Panel doesn’t consider TLD in the first-ever new gTLD UDRP case

The first new gTLD domain name has been lost to a UDRP complaint.
The famous German bike maker Canyon Bicycles won canyon.bike from a registrant who said he’d bought the name — and others — in order to protect the company from cybersquatters.
The panelist in the case, WIPO’s Andrew Lothian, declined to consider the fact that the TLD was related to Canyon’s business in making his decision. Finding confusing similarity, he wrote:

The Panel finds that, given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the Policy that would preclude such an approach. However, the Panel considers that it is not necessary to do so in the present case.

Canyon had argued that the fact that it’s a .bike domain reinforced the similarity between the domain and the mark, but it’s longstanding WIPO policy that the TLD is irrelevant when determining confusing similarity.
The domain was registered under Whois privacy but, when it was lifted, Canyon looked the registrant up on social media and discovered he was very familiar with the world of bikes.
The registrant told WIPO that he’s registered Canyon’s mark “with the best of intentions”.
Apparently, he’s registered more than one famous brand in a new gTLD in the belief that the existence of the program was not wildly known, in order to transfer the domains to the mark holders.
He claimed “that many companies have been content with his actions” according to the decision.
But the fact that he’d asked for money from Canyon was — of course — enough for Lothan to find bad faith.
He also chose to use the fact that the registrant had made no attempt to remove the default Go Daddy parking page — which the registrar monetizes with PPC — as further evidence of bad faith.
The domain is to be transferred.

Roundup: industry reaction to US giving up IANA role

Members of the domain name industry and ICANN community reacted generally positively to the news Friday night that the US will step aside from its central role in ICANN oversight.
Several companies, organizations and individuals issued early statements in response. We present a summary of those to hit the wires so far here.
First, the so-called I* organizations (IETF, IAB, RIRs, ccTLD ROs, ISOC, and W3C), which manage the internet’s various technical functions and standards, issued a joint statement via ICANN:

Our organizations are committed to open and transparent multi-stakeholder processes. We are also committed to further strengthening our processes and agreements related to the IANA functions, and to building on the existing organizations and their roles. The Internet technical community is strong enough to continue its role, while assuming the stewardship function as it transitions from the US Government.

The Domain Name Association’s executive director Kurt Pritz said this:

The DNA welcomes a deliberate, thoughtful process, inclusive of all stakeholder views to determine the future of the IANA function. As our members are some of the most widely recognized customers of IANA, we will be playing an active role in the process moving forward. The US government performs admirably in this role and it is important that any new oversight mechanism perform as reliably and consistently, and in a manner that prevents the Internet from onerous regulations and/or content controls.

New gTLD portfolio applicant Donuts said:

The IANA function is very important to Internet stability, and Donuts supports the multistakeholder approach to managing this vital resource. As the largest applicant for new top-level domains, we look forward to providing a constructive contribution in this multi-stakeholder discussion. It’s critical that any new mechanisms for IANA oversight ensure not only stability and accountability but also uphold the vital public sector role in promoting Internet innovation and openness.

Lisa Hook, CEO of back-end registry provider Neustar, said in a press release:

We share the US government’s view that the time has come for ICANN to convene global stakeholders to develop the policies, procedures, and accountability framework needed to transition ultimate responsibility for the IANA functions, and we look forward to participating in that process.

Back-end and portfolio applicant Afilias said in its own press release:

We endorse the statements of the NTIA and the organizations noted above [the I*s] with respect to the maturation of these organizations and processes, and we are committed to continuing to contribute to the stewardship of the Internet as part of a globally inclusive, open and transparent multi-stakeholder community.

Michele Neylon, CEO of domain name registrar Blacknight Solutions said:

This is an incredibly historic and important day for Internet governance. As a member of the International governance and infrastructure communities I applaud this move away from a single government to a regulating body that represents the interests of the global community. However, the real challenge now lies ahead in identifying and implementing a strong, diverse community to oversee these crucial organizations.

