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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.

Trademark Clearinghouse fees to be capped at $150

Kevin Murphy, November 27, 2012, Domain Policy

Submitting your trademarks to ICANN’s forthcoming Trademark Clearinghouse will cost a maximum of $150 per mark, according to ICANN CEO Fadi Chehade.

In a new blog post, Chehade provides an update to its contract talks with IBM, which will provide the Clearinghouse back-end, and Deloitte, which will be the first submission agent.

It’s shaping up to mimic the registry-registrar model, mapped to the trademark world, and Chehade has confirmed that Deloitte will most likely have competition at the ‘registrar’ level:

Deloitte’s validation services are to be non-exclusive. ICANN may add additional validators after a threshold of minimum stability is met.

The fee for Deloitte to validate trademarks for inclusion in the Clearinghouse will be capped at $150, Chehade said, with discounts for multiple trademarks and multi-year registrations.

IBM will charge Deloitte and gTLD registries for database access on a per-API-call basis, but prices there have not yet been disclosed.

Chehade also provided an update on the so-called “straw man” solution to the trademark community’s unhappiness with the current strength of new gTLD rights protection mechanisms.

For the most part, the update is merely a procedural defense of the changes that ICANN wants to make to the Sunrise and Trademark Claims processes, such as the creation of a “Claims 2” service.

The argument is, essentially: “This isn’t policy, it’s implementation.”

ICANN “policies” have to go through community processes before becoming law, whereas “implementation” is somewhat more flexible. Things are often classified as implementation when there are pressing deadlines.

The one change identified by Chehade as possibly needing community work is the extension of Trademark Claims from trademarks only to trademark+keyword or typo registrations.

He said he plans to publish the full straw man model, which has been developed behind closed doors with selected members of the GNSO, later this week.