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Many applications have been withdrawn very close to the deadline for receiving their full pre-Initial Evaluation result refund, when one assumes that most of the IE costs have already been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.

TLDH commits to four private gTLD auctions

Top Level Domain Holdings has committed four of its applied-for gTLDs to private auctions due to kick off tomorrow.
The four strings are .guide, .casa, .网址 (“web address” in Chinese) and .fishing, each of which has only one competing applicant.
The company will bid against Donuts on .casa and .guide, Demand Media on .fishing and Hu Yi Global Information Resources on .网址.
Results of the auctions, managed by Innovative Auctions, are expected to be announced next week.
TLDH was initially cautious about the idea of private auctions, but later decided to participate, for reasons CEO Antony Van Couvering explained in this June article.
Over 100 strings, including 68 from Donuts, are expected to be hitting the block with Innovative this week. The first six strings to be auctioned this way raised an average of $1.5 million per string.
TLDH has 49 strings in active contention.

dotShabaka Diary — Day 2

This is the second in DI’s series following the progress of شبكة. applicant dotShabaka Registry as it prepares to be one of the first new gTLD registries to launch.
The following journal entry was written by dotShabaka general manager Yasmin Omer:

Date: Saturday 10 August 2013
It has been nearly a month since we signed our Registry Agreement with ICANN and we are still confused about TMCH Integration Testing, which is a concern given it’s now seven weeks out from ICANN’s first delegation date.
Whilst we have access to the Sandbox LORDN file test environment, ICANN happened to mention that the ‘OT&E environment’ is available in this week’s webinar. That’s new information.
We still have no idea what the process is for TMCH integration testing or how we access the environment. Are there test cases? What’s the schedule?
The lack of information is a concern as we need to pass TMCH Integration to provide Sunrise notice. Let’s hope it’s not as complicated as PDT.
In other news, we received an email from Wendy Profit (Registry Product Manager) yesterday. It’s the first formal email we have received since signing our contract nearly a month ago.
The email contained a copy of the contract and a spreadsheet for contact details. Not sure if Wendy is indeed our account manager or if we even have one. We have sent an email asking her the same. Clearly we have a few questions for an Account Manager once we get one.

You can read past and future entries in this series here.

Another 105 gTLDs pass IE, another two withdrawals

With only three weeks of scheduled Initial Evaluation results remaining, ICANN has passed another 105 applications.
We’ve also seen another two withdrawals over the last day or so — Monster Worldwide withdrew its dot-brand application for .beknown while Microsoft dropped its bid for .skydrive.
Here are the IE passes, with links as ever to DI PRO.

.xyz .irish .fairwinds .nextdirect .vegas .cookingchannel .baby .group .mopar .seek .mitsubishi .meet .nfl .baseball .art .eurovision .fish .brussels .healthcare .antivirus .team .partners .art .jeep .scholarships .osaka .final .northwesternmutual .pet .hdfcbank .yokohama .boots .rentals .chat .diet .luxe .hyatt .phone .family .merckmsd .weir .duck .kred .site .google .book .accountants .casino .coupons .verisign .bayern .store .pub .you .shop .music .barclays .cricket .now .piaget .community .piperlime .now .circle .app .vip .cancerresearch .lidl .diy .nissan .website .yun .style .moi .app .cleaning .date .taxi .mlb .cruise .stream .catering .dating .dot .theatre .reliance .hotel .black .jlc .construction .vision .shop .shell .cards .bank .azure .tech .dog .security .aigo .nationwide .metlife .vanish .indians

Only 331 applications remain in IE. Another 1,482 have passed.

dotShabaka Diary — Day 1

Three weeks ago, dotShabaka Registry became the first of the current crop of new gTLD applicants to sign a registry contract with ICANN, but there’s still a way to go before launch.
The company has offered to provide DI readers, in a series of journal entries, with an insight into its operational experiences and concerns as شبكة. progresses on the path to delegation and launch.
With a Prioritization Draw number of 3, dotShabaka will be often be the first to encounter any pitfalls that emerge in the latter stages of the new gTLD evaluation and delegation process.
DI has agreed to carry the journal, unedited, in the belief that a regular focus on operational matters from a high-prioritization applicant will prove an invaluable resource for applicants and program observers alike.
Here’s the first entry:

Welcome to The شبكة. Journal.
In association with Domain Incite, dotShabaka Registry has launched a journal series to provide regular updates on our progress through delegation and then launch.
The aim will be to offer a transparent insight into the operations of شبكة.. As the first new TLD to sign a Registry Agreement and begin the delegation process, we are throwing the door wide open and will report the good, bad and ugly of our experience via this journal.
You can expect to read reports on our interaction with ICANN, how we handle technical issues and our progress with establishing commercial operations.
For example, we can report that:
شبكة. began pre-delegation testing in the first-available slot on Monday 5th August – nearly three weeks after ICANN’s ‘earliest path’ timetable published in Durban. We are confident of a successful outcome after passing beta testing in July.
Updated RPM Requirements were finally published for comment on 6th August. The good news for شبكة. is the welcomed proposed revisions to support anchor tenants. The bad news is that public comment process is open until 18 September. Another delay!
This lack of certainty has made it impossible for us to finalise launch plans and policies, which is frustrating.
The good news is شبكة. is in the low risk category for New gTLD Collision Risk Management and we don’t expect any impact on the timeline for delegation. Who will be left standing with شبكة. after ICANN’s ‘risk mitigation’ actions for name collisions and GAC Advice are accounted for?
We welcome your feedback and encourage readers to comment below in the Domain Incite comment box. We’ll attempt to address questions the community may have.
Please stay tuned for future updates exclusively via Domain Incite.

One-time disclosure: I’d like to state for the benefit of those who are seemingly always ready to pounce on DI for “selling out” that the journal series are not “sponsored” posts.
There’s no financial relationship whatsoever between DI and dotShabaka or any of its affiliated companies. This is just about the info.

Another dot-brand gTLD bid withdrawn

Eighty-year-old adhesives company Avery Dennison has withdrawn its application for the .avery new gTLD.
The application was ranked 1,780 in ICANN’s evaluation queue, meaning it was due to receive its Initial Evaluation results shortly. By withdrawing now, the company gets a bigger refund.
According to its application, Avery Dennison makes “cutting-edge pressure-sensitive solutions, self-adhesive and reflective base materials, and innovative consumer and office products”.
A dot-brand with a Key-Systems back-end, .avery was the company’s only new gTLD application.

Trademarks still trump founders in latest TMCH spec

New gTLD applicants and ICANN seem to have failed to reach an agreement on how new registries can roll out founders programs when they launch.
A new draft of the Rights Protection Mechanism Requirements published last night, still appears to make it tricky for new gTLD registries to sell domain names to all-important anchor tenants.
The document (pdf), which tells registries what they must do in order to implement Sunrise and Trademark Claims services, is unchanged in many major respects from the original April draft.
But ICANN has published a separate memo (pdf) comprising a handful of asks made by applicants, which highlight where differences remain. Both are now open for public comment until September 18.
Applicants want text adding to the Requirements document that would allow them to give or sell a small number of domains to third parties — namely: anchor tenants — before and during Sunrise periods.
Their suggested text reads:

As set forth in Specification 5 of the Agreement, Registry Operator MAY activate in the DNS up to one hundred (100) names necessary for the operation and promotion of the TLD. Pursuant to these Requirements, Registry Operator MAY register any or all of such domain names in the TLD prior to or during the Sunrise Period to third parties in connection with a registry launch and promotion program for the TLD (a “Qualified Registry Launch Program”), provided that any such registrations will reduce the number of domain names that Registry Operator MAY otherwise use for the operation and promotion of the TLD as set forth in Specification 5.

The base new gTLD Registry Agreement currently allows up to 100 names to be set aside before Sunrise only on the condition that ownership stays in the hands of the registry for the duration of the registration.
Left unaltered, that could complicate deals where the registry wants to get early registrants through the door to help it promote its gTLD during the critical first few months.
A second request from applicants deals with the problem that Sunrise periods also might interfere with preferred allocation programs during the launch of community and geographic gTLDs.
An example given during the recent ICANN Durban meeting was that of the .london registry giving first dibs on police.london to the Metropolitan Police, rather than a trademark owner such as the Sting-fronted band.
The applicants have proposed to allow registries to request “exemptions” to the Requirements to enable this kind of allocation mechanism, which would be offered in addition to the standard obligatory RPMs.
Because these documents are now open for public comment until September 18, that appears to be the absolute earliest date that any new gTLD registry will be able to give its mandatory 30-day pre-Sunrise warning.
In other words, the hypothetical date of the first new gTLD launch appears to have slipped by a couple of weeks.