Donuts’ trademark block list goes live, pricing revealed

Donuts’ Domain Protected Marks List, which gives trademark owners the ability to defensively block their marks across the company’s whole portfolio of gTLDs, has gone live.
The service goes above and beyond what new gTLD registries are obliged to offer by ICANN.
As a “block” service, in which names will not resolve, it’s reminiscent of the Sunrise B service offered by ICM Registry at .xxx’s launch, which was praised and cursed in equal measure.
But with DPML, trademark owners also have the ability to block “trademark+keyword” names, for example, so Pepsi could block “drinkpepsi” or “pepsisucks”.
It’s not a wildcard, however. Companies would have to pay for each trademark+keyword string they wanted blocking.
DPML covers all of the gTLDs that Donuts plans to launch, which could be as many as 300. It currently has 28 registry agreements with ICANN and 272 applications remaining in various stages of evaluation.
Trademark owners will only be able to sign up to DPML if their marks are registered with the Trademark Clearinghouse under the “use” standard required to participate in Sunrise periods.
Donuts is also excluding an unspecified number of strings it regards as “premium”, so the owners of marks matching those strings will be out of luck, it seems.
Blocks will be available for a minimum of five years an maximum of 10 years. After expiration, they can be renewed with minimum terms of one year.
The company has not disclose its wholesale pricing, but registrars we’ve found listing the service on their web sites so far (101domain and EnCirca) price it between $2,895 and $2,995 for a five-year registration.
It looks pricey, but it’s likely to be extraordinarily good value compared to the alternative of Sunrise periods.
If Donuts winds up with 200 gTLDs in its portfolio, a $3,000 price tag ($600 per year) works out to a defensive registration cost of $3 per domain per gTLD per year.
If it winds up with all 300, the price would be $2.
That’s in line (if we’re assuming non-budget pricing comparisons and registrars’ DPML markup), with Donuts co-founder Richard Tindal’s statement earlier this year: that DPML would be 5% to 10% the cost of a regular registration.
Tindal also spoke then about a way for rival trademark owners to “unblock” matching names, so Apple the record company could unblock a DPML on apple.music obtained by Apple the computer company, for example.
Donuts is encouraging trademark owners to participate before its first gTLDs goes live, which it expects to happen later this year.

ICANN to crack down on UDRP “cyberflight”

ICANN has moved closer to cracking down on cybersquatters who try to flip their domains when they discover they’ve been hit with a UDRP complaint.
Under recommendations approved by the GNSO Council yesterday, registrars would be bound by a much stricter set of UDRP-related domain locking rules in future.
So-called “cyberflight” — where squatters transfer their domains to a new registrar or registrants — appears to be a relatively infrequent problem, but when it does happen it causes big headaches for UDRP providers and trademark owners.
A survey of UDRP providers carried out as part of the GNSO’s policy development process discovered that the vast majority of registrars already lock domains hit by UDRP.
The problem is, they said, that locking practices are not uniform. Some registrars take well over a week to lock domains, and what the “lock” entails differs by registrar.
The recommendations of the GNSO’s Final Report on the Locking of a Domain Name Subject to UDRP Proceedings Policy Development Process, adopted by the Council yesterday, seek to standardize the process.
After being told about a complaint against one of its domains, the registrar in future would have a maximum of two business days to put a lock — preventing any changes in registrant or registrar — in place.
The lock would remain until the UDRP was resolved, but there would be various safeguards in place to enable complainants and respondents to settle their differences outside of the UDRP.
The lock would not prevent registrars or proxy/privacy services revealing the true identity of the registrant — that wouldn’t count as a change of registrant.
To prevent registrants abusing the two-day window to sell their domains or switch registrars, they would not be told about the existence of the UDRP until the domain had been locked.
The UDRP rules currently require the complainant to send a copy of their complaint to the domain owner at the same time it is filed with the UDRP provider.
But the GNSO has now recommended getting rid of this rule, stating: “as a best practice, complainants need not inform respondents that a complaint has been filed to avoid cyberflight.”
The registrant would be informed later by the UDRP provider instead.
Registrars would be prohibited from tipping off the registrant until the lock was in place.
The July 2013 recommendations (pdf) came out of a working group that was formed in April 2012, in response to policy ideas floated in 2011.
The GNSO’s resolution calls for ICANN staff to work with members of the working group on an implementation plan, which would eventually be put to the ICANN board for approval.
Once through the board, the new policy would become binding on all ICANN-accredited registrars.

