Another new gTLD goes to a closed generic applicant

Dish DBS has won the contention set for the .data gTLD, even though its proposed business model has been banned by ICANN.
Competing applicants Donuts and Minds + Machines have both withdrawn their competing applications.
It’s the second string this week to go to a “closed generic” applicant, that wants to keep all the domains in the TLD to itself even though it’s not a dot-brand.
Earlier this week, the company behind the Food Network TV show won .food.
Most companies that applied for closed generics changed their minds after the Governmental Advisory Committee issued advice against the model, but Dish was one of the ones that stuck to its original plans.
In June, ICANN ruled that .data, .food and a few others could either withdraw their bids, drop their exclusivity plans, or have their applications frozen until the next new gTLD round.
As withdrawal now seems to be off the cards, it seem that .data will not see the light of day for some time to come.

.food could be heading for limbo after closed generic applicant wins auction

The future of the .food gTLD is up in the air after single-registrant applicant Lifestyle Domain Holdings won its contention set.
The applicant, a subsidiary of Scripps Networks, is the sole remaining .food applicant after withdrawals from Donuts and Dot Food LLC.
It’s also a recalcitrant “closed generic” applicant, which continues to insist it has the right to exclude all third-party registrants from the .food namespace.
The company seems to have won .food at auction, even though ICANN recently slapped a ban on closed generics in the current application round.
Scripps will not be able to launch .food any time soon, unless it changes its planned registration policies.
The company may have essentially just paid to have .food placed on hold until the next new gTLD round.
Scripps runs a cable TV station in the US called Food Network, which it says is famous. It also runs Food.com, which it describes as “the third largest food site on the web”.
The current version of its application states:

Applicant intends to function in such a way that all domain name registrations in the TLD shall be registered to and maintained by Applicant and Applicant will not sell, distribute or transfer control of domain name registrations to any party that is not an Affiliate of Applicant

When ICANN asked applicants if they would like to revise their closed generic applications to allow third-party registrants, due to adverse Governmental Advisory Committee advice, Scripps was one of half a dozen applicants to decline.
Audaciously, the company told ICANN that an open registration policy for .food would hurt its brand:

To open the top level domain means that anyone could register a domain for a small annual amount of money and exploit, confuse and infringe upon the brand equity and goodwill of the famous FOOD, FOOD NETWORK and FOOD.COM brands established by Scripps with more than twenty years and hundreds of millions of dollars in investment.

Yes, Scripps thinks that when people think of “food”, they automatically think of the “third largest food web site” or a cable TV network that gets a 0.21% audience share in the UK.
A nonsense position, in other words.
So will Scripps get to run .food as a closed dot-brand? Probably not.
In June, ICANN ruled that the remaining closed generics applications (.food, .hotels, .grocery, .dvr, .data, and .phone) had the choice of either withdrawing, dropping their exclusivity plans, or carrying their applications over to the next gTLD application round.
Having just paid its competing applicants to go away, one assumes that Scripps’ withdrawal is off the cards.

.cruise heading to auction despite “closed generic” protest

Ownership of the contested gTLD .cruise will be resolved by auction, despite protests from one applicant that the other left it too late to drop its “closed generic” plans.
Applications from Cruise Lines International Association and Viking River Cruises were both placed in “In Auction” status by ICANN overnight.
Both original applications had been to operate .cruise for the registry’s own exclusive use, a so-called closed generic bid.
However, following objections from its Governmental Advisory Committee in April 2013, ICANN eventually decided to disallow such applications.
CLIA changed its plans in September 2013 as a result of the GAC advice.
But it wasn’t until mid-June this year, around about the same time as ICANN was mulling its final determination on the matter, that Viking changed its application to remove the exclusive access bits.
This prompted an angry response from CLIA.
In a letter to ICANN last month (pdf) the group accused Viking of waiting too long to change its application and said it should be given a chance to formally object.
CLIA further accused Viking of deliberately delaying the .cruise contention set so its own dot-brand, .viking, could get a head-start. The .viking gTLD is contracted and currently in pre-delegation testing.
ICANN dismissed CLIA’s request, however, saying that applicants can amend their applications at any time and that there are no plans to reopen the objection filing period for one special case.
The gTLD now seems set to head to an ICANN auction or private settlement between the two parties.

