a global right to prevent the use of a word in a domain
name for all purposes. And a finding that a domain name has been
registered in bad faith doesn't create a presumption that future
registrants will also register the domain in bad faith. So I agree with
Paul and Jonathan that the balance of equities favors a shorter suspension.
Mitch
Mitch Stoltz
Senior Staff Attorney, EFF | 415-436-9333 x142
https://www.eff.org/donate | https://act.eff.org/
On 9/7/18 1:14 PM, Scott Austin wrote:
> Paul:
> If the domain that has been suspended had already been proven to be
> essentially identical to a registered mark how does your assumption
> of a subsequent "legitimate" use square with the doctrine of
> inevitable confusion. Won't putting the same conflicting domain back
> on the market merely accommodate and facilitate old cybersquatting
> wine in a new registrant bottle? And ensure whack a mole for the
> trademark holder.
>
> Scott
>
> Scott
>
>
>
> Sent from my T-Mobile 4G LTE Device
>
>
> -------- Original message --------
> From: Paul Keating <paul at law.es>
> Date: 9/7/18 1:23 PM (GMT-05:00)
> To: "BECKHAM, Brian" <brian.beckham at wipo.int>
> Cc: gnso-rpm-wg <gnso-rpm-wg at icann.org>
> Subject: Re: [gnso-rpm-wg] URS / UDRP proposals -- data on
> registrar/registry compliance costs
>
> Brian,
>
> I think that the lock should remain for the balance of the remaining
> year. I doubt anyone was thinking of long-term registrations when the
> rule was created. If the registration was for a longer period then
> the domain expires. I understand this means that bad actors can
> continue to potentially mis use a domain. However, the balance of
> equities IMHO rests in favor of freeing up the domain for other
> legitimate use.
>
> Sent from my iPad
>
> On 7 Sep 2018, at 17:29, BECKHAM, Brian <brian.beckham at wipo.int
> <mailto:brian.beckham at wipo.int>> wrote:
>
>> Paul,
>>
>> I could be wrong and invite him to correct me, but I think, with
>> respect, that Jonathan is incorrectly using the URS terminology of
>> the suspension for the /duration of the life of the domain name/
>> incorrectly as the concept of a “/lifetime lock/” (and certainly I
>> did not read it as a proposal for such duration).
>>
>> What you rightly note however, is that the an extended suspension
>> locks out third parties from using a domain name for whatever that
>> duration is (whether 1, 2, 5 years, or even in perpetuity).
>>
>> Brian
>>
>> *From:*gnso-rpm-wg [mailto:gnso-rpm-wg-bounces at icann.org] *On Behalf
>> Of *Paul Keating
>> *Sent:* Friday, September 07, 2018 4:13 PM
>> *To:* Jonathan Frost
>> *Cc:* gnso-rpm-wg
>> *Subject:* Re: [gnso-rpm-wg] URS / UDRP proposals -- data on
>> registrar/registry compliance costs
>>
>> The idea of an unlimited lock on a domain is absurd.
>>
>> Trademarks are limited both jurisdictionally and bu goods/services
>> classification.
>>
>> To justify a permanent lock the trademark holder would have to
>> satisfy a huge burden. Essentially having to prove the following:
>>
>> 1 the mark is registered globally in all jurisdictions.
>>
>> 2. The mark is globally famous such that it’s recognition transcends
>> any and all goods/services classifications. The mark must truly be a
>> household name. (Think Coca Cola blue jeans. There are not many
>> marks that would satisfy these requirements.
>>
>> 3. Even if famous jurisdictions differ widely in the applicable law
>> and factors necessary to determine fame.
>>
>> 3. The URS/UDRP is simply NOT an appropriate forum for such a
>> determination.
>>
>> 4. Any limitation based upon time is insufficient. First a trademark
>> lapses
>>
>> Only as a result of non-use or failure to renew. It is not like a
>> parent or copyright - both both of which were designed to be of
>> limited duration. This any absolute time reference would require
>> one to constantly monitor continued validity.
>>
>> 5. Given that there are non-conflicting uses for a phrase that is
>> also a trademark such a rule would both provide an unfair advantage
>> to the trademark holder and limit the rights of others who may wish
>> to use the same phrase for non conflicting purposes.
>>
>> 6. Many non infringing use cases exist - the basis of fair use. Fair
>> use is present in virtually every Trulaw underlying trademarks.
>>
>> 7. The original WIPO White Paper issued in 1999 clearly formulated
>> the foundational policy that the UDRP was NOT intended to expand
>> trademark rights beyond those which existed outside the Internet. I
>> see no reason to question the logic of that foundational policy
>> statement. I further cannot see any reason why the URS should be
>> treated differently.
