RE: [gnso-vi-feb10] VI in practice, Rights Protection Mechanisms, Registry Agreements and Variants of TLDs

["Michael D. Palage" <michael@xxxxxxxxxx>]

Milton/Avri,

As a long time proponent of single registrant TLDs, this is an issue I did
not fully account for. However, I believe it is one that can be addressed. A
UDRP gives a complainant two potential options if they prevail, transfer or
cancellation. Back during the original Sunrise Bulk Challenge process
brought by Afilias, most challengers brought administrative challenges
against Sunrise names and asked for a transfer. However, if the prevailing
challenger did not himself/herself have qualified trademark rights, the
domain name was cancelled. I see the same net effect here in Fred's hypo.

A true story, Apple in the last couple of weeks brought the trademark iPad
from Fujitsu. Let suppose they didn't purchase these rights and Apple
included ipad.apple as a second level domain name in a .APPLE TLD, and
Fujitsu filed a UDRP and won. If Fujitsu had requested a transfer of the
domain name through the UDRP, the Apple registry operator would
simultaneously transfer the domain name, and cancel it at the same time
since Fujitsu would not be in compliance with the terms of the .APPLE
registry (aka single registrant/brand TLD). This simple operational approach
allows the world to continue to revolve around its axis without having to
make an existing modification to the UDRP.

While this is not an insurmountable problem, it would be good for the group
to flesh out more of these operation issues to provide guidance in any
implementation document that ICANN prepares.

Best regards,

Michael


-----Original Message-----
From: owner-gnso-vi-feb10@xxxxxxxxx [mailto:owner-gnso-vi-feb10@xxxxxxxxx]
On Behalf Of Milton L Mueller
Sent: Friday, April 02, 2010 6:09 AM
To: Avri Doria; Gnso-vi-feb10@xxxxxxxxx
Subject: RE: [gnso-vi-feb10] VI in practice, Rights Protection Mechanisms,
Registry Agreements and Variants of TLDs


Avri wrote in response to Frederick:

> On the blocking example provided, it is clever, I will admit.  But since
> a single registrant could not transfer such a name, the only remedy that
> could be offered would seem to be to take it down and block its further
> usage.  It is well know that the UDRP needs fixing, so if this facet
> also needs to be fixed as well, it can be - we have more then a year in
> which to fix any of the inconsistencies that true reform might cause in
> any of the ancillary policies.  so while they should be noted, they
> should not be sen as blocking.

I am not so impressed by the example, and don't think it poses any new
issues whatsoever. Indeed, it is a perfect example of why the UDRP would not
be needed, and should not be used, in such a situation. Keep in mind the
following facts:

a) A real TM violation as defined by law depends on "use in commerce," not
on string matching. So the registration of a string that matches a TM in a
single-registrant TLD is not by itself an infringement. It depends on how it
is used. As it is now, I can create a microsoft.dcc.syr.edu domain and I
defy anyone to sue me over it merely because the string matches that of MS.
If I am using it to sell fake MS products, then yes, I am infringing - and
there are numerous effective remedies for that even though the UDRP does not
apply 

b) UDRP was created because of the tremendous scale of 2nd-level
registrations outstripped the capacity of the legal system. The UDRP was
intended to be a primitive first cut to get rid of the easy cases of
cybersquatting. Now, if we are dealing with the actions of single-registrant
TLDs, we do _not_ have a scale problem. You are going to have several
hundred, at most a few thousands in total. Since the percentage of those
stupid enough to put at risk their prized, expensive proprietary name space
in order to infringe major global trademarks is going to be small, you are
talking about the number of infringers in the less than 10 range. 

c) Absence of UDRP does NOT mean absence of trademark protection. There are
national and international laws that apply. The UDRP was created not to
replace TM law, or to create an entirely new overlay of TM law.

--MM