Interesting, thanks for sharing. I checked whether Mini made motorcycles before I sent my proposal in... I didn't think to check whether they made regular bicycles! By any chance, were you able to find any examples of the company branching into the tattoo business as well (http://mini.tattoo)? I'm not sure if this presents a "nuance" in trademark classes. I don't think it's much of a revelation that "bikes" can refer to motorcycles or regular bicycles. All this represents is a product line I was unaware of. And under my proposal, all Mini would have to do would be to include the link you provided when they register the domain under sunrise, and that should be that. Personally, I don't see how the SDRP challenge process could be retooled to turn it into something that adequately represents the interests of potential future registrants without injecting massive amounts of transparency into the sunrise and TMCH processes... but I would be interested to hear your thoughts as to how this might work. On Thu, May 9, 2019 at 12:38 PM BECKHAM, Brian <brian.beckham@wipo.int> wrote:

Thanks Ariel,

Copying here, my full email to the Sunrise List from earlier today as it relates to proposal No. 13:

--

Thanks Julie,

Just for fun (as I am aware the example was merely anecdotal), further to our hypothesizing last night, indeed, MINI does have a range of folding bikes:

https://www.bmwblog.com/2018/02/28/new-mini-folding-bike/

This does however illustrate in some ways the nuance in trademark classes and TLD typology that may escape proposal No. 13 in its current form.

As I mentioned on our call, I believe there is a shared willingness to address the issue Michael has raised, but via the SDRP challenge process, and not via claims exclusions.

Brian

--

Brian

*From:* Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org> *On Behalf Of *Ariel Liang *Sent:* Thursday, May 9, 2019 5:36 PM *To:* gnso-rpm-sunrise@icann.org *Subject:* [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Dear Sunrise Sub Team members,

As announced, this thread is being opened for final mailing list discussions related to *Sunrise Agreed Charter Question** 9*, including *Proposal #13*.

We ask that you review the *Summary Table* *(as of 16 April 2019) *and provide any additional input you may have to the “*proposed answers & preliminary recommendations*” in relation to the Agreed Charter Question, and consider *draft answers *to the following questions regarding the individual proposal:

a. Should the Sub Team recommend that the full WG consider including this Individual Proposal in the Initial Report for the solicitation of public comment?

b. In light of the Individual Proposal, are any modifications to the current “tentative answers & preliminary recommendations” needed?

c. Should any additional Sub Team recommendations be made in relation to the agreed Sunrise charter question?

Unless the Sub Team Co-Chairs determine otherwise, this discussion thread will remain open until *23:59 UTC on **22 May 2019*. Comments/input provided past the closing date or outside this discussion thread will not be taken into account when compiling the final Sub Team member input.

*Summary Table (Pages 36-40)*

The draft answers, preliminary recommendations, and links to the relevant individual proposals are in the latest Summary Table (as of 16 April 2019):

https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ....

*Agreed Sunrise Charter Question **9** (Page** 36)*

The Sub Team just discussed Agreed Charter Question 9 on 08 May 2019, hence the proposed answers are “TBD”. Based on the Sub Team’s discussions, the transcript and notes, staff will provide update.

* Q**9 In light of the evidence gathered above, should the scope of Sunrise Registrations be limited to the categories of goods and services for which? *

*Proposed Answer**: *TBD

*Individual Proposal*

The Sub Team just discussed the Proposal #13 on 08 May 2019, hence there is no draft answer currently on the Summary Table (as of 16 April 2019). Based on the Sub Team’s discussions, the transcript and notes, staff will provide.

Link to the individual proposal is included below.

*Proposal #**13*: https://community.icann.org/download/attachments/102146375/Proposal%2313.pdf...

*Where to Find All Discussion Threads*

Access the Documents wiki page and find the opening messages of the all discussion threads in the table (highlighted in green): https://community.icann.org/x/_oIWBg

Best Regards,

Mary, Julie, Ariel

World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using. _______________________________________________ Gnso-rpm-sunrise mailing list Gnso-rpm-sunrise@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-sunrise

Michael, Agreeing with Brian, and just adding some further context below to the extent helpful. I think the main issue with this discussion is that the use of a generic top-level domain is not limited to the semantic meaning or implication of the string (unless the Registry decides to restrict its registration policy to a certain community, industry, geographic region, etc.). This is the primary reason why there is no constituted ‘expansion of trademark rights’ when the trademark owner registers a trademark-corresponding domain name in the gTLD, whether during Sunrise or General Availability, because the use of the gTLD is not restricted to certain goods/services, and is open to various interpretations and forms of use. The fact that the gTLD is open for any form of use that may be unrelated to the semantic meaning of the string is the main reason why it’s helpful for trademark owners to maintain the option to apply for a registration during Sunrise, even when for the sake of argument, the gTLD does not appear directly correlated to the industry, product, class of goods, of the trademark owner. In other words, cybersquatters register third-party trademarks in those types of gTLDs for a several reasons, such as: (1) trademark owners have limited budgets and are usually forced to protect their trademark in gTLDs where there is a direct or indirect connotation or semantic relationship between the gTLD and the organization’s brand (and/or several other factors which makes the gTLD a target for registration abuse); (2) this leaves the remaining gTLDs more of an open target for cybersquatting the brand. As a result, this type of approach to defensive registrations leaves cybersquatters with two main options: (1) register typographical variations of the trademark, or add additional terms to the trademark, in gTLDs where there is a indirect or direct relationship between the semantic meaning of the gTLD and the trademark; 2) register the trademark (and permutations) as a domain name in a different gTLD where the trademark owner did not register their trademark as a domain during Sunrise. So we see a combination of both of practices in new gTLDs, at either the same or a higher rate of cybersquatting compared to legacy domains. This makes Sunrise a needed option for the purposes mitigating against registration abuse and to help protect consumers from the harms that follow from these illegal schemes. With that said, of course this doesn’t mean that brand owners are going to utilize the Sunrise RPM across the board. In practice, because of limited budgets and the expense/costs of the registrations, I believe the average number of Sunrise registrations in new gTLDs is between 100 and 200 registrations per registry. This leaves the vast majority of possible permutations of domains available for good faith registration by third parties (or by cybersquatters). But in some cases, the brand owner will register in a specific new gTLD (where the semantic meaning doesn’t appear directly related at first glance), but the trademark owner is aware of other factors or reasons - for example, the fame of the mark, or previous cases of registration abuse when they have been targeted in a certain manner - to justify the expense of registering the domain name defensively in that specific gTLD. Yes, when you add up the totals for a specific company, it can come to a very large imposed expense, but since the defensive registrations are spread out across so many different registries, in any particular gTLD you will only see a limited number of Sunrise registrations. I hope the combination of these various factors makes the issue of lesser concern from your perspective . Also, importantly as Brian noted, there have been expressions of interest within the Subteam to review the SDRP policy to see if we can make incremental improvements, while maintaining the balance of interests. I am happy to work with you and others on this effort going forward. Best regards, Claudio On Thursday, May 9, 2019, BECKHAM, Brian <brian.beckham@wipo.int> wrote:

Michael,

I would personally prefer not to get into a Google search race for some kind of “exceptions to prove the rule” and also because “tattoos” is not a class of marks <https://trademark.eu/list-of-classes-with-explanatory-notes/>, but these articles could be of interest in terms of explaining why they may seek such a defensive sunrise registration:

https://www.pinterest.ch/steelephotograp/mini-cooper-tattoos/

https://metro.co.uk/2011/01/25/andreas-muller-has-mini- tattooed-on-penis-to-win-car-632961/

Also, while MINI may not make motorcycles, their sister company BMW does, so they could well branch out into that product area (including related services).

I have already suggested improvements to the SDRP on several occasions, going back almost 2 years now (those were apparently parked in preference of various data seeking exercises), so would respectfully suggest that others take the baton from here.

As I said, I believe there is a genuine willingness to explore such solutions.

At the same time, it seems unlikely that the current proposal No. 13 is likely to garner consensus, and will defer to the Sub Team Co-Chairs to address that at the level of our present discussions.

Brian

*From:* Michael Karanicolas <mkaranicolas@gmail.com> *Sent:* Thursday, May 9, 2019 5:50 PM *To:* BECKHAM, Brian <brian.beckham@wipo.int> *Cc:* Ariel Liang <ariel.liang@icann.org>; gnso-rpm-sunrise@icann.org *Subject:* Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Interesting, thanks for sharing. I checked whether Mini made motorcycles before I sent my proposal in... I didn't think to check whether they made regular bicycles!

By any chance, were you able to find any examples of the company branching into the tattoo business as well (http://mini.tattoo)?

I'm not sure if this presents a "nuance" in trademark classes. I don't think it's much of a revelation that "bikes" can refer to motorcycles or regular bicycles. All this represents is a product line I was unaware of. And under my proposal, all Mini would have to do would be to include the link you provided when they register the domain under sunrise, and that should be that.

Personally, I don't see how the SDRP challenge process could be retooled to turn it into something that adequately represents the interests of potential future registrants without injecting massive amounts of transparency into the sunrise and TMCH processes... but I would be interested to hear your thoughts as to how this might work.

On Thu, May 9, 2019 at 12:38 PM BECKHAM, Brian <brian.beckham@wipo.int> wrote:

Thanks Ariel,

Copying here, my full email to the Sunrise List from earlier today as it relates to proposal No. 13:

--

Thanks Julie,

Just for fun (as I am aware the example was merely anecdotal), further to our hypothesizing last night, indeed, MINI does have a range of folding bikes:

https://www.bmwblog.com/2018/02/28/new-mini-folding-bike/

This does however illustrate in some ways the nuance in trademark classes and TLD typology that may escape proposal No. 13 in its current form.

As I mentioned on our call, I believe there is a shared willingness to address the issue Michael has raised, but via the SDRP challenge process, and not via claims exclusions.

Brian

--

Brian

*From:* Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org> *On Behalf Of *Ariel Liang *Sent:* Thursday, May 9, 2019 5:36 PM *To:* gnso-rpm-sunrise@icann.org *Subject:* [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Dear Sunrise Sub Team members,

As announced, this thread is being opened for final mailing list discussions related to *Sunrise Agreed Charter Question** 9*, including *Proposal #13*.

We ask that you review the *Summary Table* *(as of 16 April 2019) *and provide any additional input you may have to the “*proposed answers & preliminary recommendations*” in relation to the Agreed Charter Question, and consider *draft answers *to the following questions regarding the individual proposal:

a. Should the Sub Team recommend that the full WG consider including this Individual Proposal in the Initial Report for the solicitation of public comment?

b. In light of the Individual Proposal, are any modifications to the current “tentative answers & preliminary recommendations” needed?

c. Should any additional Sub Team recommendations be made in relation to the agreed Sunrise charter question?

Unless the Sub Team Co-Chairs determine otherwise, this discussion thread will remain open until *23:59 UTC on **22 May 2019*. Comments/input provided past the closing date or outside this discussion thread will not be taken into account when compiling the final Sub Team member input.

*Summary Table (Pages 36-40)*

The draft answers, preliminary recommendations, and links to the relevant individual proposals are in the latest Summary Table (as of 16 April 2019):

https://community.icann.org/download/attachments/102138618/%5BSunrise% 20Summary%20Table%5D%20%2816%20April%202019%29.pdf?version= 1&modificationDate=1555515624235&api=v2.

*Agreed Sunrise Charter Question **9** (Page** 36)*

The Sub Team just discussed Agreed Charter Question 9 on 08 May 2019, hence the proposed answers are “TBD”. Based on the Sub Team’s discussions, the transcript and notes, staff will provide update.

* Q**9 In light of the evidence gathered above, should the scope of Sunrise Registrations be limited to the categories of goods and services for which? *

*Proposed Answer**: *TBD

*Individual Proposal*

The Sub Team just discussed the Proposal #13 on 08 May 2019, hence there is no draft answer currently on the Summary Table (as of 16 April 2019). Based on the Sub Team’s discussions, the transcript and notes, staff will provide.

Link to the individual proposal is included below.

*Proposal #**13*: https://community.icann.org/download/attachments/ 102146375/Proposal%2313.pdf?api=v2

*Where to Find All Discussion Threads*

Access the Documents wiki page and find the opening messages of the all discussion threads in the table (highlighted in green): https://community.icann.org/x/_oIWBg

Best Regards,

Mary, Julie, Ariel

World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.

_______________________________________________ Gnso-rpm-sunrise mailing list Gnso-rpm-sunrise@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-sunrise

Just chiming in here: Q9 In light of the evidence gathered above, should the scope of Sunrise Registrations be limited to the categories of goods and services for which? As an initial mater, I do not believe that there was any evidence that Sunrise Registration should be limited to a particular category. With respect to the concept, in general, I do not believe that the concept of limiting Sunrise Registration to a category of goods and services is workable. What “categories” are we trying to correlate? New gTLD are/were not required to list a category to which they apply, some had purposes that lend themselves to this analysis, such as .BANK, but what “category” would you attribute to .XYX, .GURU, .CLUB, .WEB. Moreover, trademark owners did not register their trademarks in the TMCH with this concept in mind. Therefore, there could be huge gaps and this new concept could cost trademark owners thousands of dollars to register all of there marks when only one would suffice in the past. Lastly, an exact correlation between a trademark registration and a TLD is not always going to be clear. How will registrars make that determination? Thanks, John From: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org> On Behalf Of Kathy Kleiman Sent: Wednesday, May 15, 2019 9:12 AM To: gnso-rpm-sunrise@icann.org Subject: Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 ◄External Email► - From: gnso-rpm-sunrise-bounces@icann.org<mailto:gnso-rpm-sunrise-bounces@icann.org> Claudio, I think you have just brilliantly made the case for why Michael's proposal does not hurt trademark owners, but does harm the "gamers" who are using their trademark registrations for "the" and other common, ordinary words to misuse the Sunrise Period. Best, Kathy On 5/9/2019 1:42 PM, claudio di gangi wrote: Michael, Agreeing with Brian, and just adding some further context below to the extent helpful. I think the main issue with this discussion is that the use of a generic top-level domain is not limited to the semantic meaning or implication of the string (unless the Registry decides to restrict its registration policy to a certain community, industry, geographic region, etc.). This is the primary reason why there is no constituted ‘expansion of trademark rights’ when the trademark owner registers a trademark-corresponding domain name in the gTLD, whether during Sunrise or General Availability, because the use of the gTLD is not restricted to certain goods/services, and is open to various interpretations and forms of use. The fact that the gTLD is open for any form of use that may be unrelated to the semantic meaning of the string is the main reason why it’s helpful for trademark owners to maintain the option to apply for a registration during Sunrise, even when for the sake of argument, the gTLD does not appear directly correlated to the industry, product, class of goods, of the trademark owner. In other words, cybersquatters register third-party trademarks in those types of gTLDs for a several reasons, such as: (1) trademark owners have limited budgets and are usually forced to protect their trademark in gTLDs where there is a direct or indirect connotation or semantic relationship between the gTLD and the organization’s brand (and/or several other factors which makes the gTLD a target for registration abuse); (2) this leaves the remaining gTLDs more of an open target for cybersquatting the brand. As a result, this type of approach to defensive registrations leaves cybersquatters with two main options: (1) register typographical variations of the trademark, or add additional terms to the trademark, in gTLDs where there is a indirect or direct relationship between the semantic meaning of the gTLD and the trademark; 2) register the trademark (and permutations) as a domain name in a different gTLD where the trademark owner did not register their trademark as a domain during Sunrise. So we see a combination of both of practices in new gTLDs, at either the same or a higher rate of cybersquatting compared to legacy domains. This makes Sunrise a needed option for the purposes mitigating against registration abuse and to help protect consumers from the harms that follow from these illegal schemes. With that said, of course this doesn’t mean that brand owners are going to utilize the Sunrise RPM across the board. In practice, because of limited budgets and the expense/costs of the registrations, I believe the average number of Sunrise registrations in new gTLDs is between 100 and 200 registrations per registry. This leaves the vast majority of possible permutations of domains available for good faith registration by third parties (or by cybersquatters). But in some cases, the brand owner will register in a specific new gTLD (where the semantic meaning doesn’t appear directly related at first glance), but the trademark owner is aware of other factors or reasons - for example, the fame of the mark, or previous cases of registration abuse when they have been targeted in a certain manner - to justify the expense of registering the domain name defensively in that specific gTLD. Yes, when you add up the totals for a specific company, it can come to a very large imposed expense, but since the defensive registrations are spread out across so many different registries, in any particular gTLD you will only see a limited number of Sunrise registrations. I hope the combination of these various factors makes the issue of lesser concern from your perspective . Also, importantly as Brian noted, there have been expressions of interest within the Subteam to review the SDRP policy to see if we can make incremental improvements, while maintaining the balance of interests. I am happy to work with you and others on this effort going forward. Best regards, Claudio On Thursday, May 9, 2019, BECKHAM, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Michael, I would personally prefer not to get into a Google search race for some kind of “exceptions to prove the rule” and also because “tattoos” is not a class of marks<https://urldefense.proofpoint.com/v2/url?u=https-3A__trademark.eu_list-2Dof-...>, but these articles could be of interest in terms of explaining why they may seek such a defensive sunrise registration: https://www.pinterest.ch/steelephotograp/mini-cooper-tattoos/<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.pinterest.ch_steelephotograp_mini-2Dcooper-2Dtattoos_&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=gSuWWUEWDxSYsvZJni-czNV73i8NXazPZkmQIfpK7Cs&s=uHebujKmbqlS2uqItLfzU3TNimQ7pyuBwUH5oc2Ozx0&e=> https://metro.co.uk/2011/01/25/andreas-muller-has-mini-tattooed-on-penis-to-win-car-632961/<https://urldefense.proofpoint.com/v2/url?u=https-3A__metro.co.uk_2011_01_25_andreas-2Dmuller-2Dhas-2Dmini-2Dtattooed-2Don-2Dpenis-2Dto-2Dwin-2Dcar-2D632961_&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=gSuWWUEWDxSYsvZJni-czNV73i8NXazPZkmQIfpK7Cs&s=pbpsDzKQbCJVjxKhFg4pB0Ff7MjZmUC8i8gybNNbC7c&e=> Also, while MINI may not make motorcycles, their sister company BMW does, so they could well branch out into that product area (including related services). I have already suggested improvements to the SDRP on several occasions, going back almost 2 years now (those were apparently parked in preference of various data seeking exercises), so would respectfully suggest that others take the baton from here. As I said, I believe there is a genuine willingness to explore such solutions. At the same time, it seems unlikely that the current proposal No. 13 is likely to garner consensus, and will defer to the Sub Team Co-Chairs to address that at the level of our present discussions. Brian From: Michael Karanicolas <mkaranicolas@gmail.com<mailto:mkaranicolas@gmail.com>> Sent: Thursday, May 9, 2019 5:50 PM To: BECKHAM, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> Cc: Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>; gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Interesting, thanks for sharing. I checked whether Mini made motorcycles before I sent my proposal in... I didn't think to check whether they made regular bicycles! By any chance, were you able to find any examples of the company branching into the tattoo business as well (http://mini.tattoo<https://urldefense.proofpoint.com/v2/url?u=http-3A__mini.tattoo&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=gSuWWUEWDxSYsvZJni-czNV73i8NXazPZkmQIfpK7Cs&s=hz_dbl1xW8RVKq76eGzyTRSvMHldbUVm99dT05gNB0w&e=>)? I'm not sure if this presents a "nuance" in trademark classes. I don't think it's much of a revelation that "bikes" can refer to motorcycles or regular bicycles. All this represents is a product line I was unaware of. And under my proposal, all Mini would have to do would be to include the link you provided when they register the domain under sunrise, and that should be that. Personally, I don't see how the SDRP challenge process could be retooled to turn it into something that adequately represents the interests of potential future registrants without injecting massive amounts of transparency into the sunrise and TMCH processes... but I would be interested to hear your thoughts as to how this might work. On Thu, May 9, 2019 at 12:38 PM BECKHAM, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Thanks Ariel, Copying here, my full email to the Sunrise List from earlier today as it relates to proposal No. 13: -- Thanks Julie, Just for fun (as I am aware the example was merely anecdotal), further to our hypothesizing last night, indeed, MINI does have a range of folding bikes: https://www.bmwblog.com/2018/02/28/new-mini-folding-bike/<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.bmwblog.com_2018_02_28_new-2Dmini-2Dfolding-2Dbike_&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=gSuWWUEWDxSYsvZJni-czNV73i8NXazPZkmQIfpK7Cs&s=-DQKbN4h_dSO8fhDzuHea5uMdkZ4N96oc5TogI1gY8Y&e=> This does however illustrate in some ways the nuance in trademark classes and TLD typology that may escape proposal No. 13 in its current form. As I mentioned on our call, I believe there is a shared willingness to address the issue Michael has raised, but via the SDRP challenge process, and not via claims exclusions. Brian -- Brian From: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org<mailto:gnso-rpm-sunrise-bounces@icann.org>> On Behalf Of Ariel Liang Sent: Thursday, May 9, 2019 5:36 PM To: gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Dear Sunrise Sub Team members, As announced, this thread is being opened for final mailing list discussions related to Sunrise Agreed Charter Question 9, including Proposal #13. We ask that you review the Summary Table (as of 16 April 2019) and provide any additional input you may have to the “proposed answers & preliminary recommendations” in relation to the Agreed Charter Question, and consider draft answers to the following questions regarding the individual proposal: a. Should the Sub Team recommend that the full WG consider including this Individual Proposal in the Initial Report for the solicitation of public comment? b. In light of the Individual Proposal, are any modifications to the current “tentative answers & preliminary recommendations” needed? c. Should any additional Sub Team recommendations be made in relation to the agreed Sunrise charter question? Unless the Sub Team Co-Chairs determine otherwise, this discussion thread will remain open until 23:59 UTC on 22 May 2019. Comments/input provided past the closing date or outside this discussion thread will not be taken into account when compiling the final Sub Team member input. Summary Table (Pages 36-40) The draft answers, preliminary recommendations, and links to the relevant individual proposals are in the latest Summary Table (as of 16 April 2019): https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summary%20Table%5D%20%2816%20April%202019%29.pdf?version=1&modificationDate=1555515624235&api=v2<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_download_attachments_102138618_-255BSunrise-2520Summary-2520Table-255D-2520-252816-2520April-25202019-2529.pdf-3Fversion-3D1-26modificationDate-3D1555515624235-26api-3Dv2&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=gSuWWUEWDxSYsvZJni-czNV73i8NXazPZkmQIfpK7Cs&s=viVsn6p-SByaxe1zDntvWmW8nbZ7ZH54EovjHDKQnKo&e=>. Agreed Sunrise Charter Question 9 (Page 36) The Sub Team just discussed Agreed Charter Question 9 on 08 May 2019, hence the proposed answers are “TBD”. Based on the Sub Team’s discussions, the transcript and notes, staff will provide update. Q9 In light of the evidence gathered above, should the scope of Sunrise Registrations be limited to the categories of goods and services for which? Proposed Answer: TBD Individual Proposal The Sub Team just discussed the Proposal #13 on 08 May 2019, hence there is no draft answer currently on the Summary Table (as of 16 April 2019). Based on the Sub Team’s discussions, the transcript and notes, staff will provide. Link to the individual proposal is included below. Proposal #13: https://community.icann.org/download/attachments/102146375/Proposal%2313.pdf?api=v2<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_download_attachments_102146375_Proposal-252313.pdf-3Fapi-3Dv2&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=gSuWWUEWDxSYsvZJni-czNV73i8NXazPZkmQIfpK7Cs&s=bd_BnRfHGFUSEli5ixdGBdH5cX4wB0bPw3MpUzoFZu4&e=> Where to Find All Discussion Threads Access the Documents wiki page and find the opening messages of the all discussion threads in the table (highlighted in green): https://community.icann.org/x/_oIWBg<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_-5FoIWBg&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=gSuWWUEWDxSYsvZJni-czNV73i8NXazPZkmQIfpK7Cs&s=8ExWmYjOv_49RQqOzCs8IP1TEsIlaTuMOUMrJ10Wi6U&e=> Best Regards, Mary, Julie, Ariel World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. 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Michael, My comments are not aimed at your proposal specifically (and which I don’t have in front of me) but they appear to be applicable. I was answering Q9. What TLDs does your proposal apply to? How would you draw the line between .AUTO – which can mean an automobile or automatic? With respect to the comment on costs, let’s say a large consumer products company has over 100 trademarks for a variety of goods. This is not uncommon for a company with a very diverse product base. In the past, they only needed to submit one trademark registration to the TMCH. A proposal to correlate the TLD to the goods/services in the trademark registration would require a submission of all or many of the trademark registrations. It would be prohibitively expensive. John From: Michael Karanicolas <mkaranicolas@gmail.com> Sent: Wednesday, May 15, 2019 11:48 AM To: John McElwaine <john.mcelwaine@nelsonmullins.com> Cc: Kathy Kleiman <kathy@kathykleiman.com>; gnso-rpm-sunrise@icann.org Subject: Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Hi all, This has been an interesting conversation. I'm not sure if John's comment here was directed as a general response to Q9, or as a specific response to my proposal. I'm going to assume it's the former, since my proposal specifically DOES NOT apply to gTLDs like .CLUB or .XYX or .WEB which are not suggestive of a specific category of goods, but I thought I would reiterate the point, as I know there was some confusion expressed last week as well. I must confess, I'm also still a bit confused by the claim that this would require brand owners to register a bunch of new marks... Unless I'm missing something, the marks registered in the TMCH are the only ones capable of being registered in sunrise. So if Tata registers "Tata Motors" but not "Tetley" - then "Tetley" wouldn't be available under sunrise anyway. So is the point that they would lose the ability to register something like TataMotors.Recipes? If so - I don't see this as a major problem - but merely limiting trademark protections to the category of goods or service which is being offered - as is done all over the world. Finally, I'll also note that the debate is being simultaneously pulled in two directions: on the one hand, Brian has noted that "the average number of sunrise registrations was very low", while Phil is claiming that the high level of automation and tight margins precludes any sort of human intervention. Which is it? Is the volume and pace of the sunrise system so high as to preclude even a quick smell test to ensure that the system isn't being gamed, or is the use of the system so low that we shouldn't even bother trying to fix the problems? Honestly, I think that a lot of these interventions have vastly over-emphasized the complexity of the analysis, which can be made based on a quick, plain language determination. I'd be happy to apply a low bar, as I mentioned last week, such that if there's any kind of reasonable argument for inclusion, the registration would pass muster, since the intention here is really to weed out registrations that are clearly inappropriate. Look forward to chatting further today. Michael On Wed, May 15, 2019 at 11:12 AM John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>> wrote: Just chiming in here: Q9 In light of the evidence gathered above, should the scope of Sunrise Registrations be limited to the categories of goods and services for which? As an initial mater, I do not believe that there was any evidence that Sunrise Registration should be limited to a particular category. With respect to the concept, in general, I do not believe that the concept of limiting Sunrise Registration to a category of goods and services is workable. What “categories” are we trying to correlate? New gTLD are/were not required to list a category to which they apply, some had purposes that lend themselves to this analysis, such as .BANK, but what “category” would you attribute to .XYX, .GURU, .CLUB, .WEB. Moreover, trademark owners did not register their trademarks in the TMCH with this concept in mind. Therefore, there could be huge gaps and this new concept could cost trademark owners thousands of dollars to register all of there marks when only one would suffice in the past. Lastly, an exact correlation between a trademark registration and a TLD is not always going to be clear. How will registrars make that determination? Thanks, John From: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org<mailto:gnso-rpm-sunrise-bounces@icann.org>> On Behalf Of Kathy Kleiman Sent: Wednesday, May 15, 2019 9:12 AM To: gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 ◄External Email► - From: gnso-rpm-sunrise-bounces@icann.org<mailto:gnso-rpm-sunrise-bounces@icann.org> Claudio, I think you have just brilliantly made the case for why Michael's proposal does not hurt trademark owners, but does harm the "gamers" who are using their trademark registrations for "the" and other common, ordinary words to misuse the Sunrise Period. Best, Kathy On 5/9/2019 1:42 PM, claudio di gangi wrote: Michael, Agreeing with Brian, and just adding some further context below to the extent helpful. I think the main issue with this discussion is that the use of a generic top-level domain is not limited to the semantic meaning or implication of the string (unless the Registry decides to restrict its registration policy to a certain community, industry, geographic region, etc.). This is the primary reason why there is no constituted ‘expansion of trademark rights’ when the trademark owner registers a trademark-corresponding domain name in the gTLD, whether during Sunrise or General Availability, because the use of the gTLD is not restricted to certain goods/services, and is open to various interpretations and forms of use. The fact that the gTLD is open for any form of use that may be unrelated to the semantic meaning of the string is the main reason why it’s helpful for trademark owners to maintain the option to apply for a registration during Sunrise, even when for the sake of argument, the gTLD does not appear directly correlated to the industry, product, class of goods, of the trademark owner. In other words, cybersquatters register third-party trademarks in those types of gTLDs for a several reasons, such as: (1) trademark owners have limited budgets and are usually forced to protect their trademark in gTLDs where there is a direct or indirect connotation or semantic relationship between the gTLD and the organization’s brand (and/or several other factors which makes the gTLD a target for registration abuse); (2) this leaves the remaining gTLDs more of an open target for cybersquatting the brand. As a result, this type of approach to defensive registrations leaves cybersquatters with two main options: (1) register typographical variations of the trademark, or add additional terms to the trademark, in gTLDs where there is a indirect or direct relationship between the semantic meaning of the gTLD and the trademark; 2) register the trademark (and permutations) as a domain name in a different gTLD where the trademark owner did not register their trademark as a domain during Sunrise. So we see a combination of both of practices in new gTLDs, at either the same or a higher rate of cybersquatting compared to legacy domains. This makes Sunrise a needed option for the purposes mitigating against registration abuse and to help protect consumers from the harms that follow from these illegal schemes. With that said, of course this doesn’t mean that brand owners are going to utilize the Sunrise RPM across the board. In practice, because of limited budgets and the expense/costs of the registrations, I believe the average number of Sunrise registrations in new gTLDs is between 100 and 200 registrations per registry. This leaves the vast majority of possible permutations of domains available for good faith registration by third parties (or by cybersquatters). But in some cases, the brand owner will register in a specific new gTLD (where the semantic meaning doesn’t appear directly related at first glance), but the trademark owner is aware of other factors or reasons - for example, the fame of the mark, or previous cases of registration abuse when they have been targeted in a certain manner - to justify the expense of registering the domain name defensively in that specific gTLD. Yes, when you add up the totals for a specific company, it can come to a very large imposed expense, but since the defensive registrations are spread out across so many different registries, in any particular gTLD you will only see a limited number of Sunrise registrations. I hope the combination of these various factors makes the issue of lesser concern from your perspective . Also, importantly as Brian noted, there have been expressions of interest within the Subteam to review the SDRP policy to see if we can make incremental improvements, while maintaining the balance of interests. I am happy to work with you and others on this effort going forward. Best regards, Claudio On Thursday, May 9, 2019, BECKHAM, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Michael, I would personally prefer not to get into a Google search race for some kind of “exceptions to prove the rule” and also because “tattoos” is not a class of marks<https://urldefense.proofpoint.com/v2/url?u=https-3A__trademark.eu_list-2Dof-...>, but these articles could be of interest in terms of explaining why they may seek such a defensive sunrise registration: https://www.pinterest.ch/steelephotograp/mini-cooper-tattoos/<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.pinterest.ch_steelephotograp_mini-2Dcooper-2Dtattoos_&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=gSuWWUEWDxSYsvZJni-czNV73i8NXazPZkmQIfpK7Cs&s=uHebujKmbqlS2uqItLfzU3TNimQ7pyuBwUH5oc2Ozx0&e=> https://metro.co.uk/2011/01/25/andreas-muller-has-mini-tattooed-on-penis-to-win-car-632961/<https://urldefense.proofpoint.com/v2/url?u=https-3A__metro.co.uk_2011_01_25_andreas-2Dmuller-2Dhas-2Dmini-2Dtattooed-2Don-2Dpenis-2Dto-2Dwin-2Dcar-2D632961_&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=gSuWWUEWDxSYsvZJni-czNV73i8NXazPZkmQIfpK7Cs&s=pbpsDzKQbCJVjxKhFg4pB0Ff7MjZmUC8i8gybNNbC7c&e=> Also, while MINI may not make motorcycles, their sister company BMW does, so they could well branch out into that product area (including related services). I have already suggested improvements to the SDRP on several occasions, going back almost 2 years now (those were apparently parked in preference of various data seeking exercises), so would respectfully suggest that others take the baton from here. As I said, I believe there is a genuine willingness to explore such solutions. At the same time, it seems unlikely that the current proposal No. 13 is likely to garner consensus, and will defer to the Sub Team Co-Chairs to address that at the level of our present discussions. Brian From: Michael Karanicolas <mkaranicolas@gmail.com<mailto:mkaranicolas@gmail.com>> Sent: Thursday, May 9, 2019 5:50 PM To: BECKHAM, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> Cc: Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>; gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Interesting, thanks for sharing. I checked whether Mini made motorcycles before I sent my proposal in... I didn't think to check whether they made regular bicycles! By any chance, were you able to find any examples of the company branching into the tattoo business as well (http://mini.tattoo<https://urldefense.proofpoint.com/v2/url?u=http-3A__mini.tattoo&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=gSuWWUEWDxSYsvZJni-czNV73i8NXazPZkmQIfpK7Cs&s=hz_dbl1xW8RVKq76eGzyTRSvMHldbUVm99dT05gNB0w&e=>)? I'm not sure if this presents a "nuance" in trademark classes. I don't think it's much of a revelation that "bikes" can refer to motorcycles or regular bicycles. All this represents is a product line I was unaware of. And under my proposal, all Mini would have to do would be to include the link you provided when they register the domain under sunrise, and that should be that. Personally, I don't see how the SDRP challenge process could be retooled to turn it into something that adequately represents the interests of potential future registrants without injecting massive amounts of transparency into the sunrise and TMCH processes... but I would be interested to hear your thoughts as to how this might work. On Thu, May 9, 2019 at 12:38 PM BECKHAM, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Thanks Ariel, Copying here, my full email to the Sunrise List from earlier today as it relates to proposal No. 13: -- Thanks Julie, Just for fun (as I am aware the example was merely anecdotal), further to our hypothesizing last night, indeed, MINI does have a range of folding bikes: https://www.bmwblog.com/2018/02/28/new-mini-folding-bike/<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.bmwblog.com_2018_02_28_new-2Dmini-2Dfolding-2Dbike_&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=gSuWWUEWDxSYsvZJni-czNV73i8NXazPZkmQIfpK7Cs&s=-DQKbN4h_dSO8fhDzuHea5uMdkZ4N96oc5TogI1gY8Y&e=> This does however illustrate in some ways the nuance in trademark classes and TLD typology that may escape proposal No. 13 in its current form. As I mentioned on our call, I believe there is a shared willingness to address the issue Michael has raised, but via the SDRP challenge process, and not via claims exclusions. Brian -- Brian From: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org<mailto:gnso-rpm-sunrise-bounces@icann.org>> On Behalf Of Ariel Liang Sent: Thursday, May 9, 2019 5:36 PM To: gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Dear Sunrise Sub Team members, As announced, this thread is being opened for final mailing list discussions related to Sunrise Agreed Charter Question 9, including Proposal #13. We ask that you review the Summary Table (as of 16 April 2019) and provide any additional input you may have to the “proposed answers & preliminary recommendations” in relation to the Agreed Charter Question, and consider draft answers to the following questions regarding the individual proposal: a. Should the Sub Team recommend that the full WG consider including this Individual Proposal in the Initial Report for the solicitation of public comment? b. In light of the Individual Proposal, are any modifications to the current “tentative answers & preliminary recommendations” needed? c. Should any additional Sub Team recommendations be made in relation to the agreed Sunrise charter question? Unless the Sub Team Co-Chairs determine otherwise, this discussion thread will remain open until 23:59 UTC on 22 May 2019. Comments/input provided past the closing date or outside this discussion thread will not be taken into account when compiling the final Sub Team member input. Summary Table (Pages 36-40) The draft answers, preliminary recommendations, and links to the relevant individual proposals are in the latest Summary Table (as of 16 April 2019): https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summary%20Table%5D%20%2816%20April%202019%29.pdf?version=1&modificationDate=1555515624235&api=v2<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_download_attachments_102138618_-255BSunrise-2520Summary-2520Table-255D-2520-252816-2520April-25202019-2529.pdf-3Fversion-3D1-26modificationDate-3D1555515624235-26api-3Dv2&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=gSuWWUEWDxSYsvZJni-czNV73i8NXazPZkmQIfpK7Cs&s=viVsn6p-SByaxe1zDntvWmW8nbZ7ZH54EovjHDKQnKo&e=>. Agreed Sunrise Charter Question 9 (Page 36) The Sub Team just discussed Agreed Charter Question 9 on 08 May 2019, hence the proposed answers are “TBD”. Based on the Sub Team’s discussions, the transcript and notes, staff will provide update. Q9 In light of the evidence gathered above, should the scope of Sunrise Registrations be limited to the categories of goods and services for which? Proposed Answer: TBD Individual Proposal The Sub Team just discussed the Proposal #13 on 08 May 2019, hence there is no draft answer currently on the Summary Table (as of 16 April 2019). Based on the Sub Team’s discussions, the transcript and notes, staff will provide. Link to the individual proposal is included below. Proposal #13: https://community.icann.org/download/attachments/102146375/Proposal%2313.pdf?api=v2<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_download_attachments_102146375_Proposal-252313.pdf-3Fapi-3Dv2&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=gSuWWUEWDxSYsvZJni-czNV73i8NXazPZkmQIfpK7Cs&s=bd_BnRfHGFUSEli5ixdGBdH5cX4wB0bPw3MpUzoFZu4&e=> Where to Find All Discussion Threads Access the Documents wiki page and find the opening messages of the all discussion threads in the table (highlighted in green): https://community.icann.org/x/_oIWBg<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_-5FoIWBg&d=DwMDaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=gSuWWUEWDxSYsvZJni-czNV73i8NXazPZkmQIfpK7Cs&s=8ExWmYjOv_49RQqOzCs8IP1TEsIlaTuMOUMrJ10Wi6U&e=> Best Regards, Mary, Julie, Ariel World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. 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Hi, Given that the purpose of the proposal is to target clearly abusive registrations, my inclination would be frame things relatively flexibly with regard to the .Auto example you've given (and, for that matter, the "bike" example Phil gave earlier). Perhaps, rather than cleave too closely to formal categories like the Nice Classification, which may be unduly rigid, a better solution would be to follow a plain language interpretation of the phrase, which would allow for simpler and quicker determinations. In terms of the costs issue, I think there may be some lingering confusion based on the framing of the Charter question, which specifically envisions limiting registrations to the category as registered in the Clearinghouse. In that context, I can understand why some might be concerned that a company like Nike, which may have registered its trademark for shoes and is now branching into watches, would need to re-register. But that is *not* what the proposal suggests. Rather than following the category of initial registration, the proposal merely requires that the mark holder be doing business in that type of goods or services. So, to go back to the Nike example, even if the registration in the TMCH only envisioned shoes, so long as Nike can demonstrate that it's selling watches (which should be fairly simple) there would be no problem. Certainly, the intention here is not to design a system where a company would have to go back and re-register all of its trademarks, or multiple versions of the same trademark, and I think it wouldn't be an issue to further clarify on those grounds, if that would help assuage concerns. Best, Michael On Wed, May 15, 2019 at 12:58 PM John McElwaine < john.mcelwaine@nelsonmullins.com> wrote:

Michael,

My comments are not aimed at your proposal specifically (and which I don’t have in front of me) but they appear to be applicable. I was answering Q9.

What TLDs does your proposal apply to? How would you draw the line between .AUTO – which can mean an automobile or automatic?

With respect to the comment on costs, let’s say a large consumer products company has over 100 trademarks for a variety of goods. This is not uncommon for a company with a very diverse product base. In the past, they only needed to submit one trademark registration to the TMCH. A proposal to correlate the TLD to the goods/services in the trademark registration would require a submission of all or many of the trademark registrations. It would be prohibitively expensive.

John

*From:* Michael Karanicolas <mkaranicolas@gmail.com> *Sent:* Wednesday, May 15, 2019 11:48 AM *To:* John McElwaine <john.mcelwaine@nelsonmullins.com> *Cc:* Kathy Kleiman <kathy@kathykleiman.com>; gnso-rpm-sunrise@icann.org *Subject:* Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Hi all,

This has been an interesting conversation. I'm not sure if John's comment here was directed as a general response to Q9, or as a specific response to my proposal. I'm going to assume it's the former, since my proposal specifically *DOES NOT* apply to gTLDs like .CLUB or .XYX or .WEB which are not suggestive of a specific category of goods, but I thought I would reiterate the point, as I know there was some confusion expressed last week as well.

I must confess, I'm also still a bit confused by the claim that this would require brand owners to register a bunch of new marks... Unless I'm missing something, the marks registered in the TMCH are the only ones capable of being registered in sunrise. So if Tata registers "Tata Motors" but not "Tetley" - then "Tetley" wouldn't be available under sunrise anyway. So is the point that they would lose the ability to register something like TataMotors.Recipes? If so - I don't see this as a major problem - but merely limiting trademark protections to the category of goods or service which is being offered - as is done all over the world.

Finally, I'll also note that the debate is being simultaneously pulled in two directions: on the one hand, Brian has noted that "the average number of sunrise registrations was very low", while Phil is claiming that the high level of automation and tight margins precludes any sort of human intervention. Which is it? Is the volume and pace of the sunrise system so high as to preclude even a quick smell test to ensure that the system isn't being gamed, or is the use of the system so low that we shouldn't even bother trying to fix the problems?

