[gnso-rpm-wg] [Ext] from Registries: Re: FOR REVIEW & DISCUSSION: Draft collated proposal for Sunrise-related data collection

Mary Wong mary.wong at icann.org
Mon Aug 7 18:10:21 UTC 2017 

Hello Brian, Maxim and everyone – thanks so much, all the feedback is much appreciated. Staff will compile input that comes in into a single document for ease of review, so please continue to provide feedback as requested by J. Scott in his email!

Cheers
Mary

From: Maxim Alzoba <m.alzoba at gmail.com>
Date: Monday, August 7, 2017 at 11:50
To: Mary Wong <mary.wong at icann.org>
Cc: "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>, Jeff Neuman <jeff.neuman at valideus.com>, "J. Scott Evans" <jsevans at adobe.com>
Subject: [Ext] from Registries: Re: [gnso-rpm-wg] FOR REVIEW & DISCUSSION: Draft collated proposal for Sunrise-related data collection

Hello Mary,

please find some of the Registry answers on the Question received via RySG mail list
 (not all registries reps. were able to answer, and not all registries are in RySG,
and some of Registries might have decided not to share(usual for situations which are in process and have not finished yet)) :


The answer was:
TCMH: Have abuses of the Sunrise Period been documented by Registries and Registrars?

with the additional note of " (not formal violation of rules, but more about
'stretching the rules' during Sunrises), which could be shared with RPM PDP".

Shared Examples

1. .rio

"
In the .rio sunrise we had some abuse attempts that were deflect by policy and one "grey" case that went through.
- One electronics manufacturer asked its registrar to register airport.rio. We advised the registrar it wouldn't go through and they refrained from trying. Same registrant asked some other terms to be released from reserved name list, got some approved and some denied.
- One shoe maker asked for ipanema.rio (famous beach in Rio) and for melissa.rio (a common women's name), and they actually went through with the registrations. ipanema.rio was declined (and they lost their money, which was 10x GA reg fee) but melissa.rio was approved.
"

2. .bank & . insurance (attached PDF is relevant to the case -  the letter fTLD sent to ICANN on 26 October 2015 about the issue noted.
"
An issue fTLD experienced with .BANK was a registrant who registered a trademark in a country that has very lenient approval rules and then using it as the basis to register a generic term as a domain name. One of the requirements fTLD has always believed should be part of ICANN's rules and thus an element of the TMCH's validation/verification process, is proof of use or bona fide use of the trademark in the jurisdiction where the trademark was granted.

As a result of this situation in .BANK, fTLD modified its Name Selection Policy for .INSURANCE prior to its launch to include: Domain names must: (a) correspond to a trademark, trade name or service mark of the Applicant in bona fide use for the offering of goods or services, or provision of information, in the jurisdiction where the Applicant is licensed, approved or certified to conduct business.
"
The respondent did have an issue with a Sunrise registration.


3. .xn--80adxhks (IDN for .moscow)
"
In our case it was small company selling drills, who obtained TM equal to Russian equivalent of 'we', got into TMCH
and registered мы.москва (like we.moscow but in Russian) during the Sunrise.
"
In this case , the "we" TM was not use as TM for selling drills or good prior to TMCH implementation.

===

(more in-depth info could be requested, if we find it reasonable to do so).



P.s: I asked J. Scott Evans as one of the Co-Chairs and the group about the deadline, but unfortunately nobody sent me any info,
so I am sending answers of few Registries now.

P.P.s: Please be aware that since we did not send
letter to RySG/RrSG and that the time given for answers to the  question was unrealistically short
, for this time of year - we can not say that Registries and Registrars do not have more items of this nature.


On Aug 7, 2017, at 18:12, Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>> wrote:

Dear all,

For the Working Group call this Wednesday, please find attached a draft proposal for a possible approach and suggested methodologies toward collecting the requested data for the Sunrise RPM. As you review the draft document in preparation for the upcoming call, please note the following:


  *   The Working Group co-chairs have not had a chance to review the draft fully; as such, the document is a staff draft that reflects what we believe may be a practicable approach in each case (including possibly combining several suggestions). Where applicable, we have also added some comments (in the second and third columns) that include questions for either the co-chairs’ or the Working Group’s decisions.


  *   The document includes in full all the data collection suggestions that were submitted to the Working Group.


  *   We have begun preparing a similar collated document for Trademark Claims, and have also started looking at currently available sources (e.g. ICANN’s New gTLD Startup Page) to see what staff can begin to put together for this effort.

Please also note the following outstanding action items from the past few Working Group calls:


  *   Requested as due by today: Working Group feedback on initial discussion of the Sunrise Preamble questions (from the call last week) – transcript, recording, notes and the updated Sunrise document are available at https://community.icann.org/x/vQchB[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_vQchB&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=6W7Ri4cOwTp1jb8GfQS8-EuJgvKBnq_6ht19cZs-tww&s=ejoGKjBUE_ssBrGTl1H79P-FsHy9Tghq0F0y0UxBjc0&e=>.


