Paul, I think the misunderstanding here is that when I say "lifetime lock", I'm only referring to the fact that, under 10.2 of the URS Procudures ( http://newgtlds.icann.org/en/applicants/urs/procedure-01mar13-en.pdf), when a party prevails in a URS case, the domain is locked for the life of the domain registration: "Immediately upon receipt of the Determination, the Registry Operator shall suspend the domain name, *which shall remain suspended for the balance of the registration period* and would not resolve to the original web site. " I merely pointed this out to show a potential conflict with the rules of a subsequently filed UDRP. And I was only pointing it out to support George's point that the registry operators / registrars are sustaining costs associated with administration, and should be equally entitled to cost recovery as WIPO/NAF. This seems like common sense to me. Jonathan On Fri, Sep 7, 2018 at 10:12 AM Paul Keating <paul@law.es> wrote:

The idea of an unlimited lock on a domain is absurd.

Trademarks are limited both jurisdictionally and bu goods/services classification.

To justify a permanent lock the trademark holder would have to satisfy a huge burden. Essentially having to prove the following:

1 the mark is registered globally in all jurisdictions.

2. The mark is globally famous such that it’s recognition transcends any and all goods/services classifications. The mark must truly be a household name. (Think Coca Cola blue jeans. There are not many marks that would satisfy these requirements.

3. Even if famous jurisdictions differ widely in the applicable law and factors necessary to determine fame.

3. The URS/UDRP is simply NOT an appropriate forum for such a determination.

4. Any limitation based upon time is insufficient. First a trademark lapses Only as a result of non-use or failure to renew. It is not like a parent or copyright - both both of which were designed to be of limited duration. This any absolute time reference would require one to constantly monitor continued validity.

5. Given that there are non-conflicting uses for a phrase that is also a trademark such a rule would both provide an unfair advantage to the trademark holder and limit the rights of others who may wish to use the same phrase for non conflicting purposes.

6. Many non infringing use cases exist - the basis of fair use. Fair use is present in virtually every Trulaw underlying trademarks.

7. The original WIPO White Paper issued in 1999 clearly formulated the foundational policy that the UDRP was NOT intended to expand trademark rights beyond those which existed outside the Internet. I see no reason to question the logic of that foundational policy statement. I further cannot see any reason why the URS should be treated differently.

Let’s stop this silly discussion. It is an example of gross over reaching.

Paul Keating.

Sent from my iPhone

On 6 Sep 2018, at 21:03, Jonathan Frost <jonathan@get.club> wrote:

Your point about the 10 year max is well taken, Maxim. I would venture a guess that most domains that are the subject of abuse are not registered for long periods though.

I would be concerned about the operational overhead of removing locks from the domains on a specific date. While you're right that a lock (or any requirement whatever) can be overridden by the order of a court of competent jurisdiction, I think that building in specific dates in the distant future where a lock should be removed could increase operational overhead.

Jonathan

On Thu, Sep 6, 2018 at 12:45 PM Maxim Alzoba <m.alzoba@gmail.com> wrote:

...

Hello Jonathan,

I am resending it (was not processed by gnso-rpm-wg@ list).

I think lifetime lock (if at all) should be limited to the lifetime of the TM registration, to avoid dumping of some strings for no reason (when there is no TM holder to protect, what is the reason for locking?)

Also, all registrations terms are limited to the time of Registry contract with ICANN (10 years), so at the best it can be 10 years, and not a single day more.

So either we do not use this idea, or we will have to create mechanism of removing such lifetime-10years-lock, preferably using the current system (for example, TM database to which URS complainant of that time referred to , does not have the entry no more, so the party seeking for the registration can start a process, might be even with the same price of filing via the same URS provider, or it's successor).

p.s: any kind of such lock can be overridden by a simple village court in the same jurisdiction as the particular registry is based.

Sincerely Yours,

Maxim Alzoba Special projects manager, International Relations Department, FAITID

m. +7 916 6761580(+whatsapp) skype oldfrogger

Current UTC offset: +3.00 (.Moscow)

On 5 Sep 2018, at 20:59, Jonathan Frost <jonathan@get.club> wrote:

For instance, there is ambiguity about what action a registry should take when a domain which is already the subject of a URS judgement & lifetime lock receives a UDPR judgement that requires unlock & transfer. The URS rules don't account for this situation, and by their letter, require that the domain not be unlocked. However, the registries are also required to comply with consensus policies (such as UDRP).

Jonathan

On Wed, Sep 5, 2018 at 1:47 PM Doug Isenberg <Doug@giga.law> wrote:

...

What are some of the “ambiguities in complying with the rules”?

Doug

*From:* gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Jonathan Frost *Sent:* Wednesday, September 5, 2018 1:15 PM *To:* icann@leap.com *Cc:* gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] URS / UDRP proposals -- data on registrar/registry compliance costs

I agree that Registries and Registrars need to be able to recover the cost of administering the URS/UDRPs, as part of the filing fee.

The costs that the Registries/Registrars bear actually goes beyond what Reg has said. There are situations where we have to go to outside counsel or even ICANN to resolve ambiguities in complying with the rules. Additionally, the 24 hour action requirement on locking a domain that has received a URS complaint actually increases the resources that have to be dedicated, beyond the actual number of minutes per complaint, because compliance personal has to allocate/reserve a certain time per day to perform the tasks, even if no complaint is received that day.

Just like the arbitration administrators charge a cost recovery fee for administration as part of the filing fee, it's just common since that the Registries/Registrars would too.

