Public Comment on the Third Draft Applicant Guidebook for New gTLDs

On October 4, 2009, ICANN made the third draft Applicant Guidebook for new generic top-level domains (gTLDs) available for public comment. In accordance with ICANN policy and in the interest of brand holders, MarkMonitor and the undersigned companies submitted the following comment  to ICANN.

November 20, 2009

To:  ICANN (gtld-guide@icann.org)
Re:  Comments on the New GTLD Program and Process: Version 3 of the Draft Application Guidebook

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

MarkMonitor Inc. (“MarkMonitor”) appreciates the opportunity to submit these comments on behalf of the undersigned, in connection with Version 3 of the Draft Application Guidebook (“DAG3”). In a separate letter, MarkMonitor, on its own behalf, will submit detailed comments relating to the six (6) modules in the DAG.

In addition, the undersigned would once again like to commend ICANN staff for the significant amount of time and effort they have put into the latest revisions to the DAG3, as well as the considerable work that has gone into the condensing and analysis of public comments submitted in the last round. The redlined version and the accompanying detailed analysis are invaluable tools that allow the Internet community to better organize and understand the vast amount of information contained within the underlying documents¹ .

We are also aware that ICANN has indicated that the DAG3 would not contain the vast majority² of rights protection mechanisms (“RPMs”) that were developed and recommended by the Implementation Recommendation Team (“IRT”)³ . Although this position is of significant concern to us, we also recognize that the ICANN Board has requested that the GNSO review and evaluate (on an expedited basis) several of the recommendations⁴ contained in the IRT Report. With cautious optimism, the undersigned look forward to reviewing the recommendations of the GNSO with respect to these important RPMs that are described in the IRT Report.

Introduction
ICANN staff previously outlined four (4) overarching issues that were raised during the first comment period. ICANN staff indicated that these issues needed to be properly addressed prior to moving forward with the introduction of new gTLDs. These overarching concerns were issues related to: (i) trademark protection, (ii) malicious conduct, (iii) economic demand and analysis, and (iv) the impact on security and stability of Root Zone Scaling. As set forth below, we believe that significant concerns remain with respect to these four overarching concerns and that there is still additional work to be done before ICANN can proceed with the introduction of new gTLDs.

1. Trademark Protection:
   We appreciate that ICANN recognizes the importance of brand holder rights protection issues and has specifically acknowledged that it must protect brand holder’s rights and prevent abusive registrations. We are also encouraged that ICANN has shown a commitment toward providing this protection to brand holders by recommending that all proposed registry agreements for new gTLDs be modified to reflect a requirement that they offer a “Thick Whois” service. As set forth in the IRT Report, Whois information at the registry level under the Thick Whois model is essential to the cost effective protection of consumers and intellectual property.
   
   We are also pleased that ICANN has incorporated a second RPM in the DAG3 that was recommended by the IRT. This is the specification of a trademark post-delegation dispute procedure (“PDDRP”) that allows trademark holders to lodge complaints against new gTLD registries in certain cases. However, the PDDRP incorporated into the DAG3 deviates markedly from the PDDRP originally recommended by the IRT. Specifically, the PDDRP under the new ICANN version places the burden of policing and enforcement back on rights holders and requires that complaints be lodged and prosecuted not with ICANN, but with a relevant dispute resolution provider; thus allowing ICANN to relinquish any investigative or enforcement role. This falls short of the recommendation made by the IRT which required ICANN to investigate potential breaches of the Registry Agreement, and accept responsibility for deciding the appropriate remedy for an infringing registry⁵ . ICANN has already indicated that it will continue to pursue its contractual compliance activities and enforcement for all of its contracted parties⁶ . We therefore believe that ICANN should take a greater leadership role with respect to the investigation and enforcement of complaints in connection with the Trademark PDDRP.
   
   We continue to believe that RPMs are critical for protecting consumers from abuse and would serve a positive function by significantly reducing the need for defensive registrations. We are looking forward to reviewing any additional input from the GNSO reflecting original comments⁷ from MarkMonitor to the IRT report and hope that these will ultimately be incorporated into a future version of the DAG. We also ask that ICANN (i) reconsider its position not to allow a Reserved Names List that would include marks of rights holders as recommended by the IRT and (ii) consider eliminating the registry/registrar separation requirements in cases of single brand holder registries.
2. Malicious Conduct:
   As we indicated in our previous comments to DAG1 and DAG2, we firmly believe that malicious conduct and brand abuse will likely increase upon the introduction of hundreds or thousands of new gTLDs.
   
   As set forth in the RISG Statement on New gTLDs:
   

   
   “A TLD may become more of a target for criminals once it becomes accepted by and known to end-users. Criminals also tend to migrate from TLD to TLD (and registrar to registrar) over time. The criminals move on as the affected registries and registrars become aware of problems and implement mitigation procedures. This already happens in the 200+ TLDs already in existence, and among the hundreds of ICANN-accredited registrars. We assume this pattern will continue… New gTLDs have the potential to transform the organization of the DNS, and for this reason should be pursued in a cautious manner⁸ .”

