104 new gTLD passes, one failure, three withdrawals

With apologies to regular readers for the lateness of this post, which can be blamed on illness, here are the latest new gTLD application evaluation results.
This week, ICANN gave passing Initial Evaluation scores to 104 applications, flunking only one. Separately yesterday, three applications were withdrawn.
First, the passes. The following applications are now safely through IE:

.blog .style .globo .sew .prime .search .shopping .llc .lefrak .tienda .law .charity .restaurant .dubai .cuisinella .cricket .horse .insurance .rip .fast .bot .rugby .gotv .baby .tennis .kids .safe .money .sapo .ltd .download .fit .wanggou .kyoto .sas .rsvp .party .bargains .digital .abbott .chloe .mba .bet .frontdoor .volkswagen .sydney .comcast .oracle .dvr .ipiranga .juegos .translations .web .rocks .architect .kuokgroup .basketball .audio .catholic .site .justforu .bentley .bcn .home .restaurant .lawyer .abogado .watch .jnj .africamagic .anz .works .imdb .ntt .walmart .ups .cartier .softbank .direct .ltda .corp .loan .liaison .cool .canon .run .sandvikcoromant .realtor .gmail .fyi .bharti .mls .mls .fly .wow .shop .fun .gbiz .mit .pet .vista .accenture .webs .capitalone

This batch brings the total number of passes to 1,286. There are only 530 bids left in IE.
This week’s only failure was I-REGISTRY Ltd’s .online application, which scored a 0 on its “Financial Statements” question and therefore failed the financial half of the IE test. It’s eligible for extended evaluation.
Meanwhile, we’ve had three more withdrawals. Tucows withdrew its applications for .media and .marketing, while Travelers TLD withdrew its dot-brand bid for .northlandinsurance.
The maximum number of delegated gTLDs is now 1,354.

LRO roundup: six more new gTLD objections rejected

While we were busy focusing on ICANN 47 last week, six new gTLD Legal Rights Objections were decided by the World Intellectual Property Organization.
These are the objections where the objector has trademark rights that it believes would be infringed by the delegation of a matching or confusingly similar gTLD.
All six cases, like the first six, were rejected for varying reasons. There has yet to be a decision in favor of an objector.
Here’s a rundown of the highlights of the decisions:
.home (Defender Security v Lifestyle Domain Holdings)
.home (Defender Security v Merchant Law Group)
.home (Defender Security v Uniregistry)
These cases are three of the nine filed by .home applicant Defender Security against its rival applicants. Defender had already lost one such objection, and these three were no different.
Defender acquired its trademarks and associated domains and companies from Constantine Roussos’ CGR E-Commerce shortly before the new gTLD application window opened.
The trademarks themselves, attached to hastily created Go Daddy reseller web sites, were obtained not much earlier.
Uniregistry, paraphrased by the WIPO panelist in its case, put the situation pretty close to the truth:

Objector is one of several parties who were solicited some months ago to purchase any of a number of cookie-cutter European trademark documents lacking any substantial basis in actual goodwill or commerce, which were filed solely to game this process, and do not reflect a bona fide acquisition of substantial rights.

The WIPO panelists did not disagree, with two of them finding that not only were the acquisition of trademark rights not bona fide, but also that there was a question as to whether Defender even owned the trademark.
One panelist wrote of “the misleading and sometimes deceptive presentation of the evidence in the Objection, and more generally the abusive nature of the Objection” and another said:

The [LRO] Procedure is not intended to provide a facility whereby existing or prospective applicants for a new gTLD may attempt to gain an advantage over other applicants for the same gTLD by way of the deliberate acquisition of trademark rights for no purpose other than to bring a Legal Rights Objection. It has not escaped the Panel’s notice that the evidence before it indicates that the present Objection might have been motivated by just such an attempt

All three cases were rejected largely on this basis.
The panelist in the Lifestyle Domain Holdings case decided that acquisition of the trademarks had in fact been bona fide, but rejected the objection anyway on the overall LRO test of whether the proposed gTLD would take “unfair advantage” of Defender’s trademark rights, stating:

If anyone has taken “unfair advantage,” it has been the Objector through its meritless Objection. The LRO process is not meant to be a game or crap shoot; rather, it should be invoked only when the applicant’s proposed string would “infringe” trademark rights. It is an abuse of the process to invoke an LRO against an applicant whose proposed use is clearly a fair use of a string for its descriptive meaning and not a use designed to “infringe” (that is, cause confusion as to source, authorization or affiliation). What is “unfair” here is that the Objector filed an Objection that is not only completely devoid of merit, causing the Respondent to waste time and effort defending its entirely appropriate application, but also full of misleading, deceptive, and demonstrably untrue statements and omissions

