IRT Recommendations on RPMs

in the new gTLDs: A Summary

How the IRT hopes ICANN will protect the rights of others in an
expanded domain name system
New gTLD Implementation Consultation, New York
13 July 2009

Moderator: Caroline Chicoine, Of Counsel, Fredrikson & Byron, P.A.

Jeff Neuman, Vice President, Law & Policy, NeuStar, Inc.
Jon Nevett, Senior Vice President, Network Solutions LLC
Russell Pangborn, Associate General Counsel - Trademarks, Microsoft Corporation
Kristina Rosette, Special Counsel, Covington & Burling, LLP
Fabricio Vayra, – Senior Counsel - Intellectual Property, Time Warner

Implementation Recommendation Team

 Agenda
1. The experiences of rights owners and other entities
2. IRT Mission and Modus Operandi
3. IRT Recommendations
- IP Clearinghouse, Globally Protected Marks List, IP
Claims
- Uniform Rapid Suspension System
- Post-Delegation Dispute Resolution Mechanism
- Thick Whois
- Expansion of test for string comparison during initial
evaluation
4. Next steps

Implementation Recommendation Team 2

 The Experience of Rights Owners
• “Domain abuse is a business with low overheads, no
barriers to entry & few risks” (IRT Report)

• “The sale and broad expansion of new TLDs in the open

market, if not properly managed, will provide abundant
opportunities for cybersquatters to seize old ground in
new domains” Francis Gurry, WIPO: 16 March 2009

• Registrar failure, termination and compliance problems

Implementation Recommendation Team 3

 The Experience of Rights Owners

• Some ccTLD registries systemically abused

• Serial infringers falsify Whois details, hide behind Proxy

Registration services, prosper from PPC

• Consumers confused and cheated

• Cybersquatters playing the system

Implementation Recommendation Team 4

 Not just Rights Owners
• Consumers
– transparency and accountability, new gTLD space safer for all
• New gTLD Registry operators
– help operate effective, appropriate RPMs
– prevent "bad actors"
– improve consumer confidence, thus success
• Registrars
– standardization, help remove uncertainty and risk
• ICANN
– sensitive to calls from governments, business and consumer
groups

Implementation Recommendation Team 5

 The IRT
ICANN Board requests Intellectual Property
Constituency to form Implementation
Recommendation Team (IRT) March 2009.

“Comprised of an internationally diverse group of

persons with knowledge, expertise and experience
in the fields of trademark, consumer protection, or
competition law, and the interplay of trademarks
and the domain name system to develop and
propose solutions to the overarching issue of
trademark protection in connection with the
introduction of new gTLDs.”

Implementation Recommendation Team 6

 The IRT Team
Caroline Chicoine, Fredrikson & 12. Kiyoshi Tsuru, Tsuru Morales, MX
(withdrew for personal reasons)
Byron, US (Chair)
13. Fabricio Vayra, Time Warner, US
14. Mary Wong, Franklin Pierce, SG
1. Mette Andersen, Lego, DK
15. Nick Wood, Com Laude, UK
2. Jonathan Cohen, Shapiro Cohen,
CA
3. J Scott Evans, Yahoo!, US Registry representative:
Jeff Neuman, Neustar, US
4. Zahid Jamil, Jamil & Jamil, PK
5. Stacey King, Richemont, UK
Registrar Representative:
6. Hector Manoff, Vitale Manoff, AR Jon Nevett, Network Solutions, US
7. Russell Pangborn, Microsoft, US
8. Mark Partridge, Pattishall, US Plus 6 Ex Officio:
9. Kristina Rosette, Covington, US 4 from IPC incl. President Steve
10. Ellen Shankman, Shankman, IL Metalitz & INTA’s Claudio Di Gangi
11. David Taylor, Lovells, FR All supported by ICANN staff

Implementation Recommendation Team 7

 IRT Modus Operandi
The IRT tested every proposal against the following Checklist:
• What are the harms that are being addressed by the solution?
• Will the solution scale?
• Does it accommodate territorial variations in trademark rights?
• Does it confirm to extent of actual legal rights?
• Does solution work in light of IDNs?
• To what extent can solution be gamed and abused?
• Is it the least burdensome solution?
• Is it technologically feasible?
• How will solution affect consumers and competition?
• What are the costs and who pays for them?

Implementation Recommendation Team 8

The problems...

