Comments of Internet Commerce Association Regarding New gTLD Draft Applicant Guidebook
- To: "gtld-guide@xxxxxxxxx" <gtld-guide@xxxxxxxxx>
- Subject: Comments of Internet Commerce Association Regarding New gTLD Draft Applicant Guidebook
- From: Phil Corwin <pcorwin@xxxxxxxxxxxxxxxxxx>
- Date: Mon, 15 Dec 2008 18:29:03 -0500
BUTERA & ANDREWS
Attorneys at Law
1301 Pennsylvania Avenue, N.W.
Washington, D.C. 20004-1701
Philip S. Corwin, Partner
December 15, 2008
Board of Directors
Internet Corporation for Assigned Names and Numbers (ICANN)
4676 Admiralty Way, Suite 330
Marina del Rey, CA 90292-6601
Re: New gTLD Draft Applicant Guidebook
Dear Members of the ICANN Board:
This comment letter is submitted by the Internet Commerce Association (ICA) in
regard to ICANN's October 23rd notice establishing a forty-five day period for
public comments on ICANN's Draft Applicant Guidebook for new generic Top Level
Domains. On December 3rd ICANN published additional materials relating to the
Guidebook and extended the English language comment period by a week.
ICA is a not-for-profit trade association representing the direct search
industry. Its membership is composed of domain name registrants that invest in
domain names (DNs) and develop the associated websites, as well as the
companies that serve them. Professional domain name registrants are a major
source of the fees that support registrars, registries, and ICANN itself. The
ICA is an International Member of ICANN's Commercial and Business Constituency
and presently has more than 120 members located in the United States and
thirteen other nations.
· ICANN must proceed cautiously in its consideration of new gTLD
applications and should announce in advance a prioritization system to assure
orderly and comprehensive review.
· ICANN has not provided sufficient time for review of and comment upon
the draft gTLD Applicant Guidebook and should provide a comment period of no
less than sixty days following publication of the next revision, and should
also consider a third comment period if considerable controversy or questions
· The new gTLD process must not be used to resurrect much less validate
the concept of differential pricing by registries; any exceptions to this
policy must only be for a carefully circumscribed group of "closed" registries
subject to strict numerical registration limits. Likewise, ICANN should
continue adhering to vertical separation of registries and registrars and to
enforcing equal access policies for registrars, with any exceptions limited to
a narrow category of single organization gTLDs.
· ICANN should reverse its adoption of the GAC position relating to
prior approval for any geo-gTLD and revert to the GNSO position providing
governmental entities with standard objection rights. Any suggestion that
governments have any ability to object to second level geo-domains on any
grounds outside the scope of the UDRP should be rejected outright.
· Strong, cost-effective, and readily implemented protections for rights
holders should be established but they must be limited to enforcing their
rights under existing law and not be premised upon the creation of broader
rights by ICANN fiat. It is for this reason that we object to creation of a
reserve list of trademark names as this would provide rights protections beyond
the geographic and relevant marketplace limitations of trademark law. We also
object to the imposition of any new rights or procedures that would supplant or
supplement the UDRP absent extensive consideration of such proposals in a
process that ensures that registrant concerns about current UDRP enforcement
trends are heard.
· We oppose permitting law and public morality objections to new gTLDs
unless narrow and clearly articulated criteria for such objections can be
established, because if they are not then the DNS could become a censorship
regime grounded in the whims and personal views of individual jurists.
General Overview and Procedural Considerations
There are currently twenty-one gTLDs, both sponsored and unsponsored. ICANN has
now initiated a process by which the number of gTLDs may, by ICANN's own
estimate, be expanded more than twenty-fold in a single initial application and
approval round. At the same time, the application fees received from an
estimated 500 applicants will, at the current stated fee of $185,000, produce
an additional cash flow of $92.5 million, representing a one hundred and fifty
percent increase in ICANN's operating revenues - and following approval,
contract administration duties in regard to these new registry operators will
substantially add to ICANN's overall workload. While ICANN's management and
staff are of high caliber, this is a tremendous amount of rapid and exponential
change that any organization would find a challenge to successfully manage.
