The case I found that supports this is a TTAB case from 1993 - Commodore Elec. Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503. That case quoted legislative history that a bona fide intent means an intention that is firm, even though it may be contingent upon the outcome of a future event. From: Matkowsky, Jonathan Sent: Friday, January 28, 2011 4:36 PM To: icann@rodenbaugh.com; bc-gnso@icann.org Subject: RE: [bc-gnso] pressing the BC recommendations for dot-brand TLDs I wanted to also follow up on the issue of bona fide intent, and whether if there are competing applicants, all would have a bona fide intent to use that mark. While it has always been true that intent has to be more than a hope or a wish, the intent can be an external contingency. Jonathan Matkowsky From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Mike Rodenbaugh Sent: Friday, January 28, 2011 3:37 PM To: bc-gnso@icann.org Subject: RE: [bc-gnso] pressing the BC recommendations for dot-brand TLDs Thanks for clarifying. My client's applications were refused by the Examining Attorney, and now are on appeal before the TTAB (still within the PTO). I'll forward you some materials. Use in commerce of a mark in connection with domain registration services can and has occurred without regard to ICANN, therefore a bona fide intent to supply those services need not involve ICANN. To the extent they are relevant, ICANN registry contracts are designed to ensure continuity of registry operations upon termination. So trademark rights should be assigned to the successor registry operator who is continuing to supply services under that TLD string/brand. I see no fundamental reason to ignore the fact that TLDs do function as indicators of source for the registry services provided by that TLD operator. The trademark laws protect colors, sounds, shapes, etc.,... so I would like to understand the logic behind any argument to deny trademark protection to TLD strings. Mike Rodenbaugh RODENBAUGH LAW tel/fax: +1 (415) 738-8087 http://rodenbaugh.com <http://rodenbaugh.com/> From: Deutsch, Sarah B [mailto:sarah.b.deutsch@verizon.com] Sent: Friday, January 28, 2011 3:03 PM To: 'icann@rodenbaugh.com'; bc-gnso@icann.org Subject: RE: [bc-gnso] pressing the BC recommendations for dot-brand TLDs Mike, I make no judgments about your particular clients, am not familiar with the facts surrounding their application and would be happy to see the briefing materials you prepared for the TTAB. I assume this means that your client's application received a final refusal from the PTO? If someone is offering services not related to registry services, I agree this may be a different story. Perhaps the TTAB will opine on this legal issue, but I don't think it's possible to have "bona fide intent to use" a mark when the underlying contract to operate the services under that name have not yet been awarded to you. You -- and other competitive bidders -- may all have a bona fide *hope* that you'll receive such rights, but I don't think your bona fide intent to use can begin until the period until you're actually awarded the contract by ICANN up until the time you start actual use in commerce. Regarding your idea that ICANN simply amend its contract to require registries to disavow their trademark rights after cancellation of their contract, I think it's simpler for the contract to prohibit trademark registrations in the first place, at least for the registry services supplied under the contract. "Disavowing" trademark rights after the fact means the registry must either assign trademark rights to ICANN (do we really want ICANN owning these marks?) or a third party, both of which may be difficult for ICANN to enforce, or abandoning the trademark rights, which is not a great idea from a trademark policy perspective. Sarah Sarah B. Deutsch Vice President & Associate General Counsel Verizon Communications Phone: 703-351-3044 Fax: 703-351-3670 ________________________________ From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Mike Rodenbaugh Sent: Friday, January 28, 2011 5:25 PM To: bc-gnso@icann.org Subject: RE: [bc-gnso] pressing the BC recommendations for dot-brand TLDs Sarah, some further facts for your consideration. ICANN is not the only operator of TLDs, or of domain name registration providers. Registries can and do offer many other services under their TLD string/brand, other than domain registration services. Sometimes several applicants do each have a bona fide intention to use the same trademark in US commerce, even for the same services. This is surely a big reason we have an "intent to use" filing system in the US. I am not aware of any TMEP rule going anywhere near so far as