[Gnso-newgtld-wg] - Specification 13
Alexander Schubert
alexander at schubert.berlin
Wed Aug 14 23:23:12 UTC 2019
Hi Martin,quoting from spec 11:"“Generic String” means a string consisting of a word or term that denominates or describes a general class of goods, services, groups, organizations or things, as opposed to distinguishing a specific brand of goods, services, groups, organizations or things from those of others."Would you see "visa" being covered by spec 11? Is there another term for "temporary permission to enter a country" than "visa"?Thanks,AlexanderSent from my Samsung device
-------- Original message --------
From: Martin Sutton <martin at brandregistrygroup.org>
Date: 8/15/19 00:57 (GMT+02:00)
To: "Aikman-Scalese, Anne" <AAikman at lrrc.com>
Cc: trachtenbergm at gtlaw.com, alexander at schubert.berlin, gnso-newgtld-wg at icann.org
Subject: Re: [Gnso-newgtld-wg] - Specification 13
Following the email thread, it appears Alexander is focused on the term “Generic String TLD” referred to in Spec 13 but ignoring the definition quoted within Spec 11 that directly relates to this. I can see that Rubens has referred to this in his earlier response
but wanted to flag again as Alexander seems to have ignored this in subsequent replies.
Kind regards,
Martin
Sent from my iPhone
On 14 Aug 2019, at 22:41, Aikman-Scalese, Anne <AAikman at lrrc.com> wrote:
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.Brands have Spec 13 because they are not selling to the public. They are not in the business of selling domain names. That is why they are simpler. In truth, there should be a separate department for processing
.BRAND applications because they are much simpler and far fewer consumer issues at stake.
It would make no sense to apply Spec 13 to entities that are selling domain names.
No one decided that brands could not apply if the brand happened to also be a word that was generic for SOME OTHER good or service. If someone else applied for the generic meaning of the word, then the brand
lost. I hope you are not suggesting that Apple shouldn’t have .apple because it happens to be a fruit? There are so many different possible new gTLDs available that I think it is wrong to conclude that this confers “monopoly” of some sort. What about .applegrowers
or .buyapples or .gotapples .appleorchard or .loveapples.
VISA is clearly a worldwide well-known brand for its global payment technology/credit card services. https://usa.visa.com/legal/visa-nic.html
As far as I know, no one applied for a “generic” .visa or .visas gTLD.
ORANGE is a very well-known brand for Internet services based in France but operating in many countries. It is not for oranges.
https://www.orange.com/en/nic/domains
I am guessing no one applied for oranges as a generic. Otherwise they would have won.
The big gaming issue in the next round is the question whether someone applies for the generic version of a TLD if they know a brand that has a name that can be construed as generic will or may be applying.
If application fees come way down in future, I could spend $50,000 (plus some fees to write up an application and get a pre-qualified Registry Services Provider in place) and then hope the brand (that happens to have a generic name that is fanciful as to its
products) and gamble on the brand(s) me out for much bigger money.
As application fees come down and associated operational plans are standardized, we are not far from a time when well-funded players could speculate in new gTLD names.
Anne
From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces at icann.org>
On Behalf Of Marc Trachtenberg via Gnso-newgtld-wg
Sent: Wednesday, August 14, 2019 2:30 PM
To: alexander at schubert.berlin;
gnso-newgtld-wg at icann.org
Subject: Re: [Gnso-newgtld-wg] - Specification 13
[EXTERNAL]
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 |
www.gtlaw.com
<image001.jpg>
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
Date: 8/14/19 21:16 (GMT+02:00)
To: alexander at schubert.berlin,
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 |
www.gtlaw.com
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
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]
Sent: Mittwoch, 14. August 2019 17:51
To: alexander at schubert.berlin;
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 o
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