Reject the IRT & reform the UDRP

["Michael H. Berkens, President MostWantedDomains.com" <mike@xxxxxxxxxxxxxxxxxxxxx>]

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 domain names.
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.
Let's be clear.

This proposal would apply to all domain holders not just domainers.

A lot of mom and pop single domain holders will not be exempt from  
losing their domain, their business and their livelihood upon a  
complaint filed by anyone in the world for $200, with no possible  
penalty to downside to the complaining party.
Moreover since most of these mom and pop business have very little  
understanding of legal matters effective domain names, and 99% of them  
have never even heard of ICANN, they are the most likely to be not  
know how to answer such a complaint and are especially vulnerable to  
losing their domain.
As far as domainers are concerned the URS proposal also seems to  
reverse hundreds  of UDRP decisions that have found “parking” a  
domain to be a fair and  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 it was “parked”.
VeriSign reported that parked domain registrations, accounted for 10%  
of all .com & .net 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 complainants  to bring  
actions under the UDRP, its also expensive for domain holders to  
defend them.
Many UDRP's have been found to amount to reserve highjacking so not  
every UDRP is brought in good faith and nor should anyone expect that  
every URS will be brought in good faith.
Yet there is no real penalty for bringing a bad faith claim. Temporary  
barring someone who files multiple bad faith claims from filing more  
claims, is not a sufficient penalty.
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.



Michael H. Berkens
President
Worldwide Media, Inc.

http://www.MostWantedDomains.com

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