[Gnso-newgtld-wg-wt5] Conference call: city names

Fri May 4 10:39:28 UTC 2018

Ok just to add a few points to this very interesting thread which I think it's worth making here.

1.	In relation to certain terms - which in the AGB2012 terms would have been classed as geo names - certainly in UK law and jurisdiction there are quite a few restrictions on use. To be clear I am not commenting on whether these are good rules (some are frankly bizarre) but for right or wrong they are part of the laws of the UK. For example, there are a whole raft of regulations governing what can or can't be a company name - see https://www.gov.uk/government/publications/incorporation-and-names for the full set of rules, but basically you need a letter of non-objection in a number of situations where you are effectively representing yourself as associated with a region, government department or regulated profession. The laws in the UK regarding business names basically disapprove using a name or term which denotes (or might be confused with or denote) an official authority or body when there is no connection to that body in fact. (Interestingly these rules also catch terms such as 'intellectual property' and 'registrar'). 
2.	Whilst in the UK we are like the US I think in that we don't have any particular restrictions on the use of city names, I hear from my European legal colleagues and friends that this is very different in continental Europe where most if not all of the countries are very protective of place names in general and cities in particular. But when it comes to questions of public policy I well recall that Nominet's first brush with our legislators as a private company was in relation to governance and naming policy as a result of some 30,000 names of cities and towns being registered by one particular registrant and then being offered on a lease basis to the local authorities to those cities and towns. So it is definitely an area where some caution needs to be exercised as a question of good policy recommendations (which is what we are concerned with here) and I'm not sure it helps to be too strictly legalistic about it.
3.	The nature of a trade mark, denoting the origin of certain goods and services vs those of another person, is a specific right in a specific jurisdiction for specific goods and services to legally stop another person from imitating your mark or confusing your customers; fundamentally it is about consumer protection and prevention of imitations. The nature of the right is also a negative right ie to stop others from doing certain things, rather than being an entitlement. Within those trade mark rules there are also restrictions about what can and cannot be obtained as a trade mark. For example our own application to trade mark a logo for .UK was refused under rules which prohibit registration of a trade mark which may indicate a geographical origin. You also can't register a mark which is simply too descriptive or non-distinctive. There's quite a helpful summary here: https://www.gov.uk/guidance/unacceptable-trade-marks . 
4.	I am not saying that the rules on registration of company and business names, or trade mark registration, translate perfectly to the new TLD programme. But when we look at the letters of non-objection process for capital cities, it didn't seem to me to be unreasonable to require a letter of non-objection. (But then I had done it before, when I incorporated Nominet Registrar Services Limited, so I was familiar with the concept at least.) For example for .London the responsible body was the officer of the elected Mayor of London, similarly for the Wales domain we had to go through a selection process with the Welsh Assembly before we were allowed to have the right piece of paper in order to submit our application for the new gTLD. I agree that dealing with those bodies was at times frustrating and added complexity to the application process; but on the plus side the result was that there was only one applicant and with the leg work done up front they proceeded to delegation relatively quickly and smoothly.
5.	I know these are difficult issues, and I agree with much that has been said about the role of the GAC - the 'A' stands for 'advisory', right? Certainly the small number of anomalous outcomes from 2012 need assessment to work out whether the rules need to be improved. But in the absence of easy answers when I look back at the relative success of the 2012 round for capitals and cities - see .tokyo, .london, .paris, .berlin, .amsterdam, .nyc, .hamburg, .koeln, .boston, .vegas, .moscow, .wien, .miami. .istanbul, .sydney, .quebec, etc etc and also some IDNs I think overall there have been some great outcomes for the new gTLDs programme in terms of geographical, cultural and linguistic diversity, and we should celebrate those successes and not be too hasty to completely rewrite those rules. Particularly when those rules were a compromise result after of years of policy discussions, and as is apparent from this thread it seems that consensus for something else is rather remote.

Best wishes
Nick

-----Original Message-----
From: Gnso-newgtld-wg-wt5 <gnso-newgtld-wg-wt5-bounces at icann.org> On Behalf Of Jorge.Cancio at bakom.admin.ch
Sent: 04 May 2018 08:30
To: martin at brandregistrygroup.org
Cc: gnso-newgtld-wg-wt5 at icann.org
Subject: Re: [Gnso-newgtld-wg-wt5] Conference call: city names

Thanks. It seemed your question led in a very specific direction... but I may have misunderstood.

Hope that my feedback clarifies things. I guess we all are aware that national/regional laws have an impact on ICANN and need to be respected insofar they are applicable.

best

Jorge

________________________________

Von: Martin Sutton <martin at brandregistrygroup.org>
Datum: 4. Mai 2018 um 09:24:48 MESZ
An: Cancio Jorge BAKOM <Jorge.Cancio at bakom.admin.ch>
Cc: mazzone at ebu.ch <mazzone at ebu.ch>, gnso-newgtld-wg-wt5 at icann.org <gnso-newgtld-wg-wt5 at icann.org>
Betreff: Re: [Gnso-newgtld-wg-wt5] Conference call: city names

Jorge,

I am not a lawyer and I think many others in the WT are also non-lawyers, so I am trying to clarify the reach of the laws you have specified and understand this better.

Kind regards,

Martin

Sent from my iPhone

> On 4 May 2018, at 08:18, "Jorge.Cancio at bakom.admin.ch" <Jorge.Cancio at bakom.admin.ch> wrote:
>
> Hi Martin
>
> is that a legal assessment?
>
> As you know, the DNS is global, so a monopolization of say .luzern would have effects in Switzerland and beyond.
>
> The legal challenge would for sure affect the delegation of .luzern worldwide.
>
> ICANN is bound to respect applicable local law.
>
> best
>
> Jorge
>
>
>
> ________________________________
>
> Von: Martin Sutton <martin at brandregistrygroup.org>
> Datum: 4. Mai 2018 um 09:14:41 MESZ
> An: Mazzone, Giacomo <mazzone at ebu.ch>
> Cc: gnso-newgtld-wg-wt5 at icann.org <gnso-newgtld-wg-wt5 at icann.org>
> Betreff: Re: [Gnso-newgtld-wg-wt5] Conference call: city names
>
> Sorry for the message being cut short, here is the last piece:
>
> That would seem to provide the National government the ability to have control over if/who/how a geo TLD could be operated by a local entity. It would not, however, have an impact on an entity outside their jurisdiction that applies for the string, although could use the objection process if it had strong concerns with the application.
>
> Please correct if I have not stated this properly.
>
> Kind regards,
>
> Martin
>
> Sent from my iPhone
>
>> On 4 May 2018, at 08:09, Martin Sutton <martin at brandregistrygroup.org> wrote:
>>
>> That would seem to provide the National government the ability to have control over if/who/how a geo TLD could be operated by a local entity. It would not, however, have the
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