No costs to registries from TM Claims extension

New gTLD registries will not have to pay any extra fees due to the Trademark Clearinghouse’s extension of the Trademark Claims service, according to the the TMCH.
When the TMCH announced a few days ago that it planned to extend Claims indefinitely — beyond the 90 days required by ICANN contract — a couple of gTLD registries asked me if it would mean more costs for them.
According to the TMCH, the answer is “no”.
The TMCH said in a statement (with my emphasis):

no additional costs will be charged to the registries
…
The Clearinghouse will create an extra interface that works separately from the existing trademark database interface for the 90 days Claims Notifications (during these 90 days registries have to pay 0.25 USD per registration when there is a successful registration matching a mark in the Clearinghouse). The 90+ interface will charge no such fee when there is an exact match.

The TMCH plans to use other means, such as scraping zone files, to provide the extended service.

Blocked trademarks still eligible for Donuts sunrises

Donuts has confirmed that it is to allow trademark owners to participate in its new gTLD Sunrise periods even if their marks appear on name collisions block-lists.
The decision means that companies will be able to choose whether to grab names matching their marks during Sunrise, or take the risk that they will be released at a later date.
Donuts, like all gTLD registries, has been given block-lists for each of its TLDs. The idea is to avoid collisions with names already in use on private name-spaces behind corporate firewalls.
Lots of these blocked names match or contain well-known trademarks.
(Trademark owners can use the DI PRO collisions search engine to figure out which gTLDs have been asked to block their marks.)
While this appears at first glance to be good news for mark owners that just want their marks blocked in as many TLDs as possible, it also poses potential risks.
Blocked names are not likely to be blocked until after the first wave of Sunrise periods are over, and ICANN’s unblocking process has not yet been written.
For a company that wants to register its brand in a new gTLD, but is on a block-list, that could cause problems.
By allowing companies to participate in Sunrise regardless, Donuts is giving them a way to mitigate the risk of somebody else grabbing their brands in future.
Donuts does not plan to allow any of these names to be activated in the DNS until the ICANN collisions mitigation plan has been finalized, however.
So companies could find themselves paying for Sunrise names but unable to use them until some unspecified future date — if at all.

Ten more new gTLDs get ICANN contracts

.bar, .pub, .fish, .actor, .caravan, .saarland, .yokohama, .ren, .eus and .рус all have new gTLD contracts with ICANN as of yesterday.
It’s an eclectic batch of TLDs. Unusually, only one belongs to Donuts.
Of note is .caravan, which on the face of it looks like an English-language generic, but which is actually a closed, single-registrant dot-brand.
While “caravan” is an English dictionary word in the UK and Australasia, in the US it’s a 50-year-old trademark belonging to Illinois-based applicant Caravan International.
The Governmental Advisory Committee never flagged up .caravan as a “closed generic” in its Beijing Communique, so ICANN never questioned how it would be used.
However, the application states that the company plans “to reserve all names within the TLD to itself”.
What we seem to have here is a case of a dictionary word in one part of the world being captured by a single-registrant applicant due to a trademark elsewhere.
Another notable new Registry Agreement signatory is Punto 2012, which has obtained a contract for .bar.
The gTLD was originally contested, but Demand Media’s United TLD withdrew following an RFP held by the government of Montenegro, which had an effective veto over the string “Bar” due to a match with the protected name of one of its administrative regions.
I gather Montenegro will be paid in some way from the .bar registry pot.
There are also a few new geographic/cultural registries this week: .eus for the Basque people of Spain, .yokohama for a Japanese city, .saarland for a German state and the Cyrillic IDN .рус for a subset of the Russian people.
The only .brand is .ren, for the Chinese social network Renren.
The remainder are English-language generics.

Should new gTLD objections have an appeals process?

That’s the question the ICANN Ombudsman is asking today.
Several new gTLD applicants that have lost objections — many in decisions that appear to diverge from ICANN’s rules or are inconsistent with other decisions — have been in touch to ask for redress, Ombudsman Chris LaHatte blogged this morning. He wrote:

The real problem as it seems to me, is that apart from the internal review procedures, there is no ability to seek an appeal from the panel decisions. A number of complainants had mentioned the need for an appeal process, emphasising that some of the decisions were in their view, inconsistent or not following the majority views.

