Would it materially impact the proposal if we replaced the word "intellectual" with "intangible"? On Tue, Oct 16, 2018 at 11:03 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/

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

Neither “citation” provides support for the supposition that “Domain name [sic] are intellectual property.” The first is a definition of “Intellectual Property” contained in a license agreement; such definitions are only for use in and purposes of the agreement and the convenience of drafting, and does not stand for any absolute truth that each named item is an article of intellectual property in the eyes of the law or in fact. The second is a slogan contained in a registered trademark, and (I presume) is intended to promote the idea that a registrar affiliated with an intellectual property law firm will provide superior service because of the connection between domain names and intellectual property (specifically, trademarks). What these “citations” tend to show is that domain names are often lumped in with intellectual property, that they are a use of intellectual property, that domain names tend to be licensed along with the intellectual property they use, that registration and management of domain names arguably benefits from awareness of and experience with intellectual property concerns, and that Googling (sorry, Google <brand> searching) does not prove anything without further analysis, and that “fun” is not relevant to the probative value of a “citation.” Best regards, Greg On Tue, Oct 16, 2018 at 11:19 AM George Kirikos <icann@leap.com> wrote:

Hi Gerald,

Domain name are intellectual property. As I cited in the proposal itself:

https://www.sec.gov/Archives/edgar/data/1645194/000119312515394008/d30149dex...

" “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&searchType=sta...

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&searchType=sta...

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/

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

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/2011/09/22/08-56110.pdf (also listed on the WIPO Website at: http://www.wipo.int/export/sites/www/amc/en/docs/d20060636circuitdecision.pd... linked from http://www.wipo.int/amc/en/domains/challenged/ ) “”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 gopets.com 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 gopets.com was not a registration within the meaning of § 1125(d)(1). Because Edward Hise registered gopets.com in 1999, long before GoPets Ltd. registered its service mark, Digital Overture’s re-registration and continued ownership of gopets.com 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 http://www.leap.com/ On Tue, Oct 16, 2018 at 12:13 PM, BECKHAM, Brian <brian.beckham@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@icann.org> on behalf of George Kirikos <icann@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 http://www.leap.com/

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.

George, I believe there is a conflicting case in the Third Circuit (Schmidheiny, 319 F.3d at 583), and again, there is no ambiguity under the UDRP. See inter alia the discussion at (http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2018-0738): "Although the disputed domain name was first registered in 1995, it was not registered by the Respondent then. As noted above, the Respondent first acquired rights to the disputed domain name in February 2017. That does not appear to have been as part of the continuation of an existing business such as a transfer between related parties in conjunction with an internal re-organization. Rather, it appears to have been an arm's length transaction between independent parties. In any event, the Respondent has not claimed it was anything other than an arm's length transaction. In support of its position, the Respondent cites a decision of the Ninth Circuit Court of Appeals in the United States, GoPets Ltd. v. Hise, et al., 657 F.3d 1024 (9th Cir. 2011). That was a decision under the Anticybersquatting Consumer Protection Act ("ACPA"). In Hise, the Ninth Circuit ruled that the "registration" of a domain name subject to the tests under ACPA was only the initial registration and not a subsequent re-registration by someone as successor in title to the first registrant. The usual rule under the Policy, however, is that a registration in a new, independent person's name, albeit a re-registration of an existing domain name, is treated as a separate act and to be assessed as such. See WIPO Overview 3.0, section 3.2 (in the context of the third limb of the Policy). The Panel notes that the circumstances in the Hise case, although not the basis of the Ninth Circuit's ruling, are consistent with the approach taken by Panels under the Policy. The original registration of the domain name in issue was by a Mr. Hise. The re-registration was as a result of his transfer of the domain name to a corporation controlled by him and his brother. That is arguably consistent with the type of transfer which would be treated as not involving a change in the underlying registrant under the Policy. The Panel also notes that the Hise court recognised the Third Circuit Court of Appeals had reached a different conclusion in Schmidheiny v. Weber, 319 F.3d 581 (3rd Cir. 2003). The Schmidheiny case involved different legislation, but the Ninth Circuit considered its decision was based on a wrong premise. In these circumstances, the Panel considers it is appropriate not to depart from the usual rule under the Policy as it has been interpreted by many Panels. The Policy operates in an international sphere between parties often in very different jurisdictions which have, or may have, different approaches or concerns. Accordingly, the registration of the disputed domain name by the Respondent will be treated as a new registration. Therefore, for the purposes of the Policy, the Respondent is treated as having registered the disputed domain name after the Complainant came into existence." -- If only for completeness, this may be relevant to any further revisions. Brian ________________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of George Kirikos <icann@leap.com> Sent: Tuesday, October 16, 2018 6:54 PM To: gnso-rpm-wg; Ariel Liang 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 http://www.leap.com/ On Tue, Oct 16, 2018 at 12:43 PM, George Kirikos <icann@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/2011/09/22/08-56110.pdf

(also listed on the WIPO Website at: http://www.wipo.int/export/sites/www/amc/en/docs/d20060636circuitdecision.pd... linked from http://www.wipo.int/amc/en/domains/challenged/ )

“”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 gopets.com 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 gopets.com was not a registration within the meaning of § 1125(d)(1). Because Edward Hise registered gopets.com in 1999, long before GoPets Ltd. registered its service mark, Digital Overture’s re-registration and continued ownership of gopets.com 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 http://www.leap.com/

On Tue, Oct 16, 2018 at 12:13 PM, BECKHAM, Brian <brian.beckham@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@icann.org> on behalf of George Kirikos <icann@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 http://www.leap.com/

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.

George, To set the record straight, any ambiguity (which as stated below occurred in a mere handful of the now almost 42,000 cases) has been put to rest, see e.g., the relevant section in the WIPO Overview: "NB, a number of cases in 2009 and 2010 (including Mummygold, Octogen, Parvi, and Jappy) explored application of registrant representations in UDRP paragraph 2 in finding so-called “retroactive” bad faith registration; while this particular concept has not been followed in subsequent cases, UDRP paragraph 2 may be relevant on its own terms." In fact, the ICA wrote about the settling of this issue over a year ago, applauding WIPO for its clarification: https://www.internetcommerce.org/udrp-better-late-than-never-ica-applauds-wi... Regards, ________________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of George Kirikos <icann@leap.com> Sent: Tuesday, October 16, 2018 7:12 PM To: gnso-rpm-wg Subject: Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12 Hi Brian, Since the court in Gopets was fully aware of the older (2003) Schmidheiny case, there's no need for me to revise my proposal. Furthermore, there was a complicating issue, as to what was the correct date because the domain name had been created *prior* to the ACPA. As for whether or not there's "ambiguity", it's clear that there has been an ambiguity, otherwise the entire "renewal is a re-registration" debacle wouldn't have transpired. My proposal eliminates the ambiguity, and aligns the clear definition with that in Gopets. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Tue, Oct 16, 2018 at 12:56 PM, BECKHAM, Brian <brian.beckham@wipo.int> wrote:

George,

I believe there is a conflicting case in the Third Circuit (Schmidheiny, 319 F.3d at 583), and again, there is no ambiguity under the UDRP.

See inter alia the discussion at (http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2018-0738):

"Although the disputed domain name was first registered in 1995, it was not registered by the Respondent then. As noted above, the Respondent first acquired rights to the disputed domain name in February 2017. That does not appear to have been as part of the continuation of an existing business such as a transfer between related parties in conjunction with an internal re-organization. Rather, it appears to have been an arm's length transaction between independent parties. In any event, the Respondent has not claimed it was anything other than an arm's length transaction.

