October 2018 - GNSO-RPM-WG - lists.icann.org

URS levels of support for public comments
by Tushnet, Rebecca Oct. 20, 2018

Oct. 20, 2018

Following up on what I said on one of the calls, and consistent with Greg Shatan's comments (an agreement that I think should probably be noted as significant in itself), I don't think the staff categorizations have worked. If the ultimate point is to get feedback on potential fixes that have been raised, and we don't want to spend a lot more time on this, then I would say we may need to pass on the proposals as non-consensus proposals for community feedback. As Greg did, I supported proposals for comment that I am presently unlikely to support for adoption; based on other comments, I suspect many of us did so--which means that any staff-prepared summary of objections received is also going to be unrepresentative of the full range of arguments against a particular proposal unless we spend a lot more time on it. One specific thing: the charter asks if the URS is fit for purpose. If you agree that the charge allows the answer "no," then one recommendation for a fix is "make it the UDRP," if you think the game isn't worth the candle. That proposal is thus clearly within scope. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759

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UPDATED - Final Report: TMCH Sunrise & Trademark Claims Survey
by Ariel Liang Oct. 20, 2018

Oct. 20, 2018

Dear RPM PDP Working Group members, Analysis Group have updated the Final Report by including the table of content for easier reference on page 2. Please find attached. For the presentation of the survey results, this report will be used, accompanying Analysis Group’s slides. Best Regards, Mary, Julie, Ariel & Berry From: Ariel Liang <ariel.liang(a)icann.org> Date: Thursday, October 18, 2018 at 1:36 AM To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Final Report: TMCH Sunrise & Trademark Claims Survey Dear RPM PDP Working Group members, Analysis Group will present the TMCH Sunrise and Trademark Claims survey results during session 2<https://63.schedule.icann.org/meetings/901716> and session 3<https://63.schedule.icann.org/meetings/901722> of the Working Group meetings at ICANN63. To facilitate your participation in the sessions, please find attached the Final Report prepared by the Analysis Group. Key findings from the survey results are from page 6 to page 52. The complete survey results are included in the appendixes. Analysis Group plans to review the survey results in the order of the report and engage in discussions with the Working Group. The order is as follows: 1. Actual Domain Name Registrants 2. Potential Domain Name Registrants 3. Trademark Owners 4. New gTLD Registry Operators 5. Registrars Selling Domain Names Registered in the New gTLDs As a refresher and for those who may not be familiar with the survey, page 2 to page 6 provides background information of this survey project. The complete final survey questions are also included in the appendixes. The survey was launched on 6 September and closed on 5 October 2018. Best Regards, Mary, Julie, Ariel & Berry

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REMINDER: Agenda and Materials for 12 October Working Group Meeting 1700 UTC
by Julie Hedlund Oct. 18, 2018

Oct. 18, 2018

Dear RPM PDP Working Group members, On behalf of the Co-Chairs, please see the draft agenda below for the Working Group meeting on Friday, 12 October at 1700 UTC for 120 minutes (meeting may not require the full 120 minutes). Per Co-Chairs’ Proposed Procedure, for this next meeting, the Working Group will continue discussion of the Individual URS Proposals. According to the timeline published on the wiki the order of the presentation is as follows. WG members are requested to review the presentations prior to Wednesday’s meeting. George Kirikos (#23): https://community.icann.org/download/attachments/93126760/URS-Proposal-23.p… George Kirikos (#32): https://community.icann.org/download/attachments/93126760/URS-Proposal-32.p… George Kirikos (#33): https://community.icann.org/download/attachments/93126760/URS-Proposal-33.p… George Kirikos and Zak Muscovitch (#34): https://community.icann.org/download/attachments/93126760/URS-Proposal-34.p… NOTE FOR WG MEMBERS REVISING PROPOSALS: If WG members have revised/combined proposals the Co-Chairs request that they send them to the WG list as soon as possible and be ready to present them during the meeting on Friday, 12 October. Staff have updated the numberings displayed on the proposals to be consistent with the numberings on the wiki. The wiki page also includes a document that consolidates all URS proposals from individual members to facilitate viewing/reference. Per the procedure, please also note the following time requirements for the presentations: When a proposal is up for discussion, its proponent will be accorded a maximum of five (5) minutes to orally present the proposal, rationale, and supporting evidence. The floor will then be open to other Working Group members to comment on the proposal for a maximum of two (2) minutes each, with total discussion limited to twenty (20) minutes. However, if there is exceptionally high interest in a topic, the Co-Chairs would have discretion to increase the discussion time. At the end of twenty (20) minutes, or when there are no more commenters in queue, the proponent will have up to four (4) minutes to respond and/or propose a modification of the proposal based upon the discussion. Depending on the actual progress during the Wednesday meeting, if a proposal cannot be presented due to time limitation, the presentation should be deferred to the meeting on 12 October. Draft Agenda: Review Agenda/Statements of Interest Updates Discussion of Individual URS Proposals (See: wiki) ICANN63 Schedule (see attached) AOB Best, Mary, Ariel, Berry, and Julie On Behalf of the RPM PDP WG Co-Chairs

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URS "Loser Pays" proposal vs. TTAB Manual of Procedure
by George Kirikos Oct. 18, 2018

