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Comments on the STI Report

  • To: sti-report-2009@xxxxxxxxx
  • Subject: Comments on the STI Report
  • From: Allan Wilson <allanwilson123@xxxxxxxxxxxxxx>
  • Date: Tue, 26 Jan 2010 23:01:41 +0000

Thank you for the opportunity to comment on this very important matter.

I am worried that by establishing a Clearinghouse and the Uniform Rapid
Suspension procedure, you will only be giving further ammunition to large
and multi-national corporations to make frivolous attacks against honest and
hard working small business owners who own generic domains and other domains
which are used in a fair manner. Just because a term has a trademark doesn't
mean that it can't be used in manner which is fair, such as promoting a
different class of goods or services. After all, is that not why we have
different trademark classes?

I have particular concern with point 6.2, detailing the Number of Examiners
of a case for the proposed URS. Having multiple examiners will reduce the
chances of them as a whole having a undeclared conflict of interest.



As a small business owner who is working hard to stay afloat as a result of
the current economic crises and recession, I don't have the funds to pay for
a whole legal department to compose my response. As such I would like to
take this opportunity to say that I agree and support the comments made by
Mr George Kirikos, a copy of which are enclosed below.



Regards,

Allan Wilson



---------------------------------------------------------------------------



While the latest report of the STI is a step in the right direction, it

continues to go beyond the common-denominator international law and
overreaches

in favour of those making complaints. While my company has no intention to
ever

register domain names in new gTLDs, it seems that the intent amongst the

TM-mafia/cabal is to at some later date apply these same rules to existing

gTLDs. Thus, while we don't care about new gTLDs whatsoever, we must comment
in

order that bad rules aren't implemented that later put at risk legitimate

registrants in existing gTLDs.



Most TM attorneys share our grave concerns that new gTLDs are a bad idea,
and

ICANN should not be trying to "divide and conquer" by playing interests off

against one another in order to further their own ambitions which the public
is

against. We stand united with most in the TM community opposing new gTLDs.



First off, I'd like to applaud some of the TM lobby for being balanced in
their

proposals. There are some "good guys" in that group that looked at our past

critiques, listened to our concerns, and made appropriate adjustments. They
are

to be commended. Just as there are "good guys" in the domain registrant

community, there are also "good guys" representing the IP interests of

brandholders who do not overreach and don't engage in reverse domain name

hijacking.



However, just as there are cybersquatters, there are also a group in the IP

community who would not hesitate to bring forth frivolous claims in order to

harass existing registrants and reverse hijack their rightfully owned domain

names in order to gain an economic advantage. Both of these "extremists" in
the

registrant and IP groups need to be reigned in by the rules.



In addition to our previously-submitted comments (linked to from above),
here

are some points we'd like to reiterate:



1. There is no need for a Trademark Clearinghouse that is sanctioned by
ICANN.

It can clearly be funded and created entirely by the private sector, and
does

not need to be "sanctioned" or funded in any way by ICANN. In our opinion
this

will be a great waste of money, and should only be funded by those who are

foolish enough to waste their own money (namely TM holders and registry

operators) on it. Public money should in no way subsidize it or give it a

monopoly position (i.e. there could be multiple competing TM databases).

Frankly, it becomes a protection racket that justifies new gTLD operators in

having sunrise periods that tax TM holders with registering (and even
competing

for via auctions) unwanted defensive registrations. The TM Clearinghouse
cannot

override the courts, wherein TMs are routinely challenged and overturned.

"Validation" at the clearinghouse would be gamed by those holding the
weakest

marks (e.g. trademark trolls), often for the sole

  purpose of asserting claims on generic descriptive domain names that they

would otherwise not be entitled to. The TM Clearinghouse also simply adds a
new

layer of bureaucracy to the ICANN ecosystem, another set of contractors and

consultants who will ultimately tax the public through higher fees, and

self-interested lobbying.



2. We find it humourous that no accreditation agreement/contract exists for

UDRP providers at present, yet 3.1 recommends exactly that for the TM

clearinghouse. First things first --- get the UDRP providers like WIPO and
NAF

under contract in order to ensure accountability.



