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EFF becomes second to appeal new .org contract

Kevin Murphy, August 7, 2019, Domain Registries

The Electronic Frontier Foundation has appealed ICANN’s decision to add stronger trademark protection rules to .org.

The civil liberties organization has filed a Request for Reconsideration with ICANN, saying that the new .org contract should not oblige Public Interest Registry to implement the Uniform Rapid Suspension policy.

URS is a swifter, cheaper version of the anti-cybersquatting UDRP policy. It can lead to clear-cut cases of trademark-infringing domains being relatively quickly suspended, but not transferred.

But the EFF is worried that it could be abused to curtail free speech.

It said URS is “particularly dangerous for the many .org registrants who are engaged in an array of noncommercial work, including criticism of governments and corporations”.

URS was created via ICANN’s bottom-up, community-led policy-making process to apply to new gTLDs applied for in 2012, not legacy gTLDs such as .org, EFF argues,

Adding more rights protection to a legacy gTLD “should be initiated, if at all, through the multistakeholder policy development process, not in bilateral negotiations between a registry operator and ICANN staff”, the RfR states.

The EFF is also concerned that the new contract allows PIR to unilaterally create its own additional rights protection mechanisms.

I don’t think this is a new power, however. Remember when PIR proposed a “Copyright UDRP” a couple of years ago, evidently as a way to turf out The Pirate Bay? That plan was swiftly killed off after protests from, among others, the EFF.

The EFF’s reconsideration request (pdf) does not address the issue of price increase caps, which were removed in the new contract.

That more-controversial provision is already the subject of an RfR, filed by NameCheap last month.

Both RfRs will be dealt with by ICANN’s Board Accountability Mechanisms Committee before being passed to the full board.

Cybersquatting cases down a bit in the UK

The number of cybersquatting complaints filed with Nominet declined slightly in 2018, according to the registry.

Nominet’s Dispute Resolution Service, which is a bit like the UDRP, handled 671 cases last year, compared to 712 in 2017.

The number of domains at issue was down from 783 to 763.

The slight decline appears to be because fewer complaints were filed against .org.uk, .me.uk and plain .uk domains.

The number of .co.uk registrations challenged was flat between 2017 and 2018 at 617 domains.

Only 49% of cases resulted in the disputed domain being transferred, according to the registry’s annual report (pdf).

.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’s 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.

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.

Claims UDRP has cost over $360 million so far

Kevin Murphy, February 13, 2019, Domain Policy

Trademark owners have splashed out over $360 million on UDRP cases over the 20 years the policy has been active, according to an intellectual property trade group.

Marques, a European body representing trademark owners, reckons $360 million is a “conservative” estimate.

It reached the figure by multiplying the number of UDRP complaints filed to the end of 2018 — 72,038 — by the $5,000 estimated total cost of each complaint.

The World Intellectual Property Organization, which handles well over half of all UDRP cases, charges at least $1,500 per case, but trademark owners have other fees, such as paying lawyers to draft the complaints.

WIPO, which basically designed and wrote the UDRP back in 1998, has been paid at least $63.8 million in filing fees to date, Marques calculates.

Across all UDRP providers, well over 100,000 individual domain names have been subject to UDRP. It’s likely much more, but the National Arbitration Forum does not publish data on unique domains.

The Marques claims were made in a letter (pdf) from council member (and Com Laude managing director) Nick Wood to ICANN last week, part of IP lobbying efforts in the face of UDRP reform efforts. He wrote:

This lowest-case estimate of $360m is a very significant financial burden. Registrants, on the other hand, pay only for their own defence, if any. They do not pay damages, or even contribute to the provider fees, if they lose – which across the five active panel providers appears to be majority of the time.

One proposal that has been put forward by IP owners is for registrants to pay a $500 fee when they are hit by a UDRP complaint, which would be refundable if they prevail.

I can see this idea going down like a cup of iced sick in the domainer community.

Rather than lobbying for any specific proposal, however, Marques is asking ICANN to create an “independent expert group” outside of the usual Policy Development Process, to highlight “priority issues and possible solutions” for the PDP to consider.

Marques thinks the group should comprise a small number of trademark interests, registries and registrars, and registrant rights groups. It wants WIPO to chair it.

It also wants ICANN to coordinate UDRP providers in the creation of a unified set of data on UDRP cases processed to date, to help with future reform discussions.

ICANN community volunteers have been working on the “PDP Review of All Rights Protection Mechanisms in All gTLDs” — the RPM WG — since March 2016.

The RPM WG expects to put out its “Phase One” initial report, comprising recommendations for reform of the Trademark Clearinghouse, Trademark Claims and Sunrise policies, in early June this year.

Only then will it turns its attention to UDRP, in “Phase Two”, with talks due to begin at the ICANN 65 meeting in Marrakech later that month.

The working group has been beset by all kinds of personal drama among volunteers recently, which continues to add friction to discussions.