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IANA contract up for rebid this week?

Kevin Murphy, February 24, 2011, Domain Policy

As ICANN’s leadership heads off to Brussels to kick off two days of unprecedented talks about new top-level domains with international governments, one nation has an ace up its sleeve.

The US government could be just a day or two away from putting the IANA contract, from which ICANN derives much of its power over domain names, up for public discussion and rebidding.

It’s a matter of record that the IANA contract expires at the end of September, and that it will have to be renewed this year if ICANN wants to continue functioning as it is today.

But could the rebid process kick off as early as this week? It seems likely. The timing is right, especially if the US wants to make a statement.

It was February 21, 2006, five years ago this week, that the US Department of Commerce put out a “Request For Information” that led to the current five-year IANA deal with ICANN being signed.

No new RFI has been released yet. But Commerce could choose to pull rank, putting pressure on ICANN to recognize its authority, by issuing such a document this week.

There’s also the possibility that Commerce will issue not an RFI but instead a “Notice Of Inquiry”, a different type of public procurement procedure notice that would kick off not just a rebidding process but a whole lot of public argument about ICANN’s role in internet governance.

Over the years, it has not been unheard of for the US government to occasionally remind ICANN that it has a special relationship with it, particularly before important governance decisions are made.

Most recently, shortly before the ICANN meeting in Cartagena last December, Larry Strickling, assistant secretary at Commerce, warned that the new TLDs program wasn’t shaping up quite how the US expected.

Next week, Commerce’s Suzanne Sene is one of several Governmental Advisory Committee representatives expected to take a lead role in the ICANN-GAC negotiations.

One way or the other, the IANA contract is up for renewal this year, and the process may soon start that could see the function, hypothetically at least, change hands this September.

IANA, for Internet Assigned Numbers Authority, is responsible for the high-level management of IP address allocations, protocol numbers, and top-level domains.

If a gTLD or ccTLD wants to make a change to its DNS records it has to go to IANA, in much the same way as domain owners such as you and me have to go to our registrar.

IANA decides whether to redelegate a ccTLD to a new registry, for example. When .co liberalized recently, it only did so after IANA approved the transfer of the domain to .CO Internet from a Bogota university.

It’s also responsible for making the call on adding new TLDs to the root. Assigning the IANA function to an entity other than ICANN could, for example, add latency to the go-live date of new TLDs.

For the last decade, IANA has been pretty much an ICANN in-house department. It’s not at all clear to me what would happen if IANA was contracted to a third party, especially one that disagreed with ICANN’s decisions.

Both the European Commission and the Internet Architecture Board have recently indicated that they believe the IANA-ICANN relationship could be due a rethink, as Milton Mueller of the Internet Governance Project noted last summer.

Wanted: official ICANN tweeter

Kevin Murphy, February 19, 2011, Domain Policy

ICANN is looking to beef up its media relations department, and has put out its feelers for someone to take over its Twitter and Facebook accounts.

The organization has posted a job opening to its hiring page for a media and marketing coordinator, reporting to director of marketing and outreach Scott Pinzon and head flack Brad White.

Responsibilities include writing “blogs, tweets, and status updates on ICANN’s behalf for Twitter, Facebook, LinkedIn, and other platforms”.

I believe that currently @ICANN is usually authored by Pinzon.

The role also includes more traditional media relations activities, such as writing press releases and fielding calls from journalists and bloggers.

ICANN has also started looking to fill an opening for a publications manager for its marketing department. I believe both positions are new.

Also of note: ICANN is no longer advertising for a compliance director, raising hopes in some quarters that it has finally found a replacement for David Giza, who left unexpectedly last July. UPDATE: it’s back.

ICANN cancels Jordan meeting

Kevin Murphy, February 17, 2011, Domain Policy

ICANN will not hold its 41st public meeting in Amman, Jordan, apparently due to safety concerns in the region, which is experiencing a rash of sometimes violent protest.

In an email to the GNSO Council half an hour ago, ICANN vice president of policy development support David Olive wrote:

The ICANN June meeting will not take place in Jordan. A decision was made and the Jordanian host has already been contacted about this change.

