Speaker Responses to Questions from INTA Webcast Overview of New gtlds: The Application Period

Transcription

1 Speaker Responses to Questions from INTA Webcast Overview of New gtlds: The Application Period I read once that there is a point system associated with the application review process and an applicant has to meet a certain number level for the application to be accepted. Is this still the case? How do you find an ICANN expert advisor? There is still a point system. Each scored question must receive a score of at least 1, and successful applicants must score at least 22 technical points and at least 8 financial points in total. See Applicant Guidebook, Attachment to Module 2. When selecting counsel to assist you with navigating the new gtld process, we suggest you do not automatically turn to your usual trademark counsel. Instead, we suggest seeking out counsel with specialized experience in Internet governance and policy issues. Please find below a list of criteria to assist you with identifying counsel well-suited to provide these services: - Thorough understanding of the new gtld application process and corresponding legal issues. - Knowledge of ICANN structure and policy development process. - Participation in ICANN policy development activities such as INTA Internet Committee or ICANN s Intellectual Property Constituency (IPC). - Attendance at ICANN meetings (prior to March 2011 meeting in San Francisco). - Publications and frequent speaking engagements on the new gtld program. Do you recommend defensive registrations? Can you "sit" on a delegated TLD, whether a.brand or.generic, and not use it? An application for a new gtld is a complex and expensive process. We recommend that brand owners assemble a cross-functional team of interested stakeholders from marketing, business development, legal and other departments to develop a strategy for new gtlds. One of the many issues that this cross-functional team should weigh is the potential defensive benefit to applying for a new gtld. Successful applicants will need to make some minimal use of their registries to meet ICANN requirements. For instance, the Applicant would have to comply with ICANN s monthly reporting requirements regarding use of the new gtld and other data ICANN requests, provide internal WHOIS services, arrange for a data escrow agent, and ensure general compliance with existing and developing RFC standards published by the Internet Engineering Task Force.

2 Is there ICANN criteria for being a closed registry? Do you have an estimate of what a Legal Rights Objection would cost? In case my application faces an objection, can I amend my application to add some terms? Is an additional $50K is required if your application goes into an extended evaluation? An applicant must inform ICANN as part of its application whether the gtld will be open (i.e., available to the public for registrations at the second level) or whether it will be closed (i.e., registrations at the second level will be restricted to the registry operator). Closed registries will be able to avail themselves of an exception to the some requirements in the Registry Operator Code of Conduct contained in the Registry Agreement. This includes, for example, an exception to the requirement that registrations at the second level be made available to all registrars. It is difficult to estimate how much an objection will cost. We know that filing an objection will cost between $1,000 and $5,000, and panelist fees for a fully adjudicated proceeding could be as much as $50,000 to $100,000+. In addition, parties budgeting for objections should allocate additional funds for legal fees that will likely be tens of thousands of dollars for a full proceeding. In the case of a formal objection, both the applicant and the objector will be able to make arguments in support of their position. However, there is no opportunity to amend or supplement the application itself. Therefore, it is very important to conduct appropriate reviews of any strings you may be applying for to try to determine in advance any likely objections you may receive from third parties. In addition, careful planning may allow you to craft your application to mitigate the likelihood of successful objections against the application. Applicants failing certain elements of the Initial Evaluation can request an Extended Evaluation. If the applicant does not pass Initial Evaluation and does not expressly request an Extended Evaluation, the application will proceed no further. In certain instances, an application may be required to enter an Extended Evaluation if one or more proposed registry services raise technical issues that might adversely affect the security or stability of the DNS. In the instance that an application is referred to the application to the Registry Services Technical Evaluation Panel (RSTEP) for an extended review, there is an additional $50,000 fee. See Applicant Guidebook, Module 1, Sections and

