[Gnso-rpm-sunrise] Sunrise Dispute Resolution Policies

[Mary Wong]

Hello Kathy and everyone,

To facilitate the Sub Team’s further discussion on this topic, staff thought it may be helpful to point to the specific recommendation that constituted Individual Proposal #2. For your reference, the proposal was that “… all details of any trademark relied upon to secure a sunrise registration shall be made public, in order to permit utilization of the SDRP. Details should include all information provided to the TMCH (e.g. country, registration number, TM registration date, TM owner, goods and services, etc.). Without limiting an implementation review team, such publication might be implemented by making it public at the source (the TMCH) or via the WHOIS …”.

If we may summarize Kathy’s suggestion, it is for an operational fix to that recommendation, to allow certain parties to request data about a mark from the TMCH and for the TMCH to provide that information within a specified period of time (please refer to Kathy’s email below for the full details and grounds for these requests).

As further Sub Team discussion on Question 6 and its associated Individual Proposals (#2 & #4) have now been moved to Discussion Threads, staff invites the Sub Team to continue this discussion on that Discussion Thread. For your ease of reference, the thread was launched on Friday 3 May: https://mm.icann.org/pipermail/gnso-rpm-sunrise/2019-May/000286.html

Best regards,
Julie, Ariel & Mary

From: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces at icann.org> on behalf of Kathy Kleiman <kathy at kathykleiman.com>
Date: Wednesday, May 8, 2019 at 10:00
To: "gnso-rpm-sunrise at icann.org" <gnso-rpm-sunrise at icann.org>
Subject: [Gnso-rpm-sunrise] Sunrise Dispute Resolution Policies


Hi All,

I promised to write something up on the Sunrise Dispute Resolution Policy to help make it something the challenger -- which can include a trademark owner, company or organization -- might use.

Best, Kathy

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Individual Proposal #2 and my proposal – largely an operational fix

Purpose: For making the mandatory sunrise dispute resolution policies fully usable and ensure that challengers have access to the information needed to bring a legitimate challenge.

Registries have the right to limit Sunrise periods by date of registration (e.g., no registrations only 2 days old – I think in Round 1 trademark registrations had to be at least 2 years old) and by categories of goods and services. Challengers have the right to show that the Sunrise Period was misused for registration that do not belong.

Challengers may be trademark owners themselves, organizations or others with direct interest in that top level domain (e.g., it may be a noncommercial top level domain). As noted in Individual Proposal #2 – The Sunrise Dispute Resolution Policies were premised on the openness off the TMCH database and the ability to review and then challenge trademark owners who misuse the Sunrise. SDRPs cannot serve the purpose for which they were created if third parties cannot review the TMCH entries (as original rules allowed)

To bring a Sunrise Challenge, you need to be able to know the information registered in the TMCH – just for that particular mark – including country of registration, registration number, registration date, description of good and services – or a mark protected by statute or treaty and in what country.

Accordingly, a surgical change seems warranted. Allow a party associated with a business, organization or individual having the same or similar name to the domain name registered during the Sunrise Period [or an association or organization representing its members or affiliates which include that business, organization or individual with the same or similar name], or someone with strong proof of inaccuracy during Sunrise registrations, to bring to the Trademark Clearinghouse a request for data of a single, specific mark.

The submission shall state the mark in question, the registration domain name involved, and a good faith reason why the domain name may not have been entitled to registration during the Sunrise Period. The Clearinghouse will then provide the mark's (or marks') recordals including: country of registration, registration number, registration date, description of good and services, or basis of the mark(s) being protected by statute or treaty/country.

The TMCH will provided this information within a short period of time, e.g., 3 business days, to allow the filer to proceed forward with a Sunrise Challenge if warranted (as this is a tight timeline).

Please reference Individual Proposal #2 for additional fields.

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