Comments of Target Domain Holdings, LLC

[<wagner.mark@xxxxxxxxxx>]

Following are the Comments of Target Domain Holdings, LLC, a subsidiary of 
Target Corporation

"ICANN has already received many thoughtful comments suggesting or denying that 
it would be unfair for a single business to make exclusive use, in the 
top-level domain name space, of a generic word for the business's product - 
e.g., for a bookseller to have exclusive use of .book, or for a tire 
manufacturer to have such use of .tires.  We offer no opinion on the propriety 
of these so-called closed generic gTLDs, but we strongly urge ICANN to ensure 
that any action it takes does not affect brand owners who have applied, 
directly or through an affiliate, to operate gTLDs corresponding to their brand 
names.

"ICANN and the domain name community knew and accepted, well prior to the 
opening of the new gTLD application process, that closed .brand gTLDs would be 
applied for and allowed to operate as part of ICANN's expansion of the domain 
name space.  This is demonstrated by the exception to the Registry Operator 
Code of Conduct, written into the proposed Registry Agreement included in the 
Applicant Guidebook.  The exception provides that a registry operator need not 
allow third parties to register or use second level domain names within its 
gTLD, so long as:

(i) all domain name registrations in the TLD are registered to, and maintained 
by, Registry Operator for its own exclusive use, (ii) Registry Operator does 
not sell, distribute or transfer control or use of any registrations in the TLD 
to any third party that is not an Affiliate of Registry Operator, and (iii) 
application of this Code of Conduct to the TLD is not necessary to protect the 
public interest.

"(See Section 6 of Specification 9 of the proposed new gTLD Registry 
Agreement.)   The very purpose of this exception was to accommodate closed 
.brand gTLDs.

"Nonetheless, if ICANN does not exercise caution, actions it might take against 
closed generic gTLDs could also ensnare closed .brand gTLDs.  This would 
frustrate settled expectations, on which many applicants reasonably relied, 
without addressing the concerns that have been raised about closed generic 
gTLDs.  To avoid this outcome, ICANN should exclude from the definition of 
closed generics any string that is a brand name of the applicant, or its 
affiliated entity, even if the string should happen to have other meanings that 
are unrelated to the brand.

"'Generic' can only be defined with regard to the goods or services at issue, 
not in the abstract.  For example, the name of a type of fruit is generic when 
used to refer to that fruit, but not when used as the brand name of a 
technology company and its products.   The technology company should not be 
prevented from using that word for its gTLD string.  The company derives no 
unfair advantage in using its own brand in this way; its competitors do not 
need to use the word to refer to their own products, and customers will not 
expect to find other companies' technology products advertised in association 
with the string.  Similarly, although our affiliate's trademark TARGET appears 
as a word in dictionaries, it is a well-known trademark in the retail area.

"ICANN should be able to ensure that closed .brand gTLDs are not affected by 
any actions it takes against closed generic gTLDs by reviewing each relevant 
application to determine whether the string is the name, or the dominant 
portion of the name,  of the applicant or its affiliates.  We believe that 
doing so likely would be enough ensure that closed .brand gTLDs, with strings 
that happen to have other, generic meanings, are not lumped together with 
closed generic gTLDs that are truly intended to make generic use of a generic 
word.

"Due to the complexities of trademark law, we do not believe that objective 
criteria for closed generics can be developed that will work appropriately in 
every instance.  However, if ICANN believes that a formal test is required, we 
recommend that each applicant for a closed gTLD could be asked to produce 
trademark registrations, owned by the applicant itself or its affiliate, 
showing that the applied-for string is a brand name in which it has a 
legitimate, recognized interest.  To ensure international relevance, ICANN 
could require that the registrations must be from countries on, for example, at 
least three continents.  It could also require that the trademark registrations 
must have been registered by a particular date prior to the launch of the gTLD 
expansion, such as January 1, 2010.  Such an approach would be similar to the 
test for the Globally Protected Marks List suggested by the Implementation 
Recommendation Team.  (See 
http://archive.icann.org/en/topics/new-gtlds/irt-final-report-trademark-protection-29may09-en.pdf
 at pp. 16-17.)  An alternate process involving experienced trademark 
practitioners would also need to be in place so that applicants who did not 
have the requisite registrations could prove, if possible, legitimate trademark 
rights by other means.

"In closing, whether or not it is wise or fair to prevent exclusive use of a 
product's generic name as a gTLD string, it is not appropriate, and it would be 
unfair, to prevent exclusive use of brand names that happen to have other, 
non-brand meanings.  Fortunately, ICANN can prevent that unintended result with 
some simple precautions."

* * *

Mark Wagner
Associate
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
D O R S E Y  &  W H I T N E Y  LLP
Suite 1500, 50 South Sixth Street
Minneapolis, MN 55402-1498
P: 612.492.6850  F: 612-677-3462
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