Colombia is yet another country to follow the fashion and to initiate a process of liberalization of its national extension: CO. This liberalization follows actually the reassignment for the extension of Colombia, which, from next February 07 will no longer be managed by the University of the Andes , but by an American start-up. The main advantage of this first level national extension, .CO, is obviously that “CO” is the broadly used diminutive for “Company”. Therefore it is very likely that many companies will want to buy a domain name containing their business name suffixed by. CO. In other words, .CO might become for companies what .ME is for individuals, namely a way to show to the world what they are. CO is however (dangerously) close to COM. That very proximity is also a source of danger to brand owners. Indeed, just look at what happened to Cameroonian .CM, which was liberalized last year: According to the Security Software editor McAfee, 80% of the domain names registered under .CM have been registered unlawfully. cybersquatters have based their strategy one a very common typo error: the omission of the “o” in “.COM” when the user writes a URL in his browser. And, alas, given the registration requirements announced by the new Registry, namely none, since .CO will be an extension without any restriction or required documents, we can bet that .CO will be a cybersquatters Eldorado. Nonetheless, the new .Co registry has decided to begin the liberalization with a Sunrise period, followed by a landrush in order to allow trademark owners to registrer their trademark under .CO before cybersquatters.

.CO Logo

The opening will be done in 4 steps before total opening:

• First, as from March 1st and throughout the month of March, the holder for a .COM.CO registered before the 30/07/2008 will be able to register the equivalent of their domain name under .CO.

• Then, from April 1 to 20, a second period begins, allowing holders of registered trademarks in Colombia before July 30, 2008 to register a domain name matching the mark. If a domain is desired by many trademark holders, it will be given to the highest bidder in an auction process.

• Next, from April 26 to June 10, holders of trademark registered anywhere (not necessarily designating Colombia) before July 30, 2008 can register a domain matching their trademark. Again, if several brand owners compete on  the same domain, it will be allocated  to the highest bidder in an auction process.

• After that, from June 21 to July 13, the so called landrush will begin: Everyone will be able to purchase a domain name. However, again, if several people wish to become the holder of the same domain, it returns to the highest bidder in an auction process.

• Finally, from July 20, 2010, anyone will be able to purchase a domain name on a first-come, first served basis.

We do not know yet the price that will be charged by the Registry of Colombia during the various waves of registration. We will keep you informed as soon as this information we will be notified by the registry.

Adrien Palumbo

http://is.gd/5RzgO

The RESTENA foundation, which manages the Luxembourg ccTLD (.LU) has announced several update of their policies. This decision could widely increase the number of .LU domains (there were 47,797 on December 31 2009).

First of all, from February 1st 2010, it will be possible to register .LU Internationalized Domain Names (IDN). It will be possible to registrer a domain name with the following characters:

ä - ö - ü - à - â - æ - ç - è - é - ê - ë - î - ï - ô - ù - û - œ

A two month sunrise period will occur in order to protect former .LU domain names holders against cybersquatting. Indeed, until april 1st 2010, only .LU domain names holder’s will be able to register the equivalent of their domain name in IDN. It is quite original that a sunrise period does not protect Trademark holders, but former domain name holders. With that kind of sunrise, a cybersquatter with the good ASCII domain name will have the priority on a Trade Mark owner… Anyway, after that sunrise period, registrations will be performed on the « first-come, first-served » basis.

In order to assure yourself a .LU IDN, you can already register the non-IDN equivalent of that domain name. It will allow you to be part of the sunrise period.

The following table shows the complete list of accepted equivalence during the sunrise period:

Another big change that will happen on February 1st 2010 is the end of the local administrative contact requirement. Nowadays, you need a local contact to register a .LU domain name. But from February 1st 2010, the .LU will be completely open. Anyone from any country will be able to register a .LU domain name without any requirement.

Of course, if you wish register a .LU domain name before the plausible opening rush, you can already do it by using IP Twins local administrative contact.

Adrien Palumbo

RIINA PÄRN, Estonian Patent Attorney at  INTELS (intels@intels.ee) has kindly provided us with the latest update on the forthcoming changes in .EE domain Registration

Reforms under ccTLD .EE (Estonia) are pending. The liberalization process is expected to start as from February 1, 2010

RIINA PÄRN, DR

The currently valid Official Regulations on Registration of Domain Names under .EE (Official Regulations) allow only one second level country-code top-level domain name per person, at which the eligibility requirement regarding the local presence requirement shall be met.

