Hi All,

The changes to Specification 13 contains an edit that was questioned, strongly contested, and I thought deleted in the last discussion of it.

[Alternative Section 9.3(i) text for String Change .BRAND TLDs:

(i)    the TLD string contains: (A) textual elements that are identical to the textual elements protectable under applicable law, of a registered trademark valid under applicable law, and (B) one or more words as listed in the goods and/or services identified, or its equivalent[K1] [K2] , in the trademark registration for such registered trademark, which registered trademark:]


It’s not what the SubPro recommended and its not what we agreed. “Equivalent” is in the eyes of the beholder and means anything anyone wants its it to mean.  

Jeff, I understand what you want,but this language is not acceptable as it allows a brand owner to change their .BRAND string change to something that is not even in the trademark registration. For example, if I am cell phone company and now its cooler to call myself a mobile or wireless company, then I will want to add mobile or wireless to my .BRAND String Change - but that's not what the trademark says, and that is dramatically expanding the scope of my goods and services far beyond anything in my trademark application. For tech companies in particular (and how is not these days), there will be a desire to keep updating and changing with the times and not with the trademark.  That's not what we agreed to in SubPro.

Because this is a hill I will die on, let me propose a compromise:  (B) one or more words as listed in the goods and/or services identified, or an equivalent substring from the trademark registration for such registered trademark

Thus, if to Jeff's concern, "automobile" is too long or old-fashioned, "auto" would be fair and fine.  But allowing GM to broadly propose any other type of gTLD addition, with no guidelines other than "equivalence" opens floodgates and is a far cry from the narrowly-tailored language we adopted in SubPro for goods and service actually identified in the trademark registration.

Best, Kathy

On 4/17/2025 9:27 AM, Elisa Busetto via SubPro-IRT wrote:

Dear IRT members,

 

The redlines of Specification 7 and Specification 13 were posted to the wiki under “Topic 36 | Base Registry Agreement”: https://icann-community.atlassian.net/wiki/x/7wmwBg

 

Best regards,

Elisa 


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