Re: [bc-gnso] McCarthy/Franklyn comments on closed generics

[Andy Abrams <abrams@xxxxxxxxxx>]

BC Members,

You can find Google's public comments on closed generics here:
http://forum.icann.org/lists/comments-closed-generic-05feb13/msg00196.html

Happy to answer any questions or discuss further in Beijing.

Best,

Andy




On Thu, Mar 7, 2013 at 5:13 PM, Elisa Cooper
<Elisa.Cooper@xxxxxxxxxxxxxxx>wrote:

>  BC Members,****
>
> ** **
>
> I definitely support inviting the .Brands that are attending the Beijing
> meeting to join us, and I have already invited the few that I know are
> attending.****
>
> ** **
>
> While I must recuse myself from this issue, I am fully supportive of
> adding this topic to our agenda if others are interested in doing so.****
>
> ** **
>
> I will actually be sending an e-mail tomorrow with a link to a survey
> which will ask for your thoughts on a number of issues, including the
> agenda for the Beijing meeting****
>
> ** **
>
> Best,****
>
> Elisa****
>
>  ****
>
> Elisa Cooper****
>
> Director of Product Marketing****
>
> MarkMonitor****
>
>  ****
>
> 208 389-5779 PH****
>
> ** **
>
> *From:* owner-bc-gnso@xxxxxxxxx [mailto:owner-bc-gnso@xxxxxxxxx] *On
> Behalf Of *Ron Andruff
> *Sent:* Thursday, March 07, 2013 1:30 PM
> *To:* 'Smith, Bill'; 'bc - GNSO list'
> *Subject:* RE: [bc-gnso] McCarthy/Franklyn comments on closed generics****
>
> ** **
>
> Thanks for your contribution, Bill.  I appreciate your thinking outside
> the box.  To that end, I would highly recommend that we pursue the
> suggestion to invite all of the .BRANDS to our BC meeting in BJ and give
> that discussion significant time for all of us to better understand what we
> are discussing.  To be clear, this recommendation is not ‘kicking the can
> down the road’; rather it is stepping up and addressing the issue as soon
> as we can.  ****
>
> ** **
>
> I would also submit that we do the same regarding the matter of
> singular/plural confusingly similar.****
>
> ** **
>
> Separately, I noticed that the IPC list has been previously copied on this
> thread. With this mail I am re-orienting this discussion exclusively to the
> BC list.****
>
> ** **
>
> Kind regards,****
>
> ** **
>
> RA****
>
> ** **
>
> Ronald N. Andruff****
>
> RNA Partners, Inc. <http://www.rnapartners.com>****
>   ------------------------------
>
> *From:* Smith, Bill 
> [mailto:bill.smith@xxxxxxxxxxxxxx<bill.smith@xxxxxxxxxxxxxx>]
>
> *Sent:* Thursday, March 07, 2013 3:20 PM
> *To:* Mike Roberts
> *Cc:* Ron Andruff; bc - GNSO list; IPC Discussion List
> *Subject:* Re: [bc-gnso] McCarthy/Franklyn comments on closed generics****
>
> ** **
>
> Why is it that the BC, or any other constituency has to come up with *one*
> position? It's fairly clear that we will have a multiple opinions, perhaps
> as many as there are members. T my mind, that is a good thing and allows
> this community, the Internet one, to be vibrant, multi-colored if you will,
> as opposed to the black and white world of voting.****
>
> ** **
>
> I agree with Ron that more discussion is required. I'm not sure I agree
> with a "minority" opinion since that suggests voting, and that should be
> anathema in a consensus-based organization.****
>
> ** **
>
> I don't have a solution to the closed generic problem, and I'm not sure
> one will be say to develop. I will offer that for certain intractable
> problems, restating the problem in a different form can sometimes lead to
> an 80% solution to the original problem.****
>
> ** **
>
> Perhaps such an approach could work here (and elsewhere within ICANN).
