2019-03-11 ICANN64 Kobe - Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP WG

Slides: RPM PDP WG Session1-ICANN64-10Mar2019-FINAL.pdf

Transcripts: RPM PDP WG Sunrise Sub Team Transcript 10 March 2019.pdf; RPM PDP WG Sunrise Sub Team Transcript 11 March 2019.pdf; RPM PDP WG TM Claims Sub Team Transcript 11 March 2019.pdf

AGENDA – Session 3 - Sunrise Sub Team Meeting (12:15-13:15)

1. Review Agenda/Updates to Statements of Interest (SOIs)

2. Timeline

3. Begin Discussion and Development of Preliminary Recommendations

4. AOB

AGENDA – Session 4 - Trademark Claims Sub Team Meeting (13:30-15:00)

1. Review Agenda/Updates to Statements of Interest (SOIs)

2. Timeline

3. Begin Discussion and Development of Preliminary Recommendations

4. AOB

Actions & Notes – Sessions 2 & 3:

1. Continued WG Discussion:

-- Not allow additional comments in or additional proposals in after the sub teams because points could be reopened and re-litigated by these new proposals.

-- For the individual proposals the actual deadline is March 27.  And the sub teams aren't going to have the completed development of preliminary recommendations until April 3 and those individual proposals aren't even going to be reviewed until April 10. 

-- That is the individual proposals, not the sub team proposals (preliminary recommendations). 

Not a subsequent bite at proposals. The timing problem was an interesting one because we did want the individual proposals to come through the sub teams before they disbanded. And they disband upon delivery of their recommendations up to the sub team.

-- Staff will resend the proposed process.

 

2. Sunrise Sub Team Meeting:

 

Question 7:

(a)  Can SMD files be used for Sunrise Period registrations after they have been canceled or revoked?

(b)  How prevalent is this as a problem?

Tentative Preliminary Recommendation: Suggestion is that the answer is “no”.  The SMD file cannot be used for Sunrise Period registrations after being canceled or revoked and this problem is not prevalent.

Discussion:

-- Start with Question 7.

-- The first part of this question, Part A, is yes based on what we've seen because the onus is on the trademark holder to inform the Trademark Clearinghouse of the revocation or the cancellation then we can reasonably conclude that SMD files can be used for Sunrise periods even though they shouldn't.

-- How prevalent is this as a problem? Don’t have much data.

-- Question is about what happens if a trademark is abandoned and how do we ensure that the brand owner (former brand owner) isn’t misusing the SMD file?

-- Concern that SMD files could be canceled, revoked but trademark owners could try to use them.

-- Don’t think we can say that the problem is prevalent.

-- Note that it’s bifurcated – both about the SMD file and the trademark.

-- There’s already a solution to this problem.

-- Is the country and trademark registration part of the SMD file?  There’s an FAQ on the TMCH web page that the first five lines are human readable.  Other than the mark the SMD file does not contain human readable information about the file.

-- So to question 7 it’s whether an SMD file can be used to register in Sunrise after the SMD file has been canceled or revoked.

-- Second question is about the trademark – if the trademark underlying an SMD file is abandoned can the SMD file be used to do a Sunrise registration filing?  We looked and when the trademark dies the SMD file dies.

-- The second part of the question is whether this is a prevalent problem and we’re hearing no.  So, our answer to the question should be no.

 

Question 1:

(a)  Should the availability of Sunrise registrations only for identical matches be reviewed?

(b)  If the matching process is expanded, how can Registrant free expression and fair use rights be protected and balanced against trademark rights?

Tentative Preliminary Recommendation: Suggestion is that the answer is “no”.  The availability of Sunrise registrations only for identify matches should not be reviewed and the matching process should not be expanded.

Discussion:

-- Based on the data the answer to (a) would be no and thus (b) does not require an answer.

-- We need to answer the charter question, which - and I think the answer to the question is no, we should not be reviewing the availability of Sunrise registrations only for identical matches, which means there's no - we don't need to answer Question B and that there - and that there's no preliminary recommendation that comes out of this question. So I think that is the end result of this.

-- But good to make a recommendation, even if it is not to change the status quo.

