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29 Rights Protection Mechanisms

gTLDFull Legal NameE-mail suffixDetail
.ARTAremi Group S.A.steptoe.comView
General Statement

Abusive uses of .ART second-level domain names will not be tolerated. The nature of such abuses creates security and stability issues for the registry, registrars and registrants, as well as for users of the Internet in general. In order to reduce abusive registrations, Applicant will take the following measures to decrease the potential for abuse:

29.1. Rights Protection Mechanisms
Applicant 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. Applicant 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 Applicantʹs 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 the ones required in the Applicant Guidebook. More specifically, Applicant will implement the following rights protection mechanisms 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.
-Extended Sunrise Period and Continued 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 there are many details of how the trademark clearinghouse will interact with each registry operator and registrars, Applicant 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, Applicantʹs 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 noticeʺ to a potential registrant of the rights of a trademark owner whose trademark is registered in the clearinghouse.

Applicant, however, shall provide additional protection to brand owners and rights-holders by extending its Sunrise Period to sixty days; in addition, Applicant plans on implementing the Trademark Claims Service and subscribing to the Trademark Clearinghouse indefinitely.

1. Sunrise Procedures:

Applicant’s registrars will ensure that all Sunrise Registrants meet sunrise eligibility requirements (“SERs”), which will be verified by Clearinghouse data. The proposed SERs include: (i) ownership of a mark that is (a) nationally or regionally registered and for which proof of use, such as a declaration and a single specimen of current use – was submitted to, and validated by, the Trademark Clearinghouse; or (b) that have been court-validated; or (c) that are specifically protected by a statute or treaty currently in effect and that was in effect on or before 26 June 2008, (ii) optional registry-elected requirements regarding the international class of goods or services covered by registration; (iii) representation that all provided information is true and correct; and (iv) provision of data sufficient to document rights in the trademark.

Upon submission of all of the required information and documentation, registrar will forward the information to Applicant for authentication. Applicant will review the information and documentation and verify the trademark information and registration eligibility, and notify the potential registrant of any deficiencies.

Applicant will incorporate a Sunrise Dispute Resolution Policy (SDRP). The SRDP will allow challenges to Sunrise Registrations by third parties for a ten-day period after acceptance of the registration based on the following four grounds: (i) at the time the challenged domain name was registered, the registrant did not hold a trademark registration of national effect (or regional effect) or the trademark had not been court-validated or protected by statute or treaty; (ii) the domain name is not identical to the mark on which the registrant based its Sunrise registration; (iii) the trademark registration on which the registrant based its Sunrise registration is not of national or regional effect or the trademark had not been court-validated or protected by statute or treaty; or (iv) the trademark registration on which the domain name registrant based its Sunrise registration did not issue on or before the effective date of the Registry Agreement and was not applied for on or before ICANN announced the applications received.

After receiving a Sunrise Complaint, Applicant will review the Complaint to see if the Complaint reasonably asserts a legitimate challenge as defined by the SDRP. If not, Applicant will timely send an email to the Complainant that the subject of the complaint clearly does not fall within one of the delineated grounds as defined by the SDRP and that Applicant considers the matter closed.

If the domain name is found to not meet the SERs, Applicant will immediately suspend the domain name. Thereafter, Applicant will immediately notify the Sunrise Registrant of the suspension of the domain name, the nature of the complaint, and provide the registrant with the option to timely cure the SER deficiencies or the domain name will be canceled.

If the registrant timely responds, its response will be reviewed by Applicant to determine if the SERs are met. If Applicant is satisfied by the registrant’s response, Applicant will timely submit a request to unsuspend the domain name. If registrant does not timely respond, Applicant will then timely notify the Complainant that its complaint was ultimately denied and provide the reasons for the denial.

2. Trademark Claims Process:
Applicant plans to offer the Trademark Claims Service for not less than 180 days, and once details concerning the operation of the Trademark Clearinghouse are finalized, Applicant shall explore offering Trademark Claims Service for the life of the TLD. The Trademark Claims Service will be monitored by Applicant. Applicant’s registrars will be required to review all domain names requested to be registered during the Trademark Claims period to determine if they are an identical match of a trademark that has been filed with the Trademark Clearinghouse. A domain name will be considered an identical match when the domain name consists of the complete and identical textual elements of the mark, and includes domain names where (a) spaces contained within a mark that are either replaced by hyphens (and vice versa) or omitted; (b) certain special characters contained within a trademark are spelled out with appropriate words describing it (e.g., @ and &); and (c) punctuation or special characters contained within a mark that are unable to be used in a second-level domain name are either (i) omitted or (ii) replaced by spaces, hyphens or underscores. Domain names that are plural forms of a mark or that merely contain a mark will not qualify as an identical match.

If the registrar determines that a prospective domain name registration is identical to a mark registered in the Trademark Clearinghouse, the registrar will be required to ensure that a “Trademark Claims Notice” (“Notice”) in English is sent to the prospective registrant of the domain name and blind copy to Applicant on all such correspondence. The Notice will provide the prospective registrant information regarding the trademark referenced in the Trademark Claims Notice to enhance understanding of the Trademark rights being claimed by the trademark holder. The Notice will be provided in real time without cost to the prospective registrant.

After sending the Notice, the registrar will be required to ensure that the prospective registrant specifically warrant within five (5) days that: (i) the prospective registrant has received notification that the mark(s) is included in the Clearinghouse; (ii) the prospective registrant has received and understood the notice; and (iii) to the best of the prospective registrant’s knowledge that the registration and use of the requested domain name will not infringe on the rights that are the subject of the notice. If the warranty satisfies these requirements, the registrar will effectuate the registration and notify Applicant.