In support of its position, the Respondent cites a decision of the Ninth Circuit Court of Appeals in the United States, GoPets Ltd. v. Hise, et al., 657 F.3d 1024 (9th Cir. 2011). That was a decision under the Anticybersquatting Consumer Protection Act ("ACPA"). In Hise, the Ninth Circuit ruled that the "registration" of a domain name subject to the tests under ACPA was only the initial registration and not a subsequent re-registration by someone as successor in title to the first registrant.

The usual rule under the Policy, however, is that a registration in a new, independent person's name, albeit a re-registration of an existing domain name, is treated as a separate act and to be assessed as such. See WIPO Overview 3.0, section 3.2 (in the context of the third limb of the Policy).

The Panel notes that the circumstances in the Hise case, although not the basis of the Ninth Circuit's ruling, are consistent with the approach taken by Panels under the Policy. The original registration of the domain name in issue was by a Mr. Hise. The re-registration was as a result of his transfer of the domain name to a corporation controlled by him and his brother. That is arguably consistent with the type of transfer which would be treated as not involving a change in the underlying registrant under the Policy.

The Panel also notes that the Hise court recognised the Third Circuit Court of Appeals had reached a different conclusion in Schmidheiny v. Weber, 319 F.3d 581 (3rd Cir. 2003). The Schmidheiny case involved different legislation, but the Ninth Circuit considered its decision was based on a wrong premise.

In these circumstances, the Panel considers it is appropriate not to depart from the usual rule under the Policy as it has been interpreted by many Panels. The Policy operates in an international sphere between parties often in very different jurisdictions which have, or may have, different approaches or concerns.

Accordingly, the registration of the disputed domain name by the Respondent will be treated as a new registration. Therefore, for the purposes of the Policy, the Respondent is treated as having registered the disputed domain name after the Complainant came into existence."

--

If only for completeness, this may be relevant to any further revisions.

Brian

________________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of George Kirikos <icann@leap.com> Sent: Tuesday, October 16, 2018 6:54 PM To: gnso-rpm-wg; Ariel Liang 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 http://www.leap.com/

On Tue, Oct 16, 2018 at 12:43 PM, George Kirikos <icann@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/2011/09/22/08-56110.pdf

(also listed on the WIPO Website at: http://www.wipo.int/export/sites/www/amc/en/docs/d20060636circuitdecision.pd... linked from http://www.wipo.int/amc/en/domains/challenged/ )

“”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 gopets.com 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 gopets.com was not a registration within the meaning of § 1125(d)(1). Because Edward Hise registered gopets.com in 1999, long before GoPets Ltd. registered its service mark, Digital Overture’s re-registration and continued ownership of gopets.com 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 http://www.leap.com/

On Tue, Oct 16, 2018 at 12:13 PM, BECKHAM, Brian <brian.beckham@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@icann.org> on behalf of George Kirikos <icann@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 http://www.leap.com/

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.

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

However this discussion winds up in the WG and whether or not this proposal proceeds to public comment, I share Brian's view on this issue. Gml -----Original Message----- From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of George Kirikos Sent: Tuesday, October 16, 2018 1:32 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12 Brian: There's still an "ambiguity", as "registered" has never been explicity defined in the policy (it's been interpreted by panels differently, as you yourself admit). I'm proposing resolving that ambiguity in the same was as the Gopets court case, once and for all. I can understand why pro-TM maximalists want to resolve the ambiguity in a different manner, consistent with the way pro-complainant panelists have been resolving it for nearly 20 years, because they want TM rights to be superior to domain name rights. But, as I state in the proposal, that interpretation by UDRP/URS panelists has been incorrect. It's time to resolve it correctly, so that a "property owner may sell all of the rights he holds in property" (inclusive of priority date, i.e. creation date). Tell me, Brian. When a TM is assigned to a new owner, what's the "priority" date of that TM? Does it reset to the date that the new owner acquired the TM?*** Why should domain name transfers/assignment be any different?? i.e. why do you disagree with the Gopets ruling? Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ P.S. ***Answer is obvious, namely "No", the date doesn't reset. On Tue, Oct 16, 2018 at 1:22 PM, BECKHAM, Brian <brian.beckham@wipo.int> wrote:

George,

To set the record straight, any ambiguity (which as stated below occurred in a mere handful of the now almost 42,000 cases) has been put to rest, see e.g., the relevant section in the WIPO Overview:

"NB, a number of cases in 2009 and 2010 (including Mummygold, Octogen, Parvi, and Jappy) explored application of registrant representations in UDRP paragraph 2 in finding so-called “retroactive” bad faith registration; while this particular concept has not been followed in subsequent cases, UDRP paragraph 2 may be relevant on its own terms."

In fact, the ICA wrote about the settling of this issue over a year ago, applauding WIPO for its clarification:

https://www.internetcommerce.org/udrp-better-late-than-never-ica-appla uds-wipo-for-removing-misguided-retroactive-bad-faith/

Regards,

________________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of George Kirikos <icann@leap.com> Sent: Tuesday, October 16, 2018 7:12 PM To: gnso-rpm-wg Subject: Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12

Hi Brian,

Since the court in Gopets was fully aware of the older (2003) Schmidheiny case, there's no need for me to revise my proposal. Furthermore, there was a complicating issue, as to what was the correct date because the domain name had been created *prior* to the ACPA.

As for whether or not there's "ambiguity", it's clear that there has been an ambiguity, otherwise the entire "renewal is a re-registration" debacle wouldn't have transpired. My proposal eliminates the ambiguity, and aligns the clear definition with that in Gopets.

Sincerely,

George Kirikos 416-588-0269 http://www.leap.com/

On Tue, Oct 16, 2018 at 12:56 PM, BECKHAM, Brian <brian.beckham@wipo.int> wrote:

...

George,

I believe there is a conflicting case in the Third Circuit (Schmidheiny, 319 F.3d at 583), and again, there is no ambiguity under the UDRP.

See inter alia the discussion at (http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2018-0738):

"Although the disputed domain name was first registered in 1995, it was not registered by the Respondent then. As noted above, the Respondent first acquired rights to the disputed domain name in February 2017. That does not appear to have been as part of the continuation of an existing business such as a transfer between related parties in conjunction with an internal re-organization. Rather, it appears to have been an arm's length transaction between independent parties. In any event, the Respondent has not claimed it was anything other than an arm's length transaction.

In support of its position, the Respondent cites a decision of the Ninth Circuit Court of Appeals in the United States, GoPets Ltd. v. Hise, et al., 657 F.3d 1024 (9th Cir. 2011). That was a decision under the Anticybersquatting Consumer Protection Act ("ACPA"). In Hise, the Ninth Circuit ruled that the "registration" of a domain name subject to the tests under ACPA was only the initial registration and not a subsequent re-registration by someone as successor in title to the first registrant.

The usual rule under the Policy, however, is that a registration in a new, independent person's name, albeit a re-registration of an existing domain name, is treated as a separate act and to be assessed as such. See WIPO Overview 3.0, section 3.2 (in the context of the third limb of the Policy).

The Panel notes that the circumstances in the Hise case, although not the basis of the Ninth Circuit's ruling, are consistent with the approach taken by Panels under the Policy. The original registration of the domain name in issue was by a Mr. Hise. The re-registration was as a result of his transfer of the domain name to a corporation controlled by him and his brother. That is arguably consistent with the type of transfer which would be treated as not involving a change in the underlying registrant under the Policy.

