IPO warns about premium loopholes in new gTLD trademark protection

It seems like it’s been an age since we last heard the intellectual property lobby pushing for stronger rights protection mechanisms in new gTLDs, but they’re back just in time for the first launches.
The Intellectual Property Owners Association has written to ICANN this week to warn about loopholes in the standard new gTLD Registry Agreement related to premium name reservations that the IPO said “will adversely affect trademark rights holders”.
The letter (pdf) makes reference to two specific parts of the contract.
Specification 5 enables registries to reserve up to 100 names “necessary for the operation or promotion of the TLD” in section 3.2 and an unlimited number of names in section 3.3.
Section 3.3 is vague enough that I’m aware of new gTLD applicants that still don’t know whether it allows them to reserve an unlimited number of “premium” names or not.
However, most new gTLD registries I’ve talked to appear to be convinced that it does. DotKiwi’s recently announced premium plan seems to be taking advantage of 3.3.
The IPO is worried that massive lists of premium names will wind up containing lots of strings matching trademarks, which will prevent mark holders from defensively registering during Sunrise.
Worse, the IPO said it could lead to registries milking trademark owners for huge fees to register their “premium” marks. It said:

such reservations would invite the abuse of protected marks. For instance, Registry Operators may reserve the marks of protected brands to leverage premium sales. Further, Registry Operators may use this ability to release names to market competitors of the brand owners.

The counter argument, of course, is that owners of spurious trademarks on generic terms could game Sunrise periods to get their hands of potentially valuable domain names (cf. the .eu sunrise)
The IPO wants ICANN to expand the Trademark Clearinghouse to send Trademark Claims notices to new gTLD registries when they reserve a name matching a listed trademark.
It also wants a new dispute procedure that mark owners could use to get names released from reserved status. It would be like UDRP, but modified to allow for registries to reserve dictionary words related to their gTLD strings, the IPO said.
If my sense of the mood of ICANN’s leadership during last month’s Buenos Aires meeting is anything to go by, I can’t see these last-minute requests for changes to RPMs getting much traction, but you never know.

Superstitious launch planned for Chinese gTLDs

TLD Registry plans to time its Chinese new gTLD launch dates to coincide with days considered lucky in Chinese astrology.
The Sunrise period for .在线 (“.online”) and .中文网 (“.chinesewebsite”) will start January 17 and end March 17.
According to the registry:

Both the start and end days of Sunrise fall on highly auspicious days for “starting new businesses” in the ancient Chinese almanac. The Chinese almanac was created during the Han Dynasty around 200BC, and continues to be an important guide to the lives and businesses of more than a billion Chinese people.

A landrush period will follow starting March 20, “an auspicious day for ‘breaking ground'”, and ending April 24.
TLD Registry will also run a live/online auction for “the most valuable and sought-after” names in Macau on March 21.
General availability is slated for April 28, “a highly auspicious date for ‘starting new businesses’ and ‘grand openings'”
It’s cute marketing, and no mistake.
The Chinese almanac, like all astrology, is of course utter nonsense.

DotKiwi puts $7 million of premium names on sale

DotKiwi has put NZD 8.5 milion ($7 million) of “premium” domain names on the market in advance of the delegation of .kiwi, which it expects to happen this week.
There are 4,668 names on sale right now, ranging in price from NZD 501.50 ($410) to NZD 124,626.71 ($102,000).
The highest price belongs to hotels.kiwi.
The average asking price is NZD 1,832.39 ($1,500).
The registry said:

All premium names have been valued in collaboration with third parties that specialise in valuing domain names around the globe. The value of a .kiwi premium name is determined using historical sales data, search engine popularity and traffic.

There are 32 domains priced at over $10,000. These are the top 10 highest-priced names:
[table id=23 /]
Unlike other new gTLD registries that have introduced tiered renewal pricing for premium names, DotKiwi plans to charge a standard NZD 40 ($33) annual fee for premiums.
DotKiwi tells us that the names have all been reserved, so they’re ineligible for the mandatory Sunrise period (expected to start later this month).
But the names won’t actually be activated until after Sunrise is over. Then, they’ll still be subject to the Trademark Claims service, which alerts trademark owners when their mark has been registered.

