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Melbourne IT scales back HARM proposal

Kevin Murphy, November 14, 2012, Domain Policy

Melbourne IT has published a revised, less-complicated version of its High At-Risk Marks (HARM) proposal for protecting famous brands in the new gTLD program.

The new version throws more than a few bones to trademark lawyers, most of whom rejected many aspects of the original proposal at a meeting in Washington DC this September.

It’s a lot closer to the eight-point wish-list published jointly by the Intellectual Property Constituency and Business Constituency last month.

HARM envisions a two-tier set of trademark rights protection mechanisms in new gTLDs, with the super-famous brands that get cybersquatted and phished on a regular basis enjoying greater privileges.

Companies that could prove their trademarks were subject to regular abuse would, for example, benefit from a perpetual Trademark Claims notification service on “brand+keyword” domains.

The new version would lower the bar for inclusion on the list.

The first HARM said trademarks should be registered on five continents, but the new version reduces that to a single registration, provided that the jurisdiction does substantive review.

A provision to only extend the protection to five-year-old marks has also been removed, and the number of UDRP wins required to prove abuse has also been reduced from five to one.

I’ve previously expressed my fondness for the idea of using UDRP decisions to gauge the risk profile of a trademark, but it was recently pointed out to me that it may incentivize mark holders to pay people to cybersquat their marks, in order to win slam-dunk UDRPs and thus benefit from better RPMs, which makes me less fond of it.

Even if such skullduggery is an outside risk, I think a single UDRP win may be too low a bar, given the number of dubious decisions produced by panelists in the past.

The revised HARM would still exclude dictionary words from the special protections (as the paper points out, Apple and Gap would not be covered). The proposal states:

Melbourne IT believes it will be difficult to get consensus in the ICANN community that this mechanism should apply to all trademark owners, most of whom do not suffer any trademark abuse. Many trademarks also relate to generic dictionary words that would be inappropriate to block across all gTLDs.

The original HARM paper was put forth as compromise, designed to help prevent or mitigate the effects of most cybersquatting, while being slightly more palatable to registries and registrars than the usual all-or-nothing demands coming from trademark lawyers.

While not particularly elegant, most of its recommendations were found wanting by the ICANN community, which is as bitterly divided as always on the need for stronger rights protection mechanisms.

The IPC and BC did adopt some of its ideas in their recent joint statement on enhanced RPMs, including the idea that frequently squatted names should get better protection, but rejected many more of the Melbourne-proposed criteria for inclusion on the list.

Meanwhile, many registrars shook their heads, muttering something about cost, and new gTLD applicants staunchly rejected the ideas, based on the mistaken notion that paying their $185,000 has rendered the Applicant Guidebook immutable.

Read the new Melbourne IT paper here (pdf).

Geo gTLD applicants make “public interest” case for priority approval

Kevin Murphy, November 6, 2012, Domain Policy

ICANN’s has reached out to governments supporting geographic gTLD applicants over the last week, urging them to submit formal comments on the proposed “Draw” mechanism for prioritizing applications.

A barrage of correspondence from regional and city governments, some dating back as early as March when Digital Archery was still in play, has been published by ICANN over the last 48 hours.

They’re accompanied by much more recent responses from ICANN’s newly installed new gTLD program general manager, Christine Willett.

ICANN has heard from, among others, the state backers of .tirol, .zuerich, .hamburg and .berlin, all arguing that their geographic gTLD bids should be prioritized as being in the “public interest”.

The Draw mechanism would give priority to internationalized domain names, but not geographic gTLDs.

What’s missing from all the letters are any attempts to explain or justify the “public interest” claims.

ICANN’s responses are all the same: thanks for your letter, please contribute to the current public comment period on the proposed new gTLD prioritization lottery.

The letters can all be found on ICANN’s correspondence page. The comment period closes Friday.

Chehade sets out 12-point plan for next six months

Kevin Murphy, November 5, 2012, Domain Policy

ICANN CEO Fadi Chehade has set out his goals for ICANN over the next six months in an open letter to the community.

The ambitious 12-point to-do list includes finishing off the next Registrar Accreditation Agreement, finalizing the Trademark Clearinghouse, and launching “a community effort” to address the Whois debate.

The document was described by Chehade at the close of the Toronto meeting last month as his “scorecard” for “what I plan to prioritize and do between now and Beijing”.

The next big ICANN meeting is in Beijing next April.

The letter states that “operational excellence”, something the organization was frequently criticized for its lack of under its previous leadership, is ICANN’s “highest priority”.

