Dear Working Group Members,

Below is the proposed agenda for this week’s WG call:

1. Roll call/Updates to Statements of Interest
2. Review suggestions and feedback from ICANN59 open community session, on refined questions and data collection for Sunrise and Claims
3. Confirm if further work is required from Sunrise and/or Claims Sub Teams
4. Next steps/next meeting

Regarding agenda item #2, please find the notes captured by staff below. These high-level notes are designed to help PDP WG members navigate through the content of the call and are not meant as a substitute for the transcript and/or recording. The MP3, transcript, and chat are provided separately and are posted on the wiki here: https://community.icann.org/x/qwffAw

To best prepare for the call, please review the documents, recordings and transcripts found on the wiki page linked to above, particularly for the last 45 minutes of the face-to-face meeting, in which a discussion took place on how to address the refined Charter questions, and how to consider the data required to answer them.

Thanks.

Amr

Discussion on Sunrise Registrations Charter Questions:

• Preamble:
  • Sunrise registrations for trademarks registered in the TMCH in scripts other than Latin are non-existent (examples: Arabic and Cyrillic)
  • How are trademarks in languages such as French, German and Spanish, that use accents being registered and protected in the TMCH?
  • ACTION ITEM: Suggestion to add bullet in preamble: Have abuses of the sunrise period been documented by registries and registrars?
  • Should trademarks registered in the TMCH only be allowed access to Sunrise registrations in the context of the sector in which they have relevance?
  • Data collection relevant to the preamble might be found in relation to other questions – missing data that is required should be identified by WG members
  • ACTION ITEM: Suggestion from AC chat: For consistency between the Sunrise Sub Team document and TM Claims Sub Team documents, perhaps ICANN staff could propose/highlight requisite standardization in use of terms such as 'registrants' vs 'applicants'
• Question 2:
  • On the question of whether registry pricing is within the scope of the RPMs review or ICANN, suggestion to refer this to the GNSO Council (then possibly to ICANN Legal), and not have the WG pursue further – question likely to prompt different and conflicting responses, and potentially consume time and effort without resolution
  • WG may choose to note that pricing of Sunrise Registrations has had an impact on the ability of brand owners to take advantage of it as an RPM
  • A change in pricing of Sunrise Registrations is not a change in the actual RPM – might be a more appropriate question for the Subsequent Procedures PDP
  • Is limiting the prices of registry services within ICANN’s remit (within the picket fence)?
  • Question of pricing of Sunrise Registrations acting as a deterrent will not be useful on its own, but requires qualification (examples: was the pricing justified, was it abusive)
  • Question might be useful in that an answer may determine that a trademark owner should have an opportunity to challenge a premium name designation
• Question 3:
  • There needs be a standard against which this question should be answered
  • Important to not mix considerations for premium names, and those for reserved names – reserve names have local implications, including applicable laws, which may affect registry operators
  • Question may need to address both premium names and reserve names, but do so separately, and against agreed upon standards
  • Remote suggestion for question: Should we also be asking whether the list of trademarks in the TMCH are being used in an abusive way to create premium name lists in some registries?
  • Remote suggestion for question: Is differential pricing between sunrise and open registrations impacting registrations?
• Question 4:
  • Registry operators do notify trademark holders when a reserved name corresponding to a TMCH registration is released – is a common practice
  • Open and unrestricted TLDs need to be considered separately from geo or community TLDs
  • Some reserved names under geo TLDs are meant to support the public interest (examples: police, firefighters, metro, etc…)
  • Question should be rephrased to ask whether reserved or premium names unfairly limit participation in Sunrise, not effectively limit them
• Question 5:
  • Question should ask about a 60-day Sunrise period, as that is the common practice – not 30 days
• Question 8:
  • Question should be rephrased to not require a “yes” or “no” answer, or add “what aspects of the programs need to be reviewed?”
• Question 9:
  • ACTION ITEM: Question to be reworded to provide more clarity on its purpose
  • Suggested rewording: Should the scope of Sunrise Registrations be limited to the categories of goods and services for which the trademark is actually registered and put in the Clearinghouse?
• Question 12:
  • Question might ask whether Sunrise should have priority over other registrations under specialized TLDs, not whether Sunrise should be mandatory
  • Question should not prompt a “yes” or “no” answer, but should be more nuanced – should some registries have slightly different rules concerning how Sunrise works?
  • A lack of ability to transliterate local trademarks in the TMCH required that some geo TLDs invented special Sunrise/special limited periods for local trademark holders
  • For small businesses, the price of registration in the TMCH acted as a deterrent of use, and also in some cases, required special protection
• Definitions (Premium Pricing)
  • ACTION ITEM: Standard pricing at general availability should be defined by the WG, possibly as a baseline to compare Premium Pricing to
  • Might also be worthwhile for the WG to distinguish between Premium Pricing at registration, and prices of renewal of registration, which may be different
  • Question - the definition for Premium Pricing seems slightly oddly worded - it is still defined as "second level domain names that ..." Shouldn't it more simply be "Higher prices charged for premium names"?

