[GNSO-RPM-WG] Unacceptable URS determinations our initial report will not begin to address

Kathy Kleiman kathy at kathykleiman.com
Wed Dec 11 17:23:36 UTC 2019

Dear Paul,

I am writing as co-chair, but without the opportunity to talk with my 
other co-chairs. We did a complete investigation of each and every one 
of the URS cases which had taken place up to a certain time (I believe 
it was the end of 2018). Each and every case was reviewed by someone in 
this WG. Everyone had the chance to participate. Harvard Law School 
further created detailed tables.

Then we had to stop our research and analysis. At a certain point, you 
have to draw a line a line and move on. In this case, we moved on to our 
work on the TM Notices, Sunrise Periods and Trademark Clearinghouse 

/But we have a timeline, and the GNSO Council needs our work in Phase 
One to include in the New gTLD Applicant Guidebook./ All of the cases 
you mention, and which we appreciate, fall after our window of analysis.

Quick personal note that I think our recommendations clearly address at 
least one issue that you raise in your email.  One, and I quote, 
"Effectively blank – just a repeat of the URS rules Not even mention of 
what was being claimed" ==>  this is being addressed in a URS 
recommendation going out for public comment.

Best, Kathy

On 12/11/2019 11:49 AM, Paul Tattersfield wrote:
> 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
> Registrarwww.eachnic.com <http://www.eachnic.com>
> Complainant submittedSeptember 19, 2019
> CommencementOctober 7, 2019
> Default DateOctober 22, 2019
> Domain SuspendedOctober 25, 2019
> ExaminerFlip Jan Claude Petillion
> https://www.adrforum.com/DomainDecisions/1862966D.htm
> ClaimantCFA Institute of Charlottesville
> RepresentedDLA Piper LLP (US) of Washington
> RespondentHao 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 has been proven
> /*cfa.community*Creation date September 24, 2019
> Registrardomains.google.com <http://domains.google.com>
> Complainant SubmittedOctober 8, 2019
> CommencementOctober 8, 2019
> Default DateOctober 23, 2019
> Domain SuspendedOctober 23, 2019
> ExaminerDawn Osborne
> https://www.adrforum.com/DomainDecisions/1862966D.htm
> ClaimantCFA Institute of Charlottesville
> RepresentedDLA Piper LLP (US) of Washington
> RespondentContact 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
> Registrarwww.west.cn <http://www.west.cn/>
> Complainant SubmittedOctober 16, 2019
> CommencementOctober 17, 2019
> Response DateOctober 29, 2019
> Domain SuspendedOctober 29, 2019
> ExaminerDavid L. Kreider
> https://www.adrforum.com/DomainDecisions/1866970F.htm
> ClaimantCFA Institute of Charlottesville
> RepresentedDLA Piper LLP (US) of Washington
> RespondentPeng 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
> Registrarwww.godaddy.com <http://www.godaddy.com/>
> Complainant SubmittedOctober 16, 2019
> CommencementOctober 17, 2019
> Default DateNovember 1, 2019
> Domain ReturnedNovember 1, 2019
> ExaminerRichard W. Hill
> https://www.adrforum.com/DomainDecisions/1866971D.htm
> ClaimantCFA Institute of Charlottesville
> RepresentedDLA Piper LLP (US) of Washington
> RespondentDomains 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.”/
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