RE: [gnso-rap-dt] Cybersquatting discussion

["Greg Aaron" <gaaron@xxxxxxxxxxxx>]

The issue of whether “and use” should be modified in the UDRP seems like a
question that could be addressed in a PDP.  That “and use” issue is
included in the laundry list of UDRP issues in the Initial Report.



Our WG has agreed to recommend a PDP to look at the UDRP.  We have never
agreed to recommend specific changes to the UDRP.  That kind of thing is for
a successor WG to do, if the GNSO chooses to pursue it.



All best,

--Greg







From: Phil Corwin [mailto:pcorwin@xxxxxxxxxxxxxxxxxx]
Sent: Wednesday, May 12, 2010 3:12 PM
To: Frederick Felman; Marika Konings; RAP-WG
Subject: RE: [gnso-rap-dt] Cybersquatting discussion
Importance: High



I’m weighing in to back Wendy here. I don’t see how you can have a
statement noting a consensus that “provisions 4(a) and (b) of the UDRP
[reproduced below, with emphasis] are a sound definition of cybersquatting”
and then propose a definition which departs in a very fundamental way from
that “sound definition”. The current statement does not cite 4 and b as a
sound definition of a “subset” of cybersquatting.



Under subsection registration and bad faith use is one of the three separate
elements that the complainant must prove to prevail in a UDRP (regardless of
how some arbitrators play fast and loose with that requirement) - so
registration absent bad faith use should result in a failed complaint.
Subsection b provides non-exclusive examples of evidence that “the
registration and use of a domain name is in bad faith”.



If the WG wants to make a case that the “and” should be dropped in favor
of “or” they should make it, not disingenuously cite as a “sound
definition” a provision of the UDRP that requires a conjunctive and does
not permit a disjunctive determination. They can certainly cite practice at
certain ccTLDs as providing some precedent for that position. But if a
majority wants to advocate that very significant change in the definition of
cybersquatting they should be upfront about it and not pretend that it is
consistent with the present UDRP - and I would hope they would also propose
safeguards if such a change we made to limit potential abuses.



That is, if a domain is registered but never used (does not resolve), how is
an arbitrator or panel supposed to divine that it was intended to be used in
bad faith other than in the very limited circumstance that it is a
trademarked, non-dictionary word (e.g., Microsoft, not Apple) and it has
been offered for sale to an owner of the mark? Given that nearly every
dictionary word is trademarked for something, allowing a complaint to be
brought absent actual bad faith use - other than in carefully circumscribed
circumstances - is an invitation to UDRP abuse by complainants at the
expense of registrants.



In any event, the issue of whether “and” should be replaced by “or” is
clearly a question that can be addressed if we have a comprehensive PDP on
UDRP reform - so if the WG wants to tee that up as a suggested issue for
such a PDP then fine, it’s clearly going to be on the table - but please
don’t propose UDRP reform that only considers changes from complainants’
perspective, which is a non-starter anyway.



While I’m at it, I’m also uncomfortable with the way PPC is cited as the
primary profit motive behind cybersquatting, which seems to run somewhat
counter to the Interim report’s statement that:



…pay‐per‐click advertising is not in and of itself a registration abuse,
and that bad‐faith use of trademarks in domain names is a Cybersquatting
issue that can be addressed under the UDRP. The abuse of a PPC system for
illicit gain is most appropriately addressed by the operator of the PPC
advertising network (e.g. Google Adsense).



In any event, PPC monetization of another’s mark is already a use abuse
under the UDRP, so how is that in the province of a group that is supposed
to be focused on stand-alone registration abuse?



Final words: In seeking to end some abuses let’s not set up the foundation
for others.









4. Mandatory Administrative Proceeding.

This Paragraph sets forth the type of disputes for which you are required to
submit to a mandatory administrative proceeding. These proceedings will be
conducted before one of the administrative-dispute-resolution service
providers listed at www.icann.org/udrp/approved-providers.htm
<http://www.icann.org/dndr/udrp/approved-providers.htm>  (each, a
"Provider").

a. Applicable Disputes. You are required to submit to a mandatory
administrative proceeding in the event that a third party (a "complainant")
asserts to the applicable Provider, in compliance with the Rules of
Procedure, that

(i) your domain name is identical or confusingly similar to a trademark or
service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain
name; and

(iii) your domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of
these three elements are present.

b. Evidence of Registration and Use in Bad Faith. For the purposes of
Paragraph <http://www.icann.org/en/dndr/udrp/policy.htm#4aiii#4aiii>
4(a)(iii), the following circumstances, in particular but without
limitation, if found by the Panel to be present, shall be evidence of the
registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired
the domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the complainant who is the
owner of the trademark or service mark or to a competitor of that
complainant, for valuable consideration in excess of your documented
out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of
the trademark or service mark from reflecting the mark in a corresponding
domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of
disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract,
for commercial gain, Internet users to your web site or other on-line
location, by creating a likelihood of confusion with the complainant's mark
as to the source, sponsorship, affiliation, or endorsement of your web site
or location or of a product or service on your web site or location.





