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Role of the SMD file in URS proceedings
by Colin O'Brien Aug. 17, 2018

Aug. 17, 2018

During the WG call on 15 August 2018 the following co-chairs addition to the Super Consolidated URS Table was noted: "There is an action item for staff (originally proposed by John McElwaine) to find out if decoding software is available that can read the coded portions of a SMD file, or if this is possible only using the specific key from the TMCH. Comments from Co-Chairs: "Do not think it is about the coding; but what is actually in the SMD file. It seems clear that the relevant info is simply not there: http://www.trademark-clearinghouse.com/help/faq/which-information-does-smd-… "Much subteam spent on how to pass the full TM information to Examiners -- and if not SMD - how else?" I believe this reflects a misunderstanding of the role and purpose of the SMD file in URS proceedings. As the URS Procedure states: 1.2.6.1. that the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and that is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed. a. Use can be shown by demonstrating that evidence of use - which can be a declaration and one specimen of current use in commerce - was submitted to, and validated by, the Trademark Clearinghouse) b. Proof of use may also be submitted directly with the URS Complaint. In other words, under the URS Procedure a complainant may choose to submit an SMD file as evidence that they have used the trademark on which they are relying - that evidence having previously been submitted-to and accepted by the TMCH in order for the SMD file to have been generated. The SMD file does not serve as evidence of the trademark itself (the mark, the Nice classifications, the goods and services covered, and so on), this must be separately demonstrated. This question of the purpose served by the SMD file appeared to be causing confusion to some working group members on the call. In an effort to shed further light, and hopefully put this matter to rest, I would like to confirm that the experience of my firm when filing URS complaints with the NAF matches the Procedure referred to above. In other words, the complaint is filed online via a web platform, which prompts you to upload certain documents, namely: a PDF of the trademark registration; a screenshot of the website (generally also as a PDF); and the SMD file to prove use of the mark, or alternative evidence of use. Examiners are therefore not relying on only the SMD file for the "full TM information." These requirements are fully explained by the NAF in its Complaint PowerPoint guide (available here: http://www.adrforum.com/URS) which I have attached. Please see page 14 of the guide. [cid:image004.jpg@01D43610.C7E72D20] The note added to the Super Consolidated URS Table therefore is a non-issue and it should be amended to reflect that this question has been dismissed. Colin Thomas Jefferson O'Brien [PartridgePartners_logo_final (002)] 321 North Clark Street, Suite 720 Chicago, Illinois 60654 312-634-9503 https://www.partridge.partners/ ______________________________________________________________________ This email has been scanned by the Symantec Email Security.cloud service. For more information please visit http://www.symanteccloud.com ______________________________________________________________________

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Re: [gnso-rpm-wg] RPM Working Group status report on its Council-approved data collection exercise
by Julie Hedlund Aug. 16, 2018

Aug. 16, 2018

Dear RPM PDP WG Members, Please find attached the report sent to the GNSO Council this week from the RPM Review PDP Working Group Co-Chairs, summarizing where things stand with the extensive data collection effort that the Council approved in September 2017, for the Sunrise and Trademark Claims RPMs. This report summarizes the activities as of August 2018. Best, Mary, Ariel, Berry, and Julie

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Recordings, attendance & AC chat from Review of all Rights Protection Mechanisms (RPMs) PDP Working Group call on Wednesday, 15 August 2018
by Julie Bisland Aug. 15, 2018

Aug. 15, 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 Wednesday, 15 August 2018 at 17:00 UTC. Attendance and recording of the call is also posted on agenda wiki page: https://community.icann.org/x/vgNpBQ MP3: https://audio.icann.org/gnso/gnso-rpm-review-15aug81-en.mp3 AC Recording: https://participate.icann.org/p30gvicpwgm/ 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 15 August 2018
by Ariel Liang Aug. 15, 2018

