Today’s much anticipated meeting between the ICANN Board and the Government Advisory Counsel was marred by name calling and disagreement.
The meeting scheduled to run from 4pm-6pm didn’t start until 4:45 and ran until well after 7pm local time.
The main topic of the day was once again Trademarks with the GAC wanting to recognize Trademark holders rights based off of the local law under which the trademark was issued, including many EU countries where a trademark can be issued without use.
Other countries issue trademark without any review.
The United States and other countries only issue trademarks based on a finding of use of the mark and a more substantive check.
ICANN on the other hand, quite aware of the gaming of the trademark system that was quite prevalent during the .EU launch wants to limit a “trademark holders” right to obtain a domain during the Sunrise period to only trademarks that are in actual use.
The debate raged on the trademark issue for over an hour with ICANN not moving from their position, which we agree with, that trademarks must be in use to be granted the right to early and exclusive registration during a sunrise period.
Frustrated by his inability to get ICANN to adopt the GAC policy the Representative for European Commission Gerald de Graaf told ICANN Chairman Peter Thrush that the wasn’t sure if “he was talking to the deaf or stupid”.
In general the EC representative dominated the discussion from the GAC side and don’t think he represented his constituents well.
The policy regarding trademarks was laid out by the board:
“One of the points on the scorecard was, why are you treating trademark registrations from different countries differently? Because in the United States, for example, to receive a trademark there must be a substantive review, whereas in countries in Europe, there is no substantive review.
“So the board took a look at the Guidebook and thought the GAC is right, this report seems to differentiate, to say it differently, to treat one country’s trademarks in a superior way to another country’s trademarks.
“And so we, tried to look at and analyze, well, where do we go from here? and we’ve heard a lot about gaming of various sunrise systems. and, remember, the sunrise is a way to give superior rights to trademark owners, that they don’t actually have currently under the law. this is saying that a trademark is going to — by having a registered trademark, you’re going to be able to get a tld before anyone else. ”
“And so one of the ways we thought we could level the playing field and make sure trademark owners were unfairly challenged in the registration is to say everything is on a level playing field here.”
“So, for example, in the United States where you prove use to get a trademark, if you want to put your trademark in the clearinghouse and — so it is and, you can put your trademark in the clearinghouse without demonstrating use, so both U.S., European, South American, Asia, all trademarks will be accepted into the clearinghouse, period.”
“However, if you want to use that trademark in the clearinghouse as a basis for a sunrise registration , it very, very premier right, whether you have had an United States trademark or a Benelux trademark or a South African trademark, you will need to demonstrate use in order to qualify for a sunrise registration. and we thought this was an important requirement that will be applied equally to any registration from any country around the world. we thought this was a level playing field and way to make sure that only legitimate trademark owners that are using marks are qualifying for sunrise registrations.”
It looks like ICANN is ready to move ahead on this issue against GAC advice but we believe its the proper conclusion which balances legitimate trademark holders while protecting domain holders from those trying to get superior rights by gaming the trademark system.
The second major point of discussion today was the registry-registrar cross ownership rules which I would say ICANN recognizes is going to be a problem to which Chairman Thrush said:
“I think if i can begin with the competition concerns, in particular those resulting from changes to the registry/registrar cross-ownership. and the first thing to say is we’ve received not from the GAC but from two other governmental agencies letters concerning competition issues arising from the implementation of the vertical integration rules. and so the first thing is to acknowledge that we have received those and to confirm that we have evaluated those, including internally and with outside counsel. and we take very seriously the advice that’s contained in those.”
“If i can very quickly summarize our response at the stage today. the first is they deal merely with two different issues. one is what we call the leg gas at this TLD, .Com, .Org and those that are under existing contracts and we have a process from transiting from the legacy position where there was vertical separation to the proposed model of vertical integration, we believe that that process largely takes care of many of the concerns that the governmental agencies have raised.”
“We also are very concerned about substantive market power, and we will not allow vertical integration to occur where we have any risk — we believe there is any risk of the abuse of that market power.”
