The True Historie of Trademark+50 and the Deathe of the GNSO (Parte the Thirde)

ICANN’s decision to press ahead with the “Trademark+50” trademark protection mechanism over the objections of much of the community may not be the end of the controversy.
Some in the Generic Names Supporting Organization are even complaining that ICANN’s rejection of a recent challenge to the proposal may “fundamentally alter the multi-stakeholder model”.
Trademark+50 is the recently devised adjunct to the suite of rights protection mechanisms created specially for the new gTLD program.
It will enable trademark owners to add up to 50 strings to each record they have in the Trademark Clearinghouse, where those strings have been previously ruled abusive under UDRP.
Once in the TMCH, they will generate Trademark Claims notices for both the trademark owner and the would-be registrant of the matching domain name during the first 60 days of general availability in each new gTLD.
Guinness, for example, will be able to add “guinness-sucks” to its TMCH record for “Guinness” because it has previously won guinness-sucks.com in a UDRP decision.
If somebody then tries to register guinness-sucks.beer, they’ll get a warning that they may be about to infringe Guinness’ trademark rights. If they go ahead and register anyway, Guinness will also get an alert.
Trademark+50 was created jointly by ICANN’s Business Constituency and Intellectual Property Constituency late last year as one of a raft of measures designed to strengthen rights protection in new gTLDs.
They then managed to persuade CEO Fadi Chehade, who was at the time still pretty new and didn’t fully appreciate the history of conflict over these issues, to convene a series of invitation-only meetings in Brussels and Los Angeles to try to get other community members to agree to the proposals.
These meetings came up with the “strawman solution”, a list of proposed changes to the program’s rights protection mechanisms.
Until two weeks ago, when DI managed to get ICANN to publish a transcript and audio recording of the LA meetings, what was said during these meetings was shrouded in a certain degree of secrecy.
I don’t know why. Having listened to the 20-hour recording, I can tell you there was very little said that you wouldn’t hear during a regular on-the-record public ICANN meeting.
Everyone appeared to act in good faith, bringing new ideas and suggestions to the table in an attempt to find a solution that was acceptable to all.
The strongest resistance to the strawman came, in my view, from the very small number (only one remained by the end) of non-commercial interests who had been invited, and from the registrars.
The non-coms were worried about the “chilling effect” of expanding trademark rights, while registrars were worried that they would end up carrying the cost of supporting confused or frightened registrants.
What did emerge during the LA meeting was quite a heated discussion about whether the IPC/BC proposals should be considered merely “implementation” details or the creation of new “policy”.
That debate spilled over into 2013.
Under the very strictest definition of “policy”, it could be argued that pretty much every aspect of every new rights protection mechanism in the Applicant Guidebook is “implementation”.
The only hard policy the GNSO came up with on trademarks in new gTLDs was back in 2008. It reads:

Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law.

Pretty much everything that has come since has been cobbled together from community discussions, ad hoc working groups, ICANN staff “synthesis” of public comments, and board action.
But many in the ICANN community — mainly registries, registrars and non-commercial interests — say that anything that appears to create new rights and/or imposes significant new burdens on the industry should be considered “policy”.
During the LA meetings, there was broad agreement that stuff like extending Trademark Claims from 60 to 90 days and instituting a mandatory 30-day notice period before each Sunrise period was “implementation”.
Those changes won’t really incur any major new costs for the industry; they merely tweak systems that already have broad, if sometimes grudging, community support.
But the attendees were split (IPC/BC on the one side, most everyone else on the other) about whether Trademark+50, among other items, was new policy or just an implementation detail.
If something is “policy” there are community processes to deal with it. If it’s implementation it can be turned over to ICANN staff and forgotten.
Because the registries and registrars have an effective veto on GNSO policy-making and tend to vote as a bloc, many others view a “policy” label as a death sentence for something they want done.
A month after the strawman meetings, in early December, ICANN staff produced a briefing paper on the strawman solution (pdf) for public comment. Describing what we’re now calling Trademark+50, the paper stated quite unambiguously (it seemed at the time):

The inclusion of strings previously found to be abusively registered in the Clearinghouse for purposes of Trademark Claims can be considered a policy matter.

Chehade had previously — before the strawman meetings — strongly suggested in a letter to members of the US Congress that Trademark+50 was not doable:

It is important to note that the Trademark Clearinghouse is intended be a repository for existing legal rights, and not an adjudicator of such rights or creator of new rights. Extending the protections offered through the Trademark Clearinghouse to any form of name (such as the mark + generic term suggested in your letter) would potentially expand rights beyond those granted under trademark law and put the Clearinghouse in the role of making determinations as to the scope of particular rights.

Personally, I doubt then-new Chehade wrote the letter (at least, not without help). It mirrors Beckstrom-era arguments and language and contrasts with a lot of what he’s said since.
But it’s a pretty clear statement from ICANN’s CEO that the expansion of Trademark Claims to Trademark+50 night expand trademark rights and, implicitly, is not some throwaway implementation detail.
Nevertheless, a day after the staff briefing paper Chehade wrote to GNSO Council chair Jonathan Robinson in early December to ask for “policy guidance” on the proposal.
Again, there was a strong suggestion that ICANN was viewing Trademark+50 as a policy issue that would probably require GNSO input.
Robinson replied at the end of February, after some very difficult GNSO Council discussions, saying “the majority of the council feels that is proposal is best addressed as a policy concern”.
The IPC disagreed with this majority view, no doubt afraid that a “policy” tag would lead to Trademark+50 being gutted by the other GNSO constituencies over the space of months or years.
But despite ICANN staff, most of the GNSO Council and apparently Chehade himself concluding that Trademark+50 was policy, staff did a U-turn in March and decided to go ahead with Trademark+50 after all.
An unsigned March 20 staff report states:

Having reviewed and balanced all feedback, this proposal appears to be a reasonable add-on to an existing service, rather than a proposed new service.
…
It is difficult to justify omission of a readily available mechanism which would strengthen the trademark protection available through the Clearinghouse. Given that the proposal relies on determinations that have already been made independently through established processes, and that the scope of protection is bounded by this, concerns about undue expansion of rights do not seem necessary.

This caught the GNSO off-guard; Trademark+50 had looked like it was going down the policy track and all of a sudden it was a pressing reality of implementation.
Outraged, the Non-Commercial Stakeholders Group, which had been the strongest (if smallest through no fault of their own) voice against the proposal during the strawman meetings filed a formal Reconsideration Request (pdf) with ICANN.
Reconsideration Requests are one of the oversight mechanisms built into ICANN’s bylaws. They’re adjudicated by ICANN’s own Board Governance Committee and never succeed.
In its request, the NCSG told a pretty similar history to the one I’ve just finished relating and asked the BGC to overturn the staff decision to treat Trademark+50 as implementation.
The NCSG notes, rightly, that just because a domain has been lost at UDRP the string itself is not necessarily inherently abusive. To win a UDRP a complainant must also demonstrate the registrant’s bad faith and lack of rights to the string at issue.
To return to the earlier example, when notorious cybersquatter John Zuccarini — an unambiguously bad guy — registered guinness-sucks.com back in 2000 he told Guinness he’d done it just to piss them off.
That doesn’t mean guinness-sucks.beer is inherently bad, however. In many jurisdictions I would be well within my rights to register the domain to host a site criticizing the filthy brown muck.
But if I try to register the name, I’m going to get a Trademark Claims notice asking me to verify that I’m not going to infringe Guinness’ legal rights and advising me to consult a lawyer.
Chilling effect? Maybe. My own view is that many people will just click through the notice as easily as they click through the Ts&Cs on any other web site or piece of software.
Either way, I won’t be able to claim in court that I’d never heard of Guinness^TM, should the company ever decide to sue me.
Anyway, the NCSG’s Reconsideration Request failed. On May 16 the BGC issued a 15-page determination (pdf) denying it.
It’s this document that’s causing consternation and death-of-the-GNSO mutterings right now.
Last week, Neustar’s lead ICANN wonk Jeff Neuman asked for the Reconsideration Request to be put on the agenda of the GNSO Council’s June 13 meeting. He wants BGC representatives to join the call too. He wrote:

This decision was clearly written by legal counsel (and probably from outside legal counsel). It was written as a legal brief in litigation would be written, and if upheld, can undermine the entire bottom-up multi-stakeholder model. If ICANN wanted to justify their decision to protect their proclamation for the 50 variations, they could have done it in a number of ways that would have been more palatable. Instead, they used this Reconsideration Process as a way to fundamentally alter the multi-stakeholder model. It not only demonstrates how meaningless the Reconsideration process is as an accountability measure, but also sends a signal of things to come if we do not step in.

