ICANN is requesting comments concerning the issue of closed generics gTLDs. The comments period closes March 7th.
Below is Dondi’s official comment sent to ICANN.
Dear ICANN Representative,
In response to your request for public comments regarding whether applications for closed gTLDs should be allowed for generic terms, I would like to note the following:
- Generic words used in a generic way belong to all people. It is inherently in the public interest to allow access to generic new gTLDs to the whole of the Internet Community, e.g., .BLOG, .MUSIC, .CLOUD. Allowing everyone to register and use second level domain names of these powerful, generic TLDs is exactly what we envisioned the New gTLD Program would do. In contrast, to allow individual Registry Operators to segregate and close-off common words for which they do not possess intellectual property rights in effect allows them to circumvent nation-states’ entrenched legal processes for obtaining legitimate and recognized trademark protections.
- Whether or not to allow a closed gTLD should be largely based on whether or not an applicant or registrant has a bona fide intellectual property right in the term it seeks to use as a closed gTLD.
- The framework for deciding whether a proposed gTLD is distinctive or generic should be based upon well settled trademark law which states in part that:
- In order to serve as a trademark, a mark must be distinctive — that is, it must be capable of identifying the source of a particular good. In determining whether a mark is distinctive, the courts group marks into four categories, based on the relationship between the mark and the underlying product: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic. Because the marks in each of these categories vary with respect to their distinctiveness, the requirements for, and degree of, legal protection afforded a particular trademark will depend upon which category it falls within.
- In light of (3) above, below is proposed language for clarifying this issue:
- A gTLD term must be distinctive in order to serve as a “closed gTLD.” In order for a gTLD term to be distinctive, it must be capable of identifying the source of a particular good. There shall be a rebuttable presumption of distinctiveness for a proposed closed gTLD term, if the applicant can demonstrate ownership of intellectual property rights in the proposed term.