Latest news of the domain name industry

Recent Posts

Olympics tells ICANN to abandon new TLD launch or get sued

Kevin Murphy, November 29, 2010, Domain Registries

The International Olympic Committee has threatened to sue ICANN unless it gives IOC trademarks special protection in its new top-level domains program.

The IOC’s critique of ICANN’s new Applicant Guidebook is the first to be filed by a major organization in the current public comment period.

The organization has accused ICANN of ignoring it, preferring instead to take its policy cues from the domain name industry, and said it should “abandon its current timeline” for the launch.

ICANN currently plans to start accepting TLD applications May 30, 2011.

Calling the guidebook “inherently flawed”, the IOC’s director general Urs Lacotte wrote:

If these critical issues are not fully resolved and ICANN chooses not to place the Olympic trademarks on the reserved names list, then the IOC and its National Olympic Committees are prepared to employ all available legislative, regulatory, administrative and judicial mechanisms to hold ICANN accountable for damage caused to the Olympic movement.

(That language looks like it could have been cut-n-paste from a separate letter from the financial services industry, which I reported on last week).

The IOC said that it has opposed the new TLD program 11 times – asking for its trademarks to be placed on the AGB’s reserved strings lists, but received no response.

Special pleading? Perhaps, but the IOC’s trademarks are already specifically protected by legislation in numerous countries, including the US, UK, Canada and China.

The IOC also wants stronger trademark protection mechanisms, such as mandatory typosquatting protections in sunrise periods and extending dispute proceedings to registrars.

Expect many more such missives to start showing up on the ICANN web site over the next 11 days before the ICANN board of directors meets to approve the AGB in Cartagena.

This may be the last chance many organizations get to ask for the changes they want in the AGB before the first round of new TLD applications opens, and I expect them to seize it with both hands.

Save the Children recovers domains from scumbag

Kevin Murphy, November 22, 2010, Domain Policy

The international charitable organization Save the Children has recovered two domain names from a squatter who held them hostage for $2,500.

Save the Children, which hosts its official web site at savethechildren.org, recently won a UDRP complaint for the domains save-the-children.com and save-the-children.org, which are both parked.

As you might imagine, it was an open-and-shut case.

Save the Children has been around since the 1930s, and it owns trademarks on its name.

Bad faith was proved with a shockingly clueless email from the registrant:

As you may be aware, with the explosion of the internet and domains, there has been a scramble by speculators or entrepreneurs to purchase popular names or names which we believe may become popular, so we can resell them for a profit. In fact, many businesses will buy numerous domain names that are similar, or may be abbreviations or acronyms, or with different suffexes [sic] in order to get them off the market and prevent somebody else purchasing it.

After consulting with my attorney, and in the best interests of a speedy resolution, I’ve been advised to offer to sell my domain to your client.

I am unwilling to give it up for free since I purchased it. However, I am willing to sell it, and I am asking $2,500.00 for my website.

Whois records show that the domain has changed hands a few times since it was first registered in 2001. I hope the current registrant paid a lot for it.

This kind of behavior is why domainers get a bad rep.

DirectNIC chief tries to dismiss cybersquatting suit

Kevin Murphy, November 11, 2010, Domain Registrars

The CEO of DirectNIC is trying to wriggle out of a cybersquatting lawsuit filed by Verizon, seemingly on the grounds that the telco has been unable to track him down.

Sigmund Solares heads up the Grand Cayman-based registrar and lives in Florida, but since suing DirectNIC back in March, Verizon has not been able to find him to serve him notice.

Now, his lawyers are arguing on a technicality that the suit against him should be dismissed (pdf).

Verizon claims that DirectNIC and its directors, via a bunch of shell companies, cybersquatted “nearly every single famous trademark in existence”, including some of Verizon’s.

It filed an amended complaint (pdf) a month ago. Due to its inability to track down Solares, it served the Florida Secretary of State instead, which it’s allowed to do if the defendant evades service.

Verizon has filed a number of declarations from process servers who were unable to serve him, despite staking out his Tampa home on at least 10 occasions over the space of several months.

Solares’ lawyers now want the complaint against him dismissed on the grounds that he’s not been served, and that he was not evading service, he was just away on business and vacation:

no where in the Plaintiffs’ affidavits do the Plaintiffs allege any actions whatsoever on the part of Mr. Solares. The Plaintiffs’ complaint and affidavits merely recount their efforts to serve Mr. Solares. Such allegations cannot clearly show that Mr. Solares is evading process because they allege no actions on his part at all. Plaintiffs’ assertions only show Mr. Solares’ absence from Tampa during the periods when the Plaintiffs attempted to effect service of process.

