ICANN passes 92 new gTLDs

Ninety-two new gTLD applications received passing Initial Evaluation scores this week, as ICANN approaches the end of the long-running process.
With two weeks left on the official timetable, only 236 applications remain in IE. Another 1,574 have passed. With no failures this week, the number heading to Extended Evaluation remains at 14.
These are this week’s passing strings, with links to the corresponding application on DI PRO.

.villas .soccer .delivery .med .casino .sina .pamperedchef .case .weibo .kids .college .tech .newholland .life .yoga .world .barclaycard .report .casino .orange .shop .music .walter .srl .poker .shop .qtel .author .help .sap .consulting .starhub .stcgroup .stada .gives .srt .vuelos .zuerich .thd .vacations .taxi .pid .garden .news .industries .love .poker .taxi .express .athleta .pitney .phd .etisalat .mom .merck .earth .beer .safeway .actor .foundation .dclk .hamburg .home .studio .cologne .aquarelle .archi .kia .quest .buy .panerai .chat .band .spa .flickr .playstation .mobile .cash .jprs .saarland .kfh .condos .chintai .blog .cpa .sfr .sale .sky .erni .mih .visa .tickets

Uniregistry wins .gift and AOL yanks .patch bid

Three more new gTLD applications were withdrawn today, only one of which was related to this week’s previously reported batch of private auctions.
First, Famous Four Media has pulled out of the .gift race with Uniregistry, presumably after some kind of deal. They were the only two applicants, meaning Uniregistry wins the contention set.
Potentially complicating matters, there are also two applicants for .gifts — if the plural/singular debate is reopened, which seems possible after today’s events, it might not be over yet.
Second, AOL withdrew its application for .patch, which was to be a single-registrant space for its Patch-branded network of local web sites.
This seems to be connected to cost-cutting at AOL.
Last week, the company fired Patch’s creative director in front of 1,000 colleagues and announced it was cutting the number of sites in the network.
Today, it started laying off almost half of Patch’s 1,100 employees, according to the Wall Street Journal.
Third, Top Level Domain Holdings withdrew from the .guide contention set, leaving Donuts the winner — a formality following this week’s Innovative Auctions auction, which it lost.

Google beats Donuts in objection — .pet and .pets ARE confusingly similar

Google has won a String Confusion Objection against rival new gTLD applicant Donuts, potentially forcing .pet and .pets into the same contention set.
The shock ruling by International Centre for Dispute Resolution panelist Richard Page goes against previous decisions finding singulars and plurals not confusingly similar.
In the 11-page decision, Page said he decided to not consider the reams of UDRP precedent or US trademark law submitted by the two companies, and seems to have come to his opinion based on a few simple facts:

Objector has come forward with the following evidence for visual, aural and meaning similarity. Visually, the words are identical but for the mere addition of the letter “s”. Aurally, the word “pets” is essentially phonetically equivalent to the word “pet”. The term “pet” is pronounced as it is spelled, “pet”. The term “pets” is likewise pronounced as “pets” in essentially a phonetically equivalent fashion. The terms each have only one syllable, and they have the same stress pattern, with primary accent on the initial “pe” portion of the words. In commercial meaning, the terms show no material difference. As English nouns, “pets” is the pluralization of “pet”.
The visual similarity and algorithmic score are high, the aural similarity is high, the meaning similarity is high. Objector has met its burden of proof. The cumulative impact of these factors is such that the Expert determines that the delegation of <.pet> gTLD and the <.pets> gTLD into the root zone will cause a probability of confusion.

Page did take into account the similarity score provided by the Sword algorithm — for .pet and .pets it’s actually a fairly weak 72% — in his thinking on visual similarity.
But he specifically rejected Donuts’ defense that co-existence of plurals at the second level was proof that plural/singular gTLDs could also co-exist at the top-level, saying:

The rapid historical development of the Internet and the proliferation of domain names over the past two decades has taken place without the application of the string confusion standard now established for gTLDs. Therefore, the Expert has not considered the current coexistence of pluralized second-level TLDs or similarities between country code TLDs and existing gTLDs in the application of the string confusion standard in this proceeding.

