Fairwinds: Time For UDRP Reform To Change Bad Faith Requirement From Registration Date To Renewals

Fairwinds Partners, which also heads up the Collation Against Domain Name Abuse (CADNA) has weighted in on the recent UDRP decision on Big5.com and whether the bad faith for a domain holder should be judged from only at the time the domain was first registered or acquired or each time the domain name was renewed on its blog today.

Domain investor Nat Cohen wrote an excellent analysis of the issue on  domainarts.com, last week and I highly recommend that all domain holders take the time not only to read the post but to understand the issue.

Why?

If you read Fairwinds post today, they are calling for UDRP reform but not to help domain holder, s but rather to make the test of bad faith one that is judged everytime the domain name is renewed.

In the Big5.com case the panel found the domain holder registered the domain is good faith which was years before the trademark was registered, however the domain holder’s renewal of the domain was found to be in bad faith and ordered the transfer of the domain name.

Fairwinds writes:

“”The panel looked at Par. 2 of the UDRP, which states that when domain name owners register or renew a domain they “represent and warrant” that it does not infringe on the legal rights of others, such as a brand owner. Relying on this paragraph, the panel concluded that, even if the domain was originally registered in good faith, “the elements of the Policy can be studied at the time of the registration or at the time of the renewal….”

“This satisfies the long-held desire of brand owners to use the UDRP to enforce their trademarks in situations where use of a domain has turned from good to bad. But it raises the question of what the drafters of the UDRP intended by also requiring proof that a domain “has been registered and is being used in bad faith.”

“If the Big5.com panel’s conclusions are applied in other cases, could its interpretation lead to odd situations where a domain can flip back-and-forth between good and bad faith depending on how it is being used at the time of its most recent renewal?”

Rather than letting Panelists settle these thorny issues, these inconsistencies should be a matter for those seeking to amend the language of the UDRP itself after a full and open debate (after all, the thing is almost 15 years old and could use some renovation!). Perhaps it’s time to change “and” to “or” as it is used in the dispute policies of certain other country-code domains.

CADNA Calls On Congress To Increase Cybersquatting Penalties Under The ACPA & Include Registrars/Registries

The Coalition Against Domain Name Abuse (CADNA) posted a story on its site, written by Warren Communications News, Inc.,  which quotes Josh Bourne Director of CADNA:

“The problem of cybersquatting is going to “explode by at least 2,500 percent when new gTLDs go live”

“CADNA will start a letter-writing campaign and continue to seek a sponsor for a revision to 1999′s Anticybersquatting Consumer Protection Act (ACPA).”

“CADNA’s proposed revamp would establish stronger deterrence for all violators, including establishing liability against an affiliate, representative or other entity acting in concert with the registrant, including registrars and registries,”

“It would also amend the damages provision in ACPA to award damages of at least $25,000 per domain name targeted by cybersquatters.”

CADNA’s first goal for its “Know Your Net” campaign is to raise awareness about new gTLDs, as well as stories about the real impact of cybersquatting, said CADNA Communications Director Yvette Miller.

The Warren Communications News, story also quotes Rep. Tom Marino, R-Pa as saying:

“Congress has an obligation to take a hard look at ICANN’s new generic top-level domain (gTLD) program”,

Marino is vice chair of the House Judiciary Subcommittee on Courts, Intellectual Property, and the Internet, which has investigated new generic top-level domains in the past (WID May 5/11 p1).

“I’m sure there will be hearings” to ensure Congress understands the expansion of the Internet and to ensure rights holders can protect their trademarks amid that expansion, he said.

“Educating Congress and the public on the issues on new gTLDs is critical, Marino said. “There are still many senior members in the House and Senate that simply rely on their staff concerning anything to do with computers or the Internet,”  “They have a rough time figuring out how to turn the computer on, let alone what the ramifications are.”

“He said members of the House and Senate Judiciary committees had a better understanding than most of the gTLD expansion and the corresponding concerns over trademark rights and over cybersquatting problems. ”

We have to make sure we have all the players at the table, we have all the information, and we do what is going to be most efficient and the most effective,” he said. “We’re determined to do this right,” even if it has to be done slowly, he said.

Interestingly CADNA which is led by Josh Bourne who is also one of the founders of Fairwind Partners a brand protection company and also a representative for many .Brand new gTLD applications, they don’t seem to own the two natural domain names for CADNA’s “Know Your Net” campaign.

Knowyournet.com is currently parked under privacy. The domain appears to have transferred ownership earlier this year but does not seem to be owned by CADNA or Fariwinds.

Knowyour.net was just registered in December but an individual in Roswell Georgia, also does not seemed to be owned by CADNA or Fairwinds.

Also it was very reassuring to hear that those who have, and will be expected to pass laws on domain names issues are:  “have a rough time figuring out how to turn the computer on”.

