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DotMusic loses LRO, and four other cases rejected

Kevin Murphy, July 31, 2013, Domain Policy

Constantine Roussos has lost his first Legal Rights Objection over the flagship .music gTLD.

The case, DotMusic v Charleston Road Registry (pdf) was actually thrown out on a technicality — DotMusic didn’t present any evidence to show that it was the owner of the trademarks in question.

But the WIPO panelist handling the case made it pretty clear that DotMusic wouldn’t have won on the merits anyway.

If any applicant can be said to have built a brand around a proposed generic-term gTLD, it’s Roussos. DotMusic has been promoting .music on social media an in the music industry for years.

The company also owns the string “music” in a number of second-tier TLDs such as .co, .biz and .fm.

It’s not a bogus, last-minute attempt to game the system, like the .home cases — filed using Roussos-acquired trademarks — that have been thrown out repeatedly over the last couple of weeks.

The panelist addressed this directly:

On the one hand, the Panel recognizes that there has been a real investment by the Objector and associated parties in the trademark registrations, domain name registrations, sponsorship and branding to create consumer recognition and goodwill entitled to protection. On the other hand, there is a circularity in the Objector’s position in that the rights upon which the Objector relies to defeat the application are to a certain extent conditional on the defeat of the Applicant and the Objector’s success in obtaining the <.music> gTLD string.

In other words, Catch-22.

The panelist decided that .music is generic, that Google’s proposed use of it is generic, and that obtaining a trademark on a gTLD should not be a legit way to exclude rival applicants for that gTLD.

One objective of the Objector has been to obtain precisely the type of competitive advantage (in this case in the application process for the <.music> gTLD string) that the doctrine of generic names is designed to prevent. However, as the Applicant proposes to use the <.music> gTLD string in a generic sense it is immune from this challenge.

On that basis, the LRO would have failed, had DotMusic managed to demonstrate standing to object in the first place.

Unfortunately, DotMusic didn’t present any evidence that it actually owned the trademarks in question, which were applied for by Roussos and assigned to his company CGR E-Commerce.

The objection failed on that basis.

Defender Security, which obtained trademarks on “.home” from Roussos, ran into the same problems proving ownership of the trademarks in its LROs on the .home gTLD.

Four other LROs were decided this week:

.mail (United States Postal Service v. GMO Registry)

The case (pdf) turned on whether USPS owns a trademark that exactly matches the applied-for string (it doesn’t) and whether the word “mail” should be considered generic (it is) rather than a source identifier (it isn’t).

It’s pretty much the same logic applied in the two previous .mail LROs.

.food (Scripps Networks Interactive v. Dot Food, LLC)

This is the first of two competitive LROs filed by Scripps — which runs TV stations including the Food Network — against its .food applicant rivals to be decided.

Scripps has a bunch of trademarks containing the word “food”, including a November 2011 registration in the US for “Food” alone, covering entertainment services.

The WIPO panelist found (pdf) that the trademark was legit, but decided that it was not enough to prevent Dot Food using the matching string as a gTLD.

The fact that rights protection mechanisms exist in the new gTLD program was key:

to the extent that registration and use of a particular second-level domain within the <.food> gTLD actually creates a likelihood of confusion, then Objector will have remedies available to it, including the established Uniform Domain Name Dispute Resolution Policy, the forthcoming Uniform Rapid Suspension System and relevant laws. The fact that such disputes at the second level may arise is inherent in ICANN’s new gTLD program and is not in the circumstances of this case sufficient to uphold the present legal rights objection.

Objector’s rights in the FOOD mark do not confer upon it the exclusive right to use of the word “food” in all circumstances, particularly where, as here, Applicant intends to use the <.food> gTLD in connection with the food industry. Such intended use of the word would appear to be only for its dictionary meaning and not because of Objector’s trademark rights.

.vip (i-Registry v. Charleston Road Registry)

It’s the second objection by .vip applicant to get thrown out. In this case the respondent was Google.

Like the first time, the WIPO panelist found that the i-Registry trademark had been obtained for the purposes of the new gTLD program and that Google’s use of it in its generic sense would not infringe its rights.

