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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. Aikman-Scalese Of Counsel 520.629.4428 office AAikman(a)lrrc.com<mailto:AAikman@lrrc.com> _____________________________ <image001.png> Lewis Roca Rothgerber Christie LLP One South Church Avenue, Suite 2000 Tucson, Arizona 85701-1611 lrrc.com<https://urldefense.com/v3/__http:/lrrc.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDI…> ________________________________ 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. 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Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration
by Alexander Schubert July 8, 2020

July 8, 2020

Marc,Maybe you see the issue of generic term based new gTLDs a bit too much through the lense of a U.S. lawyer.We introduce new gTLDs to create benefits for the Internet user. Not to "sell out gTLD land".How does it serve the Internet Community when companies own the gTLDs that describe their business sector? Especially when the company is not even making any use of the TLD - not even a DECADE after application submission? That's land grab. AlexanderSent from my Samsung device -------- Original message -------- From: trachtenbergm(a)gtlaw.com Date: 7/8/20 23:15 (GMT+02:00) To: 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 Ann,You are responding to arguments that I didn’t make including that the owner of https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… 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. TrachtenbergShareholderGreenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601Tel 312.456.1020Mobile 773.677.3305trac(a)gtlaw.com<mailto:trac@gtlaw.com> | http://www.gtlaw.com<http://www.gtlaw.com/>[Greenberg Traurig]From: Aikman-Scalese, Anne [mailto:AAikman@lrrc.com]Sent: Wednesday, July 8, 2020 2:49 PMTo: Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm(a)gtlaw.com>; PMcGrady(a)taftlaw.com; alexander(a)schubert.berlin; gnso-newgtld-wg(a)icann.orgSubject: RE: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… Non-Generic And Capable Of Federal Trademark RegistrationMarc,If the argument is based on the https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… 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 https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… 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 https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… has a Legal Rights Objection against the possible delegation of .booking.AnneFrom: trachtenbergm(a)gtlaw.com<mailto:trachtenbergm@gtlaw.com> <trachtenbergm(a)gtlaw.com<mailto:trachtenbergm@gtlaw.com>>Sent: Wednesday, July 8, 2020 11:38 AMTo: 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 https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… 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 https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… . 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. TrachtenbergShareholderGreenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601Tel 312.456.1020Mobile 773.677.3305trac(a)gtlaw.com<mailto:trac@gtlaw.com> | http://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, AnneSent: Wednesday, July 8, 2020 11:59 AMTo: 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 https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… Non-Generic And Capable Of Federal Trademark Registration*EXTERNAL TO GT*Paul,Your reference to the https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… 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 https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… was NOT generic. It’s a secondary meaning case in which the evidence below clearly demonstrated that the consuming public associates the https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… 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, https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… 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 https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… 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 “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1uScyff_bSK1kbH1rxBwx-riYrOHX3Sxbnn7FrD-3FstW-pR70u3uw3amBg$ ”—unlike “booking”—is not generic. The “consuming public,” the court found, “primarily understands that https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… does not refer to a genus, rather it is descriptive of services involving ‘booking’ available at that domain name.” https://urldefense.com/v3/__http://Book-ing.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1… B.V. v. Matal, 278 F. Supp. 3d 891, 918 (2017). Having determined that “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1uScyff_bSK1kbH1rxBwx-riYrOHX3Sxbnn7FrD-3FstW-pR70u3uw3amBg$ ” 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 “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1uScyff_bSK1kbH1rxBwx-riYrOHX3Sxbnn7FrD-3FstW-pR70u3uw3amBg$ ” is not generic. Finding no error in the District Court’s assessment of how consumers perceived the term “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1uScyff_bSK1kbH1rxBwx-riYrOHX3Sxbnn7FrD-3FstW-pR70u3uw3amBg$ ,” 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 AMTo: 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 https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… 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 https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… decision is that it shreds the arguments that <. + generic term> TLDs will somehow cause a competitive harm. Shreds.Best,PaulFrom: Gnso-newgtld-wg <gnso-newgtld-wg-bounces(a)icann.org<mailto:gnso-newgtld-wg-bounces@icann.org>> On Behalf Of Alexander SchubertSent: Thursday, July 2, 2020 10:48 AMTo: gnso-newgtld-wg(a)icann.org<mailto:gnso-newgtld-wg@icann.org>Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… Non-Generic And Capable Of Federal Trademark RegistrationPaul,I don’t understand: Are you arguing that because https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… won the right to deny third parties using the letter combination “https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1uScyff_bSK1kbH1rxBwx-riYrOHX3Sxbnn7FrD-3FstW-pR70u27qIlpRg$ ” 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 https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… would expire, could https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… deny the new registrant from offering hotel booking services on a website to which the domain routes – based on their “https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1uScyff_bSK1kbH1rxBwx-riYrOHX3Sxbnn7FrD-3FstW-pR70u27qIlpRg$ ” TM (once they have it)?Thanks,AlexanderFrom: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces@icann.org] On Behalf Of McGrady, Paul D.Sent: Donnerstag, 2. Juli 2020 18:13To: 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 https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… Non-Generic And Capable Of Federal Trademark RegistrationThanks 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,PaulFrom: Justine Chew <justine.chew(a)gmail.com<mailto:justine.chew@gmail.com>>Sent: Wednesday, July 1, 2020 11:44 PMTo: 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 https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… Non-Generic And Capable Of Federal Trademark RegistrationPaul, 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 ?RubensOn 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 “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1uScyff_bSK1kbH1rxBwx-riYrOHX3Sxbnn7FrD-3FstW-pR70u3uw3amBg$ <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 “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1uScyff_bSK1kbH1rxBwx-riYrOHX3Sxbnn7FrD-3FstW-pR70u3uw3amBg$ <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…>.” Rather, the PTO fears that trademark protection for “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1uScyff_bSK1kbH1rxBwx-riYrOHX3Sxbnn7FrD-3FstW-pR70u3uw3amBg$ <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 “https://urldefense.com/v3/__http://ebooking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1uScyff_bSK1kbH1rxBwx-riYrOHX3Sxbnn7FrD-3FstW-pR70u1HbCmFww$ <https://urldefense.com/v3/__http:/ebooking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvo…>” or “https://urldefense.com/v3/__http://hotel-booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1uScyff_bSK1kbH1rxBwx-riYrOHX3Sxbnn7FrD-3FstW-pR70u3og2z8aQ$ <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 “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1uScyff_bSK1kbH1rxBwx-riYrOHX3Sxbnn7FrD-3FstW-pR70u3uw3amBg$ <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 “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1uScyff_bSK1kbH1rxBwx-riYrOHX3Sxbnn7FrD-3FstW-pR70u3uw3amBg$ <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…>” would not yield its holder a monopoly on the term “booking.” https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…> concedes that “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1uScyff_bSK1kbH1rxBwx-riYrOHX3Sxbnn7FrD-3FstW-pR70u3uw3amBg$ <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, https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… <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,” https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…> accepts that close variations are unlikely to infringe. Id., at 66. And https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…> acknowledges that federal registration of “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1uScyff_bSK1kbH1rxBwx-riYrOHX3Sxbnn7FrD-3FstW-pR70u3uw3amBg$ <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,PaulFrom: Justine Chew <justine.chew(a)gmail.com<mailto:justine.chew@gmail.com>>Sent: Wednesday, July 1, 2020 8:51 PMTo: 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 https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…> Non-Generic And Capable Of Federal Trademark RegistrationHi 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://urldefense.com/v3/__https://www.law360.com/dockets/download/5efb473… <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,PaulTo 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, AnneSent: Tuesday, June 30, 2020 7:12 PMTo: gnso-newgtld-wg(a)icann.org<mailto:gnso-newgtld-wg@icann.org>Subject: [Gnso-newgtld-wg] FW: Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…> Non-Generic And Capable Of Federal Trademark RegistrationDear WG members,Just in case anyone on the list is wondering about the US Supreme Court decision in the https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!Tv2ggmczUKC1u… <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,AnneAnne E. Aikman-ScaleseOf Counsel520.629.4428 officeAAikman(a)lrrc.com<mailto:AAikman@lrrc.com>_____________________________<image001.png>Lewis Roca Rothgerber Christie LLPOne South Church Avenue, Suite 2000Tucson, Arizona 85701-1611https://urldefense.com/v3/__http://lrrc.com__;!!DUT_TFPxUQ!Tv2ggm… <https://urldefense.com/v3/__http:/lrrc.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDI…>________________________________This message and any attachments are intended only for the use of the individual or entity to which they are addressed. 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Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration
by Alexander Schubert July 8, 2020

