Could you survive a .sucks UDRP?

If you register a .sucks domain matching a brand, could you survive a subsequent UDRP complaint? Opinion is mixed.
In my view, how UDRP treats .sucks registrants will be a crucial test of Vox Populi Registry’s business model.
Vox Populi Registry clearly envisages — and is actively encouraging with its policies — genuine critics, commentators and consumer advocates to register .sucks domains that match famous trademarks.
I really like this idea. Power to the people and all that.
But will UDRP panelists agree with me and Vox Pop? Cybersquatting case law under UDRP says, very firmly: “It depends.”
Statistics generally favor mark owners
To date, there have been exactly 100 resolved UDRP complaints against domains that end in “sucks.com”.
Of those, 47 cases ended up with a full transfer of the domain to the trademark owner. Only 30 resulted in a the complaint being denied.
Another 19 cases were withdrawn or terminated; the remainder were split decisions.
So it seems, based on historical “sucks” cases, that the odds favor trademark owners.
But each case is, theoretically at least, judged on its merits. So it does not necessarily hold that most .sucks UDRP complaints will be successful.
What does WIPO say?
The World Intellectual Property Association, which administers most UDRP cases, published a set of guidelines for its panelists.
Some guidelines specifically addresses “sucks” sites, but the advice is not always clear-cut.
There are three elements to UDRP. First, the complainant must show that the domain name in question is identical or confusingly similar to its trademark.
According to WIPO, it’s the “consensus view” of UDRP panelists that adding “sucks” to a trademark at the second level does NOT stop a domain being confusiningly similar. WIPO says:

Generally, a domain name consisting of a trademark and a negative or pejorative term (such as [trademark]sucks.com) would be considered confusingly similar to the complainant’s trademark for the purpose of satisfying the standing requirement under the first element of the UDRP (with the merits of such cases typically falling to be decided under subsequent elements). Panels have recognized that inclusion of a subsidiary word to the dominant feature of a mark at issue typically does not serve to obviate confusion for purposes of the UDRP’s first element threshold requirement, and/or that there may be a particular risk of confusion among Internet users whose first language is not the language of the domain name

Some panels have disagreed with this prevailing view, however.
It remains to be seen whether moving the string “sucks” to the right of the dot would affect the outcome, but it’s established UDRP case law that the dot in a domain can be pretty much ignored when testing for similarity.
The TLD a domain uses can be taken into account if it’s relevant or disregarded if it is not, according to precedent.
The second test under UDRP is whether the registrant of the domain has legitimate rights or interests.
Panelists disagree on this point. WIPO says:

The right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant’s trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e., [trademark.tld]) as that may be understood by Internet users as impersonating the trademark owner.

That view would seem to apply specifically to the use cases Vox Pop has in mind — the registry wants critics to own [trademark].sucks domains in order to criticize the trademark owner.
In the 2003 case of natwestbanksucks.com, the WIPO panel drew on earlier precedent to find that the registrant had no rights to the domain.

Respondents’ can very well achieve their objective of criticism by adopting a domain name that is not identical or substantially similar to Complainants’ marks. Given the free nature of the media which is the Internet and the chaotic spamming that has become epidemic, it does not appear that one can be at full liberty to use someone else’s trade name or trademark by simply claiming the right to exercise a right to freedom of expression”.

In other words: you may have a right to free speech on the internet, but you do not have the right to exercise it simply by adding “sucks” to a famous trademark.
But other UDRP panelists have disagreed. WIPO says that some panelists have found:

Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial.

The third element of UDRP is bad faith. Complainants have to show that the registrant is up to something dodgy.
Some panelists have a pretty low threshold for what constitutes bad faith. Merely having the page parked — even if you did not park it yourself — can point to bad faith, especially in “sucks” cases.
WIPO says that “tarnishment” of a trademark — such as posting porn, which is banned under Vox Pop’s AUP anyway — can be bad faith, but legitimate criticism would not usually:

While it would not normally extend to the mere posting of information about a complainant, or to the posting of genuine, non-commercial criticism regarding the trademark holder, it may extend to commercially motivated criticism by (or likely on behalf of) a competitor of such trademark holder.

