gTLD Strategy

On a daily basis we’re bombarded with information about ways in which technology can be “bad”: from cyberattacks on critical infrastructure to social media digilantism in the wake of the Boston Marathon bombings, to Craigslist scams and cyberbullying.

Fortunately, for almost every negative example, we are also presented with a truly revolutionary solution or opportunity that’s entirely dependent on the existence of the Internet (which just celebrated its 20^th birthday).

A recent article by the Raleigh News & Observer, republished on Pass/Fail, described one of the latter situations:

“In a windowless conference room in a Las Vegas casino, about three dozen people are swishing their fingers across iPads, trying out test versions of new apps and screening for glitches. But these are no Silicon Valley techies in town for one of the city's massive electronics shows. Many are from far-flung American Indian reservations, and their high-tech devices are serving a decidedly old-school purpose: trying to save their languages from the brink of extinction.”

Google jumped in on the language revitalization movement in a big way about a year ago when it launched the Endangered Languages Project, “an online collaborative effort to protect global linguistic diversity.” What better place than a website to house videos, audio and text of endangered languages from far-flung corners of the globe?

What about a whole top-level domain full of websites dedicated to the community that speaks the endangered language? As noted by tech company owner Don Thornton in the News & Observer article, “Language revitalization advocates say they applaud the new technology, but note it's just one part of broader efforts that could include mentorship, classes and a community commitment to using tribal languages in daily life.”

But technology could integrate an endangered or tribal language into modern, daily life by creating an online world in which email addresses, social media platforms, blogs, reference sites and e-commerce are in the language as well. A new generic top-level domain (gTLD) – like the "sponsored" top-level domain
created for Catalonia (.CAT) – allows for a community to mirror the physical community and serve the nation, people, region, or culture of its members in a way that individual websites cannot.

The landing page for the PBS series “We Shall Remain” makes an excellent case for a community-run gTLD. The three sections - Language, Sovereignty, Enterprise – would easily translate into the body of a community based-application for .HOPI or .CHEROKEE.  The tribal communities are excellent candidates for closed new gTLDs because a) the United States recognizes domestic tribes as sovereign nations and b) tribes already have a set of codified criteria to determine who is considered a member of the tribe -  “Tribal enrollment criteria are set forth in tribal constitutions, articles of incorporation or ordinances.” When applying for the gTLD the tribes could choose their guidelines or requirements for registering a domain name within the gTLD entirely upon the existing enrollment criteria. Once awarded, the governance and operation of the gTLD would align with the physical tribe’s governance and operation.

As a result, .HOPI would be run by the existing and single Hopi nation, avoiding the challenges faced by an application for a religion practiced in multiple countries by millions of individuals who may have very different ideas about who has the right to own the gTLD.

As an example, the Potawatomi tribe and various bands of the tribe, from the upper Mississippi River region, are already very active online: there are multiple websites with current and relevant content. (For a list of websites currently associated with Native American tribes and/or tribal communities, click here.) Earl Meshigaud, Hannahville, PA
Potawatomi Indian Community,  explained the significance of the Internet to the tribe and the Hannaville Community on its website,

This may not be exactly what our Elders had in mind when they said that it is our responsibility to orally hand down to the next generation the things that we learn so that those coming behind us would have what we have and more…we hope that the 'memory' of the computer (wzhobontakchegan) world will hold for future generations what we may have otherwise forgotten. Live a good, healthy life because your actions serve as the best teacher – and let the computer assist you in your learning.

By now you’ve hopefully filed your taxes and received your refund – and if you buy and sell BitCoins, you definitely filed that information and any losses or gains, right? Sounds wacky but Forbes explains in a recent article that the Financial Crimes Enforcement Network (FINCen) considers the online currency to be a traded and taxable good or service.

"The IRS already gets a piece where you swap one product or service for another, as the IRS explains at its Bartering Tax Center. Soon the IRS may have a Bitcoin Center too. The Treasury unit called FinCEN... already has rules about Bitcoin and the IRS is likely to follow."

This may be due to all of the attention the digital coin has been getting recently as media outlets report wild fluctuations and question its value. The coins, which can be purchased on bitcoin.org, reside in an online wallet (like an online bank account) and a Bitcoin address is “the only information you need to provide for someone to pay you with Bitcoin,” according to the site.

