Under global spotlight, ICANN forced to choose between GAC and the GNSO

ICANN has angered the Generic Names Supporting Organization and risks angering the Governmental Advisory Committee as it prevaricates over a controversial rights protection mechanism.
It looks like the ICANN board of directors is going to have decide whether to reject either a hard-won unanimous consensus GNSO policy recommendation or a piece of conflicting GAC advice.
ICANN is “stuck in a bind”, according to chairman Steve Crocker, and it’s a bind that comes at a time when the bottom-up multi-stakeholder process is under the global microscope.
The issue putting pressure on the board this week at the ICANN 49 public meeting here in Singapore is the protection of the names and acronyms of intergovernmental organizations.
IGOs pressured the GAC a few years ago into demanding protection in new gTLDs. They want every IGO name and acronym — hundreds of strings — blocked from registration by default.
For example, the Economic Cooperation Organization would have “economiccooperationorganization” and “eco” blocked at the second level in all new gTLDs, in much the same way as country names are reserved.
Other IGO acronyms include potentially useful dictionary-word strings like “who” and “idea”. As I’ve said before, protecting the useful acronyms of obscure IGOs that never get cybersquatted anyway is just silly.
But when ICANN approved the new gTLD program in 2011, for expediency it placed a temporary block on some of these strings and asked the GNSO to run a formal Policy Development Process to figure out a permanent fix.
In November 2012 it added hundreds more IGO names and acronyms to the list, while the GNSO continued its work.
The GNSO concluded its PDP last year with a set of strong consensus recommendations. The GNSO Council then approved them in a unanimous vote at the Buenos Aires meeting last November.
Those recommendations would remove the IGO acronyms from the temporary reserved names list, but would enable IGOs to enter those strings into the Trademark Clearinghouse instead.
Once in the TMCH, the acronyms would be eligible for the standard 90-day Trademark Claims mechanism, which alerts brand owners when somebody registers a name matching their mark.
The IGOs would not, however, be eligible for sunrise periods, so they wouldn’t have the special right to register their names before new gTLDs go into general availability.
The PDP did not make a recommendation that would allow IGOs to use the Uniform Rapid Suspension service or UDRP.
Unfortunately for ICANN, the GNSO recommendations conflict with the GAC’s current advice.
The GAC wants (pdf) the IGOs to be eligible for Trademark Claims on a “permanent” basis, as opposed to the 90-day minimum that trademark owners get. It also wants IGOs — which don’t generally enjoy trademark protection — to be made eligible for the URS, UDRP or some similar dispute resolution process.
Since Buenos Aires, the ICANN board’s New gTLD Program Committee has been talking to the GAC and IGOs about a compromise. That compromise has not yet been formally approved, but some initial thinking has been circulated by Crocker to the GAC and GNSO Council.
ICANN proposes to give IGOs the permanent Trademark Claims service that the GAC has asked for, as well as access to the URS. Both policies would have to be modified to allow this.
It would also create an entirely new arbitration process to act as a substitute for UDRP for IGOs, which are apparently legally unable to submit to the jurisdiction of national courts.
The compromise, while certainly overkill for a bunch of organizations that could hardly be seen as ripe cybersquatting targets, may seem like a pragmatic way for the board to reconcile the GNSO recommendations with the GAC advice without pissing anyone off too much.
But members of the GNSO are angry that the board appears to be on the verge of fabricating new policy out of whole cloth, ignoring its hard-won PDP consensus recommendations.
That’s top-down policy-making, something which is frowned upon within ICANN circles.
Under the ICANN bylaws, the board is allowed to reject a GNSO consensus recommendation, if it is found to be “not in the best interests of the ICANN community or ICANN”. A two-thirds majority is needed.
“That’s not what happened here,” Neustar’s vice president of registry services Jeff Neuman told the board during a meeting here in Singapore on Tuesday.
“Instead, the board on its own developed policy,” he said. “It did not accept, it did not reject, it developed policy. But there is no room in the ICANN bylaws for the board to do this with respect to a PDP.”
He said that the GNSO working group had already considered elements of ICANN’s compromise proposal and specifically rejected them during the PDP. Apparently speaking for the Registries Stakeholder Group, Neuman said the compromise should be taken out of consideration.
Bret Fausett of Uniregistry added: “The process here is as important to us as the substance. We think procedure wasn’t followed here and we detect a lack of understanding at the board level that process wasn’t followed.”
The GNSO Council seems to agree that the ICANN board can either accept or reject its recommendations, but what it can’t do is just write its own policies for the sake of a quiet life with the GAC.
To fully accept the GNSO’s recommendations would, however, necessitate rejecting the GAC’s advice. That’s also possible under the bylaws, but it’s a lengthy process.
Director Chris Disspain told the GNSO Council on Sunday that the board estimates it would take at least six months to reject the GAC’s advice, during which time the temporary reservations of IGO acronyms would remain active.
He further denied that the board is trying to develop policy from the top.
“It is not top-down, it’s not intended to be top-down, I can’t really emphasis that enough,” he told the Council.
He described the bylaws ability to reject the GNSO recommendations as a “sledgehammer”.
“It would be nice to be able to not have to use the sledgehammer,” he said. “But if we did have to use the sledgehammer we should only be using it because we’ve all agreed that’s what we have to do.”
Chair Steve Crocker summed up the board’s predicament during the Sunday meeting.
“We always do not want to be in the position of trying to craft our own policy decision,” he said. “So we’re stuck in this bind where we’re getting contrary advice from sources that feel very strongly that they’ve gone through their processes and have spoken and so that’s the end of it from that perspective.”
The bind is especially tricky because it’s coming at a time when ICANN is suddenly becoming the focus of a renewed global interest in internet governance issues.
The US government has said that it’s willing to walk away from its direct oversight of ICANN, but only if what replaces it is a “multi-stakeholder” rather than “intergovernmental” mechanism
If ICANN were to reject the proceeds of a two-year, multi-stakeholder, bottom-up, consensus policy, what message would that send to the world about multistakeholderism?
On the other hand, if ICANN rejects the advice of the GAC, what message would it send about governments’ ability to effectively participate as a stakeholder in the process?
Clearly, something is broken when the procedures outlined in ICANN’s bylaws make compromise impossible.
Until that is fixed — perhaps by getting the GAC involved in GNSO policy-making, something that has been talked about to no end for years — ICANN will have to continue to make these kinds of hard choices.
Fielding a softball question during a meeting with the GNSO Council on Saturday, ICANN CEO Fadi Chehade said that “to value the process as much as I value the result” is the best piece of advice he’s received.
“Policies get made here,” Chehade told the Council, “they should not be made at the board level, especially when a consensus policy was made by the GNSO. Akram [Atallah, Generic Domains Division president] today was arguing very hard at the board meeting that even if we don’t think it’s the right thing, but it is the consensus policy of the GNSO, we should stick with it.”
Will the board stick with it? Director Bruce Tonkin told the registries on Monday that the board would try to address their concerns by today, so we may not have to wait long for an answer.

