A savvy domain speculator realized that his or her domain name had become a hot commodity well after the domain was registered, and it could be monetized in Amazon's affiliate program where commissions could be earned on Z10 sales driven to the popular ecommerce site via Z10.com. According to the Whois, the domain was created over 12 years ago, and was transferred to a registrant in Hong Kong in 2007. The Z10 phone, however, was only introduced to the U.S. market this year.

It's possible that the original owner decided to grab Z10.com because it sounded like a model of something before BlackBerry even conceived of the Z10 phone. Plus, it's well known that ALL two and three character .COMs and probably a good many four character .COMs have been gobbled up by speculators just waiting for some new whatchamacallit to debut on the market. Z10 sounds an awful lot like a car model — and if you type "Z10 car" into a search engine, you'll get hits for BMW's Z10 and Toyota's Z10 Soarer (a model sold in Japan in the '80s).

"This is fairly typical cyber-speculation activity," said Steve Levy, FairWinds' Intellectual Property Attorney. "Creative domain speculators will come up with creative names absent of a known product name. If one of those names is later adopted by a company as a brand, it can create a tough situation since there were no trademark rights at the time the domain was created and Uniform Domain-Name Dispute-Resolution Policy (UDRP) arbitration panels must reject claims when a domain name was not originally registered in bad faith. At that point it's time to explore other options such as an anonymous offer to buy the desired domain — preferably before the new product launches and price goes sky high."

There are some lessons here for companies managing the acquisition of domain names associated with the launch of a new product. Before a new brand is publicly announced, many companies will register the most obvious defensive domains. But if the product name is neither totally distinctive, nor incorporates a protected pre-existing trademark, and a domain name was registered well in advance of any trademark rights, it may be that acquisition is the only path forward apart from selecting another trademark with an available domain.

Written by Josh Bourne, Managing Partner at FairWinds Partners

Kenzie did not offer the domain names for sale, did not read the emails intended for the subject organization, and generally kept his whole scheme out of the public eye. Upon demand, he also offered to transfer the domain names to the organizations in question.

Nevertheless he was sued by Gioconda Law Group for registering Giocondolaw.com — with "o" instead of "a" [see: Gioconda Law Group v. Kenzie, 2012 US Dist LEXIS 187801 (S.D.N.Y. Apr. 23, 2013)]. In response to Gioconda's complaint, Kenzie, proceeding pro se, asserted a variety of defenses, including a critique of American privacy law. Gioconda moved for judgment on the pleadings.

The court struggles with the application of the Anticybersquatting Consumer Protection Act (ACPA) factors to this case. On the one hand, this is clearly not a case where the registrant is trying to profit by selling back the domain name. On the other hand, the court says, all non-commercial uses are not necessarily exempt from the ACPA. [Not a particularly speech friendly position.]

Ultimately, the court says that it's not a case that can be resolved on the pleadings:

Defendants's alleged ideological, scholarly, and personal motives for squatting on the [domain name], while perhaps idiosyncratic, do not fall within the sphere of conduct targeted by the ACPA's bad faith requirement, If anything, given that defendant aims to both influence plaintiff's behavior and shape public understanding of what he perceives to be an important vulnerability in cyber security systems, this case arguably falls closer to cases involving parody and consumer complaint sites designated to draw public attention to various social, political, or economic issue.

It's possible plaintiff can prevail, but it would have do to so under a more fact-specific totality of the circumstances inquiry.

This is an interesting case that highlights the problems faced by security researchers generally. While the risk of liability here is less than what security researchers generally face (e.g., liability under the Computer Fraud and Abuse Act), it still shows a judge reluctant to grant the researcher's conduct full protection as a non-commercial, First Amendment-protected venture.

Written by Venkat Balasubramani, Tech-Internet Lawyer at Focal PLLC

Do tell, ICANN — in what way does the Trademark Clearinghouse protect anything?

• Does it block others from registering trademarks for which they have no legitimate right?
• Does it notify trademark owners in advance of a pending registration?
• Does it provide warnings of infringing names beyond exact match?
• Does it even provide notifications of exact-match registrations beyond the first 60/90 days of the general registration period?

Of course, the answers to all of these questions is a resounding NO.

Now, I am not saying that the Trademark Clearinghouse is not without value. It will undoubtedly streamline the validation process for trademarks so that they can qualify for Sunrise Registrations. Having to validate trademarks with each individual new gTLD registry would have been extremely time-consuming, and possibly much more expensive.

That said, the Trademark Clearinghouse is not, and has never been a Rights Protection Mechanism, and trying to classify it as one only makes trademark owners even more frustrated.

Written by Elisa Cooper, Director of Product Marketing at MarkMonitor

As a reminder, the TMCH is a centralized repository of validated rights which will be used in support of ICANN's New gTLD Program.

Submissions to the TMCH enable brand owners to register their trademarks as domain names during so-called Sunrise Periods. To participate in any New gTLD Sunrise, marks must be validated by the TMCH. In addition, the TMCH provides notifications to brand owners when an exact-match domain name registration is made during the first 60/90 days of general availability. It also facilitates notification to potential registrants of domains matching TMCH entries during the first 60/90 days of general availability.

The TMCH has been categorized as a Rights Protection Mechanism, however submission to the TMCH does NOT prevent registrations or block others from registering trademarks as domain names.

The big question for most companies has now become, what specifically should be submitted to the TMCH?

The easy answer is that companies should plan to submit any trademark for which they desire a Sunrise registration. Utilizing trademarks that can be easily validated by the TMCH is one approach to consider. Remember also to qualify for Sunrise registrations, "Proof of Use" must be submitted to the TMCH. Acceptable examples of "Proof of Use" include labels, tags, or containers from a product as well as advertising and marketing materials including brochures, pamphlets, catalogues, product manuals, displays or signage, press releases, screen shots, or social media marketing materials.

Do keep in mind that some Registries may have special jurisdictional requirements specifying that in order to qualify for a Sunrise registration, that the trademark must be registered in a particular country. While I expect this to be more of an exception than the norm, companies should be prepared to submit additional trademarks for the same brands based on additional information as it is made available by each New gTLD Registry.

