February 2018 - GNSO-RPM-WG

Action Items from 14 February Working Group Call
by Julie Hedlund Feb. 14, 2018

Feb. 14, 2018

Dear All, The action items noted by staff from the Working Group call held on 14 February 2018 (1800 UTC) are as follows. 1. Staff will send to the Working Group list a Call for Volunteers for participants and observers in three (3) Sub Teams to carry out the following separate tasks related to the URS review in parallel: Sub Team for URS Practitioners: To identify a group of URS practitioners and a list of questions to the practitioners Sub Team for URS Documents: To review the list of topics in the Compilation of URS Review Documents and make suggestions about the data needs/sources Sub Team for URS Providers: To develop and review questions for the URS providers 2. Staff will schedule the above-mentioned Sub Teams meetings for 21 February and 28 February for 1800 UTC (no meeting on 07 March due to travel conflicts). 3. Staff will schedule a meeting with the URS providers. 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 transcript or recording. The recording, transcript, Adobe Connect chat, and attendance records are posted on the wiki. Best Regards, Julie Julie Hedlund, Policy Director

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Recordings, Attendance, & AC Chat for Review of all Rights Protection Mechanisms (RPMs) PDP Working Group call on Wednesday, 14 February 2018
by Terri Agnew Feb. 14, 2018

Feb. 14, 2018

Dear all, Please find the attendance and AC Chat transcript attached to this email, and the MP3 and Adobe Connect recording below for the Review of all Rights Protection Mechanisms (RPMs) PDP Working Group call held Wednesday, 14 February 2018 at 18:00 UTC. Attendance and recordings of the call is posted on agenda wiki page: https://community.icann.org/x/vQxyB MP3: <https://audio.icann.org/gnso/gnso-rpm-review-14feb18-en.mp3> https://audio.icann.org/gnso/gnso-rpm-review-14feb18-en.mp3 Adobe Connect recording: <https://participate.icann.org/p7cfog6n0ll/?OWASP_CSRFTOKEN=26cec20a4b50bc4b 6bf875b6edcb7607aa71ca7c131e81e81166ad9b63c5ce52> https://participate.icann.org/p7cfog6n0ll/ The recordings and transcriptions of the calls are posted on the GNSO Master Calendar page: https://gnso.icann.org/en/group-activities/calendar ** Please let me know if your name has been left off the list ** Mailing list archives: <http://mm.icann.org/pipermail/gnso-rpm-wg/> http://mm.icann.org/pipermail/gnso-rpm-wg/ Main wiki page for the working group: https://community.icann.org/x/wCWAAw Thank you. Kind regards, Terri

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Fwd: A URS Complaint and Response
by Kathy Kleiman Feb. 14, 2018

