George, all, Thanka for digging this up, I came across the same details on DomainTools. After the first suspension, the TM owner was likely monitoring the domain for changes. As you point out, when they noticed the domain was updated and the Name Servers redelegated during the AutoRenew period, there was probably concern the domain was going to be reactivated; in fact, it could have been renewed by the registrant during this period. I'm speculating, but this likely prompted the second URS proceeding; in the 2nd case the complainant did not provide evidence of bad faith use, probably under the mistaken assumption that bad faith had already been established in the first case and that would carry over. However, as the examiner infers in the decision, if they did provide such evidence, they may have won the second case as well. I think this is another example of the confusion caused the existing remedy, which allows the losing registrant to renew the suspended domain upon expiry. Best, Claudio On Wed, Feb 7, 2018 at 6:01 PM George Kirikos <icann@leap.com> wrote:
Hi Doug,
On Wed, Feb 7, 2018 at 3:53 PM, Doug Isenberg <Doug@giga.law> wrote:
I don’t think this is a case of a “2nd bite at the apple” since the complainant won the first URS proceeding and lost the second one. So, presumably, the domain name was re-registered by the respondent after the URS suspension expired in the first case. It would be fascinating to know if the complainant/trademark owner tried to register the domain name fr itself after the suspension expired but was unable to do so before the respondent got it again – that’s certainly a significant limitation/hazard of the URS.
Actually, that presumption turns out to be incorrect. Via the WHOIS history at DomainTools:
https://research.domaintools.com/research/whois-history/search/?q=boucheron....
on May 10, 2016, the domain name was still suspended using the ursns[1/2].adrforum.com nameservers:
Domain Name: boucheron.pub Updated Date: 2015-11-02T18:08:11Z Creation Date: 2015-05-12T19:58:24Z Registry Expiry Date: 2016-05-12T19:58:24Z Sponsoring Registrar: Alibaba Cloud Computing Ltd. d/b/a HiChina ( www.net.cn) Domain Status: serverDeleteProhibited https://icann.org/epp#serverDeleteProhibited Domain Status: serverTransferProhibited https://icann.org/epp#serverTransferProhibited Domain Status: serverUpdateProhibited https://icann.org/epp#serverUpdateProhibited Registrant Name: zhouhaotian Registrant Organization: zhouhaotian Name Server: ursns1.adrforum.com Name Server: ursns2.adrforum.com
(I removed various uninteresting fields from the above historical WHOIS record)
Then, on May 14, 2016, the WHOIS history at DomainTools shows the domain name had expired (note the creation date above was May 12, 2015, so more than 1 year had passed), and the nameservers switched to the registrars' default expiration nameservers, as it went into the auto-renew period:
https://research.domaintools.com/research/whois-history/search/?q=boucheron....
Domain Name: boucheron.pub Domain Status: autoRenewPeriod https://icann.org/epp#autoRenewPeriod Updated Date: 2016-05-13T20:00:39Z Creation Date: 2015-05-12T19:58:24Z Registry Expiry Date: 2017-05-12T19:58:24Z Name Server: expirens4.hichina.com Name Server: expirens3.hichina.com
The 2nd URS was filed on May 25, 2016, during that auto-renew period! Had the TM holder done nothing at all, it would have simply not been renewed by the registrant. e.g. on May 24, 2016, the WHOIS was still like the above, with the same expired nameservers and autorenewperiod status.
Then, as we know, the 2nd URS was unsuccessful. After that, the domain name did get deleted as per the normal deletion cycle, and as the current WHOIS demonstrates:
https://whois.domaintools.com/boucheron.pub
Boucheron registered the domain name via Com Laude with a creation date of July 25, 2016 (after the domain name went through the normal redemption grace period, and got deleted at Alibaba's registrar).
So, the 2nd URS appears to have been triggered by (1) the registrar changing the nameservers at expiry away from the URS Suspension ones (perhaps this is a policy issue with regards to how the URS is implemented post-expiry), and (2) Boucheron not realizing that the name was simply going through the normal expiration and deletion cycle.
It makes Boucheron's 2nd URS pleading look silly, e.g. the statement by the panelist:
"Complainant lastly alleges that the subject domain name, “ … was acquired in bad faith on the following grounds: since its purchase in May 2015 nothing has appeared on the website under this domain name."
Well, of course not, given that the domain name was suspended for most of that time!
It's possible that the first URS was wrongly decided using the basis of "non-use" as proof of "bad faith use" (which the 2nd URS correctly rejected), but we don't know for sure given the lack of any detail/reasoning in the first URS decision. Had there actually been real bad faith usage (beyond non-use), presumably Boucheron would have just recycled their evidence from the first URS, and presented it at the 2nd URS. But, they didn't, so I think it's likely that real bad faith usage didn't exist at any time.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg