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.CLUB to let brands block “trillions” of domains for $2,000

.CLUB Domains has launched a service for trademark owners that will enable them to block an essentially infinite number of potential cybersquats for a $2,000 payment every three years.

But the restrictions in place to avoid false positives mean that some of the world’s most recognizable brands would not be eligible to use it.

The service is called Trademark Sentry. In February, .CLUB asked ICANN for approval to launch it under the name Unlimited Name Blocking Service.

It’s cast by the registry roughly as a kind of clone of Donuts’ five-year-old Domain Protected Marks List, which enables brands to block their marks across Donuts’ entire portfolio of 242 gTLDs for far less than they would pay defensively registering 242 domains individually.

But while Donuts has a massive stable of TLDs, .CLUB is a one-horse town, so what’s going on?

Based on promotional materials .CLUB sent me, it appears that Trademark Sentry is primarily a way to reduce not defensive registration costs but rather UDRP costs.

Instead of blocking a single trademarked string across a broad portfolio of TLDs — for example google.ninja, google.bike, google.guru, google.charity… — the .CLUB service allows brands to block any domain that contains that string in a single TLD.

For example, Google could pay .CLUB $2,000, and for the next three years it would be impossible for anyone to register any .club domain that contained the substring “google”.

Any potential cybersquatter who went to a registrar and tried to register domains such as “mygooglesearch.club” or “googlefootball.club” or “bestgoogle.club” or “xreegtegooglefwrreed.club” would be told by the registrar that the domain was unavailable.

It would be blocked at the registry level, because it contained the blocked string “google”.

Customers will be able to add typos to the blocklist for a 50% discount.

To the best of my knowledge, this is not a service currently offered by any other gTLD registry.

It’s precisely the kind of thing that the IP lobby at ICANN was crying out for — albeit without the obligation to pay for it — prior to the 2012 application round.

.CLUB reckons it’s a money-saver for brand owners who find themselves filing lots of UDRP complaints.

UDRP complaints cost at least $1,500, just for the filing fees with outfits such as WIPO. They can cost many hundreds more in lawyers fees.

Basically, if you expect your brand will be hit by at least one UDRP in .club in the next three years, $2,000 might look like a decent investment.

.club domains have been subject to 279 UDRP complaints over the last five years, according to UDRPSearch.com.

But .CLUB has put in place a number of restrictions that are likely to seriously restrict its potential customer base.

First, the trademark will have to be “fanciful”. The registry says:

To qualify for Unlimited Name Blocking a trademark must be fanciful as defined by the USPTO and meet the .CLUB Registry’s additional requirements and subject to the .CLUB Registry‚Äôs discretion. Marks that are not fanciful but when combined with another word become sufficiently unique may be allowed.

“Apple” would not be permitted, but “AppleComputer” might be.

.CLUB told me that any trademark that, if blocked, would prevent non-infringing uses of the string would also not qualify for the service.

If you look at a UDRP-happy brand like Lego, which has already filed several complaints about alleged cybersquats in .club, it would certainly not qualify. Too many words end in “le” and begin with “go” for .CLUB to block every domain containing “lego”.

Similarly, Facebook would likely not qualify because one can imagine non-infringing uses such as facetofacebookmakers.club. Twitter is a dictionary word, as is Coke. Pepsi is a substring of dyspepsia. Amazon is primarily a geographic term. McDonald’s is derived from a common surname, as are Cartier and Heinz.

For at least half of the famous brands that pop into my head, I can think of a reason they will probably not be allowed to use this service.

.CLUB also won’t allow trademarks shorter than five characters.

Still, for those brands that do qualify, and do have an aggressive UDRP-based enforcement policy, the service seems to be priced at a point where an ROI case can be made.

Like Donuts’ DPML domains, anything blocked under Trademark Sentry is not going to show up in zone files, so we’re not going to have any objective data with which to monitor its success.

Karklins beats LaHatte to chair ICANN’s Whois privacy team

Kevin Murphy, April 25, 2019, Domain Policy

Latvian diplomat and former senior WIPO member Janis Karklins has been appointed chair of the ICANN working group that will decide whether to start making private Whois records available to trademark owners.

Karklins’ appointment was approved by the GNSO Council last week. He beat a single rival applicant, New Zealand’s Chris LaHatte, the former ICANN Ombudsman.

He replaces Kurt Pritz, the former ICANN Org number two, who quit the chair after it finished its “phase one” work earlier this year.

Karklins has a varied resume, including a four-year stint as chair of ICANN’s Governmental Advisory Committee.

He’s currently Latvia’s ambassador to the United Nations in Geneva, as well as president of the Arms Trade Treaty.

Apparently fighting for Latvia’s interests at the UN and overseeing the international conventional weapons trade still gives him enough free time to now also chair the notoriously intense and tiring Expedited Policy Development Process on Whois, which has suffered significant burnout-related volunteer churn.

But it was Karklins’ one-year term as chair of the general assembly of WIPO, the World Intellectual Property Organization, that gave some GNSO Council members pause.

The EPDP is basically a big bloodless ruck between intellectual property lawyers and privacy advocates, so having a former WIPO bigwig in the neutral hot seat could be seen as a conflict.

This issue was raised by the pro-privacy Non-Commercial Stakeholders Group during GNSO Council discussions last week, who asked whether LaHatte could not also be brought on as a co-chair.

But it was pointed out that it would be difficult to find a qualified chair without some connection to some interested party, and that Karklins is replacing Pritz, who at the time worked for a new gTLD registry and could have had similar perception-of-conflict issues.

In the end, the vote to confirm Karklins was unanimous, NCSG and all.

The EPDP, having decided how to bring ICANN’s Whois policy into compliance with the General Data Protection Regulation, is now turning its attention to the far trickier issue of a “unified access model” for private Whois data.

It will basically decide who should be able to request access to this data and how such a system should be administered.

It will not be smooth sailing. If Karklins thinks international arms dealers are tricky customers, he ain’t seen nothing yet.

Italian bank is the latest dot-brand to bow out

Kevin Murphy, April 10, 2019, Domain Registries

Banca Nazionale del Lavoro, Italy’s sixth-largest bank, has become the latest new gTLD owner to tell ICANN it no longer wishes to run its dot-brand.

It’s the 47th new gTLD to request termination of its registry contract. The affected TLD is .bnl.

ICANN has already decided not to transition the contract to a new owner, as usual.

Also as usual, the gTLD has never been used above and beyond the obligatory nic. site.

What makes this termination somewhat noteworthy is that BNL is a subsidiary of French bank BNP Paribas, which is one of the most enthusiastic dot-brand owners out there.

BNP Paribas dumped its .fr and .net domains in favor of its domains under .bnpparibas back in 2015 and currently has roughly 250 domains in its zone file and dozens of live sites.

The domain mabanque.bnpparibas, used for its French retail banking services, was for some time a top 10 most-visited new gTLD domain names, per Alexa rankings, but that has slipped as new gTLDs’ popularity have increased overall.

UDRP complaints hit new high at WIPO

Kevin Murphy, March 19, 2019, Domain Policy

The World Intellectual Property Organization handled 3,447 UDRP cases in 2018, a new high for the 20-year-old anti-cybersquatting policy.

The filings represent an increase of over 12% compared to the 3,074 UDRP cases filed with WIPO in 2017. There were 3,036 cases in 2016

But the number of unique domains complained about decreased over the same period, from 6,370 in 2017 to 5,655 domains in 2018, WIPO said today.

The numbers cover only cases handled by WIPO, which is one of several UDRP providers. They may represent increases or decreases in cybersquatting, or simply WIPO’s market share fluctuating.

The numbers seem to indicate that the new policy of redacting Whois information due to GDPR, which came into effect mid-year, has had little impact on trademark owners’ ability to file UDRP claims.

UPDATE: This post was updated a few hours after publication to remove references to the respective shares of the UDRP caseload of .com compared to new gTLDs. WIPO appears to have published some wonky math, as OnlineDomain noticed.

At eleventh hour, most .uk registrants still don’t own their .uk names

Less than a quarter of all third-level .uk registrants have taken up the opportunity to buy their matching second-level domain, just a few months before the deadline.

According to February stats from registry Nominet, 9.76 million domains were registered under the likes of .co.uk and .org.uk, but only 2.27 million domains were registered directly under .uk, which works out at about 23%.

Nominet’s controversial Direct.uk policy was introduced in June 2014, with a grandfathering clause that gave all third-level registrants five years to grab their matching .uk domain before it returns to the pool of available names.

So if you own example.co.uk, you have until June 25 this year, 110 days from now, to exercise your exclusive rights to example.uk.

Registrants of .co.uk domains have priority over registrants of matching .org.uk and .me.uk domains. Nominet’s Whois tool can be used to figure out who has first dibs on any given string.

At least two brand protection registrars warned their clients this week that they will be at risk of cybersquatting if they don’t pick up their direct matches in time. But there’s potential for confusion here, after the deadline, whether or not you own a trademark.

I expect we could see a spike in complaints under Nominet’s Dispute Resolution Service (the .uk equivalent of UDRP) in the back half of the year.

Nominet told DI in a statement today:

The take up right now is roughly in line with what we envisaged. We knew from the outset that some of the original 10 million with rights would not renew their domain, some would decide they did not want the equivalent .UK and some would leave it to the last minute to decide or take action. The feedback from both registrants and registrars, and the registration data, bears this out.

The statement added that the registry has started “ramping up” its outreach, and that in May it will launch “an advertising and awareness campaign” that will include newspapers, radio and trade publications.