ICANN | General Counsel's Analysis of RegistryPro's Request for Amendment to .pro Registry Agreement | 30 November 2002
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General Counsel's Analysis of RegistryPro's Request for Amendment to .pro Registry Agreement
30 November 2002

General Counsel's Analysis of RegistryPro's Request for Amendment to .pro Registry Agreement

To the Board:

On 15 November 2002, I received the attached request from RegistryPro, Inc., which plans in the first quarter of 2003 to launch the registry for the .pro top-level domain under a registry agreement it entered with ICANN on 3 May 2002. The request seeks the revision of the appendices to the .pro Registry Agreement to provide for it to offer three types of defensive registrations within the .pro top-level domain (TLD). This memorandum summarizes my analysis of RegistryPro's request and recommends its approval.

The RegistryPro Defensive-Registration Proposal

RegistryPro proposes to offer Defensive Registrations according to procedures that would be similar to those used by Global Name Registry in the .name top-level domain.

The proposed Defensive Registrations would be offered only through ICANN-accredited registrars. In summary, the Defensive Registration offering proposed by RegistryPro would operate as follows:

1. Acting on behalf of customers, accredited registrars would accept requests for Defensive Registration in the .pro top-level domain. Each Defensive Registration would be for a four-year period. Defensive Registration requests would be accepted through registrars on a first-come/first-served basis, with the opportunity for renewal.

2. Three types of Defensive Registrations would be offered:

a. Premium Intellectual Property Defensive Registrations would be available to owners of registered trademarks seeking to block a particular string across all profession-specific sub-level domains (PS-SLDs) in .pro. (The initial PS-SLDs in .pro are for the accountancy, legal, and medical professions.) Only strings that are identical to the textual or word elements, using ASCII characters only, of a trademark owner's trademark or service mark registration having national effect and having issued prior to 30 September 2002 would be blocked. Trademark or service mark registrations from the supplemental or equivalent registry of any country, or from individual states or provinces of a nation, would not be accepted. RegistryPro proposes to charge registrars a fee of up to US$1500 for each four-year Premium Intellectual Property Defensive Registration.

b. Basic Intellectual Property Defensive Registrations would be available to owners of registered trademarks (with the same qualifications as for Premium Intellectual Property Defensive Registrations) seeking to block a particular string in one specific PS-SLD in .pro (e.g., .med.pro, or .law.pro). RegistryPro proposes to charge registrars a fee of up to US$1000 for each four-year Basic Intellectual Property Defensive Registration.

c. Standard Defensive Registrations would be available to professionals having the credentials required to qualify for domain-name registrations in an established PS-SLD, even though they are credentialed in a jurisdiction for which a method for verification of professional credentials has not yet been established by RegistryPro.1 Registrants would be required to provide information that establishes that they are qualified to register for a .pro name (e.g., the person or entity is appropriately licensed or accredited in a profession that is served by one of the .pro PS-SLDs). For example, a credentialed Japanese lawyer could register a .law.pro domain name defensively through the Standard Defensive Registration service even in the event that a verification method has not yet been established for legal professionals in Japan. The registrant would provide information relevant to his or her identity and profession (e.g., including licensing information) in the event there is a challenge to the individual's right to register defensively. RegistryPro proposes to charge registrars a fee of up to US$1000 for each four-year Standard Defensive Registration.

3. The registrar's fee to its customer would be established by the registrar according to market conditions.

4. Defensive Registrations would not resolve in the DNS.

5. Defensive Registrations would have the effect of blocking conflicting domain-name registrations and other Defensive Registrations. Defensive Registrations could not be registered where conflicting domain-name registrations had already been made.

6. RegistryPro proposes to offer the two types of Intellectual Property Defensive Registrations concurrently with its sunrise registration period, and the Standard Defensive Registration concurrently with live registration.

7. The qualifications of all defensive registrants (i.e. the holding of appropriate professional qualifications or a registered trademark) will be subject to challenge under the .pro Qualification Challenge Policy.

To implement the proposal contractually, amendments to several appendices will be required. The most significant amendments required are to Appendices L and G; satisfactory versions of these have already been prepared. Supporting changes will also be required to at least Appendices C, F, M, and O.

