Displaying posts under "Policy & Law"
But not fast enough for some registrars that fear losing their accreditation.
ICANN Vice President of Domain Name Services Cyrus Namazi has sent a letter (pdf) to domain name registrars regarding their concerns over legal implications of the 2013 Registrar Accreditation Agreement (RAA).
In a nutshell, the letter says ICANN is still exploring resolution to conflicts with local laws. In the meantime, some accredited registrars’ ability to sell new top level domain names — and soon .com domain names — is in limbo.
The 2013 RAA includes new requirements on data that require domain name registrars to retain certain data for a length of time after a customer leaves them. Many registrars, particularly in the European Union, believe the rules violate their local laws.
The RAA includes a provision for registrars to get a waiver to the retention policies in order to comply with local laws. But that process isn’t going smoothly nor quickly.
As a result, many domain name registrars haven’t signed the latest RAA. Signing the RAA is a requirement to sell new top level domain names, so many European registrars aren’t selling them yet.
Not being able to sell new TLDs is kind of a big deal to registrars. But there’s a ticking time bomb that makes this issue even more serious. The last RAA came out in 2009 and lasts for five years. That means that many registrars are about to have their accreditation expire unless they sign the 2013 RAA.
If you lose your accreditation, you lose the ability to sell gTLDs like .com.
Namazi’s letter to registrars, which effectively says “we’re working on it”, will provide little comfort to registrars that feel their entire business is in limbo.
The letter also mentions WHOIS conflicts with local law, which could affect European registries for new top level domain names.
Michele Neylon runs one of the registrars in legal limbo, Blacknight. Neylon told Domain Name Wire today:
ICANN has known about the issues for over a year. They delayed providing any form of “process” for requesting waivers until October of last year, which is 6 months after the final version of the RAA was published and 4 months after the first registrars signed on.
Over a dozen EU based registrars have requested waivers from ICANN. All have invested time and money in seeking external legal advice as per ICANN’s broken process. That EU based companies need to even go through this process is laughable, as we are effectively being asked to request permission to not break our own laws. Meanwhile the EU DPAs, as represented by the Article 29 Working Party, have repeatedly told ICANN that the clauses in question are not compatible. ICANN’s response to them as well as us has been to delay matters.
While I cannot speak for every individual EU based registrar I know that any I have spoken to are both frustrated and angry. ICANN’s inability to address this issue is impacting our ability to do business.
Should we now sue ICANN for loss of earnings?
Billionaire fights back after finding his name cybersquatted in new domain names.
Billionaire entrepreneur Richard Branson has turned to two new tools to combat cybersquatting in new top level domain names: The new Uniform Rapid Suspension (URS) policy and Donuts’ “Domain Protected Marks List”.
Branson filed a URS case with the National Arbitration Forum in an effort to get the registrations for RichardBranson.holdings and RichardBranson.ventures suspended.
fter noticing the domain names were registered, he also subscribed to registry Donuts’ Domain Protected Marks List service. By using this service, he has effectively blocked the registration of RichardBranson.TLD for any of Donuts’ other domain names.
The retail price for the blocking service is about $3,000 for five years.
His companies have also filed complaints against VirginGalactic.guru and VirginAustralia.holdings.
.Mail may be shelved and group suggests new way to handle name collisions for new top level domain names.
One of the key changes from the existing name collision plan: permanent reservation of the .mail top level domain name.
JAS found that use of .mail in systems is prevalent and that it should not be delegated. This puts it in the same camp with .corp and .home, which were already on permanent hold.
There are currently five applicants for .mail, and they’ve already gone through quite an ordeal including multiple objections. All of the fighting over .mail might be pointless now.
The second major recommendation in the JAS report is to enact a “120-day controlled interruption period” after top level domain names are added to the root. This idea was inspired by the controlled interruption of expired domain names. By changing the nameservers on expired domains and thereby taking down a website, domain owners act quickly to renew their domain names. Although the site outage is bad, it’s better than having the domain go through deletion undetected by the owner.
Registries that have not yet been delegated to the root zone shall implement controlled interruption via wildcard records; registries that have elected the “alternative path to delegation” shall implement controlled interruption by adding appropriate resource records for the labels appearing in their respective block lists. Following the 120-day controlled interruption period, registries will not be subject to further collision-related restrictions. Like the Certificate Authority (CA) revocation approach, which may be partially implemented in parallel, we believe the 120-day controlled interruption period offers a conservative buffer between potential legacy usage of a TLD and the new usage.
