[GNSO-RPM-WG] Unacceptable URS determinations our initial report will not begin to address
Paul Tattersfield
gpmgroup at gmail.com
Wed Dec 11 16:49:40 UTC 2019
Dear All,
Here are 3 example URS determinations that seem very troubling from the
public information available. As I pointed out on the call last week, the
recommendations from the WG subgroups fail to prevent what seem to be very
problematic determinations occurring. I hope all working group members will
agree this situation in the absence of further facts is totally
unacceptable and those leading the working group will take the necessary
action to ensure the initial report will include recommendations to ensure
nothing like this will be allowed to happen again.
Yours sincerely,
Paul.
*cfa.club *
Creation date July 17, 2017
Registrar
www.eachnic.com
Complainant submitted September
19, 2019
Commencement October 7, 2019
Default Date October
22, 2019
Domain Suspended October 25, 2019
Examiner Flip
Jan Claude Petillion
https://www.adrforum.com/DomainDecisions/1862966D.htm
Claimant CFA Institute of Charlottesville
Represented DLA Piper LLP (US) of Washington
Respondent Hao Ming of Beijing, International, CN.
Rationale
*The Complainant holds that the Respondent is attempting to disrupt the
business of a competitor but provides no proof that the Respondent is one
of its competitors. However, the passive holding of a domain name can
constitute bad faith registration and use, especially when combined with
other factors such as the respondent preventing a trademark or service mark
holder from reflecting its mark in a corresponding domain name, the failure
of the respondent to respond to the complaint, inconceivable good faith
use, etc. (See e.g., Telstra Corporation Limited, Telstra Corporation
Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Myer Stores
Limited v. Mr. David John Singh, WIPO Case No. D2001-0763; Liu.Jo S.p.A. v.
Martina Hamsikova, WIPO Case No. D2013-1261). In the present case,
Respondent is passively holding the disputed domain name as it does not
resolve to any active*
* website. *
*It is inconceivable to the Examiner that Respondent was unaware of
Complainant and its trademark rights when it registered the disputed domain
name which is identical to Complainant’s CFA registered trademark. Given
the well-known character of Complainant's CFA trademark, Respondent must
have had Complainant's trademark in mind when registering the disputed
domain name. This is further supported by the fact that the Respondent
registered the disputed domain name under the new gTLD “.CLUB”, which
increases confusion as the Complainant’s members can be considered as being
part of a club. Moreover, Examiner finds that, given the well-known
character of the Complainant’s CFA trademark, it is difficult to imagine
any future good faith use of the disputed domain name by Respondent. *
*Respondent did not file any response to contest the above. Therefore,
Examiner finds that the third element for Complainant to obtain the
suspension of a domain name under URS 1.2.6.3 has been proven *
*cfa.community* Creation
date September 24, 2019
Registrar
domains.google.com
Complainant Submitted October
8, 2019
Commencement October 8, 2019
Default Date October
23, 2019
Domain Suspended October 23, 2019
Examiner Dawn
Osborne
https://www.adrforum.com/DomainDecisions/1862966D.htm
Claimant CFA Institute of Charlottesville
Represented DLA Piper LLP (US) of Washington
Respondent Contact Privacy Inc. Customer 1245526592 of Toronto, ON, CA
Rationale
Effectively blank – just a repeat of the URS rules Not even mention of what
was being claimed
*cfa.plus *
Creation date September 25, 2019
Registrar
www.west.cn
Complainant Submitted October
16, 2019
Commencement October 17, 2019
Response Date October 29,
2019
Domain Suspended October 29, 2019
Examiner David
L. Kreider
https://www.adrforum.com/DomainDecisions/1866970F.htm
Claimant CFA Institute of Charlottesville
Represented DLA Piper LLP (US) of Washington
Respondent Peng Cheng Li of He Nan, International, CN
Rationale
*“The Respondent submits in support of his Response a certificate of
qualification issued to the Respondent, Peng Cheng Li (**李鹏程*
*), by the China Commodities Association and dated November 2012, along
with a business license dated 23 September 2019, pertaining to a
Shanghai-based information technology company. Respondent’s said
certificates each bear the legend: “For use as evidence in the CFA
Institute’s <cfa.plus> litigation only”. *
*Respondent concedes that he “had made no formal use of the domain name” by
the time he received notice of the commencement of these URS proceedings on
October 17, 2019. Significantly, moreover, the Panel notes the complete
absence of evidence to show demonstrable preparations to use the Disputed
Domain Name, or a name corresponding to the domain name, in connection with
any bona fide offering of goods or services. The Panel concludes that the
Registrant intentionally sought to disrupt the business of a competitor or
use the <cfa.plus> domain name to attract for commercial gain, Internet
users to Registrant’s web site or other on-line location, by creating a
likelihood of confusion with the Complainant’s CFA Mark, as to the source,
sponsorship, affiliation, or endorsement of Registrant’s product or service
on that web site or location*
*, or both. *
*cfa.business* Creation
date August 28, 2019
Registrar
www.godaddy.com
Complainant Submitted October
16, 2019
Commencement October 17, 2019
Default Date November
1, 2019
Domain Returned November 1, 2019
Examiner Richard
W. Hill
https://www.adrforum.com/DomainDecisions/1866971D.htm
Claimant CFA Institute of Charlottesville
Represented DLA Piper LLP (US) of Washington
Respondent Domains By Proxy, LLC / DomainsByProxy.com of Scottsdale,
AZ, US
Rationale
“*Complainant states: "By creating confusion through its registration of a
domain name wholly comprised of CFA Marks, Respondent is attempting to
disrupt the business of a competitor, which is evidence of bad faith
registration." Complainant provides evidence showing that the disputed
domain name is not being used. Since the standard of review in URS
proceedings is "clear and convincing", and Complainant does not explain why
failure to use the disputed domain name could constitute bad faith use, the
Panel finds that Complainant has not satisfied its burden of proof for this
element.”*
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20191211/9fe4be0f/attachment-0001.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: cfa.pdf
Type: application/pdf
Size: 79384 bytes
Desc: not available
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20191211/9fe4be0f/cfa-0001.pdf>
More information about the GNSO-RPM-WG
mailing list