THE INTERNATIONAL CENTRE FOR EXPERTISE OF THE
INTERNATIONAL CHAMBER OF COMMERCE

CASE No. EXP/496/ICANN/113

UNIVERSAL POSTAL UNION(SWITZERLAND)
vs/
WHITEPAGES TLD LLC(USA)(Consolidated with cases No.
EXP/494/ICANN/111
UNIVERSAL POSTAL UNION (SWITZERLAND) vs/ VICTOR DALE, LLC (USA)andEXP/497/ICANN/114
UNIVERSAL POSTAL UNION (SWITZERLAND) vs/ GMO REGISTRY, INC. (JAPAN)
andEXP/500/ICANN/117
UNIVERSAL POSTAL UNION (SWITZERLAND) vs/ CHARLESTON ROADREGISTRY INC. (USA))This document is a copy of the Expert Determination rendered in conformity with the New
gTLD Dispute Resolution Procedure as provided in Module 3 of the gTLD Applicant
Guidebook from ICANN and the ICC Rules for Expertise.

EXP/496/ICANN/113 - EXPERT DETERMINATIONINTERNATIONAL CHAMBER OF COMMERCE
INTERNATIONAL CENTRE FOR EXPERTISE
EXP/496/ICANN/113(c. EXP/494/ICANN/111, EXP/497/ICANN/114, EXP/500/ICANN/117)

EXPERT DETERMINATION(Community Objection)

In the matter

UNIVERSAL POSTAL UNION (Switzerland)
vs/WhitePages TLD LLC (United States)

Issued by the Expert Panel composed ofProfessor Catherine KESSEDJIAN, Expert

EXP/496/ICANN/113 - EXPERT DETERMINATIONTABLE OF CONTENTS
Acronyms and Definitions ......................................................................................................................................... 3
I. INTRODUCTION ................................................................................................................................................... 4
A. THE PARTIES .................................................................................................................................................. 4
B. THE EXPERT PANEL ........................................................................................................................................ 4
1. The New gTLDs ......................................................................................................................................... 5
2. The Agreement to the Dispute Resolution Mechanism............................................................................... 5
3. The Objection and the Response ................................................................................................................. 6
D. THE SCOPE OF THE PRESENT EXPERT DETERMINATION .................................................................................. 7
II. THE COURSE OF THE EXPERT DETERMINATION PROCEEDINGS ..................................................... 8
A. THE EXPERT MISSION, LANGUAGE AND TIMETABLE....................................................................................... 8
B. PARTIES’ SUBMISSIONS................................................................................................................................... 9III. THE DISPUTE ..................................................................................................................................................... 9
A. THE OBJECTOR’S MAIN ARGUMENTS .............................................................................................................. 9
1. UPU has standing as it is an established institution which represents a “clearly delineated community” .. 9
2. Community opposition to the application is substantial ........................................................................... 10
3. There is a strong association between the community invoked and the .mail string................................. 11
4. WhitePages’ application does create a likelihood of material detriment .................................................. 11
B. THE APPLICANT’S MAIN ARGUMENTS ........................................................................................................... 12
1. UPU lacks standing ................................................................................................................................... 12
2. The Objector demonstrates no substantial opposition ............................................................................... 12
3. There is no strong association between the community invoked and the .mail string .............................. 13
4. The Objector does not prove material detriment ....................................................................................... 14
IV. THE FINDINGS OF THE EXPERT PANEL .................................................................................................. 15
A. Does UPU have standing? ....................................................................................................................... 15
B. Is There a Substantial Opposition by the Community? ............................................................................ 19
C. Is There a Strong Association? ................................................................................................................. 27
D. Does the Application create a likelihood of material detriment? ............................................................. 29
V. FINAL CONCLUSION BY THE EXPERT PANEL ........................................................................................ 35
VI. EXPERT DETERMINATION COSTS ............................................................................................................ 36VII. DECISION ......................................................................................................................................................... 37

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EXP/496/ICANN/113 - EXPERT DETERMINATIONACRONYMS AND DEFINITIONSGeneralAppendix III:

Appendix III to the Rules, Schedule of Expertise Costs for Proceedings under
the New gTLD Dispute Resolution Procedure

Centre:The ICC Centre for Expertise

Guidebook:

ICANN gTLD Applicant Guidebook, Module 3 (version of 4 June 2012)

ICANN 2007 Report:

ICANN Final Report on the Introduction of New Generic Top-Level
Domains, 8 August 2007, last updated 4 September 2009 (referred to in
section 3.2.1. of Module 3)

ICC Practice Note:

ICC Practice Note on the Administration of Cases under the New gTLD
Dispute Resolution Procedure

Module 3:

Module 3 of the ICANN gTLD Applicant Guidebook

Procedure:

Attachment to Module 3 of the gTLD Applicant Guidebook, New gTLD
Dispute Resolution Procedure

Rules:The Rules for Expertise of the ICC

UPU:

Universal Postal Union or the Objector

WhitePages

WhitePages TLD LLC or the Applicant

Pleadings and Other Procedural Elements

Annex (followed by a number):Annexes to the Applicant’s response

Annex (followed by a letter and
27 August 2013)

Annexes to Applicant’s answer to the Expert’s request for clarification

Applicant:WhitePages TLD LLC

Closed gTLD:A gTLD which is proposed to be operated for the sole benefit of the Applicant

DNS:

Domain Name System

DNSSEC:

Domain Name System Security Extensions

DPO:

Designated Postal Operator

Established Institution:

An Institution, as defined in section 3.2.2. of Module 3

Exhibit (followed by number):Annexes to the Objector’s Objection

GAC:

Governmental Advisory Committee to ICANNIO:

The Independent Objector appointed by ICANNObjection:

The Objection filed by UPU on 13 March 2013

Objector:

UPU

Response:

The response to the Objection filed by WhitePages on 1 June 2013

Sponsored gTLD:A gTLD in the meaning defined by the ICANN 2007 Report

USPS

United States Postal Service

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EXP/496/ICANN/113 - EXPERT DETERMINATION

I. INTRODUCTION
A. THE PARTIES
1. The Objector
UNIVERSAL POSTAL UNION
Mr. Ricardo Guilherme Filho
Weltpoststrasse 43000 Berne 15
Switzerland
ricardo.guilherme@upu.int
hereinafter referred to as “UPU” or “the Objector”
2. The Applicant:
WHITEPAGES TLD LLC
Ms Sabena Diamond
1301 Fifth Avenue, Suite 1600
Seattle, Washington
United Statessdiamond@whitepages.com
hereinafter referred to as “WhitePages” or “the Applicant”,
3. The Objector and the Applicant are hereinafter collectively referred to as “the Parties”.

B. THE EXPERT PANEL
4. By letter of 10 July 2013, the Centre informed the Parties that the Chairman of the Standing
Committee appointed the Expert Panel on 1 July 2013, pursuant to Article 3(3) ofAppendix I to the Rules.
5. On 12 July 2013, the Applicant objected to the appointment of the Expert.
6. On 16 July 2013, the Expert answered the concerns expressed by the Applicant regarding
her independence and impartiality.
7. On 7 August 2013, the Centre confirmed the appointment of the Expert.
8. The Expert Panel is composed of one Expert:
Prof. Catherine Kessedjian
19 villa SeuratBoîte/Porte B
75014 Paris
France4

EXP/496/ICANN/113 - EXPERT DETERMINATION

C. THE BACKGROUND OF THE DISPUTE
1. The New gTLDs
9. After a long consideration with several rounds of public comments and consultation,
ICANN has decided to open the way for a large number of new generic top-level domainnames (“gTLDs”), while they were before very limited in number (22 as of 13 June 2012).
The goal set by ICANN is to “open up the top-level of the Internet namespace to foster
diversity, encourage competition and enhance the utility of the DNS”1.
10. On 13 June 2012, ICANN publicly released a listing of approximately 1900 new gTLDs
Applications. These Applications were made by persons and entities that want to manage
the new gTLDs in a manner described in the applications, only part of which is known by
the public.
11. After all Applications were published, there was a period for objections from persons andentities that opposed the attribution of some of the new gTLDs.
12. ICANN also appointed an Independent Objector (“IO”) in the person of Professor Alain
Pellet. The present case is not stemming out of an IO’s objection.
13. The present dispute arose out of UPU’s Objection to the .mail new gTLD for which
WhitePages filed an application posted on 13 June 2012, under reference N° 1-1906-88399.
14. Before going into the details of the Objection and the Response, it is worth mentioning that
this dispute is a “Community Objection”, as defined by Article 2(e)(4) of the Procedureand further explained in the Applicant Guidebook. We will set out below the tests whichmust be met for the Objection to prevail as set out in Module 3 of the Applicant
Guidebook2.
2. The Agreement to the Dispute Resolution Mechanism
15. By filing an Application, an Objection or a Response under the Dispute Resolution
mechanism defined by ICANN, both the Objector and the Applicant agree on the set ofprocedural rules listed in the Centre’s letter of 13 August 2013, all of them being available
on the Centre’s website. For the sake of clarity, these rules are:1
2

Preamble to Applicant Guidebook, p.2.
See, notably, p.7 below.

