Tag Archives: Trademark Clearinghouse

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

The Donuts Story: From 3,000 gTLD Ideas To Over One Million Registrations. All Paid For!

It started as an idea between four people who, for the domain name world, had been involved in the space for a long long time. As ICANN discussed the introduction of new gTLDs they got together and shared their ideas. And the result to date is Donuts, a company with over one million domain names registered across 152 gTLDs and with more gTLDs and plenty more registrations to come.The gang of four had known new gTLDs were on the road map for some time and each were intending to independently look at the possibilities, but, being known to each other and with similar ideas, they decided to work together and look at raising money from a number of investors.Starting with 3,000 candidates they ended up with 307. After the “big reveal” by ICANN they found half were uncontested. And since then auctions commenced, with 30 or 40 contention sets now resolved while several more set to resolve. At the end of it all, company co-founder and Executive Vice President Dan Schindler believes Donuts will have around 200 gTLDs on their books.And how do you finance such an idea? Raising money, as it turned out, was much easier than anticipated, said Schindler, following the recent ICANN meeting in Los Angeles.In part, it was because Donuts focused on gTLDs they believe “provide a specific and meaningful choice and not long and convoluted names in a meaningless extension,” Schindler said. They have even thought about the non-English speaking world and the opportunities that lie there with four internationalised gTLDs applied for, three of which were uncontested and one won at auction. Another 20 applications were for non-English gTLDs.But the programme wasn’t without its obstacles and headaches. One was the trademark or brand owners community who Schindler notes certainly caused regulators to be fearful about how they went about the programme.As a result of the fear campaign run by some trademark owners and their representative organisations, years were spent building the Trademark Clearinghouse and Rights Protection Mechanisms. Schindler points out the frustration of this as they have not been as deeply used as some predicted.”As expected it was scaremongering. We want to see the rights protection mechanisms the trademark owners so desperately wanted to be used by them.”Much more successful though has been Donuts’ own Domains Protected Marks List. The DPML allows trademark holders to block their trademarks from being registered across all Donuts gTLDs.So where are they today? Schindler says Donuts is more than happy with the results to date. “All of our gTLDs have outperformed our forecasts.” But some have been more of a surprise than others.One of these that has performed unexpectedly well has been .guru, now with well over 75,000 registrations and sixth on the nTLDstats.com list of all new gTLDs.”.guru has been an enormous surprise to us,” Schindler said. “We were really surprised and we’ve tried to analyse why. But most likely it’s because it’s fun and everyone can claim to be a .guru.””Also, .photography has been a very pleasant surprise. But in a world of 2 and 3 letter TLDs, it’s a surprise longer names do well.” Schindler also said .technology had been a surprise, now closing in on 48,000 registrations. Donuts also expected .email, .today and .company to do well and all three have over 43,000, 41,000 and 32,000 registrations, respectively.Looking to the future, Schindler is confident there will be high rates of renewals and continuing success. For starters, Schindler stressed every one of the one million plus domains registered in their gTLDs has been paid for. And most were registered and paid for by early adopters, so Schindler says Donuts is confident they will have high renewal rates.”They were registered for longer term investments. There is not enormous type in traffic so speculators haven’t entered the market on a large scale – they were bought for longer term investments,” Schindler believes.And twelve percent of domains registered across Donuts’ gTLDs “are already living breathing sites. That is really encouraging. With more being used, use begets use.”For now though Donuts is focusing on winning the gTLDs that are currently in contention, getting a registrar channel on board and, in 2015, boosting the profile even further of the new gTLDs past the early adopters with a massive marketing programme.And what of the aforementioned ICANN meeting? Schindler said it had “two very significant and positive outcomes, not just for Donuts but for all operators of new gTLDs.””The release of two character sub-domains that have previously been withheld was an enormous success for all the registries. And it’s hugely exciting for us.”The result is that the nxd names that were on the names collision list and were subsequently put on a do not register black list. So some phenomenal names, such as digitial.photography, could not be sold. But Schindler said they will be available in the very near future.One area though that Donuts is disappointed by, though, is the inconsistency of verdicts as it pertains to community gTLD applications.”This is a nonsense,” Schindler complained. “And what is familiar and what is isn’t. We need consistency and to stick to the guidebook. Let’s play by the rules we all agreed to.”

ICANN Staff provides Update on First Round of New gTLDs and the Path Forward to a Second Round by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoIn late August the GNSO Council received an ICANN staff response to a Resolution on subsequent rounds of new gTLDs passed during its June meeting in London.

At the time the response was issued only 373 gTLDs had been delegated out of the 1321 total applications being processed. So the first round of the program still has a long way to go and the jury is very much out on analyzing its successes, failures, unexpected issues, and overall market demand and acceptance.

ICA’s primary focus during the development of the Applicant Guidebook (AG) for the first round was on assuring that the new rights protection measures (RPMs) – the Trademark Clearinghouse (TMCH) and Uniform Rapid Suspension (URS) – treated registrants fairly, communicated clearly and effectively, and provided acceptable procedural and substantive due process. Overall registrations in the TMCH have been lower than anticipated and, surprisingly, the traditional UDRP is being used as an arbitration tool for alleged infringement at new gTLDs more than the URS despite the latter’s speedier and less costly administration. Section (d) of the staff response focuses on those RPMs, and reveals that staff has been analyzing the performance of all of them to inform an Issues Report process that will commence in April 2015. That Issues Report could well lead to a UDRP reform process that is long overdue – and in which ICA intends to be fully involved.