ICANN will need to temporarily relax the restriction on wildcarding in order for registries to be able to do this. The interruption will help corporate network administrators identify collisions.
For domains already in general availability, JAS recommends the controlled interruption only for the domains on the name collision block list. JAS recommends no further collision-related restrictions on TLD operators after the 120 day window.
When it comes to emergency response to unexpected collisions, JAS recommends against the wholesale de-delegation of a domain name. This would harm people who have already registered second level domain names under the TLD. It argues that emergency response options should only by use in the case that the “DNS namespace collision presents a clear and present danger to human life.”
In other words, economic loss is not a reason for an emergency response.
All of JAS’ research suggests that name collisions should end up being a minor issue. It points out that every TLD added to the root since 2007 showed some symptoms of name collision prior to the delegation. Yet the world hasn’t ended.
Reading through the report reminded me that ICANN could have prevented a lot of wasted cycles by new TLD applicants had it just evaluated name collisions many years ago when the issue was identified.
If I were them, I’d find another domain name and focus on the business rather than waste time with a lawsuit.
Facepets.com, LLC, a company that wants to start a social network for pet owners, has filed a federal lawsuit (pdf) against Facebook in Nashville.
The company is asking for Declaratory Judgment that its name doesn’t infringe on Facebook’s trademarks.
This all started when Facepets.com filed a trademark application for its name, which caught the attention of Facebook’s lawyers. The parties then exchanged correspondence, with Facebook’s lawyers arguing the name would cause confusion.
Facepets.com argues Facebook is engaging in “trademark bullying” and is “attempting to unfairly raise the cost of entry for Facepets to enter the marketplace with its concept.”
In my opinion, it’s pretty obvious why Facepets.com chose its name: to ride the coattails of Facebook. Frankly, it’s a stupid name. If I were Facepets.com, I’d just go find another good (and hopefully more unique) domain name rather than waste money on a lawsuit.
Small business owner forced to defend his great product-defining domain name.
Last month I was shocked to see a UDRP filed for SteelBuildings.com. I was even more surprised when I saw that the domain name seemed to be in use by a company that sells steel buildings.
I reached out to the whois contact for the domain name, as well as the email address on the website, to ask for details on the complaint. Yesterday, a few weeks later, I received a phone call from John Morgan, owner of Atlantic Building Systems and the SteelBuildings.com domain name. Hearing John’s story made me cringe.
This is a case of a small business owner who was smart enough to get a great descriptive name for his industry being bullied by a $1.35 billion (market cap) competitor.
As a result, the small business owner has a choice of either spending thousands of dollars hiring a lawyer to defend his domain name or spending lots of time learning how to defend it himself.
All for a case that I believe is without merit.
NCI Group, Inc. owns the product-defining name SteelBuilding.com (singular), and now it wants the plural. It filed a UDRP to get it.
John provided me with a copy of the complaint, available here (pdf).
Much of the case hinges on the fact that the whois information for the domain is that of a web development firm that manages the site for Atlantic Building Systems. So technically the web development firm is the respondent.
But it’s very clear what’s going on here. The site is managed by an outside firm, but it’s done for the actual company that sells steel buildings.
If you need proof, look at the whois history for the domain name. John Morgan is shown in previous records. Having the web design company listed as the actual registrant is not a good practice, but it’s clear when you visit the domain name (or view the records in the Wayback machine) that it is owned by a steel buildings company.
Here’s how NCI argues its case:
NCI acquired a company that used the domain name SteelBuilding.com. After years of trying, it was able to get some trademarks for SteelBuilding.com, claiming first use in 2000.
This case would be akin to the owner of Car.com filing a UDRP against Cars.com, the owner of Computer.com going after Computers.com, or the owner of Tree.com going after Trees.com.
Owning the singular of a product name doesn’t give you rights to the plural.
“Steel Building” describes a product. The words on their own are not a brand. In fact, on SteelBuilding.com (annexed to the complaint), the headline reads “Steel Buildings”. It’s used in its descriptive sense. When I googled “Steel Building” (with quotes) today, I got over a half million results — including a Wikipedia page explaining what a steel building is.
