That’s all folks, no more LRO news

The results of Legal Rights Objections against new gTLD applications are no longer news.
That’s the decision handed down by the editor here at DI’s Global World International Headquarters today.
“Hey, Keith,” she barked from her ermine-carpeted corner office. “This LRO stuff is getting a bit old, don’t you think?”
“My name’s Kevin,” I said.
“Whatever,” she said. “LRO is now dog-bites-man. I decree it thus. No more of it, understand? Write more about Go Daddy girls.”
She has a point (she’s a great editor and I love her dearly).
The Legal Rights Objection has, I think, said pretty much everything it’s going to say in this new gTLD application round. I’m feeling pretty confident we can predict that all outstanding LROs will fail.
This prediction is based largely on the fact that the 69 LROs filed in this round all pretty much fall into three categories.

• Front-running. These are the cases where the objector is an applicant that secured a trademark on its chosen gTLD string, usually with the dot, just in order to game the LRO process. These have all been rejected so far. I thought Constantine Roussos’ .music objection was the only one with a sliver of a chance; now that it’s been rejected I think the chances of any outstanding objections of this type prevailing are zero.
• Brand v Brand. The objector may or may not be an applicant too, but both it and the respondent both own legit trademarks on the string in question. WIPO’s LRO panelists have made it clear, most recently yesterday in Merck v Merck (pdf) and Merck v Merck (pdf), that having a famous brand does not give you the right to block somebody else from owning a matching famous brand as a gTLD.
• Generic trademarks. Cases where an owner of a legit brand that matches a dictionary word files an objection against an applicant for the same string that proposes to use it in its generic sense. See Express v Donuts, for example. Panelists have found that unless there’s some nefarious intent by the applicant, the mandatory second-level rights protection mechanisms new gTLD registries must abide by are sufficient to protect trademark rights. As I don’t believe any applicants have a nefarious intent, I don’t believe any of these LROs will succeed.

In short, the LRO may be one of many deterrents to top-level cybersquatting, but has proven itself an essentially useless cash sink if you want to prevent the use of a trademark at the top level.
The impact of this, I believe, will be to give new gTLD consultants another excellent reason to push defensive gTLD applications on big brands in future new gTLD rounds.
Whether it will inspire unsavory types to apply for generic terms in future, in order to extort money from matching brands, will depend to a large extent on whether applicants in this round wind up making lucrative deals with the brands they’re competing against.
In any event, it seems certain that the LRO-to-application ratio will be far lower in future rounds.
DI will of course continue to peruse each new LRO as it is published and will report on any genuinely interesting developments, but we will not cover each decision as a matter of course.
Decisions are published by WIPO daily here and email notifications are sent along with WIPO’s daily UDRP newsletter.
Information about Go Daddy girls can, from now on, be found here.

DotMusic loses LRO, and four other cases rejected

Constantine Roussos has lost his first Legal Rights Objection over the flagship .music gTLD.
The case, DotMusic v Charleston Road Registry (pdf) was actually thrown out on a technicality — DotMusic didn’t present any evidence to show that it was the owner of the trademarks in question.
But the WIPO panelist handling the case made it pretty clear that DotMusic wouldn’t have won on the merits anyway.
If any applicant can be said to have built a brand around a proposed generic-term gTLD, it’s Roussos. DotMusic has been promoting .music on social media an in the music industry for years.
The company also owns the string “music” in a number of second-tier TLDs such as .co, .biz and .fm.
It’s not a bogus, last-minute attempt to game the system, like the .home cases — filed using Roussos-acquired trademarks — that have been thrown out repeatedly over the last couple of weeks.
The panelist addressed this directly:

On the one hand, the Panel recognizes that there has been a real investment by the Objector and associated parties in the trademark registrations, domain name registrations, sponsorship and branding to create consumer recognition and goodwill entitled to protection. On the other hand, there is a circularity in the Objector’s position in that the rights upon which the Objector relies to defeat the application are to a certain extent conditional on the defeat of the Applicant and the Objector’s success in obtaining the <.music> gTLD string.

In other words, Catch-22.
The panelist decided that .music is generic, that Google’s proposed use of it is generic, and that obtaining a trademark on a gTLD should not be a legit way to exclude rival applicants for that gTLD.

One objective of the Objector has been to obtain precisely the type of competitive advantage (in this case in the application process for the <.music> gTLD string) that the doctrine of generic names is designed to prevent. However, as the Applicant proposes to use the <.music> gTLD string in a generic sense it is immune from this challenge.