LaHatte noted that his role is to decide issues of fairness in ICANN’s own decisions. As objections are all handled by third-party arbitration bodies, it’s not at all clear whether he has any authority at all over objection decisions.
Applicants have also been invoking the Reconsideration process en masse in an attempt to have successful objections overturned, but all Reconsideration requests to date have been rejected.
Reconsideration generally requires that the requester provide ICANN with new evidence that was not considered at the time of the original decision.
The ICANN Board Governance Committee, which handles Reconsideration, appears to be happy to leave objections in the hands of the arbitrators so far.
But the new gTLD objection process is a bit of a joke at the moment.
String Confusion Objection panelists have delivered inconsistent decisions, while Community Objection and Limited Public Interest Objection panels often seem to be making up rules as they go.
So should ICANN have an appeals process? If one is created it will undoubtedly be broadly used.

Islamic states to “officially object” to .islam

The Organization for Islamic Cooperation has decided to “file an official objection to the use of gTLDs .Islam and .Halal”, following a summit of 56 foreign ministers.
In a resolution (pdf) from the OIC’s high-level summit in Guinea this week, the organization also said it will become “an effective member” of ICANN, closely monitoring its work.
As previously reported, ICANN’s Governmental Advisory Committee was unable to reach a consensus to object to .islam and .halal, leaving it to ICANN’s board of directors to decide whether to approve them.
The OIC’s resolution is expected to become an important input to that decision-making process, after GAC chair Heather Dryden asked ICANN to take note of the Guinea meeting’s output.
The resolution also calls for the OIC to investigate how to run its own Islamic gTLDs.
The OIC has of course missed the boat by several months if it wants to file an objection to these gTLDs within the rules of the new gTLD program.
Instead, it’s going to have to hope that its entreaties to the ICANN board will be effective.

TMCH extends Trademark Claims indefinitely, kinda

The Trademark Clearinghouse is to give the intellectual property lobby something that it’s been crying out for for years — an indefinite extension of parts of the Trademark Claims service.
And it’s going to be free.
Trademark Claims is a mandatory service for all new gTLD operators, sending pre-registration warnings to registrants and post-registration alerts to mark owners whenever a domain matching a trademark is registered.
But it only runs for 90 days, per the ICANN new gTLD contracts, which TMCH project director Jan Corstens said is IP owners’ “number one complaint” about the system.
So the TMCH is going to extend the post-registration alerts half of the service indefinitely.
When the first new gTLDs officially end their Claims periods next year, the TMCH will continue to send out alerts to mark owners (or, in 90% of cases, their registrar “agents”) when matching domains are registered.
Would-be registrants will only receive their pre-registration warnings for the original 90-day period.
Corstens said that the pre-registration side of Claims would only be possible with the cooperation of registries and registrars, and that there’s a lot of reluctance to help out.
“A lot of them are not really interested in doing that,” he said. “I understand it takes work, and I understand they think it could demotivate potential registrants.”
Trademark owners that have directly registered with the Clearinghouse, rather than going through an agent, will get the extended service for no added charge.
However, Corstens made it clear that the TMCH is not trying to compete with registrars — such as MarkMonitor and Melbourne IT — that already offer zone file monitoring services to trademark owners.
“We know the market exists,” he said. “It’s not our intention to become a monopoly. We will deliver it to them, of course, and assume they can integrate with it.”
Agents will be able to plug the service into their existing products if they wish, he said.
There are a few initial limitations with the new TMCH service such that its registrar agents may not find it particularly labor-saving.
First, only domains that exactly match labels in the Clearinghouse will generate alerts.
By contrast, brand-monitoring registrars typically generate alerts when the trademark is a substring of the domain. To carry on doing this they’ll need to carry on monitoring zone files anyway.
Second, the TMCH service only currently covers new gTLDs applied for in the 2012 round. It doesn’t cover .com, for example, or any other legacy gTLD.
Corstens said both of these limitations may be addressed in future releases. The first Trademark Claims period isn’t due to end until March, so there’s time to make changes, he said.
He added that he hopes the extension of Claims will lead to an uptick in the the number of trademarks being registered in the TMCH. Currently there are about 20,000.

