[Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Wed May 15 13:04:27 UTC 2019

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>
> *Sent:* Thursday, May 9, 2019 5:50 PM
> *To:* BECKHAM, Brian <brian.beckham at wipo.int>
> *Cc:* Ariel Liang <ariel.liang at icann.org>; 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 Teamjustdiscussed Agreed Charter Question 9on 08 May 2019,
>     hence the proposed answers are “TBD”. Based on the Sub Team’s
>     discussions, the transcript and notes, staff will provide update.
>
>     /
>     Q//9 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’sdiscussions, 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
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