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

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

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

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

Common first name lost to URS complaint

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

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

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

Will .exposed see a big sunrise?

Donuts’ new gTLD .exposed goes into sunrise today, but will it put the fear into trademark owners?
It’s arguably the first “ransom” TLD to go live in the current round and the first since .xxx, which scared mark holders into blocking over 80,000 domains back in late 2011.
Most new gTLD sunrise periods to date — most of which have been focused on vertical niches — have had sunrise registrations measured in tens or hundreds rather than thousands.
But .exposed, I would say, is in the same free speech zone as yet-to-launch .sucks and .gripe, which lend themselves well to having a company, product or personal name at the second level.
Brand protection registrars are encouraging their clients to pay special attention to this type of gTLD.
Will this cause a spike in sunrise sales for Donuts over the next 60 days?
It might be difficult to tell, given that Donuts also offers brand owners a blocking mechanism via the Domain Protected Marks List service, so the domains don’t show up in the zone files.
But DPML blocks can be overturned by others with matching trademarks, so some trademark owners may decide to register the name instead for an overabundance of caution.

Go Daddy risking Oscars wrath with .buzz premium domains?

The new gTLD registry Dot Strategy included many famous brands on its list of premium .buzz names, including two that could get its partner, Go Daddy-owned Afternic, in hot water.
Until a couple of hours ago, nic.buzz carried what appeared to be thousands of premium listings, organized by category and carrying prices of $1,000 and up, some of which seemed to target brands.
The names of several sports teams, such as 49ers.buzz and blackhawks.buzz, were listed for sale in the sports category (hat tip: Valideus‘ Brian Beckham).
I also spotted listings for domains such as photoshop.buzz (an Adobe software brand) in the technology category and hobbit.buzz (believe it or not, “Hobbit” is a trademark) in an entertainment category.
But the ones that really caught my attention were academyaward.buzz and academyawards.buzz, which carried prices of $1,900 each.

