Under global spotlight, ICANN forced to choose between GAC and the GNSO

Kevin Murphy, March 27, 2014, Domain Policy

ICANN has angered the Generic Names Supporting Organization and risks angering the Governmental Advisory Committee as it prevaricates over a controversial rights protection mechanism.

It looks like the ICANN board of directors is going to have decide whether to reject either a hard-won unanimous consensus GNSO policy recommendation or a piece of conflicting GAC advice.

ICANN is “stuck in a bind”, according to chairman Steve Crocker, and it’s a bind that comes at a time when the bottom-up multi-stakeholder process is under the global microscope.

The issue putting pressure on the board this week at the ICANN 49 public meeting here in Singapore is the protection of the names and acronyms of intergovernmental organizations.

IGOs pressured the GAC a few years ago into demanding protection in new gTLDs. They want every IGO name and acronym — hundreds of strings — blocked from registration by default.

For example, the Economic Cooperation Organization would have “economiccooperationorganization” and “eco” blocked at the second level in all new gTLDs, in much the same way as country names are reserved.

Other IGO acronyms include potentially useful dictionary-word strings like “who” and “idea”. As I’ve said before, protecting the useful acronyms of obscure IGOs that never get cybersquatted anyway is just silly.

But when ICANN approved the new gTLD program in 2011, for expediency it placed a temporary block on some of these strings and asked the GNSO to run a formal Policy Development Process to figure out a permanent fix.

In November 2012 it added hundreds more IGO names and acronyms to the list, while the GNSO continued its work.

The GNSO concluded its PDP last year with a set of strong consensus recommendations. The GNSO Council then approved them in a unanimous vote at the Buenos Aires meeting last November.

Those recommendations would remove the IGO acronyms from the temporary reserved names list, but would enable IGOs to enter those strings into the Trademark Clearinghouse instead.

Once in the TMCH, the acronyms would be eligible for the standard 90-day Trademark Claims mechanism, which alerts brand owners when somebody registers a name matching their mark.

The IGOs would not, however, be eligible for sunrise periods, so they wouldn’t have the special right to register their names before new gTLDs go into general availability.

The PDP did not make a recommendation that would allow IGOs to use the Uniform Rapid Suspension service or UDRP.

Unfortunately for ICANN, the GNSO recommendations conflict with the GAC’s current advice.

The GAC wants (pdf) the IGOs to be eligible for Trademark Claims on a “permanent” basis, as opposed to the 90-day minimum that trademark owners get. It also wants IGOs — which don’t generally enjoy trademark protection — to be made eligible for the URS, UDRP or some similar dispute resolution process.

Since Buenos Aires, the ICANN board’s New gTLD Program Committee has been talking to the GAC and IGOs about a compromise. That compromise has not yet been formally approved, but some initial thinking has been circulated by Crocker to the GAC and GNSO Council.

ICANN proposes to give IGOs the permanent Trademark Claims service that the GAC has asked for, as well as access to the URS. Both policies would have to be modified to allow this.

It would also create an entirely new arbitration process to act as a substitute for UDRP for IGOs, which are apparently legally unable to submit to the jurisdiction of national courts.

The compromise, while certainly overkill for a bunch of organizations that could hardly be seen as ripe cybersquatting targets, may seem like a pragmatic way for the board to reconcile the GNSO recommendations with the GAC advice without pissing anyone off too much.

But members of the GNSO are angry that the board appears to be on the verge of fabricating new policy out of whole cloth, ignoring its hard-won PDP consensus recommendations.

That’s top-down policy-making, something which is frowned upon within ICANN circles.

Under the ICANN bylaws, the board is allowed to reject a GNSO consensus recommendation, if it is found to be “not in the best interests of the ICANN community or ICANN”. A two-thirds majority is needed.

“That’s not what happened here,” Neustar’s vice president of registry services Jeff Neuman told the board during a meeting here in Singapore on Tuesday.

“Instead, the board on its own developed policy,” he said. “It did not accept, it did not reject, it developed policy. But there is no room in the ICANN bylaws for the board to do this with respect to a PDP.”

He said that the GNSO working group had already considered elements of ICANN’s compromise proposal and specifically rejected them during the PDP. Apparently speaking for the Registries Stakeholder Group, Neuman said the compromise should be taken out of consideration.

Bret Fausett of Uniregistry added: “The process here is as important to us as the substance. We think procedure wasn’t followed here and we detect a lack of understanding at the board level that process wasn’t followed.”

