[Gnso-newgtld-wg] Generic words belong to everyone in a business or industry

Tue Feb 18 22:12:21 UTC 2020

Marc, Kathy, et al
I think it’s important for us to get a better sense of exactly what “The Newman Rule” is and how to apply it to the document that will go out for public comment.  As Jeff stated, consistency in application of the Rule is important.  One factor missing from the discussion on today’s call was the significance of action taken by Resolution of the New gTLD Program Committee.  https://www.icann.org/resources/board-material/resolutions-2012-04-10-en

Rationale:  In order to have efficient meetings and take appropriate actions with respect to the New gTLD Program for the current round of the Program and as related to the Applicant Guidebook, the Board decided to create the "New gTLD Program Committee" in accordance with Article XII of the Bylaws and has delegated decision making authority to the Committee as it relates to the New gTLD Program for the current round of the Program which commenced in January 2012 and for the related Applicant Guidebook that applies to this current round.

The discussion on idns this morning did not seem to follow the rule that the WG has been operating under for a couple of years.  This was based on the idea that this was a staff decision, but  I would like to know whether the New gTLD Program Committee endorsed this idn priority processing approach.

Maybe the application of the Newman Rule needs to vary depending on various other circumstances?  This is why we need for Jeff to clarify when he wants to make exceptions to the Newman Rule and on what basis.  Jeff may be suggesting a “corollary” to the Newman Rule based on whether the Board (or the New gTLD Program Committee) ratified the staff’s action or not, but the corollary isn’t really clear based on today’s discussion.  In other words, Jeff seemed to say that (a) the Newman rule does not necessarily apply to idn priority application processing because that approach was developed by Staff and (b) the Newman rule does not apply to Closed Generics because the Board’s resolution was limited to the 2012 round applications.

Having worked on the Policy and Implementation WG (and given what we have gone through in relation to the Predictability Framework), I believe that if we try to distinguish the exceptions based on which case presents “policy” versus which case presents “implementation”, we are going down a rabbit hole that will result in more delay to the next round opening.  On the other hand, we can’t really approach this as a rule that Leadership applies as it determines on a case-by-case basis.   (There is no consistency in that approach.)   And as several WG members pointed out, it’s quite different from the operating presumption that that been applied during the course of this WG’s deliberations.  The operating presumption was:  If no consensus, the 2012 practice stands.

Maybe we should talk about how the proposed variations in the application of  the Newman Rule as described by Leadership on today’s call would apply to other issues finalized after the 2012 AGB was issued (but as to which we may not have Consensus).  Off the top of my head, so far I think the list includes at least the following:

1.  Giving application processing priority to IDNs. Developed by staff but the Board endorsed?  When we say “ Staff” here, do we mean the New gTLD Program Committee?  Because that was a subset of Board members who were not conflicted and they were given full authority by the Board.

2. Closed generic applications – Board resolution says limited to 2012.  GAC Advice says “only if in the Public Interest” which the ICANN Board is trying to define with reference to the policy process.

3. Community Priority Evaluation – further evaluation process developed subsequent to the publication of the AGB.  WG has yet to agree on whether to adopt the point system.

4. Requiring disclosure of all proposed services in response to Question 18 of the application.  (This was in the 2012 AGB but some want to relegate it to the RSEP process so applications can move through more quickly.)

5. Specification 13 – not developed through a policy process but endorsed by the Board.  Was there a Board Resolution?  Action by the New gTLD Program Committee?

6. Name Collision Framework (Resolution passed by the New gTLD Program Committee.)  https://www.icann.org/en/system/files/files/name-collision-framework-30jul14-en.pdf

7. YOUR TOPIC HERE
8. YOUR TOPIC HERE

Anne

From: trachtenbergm at gtlaw.com <trachtenbergm at gtlaw.com>
Sent: Tuesday, February 18, 2020 12:30 PM
To: kathy at kathykleiman.com; Aikman-Scalese, Anne <AAikman at lrrc.com>; gnso-newgtld-wg at icann.org
Subject: RE: [Gnso-newgtld-wg] Generic words belong to everyone in a business or industry

[EXTERNAL]
________________________________
Kathy,

Just for clarity, after all of us have suffered through endless dissecting and re-arguing every other topic and issue including many where there was clearly no consensus and following the Newman rule would have permitted us to simply move on to the next topic, we are now following the Newman rule again when doing so would achieve the result you want?

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
trac at gtlaw.com<mailto:trac 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 Kathy Kleiman
Sent: Tuesday, February 18, 2020 12:53 PM
To: Aikman-Scalese, Anne <AAikman at lrrc.com<mailto:AAikman at lrrc.com>>; gnso-newgtld-wg at icann.org<mailto:gnso-newgtld-wg at icann.org>
Subject: Re: [Gnso-newgtld-wg] Generic words belong to everyone in a business or industry

*EXTERNAL TO GT*

Hi Anne,

Per the discussion in the WG and on the chat, I don't agree that this is the right assessment at all. The Board adopted policy in 2012, and ICANN Org, Board and Community did followed it and dozens of closed applications became open in Round 1. Far more important than the order of processing of applications (an implementation issue), this is a fundamental policy issue. The Board acted, with enormous public input during a formal comment period, and then created the bar. The default by the Newman rule and everything else we follow is to keep this policy, and practice of 2012, absent some overwhelming reason to change it. In all these months, no overwhelming need or agreement has materialized.

Best, Kathy
On 2/18/2020 12:16 PM, Aikman-Scalese, Anne wrote:
HI Kathy,
I do think it’s important for the WG to understand what Jeff’s position is procedurally on this topic.  It appears to me that Paul is correct that there was no policy against Closed Generics in 2012 and that the Board resolution is limited to the 2012 round.  So if we stick with the “ground rules” of the PDP, it appears that the next round will be “open season” for Closed Generic applications.  This is especially important to consider now that the Working Group has taken a “rough consensus” position (with some of us dissenting)  that going forward, if a string is applied for in the next round, that application will act as a complete bar to applications for the same string in any subsequent round.

I would strongly advocate for skipping this topic in the next call and scheduling it for the F2F meeting.

Anne

From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces at icann.org><mailto:gnso-newgtld-wg-bounces at icann.org> On Behalf Of Kathy Kleiman
Sent: Tuesday, February 18, 2020 8:36 AM
To: gnso-newgtld-wg at icann.org<mailto:gnso-newgtld-wg at icann.org>
Subject: [Gnso-newgtld-wg] Generic words belong to everyone in a business or industry

[EXTERNAL]
________________________________

As we revisit the topic of Closed Generics, I would like to share a few thoughts as a reminder on how this issue (of "generic words") has been dealt with in other forums. This is a long-established issue...

1) Trademark Manual of Examining Procedure, US Trademark Office:

"Generic terms are incapable of functioning as marks denoting source, and are not registrable on the Principal Register under §2(f) or on the Supplemental Register." 807.14(e)(ii)

2) Our own Community Objection process reviewed and raised the same deep concerns for gTLDs in which the applicant (a competitor in a field)

ICC New gTLD Community Objections determination:  "The establishment of unrestricted, exclusive rights to a gTLD that is strongly associated with a certain community or communities, particularly where those communities are, or are likely to be, active in the Internet sphere seems to me inherently detrimental to those communities' interests."  [Note: the "communities" being referred to here are commercial communities.  The issue of a closed .MOBILE was raised by the CTIA which represents the US mobile wireless industry.  1-1316-6133

Best, Kathy

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