[Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9
Mitch Stoltz
mitch at eff.org
Wed May 29 00:52:54 UTC 2019
Hi Claudio,
According to your numbers, trademark holders have registered between
105,000 and 140,000 domains that were never available to noncommercial
users. You and others suggest that most of these registrations were
“defensive,” meaning that they were done primarily to prevent anyone
else from registering those domain names - not to use them. What’s more,
given the little we know about what marks are in the TMCH, a great many
of those domain names are either commons words, or words that are
associated with a product or service ONLY in particular contexts. This
represents an enormous loss to the public that will only grow as new
gTLDs roll out.
I take issue with your suggestion that noncommercial users can simply
choose a different domain name that hasn’t been taken by trademark
holders before public availability. For a noncommercial user, the
expressive value of a domain name can be equal to or greater than its
value to a commercial user. A noncommercial user acting in good faith
should have equal opportunity to register a domain.
Yes, rightsholders can choose to register domains in sunrise based on
their internal calculus about where "abuse" is likely to happen, but
they are also currently free to act as though good faith registrations
by noncommercial users are "abuse." That's a fundamental flaw in the
Sunrise mechanism. At a minimum, Michael Karanicolas's proposal to limit
sunrise registrations based on the goods and services actually sold by
the rightsholder would begin to address this.
Best,
Mitch
Mitch Stoltz
Senior Staff Attorney, EFF | 415-436-9333 x142
https://www.eff.org/donate | https://act.eff.org/
On 5/22/19 8:46 PM, claudio di gangi wrote:
> hi Mitch,
>
> Sunrise registrations have averaged between 150 and 200 domains per TLD.
>
> I believe there over 700 different new gTLDs where non-commercial
> users can register domains for non-commercial use.
>
> For the purposes of consensus-building, when one does the math, can
> you kindly clarify on how this results with harms falling
> disproportionately on non-commercial registrants and small business
> registrants?
>
> In terms of the orthogonal domains you mention, registration abuse
> that targets a brand can easily take place in these zones (and often
> does take place). Isn’t this a standing justification, along within
> the fact that only 150 to 200 domains are registered during Sunrise
> per TLD, for having Sunrise in place in to prevent consumer confusion
> and harm from taking place?
>
> In terms of the question of scale that your mention, I don’t see a
> necessary inconsistency that should raise alarm.
>
> One on hand, the brand owner is making an informed choice about where
> to protect their brand, often because they have been previously
> targeted and they recognize a pattern, or due to some other implicit
> connection with the brand that made not be readily apparent to an
> outside observer on the surface.
>
> But for the vast majority of cases, defensive registrations are based
> on strategic factors, such as the likelihood of infringement in a
> particular TLD. I do consider this as resulting in ex-ante harm to
> non-commercial registrants, as for one reason there are virtually an
> unlimited number of registrations available in nearly a 1000 gTLDs. To
> take an extreme case, even in .com with nearly 140 million domains
> registered, successful domainers continue to profit and non-commercial
> users have meaningful choices for expression.
>
> Thanks in advance for your thoughts.
>
> Best regards,
> Claudio
>
>
>
> On Wednesday, May 22, 2019, Mitch Stoltz <mitch at eff.org
> <mailto:mitch at eff.org>> wrote:
>
> 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
>> <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
>>> <https://maps.google.com/?q=12061+Bluemont+Way+%0D%0A++++++++++++++++Reston,+VA+20190&entry=gmail&source=g>
>>> 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>
>>> <mailto: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 <mailto: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://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/
>>> <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/
>>> <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
>>> <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
>>> <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
>>> <https://community.icann.org/x/_oIWBg>
>>>
>>> Best Regards,
>>>
>>> Mary, Julie, Ariel
>>>
>>> World Intellectual Property Organization Disclaimer:
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