Georges, Paul, Rebecca, all,

Thank you for sharing these views, which I find very helpful.

As a footnote, I think Georges mentions some really good ideas we that should consider adding to our list of questions on this topic.

In terms of the points that Paul and Rebecca mention here, I completely agree that data collection/analysis should be a fundamental aspect of our work. As Georges describes, it is much more straightforward to collect and analyze data that is objective in form, e.g. how many URS cases/domains have been commenced; the fees or monetary costs imposed; the amount of time allocated for various procedural aspects of the mechanism, and the ultimate status of the domains under adjudication. Collectively this information can help us draw certain inferences about how the procedure is working and guide us in identifying ways to enhance the overall utility of the mechanism from the perspective of all parties to the case.

As we know, while having data can be extremely valuable. there is the associated challenge of obtaining the information. Consider what we went through for our data collection exercise on TM Claims and Sunrise. In fact, not having sufficient data (even objective data elements) has been a reoccurring theme throughout ICANN since its inception, including for the Competition, Consumer Trust and Consumer Choice - Review Team which highlighted this very concern in its draft Report, see: https://www.icann.org/public-comments/cct-recs-2017-11-27-en

So I think this issue has plagued the community for a long time and even within this PDP I've noticed its been a challenge from the start. When the idea of undertaking a qualitative review of the evidentiary standard in URS cases was first proposed, one of the practical concerns identified in response is: we do not have access to the underlying evidence and pleadings - which serve as the basis for the application of the "clear and convincing" standard in any given case. 

Absent access to those resources, I'm unclear on how such a review of a statistically relevant number of cases can be accomplished. This may simply be a practical constraint, but from my perspective, it is a gating-issue that requires resolution in order to assess whether that type of review is even possible under these circumstances.

Best regards,

Claudio

On Thu, Feb 8, 2018 at 5:16 PM, Paul Keating <paul@law.es> wrote:

Reviewing anything leads to subjective results unless what your reviewing is a math,atic formula or repetitive science experiment.  That is not a reason to not do it.

Sent from my iPad

On 8 Feb 2018, at 23:14, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:

I agree with Claudio that these kinds of case reviews can get subjective and, as such, are not of much use.  On the question of passive holding, I do note that there is a fairly established standard of factors that are considered for passive holding cases, as follows:  (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.  Given that the URS has a higher standard of proof, I would expect that a ruling on such would have fairly solid evidence to support the majority of the factors.  The fact that a panelist might not have written an extensive decision does not mean that these factors were not considered, were incorrectly ruled on or that no evidence was submitted.  All it means is that in that one case the panelist did not write a very detailed decision.  That happens in court cases all the time.  Lower courts and Appellate courts often get extensive briefing and oral arguments and then issue a simple decision.  So I do not find the fact that there may be some URS decisions that are short on explanation as signaling some major flaw in the system – particularly as there has never been a requirement that decisions cover all bells and whistles.  Perhaps what the review should focus on is whether or not the decision contains a rational (e.g., does the decision simply say Complainant or Respondent wins or is there some description of what is involved and some explanation why Complainant or Respondent prevails on the enumerated factors.  In addition, the problem I have with the case selections some folks are engaged in is that someone will point to a handful of cases they believe should have had more detail to make a general argument of some sort of grave harm.  For those who love statistics and sample sizes, its seems to me that pointing to a handful of cases out of hundreds of cases is a non-significant sample size.  So to be clear, I do not support a review of the merits or substantive aspects of cases decided as this will just end up being an endless subjective debate.  The review I would support is simply to see whether the cases include some rationale or none whatsoever – and whether there is an issue or not (i.e., are we talking a dozen cases with no explanation or hundreds of case with no explanation).  As to personal academic reviews of case decisions, such as the one being undertaken by Rebecca (which will not be based on what was actually filed and argued), I have no problem with such a review being conducted by Rebecca and her research assistants as part of their own work at their university.  But, to be clear, that work is not the work of the working group and should be no more than another data input for the working group to consider along with any number of other studies, articles, surveys etc that might have already been conducted or which are in the works regarding the URS.    

 

 

Georges Nahitchevansky      
Kilpatrick Townsend & Stockton LLP  
The Grace Building | 1114 Avenue of the Americas | New York, NY  10036-7703  
office 212 775 8720 | fax 212 775 8820
ghn@kilpatricktownsend.com | My Profile | vCard

From: gnso-rpm-wg [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of claudio di gangi
Sent: Thursday, February 8, 2018 10:58 AM
To: Paul Keating <Paul@law.es>
Cc: gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Action Items from 07 February Working Group Call

 

A relevant inquiry from this might be what evidence is necessary for the complainant to establish "passive holding" of the domain under the URS 'clear and convincing' vs. UDRP 'preponderance of the evidence' standards?

 

Preponderance of the evidence is usually interpreted as 'more likely than not', while clear and convincing can be understood as 'substantially more likely than not'.

 

When you are dealing with a domain name that does not resolve to an active website, e.g. "passive holding" - there doesn't seem to be a lot of room for argument. And even if we had access to the pleadings and evidence, this is ultimately a subjective determination where reasonable minds can see things differently. 

 

So I don't really see how a case review by this WG can add much to the equation, but if anyone has views on that please share for discussion.

 

Best,

Claudio

 

 

 

On Thu, Feb 8, 2018 at 8:01 AM Paul Keating <Paul@law.es> wrote:

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@icann.org> on behalf of "BECKHAM, Brian" <brian.beckham@wipo.int>
Date: Thursday, February 8, 2018 at 12:52 PM
To: Julie Hedlund <julie.hedlund@icann.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@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 ostensibly​this flows from assessing whether a panel correctly applied the burden of proof. 

 

Thanks for considering,

 

Brian

 

 

---

From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org>
Sent: Wednesday, February 7, 2018 9:01 PM
To: gnso-rpm-wg@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@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

_______________________________________________
gnso-rpm-wg mailing list
gnso-rpm-wg@icann.org
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

---

Confidentiality Notice:
This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner.

---

***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.

_______________________________________________
gnso-rpm-wg mailing list
gnso-rpm-wg@icann.org
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

_______________________________________________
gnso-rpm-wg mailing list
gnso-rpm-wg@icann.org
https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Drpm-2Dwg&d=DwICAg&c=U0G0XJAMhEk_X0GAGzCL7Q&r=X0Xp_GV0DKcZGu17VvJ_ZFpNhSQwQmmlVFw3kxNu_B0&m=3KWNk8-8_5FhZeHfyBp0T_Orso2rpPkNsMqCSrsQjts&s=Ou4cAyXnEpibvNqiWK19wr4TmdEbR2llE6WT77F4of8&e=