On that basis, the LRO would have failed, had DotMusic managed to demonstrate standing to object in the first place.
Unfortunately, DotMusic didn’t present any evidence that it actually owned the trademarks in question, which were applied for by Roussos and assigned to his company CGR E-Commerce.
The objection failed on that basis.
Defender Security, which obtained trademarks on “.home” from Roussos, ran into the same problems proving ownership of the trademarks in its LROs on the .home gTLD.
Four other LROs were decided this week:
.mail (United States Postal Service v. GMO Registry)
The case (pdf) turned on whether USPS owns a trademark that exactly matches the applied-for string (it doesn’t) and whether the word “mail” should be considered generic (it is) rather than a source identifier (it isn’t).
It’s pretty much the same logic applied in the two previous .mail LROs.
.food (Scripps Networks Interactive v. Dot Food, LLC)
This is the first of two competitive LROs filed by Scripps — which runs TV stations including the Food Network — against its .food applicant rivals to be decided.
Scripps has a bunch of trademarks containing the word “food”, including a November 2011 registration in the US for “Food” alone, covering entertainment services.
The WIPO panelist found (pdf) that the trademark was legit, but decided that it was not enough to prevent Dot Food using the matching string as a gTLD.
The fact that rights protection mechanisms exist in the new gTLD program was key:

to the extent that registration and use of a particular second-level domain within the <.food> gTLD actually creates a likelihood of confusion, then Objector will have remedies available to it, including the established Uniform Domain Name Dispute Resolution Policy, the forthcoming Uniform Rapid Suspension System and relevant laws. The fact that such disputes at the second level may arise is inherent in ICANN’s new gTLD program and is not in the circumstances of this case sufficient to uphold the present legal rights objection.
Objector’s rights in the FOOD mark do not confer upon it the exclusive right to use of the word “food” in all circumstances, particularly where, as here, Applicant intends to use the <.food> gTLD in connection with the food industry. Such intended use of the word would appear to be only for its dictionary meaning and not because of Objector’s trademark rights.

.vip (i-Registry v. Charleston Road Registry)
It’s the second objection by .vip applicant to get thrown out. In this case the respondent was Google.
Like the first time, the WIPO panelist found that the i-Registry trademark had been obtained for the purposes of the new gTLD program and that Google’s use of it in its generic sense would not infringe its rights.
.cam (AC Webconnecting Holding v. Dot Agency)
The second and final LRO decision (pdf) in the .cam contention set.
AC Webconnecting, an operator of webcam-based porn sites, lost again on the grounds that it applied for its trademark just a month before ICANN opened up the new gTLD application window in January last year.
The company didn’t have time to, and produced no evidence to suggest that, it had used the trademark and built up goodwill around “.cam” in the normal course of business.
In other words, front-running doesn’t pay.

URS is live today as .pw voluntarily adopts it

Directi has become the first TLD registry to start complying with the Uniform Rapid Suspension process for cybersquatting complaints.
From today, all .pw domain name registrations will be subject to the policy, which enables trademark owners to have domains suspended more quickly and cheaply than with UDRP.
URS was designed, and is obligatory, for all new gTLDs, but Directi decided to adopt the policy along with UDRP voluntarily, to help mitigate abuse in the ccTLD namespace.
URS requirements for gTLD registries have not yet been finalized, but this is moot as they don’t apply to .pw anyway.
To date, only two UDRP complaints have been filed over .pw domains.
The National Arbitration Forum will be handling URS complaints. Instructions for filing can be found here.

Six more LROs kicked out, most for “front-running”

Six more new gTLD Legal Rights Objections, six more rejected objections.
The World Intellectual Property Organization is chewing through its caseload of LROs at a regular pace now, made all the more easier by the fact that a body of precedent is being accumulated.
Objections rejected in decisions published last week cover the gTLDs .home, .song, .yellowpages, .gmbh and .cam.
All but one were thrown out, with slightly different panelist reasoning, because they had engaged in some measure of “front-running” — applying for a trademark just in order to protect a gTLD application.
Here’s a quick summary of each decision, starting with what looks to be the most interesting:
.yellowpages (hibu (UK) v. Telstra)
Last week somebody asked me on Twitter which LROs I thought might actually succeed. I replied:

@ManagingIP Just based on the list of strings and objectors, only .delmonte, .merck and .yellowpages jump out at me.

— Kevin Murphy (@DomainIncite) July 23, 2013

Well, my initial hunch on .yellowpages was wrong, and I think I’m very likely to have been wrong about the other two also.
This case is interesting because it specifically addresses the issue of two matching trademarks happily living side-by-side in the trademark world but clashing horribly in the unique gTLD space.
The objector in this case, hibu, publishes the Yellow Pages phone book in the UK and has a big portfolio of trademarks and case law protecting its brand. If anyone has rights, it’s these guys.
But the “Yellow Pages” brand is used in several countries by several companies. In the US, there’s some case law suggesting that the term is now generic, but that’s not the case in the UK or Australia.
On the receiving end of the objection was the Australian telecoms firm Telstra, which is the publisher of the Aussie version of the Yellow Pages and, luckily for it, the only applicant for .yellowpages.
The British company argued that “no party should be entitled to register the Applied-for gTLD”, due to the potential for confusion between the same brand being owned by different companies in different countries.
The panel concluded that brands will clash in the new gTLD space, and that that’s okay:

It is inherent in the nature of the gTLD regime that those applicants who are granted gTLDs will have first-level power extending throughout the Internet and across jurisdictions. The prospect of coincidence of brand names and a likelihood of confusion exists.
…
The critical issue in this LRO proceeding is whether the Objector’s territorial rights in the term “YELLOW PAGES” (and the prospect of other non-objecting third parties’ territorial right) means that the applicant (or anyone else for that matter) should not be entitled to the Applied-for gTLD.

