Overview of Rights Protection Mechanisms Review of All RPMs in All gTLDs PDP WG | 5 May 2016

| 2 Why were new RPMs introduced for the 2012 New gTLD Program round? The Trademark Clearinghouse – what it is, how it works Sunrise registrations & Trademark Claims notices – what they are, how they work The Uniform Rapid Suspension procedure – what it is, how it works The Post-Delegation Dispute Resolution Procedure – what it is, how it works Discussion & Q&A with the Working Group co-chairs Scope of this Presentation

Why were new RPMs introduced for the 2012 New gTLD Program round?

| 4  June 2008: ICANN Board adopts GNSO Policy Development Process recommendations for the Introduction of New gTLDs  Four overarching issues were identified from public comments to the first version of an Applicant Guidebook (AGB) :  Trademark Protection  TLD Demand and Economic Analysis  Security and Stability: Root Zone Scaling  Potential for Malicious Conduct  March 2009: ICANN Board resolution requests:resolution “GNSO's Intellectual Property Constituency in consultation with staff to convene an Implementation Recommendation Team comprised of an internationally diverse group of persons with knowledge, expertise, and experience in the fields of trademark, consumer protection, or competition law, and the interplay of trademarks and the domain name system to develop and propose solutions to the overarching issue of trademark protection in connection with the introduction of new gTLDs.  IRT publishes Draft Report for public comment (April 2009) and Final Report (May 2009)Draft Report Final Report Background to the RPMs developed for the New gTLD Program

| 5  IRT identified several areas which could address rights-holders’ immediate concerns, including:  An IP Clearinghouse (later, the Trademark Clearinghouse)  A Globally Protected Marks List (not adopted)  Standardized pre-launch rights protection mechanisms (e.g. Sunrise registration procedures, and a Trademark Claims notice system)  A Uniform Rapid Suspension System based on the existing Uniform Dispute Resolution Policy  A post-delegation dispute resolution mechanisms at the top level  Whois requirements for new TLDs  October ICANN Board requests that the GNSO evaluate the IRT recommendations and proposed staff implementation for the next AGB – GNSO Council convenes the Special Trademark Issues (STI) review teamconvenes  STI team members were from all GNSO Stakeholder Groups, the At-Large community, Nominating Committee Appointees, and the Governmental Advisory Committee (GAC) Background to the RPMs developed for the New gTLD Program

| 6  December 2009: STI report submitted to GNSO Council, with unanimous recommendations for:STI report  A Trademark Clearinghouse to validate globally-submitted trademark data and serve as a central repository for validated marks for purposes of Sunrise registrations and Trademark Claims notices  All new gTLD registries to offer, at a minimum, either Sunrise or TM Claims process  Mandatory Uniform Rapid Suspension System with same substantive elements as the existing UDRP, to include safe harbors to protect the rights of legitimate registrants as well as penalties for abuse by TM holders  Standard of proof for a successful URS complaint – clear and convincing evidence  URS to be reviewed one year after date of operation  February 2011: GAC advises ICANN Board that Sunrise and TM Claims should be mandatoryadvises  Further work was conducted on Clearinghouse requirements (e.g. through an Implementation Assistance Group in December 2012) and publication of technical and operational requirements for Sunrise and TM Claims (2013)Sunrise and TM Claims Background to the RPMs developed for the New gTLD Program

| 7  20 June 2011: ICANN Board formally approves the launch of the New gTLD Programapproves  12 January 2012: Application window opens  March 2013: Trademark Clearinghouse (TMCH) opens for submissionsTrademark Clearinghouse  Over 13,000 verified marks received into TMCH between this time and the launch of the first new gTLD  March 2013: Official Uniform Rapid Suspension ProcedureUniform Rapid Suspension Procedure  June 2013: Final URS Rules publishedURS Rules  23 October 2013: First new gTLD delegated  February 2015: Draft Staff Paper providing initial data on use of New gTLD RPMs published for public commentDraft Staff Paper  Objective - to inform the pending GNSO Issue Report on RPM Review and GAC- requested TMCH Independent Review  September 2015: Final Staff Paper incorporating public comments published, including list of potential issues identified by the communityFinal Staff Paper  October 2015: GNSO Preliminary Issue Report published for public comment  December 2015: GNSO Final Issue Report submitted to GNSO Council  March 2016: GNSO Council charters PDP Working Group Background to the RPMs developed for the New gTLD Program

