Tag Archives: TMCH

ICANN: Participate Now in the Sunrise and Trademark Claims Survey

The Sunrise and Trademark Claims survey is now available for individuals interested in sharing their feedback about these Rights Protection Mechanisms (RPMs). The Sunrise and Trademark Claims RPMs were adopted as part of ICANN‘s New Generic Top-Level Domain (gTLD) program. This feedback will be essential to the evaluation of these Rights Protection Mechanisms and ICANN‘s data collection efforts related to them.

We invite you to take the survey if you or your company registered a domain name in new gTLDs, attempted to register a domain name in new gTLDs, or considered registering a domain name in new gTLDs.

Thank you in advance for your input!

What to Expect

Participants’ responses are voluntary and will remain anonymous and confidential.

Survey completion time is approximately 15 minutes.

The survey launches today and will run until Friday, 28 September 2018.

Registries, registrars, and trademark owners and representatives also have an opportunity to participate in the survey. Learn More

Background

The ICANN Organization commissioned Analysis Group, Inc., an external consulting firm, to develop and administer the survey in close collaboration with the Review of All RPMs for All gTLDs Policy Development Process (PDP) Working Group of the Generic Names Supporting Organization (GNSO). The RPMs PDP Working Group is mandated to conduct the first-ever policy review of all existing RPMs.

RPMs refer to policies and processes developed to provide workable mechanisms for trademark owners to either prevent or remedy certain unauthorized use of their trademarks in the Domain Name System (DNS).

Sunrise and Trademark Claims RPMs are services provided through ICANN‘s Trademark Clearinghouse (TMCH). The Sunrise service provides priority access to rights holders to request domain names associated with their trademark(s). The Trademark Claims service provides notification to the rights holder after registration, allowing for immediate action if the domain registered is infringing rights. As Sunrise and Trademark Claims RPMs have not been subject to a policy review before, no comprehensive, publicly available data exists that measures the mechanisms’ effectiveness.

About ICANN

ICANN‘s mission is to help ensure a stable, secure, and unified global Internet. To reach another person on the Internet, you need to type an address – a name or a number – into your computer or other device. That address must be unique so computers know where to find each other. ICANN helps coordinate and support these unique identifiers across the world. ICANN was formed in 1998 as a not-for-profit public-benefit corporation with a community of participants from all over the world.

This ICANN announcement was sourced from:
https://www.icann.org/news/announcement-2-2018-09-06-en

ICANN: Request for Proposal: Rights Protection Mechanisms Survey

ICANN is seeking to identify one or more suppliers qualified to develop and conduct survey(s) to assess the use and effectiveness of Sunrise and Trademark Claims Rights Protection Mechanisms (RPMs). These RPMs are services provided through ICANN‘s Trademark Clearinghouse (TMCH) for trademark owners.

RPMs refer to those policies and processes developed to provide workable mechanisms for trademark owners to either prevent or remedy certain unauthorized use of their trademarks in the domain name system. The Sunrise service provides priority access to rights holders to request domain names associated with their trademark(s). The Trademark Claims service provides notification to: (a) a potential domain name registrant attempting to register a domain name that matches a trademark record entered into the TMCH, and (b) a rights holder after registration of a matching domain name.

As Sunrise and Trademark Claims RPMs have not been subject to policy review to date, no comprehensive, publicly available data currently exists that measures their effectiveness. By surveying the specific respondent groups identified by the ICANN community as most affected by Sunrise and Trademark Claims RPMs, ICANN aims to assist the community to evaluate the efficacy of these RPMs, as well as bolster ICANN‘s data collection efforts related to the RPMs.

For a complete overview of the RFP including the timeline, please see here [PDF, 86 KB].

Indications of interest are to be received by emailing RPMs.Survey-rfp@icann.org. Proposals should be electronically submitted by 23:59 UTC on 09 March 2018 using ICANN‘s sourcing tool, access to which may be requested via the same email address above.

This ICANN announcement was sourced from:
https://www.icann.org/news/announcement-2018-01-29-en

ICANN: Revised Report of the Independent Review of the Trademark Clearinghouse Now Available

ICANN Independent Review of the Trademark ClearinghouseICANN today published the Revised Report of the Independent Review of the Trademark Clearinghouse.

