[Gnso-newgtld-wg-wt5] Follow up on non-capital city names

Thu Aug 29 13:03:29 UTC 2019

Dear all,

To respond to the most recent concerns that have been raised on the list.

For background information, dotBrands are defined in Specification 13 section 9.3 (I have provided a link to the full text of Specification 13 here https://newgtlds.icann.org/sites/default/files/agreements/agreement-approved-specification-13-31jul17-en.pdf). I would also like to reiterate that dotBrands do not receive any priority in the resolution of contention sets. However, community applicants do receive priority for their applied for string.

The proposed text Alexander highlighted is a genuine clarification for potential applicants and does not create any rights or priorities. It merely clarifies that operating a TLD as a dotBrand is a non-geographic use of a string.

On the issue of licensees, "trademark licensees" has a specific definition under Specification 13 and is set out in section 9.5. I have copied 9.5 here and flag (ii) and (iv) in particular:

9.5 "Trademark Licensee" means any corporation, partnership, limited liability company or similar legal entity (and not a person) that has a written trademark license agreement with Registry Operator or its Affiliate, for use of the registered trademark owned by Registry Operator or its Affiliate, the textual elements of which correspond exactly to the .Brand TLD string operated by Registry Operator, where:
(i) such license is valid under applicable law;
(ii) such license is for the use of such trademark in the regular course of that entity's business outside of the provision of TLD Registry Services, and is not primarily for the purpose of enabling registration or use of domain names in the TLD;
(iii) such trademark is used continuously in that entity's business throughout the Term; and
(iv) the domain names in the TLD registered to the Trademark Licensee are required to be used for the promotion, support, distribution, sales or other services reasonably related to any of the goods and/or services identified in the trademark registration.

The way that 9.5 is written means that to be a trademark licensee for the purposes of Specification 13, the purported licensee has to meet all four criteria.

Hope this helps and addresses the concerns raised.

Sophie

Sophie Hey
Policy Advisor
Valideus
D: +44 (0) 20 7421 8252
E: sophie.hey at valideus.com<mailto:sophie.hey at valideus.com>

From: Gnso-newgtld-wg-wt5 <gnso-newgtld-wg-wt5-bounces at icann.org> On Behalf Of Alexander Schubert
Sent: 28 August 2019 19:57
To: gnso-newgtld-wg-wt5 at icann.org
Subject: Re: [Gnso-newgtld-wg-wt5] Follow up on non-capital city names

Dear Sophie,

You are arguing for the addition of this policy piece:
"....For the avoidance of doubt, if an applicant declares in their application that they will operate the TLD exclusively as a dotBrand, then this is not a use of the TLD for "purposes associated with the city name ....."

This proposal is desired by brand-lobbyists; but by nobody else. You are introducing wide-sweeping rights for entities who invoke Spec 13 - with an unjustified general exoneration (vindication) for Spec 13 applicants in regards to their true intends. Why avoiding doubt via policy - when having doubts is the JOB of the geo-panel?

If your policy addition would be incorporated then city-gTLD applicants could simply apply for the city-name, invoke Spec 13 (the requisite requirements for a Spec 13 designation are easy to meet and do not create any organizational or financial hurdles at all); and voila: they have a city gTLD and can now start to offer domains to interested parties. And to whom would they market these domains? To members of the city-community and domain scalpers of course. Without any repercussions as your policy addition would create a "card-blanche".  They would offer the domains via the registrar channel - just like any other gTLD; with the addition of a "TM License". Spec 13 allows registrations to "Licensees". I am sure there are enough TM jurisdictions where making someone a "licensee" is the easiest thing in the world: your probably just declare them a licensee and that is it.

And you want to create such glaring loophole to fix WHAT exactly? If we add policies we don't do for "convenience"; we do so to fix something. What needs to be fixed here? Brands are scared to "accidentally" have a brand name that is identical to a city? Well: make clear in your application that there is no connotation, targeting or association intended or created by your brand (but don't lie!). If your brand is however CLEARLY living off the reputation of a city - then you will need to talk to the city of course. That's not a "bug" - that's a "feature" in the current AGBs.

It's all in the hands of the brand. Nobody is going to punish you if your brand is accidentally identical to some city. The geo-panel isn't partisan here: they are independent.

My counterproposal: Spec 13 applications should not be permitted for geo-name-based strings at all.

