News
Park.io starts drop catching .AI domains
Service known for ccTLDs adds .ai domains.
Park.io has begun offering drop catching services for .AI domain names. .AI is the country code for Anguilla but has become popular for artificial intelligence companies.
Park.io is known for helping domain investors get popular country code domain names that are good for domain hacks or have taken on a meaning of their own, such as .io, .me and .ly.
The addition of .ai domains was made possible by the registry moving to EPP.
As with all domain names at Park.io, catch fees are $99 and include a year registration. If there’s more than one interested party there will be an auction.
One of the first featured .ai domains coming up is eat.ai.
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Categories: Domains
Meet Erik Bergman, who paid $900k for Great.com – DNW Podcast #182
Erik Bergman has great plans for Great.com
Imagine this: you’re bidding in your first domain name auction. You’re traveling and are at a hotel in Iceland with poor internet connectivity. There’s a domain name you really want but the reserve is at least $1 million. Suddenly, your screen shows a $500,000 bid. You bid the next increment at $600,000. Within a matter of seconds it escalates and you place a $900,000 bid. Then, crickets. You have to wait to see if the seller accepts the bid because it’s below the reserve. They do!
That was Erik Bergman’s experience earlier this year when he bought Great.com for $900,000. Today, Erik gives a first hand account of buying the domain name. More importantly, he explains why he bought this great domain name…to do great things.
Also: GoDaddy expired domain change, .App’s early success and more.
Subscribe via iTunes to listen to the Domain Name Wire podcast on your iPhone or iPad, view on Google Play Music, or click play below or download to begin listening. (Listen to previous podcasts here.)
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A simple way to make GoDaddy Closeout auctions more fair
A win-win for GoDaddy and most bidders.
A lot of people are frustrated with the bidding process at GoDaddy when it comes to closeout auctions.
The idea behind closeout auctions is smart. If no one bids at least $12 for a name during the regular GoDaddy expired domain auction, the domain goes to a Dutch auction where the price starts at $11 and decreases by a dollar a day until it hits $5.
Closeouts allow GoDaddy and its expired domain partners to get something for a domain even if it’s not worth the $12 starting bid price.
But how things work in reality is very different from how they work conceptually.
People don’t want to get into bidding wars in auctions. If no one else has bid on an expired domain as the clock winds down, they (or their computers) stand ready to ping GoDaddy the minute the domain goes into closeouts so they can get it for $11 rather than what is likely hundreds if they place a bid during the regular auction.
Think about what’s happening here. An auction will expire with no bids at even $12, but there are sometimes 5 or more ready buyers who would be willing to spend $100+ on the domain. The point of auctions is to sell things for the market price, but that’s no longer happening in these auctions.
That’s bad for people that don’t have automated means to snipe the closeouts. It’s also bad for GoDaddy and its partners because they are leaving money on the table.
The solution is fairly simple: raise the starting bid for closeout auctions.
Instead of setting a buy now price below $12, set it much higher. I’m not sure what the right number is. Maybe it starts at $75, drops to $50, then $25, then $10 and drops a few bucks after that. I know that I’d be willing to pay $75 or more for many domains that close with no bids.
Raising the price will have two effects.
First, people will be more willing to bid in the regular auctions rather than wait for closeouts. The potential savings of waiting won’t be as great.
Second, GoDaddy and its partners will make more money.
The only people who will lose out are those that have perfected their systems for sniping closeouts.
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GoDaddy is closing an expired domain “loophole”
Last second backorders will no longer circumvent closeout process.
Auctions for expired domain names at GoDaddy can get competitive. With no backorders required, domain names can go from $0 to hundreds of dollars even when no bids are placed until the last few minutes.
This is complicated by the closeout process. If you bid on a domain in the live auction it will likely be bid up to over $100. If you can snag it when it goes into closeouts then it’s only $12 plus the renewal fee.
Unfortunately, there are lots of people with API access and computing power who treat the closeout like a drop. They start sending calls to buy the domain as soon as the regular auction closes.
But there has been a loophole that has helped people like me. If you place a backorder the second an auction closes, you can win the domain for the cost of a backorder before it gets placed in closeouts.
For the past year or so, I will closely watch auctions and be ready to bid if someone jumps in at the last minute. If the auction ends with no bids, I’ll place a backorder at the second the auction ends.
Historically, this has helped me scoop up a lot of domain names. About 95% of the domains that make it through the auction with no bids. But it’s gotten tougher this year.
