First-come, first-served sunrise periods on the cards

New gTLD registries will be able to offer first-come, first-served sunrise periods under a shake-up of the program’s rights protection mechanisms announced a week ago.
The new Trademark Clearinghouse Rights Protection Mechanism Requirements (pdf) contains a number of concessions to registries that may make gTLD launches easier but worry some trademark owners.
But it also contains a concession, I believe unprecedented, to the Intellectual Property Constituency that appears to give it a special veto over launch programs in geographic gTLDs.
Sunrise Periods
Under the old rules, which came about following the controversial “strawman” meetings late last year, new gTLD registries would have to give a 30-day notice period before launching their sunrise periods.
That was to give trademark owners enough time to consider their defensive registration strategies and to register their marks in the Trademark Clearinghouse.
The new rules give registries more flexibility. The 30-day notice requirement is still there, but only for registries that decide to offer a “Start Date” sunrise period as opposed to an “End Date” sunrise.
These are new concepts that require a bit of explanation.
An End Date sunrise is the kind of sunrise we’re already familiar with — the registry collects applications for domains from trademark owners but doesn’t actually allocate them until the end of the period. This may involve an auction when there are multiple applications for the same string.
A Start Date sunrise is a relative rarity — where registrations are actually processed and domains allocated while the sunrise period is still running. First-come, first-served, in other words.
This gives more flexibility to registries in their launch plans. They’ll be able to showcase mark-owning anchor tenants during sunrise, for example.
But it gives less certainty to trademark owners, which in many cases won’t be able to guarantee they’ll get the domain matching their mark no matter how wealthy they are.
Under the new ICANN rules, only registries operating a Start Date Sunrise need to give the 30 days notice. These sunrise periods have to run for a minimum of 30 days.
It seems that registries running End Date Sunrises will be able to give notice the same day they start accepting sunrise applications, but will have to run their sunrise period for at least 60 days.
Launch Programs
There was some criticism of the old RPM rules for potentially limiting registries’ ability to run things such as “Founders Programs”, getting anchor tenants through the door early to help promote their gTLDs.
The old rules said that the registry could allocate up to 100 names to itself, making them essentially exempt from sunrise periods, for promotional purposes.
New gTLD applicants had proposed that this should be expanded to enable these 100 names to go to third parties (ie, “founders”) but ICANN has not yet given this the green light.
In the new rules, the 100 names still must be allocated to the registry itself, but ICANN said it might relax this requirement in future. In the legalese of the Registry Agreement, it said:

Subject to further review and analysis regarding feasibility, implementation and protection of intellectual property rights, if a process for permitting registry operators to Allocate or register some or all of such one hundred (100) domain names (plus their IDN variants, where applicable) (each a “Launch Name”) to third parties prior to or during the Sunrise Period for the purposes of promoting the TLD (a “Qualified Launch Program”) is approved by ICANN, ICANN will prepare an addendum to these TMCH Requirements providing for the implementation of such Qualified Launch Program, which will be automatically incorporated into these TMCH Requirements without any further action of ICANN or any registry operator.

ICANN will also allow registries to request the ability to offer launch programs that diverge from the TMCH RPM rules.
If the launch program requested was detailed in the new gTLD application itself, it would carry a presumption of being approved, unless ICANN “reasonably determines that such requested registration program could contribute to consumer confusion or the infringement of intellectual property rights.”
If the registry had not detailed the program in its application, but ICANN had approved a similar program for another similar registry, there’d be the same presumption of approval.
Together, these provisions seems to give registries a great deal of flexibility in designing launch programs whilst making ICANN the guardian of intellectual property rights.
Geo gTLDs
For officially designated “geographic” gTLDs, it’s a bit more complicated.
Some geographic gTLD applicants had worried about their ability to reserve names for the governments backing their applications before the trademark owners wade in.
How can the .london registry make sure that the Metropolitan Police obtains police.london before the Sting-fronted pop group (or more likely its publisher) snaps up the name at sunrise, for example?
The new rules again punt a firm decision, instead giving the Intellectual Property Constituency, with ICANN oversight, the ability to come up with a list of names or categories of names that geographic registries will be allowed to reserve from their sunrise periods.
It’s very unusual — I can’t think of another example of this happening — for ICANN to hand decision-making power like this to a single constituency of the Generic Names Supporting Organization.
When GNSO Councillors also questioned the move, ICANN VP of DNS industry engagement Cyrus Namazi wrote:

In response to community input, the TMCH Requirements were revised to allow registry operators the ability to submit applications to conduct launch programs. In response to the large number of Geo TLDs who voiced similar concerns, the IPC publicly stated that it would be willing to work with Geo TLDs to develop mutually acceptable language for Geo TLD launch programs. We viewed this proposal as a way for community members to work collectively to propose to ICANN a possible solution for an issue specifically affecting intellectual property rights-holders and Geo TLDs. Any such proposal will be subject to ICANN’s review and ICANN has expressly stated that any such proposal may be subject to public comment in which other interested community members may participate.

