Proposal for the elimination of Sunrise Period
* 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 https://eff.org jmalcolm@eff.org Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122
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> 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 Foundationhttps://eff.orgjmalcolm@eff.org
Tel: 415.436.9333 ext 161 <(415)%20436-9333>
:: Defending Your Rights in the Digital World ::
Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122
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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 https://eff.org<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004172724&sdata=LCpvg6fU%2FXkpw1fmAH8KzPJDWABttoqafNYeotxdCiQ%3D&reserved=0> jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161<tel:(415)%20436-9333> :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004172724&sdata=L5mf1H52yrjTzEUH1k0ZD7QleNH6oCdZhT3B7%2FDCW1Y%3D&reserved=0> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004182733&sdata=fZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8%3D&reserved=0> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
Agree new gTLDs have the potential to be a nightmare for rights holders and that’s why I believe there should be a Sunrise and Claims Notices (And as in without an either/or loophole) but we need to differentiate between people waving a piece of paper and people actually having real goods and services capable of being infringed. This should be a very simple matter for most rights holders and something very easy to implement, it would actually benefit rights holders because it would help remove any speculators looking to game the RPMs. Paul On Thu, Apr 20, 2017 at 12:51 AM, J. Scott Evans <jsevans@adobe.com> wrote:
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> 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> 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 Foundationhttps://eff.org <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004172724&sdata=LCpvg6fU%2FXkpw1fmAH8KzPJDWABttoqafNYeotxdCiQ%3D&reserved=0>jmalcolm@eff.org
Tel: 415.436.9333 ext 161 <(415)%20436-9333>
:: Defending Your Rights in the Digital World ::
Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org...> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122
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Agreed. However, short of creating a quasi-administrative review process within the TMCH, the Registration requirement appears the appropriate requirement for registration and coverage in the Claims Service, and Proof of Use appropriate for Sunrise. Michael R. Graham From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Tattersfield Sent: Wednesday, April 19, 2017 5:12 PM To: J. Scott Evans <jsevans@adobe.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period Agree new gTLDs have the potential to be a nightmare for rights holders and that’s why I believe there should be a Sunrise and Claims Notices (And as in without an either/or loophole) but we need to differentiate between people waving a piece of paper and people actually having real goods and services capable of being infringed. This should be a very simple matter for most rights holders and something very easy to implement, it would actually benefit rights holders because it would help remove any speculators looking to game the RPMs. Paul On Thu, Apr 20, 2017 at 12:51 AM, J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> wrote: 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 https://eff.org<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004172724&sdata=LCpvg6fU%2FXkpw1fmAH8KzPJDWABttoqafNYeotxdCiQ%3D&reserved=0> jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161<tel:(415)%20436-9333> :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004172724&sdata=L5mf1H52yrjTzEUH1k0ZD7QleNH6oCdZhT3B7%2FDCW1Y%3D&reserved=0> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004182733&sdata=fZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8%3D&reserved=0> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
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] 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 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 https://eff.org<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004172724&sdata=LCpvg6fU%2FXkpw1fmAH8KzPJDWABttoqafNYeotxdCiQ%3D&reserved=0> jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161<tel:(415)%20436-9333> :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004172724&sdata=L5mf1H52yrjTzEUH1k0ZD7QleNH6oCdZhT3B7%2FDCW1Y%3D&reserved=0> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004182733&sdata=fZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8%3D&reserved=0> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... World IP Day 2017 – Join the conversation Web: www.wipo.int/ipday Facebook: www.facebook.com/worldipday 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.
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 https://eff.org<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004172724&sdata=LCpvg6fU%2FXkpw1fmAH8KzPJDWABttoqafNYeotxdCiQ%3D&reserved=0> jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161<tel:(415)%20436-9333> :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004172724&sdata=L5mf1H52yrjTzEUH1k0ZD7QleNH6oCdZhT3B7%2FDCW1Y%3D&reserved=0> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004182733&sdata=fZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8%3D&reserved=0> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... World IP Day 2017 – Join the conversation Web: www.wipo.int/ipday<http://www.wipo.int/ipday> Facebook: www.facebook.com/worldipday<http://www.facebook.com/worldipday> 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-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations.
+Brian Héctor Ariel Manoff Vitale, Manoff & Feilbogen Viamonte 1145 10º Piso C1053ABW Buenos Aires República Argentina Te: (54-11) 4371-6100 Fax: (54-11) 4371-6365 E-mail: amanoff@vmf.com.ar Web: http://www.vmf.com.ar -----Mensaje original----- De: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] En nombre de icannlists Enviado el: jueves, 20 de abril de 2017 8:46 Para: Beckham, Brian CC: gnso-rpm-wg@icann.org Asunto: 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 Scotts 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: Im 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 dont 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 TMCHs 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 disproportionatebut 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 https://eff.org<https://na01.safelinks.protection.outlook.com/?url=https%3A% 2F%2Feff.org&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b5a7b 34438794aed2c178decee1%7C0%7C0%7C636282416004172724&sdata=LCpvg6fU%2FXkpw1fm AH8KzPJDWABttoqafNYeotxdCiQ%3D&reserved=0> jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161<tel:(415)%20436-9333> :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://na01.safelinks .protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F11%2 F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7C fa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004172724&sdata=L5mf1H52 yrjTzEUH1k0ZD7QleNH6oCdZhT3B7%2FDCW1Y%3D&reserved=0> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.pro tection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fg nso-rpm-wg&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b5a7b34 438794aed2c178decee1%7C0%7C0%7C636282416004182733&sdata=fZ88VMsRjujGitQovRkG fOctUusd1sufOBNGSw97Kn8%3D&reserved=0> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or g%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C0e18d5b07aea47943d440 8d4877c75c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004182733& sdata=fZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8%3D&reserved=0 World IP Day 2017 Join the conversation Web: www.wipo.int/ipday<http://www.wipo.int/ipday> Facebook: www.facebook.com/worldipday<http://www.facebook.com/worldipday> 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-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
+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 https://eff.org<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Feff.org&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004172724&sdata=LCpvg6fU%2FXkpw1fmAH8KzPJDWABttoqafNYeotxdCiQ%3D&reserved=0> jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161<tel:(415)%20436-9333> :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004172724&sdata=L5mf1H52yrjTzEUH1k0ZD7QleNH6oCdZhT3B7%2FDCW1Y%3D&reserved=0> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004182733&sdata=fZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8%3D&reserved=0> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... 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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
https://eff.org<https://na01.safelinks.protection.outlook.com/?url=https%3 A%2F%2Feff.org&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b 5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004172724&sdata=LCpvg6fU%2FX kpw1fmAH8KzPJDWABttoqafNYeotxdCiQ%3D&reserved=0>
jmalcolm@eff.org<mailto:jmalcolm@eff.org>
Tel: 415.436.9333 ext 161<tel:(415)%20436-9333>
:: Defending Your Rights in the Digital World ::
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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-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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. 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. 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. 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 . 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. 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. 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
https://eff.org<https://na01.safelinks.protection.outlook.com/?url=https%3 A%2F%2Feff.org&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b 5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004172724&sdata=LCpvg6fU%2FX kpw1fmAH8KzPJDWABttoqafNYeotxdCiQ%3D&reserved=0>
jmalcolm@eff.org<mailto:jmalcolm@eff.org>
Tel: 415.436.9333 ext 161<tel:(415)%20436-9333>
:: Defending Your Rights in the Digital World ::
Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://na01.safelin ks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F 11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c7 5c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004172724&sdata= L5mf1H52yrjTzEUH1k0ZD7QleNH6oCdZhT3B7%2FDCW1Y%3D&reserved=0>
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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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Hi Everyone: I am sympathetic with Greg’s comment that this discussion is premature. However, I could not help but think this through. This analysis is based more on practicalities and registry life-cycle rather than data (which has proven to be unavailable) or anecdote. Many of these points could stand additional elaboration but this note is long enough. Recommendation: 1. Sunrise periods should be voluntary for registry operators 2. Trademarks Claims should be mandatory and perpetual (with a caveat described below as to whether they are perpetual or time limited) Background: 1. The STI recommended that registries conduct a Sunrise or a Trademark Claims period. This approach was most likely based on: past practice leading up to the gTLD round where new registries always conducted one or the other; and affording new registries some freedom in selecting how they wanted to protect marks owners. 2. In practice, it is difficult to force registries to have a Sunrise period. Registries can just price Sunrise registrations in a way that effectively obviates the offering. There were no price controls in this (2012) round or the previous (2003-04) round and for very good reasons. 3. With a wave of its imperial wand, the GAC converted the “or” (as in Sunrise or Trademark Claims) to an “and,” ignoring past practice and the market realities stated above. 4. The STI also recommended that Trademark Claims last a period shorter than the current 90-days (60 days?), a period that was intended to coincide with the then-traditional landrush periods that preceded GA. This was because it was thought that domain investors who might infringe were more likely to obtain trademarked names in the land rush period. Also, by limiting the Claims period to land rush, registrars could participate in the start of General Availability without having to absorb the costs of implementing the Claims process. 5. Again, the GAC arbitrarily increased the Claims period to 90 days, effectively forcing registrars to bear the expense of administering claims or missing the first month or more of GA. 6. As the market has evolved, land rush periods have largely been abandoned and replaced with Early Access Periods that are part of General Availability so any registrar wanting to sell domains from the start of GA has to accommodate Claims. 7. There was no real pushback to the GAC interventions even though there were valid cases to be made. By that time new gTLD proponent were too weary, had waited too long, and were too extended by delays to consider extending the public debate. The GAC recommendations were accepted with little comment. Summary: the Sunrise period was originally designed to be voluntary and it still is, in effect, voluntary – if registries price Sunrise registrations very high. The Claims period is of arbitrary length, there is no available data pointing to a 90-day or any other period. Rationale: Making the Sunrise period voluntary and extending the Claims period to perpetuity will: 1. Does not change the “in-fact” status of Sunrise as voluntary but does avoid the reputation impact to the program when registries prohibitively price Sunrise registrations. 2. Will not likely impact the number of registries that conduct a Sunrise period. Registries conducted Sunrise periods in the past, they remain a revenue generating opportunity today, and most registries do seek a reputation for protecting IP rights. 3. If a registry wants to operate a Sunrise period, there is no justifiable way to bar that. 4. A Claims notice in perpetuity will accustom registrants to seeing the notice and promoting an understanding of its effect. Since a notice will not accompany every registration, it will still have meaning, but will not be such a surprise that it would be likely to deter an otherwise legitimate registration. 5. There is no real rationale for a Claims notice being of value on day x and not of value on day x=1. New entrants are entering the domain name industry each day and the value of Claims notices might even increase as the market evolves. 6. Registrars that have held off to date, would be obligated to find a way to implement Claims and all registrars will be able to participate from the opening of GA. The one caveat is that last point and it has to do with a comment Jon Nevett made to another RPM list. I don’t understand the burden to registrars of implementing Claims notifications. (Remember, the IRT originally avoided this issue by limiting the length of the Claim period.) If it is demonstrated that implementing Claims is likely to put smaller registrars out of business or at a significant cost disadvantage, than I would reduce the recommended Claims period from perpetuity, back to 90 days. Thx & regards, Kurt ________________ Kurt Pritz kurt@kjpritz.com +1.310.400.4184 Skype: kjpritz
On Apr 21, 2017, at 11:38 AM, Paul Keating <Paul@law.es> wrote:
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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Nicely done sir. Thoughts to ponder. Sent from my iPhone On Apr 22, 2017, at 5:26 AM, Kurt Pritz <kurt@kjpritz.com<mailto:kurt@kjpritz.com>> wrote: Hi Everyone: I am sympathetic with Greg’s comment that this discussion is premature. However, I could not help but think this through. This analysis is based more on practicalities and registry life-cycle rather than data (which has proven to be unavailable) or anecdote. Many of these points could stand additional elaboration but this note is long enough. Recommendation: 1. Sunrise periods should be voluntary for registry operators 2. Trademarks Claims should be mandatory and perpetual (with a caveat described below as to whether they are perpetual or time limited) Background: 1. The STI recommended that registries conduct a Sunrise or a Trademark Claims period. This approach was most likely based on: past practice leading up to the gTLD round where new registries always conducted one or the other; and affording new registries some freedom in selecting how they wanted to protect marks owners. 2. In practice, it is difficult to force registries to have a Sunrise period. Registries can just price Sunrise registrations in a way that effectively obviates the offering. There were no price controls in this (2012) round or the previous (2003-04) round and for very good reasons. 3. With a wave of its imperial wand, the GAC converted the “or” (as in Sunrise or Trademark Claims) to an “and,” ignoring past practice and the market realities stated above. 4. The STI also recommended that Trademark Claims last a period shorter than the current 90-days (60 days?), a period that was intended to coincide with the then-traditional landrush periods that preceded GA. This was because it was thought that domain investors who might infringe were more likely to obtain trademarked names in the land rush period. Also, by limiting the Claims period to land rush, registrars could participate in the start of General Availability without having to absorb the costs of implementing the Claims process. 5. Again, the GAC arbitrarily increased the Claims period to 90 days, effectively forcing registrars to bear the expense of administering claims or missing the first month or more of GA. 6. As the market has evolved, land rush periods have largely been abandoned and replaced with Early Access Periods that are part of General Availability so any registrar wanting to sell domains from the start of GA has to accommodate Claims. 7. There was no real pushback to the GAC interventions even though there were valid cases to be made. By that time new gTLD proponent were too weary, had waited too long, and were too extended by delays to consider extending the public debate. The GAC recommendations were accepted with little comment. Summary: the Sunrise period was originally designed to be voluntary and it still is, in effect, voluntary – if registries price Sunrise registrations very high. The Claims period is of arbitrary length, there is no available data pointing to a 90-day or any other period. Rationale: Making the Sunrise period voluntary and extending the Claims period to perpetuity will: 1. Does not change the “in-fact” status of Sunrise as voluntary but does avoid the reputation impact to the program when registries prohibitively price Sunrise registrations. 2. Will not likely impact the number of registries that conduct a Sunrise period. Registries conducted Sunrise periods in the past, they remain a revenue generating opportunity today, and most registries do seek a reputation for protecting IP rights. 3. If a registry wants to operate a Sunrise period, there is no justifiable way to bar that. 4. A Claims notice in perpetuity will accustom registrants to seeing the notice and promoting an understanding of its effect. Since a notice will not accompany every registration, it will still have meaning, but will not be such a surprise that it would be likely to deter an otherwise legitimate registration. 5. There is no real rationale for a Claims notice being of value on day x and not of value on day x=1. New entrants are entering the domain name industry each day and the value of Claims notices might even increase as the market evolves. 6. Registrars that have held off to date, would be obligated to find a way to implement Claims and all registrars will be able to participate from the opening of GA. The one caveat is that last point and it has to do with a comment Jon Nevett made to another RPM list. I don’t understand the burden to registrars of implementing Claims notifications. (Remember, the IRT originally avoided this issue by limiting the length of the Claim period.) If it is demonstrated that implementing Claims is likely to put smaller registrars out of business or at a significant cost disadvantage, than I would reduce the recommended Claims period from perpetuity, back to 90 days. Thx & regards, Kurt ________________ Kurt Pritz kurt@kjpritz.com<mailto:kurt@kjpritz.com> +1.310.400.4184 Skype: kjpritz On Apr 21, 2017, at 11:38 AM, Paul Keating <Paul@law.es<mailto:Paul@law.es>> wrote: 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<mailto:gnso-rpm-wg-bounces@icann.org> on behalf of migraham@expedia.com<mailto:migraham@expedia.com>> wrote: +1 -----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto: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<mailto:brian.beckham@wipo.int>> Cc: gnso-rpm-wg@icann.org<mailto: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><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> [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><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><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><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 https://eff.org<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Feff.org&data=02%7C01%7C%7Cae7c66d2e612431fe68e08d4897ac112%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636284607701737015&sdata=W3pUFsSOeDInQBg4OB7j4rBhEmxBluLZbxvpiDohZBM%3D&reserved=0><https://na01.safelinks.protection.outlook.com/?url=https%3 A%2F%2Feff.org<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2F2Feff.org&data=02%7C01%7C%7Cae7c66d2e612431fe68e08d4897ac112%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636284607701737015&sdata=xxm%2BCqQEvpFfAsI0OT%2FzghWYfNrviK1ALMxzp0AmAmA%3D&reserved=0>&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b 5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004172724&sdata=LCpvg6fU%2FX kpw1fmAH8KzPJDWABttoqafNYeotxdCiQ%3D&reserved=0> jmalcolm@eff.org<mailto:jmalcolm@eff.org><mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161<tel:(415)%20436-9333> :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7Cae7c66d2e612431fe68e08d4897ac112%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636284607701737015&sdata=%2FBtlw1O9qi2kX%2BlRJa6f8HaYVKTVf8bIMkYPdEJyKcQ%3D&reserved=0><https://na01.safelin ks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fks.protectio...> 11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c7 5c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004172724&sdata= L5mf1H52yrjTzEUH1k0ZD7QleNH6oCdZhT3B7%2FDCW1Y%3D&reserved=0> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<http://mm.icann.org/mailman/listinfo/gnso-rpm-wg><https://na01.safelinks.p rotection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo<http://rotection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flis...> %2Fgnso-rpm-wg&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b 5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004182733&sdata=fZ88VMsRjujG itQovRkGfOctUusd1sufOBNGSw97Kn8%3D&reserved=0> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann. org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C0e18d5b07aea47943 d4408d4877c75c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C6362824160041 82733&sdata=fZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8%3D&reserved=0 World IP Day 2017 - Join the conversation Web: www.wipo.int/ipday<http://www.wipo.int/ipday><http://www.wipo.int/ipday> Facebook: www.facebook.com/worldipday<http://www.facebook.com/worldipday><http://www.facebook.com/worldipday> World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. 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Kurt, Well thought out. What about removing Sunrise and making notice in perpetuity including changes in registrant? That serves the legitimate function of providing actual notice of a prior trademark registration. Obviously the notification should state the goods/services of the trademark holder and provide identification information so the registrant really know who the holder of the mark is and the nature of use. This removes gamesmanship on all sides issues of knowledge regarding legitimate interest and good faith. the speech issue completely What is required IMHO is A more complete and factual understanding of what is in the TMCH. A more complete understanding of actual use of marks in the TMCH Sent from my iPad
On 22 Apr 2017, at 14:31, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:
Nicely done sir. Thoughts to ponder.
Sent from my iPhone
On Apr 22, 2017, at 5:26 AM, Kurt Pritz <kurt@kjpritz.com> wrote:
Hi Everyone:
I am sympathetic with Greg’s comment that this discussion is premature. However, I could not help but think this through. This analysis is based more on practicalities and registry life-cycle rather than data (which has proven to be unavailable) or anecdote. Many of these points could stand additional elaboration but this note is long enough.
Recommendation:
1. Sunrise periods should be voluntary for registry operators
2. Trademarks Claims should be mandatory and perpetual (with a caveat described below as to whether they are perpetual or time limited)
Background:
1. The STI recommended that registries conduct a Sunrise or a Trademark Claims period. This approach was most likely based on: past practice leading up to the gTLD round where new registries always conducted one or the other; and affording new registries some freedom in selecting how they wanted to protect marks owners.
2. In practice, it is difficult to force registries to have a Sunrise period. Registries can just price Sunrise registrations in a way that effectively obviates the offering. There were no price controls in this (2012) round or the previous (2003-04) round and for very good reasons.
3. With a wave of its imperial wand, the GAC converted the “or” (as in Sunrise or Trademark Claims) to an “and,” ignoring past practice and the market realities stated above.
4. The STI also recommended that Trademark Claims last a period shorter than the current 90-days (60 days?), a period that was intended to coincide with the then-traditional landrush periods that preceded GA. This was because it was thought that domain investors who might infringe were more likely to obtain trademarked names in the land rush period. Also, by limiting the Claims period to land rush, registrars could participate in the start of General Availability without having to absorb the costs of implementing the Claims process.
5. Again, the GAC arbitrarily increased the Claims period to 90 days, effectively forcing registrars to bear the expense of administering claims or missing the first month or more of GA.
6. As the market has evolved, land rush periods have largely been abandoned and replaced with Early Access Periods that are part of General Availability so any registrar wanting to sell domains from the start of GA has to accommodate Claims.
7. There was no real pushback to the GAC interventions even though there were valid cases to be made. By that time new gTLD proponent were too weary, had waited too long, and were too extended by delays to consider extending the public debate. The GAC recommendations were accepted with little comment.
Summary: the Sunrise period was originally designed to be voluntary and it still is, in effect, voluntary – if registries price Sunrise registrations very high. The Claims period is of arbitrary length, there is no available data pointing to a 90-day or any other period.
Rationale: Making the Sunrise period voluntary and extending the Claims period to perpetuity will:
1. Does not change the “in-fact” status of Sunrise as voluntary but does avoid the reputation impact to the program when registries prohibitively price Sunrise registrations.
2. Will not likely impact the number of registries that conduct a Sunrise period. Registries conducted Sunrise periods in the past, they remain a revenue generating opportunity today, and most registries do seek a reputation for protecting IP rights.
3. If a registry wants to operate a Sunrise period, there is no justifiable way to bar that.
4. A Claims notice in perpetuity will accustom registrants to seeing the notice and promoting an understanding of its effect. Since a notice will not accompany every registration, it will still have meaning, but will not be such a surprise that it would be likely to deter an otherwise legitimate registration.
5. There is no real rationale for a Claims notice being of value on day x and not of value on day x=1. New entrants are entering the domain name industry each day and the value of Claims notices might even increase as the market evolves.
6. Registrars that have held off to date, would be obligated to find a way to implement Claims and all registrars will be able to participate from the opening of GA.
The one caveat is that last point and it has to do with a comment Jon Nevett made to another RPM list. I don’t understand the burden to registrars of implementing Claims notifications. (Remember, the IRT originally avoided this issue by limiting the length of the Claim period.) If it is demonstrated that implementing Claims is likely to put smaller registrars out of business or at a significant cost disadvantage, than I would reduce the recommended Claims period from perpetuity, back to 90 days.
Thx & regards,
Kurt ________________ Kurt Pritz kurt@kjpritz.com +1.310.400.4184 Skype: kjpritz
On Apr 21, 2017, at 11:38 AM, Paul Keating <Paul@law.es> wrote:
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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Hi Paul: I’d like to this about this a little more carefully but here is what I think: I understand you to be saying that - by removing Sunrise, you mean that it cannot even be optional. (In the meantime, the TMCH will continue operation to support Claims.) However, Sunrise periods are a product that both registries and trademark owners like and they will continue to offer them. As you know, new registries typically offered Sunrise periods when they weren’t required. Therefore, to remove Sunrise (I.e., if Sunrise were not optional) that means that ICANN would either prohibit the Sunrise period as a registry service, or allow it as a service but prohibit the use of the TMCH to facilitate it. I think attempts to do that would have many negative repercussions. First, it is difficult to prohibit business models or, alternatively, to say the Clearinghouse can be used for one purpose (i.e., Claims), but not another purpose (i.e., Sunrise). Markets have a way of working around such prohibitions. If buyers and sellers want to establish a marketplace, it is tough to get in the way of that. If the service is prohibited, Registries can repackage it. If TMCH use is prohibited, TMCH(2) could be developed under separate contract or registries will each develop their own (more expensive) Sunrise process and those costs will obviate better uses of those funds. Trying to enforce a prohibition would put ICANN in a position of inappropriately intermeddling in a market place (and be ineffective at the end of the day). At the end, resources will be expended trying to prevent something that cannot really be prevented. More importantly, I think attempts at a prohibition of a well-established (17-year-old) IP protection would put ICANN in an unfavorable light in global IG fora and threaten the multi-stakeholder model. Pragmatically, I think the GAC would object to either prohibition and, given the past, I am not sure the ICANN Board has the fortitude to take that on even if it wanted to - and if it did, there would be significant delays to the program. That is why I suggest that Sunrise be voluntary. In short, you can’t make registries offer it and you can’t stop them from offering it. I hope this is helpful. Kurt ________________ Kurt Pritz kurt@kjpritz.com +1.310.400.4184 Skype: kjpritz
On Apr 22, 2017, at 4:27 PM, Paul Keating <paul@law.es> wrote:
Kurt,
Well thought out.
