Kathy,

Your email is extremely long and I frankly don’t have time to fully respond.

As an initial matter though if Keeping as many domain names in the pool of available names is a priority for you then I can’t understand for the life of me why you would focus on what will prospectively happen in the next round for a few domain names and ignore what is going on in the real world right now with millions of domain names.

That said, you are also ignoring that there are three types of Disputes allowed under the TMCH Dispute Resolution Process:

Disputes brought by Trademark Holders or Trademark Agents alleging that the Clearinghouse incorrectly rejected a Trademark Record;
Disputes brought by Third Parties alleging that the Clearinghouse incorrectly accepted a Trademark Record; and
Disputes brought by Third Parties alleging that a Trademark Record is no longer valid based on new information.

Furthermore, under the TMCH Dispute Rules (https://trademark-clearinghouse.com/dispute-resolution-procedures/), The Dispute must be filed with the Clearinghouse within a period of sixty (60) calendar days after the Trademark Record has been deemed <invalid>. This is the reason for the 60 day window. And if the dispute is filed on day 60, then it may take up to 15 days after that for the determination. Accordingly, it seems that the language should actually be:

Registry Operator will immediately suspend a Sunrise Registration following notice from the Trademark Clearinghouse that the Trademark Record on which the Sunrise-Eligible Rights Holder based its Sunrise Registration was deemed invalid in accordance with the TMCH Dispute Resolution Procedure as set forth at https://trademark-clearinghouse.com/dispute-resolution-procedures/ (as updated from time to time, the “TMCH DRP”) (for purposes of this Section 2.3.7, “suspend” means the EPP status of such Sunrise Registration is set to “serverHold until the Trademark Clearinghouse provides further notice that such Trademark Record (A) has been updated to <verified> in accordance with the TMCH DRP, in which case the Registry Operator shall restore such Sunrise Registration; or (B) remains invalid following either sixty (60) calendar days (or such other period as set forth in the TMCH DRP) after such Sunrise Registration was deemed invalid or the conclusion of a challenge by the Trademark Holder or Trademark Agent (as defined in the TMCH DRP), whichever is later, in which case the Registry Operator shall delete such Sunrise Registration.

Best regards,

Marc H. Trachtenberg
Shareholder

Chair, Internet, Domain Name, e-Commerce and Social Media Practice
Greenberg Traurig, LLP

trac@gtlaw.com | www.gtlaw.com | View GT Biography

From: Kathy Kleiman <Kathy@KathyKleiman.com>
Sent: Wednesday, December 10, 2025 8:34 PM
To: Trachtenberg, Marc H. (Shld-ASP-IP-Tech) <trachtenbergm@gtlaw.com>; subpro-irt@icann.org; Lars Hoffmann <lars.hoffmann@icann.org>
Subject: Re: [SubPro-IRT] Re: [Ext] Question - TMCH

Marc, Thanks for your comments and let me take them in reverse order:

You wrote: <<3. If returning appropriate domain names to the pool of domain names in New gTLDs is a) policy and b) good for Registries, Registrars, Registrants, and ultimately the end users who will use their websites, emails, listservs+, then why are registrars now permitted to interrupt this process by taking over domain names as they expire and monetizing them or selling them at auction instead of following the expiration as set forth in the Expired Domain Deletion Policy? If returning appropriate domain names to the pool of domain names is required by policy and is so important for Registries, Registrars, Registrants, and ultimately the end users (which I agree that it is) then I would suggest that you focus your efforts on this currently existing issue so that it aligns with what you say should be required in the next round of new gTLDs.>>

3) Marc, I can't speak to current practices of taking domain names as they expire, but I can speak to the balance of TM owner and Registrant rights in the Sunrise and General Availability periods of New gTLDs. Keeping as many domain names in the pool of available names was an integral part of the Sunrise registration and the new Sunrise Recommendation #8,which allows for challenging invalid registrations -- so domain name improperly registered can be return to the pool of available names to be accessed by other registrants (including other TM owners).

