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Reject the IRT & reform the UDRP

  • To: irt-final-report@xxxxxxxxx
  • Subject: Reject the IRT & reform the UDRP
  • From: "Michael H. Berkens, President MostWantedDomains.com" <mike@xxxxxxxxxxxxxxxxxxxxx>
  • Date: Mon, 6 Jul 2009 12:40:03 -0400


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
Worldwide Media, Inc.


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