It seems like it’s been an age since we last heard the intellectual property lobby pushing for stronger rights protection mechanisms in new gTLDs, but they’re back just in time for the first launches.
The Intellectual Property Owners Association has written to ICANN this week to warn about loopholes in the standard new gTLD Registry Agreement related to premium name reservations that the IPO said “will adversely affect trademark rights holders”.
The letter (pdf) makes reference to two specific parts of the contract.
Specification 5 enables registries to reserve up to 100 names “necessary for the operation or promotion of the TLD” in section 3.2 and an unlimited number of names in section 3.3.
Section 3.3 is vague enough that I’m aware of new gTLD applicants that still don’t know whether it allows them to reserve an unlimited number of “premium” names or not.
However, most new gTLD registries I’ve talked to appear to be convinced that it does. DotKiwi’s recently announced premium plan seems to be taking advantage of 3.3.
The IPO is worried that massive lists of premium names will wind up containing lots of strings matching trademarks, which will prevent mark holders from defensively registering during Sunrise.
Worse, the IPO said it could lead to registries milking trademark owners for huge fees to register their “premium” marks. It said:
such reservations would invite the abuse of protected marks. For instance, Registry Operators may reserve the marks of protected brands to leverage premium sales. Further, Registry Operators may use this ability to release names to market competitors of the brand owners.
The counter argument, of course, is that owners of spurious trademarks on generic terms could game Sunrise periods to get their hands of potentially valuable domain names (cf. the .eu sunrise)
The IPO wants ICANN to expand the Trademark Clearinghouse to send Trademark Claims notices to new gTLD registries when they reserve a name matching a listed trademark.
It also wants a new dispute procedure that mark owners could use to get names released from reserved status. It would be like UDRP, but modified to allow for registries to reserve dictionary words related to their gTLD strings, the IPO said.
If my sense of the mood of ICANN’s leadership during last month’s Buenos Aires meeting is anything to go by, I can’t see these last-minute requests for changes to RPMs getting much traction, but you never know.
Donuts today kicks off the Sunrise periods for its first seven new gTLDs, the first English-language strings to start their priority registration periods for trademark owners.
The big question for mark holders today is whether to participate in Sunrise, or whether Donuts’ proprietary Domain Protected Marks List is the more cost-efficient way to go.
Sunrise starts today and runs until January 24 for .bike, .clothing, .guru, .holdings, .plumbing, .singles and .ventures. Donuts is planning seven more for December 3.
These are “end-date” Sunrises, meaning that no domains are awarded to participants until the full 60-day period is over. It’s not first-come, first-served, in other words.
Where more than one application for any given domain is received, Donuts will hold an auction after Sunrise closes to decide who gets to register the name.
The primary requirement for participating in Sunrise is, per ICANN’s base rules, that the trademark has been submitted to and validated by the Trademark Clearinghouse.
Donuts is not enforcing additional eligibility rules.
The company has not published its wholesale Sunrise application fee, but registrars have revealed some details.
Com Laude said that the Donuts “Sunrise Participation Fee” is $80, which will be the same across all of its gTLDs. Registrars seem to be marking this up by about 50%.
Tucows, for example, is asking its OpenSRS resellers for $120 per name, with an additional first-year reg fee ranging between $20 and $45 depending on gTLD.
Lexsynergy, which yesterday reported on Twitter a spike in TMCH submissions ahead of today’s launch, is charging between £91 ($147) and £99 ($160) for the application and first year combined.
The question for Trademark Owners is whether they should participate in the alternative Domain Protected Marks List or not.
The DPML is likely to be much cheaper for companies that want to protect a lot of marks across a lot of Donuts gTLDs.
A five-year DPML fee can be around $3,000, which works out to $3 per domain per year if Donuts winds up with 200 gTLDs in its portfolio.
Companies will not be able to actually use the domains blocked by the DPML, however, so it only makes sense for a wholly defensive blocking strategy.
In addition, DPML does not prevent a eligible mark owner from registering a DPML domain during Sunrise.
A policy Donuts calls “DPML Override” means that if somebody else owns a matching trademark, in any jurisdiction, they’ll be able to get “your” domain even if you’ve paid for a DPML entry.
I should point out that Donuts is simply following ICANN rules here. There are few ways for new gTLD registries to make names ineligible for Sunrise within their contracts.
