In response to ICANN’s recent release of a proposed final draft of the New gTLD Registry Agreement (RA), FairWinds Partners submitted a public comment Monday arguing the agreement lacks adequate trademark protection for brand owners.

ICANN’s failure to recognize the unique needs of brand owners is puzzling. Companies with protected trademarks account for approximately one-third of the total number of gTLD applications and nearly half of all applications for unique strings.

“Given the broad participation of brand owners in the New gTLD Program, ICANN must recognize the unique needs of this expansive group of future gTLD Registry Operators,” FairWinds said in its comment. “The most constructive way for ICANN to do so is to adopt a second template draft of the New gTLD Registry Agreement off of which individual brand owners can negotiate their own future Agreements.”

FairWinds proposed 10 specific changes we believe must be incorporated into the RA to enhance trademark protection and preserve the rights of brand owners:

  1. A registry should not be transitioned upon termination of the Registry Agreement in cases where no domains have been sold, distributed or transferred to unaffiliated third parties, or where the gTLD corresponds to a trademark owned by the Registry Operator.
  2. The Emergency Back End Registry Operator should be required to maintain the registration restrictions established by the Registry Operator during a period of emergency transition.
  3. ICANN or third-party vendors involved in the operation of a gTLD should not seek or gain trademark or other intellectual property rights over the mark to which a gTLD refers.
  4. The maximum aggregate monetary liability of the Registry Operator should be equal to that of ICANN.
  5. ICANN should be required to indemnify the Registry Operator from all claims, damages, liabilities, costs, and expenses unless incurred due to willful omission or breach of the Registry Agreement.
  6. Confidentiality provisions should be expanded and should incorporate appropriate remedies in cases where breaches in confidentiality result in material harm to the Registry Operator.  
  7. A clear, streamlined process should be established for releasing reserved geographic names or two-character labels for use by the Registry Operator in conjunction with the promotion or operation of the registry.
  8. Technical and financial audits should be restricted to the relevant service provider(s) or the Registry Operator, respectively, and not extend to corporate parent companies. Registry operators should not be required to bear the cost of standard audits, even if registry functions have been outsourced.
  9. The Registry Agreement should establish a process to grant exemption to the Code of Conduct, provided that the Registry Operator does not sell, distribute or transfer control of second-level domains to unaffiliated third parties. 
  10. A Registry Operator should not be required to implement a Sunrise Period or Claims Service and pay associated fees in cases where registration restrictions prevent unaffiliated third parties from registering within the gTLD.

The concerns and suggestions voiced in this public comment by FairWinds are not FairWinds’ alone. Many brand owners share our stance and a number agreed to co-sign the comment as well, including:

Walmart Stores, Inc., Bank of America Corporation, Xerox Corporation, Chanel S.A., Pfizer, Inc., Intel Corporation, the Corporate Executive Board Company, Tiffany & Co., SAS Institute, Zippo Manufacturing Company, American Family Insurance Group, FLIR Systems, Inc., Bloomberg IP Holdings LLC, Boehringer Ingelheim, Rezolve Group, Inc., Tata Motors Limited

To see FairWinds’ public comment in its entirety, please click here.

Josh Bourne
FairWinds Submits Public Comment on Trademark Protection in Proposed Registry Agreement Draft

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