THE INTERNATIONAL CENTRE FOR EXPERTISE OF THE
INTERNATIONAL CHAMBER OF COMMERCE

CASE No. EXP/508/ICANN/125

AMERICAN INSURANCE ASSOCIATION
(USA)
vs/
PIONEER WILLOW, LLC(USA)This document is an original 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.

TABLE OF CONTENTS
List of Abbreviations
1. INTRODUCTION……………………………………………………………………..3
2. PROCEDURAL BACKGROUND…………………………………………………….4
3. REQUIREMENTS APPLICABLE TO THE OBJECTION…………………………..6
A. Applicable rules
B. Requirements and standards
4. SUMMARY OF THE OBJECTION…………………………………………………10
A. Standing to object
B. Requirements on the merits
5. SUMMARY OF APPLICANT’S RESPONSE………………………………………14
A. Lack of standing
B. Requirements on the merits
6. FINDINGS OF THE EXPERT………………………………………………………16
A. Objector’s standing to object
B. Test 1: Clearly delineated community
C. Test 2: Substantial opposition by the community
D. Test 3: Strong association between community and string
7. CONCLUSION……………………………………………………………………….25
8. COSTS………………………………………………………………..........................25
DECISION………………………………………………………………………………..27

1

List of Abbreviations

Add.Sub.
Appendix III
ApplicantApplication
Attachment
Beijing GAC Advice
CentreDonutsDPML
Expert Determination
GAC
gTLD
Guidebook
ICANN
ICANN Final Report

Note
Objection
Objector
P&C Insurance Providers
PIC
Procedure
Proceedings
Requirements
Rules

Additional Submission
Appendix III to the Rules, Schedule of expertise costs for proceedings under theProcedure
Pioneer Willow LLC
Appl. I.D. 1-1516-617, <.insure>
Attachment to Module 3 of the gTLD Applicant Guidebook
GAC Communiqué - BeijingInternational Centre for Expertise
Parent company of Applicant, Donuts Inc.
Donuts Protected Marks List
Expert Determination
ICANN's Government Advisory Committee
generic Top Level Domain
gTLD Applicant Guidebook
Internet Corporation for Assigned Names and Numbers
Final Report - ICANN Generic Names Supporting Organization - August 8, 2007
ICC Practice Note on the Administration of Cases under the New gTLD Dispute
Resolution Procedure
Community Objection filed by American Insurance Association
American Insurance Association
Community of companies that are licensed and authorised to sell propertycasualty insurance products
Donuts Public Interest Commitment
Module 3 of gTLD Applicant Guidebook
Exp. 508/ICANN/125
Requirements to be met for an Objection to prevail as detailed in paragraph 28
Rules for Expertise of the ICC

2

1.

INTRODUCTION

1.

This expert determination [“Expert Determination”] is issued pursuant to theproceedings being held before the International Centre for Expertise [“Centre”] of theInternational Chamber of Commerce Centre designated as EXP/508/ICANN/125[“Proceedings”]1.

2.

The Proceedings deal with the Community Objection [“Objection”] filed by theAmerican Insurance Association [“Objector”] to the application registered by Pioneer
Willow LLC [“Applicant”] before the Internet Corporation for Assigned Names andNumbers [“ICANN”] for the new generic top level domain [“gTLD”] <.insure>(Appl. I.D. 1-1516-617) [“Application”].

3.

Objector – American Insurance Association – is an insurance trade organisation, thepurpose of which is to represent and advocate on behalf of its approximately 300
insurers members. Objector’s address is:
Ms. Angel Gleason
Associate Counsel
American Insurance Association, Suite 400
2101 L Street, NW
Washington D.C. 20037, USA
Ph: (+ 1) 202.828.7181
agleason@aiadc.org

4.

Objector is represented by:David E. Weslow, Esq.
Wiley Rein LLP
1776 K Street, NW
Washington D.C. 20006, USA
Ph: (+1) 202.719.7000
dweslow@wileyrein.com

5.

Applicant – Pioneer Willow LLC – is a company formed to acquire and operate generic
top level domains under ICANN’s new gTLD program2. Applicant’s address:
Mr. Daniel Schindler
Pioneer Willow, LLC
155 108th Avenue NE, Suite 510
Bellevue, WA 98004, USA
Ph: (+ 1) 424.254.8537
pionerwillow@donuts.co
The parent company of Applicant is Donuts Inc. [“Donuts”].

1Though originally consolidated with EXP/431/ICANN/48, an objection filed by The Financial Services
Roundtable, such objection was withdrawn.
2
Declaration of J. Nevett, Annex B to Response, at 3.

3

6.

Applicant is represented by:John M. Genga, Esq.
Don C. Moody, Esq.
The IP & Technology Legal Group, P.C.
Dba New gTLD Disputes
15260 Ventura Blvd, Suite 1810
Sherman Oaks, CA 91403, USA
Ph: (+1) 888-402-7706; (+1) 818-444-4582
john@newgtlddisputes.com
don@newgtlddisputes.com

7.

The Expert is:
Mr. Juan Fernández-Armesto
Armesto & Asociados
General Pardiñas, 102
Madrid 28006 – Spain
Ph: (+ 34) 91-562.16.25
jfa@jfarmesto.com

2.
8.

PROCEDURAL BACKGROUND

On 13 June 2012 Applicant filed with ICANN an application requesting the gTLD<.insure.
Community Objection

9.

On 13 March 2013 Objector filed an Objection before ICANN, which gave rise to thepresent proceedings.
Beijing GAC Advice10.

On 11 April 2013 the ICANN’s Government Advisory Committee [“GAC”] issued the
GAC Communiqué – Beijing [“Beijing GAC Advice”], where it stated that “toreinforce existing processes for raising and addressing concerns the GAC is providing
safeguard advice to apply to broad categories of strings (see Annex I)”.

11.

In Annex I to the Beijing GAC Advice the GAC advised the ICANN Board that:“Strings that are linked to regulated or professional sectors should operate in a waythat is consistent with applicable laws. These strings are likely to invoke a level of
implied trust from consumers, and carry higher levels of risk associated with
consumer harm… [I]n the current round the GAC has identified the following nonexhaustive list of strings that the above safeguards should apply to: …….


Financial: ……insure”.

