We interview Reg Levy all about gTLDs. She is VP at Minds + Machines, the third largest applicant of gTLDs. Another topic are Facebook Beacons, a new tool by Facebook to push location based messages to users. Also, trademarks in Cuba are becoming now more important now.
Rolf Claessen and Kenneth Suzan
Episode 33 – July 24, 2015
RC = Rolf Claessen
KS = Kenneth Suzan
RL = Reg Levy
This is Reg Levy, Vice President of Compliance and Policy for Minds + Machines and you are listening to IP Fridays.
KS: Hello and welcome to this episode of IP Fridays. Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property. It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.
RC: Welcome to Episode 33. Today we have a very special treat for you. I am interviewing a loyal listener of IP Fridays, Reg Levy, who is also Vice President of Minds + Machines, the third largest applicant of generic top-level domains.
Before we jump into the interview, we will tell you about Facebook beacons, a new technology to push messages to Facebook users and we will also tell you about how to register trademarks in Cuba and why that might be important. So Ken, tell us more about the trademarks in Cuba.
KS: Rolf, as tensions between Cuba and the United States ease, and international relations begin to solidify, it is likely that companies will seek to tap into the Cuban market to sell their merchandise and provide needed services. Companies looking to expand their marketing and sales efforts into Cuba will likely want to protect their valuable patents, trademarks and copyrights. Recently, the Carnival Corporation announced that it has received the green light from the United States Department of the Treasury and the United States Department of Commerce to offer cruises to Cuba as early as next May. The cruise line is in the process of working out the logistics with the Cuban government. This is clear evidence that relations are opening and businesses need to keep this growing market on their radar for IP protection.
Historically and since 1995, there has been an exception to the embargo on trade restrictions with Cuba which allowed US businesses to obtain trademark protection for their marks in Cuba. While this exception was on the books, many businesses were not motivated to obtain the protection. Now, with diplomatic relations on the mend, this is about to change. Companies need to be aware that Cuba is a “first to file” country. This means that the first entity to file for the trademark in Cuba is entitled to register that mark. Use of a trademark in Cuba is not required to obtain the registration. As a result, there will likely be trademark squatters that file for trademarks in Cuba which may make it difficult for brand owners to establish their rights in Cuba. Reports have already indicated trademark squatting on popular brands such as NASCAR, Denny’s, Nordstrom, Sam’s Club, Chase, Quiznos, Dillard’s, Kohl’s and Chipotle.
Companies that are planning to do business in Cuba in the next five years should place trademark registration activities at the top of their to-do lists. It is also a good idea to register US trademarks with the United States Customs and Border Protection to prevent fake goods from entering into the United States from Cuba.
Companies should consider filing an international application using the Madrid Protocol to obtain protection in Cuba, or filing a Cuban national trademark application with the Oficina Cubana de la Propiedad Industrial or OCPI. If the company already owns an International Registration, they can designate Cuba as an additional country to add to the registration.
RC: So watch out for trademark squatters in Cuba. Thank you, Ken. You also mentioned Facebook beacons. What is this all about?
KS: Rolf, the next time you walk into a favorite store, you might be walking within the range of a Facebook beacon. As technology and social media combine, advertising techniques have evolved to keep up with our technologically driven world. The new technology, Place Tips, works by using a location based service to show Facebook users posts and photos about a retailer, restaurant, or business when they are in close proximity of a Facebook beacon. The beacons will use Bluetooth technology to locate a customer and their proximity to a business. These beacons are small electronic devices that can transmit information to smartphones. Place Tips is in its early steps, attempting to jump across a few road blocks such as privacy concerns.
According to Facebook’s Website containing information on the beacons, using Place Tips in conjunction with a strategically placed beacon at a business, will allow the business to present customers with a welcome note and photograph, offer prompts to like a particular Facebook page and check in, provide posts from a business Facebook page, and supply the Facebook user with the user’s friends’ recommendations about the business.
Facebook advises that in order to turn the beacon on, all you have to do is to “pull it out of the packaging…and peel the sicker off the back and place the device in a safe, central area.”
Facebook’s beacon program is said to be in competition with Yelp and FourSquare in that these services also provide a forum for customer feedback and reviews. However, Facebook’s beacons differ in that that the reviews are made readily available to customers as they walk into stores with operating beacons, rather than having to conduct a search for the establishment itself. In other words, stores are able to automatically serve up valuable data, reviews, and information to their customers as they near the broadcast range of the Facebook beacon.