After the effectuation of a registration that is identical to a mark listed in the Trademark Clearinghouse, the registrar will be required to then ensure that a clear notice to the trademark owner of the trademark consisting of the domain name that has been registered and will blind copy to Applicant confirming that it has done so. The trademark owner then has the option of filing a Complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) and the Uniform Rapid Suspension System (URS) against the domain name, as the Applicant will require in its relevant agreements that the registry, registrar, and registrant all submit to and abide by the determinations of the UDRP and the URS providers.


1. Applicantʹs registry service provider, Neustar, has already implemented Sunrise and⁄or Trademark Claims programs for numerous TLDs including .biz, .us, .travel, .tel and .co and will implement both of these services on behalf of .ART.

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 employing processes. These programs are very similar to those that are to be employed by the Trademark Clearinghouse for new gTLDs.

Below is a high level overview of the implementation of the .co Sunrise period that demonstrates Neustar’s experience and ability to provide a Sunrise service and an overview of Neustar’s experience in implementing a Trademark Claims program to trademark owners for the launch of .biz. Neustar’s experience in each of these rights protection mechanisms will enable it to seamlessly provide these services on behalf of .ART as required by ICANN.

a) Sunrise and .co
The Sunrise process for .co was divided into two sub-phases:
-Local Sunrise giving holders of eligible trademarks that have obtained registered status from the Colombian trademark office the opportunity to apply for the .co domain names corresponding with their marks.
-Global Sunrise program giving holders of eligible registered trademarks of national effect, that have obtained a registered status in any country of the world the opportunity apply for the .co domain names corresponding with their marks for a period of time before registration is open to the public at large.

Like the new gTLD process set forth in the Applicant Guidebook, trademark owners had to have their rights validated by a Clearinghouse provider prior to the registration being accepted by the Registry. The Clearinghouse used a defined process for checking the eligibility of the legal rights claimed as the basis of each Sunrise application using official national trademark databases and submitted documentary evidence.

Applicants and⁄or their designated agents had the option of interacting directly with the Clearinghouse to ensure their applications were accurate and complete prior to submitting them to the Registry pursuant to an optional “Pre-validation Process”. Whether or not an applicant was “pre-validated,” the applicant had to submit its corresponding domain name application through an accredited registrar. When the Applicant was pre-validated through the Clearinghouse, each was given an associated approval number that it had to supply the registry. If they were not pre-validated, applicants were required to submit the required trademark information through their registrar to the Registry.

At the registry level, Neustar, subsequently either delivered the:
-Approval number and domain name registration information to the Clearinghouse.
-When there was no approval number, trademark information and the domain name registration information was provided to the Clearinghouse through EPP (as is currently required under the Applicant Guidebook).

Information was then used by the Clearinghouse as either further validation of those pre-validated applications, or initial validation of those that did not go through pre-validation. If the applicant was validated and their trademark matched the domain name applied-for, the Clearinghouse communicated that fact to the Registry via EPP.

When there was only one validated sunrise application, the application proceeded to registration when the .co launched. If there were multiple validated applications (recognizing that there could be multiple trademark owners sharing the same trademark), those were included in the .co Sunrise auction process. Neustar tracked all of the information it received and the status of each application and posted that status on a secure Website to enable trademark owners to view the status of its Sunrise application.

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 implement a smooth and compliant Sunrise process for the new gTLDs.

b) Trademark Claims Service Experience
When 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 a variety of 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; and
-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.

The domain name applicant had the option to proceed with the application or cancel the application. Proceeding on an application meant that the applicant wanted to go forward and have the application proceed to registration despite having been notified of an existing Trademark Claim. By choosing to “cancel,” the applicant made a decision in light of an existing Trademark Claim notification to not proceed.

If the applicant did not respond to the e-mail notification from Neustar, or elected to cancel the application, the application was not processed. This resulted in making the applicant ineligible to register the actual domain name. If the applicant affirmatively elected to continue the application process after being notified of the claimant’s (or claimants’) alleged trademark rights to the desired domain name, Neustar processed the application.

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. This makes Neustar uniquely qualified to implement the new gTLD Trademark Claims process.

B. Uniform Dispute Resolution Policy (UDRP) and Uniform Rapid Suspension (URS)
1. URS

In response to complaints by trademark owners that the UDRP was too cost prohibitive 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.

Applicant is fully aware of each of these requirements and will have the capability to implement these requirements for new gTLDs. Applicant’s choice of Neustar reflects its committment to the URS process. This is partly because during the IRT’s development of the URS, Neustar began examining the implications of the URS on its registry operations and provided the IRT with feedback on whether the recommendations from the IRT would be feasible for registries to implement.
Although there have been a few changes to the URS since the IRT recommendations, Neustar continued to participate in the development of the URS by providing comments to ICANN, many of which were adopted. In short, with the help of its registry services provider, Neustar, Applicant is committed to supporting the URS for the .ART TLD.

Applicant will specify in its Registry-Registrar and Registration Agreements used in connection with the .ART that all parties will timely abide by all decisions made by panels in accordance with the URS. On Applicant’s NIC.ART website, Applicant will designate and provide contact information for a Rights Protection Contact (“Rights Contact”) that will receive all URS Complaints verified by the URS Provider. This information shall consist of, at a minimum, a valid e-mail address dedicated solely to the handling of rights protection complaints, a telephone number and mailing address for the Rights Contact. Applicant will ensure that this information will be kept accurate and up to date.