What about removing Sunrise and making notice in perpetuity including changes in registrant? That serves the legitimate function of providing actual notice of a prior trademark registration. Obviously the notification should state the goods/services of the trademark holder and provide identification information so the registrant really know who the holder of the mark is and the nature of use.
This removes gamesmanship on all sides issues of knowledge regarding legitimate interest and good faith. the speech issue completely
What is required IMHO is
A more complete and factual understanding of what is in the TMCH. A more complete understanding of actual use of marks in the TMCH
Sent from my iPad
On 22 Apr 2017, at 14:31, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> wrote:
Nicely done sir. Thoughts to ponder.
Sent from my iPhone
On Apr 22, 2017, at 5:26 AM, Kurt Pritz <kurt@kjpritz.com <mailto:kurt@kjpritz.com>> wrote:
Hi Everyone:
I am sympathetic with Greg’s comment that this discussion is premature. However, I could not help but think this through. This analysis is based more on practicalities and registry life-cycle rather than data (which has proven to be unavailable) or anecdote. Many of these points could stand additional elaboration but this note is long enough.
Recommendation:
1. Sunrise periods should be voluntary for registry operators
2. Trademarks Claims should be mandatory and perpetual (with a caveat described below as to whether they are perpetual or time limited)
Background:
1. The STI recommended that registries conduct a Sunrise or a Trademark Claims period. This approach was most likely based on: past practice leading up to the gTLD round where new registries always conducted one or the other; and affording new registries some freedom in selecting how they wanted to protect marks owners.
2. In practice, it is difficult to force registries to have a Sunrise period. Registries can just price Sunrise registrations in a way that effectively obviates the offering. There were no price controls in this (2012) round or the previous (2003-04) round and for very good reasons.
3. With a wave of its imperial wand, the GAC converted the “or” (as in Sunrise or Trademark Claims) to an “and,” ignoring past practice and the market realities stated above.
4. The STI also recommended that Trademark Claims last a period shorter than the current 90-days (60 days?), a period that was intended to coincide with the then-traditional landrush periods that preceded GA. This was because it was thought that domain investors who might infringe were more likely to obtain trademarked names in the land rush period. Also, by limiting the Claims period to land rush, registrars could participate in the start of General Availability without having to absorb the costs of implementing the Claims process.
5. Again, the GAC arbitrarily increased the Claims period to 90 days, effectively forcing registrars to bear the expense of administering claims or missing the first month or more of GA.
6. As the market has evolved, land rush periods have largely been abandoned and replaced with Early Access Periods that are part of General Availability so any registrar wanting to sell domains from the start of GA has to accommodate Claims.
7. There was no real pushback to the GAC interventions even though there were valid cases to be made. By that time new gTLD proponent were too weary, had waited too long, and were too extended by delays to consider extending the public debate. The GAC recommendations were accepted with little comment.
Summary: the Sunrise period was originally designed to be voluntary and it still is, in effect, voluntary – if registries price Sunrise registrations very high. The Claims period is of arbitrary length, there is no available data pointing to a 90-day or any other period.
Rationale: Making the Sunrise period voluntary and extending the Claims period to perpetuity will:
1. Does not change the “in-fact” status of Sunrise as voluntary but does avoid the reputation impact to the program when registries prohibitively price Sunrise registrations.
2. Will not likely impact the number of registries that conduct a Sunrise period. Registries conducted Sunrise periods in the past, they remain a revenue generating opportunity today, and most registries do seek a reputation for protecting IP rights.
3. If a registry wants to operate a Sunrise period, there is no justifiable way to bar that.
4. A Claims notice in perpetuity will accustom registrants to seeing the notice and promoting an understanding of its effect. Since a notice will not accompany every registration, it will still have meaning, but will not be such a surprise that it would be likely to deter an otherwise legitimate registration.
5. There is no real rationale for a Claims notice being of value on day x and not of value on day x=1. New entrants are entering the domain name industry each day and the value of Claims notices might even increase as the market evolves.
6. Registrars that have held off to date, would be obligated to find a way to implement Claims and all registrars will be able to participate from the opening of GA.
The one caveat is that last point and it has to do with a comment Jon Nevett made to another RPM list. I don’t understand the burden to registrars of implementing Claims notifications. (Remember, the IRT originally avoided this issue by limiting the length of the Claim period.) If it is demonstrated that implementing Claims is likely to put smaller registrars out of business or at a significant cost disadvantage, than I would reduce the recommended Claims period from perpetuity, back to 90 days.
Thx & regards,
Kurt ________________ Kurt Pritz kurt@kjpritz.com <mailto:kurt@kjpritz.com> +1.310.400.4184 Skype: kjpritz
On Apr 21, 2017, at 11:38 AM, Paul Keating <Paul@law.es <mailto:Paul@law.es>> wrote:
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 <mailto:gnso-rpm-wg-bounces@icann.org> on behalf of migraham@expedia.com <mailto:migraham@expedia.com>> wrote:
+1
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto: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 <mailto:brian.beckham@wipo.int>> Cc: gnso-rpm-wg@icann.org <mailto: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><mailto: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 <mailto: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><mailto: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><mailto: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><mailto: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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Hi Kurt I have not read your email in sufficient detail. However my Initial comments are Perhaps allowing registries to replace sunrise with a premium offering period would work. They would be able to offer the price they felt appropriate or hold a reverse auction. The notice would still remain effective so that curative rights are preserved to the maximum extend by eliminating the common gaming issues. Obviously cybersquatters would not want to risk substantial amounts when legitimacy and actual knowledge issues have been eliminated via the notice. That leaves a healthy competition between those who have trademark rights and those who will use the domain for legitimate purposes. This seems a healthy balance. Sincerely, Paul Keating, Esq.
On Apr 22, 2017, at 6:50 PM, Kurt Pritz <kurt@kjpritz.com> wrote:
Hi Paul:
I’d like to this about this a little more carefully but here is what I think:
I understand you to be saying that - by removing Sunrise, you mean that it cannot even be optional. (In the meantime, the TMCH will continue operation to support Claims.)
However, Sunrise periods are a product that both registries and trademark owners like and they will continue to offer them. As you know, new registries typically offered Sunrise periods when they weren’t required.
Therefore, to remove Sunrise (I.e., if Sunrise were not optional) that means that ICANN would either prohibit the Sunrise period as a registry service, or allow it as a service but prohibit the use of the TMCH to facilitate it.
I think attempts to do that would have many negative repercussions.
First, it is difficult to prohibit business models or, alternatively, to say the Clearinghouse can be used for one purpose (i.e., Claims), but not another purpose (i.e., Sunrise). Markets have a way of working around such prohibitions. If buyers and sellers want to establish a marketplace, it is tough to get in the way of that. If the service is prohibited, Registries can repackage it. If TMCH use is prohibited, TMCH(2) could be developed under separate contract or registries will each develop their own (more expensive) Sunrise process and those costs will obviate better uses of those funds. Trying to enforce a prohibition would put ICANN in a position of inappropriately intermeddling in a market place (and be ineffective at the end of the day). At the end, resources will be expended trying to prevent something that cannot really be prevented.
More importantly, I think attempts at a prohibition of a well-established (17-year-old) IP protection would put ICANN in an unfavorable light in global IG fora and threaten the multi-stakeholder model.
Pragmatically, I think the GAC would object to either prohibition and, given the past, I am not sure the ICANN Board has the fortitude to take that on even if it wanted to - and if it did, there would be significant delays to the program.
That is why I suggest that Sunrise be voluntary. In short, you can’t make registries offer it and you can’t stop them from offering it.
I hope this is helpful.
Kurt
________________ Kurt Pritz kurt@kjpritz.com +1.310.400.4184 Skype: kjpritz
On Apr 22, 2017, at 4:27 PM, Paul Keating <paul@law.es> wrote:
Kurt,
Well thought out.
What about removing Sunrise and making notice in perpetuity including changes in registrant? That serves the legitimate function of providing actual notice of a prior trademark registration. Obviously the notification should state the goods/services of the trademark holder and provide identification information so the registrant really know who the holder of the mark is and the nature of use.
This removes gamesmanship on all sides issues of knowledge regarding legitimate interest and good faith. the speech issue completely
What is required IMHO is
A more complete and factual understanding of what is in the TMCH. A more complete understanding of actual use of marks in the TMCH
Sent from my iPad
On 22 Apr 2017, at 14:31, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:
Nicely done sir. Thoughts to ponder.
Sent from my iPhone
On Apr 22, 2017, at 5:26 AM, Kurt Pritz <kurt@kjpritz.com> wrote:
Hi Everyone:
I am sympathetic with Greg’s comment that this discussion is premature. However, I could not help but think this through. This analysis is based more on practicalities and registry life-cycle rather than data (which has proven to be unavailable) or anecdote. Many of these points could stand additional elaboration but this note is long enough.
Recommendation:
1. Sunrise periods should be voluntary for registry operators
2. Trademarks Claims should be mandatory and perpetual (with a caveat described below as to whether they are perpetual or time limited)
Background:
1. The STI recommended that registries conduct a Sunrise or a Trademark Claims period. This approach was most likely based on: past practice leading up to the gTLD round where new registries always conducted one or the other; and affording new registries some freedom in selecting how they wanted to protect marks owners.
2. In practice, it is difficult to force registries to have a Sunrise period. Registries can just price Sunrise registrations in a way that effectively obviates the offering. There were no price controls in this (2012) round or the previous (2003-04) round and for very good reasons.
3. With a wave of its imperial wand, the GAC converted the “or” (as in Sunrise or Trademark Claims) to an “and,” ignoring past practice and the market realities stated above.
4. The STI also recommended that Trademark Claims last a period shorter than the current 90-days (60 days?), a period that was intended to coincide with the then-traditional landrush periods that preceded GA. This was because it was thought that domain investors who might infringe were more likely to obtain trademarked names in the land rush period. Also, by limiting the Claims period to land rush, registrars could participate in the start of General Availability without having to absorb the costs of implementing the Claims process.
5. Again, the GAC arbitrarily increased the Claims period to 90 days, effectively forcing registrars to bear the expense of administering claims or missing the first month or more of GA.
6. As the market has evolved, land rush periods have largely been abandoned and replaced with Early Access Periods that are part of General Availability so any registrar wanting to sell domains from the start of GA has to accommodate Claims.
7. There was no real pushback to the GAC interventions even though there were valid cases to be made. By that time new gTLD proponent were too weary, had waited too long, and were too extended by delays to consider extending the public debate. The GAC recommendations were accepted with little comment.
Summary: the Sunrise period was originally designed to be voluntary and it still is, in effect, voluntary – if registries price Sunrise registrations very high. The Claims period is of arbitrary length, there is no available data pointing to a 90-day or any other period.
Rationale: Making the Sunrise period voluntary and extending the Claims period to perpetuity will:
1. Does not change the “in-fact” status of Sunrise as voluntary but does avoid the reputation impact to the program when registries prohibitively price Sunrise registrations.
2. Will not likely impact the number of registries that conduct a Sunrise period. Registries conducted Sunrise periods in the past, they remain a revenue generating opportunity today, and most registries do seek a reputation for protecting IP rights.
3. If a registry wants to operate a Sunrise period, there is no justifiable way to bar that.
4. A Claims notice in perpetuity will accustom registrants to seeing the notice and promoting an understanding of its effect. Since a notice will not accompany every registration, it will still have meaning, but will not be such a surprise that it would be likely to deter an otherwise legitimate registration.
5. There is no real rationale for a Claims notice being of value on day x and not of value on day x=1. New entrants are entering the domain name industry each day and the value of Claims notices might even increase as the market evolves.
6. Registrars that have held off to date, would be obligated to find a way to implement Claims and all registrars will be able to participate from the opening of GA.
The one caveat is that last point and it has to do with a comment Jon Nevett made to another RPM list. I don’t understand the burden to registrars of implementing Claims notifications. (Remember, the IRT originally avoided this issue by limiting the length of the Claim period.) If it is demonstrated that implementing Claims is likely to put smaller registrars out of business or at a significant cost disadvantage, than I would reduce the recommended Claims period from perpetuity, back to 90 days.
