July 2020 - Gnso-newgtld-wg

Proposed Compromise Language on Closed Generics
by Jeff Neuman July 10, 2020

July 10, 2020

All, There has been some good conversation on Closed Generics and specifically making sure that we stay completely factual. In light of the e-mails from Paul, Kathy, Anne and others, I wanted to present some text to replace part (a) of the Closed Generics section. That text is below. A couple of notes first. 1. The materials produced by the Working Group are intended to be as objective as possible and not advocacy pieces for one side or the other. I ask that you look at it for its accuracy and not whether the language makes your position look good or not. 2. The Chairs have not cut off any discussions on this topic at all. If you really believe this to be the case, you are free to report this to the GNSO Council Liaison to escalate. But to make it clear, leadership has assessed that this Working Group is not able to come to agreement on either the substance of this issue, or even on what the default/status quo would be. And the discussions so far on the mailing list have proven us correct. So I would ask that everyone please refrain from accusations that we have cut off discussions inappropriately, or to escalate the issue. 3. The cites for the quotes here are in footnotes (which I did not attach to the body of this e-mail, but can if you would like). 4. If the text below is acceptable, then we will make the corresponding changes in the Rationale. 5. Finally, I know Kathy you were only on the phone during the last call where Package 6 (which included Closed Generics) was on the agenda and discussed. If you review the chat transcript, you will see that there was no support for including the terms "ban" or "effective ban" as you raised. Further George Sadowski, who was on the call, in that chat stated that his opinion of what happened was his opinion and not necessarily the opinion of the 2013/2014 Board which is reflected in the resolution itself. I have the utmost respect for George as he knows from our many conversations, and his views are incredibly important to us, but for the text of the Draft Final Report, we have to include the language of the actual resolution and supporting documentation. ********************************************* So, here is the proposed text: No Agreement: The Working Group notes that in the 2012 round of the New gTLD Program, a decision was made by the ICANN Board[1] to either (a) "submit a change request to no longer be an exclusive generic TLD", (b) "withdraw their application" or (c) "maintain their plan to operate an exclusive generic TLD," which would operate to defer their application 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." All applicants in 2012 chose either options (a) or (b). The result was that no exclusive generic gTLDs (also called "Closed Generic" gTLDs) were delegated in the first round. It was the expectation of the ICANN Board that the GNSO would "develop policy advice concerning exclusive generic TLDs"[2]. Although the Working Group has had numerous discussions about this topic, and received extensive comments from the community, including members of the Governmental Advisory Committee, the Working Group was not able to agree on "policy advice concerning exclusive generic TLDs." Questions within the Working Group arose on the impact of a failure to develop any policy advice concerning exclusive generic TLDs. Following the approach the Working Group has taken on other issues where there is no agreement on changes to the implementation of the new gTLD program, the Working Group would normally recommend applying the Status Quo (e.g., no changes recommended). However, in this unique case, the Working Group was not able to agree on what the Status Quo actually was given the Board's expectation that the Working Group would develop policy on this matter. In the absence of agreement on any policy, the Working Group debated, and was unable to come to agreement on, whether the status quo meant that either (i) Closed Generics would be allowed (as there were no provisions in the final Applicant Guidebook that prohibited them), (ii) Closed Generics would not be allowed (in line with part (a) of the Board's resolution), or (iii) Closed Generics would be allowed if they serve a public interest goal (in accordance with the GAC Advice that was accepted by the Board). Jeff Neuman JJN Solutions, LLC Founder & CEO +1.202.549.5079 Vienna, VA 22180 Jeff(a)JJNSolutions.com http://jjnsolutions.com<http://jjnsolutions.com/> ________________________________ [1] https://www.icann.org/resources/board-material/resolutions-new-gtld-2015-06… [2] Ibid.

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Vickey auctions
by Kathy Kleiman July 10, 2020

July 10, 2020

Hi All,For days and months we discussed auctions and ways to improve them. One thing we learned is that Vickrey auctions are inherently fair They provide a process that encourages bidders to bid the price that is fair to them -- and set out exactly what they are willing to pay. They avoid collusion and unfair dealing. I thought we had agreed to recommend this method -- a sealed bid at the time of application. I want to reintroduce some of what we learned about Vickrey Auctions in our long discussions -- and why they are a trusted method of auctions among players large and small and with an array of resources. I think it is the very best way to ensure that smaller parties can prevail from time to time, and that the Global South can obtain a share of new gTLDs. Best, Kathy----------------------------------------------------------------------------------------------------------------------------- WHAT IS A VICKREY AUCTION? https://corporatefinanceinstitute.com/resources/knowledge/other/vickrey-auc… A Vickrey auction is a sealed-bid auction where bidders submit bids without knowing the bids of other people. However, as opposed to other sealed-bid auctions, the price paid is the second-highest bid price and not the winning bid price. The Vickrey auction was named after William Vickrey, a Canadian who won the 1996 Nobel Prize in Economics for his research on asymmetric information [1] in economics. UNDERSTANDING A VICKREY AUCTION In a Vickrey auction, the individual is bidding their true value and are not trying to assess what everyone else is going to bid. Therefore, in a Vickrey auction, the individual is bidding the maximum amount they are willing to pay and are not disadvantaged by it. By utilizing the second-price mechanism [2] in a Vickrey auction, individuals bid truthfully – individuals are motivated to bid their maximum value because the individual understands that if their bid wins, they will only need to pay the second-highest bid value. Links: ------ [1] https://corporatefinanceinstitute.com/resources/knowledge/finance/asymmetri… [2] https://www.researchgate.net/publication/228296863_How_Good_is_the_Generali…