.cam (AC Webconnecting Holding v. Dot Agency)

The second and final LRO decision (pdf) in the .cam contention set.

AC Webconnecting, an operator of webcam-based porn sites, lost again on the grounds that it applied for its trademark just a month before ICANN opened up the new gTLD application window in January last year.

The company didn’t have time to, and produced no evidence to suggest that, it had used the trademark and built up goodwill around “.cam” in the normal course of business.

In other words, front-running doesn’t pay.

Google beats USPS in LRO, Defender loses another

The United States Postal Service and Defender Security have both lost Legal Rights Objections over the new gTLDs .mail and .home, respectively.

In both cases it’s not the first LRO the objector has lost. USPS, losing here against Google, lost a similar objection against Amazon, while Defender has previously racked up six losses over .home.

The Defender case (pdf) this time was against .Home Registry Inc. The objection was rejected by the World Intellectual Property Organization panelist on pretty much the same grounds as the others — Defender acquired its trademark rights purely in order to be able to file LROs against its .home rivals.

In the USPS v Amazon case (pdf) the WIPO panelist also decided along the same lines as the previous case.

The decision turned on whether USPS, which owns trademarks on “U.S. Mail” but not “mail”, could be said to have rights in “mail” by virtue of the fact that it is the monopoly postal service in the US.

USPS argued that .mail is like .gov — internet users know a .gov domain is owned by the US government, so they’re likely to think .mail belongs to the official US mail service.

The panelist decided that users are more likely to associate the gTLD with email:

A consumer viewing the string <.mail> in the context of a domain name registration or an email address is presumably even more likely to think of the electronic (“email”) meaning, rather than the postal meaning, of the term “mail,”

WIPO has now decided 20 LRO cases. All have been rejected. Several more were terminated after the objector withdrew its objection.

Six more LROs kicked out, most for “front-running”

Kevin Murphy, July 28, 2013, Domain Policy

Six more new gTLD Legal Rights Objections, six more rejected objections.

The World Intellectual Property Organization is chewing through its caseload of LROs at a regular pace now, made all the more easier by the fact that a body of precedent is being accumulated.

Objections rejected in decisions published last week cover the gTLDs .home, .song, .yellowpages, .gmbh and .cam.

All but one were thrown out, with slightly different panelist reasoning, because they had engaged in some measure of “front-running” — applying for a trademark just in order to protect a gTLD application.

Here’s a quick summary of each decision, starting with what looks to be the most interesting:

.yellowpages (hibu (UK) v. Telstra)

Last week somebody asked me on Twitter which LROs I thought might actually succeed. I replied:

Well, my initial hunch on .yellowpages was wrong, and I think I’m very likely to have been wrong about the other two also.

This case is interesting because it specifically addresses the issue of two matching trademarks happily living side-by-side in the trademark world but clashing horribly in the unique gTLD space.

The objector in this case, hibu, publishes the Yellow Pages phone book in the UK and has a big portfolio of trademarks and case law protecting its brand. If anyone has rights, it’s these guys.

But the “Yellow Pages” brand is used in several countries by several companies. In the US, there’s some case law suggesting that the term is now generic, but that’s not the case in the UK or Australia.

On the receiving end of the objection was the Australian telecoms firm Telstra, which is the publisher of the Aussie version of the Yellow Pages and, luckily for it, the only applicant for .yellowpages.

The British company argued that “no party should be entitled to register the Applied-for gTLD”, due to the potential for confusion between the same brand being owned by different companies in different countries.

The panel concluded that brands will clash in the new gTLD space, and that that’s okay:

It is inherent in the nature of the gTLD regime that those applicants who are granted gTLDs will have first-level power extending throughout the Internet and across jurisdictions. The prospect of coincidence of brand names and a likelihood of confusion exists.

The critical issue in this LRO proceeding is whether the Objector’s territorial rights in the term “YELLOW PAGES” (and the prospect of other non-objecting third parties’ territorial right) means that the applicant (or anyone else for that matter) should not be entitled to the Applied-for gTLD.

