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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.

Cybersquatters already hitting .co

Kevin Murphy, July 21, 2010, Domain Sales

Just over 24 hours after the general availability launch of the .co top-level domain, the secondary market is already beginning to fill up with dodgy domains.

Aftermarkets including Go Daddy and Sedo are currently listing some names that are unarguably typosquats of famous brands, and plenty more that very probably wouldn’t beat a UDRP complaint.

Go Daddy Auctions currently has almost 200 .co domains listed, Sedo over 500. Of those, I managed to find a few dozen dubious registrations, mostly on Go Daddy.

It beggars belief that, with millions of decent greenfield domains available, somebody had the failure of imagination to register wwwgoole.co. But they did. It’s currently listed on Sedo.

Other probable typosquats found on Sedo this evening include yahhoo.co, listed with a £10,000 price tag, as well as yayoo.co, geogle.co and barclys.co.

Go Daddy has listed some more obvious brands: poptarts.co and tostitos.co for the foodies, sanfranciscogiants.co, washingtonnationals.co and seattlemariners.co for the American football baseball fans.

Somebody who pays way too much attention to Rick Schwartz registered bpoilspill.co for the quick flip.

Cartoon characters for sale include mariobros.co and goofy.co. Celebrities duncanbannatyne.co and mikeposner.co both get squatted.

Yahoo, Apple, Facebook and Microsoft all get targeted, with yahoomaps.co, iphonedeals.co, facebookme.co and bingsearch.co all receiving price tags between $5,000 and $50,000.

For the Brits, centerparcs.co, virginuk.co and bbciplayer.co are also all up for auction.

Bear in mind that these are just the domains that have been registered and listed for auction in the first 24 hours. There’ll be plenty more not yet on the market.

I’d estimate about 5% to 10% of Go Daddy’s .co auctions are currently UDRP fodder.

This is why trademark holders hate new TLDs.

Verizon hires investigator to track down DirectNIC bosses

Verizon has won a delay in its cybersquatting lawsuit against domain registrar DirectNIC, because it can’t seem to track down and serve its CEO, Sigmund Solares.

In its latest filings with the Florida District Court, Verizon says that it had to hire a private detective to track down DirectNIC director Michael Gardner, and ended up serving his wife instead.

But, two months after filing the suit, the company still hasn’t managed to track down Solares.

“Plaintiff continues to diligently attempt to serve the lone remaining Defendant yet to be served, Sigmund Solares… Plaintiffs continue to diligently try to locate and serve this Defendant.”

DirectNIC, previously known as Intercosmos Media Group, relocated to the Cayman Islands from New Orleans in 2008, which may explain some of Verizon’s difficulty.

Indeed, when Verizon turned up to serve the company in New Orleans, it found its old office (from where employees attracted global attention for live-blogging Hurricane Katrina) closed.

Verizon sued DirectNIC, along with several directors and alleged aliases, in March, claiming they had squatted on at least 288 domains that included Verizon trademarks.

The case is of note because Verizon alleges that DirectNIC broke US cybersquatting laws when it parked expired domains that contained Verizon trademarks.

Parking pre-delete expired names is a common practice among registrars, which makes the lawsuit puzzling.

But Verizon does appear to be digging for something else, its complaint suggesting a connection between DirectNIC and its nominal registrants that may not be entirely kosher.

Without legal discovery, its hunches could go nowhere. And before Solares is served, it cannot proceed to discovery.

The court has granted an extension until late August, or 30 days after Solares is served, for the first case management meeting.

Mail-order wife site silences critic with UDRP

Kevin Murphy, May 18, 2010, Domain Policy

A dating service has failed in a second attempt to hijack a domain name on the basis that the corresponding web site uses its “hot Russian brides” trademark in its directory structure.

Romantic Tours, which runs hotrussianbrides.com, filed a UDRP claim against agencyscams.com, claiming its URL agencyscams.com/why/hotrussianbrides infringed its trademark.

It lost the case, with the National Arbitration Forum arbitrator quite reasonably noting that “proceedings under the UDRP may be applied only to domain names”.

As noted over at Domain Name Wire, Romantic Tours tried the same ballsy tactic with jimslists.com, and was similarly unsuccessful.

Jimslists.com and and agencyscams.com are run by the same person. They’re basically gripe sites naming and shaming allegedly dodgy dating agencies and the allegedly dodgy women who use them.

