Fox files cybersquatting complaint on .xxx domain

Twentieth Century Fox appears to have filed a UDRP complaint over the domain name foxstudios.xxx.
The domain, which does not currently resolve, was registered to a Connecticut man in December, shortly after ICM Registry took .xxx into general availability.
It’s the fifth UDRP case in the .xxx space since late December. The others are richardbranson.xxx, valero.xxx, heb.xxx and markafoni.xxx.
While it’s a National Arbitration Forum complaint – so the identity of the complainant has not yet been disclosed – Fox Studios is a Fox subsidiary that does business at foxstudios.com.
A bit of Googling reveals that Fox Studios was also the name of a gay porn production company that won some awards in the late 1990s. Its DVDs are still for sale from several sites.
So it may not be a slam-dunk UDRP win for Fox in this case. If the registrant bothers to respond to the complaint he could probably make a decent case that it was not a bad-faith registration.
(UPDATE: Thanks to @mneylon for pointing out that foxstudios.xxx is for sale on eBay with a buy-now price of $1.9 million. Ergo: the squatter’s gonna lose.)
Incidentally, foxstudios.net appears to be owned by a small but legitimate photography business in Michigan, which I think is a perfect example of how two companies can happily share a brand using different TLDs.

Comment Tagged: cybersquatting, fox, fox studios, foxstudios.xxx, udrp

Tiny start-up secures .bank gTLD trademark

A likely new gTLD applicant has secured a US trademark on the term “.bank”.
Asif LLC, a Wisconsin start-up with an undisclosed number of employees, won approval for the trademark 4,085,335 on Tuesday, for use in “domain name registration services”.
(UPDATE: Asif actually does business now as Domain Security Company LLC, but the trademark application was filed under its former name.)
As Domain Name Wire reported last year, Asif became a Go Daddy reseller in order to provide the US Patent & Trademark Office with proof it was using the brand.
It appears the gambit was successful, and the company now has a card to play in its inevitable battle with other .bank applicants, such as the BITS/American Bankers Association project.
Mary Iqbal, Asif’s CEO, told DomainIncite today that the company also has a trademark pending in Pakistan, where it has existing business connections.
Iqbal says she’s serious about her .bank application. It’s an idea she’s been working on for a few years.
Asif has been talking to security companies about providing the security infrastructure for the gTLD and has already signed up with a registry back-end provider, she said.
All she was prepared to disclose at the moment is that one of these partners has “ground-breaking encryption technology” and that the company has solid plans for its security profile.
The .bank gTLD would of course be limited to manually verified financial institutions, Iqbal confirmed.
Explaining the reseller site used to get the trademark, Iqbal said: “We intend to use that in future to sell .bank domain names but for now we’re selling names in other TLDs.”
Asif also has a pending US trademark on “.secure”, which it also plans to apply for as a gTLD.
Iqbal said that the company plans to offer small and medium sized e-commerce businesses extra security services if they redirect their customers to their .secure domain at the checkout.
While I am unaware of any other public .secure applicants, the .bank gTLD is expected to be contested.
A joint project of the American Bankers Association and BITS, part of the Financial Services Roundtable, has already essentially confirmed that it plans to apply for .bank and possibly two other financial gTLDs, using Verisign as its back-end.
“We don’t know for sure if they’re going to apply for .bank,” Iqbal said, however. “If somebody else does apply, all I can say that we are the legal rights holder for .bank.”
Holding a trademark on a term gives companies the right to file a Legal Rights Objection against new gTLD applicants.
However, as much as I love an entrepreneur, I estimate the chances of Asif getting its .bank application approved at roughly zero, trademark or not.
There are about half a dozen different reasons Asif would probably not pass the Legal Rights Objection test, which would leave it in a contention set with other .bank applicants.
The final mechanism offered by ICANN to resolve contested gTLDs is an auction, and nobody goes into an auction against the American Bankers Association expecting to win.
ICANN also encourages applicants in contention sets to talk it out amongst themselves before resorting to auction. If Asif is lucky, a rival .bank applicant will pay it to go away before the string goes to auction.
If it’s very lucky, somebody will acquire the trademark before the company – which Iqbal said is already funded but would welcome additional investment – splashes out $185,000 on its application fee.
The Asif .bank application also stands a substantial chance of being objected to by governments.
ICANN’s Governmental Advisory Committee, and in particular the influential US representative, has very strong views on gTLDs purporting to represent regulated industries.
If the GAC is faced with a choice between a .bank backed by the ABA and BITS with a Verisign back-end, and one backed by a tiny Wisconsin start-up, I believe there’s a pretty good chance the Wisconsin start-up is going to find itself on the receiving end of a GAC Advice objection.
Just a hunch.