Starting in January I noticed a lot of people placing backorders with a few minutes left in the auction. I’m not sure why they were doing this because it triggers a $10 bid and then everyone can pile in.
Then a few weeks ago I noticed that many of the domains I was backordering at the last second were getting scooped up by other people. My success rate went from 95% to about 25%. My guess is that they automated the process for backordering to get the timing just right.
While the backorder loophole was nice while it lasted, GoDaddy is about to eliminate it.
Joe Styler explained this change in a post on NamePros this week.
So now the options are either bid regularly and fight with everyone else, or program a system to snipe domains the minute they hit closeouts.
Well, it was fun while it lasted. At least now I won’t log into GoDaddy to place a backorder, only to be frustrated when someone places a last minute bid.
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.App domains are off to a strong start with brands
Over 2,000 .app domains have been registered during sunrise.
If sunrise is any indication, Google’s .app domain name is going to shoot out of the gates.
Sunrise began March 29 and there are already 2,225 names in the zone file. During sunrise, only trademark holders that have registered their marks with the Trademark Clearinghouse can register domain names.
I suspect that companies realize this is one of the better top level domain names and are also concerned about phishing and fake apps that could be distributed at these domains.
Apple has been particularly active, registering 75 .app domain names by my count. Microsoft has 41 and Bank of America has 27 .app domains.
Following Sunrise, a dutch auction early access period will begin on May 1. General availability starts May 8.
While there is an opportunity for domain investors, many of the names have premium prices. About 2% of the hundreds of names I searched for did not have a premium.
Also, domain names must have an SSL certificate to resolve.
Google paid $25 million for the rights to run .app.
Full details about the launch are here.
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What domain names The Hill and others bought this week
A cryptocurrency exchange, nightclub owner and the political site The Hill bought domain names.
I learn about a lot of interesting industries and topics when I review Sedo’s end user sales. For example, this week I learned about pentanomics, a new theory of government. I also learned about safety shoes.
Here are some of the end user domain name purchases completed at Sedo over the past week:
Allbit.com €7,900 – Allbit is a decentralized cryptocurrency exchange.
NightPay.com $7,500 – Rekom Group operates 77 bars, pubs and nightclubs across Denmark, Norway and Finland.
EthereumOdds.com $6,500 – The domain has Whois privacy and is forwarding to a sports betting site that lets users bet with bitcoin.
Usergate.com $5,000 – Entensys Corporation in Russia owns Usergate.ru.
HillTV.com $5,000 – The Hill, a political media company that runs TheHill.com.
SafetyShoes.com $5,000 – HKSDK is a company in Demark that sells “safety shoes” and work shoes.
Penta.org $5,000 – The Pentanomic Institute, which uses the domain Pentanomics.org. They are promoting a new theory of government called pentanomics.
ConcreteDynamics.com $3,000 – Summit Concrete is a concrete company in Kansas City.
MyBookkeeping.com $3,000 – Remote Books Online, a Quickbooks advisor and small business bookkeeping company.
TFPE.com €2,985 – The domain stands for The Funding Partners. It’s an agriculture blockchain company.
Diennea.net €2,500 – Diennea S.r.l. is a marketing company that uses Diennea.com for its website.
RAS.co.uk £2,250 – Retails & Asset Solutions in the UK bought its acronym.
You can see more lists like this here.
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A reminder for UDRP filers: Mess up? You can always apologize
If a complainant representative isn’t aware of all of the facts, it can always say mea culpa.
Cricket South Africa, an organization behind a professional cricket competition in South Africa in the T20 format, has been found to have engaged in reverse domain name hijacking.
It was a complex case in which the complainant’s attorney likely didn’t have all of the facts. The respondent called out the complainant with the real facts. When it did, rather than apologize, the complainant doubled down.
For that, it was found guilty of reverse domain name hijacking.
The timeline is long and it’s worth reviewing the entire decision. But I’ll summarize here:
1. The Complainant announced plans for its cricket competition.
2. Someone registered t20globalleague.com in response to the announcement.
3. Ortus Sport & Entertainment, acting on behalf of the Complainant, contracts with a third party service (the Respondent) to acquire the domain from the registrant.
4. The Respondent acquired the domain name and sent an invoice to Ortus to forward to the Complainant.
5. The league was delayed and the Respondent didn’t get paid. It never got paid and held on to the domain.
6. The Complainant filed a UDRP against the Respondent to get the domain name.
It’s highly likely that the attorney representing Cricket South Africa was not aware of this series of events. I think this is often the case in UDRPs, even ones that aren’t as complex as this one. In some cases, a company tries to acquire a domain name and then someone else at the company files a UDRP 5 years later.
