ICANN’s capacity to clamp down on budget-busting sunrise fees put on the radar

It was inevitable that the issue of gTLD registries charging trademark owners excessive sunrise fees to register names in gTLD sunrise periods would be high on the agenda of the Intellectual Property Constituency (IPC). At today’s ICANN meeting in Singapore, however, ICANN’s ability to clamp down and prevent brand owners from being held to ransom was in doubt.

World Trademark Review has previously covered the news that one applicant for the ‘.sucks’ TLD is planning to charge trademark owners a $25,000 fee for each sunrise registration – far above the norm (at general availability, it expects domain registrations to cost $300 a year).

The string has been the centre of concern for trademark owners. At present, the string is in contention and there is no guarantee that the registry, Vox Populi, will eventually operate the TLD. However, should it do so the $25,000 registration fee will prove highly prohibitive for many brand owners, who will be faced with the prospect of taking their chances against other applicants – and potentially seeing their ‘brand.sucks’ domain taken by a third party (despite Vox Populi’s previous claim, in an interview with Domain Incite, that the offering was under-priced because companies spend far greater sums annually on advertising campaigns).

In today’s IPC meeting, Krista Papac, director or registry services at ICANN, was asked by IPC representatives whether Vox Populi’s publically stated intention to put trademark owners in a situation where they have to pay significant sums will be taken into consideration in its decision-making process with regards the string. The response was somewhat vague, Papac explaining: “We don’t get involved in pricing. We do look at policies and information and if we see things that don’t seem right we will go back to the registry and ask questions.”

Pressed as to whether that meant, as long as the applicant’s policy is compliant with the sunrise implementation requirements, even if there is then a stated process that circumvents the sunrise or charges high prices, that there is nothing ICANN can do, she responded: “That is one way to put it. We are aware of this situation and are monitoring this to see what evolves. Our party line is that we don’t get into pricing but we do watch stuff closely and ensure that sunrises do what they are intended to do. The rights protection mechanisms are defined and our goal is to have such things well defined – but sometimes you do get to implementation and things arise.”

An additional twist to Vox Populi’s offering is that, for those  trademark owners wishing to avoid a £25,000 sunrise fee, they can pay a $2,500 reservation fee now, with these trademark priority reservations (refunded if it doesn’t eventually run the string) available on a first-come, first-served basis. If it does operate the TLD, then the reservation proceeds to registration.

This £2,500 fee still dwarfs normal domain registration costs and, quizzed over what one IPC panellist characterised as “gamesmanship”, Sumi Lee, contractual compliance manager at ICANN, reiterated Papac’s message that the compliance department does not look at pricing but said that – as long as a complaint is received – it can be looked into. However, as the string is currently in a contention set, Vox Populi does not become a contracted party, as far as the compliance department is concerned, until delegation – meaning that there is little ICANN or trademark owners can do at this stage.

There was better news in the WHOIS update presented to the IPC by Margie Milam, who explained that the new central WHOIS lookup tool should launch in the next two weeks. Positively for trademark owners, she notes that “reporting features will be a little easier and eventually it will allow the submission of inaccuracy complaints via this central system”, providing a one-stop shop for WHOIS complaints. Additionally, the WHOIS accuracy reporting currently being developed “will proactively identify inaccurate WHOIS records and forward potentially inaccurate records to registrars for action”, the system designed so that accuracy rates improve over time. Questions remain over the translation and transliteration of WHOIS but efforts to improve WHOIS accuracy are positive step forward.

However, for many trademark counsel, the main takeaway from today’s IPC session is that high sunrise costs remain on the agenda.

Writen by Trevor Little for worldtrademarkreview.com

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