NCTA Comments on the Special Trademark Issues Review Team's Recommendations Regarding Trademark Protection Mechanisms (Trademark Clearinghouse and Uniform Rapid Suspension ("URS"))

["Stabbe, Mitchell" <mstabbe@xxxxxxxxxxxxx>]

On behalf of the National Cable & Telecommunications Association,
("NCTA"), I am submitting the following comments on the Special
Trademark Issues ("STI") Review Team's recommendations regarding the
proposed creation of a Trademark Clearinghouse and Uniform Rapid
Suspension procedure to protect trademarks in the New GTLD Program.
 
A copy of these comments in Word is attached.
 
Thank you very much.
 
Mitchell Stabbe
 
Mitchell H. Stabbe      
Attorney at Law 
        
1200 New Hampshire Avenue, NW Suite 800 
Washington, DC 20036-6802       
T  202-776-2929 
M  301-943-4393 
F  202-776-4929 
E  mstabbe@xxxxxxxxxxxxx        
www.dowlohnes.com <http://www.dowlohnes.com/>   
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  <http://www.ncta.com/Default.aspx> 

January 26, 2010

To:       ICANN (sti-report-2009@xxxxxxxxx)

From:   National Cable & Telecommunications Association

Re:       Special Trademark Issues Review Team's Recommendations
Regarding Trademark Protection Mechanisms

________________________________________________________________________
______

Dear Mr. Beckstrom, Mr. Dengate-Thrush and the ICANN Board of Directors:

The National Cable & Telecommunications Association ("NCTA") appreciates
the opportunity to submit the following comments on ICANN's Special
Trademark Issues Review Team's recommendations
<http://gnso.icann.org/issues/sti/sti-wt-recommendations-11dec09-en.pdf>
regarding certain trademark protection mechanisms, namely, the Trademark
Clearinghouse and the Uniform Rapid Suspension ("URS") Procedure, that
are under consideration by ICANN.

Introductory Statement

NCTA is the principal trade association representing the cable
television industry in the United States.  Its members include cable
operators serving more than 90% of the nation's cable television
subscribers, more than 200 cable programming networks, and suppliers of
equipment and providers of services to the cable industry.

NCTA's program network members have invested literally billions of
dollars to establish and promote some of the best-known and most trusted
brands nationally and internationally in cable programming and broadband
content.  Moreover, the cable operator members of NCTA are the nation's
largest providers of high-speed Internet access.  From 1996 to 2008, the
cable industry invested over $146 billion (and almost $15 billion in
2008 alone) to build out a two-way interactive network with fiber optic
technology.  This investment in broadband networks by the cable industry
has, in turn, enabled members of NCTA to provide state-of-the-art
digital telephone service (Voice over Internet Protocol or "VoIP") to
millions of American consumers.

Many of these products provide the means by which the new gTLDs under
consideration would be able to function.  Accordingly, many of NCTA's
members have a special expertise that enables them to appreciate some of
the issues that would be presented by ICANN's proposed New gTLD Program
<http://www.icann.org/en/topics/new-gtld-program.htm>   (the "Program"),
if implemented.

It is well recognized that, along with its numerous benefits, the advent
of the Internet has created many opportunities for various types of
predatory practices.  In particular, trademark owners have been the
target of those who, among other things, have sought to make a profit by
the use and registration of domain names that trade off the goodwill of
established trademarks.  These bad actors have also sought to make
various uses of well-known marks to deceive and defraud consumers.  As a
group, trademark owners have been forced to expend huge amounts of
effort, time and money to prevent and to halt such practices, both to
protect the goodwill and the integrity of their brands, as well as to
prevent consumer confusion and fraud.  Significantly, these expenditures
do nothing to increase the bottom line for trademark owners or to
otherwise improve their position in the market.  Rather, these
expenditures are almost entirely defensive in nature, in that they are
required to avoid harm and maintain the status quo.

As we indicated in our previous comments, NCTA acknowledges that, from
its inception, one of ICANN's primary goals has been to promote
competition, consumer trust and consumer choice in the DNS marketplace.
Indeed, the Affirmation of Commitments between the United States
Department of Commerce and ICANN that was entered into on September 30,
2009, specifically provides that ICANN will remain committed to these
goals as it contemplates expanding the top-level domain name space.
NCTA's members have a strong history of bringing new options in video,
Internet and voice services and capabilities to consumers.  Thus, they
understand the need to promote consumer choice and the many benefits
that result from such choice.

