String confusion in disarray as Demand’s .cam loses against Verisign’s .com

Demand Media is demanding an ICANN review of its objections policy, after its applied-for new gTLD .cam was beaten in a String Confusion Objection by .com registry Verisign.
A International Centre for Dispute Resolution panelist has ruled (pdf) that .cam and .com are too confusingly similar to coexist, meaning Demand’s bid for .cam must be rejected by ICANN.
But the ruling by Urs Laeuchli conflicts with two other ICDR panel decisions on .cam, which both found that the string is NOT confusingly similar to .com and therefore can be delegated.
So while Demand’s .cam bid, under a strict reading of the rules, is now supposed to be rejected, applications for identical strings filed by AC Webhosting and dotAgency can go ahead.
ICANN has been thrown a curve ball it is not yet fully prepared to deal with.
As Akram Atallah, president of ICANN’s Generic Domains Division, told DI last week, it’s possible that the policy or the implementation of that policy may need to be revisited by ICANN and the community.
United TLD, the Demand Media subsidiary that applied for .cam, is now calling for precisely that, with vice president of business and legal affairs Statton Hammock writing today:

String confusion objections are meant to be applicant agnostic and have nothing to do with the registration or use of the new gTLD. What matters in string confusion objections is whether a string is visually, aurally or, according to ICANN’s Applicant Guidebook, otherwise “so nearly resembles another that it is likely to deceive or cause confusion.” Individuals may disagree on whether .CAM and .COM are similarly confusing, but there can be no mistake that United TLD’s .CAM string, AC Webhosting’s .CAM string, and dotAgency Limited’s .CAM string are all identical. Either all three applications should move forward or none should move forward.

The .cam cases are not alone in presenting ICANN with SCO problems.
Last week, Donuts’ bid for .pets was ruled confusingly similar to Google’s .pet, despite previous ICDR cases finding that plurals and singulars are not too confusing to coexist.
Where the .cam panelists disagreed
While there were three .cam cases, two of them were decided by the same panelist. It seems that both panelists were provided with very similar sets of evidence in all three cases.
It’s relevant to note that neither panelist — unlike some of their colleagues in other cases — thought it was appropriate to apply trademark law such as the DuPont factors in their decisions.
They did, however, consider the expected use cases of .cam.
All three applicants take .cam as short for “webcam” or “camera” and would target registrants interested in those fields (a lot of the use will likely be pornographic — AC Webconnecting is a porn firm after all).
But all three applicants also want to run “open” gTLDs, with no registration restrictions.
ICDR panelist Murray Smith was in charge of both the AC Webconnecting and dotAgency cases. He addressed expected usage explicitly in dotAgency, and explained why:

It is not just the visual, phonetic and conceptual similarity between the words that must be taken into account. In my view the greater emphasis should be focused on the use of the disputed extensions in the context of modern Internet usage. It is this context that compels the conclusion that an average Internet user would not be confused and would know that a .com website is probably a commercial website while a .cam websites would be something more focused in a particular field.

In AC Webconnecting, he wrote:

I agree that a consumer would quickly realize that a .cam website is likely associated with photography or camera use and is different than a .com website in use generally by a myriad of commercial entities.

So he’s putting the “greater emphasis” on usage — a factor that is not explicitly mentioned in the Applicant Guidebook’s description of the SCO and which may quite often differ between applicants.
Right there, in Smith’s interpretation of his task, we have a reason why SCOs will produce different results for identical strings.
I find Smith’s thinking baffling for a couple of reasons.
First, “a consumer would quickly realize that a .cam website is likely associated with photography” seems to ignore the existence of a bazillion .com web sites that are also associated with photography.
When did “commercial entities” and “photography or camera use” become mutually exclusive? Is photographyblog.com not confusingly similar to photographyblog.cam?
Second, he ignores the fact that basically anyone will be able to register a .cam web site for basically any purpose. None of the applicants want to restrict the gTLD to camera-related stuff.
ICDR panelist Laeuchli, in the Demand Media .cam case, raised this precise point, saying:

“.com” and “.cam” would use the same channels appealing to a broad audience. Even though according to Applicant, its envisioned TLD will “likely appeal” to a specific audience, it plans to operate “.cam” as an open gTLD. This would lead to extensive overlap.

Panelist Smith has some other notions about confusion that seem to defy common sense. He wrote in the AC Webconnecting case:

The .com TLD is the most widely recognized string in the Internet world. No reasonable Internet user would fail to recognize the .com TLD. The very reputation of the .com name serves to limit the potential for an average Internet user to be confused by the proposed .cam TLD. It is indeed unlikely that an online consumer would confuse a .com website with a .cam website.

Does this not strike anyone else as bad thinking?
It seems to me to be a little like saying that it’s perfectly okay to market a brand of carbonated beverage called Cuke, because Coke is so famous that nobody could possibly be confused. I don’t know where the law stands on that issue, but I’m pretty sure Coke wouldn’t be happy about it.
There’s also some weirdness in Laeuchli’s decision in the Demand case.
He puts some weight on the similarity scores produced by the controversial Sword algorithm in his decision, but apparently without doing even the basic research. He writes in his findings:

No matter what the standards and purpose the ICANN SWORD algorithm includes, it has comparative value.
…
Since pairs such as “God” and “dog” (85%) reach similarity scores of 84% and higher, how much more similar would “cxm” and “cxm” be (x being replaced with a vowel)!