 

Session 3 – 11 March 2019

Question 2:

(Threshold question: Is Registry pricing within the scope of the RPM WG or ICANN's review?)

(a)  Does Registry Sunrise or Premium Name pricing practices unfairly limit the ability of trademark owners to participate during Sunrise?

(b)  If so, how extensive is this problem?

Tentative Preliminary Recommendation: Not at this time.  Continue the discussion at the next meeting and also in relation to question 3.

Discussion:

-- Data speaks to this.

-- Possible answer: Registry pricing may not specifically be in the scope, but we could address it to put it before the SubPro WG.  Based on the data there is evidence that pricing practice do unfairly limit the ability of trademark owners to participate during Sunrise.

-- Key part of sub question (a) is the word “unfairly” – is it a fair economic model.  Need to distinguish between premium pricing that could be legitimate.  There were limited responses so not a representative sample. 

-- The key thing is whether the pricing is discriminatory against brand owners compared to other categories.   Address abusive pricing models. 

-- Pricing is outside the scope of the RPM WG (per at least one Sub Team member).

-- Not sure if the use of the term “discriminatory” is quite accurate.   Challenging to define “unfairly” because that suggests that there is “fair” pricing.

-- Instances where high prices were put on well-known brands.  Maybe discussing targeted pricing that is aimed not a high-value generics, but to those with brand value.

-- Pricing per se is outside of scope, but it’s about where pricing was fixed in a way to circumvent the rights protection mechanism – such as adopting very high prices only during the Sunrise period.  There were some examples of that.

-- There were examples of clients who were told that their name was a well-known brand so the price was higher as the name was on the premium list.

-- On discrimination it is worth noting that is you have well-known brands they can afford to pay more.  If you talk about unfairly limiting Sunrise, the question is does it preclude participation.

-- Pricing is always going to impact levels of participation.

-- From the registry operators’ point of view it is expected that people would try this – pricing almost becomes a negotiation. 

-- Economic decision to put it into Sunrise depending on the pricing.  There are other RPMs to deal with abuses.

-- Examples: 1) pricing at different levels depending on the brand, 2) all pricing is high in Sunrise, or 3) pricing drops for certain names outside of Sunrise.

-- Suggesting that a brand can afford so why not charge it seems abusive.  Does seem to interfere with Sunrise.

-- To what extent does this happen?  Is there really a problem?  Not sure if the data backs this up.

-- We can agree that registries should be able to use pricing to circumvent RPMs.  There are contractual restrictions on abusive pricing – pricing uniformity.  We could refer this to SubPro.

-- What should we recommend?  Pricing caps for different brands/value of words?  How to determine the value?  Could be very complex and impractical.  Or could just suggest a more high-level recommendation.

-- Re: Spec 11, Section 2.10(c) of the RA states “The parties acknowledge that the purpose of this Section 2.10(c) is to prohibit abusive and/or discriminatory Renewal Pricing practices imposed by Registry Operator without the written consent of the applicable registrant at the time of the initial registration of the domain and this Section 2.10(c) will be interpreted broadly to prohibit such practices.”  From the PIC: “Registry Operator will operate the TLD in a transparent manner consistent with general principles of openness and non-discrimination by establishing, publishing and adhering to clear registration policies.”

-- Note that Questions 2 and 3 are related.

-- Sunrise if for Trademarks – not competing with other identifiers in this period.  So, we could be singling out certain marks, and the other is the pricing practices.

-- Data in INTA and AG surveys – responses from TM and Brand owners indicated that they thought the problem was extensive.

-- Not sure we are able to answer the question – not sure we have the data to answer “yes” in a helpful way except that it has the ability to limit TM owners from participating in Sunrise – but is this “unfairly” limiting?

-- If we look to the preamble question – whether Sunrise is achieving its purpose – and this question in that context.

Actions & Notes – Sessions 4:

Question 1:

Is the Trademark Claims service having its intended effect? Consider the following questions specifically in the context both of a Claims Notice as well as a Notice of Registered Name:

(a)  Is the Trademark Claims service having its intended effect of deterring bad-faith registrations and providing Claims Notice to domain name applicants?

(b)  Is the Trademark Claims service having any unintended consequences, such as deterring good-faith domain name applications?

