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The True Historie of Trademark+50 and the Deathe of the GNSO (Parte the Thirde)

Kevin Murphy, May 28, 2013, Domain Policy

ICANN’s decision to press ahead with the “Trademark+50” trademark protection mechanism over the objections of much of the community may not be the end of the controversy.

Some in the Generic Names Supporting Organization are even complaining that ICANN’s rejection of a recent challenge to the proposal may “fundamentally alter the multi-stakeholder model”.

Trademark+50 is the recently devised adjunct to the suite of rights protection mechanisms created specially for the new gTLD program.

It will enable trademark owners to add up to 50 strings to each record they have in the Trademark Clearinghouse, where those strings have been previously ruled abusive under UDRP.

Once in the TMCH, they will generate Trademark Claims notices for both the trademark owner and the would-be registrant of the matching domain name during the first 60 days of general availability in each new gTLD.

Guinness, for example, will be able to add “guinness-sucks” to its TMCH record for “Guinness” because it has previously won guinness-sucks.com in a UDRP decision.

If somebody then tries to register guinness-sucks.beer, they’ll get a warning that they may be about to infringe Guinness’ trademark rights. If they go ahead and register anyway, Guinness will also get an alert.

Trademark+50 was created jointly by ICANN’s Business Constituency and Intellectual Property Constituency late last year as one of a raft of measures designed to strengthen rights protection in new gTLDs.

They then managed to persuade CEO Fadi Chehade, who was at the time still pretty new and didn’t fully appreciate the history of conflict over these issues, to convene a series of invitation-only meetings in Brussels and Los Angeles to try to get other community members to agree to the proposals.

These meetings came up with the “strawman solution”, a list of proposed changes to the program’s rights protection mechanisms.

Until two weeks ago, when DI managed to get ICANN to publish a transcript and audio recording of the LA meetings, what was said during these meetings was shrouded in a certain degree of secrecy.

I don’t know why. Having listened to the 20-hour recording, I can tell you there was very little said that you wouldn’t hear during a regular on-the-record public ICANN meeting.

Everyone appeared to act in good faith, bringing new ideas and suggestions to the table in an attempt to find a solution that was acceptable to all.

The strongest resistance to the strawman came, in my view, from the very small number (only one remained by the end) of non-commercial interests who had been invited, and from the registrars.

The non-coms were worried about the “chilling effect” of expanding trademark rights, while registrars were worried that they would end up carrying the cost of supporting confused or frightened registrants.

What did emerge during the LA meeting was quite a heated discussion about whether the IPC/BC proposals should be considered merely “implementation” details or the creation of new “policy”.

That debate spilled over into 2013.

Under the very strictest definition of “policy”, it could be argued that pretty much every aspect of every new rights protection mechanism in the Applicant Guidebook is “implementation”.

The only hard policy the GNSO came up with on trademarks in new gTLDs was back in 2008. It reads:

Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law.

Pretty much everything that has come since has been cobbled together from community discussions, ad hoc working groups, ICANN staff “synthesis” of public comments, and board action.

But many in the ICANN community — mainly registries, registrars and non-commercial interests — say that anything that appears to create new rights and/or imposes significant new burdens on the industry should be considered “policy”.

During the LA meetings, there was broad agreement that stuff like extending Trademark Claims from 60 to 90 days and instituting a mandatory 30-day notice period before each Sunrise period was “implementation”.

Those changes won’t really incur any major new costs for the industry; they merely tweak systems that already have broad, if sometimes grudging, community support.

But the attendees were split (IPC/BC on the one side, most everyone else on the other) about whether Trademark+50, among other items, was new policy or just an implementation detail.

If something is “policy” there are community processes to deal with it. If it’s implementation it can be turned over to ICANN staff and forgotten.

Because the registries and registrars have an effective veto on GNSO policy-making and tend to vote as a bloc, many others view a “policy” label as a death sentence for something they want done.

A month after the strawman meetings, in early December, ICANN staff produced a briefing paper on the strawman solution (pdf) for public comment. Describing what we’re now calling Trademark+50, the paper stated quite unambiguously (it seemed at the time):

The inclusion of strings previously found to be abusively registered in the Clearinghouse for purposes of Trademark Claims can be considered a policy matter.

