Which top brands turned down their .co domains?

Playboy, Pepsi and Pizza Hut are among 17 of the world’s top 100 brands that did not use the .co sunrise period to register their trademarks as .co domain names.
This is effectively the first empirical data we have to judge the demand for a Globally Protected Marks List along the lines of that which ICANN was toying with for its new TLD program.
.CO Internet, the registry operator behind the newly liberalized Colombian top-level domain, chose to implement a Specially Protected Marks List as one of several IP-protection mechanisms.
The list, maintained by Deloitte, comprises the 100 trademarks thought to be the most valuable, and the most rigorously defended, on the internet.
All of these marks, which include some generic dictionary words, are classified as registry reserved and will be impossible to register unless you are the trademark owner.
Yet 83 of the companies on the list chose to register their names in the .co sunrise anyway.
This may show that famous brands are more interested in owning a name that resolves, rather than merely defensively registering in order to keep their marks out of the hands of cybersquatters.
I can only speculate as to why these 83 chose to participate in the sunrise.
Two obvious reasons are the need to establish a Colombian presence on the internet, and the desire to capture any typo traffic from people miskeying “.com”.
For both these reasons, the data is probably not a reliable indicator of how these companies would act during a generic TLD sunrise.
Of the 100 marks on the Deloitte list, these are the 17 that have so far chosen not to acquire their domains:

Accenture, Accor, Armani, Blackberry, BMW, Carrefour, Dell, Fedex, Ferrari, General Electric, Nivea, Pedigree, Pepsi, Pizza Hut, Playboy, Prada, Reebok, Sanyo, SAP, Sheraton, Tiffany and Total.

Because these are registry-reserved names, there’s no danger of cybersquatters picking them up when .co goes to general availability in a little under 11 days.
UPDATE 2010-07-13: See the comment from .CO Internet below. It seems the SPM list is not as useful for brand holders as I had thought.

11 Comments Tagged: .co, .co internet, deloitte, globally protected marks list, gpml, ICANN, new TLDs, sunrise, trademarks

Investors circle ICM as .xxx enters home straight

ICM Registry’s board of directors has approved a $5 million funding round, following the recent decision by ICANN to put the .xxx top-level domain onto the path to approval.
ICM president Stuart Lawley tells me he’s underwritten the whole round himself, already injecting another $500,000 of his own money into the company.
Venture capital investors have already approached the company, following the Brussels decision two weeks ago, according to Lawley.
In Brussels, ICANN’s board resolved to re-enter contract negotiations with ICM, following years of wrangling with ICANN’s appeals and independent review processes.
While .xxx’s approval and entry to the DNS root is not a slam-dunk, the only major hurdle appears to be ICANN’s Governmental Advisory Committee, and many believe the GAC is unlikely to stick its neck out on such a controversial issue.
While demand for .xxx domains is yet to be proven, there are already 162,000 pre-registrations, which would work out to a $10 million business, not including premium sunrise and landrush fees.
A report in Business Week last week said ICM could bring in $200 million per year in revenue on registrations alone.
I think that’s a pretty ambitious prediction, to be honest, and I can’t help but wonder in Business Week got ICM’s ten-year and one-year projections mixed up.
Even at $60 a pop, that’s still 3.3 million registered domains. The stars will have to align in unexpected ways for .xxx to reach that kind of penetration (pun intended).
ICM has previously projected near-term registrations in the low-mid hundreds of thousands.
ICM is currently owned by a close-knit group of investors, mainly Lawley’s circle and ICM’s management, with Lawley himself owning roughly 70% of the business.

3 Comments Tagged: brussels, ICANN, icm, stuart lawley, venture capital, xxx

More details on the Tuvalu-VeriSign deal

VeriSign offered Tuvalu an extra $1 million a year in exchange for the continuing right to run .tv, but the tiny island nation declined, according to a new interview.
The Australian Broadcasting Corporation has a short audio piece over here on the strained relationship between VeriSign and Tuvalu, including an interview with finance minister Lotoala Metia.
Tuvalu gets about $2.2 million a year from VeriSign, according to the piece, but the government thinks it’s being short-changed.
VeriSign offered the country another $1 million a year, on the condition that the deal would be extended for five more years. It currently expires in 2016. Tuvalu declined.
The company declined to comment to ABC, but AusRegistry chief Adrian Kinderis stepped up to defend the deal, pointing out that VeriSign took all the risk.
Kinderis also accepted the interviewer’s suggestion that the new TLD round could leave .tv “obsolete”.
Here’s a link to the stream.

