Latest news of the domain name industry

Recent Posts

Businesses may call for more new gTLD trademark protections

Kevin Murphy, December 31, 2011, Domain Policy

It’s open season on ICANN at the moment, and as the number of letters opposing the new gTLD program flittering between Washington DC and Marina del Rey becomes confusingly voluminous many groups think they’ve found another opportunity to demand last-minute changes.

ICANN’s Business Constituency is now considering making several recommendations for “critical improvements” to protect trademark holders in the new gTLD universe.

While the recommendations are still under discussion, they could include adding the option to transfer a domain name to a brand owner after a successful Uniform Rapid Suspension complaint.

This would prove unpopular among domain investors and others as it would increase the likelihood of the untested URS being used as a replacement for the already controversial UDRP, potentially increasing the risk of reverse domain name hijacking.

The BC is also discussing whether to ask for a “permanent registry block” feature to be added the forthcoming Trademark Clearinghouse, enabling brand owners to block their trademarks from all new gTLDs for a one-time fee in much the same way as ICM Registry enabled in the .xxx sunrise.

The Coalition Against Domain Name Abuse made a similar request to ICANN last week.

The idea is unlikely to find favor because it would essentially grant trademark owners exclusivity over strings, a right not usually given to them by trademark law.

Other BC discussion topics include making the Trademark Clearinghouse permanent (instead of just running for the first 60 days of each new gTLD) and putting a firm date on the opening of the second-round application window, a popular request from brand owners.

Much like 13th-hour requests originating in the At-Large Advisory Committee, the BC’s position is likely to be substantially revised before it is submitted to ICANN officially.

While ICANN chairman Steve Crocker told .nxt this week that there are no plans to delay or rate-limit the new gTLD program, it’s less clear whether the Applicant Guidebook is still open for the kinds of substantial amendments now being discussed by the business community.

But my hunch is that, regardless of the political pressure being brought to bear on ICANN in the US, the new gTLD program is going to launch on January 12 in more or less its current form.

ICANN hunts for anti-cybersquatting database provider

Kevin Murphy, October 10, 2011, Domain Policy

ICANN is in the process of looking for an operator for the Trademark Clearinghouse that will play a crucial brand protection role in new top-level domains.

An RFI published last week says that ICANN is looking for an exclusive contractor, but that it may consider splitting the deal between two companies — one to provide trademark validation services and the other to manage the database.

The TMCH is basically a big database of validated trademarks that registrars/registries will have to integrate with. It will be an integral part of any new gTLD launch.

Registries are obliged by ICANN rules to hold a sunrise period and a Trademark Claims service when they go live, both of which leverage the clearinghouse’s services.

Rather than having to submit proof of trademark rights to each gTLD operator, brand owners will only have to be validated by the TMCH in order to be pre-validated by all gTLDs.

I estimate that the contract is worth a few million dollars a year, minimum.

If the ongoing .xxx sunrise period is any guide, we might be looking at a database of some 30,000 to 40,000 trademark registrations in the first year of the TMCH.

One potential TMCH provider currently charges $100 for the initial first-year validation and a recurring $70 for re-validation in subsequent years.

ICANN has not ruled out the successful TMCH provider selling add-on services too.

But the organization also seems to be at pains to ensure that the clearinghouse is not seen as another gouge on the trademark industry.

The RFI contains questions such as: “How can it be assured that you will not maximize your registrations at the expense of security, quality, and technical and operational excellence?”

The two providers that immediately spring to mind as RFI respondents are IProta and the Clearinghouse for Intellectual Property (CHIP).

Belgium-based CHIP arguably has the most institutional experience. It’s handled sunrise periods for Somalia’s .so, the .asia IDN sunrise, a few pseudo-gTLD initiatives from the likes of CentralNIC (de.com, us.org, etc), and is signed up to do the same for .sx.

Its chief architect, Bart Lieben of the law firm Crowell & Moring, is also well-known in the industry for his work on several sunrise period policies.

IProta is a newer company, founded in London this year by Jonathan Robinson, an industry veteran best known for co-founding corporate domain registrar Group NBT.

The company is currently managing the .xxx sunrise period, which is believed to be the highest-volume launch since .eu in late 2005.

“IPRota is very well positioned on the basis of our recent and past experience so I think we almost certainly will go ahead and respond,” Robinson confirmed to DI.

Domain name registries and registrars could conceivably also apply, based on their experience handling high-volume transactional databases and their familiarity with the EPP protocol.

ICANN sees the potential for conflicts of interest — its RFI anticipates that any already-contracted party applying to run the TMCH will have to impose a Chinese wall to reduce that risk.

The RFI is open for responses until November 25. ICANN intends to name its selected provider February 14, a month after it starts accepting new gTLD applications.

This is another reason, in my view, why submitting an application in January may not be the smartest move in the world.