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Trademarks still trump founders in latest TMCH spec

Kevin Murphy, August 7, 2013, Domain Registries

New gTLD applicants and ICANN seem to have failed to reach an agreement on how new registries can roll out founders programs when they launch.

A new draft of the Rights Protection Mechanism Requirements published last night, still appears to make it tricky for new gTLD registries to sell domain names to all-important anchor tenants.

The document (pdf), which tells registries what they must do in order to implement Sunrise and Trademark Claims services, is unchanged in many major respects from the original April draft.

But ICANN has published a separate memo (pdf) comprising a handful of asks made by applicants, which highlight where differences remain. Both are now open for public comment until September 18.

Applicants want text adding to the Requirements document that would allow them to give or sell a small number of domains to third parties — namely: anchor tenants — before and during Sunrise periods.

Their suggested text reads:

As set forth in Specification 5 of the Agreement, Registry Operator MAY activate in the DNS up to one hundred (100) names necessary for the operation and promotion of the TLD. Pursuant to these Requirements, Registry Operator MAY register any or all of such domain names in the TLD prior to or during the Sunrise Period to third parties in connection with a registry launch and promotion program for the TLD (a “Qualified Registry Launch Program”), provided that any such registrations will reduce the number of domain names that Registry Operator MAY otherwise use for the operation and promotion of the TLD as set forth in Specification 5.

The base new gTLD Registry Agreement currently allows up to 100 names to be set aside before Sunrise only on the condition that ownership stays in the hands of the registry for the duration of the registration.

Left unaltered, that could complicate deals where the registry wants to get early registrants through the door to help it promote its gTLD during the critical first few months.

A second request from applicants deals with the problem that Sunrise periods also might interfere with preferred allocation programs during the launch of community and geographic gTLDs.

An example given during the recent ICANN Durban meeting was that of the .london registry giving first dibs on police.london to the Metropolitan Police, rather than a trademark owner such as the Sting-fronted band.

The applicants have proposed to allow registries to request “exemptions” to the Requirements to enable this kind of allocation mechanism, which would be offered in addition to the standard obligatory RPMs.

Because these documents are now open for public comment until September 18, that appears to be the absolute earliest date that any new gTLD registry will be able to give its mandatory 30-day pre-Sunrise warning.

In other words, the hypothetical date of the first new gTLD launch appears to have slipped by a couple of weeks.

GNSO still breathing as ICANN retracts “flawed” Trademark+50 thinking

Kevin Murphy, July 2, 2013, Domain Policy

The Generic Names Supporting Organization isn’t dead after all.

ICANN’s Board Governance Committee has retracted a document related to new gTLD trademark protections that some on the GNSO Council believed spelled the end of the multistakeholder model as we know it.

The BGC, in rejecting a formal Reconsideration Request related to the “Trademark+50” mechanism, had used a rationale that some said was overly confrontational, legalistic and gave ICANN staff the ability to ignore community input more or less at will.

We reported on the issue in considerable detail here.

The committee on Friday retracted the original rationale, replacing it with one (pdf) that, while still containing some of the flawed reasoning DI noted last month, seems to have appeased the GNSO Council.

Neustar policy VP Jeff Neuman, who raised the original concerns, told the Council: “I believe the rationale is much more consistent with, and recognizes, the value of the multi-stakeholder model.”

The BGC did not change its ultimate decision — the Reconsideration Request has still been rejected and Trademark+50 is still being implemented in the new gTLD program.

The True Historie of Trademark+50 and the Deathe of the GNSO (Parte the Thirde)

Kevin Murphy, May 28, 2013, Domain Policy

ICANN’s decision to press ahead with the “Trademark+50” trademark protection mechanism over the objections of much of the community may not be the end of the controversy.

Some in the Generic Names Supporting Organization are even complaining that ICANN’s rejection of a recent challenge to the proposal may “fundamentally alter the multi-stakeholder model”.

Trademark+50 is the recently devised adjunct to the suite of rights protection mechanisms created specially for the new gTLD program.

It will enable trademark owners to add up to 50 strings to each record they have in the Trademark Clearinghouse, where those strings have been previously ruled abusive under UDRP.

Once in the TMCH, they will generate Trademark Claims notices for both the trademark owner and the would-be registrant of the matching domain name during the first 60 days of general availability in each new gTLD.

