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US unhappy with ICANN, urges more delay to many new gTLDs

Kevin Murphy, February 8, 2014, Domain Policy

The US government is not pleased with ICANN’s rather liberal interpretation of Governmental Advisory Committee advice on new gTLDs and wants more talks about “safeguards”.

Not only that, but it wants to start talking to ICANN about extending safeguards applicable to new gTLDs to old gTLDs, presumably including the likes of .com, too.

A letter to ICANN from Department of Commerce assistant secretary Larry Strickling, obtained by DI today, calls for more talks before ICANN finalizes its handling of the GAC’s Beijing communique.

Strickling notes, as DI has previously, that ICANN softened the meaning of the advice in order to smooth its implementation.

as can be the case when translating GAC Advice to contractual provisions, the NGPC [the ICANN board’s New gTLD Program Committee] made adjustments to the GAC Advice that the United States believes could cause enforcement problems and as such merits further discussion. The National Telecommunications and Information Administration (NTIA), on behalf of the United States, is planning to raise these concerns for discussion at the March GAC meeting in Singapore and requests that ICANN take this fact into account before moving forward with applications for strings impacted by the relevant portions of GAC advice

The letter (pdf) was sent February 4, just a day before the NGPC held a meeting — the results of which we do not yet know — that had the GAC Advice on its agenda.

The New gTLD Applicants Group had urged the NGPC to finally put the GAC Advice to rest, highlighting the “heavy burden that the delay in the implementation of GAC Category 1 Advice has imposed upon affected applicants” in a letter last week.

The Category 1 advice, you may recall, comprised eight “safeguards” mandating policies such as industry engagement and registrant authentication, applicable to at least 386 gTLD applications.

Back in November, ICANN announced how it planned to handle this advice, but changed its meaning to make it more palatable to ICANN and applicants.

Those changes are what Strickling is not happy with.

He’s particularly unhappy with changes made to the GAC’s demand for many gTLDs to be restricted to only card-carrying members of the industries the strings seem to represent.

The GAC said in Beijing:

At the time of registration, the registry operator must verify and validate the registrants’ authorisations, charters, licenses and/or other related credentials for participation in that sector.

In other words, you’d have to provide your doctor license before you could register a .doctor domain.

But ICANN proposed to implement it like this:

Registry operators will include a provision in their Registry-Registrar Agreements that requires Registrars to include in their Registration Agreements a provision requiring a representation that the Registrant possesses any necessary authorisations, charters, licenses and/or other related credentials for participation in the sector associated with the Registry TLD string.

The doctor under this policy would only require the doctor to check a box confirming she’s a doctor. As Strickling said:

The NGPC has changed the GAC-coveyed concept of “verification and validation” to “representation”

Requirements for registries to mandate adherence to government regulations on the protection of financial and healthcare data are also his targets for further discussion.

What all this boils down to is that, assuming ICANN paid heed to Strickling’s letter, it seems unlikely that NTAG will get closure it so desperately wants until the Singapore meeting in late March — a year after the original Beijing communique — at the earliest.

In other words, lots of new gTLD applicants are probably going to be in limbo for a bit longer yet.

But Strickling also has another bombshell to drop in the final sentence of the letter, writing:

In addition, we will recommend that cross community discussion begin in earnest on how the safeguards that are being applied to new gTLDs can be applied to existing gTLDs.

So it seems the GAC is likely to start pressing to retroactively apply its new gTLDs advice to legacy gTLDs too.

Registrant verification in .com? Stricter Whois checks and enforcement? That conversation has now started, it seems.

In the wake of .amazon, IP interests turn on the GAC

Kevin Murphy, July 19, 2013, Domain Policy

Intellectual property interests got a wake-up call at ICANN 47 in Durban this week, when it became clear that they can no longer rely upon the Governmental Advisory Committee as a natural ally.

The GAC’s decision to file a formal consensus objection against Amazon’s application for the .amazon gTLD prompted a line of IP lawyers to queue up at the Public Forum mic to rage against the GAC machine.