  *   Feedback requested: the current set of Trademark Claims Charter questions, as refined by the Working Group – please see the document dated 20 July on this wiki page: https://community.icann.org/x/c3vwAw[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_c3vwAw&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=6W7Ri4cOwTp1jb8GfQS8-EuJgvKBnq_6ht19cZs-tww&s=zfDJeAdez9XQD2-SrKQUUjHsyIyjfP1TqK5jTfHWEf4&e=> (unless directed otherwise, staff will keep this document open for another week for comments).


  *   Feedback requested: an updated set of Sunrise Charter questions, as refined by the Working Group and consequently updated by staff and the Sunrise Sub Team – please see the document dated 27 July on this wiki page: https://community.icann.org/x/vQchB[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_vQchB&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=6W7Ri4cOwTp1jb8GfQS8-EuJgvKBnq_6ht19cZs-tww&s=ejoGKjBUE_ssBrGTl1H79P-FsHy9Tghq0F0y0UxBjc0&e=> (unless directed otherwise, staff will keep this document open for another week for comments).

Thanks and cheers
Mary

From: Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>>
Date: Friday, August 4, 2017 at 16:03
To: Amr Elsadr <amr.elsadr at icann.org<mailto:amr.elsadr at icann.org>>, "gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>" <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
Subject: FOLLOW UP on Action Items - GNSO Review of all RPMs in all gTLDs PDP WG Call - 3 August 2017

Dear all,

This message follows up on the first Action Item noted by Amr (below), i.e. staff to circulate documentation on the “proof of use” requirement. We hope the following links and notes, provided in chronological order of their publication, are helpful.

April 2011: Explanatory Memorandum from ICANN noting the introduction of the “proof of use” requirement in Version 6 of the Applicant Guidebook (AGB)

  *   This clarifies that the introduction of this element was a result of Board consideration of GAC advice that all trademarks from all jurisdictions should be treated equally; see Pages 4-7 of the Memorandum: https://archive.icann.org/en/topics/new-gtlds/trademark-protection-claims-use-15apr11-en.pdf[archive.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org_en_topics_new-2Dgtlds_trademark-2Dprotection-2Dclaims-2Duse-2D15apr11-2Den.pdf&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=6W7Ri4cOwTp1jb8GfQS8-EuJgvKBnq_6ht19cZs-tww&s=8204FeSdF-Zv_AQcnn3qKSe6RQSSOIvAbTrbZ-zBmSg&e=>.

October 2011-September 2012: Discussions within the Implementation Advisory Group (IAG)

  *   The IAG discussed methods of implementing the “proof of use” requirement, framed by the following business requirements and elements:

“(1) Protect the existing legal rights of registered mark holders
(2) Limit creation of new requirements affecting trademark holders
(3) Ensure financial and operational feasibility
(4) Avoid imposing a role for the clearinghouse that is inconsistent with the role agreed upon by the community
(5) Establish a standard that is globally accessible
(6) Avoid unfair prejudice in favor of or against any particular TM holder
A single standard should be applicable across all jurisdictions, to avoid confusion and to provide service to users across the globe.  A process that minimizes subjective reviews by the Clearinghouse will serve this goal and will also help to minimize the costs for Clearinghouse users.”


  *   Note that Pages 31-35 of the Summary of IAG Input document includes additional comments by individual IAG members that may be helpful to our Working Group’s review of this topic: https://newgtlds.icann.org/en/about/trademark-clearinghouse/summary-iag-input-26sep12-en.pdf[newgtlds.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__newgtlds.icann.org_en_about_trademark-2Dclearinghouse_summary-2Diag-2Dinput-2D26sep12-2Den.pdf&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=6W7Ri4cOwTp1jb8GfQS8-EuJgvKBnq_6ht19cZs-tww&s=q-X6sz7Vf1It4KU_flUyiUdnGhvBkI2TIGfmWmHG8rM&e=>

November 2013: TMCH Guidelines updated by Deloitte

  *   In addition to setting out examples of acceptable evidence of use, the Guidelines state that TMCH verification of samples submitted by a TM holder is to ensure that “the sample submitted is a sample that evidences an effort on behalf of the trademark holder to communicate to a consumer so that the consumer can distinguish the product or services of one from those of another” (see Pages 32-33 of the TMCH Guidelines: http://www.trademark-clearinghouse.com/sites/default/files/files/downloads/TMCH%20guidelines%20v1.2_0.pdf[trademark-clearinghouse.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearinghouse.com_sites_default_files_files_downloads_TMCH-2520guidelines-2520v1.2-5F0.pdf&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=6W7Ri4cOwTp1jb8GfQS8-EuJgvKBnq_6ht19cZs-tww&s=Bb9PaUUs_rhHRRQ_jml0zTQXEe2-GUsQstuGffTmuB4&e=>.)


