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 toform 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 spaceunreservedly? 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 quowith no new gTLDs until better Rights Protection Mechanisms are in place for the
existing gTLDs. Others favored the measured introduction of Sponsored or Communitybased gTLDs. Some support the current expansion, seeing the advantages forcommerce 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. Noncommercial registrants include centers of learning, not-for-profit organizations andcommunities of interest. Private registrants feature people of every age, race, creed andgender from Silver Surfers to pre-teens in every corner of the globe.
These diverse interests all depend on domain names to keep them connected. Domainnames 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 typethem 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 andthe dangerous who prey on the unwary. Malicious behaviors like spamming or phishingabound; lucky is the internet user whose in-box is not full with offers that are too good tobe true.
For most of us, it is a reasonable assumption that the owner of a trademark in the realworld 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

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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 totrust 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 theconcept of registrar or registry integrity.
Unfortunately, something often “goes wrong” with domain names. Last year the WorldIntellectual 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 morethan 15,000 UDRP or UDRP-based cases, covering around 27,000 separate domainnames – 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 theworld.
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 thecorrespondence but continue to maintain websites with PPC adverts for as long as theycan, 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, “Thesale 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 ofabusive 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 wehave termed “a tapestry of globally-effective solutions” which we believe, if taken
together and not significantly unpinned, will help reduce the incidence and severity oftrademark abuse in the new gTLDs. Each solution we developed was considered fromthe point of view of consumers and registrants, registrars and new gTLD registries fromthe narrowest Community-based operator to the broadest Open applicant. We arekeenly aware that you cannot please all of the people all of the time, but we hope thatreaders of our report will consider the benefits of our efforts, which we believe, willaccrue to all branches of the ICANN family:
Benefits for trademark owners:


The IP Clearinghouse will reduce the cost and administrative burden ofprotecting trademarks in the new gTLDs for all trademark owners – with a very
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few “trademark supernovas” which suffer extraordinarily high levels of
infringement finding relief through the Globally Protected Marks List. We believethat 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 designand operate effective Pre-Launch RPMs that are appropriate for and tailored totheir 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 aninterpretation of “meaning” will also help applicants to navigate through theapplication 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 fromthe Pre-Launch RPM process: over 50% of applications during Sunrise schemes
run since .eu in 2005 have been inaccurate or ineligible, often because ofregistrar error.

Benefits for registrants and consumers:Consumers value transparency and accountability. Our recommendations
promote this as well as rapid and inexpensive methods of tackling cybersquattersand 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-archingissues” 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, “TheBoard has clearly heard and believes strongly that the concerns of trademark holders
must be addressed before this process is opened for applications. The establishment ofPage 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 ourrecommendations 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 impactof 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, IsraelDavid 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

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INTRODUCTION: IMPLEMENTATION RECOMMENDATION TEAM (IRT)
SUMMARY
The IRT was formed by ICANN's Intellectual Property Constituency in accordance withthe 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-facemeetings, and one full-day face-to-face consultations with remote participation via
teleconference with various interest groups resulting in draft recommendations forseveral 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 periodthat closed on 24 May, 2009. See http://www.icann.org/en/public-comment/publiccomment-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.

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The IRT was established by members of the Intellectual Property Constituency and themembership list was posted1 (https://st.icann.org/data/workspaces/new-gtldoverarching-issues/attachments/trademark_protection:20090407232008-09336/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 toprovide the IRT with broadened practical perspectives and experience, one person was
selected from the gTLD Registries constituency and one person was selected from theRegistrar 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, postingmaterials, arranging meetings and providing logistical and travel support. A listing ofthese 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 inWashington, DC and San Francisco, CA, respectively, and one full-day face-to-faceconsultations in San Francisco, CA, as well as dedicating significant individual time inbetween. There has been essentially full attendance at all conferences. Meeting notesfrom the meetings are publicly posted as they are prepared, for example:(https://st.icann.org/data/workspaces/new-gtld-overarchingissues/attachments/trademark_protection:20090410223141-023728/original/MTGMINS-March25.pdf, and https://st.icann.org/data/workspaces/newgtld-overarching-issues/attachments/trademark_protection:20090410223220-023543/original/MTGMINS-April1-2.pdf).
BACKGROUND
The IRT was given a broad mandate with a tight time frame. Without any intention tolimit 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 anumber 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 thecomments to DAG1. For convenience and efficiency, the IRT grouped comments into
the following categories:

1

comments on the guidebook;

pre-launch mechanisms;

post-delegation at the top level;