Feb. 14, 2018

Hi All, John Berryhill (who joined us as one of the two URS experts in our educational session) has asked me to share with you a URS complaint and response. He also shares concerns about sending of the .smd file as proof of use because it is not able to be opened by the URS Examiner or registrant, problems with the online filing system of at least one of the Providers, use of the URS for common words, basis of URS proceedings on figurative marks, and other issues (please see below). As we dive into our discussion of what data we need to answer our high level URS topics, his input and examples may be of interest and value. Best, Kathy -------- Forwarded Message -------- Subject: A URS Complaint and Response From: John Berryhill, Ph.d., Esq. <john(a)johnberryhill.com> To: Kathy Kleiman <Kathy(a)KathyKleiman.com> Kathy, I am attaching a URS complaint and response as an example you may share with the group, which illustrates several aspects of how the URS functions on a practical level. You may also provide the following explanatory notes: This proceeding concerns hello.photo, which is no longer registered to the respondent in that proceeding and, in fact, was later sold. The decision is posted here: http://www.adrforum.com/domaindecisions/1570171F.htm Notes: 1. The Complaint submission consists of the "Complaint" file, the "Trademark Information" file, and the TMCH .smd file. It is worth understanding the TMCH .smd file, and its practical consequences, because the URS sets up a trap for the unwary in that regard. The URS deems a TMCH .smd file as proof of use of the mark. In URS proceedings involving a TMCH record, complainants will dutifully attach the required .smd file (as I have here). The thing is, nobody really knows what to use to open the smd file - certainly not the respondent, and certainly not the panelists either. As the decision notes, "...Complainant has failed to provide evidence of the current use of the trademark" even though the point of the TMCH .smd file is to establish proof of use. It is one of several examples of a disconnect between the Policy (which suggests the TMCH record is good enough), and the practical reality that nobody knows what to do with the TMCH data file that the Policy invites, or what the data file proves. In other words, if a Complainant relies on the TMCH smd file as "proof of use", then nobody is going to know what it is supposed to prove, regardless of what the policy actually says. There are at least two URS decisions I've seen which point out this flaw in the system as implemented - the policy invites a piece of evidence which is meaningless to everyone else involved and which likewise renders one of the supposed benefits of the TMCH to be worthless. 2. The NAF requires online filing, which does not allow text formatting, even simple paragraph breaks. After entry of text in the various fields of the online system, the system then formats the text as shown in the Response file. To render filings to be actually readable, it is advisable to (a) prepare the filing offline, (b) copy and paste the sections into the online form, and (c) provide a formatted copy of the filings as an exhibit. Compare, for example, the NAF system's rendering of the Response with the formatted copy of the text in Respondent's Exhibit D. Which one would anyone prefer to read? 3. This proceeding demonstrates that common words are often the subject of multiple TMCH filings. For the word "HELLO" there are two TMCH records, but in the course of reviewing stored TMCH data obtained from bulk registration, I've seen as many as five TMCH claims on the same dictionary word. As shown in the exhibits to the response, the registrant in this instance maintains a record of TMCH claims obtained for names which it registered, for future reference in order to avoid use of the name for purposes claimed in the TMCH record. 4. The actual mark in question is a figurative mark which survived two oppositions and an appeal. Undoubtedly, while the TM claimant likely relied on the figurative presentation in those proceedings, the reduction of a hard-won and narrow figurative mark to a "claim on the word in general" was invited when the TMCH system was modified from its original proposal of "text only" marks, to whatever unpublished criterion the TMCH uses to determine whether a textual component is "dominant". 5. While the word limit on URS complaints is cramped, as the URS is intended for obvious situations which do not require detailed explanation, this proceeding also demonstrates the perfunctory types of complaints which are often filed in domain dispute proceedings generally. 6. One point made by the Examiner is worth considering, as it relates to general examiner experience, qualifications and training. This examiner had zero prior experience with domain name dispute adjudication prior to the URS, and this was the second case handled by this Examiner. This case was the second URS case this examiner had ever touched. In the discussion portion of the decision, the Examiner states in relation to "dictionary word" cases: "In such cases, for the complainant to prevail, there must be some other proof to evidence bad faith, such as actual notice of trademark prior to registration..." Well, duh. That was the entire point of the TMCH system - to provide actual notice of trademark claims prior to registration, and which served its function here. The effect of that prior notice is discussed extensively in the Response - i.e. that the TMCH claims system provides the registrant with notice of what uses of a domain name to avoid. The Examiner reached the correct result, that the name is a dictionary word not being used for an infringing purpose. But, the Examiner's reasoning demonstrates a lack of very basic understanding of the role of the TMCH claims system, which is "wired in" to the way the URS is supposed to work, in providing prior notice of trademark claims, which the Examiner apparently failed to grasp despite the Complainant's submission of a TMCH record, and the Respondent's discussion of having had prior notice of the claim in connection with magazines. The Examiner's suggestion that prior notice was absent indicates that the Examiner (a) does not know that TMCH claims are presented to registrants during launch phase registrations, (b) does not understand why the Complainant submitted a TMCH smd file, and/or (c) did not bother to read the material of record on that very point of prior notice. Correct result, but breathtakingly inept reasoning by an Examiner with zero relevant experience in domain disputes (or any other relevant professional experience in IP law generally), or in how the new gTLD policies were constructed to provide precisely the prior notice which he appears to believe was absent in this case. -- John Berryhill, Ph.d. Esq. 204 East Chester Pike First Floor, Suite 3 Ridley Park, PA 19078 +1.610.565.5601 +1.267.386.8115 fax john(a)johnberryhill.com

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Actions and Agenda for 14 February Working Group Call
by Julie Hedlund Feb. 9, 2018

Feb. 9, 2018

Dear All, Per the Working Group Co-Chairs please see below the draft agenda for the Working Group call on Wednesday 14 February at 1800 UTC. In addition, please note the following action item: ACTION ITEM: Working Group members are requested to reference the attached latest version (updated following the call on 01 February) of the Compilation of Current URS discussion documents to run through the topics and high-level questions to determine where data is needed. In addition, the goal following the call on 14 February is to incorporate all suggested changes into the Compilation document and to re-organize the document to improve the flow. Draft Agenda, 14 February 2018: Review Agenda/SOIs; Run through of the topics and high-level questions in the Compilation of Current URS Discussion Documents to identify data needs; AOB Best Regards, Julie Julie Hedlund, Policy Director

