Comment to URDP

["Bret A. Fausett" <baf@fausett.com>]

To the ICANN Board and Staff:

I'd like to address one small aspect of the UDRP in response to the
Santiago Board resolution seeking comment to better "define and minimize
reverse domain name hijacking."

In my experience, a key feature of reverse domain name hijacking is that
the trademark owner seeks to use the hijacked domain itself, not simply to
stop infringing activity. This feature may be a place to build in a bright
line test.

What I propose the drafting group consider is allowing the registry to do
one of two things in response to a successful arbitration by a trademark
owner: (a) take the domain name out of the root and give it to no one, or
(b) transfer the domain name's "ownership" to the successful trademark
owner. A trademark owner would have the option, at the initiation of the
arbitration, to state whether it was seeking to have the domain name taken
out of the root or transferred to itself. Seeking to have the domain name
transferred, rather than removed, when the trademark owner already owned a
domain name containing some variant of the trademark (the name itself, its
initials, an abbreviation, etc.), would create a rebuttable presumption of
reverse domain name hijacking.

To use an example from the WIPO report, Mondial Corp. is the registrant of
the trademark "earth" in the category of clothing. In 1998, it initiated a
lawsuit to have "earth.com" transferred to it, even though, at the time
the action was filed, it had already registered earthshoe.com and
earthshoes.com. When the action was filed, earth.com had been in use for
over four years as a personal home page. Although Mondial subsequently
dismissed its action, these facts are regarded by many as a classic case
of reverse domain name hijacking. The proposal above would have provided a
strong deterrent to bringing the action.

This bright line test is narrowly crafted to have no effect on the vast
majority of arbitrations, but to have a deterrent effect against real
domain name hijacking. I suspect most trademark owners are neutral on
whether the domain name of a infringing party is removed or transferred.
For example, as the registrant of fausett.com, I would have no desire to
"own" 'wwwfausett.com', as long as the ability to use a site based on that
often used misspelling technique was removed forever. Also, the
presumption would not apply unless the trademark owner _already owned_
another site and was seeking to use the process to "trade up" to a better
domain.

I make this recommendation in addition to the definition and processes
already in the current draft. The rebuttable presumption would exist only
for the narrow class of cases noted above.

Please consider this concept as you finalize the UDRP.

Thank you.

Bret A. Fausett
Fausett, Gaeta & Lund, LLP