So here we have two proposals:

  1.  Creating wide sweeping additional rights that are supposed to "fix" a problem that doesn't exist in the first place
  2.  Denying Spec 13 for strings that are an exact match with a city-name (maybe with the addition: if the "city proper "has more than 100k inhabitants)

I am supporting proposal 2; and very much oppose proposal 1!

Thanks,

Alexander

From: Gnso-newgtld-wg-wt5 [mailto:gnso-newgtld-wg-wt5-bounces at icann.org] On Behalf Of Sophie Hey
Sent: Wednesday, August 28, 2019 6:39 PM
To: gnso-newgtld-wg-wt5 at icann.org<mailto:gnso-newgtld-wg-wt5 at icann.org>
Subject: [Gnso-newgtld-wg-wt5] Follow up on non-capital city names

All,

Just to follow up on the text which I think could combine the two proposals on non-capital city names. The text additional to the 2012 AGB is in blue. I have incorporated the list from Katrin's proposal into the preamble and the national legislation reference remains in the body of the provision.

Hoping we can come to agreement on this!

Sophie

2. An application for a city name, where the applicant declares that it intends to use the gTLD for purposes associated with the city name.

City names present challenges because city names may also be generic terms or brand names, and in many cases city names are not unique. Unlike other types of geographic names, there are no established lists that can be used as objective references in the evaluation process. However, applicants may find it useful to review the 2017 UN Demographic Yearbook Table 8 to find a list of city names with more than 100,000 inhabitants as a reference point https://unstats.un.org/unsd/<https://unstats.un.org/unsd/demographic-social/products/dyb/documents/dyb2017/table08.pdf>demographic-social<https://unstats.un.org/unsd/demographic-social/products/dyb/documents/dyb2017/table08.pdf>/products/dyb/documents/dyb2017/table08.pdf<https://unstats.un.org/unsd/demographic-social/products/dyb/documents/dyb2017/table08.pdf>. Thus, city names are not universally protected. However, the process does provide a means for cities and applicants to work together where desired.

An application for a city name will be subject to the geographic names requirements (i.e., will require documentation of support or non-objection from the relevant governments or public authorities) if:

  1.  It is clear from applicant statements within the application that the applicant will use the TLD primarily for purposes associated with the city name. For the avoidance of doubt, if an applicant declares in their application that they will operate the TLD exclusively as a dotBrand, then this is not a use of the TLD for "purposes associated with the city name"; and
  2.  The applied-for string is an exact match of a city name as listed on official city documents or as set out in national legislation designating the place as a city.

Sophie Hey
Policy Advisor

Valideus
28-30 Little Russell Street
London WC1A 2HN
United Kingdom

D: +44 (0) 20 7421 8252
T: +44 (0) 20 7421 8299
E: sophie.hey at valideus.com<mailto:sophie.hey at valideus.com>
www.valideus.com<http://www.valideus.com/>

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The contents of this email and any attachments are confidential to the intended recipient. They may not be disclosed, used by or copied in any way by anyone other than the intended recipient. If you have received this message in error, please return it to the sender (deleting the body of the email and attachments in your reply) and immediately and permanently delete it. Please note that the Com Laude Group does not accept any responsibility for viruses and it is your responsibility to scan or otherwise check this email and any attachments. The Com Laude Group does not accept liability for statements which are clearly the sender's own and not made on behalf of the group or one of its member entities. The Com Laude Group includes Nom-IQ Limited t/a Com Laude, a company registered in England and Wales with company number 5047655 and registered office at 28-30 Little Russell Street, London, WC1A 2HN England; Valideus Limited, a company registered in England and Wales with company number 06181291 and registered office at 28-30 Little Russell Street, London, WC1A 2HN England; Demys Limited, a company registered in Scotland with company number SC197176, having its registered office at 33 Melville Street, Edinburgh, Lothian, EH3 7JF Scotland; Consonum, Inc. dba Com Laude USA and Valideus USA, headquartered at 1751 Pinnacle Drive, Suite 600, McLean, VA 22102, USA; Com Laude (Japan) Corporation, a company registered in Japan having its registered office at Suite 319,1-3-21 Shinkawa, Chuo-ku, Tokyo, 104-0033, Japan. For further information see www.comlaude.com<https://comlaude.com>
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