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

Tue Apr 11 16:42:23 UTC 2017

Excellent points and analysis, Brian.

George’s “gaming” concern does, however, raise an interesting opportunity:  Although as you point out the empirical evidence does not support scrapping Sunrise, it could support imposing a “use in the ordinary course of trade” requirement for domain names.  This would require registrants of domain names (or domain names registered in Sunrise?) to submit proof that they are using the domain name in the ordinary course of offering and selling the goods or services for which they registered their trademark.  This could be 3 years or some other appropriate period.  If the registrant fails to submit proof, the domain name registration is cancelled and the name returned to the registry for re-registration.  This would prevent the sort of monopolization of speech for non-consumer use that George seems concerned by.

If adopted, this same proof test could be applied to all domains to ensure that once registered they are used to further the purpose and goals of the Internet: Choice, Trust, Competition, and Diversity in information transmission and sharing, and free and open speech.  This would have the salutary effect of preventing gaming, reducing cybersquatting, and removing deadwood and merely speculative registrations which do not benefit the DNS.

Michael R.

From: Beckham, Brian [mailto:brian.beckham at wipo.int]
Sent: Tuesday, April 11, 2017 3:12 AM
To: J. Scott Evans <jsevans at adobe.com>; Michael Graham (ELCA) <migraham at expedia.com>; gnso-rpm-wg at icann.org
Subject: RE: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today

Thank you Michael G, this is absolutely a correct distinction to draw.  A few thoughts:

On the “issue”:

George K, perhaps for some context, when we looked at the Spec 13 (".brand") issue with ICANN, this same issue of bona fide trademark owners was central to our discussions.  Among other specific language aimed at addressing this, ICANN's FAQ's (https://newgtlds.icann.org/en/applicants/agb/base-agreement-spec-13-faqs-15jul14-en.pdf) state:

"Specification 13 defines a .Brand TLD as:  the TLD [corresponding to] a registered trademark valid under applicable law, which registered trademark …is owned and used by the Registry Operator …in the ordinary course of Registry Operator’s …business in connection with the offering of any of the goods and/or services claimed in the trademark registration;"

Drawing guidance from that definition, and to paraphrase Michael G:  is the principal reason someone is participating in the TMCH and Sunrise to obtain a (dictionary word) domain name (for speculation/resale), or to execute a (pre-existing) trademark protection strategy?

As Georges N said, there will always be bad actors who game systems (here, by “overclaiming”), but this does not justify throwing the whole system out.  Bona fide trademark owners should not be penalized for abuse by speculators.

And as has already been noted, to address such gaming, aside from the rather obvious possibility of challenging the underlying trademark registration inappropriately invoked for a Sunrise, there is also a challenge process contemplated for such disputes amongst speculators.  See 1.2 (2 and 3) at: www.trademark-clearinghouse.com/dispute<http://www.trademark-clearinghouse.com/dispute>.

Finally, in terms of Michael K’s question, no one is suggesting that gaming is not occurring.  It is difficult however to see what new light will be shed on this by continuing to insist on additional data.

On the data:

In terms of drawing conclusions about the correlation between not-yet-registered domain names – which here, we assume are subject to a Claims Notice – this would require a case-by-case subjective assessment of the reason(s) a potential registration may have been abandoned.  This is not so much a failing of the “amount of evidence” but the type of evidence available.

That said, recall that Claims Notices presuppose that some would-be infringers are going to be deterred from undertaking a registration (but again knowing that this has occurred would require knowing the subjective reason(s) a registration was not undertaken).  Moreover, in the case of a registration, it is potentially relevant in enforcement actions to address an unawareness defense.

The mere possibility that anyone, be it a trademark owner or otherwise, may register a particular domain name using a dictionary word (e.g., <“cloud”.newgTLD>) necessarily means that everyone else in the entire world will be excluded from expressing themselves via that particular dictionary word in that TLD.  Some hopefully useful info/data:

·         There are just over 42,000 entries in the TMCH (www.trademark-clearinghouse.com/content/stats-0<http://www.trademark-clearinghouse.com/content/stats-0>).

·         There are roughly 30 million domain names registered in about 1,200 new gTLDs (https://ntldstats.com/ and https://newgtlds.icann.org/en/program-status/delegated-strings) for an average of about 25,000 domain names registered in each new gTLD (though ICANN’s CCT excel sheet says more like 20,000 on average).

·         With one notable outlier (.adult) at 2,049, a high-water mark for Sunrise registrations seems so-far to be about 1,000 (notably, 950 from .BLOG:  www.thedomains.com/2016/10/20/blog‑gets‑almost‑950-domain-registrations-sunrise-period/<http://www.thedomains.com/2016/10/20/blog-gets%1ealmost%1e950-domain-registrations-sunrise-period/>).

·         The average number of sunrise registrations per new gTLD seems to be about 130 (https://www.icann.org/resources/pages/cct-metrics-rpm-2016-06-27-en#2.8).

Even ignoring the fact that just a casual glance at the .BLOG Sunrise list makes it clear that many of these registrations are for well-known brands (i.e., this is not merely a list of dictionary terms, or as Bret calls it “Group 2”), and even recognizing that there are actors out there gaming the TMCH and Sunrise system (and moreover noting that apparently some registration actors have bulk pinged the TMCH), it is somewhat difficult to understand the sweeping conclusion that free speech is being chilled or that free expression is somehow being blocked – the numbers simply don’t bear this conclusion out.

And there is, I think, another distinction that needs to be drawn:  that between those wishing to engage in speech, and those seeking an advantage in purchasing domain names for commercial purposes.

For the former group, with an average of 130 registrations in Sunrise, even if we accept that some of those registrations take domain names from individuals wishing to engage in “free speech” it is difficult to see how much closer to zero we can realistically hope to get.

Finally, the latter group is engaged in abuse of the RPMs beyond their intended purpose, and this WG should not be discussing limitations on the RPMs (to the detriment of bona fide trademark owners) merely to address the competitive concerns of their domain name speculation comrades.  There are already challenge processes in place for this.

Regards,

Brian

-----Original Message-----
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 J. Scott Evans via gnso-rpm-wg
Sent: Tuesday, April 11, 2017 1:53 AM
To: Michael Graham (ELCA)
Cc: 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

+1

Sent from my iPhone

> On Apr 10, 2017, at 3:49 PM, Michael Graham (ELCA) <migraham at expedia.com<mailto:migraham at expedia.com>> wrote:

>

> No, I think the reference is correct in this context.  Domain name speculators/investors and even Cybersquatters can also be trademark owners.  However, the reference is accurate in reflecting their principal reason for participating in the domain name ecology.

>

> Michael R.

>

> -----Original Message-----

> 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 George Kirikos

> Sent: Monday, April 10, 2017 3:42 PM

> 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

>

> Georges:

>

>> On Mon, Apr 10, 2017 at 6:37 PM, Nahitchevansky, Georges <ghn at kilpatricktownsend.com<mailto:ghn at kilpatricktownsend.com>> wrote:

>> So apparently you have an alleged anecdotal example of gaming the

>> system by a speculator/domainer (your earlier evidence on .casino was

>> incorrect as I noted in a prior email to you).  I note that the

>> examples do not show a widespread practice of abuse by brand owners.

>

> You keep calling them "speculator/domainers", to try to distance them from what they are, namely *trademark owners*. That's the camp where the problem comes from, not from "domainers/speculators".

>

> Sincerely,

>

> George Kirikos

> 416-588-0269

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