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RE: [bc-gnso] FW: New ICA Post on the LRO
- To: Andy Abrams <abrams@xxxxxxxxxx>, "jscottevans@xxxxxxxxx" <jscottevans@xxxxxxxxx>, bc - GNSO list <bc-gnso@xxxxxxxxx>
- Subject: RE: [bc-gnso] FW: New ICA Post on the LRO
- From: Phil Corwin <psc@xxxxxxxxxxx>
- Date: Tue, 6 Aug 2013 10:25:11 +0000
You are most welcome, Andy. I'm glad that you thought my post captured the LRO
process well.
In regard to your comment - "However, an interesting side-issue is whether the
UDRP and URS panels will start to include TLDs as a factor in determining
cybersquatting at the second level (e.g., cross-dot trademarks such as
federal.express or you.tube). And if so, perhaps cross-dot trademarks should
be included in Sunrise?' - these "side issues" are complex and would represent
a fundamental change in UDRP and subsidiary URS policy, which today only
contemplates the name to the left or the dot with no consideration of the top
level domain on the right side. Consideration of the right side in either UDRP
or URS proceedings or as a matter of sunrise protection would be, I believe, a
significant change in policy that requires extensive consideration, perhaps
even a PDP, prior to any contemplated change in the scope of these protections.
This isn't just a new gTLD issue - there are existing TLDs, especially ccTLDs
like .me and .tv, that can raise similar questions. So far as I know there was
absolutely no consideration or discussion of inclusion of right of the dot
considerations in the development of the URS or TMC. Changes of this
consequence should not be considered, much less implemented, on the fly absent
adequate consideration.
The GNSO decided in December 2011 that any PDP related to alteration of the
UDRP should not be initiated until eighteen months after the introduction of
new gTLDs. That may forestall any consideration of your suggestion unless
there is a broad community desire to accelerate the timetable.
Best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: Andy Abrams [mailto:abrams@xxxxxxxxxx]
Sent: Monday, August 05, 2013 8:22 PM
To: Phil Corwin; jscottevans@xxxxxxxxx; bc - GNSO list
Subject: Re: [bc-gnso] FW: New ICA Post on the LRO
Thanks to Phil for forwarding us his article - it captures the LRO process
well. For what it's worth, I'm another trademark attorney that agrees with J.
Scott that the system is actually working well, and brand owners shouldn't
expect to preemptively stop the use of a generic term for an open TLD prior to
any commercial activity. However, an interesting side-issue is whether the
UDRP and URS panels will start to include TLDs as a factor in determining
cybersquatting at the second level (e.g., cross-dot trademarks such as
federal.express or you.tube). And if so, perhaps cross-dot trademarks should
be included in Sunrise?
Andy
On Mon, Aug 5, 2013 at 8:08 AM, J. Scott Evans
<jscottevans@xxxxxxxxx<mailto:jscottevans@xxxxxxxxx>> wrote:
Phil:
The remedy provided is not more narrow than that provided under current
national and international laws. If trademark owners want an absolute monopoly
on a term then, yes, they will have to file for a top level domain in round
two. Paul McGrady has been saying that the first come, first served method of
distribution of top level domains by ICANN could lead to "permanent string
preclusion" for those brands who have a dictionary term as a trademark. He has
been saying this since 2008. Unfortunately, some brands don't listen. Go
figure!
j. scott evans - head of global brand, domains & copyright - Yahoo! Inc. -
408.349.1385 - jscottevans@xxxxxxxxx<mailto:jscottevans@xxxxxxxxx>
________________________________
From: Phil Corwin <psc@xxxxxxxxxxx<mailto:psc@xxxxxxxxxxx>>
To: J. Scott Evans <jscottevans@xxxxxxxxx<mailto:jscottevans@xxxxxxxxx>>
Cc: "bc-gnso@xxxxxxxxx<mailto:bc-gnso@xxxxxxxxx>"
<bc-gnso@xxxxxxxxx<mailto:bc-gnso@xxxxxxxxx>>
Sent: Monday, August 5, 2013 7:58 AM
Subject: RE: [bc-gnso] FW: New ICA Post on the LRO
Agree that it's working as intended, but doubt that most perceived how narrow a
remedy it would be.