Can: open. Worms: everywhere.
The decision stands in stark contrast to the decision (pdf) of Bruce Belding in the .hotel v .hotels case, in which it was found that the two strings were “sufficiently visually and audibly different”.
Likewise, the panelist in .car v .cars (pdf) found that Google had not met the high evidential bar to proving the “probability” rather than mere “possibility” of confusion.
One has to assume that the evidence Google submitted in .car is fairly similar to the evidence it submitted in .pets.
Are String Confusion Objections just a crap shoot, the outcome depending on which panelist you get? It’s probably too early to say for sure, but it’s looking like a possibility.
The big test will come with the next .pets decision. Afilias, the other .pet applicant, has also filed an SCO against Donuts over its .pets bid.
What if the panel in the Afilias case goes the other way? Will Donuts be in a contention set with Google and Afilias or won’t it?
I asked Akram Atallah, president of ICANN’s Generic Domains Division, about this yesterday and he said that ICANN basically doesn’t know, and that it might have to refer back to the community for advice.
Read the Atallah interview here and the .pets decision (pdf) here.

Interview: Atallah on new gTLD objection losers

Filing a lawsuit against a competitor won’t stop ICANN rejecting your new gTLD application.
That’s according to Akram Atallah, president of ICANN’s Generic Domains Division, who spoke to DI yesterday about possible outcomes from new gTLD objection rulings.
He also said that applicants that believe they’ve been wronged by the objection process may have ways to appeal the decisions and addressed what happens if objection panels make conflicting decisions.
Lawsuits won’t stay ICANN’s hand
In light of the lawsuit by Del Monte International GmbH against Del Monte Corp, as reported by Domain Name Wire yesterday, I asked Atallah if ICANN would put applications on hold pending the outcome of legal action.
The GmbH lost a Legal Rights Objection filed by the Corp, which is the older company and owner of the “Del Monte” trademark pretty much everywhere, meaning the GmbH’s bid, under ICANN rules, must fail.
Atallah said lawsuits should not impact ICANN’s processes.
“For us it’s final,” Atallah said. “If they have to go outside and take legal action then the outcome of the legal action will be enforceable by law and we will have to abide by it. But from our perspective the [objection panel’s] decision is final.”
There might be ways to appeal
In some cases when an applicant loses an objection — such as a String Confusion Objection filed by an existing TLD or an LRO filed by a trademark owner — the only step left is for it to withdraw its application and receive whatever refund remains.
There have been no such withdrawals so far.
I asked Atallah whether there were any ways to appeal a decision that would lead to rejection.
“The Applicant Guidebook is very clear,” he said. “When an applicant loses an objection, basically their application will not proceed any further. We would like to see them withdraw their application and therefore finish the issue.”
“Of course, as with anything ICANN, they have some other avenues for asking for reconsidering the decision,” he added. “Basically, going to the Ombudsman, filing a Reconsideration Request, or even lobbying the board or something.”
I wondered whether the Reconsideration process would apply to decisions made by third parties such as arbitration panels, and Atallah admitted that the Guidebook was “murky” on this point.
“There are two mentions in the Guidebook of this, I think,” he said. “One mentions that it [the panel’s decision] is final — the application stops — the other mentions that it is advice to staff.”
That seems to be a reference to the Guidebook at 3.4.6, which states:

The findings of the panel will be considered an expert determination and advice that ICANN will accept within the dispute resolution process.

This paragraph suggests that ICANN staff have to accept the objection panel’s decision. That would make it an ICANN decision to reject the application, which can be challenged under Reconsideration.
Of course, the Reconsideration process has yet to see ICANN change its mind on any matter of substance. My feeling is that to prevail you’d at a minimum have to present the board with new information not available at the time the original decision was made.
What if different panelists reach opposite conclusions?
While the International Centre for Dispute Resolution has not yet published its panels’ decisions in String Confusion Objection cases, a few have leaked out.
(UPDATE: This turns out not to be correct. The decisions have been published, but the only way to find them is via obscured links in a PDF file buried on the ICDR web site. Way to be transparent, ICDR.)
I’ve read four, enough to see that panelists are taking diverse and sometimes opposing views in their decision-making.
For instance, a panelist in .car v .cars (pdf) decided that it was inappropriate to consider trademark law in his decision, while the panelist in .tv v .tvs (pdf) apparently gave trademark law a lot of weight.
How the applicants intend to use their strings — for example, one may be a single-registrant space, the other open — seems to be factoring into panelists’ thinking, which could lead to divergent opinions.
Even though Google’s .car was ruled not confusingly similar to Donuts’ .cars, it seems very possible that another panelist could reach the opposite conclusion — in one of Google’s other two .cars objections — based on trademark law and proposed usage of the gTLD.
If that were to happen, would only one .cars application find itself in the .car contention set? Would the two contention sets be linked? Would all three .cars applications wind up competing with .car, even if two of them prevailed against Google at the ICDR?
It doesn’t sound like ICANN has figured out a way to resolve this potential problem yet.
“I agree with you that it’s an issue to actually allow two panels to review the same thing, but that’s how the objection process was designed in the Guidebook and we’d just have to figure out a way to handle exceptions,” Atallah said.
“If we do get a case where we have a situation where a singular and a plural string — or any two strings actually — are found to be similar, the best outcome might be to go back to the GNSO or to the community and get their read on that,” he said. “That might be what the board might request us to do.”
“There are lots of different ways to figure out a solution to the problem, it just depends on how big the problem will be and if it points to an unclear policy or an unclear implementation,” he said.
But Atallah was clear that if one singular string is ruled confusing to the plural version of the same string, that panel’s decision would not cause all plurals and singulars to go into contention.
“If a panel decides there is similarity between two strings and another panel said there is not, it will be for that string in particular, it would not be in general, it would not affect anything else,” he said.
ICANN, despite Governmental Advisory Committee advice to the contrary, decided in late June that singular and plural gTLDs can coexist under the new regime.

