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Over 7,500 .uk cybersquatting cases heard

Kevin Murphy, November 7, 2011, Domain Registries

Nominet is celebrating the 10-year anniversary of its Dispute Resolution Service this week, saying that it has settled over 7,500 cybersquatting cases.

Based on a £15,000 estimated cost of legal action, the .uk registry reckons DRS has saved companies about £110 million ($176 million) over the last decade.

DRS has similarities but differences to UDRP. Notably, DRS has a formal mediation phase and an appeals process for registrants who believe their domains were wrongly taken from them.

The .uk zone currently has fewer than 10 million registrations, compared to the 135 million gTLD domains to which the UDRP applies.

WIPO and the National Arbitration Forum have settled about 35,000 UDRP complaints over the last decade. With that in mind, cybersquatting enforcement in .uk appears to have been relatively heavy.

Google loses Goggle.com cybersquatting complaint

Kevin Murphy, October 11, 2011, Domain Policy

File this one under: “Good for UDRP, terrible for internet users.”

Google has managed to lose a cybersquatting complaint over the domain name goggle.com, after a National Arbitration Forum panel declined to consider the case.

Goggle.com, like so many other typos of the world’s most-popular sites, is currently being used to get people to sign up to expensive text messaging services via bogus surveys and competitions.

As Domain Name Wire reported when the complaint was filed, up until recently the site was using a confusingly similar style to Google’s familiar look and feel.

It’s got bad faith written all over it.

But “goggle” it is also a genuine English word.

And it turns out that the previous owner of goggle.com, Knowledge Associates, had entered into a “co-existence relationship” with Google that enabled it to operate the domain without fear of litigation.

The current owner was able to present NAF with documentation showing that this right may have been transferred when he bought the domain.

So the three-person NAF panel decided not to consider the complaint, concluding: “this case is foremost a business and/or contractual dispute between two companies that falls outside the scope of the Policy.”

The panel wrote:

Does the Co-existence Agreement apply to the disputed domain names? Does Respondent stand in the shoes of the original registrant? Does the consent of Complainant extend in time to the current actions of Respondent and in person to the Respondent? Has the Respondent complied with the obligations of the original registrant? Does the “no public statements” provision in the Co-existence Agreement prohibit its disclosure or use as a defense by Respondent?

These are factual and legal issues that go far beyond the scope of the Policy.

These are factual and legal issues that must be resolved before any consideration of confusing similarity, legitimate rights and interest, and bad faith under the Policy can be made.

This means that the current registrant gets to keep the domain, and to keep making cash from what in the vast majority of cases are likely to be clumsy typists.

Google now of course can either decide to pay off the registrant, or take him to court.

The registrant, David Csumrik, was represented by Zak Muscovitch.

Will URS really be as cheap as ICANN says?

Kevin Murphy, September 29, 2011, Domain Policy

I’m having a hard time believing that trademark holders will be able to enforce their rights in new top-level domains for just $300.

The Uniform Rapid Suspension policy (pdf) is one of the new systems ICANN is putting in place to deter cybersquatters from abusing trademarks in new gTLDs.

It’s very similar to the existing UDRP, but it’s quicker and it only deals with the suspension – not transfer – of infringing domain names.

No URS arbitration provider has yet been appointed, but ICANN’s Applicant Guidebook, which spells out the policy, currently estimates a price of $300 per single-domain filing.

At least twice during the newdomains.org conference in Munich this week I heard ICANN representatives quote a price between $300 and $500.

I’m wondering how realistic this is.

Typically, domain arbitration fees are split between the provider, which receives a third, and the panelist, who receives the remaining two thirds.

With a $300 fee, that’s $100 to the provider and $200 to the sole panelist – who must be an experienced trademark lawyer or similar – compared to a $500/$1,000 split with the UDRP.

My question is: how many trademark lawyers will get out of bed for $200?

The URS gives panelists between three and five days to come up with a decision, but I’m guessing that you’d be lucky, for $200, to buy three to five hours of a panelist’s time.

Even I charge more than $200 for half a day’s work.

The Rapid Evaluation Service recently introduced by ICM Registry, which serves essentially the same purpose as URS but for the .xxx gTLD, costs $1,300 in National Arbitration Forum fees.

Like URS, the RES is designed for a speedy turnaround – just three days for a preliminary evaluation – of clear-cut cybersquatting cases.

Like URS, complaints submitted using RES have a tight word-count limit, to minimize the amount of work panelists have to do.

With that in mind, it seems to me that a $300 fee for URS may be unrealistic. Even the $500 upper-end ICANN estimate may be optimistic.

