Comments on the New GTLD Program and Process

["Elisa Cooper" <Elisa.Cooper@xxxxxxxxxxxxxxx>]

April 10, 2009

To:  ICANN (2gtld-guide@xxxxxxxxx)
Re:  Comments on the New GTLD Program and Process


Dear Dr. Twomey, Mr. Dengate-Thrush and the ICANN Board: 

MarkMonitor Inc. ("MarkMonitor") appreciates this opportunity to submit these 
general comments on behalf of the undersigned in connection with the second 
version of the Draft Application Guidebook ("DAG"). In a separate letter, 
MarkMonitor, individually, will be submitting its comments relating to the 
distinct modules of the DAG.

At the outset, we would like to commend ICANN for the significant amount of 
time and effort that has been put into revising the DAG as well as all of the 
work that has gone into the condensing and analysis of the public comments 
("APC") made to the DAG to date. The redlined DAG and the detailed analysis 
work have created a simpler mechanism from which to evaluate how the ongoing 
comments are shaping the DAG.
 
We are aware that in the second version of the DAG, ICANN outlined several 
concerns that were not addressed by the DAG including trademark issues. In 
connection with addressing the trademark protection issues, the undersigned 
recognize that the ICANN Board of Directors has approved the creation of an 
Implementation Recommendation Team ("IRT") (comprised of an "internationally 
diverse group of persons with knowledge, expertise, and experience in the 
fields of trademark, consumer protection, or competition law, and the interplay 
of trademarks and the domain name system") to develop and propose solutions to 
the overarching issue of trademark protection in connection with the 
introduction of new gTLDs. 

We look forward to reviewing the next version of the DAG (and the solutions 
offered by the IRT as adopted by ICANN staff) where these safeguards and 
protection mechanisms will be further explained.

Introduction
The introduction of the new gTLDs and the current ongoing application process 
raises a host of issues for brand rights holders including the: 1) significant 
risk to the health and safety of consumers, 2) lack of adequate consumer and 
rights holder safeguards to protect those parties from abuse in the new name 
space, 3) potentially large economic impact on brand rights holders, and, 
lastly 4) risk for a safe implementation given the compressed launch timeline 
expectation communicated by ICANN staff. 

These issues are addressed in further detail as follows: 

1. Risk to Health and Safety of Consumers
As we indicated in our previous comments to the First Draft Application 
Guidebook, we believe that brand abuse and online fraud will likely increase 
exponentially upon the introduction of hundreds or thousands of new gTLDs. 
Pursuant to the MarkMonitor 2008 - Year in Review Brandjacking Index®, 30 of 
the most popular brands experienced a weekly average of over 450,000 instances 
of cybersquatting targeting their brand. The resulting cost to companies to 
protect their valuable brands as well as the potential threats to the health 
and safety of consumers without adequate protections and safeguards will also 
increase. As delineated in the presentations from the eCrime Summit at the 
Mexico City ICANN Meeting, domain name abuse problems are growing both in terms 
of number of incidents and in the complexity and ingenuity of the attacks 
perpetrated. Consumers are the ultimate victims of these abuses and they suffer 
loss of their time, money and even health and safety.

Although this risk may be mitigated by enabling brand rights holders through 
the implementation of rights protections mechanisms and pre-delegation and 
post-delegation dispute resolution safeguards (which may be proposed by the IRT 
and adopted by ICANN), the tangible and intangible costs of policing and 
remediation of top-level and second-level strings will continue to be 
shouldered by brand owners. 

2. Potential Brand Owner Safeguards and Protections
We are encouraged that ICANN recognizes the importance of brand holder rights 
issues and has specifically acknowledged that it must "protect brand owners' 
rights and prevent abusive registrations". In fact, the APC sets out the 
numerous comments that have been made to date by brand owners relating to the 
lack of trademark and rights protection and safeguards in this new gTLD 
process. However, there continue to be additional issues that were not 
addressed adequately in the DAG: 

* A Transparent "thick" Whois Policy
ICANN should reconsider its minimum requirement calling only for registry 
operators to support a "thin" Whois registry model. As we have seen in the 
past, thin registries do not afford proper safeguards to protect brand holder 
rights given that control of the registrant's data is largely held by the 
individual registrar. ICANN's decision is purportedly based on issues related 
to a "multitude of laws (including data protection and privacy laws)". But the 
recent conduct of some registrars and registrants under the thin registry model 
approach has also run afoul of agreements and laws as well. Without a 
centralized Whois database at the Registry Operator level, brand owners will 
once again struggle to obtain accurate Whois information required to combat 
online fraud. 