   
   As set forth in our previous comments, domain name abuse problems are growing both in terms of number of incidents, and in the complexity and ingenuity of the attacks perpetrated. Consumers are the ultimate victims of these abuses and they suffer losses of their time, money and even health and safety. Although ICANN has identified a number of measures it will implement to mitigate malicious conduct with respect to the new gTLDs⁹ , it has not yet identified the types of malicious conduct that these measures are intended to affect.
   
   We believe that additional work is necessary to ensure that risk areas are identified and specific solutions are implemented to address malicious conduct. We encourage ICANN to pursue the course offorming a working group “combining members within the security industry and ICANN community to help develop and assess solutions and specific implementations of proposed mitigation measures¹⁰ .”
3. Economic Demand and Analysis:
   The introduction of new gTLDs could not come at a worse time for business owners. The international business community is facing a calamitous event in the form of a worldwide recession that is having a significant impact on the pocketbooks of business owners. Although there are signs of a slow and positive turnaround, companies are still being forced to cut budgets and continue layoffs. Stated simply, companies simply do not have the internal funds or human resources to cover the application costs and ongoing operations of a new TLD program or even in some cases to object to third party applications. Currently, there is no adequate economic analysis of what the true impact of new gTLDs will have not only on registries and registrars, but also on individuals and businesses. Given that billions of dollars of eCommerce are transacted over the Internet, ICANN should move forward with a more comprehensive study regarding these potential costs.
   
   We recognize that an economic study was commissioned by ICANN and posted on March 4, 2009 that studied the effect of the introduction of new gTLDs on competition and price. This study however did not evaluate the global demand for these gTLDs nor the economic impact on registrants for these new gTLDs, particularly in light of this global recession. In its previous comments, the undersigned requested that an additional study be commissioned to evaluate the actual demand by individuals and businesses for new gTLDs and recommended that ICANN take a phased approach to this introduction. Given the results of the Root Scaling Study as discussed in Section 4 herein, this phased approach seems to be prudent at this time. A request for further study is also supported by the comments made by the Government Advisory Committee (“GAC”) in its missive dated August 18, 2009 to Mr. Dengate-Thrush, Chairman of the Board of ICANN regarding the DAG2. In that letter the GAC stated:
   
   

   “The GAC notes that the economic reports commissioned by ICANN have failed to distinguish adequately between real demand and derived demand arising from widespread concern in the business community about the multiplication of the opportunity for cybersquatting, fraud and malicious conduct generally...However, the GAC believes that there is an urgent need for separate empirical research to be undertaken regarding the cost of defensive registrations and the impact on consumers of the availability of new gTLDs.”
   
   The undersigned believes that a study that evaluates actual demand versus derived demand would be more appropriate given that it might suggest that ICANN launch a controlled TLD program which is targeted first to IDNs or geographic based TLDs that are supported by significant community demand.

4. Impact on Security and Stability of Root Zone Scaling:
   The recent report submitted by the Root Scaling Team (“Scaling Report”), indicates that:
   
   

   ”Adding new TLDs, IDNs, and IPv6 addresses would also increase the size of the root zone; adding IPv6 addresses would in addition increase the size of the priming response. With aggressive re-planning (some of which is already underway), the system is capable of managing the risks associated with adding either (a) DNSSEC or (b) new TLDs, IDN’s, and IPv6 addresses over a period of 12-24 months—but not both. If a choice must be made, DNSSEC should come first¹¹ .”

   
   The Scaling Report seems to suggest that there are significant risks attendant to increasing the size of the root without first deploying DNSSEC. This is a recurring comment that has been made over the course of the last several comment periods by a number of commentators. It would therefore appear to be prudent for ICANN to slow the process of increasing the size of the root with the introduction of new gTLDs until it has deployed DNSSEC and introduced ccTLD IDNs and IPv6.

Conclusion
Although there is deep concern with respect to the fate of the RPMs recommended by the IRT, we do recognize that ICANN may incorporate certain RPM policy changes in the next version of the DAG as recommended by the GNSO. We are further pleased that ICANN has recommended the implementation of the Thick Whois model for all registries of new gTLDs. There are however, a number of issues that remain in connection with the four (4) overarching issues which, if left unresolved, would pose significant consumer health and safety risks. We therefore look to ICANN and the general community to work these issues toward a positive and effective resolution.

Respectfully submitted,

Irfan Salim
President and CEO
MarkMonitor Inc.

