[gnso-rpm-wg] PROPOSAL: to amend the SDRP

[Paul Tattersfield]

I think this a very good start Brian, I suggest we also:

Make Sunrise & Claims mandatory for all new gTLD launches

Extend proof of use to all TMCH entries

I think these 3 suggestions combined would deal very quickly and
effectively with most of the issues raised over the last few months.

Best regards,


Paul



On Mon, Jul 17, 2017 at 5:55 PM, Beckham, Brian <brian.beckham at wipo.int>
wrote:

> All,
>
>
>
> Trying bring the discussions about TMCH/Sunrise abuse together in a more
> practical way, I would like to offer the following:
>
>
>
> Using the Donuts SDRP (www.donuts.domains/about/policies/sunrise-and-dpml-
> dispute-resolution-policy) as an example, the relevant sections are:
>
>
>
> *Who can make a Complaint? *
>
> Any person can raise a complaint under [the SDRP]
>
>
>
> *Fees*
>
> The fees are GBP 250 for a single complaint relating to up to 5 domain
> names registered to the same registrant.
>
>
>
> *What you Need to Prove*
>
> To prevail in a Sunrise dispute under this Policy, a Complainant must
> prove by clear and convincing evidence that any of the following grounds
> apply:
>
> at the time the challenged domain name was registered, the registrant did
> not hold a trademark registration of national effect (or regional effect)
> or the trademark had not been court-validated or protected by statute or
> treaty;
>
> […]
>
> the Sunrise registrant does not meet the “in-use” standard;
>
>
>
> *Remedies*
>
> If the Panellist finds that the Complaint succeeds, Donuts in its
> discretion shall determine the most appropriate remedy for the parties
> consistent with the decision of the Panellist.
>
> The available remedies may include, but are not limited to: [i] revocation
> or cancellation of the disputed domain name(s) or DPML block without refund
> of any registration or related fees; or [ii] transfer of the disputed
> domain name(s) to the Complainant, provided that the Complainant agrees to
> the same terms as required for registration in the relevant TLD.
>
>
>
> In an email to this list last Friday (attached for reference), I noted
> that the LRO and UDRP in their respective ways, address the bona fides of
> trademark registrations.
>
>
>
> Perhaps adding some criteria along these lines to the existing SDRP
> challenge process (which already incorporates the “proof of use” concept)
> could address the concerns raised about TMCH/Sunrise gaming.
>
>
>
> Without re-opening debate about the incidence/instigators of such abuse, I
> am interested to hear your views on whether this could be a starting point
> for a forward-looking solution.
>
>
>
> Thanks, and best regards,
>
>
>
> Brian
>
>
>
> Brian Beckham | Head, Internet Dispute Resolution Section | WIPO
> Arbitration and Mediation Center
> 34 chemin des Colombettes, 1211 Geneva 20, Switzerland | T +4122 338 8247
> <+41%2022%20338%2082%2047> | E brian.beckham at wipo.int | www.wipo.int
>
>
>
>
> ---------- Forwarded message ----------
> From: "Beckham, Brian" <brian.beckham at wipo.int>
> To: Jon Nevett <jon at donuts.email>, "Nahitchevansky, Georges" <
> ghn at kilpatricktownsend.com>
> Cc: "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
> Bcc:
> Date: Fri, 14 Jul 2017 08:22:36 +0000
> Subject: Re: [gnso-rpm-wg] Inferences (was Re: Mp3, Attendance, AC
> recording & AC Chat Review of all Rights Protection Mechanisms (RPMs) PDP
> Working Group)
>
> Jon, Georges,
>
>
>
> There is some precedent for addressing this, namely in the LRO and UDRP
> context.  As has been pointed out many times on this list, including by
> Brian Winterfeldt in reaction to this string, there are challenge processes
> built into this TMCH/Sunrise system, and of course at national trademark
> offices.  Perhaps we might look at better integrating the below criteria
> into the former (TMCH challenges)?
>
>
>
> In section 3.5.2 of the AGB (http://newgtlds.icann.org/en/
> applicants/agb/objection-procedures-04jun12-en.pdf), several relevant
> criteria are as follows:
>
>
>
> (2) Whether the objector’s acquisition and use of rights in the mark has
> been bona fide.
>
>
>
> (5) Whether and to what extent the applicant has used, or has made
> demonstrable preparations to use, the sign corresponding to the gTLD in
> connection with a bona fide offering of goods or services or a bona fide
> provision of information in a way that does not interfere with the
> legitimate exercise by the objector of its mark rights.