Aug. 15, 2018

Dear All, Please see below the action items and notes captured by staff from the RPM PDP WG call held on 15 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/vgNpBQ. Best Regards, Ariel Ariel Xinyue Liang GNSO Policy Support Specialist Internet Corporation for Assigned Names and Numbers (ICANN) == ACTION ITEMS: * Staff to circulate the documents that explain the scope, role and use of a SMD file, published as part of the TMCH documentation. * Staff to recirculate the presentation staff prepared for the ICANN62 Panama session where the WG discussed the typical approach regarding the Initial Report, per Co-Chairs’ requests. * Co-Chairs and staff to develop a framework to evaluate and capture the proposals, providing fair and uniform treatment of all proposals. Take into consideration the placement of general proposals/submissions that are not clarifications/corrections to the ST proposals. * WG members to submit input/missing topics/proposals by Tuesday, 28 Aug. WG members should draw as much as possible from the data gathered by the STs. * WG members to focus on the proposed suggestions in Column 3 in the Super Consolidated Table in next week's call. NOTES: Review Agenda/Statements of Interest * David McAuley updated his SOI Appeals process (page 24) * One WG member suggested this item should cover the availability of court proceedings, making sure the registrants have the ability to access the court with regard to the determination De novo review (page 24-25) * Respondents who default get three potential examinations. Default doesn't mean the Respondents lose automatically. Respondents that respond can get one examination and one appeal. The recommendation needs to be more substantive than what it is stated now in the table. Need to clean up some confusion between URS rules 6 and 12. * One WG member believes that Practitioners' survey was unrepresentative (titled towards pro-complainant practitioners). 13 of the 14 survey respondents were those representing complainants. * Some Practitioners ST members disagreed. Respondent were involved in the design of the survey and there was opportunity to get involved. Several ST members participated in domain advocacy groups - every opportunity has been offered to both camps to respond. There is data for those who chose to respond. * A Co-Chair stated that the Practitioners survey was not an open survey; only one Registrant attorney qualified for it. The practitioners survey respondents were limited to those participating in URS cases. * In regard to availability of statutory law providing de novo judicial review of URS decision, one WG stated that while ICANN has no ability to ensure that there is such law in the nation in which a registrant resides, registrant can always assure such availability by utilizing a registrar located in a national jurisdiction with such a law. For example, any registrant regardless of location can utilize a US-based registrar and thereby gain ability to file a judicial appeal under ACPA as a US court would be one of "mutual jurisdiction" under UDRP/URS policy. * One WG responded that ICANN shouldn't be making policy that causes the problem in the first place. If it's causing the problem now, due to that role reversal, then it should either eliminate the problem, or make URS/UDRP opt-in. Cost allocation model (page 26) * One WG member supports the loser pay model for fairness. Language Issues (page 27-29) * Has there been any additional inquiry in regard to the "possible language issue" cases noted? Staff is looking at the cases highlighted in Rebecca's research. Completed review of all the 29 De Novo review cases and could not discern what the specific issue may have been from the face of the record, since for those cases, all but one response was filed in English. * In the Practitioners survey, a respondent commented that some Chinese registrars have issues implementing URS decisions. Some education/training may need to be developed for them to understand their role in the URS. * There were issues with the published languages being used. Abuse of Process (page 29-30) * There is a provision in the URS rules that addresses the abuse by the TM owner. It is somewhat unbalanced that there is no sanction on registrants that may be serial cyber squatters. Education & Training (page 30-31) * A couple of WG members suggested considering education & training in languages other than English. It is not a big burden and would change the global operation of the process. * Regarding the "draft recommendation", the actual work of designing the guide would be in the implementation period, if the recommendation has received consensus support. Evaluation of URS providers and their respective processes (including training of panelists) (page 31-32) * One WG member stated that GDPR could have an impact on the CV issue, although seeking examiner consent to show seems reasonable * One WG member disagreed. Examiners are willingly doing their job and publishing their CVs is a requirement. Having access to the background of the Examiners is crucial. Conflict of interest (page 33-34) * In some countries (e.g. Argentina), top lawyers are also arbiters in WIPO. It is a practical matter. It is not instantly known who has done what cases. * Panelist previously representing a URS party would be a conflict of interest issue. It would be a problem if a panelist and a URS party work in the same firm. Nevertheless, the analysis of this matter needs to be done in a neutral/pointed manner. * It is a good reason to have access to the CVs in order to assist in identifying if there is a conflict, as opposed to there being a fundamental conflict of sometimes wearing different hats. Alternative Processes (page 34) * One WG member raised two possible issues: 1) mediation step in the process; 2) possible integration with the UDRP, having one process instead of two. * Other WG members disagreed. Mediation is antithetical to the basis for URS - clear violation & quick action. Mediation would fundamentally change the rationale of the URS. URS is meant to be quick. Putting the mediation step would not help the expediency. We aren't re-creating the courts here. This is supposed