Honestly, I think that a lot of these interventions have vastly over-emphasized the complexity of the analysis, which can be made based on a quick, plain language determination. I'd be happy to apply a low bar, as I mentioned last week, such that if there's any kind of reasonable argument for inclusion, the registration would pass muster, since the intention here is really to weed out registrations that are clearly inappropriate.

Look forward to chatting further today.

Michael

On Wed, May 15, 2019 at 11:12 AM John McElwaine < john.mcelwaine@nelsonmullins.com> wrote:

Just chiming in here: Q9 In light of the evidence gathered above, should the scope of Sunrise Registrations be limited to the categories of goods and services for which?

As an initial mater, I do not believe that there was any evidence that Sunrise Registration should be limited to a particular category.

With respect to the concept, in general, I do not believe that the concept of limiting Sunrise Registration to a category of goods and services is workable. What “categories” are we trying to correlate? New gTLD are/were not required to list a category to which they apply, some had purposes that lend themselves to this analysis, such as .BANK, but what “category” would you attribute to .XYX, .GURU, .CLUB, .WEB.

Moreover, trademark owners did not register their trademarks in the TMCH with this concept in mind. Therefore, there could be huge gaps and this new concept could cost trademark owners thousands of dollars to register all of there marks when only one would suffice in the past.

Lastly, an exact correlation between a trademark registration and a TLD is not always going to be clear. How will registrars make that determination?

Thanks,

John

*From:* Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org> *On Behalf Of *Kathy Kleiman *Sent:* Wednesday, May 15, 2019 9:12 AM *To:* gnso-rpm-sunrise@icann.org *Subject:* Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

*◄External Email►* - From: gnso-rpm-sunrise-bounces@icann.org

Claudio, I think you have just brilliantly made the case for why Michael's proposal does not hurt trademark owners, but does harm the "gamers" who are using their trademark registrations for "the" and other common, ordinary words to misuse the Sunrise Period.

Best, Kathy

On 5/9/2019 1:42 PM, claudio di gangi wrote:

Michael,

Agreeing with Brian, and just adding some further context below to the extent helpful.

I think the main issue with this discussion is that the use of a generic top-level domain is not limited to the semantic meaning or implication of the string (unless the Registry decides to restrict its registration policy to a certain community, industry, geographic region, etc.).

This is the primary reason why there is no constituted ‘expansion of trademark rights’ when the trademark owner registers a trademark-corresponding domain name in the gTLD, whether during Sunrise or General Availability, because the use of the gTLD is not restricted to certain goods/services, and is open to various interpretations and forms of use.

The fact that the gTLD is open for any form of use that may be unrelated to the semantic meaning of the string is the main reason why it’s helpful for trademark owners to maintain the option to apply for a registration during Sunrise, even when for the sake of argument, the gTLD does not appear directly correlated to the industry, product, class of goods, of the trademark owner.

In other words, cybersquatters register third-party trademarks in those types of gTLDs for a several reasons, such as: (1) trademark owners have limited budgets and are usually forced to protect their trademark in gTLDs where there is a direct or indirect connotation or semantic relationship between the gTLD and the organization’s brand (and/or several other factors which makes the gTLD a target for registration abuse); (2) this leaves the remaining gTLDs more of an open target for cybersquatting the brand.

As a result, this type of approach to defensive registrations leaves cybersquatters with two main options: (1) register typographical variations of the trademark, or add additional terms to the trademark, in gTLDs where there is a indirect or direct relationship between the semantic meaning of the gTLD and the trademark; 2) register the trademark (and permutations) as a domain name in a different gTLD where the trademark owner did not register their trademark as a domain during Sunrise.

So we see a combination of both of practices in new gTLDs, at either the same or a higher rate of cybersquatting compared to legacy domains. This makes Sunrise a needed option for the purposes mitigating against registration abuse and to help protect consumers from the harms that follow from these illegal schemes.

With that said, of course this doesn’t mean that brand owners are going to utilize the Sunrise RPM across the board. In practice, because of limited budgets and the expense/costs of the registrations, I believe the average number of Sunrise registrations in new gTLDs is between 100 and 200 registrations per registry. This leaves the vast majority of possible permutations of domains available for good faith registration by third parties (or by cybersquatters).

But in some cases, the brand owner will register in a specific new gTLD (where the semantic meaning doesn’t appear directly related at first glance), but the trademark owner is aware of other factors or reasons - for example, the fame of the mark, or previous cases of registration abuse when they have been targeted in a certain manner - to justify the expense of registering the domain name defensively in that specific gTLD.

Yes, when you add up the totals for a specific company, it can come to a very large imposed expense, but since the defensive registrations are spread out across so many different registries, in any particular gTLD you will only see a limited number of Sunrise registrations.

I hope the combination of these various factors makes the issue of lesser concern from your perspective . Also, importantly as Brian noted, there have been expressions of interest within the Subteam to review the SDRP policy to see if we can make incremental improvements, while maintaining the balance of interests. I am happy to work with you and others on this effort going forward.

Best regards,

Claudio

On Thursday, May 9, 2019, BECKHAM, Brian <brian.beckham@wipo.int> wrote:

Michael,

I would personally prefer not to get into a Google search race for some kind of “exceptions to prove the rule” and also because “tattoos” is not a class of marks <https://urldefense.proofpoint.com/v2/url?u=https-3A__trademark.eu_list-2Dof-...>, but these articles could be of interest in terms of explaining why they may seek such a defensive sunrise registration:

https://www.pinterest.ch/steelephotograp/mini-cooper-tattoos/ <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.pinterest.ch_steele...>

https://metro.co.uk/2011/01/25/andreas-muller-has-mini-tattooed-on-penis-to-... <https://urldefense.proofpoint.com/v2/url?u=https-3A__metro.co.uk_2011_01_25_...>

Also, while MINI may not make motorcycles, their sister company BMW does, so they could well branch out into that product area (including related services).

I have already suggested improvements to the SDRP on several occasions, going back almost 2 years now (those were apparently parked in preference of various data seeking exercises), so would respectfully suggest that others take the baton from here.

As I said, I believe there is a genuine willingness to explore such solutions.

At the same time, it seems unlikely that the current proposal No. 13 is likely to garner consensus, and will defer to the Sub Team Co-Chairs to address that at the level of our present discussions.

Brian

*From:* Michael Karanicolas <mkaranicolas@gmail.com> *Sent:* Thursday, May 9, 2019 5:50 PM *To:* BECKHAM, Brian <brian.beckham@wipo.int> *Cc:* Ariel Liang <ariel.liang@icann.org>; gnso-rpm-sunrise@icann.org *Subject:* Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Interesting, thanks for sharing. I checked whether Mini made motorcycles before I sent my proposal in... I didn't think to check whether they made regular bicycles!

By any chance, were you able to find any examples of the company branching into the tattoo business as well (http://mini.tattoo <https://urldefense.proofpoint.com/v2/url?u=http-3A__mini.tattoo&d=DwMDaQ&c=q...> )?

I'm not sure if this presents a "nuance" in trademark classes. I don't think it's much of a revelation that "bikes" can refer to motorcycles or regular bicycles. All this represents is a product line I was unaware of. And under my proposal, all Mini would have to do would be to include the link you provided when they register the domain under sunrise, and that should be that.

Personally, I don't see how the SDRP challenge process could be retooled to turn it into something that adequately represents the interests of potential future registrants without injecting massive amounts of transparency into the sunrise and TMCH processes... but I would be interested to hear your thoughts as to how this might work.

On Thu, May 9, 2019 at 12:38 PM BECKHAM, Brian <brian.beckham@wipo.int> wrote:

Thanks Ariel,

Copying here, my full email to the Sunrise List from earlier today as it relates to proposal No. 13:

--

Thanks Julie,

Just for fun (as I am aware the example was merely anecdotal), further to our hypothesizing last night, indeed, MINI does have a range of folding bikes:

https://www.bmwblog.com/2018/02/28/new-mini-folding-bike/ <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.bmwblog.com_2018_02...>

This does however illustrate in some ways the nuance in trademark classes and TLD typology that may escape proposal No. 13 in its current form.

As I mentioned on our call, I believe there is a shared willingness to address the issue Michael has raised, but via the SDRP challenge process, and not via claims exclusions.

Brian

--

Brian

*From:* Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org> *On Behalf Of *Ariel Liang *Sent:* Thursday, May 9, 2019 5:36 PM *To:* gnso-rpm-sunrise@icann.org *Subject:* [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Dear Sunrise Sub Team members,

As announced, this thread is being opened for final mailing list discussions related to *Sunrise Agreed Charter Question 9*, including *Proposal #13*.

We ask that you review the *Summary Table* *(as of 16 April 2019) *and provide any additional input you may have to the “*proposed answers & preliminary recommendations*” in relation to the Agreed Charter Question, and consider *draft answers *to the following questions regarding the individual proposal:

a. Should the Sub Team recommend that the full WG consider including this Individual Proposal in the Initial Report for the solicitation of public comment?

b. In light of the Individual Proposal, are any modifications to the current “tentative answers & preliminary recommendations” needed?

c. Should any additional Sub Team recommendations be made in relation to the agreed Sunrise charter question?

Unless the Sub Team Co-Chairs determine otherwise, this discussion thread will remain open until *23:59 UTC on 22 May 2019*. Comments/input provided past the closing date or outside this discussion thread will not be taken into account when compiling the final Sub Team member input.

*Summary Table** (Pages 36-40)*

The draft answers, preliminary recommendations, and links to the relevant individual proposals are in the latest Summary Table (as of 16 April 2019):

https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ... <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...>.

*Agreed Sunrise Charter Question 9** (Page 36)*

The Sub Team just discussed Agreed Charter Question 9 on 08 May 2019, hence the proposed answers are “TBD”. Based on the Sub Team’s discussions, the transcript and notes, staff will provide update.

* Q9 In light of the evidence gathered above, should the scope of Sunrise Registrations be limited to the categories of goods and services for which? *

*Proposed Answer**: *TBD

*Individual Proposal*

The Sub Team just discussed the Proposal #13 on 08 May 2019, hence there is no draft answer currently on the Summary Table (as of 16 April 2019). Based on the Sub Team’s discussions, the transcript and notes, staff will provide.

Link to the individual proposal is included below.

*Proposal #13*: https://community.icann.org/download/attachments/102146375/Proposal%2313.pdf... <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...>

*Where to Find All Discussion Threads*

Access the Documents wiki page and find the opening messages of the all discussion threads in the table (highlighted in green): https://community.icann.org/x/_oIWBg <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_-...>

Best Regards,

Mary, Julie, Ariel

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Kathy: I presume that these are your personal views, just as the email I posted last week raising serious doubts about Michael’s proposal were clearly labeled as personal. Likewise, what follows is an expression of personal views. Not to repeat myself, but to the extent there is gaming based on weak marks it should be a focus of discussion when we review requirements for mark recordation in the TMCH. But I have seen no substantial evidence that legitimate trademark holders are seeking to utilize sunrise registrations in gTLDs other than those for which they have a good faith belief that registration is necessary for brand protection. Even where a sunrise registration might arguably be abusive, I do not see that as placing any burden on the speech rights of others who wish to register a domain name that bears some resemblance. I also described why I believe adoption of this proposal will require a costly bureaucracy to yield reasonably consistent applications of what will always be a subjective standard subject to interpretation. I do not see this as the same as the objective standard for a .bank or .insurance domain (where the cost of vetting is built into the registration fee, and the requirement is satisfied by furnishing a certificate evidencing that the applicant is a regulated institution) or even ccTLDs, where some have objective criteria to demonstrate being domiciled or doing business in a particular jurisdiction. While I don’t believe that Michael has the responsibility to provide a full-blown implementation scheme, I have not yet heard a credible explanation of how adoption of a relationship test will be consistently administered in a cost-effective way. Finally, and more broadly, we are in the process of considering proposals to recommend to the full WG for inclusion in the Initial Report for public comment. While that does not require a demonstration of consensus at this point, it should require some reasonably strong support within the sub team and, following that, the WG; and some prospect that the proposal can achieve consensus down the road within the WG (for the Final Report) and Council. Frankly, I don’t see that reasonably strong support for Michael’s proposal within the sub team but rather a sharp divide over whether there is even a problem that requires addressing. And, while I have no crystal ball, I feel reasonably confident that in the end contracted parties will oppose it for administrative and cost reasons, among others, and that BC and IPC members will oppose it as putting yet another burden on sunrise registrations – so I don’t see any prospect of consensus. Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org> On Behalf Of Kathy Kleiman Sent: Wednesday, May 15, 2019 9:04 AM To: gnso-rpm-sunrise@icann.org Subject: [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Hi All, I think the discussion is an important one because it is brings up issues across categories. a) Michael's proposal addresses a problem we have found in our data-driven analysis. There are gamers out there who are registering trademarks in a certain category of goods and services, and then using them to register an array of domain names in Sunrise having nothing at all to do with the categories of their trademark registration. We committed at the outset of the RPMs -- in the 2009 era - that we would not be expanding trademark rights. That's exactly what is happening in these situations and registrations. b) The SDRP is broken - barely used because the Trademark Clearinghouse was supposed to be public, during implementation it was turned private, so challengers cannot get the information they need to challenge. Plus, it's not the job a challenger to police the basic principle of the entire RPM process. Brian, you have mentioned your "suggested improvements to the SDRP" from 2 years ago several times, but that was 1000s of emails ago, and we worked hard to compile the data and solutions that we are looking at today. Per the rules that we agreed to as Co-Chairs and as a WG, we created a new table, atop extensive data gathering, and things must be reintroduced from prior to our URS break. If you could do so, that would be very timely. I've suggested changes to the SDRP that would give challengers some chance to use it -- although only for the narrow purpose intended. The SDRP was not intended to solve a broad gaming problem -- because we did not anticipate one. We know know it exists; and a policy/operational fix resolves it. c) Michael suggests a narrowly tailored solution for a gaming problem that we now know exists. His solution is completely consistent with how registrars, in many of these gTLDs, already handle General Availability (e.g., required proof to register in .BANK). It's not a new process -- just a way to use existing process to avoid gaming and preserve the principles we agreed to in this process. Best, Kathy On 5/9/2019 12:04 PM, BECKHAM, Brian wrote: Michael, I would personally prefer not to get into a Google search race for some kind of “exceptions to prove the rule” and also because “tattoos” is not a class of marks<https://trademark.eu/list-of-classes-with-explanatory-notes/>, but these articles could be of interest in terms of explaining why they may seek such a defensive sunrise registration: https://www.pinterest.ch/steelephotograp/mini-cooper-tattoos/ https://metro.co.uk/2011/01/25/andreas-muller-has-mini-tattooed-on-penis-to-... Also, while MINI may not make motorcycles, their sister company BMW does, so they could well branch out into that product area (including related services). I have already suggested improvements to the SDRP on several occasions, going back almost 2 years now (those were apparently parked in preference of various data seeking exercises), so would respectfully suggest that others take the baton from here. As I said, I believe there is a genuine willingness to explore such solutions. At the same time, it seems unlikely that the current proposal No. 13 is likely to garner consensus, and will defer to the Sub Team Co-Chairs to address that at the level of our present discussions. Brian From: Michael Karanicolas <mkaranicolas@gmail.com><mailto:mkaranicolas@gmail.com> Sent: Thursday, May 9, 2019 5:50 PM To: BECKHAM, Brian <brian.beckham@wipo.int><mailto:brian.beckham@wipo.int> Cc: Ariel Liang <ariel.liang@icann.org><mailto:ariel.liang@icann.org>; gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Interesting, thanks for sharing. I checked whether Mini made motorcycles before I sent my proposal in... I didn't think to check whether they made regular bicycles! By any chance, were you able to find any examples of the company branching into the tattoo business as well (http://mini.tattoo)? I'm not sure if this presents a "nuance" in trademark classes. I don't think it's much of a revelation that "bikes" can refer to motorcycles or regular bicycles. All this represents is a product line I was unaware of. And under my proposal, all Mini would have to do would be to include the link you provided when they register the domain under sunrise, and that should be that. Personally, I don't see how the SDRP challenge process could be retooled to turn it into something that adequately represents the interests of potential future registrants without injecting massive amounts of transparency into the sunrise and TMCH processes... but I would be interested to hear your thoughts as to how this might work. On Thu, May 9, 2019 at 12:38 PM BECKHAM, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Thanks Ariel, Copying here, my full email to the Sunrise List from earlier today as it relates to proposal No. 13: -- Thanks Julie, Just for fun (as I am aware the example was merely anecdotal), further to our hypothesizing last night, indeed, MINI does have a range of folding bikes: https://www.bmwblog.com/2018/02/28/new-mini-folding-bike/ This does however illustrate in some ways the nuance in trademark classes and TLD typology that may escape proposal No. 13 in its current form. As I mentioned on our call, I believe there is a shared willingness to address the issue Michael has raised, but via the SDRP challenge process, and not via claims exclusions. Brian -- Brian From: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org<mailto:gnso-rpm-sunrise-bounces@icann.org>> On Behalf Of Ariel Liang Sent: Thursday, May 9, 2019 5:36 PM To: gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Dear Sunrise Sub Team members, As announced, this thread is being opened for final mailing list discussions related to Sunrise Agreed Charter Question 9, including Proposal #13. We ask that you review the Summary Table (as of 16 April 2019) and provide any additional input you may have to the “proposed answers & preliminary recommendations” in relation to the Agreed Charter Question, and consider draft answers to the following questions regarding the individual proposal: a. Should the Sub Team recommend that the full WG consider including this Individual Proposal in the Initial Report for the solicitation of public comment? b. In light of the Individual Proposal, are any modifications to the current “tentative answers & preliminary recommendations” needed? c. Should any additional Sub Team recommendations be made in relation to the agreed Sunrise charter question? Unless the Sub Team Co-Chairs determine otherwise, this discussion thread will remain open until 23:59 UTC on 22 May 2019. Comments/input provided past the closing date or outside this discussion thread will not be taken into account when compiling the final Sub Team member input. Summary Table (Pages 36-40) The draft answers, preliminary recommendations, and links to the relevant individual proposals are in the latest Summary Table (as of 16 April 2019): https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ.... Agreed Sunrise Charter Question 9 (Page 36) The Sub Team just discussed Agreed Charter Question 9 on 08 May 2019, hence the proposed answers are “TBD”. Based on the Sub Team’s discussions, the transcript and notes, staff will provide update. Q9 In light of the evidence gathered above, should the scope of Sunrise Registrations be limited to the categories of goods and services for which? Proposed Answer: TBD Individual Proposal The Sub Team just discussed the Proposal #13 on 08 May 2019, hence there is no draft answer currently on the Summary Table (as of 16 April 2019). Based on the Sub Team’s discussions, the transcript and notes, staff will provide. Link to the individual proposal is included below. Proposal #13: https://community.icann.org/download/attachments/102146375/Proposal%2313.pdf... Where to Find All Discussion Threads Access the Documents wiki page and find the opening messages of the all discussion threads in the table (highlighted in green): https://community.icann.org/x/_oIWBg Best Regards, Mary, Julie, Ariel World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. 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This working group has hit on numerous problems with the Sunrise regime, with harms falling disproportionately on non-commercial and small business registrants. Michael K. has proposed a narrow solution to one of these problems, and I think it deserves serious consideration. Quite simply, Sunrise as it exists is an expansion of trademark rights. Allowing priority registration without regard to the actual goods and services to which a mark pertains turns a trademark from a source identifier into a global dominion over a word or phrase. We have ample evidence that Sunrise is being abused in just that way. Looking beyond obvious abuses, there is little or no justification for giving trademark holders priority registration in TLDs that are clearly orthogonal to any product or service the mark-holder offers. At scale, having that priority absolutely harms the free expression rights of others. To use a simple example, Apple is a distinctive trademark in consumer technology but a generic word in many other circumstances. There are any number of individuals and organizations who should be able to express themselves with a domain name containing Apple, in ways that raise no possibility of trademark infringement or cybersquatting. All of these potential users should have equal opportunity to register "apple" in new TLDs that don't raise an association with technology products. Moreover, we need to be consistent about questions of scale. If sunrise registrations are used often enough to provide benefit to trademark holders, then they are also being used often enough to interfere with the rights of noncommercial users. And if they are not used very much at all, then we should be jettisoning the program as unnecessary. If Sunrise is to continue, Michael's proposal is a straightforward way of making it conform to the actual legal rights it's meant to protect. Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate | https://act.eff.org/ On 5/15/19 8:09 AM, Kathy Kleiman wrote:

Hi Phil,

As a co-chair, I'm a little surprised by the vehemence of the debate. Many of us are lawyers and we're used to talking about important issues in dispassionate ways. I think we should do so here.

As an ordinary member, I participate in these discussions, as you and Brian do, and in that capacity, I note that we have a problem.  I also see the seeds of the solution in your answer below.

In 2009, we foresaw that there might be gaming of the Sunrise period -- people registering trademarks for ordinary words to get priority during Sunrise. We now see it happening. Journalists, reporters and bloggers have done the work for us -- and no one seems surprised by their results.  I list some of the articles we (as a Subteam) collected below. Links in our Sunrise Summary Table under Q9 - https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ...

Nothing in the MK proposal is burdensome, or unusual. It's narrowly-tailored (too narrowly-tailored in my view) to prevent gaming and to use systems already in place.

As you note below, the cost of the vetting is part of the process for many gTLDs and ccTLDs -- whether it is providing residency in Japan or the objective standard for .bank or .insurance or .attorney or .cpa. It's already built into our processes -- and not burdensome -- and easily extended to Sunrise.

We know there is a misuse and even abuse of the Sunrise system. The MK proposal is an easy fix, and one that actually protects and preserves the balance of rights. We are being asked to solve problems -- and this is a big one.

Best, Kathy

*Articles in our gathering data (links in Summary Table):*

*● How one guy games new gTLD sunrise periods** **● Fake Trademarks Stealing Generic Domains In New gTLD Sunrises** **● The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The"** **● How common words like Pizza, Money, and Shopping ended up in  the Trademark Clearinghouse for new TLDs** **● The numbers are in! Donuts sunrises typically get 100+ domains, but they also got gamed** **● Digging in on Donuts’ Sunrise: Amazon tops the list, gaming, and top registrars** **● .Build Registry Using Questionable Swiss Trademark Registration To Grab “Build” Domains In Sunrise** **● How Did RetailMeNot Get 849 .Codes Domains In Sunrise Without AnyTrademarks?** *

On 5/15/2019 10:10 AM, Corwin, Philip wrote:

...

Kathy:

I presume that these are your personal views, just as the email I posted last week raising serious doubts about Michael’s proposal were clearly labeled as personal. Likewise, what follows is an expression of personal views.

Not to repeat myself, but to the extent there is gaming based on weak marks it should be a focus of discussion when we review requirements for mark recordation in the TMCH. But I have seen no substantial evidence that legitimate trademark holders are seeking to utilize sunrise registrations in gTLDs other than those for which they have a good faith belief that registration is necessary for brand protection. Even where a sunrise registration might arguably be abusive, I do not see that as placing any burden on the speech rights of others who wish to register a domain name that bears some resemblance.

I also described why I believe adoption of this proposal will require a costly bureaucracy to yield reasonably consistent applications of what will always be a subjective standard subject to interpretation. I do not see this as the same as the objective standard for a .bank or .insurance domain (where the cost of vetting is built into the registration fee, and the requirement is satisfied by furnishing a certificate evidencing that the applicant is a regulated institution) or even ccTLDs, where some have objective criteria to demonstrate being domiciled or doing business in a particular jurisdiction. While I don’t believe that Michael has the responsibility to provide a full-blown implementation scheme, I have not yet heard a credible explanation of how adoption of a relationship test will be consistently administered in a cost-effective way.

Finally, and more broadly, we are in the process of considering proposals to recommend to the full WG for inclusion in the Initial Report for public comment. While that does not require a demonstration of consensus at this point, it should require some reasonably strong support within the sub team and, following that, the WG;  and some prospect that the proposal can achieve consensus down the road within the WG (for the Final Report) and Council. Frankly, I don’t see that reasonably strong support for Michael’s proposal within the sub team but rather a sharp divide over whether there is even a problem that requires addressing. And, while I have no crystal ball, I feel reasonably confident that in the end contracted parties will oppose it for administrative and cost reasons, among others, and that BC and IPC members will oppose it as putting yet another burden on sunrise registrations – so I don’t see any prospect of consensus.

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

/"Luck is the residue of design" -- Branch Rickey/

*From:*Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org> *On Behalf Of *Kathy Kleiman *Sent:* Wednesday, May 15, 2019 9:04 AM *To:* gnso-rpm-sunrise@icann.org *Subject:* [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Hi All,

I think the discussion is an important one because it is brings up issues across categories.

a) Michael's proposal addresses a problem we have found in our data-driven analysis. There are gamers out there who are registering trademarks in a certain category of goods and services, and then using them to register an array of domain names in Sunrise having nothing at all to do with the categories of their trademark registration.

We committed at the outset of the RPMs -- in the 2009 era - that we would not be expanding trademark rights. That's exactly what is happening in these situations and registrations.

b) The SDRP is broken - barely used because the Trademark Clearinghouse was supposed to be public, during implementation it was turned private, so challengers cannot get the information they need to challenge. Plus, it's not the job a challenger to police the basic principle of the entire RPM process.

Brian, you have mentioned your "suggested improvements to the SDRP" from 2 years ago several times, but that was 1000s of emails ago, and we worked hard to compile the data and solutions that we are looking at today. Per the rules that we agreed to as Co-Chairs and as a WG, we created a new table, atop extensive data gathering, and things must be reintroduced from prior to our URS break. If you could do so, that would be very timely.

I've suggested changes to the SDRP that would give challengers some chance to use it -- although only for the narrow purpose intended. The SDRP was not intended to solve a broad gaming problem -- because we did not anticipate one. We know know it exists; and a policy/operational fix resolves it.

c) Michael suggests a narrowly tailored solution for a gaming problem that we now know exists. His solution is completely consistent with how registrars, in many of these gTLDs, already handle General Availability (e.g., required proof to register in .BANK). It's not a new process -- just a way to use existing process to avoid gaming and preserve the principles we agreed to in this process.

Best, Kathy

On 5/9/2019 12:04 PM, BECKHAM, Brian wrote:

Michael,

I would personally prefer not to get into a Google search race for some kind of “exceptions to prove the rule” and also because “tattoos” is not a class of marks <https://trademark.eu/list-of-classes-with-explanatory-notes/>, but these articles could be of interest in terms of explaining why they may seek such a defensive sunrise registration:

https://www.pinterest.ch/steelephotograp/mini-cooper-tattoos/

https://metro.co.uk/2011/01/25/andreas-muller-has-mini-tattooed-on-penis-to-...

Also, while MINI may not make motorcycles, their sister company BMW does, so they could well branch out into that product area (including related services).

I have already suggested improvements to the SDRP on several occasions, going back almost 2 years now (those were apparently parked in preference of various data seeking exercises), so would respectfully suggest that others take the baton from here.

As I said, I believe there is a genuine willingness to explore such solutions.

At the same time, it seems unlikely that the current proposal No. 13 is likely to garner consensus, and will defer to the Sub Team Co-Chairs to address that at the level of our present discussions.

Brian

*From:*Michael Karanicolas <mkaranicolas@gmail.com> <mailto:mkaranicolas@gmail.com> *Sent:* Thursday, May 9, 2019 5:50 PM *To:* BECKHAM, Brian <brian.beckham@wipo.int> <mailto:brian.beckham@wipo.int> *Cc:* Ariel Liang <ariel.liang@icann.org> <mailto:ariel.liang@icann.org>; gnso-rpm-sunrise@icann.org <mailto:gnso-rpm-sunrise@icann.org> *Subject:* Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Interesting, thanks for sharing. I checked whether Mini made motorcycles before I sent my proposal in... I didn't think to check whether they made regular bicycles!

By any chance, were you able to find any examples of the company branching into the tattoo business as well (http://mini.tattoo)?

I'm not sure if this presents a "nuance" in trademark classes. I don't think it's much of a revelation that "bikes" can refer to motorcycles or regular bicycles. All this represents is a product line I was unaware of. And under my proposal, all Mini would have to do would be to include the link you provided when they register the domain under sunrise, and that should be that.

Personally, I don't see how the SDRP challenge process could be retooled to turn it into something that adequately represents the interests of potential future registrants without injecting massive amounts of transparency into the sunrise and TMCH processes... but I would be interested to hear your thoughts as to how this might work.

On Thu, May 9, 2019 at 12:38 PM BECKHAM, Brian <brian.beckham@wipo.int <mailto:brian.beckham@wipo.int>> wrote:

Thanks Ariel,

Copying here, my full email to the Sunrise List from earlier today as it relates to proposal No. 13:

--

Thanks Julie,

Just for fun (as I am aware the example was merely anecdotal), further to our hypothesizing last night, indeed, MINI does have a range of folding bikes:

https://www.bmwblog.com/2018/02/28/new-mini-folding-bike/

This does however illustrate in some ways the nuance in trademark classes and TLD typology that may escape proposal No. 13 in its current form.

As I mentioned on our call, I believe there is a shared willingness to address the issue Michael has raised, but via the SDRP challenge process, and not via claims exclusions.

Brian

--

Brian

*From:*Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org <mailto:gnso-rpm-sunrise-bounces@icann.org>> *On Behalf Of *Ariel Liang *Sent:* Thursday, May 9, 2019 5:36 PM *To:* gnso-rpm-sunrise@icann.org <mailto:gnso-rpm-sunrise@icann.org> *Subject:* [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Dear Sunrise Sub Team members,

As announced, this thread is being opened for final mailing list discussions related to *Sunrise Agreed Charter Question 9*, including *Proposal #13*.

We ask that you review the *Summary Table* *(as of 16 April 2019) *and provide any additional input you may have to the “*proposed answers & preliminary recommendations*” in relation to the Agreed Charter Question, and consider *draft answers *to the following questions regarding the individual proposal:

a. Should the Sub Team recommend that the full WG consider including this Individual Proposal in the Initial Report for the solicitation of public comment?

b. In light of the Individual Proposal, are any modifications to the current “tentative answers & preliminary recommendations” needed?

c. Should any additional Sub Team recommendations be made in relation to the agreed Sunrise charter question?

Unless the Sub Team Co-Chairs determine otherwise, this discussion thread will remain open until *23:59 UTC on 22 May 2019*. Comments/input provided past the closing date or outside this discussion thread will not be taken into account when compiling the final Sub Team member input.

*Summary Table (Pages 36-40)*

The draft answers, preliminary recommendations, and links to the relevant individual proposals are in the latest Summary Table (as of 16 April 2019):

https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ....

*Agreed Sunrise Charter Question 9**(Page 36)*

The Sub Team just discussed Agreed Charter Question 9 on 08 May 2019, hence the proposed answers are “TBD”. Based on the Sub Team’s discussions, the transcript and notes, staff will provide update.

/ Q9 In light of the evidence gathered above, should the scope of Sunrise Registrations be limited to the categories of goods and services for which? /

*_Proposed Answer_**: *TBD

*Individual Proposal*

The Sub Team just discussed the Proposal #13 on 08 May 2019, hence there is no draft answer currently on the Summary Table (as of 16 April 2019). Based on the Sub Team’sdiscussions, the transcript and notes, staff will provide.

Link to the individual proposal is included below.

*Proposal #13*: https://community.icann.org/download/attachments/102146375/Proposal%2313.pdf...

*Where to Find All Discussion Threads***

Access the Documents wiki page and find the opening messages of the all discussion threads in the table (highlighted in green): https://community.icann.org/x/_oIWBg

Best Regards,

Mary, Julie, Ariel

World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.

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Kathy, all, Just wanted to provide some additional context regarding the IRT Report recommendation that was cited on today’s call, i.e. the either/or on Sunrise and Claims. As you may recall, the IRT operated under a broad mandate - to review public comments on the Applicant Guidebook and to develop RPM recommendations for implementation into the new gTLD program (based on the new gTLD PDP Policy recommendation that “Strings should not infringe the legal rights of others.”) Ultimately, the IRT Report advanced a broad set of RPMs, including a “Globally Protected Marks List”. The IRT was explicit that the RPMs contained in the report were all inter-related and were put forward as an unified set of trademark protections. In other words, even if minor modifications were made to one RPM, it would impact the interdependencies and throw off the level of protection that the RPMs were intended to provide together as a unit. This is one of the main reasons why the IRT committee recommended in its final report that a registry could choose between Sunrise or Claims, because the other RPMs were designed to work together as a tapestry of protections. After the IRT concluded its work, many of the committee’s recommendations were watered down and some were rejected outright by the Board after the final IRT report was issued for public comment. As a result, the RPMs that exist today do not mirror what was contained the IRT report, so Sunrise remains as the essential protection. Sunrise is the only RPM that provides pre-entry protection to consumers and brand owners. While the other RPMs are helpful and necessary, such as TM Claims, URS, and UDRP, they are all post-entry in form, i.e. the harm has to take place before the protection applies. This makes for an extremely costly process and one that is potentially harmful - both in terms to the brand and to consumers, who are often targeted by the registration abuse (in some cases through criminal schemes). Sunrise helps prevent those harms from taking place to begin with - since it is a pre-entry protection, and kicks in before the harm takes root. I hope this helps clarify the context of the IRT report recommendation on Sunrise and the importance of Sunrise overall in the current ecosystem. Best regards, Claudio On Wednesday, May 22, 2019, Zak Muscovitch <zak@muscovitch.com> wrote:

Seems to me that the important balance that was originally struck in terms of creating Sunrise to address the release of new gTLD’s, as described by Kristine in today’s call, could stand to be finer tuned in light of the known by-product results to-date, while still maintaining Sunrise as a tool for trademark rights holders.

Accordingly, proposals such as Michael’s would potentially enable those that want Sunrise to continue, to be satisfied, while offering up some modest improvements to satisfy those that want better protections for people other than trademark holders. I therefore agree that this proposal has merit, and think that this proposal should be negotiated within the context of the debate about whether to continue or discontinue Sunrise, as a possible partial compromise thereto.

Zak Muscovitch.

------------------------------ *From:* Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org> on behalf of Mitch Stoltz <mitch@eff.org> *Sent:* Wednesday, May 22, 2019 8:44 PM *To:* gnso-rpm-sunrise@icann.org *Subject:* Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

This working group has hit on numerous problems with the Sunrise regime, with harms falling disproportionately on non-commercial and small business registrants. Michael K. has proposed a narrow solution to one of these problems, and I think it deserves serious consideration.

Quite simply, Sunrise as it exists is an expansion of trademark rights. Allowing priority registration without regard to the actual goods and services to which a mark pertains turns a trademark from a source identifier into a global dominion over a word or phrase. We have ample evidence that Sunrise is being abused in just that way. Looking beyond obvious abuses, there is little or no justification for giving trademark holders priority registration in TLDs that are clearly orthogonal to any product or service the mark-holder offers.

At scale, having that priority absolutely harms the free expression rights of others. To use a simple example, Apple is a distinctive trademark in consumer technology but a generic word in many other circumstances. There are any number of individuals and organizations who should be able to express themselves with a domain name containing Apple, in ways that raise no possibility of trademark infringement or cybersquatting. All of these potential users should have equal opportunity to register "apple" in new TLDs that don't raise an association with technology products.

Moreover, we need to be consistent about questions of scale. If sunrise registrations are used often enough to provide benefit to trademark holders, then they are also being used often enough to interfere with the rights of noncommercial users. And if they are not used very much at all, then we should be jettisoning the program as unnecessary. If Sunrise is to continue, Michael's proposal is a straightforward way of making it conform to the actual legal rights it's meant to protect.

Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142https://www.eff.org/donate | https://act.eff.org/

On 5/15/19 8:09 AM, Kathy Kleiman wrote:

Hi Phil,

As a co-chair, I'm a little surprised by the vehemence of the debate. Many of us are lawyers and we're used to talking about important issues in dispassionate ways. I think we should do so here.

As an ordinary member, I participate in these discussions, as you and Brian do, and in that capacity, I note that we have a problem. I also see the seeds of the solution in your answer below.

In 2009, we foresaw that there might be gaming of the Sunrise period -- people registering trademarks for ordinary words to get priority during Sunrise. We now see it happening. Journalists, reporters and bloggers have done the work for us -- and no one seems surprised by their results. I list some of the articles we (as a Subteam) collected below. Links in our Sunrise Summary Table under Q9 - https://community.icann.org/ download/attachments/102138618/%5BSunrise%20Summary%20Table%5D%20%2816% 20April%202019%29.pdf?version=1&modificationDate=1555515624235&api=v2

Nothing in the MK proposal is burdensome, or unusual. It's narrowly-tailored (too narrowly-tailored in my view) to prevent gaming and to use systems already in place.

As you note below, the cost of the vetting is part of the process for many gTLDs and ccTLDs -- whether it is providing residency in Japan or the objective standard for .bank or .insurance or .attorney or .cpa. It's already built into our processes -- and not burdensome -- and easily extended to Sunrise.

We know there is a misuse and even abuse of the Sunrise system. The MK proposal is an easy fix, and one that actually protects and preserves the balance of rights. We are being asked to solve problems -- and this is a big one.

Best, Kathy

*Articles in our gathering data (links in Summary Table):*

*● How one guy games new gTLD sunrise periods* *● Fake Trademarks Stealing Generic Domains In New gTLD Sunrises* *● The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The"* *● How common words like Pizza, Money, and Shopping ended up in the Trademark Clearinghouse for new TLDs* *● The numbers are in! Donuts sunrises typically get 100+ domains, but they also got gamed* *● Digging in on Donuts’ Sunrise: Amazon tops the list, gaming, and top registrars* *● .Build Registry Using Questionable Swiss Trademark Registration To Grab “Build” Domains In Sunrise* *● How Did RetailMeNot Get 849 .Codes Domains In Sunrise Without AnyTrademarks?*

On 5/15/2019 10:10 AM, Corwin, Philip wrote:

Kathy:

I presume that these are your personal views, just as the email I posted last week raising serious doubts about Michael’s proposal were clearly labeled as personal. Likewise, what follows is an expression of personal views.

Not to repeat myself, but to the extent there is gaming based on weak marks it should be a focus of discussion when we review requirements for mark recordation in the TMCH. But I have seen no substantial evidence that legitimate trademark holders are seeking to utilize sunrise registrations in gTLDs other than those for which they have a good faith belief that registration is necessary for brand protection. Even where a sunrise registration might arguably be abusive, I do not see that as placing any burden on the speech rights of others who wish to register a domain name that bears some resemblance.

I also described why I believe adoption of this proposal will require a costly bureaucracy to yield reasonably consistent applications of what will always be a subjective standard subject to interpretation. I do not see this as the same as the objective standard for a .bank or .insurance domain (where the cost of vetting is built into the registration fee, and the requirement is satisfied by furnishing a certificate evidencing that the applicant is a regulated institution) or even ccTLDs, where some have objective criteria to demonstrate being domiciled or doing business in a particular jurisdiction. While I don’t believe that Michael has the responsibility to provide a full-blown implementation scheme, I have not yet heard a credible explanation of how adoption of a relationship test will be consistently administered in a cost-effective way.

Finally, and more broadly, we are in the process of considering proposals to recommend to the full WG for inclusion in the Initial Report for public comment. While that does not require a demonstration of consensus at this point, it should require some reasonably strong support within the sub team and, following that, the WG; and some prospect that the proposal can achieve consensus down the road within the WG (for the Final Report) and Council. Frankly, I don’t see that reasonably strong support for Michael’s proposal within the sub team but rather a sharp divide over whether there is even a problem that requires addressing. And, while I have no crystal ball, I feel reasonably confident that in the end contracted parties will oppose it for administrative and cost reasons, among others, and that BC and IPC members will oppose it as putting yet another burden on sunrise registrations – so I don’t see any prospect of consensus.

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way <https://maps.google.com/?q=12061+Bluemont+Way+%0D%0AReston,+VA+20190&entry=g...> Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

*"Luck is the residue of design" -- Branch Rickey*

*From:* Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org> <gnso-rpm-sunrise-bounces@icann.org> *On Behalf Of *Kathy Kleiman *Sent:* Wednesday, May 15, 2019 9:04 AM *To:* gnso-rpm-sunrise@icann.org *Subject:* [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Hi All,

I think the discussion is an important one because it is brings up issues across categories.

a) Michael's proposal addresses a problem we have found in our data-driven analysis. There are gamers out there who are registering trademarks in a certain category of goods and services, and then using them to register an array of domain names in Sunrise having nothing at all to do with the categories of their trademark registration.

We committed at the outset of the RPMs -- in the 2009 era - that we would not be expanding trademark rights. That's exactly what is happening in these situations and registrations.

b) The SDRP is broken - barely used because the Trademark Clearinghouse was supposed to be public, during implementation it was turned private, so challengers cannot get the information they need to challenge. Plus, it's not the job a challenger to police the basic principle of the entire RPM process.

Brian, you have mentioned your "suggested improvements to the SDRP" from 2 years ago several times, but that was 1000s of emails ago, and we worked hard to compile the data and solutions that we are looking at today. Per the rules that we agreed to as Co-Chairs and as a WG, we created a new table, atop extensive data gathering, and things must be reintroduced from prior to our URS break. If you could do so, that would be very timely.

I've suggested changes to the SDRP that would give challengers some chance to use it -- although only for the narrow purpose intended. The SDRP was not intended to solve a broad gaming problem -- because we did not anticipate one. We know know it exists; and a policy/operational fix resolves it.

c) Michael suggests a narrowly tailored solution for a gaming problem that we now know exists. His solution is completely consistent with how registrars, in many of these gTLDs, already handle General Availability (e.g., required proof to register in .BANK). It's not a new process -- just a way to use existing process to avoid gaming and preserve the principles we agreed to in this process.