5EXP/496/ICANN/113 - EXPERT DETERMINATIONThe Rules for Expertise of the ICC (“Rules”)
Appendix III to the ICC Expertise Rules, Schedule of expertise costs forproceedings under the new gTLD dispute resolution procedure (Appendix
III”)
ICC Practice Note on the Administration of Cases (“ICC Practice Note”)
Attachment to Module 3 of the gTLD Applicant Guidebook, New gTLD
Dispute Resolution Procedure (“Procedure”)
Module 3 of the gTLD Applicant Guidebook (“Guidebook”).
16. Particularly, the Parties agree that the Expert Determination is binding upon them.
17. It is unclear, however, whether the Expert Determination is binding upon ICANN. This
point need not be decided because it falls outside the scope of this Expert Determination.

3. The Objection and the Response
18. UPU filed the Objection to the .mail gTLD Application by WhitePages on 13 March 2013.
19. The Centre acknowledged receipt of the Objection on 18 March 2013, which was
registered for processing on 5 April 2013 according to Article 9(b) of the Procedure.
20. During the month of April 2013, there was discussion between the Parties and the Centre as
to the possible consolidation of the present case with other cases filed for the same .mailgTLD, according to Article 12 of the Procedure. Consolidation was requested by UPU andthe Applicant did not oppose.
21. On 3 May 2013, the Centre wrote to the Parties informing them that it decided to proceedwith consolidation of the present case with three other cases relating to the .mail gTLD,
namely cases EXP/494/ICANN/111, UPU vs. Victor Dale, LLC; EXP/497/ICANN/114,
UPU vs. GMO Registry, Inc; EXP/500/ICANN/117, UPU vs. Charleston Road RegistryInc.
22. Therefore, the present case was prepared in a consolidated manner. However, this
Determination was drafted separately, as instructed by the Centre.

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EXP/496/ICANN/113 - EXPERT DETERMINATION

D. THE SCOPE OF THE PRESENT EXPERT DETERMINATION
23. The present Expert Determination is limited to the examination of the standards defined by
ICANN for a Community Objection in Module 3.
24. Module 3 deals with Community Objection in three different parts.
25. First, section 3.2.1. describes the grounds for objection, including the Community
Objection, and refers the reader to the ICANN report on the policy development process forthe new gTLDs, report dated 7 August 2007, available on line on ICANN’s website, for“the rationales for these objection grounds”3. This report is referred below as the ICANN2007 Report4.
26. Second, section 3.2.2.4. describes who is eligible to file a Community Objection anddefines further which factors could be taken into consideration to decide whether the
Objector is an Established Institution and whether it has an ongoing relationship with aclearly delineated community.
27. Finally, section 3.5.4. defines four (4) tests which the Expert Panel must take into
consideration in order to decide whether the objection prevails. These four tests are, as
follows:
The objector must be an established institution with an ongoing relationshipwith a clearly delineated community; andCommunity opposition to the application is substantial; andThere is a strong association between the community invoked and the appliedfor gTLD string; andThe application creates a likelihood of material detriment to the rights orlegitimate interests of a significant portion of the community to which the string
may be explicitly or implicitly targeted.
28. The four tests mentioned in the preceding paragraph are cumulative, i.e. if any one of themis not met by the Objector, the Objection must be rejected.
29. It must also be stressed that the burden of proof lies with the Objector (Article 20(c) of theProcedure).
3This is the report referred to in Article 2(e) of the Procedure.
It is to be noted that the online version of the ICANN 2007 Report mentions it was last updated on 4 September
2009.
4

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EXP/496/ICANN/113 - EXPERT DETERMINATION
30. The overall philosophy of the Community Objections transpires from the Public Comment
Summary prepared by ICANN and dated 21 February 20115. Notably, ICANN emphasizes
that “the ultimate goal of the community-objection process is to prevent themisappropriation of a community label by delegation of a TLD and to ensure that an
objector cannot keep an applicant with a legitimate interest in the TLD from succeeding.”(p.94 and again p.104 of the online version).

II. THE COURSE OF THE EXPERT DETERMINATION PROCEEDINGS
A. THE EXPERT MISSION, LANGUAGE AND TIMETABLE
31. According to the Centre’s letter of 13 August 2013, the requirement for a written “expert
mission” is waived in accordance with point 6 of the ICC Practice Note.
32. According to the same letter, the Expert Panel could have decided to establish such a
document. However, after due consideration, the Expert Panel decided not to do so.
33. Pursuant to Article 5(a) of the Procedure, the language of the submissions and proceedings
is English.
34. Pursuant to Article 6(a) of the Procedure, the correspondence between the Parties, theExpert and the Centre was entirely submitted in electronic form.
35. Pursuant to Article 4(d) of the Procedure, the place of the proceedings is Paris, France.
36. Article 21(a) of the Procedure provides that the Centre and the Expert shall makereasonable efforts to ensure that the Expert renders his decision within 45 days of theconstitution of the Expert Panel. The Centre considers that the Panel is constituted when
the Expert is appointed, the parties have paid their respective advances on costs in full andthe file is transmitted to the Expert. In this case, the Panel was constituted on 13 August
2013 (i.e. the date on which the file was transmitted to the Expert). Accordingly, the Centre
and the Expert were to make reasonable efforts to ensure that her determination was
rendered no later than 27 September 2013 (as calculated in accordance with Articles 6(e)and 6(f) of the Procedure), bearing in mind, however, that the proceedings were stayed forsome time.
37. On 17 September 2013, the Centre wrote to the Parties requesting additional advancepayments and, therefore, stayed the proceedings until further notice.
5

Available on ICANN’s website.

8EXP/496/ICANN/113 - EXPERT DETERMINATION
38. On 1st October 2013, the Centre resumed the proceedings after having received the
additional payments from the Parties.
39. In accordance with Article 21(b) of the Procedure, the Expert Panel sent the draft
Determination to the Centre on 4 November 2013.

B. PARTIES’ SUBMISSIONS
40. The Expert Panel decided the present case according to the following documents filed by
the parties:
The Objection filed by UPU on 13 March 2013 with 20 exhibits. On 14 March
2013, UPU replaced the content of Exhibit 17, requesting that the “new exhibit 17” betaken into consideration instead of the one filed with the Objection.
The Response filed by the Applicant on 1 June 2013 with 16 annexes, numbered
1 to 16.
The Applicant’s amended answer of 27 August 2023 to the Expert’s request forclarification of 21 August 2013, accompanied by 8 annexes numbered A to H6.
The Objector’s comment of 30 August 2013 on the Applicant’s answer, with
one annex numbered annex A7.
41. According to the Procedure, both the Objection and the Response and all of the exhibits
and annexes were transferred to the Expert Panel in electronic form.
42. Pursuant to Article 19(a) of the Procedure, the Expert Panel decided not to hold a hearing.
43. The Expert Panel decided to request additional evidence from the Parties on 21 August
2013. The Parties filed their answer and comment as described in § 40 above.

III. THE DISPUTE
A. THE OBJECTOR’S MAIN ARGUMENTS
1. UPU has standing as it is an established institution which represents a “clearlydelineated community”

6

To distinguish these annexes from those filed with the initial response by the Applicant, they will be referenced« Annex X of 27 August 2013 ».
7
For the sake of clarity, Annex A will be referenced hereinafter as Exhibit A.

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EXP/496/ICANN/113 - EXPERT DETERMINATION
44. UPU argues that it is an Established Institution, in the meaning of section 3.2.2. of the
Guidebook, since it is in existence as an intergovernmental organization for over 118 years
and is, since 1948, a specialized agency of the United Nations. It is composed of 192
member countries which have designated altogether 199 DPOs (Exhibit 1).
45. UPU argues that it serves the Postal Community which is a clearly delineated community
as requested by the Guidebook. UPU acts via a number of bodies and the Universal Postal
Congress, held every four years (Exhibits 3 and 5). It also claims that it serves the generalpublic because “the Postal Community functions to protect the interests of the public instrong, secure and trustworthy mail services and to facilitate international cooperation in
the mailing field” (Objection, p.8).
2. Community opposition to the application is substantial
46. UPU’s mandate is, among others, “to stimulate the lasting development of efficient andaccessible universal postal services of quality, in order to facilitate communication between
the inhabitants of the world” (Objection, p.7). UPU’s mandate also directs the organization
to adopt “fair common standards and the use of technology, the cooperation and interaction
among stakeholders, the promotion of effective technical cooperation and the satisfactionof customers’ changing needs” (Objection, p.7).
47. Because of that mandate, several Posts have asked the UPU to file the Objection “with theapproval of the Director General”. In consequence, UPU argues that “the filing of thisObjection by the UPU on behalf of the Postal Community alone demonstrates substantial
opposition to the Application from the Postal Community” (Objection, p.10).
48. In order to prove that there is substantial opposition from the Postal Community, UPU
argues that five Posts filed over eighty Public Comments against the Application (Exhibit7), having invested “significant time, efforts and funds” for that purpose. Among the Posts
opposed to the Application is USPS which handles more than 40% of the world’s mailvolume (Objection, p.10).
49. Therefore, according to the UPU, there is a substantial opposition by the Community
invoked.