ICANN won’t say how Demand Media passed its new gTLD background check

After badgering ICANN for a few weeks, I’ve finally got a firm “no comment” on the question of how new gTLD applicant Demand Media managed to pass its background checks.
The question of whether it’s possible for serial cybersquatters to bypass ICANN screening and be awarded new gTLDs just by setting up shell companies is still open, it seems.
As DI and other blogs have been reporting for the past few years, there was a question mark over Demand Media’s eligibility for the new gTLD program due to its history of cybersquatting.
Under ICANN rules, any company that lost three or more UDRP decisions with at least one loss in the last three years would not pass its background screening. The Applicant Guidebook states:

In the absence of exceptional circumstances, applications from any entity with or including any individual with convictions or decisions of the types listed in (a) – (m) below will be automatically disqualified from the program.
…
m. has been involved in a pattern of adverse, final decisions indicating that the applicant or individual named in the application was engaged in cybersquatting as defined in the Uniform Domain Name Dispute Resolution Policy (UDRP), the Anti-Cybersquatting Consumer Protection Act (ACPA), or other equivalent legislation, or was engaged in reverse domain name hijacking under the UDRP or bad faith or reckless disregard under the ACPA or other equivalent legislation. Three or more such decisions with one occurring in the last four years will generally be considered to constitute a pattern.

Demand Media subsidiary Demand Domains has lost over 30 UDRP cases, most recently in 2011, but its United TLD Holdco subsidiary has sailed through its Initial Evaluations.
Technically, shouldn’t it have failed screening and therefore IE?
Domain Name Wire speculated in November 2010 that ICANN had deliberately introduced loopholes in order to let Demand — and, at the time, Go Daddy — into the new gTLD program.
At that time, ICANN had just removed references to “any person or entity owning (or beneficially owning) fifteen percent or more of the applicant” in the background screening section of the Guidebook.
That might have introduced a loophole allowing subsidiaries of cybersquatters to apply.
But Demand Media seemed to think it was still at risk, asking ICANN in December 2010 to change the background check rules.
ICANN did. In the next version of the Guidebook, published in April 2011, it added the “In the absence of exceptional circumstances” qualifying language.
It’s also possible that this was the loophole that allowed Demand to pass screening.
Judging by the UDRP complaints it was involved in in the past, the company usually argued against the “bad faith” element of the policy. It often said it didn’t know about the complainant’s trademark and/or said it had offered to transfer the domain at no charge.
But more than 30 UDRP panelists didn’t buy that argument and still found against Demand. The company lost far more complaints than it won.
The fact that the company apparently managed to clean its act up a few years ago — not being hit with any complaints since 2011 — suggests that its act wasn’t all that clean to begin with.
Either way, neither ICANN nor Demand wants to talk about how the company passed screening, so I guess we’re still left wondering whether this section of the Guidebook is worth the PDF it’s written on.

Blow to domainers as Arab center approved to settle cybersquatting disputes

ICANN has approved a new UDRP resolution provider, the first to be based in the Arab region, despite the objections of domainers.
The Arab Center for Dispute Resolution will now be able to service UDRP complaints. But it won’t be bound to an ICANN contract, as had been demanded by the Internet Commerce Association and others.
The ACDR was approved by the ICANN board last week, almost three years after it originally applied for the privilege.
The board said in its rationale that the move would be good for geographic diversity and that its rigorous community review process highlighted community accountability.
On the issue of UDRP provider contracts, it merely noted:

commenters suggested that ICANN develop contracts with each of its UDRP providers as a means to require uniformity among providers. Contracts have never been required of UDRP providers.
…
the proposal now includes an affirmative recognition that if ICANN imposes further requirements on providers, the ACDR will follow those requirements

The ACDR will come as a knock to the ICA, which recently celebrated the fact that ICANN intends to have formal contracts with providers of Uniform Rapid Suspension services.

