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

["Matkowsky, Jonathan" <Jonathan.Matkowsky@xxxxxxxxxxxxxxxxx>]

The case I found that supports this is a TTAB case from 1993 - Commodore
Elec. Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503.  That case quoted
legislative history that a bona fide intent means an intention that is
firm, even though it may be contingent upon the outcome of a future
event.



From: Matkowsky, Jonathan
Sent: Friday, January 28, 2011 4:36 PM
To: icann@xxxxxxxxxxxxxx; bc-gnso@xxxxxxxxx
Subject: RE: [bc-gnso] pressing the BC recommendations for dot-brand
TLDs



I wanted to also follow up on the issue of bona fide intent, and whether
if there are competing applicants, all would have a bona fide intent to
use that mark.  While it has always been true that intent has to be more
than a hope or a wish, the intent can be an external contingency.



Jonathan Matkowsky



From: owner-bc-gnso@xxxxxxxxx [mailto:owner-bc-gnso@xxxxxxxxx] On Behalf
Of Mike Rodenbaugh
Sent: Friday, January 28, 2011 3:37 PM
To: bc-gnso@xxxxxxxxx
Subject: RE: [bc-gnso] pressing the BC recommendations for dot-brand
TLDs



Thanks for clarifying.  My client's applications were refused by the
Examining Attorney, and now are on appeal before the TTAB (still within
the PTO).  I'll forward you some materials.



Use in commerce of a mark in connection with domain registration
services can and has occurred without regard to ICANN, therefore a bona
fide intent to supply those services need not involve ICANN.



To the extent they are relevant, ICANN registry contracts are designed
to ensure continuity of registry operations upon termination.  So
trademark rights should be assigned to the successor registry operator
who is continuing to supply services under that TLD string/brand.  I see
no fundamental reason to ignore the fact that TLDs do function as
indicators of source for the registry services provided by that TLD
operator.  The trademark laws protect colors, sounds, shapes, etc.,...
so I would like to understand the logic behind any argument to deny
trademark protection to TLD strings.



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 3:03 PM
To: 'icann@xxxxxxxxxxxxxx'; bc-gnso@xxxxxxxxx
Subject: RE: [bc-gnso] pressing the BC recommendations for dot-brand
TLDs





Mike,



I make no judgments about your particular clients, am not familiar with
the facts surrounding their application and would be happy to see the
briefing materials you prepared for the TTAB.  I assume this means that
your client's application received a final refusal from the PTO?



If someone is offering services not related to registry services, I
agree this may be a different story.



Perhaps the TTAB will opine on this legal issue, but I don't think it's
possible to have "bona fide intent to use" a mark when the underlying
contract to operate the services under that name have not yet been
awarded to you.  You -- and other competitive bidders -- may all have a
bona fide *hope* that you'll receive such rights, but I don't think your
bona fide intent to use can begin until the period until you're actually
awarded the contract by ICANN up until the time you start actual use in
commerce.



Regarding your idea that ICANN simply amend its contract to require
registries to disavow their trademark rights after cancellation of their
contract, I think it's simpler for the contract to prohibit trademark
registrations in the first place, at least for the registry services
supplied under the contract.  "Disavowing" trademark rights after the
fact means the registry must either assign trademark rights to ICANN (do
we really want ICANN owning these marks?) or a third party, both of
which may be difficult for ICANN to enforce, or abandoning the trademark
rights, which is not a great idea from a trademark policy perspective.



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 5:25 PM
To: bc-gnso@xxxxxxxxx
Subject: RE: [bc-gnso] pressing the BC recommendations for dot-brand
TLDs

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 - To Be Held 27 January 2011
<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/>

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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