So, with all that in mind, here are some tips for improving your odds of surviving a .sucks UDRP.
How to beat a .sucks UDRP
Poring over dozens of “sucks.com” decisions, it quickly becomes clear that there are certain things you should definitely do and not do if you want to keep a hold of your brand-match .sucks domain.
Given the volume of precedent, you’ll have a hard time showing that your domain is not identical or confusingly similar to the trademark in question — strike one — but there are ways to show legitimate interests and rebut claims of bad faith.
1. Respond
To show you lack legitimate interests, the complainant only needs to make a face-value argument that you do not. Then the burden of proof to show rights switches to you.
If you don’t respond to the UDRP, the panel will find you lack rights. Panelists rarely try to fight the corner of a registrant who has not responded.
That’s strike two.
2. Don’t allow your domain to be parked
If a domain is parked, UDRP panelists in “sucks.com” cases invariably find that the registrant lacks legitimate interests and has shown bad faith.
Parking is considered a commercial activity, so you won’t be able to argue convincingly that you’re exercising your right to non-commercial free speech if your domain is splashed with links to the trademark owner’s competitors.
This holds true even if the domain was automatically parked by your registrar.
Dozens (hundreds?) of UDRP cases have been lost because Go Daddy parked the newly registered domain automatically, enabling the complainant to show commercial use.
Panelists are usually happy to overlook the lack of direct bad faith action by the registrant in such cases.
Parking will usually lead to strikes two and three.
In the case of .sucks, parking is actually banned by Vox Populi’s acceptable use policies (pdf).
But the registry will only enforce this policy if it receives a complaint. I don’t know if the Registry-Registrar Agreement, which isn’t public, prohibits registrars auto-parking new domains.
3. Develop a site as soon as possible
In some “sucks.com” cases, respondents have argued that they had intended to put up a criticism site, but could not provide evidence to back up the claims.
If you register a .sucks matching a trademark, you’ll want to put up some kind of site ASAP.
In the case of kohlersucks.com, the registrant had merely framed a Better Business Bureau web page, which was found to show non-commercial criticism use.
4. Don’t offer to sell the domain
It should go without saying that offering to sell the domain to the trademark owner shows bad faith; it looks like extortion.
Panelists regularly also find that registrants give up their legitimate rights to a domain as soon as they make it available to buy.
5. Don’t make any money whatsoever
The second you start making money from a domain that matches a trademark, you’re venturing into the territory of commercial use and are much more likely to fail the WIPO test of “genuine, non-commercial criticism”.
6. Be American
Depressingly, you stand a better chance of fighting off a UDRP on free speech grounds if both the case involves US-based parties and a US-based panelist.
Panelists are more likely to draw on the US Constitution’s First Amendment and associated non-UDRP case law when determining rights or legitimate interests, when the registrant is American.
Merely registering with a US-based registrar is not enough to confer First Amendment rights to a registrant living outside of the US, according to UDRP panels.
Even though freedom of speech is a right in most of the world, in the universe of UDRP it seems the rest of us are second-class citizens compared to the yanks.

1 Comment Tagged: cybersquatting, new gTLDs, sucks, trademarks, udrp, urs, vox populi

CentralNic signs first legacy gTLD

CentralNic has become the new back-end registry provider for .coop, a gTLD that was approved by ICANN almost 15 years ago.
The decision by DotCooperation comes after original back-end Midcounties Co-operative Domains decided to get out of the business, according to the registry.
In a statement, DotCooperation said:

We would like to advise our registrars that we have started the preparations for migrating .coop to the new registry operator system and we aim to be fully transitioned by early April in order to make sure that Registrars have 30 days notice in respect of these changes

The transition won’t affect many registrars — only about a dozen currently have .coop domains under management.
The registry said most of them already have relationships with CentralNic.
It’s CentralNic’s first back-end deal for a legacy, pre-2012 gTLD.
The company is also taking over DNS for the TLD, replacing Dyn.
The .coop space, which is restricted to co-operatives, only has about 8,000 domains. If it were a new gTLD, it would rank around 100 by volume.

