Ombudsman dealing with new gTLDs complaint

ICANN Ombudsman Chris LaHatte is investigating a complaint related to the new generic top-level domains program.
Speaking to DI today, LaHatte declined to disclose the nature of the complaint or the identity of the complainant, but said he hoped to have the case resolved in a few weeks.
He may publish an official report about the investigation, he said. This would be the first such report to emerge from the Ombudsman’s office since October 2009.
The often-overlooked Ombudsman is not mentioned at all in the Applicant Guidebook, but it is an avenue open to applicants who believe they’ve been treated unfairly.
LaHatte said it’s “unlikely but conceivable” that he will receive complaints about unfair behavior when applications start being processed – and rejected – later this year.
The Ombudsman’s job is to look into allegations of unfairness in ICANN staff actions or the decisions of its board of directors.
But LaHatte said he believes he would be able to also handle complaints about the program’s outside evaluators, if applicants believe they have been treated unfairly.
“There will be some people who prefer to litigate and some who would prefer to come to me,” he said. “The message I would like to send to the community is that my door is always open.”
But he warned that the Ombudsman is not a “court of appeal” for applicants who simply disagree with adverse decisions.
The Ombudsman job has in the past been criticized for being relatively toothless – the role answers to the ICANN board and has no direct power other than the ability to make recommendations.
LaHatte characterized his ability to effect change as a “moral persuasion”.
He said he’s received 23 complaints so far in January, already double what his predecessor received per month, but many of these will be out his jurisdiction — cases of ICANN being blamed for domain theft or a registrar problem, for example.

Fox takes control of squatted .xxx domain

Twentieth Century Fox has withdrawn its cybersquatting complaint about the domain name foxstudios.xxx after the domain was transferred into its control.
As I reported on Tuesday, the UDRP case was a no-brainer. Fox Studios is Fox’s production subsidiary, and the owner of foxstudios.xxx had offered the domain for sale on eBay for a ludicrous $1.9 million.
This would have been more than enough to show bad faith.
The Whois record for the domain shows it is now owned by Fox, with an email address corresponding to an outside law firm. From here, it still resolves to a for-sale page, however.
Three more .xxx UDRP complaints have been filed this week, all by Turkish companies, bringing the total since December 29 to eight.

.bank trademark canceled after “mistake”

A US trademark on the term “.bank” granted to a likely .bank top-level domain applicant has been canceled just over a week after it was approved.
The Patent & Trademark Office withdrew trademark 4,085,335 yesterday, stating that it had been issued to Asif LLC in error.
The USPTO noticed that the application was for a gTLD string after receiving a letter of protest on January 6, which it forgot to process before granting the trademark.
In a letter to Asif’s lawyers, the USPTO noted that it has a policy of not approving trademarks for TLDs, adding:

The USPTO has broad authority to correct mistakes…
In view of the letter of protest prior to registration and the clear violation of the USPTO’s established policy that marks such as this do not function as trademarks, this registration is canceled as inadvertently issued

Asif, which recently changed its name to Domain Security Company, intends to apply to ICANN for .bank and .secure, but as I reported last week it faces an uphill battle given rival .bank bids.
It used a Wild West Domains reseller account to demonstrate to the USPTO it was using the .bank mark.
It’s not currently clear who was responsible for the letter of protest.

Stop the nonsense about TLD-squatting

Barely a day has passed recently without a news report about how companies are being forced to apply for new top-level domains to prevent cybersquatters moving in on their brands.
It’s complete nonsense, of course, brought about by a lack of basic research coupled with years of bad feeling towards the domain name industry and an ICANN new gTLDs outreach campaign that spent six months failing to effectively tackle widely held misconceptions.
Cybersquatters are not going to apply for new gTLDs. If they do, they won’t be approved.
Unfortunately, this does not mean that we’re not going to see lots of “defensive” new gTLD applications.
Due to the way the program is structured, it may actually make strategic sense for some companies to apply for a dot-brand gTLD even if they are otherwise pretty clueless about domain names.
It worries me to think that a few years from now the TLD space – which is currently running at almost 100% utilization – will start to resemble the second level in pretty much every major TLD, with lots of essentially unused, redundant defensive domain names.
I don’t think this will be good for the domain name industry or ICANN.
That said, what looks good for ICANN and the domain name industry is of little concern to brand owners – they just want to make sure their brands are not damaged by the program.
I’ve written a 4,500-word paper analyzing the actual need for companies to file “defensive” gTLD applications, which is now available to DomainIncite PRO subscribers.

