According to an article in Managing Intellectual Property , Erik Wilbers, the Director of the WIPO Arbitration and Mediation Center, said:
“The Center is close to releasing a new version of its bible for panelists. The new “2.0” version will include topics that have emerged in recent years, such as whether domainers who design computer programs to register domains automatically are guilty of bad faith registration and use—a key part of the Policy.
“The answer is yes they are guilty,”
“It is a form of willful blindness.”
“The new Overview is likely to be published within the next few months.”
Nice to see WIPO is in the process of slanting the rules further in favor of trademark holders which already have a better than 85% win rate.
Of course the natural question is how will a complainant or a WIPO Panel know that a domainer used a computer program to register domains?
Or will they just presume so?
Guess we will have to wait for the new publication.
On a side note, the artcile also mentions that WIPO filings are on a record pace.
What are registrar paid for? They should check is eligible or not. What I understand is that if you pay for something, it is yours… to start with. and then what difference does it make how was it registered? It is a asset like anything else. If it was paid, it belongs to him. If an electronic purchased item makes the acquisition questionable, all Stock Market transactions would be questionable.
This is an interesting premise that goes against the UDRP rules. Under the rules, a person registers a name in bad faith if the Registrant knowingly is infringing on someone else’s trademark. If some kind of computer program is used to blindly register domains, where is the bad faith? I’d like to see the labyrinthine thinking that gets out of that situation.
Howard
They would says its bad faith because if you used a computer program to register domains you did not check to see if each one might infringe on someone’s trademark and that failure of concern amounts to willful negligence which amounts to bad faith.
Do you suppose that would allow companies to claim their 3- and 4-letter acronyms?
Louise
I think they are going to try to equate large domain holdings with automated computer registrations and if you couple that with a parked page once you have the domain, its going to be a problem
So what about back-order services…..would that conceivably fall into this category since it’s their bots versus other bots….?? The thinking to be made, I guess, is that you “willfully” placed the back-order, so shame on you for not doing your diligence….
Technically, don’t all registrants use a “computer program”. GoDaddy, SnapNames, NameJet , Sedo, etc……all have computer programs that register a domain for you if you are top bidder.
We may not own, or have had written the program, but we all are using the third party programs to buy domains.
Using proxy bids we put in a bid, just like an automated in-house program, and then walk away. Is proxy bidding “bad faith” also?
This silly rule makes every registrant guilty that has used a auction house.
Another thing……will they try to impose this new rule on those that regged domains years ago with an automated system?
It seems to be that they can’t make this rule now and impose it retroactively on those that used computer programs before the rule came out.
If so, they are chaning the rules in the middle of the game……and that’s really dirty.
What’s next, a fee paid to WIPO for every lookup for a domain that is a trademark? This idea reads like a DomainGang story.
Acro
I think a check box form, where the complainant selects why they should have the domain:
a.. domain used for trademark infringement
b. domain used for phishing
c. domain used for malware
d. we want it
Ludicrous . Keep expanding the rules WIPO.
You better work on defining “computer programs” too. Because EVERY registrant uses a computer program to register domains. There’s no other way to register a domain. FOOLS
“On a side note, the artcile also mentions that WIPO filings are on a record pace.”
If you broaden your user base, by expanding the rules, of course you’ll have more filings. Duh.
As long the fees for filing a domain dispute is high, it will continue to breed domainers infridging trademark name. Domainers only losses are the cost of domains which is much lesser then UDRP fees. They also does not have further legal liabilty. Thus will contiune to register trademark name for quick profit.
Kang
Domainer are always at risk that a complainant will go to federal court and seek the $100K per domain penalty instead of filing a WIPO
Does this include registrars and drop services who use multiple registrars to ‘drop catch’ domains?
And will this be enforced at that level or only at the domain investor level as such things usually are?
I’m also really interested in their definition of ‘software program’, wouldn’t all Registrar APIs come under this? Weird.
Hello Mike,
It is so interesting to see the varied responses so far. It occurrs to me that it is all GOOD. By this I mean that , none of the flap would be present without the underlying issue causing the flap. The underlying issue is that DOMAINS are legitimately the best investor class asset in history and the powers that be are waking up to this fact. It aint all bad folks!
Gratefully,
Jeff
Good point Jeff.
I’ve always maintained that when you make somebody/some company mad in business, quite often you are doing something right. Someone is jealous of your success, or wants to be you.
