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First three new gTLD objections thrown out

Kevin Murphy, July 9, 2013, Domain Policy

Three objections against new gTLD applications have been thrown out by the World Intellectual Property Organization, two of them on the basis that they were blatant attempts to game the system.

The objections were all Legal Rights Objections. Essentially, they’re attempts by the objectors to show that for ICANN to approve the gTLD would infringe their existing trademark rights.

The applications being objected to were Google’s .home, SC Johnson’s .rightathome and Vipspace Enterprises .vip.

The decisions are of course completely unprecedented. No LROs have ever been decided before.

Let’s look at each in turn.

Google’s .home

The objector here was Defender Security Company, a home security company, which has also applied for .home and has objected to nine of its competitors for the string.

Basically, the objection was thrown out (pdf) because it was a transparent attempt to game the trademark system in order to secure a potentially lucrative gTLD.

Defender appears to have bought the application, along with associated companies, domains, social media accounts and trademarks, from CGR E-Commerce, a company owned by .music applicant Constantine Roussos.

The panelist in the case apparently doesn’t have a DomainTools subscription and couldn’t make the Roussos link from historical Whois records, but it’s plain to see for those who do.

The case was brought on the basis of a European Community trademark on the term “.home”, applied for in December 2011, just a few weeks before ICANN opened the new gTLD application window, and a US trademark on “true.home” applied for a few months later.

The objector also owned dothome.net, one of many throwaway Go Daddy domain name resellers Roussos set up in late 2011 in order to assert prior rights to TLDs he planned to apply for.

The panelist saw through all the nonsense and rejected the objection due to lack of standing.

Here’s the money quote:

The attempted acquisition of trademark rights appears to have been undertaken to create a basis for filing the Objection, or defending an application. There appears to have been no attempt to acquire rights in or use any marks until after the New gTLD Program had been announced, specifically two weeks before the period to file applications for new gTLDs was to open.

For the EC trademark, lack of standing was found because Defender didn’t present any evidence that it actually owned the company, DotHome Ltd, that owned the trademark.

For the US trademark, which is still not registered, the panelist seems to have relied upon UDRP precedent covering rights in unregistered trademarks in his decision to find lack of standing.

The panelist also briefly addresses the Applicant Guidebook criteria for LROs, although it appears he was not obliged to, and found Defender’s arguments lacking.

In summary, it’s a sane decision that appears to show that you can’t secure a gTLD with subterfuge and bogosity.

It’s not looking good for the other eight objections Defender has filed.

Vipspace Enterprises’ .vip

This is another competitive objection, filed by one .vip applicant against another.

The objector in this case is German outfit I-Registry, which has applied for four gTLDs. The respondent is Vipspace, which has only applied for .vip.

In this case, both companies have applied for trademarks, one filed one month before the other.

The panelist’s decision focuses, sanely again, on the generic nature of the string in question.

Because both trademarks were filed for the word “VIP” meaning “Very Important Person”, which is the intended meaning of both applications, it’s hard to see how either is a proper brand.

The panelist wrote (pdf):

while SOAP, for example, may be a perfectly satisfactory trade mark for cars, it cannot serve as a trade mark for the cleaning product “soap”.

While the parties have used the term, “VIP”, in various forms on their website to indicate the manner in which the term will be used if they are successful in being awarded the domain, there is nothing before the Panel (beyond mere assertion) to show that either of them has yet traded under their marks sufficiently to displace the primary descriptive meaning of the term and establish a brand or at all.

In other words, it’s a second case of a WIPO panelist deciding that getting, or applying for, a trademark is not enough to grant a company exclusive rights to a new gTLD string.

Sanity, again, prevails.

SC Johnson’s .rightathome

While it contains the word “home”, this is a completely unrelated case with a different objector and a different panelist.

The objector here was Right At Home, a Nebraska-based international provider of in-home elderly care services. The applicant is a subsidiary of the well-known cosmetics company SC Johnson, which uses “Right@Home” as a brand.

It appears that both objector and applicant have really good rights to the string in question, which makes the panelist’s decision all the more interesting.

The way the LRO is described in ICANN’s new gTLD Applicant Guidebook, there are eight criteria that must be weighed by the panelist.

