How the world’s biggest brands use new gTLDs

DomainIncite PRO is excited to reveal the results of the domain name industry’s first in-depth study into how the world’s biggest brands use new generic top-level domains.
In March and April 2012, we surveyed the domain name ownership and usage patterns of the world’s 100 most-valuable brands — representing over $1.2 trillion in brand value, according to Interbrand — in six gTLDs introduced since 2001.
As well as confirming the long-held belief that brand owners see little value in defensive registrations — many not even choosing to benefit from residual traffic — the survey also revealed which brands are more likely to develop their sites, which are most vulnerable to cybersquatting, and which appear to care the least about enforcing their brands.
We also examined how “cybersquatters” use the domain names they register, with some surprising results.
Privacy/proxy registration is not nearly as prevalent as many believe, our study found, and a significant portion of registrants have made no effort to monetize the domains they own that match famous brand names.
This extensive, fully illustrated report includes:
A comparison of defensive registration trends across 100 brands in six new gTLDs. How many domains are owned by the respective brands and how many are owned by third parties? How many are reserved by the registry and how many are still available for registration?

A breakdown of usage trends by gTLD in .asia, .biz, .info, .jobs, .mobi and .pro. When brand owners register domains in new gTLDs, how likely are they to develop content on those domains, and what can new gTLD registries do to encourage this desirable behavior?
An analysis of cybersquatting behavior in over 100 domain names registered to entities other than the brand owner. How much do brand owners have to worry about their brands being impaired by damaging behavior such as redirection to competing web sites or porn?
Full survey results. Subscribers have full access to the survey results, which include details of which brand-domains belong to third parties, which exhibit potentially damaging behavior, and which are currently available for registration.
DI PRO subscribers can click here for the full report.
Non-subscribers can learn how to subscribe instantly here.

ICANN reopens defensive registration debate

ICANN’s board of directors wants more policy work done on the problem of defensive domain name registrations.
In a resolution passed at a meeting on Tuesday, the board’s newly created New gTLD Program Committee, made up exclusively of non-conflicted directors, said it:

directs staff to provide a briefing paper on the topic of defensive registrations at the second level and requests the GNSO to consider whether additional work on defensive registrations at the second level should be undertaken

The decision was made following the debate about “defensive” gTLD applications ICANN opened up in February, prompted by a letter from US Department of Commerce assistant secretary Larry Strickling.
That in turn followed the two Congressional hearings in December, lobbied for and won by the Association of National Advertisers and its Coalition for Responsible Internet Domain Oversight.
So this week’s decision is a pretty big win for the intellectual property lobby. It’s managed to keep the issue of stronger second-level trademark protection in new gTLDs alive despite ICANN essentially putting it to bed when it approved the new gTLD program last June.
The GNSO could of course decide that no further work needs to be done, so the champagne corks should probably stay in place for the time being.
At the same meeting on Tuesday, the ICANN board committee voted to disregard the GNSO Council’s recent decision to grand extra protections to the International Olympic Committee, Red Cross and Red Crescent movements. The rationale for this decision has not yet been published.

Three-way legal fight over .eco breaks out

Planet.eco, an emergent .eco gTLD applicant with a trademark on “.eco” is suing two rival applicants for trademark infringement and cybersquatting in a California court.
The company sued DotEco (affiliated with Minds + Machines and Top Level Domain Holdings), along with CEO Fred Krueger, and Canada-based Big Room on March 2.
It’s looking for millions of dollars of damages and an injunction preventing both rival applicants from applying for .eco.
In late March, DotEco filed a counter-suit, alleging that Planet.eco’s .eco trademark was fraudulently obtained and that the company is trying to illegally stifle competition for the .eco gTLD.
That’s the short version. It’s a complex story with a great deal of history and more than a little bogus behavior.
DomainIncite PRO subscribers can read the full DI analysis, along with more PDFs than you could ever possibly need, here.
(Thanks to reader Tom Gilles for the tip)

NAF loses UDRP market share again

If UDRP forum shopping is a real phenomenon, the market share statistics don’t bear it out.
The National Arbitration Forum today announced a sequential decrease in the number of cybersquatting cases it handled in 2011, widening the gap between itself and the World Intellectual Property Organization for at least the second year in a row.
NAF said it handled 2,082 complaints last year, down 4% from 2010. That’s over the same period WIPO saw a 2.5% increase to 2,764 cases.
NAF is occasionally accused of being the more complainant-friendly of the two major UDRP dispute resolution providers, which some say encourages “forum shopping”.
While that may or may not be true in certain fringe cases, it’s certainly not helping NAF win a flood of business. WIPO is still handling more cases, and growing its share while NAF’s shrinks.
As Mike Berkens observed over on The Domains, NAF’s press release attempted a bit of lame spinning, comparing 2011 to 2009 in order to lead with an 18% increase stat.
The release also includes the following quote from director of internet and IP services Kristine Dorrain, which seems to be designed to subtly address the “complainant-friendly” allegations.