Main takeaway for TM owners is that if you want to control your generic brand
or product at top level of the DNS you need to submit a defensive application
in 2nd round.
As for adding LRO to acronym list - well of course!
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: J. Scott Evans
[mailto:jscottevans@xxxxxxxxx<mailto:jscottevans@xxxxxxxxx>]
Sent: Sunday, August 04, 2013 11:41 PM
To: Phil Corwin
Cc: bc-gnso@xxxxxxxxx<mailto:bc-gnso@xxxxxxxxx>
Subject: Re: [bc-gnso] FW: New ICA Post on the LRO
That's correct you don't, but the article seems to imply that the LRO sets too
high a burden or is somehow flawed and, for this reason, trademark owners are
getting the proverbial "shaft." I think a LRO would work if a trademark owner
could prove a likelihood of confusion or some actual harm. I don't think you
are sufficiently harmed just because someone plans to use the a generic term
(that may also serve as someone's trademark) for non-infringing purposes. I
would argue to you the the LRO is working perfectly, much like the UDRP works
perfectly when trademark owners that can meet the high burden win.
In sum, I think the system is working as it was intended. I know these results
are making some trademark owners unhappy, but trademark law is basically a
consumer protection statute, so a complainant should have to show some consumer
harm or confusion, not the angst of a marketing department that was asleep at
the wheel since June 2008.
J. Scott
j. scott evans - head of global brand, domains & copyright - Yahoo! Inc. -
408.349.1385 - jscottevans@xxxxxxxxx<mailto:jscottevans@xxxxxxxxx>
________________________________
From: Phil Corwin <psc@xxxxxxxxxxx<mailto:psc@xxxxxxxxxxx>>
To: J. Scott Evans <jscottevans@xxxxxxxxx<mailto:jscottevans@xxxxxxxxx>>
Cc: "bc-gnso@xxxxxxxxx<mailto:bc-gnso@xxxxxxxxx>"
<bc-gnso@xxxxxxxxx<mailto:bc-gnso@xxxxxxxxx>>
Sent: Sunday, August 4, 2013 8:14 PM
Subject: Re: [bc-gnso] FW: New ICA Post on the LRO
I don't disagree, and never said they were.
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VLawDC
"Luck is the residue of design" -- Branch Rickey
Sent from my iPad
On Aug 4, 2013, at 10:51 PM, "J. Scott Evans"
<jscottevans@xxxxxxxxx<mailto:jscottevans@xxxxxxxxx>> wrote:
I am not so sure any of these cases were wrongly decided.
Sent from Yahoo! Mail for iPhone
________________________________
From: Phil Corwin <psc@xxxxxxxxxxx<mailto:psc@xxxxxxxxxxx>>;
To: bc-gnso@xxxxxxxxx<mailto:bc-gnso@xxxxxxxxx>
<bc-gnso@xxxxxxxxx<mailto:bc-gnso@xxxxxxxxx>>;
Subject: [bc-gnso] FW: New ICA Post on the LRO
Sent: Sun, Aug 4, 2013 10:05:16 PM
FYI/BC members may find my latest opinion piece of some interest---
http://internetcommerce.org/LROlooksDOA
LRO Looks DOA
The Legal Rights Objection (LRO) mechanism administered by the World
Intellectual Property Organization (WIPO) on behalf of ICANN is starting to
look like the reverse FISA Court of domain name system (DNS) rights protection
mechanisms (RPMs) at the top level. In FISA Court, the government always wins -
at WIPO, the LRO complainant always loses.