Three gTLD contracts to be renewed next week

ICANN is set to belatedly renew the .info, .org and .biz Registry Agreements next week, according to the just published agenda of its board of directors’ next meeting.
The .info and .biz contracts expired last year, while .org’s expired in April. All three were extended while ICANN and the registries — Afilias, Neustar and PIR — figured out how much of the new gTLD Registry Agreement to incorporate into the renewed deals.
They wound up agreeing to, among other things, mandating the use of the 2013 Registrar Accreditation Agreement in all three gTLDs, but only on the condition that Verisign agrees to the same terms for .com and .net.
The three contracts didn’t go far enough for some, such as the Intellectual Property Constituency, which wants new gTLD rights protection mechanisms such as Uniform Rapid Suspension to be added.
The approval of the three renewals is on the consent agenda for the ICANN board’s August 22 meeting, so it seems unlikely that there will be any huge changes to the previously published draft contracts.
Also on the agenda for next week are the redelegations of the ccTLDs for Botswana (.bw) and Portugal (.pt).

Artemis plans name collision conference next week

Artemis Internet, the NCC Group subsidiary applying for .secure, is to run a day-long conference devoted to the topic of new gTLD name collisions in San Francisco next week.
Google, PayPal and DigiCert are already lined up to speak at the event, and Artemis says it expects 60 to 70 people, many of them from major new gTLD applicants, to show up.
The free-to-attend TLD Security Forum will discuss the recent Interisle Consulting report into name collisions, which compared the problem in some cases to the Millennium Bug and recommended extreme caution when approving new gTLDs.
Brad Hill, head of ecosystem security at PayPal, will speak to “Paypal’s Concerns and Recommendations on new TLDs”, according to the agenda.
That’s notable because PayPal is usually positioned as being aligned with the other side of the debate — it’s the only company to date Verisign has been able to quote from when it tries to show support for its own concerns about name collisions.
The Interisle report led to ICANN recommending months of delay for hundreds of new gTLD strings — basically every string that already gets more daily root server error traffic than legitimate queries for .sj, the existing TLD with the fewest look-ups.
The New TLD Applicants Group issued its own commentary on these recommendations, apparently drafted by Artemis CTO Alex Stamos, earlier this week, calling for all strings except .home and .corp to be treated as low risk.
NTAG also said in its report that it has been discussing with SSL certificate authorities ways to potentially speed up risk-mitigation for the related problem of internal name certificate collisions, so it’s also notable that DigiCert’s Dan Timpson is slated to speak at the Forum.
The event may be webcast for those unable to attend in person, according to Artemis. If it is, DI will be “there”.
—
On the same topic, ICANN yesterday published a video interview with DNS inventor Paul Mockapetris, in which he recounted some name collision anecdotes from the Mesolithic period of the internet. It’s well worth a watch.

Chehade hopes for lower round two gTLD fees

ICANN CEO Fadi Chehade has said he hopes that new gTLD application fees will be lower in the second round.
Speaking to Marketplace in a brief audio interview yesterday, he said:

As we go to round two, which everyone is clamoring for us to open, we will reassess the costs. We are a non-profit and therefore if the learnings from this first round lead us to a different fee — and I hope personally a lower fee so more people can participate — we will adjust that as we go.

