[gnso-rpm-wg] [Renamed] Or or And

Sun Apr 9 14:57:09 UTC 2017

Thanks Kathy.

I think if we were going to ask the Board to undo their standing policy of
"and" we would need a good reason and I haven't seen any emerge on this
list.  The more we tinker with what is not broken, the more we risk not only
bringing Phase 1 to a halt, but having to reopen the issue of the separation
of Phase 2.  I don't think we could get buy-in from the consumer protection
community to go along with "or" in Phase 1 if there is any chance that the
UDRP will be weakened in Phase 2.  Hopefully, we can do what Phil suggested
in his recent posts and look to incremental improvements, rather than sea
changes.

Best,

Paul

From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org]
On Behalf Of Kathy Kleiman
Sent: Sunday, April 09, 2017 9:21 AM
To: gnso-rpm-wg at icann.org
Subject: [gnso-rpm-wg] [Renamed] Or or And

I think Jon raises an important point. The recommendations of the STI (as
adopted by the GNSO Council and the ICANN Board) were for the New gTLD
Registry to choose between a Sunrise Period OR the 90 day TM Claims Notice
-- "at registry discretion" (as Jon notes below).

Is this something we should make a note to review -- and accordingly pass on
as a question to the Sunrise Period and TM Claims Subgroups:  is the right
conjunction "or" or "and"?  Should we return to the policy of allowing
registries to choose Sunrise Period OR TM Claims for their roll-outs and
would that provide a more balanced set of protections?  Not a question to be
debated now, but one we might to queue up for the discussions ahead. 

(Cue the music for Conjunction Junction from Schoolhouse Rock for those from
that generation...)

Best, Kathy

On 4/6/2017 3:46 PM, Jon Nevett wrote:

Michael,  This is very helpful perspective. The 2012 round was supposed to
require either sunrise or claims at registry discretion.  Late in the
process, ICANN staff changed it to require both sunrise and claims.  Based
on your email and your IP perspective, is it fair to assume that sunrise is
the much more important RPM between the two?  Thanks.  Jon

On Apr 6, 2017, at 2:56 PM, Michael Graham (ELCA)
<mailto:migraham at expedia.com> <migraham at expedia.com> wrote:

>From my point of view as a) an IP attorney generally and b) in-house counsel
for Expedia, Inc., Sunrise is an essential part of the RPMs in order to
ensure that the New gTLD program will provide the benefits it was intended
to provide (Increasing Consumer Choice, Consumer Trust and Competition on
the Internet) without unduly burdening either individuals or entities, or
threatening any of their rights (be they privacy or intellectual property or
expression).  In regard to the use of Sunrise "preemption" by trademark
owners, as indicated in the TMCH study, it is being used in a more limited
manner than many presumed would be the case.  Contrary to George's fears,
for example, it seems clear from the study that Sunrise is not being used by
trademark owners to monopolize generic terms.  Nor is there any empirical
evidence that it has had any negative effect on non-trademark owner
registrants or applicants.

   As to points 1 and 2:

   1:  We have learned that there are sufficient numbers of either bad or
uninformed (i.e. do not take the time to search to determine whether a term
is a registered trademark) actors that we cannot rely on their declaration,
and

2: Despite the success of the UDRP, forcing trademark owners to rely on
UDRPs alone is a costly, time-consuming process that fails to satisfy the
New gTLD program's charter -- it does not further any of the goals of the
New gTLD system.

   In considering RPMs and the Application/Registration/DNS itself I think
we need to always step back to consider: who benefits from and who is
burdened by the various RPMs or their lack,  and what is the cost and
benefit to users/registrants/society.  I raise this because it seems to me
that personal profit motives have too often distorted and should not play as
large a role in policy decisions as other types of considerations should.

Michael R. Graham

MICHAEL R. GRAHAM
SENIOR CORPORATE COUNSEL
GLOBAL DIRECTOR, INTELLECTUAL PROPERTY
Expedia Legal & Corporate Affairs
T +1 425.679.4330 | F +1 425.679.7251
M +1 425.241.1459
Expedia, Inc.
333 108th Avenue NE | Bellevue | WA 98004
MiGraham at Expedia.com <mailto:MiGraham at Expedia.com> 

-----Original Message-----
From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org]
On Behalf Of George Kirikos
Sent: Thursday, April 06, 2017 11:21 AM
To: gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org> 
Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working
Group call held earlier today

Hi folks,

On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans  <mailto:jsevans at adobe.com>
<jsevans at adobe.com> wrote:

Let's all pause here. It seems that George and those in his "camp" believe
that (and feel free to correct me if I am wrong) that Sunrise is not
balanced (or "unfair") because it gives the owner of a trademark a
preemptive veto to us of the domain, even for non-infringing uses. If that
is the case, could we not require the registrars to have a policy for
allowing a third party with a legitimate use to get the string subject to
the Sunrise registration provided they make a case that their use is
non-infringing. Of course, any such process would require the third party to
agree that if the use became infringing that the owner of the original
Sunrise could take back the domain. If we could come up with this type
system (which I believe Donuts uses in its DPML system) wouldn't that get to
the root of the concern (that is, provided I have accurately articulated the
concern).

We don't have to "come up with this type of system" -- killing the Sunrise
period would achieve this *today*, because:

(1) The domain name registration agreement *already* mandates the above. See
Section 3.7.7.9 of:

https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en

"3.7.7.9 The Registered Name Holder shall represent that, to the best of the
Registered Name Holder's knowledge and belief, neither the registration of
the Registered Name nor the manner in which it is directly or indirectly
used infringes the legal rights of any third party."

unless you're suggesting that each prospective registrant needs to provide
more than that representation to "make a case" (in your words). Fees for
domain name registrations would have to go up considerably, and registrars
would need a process to vet who is "worthy" and who is illegitimate, and
presumably a challenge/appeal mechanism for that vetting too?

and,

(2) As for "Of course, any such process would require the third party to
agree that if the use became infringing that the owner of the original
Sunrise could take back the domain" --- we already have something called the
UDRP for that, or the courts, which every registrant agrees to as well, so
that any TM owner (TMCH recordal or
not) can challenge alleged misuse of a domain name.

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/
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