November 13, 2009
The National Arbitration Forum (NAF) published a historic domain dispute decision late Thursday awarding 1,017 cybersquatting domain names to FreeCreditReport.com. The complaint was filed by ConsumerInfo.com, owner of FreeCreditReport.com, through a process called the Uniform Domain-Name Dispute-Resolution Policy (UDRP), and is believed to be the largest case in the ten years since the UDRP was first enacted. The complete decision is available here.
Interestingly, FreeCreditReport.com was represented in the case by a company called CitizenHawk, Inc., which is not a law firm as would be typical. CitizenHawk and other similar firms such as Alias Encore, Inc. specialize in the automated creation of UDRP complaints using proprietary software, enabling brand holders to enforce their trademark rights at an otherwise infeasible scale.
“The exhibits for this UDRP would have been thousands of pages long, making the case nearly impossible to construct manually,” said Graham MacRobie, CEO of Alias Encore. “Companies have been playing a losing game of Whac-A-Mole with cybersquatters for years, and this case serves as an excellent demonstration of the role automation can play in leveling the playing field by going after huge chunks of infringing names at once.”
Representatives for FreeCreditReport.com and CitizenHawk were not reached for comment.
The disputed domain names were all slight misspellings of FreeCreditReport.com (such as ereecreditreport.com), or they included FreeCreditReport spelled correctly within a longer domain (such as 1-800-freecreditreport.com). The respondent in the case is a firm called Netcorp LLC which had previously lost one other UDRP case in 2005. Unlike that previous case, Netcorp chose this time to represent itself rather than engage the services of a domain industry attorney such as Ari Goldberger or John Berryhill – an interesting and perhaps telling decision considering the complexity of the case.
Further complicating the case was a tussle over the perceived “generic” nature of the brand FreeCreditReport.com. Netcorp argued that “the disputed domain names are comprised of common, descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark.” Ultimately, NAF’s panelist deferred to the United States Patent and Trademark Office which had previously reviewed and approved FreeCreditReport.com’s trademark application.
It would seem that this decision sets or reinforces a fairly strong precedent that trademark holders may be entitled to, not only to the domain name that exactly matches their trademark, but also to a wide swath of other domain names including nearly every possible misspelling or other variation of that trademark, potentially even if the trademark is comprised of generic words.
September 14, 2009
Robert L. Mitchell has written a fascinating article for Computerworld about the many facets of cybersquatting. He gives an excellent overview of the problem, and also many of the traditional solutions.
Although Mitchell covers the Uniform Domain Name Dispute Resolution Policy (UDRP) and some monitoring solutions, he does not cover newer, performance-based domain recovery providers such as Alias Encore and CitizenHawk.
Click here for the original article.
CitizenHawk, Computerworld, and any other trade names mentioned herein are trademarks of their respective owners.
August 4, 2009
Alias Encore is a featured publisher in the latest edition of Commission Junction’s CJ Quarterly newsletter.
Click here to see the newsletter.
July 31, 2009
Cameroon’s ccTLD registrations (.CM) are now open to the public, and domain auction houses are targeting domainers, brand owners and typosquatters alike in an effort to sell high-end generic and potentially infringing .CM domains for hefty prices.
So are the .CM domains worth worrying about? And as a brand owner, should you be registering your brand defensively in .CM?
Less than 5% of Cameroon’s population has Internet access. Clearly the domain name offerings are not intended for Cameroon’s general public. Any attempt to argue the fact that .CM domain names are meant for anything other than typosquatters is, to borrow a phrase, intellectually dishonest.
Additionally, the registration fees are around $175/year, with a 2 year minimum registration term. There are so many cheaper alternatives, unless you are intending to benefit from typosquatting, there’s no use in owning a .CM domain.
On the flip side, at such a steep price for the domain names it will be very difficult to determine how much revenue you can actually realize. Especially given that PPC revenue is in decline, typosquatters may be scared off due to the high price, low PPC margins, and uncertainty over how much traffic a .CM typo can actually generate.
The ultimate decision will need to be made by each brand based on their internal tolerances. How much are you willing to spend to keep a name out of a squatters possession? Does the brand have an International presence? If you found out that a 3rd party had a .CM variation of your brand would you seek to recover it?
For a complete list of Registrars Accredited to provide .CM, COM.CM, NET.CM and CO.CM domain name registrations, click HERE.
June 24, 2009
ICANN recently published notices regarding two Accredited Registrars.
The first notice was published on June 11th, 2009, regarding Lead Networks Domains Pvt. Ltd. failure to comply with the Rules for Uniform Domain Name Dispute Resolution Policy (“UDRP”) despite repeated requests by ICANN. These rules require registrars to communicate plans to implement UDRP Provider decisions, maintain records make these records available to ICANN upon reasonable notice. The notice of breach concerns 61 UDRP proceedings where the prevailing Complainant complained that Lead Networks failed to implement the decisions. The notice can be found here.
The second notice was published on June 15th, 2009, regarding the de-accreditation of the Registrar Maxim Internet, Inc. ICANN is seeking applications for the bulk transfer of the approximately 5,219 domain names registered with Maxim. ICANN notes in their posting that, “posting that, “In light of the unique circumstances of this case, in the selection process, an advantage or preference may be given to registrars with prior experience in integrating acquisitions, resellers, or large portfolio accounts, or receiving bulk transfers with incomplete or problematic data.” The Expression of Interest Notice can be found here.
If you have experienced issues with ICANN accredited Registrars, you can contact their Compliance Department by emailing firstname.lastname@example.org. ICANN requests that you attempt to resolve any concern or dispute directly with the Registrar first.
