ICANN has just published another draft of its Guidebook for new  new gTLD’s and it has opened the public comment period today, which will close on May 15.

As always the Guidebook is broken down into sections.

The sections that domainer would probably be most interested in are:

Uniform Rapid Suspension

Trademark Clearinghouse

I will be checking those out today and be back to report on what’s contained in the lastest verision

The ICANN board has already announced its intention to approve what will then be the final Guidebook at its meeting in Singapore on June 20th, 2011, which will be the 1st day of the meeting, rather than the last day in which the board traditionally votes.

Consistent with last week’s announcement by WIPO (World Intellectual Property Organization), the National Arbitration Forum (FORUM) based in Minneapolis, MN, announced that 2,177 cases were filed in its domain name dispute resolution program in 2010.  This number represents a 24 percent increase from 2009 (1,759 cases) and 23 percent over 2008 (1,770 cases).  Of the over 2,100 UDRP cases filed, 96.6% involved generic top-level domain (gTLD) names including .com, .net and .org.  Approximately 70 cases involved a .us top-level domain under the United States Dispute Resolution Policy (usDRP).  

But what exactly does this data actually mean? FORUM and WIPO are the two approved providers for domain name dispute resolution services under policies like the Uniform Domain Name Dispute Resolution Policy (UDRP) implemented by ICANN in 1999.  And the question really is, “How effective are companies at protecting their brand through the UDRP?” 

The companies that do have an online brand enforcement strategy and use the UDRP to recover domains that are damaging their brand(s) the most are quite successful.  In about 75% of these cases, the Respondent does not even reply to a domain dispute and the Complaint wins UDRP cases over 90% percent of the time, regaining web traffic, ending customer confusion, and sending cyber pirates looking for easier targets.

To learn more about best practices when developing an online brand enforcement strategy or to receive a free brand monitoring analysis of your brand, you can contact us at Safenames US, +1.703.574.5313 and nasales@safenames.net, or the Safenames UK at +44 1908 200022 and emeasales@safenames.net.

Related posts:

1. Uniform Dispute Resolution Policy (UDRP) for Domain Name filings increase 28% in 2010
2. Domain Name Piracy: Why do so few Companies Put Up a Fight?
3. Safenames Wins Domain Dispute On Personal Name Without a Registered Trademark

Last weekend as part of the Phoenix Forum an adult Internet industry show, a panel discussion was held about the newly approved .XXX extension.

Representative from ICM Registry the company that will run the .XXX registry, were on the panel as well as adult industry representatives, lawyers and others.

Xbiz.com just posted the 2 1/2 hour video of the session and the discussion that took place which was often combative.

The contract with ICANN was signed the day before the session.

To summarize the session, Vaughn Liley and Greg Dumas spoke on behalf of the ICM Registry.

Many  adult webmasters in attendance still wanted to debate and discuss why .XXX was a bad for the adult industry and several asked in different forms why they should buy any .XXX domain names.

ICM representative basically answered these questions the same way.

The contracts been signed and the extension is going to be launced.

“If you don’t want to buy it don’t buy it”

“If you don’t want to buy it someone else will” said Greg Dumas, long time adult domainer who says he has been working with in support of the .XXX extension since 2003.

Many questioned the role of the non-profit which will get $10 of every .XXX registration, named IFFOR.

One webmaster asked:

“Lets see I register one of these .xxx domains and lets say I’m Ok with IFFOR policy as it sits today but  in a few years they change the rules to say something like you have to use one of our approved billers and lets say no offense but i don’t like your approved billers i want to use my biller, and they say no problem if you don’t like our billers give back your .xxx domain and go back to using a .com.”

“How can you tell anyone to buy or invest in a .xxx domain when this could be such a deviating strike down two three years down the line?”

To which Greg Dumas answered:

“You can ask the same hypotical for credit card processing, you can spend millions and millions on your website and your credit card processor could come back and tell you that you have to cut your chargebacks or cut off your c

“Things change in the world”

“Nothing is a guarantee are you going to tell me everything the same as it was in 1995 in this business?

