Thank you Georges, A few comments I believe relevant to yours are placed below in line with your comments. PRK On 4/21/17, 1:27 PM, "Nahitchevansky, Georges" <ghn@kilpatricktownsend.com> wrote:
Paul:
The underlying problem I see with your approach is that it presumes that brand owners are somehow monopolizing words across all possible extensions. That is simply not the case and there has been little to no evidence to support this notion. In that regard, it should also be noted that what limited evidence has been provided that involved a bona fide brand owner only showed that a brand owner registered a domain name in some extensions (typically in those that relate to the business under the brand), but left many other extensions open.
PRK: First, I would like to see the evidence you reference and apologize if I have missed it in a prior setting. Here we are also making large-scale assumptions about what is and is not contained in the TMCH database. I find this amusing given the forceful arguments by the IP side against transparency of the database itself. In other words, you are making claims as to what is “typically” in the database and “how” the database has been used while at the same time resisting efforts to confirm your statements as being correct. Seems to me one should not have it both ways.
This means there are vast numbers of extensions where domains do not get registered. So it is hard to see how free speech is somehow impacted, when many extensions remain and where variants are clearly available.
PRK: The existence of alternative venues of speech does not eliminate the restriction upon the speech It is rather a factor in the balancing test to determine if the restriction on speech is reasonable.
As an aside, I note that if free speech is really the concern here then, if anything, premium pricing is more of an impediment to free speech as it skews the marketplace by favoring those with more money to spend.
PRK: As long as everyone is being charged the same price regardless of who they are and as long as the domain is available to the 1st person who will pay the amount, I see no problem at all. What I am questioning is the proscriptive rights being granted to trademark holders to register domain names.
In addition, your approach also ignores that there are many brands that consist of arbitrary or coined terms that would not necessarily implicate any so called free speech concerns .
PRK: I have no issue with offering protections to marks that are coined phrases because prior to the creation off the trademark the term did not exist. Such a rule could easily be included within the programming by comparison of the proposed mark to all known languages and restricting any sunrise to an exact match. Indeed I would go further to say that I might not have issues with a permanent reservation for such terms in favor of the trademark registrant for the duration of the trademark registration. Of course, this may lead to issues regarding numerics or Letter domain strings (N, NN, NNN, and NNNN) - the vast majority of which would not a appear in any dictionary. Such marks should be excluded from the benefits of the TMCH.
But more importantly, what I think is being ignored here is the balance of costs. As you note, a UDRP can cost $5,000 or more. It does not take much to figure out that the cost to brand owners, who have real and quantifiable amounts of brand abuse history in the domain name system, will be staggering in a world of 1500 extensions. A simple math calculation shows that the overall costs to brand owners (and ultimately consumers) could be in the hundreds of millions.
PRK: I am not sure where you are getting your numbers. I have seen emails claiming that only 130 sunrise registrations have occurred on average per extension. That by no means runs into the millions. And, I fail to see how the cost is necessarily something that should continue to be borne by third parties and not the owner of the trademark who benefits economically from the monopolistic right inherent in the trademark. How is the domain issue any different from counterfeiting or other infringements in which the mark holder must bear the burden. Here the benefit is that there is a simplified system of curative rights such that the trademark holder is not required to deal with formal litigation and nasty issues such as jurisdiction and applicable laws. Lets not forget that this benefit has already been granted and not use it as an excuse for further proscriptive rights.
In comparison, the loss to claimed free speech is fairly small, as there is no evidence of any overarching land grab of common word domains by brand owners, there is no evidence that free speech has been impacted or curtailed in any meaningful way by the existing system, and there are obvious ways (some of which have been proposed) to deal with the small amounts of gaming that have occurred primarily by speculators. So simply looking at this fom a balanving perspective, I think that maintaining the system as is with small tweeks is a better approach.
PRK: I frankly have no idea one way or the other. I started off by asking for transparency in the TMCH so we could put this issue to rest once and for all instead of guessing. You do not appear willing to support transparency but do seem eager to claim an overall lack of abuse. I am trying to look at this from a balanced perspective. However, to really do so we need to eliminate all of these assumptions and look to the actual evidence instead of claiming no abuse exists while at the same time objecting to attempts to investigate. Respectfully, Paul Keating
Original Message From: Paul Keating Sent: Friday, April 21, 2017 6:39 AM To: Michael Graham (ELCA); icannlists; Beckham, Brian Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period
Brian,
I. Free Speech.
I completely disagree with your statement that:
"When a trademark owner pays a premium to defensively register a domain name exactly matching its trademark in a Sunrise process this does not prevent free expression; it does however protect consumers by preventing potential misrepresentation under that particular string.²
Your position imposes a qualitative aspect to speech and presumes that because you see other avenues available that must mean that speech is not impinged. It also ignores that the protection extends to not only w hat is said but HOW it is said.
The correct analysis is the following:
1. Is speech curtailed in any manner 2. If yes then assess A, The reason for the restriction; B,. The identity of WHO is regulating the speech; and, C. The availability of lesser intrusive means of achieving the reason (goal) while minimizing restrictions of speech.
Restricting speech for commercial reasons is subject to a very high standard. I see no basis, for example, to application of the private property/shopping center type cases.
Speech comes in all flavors and one must not qualitatively influence the analysis simply because you agree or disagree with what is being said and HOW it is being said.
II. Balancing the costs.
Also, the removal is not limited to ONE domain. It is extended to all sunrise extensions so at last could could involve over 1,500 instances.