3. Of course figurative marks should be excluded from the database. Some

commenters want them included, which is ridiculous. The STI got that right,
at

least.



4. The TM Clearinghouse data should be in the public domain (i.e. there
should

be bulk access for the public to download it for free, just as they can for
the

.com zone file), and be available for free to successor TM clearinghouse

operators (i.e. no perpetual monopolies). Fees are for things like
validation,

not for access to a new for-profit monopoly "service" who will try to tax
users

and the public over time. The most efficient operator(s) would earn "normal"

profits via a regular tender process or procurement process, not excess
profits

through perpetual monopolies and a stranglehold over data they deem

"proprietary." An open XML schema and open bulk access process should be

created to ensure the public is not held hostage in the future.



5. We do not support mandatory pre-launch use of the TM clearinghouse.
Almost

every dictionary word, acronym, etc. has some registered TM in some obscure

class of goods and services. That does *not* give it exclusivity or a

right-of-first refusal over *all* uses worldwide. A registered TM for
"example"

in Albania should have no weight in blocking "example.newtld" for a good
faith

registrant in the USA or Canada, or even for a registrant in Albania in a

different class of goods and services. We've already seen frivolous
registered

TMs in the .eu launch, and they were not all from Benelux (i.e. there are a
lot

of frivolous marks in the US, Canada and elsewhere).



6. In a real sense, ICANN needs to make up its mind whether they want an

expansion of the namespace (in which case new registrants are presumed
innocent

until proven guilty), or simply wants defensive registrations that duplicate

existing gTLDs. It's clear registry operators do not care, as long as
someone

pays the bill for a domain name (i.e. the cybersquatter, the defensive TM

registrant, and the good faith registrant are all equal before their eyes).

There's a hypocrisy to the sunrise periods that undermines everything ICANN
and

other new gTLD advocates say, and that hypocrisy is evident to the broader

public who does not seek new gTLDs.



7. As per our comments above, 6.1 needs to be modified from "on commercially

reasonable terms" to free. The TC operator should have no monopoly
whatsoever

on the data -- they are simply a contractor for a fixed period, and the data

belongs to the public domain.



8. We do not support linkage between the TC and the URS (in 6.2), unless the

domain registrant is in the same country/jurisdiction as that of the TM.



9. We oppose the URS in principle, as it will be abused and used to harass

legitimate registrants. The better policy would be, as we have suggested

multiple times, to have WHOIS verification. This thwarts cybersquatters, who

want to hide in the shadows, from registering abusive domain names and thus

reduces overall cybersquatting. Many external TM lawyers make money from
filing

complaints, and do you notice they do not push strongly for WHOIS accuracy

(which would reduce complaints significantly). But, TM lawyers within

corporations should be in favour of this, as it would reduce their policing

costs if there are fewer domains being abused. Verified WHOIS acts as a

deterrent to abuse.



The URS, on the other hand, tackles the problem after it's too late. Of
course

ICANN, registries and registrars benefit financially from these abusive

registrations through the associated fees, and have no interest in
discouraging

and preventing abusive registrations through WHOIS verification (which would
be

very low cost, as we have discussed in previous submissions). They'd prefer
to

collect the money up front, and impose the costs of the abuse on the wider

public, laughing all the way to the bank.



I believe the DOC or GAC should step in and mandate Verified WHOIS via a PIN

system (i.e. physical letter with a PIN code mailed to registrants to ensure

address accuracy before a domain name gets activated). This would please TM

holders, consumers, and legitimate domain registrants who always maintain

accurate WHOIS.



10. The "Safe Harbors" in the URS should include the words "without

limitation", to ensure that they can grow over time. The policy is flawed

because URS providers have a financial incentive to expand the definition of

"abuse" over time, but registrants should have that same power to check that

growth through their own examples of good faith usage.