The Trademark Clearinghouse (TMCH)

| 9  What is it? Global database of verified trademark information Supports Sunrise Registrations & Trademark Claims notice service Verifies trademark data received – does not adjudicate or create TM rights  Key statistics: 90% of submissions verified and included into TMCH 92% of verified submissions had marks verified for proof of use As of August 2015, over 37,000 marks from 121 jurisdictions had been submitted The Trademark Clearinghouse (TMCH)

10 Trademark Clearinghouse Functions Sunrise & Claims Services IBM Sunrise & Claims Services IBM TMCH Database Verification Service Deloitte Verification Service Deloitte Rights Holders Registries & Registrars

| 11 Who can apply?  Either a trademark holder (individual or an entity, including its licensees and assignees) or its trademark agent (who submits and maintains the information on the TM holder’s behalf, and receives notices related to Sunrise and TM Claims) What types of marks are accepted?  Nationally or regionally-registered TMs (on primary register)  Marks protected by statute or treaty in effect at the time the mark information is submitted to the TMCH  May include geographical indications and designations of origin  Court-validated marks (court of law or other national judicial proceeding)  May include unregistered (common law) marks and well-known marks  Other marks that constitute intellectual property and that meet a registry’s individual requirements How the TMCH works (1)

| 12 What types of marks are not accepted?  TM applications or applications for protection of a mark  Well-known or famous trademarks, unless also protected by a statue or treaty or court-validated  US state trademarks  International trademark applications made via the Madrid system  Registered trademarks that were subject to successful invalidation, cancellation, opposition or rectification proceedings  A mark protected under statute or treaty that includes a top level extension such as “icann.org” or “.icann” as a mark  A mark protected under statute or treaty starting with or containing a “dot” (.) unless functioning as punctuation, abbreviation or as figurative part of the mark  A mark protected under statute or treaty that does not contain any letters, words, numerals, or DNS-valid characters  Any mark protected under stature or treaty of which the statute or treaty is only applicable to a certain region, city or state How the TMCH works (2)

| 13 Other useful notes:  Basic fee: USD150 for 1 TM record per year  To be eligible for Sunrise registrations – must also submit proof of use (signed declaration and a sample of use e.g. labels or advertisements)  All TM comparisons done by the TMCH (e.g. for purposes of TM Claims) compare the textual elements of a mark with the second level label of the domain name being registered  An “identical match” with a TMCH record = a domain name consists of the complete and identical textual elements of the mark:  Special characters and “&” contained within a trademark may be spelled out with appropriate words  Other special characters contained within a mark that are unable to be used in a second-level domain name may either be omitted or replaced by hyphens  Plural versions of a mark (or domain names containing the mark) are not considered an identical match How the TMCH works (3)

| 14 Questions Raise in Issue Report (not exhaustive, not authoritative) Potential issues concerning Trademark Clearing House Should there be an additional or a different recourse mechanism to challenge rejected trademarks? Should further guidance on the TMCH verification guidelines for different categories of marks be considered? Should the TMCH matching rules be expanded, e.g. to include plurals, ‘marks contained’ or ‘mark+keyword’, and/or common typos of a mark? Should notices to the trademark owner ought to be sent before the domain is registered?