Chehade had previously — before the strawman meetings — strongly suggested in a letter to members of the US Congress that Trademark+50 was not doable:

It is important to note that the Trademark Clearinghouse is intended be a repository for existing legal rights, and not an adjudicator of such rights or creator of new rights. Extending the protections offered through the Trademark Clearinghouse to any form of name (such as the mark + generic term suggested in your letter) would potentially expand rights beyond those granted under trademark law and put the Clearinghouse in the role of making determinations as to the scope of particular rights.

Personally, I doubt then-new Chehade wrote the letter (at least, not without help). It mirrors Beckstrom-era arguments and language and contrasts with a lot of what he’s said since.

But it’s a pretty clear statement from ICANN’s CEO that the expansion of Trademark Claims to Trademark+50 night expand trademark rights and, implicitly, is not some throwaway implementation detail.

Nevertheless, a day after the staff briefing paper Chehade wrote to GNSO Council chair Jonathan Robinson in early December to ask for “policy guidance” on the proposal.

Again, there was a strong suggestion that ICANN was viewing Trademark+50 as a policy issue that would probably require GNSO input.

Robinson replied at the end of February, after some very difficult GNSO Council discussions, saying “the majority of the council feels that is proposal is best addressed as a policy concern”.

The IPC disagreed with this majority view, no doubt afraid that a “policy” tag would lead to Trademark+50 being gutted by the other GNSO constituencies over the space of months or years.

But despite ICANN staff, most of the GNSO Council and apparently Chehade himself concluding that Trademark+50 was policy, staff did a U-turn in March and decided to go ahead with Trademark+50 after all.

An unsigned March 20 staff report states:

Having reviewed and balanced all feedback, this proposal appears to be a reasonable add-on to an existing service, rather than a proposed new service.

It is difficult to justify omission of a readily available mechanism which would strengthen the trademark protection available through the Clearinghouse. Given that the proposal relies on determinations that have already been made independently through established processes, and that the scope of protection is bounded by this, concerns about undue expansion of rights do not seem necessary.

This caught the GNSO off-guard; Trademark+50 had looked like it was going down the policy track and all of a sudden it was a pressing reality of implementation.

Outraged, the Non-Commercial Stakeholders Group, which had been the strongest (if smallest through no fault of their own) voice against the proposal during the strawman meetings filed a formal Reconsideration Request (pdf) with ICANN.

Reconsideration Requests are one of the oversight mechanisms built into ICANN’s bylaws. They’re adjudicated by ICANN’s own Board Governance Committee and never succeed.

In its request, the NCSG told a pretty similar history to the one I’ve just finished relating and asked the BGC to overturn the staff decision to treat Trademark+50 as implementation.

The NCSG notes, rightly, that just because a domain has been lost at UDRP the string itself is not necessarily inherently abusive. To win a UDRP a complainant must also demonstrate the registrant’s bad faith and lack of rights to the string at issue.

To return to the earlier example, when notorious cybersquatter John Zuccarini — an unambiguously bad guy — registered guinness-sucks.com back in 2000 he told Guinness he’d done it just to piss them off.

That doesn’t mean guinness-sucks.beer is inherently bad, however. In many jurisdictions I would be well within my rights to register the domain to host a site criticizing the filthy brown muck.

But if I try to register the name, I’m going to get a Trademark Claims notice asking me to verify that I’m not going to infringe Guinness’ legal rights and advising me to consult a lawyer.

Chilling effect? Maybe. My own view is that many people will just click through the notice as easily as they click through the Ts&Cs on any other web site or piece of software.

Either way, I won’t be able to claim in court that I’d never heard of GuinnessTM, should the company ever decide to sue me.

Anyway, the NCSG’s Reconsideration Request failed. On May 16 the BGC issued a 15-page determination (pdf) denying it.

It’s this document that’s causing consternation and death-of-the-GNSO mutterings right now.

Last week, Neustar’s lead ICANN wonk Jeff Neuman asked for the Reconsideration Request to be put on the agenda of the GNSO Council’s June 13 meeting. He wants BGC representatives to join the call too. He wrote:

This decision was clearly written by legal counsel (and probably from outside legal counsel). It was written as a legal brief in litigation would be written, and if upheld, can undermine the entire bottom-up multi-stakeholder model. If ICANN wanted to justify their decision to protect their proclamation for the 50 variations, they could have done it in a number of ways that would have been more palatable. Instead, they used this Reconsideration Process as a way to fundamentally alter the multi-stakeholder model. It not only demonstrates how meaningless the Reconsideration process is as an accountability measure, but also sends a signal of things to come if we do not step in.