May 23, 2009
ICANN has announced that TuCows has been selected to take over management of the domain name registrations previously held by Parava Networks (doing business as 10-Domains.com).
ICANN terminated Parava’s Registrar Accreditation because of multiple breaches of its Registrar Accreditation Agreement (RAA). The breach letter can be found here.
Normal procedures under such circumstances dictate that ICANN initiate a “Request for Statements of Interest” (RFI) from registrars who were interested in taking over management of the domain names. 14 Registrars responded to the RFI. TuCows, Inc. was selected from the RFI candidates.
If you have domain names registered at 10-Domains.com you should be contacted by TuCows soon with notices of the transfer and instructions on how to access your domain names. If you are a current customer of 10-Domains.com and have questions, you should contact TuCows at:
Telephone: North American toll free: 1-866-731-6556 or Direct: +1 416-538-5498
ICANN’s announcement and more information can be found here.
May 18, 2009
Network Solutions recently sent notices regarding settlement of two class action lawsuits filed in U.S. District Court for the Central District of California. The lawsuits were filed by plaintiffs Chris McElroy (Case No. CV 08-01247 PSG (VBKx)) and James Lee Finseth (Case No. CV 08-01537 PSG (VBKx)) over questionable registrations tactics by Network Solutions between December 14th, 2007, and March 15th, 2008.
Network Solutions, during the time in question, engaged in what has been described as “Front Running” domain name registrations. In the Front Running scheme, Network Solution’s system would note when a visitor at their website queried the availability of a domain name. If the domain name was available, and the user left their website without registering it, Network Solutions would themselves secure the registration within 1 to 4 days.
The poorly thought out strategy behind this campaign was to prevent a user from registering the domain name with another Registrar after checking for availability at Network Solutions. All domain names secured by Network Solutions could be purchased and moved to an account at Network Solutions.
The first class of claimants are those who purchased the domain name during the same session the query for availability was conducted. The second class of claimants are those who purchased the domain name up to 4 days after the query for availability was conducted.
First class claimants will be eligible to receive a $6 credit for each domain name, and second class claimants will be eligible to receive a $9.91 credit for each domain name.
Network Solutions estimates approximately 113,094 domain names were registered during the time period. They will be paying approximately $375,000 to the first class and $500,000 to the second class. Additionally Network Solutions will be paying legal fees and costs to the Plaintiffs.
You can find out more information regarding the Settlement here.
Network Solutions maintains that it did not do anything wrong.
May 4, 2009
The Intellectual Property Constituency (IPC), at the direction of the ICANN Board, announced in March it had formed an Implementation Recommendation Team (IRT) to provide possible solutions for Trademark and other Intellectual Property concerns raised during the comment period for the new gTLD Guidebook.
The first face-to-face working meeting was April 1st. The IRT has recently published a website which outlines their focus and provides links to resources including a WIKI site. The WIKI site is intended for groups or individuals interested in providing comment or recommendations to the specific issues tasked by the IRT.
The four primary issues that the IRT will focus on are:
- Trademark Protection – High Priority Issues raised during the comment period for the new gTLD Guidebook, most notably IP Clearance, Dispute Resolutions mechanisms and WhoIs requirements for the new TLDs.
- Potential for Malicious Conduct – ICANN has raised the issue of studying the potential for criminal abuse in the new gTLDs and possible measures for mitigation.
- Root Zone Scaling – This study will look at the root impact of not only adding new gTLDs, but also IDNs, DNSSEC, and IPV6.
- TLD Demand and Economic Analysis – ICANN commissioned an independent third-party to produce reports that address consumer benefits and pricing issues. These reports were available for public comment through April 17th, and are located here.
March 29, 2009
The Intellectual Property Constituency (IPC), at the direction of the ICANN Board, has announced it has formed an Implementation Recommendation Team (IRT) to provide possible solutions for Trademark and other Intellectual Property issues regarding the new gTLDs.
Among the team members are Russell Pangborn, Managing Attorney for Microsoft Corporation, J. Scott Evans, Senior Director-Legal for Yahoo! Inc., and Fabricio Vayra, Counsel, Intellectual Property for Time Warner Inc. See the full list here.
The first face-to-face working meeting is scheduled for April 1st. The team will issue its first draft report by April 24th, and a final report on May 24th which will be open for public comment.
The ICANN press release on the IRT can be found here.
March 25, 2009
ICANN’s second draft of the new generic Top-Level Domains Applicant Guidebook (gTLD) has been released. The public comment period for this new draft is open and ICANN will accept comments through April 13, 2009.
ICANN has clarified several issues, including proposed reduction in ongoing “Registry-Level Fees” from US$75,000 per year to US$25,000 per year.
The application fees are divided into the following:
- TAS User Registration Fee: US$100 – This fee enables the user to enter the online application system.
- gTLD Evaluation Fee: US$185,000 – This fee is set to recover costs associated with the new gTLD program and ensure that the program is fully funded, and doesn’t take resources from other ICANN funding sources.
An interesting note on the gTLD Evaluation Fee is that Participants in ICANN’s proof-of-concept application process in 2000 may be eligible for a credit toward the evaluation fee. The credit is in the amount of US$86,000 and is subject to meeting additional criteria.
If an extended review of an application is required, an additional Registry Services Review Fee of US$50,000 may be required.
Unfortunately it appears that concerns and objections raised in the first comment period, such as protection for Trademark holders and economic viability analysis, are still not addressed.
Follow all the news on ICANN’s New gTLD Program here.