DotMusic loses LRO, and four other cases rejected

Constantine Roussos has lost his first Legal Rights Objection over the flagship .music gTLD.
The case, DotMusic v Charleston Road Registry (pdf) was actually thrown out on a technicality — DotMusic didn’t present any evidence to show that it was the owner of the trademarks in question.
But the WIPO panelist handling the case made it pretty clear that DotMusic wouldn’t have won on the merits anyway.
If any applicant can be said to have built a brand around a proposed generic-term gTLD, it’s Roussos. DotMusic has been promoting .music on social media an in the music industry for years.
The company also owns the string “music” in a number of second-tier TLDs such as .co, .biz and .fm.
It’s not a bogus, last-minute attempt to game the system, like the .home cases — filed using Roussos-acquired trademarks — that have been thrown out repeatedly over the last couple of weeks.
The panelist addressed this directly:

On the one hand, the Panel recognizes that there has been a real investment by the Objector and associated parties in the trademark registrations, domain name registrations, sponsorship and branding to create consumer recognition and goodwill entitled to protection. On the other hand, there is a circularity in the Objector’s position in that the rights upon which the Objector relies to defeat the application are to a certain extent conditional on the defeat of the Applicant and the Objector’s success in obtaining the <.music> gTLD string.

In other words, Catch-22.
The panelist decided that .music is generic, that Google’s proposed use of it is generic, and that obtaining a trademark on a gTLD should not be a legit way to exclude rival applicants for that gTLD.

One objective of the Objector has been to obtain precisely the type of competitive advantage (in this case in the application process for the <.music> gTLD string) that the doctrine of generic names is designed to prevent. However, as the Applicant proposes to use the <.music> gTLD string in a generic sense it is immune from this challenge.

On that basis, the LRO would have failed, had DotMusic managed to demonstrate standing to object in the first place.
Unfortunately, DotMusic didn’t present any evidence that it actually owned the trademarks in question, which were applied for by Roussos and assigned to his company CGR E-Commerce.
The objection failed on that basis.
Defender Security, which obtained trademarks on “.home” from Roussos, ran into the same problems proving ownership of the trademarks in its LROs on the .home gTLD.
Four other LROs were decided this week:
.mail (United States Postal Service v. GMO Registry)
The case (pdf) turned on whether USPS owns a trademark that exactly matches the applied-for string (it doesn’t) and whether the word “mail” should be considered generic (it is) rather than a source identifier (it isn’t).
It’s pretty much the same logic applied in the two previous .mail LROs.
.food (Scripps Networks Interactive v. Dot Food, LLC)
This is the first of two competitive LROs filed by Scripps — which runs TV stations including the Food Network — against its .food applicant rivals to be decided.
Scripps has a bunch of trademarks containing the word “food”, including a November 2011 registration in the US for “Food” alone, covering entertainment services.
The WIPO panelist found (pdf) that the trademark was legit, but decided that it was not enough to prevent Dot Food using the matching string as a gTLD.
The fact that rights protection mechanisms exist in the new gTLD program was key:

to the extent that registration and use of a particular second-level domain within the <.food> gTLD actually creates a likelihood of confusion, then Objector will have remedies available to it, including the established Uniform Domain Name Dispute Resolution Policy, the forthcoming Uniform Rapid Suspension System and relevant laws. The fact that such disputes at the second level may arise is inherent in ICANN’s new gTLD program and is not in the circumstances of this case sufficient to uphold the present legal rights objection.
Objector’s rights in the FOOD mark do not confer upon it the exclusive right to use of the word “food” in all circumstances, particularly where, as here, Applicant intends to use the <.food> gTLD in connection with the food industry. Such intended use of the word would appear to be only for its dictionary meaning and not because of Objector’s trademark rights.