> While certainly guilty of the "look there's a dead horse let's beat it"
> mentality here at ICANN, I suggest we attempt to seek more creative ways to
> address some of these issues.****
>
> ** **
>
> Some options:****
>
> ** **
>
> Kick it down the road - Perhaps we aren't quite ready to decide this issue
> and therefore need more input. Is there harm in delaying decisions on
> "closed generics"? If so, who is harmed and to what extent?****
>
> ** **
>
> Make it someone else's problem - Would WIPO be better suited to decide
> this issue? Perhaps the GAC since (some) governments are claiming their
> role at ICANN is too limited?****
>
> ** **
>
> Create a market - Consider charging closed generics additional fees with
> those funds directed to some "beneficial purpose". Allow applicants to
> "bid". Perhaps funds would be used to support the IGF.****
>
> ** **
>
> Happy to hear from others.****
>
>
> On Mar 7, 2013, at 10:14 AM, "Mike Roberts" <mmr@xxxxxxxxxxxxxxxxx> wrote:
> ****
>
>  Ron - ****
>
> ** **
>
> Applaud your search for clarity.  There's only one possible response:****
>
> ** **
>
> "What is it you don't understand about closed monopoly generic gTLDs?  The
> answer is no."****
>
> ** **
>
> - Mike****
>
> ** **
>
> ** **
>
> On Mar 7, 2013, at 9:20 AM, Ron Andruff wrote:****
>
> ** **
>
> Dear colleagues,****
>
>  ****
>
> I hesitate to wade into the middle of a lawyer’s debate (not being one),
> but there are some relevant points being made in this discussion and I
> would like to highlight that.  Both Phil and Mike have ‘dogs in this fight’
> as they say, and for the record I do not.  It seems to me that even though
> the BC has some members who are applicants for generic words, the BC as a
> whole needs to have more discussion on this matter to get some clarity and
> sadly I, for one, am not seeing enough discussion on this list.  Generic
> words as TLDs is a BIG deal and it behooves us to flesh this out and take a
> position on it one way or the other (allowing for dissenting statements to
> the greater BC position).  To turn a blind eye is to ignore the elephant in
> the room, in my view.  Lack of action could also send a message that the
> members are so conflicted that the BC neglected its responsibility to bring
> the voice of small and big business to the ICANN debate on this matter.***
> *
>
>  ****
>
> With regard to Mike’s comment: “…care much more about the problem of
> .sport and .sports, for example, coexisting as ICANN appears set to allow.
> That seems to have a much higher likelihood of massive consumer confusion…”
>   I believe this issue needs to be pushed back both vigorously and
> rapidly, before it can gain a foothold.  Clearly, plurals and singular
> words are confusingly similar… one only need pronounce both words right
> after each other to hear how confusingly similar they are.  ****
>
>  ****
>
> These are my two cents!  I welcome hearing other members’ thoughts on
> these two critically important issues.****
>
>  ****
>
> Kind regards,****
>
>  ****
>
> RA****
>
>  ****
>
> Ronald N. Andruff****
>
> RNA Partners, Inc. <http://www.rnapartners.com/>****
>   ------------------------------
>
> *From:* owner-bc-gnso@xxxxxxxxx 
> [mailto:owner-bc-gnso@xxxxxxxxx<owner-bc-gnso@xxxxxxxxx>]
> *On Behalf Of *Phil Corwin
> *Sent:* Wednesday, March 06, 2013 3:15 PM
> *To:* **mike@xxxxxxxxxxxxxx**; 'bc - GNSO list'
> *Cc:* 'IPC Discussion List'
> *Subject:* RE: [bc-gnso] RE: McCarthy/Franklyn comments on closed generics
> ****
>
>  ****
>
> Mike:****
>
>  ****
>
> I appreciate the disclosure in the attachment that you represent “a number
> of applicants intending to operate ‘Single-Registrant’ TLD models as
> allowed by the terms of the Final Applicant Guidebook and Draft Registry
> Agreement”.****
>
>  ****
>
> While you know that I love to engage in vigorous legal and policy debate,
> I regret that I don’t have the bandwidth today to respond to all your
> questions because of client work being done under deadline. I have no doubt
> this dialogue will continue, and others on the distribution list can of
> course join in, and I look forward to further engagement myself when my In
> Box is a bit less overflowing. ****
>
>  ****
>
> I would state that if .brands and closed generics are viewed as joined at
> the hip, my personal preference would be to deny the COC exemption to
> closed generics and allow .brands to amend their applications so that they
> are for non-generic terms (e.g., let Microsoft apply for single registrant
> operation of, for illustrative example,  .mswindows, Apple for .iApple,