The FISA Court is of course the venue in which the U.S. government requests a
surveillance warrant against a suspected foreign intelligence agent and is
never denied (well, almost never - since the process started in 1979, 11
requests have been denied out of a total of 33,942 received through the end of
2012[1]<https://us-mg6.mail.yahoo.com/neo/#_ftn1>). FISA Court proceedings are
secret and non-adversarial, with only government lawyers presenting arguments.
In contrast, the decisions resulting from LRO proceedings are published, and
both complainant and respondent have equal ability to present their arguments.
Yet, as of Friday, August 2nd all 28 of the decided LRO complaints, out of a
total of 69 filed, resulted in losses for the
complainants[2]<https://us-mg6.mail.yahoo.com/neo/#_ftn2>.
The lopsided results arouse suspicions that trademark interests may have been
fighting the last war and too intensely focused on potential cybersquatting at
the second level (a concern that we believe is overblown due to the low traffic
prospects for many new gTLDs). They consequently sought and obtained the
Trademark Clearinghouse (TMC), Uniform Rapid Suspension (URS) RPMs - and also
proposed other second level remedies such as a Global Protected Marks List
(GPML) that ICANN did not grant. Yet they may have failed to adequately
consider whether top level protections were sufficient, and in particular
whether the threshold standard for successfully prosecuting a LRO was
unattainably high.
As Thomas O'Toole observed in an excellent analysis recently posted on
Bloomberg BNA's E-Commerce and Tech Law
Blog[3]<https://us-mg6.mail.yahoo.com/neo/#_ftn3>:
[T]he only surprise the future might hold is the faint prospect that a WIPO
panelist might actually rule in favor of a trademark owner...The biggest lesson
so far has been that the Legal Rights Objection process is wholly ineffective
for trademark owners seeking to knock down proposed domains containing generic
strings. In many cases, companies owning marks for terms such as EXPRESS, HOME,
VIP, LIMITED, MAIL, TUNES have lost LROs to domain applicants with no
intellectual property rights in those terms whatsoever. Pinterest's failed
challenge to Amazon's proposed .pin domain was particularly ominous for mark
owners, because Amazon seems pretty clearly to be moving in on Pinterest's
business...
The reason for this dour outlook can be found in passages from two early LRO
rulings: the first one, Right at Home v. Johnson Shareholdings Inc., No.
LRO2013-0300 (WIPO, July 3, 2013); and the second, my favorite, Express LLC v.
Sea Sunset LLC, No. LRO2013-0022 (WIPO, July 9, 2013)...
In Right at Home, panelist Robert A. Badgley offered the first interpretation
of key terms in Section 3.5 of ICANN's New gTLD Applicant
Guidebook<http://newgtlds.icann.org/en/applicants/agb>. The guidebook uses
highly qualified language, directing LRO panelists to decide whether the
proposed new domain "takes unfair advantage" of the trademark owner's rights,
or "unjustifiably impairs" the value of the mark, or creates an "impermissible
likelihood of confusion" between the mark and the proposed domain.
In Badgley's view, this language creates a very high burden for trademark-based
objections...Obviously, it is going to be very difficult for any trademark
owner to demonstrate that a proposed domain is so fishy it satisfies the
"something untoward ... if not to the level of bad faith" standard...
The second opinion, Express LLC v. Sea Sunset LLC, was one of the better
opinions (and I am including the federal court stuff that we wade through every
day) I have read in a while. Panelist Frederick M. Abbott carefully summarized
the arguments on each side (there are good lessons here for attorneys working
on the next round of legal rights objections), and the law that he was required
to apply to the dispute. When Abbott turned to the reasoning behind his
decision to reject Express LCC's objection to the proposed .express top-level
domain, I got that sense that this panelist was a teeny bit irked that ICANN
itself had not made the hard policy choices that the LRO had just dropped in
his lap. It's one thing to ask a panelist to transfer a domain name that might
have cost the registrant $10 or so; and it's quite another to ask a panelist to
upset an investment of at least a half-million dollars in a new top-level
domain. All based on a trademark registration for a generic term, in a single
market, issued by a single government entity. Abbott declined to do it...
