Trademark lobby makes final new gTLD demands

With ICANN’s latest and potentially last call for comment on its new top-level domains program just hours away from closing, the arguments are shaping up along familiar lines.
Trademark protection is unsurprisingly still center stage, with loud calls for the Applicant Guidebook’s rights protection mechanisms to be amended more favorably to brand owners
Meanwhile, many of those strongly in favor of the new gTLD program launching soon have submitted more subdued, concise comments, merely urging ICANN to get a move on.
While there are still some fringe opinions, many within the intellectual property community are on the same page when it comes to rights protection mechanisms.
URS
The Uniform Rapid Suspension policy, which enables trademark holders to relatively quickly shut down obvious cases of cybersquatting, comes in for particular attention.
In the latest draft of the URS, as well as its sister policy, the Trademark Clearinghouse, brand owners have to present “proof of use” for the trademarks which they want to enforce.
The International Trademark Association, the Intellectual Property Constituency and others want this provision eliminated, saying it is inconsistent with many national trademark laws.
The also want the burden of proof lowered from the “clear and convincing evidence” standard, and want to expand the “loser pays” model, to provide an economic disincentive to cybersquatting.
In the latest version of the Applicant Guidebook, ICANN introduced a system whereby a cybersquatter has to pay the cost of a URS they lose, but only if the case comprises over 25 domains.
INTA, the IPC and others want this reduced to something like five domains, on the grounds that 25 is too high a bar and may actually encourage larger-scale squatting.
IP Claims
They also want the Clearinghouse’s IP Claims service, which serves a warning to registrants when they try to register potentially infringing domains, expanded beyond exact-match strings.
Currently, you’ll receive a warning about possible infringement if you try to register lego.tld or foxnews.tld, but not if you try to register legostarwars.tld or foxnewssucks.tld.
Many commenters want this changed to also include brand+keyword domains (fairly easy to implement in software, I imagine), or even typos (not nearly so easy).
This makes sense if you assume that cybersquatting patterns in new TLDs mirror those in .com, where brand+keyword squatting comprise the majority of UDRP cases.
But if you look at the about 100 UDRP cases to be filed so far in .co, it seems that brand-only cybersquatting is clearly the order of the day.
Depending on how this was implemented, it could also create a “chilling effect” whereby IP Claims notices are sent to legitimate registrants.
It seems likely that with a brand+keyword approach, if someone tried to register legourmetchef.tld, they could wind up with a notice that the domain infringes the Lego trademark.
The trademark lobby also wants this IP Claims service extended beyond the first 60 days of a new TLD’s life, on the grounds that the cybersquatting risk does not disappear after a TLD launches.
According to submissions from existing TLD registries and potential applicants, this could add to the costs of running a TLD, increasing prices for registrants.
GAC
Most of these demands are not new. But in many cases, the IP lobby now has the support of the ICANN Governmental Advisory Committee.
The GAC and ICANN are due to meet by teleconference this Friday, ostensibly for their “final” consultation before ICANN approves the Guidebook a little over a month from now.
But with the US and Europe now strategically aligned, it seems likely that ICANN will find itself under more pressure than ever before to concede to the demands of trademark holders.

dotMusic and ICANN execs form TLD consultancy

Just what the world needs, another top-level domain consultancy.
Constantine Roussos, best known his campaign for .music, has teamed up with ICANN veteran Tina Dam to launch MyTLD.com, promising to help applicants with their TLD bids.
Dam was senior director of internationalized domain names at ICANN, spearheading the IDN ccTLD Fast Track program, until she quit last December.
Those are good credentials, especially for supporting IDN TLD applicants.
Dam is currently critical of how ICANN’s Applicant Guidebook treats IDN TLDs, saying that the process is too expensive and does not effectively handle transliterations and translations.
Roussos is an entrepreneur, owner of music.us/.biz/.co, who has been pushing his own self-financed .music bid for the last couple of years.
A running joke at the recent .nxt conference was that he was once an “outsider” but has since been firmly institutionalized by the ICANN environment. He’s also critical of aspects of the Guidebook.
MyTLD.com is the latest of a series of companies to form over the last few months to provide consulting to potential TLD applicants.
Recently, domain investors Mike Berkens and Monte Cahn founded Right Of The Dot, which specializes in marketing and premium domain strategy.
And Alexa Raad, former CEO of the .org registry PIR, is currently plugging her new consulting play, Architelos.

ICANN’s new TLD rulebook is out

ICANN posted its proposed final Applicant Guidebook for new top-level domains a couple hours ago.
The document is now subject to public comment until noon UTC, December 10, just before the ICANN board convenes in Cartagena.
As I speculated earlier in the week, ICANN has reduced the length of the feedback window from 30 days in order to hit its launch deadlines.
Here’s a review of some changes, based on a quick scan of the 360-page redlined document (pdf).
One change that will certainly be of interest of applicants:

If the volume of applications received significantly exceeds 500, applications will be processed in batches and the 5-month timeline will not be met. The first batch will be limited to 500 applications and subsequent batches will be limited to 400 to account for capacity limitations due to managing extended evaluation, string contention, and other processes associated with each previous batch.
A process external to the application submission process will be employed to establish evaluation priority. This process will be based on an online ticketing system or other objective criteria.

Does this mean “get your applications in early” is a winning strategy? I’ll try to find out.
One of the most sensitive outstanding issues, the right of governments to object to TLDs on “morality and public order” grounds, is now called a “Limited Public Interest Objection”:

Governments may provide a notification using the public comment forum to communicate concerns relating to national laws. However, a government’s notification of concern will not in itself be deemed to be a formal objection. A notification by a government does not constitute grounds for rejection of a gTLD application.

The AGB now specifies that such objections must be based on principles of international law, as codified in various international agreements. The string, and the proposed usage, will be subject to these objections.
The section on applicant background checks has also been overhauled. It now makes reference to child sex offenses, and focuses more on intellectual property infringements, but eschews references to terrorism.
However, if any group considered Evil by the United States applies for a TLD, they may be out of luck. The new AGB points out that ICANN has to abide by sanctions imposed by the US Office of Foreign Assets Control.
There are a couple of little oddities in the AGB too. For example, strings relating to the contested geographic term “Macedonia” are singled out as verboten.
Intergovernmental organizations that meet the criteria to register a .int are now also granted special objection privileges.
Contested geographical terms will no longer be subject to the auction process — applicants will have to fight it out between themselves.
The vertical integration issue, resolved by the ICANN board last week, also makes an appearance. Registrars are now able to apply for new TLDs, but ICANN reserves the right to refer such applications to governmental competition authorities.
More later.