[NCSG-PC] Singular/Plurals - Email [1] in preparation for our NCSG PC meeting tomorrow

[Kathy Kleiman]

To our NCSG Councilors,

This has been a very difficult summer.  We fought for a fair and 
balanced creation of exceptions for Singulars and Plurals, and yet 
almost no one wanted to listen. The only exception everyone on the team 
wanted to create was one for Brands, and the more Cara and later Rebecca 
(as our Subject Matter alternates and experts) thought about it, the 
more dangerous it became.

In a few minutes, I'll be able to share the final text of the proposed 
SubPro Recommendation on Singulars/Plurals. It's still being finalized 
by Staff based on last wording changes in our final meeting that ended 
half an hour ago.

*But before then, I want to share with you the memo that Professor 
Rebecca Tushnet (a world expert on international trademark laws and free 
speech and expression laws and protections), about our utter frustration 
that few in the Small Team cared about the real and genuine problems of 
the proposed .BRAND Exceptions.  Almost no one cared about the far 
higher integrity and credibility of Noncommercial and Non-Profit 
organizations in their applications for new gTLDs. *

History: We (NCSG and NCUC before NCSG existed) fought this battle at 
second level and now at the top level.  Trademark owners /do not have a 
better right to words than we do -- /in fact under traditional trademark 
laws and balances, noncommercial uses of organization and individuals 
are protection, for example, as our names (Wendy & McDonald), for 
descriptions of our activities like baseball, art, and poetry - and for 
our criticisms, concerns, and arguments.  Words like liberty and freedom 
are also gas stations and blood glucose monitors!

In preparation for our meeting tomorrow, I share our final memo to the 
Small Team after weeks of seeking support for an equal and equivalent 
exception for noncommercial and non-profit organizations.  We have to 
share that we felt very beaten up in this process - it was not fun.  A 
lot of power was given in this experimental Small Team and many people 
served as active and unwavering advocates for their clients.

That said, Paul McGrady did a good and fair job as Chair. He worked very 
hard to make sure all voices were heard, including ours.

Best, Kathy

-------------------------------------

Hi All [SubPro Small Team Plus],

Please put away the knives and sheath the spears…

We are coming in to support Kurt’s concerns and proposals: /“I think it 
is much better to take a conservative approach for this round and seek 
to avoid user confusion to the extent possible and eliminate exceptions 
at this point. I also believe we should deliver to ICANN an 
implementable policy that will avoid vagueness and litigation, i.e., 
creating policy that facilitates the implementation of a smooth running 
process. This is incredibly important for the reputation of the 
multi-stakeholder model.”Kurt, 4 Aug./

Efficiency, clarity, fairness. It’s not a perfect solution to consumer 
confusion since we know that .MOBIL can coexist and with .MOBILE and 
.MOBI and .NEW and .NEWS, but it is clear and understandable to everyone 
coming into the process.Yes, it favors incumbents, but it serves the 
overall goals of the SubPro Working Group: /“Specifically, the Working 
Group recommends prohibiting plurals and singulars of the same word 
within the same language/script in order to reduce the risk of consumer 
confusion.”/

In the current exceptions language, now added to our many Strawmen, we 
have strayed from any anchor point to the SubPro Small Team 
recommendation language.We are no longer evaluating new gTLDs against 
each other for meaning, or for confusion. We seem to have left these 
ideas completely behind. [1]

/We cannot support rules that allow a trademark, from anywhere in the 
world, registered in the Trademark Clearinghouse and used for a .BRAND 
application, to get a complete “pass” from all evaluation and 
examination of meaning – that is a clear formula for consumer confusion./

Further, the current language and many prior Strawmen are premised on 
assumptions that are not fair or valid, including that the rest of the 
world will use “generic words” for their new gTLDs. But that is not the 
case. Organizations, companies and individuals around the world will 
apply for the gTLD strings that are the most meaningful to them – some 
will be fanciful, some will be arbitrary as applied to their activities, 
some will be descriptive, and some will be generic. There is no reason 
that trademarks should take priority over everyone else’s applications 
for new gTLD strings.

/If we don’t evaluate the meaning of all gTLD strings identified in as 
Singulars or Plurals of other applications or existing gTLDs in a clear 
and transparent way, and if we don’t have fair and balanced exceptions 
that equally support legitimate noncommercial and commercial use,/ /then 
we must revert to Kurt’s language./ As long as the gTLDs are the same 
word, in the same language, in some legitimate dictionary, we should put 
them into a contention set. This is a clear and efficient way to avoid 
the risk of consumer confusion over the gTLDs.

We are happy to explain further.