These links are to wiki pages that require passwords in order to contribute. Passwords are publicly available bysending an email to ngtld-overarching-issues@icann.org as indicated on https://st.icann.org/new-gtld-overarchingissues/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 toextensively 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 makeavailable solutions to address some of the immediate concerns of the stakeholders, andwere 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 thefollowing list of questions to be asked as a benchmarking checklist against which tomeasure 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.
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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 toother than new gTLDs.
It should also be emphasized that the IRT recognized that there is no single solution tosatisfy all of the concerns raised in the comments to the DAG1 and DAG2, and thateach proposal presented herein is part of a tapestry of solutions which are interrelated
and interdependent. The proposals have been designed comprehensively to balance inrelation 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 theintroduction of new gTLDs. The IRT focused its efforts in addressing only the mostsalient 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 foreach 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 tocomprehensively address all the overarching issues of trademark protection inconnection 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 eachmember to the group. The work of the IRT is not endorsed by any particular IRT
member, their clients, companies or affiliated companies or organizations, andparticipation 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 beaffiliated or may otherwise represent. Indeed, any business, company, affiliate, client,association, group or any other party with which the individual IRT members may beaffiliated or may otherwise represent, as well as individual IRT members, may disagreewith 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 themembers of the IRT.
The IRT established a “code of conduct” which prohibited members of the IRT fromdiscussing any of the proposed issues in depth with anyone outside the IRT in order toallow 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 thetime 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 theissue 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 timeframe available. As a result, the IRT takes no position at this time on proxy domainname 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'sconsideration of this issue commence as soon as possible.
The IRT was also able to briefly identify various additional proposals from the publiccomments 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 otherstrings are IDN/ASCII equivalents of the base application (and ICANN shall only
charge the additional cost recovery fees associated with the string evaluation andnot a separate $186,000 application fee for each string);Community based and corporate branded/single registrant TLDs need to havethe 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 withreasonable 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 beinterpreted 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 arecommendation 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 asplanned.
NEXT STEPSInformation regarding the IRT will continue to be posted at: https://st.icann.org/new-gtldoverarching-issues/index.cgi?trademark_protection, a wiki page where others can postcomments 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 newgTLDs. 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 GLOBALLYPROTECTED MARKS LIST, AND OTHER TOP AND SECOND-LEVELRIGHTS PROTECTION MECHANISMS
1. INTRODUCTION & OVERVIEWThe 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 thefollowing 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, butneither expand those rights nor create additional legal rights;

The recommendation should provide clear benefits to trademark owners and newgTLD registries, such that as many as possible will be incentivized to use therecommended solution;

The recommendation should accommodate user and consumer concerns, inparticular 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 totrademark owners, gTLD registries, registrars or to legitimate users andconsumers.

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 withoutcompromising 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 thesecond 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 particularsolutions; 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 forresolving cyber-squatting disputes arising from the bad faith registration and useof domain names as well as the IRT’s proposed URS, which should be
mandatory and will provide additional protections for clear cut cases ofcybersquatting.

In developing its recommendation, the IRT consulted with and examined the practices,
experiences and recommendations of various registries, Internet service providers anddispute 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 thevarious types (and corresponding scope of legal protection) of protected marks or the
possibility of calibrating the recommended RPM to these differing types and scope ofprotection; (2) designing workable, specific, flexible and inclusive criteria for a single, allencompassing 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 thelegal 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 CLEARINGHOUSEOVERVIEW

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 Clearinghouseshould include the following:

The IP Clearinghouse must be capable of holding data relating to the legal rightsof 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 registryor 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 newgTLD 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 isexpected 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, theIRT recommends that the IP Clearinghouse should be structured so that it can accommodate a panoply of suchrights 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 thetrademark 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 arenewable 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 nameregistration services including that of a gTLD registry, registrar or other technicalprovider 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 theavailability 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 portfolioof records in the IP Clearinghouse should not be prohibitive for a trademark
owner with many names/brands, taking into account the complexity of theplatform, the costs of validating trademark records from every country in theworld and the potential liabilities of the IP Clearinghouse operator.5



The IP Clearinghouse must be technically state-of-the-art and its daily operationmust 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 theregistration process unreasonably.



The IP Clearinghouse must be highly scalable. For example, it should be able toaccommodate identical trademarks registered under different classes of goods orservices 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 registeredtrademarks, including word marks and device (logo) marks that contain a wordelement 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 asingle 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 thecontract 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 PreLaunch 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 astandard format using a state-of-art technical platform that is secure and robust.
Most communication will be electronic. Forerunners of the IP Clearinghouse havebeen used by validation agents in TLD launches since 2005, demonstrating boththe 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 anidea that was supported by many on the ICANN 2007 Protecting the Rights of
Others Working Group.

