Patent troll hits registrars with $60m shakedown

A patent troll that claims it invented email reminders has launched a shakedown campaign against registrars that could be worth as much as $62 million.
WhitServe LLC, which beat Go Daddy in a patent lawsuit last year, is now demanding licenses from registrars that could add as much as $0.50 to the cost of a domain name.
According to registrar sources, registrars on both sides of the Atlantic have this month been hit by demands for hundreds of thousands or millions of dollars in patent licensing fees.
The legal nastygrams present thinly veiled threats of litigation if the recipients decline to negotiate a license.
WhitServe is a Connecticut-based IP licensing firm with connections to NetDocket, which provides software for tracking patent license annuities.
It owns US patents 5,895,468 and 6,182,078, both of which date back to the late 1990s and cover “automating delivery of professional services”.
Basically, the company reckons it invented email reminders, such as those registrars send to registrants in the weeks leading up to their domain registration expiring.
Three years ago, GoDaddy, defending itself against WhitServe’s 2011 patent infringement lawsuit, compared the “inventions” to the concept putting “Don’t forget to pick up milk” notes on the fridge: utterly obvious and non-patentable.
In December 2012, GoDaddy implied WhitServe used its patent expertise and exploited a naive 1990s USPTO to obtain “over-broad” patents.
It was trying “to monopolize the entire concept of automatic Internet reminders across all industries, including domain name registrars”, according to a GoDaddy legal filing.
But the market-leading registrar somehow managed to lose the case, opting to settle last August after its last defense fell apart, for an undisclosed sum.
Now, WhitServe is using that victory to shake loose change out of the pockets of the rest of the market.
It’s told registrars that GoDaddy and Endurance International (owner of Domain.com, BigRock and others) are both currently licensing its patents.
The deal it is offering would see registrars pay $0.50 for every domain they have under management, a number that seems to be based on .com registry numbers reported by Verisign.
The fee would be reduced to $0.30 per name for each name over one million, and $0.20 for each name over five million, I gather. That’s still more than registrars pay in ICANN fees.
If WhitServe were to target every .com registrar (which I do not believe it has, yet) its demands could amount to as much as $62 million industry-wide, given that .com is approaching 125 million names right now.
It’s not clear whether these fees are expected to be one-time payments or recurring annual fees.
It’s a trickier predicament for registrars than the usual patent shakedown, because registrars are legally obliged under their contracts with ICANN to send email reminders in a variety of circumstances.
The Expired Registration Recovery Policy requires them to email renewal reminders to customers at least twice before their registrations expire.
There’s also the Whois Data Reminder Policy, which obliges registrars to have their customers check the accuracy of their Whois once a year.
These are not services registrars are simply able to turn off to avoid these patent litigation threats.
Whether registrars will take this lying down or attempt to fight it remains to be seen.

Does .tickets have the ultimate anti-cybersquatting system?

I’ve never seen anything like this before.
.tickets gTLD registry Accent Media has launched an anti-cybersquatting measure that lets the world know who is trying to register what domain name a whole month before the domain is allowed to go live.
The service, at domains.watch, is currently only being used by .tickets, but it seems to be geared up to accept other TLDs too.
A spokesperson said the site soft-launched a couple months ago.
Today, if you want to register a .tickets domain name, you have a choice of two processes — “fast-track” or “standard”.
Fast-track is for organizations with trademarks matching their names. It take five days for the trademark to be verified and the domain to go live.
Standard-track applications, however, are published on domains.watch for 30 days before the the registration is fully processed (under the registry hood, the domain are kept in “Pending Create” status).

During that 30 days, anyone with a trademark they believe would be infringed by the domain may file a challenge against the registration. They have to pay a fee to do so.
The would-be registrant can counter by showing their own rights. If they have no documented rights, the challenger gets the name instead.
“Rights” in the case of .tickets means a trademark or evidence of use of a mark in a ticketing-related context.
While it’s certainly not unusual in the industry for restricted TLDs to manually vet their registrants before processing a registration, I’ve never before come across a registry that does it all in public, allowing basically anyone — or, at least, anyone who is willing to pay the challenge fee — to challenge any registration.
Can you imagine what the domain world would be like if this kind of system were commonplace across a range of TLDs?
A lot of people outside the industry — particularly in security, I fancy — would love it.

