legal Duplicitous ICANN Working Group Jeopardizes Domain Owners’ Rights

[GeorgeK]

A duplicitous ICANN Working Group has issued a report that is open for public comments that would have severe negative consequences for domain name owners. In particular, it would tilt the playing field in a domain name dispute (i.e. a UDRP or the URS) involving IGOs (intergovernmental organizations like the United Nations) in such a manner that it would be nearly impossible for domain owners to have their dispute decided on the merits by the courts. This would encourage consequence-free reverse domain name hijacking. Rather than accept the findings and recommendations of the prior working group, which reached a consensus, this new working group instead had tunnel vision and focused instead on ramming through an alternative recommendation (involving arbitration) for which there was an express consensus against in the prior working group!

The current deadline for comments (unless extended) is October 24, 2021.

Read more about this dangerous report and what you can do to stop its recommendations in my blog post at:

https://freespeech.com/2021/10/12/duplicitous-icann-working-group-jeopardizes-domain-owners-rights/

 

[eternaldomains]

Take a look at the ICANN "reserved list" to see the kinds of valuable domains and strings that they can target:

https://www.icann.org/sites/default/files/packages/reserved-names/ReservedNames.xml

e.g. acs, au, can, ec, eco, ep, ico, idea, iso, pam, sco and many more.

Plus, this working group is trying to expand the eligible list of "IGOs" beyond that reserved list.

Since these are international treaty organizations, a new IGO called "SEX" can be created at-will between any 2 governments, e.g. maybe Tuvalu (.tv) and Cocos Islands (.cc) have their cash-strapped governments sign a treaty for establishing "Society Exchange". That new IGO might then target desirable strings to improve upon the sex.int domain (remember, there's an entire TLD created specifically for those types of organizations, at .int!).

Or perhaps a free speech site appears to write about the sexual abuse scandal of the World Health Organization:

https://www.reuters.com/world/afric...into-congo-sexual-abuse-diplomats-2021-10-13/
https://www.nbcnews.com/news/world/...ees-took-part-congo-sex-abuse-during-n1280315
https://www.npr.org/sections/goatsa...staff-perpetrated-harrowing-sexual-abuse-in-c

If that free speech site was of the form "WHOSexScandal.TLD" or "WorldHealthOrganizationSucks.TLD", etc., anything incorporating the IGO's name, then the IGO can get a free shot at shutting down legitimate free speech. If they get the right panelist (many of whom don't ascribe to American values such as free speech), then they can win that domain!

https://www.wipo.int/amc/en/domains/search/overview3.0/



So, different results depending which panelist you get!

P.S. One of the terms on the reserved list is "Las" --- maybe the $90 million LasVegas.com domain name is worth taking a free shot at, if it can't be appealed to the courts, and you get "the right panelists".

https://www.thedomains.com/2015/11/...gas-com-in-2005-for-up-to-90-million-dollars/

(e.g. maybe the same kinds of panelists Francois got for the ADO.com case!)

The UDRP & URS are trademark dispute resolution mechanisms for domain names. They don't need to be registered TMs, though --- a complainant can have "common law" unregistered TMs. IGOs typically do not register TMs corresponding to their names and/or acronyms with national trademark offices, but might be considered to have unregistered TMs in those terms in many cases.

Many IGOs register their names/acronyms in the "Article 6ter" database, see:

https://www.wipo.int/article6ter/en/

which is used by national trademark offices to block other terms from becoming registered, if they would be confusing. It's not an automatic block, as an identical or similar mark can be registered if it's not confusing.

e.g. "PAM" is in the Article 6ter database, for the World Food Programme. It can be seen as an 8900-series listing in the USPTO database:

https://tsdr.uspto.gov/#caseNumber=89000806&caseType=SERIAL_NO&searchType=statusSearch

(but it's not considered a registered TM -- it's just there to note the "blocking right")

But, there are numerous US registered TMs that were not blocked by that World Food Programme entry, see:

https://tsdr.uspto.gov/#caseNumber=72232915&caseType=SERIAL_NO&searchType=statusSearch [the cooking spray]

https://tsdr.uspto.gov/#caseNumber=85163866&caseType=SERIAL_NO&searchType=statusSearch [computer services for optometry]

etc.

