GNSO says dot-brand rules “inconsistent” with policy

The ability of dot-brand gTLDs to limit how many registrars they work with is “inconsistent” with the GNSO’s longstanding policy on new gTLDs, ICANN’s GNSO Council has found.
At the end of March, ICANN approved a set of Registry Agreement opt-outs, such as the ability to avoid sunrise periods and approve just three hand-picked registrars, for dot-brands.
They’re designed to make life easy for single-registrant zones where the gTLD is also a famous, trademarked brand and it would be silly to enforce open access to all accredited registrars.
But the GNSO Council resolved last week that the registrar exception is inconsistent with the GNSO policy that first kicked off the new gTLD program in 2007, which called for non-discriminatory access.
It had been asked specifically by the ICANN board’s New gTLD Program Committee to comment on whether there was a conflict. The Council said:

the language of this recommendation of the final report of the GNSO does not stipulate any exceptions from the requirements to treat registrars in a non-discriminatory fashion and (ii) the GNSO new gTLDs Committee discussed potential exceptions at the time, but did not include them in its recommendations, which is why the lack of an exception cannot be seen as an unintended omission, but a deliberate policy statement

However, the Council also decided that it has no objection to ICANN going ahead with the so-called Specification 13 exceptions, saying it “does not object to the implementation of Specification 13 as a whole”.
No GNSO members bothered to object when Spec 13 was open to public comment.
While it’s certainly a pragmatic, reasonable decision by the GNSO, it does highlight a situation where ICANN seems to have overridden a hard-fought community consensus policy.
That’s likely why its resolution also warns the ICANN board that its decision “may not be taken as a precedent”. Which of course it now is, regardless.

.nokia — a dot-brand without a brand?

Will .nokia be the next withdrawal from the new gTLD program?
It seems possible, if reports about the death of the Nokia brand are to be believed.
The news blog Nokia Power User reported yesterday that Nokia the company will be renamed Microsoft Mobile following the close of the $7.2 billion acquisition of Nokia by Microsoft this Friday.
The blog, which may live to regret its own choice of brand, quoted from a memo from the company to business partners, reading:

Please note that upon the close of the transaction between Microsoft and Nokia, the name of Nokia Corporation/Nokia Oyj will change to Microsoft Mobile Oy. Microsoft Mobile Oy is the legal entity name that should be used for VAT IDs and for the issuance of invoices.

However, in a blog post confirming the April 25 close date, Microsoft general counsel Brad Smith did not mention a rebranding.
The domain name nokia.com will live for up to a year, he said:

While the original deal did not address the management of online assets, our two companies have agreed that Microsoft will manage the nokia.com domain and social media sites for the benefit of both companies and our customers for up to a year.

What does that mean for the .nokia gTLD application?
According to the ICANN web site, Nokia is currently “in contracting” for the dot-brand.
It would not be unprecedented if it were to withdraw its application, however. Back in February 2013, the American insurance company AIG withdrew its bid for .chartis after a rebranding.

No sunrise periods for dot-brands

ICANN has finally signed off on a set of exemptions that would allow dot-brand gTLDs to skip sunrise periods and, probably, work only with hand-picked registrars.
Its board’s New gTLD Program Committee passed a resolution at ICANN 49 last week that would add a new Specification 13 (pdf) to Registry Agreements signed by dot-brands.
The new spec removes the obligation operate a sunrise period, which is unnecessary for a gTLD that will only have a single registrant. It also lets dot-brands opt out of treating all registrars equally.
Dot-brands would still have to integrate with the Trademark Clearinghouse and would still have to operate Trademark Claims periods — if a dot-brand registers a competitor’s name in its own gTLD during the first 90 days post-launch, the competitor will find out about it.
ICANN is also proposing to add another clause to Spec 13 related to registrar exclusivity, but has decided to delay the addition for 45 days while it gets advice from the GNSO on whether it’s consistent with policy.
That clause states that the dot-brand registry may choose to “designate no more than three ICANN accredited registrars at any point in time to serve as the exclusive registrar(s) for the TLD.”
This is to avoid the silly situation where a dot-brand is obliged to integrate with registrars from which it has no intention of buying any domain names.
Spec 13 also provides for a two-year cooling off period after a dot-brand ceases operations, during which ICANN will not delegate the same string to another registry unless there’s a public interest need to do so.
The specification contains lots of language designed to prevent a registry gaming the system to pass off a generic string as a brand.
There doesn’t seem to be a way to pass off a trademark alone, without a business to back it up, as a brand. Neither is there a way to pass off a descriptive generic term as a brand.
The rules seem to allow Apple to have .apple as a dot-brand, because Apple doesn’t sell apples, but would not allow a trousers company to have .trousers as a dot-brand.