Discussion on Trademark Claims Charter Questions:

• Trademark Claims Notices consist of a notice to potential registrants (domain name applicants) who attempt to register an exact match to a TMCH entry during the Claims period, as well as a notice to the trademark holders once a registration of an exact match to a TMCH entry has been completed
• Data gathering might include the text/content of the notice sent to trademark holders
• Question 1:
  • There has been special interest in abandonment of domain name registrations as a result of a display of a Claims Notice
  • Important questions identified include the intent of a domain name applicant (whether there really is an intent to register a domain name), what process is involved, and at what stage in the registration process a registration is abandoned - what steps in the process are they facing and where are they dropping (before or after display of a Claims Notice)?
  • Have the AG considered other scenarios, such as software defects that may present as Claims Notices being triggered, and claims harvesting, where intent is only to get the Claims Notice, and not actually register the domain name?
  • Deterrent to registration during the Claims Notice period might also be attributable to registrars and resellers not participating in registration under gTLDs with running Claims Notification periods – registrar abandonment, as opposed to registrant abandonment
  • On last bullet in the data gathering column, the data should include number of domains that did not result in UDRP/URS cases relative to the total number of domains registered under any gTLD
  • UDRP and URS are not the only method of dealing with registered domain names that infringe on trademarks – this should be taken into consideration
  • Abandonment needs to be contextualized – there may be other reasons why domains are abandoned, which may be unrelated to a Trademarke Claims Notice
• Charter questions 2 and beyond might be more useful if divided into two; one question asking about the notices sent to registrants, and another question about notices sent to trademark holders – these might have different considerations, and might result in different answers
• Question 3:
  • Suggestion from AC chat: We could survey brand owners and/or registrants regarding cease and desist letters sent/received.  Getting the entire universe of C&D letters would be hard, since there is no central repository and so many potential sources.
• Question 4:
  • Considerations need to be made on the potential volume of Claims Notices being generated by non-exact matches, and what that volume will mean to registrars and trademark holders from a business workload perspective
  • Will non-exact matches that generate Claims Notices create additional costs (financial and technical)? Who will bear those costs? Will they be shifted to those involved in the domain name registration process?
  • Does generation of Claims Notices in response to non-exact matches create a new right for trademarks?
  • Suggested additional question by remote participant: Should the proof of use requirements for sunrise names be extended to all TMCH name, i.e. for the issuance of TMCH notices? The reason being, some jurisdictions allow trademarks for which there are no underlying goods and services to protect?
  • Suggestion from the AC Chat: Have a sub group look at “claims clarifications about semantics & historical data & spam rate and near 100% potential rate of claims”
• Should Claims Notifications only be sent to registrants who complete domain name registrations, as opposed to those who are attempting to register domain names that are matches to entries in the TMCH?