TMCH extends Trademark Claims indefinitely, kinda

The Trademark Clearinghouse is to give the intellectual property lobby something that it’s been crying out for for years — an indefinite extension of parts of the Trademark Claims service.
And it’s going to be free.
Trademark Claims is a mandatory service for all new gTLD operators, sending pre-registration warnings to registrants and post-registration alerts to mark owners whenever a domain matching a trademark is registered.
But it only runs for 90 days, per the ICANN new gTLD contracts, which TMCH project director Jan Corstens said is IP owners’ “number one complaint” about the system.
So the TMCH is going to extend the post-registration alerts half of the service indefinitely.
When the first new gTLDs officially end their Claims periods next year, the TMCH will continue to send out alerts to mark owners (or, in 90% of cases, their registrar “agents”) when matching domains are registered.
Would-be registrants will only receive their pre-registration warnings for the original 90-day period.
Corstens said that the pre-registration side of Claims would only be possible with the cooperation of registries and registrars, and that there’s a lot of reluctance to help out.
“A lot of them are not really interested in doing that,” he said. “I understand it takes work, and I understand they think it could demotivate potential registrants.”
Trademark owners that have directly registered with the Clearinghouse, rather than going through an agent, will get the extended service for no added charge.
However, Corstens made it clear that the TMCH is not trying to compete with registrars — such as MarkMonitor and Melbourne IT — that already offer zone file monitoring services to trademark owners.
“We know the market exists,” he said. “It’s not our intention to become a monopoly. We will deliver it to them, of course, and assume they can integrate with it.”
Agents will be able to plug the service into their existing products if they wish, he said.
There are a few initial limitations with the new TMCH service such that its registrar agents may not find it particularly labor-saving.
First, only domains that exactly match labels in the Clearinghouse will generate alerts.
By contrast, brand-monitoring registrars typically generate alerts when the trademark is a substring of the domain. To carry on doing this they’ll need to carry on monitoring zone files anyway.
Second, the TMCH service only currently covers new gTLDs applied for in the 2012 round. It doesn’t cover .com, for example, or any other legacy gTLD.
Corstens said both of these limitations may be addressed in future releases. The first Trademark Claims period isn’t due to end until March, so there’s time to make changes, he said.
He added that he hopes the extension of Claims will lead to an uptick in the the number of trademarks being registered in the TMCH. Currently there are about 20,000.

7 Comments Tagged: cybersquatting, ICANN, new gTLDs, tmch, trademark claims, trademark clearinghouse, trademarks

Go Daddy to take $2,500 profit on Donuts’ first-day domains

Donuts’ pricey Early Access Program for its new gTLDs could prove quite lucrative for registrars.
Go Daddy today revealed that it’s charging $12,500 and up for first-day “priority” registrations in 14 Donuts gTLDs, a $2,500 profit on Donuts’ EAP registry fee, which I believe is $10,000.
The EAP is Donuts’ alternative to a traditional landrush period.
Rather than charging premium landrush fees and then running an auction for contested domains, every available domain has a standard premium buy-it-now price that is reduced every day for a week until the fee hits the standard reg fee.
It’s Dutch-auction-like, with a first-come-first-served component.
The EAP registry fees start at $10,000, go to $2,500 on day two, $950 on day three, $500 on day four and $100 from days five through day seven. Then they go to the base fee, which depends on gTLD but typically translates to about $40 at the check-out.
Go Daddy’s respective EAP retail prices are $12,539.99, $3,164.99, $1,239.99, $689.99 and $189.99.
Complicating matters, these are currently “priority pre-registration” fees, so the company will still have to successfully grab the pre-registered names from the registry when they become available.
While customers are billed today, they may not get the name they want. If Go Daddy fails to secure the name it will issue a full refund.
Complicating matters further, the company is accepting multiple pre-registrations on any given name and will auction it off to the highest bidder if more than one person pre-registers at the same level and Go Daddy manages to grab the name.
So $12,500 may just be the tip of the iceberg.
Complicating matters further further, Go Daddy’s site is currently not particularly clear — at least to this elderly hack — which components of its fees are refundable and which are not.
This slogan, currently in use on the Go Daddy pre-reg site, appears to me to be absolute nonsense.

The 14 Donuts gTLD currently on offer are: .estate, .photography, .ventures, .guru, .bike, .clothing, .gallery, .singles, .camera, .lighting, .plumbing, .equipment, .graphics and .holdings.