The response also notes that the Council’s Resolution called for the launching of a Discussion Group on new gTLDs and future rounds, and it held its first conference call this past week. ICA has joined that Group and we have already seen dozens of questions and topics submitted for its consideration.  While the staff response does not suggest a timetable for subsequent rounds of new gTLDs, the best estimates we are seeing are that it would not likely occur before 2017. Of course, the results of the first round will have great bearing on AG modifications in subsequent rounds as well as the willingness of new applicants to make the hefty required financial commitment.

Here is the text of the staff response:

 

I wanted to provide an update on the request for a status report from staff as part of the GNSO Council’s motion on New gTLD Subsequent Rounds during the ICANN 50 meeting in London (http://gnso.icann.org/en/council/resolutions#201406).  This included status reporting on: (a) the New gTLD program generally; (b) ICANN’s anticipated timeline and work plan for the review specified in Section 9.3 of the Affirmation of Commitments; (c) ICANN’s work to date on any evaluation of the first round; (d) the work to date on the post-launch independent review of the Trademark Clearinghouse; and (e) ICANN’s current projection for a timetable for subsequent rounds.

This relates to a number of activities that are under way and we expect to be able to deliver the complete report in mid-September.  Here are some notes and updates on each of the points below:  

(a)    The New gTLD Program generally

As of last week, 373 TLDs have been delegated, 491 applicants have entered registry agreements, and 1321 applications are currently in process through the program.  Updated statistics are published on a weekly basis at http://newgtlds.icann.org/en/program-status/statistics, with the detail according to volume of applications within the various stages.  If there are any specific points that the GNSO would like covered in the portion of the report on the status of the program, please let me know.

(b)   ICANN’s anticipated timeline and work plan for the review specified in Section 9.3 of the Affirmation of Commitments

Preparations for this review have been under way for some time, beginning with the Board’s request for advice from the ALAC, GAC, GNSO and ccNSO on establishing definitions, measures, and targets for competition, consumer trust and consumer choice in the context of the DNS (https://www.icann.org/resources/board-material/resolutions-2010-12-10-en#6).  This resulted in recommendations from both the GNSO and ALAC, whereupon the Board formed the Implementation Advisory Group on Competition, Consumer Trust, and Consumer Choice (IAG-CCT) in September 2013 to review those recommended metrics and make recommendations to the review team based on an evaluation of the feasibility, utility and cost-effectiveness of each of the proposed 70 metrics.  The IAG-CCT has paid particular attention to baselines, to ensure that data is collected that will be important for benchmarking the impact of the New gTLD Program in these areas.  The IAG-CCT provided an interim recommendation for a consumer survey and an economic study to help capture baseline data; this recommendation was approved by the Board in March 2014 (https://www.icann.org/resources/board-material/resolutions-2014-03-27-en#2.c).  The Final Report of the IAG-CCT is expected to be provided to the Board in October, for consideration during the ICANN 51 meeting in Los Angeles.

ICANN is conducting an open RFP process to engage providers for the consumer survey (see https://www.icann.org/resources/pages/rfps-2012-02-25-en), and the RFP is in development for the economic study and expected to be published within the next two weeks.  For the additional set of metrics recommended where baselines are necessary, and that relate to in-house data, staff is already in the process of compiling the data as well as planning for tools for update and presentation of that data.

In addition to the areas of competition, consumer trust, and consumer choice, the review in 9.3 of the Affirmation of Commitments includes review of the effectiveness of the application and evaluation process, and of safeguards put in place in the program to mitigate issues.  These relate to areas discussed below in (c) and (d). 

(c)    ICANN’s work to date on any evaluation of the first round

Staff’s work in reviewing the program to date has focused on operations, efficiency, and cost-effectiveness.  We’ve also identified a preliminary set of review areas that would benefit from in-depth discussions about these elements of the program’s implementation.  As reviewing the program’s operations covers a large number of detailed considerations across a broad range of topics, we are still determining how to best organize the subject areas and review questions so that they can be logically considered and presented to the community for input.  To date, staff has held debriefing sessions with all of the panels who performed the Initial and Extended Evaluation processes so that these provider insights and identification of areas for additional consideration can also be taken into account.  

(d)   The work to date on the post-launch independent review of the Trademark Clearinghouse

This comes from GAC advice, where an independent review was proposed to take place “one year after the launch of the 75th new gTLD in the round.”  (This would be February 2015, which is the current target for this review.)  A few other activities are in process relating to rights protection that are also relevant.  First is a standing GNSO request for an Issue Report reviewing all rights protection mechanisms (current and developed for the New gTLD Program) including the UDRP and URS, to be delivered 18 months after the first delegation of new gTLDs (which occurred in October 2013).  We are on target to have significant analysis done by this time (April 2015) to inform the creation of this Issue Report.  Second, as noted above, effectiveness of the safeguards put in place for the New gTLD Program is a topic for consideration under the 9.3 Affirmation of Commitments review, and the analysis in progress is expected to be another input to that effort.  In light of the above, staff is well under way in compiling data on the usage of the new rights protection mechanisms in the program (e.g., provider statistics, review of frequent customer service questions, issues raised in user feedback) and expects that this analysis will serve as groundwork for a number of purposes, including the above independent review.  A discussion session on this topic is slated for the ICANN 51 meeting in Los Angeles.    

(e)   ICANN’s current projection for a timetable for subsequent rounds

These projections are still in process.  As many of these activities are interrelated, sequencing and scheduling the activities in a logical and efficient way can take several paths.  Additional activities, such as a root stability review, have not been discussed in the topics above but also have an impact.  We do expect to publish a projected overall timetable, as well as timelines for the individual tracks mentioned here, and will make sure that this is included in the report to be delivered. 

