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Resending: MarkMonitor's Endorsed Comments to the New gTLD Program

  • To: <gtld-guide@xxxxxxxxx>
  • Subject: Resending: MarkMonitor's Endorsed Comments to the New gTLD Program
  • From: "Margie Milam" <Margie.Milam@xxxxxxxxxxxxxxx>
  • Date: Mon, 15 Dec 2008 13:59:58 -0700

Dear Mr. Twomey and Mr. Dengate-Thrush:  


MarkMonitor is the world's largest corporate domain name registrar,
providing services to over 50 Fortune 100 companies, as well as 5 of the
top 10 most popular Internet sites in the world. 


On behalf of the undersigned companies and individuals identified below,
MarkMonitor is pleased to submit the following comments related to the
Guidebook and the new TLD program.  



Although ICANN is firmly committed to implementing its new TLD program
in 2009, there are many unanswered questions related to whether
sufficient evidence of demand for new TLDs exists, and, if so, whether
now is the time to be launching such a costly and expansive initiative.


There is no dispute that we are in the midst of a worldwide recession,
where businesses, government agencies, and consumers are experiencing
mass lay-offs, bankruptcies, budget cuts, and all are limiting
non-essential spending.  

In the face of this current climate, ICANN should reconsider its
decision and conduct broader, global studies to confirm its assumptions
regarding the economic demand for these new TLDs.   Depending upon the
results of such studies, it may be appropriate to scale back the launch
of the new TLD program initially, such as launching only those IDN or
geographic based TLDs that are supported by a significant community


Before it was apparent that ICANN was pursuing new TLDs, MarkMonitor
received no interest from its corporate clientele on this subject.
Since it appears that the new TLD program launch is inevitable, we
understand that some corporations will likely apply for new TLDs for
primarily defensive reasons, and a few may do so to support their
Internet marketing initiatives.  However, most major corporations prefer
that the new TLD launch be delayed until basic safeguards are adopted to
protect against brand abuse.


Brand Abuse is Expected to Grow Exponentially in the New TLDs

Assuming that the new TLD program proceeds, ICANN should adopt better
safeguards against systemic brand abuse in new TLDs.  Due to the
possibility that hundreds, if not thousands, of new TLDs could be
approved, ICANN should recognize that the UDRP is no longer an effective
remedy for brand holders.   The cost, resources required and associated
delays render the UDRP impractical and an undue burden upon rights
holders.   As reported by MarkMonitor in its Summer 2008 Brandjacking
Index, 30 of the most popular brands experienced a weekly average of
over 400,000 instances of cybersquatting targeting their brand.  We
believe that this number will increase exponentially when hundreds or
thousands of new TLDs are available.


New Tools to Protect Against Brand Abuse Should be Adopted

Today, brand holders protect against domain name abuse primarily through
UDRPs and defensive registrations.   This approach is no longer
reasonable when faced with potentially thousands of new TLDs, since it
is not feasible for companies to increase their legal expenditures to
correspond with the rising number of TLDs.  Many brand holders view
sunrise registrations as a fee shifting exercise from brand holders to
registries to help fund the initial phase of a registry launch.
Instead of this 'fee shifting', ICANN needs to consider innovative new
ways of dealing with brand abuse that shifts the costs of infringement
away from the brand holders whose rights have been systematically abused
over the last few years.


We were encouraged by Paul Twomey's opening remarks in Cairo that ICANN
would like to consider innovative ways of addressing the needs of the IP
community, including the creation of an ICANN sanctioned rights database
or clearinghouse, where rights holders could submit evidence of their
rights ("IP Registry").   Such a tool could be utilized for purposes
beyond sunrise periods.   For example, the IP Registry could be used for
blacklisting purposes, at the top level (i.e., .ibm) and at the second
level (i.e., ibm.web).   If a TLD application conflicts with a name on
the IP Registry, the rights holder should be notified immediately and
given the opportunity to file its own TLD application or seek other
legal redress.   For these potentially infringing applications, ICANN
should  verify the applicant's background and motives, and approve only
non-infringing or non-commercial uses.   If any applicant is approved
for a non-infringing use, ICANN should require strict compliance of the
approved uses to protect the rights of the brand holder.   For second
level registrations, ICANN should mandate a notice/take down procedure
if the domain name is used in an infringing manner to a name on the IP
Registry, or require WHOIS verification and prohibit proxy or anonymous
registrations for registrants intending to register a domain name
conflicting with a name on the IP Registry.  These suggestions would
provide a more cost-effective means of dealing with brand abuse in the
new TLDs, and should discourage abusive registrations and abusive new
TLD applicants. 


