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 retirement.info 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.