Donuts details second private gTLD auction list

Donuts has committed 68 of its new gTLD applications to a set of private auctions due to commence August 13.
It’s the second round of auctions conducted by Innovative Auctions, which last month settled six contention sets for an average of $1.5 million per TLD.
Here’s the full list of Donuts’ strings:

.apartments .hot .art .jewelry .auction .law .audio .lawyer .baseball .legal .beauty .life .blog .living .boats .loans .broadway .memorial .broker .online .cafe .phone .casa .pizza .chat .place .church .plus .city .property .construction .rent .data .run .deals .salon .direct .school .discount .search .dog .show .expert .site .fish .soccer .football .storage .forum .store .furniture .studio .fyi .style .garden .team .global .theater .gratis .trading .group .website .guide .wedding .help .world .hosting .yoga

It’s very similar to the list of 63 strings that Donuts committed to the first round of auctions, which was under-subscribed by its rivals.
The additions since then are: .broker, .casa, .data, .deals, .dog,. expert, .lawyer, .life, .loans, .place, .property, .rent, studio, .website, .world and .yoga.
This list does not include the six gTLDs that were settled in the first round, for obvious reasons, but the following strings have also been removed: .forsale, .juegos, .marketing, .media, .sale.
Some of those appear to have been removed because Donuts has already won the contention set due to withdrawals.
The list still includes many in which Donuts is in a contention set with Uniregistry, which has previously said it would not participate in private auctions due to legal concerns.
Innovative said recently that over 100 applications had been committed to the August 13 auction.
It had previously said that the over 40 strings being applied for by applicants that had participated in the first auction had also been committed.
The deadline for committing to the auction is August 5.

Afilias wants registrar ownership ban lifted on .mobi and .pro

Afilias has applied to ICANN to have its ban on owning registrars in two of its own gTLDs, .mobi and .pro, lifted.
With requests to ICANN a few days ago (here and here), the company said it wants to be able to own more than 15% of an ICANN-accredited registrar that sells both TLDs, which is currently forbidden by the two Registry Agreements in question.
Afilias’ proposed new .info contract, which was renegotiated this year (because it expired) and closed for public comment last week, would also enable the company to vertically integrate with a .info registrar.
A process for relaxing the cross-ownership rules on a per-TLD basis was approved by ICANN’s board of directors last October.
The only registry so far to have its contractual ban lifted is puntCat, the .cat registry operator.
When an ICANN working group was discussing the vertical integration issue a couple of years ago, Afilias was one of the participants that held fast against any relaxation of the 15% ownership cap, eventually driving the working group into stalemate and forcing the ICANN board’s hand.

L’Oreal takes the red pill, withdraws .matrix bid

L’Oreal has withdrawn another of its dot-brand new gTLD applications.
This time it’s .matrix, for one of its hair-care product brands.
It’s the eighth of L’Oreal’s 14 original new gTLD applications to be withdrawn, after .欧莱雅, .kiehls, .loreal, .garnier, .maybelline, .kerastase, and .redken.
Only .lancome remains of its dot-brand applications. It has already passed Initial Evaluation, unlike the others which tend to get dropped shortly before results are posted, to secure a bigger refund.
Its “closed generic” bids for .skin, .beauty, .hair, .makeup and .salon are all still active and have all passed IE.

Is social media the answer to the dot-brand problem?