The same can be said quite often in personal life as well.
It is a genuinely scary attempt at assuming automatic bad faith by any registrant who does not have a trademark. The computer driven domain name tasting of the type in the Dell case was targeted at brands protected by trademarks and it was being done on a massive scale because of what was effectively a zero cost test registration. When ICANN changed the registration conditions, it dramatically reduced this kind of abuse. I think he is guilty of willful cluelessness in effectively pre-judging every future action involving a trademark, regardless of class or jurisdiction, and an automatically registered domain without actually knowing the facts.
It has application especially to 3 and 4-letter acronyms. Also, to geodomains. If a domain company ran in-house a database of North American cities with a minimum threshold population, to check for availability, to match the most popular terms: automotive, repair, hotels, restaurants, to register the most valuable, it is computer program-specific. Matching dictionary single words against their domain equivalent then registering the most valuable is also an ideal software application. 3 and 4-letter domains are easily an obvious subject for software matching . . . that is, I’m sure it’s been done.
When Verisign offers software tools to Registrars to target the most popular domains,
The Internet Profi le Service for Registrars uses proprietary algorithms to analyze domain name and Web site attributes, including:
• If and how a domain name resolves, including whether the Web site is under
construction or parked
• Whether a Web site has multiple pages of content
• Whether a Web site has rich media content, including links to online video,
embedded content and other indicators
• Particular keywords within domain names that indicate opportunities for
targeted offers
• Business classifications
Registrars can use the resulting reports to develop tailored marketing programs to reach specific audiences.
– http://www.verisign.com/domain-name-services/current-registrars/internet-profile-service, click PDF file
plus
Available Domain Name Reports
Internet Profile ServiceVeriSign combines Web site attributes such as rich media content, domain name resolution status, business classifications, and content script with analysis of domain name availability into easy-to-use reports. (Parked domain name registrations or those used for email services are not included in results.)
Pending Delete Domain Evaluation Beta Report
The Pending Delete Domain Evaluation Report is a new beta offering from VeriSign that identifies a set of valuable data points to help you evaluate domain names that are pending deletion from the active zone (i.e., after domain names have passed the Auto-renew Grace Period and Redemption Grace Period stages in the domain name life cycle).
All Expiring Non-Resolving Domain Names Reports
Remind registrants to use their domain names before they expire to potentially increase renewals. Shows all your managed .com and .net domain names due for renewal within 30, 60 and 90 days that do not resolve.
So, the Registrars may benefit from software offered through Verisign, but not little businesses.
Verisign is not your friend. If Verisign was your friend, it would invest something into security. See:
Update: Verisign fails to take action against malicious sites, researcher says
The Registrars and Verisign, with ICANN paving the way, are getting ready to take a major dump on dot com and dot net owners – you!
Louise
Verisign has a ton of info that they share with registrars in attempt to get more registrations.
That of course is their business.
They make money every time a domain get registered.
The more registrations, the more they make.
They give out information to increase the number of registrations.
Its just business
Ultimately however, all the problems (downside) and benefits (upside) associated with domain ownership are with the domain owners not with Verisign.
So Like anything else in life, be careful out there.
Take all the info you can get, but understand that everyone is out to make a buck and govern yourself accordingly.
I saw this come up on http://www.OceanfrontDomains.Com and think it’s just bogus.
Who cares whether a human, a monkey or a computer came up with the registration. If someone is capable of writing such a program, then God bless. Let them. Who is WIPO to say otherwise; and, how it shows bad faith is beyond me.
And good luck enforcing this too. Who in heck is going to admit to using a script?
So why are the registrars allowed to profit from selling or auctioning off trademarked domain names while nobody else can? Why aren’t they forced to hand them over to the trademark holders for just the reg fee when they expire?
How the computer run without computer programs?
Using stone and brick? LOL….
The law firm of Parker Waichman Alonso LLP can claim a legal victory in a fight over using its domain name, YourLawyer.com.
In 1999, Parker Waichman purchased the domain yourlawyer.com from another attorney, and it soon became the firm’s identifier on the Web. It went so far as to register the names YourLawyer and YourLawyer.com with the U.S. Patent and Trademark Office.
Since then, YourLawyer.com has become a wholesale resource for any myriad concerns – from defective medical devices and dangerous prescription drugs to massive food recalls and toxic chemicals. The site is updated daily with the latest from numerous safety resources, and provides information on how a consumer can seek justice if they feel they’ve been wronged.
