July 2018 - Gnso-rpm-documents

URS "de novo" and "delay" cases
by BECKHAM, Brian July 16, 2018

July 16, 2018

Hi all, Following on our good call last week, below are the 10 cases in which a ��de novo�� review was, according to a search on the NAF site, was in play (I believe David McAuley was willing to look at these to see if there were any conclusions to draw): �� 1554143 wolfram.ceo Wolfram Group LLC v. Andrew Davis et al. URS 04/22/2014 Suspended Final<http://www.adrforum.com/domaindecisions/1554143F.htm> Appeal<http://www.adrforum.com/domaindecisions/1554143A.htm> 05/06/2014 �� 1563665 lockheed.email, lockheedmartin.email Lockheed Martin Corporation v. yoyo.email et al. URS 06/10/2014 Suspended Final<http://www.adrforum.com/domaindecisions/1563665F.htm> Appeal<http://www.adrforum.com/domaindecisions/1563665A.htm> 08/06/2014 �� 1564796 mwe.email McDermott Will & Emery LLP v. yoyo.email et al. URS 06/17/2014 Suspended Appeal<http://www.adrforum.com/domaindecisions/1564796A.htm> 08/07/2014 �� 1628473 eos.blackfriday Canon Kabushiki Kaisha v. North Sound Names et al. URS 07/13/2015 Suspended Final<http://www.adrforum.com/domaindecisions/1628473F.htm> Appeal<http://www.adrforum.com/domaindecisions/1628473A.htm> 09/13/2015 �� 1637103 tagheuer.digital LVMH SWISS MANUFACTURES SA v. GiftSMS et al. URS 09/11/2015 Suspended Final<http://www.adrforum.com/domaindecisions/1637103F.htm> Appeal<http://www.adrforum.com/domaindecisions/1637103A.htm> 11/23/2015 �� 1672049 sanofi.xin SANOFI v. �� et al. URS 04/26/2016 Suspended Final<http://www.adrforum.com/domaindecisions/1672049F.htm> Appeal<http://www.adrforum.com/domaindecisions/1672049A.htm> 06/28/2016 �� 1673323 brandchannel.xyz, interbrand.club Interbrand Group v. WhoisGuard, Inc. et al. URS 05/06/2016 Suspended Final<http://www.adrforum.com/domaindecisions/1673323F.htm> Appeal<http://www.adrforum.com/domaindecisions/1673323A.htm> 06/15/2016 �� 1681062 grey.email Grey Global Group LLC v. i-content Ltd. et al. URS 06/27/2016 Claim Denied Final<http://www.adrforum.com/domaindecisions/1681062F.htm> Appeal<http://www.adrforum.com/domaindecisions/1681062A.htm> 08/10/2016 �� 1716444 greubel-forsey.watch GFPI S.A. v. Michael Meyer et al. URS 02/08/2017 Suspended Final<http://www.adrforum.com/domaindecisions/1716444F.htm> Appeal<http://www.adrforum.com/domaindecisions/1716444A.htm> 03/23/2017 �� 1760252 virginmobile.top Virgin Enterprises Limited v. Zhu Jie et al. URS 11/30/2017 Suspended Default<http://www.adrforum.com/domaindecisions/1760252D.htm> Final<http://www.adrforum.com/domaindecisions/1760252F.htm> 01/19/2018 Also, FYI �C to recall there were no cases where ��laches�� appeared and 6 (pasted below) where ��delay�� appeared: �� 1587022 holidayinn.wang Six Continents Hotels, Inc. v. hong yong et al. URS 10/29/2014 Suspended Default<http://www.adrforum.com/domaindecisions/1587022D.htm> Final<http://www.adrforum.com/domaindecisions/1587022F.htm> 11/24/2014 �� 1592905 porsche.kaufen, porsche-design.kaufen Dr. Ing. h.c. F. Porsche AG v. visucom ag et al. URS 12/03/2014 Suspended Default<http://www.adrforum.com/domaindecisions/1592905D.htm> 12/22/2014 �� 1613317 bankofthewest.money Bank of the West, N.A. v. Peter Keating URS 04/08/2015 Suspended Default<http://www.adrforum.com/domaindecisions/1613317D.htm> 04/27/2015 �� 1620565 urbanoutfitters.sale Urban Outfitters, Inc v. Domain Administrator URS 05/28/2015 Suspended Default<http://www.adrforum.com/domaindecisions/1620565D.htm> 06/17/2015 �� 1636250 fxcm.top Forex Capital Markets LLC v. zechuan chang URS 09/08/2015 Suspended Default<http://www.adrforum.com/domaindecisions/1636250D.htm> 09/28/2015 �� 1734989 schneider-electric.store SCHNEIDER ELECTRIC SE v. Private Person URS 06/08/2017 Suspended Default<http://www.adrforum.com/domaindecisions/1734989D.htm> 06/28/2017 Best, Brian [The image of the 2018 GII cover shows crashing waves captured within the outline of a battery cell, representing the raw power of innovation.] <http://www.wipo.int/gii/?utm_source=wipomail&utm_medium=signature&utm_campa…> GLOBAL INNOVATION INDEX 2018 Energizing the World with Innovation Launch July 10 www.wipo.int/gii<http://www.wipo.int/gii/?utm_source=wipomail&utm_medium=signature&utm_campa…> #GII2018 World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.