July 8, 2020

Bad ones are if companies register "their" vertical as gTLD; then simply lock it away and never use it. There is zero benefit for the Internet user in such behavior.I also concur with Rubens that literally nobody on the global scale cares at all about the booking.com case. It's virtually irrelevant outside the U.S. And seemingly the decision clearly SUPPORTS the notion that the average generic-keyword + gTLD is too generic to serve as a TM protecting goods and services described by the keyword - the booking.com case was rather an exception - because their "mark" (name) is so well known. If you would register a brandnew generic domain and tried to trademark it protecting the goods and services described by the keyword: USPTO would deny. You could go all the way to SCOTUS: they would confirm. At least in my opinion.Why exactly are we wasting so much time on the booking.com decision - how is it related to our tasks? I don't see the slightest connection. Alexander Sent from my Samsung device -------- Original message -------- From: Marc Trachtenberg via Gnso-newgtld-wg <gnso-newgtld-wg(a)icann.org> Date: 7/8/20 21:48 (GMT+02:00) To: rubensk(a)nic.br Cc: 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 Ruben,What are the risks of the "bad" ones? We still have not heard this yet?Best Regards,Marc H.TrachtenbergShareholderGreenberg Traurig, LLP77 West Wacker DriveChicago, IL 60601Office (312) 456-1020Mobile (773) 677-3305On Jul 8, 2020, at 1:47 PM, Rubens Kuhl <rubensk(a)nic.br> wrote:While the legal discussion is interesting, and please keep it going, I need to comment that the discussion of closed generics is not much if they are legal or not, but if they are helpful or not for the domain identifiers system.It's also not about the existence of a possible helpful use case, but whether those possibly useful ones outweighs the risks of the bad ones.RubensOn 8 Jul 2020, at 15:37, Marc Trachtenberg via Gnso-newgtld-wg <gnso-newgtld-wg(a)icann.org<mailto:gnso-newgtld-wg@icann.org>> wrote: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 https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… <https://urldefense.com/v3/__http://booking.com/__;!!DUT_TFPxUQ!SrcLO0-RwJs6… >. 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. TrachtenbergShareholderGreenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601Tel 312.456.1020Mobile 773.677.3305trac(a)gtlaw.com<mailto:trac@gtlaw.com> | http://www.gtlaw.com<http://www.gtlaw.com/><image001.jpg>From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces@icann.org] On Behalf Of Aikman-Scalese, AnneSent: Wednesday, July 8, 2020 11:59 AMTo: 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 https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!SrcLO0-RwJs65… <https://urldefense.com/v3/__http://booking.com/__;!!DUT_TFPxUQ!SrcLO0-RwJs6… > Non-Generic And Capable Of Federal Trademark Registration*EXTERNAL TO GT*Paul,Your reference to the https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… <https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… > 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 https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… <https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… > was NOT generic. It’s a secondary meaning case in which the evidence below clearly demonstrated that the consuming public associates the https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… <https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… > 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, https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… <https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… > 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 https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… <https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… > 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 https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… <https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… >’s new evidence of consumer perception, the District Court concluded that “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs650W51SYPEC51CS0IPWgElnlbeSCGOrlavOSpUhWOsOog5z52hh_w6Vxcvw$ <https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… >”—unlike “booking”—is not generic. The “consuming public,” the court found, “primarily understands that https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!SrcLO0-RwJs65… <https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!SrcLO0-RwJs65… > does not refer to a genus, rather it is descriptive of services involving ‘booking’ available at that domain name.”https://urldefense.com/v3/__http://Book-ing.com__;!!DUT_TFPxUQ!SrcLO0… <https://urldefense.com/v3/__http://Book-ing.com__;!!DUT_TFPxUQ!SrcLO0-RwJs6… > B.V. v. Matal, 278 F. Supp. 3d 891, 918 (2017). Having determined that “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs650W51SYPEC51CS0IPWgElnlbeSCGOrlavOSpUhWOsOog5z52hh_w6Vxcvw$ <https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… >” 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, https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… <https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… >’s marks meet the distinctiveness requirement for registration.The PTO appealed only the District Court’s determination that “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs650W51SYPEC51CS0IPWgElnlbeSCGOrlavOSpUhWOsOog5z52hh_w6Vxcvw$ <https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… >” is not generic. Finding no error in the District Court’s assessment of how consumers perceived the term “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs650W51SYPEC51CS0IPWgElnlbeSCGOrlavOSpUhWOsOog5z52hh_w6Vxcvw$ <https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… >,” 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 AMTo: 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 https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!SrcLO0-RwJs65… <https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!SrcLO0-RwJs65… > 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 https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… <https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… > decision is that it shreds the arguments that <. + generic term> TLDs will somehow cause a competitive harm. Shreds.Best,PaulFrom: Gnso-newgtld-wg <gnso-newgtld-wg-bounces(a)icann.org<mailto:gnso-newgtld-wg-bounces@icann.org>> On Behalf Of Alexander SchubertSent: Thursday, July 2, 2020 10:48 AMTo: gnso-newgtld-wg(a)icann.org<mailto:gnso-newgtld-wg@icann.org>Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!SrcLO0-RwJs65… <https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!SrcLO0-RwJs65… > Non-Generic And Capable Of Federal Trademark RegistrationPaul,I don’t understand: Are you arguing that because