Brand Owners in ICANN-Land: the Reality of DNS Expansion

9/13/2017

Brand Owners in ICANN-land: the reality of DNS expansion

J. Scott Evans | Director, Trademarks, Marketing, Copyright and DNS Policy

Past History

. 1998 ICANN created with goal to bring competition to the domain name system.

. Before ICANN one company served as both the sole registrar and registry: Network Solutions, Inc.

. Seven original generic top level domain

. .com; .net; .org; .gov; . mil; .edu; .int and =/- 200 county code top level domains (e.g, .us; .uk; .de)

. 2000 ICANN holds first “proof of concept” round of expansion by adding 7 new top level domains

. .aero; .biz; .coop; .info; .museum; .name and .pro

. 2003/04 ICANN holds second “proof of concept” round of expansion by adding 6 new top level domains

. .asia; .cat; .jobs; .mobi; .tel and .travel

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Original Protections

. How did you protect your trademark prelaunch?

. Sunrise registrations

. Trademark Claim Notice . How did you protect your trademark post launch?

. Uniform Dispute Resolution Procedure (UDRP)

. In US, lawsuit under the Anti-Cybersquatting Consumer Protection Act

The Grand Plan

. June 2008 ICANN votes to expand the number of top level of domains . October 2008 ICANN publishes Applicant Guidebook with no trademark protections . March 2009 ICANN empanels Implementation Review Team (“IRT”) . June 2009 IRT report recommends tapestry of IP protections

. Trademark Clearinghouse

. Sunrise Registrations

. Trademark Claims Notice

. Uniform Rapid Suspension System

. Post Registration Dispute Resolution Process . December 2009 Special Trademark Issues review team issue report amending IRT recommendations.

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Trademark Clearinghouse

Sunrise Registration

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Trademark Claims Service

The Domains Protected Marks List (“DPML”)

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Uniform Rapid Suspension System (“URS”)

Post-Delegation Dispute Resolution Dispute Process (“PDDRP”)

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The Big Bang

The Big Bang . . .

. Where we are today:

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Next Steps

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8 An Open Letter from the IRT Introducing our Work (To be read before reading our report)

Why did 18 people experienced in trademark protection on the internet come together to form the Implementation Recommendation Team (IRT)? What was it that motivated us to volunteer and spend more than eight (8) working weeks wading through over 900 pages of comment, meeting with a dozen expert witnesses, preparing draft after draft? After all, in attempting to craft a tapestry of interlinked recommendations that we believe are fair to everyone, it might be that we end up pleasing no one?

Was it because we support the concept of the expansion of the gTLD space unreservedly? Hardly. The views of the IRT reflect the views of business and trademark interests in general. A sizeable number of our team would have preferred status quo with no new gTLDs until better Rights Protection Mechanisms are in place for the existing gTLDs. Others favored the measured introduction of Sponsored or Community- based gTLDs. Some support the current expansion, seeing the advantages for commerce and the consumer alike in open competition and innovation.

Our starting point when we first met in Washington DC in early April 2009 was a discussion on the state of the domain name system today. We believe it is worth sharing this context with readers of our report to remind you of the bigger picture before you focus on the detail of our recommendations.

At the mid-point of 2009, there are something like 190 million domain names registered. Business registrants range from multi-national corporations with e-commerce operations generating millions in revenues through SMEs to sole traders and home workers. Non- commercial registrants include centers of learning, not-for-profit organizations and communities of interest. Private registrants feature people of every age, race, creed and gender from Silver Surfers to pre-teens in every corner of the globe.

These diverse interests all depend on domain names to keep them connected. Domain names underpin the email systems and social networks that bring us closer together and are the foundation of internet commerce and 21st century innovation. Domains should be trusted signs that assist all of us to navigate the internet, whether we type them straight into a browser or sift a search engine listing for that domain name we recognize.

However, the day to day experience of most internet users is not as it should be. Lurking in the darkest corners of cyberspace are the unscrupulous, the dishonest and the dangerous who prey on the unwary. Malicious behaviors like spamming or phishing abound; lucky is the internet user whose in-box is not full with offers that are too good to be true.

For most of us, it is a reasonable assumption that the owner of a trademark in the real world that you rely on to provide authentic goods or services is also the owner of a website that you find under the corresponding domain name. The complexities of gTLD

Page 1 of 69 and ccTLD hierarchies are of no more interest to “average” internet users than the difference between a registrar and a registry. Naturally, we believe we should be able to trust a registry to protect our interests. It is only when something goes wrong that many people begin to consider the importance of cherishing their domain names and the concept of registrar or registry integrity.

Unfortunately, something often “goes wrong” with domain names. Last year the World Intellectual Property Organization reported on a 7% rise in the number of UDRP cases it processes. Since this scheme started in December 1999, WIPO has processed more than 15,000 UDRP or UDRP-based cases, covering around 27,000 separate domain names – and they are just one of four UDRP panel providers. A year earlier, ICANN terminated its contracts with accredited registrar RegisterFly, which had abandoned its customers and at just 12 days notice, managed to find a new home for the domains belonging to 6,000 of them. Before that in July and September 2006, the .eu registry, waged a battle in the courts with three Cypriot companies after it blocked 74,000 domain names it alleged were being hoarded for resale in contradiction of the .eu regulations. There is an inglorious history of domain name abuse that criss-crosses the world.

Domain name abuse, as it has frequently been observed, is a business with low overheads, no barriers to entry and few risks. Serial cybersquatters continue to prosper: when challenged through a UDRP or other DRP action, they often ignore the correspondence but continue to maintain websites with PPC adverts for as long as they can, hiding behind inaccurate Whois details or Proxy Registration services. As Francis Gurry, Director General of WIPO warned in a press release of 16 March, 2009, “The sale and broad expansion of new top level domains in the open market, if not properly managed, will provide abundant opportunities for cybersquatters to seize old ground in new domains.”

During our work on this report, the team was frequently reminded of the scale of abusive behavior in the domain name system by the brand owners in our midst. It emerged that each one of the five brand owners on the IRT expects to face at least one new domain name infringement somewhere in the world every day of the year.

Informed and motivated by this background, we strived in our work to provide what we have termed “a tapestry of globally-effective solutions” which we believe, if taken together and not significantly unpinned, will help reduce the incidence and severity of trademark abuse in the new gTLDs. Each solution we developed was considered from the point of view of consumers and registrants, registrars and new gTLD registries from the narrowest Community-based operator to the broadest Open applicant. We are keenly aware that you cannot please all of the people all of the time, but we hope that readers of our report will consider the benefits of our efforts, which we believe, will accrue to all branches of the ICANN family:

Benefits for trademark owners:

The IP Clearinghouse will reduce the cost and administrative burden of protecting trademarks in the new gTLDs for all trademark owners – with a very

Page 2 of 69 few “trademark supernovas” which suffer extraordinarily high levels of infringement finding relief through the Globally Protected Marks List. We believe that the free provision of accurate registrant data coupled with the rapid suspension of infringing names through the URS and a robust Post Delegation Dispute Resolution mechanism is what the ICANN family has wanted all along.

Benefits for new gTLD Registry Operators:

Our recommendations will enable ASCII and IDN registry operators to design and operate effective Pre-Launch RPMs that are appropriate for and tailored to their target markets without significant additional investment. We believe the IP Clearinghouse will reduce registry liability while the Post Delegation Dispute Resolution mechanism, which will impact only on “bad actors”, will improve consumer confidence in registries, as will the requirement to publish complete and accurate Whois information. Enhancing the use of the algorithm through an interpretation of “meaning” will also help applicants to navigate through the application process.

Benefits for registrars:

A level of standardization for RPM and the availability of accurate Whois data will help registrars to inter-act successfully and economically with registry operators. The IP Clearinghouse and the GPML will also remove uncertainty and risk from the Pre-Launch RPM process: over 50% of applications during Sunrise schemes run since .eu in 2005 have been inaccurate or ineligible, often because of registrar error.

Benefits for registrants and consumers:

Consumers value transparency and accountability. Our recommendations promote this as well as rapid and inexpensive methods of tackling cybersquatters and registries that become safe-havens for them. They should help make any new gTLD space a safer place to communicate, work, shop, play and learn.

Benefits for ICANN:

ICANN has consulted widely on the two versions of the Draft Applicant Guidebook it has published. It is sensitive to the calls from governments, business and consumer groups for solutions to be found to “over-arching” issues including trademark protection which, as CEO Paul Twomey stated on 6 March. 2009, “could be overwhelmed by the introduction of new gTLDs.” Our recommendations are designed to help ICANN on one of these “over-arching issues” by proposing fair, technically feasible and affordable solutions that are applicable globally and will allow new business models to flourish.

At the 2009 Mexico City Open Meeting, ICANN Chair Peter Dengate-Thrush said, “The Board has clearly heard and believes strongly that the concerns of trademark holders must be addressed before this process is opened for applications. The establishment of

Page 3 of 69 this team is an attempt to get proposed solutions from the people with skill in trademark protection and other issues.”

We know that our work is neither perfect nor complete – there are some significant issues that we could not address in the eight weeks available to us and others on which the strongly divergent opinions of team meant that compromise was impossible. If our recommendations are adopted, and 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. However, above all it is our joint wish that should the new gTLDs be introduced, our recommendations will provide a foundation of stability for all members of the ICANN family without stifling innovation.

Finally, we thank the members of the ICANN staff who provided support and guidance to us whenever we needed it and to those experts who submitted comments, attended our San Francisco consultations or acted as liaison to other parts of ICANN.

Signed,

Caroline Chicoine, Fredrikson & Byron, P.A., USA (Chair) Mette Andersen, LEGO Juris A/S, Denmark Jonathan Cohen, Shapiro Cohen, Canada J Scott Evans, Yahoo! Inc., USA Zahid Jamil, Jamil & Jamil, Pakistan Stacey King, Richemont, UK Hector Manoff, Vitale, Manoff & Feilbogen, Argentina Russell Pangborn, Microsoft Corp., USA Mark Partridge, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, USA Kristina Rosette, Covington & Burling LLP, USA Ellen Shankman, Ellen B. Shankman & Associates, Israel David Taylor, Lovells LLP, France Fabricio Vayra, Time Warner Inc., USA Mary Wong, Franklin Pierce Law Center, USA Nick Wood, Com Laude, UK Jeff Neuman, Neustar, Inc., USA Jon Nevett, Network Solutions LLC, USA

Page 4 of 69 INTRODUCTION: IMPLEMENTATION RECOMMENDATION TEAM (IRT)

SUMMARY

The IRT was formed by ICANN's Intellectual Property Constituency in accordance with the 6 March, 2009 ICANN Board resolution at the request of the community seeking solutions for potential risks to trademark holders in the implementation of new gTLDs. The team reflects experiential and geographic diversity and is comprised of 18 members and two alternates.

The team has participated in numerous teleconferences, two two-day face-to-face meetings, and one full-day face-to-face consultations with remote participation via teleconference with various interest groups resulting in draft recommendations for several proposed solutions that are described herein:

IP Clearinghouse, Globally Protected Marks List and associated Rights Protection Mechanisms (“RPMs”), and standardized pre-launch rights protection mechanisms;

Uniform Rapid Suspension System (“URS”);

Post-delegation dispute resolution mechanisms;

Whois requirements for new TLDs; and

Use of algorithm in string confusion review during initial evaluation.

A Preliminary Report was posted on 24 April, 2009 for a thirty (30) day comment period that closed on 24 May, 2009. See http://www.icann.org/en/public-comment/public- comment-200905.html#irtpdr. This Final Draft Report will be submitted to the ICANN Board and posted for public comment on 29 May, 2009 for a thirty (30) day comment period that closes on 29 June, 2009. Comments can be submitted at http://www.icann.org/en/public-comment/public-comment-200906.html#irt-report.

FORMATION

During public discussions of new gTLD implementation models, the Intellectual Property Constituency (IPC) and other rights holders and interested parties identified potential risks and costs to rights holders that should be avoided. The Board resolved in Mexico City that the IPC form an Implementation Recommendation Team (IRT) to develop proposed solutions to these issues.

Page 5 of 69 The IRT was established by members of the Intellectual Property Constituency and the membership list was posted1 (https://st.icann.org/data/workspaces/new-gtld- overarching-issues/attachments/trademark_protection:20090407232008-0- 9336/original/IRT-Directory.pdf) and Caroline G. Chicoine was installed as Chair. The team broadly reflects diversity of IP interests and geography. In addition, in order to provide the IRT with broadened practical perspectives and experience, one person was selected from the gTLD Registries constituency and one person was selected from the Registrar constituency. Each of them was allowed to appoint an “alternate” to attend teleconference meetings in which they were unable to attend. Specific ICANN staff members have been assigned to support the team: preparing meeting notes, posting materials, arranging meetings and providing logistical and travel support. A listing of these individuals along with their statements of interest are attached as Appendix A. The team has held numerous teleconferences, two two-day face-to-face meetings in Washington, DC and San Francisco, CA, respectively, and one full-day face-to-face consultations in San Francisco, CA, as well as dedicating significant individual time in between. There has been essentially full attendance at all conferences. Meeting notes from the meetings are publicly posted as they are prepared, for example: (https://st.icann.org/data/workspaces/new-gtld-overarching- issues/attachments/trademark_protection:20090410223141-0- 23728/original/MTGMINS-March25.pdf, and https://st.icann.org/data/workspaces/new- gtld-overarching-issues/attachments/trademark_protection:20090410223220-0- 23543/original/MTGMINS-April1-2.pdf).

BACKGROUND

The IRT was given a broad mandate with a tight time frame. Without any intention to limit the broad mandate of the IRT, but in recognition of the extreme limitations of time, the IRT has devoted its time to addressing what it considers to be the most pressing and key issues for trademark owners. The IRT wishes to emphasize that there are still a number of issues that fall within its mandate that should be given additional adequate opportunity to address as well, and that nothing in this report is intended to limit or preclude those issues.

In preparation for and during the IRT’s first face-to-face meeting in DC on 1-2 April, 2009, the IRT considered and reviewed several proposals that were set forth in the comments to DAG1. For convenience and efficiency, the IRT grouped comments into the following categories:

comments on the guidebook;

pre-launch mechanisms;

post-delegation at the top level;

1 These links are to wiki pages that require passwords in order to contribute. Passwords are publicly available by sending an email to [email protected] as indicated on https://st.icann.org/new-gtld-overarching- issues/index.cgi?new_gtld_overarching_issues.

Page 6 of 69 post-delegation; and

dispute policies.

To complete the first draft report by 24 April, 2009, it was not possible for the IRT to extensively consider and work on each proposal. In order to ensure that the IRT spent the limited time available to build upon and develop at least the most salient, and what seemed the more promising solutions, the IRT was constrained to prioritize the list of proposals and consequently identified five proposals which are hoped may make available solutions to address some of the immediate concerns of the stakeholders, and were thus identified as having a high priority. These included and were named:

IP Clearinghouse, Globally Protected Marks List and associated rights protection mechanisms (“RPMs”), and standardized pre-launch rights protection mechanisms;

Uniform Rapid Suspension System (“URS”);

Post-delegation dispute resolution mechanisms at the top level;

Whois requirements for new TLDs; and

Use of algorithm in string confusion review during initial evaluation.

In order to test the efficacy of each proposal and the solution to be developed by the IRT Sub-Groups based upon the proposals prioritized, the IRT also developed the following list of questions to be asked as a benchmarking checklist against which to measure all proposals:

what are the harms that are being addressed by the solution;

will it scale;

does it accommodate territorial variations in trademark rights;

does it conform to extent of actual legal rights;

does it work in light of IDNs;

can it be gamed and abused;

is it the least-burdensome solution;

is it technologically feasible;

how will it affect consumers and competition; and

what are the costs and who pays them.

Page 7 of 69 It should be emphasized that the IRT was tasked to propose recommendations for new gTLDs and that the proposals contained herein are not currently intended to apply to other than new gTLDs.

It should also be emphasized that the IRT recognized that there is no single solution to satisfy all of the concerns raised in the comments to the DAG1 and DAG2, and that each proposal presented herein is part of a tapestry of solutions which are interrelated and interdependent. The proposals have been designed comprehensively to balance in relation to one another and the removal of any proposal will likely require further strengthening of the others.

Conversely, even together, all the above-mentioned solutions by no means present a panacea to all the overarching issues of trademark protection in connection with the introduction of new gTLDs. The IRT focused its efforts in addressing only the most salient of proposals and undertook the work of fleshing out and further building upon those prioritized proposals in order to swiftly flesh out an initial proposed framework for each proposal developed. The IRT recognizes that further work on each of the proposals will be required especially upon receiving comments from the community. The IRT also recognizes that still further work will be required to adequately address several of the concerns raised and proposals made by the community to comprehensively address all the overarching issues of trademark protection in connection with the introduction of new gTLDs.

In addition, it is important to note that the membership of the IRT is purely on an individual basis and based upon personal contribution of individual expertise by each member to the group. The work of the IRT is not endorsed by any particular IRT member, their clients, companies or affiliated companies or organizations, and participation in the IRT of any individual member does not signify endorsement, consent or approval of the work product of the IRT by any business, company, affiliate, client, association, group or any other party with which the individual IRT member may be affiliated or may otherwise represent. Indeed, any business, company, affiliate, client, association, group or any other party with which the individual IRT members may be affiliated or may otherwise represent, as well as individual IRT members, may disagree with or have differences with any one or several of the solutions proposed. This proposal is presented as a discussion draft and is subject to comments by any interested party, including the businesses, companies, associations and clients of the members of the IRT.

The IRT established a “code of conduct” which prohibited members of the IRT from discussing any of the proposed issues in depth with anyone outside the IRT in order to allow individual IRT members to speak freely and candidly. Each of these proposals was then extensively discussed not only in the face-to-face meetings, but in numerous teleconferences and wide-ranging abundant correspondence.

Notwithstanding, the IRT was not able to fully consider every other proposal given the time constraints. However, the IRT did identify one proposal, in particular, that it believes should be further considered to determine whether it has any merit; namely the

Page 8 of 69 development of universal standards and practices for proxy domain name registration services.

Many of those who filed comments to the DAG have asked that ICANN consider the issue of proxy domain name registrations with regard to new gTLDs. The IRT recognizes that proxy domain name registration services raise complex concerns that require a great deal more analysis and consideration that were outside the limited time frame available. As a result, the IRT takes no position at this time on proxy domain name registrations. The IRT does recommend, however, that ICANN consider this issue and report to the community on whether it should or is able to make any recommendations with regard to the use, standards and practices of proxy registrations. The timetable of such recommendations may be independent of the timetable for the introduction of new gTLDs, but the IRT strongly recommends that ICANN's consideration of this issue commence as soon as possible.

The IRT was also able to briefly identify various additional proposals from the public comments to DAG1 and 2 that it believes warrant further consideration. These included:

Applicants should be permitted to apply for more than one string in an application, (e.g., .BRAND in ASCII, Korean, Kanji, Arabic, etc.) if those other strings are IDN/ASCII equivalents of the base application (and ICANN shall only charge the additional cost recovery fees associated with the string evaluation and not a separate $186,000 application fee for each string);

Community based and corporate branded/single registrant TLDs need to have the same authority that sponsored TLDs have currently in selecting which registrars access their registry;

Create special status in the application process for “.brand” type TLDs;

Shifting of costs and fees of any unsuccessful application to the applicant with reasonable penalties;

Phased implementation;

Registrant verification;

The holder of a second level domain name in existing gTLDs should have priority in respect of IDN equivalent;

Fast-track UDRP resolution and reduction/shifting of cost in the UDRP;

Auctions (portal/landing page for multiple TLDS with same string); and

Charter enforcement/charter eligibility DRP.

For the sake of clarity, the inclusion of these other proposals should in no way be interpreted as a decision by the IRT as to the merits thereof. In addition, the IRT’s

Page 9 of 69 recommendations in this Final Draft Report should in no way be interpreted as a recommendation for or against the introduction of new gTLDs. The proposals set forth herein are being recommended if ICANN proceeds with the rollout of new gTLDs as planned.

NEXT STEPS

Information regarding the IRT will continue to be posted at: https://st.icann.org/new-gtld- overarching-issues/index.cgi?trademark_protection, a wiki page where others can post comments regarding new gTLD implementation and trademark protection.

The IRT is submitting this Final Draft Report to the ICANN Board for consideration by the ICANN community at the Sydney meeting, along with any other proposals or recommendations from the community on the topic of trademark protection in new gTLDs. Specifically, it is the intention of the IRT to present this Final Draft Report to the ICANN Board at the Sydney Open Meeting on 21 June, 2009, as well as to provide briefings to the GNSO, interested Constituencies, and others during the Sydney meeting. Members of the IRT will also be participating in a telephone briefing with ALAC on 4 June, 2009, as well as two other consultations ICANN is hosting on 13 July, 2009 in New York and on 15 July, 2009 in London.

Page 10 of 69 IRT RECOMMENDATION FOR AN IP CLEARINGHOUSE, A GLOBALLY PROTECTED MARKS LIST, AND OTHER TOP AND SECOND-LEVEL RIGHTS PROTECTION MECHANISMS

1. INTRODUCTION & OVERVIEW

The IRT convened a work team to consider and recommend proposals that would, as far as possible, adequately and effectively protect the legal rights of trademark owners. In formulating each recommended proposal, the work team took into account the following framework and considerations:

The recommendation should satisfy the checklist criteria agreed on by the IRT;

The recommendation should protect the existing rights of trademark owners, but neither expand those rights nor create additional legal rights;

The recommendation should provide clear benefits to trademark owners and new gTLD registries, such that as many as possible will be incentivized to use the recommended solution;

The recommendation should accommodate user and consumer concerns, in particular the need to ensure consumer protection both in terms of preventing unnecessary confusion and of permitting (and not derogating from) the lawful use of marks;

The recommendation should be sufficiently flexible and scalable so as to ensure its sustainability as an effective rights protection mechanism (RPM); and

The recommendation should not result in unnecessary or undue costs, either to trademark owners, gTLD registries, registrars or to legitimate users and consumers.

