October 2018 - GNSO-RPM-WG - lists.icann.org

ACTIONS & NOTES: RPM PDP WG 08 August 2018
by Ariel Liang Feb. 11, 2020

Feb. 11, 2020

Dear All, Please see below the action items and notes captured by staff from the RPM PDP WG call held on 08 August 2018 (17:00-18:30 UTC). Staff have posted to the wiki space the action items and notes. Please note that these will be high-level notes and are not meant as a substitute for the recording. The recording, AC chat, and attendance records are posted on the wiki at: https://community.icann.org/x/uwNpBQ Best Regards, Ariel Ariel Xinyue Liang GNSO Policy Support Specialist Internet Corporation for Assigned Names and Numbers (ICANN) == ACTION ITEMS: * Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. * Staff to recirculate the Super Consolidated URS Topics Table document * WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * WG members to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, during next week’s call. Later period to discuss larger policy issues. NOTES: Review Agenda/Statements of Interest * George Kirikos has become a member of the At-Large Community: https://community.icann.org/display/gnsosoi/George+Kirikos+SOI General Comment on the Super Consolidated URS Topics Table Document * The topics in the table were developed by the WG members and deliberated on by the WG & URS Sub Teams. Each Sub Team then did very substantial work on data collection and reviewing what came back. While the actual Sub Team recommendations and suggestions captured in this document are what is intended the WG should discuss - to see if it wishes to develop policy or operational recommendations - discussion over what should be on the actual list of topics should not be reopened unless the WG agrees to do so. We encourage all WG members to review all the previous reports from each Sub Team, and all the documents they worked on. They are linked in this Super Consolidated document (page 2). * The Super Consolidated document is a summary of findings and suggestions by the Sub Teams. The Table does not mean to limit/restrict recommendations from the WG members. If there is any issue overlapping with UDRP, can possibly be carried over to the phase II of the PDP. * Is it possible to add additional topics to the Super Consolidated Table? One WG member said that access to the Courts, for example, is a topic he raised, which isn't in the table. Statute of Limitations, whether URS should apply to legacy gTLDs as a consensus policy, are just a few of the topics not in the table. He brought it up in November 2017 (see: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html ) and it was reflected in a later document. That's a critical issue for registrants. if they don't have access to the courts to challenge a URS decision, then it's a huge denial of their rights. * While the chart is not meant to foreclose further discussion, it is a good faith attempt at capturing the work of the sub teams. The purpose of today's, and likely the next few, calls was to make sure this was an accurate and comprehensive reflection of our discussions so far. That said, WG members should bear in mind that we are seeking consensus, so items which are unlikely to achieve that may not be appropriate to reflect as a recommendation, but could be included in public comments on the Initial Report. Also, before adding items to this chart, we will want to work with staff to see whether such topics was previously discussed, and if so, the level of agreement/consensus. In other words, it is not necessary final, but is equally an opportunity to reintroduce topics which have been discussed, but for which consensus is/was not possible. * Could we create a list of "missing issues" -- a list of issues raised in this call (and calls to follow); we can evaluate the nature and weight of these ideas later. * Regarding the Action Items highlighted in column 3 of the table, Providers ST will do a first pass of the responses from the Providers to the follow-up questions, and then discuss the issues that they identified and proposed suggestions with the full WG. Limited filing period (page 3) * One WG member believes that there should be limitation for filing period to bring URS Complaints, so the domain registered many years ago would not be subject to unfair treatment. He said a registrant who owns a domain for 20 years, for example, shouldn't have to be concerned about a policy that can take their domain down with very short time period to respond. * Other WG members said this was discussed, and did not achieve agreement. That would only even be an option if the trademark pre-dated. This is unlikely to be a situation in practice where a URS was brought because it would probably not be a "slam dunk" case after 20 years unless there had been a change of circumstances. * On the issue of delay and laches - as reported by the Docs Sub Team, the data did not provide any basis for which a policy recommendation should be made. The Providers and Practitioners Sub Teams also did not uncover any specific issues that came to either practitioners' or providers' attention. Administrative Review (page 3-4) * One WG member asked whether ICANN should bring Providers into contractual relationship in order to enforce the URS Rules & Procedures. Another member said it probably need to be ICANN’s legal department to enforce the rules & procedure. * URS Providers have MoU with ICANN. Whether it is ICANN’s compliance department or legal department to enforce the rules & procedures, it should not be controversial that Providers must abide by them. * An MOU could be legally enforceable, depending on the circumstances. 500-word Complaint limit (page 4-5) * On 500-word Complaint Limit - Practitioners' survey results were split (out of 12, 5 agree it's sufficient, 4 disagree); results included feedback from some that the word limit was too low: "arbitrary and often insufficient" and "should be slightly increased". * One member said he understands and generally agrees with the decision not to suggest an expansion of the word limit, he wonders if there aren't situations (multi- domain challenges, etc.) where a Complainant or Respondent might be given the opportunity to request an expansion. This point can be captured for decisional phase. * Another member suggested that perhaps providers can provide stats on the average word length of complaints, to see how close to the 500 words they are at present. (i.e. a table of distributions, e.g. 10% under 200 words, 20% between 201 and 300, etc.) Amending the Complaint in light of GDPR/Temp Spec (page 5-6) * One member believes that 2-3 days might not be a good rule (e.g. weekends, time to research, etc.). Maybe 5 business days. * WIPO’s approach to “doe complaints” has been very helpful and provides some comfort that the lack of true registrant/registrant organization data masked due to GDPR will not result in a deficient complaint for an omitted respondent. * ACTION ITEM: Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Forum is asking for amendment of the complaint in UDRP - under the rules that's not allowed in URS. SMD Files (page 6-7) * SMD files are used for limited purpose of demonstrating the use. * Recollection is that SMD files would be passed to the Examiners and relay the critical information related to the TM registration. That's why some people are surprised by the limited info SMD files would provide. * The SMD files contain some basic human-readable information, with the rest of the information coded. For example, the trademark itself is human-readable but the applicable Nice classification is coded. A SMD file is used by registries/registrars for validation, and as Greg noted, to demonstrate use. From the TMCH provider: http://www.trademark-clearinghouse.com/help/faq/which-information-does-smd-… * If the intent of the STI was that the SMD file would be a file summary, that got lost somewhere along the way, way before the SMD file was designed by the TMCH providers. * Rules 3(b)(v) Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use –which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse * It might be useful to look at the spec that they relied on. But the real question is how should the examiner get the relevant data about the Complainant’s mark. The SMD file is probably not the answer, if it was ever intended to be. * the Examiner is not required to second-guess the SMD file. Its existence is sufficient that the mark has had use validated by the TMCH. Other Topics (page 7-8) * These are policy proposals can be brought up when WG members are proposing changes to the URS policy itself. Charter asks us to address the question whether the URS should become a consensus policy applicable to legacy domains. Charter is not specific regarding whether such discussion should occur in phase I or phase II. This feedback illustrates that the ST didn't get to propose policy changes, it is for the WG to discuss and propose changes. * when we reference the STI and IRT reports, we need to keep in mind they only had about 1-2 months to complete their work and produce a report; they were not standard PDP working groups and had limited charters and mandates, which were set by the Board * This is feedback from one Provider, who may want to grow their business. Practitioners survey are from Complaints' side. Need to have a balanced solution when considering the input. * There were plenty of practitioners that represent registrants in the Subgroup, although their experience was largely with the UDRP. Duration of response period (Page 11) * One member believes that if the URS continues in its current form, it would affect valuable domain names. The ones the registrants that do want to defend them, 14 days are not sufficient. 20 days may be more appropriate. It should be based on the age of the domain name. If a domain is 3 months, it will have a shorter period to respond. If you own a domain name for 5-10 years, response period would be longer so less urgency. * Several other WG members disagree. The URS is supposed to be an expedited proceeding so increasing the length of time of a streamlined proceeding defeats the purpose. At most, there could be an additional 3 or 4 days extension period for cause. The point is that there are enough circumstances that give rise to the URS 'quick response' that we should NOT make assumptions into policy. It is an assumption that an "aged" domain would not require a fast response. In Mexico, we have not been able to file a domain name case due to Courts ignorance about the subject and also, because it could take years to be solved. We're spinning out fo control - extending the time to respond to URS cases just because a domain registration is not new defeats the purpose of fast action to take down an infringing domain once it's discovered. The URS is meant to address clear and convincing cases of infringement. A person registers a domain name for less than $50 and brand owner find out about at some point and then files an injunction in court for tens of thousands of dollars. Where is the balance. Examiners Guide (page 13) * The WIPO guidance for examiners took 1500 hours to develop. * The WIPO guidance is relevant to the URS, the elements are shown are the same and the differences include the burden of proof, word limit, etc. A lot of WIPO guidance goes to the shade of grey issues. URS is for clear black/white cases, so if there is a URS guidance it would likely be abbreviated. Duration of Suspension Period & Review of Implementation (page 21-23) * One WG member suggests to find out how much cost for registries & registrars to comply with the URS rules and procedures. Need to get data/feedback from the registries/registrars. * Other WG members are not sure "cost of implementation of URS" for Registries/Registrars is relevant to effectiveness of URS. We don't need to do a cost/benefit analysis (the costs & benefits aren't ICANN's), the providers, registrars, registries need to be asked if they are overburdened by the costs of compliance. * There is an action item to contact the registries/registrars about these issues. Timing TBD due to Sunrise & Claims survey launch. Other topics (page 23-24) * One WG member thinks the HSTS issue is not difficult to fix. The Providers need to improve their technical applicability to resolve the issue. Renee Fossen from Forum disagrees. * ACTION ITEM: Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. NEXT STEPS * ACTION ITEM: Staff to recirculate the Super Consolidated URS Topics Table document and ask all WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * ACTION ITEM: WG to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35. Later period to discuss larger policy issues.

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Corrected Action Item: RPM PDP WG Meetings 21-22 October 2018 (ICANN63)
by Julie Hedlund Oct. 24, 2018

