[CWG-Stewardship] ICG request concerning IANA trademark and iana.org domain name

Greg Shatan gregshatanipc at gmail.com
Sat Jun 20 14:59:44 UTC 2015


I am happy to participate in whatever process we decide to follow to deal
with this perceived incompatibility.

In the first instance, I would want to clarify to the ICG that the iana.org
domain name is part of this proposal.  We may want to clarify that
immediately so there is no ambiguity.

Second, I would point out that not every use of a trademark is a "trademark
use," requiring a license and/or ownership of the mark.  A fact-specific
analysis of the use of the term "IANA" by the IETF and RIRs, and the
services each provides, is required to determine what rights are needed to
continue that use.  That said, changing the "exclusive" license to a
"non-exclusive" license would not be significant in this situation.  The
significant issue is what rights need to be granted to each of the 3 groups
and what documentation could be required to do so.

I think we need a quick but full fact-finding exercise, and not one where
selected facts are revealed as a method of advocacy, but one where all the
facts are put on the table for mutual consumption.

In addition to sharing a common set of facts to guide our analysis, we also
need to share a common understanding of what a trademark is, what it
signifies, what ownership means, and what ownership entails.

I also think we as a community need to decide what our *desired* outcome
would be (whatever the facts are, and whatever the law may be (as long we
recognize that a trademark identifies where the goods and services come
from)).  There may be enough latitude to accomplish our objectives,
whatever they may be.

Finally, I note the tight timeframe requested by the ICG.  July 2 is only
the fourth business day after ICANN ends, and it's typically a "getaway
day" in the USA, since it's beginning the biggest 3-day weekend of the
year. Clearly, we are going to need to use some of our copious free time
during this ICANN meeting to move forward on this issue.

I suggest we put together an ad hoc team to deal with this.  We need to do
this quickly.  I also suggest that we (presumably the ad hoc team, and
probably with the chairs) try to meet with relevant folks from the IETF and
the RIRs while we are here, for two reasons: (1) to develop the facts, and
(2) to work toward a common and compatible solution.  Finally, we need to
consider our need for outside counsel with the right skillset to deal with
these issues, provide guidance on the law, and provide thoughtful
creativity on potential outcomes.


On Fri, Jun 19, 2015 at 12:38 PM, Alissa Cooper (alcoop) <alcoop at cisco.com>

> Dear CWG,
> The CWG transition proposal suggests that "ICANN will grants [sic] PTI an
> exclusive, royalty-free, fully-paid, worldwide license to use the IANA
> trademark and all related trademarks in connection with PTI's activities
> under the ICANN-PTI Contract." [1] Our understanding is that this text was
> not a product of full CWG deliberation and consensus and is flagged as
> subject to further negotiations.
> During the ICG face-to-face meeting #5 on June 18 this text was identified
> as causing an incompatibility between the three operational community
> proposals. Both the IETF and RIR communities have been using and continue
> to use the term "IANA." For instance, the term has been cited in 3,353 RFCs
> over several decades. The CWG’s proposal for ICANN to grant an exclusive
> license may not be compatible with all three communities making continued
> use of the term.
> Second, the RIR community has specified in its proposal that the IANA
> trademark and domain name [2] should be transferred to an entity
> independent of any IANA Numbering Services Operator. In February 2015, the
> ICG asked the RIR and IETF communities to report if their proposals can be
> made compatible in this regard. After discussion these communities reported
> back that there was no fundamental discrepancy. [3, 4] The IETF Trust also
> indicated its willingness to hold intellectual property rights relating to
> the IANA functions and the IETF community expressed its willingness to
> support such a decision. [3]
> Finally, the current text discusses only the trademarks and not the
> iana.org domain name. Thus it is unclear whether the CWG proposal text is
> meant to extend to the domain name as well.
> The ICG has identified this topic as something that requires coordination
> between the communities. The ICG would like to request that in completing
> its proposal the CWG review the proposals from the protocol parameters and
> numbers communities, determine if it can adopt an approach taken by those
> communities, and if not, work together with the protocol parameters and
> numbers communities to reconcile the incompatibilities that have been
> identified. The ICG requests that the CWG communicate back to us a proposed
> resolution to this issue by July 2 at 23:59 UTC.
> Thank you,
> Alissa, Patrik and Mohamed on behalf of the ICG
> [1] CWG Stewardship proposal, Annex S, page 132
> [2] Numbers community proposal, page 10: "With regards to the IANA
> trademark and the IANA.ORG domain, it is the expectation of the Internet
> Number Community that both are associated with the IANA Numbering Services
> and not with a particular IANA Numbering Services Operator. Identifying an
> organization that is not the IANA Numbering Services Operator and which
> will permanently hold these assets will facilitate a smooth transition
> should another operator (or operators) be selected in the future. It is the
> preference of the Internet Number Community that the IANA trademark and the
> IANA.ORG domain name be transferred to an entity independent of the IANA
> Numbering Services Operator, in order to ensure that these assets are used
> in a non-discriminatory manner for the benefit of the entire community.
> From the Internet Number Community's perspective, the IETF Trust would be
> an acceptable candidate for this role.
> The transfer of the IANA trademark and IANA.ORG domain to the IETF Trust
> will require additional coordination with the other affected communities of
> the IANA Services, namely, protocol parameters and names. It is the
> preference of the Internet Number Community that all relevant parties agree
> to these expectations as part of the transition."
> [3] http://mm.icann.org/pipermail/internal-cg/2015-February/003103.html
> [4] http://mm.icann.org/pipermail/internal-cg/2015-February/003105.html
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