The answer is that, according to Sword, they’re less similar. Sword scores “cam” v “com” at 63%.
Laeuchli knows it’s 63%, because he makes reference to that fact in his summary of Verisign’s evidence. He doesn’t need to speculate about the number based on what “god” v “dog” scores (and if he did the “dog” v “god” query himself, why on earth didn’t he just query “com” v “cam” too?)
His finding that .cam and .com will cause probable confusion seems to be based largely on expert witness testimony provided by both Verisign and Demand, in which he found Verisign’s more persuasive.
This evidence seems to have largely comprised the opinions of linguists, examining mouth shapes and acoustic frequencies, and market research looking into internet user behavior. As none of it has been published, it’s difficult to judge which side had the better arguments.
But it’s undeniably about the similarity of the strings, rather than the proposed usage, which makes Demand Media’s statement today — that SCOs “are meant to be applicant agnostic and have nothing to do with the registration or use of the new gTLD” — quite confusing.
Demand lost its case based on the string similarity, whereas the other two applicants won theirs based on the usage.
Perhaps Demand senses that its .cam application will not be immediately rejected if ICANN reopens the debate about string similarity. If think it’s probably correct.

Google beats Donuts in objection — .pet and .pets ARE confusingly similar

Google has won a String Confusion Objection against rival new gTLD applicant Donuts, potentially forcing .pet and .pets into the same contention set.
The shock ruling by International Centre for Dispute Resolution panelist Richard Page goes against previous decisions finding singulars and plurals not confusingly similar.
In the 11-page decision, Page said he decided to not consider the reams of UDRP precedent or US trademark law submitted by the two companies, and seems to have come to his opinion based on a few simple facts:

Objector has come forward with the following evidence for visual, aural and meaning similarity. Visually, the words are identical but for the mere addition of the letter “s”. Aurally, the word “pets” is essentially phonetically equivalent to the word “pet”. The term “pet” is pronounced as it is spelled, “pet”. The term “pets” is likewise pronounced as “pets” in essentially a phonetically equivalent fashion. The terms each have only one syllable, and they have the same stress pattern, with primary accent on the initial “pe” portion of the words. In commercial meaning, the terms show no material difference. As English nouns, “pets” is the pluralization of “pet”.
The visual similarity and algorithmic score are high, the aural similarity is high, the meaning similarity is high. Objector has met its burden of proof. The cumulative impact of these factors is such that the Expert determines that the delegation of <.pet> gTLD and the <.pets> gTLD into the root zone will cause a probability of confusion.

Page did take into account the similarity score provided by the Sword algorithm — for .pet and .pets it’s actually a fairly weak 72% — in his thinking on visual similarity.
But he specifically rejected Donuts’ defense that co-existence of plurals at the second level was proof that plural/singular gTLDs could also co-exist at the top-level, saying:

The rapid historical development of the Internet and the proliferation of domain names over the past two decades has taken place without the application of the string confusion standard now established for gTLDs. Therefore, the Expert has not considered the current coexistence of pluralized second-level TLDs or similarities between country code TLDs and existing gTLDs in the application of the string confusion standard in this proceeding.

Can: open. Worms: everywhere.
The decision stands in stark contrast to the decision (pdf) of Bruce Belding in the .hotel v .hotels case, in which it was found that the two strings were “sufficiently visually and audibly different”.
Likewise, the panelist in .car v .cars (pdf) found that Google had not met the high evidential bar to proving the “probability” rather than mere “possibility” of confusion.
One has to assume that the evidence Google submitted in .car is fairly similar to the evidence it submitted in .pets.
Are String Confusion Objections just a crap shoot, the outcome depending on which panelist you get? It’s probably too early to say for sure, but it’s looking like a possibility.
The big test will come with the next .pets decision. Afilias, the other .pet applicant, has also filed an SCO against Donuts over its .pets bid.
What if the panel in the Afilias case goes the other way? Will Donuts be in a contention set with Google and Afilias or won’t it?
I asked Akram Atallah, president of ICANN’s Generic Domains Division, about this yesterday and he said that ICANN basically doesn’t know, and that it might have to refer back to the community for advice.
Read the Atallah interview here and the .pets decision (pdf) here.

