[bc-gnso] RE: FOR REVIEW: draft BC comment on GAC Advice on safeguards for new gTLDs
icann at rodenbaugh.com
icann at rodenbaugh.com
Thu May 23 21:37:30 UTC 2013
I happen to be very familiar with that disposition, which was highly
fact-specific and imho quite wrong. The central ruling that TLD strings
should not register as marks is contrary to the findings of OHIM and other
trademark offices, which routinely register TLD strings as trademarks.
Anyway I don’t see how the convoluted reasoning in that decision really is
pertinent to this discussion, and at least is countered by trademark office
practice in the rest of the world.
I am curious to hear more about how it raises pertinent concern, and am glad
at least (at last) we might discuss the substance of this issue.
If the BC is going to say something about it, then members need to come to
an informed consensus, based on evidence rather than unspecified and
unsupported competitive concerns. The BC’s focus is on the domain name
industry and how it affects all businesses. We should not be picking sides
in fights among competitors over industry keywords and trademarks.
Mike Rodenbaugh
RODENBAUGH LAW
Tel/Fax: +1.415.738.8087
<http://rodenbaugh.com> http://rodenbaugh.com
From: jscottevans at yahoo.com [mailto:jscottevans at yahoo.com]
Sent: Thursday, May 23, 2013 1:58 PM
To: icann at rodenbaugh.com; icann at rodenbaugh.com; lhc at yahoo-inc.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
Oh, and as to a counter-argument to your position, I refer you to the
USPTO's disposition of the various .music trademark applications. While not
identical, the USPTO's reasoning is very solar to the concerns I have heard
from others.
J. Scott
Sent from Yahoo! Mail for iPhone
_____
From: <mailto:icann at rodenbaugh.com> icann at rodenbaugh.com <
<mailto:icann at rodenbaugh.com> icann at rodenbaugh.com>;
To: < <mailto:jscottevans at yahoo.com> jscottevans at yahoo.com>; <
<mailto:icann at rodenbaugh.com> icann at rodenbaugh.com>; <
<mailto:lhc at yahoo-inc.com> lhc at yahoo-inc.com>; <
<mailto:svg at stephanevangelder.com> svg at stephanevangelder.com>; <
<mailto:sarah.b.deutsch at verizon.com> sarah.b.deutsch at verizon.com>;
Cc: < <mailto:Elisa.Cooper at markmonitor.com> Elisa.Cooper at markmonitor.com>; <
<mailto:sdelbianco at netchoice.org> sdelbianco at netchoice.org>; <
<mailto:bc-gnso at icann.org> bc-gnso at icann.org>;
Subject: RE: [bc-gnso] RE: FOR REVIEW: draft BC comment on GAC Advice on
safeguards for new gTLDs
Sent: Thu, May 23, 2013 8:20:35 PM
All of my clients, and my law firm, have business interests much broader
than the domain industry.
Who are these people expressing grave concerns? Because I am only hearing
competitors to so-called closed generic TLD applicants expressing concerns
(including indirectly through their ICANN-connected government reps), with
no evidence or any real specifics as to the parade of horribles they seem to
envision. And certainly no counter-argument to the points I am raising. Do
you or anyone else have any substantive response to any of those points?
Mike Rodenbaugh
RODENBAUGH LAW
Tel/Fax: +1.415.738.8087
<http://rodenbaugh.com> http://rodenbaugh.com
From: <mailto:jscottevans at yahoo.com> jscottevans at yahoo.com [
<mailto:jscottevans at yahoo.com> mailto:jscottevans at yahoo.com]
Sent: Thursday, May 23, 2013 1:10 PM
To: <mailto:icann at rodenbaugh.com> icann at rodenbaugh.com;
<mailto:lhc at yahoo-inc.com> lhc at yahoo-inc.com;
<mailto:svg at stephanevangelder.com> svg at stephanevangelder.com;
<mailto:sarah.b.deutsch at verizon.com> sarah.b.deutsch at verizon.com
Cc: <mailto:Elisa.Cooper at markmonitor.com> Elisa.Cooper at markmonitor.com;
<mailto:sdelbianco at netchoice.org> sdelbianco at netchoice.org;
<mailto:bc-gnso at icann.org> bc-gnso at icann.org
Subject: RE: [bc-gnso] RE: FOR REVIEW: draft BC comment on GAC Advice on
safeguards for new gTLDs
Mike:
We appreciate your pov. However, there are many of us in this constituency
that have business interests broader than the domain industry. In my
discussions with these non-ICANNers, they have voiced grave concerns and
want assurances similar to those put forward by Sarah and Laura in the
latest draft. Do others gave perspective here?
