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Booking.com uses .africa precedent to challenge .hotels ruling

Kevin Murphy, July 21, 2015, Domain Policy

Booking.com has become the first new gTLD applicant to publicly cite the recent .africa Independent Review Process ruling in an attempt to overturn an adverse ICANN decision.

The challenge relates to the decision by ICANN, under the rules of the new gTLD program, to place applications for .hotels and .hoteis into a contention set due to their potential for visual confusion.

The two strings are heading to auction, where the winner will likely have to fork out millions.

In a missive to ICANN (pdf) last week, Booking.com outside attorney Flip Petillion said that the .africa IRP ruling shows that ICANN has to revisit its decision-making over .hotels.

The letter highlights a wider issue — how can ICANN follow community-established rules whilst sticking to its rather less well-defined Bylaws commitment to be “fair”?

Petillion wrote:

ICANN — and the BGC — has maintained the position 1) that the fact the process established by ICANN was followed is sufficient reason to reject that challenge and 2) that the fact that the process allowed neither for Booking.com to be heard nor for a review of the decision by the ICANN Board is of no relevance.

In the interim, IRP panels have confirmed that this process-focussed position is unsustainable. The ICANN Board has an overriding responsibility for making fair, reasoned and non-discriminatory decisions under conditions of full transparency.

He cites the .africa IRP decision to support this assertion.

Booking.com is the applicant for .hotels, while a different company, Travel Reservations (formerly Despegar Online), has applied for .hoteis, the Portuguese translation.

While both applicants are happy for the two gTLDs to co-exist on the internet, ICANN’s third-party String Similarity Review panel, part of the new gTLD evaluation process, ruled that they cannot.

They’re just too similar — in standard browser sans-serif fonts they can be indistinguishable — and would likely lead to user confusion, the panel decided in February 2013.

Booking.com challenged this decision with a Request for Reconsideration, which was dismissed.

It then filed an IRP, but that concluded this March with the panel awarding a grudging win to ICANN, which it orders should split the costs of the case.

In April, the ICANN board adopted the IRP panel’s findings, saying that the two applicants should remain in the contention set.

Booking.com, along with Travel Reservations, filed a second RfR, challenging the board’s decision, but this was rejected by ICANN’s Board Governance Committee in June.

The ICANN board has not yet formally adopted the BGC’s recommendations — I expect it to consider them at its next scheduled meeting, July 28 — hence Booking.com’s last-ditch attempt to get ICANN to change its mind.

Petillion wrote:

Simply following the processes and procedures developed by ICANN cannot alone be sufficient grounds for declining to review a decision. If the requirements of fairness, reasoned decision making, non-discrimination and transparency have not been met in the implementation of the process and procedures, the ICANN Board must, when invited to, conduct a meaningful review.

In the .africa case, the IRP panel ruled that ICANN should have asked the Governmental Advisory Committee for its rationale for objecting to DotConnectAfrica’s .africa bid, even though there’s nothing in the new gTLD rules or ICANN Bylaws specifically requiring it to do so.

However, in the Booking.com case, the IRP panel raised serious questions about whether the String Similarity Review rules were consistent with the Bylaws, but said that the time to challenge such rules had “long since passed”.

In both cases, ICANN followed the rules. Where the two panels’ declarations diverge is on whether you can win an IRP challenging the implementation of those rules — for DotConnectAfrica the answer was yes, for Booking.com the answer was no.

In a new gTLD program that has produced long lists of inconsistencies; IRP panel decisions appear to be but the latest example.

The question now is how the ICANN board will deal with the BGC recommendation to reject Booking.com’s latest RfR.

If it summarily approves the BGC’s resolution, without doing some extra due diligence, will it be breaking its Bylaws?

.gay is gay enough after all? ICANN overturns community panel decision

Kevin Murphy, January 22, 2015, Domain Registries

One of the applicants for .gay has won a significant battle in the fight for the controversial new gTLD.

In a shock move, a committee of ICANN’s board of directors has overturned the rejection of dotgay LLC’s Community Priority Evaluation, ordering that the case should be re-examined by a new panel of experts.

As you may recall, dotgay’s CPE was kicked out in October after the Economist Intelligence Unit panel decided that the company’s defined community was too broad to be described by “gay” as it included a lot of people who aren’t gay, such as straight people.

