New UDRP guidelines reflect unpredictability

Cybersquatting cases filed under the Uniform Dispute Resolution Policy have become less predictable, judging from complex new guidelines for adjudication panels.
The World Intellectual Property Organization has just published WIPO Overview 2.0, which sets out over 10 years of UDRP precedent for panelists to consider when deciding future cases.
The document is a must-read for domain investors and trademark holders.
Updated for the first time since 2005, it contains new sections covering developments such as registrar parking, automatically generated advertising and proxy/privacy services.
The Overview has quadrupled in length, from 5,000 to 20,000 words. With that, has come increased complexity. WIPO notes:

While predictability remains a key element of dispute resolution systems, neither this WIPO Overview nor prior panel decisions are binding on panelists, who will make their judgments in the particular circumstances of each individual proceeding.

The document reflects decisions already made, rather than creating new law, but as such it also reflects the tilting balance of the UDRP in favor of complainants.
For example, while the 2005 guidelines presented majority and minority views on whether [trademark]sucks.com domains meet the “confusing similarity” criterion, Overview 2.0 presents only a “consensus view” that they do, suggesting that it is now settled law.
On whether parking a domain with PPC ads meets the “legitimate interests” criterion, the guidelines refer to precedent saying that the ads must not capitalize on a trademark:

As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value

Supporting this view, the Overview states that “bad faith” can be shown even if the domain owner does not control the content of their parked pages and makes no money from the ads:

Panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content – for example, in the case of advertising links appearing on an “automatically” generated basis… It may not be necessary for the registrant itself to have profited directly under such arrangement

There is a defense to this, if the respondent can show they had no knowledge of the complainant’s trademark and made no effort to control or profit from the ads.
Because the UDRP calls for “registration and use in bad faith”, the guidelines also ask: “Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?”
The original guidelines said no, with a carve-out for cases where the squatter anticipated, for example, a future corporate merger (microsoftgoogle.com) or product release (ipad4.com).
The new guidelines are a lot less clear, calling it a “developing area of UDRP jurisprudence”. The document lists several cases where panelists have chosen to essentially set aside the registration date and concentrate instead just on bad faith usage.
The question of whether a renewed domain counts as a new registration is also addressed, and also has a couple of exceptions to give panelists more flexibility in the decisions.
The Overview covers a lot of ground – 46 bullet points compared to 26 in the first version – and will no doubt prove invaluable reading for people filing or fighting UDRP cases.
The guidelines are not of course set in stone. The 2005 version read:

The UDRP does not operate on a strict doctrine of precedent. However, panels consider it desirable that their decisions are consistent with prior panel decisions dealing with similar fact situations. This ensures that the UDRP system operates in a fair, effective and predictable manner for all parties

But the new version adds a caveat to the end of the sentence: “while responding to the continuing evolution of the domain name system.”

2 Comments Tagged: udrp, wipo

Too many ideas, not enough time.
These are some of the stories I would have covered today, if only there were more hours in the day.
Joan Rivers dies after head transplant surgery
UK government banishes cybercrime sites to .au
Transparency review calls for ICANN reality show
UDRP panelist returns Taiwan to China
Bob Parsons shoots BigJumbo CEO
“Pigeon shit” blamed for Playboy plague
Hank Alvarez named ICANN compliance chief
Constantine Roussos says DNS needs “more cowbell”
NATO apologizes for Bit.ly bombing
Blacknight unveils leprechaun mascot
RIAA says .so domains “haven for piracy”
DomainTools merges with DomainJerks
BBC to apply for .cotton
ICANN successfully delays heat death of universe
Parsons apologizes, resurrects elephant
There’s at least 15 stupidly obscure in-jokes there. Probably more. How many did you “get” without Googling?
15 – Congratulations! You’re me. Or a potential future spouse. Call me!
10-14 – You truly are a domain name industry nerd, the depth and breadth of your knowledge covering both domaining and ICANN politicking. You’ve probably been to ICANN meetings and DomainFest. You should be both immensely proud and profoundly ashamed of yourself.
6-10 – I’m proud to have you as a reader. You’re exactly the type of well-balanced individual I’m hoping to attract to this site. Why not try visiting one of my advertisers and purchasing something?
1-5 – Must try harder! Your insight into the industry is sadly lacking. Perhaps consider subscribing to my RSS and Twitter feeds, which can be found at at the top of the left-hand sidebar, in order to bulk up your knowledge base.
0 — You appear to have visited this blog by mistake. Were you searching for “group porn”? I get a lot of hits for that. Nothing to see here, please move along.

