New rules could stop registries ripping off big brands

New gTLD registries could be banned from unfairly reaching into the deep pockets of famous brands, under proposed rules soon to be considered by ICANN.

A recommendation approved by the GNSO Council last Thursday targets practices such as using reserved and premium lists to block trademark owners from registering their brands during sunrise periods, or charging them exorbitant fees.

It’s believed to target new TLDs that hope to copy controversial practices deployed by the likes of .sucks, .feedback and .top in the 2012 gTLD round.

The recommendations came in the final report of Review of All Rights Protection Mechanisms (RPMs) in All gTLDs working group, which suggests over 30 tweaks to policies such as Sunrise, Trademark Claims, Trademark Clearinghouse and Uniform Rapid Suspension.

While the recommendations almost all received full consensus of the working group, that’s largely because the group could not agree to any of the major changes that had been demanded by the intellectual property lobby.

The aforementioned RPMs will therefore not change a great deal for the next batch of new gTLD applicants.

Even the recommendation about not ripping off big brands is fairly weak, and may well be watered down to homeopathic levels by the forthcoming Implementation Review Team, which will be tasked with turning policy into practice.

This is the recommendation:

Sunrise Final Recommendation #1

The Working Group recommends that the Registry Agreement for future new gTLDs include a provision stating that a Registry Operator shall not operate its TLD in such a way as to have the effect of intentionally circumventing the mandatory RPMs imposed by ICANN or restricting brand owners’ reasonable use of the Sunrise RPM.

Implementation Guidance:

The Working Group agrees that this recommendation and its implementation are not intended to preclude or restrict a Registry Operator’s legitimate business practices that are otherwise compliant with ICANN policies and procedures.

The idea is that ICANN Compliance could come down on registries deploying unfair rules designed to rip off trademark owners.

Practices that have come in for criticism in the past, and are cited in the report, include:

.top’s attempt to charge Facebook $30,000 for facebook.top

.feedback registering thousands of brand-match domains to itself

.sucks placing brand-match domains in an expensive premium pricing tier

Famous Four Media doing the same thing

The working group could not agree on whether any of these should be banned, and it looks like the IRT will have a lot of wriggle room when it comes to interpret the recommendation.

Now that the GNSO Council has approved the RPM working group’s final report (pdf), it will be passed to the ICANN board of directors for consideration before the nitty-gritty work of translating words into reality begins.

MarkMonitor tells .feedback to take a hike after “breach” claim

MarkMonitor is to voluntarily terminate its registrar relationship with Top Level Spectrum after the .feedback registry hit it with a breach of contract notice.
Troy Fuhriman, director of domain management at the registrar, told DI today that the company has just sent TLS a letter stating that it no longer wishes to sell .feedback names.
TLS earlier this month accused MarkMonitor of breaking the terms of its Registry-Registrar Agreements by leaking details of that agreement to media outlets including yours truly.
While TLS CEO Jay Westerdal told DI that an apology from MarkMonitor would be enough to make the termination threat go away, MarkMonitor has clearly decided against that route.
“We’re going to terminate all accreditation agreements for .feedback,” he said. “In part it’s a response to ICANN’s finding that Top Level Spectrum violated its Pubic Interest Commitments, and what we believe is a retaliatory breach notification from them.”
MarkMonitor and a small posse of high-profile clients including Facebook recently won a Public Interest Commitment Dispute Resolution Policy complaint against .feedback, related to the transparency of its launch policies and pricing.
It was in that complaint that MarkMonitor released details contained in the RRA that TLS deemed to be confidential.
Terminating the agreement means that MarkMonitor will no longer be able to sell .feedback names as a registrar and will have to transfer its existing registrations to a different registrar.
Not many clients are affected. MarkMonitor had only 45 .feedback domains under management at the last count (which was still enough to make it the fourth-largest independent .feedback registrar).
Most of these domains will be moved to 101domain, which with fewer than 200 domains is still the leading .feedback registrar.
UPDATE: Westerdal says that MarkMonitor was in fact terminated on Monday. Neither party claims that MarkMonitor made any effort to comply with the breach notice by apologizing.

