[Gnso-newgtld-wg] - Specification 13

Thu Aug 15 09:28:20 UTC 2019

I can't help but feel a strong wave of deja vu when I look at the thread of emails in relation to geographic terms vs generic vs brands, as these reflect the lengthy discussions and debates within WT5. Rather than regurgitate these, I would recommend the related discussions be directed to WT5, or, if it has already been covered umpteen times, await the output from WT5 to the plenary.

I sincerely hope this is not an attempt to resurface repeated discussions as we try to draw out conclusions and recommendations to put forward to the full WG.

I also note the various comments regarding application fees which, to some, appears to be a major factor for an applicant and their decision to apply.  I think this is simplistic approach; there are many considerations, including the ongoing cost of operating a registry (which is far greater than the ICANN annual fees) and the associated responsibilities and contractual obligations this entails, notwithstanding the complexities of the application process itself (evaluations, objections, etc). Granted, those that intend to operate registries as a business will seek to generate income from selling domains but other models, particular brands, will be cost centres.

Hence, I think Alexandar is getting over-excited about the cobbler in Shanghai - I'm not convinced he will jump at the chance of applying - far too many barriers outlined above. However, if his business expands and he ends up with 30 million customers around the world, it may be something he considers in order to protect his business and safeguard his customers.  That may take some time, so if someone wants to apply for Shanghai to operate as a geoTLD, they can apply.

Let's be realistic.

Kind regards,

Martin

?Martin Sutton

martin at brandregistrygroup.org

Brand Registry Group

The Association for Brands at the Top Level

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From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces at icann.org> on behalf of Alan Greenberg <alan.greenberg at mcgill.ca>
Sent: 15 August 2019 03:02
To: gnso-newgtld-wg at icann.org <gnso-newgtld-wg at icann.org>; Volker Greimann <vgreimann at key-systems.net>; Alexander Schubert <alexander at schubert.berlin>
Cc: gnso-newgtld-wg at icann.org <gnso-newgtld-wg at icann.org>
Subject: Re: [Gnso-newgtld-wg] - Specification 13

Volker, we have for a long time talked about a minimum price below which we should not go. We have never set the amount nor discussed what should be done with the "excess".

Alan
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Sent from my mobile. Please excuse brevity and typos.

On August 14, 2019 6:58:02 PM EDT, Volker Greimann <vgreimann at key-systems.net> wrote:
That seems to fly in the face of the cost recovery principle. Cost should be just that - cost of icann to provide the service. No more no less! Artificially inflating the application fees to serve other purposes is not advisable as it suggests icann is in it for the profit...

On Thu 15. Aug 2019 at 00:54, Alexander Schubert <alexander at schubert.berlin> wrote:
Hi,

I agree with your concerns of gaming - and suggest since a long time to keep application fees at minimum in the 6 figures range (fee FLOOR!). If we go to a fee floor of US $25k then all hell would break lose.

And I stated before: I am OK with Apple, Orange and Mango being spec 13 registries (if operated by the affiliated famous brand). The Internet user is more or less expecting it.

I am however NOT OK with unknown (or only nationally known) brands monopolizing geo names or dictionary terms globally via Spec 13.

That's why the invocation of Spec 13 should be ineligible for brands that chose to piggyback on a generic term or geo name. The trademark is legal. But it shouldn't provide base for a GLOBAL blocking of such string - as the general public would be deprived to use the gTLD. These brands are ALREADY "free-riding" - but to block the string globally in the top-level of the DNS is too much.

Btw: this is not about "confusion" - but primarily that Spec 13 blocks public registrations. Once a tiny shoe brand invokes Spec 13 on .shanghai - 24 Million people are deprived to use their identity on the top-level. Forget confusion, national rights or Governments - it's THE PEOPLE who are suffering.

Thanks,

Alexander

Sent from my Samsung device

-------- Original message --------
From: "Aikman-Scalese, Anne" <AAikman at lrrc.com<mailto:AAikman at lrrc.com>>
Date: 8/15/19 00:07 (GMT+02:00)
To: Alexander Schubert <alexander at schubert.berlin>, gnso-newgtld-wg at icann.org<mailto:gnso-newgtld-wg at icann.org>
Cc: Arasteh <kavouss.arasteh at gmail.com<mailto:kavouss.arasteh at gmail.com>>
Subject: RE: [Gnso-newgtld-wg] - Specification 13

KAVOUSS – you asked me about the Specification 13 discussion – please see the thread below – maybe read from the bottom.  Anne

Alexander,

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.  For example,  if a large online retailer or multinational high tech company (such as major search engine provider) wanted to apply for a number of .brands and then set those up within its system and offer those to the brands as an “online sales service”, nothing would stop them other than a well-crafted Legal Rights Objection.

Anne

From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces at icann.org<mailto:gnso-newgtld-wg-bounces at icann.org>> On Behalf Of Alexander Schubert
Sent: Wednesday, August 14, 2019 1:19 PM
To: gnso-newgtld-wg at icann.org<mailto:gnso-newgtld-wg at icann.org>
Subject: Re: [Gnso-newgtld-wg] - Specification 13

[EXTERNAL]

________________________________

Rubens,

like "visa" for "visas"? Or "orange" for "oranges"?

