July 2016 - GNSO-RPM-WG - lists.icann.org

Mp3, Attendance & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group 20 July 2016
by Terri Agnew July 21, 2016

July 21, 2016

Dear All, Please find the attendance of the call attached to this email and the MP3 recording below for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on Wednesday, 20 July 2016 at 16:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/9wWbAw MP3: http://audio.icann.org/gnso/gnso-rpm-review-20jul16-en.mp3<http://mailer.samanage.com/wf/click?upn=NrFWbrBstcrPWP369qgbqlXiSKeL20xnUXz…> The recordings and transcriptions of the calls are posted on the GNSO Master Calendar page: http://gnso.icann.org/en/group-activities/calendar<http://gnso.icann.org/en/group-activities/calendar#nov> ** Please let me know if your name has been left off the list ** Mailing list archives: http://mm.icann.org/pipermail/gnso-rpm-wg/ Wiki page: https://community.icann.org/x/rhiOAw Thank you. Kind regards, Terri Agnew ------------------------------- Adobe Connect chat transcript for 20 July 2016: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on Wednesday, 20 July 2016 at 16:00 Terri Agnew:agenda wiki: https://community.icann.org/x/9wWbAw George Kirikos:Hi folks. Elliot Silver:Hi George. George Kirikos:Hi Elliot. How are you? Elliot Silver:Doing well, thank you. Yourself? George Kirikos:I'm fine, thanks. Just multitasking in the background. :-) George Kirikos:Sounds good, Kathy. Brian Cimbolic:Hello all - I have a conflict that I was not able to move beginning at 12:30pm Eastern. I will participate for the first half but will need to leave then. Paul Tattersfield:Hi All Elizabeth Featherman:Hello! Ankur Raheja:Hello all Maxim Alzoba (FAITID):Hello All Philip Corwin:Hi all J. Scott Evans:I am online, but I am on another call that is running long. J. Scott Evans:I will join as soon as my previous call signs off. George Kirikos:It's winter in the southern hemisphere. :-) George Kirikos:If mediation is added, it should be done on a "without prejudice" basis (i.e. discussions can't then be used in a court action, etc.). Paul Keating:Kathy, I dont object to mediation but the complainant must provide a formal complaint. Otherwise it becoems a game. Jon Nevett:I'm a fan of mediation, but not binding mediation Mary Wong:On mediation - note that feedback was received from all three Providers on this point as well (please refer to the Tabular Summary and full responses, circulated mid-July). Ivett Paulovics:Mediation is always confidential and without prejudice. George Kirikos:Not always, Ivett. Mary Wong:Provider responses are available here: https://community.icann.org/x/Gx_OAw Jon Nevett:non-binding result, but also participation should not be required for the reasons that Greg mentions (if both don't want to be there, it won't be successful) George Kirikos:Since complainants need to give notice 30 days prior to filing the complaint, the best time to have the mediation is after that notification. J. Scott Evans:joining now. George Kirikos:Perhaps there can be a "carrot/stick", i.e. if mediation was offered, but rejected, then the PDDRP costs would be split. Paul Keating:@Kathy, if not mandatory, the respondent should be able to raise this and the final dispute resolution panel should be able to consider the refusal to mediate as a factor in awarding costs George Kirikos:+1 Paul. A factor in awarding costs definitely makes sense. Neda Shahghasemi (Forum):Forum can provide meidaiton services, however, mandatory mediation might frustrate parties as it adds another layer to PDDRP which is already slightly more complicated than for example a UDRP. Paul Keating:@Kathy, a full complaint should be required in any event. Paul McGrady:Sorry for joining late and leaving early. The shifting call times, while necessary, are havok on trying to plan scheduling. George Kirikos:There's a Mandatory Mediation Program in my province of Ontario Canada: https://www.attorneygeneral.jus.gov.on.ca/english/courts/manmed/ Ivett Paulovics:MFSD is not a TM-PDDRP Provider, but URS. MFSD provides also mediation in IP matters, including domain names, which is confidential and without prejudice. It is voluntary and not mandatory. Georges Nahitchevansky:I am not in favor of binding mediation and agree that a mandatory mediation requirement should not be part of the process. There could be a possible period for mediation, but as others have said, forcing parties into mediation is not a good idea Ivett Paulovics:MFSD's mediation services are offered online or offline. Greg Shatan:If a full complaint is required, it would make sense for a full answer to be required as well. (Note that we haven't defined what a regular complaint, a full complaint or a skelatal complaint is.) Brian Cimbolic:I don't think anyone is suggesting binding mediation. mediation is by its nature voluntary and only settles a dispute if both parties agree George Kirikos:Right, even the PDDRP isn't a binding arbitration, given that either side can go to court at any time. Mary Wong:The Nominet suggestion came from Paul Keating, I believe. Paul McGrady:Mediation is inherently non-binding. J. Scott Evans:Doesn't most mediation result in a binding settlement understanding between the parties? Ivett Paulovics:@Paul - EU Mediation Directive provides that Member States may implement the Directive requiring mandatory mediation for certain matters. Brian Cimbolic:J. Scott - only if the parties agree Lori Schulman:Mediation is binding if you agree that it is binding. Otherwise, I think that it is presumed nonbinding. Paul McGrady:We can also go outside of ICANNland for input on this. For example, JAMS is a signficant mediation provider in the US who may be willing to be brought into this thought process. Brian Cimbolic:If the parties can't come to a result, then the mediation ends and you proceed to the next step in the process (either lawsuit or arbitration). Ivett Paulovics:And under EU Directive agreement is enforceable in the 28 Member States. George Kirikos:What's also good is that mediation can help to narrow the issues in dispute, making any continuing PDDRP less complex. Paul McGrady:The agreement to mediate may be binding, correct. But the outcome of mediation is inherently not binding. That would be arbitration. Ivett Paulovics:27 (-1) sorry