>
>
>
> (6) Whether the applicant has marks or other intellectual property rights
> in the sign corresponding to the gTLD, and, if so, whether any acquisition
> of such a right in the sign, and use of the sign, has been bona  fide, and
> whether the purported or likely use of the gTLD by the applicant is
> consistent with such acquisition or use.
>
>
>
> (7) Whether and to what extent the applicant has been commonly known by
> the sign corresponding to the gTLD, and if so, whether any purported or
> likely use of the gTLD by the applicant is consistent therewith and bona
> fide.
>
>
>
> Similarly, at section 2.12 (http://www.wipo.int/amc/en/
> domains/search/overview3.0/#item212), the WIPO Overview 3.0 states:
>
>
>
> 2.12 Does a respondent trademark corresponding to a domain name
> automatically generate rights or legitimate interests?
>
>
>
> 2.12.1 Panels have recognized that a respondent’s prior registration of a
> trademark which corresponds to a domain name will ordinarily support a
> finding of rights or legitimate interests in that domain name for purposes
> of the second element.
>
>
>
> 2.12.2 The existence of a respondent trademark does not however
> automatically confer rights or legitimate interests on the respondent. For
> example, panels have generally declined to find respondent rights or
> legitimate interests in a domain name on the basis of a corresponding
> trademark registration where the overall circumstances demonstrate that
> such trademark was obtained primarily to circumvent the application of the
> UDRP or otherwise prevent the complainant’s exercise of its rights (even if
> only in a particular jurisdiction). Absent evidence of such circumstances
> indicating pretext however, panels have been reluctant to reject a
> respondent trademark registration out of hand.
>
>
>
> Hope that’s useful.
>
>
>
> Brian
>
>
>
> *From:* gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces@
> icann.org] *On Behalf Of *Jon Nevett
> *Sent:* Thursday, July 13, 2017 10:17 PM
> *To:* Nahitchevansky, Georges
> *Cc:* gnso-rpm-wg at icann.org
> *Subject:* Re: [gnso-rpm-wg] Inferences (was Re: Mp3, Attendance, AC
> recording & AC Chat Review of all Rights Protection Mechanisms (RPMs) PDP
> Working Group)
>
>
>
>
>
>
>
> Thanks Georges.  Unfortunately, the speculators you refer to are actual
> trademark holders with equal rights in the TMCH as Disney, Renault, BMW,
> etc. You are absolutely correct that we need to resolve the dichotomy
> between the two groups or leave it to the market to resolve.  Jon
>
>
>
> On Jul 13, 2017, at 3:33 PM, Nahitchevansky, Georges <
> ghn at kilpatricktownsend.com> wrote:
>
>
>
> Jon:  I am not denying anything.  What I object to is folks claiming
> widespread abuse by trademark owners with little to no evidence.   The only
> evidence has been about domainers and speculators going out to register
> some marks for pencils and the like and then using such to register a
> handful of domain names in the new gtlds.  Some want to lump genuine
> trademark owners with these speculators to basically try to gut both the
> Sunrise and claims notices protections.  If the only evidence is a guy who
> registered “the” to obtain some domains in the new gtlds based on “the” and
> a party that registered common word trademarks for pencils to obtain a
> handful of domain names, then I think it is apparent that any claimed abuse
> is by speculators not real bona fide trademark owners.  As an aside, I am
> somewhat surprised that some folks can’t seem to see the difference (or
> choose to ignore the difference) between a genuine trademark owner that
> offers real goods and services under a trademark as part of a business
> based on the brands and services (e.g. DISNEY, RENAULT, BMW, PEPSI, SAMSUNG
> etc.) versus someone who registers marks for pencils for the sole purpose
> of speculating in domain names.  So instead of embarking on a data witch
> hunt to try and find things to gut the system with, I do agree with you and
> others that we should work to try and address and fix the bumps we know of
> – such as the limited speculator problem that has surfaced.
>
>
>
> Georges
>
>
>
> *From:* Jon Nevett [mailto:jon at donuts.email <jon at donuts.email>]
> *Sent:* Thursday, July 13, 2017 10:25 AM
> *To:* Nahitchevansky, Georges
> *Cc:* Paul Keating; Kurt Pritz; gnso-rpm-wg at icann.org
> *Subject:* Re: [gnso-rpm-wg] Inferences (was Re: Mp3, Attendance, AC
