Comments of Target Domain Holdings, LLC
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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