3M Robert MacDonald Senior Vice President, Marketing & Sales	AAA - American Automobile Association Carole Sustak Brand Management
Abertis Infraestructuras S.A. Beatriu Daura	AIM European Brands Association Philip Sheppard Public Affairs Manager
Akerman Senterfitt LLP Thomas R. Donnelly Consultant	BancFirst Matthew McCarty Network Security Manager
BBC Diane Hamer Trade Mark Lawyer	Bell Canada Paule Desautels Senior Counsel and Director-Trade-marks
Best Western International Inc. David Youssefi Senior Corporate Counsel	Bradford & Bingley Peter Taylor Information Security Manager
C.R. Bard Inc. Carol Stone VP Corporate Marketing	Canadian Broadcasting Corporation Carol Coristine Manager Digital Distribution
Carlson Companies Inc. Travis Bachman Associate General Counsel - IP	Carlson Wagonlit Travel Jerome Marinovic Director Digital Marketing
Carnival Corporation & Plc Ellen Levenson Trademark Administrator	Consumers Energy Stephen Lapedis Web Process Manager
Deckers Outdoor Corporation Stephanie Cucurullo VP Legal	Doctors Associates Inc. Jessica Wojiski Legal Assistant
Dolby Laboratories Lily Cheung Director Intellectual Property Ops	Dole Food Company Inc. Marcy Reed Intellectual Property Paralegal
EAI Inc. John Enyart President Principal Consultant	E. I. du Pont de Nemours and Company Piers Dickinson Global eMarketing Leader
Eastman Chemical Company Elizabeth Twomey Senior Counsel	Ecolab Inc. Edward Courtney Senior Trademark Attorney
Educational Testing Service Aurora Hill Intellectual Property Manager	Enterprise Holdings Renee Reuter Corporate Counsel
Europcar International Florence Maran-Breton Legal Manager Intellectual Property	Fajnorova Bachrata & Partners Maria Fajnorova
FedEx Corporation William BrownSenior Attorney	Gates Corporation Charles Schubert E-Marketing Manager
Gawker Media Scott Kidder	General Motors Patrick Seeberg Manager for Global Web Strategy
GN Netcom A/S Karsten Langhorn Vice President IPR	H&R Block Inc. Derek Gamble Corporate Counsel
Heinonen & Co Kristiina Lyback Trademark & Domain Name Administrator	Herbalife International Cameron Smith Sr. Dir. Regly. & Govt. Aff. & IP
HLLBshaw Rob White	HomeAway Inc. Lenny Tropiano Sr. Network Architect
HSBC Martin Sutton Manager Group Fraud Risk & Intelligence	InterContinental Hotels Group Kendra Merolla
InterContinental Hotels Group Michael Menis Vice President Global Interactive Marketing	Investor's Business Daily Inc. Danya Grund In-House Counsel Director Legal Affairs
Kellogg Company Paul Iagnocco Sr. Director Global Digital Marketing Operations	Kelly Services Inc. Sarah Sarafa Senior Global Counsel
Lacoste Alligator S.A. Dolores Zaragoza Paralegal	LifeScan - A Johnson & Johnson Co. Roy Albiani Global Director Brand Integrity
Live Nation Worldwide Inc. Ellie Schwimmer VP Legal Affairs	Liz Claiborne Inc. Gene Bolmarcich IP Counsel
Logitech Tamara Suden	Mexico.com Rami Schwartz CEO
Molson Coors Brewing Company Lori Ball Director Intellectual Property	Nordstrom Inc. Jennifer Martin Corporate Paralegal
PetMed Express D.B.A. 1800PetMeds Alex Irvin Online Programs Director	PopCap Games Inc. Nicole LeMaster IP Portfolio Manager
Rabobank Nederland Monique Blom SPC Specialist	Red Bull GmbH Jennifer Powers IP Counsel
Rosetta Stone Inc. Michael Wu General Counsel	Russell Investments Brent Smith Director Intellectual Property
Science Applications International Corporation Faye Hammersley Senior Counsel	Seiko Epson Corporation Vernon Fragnito Mgr/Trademark Enforcement
Sherwin-Williams Company Michael Sura Webmaster	Shimano Julian Lambert
Spansion Ron Fedore Mgr. Web Communications	SPIL GAMES Ivo Teel Systems Development Director
Sunkist Growers Inc. Karen Holme Manager, Patent & Trademark	Tea Forte Cindy Boehmere Commerce Director
Tennant Company Dan Platt	Terex Corporation  Anton Urban Executive Web Producer
The Black & Decker Corp Edwin Whitesel Director – Global Technologies	The Royal Bank of Scotland Group Plc Richard Curtin Head of Intellectual Property
The Weir Group PLC Jak Deschner IT Manager	Transamerica Corporation Mark Edwards Assistant General Counsel
Trilogy Partnership Camille Cadman Executive Director	U.S. Bank N.A. Daniel Sink Corporate Counsel
VEGAS.com Bryan Allison Vice President of Marketing	Viacom Inc. Keith Murphy Vice President, Government Relations and Regulatory Counsel
Visa Inc. Denise Yee Senior Trademark Counsel	W.W. Grainger Inc. Aimee Nolan Associate General Counsel
Watson Shaun Augade	Wells Fargo Lane Mortensen Vice President
Western Union Dianna Lyons Sr. Director Intellectual Property	Xilinx Inc. Cynthia Zamorski Legal Counsel