As we reported earlier in the week, the GAC found consensus to its objection to .amazon after the sole hold-out government, the United States, decided to keep quiet and allow other governments to agree.

This means that the ICANN board of directors will now be presented with a “strong presumption” that .amazon should be rejected.

With both previous consensus objections, against .africa and .gcc, the board has rejected the applications.

The objection was pushed for mainly by Brazil, with strong support from Peru, Venezuela and other Latin American countries that share the Amazon region, known locally as Amazonas.

During a GAC meeting on Tuesday, statements of support were also made by countries as diverse as Russia, Uganda and Trinidad and Tobago.

Brazil said Amazon is a “very important cultural, traditional, regional and geographical name”. Over 50 million Brazilians live in the region, he said.

The Brazilian Congress discussed the issue at length, he said.

The Brazilian Internet Steering Committee was also strongly against .amazon, he said, and there was a “huge reaction from civil society” including a petition signed by “thousands of people”.

All the countries in the region also signed the Montevideo Declaration (pdf), which resolves to oppose any attempts to register .amazon and .patagonia in any language, in April.

It doesn’t appear to be an arbitrary decision by one government, in other words. People were consulted.

The objection did not receive a GAC consensus three months ago in Beijing only because the US refused to agree, arguing that governments do not have sovereign rights over geographic names.

But prior to Durban, without changing its opinion, the US said that it would not stand in the way of consensus.

It seems that there may have been bigger-picture political concerns at play. The NTIA, which represents the US on the GAC, is said to have had its hands tied by its superiors in Washington DC.

Did the GAC move the goal posts?

With the decision to object to .amazon already on the public record before the GAC’s Durban communique was formally issued yesterday, Intellectual Property Constituency interests had plenty of time to get mad.

At the Public Forum yesterday, several took to the open mic to slam the GAC’s decision.

Common themes emerged, one of which was the claim that the GAC is retroactively changing the rules about what is and is not a “geographic” string for the purposes of the Applicant Guidebook.

Stacey King, senior corporate counsel with Amazon, said:

Prior to filing our applications Amazon carefully reviewed the Applicant Guidebook; we followed the rules. You are now being asked to significantly and retroactively modify these rules. That would undermine the hard-won international consensus to the detriment to all stakeholders. I repeat, we followed these rules.

It’s true that the string “amazon” is not on any of the International Standards Organization lists that ICANN’s Geographic Names Panel used to determine what’s “geographic”.

The local-language string “Amazonas” appears four times, representing a Brazilian state, a Colombian department, a Peruvian region and a Venezuelan state; Amazon isn’t there.

But Amazon is wrong about one thing.

By filing its objection, the GAC is not changing the rules about geographic names, it’s exercising its entirely separate but equally Guidebook-codified right to object to any application for any reason.

That’s part of the Applicant Guidebook too, and it’s a part that the IPC has never previously objected to.

Amazon was not alone making its claim about retroactive changes. IPC president Kristina Rosette, wearing her hat as counsel for former .patagonia applicant Patagonia Inc, said:

Patagonia is deeply disappointed by and concerned about the breakdown of the new gTLD process. Consistent with the recommendations and principles established in connection with that process, Patagonia fully expected its .patagonia application to be evaluated against transparent and predictable criteria, fully available to applicants prior to the initiation of the process.

Yet, its experience demonstrates the ease with which one stakeholder can jettison rules previously agreed upon after an extensive and thorough consultation.

That’s not consistent with the IPC’s position.

The IPC just last month warmly welcomed (pdf) the GAC’s Beijing advice, stating that the after-the-fact “safeguards” it demanded for all new gTLDs should be accepted.

Apparently, it’s okay for the GAC to move the goal posts for gTLD applicants when its advice is about Whois accuracy, but when it files an objection — perfectly compliant with the GAC Advice section of the Guidebook — that interferes with the business objectives of a big trademark owner, that’s suddenly not cool.

The IPC also did not challenge the GAC Advice process when it was first added to the Applicant Guidebook in the April 2011 draft.

At that time, the GAC had responded to intense lobbying by IP interests and was fighting their corner with the ICANN board, demanding stronger trademark protections in the new gTLD program.