Jonathan Frost _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

Jonathan, Thanks for the clarification. when a party prevails in a URS case, the domain is locked for the life of the domain registration: "Immediately upon receipt of the Determination, the Registry Operator shall suspend the domain name, which shall remain suspended for the balance of the registration period and would not resolve to the original web site. " This raises the issue of the disparity when a domain is only registered for a 1-yr period or longer. I would presume most domains subject to a URS are short-term (1-yr registration). In any case the registrar has received the registration fee it bargained for. It was aware of the URS/UDRP enforcement mechanisms at the time of registration. It could have imposed a fee or charged a higher price. If it chose not to do so then such is life. Either way i see no reason to now transfer the costs to someone else. Sent from my iPad

On 7 Sep 2018, at 17:30, Paul Tattersfield <gpmgroup@gmail.com> wrote:

when a party prevails in a URS case, the domain is locked for the life of the domain registration: "Immediately upon receipt of the Determination, the Registry Operator shall suspend the domain name, which shall remain suspended for the balance of the registration period and would not resolve to the original web site. "

Jonathan, can you expand on the idea that if registrars or registries (who by the way with the URS or UDRP are sheilded from the hassle of managing complaints directly) were compensated for locking a domain name, case processing would be more efficient. Thx. Brian On 7 September 2018 at 19:45:29 CEST, Jonathan Frost <jonathan@get.club> wrote: I agree with you that the majority of cases are 1 year registration periods, but not all. But this a red herring from my original point that the parties that administer the curative RPMs should be treated (and compensated) equally. The fact is, if the system were to build in cost recovery for the registrars and registries, it would result in more efficient processing, and more efficient administration of URS/UDRP. I think your idea that the Registrars/Registries should absorb the costs because they accepted the abusive registration would have more merit if the registries/registrars were not agnostic about the content of the registration. There isn't a filtering mechanism to determine the content of a registration, and I think putting the registrars/registries in that position would raise free speech issues. Jonathan On Fri, Sep 7, 2018 at 1:20 PM Paul Keating <paul@law.es<mailto:paul@law.es>> wrote: Jonathan, Thanks for the clarification. when a party prevails in a URS case, the domain is locked for the life of the domain registration: "Immediately upon receipt of the Determination, the Registry Operator shall suspend the domain name, which shall remain suspended for the balance of the registration period and would not resolve to the original web site. " This raises the issue of the disparity when a domain is only registered for a 1-yr period or longer. I would presume most domains subject to a URS are short-term (1-yr registration). In any case the registrar has received the registration fee it bargained for. It was aware of the URS/UDRP enforcement mechanisms at the time of registration. It could have imposed a fee or charged a higher price. If it chose not to do so then such is life. Either way i see no reason to now transfer the costs to someone else. Sent from my iPad On 7 Sep 2018, at 17:30, Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> wrote: when a party prevails in a URS case, the domain is locked for the life of the domain registration: "Immediately upon receipt of the Determination, the Registry Operator shall suspend the domain name, which shall remain suspended for the balance of the registration period and would not resolve to the original web site. " 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.

And of course there is nothing to stop them from assessing a fee in the future. Sent from my iPad

On 7 Sep 2018, at 21:45, BECKHAM, Brian <brian.beckham@wipo.int> wrote:

Jonathan, can you expand on the idea that if registrars or registries (who by the way with the URS or UDRP are sheilded from the hassle of managing complaints directly) were compensated for locking a domain name, case processing would be more efficient. Thx.

Brian

...

On 7 September 2018 at 19:45:29 CEST, Jonathan Frost <jonathan@get.club> wrote: I agree with you that the majority of cases are 1 year registration periods, but not all. But this a red herring from my original point that the parties that administer the curative RPMs should be treated (and compensated) equally. The fact is, if the system were to build in cost recovery for the registrars and registries, it would result in more efficient processing, and more efficient administration of URS/UDRP.

I think your idea that the Registrars/Registries should absorb the costs because they accepted the abusive registration would have more merit if the registries/registrars were not agnostic about the content of the registration. There isn't a filtering mechanism to determine the content of a registration, and I think putting the registrars/registries in that position would raise free speech issues.

Jonathan

On Fri, Sep 7, 2018 at 1:20 PM Paul Keating <paul@law.es> wrote: Jonathan,

Thanks for the clarification.

when a party prevails in a URS case, the domain is locked for the life of the domain registration: "Immediately upon receipt of the Determination, the Registry Operator shall suspend the domain name, which shall remain suspended for the balance of the registration period and would not resolve to the original web site. "

This raises the issue of the disparity when a domain is only registered for a 1-yr period or longer. I would presume most domains subject to a URS are short-term (1-yr registration).

In any case the registrar has received the registration fee it bargained for. It was aware of the URS/UDRP enforcement mechanisms at the time of registration. It could have imposed a fee or charged a higher price. If it chose not to do so then such is life. Either way i see no reason to now transfer the costs to someone else.

Sent from my iPad

On 7 Sep 2018, at 17:30, Paul Tattersfield <gpmgroup@gmail.com> wrote:

...

when a party prevails in a URS case, the domain is locked for the life of the domain registration: "Immediately upon receipt of the Determination, the Registry Operator shall suspend the domain name, which shall remain suspended for the balance of the registration period and would not resolve to the original web site. "

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.

Brian, I think that the lock should remain for the balance of the remaining year. I doubt anyone was thinking of long-term registrations when the rule was created. If the registration was for a longer period then the domain expires. I understand this means that bad actors can continue to potentially mis use a domain. However, the balance of equities IMHO rests in favor of freeing up the domain for other legitimate use. Sent from my iPad

On 7 Sep 2018, at 17:29, BECKHAM, Brian <brian.beckham@wipo.int> wrote:

Paul,

I could be wrong and invite him to correct me, but I think, with respect, that Jonathan is incorrectly using the URS terminology of the suspension for the duration of the life of the domain name incorrectly as the concept of a “lifetime lock” (and certainly I did not read it as a proposal for such duration).

