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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).

OMG! gTLD applicant actually wins objection appeal

Kevin Murphy, March 24, 2014, Domain Policy

Medistry has become the first new gTLD applicant to win an appeal to ICANN over an objection decision that went against it.

The .med hopeful has also become the first entity in years to successfully use the much-derided Reconsideration Request process to get ICANN’s board of directors to revisit a decision.

The company’s application received a Community Objection filed by the new gTLD program’s Independent Objector, Alain Pellet, along with a bunch of other healthcare-related gTLD bids.

Medistry lost, meaning its application should be dead in the water.

But it appealed using the Reconsideration process, arguing that Pellet failed to follow the rules laid out for the IO in the program’s Applicant Guidebook.

These rules state that the IO can only object on Community grounds if there is at least one informal objection from a community member on the public record, for example filed as ICANN comments.

Medistry claims that the IO did not pass that test in its case and the ICANN board’s Board Governance Committee, which handles Reconsideration Requests, reckons that claim merits further review.

Judging by the International Chamber of Commerce decision (pdf), comments filed by the National Association of Boards of Pharmacy and the American Hospital Association were critical in showing “substantial opposition” from the healthcare community.

Without such opposition, the IO would have had no right to object.

Medistry argued during the objection case that the NABP comment, which talks about the need for patient safety, was purely “advisory” in nature and did not represent an objection to its .med application.

The ICC panelist, Fabian von Schlabrendorff, disagreed, writing:

The Expert Panel accepts that the comments made by the National Association of Boards of Pharmacy (NABP), on which the Independent Objector relies for the purpose of demonstrating substantial opposition, represent an expression of opposition, i.e. resistance or dissent, to the Application, going beyond merely having an advisory character as the Applicant suggests.

The problem with that interpretation is that it turns out to be dead wrong. Von Schlabrendorff read too much into the original NABP comment.

Medistry submitted as part of its Reconsideration Request a letter from NABP saying:

We wish to clarify that NABP’s comment was intended to be advisory in nature, stressing that health-related gTLDs should account for patient safety and implement protections against fraud and abuse. In submitting this comment, NABP did not oppose Medistry’s application to be the Registry Operator for the .MED gTLD, nor take any position as to whether Medistry’s .MED application contained appropriate safeguards.

The second public “objection” used by the IO to allege substantial opposition, an argument that von Schlabrendorff accepted, came from the America Hospital Association.

Except the AHA did not file a comment on the Medistry application (well, it did, but it was withdrawn two days later in September 2012, long before the objection process began).

The AHA did object to the other three applications for .med, filed by Google, Hexap and DocCheck, but not to Medistry’s application.

Remarkably, von Schlabrendorff chose to interpret the absence of an AHA objection as the existence of an AHA objection, speculating that it did not object to Medistry’s application due to nothing more than an oversight, and applied its objections against Medistry regardless.

even if the Applicant had established in understandable and verifiable detail that the AHA on purpose decided not to oppose the Application, such decision of the AHA would and could not change the fact that the NABP expressed opposition to the Application on grounds of public health concerns, and that the AHA raised essentially identical concerns with regard to all other .med applications.

To me, this looks like Medistry was given the Kafkaesque challenge of proving that the AHA had not objected to its application, even though there was no such objection on record.

Using a von Schlabrendorff level of speculation, I’m guessing that the AHA did file an objecting comment originally, but withdrew it a couple of days later when informed that Medistry’s parent company is an AHA member.

Given that the NABP and AHA “objections” both turned out to be non-existent, the ICANN BGC has naturally enough decided that the Medistry Reconsideration Request merits further consideration.

The BCG wrote (pdf):

the BGC finds that Request 14-1 should be granted to provide sufficient time to further evaluate whether any actions were taken in contravention of established policy or procedure, such as whether the threshold requirement set forth in Section 3.2.5 of the Guidebook was satisfied. The BGC will ensure that ICANN further evaluates this issue and provides a report to the BGC for consideration

It is important to note that the BGC’s acceptance of this Reconsideration Request should in no way reflect poorly on the IO or be seen as a finding that the IO failed to properly discharge his duties. Rather, this determination is a recognition that the Requester has submitted substantial information indicating that the IO’s assessment of what could be described as vague comments (particularly those of NABP), may not have been consistent with what the commenters intended.

What this seems to mean is that the Medistry application for .med is undeaded and that von Schlabrendorff’s increasingly dodgy-looking decision is going to be looked at.

It also means that Reconsideration Requests are not entirely useless.

No Reconsideration Request of any consequence has been accepted by the BCG in the 15 years the procedure has been active.

Generally, they’re thrown out because the requester fails to provide any new information that wasn’t available at the time the offending decision is made, which is a prerequisite for success.

In this case, Medistry’s production of the NABP letter of clarification seems to have been critical.

Reconsideration is not an appeals process: ICANN delivers another blow to Amazon’s gTLD hopes

Kevin Murphy, October 15, 2013, Domain Policy

Amazon has lost its appeal of a ruling that says its applied-for new gTLD .通販 is “confusingly similar” to .shop, with ICANN ruling that its Reconsideration mechanism is not an appeals process.

