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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.

Olympic domain watch list shows hundreds of squats, legit names too

Kevin Murphy, May 30, 2012, Domain Policy

Lawyers for the International Olympic Committee have released a list of hundreds of domain names allegedly cybersquatting the Olympic trademark, all registered in just a couple of weeks.

But as well as showing that there are hundreds of idiots out there, the list also sheds light on substantial numbers of apparently legitimate uses of the word “olympic” by small businesses.

The insight comes from two weekly zone file monitoring reports, compiled for the IOC by Thomson Compumark, which were circulated to an ICANN working group this week.

There are about 300 domains on the lists. At first glance, it looks like the IOC has a serious problem on its hands.

According to IOC outside counsel Jim Bikoff:

These unauthorized registrations–often for pornographic, phishing, gambling or parked sites–dilute and tarnish the Olympic trademarks, and attempt to exploit for commercial gain the good will created by the Olympic Movement. The unauthorized domains already oblige the IOC and its National Olympic Committees to expend significant amounts of time and money on monitoring and enforcement activities.

Based on a perusal of the lists and a non-exhaustive, non-scientific sampling of the sites the domains lead to, I’d say a comfortable majority are fairly straightforward cases of bad faith.

I couldn’t find any porn or phishing, but most of the domains I checked either do not resolve or resolve to placeholder or parking pages. If they resolved to a developed site, it was usually a splog.

However, a non-trivial minority of the domains are being used by apparently legitimate small businesses that have absolutely no connection to sports whatsoever.

Check out, for example, olympic-grill.com, olympicautorecycling.com, olympicbuildersgc.com, olympicco.com, olympiclandscapes.com, olympicrollingshutters.com, or olympicpromotions.info.

These are domains all apparently registered in the same week, and all appear to be kosher uses of domain names (though the logo choice at olympicpromotions.info is just begging for trouble).

A fair number of the domains on the list appear to be re-registrations of domains that have previously expired, judging by historical Whois records.

One would imagine that if there was value in cybersquatting a nice-looking domain such as 2012olympicstickets.com, for example, the former squatter probably wouldn’t have let it go.

Perhaps the “best” typo I found on the list, ollympics.com, is registered to a British guy called Olly. Assuming that’s his actual name, it seems like pretty good evidence of good faith.

The IOC, incidentally, has only ever filed 15 UDRP cases, on average fewer than two per year, so claims about spending “significant amounts” on enforcement are questionable.

Olympics wastes more money on ICANN nonsense

Kevin Murphy, May 14, 2012, Domain Policy

International Olympic Committee lawyers have lodged an official appeal of ICANN’s latest decision to not grant it extra-extra special new gTLD protection.

The [O]Lympic Cafe, close to both DI headquarters and the London 2012(TM) Olympic(TM) Park, which apparently found a novel solution when the IOC's lackeys came knocking.The IOC last week filed a Reconsideration Request asking the ICANN board to rethink an April 10 decision that essentially ignored the latest batch of “.olympic” special pleading.

As previously reported, ICANN’s GNSO Council recently spent a harrowing couple of meetings trying to grant the Olympic and Red Cross trademarks even more protection than they already get.

Among other things, the recommendations would have protected strings confusingly similar to “.olympic” at the top level in the new gTLD program.

But a month ago the ICANN board of directors’ newly created, non-conflicted new gTLD program committee declined to approve the GNSO Council’s recommendations.

The committee pointed out in its rationale that the application window is pretty much closed, making changes to the Applicant Guidebook potentially problematic:

a change of this nature to the Applicant Guidebook nearly three months into the application window – and after the date allowed for registration in the system – could change the basis of the application decisions made by entities interested in the New gTLD Program

It also observed that there was still at that time an open public comment period into the proposed changes, which tended to persuade them to maintain the status quo.

The decision was merely the latest stage of an ongoing farce that I went into much more detail about here.

But apparently not the final stage.

