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Microsoft and others join London gTLD strategy conference line-up

Kevin Murphy, July 24, 2013, Domain Services

Momentum Event Group has updated its agenda for the forthcoming Digital Marketing & gTLD Strategy Congress, with additional speakers from Microsoft and the new Domain Name Association joining the line-up.

Dave Coplin, “chief envisioning officer” of Microsoft UK, has been tapped to deliver a keynote entitled “What Lies Ahead. Looking Forward to the Future of Brand Marketing Post-gTLD”.

Momentum also said that ARI Registry Services, NetNames, Interbrand and the Domain Name Association are also set to speak at the event.

The agenda at this point is an interesting mix of industry regulars and dot-brand gTLD applicants. From the brand side of the house, the conference will feature also speakers from Richemont, LEGO, HSBC, Google and KPMG.

From ICANN, vice president of stakeholder engagement for North America Christopher Mondini is delivering a keynote, apparently on the wrong continent.

The Congress runs from September 26 to 27 at the Park Plaza Hotel in London. Tickets are priced at £795 ($1,220) until August 3, when prices go up.

DI is a media sponsor but has no financial interest in the conference.

The first morning session on day one of the conference is me interviewing Uniregistry CEO Frank Schilling on stage about the future of the internet, post-gTLDs. Coffee had better be provided.

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What some other bloggers said about .amazon

Kevin Murphy, July 24, 2013, Domain Policy

Whenever an ICANN decision intersects with the business interests of a well-known brand name, media coverage ensues, and last week’s Governmental Advisory Committee objection to .amazon was no exception.

While a scores of headlines were generated, there wasn’t a great deal of editorializing or analysis. Most bloggers outside of the domain industry seemed content to link to and summarize a Wall Street Journal report.

But a handful of bloggers also passed comment on the decision. Views were a diverse as you might expect. Here are a few selections:

Geoffrey Manne of Truth On The Market was not impressed with what the decision said about ICANN as a regulator. He wrote:

If Latin American governments are concerned with cultural and national identity protection, they should (not that I’m recommending this) focus their objections on Amazon.com. But the reality is that Amazon.com doesn’t compromise cultural identity, and neither would Amazon’s ownership of .AMAZON.

Brand Aide called Amazon a “brand bully” and recounted a client’s past experience:

For years now, Amazon’s attorneys would have one think the Amazon River never existed. A number of years ago, one of my firm’s clients was sued by Amazon over use of the “Amazon Networks” in a domain for computer services, a term our client innocently registered about the same time Amazon launched as a bookseller. Amazon falsely claimed in federal court our client was a domain cybersquatter. In fact, the homepage of our client’s first website featured an image of the Amazon River.

Hot Hardware empathized with the GAC:

These countries make a good point. It may seem obvious that Amazon.com would get a crack at .amazon, but many in the U.S. would be upset if, say, a German company laid claim to .grandcanyon or another important U.S. geological site.

Retail trade pub Storefront Talkback sided with Amazon:

what initially looked like just a very expensive way to acquire their own .brand names is now turning into a process that’s effectively stripping some chains of their brands.

Geek.com didn’t like .amazon as a string anyway:

I also think this decision is doing Amazon a favor. .amazon is a bit long for the end of a URL. The company would be better off using a shortened version such a .amzn, it’s quicker to type and looks better when paired with categories, e.g. dvd.amzn, bluray.amzn, ebooks.amzn.

WebProNews perhaps misses the point about geographic names a bit in its speculation about .apple:

It’s going to be interesting to see if Apple meets a similar fate to Amazon. It only applied for one gTLD – .apple. Like Amazon, the word apple isn’t exclusive to the company. I find it hard to believe that ICANN would hand Apple exclusive control of the .apple gTLD, but it’s possible.

Finally, book publisher Melville House said on its blog:

The principle the South American nations are referring to is, as I understand it, a little known agreement from the early days of Arpanet that in the case of a governmental disagreement, anyone who could best a region’s most dangerous wildlife in unarmed combat was welcome to that region’s domain name. The protocol hasn’t often been used since the gory events of June 1998, when one intrepid developer hoped to claim .yukon for his online baked potato delivery service.

Patagonia was similarly denied their request for .patagonia last week, after a company representative found himself facing down the pointy end of a condor.

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Go Daddy joins the new gTLD pre-reg game, kinda

Go Daddy has become the latest domain name registrar to start accepting expressions of interest from prospective new gTLD registrants.

A “watch list” service launched yesterday allows customers to indicate gTLDs that they are interested in using in future and receive alerts when they launch.

Unlike other registrars, Go Daddy does not appear to be offering users the ability to name the second-level string they’re interested in.

The goal seems to be to help the company select which of the 700 new gTLDs available on the watch list will ultimately be carried in its market-leading store, making it very interesting to applicants.

