[Gnso-newgtld-wg] - Specification 13

Wed Aug 14 21:29:44 UTC 2019

Alex,

I don’t understand your question.  Yes it is correct that ONLY trademark based applications can qualify for Spec 13 and that applications based on generic terms cannot.  However, I never said that trademark applications based on “generic terms” can’t qualify for Spec 13. I quoted directly from Spec 13 which said that generic TLDs will not qualify.  Trademarks, by their nature, are not generic because they do not describe a category of goods and services – they are in indicator of source.  Just because the word or words in a trademark could be generic in one context does not mean they cannot be trademarks in another- e.g. VISA for credit cards and ORANGE for telecom services.  ‘protectable under applicable law” generally would mean national law but could also be international law as in the case of regional trademarks or famous marks that are protected by treaty or statute.

Marc H. Trachtenberg
Shareholder
Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601
Tel 312.456.1020
Mobile 773.677.3305
trachtenbergm at gtlaw.com<mailto:trachtenbergm at gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/>

[Greenberg Traurig]

From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces at icann.org] On Behalf Of Alexander Schubert
Sent: Wednesday, August 14, 2019 4:12 PM
To: gnso-newgtld-wg at icann.org
Subject: Re: [Gnso-newgtld-wg] - Specification 13

Marc,

If I understand correctly then ONLY trademark based applications can have a Spec 13; right?

You claimed in your initial posting that TM applications based on "generic terms" can't get a Spec 13!

Are you standing by this claim - or not?

Also "protectable under applicable law" - does that mean "national law" - as in law in the jurisdiction of the country the string is trademarked in?

Alexander

-------- Original message --------
From: trachtenbergm at gtlaw.com<mailto:trachtenbergm at gtlaw.com>
Date: 8/14/19 21:16 (GMT+02:00)
To: alexander at schubert.berlin<mailto:alexander at schubert.berlin>, gnso-newgtld-wg at icann.org<mailto:gnso-newgtld-wg at icann.org>
Subject: RE: [Gnso-newgtld-wg] - Specification 13

Alex,

These applications are for trademarks, not generic terms, and at least VISA and DISCOVER are famous and well-known brand across the globe.  You might even have one in your wallet.

Best regards,

Marc H. Trachtenberg
Shareholder
Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601
Tel 312.456.1020
Mobile 773.677.3305
trachtenbergm at gtlaw.com<mailto:trachtenbergm at gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/>

[Greenberg Traurig]

From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces at icann.org] On Behalf Of Alexander Schubert
Sent: Wednesday, August 14, 2019 10:47 AM
To: gnso-newgtld-wg at icann.org<mailto:gnso-newgtld-wg at icann.org>
Subject: Re: [Gnso-newgtld-wg] - Specification 13

Dear Marc,

I might misinterpret your suggestion – but you are saying there are no generic term based applications such as “smart”, “visa” or “discovery” have a Spec 13 in their contract? (I checked these three – and they seem to have a Spec 13 in their contracts – I assume when checking all the other generic keyword based applications the same will occur).

And well: You need to register with the TM Clearinghouse: easy thing to do; the hurdles for that are very low (I have done TMCH applications for trademarks). Plus I am taking about a “real brand” – albeit a small one. So a small shoe brand “SHANGHAI” will easily meet all requirements for a spec 13. In my mind – please correct me if I am wrong.

Thanks,

Alexander

From: trachtenbergm at gtlaw.com<mailto:trachtenbergm at gtlaw.com> [mailto:trachtenbergm at gtlaw.com]
Sent: Mittwoch, 14. August 2019 17:51
To: alexander at schubert.berlin<mailto:alexander at schubert.berlin>; gnso-newgtld-wg at icann.org<mailto:gnso-newgtld-wg at icann.org>
Subject: RE: [Gnso-newgtld-wg] - Specification 13

Alexander,

Please also note that Spec 13 does not require just “some trademark registration” and specifically excludes generic string TLDs.  Christopher conveniently “forgot” to point out that Section 9.3 of Spec 13 requires:

