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ICANN plans meeting on URS amid calls for RFP

Kevin Murphy, September 19, 2012, Domain Policy

ICANN wants to try to put the unresolved issues surrounding the Uniform Rapid Suspension system to bed and is planning a meeting in a couple of weeks time to solicit community input.

According to an email from chief of strategy Kurt Pritz to the GNSO Council and At-Large Advisory Committee, ICANN plans to hold a webinar, with a possible face-to-face option, in about two weeks.

The aim is to sort out the problems with URS, which was originally conceived as a faster, cheaper version of UDRP for clear-cut cases of cybersquatting that don’t require much thought to decide.

It’s currently neither fast enough for the trademark lobby’s liking, nor as cheap as ICANN had hoped.

ICANN had targeted a $300 to $500 fee to file URS complaints, but following conversations with the World Intellectual Property Organization and National Arbitration Forum it realized that the true cost was likely to be as much as triple that amount, more in line with UDRP fees.

The higher than expected costs are largely due to the additional registrant protections that were negotiated into the URS procedure over the last few years, which complicate matters.

At a session at the ICANN meeting in Prague this June, community members tried to figure out ways to make URS cheaper without compromising these protections.

Pritz’s email suggested that some of these ideas might work, but others might run counter to established policy.

Many parties on both side of the fence are coming to the realization that unless URS is in place, new gTLD registries that are contractually obliged to abide by it may not be able to launch.

Yesterday, at Melbourne IT’s summit on trademark protection in Washington DC, there were some calls for ICANN to just issue a request for proposals and see which provider offers the best price.

There are plenty of UDRP lawyers/panelists who believe URS cases can easily be handled in 15 minutes at $200, assuming most of the process is automated and the complaints are kept to a word limit.

Registries propose PKI-based new gTLD sunrises

Kevin Murphy, September 12, 2012, Domain Tech

Neustar and ARI Registry Services have come up with an alternative to ICANN’s proposed new gTLDs sunrise period process, based on a secure Public Key Infrastructure.

The concept was outlined in a draft paper published today, following an intensive two-day tête-à-tête between domain companies and Trademark Clearinghouse providers IBM and Deloitte last month.

It’s presented as an alternative to the implementation model proposed by ICANN, which would use unique codes and was criticized for being inflexible to the needs of new gTLD registries.

The PKI-based alternative from Neustar and ARI would remove some of the cost and complexity for registries, but may create additional file-management headaches for trademark owners.

Under the ICANN model, which IBM and Deloitte are already developing, each trademark owner would receive a unique code for each of their registered trademarks and each registry would be given the list of codes.

If a trademark owner wanted a Sunrise registration, it would submit the relevant code to their chosen registrar, which would forward it to the registry for validation against the list.

One of the drawbacks of this method is that registries don’t get to see any of the underlying trademark data, making it difficult to restrict Sunrise registrations to certain geographic regions or certain classes of trademark.

If, for example, .london wanted to restrict Sunrise eligibility to UK-registered trademarks, it would have no easy way of doing so using the proposed ICANN model.

But IP interests participating in the development of the Trademark Clearinghouse have been adamant that they don’t want registries and registrars getting bulk access to their trademark data.

They’re worried about creating new classes of scams and have competitive concerns about revealing their portfolio of trademarks.

Frankly, they don’t trust registries/rars not to misuse the data.

(The irony that some of the fiercest advocates of Whois accuracy are so concerned about corporate privacy has not been lost on many participants in the TMCH implementation process.)

The newly proposed PKI model would also protect trademark owners’ privacy, albeit to a lesser extent, while giving registries visibility into the underlying trademark data.

The PKI system is rather like SSL. It used public/private key pairs to digitally sign and verify trademark data.

Companies would submit trademark data to the Clearinghouse, which would validate it. The TMCH would then sign the data with its private key and send it back to the trademark owner.

If a company wished to participate in a Sunrise, it would have to upload the signed data — most likely, a file — to its registrar. The registrar or registry could then verify the signature using the TMCH’s public key.

Because the data would be signed, but not encrypted, registrars/ries would be able to check that the trademark is valid and also get to see the trademark data itself.

This may not present a privacy concern for trademark owners because their data is only exposed to registries and registrars for the marks they plan to register as domains, rather than in bulk.