The Panel also notes that the Hise court recognised the Third Circuit Court of Appeals had reached a different conclusion in Schmidheiny v. Weber, 319 F.3d 581 (3rd Cir. 2003). The Schmidheiny case involved different legislation, but the Ninth Circuit considered its decision was based on a wrong premise.

In these circumstances, the Panel considers it is appropriate not to depart from the usual rule under the Policy as it has been interpreted by many Panels. The Policy operates in an international sphere between parties often in very different jurisdictions which have, or may have, different approaches or concerns.

Accordingly, the registration of the disputed domain name by the Respondent will be treated as a new registration. Therefore, for the purposes of the Policy, the Respondent is treated as having registered the disputed domain name after the Complainant came into existence."

--

If only for completeness, this may be relevant to any further revisions.

Brian

________________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of George Kirikos <icann@leap.com> Sent: Tuesday, October 16, 2018 6:54 PM To: gnso-rpm-wg; Ariel Liang 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 http://www.leap.com/

On Tue, Oct 16, 2018 at 12:43 PM, George Kirikos <icann@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/2011/09/22/08-56110.p df

(also listed on the WIPO Website at: http://www.wipo.int/export/sites/www/amc/en/docs/d20060636circuitdec ision.pdf linked from http://www.wipo.int/amc/en/domains/challenged/ )

“”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 gopets.com 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 gopets.com was not a registration within the meaning of § 1125(d)(1). Because Edward Hise registered gopets.com in 1999, long before GoPets Ltd. registered its service mark, Digital Overture’s re-registration and continued ownership of gopets.com 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 http://www.leap.com/

On Tue, Oct 16, 2018 at 12:13 PM, BECKHAM, Brian <brian.beckham@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@icann.org> on behalf of George Kirikos <icann@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 http://www.leap.com/

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.

---

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

Brian, While the ACPA is sometimes presented as not being "conjunctive" (i.e. AND vs OR for "registration and use in bad faith"), be aware that the actual text of the ACPA explictly refers to "a mark that is distinctive ****at the time of registration of the domain name****" and so on, i.e. https://www.law.cornell.edu/uscode/text/15/1125 which makes it essentially the *same* as the conjunctive "AND". i.e. it's **not** enough to just show bad faith use under the ACPA. Indeed, that's in the set of facts in the Gopets case (domain was created in 1999, before the Gopets mark in 2004). That was italicized on page 10 of the version of the decision on WIPO's site: http://www.wipo.int/export/sites/www/amc/en/docs/d20060636circuitdecision.pd... "at the time of registration" (bottom of page 10, or page number 18016 if you're looking at the top right). Furthermore, you seem to be arguing that the UDRP should provide TM holders with *better* results than the courts would do, without reference to national laws. That's entirely incorrect (others seem to make that same mistake, e.g. in the other thread between Phil/PaulK that I've not yet responded to, but will at some point). Some want to promote the UDRP/URS as giving *better* rights/outcomes than the national laws. Briefly, one need only look at the historical justification for the UDRP. https://www.icann.org/resources/pages/schedule-2012-02-25-en https://www.icann.org/resources/unthemed-pages/white-paper-2012-02-25-en "The proposals were designed to provide trademark holders with the ****same rights**** they have in the physical world, to ensure transparency, and to guarantee a dispute resolution mechanism with resort to a court system. " (emphasis added) Let me emphasize that, "same rights". Your interpretation of rule 15(a) differs from my own, given that the term "applicable law" is mentioned in the certification of the complaint and the response, and it seems there needs to be that connection to national laws, otherwise the UDRP would lose its way (as it has in the past) if it instead tries to disconnect from those national laws. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Tue, Oct 16, 2018 at 1:42 PM, BECKHAM, Brian <brian.beckham@wipo.int> wrote:

George,

A core reason it is different can be summarized in this excerpt from the WIPO Overview:

"4.15 To what extent is national law relevant to panel assessment of the second and third UDRP elements (rights or legitimate interests, and bad faith)?

UDRP paragraph 15(a) provides that a panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the UDRP, the UDRP Rules, and any rules and principles of law that it deems applicable.

Panels have broadly noted that insofar as the UDRP system is designed to operate in a global context, while rooted in general trademark law principles, in its own terms UDRP jurisprudence generally would not require resort to particular national laws."

That is, the UDRP operates internationally (and finds root in the Paris Convention prohibition on unfair competition).

The GoPets case is not an apples-to-apples comparison in that the ACPA requires a showing that a registrant "registers, traffics in or uses a domain name" unlike the UDRP which frames the bad faith test in the conjunctive.

Kind regards,

Brian ________________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of George Kirikos <icann@leap.com> Sent: Tuesday, October 16, 2018 7:31 PM To: gnso-rpm-wg Subject: Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12

Brian:

There's still an "ambiguity", as "registered" has never been explicity defined in the policy (it's been interpreted by panels differently, as you yourself admit). I'm proposing resolving that ambiguity in the same was as the Gopets court case, once and for all.

I can understand why pro-TM maximalists want to resolve the ambiguity in a different manner, consistent with the way pro-complainant panelists have been resolving it for nearly 20 years, because they want TM rights to be superior to domain name rights. But, as I state in the proposal, that interpretation by UDRP/URS panelists has been incorrect. It's time to resolve it correctly, so that a "property owner may sell all of the rights he holds in property" (inclusive of priority date, i.e. creation date).

Tell me, Brian. When a TM is assigned to a new owner, what's the "priority" date of that TM? Does it reset to the date that the new owner acquired the TM?*** Why should domain name transfers/assignment be any different?? i.e. why do you disagree with the Gopets ruling?

Sincerely,

George Kirikos 416-588-0269 http://www.leap.com/

P.S. ***Answer is obvious, namely "No", the date doesn't reset.

On Tue, Oct 16, 2018 at 1:22 PM, BECKHAM, Brian <brian.beckham@wipo.int> wrote:

...

George,

To set the record straight, any ambiguity (which as stated below occurred in a mere handful of the now almost 42,000 cases) has been put to rest, see e.g., the relevant section in the WIPO Overview:

"NB, a number of cases in 2009 and 2010 (including Mummygold, Octogen, Parvi, and Jappy) explored application of registrant representations in UDRP paragraph 2 in finding so-called “retroactive” bad faith registration; while this particular concept has not been followed in subsequent cases, UDRP paragraph 2 may be relevant on its own terms."

In fact, the ICA wrote about the settling of this issue over a year ago, applauding WIPO for its clarification:

https://www.internetcommerce.org/udrp-better-late-than-never-ica-applauds-wi...

Regards,

________________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of George Kirikos <icann@leap.com> Sent: Tuesday, October 16, 2018 7:12 PM To: gnso-rpm-wg Subject: Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12

Hi Brian,

Since the court in Gopets was fully aware of the older (2003) Schmidheiny case, there's no need for me to revise my proposal. Furthermore, there was a complicating issue, as to what was the correct date because the domain name had been created *prior* to the ACPA.

As for whether or not there's "ambiguity", it's clear that there has been an ambiguity, otherwise the entire "renewal is a re-registration" debacle wouldn't have transpired. My proposal eliminates the ambiguity, and aligns the clear definition with that in Gopets.