First English new gTLD Sunrise periods start today

Donuts today kicks off the Sunrise periods for its first seven new gTLDs, the first English-language strings to start their priority registration periods for trademark owners.
The big question for mark holders today is whether to participate in Sunrise, or whether Donuts’ proprietary Domain Protected Marks List is the more cost-efficient way to go.
Sunrise starts today and runs until January 24 for .bike, .clothing, .guru, .holdings, .plumbing, .singles and .ventures. Donuts is planning seven more for December 3.
These are “end-date” Sunrises, meaning that no domains are awarded to participants until the full 60-day period is over. It’s not first-come, first-served, in other words.
Where more than one application for any given domain is received, Donuts will hold an auction after Sunrise closes to decide who gets to register the name.
The primary requirement for participating in Sunrise is, per ICANN’s base rules, that the trademark has been submitted to and validated by the Trademark Clearinghouse.
Donuts is not enforcing additional eligibility rules.
The company has not published its wholesale Sunrise application fee, but registrars have revealed some details.
Com Laude said that the Donuts “Sunrise Participation Fee” is $80, which will be the same across all of its gTLDs. Registrars seem to be marking this up by about 50%.
Tucows, for example, is asking its OpenSRS resellers for $120 per name, with an additional first-year reg fee ranging between $20 and $45 depending on gTLD.
Lexsynergy, which yesterday reported on Twitter a spike in TMCH submissions ahead of today’s launch, is charging between £91 ($147) and £99 ($160) for the application and first year combined.
The question for Trademark Owners is whether they should participate in the alternative Domain Protected Marks List or not.
The DPML is likely to be much cheaper for companies that want to protect a lot of marks across a lot of Donuts gTLDs.
A five-year DPML fee can be around $3,000, which works out to $3 per domain per year if Donuts winds up with 200 gTLDs in its portfolio.
Companies will not be able to actually use the domains blocked by the DPML, however, so it only makes sense for a wholly defensive blocking strategy.
In addition, DPML does not prevent a eligible mark owner from registering a DPML domain during Sunrise.
A policy Donuts calls “DPML Override” means that if somebody else owns a matching trademark, in any jurisdiction, they’ll be able to get “your” domain even if you’ve paid for a DPML entry.
I should point out that Donuts is simply following ICANN rules here. There are few ways for new gTLD registries to make names ineligible for Sunrise within their contracts.
Trademark owners are therefore going to have to decide whether it’s worth the risk of sticking to a strictly DPML strategy, or whether it might make more sense to do Sunrise on their most mission-critical marks.
DotShabaka Registry was the first new gTLD operator to go to Sunrise, with شبكة., though the lack of Arabic strings in the TMCH means it’s largely an exercise in contractual compliance.

RightOfTheDot to manage .club’s premium strategy

.CLUB Domains has selected RightOfTheDot to manage its premium and founders program domains strategy.
The company named “a.club, 888.club, chess.club, poker.club, insurance.club, golf.club country.club, car.club” as examples of “category killer” names that RightOfTheDot will try to find homes for.
.CLUB signed its Registry Agreement with ICANN late last week and plans to go to Sunrise in January.
It’s among the top 30 most popular new gTLDs being pre-registered at 1&1 right now, and recently said it’s hoping to have five million domains under management within five years, an ambitious target.
RightOfTheDot is the new gTLD consultancy founded by domainers Mike Berkens and Monte Cahn.

Over half the world’s biggest brands will be blocked in new gTLDs

More than half of the world’s most-famous brand names already stand to benefit from blocks in new gTLDs, due to the name collisions policy introduced by ICANN recently.
That’s the preliminary conclusion of a quick analysis of the 37 block-lists already published.
Using Interbrand’s list of the top 100 most valuable brands, we find that only 32 do not appear anywhere — either as strings or substrings — on the collisions lists we have today.
Fifty-nine brands are to be blocked as exact matches in at least one new gTLD. Five brands are blocked exactly in 10 or more.
Brand owners blocked in collision lists may not have to fork out for as many defensive registrations, but may also face complications when registries finally start whittling down their lists.
We present the full table of results below, for which the following explanations might be needed:

• Brand/String — The brands have been normalized to ASCII strings, removing punctuation not compatible with the DNS protocol and converting accented characters to their unaccented equivalents (for example, “Nescafé” becomes “Nescafe”). For DI PRO subscribers, each string links to a search on the database for that string.
• Exact Matches — The number of gTLDs (currently out of 37) in which this exact-match brand will be blocked.
• Unique Strings — The number of strings containing this brand that appear on block-lists. In some cases this may provide misleading results due to the usual overkill you get when matching substrings. For example, two-character brands such as 3M and HP get a lot of hits, the vast majority of which do not appear to relate to the brand itself, whereas every hit for Google does in fact refer to the brand.

[table id=19 /]
The numbers will of course grow rapidly as ICANN publishes more collisions lists.
If there’s sufficient interest from DI PRO subscribers in this breakdown being kept up to date on an ongoing basis, I’ll bolt it on to to the existing collisions database.

XYZ says auctions “comfortably within the rules”

New gTLD registry XYZ.com has responded to criticisms of its plan to auction .xyz and .college names with NameJet before they even have signed contracts with ICANN.
CEO Daniel Negari told DI that the plan to auction 40 names between now and the end of February, is “comfortably within the rules”.
The company seems to be operating at the edge of what is permissible under the new gTLD program’s rights protection mechanisms, which state that no domains may be allocated prior to Sunrise.
But Negari said in an email interview that nothing will be “allocated” before its Sunrise periods are done:

the buyers at auction are not buying the domain names as in a normal auction. They are buying an option to force us to allocate them the domain after the Sunrise Period for the auction price assuming various contingencies are met — such as us being able to allocate the name in the future, the name being available after sunrise, the name not being blocked-out because of name collisions and so on.

