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Straw man proposed to settle trademark deadlock at secretive ICANN meeting

Kevin Murphy, November 19, 2012, Domain Policy

Trademark interests seem to have scored significant concessions in their ongoing battle for stronger rights protection mechanisms in new gTLDs, following a second closed-doors ICANN meeting.

Following a two-day discussion of the Trademark Clearinghouse in Los Angeles late last week, ICANN CEO Fadi Chehade has published a “straw man” proposal for further discussions.

The straw man — if it is ultimately adopted — would grant the Intellectual Property Constituency and Business Constituency some of the things they recently asked for.

Crucially, they’d get the right to add keywords to the trademarks they list in the Trademark Clearinghouse, making them eligible for the Trademark Claims service.

There would be a test — a UDRP or court win concerning the string in question — for inclusion, and a limit of 50 brand+keywords or misspellings per trademark in the Clearinghouse.

The idea here is to help brand owners quickly respond to the registration of — but not preemptively block — domains such as “brand-industry.tld” or “brand-password-reset.tld”.

The Trademark Claims service would be extended from 60 to 90 days, under the straw man model.

Chehade’s blog post also outlines a “Claims 2” process that would run for six to 12 months after the launch of each new gTLD and would require trademark owners to pay an additional fee.

This Claims 2 service would not necessarily give registrants the same information about trademarks related to the domains they want to registry. Why not is anyone’s guess.

Here’s how Chehade described it:

Rights holders will have the option to pay an additional fee for inclusion of a Clearinghouse record in a “Claims 2″ service where, for an additional 6-12 months, anyone attempting to register a domain name matching the record would be shown a Claims notice indicating that the name matches a record in the Clearinghouse (but not necessarily displaying the actual Claims data). This notice will also provide a description of the rights and responsibilities of the registrant and will incorporate a form of educational add-on to help propagate information on the role of trademarks and develop more informed consumers in the registration process.

I’ve long been of the opinion that Trademark Claims service will not prevent most cybersquatting (determined bad actors will click through the notices as easily as you or I click through a software license agreement) and “Claims 2” appears to be a diluted version of the same lip service.

Claims 2 and the extension of the Clearinghouse to brand+keyword strings appears to be a step in the right direction for trademark owners, but I can’t see the changes substantially reducing their costs.

There’s also already opposition to the ideas from the Non-Commercial Stakeholders Group, according to this analysis of the straw man from NCSG chair Robin Gross.

The LA meeting rejected the notion of a preemptive cross-TLD trademark block list along the lines of the ICM Registry’s Sunrise B for .xxx, which is among the IPC/BC proposals.

The only change to Sunrise proposed in the straw man model is a mandatory 30-day notice period before the mandatory 30-day Sunrise kicks off, to give brand owners time to prepare.

In summary, the straw man proposal appears to create some marginal benefit for trademark owners at the expense of some additional cost and complexity for registries and registrars.

It would also create an entirely new rights protection mechanism — Claims 2 — out of whole cloth.

While no firm decisions appear to have been made in LA, it’s impossible for us to know for sure what went down because the meeting was held behind closed doors.

ICANN even enforced a Twitter ban, according to some attendees.

The meeting was the second private, invitation-only TMCH discussion in recent weeks.

While we understand there were remote participation opportunities for invited guests unable to attend in person, there was no opportunity to passively listen in to the call.

DI was told by ICANN there was no way for us to follow the talks remotely.

According to a number of attendees on Twitter, participants were also asked by ICANN not to tweet about the substance of the discussions, after complaints from trademark interests present.

The same attendees said that ICANN plans to publish a transcript of the meeting, but this has not yet appeared.

Considering that the issues under discussion will help to shape the structure of the domain name industry for many years to come, the lack of transparency on display is utterly baffling.

Melbourne IT scales back HARM proposal

Kevin Murphy, November 14, 2012, Domain Policy

Melbourne IT has published a revised, less-complicated version of its High At-Risk Marks (HARM) proposal for protecting famous brands in the new gTLD program.

The new version throws more than a few bones to trademark lawyers, most of whom rejected many aspects of the original proposal at a meeting in Washington DC this September.

It’s a lot closer to the eight-point wish-list published jointly by the Intellectual Property Constituency and Business Constituency last month.

HARM envisions a two-tier set of trademark rights protection mechanisms in new gTLDs, with the super-famous brands that get cybersquatted and phished on a regular basis enjoying greater privileges.