He has support from other councilors.
I suspect the registries that Neuman represents on the Council are not so much concerned with Trademark+50 itself, more with the way ICANN has forced the issue through over their objections.
The registries, remember, are already nervous as hell about the possibility of ICANN taking unilateral action to amend their contracts in future, and bad decision-making practices now may set bad precedents.
But Neuman has a point about the legalistic way in which the Reconsideration Request was handled. I spotted a fair few examples in the decision of what can only be described as, frankly, lawyer bullshit.
For example, the NCSG used Chehade’s letter to Congress as an example of why Trademark+50 should be and was being considered “policy”, but the BGC deliberately misses the point in its response, stating:

The NCSG fails to explain, however, is how ICANN policy can be created through a proclamation in a letter to Congress without following ICANN policy development procedures. To be clear, ICANN cannot create policy in this fashion.

Only a lawyer could come up with this kind of pedantic misinterpretation.
The NCSG wasn’t arguing that Chehade’s letter to Congress created a new policy, it was arguing that he was explaining an existing policy. It was attempting to say “Hey, even Fadi thought this was policy.”
Strike two: the NCSG had also pointed to the aforementioned staff determination, since reversed, that Trademark+50 was a policy matter, but the BCG’s response was, again, legalistic.
It noted that staff only said Trademark+50 “can” be considered a policy matter (rather than “is”, one assumes), again ignoring the full context of the document.
In context, both the Chehade letter and the March staff document make specific reference to the fact that the Implementation Recommendation Team had decided back in 2009 that only strings that exactly match trademarks should be protected. But the BGC does not mention the IRT once in its decision.
Strike three: the BGC response discounted Chehade’s request for GNSO “policy guidance” as an “inartful phrase”. He wasn’t really saying it was a policy matter, apparently. No.
Taken as a whole, the BGC rejection of the Reconsideration Request comes across like it was written by somebody trying to justify a fait accompli, trying to make the rationale fit the decision.
In my view, Trademark+50 is quite a sensible compromise proposal with little serious downside.
I think it will help trademark owners lower their enforcement costs and the impact on registrars, registries and registrants’ rights is likely to be minimal.
But the way it’s being levered through ICANN — unnecessarily secretive discussions followed by badly explained U-turns — looks dishonest.
It doesn’t come across like ICANN is playing fair, no matter how noble its intentions.

Two more new gTLD bids bite the dust

ICANN appears to have formally killed off two new gTLD applications that had asked for subsidized application fees.
The bids for .idn and .ummah both failed to meet the criteria of ICANN’s Applicant Support Program back in March, but were only officially marked as dead over the weekend.
The .ummah application was voluntarily withdrawn by Ummah Digital, while the applicant for .idn (an Indian company called NameShop) unsuccessfully fought the decision.
Nevertheless, NameShop has now been flagged on ICANN’s site with “Did not meet all criteria” for the Applicant Support Program.
We’re taking this as a signal it’s been officially kicked out of the current application round and have updated the DI PRO database accordingly.
As well as failing applicant support, NameShop would have failed the Geographic Names component of its Initial Evaluation because IDN is the reserved three-letter country code for Indonesia.
NameShop had attempted to change its application from .idn to .internet — something that would no doubt have cause a deal of consternation among potential objectors and other applicants.
By flunking the company on the applicant support criteria, ICANN has luckily avoided having to make that difficult call.

Bill Sweetman goes “ninja” with new consulting firm

Bill Sweetman, who recently resigned as head of Tucows’ domain portfolio business, has reemerged with his own “boutique” consulting firm, Name Ninja.
Sweetman said in a press release that the new company “will focus on domain name acquisition (buyer broker), domain name rescue, domain name protection, corporate domain name strategy, and domain name portfolio management.”
He also hopes to help new gTLD registries with their premium name allocation strategies.
You can find the new firm at NameNinja.com.

