.XYZ Domain Name Trademark “Infringement”: Registrants Are Guilty Until Proven Innocent

xyz-logo-purpleI got an email from a reader that thought he had received a UDRP or a URS on his .xyz domain name. It turned out he was wrong. The registry had suspended his domain name.

“For the first time ever, I have received a UDRP on one of my domain names. Well, I’m actually not sure if this is a UDRP or even a URS, but it’s either one of those or something similar.”

He got an email from his registrar Name.com about one of his .xyz domain names:

Hello,

Name.com was contacted by the .XYZ Registry regarding the domain referenced in the subject line of this email.  The domain has been suspended as the Registry has received complaints from a party claiming to be the Registered Mark owner.   This suspension will last for 30 days. At the end of the 30 days, the domain name will be transferred if the registrant does not contact xyz_abuse@xyz.xyz with clearly convincing evidence that the registration does not infringe on the trademark owners rights and is not likely to lead to consumer confusion.

Please direct any questions you might have to the .XYZ registry regarding this matter and certainly let us know if we can be of assistance.

The owner checked the domain’s status after he saw this email, and it was suspended (serverHold). Domains are never suspended before there is a UDRP or URS decision or a court order. It seems that some some New gTLD registries, trying to protect their product, have taken simple trademark complaints way too far.

“This seems quite odd that the domain was stripped of all its functionality before I was able to respond to anything.”

The domain name was not parked, not for sale and it is actually a generic term that happens to match a trademark. Like thousands of domain names like apple.xyz, e.estate, domains.report etc. etc. etc… These days it is nearly impossible to find a one-word domain that in not trademarked in one part of the world. Half of the .xyz domains should suspended now.

I asked the .xyz for an explanation of how and why this happened and this is what I got:

“We are very proactive in our abuse mitigation in order to keep our namespace safe and to do our part in making the internet a better place. This is all pursuant to our anti-abuse polices and Section 2 of Exhibit A of our RA with ICANN. When we receive a complaint about any kind of abuse, including trademark infringement, we investigate. If we find trademark infringement, we will suspend the domain name and give the registrant 30 days to rebut our finding by contacting us. If they can provide evidence that overturns our finding, we will unsuspend the domain.

Since the registrants are the customers of the registrar and NOT the registry, we do not contact them directly. In fact, registrars do not like us to reach out to registrants directly. Instead, we immediately notify the registrar and request that the registrant contact us if they disagree with our finding.

In this particular case, we received a complaint from xxx, who owns a trademark for xxx. The registrant has not reached out to us yet. However, if he or she can provide evidence that the registration is not in violation of xxx’s trademark rights to the mark xxx, we will unsuspend the domain.

We work very hard to prevent abuse, but we also always give registrants a chance to respond to our findings. Hope this clears everything up. ”

I can’t say I am satisfied with the response in the slightest.

First of all abuse is mainly referred to spam, scam and other types of illegal behavior and fraud. If there is a complaint for trademark infringement then the correct way to remedy it is to file for a UDRP or a URS complaint. (or file a lawsuit) Suspending a domain name AND then transferring to the complainant overrides all the rules set by ICANN.

WOW. .XYZ registry created their own URS that is 10 times worse than the real thing!

The .xyz seems to think that the registrant is guilty until proven innocent. Are they both the registry and the judge? How did they investigate? Did they open a dictionary? Visited the inactive website? Is the owner supposed to trust .XYZ’s judgement?

How is the registrant supposed to rebut the non-existent findings? Is the finding simply that the company has a trademark? Then the response of the owner should be “this is a dictionary word and the domain displays no ads of the company”. No infringement. Case closed.

And even if the .xyz registry finds necessary for a domain name owner to explain the obvious (that .xyz supposedly investigated), why was the domain name suspended? Was it a threat to the trademark holder? Not even a UDRP complaint suspends the domain.

This is not the way to protect a New gTLD registry. .XYZ once again makes a huge mistake.

Sold.Domains

About Konstantinos Zournas

Konstantinos studied Computer Engineering and Computer Science in London and lives in Athens, Greece. He works on domain names, websites and software development. Has been online since 1995 & domaining since 2002.

43 comments

  1. They will claw the name back, and sell to the trademarked owner for a high price. This is taking the p@”s!

  2. The irony is that the name space they are seeking to protect is all pigeon shit anyways.

  3. petre7Domain Observer

    There are so many stupid trademarks on common generic dictionary words (even like the word “real estate”) in every country around the world. I agree that they have gone too far this time.

    • needless to say, it is the modern principle of law that a respondent is innocent until proven guilty by the judge.

  4. WHAT!!!??? YOU’VE GOT TO BE KIDDING!!!!!

    Tyrants take things without due process…. Dictators take things without due process….The .XYZ Registry is playing both judge and executioner….It looks like we have a new scandal heating up… Grab some popcorn and enjoy the circus.

    • The current scandal has hardly been mentioned in the domainsphere! Something so big and concerning only tickles the fringes and fades away.

      • Blimp – I certainly agree with your analysis…..Whenever FRAUD is a concern, everyone in the industry runs for the hills…..Too many conflict of interest’s……

  5. .xyz still going to be the next .com, imagine that was your online store, your livelyhood, many marks are similar, look at bespoke

    Wow, This is why you do not purchase GTLD’s, read the hundreds of pages of disclosure, you basically have no rights, they are doing you a favor, by you giving them money for a string of binary URL

  6. .xyz registry is in breach period. the domain owner should file a complaint under accreditation disputes, at icann.org

  7. just one of the many problems with privately owned tlds.