Oct. 18, 2018

Hi folks, In addition to the past concerns expressed re: identity theft, and how it can lead to a denial of service attack if a loser pays policy was adopted for the URS: https://mm.icann.org/pipermail/gnso-rpm-wg/2018-September/003291.html I did some additional research today on the United States TTAB procedures, and found this: https://tmep.uspto.gov/RDMS/TBMP/current#/current/sec-6f6dfee8-51e8-40b5-bc… "Trademark Trial and Appeal Board Manual of Procedure 2018-06 502.05 Attorneys’ Fees, etc., on Motions The Board will not hold any person in contempt, or award attorneys’ fees, other expenses, or damages to any party. [ Note 1.] NOTES: 1. 37 C.F.R. § 2.127(f); NSM Resources Corp. v. Microsoft Corp., 113 USPQ2d 1029, 1035 n.10 (TTAB 2014) (Board cannot assess monetary damage awards); General Mills Inc. v. Fage Dairy Processing Industries SA, 100 USPQ2d 1584, 1591 (TTAB 2011) (no authority to determine damages), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential); Kairos Institute of Sound Healing, LLC v. Doolittle Gardens, LLC, 88 USPQ2d 1541, 1544 n.6 (2008); Central Manufacturing Inc. v. Third Millennium Technology Inc., 61 USPQ2d 1210, 1213 (TTAB 2001) ("although the Board does not impose monetary sanctions or award attorneys’ fees or other expenses, the Board has the authority to enter other appropriate sanctions"); Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 n.3 (TTAB 2000). See also 37 C.F.R. § 2.120(g) and 37 C.F.R. § 2.120(h)(1). Note, however, that conduct in violation of the Disciplinary Rules set forth in 37 C.F.R. Part 11 may be referred to the Office of Enrollment and Discipline (OED) for appropriate action. See 37 C.F.R. § 11.19 et seq." So, what is being proposed in regards to "loser pays" doesn't appear to exist in the US TTAB procedures. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

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ICANN63: Schedule of RPM PDP Working Group Meetings
by Julie Hedlund Oct. 18, 2018

Oct. 18, 2018

Dear Working Group members, Please see below the schedule and links for the RPM PDP Working Group meetings at ICANN63: Barcelona ICANN63: Face-to-Face Full RPM PDP WG Meetings (with remote participation in the links below): GNSO - RPM working group (1 of 4): 15:15 - 16:45, Sun, Oct 21, 2018 Remote Participation -- https://63.schedule.icann.org/meetings/901715 Wiki Agenda: https://community.icann.org/display/RARPMRIAGPWG/2018-10-21+ICANN63+Barcelo… GNSO - RPM working group (2 of 4): 17:00 - 18:30, Sun, Oct 21, 2018 Remote Participation -- https://63.schedule.icann.org/meetings/901716 Wiki Agenda: https://community.icann.org/display/RARPMRIAGPWG/2018-10-21+ICANN63+Barcelo… GNSO - RPM working group (3 of 4): 12:15 - 13:30, Mon, Oct 22, 2018 Remote Participation -- https://63.schedule.icann.org/meetings/901722 Wiki Agenda: https://community.icann.org/display/RARPMRIAGPWG/2018-10-22+ICANN63+Barcelo… GNSO - RPM working group (4 of 4): 13:30 - 15:00, Mon, Oct 22, 2018 Remote Participation -- https://63.schedule.icann.org/meetings/901723 Wiki Agenda: https://community.icann.org/display/RARPMRIAGPWG/2018-10-22+ICANN63+Barcelo… Please also see the full ICANN63 schedule at: https://63.schedule.icann.org/meetings Best, Mary, Ariel, Berry, and Julie

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ICANN 63 BARCELONA
by URS - Uniform Rapid Suspension System - MFSD Oct. 18, 2018

Oct. 18, 2018

Dear All, should anyone of the WG be interested, MFSD is organizing a morning workshop on Tuesday 23 October from 9 to 11 am in order to raise awareness and share experiences and best practices on domain name disputes (.es, URS and UDRP) and the impact of the GDPR on such disputes (program attached hereto). Place: Elzaburu SLP, Carrer del Rosselló 216, 9th Floor, Barcelona Registration: http://www.elzaburu.es/es/area-de-clientes/inscribete/registration-bcn-ican… Looking forward to meeting you in Barcelona, safe travels. Ivett Paulovics URS Domain Dispute Case Manager --- MFSD Srl | IP Dispute Resolution Center Via Giorgio Washington, 50 | 20146 Milano (Italy) T +39 02 45506624 | F +39 02 91471087 M +39 329 2596103 urs(a)mfsd.it <mailto:responsabile@mfsd.it> | https://urs.mfsd.it <https://urs.mfsd.it/> Skype mfsd.urs P. Iva 04810100968 (Italian VAT) ------------------------------------------------------------------------- URS Domain Dispute Resolution Service Provider approved by ICANN .it Domain Dispute Resolution Center accredited by Registry .it IP Mediation Center authorized by Italian Ministry of Justice (no. 903) IP Mediation Training Center authorized by Italian Ministry of Justice (no. 392)

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List of URS Individual Proposals & Suggested Support Levels
by Julie Hedlund Oct. 18, 2018