Therefore, given that the rapid introduction of potentially hundreds of new
gTLDs will be the most momentous change to the domain name system (DNS) since
the establishment of ICANN, and that the success or lack thereof will have
tremendous implications for all present participants in the DNS as well as
ICANN itself, it would appear that a cautious and exceedingly well thought out
approach to the proposed opening of the gTLD space would be the preferred
course of action.
Unfortunately, we do not believe the approach taken by ICANN to date meets that
advisable standard. Given the magnitude of the change contemplated and the
stakes involved, as well as the length and complexity of the Guidebook and the
fact that key issues and details have yet to be provided, two comment rounds of
forty-five days each are entirely insufficient. We therefore urge that the
second comment period contemplated by ICANN be for a minimum of sixty and
preferably ninety days, and that a third comment round be scheduled if key
issues and details remain absent or incomplete in the second version of the
Draft Guidebook after considering all first round comments, or if such issues
and details are provided in the second version but result in considerable
continuing controversy or disagreement within the community.
We also find it difficult to believe that ICANN can give adequate consideration
to the volume of application it expects to receive in the first round - even if
one-third of the anticipated 500 applications were delayed due to objections
raised against them, that would still require ICANN staff to review and approve
an application nearly every day of the first year of the program's operation,
including weekends and holidays, if the first round decks are to be cleared
before the contemplated initiation of the second application round
approximately one year later. Such a torrid pace is unlikely to afford adequate
consideration of applicant qualifications and capabilities or of the soundness
of their proposals, and is likely to either result in inordinate delays or
future failures and scandals that will be destabilizing to the DNS and
negatively impact the ICANN community and ICANN itself. Therefore, we believe
that ICANN should adopt and state, in advance of accepting applications, a
prioritization regime that will allow it to process all first round
applications in a thorough and orderly fashion.
Adding to the need for such clearly articulated prioritization policies is the
fact that 2009 will also bring with it two major events that will have
substantial additional impact on the attention and processing capabilities of
both ICANN and the overall community. The first is implementation of GNSO
reform; our recent participation in meetings in Cairo made clear that the
functional success of this exercise is far from assured and that the ability of
ICANN's primary policymaking body to meaningfully participate in upcoming
decisions is questionable. The second is the September 2009 Joint Project
Agreement (JPA) decision point for continuation or termination of U.S.
oversight of ICANN, along with associated concerns regarding ICANN's potential
plans to evolve its organizational form and legal status -- as well as its
ability to withstand capture attempts by the International Telecommunications
Union or similar entities that would in turn lead to increased politicization
and bureaucratization of ICANN's activities. In short, ICANN will have other
major challenges and issues competing for its attention next year in addition
to a massive expansion of the domain name space.
ICA members are competitive entrepreneurs and we therefore have no objection to
the general concept of a further expansion of the gTLD space and a
proliferation of new registry business models. Indeed, some ICA members may
well be applicants, while others hope to offer backend services to new
registries, and still others may perceive investment and development
opportunities in some of the new gTLDs. But this rollout must be carefully
managed. Overall, it is much more important that the application and approval
process for new gTLDs be done right than be done fast.
Finally, in regard to both this and other ICANN proposals put out for community
comment, we find it lamentable and inexcusable that ICANN continues to afford
inadequate time for analysis and feedback. ICANN staff and Board should have
clearly heard at the June Paris meeting a chorus of calls for longer comment
periods generally, as well as great concern over ICANN's pattern of deluging
the community with new proposals and documents immediately before one of its
general meetings. Despite these clear expressions of concern, ICANN once again
released multiple complex proposals and reports in the week prior to the Cairo
meeting (many of which have had their own comment deadlines over the past few
weeks), and provided a thoroughly inadequate first round forty-five (now
lengthened to fifty-two) day comment period on a draft applicant guidebook
that, with supporting memorandum, exceeds 300 pages in length. Similarly, in
regard to the CRA International report, "Revisiting Vertical Separation of
Registries and Registrars"-- upon which we comment in this letter due to its
direct relationship to overall gTLD pricing policies-- ICANN's December 9th
announcement that it would conduct a public consultation on this document in
Washington, DC a scant 48 hours later constituted thoroughly inadequate notice
and was indeed insulting to the community and made a mockery of the public
consultation process. Even though we are located in Washington we found it
impossible to attend this meeting due to prior commitments, and we imagine that
the situation was even more difficult for interested parties located outside of
Washington. We believe that the Washington meeting should be rescheduled to
provide an opportunity for meaningful and fully informed participation and
that, in the future, any ICANN announcement of a public meeting or consultation
should provide a minimum of two weeks' notice so that interested parties can
make arrangements to attend and prepare themselves thoroughly for such event.
