ICANN | Letter from Cassidy Sehgal to Louis Touton Regarding Amendment to .pro Registry Agreement | 15 November 2002
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Letter from Cassidy Sehgal to Louis Touton Regarding Amendment to .pro Registry Agreement

(15 November 2002)

November 15, 2002

VIA EMAIL (touton@icann.org)

Mr. Louis Touton
General Counsel
Internet Corporation for Assigned Names and Numbers
4676 Admiralty Way, Suite 330
Marina del Rey, CA 90292-6601

RE: .pro DNR Proposal

Dear Louis,

As we have previously discussed, RegistryPro would like to offer defensive name registrations (DNR) for the .pro top-level domain (TLD) in addition to the sunrise and domain name registration services already provided for in our registry agreement with ICANN (the “Registry Agreement”). The DNR service we are proposing is based on the offering made available by the Global Name Registry for .name. Under the .pro DNR, owners of registered trademarks and service marks and professional registrants would be able to register a (non-resolving) .pro domain name defensively. In addition, professionals qualified to register names within established profession-specific second-level domains (PS-SLDs) would be able to register (non-resolving) .pro domain names defensively, even if domain-name registrations are not yet available for their jurisdiction because a verification method has not yet been established. I note that neither the .name nor .coop DNR programs have been the subject of controversy. To the contrary: these programs are designed to smooth the launch of new TLDs and uphold the security of the DNS by avoiding unnecessary disputes.

We would like to offer intellectual property DNR concurrently with the sunrise registration period, and the standard DNR service concurrently with live registration. Both varieties of DNR will be offered at a price high enough to discourage frivolous DNRs, but low enough to not be cost-prohibitive for legitimate applicants. Indeed, the pricing structure proposed is significantly less than the proposed maximum pricing approved by ICANN for .name. I describe both services below.


The .pro top-level domain (TLD) is a restricted domain, open to registrants meeting registration qualifications as specified in Appendix L of the Registry Agreement. As currently contemplated, RegistryPro will implement a registration period during which registered trademark owners may register their marks as domain names in order to allow them to protect their intellectual property (“Sunrise Period”). Registrants during the Sunrise Period will be required to provide qualifying trademark information (see Subsection 3.2.1 of Appendix J) as well as information necessary to verify that they meet the registration qualifications. Hence, the Sunrise Period is designed to protect the rights of intellectual property owners who qualify for .pro domain names.

RegistryPro would like to provide a DNR service to (i) trademark owners who do not meet the .pro sunrise qualifications because they do not qualify as eligible .pro registrants but would like to prevent confusion by protecting their trademarks and (ii) professional registrants who possess the qualifications to register within an established PS-SLD, but are not necessarily based in countries in which a verification mechanism has been established. In both cases, RegistryPro seeks to offer the DNR product to preserve the integrity of the .pro TLD and avoid unnecessary disputes. Of course, like the defensive name registrations offered under the .name and .coop TLDs, no DNR will resolve in the DNS.

1. Proposed DNR Service Offerings:

The proposed service would offer three types of DNRs depending upon the needs of the registrant.

(1) Premium Intellectual Property DNR. This product would be available for trademark owners looking to entirely block an exact trademark or service mark across all profession-specific PS-SLDs. For example, owners of distinctive marks may seek to protect their trademarks within all of <trademark>.law.pro, <trademark>.med.pro, <trademark>.cpa.pro, and the other established variants of these.

(2) Basic Intellectual Property DNR. This product is designed to block exact trademarks from an individual PS-SLD (e.g. .med.pro, .law.pro, .cpa.pro).

(3) Standard DNR. This product is designed to permit potential registrants, located in any jurisdiction (even if no verification mechanism (required for the issuance of a .pro name) has yet been established), to register a .pro name defensively. (As you know, the Registry will initially provide such verification services in a limited number of countries during the initial launch during the first quarter of 2003. Additionally, some local registrars are also in discussions with the Registry to establish local mechanisms.) For example, if a Japanese company would like to protect a domain name that it may seek to register for use when .pro domains become available in Japan, the company may seek a DNR in the interim. A DNR could therefore later be converted to a live name when the appropriate local verification mechanism is established by RegistryPro (in consultation with its Advisory Board) and the registrant provides all necessary information to satisfy that local verification regime (e.g. www.bengoshigroup.law.pro).