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EXP/496/ICANN/113 - EXPERT DETERMINATION
3. There is a strong association between the community invoked and the .mail string
50. UPU argues that the operation and interests of the Postal Community are implicitly targetedby the proposed gTLD .mail because it threatens to interrupt the smooth and secureprovision of mail services (Objection, p.8).
51. UPU argues further that the Applicant’s “mission for .mail is to create a recognizable,
viable, and profitable extension to bring together individuals and companies that are
passionate about self-identifying themselves in the mail community” (Objection, p.11).
According to UPU, the Applicant’s argument is contrary to reality since the public actuallytargeted “already associates the term “mail” with the services provided by the members of
the Postal Community” (Objection, p.11). Further, UPU contests that there exist an “emailcommunity” and argues that the “mail community” claimed by the Applicant to be targetedis the same as the Postal Community (Objection p.12).
52. UPU also claims that the public associates the term “mail” with the goods and services
provided by members of the Postal Community (Objection, p.12 and 18, Exhibit 13). In
most countries, “mail” and “post” are associated, says UPU, and they refer to a “regulatedindustry”. Nevertheless, the manner in which the Applicant proposes to run the .mail TLD
means that it “would be skipping over the entities that actually provide mail services”(Objection, p.13).
53. Consequently, there is a strong association between the community invoked and the .mailstring.
4. WhitePages’ Application does create a likelihood of material detriment
54. UPU argues that the Applicant’s proposed operation of the .mail TLD “would substantiallydamage the Postal Community’s reputation by failing to meet the public expectations
regarding the reliability, privacy and security of “mail” which has been established throughgreat effort by the Postal Community” and through regulations which make mail exchanges“secret and inviolable” (Objection, p.14). This is why Posts are often considered as “trusted
institutions” thanks to security strategies put together by the UPU through its Postal
Security Group (Exhibit 5) which have raised the level of expectation of the public in theprivacy and security of “mail” (Objection, p.15 and Exhibits 15 and 16).
55. The risk of confusion of the public is important, says UPU, as the .mail TLD “and theassociated websites” would be given the same level of trust by the public as they give to themail when, in fact, those websites would not warrant the same security and privacy

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EXP/496/ICANN/113 - EXPERT DETERMINATION(Objection, p.16). Having that in mind, UPU predicts that “Posts will [...] have to commit
time and resources to complaints directed at them by mistake as a result of unregulated
activities conducted at the .mail TLD” (Objection, p.16).
56. UPU insists that “the Applicant’s proposed use of the .mail TLD ignores the public interestin protection of smooth, secure delivery of the world’s mail by the Postal Community”(Objection, p. 16-17) which was ICANN’s mandate to UPU with the .post sponsored TLD.
Moreover, the establishment of the .mail TLD will misdirect “consumers from the websitesof the Posts or from .post websites to websites on the .mail TLD, thereby disrupting theactivities of the Postal Community and harming the public” (Objection, p.17).
57. Finally, UPU argues that the Postal Community depends on the DNS for its core activities
and that the use of .mail TLD by the Applicant would “unfairly encroach” on the Postal
Community’s goods and services (Objection, p.18-19 and Exhibits 19 & 20).

B. THE APPLICANT’S MAIN ARGUMENTS
1. UPU lacks standing
58. While the Applicant does not deny that UPU is an established institution, it argues that theclaimed “Postal Community” is not a clearly delineated community as requested by
ICANN’s Guidebook.
59. For the Applicant, the Community invoked by UPU is nothing more than UPU’s own
membership and does not comprise the several private companies (such as FedEx) whose
activities are to propose mail services to a multitude of businesses and individuals. Are also
excluded mail forwarding services such as MailBoxes, Earth Class Mail and Pack Mail
which are not part of the Postal Community claimed by UPU. (Response, p.5).
60. The Applicant relies also, mutatis mutandis, on the IO’s opinion (Annex 5) to the effectthat generic terms such as “book” are incompatible with the notion of a clearly delineatedcommunity, which cannot exist in those cases (Response, p.5).
2. The Objector demonstrates no substantial opposition
61. The Applicant argues that only a small portion of UPU members called for the Objection(Response, p.6). Among all the comments UPU claims to have gathered in support of its
objection, only 5 of the 199 UPU-members Posts opinioned and these comments are very

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EXP/496/ICANN/113 - EXPERT DETERMINATION
duplicative in nature (Response, p.6). These five comments “constitute less than 2.6% of
the UPU-member Posts and cannot be considered substantially representative of the UPU’s
membership” (Response, p.7). Even if one considers the five additional Posts claimed by
UPU to be in support of its objection, “it remains that more than 95% of UPU-member
Posts have chosen not to oppose the Application” (Response, p.7).
62. In addition, the Applicant argues that the comment filed by USPS, upon which UPU bases
the essential part of its Objection, “failed to garner the support of its own national
government” as stated by the US Department of Commerce in its letter to ICANN of 2
April 2013 (Annex 6).
63. The Applicant also argues that UPU has failed to establish that the sources of opposition to
the Application are diverse and distributed geographically and substantially, so that they
represent the Postal Community at large (Response, p.8). Even if one takes for granted,
argues the Applicant, the fact that the Posts having expressed support “hail from Africa,
Asia, Europe, North America and South America”, in each case, they represent “only one
or two Posts or nations for those continents”. For example, in Europe, Poste Italiane andPoctzta Polska hardly represent a substantial portion of all European Posts (Response, p.8).
64. Finally, the Applicant argues that the costs supposedly incurred by those opposing theApplication are not supported by any evidence (Response, p.9).
3. There is no strong association between the community invoked and the .mail string
65. Even if the Applicant recognizes that the term “mail” “has traditionally referred to matterphysically delivered by Posts”, this is no longer the case (Response, p.9). The Applicant
argues, inter alia, that first class mailings through USPS have dropped by half (Annex 7)
and it is predicted that the mail we have known in the past will become “extinct” (alsoAnnex 7).
66. The Applicant relies on three WIPO domain names decisions (Annexes 8, 9 and 10) two
between USPS and private companies and one between Deutsche Post AG and anotherprivate company, in which each of the two Posts have been denied the transfer of domainnames such as “post-office.com” or “post.com” (Response, p.10). One of these decisions
expressed the idea that the term “mail” calls to mind consumers of electronic mail, not ofphysical mail (Annex 9).

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67. In the Applicant’s view, this is also confirmed by the staggering numbers of users ofelectronic mail services such as Gmail, Hotmail etc... (Annexes 11 and 12).
68. The same is true with dictionaries and encyclopedias entries, where the term “mail” isautomatically associated with electronic mail when used in the Internet context (Response,p.11).
4. The Objector does not prove material detriment
69. Contrary to what UPU argues, .mail TLD may not be equated to .gov TLD. Indeed,“consumers might expect that a .gov domain or email address to derive from an official
governmental body”, but .mail does not because it is a generic word (Response, p.11/12
and Annex 14).
70. Because the public realizes that electronic mail services are typically provided by privatecompanies, not by governmental body, they are unlikely to believe that a website
associated with a .mail domain name, would indicate a government service (Response,p.12). The public is unlikely to be confused about who controls .mail domain names
associated websites and electronic mail services.
71. In addition, the Applicant argues that the rights protection measures will be in place toprevent or remedy the harms that the UPU asserts will arise. For example, there will bemechanisms in place to prevent or remedy abusive registration so that confusion with any
Post will be avoided or remedied. There are multiple ADR system in place to that effect.
Therefore, UPU’s assertion, that Posts will have to commit time and resources tocomplaints directed at them by mistake, is also nor credible (Response, p.13).
72. There is no evidence that the Applicant does not intend to institute effective security
protection for user interests (Response, p.14). The Applicant’s operation of the .mail TLD
will not interfere with the core activities of the Postal Community. In the past, the Posts
have used all sorts of domain names showing that they have multiple possibilities tocommunicate with their customers. In addition, the newly launched .post sTLD will add
more means for the Posts. Applicant’s operation of the .mail gTLD will not “block” thePosts from communicating (Response, p.14).
73. The Applicant also argues that the Postal Community does not depend on the DNS system
for its core activities. Indeed, the Posts’ core activity involves the physical delivery of

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EXP/496/ICANN/113 - EXPERT DETERMINATION
letters and packages which do not depend on the DNS system. The use the Posts make of
the DNS is only as a supporting tool (Response, p.15).
74. Finally, the Applicant argues that UPU does not provide any evidence regarding the harm
its members may suffer which are “merely phantom harms” (Response, p.16), nor does it
establish any factual likelihood that the alleged detrimental outcomes would occur.
75. Consequently, the Objection must be rejected.

IV. THE FINDINGS OF THE EXPERT PANEL
76. The Expert Panel will examine consecutively the four tests outlined above8.

A. Does UPU have standing?
77. In order to decide on this question, the Expert Panel must answer two separate questions: 1)
Does the Objector invoke a “clearly delineated community”? 2) Is the Objector an
Established Institution?
1) Does the Objector invoke a “clearly delineated community”?
78.