gTLD Pricing Regime
The draft contract for new registries lacks any pricing controls and thereby
introduces the possibility that all new gTLDs, including those that are open to
unrestricted classes of registrants, may impose tiered pricing. Proceeding
without such controls would allow incumbent registry operators - including
those for the four most successful incumbent gTLDs, .com, .net, .org, and
.info, which collectively constitute 97 percent of all gTLD registration - to
argue that provisions in their present registry contracts permit them to
likewise institute tiered pricing. This result is thoroughly unacceptable. The
issue of tiered pricing has been extensively debated in the context of the
recent renewals of incumbent gTLD registry contracts and was rejected after
substantial negative input from the community. This issue should not be
reopened through the backdoor of these new registry contracts, and it is
extremely disturbing that ICANN has done so.
ICA's position on this matter has been clearly stated in the past - we believe
that the award of a gTLD registry contract creates a natural monopoly requiring
substantial oversight and controls from ICANN to prevent pricing abuse; that
is, a particular domain name constitutes an Internet address that has specific
value that cannot be readily transferred to another gTLD in the face of
unreasonable renewal pricing demands. To the extent that a gTLD registry is or
becomes successful that success is due to the efforts and expenditures of the
registrants who have populated it with compelling domains, and not of the
registry operator which fulfills its operational role of maintaining a secure
and accurate registration database. Absent evidence to the contrary, the cost
to the registrar of maintaining the registration of a particular second level
name is constant regardless of the number of visits to associated web pages or
the commercial success of any associated business activity. It is also clear,
given the fact that .com registrations constitute 74 percent of all gTLD
registrations and that sixteen of the 21 existing gTLDs collectively constitute
a scant 1 percent of same, that certain gTLDs have substantially more value to
registrants and the public and that migration of a second level name to another
gTLD (assuming such name was available) would not be an acceptable alternative
in reaction to the extortionate pricing policies that could be instituted under
a tiered pricing regime. In short, registration fees should be just that --
flat fees for a ministerial service -- and any allowance of tiered pricing
would permit gTLDs to institute a thoroughly undeserved and objectionable tax
on the most successful websites and Internet business models.
We recognize that certain "closed" gTLDs may be proposed in the upcoming round
of gTLD applications and that tiered pricing may be acceptable in that very
limited context, For example, an organization might propose to establish a gTLD
solely for its members and to impose a lesser registration fee on individuals
than on business entity registrants. However, even allowing this limited
exception would only be acceptable if ICANN can provide adequate documented
assurance to the community that such allowance would not permit incumbent gTLD
registries to argue that such action gives them a contractual green light to
implement tiered pricing. In any event, tiered pricing on new gTLDs open to the
general public, broadly defined, should be absolutely prohibited, and should be
accompanied by establishment of a threshold limit (e.g., 50,000 domain names)
beyond which even a supposedly closed gTLD will be subject to strict pricing
controls. In addition, within the extremely limited universe of new closed
gTLDs that are permitted to establish variable registration pricing of any
kind, such registries should be required to publicly announce their pricing
policies in advance of any final application approval and should be bound to
such policies for the entire ten year term of initial approval with a limited
exception made for those registries that can demonstrate that an alteration in
pricing policies is required for their financial survival - and then only if
ICANN makes such request public and permits adequate time for community input.
