Evan / Beau On 29 Aug 2011, at 20:29, Evan Leibovitch wrote:

Certainly, such activity helps make the case that the trademark lobby (and GAC acting as proxies) have been making -- that more than anything, the new gTLD space is primarily (or at least substantially) designed to make money off of defensive registrations.

Well that argument ignores a lot of other things, which marketers should appreciate. As a trademark holder I wouldn't see any value in registering blacknight.comics (if such a TLD were to exist), though it would probably be of some value to Dark Knight comics. As a marketer I'd love to be able to register domains like cheaplinux.hosting , for example.

The ICANN response to trademark owners is to point out the URS and other takedown measures. But if ICANN's oldest registrar(*) continues to propagate the myth that the only assured way to protect one's brand is to register it under every gTLD, the very existence of a registrar's "protect your brand" infers that the built-in mechanisms are insufficient.

Michele, if you're here I'd like to hear your PoV on this.

Damn! So much for my "lurking" on this list :) I was contemplating an email to Beau about this when your email came in .. In my opinion - and yes I'm obviously a registrar who is motivated to sell domains (and related services) - I don't see any issue with a simple "protect your brand" message. Looking at the Netsol homepage at the moment I'm seeing the message in the context of ccTLDs.. I can't see what the original graphic mentioned was linked to, so I don't know if it was the same message or a different one .. It would be a totally different matter if they were holding a virtual gun to people's heads and forcing them to register domains that they didn't want .. We receive quite a few calls from companies that have been approached by scam artists telling them that they have to register domain names because if they don't someone else is about to .. Here's an example from about 5 years ago: http://blog.blacknight.com/beware-of-uk-domain-scammers.html Unfortunately the same kind of scams are ongoing - the "company" names change, but the MO is pretty much always the same.

On one hand registrars obviously want as much domain tonnage as possible.

Well yes and no. It obviously depends on your business, but we make more money from hosting and other services than we do from actual domains.

OTOH, isn't the use of "protect your brand" marketing an open admission that ICANN's brand-protection measures aren't enough?

No. I'd disagree. Not all companies need to have domains registered across a multitude of extensions. But the "brand" angle is one way of raising awareness that TLD (or ccTLD) X exists (or will exist very soon) and making them aware that they might want to consider registering domain(s) in that extension.

Is this not just an open admission that the IPC and GAC positions are valid, and an invitation for outside (ie legislative) regulation?

IMHO - no. If, for example, you wanted to launch a business / site based around a keyword which you didn't have any IP rights in (and probably could never get exclusive rights to it) then you're still going to have to register the domains in the markets (and extensions) that you want. Describing this kind of marketing as a "racket" is a bit over the top in my opinion. Regards Michele Mr Michele Neylon Blacknight Solutions Hosting & Colocation, Brand Protection ICANN Accredited Registrar http://www.blacknight.com/ http://blog.blacknight.com/ http://blacknight.mobi/ http://mneylon.tel Intl. +353 (0) 59 9183072 US: 213-233-1612 UK: 0844 484 9361 Direct Dial: +353 (0)59 9183090 Fax. +353 (0) 1 4811 763 ------------------------------- Blacknight Internet Solutions Ltd, Unit 12A,Barrowside Business Park,Sleaty Road,Graiguecullen,Carlow,Ireland Company No.: 370845

On 29 August 2011 16:59, Bret Fausett <bfausett@internet.law.pro> wrote:

I have more sympathy for the idea that we should do something about the "pre-registration" racket, which we discussed in last week's thread, where the potential for consumer confusion/fraud is high. Here, we are dealing with an advertisement primarily aimed at businesses, so the potential for consumer confusion/fraud is substantially lower.

As I mentioned earlier, previous forays into convincing ALAC to escalate this as a policy matter have received some pushback. The obstacles are not insurmountable, but it's not a trivial selling job and well beyond my abilities alone. OTOH, treating this as a public education issue is meeting far less resistance, A conversation has already started with Scott Pinzon and his team, who have already produced the "ICANN Start" podcasts and are charged with having the public to be as well informed as possible as the gTLDs start rolling out. Scott had already been following the pre-reg issue and is happy to work with us on an information campaign that alerts to the nature of pre-registrations and seeks to warn customers away from them. We may not easily or quickly be able to change regulations or enforcement, especially if the offenders are not contractually linked to ICANN. But at least we can do our best to ensure that potential customers go in with their eyes open. - Evan

there appears to be a growing reactionary rearguard amongst older internet cognoscenti.