The new gTLD program is naturally a big part of that. Chehade said that ICANN plans to:

Deliver on every aspect of the new gTLD program launch next year, meeting obligations and securing the necessary resources and personnel to lead the transition from what has been a policy-driven effort to implementation of a responsive and reliable operation. As a first step, we are working to advance the dialogue on implementation of the Trademark Clearing House. We must also execute the prioritization draw, evaluations, and pre-delegation tests flawlessly.

As part of that effort, a new gTLD services department will be created. Part of its task will be to monitor policy work to make sure the policies being created are “implementable”.

Chehade said that the divisive Whois issue, which he controversially referred to as an “easy” problem to solve during remarks in Toronto, will be subject to a new review:

To strengthen our commitment to the public interest, we will launch a community effort addressing the WHOIS debate in a strategic way, to resolve the longstanding open items in this area.

On the RAA, Chehade said that ICANN “will plan to reach consensus on a solid and enforceable Registrar Accreditation Agreement that is fair and balanced.”

The full letter, which also sets out goals for internationalization and the evolution of the multi-stakeholder model, can be downloaded here.

ICANN’s new gTLD fund at $352.3m

Kevin Murphy, November 2, 2012, Domain Policy

ICANN had $352.3 million in its new gTLD program bank account as of October 13, according to notes from a recent board meeting.

The numbers suggest that ICANN had only spent about $6 million on the program since the application window closed at the end of May.

With 1,930 applications at $186,000 a pop, excluding the seven refunds, ICANN should have grossed about $358 million.

The money is being held in a non-interest-bearing account, partly due to ICANN’s insistence that the program is not an exercise in self-enrichment.

Notes from the October 13 Board Finance Committee meeting also reveal that ICANN plans to revise its 2013 budget to account for the accelerated gTLD timetable.

The current budget was prepared before Digital Archery was scrapped and ICANN expected to process its applications in batches over two years. It now expects one batch lasting one year.

Trademark protection stalemate follows ICANN 45

Kevin Murphy, October 30, 2012, Domain Policy

Trademark interests and new gTLD applicants are at odds about trademark protection — again — following the ICANN meeting in Toronto two weeks ago.

In a welcomed, not-before-time show of cooperation, the Intellectual Property Constituency and Business Constituency submitted to ICANN a bulleted list of requests for improved rights protection mechanisms.

The list is, for the most part, not particularly egregious — calling for a permanent Trademark Claims service and a Uniform Rapid Suspension service that meets its cost goals, for example.

But the New TLD Applicants Group (NTAG), an observer component of the Registries Constituency, has dismissed it out of hand, anyway, saying that the time for policy changes is over.

Here’s the IPC/BC list:

1. Extend Sunrise Launch Period from 30 to 60 days with a standardized process.

2. Extend the TMCH and Claims Notices for an indefinite period; ensure the process is easy to use, secure, and stable.

3. Complete the URS as a low cost alternative and improve its usefulness – if necessary, ICANN could underwrite for an initial period.

4. Implement a mechanism for trademark owners to prevent second-level registration of their marks (exact matches, plus character strings previously determined to have been abusively registered or used) across all registries, upon payment of a reasonable fee, with appropriate safeguards for registrants with a legitimate right or interest.

5. Validate contact information for registrants in WHOIS.

6. All registrars active in new gTLD registrations must adhere to an amended RAA for all gTLD registrations they sponsor.

7. Enforce compliance of all registry commitments for Standard applications.

8. Expand TM Claims service to cover at least strings previously found to have been abusively registered or used.

Most of these requests are not entirely new, and some have been rejected by the ICANN policy-development process and its board of directors before.

The NTAG points out as much in a letter to ICANN management last week, which says that new gTLD applicants paid their application fees based on promises in the Applicant Guidebook, which should not be changed.

Many of the BC & IPC proposed policy changes have been considered and rejected in no fewer than four different processes and numerous prior Board decisions. Indeed, many go far beyond the recommendations of the IRT, which was comprised almost exclusively of trademark attorneys. These last-minute policy recommendations amount to just another bite of the same apple that already has been bitten down to its core.

The new gTLD policy development process is over. Applicants relied on the policies in the final Guidebook in making business decisions on whether to apply. At the time that ICANN accepted applications and fees from applicants, ICANN and applicants entered into binding agreements. ICANN should not change these agreements unilaterally without extraordinary reason and especially not when it would materially harm the counterparties to the agreements.

The Applicant Guidebook, as it happens, asks applicants to explicitly acknowledge that ICANN may make “reasonable
updates and changes” to the rules, even after the application has been submitted.

But if applicants reckon changes would create a “material hardship”, ICANN is obliged to “work with Applicant in good faith to attempt to make reasonable accommodations in order to mitigate any negative consequences”