This looks bad and is often grounds for reverse domain name hijacking. But complainants have an option at this point: presented with evidence by the respondent of its mistake, the complainant can always apologize and not pursue the case any further. Yet they end up either not responding to that information or doubling down.
In this case, the complainant doubled down. It complained of late submissions by the respondent rather than the obvious disparities in its case.
Panelist Tony Willoughby explained:
…when the Respondent was finally able to produce the Complainant’s email to Ortus Sport of September 21, 2017, demonstrating beyond doubt that at that date (nearly four months prior to the filing of the Complaint) the Complainant was indeed aware of that correspondence [ed: showing that Ortus contracted with the Respondent on the Complainant’s orders], the Complainant’s response (in the form of the Complainant’s response to Procedural Order No. 4) was to seek to keep it from the Panel, arguing on a formal technicality that the Panel should not look at it.
At no stage in the course of this proceeding has the Complainant offered any indication of remorse for its lamentable conduct.
Willoughby also explained why it’s not OK for a complainant’s representative to just claim ignorance to what really happened:
The Respondent sought a finding of RDNH in the Response based upon the Complainant’s failure to disclose in the Complaint the September/October correspondence set out in Section 4 above. The Complaint failed to mention that correspondence because the person responsible for drafting the Complaint was unaware of it. Is that good reason for declining to make a finding of RDNH? The Panel does not believe so. Abusive complainants could simply tailor their instructions to their representatives, omitting inconvenient facts [emphasis added]. The Panel believes that it is entitled to assume that before signing the certificate at the end of the Complaint and filing it with the Center, the Complainant’s representative sent the Complaint in draft to the Complainant and obtained the Complainant’s approval to its content, thereby assuming responsibility for its accuracy.
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WIPO panel explains a common expired domain occurrence
A company wanted a domain but failed it capture it when it expired. Then it filed a UDRP against the new domain owner.
A World Intellectual Property Organization panel has provided an unusually descriptive explanation and interpretation of a very common occurrence.
Rolyn Companies Inc. filed a UDRP against the domain name Rolyn.com just weeks after the domain name was sold in an expired domain name auction. The domain was previously used by another company named Rolyn. That another company previously used the domain for its business suggests that the complainant is unlikely to have exclusive rights in that term.
Take a look at how the panel summarized this while inferring that if the complainant wanted the domain, it should have figured out how to buy it upon expiration:
What happened, in the Panel’s overview, is that the Complainant, which owned 8 domain names incorporating the trademark ROLYN, sufficiently desired the disputed domain name in the “.com” gTLD that it offered initially USD 3,000 and eventually USD 10,000 for it. In the circumstances, the Complainant may reasonably be presumed to have been aware that another owner had used the disputed domain name for a long time, in fact for 22 years. It is not for the Panel to comment on how the Complainant runs its business or on the various steps that might have been taken through an agency or by itself to become notified of the impending availability of a desired domain name, e.g., by placing it on permanent “backorder” with domain name auctioneers. Only the Complainant knows why the disputed domain name apparently slipped through its fingers when it came up for recycling, particularly since the Complainant was trying to buy it from the Respondent within only 6 weeks after the auction. It had been bought openly by the highest bidder, by or on behalf of the Respondent. To a degree, the release of an expired domain name carries at least some implication that it is no longer wanted by its presumably unchallenged previous owner and invites the inference by a potential buyer that no other party felt any special entitlement to it. Had the Respondent done a search it may have found, as shown above, the existence of potential buyers of which the Complainant was merely one, and there is the further possibility that a new entity might build its name around an available domain name, rather than vice versa.
I wonder if the part “To a degree, the release of an expired domain name carries at least some implication that it is no longer wanted by its presumably unchallenged previous owner” will come in handy for another common type of case: a company forgets to renew a domain and then files a UDRP against its new owner.
This particular panel went the extra mile an on examining how common the term Rolyn is and how exclusive the complainant’s rights in the term might be.
Kudos to panelists Dr. Clive N.A. Trotman, The Hon Neil Brown Q.C. and Jonathan Agmon.
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U.S. government asks ICANN to investigate GoDaddy’s Whois policy
U.S. gov weighs in on GoDaddy’s Whois policy.