An important component of consumer choice, however, is the ability of
consumers to sort out what they value most among rapidly expanding
Internet offerings.  This need implicates the importance of trademarks
in distinguishing the source of goods and services, including those
offered over the Internet, as well as other branding issues.

Trademarks enable consumers to identify a particular person or business
as the source of a product or service.  This distinctive identification,
in turn, enables companies to build value and trust among consumers in
their products and services.  The benefits of this system to consumers
and to trademark owners are manifest.  Consumers have a "shorthand" way
of distinguishing the goods and services they value from the myriad of
other offerings available, particularly over the Internet.  Brand
owners, in turn, reap the benefit of investing in the quality and other
distinguishing attributes of their goods and services and of developing
strong goodwill and brand equity in their marks.

These mutual benefits take on special significance with respect to the
communications services, products, capabilities and content provided by
NCTA's members.  Central to the ability of the Internet to successfully
expand innovation, choice, community and freedom of expression is its
ability to empower consumers to access the content, applications and
services they seek, when and how they want them, without concern that
they are being misled or confused as to their true source or nature.
For example, consumers who want to access news programming from CNN,
educational programming from the Discovery Channel or children's
programming from Nickelodeon should be able to do so safely and without
worry that their choice of information source has been compromised.
These basic principles apply to consumers regardless of where they are
seeking information, whether off-line or on-line.

Accordingly, NCTA and its members share the concerns of other brand
owners in the potential consequences of the Program.  We are
particularly concerned that the Program will be approved and implemented
without adequate safeguards to prevent further abusive behavior based on
efforts to trade off the brands of their members and others.

I.          Background

In response to the concerns raised by trademark owners regarding the
Program, by resolution
<http://www.icann.org/en/minutes/resolutions-06mar09.htm#07>  dated
March 6, 2009, the ICANN Board authorized the creation of an
Implementation Recommendation Team ("IRT") to develop and propose
solutions to the overarching issue of trademark protection in connection
with the proposed introduction of new gTLDs.  The IRT issued its Final
Report on Trademark Protection in New gTLDs
<http://www.icann.org/en/topics/new-gtlds/irt-final-report-trademark-pro
tection-29may09-en.pdf>  on May 29, 2009.  The report identified various
proposed solutions to address issues for trademark owners in the
implementation of new gTLDs and recommended the implementation a number
of them, including the following:

*        a Trademark Clearing House: a central information repository
about trademarks to support new gTLD registries to operate rights
protection mechanisms (RPMs), without placing a heavy financial or
administrative burden on trademark owners, by maintaining and generating
lists of validated marks that would be utilized by new gTLD registries
in implementing Trademark Protection Mechanisms, such as a Sunrise
Process, whereby the holders of marks on the list would be given the
first opportunity to register the corresponding term as a domain name in
a new gTLD, during a gTLD launch; 

*        a Globally Protected Marks List: a list of world-famous marks
that would get a higher level of protection and would be maintained by
the IP Clearing House;

*        a Uniform Rapid Suspension ("URS") System: a procedure similar
to the UDRP, but faster and less expensive, for domain disputes in which
there is no genuine contestable issue as to the infringement and abuse;

*        a Trademark Post-Delegation Dispute Resolution Mechanism: a
procedure for challenges to activities of a new gTLD registry that fails
to lives up to its commitments for rights protection; and

*        a "Thick" WhoIs model for new gTLDs: a system by which all
domain name registrants in the new gTLDs would be required to provide
the registry with, for example, contact information for the registrant
and the designated and technical contacts.

After a comment period, on October 4, 2009, ICANN released a third
revision of the Draft Applicant Guidebook ("DAG 3.0").  The portions of
the DAG
<http://www.icann.org/en/topics/new-gtlds/draft-dispute-resolution-proce
dure-clean-04oct09-en.pdf>  governing trademark rights mechanisms only
incorporated aspects of the IRT's recommendations for a
Trademark-Post-Delegation Dispute Resolution Procedure (limited to
providing relief against registry operators that act in bad faith, with
an intent to profit from the systematic registration of infringing
domain names) and a Thick WhoIs model.  ICANN rejected the proposal for
a Globally Protected Mark List in its entirety.

No position was taken by ICANN regarding the proposed Trademark
Clearinghouse or Trademark Watch Services.  By letter
<http://gnso.icann.org/correspondence/beckstrom-to-gnso-council-12oct09-
en.pdf>  dated October 12, 2009, ICANN asked the Generic Names
Supporting Organization ("GNSO") to determine whether these two proposed
rights protection mechanisms are appropriate and effective options.

In turn, by resolution
<http://gnso.icann.org/meetings/minutes-council-28oct09-en.htm#item6>
dated October 28, 2009, the GNSO created the Special Trademark Issues
("STI") review team to provide recommendations.  On December 11, 2009,
the STI review team submitted its Report
<http://gnso.icann.org/issues/sti/sti-wt-recommendations-11dec09-en.pdf>
to the GNSO, recommending alternatives to ICANN's proposed RPMs.  The
GNSO unanimously endorsed these recommendations.  On December 17, 2009,
ICANN solicited public comments
<http://www.icann.org/en/announcements/announcement-2-17dec09-en.htm>
on the STI report.

II.         Comments on STI Recommendations

A number of the final STI recommendations regarding the Trademark
Clearinghouse and the URS differ materially from the original IRT
recommendations, as well as the proposals contained in DAG 3.0, or other
proposals made by the Commercial and Business Users Constituency during
the STI Review Team's discussions, including:

*        a Trademark Claims Service, under which trademark holders could
challenge the proposed registration of a particular domain name, during
a gTLD launch, and/or

*        a Trademark Watch Service, whereby trademark owners would be
provided with notice of any domain name registration matching one of
their marks and potential registrants would be given notice that there
are validated marks that match their intended domain name, whether
during a gTLD launch or after the registry launches.

As proposed by the STI Team Report, the changes to the Trademark
Clearinghouse proposal, as well as the failure to incorporate the
recommendations of the Commercial and Business Users Constituency, would
materially reduce its prospective benefits, for, among others, the
following reasons:

First, registries would not be required to employ the Trademark
Clearinghouse in connection with post-launch trademark registrations.

Second, in considering whether a domain name "matches" a mark that is
included in the Trademark Clearinghouse, the two must match exactly or
where a mark contained spaces or special characters, such as
punctuation, there would be a match if it matched the mark without any
spaces or special characters and if the space or special character was
omitted or replaced by a hyphen or underscore.  No plural or "marks
contained" domain names would qualify.  In contrast, recent gTLD
launches have not been so limited.  For example:

*      under the .eu, .tel and .asia Sunrise Policies, where a mark
contained spaces or special characters, such as punctuation, a domain
name was considered to match the mark if it matched the mark without any
spaces or special characters, if the space or special character was
replaced by a hyphen or eliminated, or if the special character was
replaced by the word equivalent in any language (e.g., "&" could be
replaced by "and," "et" and so forth);

*        under the .asia Sunrise Policy, the term .asia (and variations)
could be omitted from a mark and still match a domain name that
corresponded to the amended mark; and 

*        under the .asia Sunrise Policy, a domain name that contained
any of the words contained in the description for International Class in
which a mark is registered (or any plural or grammatical variations on
the word) was also a match with the mark.

The registration of Nike, Inc. for the trademark NIKE in International
Class 25 ("footwear" is contained in the description of goods for that
class) illustrates the problem of defining a match narrowly.  Because
Nike, Inc. does not have a registration for the mark NIKE FOOTWEAR,
without the type of broader protection that was provided during the
.asia launch, the domain names www.nikefootwear.asia;
www.nike-footwear.asia and www.nike-footwears.asia would not have
qualified for protection as part of the .asia Sunrise Policy.

As a practical matter, limiting mandatory use of the Trademark
Clearinghouse to pre-launch registrations and limiting matches to
"exact" matches will substantially limit the anticipated benefits of
this trademark protection mechanism.  Cybersquatters will wait to
register domain names that are not an "exact" match to a mark until
after a gTLD registry launches.  At that point, unless a registrar
voluntarily adopts a Trademark Watch Service that employs the Trademark
Clearinghouse, trademarks owners will find themselves in precisely the
same position as they have been with each of the gTLDs in that:

*        there will be no disincentive against the abusive registration
of domain names;

*        trademark owners will still have the burden of identifying
abusive trademark registrations, and

*        most importantly, trademark owners will still need to incur the
staggering expense and effort of making multiple defensive domain name
registrations, for each and every new gTLD.

In order to help impede the abusive registration of domain names that
are confusingly similar to the trademarks of others, NCTA and its
members therefore strongly urge ICANN to:

*        adopt a broader definition of what constitutes a match between
a mark and a domain name, and

*        require new gTLD registries to provide a Trademark Watch
Service that makes use of the Trademark Clearinghouse both before and
after the gTLD launch.

