Domain Name Dispute Filings Rise as New gTLDs Launch

Buried in a recent WIPO press release was news that "cybersquatting case filings" increased 2 percent in 2014, to 2,634 cases. This spike, although only slight, is especially interesting because it follows a year in which the number of cases had declined by about 10 percent.

The 2014 increase may be attributable to two factors related to ICANN's new global top-level domain (gTLD) program:

• First, the distractions and expense associated with the application and objection process that consumed much of trademark owners' time in 2013 has now passed.
• Second, the actual launch of some new gTLDs has created more opportunities for cybersquatting that brand owners are pursuing.

As a result, the number of domain name dispute filings may continue to rise in 2015 and could even surpass WIPO's peak in 2012, when 2,884 cases were filed.

Indeed, if filings under the new Uniform Rapid Suspension System (URS) -- which applies to the new gTLDs -- are included, the increase this year could be significant. However, because WIPO does not accept URS filings (the only providers are the National Arbitration Forum (NAF) and the Asian Domain Name Dispute Resolution Centre (ADNDRC)), WIPO's statistics will not convey the complete picture.

Interestingly, while .com remains the most popular TLD in domain name disputes, a number of the new gTLDs already are showing up in UDRP cases. For example, in 2014, 36 .email domains were represented in WIPO UDRP filings, as well as 20 .club domains, 11 .clothing domains and 11 .company domains. So far in 2015, .email and .club remain among the most popular new gTLDs in UDRP proceedings.

Some Domains Are Full of Junk

So, you know the expression, "When you're holding a hammer, everything looks like a nail"? Apparently, the same is true when you're a domain name attorney. Sometimes, it's easy to forget that the word "domain" existed long before the Internet (which, itself, hasn't really been with us for too long).

The Merriam-Webster dictionary includes 10 definitions for "domain" -- beginning with "complete and absolute ownership of land" and covering such obscure (to me) entries as "any of the small randomly oriented regions of uniform magnetization in a ferromagnetic substance." The tenth and last entry relates to Internet domain names.

In law school, I studied "eminent domain" -- the right of a government to take private property for public use.

And, in a classic episode, the characters on the Seinfeld television show tried to become masters of their domains. (Consult the Urban Dictionary, if necessary.)

Still, I automatically think of the Internet when I hear the word "domain," since I've been working in this area of the law for more than 17 years

But a recent encounter reminded me yet again that the word has other meanings -- as the accompanying advertisement to "Reclaim Your Domain" makes clear. When I saw that headline, the first thing I thought of was the UDRP -- the Uniform Domain Name Dispute Resolution Policy. (Never mind that the ad was posted inside a restaurant restroom.)

But, as the ad from Junk King declares, this company's services take place entirely offline: "a full range of junk removal services."

Well, considering all of the junk that exists on the Internet, maybe these two domains aren't entirely unrelated after all.

(One more thought before I go. It's too bad that Junk King hasn't cleaned up its own [Internet] domain problem: The company uses junk-king.com (with a hyphen), while junkking.com (without a hyphen) is registered to someone else.)

What Happens When Mark Zuckerberg Wants to Buy Your Domain Name

By Doug Isenberg Question: How much is a domain name worth?

Answer: Whatever someone is willing to pay for it.

Really, I'm not being facetious. I've told clients and others the same thing many times. Because, unlike almost every other type of property and asset, domain names are unique, and their resale prices vary wildly.

So, one of the most difficult things to know in the sale of any domain name is what a prospective buyer is really willing to pay.

Take, for example, the recent sale of the domain name <internet.org>. According to a Bloomberg news article, the domain name was sold by a Denver entrepreneur who had registered it in 1993 -- forever ago.

Only after the sale, which apparently was made via a domain name broker, did the seller find out that the buyer is a partnership of top Internet companies led by Facebook's Mark Zuckerberg, whose net worth was recently estimated by Forbes at $16.1 billion.

So, how much did the previous owner of <internet.org> get for the domain name? He only told Bloomberg that it was "far less than $1 million."

Had the seller known that the buyer was backed by a multi-billionaire, perhaps the price would have been much higher.

On the other hand, knowing when to sell a domain name reminds me of that timeless advice about knowing when to sell a stock: "Bulls make money, bears make money, pigs get slaughtered."

Still, in many high-priced domain name transactions, a seller should conduct due diligence about a buyer, because the true value of a domain name cannot be ascertained in the abstract. Well-known buyers in such transactions, however, will understandably do their best to conceal their identity.

So, what's the best way to figure out what a domain name is really worth? If you're a seller, sell it. If you're a buyer, buy it.

(Update: "The Domains" blog has more details about how the <internet.org> domain name transaction occurred, "Internet.org Acquired By Zuckberberg From Domain Investor After He Owned It For Just One Month".)

