Comment by Hearst Communications, Inc. regarding the New gTLD Applicant Guidebook Version 2

["Nooger, Daniel A" <dnooger@xxxxxxxxxx>]

Dear Sirs:

    Hearst Communications, Inc. offers the following comments regarding
the New gTLD Applicant Guidebook Version 2:

    1)   There should be a use of the "reserved names" listing to
include  trademarks which have been recognized as "well-known" by
trademark administrative tribunals in various countries.  In Hearst's
case, this would include, for example, "Cosmopolitan" as well as
"Cosmo", and "Popeye" and "Betty Boop" - we have decisions (rendered in
trademark opposition proceedings) by various trademark administrative
tribunals specifically describing these marks as "well-known".  In
addition, the "reserved names" list should also include trademarks which
are widely used / registered throughout the world, even if they have not
been the subject of administrative proceedings declaring them as
"well-known" - an example would be "Esquire", for which Hearst owns one
hundred thirty seven (137) active trademark registrations (in various
classes) throughout the world.  

    2)    If the objection procedure is used along the lines discussed
in the new Guidelines, then if the objector successfully opposes a gTLD
application for (as an example) "Redbook", then "Redbook" should
therefore be moved onto the "reserved names" list.  The reason for this
is to prevent any future applicant from attempting to register "Redbook"
(or a close variation of it), since it would be stopped at the
examination stage by the presence of "Redbook" on the "reserved" list.
This would prevent an objector having to submit and prosecute objections
to the same or similar gTLD's multiple times.     
 
    3)   In addition, the language in the second draft version of the
Guidelines regarding the requiring of advance payments by both parties
to a dispute of "estimated" fees to the dispute resolution service
provider and a refund of these fees to the prevailing party needs to be
clarified.   It is suggested that in addition to the "evaluation fee",
that  ICANN should require an escrow from any registrant to make sure
there are funds available to collect in the event of such a dispute.  
 
    4)    In addition, only one fee should be required in the case of a
rights holder's objection to multiple applications for the same TLD.
 
    5)   IP rights holders should have legal recourse and the right to
appeal an adverse ruling on an objection, i.e., DRSP panel decisions
should not be subject to further review by ICANN, but rather to an
appeal process by a third party dispute resolution provider and/or a
court.
 
    6)   ICANN should revise the dispute process at the second level to
mandate a standard sunrise process,  and incorporate the "reserved
names" for second level domains also.  
 
    7)   Dispute resolution panelists must meet certain standards of
trademark / IP qualifications.  In addition, for transparency, panel
decisions should be published.
 
    8)  The application procedure should include diligence for past
domain name abuse, and this should be a factor if raised in any
objection.
 
    9)   In general, the new gTLD program launch should be delayed until
workable basic safeguards are adopted to protect against trademark
abuse.  ICANN should establish clear conflict avoidance procedures
designed to avoid granting applications that infringe on global
trademark holders. More details will be needed before it can be
determined whether these procedures are sufficient to prevent such
infringements.
 
Sincerely,
 
Daniel Nooger
Paralegal
Office of General Counsel
The Hearst Corporation
300 West 57th Street
40th Floor
New York, NY 10019
PH:   212-649-2019
FX:    646-280-2019
E-mail:    dnooger@hearst <mailto:dnooger@hearst> .com