Interview: Atallah on new gTLD objection losers

Filing a lawsuit against a competitor won’t stop ICANN rejecting your new gTLD application.
That’s according to Akram Atallah, president of ICANN’s Generic Domains Division, who spoke to DI yesterday about possible outcomes from new gTLD objection rulings.
He also said that applicants that believe they’ve been wronged by the objection process may have ways to appeal the decisions and addressed what happens if objection panels make conflicting decisions.
Lawsuits won’t stay ICANN’s hand
In light of the lawsuit by Del Monte International GmbH against Del Monte Corp, as reported by Domain Name Wire yesterday, I asked Atallah if ICANN would put applications on hold pending the outcome of legal action.
The GmbH lost a Legal Rights Objection filed by the Corp, which is the older company and owner of the “Del Monte” trademark pretty much everywhere, meaning the GmbH’s bid, under ICANN rules, must fail.
Atallah said lawsuits should not impact ICANN’s processes.
“For us it’s final,” Atallah said. “If they have to go outside and take legal action then the outcome of the legal action will be enforceable by law and we will have to abide by it. But from our perspective the [objection panel’s] decision is final.”
There might be ways to appeal
In some cases when an applicant loses an objection — such as a String Confusion Objection filed by an existing TLD or an LRO filed by a trademark owner — the only step left is for it to withdraw its application and receive whatever refund remains.
There have been no such withdrawals so far.
I asked Atallah whether there were any ways to appeal a decision that would lead to rejection.
“The Applicant Guidebook is very clear,” he said. “When an applicant loses an objection, basically their application will not proceed any further. We would like to see them withdraw their application and therefore finish the issue.”
“Of course, as with anything ICANN, they have some other avenues for asking for reconsidering the decision,” he added. “Basically, going to the Ombudsman, filing a Reconsideration Request, or even lobbying the board or something.”
I wondered whether the Reconsideration process would apply to decisions made by third parties such as arbitration panels, and Atallah admitted that the Guidebook was “murky” on this point.
“There are two mentions in the Guidebook of this, I think,” he said. “One mentions that it [the panel’s decision] is final — the application stops — the other mentions that it is advice to staff.”
That seems to be a reference to the Guidebook at 3.4.6, which states:

The findings of the panel will be considered an expert determination and advice that ICANN will accept within the dispute resolution process.

This paragraph suggests that ICANN staff have to accept the objection panel’s decision. That would make it an ICANN decision to reject the application, which can be challenged under Reconsideration.
Of course, the Reconsideration process has yet to see ICANN change its mind on any matter of substance. My feeling is that to prevail you’d at a minimum have to present the board with new information not available at the time the original decision was made.
What if different panelists reach opposite conclusions?
While the International Centre for Dispute Resolution has not yet published its panels’ decisions in String Confusion Objection cases, a few have leaked out.
(UPDATE: This turns out not to be correct. The decisions have been published, but the only way to find them is via obscured links in a PDF file buried on the ICDR web site. Way to be transparent, ICDR.)
I’ve read four, enough to see that panelists are taking diverse and sometimes opposing views in their decision-making.
For instance, a panelist in .car v .cars (pdf) decided that it was inappropriate to consider trademark law in his decision, while the panelist in .tv v .tvs (pdf) apparently gave trademark law a lot of weight.
How the applicants intend to use their strings — for example, one may be a single-registrant space, the other open — seems to be factoring into panelists’ thinking, which could lead to divergent opinions.
Even though Google’s .car was ruled not confusingly similar to Donuts’ .cars, it seems very possible that another panelist could reach the opposite conclusion — in one of Google’s other two .cars objections — based on trademark law and proposed usage of the gTLD.
If that were to happen, would only one .cars application find itself in the .car contention set? Would the two contention sets be linked? Would all three .cars applications wind up competing with .car, even if two of them prevailed against Google at the ICDR?
It doesn’t sound like ICANN has figured out a way to resolve this potential problem yet.
“I agree with you that it’s an issue to actually allow two panels to review the same thing, but that’s how the objection process was designed in the Guidebook and we’d just have to figure out a way to handle exceptions,” Atallah said.
“If we do get a case where we have a situation where a singular and a plural string — or any two strings actually — are found to be similar, the best outcome might be to go back to the GNSO or to the community and get their read on that,” he said. “That might be what the board might request us to do.”
“There are lots of different ways to figure out a solution to the problem, it just depends on how big the problem will be and if it points to an unclear policy or an unclear implementation,” he said.
But Atallah was clear that if one singular string is ruled confusing to the plural version of the same string, that panel’s decision would not cause all plurals and singulars to go into contention.
“If a panel decides there is similarity between two strings and another panel said there is not, it will be for that string in particular, it would not be in general, it would not affect anything else,” he said.
ICANN, despite Governmental Advisory Committee advice to the contrary, decided in late June that singular and plural gTLDs can coexist under the new regime.

Chehade hopes for lower round two gTLD fees

ICANN CEO Fadi Chehade has said he hopes that new gTLD application fees will be lower in the second round.
Speaking to Marketplace in a brief audio interview yesterday, he said:

As we go to round two, which everyone is clamoring for us to open, we will reassess the costs. We are a non-profit and therefore if the learnings from this first round lead us to a different fee — and I hope personally a lower fee so more people can participate — we will adjust that as we go.

The fees in the current round were $185,000, though the refund schedule means only successful applicants pay the full fee.
I’ve heard a couple of murmurings recently — nothing concrete as yet — that the cost of the program is actually running quite close to the original expectations that set the fee at $185,000.
Many applications have been withdrawn very close to the deadline for receiving their full pre-Initial Evaluation result refund, when one assumes that most of the IE costs have already been incurred.

Dotless domains are dead

ICANN has banned dotless gTLDs, putting a halt to Google’s plans to run .search as a dotless search service and confounding the hopes of some portfolio applicants.
ICANN’s New gTLD Program Committee, acting with the powers of its board of directors passed the resolution on Tuesday. It was published this morning. Here’s the important bit (links added):

Resolved (2013.08.13.NG02), in light of the current security and stability risks identified in SAC053, the IAB statement and the Carve Report, and the impracticality of mitigating these risks, the NGPC affirms that the use of dotless domains is prohibited.

