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

Tue Apr 11 15:26:40 UTC 2017

Bret:

Thanks for the useful information.

I don’t think we can necessarily presume that a sunrise registration made via a “mainstream registrar” rather than a “brand-centric registrar” is necessarily suspect. A small business with a perfectly valid trademark registration may well be more likely to use a mass market rather than a brand specialist registrar.

So far as Uniregistry’s restrictions on the subsequent sale of sunrise names that may be a good means to reduce “gaming”, but I’m not sure there would be support in this WG to place subsequent restrictions on all registries in regard to domains purchased during sunrise.

The administration of the TMCH by Deloitte and IBM has gotten generally high marks, so we should likely presume that the trademarks which were the basis of  potentially abusive sunrise registrations were properly found to meet the current verification standards.

So do you think we should look at tightening those standards? That might well raise issues on its own, particularly if it led to either extreme vetting or presumed invalidity of registrations made within certain national jurisdictions.

Thanks in advance for any further thoughts on this.

Best, Philip

Philip S. Corwin, Founding Principal
Virtualaw LLC
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Washington, DC 20004
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"Luck is the residue of design" -- Branch Rickey

From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Bret Fausett
Sent: Monday, April 10, 2017 4:49 PM
To: 'Michael Graham (ELCA)'; gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today

Michael, it’s not very scientific. But when I look in my dashboard and see all of the sunrise registrations that came in on TLD, the likely candidates for “Group 2” just sort of leap out at you.

I don’t see any issues with the registrations from the brand-centric registrars. The registrations from MarkMonitor, CSC, ComLaude, etc. are exactly what you might expect.

Then I see a handful of registrations from a mainstream registrar, for the same customer, where the trademarks are on words like “Christmas”, “Insurance”, “Dating” and “Discount”.

Yes, “windows” is a common word, but when I see the Microsoft sunrise registrations come through, they come through with coined marks as well. There are a lot of companies like that, but I don’t count them as ‘Group 2’ since the generic words are typically also part of a bundle of registrations that include coined, fanciful and arbitrary marks.

It’s the registrant that only has generic single-word marks that I count as suspicious. In fact, I can’t think of a single brand that only trademarks single, common words that monetize well in PPC, but you can find a handful of such companies in the TMCH.

           Bret

Bret Fausett
General Counsel
____________________________
[Uniregistry]<http://www.uniregistry.link/>
Uniregistry, Inc.
2161 San Joaquin Hlils Road
Newport Beach, California 92660

Mobile +1 310 985 1351
Office +1 949 706 2300 x4201
bret at uniregistry.com<mailto:bret at uniregistry.com>

From: Michael Graham (ELCA) [mailto:migraham at expedia.com]
Sent: Monday, April 10, 2017 8:39 AM
To: Bret Fausett <bret at uniregistry.com<mailto:bret at uniregistry.com>>; gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: RE: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today

Bret:

How are you determining which Sunrise registrants are falling into Group 2?  TM Registrations without any actual products?

Michael R.

From: gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org> [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Bret Fausett
Sent: Monday, April 10, 2017 9:35 AM
To: gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today

> It seems like the whole argument is on the basis of some strawman argument that brand owners
> are using the TMCH to take common words out of circulation.

As a registry operator, we have some insight into who is using the sunrise period. By and large, the sunrise is used for brands to register names that would not have any use for anyone except the brand owner. In other words, the trademark owner is not taking a registration opportunity away from someone else. Most of these registrations come from the registrars typically used by brands. Call this Group 1.

At the same time, somewhere around 3-5% of the names registered in sunrise have been registered by companies who appear to have registered a mark solely for the purpose of gaining access to the sunrise period. These names are typically registered at registrars other than the ones used by brands. Call this Group 2.

So I don’t think anyone is claiming that “brand owners” are taking common words out of circulation, but there are trademark holders in some jurisdictions who appear to have gamed the system. They are not taking the name out of circulation, but they are trying to get first access to a name at registration price which may have a high resale value on the secondary market.

(At our registry, we tried to anticipate this potential abuse by including restrictions on the subsequent sale of sunrise names. See Section III of our policy document here, http://uniregistry.link/registry-policies/?file=1449. So, yes, if you are a trademark owner with a trademark registered solely to get into the sunrise, you can use the sunrise, but the name has no resale value.)

If this group could come up with a way of preserving sunrise for Group 1 while excluding Group 2, that would be worthwhile, in my view.

           Bret

Bret Fausett
General Counsel
____________________________
[Uniregistry]<http://www.uniregistry.link/>
Uniregistry, Inc.
2161 San Joaquin Hlils Road
Newport Beach, California 92660

Mobile +1 310 985 1351
Office +1 949 706 2300 x4201

Bret Fausett
General Counsel
____________________________
[Uniregistry]<http://www.uniregistry.link/>
Uniregistry, Inc.
2161 San Joaquin Hlils Road
Newport Beach, California 92660

Mobile +1 310 985 1351
Office +1 949 706 2300 x4201
bret at uniregistry.com<mailto:bret at uniregistry.com>

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