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

Paul Keating Paul at law.es
Fri Apr 21 12:17:46 UTC 2017 

Ok than ks

From:  Mary Wong <mary.wong at icann.org>
Date:  Friday, April 21, 2017 at 1:56 PM
To:  Paul Keating <paul at law.es>
Cc:  Greg Shatan <gregshatanipc at gmail.com>, "gnso-rpm-wg at icann.org"
<gnso-rpm-wg at icann.org>
Subject:  Re: [Ext] Re: [gnso-rpm-wg] Proposal for the elimination of
Sunrise Period

> Hello and sorry for the confusion; what I'd meant to say was that we had asked
> for proposals that addressed the specific open questions about the TMCH
> (questions 7, 8, 10). Since Jeremy's seemed more general and directly
> addressed sunrise, staff has referred the question (of whether WG
> consideration of that proposal should be deferred or if it should be referred
> to the sunrise sub team etc) to the cochairs for their views.
> 
> Cheers
> Mary 
> 
> Sent from a mobile phone, sorry for any errors and brevity.
> 
> On Apr 21, 2017, at 07:18, Paul Keating <Paul at law.es> wrote:
> 
>> Mary,
>> 
>> I was also confused.  Does this mean that the issue is being deferred along
>> with the other relevant questions to which it relates?
>> 
>> Paul
>> 
>> From: <gnso-rpm-wg-bounces at icann.org> on behalf of Greg Shatan
>> <gregshatanipc at gmail.com>
>> Date: Thursday, April 20, 2017 at 9:36 PM
>> To: Mary Wong <mary.wong at icann.org>
>> Cc: "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
>> Subject: Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period
>> 
>>> Mary,
>>> 
>>> Thanks.  I'm not sure what that means, but I'll wait to see what the
>>> co-chairs say.
>>> 
>>> Greg
>>> 
>>> Greg Shatan
>>> C: 917-816-6428
>>> S: gsshatan
>>> Phone-to-Skype: 646-845-9428
>>> gregshatanipc at gmail.com <mailto:gregshatanipc at gmail.com>
>>> 
>>> 
>>> On Thu, Apr 20, 2017 at 3:32 PM, Mary Wong <mary.wong at icann.org> wrote:
>>>> Hello Greg and everyone,
>>>>  
>>>> As the call for proposals was intended to solicit recommendations that
>>>> address the open questions on the TMCH structure and scope (Questions 7, 8
>>>> and 10) the potential overlap with a Sunrise discussion has been noted for
>>>> the co-chairs.
>>>>  
>>>> Cheers
>>>> Mary
>>>>  
>>>> 
>>>> From: <gnso-rpm-wg-bounces at icann.org> on behalf of Greg Shatan
>>>> <gregshatanipc at gmail.com>
>>>> Date: Thursday, April 20, 2017 at 11:47
>>>> To: "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
>>>> Subject: Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period
>>>> 
>>>>  
>>>> 
>>>> 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 Group¹s
>>>> 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 <tel:(917)%20816-6428>
>>>> S: gsshatan
>>>> Phone-to-Skype: 646-845-9428 <tel:(646)%20845-9428>
>>>> gregshatanipc at gmail.com <mailto: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[abcd.com]
>>>>> <https://urldefense.proofpoint.com/v2/url?u=http-3A__abcd.com&d=DwMFaQ&c=F
>>>>> mY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7
>>>>> xb5cjS_7sB4h6Y&m=bCDwHJ9c8HvqajRo0dYWXiOWLHf3FIlX18-Gs2yoXSs&s=6ocrizQJyAn
>>>>> lqR6w17-s11PdAffAdImS8XajwYvbLws&e=> >, as compared with,
>>>>> <thewebsitetoprotestunfairsunriseregistrations.com[thewebsitetoprotestunfa
>>>>> irsunriseregistrations.com]
>>>>> <https://urldefense.proofpoint.com/v2/url?u=http-3A__thewebsitetoprotestun
>>>>> fairsunriseregistrations.com&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms
>>>>> 7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=bCDwHJ9c8HvqajRo
>>>>> 0dYWXiOWLHf3FIlX18-Gs2yoXSs&s=_YXnlVWLLlaGShyk-9Vap70ls6nxkoWeedplm5mX_u0&
>>>>> e=> >.
>>>>> 
>>>>>  
>>>>> John
>>>>>  
>>>>> 
