RE: [bc-gnso] pressing the BC recommendations for dot-brand TLDs

["Mike Rodenbaugh" <icann@xxxxxxxxxxxxxx>]

Sarah, some further facts for your consideration.

 

ICANN is not the only operator of TLDs, or of domain name registration
providers.

 

Registries can and do offer many other services under their TLD
string/brand, other than domain registration services.

 

Sometimes several applicants do each have a bona fide intention to use the
same trademark in US commerce, even for the same services.  This is surely a
big reason we have an "intent to use" filing system in the US.

 

I am not aware of any TMEP rule going anywhere near so far as you would
interpret it with respect to TLDs as trademarks, and Berry has cited many
examples of contrary PTO practice.  These issues are thoroughly briefed
before the Trademark Trial & Appeal Board in the US now, pending a hearing
and a decision with respect to my client TheDot Communications Network LLC
and its application to register the ".music" trademark.  I would appreciate
further comments once you have reviewed some of that briefing, and would
appreciate you refraining from suggestions of perjury and bad faith, unless
you become aware of the background facts and then have an informed opinion.

 

Re your fear that ICANN would cancel a registry contract, that seems a
simple matter to require, as a condition of the contract, that upon
termination the applicant shall disavow any trademark rights in the TLD
string/brand, at least with respect to domain registration services and
ancillary services not offered by the applicant prior to the application. 

 

Mike Rodenbaugh

RODENBAUGH LAW

tel/fax:  +1 (415) 738-8087

 <http://rodenbaugh.com/> http://rodenbaugh.com

 

From: Deutsch, Sarah B [mailto:sarah.b.deutsch@xxxxxxxxxxx] 
Sent: Friday, January 28, 2011 1:25 PM
To: 'Matkowsky, Jonathan'; icann@xxxxxxxxxxxxxx; bc-gnso@xxxxxxxxx
Subject: RE: [bc-gnso] pressing the BC recommendations for dot-brand TLDs

 

You can't "acquire distinctiveness" in a trademark you neither own nor use.
And when you apply now at the PTO, this is for a registry name that has not
even been awarded to you by ICANN.  The TLD program has not yet started.
ICANN has not yet reviewed any applications or determined who is best
positioned to run a registry. If there are competing applicants, do all
applicants have a "bona fide" intent to use that mark?   Applying for
exclusive rights in a trademark in advance of the TLD program seems like a
form of TLD front running.   

 

For generic terms especially, it's important that registries serve a
fiduciary duty to the public.  If for compliance or other reasons, ICANN
winds up terminating their contracts, they would own exclusive nationwide or
global trademarks, which may prevent or conflict with a third party who
takes over their operations.  This outcome would be exactly the opposite of
ICANN's stated intent to encourage innovation and competition.  Again,
unless you own a prior trademark registration for services or products
unrelated to the registry services, to me this is bad policy.


Re: Berry's question, the PTO examiners are often inconsistent and sometimes
marks will register despite the PTO's rules against it.  I would think that
marks that have been registered for "registry" type services are at risk for
cancellation if someone should choose to challenge them.


Sarah

 



Sarah B. Deutsch 
Vice President & Associate General Counsel 
Verizon Communications 
Phone: 703-351-3044 
Fax: 703-351-3670 

 

 

  _____  

From: Matkowsky, Jonathan [mailto:Jonathan.Matkowsky@xxxxxxxxxxxxxxxxx] 
Sent: Friday, January 28, 2011 3:36 PM
To: Deutsch, Sarah B; icann@xxxxxxxxxxxxxx; bc-gnso@xxxxxxxxx
Subject: RE: [bc-gnso] pressing the BC recommendations for dot-brand TLDs

The Trademark Manual of Examining Procedure states that if the TLD merely
describes the subject or user of the domain space, registration should be
refused on the ground that the TLD is merely descriptive of the registry
services.  Merely descriptive marks can still acquire distinctiveness and
become recognized as trademarks.  There is common use of ".com" to refer to
Internet businesses.  You can find "dot-com advertising" in some
dictionaries. So it doesn't pass the familiar "who-are-you/what-are-you"
test.  That will hopefully not be the case as Mike points out, the new TLD
program is supposed to encourage innovation and competitive new uses of the
DNS.  Even when it comes to the addition of a TLD indicator to a descriptive
term, the U.S. Court of Appeals for the Federal Circuit has recognized the
possibility of a distinctive mark.