With the Roussos/Defender gaming strategy thus comprehensively trashed, I can only hope for Defender’s sake that there’s opportunity left for it to withdraw its remaining objections and ask for a refund.
.mail (United States Postal Service v Amazon)
Amazon is one of the many applicants for .mail, while USPS is the United States’ longstanding government-backed postal service and not an applicant.
USPS showed that it owned a wide array of trademarks that include the word “mail”, but not any for the word alone, and argued that internet users expect “mail” to mean the US mail.
Amazon said that the word is generic and that USPS is not the only organization to incorporate it in its trademarks.
Amazon said (ironically, given its intention to operate .mail as a closed generic) that USPS “improperly seeks to take the dictionary word ‘mail’ out of the English language for its exclusive use”.
The decision to reject the complaint hinged on whether USPS even has rights in .mail.
The WIPO panelist decided: “The fact that a nation’s postal system is vested by statute or otherwise associated with a single entity does not convert the generic term into a trademark.”
USPS has filed six more LROs against the other six .mail applicants, two of which have been terminated due to application withdrawals. We can only assume that the remaining four are also likely to fail.
.pin (Pinterest v Amazon)
Amazon is the only applicant for .pin. Again, it’s a closed generic for which the company has not explained its plans.
The objector, Pinterest, is a wildly popular photo-sharing service provider start-up, funded to the sum of $100 million by Amazon’s Japanese retail rival Rakuten.
It owns a US trademark for “Pinterest” and has applied for many more for “Pin” and “Pin It”.
The panelist, in ruling against Pinterest, decided that Pinterest, despite its popularity, failed to show that the dictionary word “pin” had acquired a secondary meaning beyond its usual descriptive sense.
.mls (Canadian Real Estate Association v. Afilias)
MLS, for readers based outside North America, means “multiple listing services”. It’s used by estate agents when aggregating lists of properties for sale.
The Canadian Real Estate Association — which has applied for .mls TWICE, one as a community once as a regular applicant — has owned a Canadian “certification mark” on the term “MLS” since 1960.
A substantial portion of the decision is devoted to examining whether this counts as a trademark for the purposes of an LRO, with the panelist deciding that “ownership of a certification trademark must confer the status of ‘rightsholder’.”
The case was therefore decided on the eight criteria specified for the LRO in the ICANN Applicant Guidebook. The panelist concluded:

The Panel cannot see the justification for refusing to allow the Applicant to operate in every country because the Objector has a certification mark for a generic term in Canada. Had the Objector’s certification been other than a generic term, its case might have been stronger but MLS it is a generic term used in English-speaking jurisdictions.

The decision cited the .rightathome case, in which the decision hinged on whether the new gTLD applicant had any nefarious intent in applying for the string in question.
A body of precedent seems to be emerging holding that a new gTLD application must be somewhat akin to a cybersquatting attempt in order for an objector to win.
While this may be fair, I think a likely impact is an increase in the number of dot-brand applications in future rounds, particularly in cases where the brand matches a dictionary word or collides with another trademark.
We’ve yet to see what a successful LRO looks like, but the standard appears to be high indeed.

90 new gTLDs pass IE. Two more withdrawals

ICANN has published its weekly run-down of new gTLD Initial Evaluation results and this week 90 applications have passed.
There have also been two withdrawals, both made by Uniregistry. It’s withdrawn its bids for .media and .country, leaving Tucows and Donuts duking it out for .media and Top Level Domain Holdings as the sole remaining applicant for .country.
TLDH and Uniregistry previously inked a deal that would see them go 50:50 on .country, the only question remaining was which applicant would drop out.
These are this week’s passing applications:

.ecom .doctor .cpa .forum .aco .mba .mom .sbs .frogans .rip .changiairport .tirol .homesense .swatch .hotel .ice .realty .web .fun .clubmed .ril .creditcard .datsun .netbank .jmp .ferrero .hockey .contact .avianca .gold .beauty .audi .cheap .bet .uconnect .map .cooking .pics .network .madrid .garden .zone .expert .cfa .trv .review .forum .pizza .dabur .pay .app .bingo .home .ryukyu .agency .tdk .xfinity .nokia .raid .hoteles .tube .school .win .gmbh .faith .show .radio .pizza .wtf .juniper .xerox .rehab .global .cloud .docs .life .fun .brother .intel .place .photo .christmas .wine .dupont .run .home .ping .boutique .mortgage .store

