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)

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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-file-contain. 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.