I believe you misspelled "many of the most experienced participants and observers have realized that ICANN has spent a decade doing what is increasingly clearly a mistake." Agree with Eric's comment about the lettuce. Regards, John Levine, johnl@iecc.com, Primary Perpetrator of "The Internet for Dummies", Please consider the environment before reading this e-mail. http://jl.ly

The door is always open and I still hope that they will join At-Large someday. But they will have to play by the rules of consensus, like all of us. Sometimes we want something but the majority does not. It's frustrating sometimes, but that's the name of the game. Warm regards,

In other words: "Please don't practice armchair quarterbacking, if you do not like the way the ICANN policies are going, join your respective community and participate in the consensus building process!" I agree that this is what the critics should do, however, it costs hours upon hours of unpaid voluntary work to participate in the process, but only a few minutes to publicly criticize the result. Due to this simple arithmetic of cost vs. benefit, ICANN will always have to deal with uninformed detractors on any decision that is made, no matter how well thought-out and well debated the decision is.

That was my point exactly when I spoke with Farber; and yet, there is total ignorance of the bottom-up model outside of ICANN, there is a general accusation that At-Large just pays lip service to ICANN and that ICANN is just controlled entirely by contracted parties wishing to make a quick buck through a "domain protection racket", a term I personally find offensive. Real life "protection rackets" are a completely different ballgame involving physical threats.

Picturing the "domain protection racket and borrowing from Monty Python: "You have a nice brand there, we wouldn't want anything to happen to it, do we? You ought to be careful, 'cos things break, don't they? Domain names, eh? Be a shame if someone was to set fire to them..." -- Best regards, Volker A. Greimann

People might be more at ease with gTLD expansion if the dispute process was sound, I'd be wary of anyone who says it is. The current UDRP works in favor of cybersquatters and the Registrars who sponsor them (who, in some case have been shown to be one in the same). The process only works if the plaintiff truly wants a disputed domain name. Against the bad-faith registrant, there is no recourse especially if the registrant is behind a privacy service. The defaulted domains in these cases are worthless to the plaintiff once transferred (in fact worth-less because they have to spend money to get the worthless domains where the bad-faith registrant spends zero dollars in default. And for all the prostrations, Registrars are not blameless in this as they have developed special search engines which make cybersquatting in bulk easy. -------------------------------------------------- From: "John R. Levine" <johnl@iecc.com> Sent: Tuesday, August 30, 2011 5:11 PM To: "Volker Greimann" <vgreimann@key-systems.net> Cc: <na-discuss@atlarge-lists.icann.org> Subject: Re: [NA-Discuss] Fwd: "Domain Protection Racket" Promotion on Network Solutions Home Page

...

In other words: "Please don't practice armchair quarterbacking, if you do not like the way the ICANN policies are going, join your respective community and participate in the consensus building process!"

Been there, done that, got several nice shirts.

In case it's not obvious, ICANN is about as egregious a case of regulatory capture as you could imagine. Despite pious noises to the contrary, ICANN exists to serve the registries and registrars who pay its bills. It doesn't help that a chronically weak board has never been able to exert more than nominal supervision over the staff.

While the ALAC and other peripheral groups have some modest effect around the edges, e.g., we might get them to say that pre-registration is bad, the bottom-up stuff is mostly a way to try to deny the authority that governments, particularly the US government, have over ICANN.

At this point, effective changes to ICANN will only come via government directives and lawsuits in US courts, not through bottom-up wishful thinking.

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The door is always open and I still hope that they will join At-Large someday. But they will have to play by the rules of consensus, like all of us. Sometimes we want something but the majority does not. It's frustrating sometimes, but that's the name of the game. Warm regards,

In other words: "Please don't practice armchair quarterbacking, if you do not like the way the ICANN policies are going, join your respective community and participate in the consensus building process!" I agree that this is what the critics should do, however, it costs hours upon hours of unpaid voluntary work to participate in the process, but only a few minutes to publicly criticize the result. Due to this simple arithmetic of cost vs. benefit, ICANN will always have to deal with uninformed detractors on any decision that is made, no matter how well thought-out and well debated the decision is.