SERVICES TO BE PROVIDED BY THE IP CLEARINGHOUSEThe 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 tointeract with the IP Clearinghouse to implement the recommended RPMs. If a newgTLD registry decides to implement an RPM above and beyond those recommended
herein, any incremental services necessitated thereby shall be provided on no greaterthan 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 totrademarks 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 andtrademark 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, andvalidation 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 bytrademark owners in relation to either the Globally Protected Marks List or the PreLaunch 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 itat no charge as those registry operators draft policies and create processes toimplement 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 oftrademark 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 aresult, 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 bywhich 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, andshould not be interpreted as such. Further, the IRT does not intend the GPML topossess 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 evaluatedand, 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 ofnational 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 practicaldifficulties of implementing such a requirement. The IRT also considered thosecomments 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 timeabout 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 themas 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 ofcountries 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.

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

Page 17 of 69

OTHER OPERATIONAL CONSIDERATIONSThe 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 thisissue 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 initialsubmission 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 onregistrations 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 ofrecord 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 arolling basis if ICANN begins to accept new gTLD applications on a rolling basis.
4. TOP LEVEL RIGHTS PROTECTION MECHANISMS
THE GPML AND IDENTICAL MATCHESThe 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 sothat applied-for gTLD strings are analyzed for confusing similarity against GPMs, inaddition to existing TLDs, reserved names, other applied-for gTLD strings, andrequested ccTLD strings.

13

A number of comments called for a challenge process. The IRT decided against a challenge process given thestringent 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 forreconsideration 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 inrelation 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 automatedvisual similarity test.

Page 18 of 69

If an applied-for gTLD constitutes an “identical match” to a GPM on the GPML, thegTLD application will not be approved until the Initial Evaluation reconsideration processdescribed 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 identicaltextual elements of the GPM. In this regard: (a) spaces contained within the GPM inquestion 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 orhyphens 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 stringin 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, todeceive 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 thatfail Initial Evaluation based on a finding of sufficient similarity should have theopportunity to request reconsideration, under the procedure outlined below.
RECONSIDERATION OF INITIAL EVALUATIONThe 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 thatthe 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 theapplicant 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 withapplicants 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 toclarify information in its application; the applicant may not use the request forreconsideration as an opportunity to substitute portions of new information for the
information submitted in their original application. All information submitted by the15

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 forreconsideration 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 otherrecommendations of the IRT.

Page 19 of 69

applicant in connection with its request for reconsideration will become part of theapplication, to which the applicant will be bound, as consistent with the DAG.
In order to prevail on its request for reconsideration, the applicant must demonstrateeither that the applied-for TLD is not sufficiently similar (visually, aurally, and incommercial 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 twopronged 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 oftrademark 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 nonGPMs, notification pursuant to the Pre-Launch IP Claims Service.
The IRT recognizes that each new gTLD registry will have unique characteristics suchthat 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 thatits selected second-level RPM meets or exceeds the minimum protections describedherein. For example, if a trademark owner applied for a .brand TLD, operated it as aclosed 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:


18

The type of pre-launch RPM they will offer;

A gTLD applicant could demonstrate that it has a legitimate right to use the applied-for gTLD by proving that it hascommon 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 forreconsideration 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 anapplicant must, in the view of the IRT, become incorporated into the applicable Registry Agreement for thatapplicant for that gTLD. If the manner of operation or use of the TLD by the Registry Operator is inconsistent withthe 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 ofthat 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 amechanism 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 consistsof 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 inquestion 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 candemonstrate 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 ormore 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., aSunrise Registration Process), the IRT recommends that the registry provide the Pre19

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 fromabusive 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 associatedwith 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, theIRT believes that the combination of the recommended second-level protection for the GPMs and therecommended 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 PreLaunch 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 identicaltextual 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 withappropriate words describing it, and (c) punctuation or special characters contained
within a trademark that are omitted or replaced by spaces or hyphens will be consideredidentical matches.
Except for GPMs, registrants shall not be prevented from registering domain names
matching marks contained within the IP Clearinghouse; provided, however, that eachregistrant 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 warrantsthat it has a right or legitimate interest in that domain name; (iii) represents and warrantsthat 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 insuspension under the URS, a UDRP proceeding, and/or judicial action by theappropriate trademark owner; and (v) represents and warrants that the registrant
contact information provided in support of the domain name registration is valid andaccurate, and acknowledges that provision of false information may result incancellation of the registration.
6. STANDARD SUNRISE REGISTRATION PROCESS
If, in relation to non-GPM marks and during the pre-launch phase, a new gTLD registryelects 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 theregistry 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 identicallymatches the applied-for domain name. An identical match means the domainname consists of the complete and identical name protected by the trademark. In
this regard: (a) spaces contained within a trademark that are replaced byhyphens (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 consideredidentical 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 ofgoods 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 inInternational Class 25).



