ICA teams up with WIPO on UDRP reform
The Internet Commerce Association and WIPO are jointly chairing an off-the-books review of the UDRP, ahead of a likely ICANN review of the anti-cybersquatting policy next year.
WIPO said today that the review is being coordinated by Brian Beckham of WIPO and Zak Muscovitch of the ICA, and comprises another 16 participants, mostly UDRP lawyers, panelists, and WIPO itself.
ICANN is being represented by director Sarah Deutsch. Domainers are represented by Telepathy’s Nat Cohen. The brand owner representative is Mette Andersen of regular UDRP complainant Lego.
The team is also drawing on the expertise of a couple dozen experts, a who’s who drawn from all sectors of the industry from registrars to domainers to IP interests to the UDRP providers themselves.
The composition looks very much like what an ICANN policy working group on this topic would look like, but the talks are being held outside of the usual policy development process.
WIPO says: “The core aim of this project is to maintain the UDRP as an efficient and predictable out-of-court dispute resolution mechanism for clear trademark-based disputes.”
But the organization seems to be engaging in some expectation management aimed at those who believe UDRP needs to be gutted. WIPO said:
Any recommendations should be borne out by a demonstrated compelling need for a change, and must be considered against this background, as any perceived case-specific or anecdotal faults of the UDRP do not warrant a wholesale revision of this industry best practice.
The group is expected to produce a report early next year for public input, and share a final report with ICANN thereafter, when the GNSO community is expected to kick off its owner formal Policy Development Process looking at UDRP.
UDRP review has been on the back-burner for the last couple of years since an initial public comment period, mainly due to workload issues faced by ICANN staff and community volunteers.
The GNSO was expected to open its PDP preparations more or less now, but the GNSO Council is expected to vote this Thursday to delay the start of the project for another six months, due to delays implementing other rights protection mechanism reviews.
Given how long PDPs typically take, by my estimate you’re looking at at least three years before any changes to UDRP are approved.
Investing in .ad domains may be risky
Domain investors may shoulder additional risk when they register domains in the relaunching .ad TLD, judging by the registry’s new cybersquatting policy.
Andorra Telecom, which will make .ad names generally available globally October 22, has signed up with WIPO to implement an adapted version of the UDRP that is a lot less friendly to domainers.
The new adDRP specifically calls out domaining as an example of “bad faith”, something a complainant must prove if they want to seize a domain matching their trademark. Panels can find bad faith if they see:
circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name
The adDRP also tweaks the usual three-pronged cybersquatting test found in UDRP to make it easier for complainants to get a win, by lowering the evidential bar on registrants’ rights.
Instead of having to prove the registrant has “no rights or legitimate interests” to the domain, adDRP complainants merely need to “declare” that, “to the best of the Complainant’s knowledge”, the registrant has no rights or legitimate interests.
The adDRP also broadens the types of intellectual property rights complainants must have from registered trademarks to, for example, famous personal names and geographical names related to Andorra.
Andorra Telecom announced its relaunch, assisted by Fundació puntCAT and CORE Association, a few months ago. GA pricing is expected to be €15 ($16) a year.
While Andorra is among the world’s smallest nations, its ccTLD is of course an abbreviation of “advertisement” or “advertising” in English and therefore may have broader appeal.
The registry recently launched an English language version of its web site and a bunch of registrars serving the Anglophone market are already signed up.
The plural gTLD version, .ads, belongs to Google but has not yet launched.
First GlobalBlock prices revealed — they ain’t cheap
Trademarks owners, organizations and celebrities could find themselves paying the thick end of ten grand for the “peace of mind” offered by the new GoDaddy-led GlobalBlock trademark protection service.
101domain, which often has some of the least-expensive pricing, has become the first registrar to publish its prices for the domain-blocking service, which entered beta this week.
The base GlobalBlock service, which offers single-string blocking in 560 gTLDs and ccTLDs, is going for $5,999 per year, according to the 101domain storefront. The GlobalBlock+ version, which covers potentially tens of thousands of variants and typos, starts at $8,999 a year.
None of the other 20 approved GlobalBlock resellers I checked are currently publishing prices.
Some simple division shows us that the basic service works out to roughly $10.71 per domain per year — a bit more than Verisign will charge for a wholesale .com when its prices go up later this year — but the average per-domain cost should go down as more registries sign up to GlobalBlock.
With the GlobalBlock+ service offering to block 50,000 domains or more, the per-domain price obviously shrinks to pennies.
GlobalBlock is offered by the Brand Safety Alliance, a GoDaddy initiative, but it has support from the likes of Identity Digital, which has hundreds of gTLDs in its stable. Dozens of gTLD registry operators have recently asked ICANN’s permission to offer GlobalBlock and rival offering NameBlock.
The BSA has previously said it expects to launch with over 650 TLDs on board. A calculator on its web site suggests 511 are currently operational, but it has not yet named the participating TLDs.
UK cybersquatting complaints hit record low
There were fewer cybersquatting complaints filed against .uk domain holders in 2023 than in any other year since Nominet started reporting its annual stats, according to the latest annual Nominet DRS report.
There were just 511 complaints filed last year, down from 568 in 2022, according to the latest report. That’s the lowest number for at least the last 14 years Nominet has been reporting its annual DRS stats. The highest number was 728, in 2015.
