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

["Zahid Jamil" <zahid@xxxxxxxxx>]

So how would we address the revolving door issue?

Problem: after URS domains get put back into the pool and get snapped up again 
forcing TM owners to file UDRPs.  With new gTLDs this creates a substantial 
financial burden on TM owners.

Solution:  anybody?






                                       
Sincerely,

Zahid Jamil
Barrister-at-law
Jamil & Jamil
Barristers-at-law
219-221 Central Hotel Annexe
Merewether Road, Karachi. Pakistan
Cell: +923008238230
Tel: +92 21 5680760 / 5685276 / 5655025
Fax: +92 21 5655026
www.jamilandjamil.com


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-----Original Message-----
From: Alan Greenberg <alan.greenberg@xxxxxxxxx>
Date: Tue, 01 Dec 2009 09:20:42 
To: GNSO STI<gnso-sti@xxxxxxxxx>
Subject: RE: [gnso-sti] Transfer of domain name to claimant after
  successful URS


Jeff, first I should point out that I am not 
fanatic about allowing transfer, but I think it would be a good end-point.

On your specific example (and I understand that 
it is just an example), I have several problems.

1. Putting a Rolex watch (which presumably in 
your example, he does not have the rights to 
sell) on the website would not be grounds for a 
URS. His website would need to be named 
"get-you-r-rolex-here.com", or some such, since 
it is the domain name possible infringement that 
triggers the entire URS process. I think that 
this take it out of the realm of innocence.

2. If, for whatever reason, the URS is successful 
and not appealed successfully, according to what 
we have specified so far, there is no way for him 
to recover this sight other than to wait for it 
to expire (potentially a long time), and then try 
to buy it at auction (or whatever) competing with 
domain-name professionals. Or if it is deemed to 
be useless by all of them, redeemed under the 
RGP. If he is an innocent jewelry store owner, 
this will not be an apparet path to him, and 
besides, he will already have gone broke waiting for expiration.

3. Under the rules we have discussed, the only 
surer path would be for the claimant (Rolex) to 
take over the domain and then sell it back to him 
if he promises to be good, and even that could 
take a while unless we allow mid-term transfers 
(which the registries have said would be hard to implement).

Alan

At 01/12/2009 01:20 AM, Jeff Eckhaus wrote:
>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