3 If you lose at auction or are rejected at any stage are fees refundable? The Applicant Guidebook, Module 1, Section sets out the refund schedule as follows: - Withdrawal of application within 21 calendar days of a GAC Early Warning results in a refund of 80% - $148,000 - Withdrawal of application after posting of applications until posting of Initial Evaluation results in a 70% refund - $130,000 - Withdrawal of application after posting Initial Evaluation results in a 35% refund - $65,000 - Withdrawal of application after the applicant has completed Dispute Resolution, Extended Evaluation, or String Contention Resolution(s) results in a 20% refund - $37,000 - There is no refund if the withdrawal occurs after the applicant has entered into a registry agreement with ICANN Can you provide a little insight into ICANNs definition on "confusingly similar" for string contentions? We are on the fence of applying and are afraid of permanently getting locked out. ICANN defines similar twice in the guidebook. Once in String Similarity Review as follows: "In this Applicant Guidebook, similar? means strings so similar that they create a probability of user confusion if more than one of the strings is delegated into the root zone." And then in Review Methodology Standard for String Confusion. String confusion exists where a string so nearly resembles another visually that it is likely to deceive or cause confusion. For the likelihood of confusion to exist, it must be probable, not merely possible that confusion will arise in the mind of the average, reasonable Internet user. Mere association, in the sense that the string brings another string to mind, is insufficient to find a likelihood of confusion. Thus, any applicant that has not been successful is eligible for at least a 20% refund of the evaluation fee if it withdraws its application. ICANN explains that a Panel will examine all applied-for strings for string similarity. This Panel determines whether the strings proposed in two applications are so similar that they are in direct string contention. Such a determination, based on human judgment assisted by criteria and algorithm outcomes, is performed for each pair of applications. Therefore, it is difficult to predict what sort of conclusions this panel will reach, as every individual may have a different opinion as to whether it is probable that confusion will arise in the mind of the average consumer. "I think the words "it must be probable, not merely possible that confusion will arise" are very key.

4 In the public comment period, can you object to an application filed by a competitor for a generic that is in your industry? Section of Module 1 of the Applicant Guidebook makes a distinction between application comments, which may be relevant to ICANN s task of determining whether applications meet the established criteria, and formal objections that concern matters outside those evaluation criteria. During the public comment period, any third party may file comments on any application of concern, for any reason. However, it is important to note that public comments will not be considered as formal objections and according to the Guidebook, application comments have a very limited role in the dispute resolution process. Please repeat what the GAC stands for. Can't you use your existing internet registry? Ours is offering the service for a fee. If individuals can't apply, how can you protect your famous client's name? GAC stands for Governmental Advisory Committee. The GAC is a group of government representatives that provides advice to the ICANN Board on Internet policy and governance issues of concern to national governments. The GAC has played a significant role in the development of policies for the new gtld program, and has several mechanisms to provide advice on, or objections to, specific new gtld applications. For additional information on the GAC please see its webpage - Please note that the registry services that are currently available in the marketplace are generally limited to the providing services for the existing top-level domains (i.e., the spaces to the right of the dot, such as <.com>, <.net>, etc.). Obtaining a customized space to the right of the dot requires participating in the new gtld program as an applicant. While it is true that individuals cannot apply for new gtlds, any third-party individual who wishes to obtain a gtld for a famous name can simply form some type of corporate entity or partnership and apply for the string through that entity. Once the new gtlds are operational, there will be enforcement mechanisms available to protect names at the second level.

5 If our application is not successful, do we get the application fee back? The Applicant Guidebook, Module 1, Section sets out the refund schedule as follows: - Withdrawal of application within 21 calendar days of a GAC Early Warning results in a refund of 80% - $148,000 - Withdrawal of application after posting of applications until posting of Initial Evaluation results in a 70% refund - $130,000 - Withdrawal of application after posting Initial Evaluation results in a 35% refund - $65,000 - Withdrawal of application after the applicant has completed Dispute Resolution, Extended Evaluation, or String Contention Resolution(s) results in a 20% refund - $37,000 - There is no refund if the withdrawal occurs after the applicant has entered into a registry agreement with ICANN Thus, any applicant that has not been successful is eligible for at least a 20% refund of the evaluation fee if it withdraws its application. I assume the $185,000 application fee is for the.brand registry and you can charge for applications for any entities seeking your.brand domain How can you prevent fraud? As an end-user, will I search for laptops.microsoft or do I search for laptops.computers? You are correct that the $185K application fee is to obtain your own top-level domain name registry (gtld), or the space to the right of the dot in a domain name, which may be a.brand. If you choose to operate an open registry, you will be able to charge for second-level domain registrations in your.brand registry. With regard to the prevention of fraud, new gtlds offer unprecedented control over the entire domain name space, including the top-level, assuming that the registry operator chooses to operate a closed registry. This means brand owners will be able to secure and maintain all the second-level domains (the space to the left of the dot) with the effect being that customers will have assurances they are dealing with the actual entity with which they want to do business. For instance, anything to the left of <.microsoft>, such as, <laptops.microsoft> will undoubtedly be a trusted Microsoft site. Depending on various factors, such as the extent new gtlds are adopted by Internet users, it is possible this may contribute substantially to lessening fraud. With regard to actual web addresses end users will be using, it is up to the brand owners who are operating the new registries to develop these new addresses. It is possible we will begin to see new or innovative ways of structuring domain names for consumers to access. If there is a large influx of new gtlds, there is also the possibility that Internet users may become more reliant on search engines to locate their desired content.