The IRT believes that the recommendation for an IP Clearinghouse, as further described below, is the most appropriate platform for ensuring conformity to the above objectives as well as satisfying the IRT checklist. The IRT further believes that its recommendations for various operations at the top and second levels will also adequately allow for the appropriate legal protection for trademark owners without compromising the legitimate rights of consumers and other users. Finally, the IRT wishes to emphasize that its recommendations are not intended to replace or eliminate existing protections for legal rights, including recourse to national courts and under ICANN’s Uniform Dispute Resolution Policy (UDRP) or the proposed Uniform Rapid Suspension system (URS).

In considering and working out the details of the IP Clearinghouse, the IRT has been conscious of the following potential limitations and/or differences:

Page 11 of 69 The need for protection of existing legal rights may differ at the top level and the second level;

Certain categories of marks may warrant different levels of protection. For example, globally protected marks may be entitled to a higher level of protection than marks protected regionally or in only one country;

A proposed solution should work with Internationalized Domain Names (IDNs);

Technical limitations could determine to some extent the feasibility of particular solutions; and

The IRT recommendation should not usurp or replace the existence of legal institutions and systems that are intended to establish the scope of legal rights (e.g., existing laws and national courts). In this regard, the IRT also took into account the fact that the UDRP already provides the basis and practice for resolving cyber-squatting disputes arising from the bad faith registration and use of domain names as well as the IRT’s proposed URS, which should be mandatory and will provide additional protections for clear cut cases of cybersquatting.

In developing its recommendation, the IRT consulted with and examined the practices, experiences and recommendations of various registries, Internet service providers and dispute resolution services that it considered relevant to its task including, in particular, sunrise registrations, suspension practices and the costs associated with implementing a RPM.

In the course of its deliberations, the IRT considered and rejected the idea of a single, all-encompassing Trademark Reserved Names List as a universal protective mechanism. The primary reasons were that (1) such a list could not accommodate the various types (and corresponding scope of legal protection) of protected marks or the possibility of calibrating the recommended RPM to these differing types and scope of protection; (2) designing workable, specific, flexible and inclusive criteria for a single, all- encompassing Trademark Reserved Names List would be extremely difficult – if possible at all; and (3) such a one-size-fits-all solution would not be acceptable to the ICANN community.

The IRT believes that its recommendation provides a balanced, flexible, scalable, workable and sustainable solution that would adequately and effectively protect the legal rights of trademark owners upon the introduction of new generic top-level domains (gTLDs). It also believes that its recommendation satisfies most of the specific concerns identified in the IRT checklist.

2. THE IP CLEARINGHOUSE

OVERVIEW

Page 12 of 69 The IRT recommends the creation of an IP Clearinghouse to support new gTLD registries, in general, and in operating cost-effective RPMs that do not place a heavy financial or administrative burden on trademark owners, in particular. The IP Clearinghouse will function (1) as the central entity with which all new gTLD registries, and possibly registrars, interact in relation to the Globally Protected Marks List and the Pre-Launch IP Claims Service also recommended by the IRT; and (2) as an information repository performing specific information collection and data validation services as described herein. It can also perform similar functions for other types of RPMs besides those recommended by the IRT at this point. The main features of the IP Clearinghouse should include the following:

The IP Clearinghouse must be capable of holding data relating to the legal rights of trademark owners, including both registered rights and unregistered rights.2 Such data will be used to support registration in both ASCII and IDN new gTLD registries.

The data should be submitted by trademark owners directly, or through a registry or registrar, to the IP Clearinghouse together with a reasonable fee. The IP Clearinghouse will validate this data initially and every year thereafter to ensure accuracy.3 Validated data can then be pushed by the IP Clearinghouse to new gTLD registry operators, or pulled by these registries to support pre-launch RPMs such as Sunrise schemes as well as the Globally Protected Marks List and the Pre-Launch IP Claims Service.

Trademark owners must grant a non-exclusive, royalty-free, sublicensable license to their data to ICANN, which will in turn sublicense it to the IP Clearinghouse. Access to and use of such data must be restricted to trademark owners (who will be permitted to access and use only their own data), ICANN, new gTLD registries and registrars, for the sole purpose of performing the data validation functions for new gTLD registries and the implementation of RPMs, e.g., in relation to the Globally Protected Marks List, the Pre-Launch IP Claims Service and the URS. Ownership of any and all data submitted to or generated by the IP Clearinghouse must remain exclusively with the entity providing such data.

2 Most pre-launch RPMs have focused on registered trademark rights of national or multi-national effect. Whilst it is expected that the IP Clearinghouse will predominantly feature data on such rights, some registry operators may opt to include as eligible for their pre-launch RPM other types of rights, such as unregistered trademarks, company names, trading names, designations of origin, geographical names, family and personal names, etc. Therefore, the IRT recommends that the IP Clearinghouse should be structured so that it can accommodate a panoply of such rights even if they are applicable to only a small number of registries.

3 The initial submission of data and the annual validation must include an affidavit or declaration, signed by the trademark owner, attesting to the accuracy and completeness of all information submitted by it. The trademark owner is responsible for timely updating and correcting data in between annual validations as circumstances warrant (e.g., acquisition of new portfolio, expiration of registration, successful third-party challenge to registration). A trademark owner's failure to provide an accurate and complete annual validation affidavit or declaration or its failure to provide a timely, accurate, and complete interim update could result in a sanction or penalty. The IRT defers the identification of such a sanction or penalty to the IP Clearinghouse operator.

Page 13 of 69 The IP Clearinghouse must be operated by an outsourced entity under a renewable multi-year contract with ICANN of at least five (5) years. The contract must be awarded on the basis of an open, competitive tender.4

The IP Clearinghouse must be operated by a neutral service provider that is not currently in a direct contractual relationship with ICANN to provide domain name registration services including that of a gTLD registry, registrar or other technical provider of domain name services to a gTLD registry or registrar. The IP Clearinghouse must commit to a strict code of conduct that, among other things, requires it to provide equitable access to its services by all entities seeking to use the IP Clearinghouse.

The IP Clearinghouse must be available 24/7, 365 days of the year, including the availability of commercially reasonable customer support services.

The cost to a trademark owner of placing and maintaining a record in the IP Clearinghouse should be reasonable. The annual cost of maintaining a portfolio of records in the IP Clearinghouse should not be prohibitive for a trademark owner with many names/brands, taking into account the complexity of the platform, the costs of validating trademark records from every country in the world and the potential liabilities of the IP Clearinghouse operator.5

The IP Clearinghouse must be technically state-of-the-art and its daily operation must enhance the rapid provisioning of domain registrations. For example, it must support EPP as well as offer a web interface, and it must not slow the registration process unreasonably.

The IP Clearinghouse must be highly scalable. For example, it should be able to accommodate identical trademarks registered under different classes of goods or services or in different trademark registration offices, recognizing the territorial nature of trademark law and international classification systems.

The IP Clearinghouse must be able to accommodate all types of registered trademarks, including word marks and device (logo) marks that contain a word element from every trademark registration office in the world. This global spread is important so that the IP Clearinghouse can support IDN registries.

4 The IRT considered public comments questioning whether IP Clearinghouse services should be provided by a single entity. The IRT believes that, for reasons of efficiency, consistency of validation and cost, a single provider is the most appropriate recommendation, provided that the process used to solicit tenders for and awarding the contract is open and transparent.

5 It should be noted that the fees paid by the rights owners for the validation of applications in recent gTLD Pre- Launch RPMS consisted of three parts: (1) the fees of the registry operator; (2) the fees of the validation agents; and (3) the fees of the registrars submitting the application. The first two categories of fees were often bundled together by the registry operator to create the wholesale price for registrars. The IRT has been advised that registry operators have not sought any control over the final retail price charged by registrars as this could be seen as anti-competitive.

Page 14 of 69 The IP Clearinghouse must be able to deliver fast, accurate information in a standard format using a state-of-art technical platform that is secure and robust. Most communication will be electronic. Forerunners of the IP Clearinghouse have been used by validation agents in TLD launches since 2005, demonstrating both the feasibility of the concept and its flexibility at coping with a variety of RPM models, from .eu’s First Past the Post Sunrise to .asia’s auction model. It is an idea that was supported by many on the ICANN 2007 Protecting the Rights of Others Working Group.

SERVICES TO BE PROVIDED BY THE IP CLEARINGHOUSE

The IRT intends that each of the services described below shall be provided by the IP Clearinghouse at no charge to the gTLD registries or registrars that are required to interact with the IP Clearinghouse to implement the recommended RPMs. If a new gTLD registry decides to implement an RPM above and beyond those recommended herein, any incremental services necessitated thereby shall be provided on no greater than a cost plus basis to that new gTLD registry.

The services to be provided by the IP Clearinghouse are:

The validation of trademark rights on an annual basis which can be pushed to new gTLD registry operators or pulled by them to support pre-launch RPMs such as Sunrise schemes;

A Globally Protected Marks List of trademarks satisfying the strict requirements recommended herein that has the effect of limiting third-party applications for (a) top-level domains that match or are confusingly similar to trademarks on the list; and (b) second-level domains that match trademarks on the list; and

A Pre-Launch IP Claims Service that will notify new gTLD applicants and trademark owners that a current validated right exists for the identical term being applied for at the second level.6

The generation of data for and participation in URS pre-registration, and validation of URS complaint claims regarding trademark rights.7

The IRT believes that an IP Watch Notice service would be a highly useful tool for trademark owners. Because similar services already exist in the market, the IRT does not believe that the IP Clearinghouse should be required to or exclusively provide such

6 The IRT considered whether the IP Claims Service should also extend to the post-launch period. The IRT concluded that it was unnecessary to extend the IP Claims Service post-launch because of the protections afforded by the URS that the IRT also recommends herein.

7 The IRT notes that it is possible for the IP Clearinghouse to act also as the repository for and source for retrieval of URS decisions. While the IRT supports the requirement that URS decisions be stored in a centralized location, it does not believe it is necessary to require that the location be the IP Clearinghouse as long as there is a viable, open option to provide access to and searching of the decision.

Page 15 of 69 a service. Nonetheless, the IP Clearinghouse should not be prohibited or prevented from offering such a service, provided that it should not use the data submitted to it by trademark owners in relation to either the Globally Protected Marks List or the Pre- Launch IP Claims Service for such purpose.

The IP Clearinghouse operator must, upon request by new gTLD registry operators, provide reasonable opportunity for those new gTLD registry operators to consult with it at no charge as those registry operators draft policies and create processes to implement RPMs. This is essential to ensure that new registry operators can interact effectively with the IP Clearinghouse.

3. THE GLOBALLY PROTECTED MARKS LIST (GPML)

The IRT recommends the creation of a Globally Protected Marks List (GPML) to provide protection to Globally Protected Marks (GPMs) at the top and second levels. We recommend the GPML in recognition of the numerous comments by and on behalf of trademark owners that called for the establishment of a Reserved Names List or White List for trademarks.

Because the IRT intends the GPML to include only marks that are globally protected, the standards for inclusion on the GPML should be high and strictly enforced.8 As a result, the level of protection afforded to GPML marks will be greater than for marks not qualified for inclusion on the GPML.

The IRT wishes to emphasize that the GPML is not intended to be a reserved list by which trademark owners will be able to simply block pending domain name applications or reserve domain names in advance. The GPML is also not a consolidated list of what may constitute “well known” or “famous” marks under national trademark laws, and should not be interpreted as such. Further, the IRT does not intend the GPML to possess any precedential value in any dispute or resolution proceeding in relation thereof, and the IRT believes that it should not to be used or relied on for this purpose.

GPML REQUIREMENTS

Trademark owners that wish to have a mark included on the GPML must provide to the IP Clearinghouse documented evidence that is capable of being verified of the criteria listed below. After the initial gTLD application round, these criteria should be evaluated and, if appropriate, revised. The recommended criteria are as follows:

8 The IRT received comments characterizing the GPML standards recommended in this report as favoring Western economies. The IRT has no intention of favoring any economy, country, or region; its intention was to develop objective criteria to identify globally protected trademarks.

Page 16 of 69 Ownership by the trademark owner of [number] trademark registrations of national effect9 for the applied-for GPM10 that have issued in at least [number] countries11 across all 5 ICANN Regions with at least:

• [number] registrations in the North American region • [number] registrations in the European region • [number] registrations in the African region • [number] registrations in the Asian/Australian/Pacific region • [number] registrations in the Latin American/Caribbean region

(NOTE: As a result of the public comments received in response to its initial draft report, the IRT has requested ICANN staff to collect relevant trademark registration data. The IRT has refrained from recommending particular numbers and thresholds at this time, pending the collection and review of the relevant data. The IRT emphasizes, however, that the final number and thresholds to be adopted for the GPML, including the required number of registrations and countries, must be sufficiently high such that the marks that qualify for the GPML are actually recognized as globally protected.)

All trademark registrations must have issued on or before the date that GPML applications are first accepted and must be based on trademark registration applications filed on or before 1 November, 2008.12

The second level domain name for the GPM’s principal online presence must be identical to the GPM.

Consideration of Public Comments Relating to GPML Requirements. The IRT considered those public comments that called for a requirement that all registrations relied upon by the trademark owner be for only those marks in current use. The IRT decided against such a requirement for a number of reasons including the fact that use is not a requirement of registration in a great majority of countries and the practical difficulties of implementing such a requirement. The IRT also considered those comments calling for a Regionally Protected Marks List and, in light of the time constraints within which it has worked, is not making any recommendations at this time about such a list.

9 U.S. registrations must have issued on the Principal Register. In other countries with two-tier registers, eligible registrations must have issued on the superior register.

10 Although the trademark owner may rely on registrations that contain a design element or depict the applied-for GPM in stylized form, the only textual elements in the supporting registrations must be identical to the applied-for GPM.

11 The IRT needed to decide how to account for registrations of supranational effect. The IRT decided to treat them as separate registrations for each covered country. For example, a Community Trade Mark registration would count as 27 registrations in 27 countries. The IRT based this decision on its belief that the GPML criteria will require both a certain minimum number of registrations as well as registrations in a certain minimum number of countries across several geographic regions. If these criteria are substantially reduced, the IRT believes that it may then be appropriate to count supranational registrations as one registration in each country.

12 This date may require adjustment after the first round of gTLD applications.

Page 17 of 69 OTHER OPERATIONAL CONSIDERATIONS

The GPML applicant should not be required to apply for a gTLD corresponding to its applied-for GPM as a condition of inclusion on the GPML. The IRT has considered this issue and decided against it. Because of the multiple factors associated with applying for a new gTLD (not the least of which is the $185,000 application filing fee), the IRT does not believe that such a requirement would be fair.

The IP Clearinghouse must validate all data supporting the GPML application. After the IP Clearinghouse completes the validation and compiles the initial GPML, ICANN must publish the GPML before the request for proposal issues and early enough beforehand to allow for potential applicants to take the GPML into consideration should they choose to do so.13

The continued qualification of all marks on the GPML must be validated annually by the IP Clearinghouse operator and confirmed by the trademark owner. The initial submission of documented evidence and the annual validation must include an affidavit or declaration, signed by the applicant, attesting to the accuracy and completeness of all information submitted by the trademark owner. Where the submission relies on registrations that are owned in particular jurisdictions by a licensee or related company, the submission must include a declaration by the GPML applicant listing the owners of record for those registrations and their legal relationship to the GPML applicant.

After the initial application process has concluded, new applications for marks to be included in the GPML will be accepted before each new gTLD application round or on a rolling basis if ICANN begins to accept new gTLD applications on a rolling basis.

4. TOP LEVEL RIGHTS PROTECTION MECHANISMS

THE GPML AND IDENTICAL MATCHES

The IRT recommends the following top level protections for GPMs on the GPML.14 The IRT recommends that Section 2.1.1. of the current version of the DAG be amended so that applied-for gTLD strings are analyzed for confusing similarity against GPMs, in addition to existing TLDs, reserved names, other applied-for gTLD strings, and requested ccTLD strings.

13 A number of comments called for a challenge process. The IRT decided against a challenge process given the stringent eligibility criteria to get onto the GPML and the opportunity to request reconsideration. If it is later decided to make the GPML criteria less stringent, the IRT believes it would be necessary to revisit the idea of a challenge process.

14 The IRT notes that Section 2.1.1.1 of the current version of the Draft Applicant Guidebook (DAG) applies a confusing similarity standard for evaluating competing strings. That evaluation is, however, limited to visual similarity and relies in large part on algorithmic scoring. The current version of the DAG contains no provision for reconsideration or appeal where an application has failed the Initial Examination on the ground of string confusion. The IRT believes that its recommendations for Initial Evaluation and reconsideration of applied-for gTLD strings in relation to GPMs is a fairer and more balanced test; for example, including an evaluation of aural and commercial impression may permit the registration of a gTLD that would otherwise be denied under a simple or automated visual similarity test.

Page 18 of 69 If an applied-for gTLD constitutes an “identical match” to a GPM on the GPML, the gTLD application will not be approved until the Initial Evaluation reconsideration process described herein is completed and a decision rendered in favor of the gTLD applicant. An identical match means the domain name consists of the complete and identical textual elements of the GPM. In this regard: (a) spaces contained within the GPM in question that are replaced by hyphens (and vice versa), (b) spaces, hyphens, punctuation or special characters15 contained within the GPM in question that are spelt out with appropriate words describing it, and (c) punctuation or special characters contained within the GPM in question that are omitted or replaced by spaces or hyphens will be considered identical matches.

Consistent with its general recommendation regarding use of the algorithm,16 the IRT recommends that the confusing similarity analysis of applied-for gTLD strings against GPMs include the aural and commercial impression (meaning) of the applied-for string in addition to the visual similarity. Accordingly, if, as between the applied-for gTLD and the GPM, sufficient similarity exists in terms of visual, aural and commercial impression (i.e., meaning) so as to be likely, as a matter of probability and not mere possibility, to deceive or cause confusion, the gTLD application will not be approved until the Initial Evaluation reconsideration process described herein is completed and a decision rendered in favor of the gTLD applicant.

An applicant whose application fails the Initial Evaluation can request reconsideration of the finding and will bear the costs of doing so. The IRT believes that all applicants that fail Initial Evaluation based on a finding of sufficient similarity should have the opportunity to request reconsideration, under the procedure outlined below.

RECONSIDERATION OF INITIAL EVALUATION

The IRT recommends that requests for reconsideration be heard by specialist dispute resolution providers.17 If an applicant wishes to request reconsideration, it must submit to the provider (a) within five (5) days of the date that ICANN notifies the applicant that the applied-for gTLD has failed the Initial Evaluation, a notice of intent to request reconsideration; and (b) within fifteen (15) days of the date that ICANN notifies the applicant that the applied-for gTLD has failed the Initial Evaluation, documentation containing arguments in support of the request for reconsideration (e.g., a brief). As with applicants that request Extended Evaluation under 2.1.2.1 of the Draft Applicant Guidebook (DAG), the request for reconsideration is an opportunity for the applicant to clarify information in its application; the applicant may not use the request for reconsideration as an opportunity to substitute portions of new information for the information submitted in their original application. All information submitted by the

15 Including but not limited to ~ @ # ! § % ^ © and &.

16 See pg. 46, infra.

17 The IRT makes no recommendation as to whether the dispute resolution providers implicated by the request for reconsideration and with respect to the initial block of identical matches to GPMs at the second level should or must be different from existing UDRP providers and other dispute resolution providers called for by other recommendations of the IRT.

Page 19 of 69 applicant in connection with its request for reconsideration will become part of the application, to which the applicant will be bound, as consistent with the DAG.

In order to prevail on its request for reconsideration, the applicant must demonstrate either that the applied-for TLD is not sufficiently similar (visually, aurally, and in commercial impression) 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.18

5. SECOND LEVEL RIGHTS PROTECTION MECHANISMS

GENERAL RECOMMENDATIONS

As a practical matter, trademark owners face a much larger threat at the second level than at the first level, and thus the recommendations regarding the second level recognize and articulate these concerns separately. The IRT recommends a two- pronged approach at the second level, which will provide one set of protections for the GPMs and a second set of protections for all other marks that are the subject of trademark registrations of national effect. The IRT recommends the following second level RPMs: for GPMs, initial blocking in the event of an identical match; and for non- GPMs, notification pursuant to the Pre-Launch IP Claims Service.

The IRT recognizes that each new gTLD registry will have unique characteristics such that no universal second-level pre-launch RPM can be imposed. That said, the IRT believes that there are certain minimum protections that should be employed by new gTLD registries to protect the IP rights of trademark owners. Each new gTLD registry should be free to select its own second-level RPM provided that it can demonstrate that its selected second-level RPM meets or exceeds the minimum protections described herein. For example, if a trademark owner applied for a .brand TLD, operated it as a closed TLD and restricted second-level registrations to its employees and subsidiaries, that .brand TLD would not need to provide an IP Claim or Sunrise process.

