[gnso-rpm-wg] URS / UDRP proposals -- data on registrar/registry compliance costs
Mitch Stoltz
mitch at eff.org
Tue Sep 11 19:22:24 UTC 2018
Dear Scott:
The owner of a trademark doesn't have the exclusive right to use that
trademark in a domain name. Others can use it, either to sell goods or
services in different geographic or product markets, to criticize the
rightsholder, or simply to use it in good faith as a word or phrase with
independent meaning. Cybersquatting and other unlawful uses of a
trademark have always required bad faith on the part of the user, and
the absence of any independent right to use the mark. Likelihood of
confusion alone has never been enough.
Because the illegal use of a domain name has always turned on the
circumstances and bad faith of the user, there can be no presumption
that future uses will be illegitimate. If "Example" were a popular brand
of clothing, then example.xyz may well be "attractive[] to
cybersquatters" and have "potential to benefit from confusing similarity
with a registered mark." But that's irrelevant to a blogger who wants to
criticize Example Clothing's labor practices, a different business
called Example that sells sheet metal, and many other legitimate users
who also have the "potential to benefit" from the use of that domain
name. One person who registers example.xyz in bad faith and loses a URS
proceeding does not diminish the rights of those future users. Nor does
one URS proceeding give Example Clothing superior rights in the domain
name over Example Sheet Metal or the labor activist.
Either a "lifetime" suspension or a right of first refusal would
effectively create a presumption of bad faith on the part of future
users. There's no basis for that in trademark law. Either proposal would
elevate the rights of trademark holders above anything granted by
national law, and above the rights of other legitimate users. That's an
extraordinary ask.
Mitch
Mitch Stoltz
Senior Staff Attorney, EFF | 415-436-9333 x142
https://www.eff.org/donate | https://act.eff.org/
On 9/8/18 2:32 PM, Scott Austin wrote:
>
> Mitch:
>
>
> The balance of what equities? It is easy to assume away the problem
> speculating that “A subsequent user could use a domain name
> legitimately”. There is nothing in your comment that supports this
> speculation that the domain name once released from suspension would
> be available to or of interest to fewer cybersquatters. In fact it may
> now have alerted new ones to its potential.
>
> Before the suspension the odds may have been even that the domain
> could be put to legitimate or illegitimate use. Once the domain has
> demonstrated its capacity for attractiveness to cybersquatters for
> illegitimate use through confusing similarity to a registered mark
> that resulted in URS suspension, the odds are more likely the domain,
> now established as having verified potential to benefit from confusing
> similarity with a registered mark, would have gained a cybersquatting
> seal of approval and perhaps the attention of a wider audience.
>
> What is your evidence that the domain post suspension is more likely
> to be used for legitimate purposes. Clearly at least one registrant
> was attracted to the domain and found value in it for illegitimate
> use. Why not others? More importantly, what is to prevent that same
> registrant, masked under the guise of a new entity, from returning for
> a second bite at the apple when suspension ends and the domain is once
> again at market? Especially when there is no vetting of the true
> ownership of a new entity that could be used by the former
> cybersquatting registrant’s owner to apply for its second round of
> illegitimate use.
>
> Shorter suspension periods mean the domain is more quickly cycled back
> into the queue for, more likely, another round of whack a mole
> deterrence on the part of the trademark holder. That is assuming
> another battle on a different domain name front hasn’t weakened or
> distracted their vigilance at the time suspension ends.
>
> There is no transfer remedy under the URS, but would you be adverse
> Mitch to granting a successful complainant a right of first
> opportunity to register the disputed domain when suspension ends? If
> not why not?
>
> Best regards,
>
> Scott
>
> */Please click below to use my booking calendar to schedule:/*
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>
> *IntellectualPropertyLaw 100 **microbadge[1]*
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>
> Scott R. Austin | Board Certified Intellectual Property Attorney | VLP
> Law Group LLP
>
> 101 NE Third Avenue, Suite 1500, Fort Lauderdale, FL 33301
>
> Phone: (954) 204-3744 | Fax: (954) 320-0233 | SAustin at VLPLawGroup.com
> <mailto:SAustin at VLPLawGroup.com>
>
> *From:*gnso-rpm-wg <gnso-rpm-wg-bounces at icann.org> *On Behalf Of
> *Mitch Stoltz
> *Sent:* Friday, September 7, 2018 5:14 PM
> *To:* gnso-rpm-wg at icann.org
> *Subject:* Re: [gnso-rpm-wg] URS / UDRP proposals -- data on
> registrar/registry compliance costs
>
> 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://linkprotect.cudasvc.com/url?a=https%3a%2f%2fwww.eff.org%2fdonate&c=E,1,lqLRZQ-tzQlB6GtbNt-MdU3kmoBDQs5Y3FQwUNpQRx6zZPrkEAEiF02xJfwdcNtyh59rjgR6-Jaq13ROTW6xJxSc8SjN0fjfoXkWe-HvCevZMQ4,&typo=1> |https://act.eff.org/
> <https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fact.eff.org%2f&c=E,1,Zdvs17kpyovD8Tl44CRg0aXRYQNZTPNSUJ8zHeUPwbTsVqz1qgloskN3gDiO6Z5nUWUVL2dZHF77_NEQL7iQW2FGcJSxsi9Eeibhp-cNpWoqydIoekQTJqFV&typo=1>
>
> 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> <mailto:paul at law.es>
>
> Date: 9/7/18 1:23 PM (GMT-05:00)
>
> To: "BECKHAM, Brian" <brian.beckham at wipo.int>
> <mailto:brian.beckham at wipo.int>
>
> 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
>
> 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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