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

[Wendy Seltzer <wendy@xxxxxxxxxxx>]

I too oppose the addition of a transfer remedy to the URS.

I think there's value in having two distinct processes, URS and UDRP,
with distinct goals and remedies.  The UDRP is the established mechanism
for transfer of an abusively registered domain name, but in recognition
of that harsh remedy, its process takes some time.  The URS provides
rapid response to infringing *use* of a domain name, by suspending use
of the name, after a relatively quick, cheap examination meant for
clear-cut cases. The complainant has the option at the outset (and even
after filing in one proceeding can choose the other, as we've said they
are not mutually preclusive) of which set of remedies and processes he
wants to invoke.

If we were to modify the URS to include transfer remedies, then we'd
have to build in procedural safeguards against the abuses that could
engender such as reverse hijackings -- and we'd find it no longer quick
or cheap.

I'd also worry about claims by TM-holders on generic terms, who'd find
the URS to be much cheaper than an auction among competing legitimate
claimants and use it to bump off legitimate but sloppy prior registrants.

If there are cases where the UDRP doesn't serve the transfer function
well, those would be good to add to the UDRP review.

--Wendy

Nevett, Jonathon wrote:
> I think that Mike can handle it.  
> 
> One other point that we discussed in the IRT and should be considered by
> the STI is that by not having transfers available, the URS becomes
> absolutely immune to the whole problem of reverse hijackings. 
> 
> Thanks.
> 
> jon
> 
> -----Original Message-----
> From: Jeff Eckhaus [mailto:eckhaus@xxxxxxxxxxxxxxx] 
> Sent: Monday, November 30, 2009 9:48 PM
> To: Nevett, Jonathon; icann@xxxxxxxxxxxxxx; GNSO STI
> Subject: RE: [gnso-sti] Transfer of domain name to claimant after
> successful URS
> 
> One more comment on this or else people will think we are picking on
> Mike here.
> 
> I am not sure that Mike's  statement below on the URS as being a
> deterrent is the true purpose of the URS. I believe the goal of the URS
> is the rapid suspension of an infringing domain, not as a deterrent. 
> 
> I also would like to point out that not all infringing domains are
> malicious and with a rapid transfer there is no remedy for the original
> registrant to correct their error, appeal and have their domains
> restored. There are many domains that use a TM term to criticize or
> comment on certain business practices and there may be an error by the
> registrant in placing infringing material on the website and needs to be
> corrected. With the rapid transfer as you propose there is no recourse
> for these registrants. 
> 
> Look forward to discussing this in further detail this whole week
> 
> 
> Jeff
> 
> 
> 
> ________________________________________
> From: owner-gnso-sti@xxxxxxxxx [owner-gnso-sti@xxxxxxxxx] On Behalf Of
> Nevett, Jonathon [jnevett@xxxxxxxxxxxxxxxxxxxx]
> Sent: Monday, November 30, 2009 6:34 PM
> To: icann@xxxxxxxxxxxxxx; GNSO STI
> Subject: RE: [gnso-sti] Transfer of domain name to claimant after
> successful URS
> 
> 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=5717843
> 8,0,&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
> 
> 
> 
> 
> 
> 
> 
> 
> 


-- 
Wendy Seltzer -- wendy@xxxxxxxxxxx
phone: +1.914.374.0613
Fellow, Silicon Flatirons Center at University of Colorado Law School
Fellow, Berkman Center for Internet & Society at Harvard University
http://cyber.law.harvard.edu/seltzer.html
http://www.chillingeffects.org/
https://www.torproject.org/