The decision — which I thought was probably correct — caused an uproar from dotgay’s myriad supporters, which include dozens of international equal rights and gay community organizations.

dotgay filed a Request for Reconsideration, ICANN’s cheapest but least reliable form of appeal, and today found out it actually won.

ICANN’s Board Governance Committee, which handles the RfR process, this week ruled (pdf):

The BGC concludes that, upon investigation of Requester’s claims, the CPE Panel inadvertently failed to verify 54 letters of support for the Application and that this failure contradicts an established procedure. The BGC further concludes that the CPE Panel’s failure to comply with this established CPE procedure warrants reconsideration. Accordingly, the BGC determines that the CPE Panel Report shall be set aside, and that the EIU shall identify two different evaluators to perform a new CPE for the Application

The successful RfR appears to be based on a technicality, and may have no lasting impact on the .gay contention set.

Under the EIU’s process rules: “With few exceptions, verification emails are sent to every entity that has sent a letter(s) of support or opposition to validate their identity and authority”.

It seems that the EIU was sent a bundle of 54 letters of support for dotgay, but did not email the senders to verify they were legit. The BCG wrote:

Over the course of investigating the claims made in Request 14-44, ICANN learned that the CPE Panel inadvertently did not verify 54 of the letters of support it reviewed. All 54 letters were sent by the Requester in one correspondence bundle, and they are publicly posted on ICANN’s correspondence page.36 The 54 letters were deemed to be relevant by the EIU, but the EIU inadvertently failed to verify them.

If an applicant wins a CPE it means all the other applicants are automatically excluded, and the door is now open for the EIU to rethink its earlier decision.

So do competing applicants Rightside, Minds + Machines and Top Level Design now have genuine cause for concern? Not necessarily.

CPE applicants need to score at least 14 out of 16 available points in order to win, and dotgay only scored 10 points in its original evaluation.

Crucially, the EIU panel said that because the “community” as defined by dotgay included transgender, intersex, asexual and straight “allies” of equal rights, it was too broad to score any of the available four points on the “Nexus” criteria.

The BCG could find no fault with the EIU’s determination on Nexus, so even if dotgay’s letters of support are verified according to procedure, it would not necessarily lead to dotgay picking up any more Nexus points.

The BCG wrote on Nexus: “Requester’s substantive disagreement with the CPE Panel’s conclusion does not support reconsideration”.

However, given that the EIU is going to do the entire CPE all over again with new panelists, it seems entirely possible that dotgay could win this time.

ICANN overturns new gTLD objection decision!

Kevin Murphy, June 22, 2014, Domain Policy

ICANN has overturned a Community Objection decision, allowing a .med new gTLD applicant back into the game, after a Request for Reconsideration from the applicant.

It’s the first time ICANN has overruled an objection panel during the new gTLD program and the first time in over a decade any RfR of substance has been accepted by the ICANN board of directors.

Medistry lost a CO filed by the program’s Independent Objector, Alain Pellet, back in January.

Under program rules, that should have killed off its application for .med completely.

But the company filed an RfR — ICANN’s first and cheapest appeals mechanism — claiming that Pellet acted outside his jurisdiction by filing the objection when there was not at least one informal objection from a community member on the public record.

Its case, as outlined in its RfR, was quite compelling, as I outlined in a piece in March.

Medistry argued that the International Chamber of Commerce’s panelist, Fabian von Schlabrendorff, had cited two non-existent informal community objections in his decision.

One of them literally did not exist — and von Schlabrendorff went so far as to infer its existence from its absence — while the other was “advisory” in nature and was not intended as an objection.

In March, ICANN’s Board Governance Committee accepted Medistry’s RfR on a preliminary basis, to give it more time to consider whether the IO had acted outside of the new gTLD program’s rules.

Yesterday, the BGC came to its final decision (pdf):

The BGC concludes that, based on information submitted with this Request, there is substantial and relevant evidence indicating that the Objection was inconsistent with ICANN procedures, despite the diligence and best efforts of the IO and staff. Specifically, the Requester [Medistry] has provided the BGC with uncontroverted information demonstrating that the public comments on which the Objection was based were not, in fact, in opposition to the Requester’s application. Accordingly, the BGC concludes that ICANN not consider the Expert Determination at issue and that the Requester’s Application for .MED is therefore permitted to proceed to the next stage of process in the New gTLD Program.

