.web lawsuit thrown out of court, “too generic” to be a trademark

A California lawsuit that threatened to scupper all seven applications for the .web new gTLD has been thrown out.
The judge in Image Online Design v ICANN yesterday granted ICANN’s motion to dismiss the case, saying that IOD had no claim for breach of contract and, significantly, that “.web” is too generic to be a trademark.
Here’s the money quote:

This court agrees with ICANN that the mark .WEB used in relation to Internet registry services is generic and cannot enjoy trademark protection.

IOD applied for .web during ICANN’s proof-of-concept new gTLD round in 2000, but was not approved.
It sued ICANN last October, claiming breach of contract and trademark infringement and interference with its business.
The company has been running .web in an alternate DNS root, where hardly anyone uses it, since the 1990s.
Unfortunately for IOD, when it applied in 2000 it signed a document releasing ICANN from all legal liability in relation to the application, so the judge yesterday ruled that it could not sue for breach of contract.
The court also upheld the longstanding position of the US courts that top-level domains cannot be trademarks.
The US Patent & Trademark Office is of the view that TLDs do not indicate the source of goods or services; only the second-level domain does.
IOD had argued in court that, with the imminent introduction of dot-brands, the USPTO expects to modify its position. The judge in this case, Dean Pregerson, agreed in part, stating:

For instance, if ICANN were to introduce the TLD .APPLE, the user would arguably expect that that TLD is administered by Apple Inc. In such a case, the TLD might be considered a source indicator. If Sony tried to administer the TLD .APPLE, Apple Inc. would likely argue and possibly prevail on a trademark infringement claim.
This said, it appears to the court that today only the most famous of marks could have a source indicating function as a TLD. Some marks, such as .WEB, might remain generic even if they were famous, since .WEB in connection with registry services for the World Wide Web appears to refer to the service offered, rather than to only a particular producer’s registry service.
…
the mark .WEB is not protectable under traditional trademark analysis because it “seems to represent a genus of a type of website” and thus answers the question “What are you?” rather than “Who vouches for you?”

IOD’s other claims were also thrown out. Read the court’s order here.
The ruling means that a similar lawsuit filed by fellow 2000-round new gTLD applicant Name.Space, which is looking for an injunction against 189 gTLD applications, may be on shaky ground too.

Sunrise for .pw extended by a week

The sunrise period for the liberalizing ccTLD .pw has been extended by a week until February 15.
.PW Registry said that the extension comes due to demand; it will allow further time for trademark owners to defensively register their brands.
The company, owned by the Directi, has about 80 accredited registrars listed on its web site, many of them specialists in brand protection.
It also recently signed up some big mass-market registrars, including volume number two eNom. Market leader Go Daddy has yet to accredit, judging by the .PW web site.
While .pw is the ccTLD for Palau, the registry is positioning it as a competitor to .pro, meaning “Professional Web”. Unlike .pro, however, there are no registration restrictions.
Directi is an applicant for over 30 new gTLDs, almost all contested, so the .pw launch could in some respects be seen as a test run for its bigger TLDs, should it win any of its contention sets.

Verisign raises .name prices

Verisign plans to add 10% to the price of a .name domain name, judging by published correspondence.
In a price list sent to ICANN last week, the maximum registry fee for a one-year registration at the second level in .name will be set at $6.60 from August 1, 2013.
It appears to be the first such price increase in .name since the current registry contract was signed back in 2007. That contract set the fee at $6, with maximum hikes of 10% a year.
The new price list (pdf) is rather extensive, also covering products such as email forwarding and .name’s rather expensive wildcard-based defensive registrations.
Links to Verisign’s current pricing for these services are currently broken, so I can’t tell right now whether they’re going up, down, or staying the same.
It’s the second price increase Verisign has announced since it lost the right to hike the registry fee for .com last year. It is also raising .net prices later this year.

Jiwani quits as president of RegistryPro

Karim Jiwani, president of Afilias unit RegistryPro, has quit to explore new opportunities in the domain name business.
Jiwani, whom we profiled in depth recently, joined Afilias when it acquired RegistryPro, the .pro registry, a year ago, so the move is not entirely surprising.
Prior to RegistryPro, he headed up Afilias’ business in Europe.
“Mr. Jiwani plans to pursue other opportunities in the expanding domain industry,” Afilias said.

Google backing new gTLD trade association

New gTLD applicants and others have been meeting in Amsterdam this morning to discuss setting up a new trade association to promote new gTLDs and domain names in general.
The meeting, which was organized by Google, coincided with but was separate from an ICANN registry-registrar gathering in the city.
According to sources on the ground, the proposed trade association would be focused on raising consumer awareness about domain names and their benefits, outside of the ICANN community.
It’s a very early-stage idea, and today’s meeting — we hear — discussed things like possible funding sources and membership requirements.
More details are expected to emerge later today.
We also hear that the important topic of “universal acceptance” of TLDs has been discussed.
As we reported earlier in the week, there’s still not enough support from major software developers (including browser makers, whose job it is to connect users to web sites) for some of the newest TLDs.
Lack of awareness could cause technical problems as well as marketing ones, so a trade association — especially one back by Google’s headline-raising powers — may well be good for the industry.
Google is an applicant for almost 100 new gTLDs.

