[gnso-rpm-wg] Proposal for the elimination of Sunrise Period

Jeremy Malcolm jmalcolm at eff.org
Wed Apr 19 18:56:31 UTC 2017


*

Open questions 7 and 8 illustrate how the protections provided to
trademark holders through the TMCH have been applied too broadly by the
provider, opening the door for gaming and abuse by trademark holders,
and chilling of speech by affected third parties. This proposal also
bears on question 16 (Does the scope of the TMCH and the protections
mechanisms which flow from it reflect the appropriate balance between
the rights of trademark holders and the rights of non-trademark
registrants?).

It has been seen that the TMCH has facilitated trademark owners claiming
exclusive rights in domain names that they don’t exist in domestic
trademark law, such as words incorporated into design marks. Open
question 10, rather than addressing the potential for abuse, actually
suggests a measure that would allow even more non-trademarked terms to
be locked up by priority claimants.

As a measure to address these problems, we propose eliminating the
TMCH’s Sunrise Registration service altogether. Although we also have
concerns about its Trademark Claims service and will likely propose its
elimination separately at a later date, the Sunrise Registration service
is the most urgent to eliminate, because it creates an absolute bar to
third parties registering domains that a Sunrise registrant has already
claimed, whereas the Trademark Claims service results in a warning to
third parties but does not absolutely preclude them from registering.

We believe that the elimination of Sunrise Registrations would be the
simplest way to address the problems of gaming and abuse that have been
observed by working group members, not only in respect of design marks
and geographical words, but also the misuse of dubious trademarks over
common dictionary words such as “the”, “hotel”, “luxury”, “smart”,
“one”, “love”, and “flower” to lock up domains unrelated to the original
trademark.

If the Sunrise Registration system were widely used by trademark
holders, then it might be claimed that its elimination was
disproportionate—but as we have seen, this is not the case. There have
been only about 130 Sunrise Registrations per new domain.  Such a small
number of claims could be more simply and efficiently handled simply by
allowing those claimants to resort to curative mechanisms such as the
UDRP in the event that a third-party registrant beats them to
registering a domain over which they might have made a claim.

The benefits of the elimination of Sunrise Registrations would be:

  *

    An overall cost saving.

  *

    Streamlining of the public availability of domains in new registries.

  *

    Elimination of the potential for gaming and abuse by putative
    trademark holders who claim rights over domain names that do not
    correspond to their domestic trademark rights.

The costs would be:

  * Some trademark holders would be required to resort to curative
    proceedings if domain names over which they have a legitimate claim
    are registered by third parties.

*

-- 
Jeremy Malcolm
Senior Global Policy Analyst
Electronic Frontier Foundation
https://eff.org
jmalcolm at eff.org

Tel: 415.436.9333 ext 161

:: Defending Your Rights in the Digital World ::

Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt
PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122

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