Book review — “Domain Names: Strategies and Legal Aspects”

I’ve only ever read two books about the domain name industry.
The first one was Kieren McCarthy’s excellent Sex.com, the 2007 barely believable non-fictional tech-thriller that seemed to deliberately eschew inside-baseball policy talk in favor of a funny and rather gripping human narrative.
The second, Domain Names – Strategies and Legal Aspects, by Jeanette Soderlund Sause and Malin Edmar, is pretty much the diametrical opposite.
The book, published in its second edition in June, instead seems bent on explaining the complex intersection of domain names and intellectual property rights in as few words as it is able.
Coming in at a brisk 150 pages, it’s basically been engineered to funnel as much information into your brain as possible in as short a space of time as possible.
I blazed through my complimentary review copy during a three-hour train journey a couple months ago.
About half-way through, I realized I had done absolutely no background reading about the authors or publisher, and had no idea who the intended reader was.
The introduction, written for the 2014 first edition by a Swedish civil servant then on the GAC, gives the misleading impression that the book has something to say about multistakeholderism, DNS fragmentation, or new gTLD controversies.
It doesn’t. If the authors have any political opinions, you will not learn them from Domain Names.
What you will get is a competent reference work geared primarily towards IP lawyers and brand management folk who are newbies to the world of domain names.
The authors are both Swedish IP lawyers, though Soderland Sause is currently marketing VP for the .global gTLD registry.
The first half of their book deals with introducing and briefly explaining the high-level technical aspects of the DNS and the basic structure of the market, then discussing the difference between a trademark and a domain name.
An occasionally enlightening middle section of about 30 pages deals with strategies for selecting and obtaining domains, either as fresh registrations or from third parties such as cybersquatters, investors or competitors.
But the second half of the book — which deals with UDRP and related dispute resolution procedures — is evidently where the authors’, and presumably readers’, primary interest lies.
It goes into comparative depth on this topic, and I actually started to learn a few things during this section.
As a newcomer to the work, I cannot definitively say whether the new and updated content — which I infer covers developments in new gTLDs and such over the last four years — is worth the £120 upgrade for owners of the first edition.
It also seems to have gone to the printers before it was fully clear how ICANN was going to deal with GDPR; a third edition will likely be needed in a couple of years after the smoke clears.
I’d be lying if I said I had any fun reading Domain Names, but I don’t think I was supposed to.
I can see myself keeping it near my desk for occasional reference, which I think is what it’s mainly there for.
I can see IP lawyers or ICANN policy wonks also keeping copies by their desks, to be handed out to new employees as a primer on what they need to do to get their hands on the domains they want.
These juniors can then absorb the book over a weekend and keep it by their own desks for future reference, to be eventually passed on to the next n00b.
If that’s what it’s for, I think the authors have done a pretty good job of it.
Domain Names – Strategies and Legal Aspects, 2nd edition, by Jeanette Soderlund Sause and Malin Edmar, is published by Sweet & Maxwell.

Donuts says DPML now covers “millions” of trademark variants as price rockets again

Donuts has added more than a third to the price of its Domain Protected Marks List service, as it adds a new feature it says vastly increases the number of domains trademark owners can block.
The company has added homograph attack protection to DPML, so trademark-owning worrywarts can block variations of their brand that contain confusing non-Latin characters in addition to all the domain variants DPML already takes out of the available pool.
An example of a homograph, offered by Donuts, would be the domain xn--ggle-0nda.com, which can display as “gοοgle.com” and which contains two Cyrillic o-looking characters but is pretty much indistinguishable from “google.com”.
Donuts reckons this could mean “millions” of domains could be blocked, potentially preventing all kinds of phishing attacks, but one suspects the actual number per customer rather depends on how many potentially confusable Latin characters appear in the brands they want to protect.
DPML is a block service that prevents others from registering domains matching or closely matching customers’ trademarks. Previous additions to the service have included typo protection.
The new feature supports Cyrillic and Greek scripts, the two that Donuts says most homograph attacks use.
The company explained it to its registrars like this:

The Donuts system will analyze the content of each SLD identified in a DPML subscription, breaking it down to its individual characters. Each character is then “spun” against Unicode’s list of confusable characters and replaced with all viable IDN “glyphs” supported by Donuts TLDs. This spinning results in potentially millions of IDN permutations of a brand’s trademark which may be considered easily confusable to an end user. Each permutation is then blocked (removed from generally available inventory) just like other DPML labels, meaning it can only be registered via an “Override” by a party holding a trademark on the same label.

