[Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9
Kathy Kleiman
kathy at kathykleiman.com
Thu May 23 02:00:13 UTC 2019
This seems like a good thread to keep open... in light of the discussion
of today.
Best, Kathy
On 5/22/2019 8:57 PM, Zak Muscovitch wrote:
> Seems to me that the important balance that was originally struck in
> terms of creating Sunrise to address the release of new gTLD’s, as
> described by Kristine in today’s call, could stand to be finer tuned
> in light of the known by-product results to-date, while still
> maintaining Sunrise as a tool for trademark rights holders.
>
> Accordingly, proposals such as Michael’s would potentially enable
> those that want Sunrise to continue, to be satisfied, while offering
> up some modest improvements to satisfy those that want better
> protections for people other than trademark holders. I therefore agree
> that this proposal has merit, and think that this proposal should be
> negotiated within the context of the debate about whether to continue
> or discontinue Sunrise, as a possible partial compromise thereto.
>
> Zak Muscovitch.
>
>
> ------------------------------------------------------------------------
> *From:* Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces at icann.org> on
> behalf of Mitch Stoltz <mitch at eff.org>
> *Sent:* Wednesday, May 22, 2019 8:44 PM
> *To:* gnso-rpm-sunrise at icann.org
> *Subject:* Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9
> This working group has hit on numerous problems with the Sunrise
> regime, with harms falling disproportionately on non-commercial and
> small business registrants. Michael K. has proposed a narrow solution
> to one of these problems, and I think it deserves serious consideration.
>
> Quite simply, Sunrise as it exists is an expansion of trademark
> rights. Allowing priority registration without regard to the actual
> goods and services to which a mark pertains turns a trademark from a
> source identifier into a global dominion over a word or phrase. We
> have ample evidence that Sunrise is being abused in just that way.
> Looking beyond obvious abuses, there is little or no justification for
> giving trademark holders priority registration in TLDs that are
> clearly orthogonal to any product or service the mark-holder offers.
>
> At scale, having that priority absolutely harms the free expression
> rights of others. To use a simple example, Apple is a distinctive
> trademark in consumer technology but a generic word in many other
> circumstances. There are any number of individuals and organizations
> who should be able to express themselves with a domain name containing
> Apple, in ways that raise no possibility of trademark infringement or
> cybersquatting. All of these potential users should have equal
> opportunity to register "apple" in new TLDs that don't raise an
> association with technology products.
>
> Moreover, we need to be consistent about questions of scale. If
> sunrise registrations are used often enough to provide benefit to
> trademark holders, then they are also being used often enough to
> interfere with the rights of noncommercial users. And if they are not
> used very much at all, then we should be jettisoning the program as
> unnecessary. If Sunrise is to continue, Michael's proposal is a
> straightforward way of making it conform to the actual legal rights
> it's meant to protect.
>
> Mitch Stoltz
> Senior Staff Attorney, EFF | 415-436-9333 x142
> https://www.eff.org/donate |https://act.eff.org/
> On 5/15/19 8:09 AM, Kathy Kleiman wrote:
>>
>> Hi Phil,
>>
>> As a co-chair, I'm a little surprised by the vehemence of the debate.
>> Many of us are lawyers and we're used to talking about important
>> issues in dispassionate ways. I think we should do so here.
>>
>> As an ordinary member, I participate in these discussions, as you and
>> Brian do, and in that capacity, I note that we have a problem. I
>> also see the seeds of the solution in your answer below.
>>
>> In 2009, we foresaw that there might be gaming of the Sunrise period
>> -- people registering trademarks for ordinary words to get priority
>> during Sunrise. We now see it happening. Journalists, reporters and
>> bloggers have done the work for us -- and no one seems surprised by
>> their results. I list some of the articles we (as a Subteam)
>> collected below. Links in our Sunrise Summary Table under Q9 -
>> https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summary%20Table%5D%20%2816%20April%202019%29.pdf?version=1&modificationDate=1555515624235&api=v2
>>
>> Nothing in the MK proposal is burdensome, or unusual. It's
>> narrowly-tailored (too narrowly-tailored in my view) to prevent
>> gaming and to use systems already in place.
>>
>> As you note below, the cost of the vetting is part of the process for
>> many gTLDs and ccTLDs -- whether it is providing residency in Japan
>> or the objective standard for .bank or .insurance or .attorney or
>> .cpa. It's already built into our processes -- and not burdensome --
>> and easily extended to Sunrise.
>>
>> We know there is a misuse and even abuse of the Sunrise system. The
>> MK proposal is an easy fix, and one that actually protects and
>> preserves the balance of rights. We are being asked to solve problems
>> -- and this is a big one.
>>
>> Best, Kathy
>>
>> *Articles in our gathering data (links in Summary Table):*
>>
>> *● How one guy games new gTLD sunrise periods**
>> **● Fake Trademarks Stealing Generic Domains In New gTLD Sunrises**
>> **● The Trademark ClearingHouse Worked So Well One Company Got 24 new
>> gTLD using The Famous Trademark “The"**
>> **● How common words like Pizza, Money, and Shopping ended up in the
>> Trademark Clearinghouse for new TLDs**
>> **● The numbers are in! Donuts sunrises typically get 100+ domains,
>> but they also got gamed**
>> **● Digging in on Donuts’ Sunrise: Amazon tops the list, gaming, and
>> top registrars**
>> **● .Build Registry Using Questionable Swiss Trademark Registration
>> To Grab “Build” Domains In Sunrise**
>> **● How Did RetailMeNot Get 849 .Codes Domains In Sunrise Without
>> AnyTrademarks?**
>> *
>>
>> On 5/15/2019 10:10 AM, Corwin, Philip wrote:
>>>
>>> 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’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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>>
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