In order to decide on the first test, i.e. whether the community invoked by the Objector is a“clearly delineated community”, the Expert first must find out what a “community” in themeaning used by ICANN is.

79.

Module 3 proposes five (5) factors which, inter alia, an Expert Panel could balance todecide on the first test, but none of these factors readily defines what a community is.
Hence, the Expert had to resort to other sources.

80.

First, the Applicant files screenshots of Dictionary.com (Annex E) which gives all the
many common definitions of the concept of “community”. The meanings run from “people
living in one locality or village”, to “the public in general”, or society (used normally in the
singular), but also lists “community of interests” or “a group of associated nations sharing
common interests or a common heritage”.

81.

If anything can be drawn from Annex E, it is that the Objector indeed represents a
community, at least according to one of the common meanings listed there. Having said

8

See above § 27.

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that, however, the Expert found it was not sufficient to use a common definition for the
purpose of this Determination.
82.

Instead, the Expert decided that the best definition of what is a community, for the purposeof a Community Objection, is the one found in the ICANN 2007 Report. This definition is
as follows: “Community should be interpreted broadly and will include, for example, an
economic sector, a cultural community, or a linguistic community. It may be a closely
related community which believes it is impacted.” (p.5 of the online document andRecommendation 20).

83.

It is true that the NCUC Minority Statement criticizes the definition and the guidelines bysaying that allowing a broad definition of the concept of community allows “for the
maximum number of objections” (Annex C to the ICANN 2007 Report, p. 21 of the on-line
document). Further it explains that “there is no requirement that the objection be reasonable
or the belief about impact to be reasonable. There is no requirement that the harm be actual
or verifiable. The Standard for ‘community’ is entirely subjective and based on the
personal beliefs of the objector” (same reference).

84.

The Expert Panel is of the opinion that, notwithstanding the criticisms expressed towards
the definition proposed by ICANN, such definition is the best possible to match thephilosophy of community objections as expressed above9.

85.

UPU says that the community it invokes is the “Postal Community” (Objection, p.6 andseveral times thereafter). However, in the same paragraph, it also says that “the public is
directly affected by the proposed operation of a .mail TLD that does not originate from atrusted governmental source and does not actually provide any regulated mail services.”.
Therefore, there is some doubt about what is the exact delineation of the community
invoked by UPU. Is it the Postal Community? Is it the public at large?
a) The Postal Community

86.

It is now necessary to decide whether the “Postal Community” invoked by the Objector isof such a nature as required for a “clearly delineated community”. The Objector explainsthat the Postal Community invoked is composed of its Member States (i.e. 192 States as of
1 Dec. 2011) and of the 199 Posts (Objection, p.16 and Exhibit 1). In other words, thePostal Community invoked by UPU has the same composition as the UPU itself.

9

See § 30.

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EXP/496/ICANN/113 - EXPERT DETERMINATION
87.

First, WhitePages argues that many companies such as FedEx, UPS, TNTExpress on the
one side, and Mail Boxes, Earth Class Mail, etc..., on the other side (Annexes 1 and 2), are
not part of the Community invoked by the Objector. However, these companies have seen
their role increase over the years in delivering mail and packages as do the Posts memberof UPU. The importance of these companies in the activity of mail services is testified by
the fact that USPS itself has deemed necessary to conclude partnerships with both UPS andFedEx (Annexes 3 and 4).

88.

The Expert Panel can only note, with approval that, indeed, services akin to postal services
are nowadays performed by private companies which compete with the traditional public
postal services. However, if one agrees that there are now both private and publiccompanies which offer postal services, UPU does not pretend to represent the entirety ofthese companies. In fact, when one considers the market of postal services in 2013, it isclear that it is divided into two communities: the first one is the traditional postal
community composed of public entities which, for the sake of this Determination, will becalled the “public sector postal community”; the second one may be composed of theprivate companies mentioned by WhitePages plus any other which perform similar
services, which could be called the “private sector postal community”10. UPU pretends
only to represent what the Expert just called “the public sector postal community” which,for the purposes of this Determination, and in view of the criteria to be taken into
consideration, does constitute a “community”.

89.

WhitePages also argues that the word “mail” is incapable of indicating “a source” since it isa generic term. A “source” in WhitePages argument must be capable of identifying “amanufacturer or sponsor of a good or the provider of a service” (Annex 14). As aconfirmation of its position, WhitePages files a statement11 by the IO, Alain Pellet, (Annex5), posted on his website, where he discusses the “closed” gTLDs, and where he says that
common words used for generic TLDs are not of such a nature as to target a specificcommunity (see § 4 of IO’s statement under Community Objections).

90.

The Expert Panel must note, at the outset, that the IO’s statement does not bind the Expert
Panel deciding the present dispute. There are several reasons for that. First, as mentionedby the IO himself, his role is limited since he is allowed to file objections only where noone else has done so. By nature, therefore, the IO expressed no opinion as to the .mail10

Whether these private companies do form a community in the ICANN meaning of the concept remains to be
demonstrated. This demonstration falls outside the scope of this Determination and is not necessary for it.
11
Improperly characterized by the Applicant as a « letter ».

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EXP/496/ICANN/113 - EXPERT DETERMINATION
string since UPU has filed an objection, preventing the IO to file one on its own. Second,
when discussing community objections, the IO expressly stresses that “each application has
to be reviewed separately” (§ 7 of IO’s statement under Community Objections). Finally,
the IO says that the notion of community is “wide and broad and is not precisely defined by
ICANN’s Applicant Guidebook for the new gTLDs program” (see § 3 of IO’s statement
under Community Objections). Hence it seems that the IO has missed both the ICANN2007 Report and section 4.2.3. of the Applicant Guidebook.
91.

Second, the notion of source, as used in the Applicant’s Response, hardly can apply in thepresent context. Indeed, Annex 14, upon which the Applicant relies, is a decision by theDistrict Court of the Central District of California12 in a trademark dispute where theidentification objective of a “source” is of primary importance. It is doubtful that such a
definition is of any use in the present context and it certainly does not conform to thedefinition of a “community” as the one given by ICANN.

92.

Having considered all the above, it is clear to the Expert Panel that UPU claims to represent
what can be called the “public sector postal community” which is composed of both theStates members of the organization and the postal services that these member States havedesignated to take part in the organization’s operations. In all meanings of the word“community” used in ICANN’s documents13, it is clear that UPU does represent a
community of stakeholders who have common interests and strong ties among them so thatthey deemed fit, a long time ago, to form an organization, the UPU, the mandate of whichis to reinforce the ties among them and further cooperation of their activities so that the
public at large benefits from smooth services in the postal sector.

93.

It is true that it is difficult to assess whether UPU members themselves are “aware” thatthey form a “community” in the meaning used by ICANN. This concept and the context inwhich it is used, however, is sufficiently new to allow a positive answer. The mere fact that
States and the entities designated by them are taking part in UPU’s activities, remain
members of the organization over a long period of time, allows any observer, even not
privy to the organization, to witness a sense of community among them.

94.

Therefore the Postal Community invoked by UPU does meet the requirements of ICANN’s
definition of a community.

12
13

June 21, 2000, 120 F.Supp 2d 870, Image Online Design Inc. v. Core Association et al.
Notably the fact that ICANN’s definition refers to an “economic sector”, see above § 82.

18

EXP/496/ICANN/113 - EXPERT DETERMINATIONb) The public at large
95.

While UPU does claim that it represents the Postal Community composed of public sector
operators, it then proceeds to make references, all along its Objection to the “public” or“the global public” (notably, Objection p.9).

96.

Considering the definition the Expert Panel has retained for the concept of “community” itdoes not seem that the public at large can be considered as a community so that to invoke a“clearly delineated” one, which is the test to be decided. This is not to say, however, thatthe public at large is completely outside the scope of the decision. Indeed, as will be
explained later in this Determination14, the public must be taken into consideration for the
analysis of the fourth test, but the public at large, as claimed by UPU, is not the proper
factor to be taken into consideration for the first test.

97.

Having said that, however, this caveat does not change the Expert Panel’s conclusion that
UPU invokes a clearly delineated community.

98.

For the reasons explained above, the Expert Panel is of the opinion that the Objector has
met the burden of proving that it represents a clearly delineated community.
2) Is UPU an “established institution”?

99.

There is no dispute about the fact that UPU is an Established Institution (Objection, p.5, 8
and 9) and fulfils the criteria mentioned in section 3.2.2. of Module 3. This is
acknowledged by WhitePages (Response, p.4).
3) Conclusion on the first test

100. The Objector has met the requirements of the first test.

B. Is There a Substantial Opposition by the Community?
101. For the second test to succeed, the Objector must show that the “Community opposition to
the application is substantial”. Module 3 suggests that the Expert Panel could take into
consideration, inter alia, the number of expressions of opposition; the representative natureof entities expressing opposition; the level of recognized stature or weight among sourcesof opposition; the distribution and diversity among sources of expressions of opposition;14§§ 149 & ff.