_There is nothing magical about trademarks._

We oppose the exceptions language for five reasons and can certainly 
provide more:

1)It assumes a high standard of review for trademarks, and that is not 
true internationally. Trademarks in many countries are granted without 
“use” requirements. The Trademark Clearinghouse (TMCH) must accept marks 
from every country, and although it requires a showing of use, the 
showing is de minimis. As long as the product or service appears 
somewhere on the website, even in a footer, the .BRAND requirements are 
satisfied.

The Rights Protection Mechanisms PDP Working Group found a pattern of 
registration in the Trademark Clearinghouse that shows trademark owners 
in Switzerland actively using their TMCH registrations to “game the 
system” to gain early access to valuable domain names in Sunrise. The 
stakes for gaming in the TMCH will be much higher when someone can get 
an automatic pass out of a contention set for a Singular/Plural gTLD.

2)It assumes that the trademark owners have better rights to new gTLDs 
than other applicants, and that is certainly not the case. *Every 
Applicant for a New gTLD, and especially those coming from the Global 
South, tribes and indigenous peoples, non-profits and civil society – 
groups that ICANN will go to great lengths to recruit to the New gTLD 
program and to help through the application process – should have the 
same right and opportunity to a new gTLD string.*Just because there is a 
trademark for the word “rotary” does not mean that the .BRAND owner 
should prevail in a grouping of applications for .rotary and .rotaries 
by Rotary International and a group posting on the research of traffic 
circles (.rotaries) around the world. *New gTLDs are important and 
central to each and every applicant.*

3)It does not protect Sensitive Strings, and we need to. The GAC has 
told us that certain gTLDs are important to *Consumer Protection and 
Regulated Markets, *as /“These strings are likely to invoke a level of 
implied trust from consumers, and carry higher levels of risk associated 
with consumer harm.”/

*We respect this GAC Consensus Advice and urge a wall be built around 
the Sensitive String they identified for us.No Singular/Plurals of these 
words should be allowed: *

/Children: .kid, .kids, .kinder, .game, .games, .juegos, .play, .school, 
.schule, .toys; Environmental: .earth, .eco, .green, .bio, .organic; 
Health and Fitness: .care, .diet, .fit, .fitness, .health, .healthcare, 
.heart, .hiv, .hospital,, .med, .medical, .organic, .pharmacy, .rehab, 
.surgery, .clinic, .healthy (IDN Chinese equivalent), .dental, .dentist 
.doctor, .dds, .physio; Financial:capital, . cash, .cashbackbonus, 
.broker, .brokers, .claims, .exchange, .finance, .financial, 
.fianancialaid, .forex, .fund, .investments, .lease, .loan, .loans, 
.market, . markets, .money, .pay, .payu, .retirement, .save, .trading, 
.autoinsurance, .bank, .banque, .carinsurance, .credit, .creditcard, 
.creditunion,.insurance, .insure, ira, .lifeinsurance, .mortgage, 
.mutualfunds, .mutuelle, .netbank, .reit, .tax, .travelersinsurance, 
.vermogensberater, .vermogensberatung and .vesicherung. Gambling: .bet, 
.bingo, .lotto, .poker, and .spreadbetting, .casino; Charity: .care, 
.gives, .giving, .charity; Education: degree, .mba, .university; 
Intellectual Property.audio, .book (and IDN equivalent), .broadway, 
.film, .game, .games, .juegos, .movie, .music, .software, .song, .tunes, 
.fashion (and IDN equivalent), .video, .app, .art, .author, .band, 
.beats, .cloud (and IDN equivalent), .data, .design, .digital, 
.download, .entertainment, .fan, .fans, .free, .gratis, .discount, 
.sale, .hiphop, .media, .news, .online, .pictures, .radio, .rip, .show, 
.theater, .theatre, .tour, .tours, .tvs, .video, .zip;Professional 
Services: .abogado, .accountant, .accountants, .architect, .associates, 
.attorney, .broker, .brokers, .cpa, .doctor, .dentist, .dds, .engineer, 
.lawyer, .legal, .realtor, .realty, .vet; Corporate Identifiers: .corp, 
.gmbh, .inc, .limited, .llc, .llp, .ltda, .ltd, .sarl, .srl, .sal; 
Generic Geographic Terms: .town, .city, .capital; .reise, .reisen; 
.weather; .engineering; .law; Inherently Governmental Functions .army, 
.navy, .airforce.Beijing Communique, ICANN46/

*Currently there is no protection for these strings and plural/singular 
gTLDs will be allowed, including .BRAND exceptions – and lead to 
consumer confusion. *

4) It assumes that all .BRAND Registries will monitor their licensees 
closely, and that is not the case. There is no assurance that all .BRAND 
Registry Operators will closely oversee their affiliates and trademark 
licensees once they register domain names. The only requirement is that 
a user licensed by the .BRAND must also possess a trademark license, 
which can be incorporated into the .BRAND agreement. But, while 
trademark licenses in the US and some other countries require quality 
control, this type of oversight is not required in many parts of the 
world and not needed to maintain a trademark:

·The majority of countries (roughly 2/3) don’t require quality control 
in licenses. (Mary M. Squyres and Nanette Norton, Trademark Practice 
Throughout the World | September 2023 Update Appendix 23(G)).

