Tag Archives: trademark protection

Donuts Offers Better Protection For Trademark Owners Across All Its gTLDs ‘Cheaply’

Donuts is rolling out an expanded service allowing trademark owners to protect their trademarks and related terms across all of Donuts’ new generic top level domains (gTLDs) at a fraction of what it would cost to defensively register the same terms. The upgraded service commences 1 October and runs for three months.The service, DPML Plus, seeks to build on its legacy Domains Protected Marks List (DPML) programme. The popular DPML service is already employed by thousands of subscribers, including several Fortune 500 companies such as Target, Verizon, Costco, Apple, HP, Microsoft and Amazon.Donuts operates 195 new gTLDs that account for 1.806 million domain name registrations, or 7.41 percent of all new gTLD domains registered. The largest of Donuts’ new gTLDs is .guru with 60,400 registrations followed by .email, .today and .solutions, all of which have over 50,000 registrations.DPML Plus takes their brand protection one step further enhancing DPML by allowing brand owners to widen protections, including, for the first time, common misspellings of their marks. Donuts explain that brand owners will also be able to:

  • Block their marks and mark-related terms from registration for an initial 10-year period.
  • Block one exact match term and three additional strings (legacy DPML covers one string) that contain a mark or common misspellings of the mark (further “contains” or misspelled terms beyond these three strings are available to block for an additional fee).
  • Also for the first time, block a mark in premium second-level domains across all Donuts’ gTLDs.

DPML Plus blocks are not subject to overrides by other parties with the same trademark. DPML Plus subscribers may submit unlimited overrides of their own blocked terms (for no wholesale override fee) if they elect to register and use their previously blocked terms.Registration for DPML Plus will open 1 October and close 31 December 2016. The company’s suggested retail price for DPML Plus is $9,999. DPML applications may be submitted only through a registrar authorised by Donuts to provide the service.”The DPML program has provided a cost-effective way for owners of the world’s most recognisable brands to protect their trademarks across a significant portion of the new Internet landscape,” said Richard Tindal, Donuts co-founder and Chief Operating Officer. “The DPML Plus promotional offering provides a truly unique opportunity for us to partner with brand owners to ensure that usage of new domain extensions is correctly tailored to their precise needs.”Once the DPML Plus programme ends, the price of its legacy DPML service will be increased from 1 January 2017 to better align the service’s benefits with its marketplace value. Existing DPML subscribers can renew their subscriptions at current pricing before 1 January.The DPML programme was developed in consultation with intellectual property experts and, say Donuts, has been extremely well received by the trademark community. DPML works by “blocking” a string of characters from registration at the second level (the characters before the dot). The string may be an exact match of the mark or may contain the mark within it (the mark may be at the beginning, end or anywhere in the applied-for label, so long as it is contiguous).

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.”

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:

Donuts’ Sales Of Trademark Protection Tool Service Booming

Donuts logoWith new gTLDs becoming available to the public for the first time at the end of January, Donuts, the leading applicant for new gTLDs, has announced they are rapidly increasing sales of for its groundbreaking trademark protection tool, the DPML.

Donuts believe the rapid adoption of the DPML by rights holders since its September 2013 launch reflects the tremendous appetite in the trademark community for tools that reduce the cost and challenge of protecting marks in hundreds of new gTLDs. DPML addresses those concerns by allowing registrants to protect their marks in hundreds of domains with a single transaction and at a fraction of the cost of defensive registration.

The service is available for subscription through participating domain name registrars accredited by ICANN. DPML works by “blocking” trademark-related terms from registration at the second level (the characters before the dot). A DPML term is blocked from registration in all Donuts TLDs for an initial subscription of a minimum five- and maximum ten-year term. Subscriptions can be renewed thereafter for one- to ten-year terms.

ICA on the Record at ICANN Buenos Aires by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoThe following remarks were delivered to ICANN’s Board and senior staff by ICA Counsel Philip Corwin during the Public Forum (buenosaires48.icann.org/en/schedule/thu-public-forum) held on the afternoon of Thursday, November 21st at the 48th ICANN meeting in Buenos Aires, Argentina:

Good afternoon. Philip Corwin, speaking on behalf of the Internet Commerce Association, which I am proud to represent on the Business Constituency [BC].

