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First-come, first-served sunrise periods on the cards

Kevin Murphy, October 7, 2013, 09:55:38 (UTC), Domain Registries

New gTLD registries will be able to offer first-come, first-served sunrise periods under a shake-up of the program’s rights protection mechanisms announced a week ago.

The new Trademark Clearinghouse Rights Protection Mechanism Requirements (pdf) contains a number of concessions to registries that may make gTLD launches easier but worry some trademark owners.

But it also contains a concession, I believe unprecedented, to the Intellectual Property Constituency that appears to give it a special veto over launch programs in geographic gTLDs.

Sunrise Periods

Under the old rules, which came about following the controversial “strawman” meetings late last year, new gTLD registries would have to give a 30-day notice period before launching their sunrise periods.

That was to give trademark owners enough time to consider their defensive registration strategies and to register their marks in the Trademark Clearinghouse.

The new rules give registries more flexibility. The 30-day notice requirement is still there, but only for registries that decide to offer a “Start Date” sunrise period as opposed to an “End Date” sunrise.

These are new concepts that require a bit of explanation.

An End Date sunrise is the kind of sunrise we’re already familiar with — the registry collects applications for domains from trademark owners but doesn’t actually allocate them until the end of the period. This may involve an auction when there are multiple applications for the same string.

A Start Date sunrise is a relative rarity — where registrations are actually processed and domains allocated while the sunrise period is still running. First-come, first-served, in other words.

This gives more flexibility to registries in their launch plans. They’ll be able to showcase mark-owning anchor tenants during sunrise, for example.

But it gives less certainty to trademark owners, which in many cases won’t be able to guarantee they’ll get the domain matching their mark no matter how wealthy they are.

Under the new ICANN rules, only registries operating a Start Date Sunrise need to give the 30 days notice. These sunrise periods have to run for a minimum of 30 days.

It seems that registries running End Date Sunrises will be able to give notice the same day they start accepting sunrise applications, but will have to run their sunrise period for at least 60 days.

Launch Programs

There was some criticism of the old RPM rules for potentially limiting registries’ ability to run things such as “Founders Programs”, getting anchor tenants through the door early to help promote their gTLDs.

The old rules said that the registry could allocate up to 100 names to itself, making them essentially exempt from sunrise periods, for promotional purposes.

New gTLD applicants had proposed that this should be expanded to enable these 100 names to go to third parties (ie, “founders”) but ICANN has not yet given this the green light.

In the new rules, the 100 names still must be allocated to the registry itself, but ICANN said it might relax this requirement in future. In the legalese of the Registry Agreement, it said:

Subject to further review and analysis regarding feasibility, implementation and protection of intellectual property rights, if a process for permitting registry operators to Allocate or register some or all of such one hundred (100) domain names (plus their IDN variants, where applicable) (each a “Launch Name”) to third parties prior to or during the Sunrise Period for the purposes of promoting the TLD (a “Qualified Launch Program”) is approved by ICANN, ICANN will prepare an addendum to these TMCH Requirements providing for the implementation of such Qualified Launch Program, which will be automatically incorporated into these TMCH Requirements without any further action of ICANN or any registry operator.

ICANN will also allow registries to request the ability to offer launch programs that diverge from the TMCH RPM rules.

If the launch program requested was detailed in the new gTLD application itself, it would carry a presumption of being approved, unless ICANN “reasonably determines that such requested registration program could contribute to consumer confusion or the infringement of intellectual property rights.”

If the registry had not detailed the program in its application, but ICANN had approved a similar program for another similar registry, there’d be the same presumption of approval.

Together, these provisions seems to give registries a great deal of flexibility in designing launch programs whilst making ICANN the guardian of intellectual property rights.

Geo gTLDs

For officially designated “geographic” gTLDs, it’s a bit more complicated.

Some geographic gTLD applicants had worried about their ability to reserve names for the governments backing their applications before the trademark owners wade in.

How can the .london registry make sure that the Metropolitan Police obtains police.london before the Sting-fronted pop group (or more likely its publisher) snaps up the name at sunrise, for example?

The new rules again punt a firm decision, instead giving the Intellectual Property Constituency, with ICANN oversight, the ability to come up with a list of names or categories of names that geographic registries will be allowed to reserve from their sunrise periods.

It’s very unusual — I can’t think of another example of this happening — for ICANN to hand decision-making power like this to a single constituency of the Generic Names Supporting Organization.

When GNSO Councillors also questioned the move, ICANN VP of DNS industry engagement Cyrus Namazi wrote:

In response to community input, the TMCH Requirements were revised to allow registry operators the ability to submit applications to conduct launch programs. In response to the large number of Geo TLDs who voiced similar concerns, the IPC publicly stated that it would be willing to work with Geo TLDs to develop mutually acceptable language for Geo TLD launch programs. We viewed this proposal as a way for community members to work collectively to propose to ICANN a possible solution for an issue specifically affecting intellectual property rights-holders and Geo TLDs. Any such proposal will be subject to ICANN’s review and ICANN has expressly stated that any such proposal may be subject to public comment in which other interested community members may participate.