ICANN bans closed generic gTLDs, for now

ICANN has slapped a de facto ban on so-called “closed generic” gTLDs, at least for the remaining 2012 round applicants.
The ICANN board’s New gTLD Program Committee passed a resolution Sunday that un-freezes the remaining new gTLD applications that envisage a namespace wholly controlled by the applicant.
The affected strings are .hotels, .dvr and .grocery, which are uncontested, as well as .food, .data and .phone, which are contested by one or two other applicants.
The NGPC said five strings are affected, but the ICANN web site currently shows these six.
The resolution allows the contested strings to head to dispute resolution or auction, but makes it clear that “exclusive generic gTLDs” will not be able to sign a registry contract.
Instead, they will either have to withdraw their applications (receiving a partial refund), drop their exclusivity plans, or have their applications carried over to the second new gTLD round.
The GNSO has been asked to develop a policy on closed generics for the second round, which is still probably years away.
It’s not clear whether other applicants would be able to apply for strings that are carried over, potentially making the close generic applicant fight two contention sets.
The NGPC decision comes over two years after the Governmental Advisory Committee advised that closed generics must serve “a public interest goal” or be rejected.
This weekend’s resolution sidesteps the “public interest” question altogether.

ICANN ponders rejecting all closed generics

ICANN is thinking about rejecting all the remaining “closed generic” new gTLD applications from the current round.
According to minutes of a June 5 New gTLD Program Committee meeting published last night, ICANN is considering two options.
First, it could “prohibit exclusive generic TLDs in this round of the New gTLD Program and consult with the GNSO about developing consensus policy for future rounds”.
Or, it could initiate a “community process… to develop criteria to be used to evaluate whether an exclusive generic applicant’s proposed exclusive registry access serves a public interest goal.”
The NGPC has not yet reached a decision.
The rejection option would be fastest and easiest, but risks the wrath of companies that applied for closed generics — which were always envisaged when the new gTLD rules were being developed — in good faith.
Alternatively, developing a process to measure the applications against the “public interest” would be very time-consuming, possibly not even feasible, and would add even more delay to competing applicants.
This is one of the longest-delayed responses to the Governmental Advisory Committee’s April 2013 Beijing communique, which said “exclusive registry access should serve a public interest goal.”.
Closed generics, which ICANN now calls “exclusive access” gTLDs, are dictionary words that the applicant proposes to keep for itself, allowing no third parties to register names.
There are currently only six new gTLD applications that are stubbornly sticking to their original closed generic position.
Applicants for another 175 gTLDs have either changed their applications to allow third-party registrants or denied that they ever even planned to give themselves exclusive access.
Of the six hold-outs, three are delaying their respective contention sets while ICANN endlessly mulls the problem.
Here’s a table showing the affected strings.
[table id=33 /]
The applicants for the closed generics have each submitted responses explaining why they believe their proposals serve the public interest. They’re largely corporate legalese bibble.

Amazon snubs ICANN auction to win .coupon privately

Amazon has won the new gTLD .coupon, after Minds + Machines withdrew its application this week.
I understand that the two-way contention set was settled privately via a third party intermediary, possibly via some kind of auction, with M+M ultimately being paid off to withdraw its bid.
.coupon was the only ICANN-managed “auction of last resort” scheduled for July, following the $600,000 sale of .信息 last week.
The next batch of ICANN auctions is now not due to happen until August, unless of course ICANN rejigs its schedule in light of the .coupon settlement.
It’s not clear why Amazon has suddenly decided it prefers the idea of a private commercial settlement after all, but it appears to be good news for M+M, which will see the majority of the cash.
However, it could be related to the fact that .coupon, and dozens of other Amazon new gTLD applications, recently made the switch from being “closed generics” to more inclusive proposals.
Amazon had originally intended that itself and its subsidiaries would be the “only eligible registrants” for .coupon, but in March it changed the application, among many others.
Now, Amazon talks in vague terms about .coupon names being available to “eligible trusted third parties”, a term that doesn’t seem ready to define before the TLDs are actually delegated.
It seems to me, from Amazon’s revised applications, that .coupon and its other gTLDs will be locked down tight enough that they could wind up being effectively closed generics after all.
When Amazon publishes its first eligibility requirements document with ICANN, I expect members of the Governmental Advisory Committee will be watching closely.