Clearly users trust Bitcoin’s cryptography and the website itself in order for the currency to survive and thrive. Consumer trust is critical to the success of online banking as well – and bank IT security leaders work tirelessly to stay on top of or ahead of an endless barrage of cyber attacks, especially in the form of phishing. As recently as April 5, Ars Technica reported a phishing attack on Coinbase, a Bitcoin wallet service: “Someone has been sending e-mails to Coinbase users claiming that they need to log in to confirm recent transactions but directing them to a website not controlled by Coinbase.”

So maybe Bitcoin should apply for its own branded top level domain (TLD) .BITCOIN in the next round of applications? If Bitcoin operated a closed registry, meaning that it didn’t allow anyone else to purchase secondary domain names in the TLD, some phishers could be thwarted. IF enough consumers understand that addresses in the address bar cannot be spoofed, they will KNOW corp.BITCOIN can only be a Bitcoin site. Moving the currency to its own, more secure TLD may also please government officials, who are beginning to discuss regulating the purchase and trade of these cyber coins.

As Neil Irwin described the idea of bit coin in a recent Washington Post article, “There is a certain theoretical elegance to the idea of a borderless currency.” The same is true of the Internet itself: there is elegance to the idea of borderless communication, or transactions in the currency of information and knowledge. But the same issues that exist within boundaries and between countries exist in even a borderless cyberspace: issues of security, politics, culture, and governance. Online currency is in its infancy, but seems an inevitability – and also one of the ‘innovative business models’ that supporters of new gTLDs imagined when launching the new gTLD program.

ICANN has posted a "Proposed Final New gTLD Registry Agreement" for public comment, and it’s no surprise many gTLD applicants are not satisfied.

This latest version of the Registry Agreement (RA) "is the result of several months of negotiations, formal community feedback during a public comment forum initiated on 5 February 2013, and meetings with various stakeholders and communities," ICANN states.

Despite the work that went into it, many applicants hope that this version will not be the last.

The RA features a number of updates and changes - including revisions to the amendment process, a new confidentiality provision, and revisions to registry owners’ rights and obligations on reserved names.

But much work remains.

ICANN’s process for amending the RA - after registries sign it - is still the object of intense debate. Many argue this top-down approach is antithetical to ICANN's consensus-building, multi-stakeholder process, but ICANN has shown little to no inclination to budge on this point. Brand stakeholders also remain concerned about insufficient trademark protections in the event a registry fails.

The Registry Agreement Negotiating Team (RA-NT) - an informal group with no decisional authority that nevertheless worked with ICANN on the redraft - issued a statement making clear it expects additional changes upon closure of the public comment period, over a month away.

For now, we eagerly anticipate reaction from the ICANN community and the ICANN board and wonder whether the board will accept the community's feedback before final terms are approved.

The fate of plural/single-term contention sets is a hot topic in Beijing. Most people watching the new gTLD application process expected ICANN to approve either just one plural or singular term for each contention set. For example, either .CAREER or .CAREERS, would proceed to launch, but not both. Would allowing both the singular and the plural of a particular term be too confusing?

Not according to ICANN, as the tealeaf readers suspected in late February when ICANN announced only two non-exact contention sets.  Both .CAREER and .CAREERS, along with other singular/plural matching terms, can move forward.

In a meeting with the ICANN Board today, a representative from ICANN's Governmental Advisory Committee (GAC) expressed concern about the potential for consumer confusion caused by these types of strings, noting that many others share this concern. In response, the Board stated that it won’t second-guess the results of the Independent Panel, which was charged by ICANN to make the final call on contention sets. The Board continued, saying said that the GAC should feel free to issue advice on this topic, but that the Independent Panel did look at the plural/singular terms, considered the possibility of confusion due to visual similarity, and ultimately decided that the existence of both terms would not cause confusion. And that's that.

Some think there could be serious consequences to the Board's decision. Brands looking to protect their trademarks will have to consider registering in twice as many new gTLDs as they would have otherwise. Internet users may wonder what the difference between .CAREER and .CAREERS content is. And in any future application rounds, anyone could piggyback on successful gTLDs by adding an "S" on the end and filing an application of their own.

For some following ICANN’s gTLD launch process, the Board’s decision was puzzling in part because the Board acted as if the Independent Panel’s decision was independent, when in fact the panel was established by ICANN and has conducted its activities behind closed doors.

