question ICA: Big Players propose to change domain owners rights?

[offthehandle]

https://domaininvesting.com/phil-corwin-leaves-ica/

Eliot quoted on reprint from his blog this statement.

We see the next 18-24 months as critical for the domain industry. In the policy arena there are ongoing initiatives that have the potential to dramatically impact our ability to protect our assets and conduct business. There are large, well-funded and determined players working to change domain intellectual property law in ways that could dramatically impact our community.

Anybody have an idea who is behind the changes in IP Law?.

I did a search on the ICA website and found no results.
https://www.internetcommerce.org/

 

[Nat Cohen]

It is no secret that big brands and the IP lawyers that represent them are frustrated that the UDRP currently makes it difficult to take control of a domain that is being used in bad faith if the domain was registered before the trademark rights arose.

They want to turn the key test in the UDRP into simply "used in bad faith to take advantage of a trademark".

While that may sound reasonable, in practice it wouldn't work out so well for domain investors. UDRP panels have found that parking a domain name (whether or not with infringing links) is evidence of bad faith. Also offering a domain name for sale is evidence of bad faith. Also using privacy protection is evidence of bad faith. Also failing to develop a domain name is evidence of bad faith. Also using a domain name for an otherwise legitimate business that is similar to an existing trademark is evidence of bad faith. Also having your registrar set up a coming soon page without your knowledge with advertising links is evidence of bad faith.

In other words, the changes being pushed by many of the most powerful companies and their teams of well-paid IP attorneys would delegitimize the domain investing industry and put at risk most of our domains.

The Working Group that will review the UDRP and propose changes is already underway, with UDRP revision on the table next year.

Paul McGrady, the incoming head of the International Trademark Lawyers Association (INTA)'s Internet Committee has publicly announced his support for turning the UDRP into a "use only" standard-

"While there could be some positive reforms to the UDRP – such as seeking a change that would allow a trademark owner to seek relief in cases where a domain name was registered before the trademark rights came into existence but was used in bad faith after the trademark rights came into existence – there are also reforms which would not be positive for brand owners."
https://www.lexology.com/library/detail.aspx?g=e52b6020-7b94-4c84-af73-c2989864a9eb

The domain industry has its work cut out for it to explain our business practices, and to prevent well-intentioned but misguided polices that would enable companies to plunder our portfolios taking whatever valuable domains they want that are similar to trademarks that they starting using long after we acquired the domains.

The ICA (http://www.ica.domains) is the main voice of the domain community on these matters. If you want to continue to have a healthy domain industry, I'd encourage you to join with the dozens of your friends and colleagues from the domain industry in support of the ICA and become part of our community.

 

[bmugford]

Hopefully the registrars and registries will be the ones to resist this. They risk losing their milking machines.

GoDaddy is one of the largest portfolio owners now after all their recent acquisitions. It would be silly if they were not willing to fight for registrant's rights in a major way. It is in their interest both registration and re-sale wise.

Brad

 

[Kuffy]

Any chance of turning it round, and claiming that branding a name where a domain is already registered is a bad faith trademark registration?

 

[Kuffy]

Hopefully the registrars and registries will be the ones to resist this. They risk losing their milking machines.

 

[GeorgeK]

Folks can join the ICANN RPM PDP at any time, see:

https://community.icann.org/display...ms+(RPMs)+in+all+gTLDs+PDP+Working+Group+Home (click on the FAQ link to see how to join)

As you can see from the current members list:

https://community.icann.org/pages/viewpage.action?pageId=58729950

there are quite a few TM lawyers on it, so having more representation from domain name registrants would be a positive development.

In terms of time commitment, there's one 90 minute phone call each week, and one would also be expected to keep up with the mailing list (maybe another hour or so per week, on average).

 

[karmaco]

All the parking services would be highly against this if to cover “no bad faith” we have to unpark domains and all the selling platforms will crumble if we have to stop selling on a platform and wait for whois inquiries only.

Domainers won’t be willing to pay top dollar for aged domains if the age is no protection. Hand regs would dwindle along with the rest. Basically the whole industry would be in chaos and damaged.

It seems implausible that bad faith can happen when the domainer got there first and had no magical knowledge about a future trademark or shelled out big bucks to acquire a premium aged domain and have it potentially snatched away.

If they do crack down it should be on rules pertaining to post trademark registrations (some domainers make foolish purchases) and on trademark holders who offer to buy don’t like the price and retaliate.

Will be watching this thread. Also using privacy protection is just that personal protection from spammers and privacy of your assets and should not be used against any individual as “bad faith” reason.

