Month: January 2014

All for One and One for All

Posted on by jbourne

This will be a watershed year for the Internet and for the viability of multiple voices and opinions coming together to decide how it all should work. That was the consensus of one panel at the 2014 State of the Net conference held January 29 in Washington, D.C.

The sentiment was first declared by National Telecommunications and Information Administration Assistant Secretary Larry Strickling in his opening remarks before a break out session called “If the Multistakeholder Model is the Past, Present, and Future of Internet Governance, Can Someone Please Define It?”. Other panelists echoed that opinion.

2014 brings with it new voices in the Internet governance debate, as well as new content and privacy challenges. Brazil is hosting the Internet governance forum on April 23, and new Internet governance discussion groups keep sprouting, such as 1Net.org and Global Commission on Internet Governance. The biggest change to the Internet to date, the introduction of new generic top-level domains like .CLOTHING, is underway (a topic only lightly touched upon at State of the Net). And more political leaders are asking questions about how the Internet is run in the wake of Edward Snowden’s revelations about the National Security Agency’s surveillance activities.

With new questions and new voices, the panelists identified challenges primarily of definitions and trust: Definitions in terms of what roles different stakeholders such as governments, the private sector, and ICANN should play in running the Internet; definitions also in terms of how those roles are weighted against each other, how discussions are run, and what sort of consensus must be necessary for decisions to be made.

Dr. Youn Jung Park, professor at the State University of New York (SUNY) Korea, pointed out that it will be difficult for governments to sustain participation in Internet governance discussions without clear boundaries and rules for their input. Dr. Laura DeNardis, professor at American University, agreed that the voice of governments and the private sector provide unique benefits for the discussion, but the history and intricacies of the systems already in place must be understood before any changes are made.

If these definitions are reached fairly, they will succeed. Daniel Sepulveda, Deputy Assistant Secretary of State and U.S. Coordinator for International Communications and Information Policy, said this trust was the hallmark of a strong multistakeholder system: If stakeholders, whether or not they win their argument of the day, feel that the system is working fairly, the system will sustain itself.

For all Internet stakeholders – Internet users, governments, and businesses – clearly there is a lot of work ahead.

When Should Businesses Consider TM Protections in New gTLDs? Now!

Posted on by slevy

Is it too early or precisely the right time for a conversation about new generic top-level domains (gTLDs) and the various ways brands can protect themselves against cybersquatting?  This was the main question nearly 20 participants had at a roundtable in Philadelphia sponsored by the International Trademark Association entitled “gTLDs: Protecting Your Brand.”

The discussion group, lead by yours truly, was made up of law firm attorneys, in-house counsel, representatives from service providers CCH Corsearch, and mega-registry Donuts.

Many in the room were there “to learn as much as I can about this subject” reflecting the fact that it’s still early in the rollout of new TLDs, and most brand owners have registered no new second-level domains let alone filed claims under the Uniform Rapid Suspension system (URS), the Post-Delegation Dispute Resolution Procedure (PDDRP) or the Registry Restrictions Dispute Resolution Procedure (RRDRP) which have been added to the arsenal of brand owners that, until now, had been limited to the Uniform Dispute Resolution Policy (UDRP).

Seven new gTLDs are now open to the public for registration of websites, and many more will become available to the public in the coming months so I expect there will be a tremendous increase in demand for expertise on these issues.

Many roundtable attendees were familiar with the Trademark Clearinghouse (TMCH) – the organization put in place by the Internet Corporation for Assigned Names and Numbers (ICANN) to help brands protect their marks. But participants expressed concerns about the vague instructions from, and lack of communication by the TMCH.

Donuts’ Domains Protected Marks List (DPML), a blanket protection being offered across its 250+ TLDs, was of particular interest to attendees.  For less than the price of a single UDRP complaint, brand owners can block others from registering domains identical to, or that contain their trademark.  Even for this brand-friendly program, however, it seems likely that there will be kinks to work out the system gains in popularity.

