Trademark protection stalemate follows ICANN 45

Trademark interests and new gTLD applicants are at odds about trademark protection — again — following the ICANN meeting in Toronto two weeks ago.
In a welcomed, not-before-time show of cooperation, the Intellectual Property Constituency and Business Constituency submitted to ICANN a bulleted list of requests for improved rights protection mechanisms.
The list is, for the most part, not particularly egregious — calling for a permanent Trademark Claims service and a Uniform Rapid Suspension service that meets its cost goals, for example.
But the New TLD Applicants Group (NTAG), an observer component of the Registries Constituency, has dismissed it out of hand, anyway, saying that the time for policy changes is over.
Here’s the IPC/BC list:

1. Extend Sunrise Launch Period from 30 to 60 days with a standardized process.
2. Extend the TMCH and Claims Notices for an indefinite period; ensure the process is easy to use, secure, and stable.
3. Complete the URS as a low cost alternative and improve its usefulness – if necessary, ICANN could underwrite for an initial period.
4. Implement a mechanism for trademark owners to prevent second-level registration of their marks (exact matches, plus character strings previously determined to have been abusively registered or used) across all registries, upon payment of a reasonable fee, with appropriate safeguards for registrants with a legitimate right or interest.
5. Validate contact information for registrants in WHOIS.
6. All registrars active in new gTLD registrations must adhere to an amended RAA for all gTLD registrations they sponsor.
7. Enforce compliance of all registry commitments for Standard applications.
8. Expand TM Claims service to cover at least strings previously found to have been abusively registered or used.

Most of these requests are not entirely new, and some have been rejected by the ICANN policy-development process and its board of directors before.
The NTAG points out as much in a letter to ICANN management last week, which says that new gTLD applicants paid their application fees based on promises in the Applicant Guidebook, which should not be changed.

Many of the BC & IPC proposed policy changes have been considered and rejected in no fewer than four different processes and numerous prior Board decisions. Indeed, many go far beyond the recommendations of the IRT, which was comprised almost exclusively of trademark attorneys. These last-minute policy recommendations amount to just another bite of the same apple that already has been bitten down to its core.
The new gTLD policy development process is over. Applicants relied on the policies in the final Guidebook in making business decisions on whether to apply. At the time that ICANN accepted applications and fees from applicants, ICANN and applicants entered into binding agreements. ICANN should not change these agreements unilaterally without extraordinary reason and especially not when it would materially harm the counterparties to the agreements.

The Applicant Guidebook, as it happens, asks applicants to explicitly acknowledge that ICANN may make “reasonable
updates and changes” to the rules, even after the application has been submitted.
But if applicants reckon changes would create a “material hardship”, ICANN is obliged to “work with Applicant in good faith to attempt to make reasonable accommodations in order to mitigate any negative consequences”

