Board instructs CEO to outline plan and steps for opening a second round.

ICANN’s board of directors has passed a resolution reaffirming that it plans to open another round of new top level domain applications as “expeditiously as possible”.

The resolution instructs the CEO to create a work plan that outlines the steps necessary to initiate a second round of applications. This includes addressing Governmental Advisory Committee concerns over trademark protection and root zone scaling.

The current version of the new top level domain applicant guidebook states that the goal is to open a second round within one year of the current application period ending. The current application window closes April 12, 2012.

However, it is improbable that this can occur given commitments ICANN has made to review how the first round goes before proceeding to a second round. Industry observers have suggested that 2015 is a likely date based on the existing plan.

Judge sides with Oversee.net on narrow issue in lawsuit.

The Honorable Stephen V. Wilson has issued a verdict in the first trial between Monte Cahn and his former employer, Oversee.net.

The decision was extremely narrow, covering just one aspect of Cahn’s claims against the company.

Cahn had a bonus plan that was essentially an earnout from when Oversee.net bought Moniker from Seevast. It provided up to $13 million over three years.

One of the bonus measures was an overall Oversee EBITDA number that was to be set each year by the board. When business conditions deteriorated, the board never ended up setting the goal specific to the incentive plan.

However, it did set a company budget that had an EBITDA goal. This goal was used for other management at the company. Cahn argued that this is the number he should have been held to under his incentive plan.

The judge issued his findings solely about one question:

“whether Oversee promised Cahn that his Performance Goal under the MIP [incentive plan] would be identical to a target (the “Company Budget”) used as part of the process for determining bonuses for Oversee legacy management employees.”

The court decided that Oversee did not make this promise.

Oversee.net provided evidence from its negotiations with Cahn before he joined the company that showed the company explicitly said it would not hold Cahn’s bonus measures to be consistent with the rest of management. Its goal, as stated in the incentive plan, was to reward “significant contributions toward the continued or improved profitability and growth of the Company ”

MonikerOversee.net’s 2008 EBITDA “budget” goal was $51.1 million. That goal was reduced by more than 50% to $23.9 million for 2009. Since the earnout was designed to reward growth, the judge said it wouldn’t make sense for this budget number to apply to Cahn’s bonus plan.

Oversee.net later offered Cahn an alternative bonus plan when it realized the existing one wouldn’t give him much of an incentive because he was unlikely to hit the lofty numbers. Afterall, the company slashed its own projections by half. Cahn was able to receive a bonus under the old plan or the new plan.

In 2009, Cahn received a bonus under the new plan (with reduced targets) that was about 10% of what he would have gotten under the old plan.

The judge questioned how Cahn would have accepted this reduced bonus if he thought he was due $1 million or more under the original bonus plan.

As I stressed at the beginning of this post, this is just one narrow issue in the case Cahn brought against Oversee. There will be much more to come.

You can read the judge’s decision here.

Respondent wins but should have gotten more than that.

National Arbitration Forum panelist Beatrice Onica Jarka got the “answer” correct in a recent UDRP case. But she really should have considered reverse domain name hijacking.

The case was brought by deals site Shopzooey, Inc.

Shopzooey, Inc was founded in 2011. Upon finding the domain name Shopzooey.com already registered, the company registered MyShopZooey.com in July 2011. ShopZooey.com was registered in September 2010.

Fast forward to 2012 and ShopZooey is frustrated that it can’t get in touch with the owner of the better domain name to try to buy it. So it files a UDRP.

Here are some of the complainant’s arguments:

“Respondent has failed to address continued overtures by Complainant in a good faith attempt to open up a negotiations dialogue for the possible purchase of the domain.”

“The domain name is being used in bad faith, as upon purchasing the disputed domain name, Respondent failed to put the domain to proper use. To date, Respondent has yet to make proper use of the domain and this misuse has continued for one year and four months.”

“…Respondent’s continued renewal and failure to properly utilize the domain qualifies as a deliberate attempt by Respondent to profit from diverting users to the Respondent’s myshopzooey.com website by causing mistake or deception as to the source of origin of the services and intentionally disrupting Complainant’s business.”

“Respondent utilized a third-party registration company (Domains by Proxy, Inc.) to shield the true identity of the Respondent. As such, Complainant submitted numerous requests to the third-party registration company to contact the Respondent to attempt to engage in a dialogue regarding the disputed domain name.”

My God, I think I might throw up.

If there ever is UDRP reform, arbitration forums should be required to throw out cases where the subject domain was registered before any claimed trademark rights.

In the mean time, panelists should call reverse domain name hijacking when they see it. Even if the respondent doesn’t have a lawyer and doesn’t know to ask for it.

PING golf manufacturer still has a TLD trademark going through the system.

Last month I wrote about how the U.S. Patent and Trademark Office had caught on to an trademark application for .Ping.

It was filed by Karsten Manufacturing, which owns the PING line of golf products.

Although the USPTO has a policy of not allowing trademarks for top level domain names, .Ping had proceeded to publication until it was caught by an examiner.

But I just noticed another application (85,441,399) Karsten filed that has proceeded to publication: “Ping”. There’s no dot at the beginning, but the “Goods and Services” description makes it clear what it’s for:

Domain name registration services; Registration of domain names for identification of users on a global computer network

That’s the same description the company used for .Ping. If Karsten were to get this trademark then it could try to use it against anyone else that decides to apply for .ping as a top level domain.

There’s another interesting application from Karsten as well. Take a look at application 85,453,143 for “PING” for “Chat room services for social networking; Providing on-line chat rooms for social networking”. The company says it’s been using this term in commerce since 2010, and provides a screenshot of something from iTunes to back up this claim. I really don’t understand what this screenshot represents, but it seems peculiar. Especially since “ping” is a perfectly reasonable name for a chat service.

Godfather of Soul’s domain name can stay with management company.

The estate of James Brown has lost a domain arbitration case for the domain name JamesBrown.com.

The domain is owned by LAC Management, Inc., which manages “RJ & The James Brown Band”. LAC argued that James Brown gave at least his tacit consent for it to register the domain name. In its pleadings, the estate even admitted that Brown may have consented to the domain registration while he was alive.

The estate made a number of legal arguments that aren’t typically considered by a UDRP panel and the panel decided to ignore them.

That makes sense. Even if the estate does have a legal argument to get this domain name, it’s certainly too complex to be handled by the UDRP mechanism.

LAC Management was represented by Ari Goldberger of ESQwire.com.