Within 24 hours of receipt of the Notice of Complaint from the URS Provider, the Rights Contact shall notify its registry operator to “lock” the domain, meaning the registry shall restrict all changes to the registration data, including transfer and deletion of the domain names, but the name will continue to resolve. The Rights Contact will notify the URS Provider immediately upon locking the domain name (“Notice of Lock”).

Immediately upon receipt of a Determination in the Complainant’s favor, Rights Contact will notify the registry operator to suspend the domain name, which shall remain suspended for the balance of the registration period and will not resolve to the original web site. The nameservers shall be redirected to an informational web page provided by the URS Provider about the URS. The WHOIS for the domain name shall continue to display all of the information of the original Registrant except for the redirection of the nameservers. In addition, the WHOIS shall reflect that the domain name will not be able to be transferred, deleted or modified for the life of the registration. Finally, Applicant will abide by any timely requests by Complainant to extend the registration period for one additional year at commercial rates.

Immediately upon receipt of a Determination in registrant’s favor, Rights Contact will notify the registry operator to unlock the domain name.

2. UDRP

Applicant will specify in its Registry-Registrar and Registration Agreements used in connection with the TLD that all parties will timely abide by all decisions made by panels in accordance with the UDRP. Applicant’s Rights Contact will receive all UDRP Complaints and decisions, temporarily lock any domain names as required, and will notify its registrar to timely cancel or transfer all registrations determined to by a UDRP panel to be infringing.

3. Trademark Post-Delegation Dispute Resolution Procedure (Trademark PDDRP)

Applicant will participate in all post-delegation procedures required by the Registry agreement, including the Trademark Post-Delegation Dispute Resolution Procedure (Trademark PDDRP), and will timely abide by any Determinations of any PDDRP Provider as required in Specification 7 of the Registry Agreement.


C. Implementation of Thick Whois
The .ART 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. Applicant is committed to ensuring WHOIS queries are returned with the utmost speed and that registrars who go out of business or whose data otherwise becomes unavailable shall not prejudice the accuracy of the WHOIS database. Indeed, Applicant views the provision of an always-on, accurate, and thick WHOIS database as crucial to the proper operation of the UDRP and URS systems.

In addition, Applicant will at least twice per year review a random sampling of domain names within the applied-for TLD to test the accuracy and authenticity of the WHOIS information. Through this review, Applicant will examine the WHOIS data for evidence of inaccurate or incomplete WHOIS information. In the event that such errors or missing information exists, it shall be forwarded to the registrar, who shall be required to address such deficiencies with its registrants.

D. Policies Handling Complaints Regarding Abuse
In addition the Rights Protection mechanisms addressed above, the Applicant will implement a number of measures to handle complaints regarding the abusive registration of domain names in its TLD as described in .ART’s response to Question 28.

Registry Acceptable Use Policy
One of the key policies for each new gTLD registry is the need for an Acceptable Use Policy that clearly delineates the types of activities that constitute “abuse” and the repercussions associated with an abusive domain name registration. The policy must be incorporated into the applicable Registry-Registrar Agreement and reserve the right for the registry to take the appropriate actions based on the type of abuse. This may include locking down the domain name preventing any changes to the contact and nameserver information associated with the domain name, placing the domain name “on hold” rendering the domain name non-resolvable, transferring to the domain name to another registrar, and⁄or in cases in which the domain name is associated with an existing law enforcement investigation, substituting name servers to collect information about the DNS queries to assist the investigation. Applicantʹs Acceptable Use Policy, set forth in our response to Question 28, will include prohibitions on phishing, pharming, dissemination of malware, fast flux hosting, botnetting, hacking, and child pornography. 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
Applicant 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. This includes taking action against those domain names that are being used to threaten the stability and security of the TLD, or is 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 commercially reasonable 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 48 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.

Takedown Procedure

Applicant will provide a Rights Protection Takedown Procedure (“Takedown Procedure”) modeled after the Digital Millennium Copyright Act’s notice-and-takedown procedure.

At all times, Applicant will publish on its home website at 〈NIC.ART〉 as well as at its RPM Reporting Website contact information for addressing rights protection complaints (Complaints) to the Rights Contact, and the TLD’s Takedown Procedure.

Inquiries addressed to the Rights Contact will be forwarded to Applicant who will remedy or deny any Complaint regarding an alleged violation of the rights of the Complainant. During the review of any Complaint, Applicant will first give the Complaint a “quick look” to see if the Complaint reasonably alleges the infringement of any legal right. If not, the Rights Contact will write a timely correspondence to Complainant stating that the subject of the complaint clearly does not violate its rights.

If the quick look does not resolve the matter, Applicant will timely give the Complaint a full review. If a rights infringement is determined, the Rights Contact will alert the registry services provider to immediately suspend the resolution of the domain name. Applicant will then immediately notify the registrant of the suspension of the domain name, the nature of the complaint, and provide the registrant with the option to respond or take down the infringing content within a timely fashion or the domain name will be canceled.

If the registrant responds within a timely period, its response will be reviewed by Applicant. If Applicant is satisfied by the registrant’s response that no rights have been infringed, Applicant will submit a timely request to the registry services provider to unsuspend the domain name. The Rights Contact will then timely notify the Complainant that its complaint was ultimately denied and provide the reasons for the denial. If the registrant does not respond within a timely fashion, the Rights Contact will notify the registry services provider to cancel the abusive domain name.

This Takedown Procedure will not prejudice either party’s election to pursue another dispute mechanism, such as URS or UDRP.

