Recently in wipo Category

Trademark holders do funny things with domains.

Bebo.ie, which was registered in bad faith, was handed back to its rightful owners last year.

However Bebo Inc obviously don't care enough about the .ie domain to hold onto it, so it's been dropped.

So will anyone try to grab it again?

It will be interesting to see if someone else makes a play for it. With the number of active Irish users on Bebo the domain would probably generate quite a bit of type in traffic.

HarperCollins, the UK based publishing house, has won a WIPO domain dispute.

The dispute centred around the domain: collinsdictionary.com

According to Hosterstats the domain was first registered back in 2005, but has been parked ever since.

The registrant did not respond, so the domain dispute was decided in HarperCollins' favour.

The only odd thing is that the decision is dated almost 2 years ago, yet it was only published today.

Lead Networks, an Indian based registrar, has been sent a "notice of breach" by ICANN.

The letter goes into details of how the registrar has failed to meet its requirements under the RAA and also its obligations under the UDRP.

Seemingly Lead Networks' registrants have attracted no less than 61 separate UDRP proceedings and their lack of cooperation with WIPO led to a letter from WIPO being sent to ICANN. WIPO's letter goes into some detail about how Lead Networks may have been involved in what has been described as "contributory cybersquatting" ie. helping registrants to act in bad faith towards trademark holders.

According to DotandCo Lead would appear to be the registrar of record for about 130 thousand domains and judging by the IP blocks they're using is probably relying on someone else to handle some of their backend processes.

ICANN's letter does not leave much room for misinterpretation - they're clearly not impressed, but they are granting Lead a 30 day "stay of execution". Whether Lead Networks will be able to show ICANN's compliance team that they are going to "behave" or not at this juncture remains to be seen, but based on the body of evidence cited in both ICANN and WIPO's letters it's doubtful.

On a positive note the wider community should welcome the fact that ICANN is taking action against registrars who do not "play by the rules". Of course not all of the rules may be perfect, but they're the only ones we have at the moment.

Remember the draft IRT report? Well they've published the final version after supposedly taking into consideration comments and feedback.
However you'd be forgiven for thinking that their view on the feedback process was ever so slightly biased.
Basically they seem to have taken on board any comments and feedback that supported their views and either ignored or dismissed any that didn't.

To view all the comments that were left you can go here (they seem to have moved the pages around, so the other links I had to the comments are no longer working)

The comments that were submitted came from a wide variety of sources, but included end users, end user groups, registrars, lawyers and companies interested in launching new gTLDs.

So what is in the final report that is so abhorrent?

Take the issue of whois and privacy, which I mentioned during the comment period:

After carefully consideration, the IRT believes that the provision of WHOIS information at the registry level under the Thick WHOIS model is essential to the cost-effective protection of consumers and intellectual property owners. For this reason, the IRT recommends that ICANN amend the proposed Registry Agreement to include an obligation that all registry operators for new gTLDs must provide registry-level WHOIS under the Thick WHOIS model currently in place in the .info and .biz registries

I love the way they lump "consumers" in with "intellectual property owners", but I digress. There is a footnote that basically brushes off concerns about privacy:

The IRT acknowledges that some comments raised privacy concerns about this recommendation. However, it notes that the thick registry Whois model has been employed in many new gTLDs for many years without any evidence of legal problems, and also that ICANN, on the unanimous recommendation of the GNSO Council, has established a procedure that can be invoked by any registry that believes it faces a conflict between its contractual Whois obligations and requirements of national privacy laws. See http://www.icann.org/en/announcements/announcement-18dec07.htm. To date, this procedure has never been invoked.

They have completely ignored or are ignorant of the very important difference between data collection and display. As I mentioned in my comments on this particular subject:

The IRT recommendation for Thick WHOIS as implemented by the .BIZ and .INFO registries could be put forward for incorporation into the next version of the Guidebook, but the IRT should also recognize that variations may occur depending on local law (Telnic is one example). In other words, the data that is displayed to the public vs. the data that is actually captured is something that needs to be clarified.
As I already stated, I would have huge issues with the display of personally identifiable data without there being safeguards in place. The .tel implementation is very sane and balances individual's rights to privacy with law enforcements requirements

In essence if the IRT has their way private individuals will be left with three options:

1. Not register domains if they value their privacy
2. Provide bogus contact information, while this may breach registry rules it's quite easy to provide plausible information that is not correct
3. Use a proxy service, which would again lead to issues of display (self defeating?)

