Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016
Hi all, Just to quickly clarify something from this discussion – while I agree that a “class action” PDDRP is probably not advisable, as that term is understood in the context of a formal litigation, it seems to be a slightly different concept from enabling multiple brand owners to jointly file a PDDRP complaint in cases where each of those brand owners’ marks are involved in the registry’s complained-of behavior. In the latter case, allowing multiple brand owners to jointly file a PDDRP complaint would help defray the cost of the complaint for each individual participating brand owner and improve efficiency (insofar as this would streamline multiple potential complaints by various brand owners into a single complaint), which we previously identified as possible hurdles to using the PDDRP. The PDDRP and providers’ supplemental rules do not appear to presently envision joint complaints. The PDDRP currently provides that “The parties to the dispute will be the trademark holder and the gTLD registry operator.” See ICANN, PDDRP § 1 (June 4, 2012). It further provides, “The mandatory administrative proceeding will commence when a third-party complainant (“Complainant”) has filed a Complaint with a Provider asserting that the Complainant is a trademark holder (which may include either registered or unregistered marks as defined below) claiming that one or more of its marks have been infringed, and thereby the Complainant has been harmed, by the registry operator’s manner of operation or use of the gTLD.” See id. § 5.1. The PDDRP itself briefly references “consolidation” without any additional context, stating “In the case where either party requests a three-member Expert Panel, each party (or each side of the dispute if a matter has been consolidated) shall select an Expert and the two selected Experts shall select the third Expert Panel member.” See id. § 13.3 (emphasis added). Each of the individual PDDRP providers’ supplemental rules envisage consolidation of complaints under certain circumstances (each set of supplemental rules differs somewhat in that regard), but not the filing of a joint complaint in the first instance. For example, the World Intellectual Property Organization (WIPO) allows itself the discretion to consolidate complaints against the same registry operator, provided all parties agree. See WIPO, Supplemental Rules for Trademark PDDRP<http://newgtlds.icann.org/en/applicants/agb/pddrp-rules-15oct13-en.pdf> § 12 (Feb. 20, 2014). The National Arbitration Forum PDDRP Supplemental Rules discuss consolidation of complaints between the same parties, but again it is not clear that these consolidation rules could be used to file a joint complaint by multiple individual trademark owner complainants. See National Arbitration Forum, The Forum’s Supplemental Rules to ICANN’s Trademark Post-Delegation Dispute Resolution Procedure and Rules<http://www.adrforum.com/resources/gTLD/Supplemental%20Rules-PDDRP.pdf> § 8 (Oct. 1, 2013). The Asian Domain Name Dispute Resolution Centre (ADNDRC) appears to have similar consolidation rules, although like the other providers’ rules, these also appear to consider the broader possibility that complaints of multiple different trademark owner complainants could be consolidated or joined if they are pending against the same registry operator. See ADNDRC, Supplemental Rules to the ICANN Trademark PDDRP<https://www.adndrc.org/mten/img/pdf/Supplemental_Rules_TMPDDRP_10-03-2014.pd...> § 10 (Mar. 10, 2014). Although the providers’ supplemental rules enable consolidation of cases post-filing, they do not provide for the kind of joint complaint envisaged above. Thus, the PDDRP itself, or the PDDRP rules or supplemental rules, would need to be further modified to accommodate a true joint complaint as opposed to mere consolidation of complaints. Of course, a joint proceeding would still need to be limited just to considering the specific trademarks at issue in the joint complaint to avoid a scenario where a small subset of aggrieved brand owners is acting as a “class representative” on behalf of other brand owners who are not directly involved (to avoid the concerns mentioned by Paul). In short, I think brand owners should have the ability under the PDDRP to file a joint complaint, but agree that it should be limited as described above and not be akin to a “class action.” Looking forward to our call later today. Best regards, Brian Brian J. Winterfeldt Co-Head of Global Brand Management and Internet Practice Mayer Brown LLP bwinterfeldt@mayerbrown.com<mailto:bwinterfeldt@mayerbrown.com> 1999 K Street, NW Washington, DC 20006-1101 202.263.3284 direct dial 202.830.0330 fax 1221 Avenue of the Americas New York, New York 10020-1001 212.506.2345 direct dial From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Petter Rindforth Sent: Sunday, July 24, 2016 8:33 AM To: Paul@law.es<mailto:Paul@law.es> ZIMBRA Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 Hi All, I echo on the support for mediation. And, of course, independently of which party that has requested mediation, it must be accepted by the other party (as in all normal mediation procedures). The mediation part must be confidential. If it fails, the “arbitration part” of the dispute shall not be handled by the same panelist that dealt with the mediation and the documents & comments filed through the mediation phase shall not be available for the panelist/s handling the full PDDRP. As to Paul’s comments on evidence: I don’t think any panelists, independently of the dispute resolution