Porn firm wins .cam after years of objections

The controversial new gTLD .cam has been won at auction by Dutch porn site operator AC Webconnecting, putting an end to over two years of back-and-forth objections.
Rival applicants Rightside and Famous Four Media both withdrew their applications earlier this week.
The contest for .cam was marked by several objections and appeals.
In 2013, Verisign filed and lost String Confusion Objections against AC Webconnecting and Famous Four, but won its near-identical objection against Rightside.
Verisign had claimed that .cam and .com are so similar-looking that confusion among internet users is bound to arise.
Because the SCO panels in the three cases returned differing opinions, Rightside was one of two applicants given the right to appeal by ICANN in October 2014.
I never quite understood why Verisign wasn’t also given the right to appeal.
Rightside won the right to stay in the .cam contention set almost a year later.
Despite all that effort, it did not prevail in the resulting auction.
Separately, back in 2013, AC Webconnecting filed and lost Legal Rights Objections against its two rivals, based on a “.cam” trademark it acquired purely for the purpose of fighting off new gTLD competitors.
I’d be lying if I said I knew a lot about the soon-to-be registry.
Based in Rotterdam, its web site comes across as a wholly safe-for-work web design firm.
However, it seems to be mainly in the business of operating scores, if not hundreds, of webcam-based porn sites.
Its application for .cam states that it will be for everyone with an interest in photography, however.
When it goes live, its most direct competitor is likely to be Famous Four’s .webcam, which already has an 18-month and 70,000-domain head start.
It remains to be seen whether its clear similarity to .com will in fact cause significant confusion.

Now Uniregistry shifts to Early Access launch model

Uniregistry has become the latest registry to adopt the Early Access Period model for some new gTLD launches.
.cars, .car and .auto will all use the EAP, in place of the more typical landrush period, when they launch in January.
Technically, while Uniregistry is running the back-end, the three gTLDS are all being offered by Cars Registry, a partnership between Uniregistry and .xyz registry XYZ.com.
Uniregistry CEO Frank Schilling said it was felt that EAP was needed due to the “stupendous cost” of acquiring the strings.
EAP is a period lasting usually about a week in which the price of registering any domain descends daily from a very high fee on day one — usually above $10,000 at the storefront — to maybe a hundred bucks when the period closes.
The model was pioneered by portfolio registries Donuts and Rightside, but has since been adopted by the likes of Minds + Machines, Radix and XYZ.com.
It’s rapidly becoming the de facto industry standard for new gTLD launches, replacing the auction-based approach to landrush most registries have used in the past.
The driving factor for the industry switch is surely revenue.
Donuts told us late last month that it had sold 48,381 EAP domains across all of its launches to date, where registry prices are believed to start at around the $10,000 mark.
M+M said yesterday that it sold $1.18 million after it chose to use EAP with its recently launched .law gTLD, where registration restrictions suggest many of the sales will have been to legit end users.
Registrars also get a bigger slice of the pie. In an auction model they might wind up with just the regular registration fee, but with EAP they can mark up day one domains by thousands of dollars.
Cars Registry says its EAP is targeted at “OEMs, dealerships, vendors”, but it will almost certainly get a healthy chunk of domainer interest too.

ALAC throws spanner in ICANN accountability discussions

The At-Large Advisory Committee has yanked backing for a key ICANN accountability proposal.
The ALAC, on of ICANN’s policy advisory groups, this afternoon voted unanimously “to withdraw support for the Membership model” at ICANN 54 in Dublin.
The Membership model is a proposal out of the Cross Community Working Group on Accountability (CCWG) that would change ICANN’s legal structure to one of formal membership, where a Sole Member gets legal rights to enforce accountability over the ICANN board of directors.
The model has some fierce support in the CCWG, but over the last few days in Dublin the group has started to explore the possibility of a “Designator” model instead.
That would be a weaker accountability model than one based on membership, but stronger than the “Multistakeholder Enforcement Mechanism” proposed by the ICANN board.
ALAC chair Alan Greenberg said in a statement to the CCWG mailing list:

In its formal response to the CCWG-Accountability proposal issued in August 2015, the ALAC said that it could support the model being proposed, but preferred something far less complex and lighter-weight, and that we saw no need for the level of enforceability that the proposal provided. Moreover, the ALAC had specific concerns with the budget veto and the apparent lack of participation of perhaps a majority of AC/SOs.
In light of the reconsideration of a designator model by the CCWG, along with the recommendations of the Saturday morning break-out sessions, the ALAC felt that a revised statement was in order. Accordingly we decided, by a unanimous vote of the 14 ALAC members present (with 1 not present), to withdraw support for the Membership model.
I want to make it clear that this is not a “red line” decision. Should a Membership model become one that is generally advocated by the CCWG, and supported by a supermajority of Board directors (who ultimately MUST support any changes that they will be called upon to approve, else they would be in violation of their fiduciary duty), then the ALAC reserves its right to support such a model.

The move revises the battle lines in the ongoing accountability debate. It’s no longer a simple case of CCWG versus ICANN board.
Dublin is a crunch time for the accountability proposals.
The clock is ticking — if the ICANN community cannot agree on a consensus proposal soon it risks delaying the transition of the IANA functions from US government oversight and possibly killing off the transition altogether.
Yet, while the CCWG is making steady progress cleaning up remaining areas of disagreement, the differences between itself and the board are still as sharp as ever.

ICANN: we won’t force registrars to suspend domains

In one of the ongoing battles between registrars and the intellectual property lobby, ICANN’s compliance department seems to have sided with the registrars, for now.
Registrars will not be forced to suspend domain names when people complain about abusive or illegal behavior on the associated web sites, according to chief contract compliance office Allen Grogan.
The decision will please registrars but will come as a blow to the likes of music and movie studios and those who fight to shut down dodgy internet pharmacies.
Grogan yesterday published his interpretation of the 2013 Registrar Accreditation Agreement, specifically the section (3.18) that obliges registrars to “investigate and respond appropriately” abuse reports.
The IP crowd take this to mean that if they submit an abuse report claiming, for example, that a web site sells medicines across borders without an appropriate license, the registrar should check out the site then turn off the domain.
Registrars, on the other hand, claim they’re in no position to make a judgment call about the legality of a site unless presented with a proper court order.
Grogan appears to have taken this view also, though he indicated that his work is not yet done. He wrote:

Sometimes a complaining party takes the position that that there is only one appropriate response to a report of abuse or illegal activity, namely to suspend or terminate the domain name registration. In the same circumstances, a registrar may take the position that it is not qualified to make a determination regarding whether the activity in question is illegal and that the registrar is unwilling to suspend or terminate the domain name registration absent an order from a court of competent jurisdiction. I am continuing to work toward finding ways to bridge these gaps.

It’s a testament to how little agreement there is on this issue that, when we asked Grogan back in June how long it would take to provide clarity, he estimated it would take “a few weeks”. Yet it’s still not fully resolved.
His blog post last night contains a seven-point checklist that abuse reporters must conform to in order to give registrars enough detail to with with.
They must, for example, be specific about who they are, where the allegedly abusive content can be found, whose rights are being infringed, and which laws are being broken in which jurisdiction.
It also contains a six-point checklist for how registrars must respond.
Registrars are only obliged to investigate the URL in question (unless they fear exposure to malware or child abuse material), inform the registrant about the complaint, and inform the reporter what, if anything, they’ve done to remediate the situation.
There’s no obligation to suspend domains, and registrars seem to have great leeway in how they treat the report.
In short, Grogan has interpreted RAA 3.18 in a way that does not seem to place any substantial additional burden on registrars.
He’s convening a roundtable discussion for the forthcoming ICANN meeting in Dublin with a view to getting registrars to agree to some non-binding “voluntary self-regulatory” best practices.