Maybe its better is the US government remains shut down, will give those in office time to take a computing course.

 

CADNA: Costs Of Defensive New gTLD Registrations To Be Double The Total Cost Of All .Com Registrations

As pointed out by the Phil Corwin of the Internet Commerce Association (ICA) The Coalition Against Domain Name Abuse (CADNA) has launched another offensive at the new gTLD program teaming up with the Council of Better Business Bureaus (BBB) to launch a month-long “‘Know Your Net’ gTLD public awareness campaign”

“Their goal is to enact amendments to the U.S. Anti-Cybersquatting Consumer Protection Act (ACPA) that would expand the law’s coverage beyond domain registrants by creating secondary liability for domain system intermediaries like registries and registrars, increase statutory damages penalties for all targets, and establish a ‘loser pays’ regime that favors deep-pocket corporate litigants. If such a proposal was enacted it would vastly increase the litigation leverage of trademark owners and tilt the playing field against defendants in a manner that would result in a high probability of domain shutdown without any final verdict from a court. In short, it’s a SOPA-like proposal grounded in trademark rather than copyright.”

CADNA has claimed that defensive registration costs to brand holder will cost $2.4 Billion dollars

“If businesses register as aggressively [as they did at the .XXX adult content TLD] in all of the new ‘open’ gTLDs, they will be forced to spend almost $10 billion….“Domain name registrations in the new gTLDs likely will be lower than they where (sic) in .XXX. But even a quarter of the .XXX number of registrations would cost about $2.4 billion

The ICA counters that CADNA is basically claiming that the total cost of defensive domain name registration will be double the total cost of the cost of owning every .com and .net in the registry.

According to the most recent April 2013 VeriSign Domain Name Industry Brief there were 252 million registered domains at the end of 2012, of which about half (121 million) were in .Com or .Net. The average annual registration fee for a .Com or .Net domain is less than $10 – but let’s go high and assume that the average annual fee for all .com and .net’s are $10, they the total amount spent on all .com and .net registrations is around $1.2 Billion.

How can defensive registrations cost brand holders twice as much money as the total registration cost of the new .com and .net registry combined?

Of course there are a lot of other issues with the CADNA numbers.

To use .XXX as an example which had a retail registration fee of $100 and a had a high degree of defensive registrations due to the nature of the subject matter, we at TheDomains.com would expect only .sucks which is only one of 1,400 or so new gTLD strings to generate the amount of defensive registrations that .XXX saw.

We applaud the ICA for keeping an eye on trademark holders claims and the numbers.

We are watching too.

CADNA Wants ACPA Amended To Increase Penalties & Cover PPC Providers & Parking Companies

The Collation Against Domain Abuse (CADNA) issued a paper last night calling for lawmaker to increase the penalties for Cybersquatters and to expand the parties that are held responsible for cybersquatting,  not only the domain holder,  but basically everyone  in the monetization food chain,  which would including parking and PPC companies presumable the upstream providers  including Google by amending the Anticybersquatting Consumer Protection Act (ACPA).

“With much of the nation’s, and therefore the Senate’s, focus on gun control and immigration reform, schedules are tight and visiting hours, short. ”

“But, given the economic, national security, and consumer protection implications of cybersquatting and intellectual property infringement, shrewd politicians are keenly aware of and supportive of strengthening the ACPA.”

“Cybersquatting is a serious issue in the current domain name space, and with the launch of new gTLDs, the opportunity for cybersquatting will only increase. “

“Josh Bourne (President of CADNA) described the first launches as “the chickens coming home to roost.”

“The cost of defensive registrations in total, he continued, will be – conservatively – $2 billion.

“That’s money companies won’t spend on jobs, expansion, or investment. Some companies will simply decide to throw up their hands and decline to defensively register, leaving themselves and consumers exposed to the cyber crooks.

“Bourne’s proposed solution: updating and strengthening the ACPA by:

1.  Increasing penalties against cybersquatting. 

Under current law, cybersquatters face statutory damages of between $1,000 and $100,000 per domain name. The courts have, however, generally awarded limited damages closer to $1,000 per domain name. For cybersquatters that monetize hundreds of thousands, or even millions, of Internet domain names through automated programs, this is not a lot of skin in the game. Cybersquatters know that, for brand owners, the cost of filing and pursuing legal action far exceed the potential damages the mark owner is likely to be awarded, and are therefore unlikely to use the ACPA as a weapon. Amping up the risks associated with cybersquatting by increasing the damages (and implementing a “loser pays” system for the associated legal fees) would make more bad actors opt out of the business.

