What GAC's 'Early Warning' Notices Really Mean

By Doug Isenberg ICANN’s Governmental Advisory Committee (GAC) has just issued "Early Warning" notices on nearly 250 gTLD applications, from .accountant to .zulu. Although the notices do not prevent the applications from moving forward, they could have a significant impact on the gTLD program.

As stated in the Applicant Guidebook, an Early Warning Notice is an indication that an application "is seen as potentially sensitive or problematic by one or more governments," but:

It is not a formal objection, nor does it directly lead to a process that can result in rejection of the application. However, a GAC Early Warning should be taken seriously as it raises the likelihood that the application could be the subject of GAC Advice on New gTLDs... or of a formal objection... at a later stage in the process.

The notices, filed by numerous countries, address various concerns. For example:

• The United States government filed notices on applications for .army, .airforce and .navy, stating for each: "The string is confusingly similar to the name of a specific government agency."
• India filed a notice for an application on .bible, in which it said, "There is no plan in the application to address the specific needs of the approximately 27 million Christians in India."
• And 21 notices were filed on the various applications for .hotel (and variations thereof), including by France, which touted its role as "the first world tourism destination" and said that "[e]ach hotel business should have the right, guaranteed by ICANN, to use the term 'hotel' as generic top level domain... for promoting its commercial market strategy, and this right should be only reserved to the suppliers of hotel services."

(Disclosure: I represent the Hotel Consumer Protection Coalition, which filed public comments on the .hotel applications and variations.)

So, what now?

Any applicant that has received an Early Warning notice may elect to withdraw its application within 21 days of the date of the notice and, if it does so, would be entitled to a refund of 80% of the filing fee, that is, US$148,000. This would not be unprecedented, especially given that six applications already have been withdrawn (for reasons unrelated to the GAC Early Warning notices).

Or, applicants may respond to the Early Warning notices and proceed with their applications, although applicants would face the possibility of "GAC Advice" later (that is, notice to the ICANN board that could result in disapproval of an application) or a formal objection.  (Interestingly, both GAC Advice and formal objections are possible with respect to all of the applications, not just those that received Early Warning notices.)

Thus, in the short term, the GAC Early Warning notices could result in some applications being withdrawn; and, in the long term, they could indirectly lead to fewer approved applications. And, for anyone considering filing a formal objection of their own, the notices may provide additional support for their arguments.

WIPO's Proposal for a 'Workable' URS

Amid an ongoing debate about the practicality and usefulness of ICANN's proposed Uniform Rapid Suspension System ("URS") for the new gTLDs, the World Intellectual Property Organization ("WIPO") has proposed a revised version of this new domain name dispute policy -- "URS 2.0" -- which it says will address many of the criticisms of URS. In a discussion paper (3-page PDF) presented at the recent ICANN meeting in Toronto, WIPO says URS 2.0 would create a "simple and cost-sustainable suspension mechanism" -- something that URS critics have said is lacking in the current model.

Among other problems with the original URS (as set forth in the Applicant Guidebook), ICANN has admitted that the "model does not meet the cost targets," as Kurt Pritz confessed in a recent webinar intended to address some of the concerns. The Guidebook suggests that the filing fee for a URS complaint would be about $300 -- although, interestingly, Pritz and others have fallen to fee creep and now often cite a figure of $500.

While the webinar explored ways to keep the fee down (including by automating or subsidizing the process), WIPO's proposal notes that the original URS "warrant[s] panel appointment in all cases" and that the fee target is "neither realistic nor optimal."

Instead, WIPO's alternative URS 2.0 model would keep costs low by creating a default suspension, without the need for a panel appointment, in cases where no response is filed. The default could be appealed by a losing registrant merely by submitting a "form-based response" (without a fee). In cases where a response is filed before default, the URS 2.0 proceeding would be dismissed, giving the complainant an opportunity pay an additional fee for an appeal or proceed to a complaint under the time-tested Uniform Domain Name Dispute Resolution Policy ("UDRP") instead.

URS 2.0, WIPO says, would create a "workable balance" among competing interests and "would be the cleaner way to significantly reduce costs for the majority of URS cases, preserving important registrant safeguards, while underwriting cost sustainability of the system in the longer term."

The WIPO model doesn't solve every issue -- for example, should a cybersquatter really be able to avoid a suspension by submitting a free form at no cost; and is a suspension even an appropriate remedy? But WIPO's paper should at least renew discussion about the viability of this important new dispute mechanism rather than force the current model to work in potentially impractical ways.

Will the Real Trademark Clearinghouse Please Stand Up?