These two opinions, taken together, look like a terminal diagnosis for
trademark owners with rights in generic terms. Right at Home creates a very
permissive standard for what constitutes "unfair advantage" by a domain
applicant. Express LLC states, almost categorically, that it is "not
reasonable" to allow a trademark owner for a generic term to prevent that term
from being used as a top-level domain.
O'Toole goes on to speculate that a trademark owner like Express LLC will have
equally poor chances of success if it attempts to block others' use of such
hypothetical second level domains as clothing.express, fashion.express, or
shoes.express using the traditional UDRP or the new TMC and URS RPMs -- because
all of them focus on the domain name to the left of the dot and pay no heed to
the gTLD to the right - and because Express holds no trademark rights in those
hypothetical generic terms on the left side. We largely agree with his
analysis, and suspect that this could be the next big trademark protection
issue looming on ICANN's horizon as brands complain about the necessity and
cost of registering relevant domains at a gTLD that matches one of its
trademarks but is operated by a third party (and, by the way, it's not clear
that a brand like Express would have any special "sunrise" registration
priority for potential second level domains along the lines of O'Toole's
speculation). Other questions arise, such as whether Federal Express should
have priority rights to, or a potential infringement claim against,
federal.express.
Of course, no one was reckless enough to pay a $185,000 gTLD application fee,
plus multiple related legal, consulting, and technical costs, to try to "squat'
at the top level on a unique trademark like Google or Microsoft. But when it
comes to a dictionary word like Express, unless the applicant was so clueless
as to propose its use solely for fashionable clothing, the LRO is essentially
useless - and that may be the correct result. Indeed, short of halting the
program, it's not really clear how one can have a generic word TLD program
without allowing the addition of top level domains that are identical to
someone's trademark for something; and that alone is not sufficient to prove
trademark infringement.
Domain industry observers such as Andrew Allemann have opined that "The LRO is
working just fine, thank you"[4]<https://us-mg6.mail.yahoo.com/neo/#_ftn4>,
weighing in with this analysis:
The LRO was created to assuage fears that someone would cybersquat on a top
level domain...Objections were filed against .VIP, .mail, and .home. Now, you
tell me: when you hear these terms, what brand do you think is being
cybersquatted?
Many of the objections were filed by competing applicants that engaged in
trademark frontrunning by obtaining dubious trademarks for the string. Others,
such as the United States Postal Service's objection to .mail, were based on
stretched interpretations of a trademark (and that's being generous).
Another industry analyst, Kevin Murphy, has just declared that he will no
longer report automatically on forthcoming WIPO decisions in LRO cases,
stating[5]<https://us-mg6.mail.yahoo.com/neo/#_ftn5>:
The Legal Rights Objection has, I think, said pretty much everything it's going
to say in this new gTLD application round. I'm feeling pretty confident we can
predict that all outstanding LROs will fail.
This prediction is based largely on the fact that the 69 LROs filed in this
round all pretty much fall into three categories.
* Front-running. These are the cases where the objector is an applicant
that secured a trademark on its chosen gTLD string, usually with the dot, just
in order to game the LRO process...
* Brand v Brand. The objector may or may not be an applicant too, but
both it and the respondent both own legit trademarks on the string in question.
WIPO's LRO panelists have made it clear, most recently yesterday in Merck v
Merck
(pdf<http://www.wipo.int/export/sites/www/amc/en/domains/lro/docs/lro2013-0068.pdf>)
and Merck v Merck
(pdf<http://www.wipo.int/export/sites/www/amc/en/domains/lro/docs/lro2013-0069.pdf>),
that having a famous brand does not give you the right to block somebody else
from owning a matching famous brand as a gTLD.