4Applicant’s response
12.

Applicant filed its Response on 22 May 2013.
Appointment of Expert

13.

The Expert was appointed on 1 July 2013 by the Chairman of the Standing Committeeof the International Centre for Expertise of the ICC.

14.

The file was transferred to the Expert on 15 July 2013 following payment in full of theestimated Costs by the parties and the confirmation of the constitution of the Panel by
the Centre.
Approval of the Application

15.

On 26 July 2013 ICANN declared that the Application had passed the Initial
Evaluation.
Main procedural steps of the Proceeding

16.

By letter of 17 July 2013 the Expert inquired whether the parties required further
submissions3 and on 24 July 2013 the Expert authorised additional submissions,establishing 18 October 2013 as the date to deliver the Expert Determination4. It isnoted that the request to authorize a period after delivery of the last additional
submission to request a hearing was denied.

17.

On 9 August 2013, after consultation with parties, the Expert delivered to the parties a
Mission Statement, reflecting the basic aspects of the Proceeding.

18.

Objector delivered its additional submissions on 13 August 2013.

19.

Applicant filed its additional submissions on 3 September 2013.

20.

I note that the language of the Proceeding has been English5, this being the language ofall documentation submitted, and that all communications have been delivered byemail6.
Delivery date21.

This Expert Determination is submitted for scrutiny to the Centre pursuant to article
21(a) and (b) of the Procedure.

3

Objector required further submissions and requested the possibility of requesting a hearing after the last of theadditional submissions had been delivered.
4
The parties agreed to have the 45-day period to provide the expert determination start from the delivery of thelast additional submission.
5
As required by article 5 (a) of the Procedure.
6
As required by article 6 (a) of the Procedure.

5

3.

REQUIREMENTS APPLICABLE TO THE OBJECTION

22.

A community objection permits an application to be rejected if a significant part of thecommunity to which the string is explicitly or implicitly targeted presents substantial
opposition. The determination is to be made by an expert panel7.
A.

23.

Applicable rules

In its review of a community objection, the panel will apply primarily:--

Module 3 (Objection Procedures) [the “Procedure”] and its attachment [the“Attachment”] of the gTLD Applicant Guidebook [“Guidebook”] (other parts of
the Guidebook will also be helpful as reference, including specifically Module 4(String Contention Procedures)8).
Rules for Expertise of the ICC [“Rules”].
Appendix III to the Rules, Schedule of expertise costs for proceedings under theProcedure [“Appendix III”].
ICC Practice Note on the Administration of Cases under the new gTLD Dispute
Resolution Procedure [“Note”].

24.

Finally, the Procedure refers to the 8 August 2007 Final Report by the ICANN GenericNames Supporting Organization [“ICANN Final Report”]9, which includes therationales of the different objections10. Thus, the panel can draw additional guidancefrom the ICANN Final Report.

25.

I now detail below certain relevant aspects of each of these rules.

B.

Requirements and standards

26.

Pursuant to the Procedure, an Objection must satisfy the following requirements to be
successful:27.

First: Objector must prove that it has standing to object11 (a).

28.

Second: Having proven standing, objector must that the following four tests regarding
the merits are complied with 12 (b):-The community invoked by the objector is a clearly delineated community;
The community opposition to the application is substantial;

7

Recommendation 20 – ICANN Final Report: “An application will be rejected if an expert panel determines that
there is substantial opposition to it from a significant portion of the community to which the string may be
explicitly or implicitly targeted”.
8
On the reference value of Module 4, see paragraph 43 for further analysis.
9
Procedure at p. 3-5.
10
Recommendation 20.
11
Procedure at 3-8.
12Procedure at 3-22.

6

-There is a strong association between the community invoked and the applied-for
string; andThe application creates a likelihood of material detriment to the rights oflegitimate interests of a significant portion of the community to which the string
may be explicitly or implicitly targeted.

The standing and the four tests described below will be referred to as the“Requirements”.
29.

To assist the panel in its task, the Procedure identifies for each of the Requirements a
non-exhaustive list of factors which the panel may consider. The panel is authorised tobalance the relevant factors (though not all factors must be established) and to takeother factors into consideration13.

30.

In making its determination, the panel may refer to and base its findings upon thestatements and documents submitted by the parties and/or any rules or principles that it
determines applicable14.

31.

The panel must bear in mind that it is the Objector who bears the burden of proofingthat the requirements and standards applicable to the Objection are met15.
a.

Standing to object

32.

The first step is to qualify for standing to file a community objection. In order to havestanding, Objector must prove that it is an established institution and that it has an
ongoing relationship with a clearly delineated community.

33.

To evaluate whether Objector is an established institution, the panel may consider,among others, the following factors16:-

34.

Level of global recognition of the institution;
Length of time the institution has been in existence; andPublic historical evidence of its existence, such as the presence of a formal charteror national or international registration, or validation by a government, intergovernmental organisation, or treaty; the institution must not have been
established solely in conjunction with the gTLD application process.

To evaluate whether there is an on-going relationship with a clearly delineatedcommunity, the panel may consider, among others, the following factors17:-

The presence of mechanisms for participation in activities, membership andleadership;
Institutional purpose related to the benefit of the associated community;

13

Procedure at 3-22/3-25.
Attachment, article 20 (b).
15
Attachment, article 20 (c).
16
Procedure at 3-8.
17Procedure at 3-8.
14

7

35.

-

Performance of regular activities that benefit the associated community and
The level of formal boundaries around the community.

b.

Requirements on the merits

If the Objector is found to have standing, then it must pass the following four tests on
the merits.
(i)

36.

First test: Objector must prove that the community is clearly delineated

To evaluate whether the community is clearly delineated18, the Procedure allows thepanel to consider, among others, the following factors:--

The level of public recognition of the group as a community at a local and/or
global level;
The level of formal boundaries around the community and what persons or
entities are considered to form the community;
The length of time the community has been in existence;
The global distribution of the community (this may not apply if the community is
territorial); andThe number of people or entities that make up the community.

(ii)

Second test: Objector must prove that the community opposition is substantial-

37.

This second Requirement will only be analysed if the first test is passed, i.e. if a clearlydelineated community is found.

38.