That’s surprising because if you try to buy these domains you’ll be instructed to contact Afternic, which is handling the premium process. And as of September, Go Daddy owns Afternic.
The Academy of Motion Picture Arts and Sciences, which hands out the Oscars and owns “Academy Award” and “Academy Awards” trademarks, has been locked in litigation with Go Daddy for the last four years.
The Academy claims that Go Daddy is cybersquatting due to its practice of making money parking its customers’ domains, including domains containing Academy trademarks such as academyawardz.com.
Most recently, Go Daddy tried to get the appointed judge in the case kicked out, alleging that she’s in the Academy’s pocket.
While the lawsuit is certainly controversial, attempting to sell $3,800 worth of domain names matching the Academy’s marks probably wouldn’t help Go Daddy look less cybersquatty to its opponent.
It could be argued that many of the premium names that match brands are also generic — Black Hawks could be helicopters and I’m sure there are plenty of academies in the world that hand out awards.
A legitimate registrant could buy many of these trademark-matching listed names and fight off a UDRP, I reckon.
But when somebody lists the name for sale in a category appropriate to the class of trademark, I’d say that makes the name look a lot less generic.
Bieber is a surname presumably shared by many people, but when you list bieber.buzz for sale in a category related to entertainment it can only really refer to one person.
Somebody yanked the premium listings section from the nic.buzz web site after I requested comments from Dot Strategy and Go Daddy a few hours ago. This post will be updated should I receive said comments.
.buzz is currently in its sunrise period and is due to go to general availability in mid-April. As I’ve said before, it’s one of my favorite new gTLD strings and I wouldn’t be surprised if sells quite well.
UPDATE: Go Daddy said: “Afternic is working with dotStrategy, Co. (the .BUZZ registry) to review the list and revise as appropriate.”

TMCH sends out 17,500 Trademark Claims notices in a month

Wow.
Just four weeks after the first new gTLDs went into general availability, the Trademark Clearinghouse has already sent out over 17,500 Trademark Claims notices to trademark owners.
A Claims notice is a warning that is generated whenever somebody registers a domain name that exactly matches a trademark listed in the TMCH’s database.
The 17,500 number refers to post-registration notices sent to trademark owners, not pre-registration warnings delivered to would-be registrants.
Considering that there are somewhere in the region of 180,000 domain names in new gTLDs today, 17,500 represents a surprisingly high percentage of the market (high single figures).
Of course, not all of these will be due to cybersquatting attempts.
There are plenty of marks in the TMCH that are acronyms or dictionary words, either because they match a genuine brand or because somebody obtained trademarks on generic terms in order to game sunrise periods.
I’d count those as false positives, personally, but it’s impossible to know without access to TMCH data how many of the 17,500 alerts delivered to date can be accounted for in that way.
There are 26,802 marks in the TMCH, according to the company.

Fifth URDP provider goes live

The Arab Center for Dispute Resolution has gone live as the fifth approved provider of UDRP dispute resolution services.
The Jordan-based outfit, which says it has offices in “all Arab countries”, says it “is uniquely positioned to address domain name issues pertinent to the region, while maintaining an international, multicultural disposition to case settlement.”
ACDR was approved by ICANN to administer UDRP cases last May, over the objections of the Internet Commerce Association and others, which want UDRP providers bound to ICANN contracts.
The organization does not appear to be competing hard on price. A single-domain case will set trademark owners back a minimum of $1,500 ($1,000 to the panel, $500 to ACDR), which is the same as market leader WIPO.
It’s actually a little more expensive than WIPO — a five-domain case will cost $1,700 compared to WIPO’s $1,500.

Are these the 10 most-popular new gTLD domains?

