Legal fight breaks out over .pr domains

The University of Puerto Rico has accused the manager of the .pr top-level domain of hoodwinking ICANN in order to “illegally” take over the registry.
It recently filed a lawsuit seeking to regain control of .pr, saying that the current registry operator has made an estimated $2 million from domain registrations since it somehow took over the ccTLD.
The lawsuit and other documents tell a remarkable story, one in which a University department quietly spun itself out as a private for-profit company and took .pr with it.
If the claims are true, ICANN may have made a huge screw-up by inadvertantly allowing the ccTLD to be transferred from the University into private hands.
According to an archived copy of the IANA delegation record for .pr, the ccTLD was from 1988 until about 2007 delegated to:

University of Puerto Rico
Gauss Laboratory
Facundo Bueso Building
Office 265
Rio Piedras 00931
Puerto Rico

That’s the Sponsoring Organization. The administrative and technical contacts also stated that UPR was in charge of the domain. The contact email address was @uprr.pr, the University’s domain.
Today, the IANA record is quite different:

Gauss Research Laboratory Inc.
Calle Vesta 801
San Juan 00923
Puerto Rico

The University is no longer listed. The contact email addresses are now @nic.pr. These new details have been in effect apparently since some time in 2007.
To my eye, this looks like the stewardship of .pr was transferred from one organization, the University of Puerto Rico, to another, Gauss Research Laboratory Inc.
But IANA never produced a redelegation report – as it must when a registry changes hands – and the ICANN board never voted to redelegate.
According to a July 2007 letter (pdf) circulating this week from David Conrad, who was then IANA general manager at ICANN, the changes merely reflected a “structural reorganization” of the registry:

Since the underlying organization performing registry services for .PR did not change (it was Gauss Laboratory before and after the change), this is not considered a full redelegation, and therefore does not result in a public report with board approval.

But the University claims that long-time manager Oscar Moreno set up Gauss as a non-profit organization to handle .pr when he retired from UPR, then in 2007 changed it to the for-profit corporation that is now the designated registry manager.
A 2009 letter from UPR to ICANN general counsel John Jeffrey (pdf), which emerged on mailing lists last week, said Moreno was trying to sell his company, and the ccTLD, to a third party.
IANA, according to the letter, was fooled into thinking the University backed the transfer of control due to a letter from a faculty member who did not have the authority to authorize the changes.
The University sued Moreno in late May (pdf), seeking an injunction ordering him to transfer .pr back to UPR and to return the $2 million it believes .pr domain sales have raised since 2007.
IANA redelegations are rarely straightforward.
A recent report from the Country Code Names Supporting Organization found that ccTLD redelegations have been basically a bloody mess – unpredictable, opaque and poorly documented.
ICANN does not discuss IANA requests, but I’m currently aware of a handful of ongoing redelegation battles, such as those over Niue’s .nu and Rwanda’s .rw.
It is suspected that Irish operator IEDR is currently trying to have .ie taken away from its nominal sponsor, University College Ireland, which has put the fear into at least one registrar.