Oct. 24, 2018

Dear All, Per the emails below, please see the following corrected action item (action item 1a). The wiki pages also have been corrected at: Sunday, 21 October 2018, Sessions 1 and 2: https://community.icann.org/display/RARPMRIAGPWG/2018-10-21+ICANN63+Barcelo… Monday, 22 October 2018, Sessions 3 and 4: https://community.icann.org/display/RARPMRIAGPWG/2018-10-22+ICANN63+Barcelo… Action Items: URS: Staff will update the table of individual proposals to remove the levels of support and update the list of the sections of the Initial Report in which they will appear; Staff will send to the WG the updated table of individual proposals and the table of sub team proposals; Staff will review the timeline and indicate where they might be able to start on the URS portion of the Initial Report and possible efficiencies for WG review. TMCH Sunrise and Claims: TMCH Sunrise & Claims Survey Final Report: WG members should submit clarifying questions & comments by Monday 05 November using the Google doc tool at: https://docs.google.com/document/d/1S3OLDD0IviloUjvqlcXq3GMENStYhFeozi57I4t… [docs.google.com] See the email sent by Ariel Liang on 23 October 2018. Staff will send the final version of the questions to Analysis Group and to the WG to review prior to the next meeting on 07 November. Staff will send to the WG the links to the TMCH Sunrise and Claims data sub teams and their final output to the WG and Sub Team members, and request members to confirm interest/new volunteers; Co-Chairs and WG members will consider whether to re-establish the data sub teams. Best, 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, October 23, 2018 at 5:03 PM To: Justine Chew <justine.chew(a)gmail.com>, "BECKHAM, Brian" <brian.beckham(a)wipo.int> Cc: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Re: [GNSO-RPM-WG] [Ext] RE: Action Items: RPM PDP WG Meetings 21-22 October 2018 (ICANN63) Thank you Joyce and Brian for your additional comments. Unless there are any objections staff will not include the support levels in the table of individual proposals and update the action item accordingly. Best, Julie From: Justine Chew <justine.chew(a)gmail.com> Date: Tuesday, October 23, 2018 at 5:00 PM To: Julie Hedlund <julie.hedlund(a)icann.org> Cc: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Re: [GNSO-RPM-WG] [Ext] RE: Action Items: RPM PDP WG Meetings 21-22 October 2018 (ICANN63) Hi Julie, I agree with Phil and Brian (in replying to Phil), in that there is no need to update the support levels in the Individual Proposals table even, given that those proposals were all going into the Initial Report for the purpose of soliciting public comments. Thanks, Justine Chew ----- On Tue, 23 Oct 2018, 16:36 Julie Hedlund, <julie.hedlund(a)icann.org> wrote: Phil, Apologies if it is unclear. Staff was referencing updating the table of individual proposals, which is just the tool for determining how proposals would appear in the Initial Report. You are correct that the level of support will not indicated in the Initial Report, but it had been indicated in the table. If you wish we can remove the level of support from the table, but in any case it will not appear in the Initial Report. Best, Julie From: "Corwin, Philip" <pcorwin(a)verisign.com> Date: Tuesday, October 23, 2018 at 4:31 PM To: Julie Hedlund <julie.hedlund(a)icann.org>, "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [Ext] RE: [GNSO-RPM-WG] Action Items: RPM PDP WG Meetings 21-22 October 2018 (ICANN63) Thank you Julie. Subject to feedback from the other co-chair and other WG members, I believe there is one error in the action items; namely, this one – “Staff will update the table of individual proposals to reflect all proposals as having adequate support and updating the sections of the Initial Report in which they will appear” (emphasis added) My recollection is that we agreed yesterday that all individual proposals would be placed in the IR for the purpose of soliciting public comment without any designation of support level. Best, Philip Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Julie Hedlund Sent: Tuesday, October 23, 2018 10:11 AM To: gnso-rpm-wg(a)icann.org Subject: [EXTERNAL] [GNSO-RPM-WG] Action Items: RPM PDP WG Meetings 21-22 October 2018 (ICANN63) Dear All, Please see below the action items captured by staff from the RPM PDP Working Group meetings held on 21-22 October 2018 at ICANN63. Staff have posted these to the wiki space. The transcripts, meeting slides (general and the Analysis Group presentation), and the Analysis Group report are posted on the wikis at: Sunday, 21 October 2018, Sessions 1 and 2: https://community.icann.org/display/RARPMRIAGPWG/2018-10-21+ICANN63+Barcelo… Monday, 22 October 2018, Sessions 3 and 4: https://community.icann.org/display/RARPMRIAGPWG/2018-10-22+ICANN63+Barcelo… Sessions 1 and 4 were on the review of the individual URS proposals and Initial Report drafting. Sessions 2 and 3 were on Analysis Group presenting the results of the TMCH Sunrise and Claims Surveys. The next meeting will be in two weeks on Wednesday, 07 November at 17:00 UTC for 90 minutes. A meeting invite will be sent separately. Note that in the US the change to Standard Time occurs on Sunday, 04 November, but the UTC time of the meeting remains the same. The effect is that for US members the meeting will begin one hour earlier than under Daylight Saving Time. Best Regards, Julie Julie Hedlund, Policy Director == ACTION ITEMS URS: Staff will update the table of individual proposals to reflect all proposals as having adequate support and updating the sections of the Initial Report in which they will appear; Staff will send to the WG the updated table of individual proposals and the table of sub team proposals; Staff will review the timeline and indicate where they might be able to start on the URS portion of the Initial Report and possible efficiencies for WG review. TMCH Sunrise and Claims: TMCH Sunrise & Claims Survey Final Report: WG members should submit clarifying questions & comments by Monday 05 November using the Google doc tool at: https://docs.google.com/document/d/1S3OLDD0IviloUjvqlcXq3GMENStYhFeozi57I4t… [docs.google.com] See the email sent by Ariel Liang on 23 October 2018. Staff will send the final version of the questions to Analysis Group and to the WG to review prior to the next meeting on 07 November. Staff will send to the WG the links to the TMCH Sunrise and Claims data sub teams and their final output to the WG and Sub Team members, and request members to confirm interest/new volunteers; Co-Chairs and WG members will consider whether to re-establish the data sub teams. _______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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Action Items: RPM PDP WG Meetings 21-22 October 2018 (ICANN63)
by Julie Hedlund Oct. 23, 2018

Oct. 23, 2018

Dear All, Please see below the action items captured by staff from the RPM PDP Working Group meetings held on 21-22 October 2018 at ICANN63. Staff have posted these to the wiki space. The transcripts, meeting slides (general and the Analysis Group presentation), and the Analysis Group report are posted on the wikis at: Sunday, 21 October 2018, Sessions 1 and 2: https://community.icann.org/display/RARPMRIAGPWG/2018-10-21+ICANN63+Barcelo… Monday, 22 October 2018, Sessions 3 and 4: https://community.icann.org/display/RARPMRIAGPWG/2018-10-22+ICANN63+Barcelo… Sessions 1 and 4 were on the review of the individual URS proposals and Initial Report drafting. Sessions 2 and 3 were on Analysis Group presenting the results of the TMCH Sunrise and Claims Surveys. The next meeting will be in two weeks on Wednesday, 07 November at 17:00 UTC for 90 minutes. A meeting invite will be sent separately. Note that in the US the change to Standard Time occurs on Sunday, 04 November, but the UTC time of the meeting remains the same. The effect is that for US members the meeting will begin one hour earlier than under Daylight Saving Time. Best Regards, Julie Julie Hedlund, Policy Director == ACTION ITEMS URS: Staff will update the table of individual proposals to reflect all proposals as having adequate support and updating the sections of the Initial Report in which they will appear; Staff will send to the WG the updated table of individual proposals and the table of sub team proposals; Staff will review the timeline and indicate where they might be able to start on the URS portion of the Initial Report and possible efficiencies for WG review. TMCH Sunrise and Claims: TMCH Sunrise & Claims Survey Final Report: WG members should submit clarifying questions & comments by Monday 05 November using the Google doc tool at: https://docs.google.com/document/d/1S3OLDD0IviloUjvqlcXq3GMENStYhFeozi57I4t…. See the email sent by Ariel Liang on 23 October 2018. Staff will send the final version of the questions to Analysis Group and to the WG to review prior to the next meeting on 07 November. Staff will send to the WG the links to the TMCH Sunrise and Claims data sub teams and their final output to the WG and Sub Team members, and request members to confirm interest/new volunteers; Co-Chairs and WG members will consider whether to re-establish the data sub teams.

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Note to Mr. Kirikos Regarding His Characterization of URS Sub-team Recommendations as "Wishlists"
by Corwin, Philip Oct. 23, 2018

Oct. 23, 2018

Mr. Kirikos: This note is sent in my capacity as co-chair. It is in reference to a statement you made in chat during yesterday's final session of the WG. A full excerpt of the relevant chat exchange appears below. The statement I am commenting upon is, "George Kirikos: (14:01) It was only asserted afterwards (especially by those who participated in the sub-teams, to advantage their wishlists)." I did not comment in real time on this assertion because I did not wish to disrupt the important and constructive discussion that was taking place within the WG. The assertion that sub-team members seek to elevate the status of sub-team recommendations because that would advantage their "wishlists" (sic) appears to imply that the recommendations consist of wish lists. I believe that this assertion is untrue as to both the motivations of sub-team members and the nature of the recommendations. Sub-teams were open to participation by an WG member and you could have joined any or all of them. I participated in almost every meeting of the Providers sub-team and saw no evidence that its members were pursuing any personal or organizational agenda. What I did see was serious consideration of all available data, and constructive efforts to develop and compromise on responsive recommendations seeking to correct operational and policy shortfalls revealed by the data. Sub-team recommendations were subsequently vetted and extensively discussed by the full WG and generally adopted for public comment purposes absent significant change. However they are characterized they carry greater weight than individual URS proposals due to their joint development. I perceive your use of the term "wishlists" pejorative in intent, in both implying that sub-team members joined to pursue preordained agendas, and that the resulting recommendations are fanciful or unrealistic. For example, using the term wish list in that sense, if I believed in Santa Claus I would send him a wish list that started with a private jet whisking me to a five star resort on a tropical island, and finding a gift wrapped Aston Martin in my garage upon return. Finally, I find your use of the term particularly inappropriate given that all fourteen of your individual URS proposals, including one to eliminate the URS entirely, are going to be included in the Initial Report for the solicitation of public comment. If others shared your attitude they might observe that those fourteen proposals constitute your personal URS wish list. In closing, I strongly urge you to refrain from using terms that denigrate the efforts and ideas of other WG members, and to confine your remarks to the merits or deficiencies of proposed operational or policy changes. ************************************************************************************************************************* George Kirikos: (13:55) Sub-team recommendations don't necessarily have support. Griffin Barnett: (13:56) Agree with Susan re differentiating sub-team recommendations vs. "individual" WG member proposals George Kirikos: (13:56) <COMMENT>Sub-team recommendations don't necessarily have any support outside the subteam. So, disagree with Susan.</COMMENT> Greg Shatan: (13:56) I thought we were treating the subteam recommendations as Preliminary Recommendations.. George Kirikos: (13:57) <COMMENT>Disagree with Phil. It was a rebuttable assumption not of SUPPORT, but support for INCLUSION in the Initial Report.</COMMENT> Greg Shatan: (13:58) Disagree with George. Agree with Phil. George Kirikos: (13:59) GregS: See page 6 of the slides (next). Greg Shatan: (13:59) Glad to hear that Panama City was not a fever dream. George Kirikos: (13:59) "s have a rebuttable presumption, subject to WGfeedback, of enjoying an adequate level of support to be included in theInitial Report for the purpose of soliciting community input;" Georges Nahitchevansky: (14:00) The individual proposals are just that, proposals by an individual and should be noted as such. The sub-team recommendations had multiple data points and views -- and compromises were reached. They represent way more consensus than a proposal by an individual and should should be in a different category. As an aside, any individual could have joined one or all of the sub-teams. So if someon, such as George K, did not join any of the groups when he could of then I think he should be barred form aguing they have no support (after no joining when you could is akin to consent that the sub-teams are constituted were adequate) George Kirikos: (14:01) @GeorgesN: disagree, because that standard wasn't set *before* the creation of the subteams. George Kirikos: (14:01) It was only asserted afterwards (especially by those who participated in the sub-teams, to advantage their wishlists). Martin Silva: (14:02) + 1 on Georges Martin Silva: (14:02) lot of us were in subteams doing a lot of compromises all around Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey

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Submit Clarifying Questions & Comments - TMCH Sunrise & Claims Survey Final Report
by Ariel Liang Oct. 23, 2018

Oct. 23, 2018

Dear RPM Working Group Members, Following the presentation of Analysis Group on the TMCH Sunrise & Claims survey results (Session 2 & 3 during ICANN63), staff have created a google doc to facilitate the process of gathering clarifying questions and comments for Analysis Group’s Final Report: https://docs.google.com/document/d/1S3OLDD0IviloUjvqlcXq3GMENStYhFeozi57I4t…. Specifically, you are welcome to focus your clarifying questions/comments on the Survey Results Section (Section V, pp.7-45). The full responses to all survey questions are included in the Appendix A.1-4; you are also encouraged to ask clarifying questions or comment on the survey results not highlighted in Section V. When providing input, please reference the page number, as well as the chart/table number (if applicable) of the Final Report. Everyone can suggest edits/comment on the Google Doc, so your input will show as redline and can be identified with individuals. Please provide your input no later than Monday, 05 November. Session 2<https://63.schedule.icann.org/meetings/901716> and Session 3<https://63.schedule.icann.org/meetings/901722> audio and AC room recordings are already available on the meeting pages. Transcripts should be available shortly after ICANN63. Thank you for your time and contribution! Best Regards, Mary, Julie, Ariel & Berry