In considering whether the second test19 is met, the Procedure provides that the panel
may consider, among others, the following factors20:--

The number of expressions of opposition relative to the composition of thecommunity;
The representative nature of entities expressing opposition;
The level of recognised stature or weight among sources of opposition;
The distribution or diversity among sources of expressions of opposition,
including:·
Regional·
Subsectors of community·
Leadership of community·
Membership of community
The historical defence of the community in other contexts; andThe costs incurred by objector in expressing opposition, including other channels
the objector may have used to convey opposition.

18

Procedure 3-23.
Procedure 3-23.
20
Procedure at 3-8.
19

8

(iii) Third test: Objector must prove the existence of a strong association
39.

If substantial opposition to the application is evidenced, the objector must then provethat there is a strong association between the community invoked and the applied-for
string21.

40.

To evaluate the existence of a strong association between the string and the community,
the panel may consider, among others, the following factors22:-

Statements contained in the application;
Other public statements by the applicant; andAssociations by the public.

(iv) Fourth test: Objector must prove likelihood of detriment to rights
41.

Finally, if a strong association between community and string has been established, theobjector must prove that the application creates the likelihood of material detriment to
the rights or legitimate interests of a significant portion of the community to which thestring may be explicitly or implicitly targeted23.

42.

To evaluate the existence of material detriment to the members of the community, theProcedure advises the panel to use, among others, the following factors24:
-

-

-

-

Nature and extent of damage to the reputation of the community represented by
the objector that would result from the applicant’s operation of the applied-for
gTLD string;
Evidence that the applicant is not acting or does not intend to act in accordancewith the interests of the community or of users more widely, including evidence
that the applicant has not proposed or does not intend to institute effective security
protection for user interests;
Interference with the core activities of the community that would result from theapplicant’s operation of the applied-for gTLD string;
Dependence of the community represented by the objector on the DNS for its core
activities;
Nature and extent of concrete or economic damage to the community represented
by the objector that would result from the applicant’s operation of the applied-for
gTLD string; andLevel of certainty that alleged detrimental outcomes would occur.
***

43.

Module 4 of the Guidebook (String contention procedure) also provides criteria toreview and score a community-based application. It shares some common concepts withthe community objection procedure (such as community establishment and nexus

21

Procedure 3-24.
Procedure 3-23.
23
Procedure 3-24.
24
Procedure 3-23.
22

9

between the string and the community), though its standards are stricter, and thus canonly be taken as a general reference25.
44.

ICANN provides the following guidelines in relation to Recommendation 20 of its Final
Report:“Guidelinesa) Substantial – in determining substantial the panel will assess the following:
signification portion, community, explicitly targeting, implicitly targeting,established institution, formal existence, detriment.
b) Significant portion – in determining significant portion the panel will assess thebalance between the level of objection submitted by one or more establishedinstitutions and the level of support provided in the application from one or moreestablished institutions. The panel will assess significance proportionate to theexplicit or implicit targeting.
c) Community – community should be interpreted broadly and will include, forexample, an economic sector, a cultural community or a linguistic community. It
may be a closely related community which believes it is impacted.
d) Explicitly targeting – explicitly targeting means there is a description of theintended use of the TLD in the application.
e) Implicitly targeting – implicitly targeting means that the objector makes anassumption of targeting or that the objector believes there may be confusion byusers over its intended use.
f) Established institution – an institution that has been in formal existence for atleast 5 years. In exceptional cases, standing may be granted to an institution thathas been in existence for fewer than 5 years.
Exceptional circumstances include but are not limited to a re-organization, merger
or an inherently younger community.
The following ICANN organizations are defined as established institutions: GAC,
ALAC, GNSO, ccNSO, ASO.
g) Formal existence – formal existence may be demonstrated by appropriate public
registration, public historical evidence, validation by a government,intergovernmental organization, international treaty organization or similar.
h) Detriment – the objector must provide sufficient evidence to allow the panel todetermine that there would be a likelihood of detriment to the rights or legitimate
interests of the community or to users more widely”.

4.

SUMMARY OF THE OBJECTION

45.

Objector claims that the granting of the string “<.insure” to the Applicant will result inmaterial harm to the insurance industry generally, the community of companies that arelicensed and authorised to sell property-casualty insurance products [“P&C Insurance
Providers”], and the consumers26 and considers that the Application should be rejected.

25

Thus, Module 4 states that “It should be noted that a qualified community application eliminates all directly
contending standard applications, regardless of how well qualified the latter may be. This is a fundamental
reason for very stringent requirements for qualification of a community-based application, as embodied in thecriteria below. Accordingly, a finding by the panel that an application does not meet the scoring threshold toprevail in a community priority evaluation is not necessarily an indication the community itself is in some way
inadequate or invalid.” – Mod. 4 at p. 4-9.
26
Objection p. 5.

10

46.

Objector claims that it has standing to object (A), and meets the four tests on the merits
required by the Procedure (B).
A.

47.

Objector must prove that it is an established institution (a) and that is has an on-going
relationship (b) with a clearly delineated community (c).
a.

48.

The community is clearly delineated

From the above it follows that the Objector is an institution with an on-going
relationship with the community of P&C Insurance Providers. The insurance industry is
one of the most highly regulated industries in the world. This regulatory structure has
resulted in a clearly delineated community of P&C Insurance Providers, that is,companies that are licensed and authorized to sell property-casualty insurance
products31.
B.

51.

On-going relationship with the community

Objector claims it is recognised as a leading voice on behalf of the P&C Insurance
Providers29. In that role it has provided on-going defence of the community of P&C
Insurance Providers through litigation, lobbying and other forms of advocacy. It has,
additionally, defended the community in a variety of contexts, including filing amicus
briefs in support of the property-casualty industries in hundreds of cases over the years.
Objector’s president is an acknowledged advocate for the property-casualty insurance
industry30.
c.

50.

An established institution

The Objector states that it was born out of the merger in 1964 of the old American
Insurance Association with the National Board and the Association of Casualty and
Surety Companies27. It has a membership of approximately 300 P&C Insurance
Providers that represent around 20% of total P&C insurance market in the UnitedStates28.
b.

49.

Standing to object

Requirements on the merits

The Requirements consist of four tests, the first of which (the existence of a clearlydelineated community) has already been addressed in the previous section. The
Objector’s position with respect to the remaining three tests is as follows.