NAF prices URS at $375 to $500 per case

The National Arbitration Forum has released its price list for Uniform Rapid Suspension complaints, saying that the cheapest case will cost $375.
That’s for cases involving one to 15 domains. Prices increase based on the number of domains in the filing, capped at $500 for cases involving over 100 names.
The prices are within the range that ICANN had asked of its URS providers.
Some potential URS vendors had argued that $500 was too low to administer the cases and pay lawyers to act as panelists, but changed their tune after ICANN opened up an RFP process.
NAF’s price list also includes response fees of $400 to $500, which are refundable to the prevailing party. There are also extra fees for cases involving more than one panelist.
The prices are found in the NAF’s Supplemental Rules for URS, which have not yet been given the okay by ICANN. NAF expects that to come by July 1.

ICANN has found a sub-$500 URS provider

ICANN has picked a provider for its Uniform Rapid Suspension anti-cybersquatting service, one that’s willing to manage cases at under $500 per filing.
The news came from new gTLD program manager Christine Willett during webcast meetings this week.
“We have identified a provider for the URS who’s going to be able to provide that service within the target $300 to $500 filing fee price range. We’re in the process of formalizing that relationship,” she said last night.
The name of the lucky provider has not yet been revealed — Willett expects that news to come in February — but it’s known that several vendors were interested in the gig.
URS is a complement to the existing UDRP system, designed to enable trademark owners to execute quick(ish) takedowns, rather than transfers, of infringing domain names.
ICANN found itself in a bit of a quandary last year when UDRP providers WIPO and the National Arbitration Forum said they doubted it could be done for the target fee without compromising registrant rights.
But a subsequent RFP — demanded by members of the community — revealed several providers willing to hit the sub-$500 target.
ICANN expects to approve multiple URS vendors over time.

New gTLD “strawman” splits community

The ICANN community is split along the usual lines on the proposed “strawman” solution for strengthening trademark protections in the new gTLD program.
Registrars, registries, new gTLD applicants and civil rights voices remain adamant that the proposals — hashed out during closed-door meetings late last year — go too far and would impose unreasonable restrictions on new gTLDs registries and free speech in general.
The Intellectual Property Constituency and Business Constituency, on the other hand, are (with the odd exception) equally and uniformly adamant that the strawman proposals are totally necessary to help prevent cybersquatting and expensive defensive registrations.
These all-too-predictable views were restated in about 85 emails and documents filed with ICANN in response to its initial public comment period on the strawman, which closed last night.
Many of the comments were filed by some of the world’s biggest brand owners — many of them, I believe, new to the ICANN process — in response to an International Trademark Association “call to action” campaign, revealed in this comment from NCS Pearson.
The strawman proposals include:

• A compulsory 30-day heads-up window before each new gTLD starts its Sunrise period.
• An extension of the Trademark Claims service — which alerts trademark owners and registrants when a potentially infringing domain is registered — from 60 days to 90 days.
• A mandatory “Claims 2” service that trademark owners could subscribe to, for an additional fee, to receive Trademark Claims alerts for a further six to 12 months.
• The ability for trademark owners to add up to 50 confusingly similar strings to each of their Trademark Clearinghouse records, provided the string had been part of a successful UDRP complaint.
• A “Limited Preventative Registration” mechanism, not unlike the .xxx Sunrise B, which would enable trademark owners to defensively register non-resolving domains across all new gTLDs for a one-off flat fee.