Dispute Resolution Costs

A prevailing brand holder in a dispute should not experience any fees or
costs in protecting their brand.   The Guidebook should be revised to
provide that a prevailing party in any dispute resolution proceeding
will be reimbursed for all of their costs and expenses, (such as
attorney fees and filing fees).   Under the Guidebook, only some of the
filing fees are refunded to the prevailing party.  


Commitment to Publicly Accessible, Free and Accurate WHOIS

The Guidelines contain few requirements related to WHOIS.  Central to
the concerns of brand holders is the need for a free, accurate, and
publicly available access to WHOIS, to quickly identify the registrant
of abusive domain names.   Given the industry-wide problems related to
access to WHOIS, and the proliferation of inaccurate WHOIS, we believe
that ICANN should evaluate the applicant's commitment to maintaining and
enforcing WHOIS requirements.  In addition, applicants should be
encouraged to maintain centralized or "thick" WHOIS databases, and adopt
additional WHOIS requirements.   For example, ICANN could inquire
whether an applicant intends to allow proxy or anonymous registrations,
and, if so whether the applicant plans to require the disclosure of the
"true registrant" upon request by a brand holder protecting its rights,
or escrow such proxy/anonymous data.   This inquiry is appropriate
because continued access to WHOIS is essential to protect the stability
and security of the Internet, as well as to maintain confidence of
consumers in the integrity and safety of e-commerce.

Dispute Resolution Decisions Should be Binding on ICANN

Under the Guidebook, ICANN has proposed allowing dispute resolution
service providers (DRSP) such as WIPO to evaluate string contention
disputes, including whether a string violates the legal rights of
others.   We are supportive of this process, but believe that a decision
from a DRSP should be final and binding on ICANN, rather than be viewed
as an "expert determination" to be considered by ICANN as a factor in
the evaluation of the TLD application.  



The undersigned companies are deeply concerned about their ability to
protect millions of Internet users worldwide from additional forms of
online abuse, such as fraud, phishing, counterfeits, identity theft, and
other forms of brand abuse.  We urge ICANN to carefully consider these
additional safeguards against illegal online activities in the new TLDs.


Respectfully submitted,


  Irfan Salim

  President and CEO

  MarkMonitor Inc.


3M Innovative Properties Company

AIM - European Brands Association

Art.com  Inc.

Avnet  Inc.


BBC Worldwide Limited

Bell Canada

Bradford & Bingley plc

CafePress.com  Inc.

Canadian Broadcasting Corporation

Carlson Companies  Inc.

Carlson Hotels Worldwide

Carlson Wagonlit Travel - CWT

Carnival Corporation

Columbia Sportswear Company

Comerica Bank


Costco Wholesale Corporation

Country Inns & Suites By Carlson

E.I. du Pont de Nemours and Company

Eastman Chemical Company

eBay Inc.

Ecolab Inc.

Educational Testing Service

Enterprise Rent-A-Car Company



Express Services  Inc.

FedEx Corporation

Gates Corporation

H&R Block



International Data Group

Investor's Business Daily  Inc.

Latin American Telecom LLC

Leap of Faith Financial Services Inc.

Liberty Mutual

Live Nation Worldwide  Inc.

Liz Claiborne  Inc.

Majlingova Fajnorova Bachrata

Mercantil Banco

Mercantil Banco Universal

Molson Coors Brewing Company


Nike  Inc. 

Park Inn Hotels

Park Plaza Hotels

PayPal Inc.

Pick Up Stix Inc.

PopCap Games  Inc.

Radisson Hotels & Resorts

Red Bull GmbH

Regent Hotels & Resorts

Rodenbaugh Law

Rosetta Stone Ltd.

Russell Investments

Science Applications International Corporation (SAIC)


Sovereign Bank

State Farm Mutual Automobile Insurance Company


Terex Corporation

TGI Friday's Inc.

The Goodyear Tire & Rubber Company

The Royal Bank of Scotland Group plc

The Sherwin-Williams Company

Toll Brothers  Inc.

U.S. Bank


Under Armour


Verizon Communications Inc.

Viacom Inc.

Visa Inc.

Watson Pharmaceuticals

Wells Fargo & Company

Xilinx  Inc.



Attachment: TLD Comment- signed 081215 (4).pdf
Description: TLD Comment- signed 081215 (4).pdf

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