ICANN Closed Registries Forum (6)

EDITED HIGHLIGHTS PART 6

FORUM LINK:

http://forum.icann.org/lists/comments-closed-generic-05feb13/

NOTE — ICANN changed the comment links in March. They're fixed now, but if you find an incorrect link, go to the forum link above and search by the date & title following each one.

Prudential: Closed Domains (Which Function Like Trademarks) Will Lead to Monopolies

"...A competitive concern is clearly raised by... applications for generic industry terms with the stated goal of controlling those TLDs as closed registries and thereby securing an impermissible online monopoly on a source-identifying generic TLD. (cited)

"As a member of the financial industry, we believe the following applications raise significant concerns:

• Fidelity Brokerage Services, LLC ("Fidelity") submitted applications for the .MUTUALFUNDS, and .RETIREMENT domains; and

• Progressive Casualty Insurance Company ("Progressive") submitted an application for the .INSURANCE domain.

"Both Fidelity and Progressive stated their intent to administer these domains in a closed fashion.

"Issuance of generic gTLDs to applicants intending to control them as closed registries threatens to hamper competition and consumer choice, particularly where applicants seek gTLDs for generic terms in industries where they hold market share... (cited) Such a result would cause difficulties for competitors as well as hardship for consumers, who might not realize what product the competitors are selling because the product does not carry its common name.

"Traditional legal principles have long recognized that generic industry terms are not entitled to exclusive ownership because doing so hinders competition. The economic implications of and the need for competitors to use generic terms were well stated by Judge Richard Posner:

If a generic word could be trademarked by the producer of one brand of the product denoted by the word, and thus (upon proof of likely confusion) barred to use by producers of competing brands, the producer who trademarked it would have a competitive advantage that bore no relation to relative efficiency. Competitors would have difficulty informing consumers that they were competitors, because they would be unable, without elaborate and possibly confusing paraphrase, to give the name of the product they were selling... The trademarking of generic terms would impose excessive costs of information on competitors and consumers and is therefore forbidden. (cited)

"This reference to traditional legal principles is appropriate and relevant under the present circumstances because, as many commentators are noting, 'trademarks and domain names have become inextricably intertwined over the years.' (cited)

"Domain names are increasingly functioning as source identifiers, i.e. as trademarks. This trend will accelerate with the launch of numerous new gTLDs..."

"The view that domain names are mere addresses with no source identifying function is increasingly viewed as a relic of the past. (cited)

"Indeed, several applicants for the new TLDs explicitly state and recognize the inherent source-identifying role of the TLD... one of the applicants for the .app string emphasized the source identifying aspect of the proposed TLD, by stating:

" 'The proposed gTLD will clearly be differentiated from other gTLDs due to its purposefully limited scope... and as a result Internet users will immediately know the source of the gTLD.' (Charleston Road Registry application);..."

Dorothy C. A. von Hollen. Prudential
LINK

(Prudential applied for three trademark domain extensions (such as .pru), no closed strings and collectively with others on community applications for the .insurance, .lifeinsurance and .bank strings.

NOTE — Charleston Road Registry is Google - Ed.)

Mar 07: The Prudential Insurance Company of America Comment on .MUTUALFUNDS, .RETIREMENT and .INSURANCE Closed Generic TLDs

Google May Infringe a US Trademark on "TUBE"

"LAT (Latin American Telecom) finds itself in contention with Charleston Road Registry, which has submitted an application proposing that under its operation Google would be the only permissible registrant for .TUBE domains — it would appear to be a “closed generic” gTLD (an attempt to brand itself as .TUBE — a dictionary word for which it has no trademark rights). Google’s attempt to run a closed registry for a word in which they hold no brand or trademark rights is impermissible.

"Indeed, while it is beyond the scope of this submission Google is also conspicuously seeking an exemption that will trample LAT's pre-existing trademark rights. Conversely, LAT is the owner of a valid United States trademark for “TUBE” and has used its TUBE brand in commerce since at least 2008. So Google’s proposal for a closed generic .TUBE is anti-competitive, contrary to general trademark law principles, and detrimental to the public interest — and also infringes upon LAT’s established trademark rights.

"Alternative meanings of the term tube are used in physics, medicine, chemistry, architecture, consumer products, and even common expressions and slang that have nothing to do with video or television — such as tooth paste tube, test tube, optical tube, feeding tube, London tube, “down the tube”, for example. A single-registrant .TUBE controlled by Google would not be a platform for competition and innovation by all kinds of registrants from any industry but rather a means by which Google can extend and consolidate its dominance of online video distribution.

"As a closed registrant gTLD controlled by Google and extending the YouTube business model, a Google-only .TUBE could become a source identifier and thereby provide a backdoor route for Google to extend the trademark rights it now has on YOUTUBE to the word TUBE in which it possesses no trademark rights.

"By way of contrast, even though LAT possesses a United States trademark in TUBE it intends to operate .TUBE as an open platform for innovative and competitive new services offered by registrants from around the globe, thereby acknowledging the term has various meanings and should be open to public use.

