29 Rights Protection Mechanisms

Prototypical answer:

gTLDFull Legal NameE-mail suffixDetail
.KPMGKPMG International Cooperative (KPMG International Genossenschaft)valideus.comView

29.1. Rights Protection Mechanisms
KPMG is firmly committed to the protection of Intellectual Property rights and to implementing the mandatory rights protection mechanisms contained in the Applicant Guidebook and detailed in Specification 7 of the Registry Agreement. KPMG recognizes that although the New gTLD program includes significant protections beyond those that were mandatory for a number of the current TLDs, a key motivator for KPMG’s selection of Neustar as its registry services provider is Neustar’s experience in successfully launching a number of TLDs with diverse rights protection mechanisms, including many of those required in the Applicant Guidebook. More specifically, .KPMG will operate as a single entity registry with strict rules of eligibility and will therefore implement the following rights protection mechanisms where relevant in accordance with the Applicant Guidebook as further described below.
Trademark Clearinghouse: a one-stop shop so that trademark holders can protect their trademarks with a single registration.
Sunrise and Trademark Claims processes for the TLD.
Implementation of the Uniform Dispute Resolution Policy to address domain names that have been registered and used in bad faith in the TLD.
Uniform Rapid Suspension: A quicker, more efficient and cheaper alternative to the Uniform Dispute Resolution Policy to deal with clear cut cases of cybersquatting.
Implementation of a Thick WHOIS making it easier for rights holders to identify and locate infringing parties

A. Trademark Clearinghouse Including Sunrise and Trademark Claims
The first mandatory rights protection mechanism (“RPM”) required to be implemented by each new gTLD Registry is support for, and interaction with, the trademark clearinghouse. The trademark clearinghouse is intended to serve as a central repository for information to be authenticated, stored and disseminated pertaining to the rights of trademark holders. The data maintained in the clearinghouse will support and facilitate other RPMs, including the mandatory Sunrise Period and Trademark Claims service. Although many of the details of how the trademark clearinghouse will interact with the registry operator and registrar are as yet unknown, KPMG is actively monitoring the developments of the Implementation Assistance Group (“IAG”) designed to assist ICANN staff in firming up the rules and procedures associated with the policies and technical requirements for the trademark clearinghouse. In addition, KPMG’s back-end registry services provider is actively participating in the IAG to ensure that the protections afforded by the clearinghouse and associated RPMs are feasible and implementable.
Utilizing the trademark clearinghouse, all operators of new gTLDs must offer: (i) a sunrise registration service for at least 30 days during the pre-launch phase giving eligible trademark owners an early opportunity to register second-level domains in new gTLDs; and (ii) a trademark claims service for at least the first 60 days that second-level registrations are open. The trademark claim service is intended to provide clear notice to a potential registrant of the rights of a trademark owner whose trademark is registered in the clearinghouse.
KPMG’s registry service provider, Neustar, has already implemented Sunrise and⁄or Trademark Claims programs for numerous TLDs including .biz, .us, .travel, .tel and .co (see below) and will implement both of these services on behalf of .KPMG.

