ICANN Opens Comment Period To Hear About Defensive New gTLD Extensions

ICANN has just opened a comment period to hear from people and companies concerned about defensive applications for new gTLD’s.

“”Public comment is requested as to why there may be a perceived need for defensive new gTLD applications and steps that could be considered to help alleviate this concern.””

The comment period closes  on February 27th.

In announcing the opening of the comment period ICANN said:

“”The New gTLD Program was designed to increase competition and choice by introducing new gTLDs into the Internet’s addressing system. The Application Submission period for gTLD applications opened on 12 January 2012 and will close on 12 April 2012.

“”During the development of the New gTLD Program, some trademark holders indicated that they were concerned about the perceived need for defensive applications for top-level names, i.e., names applied for as registries in the new gTLD program.””

“”This concern prompted discussion and consideration of several mechanisms during the development of the policy for the introduction of new gTLDs. Community discussions during the implementation of the program yielded a suite of additional trademark protections for new gTLDs. These are the rights protection mechanisms that were developed over a period of years by a set of intellectual property experts convened by ICANN and later enhanced by governments that participate through ICANN’s Governmental Advisory Committee.””

“””Despite the adoption of these enhanced protections, some stakeholders recently indicated that they are concerned about the perceived need for defensive applications at the top level and encouraged ICANN to ensure that the program was launched in a manner that protects intellectual property rights.””

“”This announcement briefly reviews the existing protections against infringement of rights at the top level.””

“”Public comment is requested as to why there may be a perceived need for defensive new gTLD applications and steps that could be considered to help alleviate this concern.””

Top-Level Protection: The Objection and Dispute Resolution Process

“”The New gTLD Program implements consensus policy advice that new gTLDs must not infringe the existing legal rights of others. Based on input received during public consultations and extensive research, a formal objection and dispute resolution process was developed for the protection of certain legal rights. This process allows a party to challenge a gTLD application on the grounds that it infringes on the party’s established legal rights (e.g., trademark rights). The program has established standing requirements and other criteria that must be met in order to prevail in a Legal Rights Objection and has designated the Arbitration and Mediation Center of the World Intellectual Property Organization (WIPO) as the dispute resolution service provider.””

“”In addition to the objection process, there is also a formal process for governments, through ICANN’s Governmental Advisory Committee, to provide advice to the ICANN Board in relation to the approval of an application. Through this process, Governments can directly advise the ICANN Board to reject an application for a top-level domain.””

“”Details on all objection and dispute resolution processes can be found in Module 3 of the gTLD Applicant Guidebook.””

“”The objection and despite resolution mechanisms:””

  • ensure that objective standards and processes are in place,
  • provide parties with a cost-effective alternative to initiating action in court (objections are resolved on a loser-pays basis),
  • ensure that subject-matter experts make any determinations on the disputes after considering all of the evidence,
  • provide sufficient time (seven months) for entities to consider whether to lodge an objection,
  • ensure that parties with legitimate interests have access to obtaining domain names, and
  • create independence so that the applicants, the community and ICANN have the benefit of neutral expert opinion.”””

“”To be effective, the availability of this mechanism must be adequately and extensively communicated. The objection filing period will last for approximately seven months and the New gTLD Communications plan provides for significant, ongoing outreach to raise awareness of this process.””

Additional Considerations

The objection process is designed to protect important interests and rights, such as trademark rights. This process is part of a suite of protections that operate for top and second-level names. Nevertheless, there are reports that parties believe that they will need to submit defensive gTLD applications to protect their trademarks, regardless of whether they are interested in using or developing a gTLD.

“”ICANN seeks public comment on the sources of this perception and how it can be addressed. In addition, ICANN wishes to ensure that trademark holders are aware of the options and mechanisms available to them under the new gTLD program, and seeks feedback on ways to improve its outreach efforts to those affected””

 

Comments

  1. John Berryhill says

    Of all the stupid things I hear about the new TLD program, the notion that there are going to be people plunking down 185k to cybersquat at the TLD level is, bar none, the champion of dumb.

  2. Dumb says

    “perceived need”

    An interesting choice of words.

    That perception would seem to be the major selling point for domainnames in these new gTLD’s, if not for the option to run new gTLD registries themsleves. And hence it is the main argument of gTLD consultants, backend providers, etc. on why businesses should care about new gTLD’s.