Former ICANN chair joins M+M

Peter Dengate Thrush, the former ICANN chairman who pushed through approval of the new top-level domains program less than a month ago, is to join new gTLD firm Minds + Machines.
He has become executive chairman of Top Level Domain Holdings, M+M’s parent company, which is listed on the Alternative Investment Market.
The hire will undoubtedly boost M+M’s credibility and raise its profile, but is already also raising eyebrows.
TLDH plans to apply to ICANN for potentially dozens of new gTLD contracts next year, both with partners and customers and on its own.
Dengate Thrush has been granted options to buy 15 million TLDH shares for 8p each, roughly the same as its current price, which he can exercise at a rate of 1.25 million per quarter through July 2014.
TLDH currently has no revenue to speak of. Its future share price will depend on its ability to sign registry services customers and win new gTLDs through the ICANN process.
It’s fairly easy to extrapolate scenarios where Dengate Thrush’s compensation package is worth millions.
His chairmanship of ICANN’s board of directors came to an end June 24, just a few days after it voted to approve the new gTLD program.
During that vote, dissenting director Mike Silber accused the board of voting too soon, saying it was being hurried by “ego-driven deadlines”.
This was a reference to Dengate Thrush and fellow new gTLD cheerleader Rita Rodin Johnston, both of whom were due to see their terms on the board expire that week.
Dengate Thrush is the first ICANN chair to take a high-paying domain name industry job following his time with ICANN.
His predecessor, Vint Cerf, joined Google. Earlier, Esther Dyson went on to invest in and work with a number of technology start-ups.
ICANN does not have a policy preventing former employees or directors taking lucrative jobs working for the companies that they were previously essentially regulating.
Indeed, some of its directors currently work for such companies.
Few in the ICANN community doubted that Dengate Thrush, an IP lawyer by trade, would join a new gTLD company. The question was which one.
I asked him, along with CEO Rod Beckstrom and senior VP Kurt Pritz, at a press conference in Singapore, whether they would be prevented from joining a new gTLD firm.
The answer, basically, was: “No.”
ICANN staff and board sign confidentiality agreements that prevent them taking secrets into future employers, but there’s nothing to prevent a “revolving door” between industry and regulator.
There have already been calls from parts of the ICANN community to create a new ethics policy, after senior registry liaison Craig Schwartz left to join the VeriSign-backed .bank project.
GNSO Council chair Stephane Van Gelder of the French registrar Indom suggested in a blog post this morning that ICANN should consider hiring independent directors and barring them from working in the industry for a year after their terms end.
It would be pretty difficult to enforce such a rule on the board as it is currently made up, given that it draws some of its members, by design, from the domain name industry.
ICANN’s new vice chair Bruce Tonkin works for Melbourne IT, a registrar, for example. He recused himself from the new gTLD vote because of this conflict of interest.
It would be silly for ICANN to ban him from working for Melbourne IT after his term expires if he’s allowed to work there during the term itself.
While no rules appear to have been broken, M+M’s new hire may sit uncomfortably with some.
It will certainly reinforce beliefs, where they are held, that the new gTLD program is largely a money-grabbing exercise by the domain industry.

Last chance to tell ICANN how to plug new gTLDs

“How Do We Raise Global Awareness of New gTLDs?”
ICANN asked that question a month ago and tomorrow is your last chance to respond to the public comment period it set up to gather suggestions.
So far, the number of responses is in the single figures.
I quite like Danny Younger’s suggestion: “It might be wise for a communications plan to include a warning to the general public about misleading ‘pre-registration’ schemes.”
A press release containing such a warning would almost certainly gather headlines – hacks love a bit of conflict – but it could also risk making the new gTLD process look a bit slapdash.
Easily the most laughable suggestion filed with ICANN so far comes from 4U Systems:

I would like to offer the use of .4U.com in your campaign. For example, New-gTLDs.4U.com, Domains.4U.com,Internet-Innovations.4U.com, new-domains.4U.com, Internet-expansions.4U.com, ICANN-applications.4U.com, TLD-launch.4U.com, ICANN-facts.4U.com, podcasts.4U.com, social-media.4U.com…the possibilities are limitless… the avenues to the information, countless. Therefore, we would like to talk further about how we may assist in the gTLD campaign with 4U.

Has any reader ever encountered a more fundamentally badly judged or desperation-smacking piece of business development outreach?

Ambitious .app project seeks funding

A community initiative to apply to ICANN for the .app top-level domain is looking for expert assistance and, more importantly, financial backers.
The .app Project sprung up in late June, after ICANN approved the new gTLD program. It hopes to raise a total of $535,000 to support the application, via memberships and sponsorship.
It appears to have been launched and is being coordinated by Matthew Baxter-Reynolds, director of a British mobile software consultancy called AMX Software.
The project’s site, at dotappapp.com, says:

Our aim is to keep the .app gTLD open and accessible such that it becomes an entity that properly support the app software development community, particularly in areas of intellectual property protection.

To raise money for the $185,000 ICANN fee, it’s selling memberships for between $25 and $100, which include a number of “free” .app domains if the application is approved.
It hopes to later raise an additional $350,000 for the technical infrastructure through sponsorship and investment.
I say the project is “ambitious” because I fully expect .app to be a contested TLD with multiple serious bidders that may well wind up duking it out at auction.
The iPhone platform alone already has over 400,000 third-party apps in the Apple App Store, so .app is a string that could potentially be a modest commercial success.