·“European trademark law does not require the licensor to exercise 
control over the use of the trademark in order to ensure the quality of 
the goods or services in question.” (Anne Lauber-Rönsberg, in The 
Commercial Exploitation Of Personality Features In Germany From The 
Personality Rights And Trademark Perspectives, 107 Trademark Rep. 803, 
843 (2017)).

·In Germany and France, “there is no concern for preserving the source 
function of trademarks by means of the provision and exercise of quality 
control.” (Neil Wilkof, in Trademark licensing: the once and future 
narrative, in Research Handbook on Intellectual Property Licensing 216 
(2013)).

·The European Court of Justice held in 2017 that failure to monitor 
licensees doesn’t invalidate a registration, though the mark can be 
cancelled if its use was deceptive. (W.F. Gözze Frottierweberei Gmbh, 
Wolfgang Gözze GmbH v Verein Bremer Baumwollbörse, case C-689/15, 
_https://perma.cc/554Z-8TYD_).

If many countries do not require oversight of trademark licensees and 
such oversight can be lax or non-existent, then without more, we have no 
assurance of close oversight domain names by their affiliates and 
licensees around the world.

5) The remedies that our Small Team have discussed for termination of a 
.BRAND that receives a Singular/Plural exemption are not consistent with 
Specification 13.

Jeff and Susan reasonably proposed the remedy of termination for a 
.BRAND receiving a Singular/Plurals exemption, and then ceasing to 
operate as a .BRAND: /“If at any time ICANN reasonably determines that 
the TLD no longer qualifies as a .Brand TLD, Registry Operator shall be 
considered in material breach of the Registry Agreement.  If the .Brand 
TLD is unable or unwilling to cure such breach, ICANN shall have the 
right to terminate the Registry Agreement.”/We do not disagree.

*But Specification 13 dictates a different outcome. If a .BRAND cease to 
operate as a .BRAND then it becomes an open gTLD. //*/Spec 13: “//If at 
any time ICANN determines, in its reasonable discretion, that the TLD no 
longer qualifies as a .Brand TLD, … then (i) the TLD shall immediately 
cease to be a .Brand TLD, (ii) Registry Operator shall immediately 
comply with the provisions of the Agreement as no longer modified by 
this Specification 13 (other than Section 2 hereof) and (iii) the 
provisions of this Specification 13 (other than Section 2 hereof) shall 
thereafter no
longer have any effect.”/

Truly such a change would immeasurably complicate consumer confusion 
issues, and be fundamentally unfair to all who did not receive their new 
gTLDs in the exemption process.

_If we really wanted a fair and balanced exception, we would have had 
one by now._

In this incredibly talented group of Small Team members, if we had 
wanted a fair and balanced exception, we would have found it weeks ago. 
/Early on, we talked about the high standard we wanted for those 
receiving exceptions and that, consistent with the policies of ICANN, 
exceptions should be fair and balanced./ But that is not what has happened.

*Non-profits and Civil Society organizations are at least as driven to 
monitor who receives their domain names as any .BRAND applicant.* The 
motivation for Non-profits and Civil Society diligence comes from their 
special status with their governments, their communities, their donors, 
and the people at the local, national and international level who 
benefit from their services. *Their reputations, and therefore their 
existences, are intricately bound to serving their missions.* *As a 
trademark owner can bind their affiliates and licensees who receive 
domain names, Non-profits and Civil Society clearly delineate their 
eligible registrants, based on specific, objective eligibility criteria 
and enforceable mechanisms in Registry Voluntary Commitments that are 
strong and binding. *

-----------------------

*/A parallel exception would have been very fair and easy for us to 
accept:/*

Exception:

 1. in the event that an entity applies for a string that is either the
    plural or singular of an existing string in any language, that
    entity’s application shall be allowed to proceed through the
    application process and be delegated provided that it meets the
    criteria for a Non-Profit and Civil Society Organization pursuant to
    the presented and signed Registry Voluntary Commitment.
 2. If at any time ICANN reasonably determines that the TLD no longer
    operates pursuant to its commitments in the RVC, then Registry
    Operator shall be considered in material breach of the Registry
    Agreement.  If the Non-Profit or Civil Society TLD is unable or
    unwilling to cure such breach, ICANN shall have the right to
    terminate the Registry Agreement.

_____________________

_Defining Non-profit and Civil Society gTLDs_

Non-profit and Civil Society gTLDs:

1.A non-profit or civil society gTLD meets the general definition of a 
civil society organization under the UN, namely: Non-State, 
not-for-profit, voluntary entities formed by people in the social sphere 
that are separate from the State and the market. Civil society groups 
are community-based organizations as well as non-governmental 
organizations (NGOs).”)

