The rising popularity of the .tk (Tokelau) ccTLD 

Reading CENTR’s excellent May report into domain name statistics, I see that the total number of registrations across all Top Level Domains now stands at just over 258 million; 56% are gTLDs such as .com and 44% are ccTLDs. The largest ccTLD operator is no longer Germany or China or even the UK, but the tiny island of Tokelau (.tk). As we all know, this is a territory of New Zealand in the South Pacific Ocean consisting of three atolls with a combined land area of 10 km².

With nearly 17 million domains, the popularity of .tk has been fuelled through a unique business model. Anyone can register a .tk domain for free, renewable at the end of the year. However the owner of all free .tk domains is the registry. If you want to own the domain, appear in the whois or register for a longer period than a year, you must pay. Pricing is from $6.95 per year with a minimum two year registration period; although domains containing one, two or three characters or those with branded, generic or common words are considered premium and are priced higher. As a result, one sixth of the Tokelau economy consists of income from .tk domain names.

There does not seem to be any significant threat to brand owners posed by .tk domains. The registry has adopted the UDRP and there have been under a dozen complaints in seven years. We have not yet seen any major brand owners running an important site under a .tk domain but that day might yet come.

It is a remarkable achievement for the tiny .tk territory to command such strong popularity that it ranks second only to gTLD .com in terms of the volumes of domains registered, standing head and shoulders above all other ccTLD registries. I await their entry into the world of internet governance with a smile.

Com Laude offers corporate domain name management and online trademark protection for corporations worldwide. In addition, Com Laude offers the advice brand owners need in order to formulate a sharp strategy with regard to domain name registration in all the new gTLDs at the second level.

First thoughts on the URS

The Uniform Rapid Suspension (URS) system was devised by the ICANN community, including trademark experts, registries and registrars, and those who favour free speech over rights protection, to offer brand owners a quick and inexpensive alternative to the well‑known UDRP for cases of clear-cut infringement in new gTLDs.

It is an out-of-court dispute resolution mechanism for trademark owners who believe that their rights are being infringed by a new gTLD domain name registration. With fees in the range of $300-$500, it is intended to be inexpensive in contrast to the UDRP, which ranges from $1300-$1500. The URS is targeted squarely at “slam-dunk” cases of trademark abuse and is faster and slightly less complex than the UDRP and other DRS models. The initial review by the DRS provider is designed to take two business days and the determination by a neutral panellist appointed by the DRS provider is expected to take less than a month.

ICANN has announced that it has appointed the National Arbitration Forum (NAF) and the Asian Domain Name Dispute Resolution Centre (ADNDRC) as the first URS providers. ICANN, not known for keeping assiduously to its timelines, has said that others will be announced in the next few weeks.

***UPDATE: The NAF has released its Forum’s URS Supplemental Rules to take effect 1 July 2013. Complaint fees will be USD$375 for cases involving up to 15 domain names, increasing in steps to USD$500 for cases involving over 100 domain names. For cases involving 16 or more domain names, respondents will be required to pay from USD$400 to USD$500 in response fees. Fees are however refundable to the prevailing party. The complete NAF fee schedule is set out at the end of this post.***

The remedy for a successful URS complaint is to “suspend” (i.e. render inactive) the domain and associated website until its expiration date. Unlike the UDRP, under the URS there is no transfer of the domain name registration to the trademark owner. However, a prevailing trademark owner can extend the suspension for one year through paying the registration fee. Otherwise, once the suspension ends, anyone can re-register the domain name. Also beware; there are several appeals options for losing registrants, or those who simply choose not to participate initially.

A redline version of the URS, and a set of filing Rules is published on ICANN’s new gTLD website: http://newgtlds.icann.org/en/applicants/urs.

We think the URS as it stands is a missed opportunity. We suggest that, with 10% more thought (and resolve to follow that through to execution) the URS would be 100% more effective. It would be much better if a winning complainant had the option for either a domain transfer or blacklist. We agree with WIPO that cases of registrant default should result in the immediate suspension of the domain. We do not like the fact that a losing registrant can seek a de novo review for up to a year. That is what the courts are for. ICANN has agreed to review the URS after the launch of the new gTLDs, and we hope they take this opportunity to fix the URS seriously.

