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

[Andy Abrams <abrams@xxxxxxxxxx>]

BC Members,

Following up on an old thread.  Just published - here is the update to the
amendments on.search, .app, .blog and .cloud:
http://www.icann.org/en/news/correspondence/falvey-to-willett-06apr13-en

Best,

Andy


On Sat, Mar 9, 2013 at 4:36 AM, Andy Abrams <abrams@xxxxxxxxxx> wrote:

> 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 ****
>>
>>  ****
>>
>>  ****
>>     ------------------------------
>>
>> No virus found in this message.
>> Checked by AVG - www.avg.com
>> Version: 2013.0.2899 / Virus Database: 2641/6130 - Release Date: 02/25/13
>> ****
>>  ------------------------------
>>
>> No virus found in this message.
>> Checked by AVG - www.avg.com
>> Version: 2013.0.2899 / Virus Database: 2641/6130 - Release Date: 02/25/13
>> Internal Virus Database is out of date.****
>>  ------------------------------
>>
>> No virus found in this message.
>> Checked by AVG - www.avg.com
>> Version: 2013.0.2899 / Virus Database: 2641/6130 - Release Date: 02/25/13
>> Internal Virus Database is out of date.****
>>
>> ** **
>>
>>
>
>
> --
> Andy Abrams | Trademark Counsel
> *Google* | 1600 Amphitheatre Parkway, Mountain View, CA 94043
> (650) 669-8752 <https://www.google.com/voice#phones>
>



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