What you rightly note however, is that the an extended suspension locks out third parties from using a domain name for whatever that duration is (whether 1, 2, 5 years, or even in perpetuity).

Brian

From: gnso-rpm-wg [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Friday, September 07, 2018 4:13 PM To: Jonathan Frost Cc: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] URS / UDRP proposals -- data on registrar/registry compliance costs

The idea of an unlimited lock on a domain is absurd.

Trademarks are limited both jurisdictionally and bu goods/services classification.

To justify a permanent lock the trademark holder would have to satisfy a huge burden. Essentially having to prove the following:

1 the mark is registered globally in all jurisdictions.

2. The mark is globally famous such that it’s recognition transcends any and all goods/services classifications. The mark must truly be a household name. (Think Coca Cola blue jeans. There are not many marks that would satisfy these requirements.

3. Even if famous jurisdictions differ widely in the applicable law and factors necessary to determine fame.

3. The URS/UDRP is simply NOT an appropriate forum for such a determination.

4. Any limitation based upon time is insufficient. First a trademark lapses Only as a result of non-use or failure to renew. It is not like a parent or copyright - both both of which were designed to be of limited duration. This any absolute time reference would require one to constantly monitor continued validity.

5. Given that there are non-conflicting uses for a phrase that is also a trademark such a rule would both provide an unfair advantage to the trademark holder and limit the rights of others who may wish to use the same phrase for non conflicting purposes.

6. Many non infringing use cases exist - the basis of fair use. Fair use is present in virtually every Trulaw underlying trademarks.

7. The original WIPO White Paper issued in 1999 clearly formulated the foundational policy that the UDRP was NOT intended to expand trademark rights beyond those which existed outside the Internet. I see no reason to question the logic of that foundational policy statement. I further cannot see any reason why the URS should be treated differently.

Let’s stop this silly discussion. It is an example of gross over reaching.

Paul Keating.

Sent from my iPhone

On 6 Sep 2018, at 21:03, Jonathan Frost <jonathan@get.club> wrote:

Your point about the 10 year max is well taken, Maxim. I would venture a guess that most domains that are the subject of abuse are not registered for long periods though.

I would be concerned about the operational overhead of removing locks from the domains on a specific date. While you're right that a lock (or any requirement whatever) can be overridden by the order of a court of competent jurisdiction, I think that building in specific dates in the distant future where a lock should be removed could increase operational overhead.

Jonathan

On Thu, Sep 6, 2018 at 12:45 PM Maxim Alzoba <m.alzoba@gmail.com> wrote: Hello Jonathan,

I am resending it (was not processed by gnso-rpm-wg@ list).

I think lifetime lock (if at all) should be limited to the lifetime of the TM registration, to avoid dumping of some strings for no reason (when there is no TM holder to protect, what is the reason for locking?)

Also, all registrations terms are limited to the time of Registry contract with ICANN (10 years), so at the best it can be 10 years, and not a single day more.

So either we do not use this idea, or we will have to create mechanism of removing such lifetime-10years-lock, preferably using the current system (for example, TM database to which URS complainant of that time referred to , does not have the entry no more, so the party seeking for the registration can start a process, might be even with the same price of filing via the same URS provider, or it's successor).

p.s: any kind of such lock can be overridden by a simple village court in the same jurisdiction as the particular registry is based.

Sincerely Yours,

Maxim Alzoba Special projects manager, International Relations Department, FAITID

m. +7 916 6761580(+whatsapp) skype oldfrogger

Current UTC offset: +3.00 (.Moscow)

On 5 Sep 2018, at 20:59, Jonathan Frost <jonathan@get.club> wrote:

For instance, there is ambiguity about what action a registry should take when a domain which is already the subject of a URS judgement & lifetime lock receives a UDPR judgement that requires unlock & transfer. The URS rules don't account for this situation, and by their letter, require that the domain not be unlocked. However, the registries are also required to comply with consensus policies (such as UDRP).

Jonathan

On Wed, Sep 5, 2018 at 1:47 PM Doug Isenberg <Doug@giga.law> wrote: What are some of the “ambiguities in complying with the rules”?

Doug

From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org> On Behalf Of Jonathan Frost Sent: Wednesday, September 5, 2018 1:15 PM To: icann@leap.com Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] URS / UDRP proposals -- data on registrar/registry compliance costs

I agree that Registries and Registrars need to be able to recover the cost of administering the URS/UDRPs, as part of the filing fee.

The costs that the Registries/Registrars bear actually goes beyond what Reg has said. There are situations where we have to go to outside counsel or even ICANN to resolve ambiguities in complying with the rules. Additionally, the 24 hour action requirement on locking a domain that has received a URS complaint actually increases the resources that have to be dedicated, beyond the actual number of minutes per complaint, because compliance personal has to allocate/reserve a certain time per day to perform the tasks, even if no complaint is received that day.

Just like the arbitration administrators charge a cost recovery fee for administration as part of the filing fee, it's just common since that the Registries/Registrars would too.

Jonathan Frost _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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.