Thx & regards,
Kurt ________________ Kurt Pritz kurt@kjpritz.com +1.310.400.4184 Skype: kjpritz
On Apr 21, 2017, at 11:38 AM, Paul Keating <Paul@law.es> wrote:
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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I agree with Kurt's suggestions and would like to float an additional proposal—allow members of this WG (with an agreement not to misuse) access to the TMCH database (historic and current). This will keep it from being public (a concern) but allow us the data and knowledge to have intelligent conversations about how it is and might be used. Reg Levy (310) 963-7135 Sent from my iPhone. On Apr 22, 2017, at 09:59, Paul Keating <paul@law.es<mailto:paul@law.es>> wrote: Hi Kurt I have not read your email in sufficient detail. However my Initial comments are Perhaps allowing registries to replace sunrise with a premium offering period would work. They would be able to offer the price they felt appropriate or hold a reverse auction. The notice would still remain effective so that curative rights are preserved to the maximum extend by eliminating the common gaming issues. Obviously cybersquatters would not want to risk substantial amounts when legitimacy and actual knowledge issues have been eliminated via the notice. That leaves a healthy competition between those who have trademark rights and those who will use the domain for legitimate purposes. This seems a healthy balance. Sincerely, Paul Keating, Esq. On Apr 22, 2017, at 6:50 PM, Kurt Pritz <kurt@kjpritz.com<mailto:kurt@kjpritz.com>> wrote: Hi Paul: I’d like to this about this a little more carefully but here is what I think: I understand you to be saying that - by removing Sunrise, you mean that it cannot even be optional. (In the meantime, the TMCH will continue operation to support Claims.) However, Sunrise periods are a product that both registries and trademark owners like and they will continue to offer them. As you know, new registries typically offered Sunrise periods when they weren’t required. Therefore, to remove Sunrise (I.e., if Sunrise were not optional) that means that ICANN would either prohibit the Sunrise period as a registry service, or allow it as a service but prohibit the use of the TMCH to facilitate it. I think attempts to do that would have many negative repercussions. First, it is difficult to prohibit business models or, alternatively, to say the Clearinghouse can be used for one purpose (i.e., Claims), but not another purpose (i.e., Sunrise). Markets have a way of working around such prohibitions. If buyers and sellers want to establish a marketplace, it is tough to get in the way of that. * If the service is prohibited, Registries can repackage it. * If TMCH use is prohibited, TMCH(2) could be developed under separate contract or registries will each develop their own (more expensive) Sunrise process and those costs will obviate better uses of those funds. Trying to enforce a prohibition would put ICANN in a position of inappropriately intermeddling in a market place (and be ineffective at the end of the day). At the end, resources will be expended trying to prevent something that cannot really be prevented. More importantly, I think attempts at a prohibition of a well-established (17-year-old) IP protection would put ICANN in an unfavorable light in global IG fora and threaten the multi-stakeholder model. Pragmatically, I think the GAC would object to either prohibition and, given the past, I am not sure the ICANN Board has the fortitude to take that on even if it wanted to - and if it did, there would be significant delays to the program. That is why I suggest that Sunrise be voluntary. In short, you can’t make registries offer it and you can’t stop them from offering it. I hope this is helpful. Kurt ________________ Kurt Pritz kurt@kjpritz.com<mailto:kurt@kjpritz.com> +1.310.400.4184 Skype: kjpritz On Apr 22, 2017, at 4:27 PM, Paul Keating <paul@law.es<mailto:paul@law.es>> wrote: Kurt, Well thought out. What about removing Sunrise and making notice in perpetuity including changes in registrant? That serves the legitimate function of providing actual notice of a prior trademark registration. Obviously the notification should state the goods/services of the trademark holder and provide identification information so the registrant really know who the holder of the mark is and the nature of use. This removes gamesmanship on all sides issues of knowledge regarding legitimate interest and good faith. the speech issue completely What is required IMHO is A more complete and factual understanding of what is in the TMCH. A more complete understanding of actual use of marks in the TMCH Sent from my iPad On 22 Apr 2017, at 14:31, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: Nicely done sir. Thoughts to ponder. Sent from my iPhone On Apr 22, 2017, at 5:26 AM, Kurt Pritz <kurt@kjpritz.com<mailto:kurt@kjpritz.com>> wrote: Hi Everyone: I am sympathetic with Greg’s comment that this discussion is premature. However, I could not help but think this through. This analysis is based more on practicalities and registry life-cycle rather than data (which has proven to be unavailable) or anecdote. Many of these points could stand additional elaboration but this note is long enough. Recommendation: 1. Sunrise periods should be voluntary for registry operators 2. Trademarks Claims should be mandatory and perpetual (with a caveat described below as to whether they are perpetual or time limited) Background: 1. The STI recommended that registries conduct a Sunrise or a Trademark Claims period. This approach was most likely based on: past practice leading up to the gTLD round where new registries always conducted one or the other; and affording new registries some freedom in selecting how they wanted to protect marks owners. 2. In practice, it is difficult to force registries to have a Sunrise period. Registries can just price Sunrise registrations in a way that effectively obviates the offering. There were no price controls in this (2012) round or the previous (2003-04) round and for very good reasons. 3. With a wave of its imperial wand, the GAC converted the “or” (as in Sunrise or Trademark Claims) to an “and,” ignoring past practice and the market realities stated above. 4. The STI also recommended that Trademark Claims last a period shorter than the current 90-days (60 days?), a period that was intended to coincide with the then-traditional landrush periods that preceded GA. This was because it was thought that domain investors who might infringe were more likely to obtain trademarked names in the land rush period. Also, by limiting the Claims period to land rush, registrars could participate in the start of General Availability without having to absorb the costs of implementing the Claims process. 5. Again, the GAC arbitrarily increased the Claims period to 90 days, effectively forcing registrars to bear the expense of administering claims or missing the first month or more of GA. 6. As the market has evolved, land rush periods have largely been abandoned and replaced with Early Access Periods that are part of General Availability so any registrar wanting to sell domains from the start of GA has to accommodate Claims. 7. There was no real pushback to the GAC interventions even though there were valid cases to be made. By that time new gTLD proponent were too weary, had waited too long, and were too extended by delays to consider extending the public debate. The GAC recommendations were accepted with little comment. Summary: the Sunrise period was originally designed to be voluntary and it still is, in effect, voluntary – if registries price Sunrise registrations very high. The Claims period is of arbitrary length, there is no available data pointing to a 90-day or any other period. Rationale: Making the Sunrise period voluntary and extending the Claims period to perpetuity will: 1. Does not change the “in-fact” status of Sunrise as voluntary but does avoid the reputation impact to the program when registries prohibitively price Sunrise registrations. 2. Will not likely impact the number of registries that conduct a Sunrise period. Registries conducted Sunrise periods in the past, they remain a revenue generating opportunity today, and most registries do seek a reputation for protecting IP rights. 3. If a registry wants to operate a Sunrise period, there is no justifiable way to bar that. 4. A Claims notice in perpetuity will accustom registrants to seeing the notice and promoting an understanding of its effect. Since a notice will not accompany every registration, it will still have meaning, but will not be such a surprise that it would be likely to deter an otherwise legitimate registration. 5. There is no real rationale for a Claims notice being of value on day x and not of value on day x=1. New entrants are entering the domain name industry each day and the value of Claims notices might even increase as the market evolves. 6. Registrars that have held off to date, would be obligated to find a way to implement Claims and all registrars will be able to participate from the opening of GA. The one caveat is that last point and it has to do with a comment Jon Nevett made to another RPM list. I don’t understand the burden to registrars of implementing Claims notifications. (Remember, the IRT originally avoided this issue by limiting the length of the Claim period.) If it is demonstrated that implementing Claims is likely to put smaller registrars out of business or at a significant cost disadvantage, than I would reduce the recommended Claims period from perpetuity, back to 90 days. Thx & regards, Kurt ________________ Kurt Pritz kurt@kjpritz.com<mailto:kurt@kjpritz.com> +1.310.400.4184 Skype: kjpritz On Apr 21, 2017, at 11:38 AM, Paul Keating <Paul@law.es<mailto:Paul@law.es>> wrote: 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<mailto:gnso-rpm-wg-bounces@icann.org> on behalf of migraham@expedia.com<mailto:migraham@expedia.com>> wrote: +1 -----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto: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<mailto:brian.beckham@wipo.int>> Cc: gnso-rpm-wg@icann.org<mailto: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><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> [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><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><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><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 https://eff.org<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Feff.org&data=02%7C01%7C%7Cae7c66d2e612431fe68e08d4897ac112%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636284607701737015&sdata=W3pUFsSOeDInQBg4OB7j4rBhEmxBluLZbxvpiDohZBM%3D&reserved=0><https://na01.safelinks.protection.outlook.com/?url=https%3 A%2F%2Feff.org<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2F2Feff.org&data=02%7C01%7C%7Cae7c66d2e612431fe68e08d4897ac112%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636284607701737015&sdata=xxm%2BCqQEvpFfAsI0OT%2FzghWYfNrviK1ALMxzp0AmAmA%3D&reserved=0>&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b 5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004172724&sdata=LCpvg6fU%2FX kpw1fmAH8KzPJDWABttoqafNYeotxdCiQ%3D&reserved=0> jmalcolm@eff.org<mailto:jmalcolm@eff.org><mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161<tel:(415)%20436-9333> :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7Cae7c66d2e612431fe68e08d4897ac112%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636284607701737015&sdata=%2FBtlw1O9qi2kX%2BlRJa6f8HaYVKTVf8bIMkYPdEJyKcQ%3D&reserved=0><https://na01.safelin<https://na01.safelin/> ks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fks.protectio...> 11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c7 5c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004172724&sdata= L5mf1H52yrjTzEUH1k0ZD7QleNH6oCdZhT3B7%2FDCW1Y%3D&reserved=0> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<http://mm.icann.org/mailman/listinfo/gnso-rpm-wg><https://na01.safelinks.p<https://na01.safelinks.p/> rotection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo<http://rotection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flis...> %2Fgnso-rpm-wg&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b 5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004182733&sdata=fZ88VMsRjujG itQovRkGfOctUusd1sufOBNGSw97Kn8%3D&reserved=0> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann. org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C0e18d5b07aea47943 d4408d4877c75c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C6362824160041 82733&sdata=fZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8%3D&reserved=0 World IP Day 2017 - Join the conversation Web: www.wipo.int/ipday<http://www.wipo.int/ipday><http://www.wipo.int/ipday> Facebook: www.facebook.com/worldipday<http://www.facebook.com/worldipday><http://www.facebook.com/worldipday> World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. 