First new gTLD cybersquatting case goes to IBM

IBM has won the first Uniform Rapid Suspension case to be filed against a new gTLD domain name.
National Arbitration Forum panelist Darryl Wilson handed down the perfunctory decision February 12, just seven days after IBM complained about ibm.ventures and ibm.guru.
Both domains have now been suspended, redirecting to a placeholder web site which states:

This Site is Suspended
The Domain Name you’ve entered is not available. It has been taken down as a result of dispute resolution proceedings pursuant to the Uniform Rapid Suspension System (URS) Procedure and Rules.
For more information relating to the URS, please visit: http://newgtlds.icann.org/en/applicants/urs

It was a slam dunk case, as you might imagine — the URS is designed to handle slam-dunk cases.
The registrant, who we estimate spent $2,500 on the two names, did not do himself any favors by redirecting both names to IBM’s .com site.
As we and Wilson both noted, this showed that he’d registered the names with IBM in mind.
IBM’s mark is included in the Trademark Clearinghouse, so the registrant will have been given a warning at the point of registration that he may be about to infringe someone’s IP rights.
Since the names were registered IBM, we’re told, has purchased a Domain Protected Marks List block from the registry, Donuts, which will prevent the names being re-registered when they expire.

IBM files URS complaints against guy who spent $2,500 on two domains

If you were a cybersquatter, would you spend $2,500 on just two domain names without doing even the most basic research into whether you’d get to keep the names?
One individual from New Jersey has done precisely that, apparently, and has now been hit with what may well be the first new gTLD Uniform Rapid Suspension complaint, according to Donuts.
Donuts VP Mason Cole said in a DI comment today that the company has “been notified of an additional URS action involving two IBM names.”
I believe he’s referring to ibm.guru and ibm.ventures, two new gTLD domains I highlighted earlier today as being registered under Go Daddy’s Whois privacy service.
Privacy protection has since been lifted from both domains, in accordance with Go Daddy policy, revealing the registrant (assuming it’s not a fake name) as one Denis Antipov of New Jersey.
Both domains were redirecting to ibm.com when I checked a few days ago — showing that the registrant clearly had IBM in mind when he bought the names — but now do not resolve for me.
What’s funny is that the registration date of the domains is January 31. Due to Donuts’ Early Access Program, the registrant will have paid Go Daddy a total of $2,479.98 for the pair.
Now, he stands to lose that investment in a URS case that will set IBM back about the same amount.
Donuts’ Cole said: “When infringement is alleged, we want to see the due process tools developed for new TLDs put to use. Registries are not trademark adjudicators — we implement the objective decisions of others.”
UPDATE: An earlier version of this story incorrectly reported the price the registrant will have paid for these names.

Directi joins Domain.com family in $100m deal

Endurance International, the holding company behind brands such as Domain.com and HostGator has closed the acquisition of top ten registrar Directi and some related companies.
The acquisition, which was announced last September is worth between $100 million and $110 million — $25.5 million in cash and the rest in shares and a promissory note.
The deal includes Directi properties BigRock (a registrar), ResellerClub (the reseller-focused registrar), LogicBoxes (the registrar management service) and webhosting.info.
It does not include Radix Registry, the company that applied for 31 new gTLDs, 28 of which applications are still active.
Directi CEO Bhavin Turakhia “has agreed to be closely involved in the integration of the two companies”, but it doesn’t sound like he’s taking on a permanent role at Endurance.
Endurance may not be a familiar brand in and of itself, but its businesses include Bluehost, HostGator, Domain.com, FatCow, iPage and Mojo Marketplace.

EU body tells ICANN that 2013 RAA really is illegal

A European Union data protection body has told ICANN for a second time — after being snubbed the first — that parts of the 2013 Registrar Accreditation Agreement are in conflict with EU law.
The Article 29 Data Protection Working Party, which is made up of the data protection commissioners in all 28 EU member states, reiterated its claim in a letter (pdf) sent earlier this month.
In the letter, the Working Party takes issue with the part of the RAA that requires registrars to keep hold of customers’ Whois data for two years after their registrations expire. It says:

The Working Party’s objection to the Data Retention Requirement in the 2013 RAA arises because the requirement is not compatible with Article 6(e) of the European Data Protection Directive 95/46/EC which states that personal data must be:
“kept in a form which permits identification of data subjects for no longer than is necessary for the purposes for which the data were collected”
The 2013 RAA fails to specify a legitimate purpose which is compatible with the purpose for which the data was collected, for the retention of personal data of a period of two years after the life of a domain registration or six months from the relevant transaction respectively.