Read the report [PDF, 1.28 MB].

The review was conducted by Analysis Group, a third-party consulting firm. The firm examined whether domains that relate to, but do not exactly match trademarks should be considered for use in the Claims periods of a new generic top-level domain’s lifecycle. The review also explores if extending the number of days of the Claims service would be of value and measures how frequently trademark holders use the Sunrise period.

A draft report was published for comment on 25 July 2016. The revised version available today incorporates suggestions received during the public comment period and provides clarifications regarding the data used (view the redlined report [PDF, 1.29 MB]). The report of public comments, which includes summary and analysis of the comments received regarding the study’s findings, was published on 26 September 2016.

An independent review of the Trademark Clearinghouse was initially advised [PDF, 110 KB] by the Governmental Advisory Committee in May 2011 to be completed after the launch of the New gTLD Program. The review is informed by an analysis of Trademark Clearinghouse and third-party data sources, including data collected from stakeholders via interviews and surveys.

The revised report is expected to help inform discussions and policy development regarding Rights Protection Mechanisms in the New gTLD Program.

Learn more about the Trademark Clearinghouse Independent Review.

About ICANN

ICANN‘s mission is to help ensure a stable, secure and unified global Internet. To reach another person on the Internet, you have to type an address into your computer – a name or a number. That address has to be unique so computers know where to find each other. ICANN helps coordinate and support these unique identifiers across the world. ICANN was formed in 1998 as a not-for-profit public-benefit corporation and a community with participants from all over the world. ICANN and its community help keep the Internet secure, stable and interoperable. It also promotes competition and develops policy for the top-level of the Internet’s naming system and facilitates the use of other unique Internet identifiers. For more information please visit: www.icann.org.

This ICANN announcement was sourced from:
https://www.icann.org/news/announcement-2017-02-23-en

TMCH Review Recommends Status Quo by Philip Corwin

Philip Corwin imageOn July 25th ICANN announced the publication of the Draft Report of the Independent Review of the Trademark Clearinghouse (TMCH). This study was coordinated for ICANN by the Analysis Group, in conjunction with researchers from the Center for Internet and Society at Stanford as well the University of Pennsylvania’s Wharton School. Continue reading TMCH Review Recommends Status Quo by Philip Corwin

ICANN: Draft Report of the Independent Review of the Trademark Clearinghouse Available for Public Comment

ICANN new generic Top Level Domains logoICANN today (25 July) announced the publication of the Draft Report of the Independent Review of the Trademark Clearinghouse. Specific considerations related to the matching criteria, Trademark Claims service and Sunrise period are assessed in the review, conducted by Analysis Group.

Read the report [PDF, 1.15 MB].

The report is available for public comment through 3 September 2016. Feedback will be incorporated into a revised report.

Comment on the Draft Report of the Independent Review of the Trademark Clearinghouse.

Key Findings:

Expanding Matching Criteria to include non-exact matches may be of limited benefit: The dispute rate of completed registrations that are variations of trademark strings is very low.

Extending the Trademark Claims Service may have diminishing value: Registrations of names matching trademarks decline after the required 90-day Claims service period ends.

Few trademark holders utilize the Sunrise period: Most users of the Trademark Clearinghouse submit proof of use to gain access to the Sunrise period. However, across eligible trademark holders, fewer than 20 percent have used the Sunrise period to date.

Additional Information

An independent review of the Trademark Clearinghouse was recommended [PDF, 110 KB] by the GAC in May 2011 to be completed after the launch of the New gTLD Program. The review is informed by an analysis of Trademark Clearinghouse and third-party data sources, including data collected from stakeholders via interviews and surveys.

About ICANN

ICANN‘s mission is to help ensure a stable, secure and unified global Internet. To reach another person on the Internet, you have to type an address into your computer – a name or a number. That address has to be unique so computers know where to find each other. ICANN helps coordinate and support these unique identifiers across the world. ICANN was formed in 1998 as a not-for-profit public-benefit corporation and a community with participants from all over the world. ICANN and its community help keep the Internet secure, stable and interoperable. It also promotes competition and develops policy for the top-level of the Internet’s naming system and facilitates the use of other unique Internet identifiers. For more information please visit: www.icann.org.