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Reminder: Deadline 9 July - Final Check on Revised Packages 1-5
by Emily Barabas July 10, 2020

July 10, 2020

Dear Working Group members, As a reminder, the deadline to flag errors in the revisions to Packages 1-5 is this Thursday, 9 July. Please see details below. Kind regards, Emily From: Emily Barabas <emily.barabas(a)icann.org> Date: Thursday, 2 July 2020 at 19:37 To: "gnso-newgtld-wg(a)icann.org" <gnso-newgtld-wg(a)icann.org> Subject: Deadline 9 July - Final Check on Revised Packages 1-5 Dear Working Group members, The Draft Final Report sections in packages 1-5 are now revised to reflect discussions on the “Can’t Live With” input received. Please see the revised text made in the working production document here<https://docs.google.com/document/d/1Hh8Wj3IwXvi91Am1k4Zoooct2zmPOmVe1pLmjQL…>. If you find errors in the edits, for example a revision that you believe does not accurately reflect the outcome of discussions about a “Can’t Live With” item, please raise these on the mailing list no later than Thursday 9 July. If you find typos, you can send those directly to staff. At this stage, please do not raise new issues, introduce new “Can’t Live With” items, or re-open deliberations on items in packages 1-5. The purpose of this review is to “sanity check” revisions resulting from your consideration of “Can’t Live With” input. A high-level summary of the “Can’t Live With” input received is available here<https://community.icann.org/display/NGSPP/g.+Draft+Final+Report>. And a detailed log with the outcomes from the WG’s consideration of that input is available here<https://docs.google.com/spreadsheets/d/1blgQjzh_vR7WQ1utsqBnHDb8_b2DD7IDQu-…>. As you review, you will also notice some redline text in part d of each of the report sections. Staff has been fleshing out the descriptions of dependencies between the sections in order to make the report more readable for an external audience. We do not expect that you will find anything surprising in this text, but we wanted to make note of it nonetheless. Kind regards, Emily Emily Barabas Policy Manager, GNSO Policy Development Support Internet Corporation for Assigned Names and Numbers (ICANN) Phone: +31 (0)6 84507976 www.icann.org<http://www.icann.org/>

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Proposed Agenda - New gTLD Subsequent Procedures PDP WG - Thursday, 09 July at 20:00 UTC for 90 Minutes
by Julie Hedlund July 10, 2020

July 10, 2020

Dear WG Members, Please find below the proposed agenda for the WG meeting on Thursday, 09 July 2020 at 20:00 UTC for 90 minutes. Proposed Agenda: 1. Review Agenda/Updates to Statements of Interest 2. Review the updated Predictability Framework, see: https://docs.google.com/document/d/1vBckhFQCCQ-zyvfGGcDB3NWQhodVsffdqbyb6kT…. Also attached, please find the updated concerns/mitigation document and process flow. 3. Review Private Resolutions/Auctions: Hybrid Proposal 2+ and Proposal 4: https://docs.google.com/document/d/1X8F8zHkgMzQg2WqGHpuoEP78rhpDkFOjD2qKrZZ… 4. AOB If you need a dial out or would like to submit an apology, please email gnso-secs(a)icann.org<mailto:gnso-secs@icann.org>. Best, Julie Julie Hedlund, Policy Director

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Post Call | New gTLD Subsequent Procedures Working Group | Thursday, 09 July 2020 at 20:00 UTC
by Andrea Glandon July 9, 2020

July 9, 2020

Dear all, All recordings for the New gTLD Subsequent Procedures Working Group call held on Thursday, 08 July 2020 at 20:00 UTC can be found on the agenda wiki page <https://community.icann.org/x/kwBcC> (attendance included) and the GNSO Master calendar <https://urldefense.proofpoint.com/v2/url?u=http-3A__gnso.icann.org_en_group…> . These include: * Attendance (please let me know if your name has been left off the attendance list) * Audio recording * Zoom chat archive * Zoom recording (including audio, visual, rough transcript) * Transcript As a reminder only members can join the call, observers can listen to the recordings and read the transcript afterwards. Please email gnso-secs(a)icann.org<mailto:gnso-secs@icann.org> if you would like to change your status from observer to member. For additional information, you may consult the mailing list archives <http://mm.icann.org/pipermail/gnso-newgtld-wg/> and the main wiki page<https://community.icann.org/x/RgV1Aw>. Thank you. Kind regards Andrea

