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

Follow up questions for review/discussion
by Mary Wong Aug. 3, 2016

Aug. 3, 2016

Dear WG Members, Please find attached a set of draft questions for: (1) follow up with the three TM-PDDRP Providers on the issue of consolidation and joint complaints; and (2) the survey to be sent to IPC and possibly BC members, as discussed on the call last week. We will also have these available in the Adobe Connect room during the call. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889

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Agenda for Working Group call on 3 August
by Mary Wong Aug. 3, 2016

Aug. 3, 2016

Dear all, With apologies for the slight delay, here’s the proposed agenda for our call later today: 1. Roll call/updates to Statements of Interest (SOI) 2. Agree on follow up questions to TM-PDDRP providers on joint complaints/consolidation 3. Complete WG discussion of Issues/Concerns with TM-PDDRP document 4. Agree on next steps/timeline for TM-PDDRP review 5. Review WG timeline for Phase One 6. Next steps/next meeting For Agenda Item #2, we hope to circulate some language for your consideration shortly. For Agenda Item #3, please refer to the Issues/Concerns document we used last week, available on the WG wiki at https://community.icann.org/x/PgabAw (where you will also find the transcript and recording from the call last week). In particular, as regards the possible development of “use cases” for the TM-PDDRP, we refer you to WG Member Darcy Southwell’s question that she had posed to the list: “Do we have specific examples of registry behavior that doesn’t meet existing standards but is nonetheless concerning when it comes to profiting from sale of infringing domains?” Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889

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Article on TMCH Draft Report
by Phil Corwin Aug. 1, 2016

Aug. 1, 2016

WG Members: I have published an article regarding the TMCH study released by ICANN last week. It can be viewed at http://www.circleid.com/posts/20160801_tmch_review_recommends_status_quo/ Best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey

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FOR REVIEW: Notes of discussion between the TMCH Sub Team and the Analysis Group
by Mary Wong July 29, 2016

July 29, 2016

Dear all, Please find attached the staff notes on the discussion/Q&A that took place earlier today between our TMCH Sub Team and Greg Rafert and Stacey Chan of the Analysis Group, relating to the data and sources used by the Analysis Group for their independent review of the TMCH. Please note that these notes are not intended to replace the recording or transcript of the meeting, to which you are referred for the fuller context and discussion; however, we hope that the notes provide everyone with a helpful record of the nature and scope of the topics that were covered on the call. The document has also been uploaded to the Sub Team’s wiki space, as will the transcript and recording of the call when they are available: https://community.icann.org/x/eQ2bAw. Staff will continue to work with the Sub Team on its tasks and timeline, including following up with either the Analysis Group or any other group or entity identified during the Sub Team’s discussions. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889

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Attendance & AC Chat Review of all Rights Protection Mechanisms (RPMs) TMCH Sub Team 29 July 2016
by Terri Agnew July 29, 2016

