IPO warns about premium loopholes in new gTLD trademark protection

It seems like it’s been an age since we last heard the intellectual property lobby pushing for stronger rights protection mechanisms in new gTLDs, but they’re back just in time for the first launches.

The Intellectual Property Owners Association has written to ICANN this week to warn about loopholes in the standard new gTLD Registry Agreement related to premium name reservations that the IPO said “will adversely affect trademark rights holders”.

The letter (pdf) makes reference to two specific parts of the contract.

Specification 5 enables registries to reserve up to 100 names “necessary for the operation or promotion of the TLD” in section 3.2 and an unlimited number of names in section 3.3.

Section 3.3 is vague enough that I’m aware of new gTLD applicants that still don’t know whether it allows them to reserve an unlimited number of “premium” names or not.

However, most new gTLD registries I’ve talked to appear to be convinced that it does. DotKiwi’s recently announced premium plan seems to be taking advantage of 3.3.

The IPO is worried that massive lists of premium names will wind up containing lots of strings matching trademarks, which will prevent mark holders from defensively registering during Sunrise.

Worse, the IPO said it could lead to registries milking trademark owners for huge fees to register their “premium” marks. It said:

such reservations would invite the abuse of protected marks. For instance, Registry Operators may reserve the marks of protected brands to leverage premium sales. Further, Registry Operators may use this ability to release names to market competitors of the brand owners.

The counter argument, of course, is that owners of spurious trademarks on generic terms could game Sunrise periods to get their hands of potentially valuable domain names (cf. the .eu sunrise)

The IPO wants ICANN to expand the Trademark Clearinghouse to send Trademark Claims notices to new gTLD registries when they reserve a name matching a listed trademark.

It also wants a new dispute procedure that mark owners could use to get names released from reserved status. It would be like UDRP, but modified to allow for registries to reserve dictionary words related to their gTLD strings, the IPO said.

If my sense of the mood of ICANN’s leadership during last month’s Buenos Aires meeting is anything to go by, I can’t see these last-minute requests for changes to RPMs getting much traction, but you never know.

Nominet drops libel lawsuit against domain blogger

UK registry Nominet has withdrawn its lawsuit against a domainer who had allegedly published “defamatory” remarks about CEO Lesley Cowley on his blog.

The defamation complaint was filed against Graeme Wingate over his blog Avoid.co.uk in January.

Nominet said yesterday that it “continues to refute entirely the untrue allegations made” on the site, which focuses on Cowley’s “dishonest” behavior surrounding Direct.uk and the ongoing controversy related to the 2008 board-level scandal and subsequent employment tribunal of former policy chief Emily Taylor.

Cowley said in a statement:

With a major programme of work underway to transform the .uk namespace, this action is now an unwelcome distraction. I refute the allegations entirely, but recognise that a far better use of the team’s time and energy is to focus on steering Nominet safely through a period of unprecedented change.

Nominet will pay Wingate’s costs.

It’s difficult to see this as anything other than a win for Wingate, who has continued to blog throughout the legal proceedings.

Wingate stood unsuccessfully for a seat on Nominet’s board of directors this year, alongside fellow Nominet critic Lucien Taylor, husband to Emily.

Why ICANN should stop taking the “Malvinas” issue seriously [RANT]

Here in the UK, we have something not very nice called the British National Party.

It’s a perfectly legal political party but, as the name may suggest, it has an overtly racist manifesto, garners few votes, and holds next to no power.

Voting BNP is frowned upon in polite company. Don’t expect too many dinner party invitations if you’re a supporter. It’s even legal here for employers to discriminate against card-carrying members.

The most unpleasant manifesto promise of the BNP is to “encourage the voluntary resettlement” of “immigrants”.

Britain, the BNP says, should be for its “indigenous people”, which it has described as “the people whose ancestors were the earliest settlers here after the last great Ice Age”.

That’s about 10,000 years ago. It’s basically the BNP’s way of rationalizing its racism with a cut-off point for what constitutes an “immigrant” that falls well before anyone with brown skin showed up.

None of this has anything to do with domain names, of course.

I only mention the BNP because its ludicrous views always spring to my mind whenever I hear an Argentinian activist raise the issue of the Falkland Islands at an ICANN meeting.

This happened quite a lot at the Public Forum of the ICANN 48 meeting in Buenos Aires, Argentina last Thursday.