If the IPC now finds itself arguing against the application of the GAC Advice rule, perhaps it should consider whether speaking up earlier might have been a good idea.

Rosette tried to substantiate her remarks by referring back to previous GAC advice, specifically a May 26, 2011 letter in which she said the GAC “formally accepted” the Guidebook’s definition of geographic strings.

However, that letter (pdf) has a massive caveat. It says:

Given ICANN’s clarifications on “Early Warning” and “GAC Advice” that allow the GAC to require governmental support/non-objection for strings it considers to be geographical names, the GAC accepts ICANN’s interpretation with regard to the definition of geographic names.

In other words, “The GAC is happy with your list, as long as we can add our own strings to it at will later”.

Rosette’s argument that the GAC has changed its mind, in other words, does not hold.

It wasn’t just IP interests that stood up against the .amazon decision, however. The IPC found an unlikely ally in the Registries Stakeholder Group, represented at the Public Forum by Verisign’s Keith Drazek.

Drazek sought to link the “retroactive changes” on geographic strings to the “retroactive changes” the GAC has proposed in relation to the so-called Category 1 strings — which would have the effect of demanding that hundreds of regular gTLD bids convert into de facto “Community” applications. He said:

While different stakeholders have different views about particular aspects of the GAC advice, we have a shared concern about the portions of that advice that constitute retroactive changes to the Applicant Guidebook around the issues of sovereign rights, undefined and unexplained geographic sensitivities, sensitive industry strings, regulated strings, etc.

This appears to be one of those rare instances where the interests of registries and the interests of IP owners are aligned. The registries, however, have at least been consistent, complaining about the GAC Advice process as soon as it was published in April 2011.

There’s also a big difference between the substance of the advice that they’re currently complaining about: the objection against .amazon followed the Guidebook rules on GAC Advice almost to the letter, whereas the Category 1 advice came completely out of the left field, with no Guidebook basis to cling to.

The GAC in the case of .amazon followed the rules. The rules are stupid, but the time to complain about that was before paying your $185,000 to apply.

If anyone is trying to change the rules after the fact, it’s Amazon and its supporters.

Is the GAC breaking the law?

Another recurring theme throughout yesterday’s Public Forum commentary was the idea that international trademark law does not support the GAC’s right to object to .amazon.

I’m going to preface my editorializing here with the usual I Am Not A Lawyer disclaimer, but it seems to be a pretty thin argument.

Claudio DiGangi, secretary of the IPC and external relations manager at the International Trademark Association, was first to comment on the .amazon objection. He said:

INTA strongly supports the recent views expressed by the United States. In particular, that it 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.

J Scott Evans, head of domains at Yahoo, who left the IPC for the Business Constituency recently (apparently after some kind of disagreement) was next. He said:

There is no international recognition of country names as protection and they cannot trump trademark rights. So giving countries a block on a name violates international law. So you can’t do it.

There were similar comments along the same lines.

Heather Forrest, a senior lecturer at an Australian university and former AusRegistry employee, said she had conducted a doctoral thesis (available at Amazon!) on the rights of governments over geographic names, with particular reference to the Applicant Guidebook.

She told the Public Forum:

My study was comprehensive. I looked at international trade law, unfair competition law, intellectual property law, geographic indications, sovereign rights and human rights. As the board approved the Applicant Guidebook, I completed my study and found that there is not support in international law for priority or exclusive right of states in geographic names and found that there is support in international law for the right of non-state others in geographic names.

Kiran Malancharuvil, whose job until recently was to lobby the GAC for special protections for her client, the International Olympic Committee, now works for MarkMonitor. Calling for the ICANN board to reject the GAC’s advice on .amazon, she said at the Public Forum:

To date, governments in Latin America including the Amazonas community countries have granted Amazon over 130 trademark registrations that have been in continuous use by Amazon since 1994 without challenge. Additionally, Amazon has used their brand within domain names including some registered by MarkMonitor and including registrations in Amazonas community ccTLDs without objection.