.vip (i-Registry v. Charleston Road Registry)
It’s the second objection by .vip applicant to get thrown out. In this case the respondent was Google.
Like the first time, the WIPO panelist found that the i-Registry trademark had been obtained for the purposes of the new gTLD program and that Google’s use of it in its generic sense would not infringe its rights.
.cam (AC Webconnecting Holding v. Dot Agency)
The second and final LRO decision (pdf) in the .cam contention set.
AC Webconnecting, an operator of webcam-based porn sites, lost again on the grounds that it applied for its trademark just a month before ICANN opened up the new gTLD application window in January last year.
The company didn’t have time to, and produced no evidence to suggest that, it had used the trademark and built up goodwill around “.cam” in the normal course of business.
In other words, front-running doesn’t pay.

Roussos sells his .home new gTLD application

In what I believe is the first instance of a new gTLD bid changing hands, CGR E-Commerce has sold off its .home application to another applicant.
CGR is the Cyprus-based company controlled by prominent .music applicant Constantine Roussos.
Among 29 changes to new gTLD applications approved by ICANN and published late last week were substantial alterations to CGR’s application for .home, which is contested by 10 other applicants.
All references to Roussos, his colleague Tina Dam, and CGR itself were removed, replaced by the names of executives from Defender Direct.
The applicant name is now “Dothome Ltd”, whereas originally it was “DotHome/CGR E-Commerce Ltd”.
“We just sold that company,” Roussos confirmed to DI. “All our assets and intellectual property pertaining to .HOME were transferred to Defender Direct, a company that also applied for .SECURITY.”
“They are the second largest home security company in the U.S and have a lot of resources to provide to create value in both the home and security arenas,” he added.
Back in April, while the new gTLD application period was still open, Roussos was known to be shopping around some spare TLD Application System slots.
The .home gTLD is one of the most-contested strings in the current round, but all 11 applicants face the risk that the string itself may be rejected on security and stability grounds.

Consumer Watchdog slams “outrageous” Google and Amazon keyword gTLD bids

Consumer Watchdog, a California-based consumer rights advocacy group, has attacked Google and Amazon’s new gTLD applications in a letter to an influential senator.
The organization has asked Sen. Jay Rockefeller, chair of the Senate Commerce, Science and Transportation Committee, to “thwart” the “outrageous” plans for single-registrant dictionary-word gTLDs.
Google and Amazon have separately applied for dozens of gTLDs — such as .music, .blog and .book — that they would exclusively use to market their own products and services.
Consumer Watchdog said in its letter (pdf):

If these applications are granted, large parts of the Internet would be privatized. It is one thing to own a domain associated with your brand, but it is a huge problem to take control of generic strings. Both Google and Amazon are already dominant players on the Internet. Allowing them further control by buying generic domain strings would threaten the free and open Internet that consumers rely upon. Consumer Watchdog urges you to do all that you can to thwart these outrageous efforts and ensure that the Internet continues its vibrant growth while serving the interests of all of its users.

As we reported yesterday, a number of domain name industry participants are planning to complain to ICANN about these applications on pretty much the same grounds.

Industry objection forming to Google and Amazon’s keyword gTLD land grab

Members of the domain name industry, led by Michele Neylon of Blacknight, plan to complain to ICANN about dozens of single-registrant new gTLD applications filed by Google and Amazon.
The signatories of a new letter are bothered by plans by these companies and others to hold dictionary word gTLDs for their own exclusive use, not allowing regular internet users to register domains.
While the letter does not call out applicants by name, it specifically mentions .blog, .music and .cloud as examples of potentially objectionable single-registrant gTLDs.
Google has applied for .blog and .cloud for its own use, among many others. Amazon has done the same for .cloud and .music and dozens of others. All three are heavily contested.
The letter is so far signed by 13 people, many of whom work for registrars. It states in part:

generic words used in a generic way belong to all people. It is inherently in the public interest to allow access to generic new gTLDs to the whole of the Internet Community, e.g., .BLOG, .MUSIC, .CLOUD. Allowing everyone to register and use second level domain names of these powerful, generic TLDs is exactly what we envisioned the New gTLD Program would do. In contrast, to allow individual Registry Operators to segregate and close-off common words for which they do not possess intellectual property rights in effect allows them to circumvent nation-states’ entrenched legal processes for obtaining legitimate and recognized trademark protections.

