Re: [ga] Amending the UDRP process to protect domain registrants

["Jeffrey A. Williams" <jwkckid1@xxxxxxxxxxxxx>]

Ted and all,

  Thank you for yet again bringing this to our attention.  Please be
advised some 3+ years ago this very same concern I brought to the
attention to the than sitting ICANN Bod, as did many other actively
participating DNSO/GNSO GA forum members.  We were expressly
ignored and in a few instances denegrated for mentioning such.
Such comments in the past regarding the UDRP can be found
at http://www.icannwatch.org/ archives as well in the DNSO
GA archives accordingly.

  The UDRP has been, and remains ill suited to adaquately deal with
domain name disputes.

Regards,

Spokesman for INEGroup LLA. - (Over 277k members/stakeholders strong!)
"Obedience of the law is the greatest freedom" -
   Abraham Lincoln

"Credit should go with the performance of duty and not with what is
very often the accident of glory" - Theodore Roosevelt

"If the probability be called P; the injury, L; and the burden, B;
liability depends upon whether B is less than L multiplied by
P: i.e., whether B is less than PL."
United States v. Carroll Towing  (159 F.2d 169 [2d Cir. 1947]
===============================================================
Updated 1/26/04
CSO/DIR. Internet Network Eng. SR. Eng. Network data security IDNS.
div. of Information Network Eng.  INEG. INC.
ABA member in good standing member ID 01257402 E-Mail
jwkckid1@xxxxxxxxxxxxx
My Phone: 214-244-4827

"Prophet Partners Inc." wrote:

> Panelist Ms. Dana Haviland makes some noteworthy comments regarding
> ICANN's UDRP in a new WIPO decision ruled as a Reverse Domain Name
> Hijacking. Her comments have strong merits and should seriously be
> considered as the basis for amending the UDRP process to protect
> domain registrants. It is important to recognize that despite the
> limitations of the UDRP to award domain transfers or cancellations and
> the inability to award monetary damages, legitimate domain registrants
> are in a lose-lose situation and are penalized by having to spend
> undue time and legal expenses fighting frivolous domain disputes, even
> if they eventually win the dispute. Wildfire, Inc. v. Namebase, WIPO
> D2007-1611 IronArc.com (January 29,
> 2008)http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1611.html
>
>      -------------------------------------------------------------
>
>      "Under the Policy, in order to prevail, a complainant must
>      prove the following three elements of a claim for transfer
>      or cancellation of a respondent?s domain name:
>
>      (i) that the domain name is identical or confusingly similar
>      to a trademark or service mark in which the complainant has
>      rights;
>
>      (ii) that the respondent has no rights or legitimate
>      interests in the disputed domain name; and
>
>      (iii) that the respondent?s domain name has been registered
>      and is being used in bad faith.
>
>      Policy, paragraph 4(a).
>
>      Complainant in this case seeks transfer of Respondent?s
>      Domain Name even though Complainant admits that Respondent?s
>      domain name registration took place well before the
>      establishment of Complainant?s trademark rights. The case
>      raises interesting questions as to the rights of domain name
>      registrants in the context of a UDRP proceeding, too often
>      overlooked in the analysis and balancing of the competing
>      interests of trademark owners and domain name holders under
>      the Policy. It is important to remember that not all domain
>      name holders are cybersquatters."
>
>      -------------------------------------------------------------
>
>      "Recognizing that she is in a distinct minority, this Panel
>      nevertheless, like the panel in the John Ode case, considers
>      that the timing of a complainant?s establishment of
>      trademark rights ought to matter with respect to the
>      analysis of the requirements of paragraph 4(a)(i), and that
>      the relevant date for determination of the complainant?s
>      trademark rights should be the date of registration of the
>      domain name and not the date of the complaint, for
>      consistency with the purpose and structure of the Policy in
>      limiting the scope of the UDRP proceeding and balancing the
>      competing interests of domain name holders and trademark
>      owners.
>
>      One reason for the Panel?s view is that the Policy was not
>      designed to change the ?first come, first served?
>      registration process for domain names, but to address the
>      specific problem of cybersquatting. The scope of the UDRP
>      procedure was therefore ?limited to cases of bad faith,
>      abusive registration of domain names that violate trademark
>      rights (?cybersquatting? in popular terminology?), a
>      definition and framework that presupposes the prior
>      existence of trademark rights violated by the abusive
>      registration. See The Management of Internet Names and
>      Addresses: Intellectual Property Issues, Final Report of the
>      WIPO Internet Domain Name Process, April 30, 1999 (the ?WIPO
>      Report?) Executive Summary, paragraphs v and vi; Chapter 3,
>      paragraphs 135(i) and (ii).
>
>      As stated in the WIPO Report,
>
>      ?It is considered that concerns about the mandatory nature
>      of the procedure can be greatly alleviated, if not removed
>      entirely, by confining the scope of the procedure to abusive
>      registrations or cybersquatting?.Since the procedure would
>      apply only to egregious examples of deliberate violation of
>      well-established rights, the danger of innocent domain name
>      applicants acting in good faith being exposed to the
>      expenditure of human and financial resources through being
>      required to participate in the procedure is removed.?
>
>      WIPO Report, Chapter 3, paragraph 160. See also Miele, Inc.
>      v. Absolute Air Cleaners and Purifiers, WIPO Case No.
>      D2000-0756 (?the legislative history of the Policy indicates
>      that it was promulgated to tackle egregious cases of
>      cybersquatting, leaving other disputes to the courts for
>      resolution?).
>
>      Thus, arguably, the threshold issue in paragraph 4(a)(i)
>      with respect to the complainant?s trademark rights should be
>      whether they were in fact ?well-established rights? at the
>      time of the registration of the domain name. The policy was
>      not designed to protect ?non-existent? trademark rights, so
>      the language of paragraph 4(a)(i) need not and should not be
>      so construed."
>
>      -------------------------------------------------------------
>
>      "But where a complainant can not show any basis for the
>      existence of any trademark rights prior to the registration
>      of the domain name, why should that complainant be entitled
>      to initiate a UDRP proceeding against the domain name
>      holder? Shouldn?t the domain name holder in such a case have
>      the right to peaceful enjoyment of the domain name as
>      contemplated by the drafters of the Policy?
>
>      Apparently not, at least with respect to paragraph 4(a)(i),
>      as under most UDRP cases which have considered this issue,
>      domain name holders must look to paragraph 4(a)(iii) of the
>      Policy for protection from such Johnny-come-lately trademark
>      owners. The construction of paragraph 4(a)(i) to require
>      only proof of trademark rights at the time of filing of the
>      complaint has prevailed over time, so that, as set forth in
>      paragraph 1.4 of the WIPO Overview of WIPO Panel Views on
>      Selected UDRP Questions, the consensus view on this issue is
>      that
>
>      ?Registration of a domain name before a complainant acquires
>      trademark rights in a name does not prevent a finding of
>      identity or confusing similarity. The UDRP makes no specific
>      reference to the date of which the owner of the trade or
>      service mark acquired rights. However it can be difficult to
>      prove that the domain name was registered in bad faith as it
>      is difficult to show that the domain name was registered
>      with a future trademark in mind.?1
>
>      As discussed above, the allegations of the Complaint in this
>      proceeding establish that Complainant did not have any
>      common law or registered trademark rights in the IRONARC
>      mark at the time of Respondent?s registration of the Domain
>      Name, and therefore, in the Panel?s view, should have no
>      standing under paragraph 4(a)(i) of the Policy to bring this
>      claim against the Respondent."
>
>      (emphasis added)
>
>      -------------------------------------------------------------
>
>      "And under paragraph 4(a)(iii) of the Policy, to obtain
>      transfer of a domain name, the complainant must show bad
>      faith registration of the domain name under paragraph
>      4(a)(iii); a showing of only subsequent bad faith use of the
>      domain name is insufficient. Similarly construing paragraph
>      4(a)(i) to require a complainant to show the existence of
>      trademark rights at the time of the registration of the
>      domain name, and not just the establishment of trademark
>      rights at some subsequent date prior to the filing of the
>      complaint, would arguably better reflect the balancing of
>      the competing interests of trademark and domain name holders
>      under the Policy, as well as the ?first come, first served?
>      nature of the domain name registration process.
>
>      Finally, such a requirement in paragraph 4(a)(i) would help
>      protect domain name holders from claims by trademark owners
>      seeking to hijack their domain names by virtue of
>      later-acquired trademark rights."
>
>      (emphasis added)
>
>      -------------------------------------------------------------
>
>
> Disclaimer: I am not a lawyer and these are only my personal opinions.
> If you require legal advice, you should seek qualified legal counsel.
>
> Sincerely,TedProphet Partners
> Inc.http://www.ProphetPartners.comhttp://www.Premium-Domain-Names.com