It wasn’t the first time the Falklands have been discussed at an ICANN meeting but, on home turf, many locals who would not otherwise consider attending decided to show up to make their views known.

Argentinians call the Falklands archipelago, a British Overseas Territory situated in the southern Atlantic about 500km to the east of Argentina, the “Malvinas”.

Originally settled by France in the late 18th century, Britain has controlled the islands more or less continuously since 1834 and at intervals as far back as 1765, before Argentina existed.

Spain was in charge for a few decades from 1767 and then Argentina, after its independence, had a hold for a few years from 1829.

The only time Argentina has had a claim recently was during a two-month period in 1982, when Argentina invaded, starting a pointless war that claimed the lives of 255 British and 649 Argentinian service personnel, wounding a few thousand more.

In case this history lesson is new to you, I should point out that the Falklands are not and have never in living memory been in any way “occupied” by the UK.

The islanders are all British citizens and have the right of self-determination: they want to be British. According to the 2013 electoral roll, only 18 Argentinians live there, of a population of almost 3,000.

So it really boils my piss when I have to listen to Argentinians take to the mic at ICANN meetings to demand — demand — that ICANN transfers the Falklands ccTLD, .fk, to Argentina’s ccTLD operator, Nic.ar.

It turns my piss to steam when members of the ICANN board of directors humor these demands — vowing to take their concerns seriously or, even worse, agreeing with the use of terms like “occupation”.

This happened quite a lot on Thursday.

The ring-leader of the Argentine position is a guy called Sergio Salinas Porto. He’s president of Internauta Argentina, an organization of Argentinian internet users.

He seems to be a bit of a one-trick pony when it comes to public statements at ICANN meetings. The Latino Paul Foody, maybe. It’s possible that I’m giving him more credibility than he deserves.

He made similar demands at the ICANN meetings in Senegal in 2011 and Costa Rica last year. This time, however, he seems to have managed to drag some of his supporters with him.

The real-time interpretation provided by ICANN is not good enough to quote from directly at any length, but Internauta published its list of demands on its web site after the Public Forum. Among them (machine-translated from the original Spanish):

That the Argentine authorities (legal and technical secretariat – NIC.ar) will deliver the administration of ccTLDs .fk and .gs.

That all ccTLDs involving debate on issues of sovereignty and further promote colonialist acts or harboring or see these acts are protected from any administrative or factual act by ICANN are reviewed.

It also wants the Falklands referred to as the “Malvinas”, alongside “Falklands”, in ICANN documentation, and for .fk to fall into the Latin-American, rather than European, ICANN region.

But the key demand here is that control of a ccTLD that is currently delegated to a territory’s government — the Falkland Islands Government in this case — is transferred to the government of another country, based on emotive arguments such as “occupation” and “colonialism”.

At the mic, Salinas Porto reiterated these points almost word for word, judging by the ICANN interpreter’s translation — asking for the redelegation and using the same emotive arguments.

The demand was restated by multiple Argentinian commenters.

It was restated so many times that session moderator Bertrand de La Chappelle — who had graciously allowed Salinas Porto to jump to the front of the queue for the mic — took no small amount of flak from Internauta’s supporters for trying to hurry people along in the interests of timing.

One talked of “a dark and colonial power”, another talked of “decolonization”, one said he felt “invaded” by ICANN, a fourth said that “the Malvinas islands were taken by a colonial power by force”.

This is pure chutzpah.

It may be true that the Falklands were seized militarily by Britain. My history is not good enough to pass comment. Whatever happened, it was 180 years ago. Everyone involved is long dead.

Argentina indisputably seized the islands militarily during my lifetime. The records on this are pretty good. Living servicemen on both sides today bear the physical and emotional scars of Argentina’s folly.

Now consider that Argentina was among a coalition of Latin American nations that recently used the Governmental Advisory Committee to kill off the application from Patagonia Inc for the new gTLD .patagonia.

That was based on the governments’ claims that Patagonia — a region that covers areas of Argentina and Chile — should be a protected term in the domain name system. They have sovereignty, they claim.

Yet the Patagonia region was claimed by Argentina during the so-called “Conquest of the Desert”, an act of “colonization” that involved the “genocide” of over 1,000 indigenous people and dislocation of 15,000 more. That’s even more people than killed in 1982.

And Argentina did this act of colonization in 1870, three decades after the British took over the Falklands, which had no indigenous peoples (if you’re not counting the penguins).

