New gTLDs Did Jeff Davies find a legal loophole?
posted by michael on Tuesday December 24 2002, @09:49AM

Anonymous writes "According to this post on the Icann public comments forum, Jeff Davies claims he found a legal loophole that allowed him to claim numerous domains during the .info challenge process. He also claims to have prevailed in a series of trials against Afilias. --Anion"

[Editor's note: for a related web site, see this ICANN lawsuit site.-mf]

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    Did Jeff Davies find a legal loophole? | Login/Create an Account | Top | 143 comments | Search Discussion
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    Re: Did Jeff Davies find a legal loophole?
    by dtobias ( on Tuesday December 24 2002, @11:43AM (#10693)
    User #2967 Info |
    I saw that post, and also replied... I cited this ICANN agreement as evidence that ICANN and Afilias had agreed in advance to require a valid trademark to be held by any sunrise challenger who wishes the domain transferred rather than cancelled, and subjected false trademark claims in this phase to further challenge just like false claims in the sunrise.

    Davies responded that no such thing was in any agreement he made with WIPO or with the registrar he dealt with afterward, in filing the challenge and in registering the domains after winning it, and when they later attempted to add such a clause it was illegal because this was modified after the fact.

    If this is actually the case, then clearly somebody (the registrars and/or Afilias and/or WIPO) violated the terms of the ICANN/Afilias agreement with regard to the sunrise challenge rules.

    However, I'd like to see an actual copy of the court decisions in question before I believe him on it.
    Re: Did Jeff Davies find a legal loophole?
    by dtobias ( on Wednesday December 25 2002, @01:44AM (#10704)
    User #2967 Info |
    The agreement says you can challenge without any trademark, but, if you win, you can only register the domain yourself if you do have a trademark; if you don't, it's supposed to return to the general pool (it's not specified exactly how this happens, but Afilias eventually used Landrush 2 for this purpose).
    Re: Did Jeff Davies find a legal loophole?
    by dtobias ( on Wednesday December 25 2002, @05:30AM (#10708)
    User #2967 Info |
    I think the key phrase is "in accordance with the sunrise registration conditions of the Registration Agreement". The sunrise registration conditions required a trademark.
    Re: Did Jeff Davies find a legal loophole?
    by dtobias ( on Wednesday December 25 2002, @05:33AM (#10709)
    User #2967 Info |
    Read the agreement more carefully. It doesn't say that a challenger must have a trademark, only that if a challenge is successful the challenger must abide by sunrise conditions (i.e. show trademark info) in order to register the domain themselves. In the case of the Challenges of Last Resort, Afilias didn't register the challenged domains themselves upon winning the challenges; they merely went into Landrush 2. Thus, the ICANN / Afilias agreement was followed in this case.
    Re: Did Jeff Davies find a legal loophole?
    by dtobias ( on Thursday December 26 2002, @04:52AM (#10727)
    User #2967 Info |
    I base my views on the ICANN/Afilias agreement because that's what I have always used as my "Bible" regarding policies in new TLDs; it's the fundamental document on which the new TLD launches were based, just as the U.S. Constitution is the fundamental document on which the U.S. government is based (even if branches of it sometimes do unconstitutional things).

    At the time leading up to the original launches, I kept up with the ICANN site very regularly to check for updates as the parts of the agreements fell into place, and took their word as to what the startup procedures would be. I thought some of the rules and procedures outlined there were unfair, and wrote in criticism of them here and elsewhere, but I never imagined that the registration agreements created by registries, registrars, and dispute resolution providers acting under the authority of the original ICANN agreement would be blatantly inconsistent with that agreement. I never paid a great deal of attention to those other agreements, and it amazes me now to see how inconsistent they are.
    Re: Did Jeff Davies find a legal loophole?
    by dtobias ( on Thursday December 26 2002, @04:57AM (#10728)
    User #2967 Info |
    To add to my other comments, it similarly amazed me, on another forum a few weeks ago, when somebody discussed how they managed to pick up a two-letter domain name (in .com, .net, or .org; I'm not sure exactly what name it was) that expired; I replied that this seemed implausible to me because the ICANN agreement with Verisign provided that no new registrations of two-letter names (as well as names on an exclusion list) would be allowed, although existing registrations would be grandfathered. I always interpreted that to mean that if such a name dropped or was otherwise deleted (e.g., after a UDRP decision calls for deletion rather than transfer), it would become reserved and unavailable to anybody, rather than being available like other drops. But apparently that is not the case.

    I guess I have too much of an ivory-tower mindset... I actually believe what I read in official ICANN/registry agreements and expect them to correctly describe the policies actually practiced with regard to the domains in question.
    Re: Did Jeff Davies find a legal loophole?
    by Richard_Henderson on Wednesday December 25 2002, @03:56PM (#10714)
    User #3269 Info |

    The Criteria for a successful .info Sunrise challenge as described at the time at the WIPO website did not involve any requirement for TMs on the part of the (successful) challenger.