The GNSO Council seems to agree that the ICANN board can either accept or reject its recommendations, but what it can’t do is just write its own policies for the sake of a quiet life with the GAC.

To fully accept the GNSO’s recommendations would, however, necessitate rejecting the GAC’s advice. That’s also possible under the bylaws, but it’s a lengthy process.

Director Chris Disspain told the GNSO Council on Sunday that the board estimates it would take at least six months to reject the GAC’s advice, during which time the temporary reservations of IGO acronyms would remain active.

He further denied that the board is trying to develop policy from the top.

“It is not top-down, it’s not intended to be top-down, I can’t really emphasis that enough,” he told the Council.

He described the bylaws ability to reject the GNSO recommendations as a “sledgehammer”.

“It would be nice to be able to not have to use the sledgehammer,” he said. “But if we did have to use the sledgehammer we should only be using it because we’ve all agreed that’s what we have to do.”

Chair Steve Crocker summed up the board’s predicament during the Sunday meeting.

“We always do not want to be in the position of trying to craft our own policy decision,” he said. “So we’re stuck in this bind where we’re getting contrary advice from sources that feel very strongly that they’ve gone through their processes and have spoken and so that’s the end of it from that perspective.”

The bind is especially tricky because it’s coming at a time when ICANN is suddenly becoming the focus of a renewed global interest in internet governance issues.

The US government has said that it’s willing to walk away from its direct oversight of ICANN, but only if what replaces it is a “multi-stakeholder” rather than “intergovernmental” mechanism

If ICANN were to reject the proceeds of a two-year, multi-stakeholder, bottom-up, consensus policy, what message would that send to the world about multistakeholderism?

On the other hand, if ICANN rejects the advice of the GAC, what message would it send about governments’ ability to effectively participate as a stakeholder in the process?

Clearly, something is broken when the procedures outlined in ICANN’s bylaws make compromise impossible.

Until that is fixed — perhaps by getting the GAC involved in GNSO policy-making, something that has been talked about to no end for years — ICANN will have to continue to make these kinds of hard choices.

Fielding a softball question during a meeting with the GNSO Council on Saturday, ICANN CEO Fadi Chehade said that “to value the process as much as I value the result” is the best piece of advice he’s received.

“Policies get made here,” Chehade told the Council, “they should not be made at the board level, especially when a consensus policy was made by the GNSO. Akram [Atallah, Generic Domains Division president] today was arguing very hard at the board meeting that even if we don’t think it’s the right thing, but it is the consensus policy of the GNSO, we should stick with it.”

Will the board stick with it? Director Bruce Tonkin told the registries on Monday that the board would try to address their concerns by today, so we may not have to wait long for an answer.

Over half a million Trademark Claims notices served

Kevin Murphy, March 25, 2014, Domain Services

The Trademark Clearinghouse has delivered over 500,000 Trademark Claims notices and prevented over 475,000 trademarked names from being registered, according to the TMCH.

The 500,000 number announced in a press release today seems to refer to pre-registration warnings that the name about to be registered matches a trademark in the TMCH database.

Three weeks ago the TMCH said it had served 17,500 post-registration notices to trademark owners in just one month. I’m inferring that this number is now up to over 25,000.

Half a million appears to be an awfully big number, especially when compared to the number of active domain names in new gTLDs, which today stands at just over 347,000.

The TMCH said today that 95% of these notices led to the name not being registered, which it said shows the success of the Claims system.

It could also mean that it’s having the “chilling effect” predicted by opponents of the process, with legitimate registrants being scared away from non-infringing uses of registered marks.

There are plenty of dictionary words in the Clearinghouse — some that match legitimate brands, some which are simply attempts to game sunrise periods and obtain potentially valuable names.

There are currently over 28,000 marks in the TMCH database.

Full TMCH database published by registry?

Kevin Murphy, March 17, 2014, Domain Policy

DotBerlin seems to have published the full list of trademarks and other strings protected by the Trademark Clearinghouse.

The list, published openly on nic.berlin as the .berlin new gTLD went through its sunrise period, contains 49,989 .berlin domain names that the registry says are protected.

Neither the TMCH nor DotBerlin have yet responded to a request for comment, so I can’t be 100% certain it’s the TMCH list, but it certainly appears to be. You can judge for yourself here (pdf).

UPDATE: DotBerlin told DI that it is “not the full list but part of a registry-reserved names list” that was published “accidentally” and has now been removed from its web site.