Sincerely,

George Kirikos 416-588-0269 http://www.leap.com/

On Tue, Oct 16, 2018 at 12:56 PM, BECKHAM, Brian <brian.beckham@wipo.int> wrote:

...

George,

I believe there is a conflicting case in the Third Circuit (Schmidheiny, 319 F.3d at 583), and again, there is no ambiguity under the UDRP.

See inter alia the discussion at (http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2018-0738):

"Although the disputed domain name was first registered in 1995, it was not registered by the Respondent then. As noted above, the Respondent first acquired rights to the disputed domain name in February 2017. That does not appear to have been as part of the continuation of an existing business such as a transfer between related parties in conjunction with an internal re-organization. Rather, it appears to have been an arm's length transaction between independent parties. In any event, the Respondent has not claimed it was anything other than an arm's length transaction.

In support of its position, the Respondent cites a decision of the Ninth Circuit Court of Appeals in the United States, GoPets Ltd. v. Hise, et al., 657 F.3d 1024 (9th Cir. 2011). That was a decision under the Anticybersquatting Consumer Protection Act ("ACPA"). In Hise, the Ninth Circuit ruled that the "registration" of a domain name subject to the tests under ACPA was only the initial registration and not a subsequent re-registration by someone as successor in title to the first registrant.

The usual rule under the Policy, however, is that a registration in a new, independent person's name, albeit a re-registration of an existing domain name, is treated as a separate act and to be assessed as such. See WIPO Overview 3.0, section 3.2 (in the context of the third limb of the Policy).

The Panel notes that the circumstances in the Hise case, although not the basis of the Ninth Circuit's ruling, are consistent with the approach taken by Panels under the Policy. The original registration of the domain name in issue was by a Mr. Hise. The re-registration was as a result of his transfer of the domain name to a corporation controlled by him and his brother. That is arguably consistent with the type of transfer which would be treated as not involving a change in the underlying registrant under the Policy.

The Panel also notes that the Hise court recognised the Third Circuit Court of Appeals had reached a different conclusion in Schmidheiny v. Weber, 319 F.3d 581 (3rd Cir. 2003). The Schmidheiny case involved different legislation, but the Ninth Circuit considered its decision was based on a wrong premise.

In these circumstances, the Panel considers it is appropriate not to depart from the usual rule under the Policy as it has been interpreted by many Panels. The Policy operates in an international sphere between parties often in very different jurisdictions which have, or may have, different approaches or concerns.

Accordingly, the registration of the disputed domain name by the Respondent will be treated as a new registration. Therefore, for the purposes of the Policy, the Respondent is treated as having registered the disputed domain name after the Complainant came into existence."

--

If only for completeness, this may be relevant to any further revisions.

Brian

________________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of George Kirikos <icann@leap.com> Sent: Tuesday, October 16, 2018 6:54 PM To: gnso-rpm-wg; Ariel Liang 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 http://www.leap.com/

On Tue, Oct 16, 2018 at 12:43 PM, George Kirikos <icann@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/2011/09/22/08-56110.pdf

(also listed on the WIPO Website at: http://www.wipo.int/export/sites/www/amc/en/docs/d20060636circuitdecision.pd... linked from http://www.wipo.int/amc/en/domains/challenged/ )

“”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 gopets.com 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 gopets.com was not a registration within the meaning of § 1125(d)(1). Because Edward Hise registered gopets.com in 1999, long before GoPets Ltd. registered its service mark, Digital Overture’s re-registration and continued ownership of gopets.com 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 http://www.leap.com/

On Tue, Oct 16, 2018 at 12:13 PM, BECKHAM, Brian <brian.beckham@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@icann.org> on behalf of George Kirikos <icann@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 http://www.leap.com/

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.

---

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

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). A. “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. B. “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. C. “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. 2. 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. 3. 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. 4. 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. 5. 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@VLPLawGroup.com -----Original Message----- From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of George Kirikos Sent: Tuesday, October 16, 2018 12:55 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org>; Ariel Liang <ariel.liang@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,zxb... On Tue, Oct 16, 2018 at 12:43 PM, George Kirikos <icann@leap.com<mailto:icann@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/2011/09/22/08-56110.pdf

(also listed on the WIPO Website at: https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.wipo.int%2fexpo rt%2fsites%2fwww%2famc%2fen%2fdocs%2fd20060636circuitdecision.pdf&c=E, 1,Zv_K5R1ftgPNTQiVMR_bC87QMECSVRKnYtZUp7s19bYEZH7pyDxPmrrOvZN6ZlDS9FKm TiTxL85qJLS83LA35hYYYZF8-y0WVrn51dOwmgcDmr41b_c,&typo=1 linked from https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.wipo.int%2famc% 2fen%2fdomains%2fchallenged%2f&c=E,1,gY1N97-hyy-P1Z5o-hqKcm3Ev6O-wEnMX K3X-J_odUWYxGSzItAGVRQrpZrjfHSUXXwaVvftXV_forYiX6DTYDuIAL5QM5UbZGRZmkF 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_BufTEzBgmyTqVb 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,DF99RAI... 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_ENPhLeH4_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,1,7pUeaPO... 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%2f&c=E ,1,6SO43nms3azu6w2FDDcjjOwLnUDLMqH8Z2fNCiOWXeSHJf1IOdbm13c7jIhwFaSCI8Y y9ymQjmKdiDXPO4BXpuLrxUkJTeqAWXWt0JHnDcGA_zkbTg,,&typo=1

On Tue, Oct 16, 2018 at 12:13 PM, BECKHAM, Brian <brian.beckham@wipo.int<mailto:brian.beckham@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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of George Kirikos <icann@leap.com<mailto:icann@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,odex5M2U4U5zyFqLlSBUNNjAReeUc74WjuV6TUe9H1I6Hc4cYo2XGYHt5kUGAMCks 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.

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@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=domain

Creation Date: 1995-08-14T04:00:00Z

for Math.com it is at: https://reports.internic.net/cgi/whois?whois_nic=math.com&type=domain

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@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@VLPLawGroup.com

-----Original Message----- From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of George Kirikos Sent: Tuesday, October 16, 2018 12:55 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org>; Ariel Liang < ariel.liang@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,zxb...

...

On Tue, Oct 16, 2018 at 12:43 PM, George Kirikos <icann@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/2011/09/22/08-56110.pdf

(also listed on the WIPO Website at: https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.wipo.int%2fexpo rt%2fsites%2fwww%2famc%2fen%2fdocs%2fd20060636circuitdecision.pdf&c=E, 1,Zv_K5R1ftgPNTQiVMR_bC87QMECSVRKnYtZUp7s19bYEZH7pyDxPmrrOvZN6ZlDS9FKm TiTxL85qJLS83LA35hYYYZF8-y0WVrn51dOwmgcDmr41b_c,&typo=1 linked from https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.wipo.int%2famc% 2fen%2fdomains%2fchallenged%2f&c=E,1,gY1N97-hyy-P1Z5o-hqKcm3Ev6O-wEnMX K3X-J_odUWYxGSzItAGVRQrpZrjfHSUXXwaVvftXV_forYiX6DTYDuIAL5QM5UbZGRZmkF 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_BufTEzBgmyTqVb 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,DF99RAI...

...

...

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_ENPhLeH4_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,1,7pUeaPO...

...

