One way in which the URS burden of proof differs substantially from UDRP is that the URS requires that "For a URS matter to conclude in favor of the Complainant, the Examiner shall render a Determination that there is* no genuine issue of material fact*." (URS Procedure 8.3). This is the same burden as the URS summary judgment. It bears noting that I haven't seen this language mentioned by any URS arbitrator in any cases which I've reviewed. Jonathan On Mon, Apr 16, 2018 at 7:49 AM, BECKHAM, Brian <brian.beckham@wipo.int> wrote:
Hi Jon,
Could you explain/unpack that a little bit.
Some folks might see “standard of review” and “burden of proof” as somewhat synonymous, in which case as you rightly point out the URS applies a “clear and convincing” standard but the UDRP applies a “balance of probabilities” (sometimes called “on balance”) standard.
Or are you referring to the standard of review for appeals cases?
Sorry for a perhaps basic question, and thanks!
Brian
*From:* gnso-rpm-wg [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *Jon Nevett *Sent:* Friday, April 13, 2018 8:43 PM *To:* Nahitchevansky, Georges *Cc:* gnso-rpm-wg@icann.org
*Subject:* Re: [gnso-rpm-wg] Proposal to Shift URS review to Phase II
One alternative is to split the URS review into two parts.
As most know, the standard of review of a URS claim is exactly the same as a UDRP claim. The burden of proof, however, is higher, as URS was supposed to be for "slam dunk" cases -- hence the the clear and convincing burden. We could wait on reviewing the URS standard of review and everything that goes with that, as that work will mirror the work that will need to be completed during the UDRP review. We could continue to review the facets of the URS that differ from the UDRP now and push the rest to later.
Just an idea for a middle ground if folks want one.
Jon
On Apr 13, 2018, at 2:25 PM, Nahitchevansky, Georges < ghn@kilpatricktownsend.com> wrote:
+1 on moving the URS to phase 2. Georges N
*From:* gnso-rpm-wg [mailto:gnso-rpm-wg-bounces@icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *Kurt Pritz *Sent:* Friday, April 13, 2018 2:06 PM *To:* gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Proposal to Shift URS review to Phase II
Hi John (and everyone):
Thank you to John for taking the time to put together this cogent document.
I support moving the URS discussion to phase II for the reasons John cited and others.
As John, and others (in an earlier email string) have pointed out, the results of GDRP could affect the URS discussion. The next round of new gTLDs should not be held hostage to that.
For me, I see no reason why the URS discussion was ever on the critical path to the next round of new gTLDs.
The findings of this working group will not affect the analysis of a potential gTLD applicant regarding whether to apply or setting up operations. Nor will it affect the evaluation of applications. If registries receive a URS decision, they will implement it. They have no role in setting the criteria or requirements for URS decision making. Therefore, there is no reason to put this discussion on the critical path to the next round.
John’s paper alludes to this when he says that URS is a lot more like UDRP (which is in Phase II) than TMCH & Claims (which is in Phase I).
While this phase I / phase II timing decision might not have seemed to be a critical decision at the outset, GDRP developments and the length of time taken so far has made it a critical decision.
I find George’s reasoning unpersuasive. He cites section 5 of John’s paper, which is essentially background information — dicta with regard to he matter at hand. All of the questions in section 5 can be taken up by this working group regardless of the timing and none of the questions need be on the critical path to the next round for the reason stated above (i.e., the new gTLD applicant or operator is not affected by the outcome of these discussion topics).
Similarly, I don’t think George’s discussion regarding fpast meeting frequency is relevant to whether to move the URS to phase II.
I find the discussion of the chairmanship irrelevant to the discussion also.
Thanks again to John for doing this work, I support his conclusion that the URS discussion should be moved to phase II.
Best regards,
Kurt
On Apr 13, 2018, at 9:12 AM, Paul Tattersfield <gpmgroup@gmail.com> wrote:
Greg,
It’s always important to try and be precise in what you say. I think it would have been helpful for John to clarify his proposal as he has not done so, on a more general level:
Clearly the 3 qualities John identified are important basic competencies.
I agree one of the highest compliments one can give a WG chair is that you had no sense of where they stood on any of the issues the group handled. The question is how can this be achieved more often than not and will the 3 qualities John identified be sufficient?
I would suggest character traits high in openness and agreeableness are probably as important if not more important. If these could be combined with humility, a moral compass and intellect this may help avoid working group member fatigue and in the worst case all the time consuming curative work necessary to address a situation where someone has fallen below the required standards.
Kind regards,
Paul.