J. Scott Evans:Okay. Thanks Paul & Lori. George Kirikos:Here's the FAQ on Ontario's Mandatory Mediation Program: https://www.attorneygeneral.jus.gov.on.ca/english/courts/civil/fact_sheet_m… J. Scott Evans:Got it. Mary Wong:@Paul, unless there is a formal agreement reached as a result of the mediation process, right? Paul Keating:@Kathy, A full complaint is required because the claim must be fully understood, gamesmanship must be avoided AND, most importantly, the provider must be there to provide the structure to the mediation Paul McGrady:@Mary, no. Mediation is a mechanism to reach settlement or at least agreement on what issues will be left out of arbitration or litigation. Agreeing to the decision of a nuetral is not mediation, it is arbitration. Justine Chew:I agree with Paul George Kirikos:Page 8 mentions the costs of mediation -- $600 (CAD) for up to 3 hours. Steve Levy:Nominet requires a full complaint and response before its 10-day mandatory period Mary Wong:@Paul, understood; I was just thinking that IF the result of a mediation is more than just what issues are left to adjudicate but is in fact an agreement between the two parties (e.g. a settlement as noted by J Scott), then that would be a binding agreement in that circumstance. Steve Levy:sorry, mandatory mediation period George Kirikos:In Ontario, they don't do the mediation until after the first defence is filed. Paul Keating:sorry but no. I am in a nosy space. Paul Keating:I can try but in a few minutes. George Kirikos:(unless the parties agree otherwise) Paul Keating:yes, that was my suggestion. Greg Shatan:The parties can agree between themselves as a result of mediation. Indeed, that seems to me the primary goal of mediation. Mary Wong:So one question for the WG is whether the possible results of a mediation here under the PDDRP might be limited to just agreement on remaining issues (per Paul) and nothing more. Steve Levy:i've used Nomonet's medition process a number of times and am failmiar with their mediators Greg Shatan:Paul, nosy or noisy? Paul McGrady:Having trouble with audio George Kirikos:Did you find them effective, Steve? Paul Keating:They run a DRS proces that takes place once the complaiunt and response has been filed. It is thereafter a typical mediation process handled by Nominet. The matter is either resolved or proceeds to decision by a panel. J. Scott Evans:no Paul Terri Agnew:@Paul McGrady, we are unable to hear you, please let me know if you need a dial out on the telephone Lori Schulman: 866-692-5726 RPM Steve Levy:Nominet charges no fee if the matter is resolved through mediation. Not sure this would translate well to other providers J. Scott Evans:Both the Forum and WIPO have mediation services and we might get their input on how mediation could be used. Terri Agnew:Sync is turn on, everyone can scroll themselves Mary Wong:@Steve, @Paul K - by "resolved" that would include an agreement to settle the matter, so no further proceeding? Paul Keating:"resolved" can be by 1. complaint withdrawn, 2. settlement (typically purchase of the domain) or 3. decision to forwad the claim and response to the panel for formal decision Mary Wong:Thanks, Paul. Paul Keating:@Kathy, sorry aboiut audio. I can speak now but I dont believe it is really needed now. Pls advise. Philip Corwin:What is distinction between 1st and 2nd level complaint? Doesn't any complaint have to allege and document lots of infringing domains? George Kirikos:The language for 'consolidated complaints' seems slightly different in the UDRP vs. the PDDRP. Mary Wong:Would we need to distinguish between filing a class action vs joining an action vs consolidating various claims? Petter Rindforth:That must be up to TM ownersto reach out to others Neda Shahghasemi (Forum):That is correct Kathy George Kirikos:If the complaints to the ICANN compliance became public, that would help multiple complainants find each other more easily. Rebecca Tushnet:I agree with Peter Rindforth. That's how most disputes work. Mary Wong:@Phil - the language in the PDDRP re top and second level infringement is different. Mary Wong:Viz. For infringement at the top level:Trademark owner must show that Registry Operator's affirmative conduct in its operation or use of its gTLD string (which is identical or confusingly similar to the complainant's mark), causes or materially contributes to the gTLD infringing the complainant's markFor infringement at the second level:Trademark owner must show that, through the Registry Operator's affirmative conduct, there is a substantive pattern or practice of specific bad faith intent to profit from the sale of domain names that infringe the complainant's trademark Jon Nevett:Think the PDDRP Rules contemplate consolidation -- 13.3 In the case where either party requests a three-member Expert Panel, each party (or each side of the dispute if a matter has been consolidated) . . . Steve Levy:I share Paul's experience. Very efficient process (though I once had a case that took nearly 3 mos to complete) Mary Wong:@Kathy, we will refer to the transcript for the full details. The Notes are intended to capture action items and specific suggestions. Bradley Silver:I dont what we are talking about is a "class action" in the sense that it is an action brought by one party on behalf of a collective group - where the group is defined by anyone who might have been injured by the particular action. What we are talking about is the concept of consolidating actions brought by specific parties (individual trademark owners) who are directly injured by the activity. Paul McGrady:@Kathy, J Scott and Mary, if you decide to do a break out work stream on Mediation, I would be happy to lead or co-lead. Mary Wong:@Bradley, that's what I was wondering - hence my earlier question as to a possible distinction between these various terms (class action, joinder, consolidation). Mary Wong:Thanks Paul M! Philip Corwin:Thx for delineating 1st from 2nd level, Mary Philip Corwin:very helpful statements, paul George Kirikos:Lots of hands up, in case Kathy isn't watching the Adobe. Kathy Kleiman:I'm watching George :-) George Kirikos::-) Beth Allegretti:Yes, let's call it "consolidation" rather than "class action". George Kirikos:Consolidation implies there were multiple independent disputes, that were later turned into a single dispute. Bradley Silver:Agree with Greg regarding the need for a process to allow multiple complainants to show a pattern or practice. (Suggest we avoid using the term "class action" which has different connotation in the context of US law.) Paul McGrady:By "class action" we mean that there is a signle representative for many others similarly situated. That seems to me to be a stretch in these circusmtances, since trademarks are very fact specific. Also, it could preclude a filing by a better situated complainant or a better represented complainant. I think multiple complainants is different from class action. I think mulyiple consenting complainants seems reasonable. George Kirikos:Class action is a single dispute, where one complainant represents an entire class of complainants. Slight differences. George Kirikos:+1 Pauld McGrady. Salvador Camacho Hernandez:Yes! Salvador Camacho Hernandez:+1 Paul McGrady George Kirikos:The parties need not use mediators provided by NAF/WIPO -- they can agree on someone else. Paul McGrady:@All, sorry I have to drop off shortly. Susan Payne:Taking my hand down as Greg is making the point I was going to make - important to also bear in mind that the pattern or practice probabaly will be across multiple brands and multiple brand owners. unless you are a brand owner with a huge p[ortfolio and it is your brands which have been targetted a single brand owner may not be able to meet (b) the registry operator's bad faith intent to profit from the systematic registration of domain names within the gTLD that are identical or confusingly similar to the complainant's mark. This systematic registration of such names is unlikely to be targeting a single brand. Greg Shatan:If we have 200 trademark owners, all of whom have been (allegedly) victimized by a common pattern or practice, we should not require each to be a participant in the process. There are all sorts of issues raised by that requirement, creating a forced club of complainants. However, we would need to require some way to prove that you are (factually) part of the class. Jon Nevett:Greg, why would all 200 want to file -- they can't get damages Paul McGrady:@Greg, Class actions have specific defenses, for example that the class representative does not truly represent the whole class. This is an odd cul de sac we are going down that we don't have to go down since multiple consenting complainants solves the problem of efficiiency. George Kirikos:Question: If we allow a class-action approach, and the registry wins a dispute, would that necessarily preclude a 2nd PDDRP? (since the matter would have been deemed determined by the 1st PDDRP)? Mary Wong:The WG might want to consider pros/cons of introducing litigation-like requirements/definitions/mechanisms into the PDDRP. Greg Shatan:We don't necessarily need to style this as a full blown "class action". George Kirikos:A better situated complainant might feel that the issues weren't properly handled in that first PDDRP.... Paul McGrady:We should avoid the term "class action" since it has an independent meaning outside of ICANN land. Paul McGrady:Bye all. Sorry to have to leave. George Kirikos:Ok, a "group action", in other words. Philip Corwin:Excellent discussion and great job chairing, Kathy. regrets that I must depart at this time. Bradley Silver:@paul Keating, in the real world, IP owners often collaborate in bringing legal actions against a single party, where their rights are being infringed. J. Scott Evans:While I appreciate Paul's comments, he is ignoriing the high burden of proof and the narrow cases that the PDDRP is designed to remedy. George Kirikos:@Bradly: Yes, especially music/movie copyright infringement. Mary Wong:ICANN Compliance and GDD provide regular updates on enforcement, rates and complaints etc. to the contracted parties as well as other interested stakeholder groups, I believe. Maxim Alzoba (FAITID):We might also request that ICANN Compliance accompany it with negative results of escalation too George Kirikos:Bradley, even. Mary Wong:As well as a monthly dashboard/report: https://features.icann.org/compliance Statton Hammock:Yes Mary, I was typing this same statement when yours popped up. ICANN Staff briefs regularly on compliance enforcement actions. Mary Wong:Thanks, Statton. Statton Hammock:This is an important point, We should not be guessing what is happening with registry and registrar compliance, we can all see what is happening . Its quite transparent, actually. George Kirikos:Other ways = getting affidavits/evidence from those 3rd parties Justine Chew:submit as evidence George Kirikos:Right. One would need more liberal page limits, perhaps, to ensure all that evidence can be submitted. Jon Nevett:if complainants want to bring a RICO case or a class action, couldn't they just go to a court that is equipped to deal with those kinds of complex litigation? Greg Shatan:Bottom line: We need a method to bring in all instances that could demonstrate a "pattern or practice," whether or not the complainant is involved in those instances. Justine Chew:@Mary, please include as action required of WG. George Kirikos:Question: Should we also allow PDDRP complaints that target multiple TLDs simultaneously, in a single dispute? (e.g. some groups of TLDs share common ownership, e.g. Donuts, Famous Four, etc.) Mary Wong:@Justine - sorry, what specific action did you mean? Thanks! Maxim Alzoba (FAITID):@George, it will open door for money extrotion Mary Wong:The document is unsync'ed - please see the last page for this topic. Justine Chew:@Mary, what you mentioned to be read Terri Agnew:call for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group is scheduled for Wednesday, 27 July 2016 at 21:00 UTC for 60 minutes. Mary Wong:Thanks, Justine - noted! Paul Keating:thank you all and particularly to Mary for keeping up wiht everything today. :-) Maxim Alzoba (FAITID):bye all Steve Levy:Thanks all! Greg Shatan:George, if there's a common pattern or practice that spans multiple registries, it makes great sense to consolidate them into a single action. The alternative is alarming,.... Paul Tattersfield:thanks all bye Yuri Chumak:Thank you Greg Shatan:Bye all! John McElwaine:bye Salvador Camacho Hernandez:Bye! J. Scott Evans:thanks and ciao George Kirikos:Bye everyone.

