Public Comment on the New gTLD Draft Applicant Guidebook

On October 23, 2008, ICANN made the draft Applicant Guidebook for new generic top-level domains (gTLDs) available for public comment. In accordance with ICANN policy and in the interest of brand holders, MarkMonitor and the undersigned companies submitted the following comment to ICANN.

December 15, 2008

To:  ICANN (gtld-guide@icann.org)
Re:  Comments to the New GTLD Program and Process

Dear Mr. Twomey and Mr. DengateThrush: 

MarkMonitor is the world’s largest corporate domain name registrar, providing services to over 50 Fortune 100 companies, as well as 5 of the top 10 most popular Internet sites in the world.

On behalf of the undersigned companies and individuals identified below, MarkMonitor is pleased to submit the following comments related to the Guidebook and the new TLD program.

Introduction
Although ICANN is firmly committed to implementing its new TLD program in 2009, there are many unanswered questions related to whether sufficient evidence of demand for new TLDs exists, and, if so, whether now is the time to be launching such a costly and expansive initiative.   

There is no dispute that we are in the midst of a worldwide recession, where businesses, government agencies, and consumers are experiencing mass lay-offs, bankruptcies, budget cuts, and all are limiting non-essential spending. In the face of this current climate, ICANN should reconsider its decision and conduct broader, global studies to confirm its assumptions regarding the economic demand for these new TLDs. Depending upon the results of such studies, it may be appropriate to scale back the launch of the new TLD program initially, such as launching only those IDN or geographic based TLDs that are supported by a significant community demand.

Before it was apparent that ICANN was pursuing new TLDs, MarkMonitor received no interest from its corporate clientele on this subject.   Since it appears that the new TLD program launch is inevitable, we understand that some corporations will likely apply for new TLDs for primarily defensive reasons, and a few may do so to support their Internet marketing initiatives.  However, most major corporations prefer that the new TLD launch be delayed until basic safeguards are adopted to protect against brand abuse.

Brand Abuse is Expected to Grow Exponentially in the New TLDs
Assuming that the new TLD program proceeds, ICANN should adopt better safeguards against systemic brand abuse in new TLDs.  Due to the possibility that hundreds, if not thousands, of new TLDs could be approved, ICANN should recognize that the UDRP is no longer an effective remedy for brand holders.   The cost, resources required and associated delays render the UDRP impractical and an undue burden upon rights holders.   As reported by MarkMonitor in its Summer 2008 Brandjacking Index, 30 of the most popular brands experienced a weekly average of over 400,000 instances of cybersquatting targeting their brand.  We believe that this number will increase exponentially when hundreds or thousands of new TLDs are available.

New Tools to Protect Against Brand Abuse Should be Adopted
Today, brand holders protect against domain name abuse primarily through UDRPs and defensive registrations.   This approach is no longer reasonable when faced with potentially thousands of new TLDs, since it is not feasible for companies to increase their legal expenditures to correspond with the rising number of TLDs.  Many brand holders view sunrise registrations as a fee shifting exercise from brand holders to registries to help fund the initial phase of a registry launch.   Instead of this ‘fee shifting’, ICANN needs to consider innovative new ways of dealing with brand abuse that shifts the costs of infringement away from the brand holders whose rights have been systematically abused over the last few years.

We were encouraged by Paul Twomey’s opening remarks in Cairo that ICANN would like to consider innovative ways of addressing the needs of the IP community, including the creation of an ICANN sanctioned rights database or clearinghouse, where rights holders could submit evidence of their rights (“IP Registry”).   Such a tool could be utilized for purposes beyond sunrise periods.   For example, the IP Registry could be used for blacklisting purposes, at the top level (i.e., .ibm) and at the second level (i.e., ibm.web).   If a TLD application conflicts with a name on the IP Registry, the rights holder should be notified immediately and given the opportunity to file its own TLD application or seek other legal redress.   For these potentially infringing applications, ICANN should  verify the applicant’s background and motives, and approve only non-infringing or non-commercial uses.   If any applicant is approved for a non-infringing use, ICANN should require strict compliance of the approved uses to protect the rights of the brand holder.   For second level registrations, ICANN should mandate a notice/take down procedure if the domain name is used in an infringing manner to a name on the IP Registry, or require WHOIS verification and prohibit proxy or anonymous registrations for registrants intending to register a domain name conflicting with a name on the IP Registry.  These suggestions would provide a more cost-effective means of dealing with brand abuse in the new TLDs, and should discourage abusive registrations and abusive new TLD applicants.