Third, under DAG 3.0, trademark owners would pay a reasonable fee to the
Clearinghouse to have a mark verified and entered into the database and
the registry operators would pay a reasonable fee to have the
Clearinghouse conduct Sunrise or Trademark Watch services.  The STI
Review Team has proposed all costs be borne by the parties who utilize
the services, i.e., all costs would be paid by trademark owners.

It should be noted that consumers and other victims of abusive domain
name registrations will benefit from trademark protection mechanisms
such as the Trademark Clearinghouse.  Moreover, although the new gTLDs
are ostensibly for the benefit of the community at large in general and
applicants for domain names in the new gTLDs in particular, it is
undeniable that both the registries and ICANN will receive a financial
benefit as well from the creation of new gTLDs.  In contrast, the
creation of new gTLDs by ICANN will create a serious problem for
trademark owners, where no problem would otherwise exist.

Therefore, NCTA and its members believe that it would be equitable for
the registries and/or ICANN to share in the costs associated with a
Trademark Clearinghouse.  The original proposal providing that trademark
owners would pay a reasonable fee to the Clearinghouse to have a mark
verified and entered into the database and the registry operators would
pay a reasonable fee to have the Clearinghouse conduct Sunrise or
Trademark Watch services is far more equitable than placing all of the
costs on the trademark community.

Finally, the STI has recommended that, in the event that a complainant
prevails in a URS proceeding, the domain name would be suspended for the
duration of its registration term and resolve to a page informing
visitors that the domain name has been suspended as a result of a URS
proceeding.  In addition the suspension period could be extended for one
additional year by payment of the registration fee by the prevailing
trademark owner.

Under this proposal, after the suspension expires, the registrant will
again be free to use the domain name for any purpose.  If the trademark
owner wants to ensure that such use ceases or that it would be able to
control the domain name, it would need to file a separate UDRP
proceeding.  This process will essentially double the effort required of
trademark owners to stop the abusive use of domain names that trade off
the goodwill associated with their marks.  Moreover, given that the URS
will be limited to clear-cut cases of trademark abuse, there is no
justification for permitting the registrant to use the domain name.

One compromise solution would be that, if at the end of the appeal
period, the registrant has taken no action to obtain a ruling that it
should be entitled to register and use the domain name (or has been
unsuccessful in its efforts to do so), the registration would then be
transferred to the trademark owner.  In light of the showing that the
trademark owner had to make to prevail on the URS complaint and the
resulting inaction by the registrant, this resolution would be fair and
equitable.

Another compromise solution would eliminate any limitation on the length
of time during which the trademark owner can pay to keep the domain
registered and suspended.  If, however, the trademark owner wants the
additional remedy of having the domain name registration transferred to
it so that it can exercise control over the domain name, it can then
file a proceeding under the UDRP.  At that point, the registrant will
have a second opportunity to contest the allegations of abuse and, if it
chooses not to do or is unsuccessful, there can be no complaint
regarding the result.

NCTA believes alternative remedies such as the foregoing would serve the
purpose of avoiding the abusive use of domain names while protecting the
interests of both the registrant and the domain name registrant.

Conclusion

NCTA and its members appreciate the opportunity to provide their
comments to ICANN on the foregoing trademark protection mechanisms.  We
are extremely concerned that the recommendations of the STI Review Team
will do little to address the serious problems faced by trademark owners
if the Program is put into effect and there are a potentially unlimited
number of new gTLDs, each presenting the same problems engendered by the
existing gTLDs.  The threat of these adverse consequences has led many
in the trademark and business community to oppose the Program in its
entirety.  If ICANN does not provide practical solutions to address
these concerns, its promises to consider and balance the interests of
all interested constituencies will have little, if any, meaning.

Respectfully submitted,

/s/ Jill Luckett

Senior Vice President, Program Network Policy

National Cable & Telecommunications Association

25 Massachusetts Avenue, N.W.

Suite 100

Washington, D.C. 20001-1431

www.ncta.com

January 26, 2010

Counsel:

Mitchell H. Stabbe

Dow Lohnes PLLC

1200 New Hampshire Avenue, N.W., Suite 800

Washington, D.C.  20036-6802

(202) 776-2929 (p)

(202) 776-4929 (f)

www.dowlohnes.com

mstabbe@xxxxxxxxxxxxx

Attachment: NCTA_ Comments to ICANN re trademark protection mechanisms (3).DOC
Description: NCTA_ Comments to ICANN re trademark protection mechanisms (3).DOC