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

GNSO Rights Protection Mechanisms ICANN61 San Juan meeting details
by Terri Agnew Feb. 22, 2018

Feb. 22, 2018

Dear all, Please see below the ICANN61 sessions scheduled for the GNSO Rights Protection Mechanisms (RPMs) PDP activities: * Saturday 10 March 2018 15:15 - 16:45 local time (AST): GNSO Rights Protection Mechanisms (RPMs) PDP WG Part 1 Face-to-Face in room 104 * Saturday 10 March 2018 17:00 - 18:30 local time (AST): GNSO Rights Protection Mechanisms (RPMs) PDP WG Part 2 Face-to-Face in room 104 * Sunday 11 March 2018 17:00 - 18:30 local time (AST): GNSO Rights Protection Mechanisms (RPMs) PDP WG Part 3 Face-to-Face in room 208BC * Thursday 15 March 2018 8:30 - 10:15 local time (AST): GNSO Rights Protection Mechanisms (RPMs) PDP WG Part 4 Face-to-Face in room 103A As a reminder: GNSO open and public session remote participation details: https://community.icann.org/x/3wC8B GNSO Working Session Schedule, Sunday 11 March 2018: https://community.icann.org/x/7AC8B Main ICANN meeting schedule: https://61.schedule.icann.org/meetings Kind regards, The GNSO SO/AC Team

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REMINDER: No WG call this week (but 3 concurrent Sub Teams); draft agendas for the Sub Teams
by Mary Wong Feb. 20, 2018

Feb. 20, 2018

Dear all, As highlighted in the action items from the Working Group call last week (see below), there will not be a full Working Group meeting this week. Instead, all three new Sub Teams will be meeting concurrently, in the usual Working Group time slot. If you signed up for one of the new Sub Teams, you should have received a calendar invitation for your respective group, and will have been signed up to a mailing list for that group as well. If you have not signed up for a Sub Team but still wish to do so (note that the Call for Volunteers closed earlier today), please email me as soon as possible, and before the Sub Team call takes place, indicating which Sub Team you wish to sign up for. Staff has created a wiki page for each Sub Team, as was done with the previous and current Sub Teams that were formed (including the ongoing Data Sub Team that meets each Friday). You can find these pages, with additional information on each Sub Team, linked from here (please note that staff is still populating these pages, so in some cases information such as the membership list is not yet there): https://community.icann.org/x/KhGsAw The draft proposed agendas and links (where applicable) for the three Sub Teams are: 1. Welcome by Working Group co-chairs (Kathy will be on the Practitioners’ Sub Team call, Phil on the Providers’ Sub Team call, and J. Scott on the Documents Sub Team call) 2. Overview of scope of work (see Action Items from last week) and selection of Sub Team chair(s) (if desired) 3. Discussion – * For Practitioners: Identify a list of experienced URS practitioners, and develop a list of questions directed at these practitioners * For Providers: Develop a list of questions directed at the three URS providers, based on the URS Procedure, URS Rules, each provider’s MOU with ICANN and each provider’s Supplemental Rules (links to all compiled here: https://community.icann.org/x/1Ri8B) * For Documents: Review the Consolidated URS Document (with the table of topics), and identify which topic will require additional data collection (the latest version of the consolidated document is available here: https://community.icann.org/x/zxW8B) 1. Next steps/next meeting Thanks and cheers Mary, Julie, Ariel & Berry From: gnso-rpm-wg <gnso-rpm-wg-bounces(a)icann.org> on behalf of Julie Hedlund <julie.hedlund(a)icann.org> Date: Wednesday, February 14, 2018 at 16:34 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [gnso-rpm-wg] Action Items from 14 February Working Group Call Dear All, The action items noted by staff from the Working Group call held on 14 February 2018 (1800 UTC) are as follows. 1. Staff will send to the Working Group list a Call for Volunteers for participants and observers in three (3) Sub Teams to carry out the following separate tasks related to the URS review in parallel: 1. Sub Team for URS Practitioners: To identify a group of URS practitioners and a list of questions to the practitioners 2. Sub Team for URS Documents: To review the list of topics in the Compilation of URS Review Documents and make suggestions about the data needs/sources 3. Sub Team for URS Providers: To develop and review questions for the URS providers 2. Staff will schedule the above-mentioned Sub Teams meetings for 21 February and 28 February for 1800 UTC (no meeting on 07 March due to travel conflicts). 3. Staff will schedule a meeting with the URS providers. Staff have posted to the wiki space the action items and notes. Please note that these will be high-level notes and are not meant as a substitute for the transcript or recording. The recording, transcript, Adobe Connect chat, and attendance records are posted on the wiki. Best Regards, Julie Julie Hedlund, Policy Director

