RE: [gnso-sti] Transfer of domain name to claimant after successful URS

[Jeff Eckhaus <eckhaus@xxxxxxxxxxxxxxx>]

Alan,

Let me give an example of the problems I see with the transfer to a claimant 
after a successful URS.

As a registrar I have a registrant that is starting an online jewelery store 
and decides to place a Rolex logo on their website, not to sell fake Rolexes 
but as an indication of the type of business they are in. As we all know Rolex 
is very vigilant about their mark and maybe decides to file a URS against the 
registrant. They may not go this route but it is an option available to them. 
Now, the small business owner may be in violation of the URS and the website is 
now suspended and the owner loses the URS and the domain and it is transferred 
to Rolex. There may be no chance for the registrant to correct their actions. 
As a person who has to deal with customers and small businesses on a daily 
basis I can tell you that many are start up businesses with little education of 
the laws. While not knowing the law is not an excuse to break it, I would like 
to give this registrant a chance to correct their error and keep their 
businesses domain name. 

These sorts of issues are not fringe cases, but the kind of questions and 
problems that as a registrar we see on a daily basis. Hope this helps shed 
light on my position.


Jeff


________________________________________
From: owner-gnso-sti@xxxxxxxxx [owner-gnso-sti@xxxxxxxxx] On Behalf Of Alan 
Greenberg [alan.greenberg@xxxxxxxxx]
Sent: Monday, November 30, 2009 8:57 PM
To: GNSO STI
Subject: RE: [gnso-sti] Transfer of domain name to claimant after  successful 
URS

At-Large generally supported allowing a transfer after a successful URS, 
presuming sufficient time is provided for a late URS registrant reply (perhaps 
90 days after default). If allowed, it should preferably be structured to be 
done without major registry re-engineering. We would support allowing a URS 
claimant to pay for an extension of the registration if too close to 
expiration, and then to be allowed to transfer at expiration time. Since the 
domain name will already be flagged (since it must be pointing to a URS 
provider URS page), it should be possible to take this special action if the 
URS claimant has indicated the desire to transfer when filing the URS claim.

We understand that this may take some generic names out of circulation, but the 
same can and will happen based on TM holders own actions in defensive 
registration and this is likely to have a smaller net effect.

Alan

At 30/11/2009 09:34 PM, Nevett, Jonathon wrote:
Mike:

It would be great if you could provide some evidence to back up some of your 
statements.

For example, you say that the URS would “take almost as much time as a UDRP 
decision.”  I believe that we are contemplating a process of approximately 25 
days from complaint to decision.  What is the average length of a UDRP from 
complaint to decision in a contested case?  Does WIPO publish that kind of 
data?  Perhaps Mark, as a UDRP panelist, would know generally how long it takes.

You also say that a URS would “cost almost as much” as a UDRP case.  The IRT 
recommendation was in the $100-200 range and the ICANN staff recommendation was 
$300 – isn’t that significantly lower than the current UDRP fees?

The goal of the URS was to give an aggrieved TM holder the choice between a 
cheaper and faster process that would result in a takedown vs. a longer more 
expensive process that would result in a transfer.  I agree with you that if we 
continue to morph the URS into the UDRP, it’s not worth having both.  The 
better approach, however, is to keep the recommended distinctions and provide 
TM holders with a choice.

Thanks.

Jon

________________________________
From: owner-gnso-sti@xxxxxxxxx [ mailto:owner-gnso-sti@xxxxxxxxx] On Behalf Of 
Mike Rodenbaugh
Sent: Monday, November 30, 2009 8:46 PM
To: 'GNSO STI'
Subject: RE: [gnso-sti] Transfer of domain name to claimant after successful URS

Jeff,

The URS was a compromise devised by a small subset of the community, in 
response to the larger issue of deterring cybersquatting in new TLDs.  The URS, 
if it does not have a transfer option, will not have any deterrent effect.  It 
will take almost as much time as a UDRP decision, and cost almost as much, 
while still forcing a UDRP or court action in order to effectively solve the 
problem.  Why would anyone use it?

The UDRP has proved ineffective as a deterrent, since the advent of PPC 
advertising (and then domain tasting), due to the cost and time required for a 
decision, compared to the cost and time required to register clearly infringing 
domain names.  This is obvious, and is the reason why we are all trying to find 
a better solution that will deter obviously bad behavior.  To develop a cheaper 
and quicker process for obvious cases, while still protecting due process 
interests of registrants, was the reason for the URS (and the IRT).

While the ‘no transfer’ version of the URS might have made more sense if the 
entire ‘tapestry’ of RPMs were adopted, it makes no sense when the only new 
solutions will be a Clearinghouse and the URS.  In any event, the IRT was 
incredibly rushed, and likely did not think through all of the issues as 
thoroughly as they would have done had they had more time and broader input.  
This is why we are now convened as the STI, to come up with something better.

