Is ICANN's gTLD Database Inaccurate? (Updated 8/21/2012)

By Doug Isenberg In an webinar last week (August 9, 2012), ICANN announced that three of the 1,930 applications had been withdrawn from its gTLD program. Here's a slide from ICANN that notes the withdrawals:

However, as of today (August 13, 2012), ICANN's "New gTLD Current Application Status" database does not indicate that any applications have been withdrawn, as shown in this screenshot:

So, what's the truth?

Either the applications have been withdrawn, or they haven't. It's that simple, right?

If the applications have not been withdrawn, then ICANN should update its slides and the webinar page on which they are linked.

If the applications have been withdrawn, then ICANN should update its database.

In either case, ICANN should explain the discrepancy between these two sources of data. And, if the database is wrong, then ICANN also should explain why this happened -- and whether the public can rely on this database for accurate information about gTLD applications in the future.

Commenters and objectors, among many others (including the applicants themselves), are looking at this database as an important source of information as they decide how to proceed in the gTLD program. Any failure to maintain the gTLD database in a timely and accurate manner only undermines public confidence in the program and could lead to important missteps.

If you know why the ICANN slide and database contain different information, please send me an e-mail with the explanation, and I'll update this post appropriately.

Update (8/21/2012): Although the gTLD database still shows no applications have been withdrawn, ICANN said in an announcement today (August 21, 2012): "To date, six applications have been withdrawn from the new gTLD program. The withdrawals are being processed and once the applicants have received their refunds, we will provide an update."

The (Limited) Importance of ICANN's Decision to Extend the Public Comment Deadline

By Doug Isenberg In a dramatic -- but woefully late -- move, ICANN has just announced that it has extended the 60-day deadline for public comments on new gTLD applications. Originally set for August 12, 2012, the new deadline has been extended for an additional 45 days, to September 26, 2012.

As a result, anyone with an opinion on one or more of the 1,900+ applications now has a bit more time to submit comments during the period most likely to influence ICANN's evaluation panels.

Although the public comment forum will remain open "through all stages of the evaluation process," ICANN has made clear that those comments submitted before the deadline will carry the greatest weight. "To be considered by evaluators, comments must be received in the designated comment forum within the stated time period," ICANN's Applicant Guidebook proclaims, in boldface type. (Section 1.1.2.3).

Although the Applicant Guidebook has always given ICANN the right to extend the deadline "should the volume of applications or other circumstances require," ICANN failed to do so until 58 days into the 60-day window (and, notably, on the Friday before the original Sunday deadline). As a result, while the extension may result in more comments, it is of little assistance to those who have been feverishly reading applications and drafting and submitting comments with the original deadline in mind. (When ICANN announced the new deadline, more than 5,500 comments already had been submitted.)

Despite the tardiness of ICANN's decision, the extended deadline presents an important opportunity for interested parties to speak up on gTLD applications, if they have not already done so. Given that ICANN has done little, if anything, to promote the public comment period since the gTLD applications were revealed on June 13, 2012, perhaps this new deadline also will make more people aware of this potentially important process.

The new deadline also increases the possibility for formal objections from ICANN's "Independent Objector," who can file objections only if  "at least one comment in opposition to the application is made in the public sphere."  (Applicant Guidebook, Section 3.2.5.)

For more information about the public comment period, see my previous blog post, "What ICANN’s Public Comment Period for gTLD Applications is All About."

ICANN (Quietly) Delays Launch of New gTLDs by Six Months

By Doug Isenberg When ICANN revealed the list of 1,930 gTLD applications on June 13, 2012, it indicated that the first new domain names would be launched "late in the first quarter" of 2013. Given the large number of applications and many unresolved issues, this date seemed aggressive. Now, for the first time, ICANN has formally acknowledged that this target will be missed.

The "announcement" of this delay was buried within a larger announcement about the evaluation process ICANN is conducting for the applications, and the struggles ICANN has faced in "batching" its evaluations.

Specifically, ICANN said:

The current plan indicates that initial evaluation of all applications, processed in a "single batch", can be completed in 11-12 months, possibly less – resulting in publication of results in June-July 2013.... For applicants, releasing results in a single batch would mean that the first delegations would occur in late third quarter of 2013, six months later than originally expected.

