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

Thu Apr 20 15:47:52 UTC 2017

Co-chairs, all:

Before responding to the substance, isn't this a premature submission?

First, it seemed clear that we were asked to submit proposals regarding the
Trademark Clearinghouse itself -- not RPMs such as Sunrise, Claims, etc.

Second, it seemed clear that the proposals should be specific to the four
TMCH questions still open: 7 (TMCH handling of design marks), 8 (TMCH
handling of geographical indications, protected designations/appellations
of origin), 10 (retaining, modifying or expanding TMCH matching rules) and
15 (confidentiality/privacy of TMCH Database). All other TMCH questions "either
been deferred for further review following the Working Group’s discussion
of Sunrise and Claims Notifications, or agreed as not requiring further
discussion at this time."

I see that the proposal comes from someone who just joined the group as a
member, so perhaps they were simply ignorant of the requirements.  However,
it's my understanding that when you join a WG midstream, you need to get
familiar with the WG's prior work and you can't reopen a prior WG decision
unless you have significant new information.  I appreciate the "passionate
intensity" that causes one to "rush in."*   But I think we have enough on
our hands in dealing with the proposals that are on-topic.

Also, didn't we just set up 3 subgroups for the next module of WG work --
including one to deal with Sunrise (the subject of this submission)?  The
subgroups' work is just beginning, while we wrap up our TMCH module. Discussing
Sunrise here and now in the full WG seems to thwart our work plan.

As such, it seems that consideration of this submission needs to be
deferred until the Sunrise Subgroup reports back to the WG, referred to
that subgroup, withdrawn, or rejected.

If the co-chairs decide to move forward in the full WG now, I think they
have to do the following as well:

   - Keep the proposal submission window open for another 2-3 weeks, so
   that other WG members can submit proposals on other Phase One topics aside
   from the TMCH -- Sunrise, Claims, URS, and other proposed/potential RPMs
   (i.e., everything but UDRP).
   - Suspend the work of the Subgroups so that we are not working on two
   tracks.
   - Suspend discussion of this proposal until other Sunrise proposals are
   received, so they can be discussed together.

If the co-chairs decide to move forward on this, I'll respond on substance.
But I'll hold off for now, since I don't want to clog the email list with
off-topic submissions.  However, if the discussion just moves forward, I'll
have to jump in so I don't miss the chance to contribute to the discussion.

Expectantly,

Greg

* Note that the works of W.B. Yeats and Alexander Pope are in the public
domain....

*Greg Shatan *C: 917-816-6428
S: gsshatan
Phone-to-Skype: 646-845-9428
gregshatanipc at gmail.com

On Thu, Apr 20, 2017 at 9:55 AM, John McElwaine <
john.mcelwaine at nelsonmullins.com> wrote:

> In addition, I believe it is overstating the issue to assume that all
> domain names are protected speech.  As an initial matter, U.S. courts
> appear to be split on this issue, and furthermore, one needs to look at the
> domain name to make this determination. For instance, there is a big
> difference in the expressive nature of <abcd.com>, as compared with, <
> thewebsitetoprotestunfairsunriseregistrations.com>.
>
>
>
> John
>
>
>
> *From:* gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces@
> icann.org] *On Behalf Of *Beckham, Brian
> *Sent:* Thursday, April 20, 2017 6:39 AM
> *To:* J. Scott Evans <jsevans at adobe.com>; Paul Tattersfield <
> gpmgroup at gmail.com>; gnso-rpm-wg at icann.org
>
> *Subject:* Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise
> Period
>
>
>
> To add support to J Scott’s comment:
>
>
>
> When a trademark owner pays a premium to defensively register a domain
> name exactly matching its trademark in a Sunrise process this *does not*
> prevent free expression; *it does however* protect consumers by
> preventing potential misrepresentation under that particular string.
>
>
>
> In weighing the respective costs and benefits, it is difficult to see how
> the current system whereby one domain name is removed from circulation to
> prevent consumer harm / trademark abuse should be eliminated because it
> *may* prevent speech from that one particular outlet in a universe of
> virtually countless other available outlets.
>
>
>
> In any event, Jeremy, this group would no doubt find any examples you may
> be aware of, of actual speech chilling (particularly speech that could not
> be undertaken elsewhere) because of a Sunrise registration, quite useful.
>
>
>
> Finally, the claimed “cost savings” formula below is far too simplistic;
> the harm that can occur e.g., through one domain name-occasioned phishing
> campaign alone (in the time it takes to apply the cure) could upend that
> entire equation many times over.
>
>
>
> Brian
>
>
>
> *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 *J. Scott Evans
> via gnso-rpm-wg
> *Sent:* Thursday, April 20, 2017 1:51 AM
> *To:* Paul Tattersfield
> *Cc:* gnso-rpm-wg at icann.org
> *Subject:* Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise
> Period
>
>
>
> We keep hearing all these outlandish claims of the poor folks cheated out
> of an opportunity to express themselves or start a new business, but no
> real proof. I hear all the same arguments I have heard since 2009 and from
> the same groups with no proof. I also see no new voices claiming any of
> this alleged harm. What I see is a group of stakeholders with an anti-IP
> agenda making the same old arguments hoping to trim back consensus
> solutions where compromises based on these arguments have already been made.
>
>
>
> J. Scott
>
> Sent from my iPhone
>
>
> On Apr 19, 2017, at 4:33 PM, Paul Tattersfield <gpmgroup at gmail.com> wrote:
>
> I’m not sure I agree. The Claims Notices are likely to have a far bigger
> impact on people not registering domains especially those who are not
> professional registrants and have not seen a claims notice before.
>
>
>
> No Claims Notices should be issued without a substantive review of the
> underlying goods and services.
>
> The idea that anyone can buy a piece of paper without any real goods or
> services to protect and can then use that piece of paper to discourage
> others from building real world businesses simply because some
> jurisdictions give out those pieces of paper out like confetti under the
> pretext of ideas they ‘might want to do in the future’ should be deeply
> frowned upon by anyone participating in ICANN.
>
> Paul
>
>
>
> On Wed, Apr 19, 2017 at 7:56 PM, Jeremy Malcolm <jmalcolm at eff.org> wrote:
>
> 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 <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Feff.org-26data-3D02-257C01-257C-257C0e18d5b07aea47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636282416004172724-26sdata-3DLCpvg6fU-252FXkpw1fmAH8KzPJDWABttoqafNYeotxdCiQ-253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=0BR4m_4UuTrbwX27PjR5nOwWB8isVOX2a3mrks6Ng-0&s=k7ODBCCErf9pQH25bKUJ1_8D4_De4J9UwNPdpJ5tedY&e=>
>
> jmalcolm at eff.org
>
>
>
> Tel: 415.436.9333 ext 161 <(415)%20436-9333>
>
>
>
> :: Defending Your Rights in the Digital World ::
>
>
>
> Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fwww.eff.org-252Ffiles-252F2016-252F11-252F27-252Fkey-5Fjmalcolm.txt-26data-3D02-257C01-257C-257C0e18d5b07aea47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636282416004172724-26sdata-3DL5mf1H52yrjTzEUH1k0ZD7QleNH6oCdZhT3B7-252FDCW1Y-253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=0BR4m_4UuTrbwX27PjR5nOwWB8isVOX2a3mrks6Ng-0&s=NJwl9YsuYqiLEMKMhSYy7fxrJOl1OckjOHw-cFVpg-I&e=>
>
> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122
>
>
> _______________________________________________
> gnso-rpm-wg mailing list
> gnso-rpm-wg at icann.org
> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
> <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fmm.icann.org-252Fmailman-252Flistinfo-252Fgnso-2Drpm-2Dwg-26data-3D02-257C01-257C-257C0e18d5b07aea47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636282416004182733-26sdata-3DfZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8-253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=0BR4m_4UuTrbwX27PjR5nOwWB8isVOX2a3mrks6Ng-0&s=cIC2UBz3o_1bZxjHjx4pIGYYg6_R_EpFRKaEmSapeMs&e=>
>
>
>
> _______________________________________________
> gnso-rpm-wg mailing list
> gnso-rpm-wg at icann.org
> https://na01.safelinks.protection.outlook.com/?url=
> https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-
> rpm-wg&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%
> 7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004182733&sdata=
> fZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8%3D&reserved=0
> <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fmm.icann.org-252Fmailman-252Flistinfo-252Fgnso-2Drpm-2Dwg-26data-3D02-257C01-257C-257C0e18d5b07aea47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636282416004182733-26sdata-3DfZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8-253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=0BR4m_4UuTrbwX27PjR5nOwWB8isVOX2a3mrks6Ng-0&s=cIC2UBz3o_1bZxjHjx4pIGYYg6_R_EpFRKaEmSapeMs&e=>
>
> World IP Day 2017 – Join the conversation
>
> Web: www.wipo.int/ipday
>
> Facebook: www.facebook.com/worldipday
>
>
>
> World Intellectual Property Organization Disclaimer: This electronic
> message may contain privileged, confidential and copyright protected
> information. If you have received this e-mail by mistake, please
> immediately notify the sender and delete this e-mail and all its
> attachments. Please ensure all e-mail attachments are scanned for viruses
> prior to opening or using.
>
> Confidentiality Notice
>
> This message is intended exclusively for the individual or entity to which
> it is addressed. This communication may contain information that is
> proprietary, privileged, confidential or otherwise legally exempt from
> disclosure.
>
> If you are not the named addressee, you are not authorized to read, print,
> retain, copy or disseminate this message or any part of it. If you have
> received this message in error, please notify the sender immediately either
> by phone (800-237-2000 <(800)%20237-2000>) or reply to this e-mail and
> delete all copies of this message.
>
> _______________________________________________
> gnso-rpm-wg mailing list
> gnso-rpm-wg at icann.org
> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20170420/0dc9ccff/attachment-0001.html>