Although clients may not be ready to ask for advanced gTLD services, now is the perfect time for trademark professionals to scale the learning curve so that once these domains start appearing on billboards, buses, Super Bowl® commercials, and web ads, these professionals can avoid last-minute scrambles and instead be fully prepared to take immediate steps to protect valuable brand assets.

Not A Bright Idea

Posted on by slevy

In 2003, a predecessor of the Just Bulbs lighting company filed and lost a UDRP case against the domain <justbulbs.com> because the respondent agreed to only advertise flower bulbs at the website and so had a legitimate interest in the domain.

Fast-forward to 2013 and the website at this domain now shows sketchy pay-per-click ads for light bulbs and thus competes with JUST BULBS brand. Also, it turns out that the Respondent has now lost over 140 prior UDRP decisions and is an admitted cybersquatter.

Normally, after a losing decision, a brand owner can’t re-file a UDRP complaint against the same domain unless there are some new facts that have come to light that weren’t available at the time of the first complaint or there was serious misconduct such as falsified evidence.  Here, Just Bulbs claimed that “relevant new actions have occurred since the original decision” in 2003 – namely, that the website now advertises light bulbs, not flower bulbs.

However, the Panelist found that despite this change to the present-day use of the domain this new complaint provided no additional or new evidence of the domain owner’s intent when it first registered the domain (remember that the UDRP requires one to prove bad faith use of the domain and bad faith registration at the time the owner acquired the domain). Since the present case didn’t shed any new light on the owner’s intent at the time the domain was acquired, Just Bulbs had its hopes dimmed for a second time.

The Panelist did leave a sliver of light for Just Bulbs, though. He pointed out that the domain is currently being used in bad faith and hinted that this might be enough to support a claim in court – perhaps under the Anticybersquatting Consumer Protection Act (ACPA). Hopefully this will illuminate a path for Just Bulbs to knock the domain owner’s lights out after all.

Name Collisions: More Than Just a Technical Consideration

Posted on by jbourne

Among those looking for answers at ICANN’s March meeting in Singapore will be new generic top-level domain (gTLD) applicants who haven’t yet found a path to delegation due to potential name collisions. No longer is the issue of name collisions merely technical. Over the course of almost a year, it has evolved into a potential business and financial roadblock.

What is Name Collision?

Name collision refers to the confusion that may occur when a new gTLD string exactly matches an existing string used on an internal network. So, as new gTLDs enter the root zone, they can potentially “collide” with existing names.

Name collision is a problem in current gTLDs too, but has taken on greater significance because of the exponential number and types of strings involved in the New gTLD Program.

When Did Name Collision Become a Problem?

The issue first took hold in late March 2013 when Verisign produced an incisive report (pdf) laying out a number of possible security concerns.

At first, the report seemed quite damning. Upon closer examination, it became clear that ICANN’s Security and Stability Advisory Committee had already addressed many of Verisign’s concerns. Nevertheless a community-wide conversation was launched and the search for solutions began.

How did ICANN Respond to Name Collision?

ICANN hired an independent agency to audit the root zone through the “Day in the Life of the Internet” (DITL) project to gain insight into the breadth and depth of potential collisions.

  • The DITL data lists every domain name queried at the root zone over the course of 48 hours each year for a number of years.
  • The domain names ending in new gTLDs were pulled from this list to determine which strings got the most hits.
  • But the audit offered scant data aside from the simple list of colliding domains.
  • These lists are the basis of the mitigation plan in place today.

How to Move Forward with Name Collision?

Each path forward, however, has far-reaching and highly variable implications.

  1. The majority of strings will follow the “alternative path to delegation,” which requires applicants to block every domain on their string’s list of DITL data before they launch.

    Once ICANN has the time and resources to investigate the blocked names, it might unblock those it thinks will cause no trouble.

    This path is the easiest and quickest for applicants, especially those with fewer than 100 names on their list.
  1. For those strings with hundreds of thousands of names on their list, the solution is more complicated since inevitably the list will contain high value terms. So what has been a technical issue for some applicants becomes a strategic issue for others.