Companies that could prove their trademarks were subject to regular abuse would, for example, benefit from a perpetual Trademark Claims notification service on “brand+keyword” domains.

The new version would lower the bar for inclusion on the list.

The first HARM said trademarks should be registered on five continents, but the new version reduces that to a single registration, provided that the jurisdiction does substantive review.

A provision to only extend the protection to five-year-old marks has also been removed, and the number of UDRP wins required to prove abuse has also been reduced from five to one.

I’ve previously expressed my fondness for the idea of using UDRP decisions to gauge the risk profile of a trademark, but it was recently pointed out to me that it may incentivize mark holders to pay people to cybersquat their marks, in order to win slam-dunk UDRPs and thus benefit from better RPMs, which makes me less fond of it.

Even if such skullduggery is an outside risk, I think a single UDRP win may be too low a bar, given the number of dubious decisions produced by panelists in the past.

The revised HARM would still exclude dictionary words from the special protections (as the paper points out, Apple and Gap would not be covered). The proposal states:

Melbourne IT believes it will be difficult to get consensus in the ICANN community that this mechanism should apply to all trademark owners, most of whom do not suffer any trademark abuse. Many trademarks also relate to generic dictionary words that would be inappropriate to block across all gTLDs.

The original HARM paper was put forth as compromise, designed to help prevent or mitigate the effects of most cybersquatting, while being slightly more palatable to registries and registrars than the usual all-or-nothing demands coming from trademark lawyers.

While not particularly elegant, most of its recommendations were found wanting by the ICANN community, which is as bitterly divided as always on the need for stronger rights protection mechanisms.

The IPC and BC did adopt some of its ideas in their recent joint statement on enhanced RPMs, including the idea that frequently squatted names should get better protection, but rejected many more of the Melbourne-proposed criteria for inclusion on the list.

Meanwhile, many registrars shook their heads, muttering something about cost, and new gTLD applicants staunchly rejected the ideas, based on the mistaken notion that paying their $185,000 has rendered the Applicant Guidebook immutable.

Read the new Melbourne IT paper here (pdf).

Trademark Clearinghouse “breakthrough” at private Brussels meeting

Kevin Murphy, November 8, 2012, Domain Tech

ICANN’s various stakeholder groups reached a “breakthrough” agreement on the Trademark Clearinghouse for new gTLDs, according to attendees at a closed-doors meeting last week.

The meeting in Brussels evidently saw attendance from members of the Business Constituency and Intellectual Property Constituency, in addition to the registries and registrars that have been involved in the development of the TMCH implementation model to date.

It was a discussion of nitty-gritty implementation details, according to attendees, rather than reopening the policy discussion on matters such as the mandatory Trademark Claims service period.

Crucially, ICANN appears to have dropped its strong objection to a community-developed proposal that would put the TMCH in the “critical path” for domain registrations.

The community proposal requires a centralized Clearinghouse serving Trademark Claims notices live rather than in a batch fashion, meaning up-time would be paramount.

Senior ICANN executives including chief strategy officer Kurt Pritz were adamant that this model would create an unacceptable single point of failure for the new gTLD program.

But CEO Fadi Chehade, who in Toronto last month appeared to disagree with Pritz, does not appear to have shared these concerns to the same deal-breaking extent.

In a blog post reviewing the meeting’s conclusions last night, Chehade wrote that the community has settled on a “hybrid” solution:

Participants reviewed the features of possible centralized and decentralized systems, and agreed to support a “hybrid” system for Trademark Claims. In this system, a file of domain name labels derived from the trademarks recorded in the Clearinghouse (and hence subject to a Claims Notice) would be distributed to all registries and updated on a regular basis, and a live query system would be used to retrieve the detailed data from the Clearinghouse when necessary to display the Claims Notice to a prospective registrant.

This description appears to closely match the community proposal (pdf) developed by the registries.

ARI Registry Services CTO Chris Wright, one of the key architects of the community TMCH proposal, made no mention of a “hybrid” solution in his update following the Brussels meeting.

According to Wright, “ICANN has tentatively agreed to proceed with the community-developed Trademark Clearinghouse”.

The meeting also concluded that there’s no way to provide blanket privacy protection for trademark data under Trademark Claims, something that has been worrying trademark holders for a while.

At a session in Toronto last month registries observed that the whole point of Trademark Claims is to provide information about trademarks to potential registrants.

