ICANN has slammed the American Association of National Advertisers for not understanding the new generic Top Level Domains process, saying the “assertions in your letter are either incorrect or problematic in several respects. Perhaps the most severe mischaracterisations concern the ICANN process.” The letter from Rod Beckstrom, ICANN CEO and President , to the ANA’s Robert Liodice, also CEO and President, is one of the most scathing letters the organisation has sent, repudiating assertions of what ICANN has, or has not done. The ANA originally wrote to ICANN earlier this month seething about the new gTLD process. But the organisation appears to have been asleep at the wheel as the process developing new gTLDs has been ongoing since around 2005 and the application guidebook was approved in June. Trademark holders/brand owners have been prolific in their views on the introduction of new gTLDs, driving changes to the applicant guidebook. While ICANN note that the ANA have previously participated in the consultation process back in 2008, one has to ask why the ANA has only seriously woken up to the process now. Back to the ICANN response. Beckstrom’s letter, repudiating the assertion there has been a lack of public comment, says that “multiple public meetings and at least 45 lengthy public comment periods were conducted and thousands of comments, representing a broad range of interests, were received” while all public comments, including those from the ANA, were considered in the decision-making process. One has to wonder if anyone at the ANA involved in writing the letter had actually read the applicant guidebook with its incorrect assertions. “Your letter also claims that the program represents ‘unrestricted expansion’ or allows ‘virtually any word or phrase.’ These statements demonstrate a lack of understanding of Program details. More research on your part would have revealed: (i) restrictions on delegation rates; (ii) string requirements and limitations; (iii) required applicant background, financial and technical qualifications; (iv) objection processes for infringing and other inappropriately applied-for strings; and (v) standing registry operator obligations in the registry agreement.” Another assertion refuted regards quotes from economic studies that claim more gTLDs will lead to security lapses and financial burdens. ICANN demolishes this assertion saying “your quotations from the economic studies are highly selective and lead to an unsupported conclusion that more domain names will lead to cyber security lapses or consumer privacy violations. Your claim of ‘enormous financial burdens’ and other broad statements are offered without supporting data or rationale. I invite you to review the entire set of economic studies, which explored the current marketplace, and applied expert analysis to an examination of the potential risks and benefits as far as possible (noting that the benefits of innovation are difficult to predict).” The ANA also wrongly claims companies will have no choice but to apply for a gTLD. Something categorically denied by ICANN. One point the ANA did get right was that the economic “studies recommended the implementation of additional protections against trademark abuse and malicious conduct.” But as ICANN note, the organisation “formed teams of internationally recognised experts to adopt both these recommendations and incorporate many significant new safeguards into the program.” Some of the changes introduced into the guidebook were the establishment of a Trademark Clearinghouse and the implementation of a Uniform Rapid Suspension system. In 2008 when the ANA wrote to ICANN commenting on the new gTLD process, they suggested five specific proposals. One proposal concerned trademark protection, and ICANN say that as a result of theirs and other suggestions the IRT was introduced. Similarly with the other suggestions from the ANA transparency, registration information, application fees, general process issues and generic terms for TLDs such as bank and insurance, changes were made that reflected comments, largely satisfying the concerns of the ANA back then. In conclusion, ICANN say they “will vigorously defend the multi-stakeholder model and the hard-fought consensus of its global stakeholder participants, its duty to act in accordance with established bottom-up processes, and its responsibility to the broad public interest of the global Internet community, rather than to the specific interests of any particular group.” “As you may be aware, ICANN’s activities extend beyond this program. It works for the benefit of the public interest, including your organisation, in ways large and small.” All in all this belated outburst by the ANA being critical of the new gTLD process when their original concerns were largely addressed with changes made to the application process must be deeply embarrassing to the organisation. And ANA members should be very concerned about how the organisation represents them.

Abstract: For over ten years, the Uniform Domain-Name Dispute-Resolution Policy (UDRP) has resolved nearly 20,000 domain-name disputes brought before the World Intellectual Property Organization (WIPO), a United Nations organization that arbitrates UDRP disputes. The UDRP allows the holder of a legally protectable trademark to initiate proceedings to cancel the domain name or have it transferred to the trademark owner. Domain-name holders, though, have a number of defenses, including using their domain names in a noncommercial, fair manner. Although several empirical studies have analyzed various aspects of the UDRP, none has specifically examined this fair use defense. This study does what others have not. It analyzes the fair use defense in decisions before WIPO. Using WIPO’s online decision database, this study found that arbitrator and respondent nationality influence the success of a respondent’s fair use claim to a statistically significant degree. Specifically, respondents from the United States are more likely than those from other countries to succeed on a fair use defense. Additionally, arbitrators from the United States are more likely than those from other countries to find that a respondent’s use of a domain name was fair.This means that, under the UDRP, respondents from the United States enjoy greater speech protections than those from other countries, and that arbitrators from the United States are more sympathetic to speech interests than arbitrators from other countries. To improve the UDRP, I propose two revisions. First, ICANN should adopt a choice of law provision stating that the law of the respondent’s home country governs fair use disputes. Second, ICANN should implement a panel assignment provision in fair use cases that requires arbitrators to share the nationalities of the litigants. To download this paper by David A. Simon from Harvard Law School, go to: ssrn.com/abstract=1887888

Hustler has prohibited ICM Registry, the operator of the .XXX registry, “from registering or selling to a third party any .XXX domain names that contain the famous Hustler trademark or other Hustler-related trademarks.” Hustler President Michael Klein said “it appears that the .XXX TLD will do nothing but drive up costs to the adult community and will force us to fight infringement on yet another front,” according to an XBix.com report. Hustler has made clear in writing several times “that any attempt to do so will constitute infringement of its intellectual property rights and that legal action will be taken, the company said.” “Like many other companies in the adult industry, Hustler will not allow its trademarks to be bought, sold or used by any other entity nor will be we be shaken down by ICM,” Klein said. “We are prepared to take whatever legal action may be necessary.” The report also noted that attorneys for Hustler said they are continuing attempts to initiate dialogue with ICM, but the company has remained silent. “We are constantly policing the registration and use of domain names that attempt to capitalize on Hustler’s trademarks,” said Jonathan Brown, attorney for Hustler. “ICM’s silence is particularly disconcerting, especially in light of ICM’s supposed aim of ‘working proactively to balance the rights of existing domain name holders, and other trademark and intellectual property holders.’” In a separate report on AVN, the parent company of Brazzers, Manwin, also signalled its intention to assertively protect its online properties in a letter to ICM Registry last week demanding protection of its domain names and trademarks as the launch date for .XXX nears.

With competition hotting up between new generic Top Level Domain applicants, and a three month application period to open on 12 January 2012 following ICANN’s approval of their Applicant Guidebook in Singapore last week, it is likely there will be a number of competing applications for the same gTLD. Likely gTLDs to receive more than one application include .AFRICA, .GAY and now .SCOT. For .GAY, Domain Name Wire reports a “Washington man has filed an intent-to-use trademark application for ‘.gay’ with the U.S. Patent and Trademark Office.” .AFRICA has seen competing applications from two groups, with the African Union Commission has stated categorically it is not supporting any application for the generic Top Level Domain .AFRICA despite claims from a potential applicant it has their support.” And now a gTLD for Scotland with .SCOT and .SCO being proposed by competing groups. The .SCO proposal website has not been updated since February 2009, but it appears there are also two .SCOT proposals. In an article in The Scotsman today, Joan McAlpine, an SNP MSP for the south of Scotland, writes “it is important that everyone in Scotland gets behind this officially approved bid which can be found at www.dotscot.net. This is the group that has government and cross-party backing, because it is run as a not for profit organisation.” A for profit body is behind a second .SCOT proposal. The organisation is called Scotnom. However writes McAlpine a “.SCOT TLD should be a community-based public resource rather than a private asset.” “It is important that there is no confusion of the two organisations – remember dotscot.net and dotscot.org is the place to sign up if you want the bid to benefit the wider community.” To read the article by Joan McAlpine in The Scotsman in full, see: news.scotsman.com/politics/Joan-McAlpine-Dotting-the-i39s.6792156.jp

DotAsia have announced the global launch of Chinese (Traditional and Simplified matched), Japanese and Korean IDN .ASIA domains. The launch will commence on 11 May 2011 with a Sunrise phase followed by a Landrush phase commencing on 2 August. For more information see the news release below: DotAsia Announces the launch of .Asia Internationalized Domain Name (IDN) for the Global Chinese, Japanese and Korean Internet Community Asia is continuing its rapid growth as the world’s most populated Internet marketplace, with an expectation to expand to more than 2 billion Internet users in 2013

An arbitrator with the WIPO Arbitration and Mediation Center has recently awarded Donald Trump,three domain names : TrumpBeijing.com, TrumpIndia.com and TrumpMumbai.com .

The incredible game of duping the USPTO to get single letter .com trademarks. Did you know Amazon.com has a registered trademark for A.com? It’s true.