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

Wed May 15 14:11:36 UTC 2019

Just chiming in here:  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?

As an initial mater, I do not believe that there was any evidence that Sunrise Registration should be limited to a particular category.

With respect to the concept, in general, I do not believe that the concept of limiting Sunrise Registration to a category of goods and services is workable.  What “categories” are we trying to correlate?   New gTLD are/were not required to list a category to which they apply, some had purposes that lend themselves to this analysis, such as .BANK, but what “category” would you attribute to .XYX, .GURU, .CLUB, .WEB.

Moreover, trademark owners did not register their trademarks in the TMCH with this concept in mind.  Therefore, there could be huge gaps and this new concept could cost trademark owners thousands of dollars to register all of there marks when only one would suffice in the past.

Lastly, an exact correlation between a trademark registration and a TLD is not always going to be clear.  How will registrars make that determination?

Thanks,

John

From: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces at icann.org> On Behalf Of Kathy Kleiman
Sent: Wednesday, May 15, 2019 9:12 AM
To: gnso-rpm-sunrise at icann.org
Subject: Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

◄External Email► - From: gnso-rpm-sunrise-bounces at icann.org<mailto:gnso-rpm-sunrise-bounces at icann.org>

Claudio, I think you have just brilliantly made the case for why Michael's proposal does not hurt trademark owners, but does harm the "gamers" who are using their trademark registrations for "the" and other common, ordinary words to misuse the Sunrise Period.

Best, Kathy
On 5/9/2019 1:42 PM, claudio di gangi wrote:
Michael,

Agreeing with Brian, and just adding some further context below to the extent helpful.

I think the main issue with this discussion is that the use of a generic top-level domain is not limited to the semantic meaning or implication of the string (unless the Registry decides to restrict its registration policy to a certain community, industry, geographic region, etc.).

This is the primary reason why there is no constituted ‘expansion of trademark rights’ when the trademark owner registers a trademark-corresponding domain name in the gTLD, whether during Sunrise or General Availability, because the use of the gTLD is not restricted to certain goods/services, and is open to various interpretations and forms of use.

The fact that the gTLD is open for any form of use that may be unrelated to the semantic meaning of the string is the main reason why it’s helpful for trademark owners to maintain the option to apply for a registration during Sunrise, even when for the sake of argument, the gTLD does not appear directly correlated to the industry, product, class of goods, of the trademark owner.

In other words, cybersquatters register third-party trademarks in those types of gTLDs for a several reasons, such as: (1) trademark owners have limited budgets and are usually forced to protect their trademark in gTLDs where there is a direct or indirect connotation or semantic relationship between the gTLD and the organization’s brand (and/or several other factors which makes the gTLD a target for registration abuse); (2) this leaves the remaining gTLDs more of an open target for cybersquatting the brand.

As a result, this type of approach to defensive registrations leaves cybersquatters with two main options: (1) register typographical variations of the trademark, or add additional terms to the trademark, in gTLDs where there is a indirect or direct relationship between the semantic meaning of the gTLD and the trademark; 2) register the trademark (and permutations) as a domain name in a different gTLD where the trademark owner did not register their trademark as a domain during Sunrise.

So we see a combination of both of practices in new gTLDs, at either the same or a higher rate of cybersquatting compared to legacy domains. This makes Sunrise a needed option for the purposes mitigating against registration abuse and to help protect consumers from the harms that follow from these illegal schemes.

With that said, of course this doesn’t mean that brand owners are going to utilize the Sunrise RPM across the board. In practice, because of limited budgets and the expense/costs of the registrations, I believe the average number of Sunrise registrations in new gTLDs is between 100 and 200 registrations per registry. This leaves the vast majority of possible permutations of domains available for good faith registration by third parties (or by cybersquatters).

But in some cases, the brand owner will register in a specific new gTLD (where the semantic meaning doesn’t appear directly related at first glance), but the trademark owner is aware of other factors or reasons - for example, the fame of the mark, or previous cases of registration abuse when they have been targeted in a certain manner - to justify the expense of registering the domain name defensively in that specific gTLD.