The U.S. government has sent a letter to ICANN asking it to review GoDaddy’s (NYSE: GDDY) activities around blocking access to Whois records.
David Redl, who heads the National Telecommunications and Information Administration, sent the letter to ICANN’s board today asking it to look into the matter.
At issue is GoDaddy’s decision to block access to Whois records through Port 43. A lot of security and brand users use Port 43 to track bad guys, but a lot of spammers use it to harvest Whois records and barrage domain registrants with unwanted emails, texts and phone calls.
Redl writes:
First, the actions taken by GoDaddy last month to throttle Port 43 access and to mask the infonnation in certain WHOIS fields are of grave concern for NTIA given the U.S. Government’s interest in maintaining a WHOIS service that is quickly accessible for legitimate purposes. NTIA is concerned that GoDaddy’s approach of throttling access and masking infonnation will be replicated by other registrars and registries, compounding the problems these actions create.
While NTIA is sympathetic to the need to protect customers from bad actors and malicious activity, we think that the actions taken by Go Daddy are inconsistent with the
multistakeholder approach ofICANN and potentially conflict with ICANN’s Registrar Accreditation Agreement. 1 NTIA encourages you to investigate the actions of Go Daddy as a contractual compliance matter, but also consider an ICANN cross-community discussion on the issue. Such conversation could result in a solution that addresses GoDaddy concerns, while still meeting the needs of the legitimate users of Port 43.
The timing of the letter is peculiar. Although ICANN is under pressure over GoDaddy’s blocking, it’s kind of pointless in light of the possibility that all of Whois will go dark next month as the EU’s General Data Protection Regulation goes into effect. I find it odd that the letter avoids the elephant in the room.
The letter also asks ICANN to consider if companies other than the registrar should be able to make DNS changes at the registry:
With the growing sophistication of domain names registrants and third party content delivery networks seeking to offer enhanced security features, including deploying DNSSEC, NTIA sees merit in examining the roles other parties could play. One example is the feasibility and impact of allowing non-ICANN accredited registrars to offer services that manage specific DNS resource records, such as MX or NS records, directly with a registry.
I wonder who made that ask?
Update: James Bladel, GoDaddy VP of Policy, released this statement to DNW:
ICANN’s Registrar Accreditation Agreement (RAA) requires GoDaddy to collect contact information for every domain name, and to publish this in a WHOIS database that is public and can be accessed anonymously. The RAA (Sec. 3.3.5) also requires us to protect registrant data from harvesting for the purposes of spam and abuse. Our goal is to reconcile this conflict between our obligation to operate a Port43 WHOIS service, and our duty to protect our customer data from harvesting by bad actors.
We have irrefutable evidence that abuse of WHOIS data is occurring, even by “whitelisted” Port43 users, and we will do everything in our power to protect our customers. We have therefore taken steps to guard against bulk harvesting on Port43, while still making the required data available via protected web-based queries.
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Why Mike Kugler spent $500k on Vacation.Rentals – DNW Podcast #181
Mike Kugler’s company VacaRent paid a record amount for a new TLD. Find out why.
Mike Kugler is CEO of VacaRent, a company that just paid a record price for a domain under a new top level domain: $500,300 for vacation.rentals. On today’s show, Kugler gives the interesting story about how he negotiated for the domain and why he was willing to pay so much. There are lessons in his story for both how domains are sold to end users and the power of syndicated domain listings. Also: Emailed offers, FURY, and ICANN.
Subscribe via iTunes to listen to the Domain Name Wire podcast on your iPhone or iPad, view on Google Play Music, or click play below or download to begin listening. (Listen to previous podcasts here.)
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Napoleon.com hit with UDRP. Owners fight back with lawsuit
Domain owners fight back in court before UDRP is decided.
Last Month Wolf Steel, which markets fireplaces under the brand name Napoleon, filed a UDRP cybersquatting dispute against the domain name napoleon.com. The owners of the domain name are fighting back with a lawsuit.
Emmet Stephenson, Tony Stephenson and Domain.com, Inc. (not affiliated with the Endurance International Group domain name registrar) filed the suit (pdf) in Washington State on April 12.
The lawsuit states that the Stephensons registered the domain name in 1995. Since that time they have received multiple offers on the domain name, including from Wolf Steel, but have declined the offers.
Emmet Stephenson grew up in Louisiana and has long been infatuated with Napoleon Bonaparte, the lawsuit states. The Stephensons own Napoleonic artifacts such as Napoleon Bonaparte’s death mask, a plan of the Battle for Austerlitz, one of four unique clocks commissioned by Napoleon Bonaparte for his children, and various documents signed by, written by, and written to Napoleon Bonaparte.
