Comments of The Coca-Cola Company to Version 4 of the Draft Applicant Guidebook for the Proposed New gTLD Program

["McCarthy, Kathleen" <kmccarthy@xxxxxxxxx>]

        The Coca-Cola Company ("TCCC") submits the following comments to the 
Draft Applicant Guidebook, Version 4 ("DAGv4").
        As expressed in prior comments, TCCC remains concerned that there has 
not been sufficient foundational support for the proposed new gTLD launch or 
appropriate study of either a) the possible benefits new gTLDs may provide to 
the Internet community; or b) the possible adverse effects of introduction of 
potentially hundreds of new gTLDs at the same time.
        Even with the currently proposed Rights Protection Mechanisms (RPMs) in 
place, as explained in more detail below, the launch of hundreds of new gTLDs 
will likely expose trademark owners like TCCC to thousands of new potential 
infringement and enforcement matters and result in numerous defensive domain 
name registrations.  TCCC recognizes that some members of the ICANN community 
believe that IP rights holders often overstep the bounds of IP rights.  
Different interest groups could engage in a legitimate debate on the issue of 
the proper scope of IP rights in the Internet context.  However, there can be 
no debate that fraud and abuse is rampant in the current system with the 
limited number of gTLDs now in place and that the burden of policing that fraud 
and abuse falls largely on IP rights holders.
        Owners of famous brands like TCCC face domain names incorporating their 
marks used in connection with sites selling counterfeits, sites advancing 
phishing and malware scams, sites purporting to be charities affiliated with 
the famous brand and similar abuses on a daily basis.  More often than not, 
these domains have been secured in a manner that obfuscates the true identity 
of the owner of the site using either privacy protection services or false 
contact information.  Increasingly, we find that even the funds used to 
purchase the domain for these fraudulent sites were obtained illegally e.g. 
through identity theft.   Against this background, and particularly where, as 
here, the actual benefits of new gTLDs have not been identified, quantified or 
explained in an adequate fashion, a decision to proceed with hundreds of new 
gTLDs at once is troubling.
        TCCC's concern is validated by Profs. Katz, Rosston and Sullivan's June 
2010 report entitled "An Economic Framework for the Analysis of the Expansion 
of Generic Top-Level Domain Names" ("Economic Framework Report").  Indeed, the 
authors conclude in paragraph 117 that "it may be wise to continue ICANN's 
practice of introducing new gTLDs in discrete, limited rounds" since "[i]t is 
impossible to predict the costs and benefits of new gTLDs accurately."
        The Economic Framework Report also proposes conducting surveys and 
further studies on the issues of the costs of increased defensive registrations 
and monitoring and enforcement of trademarks across multiple gTLDs. See, e.g., 
¶¶ 105-107.   The Report further advocates that "ICANN consider the potential 
for consumer confusion in deciding how quickly to proceed with the introduction 
of gTLDs, possibly incorporating some methodology to measure consumer confusion 
as new gTLDs are rolled out over time."  TCCC likewise supports a controlled, 
phased roll-out of new gTLDs with mechanisms in place to study and assess the 
possible benefits and adverse effects.  The results of the studies can be used 
to inform further progress of the program and to develop and implement 
additional protective measures on a going-forward basis.
        TCCC also remains concerned that not enough time is provided for 
interested parties to object to proposed gTLD applications once the 
applications are fully vetted by ICANN and the full Initial Evaluation by the 
ICANN team is posted.  DAGv4 provides that all complete applications will be 
posted on the ICANN website at the start of the Initial Evaluation process 
(1.1.2.1) and suggests that five and a half (5.5) months are provided for 
objections.  However, only two (2) weeks are provided to file formal objections 
after the complete results of the Initial Evaluations are posted by the ICANN 
reviewers (1.1.2.4).  The content of the Initial Evaluation and the public 
comments received regarding the application for a new gTLD may affect a 
decision on whether or not any objection need be filed.  While the posting of 
the application at the start of the Initial Evaluation process provides notice 
of the applicant's proposal, a potential objector will not know until the later 