Comment

UDRP filings hit new record

The World Intellectual Property Organization handled more cybersquatting cases in 2010 than in any other year to date, according to just-released statistics.
WIPO said today it received 2,696 UDRP complaints last year, up 28% over 2009’s 2,107 cases.
But the number of domains covered by these cases actually slipped a little, from 4,688 to 4,370, according to WIPO.
Since the policy was created in 1999, WIPO says it has decided over 20,000 UDRP complaints, covering over 35,000 domain names in 65 TLDs.
It may sound like a lot, but it’s actually a vanishingly small percentage of the 205.3 million domain names that are registered across all TLDs today.

1 Comment Tagged: udrp, wipo

.xxx introduces the 48-hour UDRP

The forthcoming .xxx top-level domain will have some of the strictest abuse policies yet, including a super-fast alternative to the UDRP for cybersquatting cases.
With ICM Registry likely to sign its registry contract with ICANN soon, I thought I’d take another look at some of its planned policies.
I’d almost forgotten how tight they were.
Don’t expect much privacy
ICM plans to verify your identity before you register a .xxx domain.
While the details of how this will be carried out have not yet been revealed, I expect the company to turn to third-party sources to verify that the details entered into the Whois match a real person.
Registrants will also have to verify their email addresses and have their IP addresses recorded.
Whois privacy/proxy services offered by registrars will have to be pre-approved by ICM, “limited to services that have demonstrated responsible and responsive business practices”.
Registrants using such services will still have their full verified details stored by the registry, in contrast to TLDs such as .com, where the true identity of a registrant is only known to the proxy service.
None of these measures are foolproof, of course, but they would raise barriers to cybersquatting not found in other TLDs.
Really rapid suspension
The .xxx domain will of course abide by the UDRP when it comes to cybersquatting complaints, but it is planning another, far more Draconian suspension policy called Rapid Takedown.
Noting that “the majority of UDRP cases involve obvious variants of well-known trademarks”, ICM says it “does not believe that the clearest cases of abusive domain registration require the expense and time involved in traditional UDRP filings.”
The Rapid Takedown policy is modeled on the Digital Millennium Copyright Act. Trademark holders will be able to make a cybersquatting complaint and have it heard within 48 hours.
Complaints will comprise a “simple statement of a claim involving a well-known or otherwise inherently distinctive mark and a domain name for which no conceivable good faith basis exists”.
A “response team” of UDRP panelists will decide on that basis whether to suspend the domain, although it does not appear that ownership will be transferred as a result.
X strikes and you’re out
ICM plans to disqualify repeat cybersquatters from holding any .xxx domains, whether all their domains infringe trademarks or not.
The policy is not fully fleshed out, so it’s not yet clear how many infringing domains you’d have to own before you lose your .xxx privileges.
High-volume domain investors would therefore be advised to make sure they have clean portfolios, or risk losing their whole investment.
Gaming restrictions
ICM plans to allow IP rights holders to buy long-term, deep-discount registrations for non-resolving .xxx domains. As I’ve written before, Disney doesn’t necessarily want disney.xxx to point anywhere.
That would obviously appeal to volume speculators who don’t fancy the $60-a-year registry fee, so the company plans to create a policy stating that non-resolving domains will not be able to convert to normal domains.
There’s also going to be something called the Charter Eligibility Dispute Resolution Process, which which “will be available to challenge any resolving registration to an entity that is not qualified to register a resolving name in the .xxx TLD”.
This seems to suggest that somebody (think: a well-funded church) who does not identify as a member of the porn industry would be at risk of losing their .xxx domains.
The CEDRP, like most of the abuse policies the registry is planning, has not yet been fully fleshed out.
I’m told ICM is working on that at the moment. In the meantime, its policy plans are outlined in this PDF.

1 Comment Tagged: abuse, ICANN, icm registry, rapid takedown, whois, xxx

Porn group launches .xxx boycott

The Free Speech Coalition has made good on its promise to start a boycott of .xxx domain names.
The California-based porn industry association has just launched a “Just Say NO” campaign, in an attempt to persuade pornographers that .xxx domains are bad for business.

Do the math – it doesn’t add up. Even if ICM’s claims of new consumers who “trust” .XXX ring true, for a company like Kink.com, which has approximately 10,000 domain names, it would have to bring in three-quarters of a million dollars in new revenues annually JUST TO BREAK EVEN!

As well as the retail price of the domains, which currently estimated to be north of $70 per year, the FSC has laid out a bunch of other reasons why it believes .xxx is a bad investment.
These include the fact that some countries (I’m aware of Saudi Arabia and India) have said they intend to block .xxx domains, and that this may make some high-traffic web sites wary of linking to them.
It’s also critical of how .xxx sites will have to comply with policies created by the International Foundation For Online Responsibility, which ICM is setting up to “sponsor” .xxx.
But perhaps the most telling quote in the FSC’s press release comes from its executive director, Diane Duke. She said:

FSC acknowledges and respects that, when push comes to shove, businesses need to do what they think is best for their company. That is why adult companies need to know the implications of purchasing .XXX domain names and why buying .XXX could be the worst investment they’ll ever make.