ICANN has indicated that it is evaluating a "possible requirement that Registry 
Operators would have to collect additional data". We would support this policy 
and ask that the data be escrowed by the Registry Operator and made immediately 
available in the event of the non-cooperation of any registrar and, in the 
event of online fraud or abuse. As it stands now, Whois issues have not been 
addressed adequately in this DAG and, without more stringent policies, 
registrars will have control over the Whois information with no binding 
obligation to insure publicly accessible and accurate Whois information.


* Rights Protection Mechanisms To Help Brand Rights Holders Prevent Online Abuse
ICANN should institute Rights Protection Mechanisms (RPMs) that both protect 
consumers from abuse and reduce the need for defensive registrations. ICANN 
recognizes that the "proliferation of defensive registrations is a concern". We 
are looking forward to reviewing the solutions offered by the IRT and hope that 
they will alleviate the need for costly defensive registrations. Some of the 
safeguards that ICANN and the IRT should also consider implementing are: (i) an 
Expedited Remediation Process; (ii) an expanded Reserved Names list which would 
include marks of rights holders; (iii) the availability of open, publicly 
available Whois information with strict proxy registration guidelines; and, 
(iv) flexible rights protection mechanisms that can be adopted by new gTLDs. 

Moreover, as we pointed out in our comments to the first version of the DAG, 
existing rights protection mechanisms are insufficient to protect consumers and 
rights holders. Moreover, it is unfair to force companies to increase their 
legal expenditures by requiring expensive sunrise registrations and UDRP 
filings in order to correspond with the rising number of gTLDs. These 
approaches are not reasonable in light of the economic conditions and in the 
face of potentially thousands of new gTLDs. In addition, sunrise periods have 
amounted to a fee shifting exercise from registries to brand owners to help 
fund the initial start-up costs associated with launching new extensions.

3. Economic Impact on Brand Owners
Although we are pleased with the creation of the IRT, the fact remains that 
brand owners are deeply concerned with the significant impact of the economic 
recession on their businesses. Stated simply, the introduction of these new 
gTLDs will put an undue cost burden on businesses that are already financially 
strapped. As the recession deepens, companies are now struggling to find the 
internal capital resources to fund the application costs and ongoing operations 
of a new TLD program or even to object to third-party applications.

In its previous comments, the undersigned requested that a study be 
commissioned to evaluate the actual demand for new gTLDs and recommended that 
ICANN take a phased approach to this introduction. We recognize that an 
economic study was commissioned by ICANN and posted on March 4, 2009 which 
studied the effect of the introduction of the gTLDs on competition and price. 
This study, however, does not evaluate the global demand or the economic impact 
on registrants for these new gTLDs, particularly in light of this global 
recession. A study that evaluates this demand would be more appropriate given 
that it might suggest that ICANN launch a TLD program which is isolated only to 
IDNs or geographic-based TLDs that are supported by a significant community 
demand.

4. Adequate Time to Evaluate the Revisions to the DAG
We are concerned that by not having addressed any brand owner issues to date, 
brand owners may not have sufficient time to fully digest, analyze and comment 
on any pertinent changes. The process of allowing for public comments and 
subsequent revisions is an iterative one; changes are made to the DAG over a 
period of time and a number of versions are subsequently released. This process 
allows interested parties to observe how their requested changes are affecting 
the substance and nature of the DAG as a whole, over a period of time. ICANN 
has not indicated with specificity when it intends to begin the application 
process and the APC seems to suggest that the application process will begin 
around December 2009. To the extent the next version of the DAG contains 
changes protecting brand holder rights; brand owners will only have one comment 
period to address any relevant concerns. The current timeline proposed by ICANN 
is too tight. ICANN should take its time evaluating the comments from all 
interested parties including brand owners before formally beginning the 
application process.
 