With many dot-brand gTLD applicants still unsure about how they will use their new namespaces, the maker of the Kred reputation service is proposing social media as the answer.
Speaking to DI today, Kred CEO Andrew Grill said that one dot-brand applicant — a bank — has already committed to use parent company PeopleBrowsr’s new Social OS platform for its gTLD.
Social OS is being marketed as a way for companies to quickly launch their own social media networks along the lines of Facebook or LinkedIn.
Dot-brands would be able to own the customer relationship and get access to much more data about their users than they get with the limited “Like”-oriented Facebook platform, Grill said.
End users would be able to use these vertical networks using their existing social media log-in credentials, he said.
The company plans to use the platform in its own gTLD, .ceo, which it has applied for uncontested.
Grill said he talked to about 100 people at the recent ICANN meeting in Durban and expects to come away with five to 10 additional customers for the Social OS platform.
While the value proposition for new gTLD owners seems fairly reasonable, in general I’m quite skeptical about the internet’s need for more social media sites.
Any such service operated by a dot-brand would have to have a fairly compelling value proposition for end users.
Grill said that a car maker, for example, could use its own gTLD social media network to keep in touch with its customers — giving them a second-level domain when they buy one of its vehicles.
A bank, meanwhile, could offer services such as customer-to-customer transaction apps for users who have second-level domains in its gTLD. If registrations were limited to existing banking customers, a greater level of security would be baked in from the start, he said.

Google beats USPS in LRO, Defender loses another

The United States Postal Service and Defender Security have both lost Legal Rights Objections over the new gTLDs .mail and .home, respectively.
In both cases it’s not the first LRO the objector has lost. USPS, losing here against Google, lost a similar objection against Amazon, while Defender has previously racked up six losses over .home.
The Defender case (pdf) this time was against .Home Registry Inc. The objection was rejected by the World Intellectual Property Organization panelist on pretty much the same grounds as the others — Defender acquired its trademark rights purely in order to be able to file LROs against its .home rivals.
In the USPS v Amazon case (pdf) the WIPO panelist also decided along the same lines as the previous case.
The decision turned on whether USPS, which owns trademarks on “U.S. Mail” but not “mail”, could be said to have rights in “mail” by virtue of the fact that it is the monopoly postal service in the US.
USPS argued that .mail is like .gov — internet users know a .gov domain is owned by the US government, so they’re likely to think .mail belongs to the official US mail service.
The panelist decided that users are more likely to associate the gTLD with email:

A consumer viewing the string <.mail> in the context of a domain name registration or an email address is presumably even more likely to think of the electronic (“email”) meaning, rather than the postal meaning, of the term “mail,”

WIPO has now decided 20 LRO cases. All have been rejected. Several more were terminated after the objector withdrew its objection.

