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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.