6 A little confusing if you have.microsoft and then I want to have an IDN of "microsoft" -- does that mean you can build the IDN in your.microsoft? or do you have to apply separately for an IDN for.microsoft? Can you expand on the international opportunities? Isn t the dot.brand international? For open registry -- can we limit to our own partners, etc.? Or can anyone -- even competitors -- register names in the.brand open space How do we monitor the names that are being proposed for gtlds? If the company that owns the registry merges or is sold, does the registry transfer with the company's assets? 1. Have clear lines now been developed for two situations for a.brand) that can keep out all registrars and control who gets the second level? i.e. how 'closed' is 'closed'? 2. Will a brand be able to get a geographic second level e.g. brazil.remax for various internal offices? In terms of whether an IDN for <.microsoft> requires a separate application or can be built into the application for <.microsoft>, unfortunately ICANN would require two separate applications be submitted: (1) for <.microsoft> and (2) for the IDN version of <.microsoft>. As a general rule, ICANN requires a separate application for each string the applicant wishes to acquire. You are correct that new gtlds will be available globally, and there are many international facets of gtlds. Most prominent among these, are Internationalized Domain Names (IDNs), or domain names that are represented by local languages and scripts. Thus, it will now be possible for the entire domain name, i.e. the second-level (the space to the left of the dot) and the top-level (the space to the right of the dot), to appear entirely in a local language, such as Arabic or Japanese. For more information on IDNs, see: Open registries generally allow members of the public to register second-level domains within them. However, the registry operator can set restrictive registration policies if desired. Closed registries, however, may be public-facing for marketing and other purposes in all the same ways in which existing websites today can be used and accessed. In addition, for closed registries, it is in fact possible to provide second-level domains to an entity s partners or affiliates without opening up registrations to the general public. After the close of the application submission period, ICANN will post the public portions of the applications on its website. The objection filing period will open after ICANN posts the list of complete applications on its website and will last for approximately 7 months. See section and of the Applicant Guidebook. Organizations that are concerned about other parties' applications may wish to consult an ICANN expert advisor in order to develop a targeted monitoring and enforcement strategy. There is no provision to transfer the registry automatically following a merger or sale of the registry operator. Any request for a transfer would need to meet specific ICANN requirements. Paragraph 7.5 of the proposed Registry Agreement discuses changes in control such as assignment and/or subcontracting. 1. Brand owners may operate completely closed registries and control all the second-level registrations within them; it is also possible to provide second-level domains to an entity s partners or affiliates without opening up registrations to the general public. 2. At this time, there are restrictions on the registration of certain geographic names as second-level domains for all new gtld registries. There are no specific exceptions made for.brand registries under the current geographic names guidelines.

