Straat-backed bidder beats Donuts and Afilias to .health

DotHealth has won the four-way contention set for the controversial new gTLD .health.
Afilias and Donuts both withdrew their competing applications this week. Famous Four withdrew its application over a month ago.
DotHealth is backed by Straat Investments, the investment vehicle chaired by .CO Internet’s Juan Calle.
The new gTLD will run on a Neustar (which now owns .CO) back-end.
.health is likely to be restricted, or at least policed, to ensure fake pharmacies are scrubbed from the zone.
DotHealth is supported by, among other health groups, the National Association of Boards of Pharmacy (NABP) which often targets registries and registrars in its campaigns against bogus online pharmacies in the US.
The company plans to use LegitScript to monitor its namespace.
.health will compete against the unrestricted .healthcare, which has been delegated to Donuts.
All four applicants for .health faced adverse Governmental Advisory Committee advice and unsuccessful public interest objections from the Independent Objector.

Afilias loses $600,000 auction for Chinese “.info”

The results of the first “auction of last resort” in the new gTLD program are in, and it’s a bit of a head-scratcher.
Afilias lost out to rival applicant Beijing Tele-info Network Technology in the ICANN-backed auction for .信息 which means “info” or “information” in Chinese.
The winning bid was $600,000, ICANN said.
That money goes into a special ICANN fund, which will be put to some kind of unspecified purpose (to be determined by the ICANN community) at a later date.
It seems like quite a low price. Given what little we know about new gTLD auctions conducted privately, over a million dollars seems to be pretty standard for a gTLD.
It also strikes me as odd that Afilias wasn’t willing to shell out over $600,000 for a gTLD that could take a localized version of its existing .info brand into the world’s largest market.
It’s the only contention set to be settled by ICANN auction so far. The next will take place July 9, and will see Minds + Machines take on Amazon for .coupon.
The third, which will see 22 strings hit the block, will take place August 6.

Afilias wins .poker gTLD

The .poker contention set has been settled, apparently at last week’s Applicant Auction auction, leaving Afilias the winner.
Rival applicants Donuts, Famous Four Media and Dot Poker have all withdrawn their applications.
The winning bid was, per usual, not disclosed. I’d be interested to know how much it went for, as I have a feeling there might be some pretty sweet premium sales to be had.
It also emerged today that Rightside won the auction for the altogether less exciting .rip — a gTLD for memorials — after withdrawals from Momentous and DotRIP.
The .restaurant gTLD appears to one of the two remaining auctions from last week’s batch for which we don’t yet know the result. Uniregistry and Famous Four have withdrawn, leaving Donuts and Minds + Machines with active applications.

Afilias wins .green auction

Afilias won the auction for the .green new gTLD, it emerged today.
Rightside withdrew its application for the string in the last few days, according to the ICANN web site, leaving Afilias the only remaining applicant in the four-way contention set.
Top Level Domain Holdings said last week that it had lost a private auction with Afilias and Rightside. The fourth applicant, Dot Green, withdrew last year citing the likely cost of an auction.
It’s not known how much Afilias paid in the auction, but it’s likely to have been in the millions.

Ten more new gTLDs go live

Donuts, Afilias and Atgron were the beneficiaries of 10 new gTLD delegations yesterday.
Various Donuts subsidiaries had .boutique, .bargains, .cool, .expert, .tienda (“shop” in Spanish), .tools, .watch, .works delegated, bringing the company’s total portfolio to 70 gTLDs.
Afilias had its fourth new gTLD of this round go live in the DNS root: .kim, which is expected to serve people who have the first or last name Kim.
I think it’s the first personal-name gTLD to hit the internet.
Finally, Atgron had .wed delegated. It’s going to be an unrestricted gTLD aimed at marrying couples. It will eventually compete with the currently contested string .wedding.
I have to ponder what the renewal rates are going to be like for what seems to be the first event-focused TLD.
How long before their big day will registrants register their names, and for how long afterwards will they keep the registration alive for sentimental reasons? Atgron reckons such sites stay live for about 18 months.
There are also reportedly twice half as many divorces as marriages in the US at the moment. One wonders why nobody applied for .divorce.

.pink and two other gTLDs get contracts

ICANN has signed Registry Agreements this week with three new gTLD applicants, covering the strings .wed, .ruhr and .pink.
I would characterize these strings as a generic, a geographic and a post-generic.
regiodot GmbH wants to use .ruhr as a geographic for the Ruhr region of western Germany while Atgron wants to providing marrying couples with .wed for their wedding-related web sites.
Afilias’ .pink belongs to that unusual category of applied-for gTLDs that I’m becoming increasingly interested in: the non-SEO generic.
The vast majority of generic, open gTLDs that have been applied for (mostly by domainer-driven portfolio applicants) in the current round are essentially “keyword” strings — stuff that’s very likely going to prove useful in search engine optimization.
I’m talking here about stuff like .music, .video, .football and .porn. These may prove popular with small business web site owners and domainers.
But there’s another category of generic gTLDs I believe have little SEO value but offer a certain quirky-cool branding opportunity that may prove attractive to regular, non-commercial registrants.
I’d put strings such as .ninja, .bom, .wow, .hot, .love and .pink into this category.
I’m very curious to see how these kinds of strings fare over the next few years, as I suspect we may see many more such applications in future gTLD rounds.