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%2f&c=E ,1,6SO43nms3azu6w2FDDcjjOwLnUDLMqH8Z2fNCiOWXeSHJf1IOdbm13c7jIhwFaSCI8Y y9ymQjmKdiDXPO4BXpuLrxUkJTeqAWXWt0JHnDcGA_zkbTg,,&typo=1

On Tue, Oct 16, 2018 at 12:13 PM, BECKHAM, Brian < brian.beckham@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@icann.org> on behalf of George Kirikos <icann@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,odex5M2U4U5zyFqLlSBUNNjAReeUc74WjuV6TUe9H1I6Hc4cYo2XGYHt5kUGAMCks 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@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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@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-elegalsupply-c...

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@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@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=domain

Creation Date: 1995-08-14T04:00:00Z

for Math.com it is at: https://reports.internic.net/cgi/whois?whois_nic=math.com&type=domain

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@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@VLPLawGroup.com

-----Original Message----- From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of George Kirikos Sent: Tuesday, October 16, 2018 12:55 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org>; Ariel Liang <ariel.liang@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,zxb...

On Tue, Oct 16, 2018 at 12:43 PM, George Kirikos <icann@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/2011/09/22/08-56110.pdf

(also listed on the WIPO Website at: https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.wipo.int%2fexpo rt%2fsites%2fwww%2famc%2fen%2fdocs%2fd20060636circuitdecision.pdf&c=E, 1,Zv_K5R1ftgPNTQiVMR_bC87QMECSVRKnYtZUp7s19bYEZH7pyDxPmrrOvZN6ZlDS9FKm TiTxL85qJLS83LA35hYYYZF8-y0WVrn51dOwmgcDmr41b_c,&typo=1 linked from https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.wipo.int%2famc% 2fen%2fdomains%2fchallenged%2f&c=E,1,gY1N97-hyy-P1Z5o-hqKcm3Ev6O-wEnMX K3X-J_odUWYxGSzItAGVRQrpZrjfHSUXXwaVvftXV_forYiX6DTYDuIAL5QM5UbZGRZmkF 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_BufTEzBgmyTqVb 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,DF99RAI... 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_ENPhLeH4_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,1,7pUeaPO... 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%2f&c=E ,1,6SO43nms3azu6w2FDDcjjOwLnUDLMqH8Z2fNCiOWXeSHJf1IOdbm13c7jIhwFaSCI8Y y9ymQjmKdiDXPO4BXpuLrxUkJTeqAWXWt0JHnDcGA_zkbTg,,&typo=1

On Tue, Oct 16, 2018 at 12:13 PM, BECKHAM, Brian <brian.beckham@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@icann.org> on behalf of George Kirikos <icann@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,odex5M2U4U5zyFqLlSBUNNjAReeUc74WjuV6TUe9H1I6Hc4cYo2XGYHt5kUGAMCks 8t15KdME-B164MaOXo9-Gk-I72usQuOYvPYq8W60a4NlX9aQo-o&typo=1

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George: My reply below to your responses earlier this week in order (delayed due to travel): Your responses were unpersuasive and leave my arguments against proposal 12 unrefuted for the following reasons. 1A: You can’t walk away from that argument by simply saying "we all understand that affects all disputes". While you admit that registrant data in the Whois database, already unverified and unvetted, and further masked by GDPR, including the identity of malicious domain holders, your proposal compounds the inherent challenge to rightsholders by adding a race against time to identify the true registrant under an artificial deadline, even when there is no actionable bad faith use upon which they are alerted to act. In fact proposal 12 encourages sign-up and wait by malicious domain owners - until the claims bar date arrives, then the registrant springs to bad faith use with impunity. It also purports to allow "tacking" toward your bar date based purely on the passage of time, so that a registrant operating a legitimate non infringing site as Dr Jekyll paves the way for a successor in interest to whom he sells after the bar date, Mr. Hyde, to convert the site into a hotbed of phishing and infringement again, with impunity, solely because time has passed since the original purchase date. That is a "gotcha" without reason or basis which should not be foisted upon consumers, let alone rightsholders. 1B: If you meant that creation date, why doesn't the proposal expressly state "Whois Creation Date". Without context the ambiguity remains and the proposal still is ambiguous in the remaining terms as noted. 1.C. You make my point. Even if a rightsholder pays the additional cost of investigative services and domain tools there is no clear record available anywhere on the Internet that definitively provides a publicly available list of successive owners and transfer dates like the grantor/grantee index at a local county recorder's office for terrestrial real estate. Name it George, you can't. Under your response to 1C you also wrote, "Folks who respond can document things accordingly." Do you really believe with a straight face that complainant's can rely upon respondents to produce and submit a list of prior registrants accurately representing changes in ownership and uses made of their disputed domain? Show me any case where that has happened to date. Under GDPR, how would a respondent have better access than complainant to registrant data other than perhaps their immediate predecessor in interest. 2. Wrong. You wrote: "Use is an entirely separate part of the 3rd prong of bad faith." How is it "entirely separate" when the text of the 3rd prong, as you referred to it, separates "registered" from "used" by only three words "and is being" as in: "(iii) your domain name has been registered and is being used in bad faith" UDRP Policy, Paragraph 4(a)(iii) . Note the conjunctive AND as referenced in my prior email. As noted I object to this proposal to be submitted for public comment as it has no accounting for the reality of changes in use. Registration AND use, the conjunctive basis for bad faith, which you intentionally bifurcated in your recitation of prong three in your response, because your limitation period proposal bars claims against a domain solely on time passage after registration, no matter what bad faith use ultimately follows. The proposal's purpose is to escalate the direct costs of enforcing claims through added investigation, uncertain jurisdiction, delay and abuse to rightsholders calculating whether they can justify litigating a claim in court without the benefit of the UDRP or URS. For most small family businesses that cost is not just scary, that is defeat. But unlike defeated cybersquatting respondents, they cannot buy another $10 domain, put up another counterfeit site the next day and pass themselves off as another business to phish from. The rightsholder's tarnished brand or phished customer base may mean the business whose reputation took 20 years to build is over. 3. Your response suddenly defers and says "Whether or not domain names are "intellectual property" doesn't affect the proposal", yet both your rationale and evidence in support of your proposal rely almost entirely upon the premise of domains as intellectual property. In you rationale you decry domain names as being treated as "second-class citizens that are somehow inferior in standing to TMs, copyrights and patents" and as evidence you suggest tacking of priority among successive owners should be permitted as it is with TM, copyright and patent - yet your proposal would do so without reference to use - which TM would require. As for copyright and patent, I have seen no evidence of a domain registered as a creative work or an invention. And as you note, a copyright is not a trademark, but that does not support domain names as intellectual property or your proposal. 4. This is true without your proposal, so there is no reason to add it, but see 5. 5. The premise of your comment is without support and is not true. No George, as a lawyer I will not accept your mischaracterization of my criticism of your proposal as making me "critical of courts" when nothing could be further from the truth. And I will not be baited into criticizing any of the jurisdictions you suggest. On the contrary, far from being critical, for those who can afford them I consider the options available in courts to aggressively enforce trademark rights against phishing or infringing domain names extremely useful, such as in rem actions, electronic discovery, seizure of financial assets, freezing of bank accounts, recovery of monetary damages, fees and costs, etc. But my respect for these finely crafted court benefits do not change my objection to your proposal, because it would force underrepresented, unsuspecting small and family businesses (smaller than your Microsoft example anyway) from small communities, to travel to the ends of the earth to litigate after they have been preyed upon by speculating malicious domain abusers, to hire counsel in a language they do not speak, follow rules, customs or conventions affecting their rights they had no control over and never agreed to, perhaps without progressive laws recognizing domain name dispute claims similar to ACPA, and if they are able to obtain judgement, spending still more money and time to locate and enforce it against the distant defendants to force them to give up a domain or perhaps recover damages. Forcing complainants to litigate in remote jurisdictions, may also open other stakeholders such as registries and registrars to defend liability if those jurisdictions do not recognize the same safe harbors, exclusions and limitations of liability for contributory infringement or other forms of contributory liability established under progressive legislation such as ACPA. It could also promote forum shopping in remote "complainant friendly" courts beyond the reach of ICANN service provider contracts or WG review that may provide less assurance of appellate review and oversight than the summary proceedings offered under the UDRP and URS. So while it is true that litigation could offer complainants who could afford it court ordered benefits not present in ADR such as those set forth above, it also could allow for impleading registries and registrars as third party defendants. All of these court benefits present costs which malicious domain owners do not face under the whack-a-mole lottery of the UDRP/URS. And to more clearly address your mischaracterization and demonstrate my respect for the courts, George let's assume for the moment under your proposals to destroy UDRP/URS, that every one of the distant courts in which a family business would then be forced to litigate a domain dispute would be stellar, similar to a claimant's home jurisdiction in language, custom, convention, local rules, available experienced counsel and local laws recognizing domain claims and rights like ACPA. Now show me any of those courts that could guarantee resolution of a domain dispute within 90 days for $1500 (like the UDRP) or $500 (like the URS). Putting domain dispute resolution beyond the reach of small and family businesses is sufficient reason to dismiss your proposal as unjust and unacceptable. Without the UDRP/URS options, open-ended litigation in remote locations is as scary to a complainant, if not more, as the fear you speculate a UDRP complaint brings to a registrant. The difference is the phishing or infringing domain cost the defendant less than $10 but its abuse may have cost the rightsholder a lifetime to earn its reputation, mitigate a data breach of its customers from phishing, lost business, etc. The proposal presents issues dangerous to the integrity and stability of the Internet and should not be supported for public comment. 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@VLPLawGroup.com -----Original Message----- From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of George Kirikos Sent: Tuesday, October 16, 2018 3:57 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12 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=domain Creation Date: 1995-08-14T04:00:00Z for https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fMath.com&c=E,1,ddhduZ8c-... it is at: https://reports.internic.net/cgi/whois?whois_nic=math.com&type=domain 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 https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fVoyuer.com&c=E,1,JLkZ8FY..., 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. https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fgoogle-registration-2018... 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 https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.leap.com%2f&c=E,1,xQa... On Tue, Oct 16, 2018 at 2:58 PM, Scott Austin <SAustin@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 https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fgeneric.com&c=E,1, c32VpVk7DSywSqKQ60cUB6GPCa8xEtPy33vZDIPl12619YBH-Cb-weg6ELtjirBDYpsk2g OdL872SGMsXxdtnAOGxf4wmbRurmRMWVOh59OUeS4bFTE,&typo=1 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@VLPLawGroup.com

