THE INTERNATIONAL CENTRE FOR EXPERTISE OF THE
INTERNATIONAL CHAMBER OF COMMERCE

CASE No. EXP/497/ICANN/114

UNIVERSAL POSTAL UNION(SWITZERLAND)
vs/GMO REGISTRY, INC.
(JAPAN)(Consolidated with cases No.
EXP/494/ICANN/111
UNIVERSAL POSTAL UNION (SWITZERLAND) vs/ VICTOR DALE, LLC (USA)andEXP/496/ICANN/113
UNIVERSAL POSTAL UNION (SWITZERLAND) vs/ WHITEPAGES TLD LLC (USA)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/497/ICANN/114 - EXPERT DETERMINATIONINTERNATIONAL CHAMBER OF COMMERCE
INTERNATIONAL CENTRE FOR EXPERTISE
EXP/497/ICANN/114(c. EXP/494/ICANN/111, EXP/496/ICANN/113, EXP/500/ICANN/117)

EXPERT DETERMINATION(Community Objection)

In the matter

UNIVERSAL POSTAL UNION (Switzerland)vs/
GMO Registry, Inc. (Japan)

Issued by the Expert Panel composed ofProfessor Catherine KESSEDJIAN, Expert

EXP/497/ICANN/114 - 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 ............................................................................... 6
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 .................................................................................................................................................... 10
A. THE OBJECTOR’S MAIN ARGUMENTS............................................................................................................. 10
1. UPU has standing as it is an established institution which represents a “clearly delineated community” 10
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. GMO Registry’s 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 ............................................................................... 13
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? ............................................................................ 18
C. Is There a Strong Association? ................................................................................................................. 26
D. Does the Application create a likelihood of material detriment?.............................................................. 28
V. FINAL CONCLUSION BY THE EXPERT PANEL ........................................................................................ 34
VI. EXPERT DETERMINATION COSTS ............................................................................................................. 35
VII. DECISION ......................................................................................................................................................... 35

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EXP/497/ICANN/114 - EXPERT DETERMINATION
Acronyms and Definitions

GeneralAppendix 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

GMO Registry

GMO Registry, Inc. 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:

GMO Registry, Inc.

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 a 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 GMO Registry, Inc. on 31 May 2013

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

USPS

United States Postal Service

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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:
GMO REGISTRY, INC.
Mr. Hiroya Tuskahara
Cerulean Tower
26-1 Sakuragaoka-cho
Shibuya-ku
Tokyo 150-8512
Japanhereinafter referred to as “GMO Registry” or “the Applicant”,

represented by
Hogan Lovells (Paris) LLP
Mr. David Taylor
17 avenue Matignon
75008 Paris
Francedomaindisputes@hoganlovells.com
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.

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EXP/497/ICANN/114 - EXPERT DETERMINATION
5. During the month of July 2013, two Applicants in cases consolidated with the present casecontested the appointment of the Expert. The Applicant did not express a view on thisissue.
6. On 7 August 2013, the Centre confirmed the appointment of the Expert.
7. The Expert Panel is composed of one Expert:
Prof. Catherine Kessedjian
19 villa SeuratBoîte/Porte B
75014 Paris
FranceC. THE BACKGROUND OF THE DISPUTE
1. The New gTLDs
8. 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.
9. 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.
10. After all Applications were published, there was a period for objections from persons andentities that opposed the attribution of some of the new gTLDs.
11. 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.
12. The present dispute arose out of UPU’s Objection to the .mail new gTLD for which GMO
Registry filed an application posted on 13 June 2012, under reference N° 1-890-53570.
13. 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)(iv) of the Procedure
1

Preamble to Applicant Guidebook, p.2.

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and 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
14. By filing an Application, Objection or a Response under the Dispute Resolution mechanism
defined by ICANN, both the Objector and the Applicant agree on the set of procedural 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:
The 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”).
15. Particularly, the Parties agree that the Expert Determination is binding upon them.
16. 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
17. UPU filed the Objection to the .mail gTLD Application by GMO Registry on 13 March
2013.
18. The Centre acknowledged receipt of the Objection on 18 March 2013, which was registeredfor processing on 5 April 2013, according to Article 9(b) of the Procedure.
19. 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.
2

See, notably, p.7 and 8 below.