Registries would be able to make sure the trademark fits within their Sunrise eligibility policy, and would be able to include some trademark data in the Whois, if that’s part of their model.

It would require more file management work by trademark owners, but it would not require a unique code for each gTLD that they plan to defensively register in.

The Neustar/ARI proposal suggests that brand-protection registrars may be able to streamline this for their clients by enabling the bulk upload of trademark Zip files.

The overall PKI concept strikes me as more elegant than the ICANN model, particularly because it’s real-time rather than using batch downloads, and it does not require the TMCH to have 100% availability.

ICANN is understandably worried that about the potentially disastrous consequences for the new gTLD program if it creates a TMCH that sits in the critical registration path and it goes down.

The PKI proposal for Sunrise avoids this problem, as registries and registrars only need a stored copy of the TMCH’s public key in order to do real-time validation.

Using PKI for the Trademark Claims service — the second obligatory rights protection mechanism for new gTLD launches — is a much trickier problem if ICANN is to stick to its design goals, however.

ARI and Neustar plan to publish their Trademark Claims proposal later this week. For now, you can read the Sunrise proposal in PDF format here.

Secret ICANN briefing fuels IGO new gTLDs debate

Kevin Murphy, September 10, 2012, Domain Policy

The Universal Postal Union, newly installed .post registry manager, has launched a withering attack on ICANN for protecting some intergovernmental organizations and not others.

Its salvo follows the release of briefing materials — previously redacted — that ICANN’s board was given when it approved the new gTLD program at the Singapore meeting in June 2011.

The UPU says that the documents show that ICANN engaged in “ex post facto attempts at justifying legally-flawed decisions” when it decided to give extra protection to the Olympics and Red Cross/Red Crescent movements.

As you may recall, these protections were granted by the ICANN board when the program was approved, following lobbying of the Governmental Advisory Committee by both organizations.

In the current round, nobody was allowed to apply for gTLDs such as .redcross or .olympic, or translations in dozens of languages. There are also ongoing talks about extending this protection to the second level.

Some have argued that this would lead to a “slippery slope” that would resurrect the problematic Globally Protected Marks List, something ICANN and the GAC have denied.

They have maintained that the IOC/RC/RC movements are unique — their marks are protected by international treaty and many national laws — and no other groups qualify.

Other IGOs disagree.

Almost 40 IGOs, including the United Nations and International Telecommunications Union, are lobbying for an additional 1,108 strings to be given the same protection as the Olympics.

If they get what they want, four applied-for gTLDs could be rejected outright and dozens of others would be put at risk of failing string similarity reviews.

According to the UPU’s latest letter, ICANN’s newly disclosed rationale for giving only the IOC/RC/RC organizations special privileges was based on a flawed legal analysis:

most of the recommendations contained in documents such as the Unredacted Paper seem to reflect, in an unambiguous way, ex post facto attempts at justifying legally-flawed decisions in order to narrow even further the necessary eligibility “criteria” for protection of certain strings, apparently so that only two organizations would merit receiving such safeguards under the new gTLD process.

In other words, according to the UPU and others, ICANN found itself in a position in June 2011 where it had to throw the GAC a few bones in order to push the new gTLD program out of the door, so it tried to grant the IOC/RC/RC protections in such a way that the floodgates were not opened to other organizations.

You can read the unredacted ICANN briefing materials here. The UPU letter, which deconstructs the document, is here.

It’s worth noting that the Applicant Guidebook already gives IGOs the explicit right to file Legal Rights Objections against new gTLD applications, even if they don’t have trademark protection.

Big brands ask US for published list of known cybersquatters, other stuff

Kevin Murphy, September 6, 2012, Domain Policy

A public, published list of repeat cybersquatters was among the demands that the trademark lobby took to a meeting with the US government in Washington DC yesterday.

The summit, hosted by the Department of Commerce, was the latest stage in the US government’s response to the campaign for more new gTLD rights protection mechanisms kicked off by the Association of National Advertisers a little over a year ago.

About 30 big brand owners, along with several trade associations and campaign groups, took part.

The Internet Commerce Association somehow managed to blag an invitation too, and was the only representative of domain registrants, according to a blog post by ICA counsel Phil Corwin.

The companies, which included tech companies such as Microsoft, Facebook, AOL, Yahoo and eBay and offline brand owners such as Nike, Coca-Cola, Time Warner and News Corp, met in early June to formulate a set of recommendations to take to Commerce.

