Today (12 January 2012) ICANN opens the 90 day application window for organisations wishing to operate a new generic Top Level Domain registry.

The identity of applicants and the character strings they have applied for will not be revealed until three weeks after application closes. At the start of May 2012 we will know which character strings have been applied for and how many brand owners have invested $185,000 in application fees. Whilst it is clear that speculators hope to generate revenues from the sale of domains in registries that match the most popular key words such as .hotels or .music, and that communities, regions, and cities hope to heighten their profile, why are some brand owners applying?

The key reasons are to protect their intellectual property, to enhance secure communication and to invest in the internet real estate of the future. Once consumers realise that “If it does not end in ACME, it’s not ACME” and search engines prioritise sites under new gTLDs, dot Brand registries could yet become a valuable asset. Shorter domains exactly matching brands as they appear across global media offer organisations for which innovation is important many opportunities at a time when four out of every five mobiles sold are Smart Phones.

ICANN insiders predict that there will be 500 applications. We believe the number may be closer to 1,000 or even as high as 1,500. If ICANN’s processes were better, if they had paid more attention to the legitimate concerns of rights owners and Governments, demand might have been greater. Time and again over the five years the new gTLD programme has run, ICANN has sought consensus rather than the right solution, giving too much influence to those with vested self-interests. Where clarity of decision making was required, we got muddle. Where speed was of the essence, we got delay. Even now, confusion abounds: today, the very moment when the programme is launched, ICANN posted yet another version of the Applicant Guidebook, increasing demands on applicants. Yesterday ICANN closed a woefully inadequate 30 day Public Comment period on how to process financial support for applicants from emerging economies. It is hard not to agree with the American National Advertisers which in its regrettably overdue campaign to halt the process stated, “ICANN clearly has not adequately addressed, let alone answered, the many questions that remain with respect to its plans for further TLD expansion”.

Perfect may be the enemy of good but ICANN could have staffed up and the staff could have been better served by the Board and allowed to use their considerable expertise to create a better application process that reflected the concerns of internet users especially businesses. The need for more IP protections has been a theme since the start of the programme and there are obvious practical improvements ICANN should have made. For example, why not create three tailored application streams for Closed (including dot. Brand), Open (keyword) and Community applicants? Why not assess and then accredit back end Registry Service Providers? Why not allow applicants to beta test the on-line application system?

If you can see beyond these short-comings and are still thinking of applying perhaps because you can’t allow a third party with a competing right to seize a key term or a competitor to pull away, there is just enough time if you can satisfy five key demands of the application process in the next 90 days:

1. Can you identify a suitable vehicle to apply through, bearing in mind that background checks for criminal records or a history or cybersquatting will be undertaken on directors, shareholders and officers? Where should this vehicle be incorporated to give you maximum security and control?
2. Are you nimble enough to contract with a Registry Services Provider (a company that will supply “the engine” for your registry, standing up your character string in the root zone of the domain name system)? Your provider must supply the answers to the 20 scored technical questions which will be well-over 100 pages in length.
3. Can you find $5,000 to register in the on-line application system to be followed by the remaining $180,000 of the application fee, bearing in mind that ICANN won’t invoice you (though you can download a remittance advice afterwards)?
4. Can you identify the experts to assist you in creating an ICANN compliant application that features a summary of registry policies, an explanation of your Mission and Purpose, a description of how you will protect Geographic Terms? Do you have an in-house financial expert who can help to complete a three year Financial Plan for your registry using an inflexible template formatted by ICANN?
5. Who in your organisation will take responsibility for signing-off on the application, bearing in mind that what you say will form the basis of a 10 year registry operator’s contract with ICANN?

If application is not for you in the first round, what will be the impacts? On 1 May 2012, ICANN will be publishing details of applicants, the character strings applied for and the proposed purpose of each registry. At this point a seven month Objection Period will open and you can file Public Comments on any application. You will need to check if your IP has been infringed, what your competitors are doing and whether a speculator is seeking to monopolise a key term such as the generic word for your industry area. It won’t be until the very end of 2012 that the first new gTLDs go live but from January 2013, 10 new registries will be launching every week. The domain name system and patterns of brand protection are changing forever and now is the time to consider your budgets, policies and long-term priorities?

For further information on Valideus’ new gTLD services contact info@valideus.com.

The latest version of the Applicant Guidebook does not have any significant changes in policy; the main changes are that a list of terms reserved for the IOC and Red Cross has been included (although these terms will not be considered when evaluating applied-for terms for string contention), and that GAC advice no longer needs to be in a specific form or contain particular information, such as the process by which consensus was reached and which countries objected to an application. It is intended that a standard format for providing GAC Advice will be developed over the coming months.