For reforming and liberalizing the currently valid system, the foundation Eesti Interneti SA has been established, which shall be responsible for the management and registration of the domain names under .EE in accordance with the new Domain Name Rules. The term as February 1, 2010 has been announced for the start of the new era under .EE, i.e. the date when the new Rules will be effected and the 6 months transition period starts. (update: the liberalization process is not going to start as from February 1, 2010. No new deadline is determined.)

The draft of the new Rules is published on the website of Eesti Interneti SA (not translated in English yet). The major changes concern no number limits to the domain names per person. Foreign persons may acquire domain name registrations in presence of Estonian administrative contact, the registration and annual fees for the domain name registrations will be implemented, the applications for the domain name registrations shall be filed through Internet Service Providers (ISPs).

During the 6 months transition period the registration of domain names according to the valid Official Regulations will be terminated, the registration of domain names under new Rules will be initiated and the prior registered domain names shall be re-registered with the ISPs. During the transition period, only owners of domain names registred before the start of the new era under .EE will be able to register them. After the transition period, if those names have not been registered, they would be registered by anyone.

The new Rules do not contain any references to the Sunrise period or other preventive measures for the owners of earlier rights. However, the head of Eesti Interneti SA has expressed his concern that the separate rules for the trademark owners during the transition period will be provided. Also the voluntary Alternative Dispute Resolution procedure will be introduced.

In order to be able to obtain the domain name registrations under .EE before the start of the liberalization process and to minimize the risks, it is possible currently to file the exceptional domain name applications with the Registry on basis of, for instance, existing Community Trademark rights. The local presence requirement shall be still met, however, the local proxy services may be used. For the clients owing the registered Community Trademarks and being interested in the domain name extensions with .EE, we would recommend applying the exceptional domain name applications before the start of liberalization.

Riina Pärn

.DO becomes unrestricted, and IP Twins offer you to register domains names under this first level extension.

© J. Howard Miller

Today, Thursday, December 10, in addition to .eu IDNs registration opening, a new ccTLD will join the long list of unregulated local extensions.
Indeed, the Dominican Republic has decided to open wide the doors to the registration of domain names under the national extension: the .DO; whereas previously, it was impossible to register a domain name directly under this extension. Foreign companies could only register 3rd level .com.do domains and were moreover limited to the registration of a domain name matching their corporate name.
The rules, therefore, change completely and now, everybody can register a .do domain name. This change has been done whitout any “sunrise period”, which is kind of dangerous for Trademark owners, since any third party will be able to register their trademark as domain name. The only credit given to the rightful owners of domain names is to enable them to file in priority a .do domain name corresponding to the .com.do they registered before October 30.

Registration is based on the “first come, first served” principle. However usual limitations apply: The size of the domain name must be between 2 and 63 characters, it should not be one of the terms usually reserved, such as city names, technical terms or other generic extensions.
To summarize, it is now as easy to register a .do as it is to register a .com, with the same risk of cybersquatting for trademark holders. The only differences are a requirement to an initial registration of two years and registration fees slightly higher.
This extension is very interesting for companies wishing to develop their activities in the Caribbean. It may also be helpful to reserve a domain name under this extension in order to prevent a cybersquatter from doing it before you.

Adrien Palumbo

The Draft Applicant Guidebook, version 3 (DAG 3 ) comment period is definitely over since the 26th of November.

More than 150 comments have been sent to the ICANN forum. Most of them come from small business owners and individuals, even if most of the Internet giants (such as Yahoo!, Microsoft or Go Daddy…) have sent their comments too.