-----Original Message----- From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of George Kirikos Sent: Tuesday, October 16, 2018 12:55 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org>; Ariel Liang <ariel.liang@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,zxbn2tiatvkzhTWqLCBws9UpWsXQfALYuHFBkumURXOj2rNgWiHDb5SMRHapRED2kjZ osRrEKzbsY9tcDWr5CcimUjT0IDk9PVjMk-qYCiPPPXI,&typo=1

On Tue, Oct 16, 2018 at 12:43 PM, George Kirikos <icann@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/2011/09/22/08-56110.pd f

(also listed on the WIPO Website at: https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.wipo.int%2fexp o rt%2fsites%2fwww%2famc%2fen%2fdocs%2fd20060636circuitdecision.pdf&c=E , 1,Zv_K5R1ftgPNTQiVMR_bC87QMECSVRKnYtZUp7s19bYEZH7pyDxPmrrOvZN6ZlDS9FK m TiTxL85qJLS83LA35hYYYZF8-y0WVrn51dOwmgcDmr41b_c,&typo=1 linked from https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.wipo.int%2famc % 2fen%2fdomains%2fchallenged%2f&c=E,1,gY1N97-hyy-P1Z5o-hqKcm3Ev6O-wEnM X K3X-J_odUWYxGSzItAGVRQrpZrjfHSUXXwaVvftXV_forYiX6DTYDuIAL5QM5UbZGRZmk F 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_BufTEzBgmyTqV b 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_-PzuqFMbtBZxMird3X0lJuuBFBWtKjN6IZR7cxhqozpRUuNmZ6EoYy udU-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_ENPhLeH4_zP IrZuAoMsg9-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-HIr8XKEH7r Rwb_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%2f&c= E ,1,6SO43nms3azu6w2FDDcjjOwLnUDLMqH8Z2fNCiOWXeSHJf1IOdbm13c7jIhwFaSCI8 Y y9ymQjmKdiDXPO4BXpuLrxUkJTeqAWXWt0JHnDcGA_zkbTg,,&typo=1

On Tue, Oct 16, 2018 at 12:13 PM, BECKHAM, Brian <brian.beckham@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@icann.org> on behalf of George Kirikos <icann@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,odex5M2U4U5zyFqLlSBUNNjAReeUc74WjuV6TUe9H1I6Hc4cYo2XGYHt5kUGAMCk s 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@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.

Hi Gerald, But the decision in GoPets went further than just a "transfer within the family", or inheritance. The court, as I quoted, looked at the larger question, and decided: *****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.**** That's *any* new owner. Has WIPO been observing that standard? Of course not. My proposal brings things into perfect alignment with the above, namely that when someone assigns the rights to a domain name to someone else (lawful transfer), the new owner gets *all* the rights that come along with the domain name, including the priority date (i.e. creation date). Just like what happens when copyrights, patents, or other intellectual property (or "intangible assets", for those who don't agree that domains are intellectual property, or "property" for that matter). So, let's be specific: A registers Example.com in 2001. B registers a TM for "Example" in 2005, with first use in commerce in 2005. B would not win a UDRP against A, since they couldn't win the "registered in bad faith prong." A transfers the domain name to C, in 2017. B files a UDRP against C in 2018. Under my proposal, like the precedent established in Gopets, B can *still* not prevail in a UDRP, because that 2001 priority date is also fully transferred to C. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Tue, Oct 16, 2018 at 1:10 PM, <gmlevine@researchtheworld.com> wrote:

George, The language you quote from GoPets must be read in the context of the facts in the case. The underlying UDRP also found in Hise's favor. The transfer was within the family--a continuation of the original registration. A fairly recent UDRP confirmed that transfer as a matter of law (inheritance in this case) did not trigger a new start date for measuring bad faith registration, Kitchens To Go, LLC v. KTG.COM, Whoisguard Protected / HUKU LLC, D2017-2241 (WIPO February 6, 2018) (<ktg.com>. “[T]he Panel does not accept the Complainant’s submission that, on inheriting a large portfolio of domain names, this imposed on Mrs. Haggippavlou a duty of due diligence to search worldwide to see if any of them might infringe any third party rights, prior to registering them in her name.”)

