IGOs plead for special new gTLD protections

Twenty-eight intergovernmental organizations, including the UN, ITU and WIPO, have asked ICANN for special protection for their acronyms in the new top-level domains program.

A letter sent to ICANN earlier this week and obtained by DI, reads:

we formally request ICANN to make provision for a targeted exclusion of third party registrations of the names and acronyms of IGOs both at the top and second level, at least during ICANN’s first application round and until further appropriate policy could be developed.

It goes on to claim that fighting abusive domain registrations and enforcing rights diverts funds from causes such as famine relief, scientific research and children’s rights.

For the sake of brevity, this is the list of the letter’s signatories in acronym form only: AfDB, EBRD, ESO, CERN, ESA, IADB, IAEA, IFAD, ILO, IMO, IMF, IOM, ITU, NIB, NATO, OECD, OPCW, UN, UNESCO, UNIDO, UPU, WB, WHO, WIPO, WMO, UNWTO, and WTO.

The letter justifies its request by citing the rights given to IGO names under the Paris Convention for the Protection of Industrial Property.

It’s a pretty flimsy argument. The Paris convention does not give IGOs exclusive rights to strings. It may protect the World Bank abbreviation WB, for example, but not to the extent that Warner Brothers can’t also use it to market movies.

The letter also cites ICANN’s Governmental Advisory Committee, which called for IGOs to be protected in its March 2007 GAC Principles regarding New gTLDs advice.

The Principles, however, talk about IGOs in the same breath as regular trademark owners, which is exactly how the new gTLD Applicant Guidebook treats them today.

There is some ICANN precedent for giving in to this kind of special pleading, however.

The latest Guidebook makes several dozen trademarks relating to the Red Cross, Red Crescent and Olympic movements “ineligible for delegation” as gTLDs, but offers them no second-level protection.

It was noted at the time the decision was made – at the behest of the GAC – that giving the Olympics special treatment would create a slippery slope to a full-blown Globally Protected Marks List, a concept ICANN has already rejected.

The UN et al only really have a shot at getting what they want if they can get the GAC on side, and several influential GAC members have already stated that the Olympic/Red Cross case was unique.

I think the response from ICANN will be a letter from president Rod Beckstrom politely declining the request and inviting its signatories to participate in the ICANN community.

Over 7,500 .uk cybersquatting cases heard

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.

Will URS really be as cheap as ICANN says?

I’m having a hard time believing that trademark holders will be able to enforce their rights in new top-level domains for just $300.

The Uniform Rapid Suspension policy (pdf) is one of the new systems ICANN is putting in place to deter cybersquatters from abusing trademarks in new gTLDs.

It’s very similar to the existing UDRP, but it’s quicker and it only deals with the suspension – not transfer – of infringing domain names.

No URS arbitration provider has yet been appointed, but ICANN’s Applicant Guidebook, which spells out the policy, currently estimates a price of $300 per single-domain filing.

At least twice during the newdomains.org conference in Munich this week I heard ICANN representatives quote a price between $300 and $500.

I’m wondering how realistic this is.

Typically, domain arbitration fees are split between the provider, which receives a third, and the panelist, who receives the remaining two thirds.

With a $300 fee, that’s $100 to the provider and $200 to the sole panelist – who must be an experienced trademark lawyer or similar – compared to a $500/$1,000 split with the UDRP.

My question is: how many trademark lawyers will get out of bed for $200?

The URS gives panelists between three and five days to come up with a decision, but I’m guessing that you’d be lucky, for $200, to buy three to five hours of a panelist’s time.

Even I charge more than $200 for half a day’s work.

The Rapid Evaluation Service recently introduced by ICM Registry, which serves essentially the same purpose as URS but for the .xxx gTLD, costs $1,300 in National Arbitration Forum fees.

Like URS, the RES is designed for a speedy turnaround – just three days for a preliminary evaluation – of clear-cut cybersquatting cases.

Like URS, complaints submitted using RES have a tight word-count limit, to minimize the amount of work panelists have to do.

With that in mind, it seems to me that a $300 fee for URS may be unrealistic. Even the $500 upper-end ICANN estimate may be optimistic.

It will be interesting to see if ICANN’s negotiating clout with likely URS providers is better than ICM’s and, more importantly, to see whether $200 is enough to buy consistent, reliable decisions from panelists.

Lego overtakes Microsoft in cybersquatting cases

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.

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

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.