The panelist uses the eight-criteria test in the Applicant Guidebook to make his decision, but he chose to highlight two words:

the Panel finds that the Objector has failed to establish, as it alleges, that the potential use of the Applied-for gTLD by the applicant… unjustifiably impairs the distinctive character or the reputation of the objector’s mark… or creates an impermissible likelihood of confusion between the applied for gTLD and the Objector’s mark.

Because Telstra has rights to “Yellow Pages” too, and because it’s promising to respect trademark rights at the second level, the panelist concluded that its application should be allowed to proceed.

It’s the third instance of a clash between rights holders in the LRO process and the third time that the WIPO panelist has adopted a laissez faire approach to new gTLDs.

And as I’ve said twice before, if this type of decision becomes the norm — and I think it will — we’re likely to see many more defensive applications for brand names in future new gTLD rounds.

The LRO is not shaping up to be an alternative to applying for a gTLD as a means to defend a legitimate brand. Applying for a gTLD matching your trademark and then fighting through the application process may turn out to be the only way to make sure nobody else gets that gTLD.

.cam (AC Webconnecting Holding v. United TLD Holdco)

Both sides of this case are applicants for .cam. United TLD is a Demand Media subsidiary while AC Webconnecting is a Netherlands-based operator of several webcam-based porn sites.

Like so many other applicants, AC Webconnecting applied for its European trademark registration for “.cam” and a matching logo in December 2011, just before the ICANN application window opened.

The panelist decided that its trademark was acquired in a bona fide fashion, he also decided that the company had not had enough time to build up a “distinctive character” or “reputation” of its marks.

That meant the Demand Media application could not be said to take “unfair advantage” of the marks. The panelist wrote:

Given the relatively short existence of these trademarks, it is unlikely that either [trademark] has developed a reputation.

In the Panel’s opinion, replication of a trademark does not, of itself, amount to taking unfair advantage of the trademark – something more is required.

the Panel considers that this something more in the present context needs to be along the lines of an act that has a commercial effect on a trademark which is undertaken in bad faith – such as free riding on the goodwill of the trademark, for commercial benefit, in a manner that is contrary to honest commercial practices.

What we’re seeing here is another example of a trademark front-runner losing, and of a panelist indicating that applicants need some kind of bad faith in order to lose and LRO.

.home (Defender Security Company v. DotHome Inc.)

Kicked out for the same reasons as the other Defender objections to rival .home — it was a transparent gaming attempt based on a flimsy, recently acquired trademark. See here and here.

DotHome Inc is the subsidiary Directi/Radix is using to apply for .home.

The decision (pdf) goes into a bit more detail than the other .home decisions we’ve seen to date, including information about how much Defender paid to acquire its trademarks ($75,000) and how many domains its bogus Go Daddy reseller site has sold (three).

.home (Defender Security Company v. Baxter Pike)

Ditto. This time the applicant was a Donuts subsidiary.

.song (DotMusic Limited v. Amazon)

Like the failed .home objections, the .song objection was based on a trademark acquired tactically in late 2012 by Constantine Roussos, whose company, CGR E-Commerce, is applying for .music.

This objection failed (pdf) for the same reasons as the same company’s objection to Amazon’s .tunes application failed last week — a trademark for “.SONG” is simply too generic and descriptive to give DotMusic exclusive rights to the matching gTLD.

Roussos has also filed seven LROs against his competitors for .music, none of which have yet been decided.

.gmbh (TLDDOT GmbH v. InterNetWire Web-Development)

Both objector and respondent here are applicants for .gmbh, which indicates limited liability companies in German-speaking countries.

TLDDOT registered its European trademark in “.gmbh” a few years ago.

Despite the fact that it was obviously acquired purely in order to secure the matching gTLD, the panelist in this case ruled that it was bona fide.

Despite this, the panelist concluded that for InternetWire to operate .gmbh in the generic, dictionary-word sense outlined in its application would not infringe these trademark rights.

LRO roundup: six more new gTLD objections rejected

While we were busy focusing on ICANN 47 last week, six new gTLD Legal Rights Objections were decided by the World Intellectual Property Organization.