The text of the Article 6ter treaty can be read at:

https://www.wipo.int/article6ter/en/legal_texts/article_6ter.html

Note the portion in 1(c):



In the original working group that I was on (for 4 years!), we came to the recommendation that there be a "policy guidance" issued for UDRP/URS panelists to be aware of this (but not to modify the UDRP). This was recommendation #2 in the report (bottom of page 4):

https://gnso.icann.org/sites/defaul...ch/igo-ingo-crp-access-final-17jul18-en_0.pdf



This was a reasonable way to balance things, that Article 6ter registration did not automatically confer TM rights, but it is fact-specific, and given the appropriate facts might (if an IGO has used the term widely, etc.) rise to give them standing.

As you can see, we thought about all these issues quite carefully and deeply. But, the ICANN insiders pretend that we didn't do our homework, that we were somehow "rogue elements", when in fact it is they that want to trample upon the legitimate fundamental rights of domain name owners through their unbalanced and one-sided recommendations. They want to throw domain owners under the bus.

^
All this
v
You should update your blog post to add these elements - remember that end users don't go to NP and that the success of the .org defense was largely contributed by end users as well.

 

[Sheogorath]

It's double-edged sword for many possible reasons.
No one wants scammers getting free UDRP wins all over the place, it will create chaos all over the internet, from the small business to large corporations.
I don't believe there is a chance for it to be finally approved.

 

[eternaldomains]

@Dynadot @DAN.COM @DaaZ @Deven Patel @Nick R

 

[eternaldomains]

@name.com

 

[namezest]

ICANN is already in collusion with the big registrars, they are not allowed portfolios and lose their accreditation according to ICANN materials and rules. However we all know it's considered normal but why?
18 cents per reg per year.

 

[HotKey]

Right now, if someone creates a dispute involving one of your domain names, and you lose the UDRP/URS, you have the fundamental right to have that dispute decided on its merits in the court system. With this proposal, they'll take that right away from you, starting with a special class of complainants (IGOs, e.g. the UN, WHO, World Bank, and organizations of that type). They'd replace the court access with arbitration.

What of the flipside to this, where as the domain investor we win the dispute, and the complainant now cannot also bring the case to court, thereby potentially saving the domain defendant thousands $ in additional costs? Could this be considered somewhat of a positive outcome to the proposal, or do outcomes like this simply not occur? Eg., this will always swing in favor of IGOs..

 

[smarti]

with this approach icann just speeds up DNS transformation to metaverse.

 

[Sheogorath]

Though the Complainant will have to prove an actual infringing usage of the domain.
If the domain is merely a for sale page or have no name servers, there couldn't be any evidence of infringing on the trademark.
Unless ofc it is a blatant infringement on a trademark like "bestfacebook" or "thefacebook".

*The above is not a legal advice.

 

[cipcip]

Nearly every dictionary word, and most acronyms have an associated registered TM somewhere in the world (plus there are common law marks, too, that are unregistered). Unless you have a completely garbage portfolio, there is somebody out there that covets a domain name you own. If they feel an entitlement to it, they might misuse the UDRP/URS, and you could lose your asset without the full recourse available to reverse that unjust outcome. Look at what happened to Francois with ADO.com, or other cases like that, where it was an obvious case of a bad panel decision.

If bad panel decisions can't be reversed, that would lead to a great injustice (and arbitration isn't the 'answer', as that that could still lead to bad decisions; remember, ADO.com had 3 experienced panelists, i.e. the "best" roster!).

Furthermore, if panelists know that their decisions can't be reversed by courts, that they're the final say, that's when the most mischief can take place (i.e. I biased panelist can be left unchecked, with no safeguards to correct a biased decision).

Looking at your own portfolio (via the DAN.com link in your signature), [redacted, a 3-letter domain].xyz is a holding, yet "[redacted]" has registered TMs, e.g. search at:

https://www.tmdn.org/tmview/#/tmview

(change "CONTAINS" to "IS", and do a search for [redacted].

[change the status to only look at registered and filed ones, to exclude the dead ones, and there are 25 matches]

[one can also check at the USPTO website, but that's only US registered TMs]

So in 10 pages you wrote here you said that basically if you have not been through an UDRP, you have a sh*t portfolio...

Wow... Just wow

 

[eternaldomains]

Looks like it's a "tie". Somebody cheated with 13 names in 1 comment

 

[GeorgeK]

A brand new blog post on this topic:

https://freespeech.com/2022/05/18/i...y-would-be-significantly-challenged-on-scope/

regarding scope, again (with apt quotes from the Chair, Chris Disspain). And also miscellaneous notes at the bottom.