1 Comment Tagged: .coop, centralinic, dotcooperation

Watch this jaw-dropping .sucks promo vid

Is .sucks just a domain name registry? A way to extort money from trademark owners?
No, it’s the about “life, liberty and the pursuit of happiness”, the kind of thing civil rights movement leaders including Martin Luther King and Jesse Jackson could get behind.
At least, that’s the message in the jaw-dropping debut promo video for the new gTLD .sucks, which hits sunrise at the end of the month.
You may not instinctively associate registering a domain name with, say, Rosa Parks refusing to comply with Alabama’s racist segregation laws in the 1950s, but that’s what Vox Populi Registry is inviting you to do.

The video opens with stock news footage of MLK and various civil rights marches, accompanied by what seems to be audio from one of King’s speeches.
The video goes on to intermingle archive footage with nauseating B-roll padding, until we discover that none other than former US presidential candidate Ralph Nader loves .sucks.
He’s provided what seems to be an official endorsement, saying in part:

Most of the great changes in our planet’s history come from less than 1% of the people. For many changes in our country and the world, it’s a lot easier than we think. The word “sucks” is now a protest word, and it’s up to people to give it more meaning.

Nader is not as random a celebrity endorser as you might imagine. Fifteen years ago he wrote to ICANN to specifically endorse the creation of .sucks.
What do you think of the video? Clever? Inspiring? Funny? Tasteless? Offensive? Or just baffling?

12 Comments Tagged: sucks, vox populi

Google leaks 282,000 private Whois records

Google has accidentally revealed registrant contact information for 282,867 domain names that were supposed to be protected by a privacy service.
The bug reportedly affected 94% of the 305,925 domains registered via Google Apps, an eNom reseller.
The glitch was discovered by Cisco and reported to Google February 19. It has since been fixed and customers were notified yesterday.
Google acknowledged in an email to customers that the problem was caused by a “software defect in the Google Apps domain renewal system”.
It seems that anyone who acquired a domain with privacy through Google Apps since mid-2013 and has since renewed the registration will have had their identities unmasked in Whois upon renewal.
Names, addresses, emails and phone numbers were revealed.
Due to services such as DomainTools, which cache Whois records, there’s no putting the genie back in the bottle. The information is out there for good now.
It’s a pretty major embarrassment for Google, which recently launched its own registrar.