 

[jberryhill]

Hopefully the registrars and registries will be the ones to resist this. They risk losing their milking machines.

Not at all.

Principally, registries and registrars don't care what dispute mechanisms are applied to domain name registrations, as long as there is a dispute mechanism under which the registry/ar may point to the dispute mechanism to avoid liability on their part for domain name registrations undertaken by their customers.

At the time the UDRP was written, the US ACPA was also being drafted. The ACPA was specifically drafted to excuse registrars etc. from liability so long as there was a "reasonable policy" in place for resolving TM disputes over domain names. That was by design.

If people register 10,000 domain names which are then claimed by TM holders under some dispute policy, it is entirely revenue-neutral to the registry/ar. They don't care who registers the names. Their primary interest is in (a) avoiding liability and (b) offloading dispute resolution which is simple for the registry/ar to implement.

 

[Branko Jovanovic]

In every indrustry a "big phish" will try to swallow the small one. That is why the small fish needs to have spikes

 

[Asfas1000]

Another thing we'll have to consider is what happens with redirected domains. Can I just forward all my for-sale domains to my personal webpage, where I say I'm such and such and I enjoy playing tennis blah blah, and contact me at [email protected]

Then we have some big companies owning multiple domains "for future projects" which are either forwarded or not resolving at all. Take Google, they own 10,000 domains I think. Should they lose those domains too ? Some of these are very valuable domains.

 

[urlurl]

Hopefully the registrars and registries will be the ones to resist this. They risk losing their milking machines.

you hit the nail on the head there - the registers would lose millions - they can't afford this to happen

 

[offthehandle]

If you look at this from the outside of the domain industry and examine all the unused and parked names and non-use the general public would gasp and side with the IP lawyers. There might be public backlash labeling investors as squatters I predict to deal with as well. Fortunately, there are some major portfolio owners who have a vested interest in protecting them as was pointed out.

 

[imadoer]

This whole reseller market will crumble if this goes through. This is very bad. Who ever came up with this idea wasn't thinking about the whole picture.

 

[consumers]

UDRP panels have found that parking a domain name (whether or not with infringing links) is evidence of bad faith. Also offering a domain name for sale is evidence of bad faith. Also using privacy protection is evidence of bad faith. Also failing to develop a domain name is evidence of bad faith. Also using a domain name for an otherwise legitimate business that is similar to an existing trademark is evidence of bad faith. Also having your registrar set up a coming soon page without your knowledge with advertising links is evidence of bad faith.

This points towards the main problem with the UDRP which most people don't realize. there is no appeal for a UDRP decision so the universe of decisions gets larger and larger and not smaller. Now you can make up almost any screwball claim and pull out a decision that agrees with you.

Many of the arbitrators and INTA members will misrepresent this and others will think there is an appeal because they are confused. They claim a court review is an appeal but that is false under US law. You can file a case that says false information was supplied to the panel and you can claim use of your domain was "not unlawful" under the Anti-Cyersquatting Protection Act but there is nothing I know of that allows you to go into court and say the arbitrators made the wrong decision. the Courts use US law and not the UDRP so there is no appeal.

I also note some of the arbitrators (Like Richard Hill) try to misrepresent what the UDRP is by saying the UDRP is prima facie evidence of cybersquatting. "prima facie" means "first look" but with the UDRP there is no opportunity for a "second look" and the UDRP is not a cybersquatting law.

 

[pokainc]

@jberryhill
@biggie

How could you think that Godaddy or other big registrars would not have a vested interest to be against these major potential changes....

Yes a lot of people register domains that are clear-cut TM infringements, but there's millions of domains which are registered which are not. If sweeping law changes regarding domain ownership go through and you have to absolutely develop a domain in order to have some right to own it or if someone files a TM after you bought the domain and can now have claims, that would deter the whole domain industry from registering legit names which are based on speculation. Especially in the brandables' market. Not everyone owns generic premium domains.

The comment about an endless supply of nitwits who would still register all kinds of TM infringements so the registrars/registries don't really care since they can deviate liability is just a ridiculous generalization. That's an easy type of comment to make when you take things out of context. What is the percentage of TM infringement domain registrations vs legit domain registrations... I doubt the majority are TM infringements..

This is a serious issue which fellow domainers are raising smart questions about which if it goes through would give the complainant sweeping rights vs the domain holder. How is this not a major concern for all the players in the domain industry.

I personally spend thousands yearly on legit domains and there's thousands of domainers who spend multiple of what I spend. If these changes go through as "use only" registrations as the accepted norm in an extreme ownership rights change move, definitely it would reduce millions in investments in domain registrations / renewals which would affect all the big companies like Godaddy in terms of their bottom line.

