Comments from CORE Association: GeoTLDs (2 of 3)

[Amadeu Abril i Abril <Amadeu.Abril@xxxxxxxxxxx>]

Dear ICANN Board and staff,

CORE Association wishes to add some specific comments on RPMs specific to 
geographically-oriented TLDs First of all, we want to express our support to 
the comments made by .berlin, Minds+Machines, .wien and the GeoTLD group, among 
others. The unfortunate timing (as August is a vacation month for most public 
administrations in Europe) have prevented the formal process of support to any 
of the above comments from our geographically-oriented customers, but they 
indeed support what is the basic point we have been making in the prior 
discussion with ICANN staff on this issue: for public administrations, and for 
the geoTLDs we represent, abiding the local law and protecting **all** legal 
rights and the public interest is neither exceptional nor a privilege and 
should not be the result of an exemption.


In this regard we would like providing some further details on:

A) Why this it is necessary to provide potation to other legal rights, not only 
trademarks
B) Why is is compatible with the goals of protecting trademarks themselves
C) why this is necessary to protect local consumers and Intenret users in 
general
D) Example of possible Top-Priority Limited Registration period for Locally 
Relevant Names

A) What to protect, and why.

The goal of the RPMs is to protect leg imitate and valid legal rights from 
abusive registrations in new TLDs. The center of the discussion, for clear 
historical reasons, has been around tidemarks and cybersquatting. The TMCH is 
devoted to the protection of trademarks, and we all hope this new mechanism and 
procedures will be effective.

But trademarks are not the only legal right regarding names. Geographic 
denominations, public-service denominations, iconic landscapes. public 
authority symbols, are often protected by relevant local laws. And 
geographically-oriented registries must abide to those laws, most notably if we 
take into account that those registries will either be the public authorities 
themselves or entities having obtained, under conditions, their support. Indeed 
the notion of what is "public service" or "public interest" may differ from 
place to place, but this is irrelevant here: the point is that, with different 
definitions and boundaries, local laws mandate the protection of certain 
symbols, names, places. Of certain rights.

It should be taken into account that trademark protection is most often **not 
available** for such names. For at least two reasons:

* Geographically-bound names are usually not trademarkeable in their own 
jurisdiction
* The requirement of distinctiveness prevents the registration as trademark of 
the most descriptive and relevant terms (nobody can register "police" for 
public-security services, even if it is the Police Department itself).

On top of that, we should remind that trademarks are signs identifying products 
and services in the marketplace. Now, most names related with the services 
under the competence of a local authority (security, health, education…) are 
not provided "in the marketplace". Are not provided for commercial purposes, 
and therefore it would not be retinal or even legitimate to require a trademark 
for something that is not in the trade, which is not provided in a market as 
such. Sometimes public authorities may have registered some of these names as 
as trademarks, usually as part of graphic trademarks to bypass the two legal 
limitations explained above, but this is at best a distortion of both the 
trademark law and the public service requirements. A rational city hall will 
not register "culture", "health", "school" or "opera" as a trademark.

In summary, there are legal rights to be protected, and there is a 
public-interst mandate in allocating certain names to its relent local 
public-interst goals, and tram ark law is of no or little help, as the TMCH and 
the Sunrise as defined would also be.

B) Why additional RPMs would be compatible with trademark protection goals

The goal of protecting trademarks in TLDs is not establishing ex novo a 
legally-inexisting new right for "trademarks with absolute rights, even out of 
territory and scope". Trademarks are indeed geographically bound. But a 
trademark may be registered in a "foreign" jurisdiction and still be "eligible" 
for a given geoTLD launch. Or just think about so-called European Trademarks, 
valid in all EU's Member States (and hence, most likely eligible for any 
EU-based geoTLD) even without any real market presence in the most parts of 
such "market". In many cases, the prohibition to register certain geographic 
names under local trademark law ail be easily bypassed by those "eligible but 
foreign" trademarks.

But more relevant to this discussion: trademarks are valid for one or more 
"classes", for a certain category of products and services. Generic terms can 
therefore be accepted as trademarks for products or services completely 
unrelated to its meaning. As a classic example used in the discussions with 
ICANN staff, "police" cannot be registered as trademark by a police department, 
but can perfectly be registered by, say, a rock band. Similarly, "opera" may 
not be registered as a trademark by an Opera Theater, or the City hall for the 
name of  square or an underground station, but it can be registered for a 
restaurant or an hotel sitting nearby the local Opera Theater (or far from it, 
at that point).