Conclusion
We recognize that ICANN will attempt to incorporate certain policy changes in 
the next version of the DAG as recommended by the IRT and approved by ICANN. We 
are pleased that ICANN is seeking solutions to address the trademark issues 
that have affected brand owners in previous gTLD rounds. We ask that ICANN take 
note of the numerous comments which were posted as well as those referenced in 
the APC, and implement those changes that will sufficiently protect brand 
owners and ultimately the health and safety of consumers as a whole. However, 
resolution of the aforementioned issues notwithstanding, there are evolving 
consumer health and safety risks that require further analysis and we look to 
ICANN and the general community to work on these issues. 

Respectfully submitted,


Irfan Salim
President and CEO
MarkMonitor Inc.

3M
Bob MacDonald
Senior Vice President, Mktg & Sales

AAA - American Automobile Association
Carole Sustak
Brand Manager

Abertis Infraestructuras S.A.
Beatriu Daura

Activision Blizzard
Terry Kiel
Trademark Administrator

AIM European Brands Association
Philip Sheppard
Public Affairs Manager

American Eagle Outfitters
Rebecca Gibbs
Chief Counsel

American Hotel & Lodging Association
Joseph McInerney
President & CEO

Art.com Inc.
Kevin Lucas
Vice President Corporate Counsel

Avnet Inc.
Daniel Friedman
Associate General Counsel

BancFirst
Matthew McCarty
AVP - Manager of Security

Banner Bank
Randy Lindberg
IT Security & Business Continuity

BBC
Diane Hamer
Trade Mark Lawyer

BBC Worldwide Limited
Susan Payne
Brand Protection Manager

Bell Canada
Paule Desautels
Senior Counsel and Director - Trade-marks

Best Western International Inc.
David Youssefi
Senior Corporate Counsel

Blockbuster Inc.
Sidelle Illion
Manager IP Specialist Legal

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
Jerome Marinovic
Global Director Digital Marketing

Carnival Corporation
Ellen Levenson
Trademark Administrator

Clyde Pumps Ltd
Murray Husband
General Manager IT

Columbia Sportswear Company
John Motley
Associate General Counsel and Director of Intellectual Property

Comerica Incorporated
DJ Culkar
Senior Vice President and Assistant General Counsel

Conair Corporation
Eric Zweigbaum
Director of IT

Costco Wholesale Corporation
Leigh Fulwood
Corporate Counsel

Country Inns & Suites By Carlson
Karin Simonson
Attorney

CPA2Biz
Michael Murray
CFO

Deckers Outdoor Corporation
Stephanie Cucurullo
VP Legal

Dole Food Company Inc.
Marcy Reed
Intellectual Property Paralegal

EAI Inc.
John Enyart
President

E. I. du Pont de Nemours and Company
Piers Dickinson
Global eMarketing Leader

eBay Inc.
Mike Yaghmai
Senior Director and Counsel Intellectual Property

Ecolab Inc.
Ed Courtney
Senior Trademark Attorney

Educational Testing Service
Aurora Hill
IP Manager - General Counsel's Office

EMBARQ
Kevin Cobb
Interactive Brand Manager

Enterprise Rent-A-Car Company
Renee Reuter
Corporate Counsel

Epson
Ian Cameron
General Manager Web

Europcar International
Florence Maran-Breton
Legal Manager Intellectual Property

Fajnorova Bachrata & Partners
Maria Fajnorova 

FedEx Corporation
William Brown
Senior Attorney

Ford Motor
John Carlstrom
B2C Portfolio Manager

Freedom First Credit Union
Brian Clemmer
Vice President of Information Technology

Gates Corporation
Charles Schubert
E-Marketing Manager

GN Netcom A/S
Karsten Langhorn
Vice President IPR

H&R Block
Derek Gamble 
Corporate Counsel

Hasbro Inc.
Paul Vanasse
Director - IP

Heinonen & Co
Kristiina Laitimo

Herbalife International
Cameron Smith
Sr. Dir. Regly. & Govt. Aff. & IP

Home Instead Inc.
Josh Carpenter
Tech Ops Manager

InterContinental Hotels Group
Sandra Langley

International Data Group
Miriam Karlin
Legal Department

Investor's Business Daily Inc.
Danya Grund
In-House Counsel Director Legal Affairs

