[Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9
Kathy Kleiman
kathy at kathykleiman.com
Wed Jun 12 16:24:50 UTC 2019
Hi Phil,
I've been puzzling over this for awhile, so let me write before our
meeting today. The TMCH registration involved in gaming, including THE,
CHRISTMAS, PEN, and most upsettingly CLOUD (since it represents an
entire sector of services) - gaming examples covered by reporters --
appear to be legitimate trademarks. They are registered somewhere and in
some category of goods and services. Thus, I don't see how "the
standards for mark recordation in the TMCH" would impact its inclusion.
The problem I thought we were puzzling over is the clear misuse of the
Sunrise period. These are not famous marks, or even well known marks.
From the reports, they appear to be registered solely to game the
system and receive Sunrise registrations for valuable domain names far
from any of their categories of goods and services (e.g., the many
registrations in Sunrise for "THE"). I think we should all worry about
this misuse of the Sunrise period -- trademark owners because they will
be deprived of legitimate opportunities to register their trademarks as
domain names in their chosen New gTLDs and noncommercial community
because this removes ordinary words from registrations.
I don't see how reviewing the standards for mark recordation solves this
one... but the proposal seems narrowly-tailored to address the harms and
not any legitimate trademark owners or trademark/Sunrise activity.
Best, Kathy
On 6/7/2019 1:18 PM, Corwin, Philip via Gnso-rpm-sunrise wrote:
> Thanks for your further response, Michael.
>
> Again, I do not perceive substantial abuse or incursion on free speech
> with the present system. A registrar review of the submitted rationale
> would likely be nothing more than a low speed bump before completion
> of registration in almost every instance.
>
> I look forward to working with you in reviewing the standards for mark
> recordation in the TMCH when we reach the next stage of our work.
>
> Best, Philip
>
> Philip S. Corwin
>
> Policy Counsel
>
> VeriSign, Inc.
>
> 12061 Bluemont Way
> Reston, VA 20190
>
> 703-948-4648/Direct
>
> 571-342-7489/Cell
>
> /"Luck is the residue of design" -- Branch Rickey/
>
> *From:* Michael Karanicolas <mkaranicolas at gmail.com>
> *Sent:* Wednesday, June 05, 2019 1:40 PM
> *To:* Corwin, Philip <pcorwin at verisign.com>
> *Cc:* mitch at eff.org; gnso-rpm-sunrise at icann.org
> *Subject:* [EXTERNAL] Re: Re: Re: [Gnso-rpm-sunrise] [Discussion
> Thread] Sunrise Q9
>
> Hi Phil,
>
> /"Replying again in a personal capacity – if there are indeed
> widespread serious abuses of sunrise registrations taking place ( a
> contention with which I do not concur) then I would think that
> proponents of that view would want a fairly rigorous review process to
> prevent them."/
>
> Personally, I would support a more robust ruleset, and if you recall,
> when I first raised this issue, I did suggest a stricter standard.
> This proposal came about as a result of the objections that were
> raised then. I understand that compromise can be necessary, so I
> attempted to respond to the substance of these objections by narrowing
> the proposal, and crafting it in a manner which is minimally intrusive
> to legitimate registrations and easier to implement while still
> addressing egregious cases, as an attempt to generate enough support
> to get something done to address the problem.
>
> /"But let me ask you this – I presume that if your proposal was
> adopted that rights holders seeking to complete sunrise registrations
> in vertical gTLDs that referenced a category if good or services would
> need to submit a statement explaining how the gTLD string related to
> goods and services associated with their marks./
>
> /So if Mini applied for mini.bike and submitted a statement that this
> related to their offerings of bikes and bike accessories
> <https://www.shopminiusa.com/MINI-LIFESTYLE/GIFTS-AND-GOODIES/BIKES> at
> what point in the registration process would that be submitted and
> what entity would evaluate it?/
>
> /Similarly, if Nike applied for Nike.bike and submitted a statement
> that this was based upon their offerings of bike shorts
> <https://www.nike.com/w?q=women%E2%80%99s%20bike%20shorts&vst=bike> –
> same question?/
>
> While I am open to discussion on implementation, I think that the most
> practical way to handle this would be for the registrar to do it at
> the point of sale. Again - similar to the way ccTLD residency checks
> and the .bank reviews work, but simpler. They could take a fast look
> at the statement (re: offerings of bikes or whatever), and then keep a
> record of the response. If there were questions later (from the
> registries or pursuant to a SDRP perhaps) the registrars could share
> the information. Again - I would be open to suggestion, if you think
> an alternative structure would be more efficient.