As the new gTLD program launches there will be a focus on the operation of the new rights protection mechanisms – the RPMs.

We know that trademark owners will be watching. But so will registrants. And their perception of whether domains at new gTLDs have secure legal status, whether they are protected from abusive hijacking and can provide a sound foundation for business and speech, will impact the long-term success of the program.

ICA remains concerned that the Trademark Claims Notice is still flawed. We filed comments on this but no changes were made.

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. This again points out the need for a better agreement between ICANN and URS providers than the current two-page MOU.

There also should be a standard enforceable agreement between ICANN and UDRP providers, a position endorsed by the BC. In September the BC sent a letter to ICANN that raised questions about the UDRP Status Report issued the day after the Durban meeting ended. Two months later the BC is still waiting for a response.

So, absolutely, trademark rights must be protected. But registrant rights must be protected as well, through fair, consistent, and balanced application of the new RPMs and the UDRP.

Thank you.

[Note: As the official transcript of the Public Forum is not yet available, this statement has been transcribed from the speaker’s outline for his remarks.]

This posting was sourced with permission from the Internet Commerce Association website at:

Donuts Launches Trademark Protection Service Across All Its gTLDs

Donuts logoDonuts have launched a service to protect trademarks in new gTLDs. The service is being touted as a cost-effective means of protecting trademarks “at a fraction of the cost of ‘defensive’ domain name registrations.”

The service is called Domains Protected Marks List (DPML) and works by “‘blocking’ trademark-related terms from registration at the second level” in all Donuts operated TLDs “for an initial subscription of a minimum five and maximum ten-year term. Subscriptions can be renewed thereafter for one to ten-year terms.”

Donuts applied for 307 gTLDs, although the final number it will operate is not yet certain, but Domain Incite reports it has “currently has 28 registry agreements with ICANN and 272 applications remaining in various stages of evaluation.” And it has been reported the service will cost $600 per year for each trademark string across all Donuts-operated gTLDs. Meaning that if all applications go through, it would cost $2 per trademark string.

For more information, see the news release below:

Donuts Launches Domains Protected Marks List [news release]
Donuts Inc., a registry for new generic top-level domain names (gTLDs), such as .BUSINESS, .EMAIL and .SERVICES, has launched the Domains Protected Marks List (DPML), a groundbreaking mechanism allowing trademark holders to protect terms in all Donuts-managed gTLDs at a fraction of the cost of “defensive” domain name registrations.

The service is now live and available for subscription through participating domain name registrars accredited by ICANN.

DPML works by “blocking” trademark-related terms from registration at the second level (the characters before the dot).  A DPML term is blocked from registration in all Donuts TLDs for an initial subscription of a minimum five and maximum ten-year term. Subscriptions can be renewed thereafter for one to ten-year terms.

“For the more than eight years spent developing the new gTLD program, trademark rights protection has been critical to advancement of gTLD expansion,” said Donuts COO and co-founder Richard Tindal.  “Marks holders are concerned about potential abuse of their brand names. DPML and the other mechanisms we’ve elected to provide ensure brands are even more extensively protected now than they ever have been, and at low cost.”

DPML Features and Requirements
A trademark holder must first register a mark with the Trademark Clearinghouse (TMCH), ICANN’s centralized trademark database.  The mark must be registered according to the “use” standard.
Brand owners may then submit an exact match of a mark, or a term that contains an exact match, to DPML.  Once verified with a validated TMCH entry, that term can be blocked in Donuts gTLDs.
A domain name blocked by DPML is not functional, meaning it may not be used for a website URL, e-mail address or other domain name-related functions.
Retail pricing for DPML subscriptions is at the discretion of the registrar.
Certain restrictions apply to premium names, three-character names, and other various applications of the service.

Brand specialists welcome DPML Domain name registrars that largely serve brand and trademark-focused clients have applauded the Donuts system as a welcome advancement.