Afilias doubles .pro registrations in a year

Afilias says it has managed to grow .pro by 100% just one year after acquiring RegistryPro, despite an abuse crackdown and a tightening of registration policies.
RegistryPro president Karim Jiwani, speaking to DI earlier this month, said that .pro currently has roughly 160,000 domain names under management, compared to 120,000 at the time of the deal.
However, .pro lost about 40,000 domains — all Zip codes registered to former registry owner Hostway — six months ago. Excluding these names, domains leaped from 80,000 to 160,000.
Jiwani said that steep discounting and the on-boarding of a few big new registrars — notably Directi — are mostly responsible for the growth.
It’s all organic growth — regular registrations — he said, with none of the dubious type of big one-off deals that gTLD registries often rely on to show adoption.
The growth has come despite the fact that Afilias is cracking down on loopholes that have previously enabled registrars to sell .pro names to people without professional credentials.
At the time of the acquisition, registrars were accepting business licenses as credentials, but Jiwani said that this should no longer be possible.
“We’ve been trying to get to the registrars and let them now that a business license is not acceptable as a verification tool,” he said, “and we will continue to reach out to registrars and let them know.”
With some profession-specific new gTLDs (such as .doctor and .lawyer) likely to be approved by ICANN over the next year or two, Afilias wants it to be known that .pro has a broader customer base.
“What we did was try to get out to registrars and explain to them that you don’t just have to be a doctor or a lawyer to get a .pro domain,” Jiwani said.
“We explained to them that there are many, many professions in the world — from massage therapists to radiologists to tour guides,” he said. “It opened up the mindset of the registrars a little bit and they were promoting it to a wider array of professionals.”
Our full interview with Jiwani, in which he discusses the challenges of growing a restricted registry, fighting abuse, and how legacy gTLDs can compete with new gTLDs can be read on DI PRO:
Interview: RegistryPro president Karim Jiwani on the challenges of growing a restricted gTLD

Nominet sues domainer gripe site for defamation

Nominet has sued a fierce critic of the organization after apparently trying and failing to have his web site shut down.
The company, which runs .uk, said is has filed High Court defamation proceedings against Graeme Wingate and his company That Internet Limited, seeking an injunction against that.co.uk and avoid.co.uk.
The two sites have since last October last year carried a number of rambling allegations against Nominet and, more specifically, its CEO, Lesley Cowley.
Wingate, like many .uk domainers, is furious that Nominet plans to launch direct second-level registrations under .uk, giving trademark owners sunrise priority over owners of matching .co.uk domains.
While that.co.uk focuses mainly on this Direct.uk initiative, avoid.co.uk takes broader swipes at Cowley specifically, stating:

the idea behind Avoid.co.uk is to focus solely on the leadership of Ms Lesley Cowley, Chief Executive of Nominet and her immediate removal as CEO on the grounds of dishonestly, transparency and incompetence.

While not spelling out exactly what content it considers defamatory, Nominet said:

While we are entirely comfortable with legitimate protest about Nominet’s actions or proposals, there are assertions about Nominet and our CEO published on the avoid.co.uk and that.co.uk sites that are untrue and defamatory.
The Board is united in its view that harassment and victimisation of our staff is unacceptable, and that Nominet should take appropriate action to support staff and protect our reputation.

According to avoid.co.uk, Nominet tried to get the sites taken down by their web hosts on at least two separate occasions since November. It’s moved to a Chinese host in an attempt to avoid these takedown attempts.
The antagonism between some domainers and Cowley is long-running, rooted in a clash between domainer members of its board of directors and senior executives in 2008.
As I reported for The Register last August, evidence emerged during an employment tribunal case with a “whistleblower”, former policy chief Emily Taylor, that Nominet may have secret colluded with the UK government in order to architect a reform process that would give domainers substantially less power over the company.
It later emerged that Nominet and UK civil servants communicated via private email addresses during this process, apparently in order to dodge Freedom Of Information Act requests.
A subsequent internal investigation by Nominent chair Baroness Rennie Fritchie last November concluded that “Nominet did not manufacture Government concern” and that the private emails were a “misguided attempt to ensure that open and honest conversations… could take place” rather than attempts to avoid FOI.

