Hearst Communications, Inc.'s comments regarding the Draft Applicant Guidebook Version 3 for launch of new gTLDs Project

["Nooger, Daniel A" <dnooger@xxxxxxxxxx>]

November 19, 2009

 

 

Dear Sirs:

 

            Hearst Communications, Inc. offers the following comments regarding 
the Draft Applicant Guidebook version 3 for launch of the new gTLDs project:

 

 

1.                  The elimination from the DAG 3rd draft of the previously 
proposed Globally Protected Marks List in favor of having a Trademark 
Clearinghouse, URS and rapid takedown systems is going to shift the burden and 
expense of protecting and policing trademark owner’s marks onto trademarks 
owners and increase that burden substantially.

 

2.                  Apparently each time an application is filed which appears 
to be a potential infringement the trademark owner will have to bring (and pay 
for filing) a separate new case.  

 

3.                  This will quite likely lead to a situation in which 
trademark owners will have use watch services similar to trademark watching 
service to monitor filings by all of the registrars.  Although the proposed 
Trademark Clearinghouse structure will offer a Watch Service it does not appear 
to have any enforcement mechanism to prevent potential infringing applicants 
from filing potentially infringing gTLD applications.  

 

4.                  In addition, there do not appear to  be safeguards in place 
to potentially prevent the same, or very similar claims, from having to be 
repeatedly litigated.  

             

5.                  In addition, the concerns raised in Hearst’s previous 
comments, which going by comments submitted by other companies, are shared by a 
number of companies, have not been fully or satisfactorily addressed, as 
follows:   

 

a)     Given the substantial number of issues, both in the IP/ Trademark rights 
areas, as well as in other areas, in which ICANN has noted that further study 
is needed, ICANN should strongly consider pushing back the launch date for the 
initial round of registrations of new gTLDs until these issues have been 
thoroughly addressed.   In the alternative, the initial roll-out for such new 
gTLDs should be limited to community-based and / or geographic gTLDs, and 
should not include so-called “open” gTLDs until the overarching issues have 
been thoroughly reviewed and the necessary protective structures put into 
place.  As the IRT Final Draft Report of May 29, 2009 itself noted: “if new 
gTLDs are launched, it could make sense for ICANN to ask a team qualified in 
trademark protection to take a fresh look at the impact of our recommendations 
after 18-24 months to determine whether they can be improved.”, and, quoting 
ICANN Chair Peter Dengate-Thrush, “