Guinness, for example, will be able to add “guinness-sucks” to its TMCH record for “Guinness” because it has previously won guinness-sucks.com in a UDRP decision.

If somebody then tries to register guinness-sucks.beer, they’ll get a warning that they may be about to infringe Guinness’ trademark rights. If they go ahead and register anyway, Guinness will also get an alert.

Trademark+50 was created jointly by ICANN’s Business Constituency and Intellectual Property Constituency late last year as one of a raft of measures designed to strengthen rights protection in new gTLDs.

They then managed to persuade CEO Fadi Chehade, who was at the time still pretty new and didn’t fully appreciate the history of conflict over these issues, to convene a series of invitation-only meetings in Brussels and Los Angeles to try to get other community members to agree to the proposals.

These meetings came up with the “strawman solution”, a list of proposed changes to the program’s rights protection mechanisms.

Until two weeks ago, when DI managed to get ICANN to publish a transcript and audio recording of the LA meetings, what was said during these meetings was shrouded in a certain degree of secrecy.

I don’t know why. Having listened to the 20-hour recording, I can tell you there was very little said that you wouldn’t hear during a regular on-the-record public ICANN meeting.

Everyone appeared to act in good faith, bringing new ideas and suggestions to the table in an attempt to find a solution that was acceptable to all.

The strongest resistance to the strawman came, in my view, from the very small number (only one remained by the end) of non-commercial interests who had been invited, and from the registrars.

The non-coms were worried about the “chilling effect” of expanding trademark rights, while registrars were worried that they would end up carrying the cost of supporting confused or frightened registrants.

What did emerge during the LA meeting was quite a heated discussion about whether the IPC/BC proposals should be considered merely “implementation” details or the creation of new “policy”.

That debate spilled over into 2013.

Under the very strictest definition of “policy”, it could be argued that pretty much every aspect of every new rights protection mechanism in the Applicant Guidebook is “implementation”.

The only hard policy the GNSO came up with on trademarks in new gTLDs was back in 2008. It reads:

Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law.

Pretty much everything that has come since has been cobbled together from community discussions, ad hoc working groups, ICANN staff “synthesis” of public comments, and board action.

But many in the ICANN community — mainly registries, registrars and non-commercial interests — say that anything that appears to create new rights and/or imposes significant new burdens on the industry should be considered “policy”.

During the LA meetings, there was broad agreement that stuff like extending Trademark Claims from 60 to 90 days and instituting a mandatory 30-day notice period before each Sunrise period was “implementation”.

Those changes won’t really incur any major new costs for the industry; they merely tweak systems that already have broad, if sometimes grudging, community support.

But the attendees were split (IPC/BC on the one side, most everyone else on the other) about whether Trademark+50, among other items, was new policy or just an implementation detail.

If something is “policy” there are community processes to deal with it. If it’s implementation it can be turned over to ICANN staff and forgotten.

Because the registries and registrars have an effective veto on GNSO policy-making and tend to vote as a bloc, many others view a “policy” label as a death sentence for something they want done.

A month after the strawman meetings, in early December, ICANN staff produced a briefing paper on the strawman solution (pdf) for public comment. Describing what we’re now calling Trademark+50, the paper stated quite unambiguously (it seemed at the time):

The inclusion of strings previously found to be abusively registered in the Clearinghouse for purposes of Trademark Claims can be considered a policy matter.

Chehade had previously — before the strawman meetings — strongly suggested in a letter to members of the US Congress that Trademark+50 was not doable:

It is important to note that the Trademark Clearinghouse is intended be a repository for existing legal rights, and not an adjudicator of such rights or creator of new rights. Extending the protections offered through the Trademark Clearinghouse to any form of name (such as the mark + generic term suggested in your letter) would potentially expand rights beyond those granted under trademark law and put the Clearinghouse in the role of making determinations as to the scope of particular rights.

Personally, I doubt then-new Chehade wrote the letter (at least, not without help). It mirrors Beckstrom-era arguments and language and contrasts with a lot of what he’s said since.

But it’s a pretty clear statement from ICANN’s CEO that the expansion of Trademark Claims to Trademark+50 night expand trademark rights and, implicitly, is not some throwaway implementation detail.

Nevertheless, a day after the staff briefing paper Chehade wrote to GNSO Council chair Jonathan Robinson in early December to ask for “policy guidance” on the proposal.