    "2) What decisions can the Center take? The Center can: i.Decide in favor of the Challenger and, if the Challenger had requested transfer of the disputed domain name, order that the domain name be transferred to the Challenger; ii.Decide in favor of the Challenger and, if the Challenger had requested cancellation of the disputed domain name, order that the domain name be cancelled; iii.Decide in favor of the Respondent (i.e. the domain name registrant), and dismiss the Challenge. If the Center finds that the domain name was registered in compliance with the sunrise registration conditions, it will also dismiss any other or later filed Challenges (Paragraph 4(k)(iii)). According to Paragraph 10 (c) of the Rules, the Center is not required to state reasons for its decision."

    WIPO granted the names, without checking for any valid Trademarks from the challenger.

    Afilias then activated the successful challengers, regardless of trademarks.

    They simply transferred the domain name to the ‘successful’ challenger, whether they had a TM or not.

    This was extraordinary, because it contradicted their original provisions, but by then they had changed the Challenge landscape anyway by introducing their non-contractual Mass Challenge (which formed no part of any original contracts between registrants and registrars).

    For example, Afilias went ahead and unlocked and registered eg in the name of Jeff Davies for an additional year… why? And they entered NO TM details in the whois for this name. Weren’t they legitimising the process to a considerable extent?

    And why didn’t Afilias challenge this and other names when it said it would challenge the remaining illegitimate Sunrise names, if they considered this name illegitimate?

    Part of the confusion arose from the way Afilias announced they would change the arrangements, and change them from the original arrangements in the Agreement.

    They simply indicated that AFTER the Sunrise challenge period, they would carry out a NEW challenge process against original Sunrise fraudsters. This was a new arrangement, outside the terms of their ICANN Agreement. There was no statement of intent to challenge successful WIPO challengers as well. Afilias had changed the procedures, without setting out rules for the new status quo. There was no update to the Agreement, and yet the terms of reference had changed. The challenge period would now be extended (for Afilias at least) beyond the original 26th Dec cut off date.

    Later, on or around November 26th, Afilias made a reference to closing these loopholes (after they’d been publicised on an ICANN Public Forum)… but by then people had re-registered Challenged names without any actual TMs, prior to Afilias’s new statement. Afilias had indeed sanctioned these new registrations, and unlocked the names.

    The new retrospective amendments came AFTER they'd sanctioned the registrations. It used to be found here -

    But Afilias have removed this page.

    "Additionally, Afilias’ revised Sunrise Challenge rules and policies will require all successful Sunrise Challengers who wish to register a disputed name will be required to produce proof of trademark ownership prior to transfer of the name"

    This amendment was announced AFTER the loopholes and re-registering of challenged non-TM names had gone ahead.

    Afilias' latest amendment also stated that although anyone could challenge a name before 26 December 2001, only genuine TM holders could register it in their own name or else they had to let it drop into the pool of names for Sunrise II. From now on, hardcopy proof would be required (that is, you could only register a name that you challenged if you could prove that you owned a TM for that name). This amendment was quite overdue of course, and the problem was that people had already been allowed to register non TM successful WIPO challenges up to the time of this Afilias amendment at the end of November 2001.

    Afilias’s amendment (coupled with their own registration of Challenged names without TMs before this) does raise the question: prior to the amendment, did a loophole exist, which Afilias went along with by registering names like these minus the TMs? WIPO also make no mention of the TM in the criteria they used to determine a successful challenge.

    As you can see, there were at least 3 stages: (a) the original Sunrise rules, which were the only ones in the actual Agreements; (b) the new scenario introduced by Afilias quite early in October, whereby the Challenge process would be altered to include their own challenges… during this time successful WIPO challengers without TMs were allowed to register Sunrise names in their own names and extend the registration period… Afilias let this happen; (c) the Afilias amendment around 26th November 2001 which said that from now on TM details would have to be provided before any more names were registered to non-TM challengers.

    In legal terms, I see two main issues : were Afilias, through lack of clarity, changes in procedures, and legitimising of claimants through registering challenged names without TMs, in some ways creating a loophole, as a result of which the Challengers obtained their domain?

    The second main issue is whether Afilias (and ICANN) had the legal or constitutional powers and right to apply Trademark law to domain names in this restrictive manner? Domain names are NOT Trademarks themselves, they are only strings of letters pointing to web-content. As such, was ICANN (supported by Afilias) overreaching its legal mandate?

    To me, the second issue was far more significant than the first. In relation to either of the issues, Afilias’s case is weakened by the documented evidence of rule breaking by their own Board and Executive, and Mr Davies – combining both issues – may claim that he was reclaiming the public’s right to claim domains without the interference of Trademark Holders. Afilias may yet be shown to have been substantially corrupt (witness the Lorenz case, for example) and this, coupled with interference in fair trade, and retrospective changes in procedure may be held to defend Mr Davies, who might claim that they were trying to inhibit his freedom to trade by introducing retrospective amendments which had not been composed at the time he entered into separate contract with his registrar.

