[Gnso-newgtld-wg-wt5] Notes and Action Items - New gTLD Subsequent Procedures PDP Work Track 5 - 11 July 2018

[Alexander Schubert]

Dear Greg,
your anger and hurt are heard. Thanks for expressing your feelings so directly. Apologies follow in this text.
In your definition of squatting you quote:"More generally, 'squatting' means the practice of inhabiting someone else's property without their permission."
Well. That's what we are talking about. You nailed it. A city of 1 million people should authorize the usage of their name on the top-level in the DNS; just like we require already for capitals.
For the non-lawyers here once again how the TM law works (and that's obviously just my understanding of it; plus I haven't studied law):
When you create a "brand" then the law allows you deny others usage of your "intellectual property". A trademark could be a city name  ("Orange") or a generic term ("Orange"). There could be several trademarks "Orange" in one country; e.g. one for a Mobile Provider (orange.com) and one for a Database Management (ORANGE by WareValley).
You now have a plethora of entities actively using one term ("orange") to identify brands, businesses, cities and even people (5,000 Americans have the last name Orange).
When a company now trademarks their brand "Orange" obviously if just the STRING  (ORANGE) was protected all the other entities "Orange" would face huge troubles: The cities, the people, the other companies if they would use "Orange" in business  (which companies, cities and entrepreneurs do). It would mean that only ONE entity could use the string "Orange" in business. Much like only ONE entity can own a gTLD string.
In trademark law a solution exists: you simply CANNOT deny everybody the usage of the string "Orange" in business. Instead you have to very, very narrowly define the goods and services that you intent to use; and the string "orange" will then be protected ONLY for these specified usage cases. E.g. "Telecommunication Services" (orange.com) or "Database Management" (WareValley). You can NOT protect however the usage of the string "Orange" for goods and services pertaining to the generic meaning. You couldn't brand an "Orange fruit label" with the trademark "Orange". You do not trademark a "string" rather you protect a string in COMBINATION with very narrowly defined goods and services.
This cleverly designed protection mechanism ensure that only ONE Telecommunications Company "Orange" exists (in one jurisdiction) - but literally INFINITIVE other trademarks could bear the same name.
And that's just ONE country. If ORANGE hasn't protected their brand in for example Senegal then another entity could use "Orange" for telecommunications in that jurisdiction  (reality is a bit more complicated - but in general).
All cities "Orange" are literally unimpacted by these trademarks. There is no harm done to the city Government or the constitutents of the locality. Even if there was a marketing agency "Orange" - the city and its public and private organizations can STILL use their city name while marketing their destination named "Orange". The probably hundreds of Intellectual Property rights "ORANGE" do in no way harm or obstruct the cities.
That's different in the DNS. Once ".orange" is designated nobody else can do so anymore. Especially not any of the cities  (or all of them together in a joint venture). 
I beg your pardon - but in my book that could be described as somebody  (e.g. a business) is "inhabiting the city's property" - and if there wouldn't be a requirement for a "letter of non-objection" then indeed "without permission".
In that light seemingly you validated my choice of language. 
But I am in agreement that we should refrain from the usage of "inflammatory language". Insofar while "squatting" seemingly is "nailing" it; I do apologize to all brands that intentionally or unintentionally planned or will plan to apply for a string identical to a sizeable city WITHOUT requesting a "letter of non-objection". Per 2012 AGB there wasn't a requirement to do so - hence I am favoring to create policy that would introduce such requirement - it would be (like trademark registrations) helpful for brands to not accidentally infringe on rights of others.
I know that you knew all the TM policies I explained. But only a minority here are IP lawyers. I hope I laid out the basic problem in an understandable fashion. And again: if there are factual misinterpretations - please enlighten me.
I close by repeating my suggestion for the treatment of city names on top level:Keep the 2012 AGB Elevate "sizeable cities" (definition TBD) to the same protection as capital cities. In return keep the non-geo use provision for all other city namesThe only alternative that I see would be to COMPLETELY eradicate the non-geo use provision. And basically that would be a pity.
Peace;
From Riga,
Alexander.lv




Sent from my Samsung device

-------- Original message --------
From: Greg Shatan <gregshatanipc at gmail.com> 
Date: 7/24/18  08:24  (GMT+02:00) 
To: Icann Gnso Newgtld Wg Wt5 <gnso-newgtld-wg-wt5 at icann.org> 
Subject: Re: [Gnso-newgtld-wg-wt5] Notes and Action Items - New gTLD Subsequent Procedures PDP Work Track 5 - 11 July 2018 