The panelist uses the eight-criteria test in the Applicant Guidebook to make his decision, but he chose to highlight two words:

the Panel finds that the Objector has failed to establish, as it alleges, that the potential use of the Applied-for gTLD by the applicant… unjustifiably impairs the distinctive character or the reputation of the objector’s mark… or creates an impermissible likelihood of confusion between the applied for gTLD and the Objector’s mark.

Because Telstra has rights to “Yellow Pages” too, and because it’s promising to respect trademark rights at the second level, the panelist concluded that its application should be allowed to proceed.
It’s the third instance of a clash between rights holders in the LRO process and the third time that the WIPO panelist has adopted a laissez faire approach to new gTLDs.
And as I’ve said twice before, if this type of decision becomes the norm — and I think it will — we’re likely to see many more defensive applications for brand names in future new gTLD rounds.
The LRO is not shaping up to be an alternative to applying for a gTLD as a means to defend a legitimate brand. Applying for a gTLD matching your trademark and then fighting through the application process may turn out to be the only way to make sure nobody else gets that gTLD.
.cam (AC Webconnecting Holding v. United TLD Holdco)
Both sides of this case are applicants for .cam. United TLD is a Demand Media subsidiary while AC Webconnecting is a Netherlands-based operator of several webcam-based porn sites.
Like so many other applicants, AC Webconnecting applied for its European trademark registration for “.cam” and a matching logo in December 2011, just before the ICANN application window opened.
The panelist decided that its trademark was acquired in a bona fide fashion, he also decided that the company had not had enough time to build up a “distinctive character” or “reputation” of its marks.
That meant the Demand Media application could not be said to take “unfair advantage” of the marks. The panelist wrote:

Given the relatively short existence of these trademarks, it is unlikely that either [trademark] has developed a reputation.
…
In the Panel’s opinion, replication of a trademark does not, of itself, amount to taking unfair advantage of the trademark – something more is required.
…
the Panel considers that this something more in the present context needs to be along the lines of an act that has a commercial effect on a trademark which is undertaken in bad faith – such as free riding on the goodwill of the trademark, for commercial benefit, in a manner that is contrary to honest commercial practices.

What we’re seeing here is another example of a trademark front-runner losing, and of a panelist indicating that applicants need some kind of bad faith in order to lose and LRO.
.home (Defender Security Company v. DotHome Inc.)
Kicked out for the same reasons as the other Defender objections to rival .home — it was a transparent gaming attempt based on a flimsy, recently acquired trademark. See here and here.
DotHome Inc is the subsidiary Directi/Radix is using to apply for .home.
The decision (pdf) goes into a bit more detail than the other .home decisions we’ve seen to date, including information about how much Defender paid to acquire its trademarks ($75,000) and how many domains its bogus Go Daddy reseller site has sold (three).
.home (Defender Security Company v. Baxter Pike)
Ditto. This time the applicant was a Donuts subsidiary.
.song (DotMusic Limited v. Amazon)
Like the failed .home objections, the .song objection was based on a trademark acquired tactically in late 2012 by Constantine Roussos, whose company, CGR E-Commerce, is applying for .music.
This objection failed (pdf) for the same reasons as the same company’s objection to Amazon’s .tunes application failed last week — a trademark for “.SONG” is simply too generic and descriptive to give DotMusic exclusive rights to the matching gTLD.
Roussos has also filed seven LROs against his competitors for .music, none of which have yet been decided.
.gmbh (TLDDOT GmbH v. InterNetWire Web-Development)
Both objector and respondent here are applicants for .gmbh, which indicates limited liability companies in German-speaking countries.
TLDDOT registered its European trademark in “.gmbh” a few years ago.
Despite the fact that it was obviously acquired purely in order to secure the matching gTLD, the panelist in this case ruled that it was bona fide.
Despite this, the panelist concluded that for InternetWire to operate .gmbh in the generic, dictionary-word sense outlined in its application would not infringe these trademark rights.

What some other bloggers said about .amazon

Whenever an ICANN decision intersects with the business interests of a well-known brand name, media coverage ensues, and last week’s Governmental Advisory Committee objection to .amazon was no exception.
While a scores of headlines were generated, there wasn’t a great deal of editorializing or analysis. Most bloggers outside of the domain industry seemed content to link to and summarize a Wall Street Journal report.
But a handful of bloggers also passed comment on the decision. Views were a diverse as you might expect. Here are a few selections:
Geoffrey Manne of Truth On The Market was not impressed with what the decision said about ICANN as a regulator. He wrote:

If Latin American governments are concerned with cultural and national identity protection, they should (not that I’m recommending this) focus their objections on Amazon.com. But the reality is that Amazon.com doesn’t compromise cultural identity, and neither would Amazon’s ownership of .AMAZON.