"Monopoly is not an innovation, and is not compatible with the public interest. The history of the Internet is that new competition and innovation are introduced from the end points, as they would be if .TUBE were an open gTLD. ICANN can hardly respond that it’s no significant problem if these potential third party registrants can’t register a .TUBE domain since other gTLDs may be available – the entire foundation of the new gTLD program is a belief that generic labels do matter in the next stage of the Internet’s evolution, and that registrants should be offered broad new choices of relevant, right-of-the-dot genetic terms."

Rami Schwartz. Latin American Telecom LLC
LINK

(LAT's comment also includes an incisive and insightful comparison of Google applications for both the .TUBE and .YOUTUBE domain strings - Ed.)

Mar 07: Latin American Telecom Opposes Closed .Tube and Other Closed Generic gTLDs That Harm the Public Interest

Financial Industry Members Oppose Closed gTLDs as Contrary to Principles of Law

"By definition, a generic word, phrase, or acronym that is a common name for a genus of goods or services can be used by anyone and everyone and cannot be registered or otherwise protected as a trademark... This principle is firmly established in the laws of many jurisdictions around the globe. For example, under the Madrid Agreement and Protocol (which has 89 member countries), if a term is generic, that is an absolute ground for refusing international registration. (cited) Similarly, the United States Patent and Trademark Office ('USPTO') not only prohibits trademark protection of both generic and descriptive terms on their face, but also expressly requires a disclaimer of the generic terms contained in an applied-for trademark and requires the applicant to state that no right is claimed to the term. (cited) In fact, a search of the USPTO’s online database revealed at least 1,900 trademark applications or registrations in which the terms 'IRA,' 'mutual funds,' 'retirement' or 'broker' were specifically disclaimed... (cited)

"...A closed gTLD would grant a single business the exclusive use of a generic word and render that exclusivity enforceable on the Internet while unenforceable anywhere else.

"...The gTLD process should not lend itself to simply taking more popular, descriptive terms out of public use.

"Given the steps ICANN has taken to prevent trademark infringement and otherwise serve the public interest, the attempts by some applicants to assume exclusive control of generic words on the Internet raise serious concerns of propriety and responsible internet governance, regardless of whether such attempts are intended to circumvent trademark law. The very idea of a closed gTLD contradicts ICANN’s core values. Core Value number 6 provides that ICANN is to foster the introduction and promotion of 'competition in the registration of domain names where practicable and beneficial in the public interest...' (cited)

"The public interest is particularly at risk in the case of generic terms that are defined by statute or other legal authority. For example, the term 'IRA' stands for 'individual retirement account' and has specific, statutorily defined meaning under United States tax law... Allowing any one company in a particular industry to obtain proprietary rights to a statutorily-defined term by using that term as a closed gTLD would suggest to the public that the company has a unique, preferred, or even government-sponsored role with respect to the products marketed under that domain.

"...Allowing a single entity to operate a domain registry using a term that is generic would give it an unfair competitive advantage and damage consumers’ interests by giving that entity a monopoly over a term that belongs to the general public, in contravention of established trademark principles... Principles of international law cannot permit such an anti-competitive and consumer-harming operation."

Helen I. Odom. TD Ameritrade
Yusuf Cassim. Charles Schwab & Co., Inc.
Lisa J. Heller. Teachers Insurance and Annuity Association of America (TIAA)
LINK

Mar 07: Financial Industry Members Oppose Closed Generic Top-Level Domains

Closed gTLDs Will Squelch Competition and Innovation

"The very idea of a closed generic top-level domain ('closed gTLD') flies in the face of the core values of... ICANN. Core value #6 states 'Introducing and promoting competition in the registration of domain names where practicable and beneficial in the public interest.' Restricting the use of generic words 'food', 'book', 'author', 'security', 'hair', 'read' and more to the furtherance of the 'stated goals' of a single business, or for the personal gain of any one business at the cost of competition, is in no way beneficial to the public interest.

"Lifestyle Domain Holdings, Inc. intends to use the .FOOD closed gTLD as a 'Scripps Networks Interactive, Inc., ('SNI') branded top level domain...' and that 'all of the programming, information, social media, shopping and lifestyle opportunities found on the .food branded top level domain is authentic, genuine, safe and secure and affiliated with SNI’s family of lifestyle brands.' ...the .FOOD closed gTLD is nothing more than an attempt to restrict competition and innovation for content, instruction, education, and programming on the Internet.

"The concept of a closed gTLD is diametrically opposed to the stated core values established by ICANN in fulfilling its mission. Assignment of any closed gTLD will squelch competition and innovation on the Internet."

Christopher M. Parrott. Dot Food, LLC
LINK

(Dot Food is an applicant for the .food domain string. Their comment also cites clarifying examples of actual closed registry applications for .book, .hair and .security - Ed.)