Written by Elisa Cooper, Director of Product Marketing at MarkMonitor

In the trademark realm, one of the big questions presented by the early Internet was how to deal with "cyber-squatters" — those who would seek to profit by improperly reserving domain names equivalent to the trademarks of famous companies or people. Cyber-squatters attempt to profit by holding a domain name hostage, offering to sell the domain back to the proper party at a significant markup, or generating fees from user confusion via posted ads on the website. This issue was addressed by the introduction of the Uniform Domain Name Dispute Resolution Policy (UDRP), an international system concerning the arbitration of domain name disputes. Parties who believe that a domain name has been registered improperly (i.e., includes a name or mark that they have rights in) can file an arbitration complaint to dispute the ownership of the domain. The UDRP has been active for more than a decade and, though not perfect, has created a preferred method for resolving domain disputes.

The status quo of the domain name system is set to be upended with the introduction of new generic top level domains (gTLDs) that may add thousands of new extensions. This is an unprecedented increase in the size and scope of the Internet's naming convention system. Although there is no plan to overhaul the UDRP in response to the new gTLDs, there will likely have to be a change in how arbitrators evaluate the merits of a UDRP claim as a result of having new and more specific suffixes which are tied to the registered domain.

How are domain names featuring trademarks analyzed in UDRP decisions and how does this relate to the new TLDs?

A successful UDRP challenge consists of three elements: 1) a domain name identical or confusingly similar to a trademark of the complainant; 2) a respondent who has no corresponding legitimate interest or rights to the same domain name; and 3) bad faith registration or use of the domain name, typically evinced by an attempt to turn an illegitimate profit. (See Section 4(a) of the UDRP for more details.)

For the first portion of the test relating to similarity, the top level domain (TLD) — the extension after the dot (like .com, .net) when entering a web address — is ignored by UDRP arbitrators as a matter of necessity. For example, in a case concerning the Miss Universe trademark and the domain name miss-universe.org was properly held to be similar to the trademark "Miss Universe." Use of other top level domains like .com, .net, etc. instead of ".org" would have been equally inconsequential and led to the same result. The reason for this is simple — until now most TLD extensions have been sufficiently devoid of meaning so as to be ignorable. While .com, .org, etc. initially evolved as ways of distinguishing sites from one another based on the nature of the content — commercial (.com) as opposed to non-profit (.org), for example — those distinctions in the mind of the public have largely been obliterated. With the possible exceptions of .edu and .gov, which are restricted to appropriate educational or government entities, today's savvy Internet user does not likely think much of the significance of a TLD.

How should the new gTLDs be treated considering they may carry more meaning than traditional TLDs?

With the roll-out of the new gTLDs the browsing habits of users may change significantly. Specifically, many of the new gTLDs will extend beyond the three letter (.com) paradigm and, indeed, form full words, such as .music, .home, .surf, .cloud, .design, .computer, .book, etc. Even those that continue to remain three letters will gain new suggestive properties. For example, .pro will stand for "professional," and will be restricted as such, which suggests something about the qualifications of the site creator. In particular, if the gTLD actually consists of a word that connects with the domain name to form a compound term or phrase, the gTLD becomes much harder to ignore. But introducing the new gTLDs into the similarity stage of the UDRP test would only seem to make things more difficult. For example, under the current similarity analysis, Apple.com is treated the same as Apple.net. Under the new gTLDs, rather, something along the lines of "Apple.computer" will carry a different suggested meaning than "Apple.net". It denotes something specific about what the user will find at that domain — a computer company. Continuing to treat .net and .computer as identical without more sophisticated analysis would be problematic and would rob new, distinctive gTLDs of their intended meaning.

The UDRP system has already faced a similar conundrum with ccTLDs (country code top level domains). Each country code initially was meant to indicate a website based in a certain country. However, due to the lack of registration restrictions on certain ccTLDs that are additionally attractive because they help form parts of other words or are words themselves, UDRP arbitrators have had to respond creatively and have sometimes intentionally included the ccTLD in the similarity analysis. For example, in a 2009 case, a claimant who owned the trademark PROJECT.ME successfully brought a UDRP action against a party who registered the domain "www.project.me" (using the unrestricted ccTLD for Montenegro). Rather than forcing the claimant to allege similarity of his "Project.me" mark to only the word "project," the arbitration panel rightly concluded that the ccTLD could not be ignored when assessing similarity. The mark and the domain name were deemed identical.

Conclusion and Suggested Course of Action

Even with the addition of hundreds or even thousands of new gTLDs to the domain name system, UDRP arbitrators do not have to disturb the current practice of generally ignoring TLDs in the similarity stage of the analysis. Instead they should look at the gTLD, and how it fits in as part of the entire domain name in terms of the commercial impression, as part of the bad faith prong of the analysis.

First, arbitrators should recognize that where an alleged cyber-squatter intentionally uses a gTLD that is unrelated to the goods/services covered by the complainant's trademark, it is likely a sign that the registrant was not acting in bad faith. For example, if an apple producer in upstate New York registered the domain name "Apple.farm" the similarity analysis would still hinge on the term "Apple," but the gTLD .farm should be looked at as a distinguishing factor and evidence that the registrant may not have been acting in bad faith when it registered the domain name. While the content of the site will be an important factor, assuming that the site has something to do with farms and not computers, the .farm extension should not be ignored.

Second, in cases where a gTLD does not merely serve to distinguish the domain name from other identical or similar domain names, but rather forms a word or phrase in conjunction with the domain name (such as in the Project.me example above), arbitrators should continue to follow the practice used above with ccTLDs at the similarity stage of the analysis. Combining the TLD and the domain name and comparing them to the trademark at issue will continue to be adequate to protect rights holders in these cases.

Using the above two approaches, arbitrators need not be flummoxed by the sudden influx of new TLDs, as the same guiding principles that have been used to decide domain disputes since 1999 are still relevant and necessary. Instead, UDRP arbitrators should simply consider the practical effects that the new gTLDs will have, and make sure they apply the UDRP in a flexible manner so that differences between gTLDs are part of the analysis where the meaning and implication of a domain name is affected.

Written by Sean Comerford, Writer for DomainSkate.com and Recent Graduate of Brooklyn Law School

• The Trademark Clearinghouse (TMC) is far along to detailed implementation but certain aspects are now being reconsidered as registries, registrars, and other parties raise issues of practicality and workability.

