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UDRP reform put on hold for four years

Kevin Murphy, December 20, 2011, Domain Policy

ICANN’s cybersquatting rules, including the Uniform Dispute Resolution Policy, will be reviewed and possibly reformed, but probably not until 2016 at the earliest.

The Generic Names Supporting Organization Council voted last Thursday to put the start of UDRP reform on hold until 18 months after the first new top-level domains go live.

The review will also take into account other cybersquatting policies including Uniform Rapid Suspension, which will be binding on all new gTLD registries but has yet to be be tested.

This is the relevant part of the resolution:

the GNSO Council requests a new Issue Report on the current state of all rights protection mechanisms implemented for both existing and new gTLDs, including but not limited to, the UDRP and URS, should be delivered to the GNSO Council by no later than eighteen (18) months following the delegation of the first new gTLD.

An Issue Report is compiled by ICANN staff and often leads to a Policy Development Process that creates policies binding on registries, registrars and ultimately registrants.

Because the first new gTLDs are not expected to be delegated until the first quarter of 2013 at the earliest, the Issue Report would not be delivered until half way through 2014.

After ICANN public comment and analysis, the GNSO Council would be unlikely to kick off a PDP until the first half of 2015. The PDP itself could take months or years to complete.

In short, if UDRP is going to be reformed, we’re unlikely to see the results until 2016.

The Council resolution, which was in line with Governmental Advisory Committee advice, was proposed by the registries, following many months of ICANN public outreach and discussion.

Non-commercial users in the GNSO were most strongly in favor of an accelerated timetable, but a request to reduce the 18-month breather to a year failed to find support.

The Intellectual Property Constituency had proposed an amendment that would have kicked off the process after 100 UDRP and 100 URS cases had been heard in new gTLDs, rather than after a specified time, but the motion was defeated.

Zip.ca lets zip.tv expire then files UDRP to get it back

Kevin Murphy, November 30, 2011, Domain Registrars

The Canadian movie rental site Zip.ca, a sister company of Pool.com, has filed a cybersquatting complaint with WIPO over the domain name zip.tv.

A UDRP filed over a dictionary word would often scream reverse domain name hijacking, but it appears that in this case Zip.ca owned the matching .tv but accidentally let it expire.

According to historical Whois records, Zip.ca owned zip.tv until July 6 this year, when the registration expired and it went into its registrar’s “Reactivation Pending” status.

It was then acquired by a Chinese registrant, Mai Lifang, in October. The domain is currently parked.

It’s embarrassing for Zip.ca, given that its parent, Momentous, is primarily a domain name company, owning DomainsAtCost.com, Pool.com, Internic.ca, Rebel.com and NameScout.

Zip.tv was not just a defensive registration, either. It was previously promoted as a community-focused YouTube-style companion site for Zip.ca back in 2007.

The company also owns a trademark on the domain.

Donald Trump files UDRP on wine domains

Kevin Murphy, November 9, 2011, Domain Policy

Donald Trump, who recently got into the wine business, has filed cybersquatting complaints against the owners of trumpwine.com and trumpwines.com.

Both domains were first registered prior to Trump’s purchase of a Virginia vineyard in April this year, which appears to be the first time he was connected to wine.

The registrant of trumpwine.com has had it since 2008, while the owner of trumpwines.com evidently picked it up in February. It was previously owned by DirectNIC, after the original 2007 registration expired.

Both registrants appear to have some connection to the alcohol industry. That said, neither of the domains currently points to an active web site.

Over 7,500 .uk cybersquatting cases heard

Kevin Murphy, November 7, 2011, Domain Registries

Nominet is celebrating the 10-year anniversary of its Dispute Resolution Service this week, saying that it has settled over 7,500 cybersquatting cases.

Based on a £15,000 estimated cost of legal action, the .uk registry reckons DRS has saved companies about £110 million ($176 million) over the last decade.

DRS has similarities but differences to UDRP. Notably, DRS has a formal mediation phase and an appeals process for registrants who believe their domains were wrongly taken from them.

The .uk zone currently has fewer than 10 million registrations, compared to the 135 million gTLD domains to which the UDRP applies.

WIPO and the National Arbitration Forum have settled about 35,000 UDRP complaints over the last decade. With that in mind, cybersquatting enforcement in .uk appears to have been relatively heavy.

Google loses Goggle.com cybersquatting complaint

Kevin Murphy, October 11, 2011, Domain Policy

File this one under: “Good for UDRP, terrible for internet users.”

Google has managed to lose a cybersquatting complaint over the domain name goggle.com, after a National Arbitration Forum panel declined to consider the case.

Goggle.com, like so many other typos of the world’s most-popular sites, is currently being used to get people to sign up to expensive text messaging services via bogus surveys and competitions.

As Domain Name Wire reported when the complaint was filed, up until recently the site was using a confusingly similar style to Google’s familiar look and feel.

It’s got bad faith written all over it.

But “goggle” it is also a genuine English word.

And it turns out that the previous owner of goggle.com, Knowledge Associates, had entered into a “co-existence relationship” with Google that enabled it to operate the domain without fear of litigation.

The current owner was able to present NAF with documentation showing that this right may have been transferred when he bought the domain.

So the three-person NAF panel decided not to consider the complaint, concluding: “this case is foremost a business and/or contractual dispute between two companies that falls outside the scope of the Policy.”

The panel wrote:

Does the Co-existence Agreement apply to the disputed domain names? Does Respondent stand in the shoes of the original registrant? Does the consent of Complainant extend in time to the current actions of Respondent and in person to the Respondent? Has the Respondent complied with the obligations of the original registrant? Does the “no public statements” provision in the Co-existence Agreement prohibit its disclosure or use as a defense by Respondent?

These are factual and legal issues that go far beyond the scope of the Policy.

These are factual and legal issues that must be resolved before any consideration of confusing similarity, legitimate rights and interest, and bad faith under the Policy can be made.

This means that the current registrant gets to keep the domain, and to keep making cash from what in the vast majority of cases are likely to be clumsy typists.

Google now of course can either decide to pay off the registrant, or take him to court.

The registrant, David Csumrik, was represented by Zak Muscovitch.

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.