This delay should surprise no one, given ICANN's track record. For example, recall that the first draft of the Applicant Guidebook for new gTLDs was published more than three years before applications were actually accepted.

In addition to the obvious implications that this delay will have on applicants, it also will impact trademark owners and others concerned about how to respond to the new gTLD program. For example:

• Anyone who wants to file a formal objection to a gTLD application now has more time to consider whether to do so. Although the formal objection period is seven months, the Applicant Guidebook says that there will be "a two-week window of time between the posting of the Initial Evaluation results and the close of the objection filing period." (Nevertheless, the comment period deadline of August 12, 2012, appears to remain unchanged; and interested objectors should not delay their decision-making process.)
• The extension of the evaluation process may result in an extension of time to finalize the Uniform Rapid Suspension System (URS), a new rights-protection mechanism that has created challenges to implement.
• Potentially, the delay could result in more applicants withdrawing from the process, given that ICANN is offering a refund of 70% of the $185,000 application fee to anyone who withdraws "[a]fter posting of applications until posting of Initial Evaluation results." At least, the delay affords applicants more time to consider whether they want to continue in the process, something that may be especially relevant to those applicants that face competition for their applied-for strings.

Why 'Locking' a Domain Name is Important to the UDRP Process

By Doug Isenberg ICANN is seeking comments on a topic titled "Locking of a Domain Name Subject to UDRP Proceedings."

As the comment announcement states:

[T]here currently is no requirement to lock a domain name in the period between the filing of a complaint and the commencement of proceedings. In addition, it is unclear what is meant with 'status quo' as used in the UDRP.

This is an important issue for UDRP proceedings. Here's why:

• UDRP Policy para. 7 requires that a UDRP service provider "not cancel, transfer, activate, deactivate, or otherwise change the status of any domain name registration" until a UDRP proceeding has been concluded.
• As a result, UDRP service providers commonly "lock" a disputed domain name after a complaint has been filed -- but, this lock typically does not take effect until the service provider has verified certain details about the disputed domain name with the registrar, officially "commencing" the UDRP proceeding. Sometimes, this results in a delay of a few days.
• Because of the delay between the date on which a UDRP complaint is filed and the date on which the service provider commences the proceeding, a domain name can be transferred before the proceeding truly begins in earnest.

When a pre-commencement transfer occurs, a complainant often must amend its complaint, sometimes substantially, to take into account the identity of the new registrant, creating delays, expenses and frustrations.

As WIPO said in a letter to ICANN more than four years ago, this type of "cyberflight" "may cause complications, and thus delays." WIPO recommended then that a registrar be required to lock a domain name "at the earliest possible stage of a procedure."

WIPO's previously articulated position should be non-controversial and, if adopted, would only penalize registrants (and registrars) that engage in actions that undermine the effectiveness of the UDRP.

ICANN is accepting comments on this issue until August 15, 2012.

Frequently Asked Questions About 'Community Objections'

By Doug Isenberg Any institution that believes a potential new top-level domain doesn't represent its community may want to consider filing a “Community Objection.” Here are some frequently asked questions about this process.

What is the definition of a "Community Objection"?

According to ICANN's gTLD Applicant Guidebook, a "Community Objection is an objection based on "substantial opposition to the gTLD application from a significant portion of the community to which the gTLD string may be explicitly or implicitly targeted."

The Guidebook includes four important tests for panelists deciding these objections, so those who file a Community Objection should become very familiar with these four tests and draft their objections accordingly.

Who can file a Community Objection?

The Guidebook says: "Established institutions associated with clearly delineated communities are eligible to file a community objection." To qualify for standing for a community objection, an objector must prove both of the following: (1) it is "an established institution" and (2) it "has an ongoing relationship with a clearly delineated community." The Guidebook contains further details about each prong of this definition, so any institution considering filing an objection should review the criteria to carefully to help ensure that it meets the standing requirement before filing.

ICANN's "Independent Objector" also may file a community objection against a gTLD application (but only if at least one comment in opposition to the application already has been made).

When can a Community Objection be filed?

