ICE domain seizures enter second phase

The US Immigration & Customs Enforcement agency seems to be consolidating its portfolio of seized domain names by transferring them to its own registrar account.

Many domains ICE recently seized at the registry level under Operation “In Our Sites” have, as of yesterday, started naming the agency as the official registrant in the Whois database.

ICE, part of the Department of Homeland Security, has collected over 100 domains, most of them .coms, as part of the anti-counterfeiting operation it kicked off with gusto last November.

The domains all allegedly either promoted counterfeit physical goods or offered links to bootleg digital content.

At a technical level, ICE originally assumed control of the domains by instructing registries such as VeriSign, the .com operator, to change the authoritative name servers for each domain to seizedservers.com.

All the domains pointed to that server, which is controlled by ICE, resolve to a web server displaying the same image:

(The banner, incidentally, appears to have been updated this month. If clicked, it now sends visitors to this anti-piracy public service announcement hosted at YouTube.)

Until this week, the Whois record associated with each domain continued to list the original registrant – a great many of them apparently Chinese – but ICE now seems to be consolidating its portfolio.

As of yesterday, a sizable chunk — but by no means all — of the seized domains have been transferred to Network Solutions and now name ICE as the registrant in their Whois database records.

Rather than simply commandeering the domains, it appears that ICE now “owns” them too.

But ICE has already allowed one of its seizures to expire. The registration for silkscarf-shop.com expired in March, and it no longer points to seizedservers.com or displays the ICE piracy warning.

The domain is now listed in Redemption Period status, meaning it is starting along the road to ultimately dropping and becoming available for registration again.

Interestingly, most of the newly moved domains appear to have been transferred into NetSol from original registrars based in China, such as HiChina, Xin Net and dns.com.cn.

After consulting with a few people more intimately familiar with the grubby innards of the inter-registrar transfer process than I am, I understand that the names could have been moved without the explicit intervention of either registrar, but that it would not be entirely unprecedented if the transfers had been handled manually under the authority of a court order.

If I find out for sure, I’ll provide an update.

2 Comments Tagged: counterfeiting, dns.com.cn, hichina, ice, immigration & customs enforcement, network solutions, piracy, seizures, verisign, xin net

Registry avoids .jobs shut-down

Employ Media has come to a deal with ICANN to avoid having its .jobs registry contract revoked, at least for the next few weeks.

Following discussions with ICANN’s lawyers, the company plans to amend its Charter, and has agreed to stop allocating non-company-name .jobs domain names until May 6.

ICANN threatened to terminate the .jobs registry deal in February, after Employ Media started allocating thousands of premium vocational and geographic domains to a partner, the DirectEmployers Association, to act as entry points for Universe.jobs.

In a breach notice (pdf), ICANN said that this use of .jobs domains “is inconsistent with the purpose stated in the .JOBS Charter and represented to the ICANN community”.

The .JOBS Charter ostensibly restricts registrations to human resources professionals, but in practice there’s a great big loophole that allows anybody to cheaply qualify for a domain.

In February, ICANN general counsel John Jeffrey told Employ Media:

By not establishing any meaningful restrictions on who may register second level registrations in the .JOBS TLD, Employ Media put in operation a TLD where anyone can register names, thus defeating the purpose for which the sponsored TLD came into existence.

In its response, the registry noted that it had followed ICANN’s proper procedures for introducing new “registry services”, such as the Phase Allocation Plan that allowed it to seed Universe.jobs.

It accused ICANN of bending to the wishes of the .JOBS Charter Compliance Coalition, a group of independent jobs sites operators that had objected to Universe.jobs.

Employ Media’s chief executive Brian Johnson wrote:

This is a sad day for both the Internet community and the international human resource management community. ICANN should be promoting competition and working cooperatively with its contractual parties, but instead is choosing to ignore the plain meaning of its contract with Employ Media in order to appease some apparently well‐financed and well‐connected provocateurs.

Since that letter (pdf) was sent, ICANN and the registry have been engaged in private discussions aimed at resolving the conflict, as allowed by the registry agreement.

In the latest set of correspondence, exchanged over the last week, it has emerged that ICANN has agreed to give Employ Media time to remedy the situation by amending its Charter.

The letters do not reveal whether the amendments will allow Employ Media to continue to offer Universe.jobs or not. I suspect they will.

The amendments may require the company to consult with its nominal sponsor, the Society for Human Resource Management.

ICANN wants a proposed Charter amendment on its desk by May 2. It has agreed to take no further action related to the breach of contract allegations until May 6.

