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Cybersquatters face jail time in the Philippines

Kevin Murphy, January 30, 2012, Domain Policy

Cybersquatting is about to be criminalized in the Philippines, and you’re not going to believe the penalties.

Squatters could face six to 12 years in jail if found guilty under Senate Bill 2796, which has reportedly just been approved by the country’s Senate.

Six years is the minimum term, but the bill does allow for an alternative punishment of a 500,000 peso fine, which works out to about $12,000.

That’s 300,000 pesos more than the fine for hacking, newly criminalized by the same bill, which also carries a six-to-12-year prison sentence.

Here’s the definition of “cyber-squatting” from the bill, courtesy of BlogWatch.tv:

The acquisition of a domain name over the internet in bad faith to profit, mislead, destroy reputation, and deprive others from registering the same, if such a domain name is:

i. Similar, identical, or confusingly similar to an existing trademark registered with the appropriate government agency at the time of the domain name registration

ii. Identical or in any way similar with the name of a person other than the registrant, in case of a personal name; and

iii. Acquired without right or with intellectual property interests in it

The bill also provides prison sentences for what the local media is calling “cyber sex”, but which appears to cover internet pornography in general.

A companion bill in the House has to be approved before the law hits the statute books.

Manwin files its first cybersquatting complaint

Kevin Murphy, January 27, 2012, Domain Policy

Manwin Licensing, the company currently suing ICANN and ICM Registry claiming .xxx breaks US competition law, has filed its first cybersquatting complaint using the UDRP.

It’s over a .com domain, pornhubarchive.com (don’t go there, not only is it NSFW but it also looks like it panders to some very dubious tastes), which Manwin thinks infringes on its rights to the PornHub name

The domain is registered to a Russian, while pornhub.com itself is protected by Whois privacy.

There’s a certain irony here. PornHub is a “tube” site that allows users to upload content and has itself come under fire for violating intellectual property rights in the past.

It was sued by the the porn production company Pink Visual for copyright infringement in 2010.

Fox takes control of squatted .xxx domain

Kevin Murphy, January 21, 2012, Domain Policy

Twentieth Century Fox has withdrawn its cybersquatting complaint about the domain name foxstudios.xxx after the domain was transferred into its control.

As I reported on Tuesday, the UDRP case was a no-brainer. Fox Studios is Fox’s production subsidiary, and the owner of foxstudios.xxx had offered the domain for sale on eBay for a ludicrous $1.9 million.

This would have been more than enough to show bad faith.

The Whois record for the domain shows it is now owned by Fox, with an email address corresponding to an outside law firm. From here, it still resolves to a for-sale page, however.

Three more .xxx UDRP complaints have been filed this week, all by Turkish companies, bringing the total since December 29 to eight.

Stop the nonsense about TLD-squatting

Kevin Murphy, January 19, 2012, Domain Policy

Barely a day has passed recently without a news report about how companies are being forced to apply for new top-level domains to prevent cybersquatters moving in on their brands.

It’s complete nonsense, of course, brought about by a lack of basic research coupled with years of bad feeling towards the domain name industry and an ICANN new gTLDs outreach campaign that spent six months failing to effectively tackle widely held misconceptions.

Cybersquatters are not going to apply for new gTLDs. If they do, they won’t be approved.

Unfortunately, this does not mean that we’re not going to see lots of “defensive” new gTLD applications.

Due to the way the program is structured, it may actually make strategic sense for some companies to apply for a dot-brand gTLD even if they are otherwise pretty clueless about domain names.

It worries me to think that a few years from now the TLD space – which is currently running at almost 100% utilization – will start to resemble the second level in pretty much every major TLD, with lots of essentially unused, redundant defensive domain names.

I don’t think this will be good for the domain name industry or ICANN.

That said, what looks good for ICANN and the domain name industry is of little concern to brand owners – they just want to make sure their brands are not damaged by the program.

I’ve written a 4,500-word paper analyzing the actual need for companies to file “defensive” gTLD applications, which is now available to DomainIncite PRO subscribers.

YouPorn owner acquires fellow .xxx plaintiff

Kevin Murphy, January 18, 2012, Domain Registries

Manwin, the porn company currently suing ICANN and ICM Registry over the .xxx launch, has acquired co-plaintiff Digital Playground.

“To me this deal is no different than the acquisition of Pixar by Disney,” Digital Playground CEO Ali Joone said, according to Xbiz.

