Over half a million Trademark Claims notices served

Kevin Murphy, March 25, 2014, Domain Services

The Trademark Clearinghouse has delivered over 500,000 Trademark Claims notices and prevented over 475,000 trademarked names from being registered, according to the TMCH.

The 500,000 number announced in a press release today seems to refer to pre-registration warnings that the name about to be registered matches a trademark in the TMCH database.

Three weeks ago the TMCH said it had served 17,500 post-registration notices to trademark owners in just one month. I’m inferring that this number is now up to over 25,000.

Half a million appears to be an awfully big number, especially when compared to the number of active domain names in new gTLDs, which today stands at just over 347,000.

The TMCH said today that 95% of these notices led to the name not being registered, which it said shows the success of the Claims system.

It could also mean that it’s having the “chilling effect” predicted by opponents of the process, with legitimate registrants being scared away from non-infringing uses of registered marks.

There are plenty of dictionary words in the Clearinghouse — some that match legitimate brands, some which are simply attempts to game sunrise periods and obtain potentially valuable names.

There are currently over 28,000 marks in the TMCH database.

Panel doesn’t consider TLD in the first-ever new gTLD UDRP case

Kevin Murphy, March 17, 2014, Domain Policy

The first new gTLD domain name has been lost to a UDRP complaint.

The famous German bike maker Canyon Bicycles won canyon.bike from a registrant who said he’d bought the name — and others — in order to protect the company from cybersquatters.

The panelist in the case, WIPO’s Andrew Lothian, declined to consider the fact that the TLD was related to Canyon’s business in making his decision. Finding confusing similarity, he wrote:

The Panel finds that, given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the Policy that would preclude such an approach. However, the Panel considers that it is not necessary to do so in the present case.

Canyon had argued that the fact that it’s a .bike domain reinforced the similarity between the domain and the mark, but it’s longstanding WIPO policy that the TLD is irrelevant when determining confusing similarity.

The domain was registered under Whois privacy but, when it was lifted, Canyon looked the registrant up on social media and discovered he was very familiar with the world of bikes.

The registrant told WIPO that he’s registered Canyon’s mark “with the best of intentions”.

Apparently, he’s registered more than one famous brand in a new gTLD in the belief that the existence of the program was not wildly known, in order to transfer the domains to the mark holders.

He claimed “that many companies have been content with his actions” according to the decision.

But the fact that he’d asked for money from Canyon was — of course — enough for Lothan to find bad faith.

He also chose to use the fact that the registrant had made no attempt to remove the default Go Daddy parking page — which the registrar monetizes with PPC — as further evidence of bad faith.

The domain is to be transferred.

Will .exposed see a big sunrise?

Kevin Murphy, March 11, 2014, Domain Registries

Donuts’ new gTLD .exposed goes into sunrise today, but will it put the fear into trademark owners?

It’s arguably the first “ransom” TLD to go live in the current round and the first since .xxx, which scared mark holders into blocking over 80,000 domains back in late 2011.

Most new gTLD sunrise periods to date — most of which have been focused on vertical niches — have had sunrise registrations measured in tens or hundreds rather than thousands.

But .exposed, I would say, is in the same free speech zone as yet-to-launch .sucks and .gripe, which lend themselves well to having a company, product or personal name at the second level.

Brand protection registrars are encouraging their clients to pay special attention to this type of gTLD.

Will this cause a spike in sunrise sales for Donuts over the next 60 days?

It might be difficult to tell, given that Donuts also offers brand owners a blocking mechanism via the Domain Protected Marks List service, so the domains don’t show up in the zone files.

But DPML blocks can be overturned by others with matching trademarks, so some trademark owners may decide to register the name instead for an overabundance of caution.

Fifth URDP provider goes live

Kevin Murphy, February 25, 2014, Domain Services

The Arab Center for Dispute Resolution has gone live as the fifth approved provider of UDRP dispute resolution services.

The Jordan-based outfit, which says it has offices in “all Arab countries”, says it “is uniquely positioned to address domain name issues pertinent to the region, while maintaining an international, multicultural disposition to case settlement.”

ACDR was approved by ICANN to administer UDRP cases last May, over the objections of the Internet Commerce Association and others, which want UDRP providers bound to ICANN contracts.

The organization does not appear to be competing hard on price. A single-domain case will set trademark owners back a minimum of $1,500 ($1,000 to the panel, $500 to ACDR), which is the same as market leader WIPO.

It’s actually a little more expensive than WIPO — a five-domain case will cost $1,700 compared to WIPO’s $1,500.

TMCH sees cybersquatting in 1&1′s pre-reg requests

Kevin Murphy, February 6, 2014, Domain Registries

Would-be cybersquatters have pre-registered new gTLD domains matching many famous brands, according to the Trademark Clearinghouse.

According to a bit of TMCH PR fluff coming out tomorrow, there are pre-registrations in .web for 40 out of the 50 most-valuable British brands.

I gather that the data came from 1&1, the most aggressive registrar in its pursuit of new gTLD leads, which has reported over three million pre-regs.

In what appears to be outreach to drum up additional trademark registrations, the TMCH said:

According to the Trademark Clearinghouse’s data, unknown entities have already pre-reserved their interest in registering the domain names of 80 per cent of the UK’s 50 most valuable under the .WEB domain name. Similarly, third parties have attempted to pre-order 78 per cent of the UK’s top 50 most valuable brands under the .ONLINE domain name, 72 per cent under .APP, 70 per cent under .SHOP and 68 per cent under .BLOG.

It doesn’t seem to be a problem peculiar to new gTLDs, however. The TMCH also said that 54% of these brands have holes in their defensive registration portfolio across existing TLDs such as .biz, .net and .co.

There were roughly 23,000 marks in the TMCH database as of January 21.

UPDATE: 1&1 has asked me to clarify that the company took no part in this research. TMCH says it obtained the numbers through searches on the 1&1 web site.