6 Comments Tagged: .jobs, .jobs charter compliance coalition, directemployers association, employ media, ICANN, society for human resources management, universe.jobs

New TLDs timetable tightened

ICANN’s effort to squeeze out a process for approving new top-level domains has been about as easy and painless as giving birth, so it perhaps appropriate that it now expects to take at least nine months to gestate the very easiest applications.

The new version of the Applicant Guidebook, published Saturday, makes a number of changes to the expected new TLDs timetable, including the addition of an extra month to the minimum likely processing time for non-controversial strings.

This is not, as you might think, a result of the new objection powers granted to the Governmental Advisory Committee.

(UPDATE: On closer analysis, it appears that the timetable has in fact been rejiggered in order to give more time to the GAC’s Early Warning mechanism. Thanks to Mike, in the comments, for the correction.)

The Administrative Check part – the bit where ICANN goes through the applications to make sure they’ve all been correctly filed – that has been extended, from four weeks to eight.

ICANN has also shortened the first-round application-filing window by a month, to 60 days, off-setting the extended processing time.

New TLDs may start entering the root around the same time they were previously expected.

The timetable for the launch of new TLDs now looks a little like this:

June 20 – Applicant Guidebook approved in Singapore.

July-October 2011 – four-month communication/outreach period.

November-December 2011 – first-round application window

October 2012 – first new TLDs delegated to DNS root.

The new Guidebook advises applicants to avoid waiting to the last minute to file their applications, due to the complexity of the new TLD Application System (TAS) it’s created.

Given the application period is likely to end shortly after the end of year holiday period, I expect applicants will have plenty of impetus to get their applications in early without encouragement.

2 Comments Tagged: applicant guidebook, ICANN, new TLDs, singapore

ICANN brings “loser pays” to domain disputes

ICANN has significantly strengthened brand-owner protections in new top-level domains by proposing, amongst other things, a new “loser pays” model for some cybersquatting disputes.

The Uniform Rapid Suspension process, which is designed to give trademark owners a quick, cheap way to take down obvious examples of cybersquatting, may now occasionally carry a response fee.

According to ICANN’s newly revised Applicant Guidebook, which was published early this morning:

A limited “loser pays” model has been adopted for the URS. Complaints listing twenty-six (26) or more disputed domain names will be subject to an Response Fee which will be refundable to the prevailing party. Under no circumstances shall the Response Fee exceed the fee charged to the Complainant.

In other words, if a somebody registers more than 25 domains that appear to infringe upon the trademarks of a single company, they will have to pay a few hundred dollars, refundable, if they want to defend their case. Judging from UDRP history, this will likely apply to very few people.

The number 25 comes from the May 2009 report of ICANN’s Implementation Recommendation Team, which devised many of the new gTLD program’s rights protection mechanisms.

This change is one of several made in the new Guidebook, addressing concerns raised by the Governmental Advisory Committee, which had consulted closely with the IP lobby.

The GAC didn’t get everything it wanted, however. It had asked for repeat cybersquatters to lose their right to respond under the URS, but ICANN declined, citing the need for due process.

But the Guidebook does now also require new TLD registry operators to offer two types of rights protection mechanism during their launch phase, as the GAC had requested.

Whereas earlier drafts mandated either a Trademark Claims service or a Sunrise period, now registries will have no choice: they have to offer both at a minimum.

The Trademark Claims services notifies registrants if they try to register a domain name that matches a trademark registered in a central Trademark Clearinghouse.

The registrant will have to certify that they’re not infringing any rights before they get the domain. If they do register it, the affected trademark holder will receive a notification that the domain has been registered and can choose to take action such as filing a URS claim.

The idea behind the service is to deter cybersquatters, possibly reducing brand owners’ costs from having to defensively register their names in all new TLDs.

The Sunrise period, which is now also mandatory, is not entirely dissimilar to the sunrise periods we’ve come to expect from new TLD launches over recent years.

The new Guidebook states that the Trademark Claims service must be offered for at least 60 days after a new TLD enters general availability and the Sunrise must be at least 30 days before.

The fact that both services are now mandatory has helped ICANN address the thorny question of what should constitute a valid trademark.

Earlier drafts of the Guidebook required trademarks to have been subject to “substantive review” – a check by a national authority that the trademark is for real and in use.

The worry was that speculators could game the system by picking up large numbers of trademarks in countries that give them away like candy. It’s happened before.

But the review requirement was criticized by the GAC and others as it excluded trademarks in much of the world outside of the US.

In response to these criticisms, ICANN has removed the reference to substantive review. Instead, the yet-to-be-decided manager of the Trademark Clearinghouse will be given the task of validating that each trademark submitted is legit.

Companies need only submit a declaration and a single piece of evidence of use in order to get into the Clearinghouse, thus enabling them to partake of the Sunrise.