5 Comments Tagged: donuts, early access program, go daddy, landrush, new gTLDs, premium

GAC kills off two more new gTLD bids

A new gTLD applicant has withdrawn two of its Chinese-language applications after failing to secure the necessary government support.
Guangzhou YU Wei Information Technology Co withdrew its applications for .深圳 (.shenzhen) and .广州 (.guangzhou).
Both are the names of very large cities in southern China.
The ICANN Governmental Advisory Committee had previously issued official Advice against both bids.
The applicant had failed to get a passing score on its Initial Evaluation earlier this year, with ICANN ruling that governmental “support or non-objection was either not provided or did not meet the criteria”.
To get a geographic gTLD, you need to prove local government support, something which the applicant seems to have been unable to provide during Extended Evaluation.
Weirdly, Guangzhou YU Wei has previously passed EE for .佛山 (.foshan) and IE for .广东 (.guangdong), which are both also Chinese geographic names.

Comment Tagged: .广州, .深圳, geographic, Guangzhou YU Wei Information Technology, ICANN, new gTLDs

German geo .ruhr enters the root

Verisign today delegated the new gTLD .ruhr to the DNS root zone, making it the 35th new gTLD to go live.
It’s a geographic string, meant for residents of the north-west German region of Ruhr, operated by Regiodot.
nic.ruhr is already resolving.
Regiodot is already taking pre-registrations via approximately 10 signed-up registrars, which all appear to operate in German-speaking countries.
The Ruhr (in German, it’s short for Ruhrgebiet) has over eight million inhabitants, according to Wikipedia, making the potential market for .ruhr larger than many European ccTLDs.

Comment Tagged: .ruhr, delegation, ICANN, new gTLDs, regiodot

Win free tickets to NamesCon Las Vegas (even if you’ve already paid)

We’ve got five (FIVE!) free tickets to NamesCon to give away to lucky DI readers.
NamesCon is “a pro-new TLDs conference” happening at the Tropicana hotel in Las Vegas from January 13 to 15, 2014.
It’s being organized by domain investor Richard Lau, Jothan Frakes (Domain Roundtable, DomainFest), and Jodi Chamberlain of 32Events (TRAFFIC, Domaining Europe)
NamesCon seems to be planning something a bit different when compared to new gTLD conferences held to date, judging by the speaker line-up, in that there’s more of a crossover between the ICANNer-heavy new gTLD industry and the traditional domainer community.
There’s a whole bunch of confirmed speakers and panelists (including yours truly) and the organizers tell us that over 300 people have so far registered to attend.
Tickets currently cost $399 (it’s $749 on the door) but we have five passes to give away to DI readers.
The organizers tell me that if any of the winners have already purchased a ticket, they’ll get a full refund.
To enter the draw, just leave an answer to the following question (set by NamesCon) in the comments section of this post.

What’s the best way to explain the benefits of new gTLDs to somebody from outside the domain industry?

Winners will be selected from comments using a random number generator at the weekend.
The prizes are 100% discount codes for full conference passes. You’ll still have to arrange and pay for your own travel and accommodation.
If you cannot or do not intend to attend, but still feel compelled to leave a comment, please say so, so I can be sure to exclude you from the draw.

43 Comments Tagged: namescon, new gTLDs

ICANN will have to make a call on .islam

ICANN is going to have to decide whether to approve the new gTLDs .islam and .halal, after the Governmental Advisory Committee punted the issue.
GAC chair Heather Dryden told ICANN chair Steve Crocker last week (pdf) that the GAC will not provide ICANN with the clarity it so wanted on the two controversial gTLDs.
“[T]he GAC concluded its discussions on these applications with the advice provided in the Beijing Communiqué,” Dryden said. “Accordingly, no further GAC input on this matter can be expected.”
ICANN is therefore left with the following advice:

The GAC recognizes that Religious terms are sensitive issues. Some GAC members have raised sensitivities on the applications that relate to Islamic terms, specifically .islam and .halal. The GAC members concerned have noted that the applications for .islam and .halal lack community involvement and support. It is the view of these GAC members that these applications should not proceed.

My take on this is that the GAC has provided what is often called a “non-consensus” objection, which I believe triggers one of the vaguest parts of the Applicant Guidebook.
One of the three types of GAC Advice on New gTLDs reads:

The GAC advises ICANN that there are concerns about a particular application “dot-example.” The ICANN Board is expected to enter into dialogue with the GAC to understand the scope of concerns. The ICANN Board is also expected to provide a rationale for its decision.

It seems pretty obvious now that ICANN’s board — nowadays its New gTLD Program Committee — is expected to make a decision whether to accept or reject .islam and .halal.
It would be the first time that ICANN has had to decide whether to reject a gTLD for public policy reasons without the full backing of the GAC in this application round.
It faced a similar conundrum in the 2003 round — albeit using different rules of engagement — when it had to decide the fate of .xxx (which it obviously chose to approve).
The applicant for .islam and .halal is Turkey-based Asia Green IT System.
The Organization for Islamic Cooperation, which claims to represent 1.6 billion Muslims, does not support the bids. It backed two formal Community Objections to the applications, which both failed.
The OIC’s Council of Ministers is meeting this week in Conakry, Guinea, and is expected to come out with some kind of formal statement opposing Islamic-oriented gTLDs that lack support.
The strength of that statement may prove decisive when ICANN comes to consider the issue.