Brand Aide called Amazon a “brand bully” and recounted a client’s past experience:

For years now, Amazon’s attorneys would have one think the Amazon River never existed. A number of years ago, one of my firm’s clients was sued by Amazon over use of the “Amazon Networks” in a domain for computer services, a term our client innocently registered about the same time Amazon launched as a bookseller. Amazon falsely claimed in federal court our client was a domain cybersquatter. In fact, the homepage of our client’s first website featured an image of the Amazon River.

Hot Hardware empathized with the GAC:

These countries make a good point. It may seem obvious that Amazon.com would get a crack at .amazon, but many in the U.S. would be upset if, say, a German company laid claim to .grandcanyon or another important U.S. geological site.

Retail trade pub Storefront Talkback sided with Amazon:

what initially looked like just a very expensive way to acquire their own .brand names is now turning into a process that’s effectively stripping some chains of their brands.

Geek.com didn’t like .amazon as a string anyway:

I also think this decision is doing Amazon a favor. .amazon is a bit long for the end of a URL. The company would be better off using a shortened version such a .amzn, it’s quicker to type and looks better when paired with categories, e.g. dvd.amzn, bluray.amzn, ebooks.amzn.

WebProNews perhaps misses the point about geographic names a bit in its speculation about .apple:

It’s going to be interesting to see if Apple meets a similar fate to Amazon. It only applied for one gTLD – .apple. Like Amazon, the word apple isn’t exclusive to the company. I find it hard to believe that ICANN would hand Apple exclusive control of the .apple gTLD, but it’s possible.

Finally, book publisher Melville House said on its blog:

The principle the South American nations are referring to is, as I understand it, a little known agreement from the early days of Arpanet that in the case of a governmental disagreement, anyone who could best a region’s most dangerous wildlife in unarmed combat was welcome to that region’s domain name. The protocol hasn’t often been used since the gory events of June 1998, when one intrepid developer hoped to claim .yukon for his online baked potato delivery service.
Patagonia was similarly denied their request for .patagonia last week, after a company representative found himself facing down the pointy end of a condor.

Senators slate NTIA, to demand answers on new gTLD security

Did Verisign get to the US Congress? That’s the intriguing question emerging from a new Senate appropriations bill.
In notes attached to the bill, the Senate Appropriations Committee delivers a brief but scathing assessment of the National Telecommunication and Information Administration’s performance on ICANN’s Governmental Advisory Committee.
It says it believes the NTIA has “not been a strong advocate for U.S. companies and consumers”.
The notes would order the agency to appear before the committee within 30 days to defend the “security” aspects of new gTLDs and “urges greater participation and advocacy within the GAC”.
While the NTIA had a low-profile presence at the just-finished Durban meeting, it would be difficult to name many other governments that participate or advocate more on the GAC.
This raises an eyebrow. Which interests, in the eyes of the committee, is the NTIA not sufficiently defending?
Given the references to intellectual property, suspicions immediately fall on usual suspects such as the Association of National Advertisers, which is worried about cybersquatting and associated risks.
The ANA successfully lobbied for an ultimately fruitless Congressional hearing in late 2011, following its campaign of outrage against the new gTLD program.
It’s mellowed somewhat since, but still has fierce concerns. Judging by comments its representatives made in Durban last week, it has shifted its focus to different security issues and is now aligned with Verisign.
Verisign, particularly given the bill’s reference to “security, stability and resiliency” and the company’s campaign to raise questions about the potential security risks of new gTLDs, is also a suspect.
“Security, stability and resiliency” is standard ICANN language, with its own acronym (SSR), rolled out frequently during last week’s debates about Verisign’s security concerns. It’s unlikely to have come from anyone not intimately involved in the ICANN community.
And what of Amazon? The timing might not fit, but there’s been an outcry, shared by almost everyone in the ICANN community, about the GAC’s objection last week to the .amazon gTLD application.
The NTIA mysteriously acquiesced to the .amazon objection — arguably harming the interests of a major US corporation — largely it seems in order to play nice with other GAC members.
Here’s everything the notes to “Departments of Commerce and Justice, and Science, and related agencies appropriations Bill, 2014” (pdf) say about ICANN:

ICANN — NTIA represents the United States on the Internet Corporation for Assigned Names and Numbers [ICANN] Governmental Advisory Committee [GAC], and represents the interests of the Nation in protecting its companies, consumers, and intellectual property as the Internet becomes an increasingly important component of commerce. The GAC is structured to provide advice to the ICANN Board on the public policy aspects of the broad range of issues pending before ICANN, and NTIA must be an active supporter for the interests of the Nation. The Committee is concerned that the Department of Commerce, through NTIA, has not been a strong advocate for U.S. companies and consumers and urges greater participation and advocacy within the GAC and any other mechanisms within ICANN in which NTIA is a participant.
NTIA has a duty to ensure that decisions related to ICANN are made in the Nation’s interest, are accountable and transparent, and preserve the security, stability, and resiliency of the Internet for consumers, business, and the U.S. Government. The Committee instructs the NTIA to assess and report to the Committee within 30 days on the adequacy of NTIA’s and ICANN’s compliance with the Affirmation of Commitments, and whether NTIA’s assessment of ICANN will have in place the necessary security elements to protect stakeholders as ICANN moves forward with expanding the number of top level Internet domain names available.

While the bill is just a bill at this stage, it seems to be a strong indication that anti-gTLD lobbyists are hard at work on Capitol Hill, and working on members of diverse committees.

ICANN backtracks on URS contracts

ICANN seems to have changed its mind about requiring Uniform Rapid Suspension providers to sign enforceable contracts, angering the Internet Commerce Association.
As we reported in May, the ICA claimed a victory when ICANN said in a written answer to its persistent inquiries that URS providers would be bound by contract.
An ICANN Q&A, referring to a question the ICA’s Phil Corwin asked at the ICANN meeting in Beijing, said:

[Q] As regards Uniform Rapid Suspension (URS) providers, will there be a contract developed that goes beyond the non-enforceable memorandum of understanding? Will there be other URS providers?
[A] Yes, a contract is being developed and additional URS providers will be added.

It’s difficult to interpret that as anything other than “Yes, a contract is being developed.” The fact that the question draws the distinction between a contract and an MoU seems to remove any ambiguity.
But at the ICANN 47 meeting in Durban last week, ICANN appeared to backtrack on this position.
During a URS demo session, gTLD registry services director Krista Papac said that URS providers will only have to agree to an MoU.
“This breach of a written commitment is unacceptable,” Corwin later said at the Public Forum on Thursday.
In response, ICANN deputy general counsel Amy Stathos said:

An MoU is a contract. I recognize that you don’t necessarily recognize that as the full contract that you were contemplating or that had been contemplated. But that is a contract. And it calls and requires the URS providers to comply with all the rules and procedures that are in the Guidebook.

On Friday, ICANN then published a (hastily written?) document that sought to spell out its position on contracts for URS and UDRP providers. It says:

ICANN has carefully considered whether the introduction of contracts is feasible or useful in the scope of UDRP proceedings, and has determined that contracts would be a cumbersome tool to assert to reach the same outcome that exists today.

It goes on to address some of the concerns that the ICA and others have put forward in the past. The organization, which represents big-volume domainers, is worried that some UDRP providers find more often in favor of complainants in order to secure their business. Enforceable contracts, it says, would help prevent that.
ICANN said in its new position statement (pdf) that it has never seen behavior from UDRP providers that would require it to take action, but added:

Of course, there is always the future possibility that an issue of non-compliance will arise that will require corrective action. In recognition of that potential, ICANN commits that substantiated reports of UDRP provider non‐compliance with the UDRP or the Rules will be investigated.

Contracts, it said, would not stop forum shopping.

“Extortion” claims over new gTLD objection fees

The International Chamber of Commerce came in for quite a bit of criticism at ICANN 47 last week over claims that it is asking for deposits in excess of a million dollars to handle new gTLD objections.
Critics are worried that these high fees to arbitrate Community Objections will create a “chilling effect” that will dissuade communities affected by new gTLDs from objecting.
During a session early during the Durban meeting, Neustar VP Jeff Neuman said that the company had been “shocked” to receive a bill from the ICC for $190,000 for a single objection.
“Each one of the bidders had to put up $190,000,” he said. “It’s nothing better than extortion.”
Responding, ICANN new gTLD program manager Christine Willett said that ICANN has heard concerns from other applicants affected and has asked the ICC for a detailed rationale for its fees, which it will publish.
The ICC, she said, is “utilizing preeminent jurists to arbitrate and manage these cases” and that the estimated €450 per hour wage is “probably lower than what some of these jurists get in public fees”.
As we’ve noted previously, at €450 per hour it works out that each judge in the three-person panel would have to work on nothing but the objection, full-time, for over two weeks to justify the fee.
Later last week, during the Public Forum on Thursday, Mark Partridge of Partridge IP Law — who is WIPO panelist dealing with new gTLD Legal Rights Objections — had similar criticisms.
He said he was aware of a consolidated proceeding — where multiple objections have been bundled into the same case — where the ICC was asking for a total of €1.13 million.
A bit of back-of-the-envelope math suggests that the panelists in that case would have to work on the case full-time for a month at €450 an hour.
Partridge, noting that WIPO charges substantially less for LRO objections, said:

I’m also aware of not-for-profit associations that have found the amount of the required deposit to be prohibitive for that not-for-profit association to advance.
…
I’m still very concerned about the chilling effect that these high fees have going forward.

