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Loophole gives trademark owners unlimited Clearinghouse records

Kevin Murphy, March 27, 2013, Domain Policy

Trademark owners will be able to add potentially thousands of strings to the Trademark Clearinghouse due to a recently introduced loophole, it emerged last night.

ICANN recently said that it will allow mark holders to add up to 50 strings related to their trademarks to their TMCH records, if the strings have been abused in the past.

It was one of the controversial “strawman” proposals that ICANN decided to adopt earlier this month.

Companies would be able to get protection for “mark+keyword” strings, for example, if a UDRP decision or court ruling had previously found that the strings had been cybersquatted.

The 50-string cap appeared to have been picked rather arbitrarily, but it turns out it’s more-or-less irrelevant anyway.

ICANN confirmed on its webinar for new gTLD applicants last night that the limit is 50 additional strings per entry in the Clearinghouse, not 50 strings per trademarked string.

What this means is that a company that has registered its trademark in multiple jurisdictions will be able to get 50 extra strings for each of those marks it enters into the Clearinghouse.

If Apple had a registered mark for “Apple” in the US and a registered mark for “Apple” in Bolivia, it would be able to submit both to the Clearinghouse and get an additional 100 “apple+keyword” records.

If it had the mark registered in 100 countries, it could put up to 5,000 more strings in the Clearinghouse.

Each string could be used to generate Trademark Claims notices, but not to secure registrations during Sunrise periods.

The apparent loophole and its implications were raised by Reg Levy of Minds + Machines during last night’s ICANN call.

In practice, the number of additional strings mark holders would qualify for would be capped by the number of trademark jurisdictions in the world and/or the number of UDRP decisions they’d won.

Few companies have secured more than a few hundred domains at UDRP to date, meaning it won’t be too difficult for trademark owners to get Trademark Claims protection for basically any previously cybersquatted string.

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ICANN to pay $2 million to keep Trademark Clearinghouse “free” for registrars

Kevin Murphy, March 27, 2013, Domain Registrars

ICANN is putting its money where its mouth is when it comes to helping new gTLDs be successful, committing $2 million to keep Trademark Clearinghouse access “free” for registrars.

While TMCH pricing for trademark owners is now well-publicized, ICANN COO Akram Attalah last night revealed some of the fees for new gTLD registries and registrars.

Registries will have to pay a one-time fee of $5,000 per TLD to access the TMCH, he said.

That was reduced from $10,000 during talks with TMCH back-end provider IBM after ICANN promised to handle billing and administration, he said.

There’s also going to be a $0.30 fee for each domain that matches a TMCH record registered during Sunrise and Trademark Claims periods, he added. The specifics on this fee were a little fuzzy.

But registrars won’t have to pay a penny, it seems. Attalah said that ICANN will pay IBM $2 million to make sure the Clearinghouse is accessible and free for registrars.

“ICANN will pay $400,000 per year for five years to keep the TMCH up and running and that provides free access to all registrars,” he said on last night’s new gTLDs update webinar.

It won’t be completely free for registrars, of course.

Registrars will have to do some implementation work to support the new Trademark Claims and Sunrise specs, but the absence of fees gives them one less excuse to avoid the two rights protection periods.

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ICANN to water down contract powers with “Public Interest Amendments”

Kevin Murphy, March 27, 2013, Domain Registries

ICANN has made a few tweaks to its proposed unilateral-right-to-amend powers in order to fend off open hostility from registries, registrars and new gTLD applicants.

The organization is set to announce “Public Interest Amendments”, a rebadged version of its hugely unpopular proposals for the Registry Agreement and Registrar Accreditation Agreement.

As previously reported, ICANN wants to be able to change both contracts in future, if there’s a “substantial and compelling need”, even if it does not have the majority support of the affected companies.

CEO Fadi Chehade has reportedly indicated that he won’t be budged on the need for some method for ICANN to make emergency changes to the contracts.

