[bc-gnso] RE: FOR REVIEW: draft BC comment on GAC Advice on safeguards for new gTLDs

Thu May 23 20:59:18 UTC 2013

I would like the BC to do our best to reach a position. I will have to read the transcript for details. My own position is that where the BC, as the user constituency, can shed light it is our responsibility as part of the process at ICANN to strive to do so. 

Sometimes we can't. Let's try in this case. I will promise to read on flight back from Geneva IGF consultation, 
Sent via BlackBerry by AT&T

-----Original Message-----
From: Laura Covington <lhc at yahoo-inc.com>
Date: Thu, 23 May 2013 19:05:21 
To: <mike at rodenbaugh.com>; <svg at stephanevangelder.com>; <sarah.b.deutsch at verizon.com>
Cc: <Elisa.Cooper at markmonitor.com>; <sdelbianco at netchoice.org>; <bc-gnso at icann.org>
Subject: Re: [bc-gnso] RE: FOR REVIEW: draft BC comment on GAC Advice on
 safeguards for new gTLDs

Hey, Mike,  
I'm totally open to considering other definitions/terminology for "closed generics" if you have ideas to propose.   

As to the separate issue of responding to the GAC's advice, participants on the call the other day seemed interested in including - or at least considering - language on closed generics rather than being silent.  It seems clear - and understandable - what your point of view is.  Anybody else?  

Laura 

Laura Covington 
VP, Intellectual Property Policy 
Yahoo! Inc. 
lhc at yahoo-inc.com 
408.349.5187 

 From: "icann at rodenbaugh.com <mailto:icann at rodenbaugh.com> " <icann at rodenbaugh.com <mailto:icann at rodenbaugh.com> >
 Organization: Rodenbaugh Law
 Reply-To: "mike at rodenbaugh.com <mailto:mike at rodenbaugh.com> " <mike at rodenbaugh.com <mailto:mike at rodenbaugh.com> >
 Date: Thursday, May 23, 2013 11:13 AM
 To: "Yahoo! Inc." <lhc at yahoo-inc.com <mailto:lhc at yahoo-inc.com> >, "svg at stephanevangelder.com <mailto:svg at stephanevangelder.com> " <svg at stephanevangelder.com <mailto:svg at stephanevangelder.com> >, "'Deutsch, Sarah B'" <sarah.b.deutsch at verizon.com <mailto:sarah.b.deutsch at verizon.com> >
 Cc: 'Elisa Cooper' <Elisa.Cooper at markmonitor.com <mailto:Elisa.Cooper at markmonitor.com> >, 'Steve DelBianco' <sdelbianco at netchoice.org <mailto:sdelbianco at netchoice.org> >, "bc-gnso at icann.org <mailto:bc-gnso at icann.org> " <bc-gnso at icann.org <mailto:bc-gnso at icann.org> >
 Subject: RE: [bc-gnso] RE: FOR REVIEW: draft BC comment on GAC Advice on safeguards for new gTLDs

It seems that every dictionary word is a 'pre-existing trademark' at least insofar as it is registered as such somewhere (e.g. Benelux, in advance of the EU land rush).  My examples are all registered at the USPTO.  Any of those registrations could be purchased or even be previously registered by any so-called 'closed generic' TLD applicant. 

Why is it legitimate for Apple to operate .apple to the exclusion of everyone else in the world that may have a legitimate use for a .apple domain name?  (Maybe better examples are other new TLD applicants Abbott, Active, AFamilyCompany, Amazon, AmericanFamily.  and the list goes on past Apple..)  Yet it would not be legitimate for Weather.com to operate .weather that way? 

Mike Rodenbaugh 
RODENBAUGH LAW 
Tel/Fax: +1.415.738.8087 
http://rodenbaugh.com 

From: Laura Covington [mailto:lhc at yahoo-inc.com] 
 Sent: Thursday, May 23, 2013 10:54 AM
 To: Mike Rodenbaugh; svg at stephanevangelder.com <mailto:svg at stephanevangelder.com> ; Deutsch, Sarah B
 Cc: Elisa Cooper; Steve DelBianco; bc-gnso at icann.org <mailto:bc-gnso at icann.org> 
 Subject: Re: [bc-gnso] RE: FOR REVIEW: draft BC comment on GAC Advice on safeguards for new gTLDs 

Sticking with the definition piece first, doesn't second bullet cover your question?  Pre-existing trademark?  

