Thanks George, I meant to send this to the entire list. Gml -----Original Message----- From: George Kirikos <icann@leap.com> Sent: Tuesday, October 16, 2018 12:06 PM To: gmlevine <gmlevine@researchtheworld.com> Subject: Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12 (your email wasn't to the entire list, so I'm replying privately; if you'd like, can send this to the mailing list, or happy to talk by phone to discuss further; it's an interesting debate) Hi Gerald, Replying out of sequence: 3. Yes, but they still made that finding with regards to the third limb, had it come to that. 2. They disclaimed the clause because they can't claim exclusive use over that true statement. 1. It's not just "agreements by private parties". Definitions change over time, and domain names are now recognized as (non-traditional) intellectual property, as shown by many SEC filings as well as ordinary usage. While some might want to exclude it from the 'traditional list", times change. Here's a sample of some other examples: https://www.gov.uk/government/publications/naming-and-registering-government... "7. Naming strategy Organisations with, or planning to have, an Internet presence should adopt and exercise a centralised approach to planning the acquisition, management and use of appropriate domain names. A ****domain name is intellectual property**** and has both financial and strategic value." (emphasis added, that's the UK government website!) https://shop.astonmartin.com/terms-of-use "Aston Martin trade marks: The Aston Martin trade marks included on our site and the domain name www.shop.astonmartin.com and all related domain names and sub-domain names are intellectual property rights belonging to Aston Martin Lagonda Limited which are licensed to cyber-Heidelberg GmbH. You are not permitted to use them without the consent of Aston Martin Lagonda Limited." https://www.sec.gov/Archives/edgar/data/1447669/000110465918062222/a18-36722... " “Intellectual Property Rights” means all (i) patents, patent applications (including divisions, continuations, continuation-in-part, renewal applications, provisionals, extensions, reexaminations and supplementary protection certifications), and invention disclosures; (ii) trademarks, trade names, service marks, brand names, trade dress, ***domain names***, Internet addresses, and universal resource locator (URL) names and other indicia of origin, including the goodwill associated therewith, (iii) copyrights, works of authorship, design rights, mask works, (iv) trade secrets, confidential or proprietary information, (v) information, compositions, methods, techniques, tools, specifications, designs, data, databases, metadata, compilations, processes, methods, inventions, algorithms, schematics, technology, Software, interfaces, development tools, know-how, documentation, and other intellectual property rights and other similar proprietary rights, (vi) all rights under any registrations or applications for registration of any of the foregoing; and (vii) all rights to seek remedies against infringement of any of the foregoing and rights of protection of interest therein under the laws of all jurisdictions (including, but not limited to, rights to recover for past, present and future violations thereof)." (page 78, emphasis added) https://www.sec.gov/Archives/edgar/data/1239819/000123981918000071/ex21-asse... "“Intellectual Property” means any and all of the following in any jurisdiction throughout the world and all rights in, arising out of, or associated therewith: (a) Patents; (b) Trademarks; (c) Copyrights; (d) ****internet domain names**** and social media account or user names (including “handles”), whether or not Trademarks, all associated web addresses, URLs, websites and web pages, social media accounts and pages, and all content and data thereon or relating thereto, whether or not Copyrights; (e) mask works, and all registrations, applications for registration, and renewals thereof; (f) Trade Secrets; (g) Software; and (h) any other intellectual or industrial property." (emphasis added) https://www.sec.gov/Archives/edgar/data/1451505/000155837018007708/rig-20181... "“Intellectual Property” means all intellectual property rights, whether protected, created or arising under any jurisdiction throughout the world, including the following: (i) trademarks, service marks, trade names, ****domain names****, trade dress or any other similar type of brand names, logos, corporate names, certification marks, and other indications of origin, the goodwill associated with the foregoing and registrations in any jurisdiction of, and applications in any jurisdiction to register, the foregoing, including any extension, modification or renewal of any such registration or application, (ii) inventions, discoveries and improvements, whether patentable or not, in any jurisdiction patents, applications for patents (including utility, divisions, continuations, continuations-in-part and provisional applications), and any renewals, reexaminations, extensions or reissues thereof, in any jurisdiction, (iii) works of authorship, mask works