RegistryPro has consulted with its Advisory Board, which as contemplated by the .pro Registry Agreement is composed of representatives of professional associations that are representative of the legal, medical, and accountancy professions (the subjects of the First-Phase PS-SLDs to be offered by RegistryPro). The Advisory Board has provided a statement of support for the RegistryPro proposal:

[T]he primary purpose of the Defensive Registration Proposal is to provide trademark registration holders the ability to ensure that strings that are identical to the word portions of their trademark registrations are not available for registration within the .pro top-level domain.

The Defensive Registration Proposal is also intended to provide potentially qualified registrants (in countries other than those for which a local verification toolkit will be available at launch) with the ability to reserve (but not activate) registrations. In this latter situation, we understand that no Defensive Name Registration will become a live registration unless and until local verification standards (about which we will provide advice) are in place and are satisfied by the applicant.

We have reviewed the Defensive Registration Proposal and believe that it will be helpful in avoiding unnecessary trademark-related and other conflicts as the .pro top-level domain begins operation.

We support RegistryPro's proposal.

As noted above, the intellectual property parts RegistryPro's proposed Defensive Registration offering is similar to that provided in the .name top-level domain. (A similar offering also was offered in .coop, under the authority delegated to the sponsor of that TLD.) That offering has presented relatively few controversies.

Considerations in Evaluating Proposed Amendments

Determining the appropriate process to follow when a registry operator seeks an amendment to its registry agreement presents countervailing considerations. These were discussed in my 17 April 2002 analysis of VeriSign's request to modify the .com and .net registry agreements. In that case VeriSign proposed to offer a new service (the Wait-Listing Service) which would bear a fee and alter the rules by which names being deleted are allocated to new registrants. The underlying considerations in that case are instructive in evaluating RegistryPro's proposal to offer a defensive-registration service:

On one hand, the registry operator is in a sole-source position in providing registry services; this position carries with it the potential for various types of harm to the legitimate interests of others.

On the other hand, requiring a consensus-development process for every new registry service could stifle innovation. Registry operators should be encouraged to introduce new services to the marketplace where no legitimate interests of others are being materially harmed.

To accommodate these countervailing considerations, in considering requests to amend a registry agreement to authorize charging for additional registry services, my judgment is that a preliminary "quick-look" evaluation should be made to determine whether it is plausible that the legitimate interests of others could be harmed by the proposed amendment. If no legitimate interest appears in danger of being harmed, then a streamlined procedure for approval should be followed. If, however, there are specific reasons to conclude that the legitimate interests of others are likely to be harmed, then ICANN's existing obligation to seek consensus whenever possible before acting suggests that it should invoke the formal consensus development mechanisms that currently exist prior to any decision by the ICANN Board.

RegistryPro's proposal to offer defensive registrations does not appear likely to harm anyone's legitimate interests. The purchase of defensive registrations is optional to the defensive registrants and will be accomplished only through registrars, thereby promoting registrar-level competition. Because third-party registrations in .pro have not yet commenced, there are no existing registrants with legitimate interests that might be put in jeopardy. Even after registration commences, defensive registrations will not be permitted that conflict with an existing registration.

In fact, the offering of defensive registrations appears likely to minimize some of the start-up issues that can arise in a TLD's introduction. Giving those with registered trademark rights a simple vehicle to block conflicting registrations should minimize the potential for one type of lawsuit that can complicate a TLD's introduction. In addition, the proposed offering of Standard Defensive Regostrations assures fairness to professionals in jurisdictions not included in .pro's initial launch by allowing them to reserve appropriate names until means of verifying professional credentials become available for their jurisdictions.

The conclusion that the amendment is appropriate and unlikely to harm legitimate interests of third parties, is reinforced by the supporting statement of the .pro Advisory Board, which was specifically intended to provide advice from the perspective of credentialed professionals.

Because the Defensive Registration offering is similar in kind to offerings already in place in other TLDs, and because the offering is unlikely to harm legitimate interests of third parties, streamlined approval of the amendment, without resort to the formal consensus-development process, is appropriate.

Supporting Documentation


In view of the above analysis, I recommend that the Board approve the amendment to the Registry Agreement as requested by RegistryPro.

Respectfully submitted,

Louis Touton
General Counsel


1. Credentialed processionals in jurisdictions for which verification methods have been established would also qualify for Standard Defensive Registrations.

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