dotShabaka wants to be the first new gTLD to launch, but big problems remain

Having been the first to sign a contract with ICANN two weeks ago, new gTLD registry dotShabaka is also desperate to be the first to launch, but faces big obstacles.
The company, International Domain Registry, is a spin-off of AusRegistry, with many of the same directors and staff, but executives insist it is an entirely separate entity and will become more so with time.
It was awarded, uncontested and unobjected, the Arabic TLD شبكة., which means “.web” and transliterates to “.shabaka”. It will do business under the trading name dotShabaka Registry.
According to the Registry Agreement published by ICANN last week, it was signed on July 13, one day before the other three registries to so far get contracts.
“It was a lot of work to make sure we were the first to sign, and we intend to be the first to delegation,” general manager Yasmin Omer told DI last week.
“The best-estimate timeline published by ICANN in Durban is our timeline, that’s our target,” she added.
The timeline she’s referring to (pdf) is the one that says the first new gTLD could hit the root as early as September 5, with the first Sunrise period kicking off a month later.
Omer is slightly less optimistic about the timing, however, saying that “mid-September” is looking more likely, due to the requirements of the Pre-Delegation Testing period that dotShabaka is currently in.
The company is doing preliminary PDT work right now and expects to start testing properly in the first week of August.
But PDT is not the only thing standing in dotShabaka’s — and other new gTLD applicants’ — path to delegation.
Right now, the Trademark Clearinghouse and the 2013 Registrar Accreditation Agreement are the big barriers, Omer said.
TMCH requirements not ready
The TMCH is a problem because ICANN has still not finalized the TMCH’s RPM Requirements document, a set of rules that each new gTLD registry must adhere to in their Sunrise and Trademark Claims phases.
“A group within NTAG and the Registries Stakeholder Group has been negotiating this document with ICANN for some time now, going back and forth,” Omer said. “It’s all fine for those who intend on launching later on, but this document has yet to be finalized and that really harms us.”
A draft of the Requirements document (pdf) was published in April, and Omer said she expects ICANN to take a more up-to-date draft to public comment.
A standard 42-day comment period, starting today, would end mid-September.
As we reported in April, the Requirements raises questions about whether registries would, for example, be able to create lists of reserved premium domains or whether trademark owners would always get priority.
dotShabaka faces an additional problem with the TMCH because its gTLD is an Arabic string and there are been very little buy-in so far from companies in the Arabic-speaking world.
A couple of weeks ago, TMCH execs admitted that of the over 5,000 trademarks currently registered in the TMCH, only 13 are in Arabic.
In Durban, they said that the TMCH guidelines were not yet available in Arabic.
Part of the problem appears to be that a rumor was spread that the TMCH does not support non-Latin scripts, which executives said is not remotely true.
With so little participation from the Arabic trademark community, an early شبكة. launch could mean a woefully under-subscribed Sunrise period — 30 days to protect just a handful of companies.
“There’s no knowledge of the TMCH in the region,” Omer said.
“We’re currently putting our heads together to think of mechanisms to overcome this,” she said. “We don’t just want to be first to delegate and have it sit there idly, we want to be first to market as well.”
dotShabaka has been doing its own press in the region and claims to have taken thousands of expressions of interest in the gTLD, indicating that there is a market if awareness can be raised.
Registrars are a problem
Signing the 2013 Registrar Accreditation Agreement is a requirement for any registrar that want to sell new gTLDs, and that includes IDNs. Only seven registrars have publicly signed it to date.
According to Omer, the 2013 RAA’s stricter requirements are “not helping us in the region”.
Its provisions related to insurance can be “prohibitive to those located to those located in North Africa and the Middle East”, she said by way of an example.
In addition, there are only about seven accredited registrars in the region, all on older RAA versions, she said.
dotShabaka has already signed up Go Daddy and others to carry شبكة., so getting the TLD into the channel is not a problem.
But while Go Daddy will have an Arabic landing page for the TLD it will not have a full Arabic-language registration process and shopping cart ready in time for شبكة.’s planned launch window launch.
This makes me wonder whether there’s a risk that domain savvy Westerners are more likely to get a crack at the best شبكة. names before the Arab world is fully aware of the launch.
But Omer said that dotShabaka is doing its own outreach and that it’s committed to improving the “horrible” online experience for Arabic speakers that exists today.
“It’s not just about the TLD, it’s about the cause, it’s about an Arabic internet,” she said. “Yes there are issues and yes there are barriers, but we want to build more robust Arabic domain name market.”

Six more LROs kicked out, most for “front-running”

Six more new gTLD Legal Rights Objections, six more rejected objections.
The World Intellectual Property Organization is chewing through its caseload of LROs at a regular pace now, made all the more easier by the fact that a body of precedent is being accumulated.
Objections rejected in decisions published last week cover the gTLDs .home, .song, .yellowpages, .gmbh and .cam.
All but one were thrown out, with slightly different panelist reasoning, because they had engaged in some measure of “front-running” — applying for a trademark just in order to protect a gTLD application.
Here’s a quick summary of each decision, starting with what looks to be the most interesting:
.yellowpages (hibu (UK) v. Telstra)
Last week somebody asked me on Twitter which LROs I thought might actually succeed. I replied:

@ManagingIP Just based on the list of strings and objectors, only .delmonte, .merck and .yellowpages jump out at me.

