IPO warns about premium loopholes in new gTLD trademark protection

Kevin Murphy, December 4, 2013, Domain Policy

It seems like it’s been an age since we last heard the intellectual property lobby pushing for stronger rights protection mechanisms in new gTLDs, but they’re back just in time for the first launches.

The Intellectual Property Owners Association has written to ICANN this week to warn about loopholes in the standard new gTLD Registry Agreement related to premium name reservations that the IPO said “will adversely affect trademark rights holders”.

The letter (pdf) makes reference to two specific parts of the contract.

Specification 5 enables registries to reserve up to 100 names “necessary for the operation or promotion of the TLD” in section 3.2 and an unlimited number of names in section 3.3.

Section 3.3 is vague enough that I’m aware of new gTLD applicants that still don’t know whether it allows them to reserve an unlimited number of “premium” names or not.

However, most new gTLD registries I’ve talked to appear to be convinced that it does. DotKiwi’s recently announced premium plan seems to be taking advantage of 3.3.

The IPO is worried that massive lists of premium names will wind up containing lots of strings matching trademarks, which will prevent mark holders from defensively registering during Sunrise.

Worse, the IPO said it could lead to registries milking trademark owners for huge fees to register their “premium” marks. It said:

such reservations would invite the abuse of protected marks. For instance, Registry Operators may reserve the marks of protected brands to leverage premium sales. Further, Registry Operators may use this ability to release names to market competitors of the brand owners.

The counter argument, of course, is that owners of spurious trademarks on generic terms could game Sunrise periods to get their hands of potentially valuable domain names (cf. the .eu sunrise)

The IPO wants ICANN to expand the Trademark Clearinghouse to send Trademark Claims notices to new gTLD registries when they reserve a name matching a listed trademark.

It also wants a new dispute procedure that mark owners could use to get names released from reserved status. It would be like UDRP, but modified to allow for registries to reserve dictionary words related to their gTLD strings, the IPO said.

If my sense of the mood of ICANN’s leadership during last month’s Buenos Aires meeting is anything to go by, I can’t see these last-minute requests for changes to RPMs getting much traction, but you never know.

On day one, Donuts in breach of new gTLD contract

Kevin Murphy, October 24, 2013, Domain Registries

Ooops! Donuts accidentally broke the terms of its first new gTLD Registry Agreement last night, just hours after its first string, .游戏, was delegated to the DNS root.

If you’ve been following the name collisions debate closely, you’ll recall that all new gTLD registries are banned from activating any second-level domains for 120 days after they sign their contracts:

Registry Operator shall not activate any names in the DNS zone for the Registry TLD (except for “NIC”) until at least 120 calendar days after the effective date of this agreement.

For the first four gTLDs to go live, that clock doesn’t stop ticking until November 12.

And yet, last night, Donuts activated donuts.游戏, apparently in violation of its new contractual obligations with ICANN.

The name was live and resolving for at least an hour. Donuts pulled it after we asked a company executive whether it might be a breach of contract.

I don’t think it’s a big deal, and I doubt ICANN needs to take any action.

Chalk it down to the understandable ebullience that naturally accompanies finally getting delegated to the root after such a long and painful evaluation process.

The 120-day rule was also a late amendment to Specification 6 of the RA, added by ICANN just seven days before .游戏 was delegated and over three months after Donuts signed the original contract.

It’s designed to address the potential for collisions between second-level domains in new gTLDs and names used on internal networks that already have working SSL certificates.

The no-activation window was chosen to match the 120-day period that the CA/Browser Forum gives its certificate authority members to revoke clashing certificates.

It seems unlikely donuts.游戏 will have caused any security issues during the brief period it was alive.

Samsung signs the first dot-brand gTLD contract

Kevin Murphy, September 28, 2013, Domain Registries

Samsung has become the first company to sign a Registry Agreement for a dot-brand gTLD.

As of yesterday, the electronics giant is now officially contracted with ICANN to run .삼성, its name in its native Korean.

It’s surprising that Samsung would be the first; while its application has priority number 18, its application also makes it pretty obvious it’s a primarily defensive move, reading:

The new gTLD proposed by SAMSUNG SDS has purpose in protecting online brand of SAMSUNG Group including SAMSUNG by defending abusive registration by third parties and further raising global awareness by domain usage utilizing company name.

The contract has not yet been published in full — expect that over the next few days — so it’s not yet clear whether Samsung has managed to negotiate any special dot-brand-specific amendments.

The base Registry Agreement contains lots of obligations, such as Sunrise periods, that really aren’t applicable to single-registrant spaces.

I understand the new Brand Registry Group is currently trying to negotiate a baseline set of dot-brand amendments with ICANN, so it’s possible that Samsung has jumped the gun by signing so soon.

But it could also mean that .삼성 will be the first-ever dot-brand TLD to go live on the internet, which is likely to benefit from substantial media coverage compared to subsequent delegations.

ICANN has signed 48 new gTLD contracts since July, way behind its originally target of 40 per week.

.삼성 will have its back-end registry managed by .kr ccTLD operator KISA.

ICANN to publish new gTLD contract changes

Kevin Murphy, September 25, 2013, Domain Registries

ICANN has decided to start publishing red-lined versions of its new gTLD Registry Agreements, so applicants can see what special terms ICANN is willing to accept.

It’s a reversal of its previous position, and follows complaints from applicants and back-end providers.

So far ICANN has signed almost 50 new gTLD contracts, all of which have been published, but it’s not easy to compare them all to the baseline Registry Agreement found in the Applicant Guidebook.

By publishing versions with the changes highlighted, applicants will be able to go into contract negotiations with a better idea of how far ICANN is willing to bend.

ICANN said today:

Upon further consideration, ICANN has concluded that publishing redlined versions of Registry Agreements would be helpful to the entire ICANN community, and would also support ICANN’s efforts to provide operational transparency.

It added that so far there have been no substantial changes in the contracts it’s signed, apart from gTLD-specific Public Interest Commitments and approved Registry Services.

It will start publishing the redlines next month.

Three gTLD contracts to be renewed next week

Kevin Murphy, August 16, 2013, Domain Registries

ICANN is set to belatedly renew the .info, .org and .biz Registry Agreements next week, according to the just published agenda of its board of directors’ next meeting.

The .info and .biz contracts expired last year, while .org’s expired in April. All three were extended while ICANN and the registries — Afilias, Neustar and PIR — figured out how much of the new gTLD Registry Agreement to incorporate into the renewed deals.

They wound up agreeing to, among other things, mandating the use of the 2013 Registrar Accreditation Agreement in all three gTLDs, but only on the condition that Verisign agrees to the same terms for .com and .net.

The three contracts didn’t go far enough for some, such as the Intellectual Property Constituency, which wants new gTLD rights protection mechanisms such as Uniform Rapid Suspension to be added.

The approval of the three renewals is on the consent agenda for the ICANN board’s August 22 meeting, so it seems unlikely that there will be any huge changes to the previously published draft contracts.

Also on the agenda for next week are the redelegations of the ccTLDs for Botswana (.bw) and Portugal (.pt).