Ten more new gTLDs get ICANN contracts

.bar, .pub, .fish, .actor, .caravan, .saarland, .yokohama, .ren, .eus and .рус all have new gTLD contracts with ICANN as of yesterday.
It’s an eclectic batch of TLDs. Unusually, only one belongs to Donuts.
Of note is .caravan, which on the face of it looks like an English-language generic, but which is actually a closed, single-registrant dot-brand.
While “caravan” is an English dictionary word in the UK and Australasia, in the US it’s a 50-year-old trademark belonging to Illinois-based applicant Caravan International.
The Governmental Advisory Committee never flagged up .caravan as a “closed generic” in its Beijing Communique, so ICANN never questioned how it would be used.
However, the application states that the company plans “to reserve all names within the TLD to itself”.
What we seem to have here is a case of a dictionary word in one part of the world being captured by a single-registrant applicant due to a trademark elsewhere.
Another notable new Registry Agreement signatory is Punto 2012, which has obtained a contract for .bar.
The gTLD was originally contested, but Demand Media’s United TLD withdrew following an RFP held by the government of Montenegro, which had an effective veto over the string “Bar” due to a match with the protected name of one of its administrative regions.
I gather Montenegro will be paid in some way from the .bar registry pot.
There are also a few new geographic/cultural registries this week: .eus for the Basque people of Spain, .yokohama for a Japanese city, .saarland for a German state and the Cyrillic IDN .рус for a subset of the Russian people.
The only .brand is .ren, for the Chinese social network Renren.
The remainder are English-language generics.

New US trademark rules likely to exclude many dot-brand gTLDs

The US Patent and Trademark Office plans to allow domain name registries to get trademarks on their gTLDs.
Changes proposed this week seem to be limited to dot-brand gTLDs and would not appear to allow registries for generic strings — not even “closed” generics — to obtain trademarks.
But the rules are crafted in such a way that single-registrant dot-brands might be excluded.
Under existing USPTO policy, applications for trademarks that consist solely of a gTLD cannot be approved, because they don’t identify the source of goods and services.
If “.com” were a trademark, one might have to assume that the source of Amazon.com’s services was Verisign, which is plainly not the case.
But the new gTLD program has invited in hundreds of gTLDs that exactly match existing trademarks. The USPTO said:

Some of the new gTLDs under consideration may have significance as source identifiers… Accordingly, the USPTO is amending its gTLD policy to allow, in some circumstances, for the registration of a mark consisting of a gTLD for domain-name registration or registry services

In order to have a gTLD trademark approved, the applicant would have to pass several tests, substantially reducing the number of marks that would get the USPTO’s blessing.
First, only companies that have signed a Registry Agreement with ICANN would be able to get a gTLD trademark. That should continue to prohibit “front-running”, in which a gTLD applicant tries to secure an advantage during the application process by getting a trademark first.
Second, the registry would have to own a prior trademark for the gTLD string in question. It would have to exactly match the gTLD, though the dot would not be considered.
It would have to be a word mark, without attached disclaimers, for the same types of goods and services that web sites within the gTLD are supposed to provide.
What this seems to mean is that registries would not be able to get trademarks on closed generics.
You can’t get a US trademark on the word “cheese” if you sell cheese, for example, but you can if you sell a brand of T-shirts called Cheese.
So you could only get a trademark on “.cheese” as a gTLD if the class was something along the lines of “domain name registration services for web sites devoted to selling T-shirts”.
Third, registries would have to present a bunch of other evidence demonstrating that their brand is already so well-known that consumers will automatically assume they also own the gTLD:

Because consumers are so highly conditioned and may be predisposed to view gTLDs as non-source indicating, the applicant must show that consumers already will be so familiar with the wording as a mark, that they will transfer the source recognition even to the domain name registration or registry services.

Fourth, and here’s the kicker, the registry would have to show it provides a “legitimate service for the benefit of others”. The USPTO explained:

To be considered a service within the parameters of the Trademark Act, an activity must, inter alia, be primarily for the benefit of someone other than the applicant.
…
While operating a gTLD registry that is only available for the applicant’s employees or for the applicant’s marketing initiatives alone generally would not qualify as a service, registration for use by the applicant’s affiliated distributors typically would.

