RE: [gnso-rap-dt] Registration vs. Use / Scope Issues

["Mike Rodenbaugh" <icann@xxxxxxxxxxxxxx>]

George,

These are not my personal views, these are facts.

The WIPO Overview is not authoritative, and anyway is equivocal with phrases
like "normally speaking".  Of course each case is judged on its merits, and
many opinions have found bad faith to arise after initial registration.
This is consistent with the UDRP Sections:

1.  UDRP applicable to any dispute "over the registration and use of an
Internet domain name registered by you"

2.  You represent and warrant that "you will not knowingly use the domain
name in violation of any applicable laws or regulations"

4(a)(iii).  Third element of a UDRP claim = "your domain name has been
registered and is being used in bad faith"

4(b).  "For the purposes of 4(a)(iii), the following circumstances, ...
shall be evidence of the registration and use of a domain name in bad faith:
...  (iv) by using the domain name, you have intentionally attempted to
attract, for commercial gain, Internet users ..., by creating a likelihood
of confusion ...."

4(c)(iii).  It is a defense to a UDRP claim if "you are making a legitimate
noncommercial or fair use of the domain name".

So, it has long been accepted that use of a domain name, sometimes long
after initial registration, can amount to bad faith registration.  The UDRP
drafters surely recognized this distinction, and many panels and courts have
understood that any contrary rule would eviscerate the policy.  ICANN
through the UDRP and the RAA does regulate use of gTLD domain names, not
merely their initial registration.  

This is further evidenced in all of the gTLD and many ccTLD registry
agreements, except of course Verisign's for .com/net, which clearly provide
the ability for registries to take any action with respect to domains they
register, which they deem necessary to avoid harm to any third party.  This
still is further evidenced by the vast majority of registrar-registrant
contracts that provide registrars that same right.  Many of the contracting
parties have effective abuse mitigation policies and processes in place.

This Working Group should start talking about which of those policies are
best, and develop minimum standards based on current industry best
practices.  We should not be endlessly debating about ICANN's remit, and the
definition of the word "registration".  Both are black holes for debate, and
sidestep the reality in the marketplace that most contracting parties have
these rights and do well to mitigate abuse.  There is no reason why they
should not all meet some minimum standards for abuse mitigation, so that the
truly abusive ones get weeded out of the system faster.  This would benefit
everyone in the community.

Mike Rodenbaugh
Rodenbaugh Law
548 Market Street
San Francisco, CA  94104
+1.415.738.8087
www.rodenbaugh.com



-----Original Message-----
From: owner-gnso-rap-dt@xxxxxxxxx [mailto:owner-gnso-rap-dt@xxxxxxxxx] On
Behalf Of George Kirikos
Sent: Thursday, May 28, 2009 4:33 PM
To: gnso-rap-dt@xxxxxxxxx
Subject: Re: [gnso-rap-dt] Registration vs. Use / Scope Issues


Hi again,

Just to followup, not only is WIPO Overview 3.7 relevant, but also 3.1:

http://www.wipo.int/amc/en/domains/search/overview/index.html#31

"3.1 Can bad faith be found if the disputed domain name was registered
before the trademark was registered/common law trademark rights were
acquired?

Consensus view: Normally speaking, when a domain name is registered before a
trademark right is established, the registration of the domain name was not
in bad faith because the registrant could not have contemplated the
complainant's non-existent right."

Mike Rodenbaugh's views are are inconsistent with the above long established
consensus. If as he wrote " Abuse during that time is an abusive
registration." then this would make reverse domain name hijackers very
happy, as they could register a TM and then go after a domain name that was
registered 10 years BEFORE the TM.

UDRP makes a dual test of bad faith "registration" AND "use" for that
specific reason. While the pro-complainant forces want to eliminate that
word "AND" as I mentioned in my prior post, in order to expand the number of
complaints they can generate, it's obvious that the word "AND" is there for
a very good reason (to protect registrants), the same reason that the GNSO
council intentionally limited the scope of this group.

Sincerely,

George Kirikos
http://www.leap.com/