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

Tue Aug 8 15:14:06 UTC 2017

The reference to the udrp requires a subjective determination.  Who will undertake this judgment and under what guidelines.

I favor an abolition of the sunrise process for the following reasons:

1.  There is low uptake statistically

2.  There is too much room for abuse

       A.  Domainers who obtain fake trademarks
       B.  Trademarks of generic/descriptive terms.

3.   The assumption in favor of trademark rights is illogical and contrary to the initial constraints that the process not create greater rights than exist in the offline world.

4.   The notice provision has eliminated any perceived issue as to bad faith.  

5.   No solution exists that is not subjective in nature.

Respectfully,

Paul Keating

Sent from my iPad

> On 8 Aug 2017, at 16:28, Jonathan Frost <jonathan at get.club> wrote:
> 
> With respect to the language “Should there be an assumption that those who have access to Sunrise Registrations are also able to secure a UDRP ruling in their favor - would this be the case in a scenario like .HOTEL?”.   If such a requirement were to be incorporated, it would have to 1) solve (to some degree) the existing problem of Sunrise gaming, 2) not be so strict as to eliminate Sunrise registrations altogether, 3) not be utterly operational inefficient (i.e., it can’t require something like a declaratory UDRP judgment to resolve).
>  
> This said, I don’t think we should take the potential UDRP requirement off the table yet, but I think we should be clear that requiring a guaranteed UDRP win in all contexts would eliminate all non-fantastical marks from the Sunrise (and even some fantastical marks that have competing trademarks in different jurisdictions).    Thus, if we are certain we want arbitrary dictionary words to registerable in Sunrise, the UDRP Requirement would have to be formulated such that prevailing in UDRP would be foreseeable, even if not certain.
>  
> I think the devil is in the details, and as the problem of gaming is not yet solved, we should leave this solution open for discussion—because there might be some middle ground that solves the problem of gaming without over-burdening infrastructure.
>  
> Jonathan Frost
> General Counsel
> Telephone: (+1)877-707-5752
> 100 SE 3rd Avenue, #1310
> Fort Lauderdale, FL 33394
> E-Mail: jonathan at get.club
> Website: www.get.club
> 
> <image003.jpg>
>  
> Please be advised that this communication is confidential. The information contained in this e-mail, and any attachments, may also be attorney-client privileged and/or work product confidential.  If the reader of this message is not the intended recipient, you are hereby notified that any review, retransmission, dissemination or other use of, or taking of any action in reliance upon, this information by persons or entities other than the intended recipient is strictly prohibited.  If you have received this communication in error, please immediately notify Jonathan Frost by telephone at 877.707.5752 or by email at jonathan at get.club and delete the original message. 
>  
> From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Mike Rodenbaugh
> Sent: Monday, August 7, 2017 3:22 PM
> To: Beckham, Brian <brian.beckham at wipo.int>
> Cc: gnso-rpm-wg at icann.org
> Subject: Re: [gnso-rpm-wg] FOR REVIEW & DISCUSSION: Draft collated proposal for Sunrise-related data collection
>  
> 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 at 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 (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.
>  
> 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
>  
> 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.)
>  
> 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).
>  
> 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/; 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.  
>  
> 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]
>  
> 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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