Parker Waichman has spent millions marketing its Web site, and has become synonymous with the trademark YourLawyer. The firm has secured numerous clients through its Web sites.
In 2007, a firm in Georgia purchased a similarly named site, Yourlawyer.tv, and began marketing it during a Peanut Butter Salmonella outbreak. The site, at the time of the launch and until recently, looked eerily similar to the Parker Waichman site, in place for nearly a decade.
Parker Waichman filed a complaint with the National Arbitration Forum over the rights to the name YourLawyer on the Web, but ultimately lost that complaint because the NAF said the firm couldn’t prove it had lost business to the defendant, Orlando Firm, P.C.
Parker Waichman then filed a lawsuit against Orlando Firm, P.C., alleging trademark infringement and unfair competition. Two months after filing that complaint, the defendant filed a motion to dismiss the lawsuit, citing the arbitration decision.
Orlando Firm, P.C., spent a considerable amount of time and effort boasting this “victory” at the NAF, but it was short-lived based on a May 14 decision in a New York federal court.
U.S. District Judge Colleen McMahon basically over-ruled the NAF decision in denying Orlando Firm’s motion to dismiss Parker Waichman’s. That means the firm’s complaint goes forward and it appears, based on evidence provided for this motion, that Orlando Firm did gain business through its use of the YourLawyer name, meaning its days of using that Web domain are numbered.
Agree, it is practically impossible to tell how the domain was registered, unless they can prove thousands of them were registered by the same person within a second. Good luck tracing some 180 million domain names.
all my domains are regged by my bare hand not used by any computer program
ameen !
They can go even more backwards:
10 PRINT “WELCOME TO WIPO LAND”
20 INPUT a= “Computer programs”
30 INPUT b=”Humans registering domains”
40 INPUT c=”Domains”
50 IF a BETWEEN b AND c THEN PRINT “Sucker!!!!”
6o END
I think the problem is that ICANN writes the policy but can’t enforce it. What will happen, sooner rather than later, is a lawsuit against NAF, WIPO and other UDRP providers for failing to follow the UDRP policy and forcing a court to drill down on what defines “Bad Faith Registration”, “Proper Use” etc.. Unfortunately, the current policy is loose so it leaves much of the finer points up to interpretation–not always a bad thing with a reasonable arbitrator, and recent decisions seem to overreach.
My concern would be that the court(s) might define those terms so that it is even harder on domainers than WE interpret them to be now. The old adage, be careful what you wish for.
If we want to be serious about this issue, we all need to pledge to take a stand against TM registrations AND PURGE YOUR PORTFOLIOS OF THE VIOLATORS. The complaintants continue to gain traction because TM registrations are still rampant and domainers are still positioned (at least in the eyes of the public AND policy) on the same side as the cybersquatters. Until that changes, we can bitch all we want about the evaporation of our registration rights, we will continue to lose the battle of public opinion and UDRP decisions.
Quote – “AND PURGE YOUR PORTFOLIOS OF THE VIOLATORS.”
It is easy to say.
But, why should I get rid of a domain that I’ve owned for 10 yrs because someone created a TM last year?
Why should I get rid of a generic domain because someone has a TM on the generic word. So, I should drop CoffeeShop.com (hypothetical) because there are 41 live TMs?
Just because there is a coffee shop in the UK (hypothetical) that is unknown outside of its neighborhood should control a generic domain.
If I owned CookingClass, com (I don’t). I should drop it because there is a magazine that created a TM 5 yrs after the domain was registered?
I don’t believe in blatant cybersquatting (ie, dellcompute, NBCtvnews,).
However, there has to be a reality check somewhere along the line.
And, you might want to use a smaller brush.
@ MHB, thanx for thoughtful responses – you realize I am paranoid over ICANN’s policies with regard to their effect on small business, as spelled out in my rant, RecoverDomainName, linked to above. Thanx!
@ ggc86 said: “why are the registrars allowed to profit from selling or auctioning off trademarked domain names while nobody else can?”
Exactly my thoughts.
Joshua
Yourlawyer.com just won a procedural motion.
I think they got a long way to go to win the case
Why dont they crack down on the shady practices that go on with PPC, revenue partner shares and web traffic metrics as not ONE company will ever discuss these items with a domainer. We dont want too much info in the hands of a domain owner, they may actually make more money than a parking company if they knew where the traffic came from! God forbid that ever happen.