Amazonas community countries and all other nations who have signed the TRIPS agreement have obligated themselves to maintain and protect these trademark registrations. Despite these granted rights, members of the community signed the Montevideo declaration and resolved to reject Amazon and Patagonia in any language as well as any other top-level domains referring to them. This declaration appears inconsistent with national and international law.

Having read TRIPS — the World Trade Organization’s Trade Related Aspects of Intellectual Property Rights treaty — this morning, I’m still none the wiser how it relates to .amazon.

It’s a treaty that sought to create some uniformity in how trademarks and other types of intellectual property are handled globally, and domain names are not mentioned once.

As far as I can tell, nobody is asking Amazon to change its name and nobody’s trying to take away its trademarks. Nobody’s even trying to take away its domain names.

If the international law argument is simply that the GAC and/or ICANN cannot prevent a company with a trademark from getting its mark as a TLD, as Yahoo’s Evans suggested, it seems to me that quite a lot of the new gTLD program would have to be rewritten.

We’re already seeing Legal Rights Objections in which an applicant with a trademark is losing against an applicant without a trademark.

Is that illegal too? Was it illegal for ICANN to create an LRO process that has allowed Donuts (no trademark) to beat Express LLC (with trademark) in a fight over .express?

What about other protections in the Guidebook?

ICANN already bans two-character gTLDs, on the basis that they could interfere with future ccTLDs — protecting the geographic rights of countries that do not even exist — which disenfranchises companies with two-letter trademarks, such as BT and HP.

What about 888, the poker company, and 3, the mobile phone operator? They have trademarks. Should ICANN be forced to allow them to have numeric gTLDs, despite the obvious risks?

The Guidebook already bans country names outright, and says thousands of other geographic terms need government support or will be rejected. Is this all illegal?

If the argument is that trademarks trump all, ICANN may as well throw out half the Guidebook.

Now what?

Unlike .patagonia, which dropped out of the new gTLD program last week (we’ll soon discover whether that was wise), the objection to .amazon will now go to ICANN’s board of directors for consideration.

While the Guidebook calls for a “strong presumption” that the board will then reject the application, board member Chris Disspain said yesterday that outsiders should not assume that it will simply rubber-stamp the GAC’s advice.

In both previous cases, the outcome has been a rejection of the application, however, so it’s not looking great for Amazon.

This is how stupid the GAC’s new gTLDs advice is (part two)

Kevin Murphy, July 15, 2013, Domain Policy

When Donuts and ICANN signed a new gTLD contract for .游戏, on a stage in front of hundreds of people at ICANN 47 this morning, it made a mockery of the relationship between ICANN and the GAC.

游戏 is the Chinese for “game” or “games”. It was an uncontested application with no objections and, importantly, no Governmental Advisory Committee advice standing in its way.

Donuts got lucky. The six companies that have applied for .game or .games in English are all currently prohibited from entering into contract negotiations with ICANN because they did receive GAC advice.

When the GAC drafted its “Advice on New gTLDs” in Beijing three months ago, it included a long but “non-exhaustive” set of strings that it said needed extra “safeguards” on security and community support.

ICANN has called these strings the “Category 1” list. It’s already been the subject of some strong discussion with the GAC at the meeting in Durban, which kicked off over the weekend.

So was it the GAC’s intention with Category 1 to introduce a language bias into the new gTLD program? Did it intend to give Chinese-script strings special privileges over ASCII-based languages?

If there was a sensible rationale for including .game/.games on the Category 1 list, why didn’t it apply to .游戏?

Or did the GAC simply not give its Beijing advice the care and attention it deserved?

Based on sessions in Durban over the weekend, the latter explanation appears to be closer to the truth.

“Vague and unimplementable”

At session between the GAC and ICANN’s board-level New gTLD Program Committee yesterday, the GAC heard in the strongest terms (within the bounds of polite discourse) how silly its Beijing advice was.

The session kicked off with NGPC member Chris Disspain delivering a witheringly but necessarily blunt assessment of the “Category 1” list and the associated safeguards.

He first noted that ICANN already rejected the GAC’s advice to make certain strings mandatory “community” gTLDs — something that would have had the same effect as the Beijing advice — back in 2011.