Brand owners fully support all of these proposals, though some companies filing comments complained that they do not go far enough to protect them from defensive registration costs.
The Limited Preventative Registration proposal was not officially part of the strawman, but received many public comments anyway (due largely to INTA’s call-to-action).
The Association of National Advertisers comments were representative:

an effective LPR mechanism is the only current or proposed RPM [Rights Protection Mechanism] that addresses the critical problem of defensive registrations in the new Top Level Domain (gTLD) approach. LPR must be the key element of any meaningful proposal to fix RPMs.

Others were concerned that the extension to Trademark Claims and proposed Claims 2 still didn’t go far enough to protect trademark rights.
Lego, quite possibly the most aggressive enforcer of its brand in the domain name system, said that both time limits are “arbitrary” and called for Trademark Claims to “continue indefinitely”.
It’s pretty clear that even if ICANN does adopt the strawman proposals in full, it won’t be the end of the IP community’s lobbying for even stronger trademark protections.
On the other side of the debate, stakeholders from the domain name industry are generally happy to embrace the 30-day Sunrise notice period (many will be planning to do this in their pre-launch marketing anyway).
A small number also appear to be happy to extend Trademark Claims by a month. But on all the other proposals they’re clear: no new rights protection mechanisms.
There’s a concern among applicants that the strawman proposals will lead to extra costs and added complexity that could add friction to their registrar and reseller channel and inhibit sales.
The New TLD Applicant Group, the part of the Registries Constituency representing applicants for 987 new gTLDs, said in its comments:

because the proposals would have significant impact on applicants, the applicant community should be supportive before ICANN attempts to change such agreements and any negative impacts must be mitigated by ICANN.

There’s a concern, unstated by NTAG in its comments, that many registrars will be reluctant to carry new gTLDs at launch if they have to implement more temporary trademark-protection measures.
New registries arguably also stand to gain more in revenue than they lose in reputation if trademark owners feel they have to register lots of domains defensively. This is also unstated.
NTAG didn’t say much about the merits of the strawman in it comments. Along with others, its comments were largely focused on whether the changes would be “implementation” or “policy”, saying:

There can be no doubt that the strawman proposal represents changes to policy rather than implementation of decided policy.

If something’s “policy”, it needs to pass through the GNSO and its Policy Development Process, which would take forever and have an uncertain outcome. Think: legislation.
If it’s “implementation”, it can be done rather quickly via the ICANN board. Think: executive decision.
It’s becoming a bit of a “funny cause it’s true” in-joke that policy is anything you don’t want to happen and implementation is anything you do.
Every comment that addresses policy vs implementation regarding the strawman conforms fully to this truism.
NTAG seems to be happy to let ICANN mandate the 30-day Sunrise heads-up, for example, even though it would arguably fit into the definition of “policy” it uses to oppose other elements of the strawman.
NTAG, along with other commenters, has rolled out a “gotcha” mined from a letter then-brand-new ICANN CEO Fadi Chehade sent to the US Congress last September.
In the letter, Chehade said: “ICANN is not in a position to unilaterally require today an extension of the 60-day minimum length of the trademark claims service.”
I’m not sure how much weight the letter carries, however. ICANN could easily argue that its strawman negotiations mean any eventual decision to extend Claims was not “unilateral”.
As far as members of the the IPC and BC are concerned, everything in the strawman is implementation, and the LPR proposal is nothing more than an implementation detail too.
The Coalition for Online Accountability, which represents big copyright holders and has views usually in lock-step with the IPC, arguably put it best:

The existing Rights Protection Mechanisms, which the Strawman Solution and the LPR proposal would marginally modify, are in no way statements of policy. The RPMs are simply measures adopted to implement policies calling for the new gTLD process to incorporate respect for the rights (including the intellectual property rights) of others. None of the existing RPMs is the product of a PDP. They originated in an exercise entitled the Implementation Recommendation Team, formed at the direction of the ICANN Board to recommend how best to implement existing policies. It defies reason to assert that mechanisms instituted to implement policy cannot now be modified, even to the minimal extent provided in the current proposals, without invoking the entire PDP apparatus.

Several commenters also addressed the process used to create the strawman.
The strawman emerged from a closed-doors, invitation-only event in Los Angeles last November. It was so secretive that participants were even asked not to tweet about it.
You may have correctly inferred, reading previous DI coverage, that this irked me. While I recognize the utility of private discussions, I’m usually in favor of important community meetings such as these being held on the public record.
The fact that they were held in private instead has already led to arguments among even those individuals who were in attendance.
During the GNSO Council’s meeting December 20 the IPC representative attempted to characterize the strawman as a community consensus on what could constitute mere implementation changes.
He was shocked — shocked! — that registrars and registries were subsequently opposed to the proposals.
Not being privy to the talks, I don’t know whether this rhetoric was just amusingly naive or an hilariously transparent attempt to capitalize on the general ignorance about what was discussed in LA.
Either way, it didn’t pass my sniff test for a second, and contracted parties obviously rebutted the IPC’s take on the meeting.
What I do know is that this kind of pointless, time-wasting argument could have been avoided if the talks had happened on the public record.

Twitter files UDRP over twitter.org

Twitter has filed a cybersquatting complaint over the domain name twitter.org, which is currently being used for one of those bogus survey scam sites.
The domain has been registered since October 2005 — six months before Twitter was created — but appears to have changed hands a number of times since then.
It’s been under Whois privacy since mid-2011, but the last available unprotected record shows the domain registered to what appears to be Panama-based law firm.
Hiding ownership via offshore shell companies is a common tactic for people cybersquatting high-profile brands.
The UDRP complaint, which looks like a slam-dunk to me, has been filed with WIPO.

Melbourne IT scales back HARM proposal

Melbourne IT has published a revised, less-complicated version of its High At-Risk Marks (HARM) proposal for protecting famous brands in the new gTLD program.
The new version throws more than a few bones to trademark lawyers, most of whom rejected many aspects of the original proposal at a meeting in Washington DC this September.
It’s a lot closer to the eight-point wish-list published jointly by the Intellectual Property Constituency and Business Constituency last month.
HARM envisions a two-tier set of trademark rights protection mechanisms in new gTLDs, with the super-famous brands that get cybersquatted and phished on a regular basis enjoying greater privileges.
Companies that could prove their trademarks were subject to regular abuse would, for example, benefit from a perpetual Trademark Claims notification service on “brand+keyword” domains.
The new version would lower the bar for inclusion on the list.
The first HARM said trademarks should be registered on five continents, but the new version reduces that to a single registration, provided that the jurisdiction does substantive review.
A provision to only extend the protection to five-year-old marks has also been removed, and the number of UDRP wins required to prove abuse has also been reduced from five to one.
I’ve previously expressed my fondness for the idea of using UDRP decisions to gauge the risk profile of a trademark, but it was recently pointed out to me that it may incentivize mark holders to pay people to cybersquat their marks, in order to win slam-dunk UDRPs and thus benefit from better RPMs, which makes me less fond of it.
Even if such skullduggery is an outside risk, I think a single UDRP win may be too low a bar, given the number of dubious decisions produced by panelists in the past.
The revised HARM would still exclude dictionary words from the special protections (as the paper points out, Apple and Gap would not be covered). The proposal states:

Melbourne IT believes it will be difficult to get consensus in the ICANN community that this mechanism should apply to all trademark owners, most of whom do not suffer any trademark abuse. Many trademarks also relate to generic dictionary words that would be inappropriate to block across all gTLDs.

The original HARM paper was put forth as compromise, designed to help prevent or mitigate the effects of most cybersquatting, while being slightly more palatable to registries and registrars than the usual all-or-nothing demands coming from trademark lawyers.
While not particularly elegant, most of its recommendations were found wanting by the ICANN community, which is as bitterly divided as always on the need for stronger rights protection mechanisms.
The IPC and BC did adopt some of its ideas in their recent joint statement on enhanced RPMs, including the idea that frequently squatted names should get better protection, but rejected many more of the Melbourne-proposed criteria for inclusion on the list.
Meanwhile, many registrars shook their heads, muttering something about cost, and new gTLD applicants staunchly rejected the ideas, based on the mistaken notion that paying their $185,000 has rendered the Applicant Guidebook immutable.
Read the new Melbourne IT paper here (pdf).

