ICA Sounds The Alarm: Mark Monitor Pushes For Uniform Rapid Suspension Be Applied To .Net’s & Deadline Is Tuesday

Phil Corwin of the Internet Commerce Association, (the “ICA”) sounded the alarm yesterday on a sleepy Mothers Day that trademark interests led by Elisa Cooper, Director of Product Marketing at MarkMonitor, are pushing for ICANN to add the URS (Uniform Rapid Suspension) to the propose .Net VeriSign contract currently opened for public comment. Ms. Cooper was the primary drafter of a proposed position statement by ICANN’s Business Constituency that advocates this move.

I have for years been telling you even if you have no interest in the new gTLD’s you had to pay close attention to the process as whatever rules come out of that process will be attempted to be applied to all existing TLD’s including .com, .net and .org.

This is especially troubling because as you know the new gTLD process has not even been approved yet since the .Net contract is up for renewal, trademark groups are going to push for this new system to take away domains, be imposed on .net

And guess what is up for renewal next year?

Right the .Com contract with VeriSign.

If This proposal to apply the URS to .Net’s gets adopted then its almost a guarantee that it will be included in the .Com contract next year.

To refresh your memory the Uniform Rapid Suspension allows a trademark owner to file a short one page form, pay a fee ranging from $300-$500 and maybe wind up with the domain.

The URS has a shortened time frame for domain owners to respond, so short that if you go on vacation your likely to miss the time,  and parts of the proposal under consideration include one where a domain owner who loses a fixed number of URS in a certain time frame may be barred from even filing a defense to future URS filings.

The URS also limits the length of the response, and doesn’t allow for a three member panels.

We have all seen horrible one person UDRP decisions and with no option of getting a three member panel and a limited response, this should scare the crap out of any domain holder.

The maybe is in the above sentence because the final rules haven’t even been set for this new program as they are still under debate in the new gTLD program.

Originally the URS was a meant to suspend a domain, meaning the trademark holder wouldn’t wind up with the domain, its functionality would just seize.

But more recently in the new gTLD process trademark groups have been pushing to actually get the domain name through this process and make the URS a loser pays model, so not only would the domain holder lose the domain, but it would have to pay the costs.

Since the debate at the new gTLD process is still ongoing we don’t know which way the rules will be set.

Moreover Mark Monitor wants the Global Trademark Database which is part of the new gTLD process to apply to .Net’s as well.

The problem with that is the WIPO database which is already up and operating, in anticipation of the passage of the final gTLD rules, contains over 630,000 entries, including most dictionary words, two and three letter combo’s and all sorts of generic terms.  Hell even the letter ‘F” is in the database

If trademark owners can get a domain name like they can with a UDRP but in a though a process which costs 1/10th of the price of a UDRP, and which is a much quicker process, then most trademark holders will go to the URS and not even bother with UDRP.

As Phil Corwin told me:

“This is absolutely outrageous.”

“URS is a totally untested, $300, 500-word procedure by which a domain can be suspended. ”

“We don’t even know its final form yet but it could get worse than what is in the Applicant Guidebook now, and could give the complainant first option to acquire a suspended domain, which would make it a functional equivalent to the UDRP. ”

“.Net is the third largest registry in existence (after .com and .de) and registrants have invested massive sums in aggregating portfolios and developing websites based on the understanding that they could only lose their domains in a UDRP.”

“Another danger is that if URS gets imposed on .net and .Com via contract renewal then trademark interests may have no incentive to engage in the UDRP reform process that ICANN is teeing up.”

“We have no idea yet who the URS providers will be or how it will be used (or abused) in real world practice.”

The comment period for the .Net renewal ends tomorrow  Tuesday, May 10

You can comment on the proposal by sending an email to net-agreement-renewal@icann.org

Once you send your comment you will get an email back which you must confirm by clicking on a link otherwise the comment will not be posted.

You can view current comments here.

I will be filing a comment and I urge all domain holders to file a comment and object to the URS from being placed into the .Net contract.

Once again the ICA has shown they are the only group watching out for domainers and they deserve your support.

Comments

  1. says

    wouldn’t that be something if someone with nothing to lose filed a URS to get a billion dollar company’s site seized up due to “trademark” issues?

  2. MHB says

    John

    Considering that the URS does not allow for three member panels, and give the domain holder a very short time to respond and limits the response, yes quite possible

  3. says

    URS is not the only issue by a long shot there are lots of issues and implications buried beneath the surface of ICANN’s new gTLD proposal and some of which will have profound impacts if those same rules are applied to existing gTLDs.

    Trojan Horse springs to mind.

    The whole process is fundamentally flawed however many of the people who should be standing up and saying so are more concerned with advocating positions which will benefit their own and clients’ interests rather than the pubic good.

