RE: [registrars] Your comments on this one?

[mpalage@ipwarehouse.com (Michael Palage)]

I have discussed the potential flaws with this mechanism with both Ken
Stubbs and Dr. Victoria Carrington.

Consider the following scenario:

Plaintiff owns a federal trademark registration and sues Defendant that has
a domain name registration incorporating Plaintiff's mark.  This
registration is not your typical cyber squatting situation, but your classic
trademark dispute where the parties are arguing over priority of use, i.e.
Brookfield v. West Coast and the moviebuff.com dispute for example. It is
not relevant if Defendant has any federal or state trademark registrations.
In preparing its defense, Defendant locates a Third Party which has an
apparent priority of use senior to either Defendant or Plaintiff. Now under
present trademark law Defendant could try to acquire Third Party's trademark
rights and "tack" them on to his own in which case Defendant's claim to the
underlying trademark/domain name would now be superior to Plaintiff's. (I
know this legal maneuver has certain risks associated with it, i.e. naked
license, etc. but it has been done - for the Intellectual Property attorneys
out there please refer to the appropriate section in McCarthy) Or Defendant
could acknowledge both Plaintiff and Third Party's superior trademark rights
and decide to transfer it to the senior user in this case Third Party.
However, implementing the proposed policy in my opinion, based upon what I
have been told by both Ken and Amadeu, would limit my options as a defendant
in a trademark litigation and give a plaintiff an unfair litigation
advantage.

What I am trying to demonstrate here is that this is not some law professor
type hypothetical but a litigation tactic that I have seen first hand
considered as an option in trademark litigation several times. And I have a
problem implementing a Domain Name Dispute Policy/Requirement that would
interfere with viable trademark litigation tactics. Moreover, as a Registrar
I have severe economic concerns about the potential administrative costs
associated with this proposed regulation.

I also have concerns about the implementation of a uniform DRP, but that can
wait until tomorrow in DC.  Look forward to seeing as many registrars as
possible at tomorrow's meeting.


-----Original Message-----
From:	owner-registrars@dnso.org [mailto:owner-registrars@dnso.org] On Behalf
Of Amadeu Abril i Abril
Sent:	Monday, July 26, 1999 7:50 AM
To:	Registrars@dnso.org
Subject:	[registrars] Your comments on this one?
Importance:	High

Dear felow registrar constituency members,

I have messed up with my mail archives and don't kno whether this has hit
the
list or not yet. Sorry for any possible duplications.

PSA proposal form Ted Shapiro form the IP Consituency in order to establish
a
mechanism that would address what happens with DN for which the dispute
resoltion mechanism in place (any) have been invoked. In fact it asks
registrars to block registrar-ro-registrar transfers (and registrants') as,
in
the current situation of registrar-based non-uniform DRPs, this could lead
to
forum-shopping once the challenge is borught in order to escape the relevant
provisions and make all DRPs moot.

Pleae comment, as this will be brought up during tomorrow's Names Council
teleconf.

Amadeu

*****

Scribe: Ted Shapiro

July 14th, 1999.

This proposal will be voted on at the July 27th Names Council meeting.
Please
comment on it.

Certain test bed registrars are already operational and more are rapidly
coming on line with each passing week.

There is presently evidence of forum shopping for registrars with different
dispute policies by domain name holders for
improper purposes, including, but not limited to seeking to avoid the
assertion of rights by a third party to that same domain
name or the compliance with a cease and desist letter, or to avoid the
initiation of a dispute policy by the registrar from
which the domain name holder is seeking transfer, or the resolution of a
properly invoked dispute proceeding under the
policy of the registrar from which the domain name holder is seeking
transfer.

The existing dispute policies presently in place and policies being
discussed
do not address any protocol for registrar to
registrar handling of requests by a domain name registrant to change
registrars upon notice of a possible claim.

ICANN should be able to make decisions without having to wait for quarterly
meetings and a decision on this proposed
model protocol is necessary to discourage ongoing undesired forum shopping.