The current version of the Applicant Guidebook bans dotless domains (technically, it bans apex A, AAAA and MX records) but leaves the door open for registries to request an exception via Extended Evaluation.
This new decision closes that door.
The decision comes a week after the publication of Carve Systems’ study of the dotless domain issue, which concluded that the idea was potentially “dangerous” and that if ICANN intended to allow them it should do substantial outreach to hardware and software makers, essentially asking them to change their products.
The Internet Architecture Board said earlier that “dotless domains are inherently harmful to Internet security.”
Microsoft, no doubt motivated in part at least by competitive concerns in the search market, had repeatedly implored ICANN to implement a ban on security grounds.
Google had planned to run .search as a browser service that would allow users to specify preferred search engines. I doubt the dotless ban will impact its application’s chances of approval.
Donuts and Uniregistry, which together have applied for almost 400 gTLDs, had also pushed for ICANN to allow dotless domains, although I do not believe their applications explicitly mentioned such services.

NTAG rubbishes new gTLD collision risk report

The New gTLD Applicants Group has slated Interisle Consulting’s report into the risk of new gTLDs causing security problems on the internet, saying the problem is “overstated”.
The group, which represents applicants for hundreds of gTLDs and has a non-voting role in ICANN’s GNSO, called on ICANN to reclassify hundreds of “Uncalculated” risk strings as “Low” risk, meaning they would not face as substantial a delay before or uncertainty about their eventual delegation.
But NTAG said it “agreed” that the high-risk .corp and .home “should be delayed while further studies are conducted”. The current ICANN proposal is actually to reject both of these strings.
NTAG was responding to ICANN’s proposal earlier this month to delay 523 applications (for 279 strings) by three to six months while further studies are carried out.
The proposal was based on Interisle’s study of DNS root server logs, which showed many millions of daily queries for gTLDs that currently do not exist but have been applied for.
The worry is that delegating those strings would cause problems such as downtime or data leakage, where sensitive information intended for a recipient on the same local network would be sent instead to a new gTLD registry or one of its (possibly malicious) registrants.
NTAG reckons the risk presented by Interisle has been overblown, and it presented a point-by-point analysis of its own. It called for everything except .corp and .home to be categorized “Low” risk, saying:

We recognize that a small number of applied for names may possibly pose a risk to current operations, but we believe very strongly that there is no quantitative basis for holding back strings that pose less measurable threat than almost all existing TLDs today. This is why we urge the board to proceed with the applications classified as “Unknown Risk” using the mitigations recommended by staff for “Low Risk” strings. We believe the 80% of strings classified as “Low Risk” should proceed immediately with no additional mitigations.

The group pointed to a recent analysis by Verisign (which, contrarily, was trying to show that new gTLDs should be delayed) which included data about previous new gTLD delegations.
That report (pdf) said that .xxx was seeing 4,018 look-ups per million queries at the DNS root (PPM) before it was delegated. The number for .asia was 2,708.
If you exclude .corp and .home, both of those PPM numbers are multiples larger than the equivalent measures of query volume for every applied-for gTLD today, also according to Verisign’s data.
NTAG said:

None of these strings pose any more risk than .xxx, .asia and other currently operating TLDs.
…
the least “dangerous” current gTLD on the chart, .sx, had 331 queries per million in 2006. This is a higher density of NXDOMAIN queries than all but five proposed new TLDs. 4 Again, .sx was launched successfully in 2012 with none of the problems predicted in these reports.

Verisign’s report, which sought to provide a more qualitative risk analysis based on some data-supported guesses about where the error traffic is coming from and why, anticipated this interpretation.
Verisign said:

This could indicate that there is nothing to worry about when adding new TLDs, because there was no global failure of DNS when this was done before. Alternately, one might conclude that traffic volumes are not the only indicator of risk, and the semantic meaning of strings might also play a role. We posit that in some cases, those strings with semantic meanings, and which are in common use (such as in speech, writing, etc.) pose a greater risk for naming collision.

The company spent most of its report making somewhat tenuous correlations between its data (such as a relatively large number of requests for .medical from Japanese IP addresses) and speculative impacts (such as “undiagnosed system failures” at “a healthcare provider in Japan”).
NTAG, by contrast, is playing down the potential for negative outcomes, saying that in many cases the risks introduced by new gTLDs are no different from collision risks at the second level in existing TLDs.

Just as the NTAG would not ask ICANN to halt .com registrations while a twelve month study is performed on these problems, we believe there is no reason to introduce a delay in diversifying the Internet’s namespace due to these concerns.