27

Objection p. 5.
Objection p. 11.
29
Objection p. 7.
30
Objection p. 7.
31
Objection p. 9.
28

11

a.

There is substantial opposition to the Application

52.

The Objector claims that there is substantial opposition to the Application from the
P&C Insurance Providers community. The opposition is represented essentially by the
Objector, whose members represent approximately 20% of the total property-casualty
insurance market in the United States. The Objector is widely recognised as a leading
voice of the P&C Insurance Providers community as a consequence of many years
providing ongoing defence for the community through litigation, lobbying and otherforms of advocacy. Importantly, its members are among the leaders in both the personaland commercial property-casualty insurance markets (at least two members are within
the top ten writers of private passenger coverage and five among the top ten commercial
carriers)32.

53.

Additionally, the Objector presented several letters supporting the Objection33.
b.

There is a strong association between the string and the community

54.

The Objector claims that there is a strong association between the P&C Insurance
Providers community and the string. Automobile and homeowners insurance products
are ubiquitous. This is evident on the basis that all U.S. states (except New Hampshire)
require automobile insurance, and most lenders require homeowners to carry insurance
on their homes. Moreover, the members of the P&C Insurance Providers community
spend substantial amounts in advertising their products. As a result, Objector states,
consumers understand they can obtain insurance from many members of the communityof P&C Insurance Providers34.

55.

Objector considers35 that another element that evidences association between the<.insure and the community P&C Insurance Providers is evident from the face of the
Application, which states that:“.insure will be … particularly attractive to registrants providing insurance
products and services (one of the world’s largest and most attractive industries)”.
“Registrants may include insurance companies, brokerages, adjusters, service
providers, reinsurance organizations, agents and others who can use the TLD tomore intuitively reach end-users”.

56.

Many of these groups are members of the community of P&C Insurance Providers.

32

Objection p. 11.
From Insurance Bureau of Canada, Canadian Life and Health Insurance Association, Reinsurance Associationof America, The Financial Services Roundtable, Allstate Insurance Company [“Allstate”], Progressive Casualty
Insurance Company [“Progressive”], State Farm Mutual Automobile Insurance Company [“State Farm”] andNamic (National Association of Mutual Insurance).
34
Objection p. 13.
35
Objection p. 13.
33

12

c.

The application is likely to cause material detriment

57.

Objector claims that the operation of the Application will be detrimental to theinsurance community. The Objector highlights that the Application lacks any
registration criteria (i.e. no restrictions on who can own second-level domains), and thus
there is a strong likelihood that there will be serious abuse within the gTLDs and that
consumers will be misled36.

58.

Objector also claims that persons with no connection to the insurance industry could
potentially hold out as brokers or carriers, using legitimate- appearing sites for phishingor other malicious data collecting purposes relying on the trust consumers impart toinsurers in providing personal information37. This is further exacerbated by the fact thatproxy registrations will be permitted. The Objector alleges that proxy registration havehistorically encouraged fraud and spam38.

59.

Objector contends that the Beijing GAC Advice provides additional evidence of thematerial detriment that Donuts39 proposed operation of the <.insure will cause40. The
injury to insurance consumers, argues the Objector, will arise when a consumer
encounters a <.insure domain name (and associated website), at which point it will be
too late to avoid the damage by subsequently conducting research to identify the domain
registrant information held on file by Donuts41.

60.

Objector contends that, taking into account the above, Applicant’s approach would beparticularly disruptive given the increasing use of technology by members of thecommunity of P&C Insurance providers to sell and service policies. The Objector points
out that direct writers-companies that sell their own products and rely heavily on
Internet sales channels, accounted for 51.1% of all property-casualty net premiums
written in 201142.

61.

In addition to the above, Objector contends that the Application does not include
sufficient protections for variations of the trademarks and trade names of members of
the P&C Insurance Providers community. This could lead to significant consumer
confusion, consumer fraud and misleading advertisements of insurance products andservices43.

62.

Objector submits that the likelihood of material detriment posed to the members of theinsurance community by the .insurance gTLD application is made further certain byexamination of the background of the Donuts group. In this respect, Objector suggeststhat it appears likely that the Donuts group should not survive the background screening
standards set forth in sections 1.1 and 2.1 of the Guidebook44.

36

Objection p. 14.
Objection p. 14.
38
Objection p. 15.
39
Refers to Donuts, ultimate parent of Applicant’s group.
40
Additional Submission [“Add. Sub.”] p. 8.
41Add. Sub. p. 9.
42
Objection p. 15.
43
Objection p. 15.
44
Objection p. 16.
37

13

5.

SUMMARY OF APPLICANT’S RESPONSE

63.

Responding to the Objection, Applicant claims that Objector has failed to provestanding (A), and has not proven any of the four tests on the merits (B).
A.

64.

The Applicant alleges that the Objector contests the application for the generic term<.insure and not for a term strongly associated with the clearly delineated community.
Furthermore, the Applicant quotes section 3.2.2.4 of the Guidebook stating that the“community named by the objector must be … strongly associated with the applied-for
gTLD string”45.
B.

65.

Lack of standing

Requirements on the merits

On the merits Applicant submits that Objector has not been able to meet any of the four
tests for several reasons, namely:a.

No clearly delineated community

66.

Applicant contends that the Objector has not identified a clearly delineated community
for the following reasons46:

67.

(i) The word insure has several meanings, it is impossible to show that this generic term
describes a clearly delineated community.

68.

(ii) Even if insure refers only to “regulated insurance”, which it does not, the Objector
occupies but a fraction of the universe by that term. Objector represents only P&C
Insurance Providers, and by its own admission, its members represent only 20% of the
P&C U.S. market.

69.

(iii) There are many types of insurance (e.g. health, life, automobile, liability, home,
professional liability, long-term disability, etc. to name a few). Such variations makeeven the narrow product aspect of insurance impossible to delineate.

70.

(iv) Applicant argues that an infinitely greater universe of users beyond P&C insurancewith conceivable interest in the various meanings and implications of “insure” exists.
Objector attempts to identify a narrow community more susceptible of “delineation”
than the vast population associated with the generic “insurance” designation47.