While ICANN is calling the RPM rules “final”, it seems that in reality there’s still a lot of work to be done before new gTLD registries, geo or otherwise, will have a clear picture of what they can and cannot offer at launch.

Donuts’ trademark block list goes live, pricing revealed

Donuts’ Domain Protected Marks List, which gives trademark owners the ability to defensively block their marks across the company’s whole portfolio of gTLDs, has gone live.
The service goes above and beyond what new gTLD registries are obliged to offer by ICANN.
As a “block” service, in which names will not resolve, it’s reminiscent of the Sunrise B service offered by ICM Registry at .xxx’s launch, which was praised and cursed in equal measure.
But with DPML, trademark owners also have the ability to block “trademark+keyword” names, for example, so Pepsi could block “drinkpepsi” or “pepsisucks”.
It’s not a wildcard, however. Companies would have to pay for each trademark+keyword string they wanted blocking.
DPML covers all of the gTLDs that Donuts plans to launch, which could be as many as 300. It currently has 28 registry agreements with ICANN and 272 applications remaining in various stages of evaluation.
Trademark owners will only be able to sign up to DPML if their marks are registered with the Trademark Clearinghouse under the “use” standard required to participate in Sunrise periods.
Donuts is also excluding an unspecified number of strings it regards as “premium”, so the owners of marks matching those strings will be out of luck, it seems.
Blocks will be available for a minimum of five years an maximum of 10 years. After expiration, they can be renewed with minimum terms of one year.
The company has not disclose its wholesale pricing, but registrars we’ve found listing the service on their web sites so far (101domain and EnCirca) price it between $2,895 and $2,995 for a five-year registration.
It looks pricey, but it’s likely to be extraordinarily good value compared to the alternative of Sunrise periods.
If Donuts winds up with 200 gTLDs in its portfolio, a $3,000 price tag ($600 per year) works out to a defensive registration cost of $3 per domain per gTLD per year.
If it winds up with all 300, the price would be $2.
That’s in line (if we’re assuming non-budget pricing comparisons and registrars’ DPML markup), with Donuts co-founder Richard Tindal’s statement earlier this year: that DPML would be 5% to 10% the cost of a regular registration.
Tindal also spoke then about a way for rival trademark owners to “unblock” matching names, so Apple the record company could unblock a DPML on apple.music obtained by Apple the computer company, for example.
Donuts is encouraging trademark owners to participate before its first gTLDs goes live, which it expects to happen later this year.

New gTLD plans November 30 sunrise

I-Registry, which signed an ICANN Registry Agreement for the new gTLD .onl this week, plans to launch its Sunrise period on November 30, according to the company.
It’s the first date for a new gTLD Sunrise period I’ve come across to date, though it is of course an informal target rather than a firm commitment.
ICANN has signed contracts covering a few dozen gTLDs but as yet none have been delegated. As anyone who has been following dotShabaka’s diary on DI will know, there’s still a lot of uncertainty
.onl, which is short for “online”, is expected to be an open gTLD with no registration restrictions.
I-Registry plans to donate a portion of its profits to charity.

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.

Unrest remains despite new new gTLD contract

ICANN has proposed big changes to how it will handle premium domain names, dot-brands, mergers and acquisitions and mandatory fees in new gTLDs.
It published a new version of the proposed Registry Agreement for new gTLD operators this morning, saying that it is the product of months of “negotiations” with applicants and registries.
But some applicants and back-end providers disagree with this characterization, saying that while some registries helped ICANN with the text they have no authority to speak for all applicants.
The agreement was posted for 42 days of public comment this morning. Before it is approved by the ICANN board of directors, no new gTLD applicants will be able to sign contracts and begin to go live.
There are several major changes compared to the version in the Applicant Guidebook.
Premium domains not dead after all
In what could prove to be the most significant and controversial changes, ICANN has given registries the ability to run Founders Programs and premium name schemes without interference from trademark owners.
New text in the contract will let them self-register up to 100 names “necessary for the operation or the promotion of the TLD” and release those names to third parties if they want.
This appears to be a way around the fear that mandatory Sunrise periods could thwart registries’ plans to sign up anchor tenants to the gTLDs, a crucial launch marketing tactic for many.
The new RA also appears to give broad powers to the registry to allocate premium domain names at will.