2.Methods of verification, to be provided to ICANN, include:

     1. Certification as a non-profit or civil society organization
        under the laws of the country in which the organization is
        registered; or
     2. Confirmation of equivalence determination by a reputable group,
        e.g. TechSoup (making a good-faith determination that a non-U.S.
        organization is equivalent to a U.S. public charity); or
     3. Recognition by an international organization such as the United
        Nations.

iii.The Applicant must document that it has been in continuous existence 
for over a year prior to the filing of its TLD registry application with 
ICANN.

iv.The TLD string should be a key term or identifier that the 
organization associates with itself and its mission.

v.It should be owned and used continuously by the Registry Operator or 
its Affiliates in connection with the Registry Operator’s or its 
Affiliates’ offering of their non-profit/civil society services. Such 
services shall not include services related to the provision of TLD 
Registry Services.

vi.only Registry Operator, its Affiliates or members in good standing 
are registrants of domain names in the TLD and control the DNS records 
associated with domain names at any level in the TLD;

vii.the TLD is not a Generic String TLD (as defined in Specification 11).

But our Small Team could not do that.

_In closing, we note there is another new idea floating around the Small 
Team that ICANN cannot look at the meaning of the words in gTLDs, and 
that cannot be right or accurate._

NCSG was very involved in the call for ICANN to not allow content to be 
placed in Registry Voluntary Commitments, including the type of content 
that would require ICANN to monitor the text, videos and pictures placed 
on websites.

*But that does not mean that ICANN can never again look at the meaning 
of the word or the purpose of a word in a gTLD. That would invalidate 
much of ICANN’s mission and purpose. *

ICANN’s mission is and remains:

/Section 1.1. MISSION/

/(a) The mission of the Internet Corporation for Assigned Names and 
Numbers ("ICANN") is to ensure the stable and secure operation of the 
Internet's unique identifier systems as described in this Section 1.1(a) 
(the "Mission"). Specifically, ICANN:/

/(i) Coordinates the allocation and assignment of names in the root zone 
of the Domain Name System ("DNS") and coordinates the development and 
implementation of policies concerning the registration of second-level 
domain names in generic top-level domains ("gTLDs"). In this role, 
ICANN's scope is to coordinate the development and implementation of 
policies:/

/For which uniform or coordinated resolution is reasonably necessary to 
facilitate the openness, interoperability, resilience, security and/or 
stability of the DNS including, with respect to gTLD registrars and 
registries, policies in the areas described in Annex G-1 and Annex G-2; and/

/That are developed through a bottom-up consensus-based multistakeholder 
process and designed to ensure the stable and secure operation of the 
Internet's unique names systems./

----------

*The limits of Bylaws 1.1 sections (b) and (c), include not imposing 
rules on the content that domain names carry and provide, but does not 
stop ICANN from looking closely at top level and second level domain 
names. *

*Saying otherwise would eliminate the URS and UDRP. *

The basis of the UDRP and URS /is looking at the meaning of the second 
level domain name, who has registered it and how they are using it. 
/Although ICANN has delegated the authority for the review and decision, 
the URDP and URS decisions are enforced by ICANN under its Registry 
Agreements and Registrar Accreditation Agreements. This is ICANN’s 
responsibility.

*Similarly at the top level, ICANN must examine the nature of the 
applicant, who they are, and how they intend to use the applied-for 
gTLD. ICANN will review comments from the Community on these same 
issues. This is part and parcel of the application process. *

Three objection processes are based on these same substantive factors: 
String Confusion, Community and Legal Rights objections. All decided via 
delegated authority from ICANN and all enforced by ICANN. Even reviewing 
a .BRAND application to see, among other things, if it is a generic word 
involves ICANN looking closely at the Applicant, the New gTLD, and its 
meaning. It’s all consistent with a much wider range of exemptions, for 
Non-profits and Civil Society as well as .BRANDs, that we could have 
created had we chosen to do so.

-----------------------------------

As shared above, we have come to support Kurt’s concerns and proposals:

/“I think it is much better to take a conservative approach for this 
round and seek to avoid user confusion to the extent possible and 
eliminate exceptions at this point. I also believe we should deliver to 
ICANN an implementable policy that will avoid vagueness and litigation, 
i.e., creating policy that facilitates the implementation of a smooth 
running process. This is incredibly important for the reputation of the 
multi-stakeholder model.”Kurt, 4 Aug./

It’s not a perfect solution, but it is efficient, clear and fair.

Kathy and Rebecca

[1] 
https://docs.google.com/document/d/13VIPAxR5OYAzgTvSiaWCBTzYT0siLC2mpt-1Tm3JxTA/edit#heading=h.oc222usgafq2 

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