ICANN Says Brands Are At Risk of Domain Abuse

Katy Bachman at AdWeek did a piece on ICANN and their statement that brands are at risk of domain abuse. They are warning brands to protect their intellectual property by using the Trademark Clearing House. The article mentions that many brands are not rushing to pay  the $150/year per domain fee to register each brand.

From the article:

Try to follow this. Icann, the international organization that has begun to roll out hundreds of new generic top level domains over the objections of brands worried about domain abuse, is now warning brands that they are at risk of domain abuse.

At the end of last month, the first of what will be hundreds of new domains (suffixes to the right of the dot in a url, like .guru, .photography) went live, adding to the more commonly-known domains like .com and .net.

The article goes on to get some feedback from those both in advertising and intellectual property

To Greg Shatan, a partner with Reed Smith who specializes in intellectual property law, it’s a blatant sales pitch. “They’re trying to drum up business. The only way the [Trademark Clearinghouse] gets paid, is if trademark and brand owners are scared.”

Read the full article here

Comments

  1. encirca says

    Do we really think ICANN pushed for this release?

    The headline from Advertising News is mislabeled

    The press release was issued by the Trademark Clearinghouse, not ICANN.

  2. frank.schilling says

    Brand owners have a lot more options this time around .. They can take names at sunrise, there’s a claims period where registrars need to announce to any comer that the name “was” in the TMCH (Stay away!), and the TM holder can take the name at registration price post-launch. Then there’s the low-cost URS for blatant abuses.

    I’d say the ICANN World and this new process have pretty-much bent over backwards for brands and those brands are in as good a position as possible.

    Does that mean no trademarks are going to be abused? No. There are still those who will try to take advantage of marks and register them as domains in new spaces. Does that mean we should not expand the name spectrum to provide choices for the consumer or that there is something wrong with this process? Hell no! IP issues are unfortunate collateral damage when expanding the spectrum. The totality of increased innovation and choice FARRR outweighs the concerns of today’s well-protected brand holder.

    To put this in context – hundreds of millions of new domain names are going to be created in the coming years. History will show precious few of those will have to do with IP protection or abuse. The vast majority IMO will be new registrants getting their first name.

    ICANN is probably surprised by some of the low numbers of names taken during sunrise and is trying to give fair warning to brand-holders and their agents that the sunrise ship is sailing. Next stop is GA and then the URS or UDRP.

    Two final notes .. New namespaces do not mean brand-holders should back up the truck on names that worked in .com in the new spaces. There is a reason brand-typo.com got traffic and that reason will not exist uniformly in all new spaces. As these new spaces pick up traffic, some .com’s will loose traffic.. The namespace is a living beast and traffic circulates like currents in the ocean. Further to that: creating more name registrations does not create more abuse. Think of a name any name.. if that name remains unregistered, it does NOT mean the traffic goes away, unregistered names ultimately send traffic to Google, Bing, or the error search provider selected by your browser. The plumbing of the Internet assures that human traffic lives on, regardless of whether there is a URL active to receive it. Only the page changes, the user’s visit and the potential for abuse flows upstream.

  3. says

    It would be somewhat naive to believe Deloitte/IBM did not anticipate that there would be a $ windfall from the Sunrise service offering, and the release reads like a plea for investment to brandowners who have decided there may be better ways to spend their IP and marketing dollars.

    However, it should also be a warning to Brandowners as the nest round of new gTLDs are opened: owning exclusive rights to your domain may be less expensive than enforcing your trademarks on an open Internet.

  4. David Castello says

    Regardless of who pushed for this press release, it is a blatant attempt to drum up business. The last few years, ICANN and pro-gTLD proponents have been quite vocal about the NEED for these names. And except for dotGuru (which I believe is simply the domainer and speculator’s current top choice), most of the other gTLDs are doing poorly. In fact, very poorly. If the general public doesn’t jump on these soon, there will be more than a few people with egg on their faces.

  5. frank.schilling says

    It’s a marathon David.. These have been out for 4 days : )

    Would you sell me Nashville.com for 10k? I know the answer is no .. But here’s the thing, I might be able to get Nashville.link or .club or .website – and in a few years, those options might not sound so bad.

  6. says

    FS I understand your support of GTLD. Obvious reasons but weak numbers and what I consider a major oversight selling one character domains for $230 does not speak well for the GTLD program effort that while only 4 days since launch has been years in the making. Do you plan on selling one character domains for under $300? I’m guessing NO. What say you?