That means it can be mined in bulk, and there’s not a heck of a lot registries can do to prevent that even with technical solutions such as throttling access.

Chehade blogged:

There was discussion on implementing an appropriate framework for access and use of the data. The group considered whether measures were necessary specifically to address potential mining of the Clearinghouse database for purposes other than to support the rights protection mechanisms. Given that the Trademark Clearinghouse is designed to provide trademark data for particular purposes, there was agreement that most controls would be ineffective in attempting to control data elements once provided to other parties.

So, how much community support do the Brussels agreements have?

The meeting was not webcast and there does not appear to be a recording or transcript, so it’s difficult to know for sure who was there, what was discussed or what conclusions were reached.

Concerns were expressed by members of the Non-Commercial Stakeholders Group, as well as the Internet Commerce Association, about the fact that ICANN did not widely publicize the meeting, which was first reported in an ICA blog post last week.

The ICA’s Phil Corwin also questioned whether key members of the IPC and BC — based on the US Eastern seaboard — would be able to attend due to Hurricane Sandy’s impact on air travel.

While there seems to be a feeling that solid progress on the Clearinghouse is definitely a positive development for the new gTLD program, the fact that the consensus was apparently reached behind closed doors does not appear to be in lockstep with Chehade’s commitment to increase transparency at ICANN.

Trademark protection stalemate follows ICANN 45

Kevin Murphy, October 30, 2012, Domain Policy

Trademark interests and new gTLD applicants are at odds about trademark protection — again — following the ICANN meeting in Toronto two weeks ago.

In a welcomed, not-before-time show of cooperation, the Intellectual Property Constituency and Business Constituency submitted to ICANN a bulleted list of requests for improved rights protection mechanisms.

The list is, for the most part, not particularly egregious — calling for a permanent Trademark Claims service and a Uniform Rapid Suspension service that meets its cost goals, for example.

But the New TLD Applicants Group (NTAG), an observer component of the Registries Constituency, has dismissed it out of hand, anyway, saying that the time for policy changes is over.

Here’s the IPC/BC list:

1. Extend Sunrise Launch Period from 30 to 60 days with a standardized process.

2. Extend the TMCH and Claims Notices for an indefinite period; ensure the process is easy to use, secure, and stable.

3. Complete the URS as a low cost alternative and improve its usefulness – if necessary, ICANN could underwrite for an initial period.

4. Implement a mechanism for trademark owners to prevent second-level registration of their marks (exact matches, plus character strings previously determined to have been abusively registered or used) across all registries, upon payment of a reasonable fee, with appropriate safeguards for registrants with a legitimate right or interest.

5. Validate contact information for registrants in WHOIS.

6. All registrars active in new gTLD registrations must adhere to an amended RAA for all gTLD registrations they sponsor.

7. Enforce compliance of all registry commitments for Standard applications.

8. Expand TM Claims service to cover at least strings previously found to have been abusively registered or used.

Most of these requests are not entirely new, and some have been rejected by the ICANN policy-development process and its board of directors before.

The NTAG points out as much in a letter to ICANN management last week, which says that new gTLD applicants paid their application fees based on promises in the Applicant Guidebook, which should not be changed.

Many of the BC & IPC proposed policy changes have been considered and rejected in no fewer than four different processes and numerous prior Board decisions. Indeed, many go far beyond the recommendations of the IRT, which was comprised almost exclusively of trademark attorneys. These last-minute policy recommendations amount to just another bite of the same apple that already has been bitten down to its core.

The new gTLD policy development process is over. Applicants relied on the policies in the final Guidebook in making business decisions on whether to apply. At the time that ICANN accepted applications and fees from applicants, ICANN and applicants entered into binding agreements. ICANN should not change these agreements unilaterally without extraordinary reason and especially not when it would materially harm the counterparties to the agreements.

The Applicant Guidebook, as it happens, asks applicants to explicitly acknowledge that ICANN may make “reasonable
updates and changes” to the rules, even after the application has been submitted.

But if applicants reckon changes would create a “material hardship”, ICANN is obliged to “work with Applicant in good faith to attempt to make reasonable accommodations in order to mitigate any negative consequences”

Downtime emerges as key barrier to Trademark Clearinghouse changes

Kevin Murphy, October 10, 2012, Domain Services

The risk of embarrassing technical glitches is now the major stumbling block in discussions about the best way to deploy the forthcoming Trademark Clearinghouse for new gTLDs.