In response, Solares has filed a fairly detailed account (pdf) of his whereabouts between March and September, which included trips to Milan, Miami, Aruba, Ireland and Boston.

Some of the dates and locations coincide with big domainer conferences.

Verizon’s complaint attacks DirectNIC on essentially two fronts.

It claims that DirectNIC’s practice of parking expiring domains – including those that infringe trademarks – constitutes cybersquatting. This is of course a fairly common industry practice.

It also claims that DirectNIC itself cybersquatted on thousands of domains via a number of shell companies, including NOLDC, Spiral Matrix, Kenyatech, Kentech, Speedy Web, Unused Domains, and Belize Domain WHOIS Service.

There’s a fair bit of circumstantial evidence connecting the firms, and UDRP panelists have previously inferred that they shared ownership, but I don’t think it’s ever been definitively proved.

I reported on this evidence in a bit more depth here.

It’s possible that more evidence could emerge during discovery, but the suit cannot proceed to that stage while the court is still figuring out whether Solares has been served or not.

Dell previously sued DirectNIC on the same grounds. Solares signed an affadavit denying he had anything to do with Kenyatech. That suit was settled.

Lego files a UDRP complaint every three days

Kevin Murphy, November 1, 2010, Domain Policy

Lego, maker of the popular building block toys, is rapidly becoming one of the most UDRP-happy big-brand trademark holders.

The company recently filed its 150th claim, and has so far recovered well over 250 domains that included its trademark.

With over 100 UDRPs filed so far in 2010, that works out to an average of roughly one complaint every three days, and a total spend easily into the hundreds of thousands of dollars.

Its success rate to date is 100%, with no complaints denied.

Its successfully recovered domains include oddities such as legogiraffepenis.com, which appears to be based on this amusing misunderstanding.

If Lego keeps up its current rate of enforcement, it will likely pass Microsoft in the next few months in terms of total cases filed. It’s already filed more than Yahoo and Google.

But it still has a long way to go to catch up with AOL, possibly the most prolific UDRP complainant, which has close to 500 complaints under its belt.

Trademark lobby keeps up pressure on ICANN

Kevin Murphy, October 24, 2010, Domain Policy

The International Trademark Association is continuing to press ICANN into commissioning a study of the potential economic “harms” its new top-level domain program could cause.

INTA executive director Alan Drewsen earlier this month sent ICANN a quick reminder (pdf) that it expects to see the study carried out before the new TLD application round launches.

The trademark lobby believes that new TLDs will increase costs to brand-conscious businesses through an increase in the number of defensive registrations and dispute proceedings they have to pay for.

ICANN hired some third-party analysts to look into the issue, and published a preliminary report in July that basically just speculated about studies that could be carried out in future.

The plan was to carry out a second-phase study, which was to begin after public comments on the first report had been analyzed and summarized by ICANN staff.

Three months after the public comment period closed, this analysis has not been published and there’s no news on phase two.

INTA’s latest missive also notes that the ICANN board does not appear to have discussed the economic study at its Trondheim meeting in September.

Drewson also refers back to previous correspondence, sent in early September by INTA president Heather Steinmeyer, in which she wrote:

trademark owners believe that such a study is not only a sensible recommendation, but an essential prerequisite before any rollout of new gTLDs.

It’s not clear to me whether ICANN also thinks the study needs to be completed before the new TLD program launches.

Such a study would presumably take some considerable time to compile, and noises from ICANN currently point to the program becoming finalized at some point in the next six months.

If the study were to conclude that new TLDs would be hugely financially damaging, after three years of work… well, red faces would be the very least concern.

Trademark holders think new TLD policies inadequate

Kevin Murphy, October 6, 2010, Domain Policy

Less than one in ten trademark holders believes ICANN’s policies go far enough to protect their rights under new top-level domains, according to a recent survey.

World Trademark Review is reporting that 71.6% of its survey respondents believe that the current Draft Applicant Guidebook goes not far enough to “prevent trademark infringement”.

Only 9.5% said they believe the DAG does contain adequate provisions.

The full survey will be published later this month, but today a few more results can be found over at the WTR blog.

The survey was conducted prior to ICANN’s recent Trondheim resolutions, which contained a few amendments to strengthen policies such as Uniform Rapid Suspension.

Government ‘cybersquatting’ case rattles India

Kevin Murphy, October 4, 2010, Domain Services

Cybersquatting mischief is making headlines in India today, after the nation’s main opposition party accused the government of directing a confusingly similar domain name to its own site.

