Re: [gnso-rap-dt] action items - gripe sites

[martinsutton@xxxxxxxx]

Hi all,

I suggest the following amendments (in red) to incorporate the issue of 
iconsistent decisions for gripe sites within the UDRP recommendation:

5.1     Cybersquatting

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 
Cybersquatting. http://www.icann.org/en/udrp/udrp-policy-24oct99.htm 

5.1.2   Background
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 
https://st.icann.org/reg-abuse-wg/index.cgi?cybersquatting. 

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.?  
http://www.icann.org/en/udrp/udrp.htm 

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 
behavior. 
http://www.wipo.int/pressroom/en/html.jsp?file=/redocs/prdocs/en/2005/wipo_upd_2005_239.html
 
 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 
names. 
        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. 
http://forum.icann.org/lists/cac-prop-supp-rules/index.html 

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 
opinions:
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 
industry.

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.?

5.3.2   Background
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: 
 
http://decisions.courts.state.ny.us/fcas/fcas_docs/2005oct/30060065920045sciv.pdf
. 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 
Court.
 http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-0731.html - 
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.
 http://www.wipo.int/amc/en/domains/decisions/html/2005/d2005-0168.html - 
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.
 http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-1077.html- 
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: 
http://domainnamewire.com/2009/12/04/freedom-of-speech-a-concept-not-limited-to-yankees/
 
? 

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 
http://www.computerworld.com/s/article/print/9134605/Domain_name_wars_Rise_of_the_cybersquatters?taxonomyName=Networking+and+Internet&taxonomyId=16
 
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.

5.3.3   Recommendations

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. 


Kind regards,

martin

Martin C SUTTON 
Group Risk 
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
Email.       martinsutton@xxxxxxxx
________________________________________________________________



"Mike O'Connor" <mike@xxxxxxxxxx> 
Sent by: owner-gnso-rap-dt@xxxxxxxxx
May 10 2010 21:19

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Registration abuse list ICANN <gnso-rap-dt@xxxxxxxxx>
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Subject
Re: [gnso-rap-dt] action items

  Entity
   HSBC Holdings plc - GMO




ah!  right you are.  thanks Phil.

mikey


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
> 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 [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 
section
> 
> i think that's the list.
> 
> mikey
> 
> 
> - - - - - - - - -
> phone   651-647-6109
> fax             866-280-2356
> web     www.haven2.com
> handle  OConnorStP (ID for public places like Twitter, Facebook, Google, 
etc.)

- - - - - - - - -
phone            651-647-6109 
fax                              866-280-2356 
web              www.haven2.com
handle           OConnorStP (ID for public places like Twitter, Facebook, 
Google, etc.)





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