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ICANN may have got lucky with a URS vendor

Kevin Murphy, November 25, 2012, Domain Policy

ICANN may have found a vendor willing to provide Uniform Rapid Suspension services for new gTLDs at $500 or less per case, without having to rewrite the policy to do so.

Last month, Olof Nordling, director of services relations at ICANN, gave the GNSO Council a heads-up that the URS policy may have to be tweaked if ICANN were to hit its fee targets.

But last week, following the receipt of several responses to a URS vendor Request For Information, Nordling seems to have retracted the request.

In a message to Council chair Jonathan Robinson, he wrote:

The deadline for responses to the URS RFI has passed and I’m happy to inform you that we have received several responses which we are now evaluating. Moreover, my first impression is that the situation looks quite promising, both in terms of adherence to the URS text and regarding the target fee. This also means that there is less of an urgency than I previously thought to convene a drafting team (and I’m glad to have been proven wrong in that regard!). There may still be details where such a drafting team can provide useful guidance and I will get back to you with further updates on this and other URS matters as we advance with the evaluations.

The target fee for URS has always been $300 to $500 per case, between a fifth and a third of the fee UDRP providers charge.

Following an initial, private consultation with UDRP providers WIPO and the the National Arbitration Forum, ICANN concluded that that it would miss that target unless the URS was simplified.

But some GNSO members called for a formal, open RFP, in order to figure out just how good a price vendors were willing to offer when they were faced with actual competition.

It seems to have worked.

During a session on URS at the Toronto meeting last month, incumbents WIPO and NAF were joined by a new would-be arbitration forum going by the name of Intersponsive.

Represented by IP lawyers Paul McGrady and Brad Bertoglio, the new company claimed it would be able to hit the price target due to software and process efficiencies.

NAF also said it would be able to hit targets for most URS cases, but pointed out that the poorly-described policy would create complex edge cases that would be more expensive to handle.

WIPO, for its part, said a cheaper URS would only be possible if registrants automatically lost the cases if they failed to respond to complaints.

This angered big domainers represented by the Internet Commerce Association and free speech advocates in the GNSO, who feared a simpler URS meant fewer registrant rights.

It’s not yet known which vendors are in with a shot of winning the URS contract, but if ICANN has found a reasonably priced provider, that would be pretty good news for registrants and IP owners.

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.

ICANN publishes RFI for URS provider

Kevin Murphy, September 25, 2012, Domain Policy

ICANN has issued an open call for dispute resolution providers interested in running its Uniform Rapid Suspension system.

In a request for information published last night, ICANN says it expects to pick a provider or providers by February 28, 2013.

If you’re not already running a dispute resolution service at scale there seems to be little point in applying. The RFI states that respondents must, at a minimum:

Have a track record in competently handling clerical aspects of Alternative Dispute Resolution or UDRP proceedings

Have a team of globally diverse and highly qualified neutrals, with experience handling UDRP or similar complaints, to serve as panelists.

With that in mind, will the RFI help sort out the problems with the URS?

What ICANN needs right now is a provider happy to administer proceedings for $300 to $500 per case.

ICANN has already asked WIPO and the National Arbitration Forum for their pricing expectations and neither apparently thinks they can do it much cheaper than UDRP. Hence the RFI.

Could the Czech Arbitration Court be in with a shot?

CAC already has UDRP experience and a stable of trademark experts on hand, and some say its level of automation is superior to — and presumably more cost-efficient than — both WIPO and NAF.

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.

ICANN plans meeting on URS amid calls for RFP

Kevin Murphy, September 19, 2012, Domain Policy

ICANN wants to try to put the unresolved issues surrounding the Uniform Rapid Suspension system to bed and is planning a meeting in a couple of weeks time to solicit community input.

According to an email from chief of strategy Kurt Pritz to the GNSO Council and At-Large Advisory Committee, ICANN plans to hold a webinar, with a possible face-to-face option, in about two weeks.

The aim is to sort out the problems with URS, which was originally conceived as a faster, cheaper version of UDRP for clear-cut cases of cybersquatting that don’t require much thought to decide.

It’s currently neither fast enough for the trademark lobby’s liking, nor as cheap as ICANN had hoped.

ICANN had targeted a $300 to $500 fee to file URS complaints, but following conversations with the World Intellectual Property Organization and National Arbitration Forum it realized that the true cost was likely to be as much as triple that amount, more in line with UDRP fees.

The higher than expected costs are largely due to the additional registrant protections that were negotiated into the URS procedure over the last few years, which complicate matters.

At a session at the ICANN meeting in Prague this June, community members tried to figure out ways to make URS cheaper without compromising these protections.

Pritz’s email suggested that some of these ideas might work, but others might run counter to established policy.

Many parties on both side of the fence are coming to the realization that unless URS is in place, new gTLD registries that are contractually obliged to abide by it may not be able to launch.

Yesterday, at Melbourne IT’s summit on trademark protection in Washington DC, there were some calls for ICANN to just issue a request for proposals and see which provider offers the best price.

There are plenty of UDRP lawyers/panelists who believe URS cases can easily be handled in 15 minutes at $200, assuming most of the process is automated and the complaints are kept to a word limit.