— Kevin Murphy (@DomainIncite) July 23, 2013

Well, my initial hunch on .yellowpages was wrong, and I think I’m very likely to have been wrong about the other two also.
This case is interesting because it specifically addresses the issue of two matching trademarks happily living side-by-side in the trademark world but clashing horribly in the unique gTLD space.
The objector in this case, hibu, publishes the Yellow Pages phone book in the UK and has a big portfolio of trademarks and case law protecting its brand. If anyone has rights, it’s these guys.
But the “Yellow Pages” brand is used in several countries by several companies. In the US, there’s some case law suggesting that the term is now generic, but that’s not the case in the UK or Australia.
On the receiving end of the objection was the Australian telecoms firm Telstra, which is the publisher of the Aussie version of the Yellow Pages and, luckily for it, the only applicant for .yellowpages.
The British company argued that “no party should be entitled to register the Applied-for gTLD”, due to the potential for confusion between the same brand being owned by different companies in different countries.
The panel concluded that brands will clash in the new gTLD space, and that that’s okay:

It is inherent in the nature of the gTLD regime that those applicants who are granted gTLDs will have first-level power extending throughout the Internet and across jurisdictions. The prospect of coincidence of brand names and a likelihood of confusion exists.
…
The critical issue in this LRO proceeding is whether the Objector’s territorial rights in the term “YELLOW PAGES” (and the prospect of other non-objecting third parties’ territorial right) means that the applicant (or anyone else for that matter) should not be entitled to the Applied-for gTLD.

The panelist uses the eight-criteria test in the Applicant Guidebook to make his decision, but he chose to highlight two words:

the Panel finds that the Objector has failed to establish, as it alleges, that the potential use of the Applied-for gTLD by the applicant… unjustifiably impairs the distinctive character or the reputation of the objector’s mark… or creates an impermissible likelihood of confusion between the applied for gTLD and the Objector’s mark.

Because Telstra has rights to “Yellow Pages” too, and because it’s promising to respect trademark rights at the second level, the panelist concluded that its application should be allowed to proceed.
It’s the third instance of a clash between rights holders in the LRO process and the third time that the WIPO panelist has adopted a laissez faire approach to new gTLDs.
And as I’ve said twice before, if this type of decision becomes the norm — and I think it will — we’re likely to see many more defensive applications for brand names in future new gTLD rounds.
The LRO is not shaping up to be an alternative to applying for a gTLD as a means to defend a legitimate brand. Applying for a gTLD matching your trademark and then fighting through the application process may turn out to be the only way to make sure nobody else gets that gTLD.
.cam (AC Webconnecting Holding v. United TLD Holdco)
Both sides of this case are applicants for .cam. United TLD is a Demand Media subsidiary while AC Webconnecting is a Netherlands-based operator of several webcam-based porn sites.
Like so many other applicants, AC Webconnecting applied for its European trademark registration for “.cam” and a matching logo in December 2011, just before the ICANN application window opened.
The panelist decided that its trademark was acquired in a bona fide fashion, he also decided that the company had not had enough time to build up a “distinctive character” or “reputation” of its marks.
That meant the Demand Media application could not be said to take “unfair advantage” of the marks. The panelist wrote:

Given the relatively short existence of these trademarks, it is unlikely that either [trademark] has developed a reputation.
…
In the Panel’s opinion, replication of a trademark does not, of itself, amount to taking unfair advantage of the trademark – something more is required.
…
the Panel considers that this something more in the present context needs to be along the lines of an act that has a commercial effect on a trademark which is undertaken in bad faith – such as free riding on the goodwill of the trademark, for commercial benefit, in a manner that is contrary to honest commercial practices.