The social media giant has designed their own beacon, and distributes the technology free of charge. Entrepreneurs are pleased with how technology is making their business more easily accessible for customers everywhere. Further information on how to obtain a free Facebook beacon is available on the IP Fridays show notes for this podcast.
RC: If you want to learn more about Facebook beacons, you can go to www.ipfridays.com/facebookbeacons.
Let’s just jump right into the interview with Reg Levy who will tell us all about the new gTLDs.
I am very excited to be joined by Reg Levy today. Reg Levy is the Vice President of Compliance and Policy with Minds + Machines. She’s had this position since 2012 and is involved with the company’s many top-level domains applications and the legal requirements of ICANN’s new gTLD program since she took that position. Before that, she worked for the Superior Court of Los Angeles, spent time as a research data base specialist and did some legal work with Princess Cruises, also a firm based in Germany. Minds + Machines Group participates in and provides services in all facets of the domain name industry from registry ownership and operations to consumer sales as an ICANN-accredited registrar. The company is focused specifically on the new top-level domain space. So Reg, thank you for being on the show.
RL: Thank you Rolf, I am happy to be here.
RC: So you just came back from the ICANN meeting in beautiful Buenos Aires. Can you tell our listeners what ICANN is, for those who don’t know.
RL: Sure. ICANN is the Internet Corporation for Assigned Names and Numbers and it is technically the company that runs the Internet in the sense of creating policy for international companies that work with the Internet, including registries and registrars like what my company does, as well as things like certificate authorities which is how you get the little lock on your browser screen. They are a California non-profit that operates with the United States under a Memorandum of Understanding and the Memorandum of Understanding says that they will be a community-based organization. So I participate in ICANN as a community member, as a registry and partially as a registrar. So I go to the three meetings that it has every year – I just got to go to Buenos Aires which is absolutely gorgeous and I sit down in a conference center with a bunch of other people like me and we try to create ICANN policy for the Internet.
RC: Alright. So you rule the Internet (laughs).
RL: A little bit (laughs).
RC: So, why would the United States or any other country listen to what ICANN tells it to do and is there any treaty or contract – you just mentioned the Memorandum of Understanding – is that the whole thing or is there more to it?
RL: So that is the major piece of it. ICANN is essentially under the FCC in the United States and in terms of why the U.S. listens to what ICANN tells it is less of a situation where ICANN tells any government what to do and more of a situation where ICANN tells companies what to do. For example, ICANN’s rules govern Verisign that runs .com and in that sense people in the United States have to listen to what ICANN says because they use .com a lot. But ICANN doesn’t have the same power over, for example, .de so DENIC doesn’t have to do things in the same way that Verisign has to do them. So it is a very complicated relationship between ICANN, between the companies that run the various top-level domain registries and the various governments. To a large extent, the United States doesn’t listen to what ICANN says, and neither does anyone else, but the companies that are contracted with ICANN do have to because of contract law.
RC: So they have individual contracts with ICANN? For example, Verisign?
RL: Right. So Verisign has the .com contract and Verisign is the only company that can hold .com as a top-level domain. My company, for example, has a contract with ICANN to run the .horse registry so instead of .com you can have your name .horse and we are the only people who can run that registry. So that is a contractual relationship and the rules that are made at ICANN by my group and other constituencies and supporting organizations will govern what goes into that contract.
RC: Right, and maybe even more interesting for our listeners is that you are running .law. Is that correct?
RL: That’s correct. Look out for .law later on this year. We are hoping to premier it very soon.
RC: Very good. Since you are VP of Compliance and Policy for Minds + Machine and deal a lot with the legal aspects of top-level domain applications and generic top-level domains, what do you think are the most common types of IP-related issues that you encounter in your work?