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Recording, Attendance, & AC Chat for RPM Sub Team for URS Documents call held Wednesday, 11 July 2018
by Andrea Glandon July 13, 2018

July 13, 2018

Dear all, Apologies for the delay in this email. Please find the attendance and AC Chat transcript attached to this email and the mp3 below for the RPM Sub Team for URS Documents call held Wednesday, 11 July 2018 at 17:00 UTC. Attendance and recording of the call is posted on agenda wiki page: https://community.icann.org/x/64NHBQ Mp3: https://audio.icann.org/gnso/gnso-rpm-review-urs-documents-11jul18-en.mp3 The recordings and transcriptions of the calls are posted on the GNSO Master Calendar page: https://gnso.icann.org/en/group-activities/calendar ** Please let me know if your name has been left off the list ** Mailing list archives: http://mm.icann.org/pipermail/gnso-rpm-documents/ Main wiki page for the working group: https://community.icann.org/x/zRW8B Kind Regards, Andrea Glandon

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Actions and Notes: URS Documents Sub Team Meeting on 11 July 17:00 UTC
by Julie Hedlund July 11, 2018

July 11, 2018

Dear All, Please see below the action items and brief notes captured by staff from the URS Documents Sub Team call held on 11 July 2018 (1700 UTC). Please note that these will be high-level notes and are not meant as a substitute for the transcript or recording. Staff have posted to the wiki space the action items and notes at: https://community.icann.org/display/RARPMRIAGPWG/2018+Meetings. Please also see the attached referenced documents. Best regards, Mary, Ariel, Berry, and Julie Action Items: WG members should review the Consolidated URS Discussion Document, especially column 5 – Data Sources – and note whether there are data sources that haven’t been identified, or whether the data raise issues concerning the URS. For example: sub bullet on page 4 on The Complaint (A) -- staff hasn't done any analysis on types of marks. Does it need to occur, if so, and how? David McAuley volunteered to work with Berry Cobb to review the 10 de novo review cases. Notes: Reminder: The suggested standard set of high-level questions (some of which, e.g. Question 1 and/or 5, may need to be modified for certain topics) were: 1) Has it been used? Why or why not? 2) What was the original purpose and is it being fulfilled? 3) Bearing in mind the original purpose, have there been any unintended consequences? 4) What changes could better align the mechanism with the original purpose/facilitate it to carry out its purpose? 5) What was the ultimate outcome? 1. Agenda, SOI Updates: None 2. Continue review of data collection & analysis: a. Presentation on data inventory approach by section of Consolidated URS Discussion Document - updated 9 July 2018. See: https://community.icann.org/download/attachments/88572907/Consolidated%20UR… Update: -- Went through the chart and noted that 80% or more of the topics identified were covered. -- A few places where there was work to be done by the Sub Team. Most of those are pretty easy. -- Look for volunteers to tick off the remaining to-do items. -- Prepare findings, policies, and recommendations for the full WG. -- Note that Sub Team work has been efficient. Consolidated URS Discussion Document - updated 09 July 2018v2 Background: -- How we got here: We had a Sub Team meeting prior to Panama where staff provided the analysis over the past few months: responses, Prof. Tushnett's research -- checked off the list of the data collected and analyzed. -- This updated document is an inventory of what we have and what is still outstanding. -- Discuss what other tasks this group needs to perform and how that links to the topics in the table. -- Once we divided into Sub Teams the Data Sources column was added and this Sub Team was created. -- Staff took the initiative to collect the identified data sources and conducted the analysis. -- The meeting prior to Panama was a presentation of some of that data. A lot to digest. Didn't have the connection to the topics in the table. -- The secondary component -- there are 5 high-level questions; circle back to these when we start to review things, such as the complaint. Example of how to review the Consolidated Document, page 3: A. The Complaint -- Data Sources (column 5) -- Providers Sub Team -- Practitioners Sub Team -- Sub bullets on the exact location of the data -- Sub Team should move to that data source, and ask the 5 questions. Example: Administrative Review -- URS Provider Questions row 30-31: 22 cases that didn't pass the Administrative Review -- ADNDRC said there were more than 2 cases. -- Forum said there were 17 cases. -- MFD said