[Gnso-newgtld-wg-wt2] Actions/Discussion Notes: Work Track 2 Sub Team Meeting 28 September

[Julie Hedlund]

Dear Work Track members,

 

Please find below the action items and discussion notes from the call on 28 September.  These high-level notes are designed to help Work Track members navigate through the content of the call and are not a substitute for the chat transcript or the recording. The meeting recording and chat transcript are available at: https://community.icann.org/x/9hkhB.

 

The slides are attached and the chat room excerpts included below for reference.

 

Best,

Julie

Julie Hedlund, Policy Director

 

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Action Items and Discussion Notes: 28 September 2017

 

Continuation of CC2 Comments and discussion on Closed Generics:

 

Slide 3: What is a "Closed Generic"?

Slide 6: Key findings -- Several cases where a generic string may operate in an exclusive manner.

Slide 7: Path Forward

 

-- In order to move forward with policy, we must address several elements

 

Slide 8: Path Forward -- Some Ideas:

 

Discussion:

 

-- Back to slide 6: Even though there is a rule against closed generics.  If you have a trademark in a term and that is registered in a certain class of goods and services.  Provided an entity uses that TLD in accordance with those goods and services then they can be under Spec 13 an exclusive use TLD.  Apple, United, etc.

-- On slide 6 -- some trouble with the nomenclature and citation of .apple.  That is not a generic string.  It is an arbitrary string.  We are overusing the term "generic".  The issue of a closed generic needs to be separated from a closed arbitrary string.  Needs to be confined to something being used in the dictionary sense, such as .makeup.  Be clear what a closed generic is and is not.

-- The idea for putting it on slide 6 is to separate them.  Yes, in some cases it could be seen as a generic string, because it is operating with a trademark it is not a closed generic.  We need to propose some changes to language so there can be misconceptions.

-- Ignore what it says on the slide and move beyond that.  Maybe call it "dictionary words".  The point that we are trying to get across that any word, distionary or not, can be used as an exclusive use registry if used in accordance with trademark registration goods and services description.

-- Do want to look at the claim that by making certain decisions you are rendering an open TLD closed.  All registry operators have policies and processes that they apply to registration.  As long as you follow them you can register a domain name.  Look at .bank, which is highly validated.  That is highly vetted, which is different.  Same with pricing.

-- We could at least recognize and discuss if there could be a way to mitigate harms while allowing the exclusive operation of generic strings while having mitigation measures for strings that may pose harm to the public interest.

-- When we say "defacto closed" we are not talking about .bank.   You could have defacto ways to close your TLD.  Any TLD that charges any third party the same amount that would be the same rules for everyone.  But .makeup can say everyone is $10K except for the registry itself.  Different from a validated TLD.

-- Is there harm to the public interest by allowing a TLD that has a term that is used in a dictionary sense but sets retrictions for any other party than itself.  If there is harm what is it and how do we mitigate it?

-- In the case of an exclusive use domain no mattter how much money you have you can't get one.  Charging more doesn't make a term exclusive, some are arguing.  If you are talking about equal treatment that opens up another can of worms.

 

>From the chat:

Michele Neylon: .office + .play are both trademarks though

Alexander Schubert: Almost every premium keyword is trademarked in MULTIPLE  TM registries!

Jeff Neuman: .office itself is not a trademark that qualifies under Spec 13

Mike Rodenbaugh: I suspect Microsoft would disagree with that

Jeff Neuman: The point is that we need to all understand and agree that the current rules are that if you have a valid trademark registration for a string that COULD have a generic connotation, but the trademark registration is for a use that is NOT for the use of the mark in connection with the potential generic connotation, that IS allowed as a closed gTLD

Jeff Neuman: So the string apple, food, or any other term can be used as a closed TLD provided that the use of the TLD is consistent with the goods/services for which the string is trademarked

Mike Rodenbaugh: There is NO definition whatsoever of "public interest" in ICANNland.  It is whatever anyone wants to say it is on any given day and any given issue.

Michele Neylon: Mike - yeah - it's a wonderfully fluffy term :)

Mike Rodenbaugh: It's a ridiculously vague term

Karen Day: IF you had a trademark REGISTRATION PRIOR TO THE DATE OF FILIING THE TLD APPLICATION ONLY.

Mike Rodenbaugh: The so-called "rule against closed generics" is not one devised by the community.  In fact, we came up with the opposite rule (that they should be allowed) in the run-up to 2012.

Michael Flemming: Karen is correct.

Michael Flemming: So pre-2012

Jim Prendergast: Is there standing GAC advice against closed generics?  and where does overcoming that come into this.