policy, accept a simple statement from the complainant that “we have trademark rights”, or accept “evidence” of that just in the form of a list of protected trademarks. Even in cases where the domain holder does not reply, you will lose your case if you cannot prove your trademark rights with further documentation, such a copies of valid Certificate of registrations, etc. Best, Petter -- Petter Rindforth, LL M Fenix Legal KB Stureplan 4c, 4tr 114 35 Stockholm Sweden Fax: +46(0)8-4631010 Direct phone: +46(0)702-369360 E-mail: petter.rindforth@fenixlegal.eu<mailto:petter.rindforth@fenixlegal.eu> www.fenixlegal.eu<http://www.fenixlegal.eu> NOTICE This e-mail message is intended solely for the individual or individuals to whom it is addressed. It may contain confidential attorney-client privileged information and attorney work product. If the reader of this message is not the intended recipient, you are requested not to read, copy or distribute it or any of the information it contains. Please delete it immediately and notify us by return e-mail. Fenix Legal KB, Sweden, www.fenixlegal.eu<http://www.fenixlegal.eu> Thank you 23 juli 2016 20:40:33 +02:00, skrev Paul@law.es<mailto:Paul@law.es> ZIMBRA <paul@law.es<mailto:paul@law.es>>: I agree with Darcy that we are trying to fixed something that no one has said was broken. I strongly favor asking registries for their input (have they even received complaints, etc.). I also strongly favor asking trademark holders if they have any instance of issues. Otherwise I suggest leaving this alone. I am in favor of mediation. My only issue is my experience shows that 90% of complaints are not serious or are seeking opportunistic settlement. As much as I like to avoid costs, it is important that complaints provide a formal complaint WITH EVIDENCE. I don't care how many pages it is. The idea is to require seriousness and avoid fishing expeditions. This can be accomplished. Y a rule that says if mediation fails the complaint filed will be the complaint for the dispute with any amendment being subject to th discretion of the arbitrators (and not favored). The response in turn should be formal and with evidence. This prevents gamesmanship by respondent. The law of jurisdiction MUST be established. We need to eliminate the convent of a "universal" law. Paul Keating On Fri, Jul 22, 2016 at 6:42 PM, Paul McGrady <policy@paulmcgrady.com<mailto:policy@paulmcgrady.com>> wrote: Thanks Darcy. I agree that mediation before complaint is a good idea and that the policy should require both sides to consent to it. I think instead of a skeletal complaint, the aggrieved party should do a simple “mediation statement” (which is the normal thing) and then the registry could do a reply statement. I suggest we limit pages to no more than 10 so that this doesn’t become proxy litigation. The mediation (including the statements) should be confidential – in other words nothing shared in mediation while pursuing settlement should be used later by the parties if the complaint goes forward. As for “class actions” I also agree with you on that. Not only do I not think they are feasible in this setting, I will invoke the highest authority on Earth to rebut the entire idea, namely Jimmy Buffett, and simply sayas a brand owner “I don’t want other people [people’s lawyers] thinking for me.” Could you imagine the disaster if a brand owner filed a complaint for abuses of its mark only to learn that a “class action” included them and was already lost? It would be Heck on Earth (especially for the poor law firm that “done it”). Yikes. While I understand the desire for efficiency, there is nothing keeping unhappy brand owners from filing a joint complaint to which they consent in advance. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Darcy Southwell Sent: Friday, July 22, 2016 4:38 PM To: Mary Wong; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 I have to admit I’m struggling with how to evaluate the effectiveness of a policy that’s never been used ~ like we’re proposing solutions for unidentified problems. I don’t want to suggest that we identify and detail all possible use cases and apply the PDDRP to identify flaws. But when we consider the existing Standards (§6) and Burden of Proof (§17), do we have any concrete examples of when the PDDRP maybe should have been used that would indicate needed improvements? Or maybe the better question is … do we have specific examples of registry behavior that doesn’t meet existing standards but is nonetheless concerning when it comes to profiting from sale of infringing domains? As for a couple of issues discussed on the list and at our last meeting: Mediation Mediation is often a successful way for parties to reach a workable resolution, and I support the concept of non-binding mediation as an option with the PDDRP. If the PDDRP were to allow for the filing of “skeletal” complaints, do we intend that the filing party is the sole determiner of whether the complaint goes to mediation? It seems that the mediation option should be open to both parties to request. In the end, both parties need to be amenable to mediation for it ever have an effective outcome. Class Actions The term “class action” seems problematic because of how it is used in many judicial systems. If what we’re trying to get to is a method for trademark owner to identify prolific abuses by a registry and to then have a more aggressive method for pursuing the registry, is there instead a way to build (1) public disclosure of filings and decisions (the way UDRPs work) and (2) place a burden on panel reviewers to rely on the