Closing The Hole For Backdoor gTLD's

["John Berryhill, Ph.d., Esq." <john@xxxxxxxxxxxxxxxxx>]

Proposed Specification 13 does not effectively tie use of domain names 
in the TLD to the basis of the brand.  This allows the opportunity for 
an owner of a fortuitous arbitrary mark to effectively use the "Brand 
TLD" as a gTLD which routes around the conduct requirements imposed in 
gTLD's.
The requirements of Section 5, defining a .brand TLD as corresponding to 
a mark that is used for something other than domain services 
appropriately limit the "my TLD is my brand" type of trademark 
front-running attempted in the new TLD process.  Also, the requirement 
of actual use of the mark avoids some of the trademark gaming problems.  
A similar restriction is needed in relation to use of domain names in 
the TLD, not only by "licensees", but by licensees for purposes 
consistent with the basis of the brand.
For example, a trademark owner may legitimately own rights in the word 
"dog" as a brand of shoe, since the word "dog" is not generic or 
descriptive to shoes.  However, such a .dog Brand TLD should not then be 
used by the brand owner to issue licenses having the appearance of 
trademark licenses, but which are used in fact to allow domain names in 
the .dog Brand TLD for purposes relating to pet supplies.
In other words, one might have a legitimate trade or service mark that 
is a dictionary word arbitrarily applied to goods/services for which the 
dictionary word is not itself descriptive.  But delegation of a TLD 
premised on such secondary meaning as a trademark should not be a 
backdoor through which the "Brand TLD" designation is used to route 
avoid the normal requirements of gTLD operators.
Imagine, for a known example, Apple Computer, which might legitimately 
use a .apple TLD as a Brand TLD, "licensing the mark" on terms allowing 
orchards or fruit merchants to register domain names in the .apple TLD, 
to the exclusion of other parties in fruit-related trade.   This is not 
to suggest that Apple Computer would do such a thing, but there are vast 
numbers of trade and service marks which, while having secondary meaning 
as arbitrarily applied to the branded goods and services, are otherwise 
dictionary words having a primary meaning.
This vulnerability of Proposed Specification 13 is hole can be addressed 
by requiring that domain names registered to the registry, affiliates 
and licensees be used for purposes relating to the basis on which the 
trade or service mark rights are premised, by adding an additional 
conjunctive requirement to section 5.1 along the lines of:
(iv) domain names in the TLD are required used for promotion, support, 
distribution, sales, or other services reasonably related to the goods 
and services for which the trade or service mark was issued.
or to put a finer point on it:

(iv) domain names in the TLD are required used for promotion, support, 
distribution, sales, or other services reasonably related to the goods 
or services for which the trade or service mark was issued, and not for 
purposes for which the trademark string otherwise has primary meaning as 
a generic indication of other goods or services.
One may safely assume that the drafters of Proposed Specification 13 do 
not anticipate gaming of this loophole it provides.  But in the general 
case, that is no reason to assume that all those seeking to qualify for 
"Brand TLD" status are well motivated.

--
John Berryhill, Ph.d. Esq.
204 East Chester Pike
First Floor, Suite 4
Ridley Park, PA 19078
+1.610.565.5601
+1.267.386.8115 fax
john@xxxxxxxxxxxxxxxxx