Some big trademark owners (Coca-Cola, Olympic Committee, Visa…) have also submitted there point of view to ICANN. New gTLD investors had also their say (for example from the applicants for  .berlin).

http://tinyurl.com/6f2ds4

Obviously, reviews vary according to commentators. Most of the small business owners can’t wait to see the opening of the Saison, so as to have a better presence on the Web (and… a  return on investment). Thus the small business owner “Matha Elena”, concludes her review on DAG 3 as follows:

« I believe there is real merit to the idea of regional top-level domain names and as such it is my sincere desire that your follow through on your charter to open the internet to new TLDs as soon as possible. »

One may raise their eyebrows  at the sight of all these comments calling for the arrival of new regional gTLDs (as know as GeoTLDs): some sentences are indeed very similar from onecomment to another. Have they been written by the same entity?

On the contrary, large firms seem to be very averse to the idea of the multiplication new extensions. Especially in the current conditions of DAG3 which, in their opinion, does not ensure sufficient protection of trademarks against cybersquatting. Thus, for The Coca-Cola Company (TCCC):

« TCCC appreciates the brand protections that ICANN has already proposed. However, as the introduction of new gTLDs moves forward, TCCC urges ICANN to reconsider the speed and breadth of this undertaking and to seize the opportunity to put in place the additional mechanisms proposed by the IRT that would help alleviate the fraud and abuse that occurs even in the current systems. »

Another point often raised by these large companies, holders of at least several hundreds of brands, relates to the evaluation period, which they see as too short. Similarly, the time allowed for comment on DAG3 is also deemed as too short.

The IOC (International Olympic Committee) will even request the termination of the new gTLDs program, arguing that a non-profit organization cannot bear the cost caused by an increasing number of cybersquatted domain names:

« The IOC maintains its position that ICANN’s New gTLD Program is inherently flawed and injurious to owners of famous Trademarks – particularly non-profit trademark onwners. »

All large companies support the implementation of the IRT’s ideas  (IP clearing house, Uniform Rapid Suspension…) in the next DAG.

The start-up hoping to be awarded the management of new gTLDs are not tender with ICANN either. While some deride Icann’s expenses for its future new seat decided by the new chairman of ICANN, other question the fees to be paid for applying:

Why are fees so high? And why can they not be reimbursed, even partially, on failure of the procedure?

But the remark which occurs most often is that the start up needs a guide line with a date of entry into force, in order to keep the confidence of their investors (that ICANN –since the last Seoul meeting- refuses to do so as not to  be limited by time). Some of them are also afraid of the cost that they would engage to respect the IRT recommendation if they became part of the final Applicant’s Book.

On the basis of all these comments, representing contradictory interests, we can see the challenge that faces ICANN: merge the interests of trademark owners (who want to slow down) with those of the lobby which pushes for the massive opening gTLDs as soon as possible  and dream of an acceleration of the process

ICANN will have to make a choice at least between these two views.

We can only hope that trademark holders will not be the ones to pay the price of an unsatisfactory compromise.

Adrien Palumbo

The 36th  ICANN meeting in Seoul  is not yet finished, however, from the IP and Trademark perspective which is at the centre of our attention we are tempted to summarize it as follows: “one step forward (IDNs extensions to be launched soon, namely domain extensions in foreign characters, such as .рф for the Russian Federation…), two steps backward (lack of consensus on adequate protection of Trademark rights in the new gTLDs processs to further delay progresses in that direction).

To the question “where are we now in terms of Trademark Protection in the new gTLDs“, a clear response has been given by J.Scott Evans (Yahoo!), at the meeting of the Intellectual Property Constituency (IPC) of the GNSO:

1) there is an ICANN commitment to adequately address issues of Trademark Protection related to the launch of new gTLDs

2) ICANN was provided by the IRT with a final report which was a compromise, and which followed solutions adopted in previous new TLDs launches.

3) Unfortunately, the latest version of the Draft Applicant Guidebook (DAG3) seems to have  more or less emptied the IRT’s report from that substance, omitting the IP Clearinghouse and mentioning the URS only as ” good practice”!

The IP Community needs the URS to be compulsory. Should this not be the case, trademark issues with new gTLDs  will not be solved.

We are thus in a situation where the baby on its IP Clearinghouse and URS parts is given back to the GNSO for reconsideration. In other words, we will have at least a version 4 of the Draft Applicant Guidebook, and a further delay in the launch of the new gTLDs.

DAG3 is open for public comments only until 22nd November 2009: YOU are concerned, make YOUR VOICE heard in the Public Forum debate, there!