ICANN 45: Super-Fadi targets Trademark Clearinghouse and RAA talks

There can be no denying that ICANN’s new CEO was well received at the Toronto meeting last week.
From his opening speech, a sleeves-rolled-up address that laid out his management goals, and throughout the week, Fadi Chehadé managed to impress pretty much everybody I spoke to.
Now Chehadé has turned his attention to the formative Trademark Clearinghouse and the Registrar Accreditation Agreement talks, promising to bring the force of his personality to bear in both projects.
“I’m coming out of Toronto with two priorities for this year,” he said during an interview with ICANN’s media relations chief, Brad White, last Friday.
“The first one is obviously to get the Trademark Clearinghouse to work as best as possible, for all parties to agree we have a mechanism that can satisfy the interests of the parties.”
“The second one is the RAA,” he said. “Without question I’m going to be inserting myself personally into both these, including the RAA.”
These are both difficult problems.
Work on the TMCH hit a snag early last week when ICANN chief strategy officer Kurt Pritz told the GNSO Council that the “community consensus” implementation model proposed by registries presented a big problem.
The “live query model” proposed for the Trademark Claims service, which would require the TMCH to sit in the live domain registration path, should be taken “off the table”, he said.
ICANN is/was worried that putting a live database of trademark checks into the registration model that has functioned fairly well for the last decade is a big risk.
The TMCH would become a single point of failure for the whole new gTLD program and any unanticipated downtime, ICANN has indicated, would be hugely embarrassing for ICANN.
“I’m personally concerned that once you put the Clearinghouse in the path for that it’s very difficult to unring the bell, so I’d rather proceed in a way that doesn’t change that,” Pritz said.
His remarks, October 14, angered backers of the community model, who estimated that the live query model would only affect about 10% to 15% of attempted domain registrations.
“Taking it off the table is a complete mistake,” said Jeff Neuman of Neustar, one of the authors of the alternative “community” TMCH model.
“It is a proven fact that the model we have proposed is more secure and, we believe, actually looks out much more in favor of protecting trademark holders,” he said.
He noted that the community model was created in a “truly bottom-up” way — the way ICANN is supposed to function.
NetChoice’s Steve DelBianco, in a rare show of solidarity between the Business Constituency and the registries, spoke to support Neuman and the centralized community model.
“The BC really supports a centralized Trademark Clearinghouse model, and that could include live query,” DelBianco said. “I’m disturbed by the notion that an executive decision took it off the table.”
“My question is, was that the same executive decision that brought us the TAS and its glitches?” he added. “Was it the same executive decision process that gave us Digital Archery that couldn’t shoot straight?”
Pritz pointed out the logical flaw in DelBianco’s argument.
“The group that brought you TAS and Digital Archery… you want to put that in the critical path for domain names?” he said. “Our job here is to protect trademark rights, not change the way we register domain names.”
But Neuman and DelBianco’s dismay was short-lived. Within a couple of hours, in the same room, Chehadé had told the GNSO Council, in a roundabout sort of way, that the live query model was not dead.
Chehadé’s full remarks are missing from the official transcript (pdf), and what remains is attributed to GNSO Council chair Stephane Van Gelder, but I’ve taken a transcript from my own recording:

The very first week I was on the job, I was presented with a folder — a very nice little folder — and little yellow thing that said “Sign Here”.
So I looked at what I’m signing, as I normally do, and I saw that moving forward with a lot of activities related to the Trademark Clearinghouse as really what I’m being asked to move forward with.
And I’ll be frank with you, my first reaction was: do all the people who will be affected by this agreement… did we hear them all about this before we sign this? Are they all part of the decision-making that led us here?
And the answer was muddled, it was “Yes… and…”. I said: No, I want to make sure that we use the time we have in Toronto make sure we listen to everybody to make sure before I commit any party — any party — to anything, that this party is very much part of the process and part of the solution.

I know I wasn’t the only person in the room to wonder if the anecdote described an incident in which an ICANN executive attempted to pull a fast one on his new, green boss.
A day later, after private discussion with ICANN board and staff, supporters of the community TMCH model told me they were very encouraged that the live query model was still in play.
The problem they still face, however, is that the Intellectual Property Constituency — ostensibly representing the key customers of the TMCH — is publicly still on the fence about which model it prefers.
Without backing from the IPC, any TMCH implementation model would run the risk of appearing to serve contracted parties’ cost and risk requirements at the expense of brand owners.
Getting the IPC to at least take a view will likely be Chehadé’s first priority when it comes to the TMCH.
Finding common ground on the Registrar Accreditation Agreement could be an even more complex task.
While the bulk of the work — integrating requests from certain law enforcement agencies and the Governmental Advisory Committee into the contract — has been completed, Whois remains a challenge.
European registrars claim, in the light of correspondence from a EU privacy watchdogs, that implementing ICANN’s demanded Whois data re-verification and retention rules would make them break the law.
Registrars elsewhere in the world are less than impressed with ICANN’s proposed ‘opt-out’ solution, which would essentially create a two-tier RAA and may, they say, have some impact on competition.
Privacy advocates in Toronto told ICANN that if certain governments (largely, I suspect, the US) want their own local registrars to retain and re-verify Whois data, they should pass laws to that effect, rather than asking ICANN to enforce the rule globally.
The GAC told ICANN’s board of directors last Tuesday that the privacy letters emerging from the EU did not represent the views of the European Commission or the GAC, and nothing more was said on the matter.
How ICANN reacts to the European letters now seems to be rest with ICANN’s executive negotiating team.
While everyone at ICANN 45 seemed to be super-impressed by Chehadé’s competence and vision for sorting out ICANN, the other recurring meme is that actions speak louder than words.
During his first 40 days in the job he managed to persuade India into an about-face on its support for an intergovernmental replacement for ICANN, an impressive feat.
Can he chalk up more early wins by helping resolve the TMCH and RAA deadlocks?
“There’s frankly universal agreement that if I participate personally in these activities I would help these activities come to hopefully a reasonably conclusion that we can bank on,” he said in the White interview.

