Trademark Groups urged ICANN to follow International Law not GAC advice and to approves the new gTLD application for .Amazon

Claudio Digangi spoke on behalf of the International Trademark Association (INTA) on particularly on the geographic names issue.

“INTA strongly supports the recent views expressed by the United States. in particular, that it does not view the sovereignty as a valid basis for objecting to the use of terms and we have concerns about the effect of such claims on the integrity of the process.”

It is INTA’s position that generally accepted principles of international law provide ICANN a framework for assessing potential noncommunity based objections to the delegation of particular applied-for strings associated with geographic terms.

These legal norms establish that nation states do not possess exclusive rights to geographic terms and the rights of trademark owners as established under international frameworks, including binding international treaties, must be recognized.

By adhering to these established principles, ICANN will assure its decisions advance the global public interest in the introduction of new gtlds and to remains available to consult with ICANN on these important issues. thank you.

J. Scott Evans of  Yahoo! who is also as a Board Member and an officer of the International Trademark Association (ITA) and a founding member of the IPC, a current member of the Business Constituency (BC) , and a founding member of the Brand Registry Group, was quick to agree with Claudio:

It was my understanding, and the understanding of my organizations both here and outside of ICANN, that the role of the Governmental Advisory Committee (GAC) is to look at the laws that exist in our world today that the governments have years together and working cooperatively and through treaties and negotiated their national laws and international laws and provide you with advice based on those precepts as they exist.

There is no international recognition of country names as protection and they cannot trump trademark rights.

So giving countries a block on a name violates international law, so you can’t do it.

Now, if they want to object under the community objection process and bring their claim and have it looked at under the law as it exists, that’s correct, but a blanket prohibition from a mark like dot amazon that has trademark strategies,  registrations from the very countries that are objecting, that own all the second-level domains in the country code top-level domain from those very countries is wrong and i believe it sets a very dangerous precedent.

Stacey King from Amazon said “Stand here today on behalf of Amazon and our millions of customers worldwide.”

Amazon’s vision is to be the earth’s most customer centric company, a place where people can come and find.

Like all online companies, the way our customers find us is through the internet.

One of our goals in applying for .Amazon is to find new and innovative ways, mechanisms, and platforms, to surprise and delight our countries.

From 2007 to 2011, the GAC, the Board, and the community negotiated rules for this process. Many of us remember these debates. they were difficult discussions and no one got everything they wanted.

At issue are for our company name is the  Amazon brand for which we have trademark registrations in over 125 countries worldwide.

Even after submitting our applications, we tried in good faith to negotiate meeting in person, by video teleconference, making several offers for resolution including reserving names for the geographical areas.

If this board ignores the guidebook and accepts these recommendations, you will be allowing fundamentalist changes to the very nature and value of this multi-stakeholder process.

Kristina Rosette on behalf of Patagonia Inc. which applied for .Patagonia said:

“Everybody knows withdrew their application last week. Patagonia is deeply disappointed by and concerned about the breakdown of the new gTLD process.

Consistent with the recommendations and principles established in connection with that process, Patagonia fully expected its .Patagonia application to be evaluated against transparent and predictable criteria, fully available to applicants prior to the initiation of the process.

Yet, its experience demonstrates the ease with which one stakeholder can jettison rules previously agreed upon after an extensive and thorough consultation. in particular, the definition of geographic names which the GAC formally accepted in its may 262000 letter to the board as well as the GAC’s 2011 recognition that dot brand gTLD strings that also have geographic connotations should not be excluded but should be subject to requirements and safeguards. agreed upon by the applicant and the concerned government.

Moreover, as of last week, Patagonia’s best information which was obtained through a reliable and informed source was that the ICANN board would almost certainly adopt any GAC consensus advice that the .Patagonia application should not proceed regardless of its stated intention to create a predictable, repeatable process for the evaluation of new gTLD applications.

Patagonia is gravely concerned about the precedence implicitly established throughout this process. precedence that call into question the viability of the multi-stakeholder model that make clear that conflict of interest rules and principles do not apply to the ICANN-created and hired independent objector and that threatened trademark rights owned by thousands of entities globally.

If Patagonia had any inkling that the process would unfold as it did, it would never have applied for .Patagonia in the first place. instead, the thousands of personnel hours  and hundreds of thousands of dollars spent preparing and defending its application would have been put to productive use in support of its mission statement, build the best product, cause no unnecessary harm, used business to inspire and implement solutions to the environmental crisis. thank you.

Patagonia is of the view that the independent objector has a conflict of interest under all applicable conflict of interest standards that should have prevented him from filing a community objection against .Patagonia.