With the assistance of its back-end registry services provider, Applicant will meet its obligations under Section 2.8 of the Registry Agreement to take reasonable steps to investigate and respond to reports from law enforcement and governmental and quasi-governmental agencies of illegal conduct in connection with the use of its TLD. Applicant will accordingly timely respond to legitimate law enforcement inquiries. Any such response shall include, at a minimum, an acknowledgement of receipt of the request, questions, or comments concerning the request, and an outline of the next steps to be taken by Applicant for a timely resolution of the request.

In the event such request involves any infringing activity which can be validated by Applicant, Rights Contact will timely notify the registry services provider to either suspend the domain name until the infringing activity is cured or cancel the domain name. If Applicant determines that it is not an infringing activity, Rights Contact will timely provide the relevant law enforcement, governmental and⁄or quasi-governmental agency with documentation supporting the maintenance of the domain in the zone.

With regard to all such requests discussed above, Applicant will maintain records of all law enforcement and governmental requests or inquiries and will track such requests and inquiries using customer relations management tools.

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 is the responsibility of the Engineering team, with guidance from the Product Management team. Customer Support and Legal play a critical role in enforcing certain policies such as the rapid suspension process. These Neustar 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 those 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 .ART registry.

In addition to the Neustar staff detailed above, within Applicant, two (2) persons shall be tasked with monitoring, reviewing, cataloging, and addressing RPM complaint issues. As the .ART TLD grows, and if RPM-related issues become more problematic and time-consuming, Applicant shall increase the number of employees on the RPM team and possibly engage the services of outside vendors to supplement its internal staff.

Comment: Please refer to response to Question 28, Abuse Prevention and Mitigation, and response to Questions 30.(a), Security Policy – Summary of the Security Policy for the Proposed Registry.
gTLDFull Legal NameE-mail suffixDetail
.camdot Agency Limitedfamousfourmedia.comView
Q29
The Applicant will be implementing an extensive range of Rights Protection Mechanisms (“RPMs”) designed to minimize abusive registrations and other activities that may affect the legal rights of others. The Applicant will implement and comply with all ICANN required RPMs and will in addition implement further measures to better protect the rights of others and minimize abusive registrations.

The following is an overview of Applicantʹs response to Q29:

1. Rights Protection as a core objective
2. Plans for Rights Protection Mechanisms as part of Start-Up
3. ICANN Mandated Rights Protection Mechanisms
3.1. Trademark Clearinghouse (“TMCH”)
3.2. Applicant’s Sunrise Period (“ASP”)
3.3. Trademark Claims Service (“TCS”)
3.4. Uniform Domain Name Dispute Resolution Policy (“UDRP”)
3.5. Uniform Rapid Suspension System (ʺURSʺ)
3.6. Trademark Post-Delegation Dispute Resolution Procedure (“PDDRP”)
4. Additional Rights Protection Mechanisms to be implemented by the Applicant on a Voluntary Basis
4.1. Mechanism to protect IGO Names (“PIN”)
4.2. Mechanism for Further Protection of Capital City Names (“CCC”)
5. Efforts to promote WHOIS Accuracy
5.1. Thick WHOIS
5.2. Semi Annual Audits to Ensure Accurate WHOIS
6. Policies Handling Complaints Regarding Abuse and Rights Issues
7. Registry Acceptable Use Policy(“AUP”)
8. Monitoring for Malicious Activity
9. Resourcing Plans Specific to Backend Registry Activities
10. Registry Backend Services Provider Experience with Rights Protection Measures


1 Rights Protection as a core objective
The Applicant is firmly committed to the protection of Intellectual Property rights and to implementing the mandatory RPMs contained in the Applicant Guidebook and detailed in Specification 7 of the Registry Agreement. Use of domain names that infringe upon the legal rights of others in the gTLD will not be tolerated and preventing abusive registrations is a core objective of the Applicant. The nature of such uses creates security and stability issues for the Registry, Registrars, and Registrants, as well as for users of the Internet in general. The Applicant will prevent abusive registrations and reduce opportunities for behaviours such as phishing or pharming by implementing comprehensive registration, anti-abuse, and rights protection guidelines as defined in its AUP, as well as innovative additional RPMs such as PIN and the CCC, as described below. In order to identify and address the abusive use of registered names on an ongoing basis, the Applicant will also incorporate and abide by all mandated RPMs as specified in Specification 7 of the Registry Agreement and as adopted by the ICANN Board of Directors as ICANN Consensus Policies.

2 Plans for Rights Protection Mechanisms as part of Start-Up

The timeline for start-up RPMs in the Applicantʹs gTLD is as follows:

Phase 1 – Sunrise Process:

- Day 1: Sunrise round opens
- Day 60: Sunrise round Closes
- Day 61: Sunrise Allocation including Contention Resolution Mechanisms (ʺCRMʺ) opens
- Day 71: Sunrise Allocation CRM closes

- The following Rights Protection Mechanisms apply:
a. TMCH
b. Sunrise Eligibility Requirements (“SER”)
c. Sunrise Dispute Resolution Policy (“SDRP”)
d. UDRP
e. URS
f. PIN
g. TCS*

Phase 2 – Landrush process:

- Day 72: Landrush opens
- Day 102: Landrush closes
- Day 103: Landrush CRM opens
- Day 113: Landrush CRM closes

- The following Rights Protection Mechanisms apply:
a. UDRP
b. URS
c. PIN
d. CCC
e. TCS*

Phase 3 – General Availability⁄Registrations:

- Day 114: General availability begins

- The following Rights Protection Mechanisms apply:
a. UDRP
b. URS
c. PIN
d. PDDRP
e. TCS* (90 days)

* To ease the concerns of trademark owners and mitigate the impact of infringing registrations, the Applicant will be implementing the Trademark Claims service in all three phases of launch. It is important to note that during the General Availability Phase, the Trademark Claims service will be used for 90 days, 30 days longer than the ICANN mandated minimum.