“In relation to the TLD’s the position, of course, is slightly different. and we will work with those competition authorities and others to ensure that the process does not allow new TLD’s to either go — to have vertical integration where, again, there is any risk so we take that message very seriously.”
It seems that ICANN knows they are going to have to change or adjust the proposed vertical integration policy.
The third major discussion of the day was financial assistance for new gTLD applicants from developing countries.
ICANN seemingly threw out a number out of nowhere saying they would put up $2 Million aside to assist these applicants.
However, with fees at $185K per application even if ICANN would half the cost of applications from developing countries they would only have enough money from the $2M to help 20 applicants.
If certain applicants needed more help than just 1/2 the cost of the application the $2M would run out pretty quickly.
I’m not sure where or why ICANN would have just thrown out a number not knowing how many applications from developing countries would be coming in.
The fourth discussion of the day was whether there would be a reserved domains list to protect certain terms like Red Cross and/or Olympics.
Seems like the ICANN board is reluctant to grant certain groups a certain super right of protection and personally not sure they are entitled to it.
I mean why is the Olympics entitled to more protection than the NFL or NASCAR?
Why is the Red Cross entitled to more protection than any other charity like say UNICEF?
Finally the discussion turned towards the Uniform Rapid Suspension (URS) and the standard of evidence that should be used to take down a domain name.
The GAC wanted ICANN to use a lower standard of proof than ICANN provided for in the Guidebook to take a domain away through the URS.
“In the United States, anyway, clear and convincing evidence is also a civil standard, but admittedly higher than preponderance, which to us means 51%.
“With regard to the URS, that was developed for cases where there were clear-cut cases of abuse especially use of the word “clear-cut cases” seem to lend themselves especially well for a very rapid takedown model to require a higher standard than just a preponderance of evidence.”
“The URS is a very dramatic remedy, where a party can go directly after a registry for domain names where there may or may not be a “direct connection,” and therefore the board also agreed among themselves that the standard of clear and convincing, higher than just 51%, was more appropriate.”
Good for ICANN.
URS is an extreme, cheap quick method to take away domain holders rights and is meant for clear cut cases and therefore ICANN is right that a higher standard of proof should be required.
Looks like we are on to Monday’s Board meeting and what I’m still predicting will be the passage of the new gTLD program and a time table for applications to be taken.
We will be there to report it all.
Tim Davids says
thanks for the play by play
We also are very concerned about substantive market power, and we will not allow vertical integration to occur where we have any risk — we believe there is any risk of the abuse of that market power.
ICANN fails or choses not to understand market power.
The overwhelming majority of market power is obtained not through the registries’ branding or the registrars work of promotion, but rather as an unearned and consequential result of the registrant’s own endeavours.
This results in two problems. Overall pricing from the network effect of multiple registrants endeavours increase the overall desirability of the gTLD. (Currently held in check with price caps) and an individual’s improvements held in check by not allowing differential pricing.
It’s the registrants own endeavours which perversely make the registrant more vulnerable to price gouging etc. Why? Not because the service being offered has more benefit but because the branding of the “domain+tld” becomes more and more intrinsic to the registrant’s own business.
As a result the cost to move to an alternative is far greater than the cost of delivery of the domain for the ICANN contracted parties.
domain investor says
We appreciate all the reporting. Thanks!
Gerardo Aristizabal says
Thanks Michael… Please keep us informed as things go along…
Why bother, Michael? Even if all of the legal hurdles are eventualy overcome, the gTLD concept is doomed to fail for the simple reason that, other than you and Monte, no one out there really WANTS one. Disagree? I challenge you to show me a .museum, a .travel, a .aero, a .job or a .coop in ACTIVE use. One that doesn’t simply forward to it’s .COM sister, please. As you striggle to find one, keep in mind that these alternative TLDs were introduced after ICANN studies concluded them to represent the fields most in need of additional domain names.
We know how that story ended. Why are gTLDs any different?
Much ado about nothing if you ask me. In my opinion, the whole thing will be a giant .WASTE and a huge .FAIL
Stick with .COM — it’s the extension of the Fortune 500 and will always continue to be. No other TLD has the capability to similuate .COM’s constant subliminal advertising power. You have acknowledged his several times in your writings, so my question again to you is “why bother?”