Mike Rodenbaugh: yes, so that GAC advice somehow became the new "rule"

Michele Neylon: +1 Greg

Alexander Schubert: The TM should be at least X years old (e.g. 5 years), and USED in at least X nations (not just registered, e.g. 25 nations). A simple 1 year old TM regisration is not good enough.

Michele Neylon: the term is generic the usage in the case of apple isn't

Michele Neylon: Apple using .apple doesn't bother me

Kurt Pritz: The RPM Working Group uses the term "dictionary word" rather than "generic"

Michele Neylon: IBM (for example) closing off .cloud just for their own use would bother me

Trang Nguyen: @Jim, GAC category 2 advice says: "For strings representing generic terms, exclusive registry access should serve a public interest goal."

Jim Prendergast: thx trang

Mike Rodenbaugh: the Board then acted on this post 2012 applications

Karen Day: @Alexander - and how will that foster innovation?

Alexander Schubert: If a generic term is snacked up by a brand and "closed" - then it is inaccessable to the public. And that should not be!

Michele Neylon: New TLDs to date haven't fostered much innovation unless you consider price gouging to be innovative

Mike Rodenbaugh: @Alexander -- doesn't the same logic apply at the 2d level?

Michele Neylon: the last innovative TLD I've seen was .tel and that was a roaring success

Alexander Schubert: Industry giants will snoop up their industry related killer keywords - and shut them down. At about US $300k that is a STEAL!

Michele Neylon: Alexander - exactly 

Mike Rodenbaugh: same thing has happened at 2d level

Michele Neylon: and that bothers me

Karen Day: @Michele that depends on your definition of success.  For a brand, success has nothing to do with sales.

Alexander Schubert: +1

Susan Payne: @Alexander I don't think thi si sthe place to unpick fundementals of TM law 

Susan Payne: companies can register TMs, they have to persuade the relevant TM office that it is valid and aceptable registration.That's it

Jim Prendergast: http://domainincite.com/22114-loreal-is-using-closed-generic-makeup-in-an-interesting-way

Susan Payne: and no-one is stopping you applying first for the purpose of running the TLD in a generic rather than a non-branded manner.  There have been plenty of examples of that in round 1.  Coach for example

Jeff Neuman: Validated TLDs are not closed because they offer third party registrations

Alexander Schubert: It is lawful to use a generic keyword for a TM - but not really advisable. Do it on your own risk. Don't tell the world that now that you use a generic term as a TM you need also to shut down the matching TLD. Doesn't fly with the general public, sorry. In TM law there are goods and service classes; in the DNS not! Therefore in the DNS generic keyword terms need to be accessable to the public!

Jeff Neuman: That is very different than what we are talking about

 

Slide 8 -- Consideration for a path forward:

 

-- Need to document all the places where public interest was mentioned.

 

Feedback on:

-- Is the string considered generic?

-- Will the TLD be operated exclusively?

-- Is there evident of harm against the public interest?

-- Are there any mitigation measures that could be introduced.

 

Discussion:

 

-- As far as predictability, to take one business model and say you can't do that doesn't allow registry operators to run their business in a way that they wish as long as it is not causing negative affects on the technical operational of the Internet.

-- Concerned with the use of the word "public interest".  Careful about using terms that validate themselves.

-- Don't think you could ask a registry if what they are doing is against the public interest.

-- What about having an objection procedure?  One issue with objection procedures unless you have super deep pockets there was no way to access them.  There was no clarity as to how the comments would be handled.  An objection procedure would need to be more accessible.

-- People need to remember that this issue was addressed in GAC advice and there were a very large number of people who objected.  Opposing an application and challenging to get exemptions, there is no reason that can't be a two-way street.

-- Part of the issue is where do we stop?  We have a number of different objection processes already in place.  We would need to set criteria.

-- Need to consider if there are other models that are troublesome.  Don't look at closed generics in a vacuum.  Just one of the ways registries could be run in ways that people don't like.

 

>From the chat:

 

Mike Rodenbaugh: This was very widely and publicly debated prior to 2012 and there was no consensus to preclude 'closed generics'; so they were explicitly allowed.  I have still never seen any real explanation as to harm caused by them.

Alexander Schubert: Maybe the term "regulate" is wrong here - we issue "policies"

Karen Day: Why any special objections other than what is already in place

Jeff Neuman 2: I personally believe an objection process needs to focu on the harms to end users (as opposed to harms to competitors, registrars, registrants, etc).