Sunrise Registrations through the TMCH

| 16 Minimum mandatory Sunrise Periods for All New gTLDs Registries Overview:  Required for each new gTLD = a minimum period of at least 30 days during which TM holders have an advance opportunity to register domain names corresponding to their marks before names are made generally available to the public  A new gTLD Registry is responsible for executing Sunrise according to certain Requirements (published 30 September 2013) Key Points:  All Sunrise registrations must be based on valid Signed Mark Data file (showing that eligibility has been verified by the TMCH)  Registries may establish other restrictions as specified in Requirements e.g.:  Trademark date restrictions  Trademark class of goods/services  Community-based registration restrictions  Registries must also have a Sunrise Dispute Resolution Policy

| 17 “Start Date” and “End Date” sunrise registrations Start-Date Sunrise: Registry must provide service for a minimum of thirty (30) calendar days prior to General Registration and must provide thirty (30) calendar days’ notice prior to the start of the Sunrise period End-Date Sunrise: Registry has no advance notice requirement but must provide the service for a minimum of sixty (60) calendar days prior to General Registration, and must not use a time-based allocation method (e.g., first come, first served) The majority of new gTLD registries appear to have offered End-Date Sunrise periods

| 18 Jan 2014 Nov 2013 Dec 2013 Sunrise > Start-Date vs. End-Date Start-Date Sunrise 7 Nov 2013: ICANN receives TLD Startup Info * Chart depicts hypothetical Sunrise types with start date of 7 November 2013 End-Date Sunrise 30 Days Trademark-related domains registered on first come, first served (or other) basis 60 Days Collect requests for allocating trademark-related domain names Resolve conflicting trademark- related requests and allocate prior to General Registration General RegistrationSunrise RegistrationNotice Period General Registration Sunrise Registration

| 19 Additional optional early phase registration mechanisms Limited Registration Periods (LRP) - Intended to provide additional flexibility to make domain names available for registration during an early phase but following all Sunrise allocations, usually to a closed group based on requirements other than trademark rights LRP must have registration restrictions limiting domain names from being generally available to all registrants otherwise qualified to register domain names within that TLD LRP registrations must be subject to the Trademark Claims service Approved Launch Program Approved Launch Program service (ALP): Launched November 2013 – allows approved registries to offer additional registrations prior to Sunrise (not otherwise permitted under the Requirements) Qualified Launch ProgramQualified Launch Program service (QLP): Launched April 2014 – allows registries to register up to 100 domain names to third parties prior to Sunrise, for purposes of promoting the TLD, under certain conditions

| 20 Questions Raise in Issue Report (not exhaustive, not authoritative) Potential issues concerning the Sunrise Period Should the availability of Sunrise registrations only for “identical matches” (e.g. without extra generic text) be reviewed? Is the notion of ”premium names” relevant to a review of RPMs, and, if so, should it be defined across all gTLDs? Following from Question 2, should there be a mechanism to challenge whether a domain is a ‘premium name’? Should there be a specific policy about the reservation and release of “reserved names” (e.g. modification of Section of Specification 1 of the current Registry Agreement)? Should there be a public, centralized list of all reserved trademarks for any given Sunrise period? Should holders of Trademark Clearing House-verified trademarks be given first refusal once a reserved name is released? Should Sunrise Periods continue to be mandatory? If so, should the current requirements apply or should they be more uniform, such as a 60-day end-date period? Whether and how to develop a mechanism by which trademark owners can challenge Sunrise pricing practices that flout the purpose of Sunrise. Whether more can be done to improve transparency and communication about various Sunrise procedures.

The Trademark Claims Service through the TMCH

| 22 Two types of notices: (1) To a potential registrant of a domain name matching a TMCH record -  Following Sunrise for at least the first 90 days of General Registration - potential registrants receive a TM Claims Notice if their intended domain name matches a mark recorded in the TMCH  Notifies the potential registrant that the domain name he/she is seeking to register matches at least one TM record submitted to the TMCH  Sample notice: 04jun12-en.pdfhttps://newgtlds.icann.org/en/applicants/agb/trademark-clearinghouse- 04jun12-en.pdf  TM Claims notice is sent by Registrar in English and in the language of the Registration Agreement (sample notice available in all 6 official UN languages  To ensure legitimate registrations are not prevented, notice states expressly that the registration may or may not be legitimate, and may or may not be protected by the noncommercial use and fair use laws of the registrant's country. (2) To the TMCH record holder -  If registrant acknowledges the TM Claims notice and proceeds to register the domain, a Notice of Registered Name is then sent to the TM holder with the relevant TMCH record in TMCH  Allows rights-owner to take immediate action if she believes rights have been infringed (e.g. URS, UDRP, court action) Components of the Trademark Claims Service