Anti-.jobs coalition keeps up pressure on ICANN

The .JOBS Charter Compliance Coalition, which wants ICANN to rein in .jobs registry Employ Media, has sent a couple of stern letters to ICANN recently.
Neither are especially exciting, but as ICANN has yet to publish them on its correspondence page I thought I’d make them available here.
The first (pdf), sent July 5, demands to know why ICANN has not yet provided an update to its forthcoming arbitration with Employ Media, which was due a few weeks ago.
ICANN and the registry are set to face off at the International Chamber of Commerce over the disputed Universe.jobs service, which ICANN believes was launched in breach of the .jobs Charter.
My understanding is that the arbitration is going ahead, but that ICANN has been granted an extension to the deadline to file its reply.
The second letter (pdf) notes that .jobs’ IANA listing was recently updated with language more friendly to Employ Media’s position that not only human resources managers qualify for .jobs domains.
It asks why this change was made, invoking the Documentary Information Disclosure Policy.
The Coalition is made up of independent jobs site operators unhappy that Employ Media appears to be using its position as the .jobs registry to compete with them.

Will Larry Flynt sue over .xxx domains?

The porn publisher Hustler is “prepared to take whatever legal action may be necessary” to stop ICM Registry letting people register its trademarks in .xxx, according to a report.
I’ve been hearing rumors for several weeks that some companies are so unhappy about having to pay to block their brands in .xxx that they may consider legal action.
Now Xbiz reports that Hustler has said it refuses to be “shaken down” by the registry, but that ICM has not responded to its written demands for protection.
But will the company sue ICM (and ICANN?) over what may amount to just a few thousand dollars in defensive registration fees? And on what grounds?
In the US, the Anticybersquatting Consumer Protection Act, which has been on the books since 1999, is rather friendly to registries unless they behave really, really badly.
ICM will have some of the strongest trademark protection mechanisms of any gTLD, suggesting that it could have quite a strong defense to a cybersquatting claim.
Hustler could of course decide to sue based on a different law.
Threats of lawsuits are something that new gTLD applicants will need to bear in mind if they plan to apply for a TLD that encompasses an industry or community, as .xxx does.
Even if applicants manage to win the support of a portion of the affected industry, community members that think they’re likely to be cybersquatted or lose valuable real estate may well resort to the courts.
This is why about 30% of every new gTLD application fee goes into an ICANN war chest reserved in part for legal fees. ICANN knows what could be coming down the pike.
Xbiz quoted Hustler attorney Jonathan Brown saying: “We are constantly policing the registration and use of domain names that attempt to capitalize on Hustler’s trademarks.”
But the record shows that the company does not appear to be an especially aggressive enforcer of its marks in other top-level domains.
The magazine’s parent, LFP, has filed 29 UDRP complaints since 2002, all relating to Hustler and Barely Legal and, apart from hustler.tv, all for .com domains. The most recent filing was in 2009.
The company does not own the string “hustler” in .net, .org, .info, .biz or in a number of high-visibility ccTLDs that I checked. It does, however, own hustler.mobi.

Another new gTLD consultancy launches

ITEMS International, a Paris-based consulting firm, has launched a practice to specialize in helping new top-level domain applicants with their ICANN proposals.
The firm says it has more than 20 consultants on gTLD Team, based around Europe and North Africa, including one former ICANN board member and a few other ICANN regulars.
ITEMS says it has previously worked with the .fr registry, AFNIC, and has been contracted to support applications by the Burgundy Region Council and other undisclosed company.
It appears that the company plans to largely focus on geographic and dot-brand applications.