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Proposed Agenda - New gTLD Subsequent Procedures PDP WG - Tuesday, 14 July at 03:00 UTC for 90 Minutes
by Julie Hedlund July 9, 2020

July 9, 2020

Dear WG Members, Please find below the proposed agenda for the WG meeting on Tuesday, 14 July 2020 at 03:00 UTC for 90 minutes. Proposed Agenda: 1. Review Agenda/Updates to Statements of Interest 2. Review Private Resolutions/Auctions: Hybrid Proposal 2+ and Proposal 4: https://docs.google.com/document/d/1X8F8zHkgMzQg2WqGHpuoEP78rhpDkFOjD2qKrZZ… 3. Complete Review of the updated Predictability Framework, see: https://docs.google.com/document/d/1vBckhFQCCQ-zyvfGGcDB3NWQhodVsffdqbyb6kT…. Also attached, please find the updated concerns/mitigation document and process flow. 4. AOB If you need a dial out or would like to submit an apology, please email gnso-secs(a)icann.org<mailto:gnso-secs@icann.org>. Best, Julie Julie Hedlund, Policy Director

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Notes and Action Items - New gTLD Subsequent Procedures PDP WG - 09 July at 20:00 UTC
by Julie Hedlund July 9, 2020

July 9, 2020

Dear Working Group members, Please see below the notes from the meeting on 09 July at 20:00 UTC. These high-level notes are designed to help WG members navigate through the content of the call and are not a substitute for the recording, transcript, or the chat, which will be posted at: https://community.icann.org/display/NGSPP/2020-07-09+New+gTLD+Subsequent+Pr…. Kind regards, Julie Notes and Action Items: Actions: Predictability Framework: Annex - Predictability Framework Predictability Framework: Categories of Changes to the New gTLD Program after Approval of the Applicant Guidebook ACTION ITEM: Delete the words “take action on”. b. Operational - Non-Minor ACTION ITEM: Add that the SPIRT will report to the Council. - and - b. Deliberations and rationale for recommendations and/or implementation guidelines Rationale for Recommendation xx (rationale 1): See new text on pages 2-3. ACTION ITEM: Make this language consistent with the new text in b. Operational – Non-Minor: “The Framework seeks to ensure that, where appropriate, to balance the need for ICANN Org to, on the one hand, works with the community in addressing issues and makes changes to the program with the necessary community input.” 2. Possible Policy Level Changes to Existing Processes [Changes that May Have a Policy Implication] “All recommendations are subject to the review and oversight of the GNSO Council, who maintains the discretion on whether or not to adopt the recommendations made to the Council.” ACTION ITEM: Delete “made to the Council.” 3. Possible Policy Level New Proposals [New Proposals that May Have Policy Implication] the Framework will be used to conduct an assessment [to screen if there is a policy implication] and recommend the mechanism by which the solution will be developed ACTION ITEM: Delete “to conduct an assessment”. SPIRT Chartering ACTION ITEM: Create a flow chart/process chart that shows the timing of each activity. d. Conflict of Interest: ACTION ITEM: Add that if an issue may be tied to a member’s application that should be declared. Consider the language from Cheryl: “Annual SOI Updates does not negate the expectations of Continuous Disclosure AT the time, and operating in an abundance of caution.” Length of Term: ACTION ITEM: Review the language to avoid being detailed on the length; also make sure there is consistency in terminology throughout. Notes: 1. Updates to Statements of Interest: No updates provided. 2. Review the updated Predictability Framework, see: https://docs.google.com/document/d/1vBckhFQCCQ-zyvfGGcDB3NWQhodVsffdqbyb6kT…. Also attached, please find the updated concerns/mitigation document and process flow. RE: “The Predictability Framework is principally: A framework for analyzing the type/scope/context of an issue and if already known, the proposed or required Program change, to assist in determining the impact of the change and the process/mechanism that should be followed to address the issue. [The framework is therefore a tool to help the community understand how an issue should be addressed as opposed to determining what the solution to the issue should be; the framework is not a mechanism to develop policy.]” The WG accepts the new text in brackets. New Implementation Guidance -- Implementation Guidance xx (rationale 1) and Implementation Guidance xx (rationale 2) Why this is under the GNSO: -- It is the body charged with developing policy. -- This is a GNSO PDP so we can’t have recommendations that require other SOs/ACs to do something. We can only recommend that this be supervised by the GNSO. Recommendation xx (rationale 2): In the event significant issues arise that require resolution via the Predictability Framework, applicants should be afforded the opportunity to withdraw their application from the process and receive an appropriate refund. -- “appropriate refund” – it was agreed that this was consistent with the schedule. b. Deliberations and rationale for recommendations and/or implementation guidelines Rationale for Recommendation xx (rationale 1): See new text on pages 2-3. ACTION ITEM: Make this language consistent with the new text in b. Operational – Non-Minor: “The Framework seeks to ensure that, where appropriate, to balance the need for ICANN Org to, on the one hand, works with the community in addressing issues and makes changes to the program with the necessary community input.” Annex - Predictability Framework Predictability Framework: Categories of Changes to the New gTLD Program after Approval of the