>>
>> Let’s stop this silly discussion. It is an example of gross over
>> reaching.
>>
>> Paul Keating.
>>
>> Sent from my iPhone
>>
>>
>> On 6 Sep 2018, at 21:03, Jonathan Frost <jonathan at get.club
>> <mailto:jonathan at get.club>> wrote:
>>
>> Your point about the 10 year max is well taken, Maxim. I would
>> venture a guess that most domains that are the subject of abuse
>> are not registered for long periods though.
>>
>> I would be concerned about the operational overhead of removing
>> locks from the domains on a specific date. While you're right
>> that a lock (or any requirement whatever) can be overridden by
>> the order of a court of competent jurisdiction, I think that
>> building in specific dates in the distant future where a lock
>> should be removed could increase operational overhead.
>>
>> Jonathan
>>
>> On Thu, Sep 6, 2018 at 12:45 PM Maxim Alzoba <m.alzoba at gmail.com
>> <mailto:m.alzoba at gmail.com>> wrote:
>>
>> Hello Jonathan,
>>
>> I am resending it (was not processed by gnso-rpm-wg@ list).
>>
>> I think lifetime lock (if at all) should be limited to the
>> lifetime of the TM registration,
>>
>> to avoid dumping of some strings for no reason (when there is
>> no TM holder to protect,
>>
>> what is the reason for locking?)
>>
>> Also, all registrations terms are limited to the time of
>> Registry contract with ICANN (10 years), so at the best it
>> can be 10 years, and not a single day more.
>>
>> So either we do not use this idea, or we will have to create
>> mechanism of removing such lifetime-10years-lock, preferably
>> using the current system
>>
>> (for example, TM database to which URS complainant of that
>> time referred to , does not have the entry no more,
>>
>> so the party seeking for the registration can start a
>> process, might be even with the same price of filing via the
>> same URS provider, or it's successor).
>>
>> p.s: any kind of such lock can be overridden by a simple
>> village court in the same jurisdiction as the particular
>> registry is based.
>>
>> Sincerely Yours,
>>
>> Maxim Alzoba
>> Special projects manager,
>> International Relations Department,
>> FAITID
>>
>> m. +7 916 6761580(+whatsapp)
>>
>> skype oldfrogger
>>
>> Current UTC offset: +3.00 (.Moscow)
>>
>>
>>
>> On 5 Sep 2018, at 20:59, Jonathan Frost <jonathan at get.club
>> <mailto:jonathan at get.club>> wrote:
>>
>> For instance, there is ambiguity about what action a registry
>> should take when a domain which is already the subject of a
>> URS judgement & lifetime lock receives a UDPR judgement that
>> requires unlock & transfer. The URS rules don't account for
>> this situation, and by their letter, require that the domain
>> not be unlocked. However, the registries are also required to
>> comply with consensus policies (such as UDRP).
>>
>> Jonathan
>>
>> On Wed, Sep 5, 2018 at 1:47 PM Doug Isenberg <Doug at giga.law
>> <mailto:Doug at giga.law>> wrote:
>>
>> What are some of the “ambiguities in complying with the
>> rules”?
>>
>> Doug
>>
>> *From:* gnso-rpm-wg <gnso-rpm-wg-bounces at icann.org
>> <mailto:gnso-rpm-wg-bounces at icann.org>> *On Behalf Of
>> *Jonathan Frost
>> *Sent:* Wednesday, September 5, 2018 1:15 PM
>> *To:* icann at leap.com <mailto:icann at leap.com>
>> *Cc:* gnso-rpm-wg <gnso-rpm-wg at icann.org
>> <mailto:gnso-rpm-wg at icann.org>>
>> *Subject:* Re: [gnso-rpm-wg] URS / UDRP proposals -- data
>> on registrar/registry compliance costs
>>
>> I agree that Registries and Registrars need to be able to
>> recover the cost of administering the URS/UDRPs, as part
>> of the filing fee.
>>
>> The costs that the Registries/Registrars bear actually
>> goes beyond what Reg has said. There are situations where
>> we have to go to outside counsel or even ICANN to resolve
>> ambiguities in complying with the rules. Additionally,
>> the 24 hour action requirement on locking a domain that
>> has received a URS complaint actually increases the
>> resources that have to be dedicated, beyond the actual
>> number of minutes per complaint, because compliance
>> personal has to allocate/reserve a certain time per day
>> to perform the tasks, even if no complaint is received
>> that day.
>>
>> Just like the arbitration administrators charge a cost
>> recovery fee for administration as part of the filing
>> fee, it's just common since that the
>> Registries/Registrars would too.
>>
>> Jonathan Frost
>>
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