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

Sunrise registration applicants must affirm that all information provided is trueand 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:23At the time the challenged domain name was registered, the domain nameregistrant did not own a trademark registration of national effect;The domain name is not identical to the trademark on which the domain nameregistrant 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

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 GPMLThe 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 presenceof 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 nameunder 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 initialblocking 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 costeffective and timely mechanism for brand owners to protect their trademarks and topromote consumer protection on the Internet. The URS is not meant to addressquestionable cases of alleged infringement (e.g., use of terms in their generic sense) orfor anti-competitive purposes or denial of free speech, but rather for those cases inwhich there is no genuine contestable issue as to the infringement and abuse that istaking place.
The UDRP has unquestionably been an important and successful mediation tool for
trademark owners and domain name registrants alike. However, times andcircumstances have changed since the UDRP was implemented and brand owners andInternet 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 areseparate proceedings with distinct remedies. The URS is designed to provide a fastermeans to stop the operation of an abusive site. The UDRP is designed to result in thetransfer 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 anddesist 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 thedomain 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 amark 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 theregistrant 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 domainname 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 nameregistration. 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 oftrademark 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 accessto the URS for a set period of time.
As agreed upon by all the members of the IRT, the task force members considered thisrecommendation 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 isalready 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 andcost-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 toaddress 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 thatthe 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 andfair.” Further, the timing is consistent with or in the range of current other expedited systems examined in theindustry (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 wasincreased.
3. INITIATION OF URSThe 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 arequirement 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

3.2

Pre-Registration – during the pre-registration process, trademark holders
would pay a reasonable fee and provide important information about theirtrademarks.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 withaccompanying signature for each complaint; andAllowing companies to take advantage of deposit accounts for automatic
deduction (and reimbursement) of filing fees.

No Pre-Registration – Complainants submit complaints without pre-registrationand 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 thatrights owners can pre-register in the IP Clearinghouse. Further, it is our recommendation that all URS decisions berecorded and searchable in an IP Clearinghouse database. as well as with any individual third-party providers asapplicable. 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.

Page 27 of 69

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 thecomplainant agrees to indemnify all parties that act based on the representations in thecomplaint.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 forcompliance (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 ofsite is as described in the complaint). Only if the complaint is validated as completeduring 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 otherproviders who offer similar services, discussions with several current UDRP examiners, and the need to keep theprocess 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 individualcomplaint 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) andnot 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 othersimilar 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 manylayers or unnecessary complications. While the IRT believes that some of the comments received were as apossible misunderstanding of the process as drafted, and that clarification of the language on our part addressedsome 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 isnow 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 adefault “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 interestsin the goals of being “cost-effective, fast and fair,” and addresses the concerns raised by WIPO and others.

Page 28 of 69

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 beto 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 toanswer a complaint prior to the invocation of any adverse consequences to their domainnames and websites. While abusive use should be addressed as quickly andinexpensively as practicable, the IRT is cognizant that registrants also should beprotected against over-aggressive use of this system by complainants. Fair notice andan 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 theregistry 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 orother 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 thedomain 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 consideredfraudulent (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 nameregistrant. 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 orComplainant.
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 theRegistrant that the name is frozen and that the failure to answer would result in theRegistrant’s inability to use the domain name for any purpose. This initial notice to theRegistrant should be provided to the e-mail address contained in the Whois record forthe 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 theregistrar 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’ mailingaddress located in the Whois database.29 Such letter should be sent within five (5) daysof 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 theComplainant’s evidence that they do not have a legitimate right or interest in the domainname(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 asdetailed and required in the Form Answer attached as Appendix D. In addition, theRegistrant may allege the Complainant filed an Abusive Complaint on the form andrequest 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 theNominet Dispute Resolution Service for .uk particularly instructive in that Nominet also require notice in the form ofa certified letter. The IRT believes that the certified letter is an important safeguard and that it would not add to thetiming of the adjudication not add a significant amount to the cost of the system. The IRT considered requiring thecomplainant 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 reverseabuse.

30

The IRT also considered and rejected potential requirements that the third party provider provide notification of thecomplaint via fax and/or telephone in addition to e-mail and a certified letter. The IRT decided that suchrequirements 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 forcomplaining 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 shouldbase 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 findingof abuse by the Examiner will be the best option. This is not merely a system where the complainant loses acomplaint, 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 resultof these discussions, the IRT had two competing concerns.