Fly9 offers services to simplify new gTLD sales

Portland-based developer Fly9 launched last week, offering new gTLD registries a broad range of software designed to make it easier to sell domain names.
The company, founded by SnapNames and Afilias alum Ravi Surya, hopes its platform will help new gTLD operators tap into registrars’ customer bases in a soon-to-be-flooded market.
“The problem with new TLDs is they’ll all depend on registrars, but the registrars are all busy selling other things, like hosting, they’re not interested in selling your TLD,” Surya said.
For a start-up, only just coming out of stealth mode, three-year-old Fly9 seems to have an awful lot of products with an awful lot of features, judging by a quick demo we saw last week.
Perhaps most interesting is the core TLD Distribution Platform. It’s a software service designed to plug the gap between the registry back-end and the registrar/reseller and simplify channel management.
The idea is to make it easier for newbie registry operators to leverage registrars’ marketing clout, but without asking the registrar to do a lot of technical integration work.
Say you’ve been awarded .pumpkins by ICANN. It’s a niche TLD and registrars — spoiled for choice in a world of 500 new gTLDs — aren’t exactly clamoring to sign up to offer it.
Fly9’s service would enable you to give these registrars a way to very quickly start selling .pumpkin domains, using their own registrar accreditation and payment systems but using Fly9’s hosted, white-label microsite.
According to Surya, registry managers can use the service to sign up registrars as little as five minutes. Adding branding and customizing the site for the registrar would obviously take longer.
Registries can also elect to use Fly9’s partner registrar, NameSystem, and create a channel of resellers instead.
The Fly9 suite also includes services for handling pre-registrations, sunrise periods, and premium domain auctions and Surya said the service can also handle EPP extensions for restricted gTLDs.
Pricing is based on transaction volume, but the software has already been licensed to two major back-end registry technical providers, which Surya said he could not yet name.
LogicBoxes and Architelos are among those offering software services for new gTLD management, but I’d be hard pressed to think of another company doing precisely what Fly9 is right now.

Two failures among latest 44 new gTLD results

ICANN has released its weekly batch of new gTLD Initial Evaluation results and it includes the program’s second and third failures.
Two dot-brand applications — .olayangroup and .mckinsey, filed by Olayan Investments and McKinsey Holdings — didn’t get passing scores and are now categorized as “Eligible for Extended Evaluation”.
Both — like the only other failure to date, also filed by Olayan — passed the technical evaluation but failed on question 45, which asks the applicant to provide financial statements.
The strings that have passed IE this week are:

.dog, .pharmacy, .sener, .skydrive, .soy, .sport, .grocery, .rightathome, .scjohnson, .jll, .hosting, .americanexpress, .yamaxun, .analytics, .construction, .land, .management, .systems, .surgery, .news, .data, .reisen, .rugby, .theater, .university, .cba, .ads, .how, .chrome, .vanguard, .meo, .lotte, .hughes, .praxi, .uno, .versicherung, .blog, .bmw, .shangrila, .yandex and .bbc

There are now 341 passing applications and three failures.

Donuts puts 63 new gTLDs to private auction, but at least 17 are dead on arrival

Donuts has committed 63 of its 307 new gTLD applications to a private auction next month, but at least 17 of them are doomed already because rival Uniregistry won’t take part.
Donuts, which does not want to enter into joint ventures with competing gTLD applicants, has decided to use a private auction managed by Cramton Associates instead of an ICANN auction.
The first round of auctions are due to kick off June 3, but Cramton has set a deadline of next week for applicants to commit the strings they want to bid on.
Donuts has put forward these ones (note that they’re different to those reported elsewhere earlier due to a couple of typos in the original press release):

.apartments, .auction, .audio, .baseball, .boats, .cafe, .church, .college, .construction, .direct, .discount, .fish, .football, .forsale, .furniture, .fyi, .global, .gratis, .guide, .juegos, .jewelry, .legal, .living, .luxury, .phone, .photography, .plus, .red, .run, .storage, .theater, .trading, .vote, .beauty, .broadway, .city, .club, .forum, .garden, .help, .hosting, .hot, .marketing, .media, .memorial, .wedding, .chat, .online, .pizza, .sale, .salon, .school, .search, .show, .soccer, .team, .group, .site, .style, .law, .store, .blog, and .art.

Running the list through the DI PRO database, we quickly discover that 33 of these strings are in two-horse races, 13 have three applicants, nine have four and three have five.
The remaining four contention sets have six, seven, nine and 10 applicants respectively.
Uniregistry, the portfolio applicant run by domainer Frank Schilling, is involved in 17 of the contention sets, and Schilling confirmed to DI today that the company does not intend to participate.
As we’ve previously reported, Uniregistry says it has concerns that private auctions may be illegal under US antitrust law, though substantial doubt has been cast over that assertion since.
Because all applicants in a contention set need to commit for the auction to be meaningful, we can assume that at least 17 of Donuts’ proposed auctions will not go ahead, unless Uniregistry changes its mind.
Top Level Domain Holdings has applied for 13 of the strings Donuts wants to take to auction. TLDH has also expressed concern in the past about the private auction concept.
Directi, Famous Four Media and Google are each involved in eight of the contention sets, while Amazon is involved in five.
According to Cramton, each auction will take place in bidding rounds, with the first round having a maximum bid of $50,000 multiplied by the number of applicants and subsequent rounds increasing that by 10% multiplied by the number of bidders.
If any applicant in a given auction requests privacy, then the winning amount will not be disclosed.