3 Comments Tagged: .bank. .secure, american bankers association, asif, bits, domain security company, front-running, go daddy, trademarks, verisign

Outrage as bookshop drops apostrophe

The lunatic fringe of the British press is having a field day today with the news that high-street bookseller Waterstone’s has changed its name to Waterstones.
The apostrophe has been dropped to make the brand more domain name friendly, according to managing director James Daunt.
“Waterstones without an apostrophe is, in a digital world of URLs and email addresses, a more versatile and practical spelling,” he reportedly said.
The Daily Mail, never a rag to avoid pandering to traditionalists, said the rebranding “sparked outrage among customers and punctuation experts”
It quoted the chairman of the Apostrophe Protection Society (which apparently actually exists) as saying “it’s just plain wrong”, missing a sitting duck opportunity for a funny typo.

3 Comments Tagged: waterstones

Two new vice presidents at ICANN

ICANN has appointed two new vice presidents to head up its European and Latin American offices.
British former civil servant Nigel Hickson, who ICANN says has experience working in European Union politics, is the new VP for Europe.
Rodrigo de la Parra, the newly appointed VP for Latin America, is an internal promotion. Since January 2011 he has been ICANN’s Regional Liaison for Latin America.
He formerly held senior positions within Mexican telecommunications regulator Cofetel and was Mexico’s representative on ICANN’s Governmental Advisory Committee.
Both positions are new. The VP of Europe job was originally given to French software executive Thomas Spiller, but he quit before he even started last August.

Comment Tagged: ICANN

GAC gets more power to block controversial gTLDs

While the new version of ICANN’s new generic top-level domains Applicant Guidebook contains mostly tweaks, there’s a pretty big change for those filing “controversial” applications.
The Guidebook now grants the Governmental Advisory Committee greater powers to block gTLD applications based on minority government views.
ICANN has adopted poorly-written, ambiguous text approved by the GAC at its meeting in Dakar last October, which lowers the threshold required to force the ICANN board to consider GAC advice.
The changes essentially mean that it’s now much easier for the GAC to force the ICANN board to the negotiating table if a small number of governments object to a gTLD application.
In the September Guidebook, a GAC consensus objection was needed to force the ICANN board to manually approve controversial applications. Now, it appears that only a single country needs to object.
This is the relevant text:

The GAC advises ICANN that there are concerns about a particular application “dot-example.” The ICANN Board is expected to enter into dialogue with the GAC to understand the scope of concerns. The ICANN Board is also expected to provide a rationale for its decision.

Applications for .gay, of which there are expected to be at least two, will almost certainly fall into this category.
If you’re applying for a potentially controversial gTLD, you can thank the GAC for the fact that your road to approval is now considerably less predictable.
It’s also worth bearing in mind that the GAC is allowed to file an objection based on any aspect of the application – not just the chosen string.
So, for example, if you’re applying for .bank or .pharma and your application falls short of one government’s expected consumer safeguards, you may also see a GAC “concerns” objection.
In cases where the GAC objects to an application, the ICANN board of directors does have the ability to overrule that objection, if it provides its rationale, much as it did with .xxx.
However, .xxx was a special case, and ICANN today is under a regime much friendlier to the GAC and much more nervous about the international political environment than it was 12 months ago.
Make no mistake: GAC Advice on New gTLDs will carry weight.
This table compares the types of GAC Advice described in the Applicant Guidebook published in September with the one published last night.
[table id=5 /]
It should also be noted that since Dakar the GAC has defined consensus as “the practice of adopting decisions by general agreement in the absence of any formal objection”.
In other words, if some GAC members push for a GAC consensus objection against a given gTLD, other GAC members would have to formally object to that proposed objection in order to prevent the minority view becoming consensus.
It’s a pretty low threshold. The .gay applicants, among others, are going to have a nerve-wracking time.