The IRT recommends that all new gTLD applicants be required, at point of application, to describe the pre-launch and post-launch RPMs they intend to implement. Specifically, new gTLD applicants should explain:

The type of pre-launch RPM they will offer;

18 A gTLD applicant could demonstrate that it has a legitimate right to use the applied-for gTLD by proving that it has common law rights in the word of which the applied-for gTLD consists. Similarly, the IRT envisages a possible situation in which the GPM may be a generic word for goods and/or services other than those the GPM identifies. In such a case, an applicant for a gTLD that is an identical match to a GPM could prevail on its request for reconsideration if it has represented in its application that it will only use the gTLD in the generic sense of the word (e.g., solely in connection with the goods or services for which the word is generic). Such representations by an applicant must, in the view of the IRT, become incorporated into the applicable Registry Agreement for that applicant for that gTLD. If the manner of operation or use of the TLD by the Registry Operator is inconsistent with the representations made and relied upon to prevail in a request for reconsideration, the Registry Operator would be subject to the post-delegation dispute mechanism recommended by the IRT provided the other requirements of that mechanism are met.

Page 20 of 69 If the applicant will not offer one of the pre-launch RPMs identified herein, identify what pre-launch RPM it will offer and describe how its selected pre-launch RPM meets or exceeds the requirements herein;

Policies (if any) covering character string requirements, charter enforcement, eligibility cut-off dates, and usage requirements; and

The cost to trademark owners of participation in the pre- and post-Launch RPMs.

INITIAL BLOCKING FOR GPMs

With respect to GPMs, the IRT recommends that new gTLD registries implement a mechanism which initially blocks the registration of second-level domain names that are an identical match19 to the GPM. An identical match means the domain name consists of the complete and identical textual elements of the GPM. In this regard: (a) spaces contained within the GPM in question that are replaced by hyphens (and vice versa), (b) spaces, hyphens, punctuation or special characters20 contained within the GPM in question that are spelt out with appropriate words describing it, and (c) punctuation or special characters contained within the GPM in question that are omitted or replaced by spaces or hyphens will be considered identical matches.

There should, however, be a process by which a “blocked” domain name registration applicant should be permitted to ultimately register the initially-blocked name if it can demonstrate to a dispute resolution provider that its registration would be consistent with generally accepted trademark laws; namely, that its use of the domain name would not infringe the legal rights of the GPM owner. To overcome the block, the applicant must show that it has a right or legitimate interest in the initially blocked name. The IRT believes that the criteria in Paragraph 4(c) of the UDRP should be used.

THE PRE-LAUNCH IP CLAIMS SERVICE FOR NON-GPMs

In addition, the IRT believes that each registry should describe in its application one or more mechanisms it will implement that will protect trademarks that do not qualify as a GPM. Unless a registry will offer a different RPM in the Pre-Launch phase (e.g., a Sunrise Registration Process), the IRT recommends that the registry provide the Pre-

19 The IRT discussed extensively those comments that stated that limiting the scope of second-level protection for GPMs to identical matches (e.g., those that consist solely of the GPM) did not afford as much protection from abusive registrations as would a broader match (e.g., those that consist of typographical errors of the GPM, addition or deletion of “s” or “es,” or contain the GPM plus a word commonly associated with the mark). The IRT did consider the possibility of second-level blocks for the GPMs in conjunction with words commonly associated with the GPM subject to proof that such combinations had been the subject of abusive registrations.

However, the IRT is not recommending at this time a broader “match” or an expanded definition of the GPM. Although the challenges associated with broadening the “match” or expanding the GPM are not insignificant, the IRT believes that the combination of the recommended second-level protection for the GPMs and the recommended URS should provide a commensurate scope of protection. The IRT recommends that an analysis be done after the first round of new gTLDs are launched to determine if this expectation has come to fruition and, if not, to revisit the issue.

20 Including but not limited to ~ @ # ! § % ^ © and &.

Page 21 of 69 Launch IP Claims Service (as described herein). The Pre-Launch IP Claims Service will be provided only to those trademarks that do not qualify as GPMs.21 Under the Pre- Launch IP Claims Service, each new gTLD registry shall provide notices to both: (a) potential registrants of domain names that identically match trademarks contained within the IP Clearinghouse; and (b) owners of trademarks contained within the IP Clearinghouse of the registration of domain names that identically match its trademark(s).

An identical match means the domain name consists of the complete and identical textual elements of the trademark. In this regard: (a) spaces contained within a trademark that are replaced by hyphens (and vice versa), (b) spaces, hyphens, punctuation or special characters22 contained within a trademark that are spelt out with appropriate words describing it, and (c) punctuation or special characters contained within a trademark that are omitted or replaced by spaces or hyphens will be considered identical matches.

Except for GPMs, registrants shall not be prevented from registering domain names matching marks contained within the IP Clearinghouse; provided, however, that each registrant receiving a notice pursuant to the IP Claims Service: (i) affirmatively opts into the registration of the domain name after receiving notice; (ii) represents and warrants that it has a right or legitimate interest in that domain name; (iii) represents and warrants that it will not use the domain name in bad faith as described in the UDRP; (iv) acknowledges that the registration or use of the domain name in bad faith may result in suspension under the URS, a UDRP proceeding, and/or judicial action by the appropriate trademark owner; and (v) represents and warrants that the registrant contact information provided in support of the domain name registration is valid and accurate, and acknowledges that provision of false information may result in cancellation of the registration.

6. STANDARD SUNRISE REGISTRATION PROCESS

If, in relation to non-GPM marks and during the pre-launch phase, a new gTLD registry elects to provide a Sunrise Registration Process in lieu of the Pre-Launch IP Claims Service, the IRT believes that such a registry should utilize a Sunrise Registration Process that applies standard Sunrise Eligibility Requirements (SERs) and incorporates a Sunrise Dispute Resolution Policy (SDRP). In addition, the IRT believes that the registry should utilize the IP Clearinghouse to verify the SERs. Adherence to these eligibility requirements does not preclude the registry from adopting more stringent criteria; the SERs are a floor, not a ceiling.

The SERs are:

Ownership of a registration of national effect that issued on or before [the date of the Registry Agreement] and was applied for on or before [the date that ICANN

21 Because of the “initial block” provided for GPMs, no additional IP Claim Service is necessary for GPMs.

22 Including but not limited to ~ @ # ! § % ^ © and &.

Page 22 of 69 publishes the list of applications received in the round] for a mark that identically matches the applied-for domain name. An identical match means the domain name consists of the complete and identical name protected by the trademark. In this regard: (a) spaces contained within a trademark that are replaced by hyphens (and vice versa), (b) spaces, hyphens, punctuation or special characters23 contained within a trademark that are spelt out with appropriate words describing it, and (c) punctuation or special characters contained within a trademark that are omitted or replaced by spaces or hyphens will be considered identical matches.

The registry may impose any further requirements relating to the International Class of goods and/or services covered by the relevant registration that it deems appropriate to its TLD; for instance, a registry could require that trademark registrations relied upon by Sunrise applicants must cover certain categories of goods or services (e.g., the .shoe registry could restrict participation in its Sunrise process to owners of trademark registrations that cover shoes or other goods in International Class 25).

If the registry permits Sunrise registrations to be based on legal rights other than registered trademarks, those other legal rights must be capable of being authenticated and must be recognized under the laws of the country in which the registry is organized.

Sunrise registration applicants must affirm that all information provided is true and correct, and must acknowledge that the provision of false information may result in the cancellation of any resulting domain name registration.

Sunrise registration applicants must provide either documentation of the claimed trademark registration (or other legal right, as applicable) or information about it sufficient to facilitate its authentication to the IP Clearinghouse.

The SRDP must allow challenges based on at least the following four grounds:

At the time the challenged domain name was registered, the domain name registrant did not own a trademark registration of national effect;

The domain name is not identical to the trademark on which the domain name registrant based its Sunrise registration;

The trademark registration on which the domain name registrant based its Sunrise registration is not of national effect; and

The trademark registration on which the domain name registrant based its Sunrise registration did not issue on or before [the date of the Registry

23 Including but not limited to ~ @ # ! § % ^ © and &.

Page 23 of 69 Agreement] and was not applied for on or before [the date that ICANN publishes the list of applications received in the round].

SUNRISE REGISTRATIONS AND THE GPML

The GPML and the recommended Sunrise registration processes are independent protection mechanisms. Nonetheless, for purposes of clarity, the IRT emphasizes that a GPM owner will not gain priority or precedence over a non-GPM owner, in a Sunrise process relating to an application consisting of that GPM, by virtue only of the presence of the GPM on the GPML. In such a case, the non-GPM owner’s Sunrise application will be granted if it otherwise fulfills the SERs; and during the pendency of the applicant’s Sunrise application, the GPM owner shall not be permitted to register that domain name under a Sunrise process.

In addition, where a GPM owner and a non-GPM owner both apply under a Sunrise process for the identical domain name, the IRT believes that the registry operator could employ an auction or “first-come, first-served” allocation process (subject to fulfillment of the SERs.) Finally, where a GPM owner does not apply under a Sunrise process and a non-GPM owner subsequently applies for a domain name that matches the GPM identically, the outcome of the application shall be determined solely by the initial blocking and appeal process described above in relation to second level protection for GPMs on the GPML.

Page 24 of 69

DRAFT UNIFORM RAPID SUSPENSION SYSTEM (URS)

1. INTRODUCTION

The Implementation Recommendation Team (“IRT”) recommends that all new gTLD registries be required, pursuant to their contracts with ICANN, to take part in a Uniform Rapid Suspension System (“URS”). The purpose of the URS is to provide a cost- effective and timely mechanism for brand owners to protect their trademarks and to promote consumer protection on the Internet. The URS is not meant to address questionable cases of alleged infringement (e.g., use of terms in their generic sense) or for anti-competitive purposes or denial of free speech, but rather for those cases in which there is no genuine contestable issue as to the infringement and abuse that is taking place.

The UDRP has unquestionably been an important and successful mediation tool for trademark owners and domain name registrants alike. However, times and circumstances have changed since the UDRP was implemented and brand owners and Internet users find themselves facing unprecedented levels of abuse and infringement, which undermines trust in, and thereby negatively impacts the stability and security of the Internet. The URS is intended to supplement and not replace the UDRP. They are separate proceedings with distinct remedies. The URS is designed to provide a faster means to stop the operation of an abusive site. The UDRP is designed to result in the transfer of the abusive domain name. Brand holders seeking to thwart infringement could utilize either or both proceedings.

Many brand owners face thousands of infringing websites per year. Often these web sites monetize off the value and goodwill of a brand, distribute counterfeit goods, malware and other malicious software, phishing attempts, and adult content. Cease and desist letters often go unanswered and brand owners are forced to spend large amounts of money drafting and filing UDRP complaints. In those obvious cases – as noted above – registrants often either fail to respond or simply agree to transfer the domain name after initiation of a UDRP. The end result is that brand owners spend large amounts of money to build up portfolios of domain names they do not want, simply to prevent fraud on their consumers and misuse of their brands.

Therefore, the IRT recommends that ICANN implement the URS, which would be mandatory for all new generic Top Level Domain (gTLDs), implemented through the new gTLD registry agreements, which would in turn bind registrars supplying new gTLDs to the marketplace. The URS would address cases of abusive use of trademarks where there is no genuine contestable issue as to the infringing or abusive use of a mark in a domain name and in connection with a site that represents abusive use (i.e., not a fair use or commentary situation nor a situation involving questions of whether the registrant is or is not authorized or selling, for example, legitimate, non-counterfeit goods).

Page 25 of 69

The URS will provide a low-cost and rapid means for taking down infringing domain name registrations, yet preserving a registrant’s right to a hearing and/or appeal. In addition, the URS does not result in the transfer or cancellation of a domain name registration. Rather domain name registrations found to be violating a brand owner’s rights will be placed in a frozen state, for the life of the registration, and only will resolve to a specific error webpage.

Where there is any genuine contestable issue as to whether a domain name registration and use is an abusive use of a trademark, the complaint will be denied terminating the URS process without prejudice to further action, e.g., a UDRP or court proceeding. The URS is not intended for use in any questionable proceedings, but only clear cases of trademark abuse.

Finally, as a balance of fair interests and to prevent abusive use of the process, any trademark owner found to repeatedly misuse the URS, for example for anti-competitive purposes or to violate free speech, will be removed from the system and denied access to the URS for a set period of time.

As agreed upon by all the members of the IRT, the task force members considered this recommendation in light of the 10 guiding principals that the IRT used as a base line assessment for all possible solutions considered during the IRT process.

The following provides a more detailed analysis of the purpose, steps and processes behind the recommended URS.

2. PURPOSE OF URS

The purpose of the URS is to address a cybersquatting problem for brand owners that is already insidious and enormous in scale, and which will continue to spiral out of control with the introduction of an unlimited number of new gTLDs unless addressed.

The intent in proposing the URS is to solve the most clear-cut cases of trademark abuses, while balancing against the potential for an abuse of the process. The IRT notes that our proposal is limited to trademark abuse problems and have not extended this model to other forms of abuse. The URS is intended to address efficiently24 and cost-effectively the most clear cut cases of abuse. It does not replace other current options available, such as the UDRP or other litigation options. Rather, it is intended to address the hole not filled by current available remedies.

In balancing the interest of brand owners and domain name registrants in the draft URS as compared with the current UDRP, the IRT notes that the same substantive standards

24 The IRT considered comments it received on the timing of the URS process which raised competing concerns that the process was either too short or too long. The IRT, upon additional discussion and analysis, believes that the proposed timeline is a fair balance of competing interests, and is on target with its stated goals of being “fast and fair.” Further, the timing is consistent with or in the range of current other expedited systems examined in the industry (e.g., the process provided by Nominet).

Page 26 of 69

apply, but the evidentiary threshold level or the burden of proof on the complainant was increased.

3. INITIATION OF URS

The URS would be mandatory in all registry agreements for new gTLDs. In turn, registries would bind registrars in all new gTLD Registry-Registrar Agreements to add a requirement to participate in the URS in their service agreements with their customers.

To participate in the URS, a trademark owner complaining of infringement has two options for initiation of the complaint:

3.1 Pre-Registration – during the pre-registration process, trademark holders would pay a reasonable fee and provide important information about their trademarks.25 This would streamline the complaint process by:

Adding the registered user’s information (signature and trademark information) to a verified list;

Pre-filling the complaint form with registered user information;

Allowing complaints to be submitted via e-mail instead of hard copy with accompanying signature for each complaint; and

Allowing companies to take advantage of deposit accounts for automatic deduction (and reimbursement) of filing fees.

3.2 No Pre-Registration – Complainants submit complaints without pre-registration and the streamlining benefits afforded to pre-registered users.

To initiate an URS action, both registered and non-registered users need to complete and submit a complaint form outlining trademark rights and assertions of infringement as required in the Form Complaint attached as Appendix B. Complaints must include PDF copies of (1) the Whois record for the domain name(s), and (2) the website showing the alleged violation(s).

Complaints can be filed on behalf of multiple related companies (i.e., multiple subsidiaries under a holding company name), but cannot be filed in the name of multiple unrelated companies. Moreover, complaints can be filed against multiple registrants if

25 Information relevant to the URS pre-registration procedures is tied to the IP Clearinghouse. It is assumed that rights owners can pre-register in the IP Clearinghouse. Further, it is our recommendation that all URS decisions be recorded and searchable in an IP Clearinghouse database. as well as with any individual third-party providers as applicable. While the IRT supports the requirement that URS decisions be stored in a centralized location, it does not believe it is necessary to require that the location be the clearinghouse as long as there is a viable, open option to provide access to and search of the decisions. If ICANN should decide not to adopt the IP Clearinghouse, the URS will need to create a separate procedure for the collection and maintenance of such data.

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the Complainant can establish that the multiple registrants are one in the same (i.e., multiple “shell” companies or aliases for a single person or entity). Each complaint carries either a pre-registered user fee or a higher non-registered user fee. Recommended filing fees for registered users are based on a tiered schedule and fees increase per the number of domains cited in the complaint as indicated in the attached Appendix C.26 Complaint fees are non-refundable. Additionally, all complainants must include a statement that the complaint is being filed in good faith and that the complainant agrees to indemnify all parties that act based on the representations in the complaint.27

Complaints are submitted to a third-party provider – to be selected by ICANN – for initial examination.28 During initial examination, a case manager reviews the complaint for compliance (e.g., did the complainant fill out the Form Complaint properly and provide the required information in the form complaint, including an image of the complained of site is as described in the complaint). Only if the complaint is validated as complete during the initial examination will the domain name registration(s) proceed to the freeze

26 The IRT considered a number of comments regarding the adequacy of the fees associated with the URS. The IRT notes that the fees recommended in this paper are recommendations and must be revised accordingly based on feedback from potential URS providers.

It is important to note, however, that the IRT came upon the numbers suggested based on fees charged by other providers who offer similar services, discussions with several current UDRP examiners, and the need to keep the process cost-effective.

If the URS is not significantly cheaper than the UDRP it does not remain a viable alternative to resolve some of the problems facing brand owners now. The idea, however, is to make the process as cheap as possible while still providing a quality provider. Several comments made the claim that the fee structure would result in an average of $1-2 per domain name decision and thus would necessarily mean examiners with less than optimal experience being involved. The IRT notes that there will be times where the number of domain names involved in an individual complaint will be towards the higher end of the fee. However it is also important to note that in the UDRP process, which allows multiple domain name complaints, the average number of domain names included in a single complaint has been between 1 and 2 (see http://www.wipo.int/amc/en/domains/statistics/domains_avrg.jsp) and not 100. As a result, the average fee will be more in the lines of $100-200 per domain name and the IRT believes the fees recommended by the URS should remain the ballpark figure provided to potential providers in any RFP.

27 The IRT considered the concept of requiring a complainant to post a bond as a surety for the indemnification obligation, but thought that such a requirement would overly complicate the process and is not common in other similar systems. The IRT also felt that the indemnification obligation from the brand holder was sufficient without additional supporting information.

28 The IRT received a number of comments raising the concern that the initial draft of the URS contained too many layers or unnecessary complications. While the IRT believes that some of the comments received were as a possible misunderstanding of the process as drafted, and that clarification of the language on our part addressed some of the concerns raised, notwithstanding this draft contains further streamlining of the process.

In particular, the initial examination is no longer a review of whether or not a 'prima facie' case has been met, but is now limited to a compliance check to see that the complaint meets the initial requirements to process further. In addition, there will now be one substantive examination of the complaint after either an answer is filed, or after a default “non-answer” period. A written opinion will be issued in all cases after examination.

In addition, if a respondent files a 'default answer' after not answering, under the procedure available, at that time, there will be a substantive examination, with balances of protection added for such late answers.

The IRT believes that this has indeed streamlined the process yet further, in order to achieve a balance of interests in the goals of being “cost-effective, fast and fair,” and addresses the concerns raised by WIPO and others.

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and notice stage. Incomplete complaints are deemed defective, ending the URS process.

Upon notice to the third-party provider, the Complainant will have the right to terminate the URS at any time prior to a full examination by the “Examiner” – who was retained by the third-party provider pursuant to Section 7 below. The effect of a termination will be to unfreeze a domain name and return any fees paid by the Registrant.

4. NOTICES

Notice of the complaint to the Registrant and to the domain name service providers is extraordinarily important to the success and legitimacy of the process. Notwithstanding the trademark abuse alleged in the complaint, registrants should have the ability to answer a complaint prior to the invocation of any adverse consequences to their domain names and websites. While abusive use should be addressed as quickly and inexpensively as practicable, the IRT is cognizant that registrants also should be protected against over-aggressive use of this system by complainants. Fair notice and an opportunity to answer is one of several remedies to counter such potential abuse.

All formal notices of the complaint should be provided by the third-party dispute resolution provider. Notice first should be provided to the New TLD registry operator within twenty-four (24) hours of the filing of the complaint via e-mail at the address the registry operator provides to ICANN. Upon receipt of the notice, the registry operator should within twenty-four (24) hours freeze the domain name to prevent transfers or other changes to the registration. In the registry protocols (EPP), such a freeze would be implemented with two registry commands – “ServerTransferProhibited” and “ServerUpdateProhibited.” During this time period, the website still will resolve and the domain name will remain active in the zone file.

The only changes that will be allowed to the Whois data from the moment of freeze through to determination and/or appeal will be to correct information that is considered fraudulent (i.e., use of another’s identity as a result of identity theft) or to change from a privacy/proxy service contact to the contact details of the actual domain name registrant. A request for such a change to a Whois record must be made through the URS provider who will then determine if the situation requires a correction of the Whois record and cannot be made independently by the domain name registrant or Complainant.

Within twenty-four (24) hours of the domain name freeze, the third-party provider should then provide notice of the complaint to Registrant. Such notice should inform the Registrant that the name is frozen and that the failure to answer would result in the Registrant’s inability to use the domain name for any purpose. This initial notice to the Registrant should be provided to the e-mail address contained in the Whois record for the domain name, regardless of whether the name is utilizing a privacy or proxy service. At the same time, the third-party provider should provide notice of the complaint to the registrar of record of the domain name at an address the registrar provides to ICANN.

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Registrars, therefore, also would have the ability to contact their impacted customers to inform them of the complaint and the consequences of not answering.

In addition, the third-party provider shall send a certified letter to the Registrants’ mailing address located in the Whois database.29 Such letter should be sent within five (5) days of the filing of the complaint. Finally, after seven (7) days, a second e-mail should be provided to the Registrant.30

5. ANSWER

A Registrant has fourteen (14) calendar days from the date of the initial email notification to submit an Answer.31 Each answer must include confirmation of Registrant details and a defense for domain name registration(s) and/or use that contradicts the Complainant’s evidence that they do not have a legitimate right or interest in the domain name(s) (e.g., known by or authorized to use the name at issue or a claim that the use is noncommercial fair use) and that they registered and used the domain in bad faith as detailed and required in the Form Answer attached as Appendix D. In addition, the Registrant may allege the Complainant filed an Abusive Complaint on the form and request the Examiner investigate these allegations.32

Answers submitted by a Registrant reflecting twenty-six (26) domain names or more33 require submission by the Registrant of an Answer Fee as outlined in Appendix C.34 The

29 The IRT received some comments advising us to drop the requirement for a certified letter. The IRT found the Nominet Dispute Resolution Service for .uk particularly instructive in that Nominet also require notice in the form of a certified letter. The IRT believes that the certified letter is an important safeguard and that it would not add to the timing of the adjudication not add a significant amount to the cost of the system. The IRT considered requiring the complainant to send the certified letter – similar to the UDRP process – but decided that it actually would be more economical if the third party provider sent the letters and it would be another safeguard against potential reverse- abuse.