By Doug Isenberg Presumably in anticipation of offering services as a provider of ICANN's "Trademark Clearinghouse" for new gTLDs, Deloitte has registered the domain name <trademark-clearinghouse.com> (with a hyphen) and is using it in connection with (as of today, October 18, 2012) an informational website, as shown in this screenshot:

Interestingly, the domain name <trademarkclearinghouse.com> (without a hyphen) was registered by D.W. Nance, LLC (a law firm), in October 2006, and is being used to promote “a free safehaven for owners of domain names that may infringe someone else’s intellectual property.”

The service appears to be offered by a company called “TM Clearing House, LLC” and encourages domain name registrants to redirect their disputed domain names to a website using the -- apparently expired (!), as of today, October 28, 2012 -- domain name <tmchsafehaven.com> (which surely will be promptly re-registered by an opportunist), as shown here:

Certainly (and ironically, given the world of trademarks and domain names), many consumers are likely to be confused by these two websites. Perhaps not the best start for a program designed to help trademark owners.

The Domain Name That Refuses to Die

By Doug Isenberg If you have fond (well, perhaps, any) memories of the original dot-com boom (and bust), circa 1997-2001, you might enjoy this UDRP case: a decision involving the domain name <kozmo.com>.

Created on April 2, 1997, the <kozmo.com> domain name was used by a company called Kozmo.com, Inc., in connection with free online ordering and one-hour delivery of such products as "videos, games, dvds, music, mags, books, food, basics & more." The company filed for a $150 million initial public offering in March 2000. Thirteen months later, it went out of business -- in what Businessweek at the time described (in an article titled "What Led to Kozmo's Final Delivery") as a "path from stardom to the dot-com dustbin [that] is symbolic of the end of the Internet boom."

Eleven years later, a UDRP dispute over <kozmo.com> shows that "the history of the Disputed Domain Name remains unclear," as the UDRP panelist wrote.

The UDRP complaint was filed by Yummy Foods, LLC, of Los Angeles (the "Complainant"), which owns two federal trademark registrations in the United States for the mark KOZMO for use in connection with retail store and delivery services. For obvious reasons, Yummy Foods wanted to acquire the <kozmo.com> domain name, but apparently the domain name remained registered to Kozmo.com, Inc. (the "Respondent"), even though that company no longer existed. And, curiously, according to the UDRP decision, renewal of the domain name was "in arrears 7 years." (My review of the current Whois record shows that the domain name was set to expire on April 3, 2011.)

Despite the oddities of this case, the panelist wrote that the UDRP "was not designed as a tool for obtaining domain names from defunct corporations." And, the panelist refused to transfer the domain name to Yummy Foods, due to a lack of the essential "bad faith" element required in every successful UDRP proceeding:

Respondent could not have known of Complainant’s mark when it registered the Disputed Domain Name. In fact, as Complainant has repeatedly emphasized, Respondent ceased to exist almost ten years before Complainant began operations under the KOZMO mark. Furthermore, during its time in operation Respondent had a United States trademark for the Disputed Domain Name and offered bona fide goods and services through the Disputed Domain Name. Accordingly, Respondent did not register the Disputed Domain Name in bad faith. Lastly, the Disputed Domain Name has been in locked status without reverting to any active website since 2005. These facts demonstrate that Respondent’s conduct does not qualify as bad faith under paragraph 4(b) of the Policy.

While this decision is solid, it leaves a number of questions unanswered, such as:

• Should domain name registrars be permitted to maintain registrations of domain names registered to defunct (or non-existent) entities, especially when they are made aware of this status? (Of course, domain name registrations using fictitious names have been a common cybersquatting problem for years; I have personally filed UDRP complaints against registrants identified as "Barack Hussein Obama Jr" and "Sdf fdgg.")
• What can (or should) a "dying" entity do with its domain names, especially if they might have independent value?
• Who, if anyone, has the right to control a domain name previously used by a now-defunct corporation?
• Why would a domain name registrar maintain a domain name if its renewal was in arrears seven years, and should this even be allowed?

What's Up with the URS?

More than three months after acknowledging challenges with its proposed Uniform Rapid Suspension system ("URS"), ICANN recently announced two important steps toward implementing this new domain name dispute procedure. Envisioned as a less-expensive and quicker alternative to the well-established Uniform Domain Name Dispute Resolution Policy ("UDRP"), the URS has been criticized by trademark owners as well as domain name registrants. It is intended for use only in “clear cases of trademark abuse”  with no “open questions of fact.”

On October 3, ICANN will hold a webinar to address the fees for filing a URS complaint, after "[e]arly feedback from UDRP providers and others indicated that the cost of the URS procedure as written would be likely to exceed targets."

Previously, ICANN had said that it expected the filing fee to be about $300. (By comparison, WIPO's and NAF's filing fees for UDRP complaints begin at $1,500 and $1,300, respectively.)