Best, Kathy

On 5/9/2019 12:04 PM, BECKHAM, Brian wrote:

Michael,

I would personally prefer not to get into a Google search race for some kind of “exceptions to prove the rule” and also because “tattoos” is not a class of marks <https://trademark.eu/list-of-classes-with-explanatory-notes/>, but these articles could be of interest in terms of explaining why they may seek such a defensive sunrise registration:

https://www.pinterest.ch/steelephotograp/mini-cooper-tattoos/

https://metro.co.uk/2011/01/25/andreas-muller-has-mini- tattooed-on-penis-to-win-car-632961/

Also, while MINI may not make motorcycles, their sister company BMW does, so they could well branch out into that product area (including related services).

I have already suggested improvements to the SDRP on several occasions, going back almost 2 years now (those were apparently parked in preference of various data seeking exercises), so would respectfully suggest that others take the baton from here.

As I said, I believe there is a genuine willingness to explore such solutions.

At the same time, it seems unlikely that the current proposal No. 13 is likely to garner consensus, and will defer to the Sub Team Co-Chairs to address that at the level of our present discussions.

Brian

*From:* Michael Karanicolas <mkaranicolas@gmail.com> <mkaranicolas@gmail.com> *Sent:* Thursday, May 9, 2019 5:50 PM *To:* BECKHAM, Brian <brian.beckham@wipo.int> <brian.beckham@wipo.int> *Cc:* Ariel Liang <ariel.liang@icann.org> <ariel.liang@icann.org>; gnso-rpm-sunrise@icann.org *Subject:* Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Interesting, thanks for sharing. I checked whether Mini made motorcycles before I sent my proposal in... I didn't think to check whether they made regular bicycles!

By any chance, were you able to find any examples of the company branching into the tattoo business as well (http://mini.tattoo)?

I'm not sure if this presents a "nuance" in trademark classes. I don't think it's much of a revelation that "bikes" can refer to motorcycles or regular bicycles. All this represents is a product line I was unaware of. And under my proposal, all Mini would have to do would be to include the link you provided when they register the domain under sunrise, and that should be that.

Personally, I don't see how the SDRP challenge process could be retooled to turn it into something that adequately represents the interests of potential future registrants without injecting massive amounts of transparency into the sunrise and TMCH processes... but I would be interested to hear your thoughts as to how this might work.

On Thu, May 9, 2019 at 12:38 PM BECKHAM, Brian <brian.beckham@wipo.int> wrote:

Thanks Ariel,

Copying here, my full email to the Sunrise List from earlier today as it relates to proposal No. 13:

--

Thanks Julie,

Just for fun (as I am aware the example was merely anecdotal), further to our hypothesizing last night, indeed, MINI does have a range of folding bikes:

https://www.bmwblog.com/2018/02/28/new-mini-folding-bike/

This does however illustrate in some ways the nuance in trademark classes and TLD typology that may escape proposal No. 13 in its current form.

As I mentioned on our call, I believe there is a shared willingness to address the issue Michael has raised, but via the SDRP challenge process, and not via claims exclusions.

Brian

--

Brian

*From:* Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org> *On Behalf Of *Ariel Liang *Sent:* Thursday, May 9, 2019 5:36 PM *To:* gnso-rpm-sunrise@icann.org *Subject:* [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Dear Sunrise Sub Team members,

As announced, this thread is being opened for final mailing list discussions related to *Sunrise Agreed Charter Question 9*, including *Proposal #13*.

We ask that you review the *Summary Table* *(as of 16 April 2019) *and provide any additional input you may have to the “*proposed answers & preliminary recommendations*” in relation to the Agreed Charter Question, and consider *draft answers *to the following questions regarding the individual proposal:

a. Should the Sub Team recommend that the full WG consider including this Individual Proposal in the Initial Report for the solicitation of public comment?

b. In light of the Individual Proposal, are any modifications to the current “tentative answers & preliminary recommendations” needed?

c. Should any additional Sub Team recommendations be made in relation to the agreed Sunrise charter question?

Unless the Sub Team Co-Chairs determine otherwise, this discussion thread will remain open until *23:59 UTC on 22 May 2019*. Comments/input provided past the closing date or outside this discussion thread will not be taken into account when compiling the final Sub Team member input.

*Summary Table (Pages 36-40)*

The draft answers, preliminary recommendations, and links to the relevant individual proposals are in the latest Summary Table (as of 16 April 2019):

https://community.icann.org/download/attachments/102138618/%5BSunrise% 20Summary%20Table%5D%20%2816%20April%202019%29.pdf?version= 1&modificationDate=1555515624235&api=v2.

*Agreed Sunrise Charter Question 9** (Page 36)*

The Sub Team just discussed Agreed Charter Question 9 on 08 May 2019, hence the proposed answers are “TBD”. Based on the Sub Team’s discussions, the transcript and notes, staff will provide update.

* Q9 In light of the evidence gathered above, should the scope of Sunrise Registrations be limited to the categories of goods and services for which? *

*Proposed Answer**: *TBD

*Individual Proposal*

The Sub Team just discussed the Proposal #13 on 08 May 2019, hence there is no draft answer currently on the Summary Table (as of 16 April 2019). Based on the Sub Team’s discussions, the transcript and notes, staff will provide.

Link to the individual proposal is included below.

*Proposal #13*: https://community.icann.org/download/attachments/ 102146375/Proposal%2313.pdf?api=v2

*Where to Find All Discussion Threads*

Access the Documents wiki page and find the opening messages of the all discussion threads in the table (highlighted in green): https://community.icann.org/x/_oIWBg

Best Regards,

Mary, Julie, Ariel

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Zak, I would concur, but I don’t see eliminating Sunrise and keeping it place as two equal sides of the same coin, which results in that solution not really being a ‘middle ground’ between them. There has been no compelling evidence presented that justifies eliminating Sunrise in its entirety (putting aside the philosophical differences that some may have about its implicit proprietary), compared to the vast array of reasons that reflect the continued need and importance of the RPM. For example, by certain measures cybersquatting in new gTLDs is equal to or exceeds the pace in legacy domains, even though legacy domains have vastly more legitimate commerce and use (think .com), and even though new gTLDs have some additional RPMs in place (such as the URS). This outcome occurs for several important reasons, including the fact that some new gTLDs sell for as little as one penny per registration. Prices at that level make those domains even more of a juicy target. And in legacy domains the trademark owner often has their exact match domain registered (along with countless number of typo variations) whereas new gTLDs are fresh grounds and prime real estate for cyber-squatting because the exact match domain is still available for registration, including in TLDs that are completely unrelated to the brand. The balancing act that took place on the last round resulted in IRT proposed RPMs being watered down or eliminated in their entirety. This is what prompted the drawn out process and the GAC stepping in for public policy reasons. It was much harder for the Board to reject recommendations from the GAC. In the current day and age, the Sub Pro WG is working on moving forward with another round as expeditiously as possible. I remain open to compromise solutions. I think Greg put a few good ones forward on today’s call and we should continue looking for additional options. Best regards, Claudio On Wednesday, May 22, 2019, Zak Muscovitch <zak@muscovitch.com> wrote:

Seems to me that the important balance that was originally struck in terms of creating Sunrise to address the release of new gTLD’s, as described by Kristine in today’s call, could stand to be finer tuned in light of the known by-product results to-date, while still maintaining Sunrise as a tool for trademark rights holders.

Accordingly, proposals such as Michael’s would potentially enable those that want Sunrise to continue, to be satisfied, while offering up some modest improvements to satisfy those that want better protections for people other than trademark holders. I therefore agree that this proposal has merit, and think that this proposal should be negotiated within the context of the debate about whether to continue or discontinue Sunrise, as a possible partial compromise thereto.

Zak Muscovitch.

------------------------------ *From:* Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org> on behalf of Mitch Stoltz <mitch@eff.org> *Sent:* Wednesday, May 22, 2019 8:44 PM *To:* gnso-rpm-sunrise@icann.org *Subject:* Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

This working group has hit on numerous problems with the Sunrise regime, with harms falling disproportionately on non-commercial and small business registrants. Michael K. has proposed a narrow solution to one of these problems, and I think it deserves serious consideration.

Quite simply, Sunrise as it exists is an expansion of trademark rights. Allowing priority registration without regard to the actual goods and services to which a mark pertains turns a trademark from a source identifier into a global dominion over a word or phrase. We have ample evidence that Sunrise is being abused in just that way. Looking beyond obvious abuses, there is little or no justification for giving trademark holders priority registration in TLDs that are clearly orthogonal to any product or service the mark-holder offers.

At scale, having that priority absolutely harms the free expression rights of others. To use a simple example, Apple is a distinctive trademark in consumer technology but a generic word in many other circumstances. There are any number of individuals and organizations who should be able to express themselves with a domain name containing Apple, in ways that raise no possibility of trademark infringement or cybersquatting. All of these potential users should have equal opportunity to register "apple" in new TLDs that don't raise an association with technology products.

Moreover, we need to be consistent about questions of scale. If sunrise registrations are used often enough to provide benefit to trademark holders, then they are also being used often enough to interfere with the rights of noncommercial users. And if they are not used very much at all, then we should be jettisoning the program as unnecessary. If Sunrise is to continue, Michael's proposal is a straightforward way of making it conform to the actual legal rights it's meant to protect.

Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142https://www.eff.org/donate | https://act.eff.org/

On 5/15/19 8:09 AM, Kathy Kleiman wrote:

Hi Phil,

As a co-chair, I'm a little surprised by the vehemence of the debate. Many of us are lawyers and we're used to talking about important issues in dispassionate ways. I think we should do so here.

As an ordinary member, I participate in these discussions, as you and Brian do, and in that capacity, I note that we have a problem. I also see the seeds of the solution in your answer below.

In 2009, we foresaw that there might be gaming of the Sunrise period -- people registering trademarks for ordinary words to get priority during Sunrise. We now see it happening. Journalists, reporters and bloggers have done the work for us -- and no one seems surprised by their results. I list some of the articles we (as a Subteam) collected below. Links in our Sunrise Summary Table under Q9 - https://community.icann.org/ download/attachments/102138618/%5BSunrise%20Summary%20Table%5D%20%2816% 20April%202019%29.pdf?version=1&modificationDate=1555515624235&api=v2

Nothing in the MK proposal is burdensome, or unusual. It's narrowly-tailored (too narrowly-tailored in my view) to prevent gaming and to use systems already in place.

As you note below, the cost of the vetting is part of the process for many gTLDs and ccTLDs -- whether it is providing residency in Japan or the objective standard for .bank or .insurance or .attorney or .cpa. It's already built into our processes -- and not burdensome -- and easily extended to Sunrise.

We know there is a misuse and even abuse of the Sunrise system. The MK proposal is an easy fix, and one that actually protects and preserves the balance of rights. We are being asked to solve problems -- and this is a big one.

Best, Kathy

*Articles in our gathering data (links in Summary Table):*

*● How one guy games new gTLD sunrise periods* *● Fake Trademarks Stealing Generic Domains In New gTLD Sunrises* *● The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The"* *● How common words like Pizza, Money, and Shopping ended up in the Trademark Clearinghouse for new TLDs* *● The numbers are in! Donuts sunrises typically get 100+ domains, but they also got gamed* *● Digging in on Donuts’ Sunrise: Amazon tops the list, gaming, and top registrars* *● .Build Registry Using Questionable Swiss Trademark Registration To Grab “Build” Domains In Sunrise* *● How Did RetailMeNot Get 849 .Codes Domains In Sunrise Without AnyTrademarks?*

On 5/15/2019 10:10 AM, Corwin, Philip wrote:

Kathy:

I presume that these are your personal views, just as the email I posted last week raising serious doubts about Michael’s proposal were clearly labeled as personal. Likewise, what follows is an expression of personal views.

Not to repeat myself, but to the extent there is gaming based on weak marks it should be a focus of discussion when we review requirements for mark recordation in the TMCH. But I have seen no substantial evidence that legitimate trademark holders are seeking to utilize sunrise registrations in gTLDs other than those for which they have a good faith belief that registration is necessary for brand protection. Even where a sunrise registration might arguably be abusive, I do not see that as placing any burden on the speech rights of others who wish to register a domain name that bears some resemblance.

I also described why I believe adoption of this proposal will require a costly bureaucracy to yield reasonably consistent applications of what will always be a subjective standard subject to interpretation. I do not see this as the same as the objective standard for a .bank or .insurance domain (where the cost of vetting is built into the registration fee, and the requirement is satisfied by furnishing a certificate evidencing that the applicant is a regulated institution) or even ccTLDs, where some have objective criteria to demonstrate being domiciled or doing business in a particular jurisdiction. While I don’t believe that Michael has the responsibility to provide a full-blown implementation scheme, I have not yet heard a credible explanation of how adoption of a relationship test will be consistently administered in a cost-effective way.

Finally, and more broadly, we are in the process of considering proposals to recommend to the full WG for inclusion in the Initial Report for public comment. While that does not require a demonstration of consensus at this point, it should require some reasonably strong support within the sub team and, following that, the WG; and some prospect that the proposal can achieve consensus down the road within the WG (for the Final Report) and Council. Frankly, I don’t see that reasonably strong support for Michael’s proposal within the sub team but rather a sharp divide over whether there is even a problem that requires addressing. And, while I have no crystal ball, I feel reasonably confident that in the end contracted parties will oppose it for administrative and cost reasons, among others, and that BC and IPC members will oppose it as putting yet another burden on sunrise registrations – so I don’t see any prospect of consensus.

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way <https://maps.google.com/?q=12061+Bluemont+Way+%0D%0AReston,+VA+20190&entry=g...> Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

*"Luck is the residue of design" -- Branch Rickey*

*From:* Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org> <gnso-rpm-sunrise-bounces@icann.org> *On Behalf Of *Kathy Kleiman *Sent:* Wednesday, May 15, 2019 9:04 AM *To:* gnso-rpm-sunrise@icann.org *Subject:* [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Hi All,

I think the discussion is an important one because it is brings up issues across categories.

a) Michael's proposal addresses a problem we have found in our data-driven analysis. There are gamers out there who are registering trademarks in a certain category of goods and services, and then using them to register an array of domain names in Sunrise having nothing at all to do with the categories of their trademark registration.

We committed at the outset of the RPMs -- in the 2009 era - that we would not be expanding trademark rights. That's exactly what is happening in these situations and registrations.

b) The SDRP is broken - barely used because the Trademark Clearinghouse was supposed to be public, during implementation it was turned private, so challengers cannot get the information they need to challenge. Plus, it's not the job a challenger to police the basic principle of the entire RPM process.

Brian, you have mentioned your "suggested improvements to the SDRP" from 2 years ago several times, but that was 1000s of emails ago, and we worked hard to compile the data and solutions that we are looking at today. Per the rules that we agreed to as Co-Chairs and as a WG, we created a new table, atop extensive data gathering, and things must be reintroduced from prior to our URS break. If you could do so, that would be very timely.

I've suggested changes to the SDRP that would give challengers some chance to use it -- although only for the narrow purpose intended. The SDRP was not intended to solve a broad gaming problem -- because we did not anticipate one. We know know it exists; and a policy/operational fix resolves it.

c) Michael suggests a narrowly tailored solution for a gaming problem that we now know exists. His solution is completely consistent with how registrars, in many of these gTLDs, already handle General Availability (e.g., required proof to register in .BANK). It's not a new process -- just a way to use existing process to avoid gaming and preserve the principles we agreed to in this process.

Best, Kathy

On 5/9/2019 12:04 PM, BECKHAM, Brian wrote:

Michael,

I would personally prefer not to get into a Google search race for some kind of “exceptions to prove the rule” and also because “tattoos” is not a class of marks <https://trademark.eu/list-of-classes-with-explanatory-notes/>, but these articles could be of interest in terms of explaining why they may seek such a defensive sunrise registration:

https://www.pinterest.ch/steelephotograp/mini-cooper-tattoos/

https://metro.co.uk/2011/01/25/andreas-muller-has-mini- tattooed-on-penis-to-win-car-632961/

Also, while MINI may not make motorcycles, their sister company BMW does, so they could well branch out into that product area (including related services).

I have already suggested improvements to the SDRP on several occasions, going back almost 2 years now (those were apparently parked in preference of various data seeking exercises), so would respectfully suggest that others take the baton from here.

As I said, I believe there is a genuine willingness to explore such solutions.

At the same time, it seems unlikely that the current proposal No. 13 is likely to garner consensus, and will defer to the Sub Team Co-Chairs to address that at the level of our present discussions.

Brian

*From:* Michael Karanicolas <mkaranicolas@gmail.com> <mkaranicolas@gmail.com> *Sent:* Thursday, May 9, 2019 5:50 PM *To:* BECKHAM, Brian <brian.beckham@wipo.int> <brian.beckham@wipo.int> *Cc:* Ariel Liang <ariel.liang@icann.org> <ariel.liang@icann.org>; gnso-rpm-sunrise@icann.org *Subject:* Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Interesting, thanks for sharing. I checked whether Mini made motorcycles before I sent my proposal in... I didn't think to check whether they made regular bicycles!

By any chance, were you able to find any examples of the company branching into the tattoo business as well (http://mini.tattoo)?

I'm not sure if this presents a "nuance" in trademark classes. I don't think it's much of a revelation that "bikes" can refer to motorcycles or regular bicycles. All this represents is a product line I was unaware of. And under my proposal, all Mini would have to do would be to include the link you provided when they register the domain under sunrise, and that should be that.

Personally, I don't see how the SDRP challenge process could be retooled to turn it into something that adequately represents the interests of potential future registrants without injecting massive amounts of transparency into the sunrise and TMCH processes... but I would be interested to hear your thoughts as to how this might work.

On Thu, May 9, 2019 at 12:38 PM BECKHAM, Brian <brian.beckham@wipo.int> wrote:

Thanks Ariel,

Copying here, my full email to the Sunrise List from earlier today as it relates to proposal No. 13:

--

Thanks Julie,

Just for fun (as I am aware the example was merely anecdotal), further to our hypothesizing last night, indeed, MINI does have a range of folding bikes:

https://www.bmwblog.com/2018/02/28/new-mini-folding-bike/

This does however illustrate in some ways the nuance in trademark classes and TLD typology that may escape proposal No. 13 in its current form.

As I mentioned on our call, I believe there is a shared willingness to address the issue Michael has raised, but via the SDRP challenge process, and not via claims exclusions.

Brian

--

Brian

*From:* Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org> *On Behalf Of *Ariel Liang *Sent:* Thursday, May 9, 2019 5:36 PM *To:* gnso-rpm-sunrise@icann.org *Subject:* [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Dear Sunrise Sub Team members,

As announced, this thread is being opened for final mailing list discussions related to *Sunrise Agreed Charter Question 9*, including *Proposal #13*.

We ask that you review the *Summary Table* *(as of 16 April 2019) *and provide any additional input you may have to the “*proposed answers & preliminary recommendations*” in relation to the Agreed Charter Question, and consider *draft answers *to the following questions regarding the individual proposal:

a. Should the Sub Team recommend that the full WG consider including this Individual Proposal in the Initial Report for the solicitation of public comment?

b. In light of the Individual Proposal, are any modifications to the current “tentative answers & preliminary recommendations” needed?

c. Should any additional Sub Team recommendations be made in relation to the agreed Sunrise charter question?

Unless the Sub Team Co-Chairs determine otherwise, this discussion thread will remain open until *23:59 UTC on 22 May 2019*. Comments/input provided past the closing date or outside this discussion thread will not be taken into account when compiling the final Sub Team member input.

*Summary Table (Pages 36-40)*

The draft answers, preliminary recommendations, and links to the relevant individual proposals are in the latest Summary Table (as of 16 April 2019):

https://community.icann.org/download/attachments/102138618/%5BSunrise% 20Summary%20Table%5D%20%2816%20April%202019%29.pdf?version= 1&modificationDate=1555515624235&api=v2.

*Agreed Sunrise Charter Question 9** (Page 36)*

The Sub Team just discussed Agreed Charter Question 9 on 08 May 2019, hence the proposed answers are “TBD”. Based on the Sub Team’s discussions, the transcript and notes, staff will provide update.

* Q9 In light of the evidence gathered above, should the scope of Sunrise Registrations be limited to the categories of goods and services for which? *

*Proposed Answer**: *TBD

*Individual Proposal*

The Sub Team just discussed the Proposal #13 on 08 May 2019, hence there is no draft answer currently on the Summary Table (as of 16 April 2019). Based on the Sub Team’s discussions, the transcript and notes, staff will provide.

Link to the individual proposal is included below.

*Proposal #13*: https://community.icann.org/download/attachments/ 102146375/Proposal%2313.pdf?api=v2

*Where to Find All Discussion Threads*

Access the Documents wiki page and find the opening messages of the all discussion threads in the table (highlighted in green): https://community.icann.org/x/_oIWBg

Best Regards,

Mary, Julie, Ariel

World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.

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Hi Claudio,    According to your numbers, trademark holders have registered between 105,000 and 140,000 domains that were never available to noncommercial users. You and others suggest that most of these registrations were “defensive,” meaning that they were done primarily to prevent anyone else from registering those domain names - not to use them. What’s more, given the little we know about what marks are in the TMCH, a great many of those domain names are either commons words, or words that are associated with a product or service ONLY in particular contexts. This represents an enormous loss to the public that will only grow as new gTLDs roll out. I take issue with your suggestion that noncommercial users can simply choose a different domain name that hasn’t been taken by trademark holders before public availability. For a noncommercial user, the expressive value of a domain name can be equal to or greater than its value to a commercial user. A noncommercial user acting in good faith should have equal opportunity to register a domain. Yes, rightsholders can choose to register domains in sunrise based on their internal calculus about where "abuse" is likely to happen, but they are also currently free to act as though good faith registrations by noncommercial users are "abuse." That's a fundamental flaw in the Sunrise mechanism. At a minimum, Michael Karanicolas's proposal to limit sunrise registrations based on the goods and services actually sold by the rightsholder would begin to address this.    Best,       Mitch Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate | https://act.eff.org/ On 5/22/19 8:46 PM, claudio di gangi wrote:

hi Mitch,

Sunrise registrations have averaged between 150 and 200 domains per TLD.

I believe there over 700 different new gTLDs where non-commercial users can register domains for non-commercial use.

For the purposes of consensus-building, when one does the math, can you kindly clarify on how this results with harms falling disproportionately on non-commercial registrants and small business registrants?

In terms of the orthogonal domains you mention, registration abuse that targets a brand can easily take place in these zones (and often does take place). Isn’t this a standing justification, along within the fact that only 150 to 200 domains are registered during Sunrise per TLD, for having Sunrise in place in to prevent consumer confusion and harm from taking place?

In terms of the question of scale that your mention, I don’t see a necessary inconsistency that should raise alarm.

One on hand, the brand owner is making an informed choice about where to protect their brand, often because they have been previously targeted and they recognize a pattern, or due to some other implicit connection with the brand that made not be readily apparent to an outside observer on the surface.

But for the vast majority of cases, defensive registrations are based on strategic factors, such as the likelihood of infringement in a particular TLD. I do consider this as resulting in ex-ante harm to non-commercial registrants, as for one reason there are virtually an unlimited number of registrations available in nearly a 1000 gTLDs. To take an extreme case, even in .com with nearly 140 million domains registered, successful domainers continue to profit and non-commercial users have meaningful choices for expression.

Thanks in advance for your thoughts.

Best regards, Claudio

On Wednesday, May 22, 2019, Mitch Stoltz <mitch@eff.org <mailto:mitch@eff.org>> wrote:

This working group has hit on numerous problems with the Sunrise regime, with harms falling disproportionately on non-commercial and small business registrants. Michael K. has proposed a narrow solution to one of these problems, and I think it deserves serious consideration.

Quite simply, Sunrise as it exists is an expansion of trademark rights. Allowing priority registration without regard to the actual goods and services to which a mark pertains turns a trademark from a source identifier into a global dominion over a word or phrase. We have ample evidence that Sunrise is being abused in just that way. Looking beyond obvious abuses, there is little or no justification for giving trademark holders priority registration in TLDs that are clearly orthogonal to any product or service the mark-holder offers.

At scale, having that priority absolutely harms the free expression rights of others. To use a simple example, Apple is a distinctive trademark in consumer technology but a generic word in many other circumstances. There are any number of individuals and organizations who should be able to express themselves with a domain name containing Apple, in ways that raise no possibility of trademark infringement or cybersquatting. All of these potential users should have equal opportunity to register "apple" in new TLDs that don't raise an association with technology products.

Moreover, we need to be consistent about questions of scale. If sunrise registrations are used often enough to provide benefit to trademark holders, then they are also being used often enough to interfere with the rights of noncommercial users. And if they are not used very much at all, then we should be jettisoning the program as unnecessary. If Sunrise is to continue, Michael's proposal is a straightforward way of making it conform to the actual legal rights it's meant to protect.

Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate |https://act.eff.org/

On 5/15/19 8:09 AM, Kathy Kleiman wrote:

...

Hi Phil,

As a co-chair, I'm a little surprised by the vehemence of the debate. Many of us are lawyers and we're used to talking about important issues in dispassionate ways. I think we should do so here.

As an ordinary member, I participate in these discussions, as you and Brian do, and in that capacity, I note that we have a problem.  I also see the seeds of the solution in your answer below.

In 2009, we foresaw that there might be gaming of the Sunrise period -- people registering trademarks for ordinary words to get priority during Sunrise. We now see it happening. Journalists, reporters and bloggers have done the work for us -- and no one seems surprised by their results.  I list some of the articles we (as a Subteam) collected below. Links in our Sunrise Summary Table under Q9 - https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ... <https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ...>

Nothing in the MK proposal is burdensome, or unusual. It's narrowly-tailored (too narrowly-tailored in my view) to prevent gaming and to use systems already in place.

As you note below, the cost of the vetting is part of the process for many gTLDs and ccTLDs -- whether it is providing residency in Japan or the objective standard for .bank or .insurance or .attorney or .cpa. It's already built into our processes -- and not burdensome -- and easily extended to Sunrise.

We know there is a misuse and even abuse of the Sunrise system. The MK proposal is an easy fix, and one that actually protects and preserves the balance of rights. We are being asked to solve problems -- and this is a big one.

Best, Kathy

*Articles in our gathering data (links in Summary Table):*

*● How one guy games new gTLD sunrise periods** **● Fake Trademarks Stealing Generic Domains In New gTLD Sunrises** **● The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The"** **● How common words like Pizza, Money, and Shopping ended up in  the Trademark Clearinghouse for new TLDs** **● The numbers are in! Donuts sunrises typically get 100+ domains, but they also got gamed** **● Digging in on Donuts’ Sunrise: Amazon tops the list, gaming, and top registrars** **● .Build Registry Using Questionable Swiss Trademark Registration To Grab “Build” Domains In Sunrise** **● How Did RetailMeNot Get 849 .Codes Domains In Sunrise Without AnyTrademarks?** *

On 5/15/2019 10:10 AM, Corwin, Philip wrote:

...

Kathy:

I presume that these are your personal views, just as the email I posted last week raising serious doubts about Michael’s proposal were clearly labeled as personal. Likewise, what follows is an expression of personal views.

Not to repeat myself, but to the extent there is gaming based on weak marks it should be a focus of discussion when we review requirements for mark recordation in the TMCH. But I have seen no substantial evidence that legitimate trademark holders are seeking to utilize sunrise registrations in gTLDs other than those for which they have a good faith belief that registration is necessary for brand protection. Even where a sunrise registration might arguably be abusive, I do not see that as placing any burden on the speech rights of others who wish to register a domain name that bears some resemblance.

I also described why I believe adoption of this proposal will require a costly bureaucracy to yield reasonably consistent applications of what will always be a subjective standard subject to interpretation. I do not see this as the same as the objective standard for a .bank or .insurance domain (where the cost of vetting is built into the registration fee, and the requirement is satisfied by furnishing a certificate evidencing that the applicant is a regulated institution) or even ccTLDs, where some have objective criteria to demonstrate being domiciled or doing business in a particular jurisdiction. While I don’t believe that Michael has the responsibility to provide a full-blown implementation scheme, I have not yet heard a credible explanation of how adoption of a relationship test will be consistently administered in a cost-effective way.

Finally, and more broadly, we are in the process of considering proposals to recommend to the full WG for inclusion in the Initial Report for public comment. While that does not require a demonstration of consensus at this point, it should require some reasonably strong support within the sub team and, following that, the WG;  and some prospect that the proposal can achieve consensus down the road within the WG (for the Final Report) and Council. Frankly, I don’t see that reasonably strong support for Michael’s proposal within the sub team but rather a sharp divide over whether there is even a problem that requires addressing. And, while I have no crystal ball, I feel reasonably confident that in the end contracted parties will oppose it for administrative and cost reasons, among others, and that BC and IPC members will oppose it as putting yet another burden on sunrise registrations – so I don’t see any prospect of consensus.

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way <https://maps.google.com/?q=12061+Bluemont+Way+%0D%0A++++++++++++++++Reston,+...> Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

/"Luck is the residue of design" -- Branch Rickey/

*From:*Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org> <mailto:gnso-rpm-sunrise-bounces@icann.org> *On Behalf Of *Kathy Kleiman *Sent:* Wednesday, May 15, 2019 9:04 AM *To:* gnso-rpm-sunrise@icann.org <mailto:gnso-rpm-sunrise@icann.org> *Subject:* [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Hi All,

I think the discussion is an important one because it is brings up issues across categories.

a) Michael's proposal addresses a problem we have found in our data-driven analysis. There are gamers out there who are registering trademarks in a certain category of goods and services, and then using them to register an array of domain names in Sunrise having nothing at all to do with the categories of their trademark registration.

We committed at the outset of the RPMs -- in the 2009 era - that we would not be expanding trademark rights. That's exactly what is happening in these situations and registrations.

b) The SDRP is broken - barely used because the Trademark Clearinghouse was supposed to be public, during implementation it was turned private, so challengers cannot get the information they need to challenge. Plus, it's not the job a challenger to police the basic principle of the entire RPM process.

Brian, you have mentioned your "suggested improvements to the SDRP" from 2 years ago several times, but that was 1000s of emails ago, and we worked hard to compile the data and solutions that we are looking at today. Per the rules that we agreed to as Co-Chairs and as a WG, we created a new table, atop extensive data gathering, and things must be reintroduced from prior to our URS break. If you could do so, that would be very timely.

I've suggested changes to the SDRP that would give challengers some chance to use it -- although only for the narrow purpose intended. The SDRP was not intended to solve a broad gaming problem -- because we did not anticipate one. We know know it exists; and a policy/operational fix resolves it.

c) Michael suggests a narrowly tailored solution for a gaming problem that we now know exists. His solution is completely consistent with how registrars, in many of these gTLDs, already handle General Availability (e.g., required proof to register in .BANK). It's not a new process -- just a way to use existing process to avoid gaming and preserve the principles we agreed to in this process.

Best, Kathy

On 5/9/2019 12:04 PM, BECKHAM, Brian wrote:

Michael,

I would personally prefer not to get into a Google search race for some kind of “exceptions to prove the rule” and also because “tattoos” is not a class of marks <https://trademark.eu/list-of-classes-with-explanatory-notes/>, but these articles could be of interest in terms of explaining why they may seek such a defensive sunrise registration:

https://www.pinterest.ch/steelephotograp/mini-cooper-tattoos/ <https://www.pinterest.ch/steelephotograp/mini-cooper-tattoos/>

https://metro.co.uk/2011/01/25/andreas-muller-has-mini-tattooed-on-penis-to-... <https://metro.co.uk/2011/01/25/andreas-muller-has-mini-tattooed-on-penis-to-...>

Also, while MINI may not make motorcycles, their sister company BMW does, so they could well branch out into that product area (including related services).

I have already suggested improvements to the SDRP on several occasions, going back almost 2 years now (those were apparently parked in preference of various data seeking exercises), so would respectfully suggest that others take the baton from here.

As I said, I believe there is a genuine willingness to explore such solutions.

At the same time, it seems unlikely that the current proposal No. 13 is likely to garner consensus, and will defer to the Sub Team Co-Chairs to address that at the level of our present discussions.

Brian

*From:*Michael Karanicolas <mkaranicolas@gmail.com> <mailto:mkaranicolas@gmail.com> *Sent:* Thursday, May 9, 2019 5:50 PM *To:* BECKHAM, Brian <brian.beckham@wipo.int> <mailto:brian.beckham@wipo.int> *Cc:* Ariel Liang <ariel.liang@icann.org> <mailto:ariel.liang@icann.org>; gnso-rpm-sunrise@icann.org <mailto:gnso-rpm-sunrise@icann.org> *Subject:* Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Interesting, thanks for sharing. I checked whether Mini made motorcycles before I sent my proposal in... I didn't think to check whether they made regular bicycles!

By any chance, were you able to find any examples of the company branching into the tattoo business as well (http://mini.tattoo)?

I'm not sure if this presents a "nuance" in trademark classes. I don't think it's much of a revelation that "bikes" can refer to motorcycles or regular bicycles. All this represents is a product line I was unaware of. And under my proposal, all Mini would have to do would be to include the link you provided when they register the domain under sunrise, and that should be that.

Personally, I don't see how the SDRP challenge process could be retooled to turn it into something that adequately represents the interests of potential future registrants without injecting massive amounts of transparency into the sunrise and TMCH processes... but I would be interested to hear your thoughts as to how this might work.

On Thu, May 9, 2019 at 12:38 PM BECKHAM, Brian <brian.beckham@wipo.int <mailto:brian.beckham@wipo.int>> wrote:

Thanks Ariel,

Copying here, my full email to the Sunrise List from earlier today as it relates to proposal No. 13:

--

Thanks Julie,

Just for fun (as I am aware the example was merely anecdotal), further to our hypothesizing last night, indeed, MINI does have a range of folding bikes:

https://www.bmwblog.com/2018/02/28/new-mini-folding-bike/ <https://www.bmwblog.com/2018/02/28/new-mini-folding-bike/>

This does however illustrate in some ways the nuance in trademark classes and TLD typology that may escape proposal No. 13 in its current form.

As I mentioned on our call, I believe there is a shared willingness to address the issue Michael has raised, but via the SDRP challenge process, and not via claims exclusions.

Brian

--

Brian

*From:*Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org <mailto:gnso-rpm-sunrise-bounces@icann.org>> *On Behalf Of *Ariel Liang *Sent:* Thursday, May 9, 2019 5:36 PM *To:* gnso-rpm-sunrise@icann.org <mailto:gnso-rpm-sunrise@icann.org> *Subject:* [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Dear Sunrise Sub Team members,

As announced, this thread is being opened for final mailing list discussions related to *Sunrise Agreed Charter Question 9*, including *Proposal #13*.

We ask that you review the *Summary Table* *(as of 16 April 2019) *and provide any additional input you may have to the “*proposed answers & preliminary recommendations*” in relation to the Agreed Charter Question, and consider *draft answers *to the following questions regarding the individual proposal:

a. Should the Sub Team recommend that the full WG consider including this Individual Proposal in the Initial Report for the solicitation of public comment?

b. In light of the Individual Proposal, are any modifications to the current “tentative answers & preliminary recommendations” needed?

c. Should any additional Sub Team recommendations be made in relation to the agreed Sunrise charter question?

Unless the Sub Team Co-Chairs determine otherwise, this discussion thread will remain open until *23:59 UTC on 22 May 2019*. Comments/input provided past the closing date or outside this discussion thread will not be taken into account when compiling the final Sub Team member input.

*Summary Table (Pages 36-40)*

The draft answers, preliminary recommendations, and links to the relevant individual proposals are in the latest Summary Table (as of 16 April 2019):

https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ... <https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ...>.

*Agreed Sunrise Charter Question 9**(Page 36)*

The Sub Team just discussed Agreed Charter Question 9 on 08 May 2019, hence the proposed answers are “TBD”. Based on the Sub Team’s discussions, the transcript and notes, staff will provide update.

/ Q9 In light of the evidence gathered above, should the scope of Sunrise Registrations be limited to the categories of goods and services for which? /

*_Proposed Answer_**: *TBD

*Individual Proposal*

The Sub Team just discussed the Proposal #13 on 08 May 2019, hence there is no draft answer currently on the Summary Table (as of 16 April 2019). Based on the Sub Team’sdiscussions, the transcript and notes, staff will provide.

Link to the individual proposal is included below.