11. In order to ensure that there is no forum shopping, the URS provider
should

be selected by the *registrant* (or alternatively the registrar), not by the

complainant. If one studies the history of the UDRP, this was a very early

proposal that in hindsight made a lot of sense, given the problems we've
seen

with WIPO, NAF and CAC engaged in a "race to the bottom" to appeal to TM

holders. By shifting the balance so that it is the *registrant* who selects

which URS provider handles a case, the playing field is made more level. If
the

registrant does not select a provider, a case would be randomized between

multiple providers and panels.



12. There should be notice made to attorneys of the domain registrants,
whose

legal contact data would appear in the public WHOIS on an opt-in basis. This

would increase the odds of *actual notice* of complaints, as the attorney
might

receive notice when a registrant is on holiday, and act accordingly.



13. Domain locking/freezing should be done by the *registrar*, NOT the
registry

operator. This would allow the registrar to also contact their client, to

improve the odds of actual notice.



14. 20 days is insufficient notice, especially for domains that have been

registered for long periods. The notice period should be a formula based on
the

age (from creation date) of the domain name. For a 10-year old domain name,
for

example, where there is no "emergency" requiring the URS and the TM holder
has

slept on their rights, the notice period might be 6 months, for example. For
a

freshly registered 2 month old domain name, 20 days might be considered

adequate. Alternatively, the URS should not apply at all to domains older
than

a certain age, for example a cut-off of 2 years past the creation date. In
the

real world, if I had a "McDonald's" sign over my door for 10 years, and

McDonald's tried to get an emergency injunction (which is kind of what the
URS

is like) to have it torn down, the judge would deny it, and instead set the

matter for normal trial. McDonald's would have faced the issue of laches,

having slept on their rights. By using a

 formula like that suggested above, it encourages complaints to be brought

promptly, and that they are not used as a tool to harass long-term good
faith

registrants. In the real world there are statutes of limitations on bringing

actions, and this change would be in line with the real world precedent.

Indeed, not having a limitation period would create the absurdity that a

URS/UDRP provider could find in favour of a complaint that would be

*statute-barred* from the court system!



15. URS providers and panelists, as in the UDRP, should not be excluded from

liability in real courts if there is deliberate wrongdoing.



16. The domain name should not be transferred to the complainant after a

successful complaint unless the registrant has ample time (say 6 months) to

launch an appeal in court.



17. Any complainant losing a URS should be precluded from getting a second

"kick at the can" via UDRP for a period of 2 years for the same domain name.

They can instead use the court system if they lose.



18. Point 8.2 is very wrong, namely an appeal by the registrant in real
court

to overturn the URS should immediately restore the nameservers to those

specified by the complainant. Real court trumps URS. That appeal should be

permitted at any time, including during the time before a URS response is

required. The registry and registrar need to obey the court in restoring the

nameservers, otherwise innocent registrants would have income-generating

websites disrupted by bad decisions from URS providers.



19. The penalties for abuse by TM holders are trivial. They need to be made

substantially stronger. In Canada, there are financial penalties under the
CDRP

(.ca version of UDRP) which provides for a bad faith complainant paying up
to

$5000 (as ordered by a panel):

http://www.cira.ca/assets/Documents/CDRPpolicy.pdfÂ;<http://www.cira.ca/assets/Documents/CDRPpolicy.pdf%C3%82>
;

<http://www.cira.ca/assets/Documents/CDRPpolicy.pdf%C3%82>; (section

4.6)



to respondent to cover the costs of the registrant. That represents a fair
and

balanced policy, and reduces frivolous complaints. Alternatively,
complainants

should post a security bond.



20. All URS decisions need to be made public, just as in the UDRP, in order
to

ensure that the public can scrutinize whether panelists and URS providers
are

following the rules. They should be available via a XML interface, in
addition

to plain text/HTML as they are now, so that researchers can have bulk access
to

the XML for scholarly and academic studies (as we've also suggested for the

UDRP).



21. Registrants should be able to white-list themselves to opt-out of the
URS

(and UDRP) through mechanisms such as WHOIS verification, or posting of

security bonds with their registrars. The "good guys" want to stand out from

the bad guys, however ICANN and the TM mafia wants to treat all registrants
as

though they are all cybersquatters.