Directly related to registry pricing policies is the matter of
registry-registrar relations. Section 2.8 of the draft registry agreement fails
to adequately address this issue, stating only "TBD-See paper to be posted on
ICANN website discussing registrar marketplace issues." We have indeed
thoroughly reviewed that report, "Revisiting Vertical Separation of Registries
and Registrars" by CRA International. While it is a well reasoned,
comprehensively, and adequately documented analysis we must demur from the
thrust of its recommendations.
Vigorous competition between ICANN-accredited registrars in the pricing and
range of their registrant services is one of the great successes of the ICANN
experiment and should not be abandoned. We continue to believe that the
position taken by the Department of Commerce in its June 1998 White Paper -
"where possible, market mechanisms that support competition and consumer choice
should drive the management of the Internet because they will lower costs,
promote innovation, encourage diversity, and enhance user choice and
satisfaction" - remains valid a decade later and should be a guiding principle
for ICANN decisions.
We completely agree with CRA's observation that there are various incentives
for a registry to discriminate among registrars in a manner that harms
consumers/registrants, that such discrimination could take on multiple forms,
and that these incentives are especially clear and strong when a registry is
operating under a binding price cap; and that vertical separation (of registry
and registrar) and equal access (of registrars) are useful tools for limiting
the possibility of harmful discrimination. As previously stated in this and
prior comment letters, we believe that award of a gTLD registry creates a
natural monopoly and that fixed maximum pricing caps and prohibition of
differential pricing are required to protect registrants from extortionate
registry pricing actions constituting the imposition of a tax on the success
that individual registrants have created.
Therefore, we have strong qualms regarding CRA's recommendation that ICANN take
steps toward relaxing the vertical separation and equal access requirements. We
recognize that consideration of limited relaxation of such requirements may be
appropriate for new and innovative single-organization gTLDs where the registry
and registrants are one and the same, particularly since there may be little or
any impetus for third party registrars to serve them and also recognizing there
also may be valid security concerns associated with third party registrar
services in this limited context. However, we agree with CRA that defining such
gTLDs may not be a straightforward matter and therefore we would urge extreme
caution in creating such exceptions lest they swallow the rule.
As for the other possibility for relaxation cited by CRA, the "hybrid model" in
which a registry has a controlling stake in a registrar so long as it does not
serve that particular registry, we have even greater concerns. As noted, there
is already tremendous competition in pricing and services at the registrar
level so we are not considering this matter in a context of inadequacy of
providers where new entrants must be encouraged. We have little doubt that a
registry permitted to directly own a registrar will, at some point after
initial approval, present arguments to ICANN that it should be permitted to
offer registration services for its own registry and that such permission can
be conditioned on various safeguards to protect registrants. Therefore, we view
the hybrid model suggestion as a camel's nose under the tent of ending vertical
separation of registries and registrars generally. In addition, incumbent
registries might well use the CRA report to justify another attempt at removing
price caps, arguing somewhat disingenuously that such action would reduce the
discrimination dangers that might otherwise accompany an easing of vertical
CRA notes that easing of vertical separation would require more vigorous
enforcement of equal access requirements by ICANN, and we question whether
ICANN is up to the task especially given the new administrative and contract
enforcement burdens it will face in conjunction with the massive contemplated
rollout of new gTLDs. Therefore, we see little to gain and much at risk and
oppose ICANN approval of such hybrids.
Summing up, we agree with CRA's recommendation that ICANN move slowly toward
permitting integration of registry and registrar services. But we dissent from
its apparent goal of using experimentation with single-organization and hybrid
registries as a prelude to relaxing vertical separation and equal access
requirements for a broader pool of gTLDs, as we doubt that any such relaxation
could be contained to exclude the dominant incumbent registries.