Page 30 of 69

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, thecase 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 todefend 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 asystem of refunding one of those two fees would impose additional complexity and costs on the system making it amore expensive process. Moreover, it could cause complaints of alleged phishing attempts to respondents andlikely 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 potentiallywasting an Examiner’s time (and as a result, potentially increasing the fees that will be charged to file complaints inthe first place). The idea is that the fee would be low (for example, in the $30 or $40 range) and matched by theComplainant. 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 numberof 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 ananswer. Second, there was concern that with the number of defaults that will likely occur, using the UDRP as amodel, 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 thecosts of the URS on a yearly basis between the registries based on the percentage of disputes that involve thatgTLD. The IRT, upon additional discussion and analysis, believes that the proposed timeline is a fair balance ofcompeting 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 twentyfive (25) domain names will be subject to Answer Fees and where filing/Answer Fees are refundable to theprevailing party. Where a domain name complaint lists 100 domain names and 98 are found abusive, thecomplainant will be refunded 98% of fees and the respondent refunded 2% of fees.

Page 31 of 69

and, in the case of Registrant, letter (sent by regular mail) that the matter has enteredinto Default.35 All cases of default proceed to Examination.
During the period of default, the Registrant cannot (a) change the content found on thesite 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 theComplainant, 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 inattached Appendix C, will be imposed. The $50 Default Answer filing fee is nonrefundable.
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 withexperience 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 costrecovery basis.

35

In the current environment, trademark owners are often forced to spend a significant amount of time, effort andmonetary resources in going after those domain name registrants that the URS is intended to address. Often theseregistrants 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 totransfer 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 tohaving 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 toaddress competition concerns, the IRT recommends that ICANN ensure that URS decisions be searchable acrossthe multiple providers through a single database, and that the various providers be consistent in the interpretationof the standards. It would also be important to ensure that multiple providers share information such as the identity

Page 32 of 69

The Final Evaluation analysis involves consideration of three basic issues, similar to thestandards 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 andExaminers].38

Whether the domain name registrant lacks any right or legitimate interest in thedomain 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 thedomain name primarily for the purpose of selling, renting, or otherwisetransferring the domain name registration to the complainant who is the owner of
the trademark or service mark or to a competitor of that complainant, forvaluable consideration in excess of your documented out-of-pocket costs directly
related to the domain name; orof 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 ofthe 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 proceedwith claims under the UDRP or in courts, as appropriate. Exclusion from the URS is not intended in any way toprejudice 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 andability 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, relianceon 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, forexample. 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.

Page 33 of 69

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 thebusiness of a competitor; orby using the domain name, you have intentionally attempted to attract, forcommercial 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 fordecision 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 withcomputers and the domain name in question is brandxyzz.[gtld] and is used inconnection with an abusive pay-per-click site, the site would be frozen. If the domainname 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 themark(s), with short comments;

Page 34 of 69A finding on whether there is a lack of right or legitimate interest in the domainname(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 formof 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 theduration 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 thirdparty 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 goesto 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 muchconsideration the IRT decided against including transfer as a remedy since transfer as a remedy is alreadyavailable 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 thedomain 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 alsodecided against this mechanism because of the likely increased technical expenses and burdens on the URS
process provider and registries.

Page 35 of 69

The IRT also recommends that all Examiner decisions be made publicly available andsearchable through an open-access, centralized database, as well as through any of thethird-party providers.”
8. APPEAL
The losing party may appeal an Examination Decision, relating to any or all of thedomain 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 theoriginal record by a URS ombudsman on the grounds that the decision wasarbitrary 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 ombudsmanon 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 beborne by the appellant, but are refundable upon a finding in favor of theappellant.

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 witha court of competent jurisdiction – a court located in the country of the registrant or theregistrar,41 with authority to decide a case of cybersquatting or trademark infringement.
This fee is refundable if the registrant prevails in court.
9. ABUSIVE COMPLAINTSThe URS should have a low tolerance for abusive complaints. One goal of the IRT is topenalize 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 forlong 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 insteadof the registrar – but decided to maintain the UDRP standard. The purpose for the fee to have a web site resolve tothe 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 thedomain name registrant.