While FSC makes good points, I agree with Mike Berkens of TheDomains. I just can’t see a boycott working, and the end result may just be to just make FSC look naïve.
If you’re a pornographer, and you think there’s even an outside chance of .xxx taking off, would you risk declining to defensively register your brands on a matter of principle?
The cost of enforcing trademarks — if you have one — via the UDRP post-sunrise would be larger than simply registering them up-front, and there would be no guarantee of success.
It’s a big risk, one that I can’t see many potential registrants taking.
Some in the porn business even believe that some webmasters publicly decrying .xxx are doing so primarily to reduce competition for the premium real estate. Writing in Xbiz, Stephen Yagielowicz said:

some of your “friends” that are telling you to avoid the new adult domain extension, are speculators hoping to lessen the competition for premium .XXX names; while others are mere hucksters, seeking to profit by offering “an alternative TLD” — such as .adult, .porn, .sex or “dot-whatever-does-not-involve-Stuart-Lawley”

1 Comment Tagged: boycott, free speech coalition, ICANN, icm registry, xxx

Go Daddy CEO catches flak for “elephant snuff film”

Bob Parsons has come in for criticism for a recent video diary in which he headed to Zimbabwe to hunt elephant.
A petition launched yesterday at Change.org, entitled “Tell Go Daddy’s CEO: Real Men Don’t Kill Elephants” has attracted over 400 signatures.
The petition describes Parsons’ video as “basically a gruesome, 4-minute elephant snuff film”.
You can watch it here, if you can stomach the AC/DC soundtrack, photos of Parsons grinning over the corpse, and the scene where dozens of Zimbabweans (many wearing Go Daddy baseball caps) greedily tear up the elephant’s carcass.
The justification presented in the video is that “problem” elephants have been destroying crops, putting farmers’ livelihoods at risk.
The petitioner says there are better, more humane ways of dealing with the problem.
I expect this kind of PR plays well to the NASCAR crowd. To desk-bound, liberal-elite media, city-boy vegetarians such as myself, less so.

10 Comments Tagged: bob parsons, elephants, go daddy, hunting, zimbabwe

Go Daddy employee class action dismissed

A class action lawsuit alleging that Go Daddy committed “wage theft”, filed by a disgruntled former call center worker, has been dismissed by an Arizona court.
While the plaintiffs have been given leave to amend their complaint, they’ve parted ways with their lawyers after a disagreement, which suggests the case may be on shaky ground.
I reported on the filing of the suit for The Register last May, and followed it up with a tangential blog post here.
The lead plaintiff, Toby Harris, claims he was fired after just a couple of months as a Go Daddy sales/support call center guy after he questioned why some of his commissions had been withheld.
His manager had apparently rated his work below a certain performance threshold, meaning he lost out on over $1,300 of bonuses in his first month. Harris said this was arbitrary and unfair.
He was then fired after, according to his termination letter, breaking security protocol by failing to sufficiently validate a customer’s identity. Harris said he was fired because he was a “whistleblower”.
Four other former Go Daddy employees are named plaintiffs in the class action, which alleges that by treating commissions as discretionary bonuses, Go Daddy has avoided paying its call center staff legally owed overtime wages.
But a few weeks ago, the judge in the District Court where the case is being heard dismissed the complaint (pdf) on the grounds that it did not assert enough facts to support its claims.
While the judge gave plaintiffs the opportunity to re-file the complaint, their lawyers evidently decided it was not worth it. They withdrew from the case.
Judging by a court filing the lawyers made last week (pdf), and several claims made by Harris on the gripe site NoDaddy.com, it was not an amicable split. Harris now seems to be looking for replacement attorneys to file an amended complaint before time runs out.
The thread on the NoDaddy forum devoted to the class action is extraordinary. Started in May last year, it’s grown to over 1,600 posts, the majority of which are rants written by Harris, often addressing Go Daddy CEO Bob Parsons directly and in personal terms.

12 Comments Tagged: go daddy

ICANN asks the US to cut it loose

ICANN has officially requested the loosening of its contractual ties to the US government.
In a letter to the National Telecommunications and Information Administration (pdf), ICANN president Rod Beckstrom said the US should finally make good on its promise to privatize the management of the internet’s naming and addressing resources.
Currently, ICANN manages the so-called IANA functions, which give it powers over the domain name system’s root zone, under a no-fee procurement deal with the NTIA.
That contract is up for renewal in September, and the NTIA recently issued a Notice Of Inquiry, soliciting public comments on how the IANA functions should be handled in future.
In Beckstrom’s response to the NOI, he says that a US government procurement contract is not the most suitable way to oversee matters of global importance.
Its close links to the NTIA are often cited by other governments as proof that ICANN is an organization that operates primarily in the interest of the US.
Beckstrom said there is “no compelling reason for these functions to be performed exclusively pursuant to a U.S. Government procurement contract.”
He noted that the original plan, when ICANN was formed by the Clinton administration in 1998, was to transition these functions to the private sector no later than September 2000.
The privatization of the DNS is, in effect, 11 years late.
Beckstrom wrote:

The IANA functions are provided for the benefit of the global Internet: country code and generic top-level domain operators; Regional Internet Registries; the IETF; and ultimately, Internet users around the world. Applying U.S. federal procurement law and regulations, the IANA functions should be performed pursuant to a cooperative agreement.

