[Gnso-newgtld-wg] - Specification 13

Aikman-Scalese, Anne AAikman at lrrc.com
Fri Aug 16 17:28:36 UTC 2019 

Kurt,
I love what you have done with .ART but I think the issue of “value to the DNS” is a very slippery slope.  I don’t think ICANN should be involved in making content judgments.  That is far outside the mission.   Maybe if we could develop an objective scoring system that works to classify a Public Interest category, but that would be highly debated I am sure.  Of course, there could also be a requirement that brands set up a special space for generic use of the TLD but I can’t really see having them sell domain names since Spec 13 assumes closed registry and no general sales to the public.

Regarding Alex suggestion that Coach is not well known and is “free-riding”, I respectfully disagree.  I  don’t represent Coach, but I am certain this company has spent many millions to advertising and quality control in order to promote its brand.  Coach has branded stores all over the world: e.g. https://www.kansai-airport.or.jp/en/shop-and-dine/shop/s029

The .visa TLD ALREADY BELONGS TO VISA. https://usa.visa.com/legal/visa-nic.html
I think that is only because no one applied for the generic.  We would have to take another look at the 2012 cases, e.g. Coach, Polo, etc, but my recollection is that when anyone applies for the generic, brands tend to lose. Here is what happened in .polo:   https://domainnamewire.com/2013/10/16/polo-sport-beats-polo-brand-in-polo-top-level-domain-name-dispute/

So I have to agree with Mark in his reply to Alex.  Brands are not really treated that well in the ICANN space – especially not now.  My point of view, of course, is that when brands are not treated well, consumers are at risk.  These risks include health, safety, phishing, fundraising scams, counterfeits, and all sorts of abuses.  I see .BRANDS as perhaps one of the only ways going forward in an unlimited gTLD environment that brands will be able to verify authentic goods and protect consumers.  Contracted parties are, I think, aware of this, because they have been meeting with Pharma for a while.

There is a lot in the Final Report from Consumer Trust and Confidence that still needs to be addressed as per the ICANN Board’s direction to Sub Pro to do so.

Anne

From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces at icann.org> On Behalf Of Kurt Pritz
Sent: Wednesday, August 14, 2019 4:25 PM
To: gnso-newgtld-wg at icann.org
Subject: Re: [Gnso-newgtld-wg] - Specification 13

[EXTERNAL]
________________________________
I’d like to chip in with two thoughts:

One, I think we should discuss the value a TLD string and operator can bring to the domain name space rather than reducing the discussion whether it is a famous mark or a “generic” word. (Maybe in the next round we can outlaw the use of “generic” and go to “dictionary” as has been previously discussed.) Put another way, our job as policy makersis to perturb the current policy in a way that increases the value of domain name to the domain name space or the internet-using public.

I think “visa” is a famous brand and a dictionary word. The question is which application would bring more value to the name space? The answer, of course, is, “it depends.” If Visa Inc. acquires .visa and uses the code of conduct exemption to provide services to it millions of customers, that is a lot of value and should be favored over a possible application for an operator of a generic .visa TLD. If Visa Inc. acquires .visa to protect its mark, not so much.

Code of conduct exemptions should be based on a value-added service that require the exemption to be successful. Owning a trademark can be tangentially related (i.e., correlated) to providing value based on the exemption but is not necessary.

This brings me to point Two.

The current code of conduct stifles innovation; exemptions should be available to models (other than those owned by trademarks) that provide value. The are many entities that can add value that do not possess a trademark. Libraries can catalogue books using domains; companies can maintain inventories and manage logistics; museums can use domains to catalogue their art works and artifacts to make their objects more accessible.

Neither should the code of conduct exemption be all or nothing. Partial exemptions should be available for TLDs to offer more than one product. By way of example (and for transparency) I work with the .ART registry that has developed a significant innovation but cannot offer it and “regular domain” because of ICANN rules. The code of conduct can remain in place for the use of domains as developed back in the 1900s but relaxed to encourage innovation. (Maybe we should change the titel form “code of conduct’ to "regulatory restrictions.”)

Specification 13 was written as it is because trademark owners have great influence with ICANN and ICANN likes bright-line rules. We should aspire to something greater: that regulatory restriction exemptions are granted for those with a plan to utilize the TLD in a significant, value-added way.

Sometime ago, we had an extensive discussion that the new gTLD policy should be augmented to encourage innovation. This is an opportunity to remove one of the strangleholds on it.

Thank you for reading this.

Kurt



On Aug 14, 2019, at 4:23 PM, Alexander Schubert <alexander at schubert.berlin<mailto:alexander at schubert.berlin>> wrote:


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://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<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?

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 o
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