Sylvain Hirsch

Zbynek Loebl, member of the ADR.EU Advisory Board, invites you to meet this growing up dispute resolution center…

Zbynek Loebl, DR

Part 2: ADRE.EU : A Multi-lingual on-line DR platform for consumer disputes

ADR.EU prepares a European on-line DR system for the resolution of consumer disputes arising from Internet transactions.

How can it work?

For example, we have a consumer from Barcelona who bought a product on-line from a Finnish provider and is not satisfied with the product.

So the consumer would file a complaint on-line in Spanish; the Finnish on-line seller would be able to read this complaint in Finnish and communicate with the Spanish consumer in Finnish. The consumer would communicate back in Spanish.

If the consumer and the seller do not resolve the issues among themselves without involvement of third parties, they proceed to an arbitration/mediation. The decision will be provided in Spanish, Finnish and English and will be implemented by the on-line provider without delay, otherwise the on-line provider will loose the right to use the system (and consumers will shop elsewhere).

Why we think there is an interest in such a solution?

Within EU, only 5% of Internet users shop across national borders although there are substantial differences in prices of the same or similar products and services in different areas of the EU.

It is believed that one of the reasons for such a low percentage of cross-border shopers is a lack of trust of European consumers in cross-border on-line transactions. Multi-lingual ODR will increase the trust of consumers in on-line environment and increase business of the on-line providers.

At present more and more on-line providers begin to trade in multi-lingual environments. Third-party DR system will supplement their multi-lingual trading systems.

Internet is becoming multi-lingual. The introduction of Internationalized Domain Names (IDNs) is going to substantially support Internet usage in countries outside EU like India and China. These countries need multi-lingual on-line DR just as Europe and the project can be extended to cover Asia as well.

Our project aims at addressing these current needs of the on-line trade.

How will the system be financed?

After its implementation the system should be self-financing mainly through small regular contributions from on-line providers who subscribe to the system for the resolution of their consumer disputes. Consumers will pay a nominal fee if they proceed to mediation/arbitration.

The on-line providers can advertise a European trust mark (e.g. ADR.EU) which would indicate to their costumers that potential consumer issues will be resolved quickly and efficiently via the ODR system.

Where are we today?

We finalize our budget for the building of the system and form our international preparatory team. We have support of the European Commission and European Parliament. Big Internet players will participate in the project. We plan to start the development stage of the project from 1 January 2010.

Zbynek Loebl

Zbynek Loebl, member of the ADR.EU Advisory Board, invites you to meet this growing up dispute resolution center…

Zbynek Loebl, DR

Part 1 : ADR.EU and Domain Dispute

ADR.EU is a dispute resolution (DR) center attached to the Czech Arbitration Court (CAC).

ADR.EU is the only DR provider for disputes related to .eu domain names. ADR.EU administers these disputes in 21 EU languages.

In addition, ADR.EU is a UDRP provider and the only UDRP provider authorized by ICANN to provide only electronic UDRP services.

Why a party wishing to file UDRP Complaints should consider ADR.EU?

• A possibility to file Complaints only electronically using a simple authentication tool called the ChessCard, or to file electronically and mail to ADR.EU only a signed signature page in hardcopy;

• Have all UDRP cases in which you are involved organized in one electronic Master File with easy access from all around the world;

• If you are not familiar with UDRP, you may have a draft of your Complaint checked preliminarily for administrative compliance by ADR.EU before the Complaint is formally filed and this way you save time after the actual filing;

• ADR.EU enables a new type of Compliants – so called Class Complaints – by which more unrelated Complainants can file a single Complaint against a single Respondent in relation to multiple disputed domain names;

• Payment on-line by credit cards;

• Everybody can test the platform and learn quickly how to use it on our testing platform available also at www.adr.eu.

What are the ADR.EU plans regarding domain name disputes?

ADR.EU supports the Uniform Rapid Suspension (URS) proposal for the new top level domains (gTLDs). We want to compete to become one of URS providers after ICANN approves the URS.

Regarding UDRP, ADR.EU is going to propose a new specific procedure called the Expedited (UDRP) Decision. Expedited Decision would enable much cheaper and faster UDRP procedure in clear cases where no Response is filed. At the moment, our draft is being considered by ICANN.