All recognized governments and a variety of international organizations already
have been assigned their own country code TLDs (ccTLDs). The ccTLDs have been
quite successful in attracting registrations, with a total of about 49 million
registered domain names as of February 2008, about one-half of the
approximately 100 million gTLD registrations in effect contemporaneously. In
some regions, such as the European Union (EU), ccTLD commercial registrations
are more popular than those on gTLDs. At the same time developed geographic
domains are among the most successful websites, and the principle has become
well-established that national governments and other governmental entities have
no valid claim against such geo-domains. Internet users have repeatedly
demonstrated that many of their Internet informational searches relate directly
to a specific geographic locale, and geo-domains developed by the private
sector have served the informational and commercial needs of these users very
In short, the countries of the world have been given their own registries and
many have been quite successful in developing them. These nations and lower
echelon regional, state, county and city authorities should not now be given
the opportunity to extend their authority over new gTLDs proposed by
entrepreneurial individuals and organizations by requiring such applicants to
receive advance endorsement or at least non-objection of the nation or other
governmental authority associated with a proposed geo-gTLD name (and, even
then, such applications could still be subject to community objections). Such a
requirement is a prescription for the awarding of geo-gTLD contracts on the
basis of lobbying prowess and political connections at best and outright
corruption at worst. It will impair the best potential development of new
geo-gTLDs to the detriment of Internet users and will also abet censorship and
other forms of information control. This proposed requirement is completely at
odds with the GNSO principles adopted by the ICANN Board and instead acquiesces
to the unreasonable overreaching on this matter of ICANN's Government Advisory
It is indeed outrageous that ICANN staff has unilaterally rejected the
Board-adopted recommendation of its primary policymaking body, the GNSO, and
acquiesced in part to the advisory recommendations of the GAC. In this matter,
as well as in regard to several others that we address in this letter, we quote
with approval the statements made by outgoing ICANN Board member Susan Crawford
during the Board meeting held in Cairo on November 7th. She stated:
>>SUSAN CRAWFORD: Thank you, Kurt.
When I began my service on the ICANN board, the first thing I wanted to push
for was new gTLDs. And I am very anxious to see this go forward. And we've
heard so many comments from people saying they want it to go forward.
That being said, I am concerned -- and I hope the board in the future will be
concerned -- about some quite breathtaking elements of the applicant guidebook
that exists. And some of these issues you have raised in your summary, for
which I thank you.
The four -- I'm just going to pick the four most outrageous elements that I
want to bring forward in my last half hour on the board.
The first is the morality and public order element that we've talked about in
the past. As presented in the applicant guidebook and in the explanatory
memoranda accompanying it, there would be no limit to who could bring a
morality and public order claim and no constraint on the subject of that claim,
essentially, nothing. Anybody could complain about something, and three
panelists who keep their decision completely secret could decide that it
offended morality and public order.
And then the decision of those panelist is not even final. It just becomes
another element that then may get bounced back to the ICANN board.
So you've got complete discretion, plus no finality. I'm not sure what we're
gaining through this.
So if I were king, I would suggest that we find some way of very narrowly
tailoring the limits on expression that are properly the subject of objections
and constrain jurists making those decisions.
Of course, the judges will say they want complete discretion. That's their
job. They want to have the ability to make wide-ranging decisions. It's not
ICANN's job to serve as a gatekeeper in this fashion, handing over, at least
temporarily, this authority to a panel.
So that's my brief summary of the problems, as I see them, with morality and
public order as it's been implemented in the draft.
And please correct me if I've gotten this wrong.
The second outrageous element of this, in my view, is the suggestion in one of
the explanatory memoranda that auctions appear to be the best means of
resolving contention among competing applications.
Governments auction spectrum because a government can be said to stand for its
citizens and to have the right to collect monies on their behalf and deposit
those monies into the treasury for the good of that bounded group of citizenry.
I cannot imagine on what basis ICANN would say that it has the right to
auction off domains, top-level domains. And even if somehow it does have that
right, the mischief created by trying to figure out how to allocate that money
is staggering. You'd have to create a second ICANN to deal with the deployment
So you and I have discussed this in the past. But I want to say it again, I
really think it is potentially destabilizing to assert the authority to hold an
auction in this context. And I'm not persuaded by the argument that merely
flipping a coin would be illegal. These applicants will have gone through a
lot of process before they get to the contention stage.
So forget auctions.
The third outrageous element, in my view, is --
[ Applause ]
SUSAN CRAWFORD: Oh, thank you.
-- geographic names. Geographic names. The GNSO fought over this for a long
time and made a policy recommendation that objections based -- coming from
communities, or let's put it the other way, that if an application seems to be
targeting a community, it can be objected to. They're very clear that
opposition must be objection-based, that the burden of going forward must be on
the objector. That's the policy as stated by the GNSO. And the policy,
frankly, that the board approved.