  7. David Castello says

    Agreed Frank, a marathon is exactly the way to look at them. Unfortunately, that wasn’t the idea that was sold. These were sold as the immediate marketing equivalent of life preservers for drowning men and it appears that the vast majority have decided to sit on the beach sipping their pina coladas. And for the record, I am very pro gTLDs because I believe they will bring in a new generation of domain name owners and help create a vast pyramid with dotCom at the top because it is, by far, the only universally accepted TLD in every language (and these new gTLDs will only help to reinforce that position). I don’t know what the word for “link” is in French or Swedish, but I’m sure it’s not the same as in English and I’d also bet the situation is vice-versa for many of the residents in those two countries.

    And speaking of dotCom, we’ll make an announcement of a massive Castello Brothers sale on March 1st that will have more than a few positive repercussions in this industry :)

  8. Louise says

    @ Frank Schilling, Your thoughts differ from people more knowledgeable than the layperson, such as:

    Julie Brill of the FTC, who said, “I remained concerned—as I have been since Icann first announced its plans—that the expansion could create opportunities for scammers to defraud consumers online, shrink law enforcement’s ability to catch scam artists and divert the resources of legitimate businesses into litigating and protecting their own good names.”

    Brad Newberg, a partner with Reed Smith, who represents a number of large brand owners, who said, “The protections that were put into place are extremely costly, put all the burden on the trademark owner and may not be effective at all.”

    Bill Smith, a senior policy advisor for PayPal, who said, “There is no way this fortress mentality can be continued going forward.”

    Amy Mushahwar, an attorney with Ballard Spahr, which represents advertisers, who said, “If we undermine trust in major brands online, we are damaging consumer trust in the Internet.”

    Bob Liodice, president and CEO of the Association of National Advertisers, who said, “We’ll see dozens and dozens of lawsuits popping up.”

    Susan Kawaguchi, Facebook’s domain name manager, who said, “We routinely have tens of thousands of enforcement targets. These infringing domain names are frequently used in efforts to defraud our users. With the impending launch of over 1,400 new gTLDs, we face enormous challenges.”

    I call on you to volunteer your ties to Registrars, including any agreements, written and signed, or verbal, which may be construed as a conflict of interest.

  9. says

    “The introduction of highways is a serious threat to all goodhearted folk here in rural Illinois, where farmlands and livestock make America wholesome.” ~ Dissenting farmer, 1948.

  10. says

    man, its so heartwarming to know a lot of you guys care about all this in such a selfless, heartwarming charity sort of way.

    “we just want whats best for the internet”

    “we dont want people to be confused – that would make me sad”

    kinda brings tears to my eyes.. the kind i get from laughing 5 minutes straight and not being able to catch my breath.

  11. says

    How many of those 120 million .com domains are actually used? My estimate: 40% – the rest is parked, for sale, or inactive. The beauty of the gTLDs: you cannot squander every damn keyword across thousands of gTLDs; users can finally get something to develop.

    Nobody said they will substitute the .com – at least, not this year. Let’s all have a party in 10 years and talk about it!

  12. cmac says

    there are tons of available domains in other extensions besides .com but people don’t want them apparently. if people don’t want those, why would they want these?

  13. says

    “It’s a marathon David.. These have been out for 4 days : )”

    More like a 100 yard dash. After the 1st day of general availability, all the good ones, the ones that actually make sense are gone. It’s why you see the very low reg numbers.

  14. Joseph Peterson says

    Like most observers, I have more respect for Frank Schilling’s argument of “increased innovation and choice” than for fear-mongering . Of course, like others, I’m skeptical. The innovation seems redundant and the choice a mirage, but at least he presents a vista of positive possibility. Some imaginative person may set out for that mirage and actually innovate along the way. The same can’t be said of bullying registrants into paying additional protection money. No one benefits from shakedowns except the Mafia.

    Yes, Uniregistry is also a business with profit as a motive — which can be said for everybody in the domain industry (to varying extents). But they’re savvy enough to put a more positive spin on their marketing efforts and to look out for some legitimate brand concerns. Take, for instance, Uniregistry’s choice to provide trademark coverage across the dot during an extended Sunrise period or to cut down on registrations through bogus EU trademarks. Those policies seem, well, … thoughtful.