As I said in my earlier email, "in construing the Policy, the panelists got it right." Gml

-----Original Message----- From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of George Kirikos Sent: Tuesday, October 16, 2018 12:43 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12

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/2011/09/22/08-56110.pdf

(also listed on the WIPO Website at: http://www.wipo.int/export/sites/www/amc/en/docs/d20060636circuitdecision.pd... linked from http://www.wipo.int/amc/en/domains/challenged/ )

“”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 gopets.com 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 gopets.com was not a registration within the meaning of § 1125(d)(1). Because Edward Hise registered gopets.com in 1999, long before GoPets Ltd. registered its service mark, Digital Overture’s re-registration and continued ownership of gopets.com 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 http://www.leap.com/

On Tue, Oct 16, 2018 at 12:13 PM, BECKHAM, Brian <brian.beckham@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@icann.org> on behalf of George Kirikos <icann@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 http://www.leap.com/

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.

---

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

Hi Georges N, You seem to be responding to an older email, ignoring the Gopets citation discussed since then. Creation date standard is not a "windfall", since bad faith use can still be handled by the courts. These are no longer "clear cut" cases, and the UDRP/URS was not designed for all types of TM infringement. That's exactly why the UDRP/URS has been flawed, as complainants increasingly try to use it for situations where it was never intended. Pro-complainant panelists and providers are all too happy to take on those cases, in order to make more money. It's up to us as policy-makers to establish a fair balance, to ensure that registrants' concerns about this constant "expansion" of rights beyond real-world offline rights in the national courts is addressed. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Tue, Oct 16, 2018 at 2:50 PM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:

This is a flawed proposal based on mischaracterizations. The creation date standard proposed would essentially be a windfall to bad faith actors, by allowing parties to scoop up and use domain names in bad faith but rely on a shield of the creation date (as opposed to the date the name was acquired).

The fact that something was registered in good faith by one party originally does not mean that the subsequent party did not acquire it in bad faith. George K argues that there is some sort of ambiguity in the registered in bad faith standard. I beg to differ on that as UDRP Panels and the WIPO Overview are pretty clear on this issue (and protestations about Octagen, which is now dead and rejected, are misplaced).

To begin, the argument on the assignability and transfer of domain names and trademarks mixes rights. An assignment of a trademark requires the assignment of good will that is appurtenant to that mark. If a domain name correlates to a trademark then that assignment would cover that original domain transfer if the party acquiring the domain name also got the associated trademark rights. In other words the new registrant would stand in the shoes of the prior owner. The sale of a domain name can often just simply be a commercial transaction without any rights being passed (the buyer pays money and the seller gets the name like a commodity, and there is nothing said about rights being transferred). In addition, it should be noted that trademarks require use of the mark with the specified goods and services or the rights can be lost. So if a party acquired a trademark that has not been in use, then the purchaser might not have any rights in that mark and the rights might have to developed again when use is established or a new application filed (in registration based countries). In contrast a domain name can sit forever in a parked state without a per se risk of loss for non-use. The point is that while domain names have value, they are likewise subject to certain requirements, namely that they are not being acquired to take advantage of or exploit another’s rights.

But putting that aside, there is no ambiguity. If one party owns a domain name and changes the ownership to another entity that he or she owns or controls, and shows in a proceeding that this what happened, then that party's rights would run back to the original registration date (and Panel's consistently find accordingly). Similarly if someone inherits an estate that contains some domain names, those rights would be viewed as running back to the original owner and would not be seen as a new registration. And lastly in a situation where a party buys a domain name that connects to a trademark or business the party purchasing it would likewise step in the shoes of the predecessor. The problem arises when domain names lapse, get sold in an auction or are simply sold as commodities between parties (not connected to a business or trademark). The issue is whether the party acquiring the name is doing so in good faith or is doing so in bad faith to exploit the rights of another. Let's say Party A registers widget.com in 2005 and used the name in Morocco for his or her widget business. The business fails and is shut down in 2010 and the domain name then goes up for sale or is dropped and sold at auction (which depending on the registrar would maintain the creation date). In 2007, Party B launches a new service in the US and Europe called widget that becomes quite successful in a number of countries. In 2007, we all agree that Party B has no UDRP claim against widget.com, as Party A registered the domain name in 2005 before Party B adopted widget. But now in 2010, Party C sees that widget.com is available and buys it and then uses it to take advantage of Party B's rights in widget (e.g. uses widget.com to defraud consumers of Party B). Under George K's creation date proposal Party B would have no recourse because the domain name was originally created in 2005. So Party C can essentially free ride on a prior registration date and register and use a domain name in bad faith.

Now I know in George K's world he will say that Party B has recourse through the courts, but that is often not realistic and wildly expensive (and defeats the purpose of having a streamlined procedure to address abuse). If Party C claims, for example, to be based in Nepal and uses a registrar in the Cayman Islands, then Party B may have little to no recourse (as Party B might need to litigate for years at a great expense to stop an active fraud). The bottom line is that this proposal would create a major loophole that could easily be exploited by bad actors with impunity given the realities of the existing systems. Panelists have been fairly consistent in their approach to bad faith registration and acquisition and Panelists have debated and thrown out limited doctrines that were seen at outliers (like Octagen). So currently there is stability and much certainty as to what will be seen as a bad faith registration or acquisition. While I am sure that some will disagree and site to outlier cases that are not the norm, I think this proposal will create way more problems than it purports to solve. In particular it will create a major impediment and loophole in the conjunctive requirement of bad faith registration and use. If anything, this proposal along with other ones being proposed to gut the URS and UDRP provides much more support to the notion that the existing conjunctive standard be dropped and that the standard of bad faith registration or use be adopted, as is already the case in a number of jurisdictions with UDRP like procedures.

-----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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***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.