    Mr Davies’ case probably rests considerably on (a) the documented unreasonableness of Afilias on a number of fronts over a period of time (in which ICANN too could be implicated); and (b) on his right to have free access to the DNS without undue and overbearing interference by ICANN or Afilias, or retrospective attempts to change the way things operated, or to first register a name for him, unlock it, extend his registration by one year… and then, arbitrarily lock it again, impeding his right (on a number of scores) to do business.

    These are my findings, having followed the .info case very closely, and I am prepared to testify on behalf of Mr Davies in court of law.

    It is regrettable that significant documents have been removed by Afilias from their website but I have taken the opportunity to cache thousands of webpages and files, using Offline Explorer etc. I also have a large collection of e-mails, including the documentation of the Lorenz case – which the Afilias CEO has always refused to discuss and has never denied.

    Richard Henderson

    by WIPOorgUK on Saturday December 28 2002, @07:40AM (#10754)
    User #3146 Info |
    Was it not Palage who refuted the high rate of trademark fraud in .info roll-out?

    I would imagine, as trademark and policy consultant to Afilias, he has a lot to lose - given that these policies violate Trademark and Competition Law.

    So, I would not place much credence on his Declaration - either his judgement or lawfulness (or both) is 'suspect'.

    Does anybody know - did he get any 'good' .info domains for himself (or friends/family)?

    To quote Palage: "13. The Sunrise concept has been used in the roll-out of other TLDs to protect the interest of trademark owners."

    Virtually ALL words are trademarked MOST many times over. This could be any word - even common words you learnt with your A B C's - apple, ball and cat.

    This goes for initialisms also - e.g. the World Trade Organization (WTO) shares its initials with five trademarks in U.S. alone (please check).

    So with (as example) - whose trademark are they protecting exactly?

    Giving it to one "prevent[s] the registered owner of any other of those trade marks from using that trade mark." - aiding the violation of Trademark Law.

    The authorities are feeding you a load of bull*.

    You can legally use any word, words or initials to start a new business without registering a trademark - providing you are not passing off, of course. Take for example - the word 'apple' (check any other word yourself).

    'Apple' is legally used by thousands of businesses - large and small all over the world. Indeed, it is impossible that they all register themselves as trademarks - they are bound to conflict with many others, being confusingly similar. In my local phone book alone, there are at least five using this word - two garages (seems not connected), a car centre, fruit growers and a decorating firm.

    They use word 'apple' in LEGAL commerce - why should Apple Computers or any other 'apple' trademark be allowed to prevent them all from using

    It is violation of Competition Law to prevent any business competing in an open market (which .info is), as .info TLD is not specifically for registered trademarks.

    I do not think even Afilias would disagree that registered trademarks are given unfair advantage over other businesses - why not ask them Jeff?

    The authorities hide solution, which was ratified by honest attorneys - including the honourable G. Gervaise Davis III, UN WIPO panellist judge.

    Apple Computers do not own the word 'apple' above all other trademarks, small businesses, men, women and children - do they?

    Trademark Law is UNAMBIGUOUS - a mark is allowed for SPECIFIC goods or service ('class') in SPECIFIC country. Authorities illicitly aid corporations to flout these boundaries - in total contempt of peoples and small business rights.

    Please visit - not connected with corrupt United Nations !

    The above is the informed opinion of Garry Anderson - Health Warning for elective surgery and Sick of Spin. Americans - skilful is spelt correct.

    A trademark lawyer will be able to confirm most points - if you can afford them.

    Especially for my anonymous cowardly critic (see previous postings) - whom is bound to try distract you all from points raised: was aquired using logic and basic common sense (after many millions of domains had gone) - something you lack.

    You say the solution is severely flawed, yet fail to explain why - even though experts have ratified it. Also you fail to answer simple questions. People will see you are coward - I dare you to deny this fact:

    Fact: In this vast ocean of domains on the Internet, mostly non-trademarks, a marker is absolutely essential - for people to identify the domain as trademark. As Internet replacement for trademark symbol.

    Given virtually all words are registered trademarks many times over - how else are people to know?

    A protected TLD of .reg could provide this marker. Like .gov domains are protected U.S. government sites - people are assured of source.

    Even our slow-minded UK Patent Office admitted they knew of TLD '.reg' replacement for registered trademark symbol on the Internet.
    Basic difference
    by WIPOorgUK on Monday December 30 2002, @09:35PM (#10777)
    User #3146 Info |
    The main basic difference between "conspiracy to commit" and "aid and abet" is:

    "while an agreement is an essential element of the crime of conspiracy, aid sufficient for accomplice liability may be given without any agreement between the parties."

    W. LaFave & A. Scott, Substantive Criminal Law, § 6.8 at 156-57 (1986).

    Those that aid and abet are punishable as principal lawbreaker.

    I believe it can be proven that the United States Department of Commerce, through their agents (ICANN), did knowingly aid and abet corporations to break Trademark and Competition Law - also abridge words people can use, so violating First Amendment.