• Implementation of Uniform Rapid Suspension (URS) is finally commencing after more than a year of needless delay.

• Brand interests continue to press for the reopening of basic substantive elements of both RPMs.

Given the half year interval between the upcoming Toronto ICANN meeting and the following Beijing meeting in April 2013, it is highly desirable, and perhaps essential, that community discussion in Toronto result in a clear consensus on how RPM implementation should proceed if new gTLDs are to launch without further delay and if potential registrants are to perceive them as acceptable platforms for speech and commerce.

It is within this present context that the Internet Commerce Association sets forth the following dozen principles by which it will review both implementation details for these RPMs as well as any proposals to make fundamental alterations of substance to them at this late date:

1. Our starting point is the fundamental principle that domains constitute a bundle of valuable intangible rights similar to trademarks and other forms of intellectual property, and that a reasonable balance must be struck between the respective and legitimate rights of domain registrants and trademark owners. We know that many domains have substantial value because the secondary market tells us so; likewise, any erosion of the legitimate rights of domain registrants represents an unjustified transfer of wealth from the domain sector to the trademark sector. Therefore, while we oppose any intentional infringement of trademark rights, we likewise reject the notion that the historical development of trademarks prior to the rise of the Internet confers upon trademarks any automatic entitlement to prevail over domains when a dispute arises between these two species of intangible rights. In our digital era the two rights must respectfully co-exist.

2. While RPMs must be effective against bad actors, their design and implementation must recognize that the vast majority of domain registrants are good actors and deserve adequate substantive and procedural due process — and that some complainants can and will attempt to abuse any dispute resolution process. The most recent annual data indicates that UDRP arbitrations involve less than one two-hundredth of one percent of all registered domains; even if UDRPs understate the total of actionable cybersquatting claims by a factor of one hundred, that would still leave 99.5 percent of all domains as non-infringing. UDRPs have been steadily shrinking as a percentage of total domains for years, and this trend is likely to continue even as new gTLDs are introduced — with the percentage of arbitration cases likely to be even smaller for them. In this regard, the repurposing of various ccTLDs to be more general in nature (e.g., .md, .tv, .co, .ws, .bz, .to, .cc, .so, is, and .me) is instructive as it has not resulted in substantial new abusive registrations, and this is a highly relevant precedent for the likely usage of new gTLDs. It should also be noted that the potential for typographical cybersquatting at new gTLDs will on the whole be greatly reduced as they are unlikely to receive much in the way of natural type-in traffic. Finally, the record number of findings of attempted reverse domain name hijackings in 2012 UDRP cases demonstrates that some complainants will seek to abuse any dispute resolution system and that registrant rights deserve adequate sanctions to deter such attempts.

3. The number of new gTLD applications received by ICANN in the first round of the program (1900, of which 1400 are unique) is in and of itself insufficient justification for material alterations of the RPMs. At the time that the ICANN Board approved the Applicant Guidebook (AG) and the incorporated RPMs, it was widely anticipated within the ICANN community that total first round applications would be in the range of at least 500-1,000, and possibly higher. Further, the RPMs are meant to and do scale — the TMC operates in relation to, and the URS is available for use against, domains at every new gTLD. Proposals for any material RPM alteration must be grounded in genuinely unanticipated factors that have arisen since their approval and not simply on the total number of first round applications.

4. ICANN's bottom-up, consensus-driven, multi-stakeholder policy development process must be respected; and, further, there must be some finality to ICANN policy decisions. The existing RPMs represent more than two years of community discussion, debate, hard work and compromise and were adopted unanimously by the GNSO Council and the ICANN Board. They should not be lightly reopened in advance of the launch of new gTLDs and actual experience with both the true incidence of cybersquatting within them and the effectiveness of the new RPMs. Since the mid-2011 approval of launching the new gTLD program ICANN's Board has already degraded URS-related registrant rights twice under brand-generated pressure — by cutting one week from permissible response time, and by halving the number of domains targeted in an action giving rise to 'loser pays' liability — and yet the brand sector continues to press for further RPM revisions. The time has come to bring finality to the process and lock in these RPMs absent extraordinary and unanticipated developments.

5. The RPMs should enforce and protect existing trademark rights, but not create new rights. A trademark is limited to specific classes of goods and services, and the vast majority are not global marks but are also geographically circumscribed; therefore, the use of a trademark as or within a domain name cannot automatically confer preemptive power as to all goods and services or all locales in the context of a global Internet. Setting limits on the scope of trademark rights in the DNS is particularly important where the trademarked word(s) is of the generic dictionary variety and overly expansive rights could stifle e-commerce competition and innovation. We note and strongly approve the recognition of this principle in the letter recently sent by new ICANN CEO Fadi Chehade to U.S. Congressional leaders: "It is important to note that the Trademark Clearinghouse is intended be a repository for existing legal rights, and not an adjudicator of such rights or creator of new rights. Extending the protections offered through the Trademark Clearinghouse to any form of name (such as the mark + generic term suggested in your letter) would potentially expand rights beyond those granted under trademark law and put the Clearinghouse in the role of making determinations as to the scope of particular rights. The principle that rights protections "should protect the existing rights of trademark owners, but neither expand those rights nor create additional legal rights by trademark law" was key to work of the Implementation Recommendation Team, a group of experts in the ICANN community who initiated intense work to recommend rights protection mechanisms in new gTLDs." We are generally opposed to the 'mark + generic term' proposal referenced in Mr. Chehade's letter as creation of a new right beyond that conferred by trademark law, as well as degradation of the purpose of the TMC as an authoritative repository of trademarks meeting certain high standards for inclusion. In addition, because many potential combinations of marks plus generic terms would likely be non-infringing, such an expansion would result in an ordinate number of trademark claims service "false positive" warning notices to innocent potential registrants who, lacking sophistication in trademark law, would be unjustifiably deterred from completing the registration process.

6. Any alteration of one RPM must be reviewed for its potential spillover effect on registrant rights in the other. Any modification of the TMC must be analyzed for its impact on registrant rights in the URS. For example, while ignoring a claims service warning for an exact match to a mark might appropriately serve as evidence of bad faith registration in a subsequent URS action, granting it such evidentiary weight in a 'mark + generic term' context would be thoroughly inappropriate.