Milton Mueller, the principal academic behind the Internet Governance Project blogged:

IGP has been leading the call for the US government to be consistent about its non-governmental approach to Internet governance since 2005. Naturally, we were gratified to see the Commerce Department finally come around to that position. Far from “giving up” something or “losing control,” the U.S. is sure to find that its policy has gained strength. We have just made it a lot harder for opponents of a free and open Internet to pretend that what they are really against is an Internet dominated by one hegemonic state.

The news broke rather late on a Friday night, with an NTIA press release and hastily convened ICANN press conference, after the story was leaked to the Washington Post.
There hasn’t been much time for formal written reactions yet, but I’m sure more will be forthcoming as people get into work on Monday morning.

Belgians do want a piece of Donuts’ new gTLD action

The Belgian government is blocking approval of Donuts’ bid for the new gTLD .spa until the company agrees to hand over up to 25% of its .spa profits to the community of the city of Spa.
It emerged in a letter from Spa published by ICANN this weekend that the city is also demanding a role in managing the TLD at the registry operator’s expense.
The gTLD has been applied for by Donuts and the Asia Spa and Wellness Promotion Council.
Not only does the string .spa match the name of the city, but also the English dictionary word “spa” is actually named after Spa, which has been known for centuries for its “healing” springs.
Despite this, Spa is not a capital city — it has roughly 10,000 inhabitants — so it does not qualify as a protected geographic string under the rules of ICANN’s new gTLD program.
Spa nevertheless wants a role in the TLD’s management, in order to protect the interests of itself and its local community, and wants some of the profits to benefit its local businesses.
According to the letter (pdf) from Spa outside attorney Phillippe Laurent, ASWPC has already signed a memorandum of understanding with the city. That MoU, published with the letter, states:

The turnover generated by the exploitation of the .SPA registry will be used in priority to defray reasonable out-of-pocket expenses incurred by the City as a result of its participation in the SPARC or any other of its activity related to the management and governance of the .SPA extension.
Additionally, 25% of the net profit generated by the domain names registered in the .SPA registry by any Belgian, Dutch, Luxembourgish, French or German person or entity will be earmarks to be contributed towards Internet and spa & wellness activities development in and for the City of Spa and its region, especially as related to the scope of the “.SPA” TLD, to be directed by the City of Spa.

The deal would also see ASWPC reserve 200 .spa domain names (included potential premiums such as poker.spa and golf.spa) for the city to do with as it pleases.
Donuts has refused to sign the MoU, saying it’s inconsistent with the Applicant Guidebook and sets a “bad precedent”. Spa has therefore refused to endorse its application.
The city has its national government on its side. In the April 2013 Beijing communique of the ICANN Governmental Advisory Committee, the GAC listed .spa as one of several bids needing “further consideration”.
This was reiterated in its Durban and Buenos communiques, with the GAC noting that “discussions” between “relevant parties” were “ongoing”.
Essentially, the GAC is delaying .spa from approval while Spa tries to get Donuts to agree to hand over part of its of .spa profits.
There was a somewhat testy exchange at the Buenos Aires meeting in November, after an ICANN director asked the GAC if it was appropriate for a governmental entity to try to get a financial benefit from an applicant.
The Belgian GAC representative responded later that “no money will flow to the city of Spa”, conceding that “a very small part of the profits of the registry will go to the community served by .spa”.
That now seems to be not entirely accurate.
The MoU sees Spa getting reimbursed for its self-imposed cost of inserting itself into the management of the registry, so some money will flow to it. But it will presumably be revenue-neutral to the city.
The issue of the 25% profit cut is a bit ambiguous though.
While the money would not flow directly into city coffers, the city would get the ability to direct how it was spent. Presumably, it could be spent on projects that Spa locals would otherwise look to the city to pay for.
With Donuts and Spa apparently at an impasse, ICANN recently told the GAC that it won’t sign contracts with either applicant, yet, but that it wants “a timeline for final consideration of the string”.
It also wants the GAC to “identify the ‘interested parties’ noted in the GAC advice.”
With Laurent’s letter and the MoU seemingly spelling out exactly what Spa wants and why, perhaps ICANN can move the issue closer to resolution at the Singapore meeting next week.
Is it a shakedown? Is it appropriate behavior for the GAC to hold an application hostage while it tries to obtain financial benefit for its local businesses? Or is Donuts unreasonably trying to exploit a city’s centuries-old cultural heritage for its own economic gain?