July 29, 2016

Dear All, Please find the attendance, MP3 recording and Adobe Connect chat below for the Review of all Rights Protection Mechanisms (RPMs) TMCH Sub Team call held on Friday, 29 July 2016 at 15:00 UTC. In addition, attendance is noted for the RPM WG members who joined for Greg Rafert of the Analysis Group presentation. MP3: http://audio.icann.org/gnso/gnso-rpm-tmch-29jul16-en.mp3<http://mailer.samanage.com/wf/click?upn=NrFWbrBstcrPWP369qgbqlXiSKeL20xnUXz…> The recordings and transcriptions of the calls are posted on the Sub Team wiki page: https://community.icann.org/x/UwSbAw Attendees RPM TMCH Sub Team: Susan Payne Phil Corwin Kristine Dorrain Kurt Pritz Khouloud Dawahi On audio only: Vaibhav Aggarwal Apologies: Salvador Hernández Attendees RPM WG: Griffin Barnett - IPC Justine Chew - Individual Maxim Alzoba - RySG Monica Mitchell - Individual Paul Keating - Individual Paul Tattersfield - Individual Robin Gross - NCUC Sonigitu Ekpe - NCUC Guest speakers: Greg Rafert and Stacey Chan ICANN staff: Mary Wong Antonietta Mangiacotti David Tait Berry Cobb Terri Agnew ** Please let me know if your name has been left off the list ** Mailing list archives: http://mm.icann.org/pipermail/gnso-rpm-tmch/ Main RPM Wiki page: https://community.icann.org/x/rhiOAw Sub Team Wiki page: https://community.icann.org/x/UwSbAw Thank you. Kind regards, Terri Agnew ------------------------------- Adobe Connect chat transcript for 29 July 2016: Terri Agnew:Welcome to the RPM TMCH sub team call held on Friday, 29 July 2016 at 15:00 UTC for 90 minutes. Call with Greg Rafert of the Analysis Group and RPM WG members will begin at 15:30 UTC Terri Agnew:wiki agenda page: https://community.icann.org/x/eQ2bAw Kristine Dorrain - Amazon Registry:Hi everyone, sorry I'm late. Terri Agnew:Welcome Kristine Dorrain Mary Wong:Did we lose Susan? Kristine Dorrain - Amazon Registry:I don't hear her Terri Agnew:@Susan, we are no longer hearing you, please let me know if a dial out on the telephone is needed Philip Corwin:I can't hear her anymore either Kristine Dorrain - Amazon Registry:Can staff link to the analysis group report? I have to admit I missed it. Mary Wong:@Kristine - https://newgtlds.icann.org/en/reviews/tmch/draft-services-review-25jul16-en… Mary Wong:Additional information and the public comment forum: https://www.icann.org/public-comments/tmch-review-2016-07-25-en susan payne:sorryI qwill dial in Kristine Dorrain - Amazon Registry:Thanks, Mary Terri Agnew:Susan is on audio susan payne:hi sorry everyone. dodgy internet connection. I am on audio Philip Corwin:FYI, I will not be on the calls for this subgroup on August 5th or 12th as I shall be on vacation Terri Agnew:@Phil, apology will be noted for both dates, thank you David Tait:yes Kristine Dorrain - Amazon Registry:I can hear you susan payne:yes Kurt Pritz:my mic not workin susan payne:yes Terri Agnew:Welcome Monica Mitchell Antonietta Mangiacotti:Repository of TMCH monthly reports https://newgtlds.icann.org/en/about/trademark-clearinghouse/registries-regi… Kristine Dorrain - Amazon Registry:yes, Kurt Pritz:I think Susan's correct. The report compares downlaods by registrars with registrations - not abandoned shopping carts David Tait:For those joining the room we're on a brief break before we're joined by Greg Rafert of the Analysis Group Maxim Alzoba (FAITID):Hello Everyone, do we have adobe audio? David Tait:Maxim we do and it will be resuming shortly for the discussions Mary Wong:Welcome, Greg, Stacey and other Working Group members to this TMCH Sub Team call! Sonigitu Ekpe:Greetings from Calabar, I Nigeria. Philip Corwin:Those GAC recommendations were from several years ago, before the Applicant Guidebook was complete and way before the application window opened. Mary Wong:The GAC request was from 2011, I believe. Philip Corwin:I believe that's correct, Mary. I point that out only to make the point that they were based om conjecture about the new gTLD program rather than an informed understanding of the final Guidebook Kurt Pritz:Greg: Are those SIC codes? Griffin Barnett:Is that two-digit code the same as the Nice Classification code? Griffin Barnett:Thanks Kurt Pritz:SIC codes would provide the sort of detail for which you were looking Kurt Pritz:is my last statement correct? (It was meant to be a question.) Terri Agnew:Vaibhav Aggarwal is on audio only Maxim Alzoba (FAITID):Registries are prohibited from interactions .. with exception for tests Philip Corwin:Thanks Maxim. However, a registry might have made such queries via an affiliated registrar, or thorugh a cooperative third party registrar. Kurt Pritz:What question would more detailed industry codes help us answer? What question were you seeking to answer using the industry codes? Sonigitu Ekpe:There is need to aggregate data. Hope this is what the analysis grwho did. Maxim Alzoba (FAITID):@Philip, I agree, the information could go through few hands, but I think this could not be identified by technical means. Philip Corwin:@Maxim-- it could look at whether any registrars affilated with registries had disproportionatly high levels of TMCH downloads, but that's about it Sonigitu Ekpe:sorry for the typo. I hope the analysis group aggregated the data? Griffin Barnett:I haven't fully reviewed the draft report, but can you provide somed detail on who was surveyed from the TM agent/ tm owner communities? Maxim Alzoba (FAITID):Is it possible to check how many TLDs (which are non-brands) are using endless claims period? Maxim Alzoba (FAITID):@Philip, I think the number of downloads should be checked versus number of clients (there should be a proportion of sorts) Griffin Barnett:*or at least, the process of how interviewees were selected Philip Corwin:Based on my interactions with TM owners it's a combination of both high sunrise prices (or lack of applicability of a gTLD name to their products or services) and the existence of the Claims Service that contributed to low usage of sunrise periods Sonigitu Ekpe:I think if the survey used spreadsheet then it is easy to check the TLDs @ Maxim. susan payne:Question: did you seek data from registrars?: did they refuse to provide? Maxim Alzoba (FAITID):my personal view ... the nicer claims message, which does not freak out potential legitimate registrants whould be great Philip Corwin:Not sure registrars would know the reason for an abandonned registration, given how it's an automated online process susan payne:Question re matching - did you also look at mark plus generic term? susan payne:from the data you did have could you have just looked at everything that had apple in? Mary Wong:Question 3 under Additional Questions susan payne:Question re Registrars with large downloads: what additional data would you have needed to determine if this was improper activity? Is this being looked at elsewhere (eg ICANN compliance?) Maxim Alzoba (FAITID):some registrars with coders who were not so great are going to fall into this category ( tests e.t.c) Mary Wong:@Susan, in the absence of a complaint, I'm not sure this is the sort of thing Compliance would be looking at. susan payne:@Mary - but how can anyone complain, we don't know who the registrars are or even if they are doing anything wrong. could be innocent. but shouldn't it be checked/folowed up? Mary Wong:@Susan, true - but not sure what, exactly, can be followed up here without knowing who the registrars are. PAUL KEATING:Has there been any followup research on the number of domains were actually registered following a notice from TMCH? For example DomainTools WHois Searches (disclaimaer - I am a director of DomainTools) PAUL KEATING:In other words testing further to see if the caution notices are working. susan payne:@Mary - well we don't know, but Analysis group does and presumably so does Antonietta? PAUL KEATING:Also compare to filed UDRPs and URS? PAUL KEATING:to test the extent cautions are working, etc PAUL KEATING:what about the notices? They shoiuld list the domain no? Kurt Pritz:I am with Susan - it seems that IBM should be able to keep that information if it chose to do so Philip Corwin:@Paul--I think the Claims Notice is generic, so it may not list the domain in it. But registrars may have records of the domain associated with an abandonned registration, since they made the TMCH inquiry and then posted the Notice PAUL KEATING:@ Phil, thank you for correcting that point. I had nott hought it out well enough. PAUL KEATING:Thank you everyone.. Very helpful presentation Philip Corwin:Yes, thanks. very useful Maxim Alzoba (FAITID):bye all Paul Tattersfield:thank you interesting bye Griffin Barnett:Thank you Robin Gross:thanks. bye Kristine Dorrain - Amazon Registry:Thank you. khouloud Dawahi 2:thank you all

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Mp3, Attendance & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group 27 July 2016
by Terri Agnew July 28, 2016

