A UDRP decision to scare the pants off domainers

Is this the most blatant case of UDRP abuse you’ve seen?
A company has won a generic domain name using a trademark it has had registered for less than a year, despite the fact that the current registrant has owned it for well over a decade.
The domain medicalexpo.com was first registered in 1997. It has been in the control of the same registrant since at least 2000, according to historical Whois records, but has never resolved to a web site.
The complainant, Benoit Thiercelin, who has has a history of attempted reverse domain name hijacking, was granted a European trademark on the term “Medical Expo” in June 2010.
In April 2011, Thiercelin filed a UDRP complaint with the little-used ADR Center of the Czech Arbitration Court, citing its European trademark and a US trademark as proof of its rights.
The US trademark was not fully “registered” until May 3, 2011, a month after the UDRP was filed, according to USPTO records.
On May 15, CAC ruled in his favor and awarded him the domain.
The panelist, Joseph Cannataci, found that the domain was registered “or at least re-registered” in bad faith, simply on the grounds that it had never been used.

If one is in good faith when registering a domain name, then the intention is understandably to use it for the purposes of one’s business or activity. If it remains unused for an unreasonable length of time then such registration is open to accusation of constituting “passive holding”. Irrespective of whether the domain name was registered before or after some of the Complainant’s marks, the current holder of the domain name does not seem to have used it or currently be using it.

The decision goes on to refer to the domain as a “TLD”.
The registrant did not help his cause by not responding to the complaint.
But it beggars belief that a UDRP panelist could infer bad faith registration of a generic domain that was registered 13 years before the complainant first acquired a trademark.
The idea that “re-registration” – presumably the panelist means the domain was renewed at some point after the trademark rights were acquired – could show bad faith does not even hold water.
The domain has been due to expire in 2012 since at least 2008, historical Whois records show. The registrant clearly bought a multi-year registration at some point before then, likely in 2002.
The complainant did not form his Medical Expo company until 2009, and did not file for his trademarks until December 2009 and February 2010. The registrant has not renewed the domain since then.
What we have here is a generic domain name, registered for 14 years, seized by complainant with only recently acquired rights, based on non-use and a flimsy piece of panelist reasoning.
Under other circumstances, it would be a slam-dunk case of reverse domain name hijacking.
In fact, Thiercelin has form when it comes to domain hijacking.
Last year, WIPO ruled that that he had attempted to use UDRP to hijack VirtualExpo.com, which also had been registered 10 years before he acquired his trademark rights.
The case was virtually identical to the MedicalExpo.com case, but the panelist ruled in exactly the opposite way, saying:

In the view of the Panel this is a Complaint which should never have been launched. The Complainant knew that the Domain Name was registered nearly 10 years before the Complainant acquired his registered rights, no attempt was made to demonstrate the existence of any earlier rights nor was any attempt made to address the issue arising from the disparity in dates. It simply was not mentioned. Instead, a flagrantly insupportable claim was made as to the Respondent’s bad faith intent at time of registration of the Domain Name and the Panel can only assume that it was hoped that the Panel would miss the point.

Can anybody say “forum shopping”?
This should be enough to scare the pants off of any domainer.

