dear all,
I received some correspondence last night after I sent my last note, and I am aware of the additional list traffic today.
Please kindly allow me to clarify status. I think its OK that we have minor substantive discussion so long as it is within the parameters of considering whether a proposal should be posted for public comment, as noted by Brian. In fact, the only reason I sent the email last night is because there was substantive discussion during last week's call and I wasn't on that call to respond.
Here is the text of Proposal #6: "The recommendation is to permit multiple unrelated complainants to bring a single complaint jointly against a single domain name registrant (or related registrants) who has registered multiple domain names, by deleting the following procedural element within Section 1.1.3 of the URS Procedure: "One Complaint is acceptable for multiple related companies against one Registrant, but only if the companies complaining are related." (emphasis added)
Accordingly, under the existing URS rules, Section 1.1.3 already permits multiple related companies to consolidate against a registrant. In order to consolidate their claims, Section 1.1.3 sets forth that the complainants establish and prove to the panelist that they are all related companies.
Under this scenario, some of the companies (or organizations) may appear to be related because the various companies use the same or similar names, trademarks, trade names, logos, shop signs, and/or other business identifiers.
However, under this same scenario, some of companies may not appear to be related, because the various companies (which are in fact legally related) use trademarks, trade names, logos, shop signs, and/or other business identifiers that are not similar.
In other words, under the existing URS rules, there is no requirement that the legally-related companies use the same or similar trademarks, trade names, logos, shop signs, or other related business identifiers.
For example, a parent company may be called "X" and use trademark "Y", and its subsidiary, affiliate, joint-partnership, sister company, etc. may be called "W" and use trademark "Z". What makes them "related companies" has nothing to do with the name of the company, or which trademarks they have acquired rights to, it is purely a matter of the corporate form and other legal considerations relevant under the laws of the respective jurisdiction in which the companies are incorporated, operate, or are otherwise established.
What has to happen is these cases, is for the panelist to confirm at least the following matters: 1) ownership of the trademarks; 2) the registrant is one entity or person (or related entities or persons); 3) the domain names have been registered and used in bad faith (under the clear and convincing standard); and 4) the companies are all related companies, which naturally requires the panelist to examine the underlying documentary evidence that is provided by the complainants, such as their trademark registrations certificates, and/or other corporate documentation that establishes the companies are in fact legally related to one another.
However under the existing URS rules, Section 1.1.3, unrelated companies are not permitted to consolidate. This is because the rule is hard-coded into the URS, as specified in Section 1.1.3.
The proposal seeks to simply delete Section 1.1.3, which currently prevents unrelated companies to consolidate their complaints.
In all cases, the ownership of the trademark(s) must be established, along with the fact that the registrant (or related registrants) is the registrant of the domain names subject of the complaint, and that the respective domain name are registered and used in bad faith.
The reason I propose to delete this entire section (1.1.3) is because I support the approach that Gerry described so well, which is that something of this nature should come about as a matter of jurisprudence under the procedure, the same way it has under the UDRP. In both situations, the panelist has to perform the same exact steps and the Providers are permitted to impose additional fees that correspond to the number of domain names that are subject to the complaint.
Whether the companies are related or unrelated entities does not go to the issue of which names they operate under, and which trademarks they use in commerce. As outline above, related companies may be using different names and different trademarks in the marketplace, and unrelated companies may be using similar names and similar trademarks (but in terms of trademark law, they are generally not permitted to use confusingly-similar trademarks, unless there is an co-existence agreement and other issues that I don't think we need to go into here).
I wanted to take a brief moment to thank Brian and Cyntia for providing helpful illustrative examples of why it would make sense to permit consolidation of complainants in practical terms, even when the complainants are not legally-related companies, e.g. their relationship comes about because they are in the same industry or other facts which indicate they have been commonly-targeted by the cybersquatter. The specific contours of which situations make sense to permit consolidation is something better left to the jurisprudence of the particular procedure, and therefore I believe it is wholly appropriate to delete Section 1.1.3 as proposed in Proposal #6.
I'm sorry for the long note, but I hope it helps to clarify the existing landscape and the intent of what is being proposed. I believe the URS is under-utilized for significantly more vital reasons than the subject matter of proposal #6, including the remedy and related issues that are the subject of the other proposals. My intent is not to open up a wide ranging discussion, I just wanted to provide a response because I didn't want to leave these questions lingering for several months while the public comments came through.
Cheers,
Claudio