A defiant ICANN working group looking at cybersquatting rules for intergovernmental organizations is sticking to its guns in an ongoing face-off with the Governmental Advisory Committee.
In a report published for public comment this week, the GNSO working group recommended that IGOs should be given the right to use the UDRP and URS rights protection mechanisms, despite not being trademark owners.
But the recommendations conflict with the advice of the GAC, which wants ICANN to create entirely new mechanisms to deal with IGO rights.
The WG was tasked with deciding whether changes should be made to UDRP and URS to help protect the names and acronyms of IGOs and INGOs (international non-governmental organizations).
For INGOs, including the special cases of the International Olympic Committee and the Red Cross/Red Crescent, it decided no changes and no new mechanisms are required, concluding:
Many INGOs already have, and do, enforce their trademark rights. There is no perceivable barrier to other INGOs obtaining trademark rights in their names and/or acronyms and subsequently utilizing those rights as the basis for standing in the existing dispute resolution procedures (DRPs) created and offered by ICANN as a faster and lower cost alternative to litigation. For UDRP and URS purposes they have the same standing as any other private party.
The case with IGOs is different, because using UDRP and URS requires complainants to agree that the panel’s decisions can be challenge in court, and IGOs by their nature have a special legal status that allows them to claim jurisdictional immunity.
The WG recommends that these groups should be allowed access to UDRP and URS if they have protection under Article 6ter of the Paris Convention, a longstanding international intellectual property treaty.
This rule would actually extend UDRP and URS to hundreds more IGO names and acronyms than the GAC has requested protection for, which is just a few hundred. WIPO’s 6ter database by contrast currently lists 925 names and 399 abbreviations.
To deal with the jurisdictional immunity problem, the WG report recommends that IGOs should be allowed to file cybersquatting complaints via a third-party “assignee, agent or licensee”.
It further recommends that if an IGO manages to persuade a court it has special jurisdictional immunity, having been sued by a UDRP-losing registrant, that the UDRP decision be either disregarded or sent back to the arbitration for another decision.
The recommendations with regard IGOs are in conflict with the recommendations (pdf) of the so-called “small group” — a collection of governments, IGOs, INGOs and ICANN directors that worked quietly and controversially in parallel with the WG to come up with alternative solutions.
The small group wants ICANN to create separate but “functionally equivalent” copies of the UDRP and URS to deal with cybersquatting on IGO name and acronyms.
These copied processes would be free for IGOs to use and, to account for the immunity issue, would not be founded in trademark law.
The WG recommendations are now open for public comment and are expected to be the subject of some debate at the March ICANN meeting in Copenhagen.
Actor turned fashion designer John Malkovich is to feature in a Super Bowl commercial themed on cybersquatting.
The ad, for web host Squarespace, sees Malkovich complaining about the domain johnmalkovich.com belonging to some other guy by the same name.
In a roundabout way, this is also a commercial for Tucows, the newly-crowned second-largest domain registrar, which Squarespace acts as a reseller for.
Here’s the ad:
In reality, Malkovich owns the the .com of his full name. He sells clothes there.
However, he’s reportedly currently suing the owner of malkovich.com in France.
Clarification: a reader has asked me to clarify that using a domain in good faith isn’t strictly “cybersquatting”. Every DI reader already knows this, but apparently unless you spell it out every single time you risk incurring the anger of cretins.
Remember the Coalition Against Domain Name Abuse? The lobby group that campaigned for stronger cybersquatting laws and against new gTLDs?
CADNA on Thursday used the imminent inauguration of new US president Donald Trump to announce that it’s back in the game, hoping a Republican-dominated government will be friendlier to its agenda.
It told its supporters on “the 2016 general elections outcomes for both the U.S. Congress and the White House present a unique and timely opportunity to push through legislation”.
It wants new federal laws modeled on 2010 Utah state legislation, the E-Commerce Integrity Act, which creates liability for non-registrant third-parties including domain name registrars.
The Utah law is closely modeled on the federal Anticybersquatting Consumer Protection Act of 1999, but has some crucial differences.
CADNA noted at the time the law was up for a vote that it:
expands the liability for cybersquatting activity to include the registrant’s authorized licensee, agent, affiliate, representative, domain name registrar, domain name registry, or other domain name registration authority that knowingly and actively assists a violation
That’s something ACPA does not allow for, and CADNA wants the federal law amended to include provisions such as this. It said:
The Coalition Against Domain Name Abuse (CADNA) is now mobilizing the global business community to promote and pass legislation that will greatly enhance the available protection mechanisms for online trademark protection and limit the appeal of cybersquatting.
The last time US cybersquatting laws came close to being amended was with the Anti-Phishing Consumer Protection Act of 2008, aka the Snowe Bill, which ultimately did not pass.
The Internet Commerce Association, which lobbies on behalf of domain investors, expressed concern with CADNA’s new efforts to revive its noughties lobbying tactics, telling members:
for now this is more of a CADNA recruiting effort than an active legislative natter. As you can see, CADNA announced a similar Federal effort in 2010, which went nowhere. Nonetheless, we should proceed on the assumption that CADNA will secure a sponsor and have such legislation introduced in the new Congress and that such legislation may well gain traction in the current political environment.
The ICA also expressed concern about the amount of statutory damages the Utah law permits compared to the ACPA.
While both Utah and ACPA allow damages of $1,000 to $100,000 per domain, the Utah law assumes the highest amount if a “pattern or practice” of cybersquatting can be demonstrated.
CADNA has been pretty quiet for the last few years.