to be a fast way of taking down clearly-infringing domains. * The WG member proposed the mediation step argued back: 1 month process, versus 2 months for UDRP. Contrast that with a Notice of Dispute (even shorter than a URS complaint, thus lightweight), followed by branching to various processes that are heavier depending on response/non-response. By having a notice of dispute, though, it would be happening before Complainants contemplated escalating to a URS in the first place. There are only 200 or so URS disputes per year. * A Co-Chair stated that creating a summary procedure of the UDRP needs to be in order before we get to phase II. We should deal with the URS as a complementary procedure of the UDRP. Some URS issues may be intertwined with the UDRP questions and can be deferred. Additional Sub Team Notes * SMD is only supposed to show that TMCH has validated the use of specimen. It is not supposed to provide any data. It is a checkbox, token. It is not intended to convey vital statics of the trademark. It is a proxy/indication that the use specimen has been valided by the TMCH. * This is what is in the SMD file: http://www.trademark-clearinghouse.com/help/faq/which-information-does-smd-…. There are documents that explain the scope, role and use of a SMD file, published as part of the TMCH documentation. * URS Rule related to the SMD file: URS Rule 1.2.6.1. .that the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and that is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.a. Use can be shown by demonstrating that evidence of use – which can be a declaration and one specimen of current use in commerce– was submitted to, and validated by, the Trademark Clearinghouse)b. Proof of use may also be submitted directly with the URS Complaint. and... * Some WG members believe that there's conflicting opinions on this - so at least we should be examining the role of the SMD file. * ACTION ITEM: Staff to circulate the documents that explain the scope, role and use of a SMD file, published as part of the TMCH documentation. Next Steps * Rebecca Tushnet’s comment is to suggest a different placement of the ST suggestion within the table. * What STs recommended does not limit WG's recommendations. Additional proposals can be put forward, but with some discretion. Think twice if a proposal is extremely controversial. It is not an invitation for complete “free-for-all”. * While there's a substantial amount of detail in each of the Sub Teams' reports, it may be helpful for WG members who have not been following the Sub Team reports closely to review those documents as you develop suggestions and potential recommendations to be proposed to the full WG for its consideration. Staff has included links to all three Sub Teams' reports at the top of this document, which were presented two weeks ago. * WG members should feel free to go through the transcripts/recordings of the ST meetings, and reach out to the STs, to understand why certain proposal made the cut. * “Missing topics" are not referring to additions to Column 1, which are the WG's agreed URS topics for review. * Once WG members review the Sub Team reports, conclusions and recommendations, consider whether there is a proposal or solution that addresses the Column 1 topic but has not been considered or addressed by the available data. * ACTION ITEM: WG members to submit input/missing topics/proposals by Tuesday, 28 Aug. WG members should draw as much as possible from the data gathered by the STs. * ACTION ITEM: Co-Chairs and staff to develop a framework to evaluate and capture the proposals, providing fair and uniform treatment of all proposals. Take into consideration the placement of general proposals/submissions that are not clarifications/corrections to the ST proposals. * We are not suspending our meetings until Aug 28. As we are accepting proposals, we do have proposals that are on the table in the third column in the Super Consolidated Table. * ACTION ITEM: WG members to focus on the proposed suggestions in Column 3 in the Super Consolidated Table in next week's call. * One WG member stated that during the public comment period, the public deserves to know all the topics, including the ones that didn't receive consensus. If some topics are deferred to Phase II, a specific list of these topics needs to be generated. He further argued that that’s how it's been done in other PDPs. Minority Statements don't take place until the very end. i.e. how can the public comment on issues that aren't in the draft report? e.g. Jeremy had proposed elimination of Sunrise. That shouldn't be excluded from the initial report. * Other WG members disagreed. In terms of the initial report, we should not include every idea. It is time to present the well thought out ideas that achieved consensus. The Charter says that the Initial Report reflects the consensus by the WG at its time of publication. SubPro's initial report is a bit different but it is an exception. If there is anything that didn't make the cut by the group, it would be a minority statement. In particular, a proposal with very limited support and very significant opposition should not be included. Proposals that have support are valid for discussions not the hobby horses of certain members who keep bringing up the same things after they have been considered and rejected. If it's one person's opinion, that is a minority statement, not a discussed/supported/rejected point for inclusion. Formal consensus calls typically don't occur for Initial Reports but any recs that seem to have general agreement or consensus are published for comment as such. * In ICANN62, we discuss the best way to bring together the initial report and there seems to be an agreement on that. It would be useful to see whether staff could put together the initial report, being inclusive but not going around in circles/having endless conversations. * ACTION ITEM: Staff to recirculate the presentation staff prepared for the ICANN62 Panama session where the WG discussed the typical approach regarding the Initial Report, per Co-Chairs’ requests. Timeline to Phase 1 Completion * Reference the slide. Very best-case scenario, with likelihood for slippage.