you would interpret it with respect to TLDs as trademarks, and Berry has cited many examples of contrary PTO practice. These issues are thoroughly briefed before the Trademark Trial & Appeal Board in the US now, pending a hearing and a decision with respect to my client TheDot Communications Network LLC and its application to register the ".music" trademark. I would appreciate further comments once you have reviewed some of that briefing, and would appreciate you refraining from suggestions of perjury and bad faith, unless you become aware of the background facts and then have an informed opinion. Re your fear that ICANN would cancel a registry contract, that seems a simple matter to require, as a condition of the contract, that upon termination the applicant shall disavow any trademark rights in the TLD string/brand, at least with respect to domain registration services and ancillary services not offered by the applicant prior to the application. Mike Rodenbaugh RODENBAUGH LAW tel/fax: +1 (415) 738-8087 http://rodenbaugh.com <http://rodenbaugh.com/> From: Deutsch, Sarah B [mailto:sarah.b.deutsch@verizon.com] Sent: Friday, January 28, 2011 1:25 PM To: 'Matkowsky, Jonathan'; icann@rodenbaugh.com; bc-gnso@icann.org Subject: RE: [bc-gnso] pressing the BC recommendations for dot-brand TLDs You can't "acquire distinctiveness" in a trademark you neither own nor use. And when you apply now at the PTO, this is for a registry name that has not even been awarded to you by ICANN. The TLD program has not yet started. ICANN has not yet reviewed any applications or determined who is best positioned to run a registry. If there are competing applicants, do all applicants have a "bona fide" intent to use that mark? Applying for exclusive rights in a trademark in advance of the TLD program seems like a form of TLD front running. For generic terms especially, it's important that registries serve a fiduciary duty to the public. If for compliance or other reasons, ICANN winds up terminating their contracts, they would own exclusive nationwide or global trademarks, which may prevent or conflict with a third party who takes over their operations. This outcome would be exactly the opposite of ICANN's stated intent to encourage innovation and competition. Again, unless you own a prior trademark registration for services or products unrelated to the registry services, to me this is bad policy. Re: Berry's question, the PTO examiners are often inconsistent and sometimes marks will register despite the PTO's rules against it. I would think that marks that have been registered for "registry" type services are at risk for cancellation if someone should choose to challenge them. Sarah Sarah B. Deutsch Vice President & Associate General Counsel Verizon Communications Phone: 703-351-3044 Fax: 703-351-3670 ________________________________ From: Matkowsky, Jonathan [mailto:Jonathan.Matkowsky@LasVegasSands.com] Sent: Friday, January 28, 2011 3:36 PM To: Deutsch, Sarah B; icann@rodenbaugh.com; bc-gnso@icann.org Subject: RE: [bc-gnso] pressing the BC recommendations for dot-brand TLDs The Trademark Manual of Examining Procedure states that if the TLD merely describes the subject or user of the domain space, registration should be refused on the ground that the TLD is merely descriptive of the registry services. Merely descriptive marks can still acquire distinctiveness and become recognized as trademarks. There is common use of ".com" to refer to Internet businesses. You can find "dot-com advertising" in some dictionaries. So it doesn't pass the familiar "who-are-you/what-are-you" test. That will hopefully not be the case as Mike points out, the new TLD program is supposed to encourage innovation and competitive new uses of the DNS. Even when it comes to the addition of a TLD indicator to a descriptive term, the U.S. Court of Appeals for the Federal Circuit has recognized the possibility of a distinctive mark. Jonathan Matkowsky From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Deutsch, Sarah B Sent: Friday, January 28, 2011 11:26 AM To: 'icann@rodenbaugh.com'; bc-gnso@icann.org Subject: RE: [bc-gnso] pressing the BC recommendations for dot-brand TLDs I'd like to differ on a couple of points. I don't think it's difficult to determine what is a brand. Brands are trademarks. Ownership of a federal trademark registration and other global trademark registrations are not only proof of a "brand" but confer nationwide exclusive rights to use that mark for the goods and services in the application. However, I would distinguish that the "brand" be a trademark that is registered and used for goods and services unrelated to registry services. The mark should be used