https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… <https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… > won the right to deny third parties using the letter combination “https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs650W51SYPEC51CS0IPWgElnlbeSCGOrlavOSpUhWOsOog5z52hh_35PoLpw$ <https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… >” 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 https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… <https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… > would expire, could https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… <https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… > deny the new registrant from offering hotel booking services on a website to which the domain routes – based on their “https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs650W51SYPEC51CS0IPWgElnlbeSCGOrlavOSpUhWOsOog5z52hh_35PoLpw$ <https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… >” TM (once they have it)?Thanks,AlexanderFrom: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces@icann.org] On Behalf Of McGrady, Paul D.Sent: Donnerstag, 2. Juli 2020 18:13To: 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 https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!SrcLO0-RwJs65… <https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!SrcLO0-RwJs65… > Non-Generic And Capable Of Federal Trademark RegistrationThanks 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,PaulFrom: Justine Chew <justine.chew(a)gmail.com<mailto:justine.chew@gmail.com>>Sent: Wednesday, July 1, 2020 11:44 PMTo: 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 https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!SrcLO0-RwJs65… <https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!SrcLO0-RwJs65… > Non-Generic And Capable Of Federal Trademark RegistrationPaul, 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 ?RubensOn 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 “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs650W51SYPEC51CS0IPWgElnlbeSCGOrlavOSpUhWOsOog5z52hh_w6Vxcvw$ <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 “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs650W51SYPEC51CS0IPWgElnlbeSCGOrlavOSpUhWOsOog5z52hh_w6Vxcvw$ <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…>.” Rather, the PTO fears that trademark protection for “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs650W51SYPEC51CS0IPWgElnlbeSCGOrlavOSpUhWOsOog5z52hh_w6Vxcvw$ <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 “https://urldefense.com/v3/__http://ebooking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs650W51SYPEC51CS0IPWgElnlbeSCGOrlavOSpUhWOsOog5z52hh_owHxgeA$ <https://urldefense.com/v3/__http:/ebooking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvo…>” or “https://urldefense.com/v3/__http://hotel-booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs650W51SYPEC51CS0IPWgElnlbeSCGOrlavOSpUhWOsOog5z52hh9ZY6rsnw$ <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 “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs650W51SYPEC51CS0IPWgElnlbeSCGOrlavOSpUhWOsOog5z52hh_w6Vxcvw$ <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 “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs650W51SYPEC51CS0IPWgElnlbeSCGOrlavOSpUhWOsOog5z52hh_w6Vxcvw$ <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…>” would not yield its holder a monopoly on the term “booking.” https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…> concedes that “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs650W51SYPEC51CS0IPWgElnlbeSCGOrlavOSpUhWOsOog5z52hh_w6Vxcvw$ <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, https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… <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,” https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…>accepts that close variations are unlikely to infringe. Id., at 66. And https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…> acknowledges that federal registration of “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs650W51SYPEC51CS0IPWgElnlbeSCGOrlavOSpUhWOsOog5z52hh_w6Vxcvw$ <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,PaulFrom: Justine Chew <justine.chew(a)gmail.com<mailto:justine.chew@gmail.com>>Sent: Wednesday, July 1, 2020 8:51 PMTo: 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 https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!SrcLO0-RwJs65… <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…> Non-Generic And Capable Of Federal Trademark RegistrationHi 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://urldefense.com/v3/__https://www.law360.com/dockets/download/5efb473… <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,PaulTo 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, AnneSent: Tuesday, June 30, 2020 7:12 PMTo: gnso-newgtld-wg(a)icann.org<mailto:gnso-newgtld-wg@icann.org>Subject: [Gnso-newgtld-wg] FW: Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!SrcLO0-RwJs65… <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoK…> Non-Generic And Capable Of Federal Trademark RegistrationDear WG members,Just in case anyone on the list is wondering about the US Supreme Court decision in the https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!SrcLO0-RwJs65… <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,AnneAnne E. Aikman-ScaleseOf Counsel520.629.4428 officeAAikman(a)lrrc.com<mailto:AAikman@lrrc.com>_____________________________<image001.png>Lewis Roca Rothgerber Christie LLPOne South Church Avenue, Suite 2000Tucson, Arizona 85701-1611https://urldefense.com/v3/__http://lrrc.com__;!!DUT_TFPxUQ!SrcLO0… <https://urldefense.com/v3/__http:/lrrc.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDI…>________________________________This message and any attachments are intended only for the use of the individual or entity to which they are addressed. 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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._______________________________________________Gnso-newgtld-wg mailing listGnso-newgtld-wg(a)icann.org<mailto:Gnso-newgtld-wg@icann.org>https://urldefense.com/v3/__https://mm.icann.org/mailman/listinfo/gnso-newg… <https://urldefense.com/v3/__https:/mm.icann.org/mailman/listinfo/gnso-newgt…>_______________________________________________By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://urldefense.com/v3/__https://www.icann.org/privacy/policy__;!!DUT_TF… <https://urldefense.com/v3/__https:/www.icann.org/privacy/policy__;!!DUT_TFP…>) and the website Terms of Service (https://urldefense.com/v3/__https://www.icann.org/privacy/tos__;!!DUT_TFPxU… <https://urldefense.com/v3/__https:/www.icann.org/privacy/tos__;!!DUT_TFPxUQ…>). 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New gTLD Subpro WG - Member wiki page check/SOI check
by Julie Bisland July 6, 2020