> etc.) These are not multi-registrant gTLDs that need to attract intuitive
> type-in traffic, and to the extent they may be used for external as well as
> internal purposes they have the marketing clout to readily educate
> customers, suppliers, and Internet users regarding their proprietary right
> of the dot address.****
>
>  ****
>
> I do note that while your attachment asserts that “ICANN has reopened a
> significant policy issue that was debated many years ago”, neither it nor
> your e-mail address a central point I’ve made – that the registry agreement
> requires adherence to the COC, that the COC generally restricts
> self-registrations by the registry operator, and that the Section 6
> exemption for single-registrant gTLDs requires an ICANN discretionary
> decision and application of a public interest standard. I know of no prior
> debate on what that public interest standard should be. Any comment on the
> relevance of the Code of Conduct to this discussion? I’m sure your clients
> must have been aware of it as they prepared their applications.****
>
>  ****
>
> Best,****
>
> Philip****
>
>  ****
>
>  ****
>
>  ****
>
> *Philip S. Corwin, Founding Principal*****
>
> *Virtualaw LLC*****
>
> *1155 F Street, NW*****
>
> *Suite 1050*****
>
> *Washington, DC 20004*****
>
> *202-559-8597/Direct*****
>
> *202-559-8750/Fax*****
>
> *202-255-6172/cell*****
>
> * *****
>
> *Twitter: @VlawDC*****
>
>  ****
>
> *"Luck is the residue of design" -- Branch Rickey*****
>
>  ****
>
> *From:* owner-bc-gnso@xxxxxxxxx 
> [mailto:owner-bc-gnso@xxxxxxxxx<owner-bc-gnso@xxxxxxxxx>]
> *On Behalf Of ***icann@xxxxxxxxxxxxxx**
> *Sent:* Wednesday, March 06, 2013 2:03 PM
> *To:* Phil Corwin; 'bc - GNSO list'
> *Cc:* 'IPC Discussion List'
> *Subject:* RE: [bc-gnso] RE: McCarthy/Franklyn comments on closed generics
> ****
>
>  ****
>
> Phil,****
>
>  ****
>
> My disclosure is contained at the head of my response to ICANN’s request
> for public comments, attached.  ****
>
>  ****
>
> You have not tried to answer some key questions.  Why should Microsoft get
> to keep .windows closed from the rest of the world?  What about the fact
> that almost all ‘generic’ words in fact are registered as trademarks?  What
> about the fact that generic terms have been exclusive domain name property
> since the beginning of the DNS, apparently with no adverse impact on either
> competition or consumer confusion?  Why should TLD policy be any different?
> ****
>
>  ****
>
> It has been very difficult for me, personally, to criticize Professor
> McCarthy.  He is quite simply the best teacher I have ever had, and taught
> me the core principles of trademark law on which I have built my career.
> But he is wrong here, his reasoning is speculative and suspect on this
> important point, as I have tried to explain.  I would love to see his or
> your answers to my questions.****
>
>  ****
>
> Mike Rodenbaugh****
>
> RODENBAUGH LAW****
>
> tel/fax:  +1.415.738.8087****
>
> http://rodenbaugh.com ****
>
>  ****
>
> *From:* Phil Corwin [mailto:psc@xxxxxxxxxxx <psc@xxxxxxxxxxx>]
> *Sent:* Wednesday, March 06, 2013 10:12 AM
> *To:* mike@xxxxxxxxxxxxxx; 'bc - GNSO list'
> *Cc:* IPC Discussion List
> *Subject:* RE: [bc-gnso] RE: McCarthy/Franklyn comments on closed generics
> ****
>
>  ****
>
> Mike:****
>
>  ****
>
> With all respect, Prof. McCarthy’s 7-volume treatise on Trademarks and
> Unfair Competition has been cited in more than 3,000 judicial opinions *
> http://en.wikipedia.org/wiki/J._Thomas_McCarthy*. So I would hesitate to
> agree that he is “obviously wrong” on this matter.  At a minimum, given all
> the time and energy that ICANN has devoted to respecting and protecting
> trademarks through such new gTLD RPMs as the TMC and URS, his expert view
> on the incompatibility of closed gTLDs with trademark law should be taken
> very seriously.****
>
>  ****
>
> While I personally disagree that closed generics [which I regard as
> applications in which it is proposed that the registry operator be the sole
> registrant in a proposed string in which the applicant holds no trademark
> rights; that is, not a .brand] don’t raise trademark law concerns, I do
> concur that competition issues also arise and may even be the primary
> issue. In that regard, as well as in regard to claims that the ICANN
> request for comments on closed generics somehow raises a new issue, sets a
> precedent for major changes in the Applicant Guidebook, or portends an
> unfair change in rules that applicants relied upon, I would respond that