30 The IRT also considered and rejected potential requirements that the third party provider provide notification of the complaint via fax and/or telephone in addition to e-mail and a certified letter. The IRT decided that such requirements would add significant complexity and cost to the system due to time zones and national and local laws regarding faxing and calling. The IRT have been cognizant that if this system becomes too expensive for complaining parties, it would cease to be a viable alternative to the UDRP.

31 The IRT considered numerous public comments on what would constitute sufficient time for registrants to answer, and determined that the IRT should keep the recommended period the same as the IRT had in its Initial Report. Due to concerns regarding implementation, complexity, and fairness, the IRT rejected the idea that the notice period should be longer for domain names with privacy or proxy services, as well as the idea that the IRT should base the notice period on how long the domain names have been registered. The IRT found the Nominet Dispute Resolution Service for the UK particularly instructive in that Nominet provides for a slightly longer period – fifteen (15) business days – than the IRT is recommending.

32 The IRT has considered how to deal with abusive complainants. The IRT feel that a system that requires a finding of abuse by the Examiner will be the best option. This is not merely a system where the complainant loses a complaint, but instead a system where the complainant abuses the system by filing complaints based on a false claim of rights or by asserting fraudulent claims against sites that clearly involve legitimate use. The concern about abusive registrants may be addressed through the use of increased fees for the filing of an answer.

33 The IRT widely debated instituting a minimal fee on the registrant in the lines of, for example, $30-40 per Answer for all Answers (to be matched by the Complainant). The fee would be refunded to the prevailing party. As a result of these discussions, the IRT had two competing concerns.

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Answer Fee is refundable to the Registrant if the Registrant prevails in the URS. As with the Complainant, Registrants will similarly be eligible to maintain a deposit account for automatic deduction (and reimbursement) of Answer Fees.

When an Answer is submitted, the case manager will review the Answer to determine if it meets the requirements for a qualified Answer, that is, that all required information and representations are provided. If the Answer meets the requirements of the URS, the case manager will submit the Complaint, Answer and supporting documents to an Examiner for decision.

Incomplete Answers will be deemed defective and will be rejected, moving the URS process into default phase.

6. DEFAULT PROCEDURES

If a Registrant fails to submit an Answer, or submits a defective Answer, within fourteen (14) days of initial email notice, the Complainant and Registrant are notified by email

The first concern is that a fee should not be imposed because the IRT should not make a registrant pay a fee to defend themselves against an action (particularly in those cases where there is a questionable use that should go to UDRP); that any fee might be a burden on the registrant (particularly an individual or small business); and, finally, that collecting a fee from the respondent and a second fee from the complainant, as well as creating a system of refunding one of those two fees would impose additional complexity and costs on the system making it a more expensive process. Moreover, it could cause complaints of alleged phishing attempts to respondents and likely would dramatically increase the number of appeals.

The second is that a minimal fee to respond should be imposed to prevent gaming of the system and potentially wasting an Examiner’s time (and as a result, potentially increasing the fees that will be charged to file complaints in the first place). The idea is that the fee would be low (for example, in the $30 or $40 range) and matched by the Complainant. In addition, the fee is refundable to the successful party upon the Examiner’s decision, which means those registrants who are either not making an abusive use or the use is questionable and thus should go to UDRP or court are not out of pocket.

The result the IRT came to was a hybrid of the two – imposing a fee on registrants who have registered a number of domain names within the new gTLDs that reflect abusive use of a company’s trademarks.

34 A number of comments were submitted requesting a loser-pays system. The IRT considered a variety of situations and did not feel that this type of system can be implemented throughout the URS.

First, it is important to ensure that individual domain name registrants do not feel they cannot afford to file an answer. Second, there was concern that with the number of defaults that will likely occur, using the UDRP as a model, and the prevalence of false Whois information, recovery of such fees would be next to impossible. In addition, the IRT discussed the option of making the URS a “free” service, sponsored by ICANN, or splitting the costs of the URS on a yearly basis between the registries based on the percentage of disputes that involve that gTLD. The IRT, upon additional discussion and analysis, believes that the proposed timeline is a fair balance of competing interests, and is on target with its stated goals of being “fast and fair.”

As a result, the IRT has settled for a partial “loser-pays” system whereby disputes that involve in excess of twenty- five (25) domain names will be subject to Answer Fees and where filing/Answer Fees are refundable to the prevailing party. Where a domain name complaint lists 100 domain names and 98 are found abusive, the complainant will be refunded 98% of fees and the respondent refunded 2% of fees.

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and, in the case of Registrant, letter (sent by regular mail) that the matter has entered into Default.35 All cases of default proceed to Examination.

During the period of default, the Registrant cannot (a) change the content found on the site in an attempt to argue the site is used in connection with legitimate means and thus regain access to it or (b) change the Whois information.

Should a Registrant find their domain name has been taken down after the fourteen (14)-day Answer period has passed and wishes to file a legitimate Answer to the Complainant, the Registrant may file a Default Answer to the third-party dispute provider at any time during the life of the domain name registration.

To file a Default Answer, the Registrant must fill in a form Request for Default Answer and submit it to the third-party dispute provider for examination. The Default Answer, if filed within thirty (30) days of the Default will cost nothing more than it would cost to answer in a timely fashion. If the Default Answer is filed after thirty (30) days of the Default, an additional fee of $50, on top of any required Answer Fees, as indicated in attached Appendix C, will be imposed. The $50 Default Answer filing fee is non- refundable.

Upon the successful filing of a Default Answer the domain name takedown will be immediately revoked and the domain name may resolve pending the outcome of the Examiner’s examination. To avoid improper gaming of the system, the decision of the URS Examiner shall be based on the status and use of the disputed domain name at the time of the filing of the complaint.

7. EXAMINATION

Once an answer is filed or if there is a default for failure to answer within the fourteen (14) days period, a Final Evaluation of the complaint and answer if any will be initiated. The Final Evaluation of the case shall be made by a qualified legal expert with experience as a Panelist in UDRP proceedings who would be retained by a third-party provider.36 This third-party provider37 would operate the URS services on a cost- recovery basis.

35 In the current environment, trademark owners are often forced to spend a significant amount of time, effort and monetary resources in going after those domain name registrants that the URS is intended to address. Often these registrants ignore cease and desist letters, forcing the trademark owner to file a UDRP or court action. The end result is often either: (a) a default in the UDRP response, or (b) contacting the trademark owner and agreeing to transfer the domain name after a UDRP proceeding has been initiated and significant attorneys’ fees already paid. This is also, in many minds, a form of default.

36 Several commentators suggested that there should be more than one provider for the IP Clearinghouse and URS resolution services. While the IRT appreciates the concerns raised, the IRT believes that there are benefits to having a single provider. These include having a single database of decisions that is searchable. A single provider would be more likely to provide consistency in decisions. If ICANN elects to have multiple URS providers to address competition concerns, the IRT recommends that ICANN ensure that URS decisions be searchable across the multiple providers through a single database, and that the various providers be consistent in the interpretation of the standards. It would also be important to ensure that multiple providers share information such as the identity

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The Final Evaluation analysis involves consideration of three basic issues, similar to the standards for a UDRP decision, but requires a much higher burden of proof. The Examiner shall consider each of the following factors:

Whether the domain name is identical or confusingly similar to a mark in which the Complainant holds a valid trademark registration issued by a jurisdiction that conducts substantive examination of trademark applications prior to registration. [A list of such jurisdictions shall be complied and made available to parties and Examiners].38

Whether the domain name registrant lacks any right or legitimate interest in the domain name.

Whether the domain name has been registered and used in bad faith.

A list of non-exclusive circumstances that demonstrate bad faith registration and use mirror the list stated in the UDRP, namely:

circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

of abusers of the URS for the purposes of assessing penalties or additional fees. To avoid the perception of conflict of interest, the URS resolution provider should not be affiliated with a registry or registrar.

37 The IRT acknowledges complete confidence in the current providers of the UDRP process. Some suggest, however, that there is the risk of an appearance of conflict of interest if the URS provider is also a UDRP provider. The IRT believes this risk is unfounded due to the use of independent examiners and the institutional integrity of the providers. Moreover, the revised version of the URS procedure limits review by URS staff to formal compliance. All substantive review is made by an independent examiner, reducing the appearance of a conflict. Nevertheless, this is an issue that merits further consideration. Given that there are multiple UDRP providers, an option to consider in the future if there are multiple URS providers is a requirement that any complaint filed with a specific URS provider must be filed with a different UDRP provider if the URS provider is also a UDRP provider.

38 The IRT recognizes that entry standard for utilizing the URS is more limiting than the standard provided in the UDRP, which permits claims to proceed based on any registration of trademark rights or on common law rights. Parties that do not meet the higher entry standard proposed for utilization of the URS may, of course, still proceed with claims under the UDRP or in courts, as appropriate. Exclusion from the URS is not intended in any way to prejudice a party from proceeding under other available avenues. The purpose of this more restrictive standard is to avoid time consuming analysis over the question of rights, which would undermine the intended purpose and ability of the URS process to provide a fast inexpensive remedy for cases of clear abuse. The experience of UDRP Panelists is that the analysis of common law rights claims can be difficult and time consuming. In addition, reliance on registrations issued immediately upon application without substantive examination on absolute or relative grounds may result in gaming of the system, as seemed to occur during the introduction of .eu domain names, for example. Whether there are other rights that can be established and registered in the IP Clearinghouse that would be consistent with the goal of keeping the URS as streamlined and fast as possible also merits further consideration.

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you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

If the Examiner finds that all of these elements are satisfied by clear and convincing evidence and that there is no genuine contestable issue, then the Examiner shall issue a decision in favor of the Complainant. If the Examiner finds that this test is not met, then the Examiner shall deny the relief requested terminating the URS process without prejudice to the ability of the Complainant to proceed with an action in court or under the UDRP.

The IRT notes that the standard for decision is not the same as that under the UDRP. Under the UDRP determinations are made based on a preponderance of the evidence, i.e., is it more likely than not that the required element has been proven. Under the URS the test would be based on clear and convincing evidence that there is no genuine contestable issue. If there is a contestable issue, the matter is not appropriate for decision under the URS and the Complainant should pursue a decision in a different forum.

For example, if the trademark in question is BRANDXYZ for use in connection with computers and the domain name in question is brandxyzz.[gtld] and is used in connection with an abusive pay-per-click site, the site would be frozen. If the domain name is brandxyzcomputers.[gtld] and the record shows that it is a bona fide retailer who legitimately sells BRANDXYZ computers, the URS complaint would be denied.

A decision in the form attached as Appendix E will be used by the Examiner to report the results of the proceeding to the parties. The URS Form will contain the following elements:

Name of the parties;

The mark(s) and registration(s) on which the complaint is based;

The disputed domain name(s);

A finding on whether the domain name(s) is identical or confusingly similar to the mark(s), with short comments;

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A finding on whether there is a lack of right or legitimate interest in the domain name(s), with short comments;

A finding on whether the domain name(s) was registered or used in bad faith, with short comments;

A conclusion on whether it appears by clear and convincing evidence that there is no contestable issue and that the Complainant is entitled to relief in the form of an order for the suspension of the domain name(s);

A finding on whether the complaint is abusive.

Once the decision is rendered, it will be returned electronically to the case manager who shall submit it to the parties and to the registry and registrar for immediate action.

Upon entry of a decision in favor of the Complainant, the domain name at issue remains frozen at the registry (meaning it cannot be sold, transferred, or assigned) for the duration of the registration period.39 In addition, the domain name will no longer point to the registrar’s website, and will be redirected at the registry to a site hosted by the third- party provider. The third-party provider will post a standard page on the domain name, such as:

“This domain name is no longer active as a result of a Rapid Suspension proceeding. For more information, please visit www.[URLofthirdpartyreviewer].com.”

Similarly, the registry will update the Whois record to reflect that the domain name is on hold and unable to be transferred or used for any purpose for the life of the registration (including renewal by the same or related registrant).

This will provide notice to any third-party provider who may be visiting either for due diligence, or because they are trying to find a brand or for that random person who goes to look at their site and wants to know why it is down.

39 The IRT received comments relating to the transfer of domains as a possible remedy of the URS. After much consideration the IRT decided against including transfer as a remedy since transfer as a remedy is already available in the UDRP and under applicable national law, such as the Anti-Cybersquatting Consumer Protection Act (“ACPA”) in the United States. The URS is foreseen as just one of the tools available to brand owners for dealing with brand abuse in the domain name system. By keeping the remedy of the URS to 1) locking of the domain registration and 2) taking down the associated harmful use, the URS can remain quick while still balancing the right of the registrant by not transferring the property during an expedited process. In leaving transfer as a remedy to the UDRP and ACPA, the URS fulfills its purpose of becoming an addition to the existing available mechanisms without displacing the UDRP or ACPA. Finally, the IRT also considered extending the registration period of a domain name locked under the URS process (i.e., adding a year to the registration term), but also decided against this mechanism because of the likely increased technical expenses and burdens on the URS process provider and registries.

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The IRT also recommends that all Examiner decisions be made publicly available and searchable through an open-access, centralized database, as well as through any of the third-party providers.”

8. APPEAL

The losing party may appeal an Examination Decision, relating to any or all of the domain names in the Complaint, in the following manner:

If the complaint is denied, the Complainant may initiate a proceeding de novo under the UDRP or in a court of appropriate jurisdiction.

If the complaint is granted, the Registrant may request reconsideration on the original record by a URS ombudsman on the grounds that the decision was arbitrary and capricious or an abuse of discretion by the Examiner,40 or may initiate a proceeding de novo in a court of appropriate jurisdiction.

If the Examiner finds that the complaint was abusive, the Complainant may similarly request reconsideration on the original record by a URS ombudsman on the grounds that the decision was arbitrary and capricious or an abuse of discretion by the Examiner.

Costs of any appeal to the URS ombudsman, as indicated in Appendix C, will be borne by the appellant, but are refundable upon a finding in favor of the appellant.

A losing registrant may vacate the takedown of its site by submitting, within thirty (30) days of the Examiner’s decision, an appropriate fee, as indicated in Appendix C, to the URS provider with proof that it has initiated an appeal of the Examination Decision with a court of competent jurisdiction – a court located in the country of the registrant or the registrar,41 with authority to decide a case of cybersquatting or trademark infringement. This fee is refundable if the registrant prevails in court.

9. ABUSIVE COMPLAINTS

The URS should have a low tolerance for abusive complaints. One goal of the IRT is to penalize aggressive trademark holders that may abuse the URS. If a Complainant has been held to have filed abusive complaints on three occasions, the Complainant will be

40 The appeal to an ombudsman is not to be a reconsideration of the Examiner’s decision but rather to determine whether the Examiner’s decision represents an abuse of discretion and/or process.

41 The IRT is extremely concerned with recent trends toward filing appeals in courts where cases are maintained for long periods of time for the sole purpose of gaming the UDRP appeals process. Discussions were held regarding how to prevent such actions – such as making the court of competent jurisdiction the court of the registry instead of the registrar – but decided to maintain the UDRP standard. The purpose for the fee to have a web site resolve to the original site once an appeal is filed is an attempt to prevent a large part of the gaming that occurs in purposefully filing appeals in such courts. The fee is refundable if the court resolves the dispute in favor of the domain name registrant.

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barred from utilizing the URS for a one-year following the date of the last abusive complaint. [NOTE: Refer to Appendix F for an illustrative flowchart of the URS process].

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IRT REPORT AND RECOMMENDATION ON POST-DELEGATION DISPUTE MECHANISM

As part of the IRT process, the IRT considered the numerous public comments calling for ICANN to create a mechanism for a post-delegation challenge to certain activities of new gTLD registries. In considering these comments, members reviewed the WIPO proposal entitled “Post-Delegation Procedure for New gTLD Registries Substantive Criteria and Remedies” communicated to ICANN on 5 February, 2009. In addition, members of the IRT task force assigned to consider this proposal had a telephone conference with Erik Wilbers and Eun-Joo Min from WIPO during its first face-to-face meeting held in Washington, DC 1-2 April, 2009 and further consultation with WIPO via Eun-Joo Min at its second face-to-face meeting in San Francisco, CA 11-13 May, 2009. As with all the proposals considered by the IRT, the task force members considered the proposal in light of the 10 guiding principles that the IRT used as a base line assessment for all possible solutions considered during the IRT process.

After further consultation with WIPO and review of the public comments, the IRT remains convinced that a Post-Delegation Dispute Mechanism is a necessary rights protection mechanism. However, the IRT continues to believe that revisions to the mechanism proposed by WIPO are required in order to make the mechanism reasonable and workable. The IRT’s proposed revised mechanism is set forth in Section 2 below. Finally, the task force members reviewed the latest version of the proposed Registry Agreement, which is appended to the second Draft Applicant Guidebook, and concluded that certain contractual provisions contained in the draft agreement will require modification in order to incorporate the IRT’s recommended form of the Post- Delegation Dispute Mechanism. Specifically, the Task Force recommends that ICANN amend the draft Registry Agreement to include provisions incorporating the language found in Section 2.1 below into the Registry Agreement. In order to provide guidance to Registry Operators, ICANN, intellectual property owners and dispute resolution providers, the IRT further recommends that ICANN create a non-exhaustive list of activities that may or may not constitute “bad faith.”42

In its deliberations, the IRT was fully cognizant that the easier issue addressed in this recommendation is abuse of rights on the top level and that the concerns related to preventing wide scale abuses on the second level are more difficult and controversial. With this in mind, the IRT believes that the concerns expressed by WIPO in its proposal with regard to the possibility of widespread and systemic abuses by Registry Operators could be harmful to consumers and brand owners with the addition of new TLDs without some type of mechanism to thwart possible systemic abuses by Registry Operators. Concerns over such systemic abuses have largely arisen due to the gaming currently taking place in some sectors of the marketplace and ICANN’s perceived unwillingness

42 The IRT envisions a non-exclusive list similar in nature to the non-exclusive list of “bad faith” factors set out in the UDRP. Such factors should include, but not be limited to, circumstances designed to capture instances of willful blindness/reckless disregard.

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or inability to take appropriate remedial actions.43 For this reason, the IRT has taken great care to recommend a mechanism that is balanced to address the concerns of consumers and brand owners while protecting Registry Operators from potential abuse by overzealous trademark owners. This has led the IRT to seek the most workable compromise to achieve this balance.

Additionally, the IRT wants to explicitly state that we do not intend for this mechanism to create any third-party beneficiary rights in trademark owners under the Registry Agreements. It is our intent that this procedure will be incorporated into the Registry Agreement similar to the manner in which the UDRP is set forth in the RAA. To be clear, the IRT only intends for trademark owners to have the limited rights set forth in the procedure and the Registry Operators to have the obligation to follow the decisions issued by the dispute resolution provider.

Finally, the IRT wishes to stress that the Post-Delegation Dispute Mechanism is designed to combat (i) Registry Operators that operate a TLD in a manner that is inconsistent with the representations and warranties contained within its Registry Agreement, or (ii) Registry Operators that have a bad faith intent to profit from the systemic registration of infringing domain names (or systemic cybersquatting) in the Registry Operator’s TLD. Whilst it is not possible to define a specific threshold as to what amounts to systemic cybersquatting,44 given that the Panel needs to take into account all of the relevant facts and surrounding circumstances, the IRT wishes to specifically state that this mechanism is not intended to be used against Registry Operators that may have infringing domain names within their TLDs where such Registry Operators do not have a bad faith intent to profit from those infringing names.

1. SUMMARY OF IRT SUGGESTED RECOMMENDATIONS

After reviewing the WIPO proposal, reviewing the public comments to the IRT’s 24 April, 2009 draft report and having a further consultation with WIPO representatives, the IRT believes that a Post-Delegation Dispute Mechanism is workable and will serve to better protect against egregious practices that harm consumers and trademark owners. Upon further reflection and analysis, however, the IRT agrees with WIPO’s position and the position of several parties that submitted comments, that trademark owners should have a more active and clearly defined role in any post-delegation dispute mechanism by having the ability to trigger a proceeding against the Registry Operator under the terms set out below. Similar to our earlier recommendation, the IRT recommends that the mechanism require a complainant to pre-pay a fee to ICANN to initiate a complaint and, under our revised proposal, pre-pay a further filing fee to the dispute resolution provider (“DRP”) should the trademark owner choose to pursue its complaint independent of ICANN.

43 The IRT is aware of concerns that have been raised in the past – some in the DAG public comment process – about ICANN's compliance efforts. Nonetheless, the IRT believes that the obligation for addressing post-delegation disputes between ICANN and the contracted registry properly rests with ICANN.

44 The term “cybersquatting” is used merely as shorthand and should be interpreted to include all forms of infringing domain name registrations (e.g., typosquatting).

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The IRT recommends that a trademark owner initiate a post-delegation dispute by submitting a complaint to ICANN via an online form and pay a refundable deposit45 at the time the form is filed. This form would allow a trademark owner to advise ICANN of an alleged breach of the Registry Agreement related to the prohibited practices set forth in the Registry Agreement (this breach would be of the nature set out below in Section 2.1). ICANN should have a system whereby it formally acknowledges the complaint and then have a period no longer than thirty (30) calendar days to investigate and report its conclusion back to the complaining party. In the event that ICANN’s investigation should discover that the Registry Operator is in fact in material breach of its contractual obligations, ICANN must utilize the various enforcement mechanisms contained within the applicable Registry Agreement. In the event that ICANN’s investigation should not discover that the Registry Operator is directly in material breach of its contractual obligations, then ICANN, the complainant and Registry Operator must attempt to resolve the dispute by engaging in good faith discussion over a period of at least fifteen (15) calendar days.

