[Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9
Corwin, Philip
pcorwin at verisign.com
Thu May 9 19:01:55 UTC 2019
Michael:
Speaking in a personal capacity, in regard to your proposal:
Where a top level domain is suggestive of a particular category of good or service, such as .bike or .pizza, sunrise registrations should
require proof by the mark holder of actively doing business in that specific category.
In understand your concern that rights holders in certain dictionary words may sometimes utilize the sunrise registration period in a questionable manner. I question whether this is a widespread concern given the general cost of a sunrise registration, which is substantially higher than the land rush or general availability periods (and we have heard from rights holders how premium pricing often deters any utilization of the sunrise option). However, like Brian, I believe we can look at the SDRP challenge process to see if it needs tweaking. We can also look at whether there is some appropriate tightening of the standards to register a mark in the TMCH, when we discuss the TMCH as our final step prior to drafting an initial report.
But I believe that your proposal is both overkill and will be needlessly complicated and bureaucratic to implement, especially given that the sunrise period is but a brief opening phase for each new gTLD.
The first question is what is the activity associated with a particular gTLD string.
When I type “bike” into the USPTO goods and services search engine this is what comes up---
Mini-bikes
A
04/02/1991
GOODS
07-1997
Select Record
012-908
012
D
09/03/2009
GOODS
9-10-09 - the 9-3-09 entry was deleted because ROWBIKES is More ><https://idm-tmng.uspto.gov/id-master-list-public.html#show%20more%20content>
09-2007
Select Record
012-906
012
Rowing bikes
A
09/03/2009
GOODS
09-2007
Select Record
012-1167
012
Folding bikes
A
05/16/2013
GOODS
T
10-2013
Select Record
012-1538
012
Dirt bikes
A
03/14/2019
GOODS
T
11-2019
Select Record
012-965
012
Motorized dirt bikes for motocross
A
06/24/2010
GOODS
09-2007
Select Record
012-1007
012
Motorized dirt bikes for motocross and dune buggies
A
11/04/2010
GOODS
09-2007
Select Record
021-1655
021
Sports bottle belts for {specify sport or activity, e.g., running, hiking, biking, etc.}
A
06/13/2013
GOODS
Sports bottle belts are specially adapted for holding spor More ><https://idm-tmng.uspto.gov/id-master-list-public.html#show%20more%20content>
10-2013
Select Record
021-1652
021
Water bottle belts for {specify sport or activity, e.g., running, hiking, biking, etc.}
A
05/30/2013
GOODS
Water bottle belts are specially adapted for holding water More ><https://idm-tmng.uspto.gov/id-master-list-public.html#show%20more%20content>
10-2013
Select Record
028-1615
028
Equipment for skateboard parks for skateboarding, inline skating, and BMX freestyle biking, namely, {indicate goods in Class 28, e.g., ramps, rails, etc.}
A
04/21/2011
GOODS
09-2007
Select Record
021-1654
021
Sports bottle belts for {specify sport or activity, e.g., running, hiking, biking, etc.} also featuring storage for other items
A
06/13/2013
GOODS
Sports bottle belts are specially adapted for holding spor More ><https://idm-tmng.uspto.gov/id-master-list-public.html#show%20more%20content>
10-2013
Displaying all of 11 records for bike
-- Note that neither bicycles or motorcycles appear on that list, even though those were the two goods that dominated the discussion on yesterday’s call. This demonstrates that the technical trademark definition of goods and services associated with a given term may not accord with popular understanding of what a given gTLD signifies. Also note that providers of clothing and other specialized equipment associated with the activity aren’t covered, even though they could provide perfectly valid reasons for wanting to register a .bike domain in sunrise (as could makes of tires and other bike equipment).
Also, of course, that is just the USPTO list of goods and services associated with “bike”, and other nations may provide quite different lists. So are we going to restrict a domain applicant to the list of the nation they are HQ’d in? Or do we add those in which they have secured a trademark? But what if they are also doing business in a jurisdiction where the gTLD term has a different legal association?
And what about geo domains, like .paris? Should a rights holder only be able to get a sunrise registration if they have a facility there? But what if they have no physical facility but it is a significant market for them, and therefore the registration of their mark is deemed important to makes sure that the domain is not registered first by a bad actor?
So all these questions will need to be addressed by some policy rules developed in an implementation process, and the result is bound to be subjective. And once those rules are established they must be applied, which means vetting each attempted sunrise registration to make sure it complies. Who will do that? Registrars can’t do it – the online registration process is highly automated and profit margins are already thin; this vetting can’t be automated because some human with legal/policy expertise will need to review each rationale for the registration and see if it passes muster. And what will that cost? If we let the registry decide, they will have an inherent bias in favor of letting the registration occur so they can collect a higher fee, so I don’t think that will satisfy you in terms of consistent application of the rule. So we would likely need to create some new Sunrise Registration Clearinghouse (perhaps within the TMCH, or separate from it) that will vet each proposed sunrise registration to determine if the mark is sufficiently associated with the goods and services related to the gTLD label, and if it is provide the mark holder with an approval token that can be used during the registration process.
And what if the proposed registration is denied, but the mark holder really thinks it is important to get that domain before someone else does? Well then you need an appeals process, with some rules and some designated adjudicator.
If we were to decide that this should be an enforceable restriction these are the kind of policy and technical issues that would need to be addressed. The alleged abuse can be targeted in more direct and less complex ways, while leaving it to mark holders to decide which if any of their marks are worth registering at a particular gTLD at the sunrise price.
Finally, as to the impact on free speech, if BMW’s Mini division wants to register mini.bike that would still leave available for enthusiasts of mini-bikes such domains and minis.bike, minifans.bike, minidirt.bike, etc. Plenty of potential and appropriate .bike domains are still available as platforms for speech.
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: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces at icann.org> On Behalf Of Michael Karanicolas
Sent: Thursday, May 09, 2019 11:50 AM
To: BECKHAM, Brian <brian.beckham at wipo.int>
Cc: gnso-rpm-sunrise at icann.org
Subject: [EXTERNAL] 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
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