Comment Tagged: .bank, .gay, gac, gac advice, governmental advisory committee, ICANN, new gTLDs, new TLDs, pharma

ICANN opens new gTLD program

It’s scarcely believable given the delays and threats, but ICANN opened its new generic top-level domains program to applications this morning at a minute after midnight UTC.
The TLD Application System, ICANN’s custom web tool for submitting applications, is now live.
If you have $5,000 burning a hole in your pocket, you can sign up for TAS to check it out at any time between now and March 29 at 2359 UTC.
A new English version of the Applicant Guidebook – the ninth – has also been published, mostly merely correcting and clarifying parts of the text.
Applications, with the remaining $180,000 part of the fee, are due by April 12 at 2359 UTC.

Comment Tagged: ICANN, new gTLDs, new TLDs, tas

Whois verification rules coming this year

No more Donald Duck in the Whois?
Registrars could be obliged to verify their customers’ identities when they sell domain names under new rules proposed for later this year, according to ICANN president Rod Beckstrom.
He told National Telecommunications and Information Administration boss Larry Strickling today that the new provisions could make it into the new Registrar Accreditation Agreement by March.
Beckstrom wrote:

ICANN expects that the RAA will incorporate – for the first time – Registrar commitments to verify WHOIS data. ICANN is actively considering incentives for Registrars to adopt the anticipated amendments to the RAA prior to the rollout of the first TLD in 2013.

The RAA is currently being renegotiated by ICANN and the registrar community, following governmental outrage about the RAA at its meeting in Dakar last October.
If new Whois rules are added to the RAA, it will be up to registrars to decide whether to implement them immediately or wait until their existing ICANN contracts expire — hence the need for “incentives”.
Documents ICANN has been posting following its RAA meetings have been less than illuminating, so the letter to Strickling today is the first public insight into what the new contract may contain.
Whois verification, which is often found at the top of the wish-lists of intellectual property and law enforcement communities, is of course hugely controversial.
Civil rights advocates believe that checking registrant identities will infringe on rights to privacy and free speech, while not helping to prevent crime. Actual criminals will of course not hand over their true identities when registering domain names.
The process of verifying Whois data may also wind up making domain names more expensive, due to the costs registrars will incur implementing or subscribing to automated verification systems.
Nevertheless, the anti-new-gTLDs campaign in Washington DC led by the Association of National Advertisers recently led to Whois – a separate issue – being placed firmly on the new gTLDs agenda.
The chairman of the Federal Trade Commission, as well as Strickling, both wrote to ICANN to express concern about the lack of progress on strengthening Whois over the last few years.
Beckstrom’s letter to Strickling can be read here. His reply to FTC chairman Leibowitz – which also schools him in why new gTLDs probably won’t increase fraud – can be read here.

Comment Tagged: ana, ftc, ICANN, new gTLDs, new TLDs, ntia, whois

Introducing DomainIncite PRO

As you know, today is a Big Day in the domain name industry.
That’s right, today’s the day that I’m excited to announce the launch of DomainIncite PRO, the industry’s newest research and analysis service.
DomainIncite PRO is a DI sister site providing in-depth coverage of industry trends, company case studies, and analysis of ICANN’s new generic top-level domains program as it begins to roll out.
I hope the service will quickly become the domain name industry’s premier source of independent research and objective, vendor-neutral analysis.
Let me assure you that regular DI is not going anywhere. This blog will continue to break the latest domain name news, in our unique style, at least five days a week.
While DI will continue to publish shorter news articles, DomainIncite PRO will carry white papers in the 1,500 to 3,000-word range, often accompanied by downloadable data.
Some highlights of the content available to PRO subscribers today:

Five thousand strings that could get your gTLD application rejected
This paper analyzes a wide variety of scenarios in which new gTLD strings could be rejected by ICANN and provides a downloadable spreadsheet of over 5,000 specific banned strings — including brands, abbreviations and generic terms — that could cause an application to fall at the first hurdle.
How .CO Internet relaunched Colombia’s .co registry
This case study looks at .CO Internet’s strategy in the run-up to .co’s launch and during its first year of operations, exploring its successes and failures with regards marketing, sales, channel partnerships and trademark protection.
Domain name sales price database
To help new gTLD applicants with their premium domain name pricing strategies, we’re making available a database of almost 60,000 domain name sales prices that can be used as a helpful pricing reference.

