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

[George Kirikos <icann+rap@xxxxxxxx>]

Hello,

On Thu, May 28, 2009 at 10:36 PM, Neuman, Jeff wrote:
>  I do agree with you that registration and use are two different concepts.

I'm glad to see that we're not in disagreement, and are supportive of
Mike O'Connor's argument during the last call. I would appreciate the
views of other members of the workgroup, especially if they disagree
as Mike R. does, when he wrote:

"We are wasting tons of time on this semantic adventure, trying to
define when registration begins and ends, when it is very obvious that
it simply continues until it is terminated."

as I do not think we are wasting time at all if there are folks who
don't understand (or don't want to go along with, or disagree with)
the GNSO council's scope directive.

> However, I personally also believe that bad faith can be inferred in certain 
> limited circumstances by the mere registration of domain names without use if 
> you also look at other contextual factors.  For example, a person who has a 
> large portfolio of domain names all resembling typos of globally protected 
> brands can be suspect.  In other words, (and I am making this example up) if 
> all you look at is one registration goggle.com, that seems harmless enough 
> especially if not used.  But let's suppose the person who has goggle.com also 
> has gooogle.com, googgle.com, ggooogle.com, goooggle.com and 50 other similar 
> variations AND they have 50 typo variations of the Verizon trademark, etc., 
> then that context may lead one to infer that the original goggle.com may have 
> been registered in bad faith (even if not used).

Yes, the key is that INFERENCE still requires BOTH elements be proved,
even if it's a proof by inference and not a direct proof. So, this
fiction that:

http://forum.icann.org/lists/gnso-rap-dt/msg00181.html

"There are plenty of WIPO and NAF precedents for the notion that bad
faith at time of renewal = bad faith registration. "

definitely needs to be corrected. If the test is "OR", then by
definition one only needs to prove a single element, not BOTH. This
would eliminate many defences completely if complainants had to only
prove a single element.

As a thought experiment, suppose there was a registrant who owned
Example.com created in 1992, before a TM for "Example" in 2007 in the
category of Spoons, with first use in commerce in 2007. In 2008, the
registrant puts up a domain name parking page, all with spoons. In
2009, the domain name is renewed, and in 2010, the owner of the TM
files a UDRP.

Normally, to win a case like this, a registrant could simply state
"This UDRP *must* fail because the domain name was registered in 1992,
15 years before the TM even came into existence. He would not have to
argue about usage, etc, or. The panel has to find for the owner of the
domain name, despite how the domain is currently being used.

But, in Mike R's world, tell me what happens? Is the "registration" no
longer an event (linked to creation), but is instead some continuum,
so any use in 2008 and a renewal in 2009 begins to make some sort of
difference? If so, this is a MAJOR change from the present (and one we
oppose vehemently). UDRP was not designed for this. Infringing use is
of course a bad thing, but the place to handle that is in the courts,
as UDRP was specifically designed for "clear cut" cases of
cybersquatting. While complainants might want to expand the rules so
that non "clear cut" cases are compelled to be brought using the UDRP,
they have to go through a reform of the UDRP to do this.

Sincerely,

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