45

Response p. 7.
All detailed in Response p. 7/9.
47
In Response p. 9 Applicant refers to the term “insurance”.
46

14

b.

No substantial opposition

71.

Applicant alleges that Objector has not presented evidence of substantial opposition. Of
the thousands (if not more) insurance companies globally, the Objector represents only
20% of P&C providers in the U.S., excluding insurers that provide other types of
insurance, other P&C insurers outside the U.S. and others otherwise associated with theterm insure but who do not write policies48.

72.

Applicant points out that no evidence of the substantial opposition within the Objector’scommunity has been provided: no letters from any of its members have been provided.
Moreover, even assuming that all members of the Objector have implicitly expressed
opposition, this represents 20% of the invoked community. Such a percentage cannot be
considered as substantial opposition from the P&C Insurance Providers community49.

73.

Applicant alleges that the Objector not only fails to demonstrate substantial opposition
within the restricted U.S. based community it invokes, it also fails to offer evidence ofthe opposition on the global scale of the Internet, where the Applicant will make thestring domain available. With the exception of one letter from the Insurance Bureau of
Canada, no P&C community outside of North America has written a letter in support of
the Objection. Regarding the second letter from Canada, Applicant notes that it is sent
by Canadian Life & Health Insurance Association, which is not a member of the
Objector nor even part of the P&C community50. The additional support lettersdelivered by Reinsurance Association of America, The Financial Services Roundtable,
Allstate, Progressive, State Farm, and Namic are all from U.S. based entities.
c.

Lack of strong association

74.

Applicant claims that Objector has not proven the existence of a strong association
between the community and the string, for the following reasons:75.

First, the text of the Application reveals that Applicant intends to offer this gTLD to awide variety of internet users, and not just those providing insurance products andservices51.

76.

Applicant’s second argument states that Objector does not demonstrate any public
association between the string and the P&C insurance community Objector represents.
Objector does little more than link “insure” with “insurance”. Additionally, the P&C
coverage represents but one form of insurance, while many others exist. Objector
presents no evidence that the public strongly associates the term insure with Objector’scommunity as opposed to the wider meaning of the verb and noun52.

48

Response p. 9.
Response p. 9.
50
Response p. 10.
51
Response p. 11.
52
Add. Sub. p. 4.
49

15

77.

Even more, the invoked community exists solely in the U.S. while the <.insure string
has a global reach. The English term “insure” goes well beyond Objector’s own limited
geographic region53.
d.

78.

Applicant considers that Objector has failed to demonstrate the likelihood of material
detriment to the community for the following reasons.
-

-

-

79.

The Application provides effective security protections that are sufficient tosafeguard the best interests of all users.
There is no evidence that Applicant’s string poses a likelihood of damage to the
purported “community” or its “reputation”. While it claims that it will invite anincreasing cybersquatting and phishing threat, it tenders no evidence that it would
create any greater or different harm to the industry than exists today.
The Donuts Protected Marks List [“DPML”] provided in the Donuts Public
Interest Commitment [“PIC”] establishes an adequate trademark protection
safeguard, allowing concerned members to register in advance to get notificationof cybersquatting and other internet schemes54.
There is no relevant evidence regarding interference with the community’s core
activities.
No evidence is shown demonstrating any level of certainty regarding the
detriment its constituents may suffer55.
The Beijing GAC Advice adds nothing to the Objection. Current policy as
established in the Guidebook does not require the onerous registration constraints
for which the Objector advocates. If the GAC ultimately requires such measures,and ICANN’s Board accepts the advice, Applicant would abide by the decision. It
is a policy decision, however, to be made by the ICANN Board and not by
Objector or this Panel56.

Finally, the Applicant rejects the suggestion that it should not survive the backgroundscreening standards set forth by the Guidebook, and refutes any allegations as toimpropriety57.

6.
80.

No material detriment

FINDINGS OF THE EXPERTIn order to be successful, the Objector must prove that it has standing to object (A) andthat the four Requirements are met: the community it invokes is clearly delineated (B),there is substantial opposition from the community to the Application (C), there is astrong association between the community and the string (D), and the Application
creates the likelihood of material detriment to the rights or legitimate interests of a

53

Add. Sub. p. 4 – Applicant provides examples of the use “insure” at second domain level by various entities
offering insurance products in Belgium, Spain, Germany and India, among others.
54
Response p. 11.
55
Response p. 13.
56
Add. Sub. p. 6.
57
Objection p. 12.

16

significant portion of the community to which the string may be explicitly or implicitly
targeted (E).
81.

The Objector claims it has met all the above Requirements, while the Applicant aversthat the Objector has failed to prove any of the above Requirements.

82.

I turn now to review the Requirements.
A.

83.

Objector’s standing to object

To have standing, Objector must prove that it is an established institution (a) with anon-going relationship with a clearly delineated community (b).
a.

Objector as an established institution

84.

The Objector has submitted evidence that it is an organization comprising
approximately 300 members of the community (representing around 20% of the P&C
Insurance Providers market in the U.S. by premium58), engaged in the promotion andprotection of its members and the P&C insurance industry generally59. Its proactive
activities and public recognition are referred to in paragraph 94.

85.

As for its historical existence, the Objector has been in existence since 1964.

86.

On the basis of the above, I am satisfied that the Objector has shown it is an establishedinstitution for the purposes of this Proceeding.
b.

Ongoing relationship with a clearly delineated community

87.

Having shown that it is an established institution, the Objector must then prove that it
has an ongoing relationship with a clearly delineated community invoked by the
Objector.

88.

The first question to be addressed is the definition of the community the Objector is
invoking. The Objector has not expressly identified such community. Although most of
the references regarding delineation are made to the U.S. insurance regulations60, theObjection also mentions a global P&C Insurance Providers community61.

89.