“Companies have legitimate concerns about protecting their brands in the new gTLD environment and have been asking for this type of protection,” said Elisa Cooper, Director of Product Marketing at MarkMonitor, part of Thomson Reuters.  “The Donuts DPML service provides a cost-effective alternative to defensively registering domains and we feel this is an important option for our clients.”

DPML is keenly anticipated by European registrars as well.  “This is a service of real value to our clients,” said Markus Eggensperger, a founder of united-domains AG of Germany.  “Donuts has carefully taken into account brand protection needs and provided a thoughtful and effective service to brand owners.”

Donuts gTLD schedule According to ICANN’s schedule for evaluation and delegation of new gTLDs, Donuts expects its first gTLDs to become available later this year.  Because DPML subscriptions don’t block domain registrations made prior to that subscription, brand owners should consider subscribing prior to the launch of the first Donuts gTLD.

About Donuts Inc. Donuts is a domain name registry that is widening competition and choice in Internet identities through hundreds of new top-level domain name choices, securely operated in multiple languages and character sets.  Donuts is headquartered in Bellevue, Wash., with offices in Southern California, Washington, D.C. and London.  For more information, please visit www.donuts.co.

Last Contractual Hurdle Cleared in New gTLDs Introduction With Board Approving Registry Agreement

The ICANN New gTLD Program Committee of the ICANN Board of Directors has approved the 2013 Registry Agreement (RA) meaning the introduction of new generic Top Level Domains have moved a step closer.”New gTLDs are now on the home stretch,” said Chris Disspain, a member of ICANN’s New gTLD Program Committee, in a statement. “This new Registry Agreement means we’ve cleared one of the last hurdles for those gTLD applicants who are approved and eagerly nearing that point where their names will go online.”Among the key points in the new Registry Agreement:

  • Includes a Trademark Clearinghouse that will serve as a one-stop shop where trademark holders can protect their rights.
  • Provides for a process for a rapid, efficient way to take down infringing domain names.
  • Provides a procedure where trademark rights holders can assert claims directly against a registry operator for domain name abuse if that operator has played an active role in the abuse.
  • Requires registry operators to have a single point of contact responsible for handling abuse complaints.

“We’re getting to the point now where new gTLD applicants can see the finish line,” said Akram Atallah, President of the ICANN’s Generic Domains Division. “Much like the 2013 Registrar Accreditation Agreement approved by the Board last week, this new Registry Agreement is the culmination of input from a wide range of stakeholders and marks a dramatic improvement over the previous baseline agreement.”The New gTLD Registry Agreement is intended to enhance the security and stability of the Domain Name System while bolstering competition in domain name industry. The security provisions include:

  • A requirement that registry operators implement Domain Name System Security Extensions (DNSSEC), reducing so-called “man-in-the-middle” attacks and spoofed DNS records.
  • A requirement of enhanced WHOIS service at the registry level with a common interface, and more rapid search capabilities, facilitating efficient resolution of malicious activities.

“This isn’t just a gradual step forward,” said Atallah. “This is a major move that translates to far greater security protections.”

NCSG Cites ICA in Request for ICANN Board Reconsideration of TMC Claims “Trademark + Fifty” Decision by Philip Corwin

Internet Commerce Association logoOn April 19, 2013 ICANN’s Non-Commercial Stakeholders Group (NCSG) filed a formal Request for Reconsideration with ICANN’s Board Governance Committee to review a unilateral staff decision to expand the scope of the Trademark Clearinghouse (TMC) claims service for new gTLDs. That decision would allow trademark owners to include up to 50 additional typographical variations of each accepted trademark in the TMC database (letter at www.icann.org/en/groups/board/governance/reconsideration/request-gross-19apr13-en.pdf).