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Re: [gnso-rpm-wg] Action Items from 07 February Working Group Call
by Paul Keating Feb. 9, 2018

Feb. 9, 2018

Brian, I do not see how the extraction of data can be linked to an "attempt to rewrite a well-established domain name law doctrine established in thousands of UDRP cases and now being applied in the URS context”. Data is data. The goal is to determine IF in fact the doctrine is in fact being applied. This is certainly within the ambit of this WG and as a representative of WIPO such an undertaking should not be of concern. You certainly believe that the WIPO panelists correctly apply the rules and WIPO goes to great lengths to ensure that panelists are properly educated. Unfortunately other ADR providers do not have such a track record. Be well, Paul From: gnso-rpm-wg <gnso-rpm-wg-bounces(a)icann.org> on behalf of "BECKHAM, Brian" <brian.beckham(a)wipo.int> Date: Thursday, February 8, 2018 at 12:52 PM To: Julie Hedlund <julie.hedlund(a)icann.org>, "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Re: [gnso-rpm-wg] Action Items from 07 February Working Group Call > Thanks Julie, > > > As to the call for input in the next 48 hours, based inter alia on arguments > raised on last night's call, my own view is that it does not seem productive > for staff -- at present -- to proceed (or continue) with URS data extraction. > > Before time and precious resources are spent on data extraction (not to > mention analysis), there should be agreement from WG members as to what should > be extracted and to what end, e.g., producing a recommendation as to the > minimum elements a URS determination should include. As to that particular > end however, frankly, it should be possible to already agree on such elements > now (several have already been mentioned on the last two calls, such as the > trademark at issue and domain name use). > > An email from George Kirikos perfectly underscores the reason for some of the > arguments raised on the last several calls; there, he said: > > "It's possible that the first URS was wrongly decided using the basis of > "non-use" as proof of "bad faith use" (which the 2nd URS correctly rejected), > but we don't know for sure given the lack of any detail/reasoning in the first > URS decision." > > On the one hand, this is merely one view as to whether a URS case was decided > correctly, to which there may very well be a counter view. > > On the other hand, and I think this gets to the concerns being raised, it is > effectively an attempt to rewrite a well-established domain name law doctrine > established in thousands of UDRP cases and now being applied in the URS > context -- and yet ostensiblythis flows from assessing whether a panel > correctly applied the burden of proof. > > Thanks for considering, > > Brian > > > > > From: gnso-rpm-wg <gnso-rpm-wg-bounces(a)icann.org> on behalf of Julie Hedlund > <julie.hedlund(a)icann.org> > Sent: Wednesday, February 7, 2018 9:01 PM > To: gnso-rpm-wg(a)icann.org > Subject: [gnso-rpm-wg] Action Items from 07 February Working Group Call > > Dear All, > > The action items noted by staff from the Working Group call held on 07 > February 2018 (1800 UTC) are as follows. > > 1. Staff to recirculate the latest version of the Compilation of Current URS > Discussion Documents (see attached the latest version which was updated from > the meeting on 01 February); > 2. NEXT 48 HOURS: Staff seeks direction from the Working Group on whether they > should proceed with data extraction for all URS cases, some URS cases, or no > URS cases. If some URS cases, then staff can extract data based on specific > data elements to be agreed by the Working Group (e.g. types of cases for which > such data extraction is deemed needed). > > 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 > transcript or recording. The recording, transcript, Adobe Connect chat, and > attendance records are posted on the wiki. > > Best Regards, > Julie > Julie Hedlund, Policy Director > > > _______________________________________________ gnso-rpm-wg mailing list > gnso-rpm-wg(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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Register Now: Pre-ICANN61 Policy Open House – 1 March 2018 - ICANN
by Nathalie Peregrine Feb. 8, 2018