“Domains are real estate at the end of the day, don’t think just about protecting your domain, think about opportunity to get domains you couldn’t get before, vanity domains you can create products”

Vaughn Liley clarified IFFOR rules:

Right now there are only two policies of IFFOR:

1.  That you have to label your domain as adult

2.  No child porn.

“We are not going to regulate content” Mr. Liley concluded

Its a pretty entertaining session and if you have the time you can watch it on Xbiz.com

ICANN just published its annual report (pdf), including its financial’s for the fiscal year ending June 30, 2010.

ICANN finished its fiscal year with $64 Million in assets, including $17 million in cash, investments of over $45 million or a total of $63 million.

For the fiscal year ending on June 30, 2009, ICANN had $27 million in cash but only $30 Million in investments or just $57 Million.

Expenses were also up in 2010 to over $58 Million dollars from just $51 million in 2009.

ICANN gained over $4 million from investments in 2010 after losing over $2 million in 2009.

Unrestricted net assets rose to $64 Million at the end of fiscal 2010 from just $53 million at the beginning of fiscal 2010.

You can see the entire report here including the salaries and compensation of all officers of ICANN.

According to the contract that ICANN signed with the the ICM registry this week to operate the .XXX registry (pdf) there may never be any 2 character .XXX domain names.

Exhibit 6 of the Agreement, (found on page 59 of the pdf)  all 2 character .XXX domains shall be reserved until such time as the registry reaches an agreement with “the government and country code manager” or the ISO to release such domains.

Some of the best possible .XXX domains would be 2 character domains; 3D.XXX and 69.XXX, My.xxx, Bi.xxx, SM.xxx, TV.xxx, BJ.xxx are some that come to mind right away (thanks Ed)

For now it does not look like any two character domains will be possible.

Also in the contract,  in the same exhibit, ICANN mandates that all Geographic and all Geopolitical names contained in ISO3166-1 shall be reserved and not made available for registration.

The list contained at ISO is a list of countries, so under the contract with ICANN there will never be a UnitedStates.xxx or France.XXX or Iran.XXX in English or in any other “official language”.

Here is how the contract reads:

“All geographic and geopolitical names contained in the ISO 3166-1 list from time to time shall initially be reserved at both the second level and at all other levels within the TLD at which the Registry Operator provides for registrations.   All names shall be reserved both in English and in all related official languages.

“In addition, Registry Operator shall reserve names of territories, distinct economies, and other geographic and geopolitical names as ICANN may direct from time to time.  Such names shall be reserved from registration during any sunrise period, and shall be registered in ICANN’s name prior to start-up and open registration in the TLD.”

States and cities are not included on this list right now, so while there can’t be a UnitedStates.xxx there can be some Geo’s which might be some of the most valuable of all .XXX domains like Vegas.XXX, Miami.XXX, Newyork.XXX or Rio.XXX.

There might be a lot of other domains restricted by this provision: “territories, distinct economies, and other geographic and geopolitical names as ICANN may direct from time to time”

That might be an interesting one.  They are a lot of possible domains that would fall within that definition.

Back In January we wrote and criticized a WIPO decision handing the generic domain name IndianOil.Org to the Indian Oil Corporation Limited of New Delhi, India

Back at the time we asked, knowing that the same company filed a UDRP against the com version , whether IndianOil.com would be next?

Today we got an answer.

No.

In a three member panel WIPO decision entered today, the domain holder represented by Ari Goldberger, beat back a challenge by Indian Oil Corporation  on the domain name IndianOil.com

On this issue of whether the complainant held a trademark the panel found:

“the Complainant contends that the transfer of the disputed domain name to another registrar represents deceptive, fraudulent and misleading activities by the Respondent and that such a transfer is contrary to the injunctive command in paragraph 8(a) of the Policy which prohibits such transfer to another holder during a pending administrative proceedings and thus constitutes “cyber flying”.