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Final Report: TMCH Sunrise & Trademark Claims Survey
by Ariel Liang Oct. 22, 2018

Oct. 22, 2018

Dear RPM PDP Working Group members, Analysis Group will present the TMCH Sunrise and Trademark Claims survey results during session 2<https://63.schedule.icann.org/meetings/901716> and session 3<https://63.schedule.icann.org/meetings/901722> of the Working Group meetings at ICANN63. To facilitate your participation in the sessions, please find attached the Final Report prepared by the Analysis Group. Key findings from the survey results are from page 6 to page 52. The complete survey results are included in the appendixes. Analysis Group plans to review the survey results in the order of the report and engage in discussions with the Working Group. The order is as follows: 1. Actual Domain Name Registrants 2. Potential Domain Name Registrants 3. Trademark Owners 4. New gTLD Registry Operators 5. Registrars Selling Domain Names Registered in the New gTLDs As a refresher and for those who may not be familiar with the survey, page 2 to page 6 provides background information of this survey project. The complete final survey questions are also included in the appendixes. The survey was launched on 6 September and closed on 5 October 2018. Best Regards, Mary, Julie, Ariel & Berry

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REMINDER TODAY: ICANN63: Schedule of RPM PDP Working Group Meetings
by Julie Hedlund Oct. 22, 2018

Oct. 22, 2018

Dear Working Group members, As a reminder please see below the schedule and links for the RPM PDP Working Group meetings at ICANN63 for Sessions 3 and 4 today. Please also see the attached PDF for details. Please also see the full ICANN63 schedule at: https://63.schedule.icann.org/meetings. Best, Mary, Ariel, Berry, and Julie Barcelona ICANN63: Face-to-Face Full RPM PDP WG Meetings (with remote participation in the links below): GNSO - RPM working group (3 of 4): 12:15 - 13:30, Mon, Oct 22, 2018 – lunch provided for WG members Remote Participation -- https://63.schedule.icann.org/meetings/901722 Wiki Agenda: https://community.icann.org/display/RARPMRIAGPWG/2018-10-22+ICANN63+Barcelo… GNSO - RPM working group (4 of 4): 13:30 - 15:00, Mon, Oct 22, 2018 Remote Participation -- https://63.schedule.icann.org/meetings/901723 Wiki Agenda: https://community.icann.org/display/RARPMRIAGPWG/2018-10-22+ICANN63+Barcelo…

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REMINDER: ICANN63: Schedule of RPM PDP Working Group Meetings
by Julie Hedlund Oct. 21, 2018

Oct. 21, 2018

Dear Working Group members, As a reminder please see below the schedule and links for the RPM PDP Working Group meetings at ICANN63, starting with Sessions 1 and 2 today. Please also see the attached PDF for details. Please also see the full ICANN63 schedule at: https://63.schedule.icann.org/meetings. Best, Mary, Ariel, Berry, and Julie Barcelona ICANN63: Face-to-Face Full RPM PDP WG Meetings (with remote participation in the links below): GNSO - RPM working group (1 of 4): 15:15 - 16:45, Sun, Oct 21, 2018 Remote Participation -- https://63.schedule.icann.org/meetings/901715 Wiki Agenda: https://community.icann.org/display/RARPMRIAGPWG/2018-10-21+ICANN63+Barcelo… GNSO - RPM working group (2 of 4): 17:00 - 18:30, Sun, Oct 21, 2018 Remote Participation -- https://63.schedule.icann.org/meetings/901716 Wiki Agenda: https://community.icann.org/display/RARPMRIAGPWG/2018-10-21+ICANN63+Barcelo… GNSO - RPM working group (3 of 4): 12:15 - 13:30, Mon, Oct 22, 2018 Remote Participation -- https://63.schedule.icann.org/meetings/901722 Wiki Agenda: https://community.icann.org/display/RARPMRIAGPWG/2018-10-22+ICANN63+Barcelo… GNSO - RPM working group (4 of 4): 13:30 - 15:00, Mon, Oct 22, 2018 Remote Participation -- https://63.schedule.icann.org/meetings/901723 Wiki Agenda: https://community.icann.org/display/RARPMRIAGPWG/2018-10-22+ICANN63+Barcelo…

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Re: [GNSO-RPM-WG] URS Proposal #13 - WG Comments & Questions
by Marie Pattullo Oct. 21, 2018

Oct. 21, 2018

All, Firstly, I’m so sorry for the delay in responding and many thanks to all the Staff for taking this on for me - I’m very grateful. And at the risk of becoming a phantom, also apologies for the 1st meeting this afternoon: it clashes with the GAC-GNSO joint session. I’ve made some comments inline below. And to comment briefly on the “support” thread: I’m from the BC. I’m of course not representing the BC in this WG – I’m 100% here for my employer – but I hope this goes to show that no one member of this WG speaks for the BC (indeed, for any C/SG) so that can’t be a “support measure” IMO. Thanks again Marie From: Ariel Liang <ariel.liang(a)icann.org<mailto:ariel.liang@icann.org>> Sent: Monday, October 15, 2018 5:32 PM To: Marie Pattullo <marie.pattullo(a)aim.be<mailto:marie.pattullo@aim.be>> Cc: Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>>; Julie Hedlund <julie.hedlund(a)icann.org<mailto:julie.hedlund@icann.org>>; Berry Cobb Mail <mail(a)berrycobb.com<mailto:mail@berrycobb.com>> Subject: URS Proposal #13 - WG Comments & Questions Hello Marie, We hope this email finds you well. Staff helped present your proposal #13 to the WG during its 10 Oct meeting. You may reference page 28-35 of transcript<https://gnso.icann.org/sites/default/files/file/field-file-attach/transcrip…> and page 9-13 of the AC chat record<https://community.icann.org/download/attachments/95095467/Attendance%20%26%…> for the full record of discussion of your proposal. Some WG members supported your proposal, while some opposed and/or expressed concerns. We have highlighted the WG’s questions, oppositions, suggestions below. If you wish to respond, please be so kind to send your response via the WG mailing list. Thank you for your time and help! Best Regards, Mary, Julie, Ariel & Berry == * Michael Karanicolas: What is the evidence supporting the claim that a losing respondent is able to reregister a domain name once it becomes available? Does it happen often? (Staff’s data: Up to 2017, recall one domain that was re-registered by the original registrant. The domain was dropped after suspension and seemed to be legit use. There were other domains that were dropped and re-registered by a different registrant. Not a huge % but still significant.) We based this on the comments in the Super Consolidated URS Topics Table, F(2)/Practitioners Sub-Team: “in some cases, a losing Respondent is able to re-register a domain once it becomes available”; “after the lock, the cybersquatters just renew the domain name” – if it were an important enough concern to be in that Table, we thought it ought to be discussed further. * Kristine Dorrain: Strong disagreement - It's absolutely impossible to implement. You cannot distinguish between registrants even within a registry or registrar. There's evidence that there are cyber squatters that have thousands of new accounts with new identities, and they can hop from place to place and even between registrars. How can those people be prevented from registering the domain name? Assuming a registrar/registry can identify a single customer (who hasn’t opened a new account), how would that information be included across hundreds of registrars? As a complainant, let's say you win a URS and the domain is immediately re-registered. How will you know if the registrant is the same? How will you enforce this proposal? How would ICANN enforce this proposal? We hadn’t gone into implementation, but in essence: we’d like to disrupt the business model of those who abuse the system – as we assume everyone here would, as it negatively affects us all! Could we consider the systematic verification of a registrant’s data when they are trying to register a domain name that has been the subject of a URS where the Complainant prevailed? Connected to a common database of such cases to which all Registrars/Registries would have access? * George Kirikos: There's no registrant verification taking place, so it would be nearly impossible for a registrar to handle it on their own, let alone having all registrars potentially block one registrant from registering the relevant domain name at the other registrar. How can we overcome these technical problems with regard to implementation? There is no “know your client” requirement for registrars to know the registrant. Also, what if the WHOIS of the registrant is fake? The lack of KYC and fake info are without doubt huge problems. Data accuracy is something I know we would all love to work towards. * Maxim Alzoba: There are two issues with this proposal. 1) It would create gaming concerns, as the registrant can simply use false contact information. Wouldn’t it be great if they couldn’t... But also – as said in the proposal – it could actually reduce gaming. (“This would help to prevent gaming of the system and unnecessary cluttering of the providers’ workload with spurious or vexatious cases”). 2) For registrars, there is almost no way to identify the person behind it – it could be a good guys’ domain name that is stolen and used for bad things, and the registrars cannot share information with those parties outside the law. There are no safeguards for the situation where trademark is no longer protected. There is no way to identify a bad guy before they do something fishy or before they follow a pattern. They would have done here – that’s exactly the point. Maybe something limited could be implemented, such as limiting the registration of this domain name for one year. * Christine Farley: If a registrant has been shown to have a bad faith in registering a domain, does it mean that all future registrations will be in bad faith? Or might it be possible for that registrant to re-register that domain with a good faith in future? Is that not a bit unrealistic? * Griffin Barnet: Could perhaps link the registrant to his/her email address, payment info, or something more unique to the actual registrant? Maxim Alzoba: Payment info does not propagate further than one registrar and potentially ICANN. See idea above re a database. * Justine Chew: Could perhaps use a blacklist to identify "losing respondent" as named by that party itself, even if they used false name, contact info etc. Interesting.

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Revised Version of URS Proposal #12
by George Kirikos Oct. 21, 2018

Oct. 21, 2018

[re-sending from my correct email address] Hi folks, Attached is the revised version of URS Proposal #12, after discussions with Rebecca on how to handle the unintended consequences she identified in the original proposal. Many thanks to Rebecca for identifying the issue and the solution. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

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URS levels of support for public comments
by Tushnet, Rebecca Oct. 20, 2018

Oct. 20, 2018

Following up on what I said on one of the calls, and consistent with Greg Shatan's comments (an agreement that I think should probably be noted as significant in itself), I don't think the staff categorizations have worked. If the ultimate point is to get feedback on potential fixes that have been raised, and we don't want to spend a lot more time on this, then I would say we may need to pass on the proposals as non-consensus proposals for community feedback. As Greg did, I supported proposals for comment that I am presently unlikely to support for adoption; based on other comments, I suspect many of us did so--which means that any staff-prepared summary of objections received is also going to be unrepresentative of the full range of arguments against a particular proposal unless we spend a lot more time on it. One specific thing: the charter asks if the URS is fit for purpose. If you agree that the charge allows the answer "no," then one recommendation for a fix is "make it the UDRP," if you think the game isn't worth the candle. That proposal is thus clearly within scope. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759

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UPDATED - Final Report: TMCH Sunrise & Trademark Claims Survey
by Ariel Liang Oct. 20, 2018