GAC gives reprieve to four at-risk new gTLD bids

ICANN’s Governmental Advisory Committee has given four new gTLD applicants cause to breath a sigh of relief with its official advice following last week’s meeting in Toronto.
The last-minute reprieve comes in the form of a list of specially protected strings matching the names of intergovernmental organizations that is much shorter than previously demanded.
Led by a US proposal, the GAC has told ICANN to protect the name of any IGO that qualifies for a .int domain name.
As .int is the smallest, most restricted gTLD out there, it only has about 166 registrations currently. More IGOs are believed to qualify for the names but have not claimed them.
If ICANN eventually implements the GAC advice — which seems likely — these 166-plus strings could be placed on a second-level reserved list that all new gTLD registries would have to honor.
While some may object to such a move, it’s a much shorter list than requested by the United Nations and other agencies earlier this year.
In July, the UN and 38 other IGOs said that any name found on the so-called “6ter” list of Paris Convention organizations maintained by WIPO should be protected — over 1,100 strings in total.
The UN had also asked for protection at both top and second levels immediately, which would have killed off four paid-up applications.
Corporate Executive Board Company (.ceb), Platinum Registry Limited (.fit) Top Level Domain Holdings (.fit) and Dot Latin (.uno), all have applications for strings on the 6ter list.
Crucially, the Toronto GAC advice only asks for the names to be protected at the top level from the second round of new gTLD applications.
The Toronto communique states:

in the public interest, implementation of such protection at the second level must be accomplished prior to the delegation of any new gTLDs, and in future rounds of gTLDs, at the second and top level.

This means that applications for strings on the .int list are probably safe.
We ran a recent .int zone file against the DI PRO database of new gTLD applications and found three applications that would have been affected by a first-round prohibition on .int strings.
The two applications for .gdn (Guardian Media and Navigation Information Systems) and the one for .iwc (Richemont DNS) appear to be safe under the rules proposed by the GAC.

EU plays down “unlawful” Whois data worries

The European Commission yesterday gave short shrift to recent claims that ICANN’s proposed Whois data retention requirements would be “unlawful” in the EU.
A recent letter from the Article 29 Working Party — an EU data protection watchdog — had said that the next version of the Registrar Accreditation Agreement may force EU registrars to break the law.
The concerns were later echoed by the Council of Europe.
But the EC stressed at a session between the ICANN board of directors and Governmental Advisory Committee yesterday that Article 29 does not represent the official EU position.
That’s despite the fact that the Article 29 group is made up of privacy commissioners from each EU state.
Asked about the letter, the EC’s GAC representative said:

Just to put everyone at ease, this is a formal advisory group concerning EU data privacy protection.
…
They’re there to give advice and they themselves, and we as well, are very clear that they are independent of the European Union. That gives you an idea that this is not an EU position as such but the position of the advisory committee.