“Furthermore, having observed that there were false details in the registrant’s record such as the e-mail address “udrp@udrp.udrp” and the telephone number “+000.0000000000”, the Complainant represents this as an attempt to mislead the Panel and as constituting evidence of abuse of the process of law and of the UDRP proceedings.”

“In respect of the Complainant, the Panel felt that it could have provided further evidence of its rights under trademark registrations and of its submission that the use by the Respondent of the domain name and the website to which it resolved was to direct Internet visitors to competitors of the Complainant. In particular, it could have provided documentary evidence of trademark registration and evidence of specific products and competitors allegedly promoted on the Respondent’s website.”

“In respect of the Respondent, although it relied on the lack of documentary evidence by the Complainant of its trademark registration, it would have been useful had it provided specific evidence of the date and number of domain names involved in the change of registrar and explained what appear to be inconsistencies in addresses in respect of the transfer of the domain names to a different registrar. ”

While the “Panel concludes that the Complainant has not established that it has a registered trademark, The Panel is, however, satisfied that the Complainant has made out its case for an unregistered trademark in India for the term INDIANOIL. ”

“The Panel has reached this conclusion because the evidence is to the effect that there has been at least 40 years of use of the term INDIANOIL as a trademark to indicate certain petroleum products as being the products of the Complainant between 1959 and 2001 when the disputed domain name was registered by the Respondent.”

“Furthermore, according to the evidence, the Complainant operates a network of 17606 fuel stations, presumably less in 2001, yet most likely still the largest in India, one of said stations with the Trademark being shown in a photograph at page 44 of said book Exhibit H. Accordingly, there has been use of the trademark with a logo and as the trademark alone.”

“On balance, and without other evidence to rely upon to the contrary, the probability is that the trademark was initially descriptive, but that it acquired some distinctiveness, even if it was not as famous as the Complainant contends, particularly in 2001 when the disputed domain name was registered.”

“Accordingly, the Panel concludes on the balance of probabilities that the Complainant has rights in a trademark, an essential element to be established under the Policy and that the trademark is a common law trademark for INDIANOIL.”

“The Panel also finds that the disputed domain name is identical to the trademark and that accordingly the Complainant has made out the first of the three elements that it must establish.”

“The Respondent seeks to rebut the prima facie case against it by relying heavily on the fact that the disputed domain name consists of two words, one being an adjective fashioned from the name of a geographical entity, namely ‘indian’ and the other being a generic word, namely ‘oil’. ”

“As such, this gets the Respondent off to a good start, because the development of UDRP jurisprudence has been in the direction of recognizing the legitimate interest of a domain name registrant who invokes the name of a country or state in a domain name and also the right of a registrant who merely uses a common, dictionary or, as sometimes arises, a generic word that is open to all comers and over which no one else can have superior rights. ”

“Like everything else, this proposition is subject to exceptions and they will be considered later. But in the absence of exceptions the jurisprudence has, if anything, encouraged rather than discouraged the use of these groups of words in domain names.”

“In the case of generic words, the trend has been the same. Thus, the author David Lindsay of International Domain Name Law, ICANN and the UDRP has been able to say: “Where a respondent registers a generic term as a domain name and there are no indications of bad faith, then the respondent will have rights or legitimate interests in the domain name…Another way to state this principle is that the first person to register a generic term as a domain name in good faith will have legitimate interests in that domain name. ”

“In the present case, as the geographical entity has been put into the form of an adjective to qualify the noun ‘oil’ the combined effect of the two words is really to create a generic expression. ”

Accordingly, the use of that generic expression in the disputed domain name will give rise to a right or legitimate interest unless the Respondent has disqualified itself by evidence suggesting that it was intending “to capitalize on the complainant’s trademark interest.”

“This sometimes is put as whether the respondent was targeting the complainant or whether it was acting in bad faith. In other words, the legitimate interest does not arise automatically, for, as the WIPO Overview puts it:

“2.2 Does a respondent automatically have a legitimate interest in a domain name comprised of a generic (dictionary) word(s)?

