State of the Net for the Week of September 15

Today is the last day that ICANN is accepting comments on “Implementing Rights Protection Mechanisms in the Name Collision Mitigation Framework”. The final structure of the framework will help inform trademark owners’ digital strategy decisions in the coming months as they plan to protect and promote their brand names in new generic top-level domains (gTLDs).

Name collision” refers to the unintended consequences that may occur when a new gTLD string matches an existing string on an internal network. In other words, as new gTLDs and second-level domains go live, they could “collide” with an exact match already in use within private networks. It’s an issue that ICANN and the Internet community have worked together to research and are attempting to address.

The latest ICANN-approved solution, as we previously covered, has allowed some new gTLDs to move ahead to launch after previously being held back due to name collision concerns. Part of that solution, though, requires new gTLDs that delegate after August 18 to institute a 90-day “controlled interruption” period during which any occurrences of name collision will be monitored. During that period, only NIC.TLD may be registered. Other names may be allocated but not activated. 

ICANN’s comment period on the application of Rights Protection Mechanisms in the Mitigation Framework is soliciting feedback on how new gTLDs that already delegated, but did not make blocked names available during Sunrise, should deal with the release of domain names that had previously been prohibited from registration under the old name collision framework. Many of these withheld domain names match trademarks. Now that gTLD operators can release these previously blocked names, trademark owners could find themselves at a significant disadvantage if those names were released to the general public immediately (instead of, for example, giving trademark owners a chance to register those domain names during a sunrise period).

FairWinds is filing its comments in support of the Registry Stakeholder Group (RySG), the Business Constituency (BC), and the Intellectual Property Constituency (IPC) in their proposal on this matter: The proposal provides trademark owners with an exclusive chance to register domain names that match their trademarks before they are available to the public, without creating undue burden for gTLD Operators. In other words, it addresses the concerns of trademark owners without unreasonably stressing the resources of those who run the new .EXTENSIONS.

For Your Radar

  • September 18-19: INTA’s Internet conference in San Francisco
  • October 12 – 16: ICANN 51 in Los Angeles
  • October 29: Nine-Month Contracting Deadline for Applicants with CIRs
  • July 29, 2015: 18-Month Contracting Deadline for Applicants with CIRs that Request and are Granted the 9-month extension

Public Comment Periods to Consider:

September 15: Comment period closes on the Implementing Rights Protection Mechanisms in the Name Collision Mitigation Framework

September 27: Comment period closes on the Enhancing ICANN Accountability Process






If You Can’t Make It, Fake It

I rarely comment on FairWinds’ own cases, but this one, filed with the National Arbitration Forum (NAF) on behalf of DD IP Holder LLC (Dunkin’ Donuts) over dunkin.menu – is worth special mention due to the truly inventive but deceitful way in which the respondent defended his registration and use of the disputed domain name.

The respondent makes the rather creative claim that he teaches a series of basketball clinics in New Delhi offering a “menu” of different dunking (“dunkin”) techniques. He submitted digital mock-ups of posters, which he claims promoted his efforts at local schools (see example).  Dunkin Menu Image UDRP

Since something smelled fishy about these posters and the idea of using the word “menu” in this way, I called these schools. They said they had never heard of the respondent or his classes.  In his Additional Statement, the respondent explained that many of the schools refused to display his posters or host his program due to discrimination against poor children in India.

I had also submitted a reverse whois report showing that the respondent owns over 360 domains, many of which infringe on various well-known global and local  brands.  I asked whether the respondent would submit additional evidence that he teaches a “menu” of techniques in music under his hardrock.menu domain, in cooking using leancuisine.menu; in the history of old western films with RoyRogers.menu; and in the astronomy of celebrity residences at PlanetHollywood.menu.  Would he also rationalize his registration of domains that have no such convenient meanings such as Marriott.menu, Quorn.recipes, and Sbarro.menu? The respondent claimed that he’s holding these domains for possible future ventures such as franchises.  All of this additional cybersquatting further calls into question the validity of respondent’s claims and evidence.

In its decision, the panelist addressed the question of whether respondent has any rights or legitimate interests in the Dunkin.menu domain, saying  “Respondent relies on his right to use a descriptive word ‘dunkin’ as a domain name to promote his basketball courses. However Respondent has not furnished any evidence that he has ever held such courses… When challenged that such documents [the posters] were fabricated for the purpose of this Complaint, Respondent then asserted that while he had used the posters and flyers for promotional literature, he had failed to organize the events due to impediments put in his way by the management of the schools.”

Next, on the topic of bad faith, the decision states: “This Panel finds that on the balance of probabilities Respondent chose and has used the disputed domain name because of its confusing similarity to Complainant’s trademark and service marks and not for the reasons that he has put forward. His explanations are ingenious but improbable and unsupported by any evidence.”

Critical to this case is the fact that UDRP panelists are bound to consider only the evidence before them, since there’s no discovery or cross-examination in these proceedings. This panelist could have accepted the respondent’s manufactured evidence, saying, in effect, that “my hands are tied by the UDRP process”.

However, due to his experience in these matters, he saw through the ruse and acknowledged our counter-evidence and the fact that the respondent, himself, back-pedaled when he admitted some of the schools didn’t display his posters. In the end, the panelist decided to weigh the evidence rather than simply accept the respondent’s claims and posters at face value, thus arriving at the right conclusion that respondent is a cybersquatter trying very hard to game the UDRP system.

While the respondent does have the option to appeal, past experience suggests that doing so will only be a waste of his money and time since brand owners aggressively defend such ransom cases. Of course, the respondent does own several other infringing domains (noted above and listed in the decision). We’ll just have to wait and see if Lean Cuisine, Marriott, Campbell’s Soup, etc. start offering the respondent franchise opportunities at some point in the future.


