UDRP reform effort begins

ICANN has kicked off a review of its Uniform Dispute Resolution Policy, the occasionally controversial process used to adjudicate cybersquatting complaints.
The GNSO Council on Thursday voted to ask ICANN staff for a so-called “Issues Report” on UDRP, indicating that reform of the process is likely.
This is the relevant portion of the resolution, passed unanimously:

RESOLVED #2, the GNSO Council requests an Issues Report on the current state of the UDRP. This effort should consider:
* How the UDRP has addressed the problem of cybersquatting to date, and any insufficiencies/inequalities associated with the process.
* Whether the definition of cybersquatting inherent within the existing UDRP language needs to be reviewed or updated. The Issue Report should include suggestions for how a possible PDP on this issue might be managed.

Issues Reports commissioned by the Council are expected within 15 days, and 15 days after that the Council is expected to vote on whether to kick off a Policy Development Process.
A PDP could lead to changes to the UDRP that would be binding on all ICANN-accredited registrars and their customers.
While the UDRP has proven very effective at dealing with clear-cut cases of cybersquatting over the last 12 years, critics claim that it is often interpreted too broadly in favor of trademark interests.
If you read this blog regularly, you’ll know I frequently report on unfathomable UDRP decisions, but these are generally the exception rather than the rule.
Unrelated to UDRP, the GNSO Council has also voted against asking ICANN for an Issues Report on registry/registrar best practices for mitigating domain abuse.
Business interests wanted registrars to take more measures (voluntarily) to curb activities such as phishing, but registrars think this kind of rule-making is beyond the scope of the GNSO.
After a lot of heated debate and arcane procedural wrangling, the Council decided instead to ask for a “discussion paper”, a term that has no meaning under ICANN’s rules, meaning a PDP is less likely.

Four more ICANN 40 sponsors revealed

Iron Mountain, IronDNS, RegistryPro and the Public Interest Registry have added their names to the list of companies prepared to fork out big bucks to sponsor ICANN’s San Francisco meeting.
That brings the total number of ICANN 40 sponsors revealed so far to five, after VeriSign’s unprecedented $500,000 “Diamond” deal.
The new sponsors have splashed out more modest fees. Of the six tiers of sponsorship available, all four have opted for least expensive two.
Iron Mountain, IronDNS and RegistryPro have all chosen the same tiers as they have before, but they are likely paying more since ICANN has doubled its list prices since last year.
Meanwhile, .org manager PIR has downgraded to a $25,000 “Silver” package, having been a “Gold” sponsor at the Cartagena meeting.
The deadline for signing sponsorship deals and handing over artwork is February 15.

Renew a domain, lose a UDRP?

Renewing a domain name could land you in hot water if you’re hit with a UDRP complaint, if some current thinking at the National Arbitration Forum gains traction.
In the recent NAF decision over FreeGeek.com, panelists argued that if a domain was not originally registered in bad faith (because no trademark existed at the time) renewing the domain after a trademark had been obtained could nevertheless be used to demonstrate bad faith.
Showing that a disputed domain was registered and used in bad faith is of course one of the three pillars of UDRP.
Free Geek Inc runs its web site at freegeek.org. It wanted the .com equivalent, which was registered in 2001, six years before the company acquired a US trademark on its brand.
FreeGeek.com is owned by by Kevin Ham’s company, Vertical Axis. The registration has been renewed every year since 2001.
The three NAF panelists were split on whether renewals post-2007 should be considered evidence of bad faith.

Two of the panelists agree that Respondent should be charged with exercising some diligence at renewal to determine if there are outstanding marks which conflict; one does not.

That’s a disturbing statement, if you’re interested in registrant rights – two panelists basically want domain investors to relinquish their domains if somebody else subsequently acquires a trademark.
What’s more, the panelists’ position appears to be based on a dodgy interpretation of recent UDRP precedent. The decision goes on to say:

The Chair of the Panel is concerned that the Respondent renewed its registration after the trademark was applied for and the USPTO registered the mark. In RapidShare AG and Christian Schmid v. Fantastic Investment Limited… a panel in which the Chair participated, found that “bad faith” could include renewal of a domain name after the issuance of the mark.

It’s a dodgy interpretation because the referenced case, rapidshare.net, does not in fact discuss renewals at all.
In that case, bad faith was actually shown to have arisen due to the domain (which had survived a UDRP just a few months earlier) being bought by a new registrant, not due to a renewal.
What we seem to have here is a case of a couple of NAF panelists thinking about trying to expand the scope of the UDRP. There’s a ton of precedent concluding that renewals are not relevant when establishing whether a domain was registered in bad faith.
With that in mind, you’d think the case would have been a slam-dunk win for the complainant. Not so.
In fact, Ham prevailed on the basis that he had acquired rights to the domain by simply parking it, which constituted a legitimate commercial use.

