Argentina has escalated its complaint with ICANN about the new gTLD application for .patagonia.
Ambassador Alfredo Morelli of the country’s Ministry of Foreign Affairs has written to ICANN’s leadership to let them know that .patagonia “should not be used as a closed brand gTLD”.
An American clothing company that goes by the name of Patagonia Inc has applied for .patagonia, which it intends to use as a dot-brand, but Patagonia is also a region of South America.
Argentina’s Governmental Advisory Committee representative told ICANN’s board in Prague this June that the government would not stand for a geographic term for part of its country being used in this way.
But Argentina has a problem.
The new gTLD program rules, as spelled out in the Applicant Guidebook, give special protection to geographic strings, but only if they appear on certain lists.
Rather than create its own list of geographic strings, ICANN instead deferred to established international standards, such as ISO 3166.
Patagonia, as far as I can tell, does not appear on any of these lists. (The DI PRO database compares all applied-for strings against protected geographic names.)
While it’s undoubtedly the name of a region, covering parts of Argentina and Chile, it does not appear to be the name of the kind of administrative division covered by ISO 3166-2.
Judging by the Applicant Guidebook, ICANN’s Geographic Names Panel would therefore not designate .patagonia as geographic and the applicant would not have to secure government support for its bid.
It’s not clear from the Guidebook how much flexibility, if any, the panel will get to make subjective decisions with edge cases like this.
However, so much of the program that had been thought finalized is today apparently still open for negotiation that I wouldn’t be surprised if the rules are changed or reinterpreted.
While the .patagonia application has so far attracted almost 300 negative comments from internet users, it is not the only dot-brand to ruffle feathers in Argentina.
There has been a smaller outcry over the Commonwealth Bank of Australia’s application for .cba, which apparently matches the abbreviation of the Argentinian Province of Cordoba.
The string “CBA” does not appear to be protected by the Applicant Guidebook either, and I’ve not seen any official concerns raised by governments yet.
I think there’s a strong chance the .patagonia application is dead, even if it is not officially deemed geographic.
The GAC will almost certainly object, and even if the objection does not have consensus the ICANN board will have a big reason to reject the bid.
ICANN’s board-level new gTLD program committee may vote today on a policy for enabling new gTLD applicants to correct errors in their applications.
Many of the 1,930 applications contain mistakes of varying degrees.
Some are obvious, such as typos in the applied-for string — .dotafrica springs to mind — and copy-paste errors made by large portfolio applicants that reference strings in the wrong application.
The trick for ICANN is figuring out which change requests are genuine while excluding attempts to game the system in light of new competitive information emerging post-Reveal Day.
According to an update issued last night, ICANN staff have come up with a set of seven criteria to decide whether any of the dozens of changes that have been requested should be permitted.
The criteria, which have not yet been revealed, are subject to approval, ICANN said.
But the ICANN board of directors is due to meet today, and it seems likely that its new gTLD program committee — made up of non-conflicted directors — will also have a session.
It’s quite possible that the criteria will be rubber-stamped today and published later this week.
ICANN also said last night that it plans to overhaul its new gTLD microsite shortly to make information easier to find, which will be welcomed by many applicants and observers.
The Clarifying Questions pilot, a test-run for a more formal process later this year, has also started. I understand the 50 selected applications received their questions late last week.
Another webinar for applicants has also been scheduled for next week.
ICANN’s board of directors is set to approve مليسيا., the Arabic name for Malaysia, at a meeting next week.
Delegation of the internationalized country-code top-level domain is listed on the board’s consent agenda for next week’s meeting, meaning it’s likely to be a case of simply rubber-stamping the decision.
It will be the 40th IDN ccTLD to enter the root, not including test zones, under ICANN’s Fast Track program.
With the notable exception of Russia’s .РФ, IDN ccTLDs have been commercially underwhelming.
The redelegation of Rwanda’s .rw, currently delegated to NIC Congo/Interpoint SARL, is also on ICANN’s board consent agenda for the August 28 meeting.
There are no issues related to the new gTLD program on the agenda.
Melbourne IT, the Aussie registrar with the increasingly vocal brand-protection focus, has come up with a new scheme for protecting super-famous brands after new gTLDs start to launch.
It draws on elements of the abandoned Globally Protected Marks List, ICM Registry’s Sunrise B policy, .CO Internet’s launch program, and various recent demands from the intellectual property community.
It’s called the paper Minimizing HARM (pdf), where HARM stands for High At-Risk Marks.
The title may set off grammatical alarm bells, but the rest reads like the least-unreasonable proposition for protecting big brands from cybersquatters that I’ve come across in a long time.
What I like about it is that it’s actually contemplating ways to prevent gaming from the outset, which is something the IP lobby hardly ever seems to do when it demands stronger rights protection mechanisms.
The idea calls for the forthcoming Trademark Clearinghouse to flag a narrow subset of the trademarks in its database as High At-Risk Marks that deserve special treatment.
Melbourne IT has organizations such as PayPal and the Red Cross in mind, but getting on the list would not be easy, even for famous brands.