Comment Tagged: .tv, adrian kinderis, ausregistry, lotoala metia, tuvalu, verisign

RapidShare files UDRP claim on Rapid.org

RapidShare, confidence bolstered by a number of recent UDRP wins against domains that contain its trademark, has now turned its attention to some more dubious challenges.
The German file-sharing service has lately filed UDRP claims on the domains rapid4me.com, rapidownload.net, rapidpiracy.com and rapid.org, none of which contain its full “rapidshare” trademark.
The sites in question all relate to sharing files (mostly copyrighted works) on RapidShare. Rapid.org bounces visitors to Bolt.org, a file-sharing forum for predominantly pirated content.
It’s a bit of a stretch to see how any of these domains could be seen to be confusingly similar to the RapidShare trademark. But not, I think, a stretch too far for many UDRP panelists.
Ironically, Rapid.org, which must be worth a fair bit on the aftermarket, was originally registered in 1997 by an IP-protection company.
RapidShare has filed dozens of UDRP claims over the last few months, initially targeting file-sharing sites that utilized rival services, before broadening its campaign to also hit RapidShare-centric sites.

3 Comments Tagged: rapid.org, rapidshare, udrp

Lego launches attack on new TLDs

Could little yellow plastic men be the death of the new top-level domain process?
Toymaker Lego has filed a scathing criticism of ICANN’s latest Draft Applicant Guidebook for prospective new TLD registries, saying it ignores trademark holders.
Lego, one of the most prolific enforcers of trademarks via the UDRP, said that the latest DAG “has not yet resolved the overarching trademark issue”.
DAG v4 contains new protections designed to make it easier for trademark holders to defend their rights in new TLD namespaces. But Lego reckons these protections are useless.

The Trademark Clearinghouse is NOT a rights protection mechanism but just a database. Such a database does not solve the overarching trademark issues that were intended to be addressed.

Lego also says that the Uniform Rapid Suspension service outlined in DAG v4 is much weaker than it wanted.
“It doesn’t seem to be more rapid or cheaper than the ordinary UDRP,” Lego’s deputy general counsel Peter Kjaer wrote.
Lego thinks that a Globally Protected Marks List, which was at one time under consideration for inclusion in the DAG, would be the best mechanism to protect trademarks.

ICANN still seems to ignore that cybersquatting and all kinds of fraud on the internet is increasing in number and DAG 4 contains nothing that shows trademark owners that ICANN has taken our concerns seriously.

The comment, which is repeated verbatim in a letter from Arla Foods also filed today, is the strongest language yet from the IP lobby in the DAG v4 comment period.
Rumblings at the ICANN meeting Brussels two weeks ago, and earlier, suggest that some companies may consider filing lawsuits to delay the new TLD process, if they don’t get what they want in the final Applicant Guidebook.
ICANN’s top brass, meanwhile, are hopeful of resolving the trademark issues soon, and getting the guidebook close to completion, if not complete, by the Cartagena meeting in December.

2 Comments Tagged: brussels, dag v4, draft applicant guidebook, gpml, ICANN, lego, new TLDs, trademarks, udrp, urs

Tuvalu not happy with VeriSign deal

The government of the Pacific island nation of Tuvalu feels it’s getting a raw deal under its current contract with .tv registry manager VeriSign.
According to Radio New Zealand International, Tuvalu finance minister Lotoala Metia said VeriSign pays “peanuts” for the right to run the .tv namespace:

We are negotiating but we are tied because of the agreement that was signed before us. We cannot negotiate for an increase until 2016. Counter offers have been made but they are not acceptable to the government of the day. So we have to stick to our guns now. They’re giving us peanuts.

VeriSign, and its predecessor registry, run .tv under lease as a generic TLD. It is of course Tuvalu’s country-code. By GDP, Tuvalu is one of the poorest nations in the world.
The RNZI article reports that Tuvalu receives $2 million per year from VeriSign. That’s possibly sourced from the CIA World Factbook, which estimated that amount for 2006.
Yet the CIA also says that Tuvalu receives $1 million per quarter, based on a 12-year, $50 million deal that started in 2000.
For all these facts to be true, the deal must have been renegotiated at some point since it was originally signed.