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EXP/496/ICANN/113 - EXPERT DETERMINATION
the historical defense of the community in other contexts and the costs incurred by theobjector in expressing opposition.
102. In addition, ICANN has warned Expert Panels that “the public comment forum should not
be used as a mathematical polling mechanism [...], the quantity of comments is not in itself
a deciding factor.” (New gTLDs Proposed Final Applicant Guidebook, Public Comment
Summary, Feb. 21, 201115, p.37).
103. This is why the Expert Panel decided to look at three elements: 1) the opposition by the
public at large; 2) the opposition by UPU’s members, i.e. the Postal Community invokedby the Objector; 3) the opposition by UPU itself.
1) Expression of opposition by the public at large
104. It must be mentioned first that none of the Parties has filed evidence of public comments
towards the .mail string, whether in favor or against such a gTLD.
105. Based on its 2011 Annual Report (Exhibit 6) UPU argues that the Postal Community it
represents delivers mail to “82% of the world’s population or more than 5 billion people”(Objection, p.9 and Exhibit 5). In addition, UPU emphasizes that the Postal Community
concerns 5 million postal employees and 663 000 postal offices around the world (Exhibit
5). These figures are not contested by WhitePages in any material way. However, they are
not interesting as such for the decision to be taken on the second test. Indeed, it would havebeen more cogent if UPU had successfully triggered a large public campaign against the
attribution of the .mail TLD to one or more private companies. Nowadays, with theInternet, such campaigns are easy to launch. Nothing similar has been evidenced by UPU.
106. It is true that UPU is an intergovernmental organization and, as such, thought it more
appropriate to rely on its members.
2) Expression of opposition by UPU members
107. This is why UPU files a number of oppositions expressed by some postal administrations
or offices during the public comment period opened by ICANN (Exhibit 7). Exhibit 7
comprises copies of all oppositions filed, not only against WhitePages’ Application, butalso against applications by other companies. For the present case, the Expert Panel took
into consideration only the opposition expressed against WhitePages’ Application, i.e. p. 81
to 92 of Exhibit 7.

15

Available on ICANN’s website.

20EXP/496/ICANN/113 - EXPERT DETERMINATION
108. The Expert Panel can only notice, that the content of Exhibit 7 does not match the text of
the Objection itself. UPU argues, for example, that “Brazil Post” and Poste Maroc haveexpressed opposition to the Application (Objection, p.10). However, the Expert Panel could
find no evidence of such an opposition in UPU’s file for the present case. Brazil Post has
filed one comment but for a different application. In addition, contrary to other postal
services (for example, USPS or Poste Italiane) it has not considered important enough toreplicate its comment for the other applications, even though ICANN’s guidelines make it
clear that comments should be made for each application (see the Application comments
User Guide16, p.12). Poste Maroc has filed a very brief comment saying that it agrees with
USPS, but it did so against another application which has now been withdrawn. Poste
Maroc, like Brazil Post, has not considered it to be important enough to duplicate its
comment against WhitePages’ Application.
109. UPU also argues (Objection, p.10) that “China Post and Macao Post separately expressed
their support for the Public Comments filed against the Application. South Africa Post has
equally stated its opposition to the Application”17. Notwithstanding this allegation, theExpert Panel notes that UPU’s file does not show any evidence of such an expression. The
Expert Panel could not find such comments notwithstanding a thorough exploration of
ICANN’s website.
110. UPU further argues that “a number of Posts have expressed their opposition ... throughtheir Member Country’s Governmental Advisory Committee (GAC) representatives”
Objection, p.10). Again, UPU’s file does not contain any evidence supporting such anallegation.
111. Further, out of the 80 or so public comments claimed by UPU to have been filed withICANN during the public comment period, a large part of them have been filed by the same
Posts, in similar or identical terms (see, for example, the comments by Poste Italiane andUSPS) for different applications. Against WhitePages’ Application UPU files twocomments by Poste Italiane written in identical terms; one comment by Poczta Polska S.A.
and eight comments by USPS.
112. It is true that, as recalled in § 102 above, an analysis of public comments may not be madeonly on a mathematical basis. However, the Expert Panel is compelled to note that out of

16

This Guide is available on ICANN’s website.
The same is repeated in footnote 1 of UPU’s Comment (dated 30 August 2013) on Applicants’ joint answer ofAugust 27, 2013 to the Expert Panel’s August 21, 2013 letter, with no accompanying evidence.
17

21

EXP/496/ICANN/113 - EXPERT DETERMINATION
the 199 Posts claimed to compose the Postal Community by the Objector, only a very small
number has felt the need to express oppositions. Having said that, UPU’s next argument isthat the opposition by USPS alone is a very heavy opposition because of the weight
represented by that postal service within the Postal Community.
113. Indeed, UPU relies heavily on the one opposition by USPS and seems to claim that, byitself, it does represent a substantial opposition. UPU exposes, without being contradicted
by WhitePages18, that USPS handles more than 40% of the world’s mail volume (Exhibit
8). These figures are certainly impressive but fall short of demonstrating that a substantial
portion of the Postal Community has expressed opposition to WhitePages’ Application for
the .mail TLD. In fact, even if USPS does represent a large portion of the world’s mailvolume, this is not sufficient to prove a “substantial” opposition from the Postal
Community. The level of evidence required by ICANN, considering the philosophy
restated above19, is higher and the Expert Panel needs to find that other sources of
opposition exist.
114. In addition, WhitePages files a letter written by Lawrence E. Strickling, Assistant Secretary
for Communications and Information of the United States Department of Commerce, dated
2 April 2013, addressed to Dr. Stephen D. Crocker, Chairman of ICANN’s Board of
Directors (Annex F). The letter is very short: “Please be advised that the objections filed by
the United States Postal Service (USPS) to the seven applications for the proposed newgeneric top level domain, .mail, are not supported by the coordinated view of the UnitedStates Government (USG). Consistent with our commitment to the multistakeholder model,
the USG will present its coordinated views to the Governmental Advisory Committee(GAC) as it forms its consensus advice to the Board on these matters”.
115. Having considered this piece of evidence, on 21 August 2013, the Expert asked the Parties
four questions related to the second sentence of Mr. Strickling’s letter, namely:
1. Did the United States Government present its coordinated views to the GAC?
2. If so, provide me with the pdf version of that document clearly showing the date on
which it was submitted.
3. If the answer to 2.1. is no, do you know of the reason(s) why the USG did not act?
4. If the answer to 2.1 is no, do you have any idea whether such coordinated views are to
be filed in the near future, i.e. before or around 6 September 2013?

18

Although WhitePages argues that evidence filed to exemplify the importance of USPS is « self serving
promotional material » (Response, p.9).
19
See § 30.

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EXP/496/ICANN/113 - EXPERT DETERMINATION
116. On 27 August 2013, the Applicant filed a joint answer (with other Applicants in the
consolidated cases20) to the Expert’s questions (hereinafter, “Answer of 27 August
2013”)21.
117. As to the first question, the Applicants argued that the USG “presented its coordinatedviews on its support for objections to specific new gTLD applications to the GAC during
the ICANN meeting of April 7-11, 2013. These views did not include any support for
issuing GAC Advice against any new gTLD applications for .MAIL.” After explaining
what the mandate of the GAC is and what its procedural rules are (Answer of 27 August
2013, Annexes A, B), the Applicants argue that “the minutes of private GAC meetings are
not published online nor are they otherwise available for public access” (Answer of 27
August 2013, Annex C)22.
118. Applicants further explain that the US Department of Commerce is the sole representativeof the United States Government to GAC (Answer of 27 August 2013, Annex D) and theonly institution authorized to present the coordinated view of the USG on issues related to
ICANN. However, because of the private nature of GAC’s meetings, “there is no public
document reflecting the views presented by the USG on GAC Advice against new gTLD
applications” (Answer of 27 August 2013, p. 2). However, Applicants file some email
correspondence between John Nevett (Donuts) and Elizabeth Bacon and Fiona Alexander
of NTIA23 (Answer of 27 August 2013, Annex E) which purports to confirm that the USG
presented its coordinated views to GAC in Beijing24.
119. Applicants further explain that the USG did not issue a GAC Early Warning against any
applications for .MAIL (Answer of 27 August 2013, Annex F). Indeed, from that Annex,
the USG appears to have published an Early Warning only against .army, .airforce and.navy. While the Australian Government seems to be the only government having issued an
Early Warning against .mail.
120. Applicants further file two GAC’s Communiqués. One released in Beijing on 11 April
2013 and one released in Durban, South Africa, on 18 July 2013 (Answer of 27 August
20

Because the answer was filed jointly, the following paragraphs will jointly refer to “the Applicants”.
The fact that all four Applicants filed a joint answer explains that, in this section of the Determination, it isreferred to “Applicants” and not each of the Applicants.
22
The Expert fails to see how Annex C of Answer of 27 August 2013 confirms the point made by the Applicants.
This is a minor point which the Expert thought unnecessary to pursue.
23
The acronym was not explained by the Applicants. However, considering the full email address, it seems to bean agency of the US Government.
24
If these proceedings were conducted in the US style, the question asked by Mr. Nevett to Fiona Alexander
would be considered as a “leading question”, hence inadmissible as evidence.
21