>
> Best,
>
> Michael
>
> On Wed, May 29, 2019 at 3:09 PM Corwin, Philip <pcorwin at verisign.com
> <mailto:pcorwin at verisign.com>> wrote:
>
> Michael:
>
> Replying again in a personal capacity – if there are indeed
> widespread serious abuses of sunrise registrations taking place (
> a contention with which I do not concur) then I would think that
> proponents of that view would want a fairly rigorous review
> process to prevent them.
>
> But let me ask you this – I presume that if your proposal was
> adopted that rights holders seeking to complete sunrise
> registrations in vertical gTLDs that referenced a category if good
> or services would need to submit a statement explaining how the
> gTLD string related to goods and services associated with their marks.
>
> So if Mini applied for mini.bike and submitted a statement that
> this related to their offerings of bikes and bike accessories
> <https://www.shopminiusa.com/MINI-LIFESTYLE/GIFTS-AND-GOODIES/BIKES>
> at what point in the registration process would that be submitted
> and what entity would evaluate it?
>
> Similarly, if Nike applied for Nike.bike and submitted a statement
> that this was based upon their offerings of bike shorts
> <https://www.nike.com/w?q=women%E2%80%99s%20bike%20shorts&vst=bike>
> – same question?
>
> Thanks, Philip
>
> Philip S. Corwin
>
> Policy Counsel
>
> VeriSign, Inc.
>
> 12061 Bluemont Way
> Reston, VA 20190
>
> 703-948-4648/Direct
>
> 571-342-7489/Cell
>
> /"Luck is the residue of design" -- Branch Rickey/
>
> *From:* Michael Karanicolas <mkaranicolas at gmail.com
> <mailto:mkaranicolas at gmail.com>>
> *Sent:* Wednesday, May 29, 2019 1:37 PM
> *To:* Corwin, Philip <pcorwin at verisign.com
> <mailto:pcorwin at verisign.com>>
> *Cc:* mitch at eff.org <mailto:mitch at eff.org>;
> gnso-rpm-sunrise at icann.org <mailto:gnso-rpm-sunrise at icann.org>
> *Subject:* [EXTERNAL] Re: Re: [Gnso-rpm-sunrise] [Discussion
> Thread] Sunrise Q9
>
> Obviously, I'm not proposing "letting all proposed registrations
> get in". I just noted that, in the cases that you mentioned, I
> wouldn't see a problem. You bring up geo names - which I'm not
> sure would even be included under this proposal since it's only
> meant to apply to categories of goods - but if they did, I would
> not argue for requiring a physical presence there. I'm not sure I
> fully follow your second question with regard to "the gTLD
> vertical" - but again, I'm happy for the broader and more
> inclusive approach.
>
> The point of a low bar assessment is to target obvious cases of
> abuse, or a clear disconnect between a trademark and the domain
> under request, but to provide for minimal impairment of legitimate
> registrations, while minimizing all the administrative costs that
> you keep trying to build in by keeping the assessment relatively
> inclusive.
>
> On Wed, May 29, 2019 at 2:19 PM Corwin, Philip
> <pcorwin at verisign.com <mailto:pcorwin at verisign.com>> wrote:
>
> Michael:
>
> Again, speaking in a personal capacity – I must say I am
> confused by your response.
>
> You say “The evidence that the system is open to abuse, and
> that abuse has taken place, has been amply demonstrated, and
> it follows that if we take no action the system will likely
> continue to be abused.”, but then you say, “I'm generally fine
> letting them all in. As I said - a low bar assessment, just to
> make sure the system isn't being obviously abused.”
>
> If you believe that significant abuse has and will take place,
> then how does letting all proposed registrations get in under
> a low bar assessment address the problem you perceive?
>
> Best, Philip
>
> Philip S. Corwin
>
> Policy Counsel
>
> VeriSign, Inc.
>
> 12061 Bluemont Way
> Reston, VA 20190
>
> 703-948-4648/Direct
>
> 571-342-7489/Cell
>
> /"Luck is the residue of design" -- Branch Rickey/
>
> *From:* Michael Karanicolas <mkaranicolas at gmail.com
> <mailto:mkaranicolas at gmail.com>>
> *Sent:* Wednesday, May 29, 2019 1:06 PM
> *To:* Corwin, Philip <pcorwin at verisign.com
> <mailto:pcorwin at verisign.com>>
> *Cc:* mitch at eff.org <mailto:mitch at eff.org>;
> gnso-rpm-sunrise at icann.org <mailto:gnso-rpm-sunrise at icann.org>
> *Subject:* [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion
> Thread] Sunrise Q9
>
> Hi Phil,
>
> I appreciate you taking the time to look up the Wikipedia
> entries for so many different languages, but if your purpose
> was to make the case that there are a lot of different words
> out there, I'm not sure you needed to bother with the effort.
> I will concede that point.
>
> But if your underlying argument is that none of this matters
> because there's so many words still available, and one is just
> as good as another because domain names don't really matter
> much... Well - what are we all doing here?