These recommendations are outlined in an August 29 letter (pdf), a copy of which DI has obtained.

Notably, the companies asked for a published list of “bad actors” who have repeatedly lost Uniform Rapid Suspension cases. The letter states:

Recidivist bad actors should be tracked via a list of common Respondents and that list should be published and publicly available.

However, we understand that this request is a low-priority item, discussed only briefly yesterday, and that Commerce representatives did not immediately embrace it.

The bulk of the discussions related to tweaks trademark owners want to see in the Trademark Claims service — which alerts them and the registrant when somebody tries to register a potentially infringing domain name — and the URS.

The brand owners want Trademark Claims, which new gTLD registries are only obliged to offer for the first 60 days of general availability, extended for a longer period, possibly up to three years.

On the face of it, this is among the most reasonable longstanding demands from the IP crowd, but ICANN has resisted it to date as it’s worried about creating a monopoly in the pre-existing market for trademark monitoring services.

If the Trademark Clearinghouse is alerting you every time somebody registers a domain name with your brand in it, why pay MarkMonitor or Melbourne IT for the same service?

The letter also says that Trademark Claims should cover brand+keyword registrations, and domains containing registered trademarks, rather than just exact matches.

The worrisome aspect of this request is that there’s quite a high risk of false positives due to run-on words, very short trademarks, acronyms and dictionary words.

Non-commercial ICANN stakeholders dislike this due to the possibility of a chilling effect on free speech, while registries and registrars don’t like anything that puts unnecessary obstacles in the registration path.

With URS, the trademark owners want a full loser-pays system, though they acknowledge that it could raise the filing fee, which is something they don’t want.

To keep costs down, they want a lower filing fee for cases where the registrant does not respond and a URS panelist is not appointed, which seems like a reasonable idea.

The idea of ICANN (and, ultimately, registrants) subsidizing URS fees has also been put forward.

Finally, the trademark owners want registries to implement defensive blocking systems with one-time fees, modeled on the Sunrise B process that ICM Registry used with the launch of .xxx.

Some of the ideas — such as lower filing fees for uncontested URS cases — seem fairly reasonable and I can see them gaining traction.

Others, such as the brand+keyword protections, seem harder to implement and less likely to pass through ICANN unchallenged.

So what happens next? According to ICA’s Corwin:

For their part, the hosts of the meeting [Commerce] listened politely but did not to endorse any of the suggestions, although they did commit to follow-up interagency discussions. It was pointed out that some of the proposals have been raised before and went nowhere within ICANN, and questions were raised about what process would be utilized to place them before the broader ICANN community and its Board. It was also indicated that the U.S. would be reluctant to undertake any unilateral communications on these matters to ICANN’s Board.

Given this reluctance, I wouldn’t be surprised to see some of these ideas bubbling up through the Governmental Advisory Committee instead, as ideas from the US trademark lobby are wont to do.

As with every ICANN meeting, expect to see further discussions in Toronto next month.

Melbourne IT holding new gTLD trademarks summit

Kevin Murphy, August 29, 2012, Domain Services

Melbourne IT will hold a half-day conference on trademark protection in new gTLDs next month in Washington DC.

Google, Microsoft, Donuts, and the Association of National Advertisers are among those expected to take part in the discussion.

The meeting follows on from Melbourne IT’s recent anti-cybersquatting proposal, which calls for stronger protections for brands that are frequent targets of trademark infringement.

The panel includes many familiar faces from ICANN meetings. Applicant interests are represented, albeit by a minority of the panelists.

It will be moderated by Melbourne IT chief strategy officer (and ICANN vice-chair) Bruce Tonkin. Here’s the full line-up:

Andrew Abrams, Trademark Counsel, Google

James L. Bikoff, Partner, Silverberg, Goldman & Bikoff

Steve DelBianco, Executive Director, NetChoice and Vice Chair Policy Coordination, ICANN GNSO Commercial Business Users Constituency

Dan Jaffe, Group EVP Government Relations, Association of National Advertisers

Jon Nevett, Co-Founder, Donuts

Russell Pangborn, Associate General Counsel – Trademarks, Microsoft

Craig Schwartz, General Manager – Registry Programs, BITS/The Financial Services Roundtable

Brian J. Winterfeldt, Partner, Steptoe & Johnston and ICANN GNSO Counselor (Intellectual Property Constituency)

The event starts at 1.30pm local time at the Capital Hilton in DC on September 18. An RSVP is needed. There’s no official word on remote participation yet.

