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Cialis maker files UDRP on over 200 domains

Kevin Murphy, May 25, 2011, Domain Policy

Eli Lilly seems to have filed a single UDRP complaint covering 209 domain names that all contain its Cialis trademark.

The contested domains include duffers such as bestcialisinfoguide.com, cialisblogfeed.net and affordablecialistips.com.

Based on a sample, they all appear to be affiliate splogs pimping pills for the Belize-based mail-order pharmacies Pharm4All and Generics4All.

They all appear to have been registered in September 2010 by the same Moscow-based registrant.

While such large cases are not unheard of, they still constitute a material chunk of the annual UDRP workload. WIPO, for example, processed 4,370 domains last year.

This particular complaint was filed with the National Arbitration Forum, which has not yet disclosed the complainant. It’s pretty obviously Lilly, or the biggest chancer on the planet.

Lilly is a fairly strict enforcer of its trademarks. Its number of UDRP complaints to date is around the 100 mark, and most of those related to the Cialis brand.

The company is also one of those pushing most heavily for greater law enforcement take-down powers over “fake pharma” domain names.

A UDRP decision to scare the pants off domainers

Kevin Murphy, May 23, 2011, Domain Policy

Is this the most blatant case of UDRP abuse you’ve seen?

A company has won a generic domain name using a trademark it has had registered for less than a year, despite the fact that the current registrant has owned it for well over a decade.

The domain medicalexpo.com was first registered in 1997. It has been in the control of the same registrant since at least 2000, according to historical Whois records, but has never resolved to a web site.

The complainant, Benoit Thiercelin, who has has a history of attempted reverse domain name hijacking, was granted a European trademark on the term “Medical Expo” in June 2010.

In April 2011, Thiercelin filed a UDRP complaint with the little-used ADR Center of the Czech Arbitration Court, citing its European trademark and a US trademark as proof of its rights.

The US trademark was not fully “registered” until May 3, 2011, a month after the UDRP was filed, according to USPTO records.

On May 15, CAC ruled in his favor and awarded him the domain.

The panelist, Joseph Cannataci, found that the domain was registered “or at least re-registered” in bad faith, simply on the grounds that it had never been used.

If one is in good faith when registering a domain name, then the intention is understandably to use it for the purposes of one’s business or activity. If it remains unused for an unreasonable length of time then such registration is open to accusation of constituting “passive holding”. Irrespective of whether the domain name was registered before or after some of the Complainant’s marks, the current holder of the domain name does not seem to have used it or currently be using it.

The decision goes on to refer to the domain as a “TLD”.

The registrant did not help his cause by not responding to the complaint.

But it beggars belief that a UDRP panelist could infer bad faith registration of a generic domain that was registered 13 years before the complainant first acquired a trademark.

The idea that “re-registration” – presumably the panelist means the domain was renewed at some point after the trademark rights were acquired – could show bad faith does not even hold water.

The domain has been due to expire in 2012 since at least 2008, historical Whois records show. The registrant clearly bought a multi-year registration at some point before then, likely in 2002.

The complainant did not form his Medical Expo company until 2009, and did not file for his trademarks until December 2009 and February 2010. The registrant has not renewed the domain since then.

What we have here is a generic domain name, registered for 14 years, seized by complainant with only recently acquired rights, based on non-use and a flimsy piece of panelist reasoning.

Under other circumstances, it would be a slam-dunk case of reverse domain name hijacking.

In fact, Thiercelin has form when it comes to domain hijacking.

Last year, WIPO ruled that that he had attempted to use UDRP to hijack VirtualExpo.com, which also had been registered 10 years before he acquired his trademark rights.

The case was virtually identical to the MedicalExpo.com case, but the panelist ruled in exactly the opposite way, saying:

In the view of the Panel this is a Complaint which should never have been launched. The Complainant knew that the Domain Name was registered nearly 10 years before the Complainant acquired his registered rights, no attempt was made to demonstrate the existence of any earlier rights nor was any attempt made to address the issue arising from the disparity in dates. It simply was not mentioned. Instead, a flagrantly insupportable claim was made as to the Respondent’s bad faith intent at time of registration of the Domain Name and the Panel can only assume that it was hoped that the Panel would miss the point.

Can anybody say “forum shopping”?

This should be enough to scare the pants off of any domainer.

Dr Martens grabs “sucks” domains from Dr Marten

Kevin Murphy, May 18, 2011, Domain Policy

Shoemaker Dr Martens has won three “sucks” domains from a registrant that may actually be a genuine doctor called Marten.

The company won a UDRP case over drmartensucks.net, as well as the .org and .info equivalents.

The name and address in the Whois records for the domains correspond to a cosmetic surgeon in San Francisco named Dr Timothy Marten (rather than Martens).

The Whois could of course be fake, but what we may have here is a case of a defensive registration made by an individual worried about his reputation being challenged and won equally defensively by a company worried about its reputation.

The respondent did not respond to the complaint, so we’ll probably never know. All three domains were parked with Go Daddy.

Oddly, the .com variant of the domain was not part of the case, and still belongs to the same original “Dr Marten” registrant.

.brand TLDs still face barriers

Kevin Murphy, May 16, 2011, Domain Policy

Companies planning to apply for “.brand” top-level domains still have concerns that ICANN’s new gTLD program does not adequately cater to their unique requirements.

ICANN has so far resisted calls from the likes of the Coalition for Online Accountability to create clearly delineated categories of gTLD, instead favoring the one-size-fits-all approach.

