[Gnso-newgtld-wg] - Specification 13

[lists at christopherwilkinson.eu]

Good evening:

Following a chat exchange during a recent call,, I have reviewed the Specification 13 .BRAND TLD <https://newgtlds.icann.org/sites/default/files/agreements/agreement-approved-specification-13-31jul17-en.pdf> provisions, dated 31 July 2017, *
For present purposes I shall limit my comments to section 9. Definitions :
9.3 (i) The header refers to “a registered trademark valid under applicable law …” from which one might infer that it refers to ANY registered trademark. In which case, it would beg the question quid identical trademark strings registered in different jurisdictions and activities?

I believe that the PDP and WT5 have yet to take fully on board that a gTLD confers a global on line monopoly whereas in all other contexts, trademarks and geographical names do not. Thus a .BRAND TLD not only creates additional rights for the Registry, over and above those provided for by the original trademark, but also denies other trademark rights holders from using the same string on-line as a .brand

An analogous issue has arisen in connection with Geographical names.

9.3 ( i) b. The language is rather open ended: “… business in connection with the offering… claimed in the trademark registration;” might be open to quite broad interpretations.

9.3 (iii) “the TLD is not a Generic String”.  This is very welcome. I have argued, with others, ab initio in WT5 that geographical names are not Generic. I am glad to see that there is an approved precedent.

9.5 (iv) Again, the language “…reasonably related to any of the goods and services identified … “ is rather open ended.

How has this been implemented by .brands that have already been delegated?
Thankyou for your interest in this matter
Christopher Wilkinson

* https://newgtlds.icann.org/sites/default/files/agreements/agreement-approved-specification-13-31jul17-en.pdf <https://newgtlds.icann.org/sites/default/files/agreements/agreement-approved-specification-13-31jul17-en.pdf>




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