| 23 As of May 2015: Sum of TM Claims Notices generated - 52,785,584 Sum of transactions for which a TM Claims Notice was generated and the registration went forward - 118,665 Addition of Previously-Abused Domain Names to the TM Claims Service (“TM+50”):  Introduced in October 2013 Introduced  TM owner may add up to 50 abused domain labels that have been found to be the subject of abusive registrations on the basis of a verified UDRP or national court proceeding to a TMCH record  Current costs: USD for verification of a court case, and USD50-75 for verification of a UDRP case, plus USD1 per label per year (plus additional USD25 when the TMCH record is renewed)  Does not confer eligibility for Sunrise; applies only to TM Claims service Key Statistics & Additional Features

| 24 Questions Raise in Issue Report (not exhaustive, not authoritative) Potential issues concerning Trademark Claims Should the Trademark Claims period be extended beyond ninety (90) days? Should the Trademark Claims period continue to apply to all new gTLDs? Should the Abused Domain Name Label service be continued? Does a Trademark Claims period create a potential “chilling effect” on genuine registrations, and, if so, how should this be addressed? Is the protection of the TMCH too broad? Is the TMCH providing too much protection for those with a trademark on a generic or descriptive dictionary word, thus allowing a trademark in one category of goods and services to block or postpone the legitimate and rightful use of all others in other areas of goods and services? Are legitimate noncommercial, commercial and individual registrants losing legitimate opportunities to register domain names in New gTLDs? Is the TMCH and the Sunrise Period allowing key domain names to be cherry-picked and removed from New gTLDs unrelated to those of the categories of goods and services of the trademark owner (e.g., allowing “Windows” to be removed from a future.CLEANING by Microsoft)?

| 25 Questions Raise in Issue Report (not exhaustive, not authoritative) Potential issues concerning Trademark Claims How should the TMCH scope be limited to apply to only the categories of goods and services in which the generic terms in a trademark are protected? How can TMCH services be much more transparent in terms of what is offered for ICANN pursuant to ICANN contracts and policies vs. what services are offered to private New gTLD registries pursuant to private contract? How can the TMCH provide education services not only for trademark owners, but for the registrants and potential registrants who are equally impacted by their services? How quickly can a cancelled trademark be removed from the TMCH database? (note: rejected trademarks and cancelled trademarks are different, with cancelled trademarks involving trademarks that have already been issued). What is the effect of the 90-day Trademark Claims process? Should TM +50 be reversed? There should be a review on accessibility to TMCH for individuals, private trademark holders and trademark agents in developing countries.

The Uniform Domain-Name Dispute Resolution Policy (UDRP)

| 27 Uniform Domain-Name Dispute-Resolution Policy (UDRP) History Background In August 1999 the ICANN Board accepts the DNSO (now GNSO) recommendation to establish a UDRP On 1 December 1999 complaints could be submitted for the first time. First preceding started on 9 December 1999

| 28 Applicable Disputes: (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith. Respondent needs to demonstrate: (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant. Uniform Domain-Name Dispute-Resolution Policy (UDRP)

| 29 Questions Raise in Issue Report (not exhaustive, not authoritative) Potential issues concerning the UDRP Are the UDRP’s current appeal mechanisms sufficient? Should there be a limit to the time period allowed (e.g. similar to a statute of limitation) for bringing UDRP complaints? Are free speech and the rights of non-commercial registrants adequately protected in the existing policy? Should there be a formal (mandatory) mechanism of early mediation? Are the current time limits of the UDRP (for filing, response, determinations and appeals) adequate? Should there be rules for the appointment of UDRP panels, such as formalized rotations? Under what circumstances (if any) should/could UDRP proceedings be anonymized? Should there be clearer policy guidance on a registrar’s obligations if a case is stayed or suspended? Should the possibility of laches be recognized in UDRP proceedings; if so, how can this be expressly addressed? Policy, then this must be done with extreme care, covering the above listed issues but also others, such as: Should “or” be introduced instead of “and” in the bad faith requirements? Should there be an introduction of a “loser-pays” scenario?

