Pritz quits Whois privacy group as work enters impossible second phase

Kurt Pritz has quit as chair of the ICANN group working on Whois policy for the GDPR era.
He informed the Whois Expedited Policy Development Process working group in a notice to its mailing list today, saying he was leaving for “a set of personal and professional reasons”.
He said he will stick around until his replacement is selected.
I understand three people had put themselves forward for the role when Pritz was originally selected last July, so there may be a couple of alternates already waiting in the wings.
The announcement comes at a pivotal time for the EPDP, and whoever takes over is going to have to have some seriously masochistic tendencies.
The 30-odd member group just this week put the finishing touches to its “phase one” initial report, which primarily sets out the formal legal purposes for which Whois data is collected and processed across the domain name ecosystem.
That’s going to be voted on by the GNSO Council in a vote delayed from this week to March 4 at the request of the Intellectual Property Constituency and Business Constituency, which want more time to review and comment on it.
For the EPDP WG, it’s soon time to move on to phase two, which will cover the creation (or not) of a unified access mechanism that trademark owners and the like could use to snoop on redacted Whois data.
Even the relatively easy tasks in phase one have been absolute murder on the volunteers and ICANN staff, who have been putting in four or more hours of teleconferences per week since August.
I’ve just been dipping in and out of the mailing list and listening to the odd teleconference, and the level of nitpicking over language has been agonizing to listen to.
Essentially, virtually every debate comes down to a face-off between the IP interests who want to insert as much language concerning access as possible, and those, such as non-commercial users, who oppose them. It sometimes comes across like a proxy war between Facebook and the Internet Governance Project.
More than once, naturally mild-mannered Pritz has had to delegate control to firm-handed mediators drafted in from a specialist outside agency.
Whoever takes over as chair has got his or her work cut out.

Surprise! Most private Whois look-ups come from Facebook

Facebook is behind almost two-thirds of requests for private Whois data, according to stats published by Tucows this week.
Tucows said that it has received 2,100 requests for Whois data since it started redacting records in the public database when the General Data Protection Regulation came into effect last May.
But 65% of these requests came from Facebook and its proxy, AppDetex, that has been hammering many registrars with Whois requests for months.
AppDetex is an ICANN-accredited brand-protection registrar, which counts Facebook as its primary client. It’s developed a workflow tool that allows it, or its clients, to semi-automatically send out Whois requests to registrars.
It sent at least 9,000 such requests between June and October, and has twice sent data to ICANN complaining about registrars not responding adequately to its requests.
Tucows has arguably been the registrar most vocally opposed to AppDetex’s campaign, accusing it of artificially inflating the number of Whois requests sent to registrars for political reasons.
An ICANN policy working group will soon begin to discuss whether companies such as Facebook, as well as security and law enforcement interests, should be able to get credentials enabling them to access private Whois data.
Tucows notes that it sees spikes in Whois requests coinciding with ICANN meetings.
Tucows said its data shows that 92% of the disclosure requests it has received so far come from “commercial interests”, mostly either trademark or copyright owners.
Of this 92%, 85% were identified as trademark interests, and 76% of those were Facebook.
Law enforcement accounted for 2% of requests, and security researchers 1%, Tucows said.

Claims UDRP has cost over $360 million so far

Trademark owners have splashed out over $360 million on UDRP cases over the 20 years the policy has been active, according to an intellectual property trade group.
Marques, a European body representing trademark owners, reckons $360 million is a “conservative” estimate.
It reached the figure by multiplying the number of UDRP complaints filed to the end of 2018 — 72,038 — by the $5,000 estimated total cost of each complaint.
The World Intellectual Property Organization, which handles well over half of all UDRP cases, charges at least $1,500 per case, but trademark owners have other fees, such as paying lawyers to draft the complaints.
WIPO, which basically designed and wrote the UDRP back in 1998, has been paid at least $63.8 million in filing fees to date, Marques calculates.
Across all UDRP providers, well over 100,000 individual domain names have been subject to UDRP. It’s likely much more, but the National Arbitration Forum does not publish data on unique domains.
The Marques claims were made in a letter (pdf) from council member (and Com Laude managing director) Nick Wood to ICANN last week, part of IP lobbying efforts in the face of UDRP reform efforts. He wrote:

This lowest-case estimate of $360m is a very significant financial burden. Registrants, on the other hand, pay only for their own defence, if any. They do not pay damages, or even contribute to the provider fees, if they lose – which across the five active panel providers appears to be majority of the time.