In the rules created by STI and reviewed by the RPM PDP WG – Phase 1 (I was part of both groups), the Sunrise Period carves out a special registration period of names otherwise available to the public. As we know: “A "Sunrise Period" is a period of at least 30 days during which trademark holders have an advanced opportunity to register domain names corresponding to their marks before names are generally available to the public.” [underline added] https://newgtlds.icann.org/en/about/trademark-clearinghouse/faqs

In the STI and RPM PDP WG, we thought very carefully about both of these groups, TM owners and registrants, and their respective rights, and worked hard to balanced them. In RPM PDP WG – Phase 1, we went further to fix the problem of when a Sunrise registration used an invalid Trademark Clearinghouse registration. We wrote the Sunrise Recommendation #8:

“2.4.3 Sunrise Recommendation to Modify Existing Operational Practice, Sunrise Final Recommendation #8, Agreed Policy Principles: The Working Group agrees that the TMCH dispute resolution procedure should be the primary mechanism for challenging the validity of the Trademark Record on which a registrant based its Sunrise registration… The Working Group therefore recommends that, once informed by the TMCH Validation Provider that a Sunrise registration was based on an invalid Trademark Record (pursuant to a TMCH dispute resolution procedure), the Registry Operator must immediately suspend the domain name registration for a period of time to allow the registrant to challenge such finding using the TMCH dispute resolution procedure.”

The reason to challenge the TMCH Trademark Record is clear – someone wants the domain name and feels they have a better right to it. Challenges include: a) another trademark owner, including one who lost a Sunrise Auction, and then researched and found the winner’s Trademark Record to be invalid and b) a registrant who wants to register the domain name in a New gTLD and found it already registered during Sunrise by someone with an invalid Trademark Record.

In these and other scenarios, the balance of trademark owners and registrants was considered quite carefully, and no other parties were included. The rules are designed to ensure that both groups, Registrants and TM Owners, have access to the domain names of a new gTLD.

- To Marc’s statement, and I think we may agree, if there is a Start Date Sunrise period and the TMCH dispute resolution procedure could be handled quickly enough, then another TM owner in the TMCH could come forward to seek the domain name registration (since it is first-come, first-served for registration);

- If there was a Sunrise Auction, then if things move quickly enough, the other TM owner could now register;

- When the domain name registration is returned to the pool of available names, then it is available for Landrush, and

- If not yet registered, then the domain name is available to the public during General Availability where good publicity will hopefully be bringing many new registrants to registrars seeking these domain names in these exciting new gTLDs.

That's the equation, the balance, the rules and the policies.

From there, the rest flows:

To Mark's points 1 and 2, why rush to complete the TMCH dispute resolution as quickly as possible? First, because resolution seems pretty straightforward: The TM is either valid or it is not and thus the domain name could be returned to the available pool quickly.

Second, as discussed above, there many be other TM owners who want the domain name during Sunrise or other registrants who want it during Landrush or early General Availability -- all happening very quickly at the launch of a New gTLD. It's best to give everyone fair and rapid access to a domain name once it is available. That benefits all.

Best, Kathy

Useful definitions

End Date Sunrise

In this type of Sunrise, the Registry can announce the Sunrise as late as the day the Sunrise starts, but must run the Sunrise for 60 days or more. Trademark owners will have the duration of the Sunrise period to submit a claim for a domain. At the end of the period, all the claims are registered by the Registry and auctions are conducted if there is more than one claim for the same domain. This type of Sunrise has significant benefits for rights holders.

Start Date Sunrise

In this type of Sunrise, the Registry must give 30-days notice before commencing the Sunrise. Once the Sunrise starts, it must run for only 30 days or more. Claims by trademark owners are processed on a first-come-first-served basis, so there is no need for auctions and domains are registered as claims are made during the Sunrise period. This type of Sunrise has so far been very rare among New gTLD strings, and has benefits for Registries while causing concerns for rights holders.^[4]

Sunrise Auction

When two trademark owners both have legitimate claim to a given domain, these domains then go to auction.^[5]

----------------------------------------------------------------------

On 12/10/2025 8:26 AM, trachtenbergm@gtlaw.com wrote:

Several initial comments:

The UDRP routinely takes 60 days or longer from start to finish.

