ICANN Responds to .Brand Issues

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The summary and analysis for comments on the New gTLD Applicant Guidebook was made available earlier today.

Several well-known brands such as IBM, Adobe Systems, AT&T, Lego, Microsoft and Verizon commented on the most recent version of the Applicant Guidebook.  Most of these comments focused on the Rights Protection Mechanisms (RPMs) for trademark holders as well as special requirements required to run a .brand registry.

Rights Protection Mechanisms

ICANN’s stance on RPMs is that they have listened attentively to feedback from the Intellectual Property community as well as the GAC, which resulted in “unprecedented” trademark protections in the New gTLD Applicant Guidebook.

ICANN reminds us that an IRT (Implementation Recommendation Team) was formed, policies were made and revised, and the STI Review Team (Special Trademark Issues Review Team) was formed in order to develop a balanced approach to protection of consumers, both registrants and Internet users.

It appears that the RPMs in the guidebook, particularly the URS (Uniform Rapid Suspension) will continue to be improved.  According to the document, a URS complaint could very well be cut down to 500 words from the current 5,000-word limit by the creation of a complaint form.  However, respondents will be allowed to fully articulate the “legitimate basis upon which the domain name was registered,” but with a limitation of 2,500 words rather than the prior limit of 5,000.

Vertical Integration and Use of Registrars

Several of the brands we have been working with cite vertical integration as desirable for brand TLDs. This makes sense because a .brand registry which uses its TLD for internal or branding purposes should be able to easily control when, how, and by whom names are registered.

After several dozen consultations with various big brands in Japan we also took an opportunity to participate in the public comment period for Proposed Final Applicant Guidebook. Here is the relevant excerpt:

Brand owners running a TLD for their own use should not be required to implement nondiscriminatory access to all ICANN accredited registrars. Brand TLDs should have complete control over which registrars can register a domain name in their zone. Section 2.9 of the draft registry agreement should clearly state that registries, through their ICANN-approved Registry-Registrar Agreement, are allowed to control access to their registries.

The RySG (Registries Stakeholders Group) suggests that the Code of Conduct—which appears to have been a last minute addition to the previous guidebook—as currently written—places an unnecessary burden on .brand applicants by forcing them to use a third party registrar for names that are intended to be used internally.

Unfortunately, ICANN states that “previously established GNSO guidance with respect to new TLDs does not allow for differentiated treatment of “.brand” TLDs with respect to the non-discriminatory use of ICANN-accredited registrars.”  See Principle 19 of the GNSO Final Report.

Termination or Sunset of a .brand

In response to comments on the transition process for brands, ICANN states:

“ICANN recognizes that delegation of some “.brand” TLDs might not be necessary or appropriate in the event that the registry operator of such a TLD elected to voluntarily wind down the registry.”

ICANN reports that there has not been an acceptable set of rules developed for deciding whether a TLD should be transferred and when a TLD should close, but in the case of brand it is obvious that such a transfer is unnecessary.

Nevertheless, ICANN will propose language for an alternative transition arrangement for single-registrant/single user gTLDs to be included in the next version of the guidebook, which is due to be released on the April 14th.

Geo-Names in .brand TLDs

Many commenters, including ourselves, feel that .brand registries should be allowed to avoid the requirement in Specification 5 (Requires the reservation of Geo-Names). ICANN maintains that further consultation with the GAC will be required for before making exceptions for certain TLDs, but that .brands shouldn’t have any problems following the guidelines that other New gTLD registries will have to. Gaining approval to make use of geo-names at the second level such as jp.brand or japan.brand shouldn’t be problematic for .brand registries.

ICANN will be having a consultation with the GAC in Brussels Feb. 28th – Mar. 1st and we hope this will bring many issues to resolution to set ICANN on its path for the intended release of the “next version” (and hopefully final version) of the New gTLD Applicant Guidebook this April.