Terms of the deal were not disclosed.

While Digital Playground was named as a plaintiff on the .xxx lawsuit, Manwin was clearly the lead. Manwin has also launched a solo Independent Review Process arbitration case against ICANN.

The company is one of the biggest porn producers on the internet, owning YouPorn as well as managing Playboy’s web presence under license.

Manwin claims that ICM’s launch amounted to “extortion”, and that it gave away its lack of respect for the porn industry by selling premium names to domainers including Frank Schilling and Mike Berkens.

ICM’s response to the lawsuit is due later this week.

Fox files cybersquatting complaint on .xxx domain

Kevin Murphy, January 17, 2012, Domain Policy

Twentieth Century Fox appears to have filed a UDRP complaint over the domain name foxstudios.xxx.

The domain, which does not currently resolve, was registered to a Connecticut man in December, shortly after ICM Registry took .xxx into general availability.

It’s the fifth UDRP case in the .xxx space since late December. The others are richardbranson.xxx, valero.xxx, heb.xxx and markafoni.xxx.

While it’s a National Arbitration Forum complaint – so the identity of the complainant has not yet been disclosed – Fox Studios is a Fox subsidiary that does business at foxstudios.com.

A bit of Googling reveals that Fox Studios was also the name of a gay porn production company that won some awards in the late 1990s. Its DVDs are still for sale from several sites.

So it may not be a slam-dunk UDRP win for Fox in this case. If the registrant bothers to respond to the complaint he could probably make a decent case that it was not a bad-faith registration.

(UPDATE: Thanks to @mneylon for pointing out that foxstudios.xxx is for sale on eBay with a buy-now price of $1.9 million. Ergo: the squatter’s gonna lose.)

Incidentally, foxstudios.net appears to be owned by a small but legitimate photography business in Michigan, which I think is a perfect example of how two companies can happily share a brand using different TLDs.

Key-Systems sued over brand protection trademark

Kevin Murphy, January 10, 2012, Domain Registrars

Israeli domain name registrar Domain The Net Technologies has filed a preemptive lawsuit against German competitor Key-Systems over their respective brand management trademarks.

According to the complaint, Domain The Net filed for a US trademark on the term “BrandShield”, which it uses to market brand protection services at brandshield.com.

Key-Systems, which runs a similar service called BrandShelter, filed an opposition to Domain The Net’s trademark application last October, due to the alleged potential for confusion.

Anticipating a possible lawsuit, Domain The Net has therefore sued first, asking the District Court in Virginia to declare that BrandShield does not infringe the BrandShelter trademark.

The complaint lists several dozen live brand+word trademarks to demonstrate that no one company should have exclusive rights to the word “brand”.

You can view the complaint, which was filed yesterday, in PDF format here.

(Hat tip: @GeorgeKirikos)

ANA’s modest proposal: let us take over the new gTLD program or we’ll sue

Kevin Murphy, January 9, 2012, Domain Policy

The Association of National Advertisers has offered ICANN a risible last-minute “solution” to the outrage it has created over the new generic top-level domains program.

The ANA wants ICANN to create a temporary “Do Not Sell” list to protect trademark owners and intergovernmental organizations during the first application round, which begins Thursday.

While the first round is open, the ANA itself wants to takes over policy development for the program.

This is its “Proposed Way Forward” in full:

1. ICANN will proceed with its plan to begin accepting applications for new TLDs on January 12, as scheduled;

2. Concurrently, all NGOs, IGOs and commercial stakeholders concerned about protecting their brands will be given the opportunity to have those brands registered, without cost, on a temporary “Do Not Sell” list to be maintained by ICANN during the first application round (any interested party which does not want to have its brands on the Do Not Sell list and would rather apply for a TLD would be free to do so).

We will assemble a team from the interested constituencies to work with ICANN leadership during the first application round. If this group achieves consensus with respect to any proposals, those proposals will be voted on by the Board.

At the end of the first application round, should the parties continue to disagree, all parties will be free to pursue their legal and equitable rights without prejudice.

The alternative to adopting this proposal, ANA president Bob Liodice said in a letter to ICANN today, is “destructive and costly litigation”.

ICANN’s response should be provided “IMMEDIATELY”, Liodice wrote.

I can’t see him getting the answer he wants.

First, the ANA still seems to be worried about top-level cybersquatting, which any sane person can see is extremely unlikely to happen under the new gTLD program’s existing policies.