He has support from other councilors.

I suspect the registries that Neuman represents on the Council are not so much concerned with Trademark+50 itself, more with the way ICANN has forced the issue through over their objections.

The registries, remember, are already nervous as hell about the possibility of ICANN taking unilateral action to amend their contracts in future, and bad decision-making practices now may set bad precedents.

But Neuman has a point about the legalistic way in which the Reconsideration Request was handled. I spotted a fair few examples in the decision of what can only be described as, frankly, lawyer bullshit.

For example, the NCSG used Chehade’s letter to Congress as an example of why Trademark+50 should be and was being considered “policy”, but the BGC deliberately misses the point in its response, stating:

The NCSG fails to explain, however, is how ICANN policy can be created through a proclamation in a letter to Congress without following ICANN policy development procedures. To be clear, ICANN cannot create policy in this fashion.

Only a lawyer could come up with this kind of pedantic misinterpretation.

The NCSG wasn’t arguing that Chehade’s letter to Congress created a new policy, it was arguing that he was explaining an existing policy. It was attempting to say “Hey, even Fadi thought this was policy.”

Strike two: the NCSG had also pointed to the aforementioned staff determination, since reversed, that Trademark+50 was a policy matter, but the BCG’s response was, again, legalistic.

It noted that staff only said Trademark+50 “can” be considered a policy matter (rather than “is”, one assumes), again ignoring the full context of the document.

In context, both the Chehade letter and the March staff document make specific reference to the fact that the Implementation Recommendation Team had decided back in 2009 that only strings that exactly match trademarks should be protected. But the BGC does not mention the IRT once in its decision.

Strike three: the BGC response discounted Chehade’s request for GNSO “policy guidance” as an “inartful phrase”. He wasn’t really saying it was a policy matter, apparently. No.

Taken as a whole, the BGC rejection of the Reconsideration Request comes across like it was written by somebody trying to justify a fait accompli, trying to make the rationale fit the decision.

In my view, Trademark+50 is quite a sensible compromise proposal with little serious downside.

I think it will help trademark owners lower their enforcement costs and the impact on registrars, registries and registrants’ rights is likely to be minimal.

But the way it’s being levered through ICANN — unnecessarily secretive discussions followed by badly explained U-turns — looks dishonest.

It doesn’t come across like ICANN is playing fair, no matter how noble its intentions.

Policy versus implementation… shouldn’t that be complexity versus simplification? [Guest Post]

Stéphane Van Gelder, January 11, 2013, Domain Policy

ICANN has just published a paper that attempts to frame what is policy and what is implementation. Now, if you’re a normal person, your natural response would be “who cares?”.

But if you’re an Icannite, chances are you’re already in a bit of a state. Because the question of what, within the ICANN decision-making process constitutes policy development, and what should be considered implementation of policies that have already been developed, is one that has grown contentious indeed in recent times.

The theory behind ICANN is that it works by bringing together groups of people from various backgrounds or with various interests and then waiting until they all take a decision. That can then become part of the sets of official guidelines that govern the way the Internet’s addressing and numbering system works.

In this obvious oversimplification of the ICANN model, the group of people are called stakeholders and the decisions they take are policies. The way they arrive at those decisions goes by the sweet name of “bottom-up, consensus-driven, policy development process”.

This is what makes ICANN such a unique governance body. One that (in theory) takes into account the opinions and inputs of all interested parties.

It is designed to prevent one view from dominating all others, be it the opinion of industry insiders, politicians or even free-speech advocates — all groups with legitimate interests, but all groups that, when they find themselves in the ICANN fish pond, have to listen to the other fish.

Except that they don’t always want to. And in recent years, as the pressure on the ICANN model has increased because of the new gTLD program, there have been several occasions when some thought it would be better to cut through (or go around) the policy development process to get things done.

This is where the policy versus implementation debate comes from. It’s a boring one to most balanced human beings, but a crucial one for those who rate ICANN and the work that goes on there as a major interest.

The new staff paper is a welcome initiative by ICANN to try and make real progress on a debate that has, up until now, simply exacerbated tensions within the ICANN community.

It’s a first step. A kind of “state of play” view of what can at present be considered policy within the ICANN system, and a first attempt at separating that from implementation.