Mike Rodenbaugh
RODENBAUGH LAW
548 Market Street
San Francisco, CA  94104
(415) 
738-8087<http://service.ringcentral.com/ringme/callback.asp?mbid=57178438,0,&referer=http://rodenbaugh.com/contact>
http://rodenbaugh.com<http://rodenbaugh.com/>


From: owner-gnso-sti@xxxxxxxxx [ mailto:owner-gnso-sti@xxxxxxxxx] On Behalf Of 
Jeff Eckhaus
Sent: Monday, November 30, 2009 5:24 PM
To: 'Neuman, Jeff'; Alan Greenberg; GNSO STI
Subject: RE: [gnso-sti] Transfer of domain name to claimant after successful URS

I know we have debating this issue and the more that I think about this the 
more I think we are moving away from the original concept of the URS with the 
allowance of a transfer.  The main idea is a Uniform Rapid Suspension, not a 
transfer. If there is a need to transfer the domain there is the UDRP, an 
established process that has years of experience and data behind it to show 
what are the levels needed to transfer domains.
As a Registrar, I am very concerned about the complaints, issues and other 
proceedings against registrants who have had their domains transferred away 
from them without what they believe is due process.


Here is the language from the ICANN document in case many have forgotten what 
the goal of the URS is

The URS    would exist as a complement to the UDRP , which also addresses 
matters of trademark infringement in domain names.  However, the URS is 
designed to
provide a faster means to stop the operation of an abusive site, while the UDRP 
provides for transfer of
a contested domain name to the rights holder.  Rights holders seeking to pursue 
cases of infringement
could use either or both procedures.


I know we have all been working many hours on this and moving ahead but 
sometimes we need to look back at the original idea to move forward


Jeff





-----Original Message-----
From: owner-gnso-sti@xxxxxxxxx [ mailto:owner-gnso-sti@xxxxxxxxx] On Behalf Of 
Neuman, Jeff
Sent: Wednesday, November 25, 2009 7:21 AM
To: Alan Greenberg; GNSO STI
Subject: RE: [gnso-sti] Transfer of domain name to claimant after successful URS


Sorry I missed the call yesterday, but everyone deserves a vacation once
in a while.  Please remember, that while I do not have an issue with a
transfer, I have a huge issue with the proposed waiting period.
Remember, under the UDRP, all implementation of decisions is done at the
registrar level.  What is being proposed now with the URS is
implementation at the registry level which is a whole new ball game.  To
the extent that the STI expects the Registry to implement the 90-180 day
waiting period before the transfer, this is something I strongly oppose.
This would require all new coding of each new registry for a process
that will rarely (in the scheme of things) be used.

In addition, under the UDRP, the registrar has a short 10 days to hold a
name while pending appeal.  The number of cases that fall into an
expiration/auto renew period is very small.  Extending that
waiting/appeal period to 90-180 days drastically increases the number of
names that will fall into that expiration period.  That is a huge
implementation problem.

My strong suggestion....make it like the UDRP.  Transfer option offered
right away with a 10 day appeal period and have it implemented the same
way the UDRP is implemented.  The registries will not support a new
system just for URS.

Sorry to be so direct, but I want to make sure my disagreement is clear.

Jeffrey J. Neuman
Neustar, Inc. / Vice President, Law & Policy


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-----Original Message-----
From: owner-gnso-sti@xxxxxxxxx [ mailto:owner-gnso-sti@xxxxxxxxx] On
Behalf Of Alan Greenberg
Sent: Wednesday, November 25, 2009 9:57 AM
To: GNSO STI
Subject: [gnso-sti] Transfer of domain name to claimant after successful
URS


The following comments are my own and have not yet been discussed
with Olivier or At-Large.

At the end of the call yesterday, it seemed that the issue is
transfer of the domain name after a successful URS has become a
critical go/no-go issue.

I was not a strong supporter of this to start, and in fact accepted
the argument that just because one slime-ball misused a TM which also
has alternate meanings, does not mean the next registrant will, and
we should not take names out of the name pool forever due to one
problem.

Based on what I have heard to date, I have changed my mind.

The argument that the next registrant may use the generic word or TM
in a more benign way is true, but the chances are that eventually
that name will go back into the pool again (via a delete or an
auction) and the NEXT user may not be as conscientious.

I support the ability of a successful URS claimant to adopt the name
(at their choice) but only after some reasonable amount of time has
passed. Perhaps 90-180 days.

We have already generally acknowledged that there is a need for a
claimant to be able to extend a registration if necessary so that it
does not expire during the URS process (although it is not clear how
easy this will be to implement).

I would suggest that a successful claimant can take over the name at
the end of the registration period (it is locked until then), but in
no case less than 90 days.

Since a locked-after-successful-URS domain will be explicitly flagged
as such (since it will point to the URS provider's special alert
page), it should be possible to implement this.

Alan