In this case, the panelist does not provide a conclusion showing how the weighting was done, but rather discusses each point in turn and decides whether the evidence favors the objector or the applicant.

The applicant here won on five out of the eight criteria.

The fact that the two companies offer different products and/or services, accompanied by the fact that the phrase “Right At Home” is in use by other companies in addition to the complainant and respondent appears to have been critical in tipping the balance.

In short, the panelist appears to have decided (pdf) that because SC Johnson did not apply for .rightathome in bad faith, and because it’s unlikely internet users will think the gTLD belongs to Right At Home, the objection should be rejected.

I am not a lawyer, but it appears that the key takeaway from this case is that owning a legitimately obtained brand is not enough to win an LRO if you’re an objector and the new gTLD applicant operates in a different vertical.

This will worry many people.

Amazon’s dot-brand likely doomed as US withdraws geo objection

Kevin Murphy, July 6, 2013, Domain Policy

The US government is set to allow the Governmental Advisory Committee to kill off Amazon’s application for .amazon, along with eight other new gTLDs with geographic flavors.

In a position paper published last night, the National Telecommunications and Information Administration said:

the United States is willing in Durban to abstain and remain neutral on .shenzen (IDN in Chinese), .persiangulf, .guangzhou (IDN in Chinese), .amazon (and IDNs in Japanese and Chinese), .patagonia, .yun, and .thai, thereby allowing the GAC to present consensus objections on these strings to the Board, if no other government objects.

According to a GAC source, US protests were the “only reason” the GAC was unable to reach a consensus objection to these applications during the Beijing meeting three months ago.

Consensus would strengthen the objection, giving the ICANN board the presumption that the applications, some of which have already passed Initial Evaluation, should not be approved.

None of the nine applications in question met ICANN’s strict definition of a “geographic” string, but they nevertheless look geographic enough to raise concerns with GAC members.

Amazon’s application for .amazon raised the eyebrows of the Latin American countries that share the Amazonia region.

The company has been in talks with these GAC members since Beijing. If it wants to secure .amazon, it has a little over a week to address their concerns, if it wants to avoid an objection.

While the US is now promising to drop its objection to the GAC’s objection, it does not appear to have changed its position, claiming that governments have no rights to geographic strings. NTIA said:

The United States affirms our support for the free flow of information and freedom of expression and does not view sovereignty as a valid basis for objecting to the use of terms, and we have concerns about the effect of such claims on the integrity of the process.

the United States is not aware of an international consensus that recognizes inherent governmental rights in geographic terms.

It’s calling for a rethink of the process, during the mandatory review of the new gTLD program that ICANN must conduct before accepting a second round of applications.

Given that the GAC currently has the ability to object to any string for any reason, it’s difficult to see how a review could achieve the NTIA’s goal without reining in the GAC’s powers.

GNSO still breathing as ICANN retracts “flawed” Trademark+50 thinking

Kevin Murphy, July 2, 2013, Domain Policy

The Generic Names Supporting Organization isn’t dead after all.

ICANN’s Board Governance Committee has retracted a document related to new gTLD trademark protections that some on the GNSO Council believed spelled the end of the multistakeholder model as we know it.

The BGC, in rejecting a formal Reconsideration Request related to the “Trademark+50” mechanism, had used a rationale that some said was overly confrontational, legalistic and gave ICANN staff the ability to ignore community input more or less at will.

We reported on the issue in considerable detail here.

The committee on Friday retracted the original rationale, replacing it with one (pdf) that, while still containing some of the flawed reasoning DI noted last month, seems to have appeased the GNSO Council.

Neustar policy VP Jeff Neuman, who raised the original concerns, told the Council: “I believe the rationale is much more consistent with, and recognizes, the value of the multi-stakeholder model.”

The BGC did not change its ultimate decision — the Reconsideration Request has still been rejected and Trademark+50 is still being implemented in the new gTLD program.

ICANN offers to split the cost of GAC “safeguards” with new gTLD registries

Kevin Murphy, June 28, 2013, Domain Policy

All new gTLD applicants will have to abide by stricter rules on security and Whois accuracy under government-mandated changes to their contracts approved by the ICANN board.

