The .pharmacy new gTLD has been dragged into the ongoing trademark dispute between two pharmaceuticals giants called Merck.
Germany-based Merck KGaA has accused the .pharmacy registry of operating an unfair and “secretive” process to resolve competing sunrise period applications.
The domain merck.pharmacy was awarded to US rival Merck & Co, which was spun off from the German original a hundred years ago, after both Mercks applied for the domain during .pharmacy’s January-March 2015 sunrise.
Now Merck KGaA has become what I believe might be the first company to reveal an attempt to invoke ICANN’s Public Interest Commitments Dispute Resolution Procedure to get the decision reversed.
The National Association of Boards of Pharmacy, a US entity, operates .pharmacy as a tightly controlled gTLD with pre-registration credential validation.
When it launched for trademark owners in last year, it was vague about how contentions between owners of matching trademarks would be handled, according to Merck KGaA.
Merck KGaA claims that NABP awarded merck.pharmacy to Merck & Co and initially refused to disclose how it had arrived at its decision other than to say the German firm “met fewer criteria” than its rival.
After some back-and-forth between their lawyers, Merck KGaA was still not happy with NABP’s response to the dispute, so it decided to start filing compliance reports ICANN.
A year on, it tried to invoke the PICDRP.
Public Interest Commitments are addenda to ICANN Registry Agreements that bind the registries to certain behaviors, such as fighting malware and working with industry-specific regulatory bodies.
The PICDRP, heard by ICANN or an independent standing panel, is a way for third parties to challenge registries’ compliance with their contracts when they believe PICs have been violated.
No PICDRP disputes have actually made it before a panel to date, to my knowledge. Indeed, this is the first time I’ve heard of anyone even attempting to file one, though ICANN Compliance reports indicate about 20 were filed last year.
Merck KGaA claims that by not disclosing how it decided Merck & Co should win merck.pharmacy, NABP is in breach of the PIC that states:
Registry Operator will operate the TLD in a transparent manner consistent with general principles of openness and non-discrimination by establishing, publishing and adhering to clear registration policies.
It suspects that NABP was biased towards Merck & Co because the US firm is a $100,000+ contributor to its coffers.
NABP has denied any wrongdoing, saying it applied “objective criteria” to decide which Merck most deserved the name.
This June, over a year after the domain was awarded, Merck KGaA filed its PICDRP complaint with ICANN. Two weeks ago, ICANN responded saying the complaint had been rejected, saying:
The detailed review criteria used to resolve the contention for the registration of the domain name
was part of an operational procedure that the registry operator applied to both applicants’ websites and was consistent with .pharmacy’s community restrictions in Specification 12 of the RA. As the internal operational procedure does not conflict with ICANN’s agreements and policies, it is deemed outside of ICANN’s scope of enforcement.
The decision seems to have been made by ICANN staff. No independent panel was appointed. The PICDRP grants ICANN “sole discretion” as to whether a panel is needed.
The only reason the dispute has come to light is that Merck KGaA has decided to challenge ICANN’s decision with a Request for Reconsideration. The RfR and 600-odd pages of exhibits are published here.
It’s the second concurrent RfR Merck has on the go with ICANN. The Mercks are also simultaneously fighting for the right to run .merck as a dot-brand gTLD.
Both applications for .merck went through the Community Priority Evaluation process, but both failed.
The next stage in resolving the contention said would have been an auction, but Merck KGaA has filed for Reconsideration on its CPE panel’s determination.
Donuts has announced an expansion of its domain-blocking service that will enable brand owners to cheaply (kinda) block misspellings of their trademarks.
Brand owners whose trademarks match “premium” generic strings will also be able to take matching domains out of circulation using the registry’s new DPML Plus service.
DPML, for Domain Protected Marks List, is Donuts’ way of giving trademark owners a way to bulk-block their marks across Donuts’ entire stable of gTLDs, which currently stands at 197 strings.
With typical sunrise period prices at $200+, registering a single string across almost 200 gTLDs during sunrise could near a $40,000 outlay. In general availability, it would often be about a tenth of that price.
But the original DPML, with a roughly $3,000 retail price for a five-year block, reduced the cost to protect a single string to about $3 per domain per year.
Now, with DPML Plus, Donuts is offering a premium service that adds the ability to block typos and premium names.
Typos and substring-based blocking were near the top of the intellectual property community’s wish-list when the new gTLD program was being developed, but those features were never incorporated into ICANN rights protection mechanisms.
But for $9,999 (suggested retail price), DPML Plus buyers get a 10-year block on the string that matches their trademark and three extra strings that are either typos of the trademark or contain the trademark as a substring, Donuts said.
So Google would for example be able to block android.examples, anrdoid.examples, androidphone.examples and googleandroidphone.examples using a single DPML Plus subscription.
