Internet IP: Google and Amazon lead gTLD applications




US online companies Google and Amazon led the way in applications for new gTLDs last month, as the list of 1,930 applications was published by Icann. Unveiling the list in London, Icann president and CEO Rod Beckstrom described it as "an historic day" adding: "The internet is about to change forever. A powerful change is coming."

The 1,930 applications include 66 community applications and 116 internationalised domain names. There are 911 applications from North America, 675 from Europe, 303 from Asia, 24 from Latin America and 17 from Africa. However, there will not be 1,930 new gTLDs at the end of the process as many applications are for the same string. There are 13 applications for .app for example and multiple applications for common suffixes such as .inc, .llc and .llp. See page 10 for details.

All of the applications will have to undergo extensive review, including for IP conflicts, in batches. Icann vice president Kurt Pritz said the first applications would probably be live towards the end of the first quarter of 2013.


Digital archery terminated. At its meeting in Prague last month, Icann’s Board terminated the digital archery system under which applications would be divided into several batches, after it was heavily criticised. They have not yet decided what to replace it with. Suggestions made to the Board include prioritising international domain names and applications from developing countries, and prioritising straightforward applications where there is no contention.


Siemens told UDRP is not for trade mark disputes. Siemens lost a UDRP case over the domain name solidedgeuk.com in June, being told that it should not bring trade mark cases to the WIPO Center. Siemens brought the case against Solid applications, which had been one of its resellers. Although Siemens entered into a new agreement with Solid in 2010 that transferred all trade marks and copyright, the WIPO panel said this clearly wasn’t an example of cybersquatting.


Plans for Clearinghouse explained. Testing of the Trademark Clearinghouse, one of the key tools to protect IP rights in new gTLDs, is expected to be running in the fourth quarter of this year. Representatives of Deloitte and IBM, who will operate it, explained at the Icann meeting in Prague that testing will be in three phases, each lasting two weeks, running from July to September. The first will enable volunteers to submit records and check the verification systems.


Google reveals copyright requests. Google released a list showing Microsoft made more requests than any other copyright owner to remove material from its search results in recent months, targeting more than half a million urls. NBC Universal made an average of 17 requests each week over the past year, targeting 165,662 urls in May. BPI (British Recorded Music Industry), pornography film company Elegant Angel and RIAA member companies make up the next three biggest users.

Arbitration services-provider Jams failed to win the site jamsarbitration.com in a WIPO UDRP case, which could leave brand owners more exposed online to so-called gripe sites.

Icann said it had failed so far to find a provider who could offer the Uniform Rapid Suspension system (URS), an alternative to the UDRP for straightforward disputes, at the target cost of around $300 to $500. At Icann's meeting in Prague, various remedies were suggested including simplifying the procedure and having an automatic finding for the complainant if the owner of the registered domain does not respond.

Fees for filing a dispute over a .eu domain name were slashed for the second half of this year. The cost of a case with a single panellist and up to five domains has come down from €1300 to €600. The .eu dispute service is run by the Czech Arbitration Court (CAC) and .eu registry EURid.

Google had the domain name Gmai.com transferred to it in a case at the National Arbitration Forum, despite the owner arguing it was legitimate acronym for the names of the founders. That argument quickly unravelled on examination by the UDRP panel, and showed evidence of being used in bad faith.





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