Why did they got a Spec13?

Alexander

Sent from my Samsung device

-------- Original message --------
From: Rubens Kuhl <rubensk at nic.br<mailto:rubensk at nic.br>>
Date: 8/14/19 22:18 (GMT+02:00)
To: trachtenbergm at gtlaw.com<mailto:trachtenbergm at gtlaw.com>
Cc: 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

Note that generic strings are defined in the RA in a way much narrower than the commonplace definition of a generic term.

"“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."

Rubens

> Em 14 de ago de 2019, à(s) 11:51:000, Marc Trachtenberg via Gnso-newgtld-wg <gnso-newgtld-wg at icann.org<mailto:gnso-newgtld-wg at icann.org>> escreveu:
>
> 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<https://www.google.com/maps/search/77+West+Wacker+Drive+%7C+Suite+3100+%7C+Chicago,+IL+60601?entry=gmail&source=g>
> Tel 312.456.1020
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> <image001.jpg>
>
> 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 / Partner
> Taft Stettinius & Hollister LLP
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> From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces at icann.org<mailto:gnso-newgtld-wg-bounces at icann.org>> On Behalf Of Alexander Schubert
> Sent: Wednesday, August 14, 2019 8:55 AM
> To: gnso-newgtld-wg at icann.org<mailto:gnso-newgtld-wg at icann.org>
> Subject: Re: [Gnso-newgtld-wg] - Specification 13
>
> Christopher,
>

> Brilliant. You pointed out an important factor that the brand lobby conveniently “forgot” to point out:
>
> The brand lobby claims that TM law is international law – and therefore protected brands were also protected in their representation on the top-level in the DNS. This however falls short (and btw THANKS to your excellent input here Christopher) on not just ONE but even TWO levels:
>
> • Most trademarks (and by extension all “brands”) are protected on NATIONAL level – while a gTLD in the DNS is a global registration! At bare minimum such TM should be valid in e.g. the majority of all nations (aka: more than 90).
> • Trademarks do NOT protect a “string” – they always ONLY protect the usage of a given string in connection with a very, very narrow defined set of goods and services. The “APPLE” TM doesn’t protect “APPLE” – it protects the USAGE (and in commerce only!) of “APPLE” for branding computers, laptops, etc! Of 100% of goods and services globally this protects just a few dozen out of hundreds of millions of potential use cases. It’s an INCREDIBLE narrow defined protection. There could be literally MILLIONS of trademarks “APPLE” globally - peacefully living in coexistence.  But there can only be ONE gTLD “.apple”.
>
> Putting 1 and 2 together I think we might have to rethink spec 13 altogether. At BARE MINIMUM spec 13 should NOT be available for geo-name-based and generic dictionary keyword-based strings. There is neither a global right to such string, nor one that extends over ALL goods and ALL services. These need to be “available for the general public”.
>
> It is perfectly legal to register (and enforce its protection) “APPLE” for computers and laptops. But always at your own risk! And new gTLDs are such “risk”. You wanted a “catchy” brand – and used a common keyword. Fine. Just don’t try to hijack that keyword on global level of the DNS. It is NOT “yours” – you are merely allowed to “use” it. (using APLLE here only as example – and I will exonerate APPLE in the next paragraph).
>
> Spec 13 makes a certain sense – just not for geo names and dictionary terms. If somebody feels the urge and need to “block” such (generic or geo based)  gTLD – they need to meet a certain standard. And a US $299 TM registration doesn’t meet ANY standard. We need to have much higher hurdles – like ACTIVELY USED Trademarks in at least 50 countries aged 5 years or older for example. That would be no problem for the APPLEs, ORANGEs or MANGOs in this world. But just only a “Trademark registration” “SHANGHAI” in one or two jurisdictions? Why empowering them to block the identity of a 24 Million community (in fact larger than 2/3 of all countries globally)?
>
> I am not “anti-brand”: I think large scale brands have the potential to create an IMMENSE visibility for new gTLDs (if after SEVEN YEARS of application they would finally start to make active use of their TLDs). I just want to avoid that tiny players abuse the protections we are installing for big players. This btw protects also the big players! So I WANT that .apple is with APPLE, Inc – because that is PRECISELY what the Internet user assumes it should be! I just would find it very sad if a small, national operating shoe label “Shanghai” got “.shanghai” for US $25k – depriving 24 Million people and their constituents (businesses, organizations, associations, Government) of their ability to identify themselves with .shanghai domains!
>
> So: “THINK BIG” :D
>
> Alexander
>
>
> From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces at icann.org] On Behalf Of lists at christopherwilkinson.eu<mailto:lists at christopherwilkinson.eu>
> Sent: Dienstag, 13. August 2019 20:19
> To: gnso-newgtld-wg at icann.org<mailto:gnso-newgtld-wg at icann.org>
> Subject: Re: [Gnso-newgtld-wg] - Specification 13
>
>
> Good evening:
>
> Following a chat exchange during a recent call,, I have reviewed the Specification 13 .BRAND TLD 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 t

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