Dispute Resolution Costs
A prevailing brand holder in a dispute should not experience any fees or costs in protecting their brand.   The Guidebook should be revised to provide that a prevailing party in any dispute resolution proceeding will be reimbursed for all of their costs and expenses, (such as attorney fees and filing fees).   Under the Guidebook, only some of the filing fees are refunded to the prevailing party. 

Commitment to Publicly Accessible, Free and Accurate WHOIS
The Guidelines contain few requirements related to WHOIS.  Central to the concerns of brand holders is the need for a free, accurate, and publicly available access to WHOIS, to quickly identify the registrant of abusive domain names.   Given the industry-wide problems related to access to WHOIS, and the proliferation of inaccurate WHOIS, we believe that ICANN should evaluate the applicant’s commitment to maintaining and enforcing WHOIS requirements.  In addition, applicants should be encouraged to maintain centralized or “thick” WHOIS databases, and adopt additional WHOIS requirements.   For example, ICANN could inquire whether an applicant intends to allow proxy or anonymous registrations, and, if so whether the applicant plans to require the disclosure of the “true registrant” upon request by a brand holder protecting its rights, or escrow such proxy/anonymous data.   This inquiry is appropriate because continued access to WHOIS is essential to protect the stability and security of the Internet, as well as to maintain confidence of consumers in the integrity and safety of e-commerce.

Dispute Resolution Decisions Should be Binding on ICANN
Under the Guidebook, ICANN has proposed allowing dispute resolution service providers (DRSP) such as WIPO to evaluate string contention disputes, including whether a string violates the legal rights of others.   We are supportive of this process, but believe that a decision from a DRSP should be final and binding on ICANN, rather than be viewed as an “expert determination” to be considered by ICANN as a factor in the evaluation of the TLD application. 

Conclusion
The undersigned companies are deeply concerned about their ability to protect millions of Internet users worldwide from additional forms of online abuse, such as fraud, phishing, counterfeits, identity theft, and other forms of brand abuse.  We urge ICANN to carefully consider these additional safeguards against illegal online activities in the new TLDs.  

Respectfully submitted,

Irfan Salim
President and CEO
MarkMonitor Inc.