22. The Business Constituency has been captured by the TM lobby, and no
longer

represents true businesses (that's one of the reasons we've left it, as well
as

their new totalitarian charter). Their "minority report" should be
disregarded,

and not interpreted as representing the views of legitimate business

registrants.



23. In Appendix 6, the points in 1.2 (page 44) are described as

"non-exhaustive". This is flawed, just as in the UDRP, and encourages URS

providers and panelists to have an ever-expanding definition of "bad faith"
in

order to promote themselves and or their provider amongst complainants. It's

the reason we see some ridiculous decisions coming from UDRP providers who
seek

to stretch and change and literally break the rules in order to encourage
more

complaints, thereby bringing them more money. This needs to stop. The way to
do

this is to define clear what the *actual* clear-cut circumstances are, and
make

them exhaustive and unchanging (unless changed via PDP). Panel members have

made themselves into rule-makers, instead of being those who *apply* the
rules,

and this is simply wrong. As we mentioned above, the "Safe Harbors" must

balance 1.2, and should be non-exhaustive. Only the clearest-cut obvious
cases

should win a URS or UDRP, not a 51% to 49%

 "probability" based model. Most of us in good faith can view the list of

upcoming UDRP cases and *know* which ones are slam dunks, and are
indefensible.

It's these ones that should be "assembly line" cases. But, there are many

others, generic dictionary words, acronymns, abbreviations, etc. where

panelists have taken it upon themselves to make up new law as they go along,
to

please Complainants and encourage additional complaints.



24. There are huge conflicts of interests in allowing panelists to also

represent complainants/respondents. Panelists should be precluded to ever

represent others (i.e. in other domain disputes). You can see more on this
in

the comments to the article at:

http://domainnamewire.com/2009/12/28/2009-domain-dunce-award-panelist-andrew-f-christie/



In particular, there was a US Supreme Court decision this year, Caperton v.

Massey, where the court created a new standard requiring requiring judges to

recuse themselves if there is a âprobability of biasâ. See:

http://www.supremecourtus.gov/opinions/08pdf/08-22.pdf



I believe this principle might be useful to disqualify some UDRP panelists.



25. Panelists need to be reminded that "evidence" is not the same as "proof"

--- some don't seem to get it, and simply "check the boxes" on evidence
without

weighing it! (see the comments in the DomainNameWire article for more on
that)



In conclusion, the bad policy decision of going forward with new gTLDs
against

the wishes of the public cannot be fixed by implementing bad policies such
as

the IRT or its step-child the STI. ICANN needs to recognize that the proper

course is to maintain the stability that we have today, and only add
additional

new gTLDs if their benefits exceed their costs. It's laughable to watch the

posturing of those trying to "sell" new gTLDs as desirable, and those who

change their principles on a dime because they see potential short-term
gain.

ICANN should be in the business of refining *long-term* principles that are

broadly supported by the public, not playing constituencies and groups
against

each other in order to further their own self-interest in becoming a $200

million/year organization that taxes internet users to fund world travel,

African safaris, and extravagant parties.



Furthermore, the STI would be considered "policy". Under the Affirmation of

Commitments:

http://www.icann.org/en/documents/affirmation-of-commitments-30sep09-en.htm



"To ensure that its decisions are in the public interest, and not just the

interests of a particular set of stakeholders, ICANN commits to perform and

publish analyses of the positive and negative effects of its decisions on
the

public, including any financial impact on the public, and the positive or

negative impact (if any) on the systemic security, stability and resiliency
of

the DNS."



Where is the list of "negative effects" published by ICANN or the GSNO, and
an

economic valuation of the financial size of the positive vs. the negative

effects to determine whether the benefits exceed the costs of the STI/IRT?

We've basically had a process where a bunch of lawyers got together, without

any economists at the table to perform financial analysis or provide a
reality

check on what they are talking about. This is a pure violation of the AOC,
the

lack of attention paid to the requirements to serve the public interest
*AND*

to analyze the positive and negative financial impacts. On that basis alone,

the STI should be rejected as "not finished" and should be sent back for

consideration using the expertise of those who are not lawyers.



Sincerely,



George Kirikos http://www.leap.com/


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