    The whole gTLD campaign is based on fear of not acting.

    There is nothing to show that owning a registry is a desirable business based on any purpose other than trying to sell registrations. And that inevitably involves selling to speculators and squatters. This is what history has shown. Who purchases the most registrations? Not businesses seeking new opportunities. Domainers.

    And that brings us back to protection.

    Why should we believe it will be different going forward?

    The idea that businesses are going pay ICANN to be in ICANN’s root zone (when theoretically any root zone would do) to run an ICANN-approved registry and then treat their new registry like it’s a sTLD such as dot travel, a dot int, or any of the other noncommercial ones, and not try to sell as many registrations as possible (to fools) like a dot co, or any of the other commercially repurposed ccTLD’s, is hard for me to believe.

    Now if they run a registry based on a given TLD string just to keep their competitor from doing so, then it is easier to understand. But then that is defensive, it’s for “protection” purposes. So again we’re back to protection.

    Is this defensive strategy only a “perceived” need?
    If there is no real need to participate in proposed new gTLD’s for protection purposes, then that kills the whole gTLD scam. It kills any demand by businesses that have trademarks. And we’re left with the same folks who want to sell registrations to domain squatters who have been begging for new TLD’s, and hence thousands of “new” names to control the same old generics and squat the same old trademarks, for a decade.

    And so we’re back to the need for protection. This is not a mere perception. It’s a reality ICANN knows very well.

    Maybe ICANN just thinks that after watching twenty years of domain speculation and profit by private parties, “We can’t beat ‘em so might as well join ‘em.”

    Sure they’ll let you have an entry in their root zone file. Maybe. For $185K they’ll give you an answer. They approved dot xxx for less, but they still want you to believe their standards are very high. Then the ICANN board chairman immediately after voting approval of this new gTLD scam leaves and goes straight to work for a new gTLD speculator. It’s very hard to take these people seriously.

    If there is a demand for new gTLD registries aside from one articificially created based on fear tactics, and the purpose of “protection”, then we know where that demand is coming from. It’s coming from the same type of folks that wanted them ten years ago. It’s coming from companies like the one former ICANN board members go to work for. They want to sell registrations.

    And they will use fear tactics to sell them. So we’re back to preotection again. Maybe thy won’t have the fear factor of dot xxx behind them but they will still use fear. “Protect your brand” will take precedence over “promote your brand”.

    The “perceived need” for defensive registrations is their main selling point.

    If this gTLD program is allowed to carry on there will be massive squatting, left of the penultimate dot, enabled by dumping all these “new” names into the pool.

    It’s simply more “domaining”, which dates back to the early 90′s before we called it that. Nothing new this time, except that ICANN would stand to make more money from it. If you wanna squat these “new” names or sell registrations for them (to escape infringement liability), and you wanna use ICANN’s root zone to do it, then you gotta pay ICANN.

    As for a pure TLD “right of the dot” squat, at the high fees suggested by ICANN, indeed it’s silly. Because it’s still left of the penultimate dot that matters the most.

    People read from left to right. For most users, what’s on the left is still going to be the first thing they type or see and the first thing they consider. For them, it’s far more relevant intially that what’s off to the right. If the TLD matters, it’s a secondary matter. Autocomplete.

    Dot com has had a 20 year head start in establishing themselves as the first choice when consumers are faced with the secondary matter of what’s tacked, to be tacked, on the end of domainname. It’s effectively the “default”, and some browsers even make it so. One thing we know from computer history is “defaults” (e.g. default settings) are rarely changed by most users.

    A pure gTLD squat, in a spirit similar to the Cameroon incident (dot cm) or perhaps a homophone like dot ink (dot inc), is an interesting idea, but would ICANN let it through?

    The last dot in a domainname is customarily omitted but it is still inserted, by the software if not the user. There is nothing after that dot. Everyone knows the term “root”. Well, that what the “root” is. It’s that last dot, which most people do not type. So right of “the dot” is, technically, a fallacy.

    To read them correctly, domain names are read from right to left, and Berners-Lee (“I invented HTML tags and the web.”) has even admitted if we had the chance to do it all over again, it would be smarter to make domainnames read left to right. He’s from the UK so I guess that explains the English language bias. Not all human languages read from left to right.