The guidebook flips the burden around and suggests that the applicant has the
burden of coming forward with documents of support or nonobjection from the
And I don't understand how this could have happened. The board approved the
I hope there will be further discussion about that.
Possibly the most outrageous element of this entire package has not yet been
explored by the board at all. And that's the base contract that would be
provided to registries.
Now, these guys are willing to sign a napkin. They've been waiting for these
applications to be opened for such a long time. They have zero leverage. In
this context, ICANN is a monopoly, handing out a contract that is essentially
nonnegotiable. It is up to the board and management and staff to restrain
ourselves in making this contract.
Here's what happened. The whole point of ICANN is that it's made up of
private parties signing agreements with each other, a private registry signing
a private agreement with ICANN.
These private parties have agreed that, in the future, if the community comes
up with a mandatory consensus policy, they will change their activity, they
will be bound by future consensus policies.
An important element of this is that ICANN has an obligation to treat equally
-- to treat parties equally.
ICANN is abusing its power in this draft contract. We're apparently
frustrated with the consensus policy model, so it's blown up in two different
One is that the proposed draft contract really has a belt and suspenders
approach. First, it allows ICANN to amend the contract for any reason, subject
to a veto of the registries, and on any topic.
So the whole bounded nature of consensus policies is gone.
Second, just in case anybody tries to invoke the consensus policy structure,
it dramatically expands the scope of what it understands consensus policies to
be. Everything is included.
So the contract can be unilaterally amended by ICANN on any topic unless the
registries as a body vote to overturn.
It's quite -- it's actually completely inconsistent with the Board Governance
Committee's GNSO Working Group report of February 2008 that made very clear how
this structure is supposed to work.
So I really find that a destabilizing change. I'm not sure where ICANN gets
the authority to do that. It's apparent that registries will sign this,
because they will really have no choice if they want to go forward. And it
eliminates the essential bargain that was the basis of ICANN's creation.
So otherwise, it's great, Kurt. But I just wanted to get all of that on the
Thank you very much.
[ Applause ]
>>PETER DENGATE THRUSH: Other than that, Mrs. Lincoln, what did you think of
ICANN Board Chairman Peter Dengate Thrush chimed in with support of most of Ms.
Crawford's statements, including those pertaining to geographic names:
PETER DENGATE THRUSH: Anyone else?
I would like to associate and agree with Susan's points, except that
concerning auctions. I don't use the same -- perhaps quite the same tone as
Susan. But I share the same concerns, particularly about public order and
morality, on which the board has spent a considerable amount of time trying to
get clear what the proper scope in relation to those issues were under the
headings, particularly, of standing and standards. And we have tended to seek
to limit either one or both of those so that there was clear boundaries for
everybody in relation to those disputes.
So I am going to certainly come back to those with some interest.
Similarly with geographic names, I'm concerned about the substance of that,
the concept of that being a basis for a reservation or objection. And, of
course, I'm concerned about the reversal of the onus that results from adopting
the way it's been put there.
And I also share the concern about possibly fundamental changes to the basic
principle of ICANN's core management processes. And as we've said before, the
genius of the policy development process seems to be put at risk by this
approach. So I will be coming back carefully to look at those as well.
In our view, national and other governmental authorities should be restricted
to the same objection rights as other parties in regard to new gTLDs. ICANN's
staff has already conceded far too much to the GAC, and yet the GAC remains
unsatisfied. An October 2nd letter from ICANN CEO & President Paul Twomey to
GAC Chairman Janis Karlkins notes that, while ICANN staff had acquiesced in
regard to GAC Paragraph 2.2 as regards advance agreement or non-objection from
the relevant government or public authority, the GAC still was pushing for
acceptance of Paragraph 2.7, which would require applicant registries for new
gTLDs to adopt procedures for the blocking, at no cost and upon demand of
governments, public authorities, on Intergovernmental organizations (IGOs), any
second level name of geographic or national significance, and further ensure
procedures to allow the same entities to challenge "abuses" of such names at
the second level. The notion that national governments and other entities
should be awarded a cost-free method of blocking second level geo- and
"national significance" (whatever that broad and undefined term might mean)
names that have not secured their blessing, and that they further be permitted
to harass such registrants for alleged "abuses" that fall far outside the
present scope of the UDRP, is a complete outrage and a threat to free
expression and enterprise. Further, the notion expressed in the letter that
such second level restrictions might be inappropriate for "multi-national
companies" and "brand name holders" implies that they might be acceptable
vis-à-vis individual and small business entrepreneurs, a notion that we find
offensive insofar as it would establish one favorable rule for large
corporations and another far more stringent rule for small businesses.