These are the objections where the objector has trademark rights that it believes would be infringed by the delegation of a matching or confusingly similar gTLD.

All six cases, like the first six, were rejected for varying reasons. There has yet to be a decision in favor of an objector.

Here’s a rundown of the highlights of the decisions:

.home (Defender Security v Lifestyle Domain Holdings)

.home (Defender Security v Merchant Law Group)

.home (Defender Security v Uniregistry)

These cases are three of the nine filed by .home applicant Defender Security against its rival applicants. Defender had already lost one such objection, and these three were no different.

Defender acquired its trademarks and associated domains and companies from Constantine Roussos’ CGR E-Commerce shortly before the new gTLD application window opened.

The trademarks themselves, attached to hastily created Go Daddy reseller web sites, were obtained not much earlier.

Uniregistry, paraphrased by the WIPO panelist in its case, put the situation pretty close to the truth:

Objector is one of several parties who were solicited some months ago to purchase any of a number of cookie-cutter European trademark documents lacking any substantial basis in actual goodwill or commerce, which were filed solely to game this process, and do not reflect a bona fide acquisition of substantial rights.

The WIPO panelists did not disagree, with two of them finding that not only were the acquisition of trademark rights not bona fide, but also that there was a question as to whether Defender even owned the trademark.

One panelist wrote of “the misleading and sometimes deceptive presentation of the evidence in the Objection, and more generally the abusive nature of the Objection” and another said:

The [LRO] Procedure is not intended to provide a facility whereby existing or prospective applicants for a new gTLD may attempt to gain an advantage over other applicants for the same gTLD by way of the deliberate acquisition of trademark rights for no purpose other than to bring a Legal Rights Objection. It has not escaped the Panel’s notice that the evidence before it indicates that the present Objection might have been motivated by just such an attempt

All three cases were rejected largely on this basis.

The panelist in the Lifestyle Domain Holdings case decided that acquisition of the trademarks had in fact been bona fide, but rejected the objection anyway on the overall LRO test of whether the proposed gTLD would take “unfair advantage” of Defender’s trademark rights, stating:

If anyone has taken “unfair advantage,” it has been the Objector through its meritless Objection. The LRO process is not meant to be a game or crap shoot; rather, it should be invoked only when the applicant’s proposed string would “infringe” trademark rights. It is an abuse of the process to invoke an LRO against an applicant whose proposed use is clearly a fair use of a string for its descriptive meaning and not a use designed to “infringe” (that is, cause confusion as to source, authorization or affiliation). What is “unfair” here is that the Objector filed an Objection that is not only completely devoid of merit, causing the Respondent to waste time and effort defending its entirely appropriate application, but also full of misleading, deceptive, and demonstrably untrue statements and omissions

With the Roussos/Defender gaming strategy thus comprehensively trashed, I can only hope for Defender’s sake that there’s opportunity left for it to withdraw its remaining objections and ask for a refund.

.mail (United States Postal Service v Amazon)

Amazon is one of the many applicants for .mail, while USPS is the United States’ longstanding government-backed postal service and not an applicant.

USPS showed that it owned a wide array of trademarks that include the word “mail”, but not any for the word alone, and argued that internet users expect “mail” to mean the US mail.

Amazon said that the word is generic and that USPS is not the only organization to incorporate it in its trademarks.

Amazon said (ironically, given its intention to operate .mail as a closed generic) that USPS “improperly seeks to take the dictionary word ‘mail’ out of the English language for its exclusive use”.

The decision to reject the complaint hinged on whether USPS even has rights in .mail.

The WIPO panelist decided: “The fact that a nation’s postal system is vested by statute or otherwise associated with a single entity does not convert the generic term into a trademark.”

USPS has filed six more LROs against the other six .mail applicants, two of which have been terminated due to application withdrawals. We can only assume that the remaining four are also likely to fail.

.pin (Pinterest v Amazon)

Amazon is the only applicant for .pin. Again, it’s a closed generic for which the company has not explained its plans.

The objector, Pinterest, is a wildly popular photo-sharing service provider start-up, funded to the sum of $100 million by Amazon’s Japanese retail rival Rakuten.