Under ICANN practice, any registrar may request an opt out of the RAA data retention clauses if they can present a legal opinion to the effect that to comply would be in violation of local laws.
The Working Party told ICANN the same thing in July last year, clearly under the impression that its statement would create a blanket opinion covering all EU-based registrars.
But a week later ICANN VP Cyrus Namazi told ICANN’s Governmental Advisory Committee that the Working Party was “not a legal authority” as far as ICANN is concerned.
The Working Party is clearly a bit miffed at the snub, telling ICANN this month:

The Working Party regrets that ICANN does not acknowledge our correspondence as written guidance to support the Waiver application of a Registrar operating in Europe.
…
the Working Party would request that ICANN accepts the Working Party’s position as appropriate written guidance which can accompany a Registrar’s Data Retention Waiver Request.

It points out that the data protection commissioners of all 28 member states have confirmed that the letter “reflects the legal position in their member state”.
ICANN has so far processed one waiver request, made by the French registrar OVH, as we reported earlier this week.
Weirdly, the written legal opinion used to support the OVH request is a three-page missive by Blandine Poidevin of the French law firm Jurisexpert, which cites the original Working Party letter heavily.
It also cites letters from CNIL, the French data protection authority, which seem to merely confirm the opinion of the Working Party (of which it is of course a member).
EU registrars seem to be in a position here where in order to have the Working Party’s letter taken seriously by ICANN, they have to pay a high street lawyer to endorse it.

First European registrar to get Whois data opt-out

ICANN plans to give a French registrar the ability to opt out of parts of the 2013 Registrar Accreditation Agreement due to data privacy concerns.
OVH, the 14th-largest registrar of gTLD domains, asked ICANN to waive parts of the RAA that would require it to keep hold of registrant Whois data for two years after it stops having a relationship with the customer.
The company asked for the requirement to be reduced to one year, based on a French law and a European Union Directive.
ICANN told registrars last April that they would be able to opt-out of these rules if they provided a written opinion from a local jurist opining that to comply would be illegal.
OVH has provided such an opinion and now ICANN, having decided on a preliminary basis to grant the request, is asking for comments before making a final decision.
If granted, it would apply to “would apply to similar waivers requested by other registrars located in the same jurisdiction”, ICANN said.
It’s not clear if that means France or the whole EU — my guess is France, given that EU Directives can be implemented in different ways in different member states.
Throughout the 2013 RAA negotiation process, data privacy was a recurring concern for EU registrars. It’s not just a French issue.
ICANN has more details, including OVH’s request and links for commenting, here.

Cartier sues Nominet hoping to set global domain name take-down precedent

Luxury watchmaker Cartier has taken .uk registry Nominet to court, hoping to set a precedent that would enable big brands to have domain names taken down at a whim.
The company sued Nominet in a London court in October, seeking an injunction to force the registry to take down 12 domain names that at the time led to sites allegedly selling counterfeit watches.
We’ve only become aware of the case today after Nominet revealed it has filed its defense documents.
Judging by documents attached to Nominet’s court filings, Cartier sees the suit as a test case that could allow it to bring similar suits against other “less cooperative” registries elsewhere in the world.
In a letter submitted as evidence as part of Nominet’s defense, Richard Graham, head of digital IP at Cartier parent company Richemont International, said that he was:

seeking to develop a range of tools that can be deployed quickly and efficiently to prevent Internet users accessing websites that offer counterfeit goods… [and] looking to establish a precedent that can be used to persuade courts in other jurisdictions where the registries are less cooperative.