> recording & AC Chat Review of all Rights Protection Mechanisms (RPMs) PDP
> Working Group)
>
>
>
> Georges:  Denying that there were abuses of the TMCH won't help either.
> There have been plenty presented to date (see below).  Let's try to solve
> the problems and not deny that they exist.  Obviously, there is some
> abandonment based on the notices -- let's work to minimize the rate of
> abandonment by legitimate registrants without unduly hurting the
> protections afforded to legitimate rights holders.  Jon
>
>
>
> https://www.thedomains.com/2017/02/01/the-trademark-
> clearinghouse-worked-so-well-one-company-got-24-new-gtld-
> using-the-famous-trademark-the/
>
>
>
> https://www.thedomains.com/2014/03/22/tmch-has-plenty-of-
> trademarks-of-generic-words/
>
>
>
>
>
> On Jul 13, 2017, at 9:37 AM, Nahitchevansky, Georges <
> ghn at kilpatricktownsend.com> wrote:
>
>
>
> I think the basis problem has been and remains that the basis for all this
> hunting around and data requests is an unfounded claim that there  is an
> abundance of “abusive and overreaching tmch registrations.” The evidence of
> such alleged widespread abuse has not been presented, because it doesn’t
> exist.  What all this sound and fury about data etc. reminds me of is
> Donald Trump claiming with basically no evidence that there was widespread
> voter fraud to explain why he do not get the majority of the popular vote
> in the US and then setting up a special commission to investigate the
> matter in the hope of cobbling together some sort of proof.  In the end
> it’s a waste of everybody’s time and money.
>
>
>
>
>
>
>
> *From:* gnso-rpm-wg-bounces at icann.org[mailto:gnso-rpm-wg-bounces at icann.org
> <gnso-rpm-wg-bounces at icann.org>] *On Behalf Of *Paul Keating
> *Sent:* Thursday, July 13, 2017 9:23 AM
> *To:* Kurt Pritz
> *Cc:* gnso-rpm-wg at icann.org
> *Subject:* Re: [gnso-rpm-wg] Inferences (was Re: Mp3, Attendance, AC
> recording & AC Chat Review of all Rights Protection Mechanisms (RPMs) PDP
> Working Group)
>
>
>
> Well i want to do a short review here.
>
>
>
> The issue.  Is the tmch function resulting in overkill - in other words is
> it overly protecting mark holders at the expense of the public.
>
>
>
> 1st many were asking for a list of marks registered with the tmch.  The
> point here was to understand what type of marks were actually being
> registered and under what conditions.
>
>
>
> This was met with loud objections by a few members who asserted
> confidentiality.   I seem to recall that the tmch agreement itself
> contradicted any assertion of confidentiality.  I suggested the list be
> made known without indication of registrant identification.  I also
> suggested the list be provided to a 3rd party under confidentiality so they
> could report to the group.  There was no vote or attempt to measure
> consensus.
>
>
>
> 2nd we then considered the post-notice abandonment rate.  This was a 2nd
> best data source trying to figure out the same original issue.
>
>
>
> Now it turns out that the data set was not stellar.  People are not
> asserting this should be abandoned.  This argument is being made by the
> same small group that objected to release of the marks registered with
> TMCH.
>
>
>
> Now the suggestion is to abandon any investigation into what is in TMCH or
> the statistical abandonment rate and instead look at the language of the
> notice itself.  This does not solve the problem.  It is simply unacceptable
> to allow abusive and overreaching tmch registrations just because the
> notice can be watered down or improved.
>
>
>
> The problem remains.  In order to measure the success or appropriateness
> of the TMCH (which this group is required to do) we must have access to the
> underlying data.
>
>
>
> I remain willing to work with people to provide reasonable protection for
> confidentiality.  I reiterate my suggestions that the data be anonymized or
> provided to a neutral expert to review, categorize and report on.
>
>
>
> If this is not acceptable, then the only alternative is for someone to
> essentially reverse engineer the list by trial and error.  This can
> certainly be done on an automated basis.  However, neither side would win
> by this.   It would be a silly waste of time and resources.  It would also
> result in publication of the results.  It seems neither side would want
> such a result.  I am sure we can find a compromise.
>
>
>
> Anyone  willing to work on this with me?