in commerce for unrelated goods and services well before that brand ever gets awarded a TLD. It's my understanding that the BC has long opposed the idea that a TLD alone can become a brand -- only an existing trademark, such as CANON for cameras could be recognized as a brand TLD. BTW, it's my understanding that certain TLD applicants are inappropriately trying to lock up trademark rights in their "brands" at the PTO before ICANN has even awarded them a contract to operate the TLD. Whether ICANN awards them a contract or not, the PTO has rule that in the Trademark Manual of Examining Procedure confirming that registry services alone are not registrable as trademarks. When you apply for a trademark registration, you need to sign a declaration under penalty of perjury that you either have a bona fide intent to use the mark or have rights to use the mark in commerce. I don't see how anyone can sign this declaration in good faith given the fact that ICANN has not yet considered their application, several may be applying for the same TLD and the PTO's rule that such services are unregistrable. Sarah Sarah B. Deutsch Vice President & Associate General Counsel Verizon Communications Phone: 703-351-3044 Fax: 703-351-3670 ________________________________ From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Mike Rodenbaugh Sent: Friday, January 28, 2011 12:27 PM To: bc-gnso@icann.org Subject: RE: [bc-gnso] pressing the BC recommendations for dot-brand TLDs I generally support Berry's comments too. I appreciate the effort to devise clear rules. I offer a few more thoughts fwiw. I have argued that all TLDs are in fact brands of their registries, as by definition they are indicators of source of the registry service. Also I can envision lots of companies, including current registrars and registries, who might benefit from the SRSU model as Berry exemplifies it. I envision that many of them who essentially will allow use of domains to the public (i.e. to all Facebook members, in Berry's example) would have robust content-monitoring systems, and would see benefit to exercising quality control over how all domains within the TLD are used. The 'types' of TLDs that could employ models like this may extend well beyond what we think of 'dotBrands' today (i.e. .canon and .facebook). So long as the TLD operator is ultimately responsible as the registrant as well as the 'registration authority', from the BC's perspective these models should be encouraged. But these models may be disruptive to the status quo in ICANNland, and so did not get very far in the Vertical Integration working group. With the Board's resolution on VI, it seemed that the SRSU and other innovative models were being encouraged. Yet now some elements of the "Code of Conduct" are being proposed as a tool to essentially restrict business models like SRSU, in favor of the incumbent ICANN contracting parties and those who have designed their TLD models around the status quo. The BC should fight against that, as our support of the newTLD program has always been founded on the innovative, competitive new uses of the DNS that are envisioned (and those that have not been envisioned). Best, Mike Mike Rodenbaugh RODENBAUGH LAW tel/fax: +1 (415) 738-8087 http://rodenbaugh.com <http://rodenbaugh.com/> From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of jarkko.ruuska@nokia.com Sent: Friday, January 28, 2011 5:30 AM To: berrycobb@infinityportals.com; bc-gnso@icann.org Subject: RE: [bc-gnso] pressing the BC recommendations for dot-brand TLDs Dear all, Just wanted to express my support for Berry's definition of a Single Registrant TLD. In my opinion this is a simple enough (and probably the only feasible) way to define such a thing. BR, -jr From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of ext Berry Cobb Sent: 28. tammikuuta 2011 2:12 To: 'bc - GNSO list' Subject: RE: [bc-gnso] pressing the BC recommendations for dot-brand TLDs Thank you Steve for updating the BC. Adding to Steve's points...... The reason ICANN Staff, experienced Registry Operators, & some other stakeholders will not sign on for "carve outs" is because there is NO BRIGHT LINE DEFINTION FOR A BRAND. In the context of TLDs what is a BRAND? Is it because they are Fortune 1000 company? Do they own Trademarks in the USA or Europe? Do they earn over $2 billion dollars a year in revenue? Where do we start to draw the line? If some sort of bright line exists, then please share. If it exists then I doubt we would see the pushback experienced today or during the VI WG. In my opinion, if the BC and IPC ever expect any headway regarding the "dot-brand" concept, then we MUST stop using "DOT-BRAND." Within my short