In a blog post, the company said:

Keep in mind, we might not sell all of the gTLDs listed on the landing page. The “watch” feature gives us a sense of what you’re interested in and what we should sell. We’re taking your needs and market appeal into consideration before we make any final decisions.

There’s no cost for the service, but you do need to be logged in as a Go Daddy customer in order to create a watch list, which should help prevent new gTLD applicants gaming the system.

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Senators slate NTIA, to demand answers on new gTLD security

Kevin Murphy, July 23, 2013, Domain Policy

Did Verisign get to the US Congress? That’s the intriguing question emerging from a new Senate appropriations bill.

In notes attached to the bill, the Senate Appropriations Committee delivers a brief but scathing assessment of the National Telecommunication and Information Administration’s performance on ICANN’s Governmental Advisory Committee.

It says it believes the NTIA has “not been a strong advocate for U.S. companies and consumers”.

The notes would order the agency to appear before the committee within 30 days to defend the “security” aspects of new gTLDs and “urges greater participation and advocacy within the GAC”.

While the NTIA had a low-profile presence at the just-finished Durban meeting, it would be difficult to name many other governments that participate or advocate more on the GAC.

This raises an eyebrow. Which interests, in the eyes of the committee, is the NTIA not sufficiently defending?

Given the references to intellectual property, suspicions immediately fall on usual suspects such as the Association of National Advertisers, which is worried about cybersquatting and associated risks.

The ANA successfully lobbied for an ultimately fruitless Congressional hearing in late 2011, following its campaign of outrage against the new gTLD program.

It’s mellowed somewhat since, but still has fierce concerns. Judging by comments its representatives made in Durban last week, it has shifted its focus to different security issues and is now aligned with Verisign.

Verisign, particularly given the bill’s reference to “security, stability and resiliency” and the company’s campaign to raise questions about the potential security risks of new gTLDs, is also a suspect.

“Security, stability and resiliency” is standard ICANN language, with its own acronym (SSR), rolled out frequently during last week’s debates about Verisign’s security concerns. It’s unlikely to have come from anyone not intimately involved in the ICANN community.

And what of Amazon? The timing might not fit, but there’s been an outcry, shared by almost everyone in the ICANN community, about the GAC’s objection last week to the .amazon gTLD application.

The NTIA mysteriously acquiesced to the .amazon objection — arguably harming the interests of a major US corporation — largely it seems in order to play nice with other GAC members.

Here’s everything the notes to “Departments of Commerce and Justice, and Science, and related agencies appropriations Bill, 2014” (pdf) say about ICANN:

ICANN — NTIA represents the United States on the Internet Corporation for Assigned Names and Numbers [ICANN] Governmental Advisory Committee [GAC], and represents the interests of the Nation in protecting its companies, consumers, and intellectual property as the Internet becomes an increasingly important component of commerce. The GAC is structured to provide advice to the ICANN Board on the public policy aspects of the broad range of issues pending before ICANN, and NTIA must be an active supporter for the interests of the Nation. The Committee is concerned that the Department of Commerce, through NTIA, has not been a strong advocate for U.S. companies and consumers and urges greater participation and advocacy within the GAC and any other mechanisms within ICANN in which NTIA is a participant.

NTIA has a duty to ensure that decisions related to ICANN are made in the Nation’s interest, are accountable and transparent, and preserve the security, stability, and resiliency of the Internet for consumers, business, and the U.S. Government. The Committee instructs the NTIA to assess and report to the Committee within 30 days on the adequacy of NTIA’s and ICANN’s compliance with the Affirmation of Commitments, and whether NTIA’s assessment of ICANN will have in place the necessary security elements to protect stakeholders as ICANN moves forward with expanding the number of top level Internet domain names available.

While the bill is just a bill at this stage, it seems to be a strong indication that anti-gTLD lobbyists are hard at work on Capitol Hill, and working on members of diverse committees.

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LRO roundup: six more new gTLD objections rejected

While we were busy focusing on ICANN 47 last week, six new gTLD Legal Rights Objections were decided by the World Intellectual Property Organization.

These are the objections where the objector has trademark rights that it believes would be infringed by the delegation of a matching or confusingly similar gTLD.

All six cases, like the first six, were rejected for varying reasons. There has yet to be a decision in favor of an objector.

Here’s a rundown of the highlights of the decisions:

.home (Defender Security v Lifestyle Domain Holdings)

.home (Defender Security v Merchant Law Group)

.home (Defender Security v Uniregistry)

These cases are three of the nine filed by .home applicant Defender Security against its rival applicants. Defender had already lost one such objection, and these three were no different.

Defender acquired its trademarks and associated domains and companies from Constantine Roussos’ CGR E-Commerce shortly before the new gTLD application window opened.

The trademarks themselves, attached to hastily created Go Daddy reseller web sites, were obtained not much earlier.