Oct. 20, 2018

Dear RPM PDP Working Group members, Analysis Group have updated the Final Report by including the table of content for easier reference on page 2. Please find attached. For the presentation of the survey results, this report will be used, accompanying Analysis Group’s slides. Best Regards, Mary, Julie, Ariel & Berry From: Ariel Liang <ariel.liang(a)icann.org> Date: Thursday, October 18, 2018 at 1:36 AM To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Final Report: TMCH Sunrise & Trademark Claims Survey Dear RPM PDP Working Group members, Analysis Group will present the TMCH Sunrise and Trademark Claims survey results during session 2<https://63.schedule.icann.org/meetings/901716> and session 3<https://63.schedule.icann.org/meetings/901722> of the Working Group meetings at ICANN63. To facilitate your participation in the sessions, please find attached the Final Report prepared by the Analysis Group. Key findings from the survey results are from page 6 to page 52. The complete survey results are included in the appendixes. Analysis Group plans to review the survey results in the order of the report and engage in discussions with the Working Group. The order is as follows: 1. Actual Domain Name Registrants 2. Potential Domain Name Registrants 3. Trademark Owners 4. New gTLD Registry Operators 5. Registrars Selling Domain Names Registered in the New gTLDs As a refresher and for those who may not be familiar with the survey, page 2 to page 6 provides background information of this survey project. The complete final survey questions are also included in the appendixes. The survey was launched on 6 September and closed on 5 October 2018. Best Regards, Mary, Julie, Ariel & Berry

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REMINDER: Agenda and Materials for 12 October Working Group Meeting 1700 UTC
by Julie Hedlund Oct. 18, 2018

Oct. 18, 2018

Dear RPM PDP Working Group members, On behalf of the Co-Chairs, please see the draft agenda below for the Working Group meeting on Friday, 12 October at 1700 UTC for 120 minutes (meeting may not require the full 120 minutes). Per Co-Chairs’ Proposed Procedure, for this next meeting, the Working Group will continue discussion of the Individual URS Proposals. According to the timeline published on the wiki the order of the presentation is as follows. WG members are requested to review the presentations prior to Wednesday’s meeting. George Kirikos (#23): https://community.icann.org/download/attachments/93126760/URS-Proposal-23.p… George Kirikos (#32): https://community.icann.org/download/attachments/93126760/URS-Proposal-32.p… George Kirikos (#33): https://community.icann.org/download/attachments/93126760/URS-Proposal-33.p… George Kirikos and Zak Muscovitch (#34): https://community.icann.org/download/attachments/93126760/URS-Proposal-34.p… NOTE FOR WG MEMBERS REVISING PROPOSALS: If WG members have revised/combined proposals the Co-Chairs request that they send them to the WG list as soon as possible and be ready to present them during the meeting on Friday, 12 October. Staff have updated the numberings displayed on the proposals to be consistent with the numberings on the wiki. The wiki page also includes a document that consolidates all URS proposals from individual members to facilitate viewing/reference. Per the procedure, please also note the following time requirements for the presentations: When a proposal is up for discussion, its proponent will be accorded a maximum of five (5) minutes to orally present the proposal, rationale, and supporting evidence. The floor will then be open to other Working Group members to comment on the proposal for a maximum of two (2) minutes each, with total discussion limited to twenty (20) minutes. However, if there is exceptionally high interest in a topic, the Co-Chairs would have discretion to increase the discussion time. At the end of twenty (20) minutes, or when there are no more commenters in queue, the proponent will have up to four (4) minutes to respond and/or propose a modification of the proposal based upon the discussion. Depending on the actual progress during the Wednesday meeting, if a proposal cannot be presented due to time limitation, the presentation should be deferred to the meeting on 12 October. Draft Agenda: Review Agenda/Statements of Interest Updates Discussion of Individual URS Proposals (See: wiki) ICANN63 Schedule (see attached) AOB Best, Mary, Ariel, Berry, and Julie On Behalf of the RPM PDP WG Co-Chairs

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URS "Loser Pays" proposal vs. TTAB Manual of Procedure
by George Kirikos Oct. 18, 2018

Oct. 18, 2018

Hi folks, In addition to the past concerns expressed re: identity theft, and how it can lead to a denial of service attack if a loser pays policy was adopted for the URS: https://mm.icann.org/pipermail/gnso-rpm-wg/2018-September/003291.html I did some additional research today on the United States TTAB procedures, and found this: https://tmep.uspto.gov/RDMS/TBMP/current#/current/sec-6f6dfee8-51e8-40b5-bc… "Trademark Trial and Appeal Board Manual of Procedure 2018-06 502.05 Attorneys’ Fees, etc., on Motions The Board will not hold any person in contempt, or award attorneys’ fees, other expenses, or damages to any party. [ Note 1.] NOTES: 1. 37 C.F.R. § 2.127(f); NSM Resources Corp. v. Microsoft Corp., 113 USPQ2d 1029, 1035 n.10 (TTAB 2014) (Board cannot assess monetary damage awards); General Mills Inc. v. Fage Dairy Processing Industries SA, 100 USPQ2d 1584, 1591 (TTAB 2011) (no authority to determine damages), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential); Kairos Institute of Sound Healing, LLC v. Doolittle Gardens, LLC, 88 USPQ2d 1541, 1544 n.6 (2008); Central Manufacturing Inc. v. Third Millennium Technology Inc., 61 USPQ2d 1210, 1213 (TTAB 2001) ("although the Board does not impose monetary sanctions or award attorneys’ fees or other expenses, the Board has the authority to enter other appropriate sanctions"); Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 n.3 (TTAB 2000). See also 37 C.F.R. § 2.120(g) and 37 C.F.R. § 2.120(h)(1). Note, however, that conduct in violation of the Disciplinary Rules set forth in 37 C.F.R. Part 11 may be referred to the Office of Enrollment and Discipline (OED) for appropriate action. See 37 C.F.R. § 11.19 et seq." So, what is being proposed in regards to "loser pays" doesn't appear to exist in the US TTAB procedures. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

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ICANN63: Schedule of RPM PDP Working Group Meetings
by Julie Hedlund Oct. 18, 2018

Oct. 18, 2018

Dear Working Group members, Please see below the schedule and links for the RPM PDP Working Group meetings at ICANN63: Barcelona ICANN63: Face-to-Face Full RPM PDP WG Meetings (with remote participation in the links below): GNSO - RPM working group (1 of 4): 15:15 - 16:45, Sun, Oct 21, 2018 Remote Participation -- https://63.schedule.icann.org/meetings/901715 Wiki Agenda: https://community.icann.org/display/RARPMRIAGPWG/2018-10-21+ICANN63+Barcelo… GNSO - RPM working group (2 of 4): 17:00 - 18:30, Sun, Oct 21, 2018 Remote Participation -- https://63.schedule.icann.org/meetings/901716 Wiki Agenda: https://community.icann.org/display/RARPMRIAGPWG/2018-10-21+ICANN63+Barcelo… GNSO - RPM working group (3 of 4): 12:15 - 13:30, Mon, Oct 22, 2018 Remote Participation -- https://63.schedule.icann.org/meetings/901722 Wiki Agenda: https://community.icann.org/display/RARPMRIAGPWG/2018-10-22+ICANN63+Barcelo… GNSO - RPM working group (4 of 4): 13:30 - 15:00, Mon, Oct 22, 2018 Remote Participation -- https://63.schedule.icann.org/meetings/901723 Wiki Agenda: https://community.icann.org/display/RARPMRIAGPWG/2018-10-22+ICANN63+Barcelo… Please also see the full ICANN63 schedule at: https://63.schedule.icann.org/meetings Best, Mary, Ariel, Berry, and Julie

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ICANN 63 BARCELONA
by URS - Uniform Rapid Suspension System - MFSD Oct. 18, 2018

Oct. 18, 2018

Dear All, should anyone of the WG be interested, MFSD is organizing a morning workshop on Tuesday 23 October from 9 to 11 am in order to raise awareness and share experiences and best practices on domain name disputes (.es, URS and UDRP) and the impact of the GDPR on such disputes (program attached hereto). Place: Elzaburu SLP, Carrer del Rosselló 216, 9th Floor, Barcelona Registration: http://www.elzaburu.es/es/area-de-clientes/inscribete/registration-bcn-ican… Looking forward to meeting you in Barcelona, safe travels. Ivett Paulovics URS Domain Dispute Case Manager --- MFSD Srl | IP Dispute Resolution Center Via Giorgio Washington, 50 | 20146 Milano (Italy) T +39 02 45506624 | F +39 02 91471087 M +39 329 2596103 urs(a)mfsd.it <mailto:responsabile@mfsd.it> | https://urs.mfsd.it <https://urs.mfsd.it/> Skype mfsd.urs P. Iva 04810100968 (Italian VAT) ------------------------------------------------------------------------- URS Domain Dispute Resolution Service Provider approved by ICANN .it Domain Dispute Resolution Center accredited by Registry .it IP Mediation Center authorized by Italian Ministry of Justice (no. 903) IP Mediation Training Center authorized by Italian Ministry of Justice (no. 392)

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List of URS Individual Proposals & Suggested Support Levels
by Julie Hedlund Oct. 18, 2018

Oct. 18, 2018

Dear RPM PDP Working Group members, In preparation for the Working Group meetings at ICANN63, session 1 and session 4, and in accordance with the attached Procedures for URS Policy and Operational Recommendations, staff have reviewed the WG deliberations as recorded in the meeting transcripts and chat rooms, and have produced the attached table with the staff’s suggested levels of support for the individual proposals. The co-chairs believe a good path forward is to allow all WG members to review and, if they wish, comment upon these preliminary designations of support. For those attending ICANN63, please bring your comments to our first face-to-face (F2F) session on Sunday, 21 October at 15:15-16:45 local time. For those not attending the F2F meeting, please feel free to let us know your thoughts online. Staff took its guidance from the following excerpt from Section 7 of the procedures, as agreed to by the WG: “Unless there is substantial material opposition within the Working Group, Sub Team recommendations will be included in the Initial Report for the purpose of soliciting public comment thereon. To be clear, Sub Team recommendations have a rebuttable presumption, subject to WG feedback, of enjoying an adequate level of support to be included in the Initial Report for the purpose of soliciting community input; Sub Team proposals, like those from individuals, will only become Final Report recommendations if they achieve Full Consensus or Consensus.” The Co-Chairs would like the WG to note the following with respect to these suggested levels of support: These are preliminary and subject to review and deliberation by the WG at ICANN63; WG members are encouraged to provide feedback on the suggested levels of support and in particular as to whether there are any mischaracterizations; The levels of support and determination with respect to inclusion in the Initial Report will be based on the deliberations at ICANN63, with public comment requested on all proposals that garnered adequate support; The Initial Report will note for the record individual proposals that failed to achieve adequate support; The WG will have the opportunity to review the proposals as they appear in the draft Initial Report and propose revisions before the Initial Report is published for public comment. Finally, if WG members have revised proposals they should submit them to the WG list no later than 23:59 UTC on Friday, 19 October so that they may be discussed at the sessions at ICANN63. Best regards, Mary, Julie, Ariel & Berry On behalf of the RPM PDP Working Group Co-Chairs

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"Lack of cause of action" followup (URS proposals #18, #19, #20)
by George Kirikos Oct. 18, 2018