3 ICANN Mandated Rights Protection Mechanisms

3.1 Trademark Clearinghouse (“TMCH”)
The first mandatory RPM required of each new gTLD Registry is support for, and interaction with, the TMCH. The TMCH is intended to serve as a central repository for information pertaining to the rights of trademark holders to be authenticated, stored, and disseminated. The data maintained in the clearinghouse will support and facilitate other RPMs, including the mandatory Sunrise Period and Trademark Claims service. Although the operational details of how the TMCH will interact with Registry operators and Registrars are still being developed by ICANN, the Applicant is actively monitoring the developments of the Implementation Assistance Group (“IAG”). The IAG is working with ICANN staff to refine and finalize the rules, procedures and technical requirements for the TMCH. In addition, the gTLD’s Registry Backend Services Provider is actively participating in the IAG to ensure that the protections afforded by the clearinghouse and associated RPMs are feasible, implementable, and well understood.

Utilizing the TMCH, the Applicant will offer: (i) a Sunrise registration service for 60 days during the pre-launch phase giving eligible trademark owners an early opportunity to register second-level domains in new gTLDs; and (ii) a TCS in all 3 phases of launch including 90 days after phase 3 general availability.

3.2 Applicant’s Sunrise Period (“ASP”)
All domain names registered during the Sunrise Period will be subject to the Applicant’s domain name registration policy. The Applicant will surpass ICANNʹs mandated minimum by offering a Sunrise Period for sixty (60) days. Owners of trademarks listed in the TMCH that also meet the Applicant’s domain name registration requirements will be able to register domain names that are an identical match of their listed trademarks. The Applicant has engaged Famous Four Media Limited (“FFM”) as well as other suppliers to assist with this process. The FFM Sunrise Validation Team will consist of a minimum of 11 employees who will work with the Applicant’s Trademark Validation Team (“TVT”) and outside counsel, to receive and authenticate all Sunrise registrations.

Registrars who are accredited to sell names in the gTLD will ensure that all Sunrise Registrants meet SERs, which will be verified by Clearinghouse data. The proposed SERs include: (i) ownership of a mark that is (a) nationally or regionally registered and for which proof of use, such as a declaration and a single specimen of current use – was submitted to, and validated by, the TMCH; or (b) that have been court-validated; or (c) that are specifically protected by a statute or treaty currently in effect and that was in effect on or before 26 June 2008, (ii) optional Registry-elected requirements regarding the international class of goods or services covered by registration; (iii) representation that all provided information is true and correct; and (iv) provision of data sufficient to document rights in the trademark.

Upon submission of all of the required information and documentation, the Registrar will forward the information to the Applicant’s TVT for authentication. The Applicant’s TVT will review the information and documentation and verify the trademark information and registration eligibility, and notify the potential registrant of any deficiencies.

The Applicant will also incorporate a SDRP. The SRDP will allow challenges to Sunrise Registrations by third parties after acceptance of the registration based on the following four grounds: (i) at the time the challenged domain name was registered, the registrant did not hold a trademark registration of national or regional effect or the trademark had not been court-validated or protected by statute or treaty; (ii) the domain name is not identical to the mark on which the registrant based its Sunrise registration; (iii) the trademark registration on which the registrant based its Sunrise registration is not of national or regional effect or the trademark had not been court-validated or protected by statute or treaty; or (iv) the trademark registration on which the domain name registrant based its Sunrise registration did not have the necessary protections on or before the effective date of the Registry Agreement.

After receiving a Sunrise Complaint, the TVT will review the Complaint to see if the Complainant reasonably asserts a legitimate challenge as defined by the SDRP. If not, the TVT will send a notice to the Complainant that the complaint does not fall within one of the delineated grounds as defined by the SDRP and that the Applicant considers the matter closed.

If the domain name is found to not meet the SERs, the TVT will immediately suspend the domain name. Thereafter, the TVT will immediately notify the Sunrise Registrant of the suspension of the domain name, the nature of the complaint, and provide the registrant with the option to correct the SER deficiencies in a timely manner or the domain name will be cancelled.

If the registrant responds in a timely manner, the response will be reviewed by the TVT to determine if the SERs are met. If the TVT is satisfied by the registrant’s response, the TVT will submit a request to lift the suspension of the domain name and notify the Complainant that their dispute was denied. If the registrant does not respond in a timely manner, the TVT will then notify the Complainant that the complaint was upheld and the registration will be cancelled.

3.3 Trademark Claims Service
The Applicant will offer a TCS in Sunrise and Landrush as well as 90 days of general registration (30 days longer than the ICANN mandated minimum period.) The TCS will be monitored by the TVT. Registrars who are accredited to sell names in the gTLD will be required to review all domain names requested to be registered during the Trademark Claims period to determine if they are an identical match of a trademark that has been filed with the TMCH. A domain name will be considered an identical match when the domain name consists of the complete and identical textual elements of the mark, and includes domain names where (a) spaces contained within a mark are either replaced by hyphens or omitted; (b) certain special characters contained within a trademark are spelled out with appropriate words describing it (e.g., @ and &); and (c) punctuation or special characters contained within a mark that are unable to be used in a second-level domain name are either (i) omitted or (ii) replaced by hyphens or underscores. Domain names that are plural forms of a mark or that merely contain a mark as a sub string will not qualify as an identical match.