The domain name has been parked and showed ads for fireplaces and barbeque grills, which is likely the basis for Wolf Steel’s UDRP.
Nevertheless, it seems unlikely that the Stephensons registered the domain name in bad faith to target the fireplace maker.
The Stephensons company owns a number of great domain names including Communications.com, Wireless.com, Annuities.com, Bookie.com, TX.com, Technology.com, Hut.com, and Police.com.
Attorney Derek Newman is representing the Stephensons.
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“Breach” is the new necessary defensive domain registration
Hertz registers data breach domain names. More companies should do this.
These days it seems like the question isn’t if a company will suffer a data breach or hack, it’s when.
When a company suffers a breach it usually rushes to register domain names related to it. That’s what happened with the massive Equifax data breach.
Why not register these domains in advance to avoid a last-minute rush when the company is in disarray?
I was thinking about this when I saw three domain name registrations over the weekend:
HertzBreach.com
HertzDataBreach.com
HertzPrivacy.com
I’m not sure if these domains were registered in response to a specific incident; Hertz France has previously suffered from a data breach.
If not, I still think this is a smart move. Be prepared for the inevitable.
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I just fixed Whois and GDPR
It’s really quite simple.
So ICANN has received guidance from the Article 29 Working Party in Europe about ICANN’s proposed Whois model to comply with the General Data Protection Regulation (GDPR).
I’d summarize it as: nice try, but we are your overlords now. (Only in needlessly complex language.)
Regulation can be good, but regulation run amok can be bad.
I have a solution to solve GDPR as it related to Whois. It’s insanely simple.
When you register a domain name, there’s a box that asks “Are you a resident or citizen of the EU, or is your company based in the EU.”
If you check it, then you get free Whois privacy/proxy for every part of your Whois except for the Organization name.
What about all of the existing domains? The registrar should send an annual notice to all registrants. If the person qualifies, they can get this same privacy or proxy setting.
But what about people who miss this notice? What about people who don’t understand? What about people who move to the EU?
You know what? At some point, people have to take responsibility for themselves. The government can’t protect everything from happening.
I’m sure no one can poke holes in my ingenious plan.
OK, now let’s get back to solving real business problems and growing our businesses.
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CIRA wants patent for registry “tag” system
Canada’s ccTLD administrator files patent application related to aspects of its Fury registry platform.
CIRA has applied for a patent related to its Fury registry management platform.
Canadian Internet Registration Authority, the group that manages Canada’s .CA domain name and has started offering registry services to other TLDs, has filed a patent application covering aspects of its Fury registry platform.
The organization filed a patent application (pdf) with the U.S. Patent and Trademark Office for “Registry Domain Name Management”.
The idea is to create a centralized way for registries to add “tags” to domain names. These tags may affect how domain transactions (e.g., registrations) can be handled.
For example, a domain name might have a premium price tag. When a registrar uses EPP to try to register the domain, the tag info will be pulled from a database to notify the registrar of the price.
These tags could also be used to offer discounted pricing based on the registrar. They could even require certain domains to be registered as a bundle, such as close IDN variants.
Believe it or not, much of the data on premium domains is hard-coded by registries and sent to registrars for implementation. At least one registry sent a .pdf file to registrars that included their premium domain list and prices. (You can learn more about that in this podcast.)
With CIRA’s system, someone can easily apply characteristics to domain names. Instead of updating an Excel sheet with premium domain pricing, they can just change it in the system and then the registrars will receive the update information when they make an EPP call.
A registry could also change domain prices based on changes in demand. One thing that comes to mind is a registry adjusting prices on cryptocurrency-related terms as they became popular. It’s difficult to change prices on the fly with hard-coded systems or premiums handled at the registrar level.
Here’s a summary of some of the tag types outlined in the patent application:
Generally, Group tags are used to associate a number of domain names for organization purposes. Premium tags are used to override default prices by applying a price increase. Discount tags are used to override default prices by applying discounts. Block tags are used to restrict actions from being carried out with specific domain names. When a Registry assigns a domain name to a tag they can also fill out associated tagging information and characteristics that may include but not be limited to: a name of the tag, a pricing model of the tag, a registry event affecting the tag, registrars affected by the tag, domain names that will be affected by the tag, and a length of time that the tag applies. In assigning the domain names to a tag, specific information is required, for example a Group Tag require at least a name; a Block Tag requires a Name, an Event, a Registrar, a Time Period; and a Discount and Premium requires a Name, an Event, a Registrar, a Time Period and the Discount/Premium.