25 Comments Tagged: czech arbitration court, medicalexpo.com, udrp, virtualexpo.com

Poor nation support crucial to new TLD talks

Whether to provide discounts for new top-level domain applicants from poor countries has become a critical obstacle in the process of getting ICANN’s new gTLD program approved.
Not only are its policy-making bodies going through a bout of infighting over proposals to help developing nations, but it is also being seen as a “major political risk” to ICANN’s global credibility.
Sources say that the Governmental Advisory Committee is increasingly concerned that a lack of support for poorer nations could used to bash the gTLD program and discredit ICANN itself.
There are fears that the Group of 77 could use the perception that ICANN works primarily for the benefit of the developed world to push for more UN-based governmental control of the internet.
These concerns were apparently raised during the ICANN Board-GAC teleconference on Friday, and will continue to be discussed in the run-up to the Singapore meeting.
Merely applying for a new gTLD will cost a minimum of $185,000 in direct ICANN fees, potentially rising dramatically in the case of complex or contested applications.
That sum also excludes the many more hundreds of thousands of dollars required to create an application that meets ICANN’s stringent financial and technical stability demands.
Many have estimated that an application for a new gTLD could require an first-year outlay of easily over $1 million.
Unsurprisingly, this may exclude applicants from poorer nations, particularly non-profit and community-based initiatives.
There’s a worry that if support mechanisms are not in place for the first round of applications, culturally or commercially valuable IDN gTLDs will get snapped up by wealthy western companies.
Warning: More Acronyms Ahead
To come up with solutions to this problem, ICANN in April 2010 asked for what is now called the “Joint SO/AC Working Group on New gTLD Applicant Support” – JAS for short.
JAS was chartered by, and comprised of members of, the Generic Names Supporting Organization and the At Large Advisory Committee, two of ICANN’s policy bodies.
Earlier this month, JAS submitted its draft second milestone report (pdf) was submitted to the ICANN board. It’s more of a collection of ideas than a structured framework for applicant support.
It calls for, among other things, fees and financial commitments reduced by as much as three quarters for applicants from about 50 poor nations, if they can show they are (essentially) worthy and needy.
It also suggests that such applicants could have their requirements to support the new DNSSEC and IPv6 technologies from day one – which would raise start-up costs – eliminated.
Unfortunately, the GNSO and ALAC apparently had quite different expectations about what the JAS would produce, and since January the group has been working under a split charter.
Registries and registrars were (and are) worried that JAS was going too far when it recommended, for example, discounted application fees.
Because ICANN has priced applications on a cost-recovery basis, there’s a real concern that discounts for poor applicants will translate into higher fees for wealthier applicants.
Broadly, it’s an example of the usual tensions between commercial domain name industry stakeholders and other groups playing out through quite arcane due process/jurisdictional arguments.
For the last couple of weeks, this has manifested itself as a row about the fact that JAS submitted its report the report was submitted to the ICANN board before it was approved by the GNSO.
Mind The GAC
If it’s the case, as sources say, that the GAC is urgently pressing for applicant support measures to be available in the first round of new gTLD applications, this puts another question mark over ICANN’s ability to approve the Applicant Guidebook in Singapore a month from now.
The GAC “scorecard” of problematic issues has since November stated that ICANN should adopt the findings of the JAS.
But today the JAS is nowhere near producing a comprehensive solution to the problem. Its recommendations as they stand are also unlikely to attract broad support from registry/registrar stakeholders.
Many of its current suggestions are also highly complex, calling for ICANN to establish special funds, staggered payment or repayment programs and additional applicant background checks.
They would take time to implement.
There’s been some talk about the idea that ICANN could approve the Applicant Guidebook before the JAS work is complete, but I’m not sure how realistic that is or whether it would receive the GAC blessing.
If the GAC is worried that ICANN’s very legitimacy could be at risk if it goes ahead with the program before the developing world is catered for, we could be looking at another big roadblock.

6 Comments Tagged: alac, gac, gnso, ICANN, jas, new TLDs

Short .uk domain landrush opens

Nominet opened the landrush phase of its one and two-character .uk domain names within the last hour.
The landrush will see the remaining 2,640 super-short domains that have not already been claimed by trademark holders start to become available.
It costs £10 ($16) to apply, plus the cost of the registration. All contested domains will head to auction, the proceeds of which will be donated to the Nominet Trust.
The available domains are all in the .co.uk, .me.uk, .net.uk and .org.uk spaces. Restrictions may apply – for example .me.uk domains are reserved for individuals.
The landrush will run until June 15. Uncontested domains will be allocated June 23, at which point all unclaimed domains will be released into the available pool. The auctions will kick off July 20.

