Claims UDRP has cost over $360 million so far

Trademark owners have splashed out over $360 million on UDRP cases over the 20 years the policy has been active, according to an intellectual property trade group.

Marques, a European body representing trademark owners, reckons $360 million is a “conservative” estimate.

It reached the figure by multiplying the number of UDRP complaints filed to the end of 2018 — 72,038 — by the $5,000 estimated total cost of each complaint.

The World Intellectual Property Organization, which handles well over half of all UDRP cases, charges at least $1,500 per case, but trademark owners have other fees, such as paying lawyers to draft the complaints.

WIPO, which basically designed and wrote the UDRP back in 1998, has been paid at least $63.8 million in filing fees to date, Marques calculates.

Across all UDRP providers, well over 100,000 individual domain names have been subject to UDRP. It’s likely much more, but the National Arbitration Forum does not publish data on unique domains.

The Marques claims were made in a letter (pdf) from council member (and Com Laude managing director) Nick Wood to ICANN last week, part of IP lobbying efforts in the face of UDRP reform efforts. He wrote:

This lowest-case estimate of $360m is a very significant financial burden. Registrants, on the other hand, pay only for their own defence, if any. They do not pay damages, or even contribute to the provider fees, if they lose – which across the five active panel providers appears to be majority of the time.

One proposal that has been put forward by IP owners is for registrants to pay a $500 fee when they are hit by a UDRP complaint, which would be refundable if they prevail.

I can see this idea going down like a cup of iced sick in the domainer community.

Rather than lobbying for any specific proposal, however, Marques is asking ICANN to create an “independent expert group” outside of the usual Policy Development Process, to highlight “priority issues and possible solutions” for the PDP to consider.

Marques thinks the group should comprise a small number of trademark interests, registries and registrars, and registrant rights groups. It wants WIPO to chair it.

It also wants ICANN to coordinate UDRP providers in the creation of a unified set of data on UDRP cases processed to date, to help with future reform discussions.

ICANN community volunteers have been working on the “PDP Review of All Rights Protection Mechanisms in All gTLDs” — the RPM WG — since March 2016.

The RPM WG expects to put out its “Phase One” initial report, comprising recommendations for reform of the Trademark Clearinghouse, Trademark Claims and Sunrise policies, in early June this year.

Only then will it turns its attention to UDRP, in “Phase Two”, with talks due to begin at the ICANN 65 meeting in Marrakech later that month.

The working group has been beset by all kinds of personal drama among volunteers recently, which continues to add friction to discussions.

Court rules generic dictionary domains CAN be trademarked

A US appeals court has ruled that generic, dictionary domain names can be trademarked.

The hotel-booking web site Booking.com was told last week that it is in fact eligible to have “Booking.com” registered as a trademark, over the objections of the US Patent and Trademark Office.

The ruling could have a chilling effect on domain name choices in the hotel-booking market.

USPTO had denied the company’s trademark application in 2012 because “Booking.com” was considered too generic.

Under US trademark law, you can’t register a trademark if it merely generically describes the product or service you offer rather than its source.

You couldn’t register “Beer” as a brand of beer, for example, though you might be able to register “Beer” as a brand of shoes.

Booking.com sued to have the USPTO ruling overturned in 2016, and in 2017 a district court judge ruled that “although ‘booking’ was a generic term for the services identified, BOOKING.COM as a whole was nevertheless a descriptive mark”.

USPTO appealed, saying that “Booking.com” is too generic to be trademarked, but last week it lost.

In a 2-1 majority decision, the appeals court ruled:

We hold that the district court, in weighing the evidence before it, did not err in finding that the USPTO failed to satisfy its burden of proving that the relevant public understood BOOKING.COM, taken as a whole, to refer to general online hotel reservation services rather than Booking.com the company… we reject the USPTO’s contention that adding the
top-level domain (a “TLD”) .com to a generic second-level domain (an “SLD”) like booking can never yield a non-generic mark.

Key evidence was a survey Booking.com had submitted that indicated that almost three quarters of consumers understood “Booking.com” to be a brand name, rather than a generic term to describe hotel-booking web sites.

Here are some other extracts of the appeals court majority’s thinking, as they relate to domain names:

Merely appending .com to an SLD does not render the resulting domain name non-generic because the inquiry is whether the public primarily understands the term as a whole to refer to the source or the proffered service.

…

We… conclude that when “.com” is combined with an SLD, even a generic SLD, the resulting composite may be non-generic where evidence demonstrates that the mark’s primary significance to the public as a whole is the source, not the product

…

because trademarks only protect the relevant service — here, the district court granted protection as to hotel reservation services but not travel agency services — protection over BOOKING.COM would not necessarily preclude another company from using, for example, carbooking.com or flightbooking.com

…

In sum, adding “.com” to an SLD can result in a non-generic, descriptive mark upon a showing of primary significance to the relevant public. This is one such case.

The ruling does not appear to protect all uses of a generic dictionary word combined with a TLD, but rather only “rare circumstances” where there’s evidence of a secondary, non-generic meaning.

One judge on the case, James Wynn, was not convinced by the majority’s thinking. He warned that the ruling goes against years of legal precedent and could enable Booking.com to subject competitors to expensive litigation.

In his dissenting opinion, he wrote:

BOOKING.COM is a run-of-the-mill combination of a generic term with a Top Level Domain that creates a composite mark concerning the subject or business encompassed by the generic term—precisely the type of mark that the courts in Hotels.com, Reed Elsevier Properties, 1800Mattress.com, and Advertise.com found did not amount to the “rare circumstance” that warranted affording the domain name trademark protection.