At least one of the new obligations is likely to laden new gTLDs registries with additional ongoing costs. In another case, ICANN appears ready to shoulder the financial burden instead.

The changes are coming as a result of ICANN’s New gTLD Program Committee, which on on Tuesday voted to adopt six more pieces of the Governmental Advisory Committee’s advice from March.

This chunk of advice, which deals exclusively with security-related issues, was found in the GAC’s Beijing communique (pdf) under the heading “Safeguards Applicable to all New gTLDs”.

Here’s what ICANN has decided to do about it.

Mandatory Whois checks

The GAC wanted all registries to conduct mandatory checks of Whois data at least twice a year, notifying registrars about any “inaccurate or incomplete records” found.

Many new gTLD applicants already offered to do something similar in their applications.

But ICANN, in response to the GAC advice, has volunteered to do these checks itself. The NGPC said:

ICANN is concluding its development of a WHOIS tool that gives it the ability to check false, incomplete or inaccurate WHOIS data

Given these ongoing activities, ICANN (instead of Registry Operators) is well positioned to implement the GAC’s advice that checks identifying registrations in a gTLD with deliberately false, inaccurate or incomplete WHOIS data be conducted at least twice a year. To achieve this, ICANN will perform a periodic sampling of WHOIS data across registries in an effort to identify potentially inaccurate records.

While the resolution is light on detail, it appears that new gTLD registries may well be taken out of the loop completely, with ICANN notifying their registrars instead about inaccurate Whois records.

It’s not the first time ICANN has offered to shoulder potentially costly burdens that would otherwise encumber registry operators. It doesn’t get nearly enough credit from new gTLD applicants for this.

Contractually banning abuse

The GAC wanted new gTLD registrants contractually forbidden from doing bad stuff like phishing, pharming, operating botnets, distributing malware and from infringing intellectual property rights.

These obligations should be passed to the registrants by the registries via their contracts with registrars, the GAC said.

ICANN’s NGPC has agreed with this bit of advice entirely. The base new gTLD Registry Agreement is therefore going to be amended to include a new mandatory Public Interest Commitment reading:

Registry Operator will include a provision in its Registry-Registrar Agreement that requires Registrars to include in their Registration Agreements a provision prohibiting Registered Name Holders from distributing malware, abusively operating botnets, phishing, piracy, trademark or copyright infringement, fraudulent or deceptive practices, counterfeiting or otherwise engaging in activity contrary to applicable law, and providing (consistent with applicable law and any related procedures) consequences for such activities including suspension of the domain name.

The decision to include it as a Public Interest Commitment, rather than building it into the contract proper, is noteworthy.

PICs will be subject to a Public Interest Commitment Dispute Resolution Process (PICDRP) which allows basically anyone to file a complaint about a registry suspected of breaking its commitments.

ICANN would act as the enforcer of the ruling, rather than the complainant. Registries that lose PICDRP cases face consequences up to an including the termination of their contracts.

In theory, by including the GAC’s advice as a PIC, ICANN is handing a loaded gun to anyone who might want to shoot down a new gTLD registry in future.

However, the proposed PIC language seems to be worded in such a way that the registry would only have to include the anti-abuse provisions in its contract in order to be in compliance.

Right now, the way the PIC is worded, I can’t see a registry getting terminated or otherwise sanctioned due to a dispute about an instance of copyright infringement by a registrant, for example.

I don’t think there’s much else to get excited about here. Every registry or registrar worth a damn already prohibits its customers from doing bad stuff, if only to cover their own asses legally and keep their networks clean; ICANN merely wants to formalize these provisions in its chain of contracts.

Actually fighting abuse

The third through sixth pieces of GAC advice approved by ICANN this week are the ones that will almost certainly add to the cost of running a new gTLD registry.

The GAC wants registries to “periodically conduct a technical analysis to assess whether domains in its gTLD are being used to perpetrate security threats such as pharming, phishing, malware, and botnets.”

It also wants registries to keep records of what they find in these analyses, to maintain a complaints mechanism, and to shut down any domains found to be perpetrating abusive behavior.