Neustar’s Experience in Implementing Sunrise and Trademark Claims Processes

In early 2002, Neustar became the first registry operator to launch a successful authenticated Sunrise process. This process permitted qualified trademark owners to pre-register their trademarks as domain names in the .us TLD space prior to the opening of the space to the general public. Unlike any other “Sunrise” plans implemented (or proposed before that time), Neustar validated the authenticity of Trademark applications and registrations with the United States Patent and Trademark Office (USPTO).
Subsequently, as the back-end registry operator for the .tel gTLD and the .co ccTLD, Neustar launched validated Sunrise programs. These programs are very similar to those that are to be employed by the Trademark Clearinghouse for new gTLDs.
KPMG will benefit from Neustarʹs experience. As .KPMG will be a private brand registry with eligibility requirements and rules of registration that restrict third parties, which are not members or affiliates of KPMG, from registering domains, abusive behaviours will be limited. The .KPMG sunrise will last thirty days. As all domains in .KPMG will be registered to KPMG for its own exclusive use, applications from third parties are not anticipated. However, KPMG will ensure that its sunrise, like all its RPMs, is operated fairly, transparently and in accordance with ICANN’s policies.
The anticipated Rollout Schedule for the Sunrise Period can be found in Section 29.4 below.
Although the exact process for the Sunrise program and its interaction between the trademark owner, Registry, Registrar, and IP Clearinghouse is not completely defined in the Applicant Guidebook and is dependent on the current RFI issued by ICANN in its selection of a Trademark Clearinghouse provider, Neustar’s expertise in launching multiple Sunrise processes and its established software will ensure a smooth and compliant Sunrise process for KPMG.

a) Trademark Claims Service Experience
With Neustar’s biz TLD launched in 2001, Neustar became the first TLD with a Trademark Claims service. Neustar developed the Trademark Claim Service by enabling companies to stake claims to domain names prior to the commencement of live .biz domain registrations.
During the Trademark Claim process, Neustar received over 80,000 Trademark Claims from entities around the world. Recognizing that multiple intellectual property owners could have trademark rights in a particular mark, multiple Trademark Claims for the same string were accepted. All applications were logged into a Trademark Claims database managed by Neustar.
The Trademark Claimant was required to provide various information about their trademark rights, including the:
Particular trademark or service mark relied on for the trademark Claim
Date a trademark application on the mark was filed, if any, on the string of the domain name
Country where the mark was filed, if applicable
Registration date, if applicable
Class or classes of goods and services for which the trademark or service mark was registered
Name of a contact person with whom to discuss the claimed trademark rights.
Once all Trademark Claims and domain name applications were collected, Neustar then compared the claims contained within the Trademark Claims database with its database of collected domain name applications (DNAs). In the event of a match between a Trademark Claim and a domain name application, an e-mail message was sent to the domain name applicant notifying the applicant of the existing Trademark Claim. The e-mail also stressed that if the applicant chose to continue the application process and was ultimately selected as the registrant, the applicant would be subject to Neustar’s dispute proceedings if challenged by the Trademark Claimant for that particular domain name.

This process is very similar to the one ultimately adopted by ICANN and incorporated in the latest version of the Applicant Guidebook. Although the collection of Trademark Claims for new gTLDs will be by the Trademark Clearinghouse, many of the aspects of Neustar’s Trademark Claims process in 2001 are similar to those in the Applicant Guidebook. Applicants will benefit from this expertise, even though third parties will be ineligible to register domains as all domains in the .KPMG registry will be owned by KPMG.
KPMG will comply with the procedures laid down by ICANN for the Trade Mark Claims process. We will send a notice to any registrant attempting to register a name identical to that in the Clearinghouse in the form required by ICANN and that the domain will only be registered if the representation set out in the Following registration, we will notify the holder of the trademark in the form required by ICANN.

