RE: [gnso-sti] Rule 56

["Mike Rodenbaugh" <icann@xxxxxxxxxxxxxx>]

I agree with Wendy's formulation of the evidentiary standard for the URS, so
long as the underlying elements to be proved remain unchanged from the UDRP.

Mike Rodenbaugh
RODENBAUGH LAW
548 Market Street
San Francisco, CA  94104
(415) 738-8087
http://rodenbaugh.com 

-----Original Message-----
From: owner-gnso-sti@xxxxxxxxx [mailto:owner-gnso-sti@xxxxxxxxx] On Behalf
Of Wendy Seltzer
Sent: Tuesday, December 01, 2009 7:52 AM
To: Alan Greenberg
Cc: GNSO STI
Subject: Re: [gnso-sti] Rule 56


Alan Greenberg wrote:
> 
> My understanding is the reference to Rule 56 in our strawman proposal
> was not a intention to us US law in the URS, nor to even say that the
> full details of Rule 56 applies to the URS. Rather, it was a shorthand
> to give the intent of what we wanted to say.

Thanks for this framing.  I've added in a few details:

> For a URS to be successful, the Examiner, based on:
> 
a) the complaint;
> a) the verified TM from a jurisdiction that performs substantial
> validation (including if applicable, its geographic limitations and
> class of service);
> b) the domain name in question;
> c) the contents of the web site or other evidence of the domain name
> usage; and
> d) the registrant response (if received);
> 

must conclude that there is no genuine issue of material fact that A)
the complainant has rights to the name and B) the respondent has no
rights or legitimate interest in the name.

This means that the complainant must present evidence to substantiate
its trademark rights in the domain name (e.g., evidence of a matching
trademark registration from a jurisdiction that performs substantive
review) and evidence that the domain name was registered and is being
used abusively to infringe the trademark.

If the Examiner concludes that complainant has not met its burden, or
that real factual questions remain around any of the elements, the
Examiner must reject the complaint as inappropriate for Rapid Suspension.

> 
> 1) (if a response was received) No evidence was presented to indicate
> that the use of the domain name in question is a 
non-infringing or fair
> use of the TM.
> 
> or
> 
> 2) (if a response was not received) No defense can be imagined to
> indicate that the use of the domain name in question is a
non-infringing or fair use the TM.
> 
> In the absence of a clear belief of 1) or 2), the URS shall be rejected.
> 
> 
> 


-- 
Wendy Seltzer -- wendy@xxxxxxxxxxx
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/