Page 36 of 69

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

Page 37 of 69

IRT REPORT AND RECOMMENDATION ON
POST-DELEGATION DISPUTE MECHANISM
As part of the IRT process, the IRT considered the numerous public comments callingfor 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-facemeeting 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 themechanism 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, andconcluded that certain contractual provisions contained in the draft agreement will
require modification in order to incorporate the IRT’s recommended form of the PostDelegation 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 toRegistry Operators, ICANN, intellectual property owners and dispute resolution
providers, the IRT further recommends that ICANN create a non-exhaustive list ofactivities that may or may not constitute “bad faith.”42
In its deliberations, the IRT was fully cognizant that the easier issue addressed in thisrecommendation is abuse of rights on the top level and that the concerns related topreventing 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 withoutsome 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 ofconsumers and brand owners while protecting Registry Operators from potential abuseby 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 tocreate 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 theprocedure 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 isdesigned to combat (i) Registry Operators that operate a TLD in a manner that isinconsistent with the representations and warranties contained within its Registry
Agreement, or (ii) Registry Operators that have a bad faith intent to profit from thesystemic registration of infringing domain names (or systemic cybersquatting) in theRegistry Operator’s TLD. Whilst it is not possible to define a specific threshold as towhat 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 tospecifically 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 theposition of several parties that submitted comments, that trademark owners should havea more active and clearly defined role in any post-delegation dispute mechanism byhaving 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 themechanism 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 bysubmitting 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 ofan alleged breach of the Registry Agreement related to the prohibited practices set forthin 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 andthen 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 notdiscover that the Registry Operator is directly in material breach of its contractual
obligations, then ICANN, the complainant and Registry Operator must attempt toresolve 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 throughan accredited DRP. ICANN’s initial finding of no material breach is not binding orcontrolling on the DRP Panel but may be taken into consideration along with otherevidence 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 theprovider’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 notfound to be “without merit,” this additional amount would be refunded to thecomplainant. 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 todiscourage 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 tothe 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 thecomplainant’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 found45

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 theRegistry 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 acomplainant 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 alreadyserved 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 themechanism.
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 Agreementwith ICANN, shall be required to submit to a mandatory administrative
proceeding where a third-party (complainant) has filed a complaint withICANN asserting that:
2.1.1.1 The Registry Operator's manner of operation or use of a TLD isinconsistent with the representations made in the TLD
application as approved by ICANN and incorporated into theapplicable Registry Agreement and such operation or use of
the TLD is likely to cause confusion with the complainant’s
mark; or2.1.1.2 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 registrationof 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.482.1.2 For the purpose of determining whether the TLD or domain nameregistrations 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 (PreDelegation) 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:




2.3

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”
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 afinding 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 anaward of monetary damages or attorney costs beyond those incorporated into thefiling 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 findingthat the Registry Operator’s defense is “without merit,” the Panel shall require theRegistry Operator to pay a fee equal to the pre-paid filing fee paid by thecomplainant. 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 useof 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 suchconsideration 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 toinclude 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 whenanother affiliated (by common control) registry’s or registrar’s
agreement with ICANN is terminated, provided thatsuch affiliated registry or registrar has also been involved in theactivities 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 registryagreement 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 bedeemed withdrawn and the administrative proceeding terminated. The Panel may
furthermore order that the Registry Operator pay a fee equal to the filing fee initiallypaid by the complainant to cover the costs of the procedure and, if applicable, anadditional amount for presenting a defense “without merit” (but the Panel shall nothave 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 afinding 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 andnotice 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 notprevent 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 theRegistry 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 PostDelegation Dispute proceeding which is the subject of the complaint, the Panel shalleither suspend or terminate the proceeding under the Post-Delegation Dispute
Mechanism. In contrast, submitting the dispute to an administrative panel inaccordance with its applicable Registry Agreement after the filing date of thecomplaint 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 theRegistry Operator shall have the right to file a formal dispute under the applicabledispute resolution process as set forth in its Registry Agreement. The filing of sucha dispute shall suspend the implementation of any remedies ordered hereunderpending 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 notact as precedent or otherwise affect or influence the resolution of subsequentdisputes, 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 publiccomment 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-levelprovision of WHOIS information for all domain names registered within the registry. Thismodel is in contrast to the “Thin WHOIS” model whereby the registry-level information isvery limited and Internet users must rely on the registrar-level for the submission ofrobust WHOIS data.
As agreed upon by all the members of the IRT, the task force members considered thisrecommendation 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.
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 theestablishment 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 takeplace 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, hasestablished 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 RECOMMENDATIONON 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 theapplication 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 thata simple expansion of the test for string comparison during the initial evaluation will notprejudice any third parties and will assist in eliminating any false positives caused by asimple 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 becompared (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 outof 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 recordationin the U.S., and conducting intellectual property due diligence. My particularexpertise is in the area of domain names and the Internet where I counsel clientswith respect to domain name and online disputes, including preparation andprosecution 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 areinterested 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 clientsthat are considering applying for a new TLD. To date, no clients have decided toproceed 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.
Page 47 of 69

Type of work performed in the answer above.
 Working with all types of IP, mainly trademarks and domain names. Responsible forthe development departments within the LEGO Group, clearing and protecting IP.
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.
 No such interests. We have not yet decided if we want to apply for a new TLD. If wewere to apply, it would only be for defensive reasons.
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 otherorganizations relating to global IP 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.
 No conflicting affiliation other than minor TM representation of Canada registrar.
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.