US to give up control over ICANN

In what can only be described as an historic announcement, the United States government tonight said that it will walk away from its control of the DNS root zone.
ICANN CEO Fadi Chehade said during a press conference tonight that the organization has begun a consultation to figure out “accountability mechanisms” that will replace the US role as ICANN’s master.
The news comes in the wake of Edward Snowden’s revelations about US spying, but Chehade and ICANN chair Steve Crocker said that the changes would have been made sooner or later anyway.
So what just happened?
Earlier this evening, the US National Telecommunications and Information Administration announced its “intent to transition key Internet domain name functions to the global multistakeholder community.”
That’s basically referring to the IANA contract, the US government procurement contract under which ICANN has the ability to make changes — essentially by recommendation — to the DNS root zone.
The current version of the contract is due to expire next year, and the hope is that when it does there won’t be any need for a renewal.
Between now and then, the ICANN community (that’s you) is tasked with coming up with something to replace it.
It’s going to be the hottest topic at the ICANN 49 meeting in Singapore, which kicks off a week from now, but it’s expected to be under discussion for much longer than that.
Chehade said during the press conference tonight that the idea is not to create a new oversight body to replace the NTIA. We seem to be talking about “mechanisms” rather than “organizations”.
He also said that the US government has made it plain that any attempt to replace the US with an intergovernmental body (ie, the International Telecommunications Union) will not be considered acceptable.
Whatever oversight mechanism replaces NTIA, it’s going to have to be “multistakeholder” — not just governments.
The root zone is currently controlled under a trilateral relationship between the NTIA, ICANN and Verisign.
Essentially, ICANN says “add this TLD” or “change the name servers for this TLD” and, after the NTIA has approved the change, Verisign implements it on its root zone servers. The other root zone operators take copies and the DNS remains a unique, reliable namespace.
The NTIA has said that it’s going to withdraw from this relationship.
One question that remains is whether Verisign will retain its important role in root zone management.
Chehade appeared slightly (only slightly) evasive on this question tonight, spending some time clarifying that Verisign’s root zone management contract is not the same as its .com contract.
I assume this prevarication was in order to not wipe billions off Verisign’s market cap on Monday, but I didn’t really get a good sense of whether Verisign’s position as a root zone manager was in jeopardy.
My guess is that it is not.
A second question is whether the US stepping away from the IANA function means that the Affirmation of Commitments between the US government and ICANN also has its days numbered.
Apparently it does.
Chehade and ICANN chair Steve Crocker pointed to the ICANN board’s decision a few weeks ago to create a new board committee tasked with exploring ways to rewrite the AoC.
And they said tonight that there’s no plan to retire the AoC. Rather, the idea is to increase the number of parties that are signatories to it.
The AoC, it seems, will be ICANN’s affirmation to the world, not just to the US government.

Common first name lost to URS complaint

The first controversial Uniform Rapid Suspension decision? Probably not.
An self-described “entrepreneur” from Texas has lost control of the domain dana.holdings after a URS complaint filed by Dana Holding, a vehicle component supplier. The domain has been suspended.
It’s the first URS case where the second-level string, in this case “dana”, has a hypothetical multitude of uses not related to the trademark holder’s brand.
The respondent, one Farris Nawas, said in his URS response:

Dana is a common Middle Eastern female name. My family is of Middle Eastern descent. My intention is to establish a holding company in my native country and not in the United States. Upon my registration of the domain name www.Dana.Holdings, I discovered that Dana Holdings is nationally registered in the United states. Out of Courtesy, I approached Dana Limited corporation myself to let them know that I have registered the domain name with the intention of starting my own holding company.