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REMINDER - Call for Volunteers: Three URS Sub Teams
by Ariel Liang Feb. 19, 2018

Feb. 19, 2018

Dear All, This is reminder for the Call for Volunteers for the three Sub Teams related to the URS review. We will keep the sign-up sheet<https://docs.google.com/spreadsheets/d/1WDsoVVxETiEDGVY27t4VUdSKcCi68eKMvBU…> open till Tuesday, 20 February at 17:00 UTC. Please look out for calendar invite and other relevant materials sent to their individual mailing lists later tomorrow. Thank you, Mary, Julie, Berry, and Ariel From: gnso-rpm-wg <gnso-rpm-wg-bounces(a)icann.org> on behalf of Ariel Liang <ariel.liang(a)icann.org> Date: Thursday, February 15, 2018 at 5:47 PM To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Re: [gnso-rpm-wg] Call for Volunteers: Three URS Sub Teams Dear All, Thank you for those who have already signed up for the Sub Teams in the Google Spreadsheet! As an additional clarification, since the three Sub Teams will meet concurrently, staff members will host the calls via Adobe Connect & GlobalMeet. Due to logistics limitations, recordings will be available after each call, but transcript will not be provided. Members are free to join more than one Sub Team, but would only be able to participate live in one at any point in time. Please let us know if you have any question. Thank you, Mary, Julie, Berry, and Ariel From: gnso-rpm-wg <gnso-rpm-wg-bounces(a)icann.org> on behalf of Ariel Liang <ariel.liang(a)icann.org> Date: Thursday, February 15, 2018 at 11:06 AM To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [gnso-rpm-wg] Call for Volunteers: Three URS Sub Teams Dear PDP WG members, This is a Call for Volunteers for members in three (3) Sub Teams to carry out the following separate tasks related to the URS review in parallel: 1. Sub Team for URS Practitioners: To identify a group of URS practitioners and a list of questions to the practitioners 2. Sub Team for URS Documents: To review the list of topics in the Compilation of URS Review Documents and make suggestions about the data needs/sources 3. Sub Team for URS Providers: To develop and review questions for the URS providers The Sub Teams are scheduled to meet on 21 February and 28 February at 18:00 UTC. If you are interested in being a member in any of the Sub Team, please enter your name and email in the Google Spreadsheet: https://docs.google.com/spreadsheets/d/1WDsoVVxETiEDGVY27t4VUdSKcCi68eKMvBU…<https://urldefense.proofpoint.com/v2/url?u=https-3A__docs.google.com_spread…>. Please contact staff if you are unable to access the document. Kindly provide your information by Monday, 19 February, so that we can timely organize the Sub Team calls. Note: Each Sub Team will be responsible for developing the framework for discussion, putting forward suggestions and proposing solutions to the full WG on its respective topic. While the majority of work will take place at the Sub Team level, all decisions about utilizing outputs of the Sub Team will be made during calls with the full WG. This Sub Team system for organizing the work of the RPMs PDP WG has been implemented to allow work to take place effectively and within reasonable timeframes. Sub Teams are expected to be small, coherent groups with diverse participation from across the WG. Please do not hesitate to let us know if you have any question. Best Regards, Mary, Julie, Berry, and Ariel

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Call for Volunteers: Three URS Sub Teams
by Ariel Liang Feb. 18, 2018

Feb. 18, 2018

Dear PDP WG members, This is a Call for Volunteers for members in three (3) Sub Teams to carry out the following separate tasks related to the URS review in parallel: 1. Sub Team for URS Practitioners: To identify a group of URS practitioners and a list of questions to the practitioners 2. Sub Team for URS Documents: To review the list of topics in the Compilation of URS Review Documents and make suggestions about the data needs/sources 3. Sub Team for URS Providers: To develop and review questions for the URS providers The Sub Teams are scheduled to meet on 21 February and 28 February at 18:00 UTC. If you are interested in being a member in any of the Sub Team, please enter your name and email in the Google Spreadsheet: https://docs.google.com/spreadsheets/d/1WDsoVVxETiEDGVY27t4VUdSKcCi68eKMvBU…. Please contact staff if you are unable to access the document. Kindly provide your information by Monday, 19 February, so that we can timely organize the Sub Team calls. Note: Each Sub Team will be responsible for developing the framework for discussion, putting forward suggestions and proposing solutions to the full WG on its respective topic. While the majority of work will take place at the Sub Team level, all decisions about utilizing outputs of the Sub Team will be made during calls with the full WG. This Sub Team system for organizing the work of the RPMs PDP WG has been implemented to allow work to take place effectively and within reasonable timeframes. Sub Teams are expected to be small, coherent groups with diverse participation from across the WG. Please do not hesitate to let us know if you have any question. Best Regards, Mary, Julie, Berry, and Ariel