23

EXP/496/ICANN/113 - EXPERT DETERMINATION
2013, Annex G). The Beijing Communiqué mentions no opposition from specific membersof GAC and no decision to oppose the .mail string, contrary to a number of other strings
such as .shenzhen, .persiangulf, .date, .spa etc... (see p.3 of Annex G of Answer of 27
August 2013). However, the Durban Communiqué shows that GAC resolved not to object
to .date and .persiangulf (point IV, §3). Again, the .mail gTLD is not discussed in the
Durban Communiqué. The Expert notes that the Durban Communiqué discusses again theprotection of IGOs names and acronyms (point IV, §5). However, this is not relevant here
since the dispute does not relate to a .UPU gTLD.
121. Applicants further point out that the lack of any discussion (at least as referred to in the
public GAC Communiqué) of the .mail TLD shows that governments are not concernedwith the .mail string which is not “a pressing issue for governments” (Answer of 27 August
2013, p.2, last §).
122. Finally, Applicants stress the fact that “in the whole of 2013, [the US Department ofCommerce letter of 2 April 2013] is the only letter sent to the ICANN Board on behalf of
the United States related to a specific TLD application” (Answer of 27 August 2013,
Annex H), “which speaks volumes as to the USG’s position on this specific issue”.
123. Considering the answers given to question 1 posed by the Expert, Applicants answer “no”
to question 2 and “not applicable” to questions 3 and 4.
124. In its Comment of 30 August 2013 (hereinafter “Comment”) to Applicants’ Answer of 27
August 2013, UPU explains that it is an Observer to GAC but it is not at liberty to share
information regarding closed sessions of the GAC. However, in all honesty, UPU reveals
that it “did not raise its Objections to the .mail string directly within the GAC before filingthe Community Objections” (Comment p.2). It justifies such a decision with a procedural
argument. The gTLD Applicant Guidebook provides the proper mechanism for expressing
Community concerns, which does not include the GAC. UPU strictly followed the
Guidebook to file its Objections.
125. Further UPU argues that the US Department of Commerce’s views on specific new gTLD
applications do not speak to the merits of the UPU’s Community Objections. The USG
represents only one voice among the 192 countries composing UPU members. In addition,
the USG “designated the US Department of State, the United States Postal Service and the
Postal Regulatory Commission as the responsible government ministry, postal operator andpostal regulator for international postal matters in the United States” (Exhibit A, p.15). This
is why UPU argues that “with regard to international postal matters, including the24EXP/496/ICANN/113 - EXPERT DETERMINATION
protection of intellectual property, the responsibility lies with these three government
entities to act within and in support of the international postal community” (Comment p.2).
126. UPU goes beyond the Expert’s questions by repeating that UPU’s Objections reflect thesubstantial opposition of the postal community to the applications for .mail gTLD. By
doing so, UPU brings no further evidence than in its original files. It further explainsinternal operations of the UPU which will be discussed in the following section.
127. Finally, UPU argues that the US Department of Commerce letter is not relevant to its
Objections (Comment p.4-5). For the UPU, the letter “addresses Legal Rights Objections
filed by the United States Postal Service, not the Community Objections filed by the UPU”.
According to UPU, “the letter does not reference the UPU’s Community Objections or theUnited States Postal Service’s support of the UPU Community Objections. In fact, theletter simply does not relate to the UPU Community Objections at all and should be given
no weight whatsoever”.
128. Having considered all the arguments and evidence presented by the Parties, even thosewhich went beyond the questions asked by the Expert, the Expert considers that the letterof 2 April 2013 by the US Department of Commerce is relevant to the present case. It
would not be the first time, indeed, that a single government speaks with different voices indifferent international fora. Indeed, the Expert acknowledges the fact that for UPU and for
ICANN two different governmental agencies speak for the US Government. Therefore, it is
not entirely surprising that the US Department of Commerce tried to undermine theobjections filed by USPS since its own goals, and the policies it must implement, arecertainly different from the ones defended by USPS and the State Department. In thepresent context the US Department of Commerce’s letter shows that the US Government
has different views about the .mail TLD, which does not entirely annihilate USPS’
objection, but adds another layer to the Expert’s doubts that a substantial portion of thecommunity represented by the Objector has indeed expressed objection.
129. Having said that, a decision on the second test requires that the Expert consider yet a third
factor to finally conclude whether or not the objection represents a substantial portion of
the community.
3) Expression of opposition by UPU itself
130. UPU further argues that “in order to file this Objection, several Posts have asked the UPU
to file this Objection with the approval of the UPU Director General” (Objection, p.10).

25

EXP/496/ICANN/113 - EXPERT DETERMINATIONUPU offers no evidence of this fact in its file. On the contrary, UPU argues simply that “thefiling of this Objection by the UPU on behalf of the Postal Community alone demonstrates
substantial opposition to the Application from the Postal Community” (same reference).
131. The Expert Panel doubts this assertion. Indeed, UPU’s General Regulations (Exhibit 3) do
propose a set of clear rules concerning the functioning of the bodies of the organization.
Apart from the Congress (what other organizations would call their general assembly)
which meets every four years, the organization is run by a Council of Administration (art.
17) whose functions include: “to consider and approve, within the framework of its
competence, any action considered necessary to safeguard and enhance the quality of andto modernize the international postal service” (art. 102, section 6.2.). The Council iscomposed of 41 members (art. 102). It would have been possible, for the UPU Director
General, to call the attention of the Council to the new gTLDs process and the necessity to
act against the .mail TLD. There was plenty of advance warning posted by some GAC’s
members. There were plenty of consultation periods all along the process. However, UPU
does not evidence that such an action was ever taken.
132. The First Additional Protocol (24th Congress 2008 Geneva, also in Exhibit 3) empowers the
UPU Chairman to carry out the Council of Administration’s duties, in between sessions, incase of urgency. Nevertheless, UPU does not show that the filing of the Objection has beenauthorized in this manner.
133. In addition, it is doubtful that the filing of the Objection would fall within the competenceof the International Bureau or of its Director General. The list of duties of the Director
General, provided by Article 112 of UPU’s General Regulations, shows that the great
majority of them are administrative in nature. The Director General does not seem to havethe power to act on its own initiative. Perhaps, with a broad interpretation, it could be said
that filing the Objection could have fallen within the Director General’s duty under section
2.6. of Article 112 which provides that the Director General is entitled: “to take action toachieve the objectives set by the bodies of the Union, within the framework of theestablished policy and the funds available”. However, a stricter interpretation would lead tosaying that the Director General may not act sua sponte. This stricter interpretation is infact in line with the text of the Objection itself, where UPU felt compelled, as stated above,to argue that “several of its members have asked it to file this Objection”. If UPU’s
Director General had the power to act sua sponte, UPU would not have said that some ofits members had asked it to file the Objection. In any case, as said before, the allegation

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EXP/496/ICANN/113 - EXPERT DETERMINATION
according to which UPU’s members have asked the Director General to file the Objection
is not accompanied by any evidence.
134. For that purpose, the power of attorney filed by UPU is of no use since it only shows that
the Objection was filed “with the approval of the UPU Director General”. It does notprovide the source of the power of the Director General to approve such filing.
135. UPU further argues that “with the March 13, 2013 deadline for filing the Community
Objections approaching, the Council of Administration as well as Postal Operations
Council approved, pursuant to Article 16 of the Provisional Rules of Procedure of the CA,
the respective cause of action” (Comment, p.4)
136. The difficulty with such an argument is the total lack of evidence of such an approval. It is
not for the Expert to speculate why such proof was not accompanying UPU’s Comment.
However, the lack of evidence renders the argument inoperative.
4) Conclusion on the second test
137. Considering the small number of Posts which have filed public comments (even if one
includes Poste Maroc and Brazil Post)25, and considering that it is doubtful that UPU’s
Director General has the power to act sua sponte, without at least a clear mandate of the
Chair of the Council of Administration, UPU has not met its burden of proof with respect
to the second test.

C. Is There a Strong Association?
138. For the third test, the Objector must prove a strong association between the community
invoked and the applied-for gTLD string. This test is further characterized as “targeting” insection 3.5.4. of Module 3. The factors which the Expert Panel, inter alia, could take into
consideration are the statements contained in the application; other public statements by theapplicant and the associations by the public.
139. UPU argues that the word “mail” corresponds to a “regulated industry” (Objection, p.12).
“Only certain entities, most of which are governmental or quasi-governmental in nature,
are officially entrusted to deliver the ‘mail’” (Objection, p.12). UPU argues further that it
could not “locate an encyclopedia entry for the term ‘mail’ that designates any goods or

25

Considering, particularly, that UPU brings no evidence of the other posts’ alleged objections listed in footnote 1of its comment on Applicants’ joint answer, dated 30 August 2013.