If corporate applicants cannot register names such as help.BRAND or buy.BRAND for an unknown period of time, their new gTLD business plans could be seriously impacted.

  • How long will these names be blacklisted?
  • Could they be blacklisted forever?
  • What do competitors’ lists look like?

ICANN’s timeline for digging deeper into the DITL data and creating thorough recommendations for each term on a string’s list could be critical to many gTLD marketing and use strategies.

Finally, applicants for 25 strings, including .BOX, .CASA and .FAMILY, are unable to use the alternative path to delegation not because they have lengthy lists of domains to block but because their lists are dynamic, with a high rate of change from one year of DITL data to the next. This is the group of applicants that must wait until the next ICANN public meeting to find out how ICANN will go about developing a mitigation plan and how long it will take.

While it is unlikely this group’s Name Collision mitigation will stall applications for more than a few months, once again, a technical issue has become something much bigger with serious financial and strategic implications. Name Collision is a sticky business, and opinions vary on the impact it will have on new gTLDs and legacy websites. But for many applicants, the constant chatter about technical issues pales in importance to business and commercial considerations.

Crime and Punishment

Posted on by slevy

While the UDRP is a great tool for brandowners seeking to reclaim a domain name that infringes upon their trademark, it is not completely free from abuse itself. Time and again I have seen inexperienced complainants and their lawyers get tripped up by the basic requirement that a trademark must already exist before the domain was acquired by the respondent in order to find bad faith registration. Such flawed cases are routinely denied by panels and, even worse, complainants are slapped with a charge of reverse domain name hijacking (RDNH).

Quality Logo Products, Inc., the Complainant in a recent UDRP case filed with WIPO over the domain name qlp.com, narrowly escaped such a fate. The panel in this case ultimately decided that the domain name in question should stay with the Respondent, Get On The Web, Ltd., while a concurring opinion from a panelist shows that the Complainant really should have been charged with RDNH.

There were two main issues. First of all, while the Complainant did hold a trademark for a service mark that contains the letters “QLP” in a design, it did not hold a trademark for the term “QLP” itself. Secondly, the domain name was registered six years before the Complainant began using the QLP trademark. These facts are what lead the panel to deny the complaint.

Panelist Richard G. Lyon took this decision a step further. In a concurring decision tacked on at the end of the panel’s Discussion and Findings, he states that he believes that the Complainant is guilty of RDNH because it “knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP” and that “the complainant knew that the respondent used the disputed domain name as part of a bona fide business for which the respondent obtained a domain name prior to the complainant having relevant trademark rights.”

He ends by reminding us of the reasons why RDNH can be such a problem, stating that “the filing of this groundless Complaint has put the Respondent to considerable time and expense, including payment of the necessary fee for a three-member panel. We owe it to this Respondent to chastise the Complainant and its representative for their irresponsible conduct. We owe it to the integrity of the UDRP process to call out patent abuses such as I believe this case to be.”

Viva .VEGAS! NamesCon & New gTLDs

Posted on by jbourne

Who’s going to turn down a business trip to Vegas in January, when the temperatures in your city (D.C.) are hitting record lows?

Certainly not Peter Gage, Liz Sweezey, or Cameron Gordon. They headed to Vegas at the beginning of this week for NamesCon – a three-day conference for domain name aficionados – to hear from and catch-up with leaders in the domain name industry at the famous Tropicana Casino.

Gordon, Manager of Strategy and Transaction at FairWinds’ sister company, DigitalDNA, described the atmosphere at the conference as collaborative. “Top players in the industry – who often have competing views and interests – take the position that new gTLDs (generic top-level domains) are a benevolent evolution of the Internet,” he explained. “Everyone seems pretty confident that these new spaces will develop alongside .COM and provide more people around the world with access to a variety of personal, brandable, and relevant URLs and social networks.”