One proposal that has been put forward by IP owners is for registrants to pay a $500 fee when they are hit by a UDRP complaint, which would be refundable if they prevail.
I can see this idea going down like a cup of iced sick in the domainer community.
Rather than lobbying for any specific proposal, however, Marques is asking ICANN to create an “independent expert group” outside of the usual Policy Development Process, to highlight “priority issues and possible solutions” for the PDP to consider.
Marques thinks the group should comprise a small number of trademark interests, registries and registrars, and registrant rights groups. It wants WIPO to chair it.
It also wants ICANN to coordinate UDRP providers in the creation of a unified set of data on UDRP cases processed to date, to help with future reform discussions.
ICANN community volunteers have been working on the “PDP Review of All Rights Protection Mechanisms in All gTLDs” — the RPM WG — since March 2016.
The RPM WG expects to put out its “Phase One” initial report, comprising recommendations for reform of the Trademark Clearinghouse, Trademark Claims and Sunrise policies, in early June this year.
Only then will it turns its attention to UDRP, in “Phase Two”, with talks due to begin at the ICANN 65 meeting in Marrakech later that month.
The working group has been beset by all kinds of personal drama among volunteers recently, which continues to add friction to discussions.

Court rules generic dictionary domains CAN be trademarked

A US appeals court has ruled that generic, dictionary domain names can be trademarked.
The hotel-booking web site Booking.com was told last week that it is in fact eligible to have “Booking.com” registered as a trademark, over the objections of the US Patent and Trademark Office.
The ruling could have a chilling effect on domain name choices in the hotel-booking market.
USPTO had denied the company’s trademark application in 2012 because “Booking.com” was considered too generic.
Under US trademark law, you can’t register a trademark if it merely generically describes the product or service you offer rather than its source.
You couldn’t register “Beer” as a brand of beer, for example, though you might be able to register “Beer” as a brand of shoes.
Booking.com sued to have the USPTO ruling overturned in 2016, and in 2017 a district court judge ruled that “although ‘booking’ was a generic term for the services identified, BOOKING.COM as a whole was nevertheless a descriptive mark”.
USPTO appealed, saying that “Booking.com” is too generic to be trademarked, but last week it lost.
In a 2-1 majority decision, the appeals court ruled:

We hold that the district court, in weighing the evidence before it, did not err in finding that the USPTO failed to satisfy its burden of proving that the relevant public understood BOOKING.COM, taken as a whole, to refer to general online hotel reservation services rather than Booking.com the company… we reject the USPTO’s contention that adding the
top-level domain (a “TLD”) .com to a generic second-level domain (an “SLD”) like booking can never yield a non-generic mark.

Key evidence was a survey Booking.com had submitted that indicated that almost three quarters of consumers understood “Booking.com” to be a brand name, rather than a generic term to describe hotel-booking web sites.
Here are some other extracts of the appeals court majority’s thinking, as they relate to domain names:

Merely appending .com to an SLD does not render the resulting domain name non-generic because the inquiry is whether the public primarily understands the term as a whole to refer to the source or the proffered service.
…
We… conclude that when “.com” is combined with an SLD, even a generic SLD, the resulting composite may be non-generic where evidence demonstrates that the mark’s primary significance to the public as a whole is the source, not the product
…
because trademarks only protect the relevant service — here, the district court granted protection as to hotel reservation services but not travel agency services — protection over BOOKING.COM would not necessarily preclude another company from using, for example, carbooking.com or flightbooking.com
…
In sum, adding “.com” to an SLD can result in a non-generic, descriptive mark upon a showing of primary significance to the relevant public. This is one such case.

The ruling does not appear to protect all uses of a generic dictionary word combined with a TLD, but rather only “rare circumstances” where there’s evidence of a secondary, non-generic meaning.
One judge on the case, James Wynn, was not convinced by the majority’s thinking. He warned that the ruling goes against years of legal precedent and could enable Booking.com to subject competitors to expensive litigation.
In his dissenting opinion, he wrote:

BOOKING.COM is a run-of-the-mill combination of a generic term with a Top Level Domain that creates a composite mark concerning the subject or business encompassed by the generic term—precisely the type of mark that the courts in Hotels.com, Reed Elsevier Properties, 1800Mattress.com, and Advertise.com found did not amount to the “rare circumstance” that warranted affording the domain name trademark protection.
…
Presumptively allowing protection of domain names composed of a generic Secondary Level Domain and Top Level Domain conflicts with the law’s longstanding refusal to permit registration of generic terms as trademark

Wynn added that he was “not convinced” that Booking.com’s competitors that use the word “booking” in their domains will be protected by the “fair use” defense, and that the existence of such a defense will not prevent Booking.com from suing them out of business regardless.

Put simply, putative competitors may — and likely will — choose not to operate under domain names that include the word “booking” — even if that term best describes the service they offer — because they do not want to incur the expense and risk of defending an infringement action.

The full ruling can be read here (pdf).