On Mon, Apr 9, 2018 at 4:02 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:
Paul,
Perhaps John can clarify what he meant by these criteria. I think they make perfect sense and seem like common sense. As I read them, they are fairly common criteria for good ICANN GNSO Working Group chairs and nothing surprising. By your reaction, I suspect you are reading them differently, especially since you think that these create a heightened potential to shape process in an unwelcome way (I say “heightened” only because any chair has some potential to process in a way that is unwelcome to some). That may be the source of our different views on these criteria.
Appropriate neutrality = Someone who is able to act neutral as expected of Working Group chairs, as if they had no interest in any particular outcome. Not someone who is in fact neutral (i.e., not a stakeholder at all, or a stakeholder in a community that truly has no preference as to outcome); this latter type would be relatively rare. I think one of the highest compliments one can give a WG chair is that you had no sense of where they stood on any of the issues the group handled.
Experience in PDP consensus-building = Ideally, a former chair, vice-chair, subgroup chair, rapporteur or other leader/facilitator in a GNSO PDP WG, who has already had the experience of trying to aid the WG (or subgroup) to come to consensus. Less ideally, an experienced GNSO WG PDP participant, who has been through some number of consensus building processes and is ready to step into the chair role in that process.
Experience in parliamentary procedure = Someone with experience with and a good understanding of the rules and procedures governing the process of GNSO PDP WG meetings. Not someone who has specific experience with Robert’s Rules of Order and its non-US equivalents, not someone who is a member of an actual Parliament, and not someone who is a “parliamentarian” (which could mean a member of parliament or someone who advises a chair on rules of procedure). This may be the one that is tripping you up. This is probably the most susceptible to misunderstanding, since we don’t use the term “parliamentary procedure” that often in ICANN-land in any sense (and our meetings do not run by Robert’s, etc.)
The bigger picture I get is of a steady and experienced hand who can stay above the fray in terms of issues and positions, who can actively work with the group to identify and fashion consensus, and someone who has very good understanding of and facility with our rules of procedure so that they can run the meetings well and make them as efficient and effective as possible, while ensuring that all positions are heard. From a procedural side, this sounds completely sensible and not that uncommon in ICANN-land.
Thoughts?
Greg
On Mon, Apr 9, 2018 at 6:02 AM Paul Tattersfield <gpmgroup@gmail.com> wrote:
Greg, because they are a subset of the ideal criteria necessary for optimum outcomes and as such has the potential to shape process in an unwelcome way.
I am hoping John having brought forward his in depth proposal with this very significant ballon d'essai in the ultimate paragraph would expand further on his intentions or at least indicate if he had someone mind.
Kind regards,
Paul.
On Fri, Apr 6, 2018 at 4:06 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:
Paul,
I'm not sure why you say this is precise. Is there one criterion in particular that caused you to say that?
Greg
On Fri, Apr 6, 2018 at 9:24 AM, Paul Tattersfield <gpmgroup@gmail.com> wrote:
*it is also recommended that Phase II Working Group has one chairperson with appropriate neutrality and experience in PDP consensus building and parliamentary procedures*
That is quite a precise skill set, did you have someone in mind?
[image: Image removed by sender.]
On Fri, Apr 6, 2018 at 2:54 AM, John McElwaine < john.mcelwaine@nelsonmullins.com> wrote:
Dear RPM Working Group:
In our meeting in San Juan, Puerto Rico, I raised the issue of moving the work set forth in this Working Group’s charter relating to the URS to Phase II. The Chairs asked that I put something in writing detailing the specific recommendation and reasoning, which I present below and have also attached hereto in a Word document for your review and consideration.
Kind regards,
John
Proposal to Shift URS from Phase I to Phase II:
1. On 15 December 2011, the GNSO Council requested that eighteen (18) months after the launch of the New gTLD Program ICANN staff prepare and publish an Issue Report on the state of all rights protection mechanisms implemented for both existing and new gTLDs, including but not limited to the UDRP and URS. The Council subsequently agreed to extend the timeline for a report by a further six (6) months.
2. On 9 October 2015, a Preliminary Issues Report was published discussing the scope of this potential PDP and outlining three possible options for moving forward. The third option ultimately was elected at that time:
The “third option would be to conduct a policy review of all the RPMs in two phases, with the initial phase being a review only of the RPMs developed for the New gTLD Program. . . . The second, subsequent phase of work would be a review of the UDRP, based on the concerns specific to its scope that were raised in the 2011 GNSO Issue Report and any additional relevant topics derived from the first phase of work concerning the RPMs developed for the New gTLD Program.”
3. On 15 March 2016, the two phase approach was approved in the Charter for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group (“RPM Working Group”). Phase One was to focus on a review of all the RPMs that were developed for the New gTLD Program, and Phase Two will focus on a review of the UDRP.
