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No costs to registries from TM Claims extension

Kevin Murphy, December 13, 2013, Domain Services

New gTLD registries will not have to pay any extra fees due to the Trademark Clearinghouse’s extension of the Trademark Claims service, according to the the TMCH.

When the TMCH announced a few days ago that it planned to extend Claims indefinitely — beyond the 90 days required by ICANN contract — a couple of gTLD registries asked me if it would mean more costs for them.

According to the TMCH, the answer is “no”.

The TMCH said in a statement (with my emphasis):

no additional costs will be charged to the registries

The Clearinghouse will create an extra interface that works separately from the existing trademark database interface for the 90 days Claims Notifications (during these 90 days registries have to pay 0.25 USD per registration when there is a successful registration matching a mark in the Clearinghouse). The 90+ interface will charge no such fee when there is an exact match.

The TMCH plans to use other means, such as scraping zone files, to provide the extended service.

Blocked trademarks still eligible for Donuts sunrises

Kevin Murphy, December 13, 2013, Domain Registries

Donuts has confirmed that it is to allow trademark owners to participate in its new gTLD Sunrise periods even if their marks appear on name collisions block-lists.

The decision means that companies will be able to choose whether to grab names matching their marks during Sunrise, or take the risk that they will be released at a later date.

Donuts, like all gTLD registries, has been given block-lists for each of its TLDs. The idea is to avoid collisions with names already in use on private name-spaces behind corporate firewalls.

Lots of these blocked names match or contain well-known trademarks.

(Trademark owners can use the DI PRO collisions search engine to figure out which gTLDs have been asked to block their marks.)

While this appears at first glance to be good news for mark owners that just want their marks blocked in as many TLDs as possible, it also poses potential risks.

Blocked names are not likely to be blocked until after the first wave of Sunrise periods are over, and ICANN’s unblocking process has not yet been written.

For a company that wants to register its brand in a new gTLD, but is on a block-list, that could cause problems.

By allowing companies to participate in Sunrise regardless, Donuts is giving them a way to mitigate the risk of somebody else grabbing their brands in future.

Donuts does not plan to allow any of these names to be activated in the DNS until the ICANN collisions mitigation plan has been finalized, however.

So companies could find themselves paying for Sunrise names but unable to use them until some unspecified future date — if at all.

Ten more new gTLDs get ICANN contracts

Kevin Murphy, December 13, 2013, Domain Registries

.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.

Should new gTLD objections have an appeals process?

Kevin Murphy, December 13, 2013, Domain Policy

That’s the question the ICANN Ombudsman is asking today.

Several new gTLD applicants that have lost objections — many in decisions that appear to diverge from ICANN’s rules or are inconsistent with other decisions — have been in touch to ask for redress, Ombudsman Chris LaHatte blogged this morning. He wrote:

The real problem as it seems to me, is that apart from the internal review procedures, there is no ability to seek an appeal from the panel decisions. A number of complainants had mentioned the need for an appeal process, emphasising that some of the decisions were in their view, inconsistent or not following the majority views.

LaHatte noted that his role is to decide issues of fairness in ICANN’s own decisions. As objections are all handled by third-party arbitration bodies, it’s not at all clear whether he has any authority at all over objection decisions.

Applicants have also been invoking the Reconsideration process en masse in an attempt to have successful objections overturned, but all Reconsideration requests to date have been rejected.

Reconsideration generally requires that the requester provide ICANN with new evidence that was not considered at the time of the original decision.

The ICANN Board Governance Committee, which handles Reconsideration, appears to be happy to leave objections in the hands of the arbitrators so far.

But the new gTLD objection process is a bit of a joke at the moment.

String Confusion Objection panelists have delivered inconsistent decisions, while Community Objection and Limited Public Interest Objection panels often seem to be making up rules as they go.

So should ICANN have an appeals process? If one is created it will undoubtedly be broadly used.

Islamic states to “officially object” to .islam

Kevin Murphy, December 13, 2013, Domain Policy

The Organization for Islamic Cooperation has decided to “file an official objection to the use of gTLDs .Islam and .Halal”, following a summit of 56 foreign ministers.

In a resolution (pdf) from the OIC’s high-level summit in Guinea this week, the organization also said it will become “an effective member” of ICANN, closely monitoring its work.

As previously reported, ICANN’s Governmental Advisory Committee was unable to reach a consensus to object to .islam and .halal, leaving it to ICANN’s board of directors to decide whether to approve them.

The OIC’s resolution is expected to become an important input to that decision-making process, after GAC chair Heather Dryden asked ICANN to take note of the Guinea meeting’s output.

The resolution also calls for the OIC to investigate how to run its own Islamic gTLDs.

The OIC has of course missed the boat by several months if it wants to file an objection to these gTLDs within the rules of the new gTLD program.

Instead, it’s going to have to hope that its entreaties to the ICANN board will be effective.