Registry Operator may withhold from registration or allocate to Registry Operator names (including their IDN variants, where applicable) at All Levels in accordance with Section 2.6 of the Agreement. Such names may not be activated in the DNS, but may be released for registration to another person or entity at Registry Operator’s discretion.

There does not appear to be a numerical limit on how many domains can be reserved in this way.
Hypothetically, this might allow a registry to reserve the entire dictionary (or dictionaries) at launch, preventing holders of trademarks on generic terms grabbing the matching names during Sunrise.
The still-draft Trademark Clearinghouse rules will also play a part here, but from the RA it looks like registries have just been handed a massively flexible reservation tool.
If my initial interpretation is correct, I expect the trademark lobby will have strong view here.
Concessions for dot-brands
New text in the agreement makes it clearer that ICANN has no plans to redelegate dot-brand gTLDs to third parties after the Registry Agreement expires or is terminated.
This means, for example, that if L’Oreal decides to stop using .loreal at some point in future, ICANN very probably won’t give .loreal to a competitor. The new text is:

(i) ICANN will take into consideration any intellectual property rights of Registry Operator (as communicated to ICANN by Registry Operator) in determining whether to transition operation of the TLD to a successor registry operator

It’s probably not rigid enough language to satisfy some lawyers’ wishes, but I think it does enough to convey the spirit of ICANN’s intentions.
ICANN is of course mainly concerned that dead gTLDs don’t leave registrants with dead domain names, but if there are no registrants I can’t imagine why it would want to redelegate.
Lower fees for registries
Newly added text in the RA specifies that registries must pay ICANN a $5,000 one-off fee (per TLD) to use the new Trademark Clearinghouse, plus with $0.25 per domain that uses its services.
Domains registered under Sunrise periods or which trigger Trademark Claims alerts would incur this one-time fee, which appears to have been reduced from the $0.30 previously discussed.
These fees will actually be passed on to the Trademark Clearinghouse operators (Deloitte and IBM), for which ICANN has agreed to manage billing in order to keep costs down.
In addition, the RA now clarifies that the registry operator’s regular fixed fees to ICANN of $6,250 a quarter only kick in from the date that the gTLD hits the DNS root, not the date of contract signing. That could save registries up to a year’s worth of fees, if they’re late to delegation.
M&A approvals
There are also changes to the way ICANN plans to approve of mergers and acquisitions among registries.
First, it will be much easier for the contract to be passed around within a corporate holding group. The RA now states:

Registry Operator may assign this Agreement without the consent of ICANN directly to a wholly-owned subsidiary of Registry Operator, or, if Registry Operator is a wholly-owned subsidiary, to its direct parent or to another wholly-owned subsidiary of its direct parent, upon such subsidiary’s or parent’s, as applicable, express assumption of the terms and conditions of this Agreement

This change would seem to enable portfolio applicants that have applied for many gTLDs each under separate shell company names (Donuts, for example) to consolidate their contracts under a single parent.
What I don’t think it does is allow for contention set resolution based on joint ventures (which are obviously not “wholly owned”), such as what Uniregistry and Top Level Domain Holdings announced they had agreed to yesterday.
The new RA also states that ICANN must approve subcontracting deals the registry inks for any of the five “critical functions” (EPP, DNS, DNSSEC, Whois and escrow).
Unilateral amendments are gone
The controversial “unilateral right to amend” that ICANN wanted to grant itself — essentially an emergency power to change the contract almost at whim and over the objections of registries — is gone.
It’s been replaced with a convoluted series of procures almost identical to those found in the proposed final version of the 2013 Registrar Accreditation Agreement currently open for comment.
Registries would get the ability to punt the changes to a GNSO Policy Development Process, submit alternative amendments, take ICANN to arbitration or request exemptions, under the new rules.
While the new provisions still give ICANN the ability to force through unpopular changes under certain circumstances, a lot more engagement by registries is envisaged so “unilateral” is probably not a good word to use any more.
So is the deal final or not?
ICANN said in a blog post: “The proposed agreement is the result of several months of negotiations, formal community feedback, and meetings with various stakeholders and communities.”
It added:

We have come a long way since February 2013 when we posted a proposed Revised New gTLD Registry Agreement for public comment. A new and highly spirited sense of mutual trust has catapulted us into a fresh atmosphere of collaboration, which in turn has led to a consistently more productive environment. The spirit of teamwork, productive dialogue and partnership that has underpinned this negotiation process is tremendously heartwarming, as it has allowed us to bring to fruition a robust contractual framework for the New gTLD Program.