The National Arbitration Forum URS examiner, Darryl Wilson, didn’t buy it
While Nawas was not wrong about Dana being a common first name, I feel I’m on pretty safe ground saying the excuse about starting his own holding company was utter nonsense.
Nawas owns over 200 domains, most of which were registered during the first days of new gTLDs general availability and many of which appear to be cut-and-dried cases of outright cybersquatting.
He was called out by Forbes for registering tommyhilfiger.clothing. I’ve discovered he also owns such as names 4san.ventures and akfen.holdings, among others, which also seem to match company names.
Evidence of a pattern of cybersquatting can be used by URS panels to find bad faith, but that doesn’t seem to have happened in this case.
Rather, Wilson seems to have taken Nawas’ offer to sell the domain to Dana for “an unspecified amount” as evidence that he’s a wrong ‘un. Wilson found his explanation “dubious at best”.

Rockefeller slams .sucks as “predatory shakedown”

US Senator Jay Rockefeller today came out swinging against the proposed .sucks new gTLD, saying it looks like little more than a “predatory shakedown” by applicants.
In a letter to ICANN (pdf), Rockefeller has particular concern about Vox Populi, the .sucks applicant owned by Canadian group Momentous.
As we’ve previously reported, Vox Populi plans to charge trademark owners $25,000 a year for defensive registrations and has already started taking pre-registrations even though .sucks is still in contention.
Rockefeller told ICANN:

I view it as little more than a predatory shakedown scheme… A gTLD like “sucks” has little or no socially redeeming value and it reinforces many people’s fears that the purpose of the gTLD expansion is to enrich the domain name industry rather than benefit the broader community of internet users.

Unusually, I find myself in agreement with Rockefeller, who chairs the Senate’s Commerce, Science and Transportation Committee — Vox Populi’s plan does bring the domain industry into disrepute.
But it’s not the only applicant for .sucks. Top Level Spectrum and Donuts have also applied for the string.
While neither has revealed their proposed pricing, in Donuts’ case a blocking registration via its Domain Protected Marks List service will cost substantially less on a per-domain basis.
Rockefeller asks that ICANN keep his thoughts in mind when reviewing the application, and I’m sure ICANN will pay lip service to his concerns in response, but I don’t think the letter will have much impact.
A bigger question might be: does Rockefeller’s letter foreshadow more Congressional hearings into the new gTLD program?
The last one, which Rockefeller chaired (for about five minutes, before he buggered off to do more important stuff) was in December 2011, and they have tended to happen every couple of years.
Such a hearing would come at an inopportune moment for ICANN, which is trying to distance itself from the perception of US oversight in light of the Edward Snowden spying revelations.
It’s been setting up offices all over the world and championing the forthcoming NetMundial internet governance meeting, which is happening in Brazil next month.

ICANN hires Walmart alum as CIO

ICANN has hired itself a new C-level executive.
Ashwin Rangan started today as chief innovation and information officer, meaning he’s going to be in charge of ICANN’s oft-criticized IT systems.
He most recently held the CIO role at Edwards Lifesciences, but he’s also held similar positions at MarketShare, Walmart, and Rockwell Semiconductors.
He’s based in ICANN’s Los Angeles headquarters, which the organization is now referring to as a “hub” office.
In keeping with ICANN’s international flavor (and hiring policy), he speaks three Indian languages in addition to English.
Interestingly, his LinkedIn URL is /theinsightfulcio‎, showing he understands the value of a decent web address, even if it is after the slash. I didn’t even know LinkedIn did vanity URLs.

Delays still dog many new gTLD applicants

With dozens of new gTLDs currently live and on sale, it’s easy to forget that many applicants are still in ICANN limbo due to several still-unresolved issues with the evaluation process.
The New gTLD Applicant Group wrote to ICANN on Friday to express many of these concerns.
First, NTAG is upset that resolution of the name collisions issue is not moving as fast as hoped.
JAS Advisors published its report into collisions, which recommends “controlled interruption” as a solution, last Thursday. But it’s currently open for public comment until April 21.
That would push approval of the plan by ICANN’s board beyond the Singapore meeting taking place at the end of March, at least a month later than originally expected.
NTAG secretary Andrew Merriam argues that the 42-day comment period should be reduced to 21 days, with ICANN and JAS conducting webinars this week to discuss the proposal with applicants.
Second, NTAG is upset that ICANN has pushed out the start date for the first contention set auctions from March to June. It’s asking ICANN to promise that there will be no further delays.
Third, NTAG says that many dot-brands are unable to enter into contracting talks with ICANN until Specification 13 of the Registry Agreement, which contains opt-outs for single-registrant zones, is finalized.
That’s not currently expected to happen until Singapore, apparently because there were no scheduled meetings of the ICANN board’s New gTLD Program Committee until then.
NTAG also complains about the length of time it’s taking to decide the first Community Priority Evaluations, which is apparently due to quality assurance measures (very wise given the controversy caused by the lack of oversight on new gTLD objections, if you ask me).
The NGPC has a newly scheduled meeting this Wednesday, with new gTLDs on the agenda, but it’s not yet clear whether any of NTAG’s issues are going to be addressed.

