From: Lauren Eade Sent: Thursday, 28 May 2015 10:46 PM To: 'jo.lim@auda.org.au' Cc: Lisa Lennon Subject: Names Policy Panel Issues Paper 2015 - submissions of Gilbert + Tobin [G+T- Docs.FID20039605] Dear Ms Lim Thank you for the opportunity to make submissions to the Names Policy Panel Issues Paper 2015. Gilbert + Tobin’s submissions are set out below. Introduction As a general comment, Gilbert + Tobin understands the commercial imperatives on the supply side for opening up the .au space to direct registrations. If the Names Panel is considering such a radical change, we strongly recommend any registrations should be on at least the same terms (eligibility + protection) as applied to the existing 2LDs. Further that additional protections such as those adopted in relation to the release of, for example, the .uk domain should also be implemented to avoid a fresh round of cybersquatting and cost to Australian businesses. We also agree that variable licence periods should be available and a mechanism implemented for dealing with deadwood or orphaned registrations in relation to longer registration periods. Comment: Direct registrations in .au The Panel invites comments on whether or not .au should be opened up to direct registrations. In particular, the Panel is interested in what people think about the following questions: 1. Do new gTLDs pose a threat to the ".au brand"? Gilbert + Tobin does not regard gTLDs as a threat to the ".au brand." Multiple gTLDs have been functioning in competition with the .au 2LDs for years. The .com.au domain continues to be the preferred domain name of Australian businesses and a source of comfort to Australian consumers. 2. Is there evidence of any market demand for direct registrations? Gilbert + Tobin is not aware of any demand (from clients or otherwise) for direct registrations. In relation to the Panel's point 4.5 Gilbert + Tobin agrees that there is a risk that opening up direct registration would compel current trade mark and domain name owners (particularly in the .com.au space) to register the corresponding .au name. Gilbert + Tobin is not however confident that this could be dealt with at the policy level, since the need to file complaints would also force current trade mark and domain name owners to incur costs (including legal costs) and many would therefore conclude that securing a defensive domain name registration may be a lower cost option than a complaint or dispute proceedings. The relatively low level of defensive registrations across multiple .au domains (in particular. registration of the corresponding .net.au name) is not in our view proof that the regulatory framework in the .au registry avoids the need for such registrations. Rather, the relatively low levels of defensive registrations within the .au registry are largely accounted for by the lack of commercial appeal of the alternatives, particularly .net.au. Conversely at the gTLD level where competition is more robust, and marketing efforts of new registries have been more successful, registration of for example a .net or .biz name is a legitimate alternative to a .com registration, which incentivises defensive registrations. Certainly our experience is that trade mark owners do feel pressure to secure defensive domain name registrations in sunrise periods for new domains and we would expect the position would be the same here regardless of the policy frameworks in place. We also note that the experience of our clients in countries permitting direct registration at the second level (including China) is that domain name squatters will register both the second and third level variant, forcing up the cost of settlement and/or necessitating the filing of multiple complaints to recover the names. 3. What types of registrants/users would benefit from direct registrations? In theory direct registration might benefit traders who have legitimate interests in a trade mark which has already been registered by a third party in the .com.au domain. In practice, the issue is unlikely to arise other than in relation to descriptive domain names. Those domain names already have a relatively high commodity value which is not likely to be materially affected by the availability of direct .au registrations. 4. What policy rules should apply to direct registrations? Gilbert + Tobin agrees with the Panel's suggestion at 4.8 that similar eligibility rules should apply as for the other .au 2LDs, as well as the close match/acronym/abbreviation or close and substantial connection rule. There is no basis for the .au domain being operated on a more relaxed policy basis than the existing .au 2LDs as it will devalue existing registrations and lead to a 2 tier system operating which will impact consumer confidence in the system. 