    If we’re going to pretend domainnames are some sort of 255 character reduced punctuation human.language.to.control.our.computers, then we might as well acknowledge that the computer reads this stuff from right to left.

    Then TLD’s would, from a semantic persepctive, truly be important. Contrast this with being important only because they’ve been the “default” for 20 years, such as dot com.

  3. says

    I give credit to “Dumb” for truth in labeling.

    That lengthy comment distills down to one point: Dumb has an opportunity to open a brand new store on a heavily-trafficked part of Main Street and is too unimaginative to figure out how that could make money and serve a useful purpose. Therefore, everyone who opens a store on Main Street must have been coerced into doing it and somewhere somebody must be corrupt.

    For the record, Dumb, other things no one asked for include cash machines, blogs, Facebook, Twitter, iTunes, the iPhone, iPad2…. Following your reasoning, they are all inconsequential or “fueled by fear.” Is there no room in your thinking for the possibility of innovation?

  4. Dumb says

    For the record, my comment does not imply innovation cannot or will not happen.

    But this new gTLD scam != innovation. Any innovation in the area of facilitated internet addressing will not come from the incumbents. This should surprise no one.

    And you don’t need to understand the technicalities of domainnames to see the lack of any real improvements here. Simply review the history.

    This is the same old thing, the same old tired system and tired formula, with the same old problems (thankfully the complaints are getting louder), repackaged as the “new thing”, or, even worse, “innovation”.

    Innovation?

    More names. More registrations. More money.

    There is no innovation in the act of adding more lines to a zone file, for a fee.

  5. Keven says

    It is clear that defensive registrations are an issue/problem. Where is the proof? Just look at the list of reserved TLD’s in the Draft Applicant Guidebook!

    ICANN feels the need to put its own organization into a short list of “Reserved Names” that cannot be applied for. Among the list of 34 reserved names you will find…

    .ICANN
    .ARIN
    .RIPE
    .GAC
    .IANA

    This makes it extremely obvious that defensive registrations of TLD’s are an issue! Why does ICANN get special privileges over TLD’s that cannot be registered? Why can’t corporations apply for .GAC which is a common acronym used by hundreds, if not thousands of companies? It is pretty clear it is because the Governmental Advisory Committee is a committee within ICANN. And ICANN is afraid that someone might get this extension and dilute their brand over “GAC”.

    It is crazy ICANN has to protect their own brand “GAC” (which does not seem to be trademarked), but can’t provide the same rights for companies that have legitimate trademarks on their brands. “GAC” is registered for 21 live trademarks with the United States Patent and Trademark Office, not one of them seems to be associated with ICANN. Why can’t these companies get an extension that matches their brand and why is ICANN given special rights to prevent delegation of this gTLD? Instead of doing a defensive registration, ICANN sidestepped the issue with its own power and made this extension off-limits!

    It is obvious ICANN feels it important enough to protect their own name(s). The Draft Applicant Guidbook (DAG) should be changed to be fair to everyone, and allow companies to register .GAC, .ICANN, .IANA if they have interest. Or every company that has a brand should be given the same rights that ICANN is magically granting itself! Where is the fairness in all of this? Why does ICANN get special considerations over the very costly issues it is creating for thousands of companies worldwide?

    Which begs to question.. Why are terms such as .gac reserved at all? In reality ICANN can go to a bidding war for the .gac extension and spend $200 million and outbid any of the competitors. They would just wind up paying themselves – in reality it costs them nothing. There really is no need to grant themselves special privileges brands worldwide are extremely concerned about! Oh, wait. There is one problem with this. You have to pay $185,000 to get to the bidding table to even know if someone else is going to apply for the extension you are interested in. It is apparent ICANN does not want to use .gac because it is a reserved name. More importantly putting it into the reserved list means it does not want other companies to be able to use this extension. However it is somewhat clear that ICANN would be in some serious legal issues if it applies for .gac only if another company applied. It would be similar to shill bidding by using their inside knowledge of the gTLD roll-out to determine if they should apply for the .gac extension or not. It would obviously put ICANN in a very tricky spot to bid on this extension. So why risk it – they just made the term unavailable all together! Easy enough for them.