Mar 05: Objection of Closed gTLDs

Closed gTLDs Are Completely Contrary To ICANN Goals

"One of our goals is the protection of the interests of our members and a level playing field for their commercial interests. In this capacity, we strongly object to the awarding of closed generic TLDs such as 'book' to individual commercial entities, especially to those operating within the book industry.

"In the gTLD Applicant Guidebook, ICANN's President and CEO Rod Beckstrom states the goals of the new gTLDs to 'promote[s] competition and consumer choice'...

"In our view, the creation of closed gTLDs of generic words runs completely contrary to these goals: in fact, competition will decline and consumers will have less choice. In the long run, granting use of closed gTLDs could promote a shift in the Internet from being a public space to a collection of privatized islands or walled gardens. Similarly to the case of trade marks (where generic terms may not be registered), reserving the use of generic terms as gTLDs for individual companies is not desirable.

"Granting the 'book' gTLD exclusively to a single company would also make it impossible for the public to participate by registering and using second level domains under this TLD."

Alexander Skipis. Börsenverein des Deutschen Buchhandels e.V.
LINK

(The organization represents 1800 publishers and 6000 booksellers in Germany.)

Mar 05: Statement of the Boersenverein on closed gTLD ".book"

We Should Support Choice & Competition, Not Work Against It

"OFE (OpenForum Europe) is concerned that there seems to be very little general awareness about the proposed changes to the gTLD registry and would encourage efforts for a wider debate on this issue to take place... Exempting applicants from ICANN’s Registry Operator Code of Conduct without restriction a single company could be positioned to potentially gain unfair advantage by setting up barriers to entry for would-be competitors, or could re-establish the 'lock-in' that has cost the user so dearly in the past.

"By example, in the case of .cloud, we would suggest that allowing a single company to act as sole registrar and registrant not only acts in direct counter to all the openness fundamentals of the Internet, upon which Cloud Computing is directly dependent, but that it will potentially allow that company to restrict its usage only to its sole benefit or to selected companies which are willing to pledge support to a particular choice of software platform or approach promoted by the .cloud owner. We believe that this could quickly lead to a single dominant supplier initiating controls (under the guise of marketing) which would be seen as anti-competitive, particularly to SMEs, upon whom local success, 'Cloud' will be dependent.

"We should be supporting choice and competition, not working against it.

"Either ICANN needs to develop a means of defining sensitive generic strings and all 'closed' applications for these strings be rejected. Or in the case of a sensitive string an alternative management approach is taken that is a catalyst for growth in that market, benefiting not just the operator but the market, and which respects the objectives of 'open, competitive, choice'. We would suggest that a viable and possibly alternative option for example in the case of .cloud would be to place it under the control of an independent organisation, free from the risk of exploitation by any one company, and indeed use it as a positive contributor and catalyst to growth..."

Graham Taylor. OpenForum Europe
LINK

Mar 07: Closed Generic TLDs and .cloud

Yves Rocher Warns a Single Company Can Capture a Generic Term

"Yves Rocher is extremely concerned by the 'Closed Generic' TLD Applications, in particular the BEAUTY, SKIN, MAKEUP, HAIR and SALON Applications from L'OREAL... (which) have the following characteristics:

— the TLDs applied-for are generic terms, words of common language, closely linked to an economic sector;

— the Applicant is a major stakeholder in the same economic sector;

— the Applicant plan to restrict the registration of domains under the TLD to itself or to a limited number of partners (subsidiaries, affiliates, business partners).

"The generic terms BEAUTY, SKIN, MAKEUP, HAIR and SALON are common words, constantly used by all actors of the cosmetic industry.

"Some of these generic terms describe a category of products and should not be reserved for, or monopolized by a single stakeholder in a business category.

"The Applicant (L'OREAL) is looking for an exclusive right to the TLDs BEAUTY, SKIN, MAKEUP, HAIR or SALON, despite the fact that these terms are common words and that its direct competitors also use them in their business, most of them even adding these terms to their trademarks.

"The main risk of delegating of theses TLDs under the rules requested by the applicants is the capture of a generic term by a single stakeholder.

"This would surely have anticompetitive consequences and limit consumer choice across the Internet:

— competitors will be prevented from using those generic TLDs to compete with the string owner;

— consumers will have access to offers coming from one single player.

"We therefore urge ICANN to resolve the ambiguity surrounding these applications, decide that « Closed Generic » TLD Applications such as BEAUTY, SKIN, MAKEUP, HAIR or SALON are potentially detrimental to consumers... and should not proceed any further."

Laboratoires de Biologie Végétale Yves Rocher S.A. (Yves Rocher)
LINK

(Yves Rocher has around 2,000 retail outlets and 40 million customers in 80 countries.

The company is also objecting to the closed generic TLD application for .rocher from Ferrero Trading Lux S.A. since 'rocher' is a type of chocolate - Ed.)

Mar 07: Yves Rocher Comment on Closed Generic TLDs

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