The claims service serves two purposes – conferring the ability for trademark owners to participate in an advance sunrise registration period at each new gTLD, and generating automated warning letters to potential registrants that a domain they are seeking to generate was a registered trademark – or, under the adopted 50-plus rule, had been the subject of a prior UDRP or judicial enforcement action. That latter aspect is particularly worrisome because, as NCSG Chair Robin Gross explained in a related article:

Under staff’s plan, large trademark holders that register in the clearinghouse will be provided thousands of derivations of their trademarks since each separate country’s registration of the same trademark provides the brand owner with an additional 50 entries in the TMCH.(Emphasis added) www.circleid.com/posts/20130501_icann_board_asked_to_review_decision_to_expand_trademark_rights/

That means that the potential registrant of an intended website at one of the 1400 new gTLDs, seeking to use a domain name having no trademark protection and with no intent to infringe, might nonetheless receive a warning of potential infringement – a warning that might later be cited as evidence of bad faith registration by an aggressive trademark owner in a UDRP or URS filing. This would constitute an unjustified expansion of trademark rights – which ICANN stated as the basis for its prior position that it lacked the power to adopt such a policy – and would undoubtedly halt many perfectly valid domain registrations from ever taking place at new gTLDs. It’s not even clear whether a potential registrant receiving the warning would be told if the intended domain was an actual trademark or just a typo.

Ms. Gross’ article cites a March 22nd ICA posting in which we recounted the history of this issue – including repeated ICANN statements that such expansion was beyond its powers and raised policy matters that must be addressed by the GNSO Council rather than staff – and we observed “that it is difficult to justify adoption of a mechanism that flies in the face of ICANN’s own prior statements, that was identified as a policy matter deserving further community input by the policymaking body responsible for gTLDs, and that raises profound issues for the operation of new gTLDs as they approach launch as well as for Internet free speech….It’s all fine and good to tout the bottom-up, multi-stakeholder process when ICANN is under siege, but it would seem appropriate for it to actually be observed when it counts on important policy issues rather than witness top-down decision-making.” (internetcommerce.org/ICANN_Amnesia)

As for what happens now that the request for reconsideration has been filed, Ms. Gross’ article explains:

ICANN’s Board Governance Committee has thirty days in which to make to a recommendation to ICANN’s Board of Directors regarding the NCSG’s Request for Reconsideration or report to the Board on why no final recommendation is available and provide a timeframe for making a final recommendation on the matter. ICANN’s entire Board should consider the recommendation of the Board Governance Committee at its next regularly-scheduled Board meeting…NCSG requests that the Board reinstate the community-developed policy of giving trademark holders rights to include exact matches of their trademark only in the TMCH, which was the policy stated in ICANN’s Applicant Guidebook when ICANN accepted applications for new domains.

ICA commends the NCSG for filing this important request that ICANN observe proper decision-making procedures. We fervently hope that the Board Governance Committee will take the request seriously and recommend that the full Board reverse this unwarranted staff decision. On both procedural and substantive grounds, it is clearly the correct call to return this matter to the full GNSO Council and let it perform its policymaking role. This is a decision for stakeholders, not staff.

This article by Philip Corwin from the Internet Commerce Association was sourced with permission from:

ICANN Amnesia – Expansion of Trademark Clearinghouse Data Contradicts Very Recent Statements by Philip Corwin

Internet Commerce Association logoICANN’s institutional memory seems to be slipping, and that concerns us.

On March 20th, ICANN announced that trademark owners would not only be able to register their marks meeting certain validation criteria in the Trademark Clearinghouse (TMC) but also up to fifty variations of each mark that had been found to be the subject of abusive registrations in a UDRP arbitration or court decision (see newgtlds.icann.org/en/about/trademark-clearinghouse/strawman-solution-memo-20mar13-en.pdf). This will change the nature of the TMC from a repository of high-quality trademarks to something quite different.

Regardless of how one feels about the substance of the decision (and ICA was on record as against this expansion – see internetcommerce.org/Strawman_Non-Solution) the procedure by which it was reached flies in the face of ICANN’s own statements as to whether it had the authority to implement such an expansion and how it would deal with new gTLD issues identified as policy matters by the GNSO Council.