That was my point exactly when I spoke with Farber; and yet, there is total ignorance of the bottom-up model outside of ICANN, there is a general accusation that At-Large just pays lip service to ICANN and that ICANN is just controlled entirely by contracted parties wishing to make a quick buck through a "domain protection racket", a term I personally find offensive. Real life "protection rackets" are a completely different ballgame involving physical threats.

Picturing the "domain protection racket and borrowing from Monty Python: "You have a nice brand there, we wouldn't want anything to happen to it, do we? You ought to be careful, 'cos things break, don't they? Domain names, eh? Be a shame if someone was to set fire to them..." -- Best regards, Volker A. Greimann ------ NA-Discuss mailing list NA-Discuss@atlarge-lists.icann.org https://atlarge-lists.icann.org/mailman/listinfo/na-discuss Visit the NARALO online at http://www.naralo.org ------

Michele, <<A lot of people would disagree with you and state that it works in the favour of IP holders who like to bully registrants>> I'm sure it happens but it's not what I observe in my work. I see domain registration used as a weapon against consumers. I have recorded 2342 domain names in the last six-months alone with a drug name that starts with the letter "v", NONE of which are owned by the brand owner, ALL were spammed and ALL are selling drugs illegally. Shame on brand owners who don't protect their IP, but the system as is does not protect the consumers who suffer the most in this scheme. <<Garth - you are deliberately misusing the term "sponsor" with the clear intent of establishing some kind of beneficial connection between registrars and their clients. Please stop - it's intentionally inflammatory and completely misleading.>> Michele, I DELIBERATELY use the term "sponsor" because this is the correct term used in the RAA 18 times to describe the relationship. In the simplest form is in RAA 1.16: "A Registered Name is sponsored by the registrar that placed the record associated with that registration into the registry." You wishing this language not be true does not make it so. A domain is not a pint of milk that someone walks out of the store with, it exists within the DNS for a contracted period of time because the Registrar keeps it there. Sponsorship. If you have a problem with the language, talk to ICANN and get the RAA amended don't take it out on me. Your response to me in accusing me of being inflammatory and misleading is beneath the dignity of this forum and I won't have it. Additionally, for a Registrar to tell a member of the community in the At-Large forum to "stop" anything is completely inappropriate and a clear attempt at intimidation. Being neither an At-Large member or in North America you are a guest in this forum. My discussion is about entities and policy, yours is personal. I will not engage in an argument further about this, you can take any concerns about what I have said to the At-Large chair or ALAC. Good day. -------------------------------------------------- From: "Michele Neylon :: Blacknight" <michele@blacknight.ie> Sent: Wednesday, August 31, 2011 8:59 AM To: "Garth Bruen at Knujon.com" <gbruen@knujon.com> Cc: "John R. Levine" <johnl@iecc.com>; "Volker Greimann" <vgreimann@key-systems.net>; <na-discuss@atlarge-lists.icann.org> Subject: Re: [NA-Discuss] Fwd: "Domain Protection Racket" Promotion onNetwork Solutions Home Page

Garth

On 31 Aug 2011, at 13:48, Garth Bruen at Knujon.com wrote:

...

People might be more at ease with gTLD expansion if the dispute process was sound, I'd be wary of anyone who says it is. The current UDRP works in favor of cybersquatters

A lot of people would disagree with you and state that it works in the favour of IP holders who like to bully registrants

...

and the Registrars who sponsor them

Garth - you are deliberately misusing the term "sponsor" with the clear intent of establishing some kind of beneficial connection between registrars and their clients. Please stop - it's intentionally inflammatory and completely misleading.

...

(who, in some case have been shown to be one in the same). The process only works if the plaintiff truly wants a disputed domain name. Against the bad-faith registrant, there is no recourse especially if the registrant is behind a privacy service. The defaulted domains in these cases are worthless to the plaintiff once transferred (in fact worth-less because they have to spend money to get the worthless domains where the bad-faith registrant spends zero dollars in default.

Based on what?

Are you honestly trying to tell us that in your opinion all domains that are transferred in UDRP cases have zero value?

Seriously?