*Proposal #13*: https://community.icann.org/download/attachments/102146375/Proposal%2313.pdf... <https://community.icann.org/download/attachments/102146375/Proposal%2313.pdf...>

*Where to Find All Discussion Threads***

Access the Documents wiki page and find the opening messages of the all discussion threads in the table (highlighted in green): https://community.icann.org/x/_oIWBg <https://community.icann.org/x/_oIWBg>

Best Regards,

Mary, Julie, Ariel

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This response is in a personal capacity. First, I would note that the standard for a proposal to be included in the Initial Report for the purpose of soliciting public comment is strong support within the sub team and subsequently the full WG. I do not perceive Michael’s proposal to limit sunrise registrations in at least vertical gTLDs to those related (a term that requires significant definition) to the goods and services to which a mark has been registered as having received that level of support. Indeed, I believe the sub team has become more divided on it as discussion has proceeded. (Of course, the sub team’s consideration of the proposal will, if my perception of support level is borne out, still be noted in the Initial Report and anyone will be free to comment upon it; it simply will not be endorsed proposal on which the ICANN community is specifically invited to comment.) Second, I have stated my belief that, especially with higher sunrise pricing being a gating factor, rights holders have been judicious in their use of sunrise registrations. The fact that sunrise registrations have only averaged 150-200 per new gTLD documents that very selective use, and provides no evidence of significant abuse. (As for questionable marks being registered, that is a subject for review in our next and final phase, when we focus back on and conclude recommendations on the TMCH, including the requirements for recording a mark.) Third, as we seem to be engaged in mathematical analysis, consider that according to the Oxford English Dictionary<https://en.oxforddictionaries.com/explore/how-many-words-are-there-in-the-en...>, “there are, at the very least, a quarter of a million distinct English words, excluding inflections, and words from technical and regional vocabulary not covered by the OED, or words not yet added to the published dictionary, of which perhaps 20 per cent are no longer in current use. If distinct senses were counted, the total would probably approach three quarters of a million”. Wikipedia<https://en.m.wikipedia.org/wiki/List_of_dictionaries_by_number_of_words>, for its part, notes that the 5th edition of the American Heritage Dictionary of the English Language contains more than 370,000 words. English of course is not the only language written in ASCII characters (and therefore not IDNs) – again according to Wikipedia, German has 330,00 words, Italian 260,000, French 135,000, Spanish 93,000, Portuguese 442,000, and so on. But sticking just to English, if we conservatively estimate that there are 300,000 distinct dictionary words, then even an average sunrise registration total of 200 words per new gTLD leaves 299,800 available to register by anyone (and that doesn’t include made up, non-dictionary words). Out of 300,000 available words, 200 represents less than 1/10th of one percent. So the burden of sunrise registrations on the availability of dictionary words as domain names is infinitesimal as, for English alone, 99.9% of all dictionary words remain available for general registration. Fourth, the speech embodied in a domain name is minimal at best. Domain names function primarily as an Internet address, with an expressive function being secondary. Most domain names consist (and the ones we are discussing do so entirely) of a single term separated by a dot from the gTLD string label. Not much meaningful speech is made up of just one word plus a gTLD designation (e.g., ride.bike). Fifth, the domain platform is the primary space in which meaningful speech is expressed, and a sunrise registration leaves ample (indeed, almost unlimited) latitude for those who do not possess trademark rights to engage in unfettered speech. The proposal under discussion cited as an alleged “abuse” BMW’s sunrise registration of mini.bikes. But that registration still leaves available a vast number of .bike domains that include the word mini to serve as platforms for meaningful speech – including minis.bike, miniraces.bike, minisafety.bikes, minifans.bike, minikids.bike, minidirt.bike, and on and on. So the availability of sunrise registrations has essentially no censorship effect on free speech. Sixth and most importantly, even if one agrees with the proponents of the proposal (which I do not) that there is some problem in need of a solution, they have failed to describe any practical means by which the proposal would be uniformly and effectively administered, or estimated what such a process would cost. While there is no requirement to develop a full implementation plan until after a proposal receives consensus support, there should at least be some general description of what administration will entail (and I must say that I do not find statements such as “it’s easy” or “during the registration process” to be very convincing or assuring). If the proponents truly believe there is a significant problem to be redressed then they would want their solution to be administered in an objective, uniform, and effective manner by a neutral third, non-contracted party (noting also that registries and registrars would have commercial incentives to accept almost any rationale provided by a rights holder for a proposed domain registration). A standard policy will have to be developed that wrestles with such questions as whether a rights holder wishing to register in a geo domain must maintain a physical facility in the locale, or whether demonstrating sales in the location is sufficient; and whether “related to” is to be narrowly defined to require that the rights holder have registrations for goods and services that directly coincide with the gTLD vertical, or whether it is sufficient to simply supply goods and services that are employed by those engaged in activities described by the vertical (the first would bar nike.bike, the second would allow it). And of course there must be some appeals process for those rights holders who believe they have been improperly barred from making a valid sunrise registration – and who will administer that, and what standard will it employ? Given the overall failure to describe any demonstrable and consistent abuse or significant impingement of speech by actual sunrise registartions, as well as the lack of even a general outline of a credible implementation model with reasonable costs and manageable rules, I cannot support the proposal. Thanks to all for your consideration of these personal views. Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org> On Behalf Of Mitch Stoltz Sent: Tuesday, May 28, 2019 8:53 PM To: gnso-rpm-sunrise@icann.org Subject: [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Hi Claudio, According to your numbers, trademark holders have registered between 105,000 and 140,000 domains that were never available to noncommercial users. You and others suggest that most of these registrations were “defensive,” meaning that they were done primarily to prevent anyone else from registering those domain names - not to use them. What’s more, given the little we know about what marks are in the TMCH, a great many of those domain names are either commons words, or words that are associated with a product or service ONLY in particular contexts. This represents an enormous loss to the public that will only grow as new gTLDs roll out. I take issue with your suggestion that noncommercial users can simply choose a different domain name that hasn’t been taken by trademark holders before public availability. For a noncommercial user, the expressive value of a domain name can be equal to or greater than its value to a commercial user. A noncommercial user acting in good faith should have equal opportunity to register a domain. Yes, rightsholders can choose to register domains in sunrise based on their internal calculus about where "abuse" is likely to happen, but they are also currently free to act as though good faith registrations by noncommercial users are "abuse." That's a fundamental flaw in the Sunrise mechanism. At a minimum, Michael Karanicolas's proposal to limit sunrise registrations based on the goods and services actually sold by the rightsholder would begin to address this. Best, Mitch Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate | https://act.eff.org/ On 5/22/19 8:46 PM, claudio di gangi wrote: hi Mitch, Sunrise registrations have averaged between 150 and 200 domains per TLD. I believe there over 700 different new gTLDs where non-commercial users can register domains for non-commercial use. For the purposes of consensus-building, when one does the math, can you kindly clarify on how this results with harms falling disproportionately on non-commercial registrants and small business registrants? In terms of the orthogonal domains you mention, registration abuse that targets a brand can easily take place in these zones (and often does take place). Isn’t this a standing justification, along within the fact that only 150 to 200 domains are registered during Sunrise per TLD, for having Sunrise in place in to prevent consumer confusion and harm from taking place? In terms of the question of scale that your mention, I don’t see a necessary inconsistency that should raise alarm. One on hand, the brand owner is making an informed choice about where to protect their brand, often because they have been previously targeted and they recognize a pattern, or due to some other implicit connection with the brand that made not be readily apparent to an outside observer on the surface. But for the vast majority of cases, defensive registrations are based on strategic factors, such as the likelihood of infringement in a particular TLD. I do consider this as resulting in ex-ante harm to non-commercial registrants, as for one reason there are virtually an unlimited number of registrations available in nearly a 1000 gTLDs. To take an extreme case, even in .com with nearly 140 million domains registered, successful domainers continue to profit and non-commercial users have meaningful choices for expression. Thanks in advance for your thoughts. Best regards, Claudio On Wednesday, May 22, 2019, Mitch Stoltz <mitch@eff.org<mailto:mitch@eff.org>> wrote: This working group has hit on numerous problems with the Sunrise regime, with harms falling disproportionately on non-commercial and small business registrants. Michael K. has proposed a narrow solution to one of these problems, and I think it deserves serious consideration. Quite simply, Sunrise as it exists is an expansion of trademark rights. Allowing priority registration without regard to the actual goods and services to which a mark pertains turns a trademark from a source identifier into a global dominion over a word or phrase. We have ample evidence that Sunrise is being abused in just that way. Looking beyond obvious abuses, there is little or no justification for giving trademark holders priority registration in TLDs that are clearly orthogonal to any product or service the mark-holder offers. At scale, having that priority absolutely harms the free expression rights of others. To use a simple example, Apple is a distinctive trademark in consumer technology but a generic word in many other circumstances. There are any number of individuals and organizations who should be able to express themselves with a domain name containing Apple, in ways that raise no possibility of trademark infringement or cybersquatting. All of these potential users should have equal opportunity to register "apple" in new TLDs that don't raise an association with technology products. Moreover, we need to be consistent about questions of scale. If sunrise registrations are used often enough to provide benefit to trademark holders, then they are also being used often enough to interfere with the rights of noncommercial users. And if they are not used very much at all, then we should be jettisoning the program as unnecessary. If Sunrise is to continue, Michael's proposal is a straightforward way of making it conform to the actual legal rights it's meant to protect. Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate | https://act.eff.org/ On 5/15/19 8:09 AM, Kathy Kleiman wrote: Hi Phil, As a co-chair, I'm a little surprised by the vehemence of the debate. Many of us are lawyers and we're used to talking about important issues in dispassionate ways. I think we should do so here. As an ordinary member, I participate in these discussions, as you and Brian do, and in that capacity, I note that we have a problem. I also see the seeds of the solution in your answer below. In 2009, we foresaw that there might be gaming of the Sunrise period -- people registering trademarks for ordinary words to get priority during Sunrise. We now see it happening. Journalists, reporters and bloggers have done the work for us -- and no one seems surprised by their results. I list some of the articles we (as a Subteam) collected below. Links in our Sunrise Summary Table under Q9 - https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ... Nothing in the MK proposal is burdensome, or unusual. It's narrowly-tailored (too narrowly-tailored in my view) to prevent gaming and to use systems already in place. As you note below, the cost of the vetting is part of the process for many gTLDs and ccTLDs -- whether it is providing residency in Japan or the objective standard for .bank or .insurance or .attorney or .cpa. It's already built into our processes -- and not burdensome -- and easily extended to Sunrise. We know there is a misuse and even abuse of the Sunrise system. The MK proposal is an easy fix, and one that actually protects and preserves the balance of rights. We are being asked to solve problems -- and this is a big one. Best, Kathy Articles in our gathering data (links in Summary Table): ● How one guy games new gTLD sunrise periods ● Fake Trademarks Stealing Generic Domains In New gTLD Sunrises ● The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The" ● How common words like Pizza, Money, and Shopping ended up in the Trademark Clearinghouse for new TLDs ● The numbers are in! Donuts sunrises typically get 100+ domains, but they also got gamed ● Digging in on Donuts’ Sunrise: Amazon tops the list, gaming, and top registrars ● .Build Registry Using Questionable Swiss Trademark Registration To Grab “Build” Domains In Sunrise ● How Did RetailMeNot Get 849 .Codes Domains In Sunrise Without AnyTrademarks? On 5/15/2019 10:10 AM, Corwin, Philip wrote: Kathy: I presume that these are your personal views, just as the email I posted last week raising serious doubts about Michael’s proposal were clearly labeled as personal. Likewise, what follows is an expression of personal views. Not to repeat myself, but to the extent there is gaming based on weak marks it should be a focus of discussion when we review requirements for mark recordation in the TMCH. But I have seen no substantial evidence that legitimate trademark holders are seeking to utilize sunrise registrations in gTLDs other than those for which they have a good faith belief that registration is necessary for brand protection. Even where a sunrise registration might arguably be abusive, I do not see that as placing any burden on the speech rights of others who wish to register a domain name that bears some resemblance. I also described why I believe adoption of this proposal will require a costly bureaucracy to yield reasonably consistent applications of what will always be a subjective standard subject to interpretation. I do not see this as the same as the objective standard for a .bank or .insurance domain (where the cost of vetting is built into the registration fee, and the requirement is satisfied by furnishing a certificate evidencing that the applicant is a regulated institution) or even ccTLDs, where some have objective criteria to demonstrate being domiciled or doing business in a particular jurisdiction. While I don’t believe that Michael has the responsibility to provide a full-blown implementation scheme, I have not yet heard a credible explanation of how adoption of a relationship test will be consistently administered in a cost-effective way. Finally, and more broadly, we are in the process of considering proposals to recommend to the full WG for inclusion in the Initial Report for public comment. While that does not require a demonstration of consensus at this point, it should require some reasonably strong support within the sub team and, following that, the WG; and some prospect that the proposal can achieve consensus down the road within the WG (for the Final Report) and Council. Frankly, I don’t see that reasonably strong support for Michael’s proposal within the sub team but rather a sharp divide over whether there is even a problem that requires addressing. And, while I have no crystal ball, I feel reasonably confident that in the end contracted parties will oppose it for administrative and cost reasons, among others, and that BC and IPC members will oppose it as putting yet another burden on sunrise registrations – so I don’t see any prospect of consensus. Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way<https://maps.google.com/?q=12061+Bluemont+Way+%0D%0A++++++++++++++++Reston,+...> Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org><mailto:gnso-rpm-sunrise-bounces@icann.org> On Behalf Of Kathy Kleiman Sent: Wednesday, May 15, 2019 9:04 AM To: gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Hi All, I think the discussion is an important one because it is brings up issues across categories. a) Michael's proposal addresses a problem we have found in our data-driven analysis. There are gamers out there who are registering trademarks in a certain category of goods and services, and then using them to register an array of domain names in Sunrise having nothing at all to do with the categories of their trademark registration. We committed at the outset of the RPMs -- in the 2009 era - that we would not be expanding trademark rights. That's exactly what is happening in these situations and registrations. b) The SDRP is broken - barely used because the Trademark Clearinghouse was supposed to be public, during implementation it was turned private, so challengers cannot get the information they need to challenge. Plus, it's not the job a challenger to police the basic principle of the entire RPM process. Brian, you have mentioned your "suggested improvements to the SDRP" from 2 years ago several times, but that was 1000s of emails ago, and we worked hard to compile the data and solutions that we are looking at today. Per the rules that we agreed to as Co-Chairs and as a WG, we created a new table, atop extensive data gathering, and things must be reintroduced from prior to our URS break. If you could do so, that would be very timely. I've suggested changes to the SDRP that would give challengers some chance to use it -- although only for the narrow purpose intended. The SDRP was not intended to solve a broad gaming problem -- because we did not anticipate one. We know know it exists; and a policy/operational fix resolves it. c) Michael suggests a narrowly tailored solution for a gaming problem that we now know exists. His solution is completely consistent with how registrars, in many of these gTLDs, already handle General Availability (e.g., required proof to register in .BANK). It's not a new process -- just a way to use existing process to avoid gaming and preserve the principles we agreed to in this process. Best, Kathy On 5/9/2019 12:04 PM, BECKHAM, Brian wrote: Michael, I would personally prefer not to get into a Google search race for some kind of “exceptions to prove the rule” and also because “tattoos” is not a class of marks<https://trademark.eu/list-of-classes-with-explanatory-notes/>, but these articles could be of interest in terms of explaining why they may seek such a defensive sunrise registration: https://www.pinterest.ch/steelephotograp/mini-cooper-tattoos/ https://metro.co.uk/2011/01/25/andreas-muller-has-mini-tattooed-on-penis-to-... Also, while MINI may not make motorcycles, their sister company BMW does, so they could well branch out into that product area (including related services). I have already suggested improvements to the SDRP on several occasions, going back almost 2 years now (those were apparently parked in preference of various data seeking exercises), so would respectfully suggest that others take the baton from here. As I said, I believe there is a genuine willingness to explore such solutions. At the same time, it seems unlikely that the current proposal No. 13 is likely to garner consensus, and will defer to the Sub Team Co-Chairs to address that at the level of our present discussions. Brian From: Michael Karanicolas <mkaranicolas@gmail.com><mailto:mkaranicolas@gmail.com> Sent: Thursday, May 9, 2019 5:50 PM To: BECKHAM, Brian <brian.beckham@wipo.int><mailto:brian.beckham@wipo.int> Cc: Ariel Liang <ariel.liang@icann.org><mailto:ariel.liang@icann.org>; gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Interesting, thanks for sharing. I checked whether Mini made motorcycles before I sent my proposal in... I didn't think to check whether they made regular bicycles! By any chance, were you able to find any examples of the company branching into the tattoo business as well (http://mini.tattoo)? I'm not sure if this presents a "nuance" in trademark classes. I don't think it's much of a revelation that "bikes" can refer to motorcycles or regular bicycles. All this represents is a product line I was unaware of. And under my proposal, all Mini would have to do would be to include the link you provided when they register the domain under sunrise, and that should be that. Personally, I don't see how the SDRP challenge process could be retooled to turn it into something that adequately represents the interests of potential future registrants without injecting massive amounts of transparency into the sunrise and TMCH processes... but I would be interested to hear your thoughts as to how this might work. On Thu, May 9, 2019 at 12:38 PM BECKHAM, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Thanks Ariel, Copying here, my full email to the Sunrise List from earlier today as it relates to proposal No. 13: -- Thanks Julie, Just for fun (as I am aware the example was merely anecdotal), further to our hypothesizing last night, indeed, MINI does have a range of folding bikes: https://www.bmwblog.com/2018/02/28/new-mini-folding-bike/ This does however illustrate in some ways the nuance in trademark classes and TLD typology that may escape proposal No. 13 in its current form. As I mentioned on our call, I believe there is a shared willingness to address the issue Michael has raised, but via the SDRP challenge process, and not via claims exclusions. Brian -- Brian From: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org<mailto:gnso-rpm-sunrise-bounces@icann.org>> On Behalf Of Ariel Liang Sent: Thursday, May 9, 2019 5:36 PM To: gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Dear Sunrise Sub Team members, As announced, this thread is being opened for final mailing list discussions related to Sunrise Agreed Charter Question 9, including Proposal #13. We ask that you review the Summary Table (as of 16 April 2019) and provide any additional input you may have to the “proposed answers & preliminary recommendations” in relation to the Agreed Charter Question, and consider draft answers to the following questions regarding the individual proposal: a. Should the Sub Team recommend that the full WG consider including this Individual Proposal in the Initial Report for the solicitation of public comment? b. In light of the Individual Proposal, are any modifications to the current “tentative answers & preliminary recommendations” needed? c. Should any additional Sub Team recommendations be made in relation to the agreed Sunrise charter question? Unless the Sub Team Co-Chairs determine otherwise, this discussion thread will remain open until 23:59 UTC on 22 May 2019. Comments/input provided past the closing date or outside this discussion thread will not be taken into account when compiling the final Sub Team member input. Summary Table (Pages 36-40) The draft answers, preliminary recommendations, and links to the relevant individual proposals are in the latest Summary Table (as of 16 April 2019): https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ.... Agreed Sunrise Charter Question 9 (Page 36) The Sub Team just discussed Agreed Charter Question 9 on 08 May 2019, hence the proposed answers are “TBD”. Based on the Sub Team’s discussions, the transcript and notes, staff will provide update. Q9 In light of the evidence gathered above, should the scope of Sunrise Registrations be limited to the categories of goods and services for which? Proposed Answer: TBD Individual Proposal The Sub Team just discussed the Proposal #13 on 08 May 2019, hence there is no draft answer currently on the Summary Table (as of 16 April 2019). Based on the Sub Team’s discussions, the transcript and notes, staff will provide. Link to the individual proposal is included below. Proposal #13: https://community.icann.org/download/attachments/102146375/Proposal%2313.pdf... 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Michael: Again, speaking in a personal capacity – I must say I am confused by your response. You say “The evidence that the system is open to abuse, and that abuse has taken place, has been amply demonstrated, and it follows that if we take no action the system will likely continue to be abused.”, but then you say, “I'm generally fine letting them all in. As I said - a low bar assessment, just to make sure the system isn't being obviously abused.” If you believe that significant abuse has and will take place, then how does letting all proposed registrations get in under a low bar assessment address the problem you perceive? Best, Philip Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: Michael Karanicolas <mkaranicolas@gmail.com> Sent: Wednesday, May 29, 2019 1:06 PM To: Corwin, Philip <pcorwin@verisign.com> Cc: mitch@eff.org; gnso-rpm-sunrise@icann.org Subject: [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Hi Phil, I appreciate you taking the time to look up the Wikipedia entries for so many different languages, but if your purpose was to make the case that there are a lot of different words out there, I'm not sure you needed to bother with the effort. I will concede that point. But if your underlying argument is that none of this matters because there's so many words still available, and one is just as good as another because domain names don't really matter much... Well - what are we all doing here? Seriously - why do people spend tens of millions of dollars on a domain name if one is as good as another? Why did Amazon just spend god-knows how much time and money trying to secure .Amazon, when they could have just shifted over to .AmazonCorp or .TheAmazonCompany if those are just as good and would have spared them the fight? The answer, as we all know, is that while there's lots of words in the English language, they're not all interchangeable, and some letter strings are better than others in conveying an idea. And this is why the registration of incredibly common words, ostensibly for the purpose of trademark protection. is so troubling, because it carves off a space that could, and likely would, be utilized for a legitimate purpose just because it has a tangential relation to an existing mark. The evidence that the system is open to abuse, and that abuse has taken place, has been amply demonstrated, and it follows that if we take no action the system will likely continue to be abused. If we just ignore this issue, which is fairly glaring, I think it will lead to problems down the line, as the working group seeks approval for its broader recommendations. I agree that we need to work towards implementable guidelines, but I don't agree that it's the sort of insurmountable obstacle you are making it out to be, particularly if we adopt a relatively low bar, as I've been saying all this time. I believe you, in a previous post, spoke of "overkill" and a "needlessly complicated" solution - but you're the one pushing the proposal in this direction. I, personally, don't think the assessment needs to be done by a "neutral third, non-contracted party", and as to your other examples - I'm generally fine letting them all in. As I said - a low bar assessment, just to make sure the system isn't being obviously abused. Best, Michael On Wed, May 29, 2019 at 12:25 PM Corwin, Philip via Gnso-rpm-sunrise <gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org>> wrote: This response is in a personal capacity. First, I would note that the standard for a proposal to be included in the Initial Report for the purpose of soliciting public comment is strong support within the sub team and subsequently the full WG. I do not perceive Michael’s proposal to limit sunrise registrations in at least vertical gTLDs to those related (a term that requires significant definition) to the goods and services to which a mark has been registered as having received that level of support. Indeed, I believe the sub team has become more divided on it as discussion has proceeded. (Of course, the sub team’s consideration of the proposal will, if my perception of support level is borne out, still be noted in the Initial Report and anyone will be free to comment upon it; it simply will not be endorsed proposal on which the ICANN community is specifically invited to comment.) Second, I have stated my belief that, especially with higher sunrise pricing being a gating factor, rights holders have been judicious in their use of sunrise registrations. The fact that sunrise registrations have only averaged 150-200 per new gTLD documents that very selective use, and provides no evidence of significant abuse. (As for questionable marks being registered, that is a subject for review in our next and final phase, when we focus back on and conclude recommendations on the TMCH, including the requirements for recording a mark.) Third, as we seem to be engaged in mathematical analysis, consider that according to the Oxford English Dictionary<https://en.oxforddictionaries.com/explore/how-many-words-are-there-in-the-en...>, “there are, at the very least, a quarter of a million distinct English words, excluding inflections, and words from technical and regional vocabulary not covered by the OED, or words not yet added to the published dictionary, of which perhaps 20 per cent are no longer in current use. If distinct senses were counted, the total would probably approach three quarters of a million”. Wikipedia<https://en.m.wikipedia.org/wiki/List_of_dictionaries_by_number_of_words>, for its part, notes that the 5th edition of the American Heritage Dictionary of the English Language contains more than 370,000 words. English of course is not the only language written in ASCII characters (and therefore not IDNs) – again according to Wikipedia, German has 330,00 words, Italian 260,000, French 135,000, Spanish 93,000, Portuguese 442,000, and so on. But sticking just to English, if we conservatively estimate that there are 300,000 distinct dictionary words, then even an average sunrise registration total of 200 words per new gTLD leaves 299,800 available to register by anyone (and that doesn’t include made up, non-dictionary words). Out of 300,000 available words, 200 represents less than 1/10th of one percent. So the burden of sunrise registrations on the availability of dictionary words as domain names is infinitesimal as, for English alone, 99.9% of all dictionary words remain available for general registration. Fourth, the speech embodied in a domain name is minimal at best. Domain names function primarily as an Internet address, with an expressive function being secondary. Most domain names consist (and the ones we are discussing do so entirely) of a single term separated by a dot from the gTLD string label. Not much meaningful speech is made up of just one word plus a gTLD designation (e.g., ride.bike). Fifth, the domain platform is the primary space in which meaningful speech is expressed, and a sunrise registration leaves ample (indeed, almost unlimited) latitude for those who do not possess trademark rights to engage in unfettered speech. The proposal under discussion cited as an alleged “abuse” BMW’s sunrise registration of mini.bikes. But that registration still leaves available a vast number of .bike domains that include the word mini to serve as platforms for meaningful speech – including minis.bike, miniraces.bike, minisafety.bikes, minifans.bike, minikids.bike, minidirt.bike, and on and on. So the availability of sunrise registrations has essentially no censorship effect on free speech. Sixth and most importantly, even if one agrees with the proponents of the proposal (which I do not) that there is some problem in need of a solution, they have failed to describe any practical means by which the proposal would be uniformly and effectively administered, or estimated what such a process would cost. While there is no requirement to develop a full implementation plan until after a proposal receives consensus support, there should at least be some general description of what administration will entail (and I must say that I do not find statements such as “it’s easy” or “during the registration process” to be very convincing or assuring). If the proponents truly believe there is a significant problem to be redressed then they would want their solution to be administered in an objective, uniform, and effective manner by a neutral third, non-contracted party (noting also that registries and registrars would have commercial incentives to accept almost any rationale provided by a rights holder for a proposed domain registration). A standard policy will have to be developed that wrestles with such questions as whether a rights holder wishing to register in a geo domain must maintain a physical facility in the locale, or whether demonstrating sales in the location is sufficient; and whether “related to” is to be narrowly defined to require that the rights holder have registrations for goods and services that directly coincide with the gTLD vertical, or whether it is sufficient to simply supply goods and services that are employed by those engaged in activities described by the vertical (the first would bar nike.bike, the second would allow it). And of course there must be some appeals process for those rights holders who believe they have been improperly barred from making a valid sunrise registration – and who will administer that, and what standard will it employ? Given the overall failure to describe any demonstrable and consistent abuse or significant impingement of speech by actual sunrise registartions, as well as the lack of even a general outline of a credible implementation model with reasonable costs and manageable rules, I cannot support the proposal. Thanks to all for your consideration of these personal views. Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org<mailto:gnso-rpm-sunrise-bounces@icann.org>> On Behalf Of Mitch Stoltz Sent: Tuesday, May 28, 2019 8:53 PM To: gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Hi Claudio, According to your numbers, trademark holders have registered between 105,000 and 140,000 domains that were never available to noncommercial users. You and others suggest that most of these registrations were “defensive,” meaning that they were done primarily to prevent anyone else from registering those domain names - not to use them. What’s more, given the little we know about what marks are in the TMCH, a great many of those domain names are either commons words, or words that are associated with a product or service ONLY in particular contexts. This represents an enormous loss to the public that will only grow as new gTLDs roll out. I take issue with your suggestion that noncommercial users can simply choose a different domain name that hasn’t been taken by trademark holders before public availability. For a noncommercial user, the expressive value of a domain name can be equal to or greater than its value to a commercial user. A noncommercial user acting in good faith should have equal opportunity to register a domain. Yes, rightsholders can choose to register domains in sunrise based on their internal calculus about where "abuse" is likely to happen, but they are also currently free to act as though good faith registrations by noncommercial users are "abuse." That's a fundamental flaw in the Sunrise mechanism. At a minimum, Michael Karanicolas's proposal to limit sunrise registrations based on the goods and services actually sold by the rightsholder would begin to address this. Best, Mitch Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate | https://act.eff.org/ On 5/22/19 8:46 PM, claudio di gangi wrote: hi Mitch, Sunrise registrations have averaged between 150 and 200 domains per TLD. I believe there over 700 different new gTLDs where non-commercial users can register domains for non-commercial use. For the purposes of consensus-building, when one does the math, can you kindly clarify on how this results with harms falling disproportionately on non-commercial registrants and small business registrants? In terms of the orthogonal domains you mention, registration abuse that targets a brand can easily take place in these zones (and often does take place). Isn’t this a standing justification, along within the fact that only 150 to 200 domains are registered during Sunrise per TLD, for having Sunrise in place in to prevent consumer confusion and harm from taking place? In terms of the question of scale that your mention, I don’t see a necessary inconsistency that should raise alarm. One on hand, the brand owner is making an informed choice about where to protect their brand, often because they have been previously targeted and they recognize a pattern, or due to some other implicit connection with the brand that made not be readily apparent to an outside observer on the surface. But for the vast majority of cases, defensive registrations are based on strategic factors, such as the likelihood of infringement in a particular TLD. I do consider this as resulting in ex-ante harm to non-commercial registrants, as for one reason there are virtually an unlimited number of registrations available in nearly a 1000 gTLDs. To take an extreme case, even in .com with nearly 140 million domains registered, successful domainers continue to profit and non-commercial users have meaningful choices for expression. Thanks in advance for your thoughts. Best regards, Claudio On Wednesday, May 22, 2019, Mitch Stoltz <mitch@eff.org<mailto:mitch@eff.org>> wrote: This working group has hit on numerous problems with the Sunrise regime, with harms falling disproportionately on non-commercial and small business registrants. Michael K. has proposed a narrow solution to one of these problems, and I think it deserves serious consideration. Quite simply, Sunrise as it exists is an expansion of trademark rights. Allowing priority registration without regard to the actual goods and services to which a mark pertains turns a trademark from a source identifier into a global dominion over a word or phrase. We have ample evidence that Sunrise is being abused in just that way. Looking beyond obvious abuses, there is little or no justification for giving trademark holders priority registration in TLDs that are clearly orthogonal to any product or service the mark-holder offers. At scale, having that priority absolutely harms the free expression rights of others. To use a simple example, Apple is a distinctive trademark in consumer technology but a generic word in many other circumstances. There are any number of individuals and organizations who should be able to express themselves with a domain name containing Apple, in ways that raise no possibility of trademark infringement or cybersquatting. All of these potential users should have equal opportunity to register "apple" in new TLDs that don't raise an association with technology products. Moreover, we need to be consistent about questions of scale. If sunrise registrations are used often enough to provide benefit to trademark holders, then they are also being used often enough to interfere with the rights of noncommercial users. And if they are not used very much at all, then we should be jettisoning the program as unnecessary. If Sunrise is to continue, Michael's proposal is a straightforward way of making it conform to the actual legal rights it's meant to protect. Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate | https://act.eff.org/ On 5/15/19 8:09 AM, Kathy Kleiman wrote: Hi Phil, As a co-chair, I'm a little surprised by the vehemence of the debate. Many of us are lawyers and we're used to talking about important issues in dispassionate ways. I think we should do so here. As an ordinary member, I participate in these discussions, as you and Brian do, and in that capacity, I note that we have a problem. I also see the seeds of the solution in your answer below. In 2009, we foresaw that there might be gaming of the Sunrise period -- people registering trademarks for ordinary words to get priority during Sunrise. We now see it happening. Journalists, reporters and bloggers have done the work for us -- and no one seems surprised by their results. I list some of the articles we (as a Subteam) collected below. Links in our Sunrise Summary Table under Q9 - https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ... Nothing in the MK proposal is burdensome, or unusual. It's narrowly-tailored (too narrowly-tailored in my view) to prevent gaming and to use systems already in place. As you note below, the cost of the vetting is part of the process for many gTLDs and ccTLDs -- whether it is providing residency in Japan or the objective standard for .bank or .insurance or .attorney or .cpa. It's already built into our processes -- and not burdensome -- and easily extended to Sunrise. We know there is a misuse and even abuse of the Sunrise system. The MK proposal is an easy fix, and one that actually protects and preserves the balance of rights. We are being asked to solve problems -- and this is a big one. Best, Kathy Articles in our gathering data (links in Summary Table): ● How one guy games new gTLD sunrise periods ● Fake Trademarks Stealing Generic Domains In New gTLD Sunrises ● The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The" ● How common words like Pizza, Money, and Shopping ended up in the Trademark Clearinghouse for new TLDs ● The numbers are in! Donuts sunrises typically get 100+ domains, but they also got gamed ● Digging in on Donuts’ Sunrise: Amazon tops the list, gaming, and top registrars ● .Build Registry Using Questionable Swiss Trademark Registration To Grab “Build” Domains In Sunrise ● How Did RetailMeNot Get 849 .Codes Domains In Sunrise Without AnyTrademarks? On 5/15/2019 10:10 AM, Corwin, Philip wrote: Kathy: I presume that these are your personal views, just as the email I posted last week raising serious doubts about Michael’s proposal were clearly labeled as personal. Likewise, what follows is an expression of personal views. Not to repeat myself, but to the extent there is gaming based on weak marks it should be a focus of discussion when we review requirements for mark recordation in the TMCH. But I have seen no substantial evidence that legitimate trademark holders are seeking to utilize sunrise registrations in gTLDs other than those for which they have a good faith belief that registration is necessary for brand protection. Even where a sunrise registration might arguably be abusive, I do not see that as placing any burden on the speech rights of others who wish to register a domain name that bears some resemblance. I also described why I believe adoption of this proposal will require a costly bureaucracy to yield reasonably consistent applications of what will always be a subjective standard subject to interpretation. I do not see this as the same as the objective standard for a .bank or .insurance domain (where the cost of vetting is built into the registration fee, and the requirement is satisfied by furnishing a certificate evidencing that the applicant is a regulated institution) or even ccTLDs, where some have objective criteria to demonstrate being domiciled or doing business in a particular jurisdiction. While I don’t believe that Michael has the responsibility to provide a full-blown implementation scheme, I have not yet heard a credible explanation of how adoption of a relationship test will be consistently administered in a cost-effective way. Finally, and more broadly, we are in the process of considering proposals to recommend to the full WG for inclusion in the Initial Report for public comment. While that does not require a demonstration of consensus at this point, it should require some reasonably strong support within the sub team and, following that, the WG; and some prospect that the proposal can achieve consensus down the road within the WG (for the Final Report) and Council. Frankly, I don’t see that reasonably strong support for Michael’s proposal within the sub team but rather a sharp divide over whether there is even a problem that requires addressing. And, while I have no crystal ball, I feel reasonably confident that in the end contracted parties will oppose it for administrative and cost reasons, among others, and that BC and IPC members will oppose it as putting yet another burden on sunrise registrations – so I don’t see any prospect of consensus. Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way<https://maps.google.com/?q=12061+Bluemont+Way+%0D%0A++++++++++++++++Reston,+...> Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org><mailto:gnso-rpm-sunrise-bounces@icann.org> On Behalf Of Kathy Kleiman Sent: Wednesday, May 15, 2019 9:04 AM To: gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Hi All, I think the discussion is an important one because it is brings up issues across categories. a) Michael's proposal addresses a problem we have found in our data-driven analysis. There are gamers out there who are registering trademarks in a certain category of goods and services, and then using them to register an array of domain names in Sunrise having nothing at all to do with the categories of their trademark registration. We committed at the outset of the RPMs -- in the 2009 era - that we would not be expanding trademark rights. That's exactly what is happening in these situations and registrations. b) The SDRP is broken - barely used because the Trademark Clearinghouse was supposed to be public, during implementation it was turned private, so challengers cannot get the information they need to challenge. Plus, it's not the job a challenger to police the basic principle of the entire RPM process. Brian, you have mentioned your "suggested improvements to the SDRP" from 2 years ago several times, but that was 1000s of emails ago, and we worked hard to compile the data and solutions that we are looking at today. Per the rules that we agreed to as Co-Chairs and as a WG, we created a new table, atop extensive data gathering, and things must be reintroduced from prior to our URS break. If you could do so, that would be very timely. I've suggested changes to the SDRP that would give challengers some chance to use it -- although only for the narrow purpose intended. The SDRP was not intended to solve a broad gaming problem -- because we did not anticipate one. We know know it exists; and a policy/operational fix resolves it. c) Michael suggests a narrowly tailored solution for a gaming problem that we now know exists. His solution is completely consistent with how registrars, in many of these gTLDs, already handle General Availability (e.g., required proof to register in .BANK). It's not a new process -- just a way to use existing process to avoid gaming and preserve the principles we agreed to in this process. Best, Kathy On 5/9/2019 12:04 PM, BECKHAM, Brian wrote: Michael, I would personally prefer not to get into a Google search race for some kind of “exceptions to prove the rule” and also because “tattoos” is not a class of marks<https://trademark.eu/list-of-classes-with-explanatory-notes/>, but these articles could be of interest in terms of explaining why they may seek such a defensive sunrise registration: https://www.pinterest.ch/steelephotograp/mini-cooper-tattoos/ https://metro.co.uk/2011/01/25/andreas-muller-has-mini-tattooed-on-penis-to-... Also, while MINI may not make motorcycles, their sister company BMW does, so they could well branch out into that product area (including related services). I have already suggested improvements to the SDRP on several occasions, going back almost 2 years now (those were apparently parked in preference of various data seeking exercises), so would respectfully suggest that others take the baton from here. As I said, I believe there is a genuine willingness to explore such solutions. At the same time, it seems unlikely that the current proposal No. 13 is likely to garner consensus, and will defer to the Sub Team Co-Chairs to address that at the level of our present discussions. Brian From: Michael Karanicolas <mkaranicolas@gmail.com><mailto:mkaranicolas@gmail.com> Sent: Thursday, May 9, 2019 5:50 PM To: BECKHAM, Brian <brian.beckham@wipo.int><mailto:brian.beckham@wipo.int> Cc: Ariel Liang <ariel.liang@icann.org><mailto:ariel.liang@icann.org>; gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Interesting, thanks for sharing. I checked whether Mini made motorcycles before I sent my proposal in... I didn't think to check whether they made regular bicycles! By any chance, were you able to find any examples of the company branching into the tattoo business as well (http://mini.tattoo)? I'm not sure if this presents a "nuance" in trademark classes. I don't think it's much of a revelation that "bikes" can refer to motorcycles or regular bicycles. All this represents is a product line I was unaware of. And under my proposal, all Mini would have to do would be to include the link you provided when they register the domain under sunrise, and that should be that. Personally, I don't see how the SDRP challenge process could be retooled to turn it into something that adequately represents the interests of potential future registrants without injecting massive amounts of transparency into the sunrise and TMCH processes... but I would be interested to hear your thoughts as to how this might work. On Thu, May 9, 2019 at 12:38 PM BECKHAM, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Thanks Ariel, Copying here, my full email to the Sunrise List from earlier today as it relates to proposal No. 13: -- Thanks Julie, Just for fun (as I am aware the example was merely anecdotal), further to our hypothesizing last night, indeed, MINI does have a range of folding bikes: https://www.bmwblog.com/2018/02/28/new-mini-folding-bike/ This does however illustrate in some ways the nuance in trademark classes and TLD typology that may escape proposal No. 13 in its current form. As I mentioned on our call, I believe there is a shared willingness to address the issue Michael has raised, but via the SDRP challenge process, and not via claims exclusions. Brian -- Brian From: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org<mailto:gnso-rpm-sunrise-bounces@icann.org>> On Behalf Of Ariel Liang Sent: Thursday, May 9, 2019 5:36 PM To: gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Dear Sunrise Sub Team members, As announced, this thread is being opened for final mailing list discussions related to Sunrise Agreed Charter Question 9, including Proposal #13. We ask that you review the Summary Table (as of 16 April 2019) and provide any additional input you may have to the “proposed answers & preliminary recommendations” in relation to the Agreed Charter Question, and consider draft answers to the following questions regarding the individual proposal: a. Should the Sub Team recommend that the full WG consider including this Individual Proposal in the Initial Report for the solicitation of public comment? b. In light of the Individual Proposal, are any modifications to the current “tentative answers & preliminary recommendations” needed? c. Should any additional Sub Team recommendations be made in relation to the agreed Sunrise charter question? Unless the Sub Team Co-Chairs determine otherwise, this discussion thread will remain open until 23:59 UTC on 22 May 2019. Comments/input provided past the closing date or outside this discussion thread will not be taken into account when compiling the final Sub Team member input. Summary Table (Pages 36-40) The draft answers, preliminary recommendations, and links to the relevant individual proposals are in the latest Summary Table (as of 16 April 2019): https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ.... Agreed Sunrise Charter Question 9 (Page 36) The Sub Team just discussed Agreed Charter Question 9 on 08 May 2019, hence the proposed answers are “TBD”. Based on the Sub Team’s discussions, the transcript and notes, staff will provide update. Q9 In light of the evidence gathered above, should the scope of Sunrise Registrations be limited to the categories of goods and services for which? Proposed Answer: TBD Individual Proposal The Sub Team just discussed the Proposal #13 on 08 May 2019, hence there is no draft answer currently on the Summary Table (as of 16 April 2019). Based on the Sub Team’s discussions, the transcript and notes, staff will provide. Link to the individual proposal is included below. Proposal #13: https://community.icann.org/download/attachments/102146375/Proposal%2313.pdf... Where to Find All Discussion Threads Access the Documents wiki page and find the opening messages of the all discussion threads in the table (highlighted in green): https://community.icann.org/x/_oIWBg Best Regards, Mary, Julie, Ariel World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. 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Michael: Replying again in a personal capacity – if there are indeed widespread serious abuses of sunrise registrations taking place ( a contention with which I do not concur) then I would think that proponents of that view would want a fairly rigorous review process to prevent them. But let me ask you this – I presume that if your proposal was adopted that rights holders seeking to complete sunrise registrations in vertical gTLDs that referenced a category if good or services would need to submit a statement explaining how the gTLD string related to goods and services associated with their marks. So if Mini applied for mini.bike and submitted a statement that this related to their offerings of bikes and bike accessories<https://www.shopminiusa.com/MINI-LIFESTYLE/GIFTS-AND-GOODIES/BIKES> at what point in the registration process would that be submitted and what entity would evaluate it? Similarly, if Nike applied for Nike.bike and submitted a statement that this was based upon their offerings of bike shorts<https://www.nike.com/w?q=women%E2%80%99s%20bike%20shorts&vst=bike> – same question? Thanks, Philip Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: Michael Karanicolas <mkaranicolas@gmail.com> Sent: Wednesday, May 29, 2019 1:37 PM To: Corwin, Philip <pcorwin@verisign.com> Cc: mitch@eff.org; gnso-rpm-sunrise@icann.org Subject: [EXTERNAL] Re: Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Obviously, I'm not proposing "letting all proposed registrations get in". I just noted that, in the cases that you mentioned, I wouldn't see a problem. You bring up geo names - which I'm not sure would even be included under this proposal since it's only meant to apply to categories of goods - but if they did, I would not argue for requiring a physical presence there. I'm not sure I fully follow your second question with regard to "the gTLD vertical" - but again, I'm happy for the broader and more inclusive approach. The point of a low bar assessment is to target obvious cases of abuse, or a clear disconnect between a trademark and the domain under request, but to provide for minimal impairment of legitimate registrations, while minimizing all the administrative costs that you keep trying to build in by keeping the assessment relatively inclusive. On Wed, May 29, 2019 at 2:19 PM Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> wrote: Michael: Again, speaking in a personal capacity – I must say I am confused by your response. You say “The evidence that the system is open to abuse, and that abuse has taken place, has been amply demonstrated, and it follows that if we take no action the system will likely continue to be abused.”, but then you say, “I'm generally fine letting them all in. As I said - a low bar assessment, just to make sure the system isn't being obviously abused.” If you believe that significant abuse has and will take place, then how does letting all proposed registrations get in under a low bar assessment address the problem you perceive? Best, Philip Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: Michael Karanicolas <mkaranicolas@gmail.com<mailto:mkaranicolas@gmail.com>> Sent: Wednesday, May 29, 2019 1:06 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> Cc: mitch@eff.org<mailto:mitch@eff.org>; gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Hi Phil, I appreciate you taking the time to look up the Wikipedia entries for so many different languages, but if your purpose was to make the case that there are a lot of different words out there, I'm not sure you needed to bother with the effort. I will concede that point. But if your underlying argument is that none of this matters because there's so many words still available, and one is just as good as another because domain names don't really matter much... Well - what are we all doing here? Seriously - why do people spend tens of millions of dollars on a domain name if one is as good as another? Why did Amazon just spend god-knows how much time and money trying to secure .Amazon, when they could have just shifted over to .AmazonCorp or .TheAmazonCompany if those are just as good and would have spared them the fight? The answer, as we all know, is that while there's lots of words in the English language, they're not all interchangeable, and some letter strings are better than others in conveying an idea. And this is why the registration of incredibly common words, ostensibly for the purpose of trademark protection. is so troubling, because it carves off a space that could, and likely would, be utilized for a legitimate purpose just because it has a tangential relation to an existing mark. The evidence that the system is open to abuse, and that abuse has taken place, has been amply demonstrated, and it follows that if we take no action the system will likely continue to be abused. If we just ignore this issue, which is fairly glaring, I think it will lead to problems down the line, as the working group seeks approval for its broader recommendations. I agree that we need to work towards implementable guidelines, but I don't agree that it's the sort of insurmountable obstacle you are making it out to be, particularly if we adopt a relatively low bar, as I've been saying all this time. I believe you, in a previous post, spoke of "overkill" and a "needlessly complicated" solution - but you're the one pushing the proposal in this direction. I, personally, don't think the assessment needs to be done by a "neutral third, non-contracted party", and as to your other examples - I'm generally fine letting them all in. As I said - a low bar assessment, just to make sure the system isn't being obviously abused. Best, Michael On Wed, May 29, 2019 at 12:25 PM Corwin, Philip via Gnso-rpm-sunrise <gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org>> wrote: This response is in a personal capacity. First, I would note that the standard for a proposal to be included in the Initial Report for the purpose of soliciting public comment is strong support within the sub team and subsequently the full WG. I do not perceive Michael’s proposal to limit sunrise registrations in at least vertical gTLDs to those related (a term that requires significant definition) to the goods and services to which a mark has been registered as having received that level of support. Indeed, I believe the sub team has become more divided on it as discussion has proceeded. (Of course, the sub team’s consideration of the proposal will, if my perception of support level is borne out, still be noted in the Initial Report and anyone will be free to comment upon it; it simply will not be endorsed proposal on which the ICANN community is specifically invited to comment.) Second, I have stated my belief that, especially with higher sunrise pricing being a gating factor, rights holders have been judicious in their use of sunrise registrations. The fact that sunrise registrations have only averaged 150-200 per new gTLD documents that very selective use, and provides no evidence of significant abuse. (As for questionable marks being registered, that is a subject for review in our next and final phase, when we focus back on and conclude recommendations on the TMCH, including the requirements for recording a mark.) Third, as we seem to be engaged in mathematical analysis, consider that according to the Oxford English Dictionary<https://en.oxforddictionaries.com/explore/how-many-words-are-there-in-the-en...