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

["Greg Aaron" <gaaron@xxxxxxxxxxxx>]

Gripe sites seem like an issue covered under the existing Recommendation 
language:

“How the UDRP has addressed the problem of cybersquatting to date, and any 
insufficiencies/inequalities associated with the process.”

 

So I am wholeheartedly in favor of noting the issue in the list of 
cybersquatting issues in the paper’s body.  I am reticent to change 
Recommendations, given that so much work  went into them already, the date is 
late, and am not sure that gripe sites deserve special call-out and prominence 
above all the other URDP issues that are also listed in the paper.  

 

All best,

--Greg

 

 

From: martinsutton@xxxxxxxx [mailto:martinsutton@xxxxxxxx] 
Sent: Monday, May 17, 2010 4:04 AM
To: Registration abuse list ICANN; owner-gnso-rap-dt@xxxxxxxxx
Subject: Re: [gnso-rap-dt] action items - gripe sites

 


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> 
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> 
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> 
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> 
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>
 
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> 
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> 
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>
         
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>         
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>       
  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>       
  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>       
  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/>
 
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>
 
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.        <mailto:martinsutton@xxxxxxxx> 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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