The session then quickly moved on to other matters, dismaying privacy advocates in the room.
Milton Mueller of the Internet Governance Project tweeted:

By telling ICANN that it can ignore Art 29 WG opinion on privacy, European commission is telling ICANN it can ignore their national DP [data privacy] laws

Registrars hopeful that the Article 29 letter would put another nail into the coffin of some of ICANN’s more unpalatable and costly RAA demands also expressed dismay.
ICANN’s current position, based on input from law enforcement and the GAC, is that the RAA should contain new more stringent requirements on Whois data retention and verification.
It proposes an opt-out process for registrars that believe these requirements would put them in violation of local law.
But registrars from outside the EU say this would create a two-tier RAA, which they find unacceptable.
With apparently no easy compromise in sight the RAA negotiations, originally slated to be wrapped up in the first half of this year, look set to continue for many weeks or months to come.

Hey, domainers, watch Frank Schilling tell you why ICANN is cool

I think this is the first time I’ve seen noted domainer Frank Schilling appearing in an ICANN-related video.
It was produced by Google during ICANN’s meeting in Prague a few months ago, and published on YouTube this week.
Alongside many familiar faces from the ICANN-policy-wonk side of the industry, you’ll also see Schilling, who is of course behind portfolio gTLD applicant Uniregistry, telling you:

What I like about ICANN is just that: it’s not controlled by anyone, yet it’s controlled by you. You control it just by contributing to the process. And it’s open to anyone in any language, anywhere in the world

I think the video pretty much nails it.
ICANN 45 starts in Toronto, Canada this weekend. You don’t need to be there to get involved.

Council of Europe has Whois privacy concerns too

The Council of Europe has expressed concern about the privacy ramifications of ICANN’s proposed changes to Whois requirements in the Registrar Accreditation Agreement.
In a letter this week (pdf), the Bureau of the Consultative Committee of the Convention for the Protection of Individuals with regard to Personal Data (T-PD) said:

The Bureau of the T-PD took note of the position of the Article 29 Data Protection Working Parking in its comments of 26 September 2012 on the data protection impact of the revision of these arrangements concerning accuracy and data retention of the WHOIS data and fully shares the concern raised.
The Bureau of the T-PD is convinced of the importance of ensuring that appropriate consideration be given in the ICANN context to the relevant European and international privacy standards

The letter was sent in response to outreach from ICANN’s Non-Commercial Users Constituency.
The Article 29 letter referenced said that EU registrars risked breaking the law if they implemented ICANN’s proposed data retention requirements.
Earlier today, we reported on ICANN’s response, which proposes an opt-out for registrars based in the EU, but we noted that registrars elsewhere are unlikely to dig a two-tier RAA.

New gTLD winners will be decided by lottery after all

ICANN will use a lottery to decide the order in which to process new gTLD applications, after a surprising U-turn.
ICANN this morning published a proposal that would prioritize applications based on a $100-a-ticket prize draw that would run in early December.
The results of the draw would be used to sequence applications for Initial Evaluation and, if successful, contract negotiations, pre-delegation testing and eventual delegation.
ICANN says the draw would give it an exemption to California’s anti-lottery laws, which was the primary reason it has so far resisted chance-based solutions to the batching/sequencing problem.
It’s applied for a special “fundraising drawings” license based on its non-profit status, which it expects to be granted before the end of November.
The license appears to have certain restrictions that confuse matters for applicants — they won’t be able to buy their tickets over the internet.
They’ll have to pay, in-person, for a paper ticket. But ICANN says that it can supply proxies for applicants at no cost, eliminating the need to fly a representative to California.
The whole process will be manual, so there’s little risk of an embarrassing Digital Archery-style snafu.
Applications for internationalized domain names would be given priority.
The draw would be run at some point between December 4 and 15.
Under the proposal, the results of Initial Evaluation would start to be released from March next year, starting with IDNs, at a rate of about 150 per week.
ICANN has also decided to extend the period for official objections to March 13, 2013, two months more than the current plan, due to requests for more time from potential objectors.
But the extension is unlikely to appease these objectors, which will still have to file objections before they know whether applications have passed Initial Evaluation, wasting money.
New gTLD applicants that pass Initial Evaluation, are not in contention and have no objections will have the option to immediately sign the standard registry contract.
Applicants wishing to negotiate their contracts will be processed according to their draw number.
However, no contracts will be signed before the ICANN meeting in Beijing next April. This is because the Governmental Advisory Committee does not expect to issue its formal Advice on applications before then.
ICANN expects to sign contracts and do pre-delegation testing at a rate of about 20 per week, which is roughly within the maximum 1,000-per-year delegation rate it has committed to.
The effect of this is that the first new gTLDs are expected to go live in the DNS root in the second quarter of 2013, rather than the third quarter.
I believe most of the proposals will be welcomed by most applicants. A lottery was always the most favored solution.
There will be some criticisms, however.
There does not appear to be a method envisaged for swapping slots, for example, so portfolio applicants probably won’t get to choose which of their gTLDs is delegated first.
The whole proposal is open for public comment here.