While ICANN is calling the RPM rules “final”, it seems that in reality there’s still a lot of work to be done before new gTLD registries, geo or otherwise, will have a clear picture of what they can and cannot offer at launch.

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Comments (10)

  1. Mark says:

    I don’t get it >> First-come, first-served for trademark owners? So for example if 5 companies pay Trademark Clearinghouse for their registered trademark registrations (of the same mark but in different categories), regardless of any factors, the first who file the registration application will get domain name? Or first who file registration in Trademark Clearinghouse? What rules apply?

  2. Alexander Schubert says:

    Hi Kevin,

    quote:
    “This gives more flexibility to registries in their launch plans. They’ll be able
    to showcase mark-owning anchor tenants during sunrise, for example.”

    In theory this sounds nice. In the real world it’s a disaster. We had this at the “.eu” SR. What happens is that all TM grabbers of the world run a high tech race and all “valuable” generic terms will be snatched away in sunrise – for reg fee – by the fastest domain grabbers. And “generic trade marks” like “apple”, “orange”, “mango” will see “their” domains grabbed and released for ransom only – grabbers are ALWAYS faster than corporations. And what could “APPLE, Inc.” do against someone snatching up apple.shop in SR, offering apples for sale online? NOTHING.

    And what good would it do to publish “anchor tenants” 3 weeks before your SR ends? Impact would most likely tend to zero.

    Better solution: Get “Anchor Tenants” several MONTH ahead of the SR start! Companies which do not really have to fear “competition” as no one right in his mind would bid against “Microsoft” or “Sony”. Companies attesting that they will get “their” brand – and actually USE IT! Nice brands doing defensive registrations does not create ANY advantage at all – you need the brand manager to confirm that they will ACTIVELY using the domain in their communications strategy.

    But all in all ICANN seems still not to get that generic terms (and geo terms) should be exempted from SR. Why has ICANN not learned from all the failed TLD introductions and liberalizations (see .info, .eu. .us, etc)? Why should “.shop” have to give away shoe.shop to one of the many world wide TM’s “shoe” for reg fee?

    And if the 100 names rule will stay than most of the business plans can be trashed. 80% or 90% of the calculated generic names auction proceedings will be realized by TM grabbers in the secondary market – and NOT by the registry operator.

    Alexander

    • Kevin Murphy says:

      Obviously, to participate in Sunrise you need to prove “use” of your trademark. Are you saying that this test can be gamed?

      • John Berryhill says:

        Easily.

        • Mory says:

          Wouldn’t this be a bad precedence for defending cases of generic names in RDNH cases?

          It has been proven again and again, and in many Reverse Domain
          Name Hijacking cases (RDNH) *http://hallofshame.com that having a trademark on a generic name doesn’t not give you any rights for that generic domain. By being generic it means its open to all, and not to be given as first priority to a TM owner.

          *2. There was a major uproar and objection for new
          generic gTLD’s being closed for the public. The reason being that they belong to.. the public! And not to the registries or to companies who have
          a TM on those generic words.

          *3. *Needles to remind you all that having a TM on .Music or any new gTLD’ got thrown out of the LRO. Reason simply being that having a TM on a
          generic doesn’t not mean you get first rights.*

          So if the TM owners get first rights, it sets a negative precedence.

    • Thomas Lenz says:

      Alexander,

      maybe there is a misunderstanding here. First-come, first-served in sunrise periods is only applicable to holders of TMCH-registered trademarks. So if your “apple” grabbing domainer does not hold an “apple” trademark somewhere in the world, he will not be eligible to participate in a sunrise period.

      But still, the problem does exist on a different level. If there happen to exist several identical registered or otherwise eligible trademarks jurisdictions and/or for various classes of goods, then there will be a problem, assuming they are all equipped with a valid SMD file. The fastest holder will make the race and the rest will be left behind. It is going to be interesting to see how registries will sort that out.

      • John Berryhill says:

        There are many parties who have obtained registered trademarks in a variety of jurisdictions for dictionary words, and goods/services which are easily demonstrated to be “in use” by reference to an easily-constructed website or some other sort of token use.

  3. Not Com Tom says:

    Maybe a business model seeking out generic trademark holders and setting up deals.

    • John Berryhill says:

      That’s one business model.

      The simpler model is similar, but without the deal. The TMCH has no actual way to verify that submitters of trademark records are, in fact, authorized by the trademark owner, and it’s not as if they are going to invest in suing people for making false representations of such authorization.

      It’s much simpler to simply submit a trademark record, some evidence of use of the mark (CafePress, etc., or someone else’s actual product), get the TMCH record, get the domains, sell the domains later, and be long gone with the cash before anyone knows, or even cares, what happened.

      Why monkey around with the actual trademark owner? The vast majority of small businesses or individuals who own registered marks are thoroughly unaware of new gTLD’s and the TMCH.

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