Well said, Georges Nahitchevansky. 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@VLPLawGroup.com -----Original Message----- From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Nahitchevansky, Georges Sent: Tuesday, October 16, 2018 5:43 PM To: George Kirikos <icann@leap.com>; gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12 George K You just insist on ignoring the purpose of the UDRP as a streamlined procedure. Your go to the court approach is simply not a workable solution. First, if you read my example, you would see that a court proceeding is often not realistic. That is particularly so depending on where a party claims to be based or where the registrar is located (by the way, I plan on responding to Paul K's series of emails on jurisdiction issues, but have not had the time to do so yet). Litigating in certain jurisdictions can be a nightmare, take years and be quite expensive. The UDRP/URS are designed to provide a meaningful and expedited remedy -- unless, of course, you prefer a system that allows bad faith actors to act with impunity and little risk (all to the detriment of consumers). Second, your contention that the URS and UDRP are flawed and are increasingly being used for situations they were not intended for is in and of itself a flawed proposition. If you did a serious review of all UDRP cases, as opposed to spending your day looking for a handful of outlier cases, you would see that the UDRP and URS are working quite well overall. The two RPMs effectively address many clear cut instances of abuse, and most Panelists have gotten quite sophisticated about the issues in UDRP and URS cases to create a fairly predictable system overall (one that benefits domain name owners as well as rights holders). In that regard, keep in mind that there are panelist meetings to discuss and debate issues of concern, as well as scholarly overviews and treatises by serious organizations and people looking at the cases and what can be gleaned from them. Above all, panelists these days are not hesitant to ding Complainants that overreach and do not prove their cases -- and/or who try to use, for example, the UDRP to address issues outside the scope of the RPM. Just spend the time and read the over 50,000 UDRP decisions, or at least just the 6,000 or more decisions of the past two years. I am not going to disagree with you that there have been some isolated bad decisions, but that is simply not the rule overall. A handful of bad decisions get way more airplay than the hundreds, if not thousands, of good and well-reasoned decisions that issue. To take that handful (which probably represent less than one percent of all decisions that have issued ) to then argue that the system is broken is really over reaching. By that same analysis, then every court system in the world is broken. There are certainly many court decisions that are not well-reasoned and/or are blatantly bad decisions -- particularly when you consider the number of bad judges around the world who are political hack appointments who know little about the law they purport to rule on, or make rulings based on political reasons. Again, the point of the UDRP/URS is to create streamlined proceedings -- proceedings that I think most would agree have been working well overall and provide predictability. Proposals such as your date of creation proposal are essentially proposals that aim to gut these RPMs and make them useless. How can there be balance when you threaten to open up a huge loophole that you know will get exploited by some bad actors and their representatives. Now I am all in favor of reasonable tweaks to the RPMs, but many of the proposals I am seeing are not reasonable and clearly display a not so subtle agenda for the benefit of a few at the expense of many (and ultimately consumers). What I find particularly distasteful is the claim that panelists are constantly expanding rights. Read all the cases and you will find that is not true. You will also find that some of the nascent expansions, such as the Octagen line of cases, have been squarely criticized and rejected by Panelists and providers. As for decisions you don't like, you should stop assuming right off the bat that these were wrongly decided. There are representatives of both complainants and respondents that utterly fail to prove their cases, put in questionable or fabricated evidence or who simply lie about or mischaracterize facts. Without the actual case file in front of you, it is hard for you to say what was put in front a panel. Reading a decision may tell you something about what was presented or not presented, but you don't know what was actually submitted. Panelists need to make an assessment of what is in front of them and are generally conscientious in fairly evaluating the evidence submitted. And by the way, these matters are not money making propositions, but essentially pro bono work. Even the providers are not really making any money. So in all, this type of rhetoric is as unproductive as someone claiming that domainers are only interested in making more money by increasingly finding ways to take advantage of the rights of others. Such rhetoric has no place here and we should be trying to improve an already working system as opposed to trying to emasculate it for the benefit of a few. -----Original Message----- From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of George Kirikos Sent: Tuesday, October 16, 2018 3:08 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12 Hi Georges N, You seem to be responding to an older email, ignoring the Gopets citation discussed since then. Creation date standard is not a "windfall", since bad faith use can still be handled by the courts. These are no longer "clear cut" cases, and the UDRP/URS was not designed for all types of TM infringement. That's exactly why the UDRP/URS has been flawed, as complainants increasingly try to use it for situations where it was never intended. Pro-complainant panelists and providers are all too happy to take on those cases, in order to make more money. It's up to us as policy-makers to establish a fair balance, to ensure that registrants' concerns about this constant "expansion" of rights beyond real-world offline rights in the national courts is addressed. Sincerely, George Kirikos 416-588-0269 https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.leap.com%2f&c=E,1,t_R... On Tue, Oct 16, 2018 at 2:50 PM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:

This is a flawed proposal based on mischaracterizations. The creation date standard proposed would essentially be a windfall to bad faith actors, by allowing parties to scoop up and use domain names in bad faith but rely on a shield of the creation date (as opposed to the date the name was acquired).

The fact that something was registered in good faith by one party originally does not mean that the subsequent party did not acquire it in bad faith. George K argues that there is some sort of ambiguity in the registered in bad faith standard. I beg to differ on that as UDRP Panels and the WIPO Overview are pretty clear on this issue (and protestations about Octagen, which is now dead and rejected, are misplaced).

To begin, the argument on the assignability and transfer of domain names and trademarks mixes rights. An assignment of a trademark requires the assignment of good will that is appurtenant to that mark. If a domain name correlates to a trademark then that assignment would cover that original domain transfer if the party acquiring the domain name also got the associated trademark rights. In other words the new registrant would stand in the shoes of the prior owner. The sale of a domain name can often just simply be a commercial transaction without any rights being passed (the buyer pays money and the seller gets the name like a commodity, and there is nothing said about rights being transferred). In addition, it should be noted that trademarks require use of the mark with the specified goods and services or the rights can be lost. So if a party acquired a trademark that has not been in use, then the purchaser might not have any rights in that mark and the rights might have to developed again when use is established or a new application filed (in registration based countries). In contrast a domain name can sit forever in a parked state without a per se risk of loss for non-use. The point is that while domain names have value, they are likewise subject to certain requirements, namely that they are not being acquired to take advantage of or exploit another’s rights.

But putting that aside, there is no ambiguity. If one party owns a domain name and changes the ownership to another entity that he or she owns or controls, and shows in a proceeding that this what happened, then that party's rights would run back to the original registration date (and Panel's consistently find accordingly). Similarly if someone inherits an estate that contains some domain names, those rights would be viewed as running back to the original owner and would not be seen as a new registration. And lastly in a situation where a party buys a domain name that connects to a trademark or business the party purchasing it would likewise step in the shoes of the predecessor. The problem arises when domain names lapse, get sold in an auction or are simply sold as commodities between parties (not connected to a business or trademark). The issue is whether the party acquiring the name is doing so in good faith or is doing so in bad faith to exploit the rights of another. Let's say Party A registers https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fwidget.com&c=E,1,sOjvhb1... in 2005 and used the name in Morocco for his or her widget business. The business fails and is shut down in 2010 and the domain name then goes up for sale or is dropped and sold at auction (which depending on the registrar would maintain the creation date). In 2007, Party B launches a new service in the US and Europe called widget that becomes quite successful in a number of countries. In 2007, we all agree that Party B has no UDRP claim against https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fwidget.com&c=E,1,XPpEUH8..., as Party A registered the domain name in 2005 before Party B adopted widget. But now in 2010, Party C sees that https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fwidget.com&c=E,1,vfgwvcT... is available and buys it and then uses it to take advantage of Party B's rights in widget (e.g. uses https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fwidget.com&c=E,1,Byh7J8i... to defraud consumers of Party B). Under George K's creation date proposal Party B would have no recourse because the domain name was originally created in 2005. So Party C can essentially free ride on a prior registration date and register and use a domain name in bad faith.

Now I know in George K's world he will say that Party B has recourse through the courts, but that is often not realistic and wildly expensive (and defeats the purpose of having a streamlined procedure to address abuse). If Party C claims, for example, to be based in Nepal and uses a registrar in the Cayman Islands, then Party B may have little to no recourse (as Party B might need to litigate for years at a great expense to stop an active fraud). The bottom line is that this proposal would create a major loophole that could easily be exploited by bad actors with impunity given the realities of the existing systems. Panelists have been fairly consistent in their approach to bad faith registration and acquisition and Panelists have debated and thrown out limited doctrines that were seen at outliers (like Octagen). So currently there is stability and much certainty as to what will be seen as a bad faith registration or acquisition. While I am sure that some will disagree and site to outlier cases that are not the norm, I think this proposal will create way more problems than it purports to solve. In particular it will create a major impediment and loophole in the conjunctive requirement of bad faith registration and use. If anything, this proposal along with other ones being proposed to gut the URS and UDRP provides much more support to the notion that the existing conjunctive standard be dropped and that the standard of bad faith registration or use be adopted, as is already the case in a number of jurisdictions with UDRP like procedures.

-----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 https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.leap.com%2f&c=E ,1,vC0kwystgS3UApQ9qraIxYBT_UKtfQ-fBHB79L_HkLI2A6BgEPOBliBw7BXKac77s9O ZDO3p0AzCroIeWvL1dlMoKohCcb34rbAK9wiRwQ,,&typo=1

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***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.

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