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URS Missing Topics and Further Thoughts
by George Kirikos Aug. 15, 2018

Aug. 15, 2018

Hi folks, In response to Wednesday's email: https://mm.icann.org/pipermail/gnso-rpm-wg/2018-August/003209.html where WG members were "requested to provide substantive comment and raise anything they believe is missing" here are my thoughts. The single most important point below is item #9, as I raised on the conference call last Wednesday, namely the issue of external court proceedings. For reference, the Initial Consolidated URS Topics Table is at: https://community.icann.org/download/attachments/79432641/URS%20Docs_ICANN6… 1) Page 3 (of Initial Consolidated URS Topics): Do the RPMs adequately address issues of registrant protection (such as freedom of expression and fair use)? This issue appears to have been skipped entirely in the Super Consolidated URS Topics Table (perhaps not surprisingly, given that registrants weren't canvassed, and practioners' survey was dominated by those representing complainants). This needs to be addressed, including overall Due Process (i.e. the "such as" above are merely examples, but not a complete list of the issues for registrants) 2) Complaint, A.3 (Limited Filing Period). The topic of a "statute of limitations" fits into this topic, and needs to be addressed by the working group. These limitation periods exist under national laws, and complainants should not have rights in the URS that exceed those they would have under national laws. A 2 year limitation period should be adopted (2 years after creation date) for the URS (that would match Ontario's jurisdiction, for example, where I reside. 3) Response, C.1 (Duration of response period). Disagree with draft recommendation that "No additional policy work required". When you mainly hear from complainants, providers and those representing complainants, that's the kind of skewed result that happens. Registrants need sufficient time to respond, and 14 days is inadequate (as evidenced by the high number of defaults, which is also interrelated with the issue of the language issue, e.g. a Chinese registrant receiving an English notice and/or complaint!). This also relates to point #2 above -- all the "time limits" are applied unequally on respondents, and never to complainants. There needs to be a better balance. While pro-complainant side might be opposed to this, as it would reduce "rapidity" or URS, it's already a relatively slow mechanism (i.e. the fastest way to suspend a site is to complaint to a registrar or ISP/hosting provider, and also use blocking mechanisms such as Google's Safebrowsing initiative, see: https://safebrowsing.google.com/ ) Depending on how the statute of limitations policy outcome, the policy could also allow for a longer response time based on the age of a domain (measured from creation date). There is no urgency for a dispute regarding a 10-year old domain (and if there was, TM holders still have the alternative to go to court and seek an injunction). 4) Standard of Proof, D.1. Disagree with the "finding" that "RPM is being used for 'clear case of abuse' as it was intended", given that the practioners surveyed were mainly those representing complainants. We know that decisions in favour of complainants are being made even when the domain name hasn't been *used* in bad faith (i.e. hasn't been used at all), for common terms (e.g. acronyms, dictionary words, surnames, etc.). e.g. see BCG.app decision http://www.adrforum.com/domaindecisions/1785973D.htm Panelists are finding "passive holding" abuse, when they shouldn't be (i.e. when there are multiple potential uses for a domain). OpenCorporates.com, for example, shows many potential legitimater users of "BCG" that are unrelated to Boston Consulting Group. Similarly, AcronymFinder.com shows multiple matches unrelated to Boston Consulting Group. 5) Defenses, E.2. Unreasonable delay in filing a complaint (i.e. laches). Laches is a somewhat *separate* issue from Statute of limitations (discussed in point #2 above). With statute of limitations, if you've delayed, regardless of whether it's "reasonable" or not, you lose the right to use the procedure. A respondent need only point to the calendar itself, rather than provide an argument as to whether it's "fair" or not. Under "laches", a respondent would have to do more work, e.g. saying that circumstances have change, evidence is no longer available, etc. "Statute of Limitations" is a much cleaner implementation, reducing the potential abuse of "no laches" discretion by panelists/providers (who are in the business of making money from complaints, unlike courts). With statute of limitations, there is no discretion (you snooze, you lose!). 6) Defenses, E.2: Issues 3/4/7 (minimal standards, whether they've been met, policing existing rules) don't seem to have any recommendations. At a minimum, there needs to be a way to remove bad panelists, to hold them accountable. Particularly since the Complainant picks the provider -- forum shopping can arise, if many "bad" panelists are at a single provider ("bad" = biased towards complainants, in that case). There needs to be an oversight of the providers themselves by either ICANN, or a complaints organization/community appointed and empowered by ICANN (perhaps made up of a representative panel from the community, including registrants), to be able to decertify panelists/providers. It should not be "accredit and forget it". 