Latest news of the domain name industry

Recent Posts

URS is live today as .pw voluntarily adopts it

Kevin Murphy, July 29, 2013, Domain Policy

Directi has become the first TLD registry to start complying with the Uniform Rapid Suspension process for cybersquatting complaints.

From today, all .pw domain name registrations will be subject to the policy, which enables trademark owners to have domains suspended more quickly and cheaply than with UDRP.

URS was designed, and is obligatory, for all new gTLDs, but Directi decided to adopt the policy along with UDRP voluntarily, to help mitigate abuse in the ccTLD namespace.

URS requirements for gTLD registries have not yet been finalized, but this is moot as they don’t apply to .pw anyway.

To date, only two UDRP complaints have been filed over .pw domains.

The National Arbitration Forum will be handling URS complaints. Instructions for filing can be found here.

NAF picked to be first URS provider

Kevin Murphy, February 21, 2013, Domain Policy

The US-based National Arbitration Forum has been selected by ICANN as the first provider of Uniform Rapid Supsension services.

NAF, which is one half of the longstanding UDRP duopoly, submitted “an outstanding proposal demonstrating how it would meet all requirements presented in the [Request For Information]”, according to ICANN.

URS is meant to complement UDRP, enabling trademark owners to relatively quickly take down infringing domain names in clear-cut cases of cyberquatting.

Unlike UDRP, URS does not allow prevailing trademark owners to take control of the infringing domain, however. The names are merely suspended by the registry until they expire.

NAF already runs a suspension process, the Rapid Evaluation Service, for ICM Registry’s .xxx gTLD.

While exact pricing has not yet been disclosed, ICANN has previously stated that the successful RFI respondent had offered to process URS case for its target of between $300 and $500 per domain.

ICANN expects to approve more URS providers in future, saying that the system will be modeled on UDRP.

URS will only apply to new gTLDs for the time being, though there will inevitably be a push to have it mandated in legacy gTLDs such as .com in future, should it prove successful.

A dozen .xxx sites hit by rapid takedown

Kevin Murphy, February 9, 2012, Domain Policy

The National Arbitration Forum has ordered the secret takedown of 12 .xxx domains since the adults-only gTLD launched in December.

NAF yesterday published statistics about the .xxx Rapid Evaluation Service, which ICM Registry created and NAF exclusively administers.

Fifteen RES complaints have been filed since December 6, 12 of which have been resolved so far. All of the cases were won by the complainant — a trademark holder in 11 of the cases.

The RES was designed to handle clear-cut cases of cybersquatting and impersonation. It costs $1,300 to file a complaint and offers a super-fast alternative to the UDRP.

The domains are suspended forever if the complainant is successful.

According to NAF, it’s currently taking on average two business days between the complaint being filed and the domain being suspended.

Because registrants have 10 days to respond – and half of them did – the final decision took an average of 12 business days.

Unlike UDRP, RES decisions are not published, so there’s no way of knowing whether they were fair.

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.