> the need to obtain an exemption from the Code of Conduct (COC) for a closed
> registry has always been present, as well as the application of a public
> interest standard to the granting of such a waiver, and that applicants
> cannot now claim surprise or ignorance.****
>
>  ****
>
> Section 2.14 of the Registry Agreement has always stated that a registry
> operator must comply with the COC set forth at Specification 9.****
>
>  ****
>
> Section 1.b of the COC has always stated that the registry operator and
> its parents, affiliates, subcontractors, or other related entities can only
> register domains in the registry to a very limited extent – restricted to
> names that are reasonably necessary for the management, operations, and
> purpose of the TLD.****
>
>  ****
>
> Section 6 of the COC provides for an exemption process whereby ICANN may,
> in its sole discretion and conditioned on its “reasonable satisfaction”,
> allow the registry operator to register and maintain  all domain
> registrations for its own exclusive  use – if ICANN determines that
> “application of this Code of Conduct to the TLD is not necessary to protect
> the public interest”. My understanding of the exemption clause is that it
> arose from the BC to accommodate .brands, without any contemplation that
> certain applicants would seek to lock up dozens of key dictionary words for
> their own exclusive use (in fact, their goal may be less to use the
> registries than to deny access to current and potential competitors).****
>
>  ****
>
> So in my view this debate is not about creating a new definition for
> “closed generics” but whether the public interest requires ICANN to deny
> exemption requests for proposed non-.brand closed registries. (And I
> absolutely reject the sophistic and unconvincing arguments I have seen that
> an applicant can bypass the exemption process entirely  by simply declaring
> that its gTLD’s “purpose” is to be for its own exclusive use – that would
> allow the exception to swallow the rule and render Section 6 a pointless
> nullity.)****
>
>  ****
>
> My personal view is that closed generic gTLDs are inherently
> anti-competitive monopolies and that ICANN should adopt a position that
> denial of such exemption requests is necessary to protect the public
> interest. These applications are incompatible with the competition and
> innovation justifications made for the new gTLD program because they are
> motivated by anti-competitive self-interest and the goal of denying these
> strings as a platform for pro-competitive innovation to others. New gTLDs
> are the perfect platform for competitive vertical search – are competition,
> innovation and the public interest better served by a .book for Amazon’s
> exclusive use and protection of its existing dominance, a .search for
> Google’s exclusive use and protection of its existing dominance,  or by
> open gTLDs for those strings that can be utilized by thousands of
> innovative market entrants?****
>
>  ****
>
> I further believe that such a position is in ICANN’s best long-term
> interest, as well as the interest of all who want to preserve its
> multi-stakeholder model against governmental intrusion. While it is true
> that the competitive issues raised by closed gTLDs are the ultimate
> responsibility of national competition authorities, ICANN will do itself no
> favors if it approves closed generic gTLDs that subsequently require years
> of investigation, enforcement actions, and expenditure of human and
> financial resources (in an era of constrained public resources) by such
> authorities when the matter could have been avoided in the first place by
> adopting a responsible position of the public interest consideration for
> granting COC exemptions.****
>
>  ****
>
> A final consideration is the potential spectacle of thousands of closed
> generic applications flowing into ICANN on the second round if it
> accommodates them in the first. Domain and marketing consultants will
> surely be advising the world’s largest companies that if they don’t file
> applications to lock up key dictionary words for their own  primary
> commercial activities that their competitors may well grab then and close
> them off. ICANN could well realize a $billion in application fees in the
> second round by marketing key words in the world’s major languages for the
> purpose of locking them away rather than making them available to global
> Internet users. I for one find the prospect of selling off exclusive use of
> such words as if they were municipal  stadium naming rights to be crass and