But some are worried that ICANN seems to be portraying the RA as equivalent to the Registrar Accreditation Agreement, which was subject to 18 months of talks with a negotiating team representing registrars.
The registries’ Registry Agreement Negotiating Team (RA-NT), on the other hand, was formed less than three weeks ago during ICANN’s meeting in Beijing, and did not have the authority to speak for all applicants.
The RA-NT said in a statement published by ICANN:

The RA-NT agreed to review the new gTLD Registry Agreement with ICANN staff in an effort to minimize some of the more controversial aspects of the Agreement for applicants as a whole. While participants reflected a variety of perspectives, the team did not “represent” or have any authority to “speak for” new gTLD applicants generally, or any group of applicants.

ARI Registry Services CEO Adrian Kinderis told DI:

My fears (and frustrations) come from the fact that ICANN staff have made it sound like they have reached the same point in the process. “It is done”. It most certainly isn’t “done”. They need to understand that the negotiation is actually still very much active and all of the community should feel like their opinions and feedback will be considered in the development of the “final draft”.

The draft RA is now open for public comment until June 11.
That would give ICANN about a month to synthesize all the comments, make any changes, and put the deal to its board of directors for approval during the meeting in Durban, South Africa, this July.

Will the Trademark Clearinghouse kill off premium domains?

Rules proposed for the new Trademark Clearinghouse threaten to cut off some of new gTLD registries major sources of early revenue, according to registry providers.
Premium domain sales and founders programs are among the now industry-standard practices that would be essentially banned under the current draft of the TMCH rules, they say.
The potential problems emerged in a draft TMCH Requirements document circulated to registries 10 days ago and vigorously discussed during a session at the ICANN meeting in Beijing last week.
The document lists all of the things that new gTLD registries must and must not, and may and may not, do during the mandatory Sunrise and Trademark Claims rights protection launch periods.
One of the bits that has left registries confused is this:

2.2.4 Registry Operator MUST NOT allow a domain name to be reserved or registered to a registrant who is not a Sunrise-Eligible Rights Holder prior to the conclusion of the Sunrise Period.

What this means is that trademark owners get first dibs on pretty much every possible string in every gTLD.
“Trademark owners trump everything,” Neustar business affairs veep Jeff Neuman said during the Beijing meeting. “Trademark owners trump every possible use of every possible name.”
It would mean, for example, that if a new gTLD wanted to allocate some names to high-profile anchor tenants during a “founders program”, it would not be able to do so until after the Sunrise was over.
Let’s say the successful applicant for .shop wants to reserve the names of hundreds of shop types (book.shop, food.shop, etc) as premium names, to allocate during its founders program or auction later.
Because the .shop Sunrise would have to happen first, the companies that the own rights to, for example, “wallpaper” or “butcher” (both real US trademarks) would have first rights to wallpaper.shop and butcher.shop, even if they only planned to defensively park the domains.
Because there’s likely to be some degree of gaming (there’s a proof-of-use requirement, but the passing threshold is pretty low), registries’ premium lists could be decimated during Sunrise periods.
If ICANN keeps its TMCH Requirements as they are currently written, new gTLD registries stand to lose a lot of early revenue, not to mention control over launch marketing initiatives.
However, if ICANN were to remove this rule, it might give unscrupulous registries the ability to circumvent the mandatory Sunrise period entirely by placing millions of strings on their premium lists.
“Registries should have discretion to schedule their start-up phases according to their business plans so long as rights protection processes are honored, so that’s the balancing we’ve tried to do,” ICANN operations & policy research director Karen Lenz said during Beijing.
“It’s trying to allow registries to create requirements that suit their purposes, without being able to hollow out the rights protection intention,” she said.
The requirements document is still just a draft, and discussions are ongoing, she added.
“It’s certainly not our intention to restrict business models,” Lenz said.
Registries will get some flexibility to restrict Sunrise to certain registrants. For example, they’ll be able to disqualify those without an affiliation to the industry to which the gTLD is targeted.
What they won’t be able to do is create arbitrary rules unrelated to the purpose of the TLD, or apply one set of rules during Sunrise and another during the first 90 days of general availability.
The standard Registry Agreement that ICANN expects all new gTLDs to sign up to does enable registries to reserve or block as many names as they want, but only if those names are not registered or used.
It seemed to be designed to do things like blocing ‘sensitive’ strings, rather like when ICM Registry reserved thousands of names of celebrities and cultural terms in .xxx.
The Requirements document, on the other hand, seems to allow these names being released at a later date. If they were released, the document states, they’d have to be subject to Trademark Claims notices, but not Sunrise rules.
While that may be a workaround to the premium domains problem, it doesn’t appear to help registries that want to get founders programs done before general availability.
It seems that there are still many outstanding issues surrounding the Trademark Clearinghouse — many more than discussed in this post — that will need to be settled before new gTLDs are going to feel comfortable launching.

