[gnso-rap-dt] (Cybersquatting subgroup) Definition of Cybersquatting

[George Kirikos <icann+rap@xxxxxxxx>]

Hi folks,

Marika suggested we simply discuss the topic on the mailing list, but
"tag" the subject accordingly.

Looking at the ACPA:

http://www4.law.cornell.edu/uscode/uscode15/usc_sec_15_00001125----000-.html#d_1

Section 1125.(d)(1)(B)(ii) has important counterbalancing language
that is missing from the wiki, in particular:

"Bad faith intent described under subparagraph (A) shall not be found
in any case in which the court determines that the person believed and
had reasonable grounds to believe that the use of the domain name was
a fair use or otherwise lawful."

Also, Section 1125.(d)(1)(B)(i) says that "a court may consider
factors such as" and doesn't use the word "evidence."

In regards to point (vi), note the following page that discussed the
"spectrum of distinctiveness"

http://en.wikipedia.org/wiki/Trademark_distinctiveness

whereas simply using the word "distinctive" in (vi) of the wiki draft
definition doesn't provide any form of guidance as to where along the
spectrum one should draw the line. Also note the section on "Acquired
distinctiveness". This could be used to argue that *all* registered
marks are by definition "distinctive" because they met the
registration standard (at least in the USA). Thus, a domain registrant
owning two generic dictionary word domains could be caught by the
language in (vi), because nearly every dictionary word has some
registered trademark somewhere in the world. This would be a huge
change, to call these innocent registrants "cybersquatters" or that
their registration practices are "evidence of bad faith." It simply
isn't so.

Thus, I think we should stick to the UDRP definition of
cybersquatting, for now, for purposes of this group. If we're going to
recommend a PDP, here are some issues that should be discussed in a
future formulation of the UDRP:

(1) whether the domain registrant is in the same country as the
registered mark holder (e.g. a registered trademark owner in France
has its rights limited to France, and a domain owner in Mexico may
have a perfect right to use the same mark, even in the same class of
goods and services, as long as they are not targeting French
consumers)

(2) whether the domain's creation date precedes that of the registered
mark. We've seen all too often cases where a domain registrant is
described as a "cybersquatter" even though they have owned the domain
name for 10+ years before the markholder even created and used their
mark, let alone registered it as a trademark.

(3) concept of laches; if a markholder has "slept on their rights",
and not taken action against a domain registrant within a  certain
time period, their claim should be barred. Alternatively, a "statute
of limitations" should apply. UDRP was designed for "clear cut" cases,
not cases where so much time has elapsed since registration of the
domain name that memories have faded, etc.

(4) whether the mark is figurative, as opposed to a word mark

I'll leave it at that, for now, but obviously UDRP reform would be a
complex matter, requiring careful balance of both sides, and should
not create any *new* rights for mark holders that do not reflect
international legal consensus. Even WIPO, for example, has not formed
a consensus on "famous" marks, yet the IRT ignored this basic fact,
amongst other glaring problems with their entire approach and
recommendations.

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/