Sent from Yahoo! Mail for iPhone
_____
From: <javascript:return> icann at rodenbaugh.com < <javascript:return>
icann at rodenbaugh.com>;
To: 'Laura Covington' < <javascript:return> lhc at yahoo-inc.com>; <
<javascript:return> svg at stephanevangelder.com>; 'Deutsch, Sarah B' <
<javascript:return> sarah.b.deutsch at verizon.com>;
Cc: 'Elisa Cooper' < <javascript:return> Elisa.Cooper at markmonitor.com>;
'Steve DelBianco' < <javascript:return> sdelbianco at netchoice.org>; <
<javascript:return> bc-gnso at icann.org>;
Subject: RE: [bc-gnso] RE: FOR REVIEW: draft BC comment on GAC Advice on
safeguards for new gTLDs
Sent: Thu, May 23, 2013 7:21:46 PM
We went through exercise of trying to define categories like this, in 2006.
Then in the Vertical Integration WG. Then again recently in the IPC. It
can’t be done, as far as I know.
The GAC didn’t bother to provide a definition either. Making any response
problematic as we don’t really know what we are responding to.
Mike Rodenbaugh
RODENBAUGH LAW
Tel/Fax: +1.415.738.8087
<http://rodenbaugh.com> http://rodenbaugh.com
From: Laura Covington [ <javascript:return> mailto:lhc at yahoo-inc.com]
Sent: Thursday, May 23, 2013 12:05 PM
To: <javascript:return> mike at rodenbaugh.com; <javascript:return>
svg at stephanevangelder.com; 'Deutsch, Sarah B'
Cc: 'Elisa Cooper'; 'Steve DelBianco'; <javascript:return>
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.
<mailto:lhc at yahoo-inc.com> lhc at yahoo-inc.com
408.349.5187
From: " <mailto:icann at rodenbaugh.com> icann at rodenbaugh.com" <
<mailto:icann at rodenbaugh.com> icann at rodenbaugh.com>
Organization: Rodenbaugh Law
Reply-To: " <mailto:mike at rodenbaugh.com> mike at rodenbaugh.com" <
<mailto:mike at rodenbaugh.com> mike at rodenbaugh.com>
Date: Thursday, May 23, 2013 11:13 AM
To: "Yahoo! Inc." < <mailto:lhc at yahoo-inc.com> lhc at yahoo-inc.com>, "
<mailto:svg at stephanevangelder.com> svg at stephanevangelder.com" <
<mailto:svg at stephanevangelder.com> svg at stephanevangelder.com>, "'Deutsch,
Sarah B'" < <mailto:sarah.b.deutsch at verizon.com>
sarah.b.deutsch at verizon.com>
Cc: 'Elisa Cooper' < <mailto:Elisa.Cooper at markmonitor.com>
Elisa.Cooper at markmonitor.com>, 'Steve DelBianco' <
<mailto:sdelbianco at netchoice.org> sdelbianco at netchoice.org>, "
<mailto:bc-gnso at icann.org> bc-gnso at icann.org" < <mailto:bc-gnso at icann.org>
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> http://rodenbaugh.com
From: Laura Covington [ <mailto:lhc at yahoo-inc.com> mailto:lhc at yahoo-inc.com]
Sent: Thursday, May 23, 2013 10:54 AM
To: Mike Rodenbaugh; <mailto:svg at stephanevangelder.com>
svg at stephanevangelder.com; Deutsch, Sarah B
Cc: Elisa Cooper; Steve DelBianco; <mailto:bc-gnso at icann.org>
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.