| 30 Questions Raise in Issue Report (not exhaustive, not authoritative) Potential issues concerning the UDRP Should monetary damages be awarded? The UDRP (unlike court proceedings) does not allow this, but there are examples of ccTLD registries now applying monetary damages. Should the relevant time periods be reduced? Should filing fees be lower? Should injunctive relief be available? Should there be a bad-faith presumption for repeat/serial offenders? Should repeat/serial offenders be blacklisted from new registrations? Should permanent suspension be added as an additional potential remedy under the UDRP? How should the Privacy and Proxy services which are now frequently used by registrants to shield their identity be more efficiently removed in the course of a UDRP proceeding? Should the UDRP be revised to cover challenges to trademark-infringing content even in the absence of trademark infringement in the domain name? Should a failure to respond result in an automatic default victory for the complainant? Should a failure to maintain an active credit card with the registrar in order to fulfil any “loser pays” obligations result in an automatic default victory for the complainant?

The Uniform Rapid Suspension Procedure (URS)

| 32  What is it?  Complements the UDRP by offering a lower-cost, faster path to relief for rights holders for clear-cut cases of infringement  Fast and inexpensive (< 500 USD)  For determinations in favor of the complainant: the domain name is suspended and lookups resolve to a URS information site  Largely a Registry Operator procedure  Key stats:  Complaints filed by August 2015: 250  Percentage of suspended domains: 87%  Default determinations (no response from registrant): 91% Uniform Rapid Suspension (URS)

| 33 Uniform Rapid Suspension (URS) Complainant has to show in her complaint to Provider that the relevant registered domain name is identical or confusingly similar to a word mark: i.for which the Complainant holds a valid national or regional registration and that is in current use; or ii.that has been validated through court proceedings; or iii.that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed. Use can be shown by demonstrating that evidence of use – which can be a declaration and one specimen of current use in commerce – was submitted to, and validated by, the Trademark Clearinghouse) Proof of use may also be submitted directly with the URS Complaint. And: – that the Registrant has no legitimate right or interest to the domain name; and – that the domain was registered and is being used in bad faith. See Paragraph URS Policy: 01mar13-en.pdfhttps://newgtlds.icann.org/en/applicants/urs/procedure- 01mar13-en.pdf

| 34 Uniform Rapid Suspension (URS) URS The Response can contain any facts refuting the claim of bad faith registration by setting out any of the following circumstances: i.Before any notice to Registrant of the dispute, Registrant’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or ii.Registrant (as an individual, business or other organization) has been commonly known by the domain name, even if Registrant has acquired no trademark or service mark rights; or iii.Registrant is making a legitimate or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Such claims, if found by the Examiner to be proved based on its evaluation of all evidence, shall result in a finding in favor of the Registrant. See Paragraph 5.7 URS

| 35 Uniform Rapid Suspension (URS) URS The Registrant may also assert Defense to the Complaint to demonstrate that the Registrant's use of the domain name is not in bad faith by showing, for example, one of the following: i.The domain name is generic or descriptive and the Registrant is making fair use of it. ii.The domain name is operated solely in tribute to or in criticism of a person or business that is found by the Examiner to be fair use. iii.Registrant's holding of the domain name is consistent with an express term of a written agreement entered into by the disputing Parties and that is still in effect. iv.The domain name is not part of a wider patter or series of abusive registrations because the DN is of a significantly different type or character to other domain names registered by the Registrant. See Paragraph 5.8 URS

| 36 Uniform Rapid Suspension (URS) URS +First URS case resolved: facebok.pw +Three service providers +National Arbitration Forum +Asian Doman Name Dispute Resolution Center +MFSD Srl +Complaints can be logged direct on the website of providers

