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.

LRO roundup: six more new gTLD objections rejected

While we were busy focusing on ICANN 47 last week, six new gTLD Legal Rights Objections were decided by the World Intellectual Property Organization.
These are the objections where the objector has trademark rights that it believes would be infringed by the delegation of a matching or confusingly similar gTLD.
All six cases, like the first six, were rejected for varying reasons. There has yet to be a decision in favor of an objector.
Here’s a rundown of the highlights of the decisions:
.home (Defender Security v Lifestyle Domain Holdings)
.home (Defender Security v Merchant Law Group)
.home (Defender Security v Uniregistry)
These cases are three of the nine filed by .home applicant Defender Security against its rival applicants. Defender had already lost one such objection, and these three were no different.
Defender acquired its trademarks and associated domains and companies from Constantine Roussos’ CGR E-Commerce shortly before the new gTLD application window opened.
The trademarks themselves, attached to hastily created Go Daddy reseller web sites, were obtained not much earlier.
Uniregistry, paraphrased by the WIPO panelist in its case, put the situation pretty close to the truth:

Objector is one of several parties who were solicited some months ago to purchase any of a number of cookie-cutter European trademark documents lacking any substantial basis in actual goodwill or commerce, which were filed solely to game this process, and do not reflect a bona fide acquisition of substantial rights.

The WIPO panelists did not disagree, with two of them finding that not only were the acquisition of trademark rights not bona fide, but also that there was a question as to whether Defender even owned the trademark.
One panelist wrote of “the misleading and sometimes deceptive presentation of the evidence in the Objection, and more generally the abusive nature of the Objection” and another said:

The [LRO] Procedure is not intended to provide a facility whereby existing or prospective applicants for a new gTLD may attempt to gain an advantage over other applicants for the same gTLD by way of the deliberate acquisition of trademark rights for no purpose other than to bring a Legal Rights Objection. It has not escaped the Panel’s notice that the evidence before it indicates that the present Objection might have been motivated by just such an attempt

All three cases were rejected largely on this basis.
The panelist in the Lifestyle Domain Holdings case decided that acquisition of the trademarks had in fact been bona fide, but rejected the objection anyway on the overall LRO test of whether the proposed gTLD would take “unfair advantage” of Defender’s trademark rights, stating:

If anyone has taken “unfair advantage,” it has been the Objector through its meritless Objection. The LRO process is not meant to be a game or crap shoot; rather, it should be invoked only when the applicant’s proposed string would “infringe” trademark rights. It is an abuse of the process to invoke an LRO against an applicant whose proposed use is clearly a fair use of a string for its descriptive meaning and not a use designed to “infringe” (that is, cause confusion as to source, authorization or affiliation). What is “unfair” here is that the Objector filed an Objection that is not only completely devoid of merit, causing the Respondent to waste time and effort defending its entirely appropriate application, but also full of misleading, deceptive, and demonstrably untrue statements and omissions

With the Roussos/Defender gaming strategy thus comprehensively trashed, I can only hope for Defender’s sake that there’s opportunity left for it to withdraw its remaining objections and ask for a refund.
.mail (United States Postal Service v Amazon)
Amazon is one of the many applicants for .mail, while USPS is the United States’ longstanding government-backed postal service and not an applicant.
USPS showed that it owned a wide array of trademarks that include the word “mail”, but not any for the word alone, and argued that internet users expect “mail” to mean the US mail.
Amazon said that the word is generic and that USPS is not the only organization to incorporate it in its trademarks.
Amazon said (ironically, given its intention to operate .mail as a closed generic) that USPS “improperly seeks to take the dictionary word ‘mail’ out of the English language for its exclusive use”.
The decision to reject the complaint hinged on whether USPS even has rights in .mail.
The WIPO panelist decided: “The fact that a nation’s postal system is vested by statute or otherwise associated with a single entity does not convert the generic term into a trademark.”
USPS has filed six more LROs against the other six .mail applicants, two of which have been terminated due to application withdrawals. We can only assume that the remaining four are also likely to fail.
.pin (Pinterest v Amazon)
Amazon is the only applicant for .pin. Again, it’s a closed generic for which the company has not explained its plans.
The objector, Pinterest, is a wildly popular photo-sharing service provider start-up, funded to the sum of $100 million by Amazon’s Japanese retail rival Rakuten.
It owns a US trademark for “Pinterest” and has applied for many more for “Pin” and “Pin It”.
The panelist, in ruling against Pinterest, decided that Pinterest, despite its popularity, failed to show that the dictionary word “pin” had acquired a secondary meaning beyond its usual descriptive sense.
.mls (Canadian Real Estate Association v. Afilias)
MLS, for readers based outside North America, means “multiple listing services”. It’s used by estate agents when aggregating lists of properties for sale.
The Canadian Real Estate Association — which has applied for .mls TWICE, one as a community once as a regular applicant — has owned a Canadian “certification mark” on the term “MLS” since 1960.
A substantial portion of the decision is devoted to examining whether this counts as a trademark for the purposes of an LRO, with the panelist deciding that “ownership of a certification trademark must confer the status of ‘rightsholder’.”
The case was therefore decided on the eight criteria specified for the LRO in the ICANN Applicant Guidebook. The panelist concluded:

The Panel cannot see the justification for refusing to allow the Applicant to operate in every country because the Objector has a certification mark for a generic term in Canada. Had the Objector’s certification been other than a generic term, its case might have been stronger but MLS it is a generic term used in English-speaking jurisdictions.

The decision cited the .rightathome case, in which the decision hinged on whether the new gTLD applicant had any nefarious intent in applying for the string in question.
A body of precedent seems to be emerging holding that a new gTLD application must be somewhat akin to a cybersquatting attempt in order for an objector to win.
While this may be fair, I think a likely impact is an increase in the number of dot-brand applications in future rounds, particularly in cases where the brand matches a dictionary word or collides with another trademark.
We’ve yet to see what a successful LRO looks like, but the standard appears to be high indeed.

ICANN backtracks on URS contracts

ICANN seems to have changed its mind about requiring Uniform Rapid Suspension providers to sign enforceable contracts, angering the Internet Commerce Association.
As we reported in May, the ICA claimed a victory when ICANN said in a written answer to its persistent inquiries that URS providers would be bound by contract.
An ICANN Q&A, referring to a question the ICA’s Phil Corwin asked at the ICANN meeting in Beijing, said:

[Q] As regards Uniform Rapid Suspension (URS) providers, will there be a contract developed that goes beyond the non-enforceable memorandum of understanding? Will there be other URS providers?
[A] Yes, a contract is being developed and additional URS providers will be added.

It’s difficult to interpret that as anything other than “Yes, a contract is being developed.” The fact that the question draws the distinction between a contract and an MoU seems to remove any ambiguity.
But at the ICANN 47 meeting in Durban last week, ICANN appeared to backtrack on this position.
During a URS demo session, gTLD registry services director Krista Papac said that URS providers will only have to agree to an MoU.
“This breach of a written commitment is unacceptable,” Corwin later said at the Public Forum on Thursday.
In response, ICANN deputy general counsel Amy Stathos said:

An MoU is a contract. I recognize that you don’t necessarily recognize that as the full contract that you were contemplating or that had been contemplated. But that is a contract. And it calls and requires the URS providers to comply with all the rules and procedures that are in the Guidebook.

On Friday, ICANN then published a (hastily written?) document that sought to spell out its position on contracts for URS and UDRP providers. It says:

ICANN has carefully considered whether the introduction of contracts is feasible or useful in the scope of UDRP proceedings, and has determined that contracts would be a cumbersome tool to assert to reach the same outcome that exists today.

It goes on to address some of the concerns that the ICA and others have put forward in the past. The organization, which represents big-volume domainers, is worried that some UDRP providers find more often in favor of complainants in order to secure their business. Enforceable contracts, it says, would help prevent that.
ICANN said in its new position statement (pdf) that it has never seen behavior from UDRP providers that would require it to take action, but added:

Of course, there is always the future possibility that an issue of non-compliance will arise that will require corrective action. In recognition of that potential, ICANN commits that substantiated reports of UDRP provider non‐compliance with the UDRP or the Rules will be investigated.

Contracts, it said, would not stop forum shopping.