>
> Seriously - why do people spend tens of millions of dollars on
> a domain name if one is as good as another? Why did Amazon
> just spend god-knows how much time and money trying to secure
> .Amazon, when they could have just shifted over to .AmazonCorp
> or .TheAmazonCompany if those are just as good and would have
> spared them the fight? The answer, as we all know, is that
> while there's lots of words in the English language, they're
> not all interchangeable, and some letter strings are better
> than others in conveying an idea. And this is why the
> registration of incredibly common words, ostensibly for the
> purpose of trademark protection. is so troubling, because it
> carves off a space that could, and likely would, be utilized
> for a legitimate purpose just because it has a tangential
> relation to an existing mark. The evidence that the system is
> open to abuse, and that abuse has taken place, has been amply
> demonstrated, and it follows that if we take no action the
> system will likely continue to be abused. If we just ignore
> this issue, which is fairly glaring, I think it will lead to
> problems down the line, as the working group seeks approval
> for its broader recommendations.
>
> I agree that we need to work towards implementable guidelines,
> but I don't agree that it's the sort of insurmountable
> obstacle you are making it out to be, particularly if we adopt
> a relatively low bar, as I've been saying all this time. I
> believe you, in a previous post, spoke of "overkill" and a
> "needlessly complicated" solution - but you're the one pushing
> the proposal in this direction. I, personally, don't think the
> assessment needs to be done by a "neutral third,
> non-contracted party", and as to your other examples - I'm
> generally fine letting them all in. As I said - a low bar
> assessment, just to make sure the system isn't being obviously
> abused.
>
> Best,
>
> Michael
>
> On Wed, May 29, 2019 at 12:25 PM Corwin, Philip via
> Gnso-rpm-sunrise <gnso-rpm-sunrise at icann.org
> <mailto:gnso-rpm-sunrise at icann.org>> wrote:
>
> This response is in a personal capacity.
>
> First, I would note that the standard for a proposal to be
> included in the Initial Report for the purpose of
> soliciting public comment is strong support within the sub
> team and subsequently the full WG. I do not perceive
> Michael’s proposal to limit sunrise registrations in at
> least vertical gTLDs to those related (a term that
> requires significant definition) to the goods and services
> to which a mark has been registered as having received
> that level of support. Indeed, I believe the sub team has
> become more divided on it as discussion has proceeded. (Of
> course, the sub team’s consideration of the proposal will,
> if my perception of support level is borne out, still be
> noted in the Initial Report and anyone will be free to
> comment upon it; it simply will not be endorsed proposal
> on which the ICANN community is specifically invited to
> comment.)
>
> Second, I have stated my belief that, especially with
> higher sunrise pricing being a gating factor, rights
> holders have been judicious in their use of sunrise
> registrations. The fact that sunrise registrations have
> only averaged 150-200 per new gTLD documents that very
> selective use, and provides no evidence of significant
> abuse. (As for questionable marks being registered, that
> is a subject for review in our next and final phase, when
> we focus back on and conclude recommendations on the TMCH,
> including the requirements for recording a mark.)
>
> Third, as we seem to be engaged in mathematical analysis,
> consider that according to the Oxford English Dictionary
> <https://en.oxforddictionaries.com/explore/how-many-words-are-there-in-the-english-language/>,
> “there are, at the very least, a quarter of a million
> distinct English words, excluding inflections, and words
> from technical and regional vocabulary not covered by the
> /OED/, or words not yet added to the published dictionary,
> of which perhaps 20 per cent are no longer in current use.
> If distinct senses were counted, the total would probably
> approach three quarters of a million”. Wikipedia
> <https://en.m.wikipedia.org/wiki/List_of_dictionaries_by_number_of_words>,
> for its part, notes that the 5^th edition of the American
> Heritage Dictionary of the English Language contains more
> than 370,000 words. English of course is not the only
> language written in ASCII characters (and therefore not
> IDNs) – again according to Wikipedia, German has 330,00
> words, Italian 260,000, French 135,000, Spanish 93,000,
> Portuguese 442,000, and so on.
>
> But sticking just to English, if we conservatively
> estimate that there are 300,000 distinct dictionary words,
> then even an average sunrise registration total of 200
> words per new gTLD leaves 299,800 available to register by
> anyone (and that doesn’t include made up, non-dictionary
> words). Out of 300,000 available words, 200 represents
> less than 1/10^th of one percent. So the burden of sunrise
> registrations on the availability of dictionary words as
> domain names is infinitesimal as, for English alone, 99.9%
> of all dictionary words remain available for general
> registration.
>
> Fourth, the speech embodied in a domain name is minimal at
> best. Domain names function primarily as an Internet
> address, with an expressive function being secondary. Most
> domain names consist (and the ones we are discussing do so
> entirely) of a single term separated by a dot from the
> gTLD string label. Not much meaningful speech is made up
> of just one word plus a gTLD designation (e.g., ride.bike).