Oct. 18, 2018

Hi folks, Just to followup on our call, in regards to proposals #18, #19, and #20: https://community.icann.org/download/attachments/93126760/URS-Proposal-18.p… https://community.icann.org/download/attachments/93126760/URS-Proposal-19.p… https://community.icann.org/download/attachments/93126760/URS-Proposal-20.p… attempting to solve the "lack of a cause of action" problem, whereby a registrant attempting to bring a court action to challenge the outcome of an adverse URS/UDRP would be denied a decision on the underlying merits in the courts, as the case would be tossed for lack of a cause of action:, there were questions regarding whether the Yoyo.email case was an outlier, etc., i.e. whether there was any real issue. First, it wasn't just one case in the UK. There were others (albeit, not involving the UDRP, but the very similar Nominet DRS), see: https://www.lexology.com/library/detail.aspx?g=4f1b77cc-8474-4e9f-b02d-f654… "The High Court also clarified that it did not have jurisdiction to hear appeals of uniform dispute resolution policy (UDRP) or Dispute Resolution Service (DRS) decisions. .... In relation to the claimant's request for declaratory relief, the court held that the UDRP did not "afford any jurisdiction" to the High Court to "act as an appeal or review body" from the domain name dispute resolution panel's decision in August 2014. The judge held that clause 4k of the UDRP (which states that the parties are not barred from taking the matter to court after its conclusion) did not give rise to a separate cause of action in favour of the claimant, nor give the court any jurisdiction to act as an appeal or review body in relation to the UDRP decision. This is in line with the previous case of 'Toth' which similarly held that the court did not have jurisdiction to hear appeals of DRS policy decisions. (By way of reminder, Nominet's DRS policy is applicable in relation to '.co.uk' domain names whilst WIPO's UDRP is relevant to various other gTLDs, such as '.email' in this case.)" So, there's "Toth", which is mentioned too. Toth v Emirates is discussed at: https://www.brownejacobson.com/about-us/news-and-media/published-articles/2… https://www.theregister.co.uk/2012/03/22/nominet_rules_mean_abusive_domain_… "The High Court has struck out an application for a declaration that a domain name was not an abusive registration, and found that the question of whether or not a registration is abusive is one for the expert only." Here's a third example, Patel v. Allos Therapeutics: https://www.edwincoe.com/blogs/main/court-confirms-principles-applied-domai… "In Patel, the unsuccessful respondent at UDRP commenced proceedings in the Chancery Division and was met with an application for striking out, which was granted, the judge holding that the proceedings disclosed no cause of action and were totally without merit. Referring to clause 4(k) of the UDRP the judge in Patel had noted that this clause speaks of “referring the dispute” to the court for “independent resolution” but had made it clear that this cannot confer a jurisdiction on the court which it does not otherwise have, and that the claimant must demonstrate some independent right of action." Furthermore, this is also apparently a problem in Australia (Paul Keating had mentioned this in the IGO PDP, although I don't have any case citations -- perhaps he'd share). So, to deny the existence of this problem in the face of actual court precedents does not seem credible to me, especially when you have law firms openly stating (as per the most recent link above) that: "The High Court has confirmed that (1) unsuccessful respondents in UDRP or DRS proceedings have no right of appeal to the English Court..." The three solutions proposed address an actual problem for registrants, namely access to the courts, that were part of the "grand bargain" that was made when these policies were adopted. The DRP policies from ICANN were never intended to be the "final word." I also refer folks back to the original thread in November 2017 on this topic: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/date.html Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

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URS / UDRP proposals -- data on registrar/registry compliance costs
by George Kirikos Oct. 17, 2018

Oct. 17, 2018

Hi folks, In support of an upcoming proposal regarding allowing cost recovery by registrars and registries of compliance costs associated with the handling of URS and UDRP disputes, I wanted to share the following data (which I will then reference in the actual proposal). (a) I reached out to Reg Levy of Tucows, Direct of Compliance for the world's 2nd largest registrar (and also a member of this PDP), regarding time spent handling UDRP and/or URS complaints and was told: "With regard to URS, that applies primarily to registries, so we don't have any cost for for those. For UDRPs, I haven't done an analysis of how long it would take one of my team members to process a UDRP complaint; generally, it simply includes intake, locking the domain, and then unlocking or forwarding the domain upon resolution. A normal UDRP would likely take around 15 minutes but there are some tough ones (I've spent more than an hour on a few with Paul talking through the issues and figuring out how we will proceed) so I'd call it an average of 30–35 minutes per claim." (she said I could share this response with the PDP) (b) GoDaddy's registration agreement suggest that they'll charge an administrative fee (albeit to the registrant) for such compliance costs: https://ca.godaddy.com/legal-agreements "GoDaddy also reserves the right to charge you reasonable “administrative” fees" for (i) tasks GoDaddy may perform outside the normal scope of its Services, (ii) additional time and/or costs GoDaddy may incur in providing its Services, and/or (iii) your noncompliance with this Agreement (as determined by GoDaddy in its sole and absolute discretion). Typical administrative or processing fee scenarios include, but are not limited to (i) customer service issues that require additional personal time or attention; (ii) UDRP actions(s) in connection with your domain name(s) and/or disputes that require accounting or legal services, whether performed by GoDaddy staff or by outside firms retained by GoDaddy; (iii) recouping any and all costs and fees, including the cost of Services, incurred by GoDaddy as the results of chargebacks or other payment disputes brought by you, your bank or Payment Method processor. These administrative fees or processing fees will be billed to the Payment Method you have on file with GoDaddy." and it has been $50 in the past: https://domaingang.com/domain-news/udrp-fee-reversed-godaddy-heres-done/ (c) Some URS and UDRP disputes involve multiple domains, increasing the complexity and thus the cost of compliance for registrars/registries on a variable per-domain name level, e.g. http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-1661.html involved 1,542 domains, all of which need to be put on a legal hold/lock, checked to determine that they involve the same registrant, etc. (d) if any other registrars and registries wish to share data publicly on typical compliance costs (e.g. time per dispute, etc.), that would be wonderful. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

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Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12
by Paul Keating Oct. 17, 2018