7) Remedies, F.1. Proposed suggestion was left blank, but would be opposed to a transfer option, right of first refusal, or affecting the drop catching system (i.e. deletion cycle of domains). What I would support would be a mediation system that would allow for a transfer (as part of a negotiations) at an early stage, before time/money is spent on panelists adjudicating a dispute. This would save everyone time/money, as shown in the Nominet case. We need to look at restructuring the "flow chart" for exactly how the URS (and later the UDRP) proceeds, to really try to encourage these kinds of outcomes. It would take too long to describe it here, but there should be very early "Notice of Disputes" (in a succinct form, saving money for complainants), that could then allow for quick mediation, followed by longer complaints if those fail or if the registrant doesn't respond, with appropriate appeals mechanisms too). Potentially, there could be integration with the UDRP itself into a single policy. 8) Remedies, F.4. HSTS - as I noted on the call, this isn't a registry issue; the providers simply need to have HTTPS suspension pages, to complement the HTTP suspension pages. This is trivial to implement by providers. If they can't do it, they can outsource it to those with the technical capabilities (I know I could do it, if I had to, using the widely used tools that are available for HTTPS versions of sites). 9) Appeal, G.1. The topic of external court proceedings (from the Initial Consolidated URS Topics Table) was missed completely, perhaps inadvertently because it slipped onto a separate page from the other points of G.1 (i.e. the question differentiated between internal mechanisms and external ones). The "Super Consolidated" document skips the external mechanisms completely. As I noted when I first brought the issue to the RPM PDP mailing list in November 2017: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html and as David Maher followed up on CircleID: http://www.circleid.com/posts/20180103_the_udrp_and_judicial_review/ this is a critical issue for registrants (and applies to both URS/UDRP). Conceivably it could be addressed in a Stage 2 along with the UDRP, but it must be *knowingly* deferred to that stage, i.e. it can't be considered a topic that we've "solved" in this stage 1. [we might want to create a list of topics that we are *knowingly* shifting to stage 2] Some had suggested that ICANN can't "create a cause of action". That misses the point of this issue completely. ICANN shouldn't have written a policy in the first place that had this flaw, which *assumed* that registrants would be able to have heard in court in court on the merits de novo. The root cause of this issue is the "role reversal" that takes place. A domain registrant defends a URS/UDRP as a respondent. But, if the registrant wants to take an adverse decision to court, then they'd become the *complainant*. Had the URS/UDRP never existed, the TM holder would always be the complainant (and have a cause of action, e.g. TM infringement, cybersquatting, etc.), and the registrant would be the defendant (and have defenses). But, when the roles are switched unnaturally (because the URS/UDRP came first), the registrant may not have a "cause of action" to bring the court case, thus breaking the implicit bargain underlying the URS/UDRP that these complement existing laws, and didn't exist to replace those mechanisms. The obvious solution is to restore the TM holder to their natural role as "complainant" in the courts, and have the registrant be the defendant in the courts (i.e. eliminate the role reversal). There are examples from other systems we can adopt. For example in the case of the DMCA and YouTube, I noted that role reversal doesn't happen: https://mm.icann.org/pipermail/gnso-rpm-wg/2018-January/002669.html i.e. content creator makes a counter-notification, and says: ""I consent to the jurisdiction of the Federal District Court for the district in which my address is located, or if my address is outside of the United States, the judicial district in which YouTube is located, and will accept service of process from the claimant." (can adapt this to the domain case, to say registrant will consent to a case filed in their own jurisdiction or that of the registrar) One could adopt the solution from the IGO PDP, namely to vitiate the URS decision in the event there's no cause of action for a registrant. But, there's actually an even better solution (which came too late to be considered by that PDP), see the discussion of "Option #7" I started at: https://mm.icann.org/pipermail/gnso-igo-ingo-crp/2018-June/001226.html In British Columbia, Canada, they have a "Civil Resolution Tribunal" to steer small claims court cases and condo disputes to an online tribunal. A key part of their process, which we can follow, is their "Notice of Objection": https://civilresolutionbc.ca/how-the-crt-works/how-the-process-ends/#what-i= f-i-dont-agree-with-the-decision "If you disagree with the CRT's final decision on a small claims matter, including a default decision, you can pay a fee and file a Notice of Objection with the CRT. The Notice of Objection must be filed within 28 days after a party receives a CRT decision. The CRT cannot issue an order in a small claims dispute until the deadline for filing a Notice of Objection expires. If a Notice of Objection is filed, the CRT decision is not enforceable. If any party wants to continue any of the claims that were included in the dispute, that party must file a Notice of CRT Claim in the BC Provincial Court. The CRT will provide a Certificate of Completion to all the parties. The Certificate of Completion must be included with the Notice of CRT Claim, or the Provincial Court registry will not accept it. Here are some things about the Notice of CRT Claim process that you should know: It's like an appeal and you will get a new process with the BC Provincial Court, including a settlement conference or pre-trial conference and a trial The Small Claims Rules