URS Comments

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

While the latest report of the STI is a step in the right direction, it 
continues to go beyond brick and mortar trademark rules, provides too little 
protection for domain owners and gives TM holders a unfair and substantial 
advantage.
Although this proposal on its face only effects new gTLD's,it seems it is the 
clear intention of trademark groups to push for these same rules to be expanded 
to existing gTLDs in the near future.
We are therefore commenting so 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.
Moreover there has been no demand shown from the public for hundreds or 
thousands of new extensions.
While there is tremendous opposition from TM groups for these new gTLD's there 
has not been a showing from the public for a demand for these extensions.
Demand should be required, not from those wanting to provide the services and 
make money from running and supporting new extensions, but from consumers who 
want to use these new extensions.
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.
There needs to be a balance in place keeping in mind that almost every word, 2 
letter combination, 3 letter combination and every saying or phrase is 
trademarked somewhere in the world.
Personally I have had to defend UDRP/WIPO actions for such generic,words and 
terms which are not known for being trademarked such as Internet.biz and 
Brassrail.com
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 ofgoods and services. 
Moreover TM should only be protected if the TM is famous and well known.
A trademark for example for a old saying like "a feather in your cap" is 
unknown as a trademark should not be the basis for obtaining a domain name.
Yet we have had to defend a UDRP for that exact domain.
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.

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

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.

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. 
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.

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.

The notice period should be a formula based on the age (from creation date) of 
the domain name. For example for a 10-year old domain name, there is no 
"emergency" requiring the URS.
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 a TM holder would have to face the issue of laches, if 
they have not taken action for years.
Complaints need to be brought promptly, and 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.
The domain name should not be transferred to the complainant after a successful 
complaint unless the registrant has ample time to launch an appeal in court.

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.


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 must 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.

The current proposal gives complainant basically a free shot at any domain 
without any downside.

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;; (section 4.6)

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. 

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 groups want to treat all registrants as 
though all large domain holders as cybersquatters.



Michael H. Berkens
President
Worldwide Media, Inc.

http://www.MostWantedDomains.com

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