LS Morgan says
I challenge you to show me a .museum, a .travel, a .aero, a .job or a .coop in ACTIVE use. One that doesn’t simply forward to it’s .COM sister, please.
Why don’t you go to google, type in the string — site:.museum — and see for yourself?
(Protip: It’s a sTLD, not a gTLD)
(Protip: It’s a sTLD, not a gTLD)
Err actually .museum is a gTLD
(It’s a Sponsored gTLD)
“other than you and Monte, no one out there really WANTS one. Disagree?””
There are HUNDREDS of people at this meeting that want the new gTLD extensions passed, millions have been spent already by companies positioning themselves to get one and I have sat face to face with people willing to spent $10 Million plus to get a extension.
Will most be successful?
I always answer that question this way:
Success by what measure and from whose perspective.
Is the .Travel registry a money loser?
They make money.
There will be registries that will make a lot of money, many will lose a lot of money but that is business.
There will be tremendous successes and tremendous failures, big risk, big reward.
Plenty of people are lining up, including domainers
There will be registries that will make a lot of money, many will lose a lot of money but that is business.
As the Internet evolves it needs to become a safer place so more and more people can enjoy its advantages. This is where I think ICANN has it wrong; new gTLDs should be viewed more as infrastructure providers so that real value can be created through other businesses actually USING those new domains.
It isn’t acceptable so say many of these new gTLDs will simply fail beyond the lucrative defensive and landrush periods. A new gTLD speculation spiral in itself will add little real value and will simply result in even more regulation for everyone else.
The whole gTLD process grew from communities that wanted their own extension. berlin, paris and New York started the drive for their own extensions.
who knows how many registrations there will be until there is domains to registrar and who is going to play god an predict which will provide real value and which will not?
You either have to open it up to all comers or tell those that want an extension that they can’t have it, that the internet is limited forever to the 22 TLD is currently has
Governments doing the bidding for corporates, against the common man.
Gee, where have I seen THAT before?
You either have to open it up to all comers or tell those that want an extension that they can’t have it, that the internet is limited forever to the 22 TLD is currently has
I’m not so sure. ICANN could easily of created categories of new gTLDs with different rules and incentives to try and actually govern any expansion of the DNS for the wider public good. I think it is wrong for ICANN to suggest it has to be a one size fits all or nothing.
Different categories will have markedly different benefits and costs for innocent third parties and the new gTLD program should be designed in a way that maximizes the public benefits and reduces the costs of innocent third parties.
It’s a bit like saying to road builders – “Hey we’re not capable of deciding where to build new roads so you decide.” – Great for builders but not a very good approach for a governance organization whose primary obligations and responsibilities are supposed to be for the public good.
John McCormac says
The quality of trademarks is an interesting point. Most of the trademarks that were used in the .EU Fiasco were dodgy Benelux deposit trademarks. These were often in obscure classes far removed from the classes of existing legitimate trademark holders who were actually using their TMs. The deposit Benelux trademarks did not go through any review or challenge process. This abuse of the trademark system benefited two parties: the operators of the trademark process and those using these deposit trademarks to obtain .EU domains to which they had, potentially, no legitimate entitlement (most of the eventual challenges would have been through the ADR process). However it allowed the people in the European Commission (some of whom seem to think that each domain name is registered by an individual) and the .EU registry to claim that the ccTLD was a great success. The reality is that .EU occupies between 2% and 10% of the domain markets in individual EU countries and it is effectively dead in the English speaking areas of the EU. The .EU Fiasco proved one thing: when confronted with an unproven new TLD with a poor regulatory framework, the registrants will tend to opt for certainty with existing core market TLDs. For most EU registrants, that meant .ccTLD and .COM. The best thing that the .EU Fiasco did for the EU was to boost the registrations in genuine European ccTLDs.