The e-commerce giant lost a String Confusion Objection filed by .shop applicant Commercial Connect in August, with panelist Robert Nau ruling that the two strings were too confusing to co-exist.

That’s despite one of the strings being written in Latin script and the other Japanese. The ruling was based on the similarity of meaning: 通販 means “online shopping”.

Amazon immediately filed a Reconsideration Request with ICANN.

Days earlier, Akram Atallah, president of ICANN’s Generic Domains Division, had described this process as one of the “avenues for asking for reconsidering the decision”.

Atallah was less clear on whether Reconsideration was applicable to decisions made by third-party panels — the new gTLD program’s Applicant Guidebook contains conflicting guidance.

ICANN’s Board Governance Committee, which handles Reconsideration Requests, has now answered that question: you can ask for Reconsideration of a new gTLD objection ruling, but you’ll only win if you can prove that there was a process violation by the panel.

In its decision, the BGC stated:

Although Commercial Connect’s Objection was determined by a third-party DRSP, ICANN has determined that the Reconsideration process can properly be invoked for challenges of the third-party DRSP’s decisions where it can be stated that either the DRSP failed to follow the established policies or processes in reaching the decision, or that ICANN staff failed to follow its policies or processes in accepting that decision.

That’s moderately good news as a precedent for applicants wronged by objections, in theory. In practice, it’s likely to be of little use, and it was of no use to Amazon. The BGC said:

In the context of the New gTLD Program, the Reconsideration process does not call for the BGC to perform a substantive review of DRSP Panel decisions; Reconsideration is for the consideration of process- or policy-related complaints.

As there is no indication that either the ICDR or the Panel violated any policy or process in accepting and sustaining Commercial Connect’s Objection, this Request should not proceed. If Amazon thinks that it has somehow been treated unfairly in the process, and the Board (through the NGPC) adopts this Recommendation, Amazon is free to ask the Ombudsman to review this matter.

While the BGC declined to revisit the substance of the SCO, it did decide that it’s just fine for a panelist to focus purely on the meaning of the allegedly confusing strings, even if they’re wholly visually dissimilar.

The Panel’s focus on the meanings of the strings is consistent with the standard for evaluating string confusion objections. A likelihood of confusion can be established with any type of similarity, including similarity of meaning.

In other words, Nau’s over-cautious decision stands: .通販 and .shop will have to enter the same contention set.

That’s not great news for Amazon, which will probably have to pay Commercial Connect to go away at auction, but it’s also bad news for increasingly unhinged Commercial Connect, whose already slim chances of winning .shop are now even thinner.

Commercial Connect had also filed a Reconsideration Request around the same time as Amazon’s, using the .通販 precedent to challenge a much more sensible SCO decision, which ruled that .shop is not confusingly similar to .购物, Top Level Domain Holdings’ application for “.shopping” in Chinese.

The BGC ruled that the company had failed to adequately state a case for Reconsideration, meaning that this objection ruling also stands.

The big takeaway appears to be that the BGC reckons it’s okay for objection panels to deliver decisions that directly conflict with one another.

This raises, again, questions that have yet to be answered, such as: how do you form contention sets when one string has been ruled confusingly similar and also not confusingly similar to another?

Registry objects to .jobs shutdown threat

Employ Media will appeal ICANN’s threatened termination of its .jobs registry contract.

The company released a statement (pdf) late yesterday, following ICANN’s unprecedented threat, in which it said ICANN’s claims are “utterly without merit”.

“We view the substance of this notice to be a surprising reversal of position and contradictory to prior decisions issued by its Board of Directors,” the company said.

ICANN yesterday gave Employ Media until the end of the month to cancel its agreement to provide 40,000 .jobs domains to the DirectEmployers Association for its Universe.jobs employment board.

The organization said the allocation of the domains for non-human-resources purposes went against the letter, spirit and intent of the registry’s contract and Charter.

It essentially boils down to a claim that Employ Media hacked its contract to allow it to start making money on names beyond the limited scope of its original “sponsored” community TLD.

The .jobs TLD was originally pitched as a space for corporate HR pages, not independent jobs sites. With Universe.jobs, half of the namespace is an independent jobs site. Employ Media is believed to have a revenue-sharing arrangement with DirectEmployers.

The ICANN breach notice was welcomed by the .JOBS Charter Compliance Coalition, the ad hoc trade group formed by major commercial jobs sites to fight Universe.jobs.

Peter Weddle, executive director of the International Association of Employment Web Sites, said in a press release:

the Dot Jobs Universe was not an innovation but rather an unprecedented attempt by a registry operator to misappropriate an entire TLD for itself and its alliance partner in blatant disregard of ICANN’s rules.

Employ Media disagrees, of course, saying that Universe.jobs came about as a result of its “Phased Allocation” liberalization plan, which was approved by ICANN’s Registry Services Evaluation Process and then survived a Reconsideration Request filed by the Coalition.

The company said: “it is imperative for registry operators to have predictability in the performance of duties and that ICANN has a responsibility to honor its commitments with contracted parties.”

Its registry contract contains a dispute resolution procedure that first calls for bilateral talks and, failing agreement, arbitration via the International Chamber of Commerce.