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20. On 3 May 2013, the Centre wrote to the Parties informing them that it decided to proceedwith the 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/496/ICANN/113,
UPU vs. WhitePages TLD LLC; EXP/500/ICANN/117, UPU vs. Charleston Road RegistryInc.
21. Therefore, the present case was prepared in a consolidated manner. However, this
Determination was drafted separately, as instructed by the Centre.

D. THE SCOPE OF THE PRESENT EXPERT DETERMINATION
22. The present Expert Determination is limited to the examination of the standards defined by
ICANN for a Community Objection in Module 3.
23. Module 3 deals with Community Objection in three different parts.
24. 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.
25. 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.
26. 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; and3This 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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There 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.
27. 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.
28. It must also be stressed that the burden of proof lies with the Objector (Article 20(c) of theProcedure).
29. 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 on line version).

II. THE COURSE OF THE EXPERT DETERMINATION PROCEEDINGS
A. THE EXPERT MISSION, LANGUAGE AND TIMETABLE
30. 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.
31. 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.
32. Pursuant to Article 5(a) of the Procedure, the language of the submissions and proceedings
is English.
33. Pursuant to Article 6(a) of the Procedure, the correspondence between the Parties, theExpert and the Centre was entirely submitted in electronic form.
34. Pursuant to Article 4(d) of the Procedure, the place of the proceedings is Paris, France.
35. 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 the5

Available on ICANN’s website.

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constitution of the Expert Panel. The Centre considers that the Panel is constituted when theExpert is appointed, the parties have paid their respective advances on costs in full and thefile 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 andthe 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 for some time.
36. On 17 September 2013, the Centre wrote to the Parties requesting additional advancepayments and, therefore, stayed the proceedings until further notice.
37. On 10 October 2013, the Expert wrote to the Parties informing them that, upon her request,
the Centre had agreed to extend the deadline until 4 November 2013.
38. 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
39. 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 31 May 2013 with 13 annexes,
numbered 1 to 13.
The Applicants’ amended answer of 27 August 2023 to the Expert’s request forclarification of 21 August 2013, accompanied by 8 annexes numbered A to H.
The Objector’s comment of 30 August 2013, on the Applicant’s answer, with
one annex numbered annex A6.
40. According to the Procedure, both the Objection and the Response and all of the exhibits andannexes were transferred to the Expert Panel in electronic form.
41. Pursuant to Article 19 of the Procedure, the Expert Panel decided not to hold a hearing.

6

For the sake of clarity, Annex A will be referenced hereinafter as Exhibit A.

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42. 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 § 39 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”
43. UPU argues that it is an Established Institution, in the meaning of section 3.2.2. of the
Guidebook and Article 8 of the Procedure, since it is in existence as an intergovernmentalorganization 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).
44. 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
45. 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 satisfaction ofcustomers’ changing needs” (Objection, p.7).
46. 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).
47. 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
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EXP/497/ICANN/114 - EXPERT DETERMINATION
opposed to the Application is USPS which handles more than 40% of the world’s mailvolume (Objection, p.10).
48. Therefore, according to the UPU, there is a substantial opposition by the Community
invoked.
3. There is a strong association between the community invoked and the .mail string
49. 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).
50. UPU argues further that the Applicant’s “purpose for the new gTLD .mail is to establish a
dedicated gTLD for email, online communication, and related products and services”(Objection, p.11). According to UPU, the Application “primarily targets the .mail GTLD(sic) at email service providers or email distribution services, envisioning ‘memorable’ and‘intuitive’ email addresses on the .mail gTLD” (Objection, p.11). UPU further argues thatthe “public that is explicitly targeted by this application already associates the term “mail”
with the inherent governmental function provided by the members of the Postal Community
and thus the Postal Community is implicitly targeted by the Applicant” (Objection, p. 12).
51. 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”. However, 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).
52. Consequently, there is a strong association between the community invoked and the .mailstring.
4. GMO Registry’s application does create a likelihood of material detriment
53. 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

