I agree this is an issue the BC should address, as it is another bad precedent of “GAC Rule”.

Phil, you state the US legal position re TLD strings as trademarks, but outside the US, at OHIM, in Denmark and quite a few other countries, trademark authorities have granted trademark registration to TLD strings, covering domain registry services and a wide variety of ancillary or additional services.

Mike Rodenbaugh

RODENBAUGH LAW

Tel/Fax: +1.415.738.8087

http://rodenbaugh.com

From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Phil Corwin
Sent: Thursday, August 1, 2013 10:10 AM
To: J. Scott Evans; bc-gnso@icann.org
Subject: RE: [bc-gnso] Report on Geograhic Indicator Debate at Durban

J. Scott:

Without taking any position at this time as to whether the BC should weigh in on this issue or what our position should be, I want to raise a point of information –

As I understand it, your concern is that the GAC has created a regional right in two geographic indicators which does not exist at law and that this is trumping a trademark right registered in multiple nations, including those raising objections . Putting aside the fact that the GAC can object for any reason without citing a legal basis (although the basis or lack thereof can be taken into account by the ICANN Board when considering whether to adopt the GAC advice), what is the strength of the purported trademark rights at the top level of the DNS when, up to now, trademark authorities and courts have held the position that no trademark rights can exist in a TLD because it cannot (examples: .com, .uk) serve as a source identifier? I concede that this view could change for at least some TLDs (e.g., .brands) as the new ones roll out, but that is the state of the law at this time as I understand it.

Thanks for any light you can shed on this question.

Regards,

Philip

Philip S. Corwin, Founding Principal

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From: J. Scott Evans [mailto:jscottevans@yahoo.com]
Sent: Thursday, August 01, 2013 12:10 PM
To: Phil Corwin; bc-gnso@icann.org
Subject: RE: [bc-gnso] Report on Geograhic Indicator Debate at Durban

I am telling you all this is a dangerous precedent. I hereby request that the BC take up this issue and develop a formal opinion in this specific issue and the broader issue of the GAC's role.

I am happy to lead this effort.

J. Scott

Sent from Yahoo! Mail for iPhone

From: Phil Corwin <psc@vlaw-dc.com>;
To: bc-gnso@icann.org <bc-gnso@icann.org>;
Subject: [bc-gnso] Report on Geograhic Indicator Debate at Durban
Sent: Thu, Aug 1, 2013 3:58:37 PM

http://www.ip-watch.org/2013/08/01/governments-disagree-on-geographical-indication-protection-at-tld-level/?utm_source=post&utm_medium=email&utm_campaign=alerts