Thanks Mary, this is interesting indeed, and is a good reminder illustrating the (intentional) differences between the URS and UDRP (also, even beyond the different burdens of proof, they have different possibilities for providing more detailed facts and arguments, and supporting evidence). It may also show why we want to be thoughtful about the relationship between the two when we are considering policy recommendations. (I suspect this may have also been a factor in John McElwaine’s suggesting to shift the URS to phase II.) Also, without taking too much of a detour, I think it’s important for us to bear in mind that there is some debate about whether the UK court “refused” to hear the appeal, or whether there was in fact no UK cause of action on which the requested appeal could proceed (i.e., it was “heard” but “dismissed”). The UK case also referred to the BT One In A Million case where it was held that there mere registration of certain domain names (corresponding to well-known or distinctive marks) was tantamount to bad faith passing off. Brian From: Gnso-rpm-documents [mailto:gnso-rpm-documents-bounces@icann.org] On Behalf Of Mary Wong Sent: Wednesday, April 11, 2018 11:16 PM To: Berry Cobb Mail; gnso-rpm-documents@icann.org<mailto:gnso-rpm-documents@icann.org> Subject: [Gnso-rpm-documents] Additional information about the "stuartweitzman.email" case Hello everyone, As mentioned on the call earlier today, the one URS appeal where yoyo.email was the respondent and prevailed (out of the six appeals where yoyo.email was the respondent) led to a UDRP filing by the same complainant against yoyo.email. If you are interested, you can see that the UDRP panelist found that the complainant succeeded – on the preponderance of the evidence (balance of probabilities) standard – on all three substantive grounds; whereas in the prior URS appeal, a majority of the appeal panel had found that the complainant could not satisfy the burden of proof (i.e. clear and convincing evidence) as regards legitimate interest and bad faith: http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2014-1537. I’ll note also that the URS proceeding was referenced in a footnote in the decision, as were other UDRP cases against the same respondent. Cheers Mary From: Gnso-rpm-documents <gnso-rpm-documents-bounces@icann.org<mailto:gnso-rpm-documents-bounces@icann.org>> on behalf of Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> Date: Wednesday, April 11, 2018 at 14:23 To: Berry Cobb Mail <mail@berrycobb.com<mailto:mail@berrycobb.com>>, "gnso-rpm-documents@icann.org<mailto:gnso-rpm-documents@icann.org>" <gnso-rpm-documents@icann.org<mailto:gnso-rpm-documents@icann.org>> Subject: [Gnso-rpm-documents] Action items from URS Documents Sub Team call today Dear all, Here are the action items captured by staff from the URS Documents Sub Team call that was held today, Wednesday 11 April, 1700 UTC: SUB TEAM ACTION ITEMS: * Sub Team members to send, either to this list or directly to staff, input on the analysis of the 14 appeal cases for consolidation into a summary report to the full Working Group on 18 April (see the Summary tab on the spreadsheet for a starting point: https://docs.google.com/spreadsheets/d/1RP7ZpmNs8wutcfkLh0H7wD2VtR15Hg8W6uuym1s67YY/edit#gid=719838890[docs.google.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__docs.google.com_spreadsheets_d_1RP7ZpmNs8wutcfkLh0H7wD2VtR15Hg8W6uuym1s67YY_edit-23gid-3D719838890&d=DwMGaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=Cnf_I9taoWnQugGTsNQKW27dpzEEih0Memty03AuJTs&s=X1kQL747usDNyFxESzFOKr9ttn6Aj89km46hXh543e8&e=>. To ensure timely preparation of our report, it will be greatly appreciated if your comments can be sent by COB in your time zone this Friday (13 April) or at the very latest by 1200 UTC on Monday (16 April). * Sub Team members to consider if there is a need to delve further into the 14 appeal cases, and (subject to an update from Rebecca and Alex – see below) whether to recommend proceeding with a review of the 58 cases where a respondent prevailed against a complainant. STAFF ACTION ITEMS: * Staff to check the list of questions being considered by the URS Providers Sub Team, to see if it includes questions concerning: (1) issues about adherence to the URS procedures and rules raised by parties to a case; and (2) problems with notifications to/from registry operators and registrars as well as with regard to timing for carrying out locking and resolving of domains in dispute. * Staff to touch base with Rebecca Tushnet and Alex Noonan, to find out: (1) if their research will cover the 58 “respondent prevailed” and 250 “response filed” cases; and (2) when they expect to be able to provide initial data to the Working Group. * Staff to consolidate Sub Team comments into a summary report for the Working Group call next Wednesday. Thanks and cheers Mary & Berry From: Gnso-rpm-documents <gnso-rpm-documents-bounces@icann.org<mailto:gnso-rpm-documents-bounces@icann.org>> on behalf of Berry Cobb <mail@berrycobb.com<mailto:mail@berrycobb.com>> Date: Thursday, April 5, 2018 at 13:33 To: "gnso-rpm-documents@icann.org<mailto:gnso-rpm-documents@icann.org>" <gnso-rpm-documents@icann.org<mailto:gnso-rpm-documents@icann.org>> Subject: Re: [Gnso-rpm-documents] Proposed next steps for URS Documents Sub Team (RPM Working Group) Hi All, Please find attached a first-run review of the 14 URS cases that also produced an appeal. The XLS, by tab, will present the original case and appeal side by side from oldest to newest as you move left to right. Most of the data is a direct copy and paste of the cases from the provider site for convenience. However, in some cases, the content for a particular category on the form was too large, and it directs you to follow the link to the actual case for completeness. Starting on row 32 are fields where the summary of case analysis takes place. You’ll also see a quick description of the to-date disposition of the domain(s) involved. The second tab of the XLS contains a draft summary of findings. I also attached a PDF export of the XLS as an additional option to review this. However, I do recommend using Excel if you can. We’ll review through the XLS and discuss this analysis at our session on Wednesday. In the meantime, please review each case in preparation for the call to formulate your own understanding of the outcomes. I’ll never admit to perfection, so I also welcome any corrections to what is presented now or if there are suggestions for other aspects to be analyzed. Until next week. Thank you. B Berry A. Cobb 720.839.5735 mail@berrycobb.com<mailto:mail@berrycobb.com> @berrycobb From: Gnso-rpm-documents [mailto:gnso-rpm-documents-bounces@icann.org] On Behalf Of Mary Wong Sent: Tuesday, April 3, 2018 19:56 To: BECKHAM, Brian; gnso-rpm-documents@icann.org<mailto:gnso-rpm-documents@icann.org> Subject: Re: [Gnso-rpm-documents] Proposed next steps for URS Documents Sub Team (RPM Working Group) Hi Brian and everyone, Starting with your last point first, yes, that is the staff advice as well, since once you are done reviewing the 14 cases we should have a better sense from Rebecca as to where her research stands; which should in turn assist the Sub Team with deciding how to proceed with the 58 “respondent prevailed” cases and then the broader class of 250 “responses filed” cases. On the 14 appeal cases, Berry and I are working on having the spreadsheet circulated to you all within the next couple of days. What Berry has done is included the link to every case (initial determination plus appeal) for each column/tab where he has also, in most cases, pasted the most relevant excerpts from the panel’s decisions. We think that it will likely be easier for you to go to each individual link when you have the spreadsheet in front of you – other information we will have in the spreadsheet includes the disputed domains; party names; legal counsel (where applicable); panelist and appeal panel names; result of the appeal and the final post-appeal disposition of the domain. As such, we hope you don’t mind waiting for another day or so while we finish up with the spreadsheet to circulate to everyone. We will also be circulating a short bullet-point-form summary of what at this stage staff thinks the main data “takeaways” from the 14 cases may be. We hope this is a satisfactory way of proceeding, at least for the 14 appeals. Cheers Mary & Berry From: Gnso-rpm-documents <gnso-rpm-documents-bounces@icann.org<mailto:gnso-rpm-documents-bounces@icann.org>> on behalf of "BECKHAM, Brian" <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> Date: Tuesday, April 3, 2018 at 05:35 To: "gnso-rpm-documents@icann.org<mailto:gnso-rpm-documents@icann.org>" <gnso-rpm-documents@icann.org<mailto:gnso-rpm-documents@icann.org>> Subject: Re: [Gnso-rpm-documents] Proposed next steps for URS Documents Sub Team (RPM Working Group) Mary, all, With regard to the question of tabulating the 14 cases, if Barry is able to do this (which I can’t imagine would take much time) then members of the subteam could focus on looking at the actual determinations. To that end, is it possible to share links (or case citations) to those 14 cases already? In terms of the other categories of cases, the 58 respondent prevailed and 250 response received, also noting that there was a significant amount of discussion/disagreement in the broader WG on the notion of reviewing all cases, perhaps we could simply start with the 14 and then assess the utility of the exercise (possibly even reporting back to the WG). Best regards, Brian From: Gnso-rpm-documents [mailto:gnso-rpm-documents-bounces@icann.org] On Behalf Of Mary Wong Sent: Friday, March 30, 2018 5:54 PM To: BECKHAM, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; gnso-rpm-documents@icann.org<mailto:gnso-rpm-documents@icann.org> Subject: [EXTERNAL] [Gnso-rpm-documents] Proposed next steps for URS Documents Sub Team (RPM Working Group) Hello Brian and everyone, I’m following up generally and in response to Brian’s question below, with apologies for the delay as staff supporting all three URS sub teams reviewed where each sub team is on its work, and we wanted also to touch base with Rebecca. It seems that while Rebecca’s research is moving along, it may be another couple of weeks before an initial data set can be shared. With that in mind, staff would like to suggest to this Sub Team that: * The Sub Team proceed to review the 14 appeals cases in the meantime. In this regard, Berry is putting together a tabular framework where data on each of these 14 cases can be inputted (e.g., dates, domain(s) at issue, parties, response grounds, outcome etc.). In fact, given that there are only 14 cases (all filed so far with FORUM), Berry will likely be able to do the inputting at the same time and have a completed document for you all to look at by the end of next week. Would you like him to proceed accordingly, or do you prefer that 1 or perhaps 2 volunteers from the Sub Team do this? * In either case, staff proposes that the data inputting work be done in the course of next week, such that a document can be circulated to the Sub Team in time for a Sub Team call on Wednesday 11 April. On that call, the Sub Team can discuss the data results with a view toward reporting back to the full Working Group (based on the work being done in the other two URS Sub Teams, staff anticipates that a full Working Group meeting can be held as early as 18 April, though we will first consult with the Working Group co-chairs to seek their views and preferences). As the other two URS Sub Teams will be finalizing and sending out questions to practitioners and the URS providers, this Sub Team will then have a little time to complete the various other case reviews in a timeframe that comports with Rebecca’s initial data analysis. In other words, following the review of the 14 appeals cases, the Sub Team may choose to proceed with the 58 cases where the respondent prevailed with Rebecca’s research filling in the rest of the 250 cases where a response was received. We hope this is helpful. Please let us know what you think, or if you have additional suggestions. Thanks and cheers Mary, Julie, Ariel & Berry From: "BECKHAM, Brian" <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> Date: Saturday, March 24, 2018 at 12:40 To: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>, "gnso-rpm-documents@icann.org<mailto:gnso-rpm-documents@icann.org>" <gnso-rpm-documents@icann.org<mailto:gnso-rpm-documents@icann.org>> Subject: [Ext] Re: FOR REVIEW: Updated Consolidated URS table of data sources and questions Thanks, as ever, Mary for keeping us on track. As we seem to have only a limited set of appeals, and not to take away from Rebecca's work, I would actually rather that this subteam (also) look at those cases (including so as to form its own views on the relevant data points to be ascertained). Have those appeals cases been flagged in (Barry's) spreadsheet already? Brian ________________________________ From: Gnso-rpm-documents <gnso-rpm-documents-bounces@icann.org<mailto:gnso-rpm-documents-bounces@icann.org>> on behalf of Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> Sent: Friday, March 23, 2018 12:22 AM To: gnso-rpm-documents@icann.org<mailto:gnso-rpm-documents@icann.org> Subject: [Gnso-rpm-documents] FOR REVIEW: Updated Consolidated URS table of data sources and questions Dear URS Documents Sub Team members, Please find attached for your review an updated Consolidated URS Discussion Document, in which staff has updated the table where this Sub Team’s suggested data sources and questions (for Providers and Practitioners) are detailed. The staff updates concern only those additional suggestions that were made during the ICANN61 session where John McElwaine presented the Sub Team’s recommendations to the full Working Group – it is being circulated here to make sure that you are aware of, and do not have concerns about, the new edits. Please also let us know if we omitted anything inadvertently. Please note that, for ease of review, staff has accepted all changes that were made to the document up to ICANN61. The attachment therefore just shows what edits were made based on the ICANN61 discussions – however, let us know if you prefer it to remain a mark-up from the last few versions. NEXT STEPS FOR THE URS DOCUMENTS SUB TEAM: * There will not be a Sub Team meeting next week, as the Sub Team has now completed its initial tasks. * Staff has contacted Rebecca Tushnet and her research assistant, Alex Noonan, to find out the status of their research into all the URS cases. As you will recall, this Sub Team has volunteered to take on a review of a selected number of URS cases (e.g. Appeals) – staff anticipates that this task will not begin until we have heard from Rebecca and can have a good sense of how not to duplicate her work. * Staff will update the two previous documents we had prepared – these being the list of questions to be sent to the URS Practitioners and Providers Sub Teams for forwarding on to the identified URS practitioners and the three URS providers, as part of those Sub Team’s questions. We will send these updated documents to both Sub Teams before they meet again next week. Thanks and cheers Mary, Julie, Ariel & Berry 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. 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