Page 48 of 69

None. I work with INTA, FICPI, ICANN, IPC, and other organizations but in our caseis 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 whenaccused of IP infringement. IP policy. ICANN policy.
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.
 Yahoo! is a reseller of domain names for Melbourne IT. Yahoo! has made no
decision regarding whether to pursue a TLD. As one of the world’s most famousInternet brands, Yahoo! is looking at the issue and following the implementation
phase.
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 JamilParticipant’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.

Page 49 of 69

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 in the past nor currently have any interest in any entity applying for new TLD
or involvement in any consultancy for new TLDs. Have provided gratis input to and amember of the Advisory Body of the ccTLD for .pk (PKNIC).
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 groupfocusing 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 ofRichemont for Richemont and its group companies and maisons, including
management of domain name portfolios and enforcement.
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.
 Richemont has no financial ownership or senior management/leadership interest in
current registries, registrars or other firms that are interested parties in ICANN
policy. Richemont is considering/intending on applying for a new TLD through its
group companies.
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 andmaisons on the IRT.

Page 50 of 69

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 andPatent 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 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.
 I do no have financial ownership nor interest in registries, registrars, or other firms
interested in ICANN policies. If a client considering applying for a new TLD I was not
informed.
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.
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 and member of various other Intellectual
Property organizations. I do not have any agreement.

Jeffrey J. Neuman, Esq.
Participant’s Current Vocation, Employer & Position.
 I currently serve as the Vice President of Law & Policy for NeuStar, Inc., the domainname registry for the .biz and .us top-level domains.
Type of work performed in the answer above.

Page 51 of 69

In this role, I am responsible for all legal and policy issues with respect to the .bizand .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 afront-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 seniorleadership 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 nothave 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, andbusiness ethics.
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.
 Network Solutions and its affiliates, NameSecure and SRSPlus, are ICANNaccredited registrars. As such, we have a potential interest in New TLDs. The
Central Registry Solutions joint venture has an interest in serving as a back-end
registry provider for New TLD applicants.

Page 52 of 69

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 withvarious 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 andCentral Registry Solutions LLC. Since May 2006, I have served as Chair of theICANN Registrar Constituency. Additionally, I currently serve as co-chair of the DNSWorking 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 ofclearance, counseling, enforcement, prosecution/maintenance, licensing, domainname 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 theInternet. 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 andExecutive 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 aPage 53 of 69

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 aneutral in UDRP proceedings for WIPO and I have served as a mediator in federal
court proceedings involving domain names.
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.
 I have no financial or other interest in any parties with any contract with ICANN. I amaware that some clients of my firm have considered the new TLD proposals, but I
am not aware of any client that intends to apply for a new TLD.
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 amember of IRT. As noted above, I participate in the IPC as a representative of ABA
and AIPPI.

Kristina RosetteParticipant’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 ofColumbia bar.
Type of work performed in the answer above.
 I specialize in Internet and trademark matters, and represent trademark ownerclients in connection with such matters. Among my responsibilities, I develop andimplement strategies in the areas of offensive and defensive domain nameregistration, 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 thepurchase and use of keywords and trademark aspects of search engine

Page 54 of 69

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 virtualworlds. In connection with advising firm clients of generally noteworthy trademark- orInternet-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 firmclients. I am currently the registrant of several domain names, both on behalf of firmclients and in an individual capacity. From time to time and as circumstances
warrant, I have completed and submitted Whois Data Problem Reports andsubmitted 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 andestablishment of DotCooperation LLC, the .coop registry operator, but that matterhas 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 aregistry 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 doso 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.
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.
 I have advised and am advising several firm clients that are considering applying for
a new TLD. Among these clients, the only ones that have made decisions about
whether to apply for a new TLD have decided against doing so.
Page 55 of 69

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

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 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.
 If I have any clients who are considering applying for new TLDs, I have not been so
informed.
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 outcomeof 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 theprotection of brands online and domain names; I assist clients with domain namestrategy, 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 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.
 None. Lovells has made no decision regarding whether to pursue a TLD. I am
involved in advising clients on new gTLD progress and issues and certain of theseclients are considering applying for a new TLD.
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 andLaw. No agreement or understanding with any of these groups as to participation orviews 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 oninternet governance 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.
 Time Warner owns AOL, an accredited registrar. The Time Warner Companies arestill evaluating the new TLD proposal, and at this time, have no intention of filing for
a new TLD.
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).