Trademark owners are therefore going to have to decide whether it’s worth the risk of sticking to a strictly DPML strategy, or whether it might make more sense to do Sunrise on their most mission-critical marks.
DotShabaka Registry was the first new gTLD operator to go to Sunrise, with شبكة., though the lack of Arabic strings in the TMCH means it’s largely an exercise in contractual compliance.
ICANN may have to decide which of its babies it loves the most — the GNSO or the GAC — after receiving conflicting marching orders on a controversial rights protection issue.
Essentially, the GAC has previously told ICANN to protect a bunch of acronyms representing international organizations — and ICANN did — but the GNSO today told ICANN to un-protect them.
The GNSO Council this afternoon passed a resolution to the effect that the acronyms of IGOs and international non-governmental organizations (INGOs) should not be blocked in new gTLDs.
This conflicts directly with the Governmental Advisory Committee’s longstanding advice, which states that IGOs should have their names and acronyms reserved in all new gTLDs.
The Council’s resolution was passed unanimously, enjoying the support of registries, registrars, non-commercial users, intellectual property interests… everyone.
It came at the end of a Policy Development Process that kicked off in 2011 after the GAC demanded that the International Olympic Committee and Red Cross/Red Crescent should have their names protected.
The PDP working group’s remit was later expanded to address new demands from the GAC, along with a UN-led coalition of IGOs, to also protect IGO and INGO names and acronyms.
The outcome of the PDP, which had most of its recommendations approved by the GNSO Council today, was to give the GAC most of what it wanted — but not everything.
The exact matches of the full IOC, RC/RC, IGO and INGO names should now become permanently ineligible for delegation as gTLDs. The same strings will also be eligible for the Trademark Claims service at the second level.
But, crucially, the GNSO Council has voted to not protect the acronyms of these organizations. Part of the lengthy resolution — apparently the longest the Council ever voted on — reads:
At the Top Level, Acronyms of the RCRC, IOC, IGOs and INGOs under consideration in this PDP shall not be considered as “Strings Ineligible for Delegation”; and
At the Second level, Acronyms of the RCRC, IOC, IGOs and INGO under consideration in this PDP shall not be withheld from registration. For the current round of New gTLDs, the temporary protections extended to the acronyms subject to this recommendation shall be removed from the Reserved Names List in Specification 5 of the New gTLD Registry Agreement.
The list of reserved names in Spec 5, which all new gTLD registries must block from launch, can be found here. The GNSO has basically told ICANN to remove the acronyms from it.
This means hundreds of strings like “who” and “idea” (which would have been reserved for the World Health Organization and the Institute for Development and Electoral Assistance respectively) should now become available to new gTLD registries to sell or otherwise allocate.
I say “should”, because the Council’s resolution still needs to be approved by the ICANN board before it becomes a full Consensus Policy, and to do so the board will have to reject (or reinterpret) the GAC’s advice.
The GAC, as of its last formal Communique, seemed to be of the opinion that it was going to receive all the protections that it asked for.
It has told ICANN for the last year that “IGOs are in an objectively different category to other rights holders” and that “their identifiers (both their names and their acronyms) need preventative protection”
It said in its advice from the Durban meeting (pdf) three months ago:
The GAC understands that the ICANN Board, further to its previous assurances, is prepared to fully implement GAC advice; an outstanding matter to be finalized is the practical and effective implementation of the permanent preventative protection of IGO acronyms at the second level.
The key word here seems to be “preventative”. Under the resolution passed by the GNSO Council today, IGO acronyms would be allowed to enter the Trademark Clearinghouse and participate in the Trademark Claims service, but Claims does not prevent anyone from registering a matching domain.
It’s looking like the ICANN board is going to have to make a call — does it accept the GAC advice, or does it accept the unanimous consensus position of the GNSO?
Given that much of ICANN 48 here in Buenos Aires this week has been a saccharine love-in for the “multistakeholder process”, it’s difficult to imagine a scenario in which the GNSO Council does not win out.
More than half of the world’s most-famous brand names already stand to benefit from blocks in new gTLDs, due to the name collisions policy introduced by ICANN recently.
That’s the preliminary conclusion of a quick analysis of the 37 block-lists already published.
