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

Alexander Schubert alexander at schubert.berlin
Wed Feb 19 01:35:06 UTC 2020




The gNSO discussed and then decided to NOT create policy around “closed generics” during the 2007 PDP. This resulted in a substantial number of applications for “closed” category defining generic term based new gTLDs.


The board decided AFTER THESE APPLICATIONS WHERE SUBMITTED that the issue was so problematic, that it will force applicants to either withdraw, or revert to open applications. 

I would consider such measure as being “DRASTIC”. The board would have not applied such drastic measure in absence of a “severe problem”.


But better concentrate on this portion:

“….. subject to rules developed for the next round, to allow time for the GNSO to develop policy advice concerning exclusive generic TLDs ….”

In absence of the development of such “rules” (which hasn’t occurred yet) we are stuck with the status quo – and the board has made very clear what that status quo ought to be: NO CLOSED GENERICS. At the very bare minimum the applicant would have to prove that their application serves the Public Interest (e.g. the .disaster example); and then the community would have to be called to decide whether the claim holds water.








From: trachtenbergm at gtlaw.com [mailto:trachtenbergm at gtlaw.com] 
Sent: Dienstag, 18. Februar 2020 17:39
To: alexander at schubert.berlin; gnso-newgtld-wg at icann.org
Subject: RE: [Gnso-newgtld-wg] Generic words belong to everyone in a business or industry




Maybe I am missing something but where in “…. will be deferred to the next round of the New gTLD Program, subject to rules developed for the next round, to allow time for the GNSO to develop policy advice concerning exclusive generic TLDs ….” does the Board clearly say that there is a SEVERE PROBLEM with closed generics?


Best regards,


Marc H. Trachtenberg
Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601
Tel 312.456.1020 

Mobile 773.677.3305

 <mailto:trac at gtlaw.com> trac at gtlaw.com |  <http://www.gtlaw.com/> www.gtlaw.com    



From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces at icann.org] On Behalf Of Alexander Schubert
Sent: Tuesday, February 18, 2020 4:10 PM
To: 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



Dear Group,


Here from the June 2015 board meeting resolutions (these are quotes directly from the ICANN.org website):
https://www.icann.org/resources/board-material/resolutions-new-gtld-2015-06-21-en#2.a <https://urldefense.com/v3/__https:/www.icann.org/resources/board-material/resolutions-new-gtld-2015-06-21-en*2.a__;Iw!!DUT_TFPxUQ!X_ngnJWyBiZ7-KZ3YaRq55G_NVzZHzaTWr-pF2bpTCiST-6sHh6pb8Vejr_-3-6ZuB-yXw$> 


Advise Exclusive Generic Applicants for non-contended strings, or Exclusive Generic Applicants prevailing in contention resolution that they must elect within a reasonably limited time to either:


    submit a change request to no longer be an exclusive generic TLD, and sign the current form of the New gTLD Registry Agreement;


    maintain their plan to operate an exclusive generic TLD. As a result, their application will be deferred to the next round of the New gTLD Program, subject to rules developed for the next round, to allow time for the GNSO to develop policy advice concerning exclusive generic TLDs; or


    withdraw their application for a refund consistent with the refund schedule in the Applicant Guidebook.


I would like to draw emphasis to:


“…. will be deferred to the next round of the New gTLD Program, subject to rules developed for the next round, to allow time for the GNSO to develop policy advice concerning exclusive generic TLDs ….”


The board clearly states that there is a SEVERE PROBLEM, that it denies closed generic applications, that those REMAIN ineligible UNTIL the GNSO has “developed advice concerning exclusive generic gTLDs”. Hairsplitters could argue that this is only true for the 2012 roster. But hey: come on. 


