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Notes/ Action Items

Action Items:

1. Staff to circulate existing documentation on proof-of-use required for eligibility to participate in Sunrise Registration including documentation made available by the TMCH, in addition to comments offered by the community on the extent to which the current practice by the TMCH is, or is not consistent with the intended proof-of-use standards (presented in the staff paper reviewing the RPMs in preparation for this PDP)
2. Staff to request WG members’ feedback on the mailing list regarding the Preamble questions about whether abuses of Sunrise registration periods have been documented by different stakeholders – WG members to submit feedback by COB 7 August

Notes:

These high-level notes are designed to help PDP WG members navigate through the content of the call and are not meant as a substitute for the transcript and/or recording. The MP3, transcript, and chat are provided separately and are posted on the wiki here.

1.  Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest

• No updates to SOIs declared

2.  Commence discussion of Preamble questions and (if time permits) Question 1 of the updated Sunrise Charter questions

• Any conclusions or consensus reached during the call needs to be socialized on the WG mailing list for review by the broader WG members

• Preamble:
  • Is the Sunrise Period serving its intended purpose?
    • Observation that Sunrise registration period not being used as intended (not meeting its purpose) – statistically, uptake of Sunrise Registrations has been very low, and significant percentage of those are oriented toward gaming rather than intended registration opportunities meant to be afforded to “bonafide” trademark owners
    • From AC Chat: I will ask the same question I always ask.  According to this group, what do we believe is the intended purpose of the Sunrise?
    • Sunrise Registrations meant to afford trademark owners who have established rights regarding their trademarks registered in association with a category of goods and services the opportunity to register domain name strings of their registered trademarks before General Availability, and at a price lower than it would cost to file a UDRP in order, and to prevent cybersquatting by bad actors
    • Safety valve to gaming of Sunrise is meant to exist in the form of Sunrise Dispute Resolution Policies (SDRP), which most registries are supposed to be providing, providing a process to challenge the eligibility of those registering domain names during the Sunrise period
    • Identifying the intended purpose of Sunrise Registrations is important to make distinction of whether success of Sunrise is measured by number of registrations vs provision of opportunity to TM Owners to register domain names of their trademarks prior to General Availability – Intent is to provide trademark owners the opportunity (not that they have to) register domain name strings during the Sunrise period – number of Sunrise Registrations is not a good measure of success, while the provision of the choice should be
    • Should there be an assumption that those who have access to Sunrise Registrations are also able to secure a UDRP ruling in their favor - would this be the case in a scenario like .HOTEL?
    • Need to separate the points of whether Sunrise is serving its intended purpose, and that additional measure need to be taken to mitigate against unintended consequences, such as gaming
    • From AC Chat: If it is helpful - in the Protecting the Rights of Others Working Group that was part of the 2005-7 GNSO PDP on New gTLDs, this was the definition offered for Sunrise: "A process in which owners of Legal Rights have the opportunity to register domain names before the Landrush process open to the public."
    • Several suggestions on data requirements identified for questions further down the list include gathering anecdotal evidence from contracted parties, brand owners and others on the various aspects of the usefulness of Sunrise - data source identified are the findings in the INTA survey, which provide some insight on the usefulness of Sunrise from the perspective of brand owners, may prove as a useful input
    • Sunrise Registrations may have served their intended purpose, up to a point – high (sometimes exorbitant) prices of Sunrise Registrations may not be consistent with the intent of Sunrise – intent of Sunrise was not to extract very high costs from trademark owners, and be a profit-generating mechanism
    • From AC Chat: I am not sure that the cost was part of the purpose of Sunrise, at least it was not in the AGB. Historically, Sunrise was not about low price
    • In the 2004 round, there were registries that voluntarily chose to offer Sunrise periods to give a message that they are good actors in the marketplace – the last round was different in that it was a requirement, and may have had some effect on whether it has served its purpose
    • Sunrise provides TM Owners the opportunity to register their names prior to General Availability – protects the interests of any party that cares to participate
    • Can the WG agree that the purpose of Sunrise has been met if it is as stated in the AGB: “A process in which owners of Legal Rights have the opportunity to register domain names before the Landrush process open to the public.”?
    • Intent of Sunrise was not to provide a low cost of registration of the domain name that corresponds to the trademark (need to separate the question of fees from current discussion/question), but the purpose of the TMCH was to have one centralized validator in the hope of possibly reducing cost by only requiring payment to one validator across different new gTLDs registry operators – prior to the TMCH, trademark owners had to pay for the cost of trademark validation across different registry operators – so intent of the TMCH was to decrease costs, but this was not the intent of Sunrise itself