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Re: [gnso-rpm-wg] Call for Volunteers: Three URS Sub Teams
by Ariel Liang Feb. 15, 2018

Feb. 15, 2018

Dear All, Thank you for those who have already signed up for the Sub Teams in the Google Spreadsheet! As an additional clarification, since the three Sub Teams will meet concurrently, staff members will host the calls via Adobe Connect & GlobalMeet. Due to logistics limitations, recordings will be available after each call, but transcript will not be provided. Members are free to join more than one Sub Team, but would only be able to participate live in one at any point in time. Please let us know if you have any question. Thank you, Mary, Julie, Berry, and Ariel From: gnso-rpm-wg <gnso-rpm-wg-bounces(a)icann.org> on behalf of Ariel Liang <ariel.liang(a)icann.org> Date: Thursday, February 15, 2018 at 11:06 AM To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [gnso-rpm-wg] Call for Volunteers: Three URS Sub Teams Dear PDP WG members, This is a Call for Volunteers for members in three (3) Sub Teams to carry out the following separate tasks related to the URS review in parallel: 1. Sub Team for URS Practitioners: To identify a group of URS practitioners and a list of questions to the practitioners 2. Sub Team for URS Documents: To review the list of topics in the Compilation of URS Review Documents and make suggestions about the data needs/sources 3. Sub Team for URS Providers: To develop and review questions for the URS providers The Sub Teams are scheduled to meet on 21 February and 28 February at 18:00 UTC. If you are interested in being a member in any of the Sub Team, please enter your name and email in the Google Spreadsheet: https://docs.google.com/spreadsheets/d/1WDsoVVxETiEDGVY27t4VUdSKcCi68eKMvBU…<https://urldefense.proofpoint.com/v2/url?u=https-3A__docs.google.com_spread…>. Please contact staff if you are unable to access the document. Kindly provide your information by Monday, 19 February, so that we can timely organize the Sub Team calls. Note: Each Sub Team will be responsible for developing the framework for discussion, putting forward suggestions and proposing solutions to the full WG on its respective topic. While the majority of work will take place at the Sub Team level, all decisions about utilizing outputs of the Sub Team will be made during calls with the full WG. This Sub Team system for organizing the work of the RPMs PDP WG has been implemented to allow work to take place effectively and within reasonable timeframes. Sub Teams are expected to be small, coherent groups with diverse participation from across the WG. Please do not hesitate to let us know if you have any question. Best Regards, Mary, Julie, Berry, and Ariel

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

Feb. 14, 2018

Dear All, The action items noted by staff from the Working Group call held on 14 February 2018 (1800 UTC) are as follows. 1. Staff will send to the Working Group list a Call for Volunteers for participants and observers in three (3) Sub Teams to carry out the following separate tasks related to the URS review in parallel: Sub Team for URS Practitioners: To identify a group of URS practitioners and a list of questions to the practitioners Sub Team for URS Documents: To review the list of topics in the Compilation of URS Review Documents and make suggestions about the data needs/sources Sub Team for URS Providers: To develop and review questions for the URS providers 2. Staff will schedule the above-mentioned Sub Teams meetings for 21 February and 28 February for 1800 UTC (no meeting on 07 March due to travel conflicts). 3. Staff will schedule a meeting with the URS providers. Staff have posted to the wiki space the action items and notes. Please note that these will be high-level notes and are not meant as a substitute for the transcript or recording. The recording, transcript, Adobe Connect chat, and attendance records are posted on the wiki. Best Regards, Julie Julie Hedlund, Policy Director

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

Feb. 14, 2018

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

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

Feb. 14, 2018

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

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

Feb. 9, 2018

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

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

Feb. 9, 2018

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

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