What’s wrong with Melbourne IT’s new anti-cybersquatting plan?

Kevin Murphy, August 16, 2012, Domain Policy

Genuine question.

Melbourne IT, the Aussie registrar with the increasingly vocal brand-protection focus, has come up with a new scheme for protecting super-famous brands after new gTLDs start to launch.

It draws on elements of the abandoned Globally Protected Marks List, ICM Registry’s Sunrise B policy, .CO Internet’s launch program, and various recent demands from the intellectual property community.

It’s called the paper Minimizing HARM (pdf), where HARM stands for High At-Risk Marks.

The title may set off grammatical alarm bells, but the rest reads like the least-unreasonable proposition for protecting big brands from cybersquatters that I’ve come across in a long time.

What I like about it is that it’s actually contemplating ways to prevent gaming from the outset, which is something the IP lobby hardly ever seems to do when it demands stronger rights protection mechanisms.

The idea calls for the forthcoming Trademark Clearinghouse to flag a narrow subset of the trademarks in its database as High At-Risk Marks that deserve special treatment.

Melbourne IT has organizations such as PayPal and the Red Cross in mind, but getting on the list would not be easy, even for famous brands.

First, companies would have to prove they’ve had trademark protection for the brand in three of ICANN’s five geographic regions for at least five years — already quite a high bar.

Implemented today, that provision could well rule out brands such as Twitter, which is an obvious high-risk cybersquatting target but might be too young to meet the criteria.

Dictionary words found in any of UN’s six official languages would also be banned, regardless of how famous the brand is. As the paper notes, that would be bad news for Apple and Gap.

Companies would also have to show that their marks are particularly at risk from phishing and cybersquatting.

Five successful UDRP complaints or suspensions of infringing domains by a “top ten registrar” would be enough to demonstrate this risk.

But that’s not all. The paper adds:

In addition to meeting the minimum criteria above, the High At-Risk Mark will need to obtain a minimum total points score of 100, where one point is awarded for each legal protection in a jurisdiction, and one point is awarded for each successful UDRP, court action, or domain registrar suspension undertaken in relation to the mark.

That appears to be setting the bar for inclusion high enough that an OlympicTM pole-vaulter would have difficulty.

Once a brand made it onto the HARM list, it would receive special protections not available to other brands.

It would qualify for a “Once-off Registration Fee”, pretty much the same as ICM’s .xxx Sunrise B, where you pay once to block your exact-match domain and don’t get pinged for renewal fees every year.

Any third parties attempting to register an available exact-match would also have to have two forms of contact information verified by the gTLD registry before their names resolved.

The Trademark Claims service – which alerts mark owners when somebody registers one of their brands – would run forever for HARM-listed trademarks, rather than just for the first 60 days after a gTLD goes into general availability.

The always controversial Uniform Rapid Suspension service would also get tweaked for HARM trademarks.

Unless the alleged cybersquatter paid the equivalent of a URS filing fee (to be refunded if they prevail) their domains would get suspended 48 hours after the complaint was filed.

I’m quite fond of some of the ideas in this paper.

If ICANN is to ever adopt a specially protected marks list, which it has so far resisted, the idea of using favorable UDRP decisions as a benchmark for inclusion – which I believe Marque also suggested to ICANN back in February – is attractive to me.

Sure, there are plenty of dumb UDRP decisions, but the vast majority are sensible. Requiring a sufficiently high number of UDRP wins – perhaps with an extra requirement for different panelists in each case – seems like a neat way of weeding out trademark gamers.

The major problem with Melbourne IT’s paper appears to be that the system it proposes is just so complicated, and would protect so few companies, that I’m not sure it would be very easy to find consensus around it in the ICANN community.

I can imagine some registries and registrars might not be too enthusiastic when they figure out that some of the proposals could add cost and friction to the sales process.

Some IP owners might also sniff at the some of the ideas, just as soon as they realize their own trademarks wouldn’t meet the high criteria for inclusion on the HARM list.

Is Melbourne IT’s proposal just too damn sensible to pass through ICANN? Or is it riddled with obvious holes that I’ve somehow manged to miss?