>
> Fifth, the domain platform is the primary space in which
> meaningful speech is expressed, and a sunrise registration
> leaves ample (indeed, almost unlimited) latitude for those
> who do not possess trademark rights to engage in
> unfettered speech. The proposal under discussion cited as
> an alleged “abuse” BMW’s sunrise registration of
> mini.bikes. But that registration still leaves available a
> vast number of .bike domains that include the word mini to
> serve as platforms for meaningful speech – including
> minis.bike, miniraces.bike, minisafety.bikes,
> minifans.bike, minikids.bike, minidirt.bike, and on and
> on. So the availability of sunrise registrations has
> essentially no censorship effect on free speech.
>
> Sixth and most importantly, even if one agrees with the
> proponents of the proposal (which I do not) that there is
> some problem in need of a solution, they have failed to
> describe any practical means by which the proposal would
> be uniformly and effectively administered, or estimated
> what such a process would cost. While there is no
> requirement to develop a full implementation plan until
> after a proposal receives consensus support, there should
> at least be some general description of what
> administration will entail (and I must say that I do not
> find statements such as “it’s easy” or “during the
> registration process” to be very convincing or assuring).
> If the proponents truly believe there is a significant
> problem to be redressed then they would want their
> solution to be administered in an objective, uniform, and
> effective manner by a neutral third, non-contracted party
> (noting also that registries and registrars would have
> commercial incentives to accept almost any rationale
> provided by a rights holder for a proposed domain
> registration). A standard policy will have to be developed
> that wrestles with such questions as whether a rights
> holder wishing to register in a geo domain must maintain a
> physical facility in the locale, or whether demonstrating
> sales in the location is sufficient; and whether “related
> to” is to be narrowly defined to require that the rights
> holder have registrations for goods and services that
> directly coincide with the gTLD vertical, or whether it is
> sufficient to simply supply goods and services that are
> employed by those engaged in activities described by the
> vertical (the first would bar nike.bike, the second would
> allow it). And of course there must be some appeals
> process for those rights holders who believe they have
> been improperly barred from making a valid sunrise
> registration – and who will administer that, and what
> standard will it employ?
>
> Given the overall failure to describe any demonstrable and
> consistent abuse or significant impingement of speech by
> actual sunrise registartions, as well as the lack of even
> a general outline of a credible implementation model with
> reasonable costs and manageable rules, I cannot support
> the proposal.
>
> Thanks to all for your consideration of these personal views.
>
> Philip S. Corwin
>
> Policy Counsel
>
> VeriSign, Inc.
>
> 12061 Bluemont Way
> Reston, VA 20190
>
> 703-948-4648/Direct
>
> 571-342-7489/Cell
>
> /"Luck is the residue of design" -- Branch Rickey/
>
> *From:* Gnso-rpm-sunrise
> <gnso-rpm-sunrise-bounces at icann.org
> <mailto:gnso-rpm-sunrise-bounces at icann.org>> *On Behalf Of
> *Mitch Stoltz
> *Sent:* Tuesday, May 28, 2019 8:53 PM
> *To:* gnso-rpm-sunrise at icann.org
> <mailto:gnso-rpm-sunrise at icann.org>
> *Subject:* [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion
> Thread] Sunrise Q9
>
> Hi Claudio,
> According to your numbers, trademark holders have
> registered between 105,000 and 140,000 domains that were
> never available to noncommercial users. You and others
> suggest that most of these registrations were “defensive,”
> meaning that they were done primarily to prevent anyone
> else from registering those domain names - not to use
> them. What’s more, given the little we know about what
> marks are in the TMCH, a great many of those domain names
> are either commons words, or words that are associated
> with a product or service ONLY in particular contexts.
> This represents an enormous loss to the public that will
> only grow as new gTLDs roll out.
>
> I take issue with your suggestion that noncommercial users
> can simply choose a different domain name that hasn’t been
> taken by trademark holders before public availability. For
> a noncommercial user, the expressive value of a domain
> name can be equal to or greater than its value to a
> commercial user. A noncommercial user acting in good faith
> should have equal opportunity to register a domain.
>
> Yes, rightsholders can choose to register domains in
> sunrise based on their internal calculus about where
> "abuse" is likely to happen, but they are also currently
> free to act as though good faith registrations by
> noncommercial users are "abuse." That's a fundamental flaw
> in the Sunrise mechanism. At a minimum, Michael
> Karanicolas's proposal to limit sunrise registrations
> based on the goods and services actually sold by the
> rightsholder would begin to address this.