It’s only eight pages long (and if that seems long to you, believe me, as far as ICANN papers go, this is the equivalent of a 140-character tweet), but if you can’t be bothered to read it, I’ll break it down for you in just one word: complexity.

A first step towards much needed simplification

The real issue behind this debate is the overly complex thing that ICANN has become. Don’t agree? Even though staff need to write an eight-page report just to help everyone, including themselves, understand what “policy” means?

Read the paper and marvel at the number of different processes that could be termed policy within ICANN, including something called “little p policies”, as opposed to “Capital P Policies”. Then there’s “formal policies”, “operational policies” and even “consensus policies”.

Just in setting that scene, the staff paper is useful!

Let’s hope it leads all ICANN stakeholders to the clear realization that this can’t go on any longer. ICANN must simplify its processes so that there is no longer a need to spend time and energy splitting hairs on deciding things like: when in the ICANN universe is policy making actually making policy, and when is it implementing policies that have already been made?

This is a guest post by domain name industry consultant Stephane Van Gelder of Stephane Van Gelder Consulting. He has served as chair of the GNSO Council and is currently a member of ICANN’s Nominating Committee.

If the GNSO is irrelevant, ICANN itself is at risk [Guest Post]

Stéphane Van Gelder, December 1, 2012, Domain Policy

The weeks since October’s Toronto ICANN meeting have seen some extraordinary (and, if you care about the multi-stakeholder model, rather worrying), activity.

First, there were the two by-invitation-only meetings organised in November at ICANN CEO Fadi Chehadé’s behest to iron out the Trademark Clearinghouse (TMCH).

The TMCH is one of the Rights Protection Mechanisms (RPMs) being put in place to protect people with prior rights such as trademarks from the risk of seeing them hijacked as a spate of new gTLDs come online.

The first meeting in Brussels served as a warning sign that policy developed by the many might be renegotiated at the last minute by a few. The follow-up meeting in Los Angeles seemed to confirm this.

Two groups, the Intellectual Property Constituency (IPC) and the Business Constituency (BC), met with the CEO to discuss changing the TMCH scheme. And although others were allowed in the room, they were clearly told not to tell the outside world about the details of the discussions.

Chehadé came out of the meeting with a strawman proposal for changes to the TMCH that includes changes suggested by the IPC and the BC. Changes that, depending upon which side of the table you’re sitting on, look either very much like policy changes or harmless implementation tweaks.

Making the GNSO irrelevant

So perhaps ICANN leadership should be given the benefit of the doubt. Clearly Chehadé is trying to balance the (legitimate) needs of the IP community to defend their existing rights with the (necessary) requirement to uphold the multi stakeholder policy development model.

But then the ICANN Board took another swipe at the model.

It decided to provide specific protection for the International Olympic Committee (IOC), the Red Cross (RC), and other Intergovernmental Organisations (IGOs) in the new gTLD program. This means that gTLD registries will have to add lengthy lists of protected terms to the “exclusion zone” of domain names that cannot be registered in their TLDs.

RPMs and the IOC/RC and IGO processes have all been worked on by the Generic Names Supporting Organisation (GNSO). ICANN’s policy making body for gTLDs groups together all interested parties, from internet users to registries, in a true multi-stakeholder environment.

It is the epitome of the ICANN model: rule-based, hard to understand, at times slow or indecisive, so reliant on pro-bono volunteer commitment that crucial details are sometimes overlooked… But ultimately fair: everyone has a say in the final decision, not just those with the most money or the loudest voice.

The original new gTLD program policy came from the GNSO. The program’s RPMs were then worked on for months by GNSO groups. The GNSO currently has a group working on the IOC/RC issue and is starting work on IGO policy development.

But neither Chehadé, in the TMCH situation, or the Board with the IOC/RC and IGO protections, can be bothered to wait.

So they’ve waded in, making what look very much like top-down decisions, and defending them with a soupcon of hypocrisy by saying it’s for the common good. Yet on the very day the GNSO Chair was writing to the Board to provide an update on the GNSO’s IOC/RC/IGO related work, the Board’s new gTLD committee was passing resolutions side-stepping that work.

The next day, on November 27, 2012, new gTLD committee Chair Cherine Chalaby wrote:

The Committee’s 26 November 2012 resolution is consistent with its 13 September 2012 resolution and approves temporary restrictions in the first round of new gTLDs for registration of RCRC and IOC names at the second level which will be in place until such a time as a policy is adopted that may required further action on the part of the Board.