Just 48% of cases resulted in a domain being transferred to the complainant (compare to the 82% WIPO reported for its UDRP cases in 2023), up from 43% in 2022, Nominet said.
The number of disputed domains was 680, down from 745 in 2022, but the number of domains in .uk complained about rocketed from 26 to 122, the second-highest level since Nominet opened the second level for direct registrations a decade ago.
The number of disputed .co.uk domains was down from 686 in 2022 to 538 in 2023.
The decline in cybersquatting complaints come as .uk as a whole continues to shrink. The second and third levels combined lost a net 366,778 domains in 2023, ending December at 10,732,479 domains, according to Nominet stats.
.ai helps UDRP cases rise in 2023, WIPO says
The number of cybersquatting cases filed with the World Intellectual Property Organization increased 7% in 2023, WIPO said this week.
The total UDRP filings, 6,192, includes national ccTLD variations that WIPO handles but not UDRP filings with other providers.
WIPO said that 82% of cases resulted in the domain being transferred to the complainant, with the complaint being denied in just 3% of cases.
The organization does not publish data on Reverse Domain Name Hijacking findings, but RDNH.com, which tracks these things, shows 31 RDNH finding at WIPO in 2023.
.com accounted for 80% of complaints. WIPO said that the most complained-about ccTLDs were .co (Colombia), .cn (China), .mx (Mexico), .au (Australia) and .ai (Anguilla).
Perhaps unsurprisingly, given its rapid growth in registrations, Anguilla’s .ai saw a sharp uptick in UDRP filings last year, up from just four in 2022 to 43 in 2023, according to the WIPO web site.
GoDaddy service to let you block domains in over 650 TLDs
GlobalBlock, a domain blocking service introduced to little fanfare by GoDaddy Registry and Identity Digital in June, is planning to launch next month with support from over 650 gTLDs and ccTLDs.
Built on the successes of GoDaddy’s AdultBlock and Identity Digital’s DPML, the new service was supposed to launch last week under the banner of the Brand Safety Alliance, but was delayed until January.
GlobalBlock enables trademark owners to pay one fee to block their marks across all participating TLDs, saving money on defensive registrations. Company names and celebrity names are also covered. A premium version, GlobalBlock+ also covers typos and IDN homographs.
It’s not just gTLD registries that have signed up. Nominet is participating, as is CoCCA. BSA is promising some pretty obscure ccTLDs will be part of the service.
In what appears to be a game-changing innovation, a feature of the service called Priority Autocatch seems set to stop cybersquatters and phishers from drop-catching domains that match strings protected by the block list.
Say you’re Facebook and you see some scumbag has registered facébook.ninja, if you’re subscribed to GlobalBlock+, the AutoCatch feature will see the domain removed from the available pool when it expires, rather than dropping so a second ne’er-do-well can register it.
GlobalBlock appears to be the reason no fewer than 35 registries covering over 300 gTLDs have recently asked ICANN for permission to launch a “Label Blocking Service” via the Registry Service Evaluation Process.
There’s money in blocking services. GoDaddy is making millions from AdultBlock. Some research I’ve been doing recently suggests some registries might be making more from blocks and defensive registrations than they are from regular domain sales.
For registries with small TLD portfolios, blocking services generally offer a poor value proposition. Services like DPML, which covers hundreds of TLDs, or AdultBlock, which covers all the porny ones, have been successful.
The BSA is offering brand owners a lot of carrots to get them to sign up early.
First, if you already have an AdultBlock or DPML subscription, your marks are already pre-validated. GoDaddy is also offering a 50% discount on AdultBlock until January 30; AdultBlock and DPML subscribers get 10% off GlobalBlock until April 30.
BSA says that pricing for GlobalBlock and the initial list of TLDs will be released in early January. Wholesale pricing will go up probably every six months as new TLDs are added, but customers will only pay the increased price upon renewal while benefiting from the added blocks.
General availability pricing begins February 15.
Meta given 30 days to stop using Threads trademark
A small UK software firm has given Facebook owner Meta, well known in the domain industry for pursuing cybersquatters, 30 days to stop using the brand name “Threads” or face legal action.
Meta launched a Twitter clone called Threads back in July and quickly gathered over 100 million users (since declining to eight million daily active users), but Threads Software of London says its UK trademark dates back to 2012.
“Threads Software Limited and its lawyers have today (30 October) written to Meta’s Instagram giving it 30 days to stop using the name Threads for their service in the UK. If it does not, Threads Software Limited will seek an injunction from the English Courts,” the company said in a press release (pdf).
The company further claimed that Meta’s lawyers have tried to buy the domain threads.app from it four times this year but were turned down each time. Meta is using threads.net, Threads Software uses threads.cloud.
Threads Software says it operates a service that “captures, transcribes, and organises all of a company’s digital messages (emails and phone calls) into one easily searchable database”.
Managing director John Yardley said in the press release: “We recognise that this is a classic ‘David and Goliath’ battle with Meta. And whilst they may think they can use whatever name they want, that does not give them the right to use the Threads brand name.”
“We want them to stop using the Threads name with immediate effect. If they do not, we will seek an injunction from the UK courts,” he added.
The irony here is of course that Meta owns some of the most-cybersquatted brands out there and is one of the most litigious enforcers of its intellectual property.
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.
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