“Consensus view: If the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a generic word(s). Factors a panel should look for when determining legitimate use would include the status and fame of the mark, whether the respondent has registered other generic names, and what the domain name is used for (a respondent is likely to have a right to a domain name “apple” if it uses it for a site for apples but not if the site is aimed at selling computers or pornography). (Emphasis added).””

“The essential question, therefore, is whether it has been established or can be inferred from the evidence that the Respondent was targeting the Complainant and its trademark, acting in bad faith towards it or capitalizing on the Complainant’s trademark interest.”

“Applying those tests, it must first be said that the evidence shows that the Complainant’s trademark must be very well known in India, but there is little evidence presented to show us the renown of the trademark outside of India.”

On the balance of probabilities, the Panel’s view is that the standing of the trademark outside India is probably similar to the standing of the trademark in Jet Marques v. Vertical Axis, Inc.:

“ The Complainant’s evidence of the use of the trademark outside France is insufficient to establish the reputation outside that country for which the Complainant contends. The Panel accepts that the trademark may be known by those engaged in the travel industry, but the Respondent does not appear to fit into that category. The Respondent’s website appears to do little more than provide a platform for sponsored advertisements provided by others, with the Respondent deriving click-through revenue in exchange for providing that service.”

“Secondly, the evidence is that the Respondent has registered many other generic names, over 280, including many that are combinations of the adjective Indian and a noun, such as <indiangasolineprices.com>, <indiantrees.com>, <indiancorn.com>, <indianbeers.com>, <indianjewelry.com> and many which are the combination of a geographical entity fashioned into an adjective together with the noun ‘oil’, such as <egyptianoil.com> and <albertaoil.com>. This practice, especially given that it is the Respondent’s business to register such names, not only tends to suggest that it was probably not targeting the Complainant, but makes it inherently unlikely that it was doing so.”

“Thirdly, judging by the use the Respondent made of the disputed domain name and the website to which it resolved, it was not targeting the Complainant. The website to which the disputed domain name resolves is a parking page with links to all of the blandishments of modern life from dating services to finance and motor cars and is clearly designed to be a generalist site to which users will find their way while searching, as they do, for generic websites that promote general goods and services.”

“In this regard, the Panel notes the allegation of the Complainant that the website has links to the Complainant’s competitors which are said to constitute strong evidence that the Respondent really was targeting the Complainant. The Panel cannot see how this can be so.”

“Even on the screenshot of the Respondent’s home page exhibited to the Complaint there were no links to apparent competitors of the Complainant and there are none such on the website as it presently appears. ”

“In any event, the Panel finds that on this issue, there are no links to competitors of the Complainant and nothing to suggest that the Complainant was targeted by the Respondent. ”

“The links are essentially generic themselves and, contrary to the Complainant’s submissions, this is an entirely legitimate use of the internet and the domain name system, provided that the registrant does not transgress on the rights of others.”

“Accordingly, the Panel finds that the Respondent has rebutted the prima facie case against it and has shown a right or legitimate interest in the disputed domain name.”

“The Panel has found that the Respondent has in essence registered a generic expression, along with over 280 others, and that its primary intention, which it has carried out, was to earn income from the display of links to generic goods and services and to make money by that means.”

“On the other hand, the Complainant is a large company well known in India. There is however less, apart from passing references to the Complainant’s joint ventures overseas, that supports the notion that the trademark is famous or well-known world-wide.”

“In particular, for a finding of bad faith the question is: would the Complainant and its trademark be known to people outside India, in particular in Barbados where the Respondent is based, so that it could be assumed that the Respondent must have been motivated by bad faith towards the Complainant? Furthermore this possible renown outside of India may come predominantly from its trade name rather than the trademark, while in UDRP cases it is only rights based on the latter which are considered.”