It owns a US trademark for “Pinterest” and has applied for many more for “Pin” and “Pin It”.

The panelist, in ruling against Pinterest, decided that Pinterest, despite its popularity, failed to show that the dictionary word “pin” had acquired a secondary meaning beyond its usual descriptive sense.

.mls (Canadian Real Estate Association v. Afilias)

MLS, for readers based outside North America, means “multiple listing services”. It’s used by estate agents when aggregating lists of properties for sale.

The Canadian Real Estate Association — which has applied for .mls TWICE, one as a community once as a regular applicant — has owned a Canadian “certification mark” on the term “MLS” since 1960.

A substantial portion of the decision is devoted to examining whether this counts as a trademark for the purposes of an LRO, with the panelist deciding that “ownership of a certification trademark must confer the status of ‘rightsholder’.”

The case was therefore decided on the eight criteria specified for the LRO in the ICANN Applicant Guidebook. The panelist concluded:

The Panel cannot see the justification for refusing to allow the Applicant to operate in every country because the Objector has a certification mark for a generic term in Canada. Had the Objector’s certification been other than a generic term, its case might have been stronger but MLS it is a generic term used in English-speaking jurisdictions.

The decision cited the .rightathome case, in which the decision hinged on whether the new gTLD applicant had any nefarious intent in applying for the string in question.

A body of precedent seems to be emerging holding that a new gTLD application must be somewhat akin to a cybersquatting attempt in order for an objector to win.

While this may be fair, I think a likely impact is an increase in the number of dot-brand applications in future rounds, particularly in cases where the brand matches a dictionary word or collides with another trademark.

We’ve yet to see what a successful LRO looks like, but the standard appears to be high indeed.

Donuts chalks up another LRO win

Donuts has successfully fought off another Legal Rights Objection against one of its new gTLD applications.

This time the objector was The Limited, apparently the operator of a large chain of clothing stores in the US, and the applied-for gTLD was .limited, which is uncontested.

Key to the World Intellectual Property Organization panelist’s decision appears to be the fact that the brand and the trademark in question is “The Limited” rather than “Limited”.

The retailer failed to show that it was commonly known by the word “Limited” alone, whereas Donuts made the case that “limited” is a common generic word with multiple uses.

The panelist wrote:

The definite article “the” makes a difference in this case. If the string were <.thelimited>, Applicant’s professed plans for the String would be highly suspect. This is because limited liability businesses do not use the term “the limited” (or an abbreviation or derivation thereof) in their company name.

In the absence of the definite article “the” in the String, however, Applicant’s proposed use of the String is plausible and legitimate, and the likelihood of confusion between Objector’s mark and the String is greatly reduced. There is simply no viable evidence in the record to suggest that significant source confusion – among consumers or non-consumers who use the Internet – will ensue if Applicant carries out its plans.

It’s the sixth LRO to be decided and the sixth finding in favor of the new gTLD applicant.

Donuts also fought off an objection from another clothing retailer, Express, which it is fighting for the .express gTLD.

Roussos loses new gTLD objection

Kevin Murphy, July 15, 2013, Domain Policy

The World Intellectual Property Organization has thrown out a second new gTLD objection that was based on a hastily acquired trademark filed by .music hopeful Constantine Roussos.

While Amazon, the defendant, is the only applicant for .tunes, Amazon is in the .music contention set with one of Roussos’ companies. The objection filed by Roussos’ DotTunes Ltd was, I assume in that light, tactical.

In the fourth Legal Rights Objection ruling to date, the WIPO panelist ruled that DotTunes’ European Community trademark wasn’t famous enough to warrant rights protection under the LRO.

The panelist wrote (pdf):

The Objector’s trademark .TUNES is phonetically similar to the gTLD <.tunes>. The word “tunes” is, however, a generic and descriptive mark when used in relation to music, which is the intended use of both the Objector and the Applicant. The .TUNES trademark as registered includes many other elements, including, colours, a speech bubble and the image of a person wearing headphones. None of these are similar to the <.tunes> gTLD. It is in fact likely that an application for “TUNES” by itself as a trademark without these additional features would have been rejected for registration.