7. The URS implementation process must be open to participation by all interested members of the ICANN community, and must be transparent in its operation. The multi-stakeholder process and attendant transparency and accountability must be maintained for the process to have credibility and for ICANN to receive continued support from netizens. While ICANN appears to have made a commitment to this principle we shall continue to closely monitor the process even as we participate in it.

8. Any proposed alteration of the URS premised on cost considerations must await actual market testing of the implementation costs of the present model — doing otherwise would put the cart before the horse. The suspect and possibly self-serving declarations of existing UDRP providers cannot be relied upon as an accurate URS implementation cost indicator. It is therefore incumbent upon ICANN to aggressively promote and seeks responses on a global basis to its recently issued URS implementation Request for Information (RFI) from qualified arbitration service providers beyond the ranks of existing UDRP providers.

9. Cost considerations cannot justify a degradation of registrant rights in URS proceedings below acceptable levels, and any cost-premised alteration must actually have the potential to reduce costs both in the URS and in totality. In this regard, the proposal to eliminate all substantive review and have automatic default judgments when a registrant fails to respond by the specified deadline is unacceptable as such a procedure would neither consider whether the complainant possesses its claimed trademark rights nor whether the domain constitutes a clear cut and incontrovertible instance of infringement; it would also not inquire into whether there was actual use of the domain, without which the critical element of bad faith use cannot exist. Therefore, a default judgment process would constitute an unacceptable degradation of registrant rights. And the proposal to reduce the burden of proof to the same as that of the UDRP would actually increase costs, as it would convert the URS from a procedure targeting clear black-and-white infringement cases to ones that are multiple shades of grey and require protracted and more costly deliberation. Likewise, the proposal to allow complainants to acquire domains via URS filings, like burden of proof reduction, would convert the URS from a narrow supplement to the UDRP into a full substitute, an unacceptable "bait-and-switch" result; and would further increase total costs by placing the burden of long-term defensive registrations on complainants when other means could readily prevent the re-registration of incontrovertibly infringing domains and eliminate such defensive registration costs.

10. URS providers must be placed under a binding standard contract. Requiring such contracts was a central recommendation of the Special Trademark Issues — Recommendation Team that hammered out the final RPM details included in the AG. In a year in which the broad Internet community rose up against proposed SOPA legislation that would have suspended domains absent adequate due process for registrants, it is unacceptable for ICANN to accredit and empower entities to censor domains via rapid suspension absent binding agreements that set clear limits on their powers and provide ICANN with flexible and measured enforcement tools. As a non-profit private sector entity, ICANN's only real powers are based in its contract enforcement authority and they must be exercised to ensure a properly balanced URS process. Issues to be addressed in the contract should include assuring that potential panelists are truly unbiased and are fairly and broadly selected for cases. While we see merit in the Business Constituency's proposal that URS arbitration be awarded to a single vendor — as that would help ensure more uniform URS application while foreclosing forum shopping — the potential selection of multiple vendors gives greater urgency to the development of a binding standard contract. We are dismayed that ICANN has indicated that it is on a path to rejecting this crucially important STI-RT recommendation and to emulating the deeply flawed contactless model of the UDRP.

11. RPM implementation must not further delay the introduction of new gTLDs. The potential new price competition, business model innovation, and other attendant benefits of new gTLDs should be realized as soon as possible. This consideration reinforces our stance against substantial revisions that could prove controversial and divisive and incite protracted debate and accompanying delay.

12. New gTLDs should be laboratories for change, including RPM approaches. While we are skeptical of substantial revisions in the 'one-size-fits-all' RPMs contained in the AG, we believe it is appropriate for applicants and applicant groups to experiment with gTLD-specific RPMs and registrant qualification requirements that go beyond the baseline protections contained in the AG. Analysis of the real world results of these varied approaches, including their acceptability to registrants, can inform any future discussion of RPM policy changes after several years of utilization at the new gTLDs launched in the first round.

Written by Philip S Corwin, Founding Principal of Virtualaw LLC, a Washington, DC Law and Public Policy Firm

First, Oakley lost a UDRP decision last month for the domain name www.myfakeoakleysunglasses.com. In that case, the panelist Mr. Houston Putnam Lowry denied Oakley's Complaint on the basis that the domain was not confusingly similar to the OAKLEY mark. Specifically, Mr. Lowry explained that in his opinion the word "fake" actually distinguished the domain, stating:

"[t]his Panel does not see a confusing similarity between Complainant's mark and the disputed domain name, see Homer TLC, Inc. v GreenPeople, FA550345 (Nat. Arb. Forum October 25, 2005). Everybody knows what the work 'fake' means. The word 'fake' appears before the trademark in the domain name. The web site makes it pretty clear these are counterfeit goods. People are going to this web site because they know it isn't affiliated with Complainant. People are buying these good because the purchasers want to pretend they are Complainant's goods. While it would seem obvious there is trademark infringement, that is not the test under the UDRP."

The above logic, if broadly adopted, would create a Texas-sized loophole that would allow counterfeiters to protect their websites from UDRP proceedings by including the word "fake" in the domain, and would essentially reward "honest" counterfeiters. Further, it would also throw out the long established principal that descriptive or generic terms that are part of a domain name should not be considered when comparing the trademark at issue to the domain. See, e.g.,Time Warner Entertainment Company L.P. v. HarperStephens, WIPO Case No. D2000-1254. Although the UDRP is not a catch-all device for trademark holders to shut down any kind of potentially damaging web activity (as intimated by Mr. Lowry above), featuring a trademark in a domain name to attract attention to that domain and then selling counterfeit products which bear that same mark, seems to fall squarely into the purview of UDRP jurisdiction.

Then, just last week on September 7, 2012 Oakley won a UDRP for the domain www.myfakeoakleys.com against the same Registrant, an entity called "H intel" which is based in Xiamen (Fujian Province), China. The site was created in late February 2012 and Oakley filed a UDRP with the National Arbitration Forum in July 2012 seeking transfer of the domain.