Oct. 18, 2018

Dear RPM PDP Working Group members, In preparation for the Working Group meetings at ICANN63, session 1 and session 4, and in accordance with the attached Procedures for URS Policy and Operational Recommendations, staff have reviewed the WG deliberations as recorded in the meeting transcripts and chat rooms, and have produced the attached table with the staff’s suggested levels of support for the individual proposals. The co-chairs believe a good path forward is to allow all WG members to review and, if they wish, comment upon these preliminary designations of support. For those attending ICANN63, please bring your comments to our first face-to-face (F2F) session on Sunday, 21 October at 15:15-16:45 local time. For those not attending the F2F meeting, please feel free to let us know your thoughts online. Staff took its guidance from the following excerpt from Section 7 of the procedures, as agreed to by the WG: “Unless there is substantial material opposition within the Working Group, Sub Team recommendations will be included in the Initial Report for the purpose of soliciting public comment thereon. To be clear, Sub Team recommendations have a rebuttable presumption, subject to WG feedback, of enjoying an adequate level of support to be included in the Initial Report for the purpose of soliciting community input; Sub Team proposals, like those from individuals, will only become Final Report recommendations if they achieve Full Consensus or Consensus.” The Co-Chairs would like the WG to note the following with respect to these suggested levels of support: These are preliminary and subject to review and deliberation by the WG at ICANN63; WG members are encouraged to provide feedback on the suggested levels of support and in particular as to whether there are any mischaracterizations; The levels of support and determination with respect to inclusion in the Initial Report will be based on the deliberations at ICANN63, with public comment requested on all proposals that garnered adequate support; The Initial Report will note for the record individual proposals that failed to achieve adequate support; The WG will have the opportunity to review the proposals as they appear in the draft Initial Report and propose revisions before the Initial Report is published for public comment. Finally, if WG members have revised proposals they should submit them to the WG list no later than 23:59 UTC on Friday, 19 October so that they may be discussed at the sessions at ICANN63. Best regards, Mary, Julie, Ariel & Berry On behalf of the RPM PDP Working Group Co-Chairs

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"Lack of cause of action" followup (URS proposals #18, #19, #20)
by George Kirikos Oct. 18, 2018

Oct. 18, 2018

Hi folks, Just to followup on our call, in regards to proposals #18, #19, and #20: https://community.icann.org/download/attachments/93126760/URS-Proposal-18.p… https://community.icann.org/download/attachments/93126760/URS-Proposal-19.p… https://community.icann.org/download/attachments/93126760/URS-Proposal-20.p… attempting to solve the "lack of a cause of action" problem, whereby a registrant attempting to bring a court action to challenge the outcome of an adverse URS/UDRP would be denied a decision on the underlying merits in the courts, as the case would be tossed for lack of a cause of action:, there were questions regarding whether the Yoyo.email case was an outlier, etc., i.e. whether there was any real issue. First, it wasn't just one case in the UK. There were others (albeit, not involving the UDRP, but the very similar Nominet DRS), see: https://www.lexology.com/library/detail.aspx?g=4f1b77cc-8474-4e9f-b02d-f654… "The High Court also clarified that it did not have jurisdiction to hear appeals of uniform dispute resolution policy (UDRP) or Dispute Resolution Service (DRS) decisions. .... In relation to the claimant's request for declaratory relief, the court held that the UDRP did not "afford any jurisdiction" to the High Court to "act as an appeal or review body" from the domain name dispute resolution panel's decision in August 2014. The judge held that clause 4k of the UDRP (which states that the parties are not barred from taking the matter to court after its conclusion) did not give rise to a separate cause of action in favour of the claimant, nor give the court any jurisdiction to act as an appeal or review body in relation to the UDRP decision. This is in line with the previous case of 'Toth' which similarly held that the court did not have jurisdiction to hear appeals of DRS policy decisions. (By way of reminder, Nominet's DRS policy is applicable in relation to '.co.uk' domain names whilst WIPO's UDRP is relevant to various other gTLDs, such as '.email' in this case.)" So, there's "Toth", which is mentioned too. Toth v Emirates is discussed at: https://www.brownejacobson.com/about-us/news-and-media/published-articles/2… https://www.theregister.co.uk/2012/03/22/nominet_rules_mean_abusive_domain_… "The High Court has struck out an application for a declaration that a domain name was not an abusive registration, and found that the question of whether or not a registration is abusive is one for the expert only." Here's a third example, Patel v. Allos Therapeutics: https://www.edwincoe.com/blogs/main/court-confirms-principles-applied-domai… "In Patel, the unsuccessful respondent at UDRP commenced proceedings in the Chancery Division and was met with an application for striking out, which was granted, the judge holding that the proceedings disclosed no cause of action and were totally without merit. Referring to clause 4(k) of the UDRP the judge in Patel had noted that this clause speaks of “referring the dispute” to the court for “independent resolution” but had made it clear that this cannot confer a jurisdiction on the court which it does not otherwise have, and that the claimant must demonstrate some independent right of action." Furthermore, this is also apparently a problem in Australia (Paul Keating had mentioned this in the IGO PDP, although I don't have any case citations -- perhaps he'd share). So, to deny the existence of this problem in the face of actual court precedents does not seem credible to me, especially when you have law firms openly stating (as per the most recent link above) that: "The High Court has confirmed that (1) unsuccessful respondents in UDRP or DRS proceedings have no right of appeal to the English Court..." The three solutions proposed address an actual problem for registrants, namely access to the courts, that were part of the "grand bargain" that was made when these policies were adopted. The DRP policies from ICANN were never intended to be the "final word." I also refer folks back to the original thread in November 2017 on this topic: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/date.html Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

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URS / UDRP proposals -- data on registrar/registry compliance costs
by George Kirikos Oct. 17, 2018