If there’s a serious question about the ownership of .fk, shouldn’t the same logic should apply to .patagonia? Argentina can’t have it both ways, can it?

If the cut-off point for ownership of a territory is pre-1834, then Argentina can have no claim over .patagonia.

It’s a ludicrous thing to say, I know. I can barely believe I’m making the argument, it’s so silly. I feel almost Amish, or BNP, or one of the Conkies, to try to use an arbitrary cut-off date like that.

That’s probably why nobody from the UK took the mic at the ICANN Public Forum on Thursday to respond to Salinas Porto and Internauta’s supporters.

Maybe they didn’t want to provide oxygen to the illusion that there is a real debate here (in which case they’re smarter than me), or maybe they were far too polite to risk insulting their host nation by joining in on the trivialization of a political conflict that has resulted in the death and maiming of so many (in which case I’m embarrassing myself here).

But at least three members of the ICANN board did address the issue, vowing to treat the issue seriously and therefore compelling me to respond, regardless.

Notably, CEO Fadi Chehade, who grew up in Beirut, Lebanon, said it was a “very worthy question”, adding:

This was a chance for us to hear your views and appreciate your feelings about this. I must tell you on a personal basis, unlike living the history of colonialism I lived under a colonizer, personally, so I’m personally familiar with how you feel. But this is a very serious matter that requires some review and some thinking. I can assure you that we have listened to you and we will take your input as great learning for us.

Now, it’s quite possible that this was just the latest instance of Chehade “doing a Chehade” and telling his perceived audience what he perceived they wanted to hear.

His predecessor, Rod Beckstrom, was similarly accommodating to Salinas Porto during the Costa Rica meeting in 2012.

Chehade did not actually commit ICANN to address the issue.

But the Brits were in the audience too. And I think it’s fair to say that when we hear Argentinians bang on about the “Malvinas” — and we hear the ICANN board pay them heed — we either a) get angry or b) shake our heads and tut.

At the start of this article I compared the Argentinian argument to the BNP. To avoid doubt, I’m not saying that it’s racist. I could not begin to construct such an argument. I am saying that it’s silly, and probably based more on Argentinian nationalism than it is on any deficiencies in ICANN policy.

When ICANN in future responds to Argentinian arguments about the Falklands, these are some things to bear in mind:

• ICANN does not decide, and is not qualified to decide, what arbitrary subdivisions of our planet are or are not worthy of a ccTLD delegation.
• ICANN long ago decided to take its cues from the International Standards Organization, which in turn looks to the United Nations, when assembling its list of ccTLD identifiers.
• ICANN, via its IANA department, always pays attention to the wishes of the local populace when it decides whether to redelegate a ccTLD to a new operator.

These three bullet points are the only things an ICANN director needs to know when responding to anyone who uses the word “Malvinas” in a Public Forum statement.

“Taking it seriously” should only be an option if you’re trying to be polite.

GAC gives ICANN a way out on IGO acronyms

The ICANN Governmental Advisory Committee has reiterated its call for the protection of intergovernmental organization acronyms in the new gTLD program, but seems to have given ICANN a way to avoid a nasty confrontation.

In its official Communique from the just-concluded meeting in Buenos Aires, Argentina, the GAC provided the following advice concerning IGOs:

The GAC, together with IGOs, remains committed to continuing the dialogue with NGPC [ICANN's New gTLD Program Committee] on finalising the modalities for permanent protection of IGO acronyms at the second level, by putting in place a mechanism which would:

1. provide for a permanent system of notifications to both the potential registrant and the relevant IGO as to a possible conflict if a potential registrant seeks to register a domain name matching the acronym of that IGO;

2. allow the IGO a timely opportunity to effectively prevent potential misuse and confusion;

3. allow for a final and binding determination by an independent third party in order to resolve any disagreement between an IGO and a potential registrant; and

4. be at no cost or of a nominal cost only to the IGO.

This seems to be a departure from the GAC’s its Durban Communique, in which it had demanded “preventative” measures be put in place to stop third parties registering IGO acronyms.

As we reported earlier this week, the GNSO Council unanimously approved a resolution telling ICANN to remove IGO acronyms from existing block-lists, something the GAC had been demanding.

Now, it seems that ICANN has been given a relatively simple and less confrontational way of accepting the GAC’s watered-down advice.

