Tonkin says better new gTLD trademark protections could come in the first round

Groups pushing for stronger new gTLD trademark protection mechanisms could get some of their wishes if they present a unified, coherent position to ICANN.
That’s according to Melbourne IT chief strategy officer and ICANN vice chairman Bruce Tonkin, speaking to DI today about the company’s trademarks summit in Washington DC last week.
Tonkin said that the event identified five rough areas of consensus about changes to rights protection mechanisms, at least two of which could be made before new gTLDs start to go live (which he expects to happen in the fourth quarter of 2013).
The Business Constituency, IP Constituency and so-called “brand summit” are now talking about their areas of common ground and are expected to continue the conversation at the ICANN meeting in Toronto next month.
One area of apparent agreement is an extension to the Trademark Claims service – which alerts trademark owners when somebody registers a domain matching their mark – beyond the 60 days mandated by the Applicant Guidebook.
Trademark interests want the service made permanent, because cybersquatters don’t suddenly stop registering infringing domain names 60 days after a TLD hits general availability.
ICANN has resisted this change, as CEO Fadi Chehade explained last week, largely because several companies already offer commercial trademark watch services.
Many registries and registrars are also against such a move due to the potential cost considerations.
However, Tonkin does not appear to be convinced by either argument.
“Even though a single gTLD might be for 60 days, gTLDs will launch at a range of different times over a number of years. Registries and registrars will have to support that process over a couple of years,” he said. “The cost to industry to extend it over 60 days isn’t that high.”
While supporting the extension may seem like an own goal for Melbourne IT – one of the companies already selling brand monitoring services – Tonkin is not too concerned about losing business.
The value of such services is in the added intelligence, such as monitoring the usage of infringing domains and recommending recovery strategies, he said, not just supplying lists of domains.
“Just that raw data isn’t especially beneficial,” he said.
There’s also no service on the market today that, like Trademark Claims, alerts registrants about third-party trademark rights at the point of registration, Tonkin noted.
Extending Trademark Claims could be seen as a matter of implementation, rather than policy, and may be one of the easiest goals for the trademark community to achieve.
“With enough community support, GNSO advice or ALAC advice could be presented to the board, which could make changes to the Applicant Guidebook,” Tonkin said.
“But I think the board would be reluctant to do that unless it saw very clear support from the community,” he added.
A faster, cheaper Uniform Rapid Suspension system is something that could also be made to happen via “implementation” tweaks, he indicated.
Trademark owners are looking for URS to be priced in the $300-$500 range, which WIPO and the National Arbitration Forum don’t think is feasible the way it is currently structured.
ICANN plans to issue a Request For Proposals soon, according to chief of strategy Kurt Pritz, in order to see if any other provider can do it more cheaply, however.
Another request from trademark holders, to do registrant identity checking — such as email authentication — could be handled via the ongoing Registrar Accreditation Agreement talks, Tonkin suggest.
But other emerging consensus areas would be more suited to a full GNSO Policy Development Process, he said.
The IP community wants the Trademark Clearinghouse to include not only exact matches of their trademarks, but also mark+keyword records (such as googlesearch.tld or paypalpayments.tld).
While there’s agreement in principle among these constituencies, there are still some differences in the details, however.
Some say that the keywords should be limited to words included in the trademark registration, while others believe that mark+keywords won in UDRP cases should be included.
If the former approach is used, domains such as paypal-support.tld, to borrow the example repeatedly used at last week’s summit, would probably not be protected.
Tonkin said that last week’s summit seemed to produce agreement that an algorithmic approach would be too complex, and would generate far to many false positives, to be effective.
A PDP would also be likely be required to find agreement on a mandatory “blocking” system, along the lines of what ICM Registry created for its Sunrise B, Tonkin said.
The problem with PDPs is that they take a long time, and it’s very unlikely that they could produce results in time for the first new gTLD launches.
Tonkin, however, suggested that moving forward with a PDP would create a strong incentive for new gTLD registries to create and adhere to voluntary best practices.
He pointed out that many applicants plan to bring in stronger rights protection mechanisms than ICANN requires already.
While Tonkin is vice chairman of ICANN’s board, he’s not involved in any new gTLD decisions or discussions due to his conflict of interest as a senior executive at a major registrar.