This ICANN announcement was sourced from:
https://www.icann.org/news/announcement-2016-07-25-en

ICANN: Request for Proposal for the Independent Review of the Trademark Clearinghouse

ICANN logoICANN is seeking one or more provider(s) to conduct an independent review of the Trademark Clearinghouse to assess the effectiveness of three key areas related to the Clearinghouse in meeting its intended objectives and to identify considerations for future application rounds of the New gTLD Program.

The three key areas for examination in this review include: (a) Trademark Clearinghouse Guidelines and Verification Process; (b) Sunrise Period; and (c) Trademark Claims Service. The selected provider(s) will design and execute a study to create a meaningful report of quantitative and qualitative data on the specified areas for examination. The draft Report will be posted for comment and updated based on the feedback received. The final report will be published and provided to the Governmental Advisory Committee (GAC) for review and consideration. ICANN is seeking one or more qualified providers to manage this complex exercise in a timely and efficient manner.

ICANN anticipates a contract to be signed and work to begin with the selected provider(s) no later than October 2015.

Based on the Governmental Advisory Committee (GAC) recommendation in May 2011 for a comprehensive post-launch independent review of the Clearinghouse to be conducted one year after the launch of the 75th new gTLD in the round, ICANN has pledged to undertake a review to assess processes pertaining to the Clearinghouse in conjunction with the specified areas for review proposed by the GAC. The GAC recommended areas for review should examine whether the aims, functionality and operations of the Clearinghouse would benefit from extending the period of the Clearinghouse notifications beyond the 90 days and whether the automated system should allow the inclusion of non-exact matches.

In addition, this review will incorporate a thorough assessment of the effectiveness of TMCH related processes in meeting their intended rights protection objectives. It is expected that the independent review will help identify other issues for evaluation that should be included in the analysis of the Trademark Clearinghouse, such as issues that could be addressed in policy development work in the community. Furthermore, it is anticipated the review will help inform the discussion and enable consideration of the rights protection mechanisms available in the domain name space.

As the Trademark Clearinghouse was developed to support rights protection mechanisms and serve a large ecosystem of Trademark Holders and Trademark Agents, registries, registrars, as well as registrants, the study must be able to capture inputs in a representative manner from across the multitude of players relevant to the new domain namespace.

For additional information and instructions for submitting responses please click here [ZIP, 612 KB].

Proposals should be submitted to TMCHIndependentReview-RFP@icann.org by 23:59 UTC on 28 August 2015.

This ICANN announcement was sourced from:
https://www.icann.org/news/announcement-2015-08-07-en