2. Effect of a DNR:

DNRs will not resolve within the DNS. The goal in offering the product is to permit IP owners or potentially-qualified registrants who are based outside of the initial launch to protect their marks or reserve an appropriate name and block others from using them. While a Premium Intellectual Property DNR would enable a mark owner to block an exact registration across all PS-SLDs, both the Basic Intellectual Property DNR and Standard DNRs will permit a Domain Name Registration that uses the same string or mark in a different PS-SLD.

Thus, for example, a Premium DNR for kodak.<any ps-sld>.pro will prevent a third party from registering kodak.med.pro or kodak.law.pro.

While a Basic Intellectual Property DNR or Standard DNR for kodak.law.pro will not prevent a third party from registering kodak.med.pro.

RegistryPro proposes providing a term of four (4) years for DNRs. DNRs will prevent only Domain Name Registrations that consist of the identical string at the corresponding level. Domain Name Registrations that only partially match a DNR will not be prevented.

3. DNRs Eligibility Requirements:

Premium Intellectual Property and Basic Intellectual Property DNRs (collectively “IP DNRs”) will only be permitted for strings that are identical to the textual or word elements, using ASCII characters only, of valid and enforceable trademark or service mark registrations having national effect and that issued prior to September 30, 2002. All IP DNRs will be subject to the same character and formatting restrictions that apply to all registrations in the Registry TLD. If a trademark or service mark registration incorporates design elements, only the ASCII character portion of that mark may qualify to be a DNR. Only the owner of such a trademark or service mark registration may register a DNR on that trademark or service mark. Trademark or service mark registrations from the supplemental or equivalent registry of any country, or from individual states or provinces of a nation, will not be accepted.

Where there is a space between the textual elements of a registered mark, the registrant (an "Intellectual Property Defensive Registrant") may elect at its discretion to replace the space with a hyphen or combine the elements together to form a continuous string. Where there are multiple spaces between three or more textual elements of a registered mark, the foregoing sentence applies to each such space.

Thus, for example, the registered mark "Sample Mark" could be registered as either or both of the following:

(1) samplemark.<ps-sld>.pro
(2) sample-mark.<ps-sld>.pro

Each such DNR would be subject to a separate DNR fee.

Thus, an Intellectual Property Defensive Registrant must provide: (1) the name, in ASCII characters, of the trademark or service mark being registered; (2) the date the registration issued; (3) the country of registration; and (4) the registration number or other comparable identifier used by the registration authority.

In the case of Standard DNRs, registrants will be required to provide the information that would be necessary to otherwise register for a .pro domain name. Thus, Standard Defensive Registrants will be required to provide information that establishes that he/she/it is qualified to register for a .pro (e.g., the individual is appropriately licensed or accredited in a profession that is served by one of the .pro PS-SLDs). For example, even if an authentication and verification method that meets the requirements of the .pro domain has not yet been established in Japan, a Japanese lawyer could register a .pro domain name defensively through the Standard DNR service. 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, but the information would not be verified at the time of registration. Standard DNRs would not resolve on the DNS unless and until the registrant has been verified to meet all relevant .pro eligibility requirements (set forth in Appendix L, as amended in accordance with the .pro Registry Agreement) and converts the DNR to a domain-name registration.

4. Other DNR Requirements:

Neither the Registry Operator nor the ICANN-Accredited Registrars will review the information provided by the Defensive Registrant prior to issuing a DNR. DNRs may not be transferred, except in connection with a transfer of the underlying trademark or service mark registration. However, a Basic Intellectual Property DNR or a Standard DNR may be converted later to a .pro domain name that resolves within the DNS by the registrant in the event that such registrant provides qualifying eligibility information to register a .pro domain name, pays a registration fee and is approved using either (1) an automated verification service that is compliant with all established registration policies or (2) a manual process that meets all of the Registry Agreement requirements to approve registrant eligibility.