Although the Registrant made no secret of the fact that it had created a "fake" Oakley site, it did so in as professional (and straightforward) a manner as seemingly possible. The Oakley mark was/is displayed prominently at the top of the site, there is a useful sitemap, a blog that has a number of recent entries, a privacy policy that states the site "… respects your privacy and takes your online safety seriously", and even a Verisign Trust Seal at the bottom — which is as fake as the Oakley glasses the site is hawking. The site accepts payment via Visa, Mastercard and Western Union. There is a lot that seems to be "real" about the website, even the glasses at first glance, though a quick shopping comparison reveals it is selling counterfeit Oakley products at a STEEP discount. For example, a pair of fake Oakley Pro M Frame Hybrid glasses in a very nice blue metal color goes for US $15.05. The same real glasses are sold on the cheap side for US $120.00 at established retailers.

The panelist, Mr. Tyrus Atkinson, did not mention the earlier Oakley decision or the rationale concerning whether the term "fake" as part of a domain name can be used as a basis for finding that the domain is not "confusingly similar" to a mark. He did however state: "Complainant notes that Respondent's disputed domain name combines Complainant's mark with the generic terms 'my' and 'fake.' Past panels have found that the addition of generic terms does not adequately distinguish the disputed domain name from a complainant's mark."

But, if the UDRP is not the proper place for companies like Oakley to deal with counterfeit websites (as Mr. Lowry suggests) that are using the Oakley trademark in the domain name, then what other options does Oakley have?

Well, Oakley could file a lawsuit against "H intel" in the United States based on in rem jurisdiction of the website in the state of Virginia. Established case law holds that all .com domain names are subject to jurisdiction here due to the fact that Verisign, Inc. (the de factor "owner" of the .com registry) is located in the United States. By doing so Oakley could seek an injunction against H intel under the Anti-Cybersquatting Protection Act ("ACPA") and ask a Court to force Verisign to shut the website down. Other companies have done this successfully. For example, Ralph Lauren, The North Face, and True Religion Apparel, Inc. are just a few of the companies that have shut down hundreds of fraudulent websites via ACPA lawsuits and been awarded judgments for hundreds of millions of dollars collectively. The downside here is that none of these companies will likely never recover a nickel from the judgments because there is no way to enforce a judgment against a company which is located overseas and does not have accounts or assets in the United States.

Oakley could perhaps file a lawsuit against the companies that process the credit card payments for the Registrant — without which they would not be in business. In 2010 Gucci America, Inc. ("Gucci") filed a trademark lawsuit against three credit card processing services that worked with the counterfeiter arguing that the processors were at least liable for secondary or indirect trademark infringement by enabling the counterfeiter to sell its fake goods. The Court found that this was a plausible argument guided by its belief that in cases where a credit card processing company is assisting a "high risk" or known counterfeiter it has a duty to do some type of investigation into the companies business and can't "knowingly provide a bridge between buyers and sellers of [counterfeit products], enabling them to consummate infringing transactions, while making a profit on every sale." (citations omitted).

Although there is a time and place for companies to litigate matters that are beyond the jurisdiction of the UDRP, the better view in this case is that simply including the term "fake" as part of a domain name does not eliminate the element of "confusing similarity" under UDRP law. Any consumer that goes to the websites at www.myfakeoakleys.com or www.myfakeoakleysunglasses.com is drawn to the site by the association with the Oakley mark. Further, in the on-going game of whack-a-mole that companies must play in order to try and frustrate (if not stop) infringers/counterfeiters and protect the public from fake and perhaps even dangerous goods, filing a lawsuit to shut down a domain in every case is simply not practical. The reality of a global Internet is that there must be fast and effective ways to shut down fake/counterfeit websites — and the UDRP is the best tool to protect brand owners and consumers in most cases, particularly where counterfeiters and infringers are harming domestic companies by using their presence in foreign jurisdictions as a weapon.

Written by David Mitnick, President DomainSkate LLC

Not surprisingly, the survey revealed that over 90% of corporate portfolios currently consist of defensive registrations.

The survey also revealed that New gTLDs are of significant concern to large corporations. Fifty-five percent of the respondents stated that New gTLDs will create opportunities for brand harm or confusion. And just over half stated that their online policing efforts will need to increase. Interestingly enough, about 75% of the respondents do not expect to use new gTLDs for core websites and over a third are not sure what to do with their domain portfolios in response to new gTLDs.

When asked about the accuracy of Whois (domain name ownership information), 4 out of 5 respondents stated that they encounter fraudulent or inaccurate information at least monthly and one in four stated that they encounter fraudulent or inaccurate information more than once a day. Additionally, the survey revealed that 85% of those who consult Whois more than once a day encounter fraudulent or inaccurate information every day and only 15% are usually able to obtain correct information for sites with fraudulent/inaccurate Whois data.

While the results of the survey were in no way surprising, they are concerning and raise a number of important questions such as:

• Will the practice of defensive registrations continue in light of new gTLDs, or are New gTLDs the straw that broke that camel's back?
• Just how much cyber-squatting will we see in the new gTLDs when registries launch at the end of next year or in early 2014?
• Will ICANN ever be able to make meaningful changes to improve accuracy of Whois?

These are tough questions, but fortunately some of the answers will become clearer in the coming months and years.

Read full story: PC World

"The new gTLD program represents a historic expansion of the Internet namespace and presents many decision points and questions to brands as they seek to understand how these new gTLDs will affect their intellectual property and domain portfolios," said Frederick Felman, chief marketing officer of MarkMonitor. "We are committed to safeguarding brands online and our gTLD database is one of many ways we can support brands through this process."

Brands can use the MarkMonitor gTLD Application Database to help identify applications that affect their intellectual property and how they conduct business on the Internet. The database offers easy searching of all publicly available application information such as gTLD, applicant name, contact information and application purpose. Current MarkMonitor clients will also have access to enhanced features such as custom reports. MarkMonitor will add more information at a later date, including category, a brief description of the gTLD, risk assessment, similarity to other applications and infrastructure provider.

According to the rules set by ICANN for the new gTLD program, if a rights' holder identifies a problem with an application, he or she can submit comments or file formal objections with ICANN. Comments submitted within the first 60 days will be taken under consideration by evaluators, so prompt action is advised. MarkMonitor highly recommends that companies navigating the gTLD process also work closely with their own trade organizations to file community objections in cases where a competitor has applied for a generic term which it plans to operate as a closed TLD.

