Subject: [gnso-rpm-wg] PROPOSAL: to amend the SDRP
From: "BECKHAM, Brian" <[email-masked]>
To: "[email-masked]" <[email-masked]>
Date: Mon, 17 Jul 2017 16:55:18 +0000

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<http://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 | E [email-masked]<mailto:[email-masked]> | www.wipo.int<http://www.wipo.int/>

Subject: Re: [gnso-rpm-wg] Inferences (was Re: Mp3, Attendance, AC recording & AC Chat Review of all Rights Protection Mechanisms (RPMs) PDP Working Group)
From: "BECKHAM, Brian" <[email-masked]>
To: Jon Nevett <[email-masked]>, "Nahitchevansky, Georges" <[email-masked]>
Cc: "[email-masked]" <[email-masked]>
Date: Fri, 14 Jul 2017 08:22:36 +0000

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: [email-masked] [mailto:[email-masked]] On Behalf Of Jon Nevett
Sent: Thursday, July 13, 2017 10:17 PM
To: Nahitchevansky, Georges
Cc: [email-masked]
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 <[email-masked]<mailto:[email-masked]>> 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:[email-masked]]
Sent: Thursday, July 13, 2017 10:25 AM
To: Nahitchevansky, Georges
Cc: Paul Keating; Kurt Pritz; [email-masked]<mailto:[email-masked]>
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 <[email-masked]<mailto:[email-masked]>> 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: [email-masked]<mailto:[email-masked]>[mailto:[email-masked]] On Behalf Of Paul Keating
Sent: Thursday, July 13, 2017 9:23 AM
To: Kurt Pritz
Cc: [email-masked]<mailto:[email-masked]>
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 <[email-masked]<mailto:[email-masked]>> 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
[email-masked]<mailto:[email-masked]>
+1.310.400.4184
Skype: kjpritz

On Jul 13, 2017, at 10:28 AM, Susan Payne <[email-masked]<mailto:[email-masked]>> 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: [email-masked]<mailto:[email-masked]>
D: +44 20 7421 8255
T: +44 20 7421 8299
M: +44 7971 661175

-----Original Message-----
From: [email-masked]<mailto:[email-masked]> [mailto:[email-masked]] On Behalf Of George Kirikos
Sent: 12 July 2017 21:30
To: [email-masked]<mailto:[email-masked]>
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
http://www.leap.com/

On Wed, Jul 12, 2017 at 4:10 PM, George Kirikos <[email-masked]<mailto:[email-masked]>> wrote:
> Hi folks,
>
> Just following up on some statements from today's transcript:
>
> On Wed, Jul 12, 2017 at 3:51 PM, Terri Agnew <[email-masked]<mailto:[email-masked]>> 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
> http://www.leap.com/
> _______________________________________________
> gnso-rpm-wg mailing list
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