ICANN tries to dodge .jobs legal fees

“Please don’t sue us!”
That’s the message some are taking away from the latest round of published correspondence between lawyers representing ICANN and .jobs registry Employ Media.
Employ Media last week said it will take ICANN to the International Chamber of Commerce, after they failed to resolve their dispute over the company’s controversial Universe.jobs venture.
Now ICANN has asked the registry’s executives to return to the negotiating table, apparently to reduce the risk of having to spend millions of dollars on lawyering.
In a letter (pdf) to Employ Media’s attorneys, ICANN outside counsel Eric Enson of Jones Day said that ICANN wishes to avoid “costly legal fees associated with arbitration or litigation”:

I again request a meeting among the business persons involved in this matter to discuss potential resolutions before spending more of ICANN’s funding on unnecessary litigation.

The latest round of published correspondence, like the last one, and the one before that, seems to contain a fair bit of legal posturing, with both sides accusing the other of conducting negotiations in “bad faith” for various reasons.
Filing the arbitration notice with the ICC might turn out to be a smart move by Employ Media, knowing how risk-averse and cash-conscious ICANN is.
ICANN is still smarting from the last time it headed to arbitration, for its Independent Review Panel over ICM Registry’s .xxx top-level domain.
ICANN lost that case in February 2010, and had to cover the panel’s almost $500,000 in costs, as well as its own legal fees. The overall price tag is believed to have comfortably made it into seven figures.
But that may well turn out to be small beer compared to the price of losing arbitration against the .jobs registry.
Unlike the IRP, in which both parties pay their own lawyers no matter who wins, Employ Media’s contract states that the losing party in arbitration must pay the legal fees of the winner.
To go up against .jobs at the ICC and lose could hit ICANN’s coffers harder than the .xxx dispute, in other words. That’s not to say it would lose, but with matters as complex as this there is that risk.
It’s worth noting that Employ Media’s lead attorney has form when it comes to reaching into ICANN’s pockets – Crowell & Moring’s Arif Ali also represented ICM Registry in the .xxx IRP case.

.jobs takes ICANN to arbitration

Employ Media, manager of the .jobs top-level domain, has become the first registry operator to take ICANN to arbitration to fight off a shut-down threat.
The company in the last hour said it has filed a Request for Arbitration with the International Chamber of Commerce in Paris, after informal efforts to reach agreement with ICANN broke down.
Employ Media CEO Tom Embrescia said in a statement:

This filing was necessary to ward off ICANN’s unwarranted and unprecedented threat of contract termination. That action created immediate uncertainty about the .JOBS TLD on the Internet and caused significant duress on our business.

ICANN had threatened to terminate the .jobs registry agreement – which I believe is pretty much the only option available to it in the case of a perceived breach – in February.
The filing means .jobs can operate as normal until the situation is resolved.
The dispute is essentially about Universe.jobs, a jobs listing service operated by the DirectEmployers Association using tens of thousands of generic .jobs domain names granted to it by Employ Media.
The .JOBS Charter Compliance Coalition, made up of independent jobs boards, complained to ICANN that Universe.jobs went against the spirit and letter of the original .jobs Charter.
Employ Media says that Universe.jobs was essentially authorized when ICANN approved its Phase Allocation process for handing out generic domains last year.
Employ Media is represented by lawyers from Crowell & Moring, some of the same individuals responsible for ICM Registry’s defeat of ICANN at its Independent Review Panel last year.
The request for arbitration can be read here in PDF format.

Afilias lawyers up for TLD applicants

Registry services provider Afilias has expanded its relationship with the law firm Crowell & Moring to support prospective new top-level domain applicants.
The two companies said this morning that they have entered into a memorandum of understanding under which Crowell will provide legal and business consultation to Afilias’s new TLD clients.
Afilias, along with VeriSign and Neustar, is expected to one of the major beneficiaries of the introduction of new TLDs, due to its experience managing the technical back-end for several existing TLDs.
Here at the .nxt conference in San Francisco this week, one oft-repeated message is that applicants can smooth their TLD application with ICANN by signing up an incumbent to provide the back-end.
Crowell is one of a small number of law firms with a specialist domain name consulting arm. It is affiliated with the IP Clearinghouse, which wants to play a key role in new TLD launches.

Trademark clearinghouse signs up 40 registrars

The ClearingHouse for Intellectual Property, CHIP, is signing up one or two domain name registrars to its system every day, according to its chief architect, attorney Bart Lieben.
Lieben tells me that 40 registrars have signed up since the IP protection service officially launched two weeks ago, and that there is strong interest among corporate-focussed registrars.
CHIP is a registry for companies’ trademark rights, designed to ease trademark protection in domain names. It’s backed by Deloitte and Lieben’s employer, the law firm Crowell & Moring.
For registrars, there’s an opportunity to offer value-added services to their corporate customers.
The company plans to offer its services to new top-level domain registries during their sunrise periods, and to existing registries and registrars on an ongoing basis.
It’s currently in use at .SO Registry, the recently relaunched Somalian registry, as well as .co.no, a third-level domain provider from Norway.

Law firm launches new TLD service

The law firm Crowell & Moring has launched a practice dedicated to helping companies apply for – and sue other applicants for – new top-level domains.
The company also said today it has hired Bart Lieben, the Brussels-based lawyer who probably has more recent experience launching new TLDs than most others in his field.
Crowell says it will offer these services:

* gTLD Assessment Services
o Feasibility study and strategic advice for brand owners and others prior to filing an application
* gTLD Application Services
o Preparation and filing of ‘New gTLD’ applications
* gTLD Litigation
o Against other applicants during and after the application process
o Against third parties opposing an application
* gTLD Launch and Implementation Assistance
o On-going assistance, post filing and execution of ICANN contract by applicant

With the new TLD round looking like a near certainty for 2011, there’s money to be made in consulting, and it’s hardly surprising that the lawyers are moving in.
World Trademark Review reported earlier this month that Hogan Lovells has become the first such firm to gain ICANN registrar accreditation in an effort to help its clients navigate new TLDs.
The new Crowell unit is being headed by Brussels-based Flip Petillion (an occasional WIPO panelist on UDRP cases) and Washington, DC-based John Stewart.
New hire Lieben has previously helped with the launches of .mobi and .tel. He was involved heavily with .CO Internet’s sunrise, and is currently helping GMO Registry and .SO Registry with the forthcoming .so launch.