In a day or so, there will be a formal ICANN announcement concerning this matter as well information on the location for the next meeting.

The rumor currently circulating on Twitter and mailing lists is that Singapore is a likely replacement candidate. Singapore, like Jordan, recently received an IDN ccTLD in its local script.

Following popular revolutions in Tunisia and Egypt over the last several weeks, many Middle Eastern nations, including Jordan, have experienced anti-government protests, some of which have turned violent.

ICANN has been very sensitive to the security of its delegates since many stakeholders stayed at home rather than attend its terrorist-threatened meeting in Nairobi, Kenya, a year ago.

Rumor sites fair game under UDRP

Kevin Murphy, February 14, 2011, Domain Policy

Could Apple shut down MacRumors.com using the Uniform Dispute Resolution Policy?

That seems like a fair interpretation of a recent WIPO decision over the domain name LegoRumors.com, which was handed over to Lego Juris, maker of the popular toys.

LegoRumors.com leads to blog-style news site, not many months old, that reports on Lego products.

The site is a bit of a mess – poorly written, spammy, and ad-heavy. You’d have to be nuts to think it was an official Lego site.

It does appear to contain original content, and does not look to me like the kind of clear-cut cybersquatting that the UDRP was intended to address.

Lego succeeded in seizing the domain, regardless. The WIPO panelist (in a decision that could also have used a run through a spell-checker) found:

The disputed domain name consists of two different words, one consisting of the Complainants registered trademark and other of a generic term “rumors”. The Panel considers that the addition of the generic denomination, especially when added to a famous trademark is not sufficient to avoid confusion.

Pay attention, “rumors” sites.

The panelist also found that the domain name was registered in bad faith, on the basis that the registrant clearly was aware of Lego’s trademark (because he’s writing about Lego) and because the site contained sponsored links to potential competitors.

Apply this logic to MacRumors.com, which knowingly uses an Apple trademark in its domain name, writes about Apple products, and currently shows ads for BlackBerry and Adobe products that compete with Apple.

I’m not suggesting for a second that MacRumors is in any danger of losing its domain, but if the UDRP was implemented equitably, this case could be seen as scary precedent.

UDRP reform effort begins

Kevin Murphy, February 5, 2011, Domain Policy

ICANN has kicked off a review of its Uniform Dispute Resolution Policy, the occasionally controversial process used to adjudicate cybersquatting complaints.

The GNSO Council on Thursday voted to ask ICANN staff for a so-called “Issues Report” on UDRP, indicating that reform of the process is likely.

This is the relevant portion of the resolution, passed unanimously:

RESOLVED #2, the GNSO Council requests an Issues Report on the current state of the UDRP. This effort should consider:

* How the UDRP has addressed the problem of cybersquatting to date, and any insufficiencies/inequalities associated with the process.

* Whether the definition of cybersquatting inherent within the existing UDRP language needs to be reviewed or updated. The Issue Report should include suggestions for how a possible PDP on this issue might be managed.

Issues Reports commissioned by the Council are expected within 15 days, and 15 days after that the Council is expected to vote on whether to kick off a Policy Development Process.

A PDP could lead to changes to the UDRP that would be binding on all ICANN-accredited registrars and their customers.

While the UDRP has proven very effective at dealing with clear-cut cases of cybersquatting over the last 12 years, critics claim that it is often interpreted too broadly in favor of trademark interests.

If you read this blog regularly, you’ll know I frequently report on unfathomable UDRP decisions, but these are generally the exception rather than the rule.

Unrelated to UDRP, the GNSO Council has also voted against asking ICANN for an Issues Report on registry/registrar best practices for mitigating domain abuse.

Business interests wanted registrars to take more measures (voluntarily) to curb activities such as phishing, but registrars think this kind of rule-making is beyond the scope of the GNSO.

After a lot of heated debate and arcane procedural wrangling, the Council decided instead to ask for a “discussion paper”, a term that has no meaning under ICANN’s rules, meaning a PDP is less likely.

Four more ICANN 40 sponsors revealed

Kevin Murphy, February 3, 2011, Domain Policy

Iron Mountain, IronDNS, RegistryPro and the Public Interest Registry have added their names to the list of companies prepared to fork out big bucks to sponsor ICANN’s San Francisco meeting.

