Brands ask ICANN to tailor gTLD contracts


Applicants for .brand generic top-level domains (gTLDs) have urged ICANN to adopt special provisions for them in its registry agreement.

The Brand Registry Group (BRG), which includes Gucci, Microsoft and Yahoo, has provided several requirements for meeting the “.brand” definition, including having a trademark registered in the Trademark Clearinghouse.

Called specification 13, the proposal would allow .brand registries to work with only “trusted” registrars and to be exempt from ICANN’s code of conduct, which demands all accredited registrars are treated equally.

Additionally, after their registry agreement expires or is terminated, brands could object to ICANN re-delegating their gTLD during a two-year “cooling off” period. This would prevent any risk of consumer confusion, the BRG said, but the period would not prevent a third party from applying to run the gTLD in the interim.

Specification 13 is now open for public comment until January 9, 2014.

The proposal marks a “significant” change in direction for ICANN on two counts, said Stéphane van Gelder, chairman of Stéphane van Gelder Consulting and former council chair of ICANN’s decision making body for gTLDs, the generic names supporting organization (GNSO).

“The GNSO was very firm in its request for equal access to all registrars – and specification 13 would allow .brands to select preferred registrars. That is a major first in anything to do with the new gTLDs; it was sacrosanct before,” he said.

Brands make up about a third of the applicants for gTLDs, and the BRG is trying to become an official constituent group within ICANN, meaning it would have voting powers within the organisation.

“Second”, van Gelder explained, “brands are trying to set up as a separate category. Despite multiple requests by a number of people, from all walks of the new gTLD sphere, ICANN has never wanted to go down that road and recognise different types of applicants.”

Despite this departure from the norm, the rules are sensible, added van Gelder, particularly for allowing .brand registries to choose which registrars to work with.

“It makes sense because brands don’t want to risk competitors setting up a registrar to register names in their (brand’s) TLD. That they (competitor) might do may not hurt the brand at all, but it’s just a question of control.”

He added: “To me the proposal makes perfect sense: it’s taking stock of the reality of the brand applicants.”

If accepted, specification 13 would require .brands to conduct internal reviews (at least annually) and to inform ICANN if they can no longer meet the .brand definition.

Should ICANN decide that a registry no longer qualifies as a .brand gTLD, the registry would have 30 calendar days to either meet the definition or comply with the standard registry agreement.

Other requirements in the .brand definition are that a trademark is owned by the registry operator and that the name does not begin with a “dot”. Registries must also provide ICANN with a copy of the registration.

The definition “is pretty spot on”, claimed van Gelder, who added: “I can’t think of any brands that would be left out, and it’s also a clear attempt to avoid any type of gaming of generic terms.”

ICANN staff will collate any comments that come in, before deciding whether to accept the BRG’s proposal early next year. While this process is always a “bit uncertain”, said van Gelder, it is likely that ICANN will accept the proposal.

The remaining members of the BRG 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 10 December 2013 in World IP Review

brand registry group, specification 13, microsoft, yahoo, icann, gtlds

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