According to various reports, the opposition Bharatiya Janata Party served a “legal notice” on the ruling Indian National Congress party over the domain name bjp.com.

The BJP hosts its primary site at bjp.org. According to the party, the .com domain has been redirecting users to the Congress’ own site. Today, it resolves to a page parked at Sedo.

The contested domain is currently registered behind eNom’s privacy protection service. It appears to have changed hands several times over the years, most recently to an Indian.

Unless the BJP has some other evidence connecting its rival to the domain, it looks like this may be a case of cheap political point-scoring.

What .xxx means for trademark holders

Kevin Murphy, August 26, 2010, Domain Registries

Trademark holders have been screwed over by ISP domain name wildcarding more than they realise, I’ve discovered from the .xxx contract documents.

ICM Registry is planning a novel approach to trademark protection if its application to launch the .xxx top-level domain is successful, but it’s been watered down compared to its original plan.

Hypothetically, let’s say you’re Lego. You really, really don’t want some cybersquatter snapping up lego.xxx and filling it with… well, you can imagine what Lego porn might look like.

At the same time, for the sake of your family-friendly brand, you don’t want to actually own a resolvable lego.xxx either.

And you certainly don’t want to be forced to to hand some pornographer over $60 a year for each of your brands. Some companies could see this as supporting pornography.

ICM had originally planned to allow companies in this position to pay a one-time fee to have their brand.xxx turned off permanently.

Personally, I like this idea. It would give the IP lobby a lot less to complain about in discussions surrounding the new TLD program.

But the company may now water down this plan, called IP Protect, due to the way that non-existent domains are increasingly handled by some ISPs.

As you probably know, ISPs worldwide are increasingly capturing NXDOMAIN traffic in order to show search results and advertising links to their customers.

It’s generally frowned upon in DNS circles, and it’s now likely to have the effect of making IP Protect costlier and more of an administrative hassle for brand owners.

You’re Lego again. You pay ICM the one-time shut-down fee, only to find that Comcast is now showing its users links to Lego porn whenever they type in lego.xxx.

ICM president Stuart Lawley tells me that one option currently being looked at is to have IP Protect domains resolve to a standard page at an ICM-controlled server.

The problem here is that ICM has to pay ICANN and its registry back-end provider annual fees for every resolving domain name, and that cost will have to be passed on to the registrant, in our case Lego.

Lawley says that ICM is “engaging” with the ICANN intellectual property community to figure out the best solution. It appears that both options are still open.

Facebook sues TeachBook.com for cybersquatting

Kevin Murphy, August 24, 2010, Domain Policy

All your “book” are belong to us?

Facebook has filed a cybersquatting and trademark infringement lawsuit against TeachBook.com, a social networking site for teachers.

The suit claims the site unfairly capitalizes on the Facebook trademark by using the “book” portion of the mark to evoke the idea of social networking.

According to the complaint, one of TeachBook’s selling points is that many schools ban teachers from using Facebook in order to prevent kids extorting them using personal information.

I don’t know how popular the site is — it doesn’t look like much — but it appears that TeachBook also owns a trademark on its brand.

I doubt this kind of claim would hold up under UDRP rules (unless a “friendly” panelist got the case), which is probably why Facebook has resorted to the US courts.

CourthouseNews.com has a PDF of the complaint and exhibits.

Domainers get love, but no refunds for .co cybersquatters

Kevin Murphy, August 10, 2010, Domain Registries

.CO Internet has ramped up its anti-cybersquatter messaging, promising no refunds for trademark-infringing .co registrants, no matter how much they paid for their domains.

An “Open Letter to .co Domain Registrants”, published by the company yesterday, also contains a shout-out to domainers, which I think may be a first from a domain registry.

The letter points out, as I have previously, that .co is subject to the UDRP on the same terms as other TLDs including .com.

The outcome of a UDRP proceeding is binding, and no refunds will be given under any circumstances — regardless of how much money you may have paid to secure the domain; whether the domain was acquired directly via a domain registrar or through a domain auction venue; and whether you were unaware that you had infringed on someone else’s rights.

There’s similar text on the front page of COauctions.com, where the registry is currently auctioning off contested landrush applications.

Is this just a matter of legal ass-covering? Or are there some gray-area domains in the landrush auction?

Despite all the promotional work the registry performed in the run-up to general availability, there are still plenty of people who seemed to believe .co represented new, lawless territory.

The letter ends with the statement that “.CO Internet is committed to protecting the rights of brand owners, domain investors, and end users.”

Domainers getting some love in the same breath as brand owners is not something you hear every day, particularly from registries.