[GNSO-RPM-WG] Unacceptable URS determinations our initial report will not begin to address
Paul Tattersfield
gpmgroup at gmail.com
Thu Dec 12 14:37:24 UTC 2019
Dear Brian and Kathy,
Kathy, I think it would be prudent to take a closer look at the examples I
provided. The only reason I included the cfa.community determination was to
illustrate that if the panellist had changed their practice to meet the
WG’s new recommendations it wouldn’t make any difference. Even after 4+
years of weekly working group meetings the recommendations will
demonstrably fail to help in dozens of similar cases going forward.
Brian, Firstly URS does not offer relief for a TM holder wanting to reflect
their mark in a domain. Quite simply it is not the correct RPM for the
claimant to use.
Secondly the panellists conflation of passive holding with anticipatory
cybersquatting is misguided and will have a chilling effect on innocent,
non competing, non infringing businesses, this is against the whole raison
d'être for new gTLDs.
Thirdly whilst I appreciate these determinations were from the FORUM rather
than your employer WIPO these three panellists are some of the most
experienced with at least one being a lead panellist in 3 panel member UDRP
cases, 1 being a panellist since 2001 and one having determined dozens of
claims.
Fourthly such clearly egregious decision making introduces unnecessary and
unacceptable tension between the administrative and judicial routes. UDRP
is already misaligned with ACPA in this regard and compounding this is
unwise. Many complainants and quite a few IP attorneys it seems are not
aware that attempted Reverse Domain Name Hijacking is also a violation of
ACPA. For the unwary correctly resolving these matters is expensive.
https://domainnamewire.com/2019/09/05/it-cost-480843-to-defend-imi-com/
This working group has a responsibility to provide leadership and clarity
in these matters.
Yours sincerely,
Paul
p.s. Poncelet, great to see you again it’s been too long!
On Wed, Dec 11, 2019 at 6:21 PM Poncelet Ileleji <pileleji at ymca.gm> wrote:
> ++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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