Implementation Recommendation Team 9

 Problem One

Cost and administrative burden to rights

owners of reacting to Sunrise & other RPMs

Example:
– 500 new registries could require owner to
have same trademark data validated 500
times
– Registrars could be required to develop 500
different processes

Implementation Recommendation Team 10

 Solution One
IP Clearing House
– IP Clearing House supporting new gTLD
registries
– Globally Protected Marks List (GPML)
– IP Claims
– Standardized Sunrise Eligibility Requirements

Implementation Recommendation Team 11

 IP Clearinghouse
• Database with two principal functions
– Central entity with which all new gTLD registries (and possibly
registrars) will interact in relation to GPML, IP Claims, and URS
– Information repository for specific information collection and data
validation services
• Principal features
– Data submitted by trademark owners (directly or through registry
or registrar) for a fee. All data validated initially and annually
– Trademark owners must grant non-exclusive, royalty-free,
sublicenseable license to data to ICANN, which will grant
sublicense to IP Clearinghouse; access to and use of data
restricted
– Must be outsourced entity (not currently in direct ICANN
contractual relationship) under renewable 5-year contract
awarded pursuant to open, competitive tender; equal access
required.

Implementation Recommendation Team 12

 IP Clearinghouse (cont’d)
• Principal features (cont’d)
– Must be available 24/7, 365 days per year
– Must be scalable (able to accommodate records of
identical marks owned by different parties, and able to
accommodate all types of registered marks, including
those that contain or consist of non-Latin characters)
– Must be able to deliver fast, accurate information in a
standard format using secure, robust, and state-of-
the-art technical platform.
– Costs to trademark owners should be reasonable,
and costs of including a trademark owner’s entire
portfolio should not be prohibitive

Implementation Recommendation Team 13

 Globally Protected Marks List
• Recommended in recognition of numerous trademark
owner comments on DAG that called for Reserved Names
List or White List for trademarks
– most frequently proposed solution
• Strict Eligibility Requirements
– Ownership by the trademark owner of [number] of trademark
registrations of national effect for the applied-for GPM that have
issued in at least [number] countries across all 5 ICANN regions
with minimum number of registrations in each region
– All trademark registrations must have issued by the date that
GPML applications are first accepted and must be based on
trademark registration applications filed by November 1, 2008.
– Second-level domain for GPM’s principal online presence must be
identical to GPM.

Implementation Recommendation Team 14

 GPML Protections – Top Level
• Applied-for strings analyzed for confusing similarity against GPMs, in
addition to existing TLDs, reserved names, and other applied-for strings.

• Applied-for strings that are identical matches or confusingly similar to GPM

should fail Initial Evaluation and not proceed unless and until applicant
participates in Initial Evaluation Reconsideration process and decision
rendered in its favor.

• All applicants that fail Initial Evaluation based on finding of string confusion
should have opportunity to request reconsideration.
– request for reconsideration is opportunity to clarify – not substitute –
information.

• To prevail on request for reconsideration, applicant must demonstrate either

that applied-for TLD string is not sufficiently similar as to be likely, as a
matter of probability and not mere possibility, to deceive or cause confusion
or that it otherwise has legitimate rights to use the applied-for TLD.
– will be bound by all representations and could subject applicant/Registry
Operator to post-delegation dispute resolution mechanism.

Implementation Recommendation Team 15

 GPML – Second Level

• Initial blocking of domain names that are an

identical match to a GPM

• Applicant can register name if participate in

dispute resolution process and demonstrate that
its use of the applied-for domain name would not
violate the trademark rights of the GPM owner
– recommend application of standard from Paragraph
4(c) of UDRP --> demonstrate has right or legitimate
interest

Implementation Recommendation Team 16

 IP Claims Service
• Applies to all registered marks that are not GPMs

• Registry provides notices to:

– Potential registrants of domain names that are identical matches
to marks contained in IP Clearinghouse
– Owners of marks contained in IP Clearinghouse that are
identical matches to applied-for domain names

• Registrant can opt to proceed with registration after

receiving notice if it makes certain representations and
warranties and acknowledgements

Implementation Recommendation Team 17

 Problem Two
Cybersquatting continues, consumers
misled, UDRP & Courts take time and
money
Examples:

[Link]
[Link] (competitor)
[Link] (pornography)
[Link] (Child pornography)
Implementation Recommendation Team 18
 Solution Two
Uniform Rapid Suspension System
(URS)

Implementation Recommendation Team 19

 Uniform Rapid Suspension
System (“URS”)
• Overall purpose/process – address the substantial number of current UDRP cases
that go unanswered – the “slam dunk” cases – with a faster and less expensive
system, and provide a remedy that does not require acquisition of the domain name

• Neutral URS provider(s) appointed by ICANN

• Pre-registration of rights via IP Clearinghouse

• Upon initiation of process, domain name frozen to prohibit transfers (note – website
still resolves)

• Examiners use a much higher burden of proof than the UDRP (“clear and convincing
evidence that there is no contestable issue”) – “slam dunk” cases only!