Cybersquatting requires bad faith. (URS Procedure 1.2.6.3). A subsequent user could use a domain name legitimately, even if a previous user did not. The "doctrine of inevitable confusion" does not transform a trademark into a global right to prevent the use of a word in a domain name for all purposes. And a finding that a domain name has been registered in bad faith doesn't create a presumption that future registrants will also register the domain in bad faith. So I agree with Paul and Jonathan that the balance of equities favors a shorter suspension.      Mitch Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate | https://act.eff.org/ On 9/7/18 1:14 PM, Scott Austin wrote:

Paul: If the domain that has been suspended had already been proven to be essentially identical to a registered  mark how does your assumption of a subsequent "legitimate" use square with the doctrine of inevitable confusion. Won't putting the same conflicting domain back on the market merely accommodate and facilitate old cybersquatting wine in a new registrant bottle? And ensure whack a mole for the trademark holder.

Scott

Scott

Sent from my T-Mobile 4G LTE Device

-------- Original message -------- From: Paul Keating <paul@law.es> Date: 9/7/18 1:23 PM (GMT-05:00) To: "BECKHAM, Brian" <brian.beckham@wipo.int> Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] URS / UDRP proposals -- data on registrar/registry compliance costs

 Brian,

I think that the lock should remain for the balance of the remaining year. I doubt anyone was thinking of long-term registrations when the rule was created.    If the registration was for a longer period then the domain expires.  I understand this means that bad actors can continue to potentially mis use a domain.  However, the balance of equities IMHO rests in favor of freeing up the domain for other legitimate use.

Sent from my iPad

On 7 Sep 2018, at 17:29, BECKHAM, Brian <brian.beckham@wipo.int <mailto:brian.beckham@wipo.int>> wrote:

...

Paul,

I could be wrong and invite him to correct me, but I think, with respect, that Jonathan is incorrectly using the URS terminology of the suspension for the /duration of the life of the domain name/ incorrectly as the concept of a “/lifetime lock/” (and certainly I did not read it as a proposal for such duration).

What you rightly note however, is that the an extended suspension locks out third parties from using a domain name for whatever that duration is (whether 1, 2, 5 years, or even in perpetuity).

Brian

*From:*gnso-rpm-wg [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *Paul Keating *Sent:* Friday, September 07, 2018 4:13 PM *To:* Jonathan Frost *Cc:* gnso-rpm-wg *Subject:* Re: [gnso-rpm-wg] URS / UDRP proposals -- data on registrar/registry compliance costs

The idea of an unlimited lock on a domain is absurd.

Trademarks are limited both jurisdictionally and bu goods/services classification.

To justify a permanent lock the trademark holder would have to satisfy a huge burden. Essentially having to prove the following:

1   the mark is registered globally in all jurisdictions.

2.  The mark is globally famous such that it’s recognition transcends any and all goods/services classifications.  The mark must truly be a household name.  (Think Coca Cola blue jeans. There are not many marks that would satisfy these requirements.

3. Even if famous jurisdictions differ widely in the applicable law and factors necessary to determine fame.

3. The URS/UDRP is simply NOT an appropriate forum for such a determination.

4. Any limitation based upon time is insufficient. First a trademark lapses

Only as a result of non-use or failure to renew. It is not like a parent or copyright - both both of which were designed to be of limited duration.   This any absolute time reference would require one to constantly monitor continued validity.

5. Given that there are non-conflicting uses for a phrase that is also a trademark such a rule would both provide an unfair advantage to the trademark holder and limit the rights of others who may wish to use the same phrase for non conflicting purposes.

6. Many non infringing use cases exist - the basis of fair use. Fair use is present in virtually every Trulaw underlying trademarks.

7.   The original WIPO White Paper issued in 1999 clearly formulated the foundational policy that the UDRP was NOT intended to expand trademark rights beyond those which existed outside the Internet. I see no reason to question the logic of that foundational policy statement. I further cannot see any reason why the URS should be treated differently.

Let’s stop this silly discussion. It is an example of gross over reaching.

Paul Keating.

Sent from my iPhone

On 6 Sep 2018, at 21:03, Jonathan Frost <jonathan@get.club <mailto:jonathan@get.club>> wrote:

Your point about the 10 year max is well taken, Maxim.  I would venture a guess that most domains that are the subject of abuse are not registered for long periods though.

I would be concerned about the operational overhead of removing locks from the domains on a specific date.  While you're right that a lock (or any requirement whatever) can be overridden by the order of a court of competent jurisdiction, I think that building in specific dates in the distant future where a lock should be removed could increase operational overhead.

Jonathan

On Thu, Sep 6, 2018 at 12:45 PM Maxim Alzoba <m.alzoba@gmail.com <mailto:m.alzoba@gmail.com>> wrote:

Hello Jonathan,

I am resending it (was not processed by gnso-rpm-wg@ list).

I think lifetime lock (if at all) should be limited to the lifetime of the TM registration,

to avoid dumping of some strings for no reason (when there is no TM holder to protect,

what is the reason for locking?)

Also, all registrations terms are limited to the time of Registry contract with ICANN (10 years), so at the best it can be 10 years, and not a single day more.

So either we do not use this idea, or we will have to create mechanism of removing such lifetime-10years-lock, preferably using the current system

(for example, TM database to which URS complainant of that time referred to , does not have the entry no more,

so the party seeking for the registration can start a process, might be even with the same price of filing via the same URS provider, or it's successor).

p.s: any kind of such lock can be overridden by a simple village court in the same jurisdiction as the particular registry is based.

Sincerely Yours,

Maxim Alzoba Special projects manager, International Relations Department, FAITID

m. +7 916 6761580(+whatsapp)

skype oldfrogger

Current UTC offset: +3.00 (.Moscow)

On 5 Sep 2018, at 20:59, Jonathan Frost <jonathan@get.club <mailto:jonathan@get.club>> wrote:

For instance, there is ambiguity about what action a registry should take when a domain which is already the subject of a URS judgement & lifetime lock receives a UDPR judgement that requires unlock & transfer.  The URS rules don't account for this situation, and by their letter, require that the domain not be unlocked. However, the registries are also required to comply with consensus policies (such as UDRP).