In my opinion, the community being invoked by the Objector is that of the U.S. P&C
Insurance Providers. I reach this conclusion based on the fact that the Objector, whenreferring to the opposition to the Application “by the community”, mentions that its

58

Objection p.11.
I note that one of the factors I am suggested by the Procedure to consider is the global level of recognition of
the institution (Procedure 3-8). Since I have found (see paragraph 89) that the invoked community is the U.S.
P&C Insurance Community (i.e. a territorial community), I have taken into consideration the level recognition of
the institution within the community invoked (Procedure 3-23 addresses an analogous situation in relation to
global distribution and a territorial community).
60
Add. Sub., p. 7.
61
Objection p. 10.
5917

members represent 20% of the “community”62; since the Objector represents 20% of the
U.S. P&C Insurance Providers63, the Objector must be equating “community” to “U.S.
P&C Insurance Providers”. Additionally, when providing evidence of the support to the
Objection by the invoked community, Objector lists only the support letters from U.S.
based P&C Insurance Providers, excluding the letter from the Insurance Bureau of
Canada (which, in fact, supports the Objection), thus evidencing that Canadian P&C
Insurance Providers would be outside the invoked community. All these factors lend
weight to the idea that the community represented is the U.S. community64.
90.

On the basis of the above, I will assume that the community invoked by the Objector is
the U.S. P&C Insurance Providers comprised by entities licenced to sell P&C insurance
products in the U.S. I will nevertheless make some further remarks in the course of myanalysis.

91.

The U.S. P&C Insurance Providers community (thus defined) comprises 2,660 entities
in 2011, representing 42% of the total net insurance premiums in all the U.S. 65.

92.

Is the U.S. Property & Casualty Providers insurance community clearly delineated?

93.

In this regard, I note that Module 4, criterion 1, dealing with the determination ofCommunity Establishment defines delineation as relating“to the membership of a community, where a clear and straight-forward
membership definition scores high, while an unclear, dispersed or unbounddefinition scores low”66.

94.

The Objector has stated that the U.S. P&C Insurance Providers are subject to a strong
set of regulations covering registration and solvency requirements, among other aspectsof the insurance legal protection regime. The high regulatory barriers constitute a clear
formal boundary around the alleged community67. The ongoing relationship between the
Objector and the community invoked is also clear. The Objector has been in existence
since 1964 and its members are all entities belonging to the community. Its objective isto advocate on behalf of the interests of the industry, and in that role it has developed
activities like filing amicus curiae. Its proactive role is recognised by the public68.

95.

On the basis of the above, I consider that the U.S. P&C Insurance Providers community
invoked is clearly delineated for the purposes of standing.

62

Add. Sub. p. 7.
Objection p. 11.
64
Add. Sub. p. 6/7.
65
Objection p. 11/13.
66
Module 4 at 4-11.
67
Objection p. 8.
68“The savvy chief of the leading property-casualty insurance trade group is skilled at building coalitions on
Capital Hill”, “Pusey is a strong advocate for the property-casualty insurance industry”. Objection p. 7.
63

18

96.

I must now turn to the Applicant’s counter-arguments on the matter of clear delineation.
Applicant alleges that:--since the word insure has several meanings, it is impossible for Objector to showthat this generic term describes a clearly delineated community, but rather a large
universe of users with conceivable interest in the various meanings andimplications of “insurance” (i) andeven if insure referred only to “regulated insurance”, the Objector occupies but afraction of the universe covered by that term (ii);finally, the Objector contests the application for the generic term <.insure and not
for a term strongly associated with the clearly delineated community (iii).

97.

I am unconvinced by the arguments put forward by the Applicant and persuaded by the
Objector.

98.

(i) The issue at hand is whether the invoked community is a clearly delineatedcommunity itself. In this regard, Objector is invoking the U.S. P&C Insurance Providers
community. Although I agree with Applicant that this definition of community isnarrower than a broader definition of, say, an insurance community, as such, I see norequirement in the Guidebook that a string should solely identify one community. The
strong association required to exist between a clearly delineated community and thestring, does not imply that the string term has no meaning other than identification of
the community69.

99.

This notwithstanding, I agree that a narrow definition of the invoked community entails
a series of difficulties, which may become an issue when deciding whether a strong
association exists between string and community, because it makes evidence of such
association more difficult. This is, however, a question to be discussed in section D.
Test 3 infra70.

100. (ii) Applicant also states that even if <.insure refers only to “regulated insurance”, anassumption which Applicant rejects, the Objector occupies but a fraction of the universe
covered by that term. In fact, Objector only represents U.S. P&C Insurance Providers,and of those, only 20% of the market. This argument must fail since the Procedurerequires no relationship between the representational size of the Objector and thecommunity invoked. In other words, there is no requirement that the Objector should
represent any minimum part of the community invoked.

69

Module 4 provides the criteria to evaluate the existence of a community in the case of a Community Priority
Evaluation. Criterion 2 thereof provides guidance on the valuation of the nexus between the proposed string andthe community. The criteria to apply are nexus (matching of string and name of community) and uniqueness(string term has no other significant meaning beyond identifying the community). The nexus criteria could score
up to three points, while the uniqueness criteria could score a maximum of one (Guidebook at 4-13).
Additionally, when dealing with the definition of relevance in criterion 4, the Guidebook clearly states that there
may be more than one community associated to a string (Guidebook, at 4-18).
70
See paragraphs 118 et seq.

19101. (iii) Applicant finally alleges that the Objector contests the application for the genericterm <.insure and not for a term strongly associated with the clearly delineatedcommunity, a requirement established in section 3.2.2.4 of the Procedure (the“community named by the objector must be … strongly associated with the applied-for
gTLD string”)71.
102. I understand Applicant’s argument but am unconvinced that it has any bearing on theissue of Objector’s standing: section 3.2.2.4 of the Procedure states that “to qualify forstanding for a community objection, the objector must prove both of the following: it isan established institution … It has an ongoing relationship with a clearly delineatedcommunity…”72. Having proved these requirements, the Objector must be pronounced
as having standing.
***103. The conclusion reached supra is thus not altered: standing requires the Objector toprove that it is an established community with an ongoing relationship with a clearlydelineated community. I find that Objector has satisfied all these elements, and declarethat the Objector has standing to file the Objection.
***
104. Having established standing, the next task is to review whether the four tests on the
merits have been satisfied.
B.

Test 1: Clearly delineated community

105. The first test requires proving that a clearly delineated community exists, a concept
which has already been considered for the purposes of standing. The analysis made insection 6.A is valid for these purposes: in my opinion the community invoked is the
U.S. P&C Insurance Providers and this community meets the requirements of being
clearly delineated.
C.