ICANN is worried about the “reputational implications” of the TMCH going offline if, as proposed by domain name registries, it is in the “critical path” of the live registration process.

The concerns emerged in a letter earlier this week, and were discussed during an ICANN conference call yesterday.

The TMCH is expected to be a big database of trademarks, used to support the Trademark Claims and Sunrise periods that new gTLD registries will have to offer.

The policy behind both rights protection mechanisms is settled (essentially), but the actual technical implementation is still open to question.

While ICANN and its two contractors — IBM and Deloitte — have been quietly working on their favored model for some months, the registries that will support most new gTLDs have their own model.

Neustar, ARI Registry Services, Verisign and Demand Media have proposed a TMCH design that they say would be less costly to registries (and therefore brand owners) as well as having certain security benefits.

The problem with the registry’s plan is that it calls for real-time interactions between registrars, registries and the TMCH during the Trademark Claims phase of new gTLD launches.

This would require the Clearinghouse to operate with 100% up-time, which makes ICANN very nervous. It said in its letter this week:

Though requirements for resiliency to guard against such failures will be in place, the risk and impact of a failure incident in a centralized live query system are significant and have an impact on the reputation and, therefore, the effectiveness of the rights protection mechanisms supported by the Trademark Clearinghouse. Such an event could have reputational implications for the Clearinghouse and the New gTLD Program.

If the Clearinghouse went down, the argument goes, it would prevent domain names being registered in new gTLDs.

This would look very bad for ICANN, which has already experienced a few embarrassing technical problems with the program. How its policies and processes perform with live gTLDs will be scrutinized intensely.

But the registries say they’ve mitigated the problem as much as they can in their centralized model.

“It only puts the Trademark Clearinghouse in the critical path for registration for a limited number of registrations,” Neustar vice president Jeff Neuman said on yesterday’s call.

“In our model if a domain name does not match a trademark in the Clearinghouse then the Clearinghouse never sees it, it doesn’t matter if the Clearinghouse is up or down,” he said.

The negative impact of downtime in this scenario is that registrars would not be able to show would-be registrants Trademark Claims notices. But it would not necessarily enable cybersquatting.

Neuman further argued that the TMCH should be covered by the same kinds of service level agreements and data escrow requirements as contracted gTLD registries, minimizing the risk of downtime.

The second major hurdle to the implementation talks is the relative lack to date of input from brand owners.

The intellectual property community has previously expressed reservations about any TMCH model that would enable data mining by bad actors or opportunistic registrars and registries.

Yes, it’s a data privacy issue. Brand owners are worried that the contents of the Clearinghouse could be used by competitors to find holes in their trademark protection strategies, or by scammers.

While yesterday’s call had more input from the trademark community, the real work will come next Wednesday during a session at ICANN 45 in Toronto.

Strickling urges ICANN to bolster trademark protection for all gTLDs

Kevin Murphy, October 5, 2012, Domain Policy

US Department of Commerce assistant secretary Larry Strickling has called on ICANN to create more trademark protection mechanisms across new and existing gTLDs.

In a letter to ICANN yesterday, Strickling, head of the National Telecommunications and Information Administration, also expressed concerned about the slow progress on implementing the Uniform Rapid Suspension and Trademark Clearinghouse systems.

The URS has run into a problem because no provider ICANN has approached to date wants to run it for the $300 to $500 filing fee.

Meanwhile, the way ICANN plans to implement the Clearinghouse has been hit by criticism from registries, registrars and new gTLD applicants, many of which believe it is too inflexible.

Strickling told ICANN that “it is imperative that all fees associated with the URS remain low”, and suggested that cost savings could be achieved through integration with the Clearinghouse.

But he also called for stronger trademark protections in general, above and beyond what the ICANN community has already decided to implement.

Industry stakeholders have presented a variety of suggestions to reduce the cost of defensive registrations (e.g. trademark blocking mechanisms) and others have suggested enhanced safeguards for new gTLDs targeted at creative sectors.

While not taking a position in support of any specific proposal at this time, NTIA does believes that ICANN should continue and open and transparent dialogue between all actors in order to find solutions to these issues which have come into clearer focus since the release of the 1,930 applications this past June.

The letter was sent due to NTIA’s meeting with the 30-odd so-called “brand summit” companies — almost all household names — last month.

Among other things, they want the Clearinghouse to alert them whenever somebody registers a domain name containing their trademarks, instead of just exact matches.

