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Yes, there is cybersquatting in new gTLDs

Kevin Murphy, February 6, 2014, Domain Policy

With new TLDs, comes cybersquatting. It’s inevitable. And it’s also true of the new gTLDs that hit general availability this week.

The question of what is or is not cybersquatting is best left to a judge or UDRP panel, of course, but I’ve already come across plenty of newly registered domains that I do not believe would pass the UDRP test.

Sifting through select Whois records of domains that were registered in Donuts’ first seven gTLDs over the last few days, and without leaving the A’s, I’ve found the likes of: adidas.clothing, americanapparel.clothing, akamai.guru, americanexpress.guru. appleservice.guru and accenture.ventures.

Delving a little deeper into .clothing, I see the likes of kanyewest.clothing, ralphlauren.clothing, kardashiankollection.clothing, lauraashley.clothin, michaeljordan.clothing and more.

One Los Angeles clothing store appears to have registered several .clothing domains matching brands it does not own, possibly unaware that such behavior is frowned upon.

While there could be legitimate uses of the names I’ve highlighted here, possibly, they all appear to me to be registered to people unaffiliated with the referenced brands or celebrities.

I found more that are registered behind Whois privacy services, where it’s not possible to tell whether the domain belongs to the brand or not. Domains such as ibm.guru and ibm.ventures use Whois privacy, yet resolve to the IBM web site.

Cases of obvious UDRP losses seem to be few and far between, however. The vast majority of domains registered in these new gTLDs this week seem to be straightforward generic terms.

While I’m using the UDRP sniff test to highlight domains I feel may be cybersquatting, there’s a new process in town when it comes to disputes: the faster, cheaper Uniform Rapid Suspension policy.

URS has a higher burden of proof — “clear and convincing evidence” of bad faith registration and use — and it’s not yet clear how panelists will handle these cases.

There’s only been one URS case to date, that of facebok.pw, in which the domain was suspended following a complaint by Facebook.

In that case, Facebook was able to show bad faith by presenting the panelist with a list of other typo domains the respondent had registered.

GAC gives ICANN a way out on IGO acronyms

Kevin Murphy, November 22, 2013, Domain Policy

The ICANN Governmental Advisory Committee has reiterated its call for the protection of intergovernmental organization acronyms in the new gTLD program, but seems to have given ICANN a way to avoid a nasty confrontation.

In its official Communique from the just-concluded meeting in Buenos Aires, Argentina, the GAC provided the following advice concerning IGOs:

The GAC, together with IGOs, remains committed to continuing the dialogue with NGPC [ICANN’s New gTLD Program Committee] on finalising the modalities for permanent protection of IGO acronyms at the second level, by putting in place a mechanism which would:

1. provide for a permanent system of notifications to both the potential registrant and the relevant IGO as to a possible conflict if a potential registrant seeks to register a domain name matching the acronym of that IGO;

2. allow the IGO a timely opportunity to effectively prevent potential misuse and confusion;

3. allow for a final and binding determination by an independent third party in order to resolve any disagreement between an IGO and a potential registrant; and

4. be at no cost or of a nominal cost only to the IGO.

This seems to be a departure from the GAC’s its Durban Communique, in which it had demanded “preventative” measures be put in place to stop third parties registering IGO acronyms.

As we reported earlier this week, the GNSO Council unanimously approved a resolution telling ICANN to remove IGO acronyms from existing block-lists, something the GAC had been demanding.

Now, it seems that ICANN has been given a relatively simple and less confrontational way of accepting the GAC’s watered-down advice.

The Trademark Claims alerts service and Uniform Rapid Suspension dispute resolution process combined would, by my reading, tick all four of the GAC’s boxes.

IGO acronyms do not currently qualify for either, because they’re not trademarks, but if ICANN can figure out a way to allow these strings into the Trademark Clearinghouse, it can probably give the GAC what it wants.

In my view, such a move wouldn’t trample on anyone else’s rights, it would not represent the kind of overkill the GAC originally wanted, nor would it be in conflict with the GNSO’s consensus resolution (which seems to envisage a future in which these acronyms get TMCH protection).

ICANN may have avoided the sticky situation I pondered earlier this week.

First URS case decided with Facebook the victor

Kevin Murphy, October 25, 2013, Domain Policy

Facebook has become the first company to win a Uniform Rapid Suspension complaint.

The case, which dealt with the domain facebok.pw, took 37 days from start to finish.

This is what the suspended site now looks like:

The URS was designed for new gTLDs, but .PW Registry decided to adopt it too, to help it deal with some of the abuse it started to experience when it launched earlier this year.

Facebook was the first to file a complaint, on August 21. According to the decision, the case commenced about three weeks later, September 11, and was decided September 26.

I don’t know when the decision was published, but World Trademark Review appears to have been the first to spot it.

It was pretty much a slam-dunk, uncontroversial decision, as you might imagine given the domain. The standard is “clear and convincing evidence”, a heavier burden than UDRP.

The registrant did not respond to the complaint, but Facebook provided evidence showing he was a serial cybersquatter.