Yes, when you add up the totals for a specific company, it can come to a very large imposed expense, but since the defensive registrations are spread out across so many different registries, in any particular gTLD you will only see a limited number of Sunrise registrations.

I hope the combination of these various factors makes the issue of lesser concern from your perspective . Also, importantly as Brian noted, there have been expressions of interest within the Subteam to review the SDRP policy to see if we can make incremental improvements, while maintaining the balance of interests. I am happy to work with you and others on this effort going forward.

Best regards,
Claudio

On Thursday, May 9, 2019, BECKHAM, Brian <brian.beckham at wipo.int<mailto:brian.beckham at wipo.int>> 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://urldefense.proofpoint.com/v2/url?u=https-3A__trademark.eu_list-2Dof-2Dclasses-2Dwith-2Dexplanatory-2Dnotes_&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=gSuWWUEWDxSYsvZJni-czNV73i8NXazPZkmQIfpK7Cs&s=KPr_7LMdy70kOaMtQ_YUVbRRY5qtR-3iIMsmNW9sKuM&e=>, 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://urldefense.proofpoint.com/v2/url?u=https-3A__www.pinterest.ch_steelephotograp_mini-2Dcooper-2Dtattoos_&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=gSuWWUEWDxSYsvZJni-czNV73i8NXazPZkmQIfpK7Cs&s=uHebujKmbqlS2uqItLfzU3TNimQ7pyuBwUH5oc2Ozx0&e=>

https://metro.co.uk/2011/01/25/andreas-muller-has-mini-tattooed-on-penis-to-win-car-632961/<https://urldefense.proofpoint.com/v2/url?u=https-3A__metro.co.uk_2011_01_25_andreas-2Dmuller-2Dhas-2Dmini-2Dtattooed-2Don-2Dpenis-2Dto-2Dwin-2Dcar-2D632961_&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=gSuWWUEWDxSYsvZJni-czNV73i8NXazPZkmQIfpK7Cs&s=pbpsDzKQbCJVjxKhFg4pB0Ff7MjZmUC8i8gybNNbC7c&e=>

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<https://urldefense.proofpoint.com/v2/url?u=http-3A__mini.tattoo&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=gSuWWUEWDxSYsvZJni-czNV73i8NXazPZkmQIfpK7Cs&s=hz_dbl1xW8RVKq76eGzyTRSvMHldbUVm99dT05gNB0w&e=>)?

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/<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.bmwblog.com_2018_02_28_new-2Dmini-2Dfolding-2Dbike_&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=gSuWWUEWDxSYsvZJni-czNV73i8NXazPZkmQIfpK7Cs&s=-DQKbN4h_dSO8fhDzuHea5uMdkZ4N96oc5TogI1gY8Y&e=>

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<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_download_attachments_102138618_-255BSunrise-2520Summary-2520Table-255D-2520-252816-2520April-25202019-2529.pdf-3Fversion-3D1-26modificationDate-3D1555515624235-26api-3Dv2&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=gSuWWUEWDxSYsvZJni-czNV73i8NXazPZkmQIfpK7Cs&s=viVsn6p-SByaxe1zDntvWmW8nbZ7ZH54EovjHDKQnKo&e=>.

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<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_download_attachments_102146375_Proposal-252313.pdf-3Fapi-3Dv2&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=gSuWWUEWDxSYsvZJni-czNV73i8NXazPZkmQIfpK7Cs&s=bd_BnRfHGFUSEli5ixdGBdH5cX4wB0bPw3MpUzoFZu4&e=>

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<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_-5FoIWBg&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=gSuWWUEWDxSYsvZJni-czNV73i8NXazPZkmQIfpK7Cs&s=8ExWmYjOv_49RQqOzCs8IP1TEsIlaTuMOUMrJ10Wi6U&e=>

Best Regards,
Mary, Julie, Ariel

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