Kathy,

I would love to know what professors and experts you consulted and whether they have expertise in domain names and/or IP.  The concern expressed by your professors and experts is explicitly addressed in the definition (i.e. requirements) of “Trademark Licensee”.  These are that

• such license is for the use of such trademark in the regular course of that entity’s business outside of the provision of Registry Services, and is not primarily for the purpose of enabling registration or use of domain names in the TLD
• such trademark is used continuously in that entity’s business throughout the Term; and
• 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."

Using the one professor’s example perfectly illustrates this.  The example is:

“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.’”

This person would clearly not qualify as a Trademark Licensee because:

1. The license from Microsoft is to use its product, NOT to use the MICROSOFT trademark in ANY way including in the regular course of the person’s business
2. The user of the Microsoft product is not using the MICROSOFT trademark continuously in the person’s business; and
3. The domain name registered would not to be used for the promotion, support, distribution, sales or other services reasonably related to the software services identified in the trademark registration for MICROSOFT relied upon by Microsoft for the .BRAND

Similarly, no other individual user of a brand’s products or services would qualify based on the guardrails built into the Trademark Licensee definition. 

Contrast that with an individual that is part of NAR and has a trademark license to identify him or herself as a REALTOR® or an individual who is a FIDELITY® Financial Representative.  These people meet the requirement of Trademark Licensee in the same way that any legal entity could:

1. They use the REALTOR® trademark in the regular course of their business every day by identifying themselves as a REALTOR and not primarily for the purpose of enabling registration of domain names in the TLD;
2. They use the REALTOR® trademark every day as part of their business; and
3. They would use the .realtor domain name for the promotion, support, distribution, sales of real estate services

This is a very narrow scope of individuals.  They have a binding business relationship with the trademark owner  and if they don’t meet all of these criteria then they don’t meet the definition of Trademark Licensee and cannot register or control domain names in the .BRAND TLD

There is simply no real risk of blurring the lines of .brand use vs generic use that would arise from individuals who meet the requirements of a Trademark Licensee registering a domain name in the . BRAND based on the very tight and narrow restrictions that already exist in that definition.

Best regards,

Marc H. Trachtenberg
Shareholder

Chair, Internet, Domain Name, e-Commerce and Social Media Practice
Greenberg Traurig, LLP
77 West Wacker Drive | Suite 3100 | Chicago, IL 60601
T +1 312.456.1020

M +1 773.677.3305
trac@gtlaw.com | www.gtlaw.com  |  View GT Biography

From: Kathy Kleiman <Kathy@KathyKleiman.com>
Sent: Wednesday, April 30, 2025 7:07 PM
To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com>; subpro-irt@icann.org
Subject: Changing the definition of trademark licensee in Spec 13

*EXTERNAL TO GT*

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:

i. such license is valid under applicable law;

ii. such license is for the use of such trademark in the regular course of that entity’s business outside of the provision of Registry Services, and is not primarily for the purpose of enabling registration or use of domain names in the TLD

iii. such trademark is used continuously in that entity’s business throughout the Term; and

iv. 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 structure where 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.