July 28, 2016

Dear All, Please find the attendance of the call attached to this email and the MP3 recording below for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on Wednesday, 27 July 2016 at 21:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/PgabAw MP3: http://audio.icann.org/gnso/gnso-rpm-review-27jul16-en.mp3<http://mailer.samanage.com/wf/click?upn=NrFWbrBstcrPWP369qgbqlXiSKeL20xnUXz…> The recordings and transcriptions of the calls are posted on the GNSO Master Calendar page: http://gnso.icann.org/en/group-activities/calendar<http://gnso.icann.org/en/group-activities/calendar#nov> ** Please let me know if your name has been left off the list ** Mailing list archives: http://mm.icann.org/pipermail/gnso-rpm-wg/ Wiki page: https://community.icann.org/x/rhiOAw Thank you. Kind regards, Terri Agnew ------------------------------- Adobe Connect chat transcript for 27 July 2016: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group held on Wednesday, 27 July 2016 at 21:00 Terri Agnew:wiki meeting page: https://community.icann.org/x/PgabAw Mary Wong:@Terri, if you switch I'll be in trouble with my Mac/PDF conversions!!! Maxim Alzoba (FAITID):Hello Everyone George Kirikos:Has anyone compared the attendance on these 5 pm (Eastern time) calls, to see if we're getting diversity in participation, etc? Maxim Alzoba (FAITID):we need 10 minutes more Mary Wong:@George, that's something staff will be asking the co-chairs to review. However, it's notable also that we've not received any complaints about any of our call times from Members located in, say, the Asia Pacific region. Paul Tattersfield:Hi George one difference it's darker here :) Philip Corwin:Hello all George Kirikos:That's true, Paul. :-) George Kirikos:Welcome, Phil. Steve Levy:Hello all George Kirikos:On the mailing list, there was some discussion about adding a "limitation period" to the PDDRP. Is that a topic/issue that we can add to the agenda? (not necessarily this meeting, but in the coming meetings) George Kirikos:(see the discussions at: http://mm.icann.org/pipermail/gnso-rpm-wg/2016-July/date.html ) Mary Wong:Hi George - do you mean the suggestion at the bottom of Page 6, or a broader one that we should add? George Kirikos:A different one, Mary. Statute of limitations in a given jurisdiction might bar a lawsuit after a certain time (e.g. 2 years, in Ontario). Allowing a PDDRP, where an ordinary lawsuit in the courts would be barred by the statute of limitations, doesn't make sense. Mary Wong:@George, thanks - we will note it. George Kirikos:Adding a limitation period to the PDDRP would "clean up" that anomaly Petter Rindforth:agree with Brians suggestion Darcy Southwell:Agree that provider feedback would be helpful to this WG in evaluating the fesability of a consolidated/joint compliant mechanism. Philip Corwin:I think George is talking about something like laches -- that a complaint has to be brought within a set time from when the offense is alleged t have arise. Something like a statute of limitaions, to use another metaphor. That seems worthy of looking at. Kristine Dorrain (Amazon Registry):My concern is the perception that brand owners may "gang up" on smaller registries. Philip Corwin:Agreed Kristine. I will speak to that. George Kirikos:@Mary: the relevant jurisdiction would be the location of the registry operator, it seems. See: http://mm.icann.org/pipermail/gnso-rpm-wg/2016-July/000371.html George Kirikos:(although, perhaps that's a topic for debate) Kurt Pritz:As Brian's email indicates, each dispute resolution provider has their own approach to consolidation. As I recall, when the PDDRP was created, it was vague on consolidation because it was recognized that each provider had different consolidation mechanism and that ICANN would not be in the business of specifying a certain consolidation mechanism or picking the methodology of one of the providers. Each of the providers has a different mechanism and the complainant(s) are able to select the provider that has the consolidation mechanism that best suits the complainant(s). Griffin Barnett:Support the idea of getting provider feedback regarding the joinder issue George Kirikos:Question: should there be the ability to consolidate *across* providers? (e.g. someone files a case at WIPO, and someone else files at NAF, against the same registry operator with similar facts, etc.) Mary Wong:@George, @Phil - on the "statute of limitations" point, which jurisdiction ought to govern? Scott R. Austin:I think J Scott's reading of Brian's email is accurate. Kristine Dorrain (Amazon Registry):<Former NAF hat on> As a provider, and on a purely administrative level, joinder/consolidation/whatever is a nightmare.....<former NAF hat off> Paul McGrady:As long as the "joining together" was voluntary, not an involuntary "class action." George Kirikos:@Mary: I would say the statute of limitation in the jurisdiction of the registry, given that's the sole "mutual jurisdiction" (as per the message in the link directly above) Mary Wong:@Kurt, notwithstanding Kristine's comment (sorry), could the Procedure not simply mandate consolidation and/or joint filing, and leave it to each Provider to achieve each according to its own practices? Griffin Barnett:@Kristine -- can you elaborate on what administrative difficulties were involved in consolidation? Presumably, if we had an actual joint complaint option, rather than post-filing consolidation, this could possibly alleviate those burdens. Philip Corwin:@Paukl--agreed, any consolidation must be purely voluntary, not forced Paul McGrady:Hard to hear. Greg Shatan:Gerald Levine's mike is on. Kristine Dorrain (Amazon Registry):@ Mary, UDRP does that. Says consolidation of complaints (but not not explicitly across parties) is ok then leaves it to the providers. George Kirikos:If one recalls the Verizon lawsuit against iREIT, attorney David Steele was able to show a "pattern of cybersquatting" for each letter of the alphabet, see: http://www.loffs.org/verizon-vs-ireit/verizon-ireit-exhibit5.pdf George Kirikos:That didn't require multiple parties in a complaint -- just a single complainant, showing lots of cybersquatting against famous brands. George Kirikos:The entire statement of claim for that lawsuit is at http://www.loffs.org/verizon-vs-ireit/ (that was Exhbit 5, to demonstrate the "pattern") Justine Chew 2:I note and agree somewhat with what Scott is saying re consolidation - which is why it is important to have enough substance is captured in the complaint filed. Greg Shatan:George, thanks for that. We should certainly allow that kind of evidene to be presented without those other entities being parties. In other words, we certainly should not require multiple parties if the evidence involves multiple marks with different (unrelated) owners. Chris Thomas:okay Griffin Barnett:Agree with Greg -- joint complaint would be voluntary, but a single complainant should certainly have the option and ability to proceed on its own George Kirikos:Agreed, Greg. One could also do it by having a single complainant, with supporting affidavits (i.e. "evidence") from other brandowners who are not parties. Mary Wong:Yes Mary Wong:Bottom of Page 4 Greg Shatan:@Justine Chew, don't you think that's already dealt with by the Threshold Review? Chris Thomas:Standard should be changed to a lower standard Brian Cimbolic:Nice job, J Scott. Here's also a link that does a pretty good job: http://www.legalmatch.com/law-library/article/clear-and-convincing-evidence… George Kirikos:A lower standard might be dangerous, given that this is supposed to be a more informal process than the real courts (i.e. without all the due process protections). Mary Wong:Note that the URS uses a "clear and convincing" standard, on the basis that the URS should only cover "slam dunk" (American slang for obvious) cases. George Kirikos:UDRP was supposed to be the same, only for the "clearcut" cases of cybersquatting. John McElwaine:From 9th Circuit jury charges: When a party has the burden of proving any claim or defense by clear and convincing evidence, it means that the party must present evidence that leaves you with a firm belief or conviction that it is highly probable that the factual contentions of the claim or defense are true. This is a higher standard of proof than proof by a preponderance of the evidence, but it does not require proof beyond a reasonable doubt. Griffin Barnett:George -- can you cite a source for that? I was always under the impression that UDRP was intended (and has consistently been) under the preponderance of evidence standard (see, e.g., WIPO Overview of UDRP, at 4.7 http://www.wipo.int/amc/en/domains/search/overview2.0/#47) Darcy Southwell:Agree with George Kirikos re the dangers of a lower standard - not only is this not a court proceeding but the PDDRP remedies can be extreme Mary Wong:Brian's (and Beth Bacon's from PIR) suggestion to lower the standard is captured under III(iii) near the bottom of Page 5. Petter Rindforth:I accept "clear and convincing", especially