ICANN already has made a decision that registrars must have a dispute policy
in place before they can become operational.
By resolution in Berlin, ICANN has encouraged the test bed registrars to
formulate a model policy and is providing
assistance to them in this regard.

The Intellectual Property Constituency therefore offers the following
proposed
model protocol for registrar to registrar
handling of transfers for second level domain name registration records. We
believe that this protocol would assist in
protecting intellectual property rights holders. Importantly, the proposed
protocol does not call for hindering the use of the
domain name by the registrant assuming the dispute policy of their existing
registrar so permits. The proposed protocol also
attempts to address the time gap between the receipt of a cease and desist
letter by the domain name holder and the invocation
of a registrar's dispute policy (assuming that policy does not provide for
the
placing of a hold on the name). During this time
gap, a domain name holder can seek to change registrars in order to avoid
the
invocation of its initial register's dispute
policy.

Finally, if the domain name holder seeking the transfer has been improperly
blocked by a third party from transferring
registrars, that domain name holder will not be precluded from availing
themselves of any and all appropriate remedies and
actions.

Once a registrar's dispute policy has been properly invoked and the dispute
is
pending and remains unresolved, the
registration of second level domain name registration record shall not
transfer that domain name to another registrar until
the dispute is properly resolved.

No registrar shall accept from any other registrar the transfer of a second
level domain name registration record without
receiving from the registrant seeking to transfer the domain name a sworn
declaration or affirmation, under penalties of
perjury in the applicable law of the jurisdiction where taken, that the
domain
name holder seeking such transfer has not
received a cease and desist letter or notice of dispute concerning the
domain
name sought to be transferred from any third
party.



Discussion of this issue at the July 12th provisional Names Council
teleconference

Overall there was consensus in the pNC that this issue already had
significant
consensus behind it. I note that this draft model
protocol has been endorsed by the IP constituency and there was general
agreement in pNC on the principles to be achieved.
The IPC feels that the exigent circumstances confronting us (test registrars
coming on line) and the ICANN by-laws rendered
this issue worthy for consideration despite the fact that the DNSO process
had
not been followed to the letter. However, the
pNC felt that there were some technical concerns and that the draft model
protocol should be further refined before
retabling the issue for the July 27 teleconference. The main points raised
during today's discussion were as follows Ken
Stubbs Concern over the last paragraph relating to sworn statements due to
the
varying national legal regimes involved.
Concern that the methodology could constitute an excessive burden for
registrars. Answer from Ted Noted that the reference
to applicable law was designed to take into account the existing of varying
national legal regimes. Agreed that we would need
to ensure that this was not overly burdensome.

Bill Semich Concern that this was "reverse cyberpiracy" and simply taking on
board an existing NSI policy. Bill also asked
for a further two or three sentences summarizing the draft model protocol .
Answer from Ted Noted that this was not
"reverse cyberpiracy" nor was it an effort to take adopt a NSI policy.
Instead, it was meant to be a significant refinement to
deal with a specific, increasing problem.

David Johnson Noted that this was a good example of an activity where there
was already widespread agreement. Answered
Bill Semich's question with respect to summarizing the proposal by noting
that
it was designed to prevent forum shopping by
prohibiting DM holders from switching to another registrar when a dispute
resolution policy has been invoked against them.
He also suggested that there be a further report on the level of consensus
at
the next teleconference.

Answer from Ted Agreed that if members of the pNC were not ready to vote
that
further refinements and a gaging of
consensus could be undertaken before the next teleconference.

Nii Quaynor Queried whether this draft model protocol would be a further way
for big players to beat up on smaller
players.

Answer from Ted Noted that this model protocol would also benefit smaller
players.

Javier Sola was concerned that in the last point, the registrar was asked to
swear that somebody else had not received a letter.
He cannot do that, as it is something that is unrelated to him.

It was decided that a working group (Ken Stubbs, Ted Shapiro and David
Johnson) prepare this issue for the next
teleconference.