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PDDRP topics -- limitation period to bring a PDDRP
by George Kirikos July 20, 2016

July 20, 2016

Hi folks, I don't think this was brought up before yet in the context of the PDDRP, but perhaps it can be added to the list of topics. It would be very odd if complainants were allowed to bring a PDDRP for a matter that was not able to be brought by them in a court of law, because it was barred by the relevant statute of limitations. I think amending the PDDRP to explicitly add a time limit for bringing a PDDRP would make sense, to handle this situation. 2 years would be a suitable limit, in my opinion, and would help ensure that complaints are brought in a timely fashion. Thoughts? Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

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A few notes on administrative matters and logistics of participation in the Working Group
by Mary Wong July 20, 2016

July 20, 2016

Dear all, In view of a few queries we have been receiving, staff thought it might be helpful to compile the following mini-FAQ regarding where and how to find information, and who to direct questions to: 1. Who can join the Working Group (WG) calls? Only WG members may join the weekly calls (unless exceptions are made for certain calls and announced beforehand). Call-in and Adobe Connect details are therefore sent only to WG members via the “ntfy” mailing address – members are requested to not circulate these details without first consulting the WG co-chairs. However, WG sessions held during ICANN Public Meetings are generally open to all – including Observers and members of the public. Remote participation and call-in details for these open sessions are normally posted on the ICANN meeting schedule and also mirrored/compiled by the GNSO Secretariat for the convenience of GNSO community members. 2. As an Observer, if I can’t join the calls how can I follow the WG discussions that take place on the calls? All WG calls – including Sub Team calls – are recorded and transcribed. Along with the weekly agenda, documents and Adobe Connect virtual meeting room chat transcript, these are all uploaded to the WG online wiki space shortly following each call: https://community.icann.org/x/wCWAAw. 3. I’m a WG Member but can’t attend a particular call. Who do I inform and why do I need to do that? If you are not able to be on a call, please inform the GNSO Secretariat (gnso-secs(a)icann.org)<mailto:gnso-secs@icann.org)> as soon as possible. Please refrain from sending apologies to the whole email list ☺ Per GNSO guidelines and practice, attendance is taken on every call – and in the WG’s Final Report these numbers are reported so being able to record who was absent with/without apologies is helpful for purposes of ensuring accuracy. 4. How do I change my status from Observer to Member (and vice versa)? It’s simple - just email the GNSO Secretariat (gnso-secs(a)icann.org)<mailto:gnso-secs@icann.org)> with your request. For Observers who wish to become Members, please note that this will entail your filling out a Statement of Interest if you have not done so previously. 5. Who do I contact if I have any other questions? Feel free to contact any of the staff members who are supporting this WG at any time! Besides myself, David Tait and the GNSO Secretariat are also always available to assist if we can. 6. Where can I find more information about how to participate more effectively online? · The next GNSO Working Group Communications Tools webinar is scheduled for 26 July 2016 at 1300 UTC. If you’re new to the GNSO or this Working Group, or simply have questions about Adobe Connect, the WG wiki or other online mechanisms used for ICANN/GNSO policy work, you can sign up for this webinar here: http://goo.gl/forms/mR4HD9XNZU. · There are also several online modules and toolkits that we continue to develop, to assist newcomers with participation - there is a general module at http://learn.icann.org/courses/newcomer-toolkit (about ICANN’s Expected Standards of Behavior and Mailing List Etiquette) and Policy Staff have developed one specifically for the GNSO as well: http://learn.icann.org/courses/gnso (covering the GNSO structure, Council, and the development of ICANN Consensus Policy). Thank you! Please don’t hesitate to reach out to us if you have questions or suggestions. Cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889

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For review & discussion: summary document on TM-PDDRP issues, concerns and suggestions
by Mary Wong July 20, 2016

July 20, 2016

Dear all, Further to the proposed agenda (below), please find attached a document that: (1) compiles the issues, concerns, suggestions received and email discussions to date relating to the TM-PDDRP stemming from the WG’s deliberations up to and in Helsinki; and (2) contains responses received from several WG members regarding the possibility of developing “use cases” and other additional suggestions. We apologize for the late notice, but hopefully Members will be able to review the document even briefly before the WG call tomorrow (Wednesday). Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889 From: Mary Wong <mary.wong(a)icann.org> Date: Tuesday, July 19, 2016 at 14:56 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Proposed agenda for Working Group meeting of 20 July Dear all, The proposed agenda for the next Working Group call, scheduled for Wednesday 20 July at 1600 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only) and updates to Statements of Interest 2. Discuss identified issues and concerns regarding the TM-PDDRP, including Working Group members’ responses on possible changes to, and things not to change about, the TM-PDDRP 3. Discuss follow up questions for ICANN Compliance and TM-PDDRP Providers, including suggestion for developing use cases 4. Agree on list of additional issues/concerns with the TM-PDDRP based on WG discussions to date 5. Next steps/next meeting A document setting out a framework for the discussion of issues and listing Working Group members’ suggestions will be sent out shortly. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889

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Re: [gnso-rpm-wg] For review & discussion: summary document on TM-PDDRP issues, concerns and suggestions
by Dawahi Khouloud July 20, 2016