If the Parties are unable to resolve the dispute, upon request from the complainant, ICANN must institute the Post-Delegation Dispute Mechanism set forth below through an accredited DRP. ICANN’s initial finding of no material breach is not binding or controlling on the DRP Panel but may be taken into consideration along with other evidence and information submitted by the parties. The complainant shall participate in the DRP. To initiate a Post-Delegation Dispute, the complainant must pre-pay an additional fee to the DRP. The IRT further recommends that this fee be set to cover the provider’s cost as well as the Registry Operator’s cost should Registry Operator prevail. Furthermore, the IRT believes that the complainant should be required to prepay an additional amount that shall be paid to the Registry Operator if the complaint is found by the Panel to be “without merit” (“Penalty Fee”).46 Alternatively, if the complaint is not found to be “without merit,” this additional amount would be refunded to the complainant. While the IRT is not in a position to recommend the amount of any fee charged, we believe the additional portion of the fee should be set sufficiently high to discourage abuse or gaming of the system.47 The IRT also recommends that all DRPs be required to use three (3) member panels due to the clear significance of the matter to the Registry Operator’s business. All decisions by the DRP Panel should be fully appealable by either party in a court of competent jurisdiction located in either the complainant’s or the Registry Operator’s jurisdiction.

If ICANN should determine that the initial complaint was “without merit” after conducting its investigation, then the complainant would lose its initial deposit. A complainant found

45 The amount of the fee should be meaningful enough to deter arbitrary and capricious claims, but also be refunded to the complainant in the event that its claim is meritorious.

46 A complaint would be “without merit” only if the complaint is found to be completely baseless and without any tangible support so as to rise to the level of an abuse of the procedure or that it was filed merely to harass the Registry Operator against whom the complaint was filed. The finding of whether a complaint was “without merit” could occur at two separate points in the system. First, ICANN could make such a determination at the end of its investigation. Second, a Panel could make such a determination in its final decision.

47 See Appendix G.

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to have filed a complaint deemed “without merit” by ICANN at the conclusion of its investigation on three (3) separate occasions would be barred from filing any complaints under the Post-Delegation Dispute Mechanism for a period of one (1) year. After a complainant has served a one (1) year bar, any determination that a complainant has again filed a complaint that is “without merit” will result in the complainant being permanently barred from using the mechanism.

In the event a Panel determines that a complainant has filed a complaint “without merit,” it shall set this finding forth in its decision. A complainant found to have filed two (2) complaints “without merit” by a DRP Panel would be permanently barred from filing any further complaints under the mechanism. If the complainant in question has already served a one (1) year bar, then only one (1) further finding from a DRP Panel of “without merit” is required for the complainant to be permanently barred from using the mechanism.

2. POST-DELEGATION DISPUTE MECHANISM AS REVISED BY THE IRT

2.1 Applicable Disputes

2.1.1 A Registry Operator, as defined in the applicable Registry Agreement with ICANN, shall be required to submit to a mandatory administrative proceeding where a third-party (complainant) has filed a complaint with ICANN asserting that:

2.1.1.1 The Registry Operator's manner of operation or use of a TLD is inconsistent with the representations made in the TLD application as approved by ICANN and incorporated into the applicable Registry Agreement and such operation or use of the TLD is likely to cause confusion with the complainant’s mark; or

2.1.1.2 The Registry Operator is in breach of the specific rights protection mechanisms enumerated in such Registry Operator’s Agreement and such breach is likely to cause confusion with complainant’s mark; or

2.1.1.3 The Registry Operator 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, meeting any of the following conditions: (a) taking unfair advantage of the distinctive character or the reputation of the complainant's mark, or (b) unjustifiably impairing the distinctive character or the reputation of the complainant's mark, or (c) creating an

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impermissible likelihood of confusion with the complainant's mark.48

2.1.2 For the purpose of determining whether the TLD or domain name registrations therein meet conditions described in Section A, the Panel may take into consideration any decisions rendered under the New gTLD Dispute Resolution Procedure for Legal Rights Objections (Pre- Delegation) or any decisions under the Uniform Domain Name Dispute Resolution Policy against the Registry Operator or any of its affiliates.

2.2 Decisions

In its written decision, the Panel, in addition to providing the reasons for its decision, shall set forth one of the following findings:

Panel finds for the complainant and provides a remedy (see Section 2.3, below) Panel finds for the registry operator and provides a remedy (see Section 2.3, below) Panel finds for the registry operator and that the complaint was “without merit” Panel finds for the complainant and that the defense was “without merit”

2.3 Remedies

The Panel shall, in its sole discretion, issue a finding determining whether or not it believes the Registry Operator has committed one or more of the acts set forth in Section 2.1.1.1-2.1.1.3 above. In the event of a finding that the Registry Operator has violated this policy with respect to the subject matter giving rise to the dispute, the Panel shall recommend to ICANN the imposition of appropriate enforcement mechanisms available to ICANN under the applicable Registry Agreement. Upon a finding that a complaint is “without merit,” the Panel shall require the complainant’s pre-paid filing fees, including (i) the fee covering the Registry Operator’s costs of the dispute to the Registry Operator (but the Panel shall not have authority to order an award of monetary damages or attorney costs beyond those incorporated into the filing fee pre-paid by the complainant), (ii) the dispute provider’s fee to the Dispute Provider, and (iii) the Penalty Fee to the Registry Operator. Similarly, upon a finding that the Registry Operator’s defense is “without merit,” the Panel shall require the Registry Operator to pay a fee equal to the pre-paid filing fee paid by the complainant. This fee shall be calculated to cover the cost of the action and an additional amount to cover an award to the complainant.49

48 For example, a Panel could take into account whether the activity encompassed by the manner of operation or use of the TLD that is at issue implicates or involves registrars that are affiliates of the Registry Operator. The IRT offers no comments on whether the registry/registrar separation rules should be relaxed; however, if those rules are relaxed to allow affiliates of a Registry Operator to also serve as a registrar in the same TLD, then such consideration by the Panel may be appropriate. The IRT welcomes comments from the community on this point.

49 See table in Appendix G.

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All DRP decisions should be published on the DRP’s website and the ICANN website and should be fully searchable.

2.4 Enforcement Tools

The IRT further recommends that the draft Registry Agreement be revised to include a variety of graduated enforcement tools such as those recently recommended for implementation in the RAA such as:

2.4.1 Sanctions & Suspension – Providing for escalated compliance enforcement tools such as monetary sanctions the suspension of accepting new domain name registrations in the TLD until such time as the violation(s) of Section 2.1.1.1-2.1.1.2 is cured.

2.4.2 Group Liability – Preventing "serial misconduct" by registries when another affiliated (by common control) registry’s or registrar’s agreement with ICANN is terminated, provided that such affiliated registry or registrar has also been involved in the activities violating Section 2.1.1.1-2.1.1.3 set forth above.

2.4.3 Termination of Contract – Providing for the termination of a registry agreement should a Registry Operator be found by three (3) separate Panels, arising out of 3 separate and distinct incidents, to have violated its contract under Section 2.1 within any eighteen (18)-month period.

2.5 Costs

As stated above, the Complainant shall be required to pay the dispute provider an initial fixed fee. No action shall be taken by the dispute provider until it has received from the Complainant the initial fee. If the dispute provider has not received the fee within ten (10) calendar days of receiving the complaint, the complaint shall be deemed withdrawn and the administrative proceeding terminated. The Panel may furthermore order that the Registry Operator pay a fee equal to the filing fee initially paid by the complainant to cover the costs of the procedure and, if applicable, an additional amount for presenting a defense “without merit” (but the Panel shall not have authority to order an award of monetary damages or attorney costs beyond those incorporated into the filing fee pre-paid by the complainant) if it issues a finding against the Registry Operator.

The Registry Operator shall pay any fees within thirty (30) days of receiving the DRP final written decision. Should a Registry Operator fail to pay within the allotted time, ICANN shall issue a notice of material breach to the Registry Operator. Failure to cure such breach within the applicable cure period set forth in the Registry Agreement may result in the imposition of any of the enforcement tools available to ICANN under the Registry Agreement, including, but not limited to, suspension of the Registry Agreement until such time as the fees have been duly paid in full and notice of payment has been received by ICANN from the DRP.

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2.6 Availability of Court or other Administrative Proceedings

The mandatory administrative proceeding requirements set forth above shall not prevent Registry Operator or ICANN from submitting the dispute to an administrative panel in accordance with its applicable Registry Agreement or to a court of competent jurisdiction for independent resolution before such mandatory Post-Delegation Dispute proceeding is commenced or after such proceeding is concluded. In those cases where a Registry Operator advises the DRP that it instituted an action prior to the filing date of the complaint in the Post-Delegation Dispute proceeding, the DRP shall suspend or terminate the Post-Delegation Dispute proceeding upon verification that the filing date of the action under the Registry Agreement or the court action in a court of competent jurisdiction pre-dates the filing of the complaint in the Post-Delegation Dispute proceeding. In the event of any legal proceedings initiated in a court of competent jurisdiction during a Post- Delegation Dispute proceeding which is the subject of the complaint, the Panel shall either suspend or terminate the proceeding under the Post-Delegation Dispute Mechanism. In contrast, submitting the dispute to an administrative panel in accordance with its applicable Registry Agreement after the filing date of the complaint but prior to conclusion of the proceedings will not suspend or terminate the proceedings under the Post-Delegation Dispute Mechanism.

Any decision by the Panel shall not be implemented for a period of at least ten (10) business days (as observed by ICANN). During such time, either ICANN or the Registry Operator shall have the right to file a formal dispute under the applicable dispute resolution process as set forth in its Registry Agreement. The filing of such a dispute shall suspend the implementation of any remedies ordered hereunder pending the outcome of such dispute resolution process.

Except with regard to the payment of fees and the termination of the Registry Agreement set out in 2.4.3 above, any findings under this dispute process shall not act as precedent or otherwise affect or influence the resolution of subsequent disputes, nor shall it be relied upon or used against either Party in the resolution of any subsequent disputes.

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IRT RECOMMENDATION OF THICK WHOIS MODEL (FOR ALL NEW TLDS TO PROVIDE WHOIS INFORMATION UNDER THE THICK WHOIS OR REGISTRY LEVEL WHOIS MODEL)

As part of its charge, the IRT considered the public comments filed during the public comment period on the first Draft Guidebook for New gTLD Applicants (“DAG”). In doing so, the IRT identified numerous public comments calling for ICANN to amend the draft Registry Agreement set forth in the DAG to include a provision requiring all registry operators of new gTLDs to provide WHOIS information under the Thick WHOIS model as is done in the .info and .biz registries.

For clarity, the IRT defines the “Thick WHOIS” model as the central, registry-level provision of WHOIS information for all domain names registered within the registry. This model is in contrast to the “Thin WHOIS” model whereby the registry-level information is very limited and Internet users must rely on the registrar-level for the submission of robust WHOIS data.

After carefully consideration, the IRT believes that the provision of WHOIS information at the registry level under the Thick WHOIS model is essential to the cost-effective protection of consumers and intellectual property owners. For this reason, the IRT recommends that ICANN amend the proposed Registry Agreement to include an obligation that all registry operators for new gTLDs must provide registry-level WHOIS under the Thick WHOIS model currently in place in the .info and .biz registries.50

In addition, the IRT recommends that ICANN immediately begin to explore the establishment of a central, universal WHOIS database to be maintained by ICANN. Such a Universal database would provide robust, publicly accessible WHOIS database covering all gTLDs. The IRT understands that ICANN requested that this initiative take place as part of the .net redelegation. However, the IRT is not aware that this project has ever been started.

50 The IRT acknowledges that some comments raised privacy concerns about this recommendation. However, it notes that the thick registry Whois model has been employed in many new gTLDs for many years without any evidence of legal problems, and also that ICANN, on the unanimous recommendation of the GNSO Council, has established a procedure that can be invoked by any registry that believes it faces a conflict between its contractual Whois obligations and requirements of national privacy laws. See http://www.icann.org/en/announcements/announcement-18dec07.htm. To date, this procedure has never been invoked.

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IRT REPORT AND RECOMMENDATION ON USE OF THE ICANN DEVELOPED ALGORITHM IN THE STRING CONFUSION REVIEW DURING THE INITIAL EVALUTION

The IRT reviewed numerous public comments that called for a revision to the string confusion review that will be used during the Initial Evaluation of new gTLD applications. This procedure may be found in Section 2.1.1.1 of the DAG. Specifically, many comments stated that reliance on visual similarity alone was insufficient.

In fact, it is the position of the IRT that expanding the analysis to also include consideration of the aural and commercial impression (meaning) created by the string would assist in passing more applications through the system. Accordingly, the IRT recommends that the algorithm only be used to identify those strings that require the application of further analysis.51

Given that legacy registries (gTLD, sTLD and ccTLD) and trademark owners (GPML)52 will have the opportunity to object at a later point in the application process, it is felt that a simple expansion of the test for string comparison during the initial evaluation will not prejudice any third parties and will assist in eliminating any false positives caused by a simple visual comparison of strings. As agreed upon in its initial face-to-face meeting, the IRT task force charged with considering this issue did consider its proposed recommendation in light of the 10 guiding principles and believes that its recommendation should be implemented by ICANN in the third iteration of the DAG.

51 It is expected that the same test will be applied all stings to which the proposed gTLD applications will be compared (e.g., legacy TLDs, Reserved Names or Globally Protected Marks List).

52 Globally Protected Marks List, see pp. 16-18, supra.

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APPENDIX A STATEMENTS OF INTEREST

Caroline G. Chicoine Participant’s Current Vocation, Employer & Position. I am employed as Of Counsel to Fredrikson & Byron, P.A., a general practice law firm with 240+ attorneys in five offices, including Shanghai and Mexico. I practice out of Fredrikson & Byron's St. Louis office and am a member of the Missouri and U.S. Patent bars.

Type of work performed in the answer above. I practice in the area of intellectual property law. My practice focuses on trademarks, including trademark clearance, prosecution, maintenance and enforcement in the U.S. and abroad, negotiating and preparing trademark licenses, customs recordation in the U.S., and conducting intellectual property due diligence. My particular expertise is in the area of domain names and the Internet where I counsel clients with respect to domain name and online disputes, including preparation and prosecution of complaints under the Uniform Dispute Resolution Policy. On occasion, I register domain names for firm clients.

Identify any financial ownership or senior management/leadership interest in registries, registrars or other entities that are stakeholders or interested parties in ICANN policy or any entity with which ICANN has a transaction, contract, or other arrangement. In particular, disclose if the participant or an affiliate or a client intend or are considering applying for a new TLD. Neither I nor Fredrikson & Byron has any financial ownership or senior management/leadership interest in registries, registrars or other firms that are interested parties in ICANN policy or any entity with which ICANN has a transaction, contract, or other arrangement. I have advised and am advising several firm clients that are considering applying for a new TLD. To date, no clients have decided to proceed with an application.

Identify any type of commercial interest in ICANN policy development or implementation outcomes. Is the participant representing other parties with these interests? See above. I represent a number of brand owners who have great interest in ICANN policy development and implementation and how it impacts their businesses.

Describe any arrangements or agreements between the participant & any other group, constituency or person(s) regarding the participant’s selection as a member. There are no such arrangements or agreements.

Mette M. Andersen Participant’s Current Vocation, Employer & Position. Director and corporate counsel at LEGO Juris A/S, IP Team.

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Type of work performed in the answer above. Working with all types of IP, mainly trademarks and domain names. Responsible for the development departments within the LEGO Group, clearing and protecting IP.

Identify any type of commercial interest in ICANN policy development or implementation outcomes. Is the participant representing other parties with these interests? No such representations but I do get input from our Danish companies.

Describe any arrangements or agreements between the participant & any other group, constituency or person(s) regarding the participant’s selection as a member. None.

Jonathan Cohen Participant’s Current Vocation, Employer & Position. Senior Partner with Shapiro, Cohen an Intellectual Property Law Firm in Ottawa, Canada.

Type of work performed in the answer above. Full range of IP work including prosecution and enforcement of TM & DN rights; management of firm; involvement actively with ICANN, FICPI, and other organizations relating to global IP issues.

Identify any type of commercial interest in ICANN policy development or implementation outcomes. Is the participant representing other parties with these interests? No commercial interest in outcome.

Describe any arrangements or agreements between the participant & any other group, constituency or person(s) regarding the participant’s selection as a member.

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None. I work with INTA, FICPI, ICANN, IPC, and other organizations but in our case is there any agreement regarding this position on the IRT.

J. Scott Evans Participant’s Current Vocation, Employer & Position. Attorney, Yahoo! Inc., Senior Legal Director, Global Brand & Trademarks.

Type of work performed in the answer above. Handle all international trademark clearance, prosecution and maintenance. Client counseling on trademark and copyright issues. Advertising review. In-house education on trademark, copyright and advertising law. Defend company when accused of IP infringement. IP policy. ICANN policy.

Identify any type of commercial interest in ICANN policy development or implementation outcomes. Is the participant representing other parties with these interests? To my knowledge, Yahoo! has no direct commercial interest in ICANN policy development. As a domain name reseller and Internet portal, ICANN policies do indirectly affect Yahoo! and its users.

Describe any arrangements or agreements between the participant & any other group, constituency or person(s) regarding the participant’s selection as a member. I have agreed to work with the Business Constituency to ensure their views are put forth during the IRT process and to keep the BC informed of the IRT process.

Zahid Jamil Participant’s Current Vocation, Employer & Position. Chairman Domain Name Dispute Resolution Center (for .pk ccTLD disputes); Attorney: Head of Chambers, Jamil & Jamil, Barristers-At-Law.

Type of work performed in the answer above. Panelist, founding member of the DNDRC, IP & IT attorney. Representing IT companies in Pakistan.

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Identify any type of commercial interest in ICANN policy development or implementation outcomes. Is the participant representing other parties with these interests? No commercial interest. Am a BC Counselor to the GNSO.

Describe any arrangements or agreements between the participant & any other group, constituency or person(s) regarding the participant’s selection as a member. No arrangement or agreement or understanding with any such group, constituency or person(s) to become or be a participant of the IRT. Am member of a BC group focusing on IRT issues.

Stacey King Participant’s Current Vocation, Employer & Position. London, United Kingdom; Richemont; Senior Internet Lawyer, IP.

Type of work performed in the answer above. Manage all Internet related matters within the Intellectual Property department of Richemont for Richemont and its group companies and maisons, including management of domain name portfolios and enforcement.

Identify any type of commercial interest in ICANN policy development or implementation outcomes. Is the participant representing other parties with these interests? Richemont has no commercial interest in ICANN policy development or implementation outcomes. I represent Richemont and its Group companies and maisons on the IRT.

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Describe any arrangements or agreements between the participant & any other group, constituency or person(s) regarding the participant’s selection as a member. Richemont has no arrangements or agreements in place but we do work extensively with third parties such as the IPC and INTA.

Héctor Ariel Manoff Participant’s Current Vocation, Employer & Position. I am Principal Partner at Vitale, Manoff & Feilbogen International Law Firm in Buenos Aires, Argentina. I am the head of the IP legal practice of the Firm. I am member of the board of ISOC (Internet Society) Argentina chapter. I am arbitrator for disputes related to domain names for NAF. I am President of the Trademark and Patent Committee of the Lawyers Association of Buenos Aires. I am chairing the SC on well known trademark and dilution of INTA.

Type of work performed in the answer above. I work advising client about trademarks law, domain names, patents and copyrights, including license agreements. I am also an active litigator. I am arbitrator.

Identify any type of commercial interest in ICANN policy development or implementation outcomes. Is the participant representing other parties with these interests? My clients, as trademark owners, will be affected for the implementation of the new TLD but I am not representing a client that have specific interest in this process.

Jeffrey J. Neuman, Esq. Participant’s Current Vocation, Employer & Position. I currently serve as the Vice President of Law & Policy for NeuStar, Inc., the domain name registry for the .biz and .us top-level domains.

Type of work performed in the answer above.

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In this role, I am responsible for all legal and policy issues with respect to the .biz and .us TLDs as well as for various other non-registry lines of business within NeuStar. In addition, NeuStar may be pursuing new top-level domains both as a front-end and as a back-end registry operator.

Identify any financial ownership or senior management/leadership interest in registries, registrars or other entities that are stakeholders or interested parties in ICANN policy or any entity with which ICANN has a transaction, contract, or other arrangement. In particular, disclose if the participant or an affiliate or a client intend or are considering applying for a new TLD. NeuStar is the domain name registry for .biz and .us as well as the back-end operator for .travel and .tel. As a Vice President within NeuStar, I am in a senior leadership position and I do own a very small amount of equity. NeuStar does not own or have any interest in any domain name registrar, nor is it involved currently in any other constituency within ICANN.

Identify any type of commercial interest in ICANN policy development or implementation outcomes. Is the participant representing other parties with these interests? Other than being a “contracted party” bound by Consensus Policies, as defined in the .biz top-level domain agreement, and pursuing new gTLDs, NeuStar does not have any other commercial interest in ICANN GNSO policy development outcomes.

Describe any arrangements or agreements between the participant & any other group, constituency or person(s) regarding the participant’s selection as a member. I currently serve as the alternate chair for the gTLD Registries Constituency and as the official gTLD Constituency representative for .biz.

Jonathon L. Nevett Participant’s Current Vocation, Employer & Position. I am Senior Vice President for Network Solutions.