July 6, 2020

Dear all, In an effort to ensure accuracy, please take a moment to check your GNSO SOI and make any needed updates (ensure you are signed in and select EDIT CONTENTS at the top of the page). In addition, would all members and observers kindly visit the WG Members wiki page: https://community.icann.org/x/Ogp1Aw and verify your affiliation is correctly displayed. For any updates to the member wiki page or if assistance is needed with your GNSO SOI, please email gnso-secs(a)icann.org<mailto:gnso-secs@icann.org>. Please note all updates to SOIs must be done by you, as staff we are unable to update. Much thanks to you all, GNSO SO/AC Support -- Julie Bisland GNSO SO/AC Support coordinator Internet Corporation for Assigned Names and Numbers (ICANN) Skype ID: 79613b691cb8a6c1 Find out more about the GNSO by visiting: https://learn.icann.org/<https://urldefense.proofpoint.com/v2/url?u=https-3A__learn.icann.org_&d=DwM…> Follow @GNSO on Twitter: https://twitter.com/ICANN_GNSO<https://urldefense.proofpoint.com/v2/url?u=https-3A__twitter.com_ICANN-5FGN…> Transcripts and recordings of GNSO Working Group and Council events are located on the GNSO Master Calendar <https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en_grou…>

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Post Call | New gTLD Subsequent Procedures Working Group | Monday, 06 July 2020 at 15:00 UTC
by Terri Agnew July 6, 2020

July 6, 2020

Dear all, All recordings for the New gTLD Subsequent Procedures Working Group call held on Monday, 06 July 2020 at 15:00 UTC can be found on the agenda wiki page <https://community.icann.org/x/kQBcC> (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 Terri

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Notes and Action Items - New gTLD Subsequent Procedures PDP WG - 06 July at 15:00 UTC
by Julie Hedlund July 6, 2020