Comment Tagged: enom, google, google apps, privacy, whois

Here’s why trademark owners will think .sucks sucks

Vox Populi Registry is to launch its .sucks gTLD at the end of the month, and its plans are likely to piss off trademark owners no end.
As previously reported, the company has backpedaled on its idea of pricing its sunrise period names at $25,000 per name per year, but it’s introducing some new concepts that seem almost designed to get hackles up in the IP community.
From March 30 to May 29, any company with a trademark registered in the Trademark Clearinghouse will be able to buy their matching .sucks domains at sunrise for $2,499. That’s also the annual renewal fee.
It’s a tenth of the price previously touted, but still pretty steep even by sunrise standards.
Vox Pop isn’t doing anything particularly unusual with its sunrise, which is governed by policies closely regulated by ICANN.
But its big new idea is its “Sunrise Premium” list, a list of strings dominated by famous trademarks.
Vox Pop CEO John Berard told DI yesterday that the Sunrise Premium list has been compiled from strings registered or blocked in other TLDs’ sunrise periods.
While he declined to characterize it as a list of trademarks, he acknowledged that it will be trademark-heavy.
If your mark is on this list, you will never be able to get a .sucks domain at the regular general availability retail price of $249 a year. It will always be $2,499 a year.
Despite the name, Sunrise Premium names are only available during general availability, which begins June 1.
On the one hand, this mandatory premium pricing for the world’s most well-defended marks appears to have benefits for some trademark owners.
While Sunrise Premium names are not restricted to owners of matching marks, the $2,499 fee applies whether you’re the mark owner, a legitimate third-party registrant, or a cybersquatter.
So the high price looks like a deterrent to cybersquatting, suggesting that Vox Pop is fighting from the IP corner.
But then we discover that Sunrise Premium names will never be eligible for the .sucks “Block” service — similar to .xxx’s Sunrise B, a Block is a non-resolving registry reservation — which is expected to retail at a discounted $199 per year.
Berard said that the registry wants to encourage use.
“If you are on the Sunrise Premium list or want a premium name, those can’t be blocked,” Berard said. “It’s all part and parcel of us trying to put more power in the hands of individuals and to cultivate a commitment on behalf of the commercial world to participate in the dialogue.”
But the fact remains: if you have a track record of defensively registering your trademark, Vox Pop is essentially penalizing you with higher fees.
Feel those hackles rising yet?
Vox Pop’s stated goals are to give companies a way to manage customer feedback and individuals a way to exercise their rights to criticize.
“A company would be smart to register its name because of the value that consumer criticism has in improving customer loyalty, delivering good customer service, understanding new product and service possibilities,” Berard said.
“They’re spending a lot more on marketing and customer service and research. This domain can another plank in that platform,” he said. “On the other hand, we also want to make sure that these names are also accessible to individuals who have something to say.”
Companies on the Sunrise Premium list have an additional thing to worry about: the .sucks Consumer Advocate Subsidy, which will bring the price of a .sucks domain down to $9.95 per year.
The subsidy will only be available to registrants unaffiliated with the trademark-owning company, and they’ll have to direct their domains to a discussion forum platform called Everything.sucks.
Berard said Everything.sucks will be operated by a third party, but could not yet disclose the details.
The subsidy program will be available on regular and Sunrise Premium names, but not Sunrise names. It is not expected to launch until September.
It’s not yet clear how flexible and configurable the service will be.
It seems likely that if somebody wants to write a blog, say, criticizing a certain company, product, service or public figure, they will incur the usual $249 annual reg fee.
It’s not exactly “free” speech.
On the whole, the finalized policies and fees may look like they’re specifically designed to irk the IP lobby, but they do seem to be aligned with Vox Pop’s mission statement.
If you’re of the view that trademark owners should have the sole right to use the string matching their mark as a domain name, you’re likely to be unhappy with what Vox Pop is doing.
If, on the other hand, you’re an advocate of the right of every free person to stick it to The Man, you may view the policies more favorably.
Either way, it could be a money-spinner for Vox Pop.
I’m expecting .sucks to be only the third new gTLD to top 1,000 sunrise registrations (assuming .porn and .adult will be the first).
Assuming the registry’s slice of the $2,499 fee is over $2,000, the company is looking to clear in excess of $2 million in annually recurring sunrise revenue alone.

4 Comments Tagged: blocks, ICANN, new gTLDs, sucks, sunrise, sunrise premium, trademarks, vox populi

Nominet to give nod to .uk privacy services

Nominet plans to start accrediting proxy/privacy services in .uk domain names, and to make it easier to opt-out of having your full contact details published in Whois.
The proposed policy changes are outlined in a consultation opened this morning.
“We’ve never recognized privacy services,” director of policy Eleanor Bradley told DI. “If you’ve registered a .uk with a privacy service, we consider the privacy service to be the registrant of that domain name.”
“We’ve been pretending almost that they didn’t exist,” she said.
Under the proposed new regime, registrars would submit a customer’s full contact details to Nominet, but Nominet would publish the privacy service’s information in the domain’s Whois output.
Nominet, getting its hands on the customer data for the first time, would therefore start treating the end customer as the true registrant of the domain.
The company says that introducing the service would require minimal work and that it does not intend to charge registrars an additional fee.
Currently, use of privacy services in .uk is pretty low — just 0.7% of its domains, up from 0.09% a year ago.
Bradley said such services are becoming increasingly popular due to some large UK registrars beginning to offer them.
One of the reasons for low penetration is that quite a lot of privacy is already baked in to the .uk Whois database.
If you’re an individual, as opposed to a “trading” business, you’re allowed to opt-out of having any personal details other than your name published in Whois.
A second proposed reform would make that opt-out available to a broader spectrum of registrants, Nominet says.
“We’ve found over the last few years that it’s quite a hard distinction to draw,” Bradley said. “We’ve had some criticisms for our overly strict application of that.”
In future, the opt-out would be available according to these criteria:

i. The registrant must be an individual; and,
ii. The domain name must not be used:
a) to transact with customers (merchant websites);
b) to collect personal data from subjects (ie data controllers as defined in the Data Protection Act);
c) to primarily advertise or promote goods, services, or facilities.

