ICANN asked to protect the names of body parts

There’s been no shortage of special pleading in relation to ICANN’s new generic top-level domains program, but this has to be the wackiest yet.
The National Health Council, an American advocacy group, has written to ICANN to ask for extra brand protection for the names of body parts, disabiliies and diseases.
Seriously.
NHC president Myrl Weinberg wrote:

Because it is not possible to trademark a body part (e.g., lung, liver) or a disease category (e.g., arthritis, diabetes), it is difficult for the patient advocacy community to protect the use of such words.
…
We strongly urge ICANN to set forth a process that investigates the potential for misunderstanding, confusion, and harm when awarding gTLDs utilizing the name of a body part or disease/disability.

The letter was inexplicably sent to ICANN’s public comment period on the Universal Acceptance of TLDs. Needless to say it’s completely off-topic, not to mention extremely late.
What seems to have happened is that the NHC’s members received a briefing recently from an ICANN staffer as part of its outreach program and what they learned gave them the willies^TM.

WIPO releases 2011 cybersquatting stats

WIPO handled more UDRP cases covering more domain names in 2011 than in any other year, but its numbers do not paint a very convincing picture of the cybersquatting landscape.
The organization today announced that it handled 2,764 UDRP cases covering 4,781 domain names last year. The number of cases was up 2.5% over 2010.
The number of domain names covered by these cases was up by 9.4% – an additional 414 domains.
It’s basically meaningless data if you’re looking to make a case that cybersquatting is on the increase.
Obviously, while WIPO is the market-share leader, it is not the only UDRP provider. It sees a representative but non-exhaustive sample of cases.
While UDRP is the standard dispute mechanism for all ICANN-contracted gTLDs, WIPO also has side deals with ccTLD registries to look after cybersquatting cases in their zones.
As WIPO has added more ccTLD deals, it has become harder to make apples-to-apples comparisons year over year.
Based on WIPO’s own records, it received 2,323 UDRP complaints about domains in gTLDs last year, up by 28 cases from 2010, a 1.2% increase.
Given that the number of domains registered in gTLDs increased by at least 8% between January 1 and November 30 2011, cybersquatting seems to be actually on the decrease in relative terms.
And given that the number of UDRP cases filed is so piddlingly small, a single obsessive-compulsive complainant (ie, Lego) can skew the results.
Lego spammed WIPO with more than 160 complaints in 2011. As a result, Denmark is the last year’s fourth-biggest filer after the US, France and UK, according to WIPO, with 202 complaints.
So, if you see any company using these WIPO numbers to rage about cybersquatting in press releases, ICANN comments or Congressional hearings, give them a slap from me. Thanks.
Here’s a table of WIPO’s caseload from 2000 to 2011.
[table id=6 /]
Sadly, the number of UDRP complaints will never reflect the actual amount of cybersquatting going on, particularly when cybersquatters only need to price their domains more cheaply than the cost of a UDRP complaint in order to stay off the radar.
WIPO’s data does raise some interesting questions about the geographic distribution of complainants and respondents, however.
Unsurprisingly, cybersquatting was found to be big business in China, the second most-common home nation, after the US, for respondents. No UDRPs filed with WIPO originated there, however.
Surprisingly, Australia is ranked fourth on the list of countries most likely to harbor alleged squatters, with 171 respondents. But Australia was 13th in terms of complainant location, with just 39 cases.
Read more WIPO data here.

IP lobby files last-minute new gTLD demands

ICANN’s ongoing public comment period into the “perceived” need for “defensive” gTLD applications produced a raft of demands from the intellectual property community, not all of which relate to the subject matter at hand.
With less than one month left before ICANN closes its new gTLD application window, many IP stakeholders have suggested ways to reduce the need to file a defensive applications, with many disputing its characterization as “perceived”. As far as many brands are concerned, there’s nothing “perceived” about it.
Give the imminent closure of the window, a large number of commenters have also suggested ways to reduce the need for defensive domain name registrations at the second level. While debates about trademark protection in domain names will never end, this is likely to be the IP community’s last chance to officially comment before April 12.
Some comments expressed a desire for relatively small tweaks to the existing Rights Protection Mechanisms, others said that entirely new RPMs should be created. In most cases, the proposed amendments heavily favor certain trademark owners at the expense of other registrants, including other trademark owners.
Some suggestions from the IP community would, if adopted, directly impact the business models of new gTLD registries and registrars. Others could be expected to significantly increase the risk that the new gTLD application process will be gamed at a large scale.
This DomainIncite PRO analysis is organized by issue, addressing concepts that emerged from multiple comments. In each case, we look at the likely counter-arguments to the proposals, explore the potential impact on applicants and the new gTLD program and assess the likelihood of each proposal becoming reality.
DI PRO subscribers can read the full analysis here.

Olympic gTLD showdown coming in Costa Rica

While the ICANN public meeting in Dakar last October was notable for a heated clash between governments and the domain name industry, the Costa Rica meeting next week may be characterized by these two recent enemies uniting against a common enemy.
ICANN staff.
Members of the Generic Names Supporting Organization, the Governmental Advisory Committee and the At-Large Advisory Committee all appear to be equally livid about a last-minute new gTLD program surprise sprung by ICANN late last week.
The hitch relates to the ongoing saga about special brand protection for the International Olympic Committee, Red Cross and Red Crescent movements in the new gTLD program.
The need to develop rights protection mechanisms for essentially just three organizations has always been a slightly ridiculous and unnecessary premise, but recently it has assumed symbolic proportions, cutting to the heart of the multistakeholder model itself.
Now, following a perplexing eleventh-hour ICANN mandate, Costa Rica is likely to see some fierce debate about the ICANN decision to kick off the new gTLD program last June.
We expect the GNSO and the GAC to show a relatively united front against ICANN staff on the IOC/RC issue. The At-Large Advisory Committee is also set to throw a bomb or two.
There’s even an outside chance that upcoming talks could wind up adding delay to the next phase of the new gTLD program itself…
The full text of this pre-ICANN 43 policy analysis is available to DomainIncite PRO subscribers here.

Cybersquatters face jail time in the Philippines

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

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

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

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

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

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.