if we can add the possibility of several complainants - at least for the second level disputes Brian Cimbolic:Hi Mary - just a clarification, Beth and I don't want the lower standard, we want the higher Clear and Convincing evidence standard George Kirikos:Griffin: I think you'd have to go back to the 1990's, when the UDRP was being designed (i.e. Kathy, etc. who were there could comment). Mary Wong:@Griffin, to add to your point about the standard of proof for the UDRP (vs URS), the idea was that the URS would be more suitable for the very obvious cases, with those less clear more likely to be determind under the UDRP. Rebecca Tushnet:I'm sorry. John McElwaine:Agree with Sarah. C&C creates is a difficult standard without extensive discovery Rebecca Tushnet:I agree fully with Brian's comments. Take a step back: what is the evidence before the group that there should be cases being brought! I have yet to see evidence brought before the group. Griffin Barnett:Thanks Mary, that was my understanding as well -- one of the key differences between URS and UDRP is the standard of proof Mary Wong:@Brian, oops - yes, that was what I meant! Edward Morris:Agree with Brian and Rebecca. Terri Agnew:@Rebecca, your AC mic is not active. To activate your mic, top tool bar select the telephone icon and follow the prompts or send me a private AC Chat with your telephone number and op can dial out to you Kristine Dorrain (Amazon Registry):+1 Paul Greg Shatan:Actually, I'm failry sure that it's not true that the clear and convincing standard is used in all equitable cases. There are equitable remedies in all kinds of US civil cases decided on a preponderance of the evidence. Laurie Anderson:+1 Paul Darcy Southwell:+1 Paul Renee Reuter:I think this is an issue we need to explore. Brian Cimbolic:agreed Greg - not all equitable cases, but predominatnly in equitable cases Elizabeth Featherman:+1 Paul Greg Shatan:Brian, I aqgree with your re-stating of that. Kristine Dorrain (Amazon Registry):I think it's ok to explore it, but we need to first find out if any one has been deterred from using this to date. Mary Wong:This might be something to explore in a "use case" scenario Paul McGrady:+1 Kristine. Would be nice to know if this has been an actual problem - folks who didn't file that would have. Laurie Anderson:+1 Kristine Laurie Anderson:and Paul :) Rebecca Tushnet:They didn't say burden of proof was a problem. Kiran Malancharuvil:How do you prove a negative? Rebecca Tushnet:THey said that burden of proof was one reason people didn't use it. Rebecca Tushnet:But that isn't necessarily a problem. Paul McGrady:Survey Monkey George Kirikos:+1 Paul - polls can help keep the mailing list from becoming a voting booth. George Kirikos:(online polls, that is) Brian Cimbolic:agreed, Rebecca. I think this process was necessarily designed so it's not used frequently. It is only for extreme, bad-faith cases (at least at the second level) Steve Levy:Would a lower burden of proof be offset by the fact that ICANN is not obligated to implement the recommended action in a PDDRP decision? Paul McGrady:Agree with J Scott on this process. Thanks! Griffin Barnett:Isn't the dispute resolved under the PDDRP itself? George Kirikos:We know that appeals can be heard in the jurisdiction of the registry, so the "choice of law" provision that Paul Keating suggests makes sense. Mary Wong:@Paul K, the wording in the PDDRP rules on your question is: "An Expert Panel shall make a Determination (Threshold, Final orAppeal) of a Complaint in accordance with the PDDRP Procedure,these Rules and any rules and principles of law that it deems applicable." George Kirikos:@Mary: So, perhaps it should be made more explicit, that the "applicable law" would be that of the jurisdiction of the registry (i.e. to take it out of the hands of the expert panel from "deeming" the wrong jurisdiction). Paul Keating:Thank you Mary. However, looking at the UDRP (which says the same thing) the panelists have largely ignored the concept of "governing law" and applied their own "global standards" George Kirikos:Right, Paul. Making it explicit would reduce uncertainty, by taking the 'discretion of the panelists' out of play. George Kirikos:e.g. an Iranian company suing an American registry operator should have to abide by US law (e.g. in regards to free speech, etc.). Mary Wong:@Paul, @George, "any rules or principles that it deems applicable" is a fairly broad framework. Paul Keating:@Mary, Can you point me to the language (a link) that you noted above. Thanks. Kristine Dorrain (Amazon Registry):But the PDDRP is not about free speech. It's about: did the registry try to profit from bad faith actions. ICANN has a lot of contracts (and the registries have agreements and AUPs) that define how a registry should act. George Kirikos:Right, Mary. It's perhaps too broad. By making it explicit, as Paul Keating seems to suggest, it would reduce uncertainty. Mary Wong:@Paul, I believe it's Section 12 of the PDDRP Rules: http://newgtlds.icann.org/en/applicants/agb/pddrp-rules-15oct13-en.pdf Paul McGrady:I will cede the @Paul space to Paul Keeting. I can be @PMc. :) Mary Wong:@Paul M, sorry! Kristine Dorrain (Amazon Registry):pronounced Pee- Greg Shatan:Phil, that's an interesting thought. I would support that. Rebecca Tushnet:What nonmonetary gains are you thinking of? And why is encouraging lots of registrations bad? Kristine Dorrain (Amazon Registry):Pee Mc-Cee Maxim Alzoba (FAITID):It will broaden chance of gaming and chance to see blackmailed registries Griffin Barnett:Agree with Phil, Greg -- could be worth exploring the concept of "profit" here Mary Wong:Got it, J. Scott - we will give it some thought and come back with suggestions in consultation with you, Phil and Kathy. George Kirikos:There are different lists of the world's most valuable brands. Those would be good starting points. Mary Wong:@Greg, others - we have heard that many TM owners are suffering from "survey/response fatigue". Can you comment on that in this context? George Kirikos:(e.g. Interbrand has a list) George Kirikos:Forbes has a list of their top 100: http://www.forbes.com/powerful-brands/list/3/#tab:rank Paul Keating:Finding top brand contacts - USPTO/OHIM trademark list and scrpe the emails/contacts for attorneys of record George Kirikos:Another source would be the largest domain name owners, via folks like DomainTools. Philip Corwin:@Rebecca -- not exactly sure, but clearly a registry that offers free or ten cent domains thinks it is getting some benefit other than profit, because it is losing $ on each registration. That alone is not sufficient to justify an action, unless it is intended to lead to broad infringement (under current standard). George Kirikos:e.g. Microsoft, Verizon, Disney, Google, etc. own large domain name portfolios, and thus they're more likely to be affected by cybersquattng than others (of course, there will be some overlap with Interbrand rankings, etc.). Mary Wong:@Paul M, it's not clear that a public comment would necessarily garner more, or more substantive and relevant, feedback George Kirikos:Some of the ICANN-commissioned surveys, though, have been silly. George Kirikos:(i.e the ones about how new gTLDs are perceived around the world --- the results on that one have been criticized) Greg Shatan:I think J Scott just wrote at least half of the survey. I withdraw my concern. Paul Keating:@George - I think you would find the vast majority of large domain portfolios (even those of large brands) to be held under privacy. Brian Cimbolic:@J. Scott - agreed. We're just soliciting some inputs here, not creating a definitive record of brand-holders as to their thoughts on the PDDRP Greg Shatan:Let's not let the perfect be the enemy of the good. Paul Keating:disclosure _ I am a director of DomainTools. Mary Wong:FYI - for simple (not data-driven/evidentiary) surveys like what J Scott is describing, we would normally use a Survey Monkey format. Paul Keating:are teh results attributable or annon Paul McGrady:Simple survey is OK but highly encourage anyone who is going to criticise it later to help construct it up front rather than tear it down later. Greg Shatan:Very good, piont @PMcG. And one that applies generally, not just here.... George Kirikos:Another list might be "The most popular filers of UDRPs". George Kirikos:Since those brand owners are obviously more vigilant about using ICANN-created ADR procedures. Steve Levy:Thanks all! Greg Shatan:"Popular" might not be quite the right term. :-) Terri Agnew:Wednesday, 03 August 2016 at 16:00 UTC for 60 minutes. Philip Corwin:Bye all George Kirikos:lol Greg. I stand corrected. :-) Paul Keating:Thank you everyone. Paul McGrady:Thanks j Scott. great call Brian Cimbolic:thanks all! George Kirikos:Bye folks. Darcy Southwell:Thanks, all! Phil Marano (Mayer Brown):Thanks all, goodbye. Paul Tattersfield:thanks all, bye. Maxim Alzoba (FAITID):bye all Greg Shatan:Bye all. David Tait:bye Elizabeth Featherman:bye all! Reg Levy - MMX:thanks, all