If the Registrar determines that a prospective domain name registration is identical to a mark registered in the TMCH, the Registrar will be required to ensure that a “Trademark Claims Notice” (“Notice”) in English is sent to the prospective registrant of the domain name and a blind copy is sent to the Applicant’s TVT. The Notice will provide the prospective registrant with information regarding the trademark referenced in the notice to enhance understanding of the Trademark rights being claimed by the trademark holder. The Notice will be provided in real time without cost to the prospective registrant.

After sending the Notice, the Registrar will require the prospective registrant to specifically warrant within five (5) days that: (i) the prospective registrant has received notification that the mark(s) is included in the Clearinghouse; (ii) the prospective registrant has received and understood the notice; and (iii) to the best of the prospective registrant’s knowledge that the registration and use of the requested domain name will not infringe on the rights that are the subject of the notice. If the warranty satisfies these requirements, the Registrar will effectuate the registration and notify the Applicant’s TVT.

After the effectuation of a registration that is identical to a mark listed in the TMCH, the Registrar will be required to notify the trademark owner that a domain name representing the listed mark has been registered. A copy of this communication will also be sent to the TVT. The trademark owner then has the option of filing a Complaint under the UDRP and the URS against the domain name registrant. The Applicant will require in its relevant agreements that the Registry, Registrar, and registrant all submit to and abide by the determinations of the UDRP and the URS providers.

3.4 Uniform Domain Name Dispute Resolution Policy
The Applicant will abide by all decisions rendered by UdrpP providers and will specify in its Registry Registrar Agreement (ʺRRAʺ) and Registration Agreements (ʺRAʺ) that all parties must also abide by all decisions made by panels in accordance with the UDRP. On the Applicant’s Registry website, the Applicant will designate a Rights Protection Contact (“Rights Contact”) which will receive all UDRP Complaints and decisions. Upon receipt of a determination, the Rights Contact will work with technical staff at the Registry Backend Services Provider to temporarily lock any domain names as required, and will notify the appropriate Registrar to cancel or transfer all registrations determined by a UDRP panel to be infringing.

3.5 Uniform Rapid Suspension System
The Applicant will implement the URS as provided in the Applicant Guidebook. The Applicant will also specify in its RRA that all parties abide by all decisions made by panels in accordance with the URS. In response to complaints made by trademark owners that the UDRP was too cost prohibitive and slow, and that more than 70 percent of UDRP cases were “clear cut” cases of cybersquatting, ICANN adopted the Implementation Review Team’s (ʺIRTʺ) recommendation that all new gTLD registries be required, pursuant to their contracts with ICANN, to take part in a 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, under the URS it is the Registry 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.
The Rights Contact will receive all URS Complaints verified by the URS Provider and provide its contact information. In the event of a decision in favour of the complainant, the Registry is required to suspend the domain name. This suspension remains in effect for the remainder of the registration period and would not resolve the original website. The nameservers would be redirected to an informational web page describing the URS Process. The WHOIS for that domain will state 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. Upon receipt of a decision in the registrant’s favour, Rights Contact will notify the Registry operator to unlock the domain name.

3.6 Trademark Post-Delegation Dispute Resolution Procedure (“PDDRP”)
The Applicant will participate in all post-delegation procedures required by the Registry agreement, including the PDDRP, and will abide by any decisions of any PDDRP Provider as required in Specification 7 of the Registry Agreement.


4 Additional Rights Protection Mechanisms to be implemented by the Applicant

4.1 Mechanism to Protect IGO Names
The Applicant considers the Protection of Intergovernmental Organization (ʺIGOʺ) names to be very important. The Applicant will use strings registered as second level domains in the .int gTLD as the basis for this protection. To register in the .int domain, the Registrants must be an IGO that meets the requirements found in RFC 1591. The .int domain is used for registering organizations established by international treaties between or among national governments and which are widely considered to have independent international legal personality. Thus, the names of these organizations, as with geographic names, can lend an official imprimatur, and if misused, be a source of public confusion or deception.

Reservation of IGO names:
In addition to the mandated and additional reservation of geographic names as provided for in response to Question 22, the Applicant will reserve, and thereby prevent registration of, all names that are registered as second level domains in the most recent .int zone as of 1st November 2012. By doing so, the Applicant will extend additional protection to IGOs that comply with the current eligibility requirements for the .int gTLD as defined at http:⁄⁄www.iana.org⁄domains⁄int⁄policy⁄, and that have obtained a second-level registration in the .int zone.

Release of IGO names:
In the future, should any of the IGOs wish to make use of the protected strings, the Registry will release and assign the domain to the respective IGOs using the following process:

a)The IGO submits a request to the Applicant in the hope of the reserved name being assigned to themselves and provides the necessary documentation and details of the proposed registrant entity for the domain name registration.
b)The Applicant will validate and authenticate the request to establish that it is a genuine bona fide request.
c)Once the request has been approved the Applicant will notify the requesting IGO as well as ICANN and the GAC of the approval for the assignment of the domain name.
d)The Applicant will issue a unique authorization code to the proposed IGO registrant.
e)The proposed IGO registrant will then be able to request that the assignment of the domain name is given to them using the authorization code with an ICANN and gTLD accredited Registrar of their choice.