The ICANN Applicant Guidebook gives certain special privileges to single-registrant gTLDs.
In its discretion, ICANN can release such registries from the Code of Conduct, which obliges them to treat all accredited registrars on a non-discriminatory basis.
The condition for this exception is that “all domain name registrations in the TLD are registered to, and maintained by, Registry Operator for its own exclusive use”.
The measure was designed to capture dot-brand gTLDs such as .google and .amazon, where only the registry itself controls the second-level domain names.
But Google seems to want to benefit from the exception to the Code of Conduct while still offering second-level domains for use by its customers, at least in some applications.
In its .blog application, for example, it states:

Charleston Road Registry [the applying Google subsidiary] intends to apply for an exemption to ICANN’s Registry Operator Code of Conduct and operate the proposed gTLD with Google as the sole registrar and registrant. The proposed gTLD will specifically align with Blogger, an existing Google product, and will provide users with improved capabilities that meet their diverse needs.
The specialization goal of the proposed gTLD is to provide a dedicated second-level domain space for the management of a userʹs Blogger account.

However, the same application also states:

The mission of the proposed gTLD is to provide a dedicated domain space in which users can publish blogs. All registered domains in the .blog gTLD will automatically be delegated to Google DNS servers, which will in turn provide authoritative DNS responses pointing to the Google Blogger service. The mission of the proposed gTLD is to simplify the Blogger user experience. Users will be able to publish content on a unique .blog domain (e.g., myname.blog) which will serve as a short and memorable URL for a particular Blogger account.

“Google want .blog to be only for Blogspot users, which is insane,” Neylon told DI. “No one company should have control of a generic name space like that.”
“The new TLD project spent thousands of hours working on protecting IP rights, and then you get big companies blatantly abusing the system,” he said.
It’s not at all clear whether Google’s plan for .blog is a permitted use case. Does Google’s plan for .blog and other gTLDs mean third parties will be “controlling” and/or “using” .blog domains?
Or is its plan more akin to a dot-brand offering its customers vanity URLs, such as kevin.barclays or john.citi?
I err to the former interpretation.
When a new gTLD applicant asked ICANN for clarity on this matter last December, ICANN’s response was:

“Exclusive use” has its common meaning. The domain name must be exclusively used by the Registry Operator, and no unaffiliated (using the definition of “Affiliate” in the Registry Agreement) third-party may have control over the registration or use of the domain name.

Neylon said he plans to send the letter to ICANN management, board and new gTLD program Independent Objector next week. There’s no target number of signatures.

Directi expects all 31 of its gTLDs to be contested

Directi has applied for 31 new top-level domains and expects all 31 of them to be contested, according to CEO Bhavin Turakhia.
The company has budgeted $30 million for its unashamedly mainstream portfolio of applications – which includes the likes of .web – but that’s not including what it expects to spend at auction.
“I expect there to be contention in all of them,” he said. “Whether they will end up going to auction… we’re completely open to strategic partnerships with other industry players who we believe can add value and join hands with us, based on merit. We’ll be evaluating this on a case by case basis.”
“Something like a .web, there’ll be enough competitors out there that it will certainly go to auction, no matter what,” he said, adding that he expects at least 10 rivals for .web.
Directi has applied for: .web, .shop, .bank, .law, .music, .news, .blog, .movie, .baby, .store, .doctor, .hotel, .play, .home .site, .website, .click, .online, .one, .ping, .space, .world, .press, .chat, .city, .deals, .insurance .loans, .app, .host, and .hosting.
The company is applying via its new business unit, Radix, using ARI Registry Services as its back-end registry provider.
Turakhia said he expects to use a traditional registry-registrar model for most of the domains, assuming Directi wins its contention sets.
“The strings that we have gone for are strings that are relevant to all registrars so we expect there to be significant adoption,” he said.
“If eNom were to apply for .web and .shop – and they probably will – and if they were to win those TLDs, then our registrar businesses would definitely carry them irrespective of the fact that we have our own TLDs,” he said. “There are only so many good viable strings out there.”
Most of Directi’s gTLDs, if approved, will be completely unrestricted.
For .movie, .law, .doctor and .bank there will be some tight restrictions, Turakhia said. (UPDATE: he later added that .insurance and .loans will also be restricted).
Some will also have additional rights protection mechanisms that go above and beyond what ICANN mandates in its standard registry contracts.
But none of its applications are “community” applications, the special category of application defined by ICANN.
Turakhia said he doesn’t think some of the applicants trying to “sneak through” as community applications will be successful.
“We’re treating these as all generic strings for anyone to register domains in,” he said. “.music for me does not represent a community. I could be a bathroom singer and want a .music domain name.”
“If you treat music lovers as a community then 100% of the world is part of that community.”

