Posts Tagged ‘gTLD’

News from ICANN: New gTLD Launch confirmed in January 2012

Monday, June 20th, 2011

Applications for new gTLDs will open on 12 January 2012. In a special meeting at the 41st ICANN Open Meeting in Singapore, the ICANN Board voted 13 to one with two abstentions to approve the Applicant Guidebook and implement the new gTLD programme.

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.

Final Guidebook Published

Tuesday, May 31st, 2011

The launch of new gTLDs move closer with the publication of the Applicant Guidebook.

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

Countdown to new gTLDs

Wednesday, March 23rd, 2011

ICANN is to announce the opening date for applications for new gTLDs in June 2011 at its 41st Open Meeting to be held in Singapore.

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

ICANN publishes Proposed Final Applicant Guidebook

Monday, November 15th, 2010

ICANN has published the Proposed Final Applicant Guidebook which sets out the rules, requirements and process of applying for a new gTLD.

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.

New gTLDs to launch at the end of May 2011

Wednesday, November 3rd, 2010

The ICANN Board has resolved to launch the new gTLD process at the end of May 2011. What are the milestones to look out for and what do you need to do by when?

Countdown to the New gTLDs

At its Meeting on 28 October 2010, the ICANN Board passed a resolution in relation to the New gTLDs instructing the staff “to adopt as a working plan the Launch Scenario with launch date of Q2 2011”. The Board then referred to the following graphic which can be viewed at http://www.icann.org/en/minutes/resolutions-28oct10-en.htm:

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.

New gTLD seminars

Thursday, August 26th, 2010

Helping brand owners to decide whether to apply or not.

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.

Web directors focus on new gTLDs

Thursday, August 26th, 2010

Bowen Craggs gTLD seminar

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”.

A battle for online naming rights

Wednesday, June 23rd, 2010

Nick Wood, Managing Director of Valideus, was interviewed by the Financial Times in an indepth article on new gTLDs: ‘A battle for online naming rights‘ . (free access, registration required – published June 17, 2010)

Dotname goldrush

Tuesday, June 22nd, 2010

Nick Wood, Managing Director of Valideus, was interviewed by the Sunday Times in an article on new gTLDs: ‘Get ready for the dotname goldrush’. (free access, registration required – published June 20, 2010)

New gTLDs advance

Thursday, May 6th, 2010

ICANN Board presses on under influence of GAC

EOI cancelled as measures to protect IPR enter final phase & communication plan launches

“We’re not focusing on a launch date. What we’re focusing on is getting the issues resolved”. With these words, ICANN Chairman Peter Dengate Thrush set the tone for the 37th ICANN Open Meeting held in Nairobi, Kenya from 7 – 12 March 2010 when he addressed an audience depleted of many ICANN regulars because of concerns over security.

Throughout the meeting, there was evidence of a desire to move away from the controversial to the substantial. Gone were the unilateral determinations and ambitious timelines beloved of ICANN staff who enjoyed an extraordinary decade of executive freedom under the distant oversight of the US Department of Commerce. Instead, there was a refreshing commercial reality as the newer Board members came into the sun, chairing meetings, listening closely to a range of stakeholders beyond what we call the “family of ICANN”, aware perhaps that with enhanced remote participation facilities, the eyes of the world were truly upon them. It was as recent as September 2009 that the Affirmation of Commitments confirmed ICANN’s role as a multi-stakeholder, not-for-profit organisation whose work is scrutinised by a Government Advisory Committee instead of the DoC, but the impact of the revitalised GAC is clear.

Take heart IP owners. Whilst the old ICANN may have interpreted its mandate to introduce competition into the domain name space by creating an unlimited number of new gTLDs, the new ICANN may yet surprise you. Who knows how differently it will behave when both the Registry community and its Board feature representatives of some 250 Private Brand Registries?

Consider what happened to the Expressions of Interest concept. Designed to help ICANN to assess demand for new gTLDs, the model proposed by staff would have accelerated the start date of the process whilst requiring interested applicants to pay $55,000 and to reveal the character string they desired. In its Nairobi Communiqué of 10 March 2010, the GAC turned a withering eye on this concept: “The mandatory nature of the currently proposed Expression of Interest (EOI) model turns it into a slot reservation step and not a mere data-gathering exercise as initially intended and presented. Opening slot reservation and conferring certain rights to the participants against payment of a fee would constitute a de facto launch of the new gTLD application process….the GAC formally advises the Board to launch it only after the overarching issues have been resolved and the Draft Applicant Guidebook (DAG) finalized.”

What was the result of this intervention? At the Board Meeting on 12 March 2010, to gasps of surprise, the Board “withdrew the EOI from consideration” citing “the GAC questioning the benefits of pursuing further a separate EOI”. Board Member Raimundo Beca explained why he had voted against the EOI: “When I came to Nairobi, I was decided I was going to vote in favour of the EOI… But I got given the GAC communiqué, I got persuaded that the mandatory nature of the EOI had not (sic) consensus in the community”. Bruce Tonkin, Board Member and arch-supporter of the EOI put it another way, “It’s clear that there’s no consensus in the community on either the concept of the EOI or especially its implementation.”

With the EOI out of the way, the spotlight is turning on IPR protection once again. A workshop on “Trademark Protections in the new gTLDs” was notable initially for the composition of its panel. As the Intellectual Property Constituency had held its meeting in New York in response to the security concerns, there was no representative of a trade mark owning corporation on the panel. As the panel wandered through the ragged remains of the “Tapestry of interwoven measures” that had been initially proposed a year ago by the Implementation Recommendation Team (IRT), peace broke out once again. On the Trademark Clearinghouse, panel chairman and Board Member Mike Silber said, “We now understand it is not a rights protection mechanism but, rather, it’s an automated database against which verification can take place, either for sunrise registrations or for IP claims…We seem to have a few rough edges which need to be smoothed over, but we have pretty good consensus.”

One of roughest of these edges concerns the status of trademarks filed at registries that do not undertake substantive examination. Some registry operators and a vocal majority of non-commercial representatives want such marks excluded from the Clearinghouse because they fear that domainers with spurious trade mark registrations for dictionary terms (such as the score of marks filed under the Benelux regime for “Sex”) will make a land grab for the best terms. As well-intentioned as this might be, the effect in Europe alone would be to exclude trade marks filed in Austria, Benelux, France, Germany, Italy, Spain, Switzerland and of course OHIM. Depending on the definition of “substantive examination” which ICANN has never attempted, the UK would also be excluded.

When it came to the Uniform Rapid suspension Scheme, a faster, cheaper little brother of the UDRP for slam-dunk cases of bad faith registration, ICANN Chair Peter Dengate Thrush summed up the harmonious view of the panel discussion: “I just want to warn the community that there’s a real danger of this mechanism actually having been agreed and the board voting on it and us moving on…We really are getting close on this one…so just a warning. We may actually be ready to move on this one.”

Fortunately, there is still the opportunity to comment on both the Clearinghouse and the URS. Go to http://www.icann.org/en/public-comment/public-comment-201004-en.htm#tmc. We would like the Clearinghouse to accept trademarks equally from all registries of national or international effect, provided they are current. We would like the URS to feature an option for mark owners to reclaim a name that they have successfully challenged rather than simply having it frozen until the expiration date. The closing date for comments is 1 April 2010 so act fast, for, as Mike Silber said in Nairobi “Upon the conclusion of the current public comment process, the models will be finalized for inclusion in what will then still be the draft applicant guidebook, until such time as we move to the pure applicant guidebook… so your comments need to be in pretty damn quick”. All it takes is one email.

Although there was consensus on the panel on the need for a mechanism to tackle “bad actor new gTLD registry operators” , the staff version of the Post-Delegation Dispute Resolution Procedure (PDDRP) has moved so far from the original scheme suggested by the IRT, that it was not clear how to go forward. In the current PDDRP, ICANN proposes limiting its liability by delegating the responsibility of policing a registry that systematically encourages cybersquatting to an external panellist who has the power to investigate and penalise such registries, imposing what could be significant fines. Such draconian measures are not popular with current or prospective registry operators: “ICANN is very good at asking registries and registrars for service- level commitments, and I think it’s time for us to demand that ICANN make those same service-level commitments to us” said Jeff Neuman, former member of the IRT, on the staff at registry-operator NeuStar. Concluding the discussion, Mike Silber said, “This is an area that still seems to need a fairly significant amount of work, whether it’s just a question of language which needs to be improved …or whether it’s a conceptual issue”. Watch this space and expect WIPO to reappear in the process.

It’s not a perfect world and the IPR protections that ICANN is bringing forward are very far from the tapestry that the IRT envisaged a year ago. Certainly the refusal of ICANN to provide research into the viability of a Globally Protected Marks List recommended by the IRT leaves the largest trade mark owners exposed to second-level infringement. As former IRT member and IP barrister Zahid Jamil said in Nairobi, “The only post-launch, ongoing bad-faith registration remedy that we have is that whack-a-mole game known as the URS.”However, there is a sense that things are improving for IP owners. It might be a false dawn, but has the ICANN Board ever before expressed great appreciation “for the development of both the Clearinghouse and URS proposals in the furtherance of trademark protection”?

Is this the influence of the GAC? In its Nairobi communiqué, the GAC made it clear that it wants measured progress towards the new gTLDs, not a head-long rush: “While noting the widespread concern that the introduction of new gTLDs is not happening as early as originally envisaged, the GAC nonetheless expects ICANN to ensure that the opening up of the gTLD space is undertaken in a way that does not compromise the resilience and integrity of the DNS and serves the global public interest. All significant outstanding community issues of concern must therefore be resolved or mitigated before the first steps are taken to implement the new gTLD application framework, consistent with Article 9.3 of the Affirmation of Commitments.”

What issues was the GAC referring to? A short-list of matters of importance to IP owners includes:
“The need to explore track differentiation between categories”: When evaluating new gTLD applications, surely it makes sense for cities to be considered againstcities, for Private Brand Registries to be measured against other Private Brand registries?
The Morality and Public Order objection process: “The GAC questions the appropriateness of the phrase “morality and public order” and is unclear how the proposed mechanism would work in practice”
Security & Stability: “The root scaling implications arising from the scale and rate of change of any introduction of new gTLDs at the same time as other changes – notably deployment of DNSSec in the root, the introduction of IDNs and IPv6 transition – and the rate of these changes, must have no negative impact on the resilience, security and stability of the DNS” say the GAC.

Nor did the GAC hesitate at supporting greater rights protection mechanism: “It is important to ensure that intellectual property rights are properly respected in the new gTLD space consistent with national and international law and standards. The GAC expects that the proposed Trademark Clearing House should be made available to all trademark owners, irrespective of the legal regime they operate under, and that an effective and sustainable Uniform Rapid Suspension (URS), with appropriate remedies, and a Post Delegation Dispute Resolution Policy are established to ensure appropriate trade mark protection. While these initiatives are broadly welcomed therefore in serving to help address the concerns of brand owners, the GAC believes that they require further refining. In particular, “substantive examination” should be re-defined so that registrations examined on “absolute grounds” are included in order to ensure broader availability of the URS”

It might be May or it might be just before the 38th ICANN Open Meeting in June that the New gTLD Draft Applicant Guidebook vs. 4 is published. When it finally appears, expect to see final versions of these measures to protect IP as well as clarity on the timescales. In the meantime, listen out for the beating drums as the Board in Nairobi gave the green light for a global Communications Programme to promote the new gTLD process. Ever the evangelist, ICANN CEO Rod Beckstrom rubbed his hands with glee as he pleaded for co-operation: “We need assistance to get the word out on the new gTLD program. We have received many excellent ideas and suggestions for how to do that, but we need the entire community’s assistance to get the message out far and wide through your networks, your relationships.”

You may not like the idea of new gTLDs. You may have decided that it brings nothing but risk and confusion in the short-term. Alternatively, you may be interested in the advantages your own registry could deliver in terms of security and stability, or what you can do if your brand is in the browser whilst your competitors are languishing behind under .com. Whatever your position, now is the time to get to grips with the implications of the ICANN new gTLD programme. We expect the launch date to be in Q4 of 2010. That’s only six months away.