GAC kills off two more new gTLD bids

A new gTLD applicant has withdrawn two of its Chinese-language applications after failing to secure the necessary government support.
Guangzhou YU Wei Information Technology Co withdrew its applications for .深圳 (.shenzhen) and .广州 (.guangzhou).
Both are the names of very large cities in southern China.
The ICANN Governmental Advisory Committee had previously issued official Advice against both bids.
The applicant had failed to get a passing score on its Initial Evaluation earlier this year, with ICANN ruling that governmental “support or non-objection was either not provided or did not meet the criteria”.
To get a geographic gTLD, you need to prove local government support, something which the applicant seems to have been unable to provide during Extended Evaluation.
Weirdly, Guangzhou YU Wei has previously passed EE for .佛山 (.foshan) and IE for .广东 (.guangdong), which are both also Chinese geographic names.

German geo .ruhr enters the root

Verisign today delegated the new gTLD .ruhr to the DNS root zone, making it the 35th new gTLD to go live.
It’s a geographic string, meant for residents of the north-west German region of Ruhr, operated by Regiodot.
nic.ruhr is already resolving.
Regiodot is already taking pre-registrations via approximately 10 signed-up registrars, which all appear to operate in German-speaking countries.
The Ruhr (in German, it’s short for Ruhrgebiet) has over eight million inhabitants, according to Wikipedia, making the potential market for .ruhr larger than many European ccTLDs.

ICANN will have to make a call on .islam

ICANN is going to have to decide whether to approve the new gTLDs .islam and .halal, after the Governmental Advisory Committee punted the issue.
GAC chair Heather Dryden told ICANN chair Steve Crocker last week (pdf) that the GAC will not provide ICANN with the clarity it so wanted on the two controversial gTLDs.
“[T]he GAC concluded its discussions on these applications with the advice provided in the Beijing Communiqué,” Dryden said. “Accordingly, no further GAC input on this matter can be expected.”
ICANN is therefore left with the following advice:

The GAC recognizes that Religious terms are sensitive issues. Some GAC members have raised sensitivities on the applications that relate to Islamic terms, specifically .islam and .halal. The GAC members concerned have noted that the applications for .islam and .halal lack community involvement and support. It is the view of these GAC members that these applications should not proceed.

My take on this is that the GAC has provided what is often called a “non-consensus” objection, which I believe triggers one of the vaguest parts of the Applicant Guidebook.
One of the three types of GAC Advice on New gTLDs reads:

The GAC advises ICANN that there are concerns about a particular application “dot-example.” The ICANN Board is expected to enter into dialogue with the GAC to understand the scope of concerns. The ICANN Board is also expected to provide a rationale for its decision.

It seems pretty obvious now that ICANN’s board — nowadays its New gTLD Program Committee — is expected to make a decision whether to accept or reject .islam and .halal.
It would be the first time that ICANN has had to decide whether to reject a gTLD for public policy reasons without the full backing of the GAC in this application round.
It faced a similar conundrum in the 2003 round — albeit using different rules of engagement — when it had to decide the fate of .xxx (which it obviously chose to approve).
The applicant for .islam and .halal is Turkey-based Asia Green IT System.
The Organization for Islamic Cooperation, which claims to represent 1.6 billion Muslims, does not support the bids. It backed two formal Community Objections to the applications, which both failed.
The OIC’s Council of Ministers is meeting this week in Conakry, Guinea, and is expected to come out with some kind of formal statement opposing Islamic-oriented gTLDs that lack support.
The strength of that statement may prove decisive when ICANN comes to consider the issue.

Jetpack Domains hit with ICANN breach notice

A small Californian registrar has been sent a contract breach notice by ICANN.
ICANN says Irvine-based Jetpack Domains has failed to comply with a scheduled audit, breaking the terms of the Registrar Accreditation Agreement that require it to supply records on demand.
The company has until January 2 to provide ICANN with the data it has asked for or risk losing its accreditation, ICANN said (pdf).
Jetpack, which had fewer than 6,000 gTLD domains under management at the last count, appears to use DomainCocoon for registrar management services.