  *   Note that if a TM agent is used to submit marks to the TMCH, the TM holder has to sign a declaration for proof of use, which provides in part that the information is “to the best of [the TM holder’s] knowledge, complete and accurate, that the trademarks set forth in this submission are currently in use in the manner set forth in the accompanying specimen, in connection with the class of goods or services specified when this submission was made” (see http://www.trademark-clearinghouse.com/sites/default/files/files/downloads/Proof%20of%20use-signed%20declaration%20TM%20Agent.pdf[trademark-clearinghouse.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearinghouse.com_sites_default_files_files_downloads_Proof-2520of-2520use-2Dsigned-2520declaration-2520TM-2520Agent.pdf&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=6W7Ri4cOwTp1jb8GfQS8-EuJgvKBnq_6ht19cZs-tww&s=dlDNnLeGlgGsDHwGImKGykwbtIPVqVk9LJOEQwokKhY&e=>).

September 2015: Staff Paper on RPMs, reviewing data and community input to inform the GNSO Issue Report preceding this PDP

  *   The paper clarifies that the “proof of use” requirement is “intended to ensure that only holders of marks that demonstrate “use” are given the exclusionary right of Sunrise eligibility, in order to prevent abuses and provide equal treatment to all rights holders. This requirement is intended to benefit trademark holders in that it helps a trademark holder that has truly used its mark to identify and distinguish its products or services from others.” Pages 42 and 52 of the Paper contain a brief summary of the community input relating to how this requirement has been implemented by the TMCH: http://newgtlds.icann.org/en/reviews/rpm/rpm-review-11sep15-en.pdf[newgtlds.icann.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__newgtlds.icann.org_en_reviews_rpm_rpm-2Dreview-2D11sep15-2Den.pdf&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=6W7Ri4cOwTp1jb8GfQS8-EuJgvKBnq_6ht19cZs-tww&s=AIws3rXzUMquA81G-xYCoBoW_ERES7Kx9wLCIZ03Ue4&e=>.


  *   The full text of all public comments received on the draft version of the Staff Paper can be retrieved here: https://forum.icann.org/lists/comments-rpm-review-02feb15/[forum.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forum.icann.org_lists_comments-2Drpm-2Dreview-2D02feb15_&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=6W7Ri4cOwTp1jb8GfQS8-EuJgvKBnq_6ht19cZs-tww&s=JgSHz9iItGjNZ-wDeOQ3kBGoo9rLoswlgBFVPprRQxI&e=>; those comments relevant to “proof of use” were summarized on Pages 7-10 of the Staff Summary of Public Comments:https://www.icann.org/en/system/files/files/report-comments-rpm-review-29may15-en.pdf[icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_en_system_files_files_report-2Dcomments-2Drpm-2Dreview-2D29may15-2Den.pdf&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=6W7Ri4cOwTp1jb8GfQS8-EuJgvKBnq_6ht19cZs-tww&s=_11bCmpVNNTyDUYH1HxsvXzBMHPKn0QyUmsV1bZvUPM&e=>.

If we may, staff would like also to take this opportunity to remind those members who have not had a chance to review the relevant historical documentation to try to do so, in particular the 2015 Staff RPM Paper linked above, as the questions and community input may be helpful in providing additional background to our Working Group’s review of each individual RPM from the 2012 New gTLD Program round.

Thanks and cheers
Mary

From: <gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org>> on behalf of Amr Elsadr <amr.elsadr at icann.org<mailto:amr.elsadr at icann.org>>
Date: Friday, August 4, 2017 at 13:40
To: "gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>" <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
Subject: [gnso-rpm-wg] Action Items - GNSO Review of all RPMs in all gTLDs PDP WG Call - 3 August 2017

Dear Working Group Members,

Below are the action items from the WG call on 3 August 2017. The action items, notes, meeting document, recording and transcripts have been posted to the meeting’s wiki page here: https://community.icann.org/x/vQchB[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_vQchB&d=DwMGaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=ntqjQHg5GhkKtNKIyp8vjAMncANDEG058VjnIGYnNAY&s=uzlXUpo4O2Ntdl-vRCqKNDwPB-n8cgxhZZwZs8kSoow&e=>

Thanks.

Amr


Action Items:

1.      Staff to circulate existing documentation on proof-of-use required for eligibility to participate in Sunrise Registration including documentation made available by the TMCH, in addition to comments offered by the community on the extent to which the current practice by the TMCH is, or is not consistent with the intended proof-of-use standards (presented in the staff paper reviewing the RPMs in preparation for this PDP)
2.      Staff to request WG members’ feedback on the mailing list, regarding the Preamble questions about whether abuses of Sunrise registration periods have been documented by different stakeholders – WG members to submit feedback by 7 August COB

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