July 6, 2020

Dear Working Group members, Please see below the notes from the meeting on 06 July at 15:00 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/2020-07-06+New+gTLD+Subsequent+Pr…. Kind regards, Julie Notes and Action Items: Actions: 2. Review of "Can't Live With" comments on Package 6: https://docs.google.com/document/d/1Hh8Wj3IwXvi91Am1k4Zoooct2zmPOmVe1pLmjQL…, page 118. 2.2.4 Different TLD Types a. Recommendations and/or implementation guidelines Recommendation and Implementation Guidance xx: ACTION ITEM: The WG agrees to adopt the change. 2.6.1 Application Queuing a. Recommendations and/or implementation guidelines Affirmation with modification xx: ACTION ITEM: The WG agreed to adopt the concept - make clear that we are making groupings, but only to determine priority order. Corresponding changes to the terminology should be made elsewhere in this section for consistency. Implementation Guidance xx: ACTION ITEM: The WG will not adopt the change, but will ask that Rubens Kuhl should submit it during the public comment period. c. New issues raised in deliberations since publication of the Initial Report, if applicable. ACTION ITEM: The WG will not adopt the change, but will ask that Susan Payne could submit it during the public comment period. 2.8.1 Objections a. Recommendations and/or implementation guidelines Recommendation xx (rationale 3): ACTION ITEM: Move new text to Recommendation, not the rationale. Move this text in the appeals section, as well. Implementation Guidance xx (rationale 4): ACTION ITEM: Add text in brackets: “and/or processes”. b. Deliberations and rationale for recommendations and/or implementation guidelines Rationale for Affirmations xx-xx and Implementation Guidance xx (rationale 1): ACTION ITEM: Change “execution of” to “performance by”. 2.9.1. Community Applications a. Recommendations and/or implementation guidelines Implementation Guideline xx (rationale 2) and Implementation Guideline xx (rationale 3): ACTION ITEM: The WG will not adopt the change, but will ask that Justine Chew/ALAC could submit it during the public comment period. c. New issues raised in deliberations since publication of the Initial Report, if applicable. ACTION ITEM: The WG will not adopt the alternative text, but will point out that this is a new issue on which we are seeking comment, and strike the sentence: “Rather, this should be done by the Implementation Review Team taking into account all of the recommendations and implementation guidance described herein.” Add a question for public comment. 2.7.3 Closed Generics ACTION ITEM: The WG agrees to adopt the alternative language from Jeff and to change “the Working Group was not able to agree as to how to treat these applications in subsequent rounds” to “The Working Group was not able to agree on any changes to the status quo or what the status quo is.” Notes: 1. Updates to Statements of Interest: Updated SOI from Jeff Neuman. 2. Review of “Can’t Live With” comments on Package 6: https://docs.google.com/document/d/1Hh8Wj3IwXvi91Am1k4Zoooct2zmPOmVe1pLmjQL…, page 118. 2.2.4 Different TLD Types a. Recommendations and/or implementation guidelines Recommendation and Implementation Guidance xx: AAS6.1 – Anne Aikman-Scalese proposes adding a footnote: ““The Working Group notes that the so-called ‘Closed Generic’ application is a separate type of application treated in Section 2.7.3 of this draft Final Report. The Recommendation and Implementation Guidance provided in this Section 2.2.4 is not intended to apply to Closed Generics as they are subject to a need for further policy efforts in the community.” Rationale: “This text does not identify “Closed Generics” as a type of application. It has been treated by the Working Group as a type of application and has a separate section. To avoid confusion, this application “type” should be distinguished and set apart from this general WG recommendation.” ACTION ITEM: The WG agrees to adopt the change. 2.6.1 Application Queuing a. Recommendations and/or implementation guidelines Affirmation with modification xx: [Proposed alternate text for the previous sentence: Nevertheless, the actual 2012 implementation had no batching at all. The working group affirms the 2012 implementation, so it also prescribes changing the Applicant Guidebook to reflect it.] RK6.1 – Rubens Kuhl proposed changing the text of the previous sentence. Rationale: “The actual 2012 implementation used no batching whatsoever, and I don’t saw a consensus to change that to implement batching. It also contradicts evaluation efficiencies.” RK6.2 – Rubens Kuhl proposed changing “all instances of the word “batch” with the word “group”, ending up with the same effect in providing IDN applications some priority.” Rationale: “If batches are removed, the language needs to be adopted. The listed method can be kept so the IDN priorities can be fitted in the overall randomization. Removing batches requires no change to this except language. “ RK6.4 – Rubens Kuhl proposed changing “all instances of the word “batch” with the word “group”, ending up with the same effect in providing IDN applications some priority.” Rationale: “If batches are removed, the language needs to be adopted. The listed method can be kept so the IDN priorities can be fitted in the overall randomization. Removing batches requires no change to this except language. “ Discussion: -- QUESTION: How would ICANN determine order of evaluation if not by order of priority? The priority for IDNs is still there. Group the priorities only. Not the actual evaluation. The difference is not dividing the evaluation work.  -- Does not change priority groupings, it is just going to continue from 1 until whatever on a rolling basis. ACTION ITEM: The WG agreed to adopt the concept – make clear that we are making groupings, but only to determine priority order. Corresponding changes to the terminology should be made elsewhere in this section for consistency. Implementation Guidance xx: Procedures related to application queuing should be simplified and streamlined to the extent possible. For example, applicants could be provided the opportunity to pay the optional fee for participating in the drawing along with payment for the application. [If the fee is not required to establish a legal basis for the randomization, then a fee must not be required, only an indication of wanting prioritization or not.] Another suggestion is to explore ways to assign a prioritization number during the application process without the need for a distinctly separate drawing event. RK6.3 – Rubens Kuhl suggested adding this sentence. Rationale: “It’s unclear whether this is optional to applicants or to ICANN. If ICANN can establish a draw without a separate fee, then this option must be exercised. “ Discussion: -- If they don’t need a fee then they shouldn’t have one. -- WG doesn’t have to determine if it is legal, just to note that it should be streamlined. -- CA lottery law was the reason they charged the fee. Otherwise – it was illegal. But what pays for the cost of the draw? Would we say the application fee pays for that? -- Money sending costs and issues. Sending money in some jurisdictions is problematic. ACTION ITEM: The WG will not adopt the change, but will ask that Rubens Kuhl could submit it during the public comment period. c. New issues raised in deliberations since publication of the Initial Report, if applicable. SP6.1 – Susan Payne recommends that priority numbers should be transferable between the applications of the same owner. Rationale: “Whilst it is understood that creating an aftermarket for prioritization numbers is undesirable, this concern does not apply to the applications of a single applicant. There seems to be no demonstrable reason to prevent an applicant from making their own choice as to how to prioritise as between their own applications. Since we have not made a recommendation that a single applicant may not apply for more than one TLDs then, to the extent that opposition to transfer of priority between applications of the same owner are based on a fundamental objection to multiple applications, this would seem to be irrelevant.” Discussion: -- Not sure why this was a problem (transferring priority numbers between applications of the same owner). -- Wasn’t a problem for 2012 because it wasn’t allowed. ACTION ITEM: The WG will not adopt the change, but will ask that Susan Payne could submit it during the public comment period. 2.8.1 Objections a. Recommendations and/or implementation guidelines Recommendation xx (rationale 3): For all types of objections, the parties to a proceeding must be given the opportunity to mutually agree upon a single panelist or a three-person panel, bearing the costs accordingly. JC6.1 - Comment from Justine Chew: What is the conclusion to the question raised of what happens if parties do not agree on a single panelist or 3-person panel? Staff comment: The following has been added to the rationale for this Recommendation, and has also been added to the corresponding rationale under Limited Challenge/Appeals: "Following the model of the Limited Public Interest Objection in the 2012 round, absent agreement from all parties to have a three-expert panel, the default will be a one-expert panel." ACTION ITEM: Move new text to the Recommendation, not the rationale. Move this text in the appeals section, as well. Implementation Guidance xx (rationale 4): All criteria [and/or processes] to be used by panelists for the filing of, response to, and evaluation of each objection, should be included in the Applicant Guidebook. JC6.2 - Question from Justine Chew: "Why would there be criteria used by panelists to file objections?" ACTION ITEM: Add text in brackets: “and/or processes”. b. Deliberations and rationale for recommendations and/or implementation guidelines Rationale for Affirmations xx-xx and Implementation Guidance xx (rationale 1): “The Working Group expressed concerns about the effectiveness and execution of the Independent Objector (IO)...” JC6.3 - Question from Justine Chew: "What does “and execution of the Independent Objector” mean?" ACTION ITEM: Change “execution of” to “performance by”. 2.9.1. Community Applications a. Recommendations and/or implementation guidelines Implementation Guideline xx (rationale 2): To support predictability, the CPE guidelines, or as amended, should be considered a part of the policy adopted by the Working Group. Implementation Guideline xx (rationale 3): ICANN org should examine ways to make the CPE process more efficient in terms of costs and timing. JC6.3 - Comment from Justine Chew: " Not disagreeing with the text but taking the opportunity to table a document, “Revised Community Priority Evaluation Guidelines – A Proposal by At-Large” (https://community.icann.org/download/attachments/111390697/01B.%20CPE%20Gui…<https://www.google.com/url?q=https://community.icann.org/download/attachmen…>) which is At-Large’s amendment of the CPE guidelines of 27 Sep 2013, and which could be useful as Implementation Guidance. Please refer to the “Revised Community Priority Evaluation Guidelines – A Proposal by At-Large”. This version of 11 June may be subject to amendment by At-Large but if that happens, then the updated version would likely be shared vide ALAC’s response to the upcoming public comment process for the Final Report. NB. There is a second document “At-Large Interventions on Community-based Applications and Community Priority Evaluation” (https://community.icann.org/download/attachments/111390697/01C.