This panel, in contrast to other panels, finds that the use of this model and evidence of the use is enough to justify a factual finding that Respondent has used the name for commercial purposes
…
Respondent has clearly demonstrated that it acquired rights in the name by usage even if the usage has been limited to a “pay-per-click” links page. Such usage does not itself signal a lack of rights and legitimate interests and can constitute a bona fide offering of goods or services according to Policy

If there are any recent UDRP cases that show just how random a process it is, this is the one.

UDRP tip: put your domain in the Whois

If you’re fighting off a bogus UDRP complaint on one of your domain names, the onus is on you to prove that you have “rights and legitimate interests” in the domain.
That could be tricky, especially if you think you may been assigned a panelist with a pro-complainant bent, but there may be some ways to mitigate the risk of losing your domain.
Take this recent case, for example: PissedConsumer.com versus ThePissedOffConsumer.com.
The panelist determined that the registrant of ThePissedOffConsumer.com had no “rights and legitimate interests”on the grounds that a) it was competing with the complainant, b) the web site used the same color (red) as the complainant and c) the registrant was not known by the domain.
Ignoring the first two (highly debatable) findings, let’s look at c). The panelist wrote:

Complainant alleges that Respondent has never used a company name “The Pissed-Off Consumer” in connection with operation of any business activities. The WHOIS information for the disputed domain name lists the registrant of the domain as “John Cross.”
The Panel finds, based on the evidence in the record, that Respondent is not commonly known by the disputed domain name, and as such lacks rights and legitimate interests in the said name

In other words, because Whois showed the name of the registrant, rather than the name of the domain, the registrant was not “commonly known” as the domain and lacked rights.
To add insult to injury, the complainant was assumed to have earned the right to the mark “Pissed Consumer” before it had officially acquired a trademark (and before the disputed domain was registered) simply by virtue of operating PissedConsumer.com, despite the fact that it hides behind Whois privacy and is called Consumer Opinion Corp.
Presumably, if Cross had simply added the text “ThePissedOffConsumer” to his Whois record, the panelist would have had one less data point “in the record” to justify his finding.
In fringe UDRP cases, that could prove a useful defensive tactic.

TorrentReactor.net wins TorrentReactor.com case

The World Intellectual Property Organization has handed the domain name TorrentReactor.com to the owner of TorrentReactor.net, one of the internet’s most-popular BitTorrent movie piracy sites.
Really.
TorrentReactor.net owner Alexey Kistenev filed a UDRP complaint over the .com version with WIPO last year and won it earlier this month.
It was actually the second time he had taken the domain to arbitration.
Kistenev’s first complaint was dismissed by WIPO in March 2009, on the grounds that he did not have a valid trademark.
A month later, he applied for a US trademark on “TorrentReactor”, which was granted in July last year, and the UDRP was refiled in October.
In the latest case, Kistenev was helped by not only the fact that he now owns the trademark but also the fact that the domain has changed hands since the original complaint.
I wonder how much the current owner paid. In 2008, the then-owner had tried to sell it to Kistenev for $150,000. When he countered with a $30,000 offer, the owner asked for $50,000.
TorrentReactor.net is a page-one Google hit for searches including [torrent movies] and [torrent music].
Its front page contains links to torrents of recent, copyrighted movies such as The Social Network, Red and Let Me In, as well as new software, TV shows and music.
What we seem to have here is a case of WIPO indirectly helping piracy.
I guess it shows that WIPO arbitration panels can apply the UDRP uniformly when they want to.

Red Bull files UDRP after domain expires

Energy drink maker Red Bull has filed a UDRP complaint over the domain name red-bull.com, which until recently it actually owned.
It’s moderately embarrassing, but not unheard of, for companies to turn to the UDRP after domains they allow to expire are then snapped up by squatters.
What makes the complaint unusual is that the domain red-bull.com is not an obscure fringe case – it’s virtually identical to the company’s trademark and to its primary domain, redbull.com.
Also, according to Whois records, Red Bull also appears to use MarkMonitor, the brand-protection registrar, for its domain name needs.
Whois history shows that Red Bull acquired the domain in about 2005, but allowed it to expire in September 2010, after which it was quickly acquired by a third party.
Did Red Bull deliberately allow it to expire? There’s a case to be made for rationalizing defensive registration portfolios to reduce costs, but this domain would seem (to me) to be a definite keeper.
MarkMonitor has a policy of declining to comment on clients, which it chose to exercise when I inquired.
The domain red-bull.com currently resolves to what can only be described as a splog. It shows up on page two of Google for the search [red bull], which may go some way to explaining the UDRP.
Red Bull acquired red-bull.net, red-bull.cc and red-bull.tv via UDRP proceedings between 2001 and 2004, but has since allowed all three, as well as the .org, which it also owned, to expire.
The .tv and .net versions are currently parked, meaning they don’t rank so well in search engines.
It’s not the first odd UDRP Red Bull has filed. Last year, it lost a UDRP complaint despite winning a court case over the same domain name, as I reported in June.