>
> Sent from my iPad
>
>
> On 13 Jul 2017, at 12:22, Kurt Pritz <kurt at kjpritz.com> wrote:
>
> I agree with Susan.
>
>
>
> I think the Analysis Group was at least negligent in their duties when
> they reported the 93% abandonment rate. It was misleading despite the
> disclaimers attached. Whenever any number is reported, it tends to gain
> traction and, as a result, we find ourselves struggling to attach some type
> of meaning to it. The Analysis report has led to false conclusions and a
> waste of time.
>
>
>
> We are best off never mentioning the number again. We should agree that we
> have no understanding, information or data on the issue of how abandonment
> rate was effected by claims notices.
>
>
>
> George has identified a couple ways to approximate the effect. If
> additional data gathering is undertaken along the lines that George or
> anyone else suggests, that work would be to get an understanding of
> abandonment rates and not to test the reported number by Analysis.
>
>
>
> Susan’s last and penultimate paragraphs below put it best. In addition to
> identifying data be collected in the next round, we could look at the
> language and display of the current notices to ensure that the notices are
> designed to achieve the goal of the claims notice program: to properly
> inform without intimidating.
>
>
>
> Kurt
>
> ________________
>
> Kurt Pritz
>
> kurt at kjpritz.com
>
> +1.310.400.4184 <(310)%20400-4184>
>
> Skype: kjpritz
>
>
>
>
>
>
>
>
>
>
>
> On Jul 13, 2017, at 10:28 AM, Susan Payne <susan.payne at valideus.com>
> wrote:
>
>
>
> Correct, the data for *two* registrars was excluded because of concerns
> about mining, but Analysis Group clearly were not confident that fully
> addressed the concern:
>
> Page 7:
>
> "However, due to limitations of the data (discussed in more detail below),
> our analyses of the data require an assumption that each download is
> associated with a registration attempt (and was not downloaded by a
> registrar for a purpose unrelated to domain name registrations). If this
> assumption is incorrect, then our results will exaggerate the size of any
> observable registration-deterrent Claims Service effect."
>
>
>
> Page 16:
>
> "These results should not be relied upon to make policy recommendations.
> We find that the vast majority of registration attempts are not completed
> after receiving a Claims Service notification (94% abandonment rate). This
> abandonment rate seems quite high, however there are several caveats to
> this result, which include our inability to determine the abandonment rate
> that would occur if no Claims Service notifications were sent and
> limitations of our data set, which require us to assume that every
> registrar download from the TMDB represents a registration attempt.54 We
> therefore cannot determine whether Claims Service notifications are the
> direct cause for the abandonment rate that we observe."
>
>
>
> I believe this is a fruitless exercise.  Analysis Group are meant to be
> professionals at this, were paid a tidy sum by ICANN to carry out this
> review, presumably had the benefit of being an independent third party
> which ought to have removed some of the confidentiality concerns that we
> have faced, and should have had the support of whatever ICANN contractual
> provisions there are requiring co-operation in economic studies.  They
> still produced a report which repeatedly cites the paucity of data, the
> resulting reliance on assumptions, and that their “results” were
> consequently inadequate and should not be relied upon to make policy.
>
>
>
> We are wasting our time with this.  What would not be a waste of time
> would be to identify the data that we wish we had and make recommendations
> such that any future review would not be similarly hampered.
>
>
>
> Susan Payne
>
> Head of Legal Policy | Valideus Ltd
>
>
>
> E: susan.payne at valideus.com
>
> D: +44 20 7421 8255 <+44%2020%207421%208255>
>
> T: +44 20 7421 8299 <+44%2020%207421%208299>
>
> M: +44 7971 661175 <+44%207971%20661175>
>
>
>
>
>
> -----Original Message-----
> From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org
> <gnso-rpm-wg-bounces at icann.org>] On Behalf Of George Kirikos
> Sent: 12 July 2017 21:30
> To: gnso-rpm-wg at icann.org
> Subject: Re: [gnso-rpm-wg] Inferences (was Re: Mp3, Attendance, AC
> recording & AC Chat Review of all Rights Protection Mechanisms (RPMs) PDP
> Working Group)
>
>
>
> Hi again,