Jonathan

On Wed, Sep 5, 2018 at 1:47 PM Doug Isenberg <Doug@giga.law <mailto:Doug@giga.law>> wrote:

What are some of the “ambiguities in complying with the rules”?

Doug

*From:* gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>> *On Behalf Of *Jonathan Frost *Sent:* Wednesday, September 5, 2018 1:15 PM *To:* icann@leap.com <mailto:icann@leap.com> *Cc:* gnso-rpm-wg <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> *Subject:* Re: [gnso-rpm-wg] URS / UDRP proposals -- data on registrar/registry compliance costs

I agree that Registries and Registrars need to be able to recover the cost of administering the URS/UDRPs, as part of the filing fee.

The costs that the Registries/Registrars bear actually goes beyond what Reg has said. There are situations where we have to go to outside counsel or even ICANN to resolve ambiguities in complying with the rules. Additionally, the 24 hour action requirement on locking a domain that has received a URS complaint actually increases the resources that have to be dedicated, beyond the actual number of minutes per complaint, because compliance personal has to allocate/reserve a certain time per day to perform the tasks, even if no complaint is received that day.

Just like the arbitration administrators charge a cost recovery fee for administration as part of the filing fee, it's just common since that the Registries/Registrars would too.

Jonathan Frost

_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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Mitch: The balance of what equities? It is easy to assume away the problem speculating that "A subsequent user could use a domain name legitimately". There is nothing in your comment that supports this speculation that the domain name once released from suspension would be available to or of interest to fewer cybersquatters. In fact it may now have alerted new ones to its potential. Before the suspension the odds may have been even that the domain could be put to legitimate or illegitimate use. Once the domain has demonstrated its capacity for attractiveness to cybersquatters for illegitimate use through confusing similarity to a registered mark that resulted in URS suspension, the odds are more likely the domain, now established as having verified potential to benefit from confusing similarity with a registered mark, would have gained a cybersquatting seal of approval and perhaps the attention of a wider audience. What is your evidence that the domain post suspension is more likely to be used for legitimate purposes. Clearly at least one registrant was attracted to the domain and found value in it for illegitimate use. Why not others? More importantly, what is to prevent that same registrant, masked under the guise of a new entity, from returning for a second bite at the apple when suspension ends and the domain is once again at market? Especially when there is no vetting of the true ownership of a new entity that could be used by the former cybersquatting registrant's owner to apply for its second round of illegitimate use. Shorter suspension periods mean the domain is more quickly cycled back into the queue for, more likely, another round of whack a mole deterrence on the part of the trademark holder. That is assuming another battle on a different domain name front hasn't weakened or distracted their vigilance at the time suspension ends. There is no transfer remedy under the URS, but would you be adverse Mitch to granting a successful complainant a right of first opportunity to register the disputed domain when suspension ends? If not why not? Best regards, Scott Please click below to use my booking calendar to schedule: a 15-minute call<calendly.com/saustin-2/15min> a 30-minute call<calendly.com/saustin-2/30min> a 60-minute call<calendly.com/saustin-2/60min> [cid:image001.png@01D44791.F69C85B0][IntellectualPropertyLaw 100] [microbadge[1]] <http://www.avvo.com/attorneys/33308-fl-scott-austin-1261914.html> 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@VLPLawGroup.com<mailto:SAustin@VLPLawGroup.com> From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org> On Behalf Of Mitch Stoltz Sent: Friday, September 7, 2018 5:14 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] URS / UDRP proposals -- data on registrar/registry compliance costs Cybersquatting requires bad faith. (URS Procedure 1.2.6.3). A subsequent user could use a domain name legitimately, even if a previous user did not. The "doctrine of inevitable confusion" does not transform a trademark into a global right to prevent the use of a word in a domain name for all purposes. And a finding that a domain name has been registered in bad faith doesn't create a presumption that future registrants will also register the domain in bad faith. So I agree with Paul and Jonathan that the balance of equities favors a shorter suspension. Mitch Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate<https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fwww.eff.org%2fdonate&c=E,1,lqLRZQ-tzQlB6GtbNt-MdU3kmoBDQs5Y3FQwUNpQRx6zZPrkEAEiF02xJfwdcNtyh59rjgR6-Jaq13ROTW6xJxSc8SjN0fjfoXkWe-HvCevZMQ4,&typo=1> | https://act.eff.org/<https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fact.eff.org%2f&c=E,1,Zdvs17kpyovD8Tl44CRg0aXRYQNZTPNSUJ8zHeUPwbTsVqz1qgloskN3gDiO6Z5nUWUVL2dZHF77_NEQL7iQW2FGcJSxsi9Eeibhp-cNpWoqydIoekQTJqFV&typo=1> On 9/7/18 1:14 PM, Scott Austin wrote: Paul: If the domain that has been suspended had already been proven to be essentially identical to a registered mark how does your assumption of a subsequent "legitimate" use square with the doctrine of inevitable confusion. Won't putting the same conflicting domain back on the market merely accommodate and facilitate old cybersquatting wine in a new registrant bottle? And ensure whack a mole for the trademark holder. Scott Scott Sent from my T-Mobile 4G LTE Device -------- Original message -------- From: Paul Keating <paul@law.es><mailto:paul@law.es> Date: 9/7/18 1:23 PM (GMT-05:00) To: "BECKHAM, Brian" <brian.beckham@wipo.int><mailto:brian.beckham@wipo.int> Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] URS / UDRP proposals -- data on registrar/registry compliance costs Brian, I think that the lock should remain for the balance of the remaining year. I doubt anyone was thinking of long-term registrations when the rule was created. If the registration was for a longer period then the domain expires. I understand this means that bad actors can continue to potentially mis use a domain. However, the balance of equities IMHO rests in favor of freeing up the domain for other legitimate use. Sent from my iPad On 7 Sep 2018, at 