What’s wrong with Melbourne IT’s new anti-cybersquatting plan?

Genuine question.
Melbourne IT, the Aussie registrar with the increasingly vocal brand-protection focus, has come up with a new scheme for protecting super-famous brands after new gTLDs start to launch.
It draws on elements of the abandoned Globally Protected Marks List, ICM Registry’s Sunrise B policy, .CO Internet’s launch program, and various recent demands from the intellectual property community.
It’s called the paper Minimizing HARM (pdf), where HARM stands for High At-Risk Marks.
The title may set off grammatical alarm bells, but the rest reads like the least-unreasonable proposition for protecting big brands from cybersquatters that I’ve come across in a long time.
What I like about it is that it’s actually contemplating ways to prevent gaming from the outset, which is something the IP lobby hardly ever seems to do when it demands stronger rights protection mechanisms.
The idea calls for the forthcoming Trademark Clearinghouse to flag a narrow subset of the trademarks in its database as High At-Risk Marks that deserve special treatment.
Melbourne IT has organizations such as PayPal and the Red Cross in mind, but getting on the list would not be easy, even for famous brands.
First, companies would have to prove they’ve had trademark protection for the brand in three of ICANN’s five geographic regions for at least five years — already quite a high bar.
Implemented today, that provision could well rule out brands such as Twitter, which is an obvious high-risk cybersquatting target but might be too young to meet the criteria.
Dictionary words found in any of UN’s six official languages would also be banned, regardless of how famous the brand is. As the paper notes, that would be bad news for Apple and Gap.
Companies would also have to show that their marks are particularly at risk from phishing and cybersquatting.
Five successful UDRP complaints or suspensions of infringing domains by a “top ten registrar” would be enough to demonstrate this risk.
But that’s not all. The paper adds:

In addition to meeting the minimum criteria above, the High At-Risk Mark will need to obtain a minimum total points score of 100, where one point is awarded for each legal protection in a jurisdiction, and one point is awarded for each successful UDRP, court action, or domain registrar suspension undertaken in relation to the mark.

That appears to be setting the bar for inclusion high enough that an Olympic^TM pole-vaulter would have difficulty.
Once a brand made it onto the HARM list, it would receive special protections not available to other brands.
It would qualify for a “Once-off Registration Fee”, pretty much the same as ICM’s .xxx Sunrise B, where you pay once to block your exact-match domain and don’t get pinged for renewal fees every year.
Any third parties attempting to register an available exact-match would also have to have two forms of contact information verified by the gTLD registry before their names resolved.
The Trademark Claims service – which alerts mark owners when somebody registers one of their brands – would run forever for HARM-listed trademarks, rather than just for the first 60 days after a gTLD goes into general availability.
The always controversial Uniform Rapid Suspension service would also get tweaked for HARM trademarks.
Unless the alleged cybersquatter paid the equivalent of a URS filing fee (to be refunded if they prevail) their domains would get suspended 48 hours after the complaint was filed.
I’m quite fond of some of the ideas in this paper.
If ICANN is to ever adopt a specially protected marks list, which it has so far resisted, the idea of using favorable UDRP decisions as a benchmark for inclusion – which I believe Marque also suggested to ICANN back in February – is attractive to me.
Sure, there are plenty of dumb UDRP decisions, but the vast majority are sensible. Requiring a sufficiently high number of UDRP wins – perhaps with an extra requirement for different panelists in each case – seems like a neat way of weeding out trademark gamers.
The major problem with Melbourne IT’s paper appears to be that the system it proposes is just so complicated, and would protect so few companies, that I’m not sure it would be very easy to find consensus around it in the ICANN community.
I can imagine some registries and registrars might not be too enthusiastic when they figure out that some of the proposals could add cost and friction to the sales process.
Some IP owners might also sniff at the some of the ideas, just as soon as they realize their own trademarks wouldn’t meet the high criteria for inclusion on the HARM list.
Is Melbourne IT’s proposal just too damn sensible to pass through ICANN? Or is it riddled with obvious holes that I’ve somehow manged to miss?
Discuss.