ICANN career, one thing I've noticed is that a BRAND is a loaded and charged word among the community. If the BC supports "carve outs," then the case must be presented very specifically and using BRAND is not the way forward. Framing this concept should embrace the use of "Single Registrant" only. Notice how Single User & Multiple User is omitted? The main reason SRSU gained support during VI is only because of the Single Registrant component and it's limitations in how domains were registered and used. Anything beyond SRSU was poking a stick at a tiger. I remind everyone the reasoning for SRSU & SRMU is only because BRAND could not be defined. The following is how I view the possible scope of a "Single Registrant" TLD: * Any 2nd, 3rd, 4th,5th level domains registered are owned and operated only the by the entity that owns the TLD * All WHOIS information for registered 2nd level domains reflect the entity that owns the TLD * If the entity chooses to deploy content or allow use by others external to them, the entity is still responsible or liable for that domain and its content * The entity may register its own domains without equivalent access to other Registrars (RAA concepts should still be used, but ZERO registration fees to ICANN) * The entity may deploy and use its 2nd level domains how it sees fit and the Reserve Names list no longer applies * The entity can "warehouse" domains because it owns the domains * The entity is required to provide Zone File Access for monitoring and compliance * I am sure there are other elements to define the boundary here.... * Therefore, much of the Code of Conduct is meaningless to a "Single Registrant" TLD So, using the Cannon example from Steve below, the above "Single Registrant" concepts can satisfy the "carve outs" defined by the BC. If Cannon chose to register 2nd level domains to their customers, partners & vendors, but it is still designated as the Registrant, then the Single Registrant carve outs still apply. What about the Facebook use case? The one batted around most often is berrycobb.facebook. If Facebook chooses to register and supply me a domain and the defined "Registrant" remains as Facebook and Facebook is willing to take on the risk for the content I deploy on berrycobb.facebook, then I imagine the stakeholders listed above will probably not have much issue with "Single Registrant carve outs." This is the essence to "Single Registrant, Single User" concept. Conversely, any hope for consensus in VI quickly broke down with a use case for "Single Registrant Multiple Users." Using Facebook as an example again.....if FB chose to allow me to register berrycobb.facebook, but instead I am designated as the Registrant, Facebook now competes head to head with other Registrars & Registries in the domain registration business. This is the crux of the debate. Where does one draw the line as Facebook being a social media "BRAND" vs. Facebook a social media "BRAND" that also chooses to register domains and compete in the domain market. If any exceptions or carve outs are given to FB because they are designated a "BRAND", then wouldn't other entities competing for the same registration dollar be at a competitive disadvantage because they are bound by the full extent of the Code of Conduct? Most will recall that I did not support the sections of the BC Position that called for these SR exceptions, because it did not provide a bright line solution for the community. Rather, it called for nebulous, self-serving, carve outs that only provided confusion. I hope we do not repeat the same mistake for future BC position statements. I'm starting to believe that no position is better than a half-baked one. With all this said however, I CAN support a "Single Registrant" concept, just not as we have it defined in our position today. There is no doubt that without some sort of designation for single registrant TLDs the Code of Conduct will certainly interfere with operations and may in fact deter some applications. The challenge is that the "Single Registrant" type of TLD is NOT defined in the Guidebook. Until it is, then any exceptions will not make the next AGB. I am willing to join a team of BC members to develop a specific proposal that not only benefits the BC, but benefits the entire community by relieving confusion. If we expect any momentum, the BC must come together and define a reasonable solution that ICANN Staff and Community can embrace. I am sure my fast-run scope definition above has several holes. So I welcome contributions to fill them. Gripes, complaints, & moans are also welcome if you feel I am way off base. Thank you, B Berry Cobb Infinity Portals LLC berrycobb@infinityportals.com