17:29, BECKHAM, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Paul, I could be wrong and invite him to correct me, but I think, with respect, that Jonathan is incorrectly using the URS terminology of the suspension for the duration of the life of the domain name incorrectly as the concept of a "lifetime lock" (and certainly I did not read it as a proposal for such duration). What you rightly note however, is that the an extended suspension locks out third parties from using a domain name for whatever that duration is (whether 1, 2, 5 years, or even in perpetuity). Brian From: gnso-rpm-wg [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Friday, September 07, 2018 4:13 PM To: Jonathan Frost Cc: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] URS / UDRP proposals -- data on registrar/registry compliance costs The idea of an unlimited lock on a domain is absurd. Trademarks are limited both jurisdictionally and bu goods/services classification. To justify a permanent lock the trademark holder would have to satisfy a huge burden. Essentially having to prove the following: 1 the mark is registered globally in all jurisdictions. 2. The mark is globally famous such that it's recognition transcends any and all goods/services classifications. The mark must truly be a household name. (Think Coca Cola blue jeans. There are not many marks that would satisfy these requirements. 3. Even if famous jurisdictions differ widely in the applicable law and factors necessary to determine fame. 3. The URS/UDRP is simply NOT an appropriate forum for such a determination. 4. Any limitation based upon time is insufficient. First a trademark lapses Only as a result of non-use or failure to renew. It is not like a parent or copyright - both both of which were designed to be of limited duration. This any absolute time reference would require one to constantly monitor continued validity. 5. Given that there are non-conflicting uses for a phrase that is also a trademark such a rule would both provide an unfair advantage to the trademark holder and limit the rights of others who may wish to use the same phrase for non conflicting purposes. 6. Many non infringing use cases exist - the basis of fair use. Fair use is present in virtually every Trulaw underlying trademarks. 7. The original WIPO White Paper issued in 1999 clearly formulated the foundational policy that the UDRP was NOT intended to expand trademark rights beyond those which existed outside the Internet. I see no reason to question the logic of that foundational policy statement. I further cannot see any reason why the URS should be treated differently. Let's stop this silly discussion. It is an example of gross over reaching. Paul Keating. Sent from my iPhone On 6 Sep 2018, at 21:03, Jonathan Frost <jonathan@get.club<mailto:jonathan@get.club>> wrote: Your point about the 10 year max is well taken, Maxim. I would venture a guess that most domains that are the subject of abuse are not registered for long periods though. I would be concerned about the operational overhead of removing locks from the domains on a specific date. While you're right that a lock (or any requirement whatever) can be overridden by the order of a court of competent jurisdiction, I think that building in specific dates in the distant future where a lock should be removed could increase operational overhead. Jonathan On Thu, Sep 6, 2018 at 12:45 PM Maxim Alzoba <m.alzoba@gmail.com<mailto:m.alzoba@gmail.com>> wrote: Hello Jonathan, I am resending it (was not processed by gnso-rpm-wg@ list). I think lifetime lock (if at all) should be limited to the lifetime of the TM registration, to avoid dumping of some strings for no reason (when there is no TM holder to protect, what is the reason for locking?) Also, all registrations terms are limited to the time of Registry contract with ICANN (10 years), so at the best it can be 10 years, and not a single day more. So either we do not use this idea, or we will have to create mechanism of removing such lifetime-10years-lock, preferably using the current system (for example, TM database to which URS complainant of that time referred to , does not have the entry no more, so the party seeking for the registration can start a process, might be even with the same price of filing via the same URS provider, or it's successor). p.s: any kind of such lock can be overridden by a simple village court in the same jurisdiction as the particular registry is based. Sincerely Yours, Maxim Alzoba Special projects manager, International Relations Department, FAITID m. +7 916 6761580(+whatsapp) skype oldfrogger Current UTC offset: +3.00 (.Moscow) On 5 Sep 2018, at 20:59, Jonathan Frost <jonathan@get.club<mailto:jonathan@get.club>> wrote: For instance, there is ambiguity about what action a registry should take when a domain which is already the subject of a URS judgement & lifetime lock receives a UDPR judgement that requires unlock & transfer. The URS rules don't account for this situation, and by their letter, require that the domain not be unlocked. However, the registries are also required to comply with consensus policies (such as UDRP). Jonathan On Wed, Sep 5, 2018 at 1:47 PM Doug Isenberg <Doug@giga.law<mailto:Doug@giga.law>> wrote: What are some of the "ambiguities in complying with the rules"? Doug From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Jonathan Frost Sent: Wednesday, September 5, 2018 1:15 PM To: icann@leap.com<mailto:icann@leap.com> Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] URS / UDRP proposals -- data on registrar/registry compliance costs I agree that Registries and Registrars need to be able to recover the cost of administering the URS/UDRPs, as part of the filing fee. The costs that the Registries/Registrars bear actually goes beyond what Reg has said. There are situations where we have to go to outside counsel or even ICANN to resolve ambiguities in complying with the rules. Additionally, the 24 hour action requirement on locking a domain that has received a URS complaint actually increases the resources that have to be dedicated, beyond the actual number of minutes per complaint, because compliance personal has to allocate/reserve a certain time per day to perform the tasks, even if no complaint is received that day. Just like the arbitration administrators charge a cost recovery fee for administration as part of the filing fee, it's just common since that the Registries/Registrars would too. Jonathan Frost _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg 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@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg 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.

