Comments of Intellectual Property Constituency on New TLDs (24 August 2000)

On July 16, 2000, the ICANN Board of Directors approved a resolution regarding the introduction of new TLDs in a "measured and responsible manner." This resolution provides that applications submitted by parties wishing to operate as a registry for any newly created TLD should include "...measures proposed for minimizing use of the TLD to carry out infringements or other abuses of intellectual property rights." The Board's resolution also provides guidelines it will consider in assessing proposals for selection of new TLD registries, which include:

[t]he importance of appropriate protections of rights of others, including intellectual property rights, in connection with the operation of the TLD, especially during the start-up phases.

It is clear from the language of the Board's resolution that any applicant seeking to win Board approval must include in its application proposals for mechanisms that provide protection for intellectual property rights. In this regard, the intellectual property community would like to reach out to prospective applicants by providing a brief overview of the mechanisms that each application must, at a minimum, include in order to provide the proper intellectual property protections called for in the ICANN Board's resolution.

Most of these mechanisms are based upon those that have demonstrated effectiveness in the current unrestricted or generic TLD environment (i.e., in .com, .org and .net). While we welcome discussion of other ideas about how to achieve the goal of minimizing infringement and other abuses of intellectual property rights, these mechanisms should provide the starting point for that discussion.

1. GENERAL INTELLECTUAL PROPERTY SAFEGUARDS.

A. Registration Requirements and Procedures

All registrants in new TLDs should be required to --

• pre-pay all registration fees;
• provide accurate contact information and keep it current;
• fully complete electronic registration forms; and
• certify that statements made in the registration application are true.

The above requirements already apply to all registrants in the established TLDs. In all TLDs, knowing submission of false contact data, or use of a domain for illegal purposes, should be grounds for revocation of the registration.

In addition, applications for restricted or chartered TLDs should must have clear and specific rules about who is permitted to register second-level domain names in that space, and about what activities are and are not appropriate or acceptable on the corresponding sites, and for what purposes. All applicants for restricted or chartered TLDs should provide speedy and efficient mechanisms, which can be invoked by interested third parties, to implement and enforce these rules. mus These applications must include in its by-laws rules that provide for efficient and speedy mechanisms provide a mechanism for resolving violations of the TLD's charter or restricted nature, and must provide that any third party shall have standing to challenge the TLD under these mechanisms. In this regard, a procedure must be established whereby a registrant found to have provided false information as to its entitlement to register in that TLD, or to have registered or used a domain name registration in a chartered or restricted TLD in violation of its established purpose, will have the offending domain name removed from the TLD.

B. UDRP

ICANN statistics show that the UDRP provides a valuable tool for the large number of cases where domain names in .com, .net and .org have been registered in bad faith. Approximately 1,500 UDRP proceedings have been initiated for determining rights of domain name holders who are alleged to have registered and used domain names in bad faith and roughly 900 decisions have been rendered. The results of UDRP proceedings indicate that cases involving cyberpirates and others acting in bad faith are quickly resolved in a fair, efficient, and cost-effective manner, and that domain name registrants have prevailed when their legitimate rights to the domain name have been established.

Given the success of the UDRP in existing open TLDs, the intellectual property community, registrars, prospective registry administrators, and other interested parties should turn their cooperative efforts towards ensuring application of the UDRP in new open TLDs and finding ways in which the UDRP can be expanded in order to cover intellectual property violations that occur in chartered or restricted TLDs.

In particular, registries in new chartered or restricted TLDs should supplement their unilateral capacity to revoke a fraudulent registration by adhering to an expanded UDRP, under which the registration or use of a domain name in a chartered or restricted TLD in violation of the TLDs charter or other pertinent rules would demonstrate bad faith. This would at least give an intellectual property rights owner or an interested member of the consuming public the ability to ensure that a bad faith actor will not be permitted to use the name in the chartered or restricted TLD.

C. WHOIS

Additionally, all applications for new TLDs should set forth the means by which the registry administrator will work with accredited participatingregistrars to provide the public unfettered access to complete and up-to-date data for each registered domain name record which, at a minimum, must contain the following:

• second-level domain name and the TLD in which the second-level domain name is registered;
• status of the second-level domain name, e.g., "on hold" or "deleted";
• registrant's name and postal address;
• administrative/technical contacts' name, postal address, e-mail address, telephone number and (if any) facsimile number;
• original registration date, expiration date and date on which the database was last updated;
• Internet Protocol addresses and corresponding names of primary and secondary nameservers for the SLD; and
• registrar’s name and web site address or hyperlink thereto.

In order to offer workable protection for intellectual property rights, the information set forth above must be available on a publicly accessible database, which is searchable by domain name, registrant's name, registrant's postal address, contacts' names, NIC handles and Internet Protocol address. Additionally, members of the public need to be able to search for all domain names registered to a particular registrant, at a particular postal address, or involving a particular contact, without an arbitrary limit (e.g. NSI search aborts at "50" hits and searches by postal address cannot be conducted). This ability is important under the UDRP, for example, to demonstrate a "pattern" of bad faith conduct. Finally, it is essential that all applicants for new TLDs, as a condition of their accreditation and as a material element in their continued accreditation, agree to participate in the operation of a cross-registry WHOIS database, which will provide searching capabilities and access to all information concerning domain name registrations regardless of which TLD the domain name is registered in or which registrar processed the domain name application. Such agreement shall further require all applicants to keep the cross-registry WHOIS database current and comprehensive.

2. START-UP PHASE SPECIFIC SAFEGUARDS.

In addition to the general mechanisms for intellectual property protection that must be addressed by each TLD applicant, each application also must include a proposal for providing adequate intellectual property protection during the start-up phase of the new TLD. In this regard, it is critical to have a procedure whereby owners of trademarks and service marks having been registered in a national trademark office for at least one year prior to the creation of the new TLD can pre-register on a first-come, first-served basis, the material textual element(s) (i.e., the word portion of their marks) as a domain name in a fully open TLD. Such domain name pre-registrations would be confined to a single registration corresponding to a trademark. In the case of TLDs that are restricted or chartered, not fully open (i.e., restricted or chartered domains with limited scope, including non-commercial domains and/or personal domains) such pre-registration also would be subject to compliance with the charter or registration requirements of such TLD.

CONCLUSION

By highlighting those mechanisms that are essential to effective intellectual property protection in any new TLDs, we hope to begin a dialogue among the intellectual property community, registrars, prospective registry administrators and other concerned parties. Our goal is to work together to develop proposals for new TLDs that will achieve the goals for intellectual property protection called for in the ICANN Board's July 16th resolution.