Fox files cybersquatting complaint on .xxx domain

Twentieth Century Fox appears to have filed a UDRP complaint over the domain name foxstudios.xxx.
The domain, which does not currently resolve, was registered to a Connecticut man in December, shortly after ICM Registry took .xxx into general availability.
It’s the fifth UDRP case in the .xxx space since late December. The others are richardbranson.xxx, valero.xxx, heb.xxx and markafoni.xxx.
While it’s a National Arbitration Forum complaint – so the identity of the complainant has not yet been disclosed – Fox Studios is a Fox subsidiary that does business at foxstudios.com.
A bit of Googling reveals that Fox Studios was also the name of a gay porn production company that won some awards in the late 1990s. Its DVDs are still for sale from several sites.
So it may not be a slam-dunk UDRP win for Fox in this case. If the registrant bothers to respond to the complaint he could probably make a decent case that it was not a bad-faith registration.
(UPDATE: Thanks to @mneylon for pointing out that foxstudios.xxx is for sale on eBay with a buy-now price of $1.9 million. Ergo: the squatter’s gonna lose.)
Incidentally, foxstudios.net appears to be owned by a small but legitimate photography business in Michigan, which I think is a perfect example of how two companies can happily share a brand using different TLDs.

Two new vice presidents at ICANN

ICANN has appointed two new vice presidents to head up its European and Latin American offices.
British former civil servant Nigel Hickson, who ICANN says has experience working in European Union politics, is the new VP for Europe.
Rodrigo de la Parra, the newly appointed VP for Latin America, is an internal promotion. Since January 2011 he has been ICANN’s Regional Liaison for Latin America.
He formerly held senior positions within Mexican telecommunications regulator Cofetel and was Mexico’s representative on ICANN’s Governmental Advisory Committee.
Both positions are new. The VP of Europe job was originally given to French software executive Thomas Spiller, but he quit before he even started last August.

GAC gets more power to block controversial gTLDs

While the new version of ICANN’s new generic top-level domains Applicant Guidebook contains mostly tweaks, there’s a pretty big change for those filing “controversial” applications.
The Guidebook now grants the Governmental Advisory Committee greater powers to block gTLD applications based on minority government views.
ICANN has adopted poorly-written, ambiguous text approved by the GAC at its meeting in Dakar last October, which lowers the threshold required to force the ICANN board to consider GAC advice.
The changes essentially mean that it’s now much easier for the GAC to force the ICANN board to the negotiating table if a small number of governments object to a gTLD application.
In the September Guidebook, a GAC consensus objection was needed to force the ICANN board to manually approve controversial applications. Now, it appears that only a single country needs to object.
This is the relevant text:

The GAC advises ICANN that there are concerns about a particular application “dot-example.” The ICANN Board is expected to enter into dialogue with the GAC to understand the scope of concerns. The ICANN Board is also expected to provide a rationale for its decision.

Applications for .gay, of which there are expected to be at least two, will almost certainly fall into this category.
If you’re applying for a potentially controversial gTLD, you can thank the GAC for the fact that your road to approval is now considerably less predictable.
It’s also worth bearing in mind that the GAC is allowed to file an objection based on any aspect of the application – not just the chosen string.
So, for example, if you’re applying for .bank or .pharma and your application falls short of one government’s expected consumer safeguards, you may also see a GAC “concerns” objection.
In cases where the GAC objects to an application, the ICANN board of directors does have the ability to overrule that objection, if it provides its rationale, much as it did with .xxx.
However, .xxx was a special case, and ICANN today is under a regime much friendlier to the GAC and much more nervous about the international political environment than it was 12 months ago.
Make no mistake: GAC Advice on New gTLDs will carry weight.
This table compares the types of GAC Advice described in the Applicant Guidebook published in September with the one published last night.
[table id=5 /]
It should also be noted that since Dakar the GAC has defined consensus as “the practice of adopting decisions by general agreement in the absence of any formal objection”.
In other words, if some GAC members push for a GAC consensus objection against a given gTLD, other GAC members would have to formally object to that proposed objection in order to prevent the minority view becoming consensus.
It’s a pretty low threshold. The .gay applicants, among others, are going to have a nerve-wracking time.