The new gTLDs will, to some extent, depend on Brand Protection registrations to increase their intial registration volume. And TM/brand owners are getting somewhat tired of having to register their TM in every new TLD that appears. As a critical part in the launch of a new gTLD, this may give brand owners a larger say in proceedings than domainers. The new gTLDs will rely, somewhat, on domainers for the hype but the brand protection registrations are amazingly sticky in that they tend to be renewed for the lifetime of the trademark/brand.
It appears that the new gTLDs are ICANN’s last roll of the dice. The rise of the ccTLDs over the last five years has accelerated ICANN’s slide to irrelevance. While .COM still has its global position, the individual country markets tend to go ccTLD positive as they develop. The credibility of the European Commission, given its involvement in the .EU fiasco might make ICANN, and others, somewhat cynical about its contribution. But then they have expertise in how to make a mess of a new TLD so it might be worth listening to their contribution.
@LSMorgan Judging everything by .COM domaining rules is wrong. Here’s a .travel site: http://www.holidaysonline.travel The ironic thing is that I spotted it while mapping the outbound .CO redirections from the June 2011 survey of approximately 493K .CO websites. There’s greenhive.coop as a .COOP example. and even a single .AERO site. Using Google’s site: operator is a classic domainer mistake because it ignores the diversity of the web. Google depends mainly on crawling links to detect new websites and many new websites have no inbound links. As for .museum and .jobs, these TLDs were overtaken by the rise of ccTLDs. Both museums and jobs tend to be location specific and their home ccTLDs tend to be a far better brand identity. The web is a far more diverse eco-system than most domainers imagine.
Hope it approve and move on.
Let the forces of demand and supply dictate the market.
Anyway, thanks for the good reporting MHB and please have a Singapore sling on me….or a couple
I doubt that anyone is after these new TLDs for the purpose of providing value to the general public, unlike what most people think most of these companies are not going to open their TLD to the general public and thus don’t plan on making their profits by getting in the registry or registrar business considering that they might be making only 10 to 20 dollars on something like 5 to 10 thousand registrations.
The reason that most of these companies want to get their hands on a generic TLD like .Insurance or .RealEstate is so that they can dominate those markets by keeping those TLDs closed to everyone else and by making sure that no mater what people type in on the left of the dot on those TLDs that they all end up at their website (this is known as wildcarding the TLD).
ICANN should make a requirement that a TLD that is based on one of the top 1000 generic keywords must be made open to public registrations, and better yet those TLDs should be run by a nonprofit organization on behalf of all the people.
the way most of these registries (the non-corporate ones) will make money is via defensive registrations- corporations defending their trademarks against cybersquatters. same old story.
in looking at history, don’t forget about .pro (didn’t they have a recent promotion for short names?) and .mobi, the later of which many corporations registered defensively (it was founded by someone who used the trademark threat posed by cctlds to make money back in the 90’s).
The domain name speculation is over. Now anybody can get any kind of generic domain name in any extension, in even better extension than the ones that already exist and at a registry price. .sport, .realestate, .london , .NYC, .berlin, .tokyo, .miami , .chicago, .clothes . medicine, . Africa, .finance, .computer, .social, .reggae, .milk, .plants, .anything. These extensions are far better than the ones that already exist because they are more descriptive/specific . Why would a domain cost millions of Dollars? that is stupid. No more the business of speculating domain names.
Just because a name can exist doesn’t make it desirable. daffodil.plants would have less value than daffodilplants.com never mind daffodil.com.
if .nyc .chicago and .miami are all competing for new registrations why would they do better than .us? which has a population of 308million and has been around for a number of years?
A person very close to the new gTLDs gave out some of the fundamental thinking underpinning new gTLDs the other day… Now either they were out of their depth and misunderstood what they had been told or much of the thinking behind new gTLDs is based on a flawed statistics…. Statistics which beyond doubt do not show what was claimed and as such if ICANN has based their internal justifications for the whole new gTLD program on them there will be big trouble ahead.
I will be there will be plenty of people gaming the system in most of these new extensions. As long as domain extensions have been around, people have gamed the system with everything from bogus TM claims to get generic terms to using insider information, that might be consider illegal in many other fields.