> unseemly and, while in ICANN’s financial interests, inconsistent with its
> responsibilities and role of managing the DNS in a manner consistent with
> the public good.****
>
>  ****
>
> In closing, while I shall leave it to Professor McCarthy to decide whether
> to take offense and respond to your assertion that his comment letter
> constitutes an “apparent conflict of interest” because of Microsoft’s
> sponsorship of the annual McCarthy Symposium, I am incredulous that he
> would make the statements contained in his comment letter if he did not
> fully subscribe to them. For the sake of full disclosure, while the views
> expressed above are my personal views, I am providing counsel to a new gTLD
> applicant that is in contention with a Google application for a closed
> generic (ICA, the client with whom I am generally associated and which I
> represent on the BC, did not have a consensus among its members on closed
> generics). For the sake of full disclosure, and especially given your
> assertion that Professor McCarthy’s comments evidence a conflict of
> interest, will you disclose whether you are advising applicants for closed
> generics?****
>
>  ****
>
> Regards,****
>
> Philip ****
>
>  ****
>
>  ****
>
>  ****
>
>  ****
>
>  ****
>
> *Philip S. Corwin, Founding Principal*****
>
> *Virtualaw LLC*****
>
> *1155 F Street, NW*****
>
> *Suite 1050*****
>
> *Washington, DC 20004*****
>
> *202-559-8597/Direct*****
>
> *202-559-8750/Fax*****
>
> *202-255-6172/cell*****
>
> * *****
>
> *Twitter: @VlawDC*****
>
>  ****
>
> *"Luck is the residue of design" -- Branch Rickey*****
>
>  ****
>
> *From:* Mike Rodenbaugh [mailto:mike@xxxxxxxxxxxxxx <mike@xxxxxxxxxxxxxx>]
>
> *Sent:* Wednesday, March 06, 2013 11:43 AM
> *To:* Phil Corwin; 'bc - GNSO list'
> *Cc:* IPC Discussion List
> *Subject:* RE: [bc-gnso] RE: McCarthy/Franklyn comments on closed generics
> ****
>
>  ****
>
> Phil, thanks for sending around Prof. McCarthy and Prof. Franklyn’s
> statement on so-called ‘closed generic’ TLD strings.  I have great respect
> for Prof. McCarthy; he taught me trademark law at USF in the early ‘90’s
> and his treatise is a leading authority.  However, this statement is not
> persuasive.  The fundamental premise you quote is obviously wrong.  ****
>
>  ****
>
> While trademark law, by definition, may prohibit trademark registration of
> generic terms, it does not and has never prohibited individuals from
> gaining exclusive property rights in generic terms.  There are millions of
> generic terms that are the subject of exclusive domain name property
> rights, i.e. chocolate.com, sex.com, etc.  Many countries recognize that
> chocolate.com, for example, can function as a trademark even for the
> service of selling chocolate, particularly after a period of exclusive use
> by which distinctiveness is acquired.  As you well know, there are many
> such trademark registrations in many jurisdictions.  Exclusive ownership
> has always been permitted in regards to domain names at all levels of the
> DNS – including the top level.  Why should there be any policy difference
> between TLDs and .com domains?  Though the **US** has been more
> conservative in granting trademark rights in domain names or TLD strings,
> no ****US**** law has ever sought to prohibit exclusive use of generic
> domain names, and many arguably generic words are registered as marks for
> related goods and services (as well as a few arguably generic TLD
> strings).  Indeed many TLD operators and prospective TLD operators have
> secured trademark registration in their TLD string, some in the **U.S.**and 
> many more in
> **Europe** and elsewhere.****
>
>  ****
>
> As Prof. McCarthy taught me and thousands of others, trademark law seeks
> to prevent confusion as to source of a good or service.  The type of
> confusion he and Prof. Franklyn cite in their statement on this issue has
> nothing to do with product source, and is purely speculative.  They say
> (and you quote):****
>
>  ****
>
> “consumers may mistakenly believe they are using a gTLD that allows for
> competition, when in reality the gTLD is closed and the apparently
> competitive products are being offered by a single entity”****
>
>  ****
>
> They are speculating, without citation to any evidence or authority, that
> consumers “may” be confused as to some aspect or quality of the TLD
> service, but that has nothing to do with confusion as to the source of that
> service.  They are speculating that the marketing of such TLDs will be
> confusing, when there is no factual basis whatsoever for such speculation.