The Guidebook says that "[t]he objection filing period will open after ICANN posts the list of complete applications... and will last for approximately 7 months." Because ICANN announced the list of complete applications on June 13, 2012, it would appear that the last date for filing objections would be approximately January 12, 2013. Note that there will be "a two-week window of time between the posting of the Initial Evaluation results and the close of the objection filing period."

Where are Community Objections filed?

Community Objections will be administered by the International Center of Expertise of the International Chamber of Commerce (ICC), which has published a detailed website about the process here: http://www.iccwbo.org/court/expertise/id48204/index.html

What rules are applicable to a Community Objection?

The ICC has said that it will administer objections under the ICC Rules for Expertise and supplemented by a Practice Note on the Administration of Cases under the Procedure under the New gTLD Dispute Resolution Procedure.

What language is used for proceedings under Community Objections?

All objections must be filed in English.

What are the fees for filing a Community Objection?

In addition to any legal or other fees that an objecting party may face, ICC requires an objector pay a non-refundable filing fee of 5,000 euros (approximately US$6,250) plus, within 10 business days of "constituting the Expert Panel," an estimate of the total costs of the procedure. The total costs of the procedure include the fees and expenses of the expert. The fees are 450 euros (approximately US$562) per hour "unless decided otherwise by the Centre after consultation with the parties"; and the expenses are estimated between 12,000 euros (approximately US$15,000) for a one-expert panel and 17,000 euros (approximately US$21,255) for a three-expert panel.

Note that a gTLD applicant must also pay the same fees to ICC. If an applicant fails to do so, the objection will prevail by default.

As with all gTLD objections: "Upon the termination of the proceedings, after the Panel has rendered its Expert Determination, the DRSP [Dispute Resolution Service Provider, that is, ICC] shall refund to the prevailing party, as determined by the Panel, its advance payment(s) of Costs."

What should an objector include in filing a Community Objection?

ICANN's gTLD Applicant Guidebook provides very little helpful guidance about what an objector should include in its filing. Specifically, the Guidebook says that objections should include "[a] statement giving the specific ground upon which the objection is being filed" and "[a] detailed explanation of the validity of the objection and why it should be upheld." However, the Guidebook includes four tests for panelists to "determine whether there is substantial opposition from a significant portion of the community to which the string may be targeted." For an objection to be successful, the objector must prove the following:

• The community invoked by the objector is a clearly delineated community; and
• Community opposition to the application is substantial; and
• There is a strong association between the community invoked and the applied-for gTLD string; and
• The application creates a likelihood of material detriment to the rights or legitimate interests of a significant portion of the community to which the string may be explicitly or implicitly targeted.

The Guidebook contains further detail on each of these four tests, so objectors should familiarize themselves with these tests and draft their objections with these tests in mind.

What is the maximum length of an objection filed under a Community Objection?

As with all objections to new gTLDs, objections based on a Community Objection is limited to 5,000 words or 20 pages, whichever is less (excluding attachments).

Does a gTLD applicant have to respond to a Community Objection?

No. An applicant can negotiate a settlement to an objection (resulting in withdrawal of the application or the objection), file a response (see details below) or withdraw (in which case the objector will prevail by default).

If an applicant files a response to a Community Objection, when must it be filed, what should it include and how long can it be?

A response must be filed within 30 calendar days of ICC's notice of the objection. According to the Guidebook, the response should include "[a] point-by-point response to the claims made by the objector" and "[a]ny copies of documents that it considers to be a basis for the response." Like objections, responses are limited to 5,000 words or 20 pages, whichever is less (excluding attachments).

Also, as noted above, applicants must pay a filing fee (as well as expert fees and expenses) to ICC in the case of Community Objections.

How are documents filed, and will in-person hearings be held for Community Objections?

Documents should be filed electronically, and, as in all objection proceedings, "[d]isputes will usually be resolved without an in-person hearing. The panel may decide to hold such a hearing only in extraordinary circumstances." Note that this language is similar to that set forth in the Rules for the Uniform Domain Name Dispute Resolution Policy (UDRP) (which says there shall be no in-person hearings except "as an exceptional matter" as decided by a panel), and that no in-person hearings have ever been held under the UDRP (which went into effect in 1999).