While it stopped short of alleging shenanigans this time around, NTAG also suggested that future studies of root server error traffic could be gamed if botnets were engaged to crapflood the roots.
Its own mitigation plan, which addresses Interisle’s specific concerns, says that most of the reasons that non-existent TLDs are being looked up are either not a problem or can be easily mitigated.
For example, it says that queries for .youtube that arrived in the form of a request for “www.youtube” are probably browser typos and that there’s no risk for users if they’re taken to the YouTube dot-brand instead of youtube.com.
In another example, it points out that requests for “.cisco” or “.toshiba” without any second-level domains won’t resolve anyway, if dotless domains are banned in those TLDs. (NTAG, which has influential members in favor of dotless domains, stopped short of asking for a blanket ban.)
The Interisle report, and ICANN’s proposal to deal with it, are open for public comment until September 17. NTAG’s response is remarkably quick off the mark, for guessable reasons.

First string confusion decisions handed down, Verisign loses against .tvs

The International Centre for Dispute Resolution has started delivering its decisions in new gTLD String Confusion Objections, and we can report that Verisign has lost at least one case.
ICDR expert Stephen Strick delivered a brief, five-page ruling in the case of Verisign vs. T V Sundram Iyengar & Sons yesterday, ruling that .tvs is not confusingly similar to .tv.
TVS is a $6-billion-a-year, 100-year-old Indian conglomerate, while .tv is the ccTLD for Tuvalu, which Verisign manages because of its similarity of meaning to “television”.
It’s impossible to glean from the decision (pdf) what Verisign’s argument comprised. The summary is just two sentences long.
But TVS, in response, appears to have relied to an extent on the “DuPont factors” a 13-point test for trademark confusion that came out of a 1973 case in the US.
That’s the same precedent that has been found relevant in many Legal Rights Objections in cases handled by WIPO.
The “discussion and reasons for determination” section of the .tvs decision, in which Strick found that confusion was possible but not “probable”, amounts to just four sentences.
Here’s almost all of it. Emphasis in original:

in order for the Objector to prevail, Objector must prove that the co-existence of the two TLDs in question would probably result in user confusion. Given the analysis of the thirteen factors cited by Applicant derived from the DuPont case cited above, I find that Objector has failed to meet its burden of proof regarding the probability of such confusion. I note that while the co-existence of the two TLDs that are the subject of this proceeding may result in confusion by users, Objector has failed to meet its burden of proof to establish the likelihood or probability that users will be confused.
In considering parties’ arguments, I was persuaded, in part, by Applicant’s arguments relating to the commercial impression of the TVS TLD, including the proof offered by Applicant as to the longevity of the TVS brand, the limited nature of the gTLD’s intended use, the dissimilarity of the goods or services associated respectively with the two strings, ie TVS’s association with automobile products, the fact that TVS’s brand is associated with capital letters (whereas Objector’s .tv is in lower case), the fact that TVS is well known and associated with its companys’ [sic] brands, the lengthy market interface and the long historical co-existence of TVs and tv without evidence of confusion in the marketplace.

The geeks among you will no doubt be screaming at your screen right now: “WTF? He thought CASE was relevant?”
Yes, apparently the fact that the TVS trademark is in upper case makes a difference, despite the fact that the DNS is completely case-insensitive. Bit of a head-scratcher.
I understand several more decisions have also been sent to applicants and objectors, but they’re not yet pubicly available.
The ICDR’s web site for new gTLD decisions has been down for several days, returning 404 errors.

New US trademark rules likely to exclude many dot-brand gTLDs

The US Patent and Trademark Office plans to allow domain name registries to get trademarks on their gTLDs.
Changes proposed this week seem to be limited to dot-brand gTLDs and would not appear to allow registries for generic strings — not even “closed” generics — to obtain trademarks.
But the rules are crafted in such a way that single-registrant dot-brands might be excluded.
Under existing USPTO policy, applications for trademarks that consist solely of a gTLD cannot be approved, because they don’t identify the source of goods and services.
If “.com” were a trademark, one might have to assume that the source of Amazon.com’s services was Verisign, which is plainly not the case.
But the new gTLD program has invited in hundreds of gTLDs that exactly match existing trademarks. The USPTO said:

Some of the new gTLDs under consideration may have significance as source identifiers… Accordingly, the USPTO is amending its gTLD policy to allow, in some circumstances, for the registration of a mark consisting of a gTLD for domain-name registration or registry services

In order to have a gTLD trademark approved, the applicant would have to pass several tests, substantially reducing the number of marks that would get the USPTO’s blessing.
First, only companies that have signed a Registry Agreement with ICANN would be able to get a gTLD trademark. That should continue to prohibit “front-running”, in which a gTLD applicant tries to secure an advantage during the application process by getting a trademark first.
Second, the registry would have to own a prior trademark for the gTLD string in question. It would have to exactly match the gTLD, though the dot would not be considered.
It would have to be a word mark, without attached disclaimers, for the same types of goods and services that web sites within the gTLD are supposed to provide.
What this seems to mean is that registries would not be able to get trademarks on closed generics.
You can’t get a US trademark on the word “cheese” if you sell cheese, for example, but you can if you sell a brand of T-shirts called Cheese.
So you could only get a trademark on “.cheese” as a gTLD if the class was something along the lines of “domain name registration services for web sites devoted to selling T-shirts”.
Third, registries would have to present a bunch of other evidence demonstrating that their brand is already so well-known that consumers will automatically assume they also own the gTLD:

Because consumers are so highly conditioned and may be predisposed to view gTLDs as non-source indicating, the applicant must show that consumers already will be so familiar with the wording as a mark, that they will transfer the source recognition even to the domain name registration or registry services.

