[Gnso-newgtld-wg-wt2] For SubPro Sub team 2: Continuing discussion on Closed Generics

Tue Oct 3 13:30:10 UTC 2017

*** This is intended for SubPro Subteam 2. If it has not reached the 
right list, could you kindly send me the email address.  ***

Dear Subteam 2,

I’ve been reading the discussion of the last meeting, and want to share 
some thoughts before the call this week. I hope this helps to inform and 
share information in this important discussion.

1. “Actual harm” is a purposely impossible standard. Very little 
requires proof of “actual harm” in the real world – it’s proof of 
“likelihood of harm” that is the basis of most standards, particularly 
in trademark law. For example, the test for trademark infringement is a 
“/likelihood of confusion/.” The test for “imminent danger” is where the 
danger exists which could “/reasonably be expended to cause death or 
serious physical harm.” /If I build a swimming pool in my backyard, I 
don’t have to wait until a child drowns to build the fence – the danger 
is foreseeable and avoidable – and I must act now.

2. When it comes to a “Likelihood of Harm,” we have tons of evidence of 
the likelihood of harms of Closed Generics, and a great deal of precedent.

A. The protections against monopolization of generic words used in their 
generic sense date back almost three quarters of a century (1946) in US 
trademark law and can be recited by every trademark attorney.

/"Generic word are the weakest types of 'marks' (and cannot even qualify 
as 'marks' in the legal sense) and are never registrable or enforceable 
against third parties. //*Because generic words are the common, everyday 
name for goods and services and everyone has the right to use such terms 
to refer to their goods and services, they are not protectable. *//Be 
aware that if you adopt a generic term to identify your goods or 
services, you will not be able to prevent others from using it to 
identify potentially competing products or services."/Basic Facts about 
Trademarks, USPTO, 
/https://www.uspto.gov/sites/default/files/documents/BasicFacts.pdf 
[emphasis added]/

*B. *Thus, the US Trademark Office would never allow one milk producer, 
milk pasteurizer, or milk distributor to monopolize or trademark the 
word “milk” for its own purposes.  Milk for the limited purpose of a 
line of young children’s clothing, sure, but never to allow Borden Milk 
Products to monopolize the word “milk” as opposed to Horizon Organic 
Milk*. *

2)The high standard of the “likelihood of material detriment” WAS met 
when CTIA – The Wireless Association ®, representing the Mobile 
Industry, brought it’s Objection against Amazon for monopolize the gTLD 
planning to own all .MOBILE domain names to solely support its mobile 
business, and not that of the industry as a whole. /CTIA - The Wireless 
Association (R) (USA) vs/ Amazon EU S.A.R.L. (Luxembourg), Decision 
1-1316-6133/. CTIA did meet the very high and difficult standard of 
showing that the Closed Generic application of Amazon for .MOBILE and 
the Panelist found that Amazon’s ==> “/would create a likelihood of 
material detriment to the rights or legitimate interests of a 
significant portion of the community to which the string may be 
explicitly or implicitly targeted."/

3)Hundreds of commenters from around the world – a larger and wider 
spectrum than in any ICANN comment proceeding before – responded to the 
Board’s call for clarification and understanding of the issues of Closed 
Generics by stating clearly and precisely the “likelihood of harm” they 
would suffer if Amazon owned the Internet space of “.BOOK” or Google 
owned all the domain names of .SEARCH.

In the comment period, some of the largest and best known companies in 
the world explained why Closed Generics were a “restriction of 
competition to the detriment of consumers.” One was the attorney Martin 
Broden, an attorney for Inter IKEA Systems B.V. presenting IKEA’s 
concerns with ICANN:

“Preventing others from registering under descriptive gTLDs means 
restriction of competition to the detriment of consumers. The current 
proposal is contrary to ICANN’s intention with the launch of new gTLDs, 
namely to broad the domain name space and to spur competition for the 
benefit of all.” 
https://forum.icann.org/lists/comments-closed-generic-05feb13/msg00049.html

*Others included Microsoft, the McCarthy Institute for Intellectual 
Property and Technology Law, Spanish Booksellers Federation, Asia Cloud 
Computing Association, Yves Rocher, Prudential Insurance Company, even 
the US Postal Service. The eloquent and informative Microsoft letter is 
attached. *

4) As was noted during the Subteam discussions, dozens of GAC Early 
Warnings were filed specifically on Closed Generics. The Governments 
shared with us the basic principles of competition and trademark 
outlined above.

_Overall:_

We made a great compromise in the original round – we allowed .BRANDS to 
be Closed – defined as the Registry being the sole Registrant and owning 
all of the domain names. Thus we created the space for experimentation 
of the brand, and .AWS, among others, is well underway with their models 
– all of which tie their New gTLD to their products and services.

We clarified the policy of the First Round that Generic gTLDs would be 
open – and that the Registry would sell domain names and service all 
within its industry or product/service group. You’ll see attorneys and 
companies long in the ICANN space tell us that this clarification by the 
ICANN Board was what they thought the rule was all along. Not new 
policy, but clarified one. They view the ICANN Board's work barring 
Closed Genrics as clarifying and restating the policy as originally 
intended – if a New gTLD Registry is not a .BRAND, then the Registry 
/cannot own all of the second level domains. /No single business can 
control all of the domain names of its industry.

I hope this bit of history and analysis has been helpful to the 
discussion. I think the world would be happy to revisit these issues, if 
needed, but that would delay the next round of New gTLDs which none of 
us want to do.

Best, Kathy

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