He went on to say that the 40 names being put to auction are being drawn from the 100 names the recently redrafted Registry Agreement says registries are allowed to allocate to themselves “necessary for the operation or the promotion of the TLD”.
There’s also the potential problem that neither TLD has yet received its list of name collisions, which are likely to contain thousands of strings that the registry must block at launch.
As we’ve seen with the gTLDs that already have their lists, many desirable second-level strings are likely to be blocked, which could clash with names XYZ is planning to auction.
But XYZ seems to have access to the Day In The Life Of The Internet data from which these lists are compiled, and Negari said that the names it is auctioning off do not appear.
“We think these auctions are a great way to both promote our TLD as anticipated by ICANN in the RA and to bring increased innovation to the space in line with ICANN’s stated goals for the new gTLD program,” Negari said.

Donuts puts date to first Sunrise, signs big registrars, says it won’t have a landrush

Donuts has announced the dates of its first Sunrise periods and revealed that it’s not planning to run a landrush period for its first seven new gTLDs.
The company said today that it plans to take .bike, .clothing, .guru, .holdings, .plumbing, .singles and .ventures to Sunrise on November 26.
It’s opted for a 60-day Sunrise period, going to full general availability on January 29 next year. The company said:

Donuts will forego a traditional land-rush and move directly to general availability to all registrants on January 29, 2014. Donuts’ gTLDs are available for registration by anyone without restriction.

Donuts also said it has signed the following registrars to its channel: GoDaddy, 1&1 Internet, Web.com, Tucows, Host Europe Group, Key-Systems, CSC Digital Brand Services, MarkMonitor, NetNames, Gandi, united-domains, Melbourne IT and 101domain.
While the press release issued this afternoon suggests that the seven strings in question have already been delegated, I’m not seeing them in the DNS root zone yet.

dotShabaka Diary — Day 22, Sunrise has gone live!

In this penultimate entry in the dotShabaka Diary series, dotShabaka general manager Yasmin Omer officially announces the launch of the Sunrise period for شبكة., the first new gTLD to enter this phase.

Saturday 2 November 2013
It’s with great pleasure that I can finally say that we are the first new gTLD Registry Operator to commence its Sunrise Period! I’m truly excited about taking this TLD to the Arabic speaking world and revolutionising their Internet experience. So what’s happened since the last entry?
We received, and responded to, the TLD on-boarding Information Request from ICANN. New gTLD Registry Operators (and their Registry Services Providers) should be prepared to promptly provide ICANN with technical information regarding:

• The Registry Operator’s provision of the zone file access service;
• Bulk thin registration data access to ICANN;
• Data Escrow – Registry Reporting Interface;
• Implementation of the URS system;
• EPP extensions for the TLD; and
• EPP SLA Monitoring.

We requested the registration of our IDN Table on the IANA Repository of IDN Practices.
We obtained approval of our TLD Startup Information from ICANN. It’s certainly clear from our interactions with ICANN that the process of, and the requirements for, obtaining IBM’s acceptance of Sunrise dates and ICANN’s approval of TLD Startup Information, is yet to be defined. As a result, there was a delay in obtaining ICANN’s approval of our TLD Startup Information.
If you’re a new gTLD Registry Operator and you want your TLD Startup Information approved quickly, here are some tips:

• Once you have a fair idea of when your Sunrise will commence (could be before you’re delegated), reach out to IBM independently and request a number of potential dates. The team at IBM has been very responsive by promptly accepting our Sunrise dates.
• Include your eligibility policy for general registration with your TLD Startup Information. Yes, ICANN has explicitly stated that this is not a requirement they have imposed but it seems that they need it.
• Remember that ICANN’s review is a legal review. Ensure that your policies very clearly demonstrate your compliance with the relevant requirements. Use diagrams.
• Be prepared to respond to ICANN or IBM at any time – they’re both on opposite sides of the world to each other. ICANN thankfully ensure that the process is interactive, so be prepared to interact.

Good luck to everyone. We look forward to being joined by many more New gTLD Registry Operators in Sunrise.

Read previous and future diary entries here.

Donuts’ first gTLD sunrise slated for October 29

Donuts has reportedly become the first new gTLD registry to announce its first sunrise periods.
According to BrandShelter, part of the KeyDrive registrar group, nine of Donuts gTLDs will enter sunrise on October 29.
The nine are: .camera, .clothing, .equipment, .guru, .holdings, .lighting, .singles, .ventures and .voyage.
The sunrise periods will last 60 days, BrandShelter said.
I’m seeking confirmation and additional information from Donuts and will provide an update later.
UPDATE: Donuts’ Jon Nevett, in the comments, states that the dates are “estimates”.