there were a few cases that failed the review. Example: Practitioner Sub Team survey pages 20-21 Example: Response: 250 cases up to 2017 where a response was filed and we did analysis. This was substantive and touches on all 4 data sources: Prof. Tushnett, from the Providers' site, Sub Teams on Practitioners and Providers. -- See Table 11: URS Case Response Analysis Discussion: -- Is it worth running through the full Compilation Table to identify where we have work to do, then go through it a second time for a substantive review. Yes, that is the plan. -- Open questions: Final bullet -- Rebecca's research should show what types of marks are the subject of complaints (page 4) -- Not sure there is research that would answer that question. Is this last bullet on types of marks meant to look at how many are identical, or something else -- such as type of mark? May not be able to draw conclusions. Does the WG agree that we are looking at identical or mark + term, and not dictionary terms? -- There are two distinct sets of questions -- coding doesn't address: Is there a live problem with descriptive terms especially in the notice concept. -- Don't see how we could determine whether any particular mark is descriptive or generic. That require looking at what the mark was registered for and looking behind that. It is more of an issue with respect to the TMCH. -- Have the documents shown us whether the facts are on the table regarding the trademark -- category of goods and services, jurisdiction. On descriptive terms has an answer been given? We are running through this table to identify whether we do have the data or not. The sub bullet on page 4 on the complaint -- ACTION/QUESTION: staff hasn't done any analysis on types of marks. Does it need to occur, if so, and how? -- To the broader question if someone has a descriptive mark and what type of evidence they are providing -- maybe put this as a question to come back to at the end of the call. Are the panelists reflecting the evidentiary record put before them? Questions to Providers and Practitioners. -- We do know that the SMD files are coming in encrypted. Do the decisions reflect that evidence that has come in from the complaint? -- On dictionary words: re: Dictionary words are trademarks for something; re: claims notice, we want to know if the notice is clear and provides enough information for the registrant to know how to proceed. This is a claims notice clarity issue, not a URS issue. [Staff walks through each section of the document and describing what is in column 5, Data Sources] Discussion: -- What are we doing about issues flagged by the Practitioners and Providers Sub Teams? To the extent that the Documents Sub Team has identified issues these will be captured. The Practitioners and Providers Sub Teams also are identifying issues that they are presenting to the WG. -- It seems that we need to bring the work done in the different Sub Teams together. The Documents Sub Team was simply identify where we could find the information, such as in the data, or in the Practitioners or Providers Sub Teams. -- Re: Registries and URS cases filed: qualitative experiences receiving notices -- reach out directly to them? (row on response fees). -- Re: Standard of Proof: Recommendation: develop an examination guide for Examiners to understand distinctions between easy vs. hard cases. Trying to understand where that came from. Perhaps we could recommend a check list rather than a guide. The "Education" section might be a better place for the recommendation about a checklist. -- Re: De Novo Review: ACTION: Would be helpful if a volunteer could go through the 10 that were flagged. David McAuley volunteered to help Berry on the 10 cases. -- Re: Notice: Do we know what this question was meaning to address? It was the suspension notice of the domain to the registry operator, referring to inconsistencies in practice when a language other than English is involved. -- Re: Abuse of Process: Information from Providers that may provide some information. -- Re: Language: Did not find anything in the Practitioners, but the Providers had substantive responses. Determine if that is enough. Next Steps: -- For the bulk of these sections we've identified data and a few potential issues (some of which overlap with issues and possible recommendations from the Practitioners and Providers Sub Teams). -- For next week: Decide whether we want to identify that this document Sub Team will pull together recommendations. -- We have volunteers to do some follow-on work.

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Agenda - URS Documents Sub Team Meeting on 11 July 2018, 17:00 UTC
by mail＠berrycobb.com July 11, 2018