Fourth, and here’s the kicker, the registry would have to show it provides a “legitimate service for the benefit of others”. The USPTO explained:

To be considered a service within the parameters of the Trademark Act, an activity must, inter alia, be primarily for the benefit of someone other than the applicant.
…
While operating a gTLD registry that is only available for the applicant’s employees or for the applicant’s marketing initiatives alone generally would not qualify as a service, registration for use by the applicant’s affiliated distributors typically would.

In other words, a .ford as a single-registrant gTLD would not qualify for a trademark, but a .ford that allowed its dealerships around the world to register domains would.
That appears to exclude many dot-brand applicants. In the current batch, most dot-brands expect to be the sole registrant as well as the registry, at least at first.
Some applications talk in vague terms about also opening up their namespace to affiliates, but in most applications I’ve read that’s a wait-and-see proposition.
The new USPTO rules, which are open for comment to people who have registered with its web site, would appear to apply to a very small number of applicants at this stage.

The UK is going nuts about porn and Go Daddy and Nominet are helping

In recent months the unhinged right of the British press has been steadily cajoling the UK government into “doing something about internet porn”, and the government has been responding.
I’ve been itching to write about the sheer level of badly informed claptrap being aired in the media and halls of power, but until recently the story wasn’t really in my beat.
Then, this week, the domain name industry got targeted. To its shame, it responded too.
Go Daddy has started banning certain domains from its registration path and Nominet is launching a policy consultation to determine whether it should ban some strings outright from its .uk registry.
It’s my beat now. I can rant.
For avoidance of doubt, you’re reading an op-ed, written with a whisky glass in one hand and the other being used to periodically wipe flecks of foam from the corner of my mouth.
It also uses terminology DI’s more sensitive readers may not wish to read. Best click away now if that’s you.
The current political flap surrounding internet regulation seems emerged from the confluence of a few high-profile sexually motivated murders and a sudden awareness by the mainstream media — now beyond the point of dipping their toes in the murky social media waters of Twitter — of trolls.
(“Troll” is the term, rightly or wrongly, the mainstream media has co-opted for its headlines. Basically, they’re referring to the kind of obnoxious assholes who relentlessly bully others, sometimes vulnerable individuals and sometimes to the point of suicide, online.)
In May, a guy called Mark Bridger was convicted of abducting and murdering a five-year-old girl called April Jones. It was broadly believed — including by the judge — that the abduction was sexually motivated.
It was widely reported that Bridger had spent the hours leading up to the murder looking at child abuse imagery online.
It was also reported — though far less frequently — that during the same period he had watched a loop of a rape scene from the 2009 cinematic-release horror movie Last House On The Left
He’d recorded the scene on a VHS tape when it was shown on free-to-air British TV last year.
Of the two technologies he used to get his rocks off before committing his appalling crime, which do you think the media zeroed in on: the amusingly obsolete VHS or the golly-it’s-all-so-new-and-confusing internet?
Around about the same time, another consumer of child abuse material named Stuart Hazell was convicted of the murder of 12-year-old Tia Sharp. Again it was believed that the motive was sexual.
While the government had been talking about a porn crackdown since 2011, it wasn’t until last month that the prime minister, David Cameron, sensed the time was right to announce a two-pronged attack.
First, Cameron said he wants to make it harder for people to access child abuse imagery online. A noble objective.
His speech is worth reading in full, as it contains some pretty decent ideas about helping law enforcement catch abusers and producers of abuse material that weren’t well-reported.
But it also contained a call for search engines such as Bing and Google to maintain a black-list of CAM-related search terms. People search for these terms will never get results, but they might get a police warning.
This has been roundly criticized as unworkable and amounting to censorship. If the government’s other initiatives are any guide, it’s likely to produce false positives more often than not.
Second, Cameron said he wants to make internet porn opt-in in the UK. When you sign up for a broadband account, you’ll have to check a box confirming that you want to have access to legal pornography.
This is about “protecting the children” in the other sense — helping to make sure young minds are not corrupted by exposure to complex sexual ideas they’re almost certainly not ready for.
The Open Rights Group has established that the opt-in process will look a little like this:

Notice how there are 10 categories and only one of them is related to pornography? As someone who writes about ICANN on a daily basis, I’m pretty worried about “esoteric materials” being blocked.
As a related part of this move, the government has already arranged with the six largest Wi-Fi hot-spot operators in the country to have porn filters turned on by default.
I haven’t personally tested these networks, but they’re apparently using the kind of lazy keyword filters that are already blocking access to newspaper reports about Cameron’s speech.
Censorship, in the name of “protecting the children” is already happening here in the UK.
Which brings me to Nominet and Go Daddy
Last Sunday, a guy called John Carr wrote a blog post about internet porn in the UK.
I can’t pretend I’ve ever heard of Carr, and he seems to have done a remarkably good job of staying out of Google, but apparently he’s a former board member of the commendable CAM-takedown charity the Internet Watch Foundation and a government adviser on online child safety.
He’d been given a preview of some headline-grabbing research conducted by MetaCert — a web content categorization company best known before now for working with .xxx operator ICM Registry — breaking down internet porn by the countries it is hosted in.
Because the British rank was surprisingly high, the data was widely reported in the British press on Monday. The Daily Mail — a right-wing “quality” tabloid whose bread and butter is bikini shots of D-list teenage celebrities — on Monday quoted Carr as saying:

Nominet should have a policy that websites registered under the national domain name do not contain depraved or disgusting words. People should not be able to register websites that bring disgrace to this country under the national domain name.

