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How one guy games new gTLD sunrise periods

Kevin Murphy, April 17, 2014, Domain Registries

Wanna buy a SOCIAL brand pen for a dollar? No? How about social.web or cloud.guru or direct.flowers?

pensOne intellectual property lawyer closely associated with a number of new gTLD registries has been using a flimsy online pen-selling business in order to obtain potentially valuable domains during sunrise periods.

Thomas Brackey of Beverley Hills law firm Freund & Brackey has acquired dozens of premium domain names during sunrise periods. He was good enough to share some of the details with DI.

Brackey owns three trademarks on the terms “DIRECT”, “SOCIAL” and “CLOUD”. All three were registered in Switzerland in late 2012, having been applied for in July that year.

All three cover the category “stylos”, or pens.

If you want to buy a CLOUD brand pen, you can do so at pentm.ch, a web site Brackey seems to have thrown up rather quickly using Shopify.

All three marks appear to have been registered via Marcaria.com, which charges $960 for a Swiss trademark registration.

Brackey obtained Trademark Clearinghouse registrations for his three trademarks, which would have cost him at least $150 per mark.

He seems to have used the pentm.ch web site to fulfill the TMCH’s “proof of use” requirement.

With TMCH registrations, he’s able to participate in new gTLD sunrise periods, giving him the first opportunity to register social.tld, cloud.tld and direct.tld for the usual inflated sunrise prices.

The pens themselves, Brackey assures us, are real.

But he makes no attempt to pretend that the pen-selling business was in thriving need of brand protection under the new gTLD program’s brand protection mechanisms.

Brackey told DI:

In the course of preparing new gTLD applications, I came to be pretty familiar with the various policy developments surrounding the creation and implementation of the TMCH.

For the first time mark holders of all stripes, and from every country would be given a pre-emptive right to acquire domain names that had nothing to do with the substance of their brands.

Musing on that, I identified what I believed to be a legitimate opportunity to acquire some domain names in the newTLD landscape. More curious than anything, I decided to put my theory to the test and resolved to try buying some domain names.

I’m not sure what I’m going to do with the domains I’ve purchased. I’ve never been a domain investor before, and not confident I qualify as one now. It’s all a bit of an experiment at this point and is certainly fascinating territory from an IP perspective.

There will no doubt be a number of important international legal developments that arise from the gTLD process — new rules, new policies and new opportunities.

At least two of Brackey’s new gTLD clients — What Box? and Plan Bee, which use Brackey’s law firm as their mailing address — have also registered large numbers of sunrise names using this same method.

He’s even selling Plan Bee’s “CONSTRUCTION” and “BUILD” pens on his web site.

Brackey acknowledged that some people take a “pretty dim view” of what he’s doing.

I’d have to say I’m one of them.

In my view, while Brackey may not be strictly breaking the rules of the new gTLD program, he’s certainly not acting within their spirit.

Members of Intellectual Property Constituency and others fought hard for rights protection mechanisms that would help them protect their or their clients’ pre-existing brands from cybersquatters.

The RPMs were not designed to provide a way for investors to avoid landrush auctions or a mad scramble for nice names on the first days of general availability.

The “proof of use” requirement was added to the rules in order prevent the kind of debacle we saw with the European Union’s .eu launch, where bogus trademarks were used to game EurID’s sunrise period.

But the barrier is tissue-thin, requiring merely a screenshot of a web site to overcome.

Gaming new gTLD sunrise periods may not be cheap — it may not even be profitable — but I have to wonder what kind of reputational impact it will have on new gTLD registries that choose to participate.

If you’re a brand owner, would you be more likely or less likely to trust a new gTLD registry that chooses to participate in sunrise gaming?

TMCH sends out 17,500 Trademark Claims notices in a month

Kevin Murphy, March 3, 2014, Domain Services

Wow.

Just four weeks after the first new gTLDs went into general availability, the Trademark Clearinghouse has already sent out over 17,500 Trademark Claims notices to trademark owners.

A Claims notice is a warning that is generated whenever somebody registers a domain name that exactly matches a trademark listed in the TMCH’s database.

The 17,500 number refers to post-registration notices sent to trademark owners, not pre-registration warnings delivered to would-be registrants.