4. The Objective & Goals in the PDP’s Charter were to examine (i) the RPMs effectiveness, (ii) whether the RPMs collectively fulfil their purposes, and (iii) whether additional policy specific recommendations are needed, including to clarify and unify the policy goals. RPM Working Group Charter, at p. 3. The Objectives & Goals in the PDP’s Charter were broadly defined:
“In addition to an assessment of the effectiveness of each RPM, the PDP Working Group is expected to consider, at the appropriate stage of its work, the overarching issue as to whether or not all the RPMs collectively fulfill the purposes for which they were created, or whether additional policy recommendations are needed, including to clarify and unify the policy goals. If such additional policy recommendations are needed, the Working Group is expected to develop recommendations to address the specific issues identified. The Working Group is also directed to bear in mind that a fundamental underlying intention of conducting a review of all RPMs in all gTLDs is to create a framework for consistent and uniform reviews of these mechanisms in the future.”
5. However, the RPM Working Group Charter also contains a lengthy attachment entitled “LIST OF POTENTIAL ISSUES FOR CONSIDERATION IN THIS PDP” This “list was derived from various community suggestions in different forums, they are not listed in any particular order of importance nor has staff attempted to analyze the merits, relevance or significance of each issue”. This list contains topics that are out of scope when compared with the Objectives and Goals, including:
1. Are generic dictionary words being adequately protected so that they are available for all to use as allowed under their national laws and international treaties? E.g. sun, window
2. Should monetary damages be awarded?
3. Are last names and geographic places adequately protected so that they are available for all to use as allowed under their national laws, e.g, Smith, McDonald, Capitol Hill Cafe, Old Town Deli?
4. Should injunctive relief be available?
5. Now that Reverse Domain Name Hijacking is a regular finding of UDRP panels, indicating that domain name registrants are being abused by complaints brought against them in the UDRP process, what penalties and sanctions should be imposed on Complainants found to be reverse domain name hijackers? How can those penalties and sanctions be aligned so as to be fair, as compared to the loss of a domain name taken from a registrant found to be a “cybersquatter”?
6. Issues from this list and other new out of scope issues, complaints and modifications are causing the work of the RPM Working Group to slow and are polarizing the members; thus, harming the ability to achieve consensus in the Working Group. As recommend by the PDP breakout group and discussed by the Community in attendance at the Sunday gNSO Working Session in San Juan, it would be particularly useful if working group charters would:
1. Define clearly what success for the proposed working group ”should look like”. (K. Kleiman reporting on breakout session, Transcript ICANN61 San Juan GNSO Working Session Part 2 Sunday, 11 March 2018 at 10:30 AS (“Transcript”) at p. 5).
2. Define topics or issues that must be addressed, may be addressed and may not be addressed. (Transcript at p. 4).
3. Have “more defined issues, [be] more bounded, more limited.” (Transcript at p. 5).
4. Have a narrower scope and be broken up into separate projects. (Transcript at p. 5).
5. Having a charter drafting team that “that are experts, and that might mean a legal expert, but we should also have people that have experience, practical experience.” (S. DelBianco reporting on breakout session, Transcript at p. 5).
7. The Trademark Clearinghouse, Sunrise and Trademark Claims Notices are RPMs relating to the registration process of domain names in the new gTLDs. The URS is more akin to the UDRP, and like the UDRP is a mandatory dispute resolution proceeding to recover a domain name that has been clearly registered in bad faith. Since the URS is intended to be complementary of the UDRP and will have similar issues it would be more efficient to address these RPMs in a more cohesive manner.
8. With respect to the URS and UDRP, The European Parliament, the Council of the European Union, and the European Commission have enacted a new data privacy regulation in 2016 entitled the General Data Protection Regulation (GDPR) that will likely adversely impact the ability of the URS and UDRP to function as these policies are currently implemented. The new regulation is scheduled to take effect on May 25, 2018. Among other ways, GDRP may adversely impact the URS and the UDRP by:
1. Procedure for UDRP/URS:
1. Possibility that Providers cannot serve the UDRP/URS Complaint if an email address cannot be obtained.
2. Possibility that the Language of the URS proceeding cannot be determined.
2. Procedure for URS:
1. Possibility that the URS provider cannot translate the notice of URS complaint into the predominant language used in the Registrant’s country or territory.
2. Possibility that URS complainants cannot know the language of a possible response.
3. Possibility that URS complainants do not know whether the URS complaint was translated into the correct language(s) and that proceedings were administered correctly.
3. UDRP Element 2 / URS:
1. Cannot argue that the registrant is not commonly known by the Domain Name at issue.
2. Cannot determine if the registrant has been authorized by the Trademark holder.
3. Cannot determine if the registrant is an authorized reseller of the Trademark holder’s product.
4. Cannot determine on what date the domain name was “registered” by the current domain name holder if it was transferred to this current domain name holder. (requires being able to see the WhoIs history). This could prevent baseless claims from being filed.