If NCI had a trademark for “Steel Building”, then it might have a case here.
That said, some panels are very lenient on the first prong of UDRP, so this prong of the UDRP is a crapshoot.
Rights or Legitimate Interests
…if the Complainant produces sufficient evidence to suggest an absence of bona fides on the part of the Respondent the burden shifts to the Respondent to explain its use of the domain. Id. In this case, Complainant does not have any information to indicate that Respondent has engaged in use of “steelbuildings.com” in connection with a bona fide offering of services before notice of a potential dispute.
I’m sorry, it doesn’t have any information to suggest this? Here’s what you see when you go to SteelBuildings.com:
It’s true that the respondent, as in the web design firm, doesn’t sell steel buildings. But it’s pretty damn clear that its client does and is using the website to promote its business. It’s worth noting that the complainant included a copy of the SteelBuildings.com website in its annex.
NCI points to a previous UDRP in which a company filed a UDRP against its web design firm after the web design firm held the domain hostage, suggesting this is a “similar case” for this purpose. That seems misguided.
Registered in Bad Faith
NCI doesn’t really offer any evidence that the domain was registered in bad faith, only that it was somehow used in bad faith.
Respondent does not offer any goods or services in connection with the domain name “steelbuildings.com” and all circumstances point to the fact that the business it purports to promote, Atlantic Building Systems, does not exist.
Anyone who visits the site would think it offers goods and services for steel buildings. NCI’s claims of the business not existing are based on abandoned trademark filings undertaken by the respondent.
It’s pretty easy to assume a business no longer exists if you don’t really want to find it. But just using a simple piece of information from the abandoned trademark applications – the name “Atlantic Building Systems” and the applicant’s name, I was able to quickly see that the business appears to exist and the relationship between the company and the actual registrant of the domain name in whois. Just do a Google search and one of the first results is John’s LinkedIn profile, along with an endorsement for Derrick Bradshaw. It’s Bradshaw’s company that’s in whois and is listed as the respondent in this case.
If the 2003 trademark filing, the LinkedIn profile, and the many years of archives in Wayback are some sort of cover for a non-existent business, then this is one of the most elaborate and long running schemes I’ve every seen.
It’s kind of ironic that NCI points to a trademark notice of abandonment as evidence that a company no longer exists. After all, the company it acquired abandoned multiple trademark applications for SteelBuilding.com last decade. Surely that wasn’t because it no longer existed.
Assume for a second that Atlantic Building Systems no longer exists. This trademark filing would seem to indicate that it existed at one time. So the domain clearly wasn’t registered in bad faith.
NCI concludes its argument that the domain was registered and used in bad faith by noting:
Similarly here, there is no evidence that Respondent is using or preparing to use the disputed domain in good faith. Indeed, there is no evidence that Bradshaw [the web developer] has ever sold steel buildings in any capacity. If, in fact, Bradshaw registered this domain on behalf of another entity, that entity either never existed or ceased to exist. While the disputed domain does resolve to a website, upon information and belief, that website is not monitored and promotes a business that either never existed or no longer exists.
I wonder how the panel will react to “if, in fact” it was registered for the client. I think that’s pretty obvious.
Even a win is a loss
NCI, a huge publicly traded company, has hired big guns for its case: the law firm of Bracewell & Giuliani. (Yes, that Giuliani.) But that doesn’t mean the firm has a particular expertise in UDRP. I found 7 UDRP cases the firm has filed since 2006. It has a 4 and 3 record. One of those losses was an egregious case against a widow. In another, the complainant was found guilty of reverse domain name hijacking in a case against Telepathy.
Assuming the UDRP panel doesn’t go rogue in this case, John will win. But he will still lose.
John has decided to defend the case himself. After talking with him for about 15 minutes minutes today, it was clear to me that he’s a sharp guy. He’s researched UDRP and understands the nuance, such as the benefits of selecting a three person panel.
Still, it’s a lot of work. John has been in the metal building business for about 15 years, and he’s an expert in it. Now he’s having to spend time learning about domain names and responding to this complaint when he should be working on growing his six-employee business.
If he wins, and even if he gets a charge of reverse domain name hijacking, the complainant won’t have to pay him any penalty.