Google beats Donuts in objection — .pet and .pets ARE confusingly similar

Google has won a String Confusion Objection against rival new gTLD applicant Donuts, potentially forcing .pet and .pets into the same contention set.
The shock ruling by International Centre for Dispute Resolution panelist Richard Page goes against previous decisions finding singulars and plurals not confusingly similar.
In the 11-page decision, Page said he decided to not consider the reams of UDRP precedent or US trademark law submitted by the two companies, and seems to have come to his opinion based on a few simple facts:

Objector has come forward with the following evidence for visual, aural and meaning similarity. Visually, the words are identical but for the mere addition of the letter “s”. Aurally, the word “pets” is essentially phonetically equivalent to the word “pet”. The term “pet” is pronounced as it is spelled, “pet”. The term “pets” is likewise pronounced as “pets” in essentially a phonetically equivalent fashion. The terms each have only one syllable, and they have the same stress pattern, with primary accent on the initial “pe” portion of the words. In commercial meaning, the terms show no material difference. As English nouns, “pets” is the pluralization of “pet”.
The visual similarity and algorithmic score are high, the aural similarity is high, the meaning similarity is high. Objector has met its burden of proof. The cumulative impact of these factors is such that the Expert determines that the delegation of <.pet> gTLD and the <.pets> gTLD into the root zone will cause a probability of confusion.

Page did take into account the similarity score provided by the Sword algorithm — for .pet and .pets it’s actually a fairly weak 72% — in his thinking on visual similarity.
But he specifically rejected Donuts’ defense that co-existence of plurals at the second level was proof that plural/singular gTLDs could also co-exist at the top-level, saying:

The rapid historical development of the Internet and the proliferation of domain names over the past two decades has taken place without the application of the string confusion standard now established for gTLDs. Therefore, the Expert has not considered the current coexistence of pluralized second-level TLDs or similarities between country code TLDs and existing gTLDs in the application of the string confusion standard in this proceeding.

Can: open. Worms: everywhere.
The decision stands in stark contrast to the decision (pdf) of Bruce Belding in the .hotel v .hotels case, in which it was found that the two strings were “sufficiently visually and audibly different”.
Likewise, the panelist in .car v .cars (pdf) found that Google had not met the high evidential bar to proving the “probability” rather than mere “possibility” of confusion.
One has to assume that the evidence Google submitted in .car is fairly similar to the evidence it submitted in .pets.
Are String Confusion Objections just a crap shoot, the outcome depending on which panelist you get? It’s probably too early to say for sure, but it’s looking like a possibility.
The big test will come with the next .pets decision. Afilias, the other .pet applicant, has also filed an SCO against Donuts over its .pets bid.
What if the panel in the Afilias case goes the other way? Will Donuts be in a contention set with Google and Afilias or won’t it?
I asked Akram Atallah, president of ICANN’s Generic Domains Division, about this yesterday and he said that ICANN basically doesn’t know, and that it might have to refer back to the community for advice.
Read the Atallah interview here and the .pets decision (pdf) here.

Three gTLD contracts to be renewed next week

ICANN is set to belatedly renew the .info, .org and .biz Registry Agreements next week, according to the just published agenda of its board of directors’ next meeting.
The .info and .biz contracts expired last year, while .org’s expired in April. All three were extended while ICANN and the registries — Afilias, Neustar and PIR — figured out how much of the new gTLD Registry Agreement to incorporate into the renewed deals.
They wound up agreeing to, among other things, mandating the use of the 2013 Registrar Accreditation Agreement in all three gTLDs, but only on the condition that Verisign agrees to the same terms for .com and .net.
The three contracts didn’t go far enough for some, such as the Intellectual Property Constituency, which wants new gTLD rights protection mechanisms such as Uniform Rapid Suspension to be added.
The approval of the three renewals is on the consent agenda for the ICANN board’s August 22 meeting, so it seems unlikely that there will be any huge changes to the previously published draft contracts.
Also on the agenda for next week are the redelegations of the ccTLDs for Botswana (.bw) and Portugal (.pt).

Afilias wants registrar ownership ban lifted on .mobi and .pro

Afilias has applied to ICANN to have its ban on owning registrars in two of its own gTLDs, .mobi and .pro, lifted.
With requests to ICANN a few days ago (here and here), the company said it wants to be able to own more than 15% of an ICANN-accredited registrar that sells both TLDs, which is currently forbidden by the two Registry Agreements in question.
Afilias’ proposed new .info contract, which was renegotiated this year (because it expired) and closed for public comment last week, would also enable the company to vertically integrate with a .info registrar.
A process for relaxing the cross-ownership rules on a per-TLD basis was approved by ICANN’s board of directors last October.
The only registry so far to have its contractual ban lifted is puntCat, the .cat registry operator.
When an ICANN working group was discussing the vertical integration issue a couple of years ago, Afilias was one of the participants that held fast against any relaxation of the 15% ownership cap, eventually driving the working group into stalemate and forcing the ICANN board’s hand.

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.