Thanks Christopher. I understand the scope of how foreign exchange rates and transactions are in the world. I guess what I was really asking was about the scope of the problem and what issues are being caused now that would necessitate the reservation of those codes (or protection of those codes) at the top level. So, for example, “CUP” is the 3-letter code for the Cuban Peso, “MOP” for the Macao Pataca, “MAD” for the Moroccan Durham, “NPR” for the Nepalese Rupee (also in US is known by most people at the National Public Radio, “RUB” for the Russian Ruble, and “TOP” for the Tonga Pa’anga (NOTE: This is already a TLD). In the last example, has there been any noted cases of confusion of harm attributable to the match of the TLD and the currency code. So when we get to the topic of reserved names in the full working group, this subject can be brought up, and the group can understand the scope of the problem and the necessity (if any) to protect those 3-letter codes. Thanks. Jeffrey J. 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From: lists@christopherwilkinson.eu <lists@christopherwilkinson.eu> Sent: Sunday, August 11, 2019 8:17 AM To: Julie Hedlund <julie.hedlund@icann.org>; Jeff Neuman <jeff.neuman@comlaude.com> Cc: gnso-newgtld-wg@icann.org; CW <mail@christopherwilkinson.eu> Subject: Re: [Gnso-newgtld-wg] Proposed agenda - New gTLD Subsequent Procedures PDP WG - 12 August 2019 at 15:00 UTC Dear Jeff : During our most recent conference call, you asked me to quantify the scope of the Foreign edchange Transactions and the businesses supported by protected geographical indications. As I said at the time, I do not have the time or resources to conduct a thorough study, but a few minutes’ Goodle Search gives rise to confirmation of the importance of these economic activities. 1. Foreign exchange transactions (ISO 4217 currency codes.) « According to the Bank for International Settlements, the preliminary global results from the 2016 Triennial Central Bank Survey of Foreign Exchange and OTC Derivatives Markets Activity show that trading in foreign exchange markets averaged $5.09 trillion per day in April 2016. » https://www.statista.com/statistics/247328/activity-per-trading-day-on-the-g... As I understand these FOREX markets, (a) a significant proportion of these transactions are automatic outcomes of small shifts in the exchange rates and (b) the transactions involve the electronic identification of the buying and selling parties and currencies. Subject to confirmation or contradiction I believe that the ISO 4217 alpha3 codes are widely used for that purpose. This is why I have argued in WT5 and in the PDP that these currency codes should be reserved by ICANN until there is a clear agreement with the international Central Banks (e.g. through IMF or BSI) as to whether these codes could be delegated and to which entities, not excluding themselves. 1. Geographical Indications (GIs) The IPR rights in GIs are well established in many jurisdictions. Their economic significance is considerable in the regions most concerned. At short notice, I only have an EU source to quantify their economic importance. From an 2011 EU Court of Auditors report (There are others): https://europa.eu/rapid/press-release_ECA-11-41_en.htm “The geographical indications (GI) scheme aims to protect product names which are registered as Protected Designation of Origin or Protected Geographical Indication, whose overall wholesale value is estimated at € 15 billion (per year-cw). The scheme also provides a potential economic opportunity for farmers and producers of food and can have a positive impact on the rural economies of the EU’s regions, as well as offer an impetus for safeguarding local culture and tradition and provide consumers with the opportunity to be more aware of the origin of the products they consume.” Granted that fifteen billion per year is less than five trillion per day. But I nevertheless consider that since the GIs are protected by applicable local law, ICANN should reserve all such names in the agreed languages. and regulate eventual delegation to authorised Registries. I trust that this preliminary response to your question is helpful Regards Christopher Wilkinson On 9 Aug 2019, at 14:33, Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> wrote: ________________________________ The contents of this email and any attachments are confidential to the intended recipient. 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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 <https://newgtlds.icann.org/sites/default/files/agreements/agreement-approved...> 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...