A full summary of all changes in the latest version of the Applicant Guidebook can be found here.

The application window will run from this 12 January 2012 launch date for 90 days, closing on 12 April 2012. 15 days later on 27 April 2012 a summary list of applications will be published. The first results from the ICANN evaluators will be published in November 2012. This means that new gTLDs could begin to go live from early 2013, allowing time for Pre-Delegation testing and the insertion of new character strings into the root zone of the global domain name system.

The Board Resolution, which is reported on the ICANN homepage at http://www.icann.org/, acknowledges that further changes to the Applicant Guidebook will be made before the launch. Amongst the outstanding issues is the question of “Vertical Integration” between registry operators and registrars.

Acknowledging that the Board is pushing ahead without the support of the Government Advisory Committee (GAC), ICANN Chair Peter Dengate Thrush said, “Unless innovation can be restrained it should be allowed to roam free….but  ICANN cannot survive without full support from the governments of the world. There are aspects of GAC advice that we have elected not to follow. This is in accordance with the By-laws.” Accordingly an additional diplomatic resolution was passed by the Board, “Expressing the deep appreciation of the ICANN community for the extraordinary work it has invested in crafting the new gTLD programme”.  GAC Chair Heather Dryden, the Canadian representative, said neutrally, “We will continue the discussion with the Board and the community”.

This was in contrast to the euphoric tone of some of the Board Members and many delegates at the ICANN meeting. Steve Crocker, a strongly tipped candidate to be the next Chair of ICANN said, “Is the programme perfect? Of course not. Is it solid? Yes …Strap yourself in. There will be turbulence along the way. It will be quite an exciting ride.”

Winners in this process, which will lead to the introduction of hundreds, perhaps thousands of new registries, include “Developing  World Applicants” who will be given a 76% waiver on the application fees of $185,000 and, to a limited extent, the Red Cross and the International Olympic Committee whose names have been granted special protections at the top level (though not at the second level).

The impact for brand owners involves an evaluation process of whether to apply or not and a requirement to re-configure rights protection programmes.

Nick Wood, Managing Director of Valideus and Com Laude said “for a small number of brand owners, especially those born of the internet, this is good news because there are real advantages of communication and security.  However for the majority of rights owners this heralds a period of uncertainty.  New strategies to defend IP across a considerably expanded domain landscape will be essential.”

For further information, contact info@valideus.com.

Valideus is the new gTLD consulting arm of Com Laude.

Path cleared to allow ICANN Board to approve New gTLD process

The New gTLD process moved closer when ICANN published the Applicant Guidebook on 30 May 2011. After six Draft Applicant Guidebooks spread across more than three years and thousands of comments from supporters and opponents of the process, this document is the foundation for a programme of change that will irrevocably alter the domain name system. Together with a detailed explanation of the application process, the Applicant Guidebook features the 50 questions that all applicants must answer as well as the registry operator’s contract.

If the ICANN Board approves the Applicant Guidebook at its Special Meeting in Singapore on 20 June 2011, then application could open four months later in October 2011. New registries could then begin to go live from October 2012 onward.

However, publication of the Guidebook on the 30 May target date set by the ICANN Board three months ago does not mean that there will be no more changes. In the introduction to this 355 page document, the document is referred to as “a draft” by Beckstrom and further changes are anticipated: “As approved by the ICANN Board of Directors, this Guidebook forms the basis of the New gTLD Program.  ICANN reserves the right to make reasonable updates and changes to the Applicant Guidebook at any time, including as the possible result of new technical standards, reference documents, or policies that might be adopted during the course of the application process”.

What is most remarkable about this publication is how few changes there are of any significance. We learn that there is going to be an Applicant Service Centre to assist applicants but otherwise there are few changes of note other than the acknowledgement that the Government Advisory Committee (GAC) “May provide advice on any topic and is not limited to the grounds for objection enumerated in the public objection and dispute resolution process.”

Like the majority of comments made on the last Draft Applicant Guidebook, our suggestions   to ICANN were mostly ignored. We remain concerned that the Financial Template is unfit for Dot Brand applicants and we know that the directors of publically quoted companies we are assisting are going to be very reluctant to supply their private addresses.