Test 2: Substantial opposition by the community

106. Having considered that the community invoked by the Objector is clearly delineated,
the next test is to determine whether there is substantial opposition from the community.
107. To evaluate whether the opposition is substantial, the Procedure invites the Expert toconsider several factors, including, among others, the number of expressions of
opposition relative to the composition of the community, the representative nature of71

Response p. 7.
The reference to the strong association between the community and the string made in section 3.2.2.4 of theProcedure must be understood as a general background statement preceding the actual requirements forevaluation of standing. A string may explicitly or implicitly target a community (see test 4, Procedure at p 3-23),and such review is to be made under such test on the merits and not at the standing phase. In any event, thequestion is probably moot since failure to prove the strong association will, regardless of where it is made, resultin the failure of the Objection.

72

20

entities expressing opposition, the level of recognised stature or weight among sourcesof opposition and the distribution or diversity among sources of expressions of
opposition.
108. Having said that, the Objector is an association representing over 300 entities, with amarket share of 20%. I accept the representative nature of the Objector, and that its
opposition should be considered as the opposition of the members. Thus, the fact that nomembers have issued specific letters of opposition is irrelevant.
109. In addition, the Objector has delivered letters from:-

Allstate Insurance Company (with approximately 16 million households asclients),
Progressive Casualty Insurance Company (with more than 13 million policies in
the U.S. and Australia),
State Farm Mutual Automobile Insurance Company (which with its affiliates
serves over 81 million policies and accounts), and
The National Association of Mutual Insurance companies – Namic – a P&C tradeorganisation in the U.S. with more than 1,400 member companies,
to demonstrate substantial opposition among the community of U.S. P&C
Insurance Providers73.

-

And also from the Insurance Bureau of Canada, a national industry association
representing 90% of Canada’s P&C insurance market and from Canadian Life and
Health Insurance Association – I note that, whilst the letter from the Insurance
Bureau of Canada is issued by an institution belonging to the P&C insurance
market, it is outside the invoked community (U.S. P&C Insurance Providers); andas regards the letter from the Canadian Life and Health Insurance Association,
this association is not even part of the P&C Insurance Providers; thus, none of the
two Canadian support letters will be taken into consideration when ascertaining
whether substantial support from the community exists. Because they do not
represent members of the invoked community, their consideration would not, inany event, affect my final decision.

110. The first issue is whether 20% of the community invoked can be counted as substantial
opposition, as the Objector contends74. By itself, I would probably conclude that such
limited representation cannot be counted as substantial. However, it is not an
insignificant proportion, and its weight may be supplemented by other factors.
111. The second issue is whether there are other factors to supplement the Objector’s
opposition. In this context, I note that several of the members of the Objector are among
the top ten companies in the U.S. in two subsectors (two in private passenger coverageand five are among the top ten commercial carriers). I believe that a group including
major companies of the community is a sign of leadership and representation of thelarger group.
73
74

Add. Sub. p. 7.
Add. Sub. p. 7.

21

112. The historical existence of the U.S. P&C Insurance Providers community evidenced by
the Objector is another factor to be taken into consideration. Moreover, I find the quotes
cited by Objector on the lobbying capabilities of the Objector’s president relevant75.
113. In addition, the support letters mentioned above also increase the scope of the
opposition.
114. These considerations taken together indicate a perception of the Objector as one of theleaders of the P&C insurance industry in the U.S.
115. The significant stature of some of Objector’s members, the historical existence of the
Objector, the lobbying capabilities developed at present by Objector’s president and the
additional support from other U.S. P&C Insurance Providers lend weight to the
opposition the Objector itself represents, and leads me to accept that there is substantial
opposition from the community to the Application76.
116. Applicant has submitted that because the use of the string is intended to be world-wide,that opposition should be measured on the same scale, and that Objector has failed toprovide evidence of such global opposition to the Application. I do not concur: Objector
must evidence substantial opposition from the invoked community. In this case, such
community is the U.S. P&C Insurance Providers. And consequently, the opposition
proven must be substantial from within this specific community.
117. In conclusion, the Objector has evidenced substantial opposition from the U.S. P&C
Insurance Providers community.
D.

Test 3: Strong association between community and string

118. Having established substantial opposition to the Application, the next test to consider iswhether there is a strong association between the community invoked and the string.
119. To determine the issue, the Expert may balance factors including: the statements
contained in the Application (a) and the association by the public between community
and the string (b)77.
a.

Statements contained in the Application

120. Both parties have drawn my attention to the answer provided by Applicant to question
18 (a) of the Application, though inferring different conclusions: the Objector claims
that the Application evidences association between the string <.insure and thecommunity of U.S. P&C Insurance Providers78. The Applicant, however, submits that
the Application reveals its intent to offer this gTLD to a wide variety of internet users,
75

Objection p. 14.
This conclusion is based on the decision that the invoked community is not the global P&C insurance market,
but only the U.S. P&C Insurance Providers; however, if arguendo I were to assume that the invoked community
was the global P&C insurance providers market, Test 2, substantial opposition, would not have been met.
77
Procedure at 3.24.
78
Objection p. 13.
76

22

and not just those providing insurance products, and thus denies the association between
string and the invoked community79.
121. The relevant paragraph in the Application states as follows80:“This international term, as a TLD, will be attractive for registrants interested inleveraging the intuitively positive nature of the term INSURE, which means tomake certain or protect from risks. Registrants in .INSURE will be attracted to theconfident and supportive connotation of the term. The TLD will be utilized by abroad and diverse group including, but not limited to, insurance agents, adjusters
and brokers, financial advisors, bankers, and others who make insurance products
and services available to consumers and businesses around the world. This
inclusive TLD would operate in a secure, stable and legitimate manner”.

122. I concur with Applicant that the statements made in the paragraph do not lead to an
association between community and string. The Application highlights that this TLD“will be attractive for registrants … [who are interested in] the intuitively positive
nature of the term insure”; registrants will include a very wide range of potential users.
The Application further states that the TLD will be utilised by a “broad and diverse
group”. This means that the string is aimed at registrants inside and outside theinsurance industry. I note that the Application does not make any reference at all to the
P&C insurance sector. It follows that an analysis of the paragraph does not lead to theconclusion that the U.S. P&C Insurance Providers community, delineated as such, is thetarget.
123. I thus cannot find that the wording of the Application evidences a strong association
between the string and the U.S. P&C Insurance Providers community invoked by the
Objector.
b.