I’m a firm believer that the success of new gTLDs will be measured not just in registration volumes but also in usage, and usage is a lot trickier to measure than domains under management.
One way of measuring usage that’s very familiar to many domainers is Alexa, the Amazon-owned web metrics service that uses toolbars and other data sources to rank web sites by popularity.
This kind of popularity data has been incorporated into TLD Health Check for some time, as one of many means to compare TLDs.
Alexa data isn’t perfect, but it is data, so I thought it might be interesting to see which of the 147 new gTLDs currently in the root are showing up in its daily list of the top one million domains.
There are 10 names, half of which are .guru domains, on yesterday’s list. There are not many functioning web sites yet, but for whatever reason these domains all, according to Alexa, have traffic.
These are the domains, with their popularity rank in parentheses:
www.link (356,406)
The highest-ranking new gTLD domain on our list is actually banned by ICANN due to the purported risk of name collisions.
It’s reserved by Uniregistry and will not resolve or be made available for registration for the foreseeable future.
I think what we’re looking at here is a case of somebody (or more likely lots of people) using www.link in web pages when they really should be using example.com.
beatport.singles (538,603)
Possible cybersquatting? Beatport (I’m old and unhip enough that I had to Google it) is an online electronic music store and the domain is registered via Go Daddy’s Domains By Proxy service.
The domain presumably refers to music “singles” rather than marital status, but it doesn’t seem to resolve from where I’m sitting. Quite why it’s getting traffic is beyond me. A typo in a URL somewhere? IP lawyers?
gtu.guru (589,205)
The first resolving name on our list leads to a work-in-progress Blogger blog. It’s registered to a chap in Gujarat, India, leading me to infer that GTU is Gujarat Technological University. Another squat?
seo.guru (671,647)
The first domainer on the list, I believe. The guy who registered seo.guru paid roughly $2,500 for it during Donuts’ first Early Access Program. It’s currently parked at Go Daddy.
I’d hazard a guess that it’s on the list because it’s a dream URL for an SEO professional (or charlatan, take your pick) and SEOs checking its availability are much more likely to have the Alexa toolbar installed.
deals.guru (790,778)
This one resolves to an under construction page.
I’d speculate that the pre-release $8,100 sale of deals.xyz caused a lot of domainers to check out whether the same second-level was available in other new gTLDs, spiking its traffic and causing an Alexa appearance.
nic.club (796,727)
The only registry-owned domain on our list — nic.club is the official registry web site of .CLUB Domains, which has its .club gTLD in sunrise until the end of March.
Is its appearance on the list indicative of strong pre-launch marketing or something else?
beekeeping.guru (857,778)
I’m not making this stuff up. This domain belongs to a British pest control company but resolves to a default Apache page. I can’t begin to guess why it’s getting traffic.
cp.wien (864,800)
An unregistered name in a sunrise gTLD. Possible name collision?
shop.camera (873,146)
Hot dang, we have a web site!
The domain shop.camera was only registered 10 days ago, but it already leads to what appears to be a fully-functioning Amazon affiliate site, complete with “Shop.Camera” branding.
freebitcoin.guru (994,404)
An email-gathering affiliate marketing site that I personally wouldn’t touch with yours. Still, it looks quite slick compared to the others on the list and it appears that the owner has made some effort to promote it.

First new gTLD cybersquatting case goes to IBM

IBM has won the first Uniform Rapid Suspension case to be filed against a new gTLD domain name.
National Arbitration Forum panelist Darryl Wilson handed down the perfunctory decision February 12, just seven days after IBM complained about ibm.ventures and ibm.guru.
Both domains have now been suspended, redirecting to a placeholder web site which states:

This Site is Suspended
The Domain Name you’ve entered is not available. It has been taken down as a result of dispute resolution proceedings pursuant to the Uniform Rapid Suspension System (URS) Procedure and Rules.
For more information relating to the URS, please visit: http://newgtlds.icann.org/en/applicants/urs

It was a slam dunk case, as you might imagine — the URS is designed to handle slam-dunk cases.
The registrant, who we estimate spent $2,500 on the two names, did not do himself any favors by redirecting both names to IBM’s .com site.
As we and Wilson both noted, this showed that he’d registered the names with IBM in mind.
IBM’s mark is included in the Trademark Clearinghouse, so the registrant will have been given a warning at the point of registration that he may be about to infringe someone’s IP rights.
Since the names were registered IBM, we’re told, has purchased a Domain Protected Marks List block from the registry, Donuts, which will prevent the names being re-registered when they expire.

IBM files URS complaints against guy who spent $2,500 on two domains

If you were a cybersquatter, would you spend $2,500 on just two domain names without doing even the most basic research into whether you’d get to keep the names?
One individual from New Jersey has done precisely that, apparently, and has now been hit with what may well be the first new gTLD Uniform Rapid Suspension complaint, according to Donuts.
Donuts VP Mason Cole said in a DI comment today that the company has “been notified of an additional URS action involving two IBM names.”
I believe he’s referring to ibm.guru and ibm.ventures, two new gTLD domains I highlighted earlier today as being registered under Go Daddy’s Whois privacy service.
Privacy protection has since been lifted from both domains, in accordance with Go Daddy policy, revealing the registrant (assuming it’s not a fake name) as one Denis Antipov of New Jersey.
Both domains were redirecting to ibm.com when I checked a few days ago — showing that the registrant clearly had IBM in mind when he bought the names — but now do not resolve for me.
What’s funny is that the registration date of the domains is January 31. Due to Donuts’ Early Access Program, the registrant will have paid Go Daddy a total of $2,479.98 for the pair.
Now, he stands to lose that investment in a URS case that will set IBM back about the same amount.
Donuts’ Cole said: “When infringement is alleged, we want to see the due process tools developed for new TLDs put to use. Registries are not trademark adjudicators — we implement the objective decisions of others.”
UPDATE: An earlier version of this story incorrectly reported the price the registrant will have paid for these names.