Considering that there are somewhere in the region of 180,000 domain names in new gTLDs today, 17,500 represents a surprisingly high percentage of the market (high single figures).

Of course, not all of these will be due to cybersquatting attempts.

There are plenty of marks in the TMCH that are acronyms or dictionary words, either because they match a genuine brand or because somebody obtained trademarks on generic terms in order to game sunrise periods.

I’d count those as false positives, personally, but it’s impossible to know without access to TMCH data how many of the 17,500 alerts delivered to date can be accounted for in that way.

There are 26,802 marks in the TMCH, according to the company.

Uniregistry plans “dot-spanning” Sunrise periods and anti-gaming protection

Kevin Murphy, December 27, 2013, Domain Registries

Uniregistry is to offer a second Sunrise period in its new gTLDs, going over and above what is required by ICANN, aimed at companies with trademarks that “span the dot”.

Say you run a tattoo parlor and have a trademark on “Joe’s Tattoo”. The ICANN-mandated Sunrise would only allow you to register joestattoo.tattoo, but Uniregistry will allow you to buy joes.tattoo as well.

It would also allow “plurals and conjugations”, so a company with a trademark on “Joe’s Tattoos” would presumably also be eligible for joes.tattoo, even though they’re not an exact match.

This Sunrise B plan appears to apply to all of Uniregistry’s forthcoming gTLDs and was approved by ICANN recently (pdf).

The additional service would be invitation-only, restricted to companies that have participated in the regular Sunrise period, which Uniregistry is calling Sunrise A.

For Sunrise A, Uniregistry plans to allow mark owners to register regular resolving domain names or purchase “blocking” registrations, where the domain resolves to a non-monetized Uniregistry placeholder.

Sunrise B participants would not be able to purchase blocking registrations; for “dot-spanning” trademarks the name must resolve.

Uniregistry also plans to implement an “anti-hijack” measure to help prevent — or at least add friction to — .eu-style gaming by domain speculators during its launch periods.

If you participate in either Sunrise period, you won’t be able to later transfer your name to a third party without providing the registry with proof that you’ve also transferred the corresponding trademark registration.

Court throws out Russian gaming scandal claims

Kevin Murphy, November 2, 2011, Domain Registrars

Russian registrar RU-Center has won its appeal against a $7.5 million government fine, following claims that it gamed the launch of .РФ, registering tens of thousands of names to itself.

The Moscow Arbitration Court yesterday reversed the decision of the Federal Antimonoply Service, according to a statement from RU-Center, the .РФ registry and local media reports.

The dispute centers on the launch of the Cyrillic-script ccTLD last November, which saw over 200,000 registrations in the first six hours and half a million domains registered in the first few weeks.

RU-Center was quickly hit by claims that it had used its access to the registry, ccTLD Coordination Center, to register over 65,000 premium names to itself in order to auction them to users.

It later emerged that some of the Coordination Center’s launch policy-setters had ownership interests in RU-Center either directly or through family members.

In challenging the FAS ruling, RU-Center said that it only registered domains in its own name, via other registrars, because it had taken over 120,000 pre-orders from customers but was limited to filing 4,800 registrations per hour by the registry.

It also said that the domains remained in its own name because registry rules prohibited transfers during the first year of registration. The transfers will be effective November 11, it said.

Russian firm fined millions over domain land-grab

RU-Center, Russia’s largest domain name registrar, will have to repay 240 million rubles ($8.6 million) for grabbing thousands of domain names and auctioning them during the .РФ landrush.

The company could also be fined up to 75% of its 2009 revenues for breaking competition law, according to a statement from the country’s Federal Antimonopoly Service.

When .РФ was launched by the .ru registry launched last November, it offered domain names on a first-come first-served basis, without the premium landrush period offered by other TLDs.

RU-Center took this opportunity to register 60,000 domains in its own name and sell them off to the highest bidder, essentially bringing the landrush to the registrar level.

Some ccTLD Coordination Center council members, responsible for setting the launch policies, had ownership interests in RU-Center either directly or through family members, according to FAS.

The registrar is currently being acquired by a company called RBC.