27

EXP/496/ICANN/113 - EXPERT DETERMINATION
services referring to goods or services other than those provided by the Posts” (Objection,p.12). The same is true for several dictionaries, says UPU.
140. According to UPU, “unless the Applicant uses the .mail TLD in connection with mailrelated goods and services, which would by definition require the assistance of the Posts,
the Applicant would be skipping over the entities that actually provide mail services”(Objection p.13).
141. Because, “the UPU and the Posts are, collectively, the organizations globally responsible
for the secure and timely delivery of what the public understands by the term ‘mail’”(Objection, p.13), UPU argues that a strong association exists between the Postal
Community and the applied-for gTLD string ‘mail’.
142. WhitePages argues, on the contrary, that “while it is true that the term ‘mail’ has
traditionally referred to matter physically delivered by Posts”, this is no longer the case
(Response, p.9). It relies further on several decisions rendered in trademark disputes bypanels deciding either under the auspices of the National Arbitration Forum or WIPO
(Annexes 8 to 10), to the effect that the Internet, “as an international communications
medium, is replete with old world terms such as ‘email’, ‘you have mail’, ‘post officeprotocol’, which obviously do not refer to a governmental institution” (Response, p.10).
143. WhitePages, reviewing the Objector’s exhibits concerning the meaning of the word “mail”,
and considering its own evidence (Annexes 11 to 13), notes that the “public has become
accustomed to thinking of electronic mail as ‘mail’ when that word is used in the context of
the Internet” (Response, p.11). In conclusion, for the Applicant, the Objector fails to showthat there is a strong association.
144. It is not entirely clear to the Expert Panel whether the arguments presented by both the
Objector and the Applicant about the confusion that consumers may or may not be
confronted with if the .mail gTLD goes forward are really relevant to address the third test
examined here. Indeed, the Expert Panel understands the test as requiring that thecommunity invoked is directly targeted by the new generic TLD proposed. Hence, thePanel has to decide whether the Postal Community is indeed targeted by the application for
the .mail gTLD.
145. Independently to what will be decided for the fourth test below about the potential publicconfusion between the classic, physical mail and the future potential Internet .mail services,
if WhitePages’ Application is granted, there is little doubt that the .mail TLD future28

EXP/496/ICANN/113 - EXPERT DETERMINATION
services are targeting the Postal Community since mail services is the bulk of the services
that the Postal Community provides. This is particularly true for USPS which is a pure
player, unlike the French La Poste which offers other services such as financial services.
146. WhitePages’ file itself (Annex G of Applicants’ Answer of 27 August 2013) emphasizes
the need for public interests goals to be taken into consideration. Indeed, the GAC does
advise the ICANN Board that: “For strings representing generic terms, exclusive registryaccess should serve a public interest goal” (Annex G, p.11). Among the strings concernedby this advice, .mail is mentioned. It does show, therefore, that there is a strong association
between .mail and the interests represented by the Postal Community invoked by the
Objector.
147. In addition, the decisions on trademark disputes filed by the Applicant are not relevant to
the present test. Indeed, the trademark context presents unique features and ICANN’s
procedures and criteria for trademark disputes differ considerably from those applicable in
the present case. It must also be noted that two of decisions filed by the Applicant havebeen met with strong dissent by one of the panel members, showing that the views
expressed by the majority of the panels is far from being unanimous. This is also
exemplified by the last decision filed by WhitePages (Annex 15) which goes in the
opposite direction as the one advocated by WhitePages itself.
148. Considering the above, the Expert Panel is of the opinion that UPU has met therequirements for the third test.

D. Does the Application create a likelihood of material detriment?
149. Module 3 explains that the Objector must prove that there is a likelihood of material
detriment “to the rights or legitimate interests of a significant portion of the community
invoked”. In order to analyze this test, the Expert Panel, inter alia, may take into
consideration the nature and extent of damage to the reputation of the community; theevidence that the applicant is not acting or does not intend to act in accordance with theinterests of the community or the users more widely; the interference with the core
activities of the community; the dependence of the community on the DNS for its core
activities; the nature and extent of concrete or economic damage to the community; thelevel of certainty that alleged detrimental outcomes would occur.

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150. UPU argues that the Applicant’s operation of the .mail TLD “would substantially damage
the Postal Community’s reputation by failing to meet public expectations regarding thereliability, privacy and security of “mail”, which have been established through great effort
by the Postal Community” (Objection, p.14) and “threatens to interrupt the smooth andsecure provision of mail services” (Objection, p.8). Further, UPU argues that the
Applicant’s does not “intend to act in accordance with the interests of the Postal
Community and does not intend to institute effective security protection of user interests”(Objection, p.16), while “international mail standards [established by UPU] are critical to
the successful handling and delivery of all international mail” (Objection, p.9). Finally it
argues that the Applicant’s intended operation of the .mail TLD will interfere with the core
activities of the Postal Community which do depend on the DNS for its core activities andwill suffer concrete and economic damage (Objection, p.17-19) because ‘mail’ represents“secure communications and transactions” for the public, because “many national laws
mandate a high level of security and privacy for mail” (Objection, p.14-15 and Exhibits 5,
14, 15 and 16). UPU argues that “the public is likely to view the .mail TLD as identifying
members of the Postal Community, much in the same way as ‘.int’ identifies onlyinternational

treaty-basedorganizations,‘.gov’

identifies

only

US

governmentorganizations and ‘.post’ identifies only verified providers of mail products and services
and other members of the global postal community” (Objection, p.16).
151. UPU’s argument is essentially one of confusion by the users between the secured mailservices provided by postal services around the world and the services which will be
provided by .mail websites. This confusion, says UPU, could be such that the .mail TLD“could become overrun with third parties trading off the goodwill of the Posts for illicit
purposes and harming both the public and the goodwill of the Posts”. The premise of
UPU’s argument is that the terms “mail” and “post” are interchangeable (Objection, p.12,
17 and 18).
152. WhitePages’ main argument against the Objector’s claim is one of lack of evidence of any
material detriment or harm to the community or its reputation (Response, pp.11 to 16).
Particularly, the Applicant argues that there can be no confusion by consumers since “thepublic is pre-disposed to think of electronic mail when they think of ‘mail’, based on the
public’s extensive use of electronic mail on a daily basis” (Response, p.12).

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153. Further, the Applicant argues that there will be measures put in place to avoid abusive
registration (Response, p.13) and that the Applicant’s proposed management of the .mail
gTLD will not interfere with the core activities of UPU.
154. The Expert Panel considers there are four issues to be analyzed here: 1) The users’
potential confusion between “mail” and “post”; 2) The harm to the reputation of the Postal
Community; 3) The lack of security in the .mail Application; 4) The material economic
damage suffered by the Postal Community.
1) The users’ potential confusion between “mail” and “post”
155. The battle of arguments between the Objector and the Applicant on this issue is clearly oneof “anciens” and “modernes”, similar to what occurred in the French intellectual life in thelate XVIIth century. The battle bounces every so often, each time there is a new approach
to some societal evolution. It is still referred to nowadays to signify that some persons in asociety have difficulties accepting more modern ways of doing things. This is not to say, ofcourse, that modern ways are always better and more appropriate to follow, but there iscertainly something of that battle in the discussion between the Objector and the Applicant
over whether the term “mail” is confused with “post” by users.
156. The Expert Panel has analyzed carefully all the dictionary and encyclopedia entries filed by
the Objector (Exhibits 10 to 13) and the long list of websites and email services filed by the
Applicant (Annex 13)26. Almost all entries do mention either as a first meaning or as asecond or third meaning that “mail” is meant to be “letters and packages conveyed by the
postal system” or equate “mail” with “post” (See Exhibits 10 to 13).
157. From that analysis, it appears that the automatic analogy which may have been made in thepast between “mail” and “post”, is now progressively vanishing. However, this is notenough to show, for certain, whether users are now, and will in future, confuse “mail” with“post” with all the consequences described by UPU in its Objection if the .mail string is
attributed to the Applicant.
158. Indeed, some finer analysis is required when it comes to users’ potential confusion. As has
been decided by some courts, particularly in the United States, the Expert Panel considers
that the degree of consumer care is becoming more heightened as the novelty of theInternet evaporates and online commerce becomes commonplace. The criterion to be26

It is to be noted that the Applicant did not file dictionary entries or encyclopaedia entries for the word « mail »,but only a list of email service providers or email addresses and websites which are not really useful for the
discussion.