Feb. 8, 2018

https://www.icann.org/news/announcement-2-2018-02-08-en[icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_news_ann…> Register Now: Pre-ICANN61 Policy Open House – 1 March 2018 The Policy Development Support Team is pleased to announce two sessions for an upcoming webinar: Pre-ICANN61 Policy Open House Thursday, 1 March 2018 10:00 and 19:00 Coordinated Universal Time (UTC) The webinar will run in English and will be conducted in Adobe Connect along with a dial-in conference bridge for audio. Recordings of the sessions will be made available here[icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_resource…>. Please register via this form[goo.gl]<https://urldefense.proofpoint.com/v2/url?u=https-3A__goo.gl_vZw8kM&d=DwMGaQ…> by 26 February 2018! In this interactive 60-minute open house, the focus will be an active question and answer session with the Policy Development Support Team. To ensure that your questions about policy activities are addressed during the session, the Policy Team invites you to submit your questions through the registration form[goo.gl]<https://urldefense.proofpoint.com/v2/url?u=https-3A__goo.gl_forms_dVbmhQOT8…> or email them to policyinfo(a)icann.org<mailto:policyinfo@icann.org>. To assist with your preparation for this webinar and for ICANN61, the "Pre-ICANN61 Policy Report" and "Generic Names Supporting Organization Policy Briefing: ICANN61 Edition" will be published by Monday, 26 February 2018. Please be sure to download and review these materials beforehand for helpful background on policy activities and topics that the Policy Development Support Team will discuss during the open house, such as: * An overview of the cross-community discussions that will take place at ICANN61: * General Data Protection Regulation (GDPR): WHOIS Compliance Models * A Walk in the Shoes of a New Generic Top-Level Domain (gTLD) Registry Operator * Name Collisions * Open Data at ICANN * Policy development processes underway in the Country Code Names Supporting Organization (ccNSO), the Generic Names Supporting Organization (GNSO) and the Address Supporting Organization (ASO): * Retirement of Country Code Top-Level Domains (ccTLDs) * Review of All Rights Protection Mechanisms in All gTLDs * Next-Generation Registration Directory Service to Replace WHOIS * International Governmental Organizations and International Non-Governmental Organizations Access to Curative Rights Dispute Resolution Mechanisms * Protections for Red Cross National Society Names in the Domain Name System * New gTLD Subsequent Procedures * Regional Internet Registry policy development activities * Advisory Committee activities within the At Large Advisory Committee (ALAC), Governmental Advisory Committee (GAC), Root Server System Advisory Committee (RSSAC) and Security & Stability Advisory Committee (SSAC): * Organizational Review of the At-Large community * At-Large Summit (ATLAS) III * GAC discussion on the .amazon Independent Review Process * GAC discussion on evolving relationships with ICANN Board and ICANN Org * RSSAC statement on entries in DNS Root Sources * RSSAC & SSAC Response to the GNSO's New gTLD Subsequent Procedures Working Group on Root Scaling * SSAC Response to the ICANN Internationalized Domain Name Guidelines Working Group * SSAC work concerning the use of emoji in domain names * Other topics of note: * Organizational Review of the ASO * ccNSO Rejection Action Procedure as a Decisional Participant in the ICANN Empowered Community * Impact of ICANN's Implementation of the General Data Protection Regulation (GDPR) on ccTLDs The Policy Development Support Team looks forward to helping the ICANN community prepare for ICANN61! Please register via this form[goo.gl]<https://urldefense.proofpoint.com/v2/url?u=https-3A__goo.gl_vZw8kM&d=DwMGaQ…> by 26 February 2018! About ICANN ICANN's mission is to help ensure a stable, secure and unified global Internet. To reach another person on the Internet, you need to type an address – a name or a number – into your computer or other device. That address must be unique so computers know where to find each other. ICANN helps coordinate and support these unique identifiers across the world. ICANN was formed in 1998 as a not-for-profit public-benefit corporation with a community of participants from all over the world.

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Action Items from 07 February Working Group Call
by Julie Hedlund Feb. 8, 2018

Feb. 8, 2018

Dear All, The action items noted by staff from the Working Group call held on 07 February 2018 (1800 UTC) are as follows. Staff to recirculate the latest version of the Compilation of Current URS Discussion Documents (see attached the latest version which was updated from the meeting on 01 February); NEXT 48 HOURS: Staff seeks direction from the Working Group on whether they should proceed with data extraction for all URS cases, some URS cases, or no URS cases. If some URS cases, then staff can extract data based on specific data elements to be agreed by the Working Group (e.g. types of cases for which such data extraction is deemed needed). 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 transcript or recording. The recording, transcript, Adobe Connect chat, and attendance records are posted on the wiki. Best Regards, Julie Julie Hedlund, Policy Director

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Recordings, Attendance, & AC Chat for Review of all Rights Protection Mechanisms (RPMs) PDP Working Group call on Thursday, 01 February 2018
by Julie Bisland Feb. 8, 2018

