Sunrise Recommendation #7

The Working Group recommends that the next version of the Applicant Guidebook (AGB) for future new gTLDs be amended as follows:

  1. The new version of the AGB should include the TMCH dispute resolution procedure for challenging the validity of trademark recordals entered into the TMCH. This procedure is currently published at: https://www.trademark-clearinghouse.com/dispute#3.3. ICANN org should ensure that its contract for the provision of TMCH services makes the operation of the TMCH dispute resolution procedure a requirement for the TMCH Validation Service Provider.
  2. Section 6.2.4 of the current Trademark Clearinghouse Model of Module 5 of the AGB must be amended to remove grounds (i) and (iii).
  3. The Trademark Clearinghouse Model of Module 5 of the AGB must be amended to include a new Section 6.2.6 – “The Registry Operator will, upon receipt from the TMCH of a finding that a Sunrise registration was based upon an invalid TMCH record (pursuant to a TMCH dispute resolution procedure), immediately delete the domain name registration. Registry Operators in their applicable SDRPs will describe the nature and purpose of the TMCH challenge process and provide a link to the TMCH for reference.” 

  

Note: Registry Operators should continue to have the option to offer a broader SDRP to include optional/additional Sunrise criteria as desired.


Context: 

The Sunrise Dispute Resolution Policy (SDRP)[1] is a mechanism that a Registry Operator must provide to resolve disputes regarding its registration of Sunrise Registrations. According to the Section 6.2.2 and 6.2.4 of the Trademark Clearinghouse Model of Module 5[2] of the Applicant Guidebook (AGB), the SDRP allows challenges to Sunrise Registrations related to Registry Operator’s allocation and registration policies on four non-exhaustive grounds, including on the grounds that the registered domain name does not identically match the Trademark Record on which the Sunrise-Eligible Rights Holder based its Sunrise Registration.


The Working Group had difficulty determining whether SDRPs are serving the purpose(s) for which they were created, as each TLD has its own SDRP and there is hardly any analysis of the SDRP decisions across all new gTLDs. 


However, the Working Group noted that the TMCH dispute procedure was created in the time between when the AGB was written and the TMCH requirements were established. As a result, two of AGB requirements for Registry operating the SDRPs are moot, specifically grounds (i) and (iii) of Section 6.2.4 of the current Trademark Clearinghouse Model of Module 5:

(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. 


The current procedure allows challenges to the recordal of marks in the TMCH that underlie Sunrise registrations. In any event, the Registry Operator is not the best-placed party to adjudicate these challenges due to the fact that the Registry Operator is reliant on trademark eligibility information provided by the TMCH. 


Therefore, this recommendation seeks to eliminate the non-functional parts of the current SDRP requirements and codify the current practice in the next version of the AGB for future new gTLDs. 


In addition, some Working Group members believe that the limited access to the TMCH and the lack of trademark information to identify whether a complaint is well-grounded makes it difficult to challenge a registration via the SDRP. The Working Group deliberated on some additional proposals that sought to address the access to the TMCH, SDRP decisions, and domain names registered during the Sunrise Period. None of these proposals received wide support for inclusion in the Initial Report for public comment. 



[1] Section 6.2.2 of the Trademark Clearinghouse Model of Module 5 of the Applicant Guidebook states the following: “Sunrise Registration Process. For a Sunrise service, sunrise eligibility requirements (SERs) will be met as a minimum requirement, verified by Clearinghouse data, and incorporate a Sunrise Dispute Resolution Policy (SDRP).” Section 6.2.4 states the following: “The proposed SDRP must allow challenges based on at least the following four grounds: (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; (ii) the domain name is not identical to the mark on which the registrant based its Sunrise registration; (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; or (iv) the trademark registration on which the domain name registrant based its Sunrise registration did not issue on or before the effective date of the Registry Agreement and was not applied for on or before ICANN announced the applications received.” See pages 296-297 here: https://newgtlds.icann.org/en/applicants/agb/guidebook-full-04jun12-en.pdf

[2]  https://newgtlds.icann.org/en/applicants/agb/trademark-clearinghouse-04jun12-en.pdf