precedence of prior findings (unlike the UDRP) and take those into account when determining remedies? Thanks, Darcy From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Mary Wong Date: Friday, July 22, 2016 at 10:22 AM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" Subject: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 Dear all, Please find attached an updated document containing issues, concerns and suggestions received to date relating to the TM-PDDRP, the first version of which had been circulated on 19 July to the Working Group (see message below). Both documents have also been uploaded to the Working Group wiki space for your convenience: https://community.icann.org/x/9wWbAw. The updated document contains summaries of the discussion during the last call relating to the suggested options for mediation and class action (see the boxed text on Page 2 and Page 4, respectively). Please review the updates and continue discussion of the suggestions on this mailing list (NOTE: the text summaries do not attempt to replicate or summarize the full discussions that took place on the call – please refer to the meeting transcript, recording and Adobe Connect chat transcript for context and additional explanations offered by participating Members on these topics: https://community.icann.org/x/9wWbAw). For the next call, we anticipate that Members will discuss the issues, concerns and suggestions raised in relation to the ease/difficulty of access to/use of the TM-PDDRP (currently listed in the document under Section A.III on Pages 4-6). Members are also requested to continue to send in your thoughts and comments regarding additional questions we can raise with ICANN Compliance, and the advisability/need to develop “use cases” for the TM-PDDRP (see Page 7). Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889<tel:%2B1-603-5744889> From: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> Date: Tuesday, July 19, 2016 at 18:22 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: For review & discussion: summary document on TM-PDDRP issues, concerns and suggestions Dear all, Further to the proposed agenda (below), please find attached a document that: (1) compiles the issues, concerns, suggestions received and email discussions to date relating to the TM-PDDRP stemming from the WG’s deliberations up to and in Helsinki; and (2) contains responses received from several WG members regarding the possibility of developing “use cases” and other additional suggestions. We apologize for the late notice, but hopefully Members will be able to review the document even briefly before the WG call tomorrow (Wednesday). Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889<tel:%2B1-603-5744889> From: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> Date: Tuesday, July 19, 2016 at 14:56 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Proposed agenda for Working Group meeting of 20 July Dear all, The proposed agenda for the next Working Group call, scheduled for Wednesday 20 July at 1600 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only) and updates to Statements of Interest 2. Discuss identified issues and concerns regarding the TM-PDDRP, including Working Group members’ responses on possible changes to, and things not to change about, the TM-PDDRP 3. Discuss follow up questions for ICANN Compliance and TM-PDDRP Providers, including suggestion for developing use cases 4. Agree on list of additional issues/concerns with the TM-PDDRP based on WG discussions to date 5. Next steps/next meeting A document setting out a framework for the discussion of issues and listing Working Group members’ suggestions will be sent out shortly. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889<tel:%2B1-603-5744889> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg __________________________________________________________________________ This email and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed. 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I agree with Brian’s point here. J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336 (tel), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of "Winterfeldt, Brian J." <BWinterfeldt@mayerbrown.com<mailto:BWinterfeldt@mayerbrown.com>> Date: Wednesday, July 27, 2016 at 10:58 AM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 Hi all, Just to quickly clarify something from this discussion – while I agree that a “class action” PDDRP is probably not advisable, as that term is understood in the context of a formal litigation, it seems to be a slightly different concept from enabling multiple brand owners to jointly file a PDDRP complaint in cases where each of those brand owners’ marks are involved in the registry’s complained-of behavior. In the latter case, allowing multiple brand owners to jointly file a PDDRP complaint would help defray the cost of the complaint for each individual participating brand owner and improve efficiency (insofar as this would streamline multiple potential complaints by various brand owners into a single complaint), which we previously identified as possible hurdles to using the PDDRP. The PDDRP and providers’ supplemental rules do not appear to presently envision joint complaints. The PDDRP currently provides that “The parties to the dispute will be the trademark holder and the gTLD registry operator.” See ICANN, PDDRP § 1 (June 4, 2012). It further provides, “The mandatory administrative proceeding will commence when a third-party complainant (“Complainant”) has filed a Complaint with a Provider asserting that the Complainant is a