ICANN Asks US and Canadian Regulators to Consider if .SUCKS Violates Laws

There has been widespread outrage from brand owners as to the business model of the .sucks gTLD with fears the gTLD will turn into a forum for registrants to “bash-a-brand.” And now following a complaint from ICANN’s Intellectual Property Constituency [pdf], ICANN has asked both the U.S. Federal Trade Commission (FTC) and, because Vox Populi is a Canadian enterprise, Canada’s Office of Consumer Affairs (OCA), to consider assessing and determining whether or not Vox Populi is violating any of the laws or regulations those agencies enforce.ICANN is currently evaluating remedies available to them under the registry agreement. Should Vox Populi not be complying with all applicable laws, it may also be in breach of its registry agreement allowing ICANN to take action itself, acting consistently with its public interest goals and consumer and business protections to change these practices through our contractual relationship with the registry.Greg Shatan, president of the IPC, whose letter on 27 March sparked ICANN’s outreach to the FTC and OCA, spoke to Domain Incite and said the word “justice” is more appropriate than “appeasement”.”We’re looking forward to the FTC and OCA taking a look at Vox Populi’s behaviour,” Shatan told Domain Incite. “And there’s lots to look at. The punitive TMCH Sunrise, where a ‘rights protection mechanism’ intended to protect trademark owners has been turned into a scheme to extort $2,500 and up… The eternal Sunrise Premium of the far-from-spotless .SUCKS registry. The mysterious ‘everybody.sucks’ — purportedly a third party, purportedly providing a ‘subsidy’ to registrant — would anyone be surprised if that was a sham?With reference to the FTC referral, Shatan also told Domain Incite that “I don’t think ICANN wants to waste the FTC’s time. It’s far more rational to think that ICANN informed the FTC because Vox Populi’s activities are within the jurisdiction of the FTC. Mr. Berard’s remarks seem to indicate that he believes that Vox Populi operates beyond the reach of US laws.””With a tech contact in Bermuda and an admin contact in the Caymans, that may have been Vox Pop’s intention. Vox Pop may be operating outside US laws, but I doubt they are operating beyond their reach.”The issue, the IPC believes, needs to be considered urgently as the .sucks Sunrise period was slated to open on 30 March and that Vox Populi will “charge trademark owners $2,499 and up to register domain names in the TMCH Sunrise period” was one of their concerns. “Vox Populi’s incredibly high fees will prevent many trademark owners from being able to take advantage of the TMCH Sunrise period.”The “illicit scheme doesn’t stop there” though according to the IPC. “If a trademark owner decides that it will sit out the Sunrise Period and attempt to register its trademark as a domain name during general availability for $249, it still may be forced to pay at least $2,499. This is because Vox Populi has now introduced its ‘Sunrise Premium’ list. (Despite the name, ‘Sunrise Premium’ pricing applies only during general availability.) If a trademark is on the Sunrise Premium list, it will always be at least $2,499 per year. The Sunrise Premium list is a list of strings compiled by Vox Populi from strings registered or blocked in other TLDs’ sunrise periods.”According to the IPC, “Vox Populi’s strategy is obvious-to ensure that those trademark owners who have invested in protecting those trademarks by registering in the TMCH and registering domain names in other sunrise periods, and who are most likely to want to protect their trademarks by registering in .SUCKS, cannot avoid paying at least $2,499 per year, no matter when they register.”

Estimating Trademark Claims Notice Suppression of Non-Infringing New gTLD Registrations by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoOn February 2nd ICANN staff announced the release of a Draft Report: Rights Protection Mechanisms Review that is open for public comment until May 1st. This Draft Report is preliminary to an Issues Report requested by the GNSO Council that is due to be delivered by September 30th, and that may set the stage for a Policy Development Process (PDP) on Rights Protection Mechanisms (RPMs) that could commence in 2016. Such a PDP could consider comprehensive reform of these RPMs as well as of the Uniform Dispute Resolution Policy (UDRP).

ICA plans to file a comprehensive comment on this Draft Report. However, while scanning the text of the 73-page Report, this statistic regarding Trademark Claims Notices generated by the Trademark Clearinghouse (TMCH) leapt out:

Sum of TLDs with initiated Claims periods         297

Sum of Claims Transactions                                    96,471

Sum of Claims Notices Generated                25,221,479

That 25 million-plus Claims Notices statistic is the one that garnered attention. As of February 1, 2015 the total number of domains registered in all new gTLDs was approximately 4.2 million, so the ratio of Claims Notices to new gTLD registrations was about 6:1. That is, for each new gTLD domain that was registered there were about 6 additional registrations that were commenced for some purpose – but of that total number, only three tenth of one percent (96,471 out of 25,221,479) continued on to completing a “transaction” resulting in a domain registration.

This is a continuation of a situation first observed one year ago, soon after the new gTLD program launched. One domain industry blogger observed in March 2014, “The Trademark Clearinghouse (TMCH) said today that is has delivered  500,000 Claims Notices (CNIS) of which 95% of the queries for trademark terms are not being followed through to a live registration…That news was released by the TMCH on a day where the total number of new gTLD registrations have passed 350,000.”

Upon the release of that half million Claims Notices statistic, another industry observer stated:

Half a million appears to be an awfully big number, especially when compared to the number of active domain names in new gTLDs, which today stands at just over 347,000.

The TMCH said today that 95% of these notices led to the name not being registered, which it said shows the success of the Claims system.

It could also mean that it’s having the “chilling effect” predicted by opponents of the process, with legitimate registrants being scared away from non-infringing uses of registered marks.

