[GNSO-RPM-WG] Unacceptable URS determinations our initial report will not begin to address
Poncelet Ileleji
pileleji at ymca.gm
Wed Dec 11 18:21:40 UTC 2019
++1 thanks Kathy and I concur with Brian
Kind regards
Poncelet
On Wednesday, 11 December 2019, BECKHAM, Brian <brian.beckham at wipo.int>
wrote:
> Thanks Kathy, and I agree that the WG review and resulting proposed fixes
> and recommendations already speak to this concern.
> Brian
>
>
> Sent from my WIPO mobile
>
> On 11 December 2019 at 18:25:38 CET, Kathy Kleiman <kathy at kathykleiman.com>
> wrote:
>
> 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
> reviews.
>
> *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
> 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.”*
>
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--
Poncelet O. Ileleji MBCS
Coordinator
The Gambia YMCAs Computer Training Centre & Digital Studio
MDI Road Kanifing South
P. O. Box 421 Banjul
The Gambia, West Africa
Tel: (220) 4370240
Fax:(220) 4390793
Cell:(220) 9912508
Skype: pons_utd
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