Re: [gnso-rap-dt] action items - gripe sites
- To: Registration abuse list ICANN <gnso-rap-dt@xxxxxxxxx>, owner-gnso-rap-dt@xxxxxxxxx
- Subject: Re: [gnso-rap-dt] action items - gripe sites
- From: martinsutton@xxxxxxxx
- Date: Mon, 17 May 2010 09:04:04 +0100
I suggest the following amendments (in red) to incorporate the issue of
iconsistent decisions for gripe sites within the UDRP recommendation:
5.1.1 Issue / Definition
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
registration abuse in the ICANN community, and the UDRP was originally
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
As part of the RAPWG's work to catalog various types of abuse,
Cybersquatting was targeted as an area for further work. Developing a
universal, global, and technically operable definition for Cybersquatting
has been challenging, particularly as the RAPWG sought to balance the
needs and interests of all parties that can potentially be harmed by the
practice. The RAPWG draws a distinction between competing but potentially
legitimate claims and Cybersquatting, which denotes a bad-faith use of
another party's mark. There was consensus in the RAPWG that provisions
4(a) and 4(b) of the UDRP are a sound definition of Cybersquatting.
Several attempts to expand the definition beyond these by borrowing from
other sources (e.g. the Anti-Cybersquatting Consumer Protection Act
(ACPA)) have been challenging, and consensus on how to proceed ultimately
broke down. There was minority interest in expanding the definition to
include additional elements of bad faith intent, as denoted in the ACPA
(i.e., 5(v) and 5(vi)). For further details, please see
The UDRP was specifically designed to address Cybersquatting. It is used
to settle disputes between parties who have competing trademark claims as
well as other cases in which the respondent may have no trademark claim at
all or is acting in bad faith. Only disputes in which ?the domain name is
identical or confusingly similar to a trademark or service mark in which
the complainant has rights? are applicable for UDRP arbitration. Uniform
Domain Name Dispute Resolution Policy,
http://www.icann.org/en/udrp/udrp-policy-24oct99.htm The ICANN Web site?s
UDRP page also notes: "Disputes alleged to arise from abusive
registrations of domain names (for example, cybersquatting) may be
addressed by expedited administrative proceedings that the holder of
trademark rights initiates by filing a [UDRP] complaint with an approved
dispute-resolution service provider.?
Notwithstanding its shortcomings, the UDRP has generally been considered a
success. It has been used to settle thousands of cases, and WIPO has
claimed that the UDRP has been a deterrent to undesirable registration
Since it went into effect in 1999, there have also been complaints about
the UDRP. Some of these present policy and process issues. These
criticisms have included: the following:
Complainants can forum-shop in attempts to find arbitrators more
likely to rule in the complainant?s favor.
Inconsistency with decisions relating to similar complaints,
notably gripe sites that contain brands within the domain name. This is
covered in more detail in section 5.3.
Complainants have the ability to re-file a complaint for the same
name against the same respondent ? in effect re-trying the same case in
hopes of achieving a different outcome.
The UDRP requires the complainant prove that the domain name ?has
been registered and is being used in bad faith.? However, many UDRP cases
have been decided without the domain names having ever been used.
Observers have noted that the usage requirement has sometimes been ignored
in the UDRP ?case law? that has developed over the years.
The UDRP is too expensive and too time-consuming for some brand
owners, who wish to pursue large numbers of potentially infringing domain
The UDRP procedures lack some safeguards that are generally
available in conventional legal proceedings, such as appeals.
In a possibly related issue, ICANN apparently does not enter into
contracts with its Approved UDRP Providers.
http://forum.icann.org/lists/cac-prop-supp-rules/msg00004.html This may
present a number of issues. For example, in the absence of such contracts,
it is unclear whether ICANN has the ability to review or assure general
uniformity or procedural compliance.
One UDRP service provider, the Czech Arbitration Court, recently
proposed changing some of its own supplemental rules in order to create an
?expedited UDRP.? Some community members asked whether the proposed scheme
presented substantive issues that can and should only be dealt with in the
main ICANN UDRP Rules.
Some members of the RAPWG felt that the UDRP is a useful mechanism to
counter some elements of cybersquatting, but were of the opinion that:
"the scale of cybersquatting is overwhelming and the drain on cost and
resources for brand-owners to respond in all instances by using only the
UDRP as a remedy is prohibitive. In addition, there is insufficient
up-front protection mechanisms to prevent registrants from initially
registering infringing domains which are freely monetized from the date of
registration, via PPC and other online advertising methods, thus earning
revenue for the registrant. They can then simply wait until a UDRP action
is commenced before they give up the domain, without penalty. The burden
therefore rests with the trademark owner to monitor, investigate and
pursue litigation in order to provide protection to Internet users. This
burden often includes the registration and ongoing management of large
domain name portfolios, consisting mainly of unwanted domains that benefit
only the Registry, Registrar and ICANN parties. This approach is already a
major concern for trademark owners, in terms of cost and resources, with
the existing level of gTLDs and ccTLDs, let alone the anticipated growth
of new gTLDs and IDNs."