and any and all copyright rights, whether registered or not and registrations or applications for registration of copyrights in any jurisdiction, and any renewals or extensions thereof, (iv) computer software, databases, data compilations and data, (v) Trade Secrets, (vi) moral rights, database rights, shop rights, design rights, industrial property rights, publicity rights and privacy rights and (vii) any similar proprietary rights." (page A-9, emphasis added) https://www.sec.gov/Archives/edgar/data/1631282/000161577418010894/s110869_e... "For the purpose of this agreement, "intellectual property" refers to the registered and unregistered copyright and related rights, patents subject to pending registration, patent application right, trademark, service mark, logo, image, product appearance, trade name, ****Internet domain names****, design rights, copyright (including the copyright of computer software), database rights and proprietary technology, semiconductor design right, utility model, trade secrets, inventions (whether or not protected by patent law) and other patent, copyright, trademark, trade secret or other intellectual property rights protected by the laws, regardless of the form and carrier." (Annex 4, emphasis added) If I'm creating a list of "Furniture", and say "Furniture includes chairs, tables, etc", to enumerate subsets, I'm not going to suddenly include "fish", "horses", etc. People include "domain names" in the list of "intellectual property" because domain names *are* a subset of intellectual property these days. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Tue, Oct 16, 2018 at 11:50 AM, <gmlevine@researchtheworld.com> wrote:
George, taking your "proof" seriatim:
1 Agreements by private parties as to what is included in the term "intellectual property" does not make domain names intellectual property even if they're included in the definition. 2. Registering a name for trademark that includes the clause "Domain Names are Intellectual Property" does not make domain names intellectual property. The applicant disclaimed the clause apart from the mark as shown. 3. In the Virtual Dates case, Complainant failed on the first limb because no right accrues for having a mark registered on the Supplemental Register.
My view is that in construing the Policy the panelists got the balance right.
Gml
-----Original Message----- From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of George Kirikos Sent: Tuesday, October 16, 2018 11:20 AM To: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12
Hi Gerald,
Domain name are intellectual property. As I cited in the proposal itself:
https://www.sec.gov/Archives/edgar/data/1645194/000119312515394008/d30 149dex99h4.htm
" “Intellectual Property” shall mean all (a) trademarks, service marks, ****domain names****, trade dress, logos and trade names and registrations and applications for registration thereof, (b) copyrights and registrations and applications for registration thereof, (c) trade secrets and confidential business information, including data, methodologies and algorithms relating to market indices, and (d) other proprietary rights relating to any of the foregoing. " (emphasis added)
I'm happy to provide you with more citations, if you'd like. Here's a particularly fun one:
http://tsdr.uspto.gov/#caseNumber=78352055&caseType=SERIAL_NO&searchTy pe=statusSearch
Mark: LADASDOMAINS DOMAIN NAMES ARE INTELLECTUAL PROPERTY
:-)
As for the Voyuer.com case, the following finding is the relevant part:
"As to Respondent’s right to the mark, since Respondent has demonstrated conclusively that it registered its domain name before a registration of the trademark was ever attempted. "
The registration of the trademark was attempted on the application filing date, December 15, 1998:
http://tsdr.uspto.gov/#caseNumber=75605968&caseType=SERIAL_NO&searchTy pe=statusSearch
Xedoc Holdings acquired the domain name in dispute, Voyuer.com in January of 2005, from the prior owner, and the domain's creation date was in 1997.
Thus, the panel's finding that it "registered its domain name before a registration of the trademark was ever attempted" is true only if "registered its domain name" refers to the creation date (in 1997), since we've already established that the trademark was filed on December 15, 1998. The panel clearly did not find that January 2005 was the time it "registered its domain name" for the purpose of the relevant bad faith test.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Oct 16, 2018 at 11:02 AM, <gmlevine@researchtheworld.com> wrote:
Domain names, valuable or not, are not intellectual property. The referenced Virtual Dates (Forum 2005) decision did not rest on a finding that the new owner was a successor in interest. GmLevine
-----Original Message----- From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of George Kirikos Sent: Tuesday, October 16, 2018 10:36 AM To: gnso-rpm-wg <gnso-rpm-wg@icann.org>; Ariel Liang <ariel.liang@icann.org> 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 http://www.leap.com/
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