Uniregistry, paraphrased by the WIPO panelist in its case, put the situation pretty close to the truth:

Objector is one of several parties who were solicited some months ago to purchase any of a number of cookie-cutter European trademark documents lacking any substantial basis in actual goodwill or commerce, which were filed solely to game this process, and do not reflect a bona fide acquisition of substantial rights.

The WIPO panelists did not disagree, with two of them finding that not only were the acquisition of trademark rights not bona fide, but also that there was a question as to whether Defender even owned the trademark.

One panelist wrote of “the misleading and sometimes deceptive presentation of the evidence in the Objection, and more generally the abusive nature of the Objection” and another said:

The [LRO] Procedure is not intended to provide a facility whereby existing or prospective applicants for a new gTLD may attempt to gain an advantage over other applicants for the same gTLD by way of the deliberate acquisition of trademark rights for no purpose other than to bring a Legal Rights Objection. It has not escaped the Panel’s notice that the evidence before it indicates that the present Objection might have been motivated by just such an attempt

All three cases were rejected largely on this basis.

The panelist in the Lifestyle Domain Holdings case decided that acquisition of the trademarks had in fact been bona fide, but rejected the objection anyway on the overall LRO test of whether the proposed gTLD would take “unfair advantage” of Defender’s trademark rights, stating:

If anyone has taken “unfair advantage,” it has been the Objector through its meritless Objection. The LRO process is not meant to be a game or crap shoot; rather, it should be invoked only when the applicant’s proposed string would “infringe” trademark rights. It is an abuse of the process to invoke an LRO against an applicant whose proposed use is clearly a fair use of a string for its descriptive meaning and not a use designed to “infringe” (that is, cause confusion as to source, authorization or affiliation). What is “unfair” here is that the Objector filed an Objection that is not only completely devoid of merit, causing the Respondent to waste time and effort defending its entirely appropriate application, but also full of misleading, deceptive, and demonstrably untrue statements and omissions

With the Roussos/Defender gaming strategy thus comprehensively trashed, I can only hope for Defender’s sake that there’s opportunity left for it to withdraw its remaining objections and ask for a refund.

.mail (United States Postal Service v Amazon)

Amazon is one of the many applicants for .mail, while USPS is the United States’ longstanding government-backed postal service and not an applicant.

USPS showed that it owned a wide array of trademarks that include the word “mail”, but not any for the word alone, and argued that internet users expect “mail” to mean the US mail.

Amazon said that the word is generic and that USPS is not the only organization to incorporate it in its trademarks.

Amazon said (ironically, given its intention to operate .mail as a closed generic) that USPS “improperly seeks to take the dictionary word ‘mail’ out of the English language for its exclusive use”.

The decision to reject the complaint hinged on whether USPS even has rights in .mail.

The WIPO panelist decided: “The fact that a nation’s postal system is vested by statute or otherwise associated with a single entity does not convert the generic term into a trademark.”

USPS has filed six more LROs against the other six .mail applicants, two of which have been terminated due to application withdrawals. We can only assume that the remaining four are also likely to fail.

.pin (Pinterest v Amazon)

Amazon is the only applicant for .pin. Again, it’s a closed generic for which the company has not explained its plans.

The objector, Pinterest, is a wildly popular photo-sharing service provider start-up, funded to the sum of $100 million by Amazon’s Japanese retail rival Rakuten.

It owns a US trademark for “Pinterest” and has applied for many more for “Pin” and “Pin It”.

The panelist, in ruling against Pinterest, decided that Pinterest, despite its popularity, failed to show that the dictionary word “pin” had acquired a secondary meaning beyond its usual descriptive sense.

.mls (Canadian Real Estate Association v. Afilias)

MLS, for readers based outside North America, means “multiple listing services”. It’s used by estate agents when aggregating lists of properties for sale.

The Canadian Real Estate Association — which has applied for .mls TWICE, one as a community once as a regular applicant — has owned a Canadian “certification mark” on the term “MLS” since 1960.

A substantial portion of the decision is devoted to examining whether this counts as a trademark for the purposes of an LRO, with the panelist deciding that “ownership of a certification trademark must confer the status of ‘rightsholder’.”

The case was therefore decided on the eight criteria specified for the LRO in the ICANN Applicant Guidebook. The panelist concluded:

The Panel cannot see the justification for refusing to allow the Applicant to operate in every country because the Objector has a certification mark for a generic term in Canada. Had the Objector’s certification been other than a generic term, its case might have been stronger but MLS it is a generic term used in English-speaking jurisdictions.

The decision cited the .rightathome case, in which the decision hinged on whether the new gTLD applicant had any nefarious intent in applying for the string in question.

A body of precedent seems to be emerging holding that a new gTLD application must be somewhat akin to a cybersquatting attempt in order for an objector to win.

While this may be fair, I think a likely impact is an increase in the number of dot-brand applications in future rounds, particularly in cases where the brand matches a dictionary word or collides with another trademark.

We’ve yet to see what a successful LRO looks like, but the standard appears to be high indeed.

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