[gnso-dt-wg] Need for Statement that AGP is Not Intended to Preempt ACPA Safe Harbor

["Rosette, Kristina" <krosette@xxxxxxx>]

All,

The following sentences appear in a preliminary injunction order that
was recently entered by a federal judge in California against an
ICANN-accredited registrar:

Indeed, Defendant effectively treats the five-day "Add Grace Period"
under ICANN as a five-day safe harbor in which it is able to infringe
Plaintiffs'' marks until the newly registered domain names have been
"trademark scrubbed" and potentially infringing domain names have been
cancelled.  Defendant has provided no authority in support of its
suggestion that the "Add Grace Period" available under ICANN preempts
the ACPA [AntiCybersquatting Consumer Protection Act].  Nothing in the
ACPA suggests that confusingly similar domain names may be registered in
the first instance as long as they are cancelled within five days.
Although the ACPA has a safe harbor provision, that provision is only
intended to protect defendants who had reasonable grounds to believe the
use of an infringing domain name was a fair use or otherwise lawful.  15
U.S.C. 1125(d)(1)(b)(ii).  Absent statutory language or otherwise
persuasive authority, the Court, at least at this stage, will not
construe the ICANN "Add Grace Period" as an additional exception to the
ACPA."

-*-

Regardless of where this group comes out on Terms of Reference and where
the Council ultimately comes out on starting a PDP, I recommend that a
statement be issued that the Add Grace Period is not - and was never
intended to - preempt the ACPA safe harbor.  This is NOT a public
perception that ICANN wants to foster or encourage, or be perceived as
fostering or encouraging.

Kristina