Type of work performed in the answer above. Responsible for various domain services, policy issues, government affairs, and business ethics.

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Identify any type of commercial interest in ICANN policy development or implementation outcomes. Is the participant representing other parties with these interests? Due to my various positions, I consult with and discuss New TLD policy issues with various other registrars and industry-related entities.

Describe any arrangements or agreements between the participant & any other group, constituency or person(s) regarding the participant’s selection as a member. I serve on the Board of 2 Network Solutions’s joint ventures – NameJet LLC and Central Registry Solutions LLC. Since May 2006, I have served as Chair of the ICANN Registrar Constituency. Additionally, I currently serve as co-chair of the DNS Working Group of the United States Council of International Business.

Russell Pangborn Participant’s Current Vocation, Employer & Position. In-house counsel for Microsoft; Associate General Counsel – Trademarks.

Type of work performed in the answer above. Head of the Trademark group, responsible for group management, oversight of clearance, counseling, enforcement, prosecution/maintenance, licensing, domain name enforcement/UDRP, trademark related policy and outreach.

Identify any financial ownership or senior management/leadership interest in registries, registrars or other entities that are stakeholders or interested parties in ICANN policy or any entity with which ICANN has a transaction, contract, or other arrangement. In particular, disclose if the participant or an affiliate or a client intend or are considering applying for a new TLD. Microsoft is an accredited registrar. Also, as a leading technology company, Microsoft has a vested interest in maintaining the security and viability of the Internet. Microsoft is closely monitoring the developments surrounding the proposed gTLD expansion. Whether Microsoft pursues any new TLD is yet to be determined.

Identify any type of commercial interest in ICANN policy development or implementation outcomes. Is the participant representing other parties with these interests? I represent Microsoft’s interests in this effort.

Describe any arrangements or agreements between the participant & any other group, constituency or person(s) regarding the participant’s selection as a member. INTA is active with ICANN and I am a member of the INTA Board of Directors and Executive Committee.

Mark V.B. Partridge Participant’s Current Vocation, Employer & Position. I am a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a law firm focused on trademark, copyright and Internet issues. I serve on the IPC as a

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representative of the American Bar Association and the Association Internationale pour la Protection de la Propriete Intellectuelle (AIPPI).

Type of work performed in the answer above. I represent clients of the firm in matters falling within the scope of our firm's practice. This has included representation of registries, registrars, registrants and trademark owners in domain name disputes and other internet matters. I also serve as a neutral in UDRP proceedings for WIPO and I have served as a mediator in federal court proceedings involving domain names.

Identify any type of commercial interest in ICANN policy development or implementation outcomes. Is the participant representing other parties with these interests? I am not aware of any specific commercial interest in this regard, although I represent a ccTLD registry that may have such an interest.

Describe any arrangements or agreements between the participant & any other group, constituency or person(s) regarding the participant’s selection as a member. I have no arrangement or agreement with anyone regarding my selection as a member of IRT. As noted above, I participate in the IPC as a representative of ABA and AIPPI.

Kristina Rosette Participant’s Current Vocation, Employer & Position. I am employed as a Special Counsel by Covington & Burling LLP ("Covington"), a general practice law firm with over 650 lawyers in eight offices in four countries. I am resident in Covington's Washington, DC office and am a member of the District of Columbia bar.

Type of work performed in the answer above. I specialize in Internet and trademark matters, and represent trademark owner clients in connection with such matters. Among my responsibilities, I develop and implement strategies in the areas of offensive and defensive domain name registration, Internet monitoring and enforcement, anti-counterfeiting and anti-fraud; reclaim domain names through negotiation, arbitration (under the UDRP, .biz STOP, and .mobi Sunrise Challenge policies, thus far), and litigation; advise clients on the purchase and use of keywords and trademark aspects of search engine

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optimization; negotiate and draft transactional documents relating to Internet-related assets and perform due diligence reviews of such assets; and design trademark usage policies and guidelines and anti-counterfeiting strategies for use in virtual worlds. In connection with advising firm clients of generally noteworthy trademark- or Internet-related developments, I have also provided information and updates on domain name system developments (e.g., posting of reports for public comment, announcements of new policies such as the Domain Name Transfer Policy, .eu Sunrise requirements). All such communications have been, and will continue to be, based solely on publicly available information and documents. From time to time, I register or acquire in my own name domain names for firm clients. I am currently the registrant of several domain names, both on behalf of firm clients and in an individual capacity. From time to time and as circumstances warrant, I have completed and submitted Whois Data Problem Reports and submitted registrar compliance complaints to ICANN on behalf of firm clients. Since 2004, I have been a member of the Registration Practice and DNS Administration Subcommittee of the International Trademark Association's Internet Committee, and chair the Subcommittee for the 2008-2009 term. The Czech Arbitration Court ("CAC"), which the ICANN Board approved as a UDRP Provider in January 2008, has selected me as a UDRP panelist. I have determined that Covington does not represent ICANN and does not represent any clients in matters in which ICANN is an adverse party. Covington did represent the International Cooperative Alliance in connection with the formation and establishment of DotCooperation LLC, the .coop registry operator, but that matter has been closed for some time. I have also determined that Covington neither represents any gTLD or sTLD registry operator in matters relating to its capacity as a registry operator nor represents any client in matters adverse to such registry operators as registry operators. Based on the responses to my inquiries, Covington does not represent any ccTLD registry operator in its capacity as a registry operator nor does it represent any client in matters adverse to any ccTLD registry operators as registry operators. To the best of my knowledge, Covington does not represent any ICANN-accredited registrar in its capacity as a registrar nor does it represent any firm client in a matter adverse to a registrar as registrar. From time to time, Covington has represented firm clients in intellectual property matters adverse to registrars, and it is likely to do so periodically in the future. I have been involved in such matters and expect to be involved in additional such matters in the future from time to time. I am not representing any firm client through my participation on the IRT.

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Identify any type of commercial interest in ICANN policy development or implementation outcomes. Is the participant representing other parties with these interests? See above.

Ellen B. Shankman Participant’s Current Vocation, Employer & Position. Attorney, head of own firm, Ellen Shankman & Associates.

Type of work performed in the answer above. Advise on Trademark & Internet issues; brand protection.

Identify any type of commercial interest in ICANN policy development or implementation outcomes. Is the participant representing other parties with these interests? Represent a number of trademark brand owners who care deeply about the outcome of the policy and implementation — but only as part of the general community.

Describe any arrangements or agreements between the participant & any other group, constituency or person(s) regarding the participant’s selection as a member. Currently a member of the Board of Directors of INTA — but have not received any special instructions in that regard, other than my general fiduciary duties. Nothing more formal than desire to represent range of brand owners.

David Taylor Participant’s Current Vocation, Employer & Position. Partner in Lovells LLP international law firm heading up the Lovells Domain Name Practice.

Type of work performed in the answer above. Advising clients in intellectual property and technology issues and in particular the protection of brands online and domain names; I assist clients with domain name strategy, domain name registrations and domain name recovery on a global basis.

Page 56 of 69

Also act as a domain name panelist with WIPO (for the UDRP) the Czech Arbitration Court (for .EU and the UDRP) and Nominet (for .UK).

Identify any type of commercial interest in ICANN policy development or implementation outcomes. Is the participant representing other parties with these interests? No direct commercial interest in ICANN policy development.

Describe any arrangements or agreements between the participant & any other group, constituency or person(s) regarding the participant’s selection as a member. I am an individual member of the IPC & member of various other Intellectual Property organizations; INTA, Marques, ECTA and the Society of Computers and Law. No agreement or understanding with any of these groups as to participation or views in connection with the IRT.

Fabricio Vayra Participant’s Current Vocation, Employer & Position. NY, Washington, DC; Time Warner Inc.; Senior Counsel – Intellectual Property.

Type of work performed in the answer above. Head of trademark function and related online enforcement as well as lead on internet governance issues.

Identify any type of commercial interest in ICANN policy development or implementation outcomes. Is the participant representing other parties with these interests? We represent the Time Warner Companies as a whole (about Time Warner http://www.timewarner.com/corp/aboutus/our_company.html).

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Describe any arrangements or agreements between the participant & any other group, constituency or person(s) regarding the participant’s selection as a member. There are no agreements/arrangements in place, but Time Warner works actively within numerous constituency groups, including IPC, COA, BC, and INTA.

Mary W.S. Wong Participant’s Current Vocation, Employer & Position. I am a Professor of Law with the Franklin Pierce Law Center, an American Bar Association ("ABA") accredited, non-profit US law school. The Law Center is well- known internationally for its intellectual property program, innovations in practice- based learning and an international student body.

Type of work performed in the answer above. I teach and do research in the areas of copyright and Internet law, with particular emphasis on international and comparative issues and the legal challenges posed by new technology to intellectual property policy.

Identify any type of commercial interest in ICANN policy development or implementation outcomes. Is the participant representing other parties with these interests? No. Although I am involved with various committees and activities in the ABA, I do not represent any clients, nor do I have any commercial interest in ICANN policy development or implementation outcomes.

Describe any arrangements or agreements between the participant & any other group, constituency or person(s) regarding the participant’s selection as a member. None. Although I am on the GNSO Council representing the Non-Commercial Users Constituency ("NCUC"), neither the NCUC nor any of its members were involved either in my selection as a member of the IRT or my acceptance of the invitation to join the IRT.

Nick Wood Participant’s Current Vocation, Employer & Position. In charge of domain name management company working exclusively with intellectual property owners and the professionals who advise them. Position: Managing Director.

Type of work performed in the answer above.

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Responsible for vision of company, P&L, all marketing & communications, client relations, strategic consultancy from time to time delivered through Valideus Ltd., a company formed for that purpose.

Identify any financial ownership or senior management/leadership interest in registries, registrars or other entities that are stakeholders or interested parties in ICANN policy or any entity with which ICANN has a transaction, contract, or other arrangement. In particular, disclose if the participant or an affiliate or a client intend or are considering applying for a new TLD. Com Laude is the trading name of NomIQ which is an ICANN accredited registrar. I am the co-owner and MD of Com Laude and NomIQ. We have consulted with Deloitte on validation matters in the past. Deloitte has been retained by ICANN in the past. We are coordinating a not-for-profit bid for a DOT LONDON. We have the support of the Mayor of London and other key agencies. Some of our clients may be interested in applying under the new gTLD process and it may be that we will assist them.

Identify any type of commercial interest in ICANN policy development or implementation outcomes. Is the participant representing other parties with these interests? I am representing MARQUES, the European Association of Trade Mark Owners.

Describe any arrangements or agreements between the participant & any other group, constituency or person(s) regarding the participant’s selection as a member. MARQUES is a member of the IPC. I’m also a member of various other professional associations.

David H. Maher Participant’s Current Vocation, Employer & Position. I am Senior Vice President – Law & Policy of Public Interest Registry (PIR), manager of the registry .ORG.

Type of work performed in the answer above. General Counsel of PIR, develop and oversee implementation of policy for the company. Chair of Registries Constituency.

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Identify any type of commercial interest in ICANN policy development or implementation outcomes. Is the participant representing other parties with these interests? ICANN policy development and implementation outcomes may have a financial impact on TLD registries including PIR. I also serve as Chair of the Registries Constituency.

Describe any arrangements or agreements between the participant & any other group, constituency or person(s) regarding the participant’s selection as a member. I have been asked to serve as an alternate member representing the Registries Constituency.

Tim Ruiz Participant’s Current Vocation, Employer & Position. I am the Vice President of Corporate Development and Policy for GoDaddy.com, Inc., an ICANN accredited registrar.

Type of work performed in the answer above. Identify/coordinate strategic opportunities. Represent GoDaddy.com in the Registrar Constituency and develop, recommend, and champion GoDaddy.com positions on relevant ICANN policy issues.

Identify any financial ownership or senior management/leadership interest in registries, registrars or other entities that are stakeholders or interested parties in ICANN policy or any entity with which ICANN has a transaction, contract, or other arrangement. In particular, disclose if the participant or an affiliate or a client intend or are considering applying for a new TLD. GoDaddy.com is an ICANN accredited registrar. I am also on the Board of Directors of doMEn, doo, the government contracted registry operator for the .me ccTLD. I represent GoDaddy.com as a member of the dotMOBI Advisory Group (MAG). I have been elected by MAG members to the MAG Steering Committee & represent the MAG Steering Committee on the dotMOBI Policy Advisory Board. GoDaddy.com has not decided whether it will, or even will be able to, apply for a new gTLD. doMEn has an interest in possible IDN versions of the .me ccTLD, but no definitive plans to apply for one.

Identify any type of commercial interest in ICANN policy development or implementation outcomes. Is the participant representing other parties with these interests? Policy development outcomes of the GNSO have financial and/or commercial impact on ICANN accredited registrars, including GoDaddy.com. I represent GoDaddy.com’s membership within the Registrar Constituency. I have been elected to the GNSO Council by the Registrar Constituency and represent them in that role.

Describe any arrangements or agreements between the participant & any other group, constituency or person(s) regarding the participant’s selection as a member.

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I have been asked to serve as an alternate member representing the Registrar Constituency.

Page 61 of 69

APPENDIX B FORM COMPLAINT

Note: This is an example of the fields that should be contained on the form complaint with check boxes and the ability to fill in specific information where noted.

FORM COMPLAINT

1. “Perjury” penalty/indemnification statement (to be determined) 2. Identification of owner or authorized agent 3. Accurate/true and up-to-date 4. Good faith belief that the domain name infringes on one of the tm owner’s rights 5. Contact info (already in form for pre-registered) 6. Trademark reg./examination country (already in form for pre-registered) 7. Request to freeze upon receipt of notice 8. Request to take down upon successful completion (either default or answer) 9. Identify registrant (PDF of Whois attached) 10. Domain Names Trademark Domain Names ABC Abc.xyz Abc.xyz XYZ Xyz.abc Xyz.abc

11. No legitimate right or interest (all three) ☐ Not known by name ☐ Not bona fide use ☐ Not related or authorized 12. Bad Faith factors (one or more of these) ☐ Sold for profit ☐ Pattern ☐ Disrupting a competitor ☐ Sold for commercial gain Comment Section (mandatory)

13. PDF copy of site is attached 14. Electronic signature

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APPENDIX C TIERED FEE SCHEDULE

RECOMMENDED FEE STRUCTURE

Examination Complainant Respondent 0-25 $200 $0 26-100 $250 $250 101-200 $300 $300 200+ TBD TBD

Complainant pays at filing. For 26 or more names, respondent pays Answer fee. Loser pays; winner gets refund (prorated if some domains are excluded). Default Post-30 days Respondent 0-25 $50 26-100 $300 101-200 $350 200+ TBD + $50

Respondent pays normal Answer fee plus $50. For 26 or more names, loser pays. Winner gets refund (prorated if some domains are excluded). If Respondent wins, does not get $50 late filing fee back.

Appeal Appellant Ombudsman $100 Reinstate site pending $100 filed appeal in court

Appeal filing fees refundable if successful.

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APPENDIX D FORM ANSWER

Note: This is an example of the fields that should be contained on the form answer with check boxes and the ability to fill in specific information where noted.

FORM ANSWER

1. Confirmation of holder ID 2. Confirm accurate and up-to-date Whois 3. I have a legitimate right/interest in the domain name(s). ☐ Known by the name ☐ Related to or authorized ☐ Non-commercial/fair use Comments (mandatory)

Designation of rights to certain domain names only: (List of domain names contesting) 4. Not registered or using bad faith Response Comments (mandatory)

5. Complaint re: abusive use of process Comments (mandatory)

6. Statement that Answer is true and correct 7. Electronic signature

Page 64 of 69

APPENDIX E FORM URS DECISION

Note: This is an example of the fields that should be contained on the form decision with check boxes and the ability to fill in specific information where noted.

FORM DECISION

1. The Parties 2. Domain Name(s) – Automated list inserted 3. Mark/Registration at Issue – Automated list inserted 4. Compliance with Notice Requirements Date of first email: Date of certified letter: 5. Domain Name(s) is: ☐ Identical to mark(s) ☐ Confusingly similar to mark(s) Comments 6. Legitimate Rights to the Domain Name ☐ Not known by name ☐ Not bona fide use ☐ Not related or authorized Comments 7. Bad Faith Use and Registration ☐ Sold for profit ☐ Pattern ☐ Disrupting a competitor ☐ Sold for commercial gain Comments 8. Decision (mandatory)

9. Abusive Filing of Complaint ☐ Alleged in answer Findings (mandatory)

☐ Is an abusive use of the URS 10. Any Comments (optional)

11. Signed 12. Date

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APPENDIX F

Complaint

Whois Freeze Upon URS Compliance Compliance; Notice Period PROCESS – Review FINDING Begins FOR RIGHTS OWNER Answer

Examination

Takedown Of Site & Redirect Find For To Provider Page (filing fee, Complainant if over 25 domain names, reimbursed to complainant)

Appeal Replug Site/Whois Filed Freeze Maintained

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APPENDIX F (cont’d)

Complaint

Whois Freeze Upon URS Compliance Compliance; Notice Period PROCESS – Review FINDING Begins FOR DOMAIN NAME Answer OWNER

Examination

Whois Freeze Released Find For (registrant fee, if any, Registrant reimbursed)

Appeal Filed

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APPENDIX F (cont’d)

Complaint

Whois Freeze Upon URS Compliance Compliance; Notice Period PROCESS – Review DEFAULT Begins

Default

Default 30 days = Replug Site Answer +30 days = Site Down

For Rights Owner = Site Down & Reimburse Fees If Over 25 Decision For Registrant = Site Up & Whois Freeze Lifted; Fees, If Any, Minus $50 Reimbursed

If Registrant, Replug Appeal Site/Whois Freeze Filed Maintained

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APPENDIX G POST-DELEGATION DISPUTE MECHANISM

PENTALTY OUTCOME BASE FEE REFUND PORTION Complainant Wins $0.00 $0.00 $25,000.00 Complainant Loses $15,000.00 $0.00 $10,000.00 Complainant Loses and Complaint “Without Merit” $15,000.00 $10,000.00 $0.00 Registry Operator Wins $0.00 $0.00 N/A Registry Operator Loses $15,000.00 $0.00 N/A Registry Operator Loses and Defense “Without Merit” $15,000.00 $10,000.00 N/A

The above table is for discussion purposes only. The fee amounts used are for illustrative purposes only and merely reflect the IRT’s recommendation that the fees by substantial enough to cover costs and deter gaming of the system by either trademark owners or Registry Operators.

The table assumes a total fee of US$25,000.00 which consists of two components:

1. US$15,000.00 administrative fee and costs. 2. US$10,000.00 additional portion for compensation to winning party upon a finding that a complaint or Registry Operator defense is “without merit.” Under certain determinations, this portion of the fee may be refunded.

As set out in the body of the proposal, this US$25,000.00 fee is paid up front by the complainant upon initiation of the Post- Delegation Dispute. The fees are collect from the Registry Operator only in the event a Panel finds against the Registry Operator.

Page 69 of 69 Special Trademark Issues Work Team Date: 11 Dec 2009 Recommendations

Special Trademark Issues Review Team Recommendations

STATUS OF THIS DOCUMENT These are the recommendations for the Generic Names Supporting Organization (GNSO) from the Special Trademark Issues Review Team (STI) on the policy implications of certain rights protection mechanisms proposed for the New GTLD Program.

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BACKGROUND AND APPROACH TAKEN

On 12 October 2009, the ICANN Board sent a letter1 to the GNSO requesting its review of the policy implications of certain trademark protection mechanisms proposed for the New gTLD Program, as described in the Draft Applicant Guidebook and accompanying memoranda. Specifically, the Board Letter requested that the GNSO provide input on whether it approves the proposed staff model, or, in the alternative, the GNSO could propose an alternative that is equivalent or more effective and implementable. In response, the GNSO adopted a resolution creating the Special Trademarks Issues review team (STI) on 28 October 20092 which included representatives from each Stakeholder Group, At-Large, Nominating Committee Appointees, and the GAC (identified on Annex 3), to analyze the specific rights protection mechanisms that have been proposed for inclusion into the Draft Applicant Guidebook.

At its initial meeting in Seoul, the STI decided to proceed by developing an alternative proposal for the GNSO’s consideration. Since Seoul, the STI has participated in multiple telephone conferences per week in an effort to identify an alternative model that would reflect the consensus position of the members of the STI. The alternative model described below reflects compromises made by each of the stakeholder representatives in an effort to find a solution that would be more effective and implementable than the Staff Model.

In preparation for the STI, each constituency and stakeholder group met with its STI representatives and had the opportunity to prepare and submit principles and comments to the STI group. The STI used these principles and materials in its deliberations and negotiations. While the STI alternative proposal does not reflect the opinion or approval

1 A copy of the Board Letter is attached as Annex 1 to this Report. 2 The text of the GNSO Council Resolution is contained in Annex 2 to this Report.

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of any constituency or stakeholder group, it does reflect the informed effort of the diverse group of representatives. The STI was comprised largely of attorneys, from all SGs, with years of Internet and trademark law, plus a few non-lawyers. It is expected that SG approval will be sought by the time the GNSO Council votes on the recommendations contained in this Report. The next Council meeting is scheduled for 17 December 2009.

The STI work focused its attention on the areas of the Staff Model that raised concerns for the members of the STI. Identified below are principles that address these concerns, along with an assessment of the level of consensus achieved within the STI for each of these principles. For the purposes of this Report, the STI has adopted the following conventions to describe the level of agreement among the STI for each principle:

• Unanimous Consensus • Rough consensus - a position where a small minority disagrees but most agree • Strong Support- where there may be significant opposition • No Consensus

Those minority opinions that were known at the time this Report was written are included in Annex 4. Others may be appended by Stakeholder Groups prior to the vote of the GNSO Council.