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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).
54. 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(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).
55. 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).
56. 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
57. While the Applicant does not deny that UPU is an established institution, it argues that theclaimed “Postal Community” is not the relevant community to be taken into consideration,
as requested by ICANN’s Guidebook.
58. For the Applicant, the relevant community is what it calls the “Mail Community” which isdifferent from the Postal Community. “In the context of Internet, the term MAIL is
overwhelmingly considered to be synonymous with EMAIL”, this is why the Objector
cannot claim “any serious association with the term MAIL in the context of a TLD”
(Response, p.5).
59. The Applicant does not deny that UPU’s activities might benefit the Postal Community.
However, the Applicant argues that there is no link between physical letter or parcel
delivery and what “mail” refers to in the context of Internet (Response, p.5).

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2. The Objector demonstrates no substantial opposition
60. The Objector claims only eight oppositions by its members but there is evidence of only
four of them “who have seen fit to express opposition” (Response, p.6). This means that
188 out of the 192 members of UPU decided that it was not important to voice any
opposition to the .mail TLD (Response, p.8).
61. In other words, for the Applicant, the “opposition within the ICANN process is virtually
non-existent [...] and there is no evidence of opposition outside the ICANN process”(Response, p.7).
62. The Applicant insists that no early warning was issued by GAC (Response p.8). In addition,
the United States Government, “under the authority of which USPS operates, has officiallyand publicly declared that it does not support USPS’ Objection (Response, p.7 and Annex
2).
63. The two communities identified by the Applicant (namely the Postal Community claimedby the Objector and the Mail Community identified by the Applicant for the sake of theargument) “relate to two completely different fields of activity and whilst physical post
represented by the Postal Community is usually state-owned, the MAIL Community isquite opposite as the Internet is global and electronic mail services are privately owned.
Consumer choice and competition are at the core of the electronic email service industry as
it is at the core of the ICANN New gTLD initiative.” (Response, p.7).
64. Although the Applicant does not intend to question the stature or weight of the Postal
Community, it stresses the fact that the Objector is not associated with the MAIL
community, but only to the “traditional, historical, physical post service, namely hard copy
correspondence” (Response, p.7).
65. The few short public comments filed within the ICANN system cannot possibly amount tothe costs claimed by UPU to have been incurred (Response, p.7).
3. There is no strong association between the community invoked and the .mail string
66. The Applicant argues that the word “mail” does not target the Postal Community sinceusers associate “mail” with “email” not the postal services when used in the Internet
context, therefore “eliminating any risk of confusion with the Objector” (Response, p.9).
This is evidenced by all dictionaries available on line (Annex 3) including in foreign
languages (Annex 4).

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67. In addition, “the Objector misrepresented the content of the evidence provided” (Annex 5)since even the Oxford English Dictionary does define mail as email in the Internet context.
This is evidenced again “by many Courts and trademark offices worldwide” (Response, p.9
and Annexes 6 to 10).
68. Furthermore, says the Applicant, “the fact that MAIL is generally not a term commonly
associated with the Postal community is illustrated by that fact that out of the 192 national
member organizations of the UPU, only one7 uses the word MAIL in its name whilst 172
have included the word POST or POSTAL (or national variations such as POSTE in
France) in their respective names.” (Response, p.10).
69. It must also be noted, argues the Applicant, that the UPU obtained the .POST sTLD butnever mentioned the word MAIL in its own explanation of the purpose of .POST, making
reference to UPU’s Exhibit 5, p.7 (Response, p.10).
4. The Objector does not prove material detriment
70. Because there could be no confusion between MAIL and the Objector or the Postal
Community, there will be no damage to the reputation of the latter (Response, p.11).
71. The Applicant further argues that “the association between the term MAIL and the Objector
in the context of the Internet and domain names is virtually inexistent or extremely minimalat best (Annex 11). This is exemplified, notably, by the fact that “the Objector does notseem to have registered any domain names consisting of the term MAIL” (Annex 12).
“Thus, there is no evidence of any potential presence, visibility or reputation of the
Objector on the Internet in relation to MAIL. This clearly negates any possibility of any
Internet user confusion” (Response, p.11).
72. As far as the trust and security arguments raised by the Objector, the Applicant is“committed to providing industry leading service levels in order to maintain an impeccable
reputation for security, reliability and availability” (Annex 13). This includes, “stringent
security policies and procedures, as well as comprehensive abuse handling mechanisms to
mitigate security threats to the .MAIL TLD. GMO Group also comprises globally trusted
online security brand, GlobalSign, and some of the longest established ISP service brands
in Japan.” (Response, p.12).