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Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016
by Winterfeldt, Brian J. July 27, 2016

July 27, 2016

Hi all, Just to quickly clarify something from this discussion – while I agree that a “class action” PDDRP is probably not advisable, as that term is understood in the context of a formal litigation, it seems to be a slightly different concept from enabling multiple brand owners to jointly file a PDDRP complaint in cases where each of those brand owners’ marks are involved in the registry’s complained-of behavior. In the latter case, allowing multiple brand owners to jointly file a PDDRP complaint would help defray the cost of the complaint for each individual participating brand owner and improve efficiency (insofar as this would streamline multiple potential complaints by various brand owners into a single complaint), which we previously identified as possible hurdles to using the PDDRP. The PDDRP and providers’ supplemental rules do not appear to presently envision joint complaints. The PDDRP currently provides that “The parties to the dispute will be the trademark holder and the gTLD registry operator.” See ICANN, PDDRP § 1 (June 4, 2012). It further provides, “The mandatory administrative proceeding will commence when a third-party complainant (“Complainant”) has filed a Complaint with a Provider asserting that the Complainant is a trademark holder (which may include either registered or unregistered marks as defined below) claiming that one or more of its marks have been infringed, and thereby the Complainant has been harmed, by the registry operator’s manner of operation or use of the gTLD.” See id. § 5.1. The PDDRP itself briefly references “consolidation” without any additional context, stating “In the case where either party requests a three-member Expert Panel, each party (or each side of the dispute if a matter has been consolidated) shall select an Expert and the two selected Experts shall select the third Expert Panel member.” See id. § 13.3 (emphasis added). Each of the individual PDDRP providers’ supplemental rules envisage consolidation of complaints under certain circumstances (each set of supplemental rules differs somewhat in that regard), but not the filing of a joint complaint in the first instance. For example, the World Intellectual Property Organization (WIPO) allows itself the discretion to consolidate complaints against the same registry operator, provided all parties agree. See WIPO, Supplemental Rules for Trademark PDDRP<http://newgtlds.icann.org/en/applicants/agb/pddrp-rules-15oct13-en.pdf> § 12 (Feb. 20, 2014). The National Arbitration Forum PDDRP Supplemental Rules discuss consolidation of complaints between the same parties, but again it is not clear that these consolidation rules could be used to file a joint complaint by multiple individual trademark owner complainants. See National Arbitration Forum, The Forum’s Supplemental Rules to ICANN’s Trademark Post-Delegation Dispute Resolution Procedure and Rules<http://www.adrforum.com/resources/gTLD/Supplemental%20Rules-PDDRP.pdf> § 8 (Oct. 1, 2013). The Asian Domain Name Dispute Resolution Centre (ADNDRC) appears to have similar consolidation rules, although like the other providers’ rules, these also appear to consider the broader possibility that complaints of multiple different trademark owner complainants could be consolidated or joined if they are pending against the same registry operator. See ADNDRC, Supplemental Rules to the ICANN Trademark PDDRP<https://www.adndrc.org/mten/img/pdf/Supplemental_Rules_TMPDDRP_10-03-2014.p…> § 10 (Mar. 10, 2014). Although the providers’ supplemental rules enable consolidation of cases post-filing, they do not provide for the kind of joint complaint envisaged above. Thus, the PDDRP itself, or the PDDRP rules or supplemental rules, would need to be further modified to accommodate a true joint complaint as opposed to mere consolidation of complaints. Of course, a joint proceeding would still need to be limited just to considering the specific trademarks at issue in the joint complaint to avoid a scenario where a small subset of aggrieved brand owners is acting as a “class representative” on behalf of other brand owners who are not directly involved (to avoid the concerns mentioned by Paul). In short, I think brand owners should have the ability under the PDDRP to file a joint complaint, but agree that it should be limited as described above and not be akin to a “class action.” Looking forward to our call later today. Best regards, Brian Brian J. Winterfeldt Co-Head of Global Brand Management and Internet Practice Mayer Brown LLP bwinterfeldt(a)mayerbrown.com<mailto:bwinterfeldt@mayerbrown.com> 1999 K Street, NW Washington, DC 20006-1101 202.263.3284 direct dial 202.830.0330 fax 1221 Avenue of the Americas New York, New York 10020-1001 212.506.2345 direct dial From: gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Petter Rindforth Sent: Sunday, July 24, 2016 8:33 AM To: Paul(a)law.es<mailto:Paul@law.es> ZIMBRA Cc: gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 Hi All, I echo on the support for mediation. And, of course, independently of which party that has requested mediation, it must be accepted by the other party (as in all normal mediation procedures). The mediation part must be confidential. If it fails, the “arbitration part” of the dispute shall not be handled by the same panelist that dealt with the mediation and the documents & comments filed through the mediation phase shall not be available for the panelist/s handling the full PDDRP. As to Paul’s comments on evidence: I don’t think any panelists, independently of the dispute resolution policy, accept a simple statement from the complainant that “we have trademark rights”, or accept “evidence” of that just in the form of a list of protected trademarks. Even in cases where the domain holder does not reply, you will lose your case if you cannot prove your trademark rights with further documentation, such a copies of valid Certificate of registrations, etc. Best, Petter -- Petter Rindforth, LL M Fenix Legal KB Stureplan 4c, 4tr 114 35 Stockholm Sweden Fax: +46(0)8-4631010 Direct phone: +46(0)702-369360 E-mail: petter.rindforth(a)fenixlegal.eu<mailto:petter.rindforth@fenixlegal.eu> www.fenixlegal.eu<http://www.fenixlegal.eu> NOTICE This e-mail message is intended solely for the individual or individuals to whom it is addressed. It may contain confidential attorney-client privileged information and attorney work product. If the reader of this message is not the intended recipient, you are requested not to read, copy or distribute it or any of the information it contains. Please delete it immediately and notify us by return e-mail. Fenix Legal KB, Sweden, www.fenixlegal.eu<http://www.fenixlegal.eu> Thank you 23 juli 2016 20:40:33 +02:00, skrev Paul(a)law.es<mailto:Paul@law.es> ZIMBRA <paul(a)law.es<mailto:paul@law.es>>: I agree with Darcy that we are trying to fixed something that no one has said was broken. I strongly favor asking registries for their input (have they even received complaints, etc.). I also strongly favor asking trademark holders if they have any instance of issues. Otherwise I suggest leaving this alone. I am in favor of mediation. My only issue is my experience shows that 90% of complaints are not serious or are seeking opportunistic settlement. As much as I like to avoid costs, it is important that complaints provide a formal complaint WITH EVIDENCE. I don't care how many pages it is. The idea is to require seriousness and avoid fishing expeditions. This can be accomplished. Y a rule that says if mediation fails the complaint filed will be the complaint for the dispute