Something Else Used to Be Here
Date: Thursday May 16 2002, @07:22AM
Topic: New gTLDs
BenEdelman writes "...or should I say "wrote"?
On May 16, 2002 in this space we published an item submitted by Ben Edelman entitled
"Allegedly-infringing .BIZ registrations by California Lawyer John C. Kirkland". Today (May 20, 2002), Mr. Kirkland provided me with evidence
that several of the statements in that article were false, so I (michael) have
pulled it and replaced it with this explanatory note.
In the original article, which summarized a longer piece hosted at the
Berkman Center, Mr. Edelman suggested that 66 domain name registrations
"by Mr. Kirkland" were possibly infringing. In fact, however, the
registrations were not "by Mr. Kirkland" personally, but registered to
Swarthmore Associates, LLC (and Mr. Edelman's Berkman Center article now
reflects this). Mr. Kirkland was listed as the technical, billing and
administrative contact. He now informs us that these domains
were all registered for clients of his firm, that the same contact information was inadvertently listed by the registrar for all of the registrations, and that the firm is attempting to
transfer them to their clients as quickly as the balky registration system
will allow (which isn't as quick as it should be). He has provided
e-mails substantiating this as regards some of the domains, and I have no
reason to doubt it as regards the rest."
Mr. Edelman also noted that in a STOP decision regarding one domain registered by Swarthmore Associates, MDU.BIZ an NAF arbitrator transferred a domain registered by Mr. Kirkland for Swarthmore Associates. Indeed, in so doing, the arbitrator stated,
the agent and partner of record for Respondent is John C. Kirkland, Esquire, who is also Counsel of Record for Respondent in this proceeding and Respondent's Administrative Contact for purposes of its domain name registration. The official address of Respondent is also the residence of John C. Kirkland, Esquire. The name of no other person appears in connection with or on behalf of Respondent Swarthmore Associates, LLC in any Exhibit or Pleading presented in this matter. While Respondent's Pleadings and at least one Exhibit have Mr. Kirkland referring to his client, Respondent, in the third person, this Arbitrator can only conclude from all of the submissions that Swarthmore Associates, LLC is in fact synonymous with John C. Kirkland, Esquire.
In light of what we've documented previously at ICANNWatch, it's not very hard to persuade me that arbitrators in ICANN-sponsored trademark arbitrations such as the UDRP and the STOP proceeding are a little bit plaintiff-friendly whatever the actual facts. And indeed, that is what Mr. Kirkland suggests happened here. As an example of this, he notes that the quoted paragraph above errs when it says that the address of Swarthmore Associates noted by the arbitrator and in Mr. Edelman's original article is his home address. Mr. Kirkland also notes that arbitrator errs in identifying him as "partner of record" for Swarthmore Associates. He isn't; in any case LLCs do not have partners--they have members.
Mr. Edelman also noted that six other domains registered by the Swarthmore Association were being subjected to STOP challenges. This is correct, but Mr. Kirkland informs me that each of these domains was also registered for clients of his firm. He added that he believes that most of these clients are contesting the challenges, but they have engaged other law firms to represent them in those disputes.
The original article had 20 comments attached to it. I've deleted most of them on the grounds that they don't make a lot of sense when the thing they are commenting on has changed. [A complicating factor is our software, which removes all responses later in the thread when you delete a comment.] A few of them, however, remain of interest, so I've left the first four, which are Peter Baron's exchange with Ben Edelman. Also of interest was an exchange regarding the status of ICANN's advisory. At one point I asked this of fnord:
Does the advisory really say that a firm can't register through its lawyer? If so, where does ICANN get the power to overrule the law of attorney-client relations?
And, while we're on the topic, is an 'advisory' binding or just 'advisory'? If binding under what authority and su bject to what challenge or review? (And to the extent it applies to a registrar or registry, doesn't it have to be a "consensus policy" to be binding?)
Some of my reasoning regarding this was posted to the GA list. It seems to me it comes down to the definition of Registered Name Holder:
188.8.131.52 Any Registered Name Holder that intends to license use of a domain name to a third party is nonetheless the Registered Name Holder of record...
Who then is the Registered Name Holder? If it is the TM holder, that information is supposed to be in the WHOIS. If it is not the TM holder itself but its lawyer, this makes things more complex. Perhaps the WHOIS is the TM holder's lawyer, perhaps not, though presumably the TM holder would have no need to file a UDRP claim against its own lawyer.
Still, is the lawyer then the owner of the name and the TM holder is licensing it, or is it the other way around? And in the present case, while the registrant seems to be a lawyer, is he the TM holder's lawyer or a cybersquatter's lawyer? Who can tell? I'm all for making WHOIS private except to the registrar and those who receive a court order to access it (and I'd include a non-court UDRP panel in that), which might render much of this moot.
As for whether an advisory is binding, it seems to me that when ICANN tells registrars they should do something, they'd be foolish to take that to mean it is optional to comply. I'd also pointed out on the GA list that this hadn't followed proper ICANN procedure before coming into place, but when has that ever meant anything? In addition to the concerns raised in that post, I can imagine the word will get around amongst bad actors about which registrars are less able or willing to comply with this advisory. Registrars are always looking to provide value added services. I can't see how this advisory, whether mandatory or not, will be consistently implemented amongst all registrars. -g
An anonymous contributer then noted that,
The advisory only highlights the sections of the RAA that already required registrars to deal with false contact information, it does not add anything that the registrars, and registrants themselves didn't know before.
Which prompted fnord to say:
I largely agree with that, insofar as registrars go, but if they knew it before, why send out an advisory, stating that in the absence of extenuating circumstances, registrars should cancel a domain registration for false WHOIS info? And prior to the advisory, how many registrars cancelled how many domain names due to false WHOIS info? How many even attempted to verify or correct data that was pointed out to be possibly fraudulent? I would dispute the claim that most registrants knew this before. I doubt most registrants know it now. -g
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