>>>>> From:gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at 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 Scott¹s 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 ³cost savings² 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]
>>>>> 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:
>>>>>> 
>>>>>> I¹m 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 Œmight want to do in the future¹ 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 don¹t 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 TMCH¹s
>>>>>> 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 ³the², ³hotel², ³luxury², ³smart², ³one²,
>>>>>> ³love², and ³flower² 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.prot
>>>>>> ection.outlook.com_-3Furl-3Dhttps-253A-252F-252Feff.org-26data-3D02-257C0
>>>>>> 1-257C-257C0e18d5b07aea47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c17
>>>>>> 8decee1-257C0-257C0-257C636282416004172724-26sdata-3DLCpvg6fU-252FXkpw1fm
>>>>>> AH8KzPJDWABttoqafNYeotxdCiQ-253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDO
>>>>>> xOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1V
>>>>>> Ak&m=0BR4m_4UuTrbwX27PjR5nOwWB8isVOX2a3mrks6Ng-0&s=k7ODBCCErf9pQH25bKUJ1_
>>>>>> 8D4_De4J9UwNPdpJ5tedY&e=>
>>>>>> jmalcolm at eff.org
>>>>>>  
>>>>>> Tel: 415.436.9333 ext 161 <tel:(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.prot
>>>>>> ection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fwww.eff.org-252Ffiles-252
>>>>>> F2016-252F11-252F27-252Fkey-5Fjmalcolm.txt-26data-3D02-257C01-257C-257C0e
>>>>>> 18d5b07aea47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c178decee1-257C0
>>>>>> -257C0-257C636282416004172724-26sdata-3DL5mf1H52yrjTzEUH1k0ZD7QleNH6oCdZh
>>>>>> T3B7-252FDCW1Y-253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWov
>>>>>> pzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=0BR4m_4U
>>>>>> uTrbwX27PjR5nOwWB8isVOX2a3mrks6Ng-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.prot
>>>>>> ection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fmm.icann.org-252Fmailman-
>>>>>> 252Flistinfo-252Fgnso-2Drpm-2Dwg-26data-3D02-257C01-257C-257C0e18d5b07aea
>>>>>> 47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257
>>>>>> C636282416004182733-26sdata-3DfZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8
>>>>>> -253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zb
>>>>>> P0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=0BR4m_4UuTrbwX27PjR5nO
>>>>>> wWB8isVOX2a3mrks6Ng-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%7C0e18d5b07aea479
>>>>>> 43d4408d4877c75c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C6362824160
>>>>>> 04182733&sdata=fZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8%3D&reserved=0
>>>>>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.prot
>>>>>> ection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fmm.icann.org-252Fmailman-
>>>>>> 252Flistinfo-252Fgnso-2Drpm-2Dwg-26data-3D02-257C01-257C-257C0e18d5b07aea
>>>>>> 47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257
>>>>>> C636282416004182733-26sdata-3DfZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8
>>>>>> -253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zb
>>>>>> P0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=0BR4m_4UuTrbwX27PjR5nO
>>>>>> wWB8isVOX2a3mrks6Ng-0&s=cIC2UBz3o_1bZxjHjx4pIGYYg6_R_EpFRKaEmSapeMs&e=>
>>>>> World IP Day 2017 ­ Join the conversation
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>>>>> <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_ipday&d=
>>>>> DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu
>>>>> 2x6c2w3xl7xb5cjS_7sB4h6Y&m=bCDwHJ9c8HvqajRo0dYWXiOWLHf3FIlX18-Gs2yoXSs&s=g
>>>>> oTDC3l34asayd6QjeoxHh0Dij5vgTNzEIKNE26XnqE&e=>
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