%20At-Large%…<https://www.google.com/url?q=https://community.icann.org/download/attachmen…>) which includes, inter alia: - some high level explanation on key amendments to the CPE guidelines of 27 Sep 2013) - desired criteria for a CPE provide/panelists ACTION ITEM: The WG will not adopt the change, but will ask that Justine Chew/ALAC could submit it during the public comment period. c. New issues raised in deliberations since publication of the Initial Report, if applicable. The Working Group considered proposals for specific changes to the CPE Guidelines from 2012, but did not ultimately recommend any specific changes to the text of the Guidelines. Rather, this should be done by the Implementation Review Team taking into account all of the recommendations and implementation guidance described herein. [Proposed alternative text for the above paragraph: “The Working Group considered proposals for specific changes to the CPE Guidelines from 2012 but did not fully review and discuss the changes proposed by Working Group members to the CPE Guidelines. Accordingly, the Working Group is seeking public comment on the 2012 CPE Guidelines linked at Footnote 197 prior to the finalization of its recommendations for changes to those Guidelines and will incorporate the public comment into its consideration of the changes needed for the implementation of CPE Guidelines and scoring system to be applied in the next round.”] AAS6.2 - Anne Aikman-Scalese proposed alternate text for the above paragraph. Rationale: "Although the Working Group made some references to the CPE Guidelines with a view toward affirming the scoring mechanism for the next round, the full Working Group never actually discussed all the changes that would be needed to bring this document current for the next round. I don’t recall the Working Group making the decision that the appropriate revisions to the CPE Guidelines and scoring system should be left to the IRT." Discussion: -- The main point is that we should seek public comment on the CPE Guidelines. The Final Draft Report says that the IRT will deal with the CPE Guidelines. -- The WG did discuss possible changes to the CPE Guidelines, but did not agree on the changes. -- We could point out the Guidelines as one of those items on which we did not previously seek comment. -- Separate the Guidelines document from all of the Recommendations and Implementation Guidance in 2.9.1 Community Applications. The Guidelines is a separate document that dealt with more procedural matters. ACTION ITEM: The WG will not adopt the alternative text, but will point out that this is a new issue on which we are seeking comment, and strike the sentence: “Rather, this should be done by the Implementation Review Team taking into account all of the recommendations and implementation guidance described herein.” Add a question for public comment. 2.7.3 Closed Generics [Alternative text proposed by Jeff Neuman: No Agreement: The Working Group notes that in the 2012 round of the New gTLD Program, a decision was made by the ICANN Board to require applicants for exclusive generic strings 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 TLD.” All applicants in 2012 chose either options (a) or (b). It is the understanding of the Working Group that the ICANN Board intended that its decision to not allow Closed Generics to proceed in the 2012 round applied only to the 2012 round and that it wanted the GNSO to engage in policy discussions regarding the treatment of such strings in subsequent rounds. 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 as to how to treat these applications in subsequent rounds.] Discussion: -- Alternative text is in response to a concern raised by Paul McGrady on the list about being accurate in describing the Board resolution. -- Avoid using the word “ban”. -- Quote the excerpted language from the Board Resolution. -- Question: Do we really need to quote the same language in both this No Agreement section AND the rationale. Seems like overkill. Answer: To summarize it might be problematic. Need to be accurate. -- Re: “...the Working Group was not able to agree as to how to treat these applications in subsequent rounds.” That’s not true, we are agreeing to the status quo per the 2012 AGB; we need to make that clear. -- Also not able to agree whether what status quo would be in this case. -- The AGB can't be changed without consensus. If the Board thinks the "default" is AGB + something else, that is up to them. But we can't declare a change to the status quo without consensus. -- The WG was not able to agree on any changes to the status quo. -- When we’ve said that the status quo will prevail we’ve always meant the AGB. If we can’t decide on the status quo then it’s for the Board to decide. -- Suggest changing to, “The Working Group could not agree.” -- We have elsewhere affirmed that the status quo is the implementation. -- Need to include text that shows that the WG does not agree on what is the status quo. -- COMMENT: I just think we have to point out that the Working Group does NOT agree on what the status quo means. In all other issues, it's 2012 implementation. -- Suggestion changing to “... the Working Group was not able to agree on any changes to the status quo or what the status quo is.” ACTION ITEM: The WG agrees to adopt the alternative language from Jeff and to change “the Working Group was not able to agree as to how to treat these applications in subsequent rounds” to “The Working Group was not able to agree on any changes to the status quo or what the status quo is.”