    Positive spin is important. Whether the registries are selling great opportunities or junk, whether they succeed or fail, how entities such as the TMCH, registries, and registrars interact with the public will determine how the public perceives the domain industry as a whole. If they’re rapacious, disingenuous, and don’t look out (at least a little bit) for registrant interests, then all domainers will get the blame for it.

    So even though I disagree with Frank, my hat goes off to him for keeping the tone positive and — what is more — backing up that positive tone with some attention to protecting consumers long-term. That’s in his interests but ours too.

    P.S. Interesting to see the “rising tide lifts all ships” slogan give way to a different nautical metaphor — “traffic circulates like currents in an ocean” — since the latter means admitting that gains create losses elsewhere: “some .com’s will loose traffic”. There’s no contradiction here, since all half-truths must coexist.

    P.P.S. As for this: ” … creating more name registrations does not create more abuse”.

    Brands were fighting a battle on multiple TLD fronts already, which has entailed costs to combat cybersquatting, phishing, and legitimate competition from similarly named sites. Those costs can’t be disputed. Won’t the introduction of thousands of new extensions multiply the number of fronts on which this brand protection battle is fought? Of course it will. This also means more “innovation and choice” for anybody plotting a phishing scam.

    It seems to me that benefits and opportunities of these new extensions are debatable. But abuse will almost certainly escalate. Perhaps that’s acceptable “collateral damage”. I’ll give that argument the benefit of the doubt, with no irony. But the collateral damage is going to be quite real, acceptable or not.

  15. Louise says

    Frank Schilling & Joseph Peterson can be glib when discussing reputations of American companies that are decades in the making, of bricks & mortar brands which account for US employment and a larger percentage of US taxes than firms who hide behind P.O. boxes, behind nominee directors, in offshore companies, such as the Caymans. It’s not YOUR reputation – who cares about their hard work? What is work? Something other people do, that the syndicate such as ICANN/Verisign/major Registrars profit from without doing work, by enacting policies which put the burden on businesses, instead of Registrars, to nip trademark registrations in the bud.

    What happens. Frank Schilling and all the people who apply themselves in honest hard work, when your supply of honest business owners is finally spent from domain theft, brand infringement, and reputation dilution?

  16. Louise says

    when your supply of honest business owners is finally spent from domain theft, brand infringement, and reputation dilution?

    It was an awful thing to say, but I want to explain myself.

    Years ago, I created, HollywoodLover.com, and the renewal notices didn’t come, and it wound up in DomainNameSale portfolio. Well and good – I wasn’t careful with it.

    Yet, I was a distant fan of Schilling: he seemed recluse, yet he brought positive energy when he shared opinions, and seemed to be building things.

    A couple weeks ago, when I researched iSound, I see it is a stolen domain that again wound up in DomainNameSales portfolio of names for sale, and DomainNameSales offered to sell it back to the owner for $50,000 – it’s in the National Arbitration Forum records! – then it slickly changed Registrars to a China-based registrar, and began pointing to isound.net, and the whosis changed, but it is still listed for sale. iSound.net is not rebranding to dot com.

    It’s also happened to me in recent months, that a glitch in my dashboard software wouldn’t let me renew LowSalt.tv, LimitSalt.com, .net, and .org, no matter how many times I paid for it, and the payment was received!

    Then, after years of receiving Moniker’s Weekly Report of expiring and expired domains, the Weekly Report didn’t appear in my inbox when

    LowSaltTV.com

    was due. I had to fill out a support ticket, and get that fixed.

    BRIAN CHIYAMA commented here

    when my domain name TODAY.TV expired. Enom ( part of Verisign ) did not send me any renewal notices.

    It’s an abuse.

    It’s a fine line when a business waits for a domain to pass expiration to make use of it, and if insiders with access to the zone start blocking renewal notices, or change expiration dates to bogus expiration dates in renewal notices to pass expiration if the registrant believes them correct, or tamper with credit card info in auto renewal status to block renewals. That is what happened with iSound. I was so upset Frank’s name associated with it, I cried. I still cry. This has been my little world to visit blogs and read encouraging articles and comments from the straight shooters: Andrew Alleman, Michael Berkens, Elliot Silver, Castelo brothers, Schwartz, Linton, and others, whose opinion or agendas I might not always agree with, but they seem honest, straight shooters, of which I viewed Schilling as one.

    @ Frank Schilling, you cannot be oblivious that your partners, subsidiary employees, or contractor firms – whatever their status, aren’t using strong arm tactics to get a hold of domain names, which cross the line into, “theft.” You CANNOT be oblivious to it!

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