The GAC Early Warning system was introduced instead, he said, to give governments the ability to work with or object to applicants for specific strings that they were worried about.

Disspain continued with a catalog of criticisms against the Category 1 advice:

The difficulties we see at the moment are that the categories of strings are broad and undefined. There’s no principled basis for distinguishing certain categories and strings.

Generic terms are in the same category as highly regulated industries. Some strings have segments that are both licensed and unlicensed.

It’s difficult to determine relevant regulatory agencies and self-regulatory organizations. Some strings refer to industries that may be sensitive or regulated in a single or a few jurisdictions only.

The safeguard advice items three to eight create obligations that are vague and unimplementable.

And these are the outcomes that we sought to avoid when we rejected the advice in the first place. And we agreed to put in place the Early Warning system so that governments could deal directly with applicants if they had issues with the string.

He received some push-back from GAC members, some of whom — insisting that the Beijing communique was well-considered and easily understood — appear to be in denial.

“In the end, you should come with us, trying to implement,” the member for Italy said. “Because I’m sure that you well understood the meaning of this Annex 1.”

In response, Disspain reiterated that the NGPC really doesn’t understand what the GAC wants and really doesn’t understand how it came up with the Category 1 list in the first place.

“We’re unclear how we could implement at all some pieces of the advice,” he said. “The issue for us is not so much that there could be other names that could be added to the list but rather there are names that appear on the list that we don’t understand why they’re there in the first place.”

Now what?

Impasse thus reached, much of the discussion during the hour-long session focused on ways to potentially move the process forward, with participants acknowledging they’re in “uncharted territory”.

Switzerland suggested — contrary to what is plainly spelled out in the Applicant Guidebook, which asks the GAC to comment on specific applications — that the GAC didn’t think that its job was to come up with a definitive list of worrying strings. He said:

Initially, we did not think that it’s the task of the GAC to put together a finite list of sensitive strings, but we have been informed that it would be helpful to come up with concrete names.

So don’t take this list as a list that has been worked out over months and years and every TLD has been tested. These are examples, as we identified it in a rather short time.

There might be a few names that are not on the list that you could easily also add. There are some inconsistencies in that sense. But this is not meant to be a finite, absolute list.

The UK rep said he was disappointed with the “negative” tone of the NGPC’s response to the safeguard advice, but also suggested that the next step might be to come up with a proper list of strings.

“I think the next step forward is for the committee to try and prepare a first draft list for consultation with the whole community,” he said. “And we, the governments, we could obviously seize the opportunity to contribute to that consultation.”

The European Commission provided a statement that its representative said represented the views of EU states on the GAC. The statement said that the Beijing list should be an “at-minimum” list.

European GAC members consider the role of the GAC in this discussion is to provide high-level clarifications regarding the Beijing GAC advice rather than precise implementation means.

We would also like to note that the list of sensitive strings provided in the Beijing communique is a non-exhaustive one… meaning the list should be considered an at-minimum list.

What does this all mean for applicants?

Based on yesterday’s hour-long discussion, ICANN can surely be no closer to understanding which applications are affected by the GAC advice and presumably still doesn’t have a clue what some of it means.

This afternoon, during another session in Durban, program manager Christine Willett said that ICANN is using the Category 1 list published in Beijing when deciding which applicants can be contracted with.

“The NGPC is still considering the Category 1 advice and we have no direction or indication from them yet that a definitive list will be created,” she said.

I can’t see it being resolved this week, and inter-sessional meetings are very rare, so we could now be looking at Buenos Aires — November — before any of this gets sorted out.

For applicants who were — it now seems — selected at random to appear on the Beijing list, they’re facing months more delay while applicants that were not included are free to sign registry contracts today.

Is this fair?

Is it fair to allow applicants that were inexplicably excluded from the GAC’s Beijing list to go ahead and contract with ICANN, while others that were inexplicably included are delayed by many more months?

Is it fair that some applications will get bumped up the queue to delegation just because the GAC didn’t spend enough time thinking about its task?

