<<Frankly, with all this back and forth, I cannot recall what NEW issues with the current language we are trying to solve for? >> LOL, and thanks for asking, Jeff. Also wishing you and yours -- and everyone celebrating -- a Happy Hanukah! What we are talking about is the reduction of several RPM PDP WG Recommendations into writing. The one below is the deletion of the line segment from 2.3.7, */"and return the domain name to the pool of available names available for registration." (See text below) /* That was certainly the underlying assumption that I, and many, had in the RPM PDP WG while we were writing our recommendations. I'm still surprised to see it is deleted as its side effects influence much and have unintended consequences. Best, Kathy On 12/16/2025 10:12 AM, Jeff Neuman wrote:
Kathy,
I think there are a lot of assumptions being made here. You are assuming that every registry does a Sunrise Auction as opposed to just first come, first served. With how few sunrise registrations there were for almost all registries in the 2012 round, (a) many registries did not do an auction, and (b) even fewer will do it the next time around. It is up to each registry how they want to do Sunrise in terms of the mechanics of first come, first served or auction. The Registries individual policies can address (if they want to) what happens IF there is a Sunrise Auction and it turns out the winner was not a "qualified" applicant. This is not policy we should be setting.
Also, many registries did wait until after Sunrise to put names into their Premium lists. They did not want to get into issues with trademark owners. Sure, some dictionary terms were pulled out of Sunrise in advance, but not all of them. Again, there is no reason we need to get in the middle of that.
Frankly, with all this back and forth, I cannot recall what NEW issues with the current language we are trying to solve for?
On 12/16/2025 9:51:17 AM, Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org> wrote:
Hi Susan,
I greatly appreciate your response and reasoning. This is very valuable. Can we dive a little deeper and look at winners, losers and timeframes, all being codified now?
You write: <<*In making Rec #8 the RPM PDP WG did not seek to override a Registry Operator’s discretion as to how it might categorise such name – general availability, reserved, premium, whatever. During wider discussions in the WG, representatives on the IP side actually argued that there should be greater clarity and potential controls generally over the designation of names by Registry Operators as reserved and premium, without success, so we can be very clear that Rec #8 did not do so.*>>
*/Agreed, but as between one TMCH TM Holder and a second TMCH TM Holder, both engaged in a Sunrise Auction, for example, and the auction loser prevails in a TMCH Third Party challenge, shouldn't he/she/it have the chance to register the domain name? /*They are a) in the TMCH, b) engaged in the Sunrise Auction, c) won TMCH Third Party challenge, and d) still want the domain name (during Sunrise or whatever period we've moved on to.
This seems an odd time to pull the domain name off into a Premium or Reserved List -- wouldn't all of that have been done before Sunrise opened? Where's the equity?
Further, timing: /Could you address that too as you may be closer to this than I am: Why are we writing the timeline into 2.3.7 of the only TMCH dispute that does seems to apply -- when the TMCH rejects a mark initially (not when a Third Party challenges it)?/
"1.2. Scope
The Dispute Resolution Process will only cover three types of disputes:
1. Disputes brought by Trademark Holders or Trademark Agents alleging that the Clearinghouse incorrectly rejected aTrademark Record <https://trademark-clearinghouse.com/glossary/#:~:text=the%20Trademark%20Clea...>; 2. Disputes brought by Third Parties alleging that the Clearinghouse incorrectly accepted a Trademark Record <https://trademark-clearinghouse.com/glossary/#:~:text=the%20Trademark%20Clea...>; and 3. Disputes brought by Third Parties alleging that aTrademark Record <https://trademark-clearinghouse.com/glossary/#:~:text=the%20Trademark%20Clea...> is no longer valid based on new information (i.e. information not available to the Verification Provider at the time it reviewed theTrademark Record <https://trademark-clearinghouse.com/glossary/#:~:text=the%20Trademark%20Clea...>)"
-------------------------
*60 days does not make apply to either Dispute #2 or #3, the only ones that seems to be implicated in the 2.3.7 language. *
Tx for the discussion! Best, Kathy
On 12/16/2025 8:54 AM, Susan Payne via SubPro-IRT wrote:
Hi all, hi Kathy
Kathy, I think you are somewhat misremembering the reason that we created RPMs PDP Sunrise Recommendation #8 (Rec #8). The background to and purpose of this recommendation was to _move the venue_ for a sunrise registration challenge process based on an alleged invalid Trademark Record from the Registry Operator to the Trademark Clearinghouse.
In the 2012 Round, there already was a requirement that sunrise registrations could be challenged on the following grounds, that:
(i)at time the challenged domain name was registered, the registrant did not hold a trademark registration of national effect (or regional effect) or the trademark had not been court-validated or protected by statute or treaty; …
(iii) the trademark registration on which the registrant based its Sunrise registration is not of national effect (or regional effect) or the trademark had not been court-validated or protected by statute or treaty.