.feedback threatens to shut off MarkMonitor

Top Level Spectrum, the controversial .feedback gTLD registry, has threatened to de-accredit MarkMonitor unless it apologizes for “breaching” its registrar contract.
The move is evidently retaliation for the MarkMonitor-coordinated complaint about .feedback’s launch policies, which last month led to TLS being found in breach of its own ICANN contract.
De-accreditation would mean MarkMonitor would not be able to sell .feedback domains any more, and its .feedback names would be transferred to another registrar.
In a letter to MarkMonitor (pdf) yesterday, TLS informs the registrar that it breached its Registry-Registrar Agreement by releasing said RRA to “the press” as part of the exhibits to its Public Interest Commitments Dispute Resolution Policy complaint.

The problem we take issue with is that your exhibit should have redacted the “Confidential RRA Agreement” prior to being handed over to ” the press ” and it should have been marked in an appropriate way so ICANN would not publicly disclose it. As we can tell no precautions were taken and as a party to the action we find that you violated the confidentiality of the agreement.

I understand “the press” in this case includes DI and others. We published the document last October. We were not asked to keep anything confidential.
The RRA section of the document is marked as “private and confidential” and contains terms forbidding the disclosure of such information, but the name of the registrar is redacted.
TLS believes the undisclosed registrar is actually Facebook, a MarkMonitor client and one of the several parties to the PICDRP complaint against .feedback.
While Facebook may not have actually signed the RRA, MarkMonitor certainly did and therefore should not have released the document, TLS says.
The letter concludes that the “breach… seems incurable” and says: “Please let us know what actions you will take to cure this breach with us or we will have no other option but to de-accredited your Registrars.”
Despite this, TLS CEO Jay Westerdal tells us that an apology will be enough to cure the alleged breach.
The threat is reminiscent of a move pulled by Vox Populi, the .sucks registry, last year. Vox deaccredited MarkMonitor rival Com Laude in June for allegedly leaking a confidential document to DI (I was never able to locate or identify the allegedly leaked document, and had not published any document marked as confidential).
TLS was found in breach of the Public Interest Commitments in its ICANN contract last month by a PICDRP panel. It was the first registry to suffer such a loss.
The PICDRP panel found that .feedback’s launch had not been conducted in a transparent way, but it stopped short of addressing MarkMonitor’s complaints about “fraudulent” behavior.

.feedback gTLD in breach of contract after big brand “fraud” claims

ICANN has slapped .feedback operator Top Level Spectrum with a contract breach notice after a huge complaint about alleged fraud filed by a gang of big brands.
The company becomes the third new gTLD to be hit by a breach notice, and the first to receive one as a result of losing a Public Interest Commitments Dispute Resolution Process case.
While TLS dodged the “fraud” charges on a technicality, the breach is arguably the most serious found by ICANN in a new gTLD registry to date.
The three-person PICDRP panel found TLS was in violation of the following commitment from its registry agreement:

Registry Operator will operate the TLD in a transparent manner consistent with general principles of openness and non-discrimination by establishing, publishing and adhering to clear registration policies.

But TLS dodged the more serious charges of “fraudulent” behavior, which it denied, largely on the technicality that its PICs only require it to bar its registrants from such behavior.
There’s nothing in the PICs preventing the registry from behaving fraudulently, so the PICDRP panel declined to rule on those allegations, saying only that they “may be actionable in another forum”.
The complainants, which filed their 1,800-page complaint in October, were MarkMonitor and a bunch of its clients, including Adobe, American Apparel, Best Buy, Facebook, Levi and Verizon.
They’d claimed among other things that 70% of .feedback domains were trademarked names actually registered by the registry, and that TLS had stuffed each site with reviews either paid for or scraped from services such as Yelp!.
They claimed that Free.Feedback, a free domains service hosted by an affiliated entity, had been set up to auto-populate Whois records with the names of brand owners (or whoever owned the matching .com domain) even when the registrant was not the brand owner.
This resulted in brand owners receiving “phishing” emails related to domains they’d never registered, the complainants stated.
TLS denied all all the allegations of fraud, but the PICDRP panel wound up not ruling on many of them anyway, stating:

the Panel finds that Respondent’s Registry Operator Agreement contains no covenant by the Respondent to not engage in fraudulent and deceptive practices.