This is in striking contrast to the assentation that the ineligibility where to be restricted to the 2012 round only. The board INSTRUCTED the gNSO to “develop policy advice concerning exclusive generic TLD”, so in absence of a consensus around such policy advice it is self-evident that the board’s concerns aren’t addressed at all; and their “ban” stays active (or we force them to activate it yet again)


We run the risk to look incompetent if we run into this knife yet again: if we (like suggested by some here) maintain that our 2007 PDP was “flawless” – and that we have to repeat this obvious mistake (allowing closed generics) again; then here what will happen:

*	GAC will point out the same as it has done in the 2012 round: asking the board to deny closed generics!
*	The board will note that the gNSO has denied their explicit request to develop new policy advice; and as a result will deny closed generics AGAIN!
*	This creates MASSIVE confusion for applicants; something that we should allow


I assume it would be best if we abide by the Board request to “develop policy advice concerning exclusive generic TLD”. A subgroup was initiated last year – I am in there; but the group was inactive so far. We simply should create policy advice. If there is a consensus around under what set of circumstances allowing closed generics: fine! Then we allow them. If there is no consensus: then I guess we have established just that: No consensus to allow closed generics.

Here a bit more from the June 2015 board resolutions:



    A Policy Development Process with respect to operating exclusive generic strings in the "public interest" should be undertaken by the community. Policy issues on "closed generic" TLDs should be resolved through the multistakeholder process.


    The public interest goal requirement as stated is too general and requires greater specificity for enforceability. The NGPC should add relevant meaning to the "public interest" concept by applying the GNSO rationales regarding the promotion of competition, consumer choice, market differentiation, and geographical and service provider diversity as standards for such affirmative objective showings and findings.


    Safeguards are important when applicants have chosen to apply for closed control of a generic term designating a particular industry where the applicant is engaged in the conduct of business activities in that industry.


    Requiring applicants to demonstrate some additional public interest goal in the context of exclusive registry access for generic strings would reverse the deliberate choices made by the ICANN community in its bottom-up process and impose new evaluation criteria.


    The status quo as set out in the Applicant Guidebook should apply so that both "open" and "closed" registry access for generic strings should continue to be allowed in this first application round, but both should be subject to significant scrutiny after launch by ICANN to ensure that the interests of rights owners and consumers are protected.


So to say that the board decision was only pertaining the first round – but the 2nd round would be “open season for anything” is ignoring the board’s very clear advice. Board resolutions are our “safety valve” – we should try to establish our policies in a way that doesn’t require the board to issue them.


And while we are at it:

Submitting a generic term based gTLD application, trying to “prove public interest” by implementing clear launch phases (e.g. Sunrise), then never living up to such commitment: Should result in the denial of contract renewal after 10 years – at least for the 2nd round participants. If you prove your public interest through public availability (via defined launch periods) – but do not enact any: you have failed to serve the public interest. Why should ICANN renew your contract? It shouldn’t! As always: Exceptions might apply under extraordinary circumstances (Istanbul based .kurds denied to launch via court order for example).








From: Mike Rodenbaugh [mailto:mike at rodenbaugh.com] 
Sent: Dienstag, 18. Februar 2020 16:10
To: Alexander Schubert <alexander at schubert.berlin <mailto:alexander at schubert.berlin> >
Cc: 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


So-called Closed Generics (however anyone may define them) were allowed in 2012, as a Consensus Policy insofar they were very heavily debated by the GNSO for many years, including the same arguments and many of the same participants in today's debate.  And Closed Generics were neither defined nor prohibited in the GNSO Consensus Policy adopted by the Board and then implemented by Staff and GNSO in the AGB.  Thus, Closed Generics were essentially, explicitly allowed -- and unsurprisingly then there was some number of applicants for strings that the Board later unilaterally defined as Closed Generics.


The Board then made a variance to one small part of that Consensus Policy, only as to a specifically defined subset of 2012 applications that the GAC and some others objected to.  The Board specifically said that resolution had no bearing on future GNSO policy work.  That resolution was never discussed or debated by the GNSO, until this PDP.  So, neither the GNSO nor the Board have ever changed the 2012 Consensus Policy that allowed what some call "Closed Generics".  To change it now will require consensus of this WG, which seems unlikely to happen.