specify which Provincial Court registry the Notice of CRT Claim must be filed in Once filed, the filing party must serve the Notice of CRT Claim on the other parties The Provincial Court may order a party to pay a deposit for some or all of the amount of the CRT decision If the person who filed the Notice of Objection does not have a better outcome in the BC Provincial Court than in the CRT's decision, the BC Provincial Court may order that party to pay a penalty to the other party" So, in the domain context, a URS (or UDRP) registrant who doesn't like the outcome can pay a fee and file a Notice of Objection. To prevent gaming, the size of that fee should be comparable to what it would cost the registrant in court fees to file a court case (which can then be refunded once they've filed a statement of defense). The fee acts a sort of security or performance bond, that they will indeed defend the matter in court. That bond can be forfeited to the TM holder/complainant, in the event the registrant defaults on their promise to show up and defend in court. This completely solves the role reversal at the root cause of the problem, as it's the TM holder who will always be filing the court case as plaintiff, just as they would had the URS/UDRP not existed. And it further reduces gaming, because the court could take into account the URS outcome when assessing costs (see above, where it says "If the person who filed the Notice of Objection does not have a better outcome in the BC Provincial Court than in the CRT's decision, the BC Provincial Court may order that party to pay a penalty to the other party.") 10. G.2. De novo review: Practitioners survey results are obviously one-sided about removing de novo review, given the fact that there was only 1 practitioner who had represented registrants. I cannot overemphasize the lack of statistical validity of that survey (it was both (1) an unrepresentative and (2) small sample). A balanced survey that had those representing registrants with equal weight would not have yield such silly results. I challenge anyone who thinks the size of the survey was valid to use the margin of error calculator at: https://www.surveymonkey.com/mp/margin-of-error-calculator/ and send us the results (along with your inputs). Even with a (unrealistically low) population size of 34, 95% confidence level, and sample size of 14, we're talking about a +/- 20% margin of error! That's huge. [someone had suggested that 14/34 = 41% response rate to the survey was good --- obviously that informal comment doesn't match the formal statistical results from that calculator as to true error margins] 11. Cost Allocation Model, G1. Unlike some who have a registrants's perspective on these issues, I am 100% in favour of a loser pays system, provided it's carefully constructed to ensure that it will reduce frivolous complaints (and penalize obvious cybersquatters). I think some on the registrant side of the issue might believe the system is too tilted in favour of complainants at this time to permit it to be fairly implemented, which is a valid concern. Nonetheless, I think we should explore this more deeply. I think everyone would agree that we want to root out bad actors on *both sides* of the disputes (i.e. bad complainants, who bring complaints that are frivolous, as well as cybersquatters). There needs to be effective recourse to the courts too, as systems of checks/balances though (see point #9 above), in the event that these "costs" awards get misapplied by providers/panelists. We shouldn't summarily dismiss this topic. Conceivably, the cost allocation need not fall only upon the registrants themselves, but instead on bad registrars/registry operators, where high levels of abuse seem to be tolerated. e.g. see Spamhaus TLD abuse (for spam, but there's likely a correlation to TM abuse too): https://www.spamhaus.org/statistics/tlds/ When more than 50% of some domains "seen" are "bad domains", that's an obvious registry issue. I could envision some sort of refundable security bond/pool by registrars/registries, which is not refunded if there's excessive amount of cybersquatting originating from their registrar/registry. 12. J.1. Language. There's a huge "English" predisposition or even bias in this PDP (my own language is English, for the record). Sites like nTLDstats.com show how a large proportion of new gTLD registrants/registrars are from countries where English is not the dominant language (e.g. China). We have to do a lot better on this, to ensure that registrants are not disadvantaged by receiving notices and/or complaints that they simply can't understand. 13. N.1. We should continue to talk about mediation, and also possible integration as a single (multi-step) process in the UDRP itself. 14. Seems to have disappeared from our radar, but we appeared to have general agreement on standardized XML formats for decisions. This should be somewhere in our initial report (perhaps defer to stage 2, to consider with UDRP too?). For example, https://gnso.icann.org/sites/default/files/file/field-file-attach/transcrip… page 21: George Kirikos: Yes. Long ago I proposed that UDRP or URS decisions be available in XML format, like a machine-readable format, for the ease of academic research. I was wondering if you could talk a little bit about how much this kind of research costs you in terms of time and money and manual entry of data, et cetera and how much time and money you would have saved had the decisions, et cetera been available through machine-readable format? Thank you. Kathy Kleiman: And Rebecca, briefly too if you could. Rebecca Tushnet:I’m going to let (Alex) - yes. I'm going to - because she is - so it is her work and her labor that is at issue here and so, (Alex), do you