The only violations it found related to the transparency of .feedback’s launch policies.
The panel found that TLS had not given 90 days notice of policy changes and had not made its unusual pricing model (which included an extra fee for domains that did not resolve to live sites) transparent.
The registry had a number of unusual launch programs, which I outlined in December 2015 but which were apparently not adequately communicated to registrars and registrants.
The panel also found that Free.Feedback had failed to verify the email addresses of registrants and had failed to make it easy for trademark owners to cancel domains registered in their names without their consent.
Finally, it also found that TLS had registered a bunch of trademark-match domain names to itself during the .feedback sunrise period:

self-allocating or reserving domains that correspond to the trademark owners’ marks during the Sunrise period constitutes a failure by the Respondent to adhere to Clause 6 of its Registration and Launch policies, versions 1 and 2. According to the policies, Sunrise period is exclusively reserved for trademark owners

TLS, in its defense, denied that it had self-allocated these names and told the panel it had “accidentally” released them into the zone file temporarily.
As a result of the PIC breaches found by the panel, ICANN Compliance has issued a breach notice (pdf) against the company.
To cure the breach, and avoid having its Registry Agreement taken away, TLD has to, by April 15:

Provide ICANN with corrective and preventative action(s), including implementation dates and milestones, to ensure that Top Level Spectrum will operate the TLD feedback in a transparent manner consistent with general principles of openness and nondiscrimination by establishing, publishing and adhering to clear registration policies;

That seems to me like it’s probably vague enough to go either way, but I’d be surprised if TLS doesn’t manage to comply.

Big brands condemn “fraudulent” .feedback gTLD in ICANN complaint

Top Level Spectrum has been accused today of running the gTLD .feedback in a “fraudulent and deceptive” manner.
Over a dozen famous brands, corralled by corporate registrar MarkMonitor, today formally complained to ICANN that .feedback is a “complete sham”.
They reckon that the majority of .feedback domains belong to entities connected to the registry, violate trademarks, and have been stuffed with bogus and plagiarized reviews.
TLS denies any involvement.
MarkMonitor clients Adobe, American Apparel, Best Buy, Facebook, Levi and Verizon are among those that today filed a Public Interest Commitments Dispute Resolution Policy complaint with ICANN.
PICDRP is the mechanism third parties can use to complain about new gTLD registries they believe are in breach of the Public Interest Commitments found in their registry contracts.
The 50-page complaint (pdf), which comes with hundreds of pages of supporting documentation spread over 36 exhibits, purports to show TLS engaging in an “escalating pattern of discriminatory, fraudulent and deceptive registry misconduct”.
While the allegations of wrongdoing are fairly broad, the most interesting appears to be the claim that TLS quietly registered thousands of .feedback names matching trademarks to itself and then filled them with reviews either ripped off from Yelp! or supplied by overseas freelancers working for pennies.
TLS denies that it did any of this.
The .feedback registry is closely tied to the affiliated entity Feedback SAAS, which offers a hosted social platform for product/company reviews. Pricing for .feedback domains is dependent on whether registrants use this service or not.
The complaint states:

the overwhelming majority of domain names registered and activated within the .FEEDBACK TLD — over seventy percent (70%) — are currently owned and operated by Respondent [TLS], and parties working in concert with Respondent
…
Respondent has solicited and paid numerous third parties, including professional freelance writers who offer to post a set number of words for a fee, to write fabricated reviews regarding Complainants’ products and services.
…
These ostensibly independent reviews from ordinary consumers are intended to give the appearance of legitimate commentary within .FEEDBACK sites, when, in fact, the reviews are a complete sham.

An investigation carried out by MarkMonitor (pdf) showed that of the 2,787 .feedback domains registered up to July 31, 73% were registered to just five registrants.
The top registrant, Liberty Domains LLC of Las Vegas, owned 47% of these domains.
MarkMonitor believes this company (which it said does not show up in Nevada company records) and fourth-biggest registrant Core Domains LLC (based at the same Vegas mail forwarding service) are merely fronts for TLS, though it has no smoking gun proving this connection.
TLS CEO Jay Westerdal denies the company is affiliated with Liberty.
The MarkMonitor investigation counted 27,573 reviews on these sites, but 22% of them purported have been written prior to the date the domain was registered, in some cases by years.
The company reckons hundreds of reviews can be traced to five freelance writers who responded to February job ads looking for people who could write and post 10 150-word reviews per hour.
Other reviews appear to have been copied wholesale from Yelp! (this can be easily verified by visiting almost any .feedback site and searching for exact-match content on Google).
Westerdal told DI last week that registrants can use an API to import reviews.
The brands’ complaint goes on to criticize TLS for its Free.feedback offering, a very odd, bare-bones web site which seems to offer free .feedback domains.
When you type a domain or email address into the form on Free.feedback, it offers to give you the equivalent .feedback domain for free, automatically populating a second form with the Whois record of the original domain.
According to the complaint, after somebody registers a free .feedback domain, Feedback SAAS starts contacting the person listed in the Whois about their “free trial registration” regardless of whether they were actually the person who signed up the the domain. The complaint states:

Complainants and multiple other trademark owners who received such email notifications from Feedback SAAS and TLS registrars never visited the FREE.FEEDBACK website, and they never requested a free trial registration in the .FEEDBACK TLD

I’ve been unable to fully replicate this experience in attempts to test Free.feedback.
The complaint alleges multiple breaches of the PICs in the .feedback ICANN Registry Agreement.
The brands want ICANN Compliance to conduct a thorough investigation of .feedback, for all Free.feedback domains with phony Whois to be terminated, and for affected trademark owners to get refunds. They also want their legal costs paid by TLS.
ICANN does not typically publish the outcome of PICDRP complaints. Indeed, this is only the second one I’m aware of. It’s difficult to judge what MarkMonitor’s posse’s chances of success are.

“UDRP-proof” .feedback gTLD loses first UDRP

The first cybersquatting complaint against a .feedback domain name has resulted in a transfer, despite registry claims that the gTLD was “UDRP-proof”.
De Beers, the diamond merchant, won a UDRP case against the registrant of debeers.feedback earlier this month.
The registrant, who used a privacy service, registered the name back in January, when .feedback was in its unusual “Free Speech Partner Program” phase.
That took the place of an Early Access Program, but saw domains deeply discounted instead of premium-priced.
Buyers had to agree to point their domain to a registry-hosted social media platform and there was a $5,000 fee if they later decided to change name servers.
The registrant of debeers.feedback lost the UDRP largely because there wasn’t much actual feedback on the site until De Beers sent him a nastygram.
On March 24, the site only contained a single two-word post. Five more were added with apparently false earlier dates at a later time, the panelist found.
He wrote:

If the website were genuinely operating as a feedback forum, one would ordinarily expect the reviews to have appeared at or close to their respective dates. That they were not on the website on March 24 and did not appear until after the letter of demand was sent calls for explanation.

The panelist doesn’t mention it, but the reviews all seem to have been copied directly from Yelp!.
Basically, the registrant lost his domain for filling the site with bogosity rather than genuine free-speech griping.
It’s not a terribly surprising or worrying result, perhaps, but it does run counter to what Jay Westerdal, CEO of registry Top Level Spectrum, told us back in January.
“It is a great opportunity for domainers to register domains that will be UDRP proof,” he said at the time. “As free speech sites they are going to improve the world and let anyone read reviews on any subject.”
“I think they are UDRP proof,” he added back then, offering the services of his lawyers to registrants who found themselves served with UDRP complaints.
Today, Westerdal qualified his earlier remarks, telling DI: “I don’t think having a privacy service and also having a .feedback domain will hold up in the current UDRP system.”
Privacy services are discouraged by the registry, though explicitly permitted in its terms of service.
Westerdal said that because De Beers obtained the domain via UDRP, the company will not have to pay the $5,000 unlocking fee if it wants to point debeers.feedback’s name servers elsewhere.