The IRT's take on WHOIS is incredibly shortsighted and contradictory.

From their report (my emphasis added):

In order to test the efficacy of each proposal and the solution to be developed by the IRT Sub-Groups based upon the proposals prioritized, the IRT also developed the following list of questions to be asked as a benchmarking checklist against which to measure all proposals:
what are the harms that are being addressed by the solution;
will it scale;
does it accommodate territorial variations in trademark rights;
does it conform to extent of actual legal rights;
does it work in light of IDNs;
can it be gamed and abused;
is it the least-burdensome solution;
is it technologically feasible;
how will it affect consumers and competition; and
what are the costs and who pays them.

There is no clear distinction to my knowledge between a "user" and a "consumer", as a "consumer" can also encompass registrants, who, as private individuals have rights.
While a right to privacy may not be guaranteed under US law, it is definitely guaranteed under EU law, so how a namespace for global use, which may be legally constituted within the EU could be compatible with a "thick whois" display is beyond me.
And as I already mentioned, abuse of whois is child's play. So by ignoring registrants' rights to privacy they seem to be doing themselves no favours.

With regard to proxy registration services the IRT does consider them worthy of research, but doesn't actually make any firm statement on them:

However, the IRT did identify one proposal, in particular, that it believes should be further considered to determine whether it has any merit; namely the development of universal standards and practices for proxy domain name registration
services.
Many of those who filed comments to the DAG have asked that ICANN consider the issue of proxy domain name registrations with regard to new gTLDs. The IRT
recognizes that proxy domain name registration services raise complex concerns that require a great deal more analysis and consideration that were outside the limited time frame available. As a result, the IRT takes no position at this time on proxy domain name registrations. The IRT does recommend, however, that ICANN consider this issue and report to the community on whether it should or is able to make any recommendations with regard to the use, standards and practices of proxy registrations.
The timetable of such recommendations may be independent of the timetable for the introduction of new gTLDs, but the IRT strongly recommends that ICANN's consideration of this issue commence as soon as possible.

Considering how much of a policy "football" whois is in ICANN circles it is understandable that the IRT did not wish to get too deeply embroiled, but that they would also insist on their thick whois model is abhorrent.

Other areas that caused issues for people in the draft report have also been more or less ignored. While the original draft report spoke of a specific number of trademark registrations qualifying an IP holder to special protection, they have toned this down in the final document. Unfortunately they still haven't dropped the idea completely, so the "tiered" trademark holder concept is still alive and well in IRTville.

It is obvious to anyone reading this final report that the document was drafted from the perspective of intellectual property rights owners only, and even within that group only the "heavyweights" seem to really matter.

George Kirikos sums up some of the issues very nicely:

The URS in particular is an extremist view of trademark rights, tilted in favour of IP interests compared to the UDRP and beyond what is protected or
recognized by law and due process. It also obfuscates the dual requirement of BOTH bad faith use AND registration (there are lots of inconsistencies in the
language that seek to weaken the standard to make it "OR" instead of "AND").
The level of defaults will be even higher than the UDRP simply because good faith registrants never receive actual notice of complaints. Even faxes were
considered too expensive! A 1 page fax, using email-to-fax technology (so it can easily be automated by the URS provider) would cost less than $1 ANYWHERE
in the world! The IRT team should try sending registered letters in a statistically valid sample size and measure how long it takes them to be
delivered to different parts of the world -- it can be more than a week, even from the USA to Canada, let alone from Europe to Canada

As I mentioned previously, not all WIPO UDRP decisions go as smoothly for trademark holders as they would like. In many cases the trademark holders seem to work under the assumption that their trademark and IP gives them rights that negate those of 3rd parties.

Of course, in common with other ICANN documents, there is now a public comment period open for people to make their feelings heard. You don't need to be a registrar or anything special to make your voice heard.

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• New gTLD Comment Period Closes (isquattedyour.eu)

One of the WIPO decisions published today relates to gillette.ro.

