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

Wed May 15 14:10:46 UTC 2019

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
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 Kathy Kleiman
Sent: Wednesday, May 15, 2019 9:04 AM
To: 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

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