Oct. 17, 2018

Hi folks, In support of an upcoming proposal regarding allowing cost recovery by registrars and registries of compliance costs associated with the handling of URS and UDRP disputes, I wanted to share the following data (which I will then reference in the actual proposal). (a) I reached out to Reg Levy of Tucows, Direct of Compliance for the world's 2nd largest registrar (and also a member of this PDP), regarding time spent handling UDRP and/or URS complaints and was told: "With regard to URS, that applies primarily to registries, so we don't have any cost for for those. For UDRPs, I haven't done an analysis of how long it would take one of my team members to process a UDRP complaint; generally, it simply includes intake, locking the domain, and then unlocking or forwarding the domain upon resolution. A normal UDRP would likely take around 15 minutes but there are some tough ones (I've spent more than an hour on a few with Paul talking through the issues and figuring out how we will proceed) so I'd call it an average of 30–35 minutes per claim." (she said I could share this response with the PDP) (b) GoDaddy's registration agreement suggest that they'll charge an administrative fee (albeit to the registrant) for such compliance costs: https://ca.godaddy.com/legal-agreements "GoDaddy also reserves the right to charge you reasonable “administrative” fees" for (i) tasks GoDaddy may perform outside the normal scope of its Services, (ii) additional time and/or costs GoDaddy may incur in providing its Services, and/or (iii) your noncompliance with this Agreement (as determined by GoDaddy in its sole and absolute discretion). Typical administrative or processing fee scenarios include, but are not limited to (i) customer service issues that require additional personal time or attention; (ii) UDRP actions(s) in connection with your domain name(s) and/or disputes that require accounting or legal services, whether performed by GoDaddy staff or by outside firms retained by GoDaddy; (iii) recouping any and all costs and fees, including the cost of Services, incurred by GoDaddy as the results of chargebacks or other payment disputes brought by you, your bank or Payment Method processor. These administrative fees or processing fees will be billed to the Payment Method you have on file with GoDaddy." and it has been $50 in the past: https://domaingang.com/domain-news/udrp-fee-reversed-godaddy-heres-done/ (c) Some URS and UDRP disputes involve multiple domains, increasing the complexity and thus the cost of compliance for registrars/registries on a variable per-domain name level, e.g. http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-1661.html involved 1,542 domains, all of which need to be put on a legal hold/lock, checked to determine that they involve the same registrant, etc. (d) if any other registrars and registries wish to share data publicly on typical compliance costs (e.g. time per dispute, etc.), that would be wonderful. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

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Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12
by Paul Keating Oct. 17, 2018