Dear Scott: The owner of a trademark doesn't have the exclusive right to use that trademark in a domain name. Others can use it, either to sell goods or services in different geographic or product markets, to criticize the rightsholder, or simply to use it in good faith as a word or phrase with independent meaning. Cybersquatting and other unlawful uses of a trademark have always required bad faith on the part of the user, and the absence of any independent right to use the mark. Likelihood of confusion alone has never been enough. Because the illegal use of a domain name has always turned on the circumstances and bad faith of the user, there can be no presumption that future uses will be illegitimate. If "Example" were a popular brand of clothing, then example.xyz may well be "attractive[] to cybersquatters" and have "potential to benefit from confusing similarity with a registered mark." But that's irrelevant to a blogger who wants to criticize Example Clothing's labor practices, a different business called Example that sells sheet metal, and many other legitimate users who also have the "potential to benefit" from the use of that domain name. One person who registers example.xyz in bad faith and loses a URS proceeding does not diminish the rights of those future users. Nor does one URS proceeding give Example Clothing superior rights in the domain name over Example Sheet Metal or the labor activist. Either a "lifetime" suspension or a right of first refusal would effectively create a presumption of bad faith on the part of future users. There's no basis for that in trademark law. Either proposal would elevate the rights of trademark holders above anything granted by national law, and above the rights of other legitimate users. That's an extraordinary ask.     Mitch Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate | https://act.eff.org/ On 9/8/18 2:32 PM, Scott Austin wrote:

Mitch:

The balance of what equities? It is easy to assume away the problem speculating that “A subsequent user could use a domain name legitimately”.  There is nothing in your comment that supports this speculation that the domain name once released from suspension would be available to or of interest to fewer cybersquatters. In fact it may now have alerted new ones to its potential.

Before the suspension the odds may have been even that the domain could be put to legitimate or illegitimate use. Once the domain has demonstrated its capacity for attractiveness to cybersquatters for illegitimate use through confusing similarity to a registered mark that resulted in URS suspension, the odds are more likely the domain, now established as having verified potential to benefit from confusing similarity with a registered mark, would have gained a cybersquatting seal of approval and perhaps the attention of a wider audience.

What is your evidence that the domain post suspension is more likely to be used for legitimate purposes. Clearly at least one registrant was attracted to the domain and found value in it for illegitimate use. Why not others? More importantly, what is to prevent that same registrant, masked under the guise of a new entity, from returning for a second bite at the apple when suspension ends and the domain is once again at market? Especially when there is no vetting of the true ownership of a new entity that could be used by the former cybersquatting registrant’s owner to apply for its second round of illegitimate use.

Shorter suspension periods mean the domain is more quickly cycled back into the queue for, more likely, another round of whack a mole deterrence on the part of the trademark holder. That is assuming another battle on a different domain name front hasn’t weakened or distracted their vigilance at the time suspension ends.

There is no transfer remedy under the URS, but would you be adverse Mitch to granting a successful complainant a right of first opportunity to register the disputed domain when suspension ends? If not why not?

Best regards,

Scott

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*From:*gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Mitch Stoltz *Sent:* Friday, September 7, 2018 5:14 PM *To:* gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] URS / UDRP proposals -- data on registrar/registry compliance costs

Cybersquatting requires bad faith. (URS Procedure 1.2.6.3). A subsequent user could use a domain name legitimately, even if a previous user did not. The "doctrine of inevitable confusion" does not transform a trademark into a global right to prevent the use of a word in a domain name for all purposes. And a finding that a domain name has been registered in bad faith doesn't create a presumption that future registrants will also register the domain in bad faith. So I agree with Paul and Jonathan that the balance of equities favors a shorter suspension.      Mitch

Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate <https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fwww.eff.org%2fdonate&c=E...> |https://act.eff.org/ <https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fact.eff.org%2f&c=E,1,Zdv...>

On 9/7/18 1:14 PM, Scott Austin wrote:

Paul:

If the domain that has been suspended had already been proven to be essentially identical to a registered  mark how does your assumption of a subsequent "legitimate" use square with the doctrine of inevitable confusion. Won't putting the same conflicting domain back on the market merely accommodate and facilitate old cybersquatting wine in a new registrant bottle? And ensure whack a mole for the trademark holder.

Scott

Scott

Sent from my T-Mobile 4G LTE Device

-------- Original message --------

From: Paul Keating <paul@law.es> <mailto:paul@law.es>

Date: 9/7/18 1:23 PM (GMT-05:00)

To: "BECKHAM, Brian" <brian.beckham@wipo.int> <mailto:brian.beckham@wipo.int>

Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org> <mailto:gnso-rpm-wg@icann.org>

Subject: Re: [gnso-rpm-wg] URS / UDRP proposals -- data on registrar/registry compliance costs

 Brian,

I think that the lock should remain for the balance of the remaining year. I doubt anyone was thinking of long-term registrations when the rule was created.    If the registration was for a longer period then the domain expires.  I understand this means that bad actors can continue to potentially mis use a domain.  However, the balance of equities IMHO rests in favor of freeing up the domain for other legitimate use.

Sent from my iPad

On 7 Sep 2018, at 17:29, BECKHAM, Brian <brian.beckham@wipo.int <mailto:brian.beckham@wipo.int>> wrote:

Paul,

I could be wrong and invite him to correct me, but I think, with respect, that Jonathan is incorrectly using the URS terminology of the suspension for the /duration of the life of the domain name/ incorrectly as the concept of a “/lifetime lock/” (and certainly I did not read it as a proposal for such duration).

