Once again, your examples are off-base an inapplicable. The VISA trademark that is relevant to the .VISA application and TLD is a famous trademark that is used in connection with credit card and related services. Over 3.3 billion Visa cards are in use and visa cards are accepted in over 200 countries. Similarly, the Orange trademark that is relevant to the .ORANGE application and TLD is a famous trademark known around the word used in connection with telecommunications services. Orange has over 62 million 4G customers worldwide and over 266 million customers worldwide for its various telecommunications products. I am guessing that you probably have, or have had, a Visa card in your wallet and at maybe the mobile phone in your pocket uses Orange wireless service. Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com<mailto:trachtenbergm@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 Alexander Schubert Sent: Wednesday, August 14, 2019 3:19 PM To: gnso-newgtld-wg@icann.org Subject: Re: [Gnso-newgtld-wg] - Specification 13 Rubens, like "visa" for "visas"? Or "orange" for "oranges"? Why did they got a Spec13? Alexander Sent from my Samsung device -------- Original message -------- From: Rubens Kuhl <rubensk@nic.br<mailto:rubensk@nic.br>> Date: 8/14/19 22:18 (GMT+02:00) To: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> Cc: alexander@schubert.berlin<mailto:alexander@schubert.berlin>, gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] - Specification 13 Note that generic strings are defined in the RA in a way much narrower than the commonplace definition of a generic term. "“Generic String” means a string consisting of a word or term that denominates or describes a general class of goods, services, groups, organizations or things, as opposed to distinguishing a specific brand of goods, services, groups, organizations or things from those of others." Rubens
Em 14 de ago de 2019, à(s) 11:51:000, Marc Trachtenberg via Gnso-newgtld-wg <gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org>> escreveu:
Alexander,
Please also note that Spec 13 does not require just “some trademark registration” and specifically excludes generic string TLDs. Christopher conveniently “forgot” to point out that Section 9.3 of Spec 13 requires:
(i) the TLD string is identical to the textual elements protectable under applicable law, of a registered trademark valid under applicable law, which registered trademark:
a. is recorded with, and issued a signed data mark file by, the Trademark Clearinghouse or any successor or alternative trademark validation authority appointed by ICANN, if such trademark meets the eligibility requirements of such validation authority (provided that Registry Operator is not required to maintain such recordation for more than one year);
b. is owned and used by the Registry Operator or its Affiliate in the ordinary course of Registry Operator’s or its Affiliates’ business in connection with the offering of any of the goods and/or services claimed in the trademark registration;
c. was issued to Registry Operator or its Affiliate prior to the filing of its TLD registry application with ICANN;
d. is used throughout the Term continuously in the ordinary course of business of Registry Operator or its Affiliate in connection with the offering of any of the goods and/or services identified in the trademark registration;
e. does not begin with a period or a dot; and
f. is used by Registry Operator or its Affiliate in the conduct of one or more of its businesses that are unrelated to the provision of TLD Registry Services; and
(ii) only Registry Operator, its Affiliates or Trademark Licensees are registrants of domain names in the TLD and control the DNS records associated with domain names at any level in the TLD;
(iii) the TLD is not a Generic String TLD (as defined in Specification 11); and
(iv) Registry Operator has provided ICANN with an accurate and complete copy of such trademark registration.
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 trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com>
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From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces@icann.org] On Behalf Of Alexander Schubert Sent: Wednesday, August 14, 2019 9:42 AM To: gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] - Specification 13
*EXTERNAL OF GT*
Dear Paul,
Don’t forget: I am ALL FOR famous (well known) TMs to be able to secure their brand as gTLD! I just think for generic term-based and geo name--based strings a spec 13 application (which locks out the general public) should meet WAY higher hurdles than just “some trademark registration”.
Otherwise: Yes, I have grossly simplified the rather complex intellectual property rights cloud. There are of course IR TMs and (e.g. in Germany) enhanced protections for famous TMs that extend well beyond the goods and services originally protected.
Thanks for clarifying,
Alexander
From: McGrady, Paul D. [mailto:PMcGrady@taftlaw.com] Sent: Mittwoch, 14. August 2019 17:15 To: alexander@schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: RE: [Gnso-newgtld-wg] - Specification 13
Thanks Alexander.
Respectfully, your analysis is incorrect. While trademarks are local (state), national, or international (EU marks, Benelux marks) in nature there are protections for trademarks found in International law, e.g. the Paris Convention. I wouldn’t expect anyone in this WG to know that other than the trademark attorneys who participate, so good you brought it up so that I could set the record straight. Your second notion, that trademarks are limited to corresponding goods/services is mostly true (except in jurisdictions that recognize the doctrine of dilution for the protection of famous marks. This would be a more interesting point if gTLD registry applications came with restrictions, i.e. that an applicant made it clear that they have applied for .apple to run an apple farm and that they pledge in advance that there will be no second level registrations that would contain terms or could be used to infringe the APPLE mark (for example, no ability to register computer.apple or use store.apple to sell electronics). Those restrictions would then be incorporated in PICS and brand owners could enforce against registries accordingly. However, ICANN has put no use requirements in place for applicants to agree to, so until they do, we have to take a broad view of trademark rights in order to protect consumers from confusion and malicious activities.