Laura Covington 

VP, Intellectual Property Policy 

Yahoo! Inc. 

lhc at yahoo-inc.com <mailto:lhc at yahoo-inc.com> 

408.349.5187 

From: Mike Rodenbaugh <icann at rodenbaugh.com <mailto:icann at rodenbaugh.com> >
 Reply-To: Mike Rodenbaugh <icann at rodenbaugh.com <mailto:icann at rodenbaugh.com> >
 Date: Thursday, May 23, 2013 10:42 AM
 To: "Yahoo! Inc." <lhc at yahoo-inc.com <mailto:lhc at yahoo-inc.com> >, "svg at stephanevangelder.com <mailto:svg at stephanevangelder.com> " <svg at stephanevangelder.com <mailto:svg at stephanevangelder.com> >, "Deutsch, Sarah B" <sarah.b.deutsch at verizon.com <mailto:sarah.b.deutsch at verizon.com> >
 Cc: Elisa Cooper <Elisa.Cooper at markmonitor.com <mailto:Elisa.Cooper at markmonitor.com> >, Steve DelBianco <sdelbianco at netchoice.org <mailto:sdelbianco at netchoice.org> >, "bc-gnso at icann.org <mailto:bc-gnso at icann.org> " <bc-gnso at icann.org <mailto:bc-gnso at icann.org> >
 Subject: Re: [bc-gnso] RE: FOR REVIEW: draft BC comment on GAC Advice on safeguards for new gTLDs 

Hi Laura, 

Then what about all the trademarks that exist for 'generic words'.  Not just Apple, but also Sex, Drugs and even Rock 'n Roll (all registered at the USPTO)? 

Beyond that, what about the broader notion that closed generic business models are more in the public interest than open copycat business models?  The BC is on record with the position that restricted registries are preferred over open registries, because abuse and consumer harm are far less likely. 

Best, 

Mike 

----------------

From: Laura Covington <lhc at yahoo-inc.com <mailto:lhc at yahoo-inc.com> >
 To: "svg at stephanevangelder.com <mailto:svg at stephanevangelder.com> " <svg at stephanevangelder.com <mailto:svg at stephanevangelder.com> >; "Deutsch, Sarah B" <sarah.b.deutsch at verizon.com <mailto:sarah.b.deutsch at verizon.com> > 
 Cc: Elisa Cooper <Elisa.Cooper at markmonitor.com <mailto:Elisa.Cooper at markmonitor.com> >; Steve DelBianco <sdelbianco at netchoice.org <mailto:sdelbianco at netchoice.org> >; "bc-gnso at icann.org <mailto:bc-gnso at icann.org> " <bc-gnso at icann.org <mailto:bc-gnso at icann.org> > 
 Sent: Thursday, May 23, 2013 10:23 AM
 Subject: Re: [bc-gnso] RE: FOR REVIEW: draft BC comment on GAC Advice on safeguards for new gTLDs 

I don't know of any official definition of a closed generic TLD, but perhaps a starting place would be to say that it is a TLD that: 

* Consists of a generic term/phrase which 
* Is not intended to represent a pre-existing trademark, and
* The registry operator does not intend to sell/grant/give second level domains to the (general?) public 

Laura Covington 

VP, Intellectual Property Policy 

Yahoo! Inc. 

lhc at yahoo-inc.com <mailto:lhc at yahoo-inc.com> 

408.349.5187 

From: "svg at stephanevangelder.com <mailto:svg at stephanevangelder.com> " <svg at stephanevangelder.com <mailto:svg at stephanevangelder.com> >
 Date: Thursday, May 23, 2013 12:49 AM
 To: "Deutsch, Sarah B" <sarah.b.deutsch at verizon.com <mailto:sarah.b.deutsch at verizon.com> >
 Cc: Elisa Cooper <Elisa.Cooper at markmonitor.com <mailto:Elisa.Cooper at markmonitor.com> >, Steve DelBianco <sdelbianco at netchoice.org <mailto:sdelbianco at netchoice.org> >, "bc-gnso at icann.org <mailto:bc-gnso at icann.org> " <bc-gnso at icann.org <mailto:bc-gnso at icann.org> >
 Subject: Re: [bc-gnso] RE: FOR REVIEW: draft BC comment on GAC Advice on safeguards for new gTLDs 

Thanks Sarah, J. Scott and Laura for this work. 

I am wondering if there is a clear definition of what constitutes a closed generic TLD somewhere? 

Failing that, what is to stop the criteria suggested in this text being imposed on, say, a brand that has a term resembling a generic term as its brand name and that would understandably like to operate it for its own exclusive use? 

