Brand owners win gTLD contract concessions


Brand owners win gTLD contract concessions

ICANN has approved a number of changes that will allow branded gTLD applicants to sign tailored registry contracts.

All generic-top-level domain registries must sign a contract with ICANN, but some brand owners asked for an agreement that contains special provisions for them.

The changes, approved at ICANN’s meeting in Singapore, include exempting .brand registries from ICANN’s code of conduct and from operating sunrise periods.

About a third of all gTLD applicants are .brands.

Known as specification 13, the proposal was pushed by the Brand Registry Group (BRG), a body made up of companies including Gucci, Microsoft and Yahoo.

The approved specification means .brands don’t have to sign ICANN’s code of conduct, which demands all accredited registrars are treated equally. They will also not have to open sunrise periods – a traditional rights protection mechanism in the gTLD world.

Specification 13 also hands concessions to brands if their registry agreement expires or is terminated. It says that in “most cases” brands could object to ICANN re-delegating their gTLD during a two-year “cooling off” period.

Branded registries must conduct an annual self-audit and certify that their gTLD continues to qualify as a .brand, however.

To qualify as a .brand, the name must be a registered trademark and not a generic word. And only the registry, its affiliates or trademark licensees can register second-level domains within the .brand gTLD.

The decision was welcomed by one company that works with .brands. Samantha Demetriou, vice president for consulting services at FairWinds, but which is not a member of the BRG, said the specification will benefit .brands as well as consumers.

“In addressing some of brand owners’ collective concerns with the new gTLD registry agreement, specification 13 will allow .brand applicants to move through the contracting process and transition to delegation with greater speed and ease.

“Much work remains, however, to get .brands over the finish line: the timeline for new gTLD applicants remains tight, and a formal process for requesting the inclusion of specification 13 has not been announced,” she said.

The remaining BRG members are: Amazon; the BBC; BBVA;; Ferrero; Fox; HSBC; KPMG; Lego; PeopleBrowsr; Philips; Reckitt Benckiser; Richemont; SCA; Seiko Epson; Shell; Sky; and Virgin.

This article was first published on 28 March 2014 in World IP Review

ICANN, specification 13, .brands, brand registry group, gtlds

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