ChatGPT maker files UDRP on .com match

The registrant of chatgpt.com must have thought he’d hit the motherlode when he picked up the domain last December, almost a month after it launched and days after the wildly popular AI chatbot had already received rave reviews from the global press.

What he got instead was a UDRP complaint with WIPO, which ChatGPT maker OpenAI filed last week.

While you’d expect it to be an open-and-shut case, it appears OpenAI was almost as slow with its trademark applications as it was with its domain registration strategy.

The company uses a subdomain of openai.com for the chat service. It launched November 30 last year and received high praise in outlets including the New York Times over the following week.

The .com registrant picked up the previously unregistered name on December 13, but it was not until December 27 that OpenAI applied for a US trademark on the brand.

It wasn’t even the first to apply for a trademark. A company called BrandCentral applied for the mark on December 15, in various “merch” categories unrelated to AI or software, but has since withdrawn the application.

Fortunately for OpenAI, WIPO allows complainants to assert common law trademark rights if the brand is sufficiently famous, and ChatGPT had well over a million users by the time the domain in question was registered.

UDRPs up in 2022, firm says

The World Intellectual Property Organization saw an increase in cybersquatting disputes this year, according to WIPO data compiled by VPN maker AtlasVPN.

There were 5,616 UDRP complaints filed with WIPO, up almost 10% from 2021, the company said.

The report does not appear to include data from the several other UDRP providers, so may not reflect the state of the system as a whole.

WIPO has processed 61,284 UDRP cases since the system was founded over two decades ago, the company said.

Bugatti dumps dot-brand under new owners

Bugatti, which makes incredibly expensive limited-edition sports cars, is dropping its dot-brand.

The French company asked ICANN to release it from its .bugatti registry contract about a month ago, according to ICANN documents.

Bugatti entered new ownership last November, under a joint venture between Rimac and Porsche, and recently reportedly underwent a branding overhaul.

It seems the dot-brand had no place under the new marketing strategy.

Its previous owner had been Volkswagen, which still has a (unused) dot-brand, despite dumping its Chinese-script equivalent. But Porsche had been an opponent of the new gTLD program back in 2011.

.bugatti had actually been used, albeit lightly. A couple of live, non-redirecting sites still remain.

Over 100 dot-brands have terminated their contracts to date.

ICANN staffer to referee closed generics fight

An ICANN policy staffer seems set to chair discussions between governments and the gTLD community over how to regulate “closed generic” domains in the next round of new gTLD applications.

ICANN has put forward its own conflict resolution specialist Melissa Peters Allgood to facilitate the talks, and the Governmental Advisory Committee and GNSO Council have apparently concurred, according to recent correspondence.

“We are of the view that Ms. Allgood’s experience, qualifications, and neutrality in the matter meets the suggested criteria from the GAC and the GNSO Council,” ICANN chair Maarten Botterman told his GAC and GNSO counterparts.

The talks will attempt to reach a consensus on how closed generics can be permitted, but limited to applications that “serve a public interest goal”.

A closed generic is a dictionary-word gTLD that the applicant hopes to operate as a dot-brand even though it does not own a matching trademark. Think Nike operating .sneakers and excluding Adidas and Reebok from registering names there.

While the GNSO community was unable to come to consensus on whether they should be permitted in subsequent rounds, the nine-year-old “public interest goal” GAC advice is still applicable.

The GAC and GNSO have agreed that the talks will exclude the propositions that closed generics should be unrestricted or banned outright.

Once both parties have formally agreed to Allgood’s appointment, and to the size and makeup of the discussion group, Allgood will prepare more paperwork outlining the problem at hand before talks start to happen, according to Botterman.

Amazon governments not playing ball with Amazon’s .amazon

Governments in South America are refusing to play nicely with Amazon over its controversial .amazon dot-brand.

Speaking at ICANN 74 in The Hague this morning, Brazil’s representative on the Governmental Advisory Committee said that ICANN’s decision to delegate .amazon to the retail giant a couple of years ago contravenes the multi-stakeholder process and is “incompatible with the expectations and sovereign rights of the Amazon peoples”.

Luciano Mazza de Andrade said that the Amazon Cooperation Treaty Organization, which is membered by the eight governments of the Amazonia region, wrote to Amazon in December to decline an offer to reserve a number of .amazon domains.

Amazon’s contract with ICANN contains a Public Interest Commitment that grants ACTO and its members one usable .amazon domain each, and 1,500 blocks overall for culturally sensitive strings.

The company had given ACTO a December 19 deadline to submit its list of strings, but it seems its members do not acknowledge the contract’s validity.

“Among other points it underlined that ACTO member states did not give consent to the process of adjudication of the .amazon top-level domain and that they did not consider themselves bound by said decision or the conditions attached to it including the above mentioned Public Interest Commitment,” Brazil’s rep said.

He added that “the adjudication of the top-level domain to a private company without our approval and authorization does not respect the applicable rules, expressly contravenes the multistakeholder nature of ICANN’s decision-making process of interest, and is incompatible with the expectations and sovereign rights of the Amazon peoples.”