Regards

Michele

Mr Michele Neylon Blacknight Solutions ♞ Hosting & Colocation, Brand Protection ICANN Accredited Registrar http://www.blacknight.com/ http://blog.blacknight.com/ http://blacknight.biz http://mneylon.tel Intl. +353 (0) 59 9183072 US: 213-233-1612 UK: 0844 484 9361 Locall: 1850 929 929 Direct Dial: +353 (0)59 9183090 Facebook: http://fb.me/blacknight Twitter: http://twitter.com/mneylon ------------------------------- Blacknight Internet Solutions Ltd, Unit 12A,Barrowside Business Park,Sleaty Road,Graiguecullen,Carlow,Ireland Company No.: 370845

Volker, The URS sounds interesting and I'll admit I have not studied it in dept yet. I have attached a screenshot from eNom's site which not only lists bulk options by dynamically suggests domains with related keywords and trademarks of competitors. I have also attached a screenshot from Moniker's site which adds the keyword "100mg" to proposed domains indicating they know what the customer is looking for. Not saying this is all Registrars, I did not find the same issue at Key-Systems. -Garth -------------------------------------------------- From: "Volker Greimann" <vgreimann@key-systems.net> Sent: Wednesday, August 31, 2011 9:08 AM To: "Garth Bruen at Knujon.com" <gbruen@knujon.com> Cc: <na-discuss@atlarge-lists.icann.org> Subject: Re: [NA-Discuss] Fwd: "Domain Protection Racket" Promotion on Network Solutions Home Page

Garth,

I think you overlooked the URS, which is specifically tailored to the issue you mention. The trademark holder is not forced to take over the domain name, but his main issue (the infringing use) is resolved. Costs should be substantially under those of the UDRP as well, but we will have to see what prices the URS providers will arrive at.

...

And for all the prostrations, Registrars are not blameless in this as they have developed special search engines which make cybersquatting in bulk easy. Can you give an example? I have not seen registrars providing search engines specifically tailored to enable cybersquatting.

Best,

Volker

Thank you Alan, they have been posted here: http://knujon.com/enom_domain_search.png http://knujon.com/moniker_domain_search.png -------------------------------------------------- From: "Alan Greenberg" <alan.greenberg@mcgill.ca> Sent: Thursday, September 01, 2011 11:43 AM To: "Garth Bruen at Knujon.com" <gbruen@knujon.com>; "Volker Greimann" <vgreimann@key-systems.net>; <na-discuss@atlarge-lists.icann.org> Subject: Re: [NA-Discuss] Fwd: "Domain Protection Racket" Promotion on Network Solutions Home Page

No attachments. I think that this list is configured to disallow executable and image attachments. You would have to post the images elsewhere and point to them.

Alan

At 01/09/2011 11:19 AM, Garth Bruen at Knujon.com wrote:

...

Volker,

The URS sounds interesting and I'll admit I have not studied it in dept yet.

I have attached a screenshot from eNom's site which not only lists bulk options by dynamically suggests domains with related keywords and trademarks of competitors.

I have also attached a screenshot from Moniker's site which adds the keyword "100mg" to proposed domains indicating they know what the customer is looking for.

Not saying this is all Registrars, I did not find the same issue at Key-Systems.

-Garth

-------------------------------------------------- From: "Volker Greimann" <vgreimann@key-systems.net> Sent: Wednesday, August 31, 2011 9:08 AM To: "Garth Bruen at Knujon.com" <gbruen@knujon.com> Cc: <na-discuss@atlarge-lists.icann.org> Subject: Re: [NA-Discuss] Fwd: "Domain Protection Racket" Promotion on Network Solutions Home Page

...

Garth,

I think you overlooked the URS, which is specifically tailored to the issue you mention. The trademark holder is not forced to take over the domain name, but his main issue (the infringing use) is resolved. Costs should be substantially under those of the UDRP as well, but we will have to see what prices the URS providers will arrive at.

...

And for all the prostrations, Registrars are not blameless in this as they have developed special search engines which make cybersquatting in bulk easy. Can you give an example? I have not seen registrars providing search engines specifically tailored to enable cybersquatting.