7

Emphasis in the original text.

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73. The Applicant’s intended operation of the .MAIL TLD will not interfere with the core
activities of the Postal Community since “the stated purpose of the .MAIL TLD applied foris to establish a dedicated online identity for email online communication and related
products and services.” (Response, p.12). Further, the “differentiation between the
Objector’s .POST sTLD and the Applicant/Respondent applied-for .MAIL TLD will beabundantly clear and the risk of interference will be non-existent or very minimal”,
particularly because, contrary to what the Objector pretends, its activities do not depend on
the DNS (Response, p.13).
74. Indeed, a presence on the Internet is not crucial to the delivery of tangible letters andparcels. The Objector explains that it is helpful for its members to have a presence on theInternet. This may be so, but the Objector has not demonstrated that the core of its activities
depends on the Internet. Therefore, no likelihood of any material detriment wasdemonstrated by the Objector.
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 “people8

See above § 26.

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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
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). Nevertheless, 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?

9

See above § 29.

16

EXP/497/ICANN/114 - EXPERT DETERMINATIONa) 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.

87.

Although GMO Registry does not deny the existence and notoriety of the Postal
Community claimed by the Objector, it argues that this is not the relevant community.
Instead, GMO argues that there is a “MAIL Community” which is the only relevant
community to be taken into consideration and which is different from the Postal
Community.

88.

It is unclear however from GMO Registry’s arguments what this “MAIL community” is. It
seems to be composed of users of the Internet for whom “mail” and “email” will be
synonymous. However, as explained below when dealing with the claim by UPU that it
also represents “the public at large”, the users of the Internet can hardly be said to form a“community” in the sense used by ICANN for a community objection.

89.

In consequence, GMO Registry’s argument falls short at rebutting the Objector’s claim thatit represents a clearly delineated community composed of its members and the Posts
nominated by its members which, as agreed by GMO Registry itself, do form a community.

90.

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 and 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.

91.

Therefore the Postal Community invoked by UPU does meet the requirements of ICANN’s
definition of a community.
b) The public at large

92.

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).

17

EXP/497/ICANN/114 - EXPERT DETERMINATION
93.

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 Determination10, 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.

94.

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

95.

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”?

96.

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 GMO Registry (Response, p.4).
3) Conclusion on the first test97.

The Objector has met the requirements of the first test.

B. Is There a Substantial Opposition by the Community?
98.

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;
the historical defense of the community in other contexts and the costs incurred by theobjector in expressing opposition.

99.

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

10§§ 146 & ff.

18

EXP/497/ICANN/114 - EXPERT DETERMINATIONa deciding factor.” (New gTLDs Proposed Final Applicant Guidebook, Public Comment
Summary, Feb. 21, 201111, p.37).
100. 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 invoked by
the Objector; 3) the opposition by UPU itself.
1) Expression of opposition by the public at large
101. 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.
102. 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 GMO Registry in any material way. However, they
are not interesting as such for the decision to be taken on the second test. Indeed, it would
have been 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.
103. 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
104. This is why UPU files a number of oppositions expressed by some postal administrations oroffices during the public comment period opened by ICANN (Exhibit 7). Exhibit 7
comprises copies of all oppositions filed, not only against GMO Registry’s Application, butalso against applications by other companies. For the present case, the Expert Panel took
into consideration only the opposition expressed against GMO Registry’s Application, i.e.
p. 54 to 67 of Exhibit 7.
105. The Expert Panel can only note that the content of Exhibit 7 does not match the text of the
Objection itself. UPU argues, for example, that Poste Maroc has expressed opposition to
the Application (Objection, p.10). However, the Expert Panel could find no evidence ofsuch an opposition in UPU’s file for the present case. Poste Maroc has filed a very brief

11

Available on ICANN’s website.