> Best,
> Mitch
>
> Mitch Stoltz
>
> Senior Staff Attorney, EFF | 415-436-9333 x142
>
> https://www.eff.org/donate |https://act.eff.org/
>
> On 5/22/19 8:46 PM, claudio di gangi wrote:
>
> hi Mitch,
>
> Sunrise registrations have averaged between 150 and
> 200 domains per TLD.
>
> I believe there over 700 different new gTLDs where
> non-commercial users can register domains for
> non-commercial use.
>
> For the purposes of consensus-building, when one does
> the math, can you kindly clarify on how this results
> with harms falling disproportionately on
> non-commercial registrants and small business registrants?
>
> In terms of the orthogonal domains you mention,
> registration abuse that targets a brand can easily
> take place in these zones (and often does take place).
> Isn’t this a standing justification, along within the
> fact that only 150 to 200 domains are registered
> during Sunrise per TLD, for having Sunrise in place in
> to prevent consumer confusion and harm from taking place?
>
> In terms of the question of scale that your mention, I
> don’t see a necessary inconsistency that should raise
> alarm.
>
> One on hand, the brand owner is making an informed
> choice about where to protect their brand, often
> because they have been previously targeted and they
> recognize a pattern, or due to some other implicit
> connection with the brand that made not be readily
> apparent to an outside observer on the surface.
>
> But for the vast majority of cases, defensive
> registrations are based on strategic factors, such as
> the likelihood of infringement in a particular TLD. I
> do consider this as resulting in ex-ante harm to
> non-commercial registrants, as for one reason there
> are virtually an unlimited number of registrations
> available in nearly a 1000 gTLDs. To take an extreme
> case, even in .com with nearly 140 million domains
> registered, successful domainers continue to profit
> and non-commercial users have meaningful choices for
> expression.
>
> Thanks in advance for your thoughts.
>
> Best regards,
>
> Claudio
>
>
>
> On Wednesday, May 22, 2019, Mitch Stoltz
> <mitch at eff.org <mailto:mitch at eff.org>> wrote:
>
> This working group has hit on numerous problems
> with the Sunrise regime, with harms falling
> disproportionately on non-commercial and small
> business registrants. Michael K. has proposed a
> narrow solution to one of these problems, and I
> think it deserves serious consideration.
>
> Quite simply, Sunrise as it exists is an expansion
> of trademark rights. Allowing priority
> registration without regard to the actual goods
> and services to which a mark pertains turns a
> trademark from a source identifier into a global
> dominion over a word or phrase. We have ample
> evidence that Sunrise is being abused in just that
> way. Looking beyond obvious abuses, there is
> little or no justification for giving trademark
> holders priority registration in TLDs that are
> clearly orthogonal to any product or service the
> mark-holder offers.
>
> At scale, having that priority absolutely harms
> the free expression rights of others. To use a
> simple example, Apple is a distinctive trademark
> in consumer technology but a generic word in many
> other circumstances. There are any number of
> individuals and organizations who should be able
> to express themselves with a domain name
> containing Apple, in ways that raise no
> possibility of trademark infringement or
> cybersquatting. All of these potential users
> should have equal opportunity to register "apple"
> in new TLDs that don't raise an association with
> technology products.
>
> Moreover, we need to be consistent about questions
> of scale. If sunrise registrations are used often
> enough to provide benefit to trademark holders,
> then they are also being used often enough to
> interfere with the rights of noncommercial users.
> And if they are not used very much at all, then we
> should be jettisoning the program as unnecessary.
> If Sunrise is to continue, Michael's proposal is a
> straightforward way of making it conform to the
> actual legal rights it's meant to protect.
>
> Mitch Stoltz
>
> Senior Staff Attorney, EFF | 415-436-9333 x142
>
> https://www.eff.org/donate |https://act.eff.org/
>
> On 5/15/19 8:09 AM, Kathy Kleiman wrote:
>
> Hi Phil,
>
> As a co-chair, I'm a little surprised by the
> vehemence of the debate. Many of us are
> lawyers and we're used to talking about
> important issues in dispassionate ways. I
> think we should do so here.
>
> As an ordinary member, I participate in these
> discussions, as you and Brian do, and in that
> capacity, I note that we have a problem. I
> also see the seeds of the solution in your
> answer below.
>
> In 2009, we foresaw that there might be gaming
> of the Sunrise period -- people registering
> trademarks for ordinary words to get priority
> during Sunrise. We now see it happening.
> Journalists, reporters and bloggers have done
> the work for us -- and no one seems surprised
> by their results. I list some of the articles
> we (as a Subteam) collected below. Links in
> our Sunrise Summary Table under Q9 -
> https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summary%20Table%5D%20%2816%20April%202019%29.pdf?version=1&modificationDate=1555515624235&api=v2
>
> Nothing in the MK proposal is burdensome, or
> unusual. It's narrowly-tailored (too
> narrowly-tailored in my view) to prevent
> gaming and to use systems already in place.