4. UDRP Element 3:
1. Cannot determine if registrant has engaged in a pattern of bad faith registrations. Rule 4(b)(ii).
2. Cannot determine if registrant has been found to engage other unlawful actions, such as malware, phishing or scams.
3. Cannot determine if the registrant is in a particular geographic region to be better assess the possibility of legitimate co-existence (thus possibly even foregoing the filing of a case, and response, in the first place).
4. Cannot determine if the registrant is technically a “competitor” that has registered the Domain Name for the purpose of disrupting the business of the Complainant. Rule 4(b)(iii).
9. Due to GDPR compliance issues, ICANN org is considering substantial changes to WhoIs, and has published an Interim Model for GDPR Compliance, e.g. "The CookBook" which proposes to significantly limit the public display of WhoIs data after May 25, 2018." see: https://www.icann.org/en/system/files/files/gdpr-compliance-interim-model- 08mar18-en.pdf. Aggressive current timelines for tiered access to WhoIs data that might provide some fix for the above issues is December 2018. There is no question that GDPR will require policy consideration relating to the URS and UDRP that cannot be predicted and analyzed at this time.
Recommendation:
1. The RPM Working Group finishes its already well-advanced work and issues an Initial Report on the PDDRP, Trademark Clearinghouse, Sunrise, and Trademark Claims Notices for public comment.
2. After comments have been analyzed for those elements, that the RPM Working Group finishes its work and issues its Final Report on the PDDRP, Trademark Clearinghouse, Sunrise, and Trademark Claims Notices.
3. The RPM Working Group issues a request through its Appointed Working Group Liaison to the GNSO Council to amend the RPM Working Group Charter as follows:
1. shift the work related to the URS to Phase II and, if necessary, pause starting Phase II until after the permanent impacts of GDPR on the URS and UDRP are known;
2. provide clear guidance to the WG on the issues that (i) must be addressed, (ii) may be addressed, and (iii) may not be addressed;
3. provide clear guidance on the scope of the review of the URS and UDRP.
Although a separate issue from this proposal, it is also recommended that Phase II Working Group has one chairperson with appropriate neutrality and experience in PDP consensus building and parliamentary procedures. Assistance to the chair can be provided by utilizing vice-chairs and well-structured sub-teams.
*[image: Image removed by sender. http://www.nelsonmullins.com/img/ecard-logo.png]*
*JOHN C. MCELWAINE **PARTNER*
*john.mcelwaine@nelsonmullins.com <john.mcelwaine@nelsonmullins.com>*
*LIBERTY CENTER | SUITE 600 <https://maps.google.com/?q=SUITE+600%0D%0A+%0D%0A+151+MEETING+STREET%C2%A0%7C%C2%A0CHARLESTON,%C2%A0SC%C2%A029401&entry=gmail&source=g>*
*151 MEETING STREET | CHARLESTON, SC 29401 <https://maps.google.com/?q=SUITE+600%0D%0A+%0D%0A+151+MEETING+STREET%C2%A0%7C%C2%A0CHARLESTON,%C2%A0SC%C2%A029401&entry=gmail&source=g>*
*T** 843.534.4302 **F** 843.722.8700 *
*101 CONSTITUTION AVENUE, NW | SUITE 900 <https://maps.google.com/?q=101+CONSTITUTION+AVENUE,+NW%C2%A0%7C%C2%A0SUITE+900+%0D%0A+WASHINGTON,+D.C.,%C2%A0%C2%A020001&entry=gmail&source=g>*
*WASHINGTON, D.C., 20001 <https://maps.google.com/?q=101+CONSTITUTION+AVENUE,+NW%C2%A0%7C%C2%A0SUITE+900+%0D%0A+WASHINGTON,+D.C.,%C2%A0%C2%A020001&entry=gmail&source=g>*
*T** 202.689.2939 **F** 202.689.2862 *
*NELSONMULLINS.COM <http://www.nelsonmullins.com/> VCARD <http://www.nelsonmullins.com/people/john-mcelwaine/vcard> VIEW BIO <http://www.nelsonmullins.com/people/john-mcelwaine>*
Confidentiality Notice
This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure.
If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message.
_______________________________________________ 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
_______________________________________________ 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
[image: Colorful silhouette of a woman’s head, representing the theme of the World IP Day campaign.] <http://www.wipo.int/ip-outreach/en/ipday/index.html?utm_source=wipomail&utm_...>
*Powering change: Women in innovation and creativity World Intellectual Property Day 2018 April 26 *wipo.int/ipday <http://www.wipo.int/ip-outreach/en/ipday/index.html?utm_source=wipomail&utm_...> #worldipday
World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
