During its meetings on 17 July and 24 July, the RPM WG reviewed and endorsed the Sub Team recommendations, which have incorporated input from WG members.
During its meetings on 10 July and 17 July, the RPM WG reviewed and endorsed the Sub Team recommendations, which have incorporated input from WG members.
Download the consolidated Sunrise & Trademark Claims Proposals submitted by individual working group members here: All_Proposals.pdf
NOTE: None of the Individual Proposal received wide support from the Sub Teams for the inclusion in the Initial Report. The RPM PDP WG endorsed the Sub Teams' evaluation and decision.
[Final Deliverable] Sunrise & Trademark Claims Sub Teams Recommendations Endorsed by RPM PDP Working Group
Date
Title/Link
Purpose
Sunrise Sub Team Recommendations Endorsed by RPM PDP Working Group (24 July 2019)
Sunrise
Proposal No.
Proponent
Charter Question
Type
Proposal Text
File
#1
George Kirikos
Sunrise Preamble Q, Q5(b)
Other: Elimination of policies
Both the TM Claims Notices and Sunrise procedures should be eliminated as mandatory policies for all subsequent new gTLDs.
If the sunrise procedures are retained (a separate proposal calls for its elimination), then all details of any trademark relied upon to secure a sunrise registration shall be made public, in order to permit utilization of the SDRP. Details should include all information provided to the TMCH (e.g. country, registration number, TM registration date, TM owner, goods and services, etc.). Without limiting an implementation review team, such publication might be implemented by making it public at the source (the TMCH) or via the WHOIS (which had been done in the past).
"1. Registered Names obtained in accordance with the Sunrise registration process shall be solely registered to the qualified applicant thereof who is the owner of the trade or service mark registration on the basis of which the Sunrise registration was allocated. Such Registered Names shall be restricted from transfer to any other registrant, absent submission to the Registry of evidence of assignment, license or other authorized acquisition of rights in the underlying trade or service mark giving rise to Sunrise qualification, and shall remain subject to the provisions of the Sunrise Challenge Policy.
2. Registered Names obtained in accordance with the Sunrise registration shall not be maintained using a privacy or proxy registration service."
If the sunrise procedure is retained (a separate proposal calls for its elimination), then the Uniregistry "Substantive Ineligibility" clause be included as a minimum standard for SDRP disputes, as per clause 2.1.2. of: https://www.uniregistry.link/wp-content/uploads/2015/07/SEPRP.pdf
"2.1.2. Substantive Ineligibility i. Token use or Non-use: The trademark registration on which the domain name registrant based its Sunrise registration is not the subject of actual and substantial use in commerce in the issuing jurisdiction on which the TMCH entry is based, or has been unused in such jurisdiction for a sufficient period to constitute abandonment thereof in such jurisdiction; or
ii. Pretextual Sunrise Registration: The domain name is otherwise a non-exclusive and generically applicable term having a primary meaning in relation to goods or services other than those for which the trade or service mark was obtained; and the domain name is not used or under demonstrable preparation for use, or held to prevent infringing use, by the registrant in connection with the goods and/or services on which the subject trademark registration is based. The following circumstances in particular shall, without limitation, constitute evidence of Pretextual Sunrise Registration:
(a) The registrant’s use, licensing or offer of licensing of use of the domain name for the primary purpose of exploiting such nontrademark primary meaning; or
(b) Circumstances indicating a pattern by the Registrant or in concert with others, of Sunrise Registrations based on formal claims of trade or service mark rights in alleged marks which are otherwise non-exclusive and generically applicable terms having a primary meaning in relation to goods or services other than those for which the trade or service mark was obtained; and
(c) As an aggravating factor in connection with any of the circumstances above, whether the term in question is particularly generically applicable in connection with the TLD in which the Sunrise Registration was made
A 90-day notice period should be required ahead of Sunrise launch, where information necessary for Sunrise participants to make registration decisions is specified and easily accessible (through public portal or provided to contracted registrars.) This would include inter alia registration eligibility, pricing, and reserved name status. The notice requirement would then be reset for any names released from a reserved name list.
"Sunrise services shall include protection for trademarks with the terminal portion of the trademark string (and plurals) corresponding to [TLD], thereby facilitating the registration of second-level names in .[TLD] truncated prior to such terminal portion – i.e. in which the trademark “spans the dot”."
To be eligible the trademark owner must be the holder of a corresponding TMCH entry with the terminal portion of the trademark string (and plurals) corresponding to [TLD (and plurals or conjugate forms where indicated in the TLD application)].
A previously identified example is: a trademark for JOE'S TATTOO is eligible for registration as <JOES.TATTOO> and <JOES.TATTOOS>, and a trademark for JOE'S TATTOOS is eligible for registration as <JOES.TATTOO>
Implement an obligatory Public Interest Commitment or other contractual provision that the registry is not to act in a manner calculated to circumvent the RPMs, including not to set its pricing at a level, compared to general availability pricing, which has the effect of undermining brand owner access to the sunrise. If introduced as a PIC this would enable aggrieved third parties to take action themselves under the PICDRP, rather than being reliant on ICANN Compliance to enforce the contract.
Such a PIC could address practices such as the designating of well-known trademarks as premium names; setting the pricing for all sunrise names many multiples higher than the general availability pricing – at a level that could not reasonably be considered to reflect cost-recovery; and reserving names matching trademarks (ie withholding them from release) during the sunrise period in order to release them later when the sunrise has ended (whether or not at a premium price).
Where a top level domain is suggestive of a particular category of good or service, such as .bike or .pizza, sunrise registrations should require proof by the mark holder of actively doing business in that specific category.
If the TM Claims Notices are retained (a separate proposal calls for their elimination), then registrars shall be allowed to be compensated on a cost per impression (CPM) basis for the display of the mandatory notices.
Trademark Claims Q1 (lack of universal implementation by registrars can be considered an "unintended consequence)
Operational Fix
If the TM Claims Notices are retained (a separate proposal calls for their elimination), then ICANN shall provide open source software in the top 5 programming languages used by registrars to assist in integration of the TM Claims notices with registrar systems.
Implement an obligatory Public Interest Commitment or other contractual provision that the registry is not to act in a manner calculated to circumvent the RPMs, including not to set its pricing at a level, compared to general availability pricing, which has the effect of undermining brand owner access to the sunrise. If introduced as a PIC this would enable aggrieved third parties to take action themselves under the PICDRP, rather than being reliant on ICANN Compliance to enforce the contract.
Such a PIC could address practices such as the designating of well-known trademarks as premium names; setting the pricing for all sunrise names many multiples higher than the general availability pricing – at a level that could not reasonably be considered to reflect cost-recovery; and reserving names matching trademarks (ie withholding them from release) during the sunrise period in order to release them later when the sunrise has ended (whether or not at a premium price).
During its meetings on 17 July and 24 July, the RPM WG reviewed and endorsed the Sub Team recommendations, which have incorporated input from WG members.
During its meetings on 10 July and 17 July, the RPM WG reviewed and endorsed the Sub Team recommendations, which have incorporated input from WG members.
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