Second, it’s asking for ICANN to give anyone with a trademark the right to block a string matching that trademark at the top-level.

This may appear reasonable if you think a trademark is something like “Coca-Cola” or “Gucci” or “Google”.

But as soon as you realize that pretty much every word – “music”, “blog”, “web”, “London”, “Paris” – is trademarked, the idea of a Do Not Sell list becomes clearly ludicrous.

It would be a recipe for banning all gTLDs from the first application round.

Third, ICANN already has a mechanism for letting interested stakeholders achieve consensus on new trademark protection policies.

It’s called ICANN, and you don’t need to threaten litigation to participate. You just show up.

You can read the entire laughable ANA proposal here.

Trademark Clearinghouse coming in October

Kevin Murphy, January 7, 2012, Domain Policy

ICANN plans to have the Trademark Clearinghouse for new gTLDs up and running by October, according to documents released after this Thursday’s meeting of its board of directors.

The Trademark Clearinghouse is a central repository of trademark information that new gTLD registries will plug their systems into.

When a customer attempts to register a domain name in a new gTLD that matches a trademark in the Clearinghouse, they will receive a warning that they may be cybersquatting.

Nine companies applied for the position of Clearinghouse operator – as a paid service, it’s potentially a money-spinner – and ICANN expects to select one or more from a short-list of five in February.

According to the new ICANN document (pdf), twice-weekly talks between IP lawyers, registries and registrars are expected to finalize the Clearinghouse’s processes by March.

The system could go live by October, giving companies three months to submit their trademarks to the Clearinghouse before the first new gTLDs go live in early 2013, according to ICANN.

Strickling drops last-minute bombshell on new gTLDs

Kevin Murphy, January 4, 2012, Domain Policy

Larry Strickling, the man most responsible for overseeing ICANN in the US administration, has given an unexpected last-minute boost to opponents of the new generic top-level domains program.

In a letter to ICANN chair Steve Crocker tonight, Strickling says governments may intervene this May to impose new trademark protection mechanisms on the new gTLD program

Echoing the words of several Congressmen, Strickling, head of the National Telecommunications and Information Administration, said that after the first-round applications have been filed, ICANN might want to consider a “phased-in” approach.

Once the list of strings is made public, NTIA, soliciting input from stakeholders and working with colleagues in the Governmental Advisory Committee (GAC), will evaluate whether additional protections are warranted at the second level. Having the ability to evaluate the actual situations or conflicts presented by the applied for strings, rather than merely theoretical ones, will certainly assist and focus everyone’s efforts to respond to problems should they arise.

The letter could be seen as a win for the trademark lobby, which has been pressing the NTIA, Department of Commerce and Congress for months to delay or block the program.

However, reading between the lines it appears that Strickling believes the trademark protections already in the program are probably adequate, just woefully misunderstood.

The letter spends more time politely tearing into ICANN’s atrocious outreach campaign, observing that many trademark owners still “are not clear about the new gTLD program”.

Strickling pleads with ICANN’s leadership to raise awareness of the protections that already exist, to calm the nerves of companies apparently convinced by industry scaremongering that they’re being forced to apply for “dot-brand” gTLDs defensively.

…in our recent discussions with stakeholders, it has become clear that many organizations, particularly trademark owners, believe they need to file defensive applications at the top level.

We think, and I am sure ICANN and its stakeholders would agree, that it would not be healthy for the expansion program if a large number of companies file defensive top-level applications when they have no interest in operating a registry. I suggest that ICANN consider taking some measures well before the application window closes to mitigate against this possibility.

The themes are repeated throughout the letter: ICANN has not done enough to educate potential applicants about the new gTLD program, and brand owners think they’ve got a gun to their head.

…it has become apparent that some stakeholders in the United States are not clear about the new gTLD program. I urge you to engage immediately and directly with these and other stakeholders to better educate them on the purpose and scope of the program as well as the mechanisms to address their concerns.

I’m sure this is a letter Strickling didn’t want to send.

Recently, he talked openly about how trademark owners pressuring the US government to overrule ICANN’s decision-making risked raising the hackles of repressive regimes around the world and leading to an internet governed by the UN

Letters like this certainly don’t help his cause, but the political pressure in Washington DC has evidently forced his hand.

Will this derail next week’s launch of the program? Probably not.

Does it raise a whole bunch of questions the ICANN community had thought it had put to bed? You bet it does.

Read the letter here (pdf).