Dear ICA Members,

I write this spring with urgent news regarding your the future of domain ownership. Kentucky’s unprecedented attempt to seize domains outside of due process may have just been the start. Now comes news that NIC Argentina is retroactively limiting registrants to a mere 200 domains, forcing current .AR owners to consider abandonment or forfeiture of countless valuable domains. After two and a half years successful years advocating for your rights, the ICA endeavors to fight your fight wherever in the world it occurs. But the ICA faces serious budget shortfalls unless members like you continue to renew their commitment for 2009.

On a positive note, we would like to thank Aftermarket.com for generously providing time during their auction at Domain Roundtable, being held June 14-17 in Washington, D.C., for the ICA to auction domains donated by our members and the public. Please email contact@internetcommerce.org to donate one of your domains and support the cause!

Effective lobbying in Washington and within ICANN doesn’t come cheap, but even more expensive is losing your advocate in times of a changing business landscape. The ICA is working hard to keep the discussion honest and fighting to ensure your voice is heard. Other stakeholders are aggressively pushing for new rules that put the burden on you—domain owners—to bear all the risk while they take the profit. A strong and devoted ICA is your best bet to ensure your interests are present, and part of the discussion.

While the ICA reached a peak of more than 120 members in 2008, renewal rates for 2009 so far have been disappointing and have limited our ability to reach important budget milestones. The ICA’s two platinum and one gold sponsors, Sedo, Oversee and Thought Convergence, are not enough to keep the ICA fighting on their own. Only you can ensure the ICA is on the job fighting to protect the domain community.

Speaking of the domain community, keeping you apprised of the threats facing domain owners and where we focus our efforts has always been a priority for the ICA. We refocused efforts at the start of 2009 to improve the quality and frequency of the ICA newsletter, to include more timely updates of our activities at InternetCommerce.org, and to open better channels of communication with our members (see our new RSS link below!). Because only an informed domain owner can appreciate the value the ICA brings their business, many of you have continued to receive the ICA newsletter and have enjoyed access to InternetCommerce.org despite an expired membership. If you are unsure of your expiration date, please email contact@internetcommerce.org and we will be happy to look up your account details.

Please keep in touch and let us know what issues concern you the most and what the ICA can do to help you make smarter decisions for your business. You can now follow the ICA RSS feed to keep track of our fight for domain owner rights! Please bookmark http://www.internetcommerce.org/rss.xml.

Best Wishes,

Jeremiah Johnston
President, Internet Commerce Association

ICA Update

Watch your inbox or mail box for your 2009 Membership Renewal form. Questions regarding memberships, expiration dates and more can be sent to contact@internetcommerce.org. Your renewal is central to keeping the ICA on the beat when Congress is in session or when ICANN reps are meeting to change the rules once again, so please take the time to reaffirm your commitment to our mission today.

ICANN UPDATE

The ICA’s reputation as valuable member of the stakeholder community in the web space reached a new milestone last week when the ICA was recognized by a committee of the International Trademark Association. During the global trademark group’s annual meeting in Seattle, the ICA was recognized for its work with their Implementation Recommendation Team (IRT), a panel tasked with providing feedback to ICANN in regards to the rollout of new gTLDs. As reported on InternetCommerce.org, ICA Counsel Philip Corwin recently traveled to San Francisco to present ICA’s views on gTLDs, including our critique of the proposed Uniform Rapid Suspension (URS):

•    Even according to WIPO, it would displace a “significant majority” of disputes that now go to the UDRP;

•    Extreme low cost of filing per name ($1-2 in large batches) invites abuse and does not support adequate review of complaints;

•    Inadequate penalties to discourage complainant abuse;

•    Permits suspension of a domain absent any infringing use;

•    Likely to be made applicable to .com and other incumbent gTLDs within a few years after being adopted for new gTLDs, changing the fundamental rules of the game after major investments have been made in domain portfolios;

•    Procedurally, the IRT allows trademark interests to address their concerns with the operation of the current UDRP while registrant problems go unaddressed

The invitation to participate is greatly appreciated and while the groups represent different constituencies, participation allowed both to share opinions in a productive setting. The IRT had its own feedback for the ICA, and both during our presentation and at other points in the day various members of the IRT:

•    Conceded it was their intent that the URS largely displace the UDRP, and hoped it would be made applicable to .com and other incumbent gTLDs ASAP;

•    Admitted that the URS was more “draconian” than the UDRP, in that suspension of a domain would immediately deprive the registrant of income;

•    Did not argue with the proposition that UDRP reform was needed but asserted that it would take too long to get agreement within the ICANN process;
ICA made clear that it was ready to constructively engage on UDRP reform and work with trademark holders to develop more expeditious and less expensive means of addressing the approximately one-third of UDRP complaints that now go to default judgment - so long as that occurs within a process where expert counsel can propose our own reforms to meet registrant concerns with the present UDRP.