Also, we note that the Discussion Group formed by the GNSO motion referenced above has been convened and intends to work on issue identification and categorization as a preface to any policy development work that may be pursued by the GNSO, and will follow those developments closely.

Best regards,

Karen Lentz

Director, Operations & Policy Research

ICANN

This article by Philip Corwin from the Internet Commerce Association was sourced with permission from:
http://www.internetcommerce.org/staff-update-gtlds/

.MOSCOW and .МОСКВА Sunrise Shows Latin Characters Most Popular

The Sunrise period for the .moscow and .москва gTLDs has ended resulting in in 154 domain name registrations in .moscow and seven registrations in .москва. Which is not overly surprising given those registered within the Trademark Clearinghouse are more likely to be for larger brands.

The Sunrise period in .moscow and .москва was popular mainly among global brands including Gucci, McDonalds and H&M. The applicant with the most domains applied for was Apple with 11.

There were also a couple of generic terms registered, these being МЫ.москва (which can be translated as we.moscow) and скачать.москва (download.moscow).

Commencing 15 July, and ending 13 August, the first limited registration period commenced for the owners of trademarks and service marks valid in the Russian Federation.

The second limited registration period will run from 19 to 25 August and this will be limited to trade names, media and non-profits registered in Moscow as well as Moscow appellations of origin.

To register a domain name, a trademark owner shall contact one of the registrars accredited for the Moscow’s domains and submit the following documents:

  1. a document confirming the trademark owner’s registration as a legal entity or a sole trader
  2. a trademark certificate or an enacted judicial decision on the exclusive right to a trademark protected in the Russian Federation.

Then from 24 September to 18 November will be a Landrush period and finally General Availability will commence on 1 December. Both of these will be on a first-come first-served basis for individuals and legal entities from anywhere.

“Domain names in the Moscow extensions will now be available for a wider range of users, because they won’t have to pay for including their trademarks in the Trademark Clearinghouse,” says Dmitry Burkov, Chairman of the Board of the Foundation for Assistance for Internet Technologies and Infrastructure Development (Registry Operator for the .moscow and .москва TLDs).

“We hope that this limited registration period in the Russian capital domains will be especially popular among Russian trademark owners associated not only with large businesses but also medium-size and small businesses.”

Black Rain and Trademark Policy: Report from INTA Hong Kong by Philip Corwin, Internet Commerce Association

Philip Corwin imageIt was an omen of things to come. Just over an hour out from Hong Kong the pilot of my 777 en route from San Francisco came on the intercom. Hong Kong was temporarily closed due to torrential rain and we would need to land in Taipei to refuel before proceeding.

When we finally arrived in HKG my journey from Washington, DC was already close to 24 hours’ duration.  I cleared immigration, collected my bags, and met the driver of my hotel-dispatched Mercedes. En route the downpour began again, in sweeping waves that the locals call “black rain”. I have no idea how my driver saw the road as the wipers engaged in a futile battle with the deluge. I never spoke to him during the ride except to say “thank you” when we finally arrived at the Sheraton in Kowloon, afraid that distracting him for even a moment could have fatal consequences.

That black rain would become a metaphor for the coming deluge of Internet-related trademark law and policy proposals that could arrive as a vast storm front in the next two years. The trademark community is readying an ark to ride out the flood, and the domain investment industry must do so as well.

The Sheraton was situated directly across Hong Kong harbor from the massive Convention Center housing the annual meeting of the International Trademark Association (INTA) from May 11-14. I was attending it in my new capacity as a member of INTA’s Internet Committee, which wrestles with the intersection of trademark protection and cyberspace, as well as its Subcommittee on Internet Governance. On the first morning of the meeting I made the mistake of walking the two blocks from hotel to the Star Ferry terminal to catch the 5-minute,  two-and-a half Hong Kong dollar (33 cents U.S.) ride across to the Convention Center. During rainy season Hong Kong is akin to a giant steam bath, a mass of humanity in a cloud of humidity. I sweated through my shirt and suit on that stroll and for the rest of the stay took a taxi those two blocks to avoid a repeat of that.

Inside the cavernous convention hall, where walking from one end to the other took ten minutes at a brisk pace, it became clear how huge the world of branding is in the 21st century. Thousands were in attendance from every corner of the globe, and more than one hundred exhibitors filled a space of several acres.

While those exhibitors included booths from a variety of incumbent and new gTLD registries, registrars, and a large number of online brand protection providers, it’s no secret that the trademark world has been less than enthusiastic about ICANN’s new gTLD program — concerned about the potential for vastly expanded cybersquatting and unnecessarily draining costs for legal actions and defensive registrations. So now that the program was off the launch pad I wanted to see how the trademark sector was viewing and reacting to it.

The first feedback came at a small “Table Talk” luncheon discussion of domain name litigation and arbitration attorneys and consultants involved in the new world of 1,000-plus gTLDs. These was an informal, unofficial conversation that allow INTA members to discuss subjects among themselves. It became clear that many of the trademark experts in attendance were just beginning to focus on the new gTLD program, despite clear notice of its impending arrival and the availability of new rights protection mechanisms (RPMs) consisting of the Trademark Clearinghouse (TMCH) and Uniform Rapid Suspension (URS). Those more conversant with it were concerned by a variety of registry and registrar practices that they thought were undermining their ability to make defensive registrations at reasonable cost.

Anecdotal reports also indicated that much of the intentional cybersquatting was being done by amateurs with no understanding of trademark law — one domain industry attorney related, laughingly, how he had been asked to help broker the sale of a newly registered infringing domain to its major brand rights holder for a contingency fee, and how he had advised the registrant to just transfer the name now before he was hit with a cease-and-desist letter or worse. A major concern of discussants was whether a rights holder had to take action against every infringing domain, no matter how slight the impact, to demonstrate active policing of its rights, to protect their mark through active policing; the moderator suggested that a memo to file explaining why action had been declined might suffice, but noted that there is no way to tell how courts would treat such decisions in the context of new gTLDs.

