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Full UDRP reform unlikely until 2017

Kevin Murphy, October 4, 2011, Domain Policy

The often-criticized Uniform Dispute Resolution Policy is unlikely to see fundamental changes for at least five years, following an ICANN review published yesterday.

ICANN has recommended, after talking to the community, that full UDRP reform should be put on the back-burner until at least a year and a half after the first new gTLDs go live.

Since that isn’t likely to happen until early 2013, ICANN is unlikely to address the subject until mid-2014. The chances of a revamped UDRP going live before 2017 are therefore slim.

The new Final Issue Report (pdf), prepared by ICANN staff and sent to the GNSO Council yesterday, says:

Staff recommends that a [Policy Development Process] on the UDRP not be initiated at this time. Staff recommends that a PDP be delayed until after the New gTLD Uniform Rapid Suspension System (URS) has been in operation for at least eighteen months. Doing so would allow the policy process to be informed by data regarding the effectiveness of the URS, which was modelled on the UDRP, to address the problem of cybersquatting.

The report was informed by a number of stakeholder webinars and questionnaires sent to UDRP providers earlier this year, as well as a round of public comments.

It notes that UDRP has remained the same since October 1999, but that it still has proved flexible enough to react to changes in the domain industry and cybersquatting tactics.

The report states:

After carefully evaluating the issues and concerns expressed by the ICANN community regarding the UDRP, Staff has concluded that many relate to process issues associated with the implementation of the UDRP, rather than the language of the policy itself.

In the absence of root-and-branch reform, ICANN has suggested the formation of an “expert panel” to investigate whether smaller changes could be made to the periphery of the UDRP.

It could, for example, look at amendments to the Supplemental Rules that UDRP providers use to handle complaints and responses. ICANN wrote:

To the extent that these expert recommendations result in modifications to certain of the UDRP Rules or suggested changes for provider Supplemental Rules to align with the UDRP Rules, these may be adopted by the ICANN Board without the necessity of undertaking a complete PDP.

Consultations have shown that there’s little appetite for massive reform from either side of the debate; it’s probably not too cynical to say that the status quo will be maintained largely by paranoia.

Trademark holders would ideally prefer a cheaper, faster system that is more accommodating to their own interests, whereas domain investors would like to see an end to forum-shopping and panelists who give too much deference to big business.

But both sides are terrified that the actual process of reforming UDRP would be captured by their opponents, ultimately tilting the balance of power against their own interests.

The trademark lobby is convinced that ICANN policy-development is the plaything of the domain name industry, and vice versa.

What we’re left with is a system where cybersquatting still pays and in which reverse domain hijacking can sometimes be a cheap way to get your hands on a domain you want.

And it looks like it could stay that way for some time to come.

The Final Issue Report now needs to be considered by the GNSO Council, presumably at its public meeting in Dakar, Senegal later this month.

I think the Council will almost certainly accept the report’s recommendations against a PDP with little argument – everybody has far too much other stuff to be worrying about at the moment.

It’s less clear to me whether the idea of an “expert panel” will find favor, however. That may be one of Dakar’s more interesting open questions.

Lego overtakes Microsoft in cybersquatting cases

Kevin Murphy, July 22, 2011, Domain Policy

Lego has now filed more complaints against cybersquatters than Microsoft.

The maker of the popular building block toys has filed 236 cases using the Uniform Dispute Resolution Policy since 2006, the vast majority of them since July 2009.

That’s one more than Microsoft, about 50 more than Google and twice as many as Viagra maker Pfizer.

Lego has been particularly aggressive recently. As I’ve previously blogged, Lego lately files a UDRP complaint on average every three days.

The company is usually represented in these cases by Melbourne IT Digital Brand Services, the online trademark enforcement arm of the Aussie registrar.

The 236 cases equates to over $350,000 in WIPO fees alone. I’d be surprised if Lego has spent less than $1 million on UDRP cases over the last few years.

Lego has annual revenue of about $1.8 billion.

It has never lost a case. The company either wins the dispute, or the complaint is terminated before a finding is made.

It’s picked up some oddities along the way, notably including legogiraffepenis.com and legoporn.com.