<mailto:lhc at yahoo-inc.com> lhc at yahoo-inc.com
408.349.5187
From: Mike Rodenbaugh < <mailto:icann at rodenbaugh.com> icann at rodenbaugh.com>
Reply-To: Mike Rodenbaugh < <mailto:icann at rodenbaugh.com>
icann at rodenbaugh.com>
Date: Thursday, May 23, 2013 10:42 AM
To: "Yahoo! Inc." < <mailto:lhc at yahoo-inc.com> lhc at yahoo-inc.com>, "
<mailto:svg at stephanevangelder.com> svg at stephanevangelder.com" <
<mailto:svg at stephanevangelder.com> svg at stephanevangelder.com>, "Deutsch,
Sarah B" < <mailto:sarah.b.deutsch at verizon.com> sarah.b.deutsch at verizon.com>
Cc: Elisa Cooper < <mailto:Elisa.Cooper at markmonitor.com>
Elisa.Cooper at markmonitor.com>, Steve DelBianco <
<mailto:sdelbianco at netchoice.org> sdelbianco at netchoice.org>, "
<mailto:bc-gnso at icann.org> bc-gnso at icann.org" < <mailto:bc-gnso at icann.org>
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 < <mailto:lhc at yahoo-inc.com> lhc at yahoo-inc.com>
To: " <mailto:svg at stephanevangelder.com> svg at stephanevangelder.com" <
<mailto:svg at stephanevangelder.com> svg at stephanevangelder.com>; "Deutsch,
Sarah B" < <mailto:sarah.b.deutsch at verizon.com> sarah.b.deutsch at verizon.com>
Cc: Elisa Cooper < <mailto:Elisa.Cooper at markmonitor.com>
Elisa.Cooper at markmonitor.com>; Steve DelBianco <
<mailto:sdelbianco at netchoice.org> sdelbianco at netchoice.org>; "
<mailto:bc-gnso at icann.org> bc-gnso at icann.org" < <mailto:bc-gnso at icann.org>
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: " <mailto:svg at stephanevangelder.com> svg at stephanevangelder.com" <
<mailto:svg at stephanevangelder.com> svg at stephanevangelder.com>
Date: Thursday, May 23, 2013 12:49 AM
To: "Deutsch, Sarah B" < <mailto:sarah.b.deutsch at verizon.com>
sarah.b.deutsch at verizon.com>
Cc: Elisa Cooper < <mailto:Elisa.Cooper at markmonitor.com>
Elisa.Cooper at markmonitor.com>, Steve DelBianco <
<mailto:sdelbianco at netchoice.org> sdelbianco at netchoice.org>, "
<mailto:bc-gnso at icann.org> bc-gnso at icann.org" < <mailto:bc-gnso at icann.org>
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
<http://www.stephanevangelder.com/> www.StephaneVanGelder.com
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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: <mailto:owner-bc-gnso at icann.org> owner-bc-gnso at icann.org [
<mailto:owner-bc-gnso at icann.org> mailto:owner-bc-gnso at icann.org] On Behalf
Of Elisa Cooper
Sent: Monday, May 20, 2013 3:34 PM
To: Steve DelBianco
Cc: <mailto:bc-gnso at icann.org> 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%20G
eneric%20TLDs.pdf>
http://www.bizconst.org/Positions-Statements/BC%20Comment%20on%20Closed%20Ge
neric%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: <mailto:owner-bc-gnso at icann.org> 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; <mailto:bc-gnso at icann.org> 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: <mailto:owner-bc-gnso at icann.org> 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: <mailto:bc-gnso at icann.org> 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. (
<http://www.icann.org/en/news/public-comment/gac-safeguard-advice-23apr13-en
.htm> link)
The BC has have held 3 conference calls on this topic (see minutes and
transcripts on the BC <https://community.icann.org/display/gnsobc/Home>
Wiki). 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>
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