More information came at a large general session on trademarks and new gTLDs. As of that date (May 12):

  • 46 URS actions had been filed with the National Arbitration Forum (NAF), and 3 with the Asian Domain name Dispute Resolution center (ADNDRC).
  • Complainants had prevailed in 78% of the decided URS cases, and were denied in 22%; 9 cases were still pending.
  • A total of 29,823 trademarks had been registered at the TMCH, and 97.9% had passed verification. The registrants included more than 11,000 organizations from 97 nations and involved marks registered in 117 separate jurisdictions.
  • The more than 700,000 new gTLD domain registrations had generated 46,309 Trademark Claims notifications of exact match domains to rights holders. (Note: Since the INTA meeting TMCH registrations have passed 30,000 and total new gTLD domain registrations have passed 1 million.)

Session speakers conveyed anecdotal reports of substantial levels of cybersquatting. Many rights holders appeared to be passing on TMCH registrations because they had little interest in making large numbers of defensive “sunrise” registrations at new gTLDs. Complaints were heard that the URS was unattractive because it involved perpetual monitoring of suspended domains that could later be re-registered, and that the UDRP was too slow and expensive to scale to the new world. Session attendees were reminded that ICANN would be conducting an initial review of the efficacy of the new RPMs in 2015, and that review of the UDRP would also commence next year – and were urged to document how they used the new RPMs and what their total defensive costs stemming from new gTLDs added up to.

At the meeting of the Internet Governance Subcommittee I was asked to head up a new task force to analyze ICANN’s proposal for the process to develop enhanced accountability measures to accompany the transition of the IANA functions from the US government to the multistakeholder community. This followed up on performing the same lead role regarding the IANA transition process, which resulted in submission of an INTA comment letter.

Both domain investors and rights holders appear to share similar concerns about the prospect of a termination of the remaining U.S. role absent the establishment of enhanced and enforceable accountability measures.

At the full Internet Committee I reported on the state of play of that transition and accountability process, including the key elements of ICANN’s initial proposal as well as recent Congressional oversight hearings. At that meeting I also learned more about the use of RPMs against new gTLDs. Many domain registrations that had infringement potential could not yet be the target of a URS or UDRP action because the suspect domains were still “dark” with no content, and hence bad faith use could not be alleged or proven. Overall, only 5 UDRPs had been filed against new gTLDs, so for now the URS appears to be the favored arbitration response.

I also learned at the Internet Committee meeting that the trademark community was readying itself for the major trademark law and policy debates that are likely to arise in the 2015-16 timeframe.  

The likely policy issues include:

  • Potential amendments to the US Anticybersquatting Consumer Protection Act (ACPA) — premised on the fact that the statute, developed at the dawn of the commercial Internet in 1998, was outmoded and needed modernizing, especially in the face of new gTLDs.
  • A comprehensive UDRP reform review within ICANN.
  • Review of the performance of the RPMs for new gTLDs, which will be influenced by detailed analysis of URS decisions.
  • Trademark issues related to “parked” websites.
  • Analysis of the best and worst practices engaged in by new gTLD registries.

The Committee was also getting ready to react if other parties should propose legislation related to Internet fraud, or an international treaty on cybersquatting.

I left Hong Kong with a suitcase full of business wear in need of dry cleaning – and with a much better understanding of what trademark owners are thinking about new gTLDs. While .brand gTLDs and certain new gTLD vertical categories may enhance their web presence and marketing/sales strategies, monitoring and enforcement costs are a growing concern. Even if a global brand can keep its total URS costs down to $1,000 an action for filing fees and counsel, that can readily add up to a $1 million cost per mark across the new gTLD landscape.

Hopefully, my engagement on the Internet Committee, as well as that of other domain sector attorneys, can help to bridge the understanding gap between rights holders and domainers and deliver the message that the professional domain portfolio investors represented by ICA are not cybersquatters. (That point was driven home two weeks later when I attended the TRAFFIC domain conference in Las Vegas, where major investors related their own tales of being approached by cybersquatters attempting to sell newly registered and clearly infringing gTLDs — and of telling them to get lost).

It’s prudent for the trademark sector to be gearing up for the coming Internet trademark policy debates, and it would be imprudent for the domain industry to fail to do the same. The domain community respects the measured enforcement of trademark law, and asks in return that the trademark sector recognize that domains are also valuable intangible assets — and that a reasonable balance must be established to reconcile the separate bundles of rights within trademarks and domains. ICA will be delivering that message and readying its own strategy as the debates approach.

And there are many areas where a candid dialogue may produce win-win results. Trademark owners are justifiably chagrined that a URS action only suspends a clearly infringing domain for its remaining registration period, leaving it available for re-registration and the need for a follow-up URS filing — while domain investors don’t want a domain transfer option out of equally justifiable concern that the URS could become a low-cost means of reverse domain name hijacking (RDNH). One possible reconciliation would be to amend the URS so that a lost domain is permanently barred from being reregistered. That would alleviate domainers of their hijacking concern – and take a clearly infringing domain out of circulation with no continuing defensive registration costs for the rights holder.

When it comes to UDRP reform, ICA members have discussed a variety of changes they would like to see come about, and those can be the basis for future negotiations. As for amending the ACPA, we’ll have to see what is proposed – creating secondary liability would concern the entire domain industry far beyond professional investors, including registrars and secondary markets, while a “loser pays” rule would also be of significant concern. (While there is no current indication that those items will be on any INTA wish list, they have already been floated by the DC-based Coalition Against Domain Name Abuse (CADNA)).

