Fellow BC members, these were just filed--FYI-- BUTERA & ANDREWS Attorneys at Law 1301 Pennsylvania Avenue, N.W. Washington, D.C. 20004-1701 202-347-6875 Philip S. Corwin, Partner pcorwin@butera-andrews.com<mailto:pcorwin@butera-andrews.com> December 9, 2010 By E-Mail to 5gtld-guide@icann.org<mailto:5gtld-guide@icann.org> Board of Directors Internet Corporation for Assigned Names and Numbers (ICANN) 4676 Admiralty Way, Suite 330 Marina del Rey, CA 90292-6601 Re: Proposed Final New gTLD Applicant Guidebook Dear Members of the ICANN Board: This comment letter is submitted by the Internet Commerce Association (ICA) in regard to ICANN’s November 12th notice establishing a period for public comments on the Proposed Final New gTLD Applicant Guidebook. This letter supplements all of our comments on prior versions of the proposed Guidebook, the most recent of which was filed on July 21, 2010. ICA is a not-for-profit trade association representing the domain name industry, including domain registrants, domain marketplaces, and direct search providers. Its membership is composed of domain name registrants who invest in domain names (DNs) and develop the associated websites, as well as the companies that serve them. Professional domain name registrants are a major source of the fees that support registrars, registries, and ICANN itself. Executive Summary * The inflexible “three strikes” UDRP loss applicant disqualification criteria must be adjusted to take into account the size of an applicant’s domain portfolio as well as their overall history of UDRP arbitrations. * A UDRP loss that has been reversed upon appeal to a court of proper jurisdiction should not be counted against an applicant. * Applicants that have been found to have engaged in three or more instances of attempted reverse domain name hijacking should be barred from participation in the new gTLD program. * The STI-RT’s recommendation for a 20-day URS response time should be restored or, failing that, extensive guidance should be provided regarding the grounds for which a 7-day “good faith” request for response extension will be granted. Applicant Eligibility Section 1.2.1 of the Final AG now states in part: ICANN will perform background screening in only two areas: (1) General business diligence and criminal history; and (2) History of cybersquatting behavior. The criteria used for criminal history are aligned with the “crimes of trust” standard sometimes used in the banking and finance industry… Applicants with confirmed convictions of the types listed in (a) – (k) below will be automatically disqualified from the program. Circumstances where ICANN may deny an otherwise qualified application include, but are not limited to instances where the applicant, or any individual named in the application: … k. has been involved in of a pattern of decisions indicating that the applicant or individual named in the application was engaged in cybersquatting as defined in the UDRP, ACPA, or other equivalent legislation. Three or more such decisions with one occurring in the last four years will generally be considered to constitute a pattern. While we support the general policy that repeat intentional infringers of intellectual property rights should not be eligible to apply for new gTLDs, we strongly believe that the approach taken by the Final AG in this regard in unreasonably inflexible and fails to even take the entire UDRP process into account. It also fails to contain equivalent sanctions for complainants who abuse the UDRP process. First off, the loss of a UDRP arbitration is not equivalent to a “conviction”, nor is the UDRP “legislation” adjudicated by a reliable and predictable court system. The shortcomings of the current UDRP system were recently noted by ICANN’s Business Constituency (comment at http://forum.icann.org/lists/acdr-proposal/msg00004.html ), citing “increasing concerns about the lack of adequate procedural and substantive consistency in the UDRP process” as its rationale for opposing accreditation of any new UDRP providers until ICANN enters into a standard agreement with all UDRP providers “as that is the only means of furthering the goal that UDRP decisions are consistent within and among UDRP providers”. The inflexible “three strikes” rule proposed in the Final AG fails to take into account the gross shortcomings in the present administration of the UDRP. Second, this proposal completely ignores our July 2010 suggestion that the treatment of UDRP losses as evidence of “cybersquatting” behavior should be done on a sliding scale basis that takes portfolio size into account. Clearly, while the loss of three UDRPs against a portfolio of 300 domains (one out of one hundred) might constitute rebuttable but not conclusive evidence of intentional infringement (given the lack of consistency in UDRP administration), three losses against a portfolio of 300,000 names (one out of one hundred thousand) constitutes no such evidence. Many individual and corporate ICA members own or manage domain portfolios of this size or greater, and barring them and their considerable financial resources as potential new gTLD investors on the basis of a rigid three strikes rule based upon a very imperfect and unpredictable UDRP arbitration process is absurd. Third, the proposal fails to take into account a registrant’s overall historic experience of UDRP