In response, Willett said that the Community Objection is substantially more complex than the LRO, and reiterated that
The prevailing party in a new gTLD gets its money back from the ICC. This may reduce the chilling effect, but only if a community is willing to put its money — if it even has the funds — on the line.
As we haven’t yet had any Community Objection decisions handed down yet, it’s pretty difficult to judge going into a case what the likely outcome would be. This may change in future rounds.
The ICC is also handled Limited Public Interest Objections, many of which have been filed by the ICANN-selected Independent Objector. If the objector loses his cases, the cost comes out of his budget, which was paid for by new gTLD applicants.

In the wake of .amazon, IP interests turn on the GAC

Intellectual property interests got a wake-up call at ICANN 47 in Durban this week, when it became clear that they can no longer rely upon the Governmental Advisory Committee as a natural ally.
The GAC’s decision to file a formal consensus objection against Amazon’s application for the .amazon gTLD prompted a line of IP lawyers to queue up at the Public Forum mic to rage against the GAC machine.
As we reported earlier in the week, the GAC found consensus to its objection to .amazon after the sole hold-out government, the United States, decided to keep quiet and allow other governments to agree.
This means that the ICANN board of directors will now be presented with a “strong presumption” that .amazon should be rejected.
With both previous consensus objections, against .africa and .gcc, the board has rejected the applications.
The objection was pushed for mainly by Brazil, with strong support from Peru, Venezuela and other Latin American countries that share the Amazon region, known locally as Amazonas.
During a GAC meeting on Tuesday, statements of support were also made by countries as diverse as Russia, Uganda and Trinidad and Tobago.
Brazil said Amazon is a “very important cultural, traditional, regional and geographical name”. Over 50 million Brazilians live in the region, he said.
The Brazilian Congress discussed the issue at length, he said.
The Brazilian Internet Steering Committee was also strongly against .amazon, he said, and there was a “huge reaction from civil society” including a petition signed by “thousands of people”.
All the countries in the region also signed the Montevideo Declaration (pdf), which resolves to oppose any attempts to register .amazon and .patagonia in any language, in April.
It doesn’t appear to be an arbitrary decision by one government, in other words. People were consulted.
The objection did not receive a GAC consensus three months ago in Beijing only because the US refused to agree, arguing that governments do not have sovereign rights over geographic names.
But prior to Durban, without changing its opinion, the US said that it would not stand in the way of consensus.
It seems that there may have been bigger-picture political concerns at play. The NTIA, which represents the US on the GAC, is said to have had its hands tied by its superiors in Washington DC.
Did the GAC move the goal posts?
With the decision to object to .amazon already on the public record before the GAC’s Durban communique was formally issued yesterday, Intellectual Property Constituency interests had plenty of time to get mad.
At the Public Forum yesterday, several took to the open mic to slam the GAC’s decision.
Common themes emerged, one of which was the claim that the GAC is retroactively changing the rules about what is and is not a “geographic” string for the purposes of the Applicant Guidebook.
Stacey King, senior corporate counsel with Amazon, said:

Prior to filing our applications Amazon carefully reviewed the Applicant Guidebook; we followed the rules. You are now being asked to significantly and retroactively modify these rules. That would undermine the hard-won international consensus to the detriment to all stakeholders. I repeat, we followed these rules.

It’s true that the string “amazon” is not on any of the International Standards Organization lists that ICANN’s Geographic Names Panel used to determine what’s “geographic”.
The local-language string “Amazonas” appears four times, representing a Brazilian state, a Colombian department, a Peruvian region and a Venezuelan state; Amazon isn’t there.
But Amazon is wrong about one thing.
By filing its objection, the GAC is not changing the rules about geographic names, it’s exercising its entirely separate but equally Guidebook-codified right to object to any application for any reason.
That’s part of the Applicant Guidebook too, and it’s a part that the IPC has never previously objected to.
Amazon was not alone making its claim about retroactive changes. IPC president Kristina Rosette, wearing her hat as counsel for former .patagonia applicant Patagonia Inc, said:

Patagonia is deeply disappointed by and concerned about the breakdown of the new gTLD process. Consistent with the recommendations and principles established in connection with that process, Patagonia fully expected its .patagonia application to be evaluated against transparent and predictable criteria, fully available to applicants prior to the initiation of the process.
Yet, its experience demonstrates the ease with which one stakeholder can jettison rules previously agreed upon after an extensive and thorough consultation.