The webinar is expected to address ways to make the targeted fees workable, or even subsidize them -- presumably with the intention of attracting existing UDRP service providers or others to offer URS services.

And, ICANN has issued a Request for Information ("RFI") from potential URS service providers. Notably, neither WIPO nor NAF (the leading UDRP service providers) -- or any other arbitration service, for that matter -- has publicly indicated interest in providing URS services.

The RFI is intended "to solicit responses from bidders and gather feedback that may be used to select one or more URS providers, or inform the development of a comprehensive RFP [Request for Proposal]."

The RFI states that "projected URS providers" will be published by February 28, 2013.

Of course, only time will tell how helpful these steps will be in making the URS a reality. In any event, given that ICANN has committed to having the URS in place before any of the new top-level domains are delegated (presumably sometime late next year), the clock on URS implementation is beginning to tick more loudly.

About the Timing of Those Withdrawn gTLD Applications

By Doug Isenberg Last month, I questioned the accuracy of ICANN's gTLD database after announcements that three (and, later, six) applications had been withdrawn -- yet the online database continued to show no withdrawals.

Then, yesterday, ICANN updated the database to identify that four applications had been withdrawn.

Today, finally, ICANN seems to have addressed these discrepancies.

Although the previous announcements clearly stated that a number of applications had been withdrawn, now ICANN seems to be saying something different: the withdrawal process for each had only been started. And, apparently, the database is only updated once the withdrawal process is complete.

Kurt Pritz, ICANN's senior vice president, stakeholder relations, indicated in a webinar today that ICANN will post public notification of withdrawal "as soon as the withdrawal process is completed, which means that the applicant has executed some paperwork" -- not, presumably, when the applicant initiates the process.

It's still not clear why ICANN previously stated that a number of applications had been withdrawn if the withdrawal process had not been completed, nor is it clear why executing the proper "paperwork" would require a month or so of work.

But this much seems clear: There is a delay between the date on which an applicant initiates the process of withdrawing an application and the date on which the withdrawal process is complete; and, the online database is not updated in the interim.

Here Are the First Four New gTLD Applications That Have Been Withdrawn

By Doug Isenberg Nearly one month after ICANN announced that three of the new gTLD applications had been withdrawn (and on the eve of a webinar on the "Application Evaluation Progress"), ICANN's online database finally has been updated -- to show that four applications have been withdrawn.

They are: .and, .are, .est and .ksb.

Interestingly, the first three of these listed above were all applied for by the same applicant, Charleston Road Registry Inc., a subsidiary of Google Inc., which applied for 101 new gTLDs.

ICANN's database does not offer any information about why the applications were withdrawn (nor, presumably, would an applicant need to given ICANN a reason). But here's a little background on each of the withdrawn domains:

• .and: Intended to be operated as a closed registry with Google as the sole registrar and registrant, the .and gTLD was supposed to "provide Google with direct association to the term, 'and,' which is an abbreviation of 'android,' and meant to refer to the Android platform and operating system."  One comment had been filed against this application, stating that it should be denied because the string "represents the Principality of Andorra." Google still has an application pending for .android.
• .are: Curiously, Charleston Road Registry noted that the .are gTLD would "provide the marketplace with direct association to the term, 'are,' which Merriam-Webster defines as the 'present plural of be'" and that "Charleston Road Registry expects registrants will register second-level domain names that are nouns, such as 'Cornellians.are' or 'dogs.are.'" A comment had been filed against this application, stating that the string should be denied because it "represents the United Arab Emirates."
• .est: The .est gTLD was intended to draw upon "a common suffix utilized to describe the superlative of an adjective," with registrants choosing domain names "such as fast.est or cool.est." A comment had been filed against this application, stating that the string should be denied because it "represents the Republic of Estonia."
• .ksb: The applicant for .ksb, KSB Aktiengesellschaft of Frankenthal, Germany, described itself as "one of the world’s leading suppliers of pumps, valves and related liquid transportation systems" and said the gTLD would "provide a comprehensive communications platform, serving its broad-ranging network of subsidiaries, production facilities, service teams and regional offices." No comments were filed against this application.

For each withdrawn application, the applicant apparently is entitled to a refund of 70% of the $185,000 application fee, since these fall "[a]fter posting of applications until posting of Initial Evaluation results," as described in section 1.5.1 of the Applicant Guidebook.

While the updated database is welcome news, a number of questions remain, including:

• Why did ICANN wait almost one month to update the database after it announced the withdrawals?
• Why does the database show four withdrawn applications when ICANN has since said that six applications have been withdrawn?
• How quickly will the database be updated in the future?