But one type of gTLD where the Applicant Guidebook has started to introduce exceptions to the rules is the so-called “.brand”.

In its latest draft, for example, the Guidebook’s Code of Conduct for vertically integrated registries/registrars does not apply to single-registrant TLDs such as .brands.

The Guidebook also makes it mostly clear that ICANN does not intend to re-assign .brands to different registry operators in the event that the brand decides to discontinue the TLD.

But those who are working with potential .brand applicants still have concerns.

Co-existence

Arguably biggest outstanding problem to emerge from the latest set of comments filed with ICANN is the notion of “co-existence”, raised by the likes of Valideus, ECTA and the Business Constituency.

The Guidebook currently calls for TLDs that are potentially confusing in meaning or appearance to be lumped into the same “contention sets” from which only one winner will emerge.

The worry is that this will capture companies with similar sounding brands. ECTA called for a mechanism to exclude .brands from these requirements:

The Draft Applicant Guidebook 6 does not take into account either co‐existence agreements or natural co‐existence. Currently a successful application from NBC in round one would preclude ABC or BBC or NBA in future years. Equally, should both EMI, the music company and ENI, the energy company apply, they would be placed in a Contention Set and could in theory face each other in an auction. In the real world these companies co‐exist.

It’s an interesting point, and not one that’s received a great deal of airplay in recent discussions.

There’s also the problem that companies with two-letter brands, such as HP or BP, are essentially banned from getting their .brand, because there’s a three-letter minimum on new TLDs.

Geographic name protections

The ICANN Governmental Advisory Committee has pushed hard for the protection of geographical terms at the second level in new gTLDs, and has won significant concessions.

One of the results of this is that if Canon, say, has .canon approved, it will be unable to immediately use usa.canon or japan.canon domains names – one of the most logical uses of a .brand.

ICANN plans to enable registries to loosen up these restrictions, but the Guidebook does not currently spell out how this will happen, which leaves a significant question mark over the value of a .brand.

ECTA wrote in its comments to ICANN:

This prohibition severely limits brand owners unnecessarily. On the contrary a .brand domain should provide clients with an intuitive replacement for ccTLDs. It would seem to be more logical if Internet users could replace www.mycompany.de with www.de.mycompany rather than having to type www.mycompany/de.

Registrar discrimination

The BC has called for the Guidebook to be rephrased to made it clear that .brand TLDs should not have to offer their domains through a multitude of registrars on “non-discriminatory” terms.

The BC wants this language adding to the rules: “Single-Registrant TLDs may establish discriminatory criteria for registrars qualified to register names in the TLD.”

Given .brands will have essentially one customer, it would be a pretty crazy situation if more than one registrar was approved to sell them. It may be a hypothetical risk, but this is a strange industry.

UDRP

All new gTLD registries will have to abide by the Uniform Dispute Resolution Process. The problem is that successful UDRP cases generally result in a domain name being transferred to the complainant.

This could result in a situation where a third-party trademark holder manages to win control a domain name in a competitor’s .brand TLD, which would be intolerable for any brand owner.

The BC suggests that domains won in this way should be allowed to be set to “reserved and non-resolving” instead of changing hands.

Three strikes UDRP rule worries Demand Media

Kevin Murphy, May 16, 2011, Domain Policy

Demand Media and the Internet Commerce Association have called for ICANN to drop the “three strikes and you’re out” ban on applying for new top-level domains.

In the current version of ICANN’s Applicant Guidebook, if you’ve lost three UDRP cases in the last four years you’re considered a cybersquatter and effectively barred from applying for a new TLD.

It’s not entirely clear, but it is quite possible that this provision may capture Demand Media and Go Daddy, which, via subsidiary companies, have lost several UDRP complaints.

In comments filed with ICANN yesterday, Demand senior vice president Jeff Eckhaus said that a simple “three strikes” benchmark does not prove a pattern of cybersquatting:

losing a few contested UDRP cases in what amounts to a tiny percentage of their total domain name portfolio certainly doesn’t seem to constitute a “pattern” as most people would define the term

by all reasonable standards, it is difficult to conclude that an entity or an individual has engaged in a history/pattern of cybersquatting when they own hundreds or thousands of domain names and have lost a few UDRP or similar proceedings.

The ICA, which represents high-volume registrants, also has a problem with the rule. Principal Phil Corwin wrote ICANN:

We continue to believe that the “three strikes” criteria is too inflexible and that applicant evaluation criteria should take into account the total size of an applicant’s domain portfolio as well as the percentage of adverse UDRP decisions rendered against them in comparison to all UDRP proceedings they have been involved with.

Demand also argues that three strikes is “extremely broad standard that we believe will unintentionally disqualify otherwise qualified applicants.”

That strikes me as quite a weak argument, which could be equally applied to any of the background checks in the Guidebook. A murder conviction will also “disqualify otherwise qualified applicants”.

I’m not sure it’s “unintentional” in either case. If you work from the assumption that ICANN expects Demand and other speculators to successfully apply for new TLDs, it is. If you assume it’s designed to make their lives more difficult, it isn’t.

But Corwin noted in his comments that ICANN can waive the ban in “exceptional circumstances”, and said he suspects this could be used to allow large registrars to pass the background checks.

In any event, as Andrew Allemann has pointed out at Domain Name Wire, the way the Guidebook is phrased there may well be a loophole that would allow Demand and others to slip through.

Go Daddy, which DNW also reports could be affected by the rule, does not appear to have filed any comments on the latest Applicant Guidebook yet.