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Asian outfit named second URS provider

Kevin Murphy, April 22, 2013, Domain Policy

The Asian Domain Name Dispute Resolution Centre has been approved by ICANN as a provider of Uniform Rapid Suspension services.

The two organizations signed a memorandum of understanding last week, ICANN said.

ADNDRC is the second URS resolution provider to be named, after the US-based National Arbitration Forum. It’s got offices in Beijing, HongKong, Seoul and Kuala Lumpur and tends to hand local cases.

While it’s been a UDRP provider since 2001, it’s only handled about 1,000 cases in that time, according to DI’s records. That’s about 16 times fewer than NAF and 17 times fewer than WIPO.

ICANN said that more providers will be appointed in future.

URS is a faster, cheaper version of UDRP that allows obviously trademark-infringing domains to be suspended — not transferred — for about $500 a pop. It will only apply to new gTLDs at first.

Twitter files UDRP over twitter.org

Kevin Murphy, January 14, 2013, Domain Policy

Twitter has filed a cybersquatting complaint over the domain name twitter.org, which is currently being used for one of those bogus survey scam sites.

The domain has been registered since October 2005 — six months before Twitter was created — but appears to have changed hands a number of times since then.

It’s been under Whois privacy since mid-2011, but the last available unprotected record shows the domain registered to what appears to be Panama-based law firm.

Hiding ownership via offshore shell companies is a common tactic for people cybersquatting high-profile brands.

The UDRP complaint, which looks like a slam-dunk to me, has been filed with WIPO.

ICANN publishes RFI for URS provider

Kevin Murphy, September 25, 2012, Domain Policy

ICANN has issued an open call for dispute resolution providers interested in running its Uniform Rapid Suspension system.

In a request for information published last night, ICANN says it expects to pick a provider or providers by February 28, 2013.

If you’re not already running a dispute resolution service at scale there seems to be little point in applying. The RFI states that respondents must, at a minimum:

Have a track record in competently handling clerical aspects of Alternative Dispute Resolution or UDRP proceedings

Have a team of globally diverse and highly qualified neutrals, with experience handling UDRP or similar complaints, to serve as panelists.

With that in mind, will the RFI help sort out the problems with the URS?

What ICANN needs right now is a provider happy to administer proceedings for $300 to $500 per case.

ICANN has already asked WIPO and the National Arbitration Forum for their pricing expectations and neither apparently thinks they can do it much cheaper than UDRP. Hence the RFI.

Could the Czech Arbitration Court be in with a shot?

CAC already has UDRP experience and a stable of trademark experts on hand, and some say its level of automation is superior to — and presumably more cost-efficient than — both WIPO and NAF.

Is .city confusingly similar to .citi? UDRP says yes

Kevin Murphy, August 14, 2012, Domain Registries

In one of the more surprising twists to hit the new gTLD program, Citigroup has claimed that its proposed dot-brand gTLD, .citi, is not “confusingly similar” to the proposed generic gTLD .city.

The company appears to be trying to avoid getting into a contention set with the three commercial applicants for .city, which would likely put it into an expensive four-way auction.

It’s a surprising move because you’d expect a financial services company to want to at least try to mitigate the risk of future .city/.citi typo-based phishing attacks as much as possible.

Indeed, its .citi application states that the mission of the gTLD “is to further assist Applicant in accomplishing its mission of providing secure online banking and financial services”.

Nevertheless, the company is now arguing, in a few comments filed with ICANN today, this:

CITI and CITY are not so similar in an Internet context as to create a probability of user confusion if they are both delegated into the root zone. Thus, the .CITI application should not be placed into a contention set with the .CITY application.

The new Citigroup position is especially bewildering given that it has argued the exact opposite — and won — in at least two UDRP cases.

In the 2009 UDRP decision Citigroup Inc. v. Domain Deluxe c/o Domain Administrator, Citigroup contended that:

Respondent’s citywarrants.com domain name is confusingly similar to Complainant’s CITIWARRANTS mark.

The panelist in the case concluded that the Y variant of the name was merely a “mistyped variation” of and “substantively identical” to the Citigroup trademark.

A similar finding appears to have been handed down in Citigroup v Yongki, over the arguably generic citycard.com, but the decision is written in Korean so I can’t be certain.

The company’s current view, which I’m going to go out on a limb on and characterize as expedient, is that ICANN has delegated multiple ccTLDs that have only one character of variation in the past (it hasn’t — the ccTLDs it cites all pre-date ICANN) without causing confusion.

It also states in its comments that the meaning and proposed usage of the two strings is “very different” (which one commenter has already suggested is historically dubious).

So what’s going on here?