Applicant Guidebook “Only the GNSO Council, ICANN Board or ICANN Org may [take action on] [initiate action on] identify an issue or proposed Program change that needs to be analyzed to determine in which category it belongs. The category will assist in proposing an appropriate course of action for handling the change as outlined below.” ACTION ITEM: Delete the words “take action on”. b. Operational - Non-Minor Process: [ICANN org shall use the Framework to determine if an issue falls in this category. ICANN org must inform the SPIRT of issues arising in this category and the SPIRT will have the option to collaborate with ICANN org as a solution is developed.] All non-minor changes to ICANN Org’s internal processes must be communicated to all impacted (or reasonably foreseeable impacted parties), prior to deployment of the change, [and shall be reported on subsequent to their implementation in a change log, or similar]. Discussion: -- Could we say "ICANN org must inform the GNSO Council and the SPIRT of issues arising in this category and the SPIRT will have the option to collaborate with ICANN org as a solution..." But the change log is after implementation. -- But we may need to may need to modify some language on page 3 of the main Predictability Index text if we go this direction. This is because - On page three of the main Predictability Framework text, we say the following, which conflicts with the language of B currently under discussion. "The Framework seeks to allow ICANN Org to make changes to its internal processes that DO NOT HAVE A MATERIAL IMPACT (emphasis mine) on applicants or other community members, change applications, or impact any of the processes and procedures set forth in the Applicant Guidebook." -- Instead of making it ICANN Org’s obligation it should be the SPIRT obligation. ACTION ITEM: Add that the SPIRT will report to the Council. 2. Possible Policy Level Changes [Changes that May Have a Policy Implication] D. Description: These are potential changes to implementation that may materially differ from the original intent of the policy and could be considered creation of new policy. An example is the development of an application ordering mechanism (e.g., digital archery). Process: If the GNSO Council, ICANN Board or ICANN Org [take action on] [initiate action on] identify an issue that they believe to be in this category, the Framework will be used to conduct an assessment [to screen if there is a policy implication] and recommend the mechanism by which the solution will be developed. Options could include: “All recommendations are subject to the review and oversight of the GNSO Council, who maintains the discretion on whether or not to adopt the recommendations made to the Council.” -- Question: What if the recommendation is made to someone else? Answer: All recommendations do go to the Council. ACTION ITEM: Delete “made to the Council.” 3. Possible Policy Level New Proposals [New Proposals that May Have Policy Implication] the Framework will be used to conduct an assessment [to screen if there is a policy implication] and recommend the mechanism by which the solution will be developed ACTION ITEM: Delete “to conduct an assessment”. SPIRT Chartering ACTION ITEM: Create a flow chart/process chart that shows the timing of each activity. d. Conflict of Interest: -- If something involves only your application that should be called out. -- All applications would be covered by Statements of Participation. -- There already is a requirement to keep SOIs up to date and reminders are made on every call. ACTION ITEM: Add that if an issue may be tied to a member’s application that should be declared. Consider the language from Cheryl: “Annual SOI Updates does not negate the expectations of Continuous Disclosure AT the time, and operating in an abundance of caution.” Length of Term: -- If the membership is open does there need to be a term limit? -- May not need to get into the detail of the length of term. ACTION ITEM: Review the language to avoid being detailed on the length; also make sure there is consistency in terminology throughout.

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Re: [Gnso-newgtld-wg] Deadline 30 June - Comments on Revised Draft Recommendations - Package 6
by Kathy Kleiman July 9, 2020

July 9, 2020

Hi All, On Monday, I objected to the deletions of words that made Section 2.7.3 (Closed Generics) clear and accessible to the larger ICANN Community. The words “ban” and “effectively ban” are clear and accurate; that’s exactly what the Board resolution did in the first round. By the rules of our editing, this objection should act as a bar on the change. We agreed for these “I can’t live with it” changes that we all agree or they don’t go in– and we have set aside many fine changes for lack of full agreement. Further, we heard from George Sadowsky, then a member of the Board, that the 2015 Board resolution on Closed Generics is meant to stand until the GNSO comes up with another policy. If we had any question about what the Board meant, that’s our answer and we should share it. Finally, I heard (and agree) that the question of default is unclear to the public. This procedural question is very important for the public to understand and comment on, and not clear in the current version. I am willing to withdraw my objections if we add further language to a) clarify the Board resolution and GAC advice, and b) make clear the additional question of “default” in future rounds. To that end, I offer the attached language (showing the full edit history of the WG) with these newly-offered changes. Attached. Best, Kathy

