GAC gives ICANN a way out on IGO acronyms

The ICANN Governmental Advisory Committee has reiterated its call for the protection of intergovernmental organization acronyms in the new gTLD program, but seems to have given ICANN a way to avoid a nasty confrontation.
In its official Communique from the just-concluded meeting in Buenos Aires, Argentina, the GAC provided the following advice concerning IGOs:

The GAC, together with IGOs, remains committed to continuing the dialogue with NGPC [ICANN’s New gTLD Program Committee] on finalising the modalities for permanent protection of IGO acronyms at the second level, by putting in place a mechanism which would:
1. provide for a permanent system of notifications to both the potential registrant and the relevant IGO as to a possible conflict if a potential registrant seeks to register a domain name matching the acronym of that IGO;
2. allow the IGO a timely opportunity to effectively prevent potential misuse and confusion;
3. allow for a final and binding determination by an independent third party in order to resolve any disagreement between an IGO and a potential registrant; and
4. be at no cost or of a nominal cost only to the IGO.

This seems to be a departure from the GAC’s its Durban Communique, in which it had demanded “preventative” measures be put in place to stop third parties registering IGO acronyms.
As we reported earlier this week, the GNSO Council unanimously approved a resolution telling ICANN to remove IGO acronyms from existing block-lists, something the GAC had been demanding.
Now, it seems that ICANN has been given a relatively simple and less confrontational way of accepting the GAC’s watered-down advice.
The Trademark Claims alerts service and Uniform Rapid Suspension dispute resolution process combined would, by my reading, tick all four of the GAC’s boxes.
IGO acronyms do not currently qualify for either, because they’re not trademarks, but if ICANN can figure out a way to allow these strings into the Trademark Clearinghouse, it can probably give the GAC what it wants.
In my view, such a move wouldn’t trample on anyone else’s rights, it would not represent the kind of overkill the GAC originally wanted, nor would it be in conflict with the GNSO’s consensus resolution (which seems to envisage a future in which these acronyms get TMCH protection).
ICANN may have avoided the sticky situation I pondered earlier this week.

Almost 15,000 trademarks registered in TMCH

The new gTLD program’s Trademark Clearinghouse has almost 15,000 trademarks registered, according to a spokesperson.
We’re told today that there’s an average of about two labels for each registered mark, and that about half of all the marks have been registered for multiple years.
The TMCH offers registrations for one, three or five years.
Trademarks in non-Latin scripts currently account for just 3% (so roughly 450) of the registrations, which may be a cause for concern given that IDNs gTLDs will be many of the first to launch Sunrise periods.
The TMCH spokesperson added that registrations of “previously abused labels”, under what we used to call the Trademark+50 policy, are currently “low” because the service was only recently launched.

Trademark Clearinghouse: early bird pricing ends tomorrow

Trademark owners take note: you have less than 24 hours to get your marks registered in the Trademark Clearinghouse if you want to take advantage of early bird discounted pricing.
A TMCH spokesperson told DI today that the early bird offer ends at 1200 UTC November 5. Its “agents” (registrars) were notified a week ago and today were given a final 24-hour grace period, she said.
This may come as something of a surprise to mark owners who haven’t been paying attention.
When the Clearinghouse went live in March, the TMCH said that the early registration offer would end when the first Sunrise period for the first new gTLD went live.
At the time, ICANN rules stated that registries would have to give 30 days notice before launching a Sunrise.
But these rules recently changed, giving registries the ability to launch immediately as long as the Sunrise runs for at least 60 days rather than the original 30.
And with dotShabaka Registry, one of the first four new gTLDs to go live, opting for the 60-day Sunrise, that means early bird pricing is ending sooner than might have been expected.
Rather than direct discounts, the early bird offer instead awards extra “status points” that can be accumulated to secure lower bulk registration prices.
Trademark owners would have to submit quite a lot of trademarks, or use an agent that is passing the discounts on to its customers, in order to qualify for the lower prices.

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.