with any amendment being subject to th discretion of the arbitrators (and not favored). The response in turn should be formal and with evidence. This prevents gamesmanship by respondent. The law of jurisdiction MUST be established. We need to eliminate the convent of a "universal" law. Paul Keating On Fri, Jul 22, 2016 at 6:42 PM, Paul McGrady <policy(a)paulmcgrady.com<mailto:policy@paulmcgrady.com>> wrote: Thanks Darcy. I agree that mediation before complaint is a good idea and that the policy should require both sides to consent to it. I think instead of a skeletal complaint, the aggrieved party should do a simple “mediation statement” (which is the normal thing) and then the registry could do a reply statement. I suggest we limit pages to no more than 10 so that this doesn’t become proxy litigation. The mediation (including the statements) should be confidential – in other words nothing shared in mediation while pursuing settlement should be used later by the parties if the complaint goes forward. As for “class actions” I also agree with you on that. Not only do I not think they are feasible in this setting, I will invoke the highest authority on Earth to rebut the entire idea, namely Jimmy Buffett, and simply sayas a brand owner “I don’t want other people [people’s lawyers] thinking for me.” Could you imagine the disaster if a brand owner filed a complaint for abuses of its mark only to learn that a “class action” included them and was already lost? It would be Heck on Earth (especially for the poor law firm that “done it”). Yikes. While I understand the desire for efficiency, there is nothing keeping unhappy brand owners from filing a joint complaint to which they consent in advance. Best, Paul From: gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Darcy Southwell Sent: Friday, July 22, 2016 4:38 PM To: Mary Wong; gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 I have to admit I’m struggling with how to evaluate the effectiveness of a policy that’s never been used ~ like we’re proposing solutions for unidentified problems. I don’t want to suggest that we identify and detail all possible use cases and apply the PDDRP to identify flaws. But when we consider the existing Standards (§6) and Burden of Proof (§17), do we have any concrete examples of when the PDDRP maybe should have been used that would indicate needed improvements? Or maybe the better question is … do we have specific examples of registry behavior that doesn’t meet existing standards but is nonetheless concerning when it comes to profiting from sale of infringing domains? As for a couple of issues discussed on the list and at our last meeting: Mediation Mediation is often a successful way for parties to reach a workable resolution, and I support the concept of non-binding mediation as an option with the PDDRP. If the PDDRP were to allow for the filing of “skeletal” complaints, do we intend that the filing party is the sole determiner of whether the complaint goes to mediation? It seems that the mediation option should be open to both parties to request. In the end, both parties need to be amenable to mediation for it ever have an effective outcome. Class Actions The term “class action” seems problematic because of how it is used in many judicial systems. If what we’re trying to get to is a method for trademark owner to identify prolific abuses by a registry and to then have a more aggressive method for pursuing the registry, is there instead a way to build (1) public disclosure of filings and decisions (the way UDRPs work) and (2) place a burden on panel reviewers to rely on the precedence of prior findings (unlike the UDRP) and take those into account when determining remedies? Thanks, Darcy From: <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Mary Wong Date: Friday, July 22, 2016 at 10:22 AM To: "gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>" Subject: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 Dear all, Please find attached an updated document containing issues, concerns and suggestions received to date relating to the TM-PDDRP, the first version of which had been circulated on 19 July to the Working Group (see message below). Both documents have also been uploaded to the Working Group wiki space for your convenience: https://community.icann.org/x/9wWbAw. The updated document contains summaries of the discussion during the last call relating to the suggested options for mediation and class action (see the boxed text on Page 2 and Page 4, respectively). Please review the updates and continue discussion of the suggestions on this mailing list (NOTE: the text summaries do not attempt to replicate or summarize the full discussions that took place on the call – please refer to the meeting transcript, recording and Adobe Connect chat transcript for context and additional explanations offered by participating Members on these topics: https://community.icann.org/x/9wWbAw) For the next call, we anticipate that Members will discuss the issues, concerns and suggestions raised in relation to the ease/difficulty of access to/use of the TM-PDDRP (currently listed in the document under Section A.III on Pages 4-6). Members are also requested to continue to send in your thoughts and comments regarding additional questions we can raise with ICANN Compliance, and the advisability/need to develop “use cases” for the TM-PDDRP (see Page 7). Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889<tel:%2B1-603-5744889> From: Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>> Date: Tuesday, July 19, 2016 at 18:22 To: "gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: For review & discussion: summary document on TM-PDDRP issues, concerns and suggestions Dear all, Further to the proposed agenda (below), please find attached a document that: (1) compiles the issues, concerns, suggestions received and email discussions to date relating to the TM-PDDRP stemming from the WG’s deliberations up to and in Helsinki; and (2) contains responses received from several WG members regarding the possibility of developing “use cases” and other additional suggestions. We apologize for the late notice, but hopefully Members will be able to review the document even briefly before the WG call tomorrow (Wednesday). Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889<tel:%2B1-603-5744889> From: Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>> Date: Tuesday, July 19, 2016 at 14:56 To: "gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Proposed agenda for Working Group meeting of 20 July Dear all, The proposed agenda for the next Working Group call, scheduled for Wednesday 20 July at 1600 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only) and updates to Statements of Interest 2. Discuss identified issues and concerns regarding the TM-PDDRP, including Working Group members’ responses on possible changes to, and things not to change about, the TM-PDDRP 3. Discuss follow up questions for ICANN Compliance and TM-PDDRP Providers, including suggestion for developing use cases 4. Agree on list of additional issues/concerns with the TM-PDDRP based on WG discussions to date 5. Next steps/next meeting A document setting out a framework for the discussion of issues and listing Working Group members’ suggestions will be sent out shortly. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889<tel:%2B1-603-5744889> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg __________________________________________________________________________ This email and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed. 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Agenda, documents and notes for the next Working Group call on 27 July
by Mary Wong July 26, 2016