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FW: Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration
by Aikman-Scalese, Anne July 8, 2020

July 8, 2020

Dear WG members, Just in case anyone on the list is wondering about the US Supreme Court decision in the booking.com trademark case that Paul and I were discussing on the list, please see attached summary. Again, my view is this is a "secondary meaning" case with uncontested evidence that consumers recognized the domain as a source indicator of the owner's services. Thank you, Anne Anne E. Aikman-Scalese Of Counsel 520.629.4428 office AAikman(a)lrrc.com<mailto:AAikman@lrrc.com> _____________________________ [cid:image001.png@01D64F01.9C6BCB40] Lewis Roca Rothgerber Christie LLP One South Church Avenue, Suite 2000 Tucson, Arizona 85701-1611 lrrc.com<http://lrrc.com/> ________________________________ This message and any attachments are intended only for the use of the individual or entity to which they are addressed. If the reader of this message or an attachment is not the intended recipient or the employee or agent responsible for delivering the message or attachment to the intended recipient you are hereby notified that any dissemination, distribution or copying of this message or any attachment is strictly prohibited. If you have received this communication in error, please notify us immediately by replying to the sender. The information transmitted in this message and any attachments may be privileged, is intended only for the personal and confidential use of the intended recipients, and is covered by the Electronic Communications Privacy Act, 18 U.S.C. ?2510-2521.

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Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registrat
by Aikman-Scalese, Anne July 8, 2020

