Detailed Comments: Module 5

["Elisa Cooper" <Elisa.Cooper@xxxxxxxxxxxxxxx>]

To: Rod Beckstrom, CEO/President; Peter Dengate Thrush, Chair, ICANN
Board;
ICANN Board Members and Staff of ICANN
 
MarkMonitor respectfully submits these detailed comments on Module 5.

 

5.1 Registry Agreement

 

Specified criteria for Board refusal of an application should be clearly
outlined so that potential applicants can make informed decisions about
the likelihood that the Board may ultimately reject their respective
applications.

 

Specification 4

 

Because the removal of the requirement for searchable Whois hampers UDRP
complainants' ability to show a pattern of bad faith registrations,
MarkMonitor requests that the requirement for searchable Whois be
reinstated.

 

Specification 5

 

For brand owners wishing to obtain .brand gTLDs, the prohibition of
country and territory names at the second-level hampers their ability to
market regionally. For these types of gTLD registries, special
considerations should be made.

 

Specification 7

 

With respect to rights protection and dispute resolution mechanisms
specification 7 is deficient. It neither conforms to the "tapestry" of
protection measures recommended by the expert panel assembled by ICANN
(IRT) nor does it provide an adequate substitute. Comments from the
Intellectual Property Constituency and the WIPO arbitration center
should be considered for integration into the PF-AG. Also, the recent
publication of Economic Report Phase II provides guidance that supports
more comprehensive changes to rights protection mechanisms in order to
reduce the costs associated with new gTLDs for rights owners. Specific
comments follow:

 

1) Trademark Clearinghouse

      a. Is not a rights protection mechanism but a database.

      b. Must be combined more effectively with other measures to stop
trademark infringement.

      c. Does not support inexact match (Economic report supports
inclusion of inexact matches).

 

2) Sunrise Periods 

      a. Are primarily revenue generating activities for registrars

      b. Do not effectively protect brands and the consumers they serve.

 

3) Trademark Claims 

      a. Should warn registrants on both exact matches and for strings
that are wholly inclusive of a trademark contained within the Trademark
Clearinghouse. 

      b. Should be required along with Sunrise period to reduce costs to
brand rights holders and provide a disincentive for abuse. 

 

4) Trademark Post Delegation Dispute Procedure

      a. Should have a lower burden of proof.

      b. Should define remedies for common abuse.

      c. Remedies should contain specific bounds for penalties that
provide disincentive for abuse. 

 

5) The URS

      a. Should be implemented so that it is substantially faster than
the UDRP. 

      b. A rendered URS decision should not be subject to appeal for two
years after the registration period of the name expires. 

      c. Panels should not be appointed in default cases.

      d. Suffers from a higher burden of proof than UDRP.

      e. Adequate reporting should be instituted to prevent gaming.

      f. Loser should pay in scenarios where Trademark Claims (as
defined above) have been invoked.

 

6) GPML

      a. Should be implemented (If its good enough for ICANN its good
for others, see IOC comments, also suggested by Economic Report to
reduce brand abuse). 

 

Specification 9

 

Given that a number of the anticipated applicants plan to operate a
single-registrant gTLD, the newly added Registry Operator Code of
Conduct raises several issues. For instance, single registrant gTLDs
will certainly exhibit at preference for a particular Registrar. In
addition, they will also likely desire the registration of domains based
upon NXD data. While this Code of Conduct certainly makes sense for
extensions distributed through a network of retail registrars, it does
not meet the special needs of single registrant gTLDs.  There are many
other special needs faced by single registrant branded gTLDs that are
not accommodated by the code of conduct, contract and other elements of
the gTLD program.  The community should consider forming a special team
to create gTLD program elements that support this important use case.