4.2 Mechanism for Further Protection of Capital City Names
In parallel with the Landrush Period defined in the answer to question 18, the Applicant will implement a Capital City Claim (CCC) service whereby additional protection will be granted to the capital city names of a country or territory listed in the ISO 3166-1 standard. The CCC process is as follows:
a)Any prospective domain name registrant applying to register a domain name identical to the capital city name of a country or territory listed in the ISO 3166-1 standard will receive from the Applicant a CCC notification highlighting the fact that the applied-for domain name matches a capital city name of a country or territory listed in the ISO 3166-1 standard.
b)A potential domain name registrant receiving a CCC notification will have to send a response to the Applicant whereby they will agree to unconditionally comply with requirements as to representations and warranties required by the Applicant in order to protect the reputation of the capital city as well as any further relevant terms and conditions provided.
c)Unconditional acceptance of the warranties set out in the CCC notification will be a material requirement for a prospective registrant to be eligible to register the domain name in question should said prospective registrant be successful in the Landrush period.
d)Upon registration during the Landrush period of a domain name identical to a capital city name of a country or territory listed in the ISO 3166-1 standard, the Applicant will send a notification in writing to the ICANN Government Advisory Committee (ʺGACʺ) Chair.


5 Efforts to promote WHOIS Accuracy

5.1. Thick WHOIS
The Applicant will include a thick searchable WHOIS database both accessible on port 43 as well as on port 80 (http) 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, as well as greater transparency, a factor critical to rights holders as well as law enforcement in pursuing abusive uses of a domain.

5.2. Bi-Annual Audits to Ensure Accurate WHOIS
The Applicant’s TVT will perform a bi-annual review of a random sampling of domain names within the applied-for gTLD to test the accuracy and authenticity of the WHOIS information. Through this review, the Applicant’s TVT will examine the WHOIS data for evidence of inaccurate or incomplete Whois information. In the event that such errors or missing information exists, it shall be forwarded to the Registrar, who shall be required to address such deficiencies with its Registrants.

6 Policies Handling Complaints Regarding Abuse and Rights Issues
In addition to the RPMs addressed above, the Applicant will implement a number of measures to handle complaints regarding the abusive registration of domain names in its gTLD that may infringe on the rights of others. Further details are described in the response to Question 28.

7 Registry Acceptable Use Policy
One of the key policies each new gTLD Registry needs is to have an AUP that clearly delineates the types of activities that constitute “abuse” and the repercussions associated with an abusive domain name registration. The policy must be incorporated into the applicable Registry-Registrar Agreement and reserve the right for the Registry to take the appropriate actions based on the type of abuse. This may include locking down the domain name preventing any changes to the contact and nameserver information associated with the domain name, placing the domain name “on hold” rendering the domain name non-resolvable, transferring the domain name to another Registrar, and⁄or in cases in which the domain name is associated with an existing law enforcement investigation, substituting name servers to collect information about the DNS queries to assist the investigation. The gTLD’s AUP, set forth in our response to Question 28, will include prohibitions on phishing, pharming, dissemination of malware, fast flux hosting, hacking, and child pornography. 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.
In addition, the Applicant reserves the right to deny attempted registrations from repeat violators of the Registry’s AUP. The Registry’s AUP will incorporate a certification by the registrant that the domain will be used only for licensed, legitimate activities, and not to facilitate piracy or infringements. The registrant will be required to accept these terms as part of its registration agreement. The Applicant reserves the right to suspend or cancel a domain for violation of the Registry’s AUP.

8 Monitoring for Malicious Activity
The Applicant is committed to ensuring that those domain names associated with abuse or malicious conduct in violation of the AUP 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 gTLD, or are part of a real-time investigation by law enforcement.
Once a complaint is received or detected by the Registry, the Registry will use commercially reasonable 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 to provide 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 may place the domain on “ServerHold”. Although this action removes the domain name from the gTLD zone, the domain name record still appears in the gTLD WHOIS database so that the name and entities can be investigated by law enforcement should they desire to get involved.

9 Resourcing Plans Specific to Backend Registry Activities
Responsibility for rights protection rests with a variety of functional groups. The Trademark Validation Team and Sunrise Validation Teams are primarily responsible for investigating claims of marks for domain registration. The customer service team also plays an important role in assisting with the investigations, responding to customers, and notifying Registrars of abusive domains. Finally, the Policy⁄Legal team is responsible for developing the relevant policies and procedures.

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 is the responsibility of the Engineering team, with guidance from the Product Management team. Customer Support and Legal play a critical role in enforcing certain policies such as the rapid suspension process. These teams have very substantial 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 will be made available:
-Development⁄Engineering – 19 people
-Product Management - 4 people
-Customer Support – 12 people
The resources are more than adequate to support the rights protection mechanisms of the Registry.

Administrative Services Provider – Famous Four Media Limited

In addition to those resources set out above provided by the Registry’s backend services provider the Applicant‘s Administration Services Provider shall provide the following extra resources:
-Sunrise Validation Team - This shall comprise of 11 employees of which at least one shall be a qualified lawyer specializing in intellectual property law.
-Ongoing Rights Protection Team - This shall comprise of 11 employees of which at least one shall be a qualified lawyer specializing in intellectual property law.
The two key objectives of the Sunrise Validation Team and the Ongoing rights Protection Team (together the “Rights Team”) is to:

a)Prevent abusive registrations; and
b)Identify and address the abusive use of registered names on an ongoing basis
Given that rights protection is a fundamental core objective of the Applicant it has contracted with its Registry Administration Services Provider that the number of full time personnel made available to the Applicant will be 125% of the estimated requirement to ensure that at all times the Applicant is over resourced in this area.
In addition the Applicant shall instruct outside Counsel in any relevant jurisdiction on all matters that are unable to be adequately dealt with by the Sunrise Validation Team or the Ongoing Rights Protection Team.

