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

[Greg Shatan]

Jorge,

Your explanation here does not accurately depict trademark law, to the
detriment of trademark owners and consumers alike. I don't have the time to
critique every sentence, but here are a few points.

It is highly unlikely that there would be even a few "Lucerne Foods" in a
given country; more likely there would be only one.  Trademark
registrations are, at the least, national in nature (not merely "local"),
and a trademark registration for Lucerne Foods (or for "Lucerne" for food
products) would almost certainly prevent any other entity from using or
registering that mark in that country.  "Common-law" (unregistered)
trademarks may be more limited geographically, but under US law, a
trademark registration confers "nationwide constructive use" on its owner.

Also, as explained before, while a trademark registration is issued for a
specific classes of goods and services (or subsets of those classes), the
rights prevent use of the same or similar mark for the listed goods and
services and any "related" goods and services.  Your explanation also
ignores the fact that many brandowners have registrations in multiple
classes and in multiple countries.  It's not uncommon for a trademark to be
registered in 60, 70 or even many more countries.  Similarly, it's not
uncommon for a brandowner to have registrations in 5 or 10 (or even 15-20
or more) of the 45 classes of goods and services.  I understand why you
want to minimize trademark rights in this discussion, but your depiction is
not accurate.

I don't think "rarity" is necessarily germane here, and you confer "rarity"
based on a flawed premise.  But if we do think there's something to be said
for "rarity," there will be many times this benefits brandowners or other
potential TLD applicants, and not the entity claiming the geographic term.

Luzern is free to apply for the TLD Luzern, and for the TLD Lucerne.  But
it does not get global monopoly rights.

Also, I think your interpretation of the "applicable law" provision of the
ICANN Bylaws is significantly incorrect.  It does not mean that ICANN must
simultaneously comply with every local law in the world.  That may be a
pleasing interpretation for you in the present circumstance, but I can very
quickly think of many unintended consequences when applied in any other
context, or even this one.

Best regards,

Greg



On Tue, May 8, 2018 at 12:16 AM, <Jorge.Cancio at bakom.admin.ch> wrote:

> Dear David
>
> ICANN has to act in conformity with applicable local law according to its
> Bylaws.
>
> Brand rights are also basically local, but of a limited nature - to
> products/services in a specific category with the goal to avoid consumer
> confusion. There might eg exist hundreds of „lucerne foods“ in each
> country... in Switzerland there may be many such names with „lucerne“ as a
> part of their name.
>
> But political communities with that exact name are more rare. And their
> rights on the name „as such“ are (in Switzerland and other countries) of a
> broad nature under civil right, as I have explained before. They are not
> limited to one specific category etc., not limited to commerce, not limited
> to avoid consumer confusion. Which is all logical as here what is at stake
> is not a commercial identifier but the identification of a political
> entity, with historic, social, economic, cultural aspects.
>
> The DNS is global (and we want to keep it so). If one TLD is called
> „lucerne“ the laws on that name in Switzerland would apply...
>
> Hope that these repeated explanations are clear to everyone by now.
>
> best
>
> Jorge
>
>
>
> ________________________________
>
> Von: David Cake <dave at davecake.net>
> Datum: 8. Mai 2018 um 04:57:15 MESZ
> An: Cancio Jorge BAKOM <Jorge.Cancio at bakom.admin.ch>
> Cc: gregshatanipc at gmail.com <gregshatanipc at gmail.com>,
> gnso-newgtld-wg-wt5 at icann.org <gnso-newgtld-wg-wt5 at icann.org>
> Betreff: Re: [Gnso-newgtld-wg-wt5] Conference call: city names
>
>
>
> On 4 May 2018, at 2:12 pm, Jorge.Cancio at bakom.admin.ch<mailto:
> Jorge.Cancio at bakom.admin.ch> wrote:
>
> Dear Greg
>
> They may have rights in a specific jurisdiction, regarding specific goods
> and services. They have no right on the name as such. Much less globally.
>
>
> Jorge, isn’t your argument that rights in a specific jurisdiction, such as
> a municipality in Switzerland in Swiss law, do give them some global
> rights? I think that claim is weaker than trademark law, which has at least
> strong international agreements about trademark recognition.
>
> David
>
>
>
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