While Romantic Tours may have lost its UDRP case, it appears to have got what it wanted anyway.

The offending URLs are no longer active on either site, and detailed references to hotrussianbrides.com appear to have been yanked, resulting in 404s.

Cheaters’ dating site wins 101 typo domains

Kevin Murphy, May 17, 2010, Domain Policy

You’d think a web site that enables married people to cheat on their partners would have difficulty taking the moral high ground on any issue. Apparently not.

AshleyMadison.com, which offers an “Affairs Guaranteed” promise, has just won 101 typo domain names under a mass UDRP claim against a single respondent.

The disputed domains included everything from zashleymadison.com to aeshleymadison.com. Two were PPC pages, the remainder apparently remained unused.

Judging from the National Arbitration Forum decision, this was an open-and-shut case of typosquatting.

The registrant was hiding behind a Bahamas-based privacy service that declined to close his true identity.

He did not respond to the UDRP filing.

Registrars responsible for proxy cybersquatters

Domain name registrars can be liable when their customers break the law, if those customers use a privacy service, according to new ICANN guidance.

The ICANN advisory clarifies the most recent Registrar Accreditation Agreement, and seems primarily pertinent to UDRP cases where the registrar refuses to cooperate with the arbitrator’s request for proper Whois records.

The advisory says:

a Registered Name Holder licensing the use of a domain is liable for harm caused by the wrongful use of the domain unless the Registered Name Holder promptly identifies the licensee to a party providing the Registered Name Holder with reasonable evidence of actionable harm

In other words, if a domain gets hit with a UDRP claim or trademark infringement lawsuit, as far as the RAA is concerned the proxy service is the legal registrant unless the registrar quickly hands over its customer’s details.

Law enforcement and intellectual property interests have been complaining about registrars refusing to do so for years, most recently in comments on ICANN’s Whois accuracy study.

ICANN offers a definition of the word “promptly” as “within five business days” and “reasonable evidence” as trademark ownership and evidence of infringement.

I don’t think this ICANN guidance will have much of an impact on privacy services offered by the big registrars, which generally seem quite happy to hand over customer identities on demand.

Instead, this looks like it could be the start of a broader ICANN crackdown on certain non-US registrars offering “bulletproof” registrations to cybersquatters and other ne’er-do-wells.

I wouldn’t be surprised to find the number of ICANN de-accreditations citing refusal to cooperate with UDRP claims increasing in future.

The new ICANN document is a draft, and you can comment on it here.

RapidShare chases cybersquatters

Kevin Murphy, April 19, 2010, Domain Policy

RapidShare, the popular German file-hosting site, has filed six cybersquatting claims against people with the word “rapidshare” in their domains.

The UDRP complaints are either a sign that RapidShare is cracking down on pirated content, or an example of balls-out intellectual property chutzpah.

My guess is it’s the latter, for two reasons.

First, a search reveals dozens of popular sites with “rapidshare” in the domain, all serving RapidShare links to copyrighted content, none of which have had UDRP claims filed against them.

Second, each of the six domains RapidShare has filed claims for seem to provide links only to files hosted by competing services such as Hotfile.com or Uploading.com.

RapidShare.com is currently the 35th most-popular site on the internet, more popular than Craigslist, according to Alexa.

A German court ruled two years ago that it had to start deleting pirate content, and it has been playing whack-a-mole with the bootleggers ever since.

Now, it wants the World Intellectual Property Organization to help it protect its trademark. There’s irony for you.

WIPO’s UDRP market share lead narrows

Kevin Murphy, April 13, 2010, Domain Policy

The number of UDRP cases filed with the National Arbitration Forum dipped slightly last year, according to NAF numbers released today.

The organization said it received 1,759 filings last year, compared to 1,770 in 2008. Only 1,333 of the cases were actually heard; the others were dropped or settled.

While that’s a decline for NAF, it’s not quite as steep as the almost 10% drop experienced by rival arbitrator WIPO over the same period.

That said, WIPO is still the primary choice of companies trying to enforce their trademarks in the domain name system, saying last month that it received 2,107 complaints in 2009.

It was also the year of big multi-domain cases for both outfits.

WIPO handed 1,542 domains to Inter-Continental Hotels in a single case, while NAF transferred a relatively modest 1,017 domains to ConsumerInfo.com.