In the intervening year since those initial comments the number of Claims Notices has increased fifty-fold, the percentage of completed registrations against TMCH inquiries has declined by more than ninety percent, and the ratio of Claims Notices to registered new gTLD domains has increased from 4:3 to 6:1. So the TMCH is clearly having a “chilling effect” – but is it primarily chilling potentially infringing or non-infringing domain registrations?

To fully understand these figures you need to know that the Trademark Claims period follows a new gTLD’s Sunrise registration period and lasts a minimum of 90 days. As explained in the Report:

During the Trademark Claims period for a TLD, anyone attempting to register a domain name matching a mark that is recorded in the Trademark Clearinghouse will receive a notification displaying the relevant mark information. The Claims Notice is intended to provide clear notice to the prospective domain name registrant of the scope of the Trademark Holder’s rights… If the notified party acknowledges the notice and proceeds to register the domain name, the Trademark Clearinghouse will send a notice to those trademark holders with matching records in the Clearinghouse, informing them that someone has registered the domain name.

As of January 2015 34,300 marks had been submitted for registration into the TMCH. So, on average, each registered mark generated 735 Claims Notices.

At the time the Report was issued, there were 297 new gTLDs that had initiated Claims periods, so there was an average of 85,000 Claims Notices generated per new gTLD. For the vast majority of new gTLDs that is far higher than their total domain registrations to date – indeed, only the top seven new gTLDs exceed that figure.

So what is going on here? Is the TMCH incredibly effective at deterring the registration of trademark infringing domains? Or is it incredibly effective at deterring the registration of domains with an intended use that would not infringe trademark?

It may well be a lot of both.

It’s no secret that new gTLD registrations are substantially lower than new registry operators anticipated. And ICANN as well, which had to cut its FY 2015 budget by $10 million due to the resulting projected income shortfall. As one recent article observed:

Our hopes of some real ground-breaking new TLDs being immediately put to use did not materialise, and while a few global brands did engage with the programme, many simply took a ‘wait and see’ approach. A year down the track and we are still waiting for that one moment, the compelling event, which will see the programme really take off. If this was an end-of-year school report it would certainly read ‘C+; must try harder’.

While registration numbers have topped 3.5 million in the first year, the .com and .net base grew by 8.6 million in the first quarter of 2014 alone. Despite there being new options for brand owners out there, it seems that many still default to the old way of trying to find registrations within the .com or .net TLD base. Is this the case of ‘the emperor’s new clothes’?

Indeed, if the attention of the ICANN community and global policymakers were not so presently focused on the IANA transition and enhanced ICANN organizational accountability, there would be much greater discussion of the lacklustre performance of the new gTLD program. It was, after all, created and moulded by the much-vaunted multistakeholder process and is the largest and riskiest venture ever undertaken by ICANN. At some point it is going to be back in the spotlight.

We have contacted ICANN staff and they have confirmed that the 25,221,479 figure is accurate and not a typo. They have also clarified that there is presently no breakdown of Claims Notices differentiating those generated by attempted registrations of unique, non-generic trademarked words from those set off by generic dictionary words registered in the TMCH. It would be even more difficult – indeed, probably impossible — to parse out attempted registrations of generic words trademarked for some class or classes of goods and services where the potential registrant intended to use the domain for non-infringing purposes.

No doubt there have been attempts by intentional cybersquatters to register trademarked names that have been effectively deterred when they received a Claims Notice and realized that the trademark owner would be notified of the domain registration immediately and might well take some form of legal response.

But there also may have been lots of potential registrants for non-infringing uses of short and meaningful generic dictionary words as domain labels who were spooked enough when they received the Claims Notice to abandon the registration. While the Claims Notice does provide a prospective registrant with information regarding the Jurisdiction where the trademark is registered and the class of Goods and Services that the trademark covers, most prospective registrants of non-infringing domains are not well versed in trademark law, don’t want to have to spend money to consult a lawyer to see if their registration will be infringing or not, and don’t want to risk being hit with a cease-and-desist letter, UDRP or URS filing, or a trademark infringement lawsuit. The same could be true even for potential registrants well versed in trademark law who simply don’t wish to expose themselves to a potential legal action, regardless of its merits – especially since continuing on to registration after receipt of the Notice might be alleged to constitute proof of bad faith registration.