Discuss.

Congressmen say new gTLDs need more comments

Kevin Murphy, August 8, 2012, Domain Policy

Senior members of the US Congress have asked ICANN to prove that it’s giving the internet community enough opportunity to comment on its 1,930 new gTLD applications.

A letter from the chairs and ranking members of the House and Senate judiciary committees sent to ICANN yesterday basically implies rather heavily that, again, ICANN’s new gTLD program outreach sucks.

Sens. Leahy and Grassley, and Reps. Smith and Conyers write:

many members of the public outside the ICANN community are unaware that the New gTLD program is underway. Of those who are aware, few know about the public comment process or comprehend that their opportunity to participate in this forum is scheduled to end in less than a week.

Probably not coincidentally, the letter comes soon after requests for more time to comment from the Association of National Advertisers and the Intellectual Property Constituency.

The IPC wants another 30-45 days added to the comment period, which is currently set to close — at least for comments that will be forwarded to evaluators — this Sunday.

The Leahy letter highlights the need for comment on “potentially sensitive names like ‘.church’, ‘.kids’, and ‘.sucks'”, which should be a cause for concern for at least seven gTLD applicants.

Given who’s pulling the strings here, it’s not surprising that the letter also highlights the demands from IP interests for stronger rights protection mechanisms, such as a permanent Trademark Clearinghouse service.

They write:

ICANN’s current policy only requires the Clearinghouse to be available for the first 60 days after a registry launches. Moreover, the Clearinghouse will only give notice when someone registers a website that is identical to a trademark; not when the website contains the trademark in a varied form.

As an example, this means that a nonprofit such as the YMCA will receive notice only if a user registers a website such as www.yrnca.give or www.ymca.charity within the first 60 days of the “.give” or” .charity” registry. The YMCA would not receive notice if a person registers those names after 60 days, or if someone registers a closely related name such as www.ymcaDC.charity.

(To which I add, as an aside: and what if Intel wants to register www.buymcafee.shop?)

I think the Congressmen/ANA/IPC have a point, anyway, at least about the lack of commenting from people outside the tightly knit ICANN community.

A lot of data was released on Reveal Day, and much more has been released since.

There are 1,930 new gTLD applications.

The public portions weigh in at almost 400 MB in HTML format and generally run to between 15,000 and 50,000 words apiece.

The 20,000 published application attachments (which MD5 hashing reveals comprise close to 3,000 unique files) are currently taking up about 6 GB of space on the DI PRO server (where subscribers can cross-reference them to see which files show up in which applications).

It’s a lot to read.

That must be at least part of the reason there hasn’t been a single community-based objection comment about Google’s single-registrant .blog application yet.

For me, that’s the benchmark as to whether anyone in the real world is paying attention to this program.

I mean, seriously: no bloggers are concerned about Google using .blog as an exclusive promo tool for its third-rate blogging platform?

What’s worrying the Congressmen is that ICANN’s expensive Independent Objector is not allowed to object to an application unless there’s been at least one negative comment about it

The IO can file community-based objections on behalf of those who cannot afford to do it themselves, but it’s not at all clear yet what the cut-off date for the IO to discover these comments is.

Hopefully, when ICANN reveals its proposed evaluation timetable this week, some of these questions will be answered.

(Former) Donuts director hit with cybersquatting claim over Disney and Olympic domains

Kevin Murphy, August 7, 2012, Domain Policy

Donuts, the massive new gTLD applicant, has been hit by another set of cybersquatting claims, this time aimed at one of the company’s original directors.

Graham Stirling, who is listed as a Donuts Inc director in the company’s only Securities and Exchange Commission filing, seems to own several domain names containing Disney and Olympics trademarks.

(UPDATE: Donuts has confirmed that Stirling is no longer with the company, and hasn’t been since November 2011. Read the company’s full statement at the bottom of this post.)

The information emerged in a comment filed with ICANN on several Donuts applications by somebody called James Oliver Warner.