Peter Gage, the VP of Operations at FairWinds, was focused on industry partnerships and takeaways for the company’s corporate and non-profit clients. He reported that, according to Ruth Burr, the Head of Search at Moz, and Jason Hennessy of Everspark Interactive, new gTLDs represent a fantastic opportunity to develop a customized user experience for a niche market  – even if it’s unlikely they will truly overtake .COM. For example, Gage noted, both speakers predict that .PIZZA may initially have a hard time competing with pizzahut.com, but that .PIZZA could serve as a unique platform for the pizza-loving community.Screen Shot 2014-01-17 at 5.20.50 PM

Liz Sweezey, a consultant to FairWinds, also noted that brand applicants – corporations and large non-profits – have not had an equivalent industry event.  She pointed out that FairWinds’ February 19 conference Beyond the Dot 2014 would give brands their first opportunity to discuss the implications of new gTLDs for their businesses and their customers.

 “This conference is going to help define the future of the domain industry,” she said. “.BRANDS are going to drive widespread acceptance of the new extensions because they are known and trusted stewards. FairWinds’ clients and other innovative applicants will have the chance to hear from each other, industry leaders, and policy experts about how new gTLDs will change everything.”

TODAY YOU USE .COM. WHAT WILL YOU USE TOMORROW??

Posted on by jbourne

BTD-logo-roundWe at FairWinds Partners are abuzz about an industry-defining conference we will host in Washington D.C. on February 19, 2014, at the Newseum. The conference is a chance to examine how new top-level Internet domain names will change the way users navigate, search, shop, brand themselves, target customers, protect trademarks, and remain safe online.

We’re calling the conference Beyond the Dot 2014 – a catchy name that mirrors our new top-level domain educational microsite.  The conference will bring together innovators, policymakers, business leaders, academics, and students to explore what lies beyond .COM, .NET, .BIZ and the other top-level domains now in common use.

This will be the first industry conference to address what new top-level domains will mean to the average Internet user.

A top-level domain is the text to the right of the dot. Twenty-two exist now, including .COM, .GOV, .EDU (but not including extensions for different countries such as .FR). That number will expand by 2,500 percent to 1,400 over the next few years, bringing massive change to our Internet behavior.

“Today, the Internet is undergoing the largest expansion in its 40-plus year history,” said FairWinds Partners’ founders Phil Lodico and Josh Bourne. “The Internet of the future will be far more intuitive and will open vast opportunities for businesses and consumers, alike. We believe bringing together leading thinkers on this subject will help explain to the average Internet user the implications of this titanic change in the Internet domain name space and broaden the conversation beyond the domain name industry.”

Confirmed speakers at the conference so far include Former Ambassador John Negroponte; Akram Atallah, President, Global Domains Division at the Internet Corporation for Assigned Names and Numbers (ICANN); Dr. Laura DeNardis,
Internet governance scholar and Professor in the School of Communication at American University, the owners of .ECO, .GOP, .GAY, .NYC, .UNO, and many, many more.

We are psyched for this event and to broaden the conversation. Hope to see you there!

Register for the event here. Media, non-profits, student, and congressional staff are entitled to discounts. If you fall into those categories, email info@beyondthedot.com to receive your promo code.

No Claim, No Pain (or Fears)

Posted on by slevy

The latest example of why domain disputes should be handled by counsel who are specifically experienced in this esoteric area of the law is a case handled by a California firm called Payne & Fears (yes, that really is their name).  Despite the fact that the firm’s website claims that it practices intellectual property law, it recently lost a UDRP case against the domain tripacific.com, filed on behalf of its client TriPacific Capital Advisors, LLC.  The Respondent, an admitted domain investor, claims that its domain relates to triathlons, rather than the investments, loans, and mortgages offered by the Complainant.

The complaint stated that, although no registration exists for the TRIPACIFIC trademark, the name has gained common-law rights that predate the registration of the tripacific.com domain.

Unfortunately for them, the submitted evidence shows that the domain name was registered on July 18, 2001 while Complainant’s first use of its TRIPACIFIC mark was not until December 5, 2005.  In its decision, the 3-member Panel held to the well-established and majority view that “a respondent does not act in bad faith where it registers a domain name prior to a complainant’s use of a mark.”