ICANN trademark tech summit confirmed for Brussels in just two weeks

ICANN has confirmed that it will hold a technical summit to discuss the forthcoming Trademark Clearinghouse in Brussels less than two weeks from now.
The two-day meeting will be held at the offices of Deloitte, which along with IBM has been contracted as the TMCH provider, from August 20 to 21.
As you might expect by now from the new gTLD program, the summit’s organization wasn’t particularly timely or well-communicated, leaving parts of the community fuming.
The meeting was demanded by registries and registrars at the Prague meeting in June — they want a chance for their technical guys to get into the nitty-gritty of the TMCH implmentation.
But confirmation that it’s actually going ahead only arrived in the last couple of days, leaving companies in the US and Asia-Pacific regions facing steep last-minute air fares or the less-ideal option of remote participation at ungodly hours.
I get the impression that the TMCH providers, which have been less than communicative with the registrars and registries they will soon be servicing, might be as much to blame as ICANN this time.
The TMCH is a repository for trademark data that new gTLD registries will be obliged to use in their sunrise and immediate post-launch periods.
While the policy argument has ostensibly been settled, many technical details that still need to be ironed out could have huge implications.
For example, if the registration process flow requires live queries to the TMCH, downtime could be devastating for registries if, as is expected, several gTLDs wind up launching simultaneously.
And if the TMCH protocols prove to be too complex and costly for registrars to implement, many may not bother, potentially leading to a bunch of damp squib gTLD launches.
So it’s important stuff. DI may even be in attendance, hotel prices and/or Belgian vagrancy laws permitting.

ICANN hunts for anti-cybersquatting database provider

ICANN is in the process of looking for an operator for the Trademark Clearinghouse that will play a crucial brand protection role in new top-level domains.
An RFI published last week says that ICANN is looking for an exclusive contractor, but that it may consider splitting the deal between two companies — one to provide trademark validation services and the other to manage the database.
The TMCH is basically a big database of validated trademarks that registrars/registries will have to integrate with. It will be an integral part of any new gTLD launch.
Registries are obliged by ICANN rules to hold a sunrise period and a Trademark Claims service when they go live, both of which leverage the clearinghouse’s services.
Rather than having to submit proof of trademark rights to each gTLD operator, brand owners will only have to be validated by the TMCH in order to be pre-validated by all gTLDs.
I estimate that the contract is worth a few million dollars a year, minimum.
If the ongoing .xxx sunrise period is any guide, we might be looking at a database of some 30,000 to 40,000 trademark registrations in the first year of the TMCH.
One potential TMCH provider currently charges $100 for the initial first-year validation and a recurring $70 for re-validation in subsequent years.
ICANN has not ruled out the successful TMCH provider selling add-on services too.
But the organization also seems to be at pains to ensure that the clearinghouse is not seen as another gouge on the trademark industry.
The RFI contains questions such as: “How can it be assured that you will not maximize your registrations at the expense of security, quality, and technical and operational excellence?”
The two providers that immediately spring to mind as RFI respondents are IProta and the Clearinghouse for Intellectual Property (CHIP).
Belgium-based CHIP arguably has the most institutional experience. It’s handled sunrise periods for Somalia’s .so, the .asia IDN sunrise, a few pseudo-gTLD initiatives from the likes of CentralNIC (de.com, us.org, etc), and is signed up to do the same for .sx.
Its chief architect, Bart Lieben of the law firm Crowell & Moring, is also well-known in the industry for his work on several sunrise period policies.
IProta is a newer company, founded in London this year by Jonathan Robinson, an industry veteran best known for co-founding corporate domain registrar Group NBT.
The company is currently managing the .xxx sunrise period, which is believed to be the highest-volume launch since .eu in late 2005.
“IPRota is very well positioned on the basis of our recent and past experience so I think we almost certainly will go ahead and respond,” Robinson confirmed to DI.
Domain name registries and registrars could conceivably also apply, based on their experience handling high-volume transactional databases and their familiarity with the EPP protocol.
ICANN sees the potential for conflicts of interest — its RFI anticipates that any already-contracted party applying to run the TMCH will have to impose a Chinese wall to reduce that risk.
The RFI is open for responses until November 25. ICANN intends to name its selected provider February 14, a month after it starts accepting new gTLD applications.
This is another reason, in my view, why submitting an application in January may not be the smartest move in the world.