>
> As you note below, the cost of the vetting is
> part of the process for many gTLDs and ccTLDs
> -- whether it is providing residency in Japan
> or the objective standard for .bank or
> .insurance or .attorney or .cpa. It's already
> built into our processes -- and not burdensome
> -- and easily extended to Sunrise.
>
> We know there is a misuse and even abuse of
> the Sunrise system. The MK proposal is an easy
> fix, and one that actually protects and
> preserves the balance of rights. We are being
> asked to solve problems -- and this is a big one.
>
> Best, Kathy
>
> *Articles in our gathering data (links in
> Summary Table):*
>
> *● How one guy games new gTLD sunrise periods
> ● Fake Trademarks Stealing Generic Domains In
> New gTLD Sunrises
> ● The Trademark ClearingHouse Worked So Well
> One Company Got 24 new gTLD using The Famous
> Trademark “The"
> ● How common words like Pizza, Money, and
> Shopping ended up in the Trademark
> Clearinghouse for new TLDs
> ● The numbers are in! Donuts sunrises
> typically get 100+ domains, but they also got
> gamed
> ● Digging in on Donuts’ Sunrise: Amazon tops
> the list, gaming, and top registrars
> ● .Build Registry Using Questionable Swiss
> Trademark Registration To Grab “Build” Domains
> In Sunrise
> ● How Did RetailMeNot Get 849 .Codes Domains
> In Sunrise Without AnyTrademarks?
> *
>
> On 5/15/2019 10:10 AM, Corwin, Philip wrote:
>
> Kathy:
>
> I presume that these are your personal
> views, just as the email I posted last
> week raising serious doubts about
> Michael’s proposal were clearly labeled as
> personal. Likewise, what follows is an
> expression of personal views.
>
> Not to repeat myself, but to the extent
> there is gaming based on weak marks it
> should be a focus of discussion when we
> review requirements for mark recordation
> in the TMCH. But I have seen no
> substantial evidence that legitimate
> trademark holders are seeking to utilize
> sunrise registrations in gTLDs other than
> those for which they have a good faith
> belief that registration is necessary for
> brand protection. Even where a sunrise
> registration might arguably be abusive, I
> do not see that as placing any burden on
> the speech rights of others who wish to
> register a domain name that bears some
> resemblance.
>
> I also described why I believe adoption of
> this proposal will require a costly
> bureaucracy to yield reasonably consistent
> applications of what will always be a
> subjective standard subject to
> interpretation. I do not see this as the
> same as the objective standard for a .bank
> or .insurance domain (where the cost of
> vetting is built into the registration
> fee, and the requirement is satisfied by
> furnishing a certificate evidencing that
> the applicant is a regulated institution)
> or even ccTLDs, where some have objective
> criteria to demonstrate being domiciled or
> doing business in a particular
> jurisdiction. While I don’t believe that
> Michael has the responsibility to provide
> a full-blown implementation scheme, I have
> not yet heard a credible explanation of
> how adoption of a relationship test will
> be consistently administered in a
> cost-effective way.
>
> Finally, and more broadly, we are in the
> process of considering proposals to
> recommend to the full WG for inclusion in
> the Initial Report for public comment.
> While that does not require a
> demonstration of consensus at this point,
> it should require some reasonably strong
> support within the sub team and, following
> that, the WG; and some prospect that the
> proposal can achieve consensus down the
> road within the WG (for the Final Report)
> and Council. Frankly, I don’t see that
> reasonably strong support for Michael’s
> proposal within the sub team but rather a
> sharp divide over whether there is even a
> problem that requires addressing. And,
> while I have no crystal ball, I feel
> reasonably confident that in the end
> contracted parties will oppose it for
> administrative and cost reasons, among
> others, and that BC and IPC members will
> oppose it as putting yet another burden on
> sunrise registrations – so I don’t see any
> prospect of consensus.
>
> Philip S. Corwin
>
> Policy Counsel
>
> VeriSign, Inc.
>
> 12061 Bluemont Way
> <https://maps.google.com/?q=12061+Bluemont+Way+%0D%0A++++++++++++++++Reston,+VA+20190&entry=gmail&source=g>
> Reston, VA 20190
>
> 703-948-4648/Direct
>
> 571-342-7489/Cell
>
> /"Luck is the residue of design" -- Branch
> Rickey/
>
> *From:* Gnso-rpm-sunrise
> <gnso-rpm-sunrise-bounces at icann.org>
> <mailto:gnso-rpm-sunrise-bounces at icann.org>
> *On Behalf Of *Kathy Kleiman
> *Sent:* Wednesday, May 15, 2019 9:04 AM
> *To:* gnso-rpm-sunrise at icann.org
> <mailto:gnso-rpm-sunrise at icann.org>
> *Subject:* [EXTERNAL] Re:
> [Gnso-rpm-sunrise] [Discussion Thread]
> Sunrise Q9
>
> Hi All,
>
> I think the discussion is an important one
> because it is brings up issues across
> categories.