Donuts chalks up another LRO win

Donuts has successfully fought off another Legal Rights Objection against one of its new gTLD applications.
This time the objector was The Limited, apparently the operator of a large chain of clothing stores in the US, and the applied-for gTLD was .limited, which is uncontested.
Key to the World Intellectual Property Organization panelist’s decision appears to be the fact that the brand and the trademark in question is “The Limited” rather than “Limited”.
The retailer failed to show that it was commonly known by the word “Limited” alone, whereas Donuts made the case that “limited” is a common generic word with multiple uses.
The panelist wrote:

The definite article “the” makes a difference in this case. If the string were <.thelimited>, Applicant’s professed plans for the String would be highly suspect. This is because limited liability businesses do not use the term “the limited” (or an abbreviation or derivation thereof) in their company name.
…
In the absence of the definite article “the” in the String, however, Applicant’s proposed use of the String is plausible and legitimate, and the likelihood of confusion between Objector’s mark and the String is greatly reduced. There is simply no viable evidence in the record to suggest that significant source confusion – among consumers or non-consumers who use the Internet – will ensue if Applicant carries out its plans.

It’s the sixth LRO to be decided and the sixth finding in favor of the new gTLD applicant.
Donuts also fought off an objection from another clothing retailer, Express, which it is fighting for the .express gTLD.

GAC to kill off .amazon

The Governmental Advisory Committee has agreed to file a consensus objection against Amazon’s application for .amazon.
The decision, which came this morning during a GAC session at the ICANN meeting in Durban, also applies to the company’s applications for .amazon in non-Latin scripts.
The objection came at the behest of Brazil and other Latin American countries that claim rights to Amazon as a geographic term, and follows failed attempts by Amazon to reach agreement.
Brazil was able to achieve consensus in the GAC because the United States, which refused to agree to the objection three months ago in Beijing, had decided to keep mum this time around.
The objection will be forwarded to the ICANN board in the GAC’s Durban communique later in the week, after which the board will have a presumption that the .amazon application should be rejected.
The board could overrule the GAC, but it seems unlikely.
It’s the second big American brand to get the GAC kiss of death after Patagonia, which withdrew its application for .patagonia last week after the US revealed its hands-off approach for Durban.
Both Amazon and Patagonia slipped through the standard Geographic Names Panel check because they’re trans-national regions, whereas the panel used lists of administrative divisions to determine whether strings were geographic.
Amazon the company was named after the region or river in Latin America, which was in turn named after a culture of female warriors originating from, according to Herodotus, Ukraine.
It’s not known whether Ukraine had a position on the objection and Herodotus was unavailable for comment.

100th new gTLD application withdrawn

Former London mayor Ken Livingstone, rejoice!
L’Oreal has withdrawn its gTLD application for .redken, a dot-brand for one of its hair care products that I am reliably informed is not named after the balding socialist politician.
It’s the seventh of the company’s 14 new gTLD bids to be withdrawn.
Also today, it emerged that portfolio applicant Famous Four Media has withdrawn its application for .health, the only one of the four bids for that string yet to pass Initial Evaluation.
The string is one of the most controversial, being the subject of multiple very expensive to defend objections as well as strong Governmental Advisory Committee advice.
As of today, 100 new gTLD applications have been withdrawn, 53 of which were for uncontested strings.

First new gTLD contracts signed

Donuts, an ARI Registry Services subsdiary and CORE this morning became the first new gTLD applicants to sign registry contracts with ICANN.
The ceremonial signing took place live on stage at the opening ceremony of ICANN 47, the week-long public meeting in Durban, South Africa.
ARI CEO Adrian Kinderis signed on behalf of شبكة. applicant International Domain Registry. The string is Arabic for “.web” and transliterates as “.shabaka”. It is 3 in the program’s evaluation queue.
In an ARI press release, Go Daddy CEO Blake Irving confirmed that Go Daddy will carry .shabaka.
Donuts CEO Paul Stahura signed for .游戏, the Chinese-language “.games”, which had prioritization number 40.
It was not immediately clear which contracts Iliya Bazlyankov, chair of CORE’s executive committee, signed. CORE has applied for three internationalized domain name gTLDs with high priority numbers.
(UPDATE: Bazlyankov has been in touch to say: “We signed the .сайт (site) and .онлайн (online) contracts which had numbers 6 and 9 in the priority”.)
Representatives of Go Daddy, MarkMonitor, Momentous, Mailclub and African registrar Kheweul.com also joined ICANN CEO Fadi Chehade on stage to sign the 2013 Registrar Accreditation Agreement.
The event marks the beginning of the contract signing phase of the new gTLD program, an important milestone.
For applicants without outstanding objections, contention or Governmental Advisory Committee advice, signing a contract means only pre-delegation testing and the final transition to delegation remains.

