Donuts has confirmed that it is to allow trademark owners to participate in its new gTLD Sunrise periods even if their marks appear on name collisions block-lists.
The decision means that companies will be able to choose whether to grab names matching their marks during Sunrise, or take the risk that they will be released at a later date.
Donuts, like all gTLD registries, has been given block-lists for each of its TLDs. The idea is to avoid collisions with names already in use on private name-spaces behind corporate firewalls.
Lots of these blocked names match or contain well-known trademarks.
(Trademark owners can use the DI PRO collisions search engine to figure out which gTLDs have been asked to block their marks.)
While this appears at first glance to be good news for mark owners that just want their marks blocked in as many TLDs as possible, it also poses potential risks.
Blocked names are not likely to be blocked until after the first wave of Sunrise periods are over, and ICANN’s unblocking process has not yet been written.
For a company that wants to register its brand in a new gTLD, but is on a block-list, that could cause problems.
By allowing companies to participate in Sunrise regardless, Donuts is giving them a way to mitigate the risk of somebody else grabbing their brands in future.
Donuts does not plan to allow any of these names to be activated in the DNS until the ICANN collisions mitigation plan has been finalized, however.
So companies could find themselves paying for Sunrise names but unable to use them until some unspecified future date — if at all.
.bar, .pub, .fish, .actor, .caravan, .saarland, .yokohama, .ren, .eus and .рус all have new gTLD contracts with ICANN as of yesterday.
It’s an eclectic batch of TLDs. Unusually, only one belongs to Donuts.
Of note is .caravan, which on the face of it looks like an English-language generic, but which is actually a closed, single-registrant dot-brand.
While “caravan” is an English dictionary word in the UK and Australasia, in the US it’s a 50-year-old trademark belonging to Illinois-based applicant Caravan International.
The Governmental Advisory Committee never flagged up .caravan as a “closed generic” in its Beijing Communique, so ICANN never questioned how it would be used.
However, the application states that the company plans “to reserve all names within the TLD to itself”.
What we seem to have here is a case of a dictionary word in one part of the world being captured by a single-registrant applicant due to a trademark elsewhere.
Another notable new Registry Agreement signatory is Punto 2012, which has obtained a contract for .bar.
The gTLD was originally contested, but Demand Media’s United TLD withdrew following an RFP held by the government of Montenegro, which had an effective veto over the string “Bar” due to a match with the protected name of one of its administrative regions.
I gather Montenegro will be paid in some way from the .bar registry pot.
There are also a few new geographic/cultural registries this week: .eus for the Basque people of Spain, .yokohama for a Japanese city, .saarland for a German state and the Cyrillic IDN .рус for a subset of the Russian people.
The only .brand is .ren, for the Chinese social network Renren.
The remainder are English-language generics.
The Trademark Clearinghouse is to give the intellectual property lobby something that it’s been crying out for for years — an indefinite extension of parts of the Trademark Claims service.
And it’s going to be free.
Trademark Claims is a mandatory service for all new gTLD operators, sending pre-registration warnings to registrants and post-registration alerts to mark owners whenever a domain matching a trademark is registered.
But it only runs for 90 days, per the ICANN new gTLD contracts, which TMCH project director Jan Corstens said is IP owners’ “number one complaint” about the system.
So the TMCH is going to extend the post-registration alerts half of the service indefinitely.
When the first new gTLDs officially end their Claims periods next year, the TMCH will continue to send out alerts to mark owners (or, in 90% of cases, their registrar “agents”) when matching domains are registered.
Would-be registrants will only receive their pre-registration warnings for the original 90-day period.
Corstens said that the pre-registration side of Claims would only be possible with the cooperation of registries and registrars, and that there’s a lot of reluctance to help out.
“A lot of them are not really interested in doing that,” he said. “I understand it takes work, and I understand they think it could demotivate potential registrants.”
Trademark owners that have directly registered with the Clearinghouse, rather than going through an agent, will get the extended service for no added charge.
However, Corstens made it clear that the TMCH is not trying to compete with registrars — such as MarkMonitor and Melbourne IT — that already offer zone file monitoring services to trademark owners.
“We know the market exists,” he said. “It’s not our intention to become a monopoly. We will deliver it to them, of course, and assume they can integrate with it.”
Agents will be able to plug the service into their existing products if they wish, he said.
There are a few initial limitations with the new TMCH service such that its registrar agents may not find it particularly labor-saving.
First, only domains that exactly match labels in the Clearinghouse will generate alerts.
By contrast, brand-monitoring registrars typically generate alerts when the trademark is a substring of the domain. To carry on doing this they’ll need to carry on monitoring zone files anyway.
Second, the TMCH service only currently covers new gTLDs applied for in the 2012 round. It doesn’t cover .com, for example, or any other legacy gTLD.
Corstens said both of these limitations may be addressed in future releases. The first Trademark Claims period isn’t due to end until March, so there’s time to make changes, he said.
He added that he hopes the extension of Claims will lead to an uptick in the the number of trademarks being registered in the TMCH. Currently there are about 20,000.
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.