LEGAL UPDATE

ICA Files Brief While Domain Owners Await Critical Decision by State Supreme Court. Despite a victory at the appellate level, the ICA submitted an amicus brief to the Kentucky Supreme Court urging the state’s highest judicial body to uphold the courts ruling in the alarming domain name seizure case. Visit InternetCommerce.org for more details and watch this space for more information as it becomes available.

District Court Abused Discretion in Issuing Preliminary Injunction Regarding Domain Name Dispute. The U.S. Court of Appeals for the Fifth Circuit ruled April 15th that a federal district court abused its discretion by issuing a preliminary injunction without considering fair use under the Anticybersquatting Consumer Protection Act (ACPA). The court reasoned its decision on the fact that the likelihood of confusion test in trademark infringement law is different and more comprehensive than the test under the ACPA. The registrant of sotherncompany.com and southerncopany.com, who also owns more than 600,000 domain names, was linking to pay-per-click advertising on the domains before receiving notice of a UDRD complaint from Southern Company. After suing in the state courts of south Texas to prevent a transfer should they lose the UDRP dispute, the domain registrant was sued themselves in the federal courts for the northern districts of Texas, whereby the court granted the request for a preliminary injunction from Southern Company to prevent the registrant’s use of the domain names. After filing an unsuccessful motion with the district court to reconsider, the registrant appealed on the grounds that their use of the domains were protected by fair use and that the district court should have ignored the findings of the UDRP panel and instead should have applied the nine factors used to determine bad faith in trademark disputes. Please see Southern Co. v. Dauben, 5th Cir, 2009 for more information.

Canadian Internet Registration Authority Unanimously Denies Transfer of ForSale.ca. In a dispute filed with the Domain Name Dispute Resolution Policy for .ca domains, Canada’s ccTLD, a three member panel rejected the complaint filed by Globe Media International Corporation. This was the second attempt by the complainant to strip ownership of the domain as they looked to capitalize on a change of ownership to reassert their claims. After losing their initial complaint, the registrant let the registration lapse in early 2009. Once it became available for re-registration, registrar Baremetal purchased the domain name and later re-sold it to Bonfire Development for almost C$30,000. Globe Media, brought a CDRP complaint asserting its registered trademark WWW.FOR-SALE.CA after attempting to purchase the domain name from Bonfire Development for C$5,000. The mark was registered on January 21 2005, over four years after the domain name was first registered. For more information, please visit Globe Media Int’l Corp. v. Bonfire Development Inc. (April 15 2009).

PLEASE NOTE: the legal updates provided in the ICA newsletter are for informational purposes only and do not constitute legal advice. Please consult your attorney for more information on these or other topics.

UPCOMING EVENTS

June 1-4, 2009, Amsterdam, The Netherlands:
•    T.R.A.F.F.I.C. ccTLD, presented by Rick Latona Auctions, is a chance for north American and European domain owners to gather under one roof to discuss ccTLDs and their role in a well-balanced domain portfolio. Speakers include ICA president Jeremiah Johnston, ICA board member Ron Jackson, and more. The Keynote Speaker, Dr. Kevin Ham is a must see guest and the 24 hour lights of Amsterdam will be sure to keep the discussions going late into the night.
June 14-17, 2009, Washington, D.C.

•    Domain Roundtable, presented by ICA Gold Sponsor Member Thought Convergence, is an annual conference focused on domain names and new products, technologies and companies in the domain marketplace. The conference brings together serious players in the domain industry, allowing new and veteran domainers the opportunity to converse with like-minded peers and create an awareness of current industry trends from the people who are setting them.

ICA is very happy to announce that Domain Roundtable organizers have graciously offered time during their live premium domain auction to sell domains donated to the ICA by members and those wishing to support the advocacy group. The live ICA Auction will be held during the conference on June 16th at 4p.m.EDT until 7p.m. EDT.

We are encouraging ICA members and anyone from the domain community as a whole, to donate domain names for this auction event. Applicants can submit their domains to the ICA by email to info_ica@internetcommerce.org. All of the proceeds from the domains sold in auction will go directly to supporting upcoming ICA initiatives, such as lobbying for domain owner rights in Washington and with ICANN. The domain donors who participate will receive a personal “thank you” on the ICA website and will receive an email from the ICA, confirming the amount received from the sale of their donated domain for tax purposes.

FAST FACTS

The World Intellectual Property Association, based in Geneva, Switzerland, recently reported a record number of new cybersquatting cases processed by the United Nations agency in 2008, up eight percent from 2007. WIPO noted that 30% of the cases were settled without a panel decision and those that did reach a panel resulted in a decision for the complainant in 85% of the cases.

A breakdown of the complaints according to country found that the U.S. accounted for 44% of the total, with France, the United Kingdom, and Germany rounding out the top four.

Most interesting is that while WIPO, the most popular arbitrator hearing UDRP complaints, has reported a rise in complaints year to year, the second most popular arbitrator, the National Arbitration Forum in Minneapolis, Minnesota, reports that complaints fell by 2% in 2008. The ICA wonders if WIPO’s frequent press releases highlighting the success complainants find with their panelists has any impact on these trends.