Jabil Inc.
David Lago
Program Manager

Kellogg Company
Paul Iagnocco
Director Global Digital Strategy

Kelly Services Inc.
Sarah Sarafa
Senior Global Counsel

Latin American Telecom LLC
Rami Schwartz
CEO

Leap of Faith Financial Services Inc.
George Kirikos
President

Liberty Mutual 
Sandra Moll
Corporate Web Marketing Manager

LifeScan - A Johnson & Johnson Co.
Roy Albiani
Global Director Brand Integrity

LinkedIn Corporation
Ian McNish
Principal Systems Architect

Live Nation Worldwide Inc.
Ellie Schwimmer
VP Legal Affairs

Liz Claiborne Inc.
Gene Bolmarcich
V.P. Intellectual Property

Microsoft
Russell Pangborn
Associate General Counsel

Molson Coors Brewing Company
Lori Ball
Director Intellectual Property

optionsXpress Holdings Inc.
Hillary Victor
Associate General Counsel

Paramount Pictures
Geoffrey Springer
VP Internet Services

Park Inn Hotels
Genevieve Beck
Senior Attorney

Park Plaza Hotels
Mary Dean
Attorney

Peter Taylor
MBCS CITP CISSP

Rabobank Nederland
Monique Blom
Domain Name Manager

Radisson Hotels & Resorts
Megan Blazina
Attorney

Red Bull GmbH
Jennifer Powers
IP Counsel

Reed Exhibitions Australia Pty Ltd
Peter Watts
eBusiness Manager

Regent Hotels & Resorts
Monica Traxler Payne
Senior Attorney

Rodenbaugh Law
Mike Rodenbaugh
Principal

Rosetta Stone Inc.
Michael Wu
General Counsel and Corporate Secretary

Russell Investments
Brent Smith
Director Intellectual Property & E-Business Services

Science Applications International Corporation
Faye Hammersley
Senior Counsel

Shimano
Julian Lambert

Shopzilla Inc.
Blythe Holden
General Counsel

Simply Hired Inc.
Eric Ericson
Operations Manager

Spansion
Ron Fedore
Mgr. Web Communications

SPORLOIRS S.A. LACOSTE ALLIGATOR S.A.
Dolores Zaragoza
Paralegal

State Farm Mutual Automobile Insurance Company
John Dirks
Associate General Counsel

Sunkist Growers Inc.
Karen Holme
Manager, Patent & Trademark

Terex Corporation 
Anton Urban
Executive Producer - Web

The Body Shop International Plc
Panagiotis Perysinakis
Group Commercial Counsel

The Clearing House
David Lafalce

The Royal Bank of Scotland Group Plc
Richard Curtin
Head of Intellectual Property

The Sherwin-Williams Company
Michael Sura
Sr.Webmaster/Engineer

The Weir Group PLC
Jak Deschner
IT Manager

The Western Union Company
Dianna Lyons
Director General Counsel Office

Toys "R" Us Inc.
Valerie Boccadoro
Intellectual Property Counsel

Trek Bicycle Corporation
Brian Winkers
Web Technologies Architect

U.S. Bank N.A.
Daniel Sink
Corporate Counsel

VEGAS.com
Bryan Allison
VP Marketing

Viacom Inc.
Keith Murphy 
Vice President

Visa Inc.
Denise Yee
Senior Trademark Counsel

W.W. Grainger Inc.
Aimee Nolan
Assistant General Counsel

Wachovia Bank
Inna Beskin
Domain Manager

Watson
Shaun Augade
Sr. Mktg. Mgr. New Media

Webmasters Pro Shop LLC.
Greg Schreiber
CEO

Wells Fargo
Lane Mortensen
VP / Operational Risk Manager

Woolpert 
Kevin Pierce
Director of Technology

WPT Enterprises Inc.
Max Lang
Marketing Web Coordinator

Xilinx  Inc.
Cynthia Zamorski
Legal Counsel

Attachment: MarkMonitor Comment - endorsed 090410_FINAL.PDF
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