July 8, 2020

Thanks Marc. By the way, my name is spelled “Anne”. You are equating a domain name registration held to have acquired secondary meaning with a proposed TLD in business to sell domain names. The question in the case was not whether there was any anti-competitive effect. It was whether it was a source indicator. A TLD is not a trademark and it’s tough to see why you think “acquired distinctiveness” applies to a proposed Closed Generic TLD. This is especially true since the only acquired distinctiveness would have to be in relation to operating a registry and authorizing the sale of domain names, not acquired distinctiveness in relation to the common meaning of the generic term. AnnE From: trachtenbergm(a)gtlaw.com <trachtenbergm(a)gtlaw.com> Sent: Wednesday, July 8, 2020 1:15 PM To: Aikman-Scalese, Anne <AAikman(a)lrrc.com>; PMcGrady(a)taftlaw.com; alexander(a)schubert.berlin; gnso-newgtld-wg(a)icann.org Subject: RE: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration [EXTERNAL] ________________________________ Ann, You are responding to arguments that I didn’t make including that the owner of booking.com has a Legal Rights Objection against the possible delegation of .booking. The point is that this case supports that there is no anti-competitive effect or harm from one company owning a domain name consisting of a term that is generic in another context, which I think extends to ownership of a TLD consisting of a term that is generic in another context, and we have yet to see any evidence to the contrary that there is such harm other than the opinions of certain working group members. 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(a)gtlaw.com<mailto:trac@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: Aikman-Scalese, Anne [mailto:AAikman@lrrc.com] Sent: Wednesday, July 8, 2020 2:49 PM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm(a)gtlaw.com<mailto:trachtenbergm@gtlaw.com>>; PMcGrady(a)taftlaw.com<mailto:PMcGrady@taftlaw.com>; alexander(a)schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg(a)icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: RE: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration Marc, If the argument is based on the booking.com case, then a .generic closed TLD has to acquire secondary meaning before it can be afforded a trademark registration. And it has to acquire secondary meaning for the particular services it renders, which is odd in and of itself since the services it renders are the operation of the domain itself and NOT necessarily the services indicated by the generic term so go figure as to the real relationship between secondary meaning trademark law and TLDs. Don’t everybody run to the USPTO at the same time to try to register “.runway” for registry services for a closed TLD, whether you mean for airplane runways or modeling runways. There are lots of applications and registrations for that word already. And the owner of the Closed Generic for .runway is not necessarily known for either one, but could become known for running a TLD where third parties want to buy the second level domain. So the registry isn’t acquiring secondary meaning in the .runway TLD for runway services. Rather it may be able to show that it is adopting a fanciful name for TLD registry services. This is one of the reasons I say the booking.com case is about US acquired secondary meaning trademark law, not about ICANN policy on Closed Generic registries. Don’t think for a minute that the SCOTUS decision means that the owner of booking.com has a Legal Rights Objection against the possible delegation of .booking. Anne From: trachtenbergm(a)gtlaw.com<mailto:trachtenbergm@gtlaw.com> <trachtenbergm(a)gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Sent: Wednesday, July 8, 2020 11:38 AM To: Aikman-Scalese, Anne <AAikman(a)lrrc.com<mailto:AAikman@lrrc.com>>; PMcGrady(a)taftlaw.com<mailto:PMcGrady@taftlaw.com>; alexander(a)schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg(a)icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: RE: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration [EXTERNAL] ________________________________ Ann, While it is true that the registry (technically through registrars) would be selling multiple second level domain name registrations to thousands of different business sources of goods and services, the critical aspect is that every one of those second level domains would emanate from a single source – the registry. There is no other place to get a second level in the “generic” TLD except from the registry. And the registry can have quality control on each of the domains in the form of registration and/or use requirements. A trademark is a source indicator and in this context, the fact that second level sits atop the “generic” TLD indicates that it emanates from a single source the registry. And it doesn’t matter if the consuming public knows who the registry operator is. Trademark law is clear that the trademark must simply communicate that the good or service emanates from a single source, not identify the specific source. Accordingly, in that sense the “generic” TLD is not generic at all and is like booking.com. The businesses using the second level might be using the second level in connection with their business but that does not take away from the potential source indicating function of the TLD in the same way that if Burger King uses Sony TVs to display its branded BK menu it does not take away from the source indicating function of the SONY mark on the TV. 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(a)gtlaw.com<mailto:trac@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces@icann.org] On Behalf Of Aikman-Scalese, Anne Sent: Wednesday, July 8, 2020 11:59 AM To: McGrady, Paul D. <PMcGrady(a)taftlaw.com<mailto:PMcGrady@taftlaw.com>>; alexander(a)schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg(a)icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration *EXTERNAL TO GT* Paul, Your reference to the booking.com ruling as something that “shreds the notion that generic terms somehow cause competitive harm” is surprising to me. The US Supreme Court Ruling concluded, based on evidence below, that booking.com was NOT generic. It’s a secondary meaning case in which the evidence below clearly demonstrated that the consuming public associates the booking.com site with a SINGLE SOURCE indicator of certain services and related reputation in the marketplace. In so holding, the court rejected the USPTO practice of always denying registration to a generic term in combination with .com. Putting aside the question of having US law on secondary meaning govern ICANN policy, I don’t quite understand why you maintain that a generic TLD with multiple second level domain registrations could somehow become a “single source” indicator of quality and service. In other words, booking.com is a particular source of booking services that provides certain guarantees, payment policies, reputation for