Pricing and availability
MarkMonitor is providing access to this database at no cost. It is available at https://www.markmonitor.com/gtlddatabase. Existing clients can access enhanced features through the MarkMonitor customer portal.

Yet that's an incomplete picture. At the other major UDRP arbitration provider, the National Arbitration Forum (NAF), 2011 case filings were down 4% in 2011, declining from 2,177 cases in 2010 to 2,082 in 2011. The vast majority of these cases (96.2%) involved gTLDs like .com and .net; cases were concluded an average of 35 days after filing, but some were resolved in as few as 20 days — and 17%, a full one-sixth of filed complaints, were resolved directly by the parties with no need for panel arbitration. (That noteworthy record again raises the question of why a supplemental Uniform Rapid Suspension (URS) process is even needed for new gTLDs, but that's a separate subject.)

So, overall, the WIPO 2.5% increase was balanced out by the NAF 4% decrease and total UDRP filings at the two principal ICANN-accredited arbitration providers were essentially flat in 2011.

The Internet Commerce Association's (ICA's) Code of Conduct condemns intentional cybersquatting, so we are happy to see filings stabilize and would be delighted to see them decline further in the future. But we do think these filing figures need to be calmly placed in the broader context of total domain registrations. And, according to VeriSign's December 2011 Domain Name Industry Brief, domain registrations increased by 8.9 percent in the preceding year.

So, we think it's quite significant that total 2011 UDRP case filings did not increase notwithstanding a near-9% increase in total domain registrations. This marks yet another year in which UDRP filings declined as a percentage of all domain registrations.

While the NAF press release does not include the total number of domains involved in the cases filed with them we can guesstimate that, when we also include the additional second tier UDRP arbitration providers, approximately 9,000 domains were at issue in all 2011 cybersquatting cases filed with all UDRP providers.

That's 9,000 out of a total of about 220 million registered domain names. In other words, for each million domain registrations there are about 41 domains alleged to be cybersquatting in UDRP cases.

We expect that trademark interests will counter that the number of UDRP filings represents just "the tip of the iceberg" of abusive domain registrations, and will also point out that some but not all ccTLDs are subject to UDRP. And we'll concede those points — while also noting that .com and .net registrations totaled 112 million, just over half of all domains, and that these are the gTLDs that attract the most Internet traffic and are therefore most likely to be abused by intentional cybersquatters. So, while UDRP filings are not an exact proxy for the full extent of cybersquatting, they are the best measure we have of instances in which the resulting harm or domain value were judged sufficient by a trademark owner to invest the relatively modest sums of a $1300 filing fee plus associated attorney fees.

We are also well aware of studies — like this from Sophos — indicating that major brand names are subject to significant typosquatting. Despite finding that malware was virtually nonexistent on such websites, that study nonetheless observed that "typosquats are by no means harmless". Yet, other than the 2.7% of typosquatted domains that "fell into the loose category of cybercrime", a significant portion of the remainder of typosquatted websites appear to fall outside the scope of the "bad faith registration and use" standard required for a successful UDRP filing. So it's not just that rights holders have concluded that a particular typosquatted domain isn't worth the monetary cost of filing and pursuing a UDRP — they may have also concluded that they would not prevail. That is, those domains may fall more into the category of annoying nuisance rather than bad faith infringement, and are not generally associated with criminal activities such as phishing or with bad acts such as malware distribution.

Notwithstanding this contextual decline of 2011 UDRP filings, we are quite sympathetic to the costs imposed on brand owners of maintaining portfolios of defensively registered domain names that could be easily cybersquatted if released back for public sale. Reducing this cost is a subject that could certainly be addressed by an open and inclusive UDRP reform process within ICANN — if trademark interests will ever stop working to defer the initiation of such a process.

We'd also point out that if even one-one-hundredth of one percent of all domains registered today were cybersquatting in a manner sufficient to justify a UDRP filing that would currently total about 22,000 domains, and the actual number of UDRP filings last year involved less than half as many domains. In other words, based just on UDRP filings, more than 99.995 percent of all domains are not cybersquatting. That's right, 2011 UDRP filings involved less than one-two-hundredth of one percent of all registered domains. Even if the filed cases understate the incidence of UDRP-violating cybersquatting by a factor of one hundred, the problem would rise to just under one-half of one percent of all domains, with the remaining 99.5 percent being non-infringing.

We note all this not to excuse cybersquatting but to indicate that the problem appears to be small, manageable, and diminishing as a percentage of registered domains year after year based on UDRP filings — and that the UDRP provides a relatively fast and inexpensive alternative to litigation in court. So any trademark interest advocacy for 'rights protections' that are more numerous and stringent than what's already available is not strongly supported by the available evidence.

We'd also note that many ICA member providers of "parking" or other domain monetization services, as well as of secondary domain marketplaces, have established either formal or informal means by which trademark owners can bring alleged infringement claims to their attention and block clearly infringing domains. These services are available at no cost to trademark owners, and should often be their first recourse in advance of filing a UDRP claim.

As for the WIPO press release declaration that, "With the domain name coordinating body, ICANN, allowing for a massive increase in the number of new domains, brand owners' resources will likely be stretched further.", that seems entirely speculative for now — especially since brand owner resources were not stretched further in 2011 with total UDRP filings being flat, and actually declining in the context of an expanding DNS environment. WIPO's statement also ignores the fact that the Trademark Clearinghouse will let trademark owners secure, block, and issue warnings in regard to new gTLD domains in an unprecedented manner to reduce cybersquatting.

So let's wait and see what applications are actually filed for new gTLDs, and then wait to see what registrants they attract and what visitor traffic they generate, and then make a judgment on the impact of new gTLDs on trademark owners that is informed by facts rather than speculation. (We note in passing that NAF's statement makes no similar gloomy predictions regarding cybersquatting at new gTLDs.)