>, “there are, at the very least, a quarter of a million distinct English words, excluding inflections, and words from technical and regional vocabulary not covered by the OED, or words not yet added to the published dictionary, of which perhaps 20 per cent are no longer in current use. If distinct senses were counted, the total would probably approach three quarters of a million”. Wikipedia<https://en.m.wikipedia.org/wiki/List_of_dictionaries_by_number_of_words>, for its part, notes that the 5th edition of the American Heritage Dictionary of the English Language contains more than 370,000 words. English of course is not the only language written in ASCII characters (and therefore not IDNs) – again according to Wikipedia, German has 330,00 words, Italian 260,000, French 135,000, Spanish 93,000, Portuguese 442,000, and so on. But sticking just to English, if we conservatively estimate that there are 300,000 distinct dictionary words, then even an average sunrise registration total of 200 words per new gTLD leaves 299,800 available to register by anyone (and that doesn’t include made up, non-dictionary words). Out of 300,000 available words, 200 represents less than 1/10th of one percent. So the burden of sunrise registrations on the availability of dictionary words as domain names is infinitesimal as, for English alone, 99.9% of all dictionary words remain available for general registration. Fourth, the speech embodied in a domain name is minimal at best. Domain names function primarily as an Internet address, with an expressive function being secondary. Most domain names consist (and the ones we are discussing do so entirely) of a single term separated by a dot from the gTLD string label. Not much meaningful speech is made up of just one word plus a gTLD designation (e.g., ride.bike). Fifth, the domain platform is the primary space in which meaningful speech is expressed, and a sunrise registration leaves ample (indeed, almost unlimited) latitude for those who do not possess trademark rights to engage in unfettered speech. The proposal under discussion cited as an alleged “abuse” BMW’s sunrise registration of mini.bikes. But that registration still leaves available a vast number of .bike domains that include the word mini to serve as platforms for meaningful speech – including minis.bike, miniraces.bike, minisafety.bikes, minifans.bike, minikids.bike, minidirt.bike, and on and on. So the availability of sunrise registrations has essentially no censorship effect on free speech. Sixth and most importantly, even if one agrees with the proponents of the proposal (which I do not) that there is some problem in need of a solution, they have failed to describe any practical means by which the proposal would be uniformly and effectively administered, or estimated what such a process would cost. While there is no requirement to develop a full implementation plan until after a proposal receives consensus support, there should at least be some general description of what administration will entail (and I must say that I do not find statements such as “it’s easy” or “during the registration process” to be very convincing or assuring). If the proponents truly believe there is a significant problem to be redressed then they would want their solution to be administered in an objective, uniform, and effective manner by a neutral third, non-contracted party (noting also that registries and registrars would have commercial incentives to accept almost any rationale provided by a rights holder for a proposed domain registration). A standard policy will have to be developed that wrestles with such questions as whether a rights holder wishing to register in a geo domain must maintain a physical facility in the locale, or whether demonstrating sales in the location is sufficient; and whether “related to” is to be narrowly defined to require that the rights holder have registrations for goods and services that directly coincide with the gTLD vertical, or whether it is sufficient to simply supply goods and services that are employed by those engaged in activities described by the vertical (the first would bar nike.bike, the second would allow it). And of course there must be some appeals process for those rights holders who believe they have been improperly barred from making a valid sunrise registration – and who will administer that, and what standard will it employ? Given the overall failure to describe any demonstrable and consistent abuse or significant impingement of speech by actual sunrise registartions, as well as the lack of even a general outline of a credible implementation model with reasonable costs and manageable rules, I cannot support the proposal. Thanks to all for your consideration of these personal views. Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org<mailto:gnso-rpm-sunrise-bounces@icann.org>> On Behalf Of Mitch Stoltz Sent: Tuesday, May 28, 2019 8:53 PM To: gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Hi Claudio, According to your numbers, trademark holders have registered between 105,000 and 140,000 domains that were never available to noncommercial users. You and others suggest that most of these registrations were “defensive,” meaning that they were done primarily to prevent anyone else from registering those domain names - not to use them. What’s more, given the little we know about what marks are in the TMCH, a great many of those domain names are either commons words, or words that are associated with a product or service ONLY in particular contexts. This represents an enormous loss to the public that will only grow as new gTLDs roll out. I take issue with your suggestion that noncommercial users can simply choose a different domain name that hasn’t been taken by trademark holders before public availability. For a noncommercial user, the expressive value of a domain name can be equal to or greater than its value to a commercial user. A noncommercial user acting in good faith should have equal opportunity to register a domain. Yes, rightsholders can choose to register domains in sunrise based on their internal calculus about where "abuse" is likely to happen, but they are also currently free to act as though good faith registrations by noncommercial users are "abuse." That's a fundamental flaw in the Sunrise mechanism. At a minimum, Michael Karanicolas's proposal to limit sunrise registrations based on the goods and services actually sold by the rightsholder would begin to address this. Best, Mitch Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate | https://act.eff.org/ On 5/22/19 8:46 PM, claudio di gangi wrote: hi Mitch, Sunrise registrations have averaged between 150 and 200 domains per TLD. I believe there over 700 different new gTLDs where non-commercial users can register domains for non-commercial use. For the purposes of consensus-building, when one does the math, can you kindly clarify on how this results with harms falling disproportionately on non-commercial registrants and small business registrants? In terms of the orthogonal domains you mention, registration abuse that targets a brand can easily take place in these zones (and often does take place). Isn’t this a standing justification, along within the fact that only 150 to 200 domains are registered during Sunrise per TLD, for having Sunrise in place in to prevent consumer confusion and harm from taking place? In terms of the question of scale that your mention, I don’t see a necessary inconsistency that should raise alarm. One on hand, the brand owner is making an informed choice about where to protect their brand, often because they have been previously targeted and they recognize a pattern, or due to some other implicit connection with the brand that made not be readily apparent to an outside observer on the surface. But for the vast majority of cases, defensive registrations are based on strategic factors, such as the likelihood of infringement in a particular TLD. I do consider this as resulting in ex-ante harm to non-commercial registrants, as for one reason there are virtually an unlimited number of registrations available in nearly a 1000 gTLDs. To take an extreme case, even in .com with nearly 140 million domains registered, successful domainers continue to profit and non-commercial users have meaningful choices for expression. Thanks in advance for your thoughts. Best regards, Claudio On Wednesday, May 22, 2019, Mitch Stoltz <mitch@eff.org<mailto:mitch@eff.org>> wrote: This working group has hit on numerous problems with the Sunrise regime, with harms falling disproportionately on non-commercial and small business registrants. Michael K. has proposed a narrow solution to one of these problems, and I think it deserves serious consideration. Quite simply, Sunrise as it exists is an expansion of trademark rights. Allowing priority registration without regard to the actual goods and services to which a mark pertains turns a trademark from a source identifier into a global dominion over a word or phrase. We have ample evidence that Sunrise is being abused in just that way. Looking beyond obvious abuses, there is little or no justification for giving trademark holders priority registration in TLDs that are clearly orthogonal to any product or service the mark-holder offers. At scale, having that priority absolutely harms the free expression rights of others. To use a simple example, Apple is a distinctive trademark in consumer technology but a generic word in many other circumstances. There are any number of individuals and organizations who should be able to express themselves with a domain name containing Apple, in ways that raise no possibility of trademark infringement or cybersquatting. All of these potential users should have equal opportunity to register "apple" in new TLDs that don't raise an association with technology products. Moreover, we need to be consistent about questions of scale. If sunrise registrations are used often enough to provide benefit to trademark holders, then they are also being used often enough to interfere with the rights of noncommercial users. And if they are not used very much at all, then we should be jettisoning the program as unnecessary. If Sunrise is to continue, Michael's proposal is a straightforward way of making it conform to the actual legal rights it's meant to protect. Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate | https://act.eff.org/ On 5/15/19 8:09 AM, Kathy Kleiman wrote: Hi Phil, As a co-chair, I'm a little surprised by the vehemence of the debate. Many of us are lawyers and we're used to talking about important issues in dispassionate ways. I think we should do so here. As an ordinary member, I participate in these discussions, as you and Brian do, and in that capacity, I note that we have a problem. I also see the seeds of the solution in your answer below. In 2009, we foresaw that there might be gaming of the Sunrise period -- people registering trademarks for ordinary words to get priority during Sunrise. We now see it happening. Journalists, reporters and bloggers have done the work for us -- and no one seems surprised by their results. I list some of the articles we (as a Subteam) collected below. Links in our Sunrise Summary Table under Q9 - https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ... Nothing in the MK proposal is burdensome, or unusual. It's narrowly-tailored (too narrowly-tailored in my view) to prevent gaming and to use systems already in place. As you note below, the cost of the vetting is part of the process for many gTLDs and ccTLDs -- whether it is providing residency in Japan or the objective standard for .bank or .insurance or .attorney or .cpa. It's already built into our processes -- and not burdensome -- and easily extended to Sunrise. We know there is a misuse and even abuse of the Sunrise system. The MK proposal is an easy fix, and one that actually protects and preserves the balance of rights. We are being asked to solve problems -- and this is a big one. Best, Kathy Articles in our gathering data (links in Summary Table): ● How one guy games new gTLD sunrise periods ● Fake Trademarks Stealing Generic Domains In New gTLD Sunrises ● The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The" ● How common words like Pizza, Money, and Shopping ended up in the Trademark Clearinghouse for new TLDs ● The numbers are in! Donuts sunrises typically get 100+ domains, but they also got gamed ● Digging in on Donuts’ Sunrise: Amazon tops the list, gaming, and top registrars ● .Build Registry Using Questionable Swiss Trademark Registration To Grab “Build” Domains In Sunrise ● How Did RetailMeNot Get 849 .Codes Domains In Sunrise Without AnyTrademarks? On 5/15/2019 10:10 AM, Corwin, Philip wrote: Kathy: I presume that these are your personal views, just as the email I posted last week raising serious doubts about Michael’s proposal were clearly labeled as personal. Likewise, what follows is an expression of personal views. Not to repeat myself, but to the extent there is gaming based on weak marks it should be a focus of discussion when we review requirements for mark recordation in the TMCH. But I have seen no substantial evidence that legitimate trademark holders are seeking to utilize sunrise registrations in gTLDs other than those for which they have a good faith belief that registration is necessary for brand protection. Even where a sunrise registration might arguably be abusive, I do not see that as placing any burden on the speech rights of others who wish to register a domain name that bears some resemblance. I also described why I believe adoption of this proposal will require a costly bureaucracy to yield reasonably consistent applications of what will always be a subjective standard subject to interpretation. I do not see this as the same as the objective standard for a .bank or .insurance domain (where the cost of vetting is built into the registration fee, and the requirement is satisfied by furnishing a certificate evidencing that the applicant is a regulated institution) or even ccTLDs, where some have objective criteria to demonstrate being domiciled or doing business in a particular jurisdiction. While I don’t believe that Michael has the responsibility to provide a full-blown implementation scheme, I have not yet heard a credible explanation of how adoption of a relationship test will be consistently administered in a cost-effective way. Finally, and more broadly, we are in the process of considering proposals to recommend to the full WG for inclusion in the Initial Report for public comment. While that does not require a demonstration of consensus at this point, it should require some reasonably strong support within the sub team and, following that, the WG; and some prospect that the proposal can achieve consensus down the road within the WG (for the Final Report) and Council. Frankly, I don’t see that reasonably strong support for Michael’s proposal within the sub team but rather a sharp divide over whether there is even a problem that requires addressing. And, while I have no crystal ball, I feel reasonably confident that in the end contracted parties will oppose it for administrative and cost reasons, among others, and that BC and IPC members will oppose it as putting yet another burden on sunrise registrations – so I don’t see any prospect of consensus. Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way<https://maps.google.com/?q=12061+Bluemont+Way+%0D%0A++++++++++++++++Reston,+...> Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org><mailto:gnso-rpm-sunrise-bounces@icann.org> On Behalf Of Kathy Kleiman Sent: Wednesday, May 15, 2019 9:04 AM To: gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Hi All, I think the discussion is an important one because it is brings up issues across categories. a) Michael's proposal addresses a problem we have found in our data-driven analysis. There are gamers out there who are registering trademarks in a certain category of goods and services, and then using them to register an array of domain names in Sunrise having nothing at all to do with the categories of their trademark registration. We committed at the outset of the RPMs -- in the 2009 era - that we would not be expanding trademark rights. That's exactly what is happening in these situations and registrations. b) The SDRP is broken - barely used because the Trademark Clearinghouse was supposed to be public, during implementation it was turned private, so challengers cannot get the information they need to challenge. Plus, it's not the job a challenger to police the basic principle of the entire RPM process. Brian, you have mentioned your "suggested improvements to the SDRP" from 2 years ago several times, but that was 1000s of emails ago, and we worked hard to compile the data and solutions that we are looking at today. Per the rules that we agreed to as Co-Chairs and as a WG, we created a new table, atop extensive data gathering, and things must be reintroduced from prior to our URS break. If you could do so, that would be very timely. I've suggested changes to the SDRP that would give challengers some chance to use it -- although only for the narrow purpose intended. The SDRP was not intended to solve a broad gaming problem -- because we did not anticipate one. We know know it exists; and a policy/operational fix resolves it. c) Michael suggests a narrowly tailored solution for a gaming problem that we now know exists. His solution is completely consistent with how registrars, in many of these gTLDs, already handle General Availability (e.g., required proof to register in .BANK). It's not a new process -- just a way to use existing process to avoid gaming and preserve the principles we agreed to in this process. Best, Kathy On 5/9/2019 12:04 PM, BECKHAM, Brian wrote: Michael, I would personally prefer not to get into a Google search race for some kind of “exceptions to prove the rule” and also because “tattoos” is not a class of marks<https://trademark.eu/list-of-classes-with-explanatory-notes/>, but these articles could be of interest in terms of explaining why they may seek such a defensive sunrise registration: https://www.pinterest.ch/steelephotograp/mini-cooper-tattoos/ https://metro.co.uk/2011/01/25/andreas-muller-has-mini-tattooed-on-penis-to-... Also, while MINI may not make motorcycles, their sister company BMW does, so they could well branch out into that product area (including related services). I have already suggested improvements to the SDRP on several occasions, going back almost 2 years now (those were apparently parked in preference of various data seeking exercises), so would respectfully suggest that others take the baton from here. As I said, I believe there is a genuine willingness to explore such solutions. At the same time, it seems unlikely that the current proposal No. 13 is likely to garner consensus, and will defer to the Sub Team Co-Chairs to address that at the level of our present discussions. Brian From: Michael Karanicolas <mkaranicolas@gmail.com><mailto:mkaranicolas@gmail.com> Sent: Thursday, May 9, 2019 5:50 PM To: BECKHAM, Brian <brian.beckham@wipo.int><mailto:brian.beckham@wipo.int> Cc: Ariel Liang <ariel.liang@icann.org><mailto:ariel.liang@icann.org>; gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Interesting, thanks for sharing. I checked whether Mini made motorcycles before I sent my proposal in... I didn't think to check whether they made regular bicycles! By any chance, were you able to find any examples of the company branching into the tattoo business as well (http://mini.tattoo)? I'm not sure if this presents a "nuance" in trademark classes. I don't think it's much of a revelation that "bikes" can refer to motorcycles or regular bicycles. All this represents is a product line I was unaware of. And under my proposal, all Mini would have to do would be to include the link you provided when they register the domain under sunrise, and that should be that. Personally, I don't see how the SDRP challenge process could be retooled to turn it into something that adequately represents the interests of potential future registrants without injecting massive amounts of transparency into the sunrise and TMCH processes... but I would be interested to hear your thoughts as to how this might work. On Thu, May 9, 2019 at 12:38 PM BECKHAM, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Thanks Ariel, Copying here, my full email to the Sunrise List from earlier today as it relates to proposal No. 13: -- Thanks Julie, Just for fun (as I am aware the example was merely anecdotal), further to our hypothesizing last night, indeed, MINI does have a range of folding bikes: https://www.bmwblog.com/2018/02/28/new-mini-folding-bike/ This does however illustrate in some ways the nuance in trademark classes and TLD typology that may escape proposal No. 13 in its current form. As I mentioned on our call, I believe there is a shared willingness to address the issue Michael has raised, but via the SDRP challenge process, and not via claims exclusions. Brian -- Brian From: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org<mailto:gnso-rpm-sunrise-bounces@icann.org>> On Behalf Of Ariel Liang Sent: Thursday, May 9, 2019 5:36 PM To: gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Dear Sunrise Sub Team members, As announced, this thread is being opened for final mailing list discussions related to Sunrise Agreed Charter Question 9, including Proposal #13. We ask that you review the Summary Table (as of 16 April 2019) and provide any additional input you may have to the “proposed answers & preliminary recommendations” in relation to the Agreed Charter Question, and consider draft answers to the following questions regarding the individual proposal: a. Should the Sub Team recommend that the full WG consider including this Individual Proposal in the Initial Report for the solicitation of public comment? b. In light of the Individual Proposal, are any modifications to the current “tentative answers & preliminary recommendations” needed? c. Should any additional Sub Team recommendations be made in relation to the agreed Sunrise charter question? Unless the Sub Team Co-Chairs determine otherwise, this discussion thread will remain open until 23:59 UTC on 22 May 2019. Comments/input provided past the closing date or outside this discussion thread will not be taken into account when compiling the final Sub Team member input. Summary Table (Pages 36-40) The draft answers, preliminary recommendations, and links to the relevant individual proposals are in the latest Summary Table (as of 16 April 2019): https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ.... Agreed Sunrise Charter Question 9 (Page 36) The Sub Team just discussed Agreed Charter Question 9 on 08 May 2019, hence the proposed answers are “TBD”. Based on the Sub Team’s discussions, the transcript and notes, staff will provide update. Q9 In light of the evidence gathered above, should the scope of Sunrise Registrations be limited to the categories of goods and services for which? Proposed Answer: TBD Individual Proposal The Sub Team just discussed the Proposal #13 on 08 May 2019, hence there is no draft answer currently on the Summary Table (as of 16 April 2019). Based on the Sub Team’s discussions, the transcript and notes, staff will provide. Link to the individual proposal is included below. Proposal #13: https://community.icann.org/download/attachments/102146375/Proposal%2313.pdf... 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Thanks for your further response, Michael. Again, I do not perceive substantial abuse or incursion on free speech with the present system. A registrar review of the submitted rationale would likely be nothing more than a low speed bump before completion of registration in almost every instance. I look forward to working with you in reviewing the standards for mark recordation in the TMCH when we reach the next stage of our work. Best, Philip Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: Michael Karanicolas <mkaranicolas@gmail.com> Sent: Wednesday, June 05, 2019 1:40 PM To: Corwin, Philip <pcorwin@verisign.com> Cc: mitch@eff.org; gnso-rpm-sunrise@icann.org Subject: [EXTERNAL] Re: Re: Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Hi Phil, "Replying again in a personal capacity – if there are indeed widespread serious abuses of sunrise registrations taking place ( a contention with which I do not concur) then I would think that proponents of that view would want a fairly rigorous review process to prevent them." Personally, I would support a more robust ruleset, and if you recall, when I first raised this issue, I did suggest a stricter standard. This proposal came about as a result of the objections that were raised then. I understand that compromise can be necessary, so I attempted to respond to the substance of these objections by narrowing the proposal, and crafting it in a manner which is minimally intrusive to legitimate registrations and easier to implement while still addressing egregious cases, as an attempt to generate enough support to get something done to address the problem. "But let me ask you this – I presume that if your proposal was adopted that rights holders seeking to complete sunrise registrations in vertical gTLDs that referenced a category if good or services would need to submit a statement explaining how the gTLD string related to goods and services associated with their marks. So if Mini applied for mini.bike and submitted a statement that this related to their offerings of bikes and bike accessories<https://www.shopminiusa.com/MINI-LIFESTYLE/GIFTS-AND-GOODIES/BIKES> at what point in the registration process would that be submitted and what entity would evaluate it? Similarly, if Nike applied for Nike.bike and submitted a statement that this was based upon their offerings of bike shorts<https://www.nike.com/w?q=women%E2%80%99s%20bike%20shorts&vst=bike> – same question? While I am open to discussion on implementation, I think that the most practical way to handle this would be for the registrar to do it at the point of sale. Again - similar to the way ccTLD residency checks and the .bank reviews work, but simpler. They could take a fast look at the statement (re: offerings of bikes or whatever), and then keep a record of the response. If there were questions later (from the registries or pursuant to a SDRP perhaps) the registrars could share the information. Again - I would be open to suggestion, if you think an alternative structure would be more efficient. Best, Michael On Wed, May 29, 2019 at 3:09 PM Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> wrote: Michael: Replying again in a personal capacity – if there are indeed widespread serious abuses of sunrise registrations taking place ( a contention with which I do not concur) then I would think that proponents of that view would want a fairly rigorous review process to prevent them. But let me ask you this – I presume that if your proposal was adopted that rights holders seeking to complete sunrise registrations in vertical gTLDs that referenced a category if good or services would need to submit a statement explaining how the gTLD string related to goods and services associated with their marks. So if Mini applied for mini.bike and submitted a statement that this related to their offerings of bikes and bike accessories<https://www.shopminiusa.com/MINI-LIFESTYLE/GIFTS-AND-GOODIES/BIKES> at what point in the registration process would that be submitted and what entity would evaluate it? Similarly, if Nike applied for Nike.bike and submitted a statement that this was based upon their offerings of bike shorts<https://www.nike.com/w?q=women%E2%80%99s%20bike%20shorts&vst=bike> – same question? Thanks, Philip Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: Michael Karanicolas <mkaranicolas@gmail.com<mailto:mkaranicolas@gmail.com>> Sent: Wednesday, May 29, 2019 1:37 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> Cc: mitch@eff.org<mailto:mitch@eff.org>; gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: [EXTERNAL] Re: Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Obviously, I'm not proposing "letting all proposed registrations get in". I just noted that, in the cases that you mentioned, I wouldn't see a problem. You bring up geo names - which I'm not sure would even be included under this proposal since it's only meant to apply to categories of goods - but if they did, I would not argue for requiring a physical presence there. I'm not sure I fully follow your second question with regard to "the gTLD vertical" - but again, I'm happy for the broader and more inclusive approach. The point of a low bar assessment is to target obvious cases of abuse, or a clear disconnect between a trademark and the domain under request, but to provide for minimal impairment of legitimate registrations, while minimizing all the administrative costs that you keep trying to build in by keeping the assessment relatively inclusive. On Wed, May 29, 2019 at 2:19 PM Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> wrote: Michael: Again, speaking in a personal capacity – I must say I am confused by your response. You say “The evidence that the system is open to abuse, and that abuse has taken place, has been amply demonstrated, and it follows that if we take no action the system will likely continue to be abused.”, but then you say, “I'm generally fine letting them all in. As I said - a low bar assessment, just to make sure the system isn't being obviously abused.” If you believe that significant abuse has and will take place, then how does letting all proposed registrations get in under a low bar assessment address the problem you perceive? Best, Philip Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: Michael Karanicolas <mkaranicolas@gmail.com<mailto:mkaranicolas@gmail.com>> Sent: Wednesday, May 29, 2019 1:06 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> Cc: mitch@eff.org<mailto:mitch@eff.org>; gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Hi Phil, I appreciate you taking the time to look up the Wikipedia entries for so many different languages, but if your purpose was to make the case that there are a lot of different words out there, I'm not sure you needed to bother with the effort. I will concede that point. But if your underlying argument is that none of this matters because there's so many words still available, and one is just as good as another because domain names don't really matter much... Well - what are we all doing here? Seriously - why do people spend tens of millions of dollars on a domain name if one is as good as another? Why did Amazon just spend god-knows how much time and money trying to secure .Amazon, when they could have just shifted over to .AmazonCorp or .TheAmazonCompany if those are just as good and would have spared them the fight? The answer, as we all know, is that while there's lots of words in the English language, they're not all interchangeable, and some letter strings are better than others in conveying an idea. And this is why the registration of incredibly common words, ostensibly for the purpose of trademark protection. is so troubling, because it carves off a space that could, and likely would, be utilized for a legitimate purpose just because it has a tangential relation to an existing mark. The evidence that the system is open to abuse, and that abuse has taken place, has been amply demonstrated, and it follows that if we take no action the system will likely continue to be abused. If we just ignore this issue, which is fairly glaring, I think it will lead to problems down the line, as the working group seeks approval for its broader recommendations. I agree that we need to work towards implementable guidelines, but I don't agree that it's the sort of insurmountable obstacle you are making it out to be, particularly if we adopt a relatively low bar, as I've been saying all this time. I believe you, in a previous post, spoke of "overkill" and a "needlessly complicated" solution - but you're the one pushing the proposal in this direction. I, personally, don't think the assessment needs to be done by a "neutral third, non-contracted party", and as to your other examples - I'm generally fine letting them all in. As I said - a low bar assessment, just to make sure the system isn't being obviously abused. Best, Michael On Wed, May 29, 2019 at 12:25 PM Corwin, Philip via Gnso-rpm-sunrise <gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org>> wrote: This response is in a personal capacity. First, I would note that the standard for a proposal to be included in the Initial Report for the purpose of soliciting public comment is strong support within the sub team and subsequently the full WG. I do not perceive Michael’s proposal to limit sunrise registrations in at least vertical gTLDs to those related (a term that requires significant definition) to the goods and services to which a mark has been registered as having received that level of support. Indeed, I believe the sub team has become more divided on it as discussion has proceeded. (Of course, the sub team’s consideration of the proposal will, if my perception of support level is borne out, still be noted in the Initial Report and anyone will be free to comment upon it; it simply will not be endorsed proposal on which the ICANN community is specifically invited to comment.) Second, I have stated my belief that, especially with higher sunrise pricing being a gating factor, rights holders have been judicious in their use of sunrise registrations. The fact that sunrise registrations have only averaged 150-200 per new gTLD documents that very selective use, and provides no evidence of significant abuse. (As for questionable marks being registered, that is a subject for review in our next and final phase, when we focus back on and conclude recommendations on the TMCH, including the requirements for recording a mark.) Third, as we seem to be engaged in mathematical analysis, consider that according to the Oxford English Dictionary<https://en.oxforddictionaries.com/explore/how-many-words-are-there-in-the-en...>, “there are, at the very least, a quarter of a million distinct English words, excluding inflections, and words from technical and regional vocabulary not covered by the OED, or words not yet added to the published dictionary, of which perhaps 20 per cent are no longer in current use. If distinct senses were counted, the total would probably approach three quarters of a million”. Wikipedia<https://en.m.wikipedia.org/wiki/List_of_dictionaries_by_number_of_words>, for its part, notes that the 5th edition of the American Heritage Dictionary of the English Language contains more than 370,000 words. English of course is not the only language written in ASCII characters (and therefore not IDNs) – again according to Wikipedia, German has 330,00 words, Italian 260,000, French 135,000, Spanish 93,000, Portuguese 442,000, and so on. But sticking just to English, if we conservatively estimate that there are 300,000 distinct dictionary words, then even an average sunrise registration total of 200 words per new gTLD leaves 299,800 available to register by anyone (and that doesn’t include made up, non-dictionary words). Out of 300,000 available words, 200 represents less than 1/10th of one percent. So the burden of sunrise registrations on the availability of dictionary words as domain names is infinitesimal as, for English alone, 99.9% of all dictionary words remain available for general registration. Fourth, the speech embodied in a domain name is minimal at best. Domain names function primarily as an Internet address, with an expressive function being secondary. Most domain names consist (and the ones we are discussing do so entirely) of a single term separated by a dot from the gTLD string label. Not much meaningful speech is made up of just one word plus a gTLD designation (e.g., ride.bike). Fifth, the domain platform is the primary space in which meaningful speech is expressed, and a sunrise registration leaves ample (indeed, almost unlimited) latitude for those who do not possess trademark rights to engage in unfettered speech. The proposal under discussion cited as an alleged “abuse” BMW’s sunrise registration of mini.bikes. But that registration still leaves available a vast number of .bike domains that include the word mini to serve as platforms for meaningful speech – including minis.bike, miniraces.bike, minisafety.bikes, minifans.bike, minikids.bike, minidirt.bike, and on and on. So the availability of sunrise registrations has essentially no censorship effect on free speech. Sixth and most importantly, even if one agrees with the proponents of the proposal (which I do not) that there is some problem in need of a solution, they have failed to describe any practical means by which the proposal would be uniformly and effectively administered, or estimated what such a process would cost. While there is no requirement to develop a full implementation plan until after a proposal receives consensus support, there should at least be some general description of what administration will entail (and I must say that I do not find statements such as “it’s easy” or “during the registration process” to be very convincing or assuring). If the proponents truly believe there is a significant problem to be redressed then they would want their solution to be administered in an objective, uniform, and effective manner by a neutral third, non-contracted party (noting also that registries and registrars would have commercial incentives to accept almost any rationale provided by a rights holder for a proposed domain registration). A standard policy will have to be developed that wrestles with such questions as whether a rights holder wishing to register in a geo domain must maintain a physical facility in the locale, or whether demonstrating sales in the location is sufficient; and whether “related to” is to be narrowly defined to require that the rights holder have registrations for goods and services that directly coincide with the gTLD vertical, or whether it is sufficient to simply supply goods and services that are employed by those engaged in activities described by the vertical (the first would bar nike.bike, the second would allow it). And of course there must be some appeals process for those rights holders who believe they have been improperly barred from making a valid sunrise registration – and who will administer that, and what standard will it employ? Given the overall failure to describe any demonstrable and consistent abuse or significant impingement of speech by actual sunrise registartions, as well as the lack of even a general outline of a credible implementation model with reasonable costs and manageable rules, I cannot support the proposal. Thanks to all for your consideration of these personal views. Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org<mailto:gnso-rpm-sunrise-bounces@icann.org>> On Behalf Of Mitch Stoltz Sent: Tuesday, May 28, 2019 8:53 PM To: gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Hi Claudio, According to your numbers, trademark holders have registered between 105,000 and 140,000 domains that were never available to noncommercial users. You and others suggest that most of these registrations were “defensive,” meaning that they were done primarily to prevent anyone else from registering those domain names - not to use them. What’s more, given the little we know about what marks are in the TMCH, a great many of those domain names are either commons words, or words that are associated with a product or service ONLY in particular contexts. This represents an enormous loss to the public that will only grow as new gTLDs roll out. I take issue with your suggestion that noncommercial users can simply choose a different domain name that hasn’t been taken by trademark holders before public availability. For a noncommercial user, the expressive value of a domain name can be equal to or greater than its value to a commercial user. A noncommercial user acting in good faith should have equal opportunity to register a domain. Yes, rightsholders can choose to register domains in sunrise based on their internal calculus about where "abuse" is likely to happen, but they are also currently free to act as though good faith registrations by noncommercial users are "abuse." That's a fundamental flaw in the Sunrise mechanism. At a minimum, Michael Karanicolas's proposal to limit sunrise registrations based on the goods and services actually sold by the rightsholder would begin to address this. Best, Mitch Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate | https://act.eff.org/ On 5/22/19 8:46 PM, claudio di gangi wrote: hi Mitch, Sunrise registrations have averaged between 150 and 200 domains per TLD. I believe there over 700 different new gTLDs where non-commercial users can register domains for non-commercial use. For the purposes of consensus-building, when one does the math, can you kindly clarify on how this results with harms falling disproportionately on non-commercial registrants and small business registrants? In terms of the orthogonal domains you mention, registration abuse that targets a brand can easily take place in these zones (and often does take place). Isn’t this a standing justification, along within the fact that only 150 to 200 domains are registered during Sunrise per TLD, for having Sunrise in place in to prevent consumer confusion and harm from taking place? In terms of the question of scale that your mention, I don’t see a necessary inconsistency that should raise alarm. One on hand, the brand owner is making an informed choice about where to protect their brand, often because they have been previously targeted and they recognize a pattern, or due to some other implicit connection with the brand that made not be readily apparent to an outside observer on the surface. But for the vast majority of cases, defensive registrations are based on strategic factors, such as the likelihood of infringement in a particular TLD. I do consider this as resulting in ex-ante harm to non-commercial registrants, as for one reason there are virtually an unlimited number of registrations available in nearly a 1000 gTLDs. To take an extreme case, even in .com with nearly 140 million domains registered, successful domainers continue to profit and non-commercial users have meaningful choices for expression. Thanks in advance for your thoughts. Best regards, Claudio On Wednesday, May 22, 2019, Mitch Stoltz <mitch@eff.org<mailto:mitch@eff.org>> wrote: This working group has hit on numerous problems with the Sunrise regime, with harms falling disproportionately on non-commercial and small business registrants. Michael K. has proposed a narrow solution to one of these problems, and I think it deserves serious consideration. Quite simply, Sunrise as it exists is an expansion of trademark rights. Allowing priority registration without regard to the actual goods and services to which a mark pertains turns a trademark from a source identifier into a global dominion over a word or phrase. We have ample evidence that Sunrise is being abused in just that way. Looking beyond obvious abuses, there is little or no justification for giving trademark holders priority registration in TLDs that are clearly orthogonal to any product or service the mark-holder offers. At scale, having that priority absolutely harms the free expression rights of others. To use a simple example, Apple is a distinctive trademark in consumer technology but a generic word in many other circumstances. There are any number of individuals and organizations who should be able to express themselves with a domain name containing Apple, in ways that raise no possibility of trademark infringement or cybersquatting. All of these potential users should have equal opportunity to register "apple" in new TLDs that don't raise an association with technology products. Moreover, we need to be consistent about questions of scale. If sunrise registrations are used often enough to provide benefit to trademark holders, then they are also being used often enough to interfere with the rights of noncommercial users. And if they are not used very much at all, then we should be jettisoning the program as unnecessary. If Sunrise is to continue, Michael's proposal is a straightforward way of making it conform to the actual legal rights it's meant to protect. Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate | https://act.eff.org/ On 5/15/19 8:09 AM, Kathy Kleiman wrote: Hi Phil, As a co-chair, I'm a little surprised by the vehemence of the debate. Many of us are lawyers and we're used to talking about important issues in dispassionate ways. I think we should do so here. As an ordinary member, I participate in these discussions, as you and Brian do, and in that capacity, I note that we have a problem. I also see the seeds of the solution in your answer below. In 2009, we foresaw that there might be gaming of the Sunrise period -- people registering trademarks for ordinary words to get priority during Sunrise. We now see it happening. Journalists, reporters and bloggers have done the work for us -- and no one seems surprised by their results. I list some of the articles we (as a Subteam) collected below. Links in our Sunrise Summary Table under Q9 - https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ... Nothing in the MK proposal is burdensome, or unusual. It's narrowly-tailored (too narrowly-tailored in my view) to prevent gaming and to use systems already in place. As you note below, the cost of the vetting is part of the process for many gTLDs and ccTLDs -- whether it is providing residency in Japan or the objective standard for .bank or .insurance or .attorney or .cpa. It's already built into our processes -- and not burdensome -- and easily extended to Sunrise. We know there is a misuse and even abuse of the Sunrise system. The MK proposal is an easy fix, and one that actually protects and preserves the balance of rights. We are being asked to solve problems -- and this is a big one. Best, Kathy Articles in our gathering data (links in Summary Table): ● How one guy games new gTLD sunrise periods ● Fake Trademarks Stealing Generic Domains In New gTLD Sunrises ● The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The" ● How common words like Pizza, Money, and Shopping ended up in the Trademark Clearinghouse for new TLDs ● The numbers are in! Donuts sunrises typically get 100+ domains, but they also got gamed ● Digging in on Donuts’ Sunrise: Amazon tops the list, gaming, and top registrars ● .Build Registry Using Questionable Swiss Trademark Registration To Grab “Build” Domains In Sunrise ● How Did RetailMeNot Get 849 .Codes Domains In Sunrise Without AnyTrademarks? On 5/15/2019 10:10 AM, Corwin, Philip wrote: Kathy: I presume that these are your personal views, just as the email I posted last week raising serious doubts about Michael’s proposal were clearly labeled as personal. Likewise, what follows is an expression of personal views. Not to repeat myself, but to the extent there is gaming based on weak marks it should be a focus of discussion when we review requirements for mark recordation in the TMCH. But I have seen no substantial evidence that legitimate trademark holders are seeking to utilize sunrise registrations in gTLDs other than those for which they have a good faith belief that registration is necessary for brand protection. Even where a sunrise registration might arguably be abusive, I do not see that as placing any burden on the speech rights of others who wish to register a domain name that bears some resemblance. I also described why I believe adoption of this proposal will require a costly bureaucracy to yield reasonably consistent applications of what will always be a subjective standard subject to interpretation. I do not see this as the same as the objective standard for a .bank or .insurance domain (where the cost of vetting is built into the registration fee, and the requirement is satisfied by furnishing a certificate evidencing that the applicant is a regulated institution) or even ccTLDs, where some have objective criteria to demonstrate being domiciled or doing business in a particular jurisdiction. While I don’t believe that Michael has the responsibility to provide a full-blown implementation scheme, I have not yet heard a credible explanation of how adoption of a relationship test will be consistently administered in a cost-effective way. Finally, and more broadly, we are in the process of considering proposals to recommend to the full WG for inclusion in the Initial Report for public comment. While that does not require a demonstration of consensus at this point, it should require some reasonably strong support within the sub team and, following that, the WG; and some prospect that the proposal can achieve consensus down the road within the WG (for the Final Report) and Council. Frankly, I don’t see that reasonably strong support for Michael’s proposal within the sub team but rather a sharp divide over whether there is even a problem that requires addressing. And, while I have no crystal ball, I feel reasonably confident that in the end contracted parties will oppose it for administrative and cost reasons, among others, and that BC and IPC members will oppose it as putting yet another burden on sunrise registrations – so I don’t see any prospect of consensus. Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way<https://maps.google.com/?q=12061+Bluemont+Way+%0D%0A++++++++++++++++Reston,+...> Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org><mailto:gnso-rpm-sunrise-bounces@icann.org> On Behalf Of Kathy Kleiman Sent: Wednesday, May 15, 2019 9:04 AM To: gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Hi All, I think the discussion is an important one because it is brings up issues across categories. a) Michael's proposal addresses a problem we have found in our data-driven analysis. There are gamers out there who are registering trademarks in a certain category of goods and services, and then using them to register an array of domain names in Sunrise having nothing at all to do with the categories of their trademark registration. We committed at the outset of the RPMs -- in the 2009 era - that we would not be expanding trademark rights. That's exactly what is happening in these situations and registrations. b) The SDRP is broken - barely used because the Trademark Clearinghouse was supposed to be public, during implementation it was turned private, so challengers cannot get the information they need to challenge. Plus, it's not the job a challenger to police the basic principle of the entire RPM process. Brian, you have mentioned your "suggested improvements to the SDRP" from 2 years ago several times, but that was 1000s of emails ago, and we worked hard to compile the data and solutions that we are looking at today. Per the rules that we agreed to as Co-Chairs and as a WG, we created a new table, atop extensive data gathering, and things must be reintroduced from prior to our URS break. If you could do so, that would be very timely. I've suggested changes to the SDRP that would give challengers some chance to use it -- although only for the narrow purpose intended. The SDRP was not intended to solve a broad gaming problem -- because we did not anticipate one. We know know it exists; and a policy/operational fix resolves it. c) Michael suggests a narrowly tailored solution for a gaming problem that we now know exists. His solution is completely consistent with how registrars, in many of these gTLDs, already handle General Availability (e.g., required proof to register in .BANK). It's not a new process -- just a way to use existing process to avoid gaming and preserve the principles we agreed to in this process. Best, Kathy On 5/9/2019 12:04 PM, BECKHAM, Brian wrote: Michael, I would personally prefer not to get into a Google search race for some kind of “exceptions to prove the rule” and also because “tattoos” is not a class of marks<https://trademark.eu/list-of-classes-with-explanatory-notes/>, but these articles could be of interest in terms of explaining why they may seek such a defensive sunrise registration: https://www.pinterest.ch/steelephotograp/mini-cooper-tattoos/ https://metro.co.uk/2011/01/25/andreas-muller-has-mini-tattooed-on-penis-to-... Also, while MINI may not make motorcycles, their sister company BMW does, so they could well branch out into that product area (including related services). I have already suggested improvements to the SDRP on several occasions, going back almost 2 years now (those were apparently parked in preference of various data seeking exercises), so would respectfully suggest that others take the baton from here. As I said, I believe there is a genuine willingness to explore such solutions. At the same time, it seems unlikely that the current proposal No. 13 is likely to garner consensus, and will defer to the Sub Team Co-Chairs to address that at the level of our present discussions. Brian From: Michael Karanicolas <mkaranicolas@gmail.com><mailto:mkaranicolas@gmail.com> Sent: Thursday, May 9, 2019 5:50 PM To: BECKHAM, Brian <brian.beckham@wipo.int><mailto:brian.beckham@wipo.int> Cc: Ariel Liang <ariel.liang@icann.org><mailto:ariel.liang@icann.org>; gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Interesting, thanks for sharing. I checked whether Mini made motorcycles before I sent my proposal in... I didn't think to check whether they made regular bicycles! By any chance, were you able to find any examples of the company branching into the tattoo business as well (http://mini.tattoo)? I'm not sure if this presents a "nuance" in trademark classes. I don't think it's much of a revelation that "bikes" can refer to motorcycles or regular bicycles. All this represents is a product line I was unaware of. And under my proposal, all Mini would have to do would be to include the link you provided when they register the domain under sunrise, and that should be that. Personally, I don't see how the SDRP challenge process could be retooled to turn it into something that adequately represents the interests of potential future registrants without injecting massive amounts of transparency into the sunrise and TMCH processes... but I would be interested to hear your thoughts as to how this might work. On Thu, May 9, 2019 at 12:38 PM BECKHAM, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Thanks Ariel, Copying here, my full email to the Sunrise List from earlier today as it relates to proposal No. 13: -- Thanks Julie, Just for fun (as I am aware the example was merely anecdotal), further to our hypothesizing last night, indeed, MINI does have a range of folding bikes: https://www.bmwblog.com/2018/02/28/new-mini-folding-bike/ This does however illustrate in some ways the nuance in trademark classes and TLD typology that may escape proposal No. 13 in its current form. As I mentioned on our call, I believe there is a shared willingness to address the issue Michael has raised, but via the SDRP challenge process, and not via claims exclusions. Brian -- Brian From: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org<mailto:gnso-rpm-sunrise-bounces@icann.org>> On Behalf Of Ariel Liang Sent: Thursday, May 9, 2019 5:36 PM To: gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Dear Sunrise Sub Team members, As announced, this thread is being opened for final mailing list discussions related to Sunrise Agreed Charter Question 9, including Proposal #13. We ask that you review the Summary Table (as of 16 April 2019) and provide any additional input you may have to the “proposed answers & preliminary recommendations” in relation to the Agreed Charter Question, and consider draft answers to the following questions regarding the individual proposal: a. Should the Sub Team recommend that the full WG consider including this Individual Proposal in the Initial Report for the solicitation of public comment? b. In light of the Individual Proposal, are any modifications to the current “tentative answers & preliminary recommendations” needed? c. Should any additional Sub Team recommendations be made in relation to the agreed Sunrise charter question? Unless the Sub Team Co-Chairs determine otherwise, this discussion thread will remain open until 23:59 UTC on 22 May 2019. Comments/input provided past the closing date or outside this discussion thread will not be taken into account when compiling the final Sub Team member input. Summary Table (Pages 36-40) The draft answers, preliminary recommendations, and links to the relevant individual proposals are in the latest Summary Table (as of 16 April 2019): https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ.... Agreed Sunrise Charter Question 9 (Page 36) The Sub Team just discussed Agreed Charter Question 9 on 08 May 2019, hence the proposed answers are “TBD”. Based on the Sub Team’s discussions, the transcript and notes, staff will provide update. Q9 In light of the evidence gathered above, should the scope of Sunrise Registrations be limited to the categories of goods and services for which? Proposed Answer: TBD Individual Proposal The Sub Team just discussed the Proposal #13 on 08 May 2019, hence there is no draft answer currently on the Summary Table (as of 16 April 2019). Based on the Sub Team’s discussions, the transcript and notes, staff will provide. Link to the individual proposal is included below. Proposal #13: https://community.icann.org/download/attachments/102146375/Proposal%2313.pdf... 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Hi Phil, I've been puzzling over this for awhile, so let me write before our meeting today. The TMCH registration involved in gaming, including THE, CHRISTMAS, PEN, and most upsettingly CLOUD (since it represents an entire sector of services) - gaming examples covered by reporters -- appear to be legitimate trademarks. They are registered somewhere and in some category of goods and services. Thus, I don't see how "the standards for mark recordation in the TMCH" would impact its inclusion. The problem I thought we were puzzling over is the clear misuse of the Sunrise period. These are not famous marks, or even well known marks. From the reports, they appear to be registered solely to game the system and receive Sunrise registrations for valuable domain names far from any of their categories of goods and services (e.g., the many registrations in Sunrise for "THE"). I think we should all worry about this misuse of the Sunrise period -- trademark owners because they will be deprived of legitimate opportunities to register their trademarks as domain names in their chosen New gTLDs and noncommercial community because this removes ordinary words from registrations. I don't see how reviewing the standards for mark recordation solves this one... but the proposal seems narrowly-tailored to address the harms and not any legitimate trademark owners or trademark/Sunrise activity. Best, Kathy On 6/7/2019 1:18 PM, Corwin, Philip via Gnso-rpm-sunrise wrote:

Thanks for your further response, Michael.

Again, I do not perceive substantial abuse or incursion on free speech with the present system. A registrar review of the submitted rationale would likely be nothing more than a low speed bump before completion of registration in almost every instance.

I look forward to working with you in reviewing the standards for mark recordation in the TMCH when we reach the next stage of our work.

Best, Philip

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

/"Luck is the residue of design" -- Branch Rickey/

*From:* Michael Karanicolas <mkaranicolas@gmail.com> *Sent:* Wednesday, June 05, 2019 1:40 PM *To:* Corwin, Philip <pcorwin@verisign.com> *Cc:* mitch@eff.org; gnso-rpm-sunrise@icann.org *Subject:* [EXTERNAL] Re: Re: Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Hi Phil,

/"Replying again in a personal capacity – if there are indeed widespread serious abuses of sunrise registrations taking place ( a contention with which I do not concur) then I would think that proponents of that view would want a fairly rigorous review process to prevent them."/

Personally, I would support a more robust ruleset, and if you recall, when I first raised this issue, I did suggest a stricter standard. This proposal came about as a result of the objections that were raised then. I understand that compromise can be necessary, so I attempted to respond to the substance of these objections by narrowing the proposal, and crafting it in a manner which is minimally intrusive to legitimate registrations and easier to implement while still addressing egregious cases, as an attempt to generate enough support to get something done to address the problem.

/"But let me ask you this – I presume that if your proposal was adopted that rights holders seeking to complete sunrise registrations in vertical gTLDs that referenced a category if good or services would need to submit a statement explaining how the gTLD string related to goods and services associated with their marks./

/So if Mini applied for mini.bike and submitted a statement that this related to their offerings of bikes  and bike accessories <https://www.shopminiusa.com/MINI-LIFESTYLE/GIFTS-AND-GOODIES/BIKES> at what point in the registration process would that be submitted and what entity would evaluate it?/

/Similarly, if Nike applied for Nike.bike and submitted a statement that this was based upon their offerings of bike shorts <https://www.nike.com/w?q=women%E2%80%99s%20bike%20shorts&vst=bike> – same question?/

While I am open to discussion on implementation, I think that the most practical way to handle this would be for the registrar to do it at the point of sale. Again - similar to the way ccTLD residency checks and the .bank reviews work, but simpler. They could take a fast look at the statement (re: offerings of bikes or whatever), and then keep a record of the response. If there were questions later (from the registries or pursuant to a SDRP perhaps) the registrars could share the information. Again - I would be open to suggestion, if you think an alternative structure would be more efficient.

Best,

Michael

On Wed, May 29, 2019 at 3:09 PM Corwin, Philip <pcorwin@verisign.com <mailto:pcorwin@verisign.com>> wrote:

Michael:

Replying again in a personal capacity – if there are indeed widespread serious abuses of sunrise registrations taking place ( a contention with which I do not concur) then I would think that proponents of that view would want a fairly rigorous review process to prevent them.

But let me ask you this – I presume that if your proposal was adopted that rights holders seeking to complete sunrise registrations in vertical gTLDs that referenced a category if good or services would need to submit a statement explaining how the gTLD string related to goods and services associated with their marks.

So if Mini applied for mini.bike and submitted a statement that this related to their offerings of bikes  and bike accessories <https://www.shopminiusa.com/MINI-LIFESTYLE/GIFTS-AND-GOODIES/BIKES> at what point in the registration process would that be submitted and what entity would evaluate it?

Similarly, if Nike applied for Nike.bike and submitted a statement that this was based upon their offerings of bike shorts <https://www.nike.com/w?q=women%E2%80%99s%20bike%20shorts&vst=bike> – same question?

Thanks, Philip

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

/"Luck is the residue of design" -- Branch Rickey/

*From:* Michael Karanicolas <mkaranicolas@gmail.com <mailto:mkaranicolas@gmail.com>> *Sent:* Wednesday, May 29, 2019 1:37 PM *To:* Corwin, Philip <pcorwin@verisign.com <mailto:pcorwin@verisign.com>> *Cc:* mitch@eff.org <mailto:mitch@eff.org>; gnso-rpm-sunrise@icann.org <mailto:gnso-rpm-sunrise@icann.org> *Subject:* [EXTERNAL] Re: Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Obviously, I'm not proposing "letting all proposed registrations get in". I just noted that, in the cases that you mentioned, I wouldn't see a problem. You bring up geo names - which I'm not sure would even be included under this proposal since it's only meant to apply to categories of goods - but if they did, I would not argue for requiring a physical presence there. I'm not sure I fully follow your second question with regard to "the gTLD vertical" - but again, I'm happy for the broader and more inclusive approach.

The point of a low bar assessment is to target obvious cases of abuse, or a clear disconnect between a trademark and the domain under request, but to provide for minimal impairment of legitimate registrations, while minimizing all the administrative costs that you keep trying to build in by keeping the assessment relatively inclusive.

On Wed, May 29, 2019 at 2:19 PM Corwin, Philip <pcorwin@verisign.com <mailto:pcorwin@verisign.com>> wrote:

Michael:

Again, speaking in a personal capacity – I must say I am confused by your response.

You say “The evidence that the system is open to abuse, and that abuse has taken place, has been amply demonstrated, and it follows that if we take no action the system will likely continue to be abused.”, but then you say, “I'm generally fine letting them all in. As I said - a low bar assessment, just to make sure the system isn't being obviously abused.”

If you believe that significant abuse has and will take place, then how does letting all proposed registrations get in under a low bar assessment address the problem you perceive?

Best, Philip

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

/"Luck is the residue of design" -- Branch Rickey/

*From:* Michael Karanicolas <mkaranicolas@gmail.com <mailto:mkaranicolas@gmail.com>> *Sent:* Wednesday, May 29, 2019 1:06 PM *To:* Corwin, Philip <pcorwin@verisign.com <mailto:pcorwin@verisign.com>> *Cc:* mitch@eff.org <mailto:mitch@eff.org>; gnso-rpm-sunrise@icann.org <mailto:gnso-rpm-sunrise@icann.org> *Subject:* [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Hi Phil,

I appreciate you taking the time to look up the Wikipedia entries for so many different languages, but if your purpose was to make the case that there are a lot of different words out there, I'm not sure you needed to bother with the effort. I will concede that point.

But if your underlying argument is that none of this matters because there's so many words still available, and one is just as good as another because domain names don't really matter much... Well - what are we all doing here?

Seriously - why do people spend tens of millions of dollars on a domain name if one is as good as another? Why did Amazon just spend god-knows how much time and money trying to secure .Amazon, when they could have just shifted over to .AmazonCorp or .TheAmazonCompany if those are just as good and would have spared them the fight? The answer, as we all know, is that while there's lots of words in the English language, they're not all interchangeable, and some letter strings are better than others in conveying an idea. And this is why the registration of incredibly common words, ostensibly for the purpose of trademark protection. is so troubling, because it carves off a space that could, and likely would, be utilized for a legitimate purpose just because it has a tangential relation to an existing mark. The evidence that the system is open to abuse, and that abuse has taken place, has been amply demonstrated, and it follows that if we take no action the system will likely continue to be abused. If we just ignore this issue, which is fairly glaring, I think it will lead to problems down the line, as the working group seeks approval for its broader recommendations.

I agree that we need to work towards implementable guidelines, but I don't agree that it's the sort of insurmountable obstacle you are making it out to be, particularly if we adopt a relatively low bar, as I've been saying all this time. I believe you, in a previous post, spoke of "overkill" and a "needlessly complicated" solution - but you're the one pushing the proposal in this direction. I, personally, don't think the assessment needs to be done by a "neutral third, non-contracted party", and as to your other examples - I'm generally fine letting them all in. As I said - a low bar assessment, just to make sure the system isn't being obviously abused.

Best,

Michael

On Wed, May 29, 2019 at 12:25 PM Corwin, Philip via Gnso-rpm-sunrise <gnso-rpm-sunrise@icann.org <mailto:gnso-rpm-sunrise@icann.org>> wrote:

This response is in a personal capacity.

First, I would note that the standard for a proposal to be included in the Initial Report for the purpose of soliciting public comment is strong support within the sub team and subsequently the full WG.  I do not perceive Michael’s proposal to limit sunrise registrations in at least vertical gTLDs to those related (a term that requires significant definition) to the goods and services to which a mark has been registered as having received that level of support. Indeed, I believe the sub team has become more divided on it as discussion has proceeded. (Of course, the sub team’s consideration of the proposal will, if my perception of support level is borne out, still be noted in the Initial Report and anyone will be free to comment upon it; it simply will not be endorsed proposal on which the ICANN community is specifically invited to comment.)

Second, I have stated my belief that, especially with higher sunrise pricing being a gating factor, rights holders have been judicious in their use of sunrise registrations. The fact that sunrise registrations have only averaged 150-200 per new gTLD documents that very selective use, and provides no evidence of significant abuse. (As for questionable marks being registered, that is a subject for review in our next and final phase, when we focus back on and conclude recommendations on the TMCH, including the requirements for recording a mark.)

Third, as we seem to be engaged in mathematical analysis, consider that according to the Oxford English Dictionary <https://en.oxforddictionaries.com/explore/how-many-words-are-there-in-the-en...>, “there are, at the very least, a quarter of a million distinct English words, excluding inflections, and words from technical and regional vocabulary not covered by the /OED/, or words not yet added to the published dictionary, of which perhaps 20 per cent are no longer in current use. If distinct senses were counted, the total would probably approach three quarters of a million”. Wikipedia <https://en.m.wikipedia.org/wiki/List_of_dictionaries_by_number_of_words>, for its part, notes that the 5^th edition of the American Heritage Dictionary of the English Language contains more than 370,000 words. English of course is not the only language written in ASCII characters (and therefore not IDNs) – again according to Wikipedia, German has 330,00 words, Italian 260,000, French 135,000,  Spanish 93,000, Portuguese 442,000, and so on.

But sticking just to English, if we conservatively estimate that there are 300,000 distinct dictionary words, then even an average sunrise registration  total of 200 words per new gTLD leaves 299,800 available to register by anyone (and that doesn’t include made up, non-dictionary words). Out of 300,000 available words, 200 represents less than 1/10^th of one percent. So the burden of sunrise registrations on the availability of dictionary words as domain names is infinitesimal as, for English alone, 99.9% of all dictionary words remain available for general registration.

Fourth, the speech embodied in a domain name is minimal at best. Domain names function primarily as an Internet address, with an expressive function being secondary. Most domain names consist (and the ones we are discussing do so entirely) of a single term separated by a dot from the gTLD string label. Not much meaningful speech is made up of just one word plus a gTLD designation (e.g., ride.bike).

Fifth, the domain platform is the primary space in which meaningful speech is expressed, and a sunrise registration leaves ample (indeed, almost unlimited) latitude for those who do not possess trademark rights to engage in unfettered speech. The proposal under discussion cited as an alleged “abuse” BMW’s sunrise registration of mini.bikes. But that registration still leaves available a vast number of .bike domains that include the word mini to serve as platforms for meaningful speech – including minis.bike, miniraces.bike, minisafety.bikes, minifans.bike, minikids.bike, minidirt.bike, and on and on. So the availability of sunrise registrations has essentially no censorship effect on free speech.

Sixth and most importantly, even if one agrees with the proponents of the proposal (which I do not) that there is some problem in need of a solution, they have failed to describe any practical means by which the proposal would be uniformly and effectively administered, or estimated what such a process would cost. While there is no requirement to develop a full implementation plan until after a proposal receives consensus support, there should at least be some general description of what administration will entail (and I must say that I do not find statements such as “it’s easy” or “during the registration process” to be very convincing or assuring). If the proponents truly believe there is a significant problem to be redressed then they would want their solution to be administered in an objective, uniform, and effective manner by a neutral third, non-contracted party (noting also that registries and registrars would have commercial incentives to accept almost any rationale provided by a rights holder for a proposed domain registration). A standard policy will have to be developed that wrestles with such questions as whether a rights holder wishing to register in a geo domain must maintain a physical facility in the locale, or whether demonstrating sales in the location is sufficient; and whether “related to” is to be narrowly defined to require that the rights holder have registrations for goods and services that directly coincide with the gTLD vertical, or whether it is sufficient to simply supply goods and services that are employed by those engaged in activities described by the vertical (the first would bar nike.bike, the second would allow it). And of course there must be some appeals process for those rights holders who believe they have been improperly barred from making a valid sunrise registration – and who will administer that, and what standard will it employ?

Given the overall failure to describe any demonstrable and consistent abuse or significant impingement of speech by actual sunrise registartions, as well as the lack of even a general outline of a credible implementation model with reasonable costs and manageable rules, I cannot support the proposal.

Thanks to all for your consideration of these personal views.

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

/"Luck is the residue of design" -- Branch Rickey/

*From:* Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org <mailto:gnso-rpm-sunrise-bounces@icann.org>> *On Behalf Of *Mitch Stoltz *Sent:* Tuesday, May 28, 2019 8:53 PM *To:* gnso-rpm-sunrise@icann.org <mailto:gnso-rpm-sunrise@icann.org> *Subject:* [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Hi Claudio,    According to your numbers, trademark holders have registered between 105,000 and 140,000 domains that were never available to noncommercial users. You and others suggest that most of these registrations were “defensive,” meaning that they were done primarily to prevent anyone else from registering those domain names - not to use them. What’s more, given the little we know about what marks are in the TMCH, a great many of those domain names are either commons words, or words that are associated with a product or service ONLY in particular contexts. This represents an enormous loss to the public that will only grow as new gTLDs roll out.

I take issue with your suggestion that noncommercial users can simply choose a different domain name that hasn’t been taken by trademark holders before public availability. For a noncommercial user, the expressive value of a domain name can be equal to or greater than its value to a commercial user. A noncommercial user acting in good faith should have equal opportunity to register a domain.

Yes, rightsholders can choose to register domains in sunrise based on their internal calculus about where "abuse" is likely to happen, but they are also currently free to act as though good faith registrations by noncommercial users are "abuse." That's a fundamental flaw in the Sunrise mechanism. At a minimum, Michael Karanicolas's proposal to limit sunrise registrations based on the goods and services actually sold by the rightsholder would begin to address this.    Best,       Mitch

Mitch Stoltz

Senior Staff Attorney, EFF | 415-436-9333 x142

https://www.eff.org/donate |https://act.eff.org/

On 5/22/19 8:46 PM, claudio di gangi wrote:

hi Mitch,

Sunrise registrations have averaged between 150 and 200 domains per TLD.

I believe there over 700 different new gTLDs where non-commercial users can register domains for non-commercial use.

For the purposes of consensus-building, when one does the math, can you kindly clarify on how this results with harms falling disproportionately on non-commercial registrants and small business registrants?

In terms of the orthogonal domains you mention, registration abuse that targets a brand can easily take place in these zones (and often does take place). Isn’t this a standing justification, along within the fact that only 150 to 200 domains are registered during Sunrise per TLD, for having Sunrise in place in to prevent consumer confusion and harm from taking place?

In terms of the question of scale that your mention, I don’t see a necessary inconsistency that should raise alarm.

One on hand, the brand owner is making an informed choice about where to protect their brand, often because they have been previously targeted and they recognize a pattern, or due to some other implicit connection with the brand that made not be readily apparent to an outside observer on the surface.

But for the vast majority of cases, defensive registrations are based on strategic factors, such as the likelihood of infringement in a particular TLD. I do consider this as resulting in ex-ante harm to non-commercial registrants, as for one reason there are virtually an unlimited number of registrations available in nearly a 1000 gTLDs. To take an extreme case, even in .com with nearly 140 million domains registered, successful domainers continue to profit and non-commercial users have meaningful choices for expression.

Thanks in advance for your thoughts.

Best regards,

Claudio

On Wednesday, May 22, 2019, Mitch Stoltz <mitch@eff.org <mailto:mitch@eff.org>> wrote:

This working group has hit on numerous problems with the Sunrise regime, with harms falling disproportionately on non-commercial and small business registrants. Michael K. has proposed a narrow solution to one of these problems, and I think it deserves serious consideration.

Quite simply, Sunrise as it exists is an expansion of trademark rights. Allowing priority registration without regard to the actual goods and services to which a mark pertains turns a trademark from a source identifier into a global dominion over a word or phrase. We have ample evidence that Sunrise is being abused in just that way. Looking beyond obvious abuses, there is little or no justification for giving trademark holders priority registration in TLDs that are clearly orthogonal to any product or service the mark-holder offers.

At scale, having that priority absolutely harms the free expression rights of others. To use a simple example, Apple is a distinctive trademark in consumer technology but a generic word in many other circumstances. There are any number of individuals and organizations who should be able to express themselves with a domain name containing Apple, in ways that raise no possibility of trademark infringement or cybersquatting. All of these potential users should have equal opportunity to register "apple" in new TLDs that don't raise an association with technology products.

Moreover, we need to be consistent about questions of scale. If sunrise registrations are used often enough to provide benefit to trademark holders, then they are also being used often enough to interfere with the rights of noncommercial users. And if they are not used very much at all, then we should be jettisoning the program as unnecessary. If Sunrise is to continue, Michael's proposal is a straightforward way of making it conform to the actual legal rights it's meant to protect.

Mitch Stoltz

Senior Staff Attorney, EFF | 415-436-9333 x142

https://www.eff.org/donate |https://act.eff.org/

On 5/15/19 8:09 AM, Kathy Kleiman wrote:

Hi Phil,

As a co-chair, I'm a little surprised by the vehemence of the debate. Many of us are lawyers and we're used to talking about important issues in dispassionate ways. I think we should do so here.

As an ordinary member, I participate in these discussions, as you and Brian do, and in that capacity, I note that we have a problem.  I also see the seeds of the solution in your answer below.

In 2009, we foresaw that there might be gaming of the Sunrise period -- people registering trademarks for ordinary words to get priority during Sunrise. We now see it happening. Journalists, reporters and bloggers have done the work for us -- and no one seems surprised by their results. I list some of the articles we (as a Subteam) collected below. Links in our Sunrise Summary Table under Q9 - https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ...

Nothing in the MK proposal is burdensome, or unusual. It's narrowly-tailored (too narrowly-tailored in my view) to prevent gaming and to use systems already in place.

As you note below, the cost of the vetting is part of the process for many gTLDs and ccTLDs -- whether it is providing residency in Japan or the objective standard for .bank or .insurance or .attorney or .cpa. It's already built into our processes -- and not burdensome -- and easily extended to Sunrise.

We know there is a misuse and even abuse of the Sunrise system. The MK proposal is an easy fix, and one that actually protects and preserves the balance of rights. We are being asked to solve problems -- and this is a big one.

Best, Kathy

*Articles in our gathering data (links in Summary Table):*

*● How one guy games new gTLD sunrise periods ● Fake Trademarks Stealing Generic Domains In New gTLD Sunrises ● The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The" ● How common words like Pizza, Money, and Shopping ended up in  the Trademark Clearinghouse for new TLDs ● The numbers are in! Donuts sunrises typically get 100+ domains, but they also got gamed ● Digging in on Donuts’ Sunrise: Amazon tops the list, gaming, and top registrars ● .Build Registry Using Questionable Swiss Trademark Registration To Grab “Build” Domains In Sunrise ● How Did RetailMeNot Get 849 .Codes Domains In Sunrise Without AnyTrademarks? *

On 5/15/2019 10:10 AM, Corwin, Philip wrote:

Kathy:

I presume that these are your personal views, just as the email I posted last week raising serious doubts about Michael’s proposal were clearly labeled as personal. Likewise, what follows is an expression of personal views.

Not to repeat myself, but to the extent there is gaming based on weak marks it should be a focus of discussion when we review requirements for mark recordation in the TMCH. But I have seen no substantial evidence that legitimate trademark holders are seeking to utilize sunrise registrations in gTLDs other than those for which they have a good faith belief that registration is necessary for brand protection. Even where a sunrise registration might arguably be abusive, I do not see that as placing any burden on the speech rights of others who wish to register a domain name that bears some resemblance.

I also described why I believe adoption of this proposal will require a costly bureaucracy to yield reasonably consistent applications of what will always be a subjective standard subject to interpretation. I do not see this as the same as the objective standard for a .bank or .insurance domain (where the cost of vetting is built into the registration fee, and the requirement is satisfied by furnishing a certificate evidencing that the applicant is a regulated institution) or even ccTLDs, where some have objective criteria to demonstrate being domiciled or doing business in a particular jurisdiction. While I don’t believe that Michael has the responsibility to provide a full-blown implementation scheme, I have not yet heard a credible explanation of how adoption of a relationship test will be consistently administered in a cost-effective way.

Finally, and more broadly, we are in the process of considering proposals to recommend to the full WG for inclusion in the Initial Report for public comment. While that does not require a demonstration of consensus at this point, it should require some reasonably strong support within the sub team and, following that, the WG;  and some prospect that the proposal can achieve consensus down the road within the WG (for the Final Report) and Council. Frankly, I don’t see that reasonably strong support for Michael’s proposal within the sub team but rather a sharp divide over whether there is even a problem that requires addressing. And, while I have no crystal ball, I feel reasonably confident that in the end contracted parties will oppose it for administrative and cost reasons, among others, and that BC and IPC members will oppose it as putting yet another burden on sunrise registrations – so I don’t see any prospect of consensus.

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way <https://maps.google.com/?q=12061+Bluemont+Way+%0D%0A++++++++++++++++Reston,+...> Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

/"Luck is the residue of design" -- Branch Rickey/

*From:* Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org> <mailto:gnso-rpm-sunrise-bounces@icann.org> *On Behalf Of *Kathy Kleiman *Sent:* Wednesday, May 15, 2019 9:04 AM *To:* gnso-rpm-sunrise@icann.org <mailto:gnso-rpm-sunrise@icann.org> *Subject:* [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Hi All,

I think the discussion is an important one because it is brings up issues across categories.

a) Michael's proposal addresses a problem we have found in our data-driven analysis. There are gamers out there who are registering trademarks in a certain category of goods and services, and then using them to register an array of domain names in Sunrise having nothing at all to do with the categories of their trademark registration.

We committed at the outset of the RPMs -- in the 2009 era - that we would not be expanding trademark rights. That's exactly what is happening in these situations and registrations.

b) The SDRP is broken - barely used because the Trademark Clearinghouse was supposed to be public, during implementation it was turned private, so challengers cannot get the information they need to challenge. Plus, it's not the job a challenger to police the basic principle of the entire RPM process.

Brian, you have mentioned your "suggested improvements to the SDRP" from 2 years ago several times, but that was 1000s of emails ago, and we worked hard to compile the data and solutions that we are looking at today. Per the rules that we agreed to as Co-Chairs and as a WG, we created a new table, atop extensive data gathering, and things must be reintroduced from prior to our URS break. If you could do so, that would be very timely.

I've suggested changes to the SDRP that would give challengers some chance to use it -- although only for the narrow purpose intended. The SDRP was not intended to solve a broad gaming problem -- because we did not anticipate one. We know know it exists; and a policy/operational fix resolves it.

c) Michael suggests a narrowly tailored solution for a gaming problem that we now know exists. His solution is completely consistent with how registrars, in many of these gTLDs, already handle General Availability (e.g., required proof to register in .BANK). It's not a new process -- just a way to use existing process to avoid gaming and preserve the principles we agreed to in this process.

Best, Kathy

On 5/9/2019 12:04 PM, BECKHAM, Brian wrote:

Michael,

I would personally prefer not to get into a Google search race for some kind of “exceptions to prove the rule” and also because “tattoos” is not a class of marks <https://trademark.eu/list-of-classes-with-explanatory-notes/>, but these articles could be of interest in terms of explaining why they may seek such a defensive sunrise registration:

https://www.pinterest.ch/steelephotograp/mini-cooper-tattoos/

https://metro.co.uk/2011/01/25/andreas-muller-has-mini-tattooed-on-penis-to-...

Also, while MINI may not make motorcycles, their sister company BMW does, so they could well branch out into that product area (including related services).

I have already suggested improvements to the SDRP on several occasions, going back almost 2 years now (those were apparently parked in preference of various data seeking exercises), so would respectfully suggest that others take the baton from here.

As I said, I believe there is a genuine willingness to explore such solutions.

At the same time, it seems unlikely that the current proposal No. 13 is likely to garner consensus, and will defer to the Sub Team Co-Chairs to address that at the level of our present discussions.

Brian

*From:* Michael Karanicolas <mkaranicolas@gmail.com> <mailto:mkaranicolas@gmail.com> *Sent:* Thursday, May 9, 2019 5:50 PM *To:* BECKHAM, Brian <brian.beckham@wipo.int> <mailto:brian.beckham@wipo.int> *Cc:* Ariel Liang <ariel.liang@icann.org> <mailto:ariel.liang@icann.org>; gnso-rpm-sunrise@icann.org <mailto:gnso-rpm-sunrise@icann.org> *Subject:* Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Interesting, thanks for sharing. I checked whether Mini made motorcycles before I sent my proposal in... I didn't think to check whether they made regular bicycles!

By any chance, were you able to find any examples of the company branching into the tattoo business as well (http://mini.tattoo)?

I'm not sure if this presents a "nuance" in trademark classes. I don't think it's much of a revelation that "bikes" can refer to motorcycles or regular bicycles. All this represents is a product line I was unaware of. And under my proposal, all Mini would have to do would be to include the link you provided when they register the domain under sunrise, and that should be that.

Personally, I don't see how the SDRP challenge process could be retooled to turn it into something that adequately represents the interests of potential future registrants without injecting massive amounts of transparency into the sunrise and TMCH processes... but I would be interested to hear your thoughts as to how this might work.

On Thu, May 9, 2019 at 12:38 PM BECKHAM, Brian <brian.beckham@wipo.int <mailto:brian.beckham@wipo.int>> wrote:

Thanks Ariel,

Copying here, my full email to the Sunrise List from earlier today as it relates to proposal No. 13:

--

Thanks Julie,

Just for fun (as I am aware the example was merely anecdotal), further to our hypothesizing last night, indeed, MINI does have a range of folding bikes:

https://www.bmwblog.com/2018/02/28/new-mini-folding-bike/

This does however illustrate in some ways the nuance in trademark classes and TLD typology that may escape proposal No. 13 in its current form.

As I mentioned on our call, I believe there is a shared willingness to address the issue Michael has raised, but via the SDRP challenge process, and not via claims exclusions.

Brian

--

Brian

*From:* Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org <mailto:gnso-rpm-sunrise-bounces@icann.org>> *On Behalf Of *Ariel Liang *Sent:* Thursday, May 9, 2019 5:36 PM *To:* gnso-rpm-sunrise@icann.org <mailto:gnso-rpm-sunrise@icann.org> *Subject:* [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Dear Sunrise Sub Team members,

As announced, this thread is being opened for final mailing list discussions related to *Sunrise Agreed Charter Question 9*, including *Proposal #13*.

We ask that you review the *Summary Table* *(as of 16 April 2019) *and provide any additional input you may have to the “*proposed answers & preliminary recommendations*” in relation to the Agreed Charter Question, and consider *draft answers *to the following questions regarding the individual proposal:

a. Should the Sub Team recommend that the full WG consider including this Individual Proposal in the Initial Report for the solicitation of public comment?

b. In light of the Individual Proposal, are any modifications to the current “tentative answers & preliminary recommendations” needed?

c. Should any additional Sub Team recommendations be made in relation to the agreed Sunrise charter question?

Unless the Sub Team Co-Chairs determine otherwise, this discussion thread will remain open until *23:59 UTC on 22 May 2019*. Comments/input provided past the closing date or outside this discussion thread will not be taken into account when compiling the final Sub Team member input.

*Summary Table (Pages 36-40)*

The draft answers, preliminary recommendations, and links to the relevant individual proposals are in the latest Summary Table (as of 16 April 2019):

https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ....

*Agreed Sunrise Charter Question 9 (Page 36)*

The Sub Team just discussed Agreed Charter Question 9 on 08 May 2019, hence the proposed answers are “TBD”. Based on the Sub Team’s discussions, the transcript and notes, staff will provide update.

/ Q9 In light of the evidence gathered above, should the scope of Sunrise Registrations be limited to the categories of goods and services for which? /

*_Proposed Answer_: *TBD

*Individual Proposal*

The Sub Team just discussed the Proposal #13 on 08 May 2019, hence there is no draft answer currently on the Summary Table (as of 16 April 2019). Based on the Sub Team’s discussions, the transcript and notes, staff will provide.

Link to the individual proposal is included below.

*Proposal #13*: https://community.icann.org/download/attachments/102146375/Proposal%2313.pdf...

*Where to Find All Discussion Threads *

Access the Documents wiki page and find the opening messages of the all discussion threads in the table (highlighted in green): https://community.icann.org/x/_oIWBg

Best Regards,

Mary, Julie, Ariel

World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.

