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Zak Muscovitch Unanimously Appointed General Counsel of the ICA

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When Phil Corwin left the Internet Commerce Association (ICA), domain industry attorney and ICA member Zak Muscovitch stepped up into the role of General Counsel on an interim basis. According to an email I received this morning, Zak has been unanimously approved by the ICA’s Board of Directors as the organization’s General Counsel.

I think this is great news for domain investors. Not only is Zak looked upon as one of the smartest intellectual property attorneys with a focus on the domain name space, but Zak also has a stellar reputation among his peers outside of the domain industry. He has been advocating on behalf of domain name owners and investors, and it is great that the interim label has been removed from the title.

I reached out to Zak to ask about how this role will impact his law practice, and here’s what he shared with me

Dribbble Loses Effort to Get Dribble.com via UDRP

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A company called Dribbble (notice the 3 “b’s” in its branding) filed a UDRP to try and wrest control of the Dribble.com domain name, which had been owned by the registrant since 1997. As I suspected when I saw the initial UDRP filing, the domain owner won the UDRP proceeding and will be allowed to retain the domain name.

The domain owner has owned Dribble.com for many years. According to the decision, “When the Complaint was filed, the disputed domain name resolved to a website which essentially consisted of pay-per-click links for services such as logo design, website design, illustration design, flyer design, graphic design and the like.” In a UDRP though, the complainant must prove that the domain name was registered and is being used in bad faith. The first part of that would seem to be impossible given the registration date and the date Dribbble was founded.

Here’s what the panel ruled:

How Does Whois Data Help Your Business?

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Andrew Allemann has written about the pending changes to the Whois records system. I also wrote about the changes to Whois that will be necessary for domain registrars to comply with GDPR.

Without a doubt, changes to the Whois system is going to cause major issues for anyone who buys domain names that are registered, especially domain name investors. Not only will it likely become much harder to get in touch with domain name owners to make a purchase inquiry, but it could become more difficult to track the provenance of a domain name. This could effectively make it more risky to buy a domain name from a third party.

From my perspective, drastic changes to the Whois system

Video: Braden Pollock and Nat Cohen Discuss UDRP Reform

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One of the biggest risks to domain name investors is a UDRP. Pretty much any company can file a UDRP against any domain name. Hiring a lawyer to fight a UDRP can be costly (perhaps less so than not hiring one), and even with top representation, a UDRP can be decided in favor of the complainant.

The Internet Commerce Association was created to fight for the rights and interests of domain name investors. The ICA has some great informational resources to assist domain name owners whose domain name is subject of a UDRP. The organization also makes efforts to ensure the UDRP process is fair for domain investors. In fact, it was the ICA that helped to discredit and eliminate the retroactive bad faith theory that impacted some high value domain names.

During NamesCon, Braden Pollock sat down with ICA Board Member Nat Cohen, and they chatted about the UDRP reform efforts current being undertaken by the ICA. The interview was sponsored, edited, and published by NamePros. It is absolutely worth 15 minutes of your time today.

Phil Corwin Leaves the ICA

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The Internet Commerce Association (ICA) just emailed its membership to notify them that longtime ICA Counsel Phil Corwin is leaving the organization to pursue another opportunity. Taking his place as Counsel on an interim basis is intellectual property (and domain industry) attorney Zak Muscovitch.

Commenting on Phil’s departure, the ICA shared the following with its members (I received permission to publish this):

“While no one can replace Phil, we will look for new counsel with particular strengths in the priorities we see ahead of us in our second decade. 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. The ICA has been working for months to develop a comprehensive long-term strategy to counter these movements and we think we have a solid plan that, with your help and support, will protect the future of domain investing.

ICA’s 2018 mission will focus on three core areas; first, Represent and defend the domain community in policy matters affecting us. Second, Promote a positive perception of the domain community through education and engagement with policy makers, journalists, and others whose work influences our industry. Third, Build a supportive community among our members. We believe by focusing on these three core areas, we can make the biggest impact for our membership.

Phil has left the ICA is a strong position. In our first decade, Phil put us on the map, establishing us an important stakeholder in the ICANN policy development process, and successfully advocated on dozens of issues large and small that profoundly benefited the domain industry. He leaves an enduring legacy as one of the architects of the policy framework that governs the domain name system. We wish Phil well in his new endeavors. Phil will remain on the ICA-mail and ICA-social list for a few days and will have access to ICA’s NamePros forum, should anyone wish to reach him there. His responses may be delayed as he is embarking on a 25-hour trip back from ICANN 60 in Abu Dhabi this evening.

The ICA Board is excited about the opportunity to continue our growth building on the foundation that Phil created. We’ll be reaching out to our membership to solicit your support and guidance during this transition. ”

Phil has become one of the most recognizable faces of the ICA, and his presence will be missed at ICANN meetings and various events where he represented the ICA and domain name owners. Throughout the years, the ICA has done a great job of protecting the interests of domain name owners, and I am confident the Board of Directors will be able to find someone who will continue to advocate to ICANN, governments, and organizations on behalf of our group.

I wish Phil all the best, and I look forward to hearing about his permanent replacement.

ICA Successfully Advocates to Discredit the Dangerous Retroactive Bad Faith Theory Under the UDRP

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Let’s say you register a domain name today. You’ve done your due diligence, and you see there aren’t any companies that use the keyword(s) in your domain name as a trademark or for their brand name. A few years from now, some company launches with its brand matching your domain name.

The company now wants your matching domain name, but they don’t want to pay you for it – they want to take it from you. Until recently the company could file a UDRP complaint seeking the transfer of your domain and reasonably hope to succeed in being awarded your domain by the UDRP panel. The company would rely on a fringe interpretation of the UDRP known as “Retroactive Bad Faith” (RBF) that some panelists used to justify the transfer of long registered domain names to owners of trademark rights that arose since the domain was registered.

RBF had been cited in a number of UDRPs. One particular case that stands out is the UDRP for Camilla.com. Here’s what Andrew Allemann wrote about that UDRP decision, which ended in a transfer ruling in favor of the complainant:

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