> Web users have had long exposure to generic domain names used by myriad
> businesses, including well-known brands, throughout the world for more than
> 20 years, with absolutely no confusion ever documented as far as I am
> aware.  That evidence ought to trump the blank speculation even of
> well-respected trademark academics.****
>
>  ****
>
> Furthermore, they do not address why Apple Computer should get to own
> .apple or Microsoft should get to own .windows (among many other examples
> of ‘generic’ dictionary words that are trademarks, and that will be closed
> TLDs), and exclude anyone else from registering domains in that TLD, even
> if they want to refer to the fruit or to the glass building component.
> They do not address how consumer confusion in that case would logically be
> any different than the consumer confusion they posit.****
>
>  ****
>
> Finally, it must be noted that the annual McCarthy Symposium, probably not
> coincidentally held just a few days ago, counts on Microsoft as its major
> sponsor.  And of course Microsoft has become one of the most outspoken
> critics of so-called closed generic TLDs, quite curiously despite its own
> applications for .docs, .windows and other ‘closed generic’ TLDs.  ****
>
>  ****
>
> Given this apparent conflict of interest, the blatantly faulty premise in
> its core reasoning, and the misguided speculation as to future consumer
> expectations that appears central to their argument, this one page
> statement leaves a lot of questions and is far from persuasive, imho.   **
> **
>
>  ****
>
> This is not a trademark issue, but a competition issue.  It is also an
> issue of fairness given that closed business models have been accepted by
> the community since 2006, and many companies have invested heavily in
> reliance on the fact that such models are not prohibited by ICANN’s rules.
>  All companies had the same opportunity to make such investments.  The
> primary voices arguing against these models now are surrogates for those
> who passed on the opportunity (and, curiously, Microsoft), those who are
> competing in contention sets with closed business models, and those who
> want to sell unrestricted domain names and fear disruption to the
> traditional domain name business model on which they have built their
> business.  Those patently self-interested concerns are not the sort of
> concerns that should make any difference to ICANN at this point in the new
> TLD program, or to anyone else in the world.****
>
>  ****
>
> We should all care much more about the problem of .sport and .sports, for
> example, coexisting as ICANN appears set to allow.  That seems to have a
> much higher likelihood of massive consumer confusion than does the
> operation of closed TLDs.****
>
>  ****
>
> Best,****
>
> Mike****
>
>  ****
>
> Mike Rodenbaugh****
>
> RODENBAUGH LAW****
>
> tel/fax:  +1.415.738.8087****
>
> http://rodenbaugh.com ****
>
>  ****
>
> *From:* owner-bc-gnso@xxxxxxxxx 
> [mailto:owner-bc-gnso@xxxxxxxxx<owner-bc-gnso@xxxxxxxxx>]
> *On Behalf Of *Phil Corwin
> *Sent:* Friday, March 01, 2013 4:29 PM
> *To:* Steve DelBianco; bc - GNSO list
> *Subject:* [bc-gnso] RE: Contention sets for new gTLDs****
>
>  ****
>
> “Unbelievably, they did not consider the singular and plural versions of
> key words to be confusingly similar.”****
>
>  ****
>
> Unbelievable indeed.  How about .dumb and .dumber?****
>
>  ****
>
> Meanwhile the leading trademark authority in the ****United States****,
> Professor Thomas McCarthy,  has just filed a statement opposing closed
> generic gTLDs as being inconsistent with trademark law and its goals --
> http://forum.icann.org/lists/comments-closed-generic-05feb13/msg00034.html--
> ****
>
>  ****
>
> “Trademark law in every country in the world forbids individuals to gain
> exclusive****
>
> property rights in generic names of products. One of the primary
> rationales for this rule is to****
>
> prevent a single person or company from gaining an unfair competitive
> advantage in the****
>
> marketplace. Private ownership of generic language is not consistent with
> free enterprise and****
>
> fair competition in an open economy. If ICANN were to approve closed,
> generic gTLDs, these****
>
> important goals would be undermined…****
>
>  ****
>
> Transparency and consumer choice are goals of the trademark system of