3M Innovative Properties Company Hildy Bowbeer Assistant Chief Intellectual Property Counsel	AIM - European Brands Association Philip Sheppard Public Affairs Manager
Art.com Inc. Kevin Lucas Vice President Corporate Counsel	Avnet Inc. Daniel Friedman Associate General Counsel
BBC Diane Hamer Trade Mark Lawyer	BBC Worldwide Limited Susan Payne Brand Protection Manager
Bell Canada Paule Desautels Senior Counsel and Director - Trade-marks	Bradford & Bingley PLC Peter Taylor Information Security Manager
CafePress.com Inc. Dan Pontes	Canadian Broadcasting Corporation Carol Coristine Manager New Media Distribution
Carlson Companies Inc. Travis Bachman Associate General Counsel-IP	Carlson Hotels Worldwide Shelly Huber O’Callaghan Vice President - Legal
Carlson Wagonlit Travel - CWT Jara´me Marinovic Global Director of Digital Marketing	Carnival Corporation Ellen Levenson Trademark Administrator
Columbia Sportswear Company Karen Cushman Trademark Administrator	Comerica Bank Linda Valitutti Assistant Vice President
Costco Wholesale Corporation Leigh Fulwood Corporate Counsel	Country Inns & Suites By Carlson Karin Simonson Attorney
E.I. du Pont de Nemours and Company Piers Dickinson Global eMarketing Leader	Eastman Chemical Company Elizabeth Twomey Senior Counsel
eBay Inc. Mike Yaghmai Director & Counsel - Intellectual Property	Ecolab Inc. Ed Courtney Senior Trademark Attorney
Educational Testing Service Aurora Hill IP Manager	Enterprise Rent-A-Car Company Renee Reuter Corporate Counsel
Epson Ian Cameron Global Web Manager	EUROPCAR INTERNATIONAL Florence Maran-Breton Legal Manager - IP
Express Services Inc. Mike O'Meara Network Engineer	FedEx Corporation William Brown Senior Attorney
Gates Corporation Charles Schubert E-Marketing Manager	H&R Block Derek Gamble Corporate Counsel
HASBRO INC. Paul Vanasse Director- IP	IHG Sandra Langley Sr. Attorney
International Data Group Miriam Karlin Legal Affairs	Investor's Business Daily Inc. Dayna Grund Director Legal Affairs
Latin American Telecom LLC Rami Schwartz CEO	Leap of Faith Financial Services Inc. George Kirikos President
Liberty Mutual Sandra Moll Corporate Web Marketing Manager	Live Nation Worldwide Inc. Ellie Schwimmer VP Legal Affairs
Liz Claiborne Inc. Gene Bolmarcich V.P. - Intellectual Property	Majlingova Fajnorova Bachrata Maria Fajnorova
Mercantil Banco Universal Tibor Hajdu Especialista Seguridad Informatica	Molson Coors Brewing Company Lori Ball Director Intellectual Property
NetChoice Steve DelBianco Executive Director	Nike Inc. Jaime Schwartz Assistant General Counsel
Park Inn Hotels Genevieve Beck Senior Attorney	Park Plaza Hotels Mary Dean Attorney
PayPal Inc. Mike Yaghmai Director & Counsel - Intellectual Property	Pick Up Stix Inc. Gina Romo Associate General Counsel
PopCap Games Inc. Nicole LeMaster Intellectual Property Portfolion Manager	Radisson Hotels & Resorts Megan Blazina Attorney
Red Bull GmbH Jennifer Powers IP Counsel	Regent Hotels & Resorts Monica Traxler Payne Senior Attorney
Rodenbaugh Law Mike Rodenbaugh Principal	Rosetta Stone Ltd. Michael Wu General Counsel
Russell Investments Brent Smith Director Intellectual Property & E-Bus. Services	Science Applications International Corporation (SAIC) Faye Hammersley Senior Counsel
Shimano Julian Lambert	Sovereign Bank Thomas Pitkin SVP/Director Web Marketing & eCommunications
State Farm Mutual Automobile Insurance Company John Dirks Associate General Counsel	Streamlight Mike Zahner Director of IS/IT
Terex Corporation Anton Urban	TGI Friday's Inc. Gina Romo Associate General Counsel
The Goodyear Tire & Rubber Company Carl Payntor Trademark Attorney	The Royal Bank of Scotland Group plc Richard Curtin Head of Intellectual Property
The Sherwin-Williams Company Michael Sura Webmaster	Toll Brothers Inc. Dave Ragonese Director of System Architecture
U.S. Bank Daniel Sink Corporate Counsel	Ultri Brian Winkers
Under Armour Brian Massey Application Development Manager	VEGAS.com Bryan Allison Vice President of Marketing
Verizon Communications Inc. Patrick Flaherty Counsel - Trademarks & Copyrights	Viacom Inc. Keith Murphy Vice President
Visa Inc. Denise Yee Senior Trademark Counsel	Watson Pharmaceuticals Shaun Augade Sr. Manager New Media Marketing
Wells Fargo & Company Carrie Hefte Managing Counsel	Xilinx Inc. Cynthia Zamorski Legal Counsel