[gnso-rpm-wg] [Renamed] Or or And

Mon Apr 10 10:55:35 UTC 2017

It’s probably worth looking at both processes to see the kind of entities
that are using them. If speculators have found a way to game either of the
processes, then as this is their primary business they are likely to ‘beat’
any genuine TM holders with real goods and services to protect, since the
speculators are far more likely have a greater understanding of what is
needed to secure any first come first served rights.

On Mon, Apr 10, 2017 at 10:57 AM, Beckham, Brian <brian.beckham at wipo.int>
wrote:

> Without taking a view on these topics:
>
>
>
> On the question of Claims and/or Sunrise, if this is discussed further, it
> may be worth considering possible competition aspects vis-à-vis present and
> future rounds/applicants.
>
>
>
> Also it may be worth recalling that in its GAC Indicative Scorecard on
> new gTLD Outstanding Issues
> <https://gacweb.icann.org/download/attachments/28278837/20110223_Scorecard%20GAC%20outstanding%20issues%2020110223.pdf?version=2&modificationDate=1312465657000&api=v2>
> the GAC stated that “Sunrise services and IP claims should both be
> mandatory for registry operators because they serve different functions
> with IP claims serving a useful notice function beyond the introductory
> phase.”
>
>
>
> Brian
>
>
>
> *From:* gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces@
> icann.org] *On Behalf Of *Phil Corwin
> *Sent:* Sunday, April 09, 2017 5:51 PM
> *To:* Paul McGrady; 'Kathy Kleiman'; gnso-rpm-wg at icann.org
>
> *Subject:* Re: [gnso-rpm-wg] [Renamed] Or or And
>
>
>
> Some excellent comments on this thread.
>
>
>
> It’s not clear to me whether it’s the Board’s policy to require new gTLD
> registries to offer both a sunrise registration period and a claims notice
> period of at least 90 days, or a staff implementation decision, but that’s
> probably not the most important consideration now given that it was the
> standard practice for the first round. Jon has identified an issue that
> might have fallen through the cracks otherwise since it is about the
> relationship between the two TMCH-based RPMs rather than their separate
> operation.
>
>
>
> If there is indeed sentiment to consider modifying that requirement, but
> if there is also some consensus that the availability of sunrise is more
> important for TM holders, then a proposal to simply substitute “or” for
> “and” may not be viable because that would leave the possibility that some
> new gTLDs in subsequent rounds would choose TM Claims and have no Sunrise
> period. So maybe a more nuanced approach would be to require Sunrise but
> leave Claims as a voluntary option. But that could mean no generation of TM
> Claims at many gTLDs in subsequent rounds.
>
>
>
> Please understand that I am not advocating this change, just thinking out
> loud about the considerations that would come into play if any change was
> contemplated.
>
>
>
> Here’s how this co-chair would hope our internal decision process plays
> out on this or any other policy/implementation matter:
>
> ·         A proponent of making a change to present policy and practice
> should articulate the rationale for the proposal and the benefits expected
> to flow from its adoption.
>
> ·         The proponent should also be candid about what costs or burdens
> might be imposed on various parties if it is adopted and explain why those
> costs are outweighed by the envisioned benefits.
>
> ·         If an adopted change would not be self-executing but would
> require significant implementation details then the proponent should at
> least explain the basics how that would be practically effected.
>
>
>
> I believe that if proponents of making a change follow those suggestions
> it will set the stage for at least a fully informed debate and subsequent
> decisionmaking.
>
>
>
> Hope that is helpful.
>
>
>
> Best regards
>
>
>
>
>
>
>
> *Philip S. Corwin, Founding Principal*
>
> *Virtualaw LLC*
>
> *1155 F Street, NW*
>
> *Suite 1050*
>
> *Washington, DC 20004*
>
> *202-559-8597 <(202)%20559-8597>/Direct*
>
> *202-559-8750 <(202)%20559-8750>/Fax*
>
> *202-255-6172 <(202)%20255-6172>/Cell*
>
>
>
> *Twitter: @VlawDC*
>
>
>
> *"Luck is the residue of design" -- Branch Rickey*
>
>
>
> *From:* gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces@
> icann.org <gnso-rpm-wg-bounces at icann.org>] *On Behalf Of *Paul McGrady
> *Sent:* Sunday, April 09, 2017 10:57 AM
> *To:* 'Kathy Kleiman'; gnso-rpm-wg at icann.org
> *Subject:* Re: [gnso-rpm-wg] [Renamed] Or or And
>
>
>
> Thanks Kathy.
>
>
>
> I think if we were going to ask the Board to undo their standing policy of
> “and” we would need a good reason and I haven’t seen any emerge on this
> list.  The more we tinker with what is not broken, the more we risk not
> only bringing Phase 1 to a halt, but having to reopen the issue of the
> separation of Phase 2.  I don’t think we could get buy-in from the consumer
> protection community to go along with “or” in Phase 1 if there is any
> chance that the UDRP will be weakened in Phase 2.  Hopefully, we can do
> what Phil suggested in his recent posts and look to incremental
> improvements, rather than sea changes.
>
>
>
> Best,
>
> Paul
>
>
>
>
>
>
>
> *From:* gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces@
> icann.org <gnso-rpm-wg-bounces at icann.org>] *On Behalf Of *Kathy Kleiman
> *Sent:* Sunday, April 09, 2017 9:21 AM
> *To:* gnso-rpm-wg at icann.org
> *Subject:* [gnso-rpm-wg] [Renamed] Or or And
>
>
>
> I think Jon raises an important point. The recommendations of the STI (as
> adopted by the GNSO Council and the ICANN Board) were for the New gTLD
> Registry to choose between a Sunrise Period OR the 90 day TM Claims Notice
> -- "at registry discretion" (as Jon notes below).
>
> Is this something we should make a note to review -- and accordingly pass
> on as a question to the Sunrise Period and TM Claims Subgroups:  is the
> right conjunction "or" or "and"?  Should we return to the policy of
> allowing registries to choose Sunrise Period OR TM Claims for their
> roll-outs and would that provide a more balanced set of protections?  *Not
> a question to be debated now, *but one we might to queue up for the
> discussions ahead.
>
> (Cue the music for Conjunction Junction from Schoolhouse Rock for those
> from that generation...)
>
> Best, Kathy
>
>
>
> On 4/6/2017 3:46 PM, Jon Nevett wrote:
>
> Michael,  This is very helpful perspective. The 2012 round was supposed to require either sunrise or claims at registry discretion.  Late in the process, ICANN staff changed it to require both sunrise and claims.  Based on your email and your IP perspective, is it fair to assume that sunrise is the much more important RPM between the two?  Thanks.  Jon
>
>
>
> On Apr 6, 2017, at 2:56 PM, Michael Graham (ELCA) <migraham at expedia.com> <migraham at expedia.com> wrote:
>
>
>
> 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 <(425)%20679-4330> | F +1 425.679.7251 <(425)%20679-7251>
>
> M +1 425.241.1459 <(425)%20241-1459>
>
> 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 <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> <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 <(416)%20588-0269>
>
> http://www.leap.com/
>
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