Board confirms: ICANN seeks non-US HQ

ICANN’s board of directors has given the clearest indication yet that the organization wants to set up an HQ overseas, further loosening ties with the US government.
The board has formed six new “President’s Globalization Advisory Groups”, made up of half a dozen directors each, one of which has been tasked with advising ICANN on ways to:

Establish complimentary [sic] parallel international structure to enhance ICANN’s global legitimacy. Consider complementary parallel international structure within scope of ICANN’s mandate.

This indicates that ICANN’s reported plan to base itself in Geneva may not be so far-fetched after all, but it also indicates that ICANN currently does not anticipate doing away with its original HQ in Los Angeles.
ICANN already has several offices around the world, but recently there’s been talk of it embedding itself in Switzerland, as an “international organization”, more deeply.
As we’ve previously reported, ICANN may not relocate outside of the US due to its Affirmation of Commitments with the US Department of Commerce, which requires it to remain a US non-profit.
But another of the three panels set up by the board this week will advise ICANN on how to create an “enhanced Affirmation of Commitments.”
Other panels will explore the globalization of the IANA function — currently operated under a procurement contract with Commerce — and the root server system, which is independent operated but heavily US-based.
The ICANN board said in its resolution:

the continued globalization of ICANN must evolve in several ways, including: partnerships in the broader Internet eco-system to strengthen multistakeholder Internet governance frameworks; strengthening ICANN itself, including affirmations of commitments and relationships among the stakeholders; evolving the policy structures to serve and scale to the needs of the global community, and identify opportunities for the future legal structures and IANA globalization.

The plan is for these panels talk to the community at the Singapore meeting next month, before reporting back to the board before ICANN meets for its 50th public meeting in London this coming June.
This week’s move is the latest in a series of decisions made by the ICANN board following the spying revelations of former NSA contractor Edward Snowden and the subsequent consternation they caused in capitals around the world.
Brazil is set to host a meeting to discuss these kinds of internet governance matters with ICANN and its coalition of the willing in Sao Paulo this April.

ICANN heading to Geneva after all?

ICANN could wind up being based in Geneva as a result of the current post-Snowden internet governance discussions, according to a report in a Swiss newspaper.
Le Temps, citing several anonymous ICANN sources, reported today that an HQ move from Los Angeles to Geneva was a “very likely scenario”.
That’s as an alternative to allowing its functions to be taken over by the International Telecommunications Union, the paper reported.
It’s not the first time a move to Geneva has been touted.
Back in September, DI rubbished — and ICANN denied — claims that the organization had already put the wheels in motion for a move to Switzerland.
It still appears to be unlikely in the short term, and for the same reason: ICANN’s Affirmation of Commitments with the US Department of Commerce requires it to remain a US non-profit corporation.
But the AoC is now open for discussion again.
Barely a month after the Geneva move was first raised as a possibility, Edward Snowden’s revelations about widespread US spying on internet users had led to the Montevideo Declaration, in which ICANN spoke of the need for further “internationalization” of ICANN.
Later last October, ICANN CEO Fadi Chehade called America’s unique role in ICANN’s oversight “just not sustainable“.
Coming this April, governments, standards bodies, industry and others are set to meet in Sao Paolo, Brazil, for early-stage discussions that may eventually lead to the US cutting ICANN loose.
If ICANN does leave the US, Geneva does seem like the most plausible venue for its headquarters. It already has a small office there and has obtained international non-profit status for its local subsidiary.