Why is 60 days too long to keep an important (and available) domain name from the public? On what basis are you determining that each of these domain names so important and why is the public harmed by waiting a little longer for any one domain name out of billions of domain names? Do you have any studies or research showing such harm?
If returning appropriate domain names to the pool of domain names in New gTLDs is a) policy and b) good for Registries, Registrars, Registrants, and ultimately the end users who will use their websites, emails, listservs+, then why are registrars now permitted to interrupt this process by taking over domain names as they expire and monetizing them or selling them at auction instead of following the expiration as set forth in the Expired Domain Deletion Policy? If returning appropriate domain names to the pool of domain names is required by policy and is so important for Registries, Registrars, Registrants, and ultimately the end users (which I agree that it is) then I would suggest that you focus your efforts on this currently existing issue so that it aligns with what you say should be required in the next round of new gTLDs

Best regards,

Marc H. Trachtenberg
Shareholder

Chair, Internet, Domain Name, e-Commerce and Social Media Practice
Greenberg Traurig, LLP

trac@gtlaw.com | www.gtlaw.com | View GT Biography

From: Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org>
Sent: Tuesday, December 9, 2025 4:57 PM
To: subpro-irt@icann.org; Lars Hoffmann <lars.hoffmann@icann.org>
Subject: [SubPro-IRT] Re: [Ext] Question - TMCH

*EXTERNAL TO GT*

All, I see three problems with the revisions to 2.3.7 re: Sunrise Registration -- and additions and deletions in (B) make it inconsistent with the language written by the STI, and the review and recommendations of the RPM PDP WG – Phase 1:

1) 60 days is a too long time to allow for a TMCH DRP -- far longer than UDRP and URS response times involving much more difficult responses. I'm sure the TMCH can determine whether a challenged Trademark Record is invalid in a much shorter time – most TM records are online -- and 60 days is too long to keep an important (and available) domain name from the public. [2.3.7 (B)]

2) After the conclusion of a challenge by the TM Holder or TM agent, it appears that everything can linger for 60 days. By the wording, even if the TMCH DRP is concluded or the Sunrise Registration is deemed invalid, whichever path is taken, this section sounds like everyone can wait around a long time and eventually delete the Sunrise Registration. But this is the Internet, and we work quickly. The invalid Sunrise Registration must, of course, be deleted immediately after the challenge is concluded because we’re headed into General Availability and the domain name must be available to the public for registration. [2.3.7 (B)]

3) Which leads us to the surprising deletion at the end of the section: “and return the domain name to the pool of available names available for registration. A Registry Operator may, through the Registry-Registrar Agreement its agreement with registrars, instead require the registrar to perform this implementation step.” This sentence is the whole purpose the section – to return the domain name to the available pool and allow it to be registered by someone who needs and can use it. Sunrise gives TMCH registrants a first right to register in the Sunrise Period, but not a wholesale removal of the domain name from registration.

Of course, domain names, if invalidly registered during the Sunrise Period must be returned to the pool of available names – that’s a key element of the fairness and balance of the TMCH and Sunrise Registration processes; they are limited for a reason. Returning appropriate domain names to the pool of domain names in New gTLDs is a) policy and b) good for Registries, Registrars, Registrants, and ultimately the end users who will use their websites, emails, listservs+. This final sentence is absolutely key to achieving the goals and intents of the RPM PDP WG; to change it is to change policy. (However, if I have misunderstood or misread this deletion, please clarify for me and for all.)

Best, Kathy

On 12/9/2025 1:19 PM, Lars Hoffmann via SubPro-IRT wrote:
Adding the IRT mailing list.

Thank you, Kathy.

Here is the link to the document: https://docs.google.com/document/d/1rDcaY1nPkfwcHpuhI74OY13rp5g99iI2/edit

Best wishes. Lars

From: Kathy Kleiman <Kathy@KathyKleiman.com>
Date: Tuesday, 9 December 2025 at 10:09
To: Lars Hoffmann <lars.hoffmann@icann.org>
Subject: [Ext] Question - TMCH

Hi Lars,

I think we are on a deadline today for TMCH changes/review. Is that right? Could you kindly point me to the right email or date to review it? I've been on a long bit of travel for a workshop and speaking.

Best and tx,
Kathy

On 12/9/2025 11:53 AM, Lars Hoffmann via SubPro-IRT wrote:
Dear IRT members,

For Thursday’s call (11 December, 10:00 UTC), we have the following agenda items

Welcome and SOI
Surplus/Deficit Discussion (see attached paper)
AGB Updates
AOB

Attached you find a paper outlining ICANN’s approach to the surplus/deficit issue. Feel free to review before the call and share any thoughts, questions etc. on-list.

Please note, as mentioned today’s call, the Name Collision procedures will now be covered on a yet-to-be-scheduled call on Tuesday 16 December 2025.

Thank you all and best wishes,
Lars
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