The changes would allow an individual blogger to monetize her site with advertising without being considered a “trading” entity, according to Nominet.
But a line would be drawn where an individual collected personal data on users, such as email addresses for a mailing list, Bradley said.
Nominet says in its consultation documents:

Our continued commitment to Nominet’s role as the central register of data will enable us to properly protect registrants’ rights, release contact data where necessary under the existing exemptions, and maintain public confidence in the register. It acknowledges that some registrants may desire privacy, whilst prioritising the core function of the registry in holding accurate records.

The proposals are open for comments until June 3, which means they could potentially become policy later this year.

Comment Tagged: .uk, nominet, privacy, whois

Rightside to release 20,000 two-character domains

A week from now, new gTLD registry Rightside is to release over 20,000 two-character domain names.
The releases will come across all of its delegated gTLDs, but exclude letter-letter combinations.
Only letter-number, number-letter and number-number combinations will be available, following ICANN’s partial lifting of the ban on two-character domains back in December.
Strings such as “a1”, “2b” and “69” will presumably become available.
Rightside said the domains will be sold on a first-come, first-served basis, with prices ranging from $200 to $50,000.
The registry has almost 30 delegated new gTLDs, including .auction, .software, .lawyer, .sale and .video.
If you’re interested, set your alarms for 1700 UTC on March 18. That’s when all 20,000 drop.
Two-letter domains are still reserved, pending the outcome of ICANN’s government-delayed release process.

5 Comments Tagged: ICANN, new gTLDs, rightside, two-character

Adware dominating popular new gTLD ranks

Afilias’ .kim has become the latest victim (beneficiary?) of adware, as robo-registrations boost the gTLD’s zone file and apparent popularity.
It’s the latest new gTLD, after .xyz and .country, to see its rankings soar after hundreds of gibberish, bulk-registered domains started being used to serve ads by potentially unwanted software.
.kim is today the 4th most-popular new gTLD, with 85 domains in the top 100,000 on the internet and 264 in the top one million.
A month ago, it had a rank of 223, with just 16 domains in the top one million.
The domain names involved — gems such as oatmealsmoke.kim, vegetableladybug.kim and tubhaircut.kim — have seen a boat-load of traffic and rocketing Alexa rank.
The reason for the boost seems to be a one-off bulk registration of about 1,000 meaningless .kim domain names in early February, which now appear to be being used to serve ads via adware.
In this chart (click to enlarge), we see .kim’s zone file growth since the start of 2015.

The spike on February 5, which represents over 1,000 names, is the date almost all of the .kim names with Alexa rank were first registered.
They all appear to be using Uniregistry as the registrar and its free privacy service to mask their Whois details.
These domains often do not resolve if you type them into your browser. They’re also using robots.txt to hide themselves from search engines.
But they’ve been leaving traces of their activity elsewhere on the web, strongly suggesting their involvement in adware campaigns.
It seems that the current (ab?)use of .kim domains is merely the latest in a series of possibly linked campaigns.
I noted in January that gibberish .country domains — at the time priced at just $1 at Uniregistry — were suddenly taking over from .xyz in the popularity charts.
The following three charts, captured from DI PRO’s TLD Health Check, show how the three TLDs’ Alexa popularity rose and fell during what I suspect were related adware campaigns..
First, .xyz, which was the first new gTLD to show evidence of having robo-registrations used in adware campaigns, saw its popularity spike at the end of 2014 and start of 2015:

Next, Minds + Machines’ .country, which saw its zone file spike by 1,500 names around January 6, starts to see its Alexa-ranked total rocket almost immediately.
.country peaks around February 9, just a few days after the .kim robo-registrations were made.

Finally, as .country’s use declines, .kim takes over. Its popularity has been growing day by day since around February 13.