Level of association by the public

124. Another relevant factor that the Procedure establishes for consideration is the level ofassociation by the public between the string and the community; i.e. the level ofassociation by the public between <.insure and the U.S. P&C Insurance Providers.
125. The Objector alleges that, due to the extended use of the P&C insurance products, plus
the high degree of advertising, there is strong association among consumers between thestring and the community81. The Applicant is of the contrary opinion, and submits that
the Objector offers no evidence that the public strongly associates the string <.insurewith its community of U.S. P&C insurers82. Further, the community invoked exists
solely in the U.S., while the term insure goes well beyond this geographic region83.
79

Response p. 10.
Application answer 18 (a). Please note that Objector mentions in Objection p. 13/14 that Applicant’s answer in
18 (a) contains the following language: “[.insure will be] particularly attractive to registrants providing insurance
products and services”. I have been unable to locate the language which the Objector quotes from theApplication.
81
Objection p. 13.
82
Response p. 11.
83
Add. Sub. p. 4.
80

23

126. Before entering into and in-depth analysis of the Objector’s arguments, I first have toclarify: (i) what is to be understood as ‘level of association’ and (ii) who is the ‘public’.
127. (i) Level of association: association must be measured as the degree in which the string
term brings to mind the community invoked. The association can be strong (forexample, the term “navajo” would be strongly associated with the Navajo Indian
community since it uniquely identifies the community84) or it can be weak (for example
the string .indian would have in my opinion a low association with the Navajo tribe: inthis case, the string does not describe uniquely the community, nor does it even identify
it).
128. (ii) The public: since I have concluded supra that the invoked community is the U.S.
P&C Insurance Providers, a natural question arises – should the public perception bemeasured on the U.S. public, as the Objection seems to imply85, or rather, as Applicant
suggests, on the whole world, for it is Applicant’s intention to use the string worldwide?
129. I side with Applicant. The scope of the public perception goes beyond the geographicalscope of the invoked community and should be extended to the area where the string is
to be used. In this case, the use of the string is the English speaking population (since‘insure’ is an English word), and the public perception must be measured against thisstandard.
130. On the basis of the above clarifications I side with the Applicant and find that Objector
has not evidenced that a risk exists that the English speaking population will strongly
associate the string <.insure with the U.S. P&C Insurance Providers. My decision isbased on the following reasons:-No risk of association between the terms ‘insure’ and ‘insurance’: although
Objector claims that the term “insure” is inextricably linked (and thus associatedto) the term “insurance”, and that the business of insurance is associated with theterm insure86, purely semantic reasons convince me of the contrary. First of all,there is no identity between ‘insure’ and ‘insurance’. Insurance is a noun andinsure is a verb. There is a second and stronger argument, because ‘insure’ has adouble meaning – it can be understood as ‘to buy or provide insurance for’, which
would have clear connotations to the insurance market, but it can also have themore generic sense ‘to make something sure, certain or safe’87. The existence of
this latter generic sense, unrelated to the insurance industry, substantially weakens
the link between the term insure and insurance, and minimises the risks ofassociation between the string and the community.

84

I note, however, that uniqueness is not necessary to prove a strong association.
Objection p. 12/13.
86Add. Sub. p. 8.
87
The Cambridge Dictionary defines insure as: “to make something certain, or to be certain about something:
Because of the importance of the game, we wanted to insure (that) it would be televised. We had reporters checkto insure the accuracy of the story”. © Cambridge University Press.
8524

But, even if the term ‘insure’ were to be equated to ‘insurance’, then there still
would be:-No risk of association between the insurance market and the P&C Insurance
Providers: the Objector has not persuaded me that there is a distinct and strong
association between the term insure/insurance and the P&C Insurance Providers inparticular. The term insurance clearly overreaches the concept of P&C insurance,
because it includes all types of insurance. Thus, the public in general – be on a
global or national scale – may associate the term insurance to the wider insurance
community, but not necessarily to the narrower P&C insurance community88.
And, even if a (minimum) risk of association existed between the term ‘insure’
and the P&C Insurance Providers community, there would be:-

No risk of association between the term ‘insure’ and the specific U.S. P&C
Insurance Providers community: no evidence has been produced, which provesthat the English speaking population, when reading the string <.insure, would
strongly associate this term with a separate, narrow and confined community,
such as that of the U.S. P&C Insurance Providers.

131. In conclusion, I find that the Objector has not evidenced that the English speaking
populations strongly associates the string <.insure with the U.S. P&C Insurance
Providers community invoked, and therefore has failed to meet one of the four tests
established in section 3.5.4 of the Procedure. This failure leads to the dismissal of the
Objection.

7.

CONCLUSION

132. I find that while the Objector has established its standing to file the Objection against
the granting of the string <.insure to the Applicant, Objector has not met the burden of
establishing a strong association between the string <.insure and the U.S. P&C
Insurance Providers community (Test 3).
133. Since Objector has not met Test 3 successfully, considering whether Test 4 (MaterialHarm) has been complied with becomes moot.
***
8.

COSTS

134. The Applicant has requested payment of the costs reasonably incurred in opposing the
Objection. However, pursuant to article 14 (e) of the Attachment to the Procedure, upon
termination of the proceedings, the Dispute Resolution Service Provider shall refund to88

Even if the community invoked were to be the global P&C Insurance Providers, I would still have serious
doubts as to the existence of a strong association by the public between the generic string insurance and thespecific community of P&C insurers.

25the prevailing party, as determined by the panel, its advance payment in costs. Thus, thepanel has no mandate on costs other than the advance costs referred.
135. The Applicant has prevailed, and thus shall have its advance costs refunded.

26

DECISION

For the reasons given above, and in relation to the Objection filed by American
Insurance Association as Objector, against the application filed by Pioneer Willow,
LLC, as Applicant, for the gTLD <.insure, I find and declare that:I.

The Applicant has prevailed and the Objection is dismissed;

II.

The Applicant is entitled to have its advance payment of costs refunded by theCentre.

Date: 14 January 2014

Signature:
Mr. Juan Fernández-Armesto
Expert27