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

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.

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[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