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

Nahitchevansky, Georges ghn at kilpatricktownsend.com
Fri Apr 21 11:27:52 UTC 2017


Paul:

The underlying problem I see with your approach is that it presumes that brand owners are somehow monopolizing words across all possible extensions. That is simply not the case and there has been little to no evidence to support this notion. In that regard, it should also be noted that what limited evidence has been provided that involved a bona fide brand owner only showed that a brand owner registered a domain name in some extensions (typically in those  that relate to the business under the brand), but left many other extensions open. This means there are vast numbers of extensions where domains do not get registered. So it is hard to see how free speech is somehow impacted, when many extensions remain and where variants are clearly available.

As an aside, I note that if free speech is really the concern here then, if anything, premium pricing is more of an impediment to free speech as it skews the marketplace by favoring those with more money to spend.

In addition, your approach also ignores  that there are many brands that consist of arbitrary or coined terms that would not necessarily implicate any so called free speech concerns . But more importantly, what I think is being ignored here is the balance of costs. As you note, a UDRP can cost $5,000 or more. It does not take much to figure out that the cost to brand owners, who have real and quantifiable amounts of brand abuse history in the domain name system, will be staggering in a world of 1500 extensions. A simple math calculation shows that the overall costs to brand owners (and ultimately consumers) could be in the hundreds of millions. In comparison, the loss to claimed free speech is fairly small, as there is no evidence of any overarching land grab of common word domains by brand owners, there is no evidence that free speech has been impacted or curtailed in any meaningful way by the existing system, and there are obvious ways (some of which have been proposed)  to deal with the small amounts of gaming that have occurred primarily by speculators.  ‎So simply looking at this fom a balanving perspective, I think that maintaining the system as is with small tweeks is a better approach.



  Original Message
From: Paul Keating‎
Sent: Friday, April 21, 2017 6:39 AM‎
To: Michael Graham (ELCA); icannlists; Beckham, Brian
Cc: gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period


Brian,

I.      Free Speech.

I completely disagree with your statement that:

"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.²

Your position imposes a qualitative aspect to speech and presumes that
because you see other avenues available that must mean that speech is not
impinged.  It also ignores that the protection extends to not only w hat
is said but HOW it is said.

The correct analysis is the following:

1.      Is speech curtailed in any manner
2.      If yes then assess
                A,      The reason for the restriction;
                B,.     The identity of WHO is regulating the speech; and,
                C.      The availability of lesser intrusive means of achieving the reason
(goal) while minimizing restrictions of speech.

Restricting speech for commercial reasons is subject to a very high
standard. I see no basis, for example, to application of the private
property/shopping center type cases.

Speech comes in all flavors and one must not qualitatively influence the
analysis simply because you agree or disagree with what is being said and
HOW it is being said.


II.     Balancing the costs.

Also, the removal is not limited to ONE domain.  It is extended to all
sunrise extensions so at last could could involve over 1,500 instances.

There is good reason to explore alternatives that focus on curative rights
and not right by prescription.  For example,

        Retain the UDRP approach
        Inclusion of the mark within the TMCH is conclusive evidence as to the
1st Element
        The notification process would eliminate the issue of knowledge
        The cost of a UDRP complaint is less than $5,000, including attorney time
and the 3-member panel fees;
        The vast majority of all UDRPs are defaults

III.    Less Intrusive Methods.

Further, I would like to see the impact of the TMCH notice process in
terms of the number of notices sent and the number of domain registrations
subsequently gently abandoned following notice.  If a significant
abandonment rate exists it would show a lesser intrusive means of
accomplishing the result instead of simply awarding a monopoly on domain
names to trademark holders.

Regards,

Paul

On 4/21/17, 9:56 AM, "Michael Graham (ELCA)"
<gnso-rpm-wg-bounces at icann.org on behalf of migraham at expedia.com> wrote:

>+1
>
>-----Original Message-----
>From: gnso-rpm-wg-bounces at icann.org
>[mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of icannlists
>Sent: Thursday, April 20, 2017 4:46 AM
>To: Beckham, Brian <brian.beckham at wipo.int>
>Cc: gnso-rpm-wg at icann.org
>Subject: Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period
>
>Agree Brian and J Scott!
>
>Sent from my iPhone
>
>On Apr 20, 2017, at 5:40 AM, Beckham, Brian
><brian.beckham at wipo.int<mailto:brian.beckham at wipo.int>> wrote:
>
>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 at icann.org>
>[mailto: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<mailto: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<mailto: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<mailto: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
>
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