TLS says .feedback will be “UDRP-proof”, will hire lawyers to defend registrants

Top Level Spectrum plans to make its .feedback domains dirt cheap for domainers during its forthcoming Early Access Period, and is claiming that its domains will be “UDRP-proof”.
CEO Jay Westerdal told DI today that the registry will even hire lawyers to defend its registrants if and when UDRP cases arise.
The company has also introduced a new $5,000 “claims” service that is guaranteed to drive the intellectual property community nuts.
.feedback is shaping up to be one of the most fascinating new gTLD launches to date.
The company’s original plan, to sell 5,000 trademark-match domains to a single entity after its sunrise period ends has been tweaked.
Now, it will instead offer huge rebates during its Early Access Period next month, which will bring the price to registrants down from as much as $1,815 to as little as $5.
It’s called the “Free Speech Partner Program”.
To qualify for the program rebate, registrants will have to agree to stick to using TLS’s specially designated name servers, which point to a hosted feedback service managed by the registry.
An example of such a site can be seen at donaldtrump.feedback, which is among several US presidential candidate names TLS has registered to itself recently.
That commitment will be passed on if the domain ever changes hands, and a $5,000 fee will be applicable if the registrant wants to switch to their own name servers.
A registry charging a lower fee during EAP than GA is unheard of, but that’s what TLS is planning.
Rebates will not be available during the first three days of EAP, which starts January 6 at $14,020 per name. Days two and three see domains priced at $7,020 and $3,520.
From January 9 to January 18, rebates will bring the prices down to $5 per domain.
That’s a quarter of the $20 registry fee it plans to charge during general availability.
“Our plan is to sell thousands of domains before normal GA,” Westerdal said.
“It is a great opportunity for domainers to register domains that will be UDRP proof,” he said. “As free speech sites they are going to improve the world and let anyone read reviews on any subject.”
“I think they are UDRP proof,” he said. “As a registry we will hire lawyers to fight cases that arise.”
Asked to confirm that TLS would pay for lawyers to defend its registrants in UDRP cases, he said: “Hell yes we will.”
The registry plans to give trademark owners a way to avoid UDRP, however, if they’re willing to pay $5,000 for the privilege.
“Free Speech” registrants will have to agree not only to use TLS’s feedback platform, but also to allow the owners of trademarks matching their domains to more or less unilaterally seize those domains for up to two years after registration.
This “claims period” is also unprecedented in new gTLD launches. It’s described like this:

The registry will accept trademarks for a period of 2 years after the initial registration on a “Free Speech Partner Program” domains. The cost is $5,000 to have the mark validated, if the trademark is found to be the first to successfully make a claim against a domain in the program the domain will be transferred to the mark holder. The mark holder will be allowed to change name servers and is not subject to the “Free Speech Partner Program” terms of service.
Domain registrants of the “Free Speech Partner Program” agree the outcome of a validated mark by the Registry have no further claim to the domain if it is transferred to a new registrant.

If TLS is trying to design a system that will enrage the trademark community to the maximum extent possible, it’s doing a fantastic job.
It even introduced a new clause (2.9, here) to its registration agreement earlier this month, obliging registrants to point their domains to a web page that collects feedback. That means nobody will be allowed to leave their .feedback domains dark.
Are these measures justifiable disincentives, or plain old extortion? Opinion will no doubt be split along the usual lines.

.feedback regs Fox trademark to itself during sunrise

Top Level Spectrum, the new .feedback registry, has painted a second gigantic target on itself by registering to itself a .feedback domain matching one of the world’s largest media brands.
The company has registered fox.feedback and put up a web site soliciting comment on Fox Broadcasting Company.
This has happened whilst .feedback is still in its sunrise period.
The intellectual property community is, I gather, not particularly happy about the move.
The domain fox.feedback points to a web site that uses TLS’ standard feedback platform, enabling visitors to rate and comment on Fox.
The site has a footnote: “Disclaimer: This site is provided to facilitate free speech regarding fox. No direct endorsement or association should be conferred.”
Fox had no involvement with the registration, which Whois records show is registered to Top Level Spectrum itself.
Registry CEO Jay Westerdal said that the domain is one of the 100 “promotional” domains that new gTLD registries are allowed to set aside for their own use under the terms of their ICANN contracts.
Registries usually register names like “buy.example” or “go.example”, along with the names of early adopter anchor tenant registrants, using this mechanism.
I’m not aware of any case where a registry has consciously registered a famous brand, without permission, as part of its promotional allotment.
“The website is hosted automatically by the Feedback platform,” Westerdal said. “Fox Television Network has raised no concerns and has not applied for the domain during sunrise. We are testing out promotion of the TLD with the domain as per our ICANN contract.”
Fox may still be able to buy the domain during sunrise, he said.
“This is a Registry Operation name. During sunrise, If we receive an application from a sunrise-eligible rights holders during sunrise for a Registry Operations name we may release the name for registration,” he said.
Fox’s usual registrar is MarkMonitor. Matt Serlin, VP there, said in an email that the TLS move could be raised with ICANN Compliance:

I find it curious that this branded domain name would have been registered to the registry prior to the sunrise period which is restricted to the 100 registry promotional names. The fact that the domain is actually resolving to a live site soliciting feedback for The Fox Broadcasting Company is even more troubling. MarkMonitor may look to raise this to ICANN Compliance once the registry is able to confirm how this domain was registered seemingly outside of the required process.