decisions. The hypothetical owner of a portfolio with 300,000 domains could easily have been the target of 30 UDRP proceedings in a decade (averaging 3 per year), won 27 (90%) and lost 3 (10%), and subsequently had the 3 losses reversed in judicial appeals. Yet this registrant with an overall UDRP acquittal rate of 90%, and 100% acquittal rate following reversal on appeal, would nonetheless be unfairly branded a “cybersquatter” ineligible to invest in a new gTLD venture. Finally, the proposed eligibility screen gives no consideration whatsoever to the only appeals mechanism now available under the UDRP – which is appeal under the national law of the registrant. This leads to the equally absurd potential situation where a domain registrant with a portfolio of 300,000 domains may have lost three UDRP arbitrations in the past decade, one of them in the past four years; may have appealed each of those losses under applicable national law and won reversals in all three cases – and yet would still be barred from eligibility as a gTLD applicant! In addition to these gross shortcomings, the proposed treatment of cybersquatting is also unbalanced in that there is no prohibition against complainants who regularly abuse the UDRP process from being eligible to apply for a new gTLD. Surely such repeated abuse of process in an attempt to illicitly obtain a legitimately registered and used domain – to steal it, in effect –and should be regarded as a “crime of trust” bearing upon eligibility. We therefore propose that the background check criteria be further amended to bar any individual or business entity that has been found in three or more UDRP decisions to have engaged in attempted reverse domain name hijacking to be declared ineligible to be a new gTLD applicant. URS Response Time Section 5.1 of the proposed procedures for Uniform rapid Suspension (URS) shortens the time for a registrant to respond to the filing of a URS complaint against a domain name from 20 to 14 days. Section 5.3 states: Upon request by the Registrant, a limited extension of time to respond may be granted by the URS Provider if there is a good faith basis for doing so. In no event shall the extension be for more than seven (7) calendar days. This revision implements Section 2.6 of the ICANN Board’s September 25th Resolution (http://icann.org/en/minutes/resolutions-25sep10-en.htm ), which neither provided any rationale for this decision nor any greater explanation as to what might constitute acceptable “good faith” justifying such an extension: URS timing: In response to public comment, change the time to respond to a complaint from 20 days to 14 days, with one opportunity for an extension of seven days if there is a good faith basis for such an extension. We are dismayed that the Board chose to revise this element of the URS. The twenty day response period was arrived at after long and careful consideration by the Special Trademark Issues-Review Team (STI-RT) and was based upon its conclusion that this amount of time was necessary to assure that a registrant would indeed receive notice of alleged abuse and would have adequate time to prepare a meaningful response. The STI-RT’s recommendations were unanimously adopted by the GNSO and subsequently by the ICANN Board. If the Board’s intervention on this matter in September was meant to win acceptance from trademark interests for the Spring 2011 launch of the new gTLD program their verbal comments in Cartagena have shown that expectation to be largely unwarranted. We are further dismayed that the Board did not explain its reasons for this surgical strike or give any indication as to what types of circumstances would give rise to the granting of a 7-day extension. A 7-day extension in no way addresses the variety of circumstances in which a registrant may not receive notice of the complaint within the initial 14 days after its filing and indeed may first learn of it when his domain ceases to function, and we therefore believe that the Final AG should restore the full twenty day response time recommended by the STI-RT. Recognizing that reversal of the Board’s decision on this matter may not be attainable, we request that ICANN provide greater guidance as to what type of circumstances may provide the basis for a “good faith” seven day extension of a registrant’s response time. We do not seek rigid or inflexible rules but rather illustrative examples and general principles so that URS examiners make decisions on such requests within a guiding framework rather than on an ad hoc and unpredictable individual basis. Finally, we would note that the STI-RT unanimously recommended that URS providers be placed under contract, but that the Final AG still omits that critical requirement and therefore threatens to carry the inconsistency issues that plague the UDRP, noted above, into this new rights protection mechanism. Conclusion Thank you for your consideration of our views on this matter. We hope to see responsive changes made in response to them before the Applicant Guidebook is finalized and the new gTLD program is launched. Sincerely, Philip S. Corwin Counsel, Internet Commerce Association Philip S. Corwin Partner Butera & Andrews 1301 Pennsylvania Ave., NW Suite 500 Washington, DC 20004 202-347-6875 (office) 202-347-6876 (fax) 202-255-6172 (cell) "Luck is the residue of design." -- Branch Rickey