How these debates will play out is far from certain. But that they will soon be engaged in is absolutely certain. So everyone with a stake in the future of Internet trademark law and domain investment needs to gear up and be ready to make their case – or else be swept away by coming torrents of policy black rain.

This article by Philip Corwin from the Internet Commerce Association was sourced with permission from:
www.internetcommerce.org/black-rain-and-trademark-policy

DotLONDON Domains Available Today

What will be one of the biggest new gTLDs to launch is launching today (29 April) as .london domains become available for registration.It has been claimed there are 50,000 pre-registrations, although how many of these are duplicate requests for a .london domain, and how many will actually be registered, is not known. But it is almost certain that as awareness grows so will applications and come the General Availability there will be more than this registered.Today though marks the beginning of a three-month period during which Londoners and London businesses will be given priority in applying for a domain name. Trademark holders also receive priority. Preferences during this first phase, which runs until 31 July, is given to applicants as follows:
those with trademarks verified with ICANN’s Trademark Clearinghouse database
Londoners (those with a physical address in the City of London or its 32 boroughs) with rights to a name (such as proof of business or trading name)
Londoners (those with a physical address in the City of London or its 32 boroughs)
non-Londoners.The second phase, General Availability where equal access is given to all interested customers for all other available domain names, commences on 9 September.During August 2014, Dot London will allocate names according to priority ranking and where there is more than one applicant in the same priority ranking for the same domain name, an auction will decide who will get the name.”Londoners have a real sense of pride in their city and when we’ve talked to them about Dot London, they’re really excited about the prospect of putting London right at the heart of their businesses and online branding,” said Kit Malthouse, Deputy Mayor of London for Business and Enterprise and Chairman of London & Partners, the Mayor’s official promotional organisation for London. “The fact that there have already been more than fifty thousand expressions of interest in Dot London gives us real confidence that our city’s new domain will be a huge success.””The introduction of new domains presents an enormous opportunity for businesses to overhaul their branding and become more relevant to their customers,” said Antony Van Couvering, Chief Executive of Minds + Machines, the commercial partner of Dot London. “A Dot London web address captures the essence of London as a powerhouse of business and innovation. It’s encouraging to see how many Londoners understand how much they can gain by associating themselves more closely with one of the world’s leading brands.”

DomainSkate Protects Businesss and Brands in New Internet Landscape

DomainSkate logo[news release] DomainSkate LLC, pioneers in the domain name security space, today (21 April) announced the launch of its online brand and protection service for small and mid-sized businesses. As the world ushers in more than a thousand new domains in 2014, cyber-squatters have more opportunities than ever to misuse brand likenesses to siphon customer bases and tarnish brand recognition. The first of its kind, DomainSkate protects small and mid-size businesses and brands from these infringing domain names with proactive, active and reactive services to constantly monitor business names and patrol the web.

 As an official Trademark Clearinghouse agent, DomainSkate informs customers of their trademark rights and protections while providing the opportunity to claim domains before being offered to the public. DomainSkate alerts companies of opportunities as new Top Level Domains are released to purchase new relevant domain names. Such domains as .Hotel, .Art and .NYC are being added regularly and if they are not claimed by the proper companies, cyber thieves have the opportunity to take control, causing brand confusion and traffic theft.

“A large number of businesses are surprised that new domains are appearing on the Internet and don’t realize they are giving cyber-squatters more opportunities to take advantage of the uninformed,” explained David Mitnick, an attorney and founder & CEO of DomainSkate. “As defenders of the domain, we want our customers to feel safe from cyber-squatters and other third-parties looking to damage and defame their brands.”

Mitnick, with more than a decade of experience as an intellectual property lawyer at Amster Rothstein & Ebenstein LLP, represented clients such as Macy’s, Panasonic, JVC and other Fortune 500 companies in copyright, trademark and patent litigation. Having honed in on his abilities in Internet law, Mitnick embarked on developing DomainSkate as the premiere service to protect online brands of smaller businesses that did not have the deep pockets his former clients had.

DomainSkate provides 24-hour active protection and alerts customers when someone registers a domain similar to their brand trademark or name. If an external user latches onto a similar domain name, DomainSkate will help the original company retrieve the domain or suspend the impostor swiftly. DomainSkate assists customers in creating complaints, so their customer can submit it to the Uniform Domain-Name Dispute-Resolution and Uniform Rapid Suspension system, ensuring prompt action against offenders.

DomainSkate customers receive a free one-month trial; service starts as low as $9.99 per month or $95 per year. The company will protect up to five business names for $19.99 per month, and for $34.99 per month, up to 15 business names are guarded by DomainSkate’s alert system. There are additional discounts for annual plans. Larger businesses with more than 15 names to protect can also receive a custom quote from a DomainSkate representative. Trademark Clearinghouse submissions are an additional fee.

“We’re in uncharted territory with the record amount of new domains coming out in 2014,” said Mitnick. “We know how hard businesses work to become well respected in their industry and to be found by consumers via search, and we want to ensure their brand isn’t tarnished nor are they losing revenue because they’re simply not aware of these fast-moving changes to the Internet.”

About DomainSkate

David K. Mitnick, an intellectual property attorney and Internet law veteran, founded DomainSkate in 2011. David’s vision: a company whose cost-effective and hassle-free technology protects and recovers precious domain names. DomainSkate provide insights into the new net landscape for small and mid-sized companies.