    • Verisign is not exactly a public entity.

      • Yup.
        I was gunna be a .law that had a $349 price per year.
        I said to myself, I wonder if I am succesful will thy just kack up the premiums to 5k a year, 10k,…20k?
        Decided not worth the risk.
        Will just stick with .com

      • Verisign is as private as any other .TLD

      • .com has stricter rules than the new gtlds. From what I see new gtlds can do pretty much anything.

      • Also, verisign is end user diversified. Hence, the will never just pick up premium names and raise prices arbitrarily. Believe you me,…if you build out attorney.law into something special,…the landlord will one day raise the rent. You dont really own the domain you are leasing and while this is true in theory with all domains, THIS WILL BECOME MORE APPARENT WITH NICHE G’S if/when they are successful. How do I know???? Because they ALREADY charge $350 – $5000 premiums on the best names. They are telegraphing that you are there to be RAPED.

  8. So let me get this straight …

    The primary argument made on behalf of .XYZ is that you can find “blah” brand name available to register in .XYZ even when “blah” is already taken in all the more popular (and arguably better) TLDs.

    Yet if “blah” brand name IS already registered in .COM, .NET, .ORG, .INFO, .ME, .US, .BIZ, .IO, .TV, .PW, .LINK, .CLICK, .MEDIA, .SITE, .WEBSITE, .VENTURES, .NEWS, and so forth … then there’s a near certainty that “blah” brand name is also already covered by at least 1 trademark.

    And then it turns out that any preceding trademark is sufficient grounds for the registry to confiscate your domain?

    Come in, everybody! Everything is available in .XYZ. What? Wait! You registered a name that preexisted? Not allowed. You should only register names in .XYZ that nobody cares about in other extensions.

    Face it, folks, you’re chosing .XYZ for “blah” brand name because you’re the last person to arrive at the party. Only carrots and whipped dip left; so eat hearty! Just watch out for the host … because he’ll grab that half-eaten baby carrot out of your mouth with forceps.

  9. Another reason to never buy an .xyz domain.

  10. I am not surprised at all. It is absurd to trust a registry who inflates numbers to deceive consumers. Daniel Negari would do anything to make more money.

  11. We operate TLDs as a public good. These properties although owned and paid for by registries are assets that were entrusted to us by the global internet population whom ICANN represents. For a registry to be judge, jury and executioner seems to violate the trust that has been bestowed upon us to run the extension in the best interest of Internet users.

    Colin.club

    • Thank you Colin.
      It’s good to know what other registries think and how they operate in similar circumstances.

    • Colin – Thanks for clearing that up. Your brilliant comment should win accolades by all Internet users:

      “For a registry to be judge, jury and executioner seems to violate the trust that has been bestowed upon us to run the extension in the best interest of Internet users.”

    • It does matter who runs a registry – especially when all the nTLD registries remain untested by time.

      Statements like yours, Colin, especially when compared to the prevarications of certain other registry CEOs, are a good reason why I – and many more people besides – have bought .CLUB domains rather than strings in some less reliable nTLD.

    • I will definitely register more .club domains.

      • dot club has the right attitude, just the wrong string ..

      • Why wrong string? The only problem is they don’t more like it.

      • It’s not really that universal beyond the English world.

      • @adesso,

        “Club” is used in several languages apart from English. Spanish, for example, which is the #2 language on earth.

        You do realize – at least I hope you do – that the Middle East, Russia, Japan, China, and east Asia don’t use our alphabet. After subtracting those billions of people, how “universal” is .XYZ?

        In point of fact, the regions that use an alphabet ending in XYZ also tend to be the regions where “club” is a native word or a recognized loan word.

      • Club is even used in countries that don’t use the latin alphabet. e.g. China or Japan.

      • @Konstantinos,

        You’re undoubtedly right. The idea of a club is a cultural import. Clubs were founded for expats at first, and the term has been adopted by the languages around them. Same for “soap opera” in English, which is borrowed from an Italian cultural import.

  12. I am loving your jokes, .xyz a full of shit and wasting, doesnt matter google bought abc.xyz or whatever, come to reality people, you gonna get UDRP, URS anyway by .com owner , two days early or late, it will hit your butt…

  13. Seems funny how the onus is put on the purchaser to not purchase a trademarked domain when the seller(Registrar and Registry) is more than willing to sell it to anyone who will pay and only act if there is a complaint from the trademark holder. You have to wonder why the burden is not placed on the seller to only sell a trademarked domain to the trademark holder? They are the ones providing the trademarked property in the first place and should have to reimburse any and all cost’s to all parties involved. If ICANN wants the GTLDs to survive and proliferate, then they better get these issue’s solved as the general public has no clue about these rules and would certainly get turned off by constantly losing their domains!

  14. can you give an example where .com has stricter rules and is not pertinent to the contract ? also, the only reason Verisign is not applying the off-the-registry model pricing is because they cant, contractually. Do you think Verisign will not be claiming the same terms some time soon, when the .com contract is up for renewal ?

  15. This is really disappointing of the .XYZ registry. Maybe Negari can comment if this is just some misunderstanding by some employee or this is policy. IF this is policy it means no URS/UDRP is needed anymore, just a complaint to the registry which will judge & decide & in the meantime suspend a domain.

  16. Why do u think goog bought the whole alphabet in xyz? So they can claim any word created violates this “policy” and proceed to claim ownership on any word they like taking control even further.

    This is wayyyy bigger than we can comprehend now and is just the start of what’s to come. So look out cause theirs a whole lot brewing in the works with chganges on the web !!

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