 

[jberryhill]

Then again, that's probably more money for you.

Zing! And there it is.

Yeah, that's pretty much why I reached the conclusion that volunteering my time for this stuff was as pointless as it was thankless for more than a decade. I'm just rolling around on piles of cash here.

I can assure you that had I never gotten involved with ICANN, I would be much better off than I am today.

Here's where the concept of "sunrise registration" was born (of which the TMCH nonsense is the latest evolution):

https://archive.icann.org/en/dnso/wgb-report-17apr00.htm

That working group ran for 12 months back in 1999 and 2000, and despite all of the various discussions which had gone on under the charter of whether and how to develop protections for "famous marks" in new TLDs, the chair of the group and some unidentified buddy of his came up with the sunrise proposal in the last couple of days and sprung it on the group.

You can scroll down to my comments on that one. I never saw one thin dime from my participation in that group, and several others over the course of years. In fact, one of the reasons why I eventually went solo was that my volunteer activities dealing with ICANN nonsense was at odds with my former firm's billing expectations.

So, that's one glimpse of a year of my life spent for nothing in telephone conferences and emails so that I can have the honor of being told I'm a biased, evil, greedy and faithless lawyer after all.

But having gotten the "oh, you make money from this stuff" line enough times to eventually break this camel's back, I realized that...

I see you have faith in no-one.

I have faith in a lot of things, and have had faith in a lot of things for the last 18 years of time wasted. But I have also a substantial amount of experience at odds with it, including efforts to organize domainers to act in their own bests interests. Do you remember the Domain Name Rights Coalition? No? Oh well. We were fighting this battle under the old NSI trademark dispute policy in 1995. Domainers didn't give much of a shit then either.

Okay, so I was calling out the sunrise bullshit in 2000. We'll skip the 2004 UDRP review and fast forward to the 2011 "issues report" group which was chartered to determine what, if any, changes were needed to the UDRP.

Now, it's pretty clear, and again I refer to the composition of the group to which I provided the link above, that if you are one person and you volunteer to walk into a room of 90 people, most of whom are being paid to be there and disagree with you, then you aren't going to come out with a whole lot of balanced compromise that you are going to like. "Faith" won't fix that.

So that's why, back in 2011, me, Ari Goldberger, and other attorneys who primarily represent domainer interests and have actual experience dealing with the UDRP as it is, were urging that while there could be a number of procedural improvements (which we got, e.g. Rule 17 to avoid gratuitous cybersquatting decisions when the domain was in a bulk purchase etc.), it was preferable to avoid ripping the lid off of the substantive Policy when it's pretty obvious the ICANN deck is stacked against domainers.

I even had one of my own clients take the same line that, "Well, that's because you make money from the system" and it was the beginning of the realization that volunteering my time for years to fight against the exact thing which is happening now was an utter and complete waste of time.

So, thanks for that reminder for me to stay out of these discussions.

 

[jberryhill]

Is all the advice you provide pro domainer?

Boom. Thanks again.

I'm a little cranky this week, because I've been dealing with injuries sustained in a fall just before leaving Geneva two weeks ago. I slipped in the bathroom and then had to take an international flight with three broken ribs. Maybe I should step away from the keyboard.

But in answer to your question, no, I get secret kickbacks from the International Trademark Association for messing with everyone on domain forums. Gonna buy that Lambo I've had my eye on with it.

 

[GeorgeK]

@GeorgeK and @Nat Cohen I went and took both your advice and joined the ICA working group but only as an observer. For now, until I dig into this I am confused about archived debates and votes and past events and emails, and how many subgroups there are and the organization. Very few names other than both of yours did I recognize.

Was it for the RPM PDP working group, i.e. at:

https://community.icann.org/pages/viewpage.action?pageId=58729950

If so, that's an ICANN working group that's open to all (not a working group from the ICA, although some ICA members like Nat are in it).

 

[GeorgeK]

Are there other emailing groups like that covering domain name owners rights you might also suggest? Thanks again.

Within ICANN, other policymaking mailing lists are mentioned at:

https://gnso.icann.org/en/group-activities/mailing-lists
https://gnso.icann.org/en/group-activities/active

There are also groups like ALAC and the Business Constituency:

https://atlarge.icann.org/
http://www.bizconst.org/

 

[GeorgeK]

"As a URS Provider, Forum finds itself in a difficult position with respect to many of the decision review options set forth to date. We are concerned that the filing parties reasonably expected that their filings would be confidential. We are also concerned that if we intervened with the examiners on behalf of the WG regarding past decisions, or drew conclusions regarding the examiners’ aptitude to decide a particular case correctly, that we would undermine our role as a neutral administrator in the URS process.