That’s not consistent with the IPC’s position.
The IPC just last month warmly welcomed (pdf) the GAC’s Beijing advice, stating that the after-the-fact “safeguards” it demanded for all new gTLDs should be accepted.
Apparently, it’s okay for the GAC to move the goal posts for gTLD applicants when its advice is about Whois accuracy, but when it files an objection — perfectly compliant with the GAC Advice section of the Guidebook — that interferes with the business objectives of a big trademark owner, that’s suddenly not cool.
The IPC also did not challenge the GAC Advice process when it was first added to the Applicant Guidebook in the April 2011 draft.
At that time, the GAC had responded to intense lobbying by IP interests and was fighting their corner with the ICANN board, demanding stronger trademark protections in the new gTLD program.
If the IPC now finds itself arguing against the application of the GAC Advice rule, perhaps it should consider whether speaking up earlier might have been a good idea.
Rosette tried to substantiate her remarks by referring back to previous GAC advice, specifically a May 26, 2011 letter in which she said the GAC “formally accepted” the Guidebook’s definition of geographic strings.
However, that letter (pdf) has a massive caveat. It says:

Given ICANN’s clarifications on “Early Warning” and “GAC Advice” that allow the GAC to require governmental support/non-objection for strings it considers to be geographical names, the GAC accepts ICANN’s interpretation with regard to the definition of geographic names.

In other words, “The GAC is happy with your list, as long as we can add our own strings to it at will later”.
Rosette’s argument that the GAC has changed its mind, in other words, does not hold.
It wasn’t just IP interests that stood up against the .amazon decision, however. The IPC found an unlikely ally in the Registries Stakeholder Group, represented at the Public Forum by Verisign’s Keith Drazek.
Drazek sought to link the “retroactive changes” on geographic strings to the “retroactive changes” the GAC has proposed in relation to the so-called Category 1 strings — which would have the effect of demanding that hundreds of regular gTLD bids convert into de facto “Community” applications. He said:

While different stakeholders have different views about particular aspects of the GAC advice, we have a shared concern about the portions of that advice that constitute retroactive changes to the Applicant Guidebook around the issues of sovereign rights, undefined and unexplained geographic sensitivities, sensitive industry strings, regulated strings, etc.

This appears to be one of those rare instances where the interests of registries and the interests of IP owners are aligned. The registries, however, have at least been consistent, complaining about the GAC Advice process as soon as it was published in April 2011.
There’s also a big difference between the substance of the advice that they’re currently complaining about: the objection against .amazon followed the Guidebook rules on GAC Advice almost to the letter, whereas the Category 1 advice came completely out of the left field, with no Guidebook basis to cling to.
The GAC in the case of .amazon followed the rules. The rules are stupid, but the time to complain about that was before paying your $185,000 to apply.
If anyone is trying to change the rules after the fact, it’s Amazon and its supporters.
Is the GAC breaking the law?
Another recurring theme throughout yesterday’s Public Forum commentary was the idea that international trademark law does not support the GAC’s right to object to .amazon.
I’m going to preface my editorializing here with the usual I Am Not A Lawyer disclaimer, but it seems to be a pretty thin argument.
Claudio DiGangi, secretary of the IPC and external relations manager at the International Trademark Association, was first to comment on the .amazon objection. He said:

INTA strongly supports the recent views expressed by the United States. In particular, that it does not view sovereignty as a valid basis for objecting to the use of terms, and we have concerns about the effect of such claims on the integrity of the process.

J Scott Evans, head of domains at Yahoo, who left the IPC for the Business Constituency recently (apparently after some kind of disagreement) was next. He said:

There is no international recognition of country names as protection and they cannot trump trademark rights. So giving countries a block on a name violates international law. So you can’t do it.

There were similar comments along the same lines.
Heather Forrest, a senior lecturer at an Australian university and former AusRegistry employee, said she had conducted a doctoral thesis (available at Amazon!) on the rights of governments over geographic names, with particular reference to the Applicant Guidebook.
She told the Public Forum:

My study was comprehensive. I looked at international trade law, unfair competition law, intellectual property law, geographic indications, sovereign rights and human rights. As the board approved the Applicant Guidebook, I completed my study and found that there is not support in international law for priority or exclusive right of states in geographic names and found that there is support in international law for the right of non-state others in geographic names.

Kiran Malancharuvil, whose job until recently was to lobby the GAC for special protections for her client, the International Olympic Committee, now works for MarkMonitor. Calling for the ICANN board to reject the GAC’s advice on .amazon, she said at the Public Forum:

To date, governments in Latin America including the Amazonas community countries have granted Amazon over 130 trademark registrations that have been in continuous use by Amazon since 1994 without challenge. Additionally, Amazon has used their brand within domain names including some registered by MarkMonitor and including registrations in Amazonas community ccTLDs without objection.
Amazonas community countries and all other nations who have signed the TRIPS agreement have obligated themselves to maintain and protect these trademark registrations. Despite these granted rights, members of the community signed the Montevideo declaration and resolved to reject Amazon and Patagonia in any language as well as any other top-level domains referring to them. This declaration appears inconsistent with national and international law.