July 11, 2018

Hi All, Please find the proposed agenda for the Documents Sub-team Meeting on 11 July 2018 @ 17:00 UTC: 1. Agenda Bash, SOI updates 2. Continue review of data collection & analysis: a. Presentation on data inventory approach by section of Consolidated URS Discussion Document (attached, Consolidated URS Discussion Document - updated 9 July 2018v2.docx) b. Data & Analysis Reference documents: i. (attached, Staff compilation report - updated URS data_v1.1 - 9 July 2018.docx) ii. (attached, Responses & Notes - URS Provider Questions (15 June 2018) - Responses.pdf) iii. (attached, URS Practitioners Survey Summary Results 12 June 2018.pdf) 3. AOB Thank you. B Berry A. Cobb 720.839.5735 <mailto:mail@berrycobb.com> mail(a)berrycobb.com @berrycobb From: Gnso-rpm-documents [mailto:gnso-rpm-documents-bounces@icann.org] On Behalf Of BECKHAM, Brian Sent: Monday, June 11, 2018 06:37 To: Julie Hedlund; gnso-rpm-documents(a)icann.org Subject: Re: [Gnso-rpm-documents] URS Documents Sub Team Meeting on 13 June 17:00 UTC Thanks Julie, Do we happen to know if Rebecca will be able to join this June 13 call? I also would like to ask two things: (1) if it is possible for our subteam members to share any thoughts on this list prior to the call, and (2) if anyone could back me up to co-lead or lead the call, as I will be at the ECTA Annual Conference in Greece. Having run through the excel sheet, it seems to largely support the preliminary view of this subteam that the URS generally seemed to working as intended. It also seems that there is a small subset of cases where this is little to no justification by the examiner beyond reciting the URS elements (which is not by itself per se evidence of a failure of the system or the particular case/examiner, and which must be weighed against the URS goals of speed, cost, and the nature of the domain names at issue). All said, this supports the complimentary preliminary view of this subteam that one possible recommendation for the full WG to consider would be some sort of checklist of minimum elements that should be included in URS determinations. Brian From: Gnso-rpm-documents [mailto:gnso-rpm-documents-bounces@icann.org] On Behalf Of Julie Hedlund Sent: Tuesday, June 05, 2018 6:04 PM To: gnso-rpm-documents(a)icann.org Subject: [Gnso-rpm-documents] URS Documents Sub Team Meeting on 13 June 17:00 UTC Dear all, Please note that per item 2b below a meeting will be scheduled on 13 June at 17:00 UTC for 90 minutes to review through data as identified by the Documents Sub Team where Rebecca's research may assist and additional data as completed by staff (to be sent early next week for the Sub Team review prior to the call). Kind regards, Mary, Ariel, Berry, and Julie From: gnso-rpm-wg <gnso-rpm-wg-bounces(a)icann.org> on behalf of Julie Hedlund <julie.hedlund(a)icann.org> Date: Tuesday, June 5, 2018 at 10:53 AM To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [gnso-rpm-wg] RPM Working Group June Schedule and Work Plan Dear RPM Working Group members, On behalf of the RPM Working Group (WG) Co-Chairs, here is a preview of the work anticipated for June relating to the various data collection exercises with additional details in the attached table: 1. Wednesday, 06 June: No Full Working Group meeting. Instead, the TMCH Data Sub Team will work with the Analysis Group on final questions for registries, registrars, trademark owners, registrants, and potential registrants. A second meeting is scheduled on 07 June if needed. a. Analysis Group will preview the proposed final survey questions to the full WG by 13 June via mailing list b. After pre-testing, Analysis Group launches surveys around 22 June on a rolling basis 2. Wednesday, 13 June: No Full Working Group meeting. Two URS Data Sub Teams will meet to review the research of Prof. Tushnet: a. Providers Sub Team – 12:00 UTC b. Documents Sub Team – 17:00 UTC c. Both will consider how best to use the relevant URS data and will aim to present their recommendations to full WG on 20 June. d. Practitioners Sub Team will receive the Practitioners survey results by 11 June – Staff will assist in setting up a time to meet, review and organize them 12 or 14 June. e. Providers Sub Team should begin to review the Providers survey results on 13 June. 3. Wednesday, 20 June: Full Working Group meeting: Presentations by Providers and Documents Sub Teams about their recommendations for the use of relevant URS data from Prof. Tushnet’s compilation. 4. Panama City ICANN62: Face-to-Face Full WG Meetings (with remote participation): a. Wednesday, 27 June, 10:30 am-Noon (local time) – first RPM WG Meeting: URS Data discussion—Presentation from Practitioners Sub Team re: Survey Results b. Thursday, 28 June, 9:00-10:15 am (local time) – second RPM WG Meeting: URS Data discussion—Presentation from Providers Sub Team re: Survey Results c. Thursday, 28 June, 10:30 am-Noon (local time) – third RPM WG Meeting: Discussion on Procedural Issues Staff have scheduled the meetings with the TMCH Data Sub Team this week, and will be coordinating with the Providers, Practitioners, and Documents URS Sub Teams concerning meetings the week of 11 June. In addition, staff will send to the WG the links to the three ICANN62 sessions (which will include details for remote participation – we expect to be back with Adobe Connect again). Please let us know if you have any questions about these plans. Best regards, Mary, Ariel, Berry, and Julie World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.

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