It will be interesting to see if ICANN’s negotiating clout with likely URS providers is better than ICM’s and, more importantly, to see whether $200 is enough to buy consistent, reliable decisions from panelists.

Victoria’s Secret seizes swimsuit domain, again

Kevin Murphy, July 6, 2011, Domain Policy

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.

NAF sees rise in UDRP cases

Kevin Murphy, April 7, 2011, Domain Policy

The National Arbitration Forum saw a steep increase in the number of cybersquatting complaints filed under the Uniform Dispute Resolution Policy last year.

According to a NAF announcement, 2,177 cases were filed in 2010, up 24% on the previous year.

That seems to be roughly in line with the experience of the World Intellectual Property Organization, which recently reported a 28% increase in UDRP complaints to 2,696 last year.

On that basis, it appears that WIPO has ever so slightly widened the market share gap between itself and NAF.

Between 1999 and the end of last year, NAF had handled 15,763 domain disputes, compared to WIPO’s over 20,000.

A basic UDRP filing covering a few domain names with a single panelist presiding costs about $1,500 with both providers, not including lawyers’ fees and other expenses.

With roughly 35,000 complaints filed to date, we can estimate that the revenue from UDRP flowing to WIPO and NAF together has been in the ball park of $50 million in slightly over 11 years.

Renew a domain, lose a UDRP?

Kevin Murphy, February 2, 2011, Domain Policy

Renewing a domain name could land you in hot water if you’re hit with a UDRP complaint, if some current thinking at the National Arbitration Forum gains traction.

In the recent NAF decision over FreeGeek.com, panelists argued that if a domain was not originally registered in bad faith (because no trademark existed at the time) renewing the domain after a trademark had been obtained could nevertheless be used to demonstrate bad faith.

Showing that a disputed domain was registered and used in bad faith is of course one of the three pillars of UDRP.

Free Geek Inc runs its web site at freegeek.org. It wanted the .com equivalent, which was registered in 2001, six years before the company acquired a US trademark on its brand.

FreeGeek.com is owned by by Kevin Ham’s company, Vertical Axis. The registration has been renewed every year since 2001.

The three NAF panelists were split on whether renewals post-2007 should be considered evidence of bad faith.

Two of the panelists agree that Respondent should be charged with exercising some diligence at renewal to determine if there are outstanding marks which conflict; one does not.

That’s a disturbing statement, if you’re interested in registrant rights – two panelists basically want domain investors to relinquish their domains if somebody else subsequently acquires a trademark.

What’s more, the panelists’ position appears to be based on a dodgy interpretation of recent UDRP precedent. The decision goes on to say:

The Chair of the Panel is concerned that the Respondent renewed its registration after the trademark was applied for and the USPTO registered the mark. In RapidShare AG and Christian Schmid v. Fantastic Investment Limited… a panel in which the Chair participated, found that “bad faith” could include renewal of a domain name after the issuance of the mark.

It’s a dodgy interpretation because the referenced case, rapidshare.net, does not in fact discuss renewals at all.

In that case, bad faith was actually shown to have arisen due to the domain (which had survived a UDRP just a few months earlier) being bought by a new registrant, not due to a renewal.

What we seem to have here is a case of a couple of NAF panelists thinking about trying to expand the scope of the UDRP. There’s a ton of precedent concluding that renewals are not relevant when establishing whether a domain was registered in bad faith.

With that in mind, you’d think the case would have been a slam-dunk win for the complainant. Not so.

In fact, Ham prevailed on the basis that he had acquired rights to the domain by simply parking it, which constituted a legitimate commercial use.

This panel, in contrast to other panels, finds that the use of this model and evidence of the use is enough to justify a factual finding that Respondent has used the name for commercial purposes

Respondent has clearly demonstrated that it acquired rights in the name by usage even if the usage has been limited to a “pay-per-click” links page. Such usage does not itself signal a lack of rights and legitimate interests and can constitute a bona fide offering of goods or services according to Policy

If there are any recent UDRP cases that show just how random a process it is, this is the one.

UDRP tip: put your domain in the Whois

Kevin Murphy, January 25, 2011, Domain Policy

If you’re fighting off a bogus UDRP complaint on one of your domain names, the onus is on you to prove that you have “rights and legitimate interests” in the domain.

That could be tricky, especially if you think you may been assigned a panelist with a pro-complainant bent, but there may be some ways to mitigate the risk of losing your domain.

Take this recent case, for example: PissedConsumer.com versus ThePissedOffConsumer.com.

The panelist determined that the registrant of ThePissedOffConsumer.com had no “rights and legitimate interests”on the grounds that a) it was competing with the complainant, b) the web site used the same color (red) as the complainant and c) the registrant was not known by the domain.