Again, there was a strong suggestion that ICANN was viewing Trademark+50 as a policy issue that would probably require GNSO input.

Robinson replied at the end of February, after some very difficult GNSO Council discussions, saying “the majority of the council feels that is proposal is best addressed as a policy concern”.

The IPC disagreed with this majority view, no doubt afraid that a “policy” tag would lead to Trademark+50 being gutted by the other GNSO constituencies over the space of months or years.

But despite ICANN staff, most of the GNSO Council and apparently Chehade himself concluding that Trademark+50 was policy, staff did a U-turn in March and decided to go ahead with Trademark+50 after all.

An unsigned March 20 staff report states:

Having reviewed and balanced all feedback, this proposal appears to be a reasonable add-on to an existing service, rather than a proposed new service.

It is difficult to justify omission of a readily available mechanism which would strengthen the trademark protection available through the Clearinghouse. Given that the proposal relies on determinations that have already been made independently through established processes, and that the scope of protection is bounded by this, concerns about undue expansion of rights do not seem necessary.

This caught the GNSO off-guard; Trademark+50 had looked like it was going down the policy track and all of a sudden it was a pressing reality of implementation.

Outraged, the Non-Commercial Stakeholders Group, which had been the strongest (if smallest through no fault of their own) voice against the proposal during the strawman meetings filed a formal Reconsideration Request (pdf) with ICANN.

Reconsideration Requests are one of the oversight mechanisms built into ICANN’s bylaws. They’re adjudicated by ICANN’s own Board Governance Committee and never succeed.

In its request, the NCSG told a pretty similar history to the one I’ve just finished relating and asked the BGC to overturn the staff decision to treat Trademark+50 as implementation.

The NCSG notes, rightly, that just because a domain has been lost at UDRP the string itself is not necessarily inherently abusive. To win a UDRP a complainant must also demonstrate the registrant’s bad faith and lack of rights to the string at issue.

To return to the earlier example, when notorious cybersquatter John Zuccarini — an unambiguously bad guy — registered guinness-sucks.com back in 2000 he told Guinness he’d done it just to piss them off.

That doesn’t mean guinness-sucks.beer is inherently bad, however. In many jurisdictions I would be well within my rights to register the domain to host a site criticizing the filthy brown muck.

But if I try to register the name, I’m going to get a Trademark Claims notice asking me to verify that I’m not going to infringe Guinness’ legal rights and advising me to consult a lawyer.

Chilling effect? Maybe. My own view is that many people will just click through the notice as easily as they click through the Ts&Cs on any other web site or piece of software.

Either way, I won’t be able to claim in court that I’d never heard of GuinnessTM, should the company ever decide to sue me.

Anyway, the NCSG’s Reconsideration Request failed. On May 16 the BGC issued a 15-page determination (pdf) denying it.

It’s this document that’s causing consternation and death-of-the-GNSO mutterings right now.

Last week, Neustar’s lead ICANN wonk Jeff Neuman asked for the Reconsideration Request to be put on the agenda of the GNSO Council’s June 13 meeting. He wants BGC representatives to join the call too. He wrote:

This decision was clearly written by legal counsel (and probably from outside legal counsel). It was written as a legal brief in litigation would be written, and if upheld, can undermine the entire bottom-up multi-stakeholder model. If ICANN wanted to justify their decision to protect their proclamation for the 50 variations, they could have done it in a number of ways that would have been more palatable. Instead, they used this Reconsideration Process as a way to fundamentally alter the multi-stakeholder model. It not only demonstrates how meaningless the Reconsideration process is as an accountability measure, but also sends a signal of things to come if we do not step in.

He has support from other councilors.

I suspect the registries that Neuman represents on the Council are not so much concerned with Trademark+50 itself, more with the way ICANN has forced the issue through over their objections.

The registries, remember, are already nervous as hell about the possibility of ICANN taking unilateral action to amend their contracts in future, and bad decision-making practices now may set bad precedents.

But Neuman has a point about the legalistic way in which the Reconsideration Request was handled. I spotted a fair few examples in the decision of what can only be described as, frankly, lawyer bullshit.