    What a totally unfair double standard! It is proof that ICANN realized the issues the expansion would cause with regards to defensive registrations. ICANN is going to make millions off of the fear of legitimate companies that don’t want their own gTLD, but more importantly don’t want anyone else to get it or use that TLD either. Given the option, tens of thousands of companies would opt to be in the free exclusion list ICANN granted itself under section 2.2.1.2 of the DAG. Unfortunately ICANN created such an unfair and distorted application process that it is forcing companies into applying for something they don’t really want. And how is this fair to other companies that might legitimately want to use .GAC or .IANA?

    What would have been fair? First off don’t grant yourself rights nobody else can get. More importantly, make people pay $5,000 to indicate interest in their own gTLD. ICANN would not do any work on their end during this step, and would simply publish the list on April 12 of what companies want what extensions. Only after that list is published the companies that put down $5,000 for a spot would then have 3 months to submit their applications for $180,000 if they are still interested. You know what will happen next… 90% of the brands would realize they don’t have to worry about unnecessarily giving $180,000 to ICANN for a defensive registration because nobody else is applying for the extension they care about. It is so obvious this is how the gTLD expansion should be conducted. Of course this could be less profitable for ICANN so I have to assume this is why this solution was not proposed or used. I believe ICANN is setting themselves up for some very interesting lawsuits going forward. They could have made this process fair and made the Internet a better place by making this process transparent. Instead, ICANN has now become the mafia and shown to force people to paying them for things they do not want. (aka “Defensive Registrations”)

    The only thing we have to be thankful for is that ICANN has been so gracious to make .gac completely off limits with section 2.2.1.2 of the DAG. This shows us exactly what is going on and that ICANN has understood the importance of defensive registrations since the very first Draft Applicant Guidebook (version 1) which was first published on October 24, 2008. ICANN has taken unconventional measures to make defensive moves itself when it comes to the gTLD rollout. It abused it’s power while creating the DAG to grant itself special privileges nobody else has access to. Privileges that trademark owners worldwide are not being given an equal chance of getting! I expect as there are lawsuits against ICANN due to the gTLD rollout – section 2.2.1.2 of the DAG will be a point that is brought up to demonstrate ICANN’s understanding of the issues it created with Defensive Registrations. ICANN is now shaping up to be the biggest profiteer of trademarks the world has ever seen. Without even getting into the contested auctions which will generate untold cash for them. This gTLD launch is far worse than the “fear mongering” of the “protect your brand” campaigns that the .xxx registry did. After all, you only had to pay $200 to “protect your brand” in the .xxx extension. Interesting too that ICANN had no issues with that sort of mafia style promotion of the .xxx TLD and they did not do anything to curb that tasteless approach of goading trademark owners to paying to protect their brand. Which indicates ICANN is fine with such tactics of extorting money from trademark owners due to fear.

    This whole thing makes me want to apply for a generic .brand extension just so I can get in on a future class action lawsuit for being given no choice but to apply for my .brand extension. Purely as a defensive registration. Of course FaceBook or Google probably do not have to worry because they have very specific brands. But what about a majority of companies out there like Apple? IBM? Philips? Java? Smith? Day? Word? Giants? XYZ? TBA? What about “GAC”? These are terms that many people might want to get a gTLD for. And the owners of these brands are being forced to BLINDLY apply so that nobody else can take control of their .brand! If the process were fair, I doubt anyone would take .Giants or even .GAC. But since you won’t know until it is too late, you have to apply in fear and without knowing what will come of your brand! I really don’t know why any company would want .gac, but the primary reason they would is to protect their brand.

    To add salt to the wound, ICANN has now asked for public comment about Defensive Registrations so that they can most likely ignore all comments (as ICANN typically does in public comment periods) and say in the court of law “we asked for comments about defensive registrations.” Granted it won’t admit it was too late to derail their plan to be the world’s most profitable non-profit. Unless they care to stop the gTLD roll-out as it is currently slated. They need to enact a much more tactful and positive launch that does not entrap brands to paying an exorbitant amount of $185,000 to protect their brand! Instead ICANN needs to work in the public’s best interest, which the current gTLD launch is definitely not in the public’s best interest – it is only in ICANN’s best interest. Even after the public resoundingly said it did not want gTLDs to move forward, and with the Department of Justice, with the Senate and Congress and multiple agencies warning against moving forward, ICANN took no notice and failed to see what it’s organization was turning into. This issue of defensive registrations needs to get fixed! The solution is so simple. Let companies pay $5,000 for the opportunity to know who is applying for their string – and then let them decide if they should pay the remaining $180,000 when they actually submit! It really would not be too late to change the application process to do this. But as always, I have to assume ICANN won’t take such a simple solution because it would probably delay the gTLD rollout by another 3 to 6 months. Which somehow seems to be the last thing ICANN wants.