Thanks, 

Stéphane Van Gelder
 Chairman and Managing Director/Fondateur
 STEPHANE VAN GELDER CONSULTING

 T (UK): +44 (0)7583 457053 

T (FR): +33 (0)6 20 40 55 89 

Skype: SVANGELDER
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Le 22 mai 2013 à 22:58, "Deutsch, Sarah B" <sarah.b.deutsch at verizon.com <mailto:sarah.b.deutsch at verizon.com> > a écrit : 

All, 

 To follow up on our BC call this morning,  we discussed why the existing draft asking ICANN to develop a non-specific public policy exemption in the Registry Code of Conduct for closed generics was not a good idea.  Steve had encouraged me, J. Scott Evans and Laura Covington from Yahoo to put pen to paper and propose specific ideas (building on the Australia's earlier GAC recommendations on closed generics) rather than for the BC to remain silent on this issue.  

Our proposed language is attached for Members' consideration. 

 Sarah 

 Sarah B. Deutsch 
 Vice President & Deputy General Counsel 
 Verizon Communications 
 Phone: 703-351-3044 
 Fax: 703-351-3670 

From: owner-bc-gnso at icann.org <mailto:owner-bc-gnso at icann.org>  [mailto:owner-bc-gnso at icann.org <mailto:bc-gnso at icann.org> ] On Behalf Of Elisa Cooper
 Sent: Monday, May 20, 2013 3:34 PM
 To: Steve DelBianco
 Cc: bc-gnso at icann.org <mailto:bc-gnso at icann.org> 
 Subject: [bc-gnso] RE: FOR REVIEW: draft BC comment on GAC Advice on safeguards for new gTLDs 

Steve, 

Thank you so much for all of your work on this. 

Please find attached my edits to Sarah's draft. 

As previously stated, I will recuse myself from comments related to Closed Generics. That said, I am concerned that the proposed comments in this draft may be at odds with our earlier position:http://www.bizconst.org/Positions-Statements/BC%20Comment%20on%20Closed%20Generic%20TLDs.pdf. 

Thank you again. 

Best, 

Elisa 

Elisa Cooper 

Director of Product Marketing 

MarkMonitor 

Elisa Cooper 

Chair 

ICANN Business Constituency 

208 389-5779 PH 

From: owner-bc-gnso at icann.org <mailto:owner-bc-gnso at icann.org>  [mailto:owner-bc-gnso at icann.org] On Behalf Of Deutsch, Sarah B
 Sent: Monday, May 20, 2013 12:29 PM
 To: Steve DelBianco; bc-gnso at icann.org <mailto:bc-gnso at icann.org> 
 Subject: [bc-gnso] RE: FOR REVIEW: draft BC comment on GAC Advice on safeguards for new gTLDs 

Steve, All, 

 Thanks for your work on this draft. My comments are attached.   One big issue I would flag for members is the paragraph dealing with closed generics.   Various BC members have grave concerns about certain closed generics and formal objections have been filed.  The focus on applying for an exemption in the Final Guidebook does not fix these fundamental concerns for the reasons outlined in the attached. 

I'd suggest that the BC either (a) refrain from taking a position on the closed generic issue altogether or (b) support the GAC's concerns about closed generics and the need to show that an award of an exclusive right in a generic term is in the larger public interest.    

Sarah 

From: owner-bc-gnso at icann.org <mailto:owner-bc-gnso at icann.org>  [mailto:owner-bc-gnso at icann.org] On Behalf Of Steve DelBianco
 Sent: Wednesday, May 15, 2013 4:40 PM
 To: bc-gnso at icann.org <mailto:bc-gnso at icann.org> 
 Subject: [bc-gnso] FOR REVIEW: draft BC comment on GAC Advice on safeguards for new gTLDs 

ICANN's new gTLD Board Committee has requested public comment on how it should address GAC advice to establish safeguards for categories of new gTLDs. (link <http://www.icann.org/en/news/public-comment/gac-safeguard-advice-23apr13-en.htm> ) 

The BC has have held 3 conference calls on this topic (see minutes and transcripts on the BC Wiki <https://community.icann.org/display/gnsobc/Home> ).  Several BC members provided input, including text from Ron Andruff, Marilyn Cade, and Andrew Mack.   

Comment period closes 4-Jun.   That allows our regular 14-day review and approval period.  So, please REPLY ALL with your suggested edits and comments regarding this draft, before 29-May-2013. 

Steve DelBianco 

Vice chair for policy coordination 

Business Constituency 

<BC Comment on GAC Advice for new gTLDs DRAFT v1sd2 (2).docx> 