Strickling urges ICANN to bolster trademark protection for all gTLDs

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.

IP interests should join the Trademark Clearinghouse meeting on Tuesday

ICANN is to hold a webcast and teleconference next week to discuss alternative models for the new gTLDs Trademark Clearinghouse.
It will be the last time the community gets to discuss the issue before ICANN 45 kicks off in Toronto next weekend.
Neustar, ARI Registry Services, Verisign and Demand Media have jointly proposed two models for the mandatory new gTLD Sunrise period and Trademark Claims service that differ from ICANN’s.
While the proposals are enjoying general murmurs of support from the domain name industry side of the community, the trademark lobby has yet to have any substantial presence in the talks.
Most of the discussions to date have been hindered by this lack of input, and by a frustrating lack of hard feedback from ICANN and its two contractors, IBM and Deloitte.
Tuesday’s meeting might be a good opportunity for members of the Business Constituency and IP Constituency to brush up on the issues before Toronto.
The meeting will start at 9am US Eastern time, according to Neustar vice president Jeff Neuman, who provided the following information:

The documents are posted at:
http://newgtlds.icann.org/en/about/trademark-clearinghouse/sunrise-model-26sep12-en.pdf
http://newgtlds.icann.org/en/about/trademark-clearinghouse/claims-model-26sep12-en.pdf
http://newgtlds.icann.org/en/about/trademark-clearinghouse/model-issues-26sep12-en.pdf
The call-in information is:
Conference ID: 93759
Dial-in numbers for each country: http://www.adigo.com/icann/
Adobe Connect Room at: http://icann.adobeconnect.com/tmch/

No more Club Med? America and Africa would lose out under ICANN meetings overhaul

ICANN is having a big rethink about how it decides where to drag the community to on its thrice-yearly meetings.
A proposal published tonight would reduce the number of cities it visits between 2014 and 2016 from nine to seven, meaning Africa and North America would both lose a meeting.
ICANN says its meetings are getting bigger and it’s getting harder to find suitable locations that it hasn’t already been to:

As ICANN Meetings have increased in size and scope, the number of facilities capable of hosting an ICANN Meeting has decreased considerably. In addition, the number of facilities that actually meet all of the established meeting location selection criteria is very limited.
ICANN Meetings have already been held in more than 40 different cities worldwide. It is becoming increasingly difficult to identify new hosts, as well as new host cities with the appropriate facilities.

Under the new proposal, ICANN would pre-select conference centers worldwide that are big enough, are easy to get to, have decent internet access, have plenty of nearby hotels and so forth.
It reckons it could save money by negotiating multi-year deals with such venues, but that this would mean a reduced number of locations.
Under ICANN’s current plan, 2014-2016 would see two meetings in Europe, two in North America, two in Asia-Pacific, two in Africa, and one in Latin America. Each would be in a different city.
The new plan would increase Europe and Asia-Pacific to three meetings each, but in four countries instead of six. Africa and North America would both lose a meeting. Latin America would still have one meeting.
ICANN wants to know what you think about this idea. I can see it being divisive along predictable lines.