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I find this discussion of making sunrise voluntary and extending the TM Claims period intriguing. However, making the claims notice period longer or even indefinite would strengthen my view that such warnings should only be generated by potential domains that are exact matches of trademarks that meet TMCH requirements and in which there are recognized legal rights. Finally, when we get into the substance of claims notices, we need some inquiry as to whether any UDRP decisions have cited receipt as evidence of bad faith registration, just to understand what weight they may have in the CRP proceedings. Best to all Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VLawDC "Luck is the residue of design" -- Branch Rickey Sent from my iPad On Apr 22, 2017, at 8:26 AM, Kurt Pritz <kurt@kjpritz.com<mailto:kurt@kjpritz.com>> wrote: Hi Everyone: I am sympathetic with Greg’s comment that this discussion is premature. However, I could not help but think this through. This analysis is based more on practicalities and registry life-cycle rather than data (which has proven to be unavailable) or anecdote. Many of these points could stand additional elaboration but this note is long enough. Recommendation: 1. Sunrise periods should be voluntary for registry operators 2. Trademarks Claims should be mandatory and perpetual (with a caveat described below as to whether they are perpetual or time limited) Background: 1. The STI recommended that registries conduct a Sunrise or a Trademark Claims period. This approach was most likely based on: past practice leading up to the gTLD round where new registries always conducted one or the other; and affording new registries some freedom in selecting how they wanted to protect marks owners. 2. In practice, it is difficult to force registries to have a Sunrise period. Registries can just price Sunrise registrations in a way that effectively obviates the offering. There were no price controls in this (2012) round or the previous (2003-04) round and for very good reasons. 3. With a wave of its imperial wand, the GAC converted the “or” (as in Sunrise or Trademark Claims) to an “and,” ignoring past practice and the market realities stated above. 4. The STI also recommended that Trademark Claims last a period shorter than the current 90-days (60 days?), a period that was intended to coincide with the then-traditional landrush periods that preceded GA. This was because it was thought that domain investors who might infringe were more likely to obtain trademarked names in the land rush period. Also, by limiting the Claims period to land rush, registrars could participate in the start of General Availability without having to absorb the costs of implementing the Claims process. 5. Again, the GAC arbitrarily increased the Claims period to 90 days, effectively forcing registrars to bear the expense of administering claims or missing the first month or more of GA. 6. As the market has evolved, land rush periods have largely been abandoned and replaced with Early Access Periods that are part of General Availability so any registrar wanting to sell domains from the start of GA has to accommodate Claims. 7. There was no real pushback to the GAC interventions even though there were valid cases to be made. By that time new gTLD proponent were too weary, had waited too long, and were too extended by delays to consider extending the public debate. The GAC recommendations were accepted with little comment. Summary: the Sunrise period was originally designed to be voluntary and it still is, in effect, voluntary – if registries price Sunrise registrations very high. The Claims period is of arbitrary length, there is no available data pointing to a 90-day or any other period. Rationale: Making the Sunrise period voluntary and extending the Claims period to perpetuity will: 1. Does not change the “in-fact” status of Sunrise as voluntary but does avoid the reputation impact to the program when registries prohibitively price Sunrise registrations. 2. Will not likely impact the number of registries that conduct a Sunrise period. Registries conducted Sunrise periods in the past, they remain a revenue generating opportunity today, and most registries do seek a reputation for protecting IP rights. 3. If a registry wants to operate a Sunrise period, there is no justifiable way to bar that. 4. A Claims notice in perpetuity will accustom registrants to seeing the notice and promoting an understanding of its effect. Since a notice will not accompany every registration, it will still have meaning, but will not be such a surprise that it would be likely to deter an otherwise legitimate registration. 5. There is no real rationale for a Claims notice being of value on day x and not of value on day x=1. New entrants are entering the domain name industry each day and the value of Claims notices might even increase as the market evolves. 6. Registrars that have held off to date, would be obligated to find a way to implement Claims and all registrars will be able to participate from the opening of GA. The one caveat is that last point and it has to do with a comment Jon Nevett made to another RPM list. I don’t understand the burden to registrars of implementing Claims notifications. (Remember, the IRT originally avoided this issue by limiting the length of the Claim period.) If it is demonstrated that implementing Claims is likely to put smaller registrars out of business or at a significant cost disadvantage, than I would reduce the recommended Claims period from perpetuity, back to 90 days. Thx & regards, Kurt ________________ Kurt Pritz kurt@kjpritz.com<mailto:kurt@kjpritz.com> +1.310.400.4184 Skype: kjpritz On Apr 21, 2017, at 11:38 AM, Paul Keating <Paul@law.es<mailto:Paul@law.es>> wrote: 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<mailto:gnso-rpm-wg-bounces@icann.org> on behalf of migraham@expedia.com<mailto:migraham@expedia.com>> wrote: +1 -----Original Message----- From: gnso-rpm-wg-bounces@icann.org<mailto: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<mailto:brian.beckham@wipo.int>> Cc: gnso-rpm-wg@icann.org<mailto: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><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> [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><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><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><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 https://eff.org<http://eff.org><https://na01.safelinks.protection.outlook.com/?url=https%3 A%2F%2Feff.org<http://2Feff.org>&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b 5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004172724&sdata=LCpvg6fU%2FX kpw1fmAH8KzPJDWABttoqafNYeotxdCiQ%3D&reserved=0> jmalcolm@eff.org<mailto:jmalcolm@eff.org><mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161<tel:(415)%20436-9333> :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://na01.safelin ks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2016%2F<http://ks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F20...> 11%2F27%2Fkey_jmalcolm.txt&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c7 5c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004172724&sdata= L5mf1H52yrjTzEUH1k0ZD7QleNH6oCdZhT3B7%2FDCW1Y%3D&reserved=0> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<http://mm.icann.org/mailman/listinfo/gnso-rpm-wg><https://na01.safelinks.p rotection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo<http://rotection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flis...> %2Fgnso-rpm-wg&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b 5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004182733&sdata=fZ88VMsRjujG itQovRkGfOctUusd1sufOBNGSw97Kn8%3D&reserved=0> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann. org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C0e18d5b07aea47943 d4408d4877c75c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C6362824160041 82733&sdata=fZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8%3D&reserved=0 World IP Day 2017 - Join the conversation Web: www.wipo.int/ipday<http://www.wipo.int/ipday><http://www.wipo.int/ipday> Facebook: www.facebook.com/worldipday<http://www.facebook.com/worldipday><http://www.facebook.com/worldipday> World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. 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In addition, I believe it is overstating the issue to assume that all domain names are protected speech. As an initial matter, U.S. courts appear to be split on this issue, and furthermore, one needs to look at the domain name to make this determination. For instance, there is a big difference in the expressive nature of <abcd.com>, as compared with, <thewebsitetoprotestunfairsunriseregistrations.com>. John From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Beckham, Brian Sent: Thursday, April 20, 2017 6:39 AM To: J. Scott Evans <jsevans@adobe.com>; Paul Tattersfield <gpmgroup@gmail.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period 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 https://eff.org<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Feff.org-26data-3D02-257C01-257C-257C0e18d5b07aea47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636282416004172724-26sdata-3DLCpvg6fU-252FXkpw1fmAH8KzPJDWABttoqafNYeotxdCiQ-253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=0BR4m_4UuTrbwX27PjR5nOwWB8isVOX2a3mrks6Ng-0&s=k7ODBCCErf9pQH25bKUJ1_8D4_De4J9UwNPdpJ5tedY&e=> jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161<tel:(415)%20436-9333> :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fwww.eff.org-252Ffiles-252F2016-252F11-252F27-252Fkey-5Fjmalcolm.txt-26data-3D02-257C01-257C-257C0e18d5b07aea47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636282416004172724-26sdata-3DL5mf1H52yrjTzEUH1k0ZD7QleNH6oCdZhT3B7-252FDCW1Y-253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=0BR4m_4UuTrbwX27PjR5nOwWB8isVOX2a3mrks6Ng-0&s=NJwl9YsuYqiLEMKMhSYy7fxrJOl1OckjOHw-cFVpg-I&e=> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fmm.icann.org-252Fmailman-252Flistinfo-252Fgnso-2Drpm-2Dwg-26data-3D02-257C01-257C-257C0e18d5b07aea47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636282416004182733-26sdata-3DfZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8-253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=0BR4m_4UuTrbwX27PjR5nOwWB8isVOX2a3mrks6Ng-0&s=cIC2UBz3o_1bZxjHjx4pIGYYg6_R_EpFRKaEmSapeMs&e=> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004182733&sdata=fZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8%3D&reserved=0<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fmm.icann.org-252Fmailman-252Flistinfo-252Fgnso-2Drpm-2Dwg-26data-3D02-257C01-257C-257C0e18d5b07aea47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636282416004182733-26sdata-3DfZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8-253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=0BR4m_4UuTrbwX27PjR5nOwWB8isVOX2a3mrks6Ng-0&s=cIC2UBz3o_1bZxjHjx4pIGYYg6_R_EpFRKaEmSapeMs&e=> World IP Day 2017 – Join the conversation Web: www.wipo.int/ipday<http://www.wipo.int/ipday> Facebook: www.facebook.com/worldipday<http://www.facebook.com/worldipday> 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. Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message.
Co-chairs, all: Before responding to the substance, isn't this a premature submission? First, it seemed clear that we were asked to submit proposals regarding the Trademark Clearinghouse itself -- not RPMs such as Sunrise, Claims, etc. Second, it seemed clear that the proposals should be specific to the four TMCH questions still open: 7 (TMCH handling of design marks), 8 (TMCH handling of geographical indications, protected designations/appellations of origin), 10 (retaining, modifying or expanding TMCH matching rules) and 15 (confidentiality/privacy of TMCH Database). All other TMCH questions "either been deferred for further review following the Working Group’s discussion of Sunrise and Claims Notifications, or agreed as not requiring further discussion at this time." I see that the proposal comes from someone who just joined the group as a member, so perhaps they were simply ignorant of the requirements. However, it's my understanding that when you join a WG midstream, you need to get familiar with the WG's prior work and you can't reopen a prior WG decision unless you have significant new information. I appreciate the "passionate intensity" that causes one to "rush in."* But I think we have enough on our hands in dealing with the proposals that are on-topic. Also, didn't we just set up 3 subgroups for the next module of WG work -- including one to deal with Sunrise (the subject of this submission)? The subgroups' work is just beginning, while we wrap up our TMCH module. Discussing Sunrise here and now in the full WG seems to thwart our work plan. As such, it seems that consideration of this submission needs to be deferred until the Sunrise Subgroup reports back to the WG, referred to that subgroup, withdrawn, or rejected. If the co-chairs decide to move forward in the full WG now, I think they have to do the following as well: - Keep the proposal submission window open for another 2-3 weeks, so that other WG members can submit proposals on other Phase One topics aside from the TMCH -- Sunrise, Claims, URS, and other proposed/potential RPMs (i.e., everything but UDRP). - Suspend the work of the Subgroups so that we are not working on two tracks. - Suspend discussion of this proposal until other Sunrise proposals are received, so they can be discussed together. If the co-chairs decide to move forward on this, I'll respond on substance. But I'll hold off for now, since I don't want to clog the email list with off-topic submissions. However, if the discussion just moves forward, I'll have to jump in so I don't miss the chance to contribute to the discussion. Expectantly, Greg * Note that the works of W.B. Yeats and Alexander Pope are in the public domain.... *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Thu, Apr 20, 2017 at 9:55 AM, John McElwaine < john.mcelwaine@nelsonmullins.com> wrote:
In addition, I believe it is overstating the issue to assume that all domain names are protected speech. As an initial matter, U.S. courts appear to be split on this issue, and furthermore, one needs to look at the domain name to make this determination. For instance, there is a big difference in the expressive nature of <abcd.com>, as compared with, < thewebsitetoprotestunfairsunriseregistrations.com>.
