Comment on Proposal for a Specification 13 to ICANN Registry Agreement

[Prakash Bellur <p.bellur@xxxxxxxx>]

​

IEEE Global LLC, a subsidiary of the Institute of Electrical and
Electronics Engineers, Incorporated, (“IEEE”) appreciates the opportunity
to comment on the Proposal for a Specification 13 to the ICANN Registry
Agreement to Contractually Reflect Certain Limited Aspects of ".Brand" New
gTLDs.  IEEE is glad to see that some of the unique concerns of .brand
applicants are being recognized by ICANN, and appreciates the efforts of
the Brand Registry Group in creating and proposing the new specification.  IEEE
is concerned however, that the draft specification, as written, effectively
excludes many .brand applicants (perhaps unintentionally) and does not go
far enough to meet the needs of brand owners.


The first, more fundamental, concern is the proposed specification’s
definition of “.Brand TLDs,” which establishes which registry operators may
benefit from the specification.  The definition, as written, would
effectively exclude all brand owners who applied for a .brand gTLD through
a subsidiary entity.  Most of the subparts of Section 5.1 allow that the
requirements for qualifying as a .Brand TLD may be met by the actions or
characteristics of the Registry Operator itself or its “Affiliate.”  For
example, subpart (i)(b) requires that the TLD string must be a registered
trademark “owned and used by” the Registry Operator or its “Affiliate” in
connection with the goods and/or services claimed in that
registration.  Subpart
(i)(c) requires that such trademark registration was issued “to Registry
Operator or its Affiliate prior to the filing of its TLD registry
application with ICANN.”   Subpart (ii) requires that “only Registry
Operator, its Affiliates, or Trademark Licensees register domain names and
control the DNS records associated with domain names at any level in the
TLD.”


 But two requirements may only be met by the Registry Operator itself. Subpart
(i)(d) requires that the registered trademark is “used throughout the Term
continuously in the ordinary course of business *of* *Registry Operator* in
connection with the offering of the goods and/or services identified in the
trademark registration” (emphasis added).  Subpart (i)(f) requires that the
registered trademark is “used *by Registry Operator* in the conduct of one
or more of its businesses that are unrelated to the provision of TLD
Registry Services” (emphasis added).  These two requirements would mean
that all .brand TLDs applied for through an affiliate, such as a wholly
owned subsidiary, of the brand owner, cannot benefit from Specification 13.


We strongly suspect that this exclusion was an unintentional oversight on
the part of the proposed specification’s drafters.  It does not make sense,
for example, to allow that the registered trademark may be “owned and used
by the Registry Operator or its Affiliate” in connection with the goods or
services claimed in the registration (subpart (i)(b)), but then require
that only the Registry Operator may satisfy the very similar requirement of
using the registered trademark “throughout the Term continuously in the
ordinary course of business” (subpart (i)(d)).  The exclusion is also
inconsistent with versions of the draft Registry Agreement that have
appeared in the Applicant Guidebook for the last several years, and well
prior to the current application period.  In all such drafts, there was an
exception written into Section 4.5, and clearly meant to apply to .brand
applicants, allowing that redelegation might not be implemented if the
Registry Operator does not sell, distribute, or transfer control or use of
any registrations in the TLD except to an “Affiliate.”  A similar exception
has applied to the Registry Operator’s Code of Conduct in all recent drafts
of the Registry Agreement.  It cannot be that the proposed Specification
13, which adopts the draft Registry Agreement’s definition of “Affiliate”
and is meant to build on the assurances provided in these previously
existing exceptions, is intended to exclude .brand applicants who would
qualify for the base agreement’s exceptions.  Relatedly, adopting the
proposed specification in its present form would unfairly punish brand
owners who, reviewing the AGB and its draft registry agreement prior to
filing an application, opted to apply for a new gTLD through an affiliated
entity because they reasonably expected that it was ICANN’s intention to
treat that decision as having no effect on the issue of redelegation or the
applicability of the Code of Conduct. Regardless of whether this exclusion
was intentional, therefore, it must be eliminated.  *Specifically, Sections
5.1(i)(d) and 5.1(i)(f) should be revised so that the term “Registry
Operator” is replaced with “Registry Operator or its Affiliate.”
Relatedly, IEEE requests that ICANN provide a method for obtaining
pre-approval by ICANN of an entity’s designation as an “Affilate” to reduce
the risk of unexpected determinations once the TLD registry is operating.*


 The second concern is that the protections afforded to .brand applicants
do not go far enough, particularly in light of the rigid standards for
qualifying as .Brand TLD and maintaining that designation through annual
internal reviews.

The proposed revision to Section 4.5 currently provides that, barring
redelegation for the sake of the public interest, “ICANN may not delegate
the TLD to a successor registry operator for a period of two years
following the Expiration Date without Registry Operator’s consent.”  But it
also provides that “this Section 4.5 shall not prohibit ICANN from
accepting applications for or delegating the TLD pursuant to a future
application process for the delegation of top-level domains.”  This
language is at best contradictory, and the likeliest interpretation seems
to be that ICANN is simply allowed to redelegate the TLD by a new
application process whenever it wishes.  This makes the two-year period
largely meaningless and seems at odds with the drafters’ intent.  *It
should be made clear that, except in the case of redelegation that is
necessary to protect the public interest, redelegation by any method is not
permitted during the two years following the Expiration Date*.  The
proposed specification also continues to give ICANN too much discretion to
redelegate a TLD where ICANN determines it must do so to protect the public
interest.  While IEEE welcomes the addition of a method for the Registry
Operator to dispute such determinations, the continued ability of ICANN to
make the initial determination without clear guidelines, and with
significant discretion, creates needless uncertainty.  For a TLD that is
the trademark of the Registry Operator or its Affiliate, in which all
domain names within TLD are registered to Registry Operator, its Affilates,
or Trademark Licensees, it is difficult to imagine what public interest
could require redelegation.  Therefore, there should be a higher standard
that ICANN should have to meet in its initial determination that
redelegation is necessary and to defend during a dispute proceeding.
Specifically,
IEEE recommends that, *for qualifying .Brand TLDs, redelegation in the
public interest be allowed only when redelegation would “prevent
significant harm to the public interest that is unavoidable in the absence
of redelegation*.”


Finally, IEEE agrees that *NTAG’s proposal to defer sunrise periods for
.brand gTLDs (until they are open for registration of second-level domain
names by unaffiliated third parties) makes sense*.  Because unaffiliated
third parties will not be eligible to register in the .IEEE gTLD when it
launches, the sunrise period will serve no purpose.  Deferring it will
eliminate the administrative burden of launching a meaningless sunrise
period.  If IEEE ever decides to open registration in its gTLD to
unaffiliated third parties, launching a sunrise period then will protect
brand owners more than launching a sunrise period now, in which
unaffiliated third party brand owners will not be eligible to participate.

* * *

IEEE welcomes further discussion of these important issues and looks
forward to a revised Registry Agreement that meets the reasonable needs of
.Brand TLDs, allowing them to contribute fully to a diverse online space.


Prakash Bellur
Senior Director, Platform Design
IEEE
p.bellur@xxxxxxxx