Heather Forrest who  wrote  a doctoral thesis in international law on the subject of the consistency with international law of the protection afforded by the Applicant Guidebook to geographic names, at the time the board commenced or voted in 2008 to commence the new gTLD  program said:

“My study asked two questions in particular.

First, whether there was support in international law for exclusive or priority right of states in geographic names and

Secondly, whether there was support in international law of the rights of non-state others that would disprove the exclusivity or priority of geographic names rights of States.

:My study was comprehensive.

I looked at international trade law, unfair competition law, intellectual property law, geographic indications, sovereign rights and human rights. as the Board approved the applicant guidebook, I completed my study and found that there is not support in international law for priority or exclusive right of states in geographic names and found that there is support in international law for the right of non-state others in geographic names. on the basis of my conclusions, I encourage the board to consider the role and value of consistency with international law in its decisions regarding geographic names. thank you.

Christopher Mondini: spoke on behalf of  MarkMonitor.

“MarkMonitor endorses the gTLD  applied for by Amazon.

Respectfully we ask the ICANN board to allow these applications to proceed to delegation.

Further more, we request that the ICANN board solicit public comment and on this and all other future GAC advice to encourage the community and the GAC to cooperate and communicate within the ICANN multistakeholder model and so the board can arrive at a reasoned and impartial decision.

MarkMonitor respects the decision of the GAC and ICANN community. however we believe the GAC’s objection to dot amazon is not consistent with the multistakeholder process.

This appears to be avers to established rights and international legal conventions. to date, governments in Latin America ihave granted amazon over 130 trademark registrations that have been in continuous use by Amazon by 1994 without challenge.

Additionally, amazon has used their brand within domain names including some register by MarkMonitor and including registrations in ccTLDs without objection.

All nations who have signed the TRIPS agreement have obligated themselves to maintain and protect these trademark registrations. despite these granted rights, members of the community resolved to reject Amazon and Patagonia applications.

This declaration appears inconsistent with national and international law. in conclusion.

MarkMonitor urges the ICANN board to reject GAC objections to .Amazon. we also ask the board to seek public comment on this and future advice and to.

Keith Drazek: Chair of the Registry Stakeholder Group said:

From 2007 to 2011 the GAC, ICANN board, and the community debated numerous aspects, rulings, and policies around the applicant guidebook. none of us got everything we wanted, and all of us at times felt we were not being heard. w

While different stakeholders have different views ability particular aspects of the GAC advice, we have a shared concern about the portions of that advice that constitute retroactive changes to the applicant guidebook around the issues of sovereign rights, undefined and unexplained geographic sensitivities, sensitive industry strings, regulated strings, et al.

These changes in essence only override the rules set forth by this community but also exceed what those same governments could do under their own national laws.

GAC advice needs to be consistent with existing national and international law and the GAC should not use ICANN to create new rights or take away existing rights.

ICANN should not be used by the GAC as treaty based organizations like the ITU or WTO or regulated industry they don’t regulate at home or permit the use of strings that are extremely permitted within their national borders. we respect the challenges facing the GAC.

it is reasonable, however, to expect this advice will be consistent with the GAC’s own principles for new gtlds including specifically its advice that no material changes to the applicant guidebook should be made after the application deadline.

It is l reasonable to expect that their advice will be consistent with international law. We asked this board to act today and in the future to protect the stakeholders before you and the people, company, and organizations who they represent. we specifically call on you to accept the GAC advice only only where treaties legal instruments regulate the implied use of such strings, and with respect to geographic names only where such names are precluded or regulated by the guidelines set forth by all of us in the multistakeholder created guidebook upon which applicants relied and at the very least to insure that is not used to route around national and international law. thank you.

The ICANN Board responded with Cherine Chalaby sayign

We hear you very well and you’re saying that any advice or solutions that we find together must be supported by national and international laws. thank you. message understood.

Another ICANN Board member Chris Disspain said:

“So i just want to make sure i’m clear.  There is no presumption that the GAC advice would be accepted.

The bylaws are very clear and the Guidebook is very clear.

There is heavy weight put on to the GAC advice and if that understanding is misinterpreted by people to assume the GAC advice, consent advice will be accepted, then that’s wrong.

You should not presume that we will just accept the GAC advice.

That’s not the same thing as saying there isn’t a strong presumption.

There are things like we have to do due diligence, we have to reach out to people and so on and so forth. so I’m not suggesting there isn’t a strong presumption in the Guidebook, but you should not presume , that we would just accept the GAC advice.