7 Registry Agreement, when does the term begin, does it date back to the application or become effective upon registration? Is there any cost to requesting an amendment to registry services? What are the panel s thoughts on additional risks in applying for an IDN.brand? Will UDRP be modified to conform to new gtlds? UDRPs are significantly less expensive. How does this dovetail with a post-registration UDRP proceeding? Hello, are all the steps of objection compulsory, expert panel or expert determination compulsory? In filing an objection based on legal rights, does the registration have to be an International Registration or a local registration (e.g. PRC) will do? Any fee payable by the complainant in the objection process? With the significant cost of running the registries, going back to the.bank example, wouldn't some banks want a larger bank willing to take on those costs to do that for community purposes - under the community standard explained, the bank would still be able to use the dot bank gtld, but it would likely only have to pay a registration fee for joining? Who makes up the governing body of ICANN. How are they selected? The draft registry agreement attached to the Guidebook has a blank to enter the effective date of the agreement, with the implication that the agreement would become effective upon execution and would not be back-dated to the date of the application filing. Material alterations to the agreement must be approved by ICANN and are discussed in Section 5.1 of the Applicant Guidebook. There are no filing fees for requesting an amendment; however, the process of negotiating with ICANN may be time-consuming and require assistance from an ICANN expert advisor. An application for a new gtld is a complex and expensive process. We recommend that brand owners assemble cross-functional team of interested stakeholders from marketing, business development, legal and other departments to develop a strategy for new gtlds. One of the many issues that this cross-functional team should weigh is the pros and cons of applying for an IDN.brand. An IDN.brand may be valuable to reach customers in certain markets. However, note that there are significant additional technical requirements which will likely increase the complexity (and cost) of preparing the application. The UDRP will not be modified specifically for new gtlds. All new gtlds must ensure that second-level registrations are subject to ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP). The objection processes that are available during the new gtld application process are intended to address the new gtld string itself (i.e., the space to the right of the dot). These processes can indeed be significantly more expensive than the UDRP. The UDRP is one of the significant rights protection mechanisms for addressing infringing second-level domains (the space to the left of the dot), and will likely remain so once the new gtlds become operational. The objection process provides a sequence of steps that lead to a panel decision. The steps will proceed in this sequence unless the parties settle the dispute at some point during the process. Please see Module 3 of the Applicant Guidebook, which discusses the dispute resolution process. Legal rights can be demonstrated through a variety of types of evidence. The filing fee for an objection will be $1,000 to $5,000, with additional fees for the panelist(s). Please see Module 3 of the Guidebook which discusses the dispute resolution process for more information. It is possible that some industry groups may apply for generic, industry-related terms as gtlds in order to provide their members with the opportunity to register second-level domains. Such registrations may be an option for organizations that want to customize their Internet presence, especially if they do not wish to apply for their own new gtlds. Information regarding the leadership, governance and oversight of ICANN can be found at ICANN's website at the URL:

8 What is the GAC? Will trademark priority affect the Dispute Resolution Process? Can you make a better copy of the application flow charts available? Important to show Senior Management. Would a.brand gtld be considered a Community Application (vs. Standard) if it is limited to affiliates, employees, and/or customers? If your company loses at auction, do you get your application fee refunded? The GAC stands for Governmental Advisory Committee. The GAC is a group of government representatives that provides advice to the ICANN Board on Internet policy and governance issues of concern to national governments. The GAC has played a significant role in the development of the new gtld program, and has several mechanisms to provide advice on, or objections to, specific new gtld applications. For additional information on the GAC please see its webpage - The non-exclusive factors for an objection based on trademark rights are set forth in the Applicant Guidebook in Module 3, Section The flow charts are available in the Applicant Guidebook that is published by ICANN. The Applicant Guidebook is available on ICANN's website at: The definition of a Community Application is set forth in Section of the Applicant Guidebook. At the time the application is made, the applicant can designate the application as Community or Standard. However, note that documentation is required to support a Community Application. It is unlikely that a.brand applicant would be able to provide such documentation because a Community Application must be endorsed in writing by one or more established institutions representing the community. The Applicant Guidebook, Module 1, Section sets out the refund schedule as follows: - Withdrawal of application within 21 calendar days of a GAC Early Warning results in a refund of 80% - $148,000 - Withdrawal of application after posting of applications until posting of Initial Evaluation results in a 70% refund - $130,000 - Withdrawal of application after posting Initial Evaluation results in a 35% refund - $65,000 - Withdrawal of application after the applicant has completed Dispute Resolution, Extended Evaluation, or String Contention Resolution(s) results in a 20% refund - $37,000 - There is no refund if the withdrawal occurs after the applicant has entered into a registry agreement with ICANN Thus, any applicant that has not been successful is eligible for at least a 20% refund of the evaluation fee if it withdraws its application.