Delays still dog many new gTLD applicants

With dozens of new gTLDs currently live and on sale, it’s easy to forget that many applicants are still in ICANN limbo due to several still-unresolved issues with the evaluation process.
The New gTLD Applicant Group wrote to ICANN on Friday to express many of these concerns.
First, NTAG is upset that resolution of the name collisions issue is not moving as fast as hoped.
JAS Advisors published its report into collisions, which recommends “controlled interruption” as a solution, last Thursday. But it’s currently open for public comment until April 21.
That would push approval of the plan by ICANN’s board beyond the Singapore meeting taking place at the end of March, at least a month later than originally expected.
NTAG secretary Andrew Merriam argues that the 42-day comment period should be reduced to 21 days, with ICANN and JAS conducting webinars this week to discuss the proposal with applicants.
Second, NTAG is upset that ICANN has pushed out the start date for the first contention set auctions from March to June. It’s asking ICANN to promise that there will be no further delays.
Third, NTAG says that many dot-brands are unable to enter into contracting talks with ICANN until Specification 13 of the Registry Agreement, which contains opt-outs for single-registrant zones, is finalized.
That’s not currently expected to happen until Singapore, apparently because there were no scheduled meetings of the ICANN board’s New gTLD Program Committee until then.
NTAG also complains about the length of time it’s taking to decide the first Community Priority Evaluations, which is apparently due to quality assurance measures (very wise given the controversy caused by the lack of oversight on new gTLD objections, if you ask me).
The NGPC has a newly scheduled meeting this Wednesday, with new gTLDs on the agenda, but it’s not yet clear whether any of NTAG’s issues are going to be addressed.

Authentic Web wants to be dot-brands’ pocket registrar

Toronto-based start-up Authentic Web launched today with a set of workflow automation tools for dot-brand gTLD registries.
Because ICANN requires all new gTLDs, even the closed ones, to make registrations via accredited registrars, there’s often talk about dot-brands signing up with “pocket” registrars.
That’s what Authentic Web wants to be, according to CEO Peter LaMantia. The company is focused on the dot-brand market.
The company’s new Brand Registry Asset Manager will provide a way for dot-brands to control the registration process workflow so that only approved second-level domains are registered, he said.
For example, a smaller dot-brand might have a single person responsible for registering all domains in the gTLD, while a multinational might have multiple layers of delegated power.
Instead of plonking down a credit card at Go Daddy to buy a .com domain, a marketing manager would place a request into the BRAM system and have it approved up a chain of command before the ultimate Add command was made with the registry.
Authentic Web would usually act as the registrar middleman, but the plan is to also integrate the software with third-party registrars.
The software will also give dot-brands greater visibility over their portfolios, LaMantia said.
Many big brands already have a hard time keeping track of their existing portfolios of domain names in gTLDs they do not control, he said.
“I know a lot of companies that do this on Excel sheets,” he said. “If they own the registry they’re not going to want to do that. That’s the hole in the market.”
BRAM is web-based and hosted by Authentic Web, so it won’t at first integrate with existing enterprise identity systems, though LaMantia said integration tools are on the road-map.
The software will be priced on a monthly subscription basis, with a per-domain component.
LaMantia, who founded Authentic Web last year, previously was president of the registrar Aplus.net.

GM down to one gTLD bid after dropping .chevy

General Motors looks set to leave the new gTLD program completely, after dumping its application for .chevy.
It’s the fourth of GM’s five dot-brand gTLD bids to be withdrawn after .chevrolet, .cadillac and .gmc. Only .buick remains in the Initial Evaluation process.
Of the 116 new gTLD applications to be withdrawn to date, 55 have been uncontested and for single-registrant zones. Almost all of the 55 applied-for strings are famous brands.
It would be wrong to assume that each of these was a “defensive” application — some represent discontinued brands — but it’s still a worryingly high number, representing over $10 million in ICANN fees.
That said, it’s still less than 3% of the total applications submitted in the current round.

New US trademark rules likely to exclude many dot-brand gTLDs

The US Patent and Trademark Office plans to allow domain name registries to get trademarks on their gTLDs.
Changes proposed this week seem to be limited to dot-brand gTLDs and would not appear to allow registries for generic strings — not even “closed” generics — to obtain trademarks.
But the rules are crafted in such a way that single-registrant dot-brands might be excluded.
Under existing USPTO policy, applications for trademarks that consist solely of a gTLD cannot be approved, because they don’t identify the source of goods and services.
If “.com” were a trademark, one might have to assume that the source of Amazon.com’s services was Verisign, which is plainly not the case.
But the new gTLD program has invited in hundreds of gTLDs that exactly match existing trademarks. The USPTO said:

Some of the new gTLDs under consideration may have significance as source identifiers… Accordingly, the USPTO is amending its gTLD policy to allow, in some circumstances, for the registration of a mark consisting of a gTLD for domain-name registration or registry services

