ICANN’s new gTLD Registry Agreement has become the centre of attention of brand owners, with the organisation opening a new comment period on proposals to tweak the agreement to better reflect the operating nature of ‘.brands’. Meanwhile, the Intellectual Property Owners Association (IPOA) has voiced trademark owner concerns over elements of the current agreement.
On Friday ICANN has opened a new comment period centred on a proposal requested by the Brand Registry Group to incorporate a new Specification 13 to the new gTLD Registry Agreement. The specification would be available to registry operators that ICANN determines as operating a ‘.brand’ TLD and makes three changes to the registry agreement for those qualifying as such. Clause 2.9 would be changed to allow ‘.brands’ to exclusively use only trusted registrar(s), while clause 4.5 would be changed to provide ‘.brand’ registry operators with an option to object to the re-delegation of a ‘.brand’ TLD following the termination or expiry of the registry agreement during a two-year cooling off period (to allow the ‘.brand’ to avoid any risk of consumer confusion or any other unintended collisions consequences after the winding down of the registry). Additionally, ‘.brands’ would be exempt from the requirements of the Code of Conduct of Specification 9.
In addition to the specifics of the proposal, the comment period is seeking views on the appropriateness of classifying certain TLDs as ‘.brands’ and whether the definition of ‘.brand TLD’ is sufficiently narrow to capture only what is commonly recognised as a corporate brand.
Speaking in the public forum at ICANN’s recent meeting in Buenos Aires, Martin Sutton, interim president of the Brand Registry Group and representative of gTLD applicant HSBC, explained that
“the sale of domain names is not the only future online model”, with the proposed changes designed to “better reflect the nature of ‘.brands”, noting: “These changes will allow brands to better maintain their trusted online spaces to the benefit of consumers and governments worldwide.”
Commenting on the proposals, Brian Beckham, head of legal policy at Valideus, told WTR that,
“while perhaps small in themselves, these proposed contractual changes would positively reflect ‘.brands’ not only as a unique and innovative new TLD model, but as a new voice in an evolving and forward-looking ICANN”. He adds that, because “the ethos of a ‘.brand’ is trust”, a bespoke contract specification for qualifying applications “provides a foundation for trademark owners to support this message of trust, and to enhance consumer’s online experiences”.
Last week ICANN also published a letter from Richard Phillips, president of the IPOA, which voiced trademark owner concerns over the registry agreement. Specifically, it cites specification 5 of the agreement, under which registry operators “may activate in the DNS up to 100 names ‘necessary for the operation or the promotion of the TLD’. It is then at the registry operator’s discretion whether or not any of those domain names may later be released for registration to another person or entity.” Additionally, under Section 3.3, registry operators “may withhold from registration or allocate to themselves any number of names at all domain levels. While these names may not be activated in the DNS by the registry operator…, [the operator] may release a reserved name to another person or entity at its sole discretion.”
The IPOA’s concern is that such reservations would invite the abuse of protected marks:
“For instance, registry operators may reserve the marks of protected brands to leverage premium sales. Further, registry operators may use this ability to release names to market competitors of the brand owners.”
Phillips suggests two procedures. The first is the expansion of the Trademark Clearinghouse and dispute resolution policies to name reservations and releases by Registry Operators, in the same way that these policies apply to registration of second-level domains. The second is for the creation of a new dispute resolution to allow rights holders to disclose names released from the reserved status.
While the IPOA’s letter has yet to solicit a response, the creation of a public comment forum tackling the creation of a new Specification 13 is a positive move for brand applicants – and provides an indicator that the group is becoming more of an actor in the ICANN structure. As Beckham concludes: “The ICANN community is increasingly recognising that, in many ways, the introduction of trusted ‘.brand’ spaces will be a rising tide to lift the new gTLD program.”