In other words, a .ford as a single-registrant gTLD would not qualify for a trademark, but a .ford that allowed its dealerships around the world to register domains would.
That appears to exclude many dot-brand applicants. In the current batch, most dot-brands expect to be the sole registrant as well as the registry, at least at first.
Some applications talk in vague terms about also opening up their namespace to affiliates, but in most applications I’ve read that’s a wait-and-see proposition.
The new USPTO rules, which are open for comment to people who have registered with its web site, would appear to apply to a very small number of applicants at this stage.

ICANN freezes “closed generic” gTLD bids

ICANN has temporarily banned “closed generic” gTLDs in response to Governmental Advisory Committee demands.
The ban, which may be lifted, affects at least 73 applications (probably dozens more) for dictionary-word strings that had been put forward with “single registrant” business models.
ICANN’s New gTLD Program Committee on Tuesday voted to prevent any applicant for a closed generic gTLD from signing a registry contract, pending further talks with the GAC.
In order to sign a registry agreement, applicants will have to agree to the following Public Interest Commitments:

1. Registry Operator will operate the TLD in a transparent manner consistent with general principles of openness and non-discrimination by establishing, publishing and adhering to clear registration policies.
2. Registry Operator of a “Generic String” TLD may not impose eligibility criteria for registering names in the TLD that limit registrations exclusively to a single person or entity and/or that person’s or entity’s “Affiliates” (as defined in Section 2.9(c) of the Registry Agreement). “Generic String” means a string consisting of a word or term that denominates or describes a general class of goods, services, groups, organizations or things, as opposed to distinguishing a specific brand of goods, services, groups, organizations or things from those of others.

The effect of this is that applications for closed generics are on hold until ICANN has figured out what exactly the GAC is trying to achieve with its advice, which emerged in its Beijing communique (pdf).
Closed generics have not to date been a specific category of gTLD. They’re basically bids like Symantec’s .antivirus, L’Oreal’s .beauty and Amazon’s .cloud, where the gTLD is not a “dot-brand” but every second-level domain would belong to the registry anyway.
The two main reasons the new gTLD program has allowed them so far are a) ICANN decided that coming up with definitions for categories of gTLD was too hard and prone to abuse, and b) ICANN didn’t want to overly restrict registries’ business models.
Apparently all it needed was a nudge from the GAC and a change of senior management to change its mind.
ICANN now has a definition of “generic”, which I believe is a first. To reiterate, it’s:

a string consisting of a word or term that denominates or describes a general class of goods, services, groups, organizations or things, as opposed to distinguishing a specific brand of goods, services, groups, organizations or things from those of others

If the proposed PIC stands after ICANN’s talks with the GAC, nobody will be able to operate a generic string as a single-registrant gTLD.
But there may be one massive loophole.
Let’s say Volkswagen had applied for .golf (it didn’t) as a single-registrant dot-brand gTLD.
In that context, “golf” is a word used to label one model of car, “distinguishing a specific brand of goods, services, groups, organizations or things from those of others”.
But the word “golf” is also indisputably “a word or term that denominates or describes a general class of goods, services, groups, organizations or things”.
So which use case would trump the other? Would Volkswagen be banned from using .golf as a dot-brand?
It’s not just hypothetical. There are live examples in the current round of single-registrant applications that are both generic terms in one industry and brands in others.
Apple’s application for .apple is the obvious one. While it’s hard to imagine apple farmers wanting a gTLD, we don’t yet know how crazy the gTLD landrush is going to get in future rounds.
What of Bond University’s application for .bond? It’s a brand in terms of further education, but a generic term for debt instruments in finance.
Boots’ application for .boots? A brand in the high street pharmacy game, a generic if you sell shoes. Google’s application for .chrome is a brand in browsers but a generic in metallurgy.
None of the examples given here (and there are many more) are on the GAC’s list of problematic closed generics, but as far as I can see they would all be affected by ICANN’s proposed PIC.
The affected applications are not dead yet, of course. ICANN could change its view and drop the new PIC requirement a few months from now after talking to the GAC.
But the applications do appear to be in limbo for now.