So both "foreign-eligible" and "local-eligible" trademarks could in fact "trump 
the law" by registering those names with preference to the un-trademarkeable 
legitimate users of those names for the "primary meaning". Having a trademark 
ofr "opera", say, an hotel and having **preference** for opera.paris over the 
Opera Theater, the City (for the square of the same name) or the Transportation 
authority (for the underground station) is, at best a stretch of the goals of 
trademark law. This is indeed different from the case in .com or any other 
geographically-neutral TLD. Here we would witness a phenomenon of massive 
reverse hijacking. And, probably, a waterfall of court cases. 

Moreover, the simple and elegant solution of allowing what has often been 
outside the scope of trademark law be solved outside the rules of TMCH-bound 
Sunrise causes no harm to any trademark owner. The goal of Sunrises is to 
protect them against massive cybersquatting. Sunrise will indeed be in place 
for all TLDs, but allowing "champs-elysées.paris", "police.london", 
"tourism.barcelona" or "airport.amsterdam" to be allocated with priority over 
trademarks (which, we should insist, could never legitimately register such 
names as trademarks for the evident meanings suggested y these domain names) 
does not deprive them from any protection. They ail still be on top of anyone 
without legitimate rights, which is the goal. Not to pretend that trademarks 
are the only legitimate right, and or any use of the name in any territory.

In short, nothing in this proposal would amount to any tolerance with respect 
to cybersquatting or abuse. ON the contrary, it would help preventing 
unintended abuses.

D) Protecting consumers and Internet users.

This is precisely the goal of trademark law: protecting the consumers from 
being misled with regard to the origin and quality of goods and services. Once 
again, the situation is very different in a TLD such as .com or .online o 
another one like .barcelona or .paris. No trademark has better right than 
another, or to any other legitimate right regarding opera.com or 
cathedral.online. But opera.paris, metro.barcelona, etc, are very precise 
things in the mind of the WHOLE local community and the vast majority of 
Internet users. Allowing all thoe generic public-interest services, often 
non-trdemarkeable terms to be used by someone who only had a right with the 
condition that it **should mean something else for unrelated products** 
certainly misleads everybody. The effect will not only be subverting trademark 
law, by allowing non-descriptive names to gain distinctiveness even for what 
they are purely descriptive,but also would foster a massive dilution of the 
geoTLD namespace value for both the local community and the Internet users in 
general.

Engeneering confusion and deception is never a good tactic, and is certainly 
not the goal of the Rights Protection Mechanisms.

D) Example of Top-Priority Limited Registration Period

For geo-oriented TLDs, we would like making the following proposal, with clear 
Elibibility and Name Selection rules to guarantee that 

1. Eligibility
 
The following entities will be able to apply for [geoTLD] domain names:
 
1.1 Public Authorities with competencies over the relevant Tjberritory, as 
defined in [below/Annex/link, containing both the exact definition of the 
relevant territory and the list of different Public Authorities' levels: 
municipal, regional, etc.].
1.2 Other Public Institutions (Agency, Consortium; Commission; ..) carrying out 
public-service activities in the Territory on behalf the entities comprised in 
1.1 above, as establish criteria for verification: list of publicly-available 
directories, etc]
1.3 Other entities which have been granted specific responsibilities in the 
management of public resources in the territory by relevant authorities 
comprised in 1.1 above [establish criteria for verification: list of 
publicly-available directories, etc]
[NOTE: 1.2 and 1.3 may be a single category in some case, but in many other a 
distinction will be needed between public-law and private-law entities].
 
2. Name Selection
 
The entities above will be able to register during this phase:
 
2.1 their own names (and evident variations and/or abbreviations thereof)
2.2 names of the public services under their management
2.3 Names of landmarks, and other locally-relevant and iconic names for which 
they have specific responsibilities
2.4 For Public authorities listed in 1.1 above, other names related to their 
public-interest activities


******

Best regards,

Amadeu Abril i Abril
CORE Association
http://corenic.org

ABOUT CORE:

CORE Association (dba CORE INternet Council of Registrars) is both an 
ICANN-accredited registrar since the initial Testbed in 1999 and the Registry 
Operator of two new gTLDs (.сайт and .онлайнI. It is in the contractual 
negotiations phase for a third new TLD (بازار).

It also provides Backend Registry Services for existing and new TLDs (and in 
some cases, front end services), alone or in cooperation with other providers. 
The new TLDs CORE works for that are geographically-oriened are: .barcelona, 
.madrid, .quebec .paris (all of them geographic names in the Guidbook sense) 
.bcn, .swiss which are clearly geographic..y-oriented, but not strictly 
geographic strings, plus .gal, .eus and .scot, which are community names with 
cultural and linguistic scope but with a degree geographic meaning.