Trademark Clearinghouse “breakthrough” at private Brussels meeting

ICANN’s various stakeholder groups reached a “breakthrough” agreement on the Trademark Clearinghouse for new gTLDs, according to attendees at a closed-doors meeting last week.
The meeting in Brussels evidently saw attendance from members of the Business Constituency and Intellectual Property Constituency, in addition to the registries and registrars that have been involved in the development of the TMCH implementation model to date.
It was a discussion of nitty-gritty implementation details, according to attendees, rather than reopening the policy discussion on matters such as the mandatory Trademark Claims service period.
Crucially, ICANN appears to have dropped its strong objection to a community-developed proposal that would put the TMCH in the “critical path” for domain registrations.
The community proposal requires a centralized Clearinghouse serving Trademark Claims notices live rather than in a batch fashion, meaning up-time would be paramount.
Senior ICANN executives including chief strategy officer Kurt Pritz were adamant that this model would create an unacceptable single point of failure for the new gTLD program.
But CEO Fadi Chehade, who in Toronto last month appeared to disagree with Pritz, does not appear to have shared these concerns to the same deal-breaking extent.
In a blog post reviewing the meeting’s conclusions last night, Chehade wrote that the community has settled on a “hybrid” solution:

Participants reviewed the features of possible centralized and decentralized systems, and agreed to support a “hybrid” system for Trademark Claims. In this system, a file of domain name labels derived from the trademarks recorded in the Clearinghouse (and hence subject to a Claims Notice) would be distributed to all registries and updated on a regular basis, and a live query system would be used to retrieve the detailed data from the Clearinghouse when necessary to display the Claims Notice to a prospective registrant.

This description appears to closely match the community proposal (pdf) developed by the registries.
ARI Registry Services CTO Chris Wright, one of the key architects of the community TMCH proposal, made no mention of a “hybrid” solution in his update following the Brussels meeting.
According to Wright, “ICANN has tentatively agreed to proceed with the community-developed Trademark Clearinghouse”.
The meeting also concluded that there’s no way to provide blanket privacy protection for trademark data under Trademark Claims, something that has been worrying trademark holders for a while.
At a session in Toronto last month registries observed that the whole point of Trademark Claims is to provide information about trademarks to potential registrants.
That means it can be mined in bulk, and there’s not a heck of a lot registries can do to prevent that even with technical solutions such as throttling access.
Chehade blogged:

There was discussion on implementing an appropriate framework for access and use of the data. The group considered whether measures were necessary specifically to address potential mining of the Clearinghouse database for purposes other than to support the rights protection mechanisms. Given that the Trademark Clearinghouse is designed to provide trademark data for particular purposes, there was agreement that most controls would be ineffective in attempting to control data elements once provided to other parties.

So, how much community support do the Brussels agreements have?
The meeting was not webcast and there does not appear to be a recording or transcript, so it’s difficult to know for sure who was there, what was discussed or what conclusions were reached.
Concerns were expressed by members of the Non-Commercial Stakeholders Group, as well as the Internet Commerce Association, about the fact that ICANN did not widely publicize the meeting, which was first reported in an ICA blog post last week.
The ICA’s Phil Corwin also questioned whether key members of the IPC and BC — based on the US Eastern seaboard — would be able to attend due to Hurricane Sandy’s impact on air travel.
While there seems to be a feeling that solid progress on the Clearinghouse is definitely a positive development for the new gTLD program, the fact that the consensus was apparently reached behind closed doors does not appear to be in lockstep with Chehade’s commitment to increase transparency at ICANN.