After ICANN knockback, Amazon countries agree to .amazon talks

Talks that could lead to Amazon finally getting its long-sought .amazon gTLD are back on, after a dispute between ICANN and eight South American governments.
The Amazon Cooperation Treaty Organization last week invited ICANN CEO Goran Marby to meet ACTO members in Brasilia, any day next week.
It’s not clear whether Amazon representatives have also been invited.
The outreach came despite, or possibly because of, ICANN’s recent rejection of an ACTO demand that the .amazon gTLD applications be returned to their old “Will Not Proceed” status.
In rejecting ACTO’s Request for Reconsideration, ICANN’s board of directors had stressed that putting .amazon back in the evaluation stream was necessary in order to negotiate contractual concessions that would benefit ACTO.
Amazon is said to have agreed to some Public Interest Commitments that ACTO would be able to enforce via ICANN’s PIC Dispute Resolution Process.
The e-commerce giant is also known to have offered ACTO cultural safeguards and financial sweeteners.
ACTO’s decision to return to the negotiating table may have been made politically less uncomfortable due to a recent change in its leadership.
Secretary-general Jacqueline Mendoza, who had held the pen on a series of hard-line letters to Marby, was in January replaced by Bolivian politician Alexandra Moreira after her three-year term naturally came to an end.
ICANN’s board has said it will look at .amazon again at its meetings in Kobe, Japan, in March.

ICANN picks Seattle for public meeting

ICANN will hold one of its 2021 public meetings in Seattle, Washington.
The organization’s board of directors directed the CEO to start talks with the yet-unnamed venue at its meeting at the weekend.
The meeting, ICANN 72, will be the 2021 Annual General meeting and will be held from October 23 to 28.
Believe it or not, it will be the first time a public ICANN meeting has been held on the mainland United States since the LA meeting in 2014.
That’s quite a feat, given that ICANN’s definition of “North America” basically only has two countries in it.

Brexit won’t just affect Brits, .eu registry says

European Union citizens living in the UK could find their .eu domain names shut off in the next few months, EURid has said.
In a just-published update to its Brexit guidance, the registry has told Brits that they stand to lose their domains on May 30, should the UK leave the EU with no transition deal.
That would give them just two months to transfer their domains to an entity in one of the remaining 27 member states.
On May 30, affected domains will be removed from the .eu zone file and will stop resolving, technically entering “withdrawn” status.
It will be no longer be possible to renew these domains, nor to transfer any domains to a UK-based registrant.
All affected domains — over 273,000 at the last-published count — will be deleted and released back into the available pool, in batches, following March 30, 2020.
This could be good news for domainers in the EU27, given that the deleted domains may include potentially valuable generics.
But EU27 citizens currently residing in the UK, who for whatever reason are unable to transfer their names to an address in their home country, will be treated at first in the same way as Brits. EURid said:

There may be situations of EU citizens, who at present are residing in the UK and have registered a .eu domain name. These citizens would become ineligible as a result of the UK withdrawal and would, therefore lose their eligibility for a .eu domain name, but might become eligible again when the new .eu regulatory framework comes into force later this year. At present, such individuals will experience a disruption of service from 30 May 2019, as a result of the withdrawal of the name.

The registry said last month that new regulations are coming that would allow EU citizens to register .eu domains no matter in which country they live.
Before these regulations kick in, these EU registrants will find their names unresolvable.
By May 30, starving Brits will be far too preoccupied with beating each other to death in the streets for scraps of the country’s last remaining baguette, trading sexual favors for insulin, and so on, so .eu domains will likely be among the least of their no-deal Brexit concerns.
The situation for registrants if the UK leaves the EU with a deal is less urgent. Their domains will stop functioning March 2, 2021, and from January 1, 2022, will be released back into the pool for registration.
Brits would be able to register new .eu domains all the way through the transition period, until the end of December 2020.
It’s not beyond the bounds of possibility that Brits could be grandfathered in to .eu eligibility, should the UK leave on terms similar to European Economic Area members such as Norway, which are eligible under the existing rules.
Currently, it’s anyone’s guess whether we’re leaving with a deal or without. The government’s proposed transition plan was defeated earlier this month in an unprecedented revolt by members of parliament, which leaves no-deal enshrined in the statute books as the default option.
The government is currently attempting to talk its MPs into switching sides, but many suspect it’s just attempting to run down the clock to the March 29 Brexit deadline, compelling MPs to vote for the transition at the eleventh hour as the lesser of two evils.
The opposition is currently urging the government to rule out a no-deal scenario, to discourage British businesses from executing potentially irreversible and damaging exit plans, but the government is reluctant to do so, fearing it could weaken its negotiating hand with the EU27.
The far more-sensible option — giving British voters the opportunity to change their minds with a referendum — appears to be gaining support among MPs but still seems like a pipe dream.
There’s some evidence that the UK is now officially a demographically Remain country, simply due to the number of elderly racists who have died, and the number of youthful idealists who have reached voting age, since the original 2016 referendum.