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TRADEMARK CLEARINGHOUSE PROPOSAL

There is a consensus3 among the members of STI that though this was not a rights protection mechanism, the creation of a Trademark Clearinghouse (TC) to be operated by an arms-length contractor, would be a beneficial implementation tool for rights protection mechanisms, such as sunrise or TM Claims, and therefore should be included in the New GTLD program, except as indicated below. The STI recognizes that a Trademark Clearinghouse could serve as a convenient location to store registered trademark information in a centralized location on behalf of trademark holders, and could create efficiencies for trademark owners, as well as registries which will benefit from having one centralized database from which to interact to obtain the necessary trademark information to support its pre-launch rights protections mechanisms. The Business Constituency has widespread concerns regarding the Trademark Clearinghouse as expressed in its minority statement included in Annex 4 to this Report. Other minority opinions have been included in Annex 4 to address specific issues raised by the STI proposal described below.

The STI Trademark Clearinghouse Model includes the following features:

Feature STI Principles Level of Consensus 1 Name

1.1 Trademark The name of the rights Unanimous Clearinghouse protection mechanism should Consensus be the “Trademark Clearinghouse” to signify that only trademarks are to be included in the database.

3 This is not a unanimous consensus as a result of the BC Minority Position referenced in Annex 4.

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2 Functionality of Trademark Clearinghouse 2.1 Separation of The TC should be required to Unanimous Functions separate its two primary Consensus functions: (i) validation of the trademarks included in the TC, and (ii) serving as a database to provide information to the new gTLD registries. Staff should have the discretion to determine whether the same provider could serve both functions, or whether two providers would be more appropriate.

2.2 Use of Regional The TC Service Provider(s) Unanimous Expertise should utilize regional Marks Consensus Validation Service Providers (VSP) (whether directly or through sub-contractors) to take advantage of local experts who understand the nuances of the trademark rights in question.

2.3 Segregation of TC The TC Service Provider Unanimous Database should be required to maintain Consensus a separate TC database, and may not store any data in the TC database related to its provision of ancillary services, if any.

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2.4 Global Submission of The TC should be able to Unanimous Data into the TC accommodate submissions Consensus from all over the world. To accommodate this principle, the entry point for trademark holders to submit their data into the TC database could be regional entities or one entity (provided that can demonstrate it can accommodate language/currency/cultural issues globally). The system to be adopted by the TC Service Provider for submissions from trademark holders should allow for different/local languages, with the exact implementation details to be left to Staff. Multiple portals for entry of data to be submitted into the TC Database would be acceptable.

2.5 Trademark Holder The trademark holder would Unanimous Submission Through only be required to submit to Consensus One Entry Point one entry point if it has multiple registrations covering many regions. If multiple entities used, ICANN should host an information page describing how to locate regional submission points.

2.6 One Centralized Registry should only need to Unanimous Database for Registry connect with one centralized Consensus Use database to obtain the information it needs to conduct its sunrise processes or TM Claims Services (TM Claims), regardless of the details of the TC service provider and its contract(s) with ICANN.

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3 Relationship with ICANN

3.1 ICANN Accreditation The Service Provider(s) Rough Consensus Agreement for providing the validation of the Validation Services trademarks submitted into the BC Minority TC should adhere to rigorous Position standards and requirements that would be specified in an ICANN contractual agreement. The model to be suggested for this contractual relationship would be similar to the detailed registrar accreditation agreement, rather than the minimal accreditation practice adopted by ICANN for UDRP providers (e.g., WIPO, NAF, and others).

3.2 ICANN Agreement for The TC Service Provider Rough Consensus Database Services responsible for maintaining the centralized database BC Minority should have formal, detailed Position contract with ICANN. The contract should include service level agreement metrics, customer service availability (seven days per week, 24 hours per day, 365 days per year), data escrow requirements, and equal access requirements for all persons and entities required to access the TC database. The Agreement should also include indemnification by Service Provider for errors such as false positives for participants, such as Registries, ICANN, Registrants, and Registrars.

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4 Marks Eligible for Inclusion in the TC

4.1 National or The TC Database should be Rough Consensus Multinational required to include nationally Registered Marks or multinationally registered BC Minority “text mark” trademarks, from position all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)

4.2 Common Law Rights No common law rights should Rough Consensus be included in the TC Database, except for court At-Large Minority validated common law marks; Position provided that a new gTLD Registry may elect to have the BC Minority TC Service Provider collect Position and verify common law right provided that it conforms to Recommendation 2.3. The TC Service Provider could charge higher fees to reflect the additional costs associated with verifying these common law rights.

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4.3 Conversion of Mark The TC Database should be Rough Consensus into TC Database structured to report to registries strings that are BC Minority considered an “Identical Position Match” with the validated trademarks. “Identical Match' means that the domain name consists of the complete and identical textual elements of the Mark. In this regard: (a) spaces contained within a mark that are either replaced by hyphens (and vice versa) or omitted, (b) only certain special characters contained within a trademark are spelt out with appropriate words describing it ( @ and &.), (c) punctuation or special characters contained within a mark that are unable to be used in a second-level domain name may either be (i) omitted or (ii) replaced by spaces, hyphens or underscores and still be considered identical matches, and (d) no plural and no "marks contained" would qualify for inclusion.

5 Mandatory Pre- Launch Use of the Trademark Clearinghouse 5.1 TM Claims or Sunrise All new gTLD registries should Unanimous Use be required to use the TC to Consensus support its pre-launch rights protection mechanisms (RPMs) that should, at a minimum, consist of a TM Claims process or a sunrise process that meets the minimum standards and

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sunrise challenge grounds as specified in the IRT Report,4 except to the extent that a registry elects not to extend sunrise protection for certain trademarks as described in 5.2 below). There is no requirement that a registry adopt both of these RPMs.

5.2 Protection for all New gTLD registries should Rough Consensus Trademarks in the TC provide equal protection to all trademarks in the TC for their RPMs, except as follows: IPC Minority Statement (i) Inclusion of a trademark in the Trademark Clearinghouse from a country where there is no substantive review does not necessarily mean that a new gTLD Registry must include those trademarks in a Sunrise or IP Claims Process; or

(ii) Registries shall have discretion to decide whether to grant protections to trademarks in the TC. ICANN could allow specialized gTLDs to restrict eligibility for sunrise registrations to fit the purpose of the registry as described in the charter (example, .shoe could restrict

4 Please refer to the IRT Report posted at http://www.icann.org/en/topics/new-gtlds/irt-final-report- trademark-protection-29may09-en.pdf, Section 6, Standard Sunrise Registration Process.

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sunrise to only trademark registrations in shoe-related class of goods and services).

6 Voluntary Use of the . Trademark Clearinghouse

6.1 Use of TC For Ancillary There should be no bar on the Rough Consensus Services TC Service Provider or other third party service providers BC Minority providing ancillary services on Position a non-exclusive basis. Such services could include, without limitation, a “marks contained” service, or a TM watch service. In order not to have a competitive advantage over competitors, the TC database should be licensed to competitors interested in providing ancillary services on equal and non-discriminatory terms, and on commercially reasonable terms; provided that the TC Service Provider is not materially advantaged in the provision of such ancillary services by virtue of it being the TC Service Provider. The specific implementation details should be left to Staff to address possible monopoly and competition concerns, and all terms and conditions related to the provision of such services shall be included in the TC Service Provider’s agreement with ICANN and subject to ICANN review. As stated in 2.3, if the TC Service Provider provides such ancillary services, any information should be stored in a separate database. Access by the Registrant to verify and

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research TM Claims Notices shall not be considered an ancillary service, and shall be provided without cost to the Registrant.

6.2 Pre-Registration of The TC could be used to Rough Consensus URS enable URS Procedures by allowing trademark holders to BC Minority preregister their trademark Position information to support a future URS action based on rights in jurisdictions where there is substantive review of trademark registrations. The TC shall provide confirmation of the TM, and its jurisdictions, to the URS Providers for a fee.

7 Mandatory Post- Launch Use of the TC

7.1 No Required Post- Use of the TC Database to Rough Consensus Launch TM Claims support post-launch TM Claims shall not be required. At-Large Minority Position

BC Minority Position

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8 Required Elements of TM Claims Notice

8.1 TM Claims Notice to The TM Claims Notice should Rough provide clarity to provide clear notice to the Consensus Registrant Registrant of the scope of the trademark holder’s rights, in BC Minority order to minimize the chilling Position effect on registrants. A form TM Claims Notice that describes the required elements is attached as Annex 5. If feasible, the TM Claims Notice should provide links, or provide alternative methods of providing access, to the registrant for accessing the TC Database information referenced in the TM Claims Notice for a fuller understanding of the TM rights being claimed by the trademark owner. These links shall be provided in real time without cost to the Registrant. The implementation details should be left to ICANN Staff to determine how to easily provide access to registrants to this information. The TM Claims notice should be preferably be provided in the language used for the rest of the interaction with the registrar or registry, but at the very least in the most appropriate UN-sponsored language (as specified by the prospective registrant or registrar/registry).

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9 Effect of Filing with the TC 9.1 TC is a depository of It should be clearly stated in Unanimous information and does mandate of the TC that Consensus not create legal rights inclusion of a TC validated mark into the Database is not proof of any right, nor does it confer any legal rights on the trademark holder. Also, failure to file should not be perceived to be lack of vigilance by Trademark holders.

10 Costs of Operating the TC 10.1 Costs of Operating Costs should be completely Rough Clearinghouse borne by the parties utilizing Consensus the services. ICANN should not be expected to fund the Joint RySG and costs of the operating the TC. NCSG Minority The TC should not be Position expected to fund ICANN from its fees. BC Minority Position

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UNIFORM RAPID SUSPENSION PROCEDURE

There is consensus among the members of STI that creation of a Uniform Rapid Suspension (URS) procedure would be a beneficial rights protection mechanism for inclusion in the New GTLD program. The STI recognizes that the URS could provide trademark holders with a cost effective, expedited process in instances of clear cut instances of trademark abuse, provided that the procedure includes appropriate safeguards to protect registrants who engage in legitimate uses of domain names. Despite the expedited nature of the URS, Staff shall recommend a uniform procedure for and URS Service providers that shall provide procedures consistent with fair notice, justice, and due process.

The STI URS Model includes the following features:

Feature Principle Level of Consensus

1 Mandatory RPM

1.1 Mandatory Use Use of the URS should be a Unanimous Consensus required RPM for all New gTLDs.

2 Pleadings and Evaluation Standards 2.1 Elements of the The elements to be alleged in Unanimous Consensus Complaint and the complaint should be the Safe Harbors for same as the UDRP (as the Registrant described in Annex 6), to take advantage of the body of precedent available. The URS Complaint should require the trademark holder to satisfy the same elements as the UDRP. The URS should include safe harbors to protect legitimate uses of domain names. The URS shall include language that explains safe harbors available

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to registrants. Such safe harbors have been successfully used in similar processes in other jurisdictions. These requirements are described in Annex 6.

2.2 Format of The form of the complaint Unanimous Consensus Complaint and should be simple and as Answer formulaic as possible. There should be reasonable limits on the length of complaint and answer. The complaint should allow space for some explanation, and should not be solely a check box.

2.3 Examination of the ICANN should provide the Unanimous Consensus Case examiners with instructions on the URS Elements and Safe Harbors, and how to conduct the examination of a URS case. These instructions are described in Annex 6.

2.4 Standard of A URS Complaint needs to Unanimous Consensus Review establish by clear and convincing evidence that there is no genuine issue of material fact requiring further consideration. Annex 7 provides an explanation of how this standard should be applied to URS cases.

3 Notice to Registrant 3.1 Mode of Notice Notices should be sent through Unanimous Consensus all the following available modes to increase the likelihood that the registrant will receive actual notice of the Complaint: E-mail, fax, certified copy via postal mail.

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3.2 Notice Contents Notices should be clear to the Unanimous Consensus registrant, and understandable to registrants located globally. ICANN. Staff should have the discretion to evaluate options to implement this requirement, including language issues, in an efficient and effective manner; specifically, the notice should be in the language used by the registrant during the registration process.

4 Effect on Domain Name

4.1 Effect of Filing Upon passing initial examination Unanimous Consensus Complaint of the Complaint, an “Initial Freeze” status is applied to the domain name, meaning that the domain name cannot be transferred, the WHOIS record cannot change, but the domain name still resolves to the original IP address and all features would function (e.g. web, e-mail).

4.2 Effect of Decision Promptly after receipt of a Unanimous Consensus in favor of decision in favor of Complainant, Complainant the domain name shall be placed on hold, and the domain name shall no longer resolve to the name servers in effect prior to the decision.

4.3 Effect of Filing a Promptly after filing an answer Unanimous Consensus Answer after after a Default decision in favor of Default the Complainant, the name servers shall be returned to the state in which it existed immediately prior to the domain name being placed on hold.

5 Answer

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5.1 Time to Answer The Registrant shall have twenty Unanimous Consensus (20) days to file its answer prior to being declared in default, provided that a decision is rendered on an expedited basis (within 3 - 5 days).

5.2 Answer Fee No answer fee will be charged if Unanimous Consensus the Registrant files its answer prior to being declared in default, or not more than thirty (30) days following a decision. For answers filed more than thirty (30) days after a decision, the Registrant should pay a reasonable fee prior to re-examination.

5.3 Effect of Filing a If Registrant fails to file an answer Unanimous Consensus Answer after within twenty (20) days and the Default examiner rules in favor of Complainant, Registrant shall have the right to seek de novo review by filing an answer at any time during the life of the registration. Upon such an answer being received, the Domain Name shall resolve to the original IP address as soon as practical. The filing of an answer after Default is not an appeal.

6 Evaluation of URS Cases

6.1 Commencement of Evaluation of a URS case should Unanimous Consensus Evaluation be conducted on an expedited basis. Evaluation should begin immediately upon the earlier of the expiration of a twenty (20) day answer period, or upon the submission of answer. A decision should be rendered on an expedited basis, with the stated goal that a decision should be rendered within three (3) business days. Staff should

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have the discretion to develop the implementation details in this regard, in order to accommodate the needs of the service providers.

6.2 Number of Examination of URS Cases Unanimous Consensus Examiners should be conducted by one Examiner.

6.3 Training of Examiners should have legal Unanimous Consensus Examiners background and should be trained and certified in URS proceedings.

6.4 Assignment of ICANN should discourage forum Unanimous Consensus Examiners shopping among URS service providers through its URS implementation and contracts. Examiners within a service provider shall be rotated to avoid forum shopping. It is strongly encouraged that the URS service provider accept all credentialed and properly trained URS examiners.

6.5 Providing Fair The URS Service Providers shall Unanimous Consensus Examiners avoid "cherry picking" of examiners that are likely to rule in a certain way. Service Providers should be required to work with all certified examiners, with reasonable exceptions (such as language needs, non- performance, or malfeasance) - with such reasonable exceptions to be determined by ICANN Staff as an implementation detail. ICANN Staff will strongly urge URS Providers to accept all properly- trained URS Examiners.

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6.6 Evaluation on the Unless withdrawn by Unanimous Consensus Merits Complainant, the examiner should evaluate the claim on the merits in every case -- regardless if the Registrant defaults or answers.

7 URS Remedies

7.1 Remedy if If the complainant prevails, the Rough Consensus Successful on the domain name should be Merits suspended for the balance of the BC Minority Position registration period and would not resolve to the original website. Instead, the STI recommends that the nameservers are redirected to an informational web page provided by the URS service provider about the URS process. The URS service provider shall not be allowed to offer any other services on such page, nor shall it directly or indirectly use the web page for advertising purposes (either for itself or any other third party). The WHOIS for the domain name shall continue to display all of the information of the original registrant except for the redirection of the nameservers. In addition, the WHOIS shall reflect that the domain name will not be able to be transferred, deleted or modified.

7.2 Additional Option for successful complainant Rough Consensus Remedies to pay to extend the registration period for one additional year for At-Large Minority at commercial rates. No other Position remedies should be available in the event of a decision in favor of BC Minority Position the complainant.

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8 Appeal

8.1 Appeal of Decision After a decision in any case, Unanimous Consent either party should have a right to seek a de novo appeal based on the existing record within the URS process for a reasonable fee to cover the costs of the appeal. The fees for an appeal should be borne by the appellant. A limited right to introduce new admissible evidence that is material to the decision will be allowed upon payment of an additional fee, provided the evidence clearly pre-dates the filing of the complaint. The Appeal Panel may request, in its sole discretion, further statements or documents from either of the Parties.

8.2 Effect of Appeal on Filing of an appeal should not Unanimous Consensus the Domain Name change the domain name' s resolution. For example, if the domain name no longer resolves to the original nameservers because of a decision in favor of the complainant, it continues to point the informational page provided by the URS service provider. If the domain name resolves to the original nameservers because of a decision in favor of the registrant, it continues to resolve during the appeal process.

8.3 Effect of Decision A URS decision should not Unanimous Consensus in appeal or preclude any other remedies UDRP available to the appellant, such as UDRP (if appellant is the complainant), or other remedies as may be available in a court of competent jurisdiction. A finding

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in URS for or against a party should not prejudice the party in UDRP.

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8.4 Evaluation of The URS should not use an Unanimous Consensus Appeal ombudsman for appeals of URS decisions. URS appeals shall be conducted by either: (i) a three (3) person panel selected from a preselected pool of panelists, or (ii) three (3) panelists, with one appointed by each of the parties and third panellist selected by the other two panellists or by the service provider. In the interest of time and efficiency, both options shall be provided to the Appellant by the URS Service Providers.

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9 Abuse of Process

9.1 Abuse by The URS shall incorporate Unanimous Consensus trademark holders penalties for abuse of the process by trademark holders. In the event of two (2) abusive complaints, or one (1) finding of a "deliberate material falsehood," the party should be barred for one (1) year from URS. Two (2) findings of “deliberate material falsehood” should permanently bar the party from the URS. Multiple complaints must be against the same entity and should not include affiliates. Staff shall implement guidelines for what constitutes abuse, consistent with previous cases of reverse domain name hijacking, TM abuse and general principles of fairness. The examiner of the URS case should indicate in the decision whether an abusive complaint or a deliberate material falsehood has occurred, and the Service Providers should report any of such findings to ICANN.

9.2 Abuse by The URS shall incorporate Unanimous Consensus Examiners penalties for abuse of the process by examiners. Three (3) or more findings of abuse of process or discretion against an examiner shall cause the examiner to lose its certification to serve as a panelist. Staff to implement guidelines for what constitutes abuse and who makes the decision. ICANN to collect data related to such findings of abuse by examiners.

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10 Review of URS

10.1 Mandatory Review ICANN will conduct a review of Unanimous Consensus of URS the URS one year after the first date of operation. There is no requirement that the URS should automatically expire or terminate after any set period of time. ICANN will publish examination statistics for use in the review of the URS.

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ANNEX 1 – ICANN BOARD LETTER TO THE GNSO

The letter dated 12 October 2009 from the Board to the GNSO Council regarding the special trademark issues is posted at: http://gnso.icann.org/correspondence/beckstrom-to-gnso-council-12oct09-en.pdf

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ANNEX 2- GNSO MOTION CREATING THE STI

20091028-3

Motion on Selected Trademark Issues from the ICANN Board of Directors

WHEREAS, the ICANN Board has requested that the GNSO Council evaluate certain ICANN staff implementation proposals for the protection of trademarks in new gTLDs based in part on the recommendations from the IRT, public comments, and additional analysis undertaken by ICANN Staff, as described in the letter dated 12 October 2009 Letter from Rod Beckstrom & Peter Dengate Thrush to GNSO Council.

WHEREAS, the ICANN Board letter requests the GNSO Council's view by December 14, 2009 on whether certain rights protection mechanisms for second level strings recommended by ICANN Staff based on public input are consistent with the GNSO Council's proposed policy on the introduction of new gTLDs, and are the appropriate a effective options for achieving the GNSO Council's stated principles and objectives;

WHEREAS, the GNSO Council has reviewed the ICANN Board letter and desires to approve the procedures for conducting such evaluation;

NOW THEREFORE BE IT RESOLVED that the GNSO Council adopts the following process to conduct the evaluation requested by the Board:

1. GNSO REVIEW TEAM WILL BE COMPRISED OF REPRESENTATIVES DESIGNATED AS FOLLOWS: THE REGISTRAR AND REGISTRY STAKEHOLDER GROUPS WITH TWO (2) REPRESENTATIVES EACH, THE COMMERCIAL STAKEHOLDER GROUPS AND THE NON-COMMERCIAL STAKEHOLDER GROUPS WITH FOUR (4) REPRESENTATIVES EACH, AT-LARGE WITH ONE (1) REPRESENTATIVE, ONE REPRESENTATIVE FROM THE NOMINATING COMMITTEE APPOINTEES(1) AND THE GOVERNMENT ADVISORY COMMITTEE (GAC) WITH ONE (1) OBSERVER. ALTERNATE MEMBERS MAY PARTICIPATE IN CASE OF ABSENCE OF THE DESIGNATED REPRESENTATIVES;

2. EACH OF THE STAKEHOLDER GROUPS WILL SOLICIT FROM THEIR MEMBERS THEIR INITIAL POSITION STATEMENTS ON THE QUESTIONS AND ISSUES RAISED BY THE ICANN BOARD LETTER AND THE ICANN STAFF PROPOSED MODELS FOR THE IMPLEMENTATION OF THE TRADEMARK

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CLEARINGHOUSE AND UNIFORM RAPID SUSPENSION MODEL, AND WILL DELIVER THEIR INITIAL POSITION STATEMENTS ON NOVEMBER 4, AND WITH FINAL POSITION STATEMENTS TO BE DELIVERED BY NOVEMBER 6, 2009;

3. SUCH POSITION STATEMENTS WILL BE SUMMARIZED BY ICANN STAFF AND DISTRIBUTED TO THE GNSO REVIEW TEAM TO EVALUATE WHETHER A CONSENSUS CAN BE REACHED ON THE ICANN STAFF IMPLEMENTATION MODELS OR OTHER PROPOSALS FOR THE PROTECTION OF TRADEMARKS IN THE NEW GTLD PROGRAM; AND

4. THE GNSO REVIEW TEAM WILL CONDUCT ITS ANALYSIS, IDENTIFY THOSE AREAS WHERE CONSENSUS HAS ALREADY BEEN REACHED, AND SEEK TO DEVELOP CONSENSUS ON THOSE ISSUES FOR WHICH CONSENSUS COULD NOT BE DETERMINED. (THE ASSISTANCE OF MEMBERS OF THE IRT IN ANSWERING QUESTIONS ABOUT THE IP CLEARINGHOUSE AND UNIFORM RAPID SUSPENSION SYSTEM RECOMMENDATIONS MAY BE USEFUL TO THIS WORK. THE GNSO COUNCIL REQUESTS THAT MEMBERS OF THE IRT WHO WORKED ON THOSE RECOMMENDATIONS BE AVAILABLE TO ANSWER ANY SUCH QUESTIONS THAT MAY ARISE), AND

5. THE GNSO REVIEW TEAM WILL PROVIDE A FINAL REPORT TO THE GNSO COUNCIL ON OR BEFORE THE GNSO COUNCIL'S MEETING IN LATE NOVEMBER, 2009.