Attention, New York Times: Renew Your Domain Name. Now

By Doug Isenberg As widely reported, The New York Times website was apparently "hacked" by the Syrian Electronic Army, resulting in widespread outages and warnings within the newspaper to its reporters to avoid sending sensitive e-mail.

The attack appeared to be at one of the highest levels in a website's food chain -- the domain name record itself (in this case, nytimes.com). One large and reputable corporate registrar said that the domain name was "breached and redirected."

Putting aside the issue of how the attack could have happened, I'm amazed by what I saw when I looked at the domain name record itself, that is, the "whois" database. A day after the hacking -- after The New York Times website had recuperated (though not fully) from the attack -- I saw that the nytimes.com domain name is due to expire on January 20, 2014. Less than four months from today.

Many large organizations (including Microsoft and the International Olympic Committee) have failed to renew their domains, as I have previously noted. So, why take a risk with any domain name and allow it to get dangerously close to expiration before renewing it?

Registrars typically offer registrations and renewals for up to 10 years, so there's really no reason to let a domain name linger with less than a year until expiration.

It's cheap, easy and smart to renew an important domain name -- actually, any domain name you want to keep -- long before the expiration date approaches. Renewing a domain name today can avoid problems -- including legal issues -- tomorrow, or a few months from now. That shouldn't be news to anyone, including The New York Times.

Is a Cheap, Computer-Generated UDRP Complaint a Good Idea?

By Doug Isenberg If you could pay several hundred dollars (or even less) for something that often costs thousands of dollars, should you do so? The answer, of course, is, "it depends." It depends on whether the items are truly comparable -- or, is one merely a cheaper imitation of the other?

This is true not only when shopping for consumer goods and services, but also for legal services -- even (and, perhaps, especially) in the area of domain name disputes, including the Uniform Domain Name Dispute Resolution Policy (UDRP).

Domain Name Wire, a popular blog for domainers, recently wrote about a $499 service from a company called Domain Skate. The service -- on sale "for a limited time" for only $399 -- is advertised as a "proprietary web application to prepare and file your own UDRP complaint, quickly and hassle-free."

While the service may sound appealing, Domain Name Wire issued this caution: "The ideal customer for DomainSkate is someone who hasn’t filed a UDRP before. Which is exactly the type of company that needs a lawyer, since they’re less likely to understand the requirements of winning a case."

True, many services that once required a lawyer are now being offered by companies online via automated processes. As a law professor just pointed out in The Wall Street Journal, companies such as LegalZoom and RocketLawyer represent "the most significant recent dislocation in the practice of law."

Some legal services -- like drafting incorporation documents or a basic will -- may be well-suited to computer-generated documents. But the UDRP is an arbitration process with plenty of nuances.

While a form UDRP filing may work some of the time, it's also possible to create more problems than it solves. In previous UDRP cases apparently involving form documents, panels have criticized "the apparent carelessness" of the parties; called a complaint "poorly drafted and difficult to read"; and ruled against a party on a critical issue after it ignored "a second opportunity" to respond to an order.

Although many UDRP cases raise similar issues, the facts of every case obviously are different. Plus, many issues can arise after a complaint has been filed -- issues that no form generator can address. For example, a change in the registrant's identity post-filing may require an amendment, with additional research on the newly identified entity. A request to change the language of the proceeding may require an interpretation of the relevant precedent. A response of any kind may raise the possibility of a supplemental filing, based on the issues set forth in the response. An offer to settle must be evaluated on numerous factors. And the list goes on.

Only a human being -- ideally, one with significant relevant experience -- can make the judgments necessary to handle all of these issues.

When shopping for domain name legal services, like anything else, let the buyer beware.

Ten Essential Bookmarks for Understanding Domain Name Law

By Doug Isenberg Keeping up with domain name law and news is a challenging task, but after nearly 17 years of legal practice in this area, I've compiled a short list of "go-to" websites that keep me informed and educated. Here, then, are the best and most important sites I visit on a regular basis (some, daily), which should be of help to anyone interested in this area of law:

1. ICANN's UDRP Page. This website contains the text of the Uniform Domain Name Dispute Resolution Policy (UDRP), the most important document for resolving domain name disputes. Although I can recite large parts of it verbatim sight-unseen, I still refer to it (and the UDRP Rules linked to it) regularly when advising clients on domain name disputes, drafting UDRP complaints (or, occasionally, UDRP responses) or writing UDRP decisions in my role as a panelist.

2. WIPO's "Domain Name Dispute Resolution" Page. Probably one of the best sources of information about the UDRP and other domain name dispute policies, the website of the World Intellectual Property Organization (WIPO) offers a searchable database of decisions, statistics about domain name disputes, filing details, information about country-code top-level domains (ccTLDs), model forms and much more.

3. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.  Although a part of the WIPO website listed above, the "Overview" is important enough to merit its own spot on my list. I often refer to this document as a "mini treatise" on the most important and challenging issues in UDRP cases. It offers the "consensus or clear majority views" on these issues, based upon thousands of UDRP decisions through the years.

4. National Arbitration Forum's Page on Domain Name Disputes.  The NAF is the second-most popular provider of domain name dispute services (behind WIPO), and, like WIPO, its website offers a very useful and searchable database of domain name dispute decisions (as well as basic information about the process). As the first approved provider of services under the forthcoming Uniform Rapid Suspension System (URS), NAF's website likely will become even more important.

5. ICANN's Microsite for the New Generic Top-Level Domain Program. With more than 1,900 applications for new generic top-level domains (gTLDs) in the pipeline, I am now visiting ICANN's microsite on a daily basis to review the status of applications, monitor news, and gain access to resources essential to the important objection process.

6. InterNIC. Often overlooked (and quite dated in its appearance), the InterNIC website still offers authoritative information about "whois" domain name records (and a link to report inaccurate listings) and a complete list of ICANN-accredited registrars, with contact information.

7. IANA's "Root Zone Database."  Now a department of ICANN, the Internet Assigned Numbers Authority (IANA) offers a simple and complete list of information about ccTLDs and is often my first stop when I want to learn about registration requirements and dispute details for a ccTLD I don't often encounter.

8. DomainTools. This website boasts that it has "the most comprehensive collection of domain name ownership records in the world," and it is very useful (though often for a fee) for finding historical whois records, related domain names and other information helpful for domain name disputes.

9. Internet Archive's "Wayback Machine." This website says that it offers "over 240 billion web pages archived from 1996 to a few months ago" -- all for free. I often use it to discover how domain names were used in the past, which can be quite helpful in negotiating domain name sales or preparing filings for domain name disputes. It is often referred to in UDRP decisions (including at least one by yours truly) as “a reputable source for tracking the history of some content on the Internet.”

10. Domain Incite. There are many websites that offer news about domain name developments, but I especially like Domain Incite because of its breadth and fairness. I also enjoy DN Journal, which offers weekly updates on domain name sales; and Domain Sherpa, which offers excellent video interviews with domain industry players and a weekly news roundup.

This list is certainly not comprehensive, as many other sites offer great resources on domain name news and law, but I consider these among the most helpful. If you have others to suggest, please drop me a note.

What You Really Need to Know About ICANN's Trademark Clearinghouse

By Doug Isenberg Although ICANN's recently launched Trademark Clearinghouse (TMCH) boasts that it will help you "protect your trademark online," the truth is that while it offers some important protections, it also has significant limitations. And, despite all of the recent webinars, news articles and client alerts, a number of misunderstandings persist.

To be certain, the TMCH is an important part of the new top-level domain (gTLD) program, and trademark owners would be foolish not to participate in it. But, no one should be lured into a false sense of online brand security simply because they have submitted their trademarks to the TMCH.

Yes, by registering your trademarks with the TMCH in a timely manner, you will be able to participate in appropriate "sunrise" periods as new gTLDs come online. And, for limited periods of time, others will be alerted of your rights.

But, keep in mind the following shortcomings of the TMCH:

Registering a trademark with the TMCH does not entitle you to any domain names. Rather, if you have participated in the TMCH, you will be allowed to participate in the sunrise period offered by each new gTLD registry -- which means only that you will have an early opportunity to pursue registration of (and payment for) a domain name that corresponds to your trademark.

TMCH participants are not guaranteed domain name registrations even during the sunrise periods. Each new registry is required to have a Sunrise Dispute Resolution Policy (SDRP), which will "allow challenges" to registrations. Plus, there may be instances in which multiple TMCH registrations have been filed for the same mark, as in the case of dictionary terms (think Delta or United) or competing trademark owners (think Playtex or Scrabble). Indeed, ICANN has clearly passed the buck on this issue, saying: "If two different rights holders try to register the same mark as a domain name in the same TLD, the registry has a process for working that out."

The TMCH's "Trademark Claims Service" won't prevent cybersquatting. For a limited time after each sunrise period, prospective domain name registrants will be notified when they seek to register domain names that correspond to marks registered in the TMCH -- but, such registrants will be allowed to proceed if they simply acknowledge the notice.

The TMCH's attenuated protections are limited to "exact matches" and other narrow criteria. Fortunately, ICANN recently agreed to broaden the scope of a trademark owner's rights from "exact matches" of its registered marks to those "that have been found to be the subject of abusive registrations (for example, as a result of a UDRP or court proceeding)." But even this expansion won't offer any protection to trademark owners against blatant (but previously unenforced) forms of cybersquatting.

In light of all of these limitations, trademark owners must remember that reactive enforcement (including via the URS and the UDRP) -- not just proactive protection via the TMCH -- will remain an important strategy for online brand protection as new gTLDs launch.