July 20, 2016

Thank you dear kathy .Thank you Terri Warm regards , 2016-07-20 1:03 GMT+02:00 Terri Agnew <terri.agnew(a)icann.org>: > Dear Dawahi, > > > > Thank you for this, your apology has been noted. > > > > Kind regards, > > > > Terri > > > > > > *From:* gnso-rpm-wg-bounces(a)icann.org [mailto: > gnso-rpm-wg-bounces(a)icann.org] *On Behalf Of *Dawahi Khouloud > *Sent:* Tuesday, July 19, 2016 5:34 PM > *To:* Mary Wong <mary.wong(a)icann.org>; gnso-rpm-wg(a)icann.org > *Subject:* Re: [gnso-rpm-wg] For review & discussion: summary document on > TM-PDDRP issues, concerns and suggestions > > > > Dear all > > I apologize as I can't attend tomorrow's call .I will watch the mp3 > recording and send my feedbacks nonetheless . > > > > Kind regards > > > > 2016-07-20 0:22 GMT+02:00 Mary Wong <mary.wong(a)icann.org>: > > Dear all, > > > > Further to the proposed agenda (below), please find attached a document > that: (1) compiles the issues, concerns, suggestions received and email > discussions to date relating to the TM-PDDRP stemming from the WG’s > deliberations up to and in Helsinki; and (2) contains responses received > from several WG members regarding the possibility of developing “use cases” > and other additional suggestions. > > > > We apologize for the late notice, but hopefully Members will be able to > review the document even briefly before the WG call tomorrow (Wednesday). > > > > Thanks and cheers > > Mary > > > > > > Mary Wong > > Senior Policy Director > > Internet Corporation for Assigned Names and Numbers (ICANN) > > Email: mary.wong(a)icann.org > > Telephone: +1-603-5744889 > > > > > > > > *From: *Mary Wong <mary.wong(a)icann.org> > *Date: *Tuesday, July 19, 2016 at 14:56 > *To: *"gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> > *Subject: *Proposed agenda for Working Group meeting of 20 July > > > > Dear all, > > > > The proposed agenda for the next Working Group call, scheduled for > Wednesday 20 July at 1600 UTC, is as follows: > > > > 1. Roll call (via Adobe Connect and phone bridge only) and updates to > Statements of Interest > > 2. Discuss identified issues and concerns regarding the TM-PDDRP, > including Working Group members’ responses on possible changes to, and > things not to change about, the TM-PDDRP > > 3. Discuss follow up questions for ICANN Compliance and TM-PDDRP > Providers, including suggestion for developing use cases > > 4. Agree on list of additional issues/concerns with the TM-PDDRP > based on WG discussions to date > > 5. Next steps/next meeting > > > > A document setting out a framework for the discussion of issues and > listing Working Group members’ suggestions will be sent out shortly. > > > > Thanks and cheers > > Mary > > > > > > Mary Wong > > Senior Policy Director > > Internet Corporation for Assigned Names and Numbers (ICANN) > > Email: mary.wong(a)icann.org > > Telephone: +1-603-5744889 > > > > > > > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg(a)icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > >

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Proposed agenda for Working Group meeting of 20 July
by Mary Wong July 19, 2016

July 19, 2016

Dear all, The proposed agenda for the next Working Group call, scheduled for Wednesday 20 July at 1600 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only) and updates to Statements of Interest 2. Discuss identified issues and concerns regarding the TM-PDDRP, including Working Group members’ responses on possible changes to, and things not to change about, the TM-PDDRP 3. Discuss follow up questions for ICANN Compliance and TM-PDDRP Providers, including suggestion for developing use cases 4. Agree on list of additional issues/concerns with the TM-PDDRP based on WG discussions to date 5. Next steps/next meeting A document setting out a framework for the discussion of issues and listing Working Group members’ suggestions will be sent out shortly. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889

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For review/comment: data to be collected by the TMCH Sub Team
by Mary Wong July 15, 2016

July 15, 2016

Dear Working Group members, Please find attached for your review an initial scoping document being used by the TMCH Sub Team. Following from its call today, the Sub Team would like to get input from the full Working Group on Part III of the document (starting at the top of page 2), viz. Suggestions for Data Sources and Types of Data to be collected. Please send any suggestions you may have to this mailing list. Note that the scoping document will be updated with additional suggestions (including any from previous Working Group discussions that staff will review for this purpose). Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889

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Re: [gnso-rpm-wg] [Gnso-rpm-tmch] Please respond: Welcome to the GNSO RPM TMCH mailing list!
by Dawahi Khouloud July 13, 2016

July 13, 2016

It didnt work for me .I wasn't receiving mail .I already contacted Nathalie to fix the problem .It should be fixed by now . Kind regards , On Jul 13, 2016 2:05 PM, "Dorrain, Kristine via Gnso-rpm-tmch" < gnso-rpm-tmch(a)icann.org> wrote: > Appears to be working! Looking forward to digging in! > > Sent from my iPhone > > > On Jul 12, 2016, at 3:36 PM, Nathalie Peregrine < > nathalie.peregrine(a)icann.org> wrote: > > > > Dear all, > > > > We believe there may have been a few technical glitches in the setting > up of this mailing list, hopefully we have discovered the solution. > > > > If you would all be so kind as to respond to this email by the > affirmative so we can ensure everyone who volunteered is correctly > subscribed, that would be wonderful. > > > > Thanks all! > > > > Kind regards, > > > > Nathalie > > _______________________________________________ > > Gnso-rpm-tmch mailing list > > Gnso-rpm-tmch(a)icann.org > > https://mm.icann.org/mailman/listinfo/gnso-rpm-tmch > _______________________________________________ > Gnso-rpm-tmch mailing list > Gnso-rpm-tmch(a)icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-tmch >

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Mp3, Attendance & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group 13 July 2016
by Terri Agnew July 13, 2016