Anger as ICANN delays key new gTLDs milestone

New gTLD applicants could barely disguise their anger tonight, after learning that ICANN has delayed a key deliverable in the new gTLD program — originally due in October — until March.
On a webinar this evening, program manager Christine Willett told applicants that the string similarity analysis due on all 1,917 remaining bids is not expected to be ready until March 1.
The analysis, which will decide which “contention sets” applications are in — whether .hotel must fight it out with .hotels and .hoteis, for example — had already been delayed four times.
The reasons given for the latest delay were fuzzy, to put it mildly.
Willett said that ICANN has concerns about the “clarity and consistency of the process” being used by the evaluation panel — managed by InterConnect Communications and University College London.
Under some very assertive questioning by applicants — several of which branded the continued delays “unacceptable” — Willett said:

When you don’t have a consistent process, or there are questions about the process that is followed, it invariably would put into question the results that would come out of that process…
I don’t want to publish contention sets and string similarity results that I can’t stand behind, that ICANN cannot explain, and that only frustrate and potentially affect the forward progress of the program.

See? Fuzzy.
It sounded to some applicants rather like ICANN has seen some preliminary string similarity results that it wasn’t happy with, but Willett repeatedly said that this was not the case.
It’s also not clear whether the pricey yet derided Sword algorithm for determining string similarity has had any bearing on the hold-ups.
One of the reasons that applicants are so pissed at the latest delay is that it presents a very real risk of also delaying later stages of the evaluation, and thus time to market.
Willett admitted that the remaining steps of the program — such as objections and contention resolution — are reliant on the publication of string similarity results.
“I am quite confident we will have results on string similarity by March 1,” she said. “We need to publish contention sets — we need to publish string similarity results — by March 1 in order to maintain the timeline for the rest of the program.”
March 1 is worryingly close to the March 13 deadline for filing objections, including the String Confusion Objection, which can be used by applicants to attempt to pull others into their contention sets.
Just 12 days is a pretty tight deadline for drafting and filing an objection, raising the possibility that the objection deadline will be moved again — something intellectual property interests would no doubt welcome.
The IP community is already extremely irked — understandably — by the fact that they’re being asked to file objections before they even know if an application has passed its Initial Evaluation, and will no doubt jump on these latest developments as a reason to further extend the objection window. Some applicants may even agree.

Don’t panic! Crocker clarifies “end of year” new gTLD comments

ICANN chairman Steve Crocker has clarified comments made during a recent interview in which he said he expected new gTLDs to be delegated “towards the end of the year”.
Crocker told DI today that ICANN plans to put new gTLDs into the root “as quickly as possible” and “hopefully by the middle of the year”.
In response to our blog post yesterday, he said in an email:

What I wanted to convey was that by the end of the year I hope we will have seen the effects of some of the first new gTLDs delegated into the root. I didn’t mean to suggest that those first delegations wouldn’t happen until the end of the year. We are working aggressively toward our goal of delegating some of the first new gTLDs as quickly as possible, hopefully by the middle of this year. Instead, I was looking beyond the instant the strings enter the root to the time when the community will be able to see the effects.

So, there you have it.

In major snub, Verisign refuses to let ICANN audit .net

Verisign has delivered a significant blow to ICANN’s authority by refusing to take part in its contractual compliance audit program.
The snub runs a risk of scuppering ICANN’s plans to make compliance a cornerstone of its new management’s strategy.
In a letter to ICANN’s compliance department this week, Verisign senior vice president Pat Kane said that the company has no obligation to submit to an audit of .net under its ICANN contract.
Kane wrote:

Verisign has no contractual obligations under its .net Registry Agreement with ICANN to comply with the proposed audit. Absent such express contractual obligations, Verisign will not submit itself to an audit by or at the direction of ICANN of its books and records.

The company is basically refusing to take part in ICANN’s Contractual Compliance Audit Program, a proactive three-year plan to make sure all gTLD registries and accredited registrars are sticking to their contracts.
For registries, the plan calls for ICANN to look at things like compliance with Whois, zone file access, data escrow, monthly reporting, and other policies outlined in the registry agreements.
Verisign isn’t necessarily admitting that it thinks it would not pass the .net audit, but it is sending a strong signal that it believes ICANN’s authority over it has limits.
In the program’s FAQ, ICANN admits that it does not have explicit audit rights over all contracted parties, stating:

What’s the basis for including all contracted parties, when the ‘Right to Audit’ clause isn’t present in 2001 RAA and Registry Agreements?
One of ICANN’s responsibilities is to conduct audits of its agreements in order to ensure that all contracted parties are in compliance with those agreements.

If Verisign is refusing to participate, other registries may decide they don’t want to cooperate either. That wouldn’t look good for ICANN, which has made compliance a key strategic priority.
When Fadi Chehade started as CEO last September, one of his first moves was to promote compliance boss Maguy Serad to vice president, reporting directly to him.
He told DI that he would be “bringing a lot more weight and a lot more independent management from my office to the compliance function”.
At his inaugural address to the community in Prague last June, he spoke of how he planned to bring IBM-style contract management prowess to ICANN.
Compliance is also a frequently raised concern of the Governmental Advisory Committee (though generally geared toward rogue registrars rather than registries).