Using Interbrand’s list of the top 100 most valuable brands, we find that only 32 do not appear anywhere — either as strings or substrings — on the collisions lists we have today.
Fifty-nine brands are to be blocked as exact matches in at least one new gTLD. Five brands are blocked exactly in 10 or more.
Brand owners blocked in collision lists may not have to fork out for as many defensive registrations, but may also face complications when registries finally start whittling down their lists.
We present the full table of results below, for which the following explanations might be needed:
- Brand/String — The brands have been normalized to ASCII strings, removing punctuation not compatible with the DNS protocol and converting accented characters to their unaccented equivalents (for example, “Nescafé” becomes “Nescafe”). For DI PRO subscribers, each string links to a search on the database for that string.
- Exact Matches — The number of gTLDs (currently out of 37) in which this exact-match brand will be blocked.
- Unique Strings — The number of strings containing this brand that appear on block-lists. In some cases this may provide misleading results due to the usual overkill you get when matching substrings. For example, two-character brands such as 3M and HP get a lot of hits, the vast majority of which do not appear to relate to the brand itself, whereas every hit for Google does in fact refer to the brand.
The numbers will of course grow rapidly as ICANN publishes more collisions lists.
If there’s sufficient interest from DI PRO subscribers in this breakdown being kept up to date on an ongoing basis, I’ll bolt it on to to the existing collisions database.
Facebook has become the first company to win a Uniform Rapid Suspension complaint.
The case, which dealt with the domain facebok.pw, took 37 days from start to finish.
This is what the suspended site now looks like:
The URS was designed for new gTLDs, but .PW Registry decided to adopt it too, to help it deal with some of the abuse it started to experience when it launched earlier this year.
Facebook was the first to file a complaint, on August 21. According to the decision, the case commenced about three weeks later, September 11, and was decided September 26.
I don’t know when the decision was published, but World Trademark Review appears to have been the first to spot it.
It was pretty much a slam-dunk, uncontroversial decision, as you might imagine given the domain. The standard is “clear and convincing evidence”, a heavier burden than UDRP.
The registrant did not respond to the complaint, but Facebook provided evidence showing he was a serial cybersquatter.
The decision was made by the National Arbitration Forum’s Darryl Wilson, who has over 100 UDRP cases under his belt. Here’s the meat of it:
IDENTICAL OR CONFUSINGLY SIMILAR
The only difference between the Domain Name, facebok.pw, and the Complainant’s FACEBOOK mark is the absence of one letter (“o”) in the Domain Name. In addition, it is well accepted that the top level domain is irrelevant in assessing identity or confusing similarity, thus the “.pw” is of no consequence here. The Examiner finds that the Domain Name is confusingly similar to Complainant’s FACEBOOK mark.
NO RIGHTS OR LEGITIMATE INTERESTS
To the best of the Complainant’s knowledge, the Respondent does not have any rights in the name FACEBOOK or “facebok” nor is the Respondent commonly known by either name. Complainant has not authorized Respondent’s use of its mark and has no affiliation with Respondent. The Domain Name points to a web page listing links for popular search topics which Respondent appears to use to generate click through fees for Respondent’s personal financial gain. Such use does not constitute a bona fide offering of goods or services and wrongfully misappropriates Complainant’s mark’s goodwill. The Examiner finds that the Respondent has established no rights or legitimate interests in the Domain Name.
BAD FAITH REGISTRATION AND USE
The Domain Name was registered and is being used in bad faith.
The Domain Name was registered on or about March 26, 2013, nine years after the Complainant’s FACEBOOK marks were first used and began gaining global notoriety.
The Examiner finds that the Respondent has engaged in a pattern of illegitimate domain name registrations (See Complainant’s exhibit URS Site Screenshot) whereby Respondent has either altered letters in, or added new letters to, well-known trademarks. Such behavior supports a conclusion of Respondent’s bad faith registration and use. Furthermore, the Complainant submits that the Respondent is using the Domain Name in order to attract for commercial gain Internet users to its parking website by creating a likelihood of confusion as to the source, sponsorship or affiliation of the website. The Examiner finds such behavior to further evidence Respondent’s bad faith registration and use.
The only remedy for URS is suspension of the domain. According to Whois, it still belongs to the respondent.
Read the decision in full here.