have any thoughts? (Alex Noonan): So XML would have been incredible. Berry did a great job pulling a lot of these fields for us so some of them were easily scrapeable, but there are some that are important that weren't. So it took a lot of time to paste in the representative information. The country information, that kind of stuff is interesting. Like I would have expected a lot of these to be coming from China but as a matter of fact a lot of them were coming from the United States. That kind of stuff was valuable but really hard to get. On average it took me approximately six minutes to code each one of these and because the decisions are so short, a good bit of that was copying and pasting of stuff. That actually wasn't academic work. So I think in the end it was like - it was a substantive effort but XML would have been incredible and made it so much easier." And before that in January 2018: https://gnso.icann.org/sites/default/files/file/field-file-attach/transcrip… pp.22-23 George Kirikos: George Kirikos for the transcript. Yes. I've been advocating exactly that for, you know, at least a decade now with regards to the (EDRP) and of the data - applies to the URS. The community can come up with the standard XML format for publication of decisions that would have all the relevant fields and the providers would be expected to publish in that format. So, it's not hard but it needs to be the policy requirement in order get them in line. Thanks. J. Scott Evans: Okay. I am seeing general agreement with that. So, if we could note that in our notes that it appears that the recommendation - one of the recommendations that we'd feel like we should make at the end of this process is with regards to at least at this stage, the URS that there should be standardized reports developed and that each provider should have to provide in a standardized format so that as George pointed out, we're getting the same information from everyone and that makes it easy for researchers to look at the data and make sure we're getting the same data. Okay. George is making the point in the chat that he's not just talking about a standardized report, he's also talking about how the decisions are formatted and he sees them in an XML format because that would make it easier to actually work with the data. https://mm.icann.org/pipermail/gnso-rpm-wg/2018-January/002700.html (AC chat PDF, starting at the bottom of page 3, going to page 5) I don't know how this "disappeared", but I'm not the one "holding the pen" in this PDP. 15. It's not clear if this is the right time for us to put forth recommendations yet, but I would call for elimination of the URS, as its benefits to a very narrow group simply don't exceed its costs (on registrants, registry operators, and registrars). I can expand on this later, but did want to put this on the record (I assume we'll have ample time to make formal proposals like this, same as when Jeremy for example proposed elimination of Sunrise). Briefly, when new gTLDs were being considered, some folks predicted huge waves of cybersquatting, which required new RPMs as a countermeasure. Like many folks making predictions about new gTLDs, their predictions were completely wrong. Since those predictions were wrong, the policy outcomes of the past that were based on those incorrect predictions should be undone. We've probably spent more money (in terms of the opportunity cost associated with reviewing the URS, adding up both paid ICANN staff and also unpaid volunteer time from the community) than the total benefits from this procedure. The complaints themselves are dominated by the world's richest companies, who can certainly afford to either use the UDRP or the courts instead. In terms of "costs", there are real compliance costs for registrants, registrars, and registries who are subject to these policies. As a prospective registrant, I have to take into account the applicability of a burdensome RPM when considering whether to purchase a new gTLD domain, and weigh that against other alternatives. I think part of the lower than expected demand for new gTLDs can be explained by these excess regulatory burdens, and registrars/registries would see higher volumes of registrations for their products if these burdens were removed. Registrars/registries would also see lower costs, as there would simply be less red tape. I would suggest alternative approaches that would have a greater **deterrent** effect on bad actors, to replace the URS procedure. e.g. as a responsible registrant, I would have no problems posting a security bond or providing some other "signal" (e.g. public WHOIS, verified WHOIS, certification of some form, etc.), perhaps based on volume of registrations (those with 100+ domains, etc.). Bad actors (serial cybersquatters, etc.) would have much more difficulty providing that kind of "signal". One could even allow folks to explicitly opt-out of various RPMs, based on their providing these signals (i.e. they'd still be subject to court action, but could lower their compliance costs by providing suitable signals that they're not a bad actor). Some "reputation" based scheme could be developed, that could allocate higher costs to higher-risk actors, just like insurance and other systems of risk management do. One need only look at the SpamHaus stats I posted above, and see that URS has no impact on the huge amounts of actual abuse that occurs in these TLDs. A more effective alternative approach that will target high volume abusers is really required to replace this ineffective policy. As I said before, we all want to root out the bad actors. Let's find the right way to do it, and look beyond the ineffective solutions of the past. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