Oct. 17, 2018

Phil, you cannot disavow everything you wrote as not having a link to you and your views. George, You cannot keep pulling out every comment someone makes in the past as a fact for how that person now believe. Paul . On 10/17/18, 12:12 AM, "GNSO-RPM-WG on behalf of Corwin, Philip via GNSO-RPM-WG" <gnso-rpm-wg-bounces(a)icann.org on behalf of gnso-rpm-wg(a)icann.org> wrote: While noting that you have recently developed an interest in advocacy articles I penned years ago on behalf of the ICA, I must state once again that they articulated positions and views taken by its Board at that time and should not be presumed to represent my current personal positions or views, or those of my current employer. Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Tuesday, October 16, 2018 5:55 PM To: gnso-rpm-wg <gnso-rpm-wg(a)icann.org> Subject: [EXTERNAL] Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12 P.S. Phil Corwin's comment on the LegalSupply.com UDRP (on that blog): "If anyone was squatting here it looks like elegalsupply.com, which sure looks confusingly similar to the previously registered legalsupply.com. If broadly adopted, this principle — “The transfer of a domain name is equivalent to a new registration under the UDRP” — means a permanent reduction in the value of all non-infringing generic domains. It means that your preexisting domain rights are subordinate to a later registered trademark that is identical or confusingly similar. That devalues the domain as a marketable asset because if you sell it to someone else they are susceptible to a UDRP filed by the trademark-based squatter. As for this part of the examiner’s findings — “Respondent registered the disputed domain name for the purpose of selling the disputed domain name for valuable consideration in excess of Respondent’s out-of-pocket costs.” — So what? The purchaser acquired a non-infringing asset, and the mere fact that its ownership was transferred between two parties should not alter its non-infringing nature. Since when is the hope that a legally acquired and legaly compliant asset may later be sold for additional value proof of anything except smart investment? Is the UDRP opposed to lawful profit? This should not be allowed to stand." Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Tue, Oct 16, 2018 at 5:45 PM, George Kirikos <icann(a)leap.com> wrote: > Any deviation from the law simply means there will be more litigation > in the courts, not less litigation, increasing expenses for all > concerned. > > To give an example of a real domain dispute that has been "caught" by > the current interpretation, consider LegalSupply.com: > > http://www.adrforum.com/domaindecisions/1438796.htm > https://www.thedomains.com/2012/05/24/legalsupply-com-lost-to-elegalsu > pply-com-the-transfer-of-a-domain-is-equivalent-to-a-new-registration/ > > Complainant registers a "worthless" TM for "eLegalSupply.com" long > after the LegalSupply.com domain name is created. Domain name changes > hands, and then the owner of the worthless "eLegalSupply.com goes for > the "domain upgrade" via UDRP. And they win the UDRP, demonstrating > how companies are exploiting the current incorrect interpretation (see > the blog post for the reaction). > > This is the state of the UDRP today, and it must change. > > Sincerely, > > George Kirikos > 416-588-0269 > http://www.leap.com/ > > > > > > > On Tue, Oct 16, 2018 at 5:33 PM, Greg Shatan <gregshatanipc(a)gmail.com> wrote: >> At best, what we have here with Hise and Schmidheiny is a split >> between the circuits. Hise is not more correct simply because it was decided later. >> And Schmidheiny is not less correct because Hise disagreed with it. >> >> To the extent there’s any ambiguity here, the simpler solution would >> be to clarify once and for all that re-registration is registration. >> This would be “perfectly aligned” with Schmidheiny and past practice >> with regard to domain names. All in all, an objectively better result. >> >> An even simpler solution would be to eliminate the registration prong >> entirely. Any purported ambiguities around “registration” or “creation” >> would be irrelevant and panels could focus on determining the actions >> of the domain name owner, without needing to look back at the one or >> another point in history. >> >> Both of these alternatives should be stated for consideration if this >> proposal proceeds to publication. >> >> Briefly, on other points. Those SEC filings were just more >> agreements, so all that I said (and Gerald said) about that point >> still stands. Domain names are not IP. And the many “rationales” >> predicated on the idea that domain names are IP must be dismissed as based on a false premise. >> >> The language quoted from ACPA does not magically turn it from >> disjunctive to conjunctive. It does not change “or” to “and.” ACPA >> is still disjunctive — critical in terms of the elements of proof under both regimes. >> >> The Proposal seeks to exploit a claimed ambiguity to create a class >> of “immunized” domain names that can be used by anyone at any time in >> even the most flagrant abusive fashion without fear of a UDRP >> proceeding, simply because their initial registration was not in bad >> faith. These weaponized domains would be more attractive to >> malfeasors, thus creating added value for the registrant — the windfall referred to earlier. >> >> There’s no need to respond in more detail, given the detailed >> responses from Georges, Gerald, Brian and Scott, with which I agree. >> In particular I agree that panelists originally and repeatedly have >> gotten this right, as did Schmidheiny, and this was never an “error” >> or a “mistake.” Hise is the outlier, as was the Voyuer case, which >> did not actually examine the issue since the Complainant was found >> not to have a trademark (so the issue of registration date was essentially moot). >> >> I also agree that, even with the “low bar” for publication of >> submissions, this is one that should not be put forward. >> >> Best regards, >> >> Greg >> >> >> On Tue, Oct 16, 2018 at 3:57 PM George Kirikos <icann(a)leap.com> wrote: >>> >>> Hi Scott, >>> >>> Responding to the issues you raised in order: >>> >>> 1.A. Not going to get into the whole "who is a registrant" issue, >>> given the GDPR. Certainly we all understand that affects all >>> disputes, and is not limited to my proposal. >>> 1.B. Creation date is visible in WHOIS, e.g. for EXAMPLE.COM it's at: >>> >>> https://reports.internic.net/cgi/whois?whois_nic=example.com&type=do >>> main >>> >>> Creation Date: 1995-08-14T04:00:00Z >>> >>> for Math.com it is at: >>> https://reports.internic.net/cgi/whois?whois_nic=math.com&type=domai >>> n >>> >>> Creation Date: 1998-09-10T04:00:00Z >>> >>> This is not open to interpretation/misinterpretation like >>> "Registration Date" >>> >>> 1.C. Transfer dates are not stored in WHOIS currently, for >>> *existing* disputes (where transfer of ownership is claimed as the new date). >>> Folks who respond can document things accordingly. Or, heck, >>> complainants can send a C&D first, actually reach out to the domain >>> owner, instead of using UDRP as a *first* resort. WHOIS history at >>> places like DomainTools can also be used to guess at these dates, as >>> is done today. The "years of precedent" that you point to were all >>> wrongly decided, as the Gopets decision demonstrates. >>> >>> 2. Use is an entirely separate part of the 3rd prong of bad faith. >>> >>> 3. Whether or not domain names are "intellectual property" doesn't >>> affect the proposal. See GoPets or Voyuer.com, i.e. how a >>> successor-in-interest is passed *all* the rights of the predecessor, >>> including priority rights. Also, a domain name right doesn't need to >>> be linked to trademark rights to still be considered IP. Take a look >>> at copyrights that can't be TMs. Yet copyrights are still IP (a >>> different type of IP). >>> >>> 4. You can use the courts, to go after *use* in bad faith (as you >>> can today, even for domains that are not registered in bad faith faith). >>> Your remedies would be different (e.g. not necessarily transfer of >>> the domain name, but ordering the registrant to cease the infringing use). >>> Furthermore, you can still go after obviously-malicious domains that >>> are never used early, if they have no conceivably good faith use, >>> today. e.g. google-registration-2018.horse need not be used at all, >>> to lose a UDRP/URS. >>> >>> 5. You seem to be very critical of the courts. Which specific >>> national courts do you have a problem with? Canada? USA? UK? France? China? >>> Japan? Here's a list of all the countries that have registrars (for >>> "mutual jurisdiction" purposes): >>> >>> https://www.internic.net/origin.html >>> >>> Tell me which ones are "rogue" in your eyes. >>> >>> What's funny is that often the same folks who are critical of >>> national courts are entirely uncritical when asked "Which nation's >>> TMs should be barred from the TMCH?" There, the answer is "A TM is a TM is a TM" >>> and that if one has a problem with that TM, take it up with "the >>> courts"!! (e.g. all the dubious TMs being used in the sunrise period >>> to game the system) >>> >>> Sincerely, >>> >>> George Kirikos >>> 416-588-0269 >>> http://www.leap.com/ >>> >>> On Tue, Oct 16, 2018 at 2:58 PM, Scott Austin >>> <SAustin(a)vlplawgroup.com> >>> wrote: >>> > George: >>> > Thanks for the update. Per Brian's reality check I see the >>> > following showstopper issues (for me anyway) and do not support >>> > the proposal on these >>> > grounds: >>> > 1. Text of proposal creates, not clarifies ambiguity. >>> > The URS and UDRP policies shall be changed to require that >>> > complainants (excluding prior registrants of the domain name) >>> > prove that a domain name was created in bad faith (with the >>> > creation date of the domain name being the relevant date), >>> > replacing the current ambiguous registered in bad faith standard. >>> > In the event that a prior registrant of the domain name brings a >>> > dispute as complainant, they instead need only prove that a domain >>> > name was acquired in bad faith (with the acquisition date of the >>> > domain name by the current registrant being the relevant date). >>> > All other remaining prongs of the 3-part test shall continue as >>> > before (e.g. use in bad faith, no legitimate interest, confusingly >>> > similar to a TM). >>> > >>> > >>> > “Prior registrants” - in this instance you refer to registrant but >>> > you dismiss the term registered as ambiguous. Yet one becomes a >>> > registrant by registering a domain name on a date certain. However >>> > where do you look online (especially after GDPR) to confirm >>> > someone is a "prior registrant"? >>> > There is no grantor/grantee deed index at the local county >>> > recorder office that publicly discloses not only the current >>> > registrant, but each registrant prior to the current one where a >>> > change in ownership has occurred. And what is to preclude an >>> > original registrant from using an alias or dba and just changing >>> > ownership in the underlying “original” registrant organization. >>> > None of ownership data is authenticated or policed, except at the >>> > credit card swipe stage. Maybe creation should be tied and >>> > displayed based on that. >>> > “creation” and “creation date” – how is this more accurate than >>> > “registration date or initial registration date. Is creation an >>> > earlier moment, when the domain is approved in a board room, >>> > purchased by a promoter to be assigned to the company that will >>> > use it, requested? Searched for availability on whois? I could >>> > make a case filled with unique time consuming fact and >>> > circumstance checking that each one of those stages in the >>> > decision to acquire and use a domain was its “creation”. And why >>> > the carve out for prior registrants? Why not prior creators if >>> > that is the operative term. >>> > It >>> > doesn’t work. >>> > “Acquisition Date” – is this a date stated in a contract that a >>> > complainant can’t find. Registration date is the only date in >>> > whois that is available. >>> > This would undo or compromise years of precedent based on >>> > registration date and again creates the ambiguity of what >>> > circumstances demonstrate acquired and how do you investigate >>> > that. Unacceptable and no evidence this improves upon the status >>> > quo in clarity or effectiveness for intended purpose. >>> > >>> > And what about use – is this part of creation? Does your proposal >>> > open the door to the fatal disjunctive “registered or used” in bad >>> > faith, perceived as the death knell to the secondary market for >>> > domain names. Be careful what you wish for. I don’t see use >>> > mentioned anywhere in your proposal text, but see point E below. >>> > Domains as intellectual property. This is the biggest problem I >>> > have with your insistence that all domain names are created >>> > equally. What about generic.com? Is a domain that cannot acquire >>> > trademark rights intellectual property? Sounds like merely what it >>> > is: a URL address licensed to a user by a registrar that >>> > conveniently converts machine readable numbers to text readable >>> > and more easily remembered by humans. Without your infusions of >>> > contract or trademark use this does not clearly fall under the >>> > category of IP and your argument fails. As other’s have pointed >>> > out you frame your argument by conveniently using examples of >>> > domain names infused with intellectual property rights, either 1) >>> > by defining domain names as such in an agreement which in context >>> > could have added URLs or website addresses or maybe something more >>> > remote as long as agreed to by the parties; or 2) a “domain like” >>> > name comprised in part of an unregistered trademark term used as a >>> > component of a registered words plus design mark in a stylized >>> > font with a slogan. The slogan is a marketing device for an IP >>> > firm, not law or a ruling on domain names as intellectual >>> > property. >>> > If a string of serial domain acquisitions has renders the final >>> > successor beyond bad faith no matter how maliciously they use >>> > their purchased domain registration, what is the intent? Is the >>> > intent that domains like sleeper cells can be stockpiled in the >>> > thousands without use, so they do not come to the attention of >>> > rightsholders, which would first target use of a domain to support >>> > a phishing site or infringing site or even a parking site >>> > incorporating a deceptive misspelling of a trademark. Thus flying >>> > under the radar until sufficient repurchase and time elapse while >>> > they appear innocuous, they pass a date (your affiliated proposal >>> > suggests 2 years I >>> > believe) after which they can be sold on a secondary domain market >>> > to a successor registrant who now can spring into being putting a >>> > full blown phishing site, counterfeit site of the rights holder’s >>> > mark without worry of a summary proceeding as it is time barred or >>> > bad faith only applies to the initial registrant present at >>> > “creation” who financed the “sleeper period” but now can sell >>> > their vintage protected incontestable domains at a premium. >>> > But that’s not all. What your proposal’s Complainant/Respondent or >>> > rightsholder/disputed registrant two-dimensional approach fails to >>> > consider is that trademark rights are 3 dimensional. The trademark >>> > act in the US at least and I would venture most countries is a >>> > consumer protection act. >>> > You’ve left out consumers. Why should consumers, those folks that >>> > TM and Circle R were “created” to protect from passed off inferior >>> > goods or services be subjected to confusion under your proposal >>> > because a rightsholder waited too long to protect its rights, or >>> > failed to get to a particular domain until it had changed hands >>> > multiple times while they used their limited resources to chase >>> > the most blatant offenders. There is no evidence that the benefit >>> > to registrants afforded by your proposal outweighs the cost to >>> > rightsholders AND the consuming public. You have made it clear for >>> > some unsubstantiated, unproven reason the you want to make it hard >>> > for rightsholders to protect their marks and consumers, or >>> > eliminate summary proceedings altogether, forcing rightholders to >>> > march into court in distant regions of the globe, in jurisdictions >>> > where courts may take years to hear a case or may not recognize >>> > the same luxuries of due process and review, shortened statutes of >>> > limitations, lack technical understanding, etc. >>> > This >>> > would be the case already with many ccTLDs. The prize here appears >>> > to be taking away from rightsholders well-established protections >>> > that apply to the most valuable TLD - .com. For the foregoing >>> > reasons, George, I object to and do not support proposal 12. >>> > >>> > >>> > >>> > Best regards, >>> > Scott >>> > >>> > Please click below to use my booking calendar to schedule: >>> > a 15-minute call a 30-minute call a 60-minute call >>> > >>> > >>> > Scott R. Austin | Board Certified Intellectual Property Attorney | >>> > VLP Law Group LLP >>> > 101 NE Third Avenue, Suite 1500, Fort Lauderdale, FL 33301 >>> > Phone: (954) 204-3744 | Fax: (954) 320-0233 | >>> > SAustin(a)VLPLawGroup.com >>> > >>> > -----Original Message----- >>> > From: GNSO-RPM-WG <gnso-rpm-wg-bounces(a)icann.org> On Behalf Of >>> > George Kirikos >>> > Sent: Tuesday, October 16, 2018 12:55 PM >>> > To: gnso-rpm-wg <gnso-rpm-wg(a)icann.org>; Ariel Liang >>> > <ariel.liang(a)icann.org> >>> > Subject: Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12 >>> > >>> > Hi again, >>> > >>> > Attached is the updated revised version of URS Proposal #12, >>> > simply adding the Gopets v. Hise case citation in section #8. >>> > Thanks to Brian for his "strong objection", otherwise I wouldn't >>> > have remembered that there was case law to show that this proposal >>> > would align the UDRP with the law. >>> > >>> > Sincerely, >>> > >>> > George Kirikos >>> > 416-588-0269 >>> > >>> > https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.leap.com%2f >>> > &c=E,1,zxbn2tiatvkzhTWqLCBws9UpWsXQfALYuHFBkumURXOj2rNgWiHDb5SMRHa >>> > pRED2kjZosRrEKzbsY9tcDWr5CcimUjT0IDk9PVjMk-qYCiPPPXI,&typo=1 >>> > >>> > >>> > On Tue, Oct 16, 2018 at 12:43 PM, George Kirikos <icann(a)leap.com> wrote: >>> >> Hi Brian: >>> >> >>> >> I refer you to the following case in the California courts, that >>> >> referenced this exact topic: >>> >> >>> >> GOPETS v. Hise, >>> >> >>> >> http://cdn.ca9.uscourts.gov/datastore/opinions/2011/09/22/08-5611 >>> >> 0.pdf >>> >> >>> >> (also listed on the WIPO Website at: >>> >> https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.wipo.int%2 >>> >> fexpo >>> >> rt%2fsites%2fwww%2famc%2fen%2fdocs%2fd20060636circuitdecision.pdf >>> >> &c=E, >>> >> 1,Zv_K5R1ftgPNTQiVMR_bC87QMECSVRKnYtZUp7s19bYEZH7pyDxPmrrOvZN6ZlD >>> >> S9FKm >>> >> TiTxL85qJLS83LA35hYYYZF8-y0WVrn51dOwmgcDmr41b_c,&typo=1 >>> >> linked from >>> >> https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.wipo.int%2 >>> >> famc% >>> >> 2fen%2fdomains%2fchallenged%2f&c=E,1,gY1N97-hyy-P1Z5o-hqKcm3Ev6O- >>> >> wEnMX >>> >> K3X-J_odUWYxGSzItAGVRQrpZrjfHSUXXwaVvftXV_forYiX6DTYDuIAL5QM5UbZG >>> >> RZmkF >>> >> f72p4SA,,&typo=1 ) >>> >> >>> >> “”The primary question before us is whether the term “registration” >>> >> applies only to the initial registration of the domain name, or >>> >> whether it also applies to a re-registration of a currently >>> >> registered domain name by a new registrant. We hold that such >>> >> re-registration is not a “registration” within the meaning of § 1125(d)(1).”" >>> >> >>> >> [5] Like the text of § 8131(1)(A), the text of § 1125(d)(1) >>> >> considered in isolation does not answer the question whether “registration” >>> >> includes re-registration. Looking at ACPA in light of traditional >>> >> property law, however, we conclude that Congress meant “registration” >>> >> to refer only to the initial registration. It is undisputed that >>> >> Edward Hise could have retained all of his rights to >>> >> https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fgopets.com&c= >>> >> E,1,- >>> >> VgBFYawV9wu9qv-RzSR6QGGiHEe8kEPwnaf4eVwHmF83L-LceMWXH7w_BufTEzBgm >>> >> yTqVb >>> >> PGpeXPqQRX8e1sL405GqpLLfW5D6FlfnUebdsGCTO_nI,&typo=1 >>> >> indefinitely if he had main- >>> >> tained the registration of the domain name in his own name. >>> >> *****We see no basis in ACPA to conclude that a right that >>> >> belongs to an initial registrant of a currently registered domain >>> >> name is lost when that name is transferred to another owner. The >>> >> general rule is that a property owner may sell all of the rights >>> >> he holds in property.**** GoPets Ltd.’s proposed rule would make >>> >> rights to many domain names effectively inalienable, whether the >>> >> alienation is by gift, inheritance, sale, or other form of >>> >> transfer. Nothing in the text or structure of the statute indi- >>> >> cates that Congress intended that rights in domain names should be inalienable. >>> >> >>> >> [6] We therefore hold that Digital Overture’s re-registration of >>> >> >>> >> >>> >> https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fgopets.com&c= >>> >> E,1,DF99RAI3ybmbOz_-PzuqFMbtBZxMird3X0lJuuBFBWtKjN6IZR7cxhqozpRUu >>> >> NmZ6EoYyudU-jXFUy4RHpf70psnP--oxffVLFx8UXhZA5rUXw,,&typo=1 >>> >> was not a registration within the meaning of § 1125(d)(1). >>> >> Because Edward Hise registered >>> >> https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fgopets.com&c= >>> >> E,1,5 >>> >> >>> >> >>> >> JfuZSC5tr8d1NGTRclG7SA5HCEZEhyUmxBmgSJCj4PXlEA01vhXIu9EVO_ENPhLeH >>> >> 4_zPIrZuAoMsg9-D0TQnIl7prICFDUhaVndrR_bcGdG5mg&typo=1 >>> >> in 1999, long before GoPets Ltd. registered its service mark, >>> >> Digital Overture’s re-registration and continued ownership of >>> >> >>> >> https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fgopets.com&c= >>> >> E,1,7pUeaPOYFpJL-G1dy4FHDNn4hOhKtBkTqZ6LNuK29a7LdNCY6CsvwYQ0Co-HI >>> >> r8XKEH7rRwb_sQGBvhY5xGnOjo8Svxm2Fm5LGARyFhnjpGkH3LP2w,,&typo=1 >>> >> does not violate § 1125(d)(1). >>> >> >>> >> There you have it. Have WIPO panels been observing this court >>> >> precedent? Has WIPO updated their "WIPO Views"? Of course not, >>> >> even though it's been published on WIPO's own website! Perhaps >>> >> WIPO will take steps to remove that case from their website, just >>> >> like they removed the PUPA.COM case involving my company?? >>> >> >>> >> It's time to remove the ambiguity once and for all, and my >>> >> proposal does just that, and furthermore aligns it with court >>> >> precedent and common sense. I probably should have added this >>> >> case to my revised proposal. I'll do that shortly, and send it again. >>> >> >>> >> Sincerely, >>> >> >>> >> George Kirikos >>> >> 416-588-0269 >>> >> https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.leap.com%2 >>> >> f&c=E >>> >> ,1,6SO43nms3azu6w2FDDcjjOwLnUDLMqH8Z2fNCiOWXeSHJf1IOdbm13c7jIhwFa >>> >> SCI8Y >>> >> y9ymQjmKdiDXPO4BXpuLrxUkJTeqAWXWt0JHnDcGA_zkbTg,,&typo=1 >>> >> >>> >> >>> >> >>> >> On Tue, Oct 16, 2018 at 12:13 PM, BECKHAM, Brian >>> >> <brian.beckham(a)wipo.int> >>> >> wrote: >>> >>> Speaking in my non-chair capacity, and mindful of the "low bar" >>> >>> that has been set for inclusion in the Initial Report, I would >>> >>> like to register the strongest of objections to this proposal. >>> >>> >>> >>> Not only would it give carte blanche to later-acquiring >>> >>> registrants to infringe a complainant's mark, but moreover, the >>> >>> claimed ambiguity blatantly mischaracterizes panel consensus >>> >>> described in the WIPO Overview, which does not reflect any >>> >>> "ambiguity" in how panels assess the applicable registration >>> >>> date. >>> >>> >>> >>> Perhaps one or two panelists or counsel who are members of this >>> >>> WG could add their views. >>> >>> >>> >>> Brian >>> >>> ________________________________________ >>> >>> From: GNSO-RPM-WG <gnso-rpm-wg-bounces(a)icann.org> on behalf of >>> >>> George Kirikos <icann(a)leap.com> >>> >>> Sent: Tuesday, October 16, 2018 4:35 PM >>> >>> To: gnso-rpm-wg; Ariel Liang >>> >>> Subject: [GNSO-RPM-WG] Revised Version of URS Proposal #12 >>> >>> >>> >>> [re-sending from my correct email address] >>> >>> >>> >>> Hi folks, >>> >>> >>> >>> Attached is the revised version of URS Proposal #12, after >>> >>> discussions with Rebecca on how to handle the unintended >>> >>> consequences she identified in the original proposal. Many >>> >>> thanks to Rebecca for identifying the issue and the solution. >>> >>> >>> >>> Sincerely, >>> >>> >>> >>> George Kirikos >>> >>> 416-588-0269 >>> >>> https://linkprotect.cudasvc.com/url?a=http%3a%2f%2fwww.leap.com% >>> >>> 2f&c= >>> >>> E,1,odex5M2U4U5zyFqLlSBUNNjAReeUc74WjuV6TUe9H1I6Hc4cYo2XGYHt5kUG >>> >>> AMCks >>> >>> 8t15KdME-B164MaOXo9-Gk-I72usQuOYvPYq8W60a4NlX9aQo-o&typo=1 >>> >>> >>> >>> 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. >>> > >>> > >>> > >>> > This message contains information which may be confidential and >>> > legally privileged. Unless you are the addressee, you may not use, >>> > copy or disclose to anyone this message or any information >>> > contained in the message. If you have received this message in >>> > error, please send me an email and delete this message. Any tax >>> > advice provided by VLP is for your use only and cannot be used to >>> > avoid tax penalties or for promotional or marketing purposes. >>> _______________________________________________ >>> GNSO-RPM-WG mailing list >>> GNSO-RPM-WG(a)icann.org >>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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Discussion of URS Proposal #13
by George Kirikos Oct. 17, 2018