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 <http://www.taftlaw.com> www.taftlaw.com / <mailto:PMcGrady@taftlaw.com> PMcGrady@taftlaw.com <http://www.taftlaw.com/images/bio-icon.jpg> <http://www.taftlaw.com/bio/PMcGrady@taftlaw.com> Taft Bio <http://www.taftlaw.com/images/vcard-icon.jpg> <http://www.taftlaw.com/vcard/PMcGrady@taftlaw.com> Taft vCard <http://taftlaw.com/news/subscribe> Subscribe to our law updates 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@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: 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 <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 <https://newgtlds.icann.org/sites/default/files/agreements/agreement-approved...> 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...

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 <mailto:trachtenbergm@gtlaw.com> trachtenbergm@gtlaw.com | <http://www.gtlaw.com/> www.gtlaw.com 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 <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.taftlaw.com&d=DwMFaQ...> www.taftlaw.com / <mailto:PMcGrady@taftlaw.com> PMcGrady@taftlaw.com <http://www.taftlaw.com/images/bio-icon.jpg> <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.taftlaw.com_bio_PMcG...> Taft Bio <http://www.taftlaw.com/images/vcard-icon.jpg> <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.taftlaw.com_vcard_PM...> Taft vCard <https://urldefense.proofpoint.com/v2/url?u=http-3A__taftlaw.com_news_subscri...> Subscribe to our law updates 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@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: 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 <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 <https://urldefense.proofpoint.com/v2/url?u=https-3A__newgtlds.icann.org_site...> 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... <https://urldefense.proofpoint.com/v2/url?u=https-3A__newgtlds.icann.org_site...> _____ If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com <mailto:postmaster@gtlaw.com> , and do not use or disseminate the information.

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> 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 | www.gtlaw.com

<image001.jpg>

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:

• 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 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...

If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com, and do not use or disseminate the information. _______________________________________________ Gnso-newgtld-wg mailing list Gnso-newgtld-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg _______________________________________________ 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://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.