The legalistic language of the Trademark Notice would certainly cause major hesitation for most prospective general public applicants, reading as follows:

You have received this Trademark Notice because you have applied for a domain name which matches at least one trademark record submitted to the Trademark Clearinghouse.

You may or may not be entitled to register the domain name depending on your intended use and whether it is the same or significantly overlaps with the trademarks listed below. Your rights to register this domain name may or may not be protected as noncommercial use or “fair use” by the laws of your country.

Please read the trademark information below carefully, including the trademarks, jurisdictions, and goods and services for which the trademarks are registered. Please be aware that not all jurisdictions review trademark applications closely, so some of the trademark information below may exist in a national or regional registry which does not conduct a thorough or substantive review of trademark rights prior to registration. If you have questions, you may want to consult an attorney or legal expert on trademarks and intellectual property for guidance.

If you continue with this registration, you represent that, you have received and you understand this notice and to the best of your knowledge, your registration and use of the requested domain name will not infringe on the trademark rights listed below.  

Now the Claims Notice is not the only possible reason that an attempted registration did not go through to completion. Many potential registrants might well have been deterred by the high annual registration fees set by some registries for Premium names. The new .Sucks registry, for example, is about to enter its Sunrise period on March 30th and has set a Suggested Retail Price of $2499 per year for any Premium Name that has been registered with the TMCH.

Indeed, some new gTLD registries may have run long lists of generic words through the TMCH to determine which were listed in order to populate their premium priced names list (a situation that trademark owners have unhappily become aware of when they contemplated domain registrations during registry sunrise periods). But even if every one of the 297 registries covered by the Report has triggered a Claims Notice on every one of the 34,300 terms registered in the TMCH, that would have resulted in the generation of only 10.2 million Claims Notices. So what generated the other 15 million?

Let’s guesstimate that half of the total initiated registrations that generated a Claims Notice – 12.6 million – were for generic word domains intended for a non-infringing purpose.

Let’s guesstimate further that half of those registrations — 6.3 million — were terminated because of registry pricing.

That would still leave 6.3 million initiated, potentially non-infringing registrations that might have gone to completion but for the registrant being scared off by the Claims Notice. That 6.3 million is 150 percent higher than the total number of new gTLD registrations completed as of February 1, 2015!

Using the same methodology, even if one subtracts the 10.2 million Notices that may have been generated by registry inquiries for Premium name designations, that would still leave 3.75 million non-infringing registrations that may have been deterred – a figure equivalent to 89 percent of actual registrations covered by the Report.

So maybe there is a lot more demand for new gTLDs than current registration numbers indicate, and it has been substantially suppressed by Claims Notices that generate excessive “false positives” to potential registrants with no design to infringe.

That may or may not be true. But it does seem to deserve additional inquiry.

Yet, if it turns out that it is true, it is unclear what if anything should or will be done about it. If and when the new gTLD RPMs are reviewed in anticipation of another round of new gTLDs, the TMCH will almost surely be kept in place as it was one of the two new RPMs adopted for the program at the strong urging of the influential trademark community (the other being Uniform Rapid Suspension (URS)). In fact, early indications are that the trademark community may well urge that Claims Notices be generated on a permanent basis and not just for the first 90 days of a registry’s existence, which could further suppress potentially non-infringing domain registrations. Revising the language of the Claims Notice to make it more understandable by a registrant lacking deep understanding of trademark law might also be considered, but that can hardly be relied upon to protect the registrant from post-registration legal action by the trademark owner.

Summing up, the TMCH has almost surely been quite effective in deterring infringing domain registrations at new gTLDs. But it appears to also have been a substantial damper on total new gTLD domain registrations. The unanswered question is how big of a headwind it has been.

This article by Philip Corwin from the Internet Commerce Association was sourced with permission from:
www.internetcommerce.org/tmchnew-gtld-registrations/

ICANN Staff Requests Six-Month Delay for UDRP/URS RPM Report by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoICANN staff have requested a six-month delay in the delivery date of a Preliminary Issue Report on the “current state of all rights protection mechanisms (RPMs) implemented for both existing and new gTLDs, including but not limited to the UDRP and the URS”.  The request is contained in a January 5, 2015 e-mail sent by ICANN  Senior Policy Director Mary Wong to members of the GNSO Council.