While this feature comes at no additional cost, Donuts is increasing its prices from January 1, the second big increase since DPML went live five years ago.
Donuts declined to disclose its wholesale price when asked, but I’ve seen registrars today disclose new pricing of $6,000 to $6,600 for a five-year block.
That compares to retail pricing in the $2,500 to $3,000 range back in 2013.
Hexonet said it will now charge its top-flight resellers $6,426 per create, compared to the $4,400 it started charging when DPML prices last went up at the start of last year. OpenProvider has also added two grand to its prices.
Donuts said the price increase also reflects the growth of its portfolio of gTLDs over the last few years. It now has 241, 25% more than at the last price increase.

Cybersquatting cases up because of .com

The World Intellectual Property Organization handled cybersquatting cases covering almost a thousand extra domain names in 2017 over the previous year, but almost all of the growth came from complaints about .com names, according to the latest WIPO stats.
There were 3,074 UDRP cases filed with WIPO in 2017, up about 1.2% from the 3,036 cases heard in 2016, WIPO said in its annual roundup last week.
That’s slower growth than 2016, which saw a 10% increase in cases over the previous year.
But the number domains complained about in UDRP was up more sharply — 6,370 domains versus 5,374 in 2016.

WIPO said that 12% of its 2017 cases covered domains registered in new gTLDs, down from 16% in 2016.
If you drill into its numbers, you see that 3,997 .com domains were complained about in 2017, up by 862 domains or 27% from the 3,135 seen in 2016.
.com accounted for 66% of UDRP’d domains in 2016 and 70% in 2017. The top four domains in WIPO’s table are all legacy gTLDs.
As usual when looking at stats for basically anything in the domain business in the last few years, the tumescent rise and meteoric fall of .xyz and .top have a lot to say about the numbers.
In 2016, they accounted for 321 and 153 of WIPO’s UDRP domains respectively, but they were down to 66 and 24 domains in 2017.
Instead, three Radix TLDs — .store, .site and .online — took the honors as the most complained-about new gTLDs, with 98, 79, and 74 domains respectively. Each of those three TLDs saw dozens more complained-about domains in 2017 than in 2016.
As usual, interpreting WIPO’s annual numbers requires caution for a number of reasons, among them: WIPO is not the only dispute resolution provider to handle UDRP cases, rises and falls in UDRP filings do not necessarily equate to rises and falls in cybersquatting, and comparisons between .com and new gTLDs do not take into account that new gTLDs also have the URS as an alternative dispute mechanism.

Former MarkMonitor execs join new brand protection registrar

Two former MarkMonitor executives have teamed up with a Fairwinds co-founder to launch a new “next generation” brand protection registrar.
The new company is Brandsight. It was set up by CEO Phil Lodico, who left brand consultancy Fairwinds about a year ago, and was accredited by ICANN earlier this month.
The first two hires are Matt Serlin, who until a couple months ago was VP of client services at MarkMonitor, and Elisa Cooper, who joins after being VP of marketing at the intellectual property management company Lecorpio.
Cooper, who also worked for MarkMonitor in the same position until a couple of years ago, will be Brandsight’s head of marketing and policy. Serlin will head up operations and client services.
The two told me yesterday that Brandsight will attempt to differentiate itself from its alma maters through a combination of better technology, expertise and use of data.
Both have many years experience in the domain industry and ICANN and, one imagines, thick contacts books of potential clients.
The Brandsight site, which went live today, will feature improved workflow via a streamlined user interface, they said.
The company also hopes “better leverage big data to help companies make better decisions and streamline processes around domain management”, Cooper said.
“Legacy registrars haven’t been focused on building new technology, some for almost 10 years,” she said.
It looks like it’s going to be a boutique operation at first — I believe Lodico, Serlin and Cooper are the only three employees right now — but Cooper said the plan is to staff up over the remainder of the year in areas such as sales.
The idea is to be a company that is purely focused on corporate domain services as its core competency, as opposed to what they called the “legacy” larger registrars that have domains as just one service among many, Cooper and Serlin said.
Brandsight is based in New York state and funded by private investors.

.storage to have pricey second sunrise

The .storage gTLD is to get a second sunrise period after being acquired and repurposed by XYZ.com.
The registry will operate a “Trademark Landrush Period” for three weeks from November 7 as the first stage of .storage’s reboot as an open-to-all gTLD.
It’s not technically a “sunrise” period under ICANN rules — that phase was already completed under previous owner Extra Space Storage — nor is it restricted to trademark owners.
Basically anyone with the money will be able to buy a .storage domain during the period, but at a price.
One registrar is reporting that registrants will have to pay a $1,500 application fee on top of the soon-to-be-standard higher $699-per-year registration fee.
That’s considerably more than most new gTLDs charge during their regular sunrise phases.
There’s no need to own a matching trademark, so neither the registry, registrars or Trademark Clearinghouse have any trademark verification costs to bear.
But that also means anyone can pick up any generic, dictionary .storage domain they want without the need for paperwork. XYZ has previously said that all domains will be available at the same price, regardless of their previous “premium” status.
I can see some intellectual property interests being uneasy with how this relaunch is handling trademarks.
Under its former management, .storage was set to be tightly restricted to the physical and data storage industries, reducing the chance of cybersquatting, so some brands may have avoided the sunrise period.
After the relaunch — general availability starts December 5 — there will be no such restrictions. However, the high price of standard registrations is likely to deter all but the richest or dumbest cybersquatters.
XYZ.com acquired .storage for an undisclosed sum in May. There are currently about 800 domains in the .storage zone file.