trademark holder (which may include either registered or unregistered marks as defined below) claiming that one or more of its marks have been infringed, and thereby the Complainant has been harmed, by the registry operator’s manner of operation or use of the gTLD.” See id. § 5.1. The PDDRP itself briefly references “consolidation” without any additional context, stating “In the case where either party requests a three-member Expert Panel, each party (or each side of the dispute if a matter has been consolidated) shall select an Expert and the two selected Experts shall select the third Expert Panel member.” See id. § 13.3 (emphasis added). Each of the individual PDDRP providers’ supplemental rules envisage consolidation of complaints under certain circumstances (each set of supplemental rules differs somewhat in that regard), but not the filing of a joint complaint in the first instance. For example, the World Intellectual Property Organization (WIPO) allows itself the discretion to consolidate complaints against the same registry operator, provided all parties agree. See WIPO, Supplemental Rules for Trademark PDDRP<http://newgtlds.icann.org/en/applicants/agb/pddrp-rules-15oct13-en.pdf> § 12 (Feb. 20, 2014). The National Arbitration Forum PDDRP Supplemental Rules discuss consolidation of complaints between the same parties, but again it is not clear that these consolidation rules could be used to file a joint complaint by multiple individual trademark owner complainants. See National Arbitration Forum, The Forum’s Supplemental Rules to ICANN’s Trademark Post-Delegation Dispute Resolution Procedure and Rules<http://www.adrforum.com/resources/gTLD/Supplemental%20Rules-PDDRP.pdf> § 8 (Oct. 1, 2013). The Asian Domain Name Dispute Resolution Centre (ADNDRC) appears to have similar consolidation rules, although like the other providers’ rules, these also appear to consider the broader possibility that complaints of multiple different trademark owner complainants could be consolidated or joined if they are pending against the same registry operator. See ADNDRC, Supplemental Rules to the ICANN Trademark PDDRP<https://www.adndrc.org/mten/img/pdf/Supplemental_Rules_TMPDDRP_10-03-2014.pd...> § 10 (Mar. 10, 2014). Although the providers’ supplemental rules enable consolidation of cases post-filing, they do not provide for the kind of joint complaint envisaged above. Thus, the PDDRP itself, or the PDDRP rules or supplemental rules, would need to be further modified to accommodate a true joint complaint as opposed to mere consolidation of complaints. Of course, a joint proceeding would still need to be limited just to considering the specific trademarks at issue in the joint complaint to avoid a scenario where a small subset of aggrieved brand owners is acting as a “class representative” on behalf of other brand owners who are not directly involved (to avoid the concerns mentioned by Paul). In short, I think brand owners should have the ability under the PDDRP to file a joint complaint, but agree that it should be limited as described above and not be akin to a “class action.” Looking forward to our call later today. Best regards, Brian Brian J. Winterfeldt Co-Head of Global Brand Management and Internet Practice Mayer Brown LLP bwinterfeldt@mayerbrown.com<mailto:bwinterfeldt@mayerbrown.com> 1999 K Street, NW Washington, DC 20006-1101 202.263.3284 direct dial 202.830.0330 fax 1221 Avenue of the Americas New York, New York 10020-1001 212.506.2345 direct dial From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Petter Rindforth Sent: Sunday, July 24, 2016 8:33 AM To: Paul@law.es<mailto:Paul@law.es> ZIMBRA Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 Hi All, I echo on the support for mediation. And, of course, independently of which party that has requested mediation, it must be accepted by the other party (as in all normal mediation procedures). The mediation part must be confidential. If it fails, the “arbitration part” of the dispute shall not be handled by the same panelist that dealt with the mediation and the documents & comments filed through the mediation phase shall not be available for the panelist/s handling the full PDDRP. As to Paul’s comments on evidence: I don’t think any panelists, independently of the dispute resolution policy, accept a simple statement from the complainant that “we have trademark rights”, or accept “evidence” of that just in the form of a list of protected trademarks. Even in cases where the domain holder does not reply, you will lose your case if you cannot prove your trademark rights with further documentation, such a copies of valid Certificate of registrations, etc. Best, Petter -- Petter Rindforth, LL M Fenix Legal KB Stureplan 4c, 4tr 114 35 Stockholm Sweden Fax: +46(0)8-4631010 Direct phone: +46(0)702-369360 E-mail: petter.rindforth@fenixlegal.eu<mailto:petter.rindforth@fenixlegal.eu> www.fenixlegal.eu<http://www.fenixlegal.eu> NOTICE This e-mail message is intended solely for the individual or individuals to whom it is addressed. It may contain confidential attorney-client privileged information and attorney work product. If the reader of this message is not the intended recipient, you are requested not to read, copy or distribute it or any of the information it contains. Please delete it immediately and notify us by return e-mail. Fenix Legal KB, Sweden, www.fenixlegal.eu<http://www.fenixlegal.eu> Thank you 23 juli 2016 20:40:33 +02:00, skrev Paul@law.es<mailto:Paul@law.es> ZIMBRA <paul@law.es<mailto:paul@law.es>>: I agree with Darcy that we are trying to fixed something that no one