> every country in****
>
> the world. In our view, these values are threatened by closed, generic
> gTLDs. Indeed, should****
>
> these types of new gTLDs be approved, consumers may mistakenly believe
> they are using a****
>
> gTLD that allows for competition, when in reality the gTLD is closed and
> the apparently****
>
> competitive products are being offered by a single entity. This would
> allow the owner of the****
>
> generic gTLD to gain exclusive recognition as the provider of a generic
> service, something that****
>
> is prohibited by Trademark law.”****
>
>  ****
>
> How will that reflect on ICANN and the new gTLD program?****
>
>  ****
>
> *Philip S. Corwin, Founding Principal*****
>
> *Virtualaw LLC*****
>
> *1155 F Street, NW*****
>
> *Suite 1050*****
>
> *Washington, DC 20004*****
>
> *202-559-8597/Direct*****
>
> *202-559-8750/Fax*****
>
> *202-255-6172/cell*****
>
> * *****
>
> *Twitter: @VlawDC*****
>
>  ****
>
> *"Luck is the residue of design" -- Branch Rickey*****
>
>  ****
>
> *From:* owner-bc-gnso@xxxxxxxxx 
> [mailto:owner-bc-gnso@xxxxxxxxx<owner-bc-gnso@xxxxxxxxx>]
> *On Behalf Of *Steve DelBianco
> *Sent:* Friday, March 01, 2013 6:50 PM
> *To:* bc - GNSO list
> *Subject:* [bc-gnso] Update: Contention sets for new gTLDs****
>
>  ****
>
> Wanted you all to see this.   I think it will reflect poorly on ICANN's
> expansion of TLDs. ****
>
>  ****
>
> ICANN hired an international expert panel to scour 1900 new TLD strings
> and determine which were confusingly similar, so they could be combines in
> the same contention set.  ****
>
>  ****
>
> This is to ensure we don't delegate 2 TLD strings that would confuse
> Internet users because they are too similar.  I expected, for example, that
> the applications received for .hotel and .hotels would be in the same
> contention set, since it would be confusing for users to have both TLDs out
> there.  (It would increase the cost of defensive registrations, too, since
> hotels would have to buy domains in both TLDs.  )****
>
>  ****
>
> After several months of careful study, ICANN's experts published their
> contention sets yesterday. 
> (link<http://www.icann.org/en/news/announcements/announcement-26feb13-en.htm>)
>  ****
>
>   ****
>
>    They "identified" 230 "exact match contention sets" where multiple
> applicants sought the exact same string.****
>
>  ****
>
> And they found just 2 "non-exact match contention sets"  (unicom and
> unicorm; hoteis and hotels )****
>
>  ****
>
> Unbelievably, they did not consider the singular and plural versions of
> key words to be confusingly similar.  ****
>
>  ****
>
>  This means we will get new TLDs for both the singular and plural
> versions of keywords such as:****
>
>  ****
>
> ACCOUNTANT ACCOUNTANTS****
>
> AUTO  AUTOS****
>
> CAR CARS****
>
> CAREER CAREERS****
>
> COUPON COUPONS****
>
> CRUISE CRUISES****
>
> DEAL DEALS****
>
> FAN FANS****
>
> GAME GAMES****
>
> GIFT GIFTS****
>
> HOME HOMES****
>
> HOTEL HOTELS****
>
> HOTEL HOTELES****
>
> KID KIDS****
>
> LOAN LOANS****
>
> MARKET MARKETS****
>
> NEW NEWS****
>
> PET PETS****
>
> PHOTO PHOTOS****
>
> REVIEW REVIEWS****
>
> SPORT SPORTS****
>
> TOUR ****TOURS********
>
> WEB WEBS****
>
> WORK WORKS****
>
>  ****
>
> What are the implications for applicants?   Well, let's take an example.
>  The 2 Applicants for .GIFT just got a huge gift from ICANN when they were
> not placed in the same contention set as the 2 applicants for .GIFTS****
>
> One of the 2 .GIFT guys must prevail in their "singular" contention set.
> They can then proceed to delegation, as they planned.  Or they can
> negotiate to be bought-out by the winning applicant from the plural
> contention set ( .GIFTS ).****
>
> In other words, many applicants dodged a bullet by escaping from
> contention with their singular/plural form competitors.   My guess is they
> want to explore ways to monetize their good fortune. ****
>
>  --****
>
> Steve DelBianco****
>
> Executive Director****
>
> NetChoice****
>
> http://www.NetChoice.org and http://blog.netchoice.org ****
>
> +1.202.420.7482 ****
>
>  ****
>
>  ****
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> ** **
>
>


-- 
Andy Abrams | Trademark Counsel
*Google* | 1600 Amphitheatre Parkway, Mountain View, CA 94043
(650) 669-8752 <https://www.google.com/voice#phones>