And during last night’s new gTLD applicants webinar, he made it clear that the RA and RAA will delay the launch of new gTLDs if registries and registrars cannot agree to ICANN’s terms.

But according to documentation seen by DI today — actually a flowchart of how the amendment process would work — these terms are going to be watered down, giving more power to commercial stakeholders.

Apart from the new Pubic Interest Amendment name, there appear to be three big changes.

First, there would be a way for registrars and/or registries to make a late-stage counter-proposal to the ICANN board if they didn’t like the look of a proposed amendment.

Second, any issues that fell within the so-called “picket fence” — the list of pre-agreed topics for which ICANN is allowed to make binding policy — would have to go into a formal GNSO Policy Development Process first.

Only if the PDP failed to reach consensus would the ICANN board of directors be able to step in and attempt to legislate unilaterally.

A practical effect of that would be to give contracted parties ample opportunity to delay amendments — possibly by years — that they weren’t happy with.

Third, PIAs would only cover changes designed to “ensure competition & consumer choice and promote consumer access to fair business practices” and explicitly “not to change ICANN fees, Consensus Policy Spec., or mechanism to change PIA process”.

This would prevent ICANN unilaterally amending the contract to make its amendment powers even stronger in future, which had been one criticism of the proposed process.

“The board’s ability to introduce an amendment is very tightly defined and limited in scope, so it’s only used in extreme cases and under very strict conditions,” Chehade said last night.

It appears — though I can’t be certain — that ICANN has also decided that the full board of directors, including those with identified conflicts of interest, would be able to participate in votes on PIAs.

That would mean registry and registrar representatives to the board would get to vote on amendments affecting their stakeholder groups.

Chehade is currently explaining all of this to a cautiously optimistic Registry Stakeholder Group on a conference call, and I believe more information is due to be published later this week.

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ICANN: about 274 new gTLD objections filed

Kevin Murphy, March 27, 2013, Domain Policy

There have been roughly 274 formal objections against new gTLD applications, ICANN said last night.

During a webinar with applicants, new gTLD program manager Christine Willet broke down the numbers. There have been:

  • 67 String Confusion Objections — these are of the “your TLD looks like my TLD” variety.
  • 71 Legal Rights Objections — “Your TLD looks like my trademark”
  • 23 Limited Public Interest Objections — “Your TLD infringes human rights”
  • 113 Community Objections — “Your TLD screws over my community”

Willett stressed that the numbers are based on ICANN’s non-comprehensive insight and subject to a couple of caveats.

The number could be higher if ICANN was not copied in on some objections sent to arbitration panels, or lower if the panels throw some out for not passing baseline administrative checks.

Judging by the small number of objections to be revealed by the World Intellectual Property Organization — which is handling trademark disputes for ICANN — most LROs so far are applicant versus applicant.

The International Chamber of Commerce has not yet published any information about Community Objections or Limited Public Interest Objections.

The International Center for Dispute Resolution has only revealed one String Confusion Objection so far, which we reported on a couple weeks ago.

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Tucows, Directi and Namecheap to combine .online gTLD bids

Kevin Murphy, March 27, 2013, Domain Registries

Three applicants for the .online gTLD appear to have settled their differences in what I believe is the first public example of new gTLD contention set consolidation.

Tucows, Directi and Namecheap said today that that they plan to “work together to manage the .online registry.” From the press release:

applicants for the same TLDs have begun to compete, negotiate, and, in some cases, join forces to ultimately produce one winning bid.

The first such alliance was revealed today, when domain industry veterans Directi, Tucows and Namecheap announced that they would work together to manage the .online registry.

The companies are of course three of the most successful domain name registrars out there.

The press release does not specify how the combination will be carried out. Under ICANN rules, two of the applicants would have to drop their applications. It’s not possible to resubmit as a joint venture.

It also does not acknowledge that there are three other applicants for .online — Donuts and smaller portfolio applicants Dot Online LLC and I-REGISTRY Ltd — which are not party to the agreement.

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