[gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today

Thu Apr 6 19:00:43 UTC 2017

+1

-----Original Message-----
From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Michael Graham (ELCA)
Sent: Thursday, April 06, 2017 2:56 PM
To: George Kirikos; gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today

From my point of view as a) an IP attorney generally and b) in-house counsel for Expedia, Inc., Sunrise is an essential part of the RPMs in order to ensure that the New gTLD program will provide the benefits it was intended to provide (Increasing Consumer Choice, Consumer Trust and Competition on the Internet) without unduly burdening either individuals or entities, or threatening any of their rights (be they privacy or intellectual property or expression).  In regard to the use of Sunrise "preemption" by trademark owners, as indicated in the TMCH study, it is being used in a more limited manner than many presumed would be the case.  Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms.  Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.

    As to points 1 and 2:

    1:  We have learned that there are sufficient numbers of either bad or uninformed (i.e. do not take the time to search to determine whether a term is a registered trademark) actors that we cannot rely on their declaration, and 

2: Despite the success of the UDRP, forcing trademark owners to rely on UDRPs alone is a costly, time-consuming process that fails to satisfy the New gTLD program's charter -- it does not further any of the goals of the New gTLD system.

    In considering RPMs and the Application/Registration/DNS itself I think we need to always step back to consider: who benefits from and who is burdened by the various RPMs or their lack,  and what is the cost and benefit to users/registrants/society.  I raise this because it seems to me that personal profit motives have too often distorted and should not play as large a role in policy decisions as other types of considerations should.

Michael R. Graham

MICHAEL R. GRAHAM
SENIOR CORPORATE COUNSEL
GLOBAL DIRECTOR, INTELLECTUAL PROPERTY
Expedia Legal & Corporate Affairs
T +1 425.679.4330 | F +1 425.679.7251
M +1 425.241.1459
Expedia, Inc.
333 108th Avenue NE | Bellevue | WA 98004 MiGraham at Expedia.com

-----Original Message-----
From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of George Kirikos
Sent: Thursday, April 06, 2017 11:21 AM
To: gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today

Hi folks,

On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans <jsevans at adobe.com> wrote:
> Let’s all pause here. It seems that George and those in his “camp” believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or “unfair”) because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn’t that get to the root of the concern (that is, provided I have accurately articulated the concern).

We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because:

(1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of:

https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en

"3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party."

unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too?

and,

(2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or
not) can challenge alleged misuse of a domain name.

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/
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