Trademark+50 costs $75 to $200 a pop

The Trademark Clearinghouse has started accepting submissions under the new “Trademark+50” service, with prices starting at about $76.
It’s now called the Abused DNL (for Domain Name Label) service.
It allows trademark owners to add up to 50 additional strings — which must have been cybersquatted according to a court or a UDRP panel — to each record they have in the TMCH.
To validate labels found in court decisions, it will cost mark owners $200 and then $1 per abused string. For UDRP cases, the validation fee is $75.
If you’re on the “advanced” (read: bulk) fee structure, the prices drop to $150 and $50 respectively.
To add a UDRP case covering 25 domains to the Abused DNL would cost $100 in the first year and $25 a year thereafter, for example.
Adding a trademark to the TMCH costs between $95 and $150 a year, depending on your fee structure.

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.

Registrars given access to Trademark Clearinghouse

Accredited registrars on older contracts can now get access to the Trademark Clearinghouse for testing purposes, ICANN announced last night.
Previously, ICANN was only handing out credentials to registrars on the new 2013 Registrar Accreditation Agreement, but many registrars complained that this didn’t give them time to evaluate the TMCH and the RAA at the same time.
ICANN had originally argued that the restriction made sense because the TMCH is used only for new gTLDs, and registrars must have signed the 2013 RAA to sell new gTLD domains.
But feedback from registrars has helped it change its mind. ICANN said:

all ICANN accredited Registrars, not just those that have signed the 2013 Registrar Accreditation Agreement (RAA), will be able to request registration tokens and start testing their systems with the Trademark Clearinghouse database before it must begin its authenticating and verifying services for trademark data.

Instruction for signing up for TMCH testing can be found here.

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.

Trademark+50 coming in October

The controversial “Trademark+50” anti-cybersquatting service for new gTLDs is set to go live October 11 or thereabouts, ICANN announced last night.
Trademark+50 is the name given to a function of the Trademark Clearinghouse that enables trademark owners to obtain protection for strings that they’ve previously won at UDRP proceedings.
The service will be limited to 50 strings per trademark, with the total number of strings only limited by the total number of trademarks submitted.
ICANN said:

Rights holders may submit these domain name labels for association with existing Clearinghouse records as early as 11 October 2013. Once previously-abused labels have been verified, they will be integrated into the Trademark Claims service. ICANN expects this to occur by 18 October 2013, ahead of the earliest anticipated new gTLD Claims period.

In July at ICANN’s meeting in Durban, an IBM rep said that a Trademark+50 launch would be “difficult to reach before the middle of September”, which seems to have proven correct.
Pricing for Trademark+50, which we assume will entail a great degree of manual validation, does not appear to have been published yet.
Strings added to the IBM-run TMCH database under Trademark+50 will be eligible for Trademark Claims notifications, but not Sunrise periods, when new gTLDs launch.
Critics have repeatedly raised Trademark+50 as an example of ICANN going outside of its usual community-based policy-development processes in order to push through an unpopular mechanism.
Non-commercial users have criticized the system because it assumes that all strings won at UDRP are inherently cybersquatty, whereas the UDRP itself also requires the domain to have been used in bad faith.
Trademark owners have been able to submit their marks to the TMCH for several months, but Trademark+50 was a later addition to the new gTLD program’s rights protection mechanisms.

Teething troubles for TMCH testing

With the first new gTLD delegation likely just a matter of weeks away, registries and registrars are reporting problems getting access to the Trademark Clearinghouse for testing purposes.
ICANN launched an OT&E (operational test and evaluation environment) for companies to test their systems against the IBM-run TMCH back-end last week, but few have so far managed to get in.
Some registrars have been denied access because they have not yet signed the 2013 Registrar Accreditation Agreement.
While that’s a prerequisite for selling new gTLD domains, some say it should not also be a barrier to testing their TMCH implementation before they decide to sign on the dotted line.
At least one registrar that has actually signed the 2013 RAA also says it has been denied access.
Meanwhile, several back-end applicants and back-end registry providers have reported that they too have been told they can’t access the OT&E until they’ve signed the 2013 RAA.
Registries are of course not obliged to sign any RAA in order to act as registries.
Others say they’ve received the credentials needed to access the OT&E but that they don’t work.
ICANN has blamed a mix-up in its workflow for the registries getting blocked, something it expects to get fixed quickly. It’s also looking into the complaints from registrars.
The TMCH is the database that registries and registrars will use to validate trademarks during sunrise periods, and to check for possible cybersquatting during the first few months of launch.