For example, the NCSG used Chehade’s letter to Congress as an example of why Trademark+50 should be and was being considered “policy”, but the BGC deliberately misses the point in its response, stating:

The NCSG fails to explain, however, is how ICANN policy can be created through a proclamation in a letter to Congress without following ICANN policy development procedures. To be clear, ICANN cannot create policy in this fashion.

Only a lawyer could come up with this kind of pedantic misinterpretation.

The NCSG wasn’t arguing that Chehade’s letter to Congress created a new policy, it was arguing that he was explaining an existing policy. It was attempting to say “Hey, even Fadi thought this was policy.”

Strike two: the NCSG had also pointed to the aforementioned staff determination, since reversed, that Trademark+50 was a policy matter, but the BCG’s response was, again, legalistic.

It noted that staff only said Trademark+50 “can” be considered a policy matter (rather than “is”, one assumes), again ignoring the full context of the document.

In context, both the Chehade letter and the March staff document make specific reference to the fact that the Implementation Recommendation Team had decided back in 2009 that only strings that exactly match trademarks should be protected. But the BGC does not mention the IRT once in its decision.

Strike three: the BGC response discounted Chehade’s request for GNSO “policy guidance” as an “inartful phrase”. He wasn’t really saying it was a policy matter, apparently. No.

Taken as a whole, the BGC rejection of the Reconsideration Request comes across like it was written by somebody trying to justify a fait accompli, trying to make the rationale fit the decision.

In my view, Trademark+50 is quite a sensible compromise proposal with little serious downside.

I think it will help trademark owners lower their enforcement costs and the impact on registrars, registries and registrants’ rights is likely to be minimal.

But the way it’s being levered through ICANN — unnecessarily secretive discussions followed by badly explained U-turns — looks dishonest.

It doesn’t come across like ICANN is playing fair, no matter how noble its intentions.

Will the Trademark Clearinghouse kill off premium domains?

Kevin Murphy, April 18, 2013, Domain Policy

Rules proposed for the new Trademark Clearinghouse threaten to cut off some of new gTLD registries major sources of early revenue, according to registry providers.

Premium domain sales and founders programs are among the now industry-standard practices that would be essentially banned under the current draft of the TMCH rules, they say.

The potential problems emerged in a draft TMCH Requirements document circulated to registries 10 days ago and vigorously discussed during a session at the ICANN meeting in Beijing last week.

The document lists all of the things that new gTLD registries must and must not, and may and may not, do during the mandatory Sunrise and Trademark Claims rights protection launch periods.

One of the bits that has left registries confused is this:

2.2.4 Registry Operator MUST NOT allow a domain name to be reserved or registered to a registrant who is not a Sunrise-Eligible Rights Holder prior to the conclusion of the Sunrise Period.

What this means is that trademark owners get first dibs on pretty much every possible string in every gTLD.

“Trademark owners trump everything,” Neustar business affairs veep Jeff Neuman said during the Beijing meeting. “Trademark owners trump every possible use of every possible name.”

It would mean, for example, that if a new gTLD wanted to allocate some names to high-profile anchor tenants during a “founders program”, it would not be able to do so until after the Sunrise was over.

Let’s say the successful applicant for .shop wants to reserve the names of hundreds of shop types (book.shop, food.shop, etc) as premium names, to allocate during its founders program or auction later.

Because the .shop Sunrise would have to happen first, the companies that the own rights to, for example, “wallpaper” or “butcher” (both real US trademarks) would have first rights to wallpaper.shop and butcher.shop, even if they only planned to defensively park the domains.

Because there’s likely to be some degree of gaming (there’s a proof-of-use requirement, but the passing threshold is pretty low), registries’ premium lists could be decimated during Sunrise periods.

If ICANN keeps its TMCH Requirements as they are currently written, new gTLD registries stand to lose a lot of early revenue, not to mention control over launch marketing initiatives.

However, if ICANN were to remove this rule, it might give unscrupulous registries the ability to circumvent the mandatory Sunrise period entirely by placing millions of strings on their premium lists.

“Registries should have discretion to schedule their start-up phases according to their business plans so long as rights protection processes are honored, so that’s the balancing we’ve tried to do,” ICANN operations & policy research director Karen Lenz said during Beijing.

“It’s trying to allow registries to create requirements that suit their purposes, without being able to hollow out the rights protection intention,” she said.

The requirements document is still just a draft, and discussions are ongoing, she added.