  6. Michael H. Berkens says

    Kevin

    You make some interesting points.

    Companies like Google like you point out which have unique names protected by TM all over the world don’t have to apply just to protect someone else from applying for .Google.

    They like TM and other rights holders (pretty much anyone) can object to an application even if they don’t file their own. Of course in this event the best they can do it stop someone from owning .giants (one of your examples) and having no chance to own it.

    and if two or more valid apps are received for say .day (one of your examples) that string might well like a generic going into an auction and sold to the highest bidder.

    I think your also assuming that brands will be filing only for defensive purposes but there are some brands that want to actively use their .brand TLD.

    Your $5K “reservation fee” is an interesting idea, but personally I think you would find that any company that had any thoughts or interest in obtaining a .brand including just for defensive purposes would pay the $5K and at the end of the day we would be right back in the situation we are in now.

    A more effective policy would have been to announce before the 1st app period opened when the second app period would open be it 1,2 3, or 5 years from now so businesses could be a position to make a better decision.

  7. says

    The more effective policy would be to limit applications only to those who own the exact match .com (i.e. thereby allowing people to “ascend” to the top-level from their .com). That eliminates the need for “defensive” TLDs entirely, as only one organization can ascend, namely the .com registrant. (this, and other allocation methods were mentioned in my comment, linked to from above)

  8. Michael H. Berkens says

    George

    Not sure that is fair

    Certainly wouldn’t work for cities and Geo’s, wouldn’t work for those companies located outside the US that have built their business on ccTLD’s not .com and of course wouldn’t work at all for generics

  9. says

    Mike: ccTLDs are not governed by ICANN, so they don’t count.

    As for other gTLDs, .com dominates completely by “the numbers”. Have a vote amongst gTLD registrants, and see who “wins”. Alternatively, one of the other options I pointed out was to require an “easement” from each of the .com, .net, and .org registrants. Without those easements, no one would get the TLD. Of course, organizations that own all three of those domains (e.g. google.com/net/org) could easily ascend to the top level, if they wanted to do so, or equally decide NOT to waste their money on a “defensive’ registration (because no one else could get it without their permission).

    Of course, a system that only looked at whether easements from the .com/net/org registrants was obtained would cost a lot less than $185,000 to administer. That probably explains why ICANN never considered it, or opened up a public comment period on it, or allowed their economists to study as an ‘alternative’ to their self-serving plan.

  10. HH says

    Is it fair that a trademark holder for the mark GIANTS in a select number of trademarks classes should be able to block anyone from using the name as a TLD?

    What if GIANTS is not a famous mark?

    What if the TLD can avoid displaying any advertising for products within the classes in which the mark GIANTS is registered?

    Maybe this is not about “fairness”. Since when is business, or even life for that matter, “fair”?

    Maybe it’s about naively continuing to support a system that was thrown together by nerds (who call themselves engineers) who have a very poor understanding and lack any respect for the law, especially intellectual property law. To make matters worse the system is also supported by trademark lawyers who stand to continue to profit from this absurd state of affairs.

    TLD’s can represent trademark classes. They can represent geography. And DNS, e.g., centralised DNS, is optional. The network is not going to break if we stop using centralised DNS. The situation is no different from vanity telephone numbers. DNS is a mere convenience.

    Instead we’ve assented to chaos. And the non-technical users of the internet have assented by proxy. They have absolutely no idea what is going on. If they did, what would they say?

    These so-called engineers propping up ICANN are lazy and fearful of changing any system that is widely adopted (lest it might require difficult, aka nontrivial, work; or worst case it might result in people abandoning the system in droves).

    Then again, perhaps there’s more money to be made from chaos. Maybe it’s not so absurd. It all depends on what one thinks ICANN’s role should be.

    Should they be acting in the public interest? Or should they be acting to create continued opportunities for their own board and others in the domain name game to profit?

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