Best, Paul
Taft /
Paul D. McGrady / Partner Taft Stettinius & Hollister LLP 111 E. Wacker Drive, Suite 2800 Chicago, Illinois 60601-3713 Tel: 312.527.4000 • Fax: 312.754.2354 Direct: 312.836.4094 • Cell: 312.882.5020 www.taftlaw.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.taftlaw.com&d=DwIGaQ... > / PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>
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From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org<mailto:gnso-newgtld-wg-bounces@icann.org>> On Behalf Of Alexander Schubert Sent: Wednesday, August 14, 2019 8:55 AM To: gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] - Specification 13
Christopher,
Brilliant. You pointed out an important factor that the brand lobby conveniently “forgot” to point out:
The brand lobby claims that TM law is international law – and therefore protected brands were also protected in their representation on the top-level in the DNS. This however falls short (and btw THANKS to your excellent input here Christopher) on not just ONE but even TWO levels:
• Most trademarks (and by extension all “brands”) are protected on NATIONAL level – while a gTLD in the DNS is a global registration! At bare minimum such TM should be valid in e.g. the majority of all nations (aka: more than 90). • Trademarks do NOT protect a “string” – they always ONLY protect the usage of a given string in connection with a very, very narrow defined set of goods and services. The “APPLE” TM doesn’t protect “APPLE” – it protects the USAGE (and in commerce only!) of “APPLE” for branding computers, laptops, etc! Of 100% of goods and services globally this protects just a few dozen out of hundreds of millions of potential use cases. It’s an INCREDIBLE narrow defined protection. There could be literally MILLIONS of trademarks “APPLE” globally - peacefully living in coexistence. But there can only be ONE gTLD “.apple”.
Putting 1 and 2 together I think we might have to rethink spec 13 altogether. At BARE MINIMUM spec 13 should NOT be available for geo-name-based and generic dictionary keyword-based strings. There is neither a global right to such string, nor one that extends over ALL goods and ALL services. These need to be “available for the general public”.
It is perfectly legal to register (and enforce its protection) “APPLE” for computers and laptops. But always at your own risk! And new gTLDs are such “risk”. You wanted a “catchy” brand – and used a common keyword. Fine. Just don’t try to hijack that keyword on global level of the DNS. It is NOT “yours” – you are merely allowed to “use” it. (using APLLE here only as example – and I will exonerate APPLE in the next paragraph).
Spec 13 makes a certain sense – just not for geo names and dictionary terms. If somebody feels the urge and need to “block” such (generic or geo based) gTLD – they need to meet a certain standard. And a US $299 TM registration doesn’t meet ANY standard. We need to have much higher hurdles – like ACTIVELY USED Trademarks in at least 50 countries aged 5 years or older for example. That would be no problem for the APPLEs, ORANGEs or MANGOs in this world. But just only a “Trademark registration” “SHANGHAI” in one or two jurisdictions? Why empowering them to block the identity of a 24 Million community (in fact larger than 2/3 of all countries globally)?
I am not “anti-brand”: I think large scale brands have the potential to create an IMMENSE visibility for new gTLDs (if after SEVEN YEARS of application they would finally start to make active use of their TLDs). I just want to avoid that tiny players abuse the protections we are installing for big players. This btw protects also the big players! So I WANT that .apple is with APPLE, Inc – because that is PRECISELY what the Internet user assumes it should be! I just would find it very sad if a small, national operating shoe label “Shanghai” got “.shanghai” for US $25k – depriving 24 Million people and their constituents (businesses, organizations, associations, Government) of their ability to identify themselves with .shanghai domains!
So: “THINK BIG” :D
Alexander
From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces@icann.org] On Behalf Of lists@christopherwilkinson.eu<mailto:lists@christopherwilkinson.eu> Sent: Dienstag, 13. August 2019 20:19 To: gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] - Specification 13
Good evening:
Following a chat exchange during a recent call,, I have reviewed the Specification 13 .BRAND TLD provisions, dated 31 July 2017, * For present purposes I shall limit my comments to section 9. Definitions : 9.3 (i) The header refers to “a registered trademark valid under applicable law …” from which one might infer that it refers to ANY registered trademark. In which case, it would beg the question quid identical trademark strings registered in different jurisdictions and activities?
I believe that the PDP and WT5 have yet to take fully on board that a gTLD confers a global on line monopoly whereas in all other contexts, trademarks and geographical names do not. Thus a .BRAND TLD not only creates additional rights for the Registry, over and above those provided for by the original trademark, but also denies other trademark rights holders from using the same string on-line as a .brand
An analogous issue has arisen in connection with Geographical names.
9.3 ( i) b. The language is rather open ended: “… business in connection with the offering… claimed in the trademark registration;” might be open to quite broad interpretations.
9.3 (iii) “the TLD is not a Generic String”. This is very welcome. I have argued, with others, ab initio in WT5 that geographical names are not Generic. I am glad to see that there is an approved precedent.
9.5 (iv) Again, the language “…reasonably related to any of the goods and services identified … “ is rather open ended.
How has this been implemented by .brands that have already been delegated? Thankyou for your interest in this matter Christopher Wilkinson
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