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ICANN 45: Super-Fadi targets Trademark Clearinghouse and RAA talks

Kevin Murphy, October 22, 2012, Domain Policy

There can be no denying that ICANN’s new CEO was well received at the Toronto meeting last week.

From his opening speech, a sleeves-rolled-up address that laid out his management goals, and throughout the week, Fadi Chehadé managed to impress pretty much everybody I spoke to.

Now Chehadé has turned his attention to the formative Trademark Clearinghouse and the Registrar Accreditation Agreement talks, promising to bring the force of his personality to bear in both projects.

“I’m coming out of Toronto with two priorities for this year,” he said during an interview with ICANN’s media relations chief, Brad White, last Friday.

“The first one is obviously to get the Trademark Clearinghouse to work as best as possible, for all parties to agree we have a mechanism that can satisfy the interests of the parties.”

“The second one is the RAA,” he said. “Without question I’m going to be inserting myself personally into both these, including the RAA.”

These are both difficult problems.

Work on the TMCH hit a snag early last week when ICANN chief strategy officer Kurt Pritz told the GNSO Council that the “community consensus” implementation model proposed by registries presented a big problem.

The “live query model” proposed for the Trademark Claims service, which would require the TMCH to sit in the live domain registration path, should be taken “off the table”, he said.

ICANN is/was worried that putting a live database of trademark checks into the registration model that has functioned fairly well for the last decade is a big risk.

The TMCH would become a single point of failure for the whole new gTLD program and any unanticipated downtime, ICANN has indicated, would be hugely embarrassing for ICANN.

“I’m personally concerned that once you put the Clearinghouse in the path for that it’s very difficult to unring the bell, so I’d rather proceed in a way that doesn’t change that,” Pritz said.

His remarks, October 14, angered backers of the community model, who estimated that the live query model would only affect about 10% to 15% of attempted domain registrations.

“Taking it off the table is a complete mistake,” said Jeff Neuman of Neustar, one of the authors of the alternative “community” TMCH model.

“It is a proven fact that the model we have proposed is more secure and, we believe, actually looks out much more in favor of protecting trademark holders,” he said.

He noted that the community model was created in a “truly bottom-up” way — the way ICANN is supposed to function.

NetChoice’s Steve DelBianco, in a rare show of solidarity between the Business Constituency and the registries, spoke to support Neuman and the centralized community model.

“The BC really supports a centralized Trademark Clearinghouse model, and that could include live query,” DelBianco said. “I’m disturbed by the notion that an executive decision took it off the table.”

“My question is, was that the same executive decision that brought us the TAS and its glitches?” he added. “Was it the same executive decision process that gave us Digital Archery that couldn’t shoot straight?”

Pritz pointed out the logical flaw in DelBianco’s argument.

“The group that brought you TAS and Digital Archery… you want to put that in the critical path for domain names?” he said. “Our job here is to protect trademark rights, not change the way we register domain names.”

But Neuman and DelBianco’s dismay was short-lived. Within a couple of hours, in the same room, Chehadé had told the GNSO Council, in a roundabout sort of way, that the live query model was not dead.

Chehadé’s full remarks are missing from the official transcript (pdf), and what remains is attributed to GNSO Council chair Stephane Van Gelder, but I’ve taken a transcript from my own recording:

The very first week I was on the job, I was presented with a folder — a very nice little folder — and little yellow thing that said “Sign Here”.

So I looked at what I’m signing, as I normally do, and I saw that moving forward with a lot of activities related to the Trademark Clearinghouse as really what I’m being asked to move forward with.

And I’ll be frank with you, my first reaction was: do all the people who will be affected by this agreement… did we hear them all about this before we sign this? Are they all part of the decision-making that led us here?

And the answer was muddled, it was “Yes… and…”. I said: No, I want to make sure that we use the time we have in Toronto make sure we listen to everybody to make sure before I commit any party — any party — to anything, that this party is very much part of the process and part of the solution.

I know I wasn’t the only person in the room to wonder if the anecdote described an incident in which an ICANN executive attempted to pull a fast one on his new, green boss.

A day later, after private discussion with ICANN board and staff, supporters of the community TMCH model told me they were very encouraged that the live query model was still in play.

The problem they still face, however, is that the Intellectual Property Constituency — ostensibly representing the key customers of the TMCH — is publicly still on the fence about which model it prefers.

Without backing from the IPC, any TMCH implementation model would run the risk of appearing to serve contracted parties’ cost and risk requirements at the expense of brand owners.

Getting the IPC to at least take a view will likely be Chehadé’s first priority when it comes to the TMCH.

Finding common ground on the Registrar Accreditation Agreement could be an even more complex task.

While the bulk of the work — integrating requests from certain law enforcement agencies and the Governmental Advisory Committee into the contract — has been completed, Whois remains a challenge.

European registrars claim, in the light of correspondence from a EU privacy watchdogs, that implementing ICANN’s demanded Whois data re-verification and retention rules would make them break the law.

Registrars elsewhere in the world are less than impressed with ICANN’s proposed ‘opt-out’ solution, which would essentially create a two-tier RAA and may, they say, have some impact on competition.

Privacy advocates in Toronto told ICANN that if certain governments (largely, I suspect, the US) want their own local registrars to retain and re-verify Whois data, they should pass laws to that effect, rather than asking ICANN to enforce the rule globally.

The GAC told ICANN’s board of directors last Tuesday that the privacy letters emerging from the EU did not represent the views of the European Commission or the GAC, and nothing more was said on the matter.

How ICANN reacts to the European letters now seems to be rest with ICANN’s executive negotiating team.

While everyone at ICANN 45 seemed to be super-impressed by Chehadé’s competence and vision for sorting out ICANN, the other recurring meme is that actions speak louder than words.

During his first 40 days in the job he managed to persuade India into an about-face on its support for an intergovernmental replacement for ICANN, an impressive feat.

Can he chalk up more early wins by helping resolve the TMCH and RAA deadlocks?

“There’s frankly universal agreement that if I participate personally in these activities I would help these activities come to hopefully a reasonably conclusion that we can bank on,” he said in the White interview.

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.