Is This a Sign of the First New gTLD?

By Doug Isenberg As JPMorgan Chase CEO Jamie Dimon recently testified, "To a hammer, everything is a nail."

To me (a domain name attorney helping clients navigate ICANN's launch of new global top-level domain names, or gTLDs), I suppose everything is a domain name issue.

Case in point, this billboard I just spotted at the Denver airport for a company called MWH, which apparently has provided "wet infrastructure" services since 1820:

As I asked in a similar recent blog post about another sign: What, exactly, is the website address (that is, the URL) in this advertisement?

Could it be "global.trade"? Today, no. But next year, maybe so. Indeed, ".trade" is one of the 1,930 gTLD applications that ICANN recently revealed it has received.

The mission or purpose of the proposed ".trade" gTLD, applied for by Elite Registry Limited of Gibraltar, is "to create a blank canvas for the online trade sector set within a secure environment."

Think what you want, but ".trade" someday could become a popular gTLD. In which case, companies such as MWH (whose real URL appears in relatively small type at the bottom of the billboard shown above) will need to be more careful about what they include in their advertisements -- to avoid unintentionally confusing their audience about their website address.

What ICANN's Public Comment Period for gTLD Applications is All About

By Doug Isenberg Anyone with an opinion about any of the pending 1,930 gTLD applications has an immediate opportunity to make his voice known, thanks to a 60-day public comment period at ICANN.

Only a week into the process, though, misunderstandings already abound.

Unlike the formal gTLD objection process, the public comment system is much more limited. Specifically, ICANN's Applicant Guidebook describes the comment period this way:

Evaluators will perform due diligence on the application comments (i.e., determine their relevance to the evaluation, verify the accuracy of claims, analyze meaningfulness of references cited) and take the information provided in these comments into consideration....

In the new gTLD application process, all applicants should be aware that comment fora are a mechanism for the public to bring relevant information and issues to the attention of those charged with handling new gTLD applications.

Thus, relevant comments are those that address the two main elements of the initial evaluation for each application, namely: (1) whether the applied-for gTLD string is "not likely to cause security or stability problems in the DNS" and (2) "whether the applicant has the requisite technical, operational, and financial capabilities to operate a registry."

Despite these caveats, many of the early comments submitted do not address the criteria that evaluation panels will consider when reviewing the gTLD applications. Indeed, based on the numerous comments already posted on some applications, it appears as if there are coordinated campaigns to support certain applications -- as if the commenting system is nothing more than an online petition drive.

Because the commenting system is open to anyone who registers, and because there is no charge to post a comment, the public comments could become a free-for-all.

As a result, it may be challenging for evaluation panels to distinguish applicable comments from those that do not address the criteria they are to consider.

Further, as the Guidebook makes clear, "Public comments will not be considered as formal objections." Therefore, anyone who objects to a specific gTLD application on one of the enumerated grounds -- string confusion,  legal rights, limited public interest and community -- must pay a fee to the applicable dispute resolution service provider, which will issue a decision.

The bottom line: The public comment system could help evaluators pass judgment on gTLD applications in narrow circumstances, but the process is at risk of being devalued, and the only surefire way to oppose a gTLD application is by filing a formal objection, for a fee, with a dispute resolution service provider.

What's Wrong With the URL in This Picture?

By Doug Isenberg I never really thought I'd take a picture inside a portable toilet -- let alone write about it for a legal blog. But, as a domain name attorney, I couldn't help myself when I saw the sign below:

What, exactly, is the website address (that is, the URL) for the company operating this facility?

I had studied ICANN's list of 1,930 applications for new gTLDs just a few days ago, and I certainly didn't recall seeing ".unitedsiteservices" on it. (The list jumped from ".unicorn" to ".university". Seriously.) And, even if I did, ICANN has made clear that no new gTLDs will be approved and delegated until at least the first quarter of next year.

So, "www.unitedsiteservices" is not a valid URL. Try typing it into your web browser (as I did, just for kicks -- yes, I know better) and you'll get a "Server not found" message.

The answer, of course, is that the real URL is "www.unitedsiteservices.com". That's right, the sign omits the gTLD ".com".