The fees in the current round were $185,000, though the refund schedule means only successful applicants pay the full fee.
I’ve heard a couple of murmurings recently — nothing concrete as yet — that the cost of the program is actually running quite close to the original expectations that set the fee at $185,000.
Many applications have been withdrawn very close to the deadline for receiving their full pre-Initial Evaluation result refund, when one assumes that most of the IE costs have already been incurred.

Dotless domains are dead

ICANN has banned dotless gTLDs, putting a halt to Google’s plans to run .search as a dotless search service and confounding the hopes of some portfolio applicants.
ICANN’s New gTLD Program Committee, acting with the powers of its board of directors passed the resolution on Tuesday. It was published this morning. Here’s the important bit (links added):

Resolved (2013.08.13.NG02), in light of the current security and stability risks identified in SAC053, the IAB statement and the Carve Report, and the impracticality of mitigating these risks, the NGPC affirms that the use of dotless domains is prohibited.

The current version of the Applicant Guidebook bans dotless domains (technically, it bans apex A, AAAA and MX records) but leaves the door open for registries to request an exception via Extended Evaluation.
This new decision closes that door.
The decision comes a week after the publication of Carve Systems’ study of the dotless domain issue, which concluded that the idea was potentially “dangerous” and that if ICANN intended to allow them it should do substantial outreach to hardware and software makers, essentially asking them to change their products.
The Internet Architecture Board said earlier that “dotless domains are inherently harmful to Internet security.”
Microsoft, no doubt motivated in part at least by competitive concerns in the search market, had repeatedly implored ICANN to implement a ban on security grounds.
Google had planned to run .search as a browser service that would allow users to specify preferred search engines. I doubt the dotless ban will impact its application’s chances of approval.
Donuts and Uniregistry, which together have applied for almost 400 gTLDs, had also pushed for ICANN to allow dotless domains, although I do not believe their applications explicitly mentioned such services.

First string confusion decisions handed down, Verisign loses against .tvs

The International Centre for Dispute Resolution has started delivering its decisions in new gTLD String Confusion Objections, and we can report that Verisign has lost at least one case.
ICDR expert Stephen Strick delivered a brief, five-page ruling in the case of Verisign vs. T V Sundram Iyengar & Sons yesterday, ruling that .tvs is not confusingly similar to .tv.
TVS is a $6-billion-a-year, 100-year-old Indian conglomerate, while .tv is the ccTLD for Tuvalu, which Verisign manages because of its similarity of meaning to “television”.
It’s impossible to glean from the decision (pdf) what Verisign’s argument comprised. The summary is just two sentences long.
But TVS, in response, appears to have relied to an extent on the “DuPont factors” a 13-point test for trademark confusion that came out of a 1973 case in the US.
That’s the same precedent that has been found relevant in many Legal Rights Objections in cases handled by WIPO.
The “discussion and reasons for determination” section of the .tvs decision, in which Strick found that confusion was possible but not “probable”, amounts to just four sentences.
Here’s almost all of it. Emphasis in original:

in order for the Objector to prevail, Objector must prove that the co-existence of the two TLDs in question would probably result in user confusion. Given the analysis of the thirteen factors cited by Applicant derived from the DuPont case cited above, I find that Objector has failed to meet its burden of proof regarding the probability of such confusion. I note that while the co-existence of the two TLDs that are the subject of this proceeding may result in confusion by users, Objector has failed to meet its burden of proof to establish the likelihood or probability that users will be confused.
In considering parties’ arguments, I was persuaded, in part, by Applicant’s arguments relating to the commercial impression of the TVS TLD, including the proof offered by Applicant as to the longevity of the TVS brand, the limited nature of the gTLD’s intended use, the dissimilarity of the goods or services associated respectively with the two strings, ie TVS’s association with automobile products, the fact that TVS’s brand is associated with capital letters (whereas Objector’s .tv is in lower case), the fact that TVS is well known and associated with its companys’ [sic] brands, the lengthy market interface and the long historical co-existence of TVs and tv without evidence of confusion in the marketplace.

The geeks among you will no doubt be screaming at your screen right now: “WTF? He thought CASE was relevant?”
Yes, apparently the fact that the TVS trademark is in upper case makes a difference, despite the fact that the DNS is completely case-insensitive. Bit of a head-scratcher.
I understand several more decisions have also been sent to applicants and objectors, but they’re not yet pubicly available.
The ICDR’s web site for new gTLD decisions has been down for several days, returning 404 errors.

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.