Each Defensive Registrant will be required to provide contact information, including: name, e-mail address, postal address, and telephone number, for use in disputes relating to the DNR. This contact information will be provided as part of the Whois record for the DNR.

However, a DNR will not be granted if it (a) fails to meet the format requirements for domain names within .pro, (b) conflicts with a then-existing Domain Name Registration, or (c) conflicts with a then-existing DNR.

Thus, for example, if the domain name disney.law.pro has already been registered, then neither a Premium Intellectual Property DNR for “Disney” nor a Basic Intellectual Property DNR for Disney.law.pro may be registered. Alternatively, if a domain name has been registered in one PS-SLD, a Defensive Registrant may register Basic Intellectual Property DNRs to block registrations of the mark in other existing PS-SLDs. Thus, if ford.med.pro has been registered, a trademark owner may seek to register Basic Intellectual Property DNRs for ford.law.pro and ford.cpa.pro.

5. Agreement of Defensive Registrant:

All DNRs will be granted pursuant to an electronic or paper registration agreement with an ICANN-Accredited Registrar, in accordance with Appendix F, in which the Defensive Registrant will be required to agree with the following:

All DNRs will be subject to challenge pursuant to the Qualification Challenge Procedures set forth in Appendix M.
Any registrar that seeks on behalf of its customer to register a domain name registration that is the subject of a DNR will receive an electronic notice that the domain name is blocked by a DNR. This notice will also provide contact information for the Defensive Registrant(s). If the person or entity wishes to pursue the domain name registration despite the DNR, the person or entity will have the following options:

(1) seek consent directly from the Defensive Registrant, or

(2) challenge the DNR pursuant to the Qualification Challenge Procedures set forth in Appendix M of the Registry Agreement.

6. Voluntary Cancellation or Consent by a Defensive Registrant

A DNR may be cancelled by the Defensive Registrant through the sponsoring registrar at any time. The Registry Operator will not refund registration fees in the event of such a cancellation.

The Defensive Registrant may consent to the registration of a domain name that conflicts with such DNR, as follows:

(1) Upon receiving a request for consent from a person or entity seeking to register a domain name registration that is the subject of the DNR, the Defensive Registrant must grant or refuse such consent, in writing, within five (5) calendar days.

(2) If a Defensive Registrant fails to either grant or refuse consent as described in this Subsection within five (5) calendar days of receipt of the request, the Defensive Registrant shall be deemed to have denied consent to the domain name registration.

(3) Such consent must be transmitted to both the person or entity seeking the domain name registration and to the ICANN-Accredited Registrar that sponsors the DNR.

(4) The ICANN-Accredited Registrar shall notify Registry Operator of such consent within three (3) days of receipt, using the appropriate protocol as developed by Registry Operator.

(5) The Defensive Registrant may not accept any monetary or other remuneration for such consent.

(6) If a Defensive Registrant consents to a domain name registration when contacted, then (i) the person or entity seeking the domain name registration may register the requested domain name registration (after establishing that he/she/it meets the eligibility requirements for a .pro domain name), (ii) if a Premium Intellectual Property DNR is involved, it will continue in full force and effect, but otherwise the DNR will be cancelled without refund.

7. Pricing:

The proposed maximum fee to be charged by the Registry Operator for DNRs is as follows:

US $1,500 Per Premium DNR (four-year term)
US $1,000 Per Basic Intellectual Property DNR (four-year term)
US $1,000 Per Standard DNR (four-year term)


Thank you for your consideration of this proposal. I look forward to the Board's prompt consideration of this requested amendment so that RegistryPro will be able to offer the DNR at the time of our upcoming initial launch. Given our planned launch in early 2003, we hope that the ICANN board can appreciate that timing is of the essence with regard to gaining approval of this proposal to ensure that we are able to address technical issues, work with registrars and educate the user community.


Cassidy Sehgal
Director of Policy and Legal Affairs
RegistryPro, Inc.

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