ICANN staff swamped

ICANN’s board of directors is giving its staff and policy-making bodies more work than they can handle.
The GNSO Council yesterday voted to shelve board-requested work on the new top level domains program because no ICANN staffers have the time to help coordinate the project.
Last month, the board asked the GNSO and other constituencies to come up with ideas, before mid-March, about how to measure the consumer benefits of new TLDs after they launch.
But the Council yesterday was faced with having to suspend other policy development, in order to get the required staff support, so decided instead to defer the new work.
A senior ICANN executive at the meeting said that ICANN staff is “not an unlimited resource” and has “no bandwidth to keep taking these projects”.
This has apparently been an issue for over a year.
In this particular instance, the problem project comprised part of ICANN’s obligations under its Affirmation of Commitments with the US government, so it’s not trivial stuff.
As others have noted, sometimes the amount of policy development going on in ICANN can appear overwhelming to outsiders, but it seems that this problem also extends to ICANN internally.

Clinton agrees to do ICANN meeting

ICANN has confirmed that former US president Bill Clinton has agreed to speak at its San Francisco meeting in March.
But ICANN’s Scott Pinzon said in a blog post that a formal contract, which would be funded by a “targeted sponsorship” deal, has not yet been signed. He wrote:

We are also aware that ICANN meetings are highly structured, work-intensive events, and we want to be sure that an appearance by President Clinton enhances the meeting’s outcomes rather than distracts from them.

Read into that what you will.
Clinton’s appearance will likely make the San Francisco meeting ICANN’s best-attended so far, at least for a day or so. Expect TV.
It will also raise the profile of the new top-level domains program, if ICANN in fact approves it during the meeting.
On a personal level, this is tragic news. It’s already hard enough to get a coffee in the ICANN press room without a thousand other newbie reporters crowding the place out.
I’ve put in a request for an interview anyway.

Will Bill Clinton keynote at ICANN San Francisco?

There’s been a rumor going around for at least a month that Bill Clinton is being lined up to provide the keynote address for the next ICANN meeting, to be held in San Francisco in March.
I’m not going to pretend to have any inside information, but I’ve heard it from so many people recently that I thought it was worthy of a post.
One reason the rumor may have been reinvigorated this week is the revelation of the hefty sums ICANN is charging its top sponsors for the San Francisco meeting.
As I reported earlier in the week, VeriSign appears to have paid up $500,000 to get one of two top-tier Diamond-level sponsorship deals for the meeting.
Clinton, like many former world leaders, can command powerful sums for public speaking engagements, reportedly up to $350,000 a gig a few years ago.
ICANN, of course, was the brainchild of the Clinton administration in 1998.
While the US government’s attitude to ICANN’s activities has changed over the years, the organization was formed largely to introduce competition in the registrar and registry markets.
Since these are two likely results of the approval of the new TLDs program, Clinton’s appearance at the meeting where it will possibly happen would be appropriate.

ICANN wants to make millions from SF meeting

ICANN hopes to sign millions of dollars in sponsorship deals for its San Francisco meeting in March.
The organization has revamped its sponsorship options, adding new “Diamond” and “Platinum Elite” tiers (together worth up to $1.5 million) and doubling the price of its existing opportunities.
ICANN is looking for two companies to act as Diamond sponsors, paying $500,000 each, and two more to sign up for the Platinum Elite deal, each paying $250,000.
For the money, these companies will get the best booths, exclusive branding on bags and T-shirts, along with a bunch of other benefits not available to lesser sponsors.
Diamond sponsors will be given a “90-minute industry/technology related presentation delivered by your company at a scheduled session”, which I believe might be a first for ICANN.
They’ll also get “exclusive press access”, according to the ICANN site.
(In Cartagena, “the press” was pretty much just me and the guy from Managing Internet IP. I can’t speak for him, but access to me can be had in SF for the price of a couple of pints of Anchor Steam).
Prices for the Platinum, Gold, Silver and Bronze deals it has offered at previous meetings have also been doubled, to $100,000, $50,000, $20,000 and $10,000 respectively.
ICANN is also looking for another $160,000 to sponsor its three evening events, $125,000 to sponsor the twice-daily coffee breaks and $210,000 to sponsor the lunches.
According to my back-of-the-envelope calculations, ICANN took in less than half a million dollars in sponsorship money for its meeting in Brussels last summer, which was its last big “first-world” gig.
For the March meeting, the organization is clearly hoping to benefit from the concentration of technology companies in the San Francisco bay area, which of course includes Silicon Valley.
I suspect that tapping this pool of sponsor cash may be the main reason the conference is amusingly being referred to officially as the “Silicon Valley in San Francisco” meeting.
How many sponsorship slots get filled by the domain name industry will depend to a degree on how likely it appears that ICANN will approve the new top-level domains program at the SF meeting.
I expect there would be a reluctance from registry service providers to drop half a million bucks on a conference from which the main headline at the end of the week is “ICANN delays gTLDs again”.
The current ICANN budget, incidentally, forecasts just $500,000 in sponsorship revenue for fiscal 2011, which ends in June. Its meetings typically cost $1 million each to run.
UPDATED: In the two hours since this post was first published, .com registry VeriSign has appeared on the ICANN web site as the first $500,000 “Diamond” sponsor of the meeting.