    • Multiple parties may own the same trademark across different categories of goods and services, but only one may own the corresponding domain name under any given gTLD - need to determine, using evidence, if trademark registrations are being used to game the Sunrise process by actors pretending to be genuine brand owners (see questions 4 and 5 of preamble)
  • Is it having unintended effects?
    • If purpose of Sunrise is consistent with what was stated in the AGB (A process in which owners of Legal Rights have the opportunity to register domain names before the Landrush process open to the public), then answer to first preamble question is likely "yes" - answer to second question regarding unintended consequences may also be true (anecdotal evidence exists that supports this) – these may need to be identified in detail and mitigated
    • Tentative WG Agreement: 15/19 WG members present on the call agree with the above statement – agreement subject to review by the broader WG
    • Sunrise serving its intended purpose, and the existence of unintended consequences are not mutually exclusive
    • Identifying specific unintended effects may be helpful in determining what the data requirements are to measure the extent to which these effects exist
    • One possible method of mitigating abuses of Sunrise may be the timing of registration of a trademark - was it registered shortly before a Sunrise period with the intent of abusing Sunrise?
    • Substantive review of trademarks does not take place in all countries (examples include the trademark “THE”) - may present as one of the reasons for unintended consequences of the Sunrise process
    • From AC Chat: even countries w/o substantive examination generally have a use requirement at some point in the life of the TM, and we could look to a use requirement
  • Is the TMCH Provider requiring appropriate forms of “use” (if not, how can this corrected)?
    • Political issues resulting in acceptance of registered trademarks in the TMCH from countries that do not require substantive reviews during the trademark registration process is one of the long-standing problems with Sunrise
    • Substantive reviews should ideally include general review, review of the proof-of-use, as well as commercial use - latter is important to mitigate against abuse, particularly during challenges to the Sunrise Registrations – possible to raise the proof-of-use requirement of the TMCH
    • From AC Chat: From the Applicant Guidebook: 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.
    • From AC Chat: All, if it helps, this is what the Explanatory Memorandum said when the proof of use requirement was introduced: "Proof of use from all registered trademark holders is intended to help ensure that all registered trademarks receiving the same type of advantage from a particular RPM are evaluated at substantially the same level. In other words, all registered trademarks are treated equally."
    • Proof-of-use should include "real continuous use" - most countries do not require this for the purpose of registering trademarks
    • TMCH already has a proof-of-use requirement in order to take advantage of Sunrise Registrations - WG could develop ways to enhance proof-of-use requirements to help mitigate against unintended consequences/gaming of Sunrise
    • Do WG members agree that there needs to be a more strict/strengthening of/additional structure around the proof-of-use requirement by the TMCH to decrease the incidence of abuse of Sunrise Registrations? 5/18 of WG members on call agree, 2/18 WG members on the call disagree
    • ACTION ITEM: Staff to circulate existing documentation on proof-of-use in the Sunrise context, including documentation made available by the TMCH, in addition to comments offered by the community included in a staff paper reviewing the RPMs in preparation for this PDP on the extent that the current practice by the TMCH is, or is not consistent with the intended proof-of-use standards
  • Have abuses of the Sunrise Period been documented by trademark owners?
    • Phrasing of this question is ambiguous - is question asking whether abuses of Sunrise by trademark owners have been documented, or have trademark owners documented abuses of Sunrise Periods – requires clarification
    • Intent of Sub Team in these questions was to ask whether the different stakeholders (TM owners, registrants and contracted parties) have documented abuses of Sunrise Periods
    • Anecdotal evidence in INTA survey results indicate that trademark owners have documented abuses of Sunrise
    • ACTION ITEM: Staff to solicit comments on the WG mailing list from different stakeholders on last three questions of preamble concerning documentation of abuse of Sunrise Period - Comments to be submitted by Monday 7 August
    • Summary should be prepared using this discussion, as well as on-list responses
  • Have abuses of the Sunrise Period been documented by Registrants?
    • Several WG members representing registrants have provided examples
  • Have abuses of the Sunrise Period been documented by Registries and Registrars?
    • From AC Chat: if we define abuse as a violation of rules – no
    • Violation of rules may not be the issue – issue may be stretching of the rules beyond their intended purpose
    • From AC Chat: Could we request RySG/RrSG to send answers as Registries/Registrars?
    • Contracted Parties and other stakeholders do not need to provide exhaustive lists of abuses, but only anecdotal evidence to help answer the questions – possibly even just “yes” or “no” answers

3.  Next steps/next meeting

• Next WG call is on Wednesday 9 August at 17:00 UTC
• 30 minutes of WG call on 9 August to be spent confirming progress on answers to preamble questions
• Remainder of 9 August call will cover discussion on process to collect data required to answer Charter questions on Sunrise Registrations