In other words: 1) Pellet inadvertently acted outside of his remit 2) the ICC’s ruling on the objection is simply cast aside and 3) Medistry’s application is back in the .med contention set.

The main reason this RfR succeeded while all others to date have failed is that Medistry managed to provide new information, in the form of clarifying letters from the two non-existent informal objectors, that was not originally available.

The large majority of previous RfR’s have failed because the requester has failed to bring any new evidence to the table.

The public comments from [National Association of Boards of Pharmacies] and [American Hospital Association] that were the basis for the Objection were vague and open to a number of interpretations. Given that there is substantial and uncontroverted evidence from the authors of those public comments, indicating what NABP and AHA intended, the BGC cannot ignore this information in assessing the Request or reaching its determination.

I think ICANN is going easy on the ICC and von Schlabrendorff (how can something that does not exist be “open to a number of interpretations”?) but it seems that the RfR process has in this case nevertheless been a bit of a success, overturning an extremely dodgy decision.

The .med contention set also contains HEXAP and Google.

Registrant complains to ICANN over Uniregistry’s premium names

Kevin Murphy, April 22, 2014, Domain Registries

A would-be new gTLD registrant has appealed to ICANN over the domain name moviestar.photo, which she was unable to register because Uniregistry had reserved it as a premium name.

Danielle Watson filed a formal Request for Reconsideration (pdf) with ICANN last week, in the mistaken belief that ICANN had placed the domain she wanted on one of its block-lists.

She described her predicament thus:

a. Website Name Registration: I purchased one of the new gTLD domain names ending in .photo from 101domain.com on April 2, 2014. Moviestar.photo

b. I received an email on April 14, 2014 stating that ICANN kept this name from being registered in my name, and I would receive a refund in which I did.

c. I cannot understand why this name is being withheld, and being put into your reserve list.

d. I take very old Movie Stars photos and colorize them and put old fashioned frames around them and sell them at craft fairs locally. This name would have been a perfect fit for my use and sales. Please reconsider my request to be reconsidered and the name moviestar.photo reinstated/registered in my name with 101domain.com

Correspondence from 101domain provided by Watson (pdf) does not mention ICANN, so I’m not sure how she came to the conclusion that ICANN was to blame.

I fear she has targeted ICANN incorrectly.

The DI PRO name collisions database shows that the string “moviestar” has been blocked by ICANN’s policy on collisions in 15 new gTLDs, but Uniregistry’s .photo is not one of them.

Whois records show that moviestar.photo is in fact registered to North Sound Names. That’s the name of the Uniregistry affiliate currently in control of tens of thousands of Uniregistry premium names.

The RfR is not the venue for this kind of complaint and it’s likely to be dismissed for that reason. There’s not much ICANN can do about it.

Perhaps Watson would have better luck writing a begging letter to Uniregistry CEO Frank Schilling, who has indicated his willingness to allocate premium names to deserving users.

Four governments file ICANN appeals over .wine

Kevin Murphy, April 9, 2014, Domain Policy

France, Spain, the UK and the European Commission have formally appealed ICANN’s decision to allow the .wine and .vin new gTLD applications to proceed.

In doing so, they’ve become the first national governments to file Requests for Reconsideration with ICANN since the process was introduced in 1999.

All four governments are demanding that ICANN take another look at its March 22 resolution in which it said .wine and .vin could be taken off hold and proceed through the remainder of the new gTLD process.

The four applications in question (three for .wine, one for .vin) have been frozen since the Beijing meeting a year ago, at which the Governmental Advisory Committee said it needed more time to consider them.

European nations, with some Latin American support, think that wine-related gTLDs should not be approved unless the applicants agree to give special protection to geographic indicators, such as “Champagne”.

The RfRs are all, as you might expect, a bit “inside baseball”, focusing on the minutiae of ICANN’s bylaws.

What’s illegal and what isn’t?

A key concern is that ICANN’s New gTLD Program Committee, in passing the resolution, relied in part on an analysis of the legal issues (pdf) conducted by French law professor Jerome Passa.

Passa concluded that there’s nothing under the law to prevent ICANN assigning .wine to Donuts, one of the applicants, because “wine” is not a protected GI string.

As regards the applications for the assignment of the new gTLDs ‘.vin’ and ‘.wine’ filed by the Donuts company, there is no rule of the law of geographical indications, nor any general principle which obliges ICANN to reject the applications or accept the applications under certain specific conditions.