Our experience tells us parties, particularly domain name registrants, prefer the National Arbitration Forum because documents are easily accessible in our online portal. Complaint or Response filing is accomplished in just a couple of minutes.

It’s a somewhat irrelevant statement, given that it’s the complainant who gets to choose the venue.
One of NAF’s 2011 highlights was being picked as exclusive provider of Rapid Evaluation Service cases by .xxx manager ICM Registry. It processed 10 RES complaints in 2011.
RES cases, as well as 73 .us cases, were counted in its headline statistics.

ICANN asked to protect the names of body parts

There’s been no shortage of special pleading in relation to ICANN’s new generic top-level domains program, but this has to be the wackiest yet.
The National Health Council, an American advocacy group, has written to ICANN to ask for extra brand protection for the names of body parts, disabiliies and diseases.
Seriously.
NHC president Myrl Weinberg wrote:

Because it is not possible to trademark a body part (e.g., lung, liver) or a disease category (e.g., arthritis, diabetes), it is difficult for the patient advocacy community to protect the use of such words.
…
We strongly urge ICANN to set forth a process that investigates the potential for misunderstanding, confusion, and harm when awarding gTLDs utilizing the name of a body part or disease/disability.

The letter was inexplicably sent to ICANN’s public comment period on the Universal Acceptance of TLDs. Needless to say it’s completely off-topic, not to mention extremely late.
What seems to have happened is that the NHC’s members received a briefing recently from an ICANN staffer as part of its outreach program and what they learned gave them the willies^TM.

WIPO releases 2011 cybersquatting stats

WIPO handled more UDRP cases covering more domain names in 2011 than in any other year, but its numbers do not paint a very convincing picture of the cybersquatting landscape.
The organization today announced that it handled 2,764 UDRP cases covering 4,781 domain names last year. The number of cases was up 2.5% over 2010.
The number of domain names covered by these cases was up by 9.4% – an additional 414 domains.
It’s basically meaningless data if you’re looking to make a case that cybersquatting is on the increase.
Obviously, while WIPO is the market-share leader, it is not the only UDRP provider. It sees a representative but non-exhaustive sample of cases.
While UDRP is the standard dispute mechanism for all ICANN-contracted gTLDs, WIPO also has side deals with ccTLD registries to look after cybersquatting cases in their zones.
As WIPO has added more ccTLD deals, it has become harder to make apples-to-apples comparisons year over year.
Based on WIPO’s own records, it received 2,323 UDRP complaints about domains in gTLDs last year, up by 28 cases from 2010, a 1.2% increase.
Given that the number of domains registered in gTLDs increased by at least 8% between January 1 and November 30 2011, cybersquatting seems to be actually on the decrease in relative terms.
And given that the number of UDRP cases filed is so piddlingly small, a single obsessive-compulsive complainant (ie, Lego) can skew the results.
Lego spammed WIPO with more than 160 complaints in 2011. As a result, Denmark is the last year’s fourth-biggest filer after the US, France and UK, according to WIPO, with 202 complaints.
So, if you see any company using these WIPO numbers to rage about cybersquatting in press releases, ICANN comments or Congressional hearings, give them a slap from me. Thanks.
Here’s a table of WIPO’s caseload from 2000 to 2011.
[table id=6 /]
Sadly, the number of UDRP complaints will never reflect the actual amount of cybersquatting going on, particularly when cybersquatters only need to price their domains more cheaply than the cost of a UDRP complaint in order to stay off the radar.
WIPO’s data does raise some interesting questions about the geographic distribution of complainants and respondents, however.
Unsurprisingly, cybersquatting was found to be big business in China, the second most-common home nation, after the US, for respondents. No UDRPs filed with WIPO originated there, however.
Surprisingly, Australia is ranked fourth on the list of countries most likely to harbor alleged squatters, with 171 respondents. But Australia was 13th in terms of complainant location, with just 39 cases.
Read more WIPO data here.