MyTLD has spare TAS accounts for new gTLDs

The new gTLD consultancy MyTLD has some ICANN TLD Application System slots going begging.
If for some reason you need to file a gTLD application and you haven’t already registered in TAS, this is what MyTLD says it is now offering:

(i) gTLD application writing and submission (ii) TAS account for the gTLD application (iii) Newly formed company corresponding to the TAS account

The company is marketing it as a bundled service.
MyTLD is most closely associated with the most prominent .music application. It’s run by Music.us owner Constantine Roussos and former ICANN internationalized domain name expert Tina Dam.
The offer is fleshed out a bit more on MyTLD’s blog.
I hear the company was shopping these TAS slots around privately prior to April 12 too, so I don’t think that it is an effort to capitalize on the security-related delays ICANN is currently experiencing.
However, one has to ask why the offer is only being publicized after the original official deadline for new gTLD applications has already passed.
TAS is expected to re-open for business on Tuesday, and close on Friday.

M+M joins .music fight

Minds + Machines parent Top Level Domain Holdings has become the third company to publicly confirm an application for the .music top-level domain.
TLDH has partnered with “music industry figures including artists, managers, music producers and lawyers” going by the name of LHL TLD Investment Partners on a joint-venture bid.
M+M will provide the technical back-end for the applicant.
The other two known applicants for .music are Far Further, which has the backing of most major music trade groups, and the long-running MyTLD/Music.us/Roussos Group campaign.
Assuming Roussos and TLDH can each pull one plausible public comment objection out of the bag, Far Further’s Community Priority Evaluation is probably scuppered.
With two objections, a CPE candidate needs a perfect 14/14 score on the remaining criteria, which is likely going to be pretty difficult when you’re applying for such a generic term.
In other new gTLD applicant news…
.miami — TLDH also announced today that it plans to apply for .miami, having secured the support of City of Miami in a 4-0 vote of its commissioners.
.nyc – The city of New York has reportedly granted its consent to Neustar to apply for .nyc, apparently beating out other wannabe applicants including TLDH.
.vlaanderen – The Flemish government has awarded the right to apply for .vlaanderen (.flanders) to DNS.be. The registry will reportedly work with Nic.at on the application.
.nagoya – GMO Registry has announced a bid for the Japanese city gTLD .nagoya, with the backing of the local government. Nagoya is Japan’s third-largest city.

Big Content issues gTLD lock-down demands

Twenty members of the movie, music and games businesses have asked ICANN to impose strict anti-piracy rules on new top-level domains related to their industries.
In a position statement, “New gTLDs Targeting Creative Sectors: Enhanced Safeguards”, the groups say that such gTLDs are “fraught with serious risks” and should be controlled more rigorously than other gTLDs.
“If new gTLDs targeted to these sectors – e.g., .music, .movies, .games – are launched without adequate safeguards, they could become havens for continued and increased criminal and illegal activity,” the statement says.
It goes on to make seven demands for regulations covering Whois accuracy, enforced anti-piracy policies, and private requests for domain name take-downs.
The group also says that the content industries should be guaranteed “a seat at the table” when these new gTLD registries make their policies.
The statement is directed to ICANN, but it also appears to address the Governmental Advisory Committee, which has powers to object to new gTLD applications:

In evaluating applications for such content-focused gTLDs, ICANN must require registry operators (and the registrars with whom they contract) to implement enhanced safeguards to reduce these serious risks, while maximizing the potential benefits of such new domains.
Governments should use similar criteria in the exercise of their capability to issue Early Warnings, under the ICANN-approved process, with regard to new gTLD applications that are problematic from a public policy or security perspective.