Gradually, we would like to implement our UDRP platform in more languages (so far only English is implemented).

We would like to offer our on-line platforms to country-code domain name (ccTLD) registries as their possible DR solution:

• Our platform for .eu disputes is multi-lingual;

• It provides save on-line DR platform;

• For ccTLD disputes we can add one additional and significant remedy – monetary awards;

• The decisions in ccTLD disputes will be in the form of standard arbitral awards with efficient international enforcement (NY Convention).

Zbynek Loebl

ICANN’s Implementation Recommendation Team (IRT) has published its final proposals on ICANN’s plan to open up the internet to an unlimited number of generic top-level domains (gTLDs).

As you know, this new gTLD process (over 500 new gTLDs are expected from early 2010 against ~20 active now!) suggests promising commercial opportunities but also gives rise to worries, particularly among IP Rights holders.

Indeed, Trademark owners do question  ICANN about the supplementary financial burden that the protection of their rights on the Internet will induce when it will theoretically be possible to register any given domain name like: www [dot] my_registered_trademark [dot] endless_new_gTLDs
Attentive to these expressions of concern, ICANN has formed a group of 18 legal and domain specialists, the IRT. The task of this group was to draft proposals to facilitate and improve the protection of trademark holders during this process.

To summarize, the final recommendations of the IRT include:

• The creation of an IP Clearinghouse: a centralized database of verified IP rights to simplify and automate trademark protection. (Quite an interesting idea but unfortunately not mandatory for new gTLD applicants. We will take a further look at it in a forthcoming post ).

• To limit the possibility of systemic abuses by malicious registry operators :

• A set of standardized, minimum protection measures compulsory to all new gTLD registries. (Sunrise rules and Sunrise Dispute resolution policies)
• A requirement for all new gTLD Registry applicants to describe in detail at the time of application the Rights Protection Mechanisms they will be offering
• The opportunity for a third party to file a complaint with ICANN if a new gTLD operator is breaking its registry agreement with ICANN resulting in the loss of the gTLD delegation.

• A faster and cheaper dispute resolution procedure for obvious infringement cases only: the Uniform Rapid Suspension system (URS). Interestingly, this sounds    familiar to the French IP community, since it has a taste as well as a look and feel of our PREDEC.

• An obligation on all new gTLD operators to provide registry-level WHOIS information to facilitate prosecution. (THICK WHOIS).

• A revision of ICANN’s proposed string confusion algorithm (1) to reflect an approach more in line with trademark law principles.

While that approach may appear to be comprehensive, the IRT itself acknowledges that even if all of the above proposed solutions are taken together, they do not represent a panacea to the problem of trade mark protection in the new gTLDs.

A public comment period is now open (until 29 June).  You don’t need to be a registrar to give your opinion and (counter) proposals to these recommendations.

Inasmuch as we are concerned, we will provide you with further comments on this important topic in another post, to follow.

_________________

[1] As new top-level domains will be added to the familiar .com, .info, and .net, the algorithm will check whether the newly proposed name is confusingly similar to existing ones by looking for visual likenesses in its appearance. The algorithm compares a proposed gTLD with other gTLDs and generates a score based on their visual similarities. For example, the domain .C0M scores an 88 percent visual similarity with the familiar .COM. The resulting scores may help indicate whether the newly proposed domain name looks too much like existing ones.

To make its assessments, the algorithm rates the degree of similarity between pairs of alpha-numeric characters. Some pairs, such as the numeral “1″ and its dead-ringer, the lowercase letter “l,” are assigned the highest scores for visual similarity while other pairs, such as “h” and “n”, are given lower scores. The algorithm takes other considerations into account, for example how certain pairs of letters, like “c” and “l,” can join to look like a third letter (”d”), as in the case of “close” and “dose.” Employing these scores and considerations, the algorithm computes the “cost” of transforming one string of characters into another, such as “opel” into “apple.” Lower cost means higher visual similarity. The algorithm then adjusts for the relative lengths of the two strings (different lengths increase their distinctiveness) and converts the final cost into a percent similarity.

Source: ICANN Press Releases - Chief Editor - DomainNews - May 14th, 2008

Alexandre TESSONNEAU / Sylvain HIRSCH