The counter-argument from the domain industry is that such a proposal would create millions of false positives, due to dictionary words, run-ons and acronyms.

An example recently aired by attorney John Berryhill is the Yellow Pages trademark on “YP”, which would be triggered in the Clearinghouse whenever PayPal registered its brand as a domain name.

The brand summit companies also want a blanket trademark blocking system based on ICM Registry’s .xxx Sunrise B process, under which they pay a one-off fee to block their mark in a gTLD forever.

Opponents point out that such systems may be appropriate in single TLDs, but problems could arise when applied to all TLDs. Different companies have rights to the same strings in different fields.

Strickling appears to be aware of the problems that could be caused if the trademark community gets everything it wants. In the letter, he urges mutual understanding, writing:

Whatever process ICANN follows, trademark holders should provide clear, fact-based descriptions of the challenges they encounter in the global DNS and registries and registrars should clarify issues relating to the technical feasibility and costs of implementing any additional protections.

It’s a nice idea, but attempts to reach a sane solution have so far been unsuccessful.

Melbourne IT’s HARM proposal, which would give special rights to particularly vulnerable brands, was shot down by trademark owners as too limited during a meeting in Washington DC last month.

IP interests should join the Trademark Clearinghouse meeting on Tuesday

Kevin Murphy, October 5, 2012, Domain Policy

ICANN is to hold a webcast and teleconference next week to discuss alternative models for the new gTLDs Trademark Clearinghouse.

It will be the last time the community gets to discuss the issue before ICANN 45 kicks off in Toronto next weekend.

Neustar, ARI Registry Services, Verisign and Demand Media have jointly proposed two models for the mandatory new gTLD Sunrise period and Trademark Claims service that differ from ICANN’s.

While the proposals are enjoying general murmurs of support from the domain name industry side of the community, the trademark lobby has yet to have any substantial presence in the talks.

Most of the discussions to date have been hindered by this lack of input, and by a frustrating lack of hard feedback from ICANN and its two contractors, IBM and Deloitte.

Tuesday’s meeting might be a good opportunity for members of the Business Constituency and IP Constituency to brush up on the issues before Toronto.

The meeting will start at 9am US Eastern time, according to Neustar vice president Jeff Neuman, who provided the following information:

The documents are posted at:

http://newgtlds.icann.org/en/about/trademark-clearinghouse/sunrise-model-26sep12-en.pdf
http://newgtlds.icann.org/en/about/trademark-clearinghouse/claims-model-26sep12-en.pdf
http://newgtlds.icann.org/en/about/trademark-clearinghouse/model-issues-26sep12-en.pdf

The call-in information is:

Conference ID: 93759
Dial-in numbers for each country: http://www.adigo.com/icann/

Adobe Connect Room at: http://icann.adobeconnect.com/tmch/

Tonkin says better new gTLD trademark protections could come in the first round

Kevin Murphy, September 24, 2012, Domain Policy

Groups pushing for stronger new gTLD trademark protection mechanisms could get some of their wishes if they present a unified, coherent position to ICANN.

That’s according to Melbourne IT chief strategy officer and ICANN vice chairman Bruce Tonkin, speaking to DI today about the company’s trademarks summit in Washington DC last week.

Tonkin said that the event identified five rough areas of consensus about changes to rights protection mechanisms, at least two of which could be made before new gTLDs start to go live (which he expects to happen in the fourth quarter of 2013).

The Business Constituency, IP Constituency and so-called “brand summit” are now talking about their areas of common ground and are expected to continue the conversation at the ICANN meeting in Toronto next month.

One area of apparent agreement is an extension to the Trademark Claims service – which alerts trademark owners when somebody registers a domain matching their mark – beyond the 60 days mandated by the Applicant Guidebook.

Trademark interests want the service made permanent, because cybersquatters don’t suddenly stop registering infringing domain names 60 days after a TLD hits general availability.

ICANN has resisted this change, as CEO Fadi Chehade explained last week, largely because several companies already offer commercial trademark watch services.

Many registries and registrars are also against such a move due to the potential cost considerations.

However, Tonkin does not appear to be convinced by either argument.

“Even though a single gTLD might be for 60 days, gTLDs will launch at a range of different times over a number of years. Registries and registrars will have to support that process over a couple of years,” he said. “The cost to industry to extend it over 60 days isn’t that high.”

While supporting the extension may seem like an own goal for Melbourne IT – one of the companies already selling brand monitoring services – Tonkin is not too concerned about losing business.

The value of such services is in the added intelligence, such as monitoring the usage of infringing domains and recommending recovery strategies, he said, not just supplying lists of domains.

“Just that raw data isn’t especially beneficial,” he said.

There’s also no service on the market today that, like Trademark Claims, alerts registrants about third-party trademark rights at the point of registration, Tonkin noted.

Extending Trademark Claims could be seen as a matter of implementation, rather than policy, and may be one of the easiest goals for the trademark community to achieve.

“With enough community support, GNSO advice or ALAC advice could be presented to the board, which could make changes to the Applicant Guidebook,” Tonkin said.

“But I think the board would be reluctant to do that unless it saw very clear support from the community,” he added.

A faster, cheaper Uniform Rapid Suspension system is something that could also be made to happen via “implementation” tweaks, he indicated.

Trademark owners are looking for URS to be priced in the $300-$500 range, which WIPO and the National Arbitration Forum don’t think is feasible the way it is currently structured.

ICANN plans to issue a Request For Proposals soon, according to chief of strategy Kurt Pritz, in order to see if any other provider can do it more cheaply, however.

Another request from trademark holders, to do registrant identity checking — such as email authentication — could be handled via the ongoing Registrar Accreditation Agreement talks, Tonkin suggest.

But other emerging consensus areas would be more suited to a full GNSO Policy Development Process, he said.

The IP community wants the Trademark Clearinghouse to include not only exact matches of their trademarks, but also mark+keyword records (such as googlesearch.tld or paypalpayments.tld).

While there’s agreement in principle among these constituencies, there are still some differences in the details, however.

Some say that the keywords should be limited to words included in the trademark registration, while others believe that mark+keywords won in UDRP cases should be included.

If the former approach is used, domains such as paypal-support.tld, to borrow the example repeatedly used at last week’s summit, would probably not be protected.

Tonkin said that last week’s summit seemed to produce agreement that an algorithmic approach would be too complex, and would generate far to many false positives, to be effective.

A PDP would also be likely be required to find agreement on a mandatory “blocking” system, along the lines of what ICM Registry created for its Sunrise B, Tonkin said.

The problem with PDPs is that they take a long time, and it’s very unlikely that they could produce results in time for the first new gTLD launches.

Tonkin, however, suggested that moving forward with a PDP would create a strong incentive for new gTLD registries to create and adhere to voluntary best practices.

He pointed out that many applicants plan to bring in stronger rights protection mechanisms than ICANN requires already.

While Tonkin is vice chairman of ICANN’s board, he’s not involved in any new gTLD decisions or discussions due to his conflict of interest as a senior executive at a major registrar.

New ICANN chief pours cold water on new gTLD trademark protection demands

Kevin Murphy, September 20, 2012, Domain Policy

Some of the enhanced trademark protection mechanisms being discussed currently by the IP lobby seem unlikely to be adopted by ICANN any time soon, if a response to Congress from new CEO Fadi Chehadé is any guide.

In a letter published tonight, Chehadé appears to rule out both the inclusion of ‘brand+keyword’ records in the Trademark Clearinghouse and an extension of the Trademark Claims service beyond 60 days.

These are two of the common demands to emerge recently from ICANN’s Business Consituency, Intellectual Property Constituency, and the so-called “brand summit” proposal.

The Chehadé letter was sent yesterday to the chairs and ranking members of the Judiciary Committees of both the House and Senate, in response to their August 7 letter.

On extending the Trademark Claims service — which alerts trademark owners when somebody registers a domain exactly matching their mark — beyond the current 60 days, he wrote:

For the first round of new gTLDs, ICANN is not in a position to unilaterally require today an extension of the 60-day minimum length of the trademark claims service. The 60-day period was reached through a multi-year, extensive process with the ICANN community. One reason for this is that there are existing IP Watch services that address this needs. Those community members that designed the Trademark Claims process were cognizant of existing protections and sought to fill gaps, not replace existing services and business models.

While this obviously does not rule out an extension of Trademark Claims, it’s pretty clear from the letter that ICANN has no plans to do so without some form of community consent.

On the matter of brand+keyword protections, seen by the trademark community as a crucial component of a strong anti-cybersquatting regime, Chehadé wrote:

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.

He goes on to say that providing enhanced rights protection mechanisms is optional for new gTLD registries and may be one way that they can competitively differentiate themselves.

Indeed, large applicants such as Donuts, Uniregistry and Google say they will offer RPMs that go above and beyond what is required by ICANN.

Extended trademark claims and the brand+keyword protections are two of the changes to the current proposed mesh of mechanisms that the trademark community has found common ground on recently.

At the Melbourne IT trademark summit in Washington DC earlier this week, these two areas were among those that appeared to have the most consensus.

However, applicants for mass-market gTLDs are fervently opposed to changes being made to the Applicant Guidebook at this late stage.

Jon Nevett, co-founder of Donuts, said at the Melbourne IT event that “the Applicant Guidebook at this point should be deemed closed”.

He pointed out that, having paid ICANN about $350 million in application fees, applicants should be considered contracted parties and have their expectations respected.

Registries propose PKI-based new gTLD sunrises

Kevin Murphy, September 12, 2012, Domain Tech

Neustar and ARI Registry Services have come up with an alternative to ICANN’s proposed new gTLDs sunrise period process, based on a secure Public Key Infrastructure.

The concept was outlined in a draft paper published today, following an intensive two-day tête-à-tête between domain companies and Trademark Clearinghouse providers IBM and Deloitte last month.

It’s presented as an alternative to the implementation model proposed by ICANN, which would use unique codes and was criticized for being inflexible to the needs of new gTLD registries.

The PKI-based alternative from Neustar and ARI would remove some of the cost and complexity for registries, but may create additional file-management headaches for trademark owners.

Under the ICANN model, which IBM and Deloitte are already developing, each trademark owner would receive a unique code for each of their registered trademarks and each registry would be given the list of codes.

If a trademark owner wanted a Sunrise registration, it would submit the relevant code to their chosen registrar, which would forward it to the registry for validation against the list.

One of the drawbacks of this method is that registries don’t get to see any of the underlying trademark data, making it difficult to restrict Sunrise registrations to certain geographic regions or certain classes of trademark.

If, for example, .london wanted to restrict Sunrise eligibility to UK-registered trademarks, it would have no easy way of doing so using the proposed ICANN model.

But IP interests participating in the development of the Trademark Clearinghouse have been adamant that they don’t want registries and registrars getting bulk access to their trademark data.

They’re worried about creating new classes of scams and have competitive concerns about revealing their portfolio of trademarks.

Frankly, they don’t trust registries/rars not to misuse the data.

(The irony that some of the fiercest advocates of Whois accuracy are so concerned about corporate privacy has not been lost on many participants in the TMCH implementation process.)

The newly proposed PKI model would also protect trademark owners’ privacy, albeit to a lesser extent, while giving registries visibility into the underlying trademark data.

The PKI system is rather like SSL. It used public/private key pairs to digitally sign and verify trademark data.

Companies would submit trademark data to the Clearinghouse, which would validate it. The TMCH would then sign the data with its private key and send it back to the trademark owner.

If a company wished to participate in a Sunrise, it would have to upload the signed data — most likely, a file — to its registrar. The registrar or registry could then verify the signature using the TMCH’s public key.

Because the data would be signed, but not encrypted, registrars/ries would be able to check that the trademark is valid and also get to see the trademark data itself.

This may not present a privacy concern for trademark owners because their data is only exposed to registries and registrars for the marks they plan to register as domains, rather than in bulk.

Registries would be able to make sure the trademark fits within their Sunrise eligibility policy, and would be able to include some trademark data in the Whois, if that’s part of their model.

It would require more file management work by trademark owners, but it would not require a unique code for each gTLD that they plan to defensively register in.

The Neustar/ARI proposal suggests that brand-protection registrars may be able to streamline this for their clients by enabling the bulk upload of trademark Zip files.

The overall PKI concept strikes me as more elegant than the ICANN model, particularly because it’s real-time rather than using batch downloads, and it does not require the TMCH to have 100% availability.

ICANN is understandably worried that about the potentially disastrous consequences for the new gTLD program if it creates a TMCH that sits in the critical registration path and it goes down.

The PKI proposal for Sunrise avoids this problem, as registries and registrars only need a stored copy of the TMCH’s public key in order to do real-time validation.

Using PKI for the Trademark Claims service — the second obligatory rights protection mechanism for new gTLD launches — is a much trickier problem if ICANN is to stick to its design goals, however.

ARI and Neustar plan to publish their Trademark Claims proposal later this week. For now, you can read the Sunrise proposal in PDF format here.