Re: [Bulk] [bc-gnso] BC Comment on RPMs

[Andy Abrams <abrams@xxxxxxxxxx>]

Hi Mike - good question.  This also strikes me as a flaw in the system.
 Here's my understanding of the current situation:

Section 6.2.4 of the Applicant Guidebook states that a sunrise application
can be challenged on several grounds, including that the trademark
registration which is the basis for the sunrise domain registration did not
issue on or before the effective date of the Registry Agreement of the
registry conducting the Sunrise period and was not applied for on or before
ICANN announced the applications received (i.e., June 13, 2012).  Note that
this relates to the SDRP, which allows for third party challenge of Sunrise
registrations, and cannot not prevent trademark owners from receiving
Trademark Claims notices based on a post-announcement-filed trademark
registration.


I do not know whether the TMCH or registries will seek to verify this
particular piece of information.  But as long as the provision remains
unchanged, any "new" TMCH entry seeking a sunrise registration would at
least be vulnerable to having the registration invalidated.  My
understanding is that the SDRP has been flying under the radar thus far,
and the IPC is just now starting to look into this.  If there is interest
in the BC, I'm happy to be involved.


Andy


On Thu, Aug 29, 2013 at 5:53 PM, <icann@xxxxxxxxxxxxxx> wrote:

> Andy, this struck me as very surprising as I can’t ever recall hearing it
> before:  ****
>
> ** **
>
> it is required that all entries relate to trademark applications
> filed before ICANN announced the applications received (i.e., June 13, 2012)
> ****
>
> ** **
>
> That seems to me to prejudice new businesses since they are forever
> excluded from the TMCH rights protection mechanism?****
>
> ** **
>
> So, I think the BC should lobby against that requirement, unless others
> believe there is strong reason for it?****
>
> ** **
>
> Mike Rodenbaugh****
>
> RODENBAUGH LAW****
>
> Tel/Fax: +1.415.738.8087****
>
> http://rodenbaugh.com****
>
> ** **
>
> *From:* owner-bc-gnso@xxxxxxxxx [mailto:owner-bc-gnso@xxxxxxxxx] *On
> Behalf Of *Andy Abrams
> *Sent:* Thursday, August 29, 2013 1:58 PM
> *To:* Elisa Cooper; Steve Delbianco; bc - GNSO list
> *Subject:* [Bulk] [bc-gnso] BC Comment on RPMs****
>
> ** **
>
> Dear All,****
>
> ** **
>
> Many thanks to Elisa, J. Scott, Marilyn and Steve for drafting a proposed
> comment (attached) to the recent revisions in the RPM requirements.  I
> wanted to see if there was interest in further discussion on the first
> point made in the comment - the proposal on notice of sunrise period.
>  Specifically, I would be in favor of a minimum 60-day combined
> sunrise/notice period as opposed to a minimum 30-day notice period and
> minimum 30-day sunrise period.  I believe that allowing for greater
> flexibility in the notice/sunrise timing would encourage more registries to
> extend the sunrise period, thereby achieving in many cases the minimum
> 60-day sunrise originally requested by the BC and IPC during the Strawman
> discussions.  A longer sunrise is beneficial to brand owners, as it gives
> us more time to plan, budget and correct any errors in the registration
> process.  In addition, since many new gTLD registries may have
> "anchor-tenant" or other cross-promotional opportunities for brand owners,
> having extra time during sunrise could facilitate such negotiations. ****
>
> ** **
>
> I understand that the primary argument for fixing a lengthy notice period
> is to perhaps give businesses more of a last-minute chance to enter the
> Clearinghouse prior to a particular registry's launch.  However, I
> respectfully believe that this is a bit of an edge case, and we would be
> better served advocating for a longer sunrise period.  There is one central
> Clearinghouse for all of the new gTLD registries, so there is no advantage
> to trying to strategically "time" the submissions, and last-minute national
> trademark applications would be ineligible for sunrise protection anyways,
> as it is required that all entries relate to trademark applications
> filed before ICANN announced the applications received (i.e., June 13,
> 2012).  I acknowledge that further education may be necessary to ensure
> that brand owners submit their Clearinghouse entries in a timely fashion,
> so it may be useful to encourage ICANN to team up with various trademark
> organizations (such as INTA) to publicize that the Clearinghouse is now
> open.****
>
> ** **
>
> I do agree with the current draft's criticism of the ability to allocate
> names 30 days from the date of notice, no matter how much time is left in
> the official sunrise period.  All requests for sunrise registration should
> be compiled at the end of sunrise, and then analyzed for competing,
> identical requests.****
>
> ** **
>
> I look forward to hearing others' thoughts.  Thank you for your
> consideration.****
>
> ** **
>
> Best,****
>
> ** **
>
> Andy****
>
> --
> Andy Abrams | Trademark Counsel
> *G**o**o**g**l**e* | 1600 Amphitheatre Parkway, Mountain View, CA 94043***
> *
>
> (650) 669-8752 <https://www.google.com/voice#phones>****
>



-- 
Andy Abrams | Trademark Counsel
*Google* | 1600 Amphitheatre Parkway, Mountain View, CA 94043
(650) 669-8752 <https://www.google.com/voice#phones>