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

Tue May 8 06:55:50 UTC 2018

Dear all,

I also feel like the long-standing  work done in the community resulting in the AGB2012 is a compromise that we should keep. Right now a possibility for new and better policy (which will also be a compromise) looks a little blurry to me.

Kind regards,

Sanna Sahlman
Legal Counsel

Fi-domain names
Finnish Communications Regulatory Authority (FICORA)

-----Original Message-----
From: Gnso-newgtld-wg-wt5 [mailto:gnso-newgtld-wg-wt5-bounces at icann.org] On Behalf Of Jorge.Cancio at bakom.admin.ch
Sent: 8. toukokuuta 2018 8:52
To: gregshatanipc at gmail.com
Cc: gnso-newgtld-wg-wt5 at icann.org
Subject: Re: [Gnso-newgtld-wg-wt5] Conference call: city names

Dear Greg

Sorry for my bad English: what I meant is that there are potentially hundreds or thousands of „lucerne foods“, „lucerne salami“, „lucerne plants“, „lucerne wheels“... as long as they do not act in each other‘s category of products or services in given jurisdiction and do not create user confusion.

I understand that you try to make an expansionist interpretation of trademark law. I feel that the key elements of my description are right and for the lawyerly details I would like to defer to Nicks native lawyer/English explanation.

Happy to know your reasons (if any) why the Swiss law would not apply on a „lucerne“ TLD...

It would surprise me that important jurisdictions and their courts, such as the French or German ones, had gotten that wrong... but maybe you can elaborate?

best

Jorge

________________________________

Von: Greg Shatan <gregshatanipc at gmail.com>
Datum: 8. Mai 2018 um 07:36:32 MESZ
An: Cancio Jorge BAKOM <Jorge.Cancio at bakom.admin.ch>
Cc: David Cake <dave at davecake.net>, Icann Gnso Newgtld Wg Wt5 <gnso-newgtld-wg-wt5 at icann.org>
Betreff: Re: [Gnso-newgtld-wg-wt5] Conference call: city names

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<mailto: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<mailto:dave at davecake.net>>
Datum: 8. Mai 2018 um 04:57:15 MESZ
An: Cancio Jorge BAKOM <Jorge.Cancio at bakom.admin.ch<mailto:Jorge.Cancio at bakom.admin.ch>>
Cc: gregshatanipc at gmail.com<mailto:gregshatanipc at gmail.com> <gregshatanipc at gmail.com<mailto:gregshatanipc at gmail.com>>, gnso-newgtld-wg-wt5 at icann.org<mailto:gnso-newgtld-wg-wt5 at icann.org> <gnso-newgtld-wg-wt5 at icann.org<mailto: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><mailto: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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