July 26, 2016

Dear all, The proposed agenda for the next Working Group Members’ call, scheduled for 27 July at 2100 UTC**, is as follows: 1. Roll call (via Adobe Connect and phone bridge only) / updates to Statements of Interest 2. Discuss additional issues/concerns/suggestions regarding the TM-PDDRP, starting from where the last call ended (see Section A.III, pages 4-6 of the updated Summary Document circulated by staff on 22 July and available here under “Follow Up”: https://community.icann.org/x/9wWbAw) 3. Continue discussion of mediation and class action options (see the updated Summary Document and further notes, below) 4. Agree on whether developing “use cases” will be helpful; if agreed, launch call for volunteers to develop a few such examples 5. Next meeting/next steps Additional Notes on Mediation and Class Action options and views on “use cases”, based on the most recent Working Group mailing list discussions (please note that these are to be read together with the Summary Document, which contains additional suggestions and notes from the Working Group’s continuing deliberations): On mediation: · Many WG members support adding mediation to the TM-PDDRP; however, there is no clear agreement as to whether mediation can be undertaken on the basis of a skeletal complaint or if there first needs to be a full(er), more formal complaint filed, or possibly some kind of “middle ground” such as a “mediation statement”. There seems nevertheless to be agreement that mediation should be confidential and mutually consensual. A suggestion was also made via email that if the complaint proceeds to a panel (i.e. the mediation fails), the panelist should not be the person who handled the mediation. On “class action”: · As noted during the last WG call, a more apt term may need to be agreed on for this since the discussion is centered on the ability of various TM owners to either join a proceeding, or file some sort of joint complaint (rather than it being a case where a single complainant represents a class of similarly-situated complainants). At least one WG member vigorously opposes any form of class action, while a number of other WG members support the idea. · In this regard, Working Group Members may wish to consider the following question from Working Group Member Darcy Southwell that was posted to this mailing list: “If what we’re trying to get to is a method for the trademark owner to identify prolific abuses by a registry and to then have a more aggressive method for pursuing the registry, is there instead a way to build (1) public disclosure of filings and decisions (the way UDRPs work) and (2) place a burden on panel reviewers to rely on the precedence of prior findings (unlike the UDRP) and take those into account when determining remedies?” On “use cases”: · As the Working Group continues to consider the advisability and feasibility of developing appropriate use cases, you may also wish to note another question from Darcy: “Do we have specific examples of registry behavior that doesn’t meet existing standards but is nonetheless concerning when it comes to profiting from sale of infringing domains?” ** Finally, please note that the 27 July meeting is one of our rotating meetings, and will take place at 2100 UTC. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889