ICANN has again gone the route of adding a new mandatory PIC to the base Registry Agreement. It reads:

Registry Operator will periodically conduct a technical analysis to assess whether domains in the TLD are being used to perpetrate security threats, such as pharming, phishing, malware, and botnets. Registry Operator will maintain statistical reports on the number of security threats identified and the actions taken as a result of the periodic security checks. Registry Operator will maintain these reports for the term of the Agreement unless a shorter period is required by law or approved by ICANN, and will provide them to ICANN upon request.

You’ll notice that the language is purposefully vague on how registries should carry out these checks.

ICANN said it will convene a task force or GNSO policy development process to figure out the precise details, enabling new gTLD applicants to enter into contracts as soon as possible.

It means, of course, that applicants could wind up signing contracts without being fully apprised of the cost implications. Fighting abuse costs money.

There are dozens of ways to scan TLDs for abusive behavior, but the most comprehensive ones are commercial services.

ICM Registry, for example, decided to pay Intel/McAfee millions of dollars — a dollar or two per domain, I believe — for it to run daily malware scans of the entire .xxx zone.

More recently, Directi’s .PW Registry chose to sign up to Architelos’ NameSentry service to monitor abuse in its newly relaunched ccTLD.

There’s going to be a fight about the implementation details, but one way or the other the PIC would make registries scan their zones for abuse.

What the PIC does not state, and where it may face queries from the GAC as a result, is what registries must do when they find abusive behavior in their gTLDs. There’s no mention of mandatory domain name suspension, for example.

But in an annex to Tuesday’s resolution, ICANN’s NGPC said the “consequences” part of the GAC advice would be addressed as part of the same future technical implementation discussions.

In summary, the NGPC wants registries to be contractually obliged to contractually oblige their registrars to contractually oblige their registrants to not do bad stuff, but there are not yet any obligations relating to the consequences, to registrants, of ignoring these rules.

This week’s resolutions are the second big batch of decisions ICANN has taken regarding the GAC’s Beijing communique.

Earlier this month, it accepted some of the GAC’s direct advice related to certain specific gTLDs it has a problem with, the RAA and intergovernmental organizations and pretended to accept other advice related to community objections.

The NGPC has yet to address the egregiously incompetent “Category 1” GAC advice, which was the subject of a public comment period.

Is the ICC ripping off new gTLD objectors?

Kevin Murphy, June 27, 2013, Domain Policy

New gTLD applicants have reportedly complained to ICANN about the unexpectedly high cost of dealing with objections.

The International Chamber of Commerce has apparently been quoting objectors prices as high as €150,000 for a three-person panel to handle a formal community objection.

At $195,000, that’s almost $10,000 more than the original ICANN application fee.

Because Community Objections run on a loser-pays basis, the stakes are high indeed. An applicant could lose its application, most of its application fee, and still have to pay the objector’s fees.

The complaints emerged during a session with ICANN new gTLD program head Christine Willett at a meeting in Brussels earlier this week, according to consultant and occasional DI contributor Stephane Van Gelder.

Writing on the NetNames blog yesterday, Van Gelder quoted Willett as saying:

We are aware that ICC fees are more than people were expecting. Some applicants have been quoted around 50,000 Euros for a one expert panel and 150,000 Euros for a three expert panel. Although in the same order of magnitude as the cost estimate listed in the applicant guidebook, they are still higher. In some cases, significantly higher. In fact, we had one applicant write to us last week saying that their quoted expert fee was more than the ICANN fees for submitting their application in the first place! So we have reached out to ICC and are hoping they can provide some rationale for the costs they are quoting.

The Applicant Guidebook does not detail the fees charged by dispute resolution providers, but materials provided by the ICC (pdf) say that its admin costs are €12,000 and €17,000 for a one-person and three-person panel respectively. The hourly rate for the panelists is €450, it says.

With a €150,000 total cost, back of the envelope doodling suggests that each panelist expects to spend around 100 hours working on each case — over two weeks at seven hours a day.

By contrast, the World Intellectual Property Organization’s fees for handling Legal Rights Objections with a three-person panel start at $23,000 ($3,000 for WIPO, $20,000 for the panelists).