Wanna buy a SOCIAL brand pen for a dollar? No? How about social.web or cloud.guru or direct.flowers?
One intellectual property lawyer closely associated with a number of new gTLD registries has been using a flimsy online pen-selling business in order to obtain potentially valuable domains during sunrise periods.
Thomas Brackey of Beverley Hills law firm Freund & Brackey has acquired dozens of premium domain names during sunrise periods. He was good enough to share some of the details with DI.
Brackey owns three trademarks on the terms “DIRECT”, “SOCIAL” and “CLOUD”. All three were registered in Switzerland in late 2012, having been applied for in July that year.
All three cover the category “stylos”, or pens.
If you want to buy a CLOUD brand pen, you can do so at pentm.ch, a web site Brackey seems to have thrown up rather quickly using Shopify.
All three marks appear to have been registered via Marcaria.com, which charges $960 for a Swiss trademark registration.
Brackey obtained Trademark Clearinghouse registrations for his three trademarks, which would have cost him at least $150 per mark.
He seems to have used the pentm.ch web site to fulfill the TMCH’s “proof of use” requirement.
With TMCH registrations, he’s able to participate in new gTLD sunrise periods, giving him the first opportunity to register social.tld, cloud.tld and direct.tld for the usual inflated sunrise prices.
The pens themselves, Brackey assures us, are real.
But he makes no attempt to pretend that the pen-selling business was in thriving need of brand protection under the new gTLD program’s brand protection mechanisms.
Brackey told DI:
In the course of preparing new gTLD applications, I came to be pretty familiar with the various policy developments surrounding the creation and implementation of the TMCH.
For the first time mark holders of all stripes, and from every country would be given a pre-emptive right to acquire domain names that had nothing to do with the substance of their brands.
Musing on that, I identified what I believed to be a legitimate opportunity to acquire some domain names in the newTLD landscape. More curious than anything, I decided to put my theory to the test and resolved to try buying some domain names.
I’m not sure what I’m going to do with the domains I’ve purchased. I’ve never been a domain investor before, and not confident I qualify as one now. It’s all a bit of an experiment at this point and is certainly fascinating territory from an IP perspective.
There will no doubt be a number of important international legal developments that arise from the gTLD process — new rules, new policies and new opportunities.
At least two of Brackey’s new gTLD clients — What Box? and Plan Bee, which use Brackey’s law firm as their mailing address — have also registered large numbers of sunrise names using this same method.
He’s even selling Plan Bee’s “CONSTRUCTION” and “BUILD” pens on his web site.
Brackey acknowledged that some people take a “pretty dim view” of what he’s doing.
I’d have to say I’m one of them.
In my view, while Brackey may not be strictly breaking the rules of the new gTLD program, he’s certainly not acting within their spirit.
Members of Intellectual Property Constituency and others fought hard for rights protection mechanisms that would help them protect their or their clients’ pre-existing brands from cybersquatters.
The RPMs were not designed to provide a way for investors to avoid landrush auctions or a mad scramble for nice names on the first days of general availability.
The “proof of use” requirement was added to the rules in order prevent the kind of debacle we saw with the European Union’s .eu launch, where bogus trademarks were used to game EurID’s sunrise period.
But the barrier is tissue-thin, requiring merely a screenshot of a web site to overcome.
Gaming new gTLD sunrise periods may not be cheap — it may not even be profitable — but I have to wonder what kind of reputational impact it will have on new gTLD registries that choose to participate.
If you’re a brand owner, would you be more likely or less likely to trust a new gTLD registry that chooses to participate in sunrise gaming?
PeopleBrowsr has decided to cancel the landrush phase for its forthcoming .best new gTLD, citing “very little engagement” from registrants.
The TLD is due to go to sunrise today. Two days after it ends on May 19, it will go directly to general availability.
VP of operations Michael Deparini said in an email:
Many of our registrars have given us feedback that there has been very little engagement with the TLD Landrush Phase. We have decided to cancel Landrush.
We are excited to announce that we will open General Availability (GA) ahead of schedule to commence on May 21 at 16:00:00 GMT (12pm EST).
PeopleBrowsr is also the company behind .ceo, which launched two weeks ago with just 250 names in its first couple of days on the market — about 40% of which belonged to one cybersquatter.
.ceo currently has 798 domains in its zone, making it the fourth-smallest of the 74 new gTLDs that currently appear to be selling names.
The total number of new gTLD domains broke through half a million for the first time yesterday, but it seems to be due to Frank Schilling obtaining tens of thousands of names in his own TLDs.