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applied here should take into consideration a reasonable consumer, not a sophisticated one,but one who actually acts prudently.
159. Therefore, it is less probable that Internet users today would be likely to confuse “mail”
with “post”, contrary to what the Objector argues. This may have been different a few years
ago when electronic mail was introduced. Indeed, some users may have been surprised tolearn, after having established an electronic mail box and after having used it for sometime, that the messages received and sent via that box could be hacked and the box takenover by Trojan horses and other non-invited intruders. The Expert Panel is of the opinion
that this time is slowly coming to an end, not so much because “mail” has become acommon word even in French27, but because the mentalities have evolved with theprogressive use of the Internet and the added sophistication of users. It is indeed doubtfulthat users will tomorrow attribute the same faith to .mail websites as they do to postal
services. It is also doubtful that they would attribute more faith to .mail websites and mailboxes than they do today to gmail or hotmail or any other Internet services which use
already the word “mail” in their domain name.
160. Of course, one must not look at Internet users only in western, developed, countries and“users” in the meaning of section 3.5.4. of Module 3 should encompass all kinds of users.
However, the Expert Panel was given no evidence that even in less developed countries,
the confusion between “mail” and “post” would be widespread. The increased use of theInternet and mobile phone services in some less developed countries shows thesophistication that these societies have reached, which is even sometimes higher than inwestern societies.
161. Considering the above, it is doubtful that users will indeed confuse “mail” and “post” ifthere are, in the future, websites associated with the .mail string.
2) The harm to the reputation of the Postal Community
162. It is not at all evident, from the Objector’s file, that indeed a .mail TLD will be run in a
harmful manner to the Postal Community. In fact, most of UPU’s arguments are very
speculative in nature.
163. UPU heavily relies on the fact that postal services are a regulated industry to support theargument that, if the application for the .mail string is granted, its operation will bypass
27

In French, the word “mail” has been known since around 1000 and designates originally either a hammer (its
Latin origin) or a promenade. It now has the third meaning of “electronic mail” which was introduced only very
recently into the dictionary.

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rules and regulations which have been in place for many years. This argument appears
specifically in Poste Italiane’s, Poczta Polska’s and USPS’s public comments. To take thewords of Poczta Polska: “For example, the average, reasonable consumer may be misled
into believing that the unregulated owners of the .mail TLD and second level domains
conform to the same industry standards as their country’s governmental regulated postal
administration when, in fact, they do not.” (Exhibit 7).
164. However, several arguments run contrary to UPU’s and the Posts’ position.
165. In the first place, postal services have, for a long time, been divided between public andprivate operators. This is acknowledged by UPU’s website and the historical backgroundprovided in other UPU documents. It is true that the public sector has taken over fromapproximately the end of the XIXth century until at least the first half of the XXthcentury28. However, the trend towards liberalization of postal services has not given rise to
major problems. Hence, privatization and more competition do not automatically lead toless regulation or protection.
166. Secondly, the GAC Communiqué already mentioned (Answer of 27 August 2013, AnnexG) covers in its Annex I the question of gTLDs which are linked to “Regulated Markets”(Annex G, p.8). It says: “Strings that are linked to regulated or professional sectors should
operate in a way that is consistent with applicable laws. These strings are likely to invoke alevel of implied trust from consumers, and carry higher levels of risks associated with
consumer harm.”. It adds that these strings should contain a number of safeguards, notablythat “Registry operators will [...] comply with all applicable laws, including those that
relate to privacy, data collection, consumer protection [...]”. However, in the list that
follows which includes the strings to which these safeguards should apply, the .mail TLD
does not appear. It is true that the list is expressly non exhaustive, but as of 11 April 2013,
the GAC did not think that the .mail string was related to a regulated sector. In itself, this ismeaningful. In any case, even if later the GAC does realize that the .mail string is linked
with a regulated sector, its advice clearly shows that this is not a sufficient reason to block
altogether the attribution of the string, but it recommends that registry operators do not
bypass applicable rules and regulations. It further recommends that registry operators“establish a working relationship with the relevant regulatory, or industry self-regulatory
bodies, [...].” (Annex G, p.8).

28

Probably with the exception of the UK, as shown by Exhibit 12.

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167. It is true that, in this case, WhitePages did not file the description of its proposedmanagement of the .mail string (or the public portion thereof), contrary to what other
Applicants have done. Therefore, the Expert is not in a position to know whether
WhitePages intends to follow the GAC’s recommendations.
168. However, even if one would accept that there is a potential harm to the Postal Community,that potential harm being identified in the arguments of UPU, it will be up to ICANN tofollow the recommendation of the GAC so that regulations be scrupulously complied withby registry operators.
3) The lack of security in the .mail Application
169. This is probably the most important concern voiced by the Objector. This concern is not
specific to the new gTLDs but is a recurring one with the Internet. The Objector
exemplifies the level of privacy and security enjoyed by the mailing system offered by
Postal services around the globe and files three regulations (USA, UK and Canada)(Exhibit 14) and one press release concerning the Sao Paulo and Curibita Posts in Brazil(Exhibit 15). In addition, the Objector files the Ponemon Institute 2012 study on the Most
Trusted Companies for Privacy (Exhibit 16), which shows that USPS is ranked fifth amongthe 10 most trusted companies.
170. The concern is particularly important as to the phenomenon called “data mining” which hasprobably been experienced by any person who has used the Internet either for somepurchase of goods or services or when their mail box has been hacked.
171. It is to be noted that WhitePages does not offer clear policy commitments in response to
UPU’s concerns. Indeed, contrary to what other Applicants have done, WhitePages does
not file its Application (or the public portion thereof) so that the Expert Panel is not in aposition to evaluate the security measures it intends to put in place to meet the concerns of
the Objector.
172. Considering the above, and if ICANN goes ahead with the .mail string, it will have to makeparticularly clear that the registrar is indeed managing the string with heightened security
and privacy.
4) The material economic damage suffered by the Postal Community
173. Although UPU does not express it in this exact manner, it is to be expected that allowing a.mail TLD will increase the falling in mail volumes already experienced by Postal services
around the world, probably due to the advent of Internet mail services mentioned by34

EXP/496/ICANN/113 - EXPERT DETERMINATIONWhitePages. Public data, such as the Eurostat Postal Services statistics, are telling in thisrespect. Mail volumes have dropped by 20% since 2006, due partly to the advent of e-mail.
In addition, the projection is that in 2020, the mail volume will drop to the level of 1986.
174. This trend is particularly evidenced by the Applicant’s filing of a study for the US market
alone (Annex 7) which shows that USPS faces mounting losses reaching over $3 billion at
the end of 2011. According to the same study, first class mailings have dropped by half inthe past decade and USPS is reported to be losing $25 million a day.
175. It is clear that this trend will only increase if the .mail TLD goes forward. In the Expert’s
opinion, this constitutes “a likelihood of material detriment” under Section 3.5.4. ofModule 3.
176. UPU also argues that the establishment of a .mail TLD will run to the detriment of the .post
sponsored TLD. Unfortunately, UPU offers no evidence in support of this argument. For
example UPU does not say how much revenue, if any, the .post TLD generates for UPU
and/or the postal industry around the world. Without these figures, it is doubtful whether
UPU meets the standard of proof required in these proceedings.
177. In light of the Expert’s findings at §§ 173-175 above, the economic harm is probable andsatisfies the requirement that there be “a likelihood of material detriment” under Section
3.5.4. of Module 3.
5) Conclusion on the Fourth test
178. The harm is probable. However, most of the concerns expressed by the Objector can be met
and corrected by a sound policy taken by ICANN and solid rules to implement that policy
and control its application.

V. FINAL CONCLUSION BY THE EXPERT PANEL
179. For each of the four tests which the Expert Panel had to run in order to decide on the
Objection, the Expert Panel finds as follows:
UPU has standing as it is an established institution which has an ongoing relationshipwith a clearly delineated community.
The Objection does not appear to be substantial.
The Application clearly targets the Postal Community.

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The material detriment to the community invoked by the Objector is probable. The
privacy and security issues can be easily addressed by ICANN if it decides to go ahead
with the attribution of the .mail TLD. The economic harm is probable and may be
avoided only if the .mail TLD is not attributed.
180. Considering the above conclusions for each of the four tests and the strict rules establishedby ICANN, the Expert Panel has no other possibility than either reject or accept the
Objection (Procedure, Art. 21 (d)). In addition, as stated above, the Objector bears theburden of proof and the four tests are cumulative, i.e. if the Objector misses only one test,
the Objection must be rejected. Therefore, because the Objector has not brought enoughevidence on the second test, the Objection must be rejected.
181.

The additional request by the Objector to reject “all other current and futureapplications for the .mail TLD” (Objection p.19) is dismissed pursuant to Articles 2(e)(iv)
and 21(d) of the Procedure, the Expert Determination being limited to deciding on thespecific application which is the subject of the proceedings.

VI. EXPERT DETERMINATION COSTS
182. Pursuant to Articles 14(e) and 21(d) of the Procedure, the Expert Panel is compelled tofollow the “costs follow the event” rule. One may regret the automaticity of the rule,particularly with regard to the complexity of the issues raised by the Objector and theApplicant. The lack of flexibility does not allow the Expert Panel to take into consideration
the nuances of the Determination and the fact that the Objector raised issues which are far
from being frivolous. Dura lex, sed lex! The Objection being rejected, albeit with manycaveats, the Objector has to bear the entire costs of the proceedings.

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VII. DECISION
183. For the above reasons, and in accordance with Article 21(d) of the Procedure, I hereby
render the following Expert Determination:
1. UNIVERSAL POSTAL UNION’s Objection is rejected and, accordingly, theApplicant, WHITEPAGES TLD LLC, prevails.
2. WHITEPAGES TLD LLC’s advance payment on costs shall be refunded by theCentre.

Place of the proceedings: Paris, France
Date: 4 February 2014

Professor Catherine Kessedjian
Expert37