2015-08-11

How ICANN Lost Its IANA Trademarks and IANA dot ORG Domain Name

UPDATE: 22 Jan 2016IANA CWG Meeting #75 (21 January @ 16:00 UTC) - CWG on Stewardship Transition: "3. IANA IPR [intellectual property -- IANA trademarks, IANA.org domains] "Discussed in December as well as previous meeting. Functional neutrality (owner must operate in such a way that control is not steered by one of the operational communities over the exclusion of others) deemed acceptable based on those discussions, not necessary to create a whole new entity, logical option is to use the IETF Trust provided no substantial issues emerge in the future. Confirm that there are no objections to this approach. No objections received so the CWG-Stewardship will proceed on this basis. Discuss how the different operational communities can collaborate on the implementation of this solution. Utilize the group that has been operating to co-ordinate on this topic consisting of representatives of the different operational communities, plus Greg [Shatan] and Chairs of CWG-Stewardship. Objective is to flesh out the principle and example terms under which the different communities would have their relationships with the IETF Trust in relation to IANA IPR. Group has agreed to make all of its future email conversations public. Notes of previous meetings have been circulated. Target is to reach agreement on high level principles in advance of submission of the ICG proposal to the NTIA." (emphasis added) 

Questions: Will IETF or IETF Trust, or subsidiary, eventually run IANA, and assess each TLD an annual fee plus transactional fee per change to the Root Zone file? If yes, then ccTLDs do not need ICANN, and if all gTLDs are required to become ccTLDs, ICANN could be abolished. Global TLD issues could then be dealt with by treaty as provided in "Article 18.28: Domain Names" in the TPP drafted by the US government + 11 other nations. Isn't that what China also wants? See this and this.
--[end of 22 Jan 2016 update]-- 
"From an ICG perspective, the “requirement” that the numbers community set out (see para 2083 of the transition proposal) is that the IANA IPR be held by an entity that is not the IANA numbering services operator. The designation of exactly who that entity will be is not a requirement and is not currently specified in the proposal. The proposal does note that the numbers community suggested the IETF Trust and in response to an ICG inquiry the protocol parameters community indicated that it had no objection to the IETF Trust serving as the repository for the trademarks and domain name associated with the provision of the IANA services (see para 34-35)." - ICG Co-Chair Alissa Cooper
"It is consistent with our proposal if the criteria is described so that an entity holding the IPR on the IANA trademark and iana.org domain is not the IANA Function Operator for the IANA Numbering Services. It is not a requirement to specify a particular entity holding the IANA trademark and iana.org domain. The IETF Trust is identified as an acceptable option and we note that the IETF Trust has expressed that it is possible for them to be its holder if so desired." - CRISP (Numbers) 20 Aug 2015
UPDATE August 20, 2015: After receiving clarifications from the ICG and CRISP (see above), CWG-Stewardship (Names) at its meeting today noted:
· ICANN Board issued a statement on Saturday 15 August (see August 15th UPDATE below).
· ICG Chairs and CRISP Chairs have responded positively on the mailing list and clarified questions/issues where needed.
· Agreement on a neutral/independent trust and the communities can focus on requirements for this trust during implementation.
· Olivier Crepin Leblond clarified that the At-Large Working Group on IANA Transition is in agreement with the concept of the independent trust (although they would have preferred that ICANN continue to hold these marks).
· Greg Shatan (IPC President) agrees with proposed position
· Next step: communicate this position to the ICG through the Public Comment and to the other communities involved.
· Martin Boyle noted that the IFO will need to have operational control of the IANA.ORG and associated domain names. This is a requirement that needs to be clarified in the agreement.
Action: CWG-Stewardship Chairs to draft position for submission to ICG and relevant communities.

UPDATE: As announced by ICANN on August 15, 2015:

ICANN Statement Regarding IANA Intellectual Property Rights (IPR): "ICANN supports the IANA Stewardship Transition Group (ICG) proposal and the underlying proposals from the Community Working Group (CWG), the Consolidated RIR IANA Stewardship Proposal (CRISP) team and the Planning for the IANA/NTIA Transition (IANAPLAN) working group.

The ICANN Board is focused on how to implement the Intellectual Property Rights (IPR) component of the proposal. The Board believes that for stability and pragmatic operational reasons, the IANA Functions Operator must have operational control over the IANA.ORG domain.

During the transition, ICANN is prepared to transfer full ownership of the IANA-related trademarks to a neutral third party mutually agreed among the operational communities with the understanding that ICANN, as the current IANA Functions Operator, will be granted license to those trademarks and ICANN will maintain operational control of the IANA.ORG domain for as long as ICANN remains the IANAFunctions Operator.

If the transfer during the transition affects the timeline, we advise delay until after the transition. In that event ICANN is ready to hold the IPR as interim measure but commits to transfer it within 120 days after the neutral third party is identified by the operational communities.

We believe this is neutral and in the public interest. We look forward to hearing from anyone in the community." (emphasis added)


Domain Mondo graphic showing how the ICG IANA Transition Plan moves the IANA trademarks and domain name to the IETF Trust whiich would grant licenses for use by ICANN, PTI, IETF, RIRs et al.
Above is a Domain Mondo graphic showing how the ICG IANA Transition Plan moves the IANA trademarks and domain name (IPR) to the IETF Trust whiich would grant licenses for use by ICANN, PTI, IETF, RIRs et al.
For domain name registrants and trademark owners who have been subjected to ICANN's unfair, unpredictable UDRP processes, this may come as a bit of "poetic justice"--ICANN will lose ownership of its intellectual property (IPR) in the form of the IANA trademarks and domain name (iana.org), under the IANA Stewardship Transition Plan (pdf) published by the ICG (IANA Stewardship Transition Coordination Group) and now open for comment.

