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

["Marilyn Cade " <marilynscade@xxxxxxxxxxx>]

Without any prejudice on any topic, some stuff belongs off list. :-) 

There are over 50 members in BC and we need to reflect a respect for what is 
best (eg: clearly a BC general issue) and what is best done bilaterally. 

Mike, I think that was what you intended/ you were offering to forward client 
materials to I party, not the full BC. 


Thanks. 

Marilyn Cade 
BC Chair
Sent via BlackBerry by AT&T

-----Original Message-----
From: Matkowsky  Jonathan <Jonathan.Matkowsky@xxxxxxxxxxxxxxxxx>
Date: Sat, 29 Jan 2011 00:35:49 
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 <mailto: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 &#8211; 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 <mailto:TDG-Legal@xxxxxxxxx> , and we will provide you 
with information for the call.
 

 
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