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

Fri May 17 13:29:02 UTC 2019

Hi,

Given that the purpose of the proposal is to target clearly abusive
registrations, my inclination would be frame things relatively flexibly
with regard to the .Auto example you've given (and, for that matter, the
"bike" example Phil gave earlier). Perhaps, rather than cleave too closely
to formal categories like the Nice Classification, which may be unduly
rigid, a better solution would be to follow a plain language interpretation
of the phrase, which would allow for simpler and quicker determinations.

In terms of the costs issue, I think there may be some lingering confusion
based on the framing of the Charter question, which specifically envisions
limiting registrations to the category as registered in the Clearinghouse.
In that context, I can understand why some might be concerned that a
company like Nike, which may have registered its trademark for shoes and is
now branching into watches, would need to re-register. But that is *not*
what the proposal suggests. Rather than following the category of initial
registration, the proposal merely requires that the mark holder be doing
business in that type of goods or services. So, to go back to the Nike
example, even if the registration in the TMCH only envisioned shoes, so
long as Nike can demonstrate that it's selling watches (which should be
fairly simple) there would be no problem. Certainly, the intention here is
not to design a system where a company would have to go back and
re-register all of its trademarks, or multiple versions of the same
trademark, and I think it wouldn't be an issue to further clarify on those
grounds, if that would help assuage concerns.

Best,

Michael

On Wed, May 15, 2019 at 12:58 PM John McElwaine <
john.mcelwaine at nelsonmullins.com> wrote:

> Michael,
>
>
>
> My comments are not aimed at your proposal specifically (and which I don’t
> have in front of me) but they appear to be applicable. I was answering Q9.
>
>
>
> What TLDs does your proposal apply to?  How would you draw the line
> between .AUTO – which can mean an automobile or automatic?
>
>
>
> With respect to the comment on costs, let’s say a large consumer products
> company  has over 100 trademarks for a variety of goods.  This is not
> uncommon for a company with a very diverse product base.  In the past, they
> only needed to submit one trademark registration to the TMCH.  A proposal
> to correlate the TLD to the goods/services in the trademark registration
> would require a submission of all or many of the trademark registrations.
> It would be prohibitively expensive.
>
>
>
> John
>
>
>
>
>
>
>
> *From:* Michael Karanicolas <mkaranicolas at gmail.com>
> *Sent:* Wednesday, May 15, 2019 11:48 AM
> *To:* John McElwaine <john.mcelwaine at nelsonmullins.com>
> *Cc:* Kathy Kleiman <kathy at kathykleiman.com>; gnso-rpm-sunrise at icann.org
> *Subject:* Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9
>
>
>
> Hi all,
>
>
>
> This has been an interesting conversation. I'm not sure if John's comment
> here was directed as a general response to Q9, or as a specific response to
> my proposal. I'm going to assume it's the former, since my proposal
> specifically *DOES NOT* apply to gTLDs like .CLUB or .XYX or .WEB which
> are not suggestive of a specific category of goods, but I thought I would
> reiterate the point, as I know there was some confusion expressed last week
> as well.
>
>
>
> I must confess, I'm also still a bit confused by the claim that this would
> require brand owners to register a bunch of new marks... Unless I'm missing
> something, the marks registered in the TMCH are the only ones capable of
> being registered in sunrise. So if Tata registers "Tata Motors" but not
> "Tetley" - then "Tetley" wouldn't be available under sunrise anyway. So is
> the point that they would lose the ability to register something like
> TataMotors.Recipes? If so - I don't see this as a major problem - but
> merely limiting trademark protections to the category of goods or service
> which is being offered - as is done all over the world.
>
>
>
> Finally, I'll also note that the debate is being simultaneously pulled in
> two directions: on the one hand, Brian has noted that "the average number
> of sunrise registrations was very low", while Phil is claiming that the
> high level of automation and tight margins precludes any sort of human
> intervention. Which is it? Is the volume and pace of the sunrise system so
> high as to preclude even a quick smell test to ensure that the system isn't
> being gamed, or is the use of the system so low that we shouldn't even
> bother trying to fix the problems?
>
>
>
> Honestly, I think that a lot of these interventions have vastly
> over-emphasized the complexity of the analysis, which can be made based on
> a quick, plain language determination. I'd be happy to apply a low bar, as
> I mentioned last week, such that if there's any kind of reasonable argument
> for inclusion, the registration would pass muster, since the intention here
> is really to weed out registrations that are clearly inappropriate.
>
>
>
> Look forward to chatting further today.
>
>
>
> Michael
>
>
>
> On Wed, May 15, 2019 at 11:12 AM John McElwaine <
> john.mcelwaine at nelsonmullins.com> wrote:
>
> 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
>
>
>
> 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> 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>
> *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
> <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>
> 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> *On Behalf
> Of *Ariel Liang
> *Sent:* Thursday, May 9, 2019 5:36 PM
> *To:* 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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