9 Would.bank and.banc and.banque be considered "string contention"? Please could you repeat the examples of strings that could be challenged by GAC early warning? Would you please explain further when the $50,000 fee will attach to the extended evaluation? ICANN explains that a Panel will examine all applied-for strings for string similarity. This Panel determines whether the strings proposed in two applications are so similar that they are in direct string contention. Such a determination, based on human judgment assisted by criteria and algorithm outcomes, is performed for each pair of applications. Therefore, it is difficult to predict what sort of conclusions this panel will reach as every individual may have a different opinion as to whether it is probable that confusion will arise in the mind of the average consumer. The specific examples mentioned during the webinar include.bank and.pharmacy - industries that tend to be highly regulated by governments. Please see the Applicant Guidebook, Section , Footnote 2, for additional details. Applicants failing certain elements of the Initial Evaluation can request an Extended Evaluation. If the applicant does not pass Initial Evaluation and does not expressly request an Extended Evaluation, the application will proceed no further. In certain instances, an application may be required to enter an Extended Evaluation if one or more proposed registry services raise technical issues that might adversely affect the security or stability of the DNS. In the instance that an application is referred to the application to the Registry Services Technical Evaluation Panel (RSTEP) for an extended review, there is an additional $50,000 fee. Are there fees to file objections to filings? Is there a registration requirement or fees associated with public comment during the open period? Why would a corporate name TLD (such as.microsoft) be standard rather than community? Couldn't Microsoft apply on behalf of a designated community, such as Microsoft entities, affiliates, licensees? Brian suggested that most applications would be "standard." See Applicant Guidebook, Module 1, Sections and The filing fee for an objection will be $1,000 to $5,000, with additional fees for the panelist(s). Please see Section of the Applicant Guidebook for an additional discussion of fees. There are no fees associated with the public comment period. However, ICANN clearly distinguishes between public comments and objections to applications. Public comments will not be considered objections. The definition of a Community Application is set forth in Section of the Applicant Guidebook. At the time the application is made, the applicant can designate the application as Community or Standard. However, note that documentation is required to support a Community Application. It is unlikely that a.brand applicant would be able to provide such documentation because a Community Application must be endorsed in writing by one or more established institutions representing the community. If you are uncertain as to whether to apply under a Standard or Community Application, you may wish to consult an ICANN expert who can assist with evaluating the potential benefits and risks of each application type.

10 If you are the registry, can you charge for the second level domain names to offset costs? Can I pay the baseline application fee in cash and can it be paid all at once or in several parts? Can it be paid simultaneously with the application? Can you apply for a country name such as.uk,.aussie,.australia or.usa Can you confirm that a registry may deny a competitor from obtaining a gtld. Once you have defined the registration requirements (whether they be open or closed), can the applicant later amend the scope of that as the.brand space matures? If you register a product category gtld, can you keep it closed, or can you be required to operate it as an open TLD? Why are these costs so high - in contrast to.info, etc. sunrise periods in the past? Does anyone know? If you choose to operate an open registry, you will be able to charge for second-level domain registrations in your registry. In fact, that is one of the business models for new gtlds. Submission of a new gtld application requires a deposit of $5,000, and the balance of the remaining $180,000 must be paid before the close of the application period. The application will not be reviewed until ICANN has received the complete application fee. Please see Section of the Applicant Guidebook for an additional discussion of the fees. No. At this time country or territory names will not be approved. See Section of the Applicant Guidebook for additional information regarding restrictions on geographic names. A party concerned about a competitor's new gtld application would likely need to file an objection in order to try to prevent the applicant from obtaining the new gtld. However, the objection would need to be filed on one of the four grounds available during the objection process. Please see Module 3 of the Applicant Guidebook, which discusses the objection and dispute resolution process. Organizations that are concerned about other parties' applications may wish to consult an ICANN expert advisor in order to develop a targeted monitoring and enforcement strategy. An applicant must inform ICANN as part of its application whether the gtld will be open (i.e., available to the public for registrations at the second level) or whether it will be closed (i.e., registrations at the second level will be restricted to the registry operator). Amending the scope of the new gtld space at a later time may be possible, but will likely require working through complex processes with an ICANN and the assistance of an ICANN expert advisor to navigate such processes. Open registries generally allow members of the public to register second-level domains within them. However, the registry operator can set restrictive registration policies if desired. Closed registries, however, may be public-facing for marketing and other purposes in all the same ways in which existing websites today can be used and accessed. In addition, for closed registries, it is in fact possible to provide second-level domains to an entity s partners or affiliates without opening up registrations to the general public. At this time, it is unclear whether ICANN will approve application for generic terms as closed registries. New gtld applications are highly complex, technical documents that will likely span several hundred pages. The applications will be reviewed by numerous ICANN panels, with review taking up to seven months or longer. Thus, application costs are very high in order to cover the resources required to complete this review.

11 For the generic gtlds, can there be multiple.hotels,.real,.eco? How does that work? Or are they pursuing one gtld? Ultimately, only one applicant can prevail for each applied-for gtld string. If there are multiple applicants for the same or similar gtlds, the applications will be placed in a process entitled "String Contention." The String Contention process is discussed in Sections and and Module 4 of the Applicant Guidebook. If you are concerned that other parties may also be interested in applying for your desired string, you may wish to consult an ICANN expert in order to evaluate the marketplace and determine potential risks.