These questions are especially important as the public considers whether to file comments or formal objections on applications.

Did ICANN Just Shorten the Deadline for Filing New gTLD Objections?

By Doug Isenberg What is the deadline for filing a formal objection to a gTLD application?

The answer, it seems -- as with so many things related to the new domain name process -- is unclear.

On the one hand, ICANN's Applicant Guidebook says: "The objection filing period will open after ICANN posts the list of complete applications... and will last for approximately 7 months. The objection filing period will close following the end of the Initial Evaluation period... with a two-week window of time between the posting of the Initial Evaluation results and the close of the objection filing period."  (Subsection 1.1.2.6, version dated June 4, 2012, emphasis added.)

On the other hand, in a recent webinar (August 9, 2012), ICANN Senior Vice President Kurt Pritz said the objection period would close "around January 12, 2013" (seven months after the applications were revealed) without regard to the Guidebook's reference to the additional "two-week window of time." Specifically, he said: "We didn’t think that was fair to the applicant to not know there is an objection out there."

At first glance, the two-week window may not sound very important, but it is. Here's why: If an application fails to pass ICANN's evaluation, then filing a formal objection would be unnecessary.

In other words, because filing a formal objection is a complicated, time-consuming and expensive process, a prudent potential objector might wait for the Initial Evaluation results to decide whether it should file an objection. (Although, admittedly, it would be important to prepare for filing an objection sooner rather than later.) But, if the January 12 deadline is fixed, then waiting for those results (which are not expected until June 2013) would be impossible.

In any event, the discrepancy between the Guidebook and Pritz's comments should leave everyone confused. Interestingly, ICANN's just-released "milestone timeline" fails to note the January 12 deadline, and the International Chamber of Commerce (which will handle "community objections" -- perhaps the most active type of objection we will see) says only that "the Objection Period will start on 13 June 2012," without reference to a deadline.

ICANN should clarify this important issue immediately, in writing, by affirming its commitment to the two-week window described in the Guidebook.

(Hat tip: Elisa Cooper of MarkMonitor.)

Romney and Ryan Don't Have RomneyRyan.com. So What?

By Doug Isenberg Two and a half years before Mitt Romney picked Paul Ryan as his running mate, a domain name speculator registered <romneyryan.com>.

According to a Reuters article, the <romneyryan.com> domain name was just one of about 70 that Peter Crowley registered, apparently hoping to cash in should one of his picks match the ticket.

But, as of this writing -- one week after Romney selected Ryan -- Crowley's efforts have been unsuccessful. An auction to sell the domain name, with a starting bid of $5,000 and a "buy it now" price of $100,000, has attracted no bidders.

Indeed, the Reuters article quotes Crowley as saying: "I had a few private inquiries, but nothing from the campaigns. I've reached out to Mitt's campaign, Obama for America, the DNC, the RNC and their respective Super PACS. But nothing."

So, what now?

Obviously, I can't predict what will become of the <romneyryan.com> domain name, but the facts so far offer a few lessons:

• The Romney campaign likely could not rely on a UDRP complaint to obtain control of the domain name, because the campaign probably does not have trademark rights in "Romney Ryan" (a requirement for any UDRP proceeding) or, at least, it did not have trademark rights when the domain name was registered in 2010. Numerous political candidates have tried and failed to use the UDRP to their advantage. Just ask Meg Whitman, the former eBay CEO who lost a UDRP decision for <megwhitmanforgovernor.com>, <megwhitman2010.com>, <meg2010.com>, <whitmanforgovernor.com>, and <whitman2010.com> when she was running for governor of California.
• In any event, the UDRP surely would be too slow for the Romney campaign, since a decision typically arrives about two months after filing a complaint. Thus, even if the campaign could somehow win a UDRP proceeding, the domain name would not be transferred until October, that is, less than a month before the election.
• Regardless, having a .com domain name that matches the candidates' names is far from essential to a successful campaign. Mitt Romney already has and uses <mittromney.com>, which was registered in 2002. And, a Google search for "romney ryan" is dominated by paid listings and news articles (although, interestingly, the website using Crowley's <romneyryan.com> domain name does appear, lower, on the first page of results).
• A domain name matching the candidates' names is not necessarily a winning ticket. For example, although the domain name <obamabiden.com> appears to be controlled by the Obama campaign (it was registered in December 2006 -- 20 months before Obama picked Biden), the domain name is not being used. Instead, the campaign relies on <barackobama.com>.

Interestingly, this will likely be the last presidential campaign before the number of top-level domain names expands. So, in 2016, candidates and speculators also may be able to register domain names ending in .vote, .voting, .democrat, .gop and even .best, .cool and hundreds of others.