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

Mon Aug 7 19:22:19 UTC 2017

I agree with Brian on this.

Mike Rodenbaugh
RODENBAUGH LAW
tel/fax:  +1.415.738.8087
http://rodenbaugh.com

On Mon, Aug 7, 2017 at 8:47 AM, Beckham, Brian <brian.beckham at wipo.int>
wrote:

> Hi Mary, all,
>
>
>
> Regarding the request for feedback on initial discussion of the Sunrise
> Preamble questions, I am not sure if this is what you were after, but my
> feedback is that the suggestion/question that there should be a presumption
> that a trademark owner should be required to show that it can win a UDRP to
> use the Sunrise process should be stricken.
>
>
>
> Not only does this idea neglect to account for trademark co-existence
> across classes and jurisdictions, but it fails to accommodate use of domain
> names corresponding to dictionary terms (i.e., Apple would not win a UDRP
> (or court case) if a domain name apple.whatever is used to extol the
> virtues of the fruit).  Put another way, this would all but eliminate
> Sunrises.
>
>
>
> Rather, I suggest we look at efficient ways to challenge any observed
> abuses of the TMCH and Sunrise.
>
>
>
> Finally, the suggestion that Sunrises may not be meeting their intended
> purpose due to low uptake statistically-speaking (also as to documented
> abuses) seems to widely miss the mark.  As J Scott and others pointed out
> on the call, the intended purpose is *to provide an opportunity* to get
> ahead of infringing registrations.  Whether that opportunity is taken up by
> a brand owner is an altogether separate question.
>
>
>
> Best regards,
>
>
>
> Brian
>
>
>
> *From:* gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces@
> icann.org] *On Behalf Of *Mary Wong
> *Sent:* Monday, August 07, 2017 5:13 PM
> *To:* gnso-rpm-wg at icann.org
> *Subject:* [gnso-rpm-wg] FOR REVIEW & DISCUSSION: Draft collated proposal
> for Sunrise-related data collection
>
>
>
> 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.
>
>
>
>    - 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
>    (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
>    <https://community.icann.org/x/vQchB> (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>
> *Date: *Friday, August 4, 2017 at 16:03
> *To: *Amr Elsadr <amr.elsadr at icann.org>, "gnso-rpm-wg at icann.org" <
> 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
>    <https://archive.icann.org/en/topics/new-gtlds/trademark-protection-claims-use-15apr11-en.pdf>.
>
>
>
>
> *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
>    <https://newgtlds.icann.org/en/about/trademark-clearinghouse/summary-iag-input-26sep12-en.pdf>
>
>
>
> *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
>    <http://www.trademark-clearinghouse.com/sites/default/files/files/downloads/TMCH%20guidelines%20v1.2_0.pdf>.)
>
>
>
>
>    - 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
>    <http://www.trademark-clearinghouse.com/sites/default/files/files/downloads/Proof%20of%20use-signed%20declaration%20TM%20Agent.pdf>).
>
>
>
>
> *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.
>
>
>
>    - 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/
>    <https://forum.icann.org/lists/comments-rpm-review-02feb15/>; 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
>    <https://www.icann.org/en/system/files/files/report-comments-rpm-review-29may15-en.pdf>.
>
>
>
>
> 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> on behalf of Amr Elsadr <
> amr.elsadr at icann.org>
> *Date: *Friday, August 4, 2017 at 13:40
> *To: *"gnso-rpm-wg at icann.org" <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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>
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