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Delays still dog many new gTLD applicants

Kevin Murphy, March 3, 2014, Domain Policy

With dozens of new gTLDs currently live and on sale, it’s easy to forget that many applicants are still in ICANN limbo due to several still-unresolved issues with the evaluation process.

The New gTLD Applicant Group wrote to ICANN on Friday to express many of these concerns.

First, NTAG is upset that resolution of the name collisions issue is not moving as fast as hoped.

JAS Advisors published its report into collisions, which recommends “controlled interruption” as a solution, last Thursday. But it’s currently open for public comment until April 21.

That would push approval of the plan by ICANN’s board beyond the Singapore meeting taking place at the end of March, at least a month later than originally expected.

NTAG secretary Andrew Merriam argues that the 42-day comment period should be reduced to 21 days, with ICANN and JAS conducting webinars this week to discuss the proposal with applicants.

Second, NTAG is upset that ICANN has pushed out the start date for the first contention set auctions from March to June. It’s asking ICANN to promise that there will be no further delays.

Third, NTAG says that many dot-brands are unable to enter into contracting talks with ICANN until Specification 13 of the Registry Agreement, which contains opt-outs for single-registrant zones, is finalized.

That’s not currently expected to happen until Singapore, apparently because there were no scheduled meetings of the ICANN board’s New gTLD Program Committee until then.

NTAG also complains about the length of time it’s taking to decide the first Community Priority Evaluations, which is apparently due to quality assurance measures (very wise given the controversy caused by the lack of oversight on new gTLD objections, if you ask me).

The NGPC has a newly scheduled meeting this Wednesday, with new gTLDs on the agenda, but it’s not yet clear whether any of NTAG’s issues are going to be addressed.

Authentic Web wants to be dot-brands’ pocket registrar

Kevin Murphy, September 25, 2013, Domain Services

Toronto-based start-up Authentic Web launched today with a set of workflow automation tools for dot-brand gTLD registries.

Because ICANN requires all new gTLDs, even the closed ones, to make registrations via accredited registrars, there’s often talk about dot-brands signing up with “pocket” registrars.

That’s what Authentic Web wants to be, according to CEO Peter LaMantia. The company is focused on the dot-brand market.

The company’s new Brand Registry Asset Manager will provide a way for dot-brands to control the registration process workflow so that only approved second-level domains are registered, he said.

For example, a smaller dot-brand might have a single person responsible for registering all domains in the gTLD, while a multinational might have multiple layers of delegated power.

Instead of plonking down a credit card at Go Daddy to buy a .com domain, a marketing manager would place a request into the BRAM system and have it approved up a chain of command before the ultimate Add command was made with the registry.

Authentic Web would usually act as the registrar middleman, but the plan is to also integrate the software with third-party registrars.

The software will also give dot-brands greater visibility over their portfolios, LaMantia said.

Many big brands already have a hard time keeping track of their existing portfolios of domain names in gTLDs they do not control, he said.

“I know a lot of companies that do this on Excel sheets,” he said. “If they own the registry they’re not going to want to do that. That’s the hole in the market.”

BRAM is web-based and hosted by Authentic Web, so it won’t at first integrate with existing enterprise identity systems, though LaMantia said integration tools are on the road-map.

The software will be priced on a monthly subscription basis, with a per-domain component.

LaMantia, who founded Authentic Web last year, previously was president of the registrar Aplus.net.

GM down to one gTLD bid after dropping .chevy

Kevin Murphy, August 21, 2013, Domain Registries

General Motors looks set to leave the new gTLD program completely, after dumping its application for .chevy.

It’s the fourth of GM’s five dot-brand gTLD bids to be withdrawn after .chevrolet, .cadillac and .gmc. Only .buick remains in the Initial Evaluation process.

Of the 116 new gTLD applications to be withdrawn to date, 55 have been uncontested and for single-registrant zones. Almost all of the 55 applied-for strings are famous brands.

It would be wrong to assume that each of these was a “defensive” application — some represent discontinued brands — but it’s still a worryingly high number, representing over $10 million in ICANN fees.

That said, it’s still less than 3% of the total applications submitted in the current round.

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

Kevin Murphy, August 13, 2013, Domain Policy

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.

Hong Kong telco drops dot-brand gTLD bid

Hong Kong Telecom has withdrawn its application for the new gTLD .香港電訊, the Chinese-script version of its brand.

The proposed single-registrant gTLD was uncontested, with no objections or Governmental Advisory Committee advice. It’s the 76th application to be withdrawn.

It was a defensive application. Under the heading “Goals”, HKT said: “An important goal of the TLD is the safeguard of the intellectual property right of the HKT and the 香港電訊 brand.”

The company hadn’t bothered to take advantage of the IDN bias in the prioritization draw and wasn’t due to have its Initial Evaluation finalized until the last two weeks of the process.