John
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org] *On Behalf Of *Beckham, Brian *Sent:* Thursday, April 20, 2017 6:39 AM *To:* J. Scott Evans <jsevans@adobe.com>; Paul Tattersfield < gpmgroup@gmail.com>; gnso-rpm-wg@icann.org
*Subject:* Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period
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 <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 *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> 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> 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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+1. Not only is the proposal outside the goal posts of “incremental improvements” that Phil Corwin set out for us, it seems out of time as well. Hopefully, it can be withdrawn so that we all don’t have to spend hours and hours trying to keep it from taking root. Unfortunately, unless unworkable ideas, like the one contained in the proposal, are nipped in the bud early, they tend to take root in ICANNland… Best, Paul From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Greg Shatan Sent: Thursday, April 20, 2017 10:48 AM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period Co-chairs, all: Before responding to the substance, isn't this a premature submission? First, it seemed clear that we were asked to submit proposals regarding the Trademark Clearinghouse itself -- not RPMs such as Sunrise, Claims, etc. Second, it seemed clear that the proposals should be specific to the four TMCH questions still open: 7 (TMCH handling of design marks), 8 (TMCH handling of geographical indications, protected designations/appellations of origin), 10 (retaining, modifying or expanding TMCH matching rules) and 15 (confidentiality/privacy of TMCH Database). All other TMCH questions "either been deferred for further review following the Working Group’s discussion of Sunrise and Claims Notifications, or agreed as not requiring further discussion at this time." I see that the proposal comes from someone who just joined the group as a member, so perhaps they were simply ignorant of the requirements. However, it's my understanding that when you join a WG midstream, you need to get familiar with the WG's prior work and you can't reopen a prior WG decision unless you have significant new information. I appreciate the "passionate intensity" that causes one to "rush in."* But I think we have enough on our hands in dealing with the proposals that are on-topic. Also, didn't we just set up 3 subgroups for the next module of WG work -- including one to deal with Sunrise (the subject of this submission)? The subgroups' work is just beginning, while we wrap up our TMCH module. Discussing Sunrise here and now in the full WG seems to thwart our work plan. As such, it seems that consideration of this submission needs to be deferred until the Sunrise Subgroup reports back to the WG, referred to that subgroup, withdrawn, or rejected. If the co-chairs decide to move forward in the full WG now, I think they have to do the following as well: * Keep the proposal submission window open for another 2-3 weeks, so that other WG members can submit proposals on other Phase One topics aside from the TMCH -- Sunrise, Claims, URS, and other proposed/potential RPMs (i.e., everything but UDRP). * Suspend the work of the Subgroups so that we are not working on two tracks. * Suspend discussion of this proposal until other Sunrise proposals are received, so they can be discussed together. If the co-chairs decide to move forward on this, I'll respond on substance. But I'll hold off for now, since I don't want to clog the email list with off-topic submissions. However, if the discussion just moves forward, I'll have to jump in so I don't miss the chance to contribute to the discussion. Expectantly, Greg * Note that the works of W.B. Yeats and Alexander Pope are in the public domain.... Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Thu, Apr 20, 2017 at 9:55 AM, John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>> wrote: In addition, I believe it is overstating the issue to assume that all domain names are protected speech. As an initial matter, U.S. courts appear to be split on this issue, and furthermore, one needs to look at the domain name to make this determination. For instance, there is a big difference in the expressive nature of <abcd.com<http://abcd.com>>, as compared with, <thewebsitetoprotestunfairsunriseregistrations.com<http://thewebsitetoprotestunfairsunriseregistrations.com>>. John From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Beckham, Brian Sent: Thursday, April 20, 2017 6:39 AM To: J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>>; Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period 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 https://eff.org<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Feff.org-26data-3D02-257C01-257C-257C0e18d5b07aea47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636282416004172724-26sdata-3DLCpvg6fU-252FXkpw1fmAH8KzPJDWABttoqafNYeotxdCiQ-253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=0BR4m_4UuTrbwX27PjR5nOwWB8isVOX2a3mrks6Ng-0&s=k7ODBCCErf9pQH25bKUJ1_8D4_De4J9UwNPdpJ5tedY&e=> jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161<tel:(415)%20436-9333> :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fwww.eff.org-252Ffiles-252F2016-252F11-252F27-252Fkey-5Fjmalcolm.txt-26data-3D02-257C01-257C-257C0e18d5b07aea47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636282416004172724-26sdata-3DL5mf1H52yrjTzEUH1k0ZD7QleNH6oCdZhT3B7-252FDCW1Y-253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=0BR4m_4UuTrbwX27PjR5nOwWB8isVOX2a3mrks6Ng-0&s=NJwl9YsuYqiLEMKMhSYy7fxrJOl1OckjOHw-cFVpg-I&e=> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fmm.icann.org-252Fmailman-252Flistinfo-252Fgnso-2Drpm-2Dwg-26data-3D02-257C01-257C-257C0e18d5b07aea47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636282416004182733-26sdata-3DfZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8-253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=0BR4m_4UuTrbwX27PjR5nOwWB8isVOX2a3mrks6Ng-0&s=cIC2UBz3o_1bZxjHjx4pIGYYg6_R_EpFRKaEmSapeMs&e=> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004182733&sdata=fZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8%3D&reserved=0<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fmm.icann.org-252Fmailman-252Flistinfo-252Fgnso-2Drpm-2Dwg-26data-3D02-257C01-257C-257C0e18d5b07aea47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636282416004182733-26sdata-3DfZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8-253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=0BR4m_4UuTrbwX27PjR5nOwWB8isVOX2a3mrks6Ng-0&s=cIC2UBz3o_1bZxjHjx4pIGYYg6_R_EpFRKaEmSapeMs&e=> World IP Day 2017 – Join the conversation Web: www.wipo.int/ipday<http://www.wipo.int/ipday> Facebook: www.facebook.com/worldipday<http://www.facebook.com/worldipday> World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. 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Hello Greg and everyone, As the call for proposals was intended to solicit recommendations that address the open questions on the TMCH structure and scope (Questions 7, 8 and 10) the potential overlap with a Sunrise discussion has been noted for the co-chairs. Cheers Mary From: <gnso-rpm-wg-bounces@icann.org> on behalf of Greg Shatan <gregshatanipc@gmail.com> Date: Thursday, April 20, 2017 at 11:47 To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period Co-chairs, all: Before responding to the substance, isn't this a premature submission? First, it seemed clear that we were asked to submit proposals regarding the Trademark Clearinghouse itself -- not RPMs such as Sunrise, Claims, etc. Second, it seemed clear that the proposals should be specific to the four TMCH questions still open: 7 (TMCH handling of design marks), 8 (TMCH handling of geographical indications, protected designations/appellations of origin), 10 (retaining, modifying or expanding TMCH matching rules) and 15 (confidentiality/privacy of TMCH Database). All other TMCH questions "either been deferred for further review following the Working Group’s discussion of Sunrise and Claims Notifications, or agreed as not requiring further discussion at this time." I see that the proposal comes from someone who just joined the group as a member, so perhaps they were simply ignorant of the requirements. However, it's my understanding that when you join a WG midstream, you need to get familiar with the WG's prior work and you can't reopen a prior WG decision unless you have significant new information. I appreciate the "passionate intensity" that causes one to "rush in."* But I think we have enough on our hands in dealing with the proposals that are on-topic. Also, didn't we just set up 3 subgroups for the next module of WG work -- including one to deal with Sunrise (the subject of this submission)? The subgroups' work is just beginning, while we wrap up our TMCH module. Discussing Sunrise here and now in the full WG seems to thwart our work plan. As such, it seems that consideration of this submission needs to be deferred until the Sunrise Subgroup reports back to the WG, referred to that subgroup, withdrawn, or rejected. If the co-chairs decide to move forward in the full WG now, I think they have to do the following as well: * Keep the proposal submission window open for another 2-3 weeks, so that other WG members can submit proposals on other Phase One topics aside from the TMCH -- Sunrise, Claims, URS, and other proposed/potential RPMs (i.e., everything but UDRP). * Suspend the work of the Subgroups so that we are not working on two tracks. * Suspend discussion of this proposal until other Sunrise proposals are received, so they can be discussed together. If the co-chairs decide to move forward on this, I'll respond on substance. But I'll hold off for now, since I don't want to clog the email list with off-topic submissions. However, if the discussion just moves forward, I'll have to jump in so I don't miss the chance to contribute to the discussion. Expectantly, Greg * Note that the works of W.B. Yeats and Alexander Pope are in the public domain.... Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Thu, Apr 20, 2017 at 9:55 AM, John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>> wrote: In addition, I believe it is overstating the issue to assume that all domain names are protected speech. As an initial matter, U.S. courts appear to be split on this issue, and furthermore, one needs to look at the domain name to make this determination. For instance, there is a big difference in the expressive nature of <abcd.com[abcd.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__abcd.com&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=bCDwHJ9c8HvqajRo0dYWXiOWLHf3FIlX18-Gs2yoXSs&s=6ocrizQJyAnlqR6w17-s11PdAffAdImS8XajwYvbLws&e=>>, as compared with, <thewebsitetoprotestunfairsunriseregistrations.com[thewebsitetoprotestunfairsunriseregistrations.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__thewebsitetoprotestunfairsunriseregistrations.com&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=bCDwHJ9c8HvqajRo0dYWXiOWLHf3FIlX18-Gs2yoXSs&s=_YXnlVWLLlaGShyk-9Vap70ls6nxkoWeedplm5mX_u0&e=>>. John From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Beckham, Brian Sent: Thursday, April 20, 2017 6:39 AM To: J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>>; Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period 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 https://eff.org<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Feff.org-26data-3D02-257C01-257C-257C0e18d5b07aea47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636282416004172724-26sdata-3DLCpvg6fU-252FXkpw1fmAH8KzPJDWABttoqafNYeotxdCiQ-253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=0BR4m_4UuTrbwX27PjR5nOwWB8isVOX2a3mrks6Ng-0&s=k7ODBCCErf9pQH25bKUJ1_8D4_De4J9UwNPdpJ5tedY&e=> jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161<tel:(415)%20436-9333> :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fwww.eff.org-252Ffiles-252F2016-252F11-252F27-252Fkey-5Fjmalcolm.txt-26data-3D02-257C01-257C-257C0e18d5b07aea47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636282416004172724-26sdata-3DL5mf1H52yrjTzEUH1k0ZD7QleNH6oCdZhT3B7-252FDCW1Y-253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=0BR4m_4UuTrbwX27PjR5nOwWB8isVOX2a3mrks6Ng-0&s=NJwl9YsuYqiLEMKMhSYy7fxrJOl1OckjOHw-cFVpg-I&e=> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fmm.icann.org-252Fmailman-252Flistinfo-252Fgnso-2Drpm-2Dwg-26data-3D02-257C01-257C-257C0e18d5b07aea47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636282416004182733-26sdata-3DfZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8-253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=0BR4m_4UuTrbwX27PjR5nOwWB8isVOX2a3mrks6Ng-0&s=cIC2UBz3o_1bZxjHjx4pIGYYg6_R_EpFRKaEmSapeMs&e=> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004182733&sdata=fZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8%3D&reserved=0<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fmm.icann.org-252Fmailman-252Flistinfo-252Fgnso-2Drpm-2Dwg-26data-3D02-257C01-257C-257C0e18d5b07aea47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636282416004182733-26sdata-3DfZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8-253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=0BR4m_4UuTrbwX27PjR5nOwWB8isVOX2a3mrks6Ng-0&s=cIC2UBz3o_1bZxjHjx4pIGYYg6_R_EpFRKaEmSapeMs&e=> World IP Day 2017 – Join the conversation Web: www.wipo.int/ipday[wipo.int]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_ipday&d=DwM...> Facebook: www.facebook.com/worldipday[facebook.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.facebook.com_worldip...> 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. Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000<tel:(800)%20237-2000>) or reply to this e-mail and delete all copies of this message. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Mary, Thanks. I'm not sure what that means, but I'll wait to see what the co-chairs say. Greg *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Thu, Apr 20, 2017 at 3:32 PM, Mary Wong <mary.wong@icann.org> wrote:
Hello Greg and everyone,
As the call for proposals was intended to solicit recommendations that address the open questions on the TMCH structure and scope (Questions 7, 8 and 10) the potential overlap with a Sunrise discussion has been noted for the co-chairs.
Cheers
Mary
*From: *<gnso-rpm-wg-bounces@icann.org> on behalf of Greg Shatan < gregshatanipc@gmail.com> *Date: *Thursday, April 20, 2017 at 11:47 *To: *"gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> *Subject: *Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period
Co-chairs, all:
Before responding to the substance, isn't this a premature submission?
First, it seemed clear that we were asked to submit proposals regarding the Trademark Clearinghouse itself -- not RPMs such as Sunrise, Claims, etc.
Second, it seemed clear that the proposals should be specific to the four TMCH questions still open: 7 (TMCH handling of design marks), 8 (TMCH handling of geographical indications, protected designations/appellations of origin), 10 (retaining, modifying or expanding TMCH matching rules) and 15 (confidentiality/privacy of TMCH Database). All other TMCH questions "either been deferred for further review following the Working Group’s discussion of Sunrise and Claims Notifications, or agreed as not requiring further discussion at this time."
I see that the proposal comes from someone who just joined the group as a member, so perhaps they were simply ignorant of the requirements. However, it's my understanding that when you join a WG midstream, you need to get familiar with the WG's prior work and you can't reopen a prior WG decision unless you have significant new information. I appreciate the "passionate intensity" that causes one to "rush in."* But I think we have enough on our hands in dealing with the proposals that are on-topic.
Also, didn't we just set up 3 subgroups for the next module of WG work -- including one to deal with Sunrise (the subject of this submission)? The subgroups' work is just beginning, while we wrap up our TMCH module. Discussing Sunrise here and now in the full WG seems to thwart our work plan.
As such, it seems that consideration of this submission needs to be deferred until the Sunrise Subgroup reports back to the WG, referred to that subgroup, withdrawn, or rejected.
If the co-chairs decide to move forward in the full WG now, I think they have to do the following as well:
- Keep the proposal submission window open for another 2-3 weeks, so that other WG members can submit proposals on other Phase One topics aside from the TMCH -- Sunrise, Claims, URS, and other proposed/potential RPMs (i.e., everything but UDRP). - Suspend the work of the Subgroups so that we are not working on two tracks. - Suspend discussion of this proposal until other Sunrise proposals are received, so they can be discussed together.
If the co-chairs decide to move forward on this, I'll respond on substance. But I'll hold off for now, since I don't want to clog the email list with off-topic submissions. However, if the discussion just moves forward, I'll have to jump in so I don't miss the chance to contribute to the discussion.
Expectantly,
Greg
* Note that the works of W.B. Yeats and Alexander Pope are in the public domain....