“It’s certainly not our intention to restrict business models,” Lenz said.

Registries will get some flexibility to restrict Sunrise to certain registrants. For example, they’ll be able to disqualify those without an affiliation to the industry to which the gTLD is targeted.

What they won’t be able to do is create arbitrary rules unrelated to the purpose of the TLD, or apply one set of rules during Sunrise and another during the first 90 days of general availability.

The standard Registry Agreement that ICANN expects all new gTLDs to sign up to does enable registries to reserve or block as many names as they want, but only if those names are not registered or used.

It seemed to be designed to do things like blocing ‘sensitive’ strings, rather like when ICM Registry reserved thousands of names of celebrities and cultural terms in .xxx.

The Requirements document, on the other hand, seems to allow these names being released at a later date. If they were released, the document states, they’d have to be subject to Trademark Claims notices, but not Sunrise rules.

While that may be a workaround to the premium domains problem, it doesn’t appear to help registries that want to get founders programs done before general availability.

It seems that there are still many outstanding issues surrounding the Trademark Clearinghouse — many more than discussed in this post — that will need to be settled before new gTLDs are going to feel comfortable launching.

Loophole gives trademark owners unlimited Clearinghouse records

Kevin Murphy, March 27, 2013, Domain Policy

Trademark owners will be able to add potentially thousands of strings to the Trademark Clearinghouse due to a recently introduced loophole, it emerged last night.

ICANN recently said that it will allow mark holders to add up to 50 strings related to their trademarks to their TMCH records, if the strings have been abused in the past.

It was one of the controversial “strawman” proposals that ICANN decided to adopt earlier this month.

Companies would be able to get protection for “mark+keyword” strings, for example, if a UDRP decision or court ruling had previously found that the strings had been cybersquatted.

The 50-string cap appeared to have been picked rather arbitrarily, but it turns out it’s more-or-less irrelevant anyway.

ICANN confirmed on its webinar for new gTLD applicants last night that the limit is 50 additional strings per entry in the Clearinghouse, not 50 strings per trademarked string.

What this means is that a company that has registered its trademark in multiple jurisdictions will be able to get 50 extra strings for each of those marks it enters into the Clearinghouse.

If Apple had a registered mark for “Apple” in the US and a registered mark for “Apple” in Bolivia, it would be able to submit both to the Clearinghouse and get an additional 100 “apple+keyword” records.

If it had the mark registered in 100 countries, it could put up to 5,000 more strings in the Clearinghouse.

Each string could be used to generate Trademark Claims notices, but not to secure registrations during Sunrise periods.

The apparent loophole and its implications were raised by Reg Levy of Minds + Machines during last night’s ICANN call.

In practice, the number of additional strings mark holders would qualify for would be capped by the number of trademark jurisdictions in the world and/or the number of UDRP decisions they’d won.

Few companies have secured more than a few hundred domains at UDRP to date, meaning it won’t be too difficult for trademark owners to get Trademark Claims protection for basically any previously cybersquatted string.

ICANN to pay $2 million to keep Trademark Clearinghouse “free” for registrars

Kevin Murphy, March 27, 2013, Domain Registrars

ICANN is putting its money where its mouth is when it comes to helping new gTLDs be successful, committing $2 million to keep Trademark Clearinghouse access “free” for registrars.

While TMCH pricing for trademark owners is now well-publicized, ICANN COO Akram Attalah last night revealed some of the fees for new gTLD registries and registrars.

Registries will have to pay a one-time fee of $5,000 per TLD to access the TMCH, he said.

That was reduced from $10,000 during talks with TMCH back-end provider IBM after ICANN promised to handle billing and administration, he said.

There’s also going to be a $0.30 fee for each domain that matches a TMCH record registered during Sunrise and Trademark Claims periods, he added. The specifics on this fee were a little fuzzy.

But registrars won’t have to pay a penny, it seems. Attalah said that ICANN will pay IBM $2 million to make sure the Clearinghouse is accessible and free for registrars.

“ICANN will pay $400,000 per year for five years to keep the TMCH up and running and that provides free access to all registrars,” he said on last night’s new gTLDs update webinar.

It won’t be completely free for registrars, of course.

Registrars will have to do some implementation work to support the new Trademark Claims and Sunrise specs, but the absence of fees gives them one less excuse to avoid the two rights protection periods.