July 13, 2016

Dear All, Please find the attendance of the call attached to this email and the MP3 recording below for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on Wednesday, 13 July 2016 at 17:00 UTC. MP3: <http://audio.icann.org/gnso/gnso-rpm-review-08jun16-en.mp3> http://audio.icann.org/gnso/gnso-rpm-review-13jul16-en.mp3<http://mailer.samanage.com/wf/click?upn=NrFWbrBstcrPWP369qgbqlXiSKeL20xnUXz…> The recordings and transcriptions of the calls are posted on the GNSO Master Calendar page: http://gnso.icann.org/en/group-activities/calendar<http://gnso.icann.org/en/group-activities/calendar#nov> ** Please let me know if your name has been left off the list ** Mailing list archives: http://mm.icann.org/pipermail/gnso-rpm-wg/ Wiki page: https://community.icann.org/x/rhiOAw Thank you. Kind regards, Terri Agnew ------------------------------- Adobe Connect chat transcript for 13 July 2016: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on Wednesday, 13 July 2016 at 17:00 UTC Terri Agnew:members wiki page with SOI's: https://community.icann.org/x/3iWAAw Maxim Alzoba (FAITID):Hello Everyone Mary Wong:Hi Maxim, everyone. George Kirikos:Hi folks. Mary Wong:Hi George George Kirikos:Hi Mary. How are you today? Mary Wong:Hey George, very well, thanks - just got off a planning call with Phil and Petter for our OTHER Working Group meeting tomorrow :) Mary Wong:Hope you're well, and everyone else too! George Kirikos:Are we going to have calls during the Olympics??!!?? Maxim Alzoba (FAITID):it is not a war ... so we don't have to stop :) Mary Wong:@George, that's the plan :) :) George Kirikos:Ahhh, ok. :) I'll have to set the PVR if there's anything good during our calls. Martin Silva Valent:hello everyone! George Kirikos:Welcome Martin. Yuri Chumak:hello George Kirikos:Welcome, Yuri. catherine.douglas:Terri - not sure how long I can remain on the call, but will do best to remain as long as possible. George Kirikos:We're now up to 240 participants in the PDP https://community.icann.org/pages/viewpage.action?pageId=58729950 (140 members, 100 observers). Terri Agnew:thank you for this information Catherine Maxim Alzoba (FAITID):do we know who WIPO is this time? Mary Wong:@George, we're still trailing the Next-Generation Registration Directory Service to Replace WHOIS PDP group (by just a little) :) George Kirikos:@Mary: They had a head start. :-) In 2018, when we get to the UDRP, I think we'll see our group get even larger. Mary Wong:@Maxim, Brian Beckham from WIPO is signed up as a member of this Working Group. Maxim Alzoba (FAITID):tanks Maxim Alzoba (FAITID):*thanks George Kirikos:*6 will mute, I think. Kristine Dorrain - Amazon Registry:Hi all. I'm in Adobe, but finishing another call and will join audio in a few minutes. Terri Agnew:Correct, on audio *6 to mute or unmute Marina Lewis:Hi everyone WIPO:Thanks Mary - FYI the reason I sign in as "WIPO" is because I am joined by other colleagues here in my office. Laurie Anderson:Hi all, sorry to be tardy, another meeting went long. Kathy Kleiman:Hi Brian, Might we ask who is joining you at WIPO? Great to know everyone participating... VAIBHAV AGGARWAL:'Evening everyone. Mary Wong:FYI these slides are a summary of the full Provider responese, all of which have been posted to the Working Group wiki. George Kirikos:The others at WIPO might want to add a "SOI", if they've not already done so. Mona:I'm on Adobe and will cut the call out. Mona:thanks for the call out Adobe is ok Terri Agnew:thanks for this information Mona, will cancel dial out with the op Caroline Chicoine:On Question 8, Forum responded wondering whetehr ICANN's compliance program is where people gowith issues rather than using PDDRP and wondering whether we have asked ICANN compliance group whether any complaints they have received since new gtld launch relate to something that could have been brought under PDDRP. Might be good to know if we have not done yet. George Kirikos:I'm surprised by WIPO's answer, given that their website mentions mediation, see: http://www.wipo.int/amc/en/mediation/ Mary Wong:@Caroline, thanks - Compliance staff attended our Helsinki WG meeting but we have not specifically followed up with them on this point. We can certainly do so. Laurie Anderson:Is anyone having an issue with the audio? Mine keeps cutting out. Kristine Dorrain - Amazon Registry:I'm on the Adobe audio and I'm hearing fine except the feedback issues. Terri Agnew:@Laurie, my AC audio is solid, please let me know if a dial out is needed Ivett Paulovics:Mediation is recommended by the applicant guidebook as dispute resolution method Kathy Kleiman:@Caroline: I had listed the same question. Perhaps we should invite them for the meeting? Kristine Dorrain - Amazon Registry:George: All the providers offer stand-alone mediation services. I think the question is regarding the benefit of adding it to the PDDRP. Laurie Anderson:Terri, thank you. I disconnected my VPN so working better now. Laurie Anderson:Easier to understand when you hear all the words :) George Kirikos:Here's a link to ICANN Compliance reports: https://www.icann.org/compliance/notices (includes both registrar & registry compliance) Ivett Paulovics:Page 330 Applicant Guidebook 21.2: The parties are encouraged, but not required to participate in informal negotiations and/or mediation at any time throughout the dispute resolution process but the conduct of any such settlement negotiation is not, standing alone, a reason to suspend any deadline under the proceedings. J. Scott Evans:I still think we need to take a look at the burdne of proof issue. J. Scott Evans:All 3 providers pointed to that as an issue. Mary Wong:@J Scott we can add that as an item to the list to be compiled when we get to the next agenda item. Kristine Dorrain - Amazon Registry:I still like the idea of some straw proposals as I think J Scott mentioned in Helsinki. I'd love to come up with a few use cases and get some outside counsel input and perhaps even a response from ICANN on what they would do in that situation if the complainant elected to go directly to ICANN. Mona:Recent surveys indicate that mediation settlement rates for intellectual property disputes are as high as 70%. Mediation is a cost-effective, efficient way to resolve trademark disputes.INTA endorses mediation as an effective way to resolve trademark disputes. Petter Rindforth:I think we already have a clear answer to question 5: Obviously Not Mona:this is taken from an overview by INTA Kathy Kleiman:@Laurie: I am hearing moments of silence online... George Kirikos:I'm on the phone, and the sound is good, Kathy. Maxim Alzoba (FAITID):too high price is a questionabe threshold ... who sets it? Laurie Anderson:@Kathy, I shut down my VPN and that fixed it for me. Kathy Kleiman:@Laurie - tx! Greg Shatan:You're welcome, Phil... Kristine Dorrain - Amazon Registry:If we end up going down the route of recommending a "class complaint" under PDDRP, I think great care needs to be taken. The resources available to multiple joined brand owners could cripple a small registry. We willl want to make sure the RySG is well-represented in that discussion, as the potential respondents. Beth Allegretti:Thanks Susan. We may want to see about adding "class action" language to the PDDRP. It would be difficult for a single brand to show a pattern of bad action, much easier for a group of brands. susan payne:@Kristine, that is a good point. Maybe "class complaint" isn't the right term. But it seems to me highly unlikley that a single brand owner alone would have evidence of the kind of behaviour intended to be addressed by the PDDRP Greg Shatan:There needs to be a way