Having read TRIPS — the World Trade Organization’s Trade Related Aspects of Intellectual Property Rights treaty — this morning, I’m still none the wiser how it relates to .amazon.
It’s a treaty that sought to create some uniformity in how trademarks and other types of intellectual property are handled globally, and domain names are not mentioned once.
As far as I can tell, nobody is asking Amazon to change its name and nobody’s trying to take away its trademarks. Nobody’s even trying to take away its domain names.
If the international law argument is simply that the GAC and/or ICANN cannot prevent a company with a trademark from getting its mark as a TLD, as Yahoo’s Evans suggested, it seems to me that quite a lot of the new gTLD program would have to be rewritten.
We’re already seeing Legal Rights Objections in which an applicant with a trademark is losing against an applicant without a trademark.
Is that illegal too? Was it illegal for ICANN to create an LRO process that has allowed Donuts (no trademark) to beat Express LLC (with trademark) in a fight over .express?
What about other protections in the Guidebook?
ICANN already bans two-character gTLDs, on the basis that they could interfere with future ccTLDs — protecting the geographic rights of countries that do not even exist — which disenfranchises companies with two-letter trademarks, such as BT and HP.
What about 888, the poker company, and 3, the mobile phone operator? They have trademarks. Should ICANN be forced to allow them to have numeric gTLDs, despite the obvious risks?
The Guidebook already bans country names outright, and says thousands of other geographic terms need government support or will be rejected. Is this all illegal?
If the argument is that trademarks trump all, ICANN may as well throw out half the Guidebook.
Now what?
Unlike .patagonia, which dropped out of the new gTLD program last week (we’ll soon discover whether that was wise), the objection to .amazon will now go to ICANN’s board of directors for consideration.
While the Guidebook calls for a “strong presumption” that the board will then reject the application, board member Chris Disspain said yesterday that outsiders should not assume that it will simply rubber-stamp the GAC’s advice.
In both previous cases, the outcome has been a rejection of the application, however, so it’s not looking great for Amazon.

Trademark Clearinghouse cutting it fine for new gTLD launches

The Trademark+50 rights protection mechanism for new gTLDs is late, potentially complicating the lives of trademark professionals.
During a session with registries and registrars at ICANN 47 in Durban today, executives from IBM and Deloitte, which are managing the Trademark Clearinghouse, laid out their go-live expectations.
The TMCH is the central repository of trademark records that will support the mandatory Sunrise periods and Trademark Claims services during new gTLD launches.
Trademark+50 is the system approved by ICANN earlier this year that will also trigger Claims notices for up to 50 strings trademark owners have won at UDRP or in court.
IBM and Deloitte said that they hope to have a Sunrise sandbox ready for registry testing by the end of July, with a production environment live by August 9 and Claims following a month later.
These were hopes, not commitments, they stressed.
When asked about Trademark+50, an IBM representative acknowledged that it had to be ready before any new gTLD started its Claims period but said it is going to take “months” to implement.
“It’ll be in time, it’ll be before Claims start,” he said.
“It’s probably going to be difficult to reach before the middle of September,” another TMCH exec said. “We know it cannot be the week before Claims starts, it cannot be two weeks or three weeks before Claims starts.”
ICANN still hasn’t finalized its set of requirements for Trademark+50, but the TMCH executives said they hope to get that settled in Durban this week, possibly this evening.
So what’s going to be impact of the expected TMCH go-live schedule? It doesn’t seem likely to delay the launch of the first new gTLDs.
ICANN doesn’t expect the first Trademark Claims period to begin until November, which gives the first registries two months to test their systems against Trademark+50. Tight, but doable.
The real impact might be on trademark owners.
ICANN’s current earliest projection for a new gTLD being delegated is September 5. On that date, the first registry could choose to give trademark owners the 30-day mandatory Sunrise warning.
So the first Sunrise period would start October 5 or thereabouts.
That’s where it starts getting tricky.
See, the TMCH’s early bird pricing ends the day the first Sunrise period begins, so there’s certain to be a mad rush by trademark owners to get their trademarks registered in the first week of October.
Even if many brands aren’t too worried about being protected in the IDN gTLDs that will launch first, they’ll want to secure the discount if they have a large portfolio of trademarks.
And history has shown most trademark owners leave Sunrise registrations to the last minute. That’s why pretty much every Sunrise period to date has been extended — the registry can’t cope with the influx.
In the case of the TMCH, however, they’re also going to be battering a Trademark+50 system that’s been in production for no more than a couple of weeks and will, software being software, likely be full of bugs.
It could get messy.
“When IP owners find out that this is not going to be in production a week or two or a few weeks before the first [new gTLD] goes into Claims, they’re going to go ballistic,” Neustar VP Jeff Neuman said at the session today.
At the very least, it looks like trademark owners will have only a brief window to add their extra strings — which could amount to hundreds in many cases — to their TMCH records before the first Sunrise.
That scenario is mostly speculation, of course, based on a first delegation date that ICANN admits is “hypothetical” and the TMCH’s tentative schedule outlined today.
IBM and Deloitte execs are expected to provided a fuller explanation of the current state of play during a dedicated session in Durban on Wednesday at 11am local time.