ACTO has previously described the delegation of .amazon as “illegal and unjust”.

Amazon has a handful of live .amazon domains, which redirect to various services on amazon.com.

Another single-TLD brand protection service planned

BestTLD is planning to introduce a trademark-blocking service covering its single new gTLD, .best.

The company has asked ICANN for permission to launch what it calls the Best Protection service, which would provide domain blocks in lieu of defensive registrations in .best.

The service is similar to Donuts’ Domain Protected Marks List and other industry offerings, but is perhaps most comparable to the Trademark Sentry offering .CLUB Domains came up with a few years ago.

While DPML lets brands block their marks as domains across Donuts’ entire stable of almost 300 TLDs, BestTLD’s offering, like .CLUB’s, focuses instead on blocking marks as a substring in a single TLD.

In other words, Facebook could subscribe to the service for the string “facebook” and it would block domains such as “facebook-login.best”.

A good thing about such services from a registry’s perspective is that, unlike domains, the same string can be sold multiple times to different owners of the same trademarked string.

The registry has filed a Registry Services Evaluation Process request with ICANN and said it is ready to launch with back-end provider CentralNic whenever it gets approval.

Pricing was not disclosed, but if .CLUB’s $2,000 tag is any guide one might expect a super-premium fee.

Regular .best domains sell for about $20 a year and over 30,000 have been registered to date.

Three gTLDs to lose Donuts trademark protection

Three gTLDs are set to lose the trademark protection coverage at the end of the month, following their sale from Donuts to Public Interest Registry.

As noted by corporate registrar Com Laude recently, .charity, .gives and .foundation will no longer fall under Donuts’ Domain Protected Marks List service as of June 1.

DPML is a blocking services whereby the registry reserves trademarked strings across its whole portfolio of almost 300 gTLDs in exchange for a fee that is a big discount on defensive registrations.

gTLDs not in the portfolio will naturally enough no longer qualify, but Com Laude reported that existing subscriptions will be honored and PIR will offer DPML users the chance to change to a full registration.

Donuts announced the sale of the three TLDs to PIR last December.

PIR doesn’t have its own DPML equivalent. Its portfolio is small and its biggest deal is .org, where the defensive blocking horse bolted decades ago.

UDRP comments reveal shocking lack of trust in ICANN process

Is trust in the ICANN community policy-making process on the decline? Submissions to a recent public comment period on UDRP reform certainly seem to suggest so.

Reading through the 41 comments filed, it’s clear that while many community members and constituencies have pet peeves about UDRP as it stands today, there’s a disturbing lack of trust in ICANN’s ability to reform the policy without breaking it, and very little appetite for a full-blown Policy Development Process.

It’s one area where constituencies not traditionally allied or aligned — such as domain investors and intellectual property interests — seem to be on the same page.

Both the Intellectual Property Constituency and the Internet Commerce Association are among those calling for any changes to UDRP to be drafted rapidly by subject-matter experts, rather than being opened to full community discussion.

The IPC called the UDRP “a vital and fundamental tool that has a long and proven track record”, saying it has “generally been consistently and predictably applied over the course of its more than 20-year history”. Its comment added:

it is critically important that future policy work regarding the UDRP not diminish, dilute, or otherwise undermine its effectiveness. Such policy work should be extremely deferential to and reliant on the input of experts who have actual experience working with and within the UDRP system, and resistant to efforts that would weaken the UDRP system; any such work should be based on facts and evidence of problems in need of a systematic policy-level solution, and not merely to address specific edge cases, differences of opinion, or pet issues.

That’s pretty much in line with the ICA’s comments, which state that participants in future UDRP reform talks “should be experts… individuals who have extensive personal and practical knowledge of the UDRP through direct personal involvement”.

That language — in fact several paragraphs of endorsement for an expert-driven effort — appears almost verbatim in the separately filed comments of the Business Constituency, of which the ICA is a member.

The ICA’s reluctance to endorse a full-blown PDP appears to come from the experience of the Review of all Rights Protection Mechanisms in all gTLDs PDP, or “Phase 1”, which ran from 2016 to 2020.

That working group struggled to reach consensus on even basic stuff, and at one point frictions reached a point where allegations of civility rules breaches caused warring parties to lawyer up.

“Phase 1 was lengthy, unproductive, inefficient, and an unpleasant experience for all concerned,” the ICA wrote in its comments.

“Perhaps the biggest problem with Phase 1 was that structurally it was inadvertently set up to encourage disagreements between interest groups rather than to facilitate collaboration, negotiation, and problem solving,” it said.

The BC arguable goes further in its deference to experts, calling on ICANN to invoke section 13.1 of its bylaws and drag the World Intellectual Property Organization — leading UDRP provider and drafter of the original 1999 policy — as an expert consultant.