19EXP/497/ICANN/114 - EXPERT DETERMINATION
comment saying that it agrees with USPS, but it did so against another application which
has now been withdrawn. Poste Maroc has not considered important enough to replicate its
comment against GMO Registry’s Application, even though ICANN’s guidelines make it
clear that comments should be made for each application (see the Application comments
User Guide12, p.12).
106. 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”13. 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.
107. UPU further argues that “a number of Posts have expressed their opposition ... through their
Member Country’s Governmental Advisory Committee (GAC) representatives” Objection,p.10). Again, UPU’s file does not contain any evidence supporting such an allegation.
108. 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 GMO Registry’s Application UPU files one
Comment by Brazilian Post, two comments by Poste Italiane written in identical terms; onecomment by Poczta Polska S.A. and eight comments by USPS.
109. It is true that, as recalled in §99 above, an analysis of public comments may not be madeonly on a mathematical basis. However, the Expert Panel is compelled to note, with theApplicant, that out of 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 is that the opposition by USPS alone is a very heavy opposition
because of the weight represented by that postal service within the Postal Community.
110. 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 GMO Registry, 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
12This 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.
13

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EXP/497/ICANN/114 - EXPERT DETERMINATION
portion of the Postal Community has expressed opposition to GMO Registry’s 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 above14, is higher and the Expert Panel needs to find that other sources of
opposition exist.
111. In addition, GMO Registry files a letter written by Lawrence E. Strickling, Assistant
Secretary for Communications and Information of the United States Department ofCommerce, dated 2 April 2013, addressed to Dr. Stephen D. Crocker, Chairman of
ICANN’s Board of Directors (Annex 2). The letter is very short: “Please be advised thatthe objections filed by the United States Postal Service (USPS) to the seven applications forthe proposed new generic top level domain, .mail, are not supported by the coordinatedview of the United States Government (USG). Consistent with our commitment to themultistakeholder 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”.
112. 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?
113. On 27 August 2013, the Applicant filed a joint answer (with other Applicants in the
consolidated cases15) to the Expert’s questions (hereinafter, “Answer of 27 August
2013”)16.
114. 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 are its procedural rules (Answer of 27 August14

See above § 29.
Because the answer was filed jointly, the following paragraphs will jointly refer to “the Applicants”.
16
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.
15

21

EXP/497/ICANN/114 - EXPERT DETERMINATION
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)17.
115. 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. Nevertheless, 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 NTIA18 (Answer of 27 August 2013, Annex E) which purports to confirm that the USG
presented its coordinated views to GAC in Beijing19.
116. 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.
117. 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 2013,
Annex G). The Beijing Communiqué mentions no opposition from specific members of
GAC and no decision to oppose the .mail string, contrary to a number of other strings suchas .shenzhen, .persiangulf, .date, .spa etc..., (see p.3 of Annex G of Answer of 27 August2013). However, the Durban Communiqué shows that GAC resolved not to object to .dateand .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 pertinent here
since the dispute does not relate to a .UPU gTLD.
118. 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 concerned
17

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.
18
The acronym was not explained by the Applicants. However, considering the full email address, it seems to bean agency of the US Government.
19
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.

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EXP/497/ICANN/114 - EXPERT DETERMINATION
with the .mail string which is not “a pressing issue for governments” (Answer of 27 August
2013, p.2, last §).
119. 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, AnnexH), “which speaks volumes as to the USG’s position on this specific issue”.
120. 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.
121. 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.
122. 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 theprotection 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).
123. 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.
124. Finally, UPU argues that the US Department of Commerce’s 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”.