DomainSkate’s unique brand protection and monitoring software actively alerts a user within 24 hours of a similar domain being registered. Small and medium-sized businesses achieve support with professional grade brand protection at an affordable cost. For more information and a free month of service, please log on to DomainSkate.com.

This DomainSkate news release was sourced from:
domainskate.com/domainskate-protects-businesss-brands-new-internet-landscape

TMCH Outlines Deterrent Effect Of The Clearinghouse

Trademark Clearinghouse logo[news release] As key stakeholders in the domain name world turn their attention to the ICANN Singapore meeting this week, the Trademark Clearinghouse (TMCH) can reveal that over 500,000 Claims Notices (CNIS) have been delivered, of which 95% of the queries for trademark terms are not being followed through to a live registration.  Notices issued by the TMCH are sent as a warning to anyone attempting to register a domain name which matches a trademark term recorded in the TMCH and this metric clearly shows the deterrent is working.

So far, less than 70 of the 1,300 applied for Top-Level Domains (TLDs) are both live and in the phase of accepting registrations from the general public, yet the number of warnings issued by the TMCH clearly indicates a high level of interest in trademarked terms from third parties.

The data is revealed in conjunction with a key TMCH milestone – the first anniversary since opening for submission of trademarks. To date, the TMCH is providing protection to over 10,000 brands and businesses and over 28,000 trademarks have been recorded within its database. Since its inception, the TMCH has worked continually to raise awareness of its critical function and to maximise the benefits it offers to trademark owners.  Crucially, by now it provides an ongoing notification service which is not time limited, as well as protection for previously abused terms.

Jan Corstens, Worldwide Project Director at Trademark Clearinghouse and Partner at Deloitte commented, “Our  firm message is to encourage any trademark holders who have yet to record their marks with the TMCH to come forward as soon as possible – it’s not too late to benefit. The TMCH remains the only universal rights protection system across the entire new gTLD programme and by recording protected terms in the TMCH, trademark owners are being offered the best protection available as more new domains are deployed. Together with the URS and UDRP, the TMCH completes ICANN’s right protection toolbox and is the first line of defense and the most cost efficient way before taking any litigating step.”, Corstens continued.

This Trademark Clearinghouse news release was sourced from:
www.trademark-clearinghouse.com/content/deterrent-effect-clearinghouse

.KIWI Sunrise Commences With NZ Rugby League Kicking Off Early

dotKiwi logoThe Sunrise period for .kiwi domains has opened, but don’t expect a rush of registrants given to take advantage of the Sunrise period one has to have registered their trademark in the Trademark Clearinghouse.

The Sunrise period ends on 17 March. Domains with only one application will be immediately allocated the domain, but where there is more than applicant, an auction will take place. And in mid-March the public will be able to register .kiwi domains.

One organisation registering a .kiwi domain name during Sunrise is the New Zealand Rugby League (NZRL). The NZRL have been proactive about registering their trademark with the TMCH, leaving them free to register a .kiwi domain name during Sunrise.

For more information, see the news release below:

Trademark holders have a month to get first dibs on .kiwi domain names
After more than two years of planning, Dot Kiwi Ltd. (Dot Kiwi) has opened up its exclusive registration period for trademark holders, known as the Sunrise period, today.

Trademark holders have until March 17 to secure their trademark as a .kiwi domain name. Following this date Dot Kiwi will review the applications, and for domain names with only one valid applicant Dot Kiwi will immediately register the domain name. If there are multiple trademark holding applicants for the same domain name, all parties will be invited to bid for the domain name.

.kiwi is one of the hundreds of new domain names, known as generic top level domain names (gTLDs), launching online. In mid-March .kiwi will become one of the first in the world to officially launch to the public, meaning all New Zealanders will be able to register .kiwi domain names and immediately activate them.

Tim Johnson, CEO of Dot Kiwi, says individuals and businesses are getting excited to activate .kiwi domain names in the coming months and the Sunrise period is designed specifically to protect the rights of trademark holders.

“We know New Zealand businesses around the globe have been waiting to purchase .kiwi domain names, which means in some instances more than one trademark holder might exist for a certain name. The Sunrise period gives everyone a level playing field to make sure they can get the domain names they want,” says Johnson.

To qualify for the Sunrise period, companies need to register their trademark with the Trademark Clearinghouse (TMCH), an international entity created by the Internet Corporation for Assigned Names and Numbers (ICANN) to protect the rights of trademark holders during and after the launch of new domain names such as .kiwi.

One organisation registering a .kiwi domain name during Sunrise is the New Zealand Rugby League (NZRL). The NZRL have been proactive about registering their trademark with the TMCH, leaving them free to register a .kiwi domain name during Sunrise.

Sarah Lewis, General Manager – Commercial of the New Zealand Rugby League, says “A .kiwi domain names is a great fit for our organisation. It helps us express who we are as an organisation and it connects to our national identity. It says much more about our organisation than our existing domain names.

“We’re in the process of developing our strategy for how we’re going to make the most out of the .kiwi domain name, but the first step for us was taking advantage of the Sunrise period,” says Lewis.

Robert Rolls, Commercial and Finance Director of Digiweb, welcomes the introduction of further choice for businesses and consumers in New Zealand and globally with the launch of this exciting new domain name.

“The Sunrise period is a critical phase for trademark owners to head off any potential cybersquatting risk when .kiwi domains become more widely available during the General Availability phase,” says Rolls.

For trademark holders wanting to take advantage of the Sunrise period they should visit https://dot-kiwi.com/sunrise or www.trademark-clearinghouse.com.