No such validation will be required in order to participate in the Trademark Claims service, though brand owners will need to be listed in the Clearinghouse for both mechanisms.

Evidence of use will also be needed to file URS complaints, but that can be done separately at the time of filing, with no need for a Clearinghouse registration.

ICANN chairman Peter Dengate Thrush, himself an IP lawyer, once stated, possibly in jest, that no matter what you do, you can be certain that IP lawyers will demand more protections.

Whether the rights protections mechanisms included in the Guidebook are now sufficient to calm trademark interests’ nerves remains to be seen.

5 Comments Tagged: applicant guidebook, cybersquatting, gac, governmental advisory committee, ICANN, new TLDs, trademarks

ICANN gives governments powers over new TLDs

ICANN has made some significant concessions to government demands in the newly published revision of its new top-level domains Applicant Guidebook.

After lengthy consultations with its Governmental Advisory Committee over the last few months, ICANN has updated the rulebook to address the vast majority of GAC concerns.

We’ve gone from the “proposed final Applicant Guidebook” published in November to the “April 2011 Discussion Draft” that appeared on the ICANN web site in the wee hours of this morning.

On first perusal, it appears that ICANN has walked the fine lines between GAC advice, hard-fought community consensus and common sense more or less successfully.

While the new Guidebook gives plenty of ground to the GAC, making it a more integral part of the new TLDs approval process, it avoids adopting some of its more problematic requests.

In this post, I’ll look at the powers ICANN has given to governments to object to TLDs.

Early Warning System

While ICANN has sensibly not given individual governments the right to veto TLDs they are not happy with, they do get substantially more input into the approval process than in previous drafts.

The major update to the Guidebook is a new Early Warning system that will allow governments to pre-object to TLDs they don’t like.

An Early Warning, which can only be filed by the GAC chair, is “an indication that the application is seen as potentially problematic by one or more governments.”

Applicants in receipt of such a warning will have 21 days to decide whether to drop out of the process, receiving a $148,000 refund, 80% of their $185,000 application fee.

But they won’t have to. The warning is just a heads-up that the GAC or some of its members may formally object at a later stage. A warning does not represent a GAC consensus position.

The Early Warning process will run for 60 days, at the same time as the public comment period that begins the day the applications are published.

Advice of Doom

Any applicants that decide to ignore such a warning face the possibility of receiving a formal GAC objection, which could come at any point in the first seven months after the applications are published.

This is now being called “GAC Advice on New gTLDs”. It could be quite a powerful tool:

GAC Advice on New gTLDs that includes a consensus statement from the GAC that an application should not proceed as submitted, and that includes a thorough explanation of the public policy basis for such advice, will create a strong presumption for the Board that the application should not be approved.

This is pretty close to a GAC veto, but it crucially requires GAC consensus. The Guidebook explains:

GAC Advice on New gTLDs should identify objecting countries, the public policy basis for the objection, and the process by which consensus was reached.

Even if the GAC reaches consensus, the ICANN board will be able to overrule its objections in accordance with its bylaws, in much the same way it just did with .xxx (in practice, I suspect .xxx may ultimately prove a fairly unique exception to the rule).

The Guidebook indicates that any wishy-washy, non-consensus, politician-speak advice given by the GAC will not be considered grounds for rejecting an application. The objection must be specific, grounded, and it must have support.

Importantly, ICANN has not conceded to the GAC’s request to allow applicants to amend their applications to remedy the GAC’s concerns.

As I noted earlier in the week, this could have led to companies gaming the system, and ICANN has ruled out amendments for precisely that reason.

Freebies

Individual governments will of course be allowed to object to any application using any of the other procedures that the Guidebook allows, such as the Community Objection.

ICANN’s problem is that these processes carry third-party fees, and governments don’t think they should have to pay these fees (for some reason that’s never been adequately explained).

Addressing this concern, the new Guidebook says that ICANN will cover each national government to the tune of $50,000 to fund a single objection.

That’s a total of potentially well over $1 million, funded from ICANN’s reserves. ICANN expects that governments will coordinate their objections to limit its costs.

Overall, it appears that ICANN has addressed pretty much everything the GAC wanted in terms of objections procedures. With a couple of reasonable exceptions, the GAC has received what it asked for.

Members may not be completely happy with ICANN’s decrees on what form GAC advice must take in order to have a useful impact, but in general it seems that this could well now be a closed issue.

In my next post, I’ll look at how intellectual property protection changes in the new Guidebook.

3 Comments Tagged: advice, applicant guidebook, early warning, gac, governmental advisory committee, ICANN, new TLDs