B. Uniform Dispute Resolution Policy (UDRP) and Uniform Rapid Suspension (URS)
The UDRP is intended as an alternative dispute resolution process to transfer domain names from those that have registered and used domain names in bad faith. Although there is not much of an active role that the domain name registry plays in the implementation of the UDRP, Neustar has closely monitored UDRP decisions that have involved the TLDs for which it supports and ensures that the decisions are implemented by the registrars supporting its TLDs. When alerted by trademark owners of failures to implement UDRP decisions by its registrars, Neustar either proactively implements the decisions itself or reminds the offending registrar of its obligations to implement the decision, giving the registrar a period of time in which to comply, failing which Neustar implements the decision.
KPMG will therefore have the ability to implement UDRP decisions. It will impose obligations on its registrar to ensure compliance with the UDRP and any decisions issued under it. It will also ensure that (where Neustar becomes aware that a registrar has failed to implement a decision) Neustar will itself implement that decision, As .KPMG is a single entity registry, the only remedy will be the cancellation of domains as the only permitted registrant will be KPMG.
2. URS
In response to complaints by trademark owners that the UDRP was too costly and slow, and the fact that more than 70 percent of UDRP cases were “clear cut” cases of cybersquatting, ICANN adopted the IRT’s recommendation that all new gTLD registries be required, pursuant to their contracts with ICANN, to take part in a Uniform Rapid Suspension System (“URS”). The purpose of the URS is to provide a more cost effective and timely mechanism for brand owners than the UDRP to protect their trademarks and to promote consumer protection on the Internet.
The URS is not meant to address questionable cases of alleged infringement (e.g., use of terms in a generic sense) or for anti-competitive purposes or denial of free speech, but rather for those cases in which there is no genuine contestable issue as to the infringement and abuse that is taking place.
Unlike the UDRP which requires little involvement of gTLD registries, the URS envisages much more of an active role at the registry-level. For example, rather than requiring the registrar to lock down a domain name subject to a UDRP dispute, it is the registry under the URS that must lock the domain within 24 hours of receipt of the complaint from the URS Provider to restrict all changes to the registration data, including transfer and deletion of the domain names.
In addition, in the event of a determination in favor of the complainant, the registry is required to suspend the domain name. This suspension remains for the balance of the registration period and would not resolve the original website. Rather, the nameservers would be redirected to an informational web page provided by the URS Provider about the URS.
Additionally, the WHOIS reflects that the domain name will not be able to be transferred, deleted, or modified for the life of the registration. Finally, there is an option for a successful complainant to extend the registration period for one additional year at commercial rates.
KPMG is fully aware of each of these requirements and will have the capability to implement these requirements, even though it is a single entity registry. KPMG and Neustar are committed to supporting the UDRP and the URS.
C The Post Delegation Dispute Resolution Procedure (PDDRP)
The PDDRP is an administrative (court alternative) option for trademark owners to file an objection against a registry whose “affirmative conduct” in its operation or use of its gTLD is alleged to cause or materially contribute to trademark abuse. In this way, the PDDRP is intended to act as a higher-level enforcement tool to assist ICANN compliance activities, where rights holders may not be able to continue to turn solely to lower-level multijurisdictional enforcement options in a vastly expanded DNS.
The PDDRP involves a number of procedural layers, such as an administrative compliance review, appointment of a “threshold review panel,” an expert determination as to liability under the procedure (with implementation of any remedies at ICANN’s discretion), a possible de novo appeal and further appeal to arbitration under ICANN’s registry terms. The PDDRP requires specific bad-faith conduct including profit from encouraging infringement in addition to “the typical registration fee.”
As set out in the Applicant Guidebook in the appendix summarizing the PDDRP, the grounds for a complaint on a second level registration are that , “(a) there is a substantial pattern or practice of specific bad faith intent by the registry operator to profit from the sale of trademark infringing domain names; and (b) the registry operator’s bad faith intent to profit from the systematic registration of domain names within the gTLD that are identical or confusingly similar to the complainant’s mark, which: (i) takes unfair advantage of the distinctive character or the reputation of the complainantʹs mark; or (ii) impairs the distinctive character or the reputation of the complainantʹs mark, or(iii) creates a likelihood of confusion with the complainantʹs mark.”.
Whilst we will co-operate with any complaints made under the PDDRP, we think it is highly improbable that any PDDRP complaints will succeed because the grounds set out above cannot be satisfied as domains in the .kpmg registry will not be for sale and cannot be transferred to third parties.
D. Implementation of Thick WHOIS
The .KPMG registry will include a thick WHOIS database as required in Specification 4 of the Registry agreement. A thick WHOIS provides numerous advantages including a centralized location of registrant information, the ability to more easily manage and control the accuracy of data, and a consistent user experience.
E. Policies Handling Complaints Regarding Abuse
In addition the Rights Protection mechanisms addressed above, KPMG will implement a number of measures to handle complaints regarding the abusive registration or use of domain names in its TLD as described in KPMG’s response to Question 28, even though, as a single entity private brand registry, it does not anticipate registrant abuse because all domains will be registered to KPMG.