As shown in the Domain Mondo produced graphic above, pursuant to the ICG PLAN, ICANN will continue to be the IFO (IANA functions operator) for the Numbers (NRO, RIRs) and Protocols (IETF) communities. The Names (ccTLDs and gTLDs) community's IFO will be an ICANN affiliate (a new California non-profit corporation) called PTI, or Post-Transition IANA, which will perform the Names-related IANA functions. Under the Numbers proposal, subsequently incorporated into the final integrated plan published by the ICG, the IETF Trust will become the repository of the IANA trademarks and domain name:

Excerpt from page 15 of the IANA Transition Plan published by the ICG, July, 2015
Above: Excerpt from page 15 of the IANA Transition Plan published by the ICG, July, 2015
Some members of the dysfunctional CWG-Stewardship (Names) would have preferred a different result than above, but as explained by Domain Mondo in a June 20th post, the CWG-Stewardship and/or its Co-Chairs, apparently chose not to consider an alternative disposition of the IANA marks and domain name other than remaining "silent" as noted by the ICG in the IANA Transition Plan (excerpt above): "In effect, the names proposal does not make a specific proposal with regard to the IANA trademarks (and is completely silent as regards the domain name)." (emphasis added)

This was also reiterated by Alan Greenberg, ALAC Chair, and a member of the CWG-Stewardship, in a posting on the CWG's public mail list on August 10, 2015 (emphasis added):
"I have a strong preference that the TM [trademarks] and domain name remain with ICANN. The CWG chose not to delve further in this matter prior to issuing its final proposal. Regardless of why that happened, that is a fact. When the report was issued and the issue was raised as to the meaning of the "placeholder" words in Annex S, the reply included the words "Therefore it is our firm view that it is specifically not in conflict with either of the CRISP & IANAPLAN proposals on this subject. To reaffirm this, and to discuss a potential consolidated position, we have extended an offer to the leadership of the other two operational communities for a call on Tuesday, 7 July." (Message from Jonathan Robinson, 02 July 2015). That, I presume, was the basis for the ICG issuing its consolidated proposal. I do not recall what was reported out of that meeting, if indeed it happened. Based on all of that, I still PREFER an option where ICANN holds the assets. However, I can live with them being transferred to the IETF Trust with appropriate contractual language to give the names community security that the assets will be available for them regardless of the paths taken to provide IANA service for the Numbers and Protocol communities. Establishing an understanding with the IETF Trust so that the details can be completed as part of the implementation schedule is, in my mind, the number one priority." Alan [Greenberg]
As has been noted on the CWG public mail list by Greg Shatan, trademark attorney, IPC President, and member of the CWG-Stewardship, the IETF Trust will, as licensor, have a duty to exercise "quality control" over use of the IANA trademarks by licensees (ICANN et al):

"..."Trademark Usage" refers to the display of the trademark itself (size,colors, placement, accurate reproduction, etc.) "Quality Control" refers to the quality of the goods and services themselves. Control of Trademark Usage is typically achieved by establishing "Trademark Usage Guidelines" which are distributed to licensees and may be periodically updated. Licensees are typically contractually obligated to follow such Guidelines and to seek prior approval for any substantial deviations from those Guidelines. Some licensors may obligate licensees to seek approvals for all new uses of the trademarks, to confirm that the usage meets the guidelines, but this is not legally required. Quality Control of the licensee's goods and services is far more important. Quality Control is typically achieved by setting out written standards that the goods and services must meet (which may vary from fairly high-level statements to very detailed quality control levels, specifying the way in which the licensee must provide the service and benchmarks that need to be met by licensee), coupled with some sort of active quality control exercised by the licensor on a regular basis (e.g., prior approvals by licensor of any new goods/services proposed to be offered by licensee, inspections of samples, factory/site visits). Active and ongoing quality control is critical; merely setting up quality control standards is insufficient. A licensor's failure to exercise adequate quality control can result in a finding of abandonment of the mark and loss of trademark rights ..." source: Greg Shatan, 6 Aug 2015 (emphasis added)

Which leads to Domain Mondo's Questions:
1. What Quality Control "standards" and "benchmarks" will the IETF Trust require ICANN, and its affiliate PTI, to meet and maintain, on an "ongoing basis," in order to continue using the IANA trademarks as licensees?
2. If ICANN, or its affiliate, PTI, fails to meet and maintain, on an "ongoing basis," those Quality Control "standards" and "benchmarks" established by the IETF Trust, will that "failure" trigger termination of ICANN as IFO for Numbers and Protocols, and as Steward of the IANA for Names, and in the case of PTI, trigger its termination as IFO for Names, OR (perhaps more likely) just terminate ICANN/PTI's rights to use the IANA trademarks and domain name? If it is the latter, what effect, if any, will that have on ICANN and PTI--do either ICANN or PTI even need rights to use the IANA trademarks and domain name?
Previous Domain Mondo posts on this issue:
For background on the history of the IANA trademarks and domain name read this posting to the CWG-Stewardship public mail list by John Poole, Editor of Domain Mondo, which details how the IANA marks and domain name were transferred from the original owner/registrant, the University of Southern California (where Jon Postel worked until his death in 1998), to ICANN (effective February 9, 2000).

Under current ICANN management and leadership, the IANA department has been somewhat neglected--e.g., see the most current ICANN organizational chart (pdf)--the IANA (Elise Gerich) does not report directly to the ICANN CEO Fadi Chehade (p.2), but instead, is buried within or under the Global Domains Division (Akram Atallah) (p. 5). As noted above, and in the IANA Transition Plan, this will change after the Transition is completed.


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