Oct. 17, 2018

Phil, you cannot disavow everything you wrote as not having a link to you and your views. George, You cannot keep pulling out every comment someone makes in the past as a fact for how that person now believe. Paul . On 10/17/18, 12:12 AM, "GNSO-RPM-WG on behalf of Corwin, Philip via GNSO-RPM-WG" <gnso-rpm-wg-bounces(a)icann.org on behalf of gnso-rpm-wg(a)icann.org> wrote: While noting that you have recently developed an interest in advocacy articles I penned years ago on behalf of the ICA, I must state once again that they articulated positions and views taken by its Board at that time and should not be presumed to represent my current personal positions or views, or those of my current employer. Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Tuesday, October 16, 2018 5:55 PM To: gnso-rpm-wg <gnso-rpm-wg(a)icann.org> Subject: [EXTERNAL] Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12 P.S. Phil Corwin's comment on the LegalSupply.com UDRP (on that blog): "If anyone was squatting here it looks like elegalsupply.com, which sure looks confusingly similar to the previously registered legalsupply.com. If broadly adopted, this principle — “The transfer of a domain name is equivalent to a new registration under the UDRP” — means a permanent reduction in the value of all non-infringing generic domains. It means that your preexisting domain rights are subordinate to a later registered trademark that is identical or confusingly similar. That devalues the domain as a marketable asset because if you sell it to someone else they are susceptible to a UDRP filed by the trademark-based squatter. As for this part of the examiner’s findings — “Respondent registered the disputed domain name for the purpose of selling the disputed domain name for valuable consideration in excess of Respondent’s out-of-pocket costs.” — So what? The purchaser acquired a non-infringing asset, and the mere fact that its ownership was transferred between two parties should not alter its non-infringing nature. Since when is the hope that a legally acquired and legaly compliant asset may later be sold for additional value proof of anything except smart investment? Is the UDRP opposed to lawful profit? This should not be allowed to stand." Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Tue, Oct 16, 2018 at 5:45 PM, George Kirikos <icann(a)leap.com> wrote: > Any deviation from the law simply means there will be more litigation > in the courts, not less litigation, increasing expenses for all > concerned. > > To give an example of a real domain dispute that has been "caught" by > the current interpretation, consider LegalSupply.com: > > http://www.adrforum.com/domaindecisions/1438796.htm > https://www.thedomains.com/2012/05/24/legalsupply-com-lost-to-elegalsu > pply-com-the-transfer-of-a-domain-is-equivalent-to-a-new-registration/ > > Complainant registers a "worthless" TM for "eLegalSupply.com" long > after the LegalSupply.com domain name is created. Domain name changes > hands, and then the owner of the worthless "eLegalSupply.com goes for > the "domain upgrade" via UDRP. And they win the UDRP, demonstrating > how companies are exploiting the current incorrect interpretation (see > the blog post for the reaction). > > This is the state of the UDRP today, and it must change. > > Sincerely, > > George Kirikos > 416-588-0269 > http://www.leap.com/ > > > > > > > On Tue, Oct 16, 2018 at 5:33 PM, Greg Shatan <gregshatanipc(a)gmail.com> wrote: >> At best, what we have here with Hise and Schmidheiny is a split >> between the circuits. Hise is not more correct simply because it was decided later. >> And Schmidheiny is not less correct because Hise disagreed with it. >> >> To the extent there’s any ambiguity here, the simpler solution would >> be to clarify once and for all that re-registration is registration. >> This would be “perfectly aligned” with Schmidheiny and past practice >> with regard to domain names. All in all, an objectively better result. >> >> An even simpler solution would be to eliminate the registration prong >> entirely. Any purported ambiguities around “registration” or “creation” >> would be irrelevant and panels could focus on determining the actions >> of the domain name owner, without needing to look back at the one or >> another point in history. >> >> Both of these alternatives should be stated for consideration if this >> proposal proceeds to publication. >> >> Briefly, on other points. Those SEC filings were just more >> agreements, so all that I said (and Gerald said) about that point >> still stands. Domain names are not IP. And the many “rationales” >> predicated on the idea that domain names are IP must be dismissed as based on a false premise. >> >> The language quoted from ACPA does not magically turn it from >> disjunctive to conjunctive. It does not change “or” to “and.” ACPA >> is still disjunctive — critical in terms of the elements of proof under both regimes. >> >> The Proposal seeks to exploit a claimed ambiguity to create a class >> of “immunized” domain names that can be used by anyone at any time in >> even the most flagrant abusive fashion without fear of a UDRP >> proceeding, simply because their initial registration was not in bad >> faith. These weaponized domains would be more attractive to >> malfeasors, thus creating added value for the registrant — the windfall referred to earlier. >> >> There’s no need to respond in more detail, given the detailed >> responses from Georges, Gerald, Brian and Scott, with which I agree. >> In particular I agree that panelists originally and repeatedly have >> gotten this right, as did Schmidheiny, and this was never an “error” >> or a “mistake.” Hise is the outlier, as was the Voyuer case, which >> did not actually examine the issue since the Complainant was found >> not to have a trademark (so the issue of registration date was essentially moot). >> >> I also agree that, even with the “low bar” for publication of >> submissions, this is one that should not be put forward. >> >> Best regards, >> >> Greg >> >> >> On Tue, Oct 16, 2018 at 3:57 PM George Kirikos <icann(a)leap.com> wrote: >>> >>> Hi Scott, >>> >>> Responding to the issues you raised in order: >>> >>> 1.A. Not going to get into the whole "who is a registrant" issue, >>> given the GDPR. Certainly we all understand that affects all >>> disputes, and is not limited to my proposal. >>> 1.B. Creation date is visible in WHOIS, e.g. for EXAMPLE.COM it's at: >>> >>> https://reports.internic.net/cgi/whois?whois_nic=example.com&type=do >>> main >>> >>> Creation Date: 1995-08-14T04:00:00Z >>> >>> for Math.com it is at: >>> https://reports.internic.net/cgi/whois?whois_nic=math.com&type=domai >>> n >>> >>> Creation Date: 1998-09-10T04:00:00Z >>> >>> This is not open to interpretation/misinterpretation like >>> "Registration Date" >>> >>> 1.C. Transfer dates are not stored in WHOIS currently, for >>> *existing* disputes (where transfer of ownership is claimed as the new date). >>> Folks who respond can document things accordingly. Or, heck, >>> complainants can send a C&D first, actually reach out to the domain >>> owner, instead of using UDRP as a *first* resort. WHOIS history at >>> places like DomainTools can also be used to guess at these dates, as >>> is done today. The "years of precedent" that you point to were all >>> wrongly decided, as the Gopets decision demonstrates. >>> >>> 2. Use is an entirely separate part of the 3rd prong of bad faith. >>> >>> 3. Whether or not domain names are "intellectual property" doesn't >>> affect the proposal. See GoPets or Voyuer.com, i.e. how a >>> successor-in-interest is passed *all* the rights of the predecessor, >>> including priority rights. Also, a domain name right doesn't need to >>> be linked to trademark rights to still be considered IP. Take a look >>> at copyrights that can't be TMs. Yet copyrights are still IP (a >>> different type of IP). >>> >>> 4. You can use the courts, to go after *use* in bad faith (as you >>> can today, even for domains that are not registered in bad faith faith). >>> Your remedies would be different (e.g. not necessarily transfer of >>> the domain name, but ordering the registrant to cease the infringing use). >>> Furthermore, you can still go after obviously-malicious domains that >>> are never used early, if they have no conceivably good faith use, >>> today. e.g. google-registration-2018.horse need not be used at all, >>> to lose a UDRP/URS. >>> >>> 5. You seem to be very critical of the courts. Which specific >>> national courts do you have a problem with? Canada? USA? UK? France? China? >>> Japan? Here's a list of all the countries that have registrars (for >>> "mutual jurisdiction" purposes): >>> >>> https://www.internic.net/origin.html >>> >>> Tell me which ones are "rogue" in your eyes. >>> >>> What's funny is that often the same folks who are critical of >>> national courts are entirely uncritical when asked "Which nation's >>> TMs should be barred from the TMCH?" There, the answer is "A TM is a TM is a TM" >>> and that if one has a problem with that TM, take it up with "the >>> courts"!! (e.g. all the dubious TMs being used in the sunrise period >>> to game the system) >>> >>> Sincerely, >>> >>> George Kirikos >>> 416-588-0269 >>> http://www.leap.com/ >>> >>> On Tue, Oct 16, 2018 at 2:58 PM, Scott Austin >>> <SAustin(a)vlplawgroup.com> >>> wrote: >>> > George: >>> > Thanks for the update. Per Brian's reality check I see the >>> > following showstopper issues (for me anyway) and do not support >>> > the proposal on these >>> > grounds: >>> > 1. Text of proposal creates, not clarifies ambiguity. >>> > The URS and UDRP policies shall be changed to require that >>> > complainants (excluding prior registrants of the domain name) >>> > prove that a domain name was created in bad faith (with the >>> > creation date of the domain name being the relevant date), >>> > replacing the current ambiguous registered in bad faith standard. >>> > In the event that a prior registrant of the domain name brings a >>> > dispute as complainant, they instead need only prove that a domain >>> > name was acquired in bad faith (with the acquisition date of the >>> > domain name by the current registrant being the relevant date). >>> > All other remaining prongs of the 3-part test shall continue as >>> > before (e.g. use in bad faith, no legitimate interest, confusingly >>> > similar to a TM). >>> > >>> > >>> > “Prior registrants” - in this instance you refer to registrant but >>> > you dismiss the term registered as ambiguous. Yet one becomes a >>> > registrant by registering a domain name on a date certain. However >>> > where do you look online (especially after GDPR) to confirm >>> > someone is a "prior registrant"? >>> > There is no grantor/grantee deed index at the local county >>> > recorder office that publicly discloses not only the current >>> > registrant, but each registrant prior to the current one where a >>> > change in ownership has occurred. And what is to preclude an >>> > original registrant from using an alias or dba and just changing >>> > ownership in the underlying “original” registrant organization. >>> > None of ownership data is authenticated or policed, except at the >>> > credit card swipe stage. Maybe creation should be tied and >>> > displayed based on that. >>> > “creation” and “creation date” – how is this more accurate than >>> > “registration date or initial registration date. Is creation an >>> > earlier moment, when the domain is approved in a board room, >>> > purchased by a promoter to be assigned to the company that will >>> > use it, requested? Searched for availability on whois? I could >>> > make a case filled with unique time consuming fact and >>> > circumstance checking that each one of those stages in the >>> > decision to acquire and use a domain was its “creation”. And why >>> > the carve out for prior registrants? Why not prior creators if >>> > that is the operative term. >>> > It >>> > doesn’t work. >>> > “Acquisition Date” – is this a date stated in a contract that a >>> > complainant can’t find. Registration date is the only date in >>> > whois that is available. >>> > This would undo or compromise years of precedent based on >>> > registration date and again creates the ambiguity of what >>> > circumstances demonstrate acquired and how do you investigate >>> > that. Unacceptable and no evidence this improves upon the status >>> > quo in clarity or effectiveness for intended purpose. >>> > >>> > And what about use – is this part of creation? Does your proposal >>> > open the door to the fatal disjunctive “registered or used” in bad >>> > faith, perceived as the death knell to the secondary market for >>> > domain names. Be careful what you wish for. I don’t see use >>> > mentioned anywhere in your proposal text, but see point E below. >>> > Domains as intellectual property. This is the biggest problem I >>> > have with your insistence that all domain names are created >>> > equally. What about generic.com? Is a domain that cannot acquire >>> > trademark rights intellectual property? Sounds like merely what it >>> > is: a URL address licensed to a user by a registrar that >>> > conveniently converts machine readable numbers to text readable >>> > and more easily remembered by humans. Without your infusions of >>> > contract or trademark use this does not clearly fall under the >>> > category of IP and your argument fails. As other’s have pointed >>> > out you frame your argument by conveniently using examples of >>> > domain names infused with intellectual property rights, either 1) >>> > by defining domain names as such in an agreement which in context >>> > could have added URLs or website addresses or maybe something more >>> > remote as long as agreed to by the parties; or 2) a “domain like” >>> > name comprised in part of an unregistered trademark term used as a >>> > component of a registered words plus design mark in a stylized >>> > font with a slogan. The slogan is a marketing device for an IP >>> > firm, not law or a ruling on domain names as intellectual >>> > property. >>> > If a string of serial domain acquisitions has renders the final >>> > successor beyond bad faith no matter how maliciously they use >>> > their purchased domain registration, what is the intent? Is the >>> > intent that domains like sleeper cells can be stockpiled in the >>> > thousands without use, so they do not come to the attention of >>> > rightsholders, which would first target use of a domain to support >>> > a phishing site or infringing site or even a parking site >>> > incorporating a deceptive misspelling of a trademark. Thus flying >>> > under the radar until sufficient repurchase and time elapse while >>> > they appear innocuous, they pass a date (your affiliated proposal >>> > suggests 2 years I >>> > believe) after which they can be sold on a secondary domain market >>> > to a successor registrant who now can spring into being putting a >>> > full blown phishing site, counterfeit site of the rights holder’s >>> > mark without worry of a summary proceeding as it is time barred or >>> > bad faith only applies to the initial registrant present at >>> > “creation” who financed the “sleeper period” but now can sell >>> > their vintage protected incontestable domains at a premium. >>> > But that’s not all. What your proposal’s Complainant/Respondent or >>> > rightsholder/disputed registrant two-dimensional approach fails to >>> > consider is that trademark rights are 3 dimensional. The trademark >>> > act in the US at least and I would venture most countries is a >>> > consumer protection act. >>> > You’ve left out consumers. Why should consumers, those folks that >>> > TM and Circle R were “created” to protect from passed off inferior >>> > goods or services be subjected to confusion under your proposal >>> > because a rightsholder waited too long to protect its rights, or >>> > failed to get to a particular domain until it had changed hands >>> > multiple times while they used their limited resources to chase >>> > the most blatant offenders. There is no evidence that the benefit >>> > to registrants afforded by your proposal outweighs the cost to >>> > rightsholders AND the consuming public. You have made it clear for >>> > some unsubstantiated, unproven reason the you want to make it hard >>> > for rightsholders to protect their marks and consumers, or >>> > eliminate summary proceedings altogether, forcing rightholders to >>> > march into court in distant regions of the globe, in jurisdictions >>> > where courts may take years to hear a case or may not recognize >>> > the same luxuries of due process and review, shortened statutes of >>> > limitations, lack technical understanding, etc. >>> > This >>> > would be the case already with many ccTLDs. The prize here appears >>> > to be taking away from rightsholders well-established protections >>> > that apply to the most valuable TLD - .com. For the foregoing >>> > reasons, George, I object to and do not support proposal 12. >>> > >>> > >>> > >>> > Best regards, >>> > Scott >>> > >>> > Please click below to use my booking calendar to schedule: >>> > a 15-minute call a 30-minute call a 60-minute call >>> > >>> > >>> > 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(a)VLPLawGroup.com >>> > >>> > -----Original Message----- >>> > From: GNSO-RPM-WG <gnso-rpm-wg-bounces(a)icann.org> On Behalf Of >>> > George Kirikos >>> > Sent: Tuesday, October 16, 2018 12:55 PM >>> > To: gnso-rpm-wg <gnso-rpm-wg(a)icann.org>; Ariel Liang >>> > <ariel.liang(a)icann.org> >>> > Subject: Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12 >>> > >>> > Hi again, >>> > >>> > Attached is the updated revised version of URS Proposal #12, >>> > simply adding the Gopets v. Hise case citation in section #8. >>> > Thanks to Brian for his "strong objection", otherwise I wouldn't >>> > have remembered that there was case law to show that this proposal >>> > would align the UDRP with the law. >>> > >>> > Sincerely, >>> > >>> > George Kirikos >>> > 416-588-0269 >>> > >>> > https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.leap.com%2f >>> > &c=E,1,zxbn2tiatvkzhTWqLCBws9UpWsXQfALYuHFBkumURXOj2rNgWiHDb5SMRHa >>> > pRED2kjZosRrEKzbsY9tcDWr5CcimUjT0IDk9PVjMk-qYCiPPPXI,&typo=1 >>> > >>> > >>> > On Tue, Oct 16, 2018 at 12:43 PM, George Kirikos <icann(a)leap.com> wrote: >>> >> Hi Brian: >>> >> >>> >> I refer you to the following case in the California courts, that >>> >> referenced this exact topic: >>> >> >>> >> GOPETS v. Hise, >>> >> >>> >> http://cdn.ca9.uscourts.gov/datastore/opinions/2011/09/22/08-5611 >>> >> 0.pdf >>> >> >>> >> (also listed on the WIPO Website at: >>> >> https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.wipo.int%2 >>> >> fexpo >>> >> rt%2fsites%2fwww%2famc%2fen%2fdocs%2fd20060636circuitdecision.pdf >>> >> &c=E, >>> >> 1,Zv_K5R1ftgPNTQiVMR_bC87QMECSVRKnYtZUp7s19bYEZH7pyDxPmrrOvZN6ZlD >>> >> S9FKm >>> >> TiTxL85qJLS83LA35hYYYZF8-y0WVrn51dOwmgcDmr41b_c,&typo=1 >>> >> linked from >>> >> https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.wipo.int%2 >>> >> famc% >>> >> 2fen%2fdomains%2fchallenged%2f&c=E,1,gY1N97-hyy-P1Z5o-hqKcm3Ev6O- >>> >> wEnMX >>> >> K3X-J_odUWYxGSzItAGVRQrpZrjfHSUXXwaVvftXV_forYiX6DTYDuIAL5QM5UbZG >>> >> RZmkF >>> >> f72p4SA,,&typo=1 ) >>> >> >>> >> “”The primary question before us is whether the term “registration” >>> >> applies only to the initial registration of the domain name, or >>> >> whether it also applies to a re-registration of a currently >>> >> registered domain name by a new registrant. We