Now, assuming you’re a regular DI reader and have more than a passing interest in the domain name industry, you already know how ludicrous a thing to say this is.
Network Solutions, when it had a monopoly on .com domains, had a “seven dirty words” ban for a long time, until growers of shitake mushrooms and Scunthorpe Council pointed out that it was stupid.
You don’t even need to be a domain name aficionado to have been forwarded the hilarious “penisland.net” and “therapistfinder.com” memes — they’re as old as the hills, in internet terms.
Assuming he was not misquoted, a purported long-time expert in internet filtering such as Carr should be profoundly, deeply embarrassed to have made such a pronouncement to a national newspaper.
If he really is a government adviser on matters related to the internet, he’s self-evidently the wrong man for the job.
Nevertheless, other newspapers picked up the quotes and the story and ran with it, and now Ed Vaizey, the UK’s minister for culture, communications and creative industries, is “taking it seriously”.
Vaizey is the minister most directly responsible for pretending to understand the domain name system. As a result, he has quite a bit of pull with Nominet, the .uk registry.
Because Vaizey for some reason believes Carr is to be taken seriously, Nominet, which already has an uncomfortably cozy relationship with the government, has decided to “review our approach to registrations”.
It’s going to launch “an independently-chaired policy review” next month, which will invite contributions from “stakeholders”.
The move is explicitly in response to “concerns” about its open-doors registration policy “raised by an internet safety commentator and subsequently reported in the media.”
Carr’s blog post, in other words.
Nominet — whose staff are not stupid — already knows that what Carr is asking for is pointless and unworkable. It said:

It is important to take into account that the majority of concerns related to illegality online are related to a website’s content – something that is not known at the point of registration of a domain name.

But the company is playing along anyway, allowing a badly informed blogger and a credulous politician to waste its and its community’s time with a policy review that will end in either nothing or censorship.
What makes the claims of Carr and the Sunday Times all the more extraordinary is that the example domain names put forward to prove their points are utterly stupid.
Carr published on his blog a screenshot of Go Daddy’s storefront informing him that the domain rapeher.co.uk is available for registration, and wrote:

www.rapeher.co.uk is a theoretical possibility, as are the other ones shown. However, I checked. Nominet did not dispute that I could have completed the sale and used that domain.
…
Why has it not occurred to Nominet to disallow names of that sort? Nominet needs to institute an urgent review of its naming policies

To be clear, rapeher.co.uk did not exist at the time Carr wrote his blog. He’s complaining about an unregistered domain name.
A look-up reveals that kill-all-jews.co.uk isn’t registered either. Does that mean Nominet has an anti-Semitic registration policy?
As a vegetarian, I’m shocked and appalled to discovered that vegetarians-smell-of-cabbage.co.uk is unregistered too. Something must be done!
Since Carr’s post was published and the Sunday Times and Daily Mail in turn reported its availability, five days ago, nobody has registered rapeher.co.uk, despite the potential traffic the publicity could garner.
Nobody is interested in rapeher.co.uk except John Carr, the Sunday Times and the Daily Mail. Not even a domainer with a skewed moral compass.
And yet Go Daddy has took it upon itself, apparently in response to a call from the Sunday Times, to preemptively ban rapeher.co.uk, telling the newspaper:

We are withdrawing the name while we carry out a review. We have not done this before.

This is what you see if you try to buy rapeher.co.uk today:

Is that all it takes to get a domain name censored from the market-leading registrar? A call from a journalist?
If so, then I demand the immediate “withdrawal” of rapehim.co.uk, which is this morning available for registration.

