URS

[Jeremy Sprout <jsprout18@xxxxxxxxx>]

I agree 100% with the comments made by Michael Berkens.  

Below are his comments.

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Sirs:

We are strongly opposed to the proposed IRT initiative including the Uniform 
Rapid Suspension (URS) policy which would effectively displace URDP for 
disputes regarding trademarked terms in domains.

Trademark holders, unhappy with UDRP’s, a system under which they already have 
over a 85% win rate, formed a group, The Implementation Recommendation Team 
(IRT), which was given falsely committee status by ICANN’s Intellectual 
Property Constituency “to give additional protection to trademark holders  in 
the implementation of new gTLDs”.

Certainly the URS does away with any sense of Notice or due procedure to the 
domain holders,  as the domain under the URS will be frozen by the registrar of 
the domain, before the domain holders even get notice of the claim.

“”””Notice first should be provided to the New TLD registry operator within 
twenty-four (24) hours of the filing of the complaint via e-mail at the address 
the registry operator provides to ICANN. Upon receipt of the notice, the 
registry operator should within twenty-four (24) hours freeze the domain name 
to prevent transfers or other changes to the registration.””””

The burden of proof in The URS, seems to shift from the complainant in a UDRP, 
to the domain holder:

“””Each answer must include confirmation of Registrant details and a defense 
for domain name registration(s) and/or use that contradicts the Complainant’s 
evidence that they do not have a legitimate right or interest in the domain 
name(s) (e.g., known by or authorized to use the name at issue or a claim that 
the use is noncommercial fair use) and that they registered and used the domain 
in bad faith… ”

If a domain holders fails to answer in the 14 days allotted period,  or if the 
domain holder’s  answer is deemed to be defective in any way, the domain will 
be taken down.

Currently if a URDP is filed and the complaint is deemed to be incomplete or 
not in full compliance, the complainant is so notified and allowed a time 
period to amend and fix the complaint.

However, in the URS the domain holder has no such right.  Get it right the 
first time or you lose.

How can this have any semblance of fairness?

It should be noted that once the domain is taken down the domain will not 
resolve and the domain holder will no longer be able to get its e-mail, and 
senders will get bounced e-mail messages back.  If the challenged domain is 
used as a Name Server, then any domains or hosting going to that challenged 
domain will not work either.

The URS proposal also seems to reverse hundreds  of UDRP decisions that have 
found “parking” a domain to be a fair legitimate use.

The URS proposal states:

“””If the trademark in question is BRANDXYZ for use in connection with 
computers and the domain name in question is brandxyzz.[gtld] and is used in 
connection with an abusive pay-per-click site, the site would be frozen. If the 
domain name is brandxyzcomputers.[gtld] and the record shows that it is a bona 
fide retailer who legitimately sells BRANDXYZ computers, the URS complaint 
would be denied.”

Of course the URS does not define or even discuss what would be an “abusive” 
PPC site, vs. a “non-abusive” PPC site and without a clear definition all PPC 
sites are likely to be regarded as “abusive”.

Once again this goes against hundreds of UDRP decisions.

The URS would allow a  trademark holder to get a domain suspended for a $200 
filing fee if they were “parked”.

VeriSign reported that parked domain registrations found accounted for 10% of 
all .com registrations as of third quarter 2007.

Parking is clearly not improper or illegal so for the IRT to mandate “if its 
parked you lose”  goes against precedent and common sense.

The URS also seems to makes capitalism a bad faith activity.

On the proposed complaint form, there are check boxes, under “bad faith 
factors”  domains that are “Sold for profit” or “Sold for commercial gain.”

Doesn’t every business expects to sell their products for profit or for gain?

Doesn’t VeriSign make a profit or gain every time it registers or renews a 
domain?

Doesn’t every trademark holder expect to make a profit or gain from its 
activities?

Of course.

Yet the IRT  would make, making a profit a sign of bad faith.  I guess the IRT 
believes that domain holders should be the only class of people on earth that 
are not allowed to profit from their investments or selling their property for 
gain?

Also note that unlike a UDRP, the proposed URS does not allow the domain holder 
to have a three member panel decide the case.  There will be only one 
“examiner” not of  the domain holders choice that will make the decision.