ICANN on “knife edge” after accountability impasse

The ICANN board of directors and the community group tasked with improving its accountability have failed to come to a compromise over the future direction of the organization, despite an intense two-day argument at the weekend.
As the often fractious Los Angeles gathering drew to a close, ICANN chair Steve Crocker said that the board was sticking to its original position on how ICANN should be structured in future, apparently unmoved by opposing arguments.
Other directors later echoed that view.
The Cross Community Working Group on Accountability (CCWG) has proposed a raft of measures designed to ensure ICANN can be held to account in future if its board goes off the rails and starts behaving crazy.
Basically, it’s trying to find a back-stop to replace the US government, which intends to remove itself from stewardship of the DNS root zone next year.
A key proposal from the CCWG is that ICANN should be remade as a member organization, a specific type of legal structure under California law.
A Sole Member, governed by community members, would have to right to take ICANN to court to enforce its bylaws.
But the ICANN board thinks that’s too complicated, that it would replace the board with the Sole Member as the ultimate governing body of ICANN, and that it could lead to unintended consequences.
It’s suggested a replacement Multistakeholder Enforcement Model that would do away with the Member and replace it with a binding arbitration process.
Its model is a lot weaker than the one proposed by the CCWG.
Much of the LA meeting’s testing first day was taken up with discussion of the strengths and weaknesses of these two models.
The second day, in an effort to adopt a more collegial tone, attendees attempted to return to the basics of how decisions are made and challenged in ICANN.
The result was a discussion that dwelt slightly too long on technicalities like voting thresholds, committee make-ups and legal minutiae.
There seems to be a general consensus that the meeting didn’t accomplish much.
Towards the end of the first day, National Telecommunications and Information Administration chief Larry Stricking urged attendees to get their acts together and come up with something simple that had broad community support. He said:

At this point, we do not have a view that any particular approach is absolutely okay or is absolutely not okay. But what I can tell you is that the work that we need to see, the thoroughness, the detail, and I put this in the blog, it is not there yet. So that I don’t feel comfortable even taking what we saw in these reports and trying to opine on them because there are too many open questions

On Saturday, fellow government man Ira Magaziner, who was deeply involved with ICANN’s creation as a member of the Clinton administration, issued a stark warning.
“I think you can fail. And I think you’re right on a knife’s edge now as to whether you’ll succeed or fail,” he said.
He warned that the IANA transition is going to become a political football as the US presidential election enters its final year and unorthodox candidates (I think he means the Republican clown car) are putting forward “somewhat nationalistic” points of view.
“I think you have a limited amount of time to get this done and for the US government to consider it and pass it,” he said.
That basically means the transition has to happen before January 2017, when there’ll be a new president in the White House. If it’s a Republican, the chances of the transition going ahead get slimmer.
Sure enough, within 24 hours the first reports emerged that Republican hopeful Ted Cruz, backed up by a few other senators, is asking the Government Accountability Office whether it’s even within the power of the US executive to remove itself from the IANA process.
In a letter, Cruz asked:

1. Would the termination of the NTIA’s contract with ICANN cause Government property, of any kind, to be transferred to ICANN?
2. Is the authoritative root zone file, or other related or similar materials or information, United States government property?
3. If so, does the NTIA have the authority to transfer the root zone file or, other related materials or information to a non-federal entity?

If this kind of anti-transition sentiment catches popular opinion, you can guarantee other jingoistic candidates will fall in line.
So ICANN’s on the clock, racing the US political process. In Magaziner’s view, the meat of the disagreements needs to be resolved by the end of the Dublin meeting — three weeks from now — or not long thereafter.
He seems to be of the view that the CCWG has overreached its remit. He said:

The task of accountability that was assigned to this group was, as the chair said this morning, to replace the ultimate backstop of the US government with a community-based backstop. The committee was not charged to completely rewrite the way ICANN works. I’m sure ICANN can be improved and there ought to be an ongoing process to improve the way it works, but this particular committee and NTIA didn’t ask you to completely redo ICANN.

The LA meeting didn’t seem to help much in moving the accountability debate closer.
On Saturday afternoon, Crocker spoke to confirm that the board is sticking to its guns in opposing the Sole Member model.
“We certainly did not understand and don’t believe that creating a superstructure to replace them [the US government] in a corporate sense was intended, desired, needed, or appropriate,” he said.
“So in the comments that we submitted some time ago, we did represent a board position. We did a quick check this morning, and 100% agreement that what we said then still stands,” he said.
That’s a reference to the board feedback on the CCWG proposal submitted September 11.
Now, the CCWG has to figure out what to do before Dublin.
Currently, it’s combing through the scores of public comments submitted on its last draft proposals (probably something that should have happened earlier) in order to figure out exactly where everyone agrees and disagrees.
It seems ICANN 54, which starts October 16, will be dominated by this stuff.