A December 2011 Council Resolution had requested that the staff-developed Report be “delivered to the GNSO Council by no later than eighteen (18) months following the delegation of the first new gTLD”. The e-mail requests that the delivery date be pushed back from March to October of 2015.

Reasons cited for the delay request include:

  • The substantial work that will be required to prepare the Report.
  • Preparation of a draft paper on RPM implementation by ICANN’s Global Domain Division (GDD) that is expected to be published shortly for community discussion at the upcoming ICANN Public Meeting in Singapore.
  • An ongoing, Governmental Advisory Committee(GAC)-requested review of the Trademark Clearinghouse (TMCH) that is expected to be completed by mid-year.
  • Substantial staff and community engagement on a number of pending policy matters, including the overarching matter of the IANA transition and ICANN accountability.

While we cannot predict the Council’s action on this request, we would not be surprised if it were granted. Many Council members, staff, and other members of the ICANN community are already engaged to the point of near-exhaustion on the transition and accountability project, and the request e-mail makes clear that an Issues Report delivered in March would be hurried and lack the benefit of considering two relevant processes that are nearing completion and directly related to the subject of RPM review.

Assuming that the Council grants the request, if the Issues Report  delivered in October becomes the basis for a either consideration of a tweaking of RPMs for the next round of gTLDs, and/or a Policy Development Process (PDP) on UDRP reform, such processes could not commence until late this year or the first part of 2016. A PDP on UDRP reform would have to consider complex issues and address potentially controversial proposals, and we would expect that it would take a year or longer before completing its work and delivering a report and recommendations for community and Board consideration.

ICA has long favored comprehensive UDRP review and reform. We are disappointed that this will likely be put off once again by half a year. However, it may be best to defer it until more fully developed information on the performance of the RPMs developed for the new gTLD program becomes available, and the bulk of work on the IANA transition and ICANN accountability has been completed.

The text of the staff e-mail follows—

Dear Councilors,

Staff would like to request that the GNSO Council consider extending the timeline for the preparation and delivery of the Preliminary Issue Report that had been requested by the Council in December 2011, on the “current state of all rights protection mechanisms (RPMs) implemented for both existing and new gTLDs, including but not limited to the UDRP and the URS, to be “delivered to the GNSO Council by no later than eighteen (18) months following the delegation of the first new gTLD” (see gnso.icann.org/en/council/resolutions#201112 for the relevant GNSO Council resolution). This request meant that the Preliminary Issue Report will be due in or around March 2015, given that the first new gTLD delegated under the new gTLD Program occurred in October 2013.

Since the Council’s passage of the above-mentioned resolution, which was prior to the delegation date of the first new gTLD, several developments have occurred that in the view of staff merits the Council’s considering postponing the delivery date of the Preliminary Issue Report for another six (6) months, i.e. extending the deadline to October 2015. We now know, for example, that one year after the delegation of the first new gTLD, over 400 new gTLDs have been delegated and about 150 URS complaints filed, with 1 appeal so far. A draft Work Plan was also published in September 2014, detailing the scope and nature of the various assessments that are being and will be done prior to the launch of the next round, including those concerning RPMs (see newgtlds.icann.org/en/program-status/reviews-assessments-draft-work-plan-22sep14-en.pdf for the full document).

As outlined in the Work Plan, the proposed data gathering and analysis of the RPMs implemented for the new gTLD program will include the following (see page 13 of the Work Plan):

  • Compilation and analysis of statistics provided by third-party providers (for example, geographic distribution of Clearinghouse records, outcomes of URS proceedings);
  • Coordination among service providers and ICANN to identify the issues and questions most raised in customer service submissions; and
  • Soliciting feedback from users of the effectiveness of these processes to meet rights protection objectives

Policy staff has been consulting and coordinating with our GDD colleagues on the timing of each of these assessments, since they are expressly intended to also identify potential issues for policy development work, including providing information for the Preliminary Issue Report noted above. We are informed that a draft paper on RPM implementation is expected to be published shortly for community discussion, including at the upcoming ICANN Public Meeting in Singapore.