What we’re seeing here is another example of a trademark front-runner losing, and of a panelist indicating that applicants need some kind of bad faith in order to lose and LRO.
.home (Defender Security Company v. DotHome Inc.)
Kicked out for the same reasons as the other Defender objections to rival .home — it was a transparent gaming attempt based on a flimsy, recently acquired trademark. See here and here.
DotHome Inc is the subsidiary Directi/Radix is using to apply for .home.
The decision (pdf) goes into a bit more detail than the other .home decisions we’ve seen to date, including information about how much Defender paid to acquire its trademarks ($75,000) and how many domains its bogus Go Daddy reseller site has sold (three).
.home (Defender Security Company v. Baxter Pike)
Ditto. This time the applicant was a Donuts subsidiary.
.song (DotMusic Limited v. Amazon)
Like the failed .home objections, the .song objection was based on a trademark acquired tactically in late 2012 by Constantine Roussos, whose company, CGR E-Commerce, is applying for .music.
This objection failed (pdf) for the same reasons as the same company’s objection to Amazon’s .tunes application failed last week — a trademark for “.SONG” is simply too generic and descriptive to give DotMusic exclusive rights to the matching gTLD.
Roussos has also filed seven LROs against his competitors for .music, none of which have yet been decided.
.gmbh (TLDDOT GmbH v. InterNetWire Web-Development)
Both objector and respondent here are applicants for .gmbh, which indicates limited liability companies in German-speaking countries.
TLDDOT registered its European trademark in “.gmbh” a few years ago.
Despite the fact that it was obviously acquired purely in order to secure the matching gTLD, the panelist in this case ruled that it was bona fide.
Despite this, the panelist concluded that for InternetWire to operate .gmbh in the generic, dictionary-word sense outlined in its application would not infringe these trademark rights.

104 new gTLD passes, one failure, three withdrawals

With apologies to regular readers for the lateness of this post, which can be blamed on illness, here are the latest new gTLD application evaluation results.
This week, ICANN gave passing Initial Evaluation scores to 104 applications, flunking only one. Separately yesterday, three applications were withdrawn.
First, the passes. The following applications are now safely through IE:

.blog .style .globo .sew .prime .search .shopping .llc .lefrak .tienda .law .charity .restaurant .dubai .cuisinella .cricket .horse .insurance .rip .fast .bot .rugby .gotv .baby .tennis .kids .safe .money .sapo .ltd .download .fit .wanggou .kyoto .sas .rsvp .party .bargains .digital .abbott .chloe .mba .bet .frontdoor .volkswagen .sydney .comcast .oracle .dvr .ipiranga .juegos .translations .web .rocks .architect .kuokgroup .basketball .audio .catholic .site .justforu .bentley .bcn .home .restaurant .lawyer .abogado .watch .jnj .africamagic .anz .works .imdb .ntt .walmart .ups .cartier .softbank .direct .ltda .corp .loan .liaison .cool .canon .run .sandvikcoromant .realtor .gmail .fyi .bharti .mls .mls .fly .wow .shop .fun .gbiz .mit .pet .vista .accenture .webs .capitalone

This batch brings the total number of passes to 1,286. There are only 530 bids left in IE.
This week’s only failure was I-REGISTRY Ltd’s .online application, which scored a 0 on its “Financial Statements” question and therefore failed the financial half of the IE test. It’s eligible for extended evaluation.
Meanwhile, we’ve had three more withdrawals. Tucows withdrew its applications for .media and .marketing, while Travelers TLD withdrew its dot-brand bid for .northlandinsurance.
The maximum number of delegated gTLDs is now 1,354.

DNS Women Breakfast and other photos from Durban

DI covered the ICANN 47 meeting in Durban remotely last week, but I’m happy to say that we have some photos from the meeting to publish nevertheless.
These pictures were all graciously provided by award-winning freelance photographer and long-time ICANN meeting attendee Michelle Chaplow.

ICANN CEO Fadi Chehade delivering his keynote address during the opening ceremony on Monday.

Representatives of the first new gTLD registries to sign the Registry Agreement and the first registrars to sign the 2013 Registrar Accreditation Agreement line up on stage to sell their souls to ICANN, also during the opening ceremony.
One of these men reportedly shed a tear as he committed his John Hancock to paper; whether through happiness or grief, it’s impossible to know for sure.