quality etc. on which consumers rely. Since you make references to a “pre-trademark”, you seem to be saying that a closed generic TLD could eventually operate as a trademark for a “single source” indicator after acquiring secondary meaning in the marketplace, even though the registry would be selling multiple second level domain name registrations to thousands of different business sources of goods and services. Could you please elaborate on your reasoning? Is this about full quality control by the Registry of goods and services being offered under a particular Closed Generic TLD and is that the basis of your argument for the Public Interest being served? For those who may not have time to read the full decision, I have tried to pull out the “nut” of the basis for the holding in the text pasted below. It’s definitely a secondary meaning case and the ruling was that booking.com is NOT generic but is rather a source-indicating trademark via acquired distinctiveness. The Supreme Court affirmed the 4th Circuit and the lower federal district court findings in this regard. The text describing those findings is pasted below. Anne “Relying in significant part on Booking.com’s new evidence of consumer perception, the District Court concluded that “Booking.com”—unlike “booking”—is not generic. The “consuming public,” the court found, “primarily understands that BOOKING.COM does not refer to a genus, rather it is descriptive of services involving ‘booking’ available at that domain name.” Book-ing.com B.V. v. Matal, 278 F. Supp. 3d 891, 918 (2017). Having determined that “Booking.com” is descriptive, the District Court additionally found that the term has acquired secondary meaning as to hotel-reservation services. For those services, the District Court therefore concluded, Booking.com’s marks meet the distinctiveness requirement for registration. The PTO appealed only the District Court’s determination that “Booking.com” is not generic. Finding no error in the District Court’s assessment of how consumers perceived the term “Booking.com,” the Court of Appeals for the Fourth Circuit affirmed the court of first instance’s judgment. In so ruling, the appeals court rejected the PTO’s contention that the combination of “.com” with a generic term like “booking” “is necessarily generic.” 915 F. 3d 171, 184 (2019).” From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces(a)icann.org<mailto:gnso-newgtld-wg-bounces@icann.org>> On Behalf Of McGrady, Paul D. Sent: Wednesday, July 8, 2020 6:31 AM To: alexander(a)schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg(a)icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration [EXTERNAL] ________________________________ Thanks Alexander. I am not making that argument and so won’t address your variant of an argument I’m not making. The point of the booking.com decision is that it shreds the arguments that <. + generic term> TLDs will somehow cause a competitive harm. Shreds. Best, Paul From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces(a)icann.org<mailto:gnso-newgtld-wg-bounces@icann.org>> On Behalf Of Alexander Schubert Sent: Thursday, July 2, 2020 10:48 AM To: gnso-newgtld-wg(a)icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration Paul, I don’t understand: Are you arguing that because Booking.com won the right to deny third parties using the letter combination “booking.com” in connotation with hotel booking services an applicant for a generic string based gTLD could deny public access to the new gTLD namespace? Question: In your opinion; if the domain registration for booking.com would expire, could Booking.com deny the new registrant from offering hotel booking services on a website to which the domain routes – based on their “booking.com” TM (once they have it)? Thanks, Alexander From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces@icann.org] On Behalf Of McGrady, Paul D. Sent: Donnerstag, 2. Juli 2020 18:13 To: Justine Chew <justine.chew(a)gmail.com<mailto:justine.chew@gmail.com>>; Rubens Kuhl <rubensk(a)nic.br<mailto:rubensk@nic.br>> Cc: gnso-newgtld-wg(a)icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration Thanks Justine. Understood. And to be clear, SCOTUS doesn’t address our exact debate (although we are mentioned in the one-man dissent but in that dissent Justice Breyer specifically mentions how new gTLD registries are building brand awareness for their brands, e.g. .club – so again helpful to those who believe <.+generic term> TLDs should remain available as they were in the AGB2012 Guidebook), it just dispatched the fear-of-not-being-able-to-use-the-term argument upon which the <anti-.+ generic term> have built their case and generally takes a big swing at per se rules. Lucky timing, since it gives this WG another chance to actually make Policy as the Board asked us to do rather than just saying “we don’t know.” I understand why those whose position is essentially vitiated by this SCOTUS decision want to push hard to get the topic removed from discussion now that this case it out. Even so, hopefully the Co-chairs will give this the time it was promised. Best, Paul From: Justine Chew <justine.chew(a)gmail.com<mailto:justine.chew@gmail.com>> Sent: Wednesday, July 1, 2020 11:44 PM To: Rubens Kuhl <rubensk(a)nic.br<mailto:rubensk@nic.br>>; McGrady, Paul D. <PMcGrady(a)taftlaw.com<mailto:PMcGrady@taftlaw.com>> Cc: gnso-newgtld-wg(a)icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration Paul, I wasn't suggesting we dismiss what SCOTUS said, but as we well know, there could be room to distinguish court decisions. But I will read the SCOTUS judgment, thanks to you. Rubens, sorry to not be helpful here - I don't know - but it's not inconceivable to me that a (supreme) court of a different jurisdiction may choose to hold a different view. Kind regards, Justine --- On Thu, 2 Jul 2020 at 11:53, Rubens Kuhl <rubensk(a)nic.br<mailto:rubensk@nic.br>> wrote: Is there a position on generic trademarks in general from WIPO ? Rubens On 2 Jul 2020, at 00:05, Justine Chew <justine.chew(a)gmail.com<mailto:justine.chew@gmail.com>> wrote: Hi Paul, thanks for the pdf. I can't help but to wonder what might happen if a (supreme) court of another jurisdiction were to hold a different view. Kind regards, Justine --- On Thu, 2 Jul 2020 at 10:49, McGrady, Paul D. <PMcGrady(a)taftlaw.com<mailto:PMcGrady@taftlaw.com>> wrote: Thanks Justine. I’ve attached a PDF for you. I’m not familiar with the contents of the other commentary article you mention, but I think the actual opinion by Ginsburg makes it clear that the per se rule is quite abolished at the USPTO. The Justice writes: “The PTO’s principal concern is that trademark protection for a term like “Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…>” would hinder competitors. But the PTO does not assert that others seeking to offer online hotel-reservation services need to call their services “Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…>.” Rather, the PTO fears that trademark