FW: gTLDs - Draft Applicant Guidebook Version 4

["Anne E. Aikman-Scalese" <aaikman@xxxxxxxxx>]

To the Board of Directors of ICANN:

 

Several outstanding issues have not been adequately addressed in
connection with DAG Version 4, namely:

 

1.      Concerns of the World Health Organization as expressed in the
letter from Carissa Etienne, Assistant Director-General of Health
Systems and Services to ICANN President and CEO Rod Beckstrom dated
December 9, 2009 regarding public health and safety issues involved with
International Nonproprietary Names (INN) for pharmaceutical products.
(See attached copy.)

 

2.      Concerns over abuse in the secondary market for new TLD
registrations which ICANN is not in a position to adequately monitor
from a contract compliance standpoint due to the unlimited nature of the
proposed gTLDs.  Please see, for example, the attached file evidence of
a sex(dot)sex U.S. trademark registration in anticipation of the
issuance of a (dot) sex TLD.  This trademark registration was recently
offered for sale on e-bay with a description of the upcoming issuance of
unlimited gTLDs.  (There is no discussion in the offer for sale
regarding the relevant industry or the goods description or any good
will associated with the mark.)

 

3.      Concerns over abuse of solicitations for defensive
registrations.  Please see, for example, the attached fax received at
the law office of the commenter warning our firm of a "Final Notice" in
accordance with the "United States Legal Code" that we are "required to
advise the domain notification processor of your intent to (a) secure
this domain name or (b) release your first right to use preference"
This fax notice also includes the following statement:  "If you
disregard this notice or fail to reply by the deadline indicated above
(a) The licensing rights of this domain name may be assigned to any
other applicant, (b) UDL and or any ICANN accredited registrar will not
be liable for loss of domain license, identical or confusingly similar
use of your company's domain name, or interruption of business activity
of business losses".  In this regard, authorization by ICANN of an
unlimited number of new gTLDs creates an unlimited number of potential
problems resulting from the use of intimidating techniques for forcing
defensive registrations.             

 

4.      Concerns over ICANN's decision, in connection with the issuance
of unlimited gTLDs, to omit Sunrise and Clearinghouse protection for
common law trademarks, globally well-known marks, and registrations
which have allegedly not received "substantive examination" as more
particularly described in the attached comments provided by the
Intellectual Property Constituency on the recommendations of the STI
group in January of 2010.  

 

Without additional restrictions and monitoring systems in place prior to
issuance, the prospect of unlimited generic TLDs provides the prospect
of unlimited abuse and market disruption, which may ultimately undermine
global consumer confidence in the domain name registration system.
Unlimited gTLDs should not be implemented without further analysis to be
conducted on a case-by-case basis with respect to each of the proposed
new TLDs.  In addition, each registrar awarded a new gTLD should be
required to designate by name a Compliance Officer responsible for
contract compliance and should be required to notify ICANN immediately
of any changes in that designation.  Registrars should also be required
to provide prominent public notice on their home page of the name and
contact information for the designated Compliance Officer.  Concerns
regarding inaccurate Whois information should likewise be addressed
prior to implementation of the new gTLD program.  

 

By adoption of the DAG 4 as proposed without adequately addressing the
above issues, ICANN would also put the organization itself at risk for
claims of market disruption and the ICANN directors at risk for claims
of breach of fiduciary duty.  Precipitous action in relation to
unlimited gTLDs risks ICANN's longterm credibility with stakeholders,
including, but not limited to, WHO and WIPO.  Therefore, the process
should be more deliberate and careful despite pressure from private
sector registrars.

 

Respectfully submitted,

Anne Aikman-Scalese

 

  

 

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Anne E. Aikman-Scalese
aaikman@xxxxxxxxx <mailto:aaikman@xxxxxxxxx> 
Waterfall, Economidis, Caldwell, Hanshaw and Villamana P. C.
5210 E. Williams Circle Suite 800
Tucson AZ 85711
(520) 202-7835 (Voice)
(520) 745-1279 (Fax)
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Attachment: WHO-INN Names.pdf
Description: Adobe PDF Document

Attachment: sex.sex US trademark.pdf
Description: Adobe PDF Document

Attachment: FaxFromUSDomainLicensing.PDF
Description: Adobe PDF Document

Attachment: IPC - gTLDJanuary2010Comments.pdf
Description: Adobe PDF Document

Attachment: U.S.Registration3755527.pdf
Description: Adobe PDF Document