It strikes me this question of currency codes should be referred to the SSAC and the IETF. Anne From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org> On Behalf Of lists@christopherwilkinson.eu Sent: Tuesday, August 13, 2019 12:05 PM To: Jeff Neuman <jeff.neuman@comlaude.com> Cc: gnso-newgtld-wg@icann.org Subject: Re: [Gnso-newgtld-wg] Proposed agenda - New gTLD Subsequent Procedures PDP WG - 12 August 2019 at 15:00 UTC [EXTERNAL] ________________________________ Dear Jeff: Thankyou. Noted. I look forward to the discussion of those Reserved Names (there are others). Meanwhile, may I say that I do not see this as a question of ‘confusion’ as you have described it. Rather we are dealing with the risks to the global financial systems that could arise from independent platforms based on a portfolio of ISO4217 alpha 3 codes as TLDs offering financial and foreign exchange services outside the remit of existing official structures, snd policies. I gather recently (actually, today) that we are not alone in addressing these kinds of issues: https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3414401&download=yes However, the opportunity of such developments is for others to determine. All I am proposing is to protect ICANN’s reputation and independence from any regulatory issues arising from otherwise unauthorised use of ISO4217 codes as TLDs as platforms for financial and foreign exchange services. Accordingly, I propose that the ISO4217 codes be reserved and protected in the same way as the ISO3166 alpha3 codes. Policies for the eventual release of those codes as TLDs could be developed in consultation with the interested parties which - by and large - are still outside the ICANN community and the GNSO. Best regards toy all CW On 12 Aug 2019, at 15:21, Jeff Neuman <jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com>> wrote: Thanks Christopher. I understand the scope of how foreign exchange rates and transactions are in the world. I guess what I was really asking was about the scope of the problem and what issues are being caused now that would necessitate the reservation of those codes (or protection of those codes) at the top level. So, for example, “CUP” is the 3-letter code for the Cuban Peso, “MOP” for the Macao Pataca, “MAD” for the Moroccan Durham, “NPR” for the Nepalese Rupee (also in US is known by most people at the National Public Radio, “RUB” for the Russian Ruble, and “TOP” for the Tonga Pa’anga (NOTE: This is already a TLD). In the last example, has there been any noted cases of confusion of harm attributable to the match of the TLD and the currency code. So when we get to the topic of reserved names in the full working group, this subject can be brought up, and the group can understand the scope of the problem and the necessity (if any) to protect those 3-letter codes. Thanks. Jeffrey J. Neuman Senior Vice President Com Laude | Valideus 1751 Pinnacle Drive , Suite 600 Mclean , VA 22102 UNITED STATES T: +1.703.635.7514 M: +1.202.549.5079 CONFIRMATION OF ORDERS: Please note that we always confirm receipt of orders. To assist us in identifying orders, please use the word ORDER in the subject line of your email. If you have sent us an order and have not received confirmation on the same working day (PST) it is possible that your order has not been received or has been trapped by our spam filter. In this case, please contact your client manager or admin@comlaude.com<mailto:admin@comlaude.com> for confirmation that the order has been received and is being processed. Thank you. From: lists@christopherwilkinson.eu<mailto:lists@christopherwilkinson.eu> <lists@christopherwilkinson.eu<mailto:lists@christopherwilkinson.eu>> Sent: Sunday, August 11, 2019 8:17 AM To: Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>>; Jeff Neuman <jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com>> Cc: gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org>; CW <mail@christopherwilkinson.eu<mailto:mail@christopherwilkinson.eu>> Subject: Re: [Gnso-newgtld-wg] Proposed agenda - New gTLD Subsequent Procedures PDP WG - 12 August 2019 at 15:00 UTC Dear Jeff : During our most recent conference call, you asked me to quantify the scope of the Foreign edchange Transactions and the businesses supported by protected geographical indications. As I said at the time, I do not have the time or resources to conduct a thorough study, but a few minutes’ Goodle Search gives rise to confirmation of the importance of these economic activities. 1. Foreign exchange transactions (ISO 4217 currency codes.) « According to the Bank for International Settlements, the preliminary global results from the 2016 Triennial Central Bank Survey of Foreign Exchange and OTC Derivatives Markets Activity show that trading in foreign exchange markets averaged $5.09 trillion per day in April 2016. » https://www.statista.com/statistics/247328/activity-per-trading-day-on-the-g... As I understand these FOREX markets, (a) a significant proportion of these transactions are automatic outcomes of small shifts in the exchange rates and (b) the transactions involve the electronic identification of the buying and selling parties and currencies. Subject to confirmation or contradiction I believe that the ISO 4217 alpha3 codes are widely used for that purpose. This is why I have argued in WT5 and in the PDP that these currency codes should be reserved by ICANN until there is a clear agreement with the international Central Banks (e.g. through IMF or BSI) as to whether these codes could be delegated and to which entities, not excluding themselves. 1. Geographical Indications (GIs) The IPR rights in GIs are well established in many jurisdictions. Their economic significance is considerable in the regions most concerned. At short notice, I only have an EU source to quantify their economic importance. From an 2011 EU Court of Auditors report (There are others): https://europa.eu/rapid/press-release_ECA-11-41_en.htm “The geographical indications (GI) scheme aims to protect product names which are registered as Protected Designation of Origin or Protected Geographical Indication, whose overall wholesale value is estimated at € 15 billion (per year-cw). The scheme also provides a potential economic opportunity for farmers and producers of food and can have a positive impact on the rural economies of the EU’s regions, as well as offer an impetus for safeguarding local culture and tradition and provide consumers with the opportunity to be more aware of the origin of the products they consume.” Granted that fifteen billion per year is less than five trillion per day. But I nevertheless consider that since the GIs are protected by applicable local law, ICANN should reserve all such names in the agreed languages. and regulate eventual delegation to authorised Registries. I trust that this preliminary response to your question is helpful Regards Christopher Wilkinson On 9 Aug 2019, at 14:33, Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> wrote: ________________________________ The contents of this email and any attachments are confidential to the intended recipient. 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