>
> a) Michael's proposal addresses a problem
> we have found in our data-driven analysis.
> There are gamers out there who are
> registering trademarks in a certain
> category of goods and services, and then
> using them to register an array of domain
> names in Sunrise having nothing at all to
> do with the categories of their trademark
> registration.
>
> We committed at the outset of the RPMs --
> in the 2009 era - that we would not be
> expanding trademark rights. That's exactly
> what is happening in these situations and
> registrations.
>
> b) The SDRP is broken - barely used
> because the Trademark Clearinghouse was
> supposed to be public, during
> implementation it was turned private, so
> challengers cannot get the information
> they need to challenge. Plus, it's not the
> job a challenger to police the basic
> principle of the entire RPM process.
>
> Brian, you have mentioned your "suggested
> improvements to the SDRP" from 2 years ago
> several times, but that was 1000s of
> emails ago, and we worked hard to compile
> the data and solutions that we are looking
> at today. Per the rules that we agreed to
> as Co-Chairs and as a WG, we created a new
> table, atop extensive data gathering, and
> things must be reintroduced from prior to
> our URS break. If you could do so, that
> would be very timely.
>
> I've suggested changes to the SDRP that
> would give challengers some chance to use
> it -- although only for the narrow purpose
> intended. The SDRP was not intended to
> solve a broad gaming problem -- because we
> did not anticipate one. We know know it
> exists; and a policy/operational fix
> resolves it.
>
> c) Michael suggests a narrowly tailored
> solution for a gaming problem that we now
> know exists. His solution is completely
> consistent with how registrars, in many of
> these gTLDs, already handle General
> Availability (e.g., required proof to
> register in .BANK). It's not a new process
> -- just a way to use existing process to
> avoid gaming and preserve the principles
> we agreed to in this process.
>
> Best, Kathy
>
> On 5/9/2019 12:04 PM, BECKHAM, Brian wrote:
>
> Michael,
>
> I would personally prefer not to get
> into a Google search race for some
> kind of “exceptions to prove the rule”
> and also because “tattoos” is not a
> class of marks
> <https://trademark.eu/list-of-classes-with-explanatory-notes/>,
> but these articles could be of
> interest in terms of explaining why
> they may seek such a defensive sunrise
> registration:
>
> https://www.pinterest.ch/steelephotograp/mini-cooper-tattoos/
>
>
> https://metro.co.uk/2011/01/25/andreas-muller-has-mini-tattooed-on-penis-to-win-car-632961/
>
>
> Also, while MINI may not make
> motorcycles, their sister company BMW
> does, so they could well branch out
> into that product area (including
> related services).
>
> I have already suggested improvements
> to the SDRP on several occasions,
> going back almost 2 years now (those
> were apparently parked in preference
> of various data seeking exercises), so
> would respectfully suggest that others
> take the baton from here.
>
> As I said, I believe there is a
> genuine willingness to explore such
> solutions.
>
> At the same time, it seems unlikely
> that the current proposal No. 13 is
> likely to garner consensus, and will
> defer to the Sub Team Co-Chairs to
> address that at the level of our
> present discussions.
>
> Brian
>
> *From:* Michael Karanicolas
> <mkaranicolas at gmail.com>
> <mailto:mkaranicolas at gmail.com>
> *Sent:* Thursday, May 9, 2019 5:50 PM
> *To:* BECKHAM, Brian
> <brian.beckham at wipo.int>
> <mailto:brian.beckham at wipo.int>
> *Cc:* Ariel Liang
> <ariel.liang at icann.org>
> <mailto:ariel.liang at icann.org>;
> gnso-rpm-sunrise at icann.org
> <mailto:gnso-rpm-sunrise at icann.org>
> *Subject:* Re: [Gnso-rpm-sunrise]
> [Discussion Thread] Sunrise Q9
>
> Interesting, thanks for sharing. I
> checked whether Mini made motorcycles
> before I sent my proposal in... I
> didn't think to check whether they
> made regular bicycles!
>
> By any chance, were you able to find
> any examples of the company branching
> into the tattoo business as well
> (http://mini.tattoo)?
>
> I'm not sure if this presents a
> "nuance" in trademark classes. I don't
> think it's much of a revelation that
> "bikes" can refer to motorcycles or
> regular bicycles. All this represents
> is a product line I was unaware of.
> And under my proposal, all Mini would
> have to do would be to include the
> link you provided when they register
> the domain under sunrise, and that
> should be that.