RL: The biggest kind of IP issue that I run into is the use of a trademark in a domain name and before the new round of top-level domains was allowed, the various groups within ICANN created policy and the policy that they came up with was called “The Trademark Clearinghouse” which you can find at Trademark-Clearinghouse.com and what that required of the new registries was that trademark owners had the very first opportunity to purchase in a new TLD. So, if you have a trademark for IPFridays, then during the .law sunrise you can be the first person to get IPFridays.law because it is a special time for just trademark holders. So that is a piece of policy that we have to comply with. After that, for 90 days, if somebody else registers IPFridays.law, then if you are still registered in the Trademark Clearinghouse, you will get a notice so that you can go to it and take a look at it and see if the use of your name in that name space is infringing. It is a big part of how our registries are set up and the most interesting piece of it to me was that there was no, what we call “span the dot” trademarks. So if you had a trademark for Apple Computers and someone had a .computers, you could only apply for Apple Computers.computers, you could not apply for Apple.computers so that is sort of an example of how the ICANN policy world does its best but sometimes fails to accomplish what it actually is trying to do. What I work on now that most of our registries are live is managing the UDRP and the URS complaints that might come against registrants in our name space. UDRP, your listeners are probably going to be at least slightly familiar with the way that you can complain that somebody is using your trademark as a domain name and it’s the Uniform Domain Dispute Resolution Policy and it goes to WIPO and you pay $5,000 and it is expensive and takes a long time. The URS is supposed to be just for the new gTLDs, or was intended to be. It is drifting into some of the legacy TLDs now which is a different story. It is the Uniform Rapid Suspension System which says that if it is a very obvious case, if the Website is Nike.shoes and you go to it and they are selling knock-off Nike shoes, then it is very obviously a misuse of a trademark and it can be taken down faster than the UDRP would take.
RC: Right and it probably would cost less money? Or is that also $5,000?
RL: No, I actually believe it is only $800 and it is in dollars as far as I can tell. So despite ICANN’s attempts to be extremely international, again, it’s a great community, but we have some definite room for growth.
RC: Right. Speaking of growth, you are one of the largest holders or applicants of generic top-level domains as you are the third largest and only two other companies, namely Donuts and Google are larger. Can you tell our listeners the difference between domain registrars and generic top-level domain operators? Where is the difference?
RL: Sure. So, again I am going to use .com or .de because that is what your listeners are familiar with, but Verisign is a registry and it holds the DNS records for any domain name in the .com space so as a registry we hold the DNS records for anyone who buys anything in any of our TLDs – from horse to radio to, in the future law and abagado. What that means is that basically we just keep the phone book so that when you go to _________ then you get to my Website. But registrars sell directly to the public. So if you want to purchase ipfridays.law, then you need to go to a registrar. The registry cannot sell that to you directly. In our case we are what’s called vertically integrated which means that we have a registry and a registrar and so you actually can come to our registrar and make purchases but you can also go to your favorite registrar, 101 Domain, those kinds of things, you just go to your favorite registrar and that’s where you can make consumer level purchases.
RC: So the top-level domain operator would be the registry, they are operating and basically the backbone of the domain system and the registrars are just selling the domains, basically.
RC: Alright. So some generic top-level domain operators came under fire, like Vox Populi, who are operating .sucks and they were actually quite present at the recent INTA meeting in San Diego. What do you think about these more provocative generic top-level domains and the business model behind them?
RL: So it is interesting because in the new gTLD space there is room for a lot of different business models. The .com business model is just sell domain names to everyone and that’s fine, but there are different ones. For example, .law is going to be restricted to only attorneys who have been validated in their country of where they hold that title. .sucks has a requirement that if you have a domain name in their name space, it has to be a complaint website. So if I buy ipfridays.sucks, I have to complain about you. I can’t just buy it and say “actually, it’s pretty awesome. It’s one of my favorite podcasts”, because that is a violation of their terms and conditions. There are other TLDs for example, .hiv. Every click to a .hiv website is a donation to research facilities and research to find a cure for HIV/AIDS. So each of the new gTLDs has the opportunity to have a completely different business model and from that standpoint and kind of intellectually I think .sucks is a really cool domain TLD because it is testing the waters of what you can do online and making interesting and innovative leaps. That said, I don’t want to see my name or my company’s name up there so maybe I will have a different conversation when that happens but if that does happen, I probably actually want to start a dialogue with whoever put that up because obviously there is something that they have to complain about that they feel they don’t have the opportunity to do any other way. One of the things that I think is interesting about .sucks is that they really did put their money where their mouth is and they have voxpopuli.sucks so you can go to it and say you know what, I really think that your business model for .sucks sucks and you can do it in their name space.