Cybersquatting cases down in .uk

The number of cybersquatting complaints filed against .uk domains fell in 2016, according to data out this week from Nominet.
The .uk registry said that there were 703 complaints filed with its Dispute Resolution Service in the year, down from 728 in 2015.
However, the number of individual domains complained about appears to have increased, from 745 to 785. That’s partly due to registrants owning both .co.uk and .uk versions of the same name.
The number of cases that resulted in domains being transferred was 53%, the same as 2015, Nominet said.
The large majority of cases were filed by UK-based entities against UK-based registrants, the stats show.

GNSO faces off with governments over IGO cybersquatting

A defiant ICANN working group looking at cybersquatting rules for intergovernmental organizations is sticking to its guns in an ongoing face-off with the Governmental Advisory Committee.
In a report published for public comment this week, the GNSO working group recommended that IGOs should be given the right to use the UDRP and URS rights protection mechanisms, despite not being trademark owners.
But the recommendations conflict with the advice of the GAC, which wants ICANN to create entirely new mechanisms to deal with IGO rights.
I explored a lot of the back story of this argument in two posts a few months ago, which I will not rehash here.
The latest development is the publication of the proposed initial report of the GNSO IGO-INGO Access to Curative Rights Protection Mechanisms Initial Report (pdf) for comment.
The WG was tasked with deciding whether changes should be made to UDRP and URS to help protect the names and acronyms of IGOs and INGOs (international non-governmental organizations).
For INGOs, including the special cases of the International Olympic Committee and the Red Cross/Red Crescent, it decided no changes and no new mechanisms are required, concluding:

Many INGOs already have, and do, enforce their trademark rights. There is no perceivable barrier to other INGOs obtaining trademark rights in their names and/or acronyms and subsequently utilizing those rights as the basis for standing in the existing dispute resolution procedures (DRPs) created and offered by ICANN as a faster and lower cost alternative to litigation. For UDRP and URS purposes they have the same standing as any other private party.

The case with IGOs is different, because using UDRP and URS requires complainants to agree that the panel’s decisions can be challenge in court, and IGOs by their nature have a special legal status that allows them to claim jurisdictional immunity.
The WG recommends that these groups should be allowed access to UDRP and URS if they have protection under Article 6ter of the Paris Convention, a longstanding international intellectual property treaty.
This rule would actually extend UDRP and URS to hundreds more IGO names and acronyms than the GAC has requested protection for, which is just a few hundred. WIPO’s 6ter database by contrast currently lists 925 names and 399 abbreviations.
To deal with the jurisdictional immunity problem, the WG report recommends that IGOs should be allowed to file cybersquatting complaints via a third-party “assignee, agent or licensee”.
It further recommends that if an IGO manages to persuade a court it has special jurisdictional immunity, having been sued by a UDRP-losing registrant, that the UDRP decision be either disregarded or sent back to the arbitration for another decision.
The recommendations with regard IGOs are in conflict with the recommendations (pdf) of the so-called “small group” — a collection of governments, IGOs, INGOs and ICANN directors that worked quietly and controversially in parallel with the WG to come up with alternative solutions.
The small group wants ICANN to create separate but “functionally equivalent” copies of the UDRP and URS to deal with cybersquatting on IGO name and acronyms.
These copied processes would be free for IGOs to use and, to account for the immunity issue, would not be founded in trademark law.
The WG recommendations are now open for public comment and are expected to be the subject of some debate at the March ICANN meeting in Copenhagen.

Celebrity cybersquatting to feature in Super Bowl commercial [video]

Actor turned fashion designer John Malkovich is to feature in a Super Bowl commercial themed on cybersquatting.
The ad, for web host Squarespace, sees Malkovich complaining about the domain johnmalkovich.com belonging to some other guy by the same name.
In a roundabout way, this is also a commercial for Tucows, the newly-crowned second-largest domain registrar, which Squarespace acts as a reseller for.
Here’s the ad:

In reality, Malkovich owns the the .com of his full name. He sells clothes there.
However, he’s reportedly currently suing the owner of malkovich.com in France.
Clarification: a reader has asked me to clarify that using a domain in good faith isn’t strictly “cybersquatting”. Every DI reader already knows this, but apparently unless you spell it out every single time you risk incurring the anger of cretins.