That brings the total number of ICANN 40 sponsors revealed so far to five, after VeriSign’s unprecedented $500,000 “Diamond” deal.

The new sponsors have splashed out more modest fees. Of the six tiers of sponsorship available, all four have opted for least expensive two.

Iron Mountain, IronDNS and RegistryPro have all chosen the same tiers as they have before, but they are likely paying more since ICANN has doubled its list prices since last year.

Meanwhile, .org manager PIR has downgraded to a $25,000 “Silver” package, having been a “Gold” sponsor at the Cartagena meeting.

The deadline for signing sponsorship deals and handing over artwork is February 15.

Renew a domain, lose a UDRP?

Kevin Murphy, February 2, 2011, Domain Policy

Renewing a domain name could land you in hot water if you’re hit with a UDRP complaint, if some current thinking at the National Arbitration Forum gains traction.

In the recent NAF decision over FreeGeek.com, panelists argued that if a domain was not originally registered in bad faith (because no trademark existed at the time) renewing the domain after a trademark had been obtained could nevertheless be used to demonstrate bad faith.

Showing that a disputed domain was registered and used in bad faith is of course one of the three pillars of UDRP.

Free Geek Inc runs its web site at freegeek.org. It wanted the .com equivalent, which was registered in 2001, six years before the company acquired a US trademark on its brand.

FreeGeek.com is owned by by Kevin Ham’s company, Vertical Axis. The registration has been renewed every year since 2001.

The three NAF panelists were split on whether renewals post-2007 should be considered evidence of bad faith.

Two of the panelists agree that Respondent should be charged with exercising some diligence at renewal to determine if there are outstanding marks which conflict; one does not.

That’s a disturbing statement, if you’re interested in registrant rights – two panelists basically want domain investors to relinquish their domains if somebody else subsequently acquires a trademark.

What’s more, the panelists’ position appears to be based on a dodgy interpretation of recent UDRP precedent. The decision goes on to say:

The Chair of the Panel is concerned that the Respondent renewed its registration after the trademark was applied for and the USPTO registered the mark. In RapidShare AG and Christian Schmid v. Fantastic Investment Limited… a panel in which the Chair participated, found that “bad faith” could include renewal of a domain name after the issuance of the mark.

It’s a dodgy interpretation because the referenced case, rapidshare.net, does not in fact discuss renewals at all.

In that case, bad faith was actually shown to have arisen due to the domain (which had survived a UDRP just a few months earlier) being bought by a new registrant, not due to a renewal.

What we seem to have here is a case of a couple of NAF panelists thinking about trying to expand the scope of the UDRP. There’s a ton of precedent concluding that renewals are not relevant when establishing whether a domain was registered in bad faith.

With that in mind, you’d think the case would have been a slam-dunk win for the complainant. Not so.

In fact, Ham prevailed on the basis that he had acquired rights to the domain by simply parking it, which constituted a legitimate commercial use.

This panel, in contrast to other panels, finds that the use of this model and evidence of the use is enough to justify a factual finding that Respondent has used the name for commercial purposes

Respondent has clearly demonstrated that it acquired rights in the name by usage even if the usage has been limited to a “pay-per-click” links page. Such usage does not itself signal a lack of rights and legitimate interests and can constitute a bona fide offering of goods or services according to Policy

If there are any recent UDRP cases that show just how random a process it is, this is the one.

UDRP tip: put your domain in the Whois

Kevin Murphy, January 25, 2011, Domain Policy

If you’re fighting off a bogus UDRP complaint on one of your domain names, the onus is on you to prove that you have “rights and legitimate interests” in the domain.

That could be tricky, especially if you think you may been assigned a panelist with a pro-complainant bent, but there may be some ways to mitigate the risk of losing your domain.

Take this recent case, for example: PissedConsumer.com versus ThePissedOffConsumer.com.

The panelist determined that the registrant of ThePissedOffConsumer.com had no “rights and legitimate interests”on the grounds that a) it was competing with the complainant, b) the web site used the same color (red) as the complainant and c) the registrant was not known by the domain.