Oct. 17, 2018

Hi Marie, There were some questions and concerns raised on last week's call about your "Proposal #13", especially regarding implementation challenges, see: https://gnso.icann.org/en/meetings/transcript-rpm-review-10oct18-en.pdf https://mm.icann.org/pipermail/gnso-rpm-wg/2018-October/003385.html https://mm.icann.org/pipermail/gnso-rpm-wg/2018-October/003374.html (starting around page 27 of the transcript, ending around page 35, and you might want to also listen to the recording itself and read the chat room transcript) Since you were unable to attend last week, you might want to address those issues on the mailing list (although, please use this *separate* email thread, as the other thread was about Proposal #12) Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Wed, Oct 17, 2018 at 8:53 AM, Marie Pattullo <marie.pattullo(a)aim.be> wrote: > Can we maybe get back to discussing RPMs now? My inbox is a little full... > Thanks. > Marie >

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URS Proposal #33 - putting URS providers under contract
by George Kirikos Oct. 16, 2018

Oct. 16, 2018

Hi folks, In preparing for tomorrow's presentation, I stumbled upon the following blog post by Philip Corwin (then of the ICA) in 2013: https://www.internetcommerce.org/urs_truth_breach/ which documented that "the STI-RT unanimously recommended that URS providers be placed under contract, and then the board unanimously adopted all of its recommendations regarding the URS" Steve Crocker (ICANN Chairman at that time), in response to a question, noted that: "Yes, a contract is being developed and additional URS providers will be added." The blog post went on to say: "But to ICANN we give a total FAIL for its disingenuous response to our question about contracts for URS providers. Rest assured, this is a subject on which we do not intend to rest or retreat." I didn't reference this document in my proposal, but did want to put it into the record in advance of our call, to further support the background and rationale of the proposal. Folks may want to read it in its entirety, instead of simply the snippets above. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

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Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12
by gmlevine＠researchtheworld.com Oct. 16, 2018