1 Comment Tagged: .tv, cctlds, lotoala metia, tuvalu, verisign

.CO landrushers will be able to apply for trademark rejects

The landrush for .co domains will be extended by three days, to give people a chance to apply for strings that were rejected during the sunrise period, according to a registrar.
Key-Systems posted the news to its Facebook page earlier, but the .CO web site has yet to be updated with the same info.
The registrar said that the landrush, in which registrants apply for premium, non-trademarked strings, will now end on Friday, July 16 at 1600 UTC.
It also raised the prospect of a mini-spike in landrush applications in the last few days of the period.
Key-Systems said that domains covered by invalid sunrise applications – claimed trademarks which were rejected for one reason or another – will come up for grabs on July 12.
The list of such names, which could disclose the kind of bogus trademark claims made by those trying to game the system, will make very interesting reading. It’s due to be published July 10.

2 Comments Tagged: .co, .co internet, key-systems, landrush, sunrise, trademarks

Registrar linked to .xxx loses ICANN accreditation

A Technology Company Inc, a registrar previously linked to the .xxx top-level domain application, has lost its ICANN accreditation for non-payment of fees.
The company, which is also known as NameSystem.com or ATECH, was founded by Jason Hendeles, who is also the founder of ICM Registry, the company behind .xxx.
ICANN has informed ATECH (pdf) that its accreditation will expire and not be renewed on July 12 because it has failed to pay $5,639 in ICANN fees.
ATECH was one of the second wave of competitive registrars to go live, applying for its ICANN accreditation all the way back in 1999. It currently has just a few thousand domains under management.
Hendeles, currently ICM’s vice president of strategic business development, was behind ICM’s original .xxx bid, filed in ICANN’s 2000 round of new TLD applications.
ICM was subsequently taken over by British businessman Stuart Lawley, its current chief executive.
I’m told ATECH was sold to Alok Prakash of Oregon a few years ago.
UPDATE 2010-07-14: ATECH has evidently coughed up, and has regained its accreditation.

3 Comments Tagged: a technology company inc, accreditation, alok prakash, atech, ICANN, icm registry, jason hendeles, namesystem, stuart lawley, xxx

RBS wins totally bogus UDRP complaint

The Royal Bank of Scotland has been handled control of the domain rbscout.com in a UDRP decision I have no trouble at all describing as utterly bogus.
RBS, naturally enough, owns a trademark on the term “RBS”. Its UDRP claim is based on the notion that a domain beginning with “rbs” is therefore confusingly similar.
For this to work, logically, the meaning of “rbscout” must be taken as “RBS cout”.
Cout?
The idea that the registrant actually had “RB scout” in mind does not appear to entered into the deliberation of the National Arbitration Forum panelist, Paul Dorf.
It took me all of two minutes with Whois and Google to determine that the registrant, The Auction Scout, is a player in the market for auctioning heavy machinery, and that RB, Ritchie Bros., is such an auctioneer.
There’s simply no way the registrant could have had RBS in mind when he registered the domain back in February.
So why did Dorf find evidence of bad faith?
Because the domain rbscout.com resolves to a default Go Daddy parking page, which displays advertising links to financial services sites including RBS’s own site.
So, just because Go Daddy’s algorithms are confused by the string “rbs” appearing in a domain, human beings would be similarly confused?
It defies common sense. Dorf should be ashamed of himself.

1 Comment Tagged: naf, paul dorf, rbs, royal bank of scotland, udrp

Aussie registrar trademarks “Whois”

An Australian domain name registrar has secured a trademark on the word “Whois”.
Whois Pty Ltd, which runs whois.com.au, said it has been granted an Australian trademark on the word in the class of “business consulting and information services”.
It looks rather like the company is using the award as a way to promote its own trademark protection services.
I shudder to think what could happen if the firm decided to try to enforce the mark against other registrars.
Or, come to think of it, what would happen if it tried to secure “whois” in a new TLD sunrise period.
I’m not a lawyer, but I imagine that the fact that the word “Whois” has been in use for almost 30 years, pre-dating the creation of the DNS itself, might prove a useful defense.
RFC 812, published in March 1982, is the first use of the word I’m aware of.
It does not appear that there are currently any live US trademarks on the term.

2 Comments Tagged: trademarks, whois, whois.com.au