 

Jonathan Matkowsky

 

 

From: owner-bc-gnso@xxxxxxxxx [mailto:owner-bc-gnso@xxxxxxxxx] On Behalf Of
Deutsch, Sarah B
Sent: Friday, January 28, 2011 11:26 AM
To: 'icann@xxxxxxxxxxxxxx'; bc-gnso@xxxxxxxxx
Subject: RE: [bc-gnso] pressing the BC recommendations for dot-brand TLDs

 

I'd like to differ on a couple of points.  I don't think it's difficult to
determine what is a brand.  Brands are trademarks.  Ownership of a federal
trademark registration and other global trademark registrations are not only
proof of a "brand" but confer nationwide exclusive rights to use that mark
for the goods and services in the application.  However, I would distinguish
that the "brand" be a trademark that is registered and used for goods and
services unrelated to registry services.  The mark should be used in
commerce for unrelated goods and services well before that brand ever gets
awarded a TLD.  It's my understanding that the BC has long opposed the idea
that a TLD alone can become a brand -- only an existing trademark, such as
CANON for cameras could be recognized as a brand TLD. 

 

BTW, it's my understanding that certain TLD applicants are inappropriately
trying to lock up trademark rights in their "brands" at the PTO before ICANN
has even awarded them a contract to operate the TLD.   Whether ICANN awards
them a contract or not, the PTO has rule that in the Trademark Manual of
Examining Procedure confirming that registry services alone are not
registrable as trademarks.  When you apply for a trademark registration, you
need to sign a declaration under penalty of perjury that you either have a
bona fide intent to use the mark or have rights to use the mark in commerce.
I don't see how anyone can sign this declaration in good faith given the
fact that ICANN has not yet considered their application, several may be
applying for the same TLD and the PTO's rule that such services are
unregistrable.  

 

 

Sarah



Sarah B. Deutsch 
Vice President & Associate General Counsel 
Verizon Communications 
Phone: 703-351-3044 
Fax: 703-351-3670 

 

 

  _____  

From: owner-bc-gnso@xxxxxxxxx [mailto:owner-bc-gnso@xxxxxxxxx] On Behalf Of
Mike Rodenbaugh
Sent: Friday, January 28, 2011 12:27 PM
To: bc-gnso@xxxxxxxxx
Subject: RE: [bc-gnso] pressing the BC recommendations for dot-brand TLDs

I generally support Berry's comments too.  I appreciate the effort to devise
clear rules.  I offer a few more thoughts fwiw.  

 

I have argued that all TLDs are in fact brands of their registries, as by
definition they are indicators of source of the registry service.  Also I
can envision lots of companies, including current registrars and registries,
who might benefit from the SRSU model as Berry exemplifies it.  I envision
that many of them who essentially will allow use of domains to the public
(i.e. to all Facebook members, in Berry's example) would have robust
content-monitoring systems, and would see benefit to exercising quality
control over how all domains within the TLD are used.  The 'types' of TLDs
that could employ models like this may extend well beyond what we think of
'dotBrands' today (i.e. .canon and .facebook).  So long as the TLD operator
is ultimately responsible as the registrant as well as the 'registration
authority', from the BC's perspective these models should be encouraged.  

 

But these models may be disruptive to the status quo in ICANNland, and so
did not get very far in the Vertical Integration working group.  With the
Board's resolution on VI, it seemed that the SRSU and other innovative
models were being encouraged.  Yet now some elements of the "Code of
Conduct" are being proposed as a tool to essentially restrict business
models like SRSU, in favor of the incumbent ICANN contracting parties and
those who have designed their TLD models around the status quo.  The BC
should fight against that, as our support of the newTLD program has always
been founded on the innovative, competitive new uses of the DNS that are
envisioned (and those that have not been envisioned).

 

Best,

Mike

 

Mike Rodenbaugh

RODENBAUGH LAW

tel/fax:  +1 (415) 738-8087

http://rodenbaugh.com <http://rodenbaugh.com/> 

 

From: owner-bc-gnso@xxxxxxxxx [mailto:owner-bc-gnso@xxxxxxxxx] On Behalf Of
jarkko.ruuska@xxxxxxxxx
Sent: Friday, January 28, 2011 5:30 AM
To: berrycobb@xxxxxxxxxxxxxxxxxxx; bc-gnso@xxxxxxxxx
Subject: RE: [bc-gnso] pressing the BC recommendations for dot-brand TLDs

 

Dear all,

 

Just wanted to express my support for Berry's definition of a Single
Registrant TLD. In my opinion this is a simple enough (and probably the only
feasible) way to define such a thing.  