ICANN to adopt most of the new gTLD “strawman”

Kevin Murphy, March 20, 2013, Domain Policy

ICANN has given a boost to trademark owners by saying it will implement most of the controversial “strawman” solution to extend protections under the new gTLD program.

In a video just posted to ICANN’s web site, CEO Fadi Chehade said that Claims 2 and the Limited Preventative Registrations proposals have been thrown out for the moment as matters requiring policy work.

But many more aspects of the strawman have been classed as “implementation” and will go ahead.

This means:

  • A mandatory 30-day notice period before sunrises begin.
  • Trademark Claims extended from 60 to 90 days.
  • Tradermark owners will be able to add up to 50 confusingly similar strings to each of their Trademark Clearinghouse records, provided the string had been part of a successful UDRP complaint.

Chehade said:

We are going to implement a 30 day notice period before each sunrise. We’re also going to extend the Trademark Claims period from 60 to 90 days. The Claims 2 period which was discussed frankly did not receive a lot of support from many of you so we’re going to let that go for now.

And then finally there was a lot of discussion about extending the Trademark Claims protection to abuse names and after much debate on whether this is a new program or an extension of what we’re doing we came to the conclusion it is an implementation extension and we will move forward with that.

In the video, Chehade also says that ICANN is on track to start publishing the first results of new gTLD initial evaluations this Friday, as expected.

But he warned that if applicants and registrars do not agree on the proposed Registry Agreement and Registrar Accreditation Agreement, ICANN might miss its April 23 deadline for approving the first gTLDs.

He said:

Let me be clear: if we do not come together towards an agreement on these things we might experience a delay in the program, which I have committed to you that we will be ready for on April 23rd. So from an ICANN staff standpoint and operations standpoint we remain ready to request new gTLDs for delegation on April 23rd. But without these agreements we might experience a delay.

He directly referenced the massive sticking point in these discussions: the fact that ICANN wants to introduce a unilateral right of amendment into both contracts.

Here’s the full video:

Check out our Trademark Clearinghouse Cost Calculator

Kevin Murphy, January 24, 2013, Domain Services

The forthcoming Trademark Clearinghouse — which will underpin Sunrise periods in new gTLDs as well as the new Trademark Claims service — released its price list yesterday.

Two payment mechanisms are expected to be available: Basic, for trademark owners with 10 or fewer trademarks, and Advanced, for large trademark portfolio owners and companies that wish to act as submission agents (such as digital brand management companies).

As the prepaid Advanced system is somewhat complex, with five tiers of discount and an accumulating points-based mechanism for determining eligibility, we’ve designed a simple, easy-to-use tool for helping companies calculate their likely fees.

DI PRO subscribers can check out the Trademark Clearinghouse Cost Calculator here.

Simply enter how many one-year, three-year and five-year registrations you expect to make, and the tool will present three pricing scenarios, designed to show what possible savings could be made by submitting longer-term registrations before others.

The tool also supports the Early Bird bonuses that the Clearinghouse intends to offer. These bonuses make it easier to achieve discounts more quickly, but only for registrations are submitted before the first new gTLD’s Sunrise period goes live.

The under-the-hood calculations are based on the official pricing scheme published yesterday by the Clearinghouse here (in PDF format).

Trademark Clearinghouse prices revealed

Kevin Murphy, January 23, 2013, Domain Services

The cost of submitting trademarks to the forthcoming Trademark Clearinghouse will start at $150 per year, the Clearinghouse operator has revealed.

In a complex fee structure documents released this morning, the Clearinghouse outlines a range of discounting schemes that could reduce the cost to as little as $95 a year for big volume users.

But it looks like it’s going to be quite difficult to qualify for really substantial discounts.

Marks submitted to the Clearinghouse will eligible for the Trademark Claims service, which alerts the owners if someone registers a matching domain name, and may be eligible for new gTLD Sunrise periods.

The fees outlined today cover both services, though new gTLD registries will of course charge their own Sunrise fees on top of what the Clearinghouse asks.

The documents break down two types of pricing: basic credit card payments (for people with 10 trademarks or fewer) and advanced prepayment pricing, which is reserved for “agents”.

Agents will in most cases be digital brand management companies (think Melbourne IT or Markmonitor) but the Clearinghouse tells us that trademark owners can also become agents if they pre-pay.