Yet Lego does not appear to have the most UDRP cases under its belt. I believe that honor may go to AOL, which has filed at least 277 cases over the last decade.

Victoria’s Secret seizes swimsuit domain, again

Kevin Murphy, July 6, 2011, Domain Policy

The lingerie retailer Victoria’s Secret has won a cybersquatting complaint over the domain name victoriasecretswimsuit.com for the second time in as many years.

Judging by the Whois history, it appears that the company lost the domain following the demise of rogue registrar Lead Networks, which lost its accreditation last year.

Victoria’s Secret first secured the domain with an easily won UDRP complaint in May 2009.

An attorney from its outside law firm was subsequently listed as the admin contact, but the registrar of record remained the same – the Indian outfit Lead Networks.

At some time between August and October last year, the Whois contact changed to the current registrant, who’s hiding behind a privacy service.

Probably not coincidentally, that was about the same time as ICANN, having terminated Lead Networks’ accreditation, bulk-transferred all of its domains to Answerable.com.

Lead Networks was placed into receivership in March 2010 following a cybersquatting lawsuit filed by Verizon.

Answerable.com, a Directi business also based in India, was the registrar’s designated successor under ICANN’s policies. It has subsequently changed its name to BigRock.com.

The latest UDRP decision does not explain how Victoria’s Secret managed to lose its registration, but I’d speculate the inter-registrar transfer may have had something to do with it.

When a registrar loses its accreditation the names are transferred to a new registrar but the term of the registration is not extended. If a registrant ignores or does not receive the notifications sent by the gaining registar, they may find they lose their domains.

“Super Lawyers” not famous enough to win gripe site UDRP fights

Kevin Murphy, July 5, 2011, Domain Policy

Three lawyers have failed to win cybersquatting complaints against a blogger who registered domains matching their personal names in order to criticize them.

Gregg Mashberg, Allen Fagin and Joseph Leccese, all attorneys with the international law firm Proskauer Rose, have lost three separate UDRP complaints recently.

Self-professed “investigative blogger” Crystal Cox registered josephleccese.com, allenfagin.com and greggmashberg.com last October, in order to publish a handful of unreadable and potentially defamatory blog posts alleging various forms of criminality.

The three men do not hold registered trademarks matching their names, so were forced to rely upon various awards they have won and media appearances they have made to show common law rights.

All three have apparently been named “Super Lawyers” by something called New York Super Lawyers, for example.

But the three-person WIPO panel which heard all three cases found, in virtually identical decisions, that the lawyers had failed to acquire common law trademark rights to their names.

The decisions read:

The record before the Panel suggests that Complainant is a highly respected, prominent lawyer who is a partner with a major law firm. There is insufficient evidence here that Complainant markets or provides services independently of the Proskauer law firm. Rather, it appears that the Proskauer firm is the platform on which Complainant provides his legal services.

It’s not unusual for a celebrity or public figure to win a UDRP complaint on the basis of their fame, but it appears in this case that the complainants were just not famous enough.

Facebok.com had 250 million hits a year

Kevin Murphy, June 22, 2011, Domain Policy

The typo domain name facebok.com was receiving an estimated 250 million visits per year, according to a Facebook attorney.

As I’ve previously reported, the domain was subject to controversy after Facebook won it in a UDRP adjudication and was subsequently sued by the cybersquatter.

“Obviously, it’s Facebook except lacking one O, and attracting a lot of traffic – 250 million was the estimate by our SEO team, 250 million hits a year,” Facebook’s Susan Kawaguchi said during a panel on UDRP here at the ICANN meeting in Singapore.

“Somebody was making a lot of money off of it,” she said.

Facebok.com bounced users to what Kawaguchi described as a “social survey scam” – a site that used Facebook’s look-and-feel to get users to sign up for expensive text message services.

After Facebook won the UDRP in September, a bogus Panama-based shell company sued Facebook and the registrar, EuroDNS, claiming to be the true owner of the domain.

The suit persuaded EuroDNS to put the transfer to Facebook on hold, and ICANN threatened to terminate the registrar’s accreditation as a result.

The situation has since been resolved, and Facebook owns the domain, but EuroDNS may find itself in trouble with the Luxembourg court.