Tentative Preliminary Recommendation: 1(a) Yes it is working.  1(b) general agreement that the language in the notice needs to be revised.

Discussion:

-- Don’t have the data to answer either (a) or (b).

-- Do think it is having its intended effect.

-- On 1(b) – possibly based on the data.  Not sure we have data that one person was deterred, so don’t know that we can answer 1(b).

-- Already agree that the notice needs to be rewritten, without getting too watered down.

-- Is intimidating an unintended consequence?  Depends on what you mean by intimidation.  Is the deterrence appropriate – that you got the correct result.

-- We had some people who got the notice and didn’t proceed.  We did have people who didn’t register but didn’t say it was because of the notice.  Didn’t have anyone who said they were put off by the claims notice.

-- Could agree that some people who might have been good faith registration might not have gone forward.  That the notice wording was not optimal.

-- It is a question of proportionality.  Is the notice having a proportional impact?  Notoriously difficult to measure chilling effects.  Can probably agree that it is happening but not to what extent.

-- Might rewrite as something informational, rather than intimidate.

-- From a registrar standpoint any extra click is bad.

-- Second part of question 1(a) is easy – providing Claims Notice to domain name applicants.  Not sure we can answer the first part.  For 1(b) the answer seems to be yes.

-- Maybe rewrite the notice to be an informative thing so that they can make their own decisions.

-- Final report of the Analysis Group that people are getting the notices on dictionary words.  Seems to support 1(b) as “yes” that it is having unintended consequences and deterring good-faith domain name registrations.

-- On proportionality and the next round, there are likely to be more niche extensions where there might be lower likelihood of cybersquatting.

Michael Graham: Comment:  <<I believe our discussions, experience and evidence before us suggest we answer:  a) Yes, and b) No evidence other than that there may be some misunderstanding of the Notice and scope of TM rights.>>

Michael Graham: Comment:  <<Please note that Question 3 relates to the effect of the Notice -- intimidation.  I do not believe (on reflection) that effectiveness of the Notice is appropriate for the discussion of Question 1 a and b.>>

Question 3(b):

(a) Does the Trademark Claims Notice to domain name applicants meet its intended purpose?

(i) If not, is it intimidating, hard to understand, or otherwise inadequate? If inadequate, how can it be improved?

(ii) Does it inform domain name applicants of the scope and limitations of trademark holders’ rights? If not, how can it be improved?

(iii) Are translations of the Trademark Claims Notice effective in informing domain name applicants of the scope and limitation of trademark holders’ rights?

(b)Should Claims Notifications only be sent to registrants who complete domain name registrations, as opposed to those who are attempting to register domain names that are matches to entries in the TMCH?

Tentative Preliminary Recommendation on Question 3(b): Maintain the current policy – send the Claims Notifications at some point before the domain name registration is completed.

Discussion:

Question 3(b)

-- The notice should be given before the registration – if you do it after you’ve paid for the name you don’t want to find out that it is an infringing name.

-- 48-hour window before general availability, even if accepted the claims notice 3 months prior, but if they don’t accept it again then they lose it.

-- Giving the notice after the registration is completed seems unfair to everybody.

-- Pre-registration is with the registrar, not with the registry.  Other issue is the fast expiration of tokens. 

-- Some registrars may have wanted to do the notice after registration because it was technically easier, but one way to get greater buy-in from registrars if ICANN had an open source registration system they could use.

-- Focus on the policy aspect, not the technical issues – it’s a timing aspect.  If it’s after it doesn’t serve the intended purpose of the notice.

-- We should recommend the policy and let the technical issues work themselves out.

-- Think about what would happen if we gave the notice after.

-- Pre-registration has nothing to do with the claims process.  It also isn’t an ICANN process – it’s a registrar marketing process.

-- Set a high-level policy – customers need to get notice that there might be a claim.  Don’t get into the implementation details.  You could just set a timeframe/window. 

-- One Sub Team member indicated concern with answering 3(b) out of context of 3(a).

-- Note that Sub Team members who are not participating in this meeting will be able to contribute.

-- Can make a recommendation but point out issues that the IRT might want to consider.