Best,

Volker

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"Coffee" is not a trademark -------------------------------------------------- From: "Michele Neylon :: Blacknight" <michele@blacknight.ie> Sent: Thursday, September 01, 2011 12:12 PM To: "Garth Bruen at Knujon.com" <gbruen@knujon.com> Cc: "Volker Greimann" <vgreimann@key-systems.net>; <na-discuss@atlarge-lists.icann.org>; "Alan Greenberg" <alan.greenberg@mcgill.ca> Subject: Re: [NA-Discuss] Fwd: "Domain Protection Racket" Promotion onNetwork Solutions Home Page

On 1 Sep 2011, at 16:50, Garth Bruen at Knujon.com wrote:

...

Thank you Alan, they have been posted here:

http://knujon.com/enom_domain_search.png http://knujon.com/moniker_domain_search.png

It's name "spinning" or "suggestion"

I'm not sure what technology eNom or Moniker are using, but a lot of registrars, including us, use similar technology to generate semantically related domain suggestions based on user input

So if you search for "viagra" then you will get back terms that are close to it in meaning ..

The results of a search for "coffee" could give you something like:

http://www.flickr.com/photos/mneylon/6103586684/in/set-72157627570054832/

Mr Michele Neylon Blacknight Solutions ♞ Hosting & Colocation, Brand Protection ICANN Accredited Registrar http://www.blacknight.com/ http://blog.blacknight.com/ http://blacknight.biz http://mneylon.tel Intl. +353 (0) 59 9183072 US: 213-233-1612 UK: 0844 484 9361 Locall: 1850 929 929 Facebook: http://fb.me/blacknight Twitter: http://twitter.com/mneylon ------------------------------- Blacknight Internet Solutions Ltd, Unit 12A,Barrowside Business Park,Sleaty Road,Graiguecullen,Carlow,Ireland Company No.: 370845

Actually, the word 'coffee' is trademarked in a variety of places. In the US, for example, there are thousands of federal trademarks that contain the word 'coffee', and several that solely consist of the term 'coffee'. I understand the problem Garth is trying to solve, a problem that focuses mainly on famous trademarks. I'm not trying to detract from a solution to that problem -- just pointing out that making rules for trademarks (especially when dealing with automated systems) is a very difficult thing as almost every word we use is trademarked somewhere. Richard On Sep 1, 2011, at 9:33 AM, Michele Neylon :: Blacknight wrote:

On 1 Sep 2011, at 17:19, Garth Bruen at Knujon.com wrote:

...

"Coffee" is not a trademark

I never said it was. The term "apple" is also a trademark, while still being a fruit ..

If you actually look at what is and isn't registered as a trademark you'll find that a very large number of words are

My own first name is a registered trademark (though not to me)

Lots of words that people use in common day parlance are protected or were at some point (for examples see: http://en.wikipedia.org/wiki/List_of_generic_and_genericized_trademarks )

In any case, the point I was trying to make is that your example brought back trademark related results, as you had entered a particular term.

You could have entered any other term and you would have got back results that were related to your chosen input

So unless you are suggesting that registrars are telling people to search for trademarks then I honestly don't see what you talking about.

Regards

Michele

Mr Michele Neylon Blacknight Solutions ♞ Hosting & Colocation, Brand Protection ICANN Accredited Registrar http://www.blacknight.com/ http://blog.blacknight.com/ http://blacknight.biz http://mneylon.tel Intl. +353 (0) 59 9183072 US: 213-233-1612 UK: 0844 484 9361 Locall: 1850 929 929 Direct Dial: +353 (0)59 9183090 Facebook: http://fb.me/blacknight Twitter: http://twitter.com/mneylon ------------------------------- Blacknight Internet Solutions Ltd, Unit 12A,Barrowside Business Park,Sleaty Road,Graiguecullen,Carlow,Ireland Company No.: 370845

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I'll admit that I also have not studied the URS in detail. Tell me, is it only a trademark holder that can initiate the process, or could it be any other (f'rinstance law enforcement) party perceiving fraud or illegal activity? Does one actually have to be a registered trademark holder? Thanks j On Thu, Sep 1, 2011 at 1:11 PM, Volker Greimann <vgreimann@key-systems.net>wrote:

Garth,

...

...

The URS sounds interesting and I'll admit I have not studied it in dept yet. You should, it is going to be an integral part of the new gTLD program and a huge relief for brand owners.

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