hold that such >>> >> re-registration is not a “registration” within the meaning of § 1125(d)(1).”" >>> >> >>> >> [5] Like the text of § 8131(1)(A), the text of § 1125(d)(1) >>> >> considered in isolation does not answer the question whether “registration” >>> >> includes re-registration. Looking at ACPA in light of traditional >>> >> property law, however, we conclude that Congress meant “registration” >>> >> to refer only to the initial registration. It is undisputed that >>> >> Edward Hise could have retained all of his rights to >>> >> https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fgopets.com&c= >>> >> E,1,- >>> >> VgBFYawV9wu9qv-RzSR6QGGiHEe8kEPwnaf4eVwHmF83L-LceMWXH7w_BufTEzBgm >>> >> yTqVb >>> >> PGpeXPqQRX8e1sL405GqpLLfW5D6FlfnUebdsGCTO_nI,&typo=1 >>> >> indefinitely if he had main- >>> >> tained the registration of the domain name in his own name. >>> >> *****We see no basis in ACPA to conclude that a right that >>> >> belongs to an initial registrant of a currently registered domain >>> >> name is lost when that name is transferred to another owner. The >>> >> general rule is that a property owner may sell all of the rights >>> >> he holds in property.**** GoPets Ltd.’s proposed rule would make >>> >> rights to many domain names effectively inalienable, whether the >>> >> alienation is by gift, inheritance, sale, or other form of >>> >> transfer. Nothing in the text or structure of the statute indi- >>> >> cates that Congress intended that rights in domain names should be inalienable. >>> >> >>> >> [6] We therefore hold that Digital Overture’s re-registration of >>> >> >>> >> >>> >> https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fgopets.com&c= >>> >> E,1,DF99RAI3ybmbOz_-PzuqFMbtBZxMird3X0lJuuBFBWtKjN6IZR7cxhqozpRUu >>> >> NmZ6EoYyudU-jXFUy4RHpf70psnP--oxffVLFx8UXhZA5rUXw,,&typo=1 >>> >> was not a registration within the meaning of § 1125(d)(1). >>> >> Because Edward Hise registered >>> >> https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fgopets.com&c= >>> >> E,1,5 >>> >> >>> >> >>> >> JfuZSC5tr8d1NGTRclG7SA5HCEZEhyUmxBmgSJCj4PXlEA01vhXIu9EVO_ENPhLeH >>> >> 4_zPIrZuAoMsg9-D0TQnIl7prICFDUhaVndrR_bcGdG5mg&typo=1 >>> >> in 1999, long before GoPets Ltd. registered its service mark, >>> >> Digital Overture’s re-registration and continued ownership of >>> >> >>> >> https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fgopets.com&c= >>> >> E,1,7pUeaPOYFpJL-G1dy4FHDNn4hOhKtBkTqZ6LNuK29a7LdNCY6CsvwYQ0Co-HI >>> >> r8XKEH7rRwb_sQGBvhY5xGnOjo8Svxm2Fm5LGARyFhnjpGkH3LP2w,,&typo=1 >>> >> does not violate § 1125(d)(1). >>> >> >>> >> There you have it. Have WIPO panels been observing this court >>> >> precedent? Has WIPO updated their "WIPO Views"? Of course not, >>> >> even though it's been published on WIPO's own website! Perhaps >>> >> WIPO will take steps to remove that case from their website, just >>> >> like they removed the PUPA.COM case involving my company?? >>> >> >>> >> It's time to remove the ambiguity once and for all, and my >>> >> proposal does just that, and furthermore aligns it with court >>> >> precedent and common sense. I probably should have added this >>> >> case to my revised proposal. I'll do that shortly, and send it again. >>> >> >>> >> Sincerely, >>> >> >>> >> George Kirikos >>> >> 416-588-0269 >>> >> https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.leap.com%2 >>> >> f&c=E >>> >> ,1,6SO43nms3azu6w2FDDcjjOwLnUDLMqH8Z2fNCiOWXeSHJf1IOdbm13c7jIhwFa >>> >> SCI8Y >>> >> y9ymQjmKdiDXPO4BXpuLrxUkJTeqAWXWt0JHnDcGA_zkbTg,,&typo=1 >>> >> >>> >> >>> >> >>> >> On Tue, Oct 16, 2018 at 12:13 PM, BECKHAM, Brian >>> >> <brian.beckham(a)wipo.int> >>> >> wrote: >>> >>> Speaking in my non-chair capacity, and mindful of the "low bar" >>> >>> that has been set for inclusion in the Initial Report, I would >>> >>> like to register the strongest of objections to this proposal. >>> >>> >>> >>> Not only would it give carte blanche to later-acquiring >>> >>> registrants to infringe a complainant's mark, but moreover, the >>> >>> claimed ambiguity blatantly mischaracterizes panel consensus >>> >>> described in the WIPO Overview, which does not reflect any >>> >>> "ambiguity" in how panels assess the applicable registration >>> >>> date. >>> >>> >>> >>> Perhaps one or two panelists or counsel who are members of this >>> >>> WG could add their views. >>> >>> >>> >>> Brian >>> >>> ________________________________________ >>> >>> From: GNSO-RPM-WG <gnso-rpm-wg-bounces(a)icann.org> on behalf of >>> >>> George Kirikos <icann(a)leap.com> >>> >>> Sent: Tuesday, October 16, 2018 4:35 PM >>> >>> To: gnso-rpm-wg; Ariel Liang >>> >>> Subject: [GNSO-RPM-WG] Revised Version of URS Proposal #12 >>> >>> >>> >>> [re-sending from my correct email address] >>> >>> >>> >>> Hi folks, >>> >>> >>> >>> Attached is the revised version of URS Proposal #12, after >>> >>> discussions with Rebecca on how to handle the unintended >>> >>> consequences she identified in the original proposal. Many >>> >>> thanks to Rebecca for identifying the issue and the solution. >>> >>> >>> >>> Sincerely, >>> >>> >>> >>> George Kirikos >>> >>> 416-588-0269 >>> >>> https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.leap.com% >>> >>> 2f&c= >>> >>> E,1,odex5M2U4U5zyFqLlSBUNNjAReeUc74WjuV6TUe9H1I6Hc4cYo2XGYHt5kUG >>> >>> AMCks >>> >>> 8t15KdME-B164MaOXo9-Gk-I72usQuOYvPYq8W60a4NlX9aQo-o&typo=1 >>> >>> >>> >>> World Intellectual Property Organization Disclaimer: This >>> >>> electronic message may contain privileged, confidential and >>> >>> copyright protected information. If you have received this >>> >>> e-mail by mistake, please immediately notify the sender and >>> >>> delete this e-mail and all its attachments. >>> >>> Please >>> >>> ensure all e-mail attachments are scanned for viruses prior to >>> >>> opening or using. >>> > >>> > >>> > >>> > This message contains information which may be confidential and >>> > legally privileged. Unless you are the addressee, you may not use, >>> > copy or disclose to anyone this message or any information >>> > contained in the message. If you have received this message in >>> > error, please send me an email and delete this message. Any tax >>> > advice provided by VLP is for your use only and cannot be used to >>> > avoid tax penalties or for promotional or marketing purposes. >>> _______________________________________________ >>> GNSO-RPM-WG mailing list >>> GNSO-RPM-WG(a)icann.org >>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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