to either have a class action, consolidate cases and/or have a joint action. Otherwise this is close to being a sham. What good is a forum for complaints, if there's no one to bring an action? Maxim Alzoba (FAITID):Should we ask RySG ? Petter Rindforth:Top-Level Dispute (PDDRP 6.1):"A complainant must assert and prove, by clear and convincing evidence, that the registry operator's affirmative conduct in its operation or use of its gTLD string that is identical or confusingly similar to the complainant's mark, causes or materially contributes to the gTLD doing one of the following: (a) taking unfair advantage of the distinctive character or the reputation of the complainant's mark; or (b) impairing the distinctive character or the reputation of the complainant's mark; or (c) creating a likelihood of confusion with the complainant's mark. An example of infringement at the top-level is where a TLD string is identical to a trademark and then the registry operator holds itself out as the beneficiary of the mark." Ivett Paulovics:Susan you intend for class complaint consolidation? George Kirikos:I think most registries (and/or complainants) would respond by exercising their rights under Section 22, i.e. go to court, rather than use this procedure. George Kirikos:i.e. if court is available, and is ultimately where this would end up, why would a party logically prefer this procedure over the courts? Greg Shatan:Kristine, let's not forget that brand owners come in all sizes too. Kristine Dorrain - Amazon Registry:Initially, it was a way to get ICANN compliance to act. After RegisterFly and Lead Networks, it got better. Greg Shatan:A PDDRP at the top level is more likely to be brought by a single brandowner. A PDDRP relating to problems at the second level is where the "where's the complainant" problem really arises. Ivett Paulovics:@George maybe because it is cost-effective and swift in comparison to the court George Kirikos:Here's a link to the policy, in case folks aren't reading it: https://newgtlds.icann.org/en/applicants/agb/pddrp-04jun12-en.pdf WIPO:While the PDDRP uses the term "Complainant", it also implies that a consolidated (or "class") complaint would be permitted (see 13.3 "each side of the dispute if a matter has been consolidated"). Kristine Dorrain - Amazon Registry:+1 J Scott susan payne:@ Petter - I was thinking of the 2nd level rather than the top level: "(a) there is a substantial pattern or practice of specific bad faith intent by theregistry operator to profit from the sale of trademark infringing domain names; " Mary Wong:Staff will follow up with our Compliance colleagues. J. Scott Evans:I think we should, obviously. VAIBHAV AGGARWAL:Good Idea- Lets do this Kristine Dorrain - Amazon Registry:Yes, please send a homework reminder. :) Mary Wong:@J Scott, @Kristine, @Phil, will do. WIPO:To the extent relevant in the PDDRP context, UDRP panels have also described conditions under which a consolidation would be appropriate in the UDRP context; see WIPO Overview 2.0 at 4.16: http://www.wipo.int/amc/en/domains/search/overview2.0/#416. J. Scott Evans:@Mary. Thanks. Petter Rindforth:@Susan - I agree: On the second level, it is not sufficient to show that the registry operator is on notice of possible trademark infringement through registrations in the gTLD. An example of infringement at this level is where a registry operator has a pattern or practice of actively and systematically encouraging registrants to register second level domain names and to take unfair advantage of the trademark to the extent and degree that bad faith is apparent. Another example of infringement is where a registry operator has a pattern or practice of acting as the registrant or beneficial user of infringing registrations, to monetize and profit in bad faith. Kristine Dorrain - Amazon Registry:Phil, I suggest going a step furhter with compliance and presenting them with use cases or situations. to see if there is any situation that ICANN compliance would NOT deal with directly and push to the PDDRP. Caroline Chicoine:My perpesctive on this changes depending on whetehr the PDDRP is the only mechanism or is it the mechanism of last resort (i.e., compliance does in fact have mechanisms to deal with issues that do not necessarily rise to the level of bringing of a PDDRP action). Kristine Dorrain - Amazon Registry:YEs George Kirikos:Sound is very low? VAIBHAV AGGARWAL:Kristine your Audio is not clear and Audible Kristine Dorrain - Amazon Registry:Oh, I'm sorry...on a different headset today. Kristine Dorrain - Amazon Registry:Summary: Hypotheticals to ICANN will help the group determine which areas area being adequately dealt with by ICANN and where there might still be gaps that the PDDRP could be useful to solve. We want to target any PDDRP updates to those areas of actual usefullness. catherine.douglas:so sorry, but must bow out. Renee Reuter:I need to leave the call. Sorry. Robin Gross:I was wondering if TM-PDDRP claims should be limited in time until after General Availability/public launch? Is there really enough evidence of a Registry's intent before/during Sunrise? Thanks. VAIBHAV AGGARWAL:We should support this - simultaneously change a little and make it suitable to the new work environment VAIBHAV AGGARWAL:ICANN 57 - Yippeeee VAIBHAV AGGARWAL:Group-My Guests :-) Mary Wong:@Phil, all - as a proposed F2F meeting will likely take place during Day 1 of the ICANN57 meeting, no additional funding is available for this meeting. VAIBHAV AGGARWAL:There are Direct Flihts to Hyderabad so Logistics are not a Nightmare - If you have any questions, please feel free to write to me for clarifications : va(a)bladebrains.com<mailto:va@bladebrains.com> | va(a)thevaibhav.com<mailto:va@thevaibhav.com> Mona:I'm going too VAIBHAV AGGARWAL::-) George Kirikos:I think when groups are this large, F2F meetings are going to be less effective. VAIBHAV AGGARWAL:Yes The Logest in ICANN for a While Susan Kawaguchi:The RDS is also considering having a face to face meeting in Hyderabad George Kirikos:Since, only 1 person speaks at a time, if you have 100 ppl there, it just means 99 ppl are listening while that 1 person speaks.... Maxim Alzoba (FAITID):roll a dice for a mic time? VAIBHAV AGGARWAL:November is the Best time to Visit India as its winters with the weather encouraging you to experience life while on business mates Ivett Paulovics:I'm probably not going to Hyderabad. To Copenhagen yes. George Kirikos:Groups above 7 or 8 ppl are hard to manage F2F. Kristine Dorrain - Amazon Registry:George, I thought the Helsinki F2F WG meeting was pretty full and still effective.. Greg Shatan:There are no direct flights to Hyderabad from New York (so I assume none from the US). One needs to leave the US on November 1 to arrive November 3, which is too late. VAIBHAV AGGARWAL:F2F will be great as this will help speed up VAIBHAV AGGARWAL:Shud ve do a Interim Doodle Greg Shatan:Agree with Kristine, larger F2Fs have been quite useful. VAIBHAV AGGARWAL:I can Shre information about travelling here if anyone wants J. Scott Evans:I have to excuse myself for another call. Thanks Phil, Kathy and WG members. George Kirikos:Bye everyone. Kristine Dorrain - Amazon Registry:Thanks all, I have to jump off. Jay Chapman:Thanks, all! Reg Levy - MMX:Thank you ,all Salvador Camacho Hernandez 2:Thanks to all! Mary Wong:Thank you everyone! VAIBHAV AGGARWAL:Cheers - Robin Gross:Thanks Phil and all, bye! Darcy Southwell:Thanks, all. Laurie Anderson:thanks everyone! Maxim Alzoba (FAITID):bye all Jonathan Frost:Thanks Phil, Kathy, and all Ivett Paulovics:thanks VAIBHAV AGGARWAL:Ciao Phil Marano (Mayer Brown):Bye all