It is ICA's position that the final application process for new gTLDs must
revert to the GNSO position regarding the rights of nations and other geo-based
entities and organizations and that ICANN staff's acquiescence to the GAC in
this regard is unacceptable. In particular, objections by governments and
similar entities to second level geo-names must remain limited to the scope of
the UDRP, as any deviation from that principle threatens dangerous and
unjustified policy blowback for valuable geo-names registered at incumbent
Protection of the Rights of Others
The ICA strongly supports the protection of intellectual property (IP) rights,
including trademark rights. We have adopted a Code of Conduct that prohibits
intentional trademark infringement. And we have supported adoption of policies
by individual registries, and the adoption of new pricing regimes by ICANN,
that appear to be successfully eradicating that abuse of the Add/Grace Period
(AGP) known as domain tasting which is sometimes associated with deliberate
cybersquatting on the trademark rights of others.
For these reasons ICA strongly supports the adoption of policies in conjunction
with new gTLDs to support IP rights. We believe that the proposed procedures
accomplish this by affording IP owners the right to bring objections against
any proposed string that they believe would infringe their rights. As ICANN has
noted in its memorandum on this issue, "it is not unusual for more than one
entity to have a trademark in the same word or phrase either for different
products or services or registered in different jurisdictions". The Internet
and trademark rights coexist uneasily, as the former is a global data
transmission system while the latter is restricted by relevant marketplace as
well as geographic considerations. It is for that reason that we oppose the
suggestion of some IP interests that ICANN establish a master list of trademark
terms that will be either off-limits to or extremely difficult to establish as
a new gTLD; vast tracts of generic dictionary words, in multiple languages,
would inevitably wind up on such a list. To cite one example, the word dove is
trademarked as the name of a soap bar as well as of an expensive line of ice
cream, but the dove is also the universal symbol of peace - and if a non-profit
peace advocacy group wishes to apply for .dove as a registry devoted solely to
its activities and goals it should not be subject to blockage or objection from
either of the cited business entities.
It is critically important that IP rights protections adopted in conjunction
with the gTLD process be limited to protecting existing rights conferred by
relevant law and do not create newly expanded rights beyond the scope of
current law. Therefore, we have some concern that the criteria for resolving
objections is being developed by IP experts, as such individuals may try to
utilize this process to exactly such an expansionist end, seeking from ICANN
what they have been unable to persuade legislatures to confer. In any event,
until these criteria are fully developed and published for public review it is
impossible to render an informed judgment upon them. Our concern regarding the
present vagueness of these criteria stems from our observation, which we have
articulated to ICANN on numerous occasions, that the Uniform Dispute Resolution
Process (UDRP) is becoming less and less uniform and predictable and that a
presumptive burden is being imposed upon registrants that is contrary to the
clear language of the UDRP. Any extralegal expansion of IP rights resulting
from the gTLD process has the potential to find its way into and further bias
the UDRP against good faith registrants. This concern is particularly acute
given that the World Intellectual Property Organization, which is inherently
biased in favor of IP rights and their expansion and also serves as a leading
arbiter of UDRP cases, is the only designated provider of dispute resolution
services for legal rights objections and that such disputes will be decided by
a single panelist.
