[Gnso-newgtld-wg] - Specification 13

Thu Aug 15 00:20:44 UTC 2019

Don’t forget the other requirements for Spec 13, namely that the trademark:

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.

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 7:06 PM
To: gnso-newgtld-wg at icann.org
Subject: Re: [Gnso-newgtld-wg] - Specification 13

I hear you. Question to others:

Do all here agree with Marc, that any generic term based gTLD applicant may invoke Spec 13 as long as they provide a matching TM and TMCH entry (which is super super easy to get: I did many times)?

So you could invoke Spec 13 restrictions (blocking registrations by the public) for ".fuel" or ".dvd" - if you have the matching TM and TMCH entry?

Thanks,

Alexander

Sent from my Samsung device

-------- Original message --------
From: trachtenbergm at gtlaw.com<mailto:trachtenbergm at gtlaw.com>
Date: 8/15/19 02:42 (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,

If Acme Registry applies to operate .Visa in connection with permission to enter a country, then this would be a Generic String per Spec 11.

But if Visa, Inc. is using .VISA in connection with its VISA trademark then the second part of Spec 11, which explains what is NOT a generic string would apply – a string used to distinguish a specific brand of goods, services, groups, organizations or things from those of others.

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 6:23 PM
To: gnso-newgtld-wg at icann.org<mailto:gnso-newgtld-wg at icann.org>
Subject: Re: [Gnso-newgtld-wg] - Specification 13

*EXTERNAL OF GT*

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,

Alexander

Sent from my Samsung device

-------- Original message --------
From: Martin Sutton <martin at brandregistrygroup.org<mailto:martin at brandregistrygroup.org>>
Date: 8/15/19 00:57 (GMT+02:00)
To: "Aikman-Scalese, Anne" <AAikman at lrrc.com<mailto:AAikman at lrrc.com>>
Cc: trachtenbergm at gtlaw.com<mailto:trachtenbergm at gtlaw.com>, 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

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<mailto:AAikman at lrrc.com>> wrote:
.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://urldefense.proofpoint.com/v2/url?u=https-3A__usa.visa.com_legal_visa-2Dnic.html&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=UUOs32AZjl8vCovTaI3_D-BnBrwtt5n12_lt3qDEJLE&m=tlltI5oTU4een6boKlvOhvap5MlNKQoxWRiluwXHqM8&s=HpkJ9QwbBGHjzKy8wnXNfDX9w0YouL5PPXg4GGgcFiE&e= <https://urldefense.proofpoint.com/v2/url?u=https-3A__usa.visa.com_legal_visa-2Dnic.html&d=DwMGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=UIMiIsPj4lrBQqu0zIXIyW41e9-kYB93_zok9R-mjLo&s=XWDBrnbZ6gByRNhXR8bX86Gh9vJC1czYghSnJmzg51Q&e=>
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://urldefense.proofpoint.com/v2/url?u=https-3A__www.orange.com_en_nic_domains&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=UUOs32AZjl8vCovTaI3_D-BnBrwtt5n12_lt3qDEJLE&m=tlltI5oTU4een6boKlvOhvap5MlNKQoxWRiluwXHqM8&s=hPn7B0M9Ta285Hi_dFkpTpOBrH4FfnKd_JHIh4WGyiU&e= <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.orange.com_en_nic_domains&d=DwMGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=UIMiIsPj4lrBQqu0zIXIyW41e9-kYB93_zok9R-mjLo&s=Gq0upJqhuYjRo45e8AgkW4udcyR3Y5nvdXBl0gFYpCU&e=>
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<mailto: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<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

[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<mailto:trachtenbergm at gtlaw.com> | www.gtlaw.com<http://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<mailto: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?

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