One final thing to remember is that arbitration providers like WIPO can affect the number of UDRP filings by allowing its panelists to alter long-established practices and thereby change UDRP policy in a one-sided manner. For example, recently a WIPO panel ruled that ceat.com must be transferred to CEAT Ltd., an Indian tire company, even though there was scant evidence that the domain had been registered, much less used, in bad faith (See: CEAT Limited, CEAT Mahal, v. Vertical Axis Inc. / Whois Privacy Services Pty Ltd). Another WIPO panel recently ruled in FACI Industries v. BuyDomains.com, Inventory Management that faci.com be transferred to the non-famous metal casting firm of FACI Industries of Bolingbrook, Illinois even though there was ample evidence that the registrant exercised due diligence to avoid infringing the complainant's trademark rights (See: FACI Industries v. BuyDomains.com, Inventory Management). As the dissenting panelist in CEAT stated, "To hold that such a valuable word cannot be used as a domain name simply because "the domain name is a trademark and has no descriptive meaning" is not supported by the Policy and is a very severe restriction on the right to register a domain name that is not contemplated by ICANN in its policies or practices… That is simply a rewriting of the Policy that is entirely unsupported. Clearly, registering a word that both parties say is an acronym and using it for purposes unconnected with the Complainant or its activities does not violate the Complainant's trademark rights or the Policy.”

These rulings open the door to any short domain name that can constitute an acronym for one or multiple organizations being subject to "first to file" UDRP actions encouraged by trademark attorneys. We are already seeing an uptick of new UDRPs related to acronym domains, and if this becomes a flood in the remainder of 2012 — encouraged by the ceat.com and faci.com rulings, which deviate from years of UDRP practice related to acronym domains — does that mean that cybersquatting is up, or that cybersquatting has been unilaterally redefined down by WIPO panelists and that as a result the trademark bar sees a new UDRP opportunity to bring to clients' attention?

These disturbing and controversial acronym domain rulings again illustrate why WIPO and other UDRP providers should reconsider allowing panelists deemed "neutrals' to also serve as advocates for complainants or registrants, given the clear potential for conflicts of interest, and the certain appearance of potential conflicts. It also illustrates that prior decisions should have a more binding precedential effect that they are accorded under the current WIPO Overview. The UDRP process should remain an available remedy for squelching a declining pool of infringing domains, but not permitted to be a mercurial full employment program for creative trademark attorneys.

ICA will continue to press for meaningful UDRP reform, including changes to assure that arbitration "neutrals" do not have inherent conflicts. But for now we are happy to note that total UDRP filings continue to decline as a percentage of all domains and remain a tiny fraction of the overall DNS infrastructure. That's something worth remembering the next time you see allegations that cybersquatting is out of control.

Mr. Corwin serves as Counsel to the Internet Commerce Association

Written by Philip S Corwin, Founding Principal of Virtualaw LLC, a Washington, DC Law and Public Policy Firm

In previous postings we have seen that Internet.BS exists completely in the shadows and now it is found they have their own domain reseller elevating themselves to the status of a Registrar by manipulating WHOIS records for the domains they control. This manipulation adds an additional layer of obfuscation and misdirection. A consumer or investigator attempting to validate whether or not this bank is real will be further confounded by the lack of a reliable Registrar contact to handle the situation. There is absolutely no reason why a reseller should be able to manipulate WHOIS in this way, it is unacceptable.

Resellers are companies which operate under a Registrar's accreditation and are solely accountable to that Registrar. While KnujOn has expended considerable effort making Registrars more transparent and accountable, resellers are a far more insidious and unknown group of players in the Internet architecture. Resellers, in effect, act as Registrars and have the same access but none of the disclosure requirements intended to protect consumers. ICANN has no knowledge of who the resellers are or how many are in existence. More accountability of the domain resellers is part of the proposed changes to the RAA which are stalled in negotiations.

Written by Garth Bruen, Internet Fraud Analyst and Policy Developer

There is an agreement that the exceptions are dangerous for ICANN's gTLD policy process which is in a formative and delicate phase. Whenever precedents to the rules are set (RC/IOC decision), it is essential that these precedents are discussed in a very solid process with necessary checks and balances. The major risk, as has happened with the ICANN decision, is when substantive exceptions are discussed through procedural exceptions.

Additional complexity was triggered by jointly discussing the Red Cross and the IOC, which are quite different organisations in their main missions, organisation, and legal status.

The status of the Red Cross emblems and names is exceptional for historical, legal, and humanitarian reasons.

The Red Cross emblem and name are at the basis of humanitarian protection. For more than 100 years, the Red Cross emblem has been used to clearly distinguish medical personnel from combatants on battlefields. Today, jeeps and trucks with Red Cross emblems can be seen on the streets of Syrian cities trying to reach people in need of help. The Red Cross movement puts a lot of effort into training soldiers and the general public on the relevance of the proper use of the Red Cross emblem. Apart from an ethical rationale, the Red Cross often argues that support for its mission is a useful 'insurance investment'. All of us, particularly in increasingly uncertain times, may benefit from Red Cross protection in conflict or humanitarian crises.

The importance of the Red Cross emblem/name for its core function has led to very strong protection in both international and national law. It is protected by the Geneva Convention, which is signed by 194 states and supported by the global public. Protection of the Red Cross emblem/name is incorporated in national laws through the Red Cross legislation. In order to ensure additional protection, many countries, such as Canada, provide private law protection by treating the Red Cross emblem/name as a trademark. One of the reasons for additional trademark protection is practicality. Trademark protection has well-established procedures.

Other intergovernmental organisations cannot use the Red Cross protection as a precedent for requesting the same status in ICANN's domain name space. At international level, there is quite a stretched legal construction for special protection of inter-governmental organisations based on Article 6 of the Paris Convention for the Protection of Industrial Property and other related treaties (see: an excellent analysis by K. Komatis).

At national level, I am not aware that any country has national legislation — as in the case of the Red Cross — protecting, for example, UNESCO or WTO names. There is a well-known case of the use of www.gatt.org by anti-WTO organisations. Although www.gatt.org was designed to confuse visitors not only by name, but also by design (in the early days it looked like the WTO website), the WTO could not do anything legal about it.

In sum, there is no legal basis for making an analogy between the Red Cross and other inter-governmental organisations in the field of protection of names and emblems.

What can be done in order to protect this unique status of the Red Cross?

There is one paradoxical situation in framing this discussion. The protection of the Red Cross is discussed as the exception to ICANN's new policy. It is not the other way around, i.e. that the 'cyber' aspect is the exception from the well-established status of the Red Cross. Red Cross names and emblems have been protected for more than a century.

