Comments to URS & Trademark Clearinghouse Proposal

["Nolan, Aimee" <Aimee.Nolan@xxxxxxxxxxxx>]

W.W. Grainger, Inc. ("Grainger") appreciates the opportunity to submit these 
comments to the New gTLD Draft Applicant Guidebook.

Comments on ICANN Trademark Protection Recommendations

Trademark Clearinghouse (TC)
We agree with the overall concept of the TC but to mandatory use only for 
pre-launch sunrise periods and/or Trademark Claims Services limits the scope of 
the TC in a way that minimizes its effectiveness.  Brand holders will not have 
the protection needed to combat registrations of domain names incorporating 
their valuable trademarks and will still need to defensively register domains 
in new gTLDs.

Allowing only exact matches for sunrise/claims services and not making the TC 
mandatory for all post launch domain name registrations does not adequately 
curb cybersquatting, decrease enforcement costs to trademark owners, or limit 
the need for defensive registrations.

We believe that there should be mandatory post-launch use of the TC.  Requiring 
such use of the TC would lessen the need for trademark owners to continue to 
file defensive registrations.

As the TC recommendations currently stand, trademark owners would still have to 
pay registry charges for sunrise/claim service participation and, unless ICANN 
imposes a price cap on what a Registry can charge for sunrise/claim services, 
we do not foresee registries charging less than has been charged in previous 
gTLD launches, regardless of the mandatory use of the TC.

The current recommendations do not go far enough to alleviate the need and cost 
for trademark owners to file defensive registrations and UDRP complaints.  In 
addition to these costs, which a trademark owner would be required to pay with 
or without the implementation of the TC as currently proposed, trademark owners 
would also have to pay for inclusion in the TC.  This adds an additional cost 
to trademark owners which was contrary to the original intent of the TC.

If the cost of the TC is to be borne by those using the service, there should 
be no additional charges by registries to trademark owners for sunrise/claim 
services other than the annual domain name registration fee and the fees should 
be the same as those charged for general landrush registrations.

Uniform Rapid Suspension Procedure
We agree that the URS should be mandatory.

In the case of a default response, 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 extend the process.

Since the URS is designed to address "clear cut instances of trademark abuse," 
no default responses should be allowed unless, upon initial examination, there 
is strong and compelling evidence that the decision was in error.  As with a 
UDRP proceeding, the Registrant still has the option of filing suit in court to 
reclaim the disputed name.

A fee should be charged for any response filed after a decision has been 
entered.  No 30 day "grace" period should be allowed as currently proposed.

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, and certainly not months 
or even a year or more later, to warrant automatic reinstatement of the site 
without at least an initial examination of the response prior to such 
reinstatement.

The only remedy being suspension of the domain name would not lower costs to 
trademark owners because there is still the chance that the same squatter or 
another squatter could register the name upon expiration, thus requiring 
trademark owners to continually file actions involving the same domain name.  
If a Complainant opts for the 1 year extension of the suspended domain name, 
will the Whois information continue to reflect that of the Respondent after the 
initial expiration date?

Who will monitor suspended domain names to ensure that no changes are made to 
the Whois or the site during the suspension period?

Although we appreciate the time and effort that was put into the 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 and the fee to be included in the 
TC 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 ICANN will seriously consider its comments 
and increase protection to trademark owners.

Sincerely,

Aimee M. Nolan
Associate General Counsel
100 Grainger Pkwy, B4.T56
Lake Forest, IL  60045
(847)535-1047
(847)535-9243 (fax)