Verisign recently released a report highlighting a key security concern surrounding the new gTLD roll-out:  Intranet extensions like .local or .home.  How can such seemingly innocuous (and even comforting) words represent a serious security concern?

Apparently, the answer is when the formerly “homegrown” Intranet extensions are also launched in the world wide web as Internet extensions.

FairWinds Managing Partner Phil Lodico observes that some large enterprises have and continue to use “generic” TLDs within their networks. Because these TLDs are specific to a company’s own network, one enterprise in New York City could have an internal TLD named .local and another enterprise in Boston could have a completely separate .local on its network. The two networks are not connected, and so it doesn’t matter that there are two .local TLDs.

However, as Versign points out, some of these internal networks received digital certificates for their internal TLDs. (An example of a digital certificate is the little lock, or Secure Sockets Layer (SSL), that appears at the bottom of a webpage to indicate that it is safe to complete a financial transaction from that site.) In the example of .home, a disgruntled employee with access to one of the network-specific SSLs on .home could spoof a credential for a website such as Nike.HOME or HSBC.HOME.   In the reverse scenario, an employee of a company with an Intranet that uses a soon to be “real” Internet TLD could be vulnerable to an attack if they attempt to access their Intranet version of “.home” while outside of the network.

In this parallel cyberspace scenario, is it the internal network’s problem that they created an Intranet using a generic extension when ICANN has stated since its inception that there would be new gTLDs – some of which would be generic?  Or is it ICANN’s fault because it oversees the entire space?  Ultimately, Lodico concludes, the burden lies on the Intranet network operators and ICANN leadership.  Cyber space is comprised of both and must safely coexist.

Where’s Keanu Reeves - er, Neo - when you need him?

FairWinds CEO Nao Matsukata is advocating for ICANN to offer an alternative draft Registry Agreement (RA) for Internal Registries, whose needs are uniquely different from those of new gTLD Registries who plan to sell second-level domain names to the public.

Matsukata’s recommendation – made in a letter to ICANN CEO Fadi Chehadé dated March 27 – is based on extensive experience. FairWinds associates prepared 150 applications for over 50 corporations, have held numerous client discussions about the new gTLD process, and carefully reviewed the Public Comments.

A separate, specific contract could shorten the negotiation process for Internal Registry applicants, thereby freeing up ICANN’s resources to process applications for public gTLDs. Matsukata believes that this type of substantive change will result in real process improvements for all applicants.

He is also confident that ICANN can modify its current process before gTLD delegations begin.

As Bloomberg BNA reported last week,“Though the turnaround time on new contracts at ICANN is typically not quick, it might be possible for ICANN to publish a new contract in keeping with its current timelines, Matsukata remarked."

On March 22, ICANN announced the first 27 applications for new gTLDs that passed Initial Evaluation.

The 27 applications that passed and that do not face any objections or string contentions will be able to proceed to the contracting phase. These applicants can execute their contract with ICANN "as early as 23 April 2013".

ICANN is planning on releasing Initial Evaluation results each week, 30 strings at a time, and the organization is hoping to increase the release to 100 strings per week.  The status of the three applications that would have rounded out the first 30 – application 7, 18, and 29 in terms of priority rank – is still unknown for "one or more possible reasons", according to ICANN., and the reasons could range from "pending change requests, clarifying questions, or follow-up with applicants regarding missing information."

ICANN's current plan is to have all Initial Evaluations results posted by the end of August 2013.

The Trademark Clearinghouse (TMCH) is poised to open Tuesday of next week, which means that March 26 will be the first day that brands or their agents can register their trademarks with Deloitte's system.  That’s the FIRST day, not the last.

In fact, there is no deadline for registering trademarks. The TMCH will accept registrations on a rolling basis, as trademark owners submit them. It is up to the trademark owner to decide when it will register, and this is a decision that should be driven by each trademark owner's particular protection needs.

For example, if a company is concerned about its presence in Internationalized Domain Names (IDN) – in non-Latin scripts such as Cyrillic, Japanese, Arabic, or Hindi – they should plan to file their trademarks early because the IDNs will be delegated first.