With its Reconsideration Request (pdf), the IOC points out that changes to the Applicant Guidebook have always been predicted, even at this late stage. The Guidebook even has a disclaimer to that effect.

The standard for a Reconsideration Request, which is handled by a board committee, is that the adverse decision was made without full possession of the facts. I can’t see anything in this request that meets this standard.

The IOC reckons the lack of special protections “diverts resources away from the fulfillment of this unique, international humanitarian mission”, stating in its request:

The ICANN Board Committee’s failure to adopt the recommended protection at this time would subject the International Olympic Committee and its National Olympic Committees to costly and burdensome legal proceedings that, as a matter of law, they should not have to rely upon.

Forgive me if I call bullshit.

The Applicant Guidebook already protects the string “.olympic” in over a dozen languages – making it ineligible for delegation – which is more protection than any other organization gets.

But let’s assume for a second that a cybersquatter applies for .olympics (plural) which isn’t specially protected. I’m willing to bet that this isn’t going to happen, but let’s pretend it will.

Let’s also assume that the Governmental Advisory Committee didn’t object to the .olympics application, on the IOC’s behalf, for free. The GAC definitely would object, but let’s pretend it didn’t.

A “costly and burdensome” Legal Rights Objection – which the IOC would easily win – would cost the organization just $2,000, plus the cost of paying a lawyer to write a 20-page complaint.

It has already spent more than this lobbying for special protections that it does not need.

The law firm that has been representing the IOC at ICANN, Silverberg, Goldman & Bikoff, sent at least two lawyers to ICANN’s week-long meeting in Costa Rica this March.

Which client(s) paid for this trip? How much did it cost? Did the IOC bear any of the burden?

How much is the IOC paying Bikoff to pursue this Reconsideration Request? How much has it spent lobbying ICANN and national governments these last few years?

What’s the hourly rate for sitting on the GNSO team that spent weeks coming up with the extra special protections that the board rejected?

How much “humanitarian” cash has the IOC already pissed away lining the pockets of lawyers in its relentless pursuit of, at best, a Pyrrhic victory?

How the world’s biggest brands use new gTLDs

Kevin Murphy, April 18, 2012, Domain Registries

DomainIncite PRO is excited to reveal the results of the domain name industry’s first in-depth study into how the world’s biggest brands use new generic top-level domains.

In March and April 2012, we surveyed the domain name ownership and usage patterns of the world’s 100 most-valuable brands — representing over $1.2 trillion in brand value, according to Interbrand — in six gTLDs introduced since 2001.

As well as confirming the long-held belief that brand owners see little value in defensive registrations — many not even choosing to benefit from residual traffic — the survey also revealed which brands are more likely to develop their sites, which are most vulnerable to cybersquatting, and which appear to care the least about enforcing their brands.

We also examined how “cybersquatters” use the domain names they register, with some surprising results.

Privacy/proxy registration is not nearly as prevalent as many believe, our study found, and a significant portion of registrants have made no effort to monetize the domains they own that match famous brand names.

This extensive, fully illustrated report includes:

A comparison of defensive registration trends across 100 brands in six new gTLDs. How many domains are owned by the respective brands and how many are owned by third parties? How many are reserved by the registry and how many are still available for registration?

A breakdown of usage trends by gTLD in .asia, .biz, .info, .jobs, .mobi and .pro. When brand owners register domains in new gTLDs, how likely are they to develop content on those domains, and what can new gTLD registries do to encourage this desirable behavior?

An analysis of cybersquatting behavior in over 100 domain names registered to entities other than the brand owner. How much do brand owners have to worry about their brands being impaired by damaging behavior such as redirection to competing web sites or porn?

Full survey results. Subscribers have full access to the survey results, which include details of which brand-domains belong to third parties, which exhibit potentially damaging behavior, and which are currently available for registration.

DI PRO subscribers can click here for the full report.