Mystery gTLD applicant to take Google fight to lawmakers

An as-yet unidentified new gTLD applicant plans to lobby Washington DC and Brussels hard to get dozens of Google’s new gTLD bids thrown out of ICANN on competition grounds.
Phil Corwin of the law firm Virtuallaw, who is representing this applicant, told DI yesterday that his client believes Google plans to use new gTLDs to choke off competition in the web search market.
“They’re trying to use the TLD program to enhance their own dominance and exclude potential competitors,” Corwin said. “We think this should be looked at now because once these TLDs are delegated the delegations are basically forever.”
He’s planning to take these concerns to “policy makers and regulators” in the US and Europe, in a concerted campaign likely to kick off towards the end of the month (his client’s identity will be revealed at that time, he assured us).
Corwin’s client — which is in at least one contention set with Google, though in none with Amazon — reckons ICANN’s new gTLD program is ill-suited to pick the best candidate to run a gTLD.
If objections to new gTLD applications fail, the last-resort method for deciding the winner of a contention set is auction. Google obviously has the resources to win any auction it finds itself in.
“On any TLD Google has applied for, nobody can beat them,” said Corwin. “They have $50bn cash, plus the value of their stock. If they want any of the TLDs they’ve applied for, they get them.”
“A string contention process that relies solely on an auction clearly favors the deep-pocketed,” he said.
Google applied for 101 new gTLDs, 98 of which remain in play today. A small handful of the strings are dot-brands (such as .youtube and .google), with the majority comprising dictionary words and abbreviations.
Some of its generic bids propose open business models, while others would have “closed” or single-registrant business models. As we reported on Friday, this has kicked off a firestorm in the ICANN community.
Corwin said that Google appears to be planning to close off not only individual TLDs, but entire categories of TLDs.
For example, Google has applied for .youtube as a brand, but it’s also applied for .film, .movie, .mov, .live, .show and .tube with a variety of proposed business models.
“You can pretty well bet that they’ll exclude those that will pose a competitive threat to YouTube,” Corwin said.
Search will become much more important after the launch of hundreds of new gTLDs, Corwin reckons, as consumers are “not going to know that most of them exist”.
“Generic words are the perfect platform for constructing vertical search engines that can compete against Google’s general search engine,” Corwin said.
“Google is trying to buy up not just one but multiple terms that cover the same goods and services in key areas of internet commerce, and in effect control them so competition cannot arise and challenge Google’s dominance as a search engine,” he said.
Google has not yet revealed in any meaningful way how its search engine will handle new gTLDs.
The US Federal Trade Commission, at the conclusion of an antitrust investigation, recently gave Google a pass for its practice of prominently displaying results from its own services on results pages.
With that in mind, if Google were to win its contention set for .movie, but not for .film, is it possible that .movie would get a competitive advantage from preferential treatment in search?
Corwin reckons that Google anti-competitive intentions are already suggested by its strategy in ICANN’s new gTLD prioritization draw, which took place in December.
Of the roughly 150 applications for which Draw tickets were not purchased, Google is behind 24 of them — including .movie, .music, .tube and .search — 22 of which are in contention sets.
As a result, these contention sets have all been shunted to the back of ICANN’s application processing queue, adding many months to time-to-market and costing rival, less-well-funded applicants a lot of money in ongoing overheads.
“We see Google playing a rather different game here to most other applicants in terms of their motivation, which is not to enter the market but to protect their market dominance,” Corwin said.
Corwin said the game plan is to taken all these concerns to policy makers and regulators in the US and Europe in order to get governments on-side, both inside and outside of the ICANN process.
Corwin is also counsel and front-man for domainer group the Internet Commerce Association, but he said that the new anti-Google drive is unrelated to his work for ICA.
So why is his client only bringing up the issue now? After all, we’ve all known about the contents of every new gTLD application since last June.
My hunch is that Google is playing hard-ball behind the scenes in settlement talks with contention set rivals.
Contention sets can be resolved only when all but one of the applicants drops out, either following an ICANN auction or private buy-outs. Most applicants favor private resolution because it offers them the chance to recoup some, all, or more than the money they splashed out on applying.
That game plan probably does not apply to Google, of course, which is not wanting of funds. The company may even have good reason to prefer ICANN auctions, in order to to discourage those who would apply for new gTLDs in future just in order to put their hands in Google’s pockets.
The topic of closed generics and competition is likely to be a hot-button topic at ICANN’s next public meeting, coming up in Beijing this April.
Members of ICANN’s Governmental Advisory Committee have already expressed some concerns about many “closed gTLD” applications made by Google, Amazon and others.
ICANN’s board of directors is currently mulling over what to do about the issue, and has thrown it open to public comment for your feedback.