Other members disagreed with those points, expressing the following
a) The URDP is the long-standing mechanism for addressing
cybersquatting. A better first step would be to establish if or where the
UDRP is ineffective, and make policy decisions based on facts and data.
While some claim that ?the scale of cybersquatting is overwhelming," the
scale issue was not been quantified in or for the RAPWG, and an adequate
factual basis was not provided by the IRT.
b) Those proposed rights-protection mechanisms upend several
long-established legal principles. One is that the registrant is the party
responsible for ensuring he or she is not infringing upon the rights of
others. Another is that rights holders have the responsibility for
protecting their intellectual property, and that shifting responsibility,
cost, or liability for such to ICANN-contracted parties is unfair.
c) It is inadvisable to begin considering the imposition of those
evolving rights protection mechanisms in the existing TLDs, when they are
so controversial over in the new TLD discussion. There are many legal,
business, and speech issues involved. The effectiveness of those proposed
mechanisms is hypothetical, it is not known what impacts or unintended
consequences they may have, and it is unknown if they can deliver the cost
and process benefits their advocates promised or asked for. It is unknown
what consequences those mechanisms may have for speech and expression.
Some parties have called for imposition of the trademark clearinghouse RPM
during ongoing registry operations, which might effectively stop
real-time, first-come registrations. This would be a major change to the
Cybersquatting - Recommendation 1
The RAPWG recommends the initiation of a Policy Development Process by
requesting an Issues Report to investigate the current state of the UDRP,
and consider revisions to address cybersquatting if appropriate. This
effort should consider:
How the UDRP has addressed the problem of cybersquatting to date, and any
insufficiencies/inequalities associated with the process.
Whether the definition of cybersquatting inherent within the existing UDRP
language needs to be reviewed or updated.
How the UDRP could address the inconsistencies of decisions relating to
gripe sites using domain names that include brand names within the string.
5.3 Gripe Sites; Deceptive, and/or Offensive Domain Names
5.3.1 Issue / Definition
The issue is whether the registration these kinds of domain names are
simply a form of cybersquatting or whether the registration of such domain
names should be addressed as a separate form of registration abuse, and
whether a consistent policy framework addressing this category can or
should be applied across all ICANN-accredited registries and registrars.
Gripe/Complaint Sites a.k.a. ?Sucks Sites?: Web sites that
complain about a company?s or entity?s products or services and uses a
company?s trademark in the domain name (e.g. companysucks.com).
Pornographic/Offensive Sites: Web sites that contain adult or
pornographic content and uses a brand holder?s trademark in the domain
name (e.g. brandporn.com).
Offensive strings: Registration of stand-alone dirty words within
a domain name (with or without brand names).
Registration of deceptive domain names: Registration of domain
names that direct unsuspecting consumers to obscenity or direct minors to
harmful content?sometimes referred to as a form of ?mousetrapping.?
The RAPWG discussed the issue of whether the registration of these types
of domain names should be addressed as a unique category of registration,
with discussions that centered on several different areas:
i. Gripe/Complaint Websites:
Several members pointed to the freedom of speech laws (not only in the
U.S. but internationally) that govern gripe and complaint sites using a
company?s trademark in the domain name, and indicated that registration of
these names should not be considered as a separate abuse category but
rather should be considered as potential cases of cybersquatting, if
anything. Other members also discussed the intrinsic value of gripe and
complaint Web sites to companies and organizations that are seeking to
understand the problems that customers may have with respect to their
products or services. The WG noted that aggrieved parties could turn to
the courts and the UDRP to remedy any claims they may have with respect to
the use of trademarks in a domain name. There was some discussion that
decisions have not been consistent with respect to gripe and complaint
sites, although it is generally understood that that truthful statements
in gripe and complaint sites are protected free speech. Examples include:
. A U.S. court ruled that a disgruntled customer of an insurance firm
cannot be sued for defamation over statements he made on his ?gripe site?
because those statements are protected free speech.
http://www.acluva.org/docket/pleadings/lamparello_opinion.pdf - A
U.S. Appeals Court found that a Web site using the domain name
fallwell.com, set up to criticize evangelist Jerry Falwell, did not
violate trademark laws. There was no likelihood of confusion, ruled the
Afigure behind controversial business schemes failed in his bid to gain
control of the .COM Internet address consisting of his name. A site that
criticizes his activities was allowed to keep the name.
The domain name AirFranceSucks.com was transferred to Air France. But the
airline's victory at arbitration was not without controversy: panelists
disagreed about what the word 'sucks' really means to Internet users.
The Panel noted that that the domain name Radioshacksucks.com was not
redirected to a ?gripe? Web site, but was pointing to a Web site with
various pay-per-click links mainly aimed at directing visitors to
competing third party commercial Web sites. The Panel found for the
Complainant and transferred the name.
At least one article has criticized some of the current UDRP
decisions in this area. That article can be found at:
ii. Pornographic Websites/Registration of Offensive Strings:
There appears to be some distinction however between complaint and gripe
sites and the registration of offensive strings, and whether these should
be treated differently. The registration of complaint site names (a.k.a.