Information for trademark holders:
1.    All trademark holder have until the 17th of March 2014 to register their trademark as a .kiwi domain name before sales to the general public begin
2.    In order to register before the general public can, trademark holders need to register their trademark with the Trademark Clearinghouse
3.    Visit www.dot-kiwi.com/sunrise to find out how to register with the Trademark Clearinghouse – it’s quick and easy
4.    For domain names with only one applicant, after the 17th of March 2014 Dot Kiwi will immediately register the domain name
5.    If there are multiple trademark holding applicants for the same domain name, all parties will be invited to bid for it after the 17th of March 2014.

About the Trademark Clearinghouse:
The Trademark Clearinghouse (TMCH) is a centralised database of verified trademarks created to protect intellectual property rights during, and after the launch, of new generic Top Level Domains (gTLDs) to the global marketplace. To register a trademark with the TMCH trademark holders should visit https://dot-kiwi.com/sunrise or www.trademark-clearinghouse.com.

About Dot Kiwi:
Dot Kiwi will bring a completely new option to the market for customers wishing to be associated with New Zealand on the Internet, or via their email address. The .kiwi domain will offer New Zealand organisations and individuals greater choice, branding creativity and the opportunity to differentiate themselves from competitors, providing them an exciting way of proclaiming their identity online
Dot Kiwi is the brainchild of a group of ex-pat New Zealanders living in Vancouver, Canada and is a registered New Zealand company, led by seven highly experienced and reputable New Zealand-born directors, together with one Canadian with specialist ICT experience.

More information about Dot Kiwi can be found at www.dot-kiwi.com or via email to info@dot-kiwi.com.

More information about the ICANN gTLD programme can be found at its website: newgtlds.icann.org/en/.

About Digiweb Group:
Digiweb is a leading provider of Cloud Hosting, Domain Name Services and e-Commerce Payment services across New Zealand, Australia and wider Australasia via www.digiweb.co.nz and www.discountdomains.co.nz. For more information please refer to www.digiweb.co.nz/company-overview.

Trademark Clearinghouse Lets Profit Dictate Policy by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoDeloitte, the ICANN-appointed operator of the Trademark Clearinghouse (TMCH), has unilaterally decided that the complainant services side of the Trademark Claims Service will operate for an indefinite period, rather than the required 90-day period set by the consensus agreement of ICANN stakeholders regarding the implementation of new gTLD rights protection measures (RPMs).

This decision is strikingly wrong and extremely worrisome for multiple reasons:

  1. It was made without community consultation or ICANN public approval and announced in a completely non-transparent manner (in fact, it wasn’t really announced at all, but leaked to a few domain industry publications).
  2. It effectively encourages rights holders to file UDRP or URS actions against innocent and uninformed registrants who received no warning that their new gTLD domain name matched an entry in the TMCH database.
  3. It sets a precedent that the CEO of the TMCH says may be the basis for offering a similar and possibly expanded service covering domain registrations at .Com and other incumbent gTLDs – possibly as early as Spring 2014!

The first big problem is that what we have learned about this sea change has not come in the form of an explanatory press release from the TMCH’s own News service[i] or from ICANN’s general[ii] or new gTLDs[iii] Announcements pages. Instead, the select facts we have learned about this extraordinary decision comes from recent stories at Domain Incite[iv] (DI) and Domain Name Wire[v] (DNW). While those are fine publications, selectively leaking a decision of this magnitude through back channels doesn’t even begin to meet ICANN’s self-proclaimed commitment to transparency.

Further, while implementation of the RPMs has generally been regarded within ICANN as a sensitive matter, the details of which required community consensus, Deloitte made this decision without any prior community consultation.

Their response to DNW on this point is hardly reassuring:

Domain Name Wire: Who made the decision to extend the service? Was any approval from ICANN required?

The Clearinghouse is committed to offering additional, value-added services to owners of recorded marks in the TMCH database.

This will be done in consultation the broader ICANN community wherever appropriate and, where necessary, with ICANN’s approval prior to launch. (Emphasis added)

So we can only presume that Deloitte consulted with itself and decided that it was inappropriate to engage in any broader consultation with the ICANN community, and that it was unnecessary to get pre-approval from ICANN. We’d suggest that Deloitte needs a better and more objective consultant.

The second big problem is that it tosses aside the balanced community consensus approach of the existing Trademark Claims Notice procedure and establishes a completely unbalanced regime starting on the 91st day after launch of each new gTLD, whereby innocent registrants can be regarded as fish-in-a-barrel targets by trademark owners. According to ICANN’s own TMCH FAQ, “The verified data in the Trademark Clearinghouse will be used to support both Trademark Claims and Sunrise Services, required in all new gTLDs.”[vi] Well, the Sunrise service allows a trademark owner to register its marks in a new gTLD for a period of at least thirty days before domain registrations open to the general public, and the Claims period runs for the first 90 days of general registration – neither aspect was meant to be indefinite.

According to ICANN’s own explanation of the Trademark Claims procedure:

During the Trademark Claims period, 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.

If the notified party goes ahead and registers 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.

What Deloitte has now decided to do is to indefinitely extend the second part – the notice to trademark holders – while terminating any notification to innocent registrants that they may unwittingly be infringing a mark registered in the TMCH and thereby be setting themselves up as the target of a subsequent UDRP, URS, or trademark litigation action.  That one-sided approach shreds the balance set in the current Claims procedure and, once widely known, may depress registrations at new gTLDs.

Lest anyone think that ICA is suggesting that the Claims procedure be made indefinite, that is not our position and should not even be considered until existing problems are fixed. As we pointed out to ICANN (in a thoughtful comment letter that staff ignored) the current Trademark Claims Notice received by potential registrants has multiple fundamental flaws[vii].