Responsibility for managing such challenges was imposed on the Registry Operator. The RPM PDP WG agreed that the Registry Operator is not in fact the best placed to handle such challenges, recognised that the TMCH provider also handled such challenges, and so Rec #8 (1) removes that responsibility from the Registry Operator and onto the TMCH Operator, who is much better placed to deal with it, and (2) confirms that, should the challenge succeed then ultimately the sunrise registration would be cancelled.
In making Rec #8 the RPM PDP WG did not seek to override a Registry Operator’s discretion as to how it might categorise such name – general availability, reserved, premium, whatever. During wider discussions in the WG, representatives on the IP side actually argued that there should be greater clarity and potential controls generally over the designation of names by Registry Operators as reserved and premium, without success, so we can be very clear that Rec #8 did not do so.
For the avoidance of doubt, in case others misread it, as I initially did, the language in numbered paragraph 1 below that you have in bold, italics, underlined and quotation marks is not language from Rec #8 and, as I explain above, this is not in fact what the RPMs WG expected or intended. To save others having to locate it, I’m attaching the full text of Rec #8 plus the context and public comment discussion.
I think Antonietta’s responses do indeed put this to bed. The IRT is not a venue for re-litigation.
Susan Payne Head of Legal Policy Com Laude *T* +44 (0) 20 7421 8250 *Ext* 255
/Follow us on//LinkedIn <https://t-uk.xink.io/Tracking/Index/pRkAAGVfAADw_RQA0> //and//YouTube <https://t-uk.xink.io/Tracking/Index/bhkAAGVfAADw_RQA0>/
*From:*Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org> *Sent:* 15 December 2025 23:10 *To:* Antonietta Mangiacotti <antonietta.mangiacotti@icann.org>; subpro-irt@icann.org; Lars Hoffmann <lars.hoffmann@icann.org> *Subject:* [SubPro-IRT] Re: [Ext] Question - TMCH
Hi Antonietta and All,
With all the sad news of the last two days, it is hard to focus on the tasks before us. But like all of us, I believe in New gTLDs and new domain names and spaces for speech that will be created within them around the world. I hope that speech helps people find ways to come together.
To that end, I raise concerns about language being proposed. /As Co-Chair of the RPM PDP WG, we created the Sunrise Recommendation #8 for a reason, and that reason is being removed by the new language being proposed./ I must raise objections because our job is to deal with the RPM WG policy recommendations now.
Antonietta, you were an incredible RPM IRT Staff Member and we all appreciated your hard work on the implementation of our TMCH and Sunrise recommendations. Thank you for your long email, and let me respond so we have everything laid out for tomorrow:
1) “Excerpted Redline of Trademark Clearinghouse Rights Protection Mechanism Requirements – Sections 2.3.6 and 2.3.7 – For Discussion Purposes”
/It’s unclear where the circulated draft came from, but the initial language was exactly what the RPM PDP WG believed should happen when Sunrise Rec #8 was adopted:/ */If a Sunrise Registration is based on an invalid TMCH registration and it’s successfully challenged, then _“the Registry Operator shall delete such Sunrise Registration, and return the domain name to the pool of available names available for registration.”_/*
/That’s the only way that Sunrise Recommendation #8 makes sense: “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.” [RPM PDP Final Report]/
Thus, in Rec#8, we allowed room for third parties – other TM owners in the TMCH or others – to challenge a TM in the Clearinghouse quickly and fairly – for the purpose of opening up that domain name to other uses – returning it to the pool of available-names for registration.
-Challenges discussed in the TMCH Dispute Resolution Procedures include another TMCH registrant (we know there are multiple registrations for the same word in the TMCH) and others party with a direct connection to or interest in that word.
*/That's why a Third Party would go through the cost of challenging an accepted TMCH record and bringing to light "new information" about a TMCH record -- because they are interested in the domain name themselves. (TMCH Disputes 3.3 and 3.4, /*https://trademark-clearinghouse.com/dispute-resolution-procedures/*/)./*
Note: While I understand that Registries want to reserve names and have the right to do so, that time comes earlier – see e.g., “/Qualified Launch Program(QLP): A mechanism available in the New Generic Top-Level Domain Program (New gTLD Program) that allows a registry operator (RO) to register a limited number of domain names to third parties before the Sunrise Period begins./” [ICANN Acronyms & Terms]**
*2)**Which leads us to TMCH Dispute Resolution Procedures and which ones apply here.*
Antonietta, there are three (3) TMCH Dispute Resolution Procedures – and the drafted section references the first one. Only the 2^nd and 3^rd ones apply here.
As we see in 1.2, Scope, there is a dispute process for TM Holders or TM Agents “alleging that the Clearinghouse incorrectly rejected a Trademark Record.” That dispute must be filed in 60 days. Section 3.2, https://trademark-clearinghouse.com/dispute-resolution-procedures/*/)./*
*/ But we are talking about Challenges to the TM Record brought by Third Parties and they are much faster:/*
-“Disputes brought by Third Parties alleging that the Clearinghouse incorrectly accepted a Trademark Record” (3.1(2)) is laid out in 3.3. This is exactly for when “two TM Holders have the same Trademark Record” and both want the Sunrise registration (3.3).