posting of the Initial Evaluation results whether or not the application is 
likely to proceed and what issues, if any, ICANN has identified in connection 
with the application.  Even an additional two (2) weeks to file objections 
after the Initial Evaluation results are posted would help address this 
problem, so that a potential objector has a full month following the posting of 
the complete Initial Evaluation results to review those results and carefully 
consider whether or not an objection is needed under all of the circumstances.  
This additional two (2) weeks will not unduly delay the process of the 
application and will allow for more informed decision making with respect to 
potential objections.
        Finally, TCCC remains concerned that the Rights Protection Mechanisms 
(RPMs) do not adequately address trademark abuse and fraud that occurs already 
and will undoubtedly occur on a much broader scale with hundreds of additional 
gTLDs.  Specifically:
*       The Uniform Rapid Suspension ("URS") procedure should be revised to 
make it more robust.  Panel review is not needed and should not be required in 
default cases.  The remedy should not be limited to a suspension of the domain; 
instead the domain should be turned over to the objector.  Otherwise, the 
objector will undoubtedly be faced with a similar problem once the suspension 
ends.  And, if the point of the URS proceeding is to address blatant abuse such 
as a site selling counterfeits or engaging in phishing, then the domain should 
not be allowed to continue to resolve to the abusive website once the 
proceeding is initiated and passes the initial administrative review.  Instead, 
internet access should be promptly disabled.  Also, there is no reason why the 
URS should be available only for certain marks that were registered in 
countries with substantive review.  A procedure allowing for the rapid 
take-down of a clearly abusive site is needed regardless of where the mark at 
issue was registered.  Remedies can be put in place (and indeed are in place) 
to protect against abusive use of the URS proceeding.
*       The Trademark Clearinghouse should be used to vet more than just 
identical trademark matches.  There is no reason to limit the match to 
identical hits when the technology exists to address broader matches that are 
still clear infringements such as the trademark used with the corresponding 
generic term.  At a minimum, there is no reason why trademark claims notice 
could not be provided for applications that seek to register domain names 
containing the letter string comprised of the registered mark along with other 
terms.
*       The current proposal allows each new gTLD registry to decide whether to 
include either a Sunrise Period or a Trademark Claims Service in the initial 
gTLD launch.  These are positive developments but no one should assume - as 
many seem to - that these mechanisms will solve the abuse problems.  A Sunrise 
Period, for example, provides a rights holder with the ability to secure a 
registration before launch of the gTLD but often these are defensive 
registrations that the rights holder obtains to prevent the potentially abusive 
use of the domain by another party.  A Trademark Claims Service, which merely 
provides notice of a proposed new domain name to the rights holder and notice 
to the domain name applicant of the trademark at issue, certainly will not 
deter cybersquatters or other scam artists from proceeding with the application.
*       The IRT proposal of a Globally Protected Marks List was summarily 
dismissed by ICANN without full consideration.  TCCC continues to believe that 
a Globally Protected Marks List would greatly assist the community in 
addressing some of the problems likely to be faced by famous brand owners when 
hundreds of gTLDs are introduced.  Criteria for establishing fame already exist 
in many countries.  Procedures can be put in place to address determinations of 
eligibility for inclusion on the list and any special exceptions to the 
application of the marks on a list to a particular gTLD.
        Again, TCCC appreciates the opportunity to provide comments on this 
important issue but urges ICANN to more carefully study the various issues 
raised by this major change before implementing the program on a wide scale.
        Thank you.
Submitted by Kathleen E. McCarthy, as counsel for
The Coca-Cola Company
Mailing Address: PO Box 1734, Atlanta, GA 30301
Physical Address: One Coca-Cola Plaza, NAT 1940, Atlanta, Georgia 30313




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