Detailed Comments: Module 5
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.