Dear Christopher and all:
You raised some relevant points in this discussion and I can tell you most of them have been raised before now.  I will also tell you that I support the objectives you outline, even if the means are not so clear - maybe slam dunk! - to me. 

The matter of the extention of trademark rights as implemented in the DNS vs. the rights of holders in the 'real' world has long been recognized. Even the exclusion and/or dimunition of local  - that is, those trademarks with standing in national spaces - vs. the so-called big trademarks made it into conversation.  I remarked on a local (Jamaican) Supreme Court case where a mom-and-pop operation that existed on a corner long before the 'Ronald McDonald McDonald' came in country was sued for trademark violation. Ronald McDonald was dropped kicked in the butt here.

The special situation with geonames came in for long discussion. We wrestled with the idea of placing value and appropriating 'ownership'. The horse had already bolted but a cautionary tale emerged. In context, I spoke to the appropriation of names at the second level - for example, jamaica.com - and what the rules might have done here.

Even as I understand the asymmetry that information, money and power enable and succour, insofar as a [geoname] gTLD is concerned, I cannot find a good reason to favour the good burghers of Paris, France over the local yokels of Paris, Texas.  You can extend that argument to the good citizens of Manchester, Jamaica vs. the yeomen of Manchester, Lancashire, UK. Or, residents of Jamaica, Queens, NY vs. those of Jamaica, the West Indies. [The mixed metaphors are deliberate.]

What we have here is a land grab, albeit virtual.  And the same conditions that existed when the 15th Century one was in play that prompted the Bourbon King of France to grouse "Am I not a Christian and a prince?" exist today. I am wary of ever saying we can build all the safeguards to forestall another round of rapine and pillage. But what I am absolutely sure of is one cannot go wrong by identifying and focusing on the economic interests and the derivative rights to economic wellbeing of all parties.

I will support any rule that acknowledges standing of any one person, here or there, the right to appeal any action at play in the DNS for which they can demonstrate his/her economic interest is threathened, under attack or is appropriated without due consideration.

Carlton 

==============================
Carlton A Samuels
Mobile: 876-818-1799
Strategy, Process, Governance, Assessment & Turnaround
=============================


On Wed, Aug 14, 2019 at 2:22 PM Aikman-Scalese, Anne <AAikman@lrrc.com> wrote:

Accidentally failed to copy the list.

 

From: Aikman-Scalese, Anne
Sent: Wednesday, August 14, 2019 11:31 AM
To: 'trachtenbergm@gtlaw.com' <trachtenbergm@gtlaw.com>; alexander@schubert.berlin
Subject: RE: [Gnso-newgtld-wg] - Specification 13

 

I consider it to be a rather unfortunate truth that an application for a famous brand which is also a “generic” word is going to lose out in this new gTLD environment anyway. For example, “Coach” lost in the 2012 round.  I don’t know if they ended up paying big money for the “generic” or not.  There is nothing that gives a famous brand priority over generic terms.  Based on 2012, it’s the opposite.

 

An improvement in this round would be to apply priority for registered marks that are well-known.  Well-known marks get protection in almost all countries around the world even if not registered.  Though I am doubtful we could develop sufficient consensus to change what happened in 2012 on that one.  (RPMs were a “suite” of protective mechanisms involving various compromises.)

 

I currently tell all my clients: Don’t adopt any marks with geo connotations and don’t adopt any marks with any  possible “generic” interpretation. This is unfortunate since the geo names in particular actually give more attention to the regions and rivers that are named and that is good for tourism!.    Maybe Work Track 5 is coming up with some standard Public Interest terms that could be adopted to accommodate governmental interests when regions and rivers are involved.,  (I don’t know cause I am not involved in Work Track 5 work.)

 

Anne

 

From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org> On Behalf Of Marc Trachtenberg via Gnso-newgtld-wg
Sent: Wednesday, August 14, 2019 11:16 AM
To: alexander@schubert.berlin; gnso-newgtld-wg@icann.org
Subject: Re: [Gnso-newgtld-wg] - Specification 13

 

[EXTERNAL]

Alex,

 

These applications are for trademarks, not generic terms, and at least VISA and DISCOVER are famous and well-known brand across the globe.  You might even have one in your wallet.

 

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 | 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 10:47 AM
To: gnso-newgtld-wg@icann.org
Subject: Re: [Gnso-newgtld-wg] - Specification 13

 

Dear Marc,

 

I might misinterpret your suggestion – but you are saying there are no generic term based applications such as “smart”, “visa” or “discovery” have a Spec 13 in their contract? (I checked these three – and they seem to have a Spec 13 in their contracts – I assume when checking all the other generic keyword based applications the same will occur).

And well: You need to register with the TM Clearinghouse: easy thing to do; the hurdles for that are very low (I have done TMCH applications for trademarks). Plus I am taking about a “real brand” – albeit a small one. So a small shoe brand “SHANGHAI” will easily meet all requirements for a spec 13. In my mind – please correct me if I am wrong.

Thanks,

 

Alexander

 

 

 

 

 

From: trachtenbergm@gtlaw.com [mailto:trachtenbergm@gtlaw.com]
Sent: Mittwoch, 14. August 2019 17:51
To: alexander@schubert.berlin; gnso-newgtld-wg@icann.org
Subject: RE: [Gnso-newgtld-wg] - Specification 13

 

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 | 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 9:42 AM
To: 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; 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 / PMcGrady@taftlaw.com

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From: Gnso-newgtld-wg <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
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:

  1. 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).
  2. 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
Sent: Dienstag, 13. August 2019 20:19
To: 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

 

* https://newgtlds.icann.org/sites/default/files/agreements/agreement-approved-specification-13-31jul17-en.pdf

 

 

 

 

 

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