*Greg Shatan *C: 917-816-6428 <(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428 <(646)%20845-9428> gregshatanipc@gmail.com
On Thu, Apr 20, 2017 at 9:55 AM, John McElwaine < john.mcelwaine@nelsonmullins.com> wrote:
In addition, I believe it is overstating the issue to assume that all domain names are protected speech. As an initial matter, U.S. courts appear to be split on this issue, and furthermore, one needs to look at the domain name to make this determination. For instance, there is a big difference in the expressive nature of <abcd.com[abcd.com] <https://urldefense.proofpoint.com/v2/url?u=http-3A__abcd.com&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=bCDwHJ9c8HvqajRo0dYWXiOWLHf3FIlX18-Gs2yoXSs&s=6ocrizQJyAnlqR6w17-s11PdAffAdImS8XajwYvbLws&e=>>, as compared with, <thewebsitetoprotestunfairsunriseregistrations.com[ thewebsitetoprotestunfairsunriseregistrations.com] <https://urldefense.proofpoint.com/v2/url?u=http-3A__thewebsitetoprotestunfai...>
.
John
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org] *On Behalf Of *Beckham, Brian *Sent:* Thursday, April 20, 2017 6:39 AM *To:* J. Scott Evans <jsevans@adobe.com>; Paul Tattersfield < gpmgroup@gmail.com>; gnso-rpm-wg@icann.org
*Subject:* Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period
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 <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 *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> 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> 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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jmalcolm@eff.org
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Mary, I was also confused. Does this mean that the issue is being deferred along with the other relevant questions to which it relates? Paul From: <gnso-rpm-wg-bounces@icann.org> on behalf of Greg Shatan <gregshatanipc@gmail.com> Date: Thursday, April 20, 2017 at 9:36 PM To: Mary Wong <mary.wong@icann.org> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period
Mary,
Thanks. I'm not sure what that means, but I'll wait to see what the co-chairs say.
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com>
On Thu, Apr 20, 2017 at 3:32 PM, Mary Wong <mary.wong@icann.org> wrote:
Hello Greg and everyone,
As the call for proposals was intended to solicit recommendations that address the open questions on the TMCH structure and scope (Questions 7, 8 and 10) the potential overlap with a Sunrise discussion has been noted for the co-chairs.
Cheers Mary
From: <gnso-rpm-wg-bounces@icann.org> on behalf of Greg Shatan <gregshatanipc@gmail.com> Date: Thursday, April 20, 2017 at 11:47 To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period
Co-chairs, all:
Before responding to the substance, isn't this a premature submission?
First, it seemed clear that we were asked to submit proposals regarding the Trademark Clearinghouse itself -- not RPMs such as Sunrise, Claims, etc.
Second, it seemed clear that the proposals should be specific to the four TMCH questions still open: 7 (TMCH handling of design marks), 8 (TMCH handling of geographical indications, protected designations/appellations of origin), 10 (retaining, modifying or expanding TMCH matching rules) and 15 (confidentiality/privacy of TMCH Database). All other TMCH questions "either been deferred for further review following the Working Group¹s discussion of Sunrise and Claims Notifications, or agreed as not requiring further discussion at this time."
I see that the proposal comes from someone who just joined the group as a member, so perhaps they were simply ignorant of the requirements. However, it's my understanding that when you join a WG midstream, you need to get familiar with the WG's prior work and you can't reopen a prior WG decision unless you have significant new information. I appreciate the "passionate intensity" that causes one to "rush in."* But I think we have enough on our hands in dealing with the proposals that are on-topic.
Also, didn't we just set up 3 subgroups for the next module of WG work -- including one to deal with Sunrise (the subject of this submission)? The subgroups' work is just beginning, while we wrap up our TMCH module. Discussing Sunrise here and now in the full WG seems to thwart our work plan.
As such, it seems that consideration of this submission needs to be deferred until the Sunrise Subgroup reports back to the WG, referred to that subgroup, withdrawn, or rejected.
If the co-chairs decide to move forward in the full WG now, I think they have to do the following as well: * Keep the proposal submission window open for another 2-3 weeks, so that other WG members can submit proposals on other Phase One topics aside from the TMCH -- Sunrise, Claims, URS, and other proposed/potential RPMs (i.e., everything but UDRP). * Suspend the work of the Subgroups so that we are not working on two tracks. * Suspend discussion of this proposal until other Sunrise proposals are received, so they can be discussed together. If the co-chairs decide to move forward on this, I'll respond on substance. But I'll hold off for now, since I don't want to clog the email list with off-topic submissions. However, if the discussion just moves forward, I'll have to jump in so I don't miss the chance to contribute to the discussion.
Expectantly,
Greg
* Note that the works of W.B. Yeats and Alexander Pope are in the public domain....
Greg Shatan C: 917-816-6428 <tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428 <tel:(646)%20845-9428> gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com>
On Thu, Apr 20, 2017 at 9:55 AM, John McElwaine <john.mcelwaine@nelsonmullins.com> wrote:
In addition, I believe it is overstating the issue to assume that all domain names are protected speech. As an initial matter, U.S. courts appear to be split on this issue, and furthermore, one needs to look at the domain name to make this determination. For instance, there is a big difference in the expressive nature of <abcd.com[abcd.com] <https://urldefense.proofpoint.com/v2/url?u=http-3A__abcd.com&d=DwMFaQ&c=FmY 1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5c jS_7sB4h6Y&m=bCDwHJ9c8HvqajRo0dYWXiOWLHf3FIlX18-Gs2yoXSs&s=6ocrizQJyAnlqR6w1 7-s11PdAffAdImS8XajwYvbLws&e=> >, as compared with, <thewebsitetoprotestunfairsunriseregistrations.com[thewebsitetoprotestunfair sunriseregistrations.com] <https://urldefense.proofpoint.com/v2/url?u=http-3A__thewebsitetoprotestunfa irsunriseregistrations.com&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl 4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=bCDwHJ9c8HvqajRo0dYWXi OWLHf3FIlX18-Gs2yoXSs&s=_YXnlVWLLlaGShyk-9Vap70ls6nxkoWeedplm5mX_u0&e=> >.
John
From:gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Beckham, Brian Sent: Thursday, April 20, 2017 6:39 AM To: J. Scott Evans <jsevans@adobe.com>; Paul Tattersfield <gpmgroup@gmail.com>; gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period
To add support to J Scott¹s 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 ³cost savings² 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] 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 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> wrote:
I¹m 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 future¹ 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> 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 don¹t 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 TMCH¹s 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 ³the², ³hotel², ³luxury², ³smart², ³one², ³love², and ³flower² 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 disproportionatebut 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 https://eff.org <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protec tion.outlook.com_-3Furl-3Dhttps-253A-252F-252Feff.org-26data-3D02-257C01-25 7C-257C0e18d5b07aea47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c178decee 1-257C0-257C0-257C636282416004172724-26sdata-3DLCpvg6fU-252FXkpw1fmAH8KzPJD WABttoqafNYeotxdCiQ-253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDOxOwKrAjW7m WovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=0BR4m_4 UuTrbwX27PjR5nOwWB8isVOX2a3mrks6Ng-0&s=k7ODBCCErf9pQH25bKUJ1_8D4_De4J9UwNPd pJ5tedY&e=> jmalcolm@eff.org
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Hello and sorry for the confusion; what I'd meant to say was that we had asked for proposals that addressed the specific open questions about the TMCH (questions 7, 8, 10). Since Jeremy's seemed more general and directly addressed sunrise, staff has referred the question (of whether WG consideration of that proposal should be deferred or if it should be referred to the sunrise sub team etc) to the cochairs for their views. Cheers Mary Sent from a mobile phone, sorry for any errors and brevity. On Apr 21, 2017, at 07:18, Paul Keating <Paul@law.es<mailto:Paul@law.es>> wrote: Mary, I was also confused. Does this mean that the issue is being deferred along with the other relevant questions to which it relates? Paul From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Date: Thursday, April 20, 2017 at 9:36 PM To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> Cc: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period Mary, Thanks. I'm not sure what that means, but I'll wait to see what the co-chairs say. Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Thu, Apr 20, 2017 at 3:32 PM, Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Hello Greg and everyone, As the call for proposals was intended to solicit recommendations that address the open questions on the TMCH structure and scope (Questions 7, 8 and 10) the potential overlap with a Sunrise discussion has been noted for the co-chairs. Cheers Mary From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Date: Thursday, April 20, 2017 at 11:47 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period Co-chairs, all: Before responding to the substance, isn't this a premature submission? First, it seemed clear that we were asked to submit proposals regarding the Trademark Clearinghouse itself -- not RPMs such as Sunrise, Claims, etc. Second, it seemed clear that the proposals should be specific to the four TMCH questions still open: 7 (TMCH handling of design marks), 8 (TMCH handling of geographical indications, protected designations/appellations of origin), 10 (retaining, modifying or expanding TMCH matching rules) and 15 (confidentiality/privacy of TMCH Database). All other TMCH questions "either been deferred for further review following the Working Group’s discussion of Sunrise and Claims Notifications, or agreed as not requiring further discussion at this time." I see that the proposal comes from someone who just joined the group as a member, so perhaps they were simply ignorant of the requirements. However, it's my understanding that when you join a WG midstream, you need to get familiar with the WG's prior work and you can't reopen a prior WG decision unless you have significant new information. I appreciate the "passionate intensity" that causes one to "rush in."* But I think we have enough on our hands in dealing with the proposals that are on-topic. Also, didn't we just set up 3 subgroups for the next module of WG work -- including one to deal with Sunrise (the subject of this submission)? The subgroups' work is just beginning, while we wrap up our TMCH module. Discussing Sunrise here and now in the full WG seems to thwart our work plan. As such, it seems that consideration of this submission needs to be deferred until the Sunrise Subgroup reports back to the WG, referred to that subgroup, withdrawn, or rejected. If the co-chairs decide to move forward in the full WG now, I think they have to do the following as well: * Keep the proposal submission window open for another 2-3 weeks, so that other WG members can submit proposals on other Phase One topics aside from the TMCH -- Sunrise, Claims, URS, and other proposed/potential RPMs (i.e., everything but UDRP). * Suspend the work of the Subgroups so that we are not working on two tracks. * Suspend discussion of this proposal until other Sunrise proposals are received, so they can be discussed together. If the co-chairs decide to move forward on this, I'll respond on substance. But I'll hold off for now, since I don't want to clog the email list with off-topic submissions. However, if the discussion just moves forward, I'll have to jump in so I don't miss the chance to contribute to the discussion. Expectantly, Greg * Note that the works of W.B. Yeats and Alexander Pope are in the public domain.... Greg Shatan C: 917-816-6428<tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428> gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Thu, Apr 20, 2017 at 9:55 AM, John McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>> wrote: In addition, I believe it is overstating the issue to assume that all domain names are protected speech. As an initial matter, U.S. courts appear to be split on this issue, and furthermore, one needs to look at the domain name to make this determination. For instance, there is a big difference in the expressive nature of <abcd.com[abcd.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__abcd.com&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=bCDwHJ9c8HvqajRo0dYWXiOWLHf3FIlX18-Gs2yoXSs&s=6ocrizQJyAnlqR6w17-s11PdAffAdImS8XajwYvbLws&e=>>, as compared with, <thewebsitetoprotestunfairsunriseregistrations.com[thewebsitetoprotestunfairsunriseregistrations.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__thewebsitetoprotestunfairsunriseregistrations.com&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=bCDwHJ9c8HvqajRo0dYWXiOWLHf3FIlX18-Gs2yoXSs&s=_YXnlVWLLlaGShyk-9Vap70ls6nxkoWeedplm5mX_u0&e=>>. John From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Beckham, Brian Sent: Thursday, April 20, 2017 6:39 AM To: J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>>; Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period 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 https://eff.org<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Feff.org-26data-3D02-257C01-257C-257C0e18d5b07aea47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636282416004172724-26sdata-3DLCpvg6fU-252FXkpw1fmAH8KzPJDWABttoqafNYeotxdCiQ-253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=0BR4m_4UuTrbwX27PjR5nOwWB8isVOX2a3mrks6Ng-0&s=k7ODBCCErf9pQH25bKUJ1_8D4_De4J9UwNPdpJ5tedY&e=> jmalcolm@eff.org<mailto:jmalcolm@eff.org> Tel: 415.436.9333 ext 161<tel:(415)%20436-9333> :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fwww.eff.org-252Ffiles-252F2016-252F11-252F27-252Fkey-5Fjmalcolm.txt-26data-3D02-257C01-257C-257C0e18d5b07aea47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636282416004172724-26sdata-3DL5mf1H52yrjTzEUH1k0ZD7QleNH6oCdZhT3B7-252FDCW1Y-253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=0BR4m_4UuTrbwX27PjR5nOwWB8isVOX2a3mrks6Ng-0&s=NJwl9YsuYqiLEMKMhSYy7fxrJOl1OckjOHw-cFVpg-I&e=> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fmm.icann.org-252Fmailman-252Flistinfo-252Fgnso-2Drpm-2Dwg-26data-3D02-257C01-257C-257C0e18d5b07aea47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636282416004182733-26sdata-3DfZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8-253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=0BR4m_4UuTrbwX27PjR5nOwWB8isVOX2a3mrks6Ng-0&s=cIC2UBz3o_1bZxjHjx4pIGYYg6_R_EpFRKaEmSapeMs&e=> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C0e18d5b07aea47943d4408d4877c75c3%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636282416004182733&sdata=fZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8%3D&reserved=0<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fmm.icann.org-252Fmailman-252Flistinfo-252Fgnso-2Drpm-2Dwg-26data-3D02-257C01-257C-257C0e18d5b07aea47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636282416004182733-26sdata-3DfZ88VMsRjujGitQovRkGfOctUusd1sufOBNGSw97Kn8-253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=0BR4m_4UuTrbwX27PjR5nOwWB8isVOX2a3mrks6Ng-0&s=cIC2UBz3o_1bZxjHjx4pIGYYg6_R_EpFRKaEmSapeMs&e=> World IP Day 2017 – Join the conversation Web: www.wipo.int/ipday[wipo.int]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_ipday&d=DwM...> Facebook: www.facebook.com/worldipday[facebook.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.facebook.com_worldip...> World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. 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Ok than ks From: Mary Wong <mary.wong@icann.org> Date: Friday, April 21, 2017 at 1:56 PM To: Paul Keating <paul@law.es> Cc: Greg Shatan <gregshatanipc@gmail.com>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [Ext] Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period
Hello and sorry for the confusion; what I'd meant to say was that we had asked for proposals that addressed the specific open questions about the TMCH (questions 7, 8, 10). Since Jeremy's seemed more general and directly addressed sunrise, staff has referred the question (of whether WG consideration of that proposal should be deferred or if it should be referred to the sunrise sub team etc) to the cochairs for their views.