How can ICANN be certain at contracting that any application is free of GAC advice, when the GAC has made it clear that it expects its list of strings to grow?

I asked ICANN CEO Fadi Chehade some of these questions during a press conference this afternoon and he pointed out that there are mechanisms in place in the Registry Agreement to allow future GAC advice to be addressed.

If it indeed the case that Donuts, for example, might have to add some safeguard commitments to its already signed .游戏 contract, why prevent the .game and .games applicants from signing contracts too?

Wouldn’t it be fairer to delay all new gTLD applications, or none at all, rather than relying on a list of strings we now know definitively to be ad hoc and unreliable?

Governments kill off Patagonia’s dot-brand bid

Kevin Murphy, July 11, 2013, Domain Policy

The clothing retailer Patagonia has withdrawn its application for .patagonia after it became clear that ICANN’s Governmental Advisory Committee was unlikely to allow it.

Controversial from the outset, Patagonia’s dot-brand came under fire from governments including Argentina and Chile because the company is named after a large region of Latin America.

The GAC couldn’t find a consensus for a full-on objection to the bid, however, because the US government refused to agree that governments should have rights over such geographic terms.

However the US said last week that it would stand neutral on .patagonia and other geographic-flavored applications at next week’s ICANN meeting in Durban, smoothing the path to GAC consensus.

A GAC consensus objection would have spelled certain death to the application.

Amazon’s .amazon application is in exactly the same position as .patagonia was. Unless the company can come to some kind of arrangement with Brazil and over governments it may suffer the same fate.

New gTLD registry contract approved, but applicants left hanging by GAC advice

ICANN has approved the standard registry contract for new gTLD registries after many months of controversy.

But its New gTLD Program Committee has also decided to put hundreds more applications on hold, pending talks with the Governmental Advisory Committee about its recent objections.

The new Registry Agreement is the baseline contract for all new gTLD applicants. While some negotiation on detail is possible, ICANN expects most applicants to sign it as is.

Its approval by the NGPC yesterday — just a couple of days later than recently predicted by ICANN officials — means the first contracts with applicants could very well be signed this month.

The big changes include the mandatory “Public Interest Commitments” for abuse scanning and Whois verification that we reported on last month, and the freeze on closed generics.

But a preliminary reading of today’s document suggests that the other changes made since the previous version, published for comment by ICANN in April, are relatively minor.

There have been no big concessions to single-registrant gTLD applicants, such as dot-brands, and ICANN admitted that it may have to revise the RA in future depending on how those discussions pan out.

In its resolution, the NGPC said:

ICANN is currently considering alternative provisions for inclusion in the Registry Agreement for .brand and closed registries, and is working with members of the community to identify appropriate alternative provisions. Following this effort, alternative provisions may be included in the Registry Agreement.

But many companies that have already passed through Initial Evaluation now have little to worry about in their path to signing a contract with ICANN and proceeding to delegation.

“New gTLDs are now on the home stretch,” NGPC member Chris Disspain said in a press release “This new Registry Agreement means we’ve cleared one of the last hurdles for those gTLD applicants who are approved and eagerly nearing that point where their names will go online.”

Hundreds more, however, are still in limbo.

The NGPC also decided yesterday to put a hold on all “Category 1” applications singled out for advice in the Governmental Advisory Committee’s Beijing communique.

That’s a big list, comprising hundreds of applications that GAC members had concerns about.

The NGPC resolved: “the NGPC directs staff to defer moving forward with the contracting process for applicants who have applied for TLD strings listed in the GAC’s Category 1 Safeguard Advice, pending a dialogue with the GAC.”

That dialogue is expected to kick off in Durban a little over a week from now, so the affected applicants may not find themselves on hold for too long.

Negotiations, however, are likely to be tricky. As the NGPC’s resolution notes, most people believe the Beijing communique was “untimely, ill-conceived, overbroad, and too vague to implement”.

Or, as I put it, stupid.

By the GAC’s own admission, its list of strings is “non-exhaustive”, so if the delay turns out to have a meaningful impact on affected applicants, expect all hell to break loose.