It appears that the ICANN staff have pressed ahead with publication to meet its self-imposed schedule whilst the discussions with the GAC which could yet lead to more dramatic changes continue in the background. There will be telephone conferences followed by an in-person meeting between the GAC and the Board in Singapore on 19 June 2011. The Guidebook does finally acknowledge the supremacy of the GAC over the ICANN process promising that “a mutually agreed and understandable formulation for the communication of actionable GAC consensus advice regarding proposed new gTLD strings” will be created. This is the start of Government censorship of objectionable strings.

In regard to the protection of IPR, there is little new. Question 29 of the Application Questions still states that, “Applicants must describe how their registry will comply with policies and practices that minimize abusive registrations and other activities that affect the legal rights of others, such as the Uniform Domain Name Dispute Resolution Policy (UDRP), Uniform Rapid Suspension (URS) system, and Trademark Claims and Sunrise services at startup”.

Introducing the Applicant Guidebook, ICANN CEO Rod Beckstrom predicts “a safer on-line environment”. He says, “This landmark programme has the potential to create more choice for internet users, empower innovation, stimulate economic activity and generate new business opportunities around the world”.  This is a point of view that thousands of rights owners might disagree with but the time for discussion or comment is over. The new gTLD process is unstoppable.
Nick.wood@valideus.com

For more information, see http://www.icann.org/en/topics/new-gtlds/comments-7-en.htm.

For details of the assistance we are giving our clients and a small number of leading brand owners in evaluating and, if appropriate, applying, contact Nick.wood@valideus.com

31 May 2011

As there must be a four month window between this announcement and the opening date, ICANN could start receiving applications from October 2011. In theory, new gTLD registries could then open from the late Summer or Fall of 2012 if the evaluation period for straightforward applications take eight months and delegation into the World Root another eight weeks.

At the conclusion of the ICANN Board Meeting held in San Francisco on 18 March 2011, Peter Dengate-Thrush, Chairman of the ICANN Board, said “Monday 21st June is the date when the ICANN Board is going to launch the new gTLD programme. This is a resolution that the entire ICANN community can get behind. We are already scheduling the Launch Party for the Wednesday after the announcement”.

This bold statement of confidence was not anticipated by observers who ventured to the 40th ICANN Open Meeting in San Francisco only to find the advertised schedule of meetings disrupted. Session after session was cancelled to allow the Government Advisory Committee (GAC) to meet with the ICANN Board first in public and then behind closed doors to resolve what the GAC had identified as “12 outstanding concerns regarding the proposed implementation of the new gTLD program”.

ICANN was designed to be a bottom-up, transparent  organisation that bases its policies on consensus  between seven constituencies. In the so-called ICANN community, public interest is counter-balanced by business concerns, the views of individuals are weighed against registry and registrar economics. However, in San Francisco, a new Top Down way of working emerged that excluded the ICANN community.

Peter Dengate-Thrush defended this process: “The community is behind us,” he repeated again, as if saying it would make it true. “Most of the hard issues are on the table or behind us” he said, referring to the GAC’s Scorecard of outstanding concerns that at the start of the meeting featured 25 issues ranked as 1a (meaning “Consistent with GAC Advice”); 28 ranked as 1b (“Consistent in Principle but more work needed”) and 23 ranked as 2 (No agreement). He continued, “By Singapore we will have resolved the outstanding issues or if we can be clear that we are not going to resolve them, we will publish our rationale and push ahead”.

Unfortunately, amongst the issues ranked 2, with no immediate path to resolution, are many relating to the protection of intellectual property rights. This is partly because members of the GAC have to confer first between themselves and then with their home governments before they can reach a position and partly because no GAC representative has an IP qualification. ICANN, on the other hand, has a Board which features four IP professionals as well as an in-house legal team. Dengate-Thrush, an IP barrister himself, has exploited this advantage aggressively during discussions with the GAC.  Time and again he drilled down to a fine point of detail, only to have the GAC respond with a muted defence that their position reflected  “Best current thinking” .

Some of the outstanding concerns relating to IP protections include:
Sunrise/IP Claims: Should registries have to operate a Sunrise and an IP Claim (as the GAC  wants)? Should IP Claims run in perpetuity or just during the launch phase? Should an IP Claim be on an exact match of a term in the Clearinghouse or the term plus other characters (for example, just LEGO or LEGOTOYS)?

Uniform Rapid Suspension Scheme: What does Rapid Mean? The original proposal by the Implementation Recommendation Team was for a process that would take a site down and have the domain locked within 14 days.  By the time the ICANN community had finished  with its “improvements”, the URS was longer than an eUDRP (about 35 days). Should the loser be required to pay? Should winning complainants be given the right to request a transfer of a name? Should URS panellists have qualifications in trademarks?

Trademark Clearinghouse: Should the Clearinghouse accept marks from jurisdictions that undertake substantive review and those that don’t on an equal basis (as the GAC wants)? Should there be a requirement to provide evidence of use (as ICANN wants)? Should the Clearinghouse hold rights other than trade marks for use in applicable territories – such as the names or works of art of literary merit in Germany (as ICANN wants)?

There will be a teleconference between the ICANN Board and the GAC  on 20 May 2011 to discuss the remaining issues on the Scorecard ranked as 1b and 2, including those listed above which relate to IP on 20 May 2011. The Intellectual Property Constituency has a concern that it is on the sidelines, shouting specialist advice that might be carried away on the winds of expediency. It is possible that in order to obtain adequate protections for geographical terms of importance to Governments and an early warning system which allows it to flag a concern with a character string it deems undesirable, the GAC will  allow ICANN to dilute IP protections.

The timeline to 20 June 2011 announcement of the launch date now features the following steps:
25 March: Initial GAC feedback on the Scorecard
15 April: Final scorecard published together with “Extracts from the Applicant Guidebook with tracked changes” (showing where amendments have been made following ICANN/GAC discussions) for comment
15 May: Closing date for Public Comment
20 May: GAC telephone conference with the ICANN Board on Final Scorecard
30 May: Final applicant guidebook posted
20 June: Board consideration of Applicant Guidebook
21 June: Announcement of the date on which new gTLDs will open.

Nick Wood, Managing Director, Com Laude, 22 March 2011

On 12 November 2010, ICANN published the Proposed Final New gTLD Applicant Guidebook. This 360 page document, which is open for comment until 12 December 2010, can be found at www.icann.org/en/announcements/announcement-2-12nov10-en.htm.

Like the four previous versions, the Proposed Final New gTLD Applicant Guidebook or PAG provides detailed information about the rules, requirements and process of applying for a new gTLD. In his introduction to the document, ICANN CEO Rod Beckstrom says, “The Guidebook is the product of countless hours of dedicated effort by ICANN’s multi-stakeholder community which includes registries, registrars, intellectual property experts, ISPs, businesses, governments, non-commercial entities such as universities and nonprofit organizations, and individual Internet users. More than 1,000 public comments have been taken into consideration, and strong trademark protections and malicious conduct mitigation measures are now in place”.

At its forthcoming Board Meeting in Colombia on 10 December 2010, the Board will “Make a decision regarding the timing of the launch of the New gTLD Program. The Board can approve the Guidebook or direct that changes be made”. This is an ambitious goal, especially as the Comment period on Proposed Applicant Guidebook (PAG) does not actually close until 12 December 2010. Once the timetable is confirmed, a four month communication campaign will commence.

As the ICANN Board passed a resolution at its October 2010 meeting instructing the staff “to adopt as a working plan the Launch Scenario with launch date of Q2 2011”, we do not expect the launch date to be any earlier than June 2011 or much later than September 2011.

There are few material changes to the Guidebook that will be of concern to brand owners other than the elimination of cross-ownership between registries and registrars. Whilst it is a good thing  that private brand registry operators will not have to pay a third party to place names into their own registry, it is worrying that some of the bad actor registrars who have sheltered serial infringers could now become registry owners. Remember that the ICANN Compliance Department is leaderless and numbers fewer than 10 people.

In relation to the Uniform Rapid Suspension Scheme, rights owners are more likely to be concerned about what has not changed. The URS has been speeded up a little in that registrants now have 14 instead of 20 days to file a response but we calculate that despite this change the process could still take up to 40 days which is five days more than the fastest eUDRP (and there is the possibility of a De Novo review for two years). For a process conceived to tackle slam dunk cases of cyber squatting, this is too slow. We also wonder which organisations will apply to run the URS as ICANN views $300 as the appropriate level of fee for a panellist who might have a 5,000 word complaint to review.

In earlier drafts of the Applicant guidebook, ICANN managed to propose a model for the Trademark Clearinghouse that discriminated between trademarks from jurisdictions which do and do not undertake what it calls “substantive evaluation”. In the PAG, ICANN finally provides a definition of what it means: “Substantive evaluation upon registration has essentially three requirements: (i) evaluation on absolute grounds to ensure that the applied for mark can in fact serve as a trademark; (ii) evaluation on relative grounds to determine if previously filed marks preclude the registration; and (iii) evaluation of use to ensure that the applied for mark is in current use.” We are pleased that word marks from countries that undertake substantive review and those from countries that do not, provided they have been validated by the Clearinghouse operator, are eligible for inclusion in the Clearinghouse without discrimination but we don’t like the idea that ICANN is leaving it to the Clearinghouse operator or its agent “to develop and publish a list of the countries that conduct substantive review upon trademark registration”.

ICANN appears so confident that the new gTLD process will be a success that it is making a contingency plan to batch applications for processing should there be more than 500 in the first round. In such circumstances it anticipates “A process external to the application submission process will be employed to establish evaluation priority. This process will be based on an online ticketing system or other objective criteria.”

The message for brand owners is clear: get ready for change. The ICANN Board is determined to deliver what it calls “the next era of online innovation”. We don’t expect the Board to accept many substantial changes to the PAG and we do anticipate the cost of on-line protection to increase as new registries launch. However, we also see more and more brand owners considering the value of investing in tomorrow’s internet real estate. Despite the flaws in the new gTLD process, we expect that the number of brand owners who apply in the first round will exceed 100 and may even go as high as 200.

Countdown to the New gTLDs

What does this mean for brand owners? Here is our interpretation of the ICANN countdown. Note that where ICANN has named an exact day such as 9 November 2010 for the publication of the Proposed Final Applicant Guidebook, our experience of working with ICANN shows that this should be regarded as a target.

November 2010: Publication of “Proposed Applicant Guidebook” for 30 days of comment.

December 2010: ICANN Open Meeting, Cartagena, Colombia where the Proposed Applicant Guidebook will be discussed before the Board directs the staff to implement final changes.

January 2011: Publication of Applicant Guidebook and the launch of the New gTLD communications plan launched.

March 2011: ICANN Open Meeting, San Francisco, California: It might be that ICANN will announce who it is appointing to undertake Evaluations and to operate the Clearinghouse at this time.

End of May or early June 2011: New gTLD application period opens. This is when you will need to submit your applications or to monitor who is applying for which terms so that you can mount an objection if necessary.

With the fastest route to delegation being just eight months, expect new gTLDs to go live from Spring/early Summer 2012.

With the current Board Chairman Peter Dengate Thrush due to retire by rotation at the June 2011 ICANN Open Meeting, this timetable delivers him the opportunity to leave on what he will regard as a high note as the architect who delivered the expansion of the gTLD name space.

Below is our version of the new gTLD timeline.

Topic: the ICANN new gTLD opportunity

Date: September 16th and 17th 2010

Venue: The Hospital Club, Covent Garden, London

The seminar will help brand owners explore reasons to apply, whether benefits outweigh the costs, and to understand the changes the new gTLD process will bring to the business of domain name management.

10:45 Coffee & welcome

11:00:  Overview of the new gTLD process

• Introduction to the new gTLD process
• How the internet will change
• Why brand owners are considering applying
• What does running a domain registry involve and how will this impact on your resources?
• Timing
• Costs

12:00: To apply or not to apply?

• What factors should you take into account as you decide to apply or not?
• Who should you involve in the decision?
• What does the application process involve?
• How could your application be challenged and how do you defend it?

12:45: Light lunch and discussion

13:30:  Demonstration of New gTLD software
If you can imagine that the seminar room is the world, then we will build for you a new gTLD registry for an imaginary brand of your choosing before your eyes. You can select the parameters – which terms to block or reserve, how you want the whois to be configured, the reports that you want. The purpose of this demonstration is to demonstrate what running a registry involves and how policy decisions can impact upon your marketing.

14:30:  Managing domain portfolios in the age of new gTLDs

• Whether you are applying or not, how do you defend your rights across other new registries?
• What strategies might you consider and how must you budget?
• How might you use the Clearinghouse and the URS?

15:00  Tea, coffee & conclusions

Although all places for these two dates are now fully booked, we may repeat these seminars if there is sufficient demand. If you are interested in attending these free seminars at a future date, then do please contact us and we would be happy to discuss.

David Green, Project Manager at Valideus, recently presented to members of the Bowen Craggs network of corporate web directors and managers.

The afternoon explored the background to the gTLD initiative, types of prospective applicants, business models and innovation in digital services, the implications for brands, and managing the complexities of the ICANN application and evaluation processes.

A lively discussion ensued amongst participants, with lots of questions being asked.

An article, ‘What’s to fear about a new address’ covers the topics discussed, and concludes that the new gTLDs are “not something any large organisation can ignore”.