10 Registry Backend Services Provider Experience with Rights Protection Measures
The gTLD’s Registry Backend Services Provider, Neustar Inc., has already implemented Sunrise and⁄or Trademark Claims programs for numerous gTLDs including .biz, .us, .travel, .tel and .co and will implement both of these services on behalf of the Applicant.

Neustar’s Experience with Sunrise Process:
In early 2002, Neustar became the first Registry operator to successfully launch an authenticated Sunrise process. This process permitted qualified trademark owners to pre-register their trademarks as domain names in the .us gTLD 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).
As the back-end Registry operator for the .tel gTLD and the .co ccTLD, Neustar launched a validated Sunrise program employing processes that are very similar to those that will be used by the TMCH for new gTLDs.
Below is a high level overview of the implementation of the .co Sunrise period and the Trademark Claims service that was part of the .biz launch. Neustar’s experience in each of these RPMs will enable it to seamlessly provide these services on behalf of the Applicant as required by ICANN.
Sunrise and .co
The Sunrise process for .co was divided into two sub-phases:
- Local Sunrise giving holders of eligible trademarks that have obtained registered status from the Colombian trademark office the opportunity to apply for the .co domain names corresponding with their marks.
- Global Sunrise program giving holders of eligible registered trademarks of national effect, that have obtained a registered status in any country of the world the opportunity to apply for.co domain names corresponding with their marks for a period of time before registration is open to the public at large.
Like the new gTLD process set forth in the Applicant Guidebook, trademark owners had to have their rights validated by a Clearinghouse provider prior to the registration being accepted by the Registry. The Clearinghouse used a defined process for checking the eligibility of the legal rights claimed as the basis of each Sunrise application using official national trademark databases and submitted documentary evidence.
Applicants and⁄or their designated agents had the option of interacting directly with the Clearinghouse to ensure their applications were accurate and complete prior to submitting them to the Registry via an optional “Pre-validation Process”. Regardless of whether an Applicant was “pre-validated”, all Applicants had to submit their corresponding domain name applications through a .co accredited Registrar. When the Applicant was pre-validated through the Clearinghouse, they were given an associated approval number that had to be supplied to the Registry. If Applicants were not pre-validated, they were required to submit the necessary trademark information through their Registrar to the Registry.
At the Registry level, Neustar, subsequently either delivered the:
- Approval number and domain name registration information to the Clearinghouse, or
- When there was no approval number, trademark information and the domain name registration information was provided to the Clearinghouse through EPP (as is currently required under the Applicant Guidebook).
Information was then used by the Clearinghouse for further validation of those pre-validated applications, or initial validation of those that did not select pre-validation. If the Applicant was validated and their trademark matched the domain name applied for, the Clearinghouse communicated that fact to the Registry via EPP.
When there was only one validated sunrise application for a domain name, the application proceeded to registration when the .co launched. If there were multiple validated applications for the same domain name (recognizing that there could be multiple trademark owners sharing the same trademark), those were processed via the .co Sunrise auction process. Neustar tracked all of the information it received and the status of each application on a secure Website to enable trademark owners to view the status of their Sunrise application.
Although the exact process for the Sunrise program and its interaction with trademark owners, Registry, Registrars, and TMCH is not finalized at the time of the application, Neustar’s expertise in launching multiple Sunrise processes and its established software will ensure a smooth and compliant Sunrise process for the new gTLDs.
a) Trademark Claims Service Experience
When Neustar’s .biz gTLD launched in 2001, Neustar became the first gTLD with a Trademark Claims (“TC”) service. Neustar developed the TC Service by enabling companies to stake claims to domain names prior to the commencement of live .biz domain registrations.
During the TC process, Neustar received over 80,000 TC from entities around the world. Recognizing that multiple intellectual property owners could have trademark rights in a particular mark, multiple TC for the same string were accepted. All applications were logged into a TC 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 TC and domain name applications were collected, Neustar then compared the claims contained within the TC database with its database of collected domain name applications (DNAs). In the event of a match between a TC and a domain name application, an e-mail message was sent to the domain name Applicant notifying the Applicant of the existing TC. 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.
The domain name Applicant had the option to proceed with the application or cancel the application. Proceeding with an application meant that the Applicant wanted the application to proceed to registration despite having been notified of an existing Trademark Claim. By choosing to “cancel,” the Applicant made a decision in light of an existing TC notification to not proceed.
If the Applicant did not respond to the e-mail notification from Neustar, or elected to cancel the application, the application was not processed. This prevented the Applicant from registering the actual domain name. If the Applicant affirmatively elected to continue the application process after being notified of the claimant’s (or claimants’) alleged trademark rights to the desired domain name, Neustar processed the application.
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 TC for new gTLDs will be by the TMCH, many of the aspects of Neustar’s TC process in 2001 are similar to those in the Applicant Guidebook. This makes Neustar uniquely qualified to implement the new gTLD TC process.
Neustar was also a key contributor to the development of the Uniform Dispute Resolution Policy (“UDRP”) in 1998. This became the first “Consensus Policy” of ICANN and has been required to be implemented by all domain name registries since that time. The UDRP is intended to be 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 gTLDs which it supports and ensures that the decisions are implemented by the Registrars supporting its gTLDs.
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