State of the Net for the Week of June 30

Here are some data to consider when thinking about the future battle between .SOCCER, .FUTBOL, and .FOOTBALL (read more about that here).

Last Thursday’s game between the U.S. and German teams topped 10.77 million viewers, just shy of the 18.22 million who tuned in to the U.S. versus Portugal game the previous Sunday, June 22. That game set the record for the most number of people to watch a World Cup game.

The World Cup is dominating digital, too. So many fans are tuning in to watch the action that ESPN is having trouble meeting demand to stream games: Its new record of concurrent online viewers, 1.7 million, surpassed the most recent Super Bowl. According to Re/code, the Twitterverse buzz climbed past 300 million tweets about the tournament in the first 15 days.

The top five most-tweeted-about games did not involve the U.S. team. Unsurprising, the article notes, “most of Twitter’s users live outside of America: As of the last quarter, 78 percent of its active users were based outside of the United States.”

Not sure about what’s going on with new gTLDs? Catch up with a three-year retrospective of the New generic Top-Level Domain Program or take a look at notes from ICANN 50 in London.

For Your Radar

  • October 12 – 16: ICANN 51 in Los Angeles
  • October 29: Nine-Month Contracting Deadline for Applicants with CIRs
  • July 29, 2015: 18-Month Contracting Deadline for Applicants with CIRs that Request and are Granted the 9-month extension 

Public Comment Periods to Consider:

July 11: Comment period closes on WHOIS Requirements and National Law Conflicts

July 18: Comment period closes on Proposed Implementation of GNSO PDP Recommendations on Locking of a Domain Name Subject to UDRP Proceedings – Revised UDRP Rules

Aug 1: Comment period closes on WHOIS Requirements and National Law Conflicts



Three Reasons to Properly Administer Your Domain Name Portfolio

The Internet is many things to many people, but the one thing it’s not is static. The digital space continually changes in ways that force businesses to adapt quickly or fall behind the competition. A solid domain name portfolio and a dynamic domain name strategy create the environment in which businesses can maximize their online presence, optimize revenue, and shrink costs.

You can identify what’s working, what’s not (and why), and what might still be missing by looking at your existing domain name portfolio and figuring out which domain names are advancing your company’s business goals and/or protecting its brands online.

Here are three reasons to evaluate a domain name portfolio so it adds value to your business:


1. Increase Direct Navigation Traffic to Websites

You may be missing some key domain names that are intuitive for your audiences that you need to register. Some might be available and easily registered. Third parties might already own others, but a brand owner may win back those containing trademarks through cease-and-desist letters or dispute resolution procedures. Targeting infringing domain names of strategic importance to a company’s brands can result in a high level of recovery success while containing enforcement costs.


2. Enhance Brand Positioning and Protection

Even if you own the right domain names, they may not deliver optimum value because they’re not resolving to the right content. A domain name that resolves to relevant, expected content contributes value to a brand, since it ensures that Internet users ultimately arrive at the content they were seeking in the first place. Internet users who find what they want are more likely to convert to sales and – because they are navigating directly to the domain name rather than clicking on an advertisement for which the company must pay – they are less expensive to acquire. On a less tangible level, Internet users who find what they are looking for will have a positive online experience, which helps strengthen a brand’s overall reputation. Given the financial risks and costs of combatting a fraudulent third-party or bad actor registration, your company may want to register and maintain a domain name proactively, even if the company has no intention to operate it. While these costs may seem cumbersome, in the long-run your company will benefit from judicious, prudent defensive registrations.


3. Cost Savings and Potential New Revenue Opportunities

You might have domain names that you don’t need and that won’t pose a big risk in the hands of someone else. You can let those go and save on the maintenance fees. To do this, companies must first determine their tolerance for risk. By cutting domain names, a company can save on renewal fees but leaves itself open to possible infringement. For low-quality or irrelevant domain names, this should not be a big concern. These decisions should be made with your legal department’s participation. These unnecessary domain names may even turn into a new source of revenue. Many companies have domain names they can sell for profit to other businesses or individuals who have a vision for the domain name in question.

Maintaining a healthy portfolio involves monitoring the evolving online space for developments relevant to your business – including potential new domain names in new generic top-level domains.

So the question stands: Are you where you need to be online?


State of the Net for the Week of June 3

ICANN has updated its auction schedule for resolving outstanding Contention Sets, or groups of applications for the same or similar new top-level domains (TLDs) like .COUPON and .MOM.

The first auction will still be held on June 4, but now only one auction will be held in the month of July. According to ICANN’s announcement, auctions have been further delayed as TLD applicants await the results of the Domain Name Collision Occurrence Management Framework, which will guide applicants on how to handle potentially problematic domain names within their extensions. For more information on what domain name collisions are and why they are a problem, check out our blog post on the issue.

As contention sets are resolved through mutual agreements, private auction, or ICANN auction, the winners will be TLDs to watch, as some may become the most popular extensions yet. Multiple applications for the same term means that more than one company saw the potential opportunity in the extension, and more than one company has a vision for what the TLD can deliver to Internet users. That’s a potential recipe for success.

For Your Radar

  • June 4: First ICANN Auction
  • June 22 – 26:  ICANN 50 in London
  • October 12 – 16: ICANN 51 in Los Angeles
  • October 29: Nine-Month Contracting Deadline for Applicants with CIRs
  • July 29, 2015: 18-Month Contracting Deadline for Applicants with CIRs that Request and are Granted the 9-month extension

Public Comment Periods to Consider:

June 27: Comment period closes on Enhancing ICANN Accountability

July 11: Comment period closes on WHOIS Requirements and National Law Conflicts


Be sure to stay posted to this site and follow us on Twitter for the latest in the domain name space.