2. Expanding the parties that are held responsible for cybersquatting.

“Certain parties profit from revenue-sharing arrangements with cybersquatting entities through Internet parking pages, pay-per-click advertising, and other monetization schemes.  ACPA should be expanded liability to cover those in active concert or participation with the registrant. This isn’t about pursuing third parties that act in good faith and support a safe and flourishing Internet – this is about discouraging third parties who purposefully shield bad actors and turn a profit because of it.”

Before anyone gets to excited about changers to the ACPA, I’m going to predict right now that if these changes would to become law and the upstream providers such as Google, Yahoo and Bing became liable for each “cyber-squatted domain name to a statutory amount, domain parking as we know it would come to end overnight, not just for TM infringing terms but for all generic terms as well.

As CANDA heads to Washington to lobby for changes to the ACPA the only one that will be representing domain owners again will be the ICA.

CADNA Reports: 27% of U.S. Congressional Members’ Domain Names Used in Identity Squatting: What A Bunch Of Crap

The Coalition Against Domain Name Abuse (CADNA) published a report today concluding that 27%  of congressional members’ domain names are used in identity squatting.

I don’t know what the difference is between cybersquatting and identity squatting other than trying to label the same conduct in a new fashion which makes it sound worse.

As In, Oh last year we had cybersquatting and now look we have identity squatting.

Anyway first to the report:

“Overall, CADNA found that members of Congress own only 31% of the domain names examined in this report.

“CADNA measured the extent to which identity squatting – the practice by which individuals register domain names, containing the names of famous persons, in bad faith – occurs among the most intuitive .COM and .ORG domain names related to the current 535 members of the U.S. Congress. ”

“These websites are typically used for campaigning and providing access to personal stories, since all members of Congress are allowed to use a .GOV domain as their official government site.”

“The 27 % of domain names that are owned by third parties can damage a politician’s reputation and cause confusion for Internet users,” CADNA President Josh Bourne explained. “Cybersquatting can be hugely detrimental for businesses, resulting in lost sales, fewer impressions, and tainted reputations, and identity squatting can prove similarly costly for members of Congress, whose reputations can suffer because of misinformation and confusion among constituents.”

“We looked at six domain names corresponding to each member of the U.S. House of Representatives and the Senate, a total of 3,210 domains, and analyzed the results.

Key Findings:

  • On average, all members of Congress only own 1.86 of the six domain names examined in this report, and a surprising 95 (22 Senators and 73 Representatives) do not own a single one.
  • Only 15 members of Congress, two senators and 13 representatives, own all six of the domain names that we examined in this report.
  • 49 percent of senators and 57 percent of representatives own their FullName.com domain names; 29 percent of senators and 29 percent of representatives own their FullName.org domain names.
  • 49 percent of senators’ FullName.com domain names and 64 percent of their FullName.org domain names are owned by third parties.
  • 39 percent of representatives’ FullName.com domain names and 32 percent their FullName.org domain names are owned by third parties.
  • 65 percent of senators’ FullNameForSenate.com and 71 percent of their FullNameForSenate.org domains are available.
  • 59 percent of representatives’ FullNameForCongress.com and 77 percent of their FullNameForCongress.org domains are available.
  • 18 percent of senators own their LastNameForSenate.com domains, and only 14 percent own their LastNameForSenate.org domains.
  • 29 percent of representatives own their LastNameForCongress.com domains, and only 15 percent own their LastNameForCongress.org domains.
  • Members of Congress under the age of 40 own an average of 2.2 domains, significantly higher than the overall average of 1.86. Each member of Congress under the age of 40 owns at least one of the domains in the report.
  • There is no average difference in domain ownership between Democrats and Republicans; members of both parties own an average of 1.8 domain names and 1.9 of their domain names are owned by third parties.


Now to my comment

A lot of crap this report is as, Yoda would say

In typical CADNA fashion, the report seemed to puts no responsibility on the Congressman or Senators for not owning the domain names they should have registered or bought years ago.

Also not considered in the report is how many Senators or Congressman have common names.

For Example one of the two Senators from Florida where we live is named Bill Nelson, a pretty common name by all accounts, that pulls up over almost 2.5 million search results on Google.

Now in the current election cycle Senator Bill Nelson has raised over $13 Million dollars and has over $8 Million left in reserve.

So excuse me if I don’t cry a river over the fact that Our Senator doesn’t own his domain BillNelson.com.

I’m sure he could squeeze .000000001 of the funds he collected over the years to buy his matching domain name.

Common as it can get is our Senators name and of course he is not alone.

There is no doubt their is squatting in the political world and a lot of it is done by opponents, parties, PAC’s and Super PAC’s.

So if you have political aspirations you better secure your matching domain before your opponent does.

Back in 2008 we wrote about parents registering their newborn’s domain name upon the birth of their child, that’s 4 years ago.

I doubt many new parents have $8 Million sitting in the bank (just from this election cycle), so our message to CADNA is if you going to issue a “report”, lets do so in a fair fashion next time.