If you think you are going to be able to go out and ever hand reg a domain like Chicago.RealEstate dream on.
In most of these new extensions there are not very many great keywords anyway.
That should read –
“I am sure there will be plenty of people gaming the system…”
What makes this post confusing and slightly misleading is that there are three trademark systems at issue here, not just two.
1. The US has a “first to use” system.
You cant register until you have used it.
2. Many other countries (UK, Australia etc) have a “first to register” system.
In the first to register system, as long as you have an intent to use the mark, you have a monopoly on your products/services for a period, eg five years. After that period you are exposed to an application for removal on the basis of non use, by third parties.
However, in the first to register system you still have to wait for 7 months or so to progress to full registration. (Eg to wait for people say in the US who may want to claim “priority” where you are because they applied in their jurisdiction before you did).
3. Accelerated trademark
What got .eu into trouble is that they stupidly accepted trademarks from Benelux. For an additional fee, Benelux issues full registrations on the same day. Even though they are exposed to objections/removals, they are full registrations.
One more point: the UDRP panellists must wrestle with these different trademark differences, based on the domicile of the rights holders on either side of the claim.
You don’t understand what the word descriptive means. Why would I need .us extension if the product I am looking for can’t be delivered from Los Angeles and I live in Miami or if it can only be delivered from that location at 10 times the cost of delivering it from Miami? .us is general but .miami is specific
George Kirikos says
There were folks registering Benelux trademarks in the class of “plectrums” for the EU landrush. Do a search for “ADR plectrums” (without the quotes) and you’ll find a few decisions.
Getting multiples/corporations to invest in one site is a serious challenge. They don’t need a site for each town/city/area. In most cases all they need is an address, opening times and a map.
That leaves in the main, small business, local government, local communities and individuals to build out sites that add value. (Though small business instantly have a problem if they want to grow or already have more than one location and one of them is outside the Miami area.)
Will gov.miami enable them to deliver a better user experience than the existing miamigov.com? Is it worth the cost of updating all the headed note paper signs, vans, databases, systems etc?
Ditto small businesses that already have a site.
New businesses are going to be very wary of branding in .miami Not only is it a serious cost if it doesn’t work out and everything has to be changed to .com etc. but branding is integral to a companies success and a significant number of people starting out are going to feel a local gTLD doesn’t really cut it for maximizing their own businesses success.
Therefore I just can’t see enough companies and individuals finding advantage to want to (re)locate so that .miami can get the critical mass it needs to generate the day to day signals for most people to even know it exists. It’s like putting up the most amazing store miles from anywhere in the countryside and hoping it will be successful it doesn’t happen very often because most stores prefer to locate with other stores.
Miami is an interesting example because of its size and economy. There are going to be a lot of sharp salesmen spinning the wonders of new gTLDs to much smaller places and a responsible ICANN would have done studies as to the size needed for a reasonable chance of success which is sustainable beyond the initially easy money from defensive and land rush stages.
The sunrise abuses in .eu were on an industrial scale usa.eu was a classic. The American Embassy was rejected and it was awarded to a us&a Benelux TM from the Netherlands.
Blast from the past
The .EU landrush fiasco
Even today for ICANNs new gTLDs the whole of ICANN’s sunrise proposals need a substantive rethink.
You actually are talking in my favor. Because it would be very difficult for companies, no matter how successful they are, to compete in every ethnically, geographically, linguistically or business-category descriptive domain extensions, they would be discouraged to go after all new domain extensions, and this would allow many many new people launching businesses using these new extensions. The whole idea is about giving so many people the chance/opportunity to launch online business using good/generic domain names. Today the world is about fairness.
What’s interesting is that GAC is arguing based on the first to register or perhaps the Benelux approach approach to trademarks, but they are doing so out of fear of the first to register domain name system as used by all domain name registries.
First to register is acceptable for trademarks but not for domain names?
Surely there’s some legal/economic theory behind why some countries decided to require a showing of use before granting a right to sue others, i.e., a trademark. Has this been discussed before in the context of domain names?