Ignoring the first two (highly debatable) findings, let’s look at c). The panelist wrote:

Complainant alleges that Respondent has never used a company name “The Pissed-Off Consumer” in connection with operation of any business activities. The WHOIS information for the disputed domain name lists the registrant of the domain as “John Cross.”

The Panel finds, based on the evidence in the record, that Respondent is not commonly known by the disputed domain name, and as such lacks rights and legitimate interests in the said name

In other words, because Whois showed the name of the registrant, rather than the name of the domain, the registrant was not “commonly known” as the domain and lacked rights.

To add insult to injury, the complainant was assumed to have earned the right to the mark “Pissed Consumer” before it had officially acquired a trademark (and before the disputed domain was registered) simply by virtue of operating PissedConsumer.com, despite the fact that it hides behind Whois privacy and is called Consumer Opinion Corp.

Presumably, if Cross had simply added the text “ThePissedOffConsumer” to his Whois record, the panelist would have had one less data point “in the record” to justify his finding.

In fringe UDRP cases, that could prove a useful defensive tactic.

TorrentReactor.net wins TorrentReactor.com case

Kevin Murphy, January 21, 2011, Domain Policy

The World Intellectual Property Organization has handed the domain name TorrentReactor.com to the owner of TorrentReactor.net, one of the internet’s most-popular BitTorrent movie piracy sites.

Really.

TorrentReactor.net owner Alexey Kistenev filed a UDRP complaint over the .com version with WIPO last year and won it earlier this month.

It was actually the second time he had taken the domain to arbitration.

Kistenev’s first complaint was dismissed by WIPO in March 2009, on the grounds that he did not have a valid trademark.

A month later, he applied for a US trademark on “TorrentReactor”, which was granted in July last year, and the UDRP was refiled in October.

In the latest case, Kistenev was helped by not only the fact that he now owns the trademark but also the fact that the domain has changed hands since the original complaint.

I wonder how much the current owner paid. In 2008, the then-owner had tried to sell it to Kistenev for $150,000. When he countered with a $30,000 offer, the owner asked for $50,000.

TorrentReactor.net is a page-one Google hit for searches including [torrent movies] and [torrent music].

Its front page contains links to torrents of recent, copyrighted movies such as The Social Network, Red and Let Me In, as well as new software, TV shows and music.

What we seem to have here is a case of WIPO indirectly helping piracy.

I guess it shows that WIPO arbitration panels can apply the UDRP uniformly when they want to.

Red Bull files UDRP after domain expires

Kevin Murphy, January 17, 2011, Domain Policy

Energy drink maker Red Bull has filed a UDRP complaint over the domain name red-bull.com, which until recently it actually owned.

It’s moderately embarrassing, but not unheard of, for companies to turn to the UDRP after domains they allow to expire are then snapped up by squatters.

What makes the complaint unusual is that the domain red-bull.com is not an obscure fringe case – it’s virtually identical to the company’s trademark and to its primary domain, redbull.com.

Also, according to Whois records, Red Bull also appears to use MarkMonitor, the brand-protection registrar, for its domain name needs.

Whois history shows that Red Bull acquired the domain in about 2005, but allowed it to expire in September 2010, after which it was quickly acquired by a third party.

Did Red Bull deliberately allow it to expire? There’s a case to be made for rationalizing defensive registration portfolios to reduce costs, but this domain would seem (to me) to be a definite keeper.

MarkMonitor has a policy of declining to comment on clients, which it chose to exercise when I inquired.

The domain red-bull.com currently resolves to what can only be described as a splog. It shows up on page two of Google for the search [red bull], which may go some way to explaining the UDRP.

Red Bull acquired red-bull.net, red-bull.cc and red-bull.tv via UDRP proceedings between 2001 and 2004, but has since allowed all three, as well as the .org, which it also owned, to expire.

The .tv and .net versions are currently parked, meaning they don’t rank so well in search engines.

It’s not the first odd UDRP Red Bull has filed. Last year, it lost a UDRP complaint despite winning a court case over the same domain name, as I reported in June.