The basic, credit-card tier costs $150 per year for a single trademark. The cost is reduced to $145 per year if the trademark owner registers the mark for three or five years.

The prepaid advanced tier is rather more complicated, based on the number of “status points” customers rack up.

A status point is earned for each trademark-year registered, with bonus points awarded for multi-year registrations and registrations made in a special “early bird” period (before the first-to-launch new gTLD’s Sunrise period begins).

Excluding these bonuses, agents would have to register over 100,000 trademark-years in order to qualify for $95-a-year pricing, which is the lowest available.

Multi-year registrations would make make the discounts kick in earlier, but only after certain milestones are passed.

The Clearinghouse document gives this example:

If you register the first 3,000 trademarks for a single year, they will be charged at 145 USD per registration. The next 22,000 will be charged at 135 USD. The next 35,000 registrations will be charged at 120 USD. For 60,000 registrations you will have paid 435,000 + 2,970,000 + 4,200,000 USD, or an average price of 126.75 USD

Smart agents will likely want to register their multi-year marks first, in order to earn bonus points and more quickly qualify for the cheaper rate on their single-year registrations.

Whether agents pass on their discounts to their customers is another matter entirely.

The Clearinghouse fees will be calculated based on the number of trademarks submitted, rather than the number of domain names matching those trademarks.

Each mark will automatically get up to 10 matching domain names entered into the database. If your trademark is “Joe’s Autos” your matching domain strings could be “joesautos”, “joes-autos” and even “joe-s-autos”.

Trademark owners will have to pay an extra dollar per year for each matching domain beyond 10.

The Clearinghouse — operated by Deloitte with a back-end provided by IBM — still plans to launch later in the first quarter this year.

You can download its pricing scheme from its web site.

New gTLD “strawman” splits community

Kevin Murphy, January 16, 2013, Domain Policy

The ICANN community is split along the usual lines on the proposed “strawman” solution for strengthening trademark protections in the new gTLD program.

Registrars, registries, new gTLD applicants and civil rights voices remain adamant that the proposals — hashed out during closed-door meetings late last year — go too far and would impose unreasonable restrictions on new gTLDs registries and free speech in general.

The Intellectual Property Constituency and Business Constituency, on the other hand, are (with the odd exception) equally and uniformly adamant that the strawman proposals are totally necessary to help prevent cybersquatting and expensive defensive registrations.

These all-too-predictable views were restated in about 85 emails and documents filed with ICANN in response to its initial public comment period on the strawman, which closed last night.

Many of the comments were filed by some of the world’s biggest brand owners — many of them, I believe, new to the ICANN process — in response to an International Trademark Association “call to action” campaign, revealed in this comment from NCS Pearson.

The strawman proposals include:

  • A compulsory 30-day heads-up window before each new gTLD starts its Sunrise period.
  • An extension of the Trademark Claims service — which alerts trademark owners and registrants when a potentially infringing domain is registered — from 60 days to 90 days.
  • A mandatory “Claims 2” service that trademark owners could subscribe to, for an additional fee, to receive Trademark Claims alerts for a further six to 12 months.
  • The ability for trademark owners to add up to 50 confusingly similar strings to each of their Trademark Clearinghouse records, provided the string had been part of a successful UDRP complaint.
  • A “Limited Preventative Registration” mechanism, not unlike the .xxx Sunrise B, which would enable trademark owners to defensively register non-resolving domains across all new gTLDs for a one-off flat fee.

Brand owners fully support all of these proposals, though some companies filing comments complained that they do not go far enough to protect them from defensive registration costs.

The Limited Preventative Registration proposal was not officially part of the strawman, but received many public comments anyway (due largely to INTA’s call-to-action).

The Association of National Advertisers comments were representative:

an effective LPR mechanism is the only current or proposed RPM [Rights Protection Mechanism] that addresses the critical problem of defensive registrations in the new Top Level Domain (gTLD) approach. LPR must be the key element of any meaningful proposal to fix RPMs.

Others were concerned that the extension to Trademark Claims and proposed Claims 2 still didn’t go far enough to protect trademark rights.

Lego, quite possibly the most aggressive enforcer of its brand in the domain name system, said that both time limits are “arbitrary” and called for Trademark Claims to “continue indefinitely”.