Maybe it might be useful to consider it, since what’s being proposed is giving trademark holders yet another right: the right to prevent others from using a domain name, for *any* purpose, even when that domain name could be put to non-infringing use.
There is no 1-to-1 relationship between trademarks and domain names. They are not the same.
Imagine trying to have a “first to use” system for domain name registration. The DNS protocol, as it is, would not allow it.
If we were only allowed to think of domain names in terms of trademarks, then we would not be able to run a DNS. Everyone with any clue about the internet knows this.
The right to use a domain name is not split into different classes of usage and shared amongst different parties. And it’s not inherently tied to trademark rights. It may infringe others’ rights, it might not. That is to be decided if and when the issue arises.
Trademark gives the right to sue. But it doesn’t guarantee victory. ICANN is giving trademark registrants default rights to domain names, without having to prove any infringment. And that’s not enough?
“If you think you are going to be able to go out and ever hand reg a domain like Chicago.RealEstate dream on.”
For sure Brad, just look at the recent launch of the .CO, the register is still sitting on most the best ones, hundreds, probably thousands of them…”for sale OR auction”
..Any decent punch-ups over there yet MHB ? 😉
Why don’t the suits take a decade or two to sort out the global Trade Mark differences between countries and then launch the new .whatevers when they all figure it out ? 🙂
We are love blogging from today’s board session:
How about this:
A tld for each and every trademark class.
If countries all more or less agree on the set of trademark classes, then we just focus on what’s “left of the dot”.
I run my own DNS server on localhost and can implement this right now. So any arguments that it’s not possible are moot.
Gazzip is correct.
All new gTLD registry operators (if they know what they are doing) understand that a lot of the value of the TLD and much of the cost they are going have to lay out to get one, is going to depend on the premium reserved domains, building out a list of domains that won’t be available for registration but to sell later on as a premium domain or strategically given or sold to companies who will build awareness in the extension thereby increasing the the number of registrations.
I think I explained this pretty well in my write up on RIGHT OF THE DOT.
For anyone who wants to figure out how they can make money from this new gTLD program check out that post.
Michael Graham says
“Common people”? Come on, what “common people” do you know who can come up with the money for a new gTLD? And what common people would find it easier to search .realestate than .com for a real estate company? And local businesses? It all looks like just another effort to milk money from a system intended to encourge communication and cooperation by blocking both. If ICANN moves forward we will all soon find ourselves with the current internet and endless gulags of special interest, financially precocious domains.
Nice. Very elegant indeed. It exposes the futility of a lot of these arguments and brings together two divergent or forever misaligned ways of thinking; marketing and the law. I get a headache just thinking about it.
“Plectrums” is very funny. I confess to having a Benelux trademark in the name of a musical instrument. I had (have?) every intention of using it when I paid for the same day trademark reg, just before the Sunrise close for .eu. Honest! ….Hiccup.
Nic: It can be geospecific as well.
” All new gTLD registry operators (if they know what they are doing) understand that a lot of the value of the TLD and much of the cost they are going have to lay out to get one, is going to depend on the premium reserved domains, building out a list of domains that won’t be available for registration but to sell later on as a premium domain or strategically given or sold to companies who will build awareness in the extension thereby increasing the the number of registrations. ”
You are right if you are launching just one TLd then you can put the best domains in that TLD on a reserved list and take your time to get the most you can for them by auctioning them off gradually as the interest in that TLd builds up, same as what has happened with .CO and many of the older TLDs already, but when there are hundreds of TLDs that are going to come out at the same time (or at least people anticipate that they are going to come out in the near future) then you cannot play hard to get anymore because people will have so many different choices that are going to be available to them that they are not going to fork over thousands of dollars for just one second level domain in any given TLD, if they were going to spend that much money on a second level domain then they might as well get their own TLD and considering that ICANN probably will lower the application fee once they recoup their initial cost it might only cost someone 5 to 10k to apply for their own TLD, so why would they want to pay a 100 or 200k for a second level domain in some other TLD.
ICANN is not going to make certain TM more important all TM from where ever country they are issued are going to have to meet the same standard. http://bit.ly/jIRtJ1
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