?sucks sites?) appears to have a direct impact on organizations and
companies, while the registration of offensive words have a more direct
impact on consumers. A domain name that contains a brand and an offensive
word and also points to a Web site that contains pornographic content can
tarnish the reputation and the image of a company?s brand. In addition to
court action, the UDRP is a tool that companies and organizations can turn
to turn to remediate this problem because of the presence of the brand
name. A recent article in Computerworld magazine
discusses the increase in cybersquatting abuse in general. The article
points to the example of the Web site FreeLegoPorn.com that began
publishing pornographic images created with Lego toys. The trademark owner
Lego Juris AS filed a UDRP complaint with the World Intellectual Property
Organization's (WIPO) Arbitration and Mediation Center, which ultimately
ruled in its favor.
However, a domain name that is registered for the sole purpose of
misleading a consumer can be extremely harmful. For example, the U.S.
government enacted the Truth in Domain Names Act (18 USC Sec. 2252B),
which makes it a crime to knowingly register a domain name with the intent
to mislead a person into viewing obscene material. It also makes it a
crime to register a domain name with the intent to deceive a minor into
viewing harmful material. These domain names generally encompass typos
(but not always) of recognizable names and trademarks as a means of
confusing people into visiting objectionable Web sites. Moreover, a number
of ccTLDs maintain policies governing the registration of objectionable
words, with at least one ccTLD registry (.US) apparently preventing the
registration of the ?seven dirty words? as per a government policy. (The
United States Federal Trade Commission also regulates the use of these
seven words on broadcast television and radio stations in the U.S.)
The RAPWG discussed some of the practical business challenges that could
be presented for a registry to adopt a policy that blacklists all names
that also contain some form of prohibited word. For example, the RAPWG
noted the difficulty in (i) trying to monitor the use of expletives in
different languages, (ii) continuing to adapt to the evolution of
obscenities in the vernacular of a specific language, and (iii) addressing
?gaming? of the system in this area.
RAPWG members also pointed out that ccTLDs and gTLDs are not in equivalent
positions in these matters. ccTLD operators are associated with certain
countries, and are usually obligated to adhere to their governments?
directives and laws, which reflect varying local standards of decency. In
contrast, gTLDs are by definition global, and it would be difficult to
determine baselines and balances for issues involving free speech and
morals. Members commented that ICANN is not in a good position to enforce
morals in relation to domain names. The issue was effectively settled in
.COM/.NET/.ORG in 1999.
The RAPWG members generally agreed that gripe site and offensive domain
names that use a brand owner?s trademark are adequately addressed in the
context of Cybersquatting for purposes of establishing consistent
registration abuse policies in this area.
There was rough consensus to make no recommendation.
The majority of RAPWG members expressed that gripe site and offensive
domain names that use trademarks are adequately should be addressed in the
context of cybersquatting and the UDRP for purposes of establishing
consistent registration abuse policies in this area, and that creating
special procedures for special classes of domains, such as offensive
domain names, may present problems.
Martin C SUTTON
Manager, Group Fraud Risk and Intelligence | HSBC HOLDINGS PLC HGHQ
Group Security & Fraud Risk
8 Canada Square,Canary Wharf,London,E14 5HQ,United Kingdom
Phone. +44 (0)20 7991 8074 / 7991 8074
Mobile. +44 (0) 7774556680
"Mike O'Connor" <mike@xxxxxxxxxx>
Sent by: owner-gnso-rap-dt@xxxxxxxxx
May 10 2010 21:19
Mail Size: 6421
Registration abuse list ICANN <gnso-rap-dt@xxxxxxxxx>
Re: [gnso-rap-dt] action items
HSBC Holdings plc - GMO
ah! right you are. thanks Phil.
On May 10, 2010, at 11:51 AM, Phil Corwin wrote:
> I believe we also agreed that Berry would work something up on reverse
domain name hijacking and then run it past Faisal and me before
distributing more broadly.
> Philip S. Corwin
> 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 [owner-gnso-rap-dt@xxxxxxxxx] On
Behalf Of Mike O'Connor [mike@xxxxxxxxxx]
> Sent: Monday, May 10, 2010 12:31 PM
> To: Registration abuse list ICANN
> Subject: [gnso-rap-dt] action items
> here's my lame summary of action items from the call. Berry's the big
winner, he gets the most. :-)
> Berry -- language to move the registration abuse vs use abuse
conversation up to the Council
> Berry -- rework the language on fake renewal notices so that the logic
flows between the working group, the Council and ICANN Compliance
> Berry -- rework the slamming/shakedown language to incorporate our
choice of language plus various edits
> Martin -- language regarding gripe sites worked into the URDP language
> Greg -- confer with Chuck Gomes about participation/voting precidents
> Marika -- develop a first draft of the Conclusions and Next-Steps
> i think that's the list.
> - - - - - - - - -
> phone 651-647-6109
> fax 866-280-2356
> web www.haven2.com
> handle OConnorStP (ID for public places like Twitter, Facebook, Google,
- - - - - - - - -
handle OConnorStP (ID for public places like Twitter, Facebook,
HSBC Holdings plc
Registered Office: 8 Canada Square, London E14 5HQ, United Kingdom
Registered in England number 617987
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