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ANNEX 3 - THE WORKING GROUP

In accordance with the GNSO Resolution approved on 28 October, 2009, the STI was comprised of the following representatives:

NAME AFFILIATION David Maher (Chair) Ry SG Jeff Neuman Ry SG Alan Greenberg ALAC Olivier Crépin-Leblond ALAC (Alternate) Paul McGrady IPC, CSG Mark Partridge IPC, CSG Kristina Rosette IPC, CSG (Alternate) Jeff Eckhaus Rr SG Jon Nevett Rr SG Jean-Christophe Vignes Rr (Alternate) Mike Rodenbaugh BCUC, CSG (Alternate) Zahid Jamil BCUC, CSG Robin Gross NCSG Kathy Kleiman NCSG Wendy Seltzer NCSG Konstantinos Komaitis NCSG Mary Wong NCSG (Alternate) Leslie Guanyuan NCSG (Alternate) Tony Harris ISP Constituency, CSG Andrei Kolesnikov NCA Maimouna Diop GAC Observer

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ANNEX 4 – MINORITY REPORTS

Joint RYSG and NCSG Statement on Trademark Clearinghouse Section 10.1:

Trademark holders, who benefit from the service, should bear the costs of the clearinghouse.

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Minority Position wrt the Initial Report on Specific Trademark Issues By the Commercial and Business Users Constituency

I. Trademark Clearinghouse

The Business Constituency believes that the Trademark Clearinghouse as described in the initial STI report will create minimal significant new/additional benefits for Trademark Holders due to: The scope of the match for sunrise and ‘TM Claims’ would be even more limited than those adopted by existing gTLD launches (e.g. .asia's “Mark Plus” words in the Nice Classification etc., and .eu’s recognition of common law trademarks). And The limitation on mandatory use of the TMC data by contracting parties, such that it is only required during Sunrise Periods or ‘pre-launch TM Claims’ services, and will not be required to be checked for all new gTLD registrations.

To clarify, we are not opposing the Clearinghouse as framed. We have come to the disappointing opinion that ‘something is better than nothing.’ However we believe it should have much broader applicability, and thus usefulness, both as to the scope of marks allowed into the database, and the further use of the database throughout the life of new gTLD registries. We suggest that a feasibility study be done, based on the TMC as framed, as compared to also requiring broader applicability, before a final decision is made. We are adamant that the costs of developing and operating the TMC must be borne by ICANN and its registries and registrars, who benefit by far the most from the TMC as framed,

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and not be borne by TM owners and other registrants, except for a minimal registration fee to submit their public records into the database. The whole point of this “overarching issue” was to lessen the need for defensive registrations and to deter cybersquatting. The Clearinghouse does little in either regard, because it will only be used for sunrise periods, and primarily to encourage defensive registrations, as registries and registrars tend to promote their sunrise periods broadly to the TM owner community. If it is also used for a TM notification system, it will be of much bigger benefit to everyone in the community, with no discernible downside. We are encouraged that such systems still could be built from the Clearinghouse and employed by willing registries or registrars, even if they will not be required of all new gTLD registrations.

The BC does not believe that the more appropriately termed Sunrise Database is anything more than simply that: a centralized Database for Sunrise Periods. It is not a Rights Protection Mechanism. It will never be used for pre-launch “TM Claims” services because those services can simply be ignored by cybersquatters until the registry launches, and then continue the same business models they have perfected to date.

As currently and narrowly framed, the TMC doesn’t address any of the pre- launch concerns of Trademark Mark Holders such as the need for defensive registrations vis a vis the lack of any effective deterrent to cybersquatting. Instead the TMC encourages and facilitates still more defensive registrations. One of the fundamental premises of the work on this ‘overarching’ issue of trademark protection is that trademark owners generally do NOT want more defensive registration, particularly in hundreds or thousands of newTLDs. While a standardized sunrise process does assist some trademark owners who are

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inclined to register new names, as currently framed the TMC will be of little of no benefit to the vast majority of trademark owners.

Who pays? As it is currently framed, the Clearinghouse only affords TM owners the opportunity to pay to register one exact match of their textual trademarks, and have one chance to pay to register one identically corresponding domain name in each of hundreds and eventually thousands of new TLDs. The fee will have to be extremely minimal for TM owners, as that is the extent of the benefit.

TM Holders are to PAY ANNUALLY to be in this Sunrise Clearinghouse. Although it may provide the singular benefit of single window and one time sunrise registration, it also financially benefits Registries and registrars since it will dramatically reduce their costs for administering Sunrise Periods. Those Sunrise Periods provide early revenue and market adoption for registries and registrars wrt each newTLD. Hence, the BC is of the view that the costs of the Sunrise Clearinghouse should be shared by ICANN and the contracting parties, and not be borne by TM Holders alone.

What does a Match mean? It would be reasonable that the match for Notices as well as Sunrise should be competitive with existing practices. However, the STI recommends that a match is only an EXACT match to the Trade Mark (i.e. yahoo.web or ebay.web). So variants (i.e. yahhoo.web or ebayy.web) and “Mark plus” significant words (i.e. yahoosports.web or ebayfrance.com) would not be matched for any application for which the Clearinghouse is used. This extremely narrow definition of “match” is even narrower than those allowed by .EU, .TEL and .ASIA and as such do not represent best practice. The STI also excludes common law rights and other

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legally names names, for no apparent reason whatsoever, given that they have been included in virtually every sunrise period conducted to date.

Suggestions for Improvements 1. Allow inclusion of common law rights and protected names. 2. Broaden match to include at least the protection offered by Dot Asia in sunrise5. 3. A so-called “TM Claims” service should be mandatory throughout the life of new gTLD registries, unless there is strong reason for an exception granted by ICANN. This would benefit everyone, and cause harm to nobody. It would be a much broader incentive for TM owners to participate in the Clearinghouse, and demonstrate a much broader commitment by ICANN and its contracting parties to prevent domain name disputes from occurring. It could be implemented easily enough -- if there was such a will, there would be a way.

II. The URS:

The BC is in agreement with the proposal, except for the issue of transfer of domain names to successful complainants. We agree with the ALAC and others

5 5 Dot Asia Sunrise: “Domain Name Applied For may be constituted with Mark plus significant words from the class description in the Nice Classification system ( http://www.wipo.int/classifications/nivilo/nice/) E.g. Mark for “XYZ” in Nice Class 1: “Chemicals” may apply for “XYZChemicals.Asia”. BC proposes a carve out to avoid any possible Chilling Effect: “ …additions of letters or words would not include letters or words that, prima facie, when read in conjunction with the trade name: 1. imply a free speech use 2. completely change the meaning of the name to another well recognized and understood name/dictionary word (a non‐exclusive/non‐exhaustive list of examples may be found at appendix “X” for the purpose of illustration)” Such an Appendix can include a list of examples for both exceptions.

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on this, that it would be tremendously unfair to force successful URS complainants to file a UDRP in order to be assured the domain will not be maliciously re-used, and/or in order to use the domain itself. The whole point of the URS should be to provide a quicker and cheaper remedy than the UDRP, for the most egregious cases of cybersquatting. Not a different remedy, just a quicker and cheaper remedy.

As it looks, the cost of preparing and filing a URS is not likely to be dramatically cheaper or faster than filing a UDRP, as the evidentiary standard is even higher; and the time to resolution also does not appear to be dramatically different if the URS plays out its entire life… to the point where the complainant would have to file a UDRP or court action anyway, in order to control the domain name. Thus, what is the benefit of this new RPM, and will it ever be used?

Cost is not looking much cheaper for URS, and if it doesn't result in transfer then will force a UDRP and/or court action anyway. It appears laughable to assume a URS complaint can be resolved for a $300 filing fee, when essentially the same case must be presented by the complainant as under a UDRP, except the evidentiary burden is much higher. So the cost is likely to be somewhere north of $500 at least. While that is some substantial savings on the UDRP filing fee ($1300 at NAF for one domain), the costs of investigating the abuse and filing a complaint will be nearly identical. Thus the costs of addressing each cybersquatted domain, on average, is not likely to drop in any substantial respect.

Since any remedy other than transfer would likely require a UDRP next year anyway, why would anyone choose it? Thus, any purported cost savings are a red herring, maybe an average of $5000 per case instead of $6000, or something of that 10-20% magnitude. Will this be worth all of the time expended by the IRT

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and this group thus far? The BC thinks not, and thinks we all can do better, simply by allowing URS complainants the further option of transferring obviously infringing names to their own account, for beneficial use.

There is simply no reason not to allow a transfer after the process (including appeals) has run its course. Otherwise there may be minimal value to the process, and tremendous resources might be wasted designing it and trying to implement it. Meanwhile many new TLDs will launch, and millions more cybersquatted domains may be registered in dozens or hundreds of those new TLDs. Thus, at minimum, ICANN should conduct a feasibility study before any decision is made by Council or the Board, which attempts to resolve two questions: 1) will the URS, as framed, be implementable as a sustainable business model; and 2) would it be more sustainable if transfer were allowed (i.e. how many more complainants would use it?).

Respectfully submitted, Mike Rodenbaugh Mike Rodenbaugh GNSO Councilor Business Constituency

Zahid Jamil Zahid Jamil GNSO Councilor Business Constituency

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At- Large Advisory Committee

The At-large Advisory Committee submits the following three statements to be attached to the STI Review Team report dated 11 December 2009:

1. Additional Marks in the Clearinghouse – Report section Clearinghouse 4.2

The TC should also allow the inclusion of names, for the purposes of sunrises, which would include a registered TM used in conjunction with: - a dictionary word that is associated with the class of services trademarked (example: a chemical company XYZ could deposit in the TC the name "XYZ-Chemicals". This was allowed in the .asia sunrise. - a dictionary word that is regularly used in clear association with the TM (example: Yahoo-Finance - see http://finance.yahoo.com/). There would need to be carefully worded rules, objection processes and penalties for depositing names in the TC that do not meet the criteria (example: Yahoo-stinks, unless Yahoo starts to manufacture and sell stink-bombs).

Rationale:

Brand owners want to be able to have clear right-of-first-refusal to reduce opportunities for cyber-squatting and to reduce the need for URS and UDRP proceedings. We believe that At-Large benefits from such legitimate registrations by reducing the opportunity for user confusion which results from cyber-squatters obtaining such names. From the perspective of a non-sophisticated user, if they enter a name that CLEARLY maps to a known brand, it should not resolve to a pay-per-click page or someone offering a competing product or service.

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2. Transfer of a domain name after a successful URS – Report section URS 7.2

We recommend that a transfer to the successful URS claimant at end-of registration be allowed.

Barring that being accepted, we suggest that a transfer be allowed after a second successful URS.

Rationale:

At-Large believes that this is a reasonable action to reduce cyber-squatting and the resultant user confusion.

A number of reasons for opposing such a transfer have been raised:

a) The URS was not originally envisioned by the IRT as a transfer mechanism - if the TM holder wants to take custody of the name, they should use the more expensive and slower UDRP either following a successful URS, or instead of the URS

ALAC Response: This should not be relevant. We have already changed MUCH in the original IRT proposal, and rightfully so. And it seems mean-spirited to force a TM holder to go through the UDRP just because of how the URS was originally envisioned.

b) We need to differentiate the URS from the UDRP

ALAC Response: Why? There is a good probability that over the next few years, the two procedures will be reviewed and merged into a single procedure with multiple paths.

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c) It may be complex for the registry and/or registrar to implement if not carefully designed.

ALAC Response: This can be overcome with careful design. Since the domain is explicitly flagged as being the subject of a successful URS, the process should not be onerous if requested at URS-time by the claimant.

d) It may take a generic word domain name (which might have legitimate uses over and above those used by the current registrant (which resulted in a successful URS)

ALAC Response: Chances are that either through successive URS proceedings or a UDRP, the name will go out of circulation anyway.

The alternative implementation will not be as effective, but will be better than having to file a UDRP. The argument has been made that tracking URS duplicates would be too onerous. However, if it is the responsibility of the TM holder to indicate that a URS is a 2nd one (with reference to the original URS), no tracking is required, other than on the part of the TM holder.

3. Post-Launch TM Claims – Report section Clearinghouse 7.1

At-Large recommends further investigation with respect to the efficient and effecting implementation of post-launch IP claims and on the potential chilling effect on non-IP- professional registrants.

Rationale: If the chilling effect is not unreasonable, this could reduce cyber-squatting and when it fails, will increase the probability and speed of a successful URS against cybersquatters.

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IPC Minority Statement re STI Report, Clearinghouse Section 5.2

The IPC opposes Section 5.2(i) and the first sentence of 5.2(ii) of the Trademark Clearinghouse part of the STI Report. These sections of the STI report on the Clearinghouse recommend that new gTLD registries should provide equal protection to all trademarks in the Clearinghouse, except for trademarks from countries that do not have substantive review of trademark applications , and further suggest that registries should have unspecified discretion to decide "whether to grant protections to trademarks in the Clearinghouse."

The exceptions stated above are contrary to the recommendations of the IRT and would make the Clearinghouse inadequate. While IPC is prepared to accept compromises on a number of its long-held positions in the context of the STI report, the IPC is strongly opposed to limiting the use of the Clearinghouse in that manner. The trademark registration systems of a large number of developing and developed countries, including most of Europe, do not engage in substantive review. It is a serious problem and unwise for ICANN or its registries to treat such systems in the Clearinghouse as being inferior or to disenfranchise registrants from these countries from the protections in the Clearinghouse. This would particularly prejudice small businesses and not-for-profits who may only budget for a limited number of trademark registrations in their country of origin, rather than a global registration program.

Instead, the protections provided by new gTLD registries, at a minimum, should include all registrations of national or multinational effect, as recommended by the IRT. We understand the concerns voiced by some that this might allow trademark holders in the Benelux and elsewhere to obtain domain name registration for generic terms. Rather than denying trademark registrants from those countries all benefits of the Clearinghouse, in order to address a few problematic registrations, the proper solution for such concerns is to deal with questions of scope and validity through filing deadlines, notice, disclosure, and challenge procedures. These techniques have worked well to address this problem in previous gTLD launches.

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The statement appearing in the first sentence of 5.2(ii) is misleading and should not be adopted. IPC does not object to the specific example given in the second sentence.

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ANNEX 5 - FORM TM CLAIMS NOTICE

TRADEMARK NOTICE

[In English and the language of the registration agreement]

You have received this Trademark Notice because you have applied for a domain name which matches at least one trademark record submitted to the Trademark Clearinghouse.

You may or may not be entitled to register the domain name depending on your intended use and whether it is the same or significantly overlaps with the trademarks listed below. Your rights to register this domain name may or may not be protected as noncommercial use or “fair use” by the laws of your country. [in bold italics or all caps]

Please read the trademark information below carefully, including the trademarks, jurisdictions, and goods and service for which the trademarks are registered. Please be aware that not all jurisdictions review trademark applications closely, so some of the trademark information below may exist in a national or regional registry which does not conduct a thorough or substantive review of trademark rights prior to registration. If you have questions, you may want to consult an attorney or legal expert on trademarks and intellectual property for guidance.

If you continue with this registration, you represent that, you have received and you understand this notice and to the best of your knowledge, your registration and use of the requested domain name will not infringe on the trademark rights listed below. The following [number] Trademarks are listed in the Trademark Clearinghouse:

1. Mark: Jurisdiction: Goods: [click here for more if maximum character count is exceeded] International Class of Goods and Services or Equivalent if applicable: Trademark Registrant: Trademark Registrant Contact:

[with links to the TM registrations as listed in the TM Clearinghouse]

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2 Mark: Jurisdiction: Goods: [click here for more if maximum character count is exceeded] International Class of Goods and Services or Equivalent if applicable: Trademark Registrant:

Trademark Registrant Contact: ****** [with links to the TM registrations as listed in the TM Clearinghouse]

X. 1. Mark: Jurisdiction: Goods: [click here for more if maximum character count is exceeded] International Class of Goods and Services or Equivalent if applicable: Trademark Registrant: Trademark Registrant Contact:

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ANNEX 6 – EVALUATION

OF THE URS CASE

URS Examination Instructions

1. Evaluation of the Complaint

1.1 The Final Evaluation analysis involves consideration of three basic issues, similar to the standards for a UDRP decision, but requiring a much higher burden of proof. The Examiner shall consider each of the following three elements:

a. Whether the domain name is identical or confusingly similar to a mark in which the Complainant holds a valid trademark registration issued by a jurisdiction that conducts substantive examination of trademark applications prior to registration. A list of such jurisdictions shall be compiled and made available to parties and Examiners; and

b. Whether the domain name registrant lacks any right or legitimate interest in the domain name; and

c. Whether the domain name has been registered and used in bad faith.

1.2 A list of non-exclusive circumstances that demonstrate bad faith registration and use mirror the list stated in the UDRP, namely:

a. circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or b. you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or c. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or d. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your

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web site or location or of a product or service on your web site or location.

2. Evaluation of the Answer

2.1 The Registrant may submit an Answer refuting the claim of abusive and bad faith registration by setting out any of the following circumstances which mirror the “Rights to and Legitimate Interests in the Domain Name” of the UDRP, namely:

a. before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or b. you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or c. you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

2.2 Such claims, if found by the Examiner to be proved based on its evaluation of all evidence presented, shall result in a finding in favor of the Registrant.

3. Safe Harbors6 available to the Registrant

3.1 The Registrant may further demonstrate that its use of the domain name is not in bad faith by showing one of the following factors:

a. The Domain Name is generic or descriptive and the Registrant is making fair use of it. b. Domain Name sites operated solely in tribute to or in criticism of a person or business may constitute fair use and therefore shall not be considered abuse under this policy. c. Registrant’s holding of the Domain Name is consistent with an express term of a written agreement entered into by the disputing Parties. d. Trading in domain names for profit, and holding a large portfolio of domain names, are of themselves not indicia of bad faith under this policy. Such conduct, however, may be abusive in a given case depending on the circumstances of the dispute. The Examiner will review each case on its merits. e. The Domain Name is not part of a wider pattern or series of abusive registrations because the Domain Name is of a significantly different type or character to the other domain names registered by the Registrant. f. Sale of traffic (i.e. connecting domain names to parking pages and earning click- per-view revenue) does not in and of itself constitute abuse under the Policy.

6 The language describing these Safe Harbors originated from the policy adopted by Nominet.

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Such conduct, however, may be abusive in a given case depending on the circumstances of the dispute. The Examiner will take into account:

i. the nature of the Domain Name; ii. the nature of the advertising links on any parking page associated with the Domain Name; and iii. that the use of the Domain Name is ultimately the Registrant’s responsibility.

4. Issuing a Decision 4.1 If the Examiner finds that all three elements are satisfied by clear and convincing evidence and that there is no genuine contestable issue, then the Examiner shall issue a decision in favor of the Complainant. If the Examiner finds that this test is not met, then the Examiner shall deny the relief requested terminating the URS process without prejudice to the ability of the Complainant to proceed with an action in court of competent jurisdiction or under the UDRP.

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ANNEX 7 – STANDARD OF REVIEW

For a URS case to be successful based on:

1) the complaint; 2) the verified TM from a jurisdiction that performs substantial validation (including if applicable, its geographic limitations and class of service); 3) the domain name in question; 4) the contents of the web site or other evidence of the domain name usage; and 5) the registrant response (if received); the Examiner, shall give a finding that there is no genuine issue of material fact. Such finding may include the finding that A) the complainant has rights to the name and B) the Registrant has no rights or legitimate interest in the name.

This means that the complainant must present adequate evidence to substantiate its trademark rights in the domain name (e.g., evidence of a trademark registration and evidence that the domain name was registered and is being used in bad faith in violation of the URS.

If the Examiner finds that the complainant has not met its burden, or that genuine issues of material fact remain unsatisfied in regards any of the elements, the Examiner will reject the complaint as inappropriate for Rapid Suspension.

1) (if a response was received) No evidence was presented to indicate that the use of the domain name in question is a non-infringing or fair use of the TM.

2) (if a response was not received) No defense can be imagined to indicate that the use of the domain name in question is a non-infringing or fair use the TM.

In the absence of a clear belief of 1) or 2), the URS shall be rejected.

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