“On the Respondent’s side are the facts that the Complainant must be less well known outside India, that the Respondent acquired the name when it fortuitously came up for sale, that the disputed domain name consists of ordinary words over which no-one has a monopoly, that it has regularly registered generic domain names to aim at or do damage to the Complainant and that it has used the disputed domain name to conduct a legitimate business. All of these factors tend to tilt the scales in favour of the Respondent and are inconsistent with its having acted in bad faith. ”

“Stripped to its real essence, this proceeding is one where the Respondent has run a pay-per-click site of a general nature by using a generic domain name and promoting goods and services that are not associated with the Complainant’s industry. That is not evidence of bad faith.”

“Nor is it evidence of bad faith that the Respondent used a Privacy Service, as the reasons for using one are valid and its use has not prevented the Complainant from prosecuting this claim.”

“Accordingly, the Panel finds that the disputed domain name was not registered or used in bad faith.”

“On the question of laches, the Panel merely wishes to say that as a result of the decision in The New York Times Company v. Name Administration Inc. (BVI), NAF Claim No. FA1349045, laches is “a valid defence in any domain dispute where the facts so warrant.” In the present case, however, the Panel is of the view that the case should be decided on the substantive issues already expounded and that it is unnecessary to go into a long discussion on whether the facts warrant a finding on the issue of laches.”

“Stripped to its real essence, this proceeding is one where the Respondent has run a pay-per-click site of a general nature by using a generic domain name and promoting goods and services that are not associated with the Complainant’s industry. That is not evidence of bad faith.”

Interestingly as long of a decision as this case is, and by UDRP standards its quite long, nowhere did I read in the decision even a mention of the IndianOil.Org case which was decided two months ago.

In that case the same complainant was awarded the domain based off of the same trademark and set of facts as the current situation (a parked domain), with a couple of differences.

Here there was a three member panel while in IdianOil.org there was a one member panel and here the domain holders were well represented while in the IndiaOil.org case no response was filed.

31 March 2011

According to AVN.com,  The Free Speech Coalition (FSC) announced yesterday that it is launching an anti—.XXX campaign  urging  adult online businesses not to register  into any .XXX sTLD.

Diane Duke, FSC Executive Director, said in calling for all online adult business to boycott .XXX:

“Collectively, adult businesses understand that ICM’s .XXX is bad for the adult entertainment industry,” “FSC is launching this campaign, thus continuing its effort to rid the industry of this hazard. We are encouraging adult businesses to Just Say ‘NO’ to .XXX.”

“Adult companies need to know the implications of purchasing .XXX domain names and why buying .XXX could be the worst investment they’ll ever make.”

The reasons given by the FSC for why adult businesses  should avoid .XXX altogether:

“.XXX costs at least 10 times what your .coms cost (recent numbers thrown out are $70-$75/per domain name).”

“Just 5 days after .XXX passed, India blocked .XXX with the promise of more countries like Australia, Germany to follow—instantly de-valuing your costly .XXX domain names.”

” sTLDs have a proven history of failure—even ones that are not blocked by entire countries and have their industry’s support (.travel, anyone???).”

“High traffic websites will be leery of linking to your site, fearful of themselves being blocked or having dead links in blocking countries.”

“All registrants of .XXX must agree to third-party automated monitoring of their sites for compliance with IFFOR policies—AND you will have to purchase your domain name before you even know what those policies are.”

“Aliases (.XXX and .com going to the same site) require that related .coms adhere to IFFOR policies.”

“IFFOR Policies will be determined by a council hand-picked by a Board chaired by ICM’s CEO Stuart Lawley—NOT the industry .XXX is supposed to represent. Moreover, ICM Registry has ultimate veto power over policy development.”

“Businesses who register with .XXX make their alias .coms an easier target for censorship and blocking—do you really want to put your .coms at risk?”

“Do the math—it doesn’t add up. Even if ICM’s claims of new consumers who “trust” .XXX ring true, for a company like Kink.com, which has approximately 10,000 domain names, it would have to bring in three-quarters of a million dollars in new revenues annually JUST TO BREAK EVEN!”

This boycott strategy was brought up at a press conference the FSC held and I attended after a small protest was held outside the Westin hotel at the ICANN meeting.