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Deadline 9 July - Final Check on Revised Packages 1-5
by Emily Barabas July 2, 2020

July 2, 2020

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 - Monday, 06 July at 15:00 UTC for 90 Minutes
by Julie Hedlund July 2, 2020

July 2, 2020

Dear WG Members, Please find below the proposed agenda for the WG meeting on Monday, 06 July 2020 at 15:00 UTC for 90 minutes. Proposed Agenda: 1. Review Agenda/Updates to Statements of Interest 2. Review of "Can't Live With" comments on Package 6: https://docs.google.com/document/d/1Hh8Wj3IwXvi91Am1k4Zoooct2zmPOmVe1pLmjQL…, page 118. 3. 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. 4. Review Private Resolutions/Auctions: Hybrid Proposal 2+ and Proposal 4: https://docs.google.com/document/d/1X8F8zHkgMzQg2WqGHpuoEP78rhpDkFOjD2qKrZZ… 5. 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 - 02 July at 03:00 UTC
by Julie Hedlund July 2, 2020

July 2, 2020

Dear Working Group members, Please see below the notes from the meeting on 02 July at 03:00 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/2020-07-02+New+gTLD+Subsequent+Pr…. Kind regards, Julie Notes and Action Items: Actions: Complete review of "Can't Live With" comments on Work Track 5: Overarching Comment from Justine Chew, Yrjö Länsipuro, and Marita Moll: ACTION ITEM: The WG and WT5 leadership will review the recording and chat for this meeting and at the next meeting will let the WG know how know exactly how the administration of this piece of information is going to be managed. Notes: 1. Updates to Statements of Interest: No updates provided. 2. Complete review of "Can't Live With" comments on Work Track 5: Overarching Comment from Justine Chew, Yrjö Länsipuro, and Marita Moll: -- Justine: This is a dissenting view not a minority statement since minority statements only come after a consensus call and we have not had a consensus call. We express disappointment that WT5 did not adopt a modified proposal was submitted that, instead of asking for a letter of non-opposition, sought that a notification of the intention to use the string with geographic meaning be sent to the appropriate administration. Discussion: -- Question: Is the WG meant to do anything with this comment? Answer: No. -- This sounds more like something that should be submitted in the public forum as a comment. -- This can be submitted as a comment, but it should also be included for consideration in the Draft Final Report when it goes out for comment. -- Procedurally some WG members support dissenting views being included in the Draft Final Report for public comment. -- Dissenting views are not part of the formal mechanism – that process is the minority views that may be submitted after the consensus call. Dissenting views are there for the WG to consider but not necessarily built into the report. -- Note that At-Large does not have a position on the comment above. -- Leadership has agreed that dissenting views can be summarized in the Final Report. -- We should have the same procedure for all of the comments we discuss as to how they are included in the Final Report. -- Concerns from staff about how to framing things as dissenting views like this. It becomes a slippery slope when everyone wants his or her views included in the report. This one is different because it was discussed by WT5 and included in the deliberations in the rationale for the recommendations made in the Final Report. This is not a new issue and in reiterating previous arguments you are just duplicating the Initial Report. Some of the other dissenting views were summarized in the deliberations because they were new ideas that hadn’t been raised in the Initial Report. If we include previous arguments/concerns that were raised in the Initial Report again in the Final Report we will end up with another 500-600 page report. This is why we are reticent about creating a process for dissenting views. ACTION ITEM: The WG and WT5 leadership will review the recording and chat for this meeting and at the next meeting will let the WG know how know exactly how the administration of this piece of information is going to be managed. Comments From Christopher Wilkinson: -- Disagreement with the outcomes reached by WT5. -- More along the lines of a minority report, which should come after the consensus call. -- Christopher confirms that there should be a minority report. 3. Continue to review Private Resolutions: Hybrid Proposal 2+ and Proposal 4: https://docs.google.com/document/d/1X8F8zHkgMzQg2WqGHpuoEP78rhpDkFOjD2qKrZZ… Proposal from Jim Prendergast: -- Incorporated elements of the Vickrey Auction. -- What I've proposed does bring the seal bid option to the table, it eliminates the so called private auctions in favor of a more transparent and more accountable process where there is a route for parties who do not want to proceed to ICANN’s auctions of last resort to participate in an auction where the proceeds would be distributed to losing parties. However, as we struggled with as part of our deliberations on this topic, the data and the details of the outcomes of those options would be published for all to see. There's also an outlet for those who do want to proceed down the path towards and I can auction last resort. Discussion: -- From Paul McGrady: Additional Term and condition -- The applicant will make a claim that they they've filed the application with a bona fide intention to run the registry if awarded. The examiners would be able to issue additional questions and the applicant would have to respond and assure the examiners that there is a fact that bona fide intention. If an applicant does not actually launch the registry if awarded or sells it in the aftermarket within two years of delegation that would be noted for purposes of any future rounds and could create a rebuttal presumption of non-intent. Or if an applicant only sells applications and private auctions and does not actually proceed with any contracting that will be noted and could create the same rebuttal presumption. -- Move this as an agenda item for the next WG meeting. 4. 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. -- This is a new version of the document in which staff tried to address the issues raised during the previous discussions. -- For example, we’ve made it explicit in the recommendations that the predictability framework is not intended to be used to be able to develop policy because some of the concerns raises that perhaps the framework in the SPIRT could be used to circumvent are doing end around the policy process. -- Also added implementation guidance about the nature in which the materials are developed that they should be simple and clear. -- We tried to make sure that all those mitigation elements that we identified as a working group mapped back to this document. -- Adding in implementation guidance about or treating a change log in particular about the changes to the program that are more operationally oriented. Rationale backs up why the the framework and the spirit should be clear and concise and then also about why change log is important for the community. B. Operational - Non-Minor, page 6 -- Captured the change log element. -- Also added in the explicit mention that for a non-minor operational change there's an expectation that Org would inform the SPIRT of issues arising and that there's the option, but not necessarily the requirement, that the SPIRT is able to collaborate with Org. So it's an option of the SPIRT, not of Org. Discussion: -- it's much more clear that we're not creating a new lobbying a new policy making entity that could be lobbied. -- Not sure this is phrased correctly. -- Re: “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.” Add the following to that sentence after collaborate "in formulating its recommendation to Council". It's not really up to just the SPIRT and staff to develop a solution and go away. There should be a recommendation to Council to develop a solution. -- This is written on the assumption that these types of changes do not go to the GNSO Council for approval. If every non-minor operational change has to go to the SPIRT and the GNSO Council then the program will be paralyzed. -- The GNSO Council can be informed of updates to the change log and it can be accessible prominently on the website. -- Category B is not for an issue where there is policy or there are policy implications. Part of what the SPIRT is intending to do or is intended to do is to help determine what goes in what category. There could be an effect on applicants that isn’t policy.

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