http://infinityportals.com 720.839.5735 From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Steve DelBianco Sent: Thursday, January 27, 2011 12:11 PM To: 'bc - GNSO list' Subject: [bc-gnso] pressing the BC recommendations for dot-brand TLDs To: BC Members Re: ICANN Con call today regarding Registry Contracts I joined a large con call today hosted by ICANN, to discuss new gTLD registy agreement. (see description at bottom of this note) Berry Cobb and Jon Nevett were also on the call. When we got to the Registry Code of Conduct, ICANN staff mentioned they had received many comments on how this would or would not work for dot-brand registries. At that point I brought up the BC concerns expressed in our Guidebook comments filed 6-Dec in Cartagena. I used the example of Canon, since they have said they may pursue a dot-brand. I said Canon might want to operate its own Registrar and restrict registrations to its own operating divisions, like copiers.canon and cameras.canon And Canon might want to manage a big sub-domain of photographers using Canon cameras, like [name].photos.canon I said The Code of Conduct should not restrict dot-brands from using an owned or closely affiliated registrar to register and manage names that it controls. (e.g., for divisions, product lines, locations, customers, affiliates, etc. ) I gave the BC recommendation to insert this clause into the Registry Code of Conduct: 4. Nothing set forth in articles 1, 2, or 3 shall apply to a single-registrant ('dot brand') Registry Operator acting with respect to user data that is under its ownership and control, or with respect to conduct reasonably necessary for the management, operations and purpose of the TLD. An experienced registry operator on the call said our 'carve out' would allow 'gaming' and abuse. (they say that a lot). ICANN Staff is very resistant to any 'carve-out' for dot-brands. They oppose any exception (or even a definition) for dot-brand. Craig Schwartz said ICANN didn't want to get in the business of monitoring Canon's copier business. ( I think that was the point of our recommendation - we don't want ICANN getting involved in how a dot-brand allocates registrations to entities it owns or controls) Will discuss more on our Monday call, I hope. -- Steve DelBianco Executive Director NetChoice http://www.NetChoice.org and http://blog.netchoice.org +1.202.420.7482 Temporary Drafting Group Work Session on New gTLD Base Registry Agreement Issues - To Be Held 27 January 2011 <http://blog.icann.org/2011/01/temporary-drafting-group-work-session-on- new-gtld-base-registry-agreement-issues-%e2%80%93-to-be-held-27-january- 2011/> by Craig Schwartz on January 14, 2011 The Temporary Drafting Group will hold a teleconference on 27 January 2011. The issues open for drafting/discussion during the call will include: * Suggestions for additional language for Specification 9 (the Registry Code of Conduct) * Proposed modifications to conditions related to the termination of a registry services agreement * Suggestions for clarifications to provision requiring advance notice of registry price increases * Concepts for continued registry operations instrument to provide continuity of services Results: This is not a formal public consultation, but is intended to inform drafting which might make up a later public consultation. Any results from the Temporary Drafting Group will be included in documents that will be posted for public comment. No results from the Group will necessarily be used in any agreement drafts, but inputs from the Group will be considered by the ICANN Staff in making recommendations relating to questions discussed or posed to the Group. Session: This third Temporary Drafting Group session will be held via teleconference on 27 January 2011 at 18.00 UTC (http://timeanddate.com/s/1xxz), and is scheduled to last for 120 minutes. Participation: The Temporary Drafting Group was formed in early 2010 and announced in a 28 April 2010 blog <http://blog.icann.org/2010/04/temporary-drafting-group-work-session-on- new-gtld-implementation-issues-%E2%80%93-to-be-held-3-may-2010/> post. If you would like to participate, please submit your name to TDG-Legal@ICANN.org, and we will provide you with information for the call. [THE INFORMATION CONTAINED IN THIS E-MAIL MESSAGE IS INTENDED ONLY FOR THE USE OF THE INDIVIDUAL OR ENTITY NAMED ABOVE. IF THE READER OF THIS MESSAGE IS NOT THE INTENDED RECIPIENT, OR IS NOT THE EMPLOYEE OR AGENT RESPONSIBLE FOR DELIVERING IT TO THE INTENDED RECIPIENT, YOU ARE HEREBY NOTIFIED THAT ANY DISSEMINATION, DISTRIBUTION OR COPYING OF THIS COMMUNICATION IS STRICTLY PROHIBITED. 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