Domain Name Wire

Domain Name Wire

Displaying posts under "Policy & Law"

  • An interesting dates question in a UDRP

    1. BY - Jul 23, 2014
    2. Policy & Law
    3. 1 Comment

    What if you registered a domain long ago, let it expire, and then registered it again?

    The date you first registered a domain name is a critical factor in a UDRP.

    Generally speaking, if your registration predates the complainant’s rights in a term, then the complainant can’t win a UDRP. That’s because it’s impossible that you registered the domain name in bad faith…unless you’re psychic.

    Some complainants have argued that the renewal of a domain name can be in bad faith. Some outlying panelists have bought this argument.

    Dates in a just-decided case for proquidity.com bring up another interesting question: what if you registered a domain a long time ago, let it expire, and then registered it again?

    If the complainant’s rights in the matching trademark were gained after the original registration but before the new one, did the rights predate the registration?

    The question is begged but not answered in the proquidity.com dispute. The re-registration of the domain name still predates the complainant’s rights, but just barely.

    Common sense suggests that a panelist, in a case in which this question does need to be answered, would consider the earlier registration as evidence in the question of “registered and used in bad faith”. Of course, the circumstances of the expiration and reason for re-registration would require examination.

  • ICANN Finally nabs Domain Registry of America, termination likely coming

    1. BY - Jul 21, 2014
    2. Policy & Law
    3. 11 Comments

    Domain Registry of America hits a wall.

    ICANN has finally managed to suspend a scourge of the domain name registration business, Brandon Gray Internet Services (dba NameJuice.com).

    You might not know the company by that name, but if you own domain names then you’ve likely received postal mailings from Domain Registry of America (DROA). The deceptive notices trick people into thinking they need to renew their domain name by responding to the notice. Doing so results in a transfer of the domain name to Brandon Gray registrar…and the pricetag is hefty.

    The company has been doing this for over a decade. Register.com sued the company way back in 2002.

    Many people in the ICANN community have been begging ICANN to take action for years. So why now?

    For all its faults, you can credit the 2013 Registrar Accreditation Agreement for this one.

    The 2013 RAA placed stricter controls on registrars as it relates to resellers. Accredited registrars can no longer turn a blind eye to activities undertaken by their resellers (or to hide behind resellers, as may be the case). This includes resellers undertaking deceptive advertising practices.

    ICANN is also questioning (pdf) how the company obtained mailing addresses for so many domain name registrants. (In other words, it scraped whois to get the records).

    The registrar is immediately suspended (although it hasn’t updated its website to reflect this) and may be terminated soon. ICANN sent a breach notice (pdf) along with the suspension notice. It has onerous requirements to cure the breach, including providing details behind all of its marketing activities.

  • Domain name owner loses UDRP, sues, gets $7,500

    1. BY - Jul 17, 2014
    2. Policy & Law
    3. 5 Comments

    MyArt.com owner can keep domain name and some cash.

    My ArtIn April I wrote about how the owner of My-Art.com filed its second UDRP against the domain name MyArt.com and won.

    It was a bad decision based, in part, on a incorrect claim that the domain name was transferred to a new owner after the first decision.

    The owner of MyArt.com didn’t respond to the UDRP filing, but sued after the decision was handed down.

    The lawsuit, filed by law firm Lewis & Lin LLC, claimed reverse domain name hijacking under the Lanham Act, as well as related state unfair competition claims.

    My Art SAS, the French company that filed the UDRP, settled after the lawsuit was filed. It won’t get the MyArt.com domain name and also agreed to pay statutory damages, attorney’s fees and litigation costs.

    Court records show the payment was just $7,500. Not much, but a nice turnaround from having to give your domain name away to getting paid for your inconvenience and legal fees.

  • Frank Schilling beats IBM in domain dispute

    1. BY - Jul 08, 2014
    2. Policy & Law
    3. 7 Comments

    Reserved three letter .link domains won’t be suspended.

    Frank Schilling’s North Sound Names, the company under which he registers premium domains in his new TLDs, has defended two such domain names from a URS filed by IBM.

    IBM filed a Uniform Rapid Suspension case against the domain names DB2.link and AIX.link.

    North Sound, with the help of attorney John Berryhill, successfully convinced the URS panelist that it registered the domain names as part of a collection of three letter domain names rather than to infringe IBM’s marks. It pointed out that multiple companies use DB2 and AIX in their names or as acronyms.

    The panel noted that IBM’s rights in the terms relate only to specific products and services. They are not universal.

    The parked pages for the domains don’t seem to be targeting IBM’s usage, either.

    As a result, IBM lost the cast.

  • Minds + Machines files patent for “Domain Name Registration and Resale”

    1. BY - Jul 03, 2014
    2. Policy & Law
    3. 1 Comment

    Patent describes system similar to AfternicDLS and SedoMLS but at the registry level.

    Minds + MachinesMinds + Machines Chairman Fred Krueger has filed a patent application (pdf) for the resale of domain names, titled “Domain Name Registration and Resale”.

    Here’s part of the description:

    Internet registries operate in the primary market for domain names and not in the secondary market. A registry has no record of whether a domain name is available for resale and, if so, at what price, so the secondary market for domain names is constrained by not having a central repository for this information. A system for keeping information relating to the secondary market of domain names at the registry level, accessible by all registrars as well as by users, has eluded those skilled in the art, until now.

    Does that sound a lot like AfternicDLS or SedoMLS? The only difference in the patent application is that the registry is running the system rather than a third party. The query for domain availability just goes to the registry instead of also pinging a third party.

    It goes a bit further than that. My reading of the application is that it’s also trying to patent a registry offering domain names at a premium price. When a registrar pings the registry for availability, the registry may respond back with a higher price for premium domain names.

    The patent application is in Krueger’s name, not currently assigned to Minds + Machines. It was filed in January 2013 and published today.