“Extortion” claims over new gTLD objection fees

The International Chamber of Commerce came in for quite a bit of criticism at ICANN 47 last week over claims that it is asking for deposits in excess of a million dollars to handle new gTLD objections.
Critics are worried that these high fees to arbitrate Community Objections will create a “chilling effect” that will dissuade communities affected by new gTLDs from objecting.
During a session early during the Durban meeting, Neustar VP Jeff Neuman said that the company had been “shocked” to receive a bill from the ICC for $190,000 for a single objection.
“Each one of the bidders had to put up $190,000,” he said. “It’s nothing better than extortion.”
Responding, ICANN new gTLD program manager Christine Willett said that ICANN has heard concerns from other applicants affected and has asked the ICC for a detailed rationale for its fees, which it will publish.
The ICC, she said, is “utilizing preeminent jurists to arbitrate and manage these cases” and that the estimated €450 per hour wage is “probably lower than what some of these jurists get in public fees”.
As we’ve noted previously, at €450 per hour it works out that each judge in the three-person panel would have to work on nothing but the objection, full-time, for over two weeks to justify the fee.
Later last week, during the Public Forum on Thursday, Mark Partridge of Partridge IP Law — who is WIPO panelist dealing with new gTLD Legal Rights Objections — had similar criticisms.
He said he was aware of a consolidated proceeding — where multiple objections have been bundled into the same case — where the ICC was asking for a total of €1.13 million.
A bit of back-of-the-envelope math suggests that the panelists in that case would have to work on the case full-time for a month at €450 an hour.
Partridge, noting that WIPO charges substantially less for LRO objections, said:

I’m also aware of not-for-profit associations that have found the amount of the required deposit to be prohibitive for that not-for-profit association to advance.
…
I’m still very concerned about the chilling effect that these high fees have going forward.

In response, Willett said that the Community Objection is substantially more complex than the LRO, and reiterated that
The prevailing party in a new gTLD gets its money back from the ICC. This may reduce the chilling effect, but only if a community is willing to put its money — if it even has the funds — on the line.
As we haven’t yet had any Community Objection decisions handed down yet, it’s pretty difficult to judge going into a case what the likely outcome would be. This may change in future rounds.
The ICC is also handled Limited Public Interest Objections, many of which have been filed by the ICANN-selected Independent Objector. If the objector loses his cases, the cost comes out of his budget, which was paid for by new gTLD applicants.

“Risky” gTLDs could be sacrificed to avoid delay

Google and other members of the New gTLD Applicant Group are happy to let ICANN put their applications on hold in response to security concerns raised by Verisign.
During the ICANN 46 Public Forum in Durban on Thursday, NTAG’s Alex Stamos — CTO of .secure applicant Artemis — said that agreement had been reached that about half a dozen applications could be delayed:

NTAG has consensus that we are willing to allow these small numbers of TLDs that have a significant real risk to be delayed until technical implementations can be put in place. There’s going to be no objection from the NTAG on that.

While he didn’t name the strings, he was referring to gTLDs such as .home and .corp, which were highlighted earlier in the week as having large amounts of error traffic at the DNS root.
There’s a worry, originally expressed by Verisign in April and independent consultant Interisle this week, that collisions between new gTLDs and widely-used internal network names will lead to data leakage and other security problems.
Google’s Jordyn Buchanan also took the mic at the Public Forum to say that Google will gladly put its uncontested application for .ads — which Interisle says gets over 5 million root queries a day — on hold until any security problems are mitigated.
Two members of the board described Stamos’ proposal as “reasonable”.
Both Stamos and ICANN CEO Fadi Chehade indirectly criticised Verisign for the PR campaign it has recently built around its new gTLD security concerns, which has led to somewhat one-sided articles in the tech press and mainstream media such as the Washington Post.
Stamos said:

What we do object to is the use of the risk posed by a small, tiny, tiny fraction — my personal guess would be six, seven, eight possible name spaces that have any real impact — to then tar the entire project with a big brush. For contracted parties to go out to the Washington Post and plant stories about the 911 system not working because new TLDs are turned on is completely irresponsible and is clearly not about fixing the internet but is about undermining the internet and undermining new gTLDs.

Later, in response to comments on the same topic from the Association of National Advertisers, which suggested that emergency services could fail if new gTLDs go live, Chehade said:

Creating an unnecessary alarm is equally irresponsible… as publicly responsible members of one community, let’s measure how much alarm we raise. And in the trademark case, with all due respect it ended up, frankly, not looking good for anyone at the end.

That’s a reference to the ANA’s original campaign against new gTLDs, which wound up producing not much more than a lot of column inches about an utterly pointless Congressional hearing in late 2011.
Chehade and the ANA representative this time agreed publicly to work together on better terms.