Ignoring the first two (highly debatable) findings, let’s look at c). The panelist wrote:

Complainant alleges that Respondent has never used a company name “The Pissed-Off Consumer” in connection with operation of any business activities. The WHOIS information for the disputed domain name lists the registrant of the domain as “John Cross.”

The Panel finds, based on the evidence in the record, that Respondent is not commonly known by the disputed domain name, and as such lacks rights and legitimate interests in the said name

In other words, because Whois showed the name of the registrant, rather than the name of the domain, the registrant was not “commonly known” as the domain and lacked rights.

To add insult to injury, the complainant was assumed to have earned the right to the mark “Pissed Consumer” before it had officially acquired a trademark (and before the disputed domain was registered) simply by virtue of operating PissedConsumer.com, despite the fact that it hides behind Whois privacy and is called Consumer Opinion Corp.

Presumably, if Cross had simply added the text “ThePissedOffConsumer” to his Whois record, the panelist would have had one less data point “in the record” to justify his finding.

In fringe UDRP cases, that could prove a useful defensive tactic.

Businesses to object to Arab UDRP provider

Kevin Murphy, October 27, 2010, Domain Policy

ICANN’s business constituency is to object to a new Jordan-based UDRP provider, saying that no new providers should be approved until rules governing their behavior are put in place.

The BC reckons that UDRP decisions need to be more consistent and predictable, and that a good way to achieve this would be with standard accountability mechanisms.

In a draft position statement, expected to be finalized and filed with ICANN tomorrow, the BC says that it:

strongly advocates that ICANN must first implement a standard mechanism with any and all UDRP arbitration providers that defines and constrains their authority and powers, and establishes regular and standardized review by ICANN with flexible and effective means of enforcement.

Its comment is expected to be filed in response to the Arab Center for Domain Name Dispute Resolution’s request for official recognition as a UDRP provider last month.

The BC does not appear to object to the ACDR on its own merits or on the basis of its location.

The statement notes that registrars are bound by contracts setting the rules for domain registrations, but that UDRP providers can force transfers unconstrained by any ICANN guidelines or oversight.

It’s well-known that UDRP decisions from the various existing providers are currently about as predictable as flipping a coin, with panelists frequently interpreting the rules along quite different lines.

The BC seems concerned that this could be exacerbated as more UDRP providers are approved and as new TLD registries start popping up in different countries.

The draft statement notes that currently about 99% of UDRP cases are heard by WIPO and NAF, and that most gTLDs are “based in a limited number of national jurisdictions”.

Microsoft wins Kinect domains, but still doesn’t own kinect.com

Kevin Murphy, August 22, 2010, Domain Policy

Microsoft has successfully recovered two domain names that contain its Kinect games trademark, but kinect.com still belongs to another company.

A National Arbitration Forum UDRP panelist handed Microsoft kinectxbox.com and xbox-kinect.com, which were registered on the eve of Kinect’s launch, calling the registrations “opportunistic bad faith”.

The registrant, located in France, said in his defense that he’d planned to create a fan site for the Kinect, which is an upgrade for the Xbox games console.

But he didn’t get a chance – the domains were registered on June 12, Kinect was announced the following day, and Microsoft had slapped him with a UDRP complaint by June 29.

As I reported back in June, kinect.com is currently registered to an ad agency called CAHG. I’d be surprised if Microsoft hasn’t tried to buy the domain already.

Interestingly, Microsoft, which looks like a client of Melbourne IT’s brand management service, does own kinect.co, but it currently redirects to a Bing search.

World of Warcraft player ganks UDRP complainant

Kevin Murphy, August 17, 2010, Domain Policy

An aviation safety consulting firm has lost its UDRP case against a gamer who used its company name for his World of Warcraft guild.

Wyvern Consulting went after wyvern.com, which was registered by its current owner back in 2005.

The registrant said he’d originally registered the name for a possible business venture, which fell through, and then decided to use it for his WoW guild instead.

The National Arbitration Forum panelist found that while Wyvern proved the name was confusingly similar to its common law trademark, and that the registrant lacked legitimate interests in the domain, it had failed to prove bad faith.

Complainant does not have a registered trademark, and offers no proof of consumer confusion or loss of business. Respondent’s proof of its current use is minimal, but the burden is upon Complainant on this issue. Respondent’s use of the disputed domain name as a forum and e-mail service for its World of Warcraft guild does not establish that Respondent registered and used the disputed domain name in bad faith

The domain in question currently appears to be unused, although archive.org shows a WoW guild page back in 2008.