There is good reason to explore alternatives that focus on curative rights and not right by prescription. For example,
Retain the UDRP approach Inclusion of the mark within the TMCH is conclusive evidence as to the 1st Element The notification process would eliminate the issue of knowledge The cost of a UDRP complaint is less than $5,000, including attorney time and the 3-member panel fees; The vast majority of all UDRPs are defaults
III. Less Intrusive Methods.
Further, I would like to see the impact of the TMCH notice process in terms of the number of notices sent and the number of domain registrations subsequently gently abandoned following notice. If a significant abandonment rate exists it would show a lesser intrusive means of accomplishing the result instead of simply awarding a monopoly on domain names to trademark holders.
Regards,
Paul
On 4/21/17, 9:56 AM, "Michael Graham (ELCA)" <gnso-rpm-wg-bounces@icann.org on behalf of migraham@expedia.com> wrote:
+1
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Thursday, April 20, 2017 4:46 AM To: Beckham, Brian <brian.beckham@wipo.int> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period
Agree Brian and J Scott!
Sent from my iPhone
On Apr 20, 2017, at 5:40 AM, Beckham, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote:
To add support to J Scott's comment:
When a trademark owner pays a premium to defensively register a domain name exactly matching its trademark in a Sunrise process this does not prevent free expression; it does however protect consumers by preventing potential misrepresentation under that particular string.
In weighing the respective costs and benefits, it is difficult to see how the current system whereby one domain name is removed from circulation to prevent consumer harm / trademark abuse should be eliminated because it may prevent speech from that one particular outlet in a universe of virtually countless other available outlets.
In any event, Jeremy, this group would no doubt find any examples you may be aware of, of actual speech chilling (particularly speech that could not be undertaken elsewhere) because of a Sunrise registration, quite useful.
Finally, the claimed "cost savings" formula below is far too simplistic; the harm that can occur e.g., through one domain name-occasioned phishing campaign alone (in the time it takes to apply the cure) could upend that entire equation many times over.
Brian
From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of J. Scott Evans via gnso-rpm-wg Sent: Thursday, April 20, 2017 1:51 AM To: Paul Tattersfield Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period
We keep hearing all these outlandish claims of the poor folks cheated out of an opportunity to express themselves or start a new business, but no real proof. I hear all the same arguments I have heard since 2009 and from the same groups with no proof. I also see no new voices claiming any of this alleged harm. What I see is a group of stakeholders with an anti-IP agenda making the same old arguments hoping to trim back consensus solutions where compromises based on these arguments have already been made.
J. Scott
Sent from my iPhone
On Apr 19, 2017, at 4:33 PM, Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> wrote: I'm not sure I agree. The Claims Notices are likely to have a far bigger impact on people not registering domains especially those who are not professional registrants and have not seen a claims notice before.
No Claims Notices should be issued without a substantive review of the underlying goods and services.
The idea that anyone can buy a piece of paper without any real goods or services to protect and can then use that piece of paper to discourage others from building real world businesses simply because some jurisdictions give out those pieces of paper out like confetti under the pretext of ideas they 'might want to do in the future' should be deeply frowned upon by anyone participating in ICANN. Paul
On Wed, Apr 19, 2017 at 7:56 PM, Jeremy Malcolm <jmalcolm@eff.org<mailto:jmalcolm@eff.org>> wrote:
Open questions 7 and 8 illustrate how the protections provided to trademark holders through the TMCH have been applied too broadly by the provider, opening the door for gaming and abuse by trademark holders, and chilling of speech by affected third parties. This proposal also bears on question 16 (Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?).
It has been seen that the TMCH has facilitated trademark owners claiming exclusive rights in domain names that they don't exist in domestic trademark law, such as words incorporated into design marks. Open question 10, rather than addressing the potential for abuse, actually suggests a measure that would allow even more non-trademarked terms to be locked up by priority claimants.
As a measure to address these problems, we propose eliminating the TMCH's Sunrise Registration service altogether. Although we also have concerns about its Trademark Claims service and will likely propose its elimination separately at a later date, the Sunrise Registration service is the most urgent to eliminate, because it creates an absolute bar to third parties registering domains that a Sunrise registrant has already claimed, whereas the Trademark Claims service results in a warning to third parties but does not absolutely preclude them from registering.
We believe that the elimination of Sunrise Registrations would be the simplest way to address the problems of gaming and abuse that have been observed by working group members, not only in respect of design marks and geographical words, but also the misuse of dubious trademarks over common dictionary words such as "the", "hotel", "luxury", "smart", "one", "love", and "flower" to lock up domains unrelated to the original trademark.
If the Sunrise Registration system were widely used by trademark holders, then it might be claimed that its elimination was disproportionate-but as we have seen, this is not the case. There have been only about 130 Sunrise Registrations per new domain. Such a small number of claims could be more simply and efficiently handled simply by allowing those claimants to resort to curative mechanisms such as the UDRP in the event that a third-party registrant beats them to registering a domain over which they might have made a claim.
The benefits of the elimination of Sunrise Registrations would be:
* An overall cost saving.
* Streamlining of the public availability of domains in new registries.
* Elimination of the potential for gaming and abuse by putative trademark holders who claim rights over domain names that do not correspond to their domestic trademark rights.
The costs would be:
* Some trademark holders would be required to resort to curative proceedings if domain names over which they have a legitimate claim are registered by third parties.
--
Jeremy Malcolm
Senior Global Policy Analyst
Electronic Frontier Foundation
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