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. 

 

 

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:  

o   After 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).

o   Thus 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

 

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 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 #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 #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>
Reply-To: Kathy Kleiman <Kathy@KathyKleiman.com>
Date: Tuesday, December 9, 2025 at 11:01 PM
To: "subpro-irt@icann.org" <subpro-irt@icann.org>, Lars Hoffmann <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>
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

 

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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