These are some of the domains Gibraltar-based Stirling allegedly owns:

2016juegosolimpicos.com
2016olimpicos.com
2020juegosolimpicos.com
2020olimpicos.com
2024olimpicos.com
andaluciadisney.com
costadelsoldisney.com
disneyandalucia.com
disneylandmalaga.com
disneymalaga.com
disneyworldmalaga.com
juegosolimpicos2008.com
juegosolimpicos2016.com
juegosolimpicos2020.com
juegosolimpicos2024.com
juegosolimpicoslondres.com
londresjuegosolimpicos.com
malagadisney.com
malagadisneyland.com
malagadisneyworld.com
olimpicos2016.com
olimpicos2020.com
olimpicos2024.com
soldisney.com
spaindisneyland.com
spaindisneyworld.com
teleubbies.com

You don’t need to be a trademark lawyer to know that these domains would not pass a UDRP challenge.

The domains all seem to have been registered to a Graham Stirling of Gibraltar for some years. Gibraltar’s a pretty small place, suggesting that it’s very probably the same guy.

It’s the second serious cybersquatting claim to hit Donuts in the last couple of weeks.

As we reported last week, a lawyer who apparently doesn’t want his client’s identity to be known has written to ICANN’s Governmental Advisory Committee to warn that Demand Media, Donuts’ back-end partner and its founders’ former employer, has a history of adverse UDRP findings.

That letter fingered Stirling as an employee of Gibraltar-based investment company Veddis Ventures, whose other executives allegedly have ties to online gambling scandals in the US.

Veddis Ventures recently removed Stirling’s full name from its web site. He’s now just listed as “Graham S”, adding to the intrigue.

The latest set of cybersquatting allegations are directed to ICANN’s background screening panel, which is tasked with weeding likely ne’er-do-wells out of the new gTLD program.

The panel looks at not only the corporate history of the applicant, but also at its directors and officers.

Stirling is not named on any of Donuts applications. For that matter, Donuts itself is not named as an official applicant on any of its 307 applications either.

Each of its applications has been filed by a different shell company, most of which are owned by another company, Dozen Donuts LLC, which we assume (but do not know) is in turn owned by Donuts.

The only individual named in the background check part of the applications (at least the portions published by ICANN) is Donuts CEO Paul Stahura.

Stirling is not currently listed as a director on Donuts’ web site.

If Stirling is still involved with Donuts, it might not impact the results of Donuts background screening, if the panel only looks at UDRP or court cases for evidence of cybersquatting.

Stirling does not appear to have ever been named in, never mind lost, a UDRP complaint.

That said, I don’t think ICANN’s background screening process will be over for a while yet…

August 7 Update:

Donuts has provided the following statement:

Graham Stirling is not a member of the Donuts Board of Directors and has not been since November 2011. Our list of board members as documented on our web site at www.donuts.co is current.

It’s disappointing to see Donuts’ contributions to new gTLD expansion attacked by those (including some unwilling to disclose their identities) who attempt to portray the company or those associated with it as bad actors. The company is and will continue to be committed to the legitimate interests of rights holders. As described in our applications, Donuts will implement rights protection mechanisms in its new gTLDs that substantially exceed those mandated by ICANN.

We have engaged the intellectual property community, law enforcement and others in the community about IP protection and believe our intentions and actions are clear and well understood. Infringement of legitimate rights is not tolerated by Donuts, in any capacity. Our collaboration with the community on IP protections will be an ongoing priority as the new gTLD program continues.

Lawyer tries to nuke Donuts and Demand Media’s gTLD bids

Kevin Murphy, August 1, 2012, Domain Registries

A lawyer has called for new gTLD uber-applicants Demand Media and Donuts to be banned from running gTLD registries due to Demand’s history of cybersquatting.

Jeffrey Stoler of Boston law firm McCarter & English has written to ICANN’s leadership, along with the chair of the Governmental Advisory Committee, to allege that Demand Media, Donuts and their key executives:

are, by ICANN’s established eligibility guidelines, unsuited and ineligible to participate in the new gTLD program.

It goes on to state that:

ICANN can and should reject the applications from Donuts and its subsidiaries, Demand Media and its subsidiaries, and their respective affiliated companies.

The two companies have, combined, applied for 333 new gTLDs. Donuts, which was founded by former Demand executives, also plans to use Demand as its back-end registry provider.

Demand Media subsidiaries, however, have a rotten record of losing cybersquatting cases filed under the UDRP, as Stoler’s generally well-researched 24-page letter spells out in some detail.

This, Stoler argues, should cause both companies to fail ICANN’s background checks, which are specified in the Applicant Guidebook.