(i) the TLD string is identical to the textual elements protectable under applicable law, of a registered trademark valid under applicable law, which registered trademark:

a. is recorded with, and issued a signed data mark file by, the Trademark Clearinghouse or any successor or alternative trademark validation authority appointed by ICANN, if such trademark meets the eligibility requirements of such validation authority (provided that Registry Operator is not required to maintain such recordation for more than one year);

b. is owned and used by the Registry Operator or its Affiliate in the ordinary course of Registry Operator’s or its Affiliates’ business in connection with the offering of any of the goods and/or services claimed in the trademark registration;

c. was issued to Registry Operator or its Affiliate prior to the filing of its TLD registry application with ICANN;

d. is used throughout the Term continuously in the ordinary course of business of Registry Operator or its Affiliate in connection with the offering of any of the goods and/or services identified in the trademark registration;

e. does not begin with a period or a dot; and

f. is used by Registry Operator or its Affiliate in the conduct of one or more of its businesses that are unrelated to the provision of TLD Registry Services; and

(ii) only Registry Operator, its Affiliates or Trademark Licensees are registrants of domain names in the TLD and control the DNS records associated with domain names at any level in the TLD;

(iii) the TLD is not a Generic String TLD (as defined in Specification 11); and

(iv) Registry Operator has provided ICANN with an accurate and complete copy of such trademark registration.

Best regards,

Marc H. Trachtenberg
Shareholder
Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601
Tel 312.456.1020
Mobile 773.677.3305
trachtenbergm at gtlaw.com<mailto:trachtenbergm at gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/>

[Greenberg Traurig]

From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces at icann.org] On Behalf Of Alexander Schubert
Sent: Wednesday, August 14, 2019 9:42 AM
To: gnso-newgtld-wg at icann.org<mailto:gnso-newgtld-wg at icann.org>
Subject: Re: [Gnso-newgtld-wg] - Specification 13

*EXTERNAL OF GT*
Dear Paul,

Don’t forget: I am ALL FOR famous (well known) TMs to be able to secure their brand as gTLD! I just think for generic term-based and geo name--based  strings a spec 13 application (which locks out the general public) should meet WAY higher hurdles than just “some trademark registration”.

Otherwise: Yes, I have grossly simplified the rather complex intellectual property rights cloud. There are of course IR TMs and (e.g. in Germany) enhanced protections for famous TMs that extend well beyond the goods and services originally protected.

Thanks for clarifying,

Alexander

From: McGrady, Paul D. [mailto:PMcGrady at taftlaw.com]
Sent: Mittwoch, 14. August 2019 17:15
To: alexander at schubert.berlin<mailto:alexander at schubert.berlin>; gnso-newgtld-wg at icann.org<mailto:gnso-newgtld-wg at icann.org>
Subject: RE: [Gnso-newgtld-wg] - Specification 13

Thanks Alexander.

Respectfully, your analysis is incorrect.  While trademarks are local (state), national, or international (EU marks, Benelux marks) in nature there are protections for trademarks found in International law, e.g. the Paris Convention.  I wouldn’t expect anyone in this WG to know that other than the trademark attorneys who participate, so good you brought it up so that I could set the record straight.  Your second notion, that trademarks are limited to corresponding goods/services is mostly true (except in jurisdictions that recognize the doctrine of dilution for the protection of famous marks.  This would be a more interesting point if gTLD registry applications came with restrictions, i.e. that an applicant made it clear that they have applied for .apple to run an apple farm and that they pledge in advance that there will be no second level registrations that would contain terms or could be used to infringe the APPLE mark (for example, no ability to register computer.apple or use store.apple to sell electronics).  Those restrictions would then be incorporated in PICS and brand owners could enforce against registries accordingly.  However, ICANN has put no use requirements in place for applicants to agree to, so until they do, we have to take a broad view of trademark rights in order to protect consumers from confusion and malicious activities.

Best,
Paul

Taft /

Paul D. McGrady /

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