The decision was made by the National Arbitration Forum’s Darryl Wilson, who has over 100 UDRP cases under his belt. Here’s the meat of it:

IDENTICAL OR CONFUSINGLY SIMILAR

The only difference between the Domain Name, facebok.pw, and the Complainant’s FACEBOOK mark is the absence of one letter (“o”) in the Domain Name. In addition, it is well accepted that the top level domain is irrelevant in assessing identity or confusing similarity, thus the “.pw” is of no consequence here. The Examiner finds that the Domain Name is confusingly similar to Complainant’s FACEBOOK mark.

NO RIGHTS OR LEGITIMATE INTERESTS

To the best of the Complainant’s knowledge, the Respondent does not have any rights in the name FACEBOOK or “facebok” nor is the Respondent commonly known by either name. Complainant has not authorized Respondent’s use of its mark and has no affiliation with Respondent. The Domain Name points to a web page listing links for popular search topics which Respondent appears to use to generate click through fees for Respondent’s personal financial gain. Such use does not constitute a bona fide offering of goods or services and wrongfully misappropriates Complainant’s mark’s goodwill. The Examiner finds that the Respondent has established no rights or legitimate interests in the Domain Name.

BAD FAITH REGISTRATION AND USE
The Domain Name was registered and is being used in bad faith.

The Domain Name was registered on or about March 26, 2013, nine years after the Complainant’s FACEBOOK marks were first used and began gaining global notoriety.

The Examiner finds that the Respondent has engaged in a pattern of illegitimate domain name registrations (See Complainant’s exhibit URS Site Screenshot) whereby Respondent has either altered letters in, or added new letters to, well-known trademarks. Such behavior supports a conclusion of Respondent’s bad faith registration and use. Furthermore, the Complainant submits that the Respondent is using the Domain Name in order to attract for commercial gain Internet users to its parking website by creating a likelihood of confusion as to the source, sponsorship or affiliation of the website. The Examiner finds such behavior to further evidence Respondent’s bad faith registration and use.

The only remedy for URS is suspension of the domain. According to Whois, it still belongs to the respondent.

Read the decision in full here.

URS is live today as .pw voluntarily adopts it

Kevin Murphy, July 29, 2013, Domain Policy

Directi has become the first TLD registry to start complying with the Uniform Rapid Suspension process for cybersquatting complaints.

From today, all .pw domain name registrations will be subject to the policy, which enables trademark owners to have domains suspended more quickly and cheaply than with UDRP.

URS was designed, and is obligatory, for all new gTLDs, but Directi decided to adopt the policy along with UDRP voluntarily, to help mitigate abuse in the ccTLD namespace.

URS requirements for gTLD registries have not yet been finalized, but this is moot as they don’t apply to .pw anyway.

To date, only two UDRP complaints have been filed over .pw domains.

The National Arbitration Forum will be handling URS complaints. Instructions for filing can be found here.

ICANN backtracks on URS contracts

Kevin Murphy, July 22, 2013, Domain Policy

ICANN seems to have changed its mind about requiring Uniform Rapid Suspension providers to sign enforceable contracts, angering the Internet Commerce Association.

As we reported in May, the ICA claimed a victory when ICANN said in a written answer to its persistent inquiries that URS providers would be bound by contract.

An ICANN Q&A, referring to a question the ICA’s Phil Corwin asked at the ICANN meeting in Beijing, said:

[Q] As regards Uniform Rapid Suspension (URS) providers, will there be a contract developed that goes beyond the non-enforceable memorandum of understanding? Will there be other URS providers?

[A] Yes, a contract is being developed and additional URS providers will be added.

It’s difficult to interpret that as anything other than “Yes, a contract is being developed.” The fact that the question draws the distinction between a contract and an MoU seems to remove any ambiguity.

But at the ICANN 47 meeting in Durban last week, ICANN appeared to backtrack on this position.

During a URS demo session, gTLD registry services director Krista Papac said that URS providers will only have to agree to an MoU.

“This breach of a written commitment is unacceptable,” Corwin later said at the Public Forum on Thursday.

In response, ICANN deputy general counsel Amy Stathos said:

An MoU is a contract. I recognize that you don’t necessarily recognize that as the full contract that you were contemplating or that had been contemplated. But that is a contract. And it calls and requires the URS providers to comply with all the rules and procedures that are in the Guidebook.

On Friday, ICANN then published a (hastily written?) document that sought to spell out its position on contracts for URS and UDRP providers. It says:

ICANN has carefully considered whether the introduction of contracts is feasible or useful in the scope of UDRP proceedings, and has determined that contracts would be a cumbersome tool to assert to reach the same outcome that exists today.

It goes on to address some of the concerns that the ICA and others have put forward in the past. The organization, which represents big-volume domainers, is worried that some UDRP providers find more often in favor of complainants in order to secure their business. Enforceable contracts, it says, would help prevent that.

ICANN said in its new position statement (pdf) that it has never seen behavior from UDRP providers that would require it to take action, but added:

Of course, there is always the future possibility that an issue of non-compliance will arise that will require corrective action. In recognition of that potential, ICANN commits that substantiated reports of UDRP provider non‐compliance with the UDRP or the Rules will be investigated.

Contracts, it said, would not stop forum shopping.