• Upon decision by Examiner in favor of complainant, domain name “frozen” at the

registry, the DNS record associated with the domain name is updated to re-direct
web traffic to a website with a standard URS process page; domain names are
NEVER transferred under a URS decision.

Implementation Recommendation Team 20

 Uniform Rapid Suspension
System (“URS”)
• Protections against misuses by complainant
- URS can only result in takedown NOT transfer (no risk of
reverse hijacking)
- Notification required by email AND certified letter (fax being
examined)
- All complaints are reviewed by an examiner – even if the
registrant does not answer
- Complainants must agree to indemnify third parties based on the
representations in the complaints
- Complainants subject to one-year ban from system for filing
three abusive complaints
- Process includes rights of appeal, which requires unlocking of
domain name pending disposition of appeal
Implementation Recommendation Team 21
 Problem Three
Preventing Bad Actor Registry Operators

What to do with Registry operator who acts

inconsistently with representations or has bad
faith intent to profit from systemic
cybersquatting.

– Example: .Apple, new gTLD for apple growers, begins

to allow registrations for [Link],
[Link] in breach of “charter”

Implementation Recommendation Team 22

 Solution Three
Post-Delegation Dispute Resolution
Mechanism at Top Level

Implementation Recommendation Team 23

 Post-Delegation Dispute
Resolution Mechanism
• Based on WIPO proposal to tackle breach of RPM, bad faith intent
to profit from registration of infringing domain names

• IRT sought to limit to the possibility of systemic abuses by “bad

actor” Registry Operators

• 3rd party submits a claim to ICANN

• If breach, various enforcement mechanisms include monetary

sanctions, suspension or termination of contract

• If unresolved, third party can initiate Post Delegation Dispute

• Investigation by neutral third party

Implementation Recommendation Team 24

 Post-Delegation Dispute
Resolution Mechanism (cont.)
• Applicable Disputes
– Manner of operation or use of a TLD is inconsistent with the
representations in TLD app and such operation or use of the
TLD is likely to cause confusion with the complainant’s mark; or

– Breach of rights protection mechanisms in its Agreement and

such breach is likely to cause confusion with complainant’s
mark; or

– Manner of operation or use of the TLD exhibits a bad faith intent

to profit from the systemic registration of domain name
registrations therein, which are identical or confusingly similar to
the complainant's mark, that: (a) take unfair advantage
reputation of the complainant's mark, or (b) impair reputation of
complainant's mark, or (c) create impermissible likelihood of
confusion with complainant's mark.
Implementation Recommendation Team 25
 Post-Delegation Dispute
Resolution Mechanism (cont.)
• Decisions
– Panel can find for complainant or registry operator and provide a
remedy
– Balance: Concept of a complaint deemed as being “without merit” (i.e.
an abuse of procedure to harass the registry operator)
– Complainant barred from further filings if found w/o merit on 3 occasions

• Enforcement Tools
– Panel recommends to ICANN:
• Monetary Sanctions and Suspension pending cure
• Group Liability: for serial misconduct by registries when affiliated
with other registries and registrars

• Fees (model proposed for high amounts)

– Balance: Penalty fee: Key here is meaningful amount to deter abusive
claims, refunded to complainant if successful

Implementation Recommendation Team 26

 Problem Four
No single source availability of data

Example:
.com

Some "bad actor" registrars do not keep

up to date records

Implementation Recommendation Team 27

 Solution Four
Thick WHOIS for all new gTLDs

Example
.biz

(with a suggestion that ICANN revitalises an

initiative for a centralised Whois)

Implementation Recommendation Team 28

 Problem Five
String comparison algorithm considers
visual appearance only

– Example: .tel could block .hotel

Implementation Recommendation Team 29

 Solution Five
Algorithm + aural and commercial
impression
Use algorithm to identify strings for which
similarity in sound and meaning should be
considered

– Makes process more fair with more terms

passing

Implementation Recommendation Team 30

 Other Concerns of IRT:
Development of universal standards and
practices for proxy domain name services

Applicants (incl. .brand registries) to be

allowed to apply for more than one character
string in an application –e.g. ASCII & Kanji,
Arabic or Cyrillic
Implementation Recommendation Team 31
 We know our work is neither perfect
nor complete but hope that our
recommendations are a step towards
technically feasible, fair and
affordable solutions applicable
globally to allow new gTLDs to
flourish.

Implementation Recommendation Team