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EXP/497/ICANN/114 - EXPERT DETERMINATION
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, the lettersimply does not relate to the UPU Community Objections at all and should be given noweight whatsoever”.
125. 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 letter of
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.
126. 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 thecommunity.
3) Expression of opposition by UPU itself
127. 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).
UPU 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).
128. The Expert Panel is in doubt with this assertion. Indeed, UPU’s General Regulations(Exhibit 3) do propose a set of clear rules concerning the functioning of the bodies of theorganization. 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 theframework of its competence, any action considered necessary to safeguard and enhance
the quality of and to modernize the international postal service” (art. 102, section 6.2.). The
24

EXP/497/ICANN/114 - EXPERT DETERMINATION
Council is composed of 41 members (art. 102). It would have been possible, for the
Director General, to call the attention of the Council to the new gTLDs process and thenecessity to act against the .mail TLD. There was plenty of advance warning posted bysome 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.
129. The First Additional Protocol (24th Congress 2008 Geneva, also in Exhibit 3) empowers the
Chairman to carry out the Council of Administration’s duties, in between sessions, in caseof urgency. However, UPU does not show that the filing of the Objection has beenauthorized in this manner.
130. 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 Art. 112 of UPU’s General Regulations, shows that the great majorityof them are administrative in nature. The Director General does not seem to have the power
to act on its own initiative. Perhaps, with a broad interpretation, it could be said that filingthe Objection could have fallen within the Director General’s duty under section 2.6. ofarticle 112 which provides that the Director General is entitled: “to take action to achieve
the objectives set by the bodies of the Union, within the framework of the establishedpolicy and the funds available”. However, a stricter interpretation would lead to saying thatthe Director General may not act sua sponte. This stricter interpretation is in fact in linewith 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 of its members had
asked it to file the Objection. In any case, as said before, the allegation according to which
UPU’s members have asked the Director General to file the Objection is not accompanied
by any evidence.
131. 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.
132. 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 theCouncil of Administration, the respective cause of action” (Comment, p.4)

25

EXP/497/ICANN/114 - EXPERT DETERMINATION
133. 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.
Nevertheless, the lack of evidence renders the argument inoperative.
4) Conclusion on the second test
134. Considering the small number of Posts which have filed public comments (even if one
includes Poste Maroc)20, 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 Councilof Administration, UPU has not met its burden of proof with respect to the second test.

C. Is There a Strong Association?
135. 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.
136. 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, areofficially 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 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.
137. 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).
138. 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’.

20

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.

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EXP/497/ICANN/114 - EXPERT DETERMINATION
139. GMO Registry argues, on the contrary, that there can be no confusion whatsoever between
the word “mail” used in the context of the Internet, and the postal activities performed by
the Postal Community.
140. GMO Registry, reviewing the Objector’s exhibits concerning the meaning of the word
“mail”, and considering its own evidence (particularly Annexes 3 to 12), notes that the
public has become accustomed to thinking of electronic mail as ‘mail’ when that word isused in the context of the Internet. In conclusion, for the Applicant, the Objector fails toshow that there is a strong association.
141. 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 pertinent 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.
142. 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 .mailservices, if GMO Registry’s Application is granted, there is little doubt that the .mail TLD
future services are targeting the Postal Community since mail services is the bulk of theservices that the Postal Community provides. This is particularly true for USPS which is apure player, unlike the French La Poste which offers other services such as financial
services.
143. GMO Registry’s file itself (Applicants’ Answer of 27 August 2013, Annex G) 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.
144. In addition, the decisions on trademark disputes filed by the Applicant are not really
relevant to the present test. Indeed, the trademark context presents unique features.
Furthermore, it must be noted that at least one of the decisions filed by the Applicant (i.e.
OHIM, 1st Sept 2010, Deutsche Post AG v. Global-Companhia de Seguros Sa, Annex 6),
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EXP/497/ICANN/114 - EXPERT DETERMINATION
seems to run contrary to GMO Registry’s argument when the panel enunciates: “Similar
considerations apply to the word ‘MAIL’ [...]. Although and English word, it is known
worldwide, especially since the advent of ‘email’ and the Internet. All consumers in theCommunity will recognize it as referring to the sending of inter alia written
communications (i.e. ‘post’)21 (Annex 6, § 22). Therefore, at least for one panel it is clearthat email does relate to postal activities, even if indirectly stated22.
145. 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?
146. 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.
147. 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
21

Emphasis added.
It is also to be noted that Annexes 3, 4 and 5 filed by the Applicant do list “post” as the first meaning of theword “mail” and “email” only as a fifth, third or fourth meaning.
22