ICANN opens new gTLD program

It’s scarcely believable given the delays and threats, but ICANN opened its new generic top-level domains program to applications this morning at a minute after midnight UTC.
The TLD Application System, ICANN’s custom web tool for submitting applications, is now live.
If you have $5,000 burning a hole in your pocket, you can sign up for TAS to check it out at any time between now and March 29 at 2359 UTC.
A new English version of the Applicant Guidebook – the ninth – has also been published, mostly merely correcting and clarifying parts of the text.
Applications, with the remaining $180,000 part of the fee, are due by April 12 at 2359 UTC.

Whois verification rules coming this year

No more Donald Duck in the Whois?
Registrars could be obliged to verify their customers’ identities when they sell domain names under new rules proposed for later this year, according to ICANN president Rod Beckstrom.
He told National Telecommunications and Information Administration boss Larry Strickling today that the new provisions could make it into the new Registrar Accreditation Agreement by March.
Beckstrom wrote:

ICANN expects that the RAA will incorporate – for the first time – Registrar commitments to verify WHOIS data. ICANN is actively considering incentives for Registrars to adopt the anticipated amendments to the RAA prior to the rollout of the first TLD in 2013.

The RAA is currently being renegotiated by ICANN and the registrar community, following governmental outrage about the RAA at its meeting in Dakar last October.
If new Whois rules are added to the RAA, it will be up to registrars to decide whether to implement them immediately or wait until their existing ICANN contracts expire — hence the need for “incentives”.
Documents ICANN has been posting following its RAA meetings have been less than illuminating, so the letter to Strickling today is the first public insight into what the new contract may contain.
Whois verification, which is often found at the top of the wish-lists of intellectual property and law enforcement communities, is of course hugely controversial.
Civil rights advocates believe that checking registrant identities will infringe on rights to privacy and free speech, while not helping to prevent crime. Actual criminals will of course not hand over their true identities when registering domain names.
The process of verifying Whois data may also wind up making domain names more expensive, due to the costs registrars will incur implementing or subscribing to automated verification systems.
Nevertheless, the anti-new-gTLDs campaign in Washington DC led by the Association of National Advertisers recently led to Whois – a separate issue – being placed firmly on the new gTLDs agenda.
The chairman of the Federal Trade Commission, as well as Strickling, both wrote to ICANN to express concern about the lack of progress on strengthening Whois over the last few years.
Beckstrom’s letter to Strickling can be read here. His reply to FTC chairman Leibowitz – which also schools him in why new gTLDs probably won’t increase fraud – can be read here.

ANA’s modest proposal: let us take over the new gTLD program or we’ll sue

The Association of National Advertisers has offered ICANN a risible last-minute “solution” to the outrage it has created over the new generic top-level domains program.
The ANA wants ICANN to create a temporary “Do Not Sell” list to protect trademark owners and intergovernmental organizations during the first application round, which begins Thursday.
While the first round is open, the ANA itself wants to takes over policy development for the program.
This is its “Proposed Way Forward” in full:

1. ICANN will proceed with its plan to begin accepting applications for new TLDs on January 12, as scheduled;
2. Concurrently, all NGOs, IGOs and commercial stakeholders concerned about protecting their brands will be given the opportunity to have those brands registered, without cost, on a temporary “Do Not Sell” list to be maintained by ICANN during the first application round (any interested party which does not want to have its brands on the Do Not Sell list and would rather apply for a TLD would be free to do so).
We will assemble a team from the interested constituencies to work with ICANN leadership during the first application round. If this group achieves consensus with respect to any proposals, those proposals will be voted on by the Board.
At the end of the first application round, should the parties continue to disagree, all parties will be free to pursue their legal and equitable rights without prejudice.

The alternative to adopting this proposal, ANA president Bob Liodice said in a letter to ICANN today, is “destructive and costly litigation”.
ICANN’s response should be provided “IMMEDIATELY”, Liodice wrote.
I can’t see him getting the answer he wants.
First, the ANA still seems to be worried about top-level cybersquatting, which any sane person can see is extremely unlikely to happen under the new gTLD program’s existing policies.
Second, it’s asking for ICANN to give anyone with a trademark the right to block a string matching that trademark at the top-level.
This may appear reasonable if you think a trademark is something like “Coca-Cola” or “Gucci” or “Google”.
But as soon as you realize that pretty much every word – “music”, “blog”, “web”, “London”, “Paris” – is trademarked, the idea of a Do Not Sell list becomes clearly ludicrous.
It would be a recipe for banning all gTLDs from the first application round.
Third, ICANN already has a mechanism for letting interested stakeholders achieve consensus on new trademark protection policies.
It’s called ICANN, and you don’t need to threaten litigation to participate. You just show up.
You can read the entire laughable ANA proposal here.