…

Presumptively allowing protection of domain names composed of a generic Secondary Level Domain and Top Level Domain conflicts with the law’s longstanding refusal to permit registration of generic terms as trademark

Wynn added that he was “not convinced” that Booking.com’s competitors that use the word “booking” in their domains will be protected by the “fair use” defense, and that the existence of such a defense will not prevent Booking.com from suing them out of business regardless.

Put simply, putative competitors may — and likely will — choose not to operate under domain names that include the word “booking” — even if that term best describes the service they offer — because they do not want to incur the expense and risk of defending an infringement action.

The full ruling can be read here (pdf).

After ICANN knockback, Amazon countries agree to .amazon talks

Talks that could lead to Amazon finally getting its long-sought .amazon gTLD are back on, after a dispute between ICANN and eight South American governments.

The Amazon Cooperation Treaty Organization last week invited ICANN CEO Goran Marby to meet ACTO members in Brasilia, any day next week.

It’s not clear whether Amazon representatives have also been invited.

The outreach came despite, or possibly because of, ICANN’s recent rejection of an ACTO demand that the .amazon gTLD applications be returned to their old “Will Not Proceed” status.

In rejecting ACTO’s Request for Reconsideration, ICANN’s board of directors had stressed that putting .amazon back in the evaluation stream was necessary in order to negotiate contractual concessions that would benefit ACTO.

Amazon is said to have agreed to some Public Interest Commitments that ACTO would be able to enforce via ICANN’s PIC Dispute Resolution Process.

The e-commerce giant is also known to have offered ACTO cultural safeguards and financial sweeteners.

ACTO’s decision to return to the negotiating table may have been made politically less uncomfortable due to a recent change in its leadership.

Secretary-general Jacqueline Mendoza, who had held the pen on a series of hard-line letters to Marby, was in January replaced by Bolivian politician Alexandra Moreira after her three-year term naturally came to an end.

ICANN’s board has said it will look at .amazon again at its meetings in Kobe, Japan, in March.

ICANN picks Seattle for public meeting

ICANN will hold one of its 2021 public meetings in Seattle, Washington.

The organization’s board of directors directed the CEO to start talks with the yet-unnamed venue at its meeting at the weekend.

The meeting, ICANN 72, will be the 2021 Annual General meeting and will be held from October 23 to 28.

Believe it or not, it will be the first time a public ICANN meeting has been held on the mainland United States since the LA meeting in 2014.

That’s quite a feat, given that ICANN’s definition of “North America” basically only has two countries in it.

Brexit won’t just affect Brits, .eu registry says

European Union citizens living in the UK could find their .eu domain names shut off in the next few months, EURid has said.

In a just-published update to its Brexit guidance, the registry has told Brits that they stand to lose their domains on May 30, should the UK leave the EU with no transition deal.

That would give them just two months to transfer their domains to an entity in one of the remaining 27 member states.

On May 30, affected domains will be removed from the .eu zone file and will stop resolving, technically entering “withdrawn” status.

It will be no longer be possible to renew these domains, nor to transfer any domains to a UK-based registrant.

All affected domains — over 273,000 at the last-published count — will be deleted and released back into the available pool, in batches, following March 30, 2020.

This could be good news for domainers in the EU27, given that the deleted domains may include potentially valuable generics.

But EU27 citizens currently residing in the UK, who for whatever reason are unable to transfer their names to an address in their home country, will be treated at first in the same way as Brits. EURid said:

There may be situations of EU citizens, who at present are residing in the UK and have registered a .eu domain name. These citizens would become ineligible as a result of the UK withdrawal and would, therefore lose their eligibility for a .eu domain name, but might become eligible again when the new .eu regulatory framework comes into force later this year. At present, such individuals will experience a disruption of service from 30 May 2019, as a result of the withdrawal of the name.

The registry said last month that new regulations are coming that would allow EU citizens to register .eu domains no matter in which country they live.

Before these regulations kick in, these EU registrants will find their names unresolvable.

By May 30, starving Brits will be far too preoccupied with beating each other to death in the streets for scraps of the country’s last remaining baguette, trading sexual favors for insulin, and so on, so .eu domains will likely be among the least of their no-deal Brexit concerns.

The situation for registrants if the UK leaves the EU with a deal is less urgent. Their domains will stop functioning March 2, 2021, and from January 1, 2022, will be released back into the pool for registration.

Brits would be able to register new .eu domains all the way through the transition period, until the end of December 2020.

It’s not beyond the bounds of possibility that Brits could be grandfathered in to .eu eligibility, should the UK leave on terms similar to European Economic Area members such as Norway, which are eligible under the existing rules.

Currently, it’s anyone’s guess whether we’re leaving with a deal or without. The government’s proposed transition plan was defeated earlier this month in an unprecedented revolt by members of parliament, which leaves no-deal enshrined in the statute books as the default option.

The government is currently attempting to talk its MPs into switching sides, but many suspect it’s just attempting to run down the clock to the March 29 Brexit deadline, compelling MPs to vote for the transition at the eleventh hour as the lesser of two evils.

The opposition is currently urging the government to rule out a no-deal scenario, to discourage British businesses from executing potentially irreversible and damaging exit plans, but the government is reluctant to do so, fearing it could weaken its negotiating hand with the EU27.

The far more-sensible option — giving British voters the opportunity to change their minds with a referendum — appears to be gaining support among MPs but still seems like a pipe dream.

There’s some evidence that the UK is now officially a demographically Remain country, simply due to the number of elderly racists who have died, and the number of youthful idealists who have reached voting age, since the original 2016 referendum.