28

EXP/497/ICANN/114 - EXPERT DETERMINATION“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).
148. 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).
149. GMO Registry’s main argument against the Objector’s claim is one of lack of evidence ofany material detriment or harm to the community or its reputation (Response, pp.11 to 13).
Particularly, the Applicant argues that there can be no confusion by consumers since the“relevant public is more than used to seeing these kind of services being marketed with
‘MAIL’ suffixed terms” (Annex 8) or that consumers are familiar with word “mail” being
used with “electronic mail” (Annexes 9 and 10). Within the European context, theconsumer “must be deemed to be reasonably well informed and reasonably observant”(Annex 6).
150. Further, the Applicant argues that there will be strict measures put in place to avoid abusive
registration together with high measures of security (Response, p.12 and Annex 13) andthat the Applicant’s proposed management of the .mail gTLD will not interfere with thecore activities of UPU (Annex 13).
151. 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.

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1) The users’ potential confusion between “mail” and “post”
152. 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.
153. The Expert Panel has analyzed carefully all the dictionary and encyclopedia entries filed by
the Objector (Exhibits 10 to 13) and the Applicant (Annexes 3, 4 and 5). Almost all entries
do mention either as a first meaning or as a second or third meaning that “mail” is meant tobe “letters and packages conveyed by the postal system” or equate “mail” with “post” (SeeExhibits 10 to 13 and Annex 3). However, the same dictionaries or encyclopedia entries dolist as either third, fourth or fifth meaning, “email” as synonymous to “mail”. In addition,
when the word “mail” is linked with computing and the Internet context, “email” comes
first.
154. 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.
155. 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 the Internet
evaporates and online commerce becomes commonplace. The criterion to be applied here
should take into consideration a reasonable consumer, not a sophisticated one, but one who
actually acts prudently. As developed in the European context (see above §151) the
consumer who is taken into consideration is a reasonably informed and observant person.
156. 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

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ago when electronic mail was introduced23. 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 a French24 or Spanish (see Annex 4), but because the mentalities
have evolved with the progressive use of the Internet and the added sophistication of users.
It is indeed doubtful that 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 mail boxes than they do today to gmail or hotmail or any other Internet
services which use already the word “mail” in their domain name.
157. 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, theconfusion 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.
158. 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
159. 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.
160. 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
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
23

To that effect, Annex 5 is telling. In 1970, it was considered that the equation between “mail” and “electronicmail” was “rare”, but in 1972 it became much more frequent.
24
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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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).
161. However, several arguments run contrary to UPU’s and the Posts’ position.
162. 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 XXthcentury25. 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.
163. 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).
164. As far as the expert could tell, it appears that the public portion of its Application filed by
GMO Registry (Annex 13) do mention the measures it proposes to take for the managementof the .mail string which it intends to fight against abusive registration.

25

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

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165. Therefore, 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
166. 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) (Exhibit14) and one press release concerning the Sao Paulo and Curibita Posts in Brazil (Exhibit15). 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 among the 10
most trusted companies.
167. 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.
168. It is to be noted that GMO Registry’s public portion of the Application does list a numberof security measures that it intends to take to meet the concerns raised by the Objector.
However, it is not for this Panel to decide whether those measures are sufficient or not.
169. Considering the above, and if ICANN goes ahead with the .mail string, it will have to makeparticularly clear that the registry is indeed managing the string with heightened security
and privacy.
4) The material economic damage suffered by the Postal Community
170. 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 by GMO
Registry. 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.
171. 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. of Module
3.
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172. 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, the argument can bedeemed speculative in nature.
173. In light of the Expert’s findings at §§ 170-171 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
174. 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
175. 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.
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.

176. 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.

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177. The additional request by the Objector to reject “all other current and future applications
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 the specificapplication which is the subject of the proceedings.

VI. EXPERT DETERMINATION COSTS
178. 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.

VII. DECISION
179. 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, GMO REGISTRY, INC., prevails.
2. GMO REGISTRY, INC.’s advance payment on costs shall be refunded by the Centre.
Place of the proceedings: Paris, France
Date: 4 February 2014

Professor Catherine Kessedjian
Expert35