* Generic trademarks. Cases where an owner of a legit brand that
matches a dictionary word files an objection against an applicant for the same
string that proposes to use it in its generic sense. See Express v
Donuts<http://domainincite.com/13691-donuts-beats-dot-brand-in-fight-over-express-gtld>,
for example. Panelists have found that unless there's some nefarious intent by
the applicant, the mandatory second-level rights protection mechanisms new gTLD
registries must abide by are sufficient to protect trademark rights.
In short, the LRO may be one of many deterrents to top-level cybersquatting,
but has proven itself an essentially useless cash sink if you want to prevent
the use of a trademark at the top level.
The impact of this, I believe, will be to give new gTLD consultants another
excellent reason to push defensive gTLD applications on big brands in future
new gTLD rounds.
We largely agree with Murphy's analysis. There may well be a few cases in the
remaining objections to be adjudicated by WIPO in which the complainant
prevails. But we suspect that they will be such unique outliers that they will
actually reinforce what an exceedingly narrow remedy the LRO has turned out to
be. That limited utility has already led one disgruntled complainant/competing
applicant to declare, "Seems the entire WIPO LRO process was set-up to fail by
ICANN with the guidelines they gave the
Panelists."[6]<https://us-mg6.mail.yahoo.com/neo/#_ftn6>
And, as Murphy observes, filing a LRO with WIPO is not inexpensive. Total
filing fees for a single objection to a single new gTLD application can range
from $10,000 for a single-expert panel, and up to $23,000 for a 3-expert
panel[7]<https://us-mg6.mail.yahoo.com/neo/#_ftn7>. On top of the fees there
are of course legal costs for the attorney preparing the complaint and related
expenses for amassing documentation. If the LRO continues to be a preordained
shutout for complainants then it is unlikely that it will be used very much at
all in the second round of gTLD applications unless significant - and
undoubtedly controversial - changes are made in the adjudication standard to
give complainants a higher probability of prevailing.
As for the other objection procedure available to third parties, the Community
Objection[8]<https://us-mg6.mail.yahoo.com/neo/#_ftn8> administered by the
International Centre for Expertise of the ICC (International Chamber of
Commerce), no judgment can yet be rendered on its efficacy because the Center
has yet to issue a single decision on the dozens of
cases[9]<https://us-mg6.mail.yahoo.com/neo/#_ftn9> filed with it. However, with
standing limited to established institutions associated within a clearly
defined community objectors first have to surmount that procedural hurdle, and
then make the string substantive case that there is substantial opposition to
the gTLD application from a significant portion of the community to which the
gTLD string may be explicitly or implicitly targeted. Additionally, complaints
were voiced at the recent Public Forum in Durban that ICC
fees[10]<https://us-mg6.mail.yahoo.com/neo/#_ftn10> , which begin at 17,000
Euro but can quickly mount given the 450 Euro hourly rate for expert
arbitrators, are not affordable for many community organizations.
Summing up, the LRO may well have been an effective deterrent against
applications for unique trademarked terms but has so far been useless in regard
to applications for generic word trademarks, regardless of the trademark's
strength and legitimacy. Its lack of general applicability also seems to be
setting up a series of second level domain disputes that may well be outside
the existing scope of the UDRP, URS, TMC, or other available rights protection
and prioritization mechanisms. All of this may lead to further debate within
ICANN on the appropriate scope of trademark rights protections- as well as
litigation being filed by unsuccessful complainants who refuse to take WIPO's
decision as the final judgment on their claims.
The clear lesson to brand owners of generic word trademarks is this: If and
when the second round of new gTLD applications commences, if you wish to own
your trademark at the top level of the DNS (or at least stop others from owning
it) you had better open your wallet and apply for it. That compulsion toward
unwanted defensive registrations is almost sure to generate further controversy
amid charges that ICANN has developed a Midas Touch-like mechanism for
generating perpetual revenues for application and use fees for the protection
of dictionary words.