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More end user domain name sales at Sedo: Tires, networking, blockchain and more
A business networking platform, blockchain company and tire company bought domain names.
Coffee is for closers, and Sedo closed a nice sale of Closers.com this week at $50,000.
The seller was David Wieland, who also recently put Austin.com on the block. It looks like he acquired Closers.com in late 2012 for $32,000. That’s an annualized return of about 8.5% before considering commissions.
Unfortunately, we don’t know who the buyer is yet.
The top sale I can connect to an end user is ExpertMatch.com. I tried to buy this domain a couple of years ago but the owner told me it wasn’t for sale.
Here’s a list of some of the end user sales at Sedo over the past week. You can see more lists like this here.
ExpertMatch.com $19,000 – Business networking platform Xing.
Colors.org $12,500 – Color is a blockchain platform.
Network.co.uk £9,800 – Network Computing Limited in the UK uses the domain name network-computing.co.uk.
OpenDining.com $5,752 – OpenNetworks runs an online ordering system for restaurants at OpenDining.net.
Falken.com €4,500 – Falken Tyre Europe GmbH is a European tire company. (Or Tyre, if you must.)
Cashair.com €4,000 – The owner of cashair.solutions. That domain name doesn’t host a website yet.
Meero.com $4,000 – Photography service Meero upgraded from Meero.io to Meero.com. It is forwarding the .io domain name to the new .com.
Salam.io $3,499 – Salam is a chat app.
DezignFormat.com $3,000 – Dezign Format Pte Ltd in Singapore uses the domain name DezignFormat.com.sg.
FirstCompanion.com $2,399 – First Companion is a pet food brand. The .com now forwards to the .net.
HST.co.uk £2,250 – High Spec Tech LTD is a phone repair company.
Hedone.com €2,000 – Hedone Cafe is a coffee company that uses the domain name HedoneCafe.ro.
CriticalMix.fr $2,000 – CriticalMix is a data analytics company.
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What are the standards for common law trademarks in UDRP cases?
An NAF panelist is very generous is accepting common law trademark rights.
A National Arbitration Forum panelist recently awarded the domain name YouAreOK.com to T & P Holding Company, LLC. This company owns several hair salons and boutiques in Nashville under the name Local Honey. Its website is LHNashville.com.
The domain name owner, Ancient Holdings, LLC, has lost a handful of UDRP cases over the years. It also didn’t respond to the dispute. These factors certainly weighed against the registrant.
But I’m concerned that this case got past the first prong of UDRP: that the domain name is identical or confusingly similar to a mark in which the complainant has rights.
A complainant can show that it has registered rights in a mark or that it has common law rights in the mark. The UDRP itself does not spell out how common law rights can be proven, but the WIPO Jurisprudential Overview 3.0 has a good overview of standard practice:
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning…
The YouAreOK.com case was filed at National Arbitration Forum, not WIPO. But panelists often hear cases for both of these forums and it’s important to have consistency across them.
T & P Holding Company filed a trademark with the US Patent and Trademark Office in March of this year, after filing the UDRP. The trademark claims first use in 2010. For the UDRP, T & P relied on common law trademark rights.
Panelist John Upchurch found T & P’s evidence to be compelling:
Complainant provides screenshots of its website and social media posts indicating it uses the mark. See Compl. Ex. 2. Complainant does not provide other evidence to support its claim of common law rights. The Panel finds Complainant’s contentions to be sufficient, and concludes that Complainant has established common law rights per Policy 4(a)(i) by showing the YOU ARE OK mark has taken on a secondary meaning in association with Complainant’s business.
I don’t know what exhibits T & P provided to the panel, but it’s probably very similar to the specimens submitted to the USPTO, which you can see here (2MB PDF).
These images use the term You Are OK in very recent social media posts and a screen capture from LHNashville.com. You’ll note that none of the uses in the specimens use a TM symbol.
I did a Google site search on LHNashville.com today for “Your are OK”. Two items came up.
One is the site’s blog, which has a title tag that says “You are OK.” The blog contains profiles of people with “Name is OK” as the title for each one. The other is for the home page that was submitted to the USPTO. I can’t find the text that was submitted to the USPTO on Local Honey’s home page when I visit it, though.