Continuing on the same line, Chalaby added:

The second resolution provides for interim protection of names which qualify for .int registration and, for IGOs which request such special protection from ICANN by 28 February 2013. (…) The Committee adopted both resolutions at this time in deference to geopolitical concerns and specific GAC advice, to reassure the impacted stakeholders in the community, acknowledge and encourage the continuing work of the GNSO Council, and take an action consistent with its 13 September 2012 resolution.

A soothing “sleep on” message to both the community and the GNSO that the bottom-up policy development process is safe and sound, as long as no-one minds ICANN leadership cutting across it and making the crucial decisions.

Red alert!

Chehadé’s drive to get personally involved and help solve issues is paved with good intentions. In the real world, i.e. the one most of us live and work in, a hands-on approach by the boss generally has few downsides. But in the ICANN microverse, it is fraught with danger.

So is the Board deciding that it knows better than its community and cannot afford to wait for them to “get it”?

These latest episodes should have alarm bells ringing on the executive floor of ICANN Towers.

ICANN only works if it is truly about all interested parties getting together and working through due process to reach consensus decisions. Yes, this process is sometimes lengthy and extremely frustrating. But it is what sets ICANN apart from other governance organisations and make it so well suited to the internet’s warp-speed evolution.

Turn your back on it, act like there are valid circumstances which call for this ideology to be pushed aside, and you may as well hand the technical coordination of the internet’s naming and numbering system to the UN. Simple as that.

This is a guest post written by Stéphane Van Gelder, strategy director for NetNames. He has served as chair of the GNSO Council and is currently a member of ICANN’s Nominating Committee.

GNSO Chair contest is Rickert v Robinson

Kevin Murphy, September 28, 2012, Domain Policy

Two candidates for the soon-be-vacated chair of the Generic Names Supporting Organization have been put forward.

Jonathan Robinson has been nominated by the contracted parties house (registries and registrars), while Thomas Rickert has been put forward by the non-contracted parties.

Rickert, an IP lawyer, is director of names and numbers at Eco, a German internet industry association. He was appointed to the GNSO Council by the ICANN Nominating Committee last year.

UK-based Robinson is a longstanding member of the domain name industry and a registries rep on the Council. He’s a director of Afilias and runs IProta, the startup that managed ICM Registry’s sunrise last year.

The two men will be voted on by the GNSO Council before the chairman’s seat, currently occupied by Stephane Van Gelder, is vacated at the end of the Toronto meeting next month.

Van Gelder is coming to the end of his term on the Council after two years in the chair, hence the need for a replacement.

Satellite policy expert named ICANN director

Kevin Murphy, August 31, 2012, Domain Policy

ICANN has named Olga Madruga-Forti, an Argentinian telecoms policy expert, as the newest member of its board of directors.

Selected by this year’s Nominating Committee, Madruga-Forti will take over from R. Ramaraj when his second term ends at the Toronto meeting this October.

According to the biography provided by ICANN, she has extensive experience of telecommunications policy, particularly related to satellite, in both public and private sectors.

She currently works for ARSAT in Buenes Aires as international counsel. She’s previously worked for Iridium, Loral and the US Federal Communications Commission.

ICANN pointed out that she represents telcos at the International Telecommunications Union, a relevant data point, perhaps, given the WCIT conference coming up in December.

Madruga-Forti ticks one of the Latin-American boxes on the ICANN board.

NomCom has also reappointed two other directors for second terms on the board: Gonzalo Navarro (Latin-America) and the reliably contrarian George Sadowsky (North America).

New leadership members of three ICANN supporting organizations have also been selected by NomCom.

Jennifer Wolfe of the intellectual property law firm WolfeSBMC, which counts new gTLD applicants Microsoft, Procter & Gamble and Kraft Foods among its clients, has been appointed to GNSO Council.

I believe she’s destined to replace Carlos Dionisio Aguirre when his term is up later this year.

Canadian Alan Greenberg and Frenchman Jean-Jacques Subrenat have been reappointed to the At-Large Advisory Committee.

Mary Wong, who currently sits on the GNSO Council representing non-commercial stakeholders, has been appointed to the ccNSO Council.

The full biographies of all 2012 NomCom appointees can be found here.