On September 19, 2012 – just six months prior to the “Strawman Solution” decision reached this week — ICANN CEO Fade Chehade dispatched a letter that informed senior members of the US Congress that this very expansion of the TMC database would put ICANN in the position of creating IP rights rather than protecting them:

“It is important to note that the Trademark Clearinghouse is intended to be a repository for existing legal rights, and not an adjudicator of such rights or creator of new rights. Extending the protections offered through the Trademark Clearinghouse to any form of name would potentially expand rights beyond those granted under trademark law and put the Clearinghouse in the role of making determination as to the scope of particular rights. The principle that rights protections ‘should protect the existing rights of trademark owners, but neither expand those rights nor create additional rights by trademark law’ was key to work of the Implementation Recommendation Team…” (Emphasis added)

Likewise, ICANN’s own Summary of the Strawman Solution, issued on November 30, 2012 when it solicited public comment on all the proposals it encompassed, contained this highly relevant statement:

“The inclusion of strings previously found to be abusively registered in the Clearinghouse for purposes of Trademark Claims can be considered a policy matter. This proposal provides a path for associating a limited number of additional domain names with a trademark record, on the basis of a decision rendered under the UDRP or a court proceeding. Given the previous intensive discussions on the scope of protections associated with a Clearinghouse record, involving the IRT/STI, we believe this needs guidance from the GNSO Council.” (Emphasis added)

Well, what guidance did ICANN receive from the GNSO Council? On   February 29, 2013 its Chair dispatched a letter to CEO Chehade providing the policy guidance that he had requested of it (see gnso.icann.org/bitcache/d8eaf7ce8d121b69d340d1d14223520fd7d478b3?vid=46277&disposition=attachment&op=download). And this is what the GNSO Council’s letter stated in regard to the proposed expansion of the TMC database:

On addition of names to TMCH previously subject to UDRP or legal proceeding

The majority of the Council believes this suggestion deserves further examination, not only to protect the interests of rights holders, but also to ensure latitude for free speech through lawful and non-abusive registrations.  Councillors respectfully observe that the existence of a domain name in the root system is not necessarily evidence of abuse, and that a subsequent registrant may have legitimate and non-infringing use in mind for a domain name corresponding exactly to a term that was the subject of previous action. 

Accordingly, the majority of the council finds that this proposal is best addressed as a policy matter, where the interests of all stakeholders can be considered.  (Emphasis added)

Back on January 31st of this year, when ICANN solicited feedback on the Staff Paper “Policy vs. Implementation – Draft Framework for Discussion”, what did that framework say in regard to matters identified as falling into the policy category? It proposed that when policy guidance was sought from a relevant supporting organization, like the GNSO, and when that guidance identified an issue as constituting policy, it should be subsequently addressed through a Policy Development Process (PDP) or a Policy Guidance Working Group (PGWG). But of course neither step was taken following receipt of the GNSO’s letter just three weeks ago. Instead, ICANN made a unilateral decision to ignore the GNSO’s recommendation and adopt the proposal absent any further policy development.

Instead, here is how the March 20th announcement describes the decision to expand the TMC database:

Trademark Claims Protection for Previously Abused Names

The fourth element of the Strawman model was a proposal that where there are domain labels that have been found to be the subject of abusive registrations (for example, as a result of a UDRP or court proceeding), a limited number (up to 50) of these could be added to a Clearinghouse record. These names would be mapped to an existing record where the trademark has already been verified by the Clearinghouse.

This element of the proposal was referred to the GNSO specifically, as the scope of protection derived from inclusion in the Trademark Clearinghouse was discussed previously. The GNSO advised that this should be a policy discussion rather than an implementation change. The GNSO Council communication also made reference to the stated principle that the Trademark Clearinghouse is intended to be a repository for existing legal rights, and not an adjudicator of such rights or a creator of new rights.

Having reviewed and balanced all feedback, this proposal appears to be a reasonable add-on to an existing service, rather than a proposed new service. Given that domain names would only be accepted for association with an existing Clearinghouse record, and only on the basis of a determination made under the UDRP or national laws, the proposal would not require any adjudication by the Clearinghouse. Additionally, the provision of notifications concerning associated domain names would not provide sunrise or other priority registrations, nor have a blocking effect on registration of these names by any party.