His position was not unanticipated.
At the start of ICANN’s San Francisco meeting last week, Beckstrom and former chairman Vint Cerf both said that a “cooperative agreement” would be a better way for the US to manage IANA.
VeriSign’s role in root zone management is currently overseen by this kind of arrangement.
The NTIA has specifically asked whether IANA’s three core areas of responsibility – domain names, IP addresses and protocol parameters – should be split between three different entities.
Beckstrom also argued against that, saying that there are “many examples of cross-functional work”, and that ICANN already has the necessary expertise and relationships in place to handle all three.
The NOI (pdf) is open until end of play next Thursday, March 31. Half a dozen responses have already been filed here.
At least one respondent believes the IANA powers could be broken up.

9 Comments Tagged: iana, ICANN, ntia

.xxx reservations pass half a million

ICM Registry has now taken over 500,000 reservations for .xxx domain names.
The counter on its web site ticked up by about 150,000 overnight. This was apparently due to the bulk uploading of large requests from several dozen enthusiastic potential registrants.
ICM tells me that these are all requests for unique domains, not counting duplicates, and that over 100,000 requests were not added because they did not appear to come from legit sources.
The counter was around the 200,000 mark last Friday, before ICANN approved ICM’s .xxx registry contract. The deal generated substantial media interest.
Again, it’s worth noting that none of these reservations are guaranteed to convert into sales, they’re basically just requests to be notified when the domains become available.
The price of a .xxx domain is expected to be at least $70 a year, which could scare off some buyers.
Still, coupled with landrush and Founders Program sales, I’m fairly confident that ICM, which spent about $12 million fighting ICANN for .xxx, will recoup its investment before the end of the year.

4 Comments Tagged: ICANN, icm registry, xxx

Microsoft spends $7.5 million on IP addresses

It’s official, IP addresses are now more expensive than domain names.
Nortel Networks, the bankrupt networking hardware vendor, has sold 666,624 IPv4 addresses to Microsoft for $7.5 million, according to Delaware bankruptcy court documents (pdf).
That’s $11.25 per address, more than you’d expect to pay for a .com domain name. Remember, there’s no intellectual property or traffic associated with these addresses – they’re just routing numbers.
This, I believe, is the first publicly disclosed sale of an IP address block since ICANN officially announced the depletion of IANA’s free pool of IPv4 blocks last month.
The deal came as part of Nortel’s liquidation under US bankruptcy law, which has been going on since 2009. According to a court filing:

Because of the limited supply of IPv4 addresses, there is currently an opportunity to realize value from marketing the Internet Numbers, which opportunity will diminish over time as IPv6 addresses are more widely adopted.

Nortel contacted 80 companies about the sale a year ago, talked to 14 potential purchasers, and eventually received four bids for the full block and three bids for part of the portfolio.
Microsoft’s bid was the highest.
The Regional Internet Registries, which allocate IP addresses, do not typically view IP as an asset that can be bought and sold. There are processes being developed for assignees to return unused IPv4 to the free pool, for the good of the internet community.
But this kind of “black market” – or “gray market” – for IP addresses has been anticipated for some time. IPv4 is now scarce, there are costs and risks associated with upgrading to IPv6, and the two protocols are expected to co-exist for years or decades to come.
In fact, during ICANN’s press conference announcing the emptying of the IPv4 pool last month, the only question I asked was: “What is the likelihood of an IPv4 black market emerging?”.
In reply, Raul Echeberria, chair of ICANN’s Number Resource Organization, acknowledged the possibility, but played down its importance:

There is of course the possibility of IPv4 addresses being traded outside of the system, but I am very confident it will be a very small amount of IPv4 addresses compared to those transferred within the system. But it is of course a possibility this black market will exist, I’m not sure that it will be an important one. If the internet community moves to IPv6 adoption, the value of the IPv4 addresses will decrease in the future.

I doubt we’ll hear about many of these sales in future, unless they come about due to proceedings such as Nortel’s bankruptcy sale, but I’m also confident they will happen.
The total value of the entire IPv4 address space, if the price Microsoft is willing to pay is a good guide, is approximately $48.3 billion.

19 Comments Tagged: arin, iana, ICANN, ipv4, ipv6, Microsoft, nortel, nro, rirs