The registrant (respondent) didn't make any submissions in their defence, so the decision could have been quite banal.

However some of the panelist's comments under the "Registered and Used in Bad Faith" section are quite interesting under:

The Panel disagrees with the Complainant's submission that the only conclusion that can be drawn from the registration of a domain name consisting of a well-known trade mark such as the Complainant's GILLETTE trade mark and the history of the Respondent's similar conduct in respect of other well-known trade marks is that the Respondent registered the Domain Name in the hope of obtaining financial compensation from the rightful trade mark owner.

It appears to the Panel that while this is definitely a possibility, such an intention cannot simply be assumed in the circumstances as the Complainant has not adduced any evidence as to the Respondent's offer for sale or other attempt at reaping financial benefits through registration of the Domain Name. The Panel notes that the Domain Name is not in use, and does not resolve to any page which would suggest that the Domain Name is for sale.

Put in simpler English. You can't just make assumptions. You need to provide evidence.

Ultimately the case was won by Gillette, but the "assumptions without evidence" are an interesting sidenote.

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One of the more recently reported WIPO UDRP cases that caught my attention was in relation to airfrance-suck.com

The decision, which went against the registrant, makes for some interesting reading.

The salient points being:

• The "suck" suffix can be a legitimate defence
• A lot of "suck" or "sucks" related WIPO cases end up being ruled in favour of the trademark holder
• If you're going to register a "brandnamesucks.com" type domain you need to actually use it

You can read the full decision on the WIPO site

Trawling through domain dispute data can be vaguely amusing, if you're a bit bored on a Saturday...

By TLD in no particular order:

• .ie - total of 25 cases, 4 so far this year of which 3 are ongoing (greenoffice.ie, todayfm.ie, monsterfinance.ie)
• .es - 145
• .fr 180
• 
  
• .tel - none to date

• .mobi - 189 to date

• .asia - 8 to date
• .pro - 8 to date
• .name - 38 so far
• .museum - none, but that's hardly surprising
• .cat - 4
• .info 825 so far
• .biz 725
• .net 2844
• .com 21552 cases (not surprising that it's so much higher, but the actual figure is higher than I was expecting
• .aero - only one case, which was denied (D2004-0669)
• .jobs - none
• .travel 12
• .coop - none

All the information is pulled from public sources...

The Intellectual Property Constituency's draft report on trademark issues is now available for comment.

The draft report was put together behind closed doors, which would appear to go against the normal policy development process at ICANN, which is quite worrying.

Its contents, however, are even more disturbing.

While reading the 48 page document, which is littered with acronyms and terminology that would make your head hurt, it is a worthwhile exercise if you have any interest in the development of new TLDs.

From a registrant perspective the most disturbing part of their report is that dealing with WHOIS. The IP people seem to have zero interest in registrants' right to privacy. Under EU law, for example, I can register a domain as a private individual in most European ccTLDs (including .eu) and have some level of privacy. Not so the case with the IRT's proposals:

After carefully consideration, the IRT believes that the provision of WHOIS information at the

registry level under the Thick WHOIS model is essential to the cost‐effective protection of

consumers and intellectual property owners. For this reason, the IRT recommends that ICANN

amend the proposed Registry Agreement to include an obligation that all registry operators for

new gTLDs must provide registry‐level WHOIS under the Thick WHOIS model currently in place

in the .info and .biz registries.

And if that wasn't enough, they also want to centralise whois:

In addition, the IRT recommends that ICANN immediately begin to explore the establishment of a central, universal WHOIS database to be maintained by ICANN

While that may not have much impact on registrants at one level it could have an interesting impact at various other levels of the system eg. syncing of data.

The timelines surrounding the draft report are also a bit confusing.

The comment period was opened on a Friday 24 April 2009 and closes one month later, but you only have until May 6th to submit comments for inclusion in the final report! So you don't really have the full 30 day comment period you'd be expecting and with the May bank holiday affecting most countries, the period is even more reduced.

George Kirikos, in an email submission to the comment forum, goes into some detail on the issues surrounding both the IRT's composition, behaviour and the timeline for comments:

We object to the extremely short comment period for this report, and the method by which it was drafted.