The DotBerlin web site calls the list “MarkenSchutzEngel-Domains” which I believe translates to something like “Trademark Guardian Angel Domains”.

While the TMCH says it has 26,802 listed marks, the document published by DotBerlin seems to also include thousands of strings that are protected under the “Trademark +50″ rule.

That allows companies that have won UDRP complaints to have those domains’ second-level strings added to their TMCH records. I see plenty of UDRP’d domains on this list.

The list also seems to include hundreds, possibly thousands, of variant strings that put hyphens between different words. For example, Santander appears to have registered:

a-bank-for-your-ideas
a-bank-for-yourideas
a-bank-foryour-ideas
a-bank-foryourideas
a-bankfor-your-ideas
a-bankfor-yourideas
a-bankforyour-ideas
a-bankforyourideas

I spotted dozens of examples of this, which is permitted under ICANN’s TMCH rules.

There are 2,462 internationalized domain names on the list.

I gather that the full TMCH list today is over 50,000 strings, a little larger than the DotBerlin document.

I took the liberty of comparing the list to a dictionary of 110,000 English words and found 1,941 matches. Strings such as “fish”, “vision”, “open”, “jump” and “mothers” are all protected.

A listing in the TMCH means you get the right to buy a domain matching your mark during new gTLD sunrise periods. Anyone else trying to register a matching name will also generate a Trademark Claims notice.

According to some registries I’ve spoken to today, the TMCH forbids the publication of the full database under the contract that all new gTLD registries must sign.

I’ve no idea whether the publication of a list of .berlin names means that DotBerlin broke its contract.

While the TMCH rules were being developed, trademark owners were adamant that the full database should not be published and should not be easily reverse engineered.

They were worried that to publish the list would reveal their trademark enforcement strategies, which may leave them open to abuse.

(Hat tip to Bart Mortelmans of bNamed.net for the link.)

TMCH sends out 17,500 Trademark Claims notices in a month

Kevin Murphy, March 3, 2014, Domain Services

Wow.

Just four weeks after the first new gTLDs went into general availability, the Trademark Clearinghouse has already sent out over 17,500 Trademark Claims notices to trademark owners.

A Claims notice is a warning that is generated whenever somebody registers a domain name that exactly matches a trademark listed in the TMCH’s database.

The 17,500 number refers to post-registration notices sent to trademark owners, not pre-registration warnings delivered to would-be registrants.

Considering that there are somewhere in the region of 180,000 domain names in new gTLDs today, 17,500 represents a surprisingly high percentage of the market (high single figures).

Of course, not all of these will be due to cybersquatting attempts.

There are plenty of marks in the TMCH that are acronyms or dictionary words, either because they match a genuine brand or because somebody obtained trademarks on generic terms in order to game sunrise periods.

I’d count those as false positives, personally, but it’s impossible to know without access to TMCH data how many of the 17,500 alerts delivered to date can be accounted for in that way.

There are 26,802 marks in the TMCH, according to the company.

TMCH sees cybersquatting in 1&1′s pre-reg requests

Kevin Murphy, February 6, 2014, Domain Registries

Would-be cybersquatters have pre-registered new gTLD domains matching many famous brands, according to the Trademark Clearinghouse.

According to a bit of TMCH PR fluff coming out tomorrow, there are pre-registrations in .web for 40 out of the 50 most-valuable British brands.

I gather that the data came from 1&1, the most aggressive registrar in its pursuit of new gTLD leads, which has reported over three million pre-regs.

In what appears to be outreach to drum up additional trademark registrations, the TMCH said:

According to the Trademark Clearinghouse’s data, unknown entities have already pre-reserved their interest in registering the domain names of 80 per cent of the UK’s 50 most valuable under the .WEB domain name. Similarly, third parties have attempted to pre-order 78 per cent of the UK’s top 50 most valuable brands under the .ONLINE domain name, 72 per cent under .APP, 70 per cent under .SHOP and 68 per cent under .BLOG.

It doesn’t seem to be a problem peculiar to new gTLDs, however. The TMCH also said that 54% of these brands have holes in their defensive registration portfolio across existing TLDs such as .biz, .net and .co.

There were roughly 23,000 marks in the TMCH database as of January 21.

UPDATE: 1&1 has asked me to clarify that the company took no part in this research. TMCH says it obtained the numbers through searches on the 1&1 web site.