Omitting the beginning and often superfluous "www." from a URL (in advertising or when entering it online) is a rather common practice and typically will not affect anything. (Indeed, it's actually a good idea; as English writer Douglas Adams once reportedly said, "The World Wide Web is the only thing I know of whose shortened form takes three times longer to say than what it's short for.")

But, omitting a top-level domain from a web address renders it useless.

I've seen some pretty funny URLs through the years -- and the website "Good URL Bad URL" has documented some great ones. But I can't ever recall seeing a URL in an advertisement that omitted the top-level domain.

Now, I have no way of knowing whether the omission of ".com" from this sign was accidental or purposeful. Perhaps someone thought it wasn't necessary because it wouldn't fit or because, duh, all website addresses end in ".com".

Of course, not all website addresses end in ".com".

If sign makers or companies are confused about domain names today, what will happen when hundreds of new gTLDs start to appear next year? Will it confuse matters even more -- or, will it only reinforce the already-entrenched ".com" as the default?

We'll find out soon. So, hang onto your seat.

Three Things Trademark Owners Learned on ICANN's 'Reveal Day'

By Doug Isenberg Soon after revealing the list of 1,930 potential new global top-level domain names (gTLDs), ICANN tried to reassure trademark owners that they will be protected as the gTLD applications are evaluated (starting in July) and after the approved gTLDs become active (next year).

While trademark owners may disagree with how effectively their brands will be protected, ICANN emphasized what CEO Rod Beckstrom called "extensive intellectual property provisions" in the new gTLD program. Although no new trademark provisions were announced on ICANN's "Reveal Day" disclosing the applied-for gTLDs (nor were any expected), at least three important lessons were learned:

1. The Trademark Clearinghouse (TMC) will begin accepting applications in October.  As previously known, the TMC will serve as a "central repository" for information about trademarks that will come into play during the "sunrise" registration periods of second-level domain names within the new gTLDs (such as, brand.gtld) and during the initial period of general registrations. ICANN had recently announced that IBM and Deloitte would serve as the TMC's service providers and that registrations might cost trademark owners about $150 per submission. Today, ICANN Senior Vice President Kurt Pritz made clear: "We intend to start taking registrations of trademarks in the Clearinghouse in October."

2. The Uniform Rapid Suspension System (URS) might not be finalized until next year.  Envisioned as a quick and inexpensive arbitration process for resolving domain name disputes (that is, cybersquatting), the URS has struggled as its anticipated costs have risen and its perceived benefits have dropped. Today, Pritz acknowledged the URS challenges, saying "Not as much progress has been made." He also indicated that although "there's time to get this implemented," doing so is not necessary until  "late in the first quarter" of 2013, when the first new gTLDs are expected to become active.

3. ICANN believes that the Uniform Domain Name Dispute Resolution Policy (UDRP) will continue to be important for trademark owners. As I have previously written, the UDRP, which has been the most effective tool for trademark owners in resolving domain name disputes, will apply to the new gTLDs when they become effective next year. Today, Beckstrom emphasized the importance of this popular tool, saying that the UDRP is a longstanding and important legal process that “is being used thousands of times each year, successfully, to protect trademark and service mark holders from other parties that register at the second level.”

Related post: 10 Things Trademark Owners Should Do on ICANN’s Domain Name ‘Reveal Day’

Frequently Asked Questions About 'Existing Legal Rights Objections'

Trademark owners who believe that a potential new top-level domain would infringe its rights may want to consider filing an "Existing Legal Rights" objection. Here are some frequently asked questions about this process.

What is the definition of an "Existing Legal Rights Objection"?

According to ICANN's gTLD Applicant Guidebook, an Existing Legal Rights Objection is an "objection that the string comprising the potential new gTLD infringes the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law."

The Guidebook includes important additional interpretation guidance for panelists deciding these objections, so those who file an Existing Legal Rights Objection should become very familiar with these principles and draft their objections accordingly.

Who can file a Legal Rights Objection?

The Guidebook broadly says: "A rightsholder has standing to file a legal rights objection." Note that all filed objections must include "[a] statement of the objector’s basis for standing; that is, why the objector believes it meets the standing requirements to object."