 

BR,

 

-jr

 

 

 

From: owner-bc-gnso@xxxxxxxxx [mailto:owner-bc-gnso@xxxxxxxxx] On Behalf Of
ext Berry Cobb
Sent: 28. tammikuuta 2011 2:12
To: 'bc - GNSO list'
Subject: RE: [bc-gnso] pressing the BC recommendations for dot-brand TLDs

 

Thank you Steve for updating the BC.  Adding to Steve's points......

 

The reason ICANN Staff, experienced Registry Operators, & some other
stakeholders will not sign on for "carve outs" is because there is NO BRIGHT
LINE DEFINTION FOR A BRAND.  In the context of TLDs what is a BRAND?  Is it
because they are Fortune 1000 company?  Do they own Trademarks in the USA or
Europe?  Do they earn over $2 billion dollars a year in revenue?  Where do
we start to draw the line?  If some sort of bright line exists, then please
share.  If it exists then I doubt we would see the pushback experienced
today or during the VI WG.

 

In my opinion, if the BC and IPC ever expect any headway regarding the
"dot-brand" concept, then we MUST stop using "DOT-BRAND."  Within my short
ICANN career, one thing I've noticed is that a BRAND is a loaded and charged
word among the community.  If the BC supports "carve outs," then the case
must be presented very specifically and using BRAND is not the way forward.
Framing this concept should embrace the use of "Single Registrant" only.
Notice how Single User & Multiple User is omitted?  The main reason SRSU
gained support during VI is only because of the Single Registrant component
and it's limitations in how domains were registered and used.  Anything
beyond SRSU was poking a stick at a tiger.  I remind everyone the reasoning
for SRSU & SRMU is only because BRAND could not be defined.

 

The following is how I view the possible scope of a "Single Registrant" TLD:

.         Any 2nd, 3rd, 4th,5th level domains registered are owned and
operated only the by the entity that owns the TLD

.         All WHOIS information for registered 2nd level domains reflect the
entity that owns the TLD

.         If the entity chooses to deploy content or allow use by others
external to them, the entity is still responsible or liable for that domain
and its content

.         The entity may register its own domains without equivalent access
to other Registrars (RAA concepts should still be used, but ZERO
registration fees to ICANN)

.         The entity may deploy and use its 2nd level domains how it sees
fit and the Reserve Names list no longer applies

.         The entity can "warehouse" domains because it owns the domains

.         The entity is required to provide Zone File Access for monitoring
and compliance

.         I am sure there are other elements to define the boundary here..

.         Therefore, much of the Code of Conduct is meaningless to a "Single
Registrant" TLD

 

So, using the Cannon example from Steve below, the above "Single Registrant"
concepts can satisfy the "carve outs" defined by the BC.  If Cannon chose to
register 2nd level domains to their customers, partners & vendors, but it is
still designated as the Registrant, then the Single Registrant carve outs
still apply.  What about the Facebook use case?  The one batted around most
often is berrycobb.facebook.  If Facebook chooses to register and supply me
a domain and the defined "Registrant" remains as Facebook and Facebook is
willing to take on the risk for the content I deploy on berrycobb.facebook,
then I imagine the stakeholders listed above will probably not have much
issue with "Single Registrant carve outs."  This is the essence to "Single
Registrant, Single User" concept.

 

Conversely, any hope for consensus in VI quickly broke down with a use case
for "Single Registrant Multiple Users."  Using Facebook as an example
again...if FB chose to allow me to register berrycobb.facebook, but instead
I am designated as the Registrant, Facebook now competes head to head with
other Registrars & Registries in the domain registration business.  This is
the crux of the debate.  Where does one draw the line as Facebook being a
social media "BRAND" vs. Facebook a social media "BRAND" that also chooses
to register domains and compete in the domain market.  If any exceptions or
carve outs are given to FB because they are designated a "BRAND", then
wouldn't other entities competing for the same registration dollar be at a
competitive disadvantage because they are bound by the full extent of the
Code of Conduct?  

 

Most will recall that I did not support the sections of the BC Position that
called for these SR exceptions, because it did not provide a bright line
solution for the community.  Rather, it called for nebulous, self-serving,
carve outs that only provided confusion.  I hope we do not repeat the same
mistake for future BC position statements.  I'm starting to believe that no
position is better than a half-baked one.

 

With all this said however, I CAN support a "Single Registrant" concept,
just not as we have it defined in our position today.  There is no doubt
that without some sort of designation for single registrant TLDs the Code of
Conduct will certainly interfere with operations and may in fact deter some
applications.  The challenge is that the "Single Registrant" type of TLD is
NOT defined in the Guidebook.  Until it is, then any exceptions will not
make the next AGB.  I am willing to join a team of BC members to develop a
specific proposal that not only benefits the BC, but benefits the entire
community by relieving confusion.