It was released at the end of the day on April 24, 2009 (a Friday) We are told that "those wishing to have the IRT consider their comments in connection with its final report should submit comments by 6 May, 2009." Given that May 1st is a holiday in a large number of countries, this leaves many people with only 7 (seven) or at best 8 (eight) business days in which to read the report, consult with colleagues, and write a coherent response to a lengthy document.

Given the IRT's extreme lack of transparency and its very narrow representation of interests (i.e. it was not an open GNSO workgroup or task force where any stakeholder could join; there was no public mailing list archive or MP3 recordings/transcripts of meetings), it is unclear whether any responses submitted by the May 6 deadline will even be considered, especially given that detailed comments and recommendations made to the DAG v1 and v2 reports did not receive any apparent consideration by the committee in this draft report. There is no public audit-trail of any discussions leading up to this report, but it instead appears to be a rehashing of certain "wish list" items by a narrow few in the community, instead of a balanced proposal representative of all stakeholders.

The IRT is working within artificial deadlines imposed by the ICANN Board in its March 6th resolution. We recommend that the IRT go back to the Board to advocate that these artificial deadlines need to be rethought. Given the comments overwhelmingly opposed to new gTLDs both in the first and second versions of the DAG (with the 2nd comment period ending only last week), ICANN has not justified that the gTLD program should go forward in any form, and not justified the colossal misuse of time that could be better spent on important issues such as DNSSEC, IPv6 and IDN ccTLDs, and fixing problems in existing gTLDs. It is our hope that the NTIA/DOC/DOJ will provide ICANN with far clearer and direct guidance in this regard, as it is clear to us that certain minority interests have captured the agenda at ICANN and are setting its plans to the detriment of the public.

There is no "pressing need" that a final report be delivered by May 24, 2009, especially given that the Sydney meeting begins on June 21, 2009. A rushed job will not lead to a solution that has consensus support, and forming consensus is ICANN's mission. If a consensus cannot be reached, ICANN has to realize that the matter might be a threshold issue that must lead to continued study and work, rather than proceeding with half-baked solutions over the objections of a large number of stakeholders.

We note the comment period for version 1 of the DAG closed on January 7, 2009 (after 76 days), and allowed for translation into multiple languages before the end of the comment period. Analysis and summary of those comments by ICANN staff were released to the public on February 18, 2009, namely 42 days later (at which time version 2 of the DAG was also released). We would expect the IRT, if it's to even have a remote possibility of reaching a global consensus, would need similar time periods. At a minimum, the time periods should be shifted so that public comments are due 2 weeks before Sydney, with analysis of those comments to be released just before Sydney, and discussion to take place during Sydney. A final report would then be released a few weeks after Sydney, with a further comment period on that final report.

In conclusion, we look forward to the IRT's realization that the current schedule is needlessly rushed, and requires adjustment. We expect that the IRT will make in the immediate future a clarifying announcement with a reasonable time frame for comments if it expects to maintain the goodwill of the community in its ongoing efforts to reach a consensus. We also expect that they will positively respond to the request for public archives of mailing lists and MP3 recordings/transcripts in order to improve transparency.

So what are the options for members of the ICANN community?
How is it possible that a report with as much impact as this could be prepared in practical secrecy? (The IRT states clearly that its members were forbidden to discuss the proceedings)

Whenever I hear the misinformed harping on about how "anyone will be able to get their own TLD" I sigh deeply.

If only it was that simple.

The most recent assault on the new gTLDs comes from the Olympics - the International Olympic Committee to be precise.

You can read the full text of their nastygram over here

The closing line of the letter is particularly unpleasant:

The IOC reserves its right to take action against ICANN for damages resulting to the IOC or the Olympic Movement from the implementation of the gTLD proposal.

As Stephane points out, while any trademark holder has unique rights only a few would have the clout to actually make a serious threat.

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While the number of WIPO UDRP cases involving IE domains is not that big, there are still more than enough to show that trademark holders should pay attention to the IE namespace.

The most recent decision involved the domain "fatboy.ie".

If you are familiar with them Fatboys are a sort of beanbag. (You can find out more about them here)

In this case the domain fatboy.ie was being used to push traffic towards a competing brand selling a very similar set of products.

You can read the full decision here, but the outcome was pretty predictable and the current holder of fatboy.ie did not respond at any time