2 Comments Tagged: .halal, .islam, asia green, gac, ICANN, new gTLDs, oic

Jetpack Domains hit with ICANN breach notice

A small Californian registrar has been sent a contract breach notice by ICANN.
ICANN says Irvine-based Jetpack Domains has failed to comply with a scheduled audit, breaking the terms of the Registrar Accreditation Agreement that require it to supply records on demand.
The company has until January 2 to provide ICANN with the data it has asked for or risk losing its accreditation, ICANN said (pdf).
Jetpack, which had fewer than 6,000 gTLD domains under management at the last count, appears to use DomainCocoon for registrar management services.

Comment Tagged: compliance, ICANN, jetpack

ICANN floats new rules for dot-brands

Dot-brand gTLDs could get big exemptions to the standard new gTLD Registry Agreement under new rules published for public comment by ICANN over the weekend.
The proposed changes were negotiated by ICANN and the Brand Registry Group, a coalition of dot-brand applicants that one day plans to become a formal part of ICANN’s policy-making structure.
“The changes will allow trademark owners who have applied for new TLDs to promote and maintain trust in their .Brand registries,” the BRG said in a statement supporting the changes.
Dot-brands would be completely exempt from the standard Code of Conduct, which requires registries to treat all accredited registrars equally.
They’d be explicitly allowed to work with only one trusted registrar.
Given that dot-brands are all essentially single-registrants spaces (limited to the brand owner, its affiliates and trademark licensees) it makes sense to eschew the usual competitive registrar market.
Brand owners were also very worried about ICANN’s right to re-delegate defunct gTLDs, including dot-brands, to new registry operators, which could be seen as extreme brand dilution.
So the proposed RA amendment would also prevent ICANN from redelegating dot-brands for two years after the agreement expires, unless there’s a compelling public-interest reason to do so.
If ICANN chose to redelegate during that period, the former dot-brand would be able to object.
Nothing would stop a third party applying for the vacated gTLD in a subsequent application round.
The changes appear to prevent brand registries from claiming exclusive rights to gTLD strings in perpetuity, while still giving them breathing space to wind down and attempt to avoid brand confusion.
The definition of a “brand” seems to have been written in order to prevent gaming by companies with trademarks on generic strings.
To qualify to become a dot-brand, a registry would have to prove that its gTLD string is a trademark it owns for non-domain industry they’re already playing in. Strings starting with dots would be excluded.
ICANN would determine which gTLDs are eligible, and would be able to revoke the dot-brand status if the registry changed its business plans in future.
The proposal has been negotiated by ICANN legal staff and the BRG and has not yet been approved by the New gTLD Program Committee or the ICANN board.
It’s open for public comment until January 31, here.

1 Comment

Oh no! Cement company withdraws dot-brand bid

FLSmidth, a Danish cement company, has withdrawn its application for the new gTLD .fls.
It’s the first dot-brand to be withdrawn from the program in months.
FLSmidth had passed Initial Evaluation and was not facing any objections or Governmental Advisory Committee advice, so it’s not immediately clear why the company decided to pull out.
The company recently reported a fall in profitability, so perhaps it’s just trying to cut costs by eliminating superfluous expenses.

4 Comments Tagged: .fls, flsmidth, ICANN, new gTLDs

TLDH ditches .roma bid after GAC trouble

Top Level Domain Holdings has withdrawn its bid for the .roma gTLD, after apparently running afoul of the Italian government.
The gTLD was to represent the city of Rome, but Italy issued the company with an Early Warning (pdf) a year ago saying the company had “No involvement or support from the local authorities” and should withdraw.
TLDH disputed this, saying in November 2012:

In fact the Company had engaged extensively with the relevant local authority and will provide supporting documentation to the Italian GAC member. Once this evidence has been submitted, the Directors believe that the objection will be withdrawn.

The warning did not escalate to full-blown Governmental Advisory Committee advice, but .roma nevertheless failed Initial Evaluation (pdf) due to the lack of documented government support with its application.
The bid was eligible for Extended Evaluation, but it seems that TLDH was unable to get the required level of support or non-objection from Italy to allow the bid to pass.
It’s the second of TLDH’s applications to get killed off by a GAC member. It withdrew its non-geo application for .spa as soon as Belgium started making noises about its own city of Spa.
The company also ditched plans to apply for .mumbai in 2011 due to confusion about whether the city’s government actually supported it or not.

5 Comments Tagged: gac, ICANN, new gTLDs, tldh, top level domain holdings