It’s pretty clear that even if ICANN does adopt the strawman proposals in full, it won’t be the end of the IP community’s lobbying for even stronger trademark protections.

On the other side of the debate, stakeholders from the domain name industry are generally happy to embrace the 30-day Sunrise notice period (many will be planning to do this in their pre-launch marketing anyway).

A small number also appear to be happy to extend Trademark Claims by a month. But on all the other proposals they’re clear: no new rights protection mechanisms.

There’s a concern among applicants that the strawman proposals will lead to extra costs and added complexity that could add friction to their registrar and reseller channel and inhibit sales.

The New TLD Applicant Group, the part of the Registries Constituency representing applicants for 987 new gTLDs, said in its comments:

because the proposals would have significant impact on applicants, the applicant community should be supportive before ICANN attempts to change such agreements and any negative impacts must be mitigated by ICANN.

There’s a concern, unstated by NTAG in its comments, that many registrars will be reluctant to carry new gTLDs at launch if they have to implement more temporary trademark-protection measures.

New registries arguably also stand to gain more in revenue than they lose in reputation if trademark owners feel they have to register lots of domains defensively. This is also unstated.

NTAG didn’t say much about the merits of the strawman in it comments. Along with others, its comments were largely focused on whether the changes would be “implementation” or “policy”, saying:

There can be no doubt that the strawman proposal represents changes to policy rather than implementation of decided policy.

If something’s “policy”, it needs to pass through the GNSO and its Policy Development Process, which would take forever and have an uncertain outcome. Think: legislation.

If it’s “implementation”, it can be done rather quickly via the ICANN board. Think: executive decision.

It’s becoming a bit of a “funny cause it’s true” in-joke that policy is anything you don’t want to happen and implementation is anything you do.

Every comment that addresses policy vs implementation regarding the strawman conforms fully to this truism.

NTAG seems to be happy to let ICANN mandate the 30-day Sunrise heads-up, for example, even though it would arguably fit into the definition of “policy” it uses to oppose other elements of the strawman.

NTAG, along with other commenters, has rolled out a “gotcha” mined from a letter then-brand-new ICANN CEO Fadi Chehade sent to the US Congress last September.

In the letter, Chehade said: “ICANN is not in a position to unilaterally require today an extension of the 60-day minimum length of the trademark claims service.”

I’m not sure how much weight the letter carries, however. ICANN could easily argue that its strawman negotiations mean any eventual decision to extend Claims was not “unilateral”.

As far as members of the the IPC and BC are concerned, everything in the strawman is implementation, and the LPR proposal is nothing more than an implementation detail too.

The Coalition for Online Accountability, which represents big copyright holders and has views usually in lock-step with the IPC, arguably put it best:

The existing Rights Protection Mechanisms, which the Strawman Solution and the LPR proposal would marginally modify, are in no way statements of policy. The RPMs are simply measures adopted to implement policies calling for the new gTLD process to incorporate respect for the rights (including the intellectual property rights) of others. None of the existing RPMs is the product of a PDP. They originated in an exercise entitled the Implementation Recommendation Team, formed at the direction of the ICANN Board to recommend how best to implement existing policies. It defies reason to assert that mechanisms instituted to implement policy cannot now be modified, even to the minimal extent provided in the current proposals, without invoking the entire PDP apparatus.

Several commenters also addressed the process used to create the strawman.

The strawman emerged from a closed-doors, invitation-only event in Los Angeles last November. It was so secretive that participants were even asked not to tweet about it.

You may have correctly inferred, reading previous DI coverage, that this irked me. While I recognize the utility of private discussions, I’m usually in favor of important community meetings such as these being held on the public record.

The fact that they were held in private instead has already led to arguments among even those individuals who were in attendance.

During the GNSO Council’s meeting December 20 the IPC representative attempted to characterize the strawman as a community consensus on what could constitute mere implementation changes.

He was shocked — shocked! — that registrars and registries were subsequently opposed to the proposals.

Not being privy to the talks, I don’t know whether this rhetoric was just amusingly naive or an hilariously transparent attempt to capitalize on the general ignorance about what was discussed in LA.

Either way, it didn’t pass my sniff test for a second, and contracted parties obviously rebutted the IPC’s take on the meeting.

What I do know is that this kind of pointless, time-wasting argument could have been avoided if the talks had happened on the public record.