First, companies would have to prove they’ve had trademark protection for the brand in three of ICANN’s five geographic regions for at least five years — already quite a high bar.
Implemented today, that provision could well rule out brands such as Twitter, which is an obvious high-risk cybersquatting target but might be too young to meet the criteria.
Dictionary words found in any of UN’s six official languages would also be banned, regardless of how famous the brand is. As the paper notes, that would be bad news for Apple and Gap.
Companies would also have to show that their marks are particularly at risk from phishing and cybersquatting.
Five successful UDRP complaints or suspensions of infringing domains by a “top ten registrar” would be enough to demonstrate this risk.
But that’s not all. The paper adds:
In addition to meeting the minimum criteria above, the High At-Risk Mark will need to obtain a minimum total points score of 100, where one point is awarded for each legal protection in a jurisdiction, and one point is awarded for each successful UDRP, court action, or domain registrar suspension undertaken in relation to the mark.
That appears to be setting the bar for inclusion high enough that an OlympicTM pole-vaulter would have difficulty.
Once a brand made it onto the HARM list, it would receive special protections not available to other brands.
It would qualify for a “Once-off Registration Fee”, pretty much the same as ICM’s .xxx Sunrise B, where you pay once to block your exact-match domain and don’t get pinged for renewal fees every year.
Any third parties attempting to register an available exact-match would also have to have two forms of contact information verified by the gTLD registry before their names resolved.
The Trademark Claims service – which alerts mark owners when somebody registers one of their brands – would run forever for HARM-listed trademarks, rather than just for the first 60 days after a gTLD goes into general availability.
The always controversial Uniform Rapid Suspension service would also get tweaked for HARM trademarks.
Unless the alleged cybersquatter paid the equivalent of a URS filing fee (to be refunded if they prevail) their domains would get suspended 48 hours after the complaint was filed.
I’m quite fond of some of the ideas in this paper.
If ICANN is to ever adopt a specially protected marks list, which it has so far resisted, the idea of using favorable UDRP decisions as a benchmark for inclusion – which I believe Marque also suggested to ICANN back in February – is attractive to me.
Sure, there are plenty of dumb UDRP decisions, but the vast majority are sensible. Requiring a sufficiently high number of UDRP wins – perhaps with an extra requirement for different panelists in each case – seems like a neat way of weeding out trademark gamers.
The major problem with Melbourne IT’s paper appears to be that the system it proposes is just so complicated, and would protect so few companies, that I’m not sure it would be very easy to find consensus around it in the ICANN community.
I can imagine some registries and registrars might not be too enthusiastic when they figure out that some of the proposals could add cost and friction to the sales process.
Some IP owners might also sniff at the some of the ideas, just as soon as they realize their own trademarks wouldn’t meet the high criteria for inclusion on the HARM list.
Is Melbourne IT’s proposal just too damn sensible to pass through ICANN? Or is it riddled with obvious holes that I’ve somehow manged to miss?
A California court today ruled that ICANN is subject to US antitrust laws and therefore the lawsuit filed by YouPorn.com owner Manwin Licensing over the .xxx gTLD can proceed.
In a mixed ruling, the Central District of California District Court granted some parts of ICM Registry and ICANN’s motions to dismiss the case and rejected others.
Here’s what it had to say on the subject of antitrust law, which ICANN argued back in January did not apply to it because it “does not engage in trade or commerce”:
The Court finds the transactions between ICANN and ICM described in the First Amended Complaint are commercial transactions.
ICANN established the .XXX TLD. ICANN granted ICM the sole authority to operate the .XXX TLD. In return, ICM agreed to pay ICANN money.
This is “quintessential” commercial activity and it falls within the broad scope of the Sherman Act. Even aside from collecting fees from ICM under the contract, ICANN’s activities would subject it to the antitrust laws.
That’s a pretty definitive knock-back for ICANN’s ballsy opening manoeuvre.
The court is allowing Manwin’s claims against ICANN to proceed. Manwin has until September 9 to amend and re-file its complaint.
As you may recall, Manwin sued ICANN and ICM last November, alleging that they conspired to break competition law by, among other things, forcing companies to defensively register .xxx domains.
ICM and ICANN filed separate motions to dismiss the case on seven grounds, but according to today’s ruling only two of these requests were successful.
What strikes me as particularly interesting on a first read are the definitions of the relevant domain name markets.
Under the Sherman Act, antitrust allegations have to be based on a defined “market”. Manwin’s complaint was based on the markets for “defensive registrations” and “affirmative registrations”.
The court ruled today that the company failed make the case that “affirmative registrations” is a market — because Manwin is happily running hundreds of porn sites in .com:
The Court finds Plaintiffs have failed to adequately plead the affirmative registration market. Plaintiffs have not alleged why other currently operating TLDs are not reasonable substitutes to the .XXX TLD for hosting adult entertainment websites. To the contrary, Plaintiffs allege that Manwin’s own website YouPorn.com is the most popular free adult video website on the internet.
However, the court found that “defensive registrations” is a market for the purposes of this case.
I am not a lawyer, but my sense is that this (pdf) is important stuff.
Lawyers: do feel free to chip in in the comments or via email.