Forum will of course continue to cooperate with the WG, but cautions that any information outside of the decision itself should be gathered in a way that does not upset the integrity of the URS system."

Thanks.

I think NAF wants minimal scrutiny of its processes, as it would likely expose how one-sided things are in favour of complainants.

NAF was already forced out of consumer credit arbitrations:

https://en.wikipedia.org/wiki/Forum_(alternative_dispute_resolution)
https://www.creditcards.com/credit-...l-lawsuit-national-arbitration-forum-1282.php
https://fedsoc.org/commentary/publi...um-settlement-with-minnesota-attorney-general
https://library.nclc.org/sites/default/files/Arb10_Appx_O-1.pdf
https://www.citizen.org/sites/default/files/arbitrationtrap.pdf

The cloak of 'privacy' or 'confidentiality' isn't there to protect the filing parties. They want to prevent forensic analysis of the decisions. It's amusing to have them talk about 'the integrity of the URS system' given their past.

 

[BaileyUK]

Well thanks for the Heads-up Nat Cohen and the thread start and offthehandle for the opener. It looks like this thread is going to run for some -time. I'm not surprised it hasn't hit the mainstream domaining community until now. I'm sure that those that are pushing for the changes want it to remain as low-key as possible, until they had it further down the road. Probably helps to explain some big portfolio sales as well

 

[BaileyUK]

Perhaps we should rename this thread "the cats ARE amongst the pigeons" certainly the biggest Shock-read I've had in a long time. I think we all know, even before judgement day that there will be some sort of compromise , but just how serious that impact is going to be remains to be seen. if there is that many (Money) influencing change, then we can guess somethings are certainly going to change to the detriment of domain investing. Perhaps time to get my head down on development.
I for one am always baffled by the number of registered trademarks that came long after my domain registrations - and I mean by many years. Maybe I'll be the type in the firing line.

I had read something about proposed changes at UDRP earlier but, I just put it down to a tightening-up of the conflicting judgements, i.e. more clarity, not the sort of reworking of the whole system

 

[offthehandle]

If sweeping law changes regarding domain ownership go through and you have to absolutely develop a domain in order to have some right to own it

Let's assume we are forced into a corner. So, for the moment imo the answer is to populate each domain with content. It does not have to be good content, but obviously not garbage spun junk either. So to avoid "non-usage" issues ftp in batch a standard set of several different generic html sites. Even if you have say 5,000 domains, you would still need to disconnect them from your existing parking company and can simply ftp a 5 page no overhead/no wordpress website in html on a VPS or large hosting plan all under several ip's and have a script generate some standard info, change the title and description data for each in the title and park it forever. This is what I have done with a few high value domains I don't want issues with. That's my plan, not saying it is without flaws, but legally a website exists- if you own a dictionary word- you could simply post the definition of the word and some examples say of using that word in sentences, lol. All of this could be automated to some extent. All domains would have the same about page, contact and details, no for sale sign on them, etc. then make the main page and another one unique. I don't think they can create a non-use claim from anyone owning 5,000 separate "companies", all subsidiaries of one company.
Or use Dub.io and populate it with rss feeds. If I am wrong, please chime in.

 

[offthehandle]

For them seeing the for sale sign and a contact form is what makes them more likely to inquire.

Something I have posted various places here is the real need for a centralized marketplace that comes up in the serps for the secondary domain market not controlled by any one company or registry. This "type in JoesDomain.com" at google and find you, may go away one of these days anyway. Now with voice control search, it's going to be interesting. Whois is changing too to this RDAP as you know, making it more difficult to access for better or worse depending upon how you look at it.

In such a centralized marketplace you could place a "Company and Domain name for sale". The "company" includes an email address you create under the domain name, some content you make ad hoc upon sale- say a starter package explaining basics of running a sample business under the name. The fact you are not selling a domain name only, but a value added service and "business plan" (That the buyer probably has no interest in anyway) then makes it more difficult and muddies the water. I dunno. My lawyer once said his job description was to "create darkness and confusion". If a dba needs to be filed, so be it. Some batch process could be done by some industrious young entrepreneur to tackle this mess.

 

[Smooth]

Yea agree. These domain sale landing pages will become, pages with content & 'website for sale'.

Domainers will be careful.. Not so educated SMEs may leave their domains undeveloped and domainers will find a way to claim those as well ..