A company doesn’t have to use a trademark on its website to have a trademark. Still, it would need to provide good evidence to the panel of its use of the trademark and when it is conceivable that the holder gained common law rights to the mark.
That brings up the issue of dates when it comes to registration in bad faith. T & P claims it began using the mark in 2010.
I performed the site search for dates prior to 2015. Google returned zero results.
In fact, the domain name LHNashville.com wasn’t registered until 2014. T & P Holding company wasn’t organized in Tennessee until 2013. (Oddly, its trademark application says it’s organized in the US Virgin Islands.) However, I found evidence that the company might have been operating its salons in 2010 based on an old cancellation policy document.
The domain name itself was registered in 2009. The current registrant didn’t acquire it until later, but the case doesn’t address the fact that the claimed rights post-date the registration of the domain. So the case also should have addressed this timeline in the bad faith portion.
I’ve seen many stronger common law trademark claims denied in UDRPs for not providing enough evidence, such as proof of marketing expenditures related to the mark.
Even if common law rights were proven, it seems unlikely that the domain registrant could have been aware of them when it registered the domain.
Consistency is important in UDRP. I do not think this case was consistent with general standards for showing common law rights.
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Vacation.rentals domain name sells for record $500,300
Sale of vacation.rentals eclipses home.loans sale.
A vacation rental company has paid $500,300 to acquire the domain name vacation.rentals from registry Donuts in an all-cash transaction. This is the highest publicly reported sale of a second level domain under a new top level domain name to date.
Vacarent, LLC is a vacation rental company that hopes to capitalize on growing frustrations with Airbnb and HomeAway. The company won’t charge commissions and instead will just charge annual subscription fees to homeowners. This was the model HomeAway followed for many years before switching to a transaction-based model.
HomeAway acquired the established business VacationRentals.com in 2007 for $35 million. The CEO of the company in 2007, Brian Sharples, indicated that it was mostly to keep it out of its competitor’s hands and a big part of that was the domain name.
Search for vacation rentals on Google today and VacationRentals.com comes up #1. But Vacarent says it hopes the vacation.rentals domain name will help it slowly chip away at the organic listings.
Creating a marketplace is difficult, so search engine rankings will need to be a key part of vacation.rental’s strategy to attract homeowners and renters.
The deal was brokered by Uniregistry broker Brooke Hernandez late last year.
You might notice that the sales price is $300 more than the record-setting sale of home.loans last year. That’s likely not a coincidence.
There are just over 12,000 .rentals domains active in zone files according to nTLDstats.
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Fortnite game trends in domain names
Lots of domain names related to the video game are registered in .com.
Verisign has published its list of the top trending keywords in .com registrations for last month.
Coming in at number 3 is Fortnite. Most of the domain names are related to Epic Games’ Fortnite video game.
Here are the top ten trending words in new .com registrations last month:
1. President
2. Passion
3. Fortnite
4. Vietnam
5. Fairy
6. Rates
7. Jumbo
8. Residential
9. Rights
10. Grit
These are not the most common words in .com registrations. Those are terms like “home” and “online”. Instead, these represent the terms that had the biggest percentage increase in registrations from February to March.
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Categories: Domains
My thoughts on ICANN’s budget crisis
ICANN should be a boring organization but it hired people who want to make a difference.
I visited ICANN’s offices in California in 2008. That was well before ICANN’s finances ballooned. There were fewer than 100 employees back then.
I’d characterize ICANN in 2008 as boring. It was a small organization that was just making sure the domain name system worked.
Then something happened. The company started hiring the wrong type of people. It started hiring people that don’t want to do boring work. People who want to make a name for themselves. It hired people who want to be at the helm of a growing organization that takes on an important role in the world.
Perhaps it started with Rod Beckstrom, a CEO obsessed with his personal brand. Then Fadi Chahade, another person who wouldn’t take a role that wasn’t exciting and important.
Hiring people that want to make a difference is usually a good thing, but not for an organization that should be boring.
The size of ICANN has tripled between my visit to ICANN and now. It grew its international presence. It lobbied more. It got involved in an ever-growing list of activities. It recruited lots of people that are used to $300k+ a year comp plans and assistants.
It was no longer a boring organization. And that has become a problem.
Looked at in the best possible light, you can argue that the group’s growing list of activities over the past decade has been at the behest of the community. ICANN has trouble saying no and has taken on an ever-increasing workload.