IP lobby files last-minute new gTLD demands

ICANN’s ongoing public comment period into the “perceived” need for “defensive” gTLD applications produced a raft of demands from the intellectual property community, not all of which relate to the subject matter at hand.
With less than one month left before ICANN closes its new gTLD application window, many IP stakeholders have suggested ways to reduce the need to file a defensive applications, with many disputing its characterization as “perceived”. As far as many brands are concerned, there’s nothing “perceived” about it.
Give the imminent closure of the window, a large number of commenters have also suggested ways to reduce the need for defensive domain name registrations at the second level. While debates about trademark protection in domain names will never end, this is likely to be the IP community’s last chance to officially comment before April 12.
Some comments expressed a desire for relatively small tweaks to the existing Rights Protection Mechanisms, others said that entirely new RPMs should be created. In most cases, the proposed amendments heavily favor certain trademark owners at the expense of other registrants, including other trademark owners.
Some suggestions from the IP community would, if adopted, directly impact the business models of new gTLD registries and registrars. Others could be expected to significantly increase the risk that the new gTLD application process will be gamed at a large scale.
This DomainIncite PRO analysis is organized by issue, addressing concepts that emerged from multiple comments. In each case, we look at the likely counter-arguments to the proposals, explore the potential impact on applicants and the new gTLD program and assess the likelihood of each proposal becoming reality.
DI PRO subscribers can read the full analysis here.

Olympic gTLD showdown coming in Costa Rica

While the ICANN public meeting in Dakar last October was notable for a heated clash between governments and the domain name industry, the Costa Rica meeting next week may be characterized by these two recent enemies uniting against a common enemy.
ICANN staff.
Members of the Generic Names Supporting Organization, the Governmental Advisory Committee and the At-Large Advisory Committee all appear to be equally livid about a last-minute new gTLD program surprise sprung by ICANN late last week.
The hitch relates to the ongoing saga about special brand protection for the International Olympic Committee, Red Cross and Red Crescent movements in the new gTLD program.
The need to develop rights protection mechanisms for essentially just three organizations has always been a slightly ridiculous and unnecessary premise, but recently it has assumed symbolic proportions, cutting to the heart of the multistakeholder model itself.
Now, following a perplexing eleventh-hour ICANN mandate, Costa Rica is likely to see some fierce debate about the ICANN decision to kick off the new gTLD program last June.
We expect the GNSO and the GAC to show a relatively united front against ICANN staff on the IOC/RC issue. The At-Large Advisory Committee is also set to throw a bomb or two.
There’s even an outside chance that upcoming talks could wind up adding delay to the next phase of the new gTLD program itself…
The full text of this pre-ICANN 43 policy analysis is available to DomainIncite PRO subscribers here.

Cybersquatters face jail time in the Philippines

Cybersquatting is about to be criminalized in the Philippines, and you’re not going to believe the penalties.
Squatters could face six to 12 years in jail if found guilty under Senate Bill 2796, which has reportedly just been approved by the country’s Senate.
Six years is the minimum term, but the bill does allow for an alternative punishment of a 500,000 peso fine, which works out to about $12,000.
That’s 300,000 pesos more than the fine for hacking, newly criminalized by the same bill, which also carries a six-to-12-year prison sentence.
Here’s the definition of “cyber-squatting” from the bill, courtesy of BlogWatch.tv:

The acquisition of a domain name over the internet in bad faith to profit, mislead, destroy reputation, and deprive others from registering the same, if such a domain name is:
i. Similar, identical, or confusingly similar to an existing trademark registered with the appropriate government agency at the time of the domain name registration
ii. Identical or in any way similar with the name of a person other than the registrant, in case of a personal name; and
iii. Acquired without right or with intellectual property interests in it

The bill also provides prison sentences for what the local media is calling “cyber sex”, but which appears to cover internet pornography in general.
A companion bill in the House has to be approved before the law hits the statute books.

Manwin files its first cybersquatting complaint

Manwin Licensing, the company currently suing ICANN and ICM Registry claiming .xxx breaks US competition law, has filed its first cybersquatting complaint using the UDRP.
It’s over a .com domain, pornhubarchive.com (don’t go there, not only is it NSFW but it also looks like it panders to some very dubious tastes), which Manwin thinks infringes on its rights to the PornHub name
The domain is registered to a Russian, while pornhub.com itself is protected by Whois privacy.
There’s a certain irony here. PornHub is a “tube” site that allows users to upload content and has itself come under fire for violating intellectual property rights in the past.
It was sued by the the porn production company Pink Visual for copyright infringement in 2010.