Page 57 of 69

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 wellknown internationally for its intellectual property program, innovations in practicebased 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 particularemphasis on international and comparative issues and the legal challenges posedby new technology to intellectual property policy.
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.
 None. As far as I am aware, the Law Center, its trustees, employees and partner
institutions are not currently considering applying for a new TLD.
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 tojoin the IRT.

Nick Wood
Participant’s Current Vocation, Employer & Position.
 In charge of domain name management company working exclusively withintellectual property owners and the professionals who advise them. Position:
Managing Director.
Type of work performed in the answer above.
Page 58 of 69



Responsible for vision of company, P&L, all marketing & communications, client
relations, strategic consultancy from time to time delivered through Valideus Ltd., acompany 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 thepast. We are coordinating a not-for-profit bid for a DOT LONDON. We have thesupport of the Mayor of London and other key agencies. Some of our clients may beinterested 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), managerof the registry .ORG.
Type of work performed in the answer above.
 General Counsel of PIR, develop and oversee implementation of policy for thecompany. Chair of Registries Constituency.
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.
 PIR is manager of the .ORG registry, and I am Senior Vice President – Law &Policy. PIR may apply for IDN versions of .ORG and may apply for other gTLDs, but
no decision has been made on any such application.

Page 59 of 69

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 RuizParticipant’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 Directorsof 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 toapply 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 electedto 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.

Page 60 of 69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 inform 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.xyzAbc.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

Page 62 of 69

APPENDIX CTIERED FEE SCHEDULE

RECOMMENDED FEE STRUCTURE
Examination

Complainant

Respondent

0-25

$200

$0

26-100$250$250101-200

$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 somedomains 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.
AppealAppellant

Ombudsman$100

Reinstate site pending
filed appeal in court$100

Appeal filing fees refundable if successful.

Page 63 of 69

APPENDIX DFORM 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.
3.

Confirm accurate and up-to-date Whois
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)

4.

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

5.

Complaint re: abusive use of process
Comments (mandatory)

6.
7.

Statement that Answer is true and correct
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
Mark/Registration at Issue– Automated list inserted
Compliance with Notice Requirements
Date of first email:
Date of certified letter:
Domain Name(s) is:☐ Identical to mark(s)☐ Confusingly similar to mark(s)Comments
Legitimate Rights to the Domain Name
☐ Not known by name☐ Not bona fide use☐ Not related or authorized
Comments
Bad Faith Use and Registration☐ Sold for profit☐ Pattern☐ Disrupting a competitor☐ Sold for commercial gain
Comments
Decision (mandatory)

3.
4.

5.

6.

7.

8.

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

Page 65 of 69

APPENDIX F

Complaint

URS
PROCESS –FINDINGFOR
RIGHTSOWNER

Compliance
Review

Whois Freeze Upon
Compliance; Notice Period
BeginsAnswerExamination

Find For
Complainant

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

Replug Site/Whois
Freeze Maintained

Page 66 of 69

APPENDIX F(cont’d)Complaint

URS
PROCESS –FINDINGFOR
DOMAINNAME
OWNER

Compliance
Review

Whois Freeze Upon
Compliance; Notice Period
BeginsAnswerExamination

Find For
Registrant

Whois Freeze Released(registrant fee, if any,
reimbursed)

AppealFiled

Page 67 of 69

APPENDIX F(cont’d)Complaint

URS
PROCESS –DEFAULT

Compliance
Review

Whois Freeze Upon
Compliance; Notice Period
BeginsDefault

Default
Answer30 days = Replug Site
+30 days = Site Down

Decision

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

AppealFiled

If Registrant, Replug
Site/Whois Freeze
Maintained

Page 68 of 69

APPENDIX G
POST-DELEGATION DISPUTE MECHANISMOUTCOMEBASE FEE

Complainant Wins
Complainant Loses
Complainant Loses and Complaint “Without Merit”
Registry Operator Wins
Registry Operator Loses
Registry Operator Loses and Defense “Without Merit”$0.00$15,000.00$15,000.00$0.00$15,000.00$15,000.00

PENTALTYPORTION$0.00$0.00$10,000.00
$0.00
$0.00
$10,000.00

REFUND$25,000.00$10,000.00
$0.00
N/A
N/A
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 PostDelegation Dispute. The fees are collect from the Registry Operator only in the event a Panel finds against the Registry
Operator.

Page 69 of 69