has said was broken. I strongly favor asking registries for their input (have they even received complaints, etc.). I also strongly favor asking trademark holders if they have any instance of issues. Otherwise I suggest leaving this alone. I am in favor of mediation. My only issue is my experience shows that 90% of complaints are not serious or are seeking opportunistic settlement. As much as I like to avoid costs, it is important that complaints provide a formal complaint WITH EVIDENCE. I don't care how many pages it is. The idea is to require seriousness and avoid fishing expeditions. This can be accomplished. Y a rule that says if mediation fails the complaint filed will be the complaint for the dispute with any amendment being subject to th discretion of the arbitrators (and not favored). The response in turn should be formal and with evidence. This prevents gamesmanship by respondent. The law of jurisdiction MUST be established. We need to eliminate the convent of a "universal" law. Paul Keating On Fri, Jul 22, 2016 at 6:42 PM, Paul McGrady <policy@paulmcgrady.com<mailto:policy@paulmcgrady.com>> wrote: Thanks Darcy. I agree that mediation before complaint is a good idea and that the policy should require both sides to consent to it. I think instead of a skeletal complaint, the aggrieved party should do a simple “mediation statement” (which is the normal thing) and then the registry could do a reply statement. I suggest we limit pages to no more than 10 so that this doesn’t become proxy litigation. The mediation (including the statements) should be confidential – in other words nothing shared in mediation while pursuing settlement should be used later by the parties if the complaint goes forward. As for “class actions” I also agree with you on that. Not only do I not think they are feasible in this setting, I will invoke the highest authority on Earth to rebut the entire idea, namely Jimmy Buffett, and simply sayas a brand owner “I don’t want other people [people’s lawyers] thinking for me.” Could you imagine the disaster if a brand owner filed a complaint for abuses of its mark only to learn that a “class action” included them and was already lost? It would be Heck on Earth (especially for the poor law firm that “done it”). Yikes. While I understand the desire for efficiency, there is nothing keeping unhappy brand owners from filing a joint complaint to which they consent in advance. Best, Paul From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Darcy Southwell Sent: Friday, July 22, 2016 4:38 PM To: Mary Wong; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 I have to admit I’m struggling with how to evaluate the effectiveness of a policy that’s never been used ~ like we’re proposing solutions for unidentified problems. I don’t want to suggest that we identify and detail all possible use cases and apply the PDDRP to identify flaws. But when we consider the existing Standards (§6) and Burden of Proof (§17), do we have any concrete examples of when the PDDRP maybe should have been used that would indicate needed improvements? Or maybe the better question is … do we have specific examples of registry behavior that doesn’t meet existing standards but is nonetheless concerning when it comes to profiting from sale of infringing domains? As for a couple of issues discussed on the list and at our last meeting: Mediation Mediation is often a successful way for parties to reach a workable resolution, and I support the concept of non-binding mediation as an option with the PDDRP. If the PDDRP were to allow for the filing of “skeletal” complaints, do we intend that the filing party is the sole determiner of whether the complaint goes to mediation? It seems that the mediation option should be open to both parties to request. In the end, both parties need to be amenable to mediation for it ever have an effective outcome. Class Actions The term “class action” seems problematic because of how it is used in many judicial systems. If what we’re trying to get to is a method for trademark owner to identify prolific abuses by a registry and to then have a more aggressive method for pursuing the registry, is there instead a way to build (1) public disclosure of filings and decisions (the way UDRPs work) and (2) place a burden on panel reviewers to rely on the precedence of prior findings (unlike the UDRP) and take those into account when determining remedies? Thanks, Darcy From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Mary Wong Date: Friday, July 22, 2016 at 10:22 AM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" Subject: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 Dear all, Please find attached an updated document containing issues, concerns and suggestions received to date relating to the TM-PDDRP, the first version of which had been circulated on 19 July to the Working Group (see message below). Both documents have also been uploaded to the Working Group wiki space for your convenience: https://community.icann.org/x/9wWbAw. The updated document contains summaries of the discussion during the last call relating to the suggested options for mediation and class action (see the boxed text on Page 2 and Page 4, respectively). Please review the updates and continue discussion of the suggestions on this mailing list (NOTE: the text summaries do not attempt to replicate or summarize the full discussions that took place on the call – please refer to the meeting transcript, recording and Adobe Connect chat transcript for context and additional explanations offered by participating Members on these topics: https://