I think what we’re looking at here is one shadowy outfit cycling through bulk-registered, throwaway domain names to serve ads via unwanted adware programs.
It seems possible that domains are retired when they become sufficiently blocked by security countermeasures, and other domains in other TLDs are then brought online to take over.
None of this necessarily reflects badly on any of the new gTLDs in question, or even new gTLDs as a whole, of course.
For starters, I’ve reason to believe that TLDs such as .eu and .biz have previously been targeted by the same people.
The “attacks”, for want of a better word, are only really noticeable because the new gTLDs being targeted are young and still quite small.
It takes much longer to build up genuine popularity for a newly launched web site than it does to merely redirect exist captive traffic to a newly registered domain.
What it may mean, however, is that .kim and .country are going to be in for statistically significant junk drops about a year from now, when the first-year registrations expire.
For .kim, 1,000 names is about 14% of its current zone file. For .country, it’s more like a quarter.
The daily-updated list of new gTLD domains with Alexa rank can be explored by DI PRO subscribers here. The charts in this post were all captured from the respective TLD’s page on TLD Health Check.

2 Comments Tagged: .country, .kim, .xyz, adware, Minds + Machines, new gTLDs, rewardzone, security, uniregistry, xyz.com

.porn now the biggest new gTLD sunrise

.porn and .adult have taken the crown of the most-subscribed new gTLD sunrise periods to date.
The two ICM Registry spaces opened up for registrations from users of the Trademark Clearinghouse on March 2.
A little over a week later, the company tells DI that both gTLDs have individually exceeded the previous sunrise record holder.
My understanding is that .london was the new gTLD with the most sunrise registrations, selling just over 800 names to TMCH customers during its combined sunrise/landrush, which ended last July.
ICM revealed in a webinar last week that it expected its new gTLDs to have to biggest sunrise numbers to date.
“Both .porn and .adult will have exceeded that [.london] number comfortably,” ICM president Stuart Lawley confirmed to DI today.
.adult is “almost neck and neck” with .porn, Lawley said.
The numbers are still pretty small compared to ICM’s 2003-round gTLD, .xxx, which had over 80,000 sunrise applications in October 2011.
They’re also pretty small compared to the TMCH’s overall number of registrations, which at the last public disclosure was a little under 35,000.
But ICM has another couple opportunities for trademark owners to defensively register that may work out cheaper.
First, from April 6 to April 30 companies that bought non-resolving “blocked” names in the .xxx Sunrise B will be able to block the same strings in .porn and .adult.
ICM says registrars are offering discounts for five-year blocks.
Then, from May 6 to May 31 the Domain Matching program starts. That’s open to any .xxx registrant, defensive or otherwise, but not to those with .xxx Sunrise B blocks.

2 Comments Tagged: .adult, icm registry, new gTLDs, porn, sunrise, tmch, trademarks, xxx

.xxx to sell at .com prices to pump .porn launch

ICM Registry is to offer .xxx domain names at dramatically reduced prices, which could be in line with .com pricing at some registrars, for the month of April.
At least one registrar plans to offer .xxx names at about $13 for the duration of the offer.
.porn and .adult are set to go to general availability June 4. Before then, there will be a series of launch phases aimed at giving trademark owners and .xxx registrants plenty of opportunity to defensively register.
One phase, Domain Matching, will run from May 6 to May 31.
During DM, owners of .xxx names will be able to get their matching .porn and .adult domains (assuming they haven’t been claimed in the prior sunrise periods) at a reduced fee.
The discount period in April will enable registrants to pre-qualify for .porn’s Domain Matching by buying .xxx names at a much reduced price.
.porn and .adult prices during general availability are expected to be the same as in .xxx, which retails for around $100 ($62 going to ICM).
I don’t know what ICM’s registry fee during the discount period is, but the registrar EnCirca said it plans to sell a bundle of .xxx, .porn and .adult for $39 during April, which works out to $13 each.
EnCirca and 101domain appear to be pricing DM for a registration in a single TLD at about $19.
ICM’s gesture follows its admission in November that .xxx registrants would not get the free, perpetual block of matching .porn and .adult names that the registry had originally planned to offer.
The company has run a deep-discount program once before, in May 2013, when it sold .xxx at .com prices and saw 13,136 adds, compared to 1,131 in the previous month.

Comment Tagged: .adult, domain matching, encirca, icm registry, porn, xxx