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Kathy: Sunrise registrations are not restricted to famous or well known remarks, but are available to any trademark that has met the recordation requirements for the TMCH and has also demonstrated use in commerce. I have already explained at length why, in my personal view, the low levels of average sunrise registrations in new gTLDs do not provide evidence of substantial abuse, much less suppression of free speech, sufficient to justify restrictive criteria that would necessitate complex decisions and evaluative criteria, including an appeals process, to be effective and fair. Best, Philip Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: Kathy Kleiman <kathy@kathykleiman.com> Sent: Wednesday, June 12, 2019 12:25 PM To: gnso-rpm-sunrise@icann.org; Corwin, Philip <pcorwin@verisign.com> Subject: [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Hi Phil, I've been puzzling over this for awhile, so let me write before our meeting today. The TMCH registration involved in gaming, including THE, CHRISTMAS, PEN, and most upsettingly CLOUD (since it represents an entire sector of services) - gaming examples covered by reporters -- appear to be legitimate trademarks. They are registered somewhere and in some category of goods and services. Thus, I don't see how "the standards for mark recordation in the TMCH" would impact its inclusion. The problem I thought we were puzzling over is the clear misuse of the Sunrise period. These are not famous marks, or even well known marks. From the reports, they appear to be registered solely to game the system and receive Sunrise registrations for valuable domain names far from any of their categories of goods and services (e.g., the many registrations in Sunrise for "THE"). I think we should all worry about this misuse of the Sunrise period -- trademark owners because they will be deprived of legitimate opportunities to register their trademarks as domain names in their chosen New gTLDs and noncommercial community because this removes ordinary words from registrations. I don't see how reviewing the standards for mark recordation solves this one... but the proposal seems narrowly-tailored to address the harms and not any legitimate trademark owners or trademark/Sunrise activity. Best, Kathy On 6/7/2019 1:18 PM, Corwin, Philip via Gnso-rpm-sunrise wrote: Thanks for your further response, Michael. Again, I do not perceive substantial abuse or incursion on free speech with the present system. A registrar review of the submitted rationale would likely be nothing more than a low speed bump before completion of registration in almost every instance. I look forward to working with you in reviewing the standards for mark recordation in the TMCH when we reach the next stage of our work. Best, Philip Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: Michael Karanicolas <mkaranicolas@gmail.com><mailto:mkaranicolas@gmail.com> Sent: Wednesday, June 05, 2019 1:40 PM To: Corwin, Philip <pcorwin@verisign.com><mailto:pcorwin@verisign.com> Cc: mitch@eff.org<mailto:mitch@eff.org>; gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: [EXTERNAL] Re: Re: Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Hi Phil, "Replying again in a personal capacity – if there are indeed widespread serious abuses of sunrise registrations taking place ( a contention with which I do not concur) then I would think that proponents of that view would want a fairly rigorous review process to prevent them." Personally, I would support a more robust ruleset, and if you recall, when I first raised this issue, I did suggest a stricter standard. This proposal came about as a result of the objections that were raised then. I understand that compromise can be necessary, so I attempted to respond to the substance of these objections by narrowing the proposal, and crafting it in a manner which is minimally intrusive to legitimate registrations and easier to implement while still addressing egregious cases, as an attempt to generate enough support to get something done to address the problem. "But let me ask you this – I presume that if your proposal was adopted that rights holders seeking to complete sunrise registrations in vertical gTLDs that referenced a category if good or services would need to submit a statement explaining how the gTLD string related to goods and services associated with their marks. So if Mini applied for mini.bike and submitted a statement that this related to their offerings of bikes and bike accessories<https://www.shopminiusa.com/MINI-LIFESTYLE/GIFTS-AND-GOODIES/BIKES> at what point in the registration process would that be submitted and what entity would evaluate it? Similarly, if Nike applied for Nike.bike and submitted a statement that this was based upon their offerings of bike shorts<https://www.nike.com/w?q=women%E2%80%99s%20bike%20shorts&vst=bike> – same question? While I am open to discussion on implementation, I think that the most practical way to handle this would be for the registrar to do it at the point of sale. Again - similar to the way ccTLD residency checks and the .bank reviews work, but simpler. They could take a fast look at the statement (re: offerings of bikes or whatever), and then keep a record of the response. If there were questions later (from the registries or pursuant to a SDRP perhaps) the registrars could share the information. Again - I would be open to suggestion, if you think an alternative structure would be more efficient. Best, Michael On Wed, May 29, 2019 at 3:09 PM Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> wrote: Michael: Replying again in a personal capacity – if there are indeed widespread serious abuses of sunrise registrations taking place ( a contention with which I do not concur) then I would think that proponents of that view would want a fairly rigorous review process to prevent them. But let me ask you this – I presume that if your proposal was adopted that rights holders seeking to complete sunrise registrations in vertical gTLDs that referenced a category if good or services would need to submit a statement explaining how the gTLD string related to goods and services associated with their marks. So if Mini applied for mini.bike and submitted a statement that this related to their offerings of bikes and bike accessories<https://www.shopminiusa.com/MINI-LIFESTYLE/GIFTS-AND-GOODIES/BIKES> at what point in the registration process would that be submitted and what entity would evaluate it? Similarly, if Nike applied for Nike.bike and submitted a statement that this was based upon their offerings of bike shorts<https://www.nike.com/w?q=women%E2%80%99s%20bike%20shorts&vst=bike> – same question? Thanks, Philip Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: Michael Karanicolas <mkaranicolas@gmail.com<mailto:mkaranicolas@gmail.com>> Sent: Wednesday, May 29, 2019 1:37 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> Cc: mitch@eff.org<mailto:mitch@eff.org>; gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: [EXTERNAL] Re: Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Obviously, I'm not proposing "letting all proposed registrations get in". I just noted that, in the cases that you mentioned, I wouldn't see a problem. You bring up geo names - which I'm not sure would even be included under this proposal since it's only meant to apply to categories of goods - but if they did, I would not argue for requiring a physical presence there. I'm not sure I fully follow your second question with regard to "the gTLD vertical" - but again, I'm happy for the broader and more inclusive approach. The point of a low bar assessment is to target obvious cases of abuse, or a clear disconnect between a trademark and the domain under request, but to provide for minimal impairment of legitimate registrations, while minimizing all the administrative costs that you keep trying to build in by keeping the assessment relatively inclusive. On Wed, May 29, 2019 at 2:19 PM Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> wrote: Michael: Again, speaking in a personal capacity – I must say I am confused by your response. You say “The evidence that the system is open to abuse, and that abuse has taken place, has been amply demonstrated, and it follows that if we take no action the system will likely continue to be abused.”, but then you say, “I'm generally fine letting them all in. As I said - a low bar assessment, just to make sure the system isn't being obviously abused.” If you believe that significant abuse has and will take place, then how does letting all proposed registrations get in under a low bar assessment address the problem you perceive? Best, Philip Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: Michael Karanicolas <mkaranicolas@gmail.com<mailto:mkaranicolas@gmail.com>> Sent: Wednesday, May 29, 2019 1:06 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> Cc: mitch@eff.org<mailto:mitch@eff.org>; gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Hi Phil, I appreciate you taking the time to look up the Wikipedia entries for so many different languages, but if your purpose was to make the case that there are a lot of different words out there, I'm not sure you needed to bother with the effort. I will concede that point. But if your underlying argument is that none of this matters because there's so many words still available, and one is just as good as another because domain names don't really matter much... Well - what are we all doing here? Seriously - why do people spend tens of millions of dollars on a domain name if one is as good as another? Why did Amazon just spend god-knows how much time and money trying to secure .Amazon, when they could have just shifted over to .AmazonCorp or .TheAmazonCompany if those are just as good and would have spared them the fight? The answer, as we all know, is that while there's lots of words in the English language, they're not all interchangeable, and some letter strings are better than others in conveying an idea. And this is why the registration of incredibly common words, ostensibly for the purpose of trademark protection. is so troubling, because it carves off a space that could, and likely would, be utilized for a legitimate purpose just because it has a tangential relation to an existing mark. The evidence that the system is open to abuse, and that abuse has taken place, has been amply demonstrated, and it follows that if we take no action the system will likely continue to be abused. If we just ignore this issue, which is fairly glaring, I think it will lead to problems down the line, as the working group seeks approval for its broader recommendations. I agree that we need to work towards implementable guidelines, but I don't agree that it's the sort of insurmountable obstacle you are making it out to be, particularly if we adopt a relatively low bar, as I've been saying all this time. I believe you, in a previous post, spoke of "overkill" and a "needlessly complicated" solution - but you're the one pushing the proposal in this direction. I, personally, don't think the assessment needs to be done by a "neutral third, non-contracted party", and as to your other examples - I'm generally fine letting them all in. As I said - a low bar assessment, just to make sure the system isn't being obviously abused. Best, Michael On Wed, May 29, 2019 at 12:25 PM Corwin, Philip via Gnso-rpm-sunrise <gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org>> wrote: This response is in a personal capacity. First, I would note that the standard for a proposal to be included in the Initial Report for the purpose of soliciting public comment is strong support within the sub team and subsequently the full WG. I do not perceive Michael’s proposal to limit sunrise registrations in at least vertical gTLDs to those related (a term that requires significant definition) to the goods and services to which a mark has been registered as having received that level of support. Indeed, I believe the sub team has become more divided on it as discussion has proceeded. (Of course, the sub team’s consideration of the proposal will, if my perception of support level is borne out, still be noted in the Initial Report and anyone will be free to comment upon it; it simply will not be endorsed proposal on which the ICANN community is specifically invited to comment.) Second, I have stated my belief that, especially with higher sunrise pricing being a gating factor, rights holders have been judicious in their use of sunrise registrations. The fact that sunrise registrations have only averaged 150-200 per new gTLD documents that very selective use, and provides no evidence of significant abuse. (As for questionable marks being registered, that is a subject for review in our next and final phase, when we focus back on and conclude recommendations on the TMCH, including the requirements for recording a mark.) Third, as we seem to be engaged in mathematical analysis, consider that according to the Oxford English Dictionary<https://en.oxforddictionaries.com/explore/how-many-words-are-there-in-the-en...>, “there are, at the very least, a quarter of a million distinct English words, excluding inflections, and words from technical and regional vocabulary not covered by the OED, or words not yet added to the published dictionary, of which perhaps 20 per cent are no longer in current use. If distinct senses were counted, the total would probably approach three quarters of a million”. Wikipedia<https://en.m.wikipedia.org/wiki/List_of_dictionaries_by_number_of_words>, for its part, notes that the 5th edition of the American Heritage Dictionary of the English Language contains more than 370,000 words. English of course is not the only language written in ASCII characters (and therefore not IDNs) – again according to Wikipedia, German has 330,00 words, Italian 260,000, French 135,000, Spanish 93,000, Portuguese 442,000, and so on. But sticking just to English, if we conservatively estimate that there are 300,000 distinct dictionary words, then even an average sunrise registration total of 200 words per new gTLD leaves 299,800 available to register by anyone (and that doesn’t include made up, non-dictionary words). Out of 300,000 available words, 200 represents less than 1/10th of one percent. So the burden of sunrise registrations on the availability of dictionary words as domain names is infinitesimal as, for English alone, 99.9% of all dictionary words remain available for general registration. Fourth, the speech embodied in a domain name is minimal at best. Domain names function primarily as an Internet address, with an expressive function being secondary. Most domain names consist (and the ones we are discussing do so entirely) of a single term separated by a dot from the gTLD string label. Not much meaningful speech is made up of just one word plus a gTLD designation (e.g., ride.bike). Fifth, the domain platform is the primary space in which meaningful speech is expressed, and a sunrise registration leaves ample (indeed, almost unlimited) latitude for those who do not possess trademark rights to engage in unfettered speech. The proposal under discussion cited as an alleged “abuse” BMW’s sunrise registration of mini.bikes. But that registration still leaves available a vast number of .bike domains that include the word mini to serve as platforms for meaningful speech – including minis.bike, miniraces.bike, minisafety.bikes, minifans.bike, minikids.bike, minidirt.bike, and on and on. So the availability of sunrise registrations has essentially no censorship effect on free speech. Sixth and most importantly, even if one agrees with the proponents of the proposal (which I do not) that there is some problem in need of a solution, they have failed to describe any practical means by which the proposal would be uniformly and effectively administered, or estimated what such a process would cost. While there is no requirement to develop a full implementation plan until after a proposal receives consensus support, there should at least be some general description of what administration will entail (and I must say that I do not find statements such as “it’s easy” or “during the registration process” to be very convincing or assuring). If the proponents truly believe there is a significant problem to be redressed then they would want their solution to be administered in an objective, uniform, and effective manner by a neutral third, non-contracted party (noting also that registries and registrars would have commercial incentives to accept almost any rationale provided by a rights holder for a proposed domain registration). A standard policy will have to be developed that wrestles with such questions as whether a rights holder wishing to register in a geo domain must maintain a physical facility in the locale, or whether demonstrating sales in the location is sufficient; and whether “related to” is to be narrowly defined to require that the rights holder have registrations for goods and services that directly coincide with the gTLD vertical, or whether it is sufficient to simply supply goods and services that are employed by those engaged in activities described by the vertical (the first would bar nike.bike, the second would allow it). And of course there must be some appeals process for those rights holders who believe they have been improperly barred from making a valid sunrise registration – and who will administer that, and what standard will it employ? Given the overall failure to describe any demonstrable and consistent abuse or significant impingement of speech by actual sunrise registartions, as well as the lack of even a general outline of a credible implementation model with reasonable costs and manageable rules, I cannot support the proposal. Thanks to all for your consideration of these personal views. Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org<mailto:gnso-rpm-sunrise-bounces@icann.org>> On Behalf Of Mitch Stoltz Sent: Tuesday, May 28, 2019 8:53 PM To: gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Hi Claudio, According to your numbers, trademark holders have registered between 105,000 and 140,000 domains that were never available to noncommercial users. You and others suggest that most of these registrations were “defensive,” meaning that they were done primarily to prevent anyone else from registering those domain names - not to use them. What’s more, given the little we know about what marks are in the TMCH, a great many of those domain names are either commons words, or words that are associated with a product or service ONLY in particular contexts. This represents an enormous loss to the public that will only grow as new gTLDs roll out. I take issue with your suggestion that noncommercial users can simply choose a different domain name that hasn’t been taken by trademark holders before public availability. For a noncommercial user, the expressive value of a domain name can be equal to or greater than its value to a commercial user. A noncommercial user acting in good faith should have equal opportunity to register a domain. Yes, rightsholders can choose to register domains in sunrise based on their internal calculus about where "abuse" is likely to happen, but they are also currently free to act as though good faith registrations by noncommercial users are "abuse." That's a fundamental flaw in the Sunrise mechanism. At a minimum, Michael Karanicolas's proposal to limit sunrise registrations based on the goods and services actually sold by the rightsholder would begin to address this. Best, Mitch Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate | https://act.eff.org/ On 5/22/19 8:46 PM, claudio di gangi wrote: hi Mitch, Sunrise registrations have averaged between 150 and 200 domains per TLD. I believe there over 700 different new gTLDs where non-commercial users can register domains for non-commercial use. For the purposes of consensus-building, when one does the math, can you kindly clarify on how this results with harms falling disproportionately on non-commercial registrants and small business registrants? In terms of the orthogonal domains you mention, registration abuse that targets a brand can easily take place in these zones (and often does take place). Isn’t this a standing justification, along within the fact that only 150 to 200 domains are registered during Sunrise per TLD, for having Sunrise in place in to prevent consumer confusion and harm from taking place? In terms of the question of scale that your mention, I don’t see a necessary inconsistency that should raise alarm. One on hand, the brand owner is making an informed choice about where to protect their brand, often because they have been previously targeted and they recognize a pattern, or due to some other implicit connection with the brand that made not be readily apparent to an outside observer on the surface. But for the vast majority of cases, defensive registrations are based on strategic factors, such as the likelihood of infringement in a particular TLD. I do consider this as resulting in ex-ante harm to non-commercial registrants, as for one reason there are virtually an unlimited number of registrations available in nearly a 1000 gTLDs. To take an extreme case, even in .com with nearly 140 million domains registered, successful domainers continue to profit and non-commercial users have meaningful choices for expression. Thanks in advance for your thoughts. Best regards, Claudio On Wednesday, May 22, 2019, Mitch Stoltz <mitch@eff.org<mailto:mitch@eff.org>> wrote: This working group has hit on numerous problems with the Sunrise regime, with harms falling disproportionately on non-commercial and small business registrants. Michael K. has proposed a narrow solution to one of these problems, and I think it deserves serious consideration. Quite simply, Sunrise as it exists is an expansion of trademark rights. Allowing priority registration without regard to the actual goods and services to which a mark pertains turns a trademark from a source identifier into a global dominion over a word or phrase. We have ample evidence that Sunrise is being abused in just that way. Looking beyond obvious abuses, there is little or no justification for giving trademark holders priority registration in TLDs that are clearly orthogonal to any product or service the mark-holder offers. At scale, having that priority absolutely harms the free expression rights of others. To use a simple example, Apple is a distinctive trademark in consumer technology but a generic word in many other circumstances. There are any number of individuals and organizations who should be able to express themselves with a domain name containing Apple, in ways that raise no possibility of trademark infringement or cybersquatting. All of these potential users should have equal opportunity to register "apple" in new TLDs that don't raise an association with technology products. Moreover, we need to be consistent about questions of scale. If sunrise registrations are used often enough to provide benefit to trademark holders, then they are also being used often enough to interfere with the rights of noncommercial users. And if they are not used very much at all, then we should be jettisoning the program as unnecessary. If Sunrise is to continue, Michael's proposal is a straightforward way of making it conform to the actual legal rights it's meant to protect. Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate | https://act.eff.org/ On 5/15/19 8:09 AM, Kathy Kleiman wrote: Hi Phil, As a co-chair, I'm a little surprised by the vehemence of the debate. Many of us are lawyers and we're used to talking about important issues in dispassionate ways. I think we should do so here. As an ordinary member, I participate in these discussions, as you and Brian do, and in that capacity, I note that we have a problem. I also see the seeds of the solution in your answer below. In 2009, we foresaw that there might be gaming of the Sunrise period -- people registering trademarks for ordinary words to get priority during Sunrise. We now see it happening. Journalists, reporters and bloggers have done the work for us -- and no one seems surprised by their results. I list some of the articles we (as a Subteam) collected below. Links in our Sunrise Summary Table under Q9 - https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ... Nothing in the MK proposal is burdensome, or unusual. It's narrowly-tailored (too narrowly-tailored in my view) to prevent gaming and to use systems already in place. As you note below, the cost of the vetting is part of the process for many gTLDs and ccTLDs -- whether it is providing residency in Japan or the objective standard for .bank or .insurance or .attorney or .cpa. It's already built into our processes -- and not burdensome -- and easily extended to Sunrise. We know there is a misuse and even abuse of the Sunrise system. The MK proposal is an easy fix, and one that actually protects and preserves the balance of rights. We are being asked to solve problems -- and this is a big one. Best, Kathy Articles in our gathering data (links in Summary Table): ● How one guy games new gTLD sunrise periods ● Fake Trademarks Stealing Generic Domains In New gTLD Sunrises ● The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The" ● How common words like Pizza, Money, and Shopping ended up in the Trademark Clearinghouse for new TLDs ● The numbers are in! Donuts sunrises typically get 100+ domains, but they also got gamed ● Digging in on Donuts’ Sunrise: Amazon tops the list, gaming, and top registrars ● .Build Registry Using Questionable Swiss Trademark Registration To Grab “Build” Domains In Sunrise ● How Did RetailMeNot Get 849 .Codes Domains In Sunrise Without AnyTrademarks? On 5/15/2019 10:10 AM, Corwin, Philip wrote: Kathy: I presume that these are your personal views, just as the email I posted last week raising serious doubts about Michael’s proposal were clearly labeled as personal. Likewise, what follows is an expression of personal views. Not to repeat myself, but to the extent there is gaming based on weak marks it should be a focus of discussion when we review requirements for mark recordation in the TMCH. But I have seen no substantial evidence that legitimate trademark holders are seeking to utilize sunrise registrations in gTLDs other than those for which they have a good faith belief that registration is necessary for brand protection. Even where a sunrise registration might arguably be abusive, I do not see that as placing any burden on the speech rights of others who wish to register a domain name that bears some resemblance. I also described why I believe adoption of this proposal will require a costly bureaucracy to yield reasonably consistent applications of what will always be a subjective standard subject to interpretation. I do not see this as the same as the objective standard for a .bank or .insurance domain (where the cost of vetting is built into the registration fee, and the requirement is satisfied by furnishing a certificate evidencing that the applicant is a regulated institution) or even ccTLDs, where some have objective criteria to demonstrate being domiciled or doing business in a particular jurisdiction. While I don’t believe that Michael has the responsibility to provide a full-blown implementation scheme, I have not yet heard a credible explanation of how adoption of a relationship test will be consistently administered in a cost-effective way. Finally, and more broadly, we are in the process of considering proposals to recommend to the full WG for inclusion in the Initial Report for public comment. While that does not require a demonstration of consensus at this point, it should require some reasonably strong support within the sub team and, following that, the WG; and some prospect that the proposal can achieve consensus down the road within the WG (for the Final Report) and Council. Frankly, I don’t see that reasonably strong support for Michael’s proposal within the sub team but rather a sharp divide over whether there is even a problem that requires addressing. And, while I have no crystal ball, I feel reasonably confident that in the end contracted parties will oppose it for administrative and cost reasons, among others, and that BC and IPC members will oppose it as putting yet another burden on sunrise registrations – so I don’t see any prospect of consensus. Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way<https://maps.google.com/?q=12061+Bluemont+Way+%0D%0A++++++++++++++++Reston,+...> Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org><mailto:gnso-rpm-sunrise-bounces@icann.org> On Behalf Of Kathy Kleiman Sent: Wednesday, May 15, 2019 9:04 AM To: gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Hi All, I think the discussion is an important one because it is brings up issues across categories. a) Michael's proposal addresses a problem we have found in our data-driven analysis. There are gamers out there who are registering trademarks in a certain category of goods and services, and then using them to register an array of domain names in Sunrise having nothing at all to do with the categories of their trademark registration. We committed at the outset of the RPMs -- in the 2009 era - that we would not be expanding trademark rights. That's exactly what is happening in these situations and registrations. b) The SDRP is broken - barely used because the Trademark Clearinghouse was supposed to be public, during implementation it was turned private, so challengers cannot get the information they need to challenge. Plus, it's not the job a challenger to police the basic principle of the entire RPM process. Brian, you have mentioned your "suggested improvements to the SDRP" from 2 years ago several times, but that was 1000s of emails ago, and we worked hard to compile the data and solutions that we are looking at today. Per the rules that we agreed to as Co-Chairs and as a WG, we created a new table, atop extensive data gathering, and things must be reintroduced from prior to our URS break. If you could do so, that would be very timely. I've suggested changes to the SDRP that would give challengers some chance to use it -- although only for the narrow purpose intended. The SDRP was not intended to solve a broad gaming problem -- because we did not anticipate one. We know know it exists; and a policy/operational fix resolves it. c) Michael suggests a narrowly tailored solution for a gaming problem that we now know exists. His solution is completely consistent with how registrars, in many of these gTLDs, already handle General Availability (e.g., required proof to register in .BANK). It's not a new process -- just a way to use existing process to avoid gaming and preserve the principles we agreed to in this process. Best, Kathy On 5/9/2019 12:04 PM, BECKHAM, Brian wrote: Michael, I would personally prefer not to get into a Google search race for some kind of “exceptions to prove the rule” and also because “tattoos” is not a class of marks<https://trademark.eu/list-of-classes-with-explanatory-notes/>, but these articles could be of interest in terms of explaining why they may seek such a defensive sunrise registration: https://www.pinterest.ch/steelephotograp/mini-cooper-tattoos/ https://metro.co.uk/2011/01/25/andreas-muller-has-mini-tattooed-on-penis-to-... Also, while MINI may not make motorcycles, their sister company BMW does, so they could well branch out into that product area (including related services). I have already suggested improvements to the SDRP on several occasions, going back almost 2 years now (those were apparently parked in preference of various data seeking exercises), so would respectfully suggest that others take the baton from here. As I said, I believe there is a genuine willingness to explore such solutions. At the same time, it seems unlikely that the current proposal No. 13 is likely to garner consensus, and will defer to the Sub Team Co-Chairs to address that at the level of our present discussions. Brian From: Michael Karanicolas <mkaranicolas@gmail.com><mailto:mkaranicolas@gmail.com> Sent: Thursday, May 9, 2019 5:50 PM To: BECKHAM, Brian <brian.beckham@wipo.int><mailto:brian.beckham@wipo.int> Cc: Ariel Liang <ariel.liang@icann.org><mailto:ariel.liang@icann.org>; gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Interesting, thanks for sharing. I checked whether Mini made motorcycles before I sent my proposal in... I didn't think to check whether they made regular bicycles! By any chance, were you able to find any examples of the company branching into the tattoo business as well (http://mini.tattoo)? I'm not sure if this presents a "nuance" in trademark classes. I don't think it's much of a revelation that "bikes" can refer to motorcycles or regular bicycles. All this represents is a product line I was unaware of. And under my proposal, all Mini would have to do would be to include the link you provided when they register the domain under sunrise, and that should be that. Personally, I don't see how the SDRP challenge process could be retooled to turn it into something that adequately represents the interests of potential future registrants without injecting massive amounts of transparency into the sunrise and TMCH processes... but I would be interested to hear your thoughts as to how this might work. On Thu, May 9, 2019 at 12:38 PM BECKHAM, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Thanks Ariel, Copying here, my full email to the Sunrise List from earlier today as it relates to proposal No. 13: -- Thanks Julie, Just for fun (as I am aware the example was merely anecdotal), further to our hypothesizing last night, indeed, MINI does have a range of folding bikes: https://www.bmwblog.com/2018/02/28/new-mini-folding-bike/ This does however illustrate in some ways the nuance in trademark classes and TLD typology that may escape proposal No. 13 in its current form. As I mentioned on our call, I believe there is a shared willingness to address the issue Michael has raised, but via the SDRP challenge process, and not via claims exclusions. Brian -- Brian From: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org<mailto:gnso-rpm-sunrise-bounces@icann.org>> On Behalf Of Ariel Liang Sent: Thursday, May 9, 2019 5:36 PM To: gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Dear Sunrise Sub Team members, As announced, this thread is being opened for final mailing list discussions related to Sunrise Agreed Charter Question 9, including Proposal #13. We ask that you review the Summary Table (as of 16 April 2019) and provide any additional input you may have to the “proposed answers & preliminary recommendations” in relation to the Agreed Charter Question, and consider draft answers to the following questions regarding the individual proposal: a. Should the Sub Team recommend that the full WG consider including this Individual Proposal in the Initial Report for the solicitation of public comment? b. In light of the Individual Proposal, are any modifications to the current “tentative answers & preliminary recommendations” needed? c. Should any additional Sub Team recommendations be made in relation to the agreed Sunrise charter question? Unless the Sub Team Co-Chairs determine otherwise, this discussion thread will remain open until 23:59 UTC on 22 May 2019. Comments/input provided past the closing date or outside this discussion thread will not be taken into account when compiling the final Sub Team member input. Summary Table (Pages 36-40) The draft answers, preliminary recommendations, and links to the relevant individual proposals are in the latest Summary Table (as of 16 April 2019): https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ.... Agreed Sunrise Charter Question 9 (Page 36) The Sub Team just discussed Agreed Charter Question 9 on 08 May 2019, hence the proposed answers are “TBD”. Based on the Sub Team’s discussions, the transcript and notes, staff will provide update. Q9 In light of the evidence gathered above, should the scope of Sunrise Registrations be limited to the categories of goods and services for which? Proposed Answer: TBD Individual Proposal The Sub Team just discussed the Proposal #13 on 08 May 2019, hence there is no draft answer currently on the Summary Table (as of 16 April 2019). Based on the Sub Team’s discussions, the transcript and notes, staff will provide. Link to the individual proposal is included below. Proposal #13: https://community.icann.org/download/attachments/102146375/Proposal%2313.pdf... Where to Find All Discussion Threads Access the Documents wiki page and find the opening messages of the all discussion threads in the table (highlighted in green): https://community.icann.org/x/_oIWBg Best Regards, Mary, Julie, Ariel World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. 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I think we are agreeing, Phil. I thought you were saying there was a remedy to the problem Michael is trying to solve in the registration process (per your words below). But there is clear gaming -- in the Analysis Group Report and many online articles... a problem we might still solve with narrowly-tailored solutions. Best, Kathy On 6/12/2019 1:59 PM, Corwin, Philip wrote:

Kathy:

Sunrise registrations are not restricted to famous or well known remarks, but are available to any trademark that has met the recordation requirements for the TMCH and has also demonstrated use in commerce.

I have already explained at length why, in my personal view, the low levels of average sunrise registrations in new gTLDs do not provide evidence of substantial abuse, much less suppression of free speech, sufficient to justify restrictive criteria that would necessitate complex decisions and evaluative criteria, including an appeals process, to be effective and fair.

Best, Philip

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

/"Luck is the residue of design" -- Branch Rickey/

*From:*Kathy Kleiman <kathy@kathykleiman.com> *Sent:* Wednesday, June 12, 2019 12:25 PM *To:* gnso-rpm-sunrise@icann.org; Corwin, Philip <pcorwin@verisign.com> *Subject:* [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Hi Phil,

I've been puzzling over this for awhile, so let me write before our meeting today. The TMCH registration involved in gaming, including THE, CHRISTMAS, PEN, and most upsettingly CLOUD (since it represents an entire sector of services) - gaming examples covered by reporters -- appear to be legitimate trademarks. They are registered somewhere and in some category of goods and services. Thus, I don't see how "the standards for mark recordation in the TMCH" would impact its inclusion.

The problem I thought we were puzzling over is the clear misuse of the Sunrise period. These are not famous marks, or even well known marks. From the reports, they appear to be registered solely to game the system and receive Sunrise registrations for valuable domain names far from any of their categories of goods and services (e.g., the many registrations in Sunrise for "THE"). I think we should all worry about this misuse of the Sunrise period -- trademark owners because they will be deprived of legitimate opportunities to register their trademarks as domain names in their chosen New gTLDs and noncommercial community because this removes ordinary words from registrations.

I don't see how reviewing the standards for mark recordation solves this one... but the proposal seems narrowly-tailored to address the harms and not any legitimate trademark owners or trademark/Sunrise activity.

Best, Kathy

On 6/7/2019 1:18 PM, Corwin, Philip via Gnso-rpm-sunrise wrote:

Thanks for your further response, Michael.

Again, I do not perceive substantial abuse or incursion on free speech with the present system. A registrar review of the submitted rationale would likely be nothing more than a low speed bump before completion of registration in almost every instance.

I look forward to working with you in reviewing the standards for mark recordation in the TMCH when we reach the next stage of our work.

Best, Philip

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

/"Luck is the residue of design" -- Branch Rickey/

*From:* Michael Karanicolas <mkaranicolas@gmail.com> <mailto:mkaranicolas@gmail.com> *Sent:* Wednesday, June 05, 2019 1:40 PM *To:* Corwin, Philip <pcorwin@verisign.com> <mailto:pcorwin@verisign.com> *Cc:* mitch@eff.org <mailto:mitch@eff.org>; gnso-rpm-sunrise@icann.org <mailto:gnso-rpm-sunrise@icann.org> *Subject:* [EXTERNAL] Re: Re: Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Hi Phil,

/"Replying again in a personal capacity – if there are indeed widespread serious abuses of sunrise registrations taking place ( a contention with which I do not concur) then I would think that proponents of that view would want a fairly rigorous review process to prevent them."/

Personally, I would support a more robust ruleset, and if you recall, when I first raised this issue, I did suggest a stricter standard. This proposal came about as a result of the objections that were raised then. I understand that compromise can be necessary, so I attempted to respond to the substance of these objections by narrowing the proposal, and crafting it in a manner which is minimally intrusive to legitimate registrations and easier to implement while still addressing egregious cases, as an attempt to generate enough support to get something done to address the problem.

/"But let me ask you this – I presume that if your proposal was adopted that rights holders seeking to complete sunrise registrations in vertical gTLDs that referenced a category if good or services would need to submit a statement explaining how the gTLD string related to goods and services associated with their marks./

/So if Mini applied for mini.bike and submitted a statement that this related to their offerings of bikes  and bike accessories <https://www.shopminiusa.com/MINI-LIFESTYLE/GIFTS-AND-GOODIES/BIKES> at what point in the registration process would that be submitted and what entity would evaluate it?/

/Similarly, if Nike applied for Nike.bike and submitted a statement that this was based upon their offerings of bike shorts <https://www.nike.com/w?q=women%E2%80%99s%20bike%20shorts&vst=bike> – same question?/

While I am open to discussion on implementation, I think that the most practical way to handle this would be for the registrar to do it at the point of sale. Again - similar to the way ccTLD residency checks and the .bank reviews work, but simpler. They could take a fast look at the statement (re: offerings of bikes or whatever), and then keep a record of the response. If there were questions later (from the registries or pursuant to a SDRP perhaps) the registrars could share the information. Again - I would be open to suggestion, if you think an alternative structure would be more efficient.

Best,

Michael

On Wed, May 29, 2019 at 3:09 PM Corwin, Philip <pcorwin@verisign.com <mailto:pcorwin@verisign.com>> wrote:

Michael:

Replying again in a personal capacity – if there are indeed widespread serious abuses of sunrise registrations taking place ( a contention with which I do not concur) then I would think that proponents of that view would want a fairly rigorous review process to prevent them.

But let me ask you this – I presume that if your proposal was adopted that rights holders seeking to complete sunrise registrations in vertical gTLDs that referenced a category if good or services would need to submit a statement explaining how the gTLD string related to goods and services associated with their marks.

So if Mini applied for mini.bike and submitted a statement that this related to their offerings of bikes  and bike accessories <https://www.shopminiusa.com/MINI-LIFESTYLE/GIFTS-AND-GOODIES/BIKES> at what point in the registration process would that be submitted and what entity would evaluate it?

Similarly, if Nike applied for Nike.bike and submitted a statement that this was based upon their offerings of bike shorts <https://www.nike.com/w?q=women%E2%80%99s%20bike%20shorts&vst=bike> – same question?

Thanks, Philip

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

/"Luck is the residue of design" -- Branch Rickey/

*From:* Michael Karanicolas <mkaranicolas@gmail.com <mailto:mkaranicolas@gmail.com>> *Sent:* Wednesday, May 29, 2019 1:37 PM *To:* Corwin, Philip <pcorwin@verisign.com <mailto:pcorwin@verisign.com>> *Cc:* mitch@eff.org <mailto:mitch@eff.org>; gnso-rpm-sunrise@icann.org <mailto:gnso-rpm-sunrise@icann.org> *Subject:* [EXTERNAL] Re: Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Obviously, I'm not proposing "letting all proposed registrations get in". I just noted that, in the cases that you mentioned, I wouldn't see a problem. You bring up geo names - which I'm not sure would even be included under this proposal since it's only meant to apply to categories of goods - but if they did, I would not argue for requiring a physical presence there. I'm not sure I fully follow your second question with regard to "the gTLD vertical" - but again, I'm happy for the broader and more inclusive approach.

The point of a low bar assessment is to target obvious cases of abuse, or a clear disconnect between a trademark and the domain under request, but to provide for minimal impairment of legitimate registrations, while minimizing all the administrative costs that you keep trying to build in by keeping the assessment relatively inclusive.

On Wed, May 29, 2019 at 2:19 PM Corwin, Philip <pcorwin@verisign.com <mailto:pcorwin@verisign.com>> wrote:

Michael:

Again, speaking in a personal capacity – I must say I am confused by your response.

You say “The evidence that the system is open to abuse, and that abuse has taken place, has been amply demonstrated, and it follows that if we take no action the system will likely continue to be abused.”, but then you say, “I'm generally fine letting them all in. As I said - a low bar assessment, just to make sure the system isn't being obviously abused.”

If you believe that significant abuse has and will take place, then how does letting all proposed registrations get in under a low bar assessment address the problem you perceive?

Best, Philip

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

/"Luck is the residue of design" -- Branch Rickey/

*From:* Michael Karanicolas <mkaranicolas@gmail.com <mailto:mkaranicolas@gmail.com>> *Sent:* Wednesday, May 29, 2019 1:06 PM *To:* Corwin, Philip <pcorwin@verisign.com <mailto:pcorwin@verisign.com>> *Cc:* mitch@eff.org <mailto:mitch@eff.org>; gnso-rpm-sunrise@icann.org <mailto:gnso-rpm-sunrise@icann.org> *Subject:* [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Hi Phil,

I appreciate you taking the time to look up the Wikipedia entries for so many different languages, but if your purpose was to make the case that there are a lot of different words out there, I'm not sure you needed to bother with the effort. I will concede that point.

But if your underlying argument is that none of this matters because there's so many words still available, and one is just as good as another because domain names don't really matter much... Well - what are we all doing here?

Seriously - why do people spend tens of millions of dollars on a domain name if one is as good as another? Why did Amazon just spend god-knows how much time and money trying to secure .Amazon, when they could have just shifted over to .AmazonCorp or .TheAmazonCompany if those are just as good and would have spared them the fight? The answer, as we all know, is that while there's lots of words in the English language, they're not all interchangeable, and some letter strings are better than others in conveying an idea. And this is why the registration of incredibly common words, ostensibly for the purpose of trademark protection. is so troubling, because it carves off a space that could, and likely would, be utilized for a legitimate purpose just because it has a tangential relation to an existing mark. The evidence that the system is open to abuse, and that abuse has taken place, has been amply demonstrated, and it follows that if we take no action the system will likely continue to be abused. If we just ignore this issue, which is fairly glaring, I think it will lead to problems down the line, as the working group seeks approval for its broader recommendations.

I agree that we need to work towards implementable guidelines, but I don't agree that it's the sort of insurmountable obstacle you are making it out to be, particularly if we adopt a relatively low bar, as I've been saying all this time. I believe you, in a previous post, spoke of "overkill" and a "needlessly complicated" solution - but you're the one pushing the proposal in this direction. I, personally, don't think the assessment needs to be done by a "neutral third, non-contracted party", and as to your other examples - I'm generally fine letting them all in. As I said - a low bar assessment, just to make sure the system isn't being obviously abused.

Best,

Michael

On Wed, May 29, 2019 at 12:25 PM Corwin, Philip via Gnso-rpm-sunrise <gnso-rpm-sunrise@icann.org <mailto:gnso-rpm-sunrise@icann.org>> wrote:

This response is in a personal capacity.

First, I would note that the standard for a proposal to be included in the Initial Report for the purpose of soliciting public comment is strong support within the sub team and subsequently the full WG.  I do not perceive Michael’s proposal to limit sunrise registrations in at least vertical gTLDs to those related (a term that requires significant definition) to the goods and services to which a mark has been registered as having received that level of support. Indeed, I believe the sub team has become more divided on it as discussion has proceeded. (Of course, the sub team’s consideration of the proposal will, if my perception of support level is borne out, still be noted in the Initial Report and anyone will be free to comment upon it; it simply will not be endorsed proposal on which the ICANN community is specifically invited to comment.)

Second, I have stated my belief that, especially with higher sunrise pricing being a gating factor, rights holders have been judicious in their use of sunrise registrations. The fact that sunrise registrations have only averaged 150-200 per new gTLD documents that very selective use, and provides no evidence of significant abuse. (As for questionable marks being registered, that is a subject for review in our next and final phase, when we focus back on and conclude recommendations on the TMCH, including the requirements for recording a mark.)

Third, as we seem to be engaged in mathematical analysis, consider that according to the Oxford English Dictionary <https://en.oxforddictionaries.com/explore/how-many-words-are-there-in-the-en...>, “there are, at the very least, a quarter of a million distinct English words, excluding inflections, and words from technical and regional vocabulary not covered by the /OED/, or words not yet added to the published dictionary, of which perhaps 20 per cent are no longer in current use. If distinct senses were counted, the total would probably approach three quarters of a million”. Wikipedia <https://en.m.wikipedia.org/wiki/List_of_dictionaries_by_number_of_words>, for its part, notes that the 5^th edition of the American Heritage Dictionary of the English Language contains more than 370,000 words. English of course is not the only language written in ASCII characters (and therefore not IDNs) – again according to Wikipedia, German has 330,00 words, Italian 260,000, French 135,000,  Spanish 93,000, Portuguese 442,000, and so on.

But sticking just to English, if we conservatively estimate that there are 300,000 distinct dictionary words, then even an average sunrise registration  total of 200 words per new gTLD leaves 299,800 available to register by anyone (and that doesn’t include made up, non-dictionary words). Out of 300,000 available words, 200 represents less than 1/10^th of one percent. So the burden of sunrise registrations on the availability of dictionary words as domain names is infinitesimal as, for English alone, 99.9% of all dictionary words remain available for general registration.

Fourth, the speech embodied in a domain name is minimal at best. Domain names function primarily as an Internet address, with an expressive function being secondary. Most domain names consist (and the ones we are discussing do so entirely) of a single term separated by a dot from the gTLD string label. Not much meaningful speech is made up of just one word plus a gTLD designation (e.g., ride.bike).

Fifth, the domain platform is the primary space in which meaningful speech is expressed, and a sunrise registration leaves ample (indeed, almost unlimited) latitude for those who do not possess trademark rights to engage in unfettered speech. The proposal under discussion cited as an alleged “abuse” BMW’s sunrise registration of mini.bikes. But that registration still leaves available a vast number of .bike domains that include the word mini to serve as platforms for meaningful speech – including minis.bike, miniraces.bike, minisafety.bikes, minifans.bike, minikids.bike, minidirt.bike, and on and on. So the availability of sunrise registrations has essentially no censorship effect on free speech.

Sixth and most importantly, even if one agrees with the proponents of the proposal (which I do not) that there is some problem in need of a solution, they have failed to describe any practical means by which the proposal would be uniformly and effectively administered, or estimated what such a process would cost. While there is no requirement to develop a full implementation plan until after a proposal receives consensus support, there should at least be some general description of what administration will entail (and I must say that I do not find statements such as “it’s easy” or “during the registration process” to be very convincing or assuring). If the proponents truly believe there is a significant problem to be redressed then they would want their solution to be administered in an objective, uniform, and effective manner by a neutral third, non-contracted party (noting also that registries and registrars would have commercial incentives to accept almost any rationale provided by a rights holder for a proposed domain registration). A standard policy will have to be developed that wrestles with such questions as whether a rights holder wishing to register in a geo domain must maintain a physical facility in the locale, or whether demonstrating sales in the location is sufficient; and whether “related to” is to be narrowly defined to require that the rights holder have registrations for goods and services that directly coincide with the gTLD vertical, or whether it is sufficient to simply supply goods and services that are employed by those engaged in activities described by the vertical (the first would bar nike.bike, the second would allow it). And of course there must be some appeals process for those rights holders who believe they have been improperly barred from making a valid sunrise registration – and who will administer that, and what standard will it employ?

Given the overall failure to describe any demonstrable and consistent abuse or significant impingement of speech by actual sunrise registartions, as well as the lack of even a general outline of a credible implementation model with reasonable costs and manageable rules, I cannot support the proposal.

Thanks to all for your consideration of these personal views.

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

/"Luck is the residue of design" -- Branch Rickey/

*From:* Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org <mailto:gnso-rpm-sunrise-bounces@icann.org>> *On Behalf Of *Mitch Stoltz *Sent:* Tuesday, May 28, 2019 8:53 PM *To:* gnso-rpm-sunrise@icann.org <mailto:gnso-rpm-sunrise@icann.org> *Subject:* [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Hi Claudio,    According to your numbers, trademark holders have registered between 105,000 and 140,000 domains that were never available to noncommercial users. You and others suggest that most of these registrations were “defensive,” meaning that they were done primarily to prevent anyone else from registering those domain names - not to use them. What’s more, given the little we know about what marks are in the TMCH, a great many of those domain names are either commons words, or words that are associated with a product or service ONLY in particular contexts. This represents an enormous loss to the public that will only grow as new gTLDs roll out.

I take issue with your suggestion that noncommercial users can simply choose a different domain name that hasn’t been taken by trademark holders before public availability. For a noncommercial user, the expressive value of a domain name can be equal to or greater than its value to a commercial user. A noncommercial user acting in good faith should have equal opportunity to register a domain.

Yes, rightsholders can choose to register domains in sunrise based on their internal calculus about where "abuse" is likely to happen, but they are also currently free to act as though good faith registrations by noncommercial users are "abuse." That's a fundamental flaw in the Sunrise mechanism. At a minimum, Michael Karanicolas's proposal to limit sunrise registrations based on the goods and services actually sold by the rightsholder would begin to address this.    Best,       Mitch

Mitch Stoltz

Senior Staff Attorney, EFF | 415-436-9333 x142

https://www.eff.org/donate |https://act.eff.org/

On 5/22/19 8:46 PM, claudio di gangi wrote:

hi Mitch,

Sunrise registrations have averaged between 150 and 200 domains per TLD.

I believe there over 700 different new gTLDs where non-commercial users can register domains for non-commercial use.

For the purposes of consensus-building, when one does the math, can you kindly clarify on how this results with harms falling disproportionately on non-commercial registrants and small business registrants?

In terms of the orthogonal domains you mention, registration abuse that targets a brand can easily take place in these zones (and often does take place). Isn’t this a standing justification, along within the fact that only 150 to 200 domains are registered during Sunrise per TLD, for having Sunrise in place in to prevent consumer confusion and harm from taking place?

In terms of the question of scale that your mention, I don’t see a necessary inconsistency that should raise alarm.

One on hand, the brand owner is making an informed choice about where to protect their brand, often because they have been previously targeted and they recognize a pattern, or due to some other implicit connection with the brand that made not be readily apparent to an outside observer on the surface.

But for the vast majority of cases, defensive registrations are based on strategic factors, such as the likelihood of infringement in a particular TLD. I do consider this as resulting in ex-ante harm to non-commercial registrants, as for one reason there are virtually an unlimited number of registrations available in nearly a 1000 gTLDs. To take an extreme case, even in .com with nearly 140 million domains registered, successful domainers continue to profit and non-commercial users have meaningful choices for expression.

Thanks in advance for your thoughts.

Best regards,

Claudio

On Wednesday, May 22, 2019, Mitch Stoltz <mitch@eff.org <mailto:mitch@eff.org>> wrote:

This working group has hit on numerous problems with the Sunrise regime, with harms falling disproportionately on non-commercial and small business registrants. Michael K. has proposed a narrow solution to one of these problems, and I think it deserves serious consideration.

Quite simply, Sunrise as it exists is an expansion of trademark rights. Allowing priority registration without regard to the actual goods and services to which a mark pertains turns a trademark from a source identifier into a global dominion over a word or phrase. We have ample evidence that Sunrise is being abused in just that way. Looking beyond obvious abuses, there is little or no justification for giving trademark holders priority registration in TLDs that are clearly orthogonal to any product or service the mark-holder offers.

At scale, having that priority absolutely harms the free expression rights of others. To use a simple example, Apple is a distinctive trademark in consumer technology but a generic word in many other circumstances. There are any number of individuals and organizations who should be able to express themselves with a domain name containing Apple, in ways that raise no possibility of trademark infringement or cybersquatting. All of these potential users should have equal opportunity to register "apple" in new TLDs that don't raise an association with technology products.

Moreover, we need to be consistent about questions of scale. If sunrise registrations are used often enough to provide benefit to trademark holders, then they are also being used often enough to interfere with the rights of noncommercial users. And if they are not used very much at all, then we should be jettisoning the program as unnecessary. If Sunrise is to continue, Michael's proposal is a straightforward way of making it conform to the actual legal rights it's meant to protect.

Mitch Stoltz

Senior Staff Attorney, EFF | 415-436-9333 x142

https://www.eff.org/donate |https://act.eff.org/

On 5/15/19 8:09 AM, Kathy Kleiman wrote:

Hi Phil,

As a co-chair, I'm a little surprised by the vehemence of the debate. Many of us are lawyers and we're used to talking about important issues in dispassionate ways. I think we should do so here.

As an ordinary member, I participate in these discussions, as you and Brian do, and in that capacity, I note that we have a problem.  I also see the seeds of the solution in your answer below.

In 2009, we foresaw that there might be gaming of the Sunrise period -- people registering trademarks for ordinary words to get priority during Sunrise. We now see it happening. Journalists, reporters and bloggers have done the work for us -- and no one seems surprised by their results.  I list some of the articles we (as a Subteam) collected below. Links in our Sunrise Summary Table under Q9 - https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ...

Nothing in the MK proposal is burdensome, or unusual. It's narrowly-tailored (too narrowly-tailored in my view) to prevent gaming and to use systems already in place.

As you note below, the cost of the vetting is part of the process for many gTLDs and ccTLDs -- whether it is providing residency in Japan or the objective standard for .bank or .insurance or .attorney or .cpa. It's already built into our processes -- and not burdensome -- and easily extended to Sunrise.

We know there is a misuse and even abuse of the Sunrise system. The MK proposal is an easy fix, and one that actually protects and preserves the balance of rights. We are being asked to solve problems -- and this is a big one.

Best, Kathy

*Articles in our gathering data (links in Summary Table):*

*● How one guy games new gTLD sunrise periods ● Fake Trademarks Stealing Generic Domains In New gTLD Sunrises ● The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The" ● How common words like Pizza, Money, and Shopping ended up in the Trademark Clearinghouse for new TLDs ● The numbers are in! Donuts sunrises typically get 100+ domains, but they also got gamed ● Digging in on Donuts’ Sunrise: Amazon tops the list, gaming, and top registrars ● .Build Registry Using Questionable Swiss Trademark Registration To Grab “Build” Domains In Sunrise ● How Did RetailMeNot Get 849 .Codes Domains In Sunrise Without AnyTrademarks? *

On 5/15/2019 10:10 AM, Corwin, Philip wrote:

Kathy:

I presume that these are your personal views, just as the email I posted last week raising serious doubts about Michael’s proposal were clearly labeled as personal. Likewise, what follows is an expression of personal views.

Not to repeat myself, but to the extent there is gaming based on weak marks it should be a focus of discussion when we review requirements for mark recordation in the TMCH. But I have seen no substantial evidence that legitimate trademark holders are seeking to utilize sunrise registrations in gTLDs other than those for which they have a good faith belief that registration is necessary for brand protection. Even where a sunrise registration might arguably be abusive, I do not see that as placing any burden on the speech rights of others who wish to register a domain name that bears some resemblance.