>
>
>
> Just to followup on my prior email, The Analysis Group *already* adjusted
> the stats to attempt to take into account the "mining" theory that Jeff
> spoke about. i.e. the 93.7% abandonment figure that we've been talking
> about is a figure obtained *after* making the adjustments! Without the
> adjustment (which eliminated 62.2% of the observations), the abandonment
> rate would have been 99%! See:
>
>
>
> https://community.icann.org/download/attachments/64066042/
> Analysis%20Group%20Revised%20TMCH%20Report%20-%20March%
> 202017.pdf?version=1&modificationDate=1490349029000&api=v2
>
>
>
> (a) page 17 (footnote 55)
>
>
>
> ""As discussed in Section IV, there are two registrars that averaged
> downloads of more than 20 trademark strings per download, which is large
> compared to the average of fewer than five trademark strings in the
> downloads of other registrars. We also exclude downloads made by ICANN’s
> monitoring system. The exclusion of the two registrars does not
> significantly impact our results. Inclusion of the two registrars shows
> that 99% of registrations are abandoned and 0.5% of completed registrations
> are disputed."
>
>
>
> (b) page 18, note [2]
>
>
>
> "[2] A bulk download is defined as a download from the TMCH of multiple
> strings by the same registrar with exactly the same time stamp. Downloads
> by two registrars are excluded from this analysis because of a potentially
> high prevalence of bulk downloads (98.7% and 81.9% of downloads,
> respectively) by each of these two registrars. The average size of the
> “bulk downloads” by these two registrars (approximately 23 and 35 strings,
> respectively) is much larger than the average “bulk download” size of other
> registrars (other registrars in the Claims Service data download 5 strings
> or less on average).
>
> This exclusion results in an exclusion of 62.2% of the observations in the
> original Claims Service data received from IBM after excluding downloads by
> ICANN's monitoring system."
>
>
>
> Sincerely,
>
>
>
> George Kirikos
>
> 416-588-0269 <(416)%20588-0269>
>
> http://www.leap.com/
>
>
>
>
>
>
>
> On Wed, Jul 12, 2017 at 4:10 PM, George Kirikos <icann at leap.com> wrote:
>
> > Hi folks,
>
> >
>
> > Just following up on some statements from today's transcript:
>
> >
>
> > On Wed, Jul 12, 2017 at 3:51 PM, Terri Agnew <terri.agnew at icann.org>
> wrote:
>
> >> Adobe Connect chat transcript for 12 July 2017:
>
> > ...
>
> >>   Jeff Neuman:My belief is that we have a huge rate of people
>
> >> abandoning is because (i) registrars were mining the system, (ii)
>
> >> registrants were mining the system to see what was valuable, and to a
>
> >> lesser extent as a result of the claim (either legitimiate or not)
>
> >>
>
> >>   Jeff Neuman:But I cant prove any of those theories
>
> >>
>
> >>   Kathy Kleiman:@Jeff: we have gathered evidence already from
>
> >> registries; there is probably more
>
> >>
>
> >>   Jeff Neuman:There just is no way to do so on a backwards basis
>
> >
>
> > If one had access to the raw data (and presumably The Analysis Group
>
> > would have had it, to generate their reports), one could filter such
>
> > "mining" by examining abandonment rates by (1) registrar and (2) by
>
> > time relative to the launch date.
>
> >
>
> > i.e. presumably those were "mining" the system were not spreading out
>
> > their queries across all registrars equally. It would be easy to
>
> > identify the outliers. Furthermore, registrants would be also focused
>
> > on a few registrars that permit those bulk lookups, and they wouldn't
>
> > spread their queries over time equally --- they'd be focused at the
>
> > launch (i.e. the beginning, first few days, etc.) of a TLD.
>
> >
>
> > Of course, if need be, one could anonymize the data by registrar (i.e.
>
> > Registrar 1, Registrar 2, etc.), if there are any concerns about
>
> > revealing their individual abandonment rates.
>
> >
>
> > Registry operators and registrars both have technology to block WHOIS
>
> > access to those who are "mining" that data. One can use similar
>
> > detection techniques in this instance.
>
> >
>
> > Sincerely,
>
> >
>
> > George Kirikos
>
> > 416-588-0269 <(416)%20588-0269>
>
> > http://www.leap.com/
>
> > _______________________________________________
>
> > gnso-rpm-wg mailing list
>
> > gnso-rpm-wg at icann.org
>
> > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>
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