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Re: [gnso-rpm-wg] Response of the Registries Stakeholder Group to our Working Group's request for input
by Paul Keating July 13, 2016

July 13, 2016

Mary, I think that give the anticipated complexity and length of our work we should start categorizing the issues being raised so that they are given appropriate attention when those issues are addressed. Can the Staff please propose a system of categorization so that this can be achieved. I would suggest folders pertaining to issues in which sub folders can be created as needed. This should be accessible to members so that materials can be easily deposited into the correct folder/subnfolder. Each member can then deposit material which can be circulated via link when that particular issues presents itself in the topical agenda. Of course I am not certain that you have systems to handle such a task and if not then perhaps appointing a particular staff person to organize this material may be appropriate. It should be freely accessible to members via the portal, however. Regards, Paul From: <gnso-rpm-wg-bounces(a)icann.org> on behalf of Mary Wong <mary.wong(a)icann.org> Date: Tuesday, July 12, 2016 2:34 AM To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [gnso-rpm-wg] Response of the Registries Stakeholder Group to our Working Group's request for input > Dear all, > > Please find attached the response from the Registries Stakeholder Group to the > letter that had been sent by our Working Group on 28 May to all GNSO > Stakeholder Groups and Constituencies as well as the other ICANN Supporting > Organizations and Advisory Committees. As you will recall, our letter sought > stakeholder input on our work and methodology. > > Staff will discuss how best to ensure that the Registries¹ concerns and > suggestions for each of the RPMs for which they provided feedback can be > considered. We will also post this and any other responses received > (including the recent note from the RSSAC) to the WG wiki shortly. > > Thanks and cheers > Mary > > > Mary Wong > > Senior Policy Director > > Internet Corporation for Assigned Names and Numbers (ICANN) > > Email: mary.wong(a)icann.org > > Telephone: +1-603-5744889 > > > _______________________________________________ gnso-rpm-wg mailing list > gnso-rpm-wg(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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