 

If we expect any momentum, the BC must come together and define a reasonable
solution that ICANN Staff and Community can embrace.  I am sure my fast-run
scope definition above has several holes.  So I welcome contributions to
fill them.  Gripes, complaints, & moans are also welcome if you feel I am
way off base.

 

Thank you, B

 

 

Berry Cobb

Infinity Portals LLC

berrycobb@xxxxxxxxxxxxxxxxxxx

http://infinityportals.com

720.839.5735

 

From: owner-bc-gnso@xxxxxxxxx [mailto:owner-bc-gnso@xxxxxxxxx] On Behalf Of
Steve DelBianco
Sent: Thursday, January 27, 2011 12:11 PM
To: 'bc - GNSO list'
Subject: [bc-gnso] pressing the BC recommendations for dot-brand TLDs

 

To: BC Members

Re:  ICANN Con call today regarding Registry Contracts

 

I joined a large con call today hosted by ICANN, to discuss new gTLD registy
agreement.  (see description at bottom of this note)

 

Berry Cobb and Jon Nevett were also on the call.

 

When we got to the Registry Code of Conduct, ICANN staff mentioned they had
received many comments on how this would or would not work for dot-brand
registries. 

 

At that point I brought up the BC concerns expressed in our Guidebook
comments filed 6-Dec in Cartagena.

 

I used the example of Canon, since they have said they may pursue a
dot-brand.  

I said Canon might want to operate its own Registrar and restrict
registrations to its  own operating divisions, like copiers.canon  and
cameras.canon     

And Canon might want to manage a big sub-domain of photographers using Canon
cameras, like [name].photos.canon

 

I said The Code of Conduct should not restrict dot-brands from using an
owned or closely affiliated registrar to register and manage names that it
controls.  (e.g., for divisions, product lines, locations, customers,
affiliates, etc. )

 

I gave  the BC recommendation to insert this clause into the Registry Code
of Conduct:

 

4.  Nothing set forth in articles 1, 2, or 3 shall apply to a
single-registrant ('dot brand') Registry Operator acting with respect to
user data that is under its ownership and control, or with respect to
conduct reasonably necessary for the management, operations and purpose of
the TLD. 

 

An experienced registry operator on the call said our 'carve out' would
allow 'gaming' and abuse.  (they say that a lot).

 

ICANN Staff is very resistant to any 'carve-out' for dot-brands.  They
oppose any exception (or even a definition) for dot-brand.   

Craig Schwartz said ICANN didn't want to get in the business of monitoring
Canon's copier business. ( I think that was the point of our recommendation
- we don't want ICANN getting involved in how a dot-brand allocates
registrations to entities it owns or controls)

 

Will discuss more on our Monday call, I hope.

 

-- 

Steve DelBianco

Executive Director

NetChoice

http://www.NetChoice.org and http://blog.netchoice.org 

+1.202.420.7482 

 

Temporary Drafting Group Work Session on New gTLD Base Registry Agreement
Issues
<http://blog.icann.org/2011/01/temporary-drafting-group-work-session-on-new-
gtld-base-registry-agreement-issues-%e2%80%93-to-be-held-27-january-2011/> -
To Be Held 27 January 2011

by Craig Schwartz on January 14, 2011

The Temporary Drafting Group will hold a teleconference on 27 January 2011.
The issues open for drafting/discussion during the call will include:

.         Suggestions for additional language for Specification 9 (the
Registry Code of Conduct) 

.         Proposed modifications to conditions related to the termination of
a registry services agreement 

.         Suggestions for clarifications to provision requiring advance
notice of registry price increases 

.         Concepts for continued registry operations instrument to provide
continuity of services

Results:

This is not a formal public consultation, but is intended to inform drafting
which might make up a later public consultation. Any results from the
Temporary Drafting Group will be included in documents that will be posted
for public comment. No results from the Group will necessarily be used in
any agreement drafts, but inputs from the Group will be considered by the
ICANN Staff in making recommendations relating to questions discussed or
posed to the Group.

Session:

This third Temporary Drafting Group session will be held via teleconference
on 27 January 2011 at 18.00 UTC (http://timeanddate.com/s/1xxz), and is
scheduled to last for 120 minutes.

Participation:

The Temporary Drafting Group was formed in early 2010 and announced in a 28
April 2010 blog
<http://blog.icann.org/2010/04/temporary-drafting-group-work-session-on-new-
gtld-implementation-issues-%E2%80%93-to-be-held-3-may-2010/>  post. If you
would like to participate, please submit your name to TDG-Legal@xxxxxxxxx,
and we will provide you with information for the call.

 

 

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