And perhaps its international expansion was necessary to keep the web from splintering. It needed to make the world believe that ICANN was not a puppet of the United States so that other countries wouldn’t wrestle control away from ICANN.
At first, new top level domain names masked the organization’s growth. The “cost-neutral” program brought in a lot of cash that allowed it to hire more people.
Then the bubble burst as new TLDs came out with a whimper. The companies that paid millions to ICANN for new domains began to struggle and their annual payments to ICANN were based on minimums rather than high transaction rates.
While these new TLD companies cut costs in response, ICANN continued to grow. You can only do that for so long.
So now we’re at a point where the money is running out–at least on paper when you ignore the huge cashpile of new TLD auction proceeds that is reserved for allocation by the community.
I don’t envy the situation new CEO Göran Marby found himself in when he took over in 2016. He came into an organization that was spending beyond its means, all the while missing the urgency of one of the biggest issues to face ICANN’s contracted parties in the past decade: the EU’s General Data Protection Regulation (GDPR).
Even though the problems originated before his arrival, it was disheartening to read his take on how costs can be cut. He said 80-85 percent of the FY19 budget is already “committed to certain projects that are in our Bylaws, our contracts, our operations, and other fixed costs.”
I might accept this sort of a response from a boring organization. An organization that got blindsided by a forecast that didn’t work out.
But I won’t accept this response from an interesting and important organization that has grown uncontrollably for the past decade. If you’re going to act like an important business and compete with exciting companies for talent, then you need to be willing to cut costs like any business does when things head south.
For example, ICANN has one of the most generous retirement plans I’ve ever seen. It contributes 5% of each employee’s salary to their 401(k) even if the employee doesn’t contribute a cent. They even match up to 10%. (When reviewing ICANN’s tax returns, I was surprised to see that not all highly-paid employees took the organization up on this match. It’s free money!)
This perk is apparently based on “competitive and regional practices”.
Perhaps I’ve been in the entrepreneurial world for too long, but can someone point me to other companies with retirement benefits like this? I think it’s time to go get a job there.
Marby needs to be prepared to make hard decisions. He gets paid close to $850,000 (if he hits his bonus) to make these decisions.
Consider suspending bonus programs or tie a significant portion of it to finding ways to be more efficient. Review facilities costs. Cut staff.
No one is indispensable. When it comes time to cut people, a lot of arguments are made that employee X or employee Y is too important to let go. They’re working on a project that’s too important or their domain knowledge is too important.
If an employee’s domain knowledge (here, figuratively and literally) is too important and will leave with them if they leave ICANN, then I’d argue that this employee hasn’t done a good job. A good employee will make sure to document his or her knowledge and bring others around them up to speed.
Oftentimes these employees that are “too important to be let go” end up leaving, and the organization moves along without missing them a few months later.
These aren’t fun things to do. And it’s not the fault of the individual employees that will be hurt by this. But it’s important if ICANN is to retain its role in the domain name system going forward.
And while the community should certainly be consulted, it’s up to the highly-paid management to make the tough calls.
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This is not what UDRP was created for
Do you call this cybersquatting?
A National Arbitration Forum panelist has found in favor of clothing company Guess in a dispute over the domain names guessandco.info, guessandco.org, guessandcoshareholder.info, theguessbreadcompany.com, theguessconstructioncompany.com, and theguessprivatemerchantcompany.com
Guess was recently found guilty of reverse domain name hijacking in a case filed with National Arbitration Forum, and I’d argue that the current case is also an abuse of the policy.
But panelist Ho Hyun Nahm found in favor of the clothing company instead.
The domain name owner didn’t respond, but the complainant handed over the evidence that should have been used to deny the case.
A man named Jerry Guess registered the domain names. Guess has a long history of having grand visions that don’t come to fruition. The FBI busted him and he served time for some of his activities.
While his businesses may have had more fluff than substance, he registered the domain names at issue to support his business operations and his company was named after him.
The clothing company Guess submitted an article to the panel about Jerry Guess’ former activities, which the panel used to ascertain “bad faith”:
…the Panel agrees that Respondent has previously engaged in bad faith behavior, and holds that Respondent registered and used the disputed domain names in bad faith.
So if someone engaged in bad behavior in business they should be assumed to have also registered domain names in bad faith? Domain names that include the person’s last name? Domain names that match proposed business ventures? Ventures that have nothing to do with clothing?
This isn’t cybersquatting. It’s not what UDRP was created for. I believe this was a poor decision.
I reached out to Jerry Guess and he said he is considering his options.
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