86 passes and two failures in this week’s new gTLDs

ICANN has just published this week’s batch of new gTLD Initial Evaluation results, revealing 86 passing scores and two applications that must go to Extended Evaluation.
The two failures are .ged and .bcg.
The .ged bid, which is intended to represent General Educational Development, was filed by a joint venture of the American Council on Education and the big publisher Pearson.
It’s the first example of an application to receive passing scores on both its financial and technical questions but to still require Extended Evaluation anyway.
The applicant had proposed a registry service related to internationalized domain names that gave the evaluation panels reason to believe a deeper evaluation was needed.
Uniquely so far, Extended Evaluation is likely to cost this applicant more money, due to the cost of a Registry Services Evaluation Panel.
Boston Consulting Group applied for .bcg as a dot-brand and failed because it scored a zero on its “Financial Statements” question, as most other IE failures have to date.
This weeks passing scores belong to these applications:

.redstone .institute .website .airtel .bestbuy .education .charity .shouji .alstom .multichoice .reit .bible .holiday .deutschepost .chrysler .terra .cam .inc .farm .cars .florist .financial .bet .design .cafe .sale .lundbeck .latino .iveco .inc .dodge .security .global .food .tradershotels .design .bond .zappos .rwe .commbank .landrover .house .cars .blog .fish .amazon .adult .wine .group .property .free .living .maserati .beauty .amsterdam .foodnetwork .broker .design .sucks .fans .tushu .discount .glass .fashion .search .school .linde .off .office .miami .trust .red .boats .immo .repair .dstv .claims .iinet .soccer .inc .mail .toshiba .law .love .suzuki .africa

There are now 730 applications still in Initial Evaluation. So far 1,092 have passed and 13 have failed.

First new gTLD objection scalps claimed

Employ Media has killed off the Chinese-language gTLD .招聘 in the latest batch of new gTLD objection results.
Amazon and DotKids Foundation’s respective applications for .kids also appear to be heading into a contention set with Google’s bid for .kid, following the first String Confusion Objections.
All three objections were marked as “Closed, Default” by objection handler the International Center For Dispute Resolution a few days ago. No full decisions were published.
This suggests that the objectors have won all three cases on technicalities (such as the applicant failing to file a response).
Employ Media vice president for policy Ray Fassett confirmed to DI that the company has prevailed in its objection against .招聘, which means “recruitment” in Chinese and would have competed with .jobs.
The String Confusion Objection can be filed based on similarity of meaning, not just visual similarity.
What’s more, if the objector is an existing TLD registry like Employ Media, the only remedy is for the losing applicant to have their application rejected by ICANN.
So Hu Yi Global Information Resources, the .招聘 applicant, appears to be finished as far as this round of the new gTLD program is concerned.
But because there’s no actual ICDR decision on the merits of the case, it seems possible that it, or another company, could try for the same string in a future round.
In Google’s case, it had objected to both the Amazon and DotKids applications for .kids on string confusion grounds. The company is applying for .kid, which is obviously very similar.
The String Similarity Panel, which created the original pre-objection contention sets, decided that singular and plurals could co-exist without confusion. Not everyone agreed.
Because .kid is merely an application, not an existing TLD, none of the bids are rejected. Instead, they all join the same contention set and will have to work out their differences some other way.
Applicants are under no obligation to fight objections; they may even want to be placed in a contention set.

Afilias opens pre-regs on 30 new gTLDs

Afilias has started accepting expressions of interest on the 30 new gTLDs it has applied for.
A basic site launched today invites potential registrants to indicate which names they’d like to register in future and submit their email address for updates.
As usual, it’s free, no obligation, and provides more value to the registry than the registrant.
The strings covered are:

.移动 (info), .信息 (mobi), .DESI, .APP, .HEALTH, .LTD, .KIM, .BLUE, .PINK, .LOTTO, .MLS, .LGBT, .BLOG, .GREEN, .INC, .TEAM, .SHIKSHA, .MEMORIAL, .RADIO, .BET, .RED, .WINE, .LLC, .WEB, .ORGANIC, .MEET, .PET, .BLACK, .CASINO, .POKER, .VOTE, .VOTO

Many of these gTLDs are still contested and some haven’t yet passed Initial Evaluation, so the list may dwindle as time goes by.