From my reading of Passa’s opinion, a domain name containing a GI would only be illegal if it was used to sell counterfeit wines.

For example, it would be perfectly okay for a Chinese registrant to own champagne.wine if he used it to sell genuine champagne from Champagne, but it would be uncool if he used it to sell champagne-style sparkling wine.

Passa doesn’t seem to think it would be necessarily illegal for a registry to sell that domain, or for ICANN to delegate a .wine gTLD that could possibly be abused by said registrant in future.

The four governments are not so much concerned by his legal arguments (though they do disagree with them), but rather by the fact that the GAC was not shown Passa’s opinion before the NGPC made its decision

Under section XI-A of ICANN’s governing bylaws, the GAC “shall have an opportunity to comment upon any external advice received prior to any decision by the Board.”

By not giving Passa’s analysis to the GAC prior to its March 22 resolution, the NGPC violated ICANN’s bylaws, the four governments argue.

However, ICANN has already responded to this argument and others, suggesting that the four new RfRs may already be dead in the water.

In a resolution last Thursday the NGPC stated that the bylaws were not broken because the requirement to show the GAC “external expert advice” only applies when the board is determining matters of policy.

An explanation of last week’s NGPC decision says:

the NGPC has concluded that there was no process violation or procedural error under the Bylaws, particularly because the Independent Legal Analysis was not sought as External Expert Advice pursuant to Article X1-A, or any other Bylaws provision. Rather, the Independent Legal Analysis was sought pursuant to Module 3.1 of the Applicant Guidebook, and partly at the GAC’s suggestion.

Basically, it’s round two the old “policy versus implementation” debate, in which the ICANN board and GNSO Council have regularly sparred, kicking off with new opponents.

Spain argues in its RfR that the bylaws “the supreme governing rules” of ICANN, apply to implementation matters too and that there’s “no legal basis” for ICANN’s finding that they only apply to policy.

It further notes that a legal analysis of the related .amazon new gTLD controversy, also written by Passa, has been circulated to the GAC for comment as per the bylaws.

Disturbing views on “consensus”

In order for an RfR to be successful, complainants have to show that the ICANN board or NGPC did not consider all the evidence they should have at the time of their decision.

The governments are only slippery ground here, as all they can seem to point to are the barrage of letters that have been sent to ICANN by wine producers, associations and governments over the last year or so.

It may not have mentioned each one explicitly in its resolution but it’s very unlikely, in my view, that the NGPC was not aware of these letters when it made its call.

More significantly, these objecting governments are arguing that the NGPC was misled by GAC chair Heather Dryden about the extent of “consensus” in the GAC with regards .wine and .vin.

Dryden told ICANN in a September 9, 2013 letter that the GAC had not reached a consensus to object to the two new gTLDs, so they could proceed.

It appeared that the GAC — with members such as the US, Canada and Australia disagreeing with Europe — had simply hit an immovable brick wall in its talks, so consensus was never going to be reached.

France states in its RfR that the Dryden letter was sent without first consulting the GAC:

The GAC Chair’s statement that “The GAC has finalised its consideration of the strings .wine and .vin and further advises that the applications should proceed through the normal evaluation process” is not a consensus view of the GAC as per the aforementioned Operating Principle, but a mere interpretation and opinion of the GAC Chair.

Where France’s opinion, which seems to match previous statements by the European Commission, gets disturbing is in its interpretation of what “consensus” means. It wrote:

in reality a significant number of GAC members were in consensus not to allow the .WINE and .VIN applications to proceed through evaluation until sufficient additional safeguards were in place. The reality is that the GAC as a whole could not reach consensus, what does not necessarily imply that the strings can proceed through the normal evaluation process without further consideration.

It’s worded awkwardly, but France seems to be saying that agreement among a certain subset of GAC members (ie, the Europeans) somehow constitutes a GAC consensus that the applications should be indefinitely delayed.

It’s disturbing close to arguing for majority rule on the GAC, which as I explained in depth earlier this week is something to be avoided at all costs.

Anyway, that’s the second prong of the RfR attack: whether the NGPC had been misled about the GAC’s views.

The four separate RfRs appeared on the ICANN web site today. The file labeled as being from the European Commission appears to be a copy of the French one; possibly an uploading error.

UPDATE: It was an uploading error. You can find a copy of the European Commission RfR here (pdf).