Practically speaking, there are two main possibilities to address the Red Cross question — and many variations in between:

1. ICANN can apply the Applicant Guidebook and effectively not provide the same level of protection the Red Cross enjoys in the 'real world'; the Red Cross movement will have to use a wide set of legal protection mechanisms. For example, in Canada, it can use both national public and private (trademark) law. This approach has quite a few weak aspects including putting pressure on both the Red Cross and the Internet registrars (monitoring domain name space, legal action). The Red Cross Movement (ICRC, IFRC and National Societies) would need 200-300 officials to monitor the domain name spaces and take legal actions against misues of the Red Cross names and emblems.
2. ICANN can provide full protection for the Red Cross (equal to the real world), as it has started doing. It would make both a pragmatically and an ethically sound policy. It is pragmatic because it relieves the administrative and financial burden from the Red Cross Movement and Internet registrars. It is ethical because it supports the humanitarian protection principle, which is one of the cornerstones of international public order codified in the Geneva Conventions and widely supported by international community.

ICANN's way of dealing with the Red Cross is paved not only with good intentions but also with a solid legal basis. However, it remains to be seen how ICANN will navigate the slippery territory caused by procedural shortcomings and addressing the Red Cross and the IOC together.

This article originally published in Diplo.

Written by Jovan Kurbalija, Founding Director of DiploFoundation

Stay tuned as we keep this page updated through out the meetings.

Comments and questions? Please post them below in the comment section of the page or send us an email.

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Update / Mar 18, 2012 — Dyn COO Gray Chynoweth catches up with Rod Rasmussen of Internet Identity.

Update / Mar 18, 2012 — ICANN Wiki founder Ray King talks with Dan York of InternetSociety.com at the Costa Rica event.

Update / Mar 17, 2012 — Gray Chynoweth, COO of Dyn caught up with DomainsBot CEO Daniel Ruzzini Mejia.

Update / Mar 17, 2012 — ICANN Wiki founder Ray King talks with Iron Mountain's John Boruvka and Mary English in Costa Rica.

Update / Mar 17, 2012 — ICANN Wiki founder Ray King talks with Director of Channel Sales Edward Schandlbauer of CitizenHawk in Costa Rica.

Update / Mar 16, 2012 — Konstantinos Komaitis from Univesity Of Strathclyde sits down with Dyn COO Gray Chynoweth at ICANN 43 to talk about special protection measures requested by Red Cross and International Olympic Committee (IOC).

Update / Mar 15, 2012 — Dyn Director of Labs Andrew Sullivan sits down with Dyn COO Gray Chynoweth at ICANN 43.

Update / Mar 14, 2012 — Ray King of ICANN Wiki speaks with David Taylor, partner at the law firm of Hogan Lovells, about if new TLDs will cause mayhem from an IP perspective and predictions on if brands will race to protect themselves in regards to registering under the new TLDs.

Update / Mar 14, 2012 — Ray King of ICANN Wiki speaks with Ken Hansen, Senior Director at Neustar, about branded TLDs and what his predictions are for the total number of new TLDs that will be applied for.

Brought to you in partnership with Dyn Inc and ICANN Wiki. Please add your feedback and suggestions using the comment form provided on this page or contact us directly.

Video Coverage of past ICANN meetings:

ICANN 42 Meetings in Dakar
ICANN 41 Meetings in Singapore
ICANN 38 Meetings in Brussels
ICANN 37 in Nairobi, Kenya
ICANN 36 in Seoul, South Korea
ICANN 35 in Sydney, Australia
ICANN 34 in Mexico City

Unfortunately, the problem of Registrar obfuscation is not a new one for ICANN. The concern is that this yet another phantom with an unverifiable location like Parava Networks, OnlineNIC and EstDomains. These are egregious examples but the problem is truly pervasive and KnujOn has been tracking the invalidity and unavailability of Registrar contact information for a long time as many Registrars are run from unknown locations or post boxes. It has been a major agenda of governments, law enforcement and security experts to improve Registrar transparency by requiring full disclosure of location, ownership, and proof of local licensure but there has been significant pushback on this from the Registrars. The 2009 RAA was amended to require Registrars post contact information on their websites and ICANN compliance issued an official letter to me in 2010 which stated "ICANN is planning to incorporate website checks into its 2011 registrar audit schedule", but KnujOn found 10 new Registrars created in 2011 which have no address posted. We understand that in the modern virtual world businesses run from multiple locations but this not the situation here. We are talking about an industry which is by mandate supposed to be transparent but it is in fact opaque beyond acceptability. To be clear, the address in this case does apparently exist but cannot be verified. An address which does not exist is a clear violation, but an address that cannot be verified as a legitimate business has different purpose as a front.

Behind the front here is possibly the largest collection of illicit pharmacy domains, one-third according to the LegitScript report and possibly 44% according to the National Association of Boards of Pharmacy (NABP). In fact the NABP issued a letter today to ICANN to encourage them to act on this issue. It was NABP requests which encouraged Google, Yahoo and Bing to stop accepting advertising from illicit pharmacies. This is specific to KnujOn's work and ICANN as we conducted a case study on an Internic.BS sponsored illicit pharmacy with false WHOIS which the Registrar kept online after the deletion deadline.

ICANN's potential response to the NABP could be problematic as its enforcement ability is compromised by internal politics, conflicts of interest, and a general collapse of contractual authority. It has been revealed over the last few days that the RAA is not enforceable on a fundamental level, in terms of registrar enforcement of WHOIS accuracy. For many of us this was the last tool keeping rampant domain abuse at bay. Now it seems that there are no limits what a rogue Registrar can do. This is not a good model for public trust and discussions on abusive registrars seem taboo within ICANN. This could be the biggest policy and security failure on the general Internet as it touches everyone. The literal difficulties presented by this could be seen in the Verizon v. DirecNIC suit where a Registrar operating in Louisiana, listed in Caymans, owned by someone in Florida, with shell companies in other unknown locations simply could not be found. The case collapsed because of a lack of clear jurisdiction. This is a godsend for companies like Internet.BS who can operate with impunity everywhere and nowhere like the mythical SPECTRE.

Written by Garth Bruen, Internet Fraud Analyst and Policy Developer