Mike Rodenbaugh


tel/fax:  +1.415.738.8087

http://rodenbaugh.law <https://urldefense.com/v3/__http:/rodenbaugh.law__;!!DUT_TFPxUQ!TJdk660_rz8Q-NrHih8ba6pZ5F5q6fKh70zdCooYJrpAq7oNPAlV7GTRT0cY-3TlciA$>  



On Tue, Feb 18, 2020 at 12:26 PM Alexander Schubert <alexander at schubert.berlin <mailto:alexander at schubert.berlin> > wrote:



This is a contradiction. If the board denied “closed generics” (gTLD applications for generic keyword based strings) in 2012 then they did for a REASON. Unless the board specified a “conditional aspect” for that reason then the rationale for that decision hasn’t changed just because a decade went by. So the “ground rule” would be to keep the application rules as they were in 2012 – namely denying closed generics. UNLESS the gNSO develops new recommendations – which then need a new board approval.

Some might argue that in 2012 the “problem” with closed generics wasn’t that bad: only a few dozen generic terms where taken by industry leaders (apparently mostly to just block off the entire vertical). So why bothering?

Well: In 2012 the COST for a new gTLD was enormous! Application writing and submission wasn’t yet streamlined and expensive. Consulting (partly due to a steep “learning curve”) was expensive. Application fees alone where almost US $200k. By definition in 2012 there was no PRECEDENCE that industry leaders would snag up entire category defining killer keyword based gTLDs. The entire “new gTLD” issue was “murky”.

All of this will have DRASTICALLY changed by 2022:

*        There will be a DECADE of public experience and exposure of the new gTLD program and new gTLDs

*        The consulting and application submission related fees will be DRASTICALLY lower – some consultants already offer packages lower than US $30k – which includes application writing, submission, contracting and testing!

*        The application fee will likely be low, too. Some already fabulize about US $25k fee floors – or even BELOW!

*        The “myth” that leading industry giants are massively hoarding “their” verticals (industry defining category killer generic terms) ain’t a “myth” anymore: it’s a viable truth – proven by the 2012 application roster.

*        Consultants will swarm out to big corporations who have ample marketing budgets and inflated egos: “If YOU are not securing ‘.CategoryDefiningKeyword’ then your competition will: be clever and have at minimum a horse in the race: let us apply for it on your behalf”. Image how incredibly STUPID the head of digital marketing of a Multi-Billion corporation looks if their smaller competitor controls  “their” category keyword gTLD: this could cost him his head. In comparison for the price of a half page New York Times ad he could play hero and showcase to his board how “farsighted” he is. 


So if anything then the underlying “problem” that lead the board in 2012 to deny “closed generics” only got worse – MUCH worse: Lower “fees & overall cost” combined with established precedence = disaster!


And while we have an obligation to keep harm away from the Internet community by continuing to deny “closed generics” that logically implies that we also make sure that in the 2nd round there will be no possibility for “effectively closed generics”: namely generic term based open applications that prove their “public interest” by promising launch periods (e.g. the Sunrise period) – but then never EXECUTE the Sunrise period – but rather are closed to the public and still allow the applicant to run 100 domains.  If you have a Sunrise period in your application then you ought to execute that in a reasonable frame of time – or else you render the gTLD “closed”. I suggest we provide 12 month (extendable by another 12 month if reasons are provided for the delay) to launch your Sunrise (if you have one in your application) – but at BARE MINUMUM ICANN should be crystal clear that for registries that have a Sunrise in their application any “contract renewal expectation” will only apply if such Sunrise has been executed. Otherwise industry giants will simply snag up category defining keyword based gTLDs – and leave them inactive – just to make sure they “control the namespace”. Or they use their 100 domains and effectively run it as closed generic.


If the general public (or Congress for that matter) would get wind of how sloppy we are protecting the public interest here: they would go bananas. 






From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces at icann.org <mailto:gnso-newgtld-wg-bounces at icann.org> ] On Behalf Of Aikman-Scalese, Anne
Sent: Dienstag, 18. Februar 2020 12:16
To: Kathy Kleiman <kathy at kathykleiman.com <mailto:kathy at kathykleiman.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


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.




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




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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