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ICANN publishes RFI for URS provider

Kevin Murphy, September 25, 2012, Domain Policy

ICANN has issued an open call for dispute resolution providers interested in running its Uniform Rapid Suspension system.

In a request for information published last night, ICANN says it expects to pick a provider or providers by February 28, 2013.

If you’re not already running a dispute resolution service at scale there seems to be little point in applying. The RFI states that respondents must, at a minimum:

Have a track record in competently handling clerical aspects of Alternative Dispute Resolution or UDRP proceedings

Have a team of globally diverse and highly qualified neutrals, with experience handling UDRP or similar complaints, to serve as panelists.

With that in mind, will the RFI help sort out the problems with the URS?

What ICANN needs right now is a provider happy to administer proceedings for $300 to $500 per case.

ICANN has already asked WIPO and the National Arbitration Forum for their pricing expectations and neither apparently thinks they can do it much cheaper than UDRP. Hence the RFI.

Could the Czech Arbitration Court be in with a shot?

CAC already has UDRP experience and a stable of trademark experts on hand, and some say its level of automation is superior to — and presumably more cost-efficient than — both WIPO and NAF.

A UDRP decision to scare the pants off domainers

Kevin Murphy, May 23, 2011, Domain Policy

Is this the most blatant case of UDRP abuse you’ve seen?

A company has won a generic domain name using a trademark it has had registered for less than a year, despite the fact that the current registrant has owned it for well over a decade.

The domain medicalexpo.com was first registered in 1997. It has been in the control of the same registrant since at least 2000, according to historical Whois records, but has never resolved to a web site.

The complainant, Benoit Thiercelin, who has has a history of attempted reverse domain name hijacking, was granted a European trademark on the term “Medical Expo” in June 2010.

In April 2011, Thiercelin filed a UDRP complaint with the little-used ADR Center of the Czech Arbitration Court, citing its European trademark and a US trademark as proof of its rights.

The US trademark was not fully “registered” until May 3, 2011, a month after the UDRP was filed, according to USPTO records.

On May 15, CAC ruled in his favor and awarded him the domain.

The panelist, Joseph Cannataci, found that the domain was registered “or at least re-registered” in bad faith, simply on the grounds that it had never been used.

If one is in good faith when registering a domain name, then the intention is understandably to use it for the purposes of one’s business or activity. If it remains unused for an unreasonable length of time then such registration is open to accusation of constituting “passive holding”. Irrespective of whether the domain name was registered before or after some of the Complainant’s marks, the current holder of the domain name does not seem to have used it or currently be using it.

The decision goes on to refer to the domain as a “TLD”.

The registrant did not help his cause by not responding to the complaint.

But it beggars belief that a UDRP panelist could infer bad faith registration of a generic domain that was registered 13 years before the complainant first acquired a trademark.

The idea that “re-registration” – presumably the panelist means the domain was renewed at some point after the trademark rights were acquired – could show bad faith does not even hold water.

The domain has been due to expire in 2012 since at least 2008, historical Whois records show. The registrant clearly bought a multi-year registration at some point before then, likely in 2002.

The complainant did not form his Medical Expo company until 2009, and did not file for his trademarks until December 2009 and February 2010. The registrant has not renewed the domain since then.

What we have here is a generic domain name, registered for 14 years, seized by complainant with only recently acquired rights, based on non-use and a flimsy piece of panelist reasoning.

Under other circumstances, it would be a slam-dunk case of reverse domain name hijacking.

In fact, Thiercelin has form when it comes to domain hijacking.

Last year, WIPO ruled that that he had attempted to use UDRP to hijack VirtualExpo.com, which also had been registered 10 years before he acquired his trademark rights.

The case was virtually identical to the MedicalExpo.com case, but the panelist ruled in exactly the opposite way, saying:

In the view of the Panel this is a Complaint which should never have been launched. The Complainant knew that the Domain Name was registered nearly 10 years before the Complainant acquired his registered rights, no attempt was made to demonstrate the existence of any earlier rights nor was any attempt made to address the issue arising from the disparity in dates. It simply was not mentioned. Instead, a flagrantly insupportable claim was made as to the Respondent’s bad faith intent at time of registration of the Domain Name and the Panel can only assume that it was hoped that the Panel would miss the point.

Can anybody say “forum shopping”?

This should be enough to scare the pants off of any domainer.