Donuts hires the face of the new gTLD program

Portfolio gTLD applicant Donuts has hired Michele Jourdan, who until last week was head of new gTLD communications at ICANN.
She has joined the company as director of sales and marketing, according to her LinkedIn profile.
Applicants and others following the program closely will remember her from the regular update videos published by ICANN.
She worked for ICANN for almost five years, but only in the last year or so started to take a visible front seat role in interactions with community members. I understand she left ICANN a week ago.
Jourdan is not the first ICANN alum Donuts has taken on.
Its CFO is former ICANN CFO Kevin Wilson, and we recently learned that former new gTLD program manager Kurt Pritz has been recruited, non-exclusively, as a consultant.

Ombudsman probing “late” new gTLD objections

ICANN’s Ombudsman Chris LaHatte has received complaints about some new gTLD objections that were apparently filed after the submission deadline but are being processed anyway.
Two companies have officially called on LaHatte to tell ICANN that “late complaints should not be received on the basis that the deadlines were well advertised and achievable”.
The issue seems to be that ICANN had set a deadline of 2359 UTC March 13 for objections to be filed, and some of them arrived slightly late.
The delays appear to have been a matter of mere minutes, and blamed on latency caused by heavy email attachments and other technical problems.
According to ICANN, the dispute resolution providers decided to give objectors a five-minute grace period, essentially extending the deadline from 2359 UTC to 0004 UTC the following day.
The recipients of these objections clearly now want to use this technicality to kill off the objections, avoiding the cost of having to defend themselves.
In a set of answers to questions posed verbally in Beijing last month, published last week (pdf), ICANN said:

ICANN is confident that the Dispute Resolution Service Providers are complying with the guidelines in the [Applicant Guidebook].

I don’t know which applications are affected by the issue, but the question at the Beijing public forum was posed by new gTLD consultant Jim Prendergast of the Galway Strategy Group.
He received applause, so I guess he wasn’t the only person in the room with an interest in the subject.
LaHatte, on his blog, is looking for feedback before making his decision.

Healthcare dot-brand drops out of gTLD race

WellPoint, a major North American health insurance provider, has dropped its application for .anthem, a proposed dot-brand gTLD.
It’s the fifth application to be withdrawn this week and the 64th to be withdrawn overall. The pull-out rate from the original 1,930 applications now stands at roughly 3.3%.
It’s also the second bid to be yanked by WellPoint. It pulled its application for .caremore in December, before even receiving an evaluation prioritization number in The Draw.
Wellpoint, which did not apply for .wellpoint, has no applications remaining in the program.
Anthem is a brand used by WellPoint to provide health insurance, mainly in California.
It’s also the original name of the company, which entered its present incarnation with the merger of WellPoint Health Networks Inc and Anthem Inc in 2004.
The gTLD was to be a straightforward .brand with a Neustar back-end. It was uncontested and had no public comments, objections or Governmental Advisory Committee to stand in its way.
It had a very low priority number, however, and was not due to receive its Initial Evaluation results until the final week of the schedule.

Afilias dumps .mail bid, and three other new gTLD withdrawals

Four new gTLD applications have been withdrawn so far this week, including the first to come from .info operator Afilias.
Afilias has pulled its bid for .mail — the second applicant to do so — due to the number of competitors for the string.
A spokesperson said in an email:

The company felt there were simply too many groups in contention for this domain and we’d rather focus our energy supporting and helping to grow the .POST domain, for which we are the [technical services provider].

There are now five applicants competing for the string, including Google, Amazon and Donuts, but they’re all facing objections from the United States Postal Service and the Universal Postal Union, which runs .post.
Elsewhere this week, Directi has ended its bid for .movie, a contention set with seven other bidders.
The company declined to comment on the reasons for the withdrawal, so we probably can’t entirely rule out some kind of partnership with one or more other applicants.
Today we’ve also seen the withdrawal of applications for .ltd and .inc, both belonging to a Dutch company called C.V. TLDcare. I don’t know much about these guys, other than it used OpenRegistry as its technical partner and that .inc and .ltd were its only two applications.
Interesting fact: not a single “corporate identifier” application (.llp, .corp, .ltd, .inc, .llc) has passed Initial Evaluation yet, but seven applications have been withdrawn.
It’s a controversial category, with many US state attorneys general very unhappy about any of these strings being delegated without safeguards.
The latest four withdrawals bring the total to 63.