Trademark Clearinghouse to get tested out on three existing TLDs

Three already-live TLDs are going to use the Trademark Clearinghouse to handle sunrise periods, possibly before the first new gTLDs launch.
BRS Media is set to use the TMCH, albeit indirectly, in its launch of third-level domains under .radio.am and .radio.fm, which it plans to launch soon as a budget alternative to .am and .fm.
The company has hired TM.Biz, the trademark validation firm affiliated with EnCirca, to handle its sunrise, and TM.biz says it will allow brand owners to leverage Clearinghouse records.
Trademark owners will be able to submit raw trademarks for validation as in previous sunrises, but TM.Biz will also allow them to submit Signed Mark Data (SMD) files, if they have them, instead.
Encrypted SMD files are created by the TMCH after validation, so the trademarks and the strings they represent are pre-validated.
There’ll presumably be some cost benefit of using SMD files, but pricing has not yet been disclosed.
Separately, Employ Media said today that it’s getting ready to enter the final stage of its .jobs liberalization, opening up the gTLD to essentially any string and essentially any registrant.
The company will also use the TMCH for its sunrise period, according to an ICANN press release, though the full details and timing have not yet been announced.
Unusually, .jobs is a gTLD that hasn’t already had a sunrise — its original business model only allowed vetted company-name registrations.
The TMCH is already accepting submissions from trademark owners, but it’s not yet integrated with registries and registrars.

NameJet and Afternic sign another gTLD launch

NameJet and Afternic will provide launch auctions and premium name distribution for the .build gTLD, should it be approved, the two companies have announced.
The deal was inked with applicant Plan Bee LLC, which is affiliated with Minardos Group, a construction company.
The two companies will handle auctions under the sunrise and landrush phases, according to a press release.
It’s the second such deal to be announced by the Afternic/Namejet partnership to date, after WhatBox’s .menu. The companies are also working with Directi’s .pw registry.
Plan Bee has also applied for .expert and .construction, but these are both contested so there’s less certainty that they’ll end up approved.
The applicant reckons it will be able to bring .build to market in the fourth quarter of this year.
With a prioritization number of 1,049 in ICANN’s queue, this may prove optimistic, depending on how the remaining portions of the program — such as predelegation testing and contracting — pan out.

ICANN to pay $2 million to keep Trademark Clearinghouse “free” for registrars

ICANN is putting its money where its mouth is when it comes to helping new gTLDs be successful, committing $2 million to keep Trademark Clearinghouse access “free” for registrars.
While TMCH pricing for trademark owners is now well-publicized, ICANN COO Akram Attalah last night revealed some of the fees for new gTLD registries and registrars.
Registries will have to pay a one-time fee of $5,000 per TLD to access the TMCH, he said.
That was reduced from $10,000 during talks with TMCH back-end provider IBM after ICANN promised to handle billing and administration, he said.
There’s also going to be a $0.30 fee for each domain that matches a TMCH record registered during Sunrise and Trademark Claims periods, he added. The specifics on this fee were a little fuzzy.
But registrars won’t have to pay a penny, it seems. Attalah said that ICANN will pay IBM $2 million to make sure the Clearinghouse is accessible and free for registrars.
“ICANN will pay $400,000 per year for five years to keep the TMCH up and running and that provides free access to all registrars,” he said on last night’s new gTLDs update webinar.
It won’t be completely free for registrars, of course.
Registrars will have to do some implementation work to support the new Trademark Claims and Sunrise specs, but the absence of fees gives them one less excuse to avoid the two rights protection periods.

Directi sells 4,000 .pw domains in first half hour

PW Registry, the Direci unit looking after the .pw registry, said it received orders for 4,000 domain names in its first 30 minutes of general availability today.
Disappointing? It’s certainly not up to the standard of, say, .co, which was well into six figures in the same period when it launched a few years ago.
But .pw’s ambitions weren’t quite as lofty as .co’s. It’s the ccTLD for Palau, and its chosen meaning of “professional web” isn’t nearly as intuitive or valuable as .co’s “company”.
Still, it’s early days, and Directi says it saw a reasonable amount of domainer action during its landrush phase.
Landrush and sunrise period numbers have not been disclosed, but the company said that Apple, Pfizer, Volkswagen and Nokia obtained their trademarks during sunrise.
PW Registry has 110 registrars, including many of the big ones, selling its names.