protection for “Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…>” could exclude or inhibit competitors from using the term “booking” or adopting domain names like “ebooking.com<https://urldefense.com/v3/__http:/ebooking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvo…>” or “hotel-booking.com<https://urldefense.com/v3/__http:/hotel-booking.com/__;!!DUT_TFPxUQ!Wzo-NoI…>.” Brief for Petitioners 27–28. The PTO’s objection, therefore, is not to exclusive use of “Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…>” as a mark, but to undue control over similar language, i.e., “booking,” that others should remain free to use. That concern attends any descriptive mark. Responsive to it, trademark law hems in the scope of such marks short of denying trademark protection altogether. Notably, a competitor’s use does not infringe a mark unless it is likely to confuse consumers. See §§1114(1), 1125(a)(1)(A); 4 McCarthy §23:1.50 (collecting state law). In assessing the likelihood of confusion, courts consider the mark’s distinctiveness: “The weaker a mark, the fewer are the junior uses that will trigger a likelihood of consumer confusion.” 2 id., §11:76. When a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the mark’s owner. Ibid. Similarly, “[i]n a ‘crowded’ field of look-alike marks” (e.g., hotel names including the word “grand”), consumers “may have learned to carefully pick out” one mark from another. Id., §11:85. And even where some consumer confusion exists, the doctrine known as classic fair use, see id., §11:45, protects from liability anyone who uses a descriptive term, “fairly and in good faith” and “otherwise than as a mark,” merely to describe her own goods. 15 U. S. C. §1115(b)(4); see KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U. S. 111, 122–123 (2004). These doctrines guard against the anticompetitive effects the PTO identifies, ensuring that registration of “Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…>” would not yield its holder a monopoly on the term “booking.” Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…> concedes that “Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…>” would be a “weak” mark. Tr. of Oral Arg. 66. See also id., at 42–43, 55. The mark is descriptive, Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…> recognizes, making it “harder . . . to show a likelihood of confusion.” Id., at 43. Furthermore, because its mark is one of many “similarly worded marks,” Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…> accepts that close variations are unlikely to infringe. Id., at 66. And Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…> acknowledges that federal registration of “Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…>” would not prevent competitors from using the word “booking” to describe their own services. Id., at 55.” So, those against <.+ generic term> TLDs are going to have to find some other basis to argue that there will be some sort of harm. This leaves the opponents with (1) being against them because they didn’t apply but their competitors did; (2) they are a registrar that can’t make any money on them; (3) a bias against free speech; (4) a bias against nascent trademarks. None of these are nearly as noble sounding as the fear about competitive harm, but Ginsburg has nicely dispatched that fear. Sure would be nice if the Co-chairs would allow more time, as initially promised, so that we can develop some policy. This decision by SCOTUS is very instructive and we should take the time to understand it and build guardrails around the <.+ generic term> TLDs instead of just throwing our hands up and sending nothing the Board instead of the something they asked us for. Best, Paul From: Justine Chew <justine.chew(a)gmail.com<mailto:justine.chew@gmail.com>> Sent: Wednesday, July 1, 2020 8:51 PM To: McGrady, Paul D. <PMcGrady(a)taftlaw.com<mailto:PMcGrady@taftlaw.com>> Cc: Aikman-Scalese, Anne <AAikman(a)lrrc.com<mailto:AAikman@lrrc.com>>; gnso-newgtld-wg(a)icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…> Non-Generic And Capable Of Federal Trademark Registration Hi Paul, The link you offered is one behind a paywall, so not very useful for me as a non-subscriber. But I note that Winterfeldt IP Group has also released a client advisory which points to uncertainty and important element(s) not raised in the appeal and therefore not considered by SCOTUS. Kind regards, Justine --- On Wed, 1 Jul 2020 at 10:51, McGrady, Paul D. <PMcGrady(a)taftlaw.com<mailto:PMcGrady@taftlaw.com>> wrote: Thanks Anne. All, here is the link to the actual decision: https://www.law360.com/dockets/download/5efb47347da17405e86713cb?doc_url=ht…<https://urldefense.com/v3/__https:/www.law360.com/dockets/download/5efb4734…>. The Supreme Court strikes down the USPTO’s per se rule against allowing trademark registration for generic term + trademark. Justice Ginsburg does a great job of pointing out why people who are worried about a competitor no longer being able to use the generic word (e.g. claims that there would be a monopoly on such a term) have nothing to fear. It’s a great read. I wish we could get her on one of our calls! The same is, of course, true in ICANNland – a so-called closed generic for .hammers would not stop anyone from using “hammers” to identify hammers. And, just like the for the USPTO, a per se rule against them makes no sense. This is, no doubt, why the ICANN Board deferred the 2012 closed generic applications to the upcoming round and asked us to develop policy to deal with those deferred applications. I remain hopeful, against all nay saying to the contrary, that we can still eek out some policy here as the Board asked us to do. Best to all, Paul To receive regular COVID-19 updates from Taft, subscribe here<https://urldefense.com/v3/__https:/www.taftlaw.com/general/subscribe__;!!DU…>. For additional resources, visit Taft's COVID-19 Resource Toolkit<https://urldefense.com/v3/__https:/www.taftlaw.com/general/coronavirus-covi…>. This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential. If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces(a)icann.org<mailto:gnso-newgtld-wg-bounces@icann.org>> On Behalf Of Aikman-Scalese, Anne Sent: Tuesday, June 30, 2020 7:12 PM To: gnso-newgtld-wg(a)icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: [Gnso-newgtld-wg] FW: Client Alert - Supreme Court Finds BOOKING.COM<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…> Non-Generic And Capable Of Federal Trademark Registration Dear WG members, Just in case anyone on the list is wondering about the US Supreme Court decision in the booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…> trademark case that Paul and I were discussing on the list, please see attached summary. Again, my view is this is a “secondary meaning” case with uncontested evidence that consumers recognized the domain as a source indicator of the owner’s services. Thank you, Anne Anne E. 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