Registry Acceptable Use Policy
One of the key policies each new gTLD registry will need is to have is an Acceptable Use Policy that clearly delineates the types of activities that constitute “abuse” and the repercussions associated with abusive domain name registration or use. KPMG’s Acceptable Use Policy, set forth in our response to Question 28, will include prohibitions on phishing, pharming, dissemination of malware, fast flux hosting, hacking, and child pornography, among other things. In addition, the policy will include the right of the registry to take action necessary to deny, cancel, suspend, lock, or transfer any registration in violation of the policy.

Monitoring for Malicious Activity
KPMG is committed to ensuring that those domain names associated with abuse or malicious conduct in violation of the Acceptable Use Policy are dealt with in a timely and decisive manner. These include taking action against those domain names that are being used to threaten the stability and security of the TLD, or are part of a real-time investigation by law enforcement.
Once a complaint is received from a trusted source, third-party, or detected by the Registry, the Registry will use best efforts to verify the information in the complaint. If that information can be verified to the best of the ability of the Registry, the sponsoring registrar will be notified and be given 12 hours to investigate the activity and either take down the domain name by placing the domain name on hold or by deleting the domain name in its entirety or providing a compelling argument to the Registry to keep the name in the zone. If the registrar has not taken the requested action after the 12-hour period (i.e., is unresponsive to the request or refuses to take action), the Registry will place the domain on “ServerHold”. Although this action removes the domain name from the TLD zone, the domain name record still appears in the TLD WHOIS database so that the name and entities can be investigated by law enforcement should they desire to get involved.

29.2 Safeguards against Unqualified Registrations
All domains in .KPMG will be registered to KPMG for its own exclusive use and possibly for use by affiliates and KPMG will appear as the owner in all WHOIS records. KPMG may grant to affiliates a non-exclusive, non-transferable, worldwide limited license to use the domain names for a period of no less than one (1) year and no more than ten (10) years, commencing on the date on which the registration request was submitted by the approved registrar. KPMG will reserve the right to reject a registration request, or delete, revoke, suspend, cancel or transfer the licence to use .KPMG domain name at any time without notice at its sole discretion.
According to the registration policy of .KPMG, the domain names will have to be used in an acceptable manner and KPMG will undertake checks to ensure that the intended use of each domain conforms to the registration policy. According to the registration policy:
Domains must be used solely for purposes that enhance the strategic or commercial interests of KPMG.
Domain names must not be registered or used in a way that knowingly infringes any third party intellectual property rights.
A domain name registration must be an acceptable term that will not give rise to any moral or public order questions or in any way damage the strategic interests or reputation of KPMG.
Domains must not be delegated or assigned to external organisations, institutions, or individuals.
If the registrant ceases to be a member of KPMG, then the registrant must cancel registration of that domain name within 14 days of ceasing to be a member.
KPMG’s registrar will have a contractual duty to under checks to validate the credentials of a requestor of a second level domain to ensure eligibility and acceptable use. KPMG will audit the work of the registrar at least twice a year.

29.3 Resourcing Plans
The rights protection mechanisms described in the response above involve a wide range of tasks, procedures and systems. The responsibility for each mechanism varies based on the specific requirements. In general, the development of applications such as sunrise and IP claims will be the responsibility of the Engineering team, with guidance from the Product Management team. Customer Support and Legal will play a critical role in enforcing certain policies such as the rapid suspension process. These teams have years of experience implementing these or similar processes. The necessary resources will be pulled from the pool of available resources described in detail in the response to Question 31. The following resources are available from Neustar’s teams:
Development⁄Engineering 19 employees
Product Management- 4 employees
Customer Support 12 employees
The resources are more than adequate to support the rights protection mechanisms of the .KPMG registry. KPMG’s registrar will also be supporting KPMG by validating the eligibility of registration requests and helping with ICANN compliance and regulation of any abusive behaviors. The registrar will be dedicating the services of a Legal Manager and up to four operational experts to support KPMG.