In order to have a gTLD trademark approved, the applicant would have to pass several tests, substantially reducing the number of marks that would get the USPTO’s blessing.
First, only companies that have signed a Registry Agreement with ICANN would be able to get a gTLD trademark. That should continue to prohibit “front-running”, in which a gTLD applicant tries to secure an advantage during the application process by getting a trademark first.
Second, the registry would have to own a prior trademark for the gTLD string in question. It would have to exactly match the gTLD, though the dot would not be considered.
It would have to be a word mark, without attached disclaimers, for the same types of goods and services that web sites within the gTLD are supposed to provide.
What this seems to mean is that registries would not be able to get trademarks on closed generics.
You can’t get a US trademark on the word “cheese” if you sell cheese, for example, but you can if you sell a brand of T-shirts called Cheese.
So you could only get a trademark on “.cheese” as a gTLD if the class was something along the lines of “domain name registration services for web sites devoted to selling T-shirts”.
Third, registries would have to present a bunch of other evidence demonstrating that their brand is already so well-known that consumers will automatically assume they also own the gTLD:

Because consumers are so highly conditioned and may be predisposed to view gTLDs as non-source indicating, the applicant must show that consumers already will be so familiar with the wording as a mark, that they will transfer the source recognition even to the domain name registration or registry services.

Fourth, and here’s the kicker, the registry would have to show it provides a “legitimate service for the benefit of others”. The USPTO explained:

To be considered a service within the parameters of the Trademark Act, an activity must, inter alia, be primarily for the benefit of someone other than the applicant.
…
While operating a gTLD registry that is only available for the applicant’s employees or for the applicant’s marketing initiatives alone generally would not qualify as a service, registration for use by the applicant’s affiliated distributors typically would.

In other words, a .ford as a single-registrant gTLD would not qualify for a trademark, but a .ford that allowed its dealerships around the world to register domains would.
That appears to exclude many dot-brand applicants. In the current batch, most dot-brands expect to be the sole registrant as well as the registry, at least at first.
Some applications talk in vague terms about also opening up their namespace to affiliates, but in most applications I’ve read that’s a wait-and-see proposition.
The new USPTO rules, which are open for comment to people who have registered with its web site, would appear to apply to a very small number of applicants at this stage.

Hong Kong telco drops dot-brand gTLD bid

Hong Kong Telecom has withdrawn its application for the new gTLD .香港電訊, the Chinese-script version of its brand.
The proposed single-registrant gTLD was uncontested, with no objections or Governmental Advisory Committee advice. It’s the 76th application to be withdrawn.
It was a defensive application. Under the heading “Goals”, HKT said: “An important goal of the TLD is the safeguard of the intellectual property right of the HKT and the 香港電訊 brand.”
The company hadn’t bothered to take advantage of the IDN bias in the prioritization draw and wasn’t due to have its Initial Evaluation finalized until the last two weeks of the process.

DI to participate in New York new gTLD conference

The agenda for the two-day Digital Marketing & gTLD Strategy Congress in New York this March has been published, and I’m happy to say that DI is involved.
The Congress is being organized by Momentum Consulting Group and I expect it to have a bigger focus on dot-brand gTLDs than any other event of its kind to date.
The keynote speaker on day one is Georges-Edouard Dias, the chief digital officer for L’Oreal, which has applied for 13 gTLDs. Executives from Interbrand and Citi will also be speaking.
I’ve agreed to host a “fireside chat” after lunch on the first day, with Sally Costeron, ICANN’s senior adviser to the CEO on stakeholder engagement. Audience participation will be encouraged.
The subject of the discussion is: “How TLDs Empower Consumers, Offer Choice and Provide New Opportunities for Brands”. Here’s what the conference brochure (pdf) says:

At the core of the new TLD program was the desire for choice, competition and innovation. The new TLD program will help the Internet become more global (including Chinese, Arabic, etc letters). This keynote will outline ICANN’s commitment to a long term strategy with a plan for a system and structure to support the objectives.

Several sessions are also planned on domain registration and branding strategies for companies that have not applied for their own new gTLDs.
Conference tickets range from $1,295 to $1,695, depending on when you book. The next price increase is coming January 18.

Microsoft, Yahoo and others involved in new dot-brand gTLD group

HSBC, Microsoft, Yahoo and jewelry maker Richemont have told ICANN they plan to form a new GNSO stakeholder group just for single-registrant gTLD registries.
The group would comprise dot-brand registries and — potentially — other types of single-user gTLD manager.
A letter (pdf) to ICANN chair Steve Crocker, signed by executives from the four companies, reads in part:

As a completely new type of contracted party, we do not have a home to represent our unique community. In addition, the existence of conflicts with other contracted parties makes it challenging for us to reside within their stakeholder group.

Combined, the companies have applied for about 30 single-registrant gTLDs, mostly corresponding to brands.
Richemont, which is applying for dot-brands including .cartier, is also applying for the keywords .jewelry and .watches as single-user spaces.
The group plans to discuss formalizing itself at the next ICANN meeting, in Toronto this October.
During the just-concluded Prague meeting, the GNSO’s existing registries stakeholder group accepted several new gTLD applicants — I believe mainly conventional registries — into the fold as observers.
How the influx of new gTLD registries will affect the GNSO’s structure was a hot topic for the Governmental Advisory Committee during the meeting too. I guess now it has some of the answers it was looking for.