Dear Marc,
As you and the WG requested, I put the issue of removing the requirement
of being a trademark licensee/registrant being a business as a
requirement for a .Brand gTLD out to IP Professors and senior attorneys
I work with and /*there is *//*strong disagreement about the change. */
/**/
Please remember that .BRAND gTLDs are created under special rules – and
exempted from many rules and requirements due to diligent advocacy by
you, Jeff and others – but there are still some rules by which .BRAND
gTLD must operate and business affiliation + contractual obligations for
the .Brand registry and registrants are key.
You asked and I did the research: In Specification 13 of the Registry
Agreement, for a .BRAND gTLD (like .SONY):
*
registration of domain names is limited: "only Registry Operator,
its Affiliates or Trademark Licensees are registrants of domain
names in the TLD and control the DNS records associated with domain
names at any level in the TLD;"
The current definition of trademark licensee does not include individuals:
*
"'Trademark Licensee' means any corporation, partnership, limited
liability company or similar legal entity (and not a person) that
has a written trademark license agreement with Registry Operator or
its Affiliate, for use of the registered trademark owned by Registry
Operator or its Affiliate, the textual elements of which correspond
exactly to the .Brand TLD string operated by Registry Operator, where:
1.
such license is valid under applicable law;
2.
such license is for the use of such trademark in the regular course
of that entity’s businessoutside of the provision of Registry
Services, and is not primarily for the purpose of enabling
registration or use of domain names in the TLD
3.
such trademark is used continuously in that entity’s business
throughout the Term; and
4.
the domain names in the TLD registered to the Trademark Licensee are
required to be used for the promotion, support, distribution, sales
or other services reasonably related to any of the goods and/or
services identified in the trademark registration." emphasis added.
According to the IP professionals and professors I contacted (very
familiar with ICANN processes), to add “individuals” will blur the line
of what a .BRAND is and is not, and bring .BRANDs into the world of
regular registries. Such a change would allow a .Brand to register
domain names to potentially millions of individuals – not to clear,
known, and contractual business partners - and that is not the
narrowly-tailored purpose of a .BRAND.
As one IP professor noted: “I have a license to use Microsoft, but I can
never present myself as affiliated with Microsoft as an individual. This
is not a license to ‘merely allow people to express affiliation with,
support of, or fandom for the TM owner.’”
Idea: To capture the narrow case you are looking to protect, e.g., the
individual realtors you mentioned who operate under .REALTOR (which we
now know is a trademark, although no one thinks so), they suggest that
you may want to recommend adding “sole proprietorships” to “corporation,
partnership, limited liability company, or similar legal entity (and not
a person)…” in the definition of trademark licensee.(*Sole
Proprietorship definition below)
----------------
Overall, the essence of the .BRAND and the Spec 13 requirements and
exemptions always came with _very clear limitation on domain name
registration_ -- _only those with a binding business relationship to the
Brand_. We cannot expand that limitation to individuals without a full
PDP – for that would be creating new policy.
And we do not create new policy in an IRT, as you would be the first to
agree.
Best, Kathy
* Sole proprietorship is a business structurewhere one individual owns
and operates the business, with no legal distinction between the owner
and the business. This means the owner is personally liable for all
business debts and receives all profits. It's often the simplest and
most common form of business ownership.