Of course, the inflow of defensive applications for generic word trademarks
could be a mere trickle compared to the potential surge of defensive and
offensive applications for non-trademarked generic words if ICANN ultimately
spurs the Governmental Advisory Committee (GAC) advice to prohibit "closed
generic" gTLDs unless they satisfy a high public interest standard. In that
scenario, every company of any heft will have to seriously consider gTLD
applications for the major language words describing its key activities and
products, lest a competitor do so first and lock them away. But that's an issue
falling outside any trademark protection debate and a discussion for another
day.
[1]http://en.wikipedia.org/wiki/FISA_Court
[2]http://www.wipo.int/amc/en/domains/lro/cases/
[3]http://www.bna.com/icann-legal-rights-b17179875369/
[4]http://domainnamewire.com/2013/08/01/the-lro-is-working-just-fine-thank-you/
[5]http://domainincite.com/13949-thats-all-folks-no-more-lro-news
[6]http://www.thedomains.com/2013/07/31/constantinos-roussos-of-dotmusic-limited-the-entire-wipo-lro-process-was-set-up-to-fail-by-icann/
[7]http://www.wipo.int/amc/en/domains/lro/fees/
[8]http://www.iccwbo.org/products-and-services/arbitration-and-adr/expertise/introduction-to-icann-new-gtld-dispute-resolution/
[9]http://www.iccwbo.org/WorkArea/DownloadAsset.aspx?id=19327354883
[10]http://www.iccwbo.org/products-and-services/arbitration-and-adr/expertise/icann-new-gtld-dispute-resolution/costs-and-payments/
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
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[1]<https://us-mg6.mail.yahoo.com/neo/#_ftnref1>
http://en.wikipedia.org/wiki/FISA_Court
[2]<https://us-mg6.mail.yahoo.com/neo/#_ftnref2>
http://www.wipo.int/amc/en/domains/lro/cases/
[3]<https://us-mg6.mail.yahoo.com/neo/#_ftnref3>
http://www.bna.com/icann-legal-rights-b17179875369/
[4]<https://us-mg6.mail.yahoo.com/neo/#_ftnref4>
http://domainnamewire.com/2013/08/01/the-lro-is-working-just-fine-thank-you/
[5]<https://us-mg6.mail.yahoo.com/neo/#_ftnref5>
http://domainincite.com/13949-thats-all-folks-no-more-lro-news
[6]<https://us-mg6.mail.yahoo.com/neo/#_ftnref6>
http://www.thedomains.com/2013/07/31/constantinos-roussos-of-dotmusic-limited-the-entire-wipo-lro-process-was-set-up-to-fail-by-icann/
[7]<https://us-mg6.mail.yahoo.com/neo/#_ftnref7>
http://www.wipo.int/amc/en/domains/lro/fees/
[8]<https://us-mg6.mail.yahoo.com/neo/#_ftnref8>
http://www.iccwbo.org/products-and-services/arbitration-and-adr/expertise/introduction-to-icann-new-gtld-dispute-resolution/
[9]<https://us-mg6.mail.yahoo.com/neo/#_ftnref9>
http://www.iccwbo.org/WorkArea/DownloadAsset.aspx?id=19327354883
[10]<https://us-mg6.mail.yahoo.com/neo/#_ftnref10>
http://www.iccwbo.org/products-and-services/arbitration-and-adr/expertise/icann-new-gtld-dispute-resolution/costs-and-payments/
________________________________
No virus found in this message.
Checked by AVG - www.avg.com<http://www.avg.com/>
Version: 2013.0.3392 / Virus Database: 3209/6545 - Release Date: 08/02/13
--
Andy Abrams | Trademark Counsel
Google | 1600 Amphitheatre Parkway, Mountain View, CA 94043
(650) 669-8752<https://www.google.com/voice#phones>
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