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REMINDER re: ACTIONS/FOR REVIEW: Super Consolidated URS Topics Table by 14 August
by Julie Hedlund Aug. 14, 2018

Aug. 14, 2018

Dear all, Per the message below, this is a reminder to review the attached document and provide any comments by COB Tuesday, 14 August. 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: Wednesday, August 8, 2018 at 4:20 PM To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [gnso-rpm-wg] ACTIONS/FOR REVIEW: Super Consolidated URS Topics Table by 14 August Dear all, Per the action items from the notes below, staff is recirculating the Super Consolidated URS Topics Table (attached). WG members are requested to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tuesday, 14 Aug. In addition, WG members are requested to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, which will be discussed during next week’s call. Best, Mary, Ariel, Berry, and Julie From: gnso-rpm-wg <gnso-rpm-wg-bounces(a)icann.org> on behalf of Ariel Liang <ariel.liang(a)icann.org> Date: Wednesday, August 8, 2018 at 3:57 PM To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 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 [community.icann.org] 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 [community.icann.org] 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-… [trademark-clearinghouse.com] 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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GNSO SOI / RPMs Member Wiki updates
by Julie Bisland Aug. 13, 2018

Aug. 13, 2018

Dear all, In an effort to ensure accuracy, please take a moment to check your GNSO SOI and make any needed updates. In addition, would all members and observers kindly visit the WG Members wiki page: https://community.icann.org/x/3iWAAw and verify your affiliation is correctly displayed. For any updates to the member wiki page or if assistance is needed with your GNSO SOI, please email gnso-secs(a)icann.org<mailto:gnso-secs@icann.org>. Much thanks to you all, GNSO SO/AC Support Julie Bisland Secretariat Operations Coordinator for the GNSO Internet Corporation for Assigned Names and Numbers (ICANN) Email: julie.bisland(a)icann.org<mailto:julie.bisland@icann.org> Skype ID: 79613b691cb8a6c1 Find out more about the GNSO by visiting the GNSO Newcomer pages [gnso.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_sites_g…>

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Draft Agenda: RPM PDP Working Group Meeting 15 August at 1700 UTC
by Julie Hedlund Aug. 13, 2018

Aug. 13, 2018

Dear RPM PDP Working Group members, On behalf of the Co-Chairs and in preparation for the Working Group meeting on Wednesday, 15 August at 1700 UTC for 90 minutes, please see the draft agenda below. As noted in the draft agenda, the intent of the meeting is to continue reviewing the document developed by the URS Sub Team leaders and the Working Group Co-Chairs with staff: The “Super Consolidated URS Topics Table – with Findings, Issues, and Suggestions from all Three URS Sub Teams for Working Group Discussion.” See attached. As a reminder, this document synthesizes the three Sub Team’s preliminary findings/issues, proposed suggestions, and data sources. It is organized according to the URS review topics in the initial Consolidated URS Topics Table. The Working Group Co-Chairs hope that this document will facilitate Working Group discussions concerning similar or complementary URS findings/suggestions as well as differences, including whether, and what scope/type of, guidance should be developed to improve the URS, and also open questions on which community feedback should be specifically sought. Please note that neither is the Working Group bound to take the proposed suggestions, nor do the proposed suggestions restrict the scope of what the Working Group will consider as it prepares the draft Initial Report. Draft Agenda: Review Agenda/Statements of Interest Continue reviewing the “Super Consolidated URS Topics Table – with Findings, Issues, and Suggestions from all Three URS Sub Teams for Working Group Discussion” and Discussion Any Other Business Best, Mary, Ariel, Berry, and Julie On behalf of the RPM PDP Working Group Co-Chairs

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Recordings, attendance & AC chat from Review of all Rights Protection Mechanisms (RPMs) PDP Working Group call on Wednesday, 08 August 2018 at 17:00 UTC
by Julie Bisland Aug. 9, 2018

Aug. 9, 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 Wednesday, 08 August 2018 at 17:00 UTC. Attendance and recording of the call is also posted on agenda wiki page: https://community.icann.org/x/uwNpBQ [community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_…> MP3: https://audio.icann.org/gnso/gnso-pdp-rpms-wg-08aug18-en.mp3 AC Recording: https://participate.icann.org/p247moa58ng/ 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/FOR REVIEW: Super Consolidated URS Topics Table by 14 August
by Julie Hedlund Aug. 8, 2018

Aug. 8, 2018

Dear all, Per the action items from the notes below, staff is recirculating the Super Consolidated URS Topics Table (attached). WG members are requested to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tuesday, 14 Aug. In addition, WG members are requested to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, which will be discussed during next week’s call. Best, Mary, Ariel, Berry, and Julie From: gnso-rpm-wg <gnso-rpm-wg-bounces(a)icann.org> on behalf of Ariel Liang <ariel.liang(a)icann.org> Date: Wednesday, August 8, 2018 at 3:57 PM To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 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 [community.icann.org] 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 [community.icann.org] 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-… [trademark-clearinghouse.com] 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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