>
> Personally, I don't see how the SDRP
> challenge process could be retooled to
> turn it into something that adequately
> represents the interests of potential
> future registrants without injecting
> massive amounts of transparency into
> the sunrise and TMCH processes... but
> I would be interested to hear your
> thoughts as to how this might work.
>
> On Thu, May 9, 2019 at 12:38 PM
> BECKHAM, Brian <brian.beckham at wipo.int
> <mailto:brian.beckham at wipo.int>> wrote:
>
> Thanks Ariel,
>
> Copying here, my full email to the
> Sunrise List from earlier today as
> it relates to proposal No. 13:
>
> --
>
> Thanks Julie,
>
> Just for fun (as I am aware the
> example was merely anecdotal),
> further to our hypothesizing last
> night, indeed, MINI does have a
> range of folding bikes:
>
> https://www.bmwblog.com/2018/02/28/new-mini-folding-bike/
>
>
> This does however illustrate in
> some ways the nuance in trademark
> classes and TLD typology that may
> escape proposal No. 13 in its
> current form.
>
> As I mentioned on our call, I
> believe there is a shared
> willingness to address the issue
> Michael has raised, but via the
> SDRP challenge process, and not
> via claims exclusions.
>
> Brian
>
> --
>
> Brian
>
> *From:* Gnso-rpm-sunrise
> <gnso-rpm-sunrise-bounces at icann.org
> <mailto:gnso-rpm-sunrise-bounces at icann.org>>
> *On Behalf Of *Ariel Liang
> *Sent:* Thursday, May 9, 2019 5:36 PM
> *To:* gnso-rpm-sunrise at icann.org
> <mailto:gnso-rpm-sunrise at icann.org>
> *Subject:* [Gnso-rpm-sunrise]
> [Discussion Thread] Sunrise Q9
>
> Dear Sunrise Sub Team members,
>
> As announced, this thread is being
> opened for final mailing list
> discussions related to *Sunrise
> Agreed Charter Question 9*,
> including *Proposal #13*.
>
> We ask that you review the
> *Summary Table* *(as of 16 April
> 2019) *and provide any additional
> input you may have to the
> “*proposed answers & preliminary
> recommendations*” in relation to
> the Agreed Charter
> Question, and consider *draft
> answers *to the following
> questions regarding the individual
> proposal:
>
> a. Should the Sub Team recommend
> that the full WG consider
> including this Individual Proposal
> in the Initial Report for the
> solicitation of public comment?
>
> b. In light of the Individual
> Proposal, are any modifications to
> the current “tentative answers &
> preliminary recommendations” needed?
>
> c. Should any additional Sub Team
> recommendations be made in
> relation to the agreed Sunrise
> charter question?
>
> Unless the Sub Team Co-Chairs
> determine otherwise, this
> discussion thread will remain open
> until *23:59 UTC on 22 May 2019*.
> Comments/input provided past the
> closing date or outside this
> discussion thread will not be
> taken into account when compiling
> the final Sub Team member input.
>
> *Summary Table (Pages 36-40)*
>
> The draft answers, preliminary
> recommendations, and links to the
> relevant individual proposals are
> in the latest Summary Table (as of
> 16 April 2019):
>
> https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summary%20Table%5D%20%2816%20April%202019%29.pdf?version=1&modificationDate=1555515624235&api=v2.
>
>
> *Agreed Sunrise Charter Question 9
> (Page 36)*
>
> The Sub Team just discussed Agreed
> Charter Question 9 on 08 May 2019,
> hence the proposed answers are
> “TBD”. Based on the Sub Team’s
> discussions, the transcript and
> notes, staff will provide update.
>
> /
> Q9 In light of the evidence
> gathered above, should the scope
> of Sunrise Registrations be
> limited to the categories of goods
> and services for which? /
>
> *_Proposed Answer_: *TBD
>
> *Individual Proposal*
>
> The Sub Team just discussed the
> Proposal #13 on 08 May 2019, hence
> there is no draft answer currently
> on the Summary Table (as of 16
> April 2019). Based on the Sub
> Team’s discussions, the transcript
> and notes, staff will provide.
>
> Link to the individual proposal is
> included below.
>
> *Proposal #13*:
> https://community.icann.org/download/attachments/102146375/Proposal%2313.pdf?api=v2
>
>
> *Where to Find All Discussion
> Threads *
>
> Access the Documents wiki page and
> find the opening messages of the
> all discussion threads in the
> table (highlighted in green):
> https://community.icann.org/x/_oIWBg
>
> Best Regards,
>
> Mary, Julie, Ariel
>
> World Intellectual Property
> Organization Disclaimer: This
> electronic message may contain
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> If you have received this e-mail
> by mistake, please immediately
> notify the sender and delete this
> e-mail and all its attachments.
> Please ensure all e-mail
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>
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