There’s also a free downloadable white paper about new gTLDs written with absolute newbies in mind.
Expect to see a lot more content, with a big focus on new gTLDs, to start appearing soon.
In the near future, DomainIncite PRO will also begin to carry in-depth data-driven market share analysis of the existing gTLD registry space. This coverage will be expanded to cover all new gTLDs when they begin to launch early next year.
We will also provide ongoing analysis of live policy development within ICANN, helping new community members navigate the minefield of acronyms, procedures and personalities.
While translating ICANN into plain English is one of my key goals, make no mistake: DomainIncite PRO is interested in politics only insofar as it affects businesses.
Don’t expect to find long, tedious reports about interminable internet governance debates, unless the outcome is likely to have a tangible impact on somebody’s bottom line.
I can reveal that DomainIncite PRO’s first contributing analyst is Adam Smith, World Trademark Review‘s well-respected former Senior Reporter.
Adam covered the development of the new gTLD program for WTR between 2008 and late 2011. He knows his stuff and I’m very grateful to have him on board.
I hope to add more writers in the near future (if you’re interested in contributing, please get in touch).
Now the bad news. This great content doesn’t come for free.
Memberships are available on an annual subscription basis, and it’s priced for a corporate wallet.
As it’s a new service, and because this post basically represents a “soft” launch for regular DomainIncite readers, the introductory price for single-user annual subscription is $799.
Multi-user company licenses are also available at a discounted rate upon request, but I do not currently anticipate offering trial subscriptions.
I think the content available today already offers a compelling ROI case.
If DomainIncite PRO sounds like something that could benefit your business, why not check it out for yourself right now?

4 Comments Tagged: domainincite pro

SportAccord picks CORE for .sport gTLD bid

SportAccord, an international association of sporting federations, has picked CORE as its registry services provider for its .sport generic top-level domain application.
The organization, which has International Olympic Committee backing, has also confirmed that it will be applying for .sport as a “community” gTLD.
Community applications can avoid a costly auction in the event that their chosen gTLD string is contested and the applicant can meet a rigorous set of community support criteria.
With over 100 international sporting organizations, covering everything from football to tug of war, comprising its membership, SportAccord’s bid should be good for a few points on the Community Priority Evaluation, but success is by no means assured.
The Lausanne, Switzerland-based organization announced its intention to apply for .sport, issuing an RFP, back in September 2011.
I’m aware of at least two other organizations that have publicly announced potential .sport applications.
CORE currently runs the back-end for the .cat and .museum gTLDs.

4 Comments Tagged: .sport, core, ICANN, new gTLDs, new TLDs, sportaccord

Key-Systems sued over brand protection trademark

Israeli domain name registrar Domain The Net Technologies has filed a preemptive lawsuit against German competitor Key-Systems over their respective brand management trademarks.
According to the complaint, Domain The Net filed for a US trademark on the term “BrandShield”, which it uses to market brand protection services at brandshield.com.
Key-Systems, which runs a similar service called BrandShelter, filed an opposition to Domain The Net’s trademark application last October, due to the alleged potential for confusion.
Anticipating a possible lawsuit, Domain The Net has therefore sued first, asking the District Court in Virginia to declare that BrandShield does not infringe the BrandShelter trademark.
The complaint lists several dozen live brand+word trademarks to demonstrate that no one company should have exclusive rights to the word “brand”.
You can view the complaint, which was filed yesterday, in PDF format here.
(Hat tip: @GeorgeKirikos)

1 Comment Tagged: brandshelter, brandshield, cybersquatting, domain the net, key-systems, trademarks