ICANN creates female-heavy anti-harassment team

ICANN’s board of directors has created a new team to look at issues of harassment in the community.
The new Board Working Group on Anti-Harassment has eight members, six of whom are women.
In fact, all six female members of the board, including non-voting liaisons, have been appointed to the group.
The members are Becky Burr, Chris Disspain, Avri Doria, Lito Ibarra, Manal Ismail, Merike Kaeo and Tripti Sinha. It will be chaired by Sarah Deutsch.
The board said “a focused group of Board members can be part of a group that is trying to help create an environment where the ICANN community is free to focus on the mission and not on behaviors that should not be a part of the working environment.”
Harassment, particularly sexual harassment, has been a simmering topic in the community for a few years, ever since the infamous Cheesesandwichgate affair.
In response, ICANN created its first anti-harassment policy, to complement its longstanding Expected Rules of Behavior.
At ICANN 63 in Barcelona last October, I noticed several unavoidably prominent warnings — billboards the height of a man person — warning attendees against harassing their fellow participants, citing the policy.
In late 2017, an unscientific survey of ICANN community members found that one in three women had experienced or witnessed sexism while participating.
But ICANN’s Ombudsman told DI at the time that no complaints had been filed under the harassment policy in the first eight months it was in effect, even as the #MeToo movement took off.
Critics say that women are reluctant to report incidents to the Ombudsman because he is a man. I expect this is something the new board working group will look at.
In March last year, a group of female community members wrote to ICANN with a set of stories about how they had been harassed at ICANN meetings.
While stopping short of any serious criminal allegations, the stories depicted a working environment that can sometimes be very hostile to women, particularly when alcohol is involved.

ICANN chief gets $100k bonus

ICANN CEO Goran Marby has been awarded almost $100,000 of his annual bonus.
The ICANN board of directors last week voted to approve the first half of his fiscal year 2019 “at risk compensation”, what ICANN calls the discretionary, performance-driven part of its executive compensation packages.
Marby’s salary is $653,846.17 per annum, and the at-risk component is an additional 30% of that. Half of the bonus comes to just over $98,000.
His base pay is about $23,000 more than immediate predecessor Fadi Chehade, but considerably less than two-CEOs-ago Rod Beckstrom, who took home $750,000 and, if it was paid, $195,000 in bonuses.
While at-risk compensation is based on predetermined goals, these goals are not typically made public.
ICANN salaries are based on paying between the 50th and 75th percentile of average wages across the high-tech, non-profit and general industry.

ICANN puts deadline on .amazon talks

ICANN’s board of directors has voted to put a March deadline on talks over the future of the .amazon gTLD.
Late last week, the board formally resolved to “make a decision” on .amazon at ICANN 64, which runs in Kobe, Japan from March 9 to March 14.
It would only do so if Amazon the e-commerce giant and the eight governments of the Amazon Cooperation Treaty Organization fail to come to a “mutually agreed solution” on their differences before then.
CEO Goran Marby is instructed to facilitate these talks.
Here are the relevant resolved clauses from the resolution:

Resolved (2019.01.16.03), the Board hereby reiterates that Resolution 2018.10.25.18 was taken with the clear intention to grant the President and CEO the authority to progress the facilitation process between the ACTO member states and the Amazon corporation with the goal of helping the involved parties reach a mutually agreed solution, but in the event they are unable to do so, the Board will make a decision at ICANN 64 on the next steps regarding the potential delegation of .AMAZON and related top-level domains.
Resolved (2019.01.16.04), the Board encourages a high level of communication between the President and CEO and the relevant stakeholders, including the representatives of the Amazonian countries and the Amazon corporation, between now and ICANN 64, and directs the President and CEO to provide the Board with updates on the facilitation process in anticipation of revisiting the status of the .AMAZON applications at its meeting at ICANN64.

The vote came following ACTO’s demand that ICANN reverse its decision to take .amazon, and Chinese and Japanese translations, off their “Will Not Proceed” status, which heavily implied they will ultimately end up in the root.
ACTO, which claims its members have a greater right to the string due to its geographical and cultural significance, says it has not yet agreed to Amazon’s peace offering, which includes safeguards, financial support for future gTLD applications, and free Kindles.
The ICANN board has now formally rejected the demand — so .amazon is still officially on the path to delegation — but has published mountains of clarification explaining that ACTO misinterpreted what the status change implied.
The board now says that the status change was necessary in order for ICANN to negotiate the inclusion of Public Interest Commitments — PICs, which would give ACTO the right to challenge Amazon if it breaches any of its cultural safeguards — in the .amazon contracts.
With ACTO’s Request for Reconsideration now dealt with, the ball moves into ACTO’s court.
Will ACTO come back to the negotiating table, or will it retain the hard line it has been adopting for the last few months? We’ll find out before long.