Uniregistry’s .link became the fifth-largest new gTLD, moving almost 20,000 names, but it appears that the vast majority are registered to a company affiliated with CEO Schilling.
Uniregistry’s other gTLDs — .tattoo, .sexy, .pics, .photo and .gift — all saw huge jumps too, apparently for the same reason.
This morning’s .link zone files show a pop of 19,945 names, to a total of 20,050.
That would be the third-best GA-day performance, after .guru and .berlin, of any new gTLD to date, but it seems the vast majority are actually premium names acquired by a Uniregistry affiliate.
Of those new .link names, 18,272 (91%) are being parked on internettraffic.com, another Schilling company.
I took a random sampling and found them all registered to North Sound Names, a company based on Seven Mile Beach in Grand Cayman, which is where Schilling lives.
Schilling said this on Twitter yesterday:
— Frank Schilling (@Frank_Schilling) April 15, 2014
Premium names are of course those that were reserved by the registry. So either a third-party has bought them wholesale, or Uniregistry has simply shifted them over to an affiliated company.
I’ve asked Schilling to confirm that North Sound Names is also his company and will update this post with his answer.
Testing some domains in Uniregistry’s other gTLDs, I found a similar pattern — big spike, mostly parked at internettraffic.com, North Sound Names in a sampling of the Whois.
Here’s a screenshot of today’s best-performing new gTLDs from DI PRO (click to enlarge):
Overall, six of Uniregistry’s new gTLDs grew by a total of 50,735 domains today — 95% of the 53,147 industry total — and internettraffic.com’s name servers are responsible for 37,668 new names.
This brings the total number of “registered” domains to 538,093, though I would suggest that this metric may no longer be a decent measurement of actual end user interest in new gTLD domains.
The new gTLD .luxury seems to have sold more than $500,000 worth of domain names already.
(UPDATE: That’s probably not accurate. I seem to have misread some registrar pricing pages. The sunrise price was actually much lower than $1,000. See comments below.)
Saturday’s zone file for the Luxury Partners-owned TLD popped from 1 domain to 470 domains. Most of the new names appear to have been registered during the sunrise period, which ended early last week.
Given the current retail price of over $1,000, it seems .luxury is already a $500,000 business, at least for 2014. Renewal pricing is around the $700 mark, equating to $329,000 a year just on sunrise registrations.
That’s including the registrar markup, of course. The registry will be making a bit less.
“Luxury” brands such as Cartier and Formula 1 bought multiple domains during sunrise. Some tech firms, such as Facebook and Google, continued their blanket approach to defensives.
With such a high price, one wonders what some of these rights holders are thinking: do they really believe cybersquatters are prepared to drop $700 a year infringing their brands?
It will be interesting to see whether any of these registrants actually use their domains, or whether they’re mainly defensive registrations. I suspect the latter will be more often the case.
Currently in landrush, .luxury is due to go to general availability in about a month.
Belgium wants Donuts’ application for .spa rejected after the new gTLD applicant declined to sign a deal with the city of Spa.
In a March 20 letter to ICANN, published today, the Belgian deputy prime minister Johan Vande Lanotte said “negotiations between the stakeholders are closed”, adding that Belgium:
requests the Board of Directors of the ICANN to delegate the new “.spa” gTLD to the candidate who has a formal agreement with the local authorities of Spa and in respect of the public interest.
That’s the other applicant in the two-horse .spa race, Asia Spa and Wellness Promotion Council, which has promised to earmark up to 25% of its European profits to spa-related uses in the environs of Spa.
The letter was sent a week before the Governmental Advisory Committee issued its Singapore communique, which noncommittally noted that it “welcomes” the agreement between Spa and ASWPC.
ICANN may or may not be currently in receipt of firm, consensus GAC advice to accept or reject either of the remaining .spa applications.
In Beijing a year ago, the GAC put .spa on a list of gTLD strings where “further GAC consideration may be warranted” and asked ICANN to “not proceed beyond Initial Evaluation”.
At the Durban and Buenos Aires meetings last year the GAC said ICANN should not “proceed beyond initial evaluation until the agreements between the relevant parties are reached.”
Given that Donuts and Spa evidently cannot come to an agreement, ICANN presumably remains advised to keep one or both .spa applications on hold. The advice is pretty vague.
The string “spa” is not a geographic name within the rules of the new gTLD program. Donuts argues that it’s too generic nowadays to belong just to Spa.