What does this mean for the Payne & Fears law firm? It means that it either failed to adequately investigate its client’s trademark rights or that it failed to adequately advise its client that this UDRP case was a loser from the start.  The firm also dodged a bullet when, amazingly, the Panel declined to even address the Respondent’s claim of reverse domain name hijacking.

When deciding who to turn to for advice on a domain name dispute, carefully consider the knowledge and experience of your counsel in this ever-changing specialty before forking over your company’s precious cash. FairWinds Partners has filed over 200 UDRP complaints that have resulted in favorable decisions or settlements for its clients. It is also a point of pride that we will, without hesitation, advise clients when a given case is doomed to fail and where alternate approaches may be more effective.

Going, Going, Gone: ICANN Auction Rules Cause a Stir

Posted on by jbourne

AuctionThe applicant community is working its will on ICANN auction rules – the rules for generic top-level domain (gTLD) auctions published by the Internet Corporation for Assigned Names and Numbers (ICANN). But, as always, ICANN is no pushover.

ICANN auction rules went up for public comment last month after community outcry over the preliminary rules during ICANN’s Public Meeting in Buenos Aires in November. The comment period for the auction rules ends on January 15, with a reply period closing February 4. Auctions are expected to begin in March.

The auctions are designed to resolve conflicts between applicants who have applied for the same gTLD or who applied for gTLDs that were thought to be too similar to coexist. ICANN identified these so-called “contention sets” in February last year and added a handful of additional sets when string similarity objections were upheld by arbitration forums.

How ICANN Auctions Work

ICANN asserts that its auction model is meant to be a “last resort” resolution method. Applicants are encouraged to resolve their differences privately – through an independent settlement, a private auction, or other means.

But when independent resolution is impossible or undesired, the strings in contention go to the highest bidder at an ICANN auction. Losers receive a meager 20 percent refund ($37,000) of their initial $185,000 gTLD application fee. With millions of dollars at stake and hundreds of hours invested in preparing and supporting applications, it comes as no surprise that the auction rules have piqued the ICANN community’s interest.

So what’s all the fuss about? For one, applicants objected to the schedule outlined in the preliminary rules, which would have pushed the last auction rounds to Spring 2016 – an eternity in business terms, given the hefty investments applicants have made so far.

The new proposed rules include some revisions to reflect this criticism by allowing for the resolution of 20 contention sets per month rather than the original 10. An additional restriction that limited applicants with multiple contention sets to participating in only five auctions per month has also been removed. Still, given all the delays that have occurred in the New gTLD Program to date, applicants with late priority draw numbers may be disappointed to learn that their gTLDs will not proceed to auction until January 2015.

Ambiguity in the ICANN Auction Rules

The most serious applicant concern unaddressed by the revised rules may be the ambiguity in how so-called “end-of-round prices” will be determined. These prices set the threshold for how much applicants must pay if they want to remain in subsequent auction rounds. The revised rules give designated provider Power Auctions LLC discretion over the “end-of-round price” and, thereby, influence over the pace of the auction.  Most applicants prefer the process used in private auctions where “end-of-round prices” are established by a pre-determined algorithm and communicated to applicants before the auctions are held.

Another issue left unaddressed by the revised rules is how proceeds from the auctions will be used. If the results of recent private gTLD auctions provide any indication, ICANN’s new gTLD auctions will generate tens of millions of dollars or more.

The multi-stakeholder model may well resolve that question too, since Dr. Stephen Crocker, Chair of the ICANN Board, has suggested that the application of any auction proceeds would be subject to community consultation. Suggestions so far include providing refunds to applicants whose applications do not prevail; creating subsidies for a future round of new gTLDs to expand the geographic diversity of the DNS; or donating the funds to one or more charitable organizations.

It remains to be seen how responsive ICANN will be in heeding community concerns over the auction process. Given its limited responses to previous comment periods, and overall pressure to move forward with auctions, it seems unlikely that the comment period will result in a sweeping overhaul of the proposed rules.