Cheers Mary
Sent from a mobile phone, sorry for any errors and brevity.
On Apr 21, 2017, at 07:18, Paul Keating <Paul@law.es> wrote:
Mary,
I was also confused. Does this mean that the issue is being deferred along with the other relevant questions to which it relates?
Paul
From: <gnso-rpm-wg-bounces@icann.org> on behalf of Greg Shatan <gregshatanipc@gmail.com> Date: Thursday, April 20, 2017 at 9:36 PM To: Mary Wong <mary.wong@icann.org> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period
Mary,
Thanks. I'm not sure what that means, but I'll wait to see what the co-chairs say.
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com>
On Thu, Apr 20, 2017 at 3:32 PM, Mary Wong <mary.wong@icann.org> wrote:
Hello Greg and everyone,
As the call for proposals was intended to solicit recommendations that address the open questions on the TMCH structure and scope (Questions 7, 8 and 10) the potential overlap with a Sunrise discussion has been noted for the co-chairs.
Cheers Mary
From: <gnso-rpm-wg-bounces@icann.org> on behalf of Greg Shatan <gregshatanipc@gmail.com> Date: Thursday, April 20, 2017 at 11:47 To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period
Co-chairs, all:
Before responding to the substance, isn't this a premature submission?
First, it seemed clear that we were asked to submit proposals regarding the Trademark Clearinghouse itself -- not RPMs such as Sunrise, Claims, etc.
Second, it seemed clear that the proposals should be specific to the four TMCH questions still open: 7 (TMCH handling of design marks), 8 (TMCH handling of geographical indications, protected designations/appellations of origin), 10 (retaining, modifying or expanding TMCH matching rules) and 15 (confidentiality/privacy of TMCH Database). All other TMCH questions "either been deferred for further review following the Working Group¹s discussion of Sunrise and Claims Notifications, or agreed as not requiring further discussion at this time."
I see that the proposal comes from someone who just joined the group as a member, so perhaps they were simply ignorant of the requirements. However, it's my understanding that when you join a WG midstream, you need to get familiar with the WG's prior work and you can't reopen a prior WG decision unless you have significant new information. I appreciate the "passionate intensity" that causes one to "rush in."* But I think we have enough on our hands in dealing with the proposals that are on-topic.
Also, didn't we just set up 3 subgroups for the next module of WG work -- including one to deal with Sunrise (the subject of this submission)? The subgroups' work is just beginning, while we wrap up our TMCH module. Discussing Sunrise here and now in the full WG seems to thwart our work plan.
As such, it seems that consideration of this submission needs to be deferred until the Sunrise Subgroup reports back to the WG, referred to that subgroup, withdrawn, or rejected.
If the co-chairs decide to move forward in the full WG now, I think they have to do the following as well: * Keep the proposal submission window open for another 2-3 weeks, so that other WG members can submit proposals on other Phase One topics aside from the TMCH -- Sunrise, Claims, URS, and other proposed/potential RPMs (i.e., everything but UDRP). * Suspend the work of the Subgroups so that we are not working on two tracks. * Suspend discussion of this proposal until other Sunrise proposals are received, so they can be discussed together. If the co-chairs decide to move forward on this, I'll respond on substance. But I'll hold off for now, since I don't want to clog the email list with off-topic submissions. However, if the discussion just moves forward, I'll have to jump in so I don't miss the chance to contribute to the discussion.
Expectantly,
Greg
* Note that the works of W.B. Yeats and Alexander Pope are in the public domain....
Greg Shatan C: 917-816-6428 <tel:(917)%20816-6428> S: gsshatan Phone-to-Skype: 646-845-9428 <tel:(646)%20845-9428> gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com>
On Thu, Apr 20, 2017 at 9:55 AM, John McElwaine <john.mcelwaine@nelsonmullins.com> wrote:
In addition, I believe it is overstating the issue to assume that all domain names are protected speech. As an initial matter, U.S. courts appear to be split on this issue, and furthermore, one needs to look at the domain name to make this determination. For instance, there is a big difference in the expressive nature of <abcd.com[abcd.com] <https://urldefense.proofpoint.com/v2/url?u=http-3A__abcd.com&d=DwMFaQ&c=F mY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7 xb5cjS_7sB4h6Y&m=bCDwHJ9c8HvqajRo0dYWXiOWLHf3FIlX18-Gs2yoXSs&s=6ocrizQJyAn lqR6w17-s11PdAffAdImS8XajwYvbLws&e=> >, as compared with, <thewebsitetoprotestunfairsunriseregistrations.com[thewebsitetoprotestunfa irsunriseregistrations.com] <https://urldefense.proofpoint.com/v2/url?u=http-3A__thewebsitetoprotestun fairsunriseregistrations.com&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms 7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=bCDwHJ9c8HvqajRo 0dYWXiOWLHf3FIlX18-Gs2yoXSs&s=_YXnlVWLLlaGShyk-9Vap70ls6nxkoWeedplm5mX_u0& e=> >.
John
From:gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Beckham, Brian Sent: Thursday, April 20, 2017 6:39 AM To: J. Scott Evans <jsevans@adobe.com>; Paul Tattersfield <gpmgroup@gmail.com>; gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Proposal for the elimination of Sunrise Period
To add support to J Scott¹s 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 ³cost savings² 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] 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 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> wrote:
I¹m 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 future¹ 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> 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 don¹t 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 TMCH¹s 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 ³the², ³hotel², ³luxury², ³smart², ³one², ³love², and ³flower² 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 disproportionatebut 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 https://eff.org <https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.prot ection.outlook.com_-3Furl-3Dhttps-253A-252F-252Feff.org-26data-3D02-257C0 1-257C-257C0e18d5b07aea47943d4408d4877c75c3-257Cfa7b1b5a7b34438794aed2c17 8decee1-257C0-257C0-257C636282416004172724-26sdata-3DLCpvg6fU-252FXkpw1fm AH8KzPJDWABttoqafNYeotxdCiQ-253D-26reserved-3D0&d=DwMGaQ&c=qmi9WrYRGQEDDO xOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1V Ak&m=0BR4m_4UuTrbwX27PjR5nOwWB8isVOX2a3mrks6Ng-0&s=k7ODBCCErf9pQH25bKUJ1_ 8D4_De4J9UwNPdpJ5tedY&e=> jmalcolm@eff.org
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I don't support eliminating the sunrise process. I suspect that most registries would do it anyway, so not worth having a huge debate on the proposal. Jon
On Apr 19, 2017, at 2:56 PM, Jeremy Malcolm <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 https://eff.org <https://eff.org/> jmalcolm@eff.org <mailto:jmalcolm@eff.org>
Tel: 415.436.9333 ext 161
:: Defending Your Rights in the Digital World ::
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Maybe just remove the requirement, but not the ability? Volker Am 21.04.2017 um 17:20 schrieb Jon Nevett:
I don't support eliminating the sunrise process. I suspect that most registries would do it anyway, so not worth having a huge debate on the proposal. Jon
On Apr 19, 2017, at 2:56 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 https://eff.org jmalcolm@eff.org
Tel: 415.436.9333 ext 161
:: Defending Your Rights in the Digital World ::
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-- Bei weiteren Fragen stehen wir Ihnen gerne zur Verfügung. Mit freundlichen Grüßen, Volker A. Greimann - Rechtsabteilung - Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net Web: www.key-systems.net / www.RRPproxy.net www.domaindiscount24.com / www.BrandShelter.com Folgen Sie uns bei Twitter oder werden Sie unser Fan bei Facebook: www.facebook.com/KeySystems www.twitter.com/key_systems Geschäftsführer: Alexander Siffrin Handelsregister Nr.: HR B 18835 - Saarbruecken Umsatzsteuer ID.: DE211006534 Member of the KEYDRIVE GROUP www.keydrive.lu Der Inhalt dieser Nachricht ist vertraulich und nur für den angegebenen Empfänger bestimmt. Jede Form der Kenntnisgabe, Veröffentlichung oder Weitergabe an Dritte durch den Empfänger ist unzulässig. Sollte diese Nachricht nicht für Sie bestimmt sein, so bitten wir Sie, sich mit uns per E-Mail oder telefonisch in Verbindung zu setzen. -------------------------------------------- Should you have any further questions, please do not hesitate to contact us. Best regards, Volker A. Greimann - legal department - Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net Web: www.key-systems.net / www.RRPproxy.net www.domaindiscount24.com / www.BrandShelter.com Follow us on Twitter or join our fan community on Facebook and stay updated: www.facebook.com/KeySystems www.twitter.com/key_systems CEO: Alexander Siffrin Registration No.: HR B 18835 - Saarbruecken V.A.T. ID.: DE211006534 Member of the KEYDRIVE GROUP www.keydrive.lu This e-mail and its attachments is intended only for the person to whom it is addressed. Furthermore it is not permitted to publish any content of this email. You must not use, disclose, copy, print or rely on this e-mail. If an addressing or transmission error has misdirected this e-mail, kindly notify the author by replying to this e-mail or contacting us by telephone.
On 21/4/17 8:22 am, Volker Greimann wrote:
Maybe just remove the requirement, but not the ability? Volker
That would be a great start. -- Jeremy Malcolm Senior Global Policy Analyst Electronic Frontier Foundation https://eff.org jmalcolm@eff.org Tel: 415.436.9333 ext 161 :: Defending Your Rights in the Digital World :: Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122
participants (17)
-
Ariel Manoff -
Beckham, Brian -
Greg Shatan -
icannlists -
J. Scott Evans -
Jeremy Malcolm -
John McElwaine -
Jon Nevett -
Kurt Pritz -
Mary Wong -
Michael Graham (ELCA) -
Nahitchevansky, Georges -
Paul Keating -
Paul Tattersfield -
Phil Corwin -
Reg Levy -
Volker Greimann