2 Comments Tagged: .uk, landrush, nominet, sunrise

TechCrunch abandons Disrupt.co

TechCrunch seems to have abandoned the .co domain name it acquired with much fanfare last year to promote its Disrupt technology conference.
Disrupt, which kicks off its 2011 show in New York today, was one of the first organizations to obtain a .co domain under .CO Internet’s pre-launch Founders Program.
The conference used the domain to promote its Startup Battlefield competition in May 2010.
But today, just hours before the latest conference begins, disrupt.co still leads to this legacy content. It does not appear to have been updated for the 2011 show.
There was no mention in last year’s announcement of a multi-year commitment to use the domain, so perhaps it was a one-time thing.
The official Disrupt site can be found at disrupt.techcrunch.com.

4 Comments Tagged: .co, .co internet, disrupt, techcrunch

M+M adds .mumbai to client roster

Minds + Machines has been named as the “exclusive registry and consulting services provider” for a .mumbai top-level domain application.
The company said that India TL Domain Pvt Ltd, which appears to be a new company, has also secured the necessary government support for its ICANN application.
According to M+M, Mumbai’s deputy mayor, Shailaja Girkar, has written to ICANN to say:

The city of Mumbai fully and exclusively supports the application of India TL Pvt Ltd for .Mumbai. We believe that this application best represents the interests and the community of the City of Mumbai and we request that ICANN approve this application.

Local government support is a requirement for city TLDs, under ICANN’s current rules. But the latest version of the Applicant Guidebook suggests it can be trumped at the national level.
M+M, owned by Top-Level Domain Holdings, is also linked to applications for .gay, .eco, .berlin and .nyc, among others. Some of these are contested by rival applicants.

6 Comments Tagged: .mumbai, india tl domain, Minds + Machines, tldh

ICE seizes more piracy domains

The US Immigration and Customs Enforcement agency has seized a small number of domain names that were allegedly being used to distribute bootleg movies and other goods.
But the number of domains falling to Operation In Our Sites in the latest round appears to be smaller than reported over the weekend by TorrentFreak.
The newly seized domains seem to be watchnewfilms.com, mygolfaccessory.com and re1ease.net.
Another half-dozen domains reportedly grabbed within the last few days were actually seized last November, as part of ICE’s major Thanksgiving crackdown.
The false positives were likely spotted because the domains recently changed name servers to ICE’s seizedservers.com, but this appears to be due to a domain management issue, rather than a fresh seizure.

3 Comments Tagged: ice, operation in our sites, piracy, seizures

VeriSign drops $150,000 on ICANN Singapore

VeriSign, which signed up for an unprecedented $500,000 sponsorship package for ICANN’s meeting in San Francisco, has spent a rather more modest amount for the June meeting.
The company is currently listed as a Platinum Elite sponsor for the Singapore meeting, which kicks off June 19. This tier has a list price of $150,000, though I believe ICANN’s prices are negotiable.
VeriSign’s two main registry services competitors, Neustar and Afilias, had already signed up for cheaper sponsorship tiers, with lower visibility.
It would be my guess that the company waited for its rivals to show their hands before deciding to how much it needed to spend to trump them.
The Singapore meeting may see the approval of the Applicant Guidebook for the new top-level domains program.
(UPDATE: Thanks to the reader who pointed out that ICANN will almost certainly vote to approve the renewal of VeriSign’s .net contract in Singapore.)
There are 19 sponsors for Singapore so far, but currently no takers for the two available top-tier Diamond packages, which are listed at $250,000.
The amount VeriSign coughed up for San Francisco is believed to have largely contributed to the speaking fees of former US president Bill Clinton.
ICANN expects to make about $1.2 million from its three fiscal 2011 meetings, which is less than the cost of a single meeting.

4 Comments Tagged: ICANN, new TLDs, singapore, sponsorship, verisign

Still no new TLDs agreement with GAC

ICANN and its Governmental Advisory Committee have yet to resolve their differences over the new top-level domains program, putting a question mark over the current approval timetable.
In a joint statement released early this morning, following a teleconference on Friday, the ICANN board and GAC confirmed that their talks have not yet concluded.
But ICANN still thinks approval of the program’s Applicant Guidebook could come by June 20, the second day of the forthcoming Singapore meeting:

The latest discussion and ICANN Board and GAC agreement on the benefits of having a face-to-face meeting in Singapore pave the way to possible Board consideration of program approval on 20 June 2011.