Attendees of the DNS Women Breakfast, which gives members of the under-represented gender an opportunity to plot world domination over coffee and croissants three times a year.
From humble beginnings a few years ago, we’re told that over 70 women attended the Durban brekkie.

Three participants on the second “What the Journalists Think” panel, which this time was exclusively made up of African journos.

Finally, Akram Atallah, president of ICANN’s new Generic Domains Division, smiling despite an apparently busy week.

Senators slate NTIA, to demand answers on new gTLD security

Did Verisign get to the US Congress? That’s the intriguing question emerging from a new Senate appropriations bill.
In notes attached to the bill, the Senate Appropriations Committee delivers a brief but scathing assessment of the National Telecommunication and Information Administration’s performance on ICANN’s Governmental Advisory Committee.
It says it believes the NTIA has “not been a strong advocate for U.S. companies and consumers”.
The notes would order the agency to appear before the committee within 30 days to defend the “security” aspects of new gTLDs and “urges greater participation and advocacy within the GAC”.
While the NTIA had a low-profile presence at the just-finished Durban meeting, it would be difficult to name many other governments that participate or advocate more on the GAC.
This raises an eyebrow. Which interests, in the eyes of the committee, is the NTIA not sufficiently defending?
Given the references to intellectual property, suspicions immediately fall on usual suspects such as the Association of National Advertisers, which is worried about cybersquatting and associated risks.
The ANA successfully lobbied for an ultimately fruitless Congressional hearing in late 2011, following its campaign of outrage against the new gTLD program.
It’s mellowed somewhat since, but still has fierce concerns. Judging by comments its representatives made in Durban last week, it has shifted its focus to different security issues and is now aligned with Verisign.
Verisign, particularly given the bill’s reference to “security, stability and resiliency” and the company’s campaign to raise questions about the potential security risks of new gTLDs, is also a suspect.
“Security, stability and resiliency” is standard ICANN language, with its own acronym (SSR), rolled out frequently during last week’s debates about Verisign’s security concerns. It’s unlikely to have come from anyone not intimately involved in the ICANN community.
And what of Amazon? The timing might not fit, but there’s been an outcry, shared by almost everyone in the ICANN community, about the GAC’s objection last week to the .amazon gTLD application.
The NTIA mysteriously acquiesced to the .amazon objection — arguably harming the interests of a major US corporation — largely it seems in order to play nice with other GAC members.
Here’s everything the notes to “Departments of Commerce and Justice, and Science, and related agencies appropriations Bill, 2014” (pdf) say about ICANN:

ICANN — NTIA represents the United States on the Internet Corporation for Assigned Names and Numbers [ICANN] Governmental Advisory Committee [GAC], and represents the interests of the Nation in protecting its companies, consumers, and intellectual property as the Internet becomes an increasingly important component of commerce. The GAC is structured to provide advice to the ICANN Board on the public policy aspects of the broad range of issues pending before ICANN, and NTIA must be an active supporter for the interests of the Nation. The Committee is concerned that the Department of Commerce, through NTIA, has not been a strong advocate for U.S. companies and consumers and urges greater participation and advocacy within the GAC and any other mechanisms within ICANN in which NTIA is a participant.
NTIA has a duty to ensure that decisions related to ICANN are made in the Nation’s interest, are accountable and transparent, and preserve the security, stability, and resiliency of the Internet for consumers, business, and the U.S. Government. The Committee instructs the NTIA to assess and report to the Committee within 30 days on the adequacy of NTIA’s and ICANN’s compliance with the Affirmation of Commitments, and whether NTIA’s assessment of ICANN will have in place the necessary security elements to protect stakeholders as ICANN moves forward with expanding the number of top level Internet domain names available.

While the bill is just a bill at this stage, it seems to be a strong indication that anti-gTLD lobbyists are hard at work on Capitol Hill, and working on members of diverse committees.