29.4 Implementation Plans
We plan to introduce our Sunrise and IP Claims service to the following timetable:
Day One: Announcement of Registry Launch and publication of registry website with details of the Sunrise and TMCS
Day 30: Sunrise opens for 30 days
Day 60: Sunrise closes
Day 61: Publication of all domains applied for in our Thick Whois
Day 62: Registry Open, domains applied for in the Sunrise registered and TMCS (Trademark Claim Service) begins for 60 days
Day 122: TMCS ends; normal operations continue.
Our systems to support the implementation of complaints under the UDRP, the URS, and the PDDRP will be available from Day 30, as will Thick Whois.
The Implementation Team will create a formal Registry Launch plan by 1 December 2012. This will set out the exact process for the launch of the .KPMG registry and will define responsibilities and budgets. The KPMG Registry website, which is budgeted for in the three year plans provided in our answers to question 46 will be built within 30 days of pre-delegation testing starting. It will feature Rules of Registration, Rules of Eligibility, Terms & Conditions of Registration, Acceptable Use Policies as well as the Rules of the Sunrise, the Rules of the Sunrise Dispute Resolution Policy and the Rules of the Trademark Claims Service.

The registry website will promote the contact details of our Abuse Point of Contact which will be available 24⁄7.

We will comply with all requests from courts, law enforcement, and governmental bodies, and any decisions⁄judgments from UDRP and URS panels.
Technical implementation between the registry and the Trademark Clearinghouse will be undertaken by NeuStar as soon as practical after the Trademark Clearinghouse is operational and announces its integration process.
As demonstrated in our financial answers, a budget has been set aside to pay fees charged by the Trademark Clearinghouse Operator for this integration.
The contract we have with our registrar (the RAA) will require that the registrar adheres to the Terms & Conditions of the TMCH and will prohibit the registrar from filing domains in our registry on its own behalf or utilizing any data from the TMCH except in the provision of its duties as our registrar.
When processing TMCS claims, our registrar will be required to use the specific form of notice provided by ICANN in the Applicant Guidebook’.
We will also require our registrar to implement appropriate privacy policies reflecting the high standards that we set. See http:⁄⁄www.kpmg.com⁄Global⁄en⁄Pages⁄privacy.aspx.

29.5 Additional Mechanism that exceed requirements
Rights protection is at the core of KPMG’s objective in applying for this registry. Therefore we are committed to providing the following additional mechanisms:
Rights Protection Help Desk
We will maintain a Rights Protection Help Desk. Enquirers will be allocated a Case Number and the following details will be captured:
The contact details of the complainant
The domain name that is the subject of the complaint or query
The registered right, if any, that is associated with the request
An explanation of the issues such as why the complainant believes that its mark has been infringed
An initial response to a query or complaint will be made within 24 hours. The Rights Protection Help Desk will be in place on Day One of the registry. The cost of the Rights Help Desk is reflected in the Projections Templates provided at Q46 as part of on-going registry maintenance costs.
The aim of the Rights Protection Help Desk is to assist third parties in understanding the mission and purpose of our registry and to see if a resolution can be found that is quicker and easier than the filing of a UDRP or URS complaint.
Twice Yearly Registrar Accreditation & Audits
We will audit the performance of our registrar every six months and re-validate our Registry-registrar Agreements annually. Our audits will include site visits to ensure the security of data etc.
Registrant Pre-Verification
All requests for registration will be verified by our registrar to ensure that they come from a legitimate representative of KPMG. A record of the request will be kept in our on-line domain management console including the requestor’s email address and other contact information.

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