The Trademark Claims alerts service and Uniform Rapid Suspension dispute resolution process combined would, by my reading, tick all four of the GAC’s boxes.

IGO acronyms do not currently qualify for either, because they’re not trademarks, but if ICANN can figure out a way to allow these strings into the Trademark Clearinghouse, it can probably give the GAC what it wants.

In my view, such a move wouldn’t trample on anyone else’s rights, it would not represent the kind of overkill the GAC originally wanted, nor would it be in conflict with the GNSO’s consensus resolution (which seems to envisage a future in which these acronyms get TMCH protection).

ICANN may have avoided the sticky situation I pondered earlier this week.

ICANN in a sticky spot as GNSO overrules GAC on block-lists

ICANN may have to decide which of its babies it loves the most — the GNSO or the GAC — after receiving conflicting marching orders on a controversial rights protection issue.

Essentially, the GAC has previously told ICANN to protect a bunch of acronyms representing international organizations — and ICANN did — but the GNSO today told ICANN to un-protect them.

The GNSO Council this afternoon passed a resolution to the effect that the acronyms of IGOs and international non-governmental organizations (INGOs) should not be blocked in new gTLDs.

This conflicts directly with the Governmental Advisory Committee’s longstanding advice, which states that IGOs should have their names and acronyms reserved in all new gTLDs.

The Council’s resolution was passed unanimously, enjoying the support of registries, registrars, non-commercial users, intellectual property interests… everyone.

It came at the end of a Policy Development Process that kicked off in 2011 after the GAC demanded that the International Olympic Committee and Red Cross/Red Crescent should have their names protected.

The PDP working group’s remit was later expanded to address new demands from the GAC, along with a UN-led coalition of IGOs, to also protect IGO and INGO names and acronyms.

The outcome of the PDP, which had most of its recommendations approved by the GNSO Council today, was to give the GAC most of what it wanted — but not everything.

The exact matches of the full IOC, RC/RC, IGO and INGO names should now become permanently ineligible for delegation as gTLDs. The same strings will also be eligible for the Trademark Claims service at the second level.

But, crucially, the GNSO Council has voted to not protect the acronyms of these organizations. Part of the lengthy resolution — apparently the longest the Council ever voted on — reads:

At the Top Level, Acronyms of the RCRC, IOC, IGOs and INGOs under consideration in this PDP shall not be considered as “Strings Ineligible for Delegation”; and

At the Second level, Acronyms of the RCRC, IOC, IGOs and INGO under consideration in this PDP shall not be withheld from registration. For the current round of New gTLDs, the temporary protections extended to the acronyms subject to this recommendation shall be removed from the Reserved Names List in Specification 5 of the New gTLD Registry Agreement.

The list of reserved names in Spec 5, which all new gTLD registries must block from launch, can be found here. The GNSO has basically told ICANN to remove the acronyms from it.

This means hundreds of strings like “who” and “idea” (which would have been reserved for the World Health Organization and the Institute for Development and Electoral Assistance respectively) should now become available to new gTLD registries to sell or otherwise allocate.

I say “should”, because the Council’s resolution still needs to be approved by the ICANN board before it becomes a full Consensus Policy, and to do so the board will have to reject (or reinterpret) the GAC’s advice.

The GAC, as of its last formal Communique, seemed to be of the opinion that it was going to receive all the protections that it asked for.

It has told ICANN for the last year that “IGOs are in an objectively different category to other rights holders” and that “their identifiers (both their names and their acronyms) need preventative protection”

It said in its advice from the Durban meeting (pdf) three months ago:

The GAC understands that the ICANN Board, further to its previous assurances, is prepared to fully implement GAC advice; an outstanding matter to be finalized is the practical and effective implementation of the permanent preventative protection of IGO acronyms at the second level.

The key word here seems to be “preventative”. Under the resolution passed by the GNSO Council today, IGO acronyms would be allowed to enter the Trademark Clearinghouse and participate in the Trademark Claims service, but Claims does not prevent anyone from registering a matching domain.

It’s looking like the ICANN board is going to have to make a call — does it accept the GAC advice, or does it accept the unanimous consensus position of the GNSO?

Given that much of ICANN 48 here in Buenos Aires this week has been a saccharine love-in for the “multistakeholder process”, it’s difficult to imagine a scenario in which the GNSO Council does not win out.