When can an Existing Legal Rights Objection be filed?

The Guidebook says that "[t]he objection filing period will open after ICANN posts the list of complete applications... and will last for approximately 7 months." ICANN has announced that it intends to post the list of complete applications on June 13, 2012; therefore, the last date for filing objections would be approximately January 13, 2013. Note that there will be "a two-week window of time between the posting of the Initial Evaluation results and the close of the objection filing period."

Where are Legal Rights Objections filed?

Existing Legal Rights Objections will be administered by the Arbitration and Mediation Center of the World Intellectual Property Organization (WIPO), which has published a detailed website about the process here: http://www.wipo.int/amc/en/domains/lro/

What rules are applicable to an Existing Legal Rights Objection?

The WIPO Rules for New gTLD Dispute Resolution apply to disputes filed pursuant to an Existing Legal Rights Objection.

What language is used for proceedings under Existing Legal Rights Objections?

All objections must be filed in English.

What are the fees for filing an Existing Legal Rights Objection?

In addition to any legal or other fees that an objecting party may face, WIPO's filing fees for an Existing Legal Rights Objection begin at $10,000 (U.S. dollars). This includes $2,000 for WIPO as the dispute resolution service provider and $8,000 for a single-member panelist appointed to decide the dispute.  Additional fees apply for three-member panels; and lower fees apply in the event of multiple objections filed to single applications or multiple objections filed by the same objector to multiple applications.

A gTLD applicant is required to pay the same fees and, as with all gTLD objections, "[u]pon the termination of the proceedings, after the Panel has rendered its Expert Determination, the DRSP [Dispute Resolution Service Provider, that is, WIPO] shall refund to the prevailing party, as determined by the Panel, its advance payment(s) of Costs."

What should an objector include in filing an Existing Legal Rights Objection?

ICANN's gTLD Applicant Guidebook provides very little helpful guidance about what an objector should include in its filing. Specifically, the Guidebook says that objections should include "[a] statement giving the specific ground upon which the objection is being filed" and "[a] detailed explanation of the validity of the objection and why it should be upheld." However, the Guidebook includes important criteria for panelists evaluating Existing Legal Rights Objections; accordingly, objectors should familiarize themselves with these criteria and draft their objections with the criteria in mind. Generally, the criteria include the following:

• whether the potential use of the applied-for gTLD by the applicant takes unfair advantage of the distinctive character or the reputation of the objector’s registered or unregistered trademark or service mark (“mark”) or IGO name or acronym (as identified in the treaty establishing the organization), or
• unjustifiably impairs the distinctive character or the reputation of the objector’s mark or IGO name or acronym, or
• otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark or IGO name or acronym

Additional detail -- including factors to be considered by panelists evaluating the above criteria -- is set forth in the Guidebook.

What is the maximum length of an objection filed under an Existing Legal Rights Objection?

As with all objections to new gTLDs, objections based on an Existing Legal Rights Objection is limited to 5,000 words or 20 pages, whichever is less (excluding attachments).

Does a gTLD applicant have to respond to an Existing Legal Rights Objection?

No. An applicant can negotiate a settlement to an objection (resulting in withdrawal of the application or the objection), file a response (see details below) or withdraw (in which case the objector will prevail by default).

If an applicant files a response to an Existing Legal Rights Objection, when must it be filed, what should it include and how long can it be?

A response must be filed within 30 calendar days of WIPO's notice of the objection. According to the Guidebook, the response should include "[a] point-by-point response to the claims made by the objector" and "[a]ny copies of documents that it considers to be a basis for the response." Like objections, responses are limited to 5,000 words or 20 pages, whichever is less (excluding attachments).

How are documents filed, and will in-person hearings be held for Existing Legal Rights Objections?

Documents should be filed electronically, and, as in all objection proceedings, "[d]isputes will usually be resolved without an in-person hearing. The panel may decide to hold such a hearing only in extraordinary circumstances." Note that this language is similar to that set forth in the Rules for the Uniform Domain Name Dispute Resolution Policy (UDRP) (which says there shall be no in-person hearings except "as an exceptional matter" as decided by a panel), and that no in-person hearings have ever been held under the UDRP (which went into effect in 1999).