Contact info@valideus.com or +44 (0) 20 7421 8299 for more information. 

Valideus, Com Laude’s sister company, offers new gTLD consulting services for ICANN’s new gTLD process. It is currently managing 5% of all new gTLD applications for clients from a diverse range of industry sectors, including global leaders in e-commerce, banking, consultancy, food, insurance, media, software and telecoms.

The Trademark Clearinghouse: how to use it effectively  

With ICANN’s Trademark Clearinghouse (Clearinghouse) receiving more attention now that it has officially launched and is accepting trademark data deposits, key Clearinghouse‑related information and strategy questions are highlighted below.

First things first, the Clearinghouse is not a Rights Protection Mechanism; it is a cost management system. It was designed to allow trademark owners to deposit their trademark information into one centrally managed database for a single fee. Historically, new registries (such as .info or .biz, or more recently .xxx) have individually charged rights owners to “validate” the same trademark registration data. Trademark owners told ICANN that this model would not scale to over a thousand new gTLDs, so ICANN created the Clearinghouse to streamline and centralise trademark data validations.

Trademarks submitted to and validated by the Clearinghouse can be used, subject to ICANN’s “proof of use” requirements, to participate in new gTLD Sunrises. There is an exclusive 30-day priority period for eligible trademark owners to obtain a domain name matching their trademark prior to general public availability. These Sunrise registration opportunities are largely used by trademark owners for defensive purposes (i.e. to pre-empt cybersquatters).

In addition to Sunrises, ICANN will require new gTLD registries to provide a Trademark Claims service. Claims are a 90-day period following Sunrise where trademark owners are notified via the Clearinghouse of any domain registrations in new gTLDs that match their marks (however, this notification occurs after the registration and does not block a potentially infringing registration from occurring in the first place).

Some considerations for your Trademark Clearinghouse strategy: 

• Which marks to submit: Review the unrestricted registries where you need protection. Do they have a nexus requirement; for example, if you want protection in the .paris and .berlin registries, do you have one mark covering both jurisdictions or will you need to submit two marks? Do your preferred marks carry up-to-date ownership details? Will there be issues around assignees? What proof of use will you supply (mandatory if you want to participate in a new gTLD Sunrise)?
• Timing: Deloitte, the validation provider, has said that it takes them 20 calendar days to process an application. ICANN requires new registries to give 30 days’ notice before they open. A ten-day margin is not much. The active life of your Clearinghouse submission will commence when the first registry goes live. As new gTLDs are launched on a rolling basis, you may not need to use the Clearinghouse until 18 months from now, or you may be interested in the very first batch of new gTLDs.
• Subscription options: How long do you wish to subscribe your mark to the Clearinghouse? Deloitte are offering one, three, and five year options. As every new registry should be open within two years, a one year subscription may be too short but three may be too long.
• Whether to use an agent: Whether you will liaise directly with the Clearinghouse or partner with an intermediary. If you go straight to the Clearinghouse yourself, you should be ready to pay Deloitte directly via credit card, and you can only pay for ten registrations at a time (apparently for security). If you wish to act as an agent, you must pre-pay a $15,000 deposit to the Clearinghouse. You will also be required to store and manage Signed Marked Data (SMD) files.
• Trademark Claims notices: Who in your organisation will receive these notices across the 90 days for which they last? How will you react if a registration is made by a third-party regardless of a Claims notice? Have you got a list of up to 50 abused “brand-plus” terms (such as “lego-toys”) that have been the subject of UDRP or Court Actions on which you can also receive claims notices? What happens if such terms are applied for in the .auto registry when your registrations are in Class 15 for Musical Instruments?
• Costs: Deloitte have developed a complex pricing structure. The official fees are $150 for a single mark for one year, $435 for three years, and $725 for five years. Renewal costs are the same as submission costs (which in our view is unjustifiably steep, as re-validation is not very arduous). Com Laude's fees start at £80, and they are pleased to offer volume discounts and preferential rates for existing clients.

Finally, remember that the Clearinghouse is a floor not a ceiling. Inclusion in the Clearinghouse does not necessarily mean that you will be able to participate in the first phase of every Sunrise. Some registries will, for example, be prioritising marks owned by local companies before anyone else.


Contact tmch@comlaude.com  or +44 (0)20 7421 8250 for more information. 

Com Laude offers corporate domain name management and online trademark protection for corporations worldwide. In addition, Com Laude offers the advice brand owners need in order to formulate a sharp strategy with regard to domain name registration in all the new gTLDs at the second level.

Domain name developments from Com Laude

Here is the spring edition of Com Laude's newsletter [PDF].

Topic's covered include: 

• New gTLDs: the road ahead
• ccTLD updates from Australia to the UK
• The URS and the Trademark Clearinghouse explained

Excerpts:

New gTLD overview

In April 2012, ICANN received 1930 applications for 1409 unique character strings, of which 116 were IDNs (in scripts other than ASCII such as Arabic or Cyrillic); 899 of these applications were for keywords (meaning descriptive terms) applied for by investors; 637 or 33% were for company or brand names; 255 or 13% were keywords applied for by brand owners (Walmart and Safeway both applied for.grocery); and 139 or 7% were for community or geographic terms (.lat; .paris).

Application for a 10 year licence to operate a gTLD registry, with a presumption of renewal, cost $185,000. Any incorporated organisation could apply for any string, except those which

appeared on ICANN’s list of reserved names and the ISO3166 A and B lists of country codes and protected geographic terms. There were no restrictions on industry leaders applying for

industry terms or investors seeking to run a registry targeted at a regulated sector. There was no public interest test. Each application (numbering in the region of 250 pages) is being evaluated on operational, financial and technical grounds and has to score 30 marks or more out of 41 to pass. Each applicant had to submit to background checks. A Letter of Credit to the value of three years of emergency registry operation was required as well as a contract with an Escrow Provider. Most applicants selected as their Registry Service Provider a proven

operator of gTLD or ccTLD systems. Where two or more applicants have applied for the same string, the mechanism of last resort if the applicants cannot find a solution amongst themselves is an ICANN sponsored winner-takes-all auction. The order in which applications are processed was decided by a Prioritisation Draw held in Los Angeles in December 2012:

IDN applications were batched first, then ASCII applications.

Trademark Clearinghouse update

On 26 March 2013, the Trademark Clearinghouse (TMCH) finally began accepting trademark data for validation. The TMCH is a platform for cost effective rights protection in the new gTLD space, which will allow trademark owners to deposit their mark information into one centrally managed database for one fee. 

Trademarks successfully submitted to the TMCH can be used, subject to proof of use requirements, to participate in all new gTLD Sunrises (a 30 day period when trademark owners can apply to a registry to obtain a domain name matching its trademark) and the Trademark Claims service (a 90 day period following Sunrise where trademark owners are notified via the TMCH of any domain registrations in new gTLDs that match their marks).

The technical system is still being developed and is targeted to roll out by 1 July 2013. ICANN also revealed that they have agreed on a one off charge of $5,000 per gTLD for registries to

connect to the TMCH. This is significantly less than the figures that were suggested originally (ranging from $10-15,000), and is partly due to an ICANN subsidy of $400,000 which they

will pay to the TMCH to offset some of the potential cost for the registries. It still nets Deloitte and IBM a cool $7.5m for a service that is incomplete and six months late.

In addition, a $0.30 fee will be charged to registries per domain registration during the Sunrise and Claims periods.


Contact info@comlaude.com or +44 (0)20 7421 8250 for more information. 

Com Laude offers corporate domain name management and online trademark protection for corporations worldwide. In addition, Com Laude offers the advice brand owners need in order to formulate a sharp strategy with regard to domain name registration in all the new gTLDs at the second level.