One of the nuggets in the The 312 page ICANN gTLD Guidebook 4th edition, released over the weekend was a catch all disqualification clause: (Guidebook 1-16/1-17)
“Circumstance where ICANN can deny an otherwise qualified application include, but are not limited to:
“”Where the applicant or any partner, officer, director, or manager or any person owning more than 15% of the applicant:
“”Is the subject of a pattern of of decision indicating liability for or repeated practice of bad faith by acquiring domain names for the primary purpose of selling, renting or otherwise transferring domain name registrations to trademark or service mark holders or to a competitor for valuable consideration in excess of documented out of pocket costs.””
“”Using domain names with an intent to attract for commercial gain internet users to a website, or other online location, by creating a likelihood of confusion with a trademark or service holder as to the source sponsorship, affiliation or endorsement of the website or location of a product or service on a website””
So reading this language, could a domainer who lets say lost 3 UDRP’s or WIPO cases in his life, be disqualified from owning or being involved in a new gTLD?
Could a trademark group to object to an application for a new gTLD, on the basis that one of the shareholders of the applicant was a domainer, who having lost 3 UDRP or WIPO’s engaged in a pattern of bad faith? .
Certainly there would seem, under this language, to be some number of decisions, that if they went against a domainer, that would disqualify him from owning 15% or more of an applicant of a new gTLD or be an officer, director, partner or manager of an applicant.
Of course trademark groups would probably say 2 decisions were enough to form a pattern.
The Guidebook of course doesn’t provide any guidance as to what would constitute a pattern but any applicant should be concerned with their application being potentially knock out because of having a domainer on its team.
With as unpredicatble as UDRP and WIPO decision are, many domainers may have lost 2 or more of these.
Does this sounds a little unfair to anyone?
Yep, you’re on the money. As anyone could have predicted, the IP people have thrown their erstwhile anti-gTLD allies under the bus. But if you’re a domainer and think that new gTLDs are a fool’s game, you won’t care because you don’t want anything to with new gTLDs anyway. Right?
Antony
Antony
So someone who lost a few WIPO’s and UDRP is now put into the same barrel as felons and those who have been adjudicates by a court for fraud, another 2 dis-qualifiers.
@Michael. I think it’s insane, don’t get me wrong. In fact I said so earlier today in a blog post. But it’s been in the wind for a long time, and if I think I said in the comments to this blog that an IP lawyer would throw an anvil to a drowning domainer if he could.
How many trademark lawsuits have eBay and Google lost?
Notice you there are time limits in 1-16 for felonies, etc.
“- within the past ten years, has been convicted of a felony, or of a misdemeanor related to financial or corporate governance activities……
– within the past ten years, has been disciplined by any government ……”
So, a serial rapist or murderer can get a new TLD, as long as 10 years has passed. Also note that there’s no “innocent until proven guilty” because of:
“is *currently* involved in any judicial or regulatory proceeding that *could* result in a conviction, judgment, determination, or discipline of the type specified in (i) or (ii)”
There are no time limits on the items Michael mentioned.
It would seem to me that a “pattern” must be supported with evidence of “clear” bad faith intent. In my opinion, a few “close” loses — that could have gone either way — should not result in disqualification. Take the recent Hayward case, for example. But maybe I’m just talking common sense, which seems to be a lost trait these days on this planet.
Roger
Of course you or I might define a pattern differently.
I would say it would take at least 10 losses but others might claim as little as 2 are sufficient.
But here is the real issue.
Time and money.
The stakes are quite high as you know $185K application fee, other fees and costs which most expect to run a total of $500K just to get your application in the door.
Now if you are going to apply for a new gTLD as a single shareholder company whose sole shareholder is a domainer that’s your business and your risk.
However how about a company that has a domainer involved as a shareholder (15% or more) or a director, officer, etc. They are taking a huge risk that someone like a trademark holder will oppose the application based on that domainers participation. Any objection under the guidebook your looking at a 5 month delay at minimum. Time and money.
If the objection is upheld and the application is thrown out because the powers that be found for example 3 lossses to be a pattern, your taking about a huge amount of lost time and money, so knowing this will a major player take the “risk” of including a domainer in their company?
Its a much bigger issue that people recognize because it has a chilling effect putting the Scarlett Letter on domainers
MHB –
It’s not necessarily about choosing a domainer as a partner but rather choosing a domainer with a clear bad faith track record as a partner. Does any business want a partner with a track record of violating third party rights? One must then choose partners wisely. There must be a mechanism for brand owners to defend against those domainers that are clearly bad actors. Any better ideas out there?
Roger
Roger
But that wraps around to the question of what is a “clear bad faith track record” and how much time and effort is a applicant willing to risk on their assessment of that record.
For example you might think it takes 10 decisions for someone to have a “clear bad faith track record” but a trademark holder may argue the number is 2.
Just putting the question into issue is going to use a delay of months and money.
Most applicants that are going to avoid the whole issue and exclude domainers.
Why risk it?
I just recalled that the infamous “Standard Tactics LLC” lost several UDRPs (search WIPO and NAF). Does this mean GoDaddy would be prevented from owning new TLDs?
George
With the vertical integration rules, Godaddy.com would not be able to own any gTLD directly in any event
No?
True, Mike, but I don’t think they’ve been finalized. There’s no consensus at all on that issue.