| 37 Questions Raise in Issue Report (not exhaustive, not authoritative) Potential issues concerning the URS Should the ability for defaulting respondents in URS cases to file a reply for an extended period (e.g. up to one year) after the default notice, or even after a default determination is issued (in which case the complaint could be reviewed anew) be changed? Is the URS’ ‘clear and convincing’ standard of proof appropriate? Is there a need to develop express provisions to deal with ‘repeat offenders’ as well as a definition of what qualifies as ‘repeat offences’? Should the URS allow for additional remedies such as a perpetual block or other remedy, e.g. transfer or a “right of first refusal” to register the domain name in question? Is the current length of suspension (to the balance of the registration period) sufficient? Is the cost allocation model for the URS appropriate and justifiable? Should there be a loser pays model? If so, how can that be enforced if the respondent does not respond? Should the Response Fee applicable to complainants listing 15 or more disputed domain names by the same registrant be eliminated?

| 38 Questions Raise in Issue Report (not exhaustive, not authoritative) Additional Questions Do the RPMs work for registrants and trademark holders in other scripts/languages, and should any of them be further “internationalized” (such as in terms of service providers, languages served)? Do the RPMs adequately address issues of registrant protection (such as freedom of expression and fair use? Have there been abuses of the RPMs that can be documented and how can these be addressed? Is there a policy-based need to address the goal of the Trademark PDDRP? Are the processes being adopted by Providers of UDRP, URS, and TMCH services fair and reasonable? Are the Providers' procedures fair and equitable for all stakeholders and participants? Are the Providers consulting with all stakeholders and participants in the evaluation, adoption and review of these new procedures? Are the Providers training both the Complainants and the Respondents, and their communities and representatives, fairly and equally in these new procedures? Are Providers exceeding the scope of their authority in any of the procedures they are adopting? Is ICANN reaching out properly and sufficiently to the multi-stakeholder community when such procedures are being evaluated by ICANN at the Providers’ request? Is this an open and transparent process? What remedies exist, or should exist, to allow questions about new policies by the Providers offering UDRP, URS and TMCH services, and how can they be expeditiously and fairly created? What changes need to be made to ensure that procedures adopted by providers are consistent with the ICANN policies and are fair and balanced?

Post-Delegation Dispute Resolution Procedures

| 40  What is it?  P rovides parties potentially harmed by a new gTLD registry’s conduct an avenue to pursue a complaint about that conduct  Post-Delegation Dispute Resolution Procedures include:  Trademark Post-Delegation Dispute Resolution Procedure (Trademark PDDRP)  Registration Restriction Dispute Resolution Procedure (RRDRP)  Public Interest Commitments Dispute Resolution Procedure (PICDRP)  To date, no complaint filings under these procedures  Key areas of comment:  Review encouraged when data is available Post-Delegation Dispute Resolution Procedures

| 41 Trademark Post-Delegation DRP +A Procedure to address trademark rights infringement by a Registry Operator +Addresses situations where it is believed a Registry Operator is infringing, or actively participating in another’s infringement, of trademarks in its TLD +Performed by ICANN-approved providers +Complaints submitted through provider website TMPDDRP

| 42 Trademark Post-Delegation DRP Three DRP service providers: +National Arbitration Forum +Asian Doman Name Dispute Resolution Center +Word Intellectual Property Organization + Complaints can be directly submitted on the Dispute Providers’ website TMPDDRP

| 43 Further Information about the RPMs developed for the 2012 New gTLD Program  The TMCH, services, fees and news: clearinghouse.com/ clearinghouse.com/  TMCH overview, FAQs and fact sheets from ICANN:  TMCH Independent Review (launched Q1 2016, initial draft report expected Q2/Q3 2016):  Dates of Sunrise Periods, TM Claims Services and additional services (e.g. ALP, QLP):

| 44 Further Information about the RPMs developed for the 2012 New gTLD Program  Understanding the URD  Understanding the Post-Delegation Dispute Resolution Procedures

REGISTRY LIFECYCLE TLD STARTUPONGOING OPERATIONS TM CLEARINGHOUSE UDRP URS POST-DELEGATION DISPUTE PROCESSES SUNRISE ** Collectively, the RPMs designed for the New gTLD Program provide different protections and remedies throughout the lifecycle of a gTLD ** 45 TM CLAIMS

| 46 The End Questions?