RC: The one thing I find a little irritating is that Vox Populi, they said ok you trademark holders you can register your domain and not put any complaining content in there but then you would pay like $5,000 instead of a couple hundred or much less. Is that true? Or what do you think about that?
RL: Right, so I discussed earlier the trademark sunrise and how every registry has to give the opportunity for trademark owners to purchase their own names in their name space and my understanding of why .sucks did that was to keep people from doing it. So that they weren’t actually trying to make a lot of money from trademark holders, they were actually trying to discourage trademark holders from sitting on domain names that they weren’t going to use because the whole point of the .sucks registry is to promote the sort of negative speech. Now do I agree with that is a separate question and I am not trying to defend them, I just think that their purposes may have been misunderstood and maybe I’m misunderstanding them and they were trying to make a heck of a lot of money from trademark owners but they did not do the new gTLD program a great service because trademark owners were kind of already upset that if they really wanted to protect their trademark they would have to buy ipfridays.law, ipfridays.lawyer, ipfridays.attorney, ipfridays.abagado and that adds up really quickly and I actually personally don’t think that’s how trademark owners should be approaching this but that is how they have been approaching it and so every time another TLD comes out they are frustrated and they are annoyed and they don’t like the whole new system and so the way .sucks went about it was not helpful to the rest of our cause.
RC: Right, and as a trademark attorney I must say that some people perceived it as being extortion, basically, for the trademark owners that they would have to pay $5,000 just to avoid that their domain would be registered by someone else.
RL: Well, that is something that I have heard a lot with relation to .sucks but I have actually heard it a lot in relation to a lot of the other TLD as well, that the whole gTLD program is extortion and that the whole reason that we are doing this is to take advantage of trademark owners and speaking for the way that we approach it, that’s actually not it at all. We don’t want you to just buy Heineken.beer and just sit on it. We want you to use it. We want you to say hey this is my Website. We don’t just want you to just protect your trademark in one of our domains, we want you to make use of our domains because we think they are really valuable. So again, the fact that that was already an allegation being levied against the new gTLDs registries is that when .sucks came out and did what they did, all of use kind of suffered for it so we will see what the fallout from that ends up being.
RC: And I also don’t agree with that completely because, I mean, trademark owners are always free to get injunctive relief or send out cease and desist letters to people who are using domains with their trademark name and advertising products that are competitive products so I think it’s not necessary that trademark owners have to purchase all different kinds of domains just to make sure their trademark is protected.
RL: Right, and I don’t think that is necessary and one of the whole points of the new gTLD program in general was that the .com namespace, and I keep coming back to .com, but even in other countries that is one of the most used and most recognized TLDs is that that namespace was so packed that you couldn’t get a good name and so if people are going to just come into the new gTLD name spaces and buy up the exact same names that they already own in .com or .de or .co.uk then we are going to end up right back where we were. So, like I say, I think .sucks is an innovative use of the new gTLD namespace but I think there are other very innovative uses out there.
RC: Of course, such as your top-level domains.
RL: Exactly. I definitely think .law is one of our better ones.
RC: Yes,I am very interested to see how this will take off so I will get you on the show maybe in a year or something to talk about that. So, thanks for the great interview and if people would like to learn more about you and get in touch with you, what would be the easiest way to get in touch with you?
RL: The easiest, fastest way is Twitter. I am @RegLevy and I am also at RegLevy.com and I am RegLevy@gmail.com and I look forward to connecting with any of your listeners who have more questions about the new gTLD namespace or ICANN or .law.
RC: Thank you very much.
RL: You are very welcome. Thank you Rolf.
KS: That’s it for this episode. If you liked what you heard, please show us your love by visiting http://ipfridays.com/love and tweet a link to this show. We would be so grateful if you would do that. It would help us out to get the word out. Also, please subscribe to our podcast at ipfridays.com or on iTunes or Stitcher.com. If you have a question or want to be featured in one of the upcoming episodes, please send us your feedback at http://ipfridays.com/feedback. Also, please leave us a review on iTunes. You can go to http://ipfridays.com/itunes and it will take you right to the correct page on iTunes. If you want to get mentioned on this podcast or even have comments within the next episode, please leave us your voicemail at http://ipfridays.com/voicemail .
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