Non-subscribers can learn how to subscribe instantly here.

ICANN reopens defensive registration debate

Kevin Murphy, April 13, 2012, Domain Policy

ICANN’s board of directors wants more policy work done on the problem of defensive domain name registrations.

In a resolution passed at a meeting on Tuesday, the board’s newly created New gTLD Program Committee, made up exclusively of non-conflicted directors, said it:

directs staff to provide a briefing paper on the topic of defensive registrations at the second level and requests the GNSO to consider whether additional work on defensive registrations at the second level should be undertaken

The decision was made following the debate about “defensive” gTLD applications ICANN opened up in February, prompted by a letter from US Department of Commerce assistant secretary Larry Strickling.

That in turn followed the two Congressional hearings in December, lobbied for and won by the Association of National Advertisers and its Coalition for Responsible Internet Domain Oversight.

So this week’s decision is a pretty big win for the intellectual property lobby. It’s managed to keep the issue of stronger second-level trademark protection in new gTLDs alive despite ICANN essentially putting it to bed when it approved the new gTLD program last June.

The GNSO could of course decide that no further work needs to be done, so the champagne corks should probably stay in place for the time being.

At the same meeting on Tuesday, the ICANN board committee voted to disregard the GNSO Council’s recent decision to grand extra protections to the International Olympic Committee, Red Cross and Red Crescent movements. The rationale for this decision has not yet been published.

Three-way legal fight over .eco breaks out

Planet.eco, an emergent .eco gTLD applicant with a trademark on “.eco” is suing two rival applicants for trademark infringement and cybersquatting in a California court.

The company sued DotEco (affiliated with Minds + Machines and Top Level Domain Holdings), along with CEO Fred Krueger, and Canada-based Big Room on March 2.

It’s looking for millions of dollars of damages and an injunction preventing both rival applicants from applying for .eco.

In late March, DotEco filed a counter-suit, alleging that Planet.eco’s .eco trademark was fraudulently obtained and that the company is trying to illegally stifle competition for the .eco gTLD.

That’s the short version. It’s a complex story with a great deal of history and more than a little bogus behavior.

DomainIncite PRO subscribers can read the full DI analysis, along with more PDFs than you could ever possibly need, here.

(Thanks to reader Tom Gilles for the tip)

NAF loses UDRP market share again

Kevin Murphy, April 4, 2012, Domain Policy

If UDRP forum shopping is a real phenomenon, the market share statistics don’t bear it out.

The National Arbitration Forum today announced a sequential decrease in the number of cybersquatting cases it handled in 2011, widening the gap between itself and the World Intellectual Property Organization for at least the second year in a row.

NAF said it handled 2,082 complaints last year, down 4% from 2010. That’s over the same period WIPO saw a 2.5% increase to 2,764 cases.

NAF is occasionally accused of being the more complainant-friendly of the two major UDRP dispute resolution providers, which some say encourages “forum shopping”.

While that may or may not be true in certain fringe cases, it’s certainly not helping NAF win a flood of business. WIPO is still handling more cases, and growing its share while NAF’s shrinks.

As Mike Berkens observed over on The Domains, NAF’s press release attempted a bit of lame spinning, comparing 2011 to 2009 in order to lead with an 18% increase stat.

The release also includes the following quote from director of internet and IP services Kristine Dorrain, which seems to be designed to subtly address the “complainant-friendly” allegations.

Our experience tells us parties, particularly domain name registrants, prefer the National Arbitration Forum because documents are easily accessible in our online portal. Complaint or Response filing is accomplished in just a couple of minutes.

It’s a somewhat irrelevant statement, given that it’s the complainant who gets to choose the venue.

One of NAF’s 2011 highlights was being picked as exclusive provider of Rapid Evaluation Service cases by .xxx manager ICM Registry. It processed 10 RES complaints in 2011.

RES cases, as well as 73 .us cases, were counted in its headline statistics.