  4. says

    It appears that I’m the only one to have commented so far. I found another big loophole in the draft agreement, which is point #6. In particular, VeriSign would be allowed to *exclude* certain registrars from promos, with the current language. e.g. a promo that excluded all registrars from Toronto, Canada from participating would be perfectly legal under the language in 7.1.b).

    That’s what happens when you have amateurs drafting contracts.

  5. MHB says

    George

    “‘VeriSign would be allowed to *exclude* certain registrars from promos”

    I didn’t regard this to be a mistake or the result of sloppy language but meant exactly what is means, which is to allow Verisign to make deals with certain registrars to give them discount pricing, rather than as they currently have to do which is to offer the same deal to all registrars.

    That having been said its not an issue I would expect domainers to get upset about as that is a registrar issue not a registrant issue and these discounts seem not to effect retail prices but go right to the registrars bottom line.

  6. says

    Mike: Read my example in my submitted. Suppose you have your own registrar, and it is located in Fort Lauderdale, Florida. VeriSign would be allowed to do a promo that would be available to *all* registrars *except* those located in Fort Lauderdale, Florida, and it would be consistent with the legal language in 7.1.b. Thus, you could be singled out for discrimination by VeriSign, punished in other words, and there’s nothing you could do about it. So, GoDaddy, Moniker, Tucows, eNom, etc. could participate in the promo, but you *couldn’t* participate.

    While they talk about the justification being to serve under-represented communities, e.g. the mythical Ethiopian or Tuvalu registrars, the actual language in the contract would permit them to discriminate against a single registrar of their choosing, perhaps an enemy, etc.

  7. MHB says

    George

    I understand what you are saying, all I’m saying is #1 this is not of interest or concern to domain holders only to the registrars.

    #2 I think this can also be used to give Godaddy.com for example a discount to $1 per domain while making every other registrar pay full price.

    Once again currently VeriSign has to offer the same discount program to all registrars equally.

    Of course the contract again allows VeriSign to raise its rates but as the contract has a presumptive renewal (as does .com) this will not change unless the CFIT litigation is successful

    ttp://www.thedomains.com/2009/06/05/appeals-court-reverses-allows-suit-against-verisign-to-go-to-trial/

  8. says

    Mike: Yes, currently the agreement says they have to offer the discount to all registrars equally. BUT, the new agreement *allows* them to treat registrars differently. That’s my whole point.

    The theory is they could say “all registrars in Sengal are entitled to 20% discounts from January 1st to February 28th, 2012.” But, they could also say “All registrars, except those in Toronto, Canada” are entitled to 20% discounts” or “All registrars, except those in Toronto, Canada, are entitled to free source code and programming assistance.” In other words, they could use that language to target specific registrars for punishment.

    It’s certaintly of interest to domain registrants, as they wouldn’t their main registrar to be singled out for such bad treatment by VeriSign.

  9. Jp says

    So if IRS is as low as $2 per domain then perhaps the solution is to keep filing URS agains all of the TM interests domains. They will get frozen for 14 days and all require a response. They may even lose sometimes.

  10. MHB says

    JP

    You would have to file a complaint for multiple domains owned by the same person claiming infringement of the same mark to get the fee possibly down to $2 a domain (but again final pricing is not set)

    If there is no response the then filer wins by default

  11. says

    In the new landscape of Registry/Registrar vertical integration, isn’t language that allows registries to treat their own registrar differently rather dangerous? Not good for competition?

  12. MHB says

    Tag

    Certainly its a concern but maybe not as much for domainers.

    Also this is not part of the .Net contract for which the comment period closes tomorrow

  13. HAI says

    also agree with gpmgroup. we are not moving toward solutions only toward more wild west chaos that may or may not favour certain interests.

    if we found a technical solution to the tm problems, markmonitor would be out of business. as would the mafia-styled citizenhawk outfit (which is hardly operating in the interests of “citizens” other than themselves and their clients).

    adopting a tm clearance system and the urs won’t solve the tm problems (they are more complex than simply pattern matching against strings of characters), but it will create new systems to be gamed by certain parties. in other words, a new set of problems. job security for purported policy makers.

  14. Max Hyre says

    When does 10 May end? The e-mail archive is dated in UTC, and some comments submitted on 9 May (writer’s local time?) are in the 10 May archive.

  15. Mike Lippert says

    Umm, multiple entities can own the same trademark name. Case in point Apple as in Apple Computer in the computer domain and Apple as in Apple Records in the music domain. I’d think someone else could own the Apple trademark in a different domain perhaps restaurants, and it would be legitimate.

    This is why giving domain names to trademark holders makes little sense. There is only one domain, but potentially many trademark holders.

    And what about the XXXSucks domains? IIRC those have been rules legitimate uses of the trademark and not subject to appropriation by the trademark holder.

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