The BC also wrote:

It is imperative that stakeholders do not unnecessarily open up a can of worms with the UDRP through destabilizing changes; rather, they should take a focused and targeted approach, only entertaining improvements and enhancements which stand a reasonable chance of gaining consensus amongst stakeholders

WIPO itself is thinking along the same lines:

If the choice is made to review the UDRP, the process should be expert-driven and scoped

To avoid undoing the UDRP’s success, ICANN needs to give serious consideration to the weight to be accorded to the various opinions expressed. So-called “community feedback” referred to, for example, in section 4 of the PSR seems to lack specific depth and can seem more ideological or anecdotal

Comments from ICANN’s contracted parties also expressed concerns about a PDP doing more harm than good.

The Registries Stakeholder Group has almost nothing to say about ICANN’s report, but the Registrars Stakeholder Group expressed concerns that “any updates could have unintended consequences resulting in a less effective UDRP”.

It uniquely brought up the issue of volunteer fatigue and ICANN’s cumbersome backlog of work, writing:

Although the RrSG recognizes that there are some minor areas for improvement in the UDRP, it is the position of the RrSG that a full policy development process (PDP) is not necessary. The UDRP was adopted in 1999, and has been utilized for over 60,000 UDRP cases. The RrSG is not aware of any major issues with the UDRP, and is concerned that any updates could have unintended consequences resulting in a less effective UDRP. Additionally, not only is there a backlog of policy recommendations waiting for ICANN Board approval or implementation, but the RrSG is also aware of substantial community volunteer fatigue even for high-priority issues.

These comments were filed in response to a public comment period on an ICANN-prepared policy status report.

Not every comment expressed skepticism about the efficacy of a PDP. Notably, the Non-Commercial Stakeholders Group — the constituency arguably most likely to upset the apple cart if a Phase 2 PDP goes ahead — appears to fully expect that such work will take place.

There were also many comments from individuals, mostly domainers, recounting their own experiences of, and reform wish-lists for, UDRP.

ICANN’s report will be revised in light of these comments and submitted to the GNSO, which will decide what to do with it.

More friction over closed generics

ICANN’s Generic Names Supporting Organization and Governmental Advisory Committee seem to be headed to bilateral talks on the thorny issue of whether “closed generic” gTLDs should be allowed, but not without discontent.

The GNSO’s Non-Commercial Stakeholder Group last week opposed these talks, suggesting that the GAC is trying to acquire more policy-making power and take a second bite at the apple on a issue it has already advised on.

The NCSG wrote (pdf) to the GNSO Council last Thursday to oppose GAC talks, which are being encouraged by ICANN management and board.

Closed generics are dictionary-word gTLDs that do not match the registry’s trademarks but which nevertheless act as though they are a dot-brand, where only the registry may register domains.

There aren’t any right now, because ICANN, acting in 2014 in response to 2013 GAC advice, retroactively banned them from the 2012 application round, even though they were initially permitted.

It’s such a divisive issue that the GNSO working group (known as SubPro) that made the policy recommendations for the next round was, I believe uniquely, unable to come up with a even a fudged recommendation.

The GAC is sticking to its view that closed generics are potentially harmful, and since the GNSO couldn’t make its mind up, ICANN has suggested an informal dialogue between the two parties, to encourage a solution both deem acceptable that could then be thrown back at the GNSO for formal ratification.

The NCSG objected to this idea because it appears, NCSG said, that a new policy process is being created that increases the GAC’s powers to intervene in policy-making when it sees something it doesn’t like.

But the constituency appeared to stand alone during a GNSO Council meeting last Thursday, where the prevailing opinion seemed to be that dialogue is always a good thing and it would be bad optics to refuse to talk.

The Council has formed a small team of four to decide whether to talk to the GAC, which is in favor of the move.

TMCH turning off some brand-blocking services

The Trademark Clearinghouse is closing down two of its brand protection services after apparently failing to attract and retain registry partners.

The company announced recently that TREx, its Trademark Registry Exchange, will shut down after its customers’ existing subscriptions expire, saying:

The communication that we receive from our agents, resellers, clients and other registries that we have reached out to around improving the product shows that there is currently little appetite for such a service.

TMCH said it may revive the service after the new round of new gTLDs happens.

TREx was a service similar to Donuts’ Domain Protected Marks List and others, whereby trademark owners can block their brands across a multitude of TLDs for a substantial discount on the cost of defensive registrations.

But the TMCH offering was not restricted to one registry’s portfolio. Rather, it consolidated TLDs from multiple smaller operators, including at least one ccTLD — .de — into one service.

It seems to have peaked at 43 TLDs, but lost three when XYZ.com pulled out a couple years ago.

Its biggest partner was MMX, which sold its 22 gTLDs to GoDaddy Registry last year. I’d be very surprised if this consolidation was not a big factor in the decision to wind down TREx.

I’d also be surprised if we don’t see a DPML-like service from GoDaddy before long. It already operates AdultBlock on its four porn-themed gTLDs.

The news follows the announcement late last year that TMCH will also close down its BrandPulse service, which notified clients when domains similar to their brands were registered in any TLD, when its existing subscriptions expire.

Both services leveraged TMCH’s contractual relationship with ICANN, under which it provides functions supporting mandatory rights protection mechanisms under the new gTLD program rules, but neither are ICANN-mandated services.