5. What issues would need to be taken into account as part of the implementation process? Any implementation of direct registration would of course need to accommodate the interests of existing trade mark/domain name owners. However, the usual sunrise provisions, which largely facilitate defensive domain name registrations (eg the NZ PRE system) and/or require existing trade mark/domain name owners to file stop/warning notices, which involve additional expense, require active management by, and can be ineffective for both trade mark owners and Australian businesses. More proactive measures for the registry itself, for example the UK policy of reserving.uk domains for the owner of the corresponding .co.uk domain name for a 5 year period, or alternatively screening all .au direct registrations and alerting existing trade mark and domain name owners when a third party seeks registration of a corresponding domain name at the .au level and/or refusing such registrations or requiring substantiation of competing rights at that point, would go further towards protecting the interests of current registrants. While these would place the costs burden of policing rights on registrars, they would benefit from the expansion in local real estate. Comment: 2LD eligibility and allocation policy rules The Panel invites comments on the 2LD eligibility and allocation policy rules including, but not limited to, the issues outlined above: 1. Should the domain name licence period remain fixed at two years? Gilbert + Tobin agrees that variable domain name terms should be implemented, particularly longer registration terms eg. 3 years (to correspond to maximum Australian business name registration terms) and 10 years (to correspond to trade mark registration terms). Any allowance of long term periods should be coupled with a mechanism for cancelling deadwood or orphaned registrations in the event the registrant is uncontactable and the domain name is not in use. 2. Should the principles of 'first come, first served' and 'no hierarchy of rights' be retained? Retention of these principles is consistent with domain names generally, including for expired domain names. We understand that the availability of automated back-order services may not be generally understood, and indeed such services are not universally effective even when provided by reputable registrars. However, alternative procedures such as an official waiting list or an alert list would also require interested parties to have a relatively detailed understanding of the expiry and deletion process and of the availability of the service, so do not address the underlying problem of lack of consumer awareness. 3. Should the current 2LD eligibility criteria (ie. restricting com.au/net.au to commercial entities, org.au/asn.au to not-for-profit entities, id.au to individuals) be modified? The proposed limitation to avoid double registrations would only marginally increase domain name availability since only a few registrants will be eligible to register in multiple 2LDs. The main feature complicating domain name availability in the .au registry is the fact that the .com.au domain name is vastly more popular than any of the alternatives. 4. Is the 'close and substantial connection' rule desirable? The close and substantial connection rule removed the artificial practices under the previous regime including registration of business names which could be abbreviated to the desired domain name. It should be retained. However, it would be useful and long overdue to clarify the position in relation to the application of the rule where a registered domain name is licensed to another party for use. 5. What changes are required to address the new practice regarding business name registrations? We agree appropriate database cross-referencing with ASIC's database would facilitate eligibility checks including in the context of disputes. Comment: Other 2LD policy rules The Panel invites comments on the policy rules relating to the reserved list and misspellings. The Prohibition on Misspellings Policy is a useful option for trade mark owners to prevent obvious typosquatting without the expense of auDRP proceedings, and should be retained. It also usefully avoids the maintenance costs associated with the transfer of infringing domain names. However, the policy paradoxically results in prior rights holders being more readily able to cancel mis-spelled versions of their names and trade marks than domain name registrations for the exact name or trade mark. Consideration should be given to extending the policy accordingly, and/or to other streamlined dispute resolution procedures including along the lines of the URS. Additional comments We recommend that the registration and expiry date of .au domain names should be included in the WHOIS details. This occurs at the top level and would be a useful reform particularly in relation to changes around dealing with expired domain names and drop or pre-reservation services. The restriction on privacy shield registrations and restrictions to prevent defacto registries operating at the second and third level should also be maintained. It is also time to clarify the position in relation to the licensing of domains to third parties under the "close and substantial" connection rule to avoid licensing leading to technical ineligibility to continue to hold and use domain names. Registries continue to employ different requirements and forms for transferring domain names in the .au space. We recommend auDA release one model form and one set of verification requirements to minimise the current delays and confusion around domain name transfers. This would benefit both registrars and users. Please do not hesitate to contact us if you have any questions in relation to the above. Kind regards Lisa Lennon / Lauren Eade Lisa Lennon | Partner | Gilbert + Tobin Lauren Eade | Lawyer | Gilbert + Tobin