In addition, as also noted in the Work Plan, the GAC’s May 2011 advice to the ICANN Board in respect of a review of the Trademark Clearinghouse (TMCH) is currently being scoped, and we are informed that the intention is to complete the review by mid-2015 (see https://archive.icann.org/en/topics/new-gtlds/gac-comments-new-gtlds-26may11-en.pdf for the GAC’s request).

In light of the above-mentioned developments, and in view of the ongoing work of the community (including the GNSO community) on a number of policy issues as well as on the broader issues of the IANA stewardship transition and ICANN accountability, staff therefore believes that extending the timeline for the requested Preliminary Issue Report by six (6) months will allow that Report to take on board the results of the various assessment exercises as well as consider a further number of URS filings and results. The hope is that this will provide the GNSO Council and community with more concrete data and specific information that will assist in your consideration of next steps in relation to RPM review for both existing and new gTLDs.

We will be happy to provide further information should you or your groups have any questions. The Council may also wish to discuss this on its next call, if desired. In any case, please let us know whether you have any concerns or objections to this request.

Thanks and cheers – and best wishes to you and yours for a very happy 2015!

Mary

Mary Wong

Senior Policy Director

Internet Corporation for Assigned Names & Numbers (ICANN)

This article by Philip Corwin from the Internet Commerce Association was sourced with permission from:
www.internetcommerce.org/rpm-report-delay/

NABP to Begin Sunrise Trademark Registration Period for .Pharmacy Websites

NABP logo[news release] The National Association of Boards of Pharmacy® (NABP®) will soon be accepting applications for .pharmacy domain names from trademark holders who are registered in the ICANN Trademark Clearinghouse (TMCH).
The sunrise application period, which begins December 19, 2014, precedes the Sunrise TMCH Registration Period, which will be from January 15 to March 16, 2015. NABP launched the .pharmacy Top-Level Domain (TLD) to provide consumers around the world a means for identifying safe, legal, and ethical online pharmacies and related resources.

During the sunrise application and registration phase, eligible trademark holders who have logged their brand names in the ICANN TMCH may apply to NABP for approval to register .pharmacy domain names that exactly match their trademark names in the TMCH. Once approved, these organizations will be able to register the domain with an approved registrar. The Sunrise period will begin immediately following a special members-only registration period for NABP’s member boards of pharmacy.

Following the Sunrise Period, registration for .pharmacy domain names will be open to pharmacy websites that are accredited through the NABP Verified Internet Pharmacy Practice Sites® (VIPPS®) and Veterinary-Verified Internet Pharmacy Practice SitesCM (Vet-VIPPS®) programs, as well as for pharmacy websites that have received approval through the NABP e-Advertiser ApprovalCM Program. Applications from other dispensing pharmacies will be accepted beginning in mid-2015. General availability will begin in June 2015 at which time all entities providing pharmacy-related products, services, or information that meet .pharmacy eligibility standards will be able to apply to register for the domain.

Except for those already VIPPS or Vet-VIPPS accredited or e-Advertiser approved, entities seeking a .pharmacy domain name must first submit an application, supporting documentation, and an application fee to NABP. NABP will evaluate these materials to ensure compliance with program standards. NABP is establishing a network of international regulatory groups to facilitate evaluation of international domain name applications. Once approved, applicants will be able to register the domain name through an approved registrar.

Of the tens of thousands of sites selling prescription drugs online, NABP has reviewed over 10,800 and found that nearly 97% do not follow pharmacy laws and standards established to protect the public health. NABP will grant use of the .pharmacy domain only to legitimate website operators that adhere to pharmacy laws in the jurisdictions in which they are based and in which their patients and customers reside, so that consumers can easily find safe online pharmacies.

The .pharmacy domain application will be available at www.dotpharmacy.net beginning December 19, 2014. Additional information about the .Pharmacy TLD Program, as well as NABP’s most recent research on rogue online drug sellers is also available on the site.

NABP is the independent, international, and impartial Association that assists its state member boards and jurisdictions for the purpose of protecting the public health.

This NABP news release was sourced from:
www.nabp.net/news/nabp-to-begin-sunrise-trademark-registration-period-for-pharmacy-websites