Does Go Daddy not take male rape seriously? Is Go Daddy institutionally sexist? Is Go Daddy actively encouraging male rape?
These would apparently be legitimate questions, if I was a clueless government adviser or right-leaning tabloid hack under orders to stir the shit in Middle England.
Of the other two domains cited by the Sunday Times — it’s not clear if they were suggested by Carr or MetaCert or neither — one of them isn’t even a .co.uk domain name, it’s the fourth-level subdomain incestrape.neuken.co.uk.
There’s absolutely nothing Nominet, Go Daddy, or anyone else could do, at the point of sale, to stop that domain name being created. They don’t sell fourth-level registrations.
The page itself is a link farm, probably auto-generated, written in Dutch, containing a single 200×150-pixel pornographic image — one picture! — that does not overtly imply either incest or rape.
The links themselves all lead to .com or .nl web sites that, while certainly pornographic, do not appear on cursory review to contain any obviously illegal content.
The other domain cited by the Daily Mail is asian-rape.co.uk. Judging by searches on several Whois services, Google and Archive.org, it’s never been registered. Not ever. Not even after the Mail’s article was published.
It seems that the parasitic Daily Mail really, really doesn’t understand domain names and thought it wouldn’t make a difference if it added a hyphen to the domain that the Sunday Times originally reported, which was asianrape.co.uk.
I can report that asianrape.co.uk is in fact registered, but it’s been parked at Sedo for a long time and contains no pornographic content whatsoever, legal or otherwise.
It’s possible that these are just idiotic examples picked by a clueless reporter, and Carr did allude in his post to the existence of .uk “rape” domains that are registered, so I decided to go looking for them.
First, I undertook a series of “rape”-related Google searches that will probably be enough to get me arrested in a few years’ time, if the people apparently guiding policy right now get their way.
I couldn’t find any porn sites using .uk domain names containing the string “rape” in the first 200 results, no matter how tightly I refined my query.
So I domain-dipped for a while, testing out a couple dozen “rape”-suggestive .co.uk domains conjured up by my own diseased mind. All I found were unregistered names and parked pages.
I Googled up some rape-themed porn sites that use .com addresses — these appear to exist in abundance, though few appear to contain the offending string in the domain itself — and couldn’t find any that have bothered to even defensively register their matching .co.uk.
So I turned to Alexa’s list of the top one million most-popular domains. Parsing that (.csv), I counted 277 containing the string “rape”, only 32 of which (11%) could be loosely said to be using it in the sense of a sexual assault.
Whether those 32 sites contain legal or illegal pornographic content, I couldn’t say. I didn’t check. None of them were .uk addresses anyway.
Most of the non-rapey ones were about grapes.
I’m not going to pretend that my research was scientific, neither am I saying that there are no rape-themed .co.uk porn sites out there, I’m just saying that I tried for a few hours to find one and I couldn’t.
What I did find were dozens of legitimate uses of the string.
So if Nominet bans the word “rape” from domain name registrations under .uk — which is what Carr seems to want to happen — what happens to rapecrisis.org.uk?
Does the Post Office have to give up grapevine.co.uk, which it uses to help prevent crime? Does the eBay tools provider Terapeak have to drop its UK presence? Are “skyscrapers” too phallic now? Is the Donald Draper Fan Club doomed?
And what about the fine fellows at yorkshirerapeseedoil.co.uk or chilterncoldpressedrapeseedoil.co.uk?
If these examples don’t convince you that a policy of preemptive censorship would be damaging and futile, allow me to put the question in terms the Daily Mail might understand: why does Ed Vaizey hate farmers?

We have a winner! Del Monte wins .delmonte LRO

No sooner did I predict the new gTLD Legal Rights Objection would not produce any prevailing complainants in this application round, then I’ve been proved wrong.
A three-person WIPO panel yesterday delivered a majority-verdict win for Del Monte, which had filed an LRO against its licensee, .delmonte new gTLD applicant Fresh Del Monte.
It’s a complex case, but the panelists’ thinking appears to be consistent with previously decided LROs.
Del Monte is the original owner of the Del Monte brand, with rights going back to the nineteenth century and registered trademarks all over the world.
Fresh Del Monte has used the Del Monte brand under license from the other company since 1989.
Fresh Del Monte also acquired a South African trademark for “Del Monte” in October 2011, but the panel viewed this with suspicion, wondering aloud whether it had been obtained just to bolster its new gTLD application.
The panel also wondered whether acquiring the mark may have been a breach of the two firms’ longstanding licensing agreement.
The circumstances behind the South African trademark were enough to convince two of the three panelists that there was “something untoward” about Fresh Del Monte’s behavior.
That was a crucial factor in the decision (pdf), with the panel citing earlier LRO precedent to the effect that there must be some kind of bad faith present by the applicant in order for an LRO to succeed.
But the most important factor, according to the decision, was the “likelihood of confusion” element of the LRO. The panelists wrote:

From the crucial perspective of the average consumer, and notwithstanding the somewhat complicated licensing arrangements, the coexistence of the parties’ products in certain territories, and the similarity of the parties’ coexisting food products, the evidence shows that the Trade Mark has continued to function as an indicator of the commercial origin of the Objector and its goods (whether the Objector’s direct goods, or licensed goods).

They’re not wrong. Both companies sell canned fruit and vegetables and use the same logo. It’s virtually impossible for the average guy in the street to tell the difference between the two.
Having been exposed to the Del Monte brand for as long as I can remember, having read the LRO decision, and having visited both companies’ web sites, I still couldn’t tell you which company’s canned pineapple I’ve been ignoring on supermarket shelves all these years.
But the decision was not unanimous. Dissenting panelist Robert Badgley agreed with most of the panel’s findings but thought they hadn’t given enough weight to Fresh Del Monte’s South African trademark.
The panel, he suggested, hadn’t looked closely enough at the circumstances of the trademark rights being acquired because it hadn’t allowed additional submissions on that point.
Basically, the decision seems to have been made on partial evidence. Badgley wrote:

I am prepared to conclude that it is more likely than not that Respondent owns the DEL MONTE mark in South Africa and its use of that mark has been bona fide. This conclusion is critical to my ultimate view that Objector has failed to carry its burden of proof and therefore the Objection should be overruled.

He also noted that the two companies, with their matching brands, had been coexisting for 24 years under their licensing arrangement.