It’s worth noting that Richemont has applied for 13 dot-brands under ICANN’s new gTLD program and that Graham is often the face of the applications at conferences and such.
Pretty soon Richemont will also be a domain name registry. We seem to be looking at two prongs of its brand protection strategy here.
According to the company’s suit, the 12 domains in question all had bogus Whois information and were all being used to sell bogus Cartier goods.
None of them used a Cartier trademark in the domain — this is explicitly about the contents of web sites, not their domains names — and Cartier says most appeared to be registered to people in China.
Rather than submitting a Whois inaccuracy complaint with Nominet — which could have led to the domains being suspended for a breach of the terms of service — Cartier decided to sue instead.
Graham actually gave Nominet’s lawyers over a week’s notice that the lawsuit was incoming, writing his letter (pdf) on October 22 and filing the complaint (pdf) with the courts November 4.
Cartier seems to have grown frustrated playing whack-a-mole with bootleggers who cannot be traced and just pop up somewhere else whenever their latest web host is persuaded to cut them off.
Graham’s letter, which comes across almost apologetic in its cordiality when compared to the usual legal threat, reads:

Cartier therefore believes the most cost effective and efficient way to disrupt access to the Counterfeiting Websites operating in the UK is to seek relief from you, as the body operating the registry of .uk domain names.

Armed with the foreknowledge provided by the letter, Nominet reviewed the Whois records of the domains in question, found them lacking, and suspended the lot.
Ten were suspended before Cartier sued, according to Nominet. Another expired before the suit was filed and was re-registered by a third party. A fourth, allegedly registered to a German whose scanned identity card was submitted as evidence by Nominet, was suspended earlier this month.
As such, much of Nominet’s defense (pdf) relies upon what seems to be a new and obscure legal guideline, the “Practice Direction on Pre-Action Conduct”, that encourages people to settle their differences without resorting to the courts.
Nominet’s basically saying that there was no need for Cartier to sue, because it already has procedures in place to deal with counterfeiters using fake Whois data.
Also offered in the defense are the facts that suspending a domain does not remove a web site, that Nominet does not operate web sites, and the following:

Nominet is not at liberty under its Terms and Conditions of Domain Name Registration to suspend .uk domain names summarily upon mere receipt of a demand from someone unconnected with the domain name registrant.

That seems to me to be among the most important parts of the defense.
If Cartier were to win this case, it may well set a precedent giving registries (in the UK at least, at first) good reason to cower when they receive dodgy take-down orders from multibillion-dollar brands.
Indeed, that seems to be what Cartier is going for here.
Unfortunately, Nominet has a track record of at least accelerating the takedown of domains based on nothing more than third-party “suspicion”. Its defense actually admits this fact, stating:

Inaccurate identity and contact information generally leads to the suspension of a domain within three weeks. Where suspicions of criminality are formally confirmed by a recognised law enforcement agency, suspension may be very significantly expedited.

I wonder if this lawsuit would have happened had Nominet not been so accommodating to unilateral third-party take-down notices in the past.
In a statement to members today, a copy of which was sent to DI, Nominet encouraged internet users to report counterfeiting web sites to the police if and when they find them.

Cops can’t block domain transfers without court order, NAF rules

Law enforcement and IP owners were dealt a setback last week when the National Arbitration Forum ruled that they cannot block domain transfers unless they have a court order.
The ruling could make it more difficult for registrars to acquiesce to requests from police trying to shut down piracy sites, as they might technically be in breach of their ICANN contracts.
NAF panelist Bruce Meyerson made the call in a Transfer Dispute Resolution Policy ruling after a complaint filed by EasyDNS against Directi (PublicDomainRegistry.com).
You’re probably asking right about now: “The what policy?”
I had to look it up, too.
TDRP, it turns out, has been part of the ICANN rulebook since the Inter-Registrar Transfer Policy was adopted in 2004.
It’s designed for disputes where one registrar refuses to transfer a domain to another. As part of the IRTP, it’s a binding part of the Registrar Accreditation Agreement.
It seems to have been rarely used in full over the last decade, possibly because the first point of complaint is the registry for the TLD in question, with only appeals going to a professional arbitrator.
Only NAF and the Asian Domain Name Dispute Resolution Centre are approved to handle such cases, and their respective records show that only one TDRP appeal has previously filed, and that was in 2013.
In the latest case, Directi had refused to allow the transfer of three domains to EasyDNS after receiving a suspension request from the Intellectual Property Crime Unit of the City of London Police.
The IPCU had sent suspension requests, targeting music download sites “suspected” of criminal activity, to several registrars.
The three sites — maxalbums.com, emp3world.com, and full-albums.net — are all primarily concerned with hosting links to pirated music while trying to install as much adware as possible on visitors’ PCs.
The registrants of the names had tried to move from India-based Directi to Canada-based EasyDNS, but found the transfers denied by Directi.
EasyDNS, which I think it’s fair to say is becoming something of an activist when it come to this kind of thing, filed the TDRP first with Verisign then appealed its “No Decision” ruling to NAF.
NAF’s Meyerson delivered a blunt, if reluctant-sounding, win to EasyDNS:

Although there are compelling reasons why the request from a recognized law enforcement agency such as the City of London Police should be honored, the Transfer Policy is unambiguous in requiring a court order before a Registrar of Record may deny a request to transfer a domain name… The term “court order” is unambiguous and cannot be interpreted to be the equivalent of suspicion of wrong doing by a policy agency.
To permit a registrar of record to withhold the transfer of a domain based on the suspicion of a law enforcement agency, without the intervention of a judicial body, opens the possibility for abuse by agencies far less reputable than the City of London Police.

That’s a pretty unambiguous statement, as far as ICANN policy is concerned: no court order, no transfer block.
It’s probably not going to stop British cops trying to have domains suspended based on suspicion alone — the Metropolitan Police has a track record of getting Nominet to suspend thousands of .uk domains in this way — but it will give registrars an excuse to decline such requests when they receive them, if they want the hassle.

.ninja springs to life as a squirrel as 19 new gTLDs get delegated

ICANN may be taking Christmas week off, but Verisign apparently isn’t — another 19 new gTLDs were delegated to the DNS root system last night.
Most belong to Donuts: .training, .builders, .coffee, .codes, .education, .florist, .farm, .glass, .house, .holiday, .international, .institute, .solar, .repair and .solutions.
United TLD, the Demand Media/Rightside business that is also providing Donuts’ back-end, had .ninja and .kaufen (German for “buy”) delegated.
PeopleBrowsr’s .ceo also went live, as did I-REGISTRY’s .onl (for “online”).
Donuts is already redirecting its latest batch of nic.[tld] domains to donuts.co.
The web site at nic.ninja currently shows this image as part of a placeholder page:

UPDATE: It occurs to me that this might actually be a prairie dog or something, rather than a squirrel.

ICANN cans “Spam King” registrar

ICANN has terminated the registrar accreditation of Dynamic Dolphin, which it turned out was owned by self-professed “Spam King” Scott Richter.
The company has until December 20 to take down its ICANN logo and cease acting as a registrar.
ICANN, in its termination notice (pdf) late last week, said that it only became aware earlier this month that Richter was the 100% owner of Dynamic Dolphin.
Richter grew to fame a decade ago for being one of the world’s highest-profile spammers. He was sued for spamming by Microsoft and Myspace and was featured on the popular TV program The Daily Show.
As well as being a thoroughly unpleasant chap, he has a 2003 conviction for grand larceny, which should disqualify him from being the director of an ICANN-accredited registrar.
He removed himself as an officer on October 9 in response to ICANN’s persistent inquiries, according to ICANN’s compliance notice.
But he was much too late. ICANN has terminated the accreditation due to the “material misrepresentation, material inaccuracy, or materially misleading statement in its application”.
The question now has to be asked: why didn’t ICANN get to this sooner? In fact, why was Dynamic Dolphin allowed to get an accreditation in the first place?
Former Washington Post security reporter Brian Krebs has been all over this story for five years.
Back in 2008, with a little help from anti-spam outfit KnujOn, he outed Richter’s links to Dynamic Dolphin when it was just a Directi reseller.
Yesterday, Krebs wrote a piece on his blog going into a lot of the background.
Another question now is: which registrar is going to risk taking over Dynamic Dolphin’s registrations?
As of the last registry reports, Dynamic Dolphin had fewer than 25,000 gTLD domains under management.
According to ICANN’s termination notice, 13,280 of these use the company’s in-house privacy service, and 9,933 of those belong to just three individuals.
According to DomainTools, “Dynamic Dolphin Inc” is listed as the registrant for about 23,000 names.
According to KnujOn’s research and Krebs’s reporting, the registrar was once among the most spam-friendly on the market.

Seven more Donuts gTLDs delegated

Donuts had seven new gTLDs added to the DNS root zone today.
The strings are: .diamonds, .tips, .photography, .directory, .kitchen, .enterprises and .today.
The nic.tld domains in each are already resolving, redirecting users to Donuts’ official site at donuts.co.
There are now 31 live new gTLDs, 26 of which belong to Donuts subsidiaries.