The IP community originally fought the introduction of the 100-domain pre-sunrise exception, saying unscrupulous registries would use it to stop trademark owners registering their brands.
While there have been some grumblings about registries reserving dictionary terms that match trademarks, this may be the first case of a registry unambiguously targeting a brand.
Top Level Spectrum courted controversy with the trademark community last week when it told DI that it plans to sell 5,000-brand match domains to a third party company after .feedback goes into general availability in January.
Westerdal told us this is not “cybersquatting”, as the sites contain disclaimers and are there to facilitate free speech.
What do you think about this use of brands as “promotional” domains?
It’s indisputably pushing the envelope of what is acceptable, but is it fair? Should registries be allowed to do this?

Forget .sucks, .feedback will drive trademark owners nuts all over again

Top Level Spectrum, the new gTLD registry behind .feedback, plans to give sell domains matching 5,000 of the world’s top brands to a third party that does not own the trademarks.
That’s one novel element of a .feedback business model that is guaranteed to drive the intellectual property community crazy in much the same way as .sucks did earlier this year.
The other piece of ‘innovation’ will see all .feedback domains — including the 5,000 brands — point by default to a hosted service that facilitates comment and criticism.
An example of such a site can be seen at www.eggsample.feedback. The registry’s CEO, Jay Westerdal, has a .feedback site at www.jay.feedback
If you agree to use the hosted service with your domain, the domain and service combined will cost a minimum of just $20 per year.
However, if you want to turn off the hosted service and use your .feedback like a regular domain, pointing to the web site of your choice, the price will ratchet up to $50 a month, or $620 a year.
Those are the wholesale prices. Both services will be offered through registrars, where some markup is to be expected.
The hosted service is being offered by Feedback SAAS LLC, a company that, judging by its web site, appears to share ownership with Top Level Spectrum, though Westerdal says the two firms have different employees.
It’s not dissimilar to the model employed by .tel, where name servers by default point to a registry-hosted service.
Unlike .tel, .feedback registrants will be able to opt out of using the SAAS service and point their domains to whatever name servers they want.
Westerdal told DI that .feedback is in the process of making a deal with a “third party” he could not yet name to have 5,000 branded .feedback domains deployed during the Early Access Period of the .feedback launch. That’s scheduled to start January 6.
“We are striking a deal to get feedback sites out there. We want everything to have feedback,” he said. “We are signing an agreement to get the ball rolling by doing a founders program to get names out there. Your favorite shoe, your pizza place, your everything.”
“The sites are all geared towards free speech and giving reviews,” he said. He said:

No trademark infringement will occur though, the sites are all geared towards free speech and giving reviews. Confusing the public that the brand is running the site will not happen, each site has a disclaimer and makes it clear the brand is not running the site.

Asked whether we were talking about a genuine third party or a shell set up by the registry, he said: “A real third party. I am not playing games.”
He said the higher pricing for the naked domain registration is intended to discourage companies from turning off the domains matching their brands.
The whole point of .feedback is to solicit feedback.
The as-yet unspecified third-party taking possession of the 5,000 brand names would not be prevented from selling the domains to the matching brand owner, or to any third parties, he said, though he would not be in favor of such a move.
He said that $20 a year to run a configurable .feedback site, with moderator privileges, is a “great deal” compared to the $300-a-month service he said consumer review site Yelp offers.
The SAAS service will make additional revenue by selling added features, suitable for enterprises, he said.
.feedback went into its sunrise period last week with a $2,000 wholesale fee — the same high price that attracted criticism for .sucks.
The original Registry Service Evaluation Process for the .feedback service hit ICANN over a year ago (pdf).
I missed it then. Sorry.
I noticed it today after corporate registrar MarkMonitor blogged about it.
Matt Serlin, VP of MarkMonitor, who blogged his opinion on .feedback’s strategy earlier today, said in an email that the .feedback strategy was “more objectionable” than he had thought, and that “[W]e would most likely look to raise to ICANN if that is his stated intent.”