Visa's Comments to Draft #2 of the GTLD Program and Process

["Yee, Denise (Kuwabara)" <yee@xxxxxxxx>]

April 13, 2009

 

To:  ICANN (2gtld-guide@xxxxxxxxx <mailto:gtld-guide@xxxxxxxxx> )


Re:  Visa's Comments to Draft #2 of the GTLD Program and Process

 

Visa Inc. operates the world's largest retail electronic payments
network and is one of the most recognized global financial services
brands. Visa facilitates global commerce through the transfer of value
and information among financial institutions, merchants, consumers,
businesses and government entities.

 

We appreciate the opportunity to submit these general comments for the
second version of the Draft Application Guidebook ("DAG").  We further
appreciate that ICANN has spent a significant amount of time and effort
into revising the DAG as well as condensing and analyzing the public
comments ("APC") made to the DAG to date. 

 

In connection with addressing the trademark protection issues, the
undersigned recognizes 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.  

However, because many of our concerns were not addressed in the revised
DAG, the majority of our comments below are identical to our first round
of comments.  

We look forward to reviewing the next version of the DAG (and the
solutions offered by the IRT as adopted by ICANN staff) where we hope to
see safeguards and protection mechanisms for brand owners.

 

Visa Inc. respectfully submits the following comments for ICANN's
consideration: 

 

1.  Economic Impact on Brand Owners.  Although the IRT is being created,
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.
There appears to still be many unanswered questions related to whether
sufficient evidence of demand exists for new TLDs, and if not, whether
it is appropriate to launch such a costly initiative.  It is our view
that there is only limited protection for brand owners, the fee
structure is unreasonably high as a protection measure, and the
administrative procedures are unduly burdensome.  The application and
objection process will be prohibitive in cost and/or time and will
exponentially compound the already crowded UDRP space.

*       We request that ICANN first conduct broader, global public
studies to validate its assumptions regarding the demand for these new
TLDs.  To allow more time for this research, we feel it is appropriate
to cancel the 2009 launch of the new TLD program.  ICANN may ultimately
find there is no need for new TLDs to exist since .com has been and
continues to be the dominant extension among users.  

 

2. Provide Proactive IP Protections.  We further request that ICANN be
proactive in protecting brand owner's rights. We offer the following
suggestions for your consideration: 

a.      Allow famous trademark holders to add their name to the existing
ICANN Reserved Name List.  Evidence of fame can be supported by a final
decision of a Court or Trademark Office in any jurisdiction.
b.      For Open TLDs (i.e. .brand), allow legitimate trademark owners
the opportunity to register the extension that corresponds to their
trademark, without requiring brand owners to actively use the extension
or fulfill technical back-end requirements (trademark blocking
registration).
c.      Create a Trademark Registry to be used for all subsequent
sunrise periods to eliminate the need and cost to validate rights for
each extension launch or new gTLD application process.  This Registry
can be used as a reference for both first and second level
registrations. 
d.      Successful objections by brand owners should have precedential
value.  This will avoid new case procedures and fees.  

 

3.  Address Bad Faith Registrations.  ICANN should consider a less
costly and more efficient IP protection solution which shifts the burden
of proof from legitimate brand owners to bad faith infringers:

 

*       Past Abuse.  The application procedure should initially include
due diligence by ICANN to search its records for serial domain name
abusers.  During the objection period, the Dispute Resolution Service
Provider ("DRSP") should have discretion to give strong consideration in
favor of brand owners when reviewing cases dealing with repeat
offenders.  

 

*       Consolidate Complaints.  Brand holders should have the ability
to consolidate complaints against the same party.  By addressing
multiple bad faith registrations in a single proceeding, it will help to
lower enforcement costs for brand holders.  

 

4. Commitment to Publicly Accessible, Free and Accurate WHOIS.  ICANN
should evaluate the applicant's commitment to maintaining and enforcing
publicly accessible, free, and accurate WHOIS requirements. 

 

In addition to our initial comments, we submit the following: 

 

5. 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. 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.   To allow more time for
this research, we reiterate our demand to cancel the 2009 launch of the
new TLD program.  

 

6. Registrar/Registry Pricing Caps to domain name owners

We would like to suggest that various level pricing not be permitted.
In other words, ICANN should not allow tier level pricing similar to
that of .TV.  All domain names should be priced at the same level and
created equal no matter how valuable the name or brand is on the open
market.  

 

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 hope that ICANN
will implement changes that will sufficiently protect brand owners and
ultimately, the safety and security of the public as a whole. 

 

 

Sincerely,

 

/Denise Yee/

Senior Trademark Counsel

Visa Inc. Legal Department  



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