DotTunes had acquired its trademark in December 2011, shortly before ICANN started accepting new gTLD applications, when Roussos intended to submit many more applications than he ended up filing.

A trademark on .home acquired by Roussos around the same time and transferred to .home applicant Defender Security and used in an LRO against another applicant was thrown out last week.

It’s the third instance of an LRO failing because the trademark owner had acquired its trademark solely in order to have some ammo during the objection phase of the new gTLD program.

Donuts beats dot-brand in fight over .express gTLD

Kevin Murphy, July 11, 2013, Domain Policy

Donuts has prevailed in the first big dust-up between a portfolio gTLD applicant and a dot-brand hopeful.

The World Intellectual Property Organization today published its decision (pdf) in the Legal Rights Objection filed by a clothing retailer called Express over the .express gTLD.

The ruling could have a big impact on future rounds of the new gTLD program, possibly giving rise to an influx of defensive, generic-word dot-brand applications.

Both Express and Donuts have applied for .express. They’re the only two applicants for the string.

Express runs about 600 stores in the US and elsewhere and has had a trademark on its name since 1979. Donuts, as with all of its 307 original applications, wants to run .express as an open gTLD.

Express argued in its LRO that a Donuts-run .express would severely damage its brand, saying:

Should applicants for new TLDs be able to operate unrestricted TLDs represented by generic words which are also extremely well known brands, billions of dollars of goodwill will be wiped out in a TLD heartbeat.

Donuts, in its response, pointed out that there are thousands of uses of the word “express” in trademarks and other contexts, and even produced a survey that it said showed only 8% of fashionistas even associate the word with the brand.

The WIPO panelist, after what appears to have been something of a crisis moment of wondering what the hell ICANN was thinking when it designed the LRO, sided with Donuts. He said:

The Panel ultimately decides that the trademark owner (Complainant) should not be able to prevent adoption by the applicant (Respondent) of the applied-for gTLD <.express> in the particular context presented here. While Complainant certainly owns rights in the EXPRESS trademark for use in connection with apparel and fashion accessories, and while that trademark is reasonably well known among a relevant segment of consumers in the United States, there are so many common usages of the term “express” that it is not reasonable to foreclose its use by Respondent as a gTLD.

He follows up with a few sentences that should give owners of dictionary-word trademarks reason to be worried.

The Panel recognizes that, should Respondent successfully secure the gTLD, Complainant may be required to address potential Internet user confusion in the commercial marketplace for its products based on the registration (or attempted registration) of certain second level domains. However, Complainant faces this risk because it adopted a common word in the English language for its trademark. Moreover, Complainant has applied for the identical <.express> string as a gTLD in competition with Respondent. Ultimately, the parties may well end up in an auction contest for the gTLD. This is not Complainant’s last chance to secure its trademark as a gTLD.

In other words, Express can either pay ICANN or Donuts a bunch of cash at auction to get its dot-brand, or it can let Donuts win and spend a bunch of cash on defensive registrations and UDRP/URS complaints. Not a great result for Express either way.

The panelist takes 10 pages of his 26-page decision to explain his deliberations, but it basically boils down to this: Express’ trademark is too generic to give the company exclusivity over the word.

It’s hard to disagree with his reasoning.

If subsequent LROs go the same way, and I suspect they will, then it will quickly become clear that the only way to guarantee nobody else gets your dictionary-word brand as a gTLD will be to apply for it yourself and fight it all the way to auction.

ICANN may have got lucky with a URS vendor

Kevin Murphy, November 25, 2012, Domain Policy

ICANN may have found a vendor willing to provide Uniform Rapid Suspension services for new gTLDs at $500 or less per case, without having to rewrite the policy to do so.

Last month, Olof Nordling, director of services relations at ICANN, gave the GNSO Council a heads-up that the URS policy may have to be tweaked if ICANN were to hit its fee targets.

But last week, following the receipt of several responses to a URS vendor Request For Information, Nordling seems to have retracted the request.

