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

Greg Shatan gregshatanipc at gmail.com
Tue Oct 3 17:09:01 UTC 2017 

Alexander,

   - There is no such thing as a "generic brand" -- that is a contradiction
   in terms.
   - .Bank and its ilk are not "closed" TLDs and should not be identified
   as such.  To dredge up an old term, they are "restricted" TLDs.
   - The "web user" has only *existed* for slightly more than 20 years.
   Any suggestions about what users will or won't get used to or comprehend
   over time seem highly speculative at best.  In that time, users have gotten
   used to an awful lot -- the paradigm of the TLD has been changed in the
   last 2-3 years, and it will continue to change.  Offline, consumers can
   distinguish between a department store, which sells many brands, and a
   branded store, that only sells that brand -- even though they are both
   stores.  I am more optimistic than some about the flexibility of the
   end-user.
   - Bottom line -- we have to ask who we are protecting and what we are
   protecting them from (or more positively, what we are promoting and who
   will benefit).
   - You have flipped the history of trademark law on its head.  Trademark
   law existed for many, many years before the Nice classifications were
   introduced in 1957.  And they were not universally adopted.  Canada did not
   adopt (actually, permit...) the Nice classifications until 2015!  Trademark
   law allows you to take any word, phrase, or logo and use it to identify
   your business and to exclude others from using the same or similar mark if
   they are in the same or related line of business.  An exception is that you
   cannot claim trademark rights (and the right to exclude) if the word is
   generic for the products or services you provide.  A word is never
   "generic" per se -- it is only generic in the context of a particular good
   or service.  In a different context, the same word could be descriptive of
   an element of the goods/services, suggestive of some quality or aspect of
   the goods/services, or completely arbitrary.
   - Analogizing "closed generic" analysis to trademark analysis is
   troublesome on several levels, which I don't have the time to really
   discuss now, but which I will consider in connection with Kathy's "brief"
   as well as your email.
   - I don't follow the difference between how apple sellers feel about
   .apple and how makeup sellers feel about .makeup.  But the bigger question
   is whether, as a policy, we intend to favor the model of "TLDs as a
   "market-maker" for second-level domains" over every other model for TLDs.
   I don't think it should be a foregone conclusion that the answer is yes.
   If the answer is not yes, then the "case" against closed generics is
   substantially weaker.

Greg


On Tue, Oct 3, 2017 at 10:18 AM, Alexander Schubert <
alexander at schubert.berlin> wrote:

> Dear Subteam 2,
>
>
>
> In addition to Kathy’s thoughtful remarks:
>
> ·         In 2012 the “closed generics” applications were mostly NOT
> “brand applications”. Maybe the applicant was a brand – but the strings
> weren’t brands (.makeup being an example).
>
> ·         So we shouldn’t just look at “generic brands” – but at generic
> term based strings in general: they should NOT be closed; unless of course
> to PROTECT the Internet User (example being .bank).
>
> ·         Yes: industry defining keyword based .com domains like “
> flights.com” or “hotels.com” are “closed” as well: but the Internet user
> is used to that fact. However: all blogs using a “.makeup” domain
> supporting ONLY “L’Oreal” – not a SINGLE Internet user will pierce that
> veil!
>
> ·         Yes: TM law allows for “generic terms being branded”. But ONLY
> because the Nice convention created 45 goods and services classes – through
> which you can EXCLUDE the use of the term in its generic meaning! If it
> wasn’t for the 45 classes (more specific: the definition of goods and
> services for said TM) – no TM registry would allow a generic term to be
> registered! Well, in the DNS we do not have 45 classes – hence we can’t
> allow one entity to shut down an entire industry defining term as gTLD.
> When “Apple” shuts down the term “apple” as a TM for computers and phones –
> it doesn’t hurt anybody who deals with fruits. When L’Oreal shuts down
> “makeup” as a TLD – well: then it shuts down the term for EVERYBODY –
> except for those who promote their products. TM pundits call it “fair
> competition” – well: OF COURSE THEY DO! That is their job. But there is
> nothing “fair” about it.
>
> I completely understand that some brands have EXTRAORDINARY reach! Apple,
> Sun or Virgin being examples. These are “global brands” – and they would
> put their brand-namespace to use – and NOT shut it down or dominate a
> market with it. I don’t care about the label (“Global Brand”, “Famous
> Mark”, etc.: the label doesn’t matter) but if we would find a HIGH
> threshold that would “protect” these entities while keep 99% of the generic
> namespace open: that would likely be an agreeable compromise. We had that
> discussion in 2007 …..
>
>
>
> Thanks,
>
>
>
> Alexander
>
>
>
>
>
>
>
>
> *From:* gnso-newgtld-wg-wt2-bounces at icann.org [mailto:gnso-newgtld-wg-wt2-
> bounces at icann.org] *On Behalf Of *Kathy Kleiman
> *Sent:* Tuesday, October 03, 2017 4:30 PM
> *To:* gnso-newgtld-wg-wt2 at icann.org; gnso-secs at icann.org
> *Subject:* [Gnso-newgtld-wg-wt2] For SubPro Sub team 2: Continuing
> discussion on Closed Generics
>
>
>
> *** 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
> <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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