National Cable & Telecommunications Association - Comments on Proposed “Strawman Solution” [ED-01.FID2408216]

["Stabbe, Mitchell" <MStabbe@xxxxxxxxxxxxxxxxxx>]

[NCTA]
January 15, 2013
To:       ICANN (tmch-strawman@xxxxxxxxx)
From:   National Cable & Telecommunications Association
Re:       New gTLDs Program – Comments on Proposed “Strawman Solution”
________________________________________________________________________
The National Cable & Telecommunications Association (“NCTA”) appreciates the 
opportunity to submit the following comments on the “strawman” proposal to 
amend certain elements of the New gTLD Applicant Guidebook in order to address 
some of the concerns expressed by the Business Constituency and Intellectual 
Property Constituency concerning the Trademark Clearinghouse and other Rights 
Protection Mechanisms (“RPMs”).
Introductory Statement
The National Cable & Telecommunications Association<http://www.ncta.com/> 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 program 
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 2012, the cable industry invested over $200 
billion in building out advanced hybrid fiber-coaxial cable (HFC) networks and 
other infrastructure.
Numerous products resulting from the efforts and investments by members of the 
cable industry provide the means by which the new gTLDs will operate.  
Accordingly, NCTA’s members have a special expertise that enables them to 
appreciate many of the issues that would be presented by ICANN’s New gTLD 
Program (the “Program”).
NCTA’s members also share the concerns of other trademark owners about the 
potential impact of the Program, as well as the potentially overwhelming 
efforts that will be required of them to police their marks in the new gTLDs.  
As a starting point, in order to employ the new Rights Protection Mechanisms, 
trademark owners will need to register their valuable marks with the Trademark 
Clearinghouse.  Further, if experience with the limited number of gTLDs in 
existence to date provides any indication of what can be expected in the 
hundreds of expected new gTLDs, trademark owners will face the choice of either 
expending significant resources and incurring substantial expenses to police 
their marks and take action against abusive registrations of second-level 
domains in the new gTLDs, or permitting the use of these domain names, which 
are likely to cause damage to the goodwill associated with their marks and to 
consumers who may be victimized by fraudulent activities conducted in 
association with these domain names.
I.          Introduction
NCTA and its members appreciate that ICANN continues to be receptive to the 
concerns of trademark owners.  We are aware that some stakeholders object to 
any further consideration of the Rights Protection Mechanisms, on the ground 
that policies are being adopted outside the GNSO process.  Such complaints 
ignore the fact that the instant request for comments is wholly consistent with 
the process described in Section 1.2.11 of the New gTLD Applicant Guidebook and 
the supporting materials.  See, e.g., “Change Review Process: gTLD Applicant 
Guidebook” 
<http://archive.icann.org/en/topics/new-gtlds/change-review-applicant-guidebook-19sep11-en.pdf>.
 Ultimately, the process will ensure that all interested stakeholders have the 
opportunity to provide their views before any decisions are made.
Moreover, there has been little progress made on implementing some aspects of 
the existing RPMs, notably the Uniform Rapid Suspension System (“URS”).  The 
overall package of RPMs was premised on the URS being available at a cost of 
$300-500.  See <http://newgtlds.icann.org/en/applicants/urs>.  To date, 
however, it appears that service providers are not willing to operate the 
service on the terms promised to the trademark community.  See 
<http://toronto45.icann.org/meetings/toronto2012/presentation-urs-naf-suggestions-18oct12-en.pdf>.
  There is a need for an effective and low cost URS.  For example, as NCTA has 
previously stated in its comments to ICANN on the Applicant Guidebook, the 
burden of proof on trademark owners in a URS proceeding is set extremely high.  
In addition, the provisions allowing a registrant that defaults to obtaining 
review of a decision are far too liberal.  Moreover, the only remedy that is 
available under the URS, namely, suspension of the domain name until the 
registration expires, is no more than a temporary remedy.  Absent these 
changes, it may be appropriate to consider yet additional remedies or solutions 
to address abusive domain name registrations.
II.        NCTA Supports the Strawman Proposals
Based on the summaries of the proposals, in principle and as a general matter, 
NCTA supports these proposals, as follows:

  *   All new gTLD operators would be required to give at least thirty days’ 
notice of the dates and requirements of their Sunrise Launch period.  During 
the Sunrise Launch period, trademark owners will have the exclusive opportunity 
to register second level domain names that are identical to any of their marks 
that are registered with the Trademark Clearinghouse.  The duration of the 
claims period would still be thirty days, but it would be preceded by the 
thirty day notice period.  Adoption of this proposal would provide some 
breathing room for trademark owners and enable them to proceed on a more 
considered and orderly basis.  NCTA supports this change.
  *   The Trademark Claims period for each new gTLD would be extended to ninety 
days from the launch of the registry, rather than the current sixty days.  
During this period, applicants for a second level domain name that is identical 
to a mark in the Trademark Clearinghouse will be given notice that there is the 
potential for a claim by the trademark holder and that the application can be 
withdrawn.  The applicant will need to acknowledge receipt of the notice.  If 
the domain name is registered, the trademark owner will then receive notice of 
the registration and will have the opportunity to bring a claim.  In addition, 
a new Claims 2 service would be created that, during a 6-12 month period and 
for an additional fee, will result in a notice to such applicants that the 
applied-for second level domain matches a mark in the Trademark Clearinghouse 
and provide them with other generic information, but will not require any 
response.  NCTA hopes that extending the Trademark Claims period and providing 
additional applicants with information concerning potential disputes will 
reduce the number of actual disputes.  In its previous comments on the various 
proposals for the New gTLD Handbook, NCTA has taken the position and continues 
to believe that participation in the Trademark Claims service should be made 
permanent for each new gTLD registry.  The current proposals are more limited 
in scope, but NCTA supports these changes.
  *   Second level domains that have been determined to be abusive as the 
result of a UDRP or court proceeding would be eligible to be added to the 
Trademark Clearinghouse, up to a maximum of 50 per trademark.  NCTA has 
previously supported and continues to support the position that the Trademark 
Clearinghouse should include not just word marks, exactly as registered, but 
also “exact + goods/services/other generic words.”  NCTA supports this 
proposal, but it is too limited.  If, for example, the domain name 
TRADEMARKstore.tld has been found to be abusive, at a minimum, 
TRADEMARK-store.tld, TRADEMARKstores.tld and TRADEMARK-stores.tld should be 
eligible to be added to the Trademark Clearinghouse.  In addition, if a 
particular trademark owner has the misfortune of being a common target for 
abusive registrations of variations on its mark or marks, it should be able 
obtain protection through the Trademark Clearinghouse for all of those second 
level domains in all the new gTLDs through a streamlined and cost-sensitive 
procedure.
III.       NCTA Supports the Limited Preventive Registration Mechanism Proposal
In addition to the proposals summarized above, ICANN has asked for comments on 
a Limited Preventive Registration Mechanism.  Under the LPR, unless another 
trademark owner with a mark registered in the Trademark Clearinghouse has 
registered the corresponding domain name during a new gTLD Sunrise period, 
trademark owners could block for a set period of time the registration of 
second-level domain names that match their marks, across all registries, 
without having to register the domain name themselves, upon payment of a 
reasonable fee, with appropriate safeguards for registrants with a legitimate 
right or interest in the domain name.  Significantly, however, this proposal 
perpetuates the approach that trademark owners must bear the burden and expense 
of policing and NCTA believes that it is fairer to shift some of these costs to 
other stakeholders.  That said, NCTA supports the proposal for a Limited 
Preventive Registration Mechanism.
Conclusion
NCTA and its members appreciate the opportunity to provide their comments to 
ICANN on the proposals discussed above.  We view ICANN as having taken a 
positive step towards providing trademark owners with reasonable options and 
are supportive of the aforementioned efforts that would make the menu of 
available Rights Protection Mechanisms more effective while balancing the 
interests of the various affected constituencies.  NCTA would also be 
supportive of further steps by ICANN toward enhancing Rights Protection 
Mechanisms to the benefit of the trademark owning community.
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 15, 2013
Counsel:
Mitchell H. Stabbe
Edwards Wildman Palmer LLP
1255-23rd Street, N.W.  Eighth Floor
Washington, D.C.  20037
(202) 478-7378 (p)
(866) 320-9766 (f)
www.edwardswildman.com
mstabbe@xxxxxxxxxxxxxxxxxx




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Attachment: NCTA Comments re Strawman Proposals.pdf
Description: NCTA Comments re Strawman Proposals.pdf