Deloitte’s announcement this week indicates that, even if ICANN is able to meet the projected April 23 date for the first new gTLD delegations, the Sunrise periods for those gTLDs may not take place until late May. Thus, trademark owners should, for the most part, plan on registering their marks in the two months after March 26.

Other TMCH timeline changes made after vigorous debate with ICANN stakeholders:

Trademark Claims service extended from 60 to 90 days

The Trademark Claims Service (more detail here) alerts both the registrant and the registry when someone tries to buy a domain that is an “Identical Match” to a trademark found in the TMCH.

This notification system originally was set to run for 60 days after general registration opens in that gTLD. Registry Operators had the option to run it longer. Now, the notification system will be required to run for at least 90 days.

The Impact:

This change provides an extra 30-day cushion. The Trademark Claim Service is an alert system and does not block an attempted registration. So it might stop some registrants from registering “Identical Match” domain names, but it will do little more than slow down more determined cybersquatters.

Clearinghouse will accept previously abusive registrations

Each trademark owner can submit up  to 50 "domain labels" that were registered abusively in the past. For example, if FairWinds Partners filed a successful UDRP complaint to reclaim FairWWindsPartners.TLD, then it could submit "FairWWindsPartners" to the TMCH. The trademark owner has to prove that the "domain label" was registered abusively by showing a successful URDP complaint that resulted in a domain transfer to the trademark owner.

The Impact:

The TMCH will become the repository of more than just "identical matches," at least for the purposes of the Claims service. Claims notices will be sent to the registrant and the rightful owner whenever there is any attempt to register "domain labels" as domain names. Again, the benefit of the Trademark Claims Service is limited, but it provides a broader scope of protection.

Each Sunrise period will be preceded by a 30-day notice

The Sunrise period will allow trademark owners to register domains that are identical matches to their trademark before cybersquatters have the chance to register the domains. Now, 30 days before the Sunrise, gTLD Registry Operators will have to inform the public of the timing and rules of the Sunrise.

The Impact:

Trademark owners will have time to prepare to protect their marks with each wave of gTLD launches.

A few days after ICANN’s new gTLD Objection Filing period closed last Wednesday evening, the first objections are beginning to be made public. The first Legal Rights Objection posted by the World Intellectual Property Organization (WIPO), the designated dispute resolution provider for this type of objection, is over the application for .DELMONTE, Domain Incite reported late last week.

The Legal Rights Objection (LRO) is one of the provisions ICANN put in place in this new gTLD application round to protect trademark holders. The idea is that if an applicant applies for a new gTLD that infringes upon an organization’s existing trademark rights, then that organization can file an LRO to assert its rights. Ultimately, if the applicant has no demonstrable rights to the term, the application can be terminated. The LRO was one of the primary reasons ICANN could assure the trademark community that cybersquatting would not occur at the top level.

But what happens when two organizations have rights to the same mark?

The dispute over .DELMONTE raises interesting issues. The organization that applied for the gTLD is a subsidiary of Fresh Del Monte Produce, Inc., and the objector is Del Monte Corporation. Here in the U.S., we know and recognize Del Monte Corporation as the producers of canned fruits and vegetables, and as the parent company of a handful of other well-known brands. Fresh Del Monte Produce, Inc. makes similar products, but primarily markets them outside of the U.S. and South America. If you visit Del Monte Corporation’s corporate site at DelMonteFoods.com, you’ll notice a disclaimer at the bottom that reads, “Del Monte Foods is not affiliated with Fresh Del Monte Produce, Inc., Del Monte International or their subsidiaries or affiliates. ©Del Monte Corporation.” This is because Del Monte Corporation spun off Fresh Del Monte Produce, Inc. in 1989. Now Fresh Del Monte Produce, Inc. uses the Del Monte mark under a licensing agreement.

Undoubtedly, this licensing agreement will come into play during the dispute resolution over this objection. If it turns out that Del Monte Corporation holds the trademark rights to “Del Monte” and Fresh Del Monte Produce, Inc. does not own separate rights, then we could see the .DELMONTE application tossed out.

Then again, there’s always another option: cooperation. If the two Del Monte’s have coexisted for the past 24 years, both in the global marketplace and the online world, then perhaps there is an opportunity to share the use of the .DELMOTE gTLD. So far, the .DELMONTE objection is the only one that WIPO has posted on its site, but you can bet there will be more published over the coming days and weeks.