Philip S. Corwin
Partner
Butera & Andrews
1301 Pennsylvania Ave., NW
Suite 500
Washington, DC 20004

202-347-6875 (office)

202-347-6876 (fax)

202-255-6172 (cell)

"Luck is the residue of design." -- Branch Rickey

  _____

From: owner-gnso-rap-dt@xxxxxxxxx [mailto:owner-gnso-rap-dt@xxxxxxxxx] On
Behalf Of Frederick Felman
Sent: Wednesday, May 12, 2010 1:14 PM
To: Marika Konings; RAP-WG
Subject: Re: [gnso-rap-dt] Cybersquatting discussion
Importance: High



Marika, thanks for going through that exchange - the only thing I’d add is
the text from an earlier email that I sent:

“…Moreover, there's precedence for use of "or" and it makes sense:

1) many ccTLDs in multiple ICANN regions use "or" in their definition of
Cybersquatting for the purpose of UDRP including .AU and .ES

2) the basis for the GNSO policy changes to reduce kiting was a case that
demonstrated registration abuse involving Cybersquatting.  One look at the
exhibits link below shows a plainly an example of Cybersquatting as a pure
registration abuse in an actual case.”

Best regards - Fred

On 5/10/10 10:56 AM, "Marika Konings" <marika.konings@xxxxxxxxx> wrote:

Dear All,

As discussed on our call today, please find below the main thread from the
different emails concerning cybersquatting. Please let me know if there is
anything missing. You are encouraged to continue the discussion on the
mailing list ahead of next week’s meeting.

With best regards,

Marika

=================================

>From Greg:
5.1.1: Our report says: "Cybersquatting is the deliberate and bad-faith
registration or use of a name that is a registered brand or mark of an
unrelated entity, for the purpose of profiting (typically, though not
exclusively, through pay-per-click advertisements).... There was consensus
in the RAPWG that provisions 4(a) and 4(b) of the UDRP are a sound
definition of Cybersquatting."

In the Nairobi comment session, Bruce Tonkin noted that the above is
internally inconsistent.  Profit is not always a motive for all
cybersquatters.  Sections 4(a) and 4(b) of the UDRP mentions other proofs of
bad faith (such as “disrupting the business of a competitor.”)  And its
mentions profiting by getting people to come to the site.

So, I propose we just delete the phrase "for the purpose of profiting
(typically, though not exclusively, through pay-per-click advertisements)".
I think that would make the statement accurate, and respects the
conversations we had in the WG.  Are there any objections?

>From Rod:
How about this sentence reshuffling alternative that keeps the primary
methodology mentioned (which people are familiar with) and should take care
of Bruce's concern:

Cybersquatting is the deliberate and bad-faith registration or use of a name
that is a registered brand or mark of an unrelated entity, typically, though
not exclusively, for the purpose of profiting through pay-per-click
advertisements...

>From James:
....through pay-per-click advertisements or other means of traffic
diversion....

>From Mike R:
I like James' better than Rod's version; but I like Greg's even better since
it is most broad.  Cybersquatting is bad faith registration; bad faith is
defined through analysis of many factors, including 'for profit' and 'not
for profit' actions of the defendant.

>From Wendy:
One critical edit: "cybersquatting is the deliberate and bad-faith
registration *AND* use of a name...," as the UDRP defines it.

>From Greg:
Wendy's edit is accurate. Regarding Rod: if we are referencing the
definition in the UDRP (and the group had consensus agreement that it was
the good definition of cybersquatting), why don't we just reference instead
of making characterizations about motive? Just seems cleaner not to.

>From Fred:
The edit is inaccurate.  It does not reflect the decision by the group, the
report as submitted the text of our definition of Cybersquatting is cited in
the report on page 25 in Section 5.1.1 as follows:

"Cybersquatting is the deliberate and bad-faith registration or use of a
name that is a registered brand or mark of an unrelated entity, for the
purpose of profiting (typically, though not exclusively, through
pay-per-click advertisements). Cybersquatting is recognized as an abuse in
the ICANN community, and the UDRP was created to address this abuse. There
was consensus in the RAPWG that provisions 4(a) and 4(b) of the UDRP are a
sound definition of cybersquatting.11"

I disagree with the edit as proposed

>From Jeff N.
I actually agree with Fred here and .us is one of the ccTLDs that takes the
"or" approach.  Wendy's comment reflects what is currently in the UDRP, but
that does not mean that that is the absolute in definitions.  It just means
that the UDRP only addresses what some view as a subset of cybersquatting.