Further, as we recently stated at the Public Forum in Buenos Aires:

We will be watching to see how receipt of that flawed Claims Notice bears on the question of whether a domain registration was made in bad faith, which will arise in both URS and UDRP actions filed against domains at new gTLDs. That will be up to the arbitration providers, who may well reach different conclusions.[viii]

On that critical point, we were hardly encouraged when this past week ICANN made clear that it intends to shirk any responsibility to provide guidance to UDRP and URS arbitration providers:

ICANN said [it]…has no opinion on the trademark notice question…On the trademark claim notice, ICANN said it’s “not a legal adjudication body and has no view on the weight that might be given to a registrant’s acknowledgement of a Claims notice in a UDRP or other proceeding.” Under the UDRP, the panel makes a determination based on the specific facts and circumstances, and, as these will vary, the consideration of the panel may differ accordingly, it said in a statement. (Emphasis added)[ix]

While it’s true that ICANN is not a “legal adjudication body” it did establish both the UDRP and URS policies, and it does accredit the UDRP and URS providers, so one would think that it might be willing to provide some view on the critical issue of the weight to be given to receipt of a Claims Notice in a subsequent arbitration. But given that it has so far been been unwilling to sort out the widespread confusion in and dissatisfaction with new gTLD top level objection procedures that have caused broad outcry among applicants who forked out $185,000 application fees, it is sadly unsurprising that it’s equally unwilling to provide clarity on an issue of critical import to the registrants on whom the entire future success of the new gTLD program depends.

The third and perhaps biggest problem is that even though the TMCH is an RPM created for use exclusively at new gTLDs, Deloitte apparently believes it has carte blanche authority to unilaterally revise the scope of the registrations that generate alerts – and to use the TMCH database to generate alerts for new registrations in .Com and other incumbent gTLDs!

According to a December 11th DI story:

There are a few initial limitations with the new TMCH service such that its registrar agents may not find it particularly labor-saving.

First, only domains that exactly match labels in the Clearinghouse will generate alerts.

By contrast, brand-monitoring registrars typically generate alerts when the trademark is a substring of the domain. To carry on doing this they’ll need to carry on monitoring zone files anyway.

Second, the TMCH service only currently covers new gTLDs applied for in the 2012 round. It doesn’t cover .com, for example, or any other legacy gTLD.

[World Wide Project Partner Jan] Corstens said both of these limitations may be addressed in future releases. The first Trademark Claims period isn’t due to end until March, so there’s time to make changes, he said. (Emphasis added)

Let’s be very clear about this. The decision that only exact matches of marks registered in the TMCH database would generate a Claims Notice to a registrant, and a follow-up alert to a rights holder if a registration was completed, was a critical and long-debated aspect of this RPM and reflects the ICANN community consensus. Given the adoption of the controversial Trademark-Plus-Fifty proposal, those actions will be also triggered by exact matches of previously abused trademark variations. In our view, Deloitte has no legitimate latitude to discard those decisions and start generating Notices or alerts based upon domain registrations that fall outside those specific categories.

Second, the GNSO Council is on record in a December 2011 Resolution that any consideration of UDRP reforms would commence no sooner than eighteen months after the launch of new gTLDs, and that consideration of the effectiveness of the new RPMs – and the question of whether they should be adopted for incumbent gTLDs – would be addressed in that process. Again, in our view, any attempt by Deloitte to make TMCH-based services available for domain registrations at incumbent gTLDs in advance of GNSO consideration – in a consensus process which cannot even commence until Spring 2015 — would be a gross intrusion upon the GNSO’s policymaking authority and an absolutely unacceptable undermining of the multistakeholder process. The entire notion is as ridiculous and offensive as suggesting that NAF or the ADNDRC could suddenly decide on their own to start offering URS arbitrations for .Com domain registrations.

The motivating factor for Deloitte’s decision seems to be that only a paltry 20,000 trademarks out of the 24 million in force marks that WIPO says existed in 2012[x] have been entered into the TMCH database. This squares with what we have heard from our trademark attorney and brand protection colleagues; namely, that most big brand companies are taking a skeptical and judicious approach to TMCH registrations, primarily entering unique and not generic brands, and generally avoiding the registration of “previously abused” variations that is allowed under the “Trademark-Plus-Fifty” decision.

Indeed, Deloitte concedes that generating additional registrations is a prime motivator for their decision. As reported in DI, “He [Corstens] added that he hopes the extension of Claims will lead to an uptick in the number of trademarks being registered in the TMCH.” And, as DNW speculated, “Why is the TMCH doing this? It may be to get more people to pay to register their marks with the service. But it could also be to get them to pay for longer Clearinghouse registrations.”  TMCH registrations are currently available for 1, 3, or 5 year terms, and we suspect that right now the majority fall on the short end of the scale.

Deloitte, which was appointed by ICANN to operate the Clearinghouse Verification Services, may be justifiably concerned that this low level of TMCH utilization will cut into anticipated profits (or even result in losses), but this hardly gives them the right to do what they have done, much less in the non-transparent and non-consultative manner they have chosen to take.

Third-party vendor profit considerations should never trump ICANN consensus policy and implementation decisions. Given ICANN’s verbal commitment to transparency, multi-stakeholderism, and registrant rights, it should immediately commence an investigation into this unilateral decision and determine whether it is proper from both a procedural and substantive perspective. That inquiry should be transparent and its conclusion should be published with adequate explanation.

We know that other parties involved in the development of the RPMs share similar concerns and will be communicating them to ICANN. We’ll be watching to see if ICANN steps up to the plate or keeps its head in the sand.


[ix] “Inconsistent Rulings Said One of Several Legal Issues That Must be Resolved to Spur Future Interest in New gTLDs”; Washington Internet Daily; December 11, 2013