Oct. 16, 2018

Thanks George, I meant to send this to the entire list. Gml -----Original Message----- From: George Kirikos <icann(a)leap.com> Sent: Tuesday, October 16, 2018 12:06 PM To: gmlevine <gmlevine(a)researchtheworld.com> Subject: Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12 (your email wasn't to the entire list, so I'm replying privately; if you'd like, can send this to the mailing list, or happy to talk by phone to discuss further; it's an interesting debate) Hi Gerald, Replying out of sequence: 3. Yes, but they still made that finding with regards to the third limb, had it come to that. 2. They disclaimed the clause because they can't claim exclusive use over that true statement. 1. It's not just "agreements by private parties". Definitions change over time, and domain names are now recognized as (non-traditional) intellectual property, as shown by many SEC filings as well as ordinary usage. While some might want to exclude it from the 'traditional list", times change. Here's a sample of some other examples: https://www.gov.uk/government/publications/naming-and-registering-governmen… "7. Naming strategy Organisations with, or planning to have, an Internet presence should adopt and exercise a centralised approach to planning the acquisition, management and use of appropriate domain names. A ****domain name is intellectual property**** and has both financial and strategic value." (emphasis added, that's the UK government website!) https://shop.astonmartin.com/terms-of-use "Aston Martin trade marks: The Aston Martin trade marks included on our site and the domain name www.shop.astonmartin.com and all related domain names and sub-domain names are intellectual property rights belonging to Aston Martin Lagonda Limited which are licensed to cyber-Heidelberg GmbH. You are not permitted to use them without the consent of Aston Martin Lagonda Limited." https://www.sec.gov/Archives/edgar/data/1447669/000110465918062222/a18-3672… " “Intellectual Property Rights” means all (i) patents, patent applications (including divisions, continuations, continuation-in-part, renewal applications, provisionals, extensions, reexaminations and supplementary protection certifications), and invention disclosures; (ii) trademarks, trade names, service marks, brand names, trade dress, ***domain names***, Internet addresses, and universal resource locator (URL) names and other indicia of origin, including the goodwill associated therewith, (iii) copyrights, works of authorship, design rights, mask works, (iv) trade secrets, confidential or proprietary information, (v) information, compositions, methods, techniques, tools, specifications, designs, data, databases, metadata, compilations, processes, methods, inventions, algorithms, schematics, technology, Software, interfaces, development tools, know-how, documentation, and other intellectual property rights and other similar proprietary rights, (vi) all rights under any registrations or applications for registration of any of the foregoing; and (vii) all rights to seek remedies against infringement of any of the foregoing and rights of protection of interest therein under the laws of all jurisdictions (including, but not limited to, rights to recover for past, present and future violations thereof)." (page 78, emphasis added) https://www.sec.gov/Archives/edgar/data/1239819/000123981918000071/ex21-ass… "“Intellectual Property” means any and all of the following in any jurisdiction throughout the world and all rights in, arising out of, or associated therewith: (a) Patents; (b) Trademarks; (c) Copyrights; (d) ****internet domain names**** and social media account or user names (including “handles”), whether or not Trademarks, all associated web addresses, URLs, websites and web pages, social media accounts and pages, and all content and data thereon or relating thereto, whether or not Copyrights; (e) mask works, and all registrations, applications for registration, and renewals thereof; (f) Trade Secrets; (g) Software; and (h) any other intellectual or industrial property." (emphasis added) https://www.sec.gov/Archives/edgar/data/1451505/000155837018007708/rig-2018… "“Intellectual Property” means all intellectual property rights, whether protected, created or arising under any jurisdiction throughout the world, including the following: (i) trademarks, service marks, trade names, ****domain names****, trade dress or any other similar type of brand names, logos, corporate names, certification marks, and other indications of origin, the goodwill associated with the foregoing and registrations in any jurisdiction of, and applications in any jurisdiction to register, the foregoing, including any extension, modification or renewal of any such registration or application, (ii) inventions, discoveries and improvements, whether patentable or not, in any jurisdiction patents, applications for patents (including utility, divisions, continuations, continuations-in-part and provisional applications), and any renewals, reexaminations, extensions or reissues thereof, in any jurisdiction, (iii) works of authorship, mask works and any and all copyright rights, whether registered or not and registrations or applications for registration of copyrights in any jurisdiction, and any renewals or extensions thereof, (iv) computer software, databases, data compilations and data, (v) Trade Secrets, (vi) moral rights, database rights, shop rights, design rights, industrial property rights, publicity rights and privacy rights and (vii) any similar proprietary rights." (page A-9, emphasis added) https://www.sec.gov/Archives/edgar/data/1631282/000161577418010894/s110869_… "For the purpose of this agreement, "intellectual property" refers to the registered and unregistered copyright and related rights, patents subject to pending registration, patent application right, trademark, service mark, logo, image, product appearance, trade name, ****Internet domain names****, design rights, copyright (including the copyright of computer software), database rights and proprietary technology, semiconductor design right, utility model, trade secrets, inventions (whether or not protected by patent law) and other patent, copyright, trademark, trade secret or other intellectual property rights protected by the laws, regardless of the form and carrier." (Annex 4, emphasis added) If I'm creating a list of "Furniture", and say "Furniture includes chairs, tables, etc", to enumerate subsets, I'm not going to suddenly include "fish", "horses", etc. People include "domain names" in the list of "intellectual property" because domain names *are* a subset of intellectual property these days. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Tue, Oct 16, 2018 at 11:50 AM, <gmlevine(a)researchtheworld.com> wrote: > George, taking your "proof" seriatim: > > 1 Agreements by private parties as to what is included in the term "intellectual property" does not make domain names intellectual property even if they're included in the definition. > 2. Registering a name for trademark that includes the clause "Domain Names are Intellectual Property" does not make domain names intellectual property. The applicant disclaimed the clause apart from the mark as shown. > 3. In the Virtual Dates case, Complainant failed on the first limb because no right accrues for having a mark registered on the Supplemental Register. > > My view is that in construing the Policy the panelists got the balance right. > > Gml > > -----Original Message----- > From: GNSO-RPM-WG <gnso-rpm-wg-bounces(a)icann.org> On Behalf Of George > Kirikos > Sent: Tuesday, October 16, 2018 11:20 AM > To: gnso-rpm-wg <gnso-rpm-wg(a)icann.org> > Subject: Re: [GNSO-RPM-WG] Revised Version of URS Proposal #12 > > Hi Gerald, > > Domain name are intellectual property. As I cited in the proposal itself: > > https://www.sec.gov/Archives/edgar/data/1645194/000119312515394008/d30 > 149dex99h4.htm > > " “Intellectual Property” shall mean all (a) trademarks, service > marks, ****domain names****, trade dress, logos and trade names and > registrations and applications for registration thereof, (b) > copyrights and registrations and applications for registration > thereof, (c) trade secrets and confidential business information, > including data, methodologies and algorithms relating to market > indices, and (d) other proprietary rights relating to any of the > foregoing. " (emphasis added) > > I'm happy to provide you with more citations, if you'd like. Here's a particularly fun one: > > http://tsdr.uspto.gov/#caseNumber=78352055&caseType=SERIAL_NO&searchTy > pe=statusSearch > > Mark: LADASDOMAINS DOMAIN NAMES ARE INTELLECTUAL PROPERTY > > :-) > > As for the Voyuer.com case, the following finding is the relevant part: > > "As to Respondent’s right to the mark, since Respondent has demonstrated conclusively that it registered its domain name before a registration of the trademark was ever attempted. " > > The registration of the trademark was attempted on the application filing date, December 15, 1998: > > http://tsdr.uspto.gov/#caseNumber=75605968&caseType=SERIAL_NO&searchTy > pe=statusSearch > > Xedoc Holdings acquired the domain name in dispute, Voyuer.com in January of 2005, from the prior owner, and the domain's creation date was in 1997. > > Thus, the panel's finding that it "registered its domain name before a registration of the trademark was ever attempted" is true only if "registered its domain name" refers to the creation date (in 1997), since we've already established that the trademark was filed on December 15, 1998. The panel clearly did not find that January 2005 was the time it "registered its domain name" for the purpose of the relevant bad faith test. > > Sincerely, > > George Kirikos > 416-588-0269 > http://www.leap.com/ > > > > On Tue, Oct 16, 2018 at 11:02 AM, <gmlevine(a)researchtheworld.com> wrote: >> Domain names, valuable or not, are not intellectual property. The >> referenced Virtual Dates (Forum 2005) decision did not rest on a >> finding that the new owner was a successor in interest. GmLevine >> >> -----Original Message----- >> From: GNSO-RPM-WG <gnso-rpm-wg-bounces(a)icann.org> On Behalf Of George >> Kirikos >> Sent: Tuesday, October 16, 2018 10:36 AM >> To: gnso-rpm-wg <gnso-rpm-wg(a)icann.org>; Ariel Liang >> <ariel.liang(a)icann.org> >> Subject: [GNSO-RPM-WG] Revised Version of URS Proposal #12 >> >> [re-sending from my correct email address] >> >> Hi folks, >> >> Attached is the revised version of URS Proposal #12, after discussions with Rebecca on how to handle the unintended consequences she identified in the original proposal. Many thanks to Rebecca for identifying the issue and the solution. >> >> Sincerely, >> >> George Kirikos >> 416-588-0269 >> http://www.leap.com/ >> >> > _______________________________________________ > GNSO-RPM-WG mailing list > GNSO-RPM-WG(a)icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > >

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Recordings, attendance & AC chat for Review of all Rights Protection Mechanisms (RPMs) PDP Working Group call on Friday, 12 October 2018 at 17:00 UTC
by Michelle DeSmyter Oct. 12, 2018

Oct. 12, 2018

Dear all, Please find the attendance and AC Chat attached to this email, and the MP3 & AC recording below for the Review of all Rights Protection Mechanisms (RPMs) PDP Working Group call held Friday, 12 October 2018 at 17:00 UTC. Attendance and recording of the call is also posted on agenda wiki page: https://community.icann.org/x/oQK8BQ MP3: https://audio.icann.org/gnso/gnso-rpm-review-12oct18-en.mp3 AC Recording: https://participate.icann.org/p3yuosna0le/ The recordings and transcriptions of the calls are posted on the GNSO Master Calendar page: https://gnso.icann.org/en/group-activities/calendar [gnso.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en_grou…> ** Please let me know if your name has been left off the list ** Mailing list archives: http://mm.icann.org/pipermail/gnso-rpm-wg/ Main wiki page for the working group: https://community.icann.org/x/wCWAAw [community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_…> Thank you. Kind Regards, Michelle DeSmyter

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Actions & Notes: RPM PDP WG Meeting 12 October 2018
by Julie Hedlund Oct. 12, 2018

Oct. 12, 2018

Dear All, Please see below the action items and notes captured by staff from the RPM PDP Working Group call held on 12 October 2018 (17:00-19:00 UTC). Staff have posted to the wiki space the action items and notes. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, AC chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2018-10-12+Review+of+all+R…. See also the proposals at: https://community.icann.org/display/RARPMRIAGPWG/URS+Proposals. In addition, the schedule for ICANN63 is attached and will be sent separately. Best Regards, Julie Julie Hedlund, Policy Director == NOTES & ACTION ITEMS Chair: Phil Corwin 1. Review Agenda/Statements of Interest Updates: No updates 2. Discussion of Individual URS Proposals (See: https://community.icann.org/x/aACNBQ) George Kirikos (#23): https://community.icann.org/download/attachments/93126760/URS-Proposal-23.p… Discussion: -- Provider opposed to the proposal. Not just the fee, but also the cost of the system. -- Don't support including in the Initial Report. -- Cost of doing business. Providers are absorbing costs already. -- Question: Clarify ICANN's role. Would open up a Pandora's box with ICANN subsidizing the cost of doing business. -- Question: Why should the rights of a trademark owner depend on the non-payment of fees and is there a danger that registrars might deliberately not collect those fees. -- Support the proposal. The providers get paid for their work; as a matter of equity this proposal makes sense. -- Support putting the proposal out for public comment. -- If it does go out for public comment we should be careful what we are asking. -- The registrars and registries are not parties to the URS and UDRP, but that they may be involved in tracking down customers. Response: -- It was suggested why don't the registrars charge the registrant? GoDaddy is attempting to charge registrants because they can't charge the URS provider. This creates an additional burden on a registrant. George Kirikos (#32): https://community.icann.org/download/attachments/93126760/URS-Proposal-32.p… Discussion: -- Opposed to the proposal; concern is not with the proposal itself -- will the proposal be included as is, or also secondary facts? -- Okay to send for public comment but it is out of scope. -- Support to include for public comment, but think it is in scope. -- In what format will these go out for public comment, but if the case should be maintained for retaining URS that should be included. Response: -- Put this out for public comment to see what the public thinks. George Kirikos (#33): https://community.icann.org/download/attachments/93126760/URS-Proposal-33.p… Discussion: -- URS is not consensus policy. -- Question: An MOU is a contract so what is the problem we are trying to solve? What are the terms that are not being met? -- STI Report was not consensus policy so its recommendation didn't go into the AGB. -- Not in favor of going out for public comment because based on a false premise, that an MOU is not a contract and not enforceable. Also, it is an implementation question. -- Could revise as a proposal that there should be further requirements on providers. -- Would like to see regular review of the providers and support putting out for public comment. -- Favor for public comment. -- Favor formal contracts. -- Favor putting out for comment. Response: -- Issue whether having them under contract is very important. George Kirikos and Zak Muscovitch (#34): https://community.icann.org/download/attachments/93126760/URS-Proposal-34.p… Discussion: -- As it is written it is the language of wherever the registrant is located so not sure how that helps the registrant; also what about the time required? -- How to translate form cover documents? How much time required? Response: -- Timing could be taken into consideration in changes to the policy. -- How UDRP handles language is reflected in this proposal. There is nothing new. -- Registrants are protected because panelists would have to be prepared to appoint panelists in the language of the registration. -- Translation costs are same as for the UDRP. For Initial Report for public comment: -- Low bar of adequate support. Staff is reviewing chats and transcripts and Co-Chairs will share a draft of whether/how proposals will be included in the Initial Report. -- We are looking for people to chime in to make proposals better. -- After Initial Report and public comment if proposals have substantial opposition or lack of consensus will not go into the Final Report. 3. ICANN63 Schedule (see attached)

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