US gov: we can’t support ICANN accountability plan

The US National Telecommunications and Information Administration has waded into the ICANN accountability debate, possibly muddying the waters in the process.
In a blog post last night, NTIA head Larry Strickling said that community proposals for enhancing accountability were not yet detailed enough, and had not reached the desired level of consensus, for the NTIA to support them.
He urged everyone involved to simplify the proposals and to work on areas where there is still confusion or disagreement.
The comments were directed at the Cross Community Working Group on Enhancing Accountability (CCWG), a diverse volunteer committee that has been tasked with coming up with ways to improve ICANN accountability after the US government severs formal oversight of the IANA functions.
That group spent a year coming up with a set of draft proposals, outlining measures such as stronger, harder-to-change bylaws and improvements to the Independent Review Process.
But the main organizational change it proposed is where the most conflict has emerged.
CCWG thinks the best way to give the community a way to enforce accountability is to change ICANN into a membership organization, a certain type of legal entity under California law.
It would have a Sole Member, a legal entity peopled by members of each part of the community, which would have to right to take ICANN to court to enforce its bylaws.
The ICANN board doesn’t dig this idea one bit. Its outside attorneys at Jones Day have counseled against such a move as untested, overly complex and potentially subject to capture.
On a recent three-hour teleconference, the board proposed the Sole Member model be replaced by a “Multistakeholder Enforcement Mechanism”.
The MEM would create a binding arbitration process — enforceable in California court — through which ICANN’s supporting organizations and advisory committees could gang up to challenge decisions that they believe go against ICANN’s Fundamental Bylaws.
Since this bombshell, a key question facing the CCWG has been: is the board’s view being informed primarily by its lawyers, or has Strickling been quietly raising NTIA concerns about the proposal via back-channels?
If it’s the former, the CCWG and its own outside counsel could robustly argue the community’s corner.
If it’s the latter, it’s pretty much back to the drawing board — because if the NTIA doesn’t like the plan, it won’t be approved.
Unfortunately, Strickling’s latest blog post avoids giving any straight answers, saying “it is not our role to substitute our judgment for that of the community”.
But his choice of language may suggest a degree of support for the board’s position.

As I stated in Argentina in June, provide us a plan that is as simple as possible but still meets our conditions and the community’s needs. Every day you take now to simplify the plan, resolve questions, and provide details will shorten the length of time it will take to implement the plan and increase the likelihood that the plan will preserve the security and stability of the Internet. Putting in the extra effort now to develop the best possible consensus plan should enhance the likelihood that the transition will be completed on a timely schedule.

The emphasis on “simplicity” could be read as coded support for the board, which has repeatedly said that it thinks the Sole Member model may be too complicated for the NTIA to swallow.
Both the board and Strickling’s latest post refer back to a speech he made in Buenos Aires in June, in which he said:

If a plan is too complex, it increases the likelihood there will be issues that emerge later. Unnecessary complexity increases the possibility that the community will be unable to identify and mitigate all the consequences of the plan. And a complex plan almost certainly will take longer to implement.

Strickling certainly knows that the board has been citing these comments in its objection to the Sole Member model, so the fact that he chose to repeat them may be indicative of which way he is leaning. Or maybe it isn’t.
Either way, I think it’s going to be tough for the CCWG to easily dismiss the board’s concerns.
CCWG members are currently on planes heading to ICANN headquarters in Los Angeles for a two-day face-to-face meeting at which the chairs “expect that a large portion of our time… will be reserved to answering the tough questions”.
Many believe that unless this meeting is extraordinarily successful, it’s going to be tough for an IANA transition proposal to be approved by the NTIA under the current US administration.