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For review/discussion - Draft Report on TMCH Independent Review published for public comment
by Mary Wong July 26, 2016

July 26, 2016

Dear all, The independent reviewer engaged to perform a review of the Trademark Clearinghouse (TMCH) has just published its Draft Report for public comments: https://www.icann.org/public-comments/tmch-review-2016-07-25-en. In accordance with ICANN procedure, the public comment period will remain open for 40 days, closing on 3 September. ICANN staff will then prepare a staff report of public comments received, and the independent reviewer will analyze the input received in preparing its Final Report. Given the scope of the Policy Development Process (PDP) that our Working Group is conducting, staff will be arranging a call between our Members and the Analysis Group (the TMCH independent reviewer) sometime in the next few weeks, to discuss the report as it pertains to the scope of our work. Members may also be interested to know that our TMCH Sub Team will be doing a call with the Analysis Group this Friday, for the narrower and more specific purpose of discussing data sources and gaps between the data collection/research work done for the TMCH Independent Review and that to be done by our TMCH Sub Team. You can find more information, including background to the TMCH review and the original Governmental Advisory Committee (GAC) request for the review, at the link provided above. In addition, for your convenience, here is a direct link to the Draft Report: https://newgtlds.icann.org/en/reviews/tmch/draft-services-review-25jul16-en…. Please look out for a forthcoming note on the Working Group call to be scheduled with the Analysis Group. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889

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Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016
by Darcy Southwell July 24, 2016

July 24, 2016

I have to admit I’m struggling with how to evaluate the effectiveness of a policy that’s never been used ~ like we’re proposing solutions for unidentified problems. I don’t want to suggest that we identify and detail all possible use cases and apply the PDDRP to identify flaws. But when we consider the existing Standards (§6) and Burden of Proof (§17), do we have any concrete examples of when the PDDRP maybe should have been used that would indicate needed improvements? Or maybe the better question is … do we have specific examples of registry behavior that doesn’t meet existing standards but is nonetheless concerning when it comes to profiting from sale of infringing domains? As for a couple of issues discussed on the list and at our last meeting: Mediation Mediation is often a successful way for parties to reach a workable resolution, and I support the concept of non-binding mediation as an option with the PDDRP. If the PDDRP were to allow for the filing of “skeletal” complaints, do we intend that the filing party is the sole determiner of whether the complaint goes to mediation? It seems that the mediation option should be open to both parties to request. In the end, both parties need to be amenable to mediation for it ever have an effective outcome. Class Actions The term “class action” seems problematic because of how it is used in many judicial systems. If what we’re trying to get to is a method for trademark owner to identify prolific abuses by a registry and to then have a more aggressive method for pursuing the registry, is there instead a way to build (1) public disclosure of filings and decisions (the way UDRPs work) and (2) place a burden on panel reviewers to rely on the precedence of prior findings (unlike the UDRP) and take those into account when determining remedies? Thanks, Darcy From: <gnso-rpm-wg-bounces(a)icann.org> on behalf of Mary Wong Date: Friday, July 22, 2016 at 10:22 AM To: "gnso-rpm-wg(a)icann.org" Subject: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 Dear all, Please find attached an updated document containing issues, concerns and suggestions received to date relating to the TM-PDDRP, the first version of which had been circulated on 19 July to the Working Group (see message below). Both documents have also been uploaded to the Working Group wiki space for your convenience: https://community.icann.org/x/9wWbAw. The updated document contains summaries of the discussion during the last call relating to the suggested options for mediation and class action (see the boxed text on Page 2 and Page 4, respectively). Please review the updates and continue discussion of the suggestions on this mailing list (NOTE: the text summaries do not attempt to replicate or summarize the full discussions that took place on the call – please refer to the meeting transcript, recording and Adobe Connect chat transcript for context and additional explanations offered by participating Members on these topics: https://community.icann.org/x/9wWbAw) For the next call, we anticipate that Members will discuss the issues, concerns and suggestions raised in relation to the ease/difficulty of access to/use of the TM-PDDRP (currently listed in the document under Section A.III on Pages 4-6). Members are also requested to continue to send in your thoughts and comments regarding additional questions we can raise with ICANN Compliance, and the advisability/need to develop “use cases” for the TM-PDDRP (see Page 7). Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889 From: Mary Wong <mary.wong(a)icann.org> Date: Tuesday, July 19, 2016 at 18:22 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: For review & discussion: summary document on TM-PDDRP issues, concerns and suggestions Dear all, Further to the proposed agenda (below), please find attached a document that: (1) compiles the issues, concerns, suggestions received and email discussions to date relating to the TM-PDDRP stemming from the WG’s deliberations up to and in Helsinki; and (2) contains responses received from several WG members regarding the possibility of developing “use cases” and other additional suggestions. We apologize for the late notice, but hopefully Members will be able to review the document even briefly before the WG call tomorrow (Wednesday). Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889 From: Mary Wong <mary.wong(a)icann.org> Date: Tuesday, July 19, 2016 at 14:56 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Proposed agenda for Working Group meeting of 20 July Dear all, The proposed agenda for the next Working Group call, scheduled for Wednesday 20 July at 1600 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only) and updates to Statements of Interest 2. Discuss identified issues and concerns regarding the TM-PDDRP, including Working Group members’ responses on possible changes to, and things not to change about, the TM-PDDRP 3. Discuss follow up questions for ICANN Compliance and TM-PDDRP Providers, including suggestion for developing use cases 4. Agree on list of additional issues/concerns with the TM-PDDRP based on WG discussions to date 5. Next steps/next meeting A document setting out a framework for the discussion of issues and listing Working Group members’ suggestions will be sent out shortly. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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