I'd like to pick up and expand on one thing that Paul said:  "we have to stop trying to create rights for governments that they haven’t even legislated for themselves.  ICANN is not the place to introduce new legislation – the community has enough trouble on our hands just trying to get ICANN’s policies in alignment with actual laws.  It doesn’t do us any good to cook up compliance with non-existent laws – thus over engineering the next round and setting it up for confusion disputes, and extra costs."
The flip side is true as well -- we have to stop denigrating rights that do exist and using incorrect, inflammatory language while doing so. Alexander shouts in all caps "YOU ARE SQUATTING ON THEIR NAME" when discussing a "beverage brand" applying for the TLD "Clearwater" (a term that is also the name of a city (population 114,000)).  Squatting is an incredibly pejorative term.  

Here's one definition of "SQUATTING", from Wikipedia: cybersquatting is registering, trafficking in, or using a domain name with bad-faith intent to profit from the goodwill of a trademark belonging to someone else. More generally, "squatting" means the practice of inhabiting someone else's property without their permission.  This definition is similar to the one in the U.S. Anticybersquatting Protection Act (ACPA).
On that basis, a declaration that "YOU ARE SQUATTING ON THEIR NAME" is tantamount to an accusation that any trademark owner with a brand coincident with a city name is violating the law, engaging in bad faith intent, seeking to make a profit to which they are not entitled, free-riding on the work and reputation of others.  Perhaps some other meaning of "squatting" was intended, but my own understanding and the other definitions I reviewed seem pretty consistent.
This is obviously factually wrong.  Trademark rights are protected by law throughout the world and by at least two international treaties (Paris and Madrid).  Trademark owners have legitimate rights, and any TLD application would be in furtherance of those rights -- clearly a "good faith" action based on a right "belonging to them."  Any argument premised on the idea that trademark owners are "squatting" is doomed to lose, since it has no basis in fact or law.
It is also extreme, insulting and polarizing.  Continuing in this vein will be unhelpful.  It is certainly unpersuasive and not conducive to compromise, and without persuasion and compromise there is no hope for consensus.
Furthermore, this is not just about trademarks.  It is not really about trademarks at all.  It's about giving one potential applicant or applicants a superior privilege denied to any other potential applicant of any other type.  But it goes further than that -- it gives non-applicants the privilege of deciding whether an applicant (of any type) can proceed, or if there are multiple applicants, which one can proceed.  (This is one way in which Paris, France was privileged over Paris, Texas, since Paris, France was granted an absolute privilege, while Paris, Texas was only granted a contextual privilege.)  I use the word "privilege" purposefully, since it would be incorrect and confusing to call it a "right" (because that would imply that it is based on an objective, externally-created right).
I'll reiterate my earlier suggestion that we first look at the range of processes.  A process that occurs at the very beginning of the application life-cycle and that gives one or a group of parties a reservation over a name if they ever wish to exercise it and veto power over others without any need to prove their own claim (much less the superiority of their claim over the claims of others) is at the extreme end of the spectrum of processes.  Such processes should be saved for the most extreme of concerns, where it is objectively clear that the "reservation-holder"/"veto-holder" has a unique claim to the term, and any user of the term is beyond a reasonable doubt acting in bad faith.  (Consider, for example, the full names of national Red Cross societies.)  Less extreme processes should offer more opportunities to develop new ideas and ultimately, consensus.
Best regards,
Greg



On Sat, Jul 21, 2018 at 6:45 AM, Kavouss Arasteh <kavouss.arasteh at gmail.com> wrote:


Dear Alexander,Thank you very much for the message,As usual you  have logic in your insight.May I ask some question in line of your message pleaseThese are:

Any applicant for any city or brand “PARIS” would have been required to get the approval of the French Capital. To my understanding if the geo-use was intended then from all other places that qualify as “city” as well! We might look into the formulation “relevant Government” and “associated with the city name”: Paris Texas has 25k people, is a city, and the city’s name is “Texas”. To my understanding any application that declares geo-use (even if by the French capital) they would have had to acquire Government support from Paris, TX as well (please discuss, please correct me if you identify evidence to the contrary). I do not see that the French capital was prioritized over Paris, TX.
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