M+M lays off dozens in focus on S&M, promises profit next year

Minds + Machines has outlined its plan to refocus its business on sales and marketing, which has already resulted in a couple dozen job losses, as the latest stage of its profit runway.
The new gTLD company also outlined plans to return about half of its cash reserves — mostly obtained by losing new gTLD auctions — to its shareholders.
For the first half of the year, the London-listed company reported an EBITDA loss of $1.2 million, compared to income of $5.7 million a year earlier, on revenue that was up to $3.6 million from $113,000 in the comparable 2014 period.
The company said it is “committed to achieving its stated goal of crossing over into profitability in 2016” and blamed high operating costs for the loss, but said it has been restructuring to help it return to profit.
M+M said its headcount has been reduced from 58 to 44, but that it has added ten jobs in sales and marketing, which seems to indicate at least 24 people recently lost their jobs.
The bottom line was also affected by the fact that most of the company’s cashflow to date has been generated by auction losses, and there were more of those last year than this.
The company hit three of its six “key performance indicator” targets — domains under management market share, premium sales growth and standard sales growth — but fell short of the other three.
Average revenue per name for premiums was $184 versus a $200-$225 target, and average revenue per standard name was down from $28 to $10, largely due to a deep discount promotion for .work domains. Higher prices for soon-to-launch .law could increase the average, M+M said.
The company also announced that it will spent £15 million ($23.1 million) of its cash reserves on a share buyback.
That’s almost half of the $48.3 million is has in the bank. This time last year, M+M’s share price peaked at 12p; it’s currently at 8.55p.
The price saw a spike in May, shortly before then-chairman Fred Krueger was asked to resign by the board. Krueger has since sold off the majority of his substantial shareholding, despite explicitly saying that he would not.

New gTLDs growing faster than .com, latest Verisign data shows

New gTLDs grew faster than .com in the last 12 months.
That seems to be one of the conclusions that can be drawn from Verisign’s Q2 Domain Name Industry Brief, which was published (pdf) yesterday, if you dig into the numbers a little.
The headline number is that the number of all domains across all TLDs was 296 million, up sequentially by 2.2 million domains. That’s annual growth of 16.4 million domains, Verisign said.
I thought it might be interesting to see where that growth came from, so I plugged the numbers from Verisign’s last five DNIB reports into a spreadsheet, reproduced in this table.
[table id=35 /]
From these numbers, we can calculate the quarterly sequential growth, measured in domains, for the whole DNS, for .com, for new gTLDs and for ccTLDs.
That table looks like this:
[table id=37 /]
It appears from this table that .com grew by more domains than new gTLDs over the last year — 4.8 million versus 4.36 million — but the numbers are a bit misleading due to the way Verisign sources its data.
For most ccTLDs, Verisign has always used the third-party research outfit ZookNic, which has its own way of estimating registration volumes.
For new gTLDs, Verisign uses the zone files as published daily by ICANN — the same source DI and others use to measure volume.
However, for .com Verisign uses its own in-house data source. It is, after all, the .com registry.
The numbers for .com you find in the DNIB reports are exactly the same as the numbers Verisign gives financial analysts and investors when it reports its quarterly earnings.
And the company changed the way it reports those numbers in Q1 this year.
See that unusually high addition of 2.2 million names in .com in Q1 in the above table? That reflects the addition of very nearly 750,000 hidden .com names in March this year.
At that time, Verisign started counting domains that are on “hold” statuses, largely due to new ICANN policies on unverified Whois information.
The last two DNIB reports have sourced .com numbers with this disclosure:

The domain name base is the active zone plus the number of domain names that are registered but not configured for use in the respective Top-Level Domain zone file plus the number of domain names that are in a client or server hold status.

The actual Q1 growth number for .com should in the 1.4 million to 1.5 million range, which would bring .com’s total growth over the last four quarters down to roughly 4.1 million names.
An apples-to-apples comparison of extant zone-file domain growth would show new gTLDs beating .com, in other words.
But is this a fair measure of demand?
No. It’s fairer to say that .com still outsells its competition by a long way.
New gTLDs had yet to experience any significant churn by Q2 this year, as most had been on the market for under a year, so the growth numbers are more or less untempered by the renewal cycle.
While Verisign’s .com growth is net, for new gTLDs it’s almost all gross.
Verisign says in the latest DNIB has it had 8.7 million new registrations across .com and .net in the second quarter, which would be roughly eight times as many as new gTLDs — all several hundred of them combined — managed to move.