Wiki to shake up the new gTLD market

Tens of thousands of dollars worth of registry secret sauce is set to be released under a Creative Commons license on a new wiki, courtesy of the International Telecommunications Union.
Applying for a new generic top-level domain could be about to get a whole lot cheaper.
Before October, the ITU plans to publish template answers to all 22 of the questions about registry technical operations demanded by ICANN’s Applicant Guidebook.
Because they will be published under a Creative Commons license, new gTLD applicants will be able to copy and paste the whole lot into their applications for free.
And because they will be on a wiki, approved contributors will be able to fine-tune the templates to increase their chances of passing ICANN’s technical evaluation.
Currently, gTLD applicants are generally paying registry back-end providers to take care of this part of their applications, paying $10,000 and up for the privilege.
I think the word that applies here is “disruptive”.
Consultant and former ICANN board member Michael Palage, who has worked on a number of previous TLD launches, is coordinating the creation of the templates with input from registries and engineers.
The resulting “best in class” material will also be used by the ITU and the League of Arab States in their bid for .arab and its Arabic equivalent, .عرب.
According to the Guidebook, applicants do not need hands-on experience running a registry in order to have their application approved. ICANN is trying to enable competition, after all.
But there is a period of pre-delegation testing that each successful applicant must endure before their new gTLD is added to the root, so a simple copy-paste of the ITU’s templates will not suffice.
I doubt this project will take a great deal of money out of the pockets of the incumbent registries – well-funded applicants will presumably be happy to pay the extra money for certainty – but it will provide a bit of flexibility for applicants not already in bed with a back-end.
It could also help open up the new gTLD market to companies that may not have otherwise considered it, such as those in the developing world.
Indeed, part of the rationale for the Creative Commons publication is to aid with “capacity building” in these nations, according to an ITU presentation delivered in Cairo this week.
We’ve already seen pricing competition hit the registry services market in the wake of the approval of the new gTLD program, now it appears we’re seeing the dawn of “free”.

Victoria’s Secret seizes swimsuit domain, again

The lingerie retailer Victoria’s Secret has won a cybersquatting complaint over the domain name victoriasecretswimsuit.com for the second time in as many years.
Judging by the Whois history, it appears that the company lost the domain following the demise of rogue registrar Lead Networks, which lost its accreditation last year.
Victoria’s Secret first secured the domain with an easily won UDRP complaint in May 2009.
An attorney from its outside law firm was subsequently listed as the admin contact, but the registrar of record remained the same – the Indian outfit Lead Networks.
At some time between August and October last year, the Whois contact changed to the current registrant, who’s hiding behind a privacy service.
Probably not coincidentally, that was about the same time as ICANN, having terminated Lead Networks’ accreditation, bulk-transferred all of its domains to Answerable.com.
Lead Networks was placed into receivership in March 2010 following a cybersquatting lawsuit filed by Verizon.
Answerable.com, a Directi business also based in India, was the registrar’s designated successor under ICANN’s policies. It has subsequently changed its name to BigRock.com.
The latest UDRP decision does not explain how Victoria’s Secret managed to lose its registration, but I’d speculate the inter-registrar transfer may have had something to do with it.
When a registrar loses its accreditation the names are transferred to a new registrar but the term of the registration is not extended. If a registrant ignores or does not receive the notifications sent by the gaining registar, they may find they lose their domains.

ICANN has $750k to advertise new gTLDs

Don’t all rush at once.
ICANN is looking for an advertising agency to help it get the word out about the new generic top-level domains program, but it only has $750,000 to spend.
The organization published a request for proposals last night.
The budget is not much in the advertising world, especially considering that ICANN’s awareness program will have to be global and multilingual to be truly effective.
With such a limited budget, the RFP and accompanying FAQ acknowledges that it will need “creative solutions” from its ad agency.
This is likely to mean a big PR push for advertising equivalent editorial – lots and lots of news stories about new gTLDs.
To an extent, the word is already out by this measure. My standing Google News and Twitter searches for “ICANN” have been going crazy since the gTLD program was approved two weeks ago.
I think it’s fair to say that the vast majority deal of the coverage so far has been either neutral or negative, with much of the focus on potential legal, branding and security problems.
That’s pretty much par for the course in the domain name business, of course.
And ICANN does not necessarily need positive spin – it’s trying to raise awareness of the program’s existence, and negative coverage does that job just as well.
There is, as they say, no such thing as bad publicity.
ICANN’s job of promoting the program is already being done to a large extent by the registries, many of which were investing heavily in media outreach before new gTLDs were approved.