I also described why I believe adoption of this proposal will require a costly bureaucracy to yield reasonably consistent applications of what will always be a subjective standard subject to interpretation. I do not see this as the same as the objective standard for a .bank or .insurance domain (where the cost of vetting is built into the registration fee, and the requirement is satisfied by furnishing a certificate evidencing that the applicant is a regulated institution) or even ccTLDs, where some have objective criteria to demonstrate being domiciled or doing business in a particular jurisdiction. While I don’t believe that Michael has the responsibility to provide a full-blown implementation scheme, I have not yet heard a credible explanation of how adoption of a relationship test will be consistently administered in a cost-effective way.

Finally, and more broadly, we are in the process of considering proposals to recommend to the full WG for inclusion in the Initial Report for public comment. While that does not require a demonstration of consensus at this point, it should require some reasonably strong support within the sub team and, following that, the WG;  and some prospect that the proposal can achieve consensus down the road within the WG (for the Final Report) and Council. Frankly, I don’t see that reasonably strong support for Michael’s proposal within the sub team but rather a sharp divide over whether there is even a problem that requires addressing. And, while I have no crystal ball, I feel reasonably confident that in the end contracted parties will oppose it for administrative and cost reasons, among others, and that BC and IPC members will oppose it as putting yet another burden on sunrise registrations – so I don’t see any prospect of consensus.

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way <https://maps.google.com/?q=12061+Bluemont+Way+%0D%0A++++++++++++++++Reston,+...> Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

/"Luck is the residue of design" -- Branch Rickey/

*From:* Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org> <mailto:gnso-rpm-sunrise-bounces@icann.org> *On Behalf Of *Kathy Kleiman *Sent:* Wednesday, May 15, 2019 9:04 AM *To:* gnso-rpm-sunrise@icann.org <mailto:gnso-rpm-sunrise@icann.org> *Subject:* [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Hi All,

I think the discussion is an important one because it is brings up issues across categories.

a) Michael's proposal addresses a problem we have found in our data-driven analysis. There are gamers out there who are registering trademarks in a certain category of goods and services, and then using them to register an array of domain names in Sunrise having nothing at all to do with the categories of their trademark registration.

We committed at the outset of the RPMs -- in the 2009 era - that we would not be expanding trademark rights. That's exactly what is happening in these situations and registrations.

b) The SDRP is broken - barely used because the Trademark Clearinghouse was supposed to be public, during implementation it was turned private, so challengers cannot get the information they need to challenge. Plus, it's not the job a challenger to police the basic principle of the entire RPM process.

Brian, you have mentioned your "suggested improvements to the SDRP" from 2 years ago several times, but that was 1000s of emails ago, and we worked hard to compile the data and solutions that we are looking at today. Per the rules that we agreed to as Co-Chairs and as a WG, we created a new table, atop extensive data gathering, and things must be reintroduced from prior to our URS break. If you could do so, that would be very timely.

I've suggested changes to the SDRP that would give challengers some chance to use it -- although only for the narrow purpose intended. The SDRP was not intended to solve a broad gaming problem -- because we did not anticipate one. We know know it exists; and a policy/operational fix resolves it.

c) Michael suggests a narrowly tailored solution for a gaming problem that we now know exists. His solution is completely consistent with how registrars, in many of these gTLDs, already handle General Availability (e.g., required proof to register in .BANK). It's not a new process -- just a way to use existing process to avoid gaming and preserve the principles we agreed to in this process.

Best, Kathy

On 5/9/2019 12:04 PM, BECKHAM, Brian wrote:

Michael,

I would personally prefer not to get into a Google search race for some kind of “exceptions to prove the rule” and also because “tattoos” is not a class of marks <https://trademark.eu/list-of-classes-with-explanatory-notes/>, but these articles could be of interest in terms of explaining why they may seek such a defensive sunrise registration:

https://www.pinterest.ch/steelephotograp/mini-cooper-tattoos/

https://metro.co.uk/2011/01/25/andreas-muller-has-mini-tattooed-on-penis-to-...

Also, while MINI may not make motorcycles, their sister company BMW does, so they could well branch out into that product area (including related services).

I have already suggested improvements to the SDRP on several occasions, going back almost 2 years now (those were apparently parked in preference of various data seeking exercises), so would respectfully suggest that others take the baton from here.

As I said, I believe there is a genuine willingness to explore such solutions.

At the same time, it seems unlikely that the current proposal No. 13 is likely to garner consensus, and will defer to the Sub Team Co-Chairs to address that at the level of our present discussions.

Brian

*From:* Michael Karanicolas <mkaranicolas@gmail.com> <mailto:mkaranicolas@gmail.com> *Sent:* Thursday, May 9, 2019 5:50 PM *To:* BECKHAM, Brian <brian.beckham@wipo.int> <mailto:brian.beckham@wipo.int> *Cc:* Ariel Liang <ariel.liang@icann.org> <mailto:ariel.liang@icann.org>; gnso-rpm-sunrise@icann.org <mailto:gnso-rpm-sunrise@icann.org> *Subject:* Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Interesting, thanks for sharing. I checked whether Mini made motorcycles before I sent my proposal in... I didn't think to check whether they made regular bicycles!

By any chance, were you able to find any examples of the company branching into the tattoo business as well (http://mini.tattoo)?

I'm not sure if this presents a "nuance" in trademark classes. I don't think it's much of a revelation that "bikes" can refer to motorcycles or regular bicycles. All this represents is a product line I was unaware of. And under my proposal, all Mini would have to do would be to include the link you provided when they register the domain under sunrise, and that should be that.

Personally, I don't see how the SDRP challenge process could be retooled to turn it into something that adequately represents the interests of potential future registrants without injecting massive amounts of transparency into the sunrise and TMCH processes... but I would be interested to hear your thoughts as to how this might work.

On Thu, May 9, 2019 at 12:38 PM BECKHAM, Brian <brian.beckham@wipo.int <mailto:brian.beckham@wipo.int>> wrote:

Thanks Ariel,

Copying here, my full email to the Sunrise List from earlier today as it relates to proposal No. 13:

--

Thanks Julie,

Just for fun (as I am aware the example was merely anecdotal), further to our hypothesizing last night, indeed, MINI does have a range of folding bikes:

https://www.bmwblog.com/2018/02/28/new-mini-folding-bike/

This does however illustrate in some ways the nuance in trademark classes and TLD typology that may escape proposal No. 13 in its current form.

As I mentioned on our call, I believe there is a shared willingness to address the issue Michael has raised, but via the SDRP challenge process, and not via claims exclusions.

Brian

--

Brian

*From:* Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org <mailto:gnso-rpm-sunrise-bounces@icann.org>> *On Behalf Of *Ariel Liang *Sent:* Thursday, May 9, 2019 5:36 PM *To:* gnso-rpm-sunrise@icann.org <mailto:gnso-rpm-sunrise@icann.org> *Subject:* [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Dear Sunrise Sub Team members,

As announced, this thread is being opened for final mailing list discussions related to *Sunrise Agreed Charter Question 9*, including *Proposal #13*.

We ask that you review the *Summary Table* *(as of 16 April 2019) *and provide any additional input you may have to the “*proposed answers & preliminary recommendations*” in relation to the Agreed Charter Question, and consider *draft answers *to the following questions regarding the individual proposal:

a. Should the Sub Team recommend that the full WG consider including this Individual Proposal in the Initial Report for the solicitation of public comment?

b. In light of the Individual Proposal, are any modifications to the current “tentative answers & preliminary recommendations” needed?

c. Should any additional Sub Team recommendations be made in relation to the agreed Sunrise charter question?

Unless the Sub Team Co-Chairs determine otherwise, this discussion thread will remain open until *23:59 UTC on 22 May 2019*. Comments/input provided past the closing date or outside this discussion thread will not be taken into account when compiling the final Sub Team member input.

*Summary Table (Pages 36-40)*

The draft answers, preliminary recommendations, and links to the relevant individual proposals are in the latest Summary Table (as of 16 April 2019):

https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ....

*Agreed Sunrise Charter Question 9 (Page 36)*

The Sub Team just discussed Agreed Charter Question 9 on 08 May 2019, hence the proposed answers are “TBD”. Based on the Sub Team’s discussions, the transcript and notes, staff will provide update.

/ Q9 In light of the evidence gathered above, should the scope of Sunrise Registrations be limited to the categories of goods and services for which? /

*_Proposed Answer_: *TBD

*Individual Proposal*

The Sub Team just discussed the Proposal #13 on 08 May 2019, hence there is no draft answer currently on the Summary Table (as of 16 April 2019). Based on the Sub Team’s discussions, the transcript and notes, staff will provide.

Link to the individual proposal is included below.

*Proposal #13*: https://community.icann.org/download/attachments/102146375/Proposal%2313.pdf...

*Where to Find All Discussion Threads *

Access the Documents wiki page and find the opening messages of the all discussion threads in the table (highlighted in green): https://community.icann.org/x/_oIWBg

Best Regards,

Mary, Julie, Ariel

World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.

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Dear Mitch, Thanks for your reply. In terms of this thread, my previous note was mainly to reply to the concept that the harms are falling disproportionately on non-commercial registrants because trademark owners are able, in principle, to secure domains during Sunrise in gTLDs which may not appear directly correlated to the goods or services upon which the trademark is based. I expound on this further below for your consideration. Sunrise was created for the purpose of helping trademark owners address registration abuse by providing an early window to register their brand as a domain before new gTLDs open up during general availability and the domain is grabbed by a bad faith registrant. Therein, I believe lies the root of the issue that is causing your concern. As during general availability, both (1) legitimate non-commercial registrants and (2) bad faith cybersquatters are able to freely register domains. So policies aimed at limiting registration abuse may have an indirect effect on all registrants (both commercial and non-commercial), since there is no current way of separating them out during general availability. Unfortunately, cybersquatting remains a pervasive problem and this the genesis for having the RPMs in the first instance. In other words, one way of looking at the RPMs is that they improve the likelihood that the benefits of new gTLDs will outweigh the harms, allowing in broad terms for their introduction to the DNS. While the RPMs are helpful and necessary from an IP perspective, new gTLDs present an unique challenge for brand protection because these domains are fresh grounds where, by definition, a preexisting trademark owner does not have their trademark-matching domain name under control. So while a non-commercial registrant may seek to register a domain name for purely expressive purposes, cybersquatters seek to register domains for their inherent value as a trademark, and in many cases with the express intent of confusing and/or harming consumers through misappropriation of the mark. Registration abuse can generate profit because the cost of the domain registration + web hosting is often significantly less that the revenue that can be generated from the cybersquatting conduct. In terms of Sunrise, based on our calculations, there are between 105,000 and 140,000 sunrise registrations in new gTLDs. As of recent count, there are approximately 23,000,000 registrations in new gTLDs. So by going with the upper range estimate, sunrise registrations represent approximately six one thousandths of one percent (0.006) of all current new gTLD registrations. This is an imperfect estimate but I think it's largely in the right ballpark. However, the costs imposed on trademark owners include: (1) registering domain names defensively, in some cases these registrations cost several thousand dollars for one domain during Sunrise; (2) costs relating to continually monitoring for abusive registrations; (3) enforcement costs to address abusively registered domains, including negotiations, cease and desist letters, UDRP/URS proceedings - which cost many thousands of dollars to draft and file, often just for one domain name; and litigation or court actions under national laws; (6) the damage done to brand value when a branded domain is used for cyber-crime or other fraudulent purposes; (7) the costs that are realized when consumers are confused, have a negative online experience, or worse, defrauded monetarily or even physically harmed when a branded domain is used to instill trust for websites selling dangerous counterfeit products. Trademark owners are not registering these domains defensively to prevent bona fide registrations, but to prevent the harms that are imposed on them and their consumers from registration abuse. As I think Phil did an excellent job describing in a recent post, non-commercial registrants have alternative ways to find domains that are a near match or close approximation to the identical match of the trademark. These domains can be very similar in appearance, phonetically, or in meaning, to the trademarked term. To provide an example, one way this can be accomplished is by adding a closely related word or phrase to the term, making the term plural, finding another word that has the same meaning, or by spelling the word phonetically in a different manner. Since sunrise registrations are limited to the identical match of the trademark, registrants are able to register domains that are nearly identical for the same expressive purpose during general availability. Taking it a step further, a non-commercial registrant may even be able to purchase the identical match domain directly from the trademark owner when the trademark owner is willing to sell the domain because they are confident that it will be used legitimately for commerce (in an unrelated class of goods or services) or in a non-commercial manner. Or the trademark owner may let the identical match domain expire when they are unable to maintain it further or when additional TLDs are launched in the future and they need to trim their portfolio, upon which time the identical match domain can be registered by a noncommercial registrant. I concede these examples are not the same as registering the identical match at the time of launch, but since there is no current way of distinguishing a legitimate registrant from a bad actor at the point of sale, this is the trade-off or compromise that was made to allow more gTLDs in safe and orderly manner, while permitting the maximum amount of legitimate use. In part, in exchange for this compromise, non-commercial registrants now have over 600 new gTLDs in which they can register domains for non-commercial purposes. As mentioned above, within those hundreds of new gTLDs (or which may soon be thousands with additional rounds of new gTLDs) only .006% of domains are registered during the sunrise period, leaving 99.004% available outside of sunrise. And if we were to examine the number of times that a trademark owner registered a domain during sunrise in a new gTLD that appears on some level to be completely unrelated to the goods or services upon which the trademark is based (which is the target of Michael's proposal), I expect that we would find that an even significantly smaller percentage of registrations take place during sunrise. On the flip end, new gTLDs can impose substantial costs on trademark owners as describe above. So I don't think the harms are falling *disproportionately* on non-commercial users. When you look at the harms and benefits of open gTLD registries, I think the harms actually fall quite disproportionately on trademark owners, which I believe is part of the reason why the IPC had concerns with the unrestricted expansion, and why the same expansion was so strongly supported by your fellow members in NCUC. Also just for the sake of argument, from a practical perspective, I think the various challenges of trying to draw the line on which TLDs are sufficiently unrelated to the brand to prevent a trademark owner from using sunrise are significant due to the number of variables and because it is a subjective undertaking from the outset. How would one categorize gTLDs like <.online> or <.web> - would the trademark owner need to be the business of online transactions or the Internet to be eligible? How about <.blackfriday>, <.auctions>, <.blue>, <.software>, <.towns>, <.technology>, <.support>. I don't understand what the limiting principle is with the proposal that determines which new gTLDs are included in the analysis and which are not. Also, conceptually, what is the foundation for saying that the use of the gTLD should be limited to a specific class of goods or services in order to trigger sunrise protection, as opposed to having the ability to use the gTLD in relation to one's interpretation of the general meaning of the word in a particular language? After all, these gTLDs are open for anyone to use for any meaning or purpose whatsoever, yet the proposal is based on opposite grounds, namely that sunrise registrations shouldn't be permitted in certain TLDs for certain trademark owners because the class of goods upon which the trademark is based doesn't appear sufficiently connected to the TLD from someone's subjective perspective. But then when the gTLD is opened up during general availability, there is no such eligibility restriction for bad faith registrants to register the domain. So the trademark owner would be prevented from using Sunrise, and the cybersquatter would be free to register the domain name during general availability. If a registry wants to limit the use of the gTLD to certain goods or services, they are free to do so. But the proposal limits use of sunrise even when the registry is operating the TLD in a manner that allows any interpretation of the meaning of the gTLD for registration purposes. This is an incongruent outcome. Moreover, cybersquatters look for every conceivable way to identify which trademarks to register and where, so if the proposal were to be adopted, it would leave trademark owners, in principle, even more vulnerable to cybersquatting. In other words, a cybersquatter obviously has a specific trademark in mind when they register the domain. Logically, they would then look for TLDs where sunrise is restricted according to the proposal, knowing with a higher degree of certainty that they will have the ability to register the domain name in bad faith during landrush. I very much appreciate that Michael was being innovative in trying to come up with a solution that seeks to thread the needle, and I thank him for doing so. To the extent it's any consolation, I think the gTLDs you seem to be targeting are the most likely spaces that will not have many sunrise registrations for particular brands. So the dynamics of the market are already producing an outcome that is most similar to the one you are seeking to accomplish through the proposal, but without the extremely complex policy and bureaucratic implications that would be generated, without the policy limitations for protecting trademarks and consumers, and without the additional advantages that would be bestowed upon those acting in bad faith. I hope this was helpful feedback and looking forward to continued dialogue with you. Have a nice weekend. Best regards, Claudio On Tue, May 28, 2019 at 8:53 PM Mitch Stoltz <mitch@eff.org> wrote:

Hi Claudio, According to your numbers, trademark holders have registered between 105,000 and 140,000 domains that were never available to noncommercial users. You and others suggest that most of these registrations were “defensive,” meaning that they were done primarily to prevent anyone else from registering those domain names - not to use them. What’s more, given the little we know about what marks are in the TMCH, a great many of those domain names are either commons words, or words that are associated with a product or service ONLY in particular contexts. This represents an enormous loss to the public that will only grow as new gTLDs roll out.

I take issue with your suggestion that noncommercial users can simply choose a different domain name that hasn’t been taken by trademark holders before public availability. For a noncommercial user, the expressive value of a domain name can be equal to or greater than its value to a commercial user. A noncommercial user acting in good faith should have equal opportunity to register a domain.

Yes, rightsholders can choose to register domains in sunrise based on their internal calculus about where "abuse" is likely to happen, but they are also currently free to act as though good faith registrations by noncommercial users are "abuse." That's a fundamental flaw in the Sunrise mechanism. At a minimum, Michael Karanicolas's proposal to limit sunrise registrations based on the goods and services actually sold by the rightsholder would begin to address this. Best, Mitch

Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142https://www.eff.org/donate | https://act.eff.org/

On 5/22/19 8:46 PM, claudio di gangi wrote:

hi Mitch,

Sunrise registrations have averaged between 150 and 200 domains per TLD.

I believe there over 700 different new gTLDs where non-commercial users can register domains for non-commercial use.

For the purposes of consensus-building, when one does the math, can you kindly clarify on how this results with harms falling disproportionately on non-commercial registrants and small business registrants?

In terms of the orthogonal domains you mention, registration abuse that targets a brand can easily take place in these zones (and often does take place). Isn’t this a standing justification, along within the fact that only 150 to 200 domains are registered during Sunrise per TLD, for having Sunrise in place in to prevent consumer confusion and harm from taking place?

In terms of the question of scale that your mention, I don’t see a necessary inconsistency that should raise alarm.

One on hand, the brand owner is making an informed choice about where to protect their brand, often because they have been previously targeted and they recognize a pattern, or due to some other implicit connection with the brand that made not be readily apparent to an outside observer on the surface.

But for the vast majority of cases, defensive registrations are based on strategic factors, such as the likelihood of infringement in a particular TLD. I do consider this as resulting in ex-ante harm to non-commercial registrants, as for one reason there are virtually an unlimited number of registrations available in nearly a 1000 gTLDs. To take an extreme case, even in .com with nearly 140 million domains registered, successful domainers continue to profit and non-commercial users have meaningful choices for expression.

Thanks in advance for your thoughts.

Best regards, Claudio

On Wednesday, May 22, 2019, Mitch Stoltz <mitch@eff.org> wrote:

...

This working group has hit on numerous problems with the Sunrise regime, with harms falling disproportionately on non-commercial and small business registrants. Michael K. has proposed a narrow solution to one of these problems, and I think it deserves serious consideration.

Quite simply, Sunrise as it exists is an expansion of trademark rights. Allowing priority registration without regard to the actual goods and services to which a mark pertains turns a trademark from a source identifier into a global dominion over a word or phrase. We have ample evidence that Sunrise is being abused in just that way. Looking beyond obvious abuses, there is little or no justification for giving trademark holders priority registration in TLDs that are clearly orthogonal to any product or service the mark-holder offers.

At scale, having that priority absolutely harms the free expression rights of others. To use a simple example, Apple is a distinctive trademark in consumer technology but a generic word in many other circumstances. There are any number of individuals and organizations who should be able to express themselves with a domain name containing Apple, in ways that raise no possibility of trademark infringement or cybersquatting. All of these potential users should have equal opportunity to register "apple" in new TLDs that don't raise an association with technology products.

Moreover, we need to be consistent about questions of scale. If sunrise registrations are used often enough to provide benefit to trademark holders, then they are also being used often enough to interfere with the rights of noncommercial users. And if they are not used very much at all, then we should be jettisoning the program as unnecessary. If Sunrise is to continue, Michael's proposal is a straightforward way of making it conform to the actual legal rights it's meant to protect.

Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142https://www.eff.org/donate | https://act.eff.org/

On 5/15/19 8:09 AM, Kathy Kleiman wrote:

Hi Phil,

As a co-chair, I'm a little surprised by the vehemence of the debate. Many of us are lawyers and we're used to talking about important issues in dispassionate ways. I think we should do so here.

As an ordinary member, I participate in these discussions, as you and Brian do, and in that capacity, I note that we have a problem. I also see the seeds of the solution in your answer below.

In 2009, we foresaw that there might be gaming of the Sunrise period -- people registering trademarks for ordinary words to get priority during Sunrise. We now see it happening. Journalists, reporters and bloggers have done the work for us -- and no one seems surprised by their results. I list some of the articles we (as a Subteam) collected below. Links in our Sunrise Summary Table under Q9 - https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ...

Nothing in the MK proposal is burdensome, or unusual. It's narrowly-tailored (too narrowly-tailored in my view) to prevent gaming and to use systems already in place.

As you note below, the cost of the vetting is part of the process for many gTLDs and ccTLDs -- whether it is providing residency in Japan or the objective standard for .bank or .insurance or .attorney or .cpa. It's already built into our processes -- and not burdensome -- and easily extended to Sunrise.

We know there is a misuse and even abuse of the Sunrise system. The MK proposal is an easy fix, and one that actually protects and preserves the balance of rights. We are being asked to solve problems -- and this is a big one.

Best, Kathy

*Articles in our gathering data (links in Summary Table):*

*● How one guy games new gTLD sunrise periods* *● Fake Trademarks Stealing Generic Domains In New gTLD Sunrises* *● The Trademark ClearingHouse Worked So Well One Company Got 24 new gTLD using The Famous Trademark “The"* *● How common words like Pizza, Money, and Shopping ended up in the Trademark Clearinghouse for new TLDs* *● The numbers are in! Donuts sunrises typically get 100+ domains, but they also got gamed* *● Digging in on Donuts’ Sunrise: Amazon tops the list, gaming, and top registrars* *● .Build Registry Using Questionable Swiss Trademark Registration To Grab “Build” Domains In Sunrise* *● How Did RetailMeNot Get 849 .Codes Domains In Sunrise Without AnyTrademarks?*

On 5/15/2019 10:10 AM, Corwin, Philip wrote:

Kathy:

I presume that these are your personal views, just as the email I posted last week raising serious doubts about Michael’s proposal were clearly labeled as personal. Likewise, what follows is an expression of personal views.

Not to repeat myself, but to the extent there is gaming based on weak marks it should be a focus of discussion when we review requirements for mark recordation in the TMCH. But I have seen no substantial evidence that legitimate trademark holders are seeking to utilize sunrise registrations in gTLDs other than those for which they have a good faith belief that registration is necessary for brand protection. Even where a sunrise registration might arguably be abusive, I do not see that as placing any burden on the speech rights of others who wish to register a domain name that bears some resemblance.

I also described why I believe adoption of this proposal will require a costly bureaucracy to yield reasonably consistent applications of what will always be a subjective standard subject to interpretation. I do not see this as the same as the objective standard for a .bank or .insurance domain (where the cost of vetting is built into the registration fee, and the requirement is satisfied by furnishing a certificate evidencing that the applicant is a regulated institution) or even ccTLDs, where some have objective criteria to demonstrate being domiciled or doing business in a particular jurisdiction. While I don’t believe that Michael has the responsibility to provide a full-blown implementation scheme, I have not yet heard a credible explanation of how adoption of a relationship test will be consistently administered in a cost-effective way.

Finally, and more broadly, we are in the process of considering proposals to recommend to the full WG for inclusion in the Initial Report for public comment. While that does not require a demonstration of consensus at this point, it should require some reasonably strong support within the sub team and, following that, the WG; and some prospect that the proposal can achieve consensus down the road within the WG (for the Final Report) and Council. Frankly, I don’t see that reasonably strong support for Michael’s proposal within the sub team but rather a sharp divide over whether there is even a problem that requires addressing. And, while I have no crystal ball, I feel reasonably confident that in the end contracted parties will oppose it for administrative and cost reasons, among others, and that BC and IPC members will oppose it as putting yet another burden on sunrise registrations – so I don’t see any prospect of consensus.

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way <https://maps.google.com/?q=12061+Bluemont+Way+%0D%0A++++++++++++++++Reston,+...> Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

*"Luck is the residue of design" -- Branch Rickey*

*From:* Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org> <gnso-rpm-sunrise-bounces@icann.org> *On Behalf Of *Kathy Kleiman *Sent:* Wednesday, May 15, 2019 9:04 AM *To:* gnso-rpm-sunrise@icann.org *Subject:* [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Hi All,

I think the discussion is an important one because it is brings up issues across categories.

a) Michael's proposal addresses a problem we have found in our data-driven analysis. There are gamers out there who are registering trademarks in a certain category of goods and services, and then using them to register an array of domain names in Sunrise having nothing at all to do with the categories of their trademark registration.

We committed at the outset of the RPMs -- in the 2009 era - that we would not be expanding trademark rights. That's exactly what is happening in these situations and registrations.

b) The SDRP is broken - barely used because the Trademark Clearinghouse was supposed to be public, during implementation it was turned private, so challengers cannot get the information they need to challenge. Plus, it's not the job a challenger to police the basic principle of the entire RPM process.

Brian, you have mentioned your "suggested improvements to the SDRP" from 2 years ago several times, but that was 1000s of emails ago, and we worked hard to compile the data and solutions that we are looking at today. Per the rules that we agreed to as Co-Chairs and as a WG, we created a new table, atop extensive data gathering, and things must be reintroduced from prior to our URS break. If you could do so, that would be very timely.

I've suggested changes to the SDRP that would give challengers some chance to use it -- although only for the narrow purpose intended. The SDRP was not intended to solve a broad gaming problem -- because we did not anticipate one. We know know it exists; and a policy/operational fix resolves it.

c) Michael suggests a narrowly tailored solution for a gaming problem that we now know exists. His solution is completely consistent with how registrars, in many of these gTLDs, already handle General Availability (e.g., required proof to register in .BANK). It's not a new process -- just a way to use existing process to avoid gaming and preserve the principles we agreed to in this process.

Best, Kathy

On 5/9/2019 12:04 PM, BECKHAM, Brian wrote:

Michael,

I would personally prefer not to get into a Google search race for some kind of “exceptions to prove the rule” and also because “tattoos” is not a class of marks <https://trademark.eu/list-of-classes-with-explanatory-notes/>, but these articles could be of interest in terms of explaining why they may seek such a defensive sunrise registration:

https://www.pinterest.ch/steelephotograp/mini-cooper-tattoos/

https://metro.co.uk/2011/01/25/andreas-muller-has-mini-tattooed-on-penis-to-...

Also, while MINI may not make motorcycles, their sister company BMW does, so they could well branch out into that product area (including related services).

I have already suggested improvements to the SDRP on several occasions, going back almost 2 years now (those were apparently parked in preference of various data seeking exercises), so would respectfully suggest that others take the baton from here.

As I said, I believe there is a genuine willingness to explore such solutions.

At the same time, it seems unlikely that the current proposal No. 13 is likely to garner consensus, and will defer to the Sub Team Co-Chairs to address that at the level of our present discussions.

Brian

*From:* Michael Karanicolas <mkaranicolas@gmail.com> <mkaranicolas@gmail.com> *Sent:* Thursday, May 9, 2019 5:50 PM *To:* BECKHAM, Brian <brian.beckham@wipo.int> <brian.beckham@wipo.int> *Cc:* Ariel Liang <ariel.liang@icann.org> <ariel.liang@icann.org>; gnso-rpm-sunrise@icann.org *Subject:* Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Interesting, thanks for sharing. I checked whether Mini made motorcycles before I sent my proposal in... I didn't think to check whether they made regular bicycles!

By any chance, were you able to find any examples of the company branching into the tattoo business as well (http://mini.tattoo)?

I'm not sure if this presents a "nuance" in trademark classes. I don't think it's much of a revelation that "bikes" can refer to motorcycles or regular bicycles. All this represents is a product line I was unaware of. And under my proposal, all Mini would have to do would be to include the link you provided when they register the domain under sunrise, and that should be that.

Personally, I don't see how the SDRP challenge process could be retooled to turn it into something that adequately represents the interests of potential future registrants without injecting massive amounts of transparency into the sunrise and TMCH processes... but I would be interested to hear your thoughts as to how this might work.

On Thu, May 9, 2019 at 12:38 PM BECKHAM, Brian <brian.beckham@wipo.int> wrote:

Thanks Ariel,

Copying here, my full email to the Sunrise List from earlier today as it relates to proposal No. 13:

--

Thanks Julie,

Just for fun (as I am aware the example was merely anecdotal), further to our hypothesizing last night, indeed, MINI does have a range of folding bikes:

https://www.bmwblog.com/2018/02/28/new-mini-folding-bike/

This does however illustrate in some ways the nuance in trademark classes and TLD typology that may escape proposal No. 13 in its current form.

As I mentioned on our call, I believe there is a shared willingness to address the issue Michael has raised, but via the SDRP challenge process, and not via claims exclusions.

Brian

--

Brian

*From:* Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org> *On Behalf Of *Ariel Liang *Sent:* Thursday, May 9, 2019 5:36 PM *To:* gnso-rpm-sunrise@icann.org *Subject:* [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9

Dear Sunrise Sub Team members,

As announced, this thread is being opened for final mailing list discussions related to *Sunrise Agreed Charter Question 9*, including *Proposal #13*.

We ask that you review the *Summary Table* *(as of 16 April 2019) *and provide any additional input you may have to the “*proposed answers & preliminary recommendations*” in relation to the Agreed Charter Question, and consider *draft answers *to the following questions regarding the individual proposal:

a. Should the Sub Team recommend that the full WG consider including this Individual Proposal in the Initial Report for the solicitation of public comment?

b. In light of the Individual Proposal, are any modifications to the current “tentative answers & preliminary recommendations” needed?

c. Should any additional Sub Team recommendations be made in relation to the agreed Sunrise charter question?

Unless the Sub Team Co-Chairs determine otherwise, this discussion thread will remain open until *23:59 UTC on 22 May 2019*. Comments/input provided past the closing date or outside this discussion thread will not be taken into account when compiling the final Sub Team member input.

*Summary Table (Pages 36-40)*

The draft answers, preliminary recommendations, and links to the relevant individual proposals are in the latest Summary Table (as of 16 April 2019):

https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ....

*Agreed Sunrise Charter Question 9** (Page 36)*

The Sub Team just discussed Agreed Charter Question 9 on 08 May 2019, hence the proposed answers are “TBD”. Based on the Sub Team’s discussions, the transcript and notes, staff will provide update.

* Q9 In light of the evidence gathered above, should the scope of Sunrise Registrations be limited to the categories of goods and services for which? *

*Proposed Answer**: *TBD

*Individual Proposal*

The Sub Team just discussed the Proposal #13 on 08 May 2019, hence there is no draft answer currently on the Summary Table (as of 16 April 2019). Based on the Sub Team’s discussions, the transcript and notes, staff will provide.

Link to the individual proposal is included below.

*Proposal #13*: https://community.icann.org/download/attachments/102146375/Proposal%2313.pdf...

*Where to Find All Discussion Threads*

Access the Documents wiki page and find the opening messages of the all discussion threads in the table (highlighted in green): https://community.icann.org/x/_oIWBg

Best Regards,

Mary, Julie, Ariel

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Michael: Speaking in a personal capacity, in regard to your proposal: Where a top level domain is suggestive of a particular category of good or service, such as .bike or .pizza, sunrise registrations should require proof by the mark holder of actively doing business in that specific category. In understand your concern that rights holders in certain dictionary words may sometimes utilize the sunrise registration period in a questionable manner. I question whether this is a widespread concern given the general cost of a sunrise registration, which is substantially higher than the land rush or general availability periods (and we have heard from rights holders how premium pricing often deters any utilization of the sunrise option). However, like Brian, I believe we can look at the SDRP challenge process to see if it needs tweaking. We can also look at whether there is some appropriate tightening of the standards to register a mark in the TMCH, when we discuss the TMCH as our final step prior to drafting an initial report. But I believe that your proposal is both overkill and will be needlessly complicated and bureaucratic to implement, especially given that the sunrise period is but a brief opening phase for each new gTLD. The first question is what is the activity associated with a particular gTLD string. When I type “bike” into the USPTO goods and services search engine this is what comes up--- Mini-bikes A 04/02/1991 GOODS 07-1997 Select Record 012-908 012 D 09/03/2009 GOODS 9-10-09 - the 9-3-09 entry was deleted because ROWBIKES is More ><https://idm-tmng.uspto.gov/id-master-list-public.html#show%20more%20content> 09-2007 Select Record 012-906 012 Rowing bikes A 09/03/2009 GOODS 09-2007 Select Record 012-1167 012 Folding bikes A 05/16/2013 GOODS T 10-2013 Select Record 012-1538 012 Dirt bikes A 03/14/2019 GOODS T 11-2019 Select Record 012-965 012 Motorized dirt bikes for motocross A 06/24/2010 GOODS 09-2007 Select Record 012-1007 012 Motorized dirt bikes for motocross and dune buggies A 11/04/2010 GOODS 09-2007 Select Record 021-1655 021 Sports bottle belts for {specify sport or activity, e.g., running, hiking, biking, etc.} A 06/13/2013 GOODS Sports bottle belts are specially adapted for holding spor More ><https://idm-tmng.uspto.gov/id-master-list-public.html#show%20more%20content> 10-2013 Select Record 021-1652 021 Water bottle belts for {specify sport or activity, e.g., running, hiking, biking, etc.} A 05/30/2013 GOODS Water bottle belts are specially adapted for holding water More ><https://idm-tmng.uspto.gov/id-master-list-public.html#show%20more%20content> 10-2013 Select Record 028-1615 028 Equipment for skateboard parks for skateboarding, inline skating, and BMX freestyle biking, namely, {indicate goods in Class 28, e.g., ramps, rails, etc.} A 04/21/2011 GOODS 09-2007 Select Record 021-1654 021 Sports bottle belts for {specify sport or activity, e.g., running, hiking, biking, etc.} also featuring storage for other items A 06/13/2013 GOODS Sports bottle belts are specially adapted for holding spor More ><https://idm-tmng.uspto.gov/id-master-list-public.html#show%20more%20content> 10-2013 Displaying all of 11 records for bike -- Note that neither bicycles or motorcycles appear on that list, even though those were the two goods that dominated the discussion on yesterday’s call. This demonstrates that the technical trademark definition of goods and services associated with a given term may not accord with popular understanding of what a given gTLD signifies. Also note that providers of clothing and other specialized equipment associated with the activity aren’t covered, even though they could provide perfectly valid reasons for wanting to register a .bike domain in sunrise (as could makes of tires and other bike equipment). Also, of course, that is just the USPTO list of goods and services associated with “bike”, and other nations may provide quite different lists. So are we going to restrict a domain applicant to the list of the nation they are HQ’d in? Or do we add those in which they have secured a trademark? But what if they are also doing business in a jurisdiction where the gTLD term has a different legal association? And what about geo domains, like .paris? Should a rights holder only be able to get a sunrise registration if they have a facility there? But what if they have no physical facility but it is a significant market for them, and therefore the registration of their mark is deemed important to makes sure that the domain is not registered first by a bad actor? So all these questions will need to be addressed by some policy rules developed in an implementation process, and the result is bound to be subjective. And once those rules are established they must be applied, which means vetting each attempted sunrise registration to make sure it complies. Who will do that? Registrars can’t do it – the online registration process is highly automated and profit margins are already thin; this vetting can’t be automated because some human with legal/policy expertise will need to review each rationale for the registration and see if it passes muster. And what will that cost? If we let the registry decide, they will have an inherent bias in favor of letting the registration occur so they can collect a higher fee, so I don’t think that will satisfy you in terms of consistent application of the rule. So we would likely need to create some new Sunrise Registration Clearinghouse (perhaps within the TMCH, or separate from it) that will vet each proposed sunrise registration to determine if the mark is sufficiently associated with the goods and services related to the gTLD label, and if it is provide the mark holder with an approval token that can be used during the registration process. And what if the proposed registration is denied, but the mark holder really thinks it is important to get that domain before someone else does? Well then you need an appeals process, with some rules and some designated adjudicator. If we were to decide that this should be an enforceable restriction these are the kind of policy and technical issues that would need to be addressed. The alleged abuse can be targeted in more direct and less complex ways, while leaving it to mark holders to decide which if any of their marks are worth registering at a particular gTLD at the sunrise price. Finally, as to the impact on free speech, if BMW’s Mini division wants to register mini.bike that would still leave available for enthusiasts of mini-bikes such domains and minis.bike, minifans.bike, minidirt.bike, etc. Plenty of potential and appropriate .bike domains are still available as platforms for speech. Best, Philip Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org> On Behalf Of Michael Karanicolas Sent: Thursday, May 09, 2019 11:50 AM To: BECKHAM, Brian <brian.beckham@wipo.int> Cc: gnso-rpm-sunrise@icann.org Subject: [EXTERNAL] Re: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Interesting, thanks for sharing. I checked whether Mini made motorcycles before I sent my proposal in... I didn't think to check whether they made regular bicycles! By any chance, were you able to find any examples of the company branching into the tattoo business as well (http://mini.tattoo)? I'm not sure if this presents a "nuance" in trademark classes. I don't think it's much of a revelation that "bikes" can refer to motorcycles or regular bicycles. All this represents is a product line I was unaware of. And under my proposal, all Mini would have to do would be to include the link you provided when they register the domain under sunrise, and that should be that. Personally, I don't see how the SDRP challenge process could be retooled to turn it into something that adequately represents the interests of potential future registrants without injecting massive amounts of transparency into the sunrise and TMCH processes... but I would be interested to hear your thoughts as to how this might work. On Thu, May 9, 2019 at 12:38 PM BECKHAM, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Thanks Ariel, Copying here, my full email to the Sunrise List from earlier today as it relates to proposal No. 13: -- Thanks Julie, Just for fun (as I am aware the example was merely anecdotal), further to our hypothesizing last night, indeed, MINI does have a range of folding bikes: https://www.bmwblog.com/2018/02/28/new-mini-folding-bike/ This does however illustrate in some ways the nuance in trademark classes and TLD typology that may escape proposal No. 13 in its current form. As I mentioned on our call, I believe there is a shared willingness to address the issue Michael has raised, but via the SDRP challenge process, and not via claims exclusions. Brian -- Brian From: Gnso-rpm-sunrise <gnso-rpm-sunrise-bounces@icann.org<mailto:gnso-rpm-sunrise-bounces@icann.org>> On Behalf Of Ariel Liang Sent: Thursday, May 9, 2019 5:36 PM To: gnso-rpm-sunrise@icann.org<mailto:gnso-rpm-sunrise@icann.org> Subject: [Gnso-rpm-sunrise] [Discussion Thread] Sunrise Q9 Dear Sunrise Sub Team members, As announced, this thread is being opened for final mailing list discussions related to Sunrise Agreed Charter Question 9, including Proposal #13. We ask that you review the Summary Table (as of 16 April 2019) and provide any additional input you may have to the “proposed answers & preliminary recommendations” in relation to the Agreed Charter Question, and consider draft answers to the following questions regarding the individual proposal: a. Should the Sub Team recommend that the full WG consider including this Individual Proposal in the Initial Report for the solicitation of public comment? b. In light of the Individual Proposal, are any modifications to the current “tentative answers & preliminary recommendations” needed? c. Should any additional Sub Team recommendations be made in relation to the agreed Sunrise charter question? Unless the Sub Team Co-Chairs determine otherwise, this discussion thread will remain open until 23:59 UTC on 22 May 2019. Comments/input provided past the closing date or outside this discussion thread will not be taken into account when compiling the final Sub Team member input. Summary Table (Pages 36-40) The draft answers, preliminary recommendations, and links to the relevant individual proposals are in the latest Summary Table (as of 16 April 2019): https://community.icann.org/download/attachments/102138618/%5BSunrise%20Summ.... Agreed Sunrise Charter Question 9 (Page 36) The Sub Team just discussed Agreed Charter Question 9 on 08 May 2019, hence the proposed answers are “TBD”. Based on the Sub Team’s discussions, the transcript and notes, staff will provide update. Q9 In light of the evidence gathered above, should the scope of Sunrise Registrations be limited to the categories of goods and services for which? Proposed Answer: TBD Individual Proposal The Sub Team just discussed the Proposal #13 on 08 May 2019, hence there is no draft answer currently on the Summary Table (as of 16 April 2019). Based on the Sub Team’s discussions, the transcript and notes, staff will provide. Link to the individual proposal is included below. Proposal #13: https://community.icann.org/download/attachments/102146375/Proposal%2313.pdf... Where to Find All Discussion Threads Access the Documents wiki page and find the opening messages of the all discussion threads in the table (highlighted in green): https://community.icann.org/x/_oIWBg Best Regards, Mary, Julie, Ariel World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using. _______________________________________________ Gnso-rpm-sunrise mailing list Gnso-rpm-sunrise@icann.org<mailto:Gnso-rpm-sunrise@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-sunrise