This seems to serve as confirmation that the board and GAC will meet for a last-ditch attempt at compromise on June 19. ICANN has already moved around schedules to accommodate the meeting.
Outstanding areas of disagreement continue to include rights protection mechanisms for trademark holders and processes for governmental objections to controversial TLD applications.
Negotiations so far have comprised at least four days of face-to-face talks over the last few months, which had mixed results.
ICANN has given a lot of ground already, but it seems that it has not gone far enough for the GAC. Chair Heather Dryden said in the statement:

the GAC appreciates the time taken by the Board to discuss remaining issues on the call and looks forward to continued progress as a clear signal that the Board is committed to enabling the formulation of true community consensus in developing policy that is in the global public interest as well as increasing the overall accountability and transparency of the organization.

The current talks take place against the backdrop of the renewal of ICANN’s IANA contract with the US Department of Commerce and NTIA, which gives ICANN many of its powers.
Larry Strickling, head of the National Telecommunications and Information Administration, has publicly indicated that he may use the renewal as leverage to squeeze concessions from ICANN.
Two weeks ago, he said that he was “unclear” about whether June 20 was a realistic target for Guidebook approval.
Recently, Strickling also met with European Commissioner Neelie Kroes where they found common ground on new gTLDs and ICANN’s accountability and transparency goals.

2 Comments Tagged: gac, iana, ICANN, new TLDs, ntia

Dr Martens grabs “sucks” domains from Dr Marten

Shoemaker Dr Martens has won three “sucks” domains from a registrant that may actually be a genuine doctor called Marten.
The company won a UDRP case over drmartensucks.net, as well as the .org and .info equivalents.
The name and address in the Whois records for the domains correspond to a cosmetic surgeon in San Francisco named Dr Timothy Marten (rather than Martens).
The Whois could of course be fake, but what we may have here is a case of a defensive registration made by an individual worried about his reputation being challenged and won equally defensively by a company worried about its reputation.
The respondent did not respond to the complaint, so we’ll probably never know. All three domains were parked with Go Daddy.
Oddly, the .com variant of the domain was not part of the case, and still belongs to the same original “Dr Marten” registrant.

Comment Tagged: udrp

RegistryPro gets new CEO

RegistryPro, the .pro top-level domain manager, has appointed Karim Jiwani as its new CEO.
Jiwani seems to have been headhunted from Afilias, where he was senior director of business development. He has over 12 years experience in the business, according to a press release.
The .pro extension is one of those TLDs it’s easy to forget exists, but its recent press releases make it appear like a bit of a dark horse, on an unprecedented growth spurt.
According to its monthly ICANN registry reports, RegistryPro saw a staggering 142% growth in registrations between January 2010 and January 2011, recently passing through the 100,000 domains mark for the first time in its seven-year history.
However, on closer inspection, this uptick was largely due to a bulk registration of over 43,000 domains made via Hostway, RegistryPro’s parent company, last June.
The growth spurt appears to be a direct result of RegistryPro’s reservation of all remaining one, two and three-letter .pro domains, which it is selling off as premium names.
All possible combinations at three characters and under works out to roughly 43,000 domains.
With the new leadership, Hostway also seems to be positioning RegistryPro as a contender in market for providing back-end registry services for new gTLDs. Its CEO, Lucas Roh, said:

Our registry is poised to grow significantly in the coming years, as the awareness continues to grow for .PRO domains and our backend registry services for other TLD’s. We wanted someone that could expertly grow the registry and take it to the next level. Karim has proven experience in the domain industry and is well respected in the community. With his knowledge and passion, he is well equipped to take the company to the next level in providing registry services to registrars and other TLD’s.”

Afilias seems to be a breeding ground for registry CEOs lately. In February, the Public Interest Registry grabbed vice president Brian Cute to head up its .org business.

2 Comments Tagged: afilias, hostway, new TLDs, registrypro