Feb. 8, 2018

Dear all, Please find the attendance and AC Chat transcript of the call attached to this email. The MP3 and Adobe Connect recording are below for the Review of all Rights Protection Mechanisms (RPMs) PDP Working Group call held Thursday, 01 February 2018 at 04:00 UTC. Attendance and recordings of the call is posted on agenda wiki page: https://community.icann.org/x/uAxyB MP3: https://audio.icann.org/gnso/gnso-rpm-review-01feb18-en.mp3 Adobe Connect recording: https://participate.icann.org/p6mww2tis6b/ The recordings and transcriptions of the calls are posted on the GNSO Master Calendar page: https://gnso.icann.org/en/group-activities/calendar ** Please let me know if your name has been left off the list ** Mailing list archives: http://mm.icann.org/pipermail/gnso-rpm-wg/ Main wiki page for the working group: https://community.icann.org/x/wCWAAw Thank you. Kind regards, Terri

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Recordings, Attendance, & AC Chat for Review of all Rights Protection Mechanisms (RPMs) PDP Working Group call on Wednesday, 7 February 2018
by Julie Bisland Feb. 7, 2018

Feb. 7, 2018

Dear all, Please find the attendance and AC Chat transcript attached to this email, and the MP3 and Adobe Connect recording below for the Review of all Rights Protection Mechanisms (RPMs) PDP Working Group call held Wednesday, 7 February 2018 at 18:00 UTC. Attendance and recordings of the call is posted on agenda wiki page: https://community.icann.org/x/ugxyB MP3: https://audio.icann.org/gnso/gnso-rpm-review-07feb18-en.mp3 Adobe Connect recording: https://participate.icann.org/p3bggfgq73k/<https://participate.icann.org/p3bggfgq73k/?OWASP_CSRFTOKEN=965d4db171c7a81f…> The recordings and transcriptions of the calls are posted on the GNSO Master Calendar page: https://gnso.icann.org/en/group-activities/calendar ** Please let me know if your name has been left off the list ** Mailing list archives: http://mm.icann.org/pipermail/gnso-rpm-wg/ Main wiki page for the working group: https://community.icann.org/x/wCWAAw Thank you. Kind regards, Julie

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Agenda for 07 February Working Group Call
by Julie Hedlund Feb. 6, 2018

Feb. 6, 2018

Dear All, Per the Working Group Co-Chairs, please see the following draft agenda for tomorrow’s call at 1800 UTC (07 February): Draft Agenda: 1. Summary of actions and notes from the 01 February meeting re: Part 3 of the Compilation of Current URS Discussion Documents – The Co-Chairs’ Statement on URS Review 2. Staff presentation of possible URS case review framework Please also see the attached document for reference for item 1 on the agenda, which summarizes the discussion with respect to the action items captured from the call (per the message below) and reflected in the revised Compilation of Current URS Discussion Documents that was sent last week following the call (attached again for reference). Kind regards, Julie, Mary, Ariel, and Berry From: gnso-rpm-wg <gnso-rpm-wg-bounces(a)icann.org> on behalf of Julie Hedlund <julie.hedlund(a)icann.org> Date: Thursday, February 1, 2018 at 5:00 PM To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Re: [gnso-rpm-wg] Action Items from 01 February Working Group Call Dear All, Per the action items below, please see the attached revised Compilation of Current URS Discussion Documents based on the discussion on today’s Working Group call. Best regards, Julie From: gnso-rpm-wg <gnso-rpm-wg-bounces(a)icann.org> on behalf of Ariel Liang <ariel.liang(a)icann.org> Date: Thursday, February 1, 2018 at 12:09 PM To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [gnso-rpm-wg] Action Items from 01 February Working Group Call Dear All, The action items noted by staff from the Working Group call held on 01 February 2018 (04:00-05:30 UTC) are as follows: Staff to move the 4 bullet points/questions suggested by the Co-Chairs (page 10, including comments noted on the page) to Column 3 of Section M in Part 2 of the consolidated document; WG members to consider if additional edits to the Co-Chairs suggested 4 bullet points/questions are needed in view of discussion on the call of 1 Feb (see notes, 'alternative questions'). Staff have post 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 transcript or recording. The recording, transcript, Adobe Connect chat, and attendance records are posted on the wiki. Best Regards, Ariel Ariel Xinyue Liang Policy Analyst | Washington, DC Internet Corporation for Assigned Names and Numbers (ICANN)

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