Before the US elections last November, its most recent press release dated from October 2013.
The group is managed by the same people who run Fairwinds Partners, a new gTLD consultancy specializing in managing dot-brand gTLDs for some of the world’s biggest names.
Its gTLD clients include L’Oreal, Marriott and Walmart.
Fairwinds used its links to CADNA and its staunch opposition to the new gTLD program to pitch for these clients back in 2012.
The European Broadcasting Union plans to operate the forthcoming .radio gTLD in such a way as to discourage domain investors.
It yesterday set out its launch timetable, registration restrictions, and expects registrars to charge companies between €200 and €250 per domain per year ($213 to $266).
Interestingly, it’s also proposing to charge different, lower prices for individuals, though that pricing tier has not been disclosed.
I’m not sure I can think of another company that wants to charge different prices depending on the class of registrant and it seems like would be tough to enforce.
If I’m the domain manager at a radio company, can’t I just register the domain in my own name, rather than my employer’s, in order to secure the lower price?
Other registries, notably .sucks, have come under fire in the past for charging trademark owners higher fees. Isn’t basing pricing tiers on the legal status of the registrant pretty much the same thing?
That perception could be reinforced by the angle the EBU is taking in its marketing.
“We are proposing that the radio community may like to consider securing the integrity of their web presence by requesting appropriate .radio domains for defensive reasons initially,” .radio TLD Manager Alain Artero said in a blog post.
“The TLD will be focused on content and matters specific to radio and we want to prevent speculators and cybersquatting in this TLD,” he added.
The EBU is not planning to take the TLD to general availability until November, which is a long launch runway by any measure.
Before then, for two months starting May 3, there’ll be a qualified launch program in which radio stations (as opposed to “internet” radio stations) will be able to claim priority registration for their brand.
Sunrise will begin in August.
The EBU secured rights to .radio as a “Community” gTLD, meaning it has to enforce registration restrictions, after a 2014 Community Priority Evaluation ruling allowed it to win its contention set without an auction.
The eligibility criteria are somewhat broad, including: “Radio broadcasting stations. Unions of Broadcasters. Internet radios. Radio Amateurs. Radio professionals (journalists, radio hosts, DJs…) [and] Radio-related companies selling radio goods and services”.
Afilias’ .mobi is to become the latest of the pre-2012 gTLDs to agree to adopt the Uniform Rapid Suspension policy in exchange for lower ICANN fees.
Its Registry Agreement is up for renewal, and Afilias and ICANN have come to similar terms to .jobs, .travel, .cat, .pro and .xxx.
Afilias has agreed to take on many of the provisions of the standard new gTLD RA that originally did not apply to gTLDs approved in the 2000 and 2003 rounds, including the URS.
In exchange, its fixed registry fees will go down from $50,000 a year to $25,000 a year and the original price-linked variable fee of $0.15 to $0.75 per transaction will be replaced with the industry standard $0.25.
It’s peanuts really, given that .mobi still has about 690,000 domains, but Afilias is getting other concessions too.
Notably, the ludicrous mirage that .mobi was a “Sponsored” gTLD serving a specific restricted community (users of mobile telephones, really) rather than an obvious gaming of the 2003-round application rules, looks like it’s set to evaporate.
Appendix S to the current RA is not being carried over, ICANN said, so .mobi will not become a “Community” gTLD, with all the attendant restrictions that would have entailed.
Instead, Afilias has simply agreed to the absolute basic set of Public Interest Commitments that apply to all 2012 new gTLDs. Text that would have committed the registry to abide by the promises made in its gTLD application have been removed.
But the change likely to get the most hackles up is the inclusion of URS in the proposed new contract.
URS is an anti-cybserquatting measure that enables trademark owners to shut down infringing domains, without taking ownership, more quickly and cheaply than the UDRP.
It’s obligatory for all 2012-round gTLDs, and five of the pre-2012 registries have also agreed to adopt it during their contract renewal talks with ICANN.
Most recently, ICM Registry agreed to URS in exchange for much deeper cuts in its ICANN fees in .xxx.
In recent days, ICANN published its report into the public comments on the .xxx renewal, summarizing some predictably irate feedback.
Domainer group the Internet Commerce Association, which is concerned that URS will one day be forced upon .com and .net, had a .xxx comment that seems particularly pertinent to the .mobi news:
Given the history of flimsy and self-serving justifications by [Global Domains Division] staff and the ICANN Board for similar actions taken in 2015, we are under no illusion that this comment letter will likely be successful in effecting removal of the URS and other new gTLD RA provisions from the revised .XXX RA. Nonetheless, we strenuously object to this GDD action that intrudes upon and debases ICANN’s legitimate policymaking process, and urge the GDD and Board to reconsider their positions, and to ensure that GDD staff ceases and desists from taking similar action in the context of future RA renewals and revisions until the RPM Review WG renders the community’s judgment as to whether the URS and other new gTLD RPMs should become Consensus Policy and such recommendation is reviewed by GNSO Council and the ICANN Board.
The Intellectual Property Constituency of the GNSO, conversely, broadly welcomed the addition of more rights protection mechanisms to .xxx.
The Non-Commercial Stakeholder Group, meanwhile, expressed concern that whenever ICANN negotiates a non-consensus policy into a contract it negates and discourages all the work done by the volunteer community.
You can read the summary of the .xxx comments, along with ICANN staff’s reasons for ignoring them, here (pdf).
The .mobi proposed amendments are also now open for public comment.
Any lawyers wishing to rack up a few billable hours railing against a fait accompli can do so here.