Basically, they get to block up to 788 domains at $9,999 over 10 years, which works out to about $1.26 per domain per year.
It looks nice and cheap on that basis, but companies wishing to block dozens of base trademarks would be looking at six or seven-figure up-front payments.
DPML Plus also lifts the ban on blocking “premium” domains.
Under the old DPML, customers could not block a domain if Donuts had flagged it with a premium price, but under DPML Plus they can.
This opens the door to brand owners who have valuable trademarks on generic dictionary words to get them blocked across the whole Donuts portfolio.
A Donuts spokesperson said the company reserves the right to reject such strings if it suspects gaming.
Another benefit of the DPML Plus is the ability to prevent other companies with identical trademarks later unblocking and snatching blocked domains for themselves.
Currently, third parties with matching brands can “override” DPML blocks, but that feature is turned off for DPML Plus subscribers. They get exclusivity for the life of the block.
Donuts said the Plus offer will only be available to buy between October 1 and December 31.
As an added carrot, from January 1 the price of its vanilla DPML service is going to go up by an amount the company currently does not want to disclose.
Video rental chain Blockbuster may have gone the way of the the 8-track, the VCR, and the Nokia cell phone, but it will soon have a gTLD of its own.
The .blockbuster gTLD application completed its pre-delegation testing with ICANN this week and is now with IANA/Verisign, ready to go live on the internet in the coming week or so.
It’s a fairly straightforward dot-brand application, even though the brand itself is pretty much dead.
Blockbuster, which at its peak in 2004 had 9,000 rental stores in its chain, was rescued from its Netflix-induced bankruptcy by TV company Dish Network back in 2011.
Dish applied for .blockbuster in 2012 when the brand was still, if only barely, a going concern.
However, since that time all of its remaining Blockbuster stores have been closed down and the Blockbuster-branded streaming service has been renamed Sling.
The web site at blockbuster.com is a husk that hasn’t been updated since 2014.
And yet the brand will shortly be at the cutting edge of online branding by having its own new gTLD.
A dot-brand without a brand? Surely this will be among the most useless new gTLDs to hit the ‘net.
I’ve never seen anything like this before.
.tickets gTLD registry Accent Media has launched an anti-cybersquatting measure that lets the world know who is trying to register what domain name a whole month before the domain is allowed to go live.
The service, at domains.watch, is currently only being used by .tickets, but it seems to be geared up to accept other TLDs too.
A spokesperson said the site soft-launched a couple months ago.
Today, if you want to register a .tickets domain name, you have a choice of two processes — “fast-track” or “standard”.
Fast-track is for organizations with trademarks matching their names. It take five days for the trademark to be verified and the domain to go live.
Standard-track applications, however, are published on domains.watch for 30 days before the the registration is fully processed (under the registry hood, the domain are kept in “Pending Create” status).
During that 30 days, anyone with a trademark they believe would be infringed by the domain may file a challenge against the registration. They have to pay a fee to do so.
The would-be registrant can counter by showing their own rights. If they have no documented rights, the challenger gets the name instead.
“Rights” in the case of .tickets means a trademark or evidence of use of a mark in a ticketing-related context.
While it’s certainly not unusual in the industry for restricted TLDs to manually vet their registrants before processing a registration, I’ve never before come across a registry that does it all in public, allowing basically anyone — or, at least, anyone who is willing to pay the challenge fee — to challenge any registration.
Can you imagine what the domain world would be like if this kind of system were commonplace across a range of TLDs?
A lot of people outside the industry — particularly in security, I fancy — would love it.
One of the top secondary market domain sales of 2015, as reported by Sedo, appears to be a case of somebody selling a domain matching a trademark to the trademark’s owner.
According to a press release yesterday, the domain basic-fit.fitness was the third-priciest reportable new gTLD domain sale handled by Sedo last year.
It went for €7,949 ($8,634).
Given that it’s not intrinsically an attractive-looking domain, I tried to figure out why it sold.
Judging by Whois records, the buyer is the corporate owner of Basic-Fit, a chain of over 300 gyms in four European countries.
It has at least one trademark on “Basic-Fit”.
The original registrant, according to records cached by DomainTools, was a Belgian web designer.
The domain seems to have changed hands around May last year. In April, it spent a couple of weeks under Whois privacy.
The domain was registered August 27, 2014, the day .fitness exited its Early Access Period and domains were available at regular prices.
It seems the same Belgian web designer owns several more new gTLD domain names matching brands that are parked with Sedo and available to buy instantly.
Many are .immo (“.realestate”) domains matching the brands of Belgian real estate firms. There are also a few .beer domains under his name matching the brands of breweries and beers in the UK, US and Czech Republic.
It’s not unheard of for web developers to register domains on behalf of clients. It’s rather less common for them to then list them for sale, with buy-now prices, on domain marketplaces.
Looks dodgy to me.