Is Citigroup really willing to risk potential phishing problems down the line to save a few measly bucks today? On the face of it, it looks that way.

If it is put in a contention set with the three .city applicants, it could wind up at auction against Donuts ($100m funding), TLD Registry Ltd (apparently backed by the Vision+ fund) and Directi.

Will Citigroup’s gambit pay off?

That’s down to a) the String Similarity Panel and b) whether any of the .city applicants tries to force the company into the contention set via a String Confusion Objection, which seems unlikely.

(Former) Donuts director hit with cybersquatting claim over Disney and Olympic domains

Kevin Murphy, August 7, 2012, Domain Policy

Donuts, the massive new gTLD applicant, has been hit by another set of cybersquatting claims, this time aimed at one of the company’s original directors.

Graham Stirling, who is listed as a Donuts Inc director in the company’s only Securities and Exchange Commission filing, seems to own several domain names containing Disney and Olympics trademarks.

(UPDATE: Donuts has confirmed that Stirling is no longer with the company, and hasn’t been since November 2011. Read the company’s full statement at the bottom of this post.)

The information emerged in a comment filed with ICANN on several Donuts applications by somebody called James Oliver Warner.

These are some of the domains Gibraltar-based Stirling allegedly owns:

2016juegosolimpicos.com
2016olimpicos.com
2020juegosolimpicos.com
2020olimpicos.com
2024olimpicos.com
andaluciadisney.com
costadelsoldisney.com
disneyandalucia.com
disneylandmalaga.com
disneymalaga.com
disneyworldmalaga.com
juegosolimpicos2008.com
juegosolimpicos2016.com
juegosolimpicos2020.com
juegosolimpicos2024.com
juegosolimpicoslondres.com
londresjuegosolimpicos.com
malagadisney.com
malagadisneyland.com
malagadisneyworld.com
olimpicos2016.com
olimpicos2020.com
olimpicos2024.com
soldisney.com
spaindisneyland.com
spaindisneyworld.com
teleubbies.com

You don’t need to be a trademark lawyer to know that these domains would not pass a UDRP challenge.

The domains all seem to have been registered to a Graham Stirling of Gibraltar for some years. Gibraltar’s a pretty small place, suggesting that it’s very probably the same guy.

It’s the second serious cybersquatting claim to hit Donuts in the last couple of weeks.

As we reported last week, a lawyer who apparently doesn’t want his client’s identity to be known has written to ICANN’s Governmental Advisory Committee to warn that Demand Media, Donuts’ back-end partner and its founders’ former employer, has a history of adverse UDRP findings.

That letter fingered Stirling as an employee of Gibraltar-based investment company Veddis Ventures, whose other executives allegedly have ties to online gambling scandals in the US.

Veddis Ventures recently removed Stirling’s full name from its web site. He’s now just listed as “Graham S”, adding to the intrigue.

The latest set of cybersquatting allegations are directed to ICANN’s background screening panel, which is tasked with weeding likely ne’er-do-wells out of the new gTLD program.

The panel looks at not only the corporate history of the applicant, but also at its directors and officers.

Stirling is not named on any of Donuts applications. For that matter, Donuts itself is not named as an official applicant on any of its 307 applications either.

Each of its applications has been filed by a different shell company, most of which are owned by another company, Dozen Donuts LLC, which we assume (but do not know) is in turn owned by Donuts.

The only individual named in the background check part of the applications (at least the portions published by ICANN) is Donuts CEO Paul Stahura.

Stirling is not currently listed as a director on Donuts’ web site.

If Stirling is still involved with Donuts, it might not impact the results of Donuts background screening, if the panel only looks at UDRP or court cases for evidence of cybersquatting.

Stirling does not appear to have ever been named in, never mind lost, a UDRP complaint.

That said, I don’t think ICANN’s background screening process will be over for a while yet…

August 7 Update:

Donuts has provided the following statement:

Graham Stirling is not a member of the Donuts Board of Directors and has not been since November 2011. Our list of board members as documented on our web site at www.donuts.co is current.

It’s disappointing to see Donuts’ contributions to new gTLD expansion attacked by those (including some unwilling to disclose their identities) who attempt to portray the company or those associated with it as bad actors. The company is and will continue to be committed to the legitimate interests of rights holders. As described in our applications, Donuts will implement rights protection mechanisms in its new gTLDs that substantially exceed those mandated by ICANN.

We have engaged the intellectual property community, law enforcement and others in the community about IP protection and believe our intentions and actions are clear and well understood. Infringement of legitimate rights is not tolerated by Donuts, in any capacity. Our collaboration with the community on IP protections will be an ongoing priority as the new gTLD program continues.