The statement was sent to ICANN by the Coalition for Online Accountability, which counts the American Society of Composers, Authors and Publishers, the Motion Picture Association of America, the Recording Industry Association of America and Disney among its members.
It was separately signed by the many of the same groups that are supporting Far Further’s .music application, including the American Association for Independent Music and the International Federation of the Phonographic Industry.

RIAA backs .music new gTLD bid

The Recording Industry Association of America has picked a side. It’s supporting Far Further’s application for the .music generic top-level domain, according to the company.
The RIAA is one of over a dozen music industry groups that are currently listed as supporters of the Far Further bid.
Among them is the influential International Federation of Phonographic Industries and The Recording Academy, which hands out the Grammys.
The support was hard won, according to Far Further president John Styll.
“The RIAA put together a loose coalition of organizations from sectors from around the world and ran a pretty intensive RFI process,” he said.
The company beat off competition from several other respondents and received word that the RIAA would support its .music application a few months ago, he said.
It’s been clear for some time that any .music applicant that does not have the backing of the RIAA will very likely get beaten up by the notoriously protective organization instead.
The RIAA wrote to the US Department of Commerce last August to demand that any music-themed gTLD should implement “heightened security measures” to prevent copyright infringement.
And that’s pretty much what Far Further has promised.
Its .music would be restricted, along the same lines as gTLDs such a .pro, to card-carrying members of what the company calls “accredited Global Music Community Members”.
“It’s not open to everyone,” Styll said. “You’d have to join an organization.”
Amateur bands would have to be members of an accredited songwriters association to get a .music address, for example.
In addition, the content of .music web sites would be policed in a similar way to .xxx or .cat, with regular spidering to ensure the content does not break the rules.
“We’re definitely looking at content, and besides the vetting process, in the registrant agreement there’ll be a warrant you’re not going to violate anyone’s intellectual property rights,” said Styll.
“We’re retaining the right to conduct searches,” he said. “If we find evidence of infringing activity we’ll give you the opportunity to correct that, or we can take down the site.”
Far Further is not the only known .music applicant, of course.
Constantine Roussos of Music.us and MyTLD has been passionately campaigning for the gTLD for years, and his enthusiasm has not waned even if his chances have.
“We’re still going after .music,” he confirmed yesterday. He added that he expects it to be a two-horse race, given these recent developments.
Make no mistake, with backing from the RIAA and other influential industry groups Far Further is now the runaway favorite in the battle for .music. Roussos has quite a fight on his hands.
DomainIncite PRO subscribers can read more about it here.

Second .music applicant is Demand Media partner

Far Further has come out as the second company to say it plans to apply to ICANN for the .music top-level domain.
It’s also, I believe, the first applicant to reveal that it has partnered with Demand Media registrar eNom for its back-end registry services.
Far Further is one of a number of likely applicants for .music. The only other applicant to go public to date is Constantine Roussos’ dotMusic.
The new company is headed by former Warner Music record producer Loren Balman, CEO, and former music journalist John Styll, president. Former PIR chief Alexa Raad of Architelos is advising.
Far Further says its .music will “provide the global music community a secure identifying Internet address that supports the promotion of music, the protection of intellectual property rights, and the advancement of global access to music education.”
It’s my belief that the successful .music applicant will be the one that can secure the support of organizations such as the Recording Industry Association of America and its overseas counterparts.
The RIAA’s concerns about piracy spreading through .music domains, however misplaced, suggest that any other applicant is likely to find itself on the receiving end of objections, if not lawsuits.
Support from such organizations would also be critical to any bid that plans to invoke a Community Priority Evaluation — a trump card that well-supported applications can play in the ICANN process.
Perhaps the most interesting revelation about Far Further is the company’s selection of eNom, and its Shared Registry System, as its back-end technology services provider.
eNom is of course the world’s second-largest domain name registrar, with over 11 million domains under management, but it has yet to enter the registry services market.
There’s still a bit of a question mark over eNom’s ability to pass ICANN’s background checks, due to its UDRP losses, but this may not be a problem if it is merely the back-end provider, rather than the applicant itself.