Notwithstanding that caution, we support requiring gTLD applicants to adopt
strong best practices to protect IP rights and, if the method chosen is a
sunrise period, we would urge that trademark owners be charged only a
reasonable minimum fee to register their protected names at the second level on
the new gTLD. And, of course, we have no objection to the requirement that all
second level registrations be subject to the UDRP - so long as it is
implemented in a uniform fashion in keeping with its clearly stated requirement
that a party alleging infringement carry the burden of proving the three
required elements for a finding against the registrant. However, we strongly
object to suggestions that ICANN establish a near-term requirement for
cost-free takedown procedures for domains alleged to be established in bad
faith for both new and existing gTLDs, as establishment of bad faith
registration is already one of the key elements of the UDRP - it should remain
one of three elements in a balanced proceeding, and not become the single
determinative element in a biased proceeding. Any alteration or supplementation
of the UDRP should not be implemented as a footnote to new gTLD implementation
but only after presentation to and consideration by the community -- and such
process must take into consideration and redress concerns with the present UDRP
voiced by registrants and not simply react to the complaints of trademark
We believe that the concerns of many trademark holders will be alleviated when
the reality of new gTLD applications begins. The impending situation should in
no way be analogous to current abuses, in which a cybersquatter can seek to
monetize a clear typographical variation of a famous trademark on .com for less
than $10 per year, and can hide his identity through a proxy service. New gTLDs
applicants will put at risk a full $185,000 application fee, will require
several $hundred thousand more in the bank, and will entail establishing one's
bona fides as a legitimate organization with ICANN. Given these realities, we
would be surprised to see any extensive infringement attempted through new
registry applications. As for the second level, various infringement scams may
be difficult to implement due to a scarcity of type-in traffic at most new
gTLDs and their low placement in search engine results. In any event, the UDRP
remains available for use against bad faith registrations. In addition, we
strongly urge ICANN and all registries to increase their commitment to finding
means of taking down domains that are used to facilitate criminal activity such
as phishing scams and stand ready to offer whatever assistance the domain
investment community can provide in that effort.
Morality and Public Order Objections
The ICA does not want to see new gTLDs utilizing names related or dedicated to
the advocacy of racism, discrimination, violence, terrorism, genocide, or other
harms and evils. At the same time, we cannot support the DNS being used as a
censorship regime or as a means of curtailing speech to a far greater degree
than is permitted in various national jurisdictions - including our base of
operations, the United States, where the First Amendment provides broad
protections for speech and expression. One of the major reasons we previously
objected to the proposed .xxx contract was because it would have involved ICANN
in the business of reviewing and rating content.
While we are not opposed in principle to permitting objections to certain
proposed gTLDs based on concerns relating to advocacy of highly offensive or
criminal activities, we cannot support permitting such objections under the
vague criteria proposed to date by ICANN. ICANN's memorandum on this subject
recommends that "TLD strings must not be contrary to generally accepted legal
norms relating to morality and public order that are recognized under
international principles of law", yet concedes a few paragraphs later that
"Extensive research has shown that it is difficult to identify existing
generally accepted legal norms relating to morality and public order." In
short, ICANN is proposing that gTLDs not be contrary to norms that do not exist!
ICANN then falls back to a position that such objections will be decided by
"esteemed jurists" implementing "very broad standards" and imbued with
considerable discretion, and that this should somehow mute concerns.
Unfortunately, this seems to boil down to empowering jurists who "know it when
they see it", an approach that provides only the vaguest guidance to potential
applicants or protection for free expression. Again, as with IP protections,
one of our main concerns is that overreaching standards employed against new
gTLD applicants will set new norms that will find their way into the second
level and threaten existing registrants at incumbent registries.
While we reserve judgment on this matter pending further information from
ICANN, we cannot support morality and public order objections against proposed
gTLDs unless and until ICANN can articulate a narrow range of specific terms
that could be subject to them.
We hope that ICANN will find our comments useful as it revises the Applicant
Guidebook and prepares to release a revised second version for analysis and
comment. We look forward to reviewing that updated document.
Thank you for your consideration of our views in this matter.
Philip S. Corwin
Counsel, Internet Commerce Association
Philip S. Corwin
Butera & Andrews
1301 Pennsylvania Ave., NW
Washington, DC 20004
"Luck is the residue of design." -- Branch Rickey