-“Dispute brought by Third Parties alleging that a Trademark Record is no longer valid based on new information” (3.1(3) is laid out in 3.4.
-*/In both cases, The Dispute Procedure is quite fast: / *
oAfter filing, the TM Holder or TM Agent have five (5) days to respond.
o“The Review Panel will examine the Dispute and made a decision within ten (10) calendar days (or if during the Early Bird Registration, within fifteen (15) calendar days.” (3.4.2).
oThus in a total of 15-20 days, the decision is made, and the TMCH has three days to implement.
3)3) No second bites at the apple. If the Third Party challenge is successful, the domain name should be returned to the pool of available names within 18-23 days – and allows for a second registration during Sunrise, or later in Landrush or General Availability.
Best, Kathy
On 12/11/2025 3:54 PM, Antonietta Mangiacotti wrote:
Dear Kathy,
Thank you for your input. We believe the responses provided below address your questions. As we are in the process of finalizing the TMCH Requirements, which we are aiming to post for public comment next week, we encourage you to submit any additional feedback through that public comment process.
*1) *The 60-day requirement added in Section 2.3.7(B) comes from the TMCH Dispute Resolution Procedure <https://trademark-clearinghouse.com/dispute-resolution-procedures/#3.3> and reflects the window during which a Sunrise registrant may challenge a TMCH finding that their Sunrise registration was based on an invalid TMCH record. In such cases, the domain name must be suspended consistent with Sunrise Final Recommendation <https://gnso.icann.org/sites/default/files/file/field-file-attach/rpm-phase-...> #8, meaning it will not resolve in the DNS during that 60-day period. The name will be restored only if the challenge is successful. Additionally, under the TMCH DRP, the TMCH Review Panel generally issues a decision within 7 calendar days (or 15 days during the Early Bird Registration period). To improve clarity regarding the 60-day requirement, ICANN org will consider adding further explanation in an FAQ or other educational materials.
*2)*As explained above, the 60-day period referenced in the Section 2.3.7(B) is the filing window for a Sunrise registrant to submit a challenge of a finding under the TMCH DRP. Consistent with Sunrise Final Recommendation #8, the Registry Operator will immediately suspend a Sunrise Registration upon notice from the TMCH that the underlying Trademark Record is invalid, to allow the Sunrise registrant to challenge the determination. Section 2.3.7(B) provides that once a challenge by the Trademark Holder or Trademark Agent concludes, the registry operator shall delete the Sunrise Registration. Following the SubPro IRT discussions on the list, ICANN org proposes updating Section 2.3.7(B) to add “*whichever is later*” to the clause:
/“…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.” /
The addition of “*whichever is later*” ensures that if the challenge process extends beyond 60 days, the registry waits until the challenge is completed before taking action.
*3)*We are proposing to remove the phrase “*/and return the domain name to the pool of available names available for registration/*” from the end of Section 2.3.7 because including it would create a new obligation for registries by preventing them from reserving the domain name. Registries currently have the discretion to reserve a domain name. Section 2.3.7 already states that the domain name will be deleted if the Sunrise Registration remains invalid following either sixty (60) calendar days after such Sunrise Registration was deemed invalid or the conclusion of a challenge by the Trademark Holder. After the deletion, it is up to the Registry Operator to decide whether to reserve the domain name or not. Adding language that requires returning the domain name to the available pool would impose an unintended and additional obligation on registries, and it is not mandated by Sunrise Final Recommendation <https://gnso.icann.org/sites/default/files/file/field-file-attach/rpm-phase-...> #8.
Thank you again for your input. We appreciate your engagement and encourage you to submit any additional feedback during the upcoming public comment period on the TMCH Requirements.
Best,
Antonietta
*From: *Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org> <mailto:subpro-irt@icann.org> *Reply-To: *Kathy Kleiman <Kathy@KathyKleiman.com> <mailto:Kathy@KathyKleiman.com> *Date: *Tuesday, December 9, 2025 at 11:01 PM *To: *"subpro-irt@icann.org" <mailto:subpro-irt@icann.org> <subpro-irt@icann.org> <mailto:subpro-irt@icann.org>, Lars Hoffmann <lars.hoffmann@icann.org> <mailto:lars.hoffmann@icann.org> *Subject: *[SubPro-IRT] Re: [Ext] Question - TMCH
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.)
`v 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> <mailto:Kathy@KathyKleiman.com> *Date: *Tuesday, 9 December 2025 at 10:09 *To: *Lars Hoffmann <lars.hoffmann@icann.org> <mailto: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
1. Welcome and SOI 2. Surplus/Deficit Discussion (see attached paper) 3. AGB Updates 4. 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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