Companies that have “been involved in a pattern of adverse, final decisions” under the UDRP, defined as more than three losses in the last four years, are supposed to fail the background check.

Demand Media seems to fit that definition, and then some, assuming you include UDRP losses incurred by its subsidiaries.

Donuts, as a brand new company, does not have the same track record, but Stoler reckons there is “strong evidence that Donuts is merely an alter ego of, and working in concert with, Demand Media”.

The letter states:

In June 2009, when ICANN’s rules went into effect and it was widely thought that implementation of the new gTLD program was imminent, the executives of Demand Media Group realized that Demand Media’s sordid history would clearly block its ability to successfully apply for the new gTLDs.

As an initial gambit, Demand Media petitioned ICANN to revise the rules.

When ICANN rejected those revisions, the undersigned believes Demand Media decided it would be necessary to create a new entity to participate in the new gTLD program. As a result, Donuts was formed by Messrs. Stahura and Tindal.

It would make a mockery of ICANN rules, however, if Demand Media Group and its executives could absolve themselves of their record of adverse UDRP decisions merely by forming a new entity.

Donuts founders Paul Stahura and Richard Tindal were both with Demand when it lost a bunch of UDRP cases.

Stoler alleges that they left to form Donuts mainly because they didn’t think Demand would pass ICANN’s background checks.

While Donuts has made no secret of the fact that it’s behind 307 applications — and ICANN’s leadership is certainly already aware of this — each application has been filed by a different shell company.

The trail to Donuts is at least two companies deep in many cases, and it’s not entirely clear how its applications with Demand Media are structured, from a corporate point of view.

Ironically, Stoler’s letter does not disclose his affiliations — which clients he’s working for — either.

The smart money is probably on big trademark interests, but it’s not beyond the bounds of possibility, I suppose, that he could be on the payroll of rival new gTLD applicants.

I’ve reached out to Stoler, Donuts and Demand Media for comment and will provide updates later as appropriate.

Here’s the Stoler letter (pdf)

WIPO supported Draconian cybersquatting reform

Kevin Murphy, July 9, 2012, Domain Policy

Domain name owners who do not respond to cybersquatting complaints could automatically have their domains suspended, if the World Intellectual Property Organization gets its way.

That’s according to the latest ICANN documents to be released under its Documentary Information Disclosure Policy, following a request from the Internet Commerce Association.

The documents relate to the still controversial Uniform Rapid Suspension policy, a supplement to the existing UDRP for dealing with “clear cut” cases of cybersquatting.

The URS will be binding on all new gTLDs, but ICANN recently admitted that it’s been unable to find an organization willing to administer URS cases for the planned $300 to $500 filing fee.

Rather than implement URS with a $1,000 to $1,500 fee instead, ICANN plans to host two community summits to try to figure out ways to rearchitect the scheme to make it cheaper.

These changes could well mean fewer safeguards for domain registrants.

According to an email from WIPO released in response to ICA’s DIDP request, WIPO declined to host these summits unless ICANN agreed, in advance, to Draconian rules on default.

WIPO’s Erik Wilbers wrote (pdf):

it would seem unlikely that these stakeholders would now feel able to commit to the rather fundamental changes we believe to be in everyone’s interest – notably a shift to the proposed respondent-default basis without panel, subject to appropriate safeguards. We would consider an express prior commitment to such a shift, including the requisite Board support, as a pre-condition to a fruitful meeting on the URS.

In other words, WIPO thinks domain names should be suspended without expert review if the domain owner does not respond to a trademark owner’s URS complaint.

ICA counsel Phil Corwin is naturally not happy about this, writing in a blog post this weekend:

WIPO would only consent to hosting URS Summits if their result was largely pre-ordained – in which event, we ask, why bother holding the Summits at all? … This imperious demand should be dismissed out of hand by members of ICANN’s Board should it ever reach them.

That the structure of URS is still open for debate at this late stage of the game is an embarrassment, particularly given the fact that it’s been well-understood for some time that URS was unrealistically priced.

The new DIDP documents reveal that even the idea of summits to resolve the apparently intractable problems were a Band-Aid proposed almost accidentally by ICANN staff.

ICANN, it seems, is engaged in policy fire-fighting as usual.

The current hope is for URS to be finalized and a provider be in place by June 2013. It’s a plausible timetable, but I’m less convinced that a system can be created that is fair, useful and cheap.