In a message to Council chair Jonathan Robinson, he wrote:

The deadline for responses to the URS RFI has passed and I’m happy to inform you that we have received several responses which we are now evaluating. Moreover, my first impression is that the situation looks quite promising, both in terms of adherence to the URS text and regarding the target fee. This also means that there is less of an urgency than I previously thought to convene a drafting team (and I’m glad to have been proven wrong in that regard!). There may still be details where such a drafting team can provide useful guidance and I will get back to you with further updates on this and other URS matters as we advance with the evaluations.

The target fee for URS has always been $300 to $500 per case, between a fifth and a third of the fee UDRP providers charge.

Following an initial, private consultation with UDRP providers WIPO and the the National Arbitration Forum, ICANN concluded that that it would miss that target unless the URS was simplified.

But some GNSO members called for a formal, open RFP, in order to figure out just how good a price vendors were willing to offer when they were faced with actual competition.

It seems to have worked.

During a session on URS at the Toronto meeting last month, incumbents WIPO and NAF were joined by a new would-be arbitration forum going by the name of Intersponsive.

Represented by IP lawyers Paul McGrady and Brad Bertoglio, the new company claimed it would be able to hit the price target due to software and process efficiencies.

NAF also said it would be able to hit targets for most URS cases, but pointed out that the poorly-described policy would create complex edge cases that would be more expensive to handle.

WIPO, for its part, said a cheaper URS would only be possible if registrants automatically lost the cases if they failed to respond to complaints.

This angered big domainers represented by the Internet Commerce Association and free speech advocates in the GNSO, who feared a simpler URS meant fewer registrant rights.

It’s not yet known which vendors are in with a shot of winning the URS contract, but if ICANN has found a reasonably priced provider, that would be pretty good news for registrants and IP owners.

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.

WIPO supported Draconian cybersquatting reform

Kevin Murphy, July 9, 2012, Domain Policy

Domain name owners who do not respond to cybersquatting complaints could automatically have their domains suspended, if the World Intellectual Property Organization gets its way.

That’s according to the latest ICANN documents to be released under its Documentary Information Disclosure Policy, following a request from the Internet Commerce Association.

The documents relate to the still controversial Uniform Rapid Suspension policy, a supplement to the existing UDRP for dealing with “clear cut” cases of cybersquatting.

The URS will be binding on all new gTLDs, but ICANN recently admitted that it’s been unable to find an organization willing to administer URS cases for the planned $300 to $500 filing fee.

Rather than implement URS with a $1,000 to $1,500 fee instead, ICANN plans to host two community summits to try to figure out ways to rearchitect the scheme to make it cheaper.

These changes could well mean fewer safeguards for domain registrants.

According to an email from WIPO released in response to ICA’s DIDP request, WIPO declined to host these summits unless ICANN agreed, in advance, to Draconian rules on default.

WIPO’s Erik Wilbers wrote (pdf):

it would seem unlikely that these stakeholders would now feel able to commit to the rather fundamental changes we believe to be in everyone’s interest – notably a shift to the proposed respondent-default basis without panel, subject to appropriate safeguards. We would consider an express prior commitment to such a shift, including the requisite Board support, as a pre-condition to a fruitful meeting on the URS.

In other words, WIPO thinks domain names should be suspended without expert review if the domain owner does not respond to a trademark owner’s URS complaint.

ICA counsel Phil Corwin is naturally not happy about this, writing in a blog post this weekend:

WIPO would only consent to hosting URS Summits if their result was largely pre-ordained – in which event, we ask, why bother holding the Summits at all? … This imperious demand should be dismissed out of hand by members of ICANN’s Board should it ever reach them.

That the structure of URS is still open for debate at this late stage of the game is an embarrassment, particularly given the fact that it’s been well-understood for some time that URS was unrealistically priced.

The new DIDP documents reveal that even the idea of summits to resolve the apparently intractable problems were a Band-Aid proposed almost accidentally by ICANN staff.

ICANN, it seems, is engaged in policy fire-fighting as usual.

The current hope is for URS to be finalized and a provider be in place by June 2013. It’s a plausible timetable, but I’m less convinced that a system can be created that is fair, useful and cheap.