If you researched through all the UDRP decisions I think you would find that in 
1 panel decisions, trademark holders have a much higher win percentage than 
with 3 member panels.

And again trademark holders already enjoy a 85%+ win rate, including those 3 
member panels.

So the next logical issue is who is a trademark holder for purposes of the URS.

“””Complainant holds a valid trademark registration issued by a jurisdiction 
that conducts substantive examination of trademark applications prior to 
registration.”””

So this would not just be for US trademarks but would allow trademark holders 
from many countries around the world to file a URS.

Here is the problem with that.

Trademark holders point to domains like verison.com and wallmart.com as 
horrible and obvious trademark infringing domains.

On the other hand, almost every dictionary word is trademarked.

Almost every 2 and 3 letter combination is trademarked.

Almost every saying or phrase used in language is trademarked, yet few are well 
know for their trademarked purpose.

If ICANN gives every trademark holder the right to any  domain, without 
requiring the mark to be famous and well known, then no domain is safe from 
seizure.

Take some phrases you’ve heard all your life: “feather in your cap”, 
trademarked, “Smooth Move’, trademarked; “bird in the hand”, trademarked, “call 
us first” trademarked, “going out of business”, trademarked “Nice Shoes”; “Soft 
Lips”, trademarked.  You get the idea.

Take some dictionary words:

“Perfect”, Trademarked

“Awesome”, Trademarked

“Dictionary” is Trademarked

Even the area code for New York “212″ is trademarked.

Each of these terms and millions more, are trademarked just in the US, much 
less taking into account trademarks that exist in every country of competent 
jurisdiction.

However none of those terms are famous, because of the trademark, they are 
famous because they were used in language for decades before the trademark was 
filed.

And before anyone says no one could bring an action on any domains generic as 
the ones we mention, let me tell you, we have fought UDRP’s on some of those 
above examples and even lost one (now under appeal).

While I can appreciate that it is costly for complaints to bring actions under 
the UDRP, its also expensive for domain holders to defend them.

This proposed system is patently one sided and completely unfair to domain 
holders and would not happen in the “real world” where trademark law is much 
different and many businesses and brands can co-exist.

So while I can understand and agree with Verizon that someone owning 
Verizson.com or Verizoncellphones.com amounts to theft of their intellectual 
property, trademark holders that make up the IRT have to realize that there are 
millions of trademarks on products and services no one has every heard of, and 
taking domains away from their rightful owners, on the basis of these 
“Trademarks”,  amounts to theft of domain holders intellectual property.

Like your mother told you if you want people to respect your property, you have 
to respect there’s

Bottom line, if you want people to respect your intellectual property,  you 
have to respect other people’s intellectual property as well.

The IRT has not done that.

Furthermore, trademark interests have already voiced the goal of imposing the 
URS on incumbent gTLDs, including .com, soon after its adoption for new gTLDs.  
This sentiment was echoed by Paul Levins the VP of ICANN who recently said “We 
may be able to retrofit the features that are in the new gTLD agreements to 
address abuse.”  Meaning that is is clear that both trademark groups and ICANN 
plan on rolling this procedure out to all existing extensions.

It is also clear that the IRT operated in violation of ICANN Bylaws 
requirements for maximum transparency and fair representation. It voted to 
operate confidentiality; its agenda and membership was controlled by the 
Intellectual Property Constituency (IPC); and it included no members of the 
domain investment community.

The proposed Globally Protected Marks List (GPML), appear to be both infeasible 
and have no basis in existing trademark law; their adoption would impermissibly 
expand ICANN’s function to that of a DNS treaty organization or legislature.  
Moreover it would allow people and companies without even having a filed 
trademark to place in the list, terms it believes they have a right to.

Instead of trying to create a whole new system, The committee, should propose 
changes to the UDRP, which has settled thousands of disputes,  for both new and 
existing  gTLDs that provide redress to the current problems and abuses faced 
by both registrants and complainants.

I suggest in that  UDRP’s becomes a “loser pays system” to compensate trademark 
holders who are the victim obvious and unquestionable trademark infringement, 
yet protect domain holders from the attempted theft of their property.

The system needs to be fair to all.