What you rightly note however, is that the an extended suspension locks out third parties from using a domain name for whatever that duration is (whether 1, 2, 5 years, or even in perpetuity).

Brian

*From:*gnso-rpm-wg [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *Paul Keating *Sent:* Friday, September 07, 2018 4:13 PM *To:* Jonathan Frost *Cc:* gnso-rpm-wg *Subject:* Re: [gnso-rpm-wg] URS / UDRP proposals -- data on registrar/registry compliance costs

The idea of an unlimited lock on a domain is absurd.

Trademarks are limited both jurisdictionally and bu goods/services classification.

To justify a permanent lock the trademark holder would have to satisfy a huge burden. Essentially having to prove the following:

1   the mark is registered globally in all jurisdictions.

2.  The mark is globally famous such that it’s recognition transcends any and all goods/services classifications.  The mark must truly be a household name.  (Think Coca Cola blue jeans. There are not many marks that would satisfy these requirements.

3. Even if famous jurisdictions differ widely in the applicable law and factors necessary to determine fame.

3. The URS/UDRP is simply NOT an appropriate forum for such a determination.

4. Any limitation based upon time is insufficient. First a trademark lapses

Only as a result of non-use or failure to renew. It is not like a parent or copyright - both both of which were designed to be of limited duration.   This any absolute time reference would require one to constantly monitor continued validity.

5. Given that there are non-conflicting uses for a phrase that is also a trademark such a rule would both provide an unfair advantage to the trademark holder and limit the rights of others who may wish to use the same phrase for non conflicting purposes.

6. Many non infringing use cases exist - the basis of fair use. Fair use is present in virtually every Trulaw underlying trademarks.

7.   The original WIPO White Paper issued in 1999 clearly formulated the foundational policy that the UDRP was NOT intended to expand trademark rights beyond those which existed outside the Internet. I see no reason to question the logic of that foundational policy statement. I further cannot see any reason why the URS should be treated differently.

Let’s stop this silly discussion. It is an example of gross over reaching.

Paul Keating.

Sent from my iPhone

On 6 Sep 2018, at 21:03, Jonathan Frost <jonathan@get.club <mailto:jonathan@get.club>> wrote:

Your point about the 10 year max is well taken, Maxim.  I would venture a guess that most domains that are the subject of abuse are not registered for long periods though.

I would be concerned about the operational overhead of removing locks from the domains on a specific date. While you're right that a lock (or any requirement whatever) can be overridden by the order of a court of competent jurisdiction, I think that building in specific dates in the distant future where a lock should be removed could increase operational overhead.

Jonathan

On Thu, Sep 6, 2018 at 12:45 PM Maxim Alzoba <m.alzoba@gmail.com <mailto:m.alzoba@gmail.com>> wrote:

Hello Jonathan,

I am resending it (was not processed by gnso-rpm-wg@ list).

I think lifetime lock (if at all) should be limited to the lifetime of the TM registration,

to avoid dumping of some strings for no reason (when there is no TM holder to protect,

what is the reason for locking?)

Also, all registrations terms are limited to the time of Registry contract with ICANN (10 years), so at the best it can be 10 years, and not a single day more.

So either we do not use this idea, or we will have to create mechanism of removing such lifetime-10years-lock, preferably using the current system

(for example, TM database to which URS complainant of that time referred to , does not have the entry no more,

so the party seeking for the registration can start a process, might be even with the same price of filing via the same URS provider, or it's successor).

p.s: any kind of such lock can be overridden by a simple village court in the same jurisdiction as the particular registry is based.

Sincerely Yours,

Maxim Alzoba Special projects manager, International Relations Department, FAITID

m. +7 916 6761580(+whatsapp)

skype oldfrogger

Current UTC offset: +3.00 (.Moscow)

On 5 Sep 2018, at 20:59, Jonathan Frost <jonathan@get.club <mailto:jonathan@get.club>> wrote:

For instance, there is ambiguity about what action a registry should take when a domain which is already the subject of a URS judgement & lifetime lock receives a UDPR judgement that requires unlock & transfer.  The URS rules don't account for this situation, and by their letter, require that the domain not be unlocked. However, the registries are also required to comply with consensus policies (such as UDRP).

Jonathan

On Wed, Sep 5, 2018 at 1:47 PM Doug Isenberg <Doug@giga.law <mailto:Doug@giga.law>> wrote:

What are some of the “ambiguities in complying with the rules”?

Doug

*From:* gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>> *On Behalf Of *Jonathan Frost *Sent:* Wednesday, September 5, 2018 1:15 PM *To:* icann@leap.com <mailto:icann@leap.com> *Cc:* gnso-rpm-wg <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> *Subject:* Re: [gnso-rpm-wg] URS / UDRP proposals -- data on registrar/registry compliance costs

I agree that Registries and Registrars need to be able to recover the cost of administering the URS/UDRPs, as part of the filing fee.

The costs that the Registries/Registrars bear actually goes beyond what Reg has said. There are situations where we have to go to outside counsel or even ICANN to resolve ambiguities in complying with the rules. Additionally, the 24 hour action requirement on locking a domain that has received a URS complaint actually increases the resources that have to be dedicated, beyond the actual number of minutes per complaint, because compliance personal has to allocate/reserve a certain time per day to perform the tasks, even if no complaint is received that day.

Just like the arbitration administrators charge a cost recovery fee for administration as part of the filing fee, it's just common since that the Registries/Registrars would too.

Jonathan Frost

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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.

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