Comments to STI URS Recommendations

["Gaertner, Eva" <Eva.Gaertner@xxxxxxxxxxxx>]

W.W. Grainger, Inc. ("Grainger") appreciates the opportunity to submit these 
comments in connection with the recommendations made by the Special Issues 
Review Team regarding trademark protection in the new gTLDs.  Grainger would 
like to commend the members of the Special Trademarks Issues Review Team 
("STI") including ICANN staff, for the extraordinary time and effort they have 
put into developing the STI Report.


We agree that the Uniform Rapid Suspension System ("URS") should be mandatory.

Additional comments to specific sections of the STI URS Recommendations:

Section 3 - In keeping with the "rapid" intent of the URS, the initial 
examination of the Complaint should take place within one to two days of 
receipt by the URS Provider and should not take more than five days.

4.2       There needs to be some action or recourse that the URS Provider can 
take if a registry fails to "lock" a domain after receipt of notice from the 
URS Provider.  A URS Provider should not have to send multiple requests to a 
registry to get a name locked.

5.1       A fee should be charged for any response filed after being declared 
in default.  Default responses should be limited to no more than 30 days after 
default is declared.  After all, as with a UDRP proceeding, the Registrant 
still has the option of filing a legal action to reclaim the disputed name.

6.3       Since the URS is designed to address "clear cut instances of 
trademark abuse," no post default responses should be allowed unless, upon 
initial examination of such a response, there is strong and compelling evidence 
that the decision was in error.

Additionally, no default response should be allowed within 60 days of the 
domain name's expiration date, especially if the site is to be returned to 
pre-decision status during the review.  This could allow the Registrant to 
delay the expiration of the domain name.

De novo reviews by filing an answer during the life of the registration should 
not be allowed.  Again, the intent of the URS is for "clear cut" cases of 
infringement and abuse.  If the abuse is clear cut and obvious enough to 
warrant a decision in favor of the Complainant, there should be nothing 
compelling enough in a response filed after a default to warrant automatic 
reinstatement of the site without at least an initial examination of the 
response prior to such reinstatement.

Name servers should not immediately be returned to the state prior to "hold" 
status until an initial examination of a default Response is completed to 
prevent frivolous filings and delays in implementing decisions.  Allowing the 
return to initial status would be contrary to the "rapid" intent of the URS and 
provide a loop hole for cybersquatters to prolong the process.

We assume that Complainant would immediately be notified by the URS Provider of 
any response filed after a decision has been rendered.

10        The option for a successful complainant to pay to extend the 
registration period for one additional year needs to be clarified.  During the 
extended registration period, will the Whois display the information of the 
original Registrant or that of the complainant?  Will the successful 
complainant be able to make changes to the site and the registration 
information?

12        De novo appeals by filing an answer during the life of the 
registration should not be allowed unless, upon initial review, URS Provider 
finds strong and compelling evidence that the decision was in error.  Further, 
no appeals should be allowed within 60 days of the domain name's expiration 
date.  This could cause a delay in the expiration of the domain name.

The proposed URS process does not address registrant verification.  This has 
been an issue for UDRP proceedings involving select registrars.  If registrant 
verification is ultimately required, non-response by the registrar by the 
deadline imposed by the URS provider should not delay the rapid intent of the 
process.  If no verification is received by the URS provider by the stated 
deadline, the URS provider should rely on the registry's publically available 
Whois information for the domain name as of the date the Complaint was filed.

Although we appreciate the time and effort the STI put into their trademark 
protection recommendations, we feel that the recommendations, as they currently 
stand, do not resolve the overarching rights protection issues.  They do not 
reduce any costs to trademark owners in defending their marks against abusive 
registrations in fact the addition of the URS may result in additional costs to 
trademark owners.  Nor do the recommendations lessen the need for trademark 
owners to file defensive registrations.  Grainger hopes that the STI will 
seriously consider its comments and increase protection to trademark owners.


Eva Gaertner
Paralegal
100 Grainger Parkway
Lake Forest, IL 60045
(847) 535-1048
fax: (847) 535-9243
eva.gaertner@xxxxxxxxxxxx