As Trump sworn in, CADNA returns to lobby for stronger cybersquatting laws

Remember the Coalition Against Domain Name Abuse? The lobby group that campaigned for stronger cybersquatting laws and against new gTLDs?
It’s back.
CADNA on Thursday used the imminent inauguration of new US president Donald Trump to announce that it’s back in the game, hoping a Republican-dominated government will be friendlier to its agenda.
It told its supporters on “the 2016 general elections outcomes for both the U.S. Congress and the White House present a unique and timely opportunity to push through legislation”.
It wants new federal laws modeled on 2010 Utah state legislation, the E-Commerce Integrity Act, which creates liability for non-registrant third-parties including domain name registrars.
The Utah law is closely modeled on the federal Anticybersquatting Consumer Protection Act of 1999, but has some crucial differences.
CADNA noted at the time the law was up for a vote that it:

expands the liability for cybersquatting activity to include the registrant’s authorized licensee, agent, affiliate, representative, domain name registrar, domain name registry, or other domain name registration authority that knowingly and actively assists a violation

That’s something ACPA does not allow for, and CADNA wants the federal law amended to include provisions such as this. It said:

The Coalition Against Domain Name Abuse (CADNA) is now mobilizing the global business community to promote and pass legislation that will greatly enhance the available protection mechanisms for online trademark protection and limit the appeal of cybersquatting.

The last time US cybersquatting laws came close to being amended was with the Anti-Phishing Consumer Protection Act of 2008, aka the Snowe Bill, which ultimately did not pass.
The Internet Commerce Association, which lobbies on behalf of domain investors, expressed concern with CADNA’s new efforts to revive its noughties lobbying tactics, telling members:

for now this is more of a CADNA recruiting effort than an active legislative natter. As you can see, CADNA announced a similar Federal effort in 2010, which went nowhere. Nonetheless, we should proceed on the assumption that CADNA will secure a sponsor and have such legislation introduced in the new Congress and that such legislation may well gain traction in the current political environment.

The ICA also expressed concern about the amount of statutory damages the Utah law permits compared to the ACPA.
While both Utah and ACPA allow damages of $1,000 to $100,000 per domain, the Utah law assumes the highest amount if a “pattern or practice” of cybersquatting can be demonstrated.
CADNA has been pretty quiet for the last few years.
Before the US elections last November, its most recent press release dated from October 2013.
The group is managed by the same people who run Fairwinds Partners, a new gTLD consultancy specializing in managing dot-brand gTLDs for some of the world’s biggest names.
Its gTLD clients include L’Oreal, Marriott and Walmart.
Fairwinds used its links to CADNA and its staunch opposition to the new gTLD program to pitch for these clients back in 2012.

.radio set for November launch, weird tiered pricing

The European Broadcasting Union plans to operate the forthcoming .radio gTLD in such a way as to discourage domain investors.
It yesterday set out its launch timetable, registration restrictions, and expects registrars to charge companies between €200 and €250 per domain per year ($213 to $266).
Interestingly, it’s also proposing to charge different, lower prices for individuals, though that pricing tier has not been disclosed.
I’m not sure I can think of another company that wants to charge different prices depending on the class of registrant and it seems like would be tough to enforce.
If I’m the domain manager at a radio company, can’t I just register the domain in my own name, rather than my employer’s, in order to secure the lower price?
Other registries, notably .sucks, have come under fire in the past for charging trademark owners higher fees. Isn’t basing pricing tiers on the legal status of the registrant pretty much the same thing?
That perception could be reinforced by the angle the EBU is taking in its marketing.
“We are proposing that the radio community may like to consider securing the integrity of their web presence by requesting appropriate .radio domains for defensive reasons initially,” .radio TLD Manager Alain Artero said in a blog post.
“The TLD will be focused on content and matters specific to radio and we want to prevent speculators and cybersquatting in this TLD,” he added.
The EBU is not planning to take the TLD to general availability until November, which is a long launch runway by any measure.
Before then, for two months starting May 3, there’ll be a qualified launch program in which radio stations (as opposed to “internet” radio stations) will be able to claim priority registration for their brand.
Sunrise will begin in August.
The EBU secured rights to .radio as a “Community” gTLD, meaning it has to enforce registration restrictions, after a 2014 Community Priority Evaluation ruling allowed it to win its contention set without an auction.
The eligibility criteria are somewhat broad, including: “Radio broadcasting stations. Unions of Broadcasters. Internet radios. Radio Amateurs. Radio professionals (journalists, radio hosts, DJs…) [and] Radio-related companies selling radio goods and services”.