 

Discussion on Harms:

 

-- Before we focus on objections we need to agree on a basis to object.  Need focus on harms.  If we are talking to harms to registrants because they can't register a name -- is that really what we need to protect?  At the end of the day it is to look at harms to end users because a TLD is closed.  If we focus on that and come up with what we want to protect the global community from.

-- Disagree that objections from competitors should be ignored.  If you look at terms such as "harm",  it can be construed as many things.  You need to allow organizations to voice their objections whether or not competitors.

-- ICANN is not the place to deal with competition law.  Competition law can only look after the fact and then take steps to address that. 

- If you have monopoly power there are lots of things you can't do.  ICANN is a place where competitors get together.  If there is collusive behavior there could be an issue. There is no guarantee of a level playing field and there does not appear to be a legal issue here.

-- Those in favor or against closed generics, the arguments have not changed.

-- Could the challenge procedure be based on the proposed harms? 

- Existing policy recommendations did not provide a clear direction, though it was generally understood. Is there somewhere in between no problem with closed generics and should be completely disallowed? Is there some way to handle the public policy concerns and still allow? Is there room for compromise?

- If we're getting into the business of challenging business models, should it be limited to just closed generics? And just because there is this rule, doesn't mean we need to continue it. There should be benefit and harms analysis.

-- NGPC in relation to closed generics, was concerned about generics that did not serve the public interest.

- Who's responsibility is it to determine the validity of harms? Jeff: After GAC Advice, ICANN asked applicants how the registry would be in the public interest or not harm the public interest. The burden was on the applicant to demonstrate. What may be more appropriate is for the challenger to demonstrate that intended usage is against the public interest.

-- There was the assumption that TLDs would support third party registrations, or created marketplaces for 2nd-level domains. THere should be more substantial harms than just foreclosing a possible marketplace. There should not be a public interest arguement that a 3rd party registrant model should be the preferred model.

-- ICANN Bylaws - nothing about closed generics specifically.

- ICANN asked applicants why exclusive access is in the public interest. No evaluation of response about substance of arguments. Insistence on maintaining closed generic meant being on hold and majority changed their exclusive use rules.

-- Understanding the numbers provided by Trang. 174 have reluctantly indicated they will not operate as exclusive use. How about the 12? All but 5 withdrew. 1 signed Spec 13. Rest signed RA. 

-- Even if the exclusive use was in the public interest, didn't seem to be a factor.

-- Just because past procedure had mistakes does not necessarily mean entire process was broken.

 

>From the chat:

Mike Rodenbaugh: before we consider an objection process, don't we need to agree on some substantive basis to object?  

Jeff Neuman 2: Harm in competition law is ONLY assessed after the harms are realized....not in order to prevent theoretical harms

Susan Payne 3: some of these proposed harms are ludicrous, so no

avri doria: is no compromise postion possible? have we explored the middle space?

Cheryl Langdon-Orr: @Avri  good point  there is often reaction to the who holds a generic name 

Trang Nguyen: Implementation of GAC category 2 "exclusive access" advice is here: https://newgtlds.icann.org/en/applicants/advisories/gac-cat2-advice-19mar14-en[newgtlds.icann.org]

Jeff Neuman 2: @Trang correct.  But ICANN never evaluated those responses.  It paints the picture that 100+ TLDs voluntarily withdrew their desire to be exclusive use application 

Jeff Neuman 2: but they did not.  

Jeff Neuman 2: They eventaully did when it became clear after months that ICANN was not going to approve their TLDs IF they insisted on staying closed

Jeff Neuman 2: in essence ICANN sent the message "if you want to stay closed, you will not move forward in this round"

avri doria: that is what i call the defacto policy

Mike Rodenbaugh: @Jeff that is right, they withdrew beause they didn't want many years of delay or outright obstruction from GAC and Michele's army.  they needed to get to market to recoup investment.  (which seems funny now)

Jeff Neuman 2: So faced with the choice, most said, ok we will say we are not exclusive use

Karen Day: @Jeff that is 100% what happened. 

Karen Day: Told change you application language or go home and lose your money.

Mike Rodenbaugh: yes, that is what happened

Jim Prendergast: They made it perfectly clear by putting the prohibition into the contract

Trang Nguyen: There were 189 applications that were mentioned in GAC category 2 advice.

Trang Nguyen: Of those, here's a break-down:

Trang Nguyen: 139 indicated that the applied-for TLDs will not be operated as exclusive access TLDs; 12 indicated that the applied-for TLDs will be operated as exclusive access registries; 35 indicated that their applications currently state that the applied-for TLDs will be operated as exclusive access registries, but the applicants will not operate them as exclusive access registries. 

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