I asked Ms. Duke at the FSC’s  press conference how this boycott would ultimately help its members and honestly I still don’t know.

Simply put if adult businesses don’t register their respective .XXX domain then someone else will.

Domainincite.com reported this week that more than 500.,000 pre-reservations have been made for a .XXX domain.

Lets say that just 300,000 of these turn into registrations, that’s $15 Million to ICM. (ICM is charging $50 wholesale, not including the $10 to the non-profit)

Like as with the roll out of the .Co and .Me extensions, if more than one land rush application is placed on a domain, it will go to auction.

These land rush auctions have netted millions more for the .Co and .Me registries and should do the same for .XXX

Then there are all those premium and reserved .XXX domains that will be sold at auctions for years to come, which will net millions more.

So when I, as Ms. Duke suggests “Do the Math” the numbers tell me ICM is going to be quite profitable.

The only reason to boycott a business is to hurt that business financially.

It appears that the .XXX registry is going to be financially healthy so a boycott is only going to result in adult business from missing out on securing its matching .XXX domain, which even FSC acknowledges will probably be the only adult TLD that ICANN will ever approve.

While I can appreciate that a company like kink.com isn’t going to register a corresponding .XXX for each of the 10,000 adult domains FSC says they own, it would certainly be foolish in my opinion for them not to protect their most valuable “brands” or key .com’s.

I think if adult online business boycott .XXX they will do so at their peril.

CNBC Had a 5 minutes + segment on Squawk On The Street” on the new gTLD program and .XXX on Tuesday entitled “Has the Internet outgrown .Com”

“The segment discussed whether adding more domains for websites will have big implications for both consumers and companies.”

Ben Crawford of Central Nic and Dot Brand Solutions and Josh Bourne, the head of the The Coalition Against Domain Name Abuse (CADNA).

“Josh I had no idea domain names were being abused.” said the host of the show

Josh Borne said:

“Well they have been.”

“Domain names have grown to almost 210 million registrations worldwide, basically the reason is because it pays so much to to use brand names to confuse consumers and trick them into harmful scenarios.”

Should there be a .XXX domain? Asked the host:

Mr. Borne replied:

“No one was for .XXX, the right, the left, even the adult entertainment industry .

However, those in the domain industry believes they can sell a lot of domain names to brand owners who don’t want their brand associated with .XXX or the adult entertainment industry who are happy using the .Com they have now and don’t want their content blocked”

“No one wanted its other than the companies that want to sell the domains.”

Mr. Crawford then said:

“what brands want to do is to allow brands to get their own TLD….. and give them complete control over the extension.”

Why would we not do that? asks the host:

Ben said ICANN “has been working for a couple years on this to allow these TLD’s for brands, cities and communities that want their own extension, who are ready to to apply for them as soon as ICANN fires the starting pistol.”

The co-host of the show then ask Mr. Bourne why would it cost consumers more money if these extensions are allowed? to which Bourne replied:

“Globally over 90% of all Internet traffic is going to .Com. sites”

“With the huge amount of third party infringement domains, we know parties that ownn 30,000, 40,000 and 50,000 third party infringements its hard to protect consumers from fraud, they expect in the near future  20 times more extensions and there is no chance that companies can keep up with it.”

“In a world where consumers know to go to a .brands only is 5, 10 15 years away you have to undo and retrain people how to navigate the Internet.”

The co-host concluded:

“Although If there was one group who would know what they wanted to seek out,  it would be those seeking out .xxx”

Its an interesting discussion and you should check out the video tape which you can do by clicking here.

Mr. Bourne’s argument  is heavily skewed in favor of the trademark groups as always.

He said  that there are 210 domain registration worldwide, because of all the trademark infringing domains, but then says that 90% of the traffic goes to the .Com extension, which as we know only accounts for half of all domain registrations or 105 Million.

So there is a logically disconnect.

To attributed the vast majority of worldwide domain registrations to trademark infringing domain is simply ridiculous and undermines Mr. Bourne’s argument.

23 March 2011