It is difficult to justify omission of a readily available mechanism which would strengthen the trademark protection available through the Clearinghouse. Given that the proposal relies on determinations that have already been made independently through established processes, and that the scope of protection is bounded by this, concerns about undue expansion of rights do not seem necessary.

Based on this analysis, ICANN intends to proceed with implementing this aspect of the proposal.

As one can see, there is no reference to ICANN’s own recent earlier statements that this expansion would indeed create new rights and that it was a policy matter rather than an “add-on” to an “existing service”. There is also no explanation of why ICANN brushed aside the GNSO’s feedback that this was a policy matter that required further input from all stakeholders and substituted its own analysis for that of the community represented by the Council. And there is also no explanation of who made this decision, although clearly it was the work of senior staff and officers. As for the statement — “It is difficult to justify omission of a readily available mechanism which would strengthen the trademark protection available through the Clearinghouse.” — if that’s the decision-making criteria, why stop at 50 additional typos, why not permit inclusion of hundreds or thousands of typos (as no doubt trademark interests will soon advocate) and turn the TMC into a system that issues a torrent of warnings to new gTLD registrants who may lack the slightest scintilla of infringing intent, much less actual post-registration infringing use?

Our response would be that it is difficult to justify adoption of a mechanism that flies in the face of ICANN’s own prior statements, that was identified as a policy matter deserving further community input by the policymaking body responsible for gTLDs, and that raises profound issues for the operation of new gTLDs as they approach launch as well as for Internet free speech.

On the same day that the announcement on adoption of the Strawman Solution was made, ICANN released a video in which CEO Chehade stated in regard to the TMC expansion that “we came to the conclusion that it’s an implementation expansion”(see http://blog.icann.org/2013/03/new-gtld-milestones-and-deadlines/). Now we are wondering which “we’ he was referring to. It certainly was not the “we” embodied in the GNSO Council, and it’s certainly not the “we” comprised of the all the stakeholders who would have had a chance to have their interests and views considered if the GNSO’s recommendation had been followed. It’s all fine and good to tout the bottom-up, multi-stakeholder process when ICANN is under siege, but it would seem appropriate for it to actually be observed when it counts on important policy issues rather than witness top-down decision-making.

It’s also worthwhile to debate the difference between policy and implementation, but that doesn’t mean much when settled policies are suddenly categorized as ‘services” and major alterations as mere “add-ons”. And there’s little point in the community relying on ICANN statements that appear to have a shorter shelf life than many grocery items.

We all understand that policy needs to evolve over time, but public declarations made just six months ago can’t be overridden as if they never existed. Not if ICANN’s own credibility is to be preserved, and not if stakeholders are to continue to engage in a multi-stakeholder process. Many may decide it’s not worth the effort after ICANN actions indicate that community input can be ignored and that its own positions and procedures can be cast aside without warning or adequate explanation.

This article by Philip Corwin from the Internet Commerce Association was sourced with permission from:

The New Dot Context: How to Mitigate Trademark Concerns in ICANN’s New gTLD Program by Ben Boroughf, Illinois Institute of Technology – Chicago-Kent College of Law

Abstract: Expanding the Domain Name System without fully addressing the impact on trademark holders is a risk that ICANN has seemed to embrace. With ICANN’s new gTLD program, consumers and companies will soon begin encountering new top level domains that reflect a company’s brand or trademark.Unfortunately, with the inclusion of these so called .brand top level domains, ICANN is creating potentially disastrous problems for trademark holders, legitimate users, and even consumers: a .brand focus limits the use of identical trademark online and prevents the Domain Name System from having any real and reliable context to distinguish identical trademarks.To mitigate these problems, and to ensure that trademarks can coexist within a trademark-distinguishing context ICANN should eliminate the .brand top level domain and should focus on context-creating category top level domains. This article demonstrates why these problems exist within ICANN’s new program and sets forth a proposal that seeks to mitigate these trademark concerns and to realign the new program with ICANN’s own goals and with the purpose of trademarks.To download this article in full, go to: