Detailed Comments Relating to the Distinct Modules of the Applicant Guidebook Version 2
MarkMonitor
303 Second Street
Suite 800N
San Francisco, CA 94107
VIA EMAIL
Mr. Peter Dengate Thrush
Chairman of the Board of Directors
Dr. Paul Twomey
President and CEO
ICANN
4676 Admiralty Way, Suite 330
Marina del Ray, CA 90292
April 10, 2009
Dear Mr. Dengate Thrush, Dr. Twomey and the Board of ICANN:
MarkMonitor Inc. ("MarkMonitor") appreciates the opportunity to submit
these detailed comments relating to the distinct modules of the
Applicant Guidebook Version 2 ("DAG").
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.
In December of 2008, MarkMonitor submitted comments on version 1 of the
Applicant Guidebook. Although a number of our comments were addressed,
our comments related to the protection of rights holders were not. We
understand that the newly created Implementation Recommendation Team
(IRT) will work to develop and propose solutions to the overarching
issue of trademark protection in connection with the introduction of new
gTLDs. We are hopeful that this team will identify policy, processes and
requirements to improve trademark protection as related to the
introduction of new gTLDs, including where such protection contributes
to the safety and security of the Internet.
We also trust that the IRT will work diligently to identify and propose
solutions to address trademark protection issues that are of low or
no-cost to brand owners at both the top and second levels. However,
trademark protection is only one of the four "overarching issues" which
must be addressed. Thus, further substantive changes and enhancements
to the gTLD program and DAG are also required.
Below are detailed comments to the DAG and the Base Agreement prepared
by MarkMonitor:
Comments on 'Module 1'
Section 1.1 - Creation of a gTLD Reserved Name List
An automatic "Reserve Name List" should be created for global brand
owners. To be placed on this list, the global brand owner must have a
trademark that is registered in multiple international jurisdictions.
At least one of these jurisdictions must have a stringent examination
review process for trademark registrations. Under this mechanism,
registry applicants would be required to check the "Reserve List" as a
resource before proposing a top level string, and names that are exactly
alike, or confusingly similar to a name on the Reserve Name List should
be summarily rejected. The database of reserved names can be operated
and/or maintained by a third-party, however, ICANN must retain ultimate
responsibility and accountability for its provision and use. There must
also be an appropriate challenge procedure for seeking the removal of a
name from this Reserve Name List.
Section 1.2.2.1 - Allow a New Designation for Single-Purpose or
Sponsored gTLDs
There are numerous rights holders with potential gTLDs that share
substantially the same or similar attributes of a community gTLD. These
gTLDs do not share the attributes of an open gTLD given that they are
not available for registration by any potential registrant. Examples
would include service and broadband providers, industry-wide
professional associations, and social networking sites. These rights
owners should be recognized for the communities they represent, and as
such should receive the protections of a sponsored application.
Comments on 'Module 2'
Section 2.1.2.2 - Ability to Provide Missing, Incomplete or Incorrect
Application Information
The application process entitles applicants to only one exchange of
information if clarification is required. This is an extremely
inflexible procedure given the level of commitment made by the
applicant. ICANN should therefore allow for additional exchanges of
information. In addition, although specified channels for receiving
updates about applications have been identified as a requirement in
version 2 of the Applicant Guidebook, this is not an appropriate
mechanism for providing additional or clarifying application
information. Given the high cost of the application fee, and the
complexity of the process for most applicants, this provision should be
amended to allow a more structured communication channel between
applicants, evaluators and ICANN.
Comments on 'Attachment to Module 2'
New Potential Questions to be Added re: Moral and Legal Standing
In addition to the requirement for proof that the applicant entity is
'legally established and in good standing,' it is essential that
thorough investigative checks of applicants including board members,
executives, funding sources, etc. be conducted in order to identify any
involvement by those who seek to control a registry in criminal
activities, or any wrongful activities associated with the domain name
industry. To that end, examples of some questions that can be asked to
elicit the above information are:
"Have you been convicted of a felony? If so, please explain.
"Have you or any company that you have been associated or affiliated
with or been the subject of an action (court case or any dispute
resolution proceeding) as a defendant in connection with any domain name
related matter.
Applicants that have significant or repeated ties to illicit or wrongful
activities should not be allowed to proceed through the process.
Falsification of, providing misleading or omitting data should result in
application disqualification, or, in the case of a delegated registry,
it should be re-delegated when such is discovered.
Question 43 - Standardizing 'Measures Against Abuse'
Although the questionnaire does address 'Measures Against Abuse,'
allowing registries to define their own policies for policing, managing
and remediating is too vague. Measures to mitigate abuse should be
mandated by ICANN so that they can be fully vetted and standardized.
There appears to be industry support for a group similar to the IRT
which would assist in establishing and developing draft proposals,
including an effective mechanism for insertion in registry contracts to
deal with malicious conduct as opposed to trademark protection
mechanisms.
Question 45 - Requirement for a "Thick" Whois Model
ICANN is considering assigning more points for registries that adopt a
'Thick Whois" model. ICANN should go further and require a 'Thick
Whois' model for all registries so that access to full ownership records
is ensured by ICANN. This will be especially important for addressing
issues of consumer fraud enabled by domain name abuse. International
right to privacy standards have long been cited as a barrier to
availability of 'Thick Whois'. While those rights are well understood
and recognized, 'thin' registries do not afford proper safeguards to
protect brand owner rights nor to support the needs of law enforcement
dealing with abusive activities, given that control of the registrant's
data is largely held by the individual registrar.
Comments on 'Base Agreement'
Section 2 - Adherence to Post-Delegation Dispute Resolution Procedures
Given the significant potential for actual infringement post-delegation
by registries, ICANN should adopt the post-delegation dispute resolution
procedures proposed by WIPO. That report can be found at:
http://www.wipo.int/export/sites/www/amc/en/docs/icann130309.pdf.
Adherence to this policy should be mandated under the Registry
Agreement.
Section 2.4 - Publication of Registration Data
ICANN should require that all new gTLD registries provide 'Thick Whois'
data. See above comments to Question 45.
The requirement to provide free zone file access for all gTLDs is noted
as a positive inclusion.
Section 2.8 - Use of Registrars
MarkMonitor fully supports non-discriminatory access for ICANN
accredited registrars to offer unrestricted extensions. However, in
cases of a TLD where the gTLD has a single purpose and use, and is
limited to defined registrant communities, the registry should be
allowed to designate a single registrar.
Article 4 - Term and Termination
ICANN should add language that requires that all registry operators
comply with the rights protection mechanisms contained in the Base
Agreement. Any registry operator that fails to comply should be subject
to termination of its accreditation with ICANN (so long as ICANN has
provided the registry operator with written warnings and a reasonable
time to cure).
Article 6 - Fees
MarkMonitor endorses the comments of the NTIA with respect to the
inclusion of price caps in the new gTLD registry agreements and adds the
following: ICANN should require price caps in all new registry
agreements in an effort to avoid the potential harm to consumers and
brand owners that could result from discriminatory pricing. The risk is
that registry operators and others may try to exploit the value created
by brand owners. The value inherent in a name that contains a brand is
not the name itself, but the value created by the brand owner. It is
patently unfair for a registry operator to be allowed to profit from the
efforts of the brand owner. More importantly, it is foreseeable that
existing gTLD registry operators would also demand the removal of any
price caps in their registry agreements by invoking the equal treatment
clause in their registry agreements. Removing price caps in current
registry agreements might allow current registry operators to unfairly
charge brand owners different fee amounts depending on the "value" of
the domain name, as subjectively determined by the registry operator.
Section 8.4 - Change of Control
ICANN must reconsider its proposal not to require written approval in
the event of a change of control of the Registry Operator. Registry
applicants/awardees should be required to submit a request to transfer
or sell its registry functions. Allowing a third party to take over
control of the Registry Operator without undergoing proper due
diligence, may raise potential concerns, including the ability to fully
enforce the originally agreed upon conditions under which the registry
was 'awarded'. A suggested change would be to require review and
written approval in the event of a change. To the extent all conditions
of operation as originally committed are verified, written approval
should not be unreasonably withheld. If there is a modification in the
terms and conditions, there will need to be an extensive review and
pre-approval of a transfer agreement.
Comments on Specification 5: Reserved Names List at the Second Level
A Reserved Names List database similar to the Reserved Names List as set
forth above for the gTLDs should be created at the second level. This
Reserved Names List should be created based upon the submission of
trademarks by corresponding rights owners. Only those rights, which have
been granted by jurisdictions requiring trademark review and evaluation,
would be eligible for inclusion in the Reserved Names List. In
addition, only legitimate owners of names appearing in the Reserved
Names List should be allowed to register these domains, and variations
thereof. Again, a proper mechanism should be instituted to challenge
and remove any name on the Reserved Names List.
Comments on Specification 7: Minimum Requirements for RPM
In addition to RPM relevant issues mentioned elsewhere in the
MarkMonitor comments in other sections of the guidebook, including, but
not limited to, those referencing Whois, Reserve Lists, we propose the
following RPM elements:
Expedited Remediation Procedure
Upon formal and written notification to a registry of a domain that is
infringing on intellectual property rights and used in bad faith, the
registry should make every effort to remove the domain from the zone
within a 4-hour timeframe on a temporary 'hold' basis. This procedure
can be based in part on the notice and take down procedures set out in
the DMCA. Registries should be required to make a determination as to
the rightful ownership of the domain name based upon existing
intellectual property rights. Nominet, the registry operator for .uk,
currently employs a similar method for resolving conflicts. Registries
should bear the cost burden to support this model, and should benefit
from a 'safe harbor' from liability to the extent the registry complies
with the provisions of this Expedited Remediation Procedure.
Registrant Notifications
At the time of registration, registrants should be provided with a
warning that, pursuant to the terms of the Registry Agreement, any
domain names that infringe on any intellectual property rights and are
being used in bad faith, will be confiscated without refund and returned
to the legitimate rights owner and subject to the express remediation
procedure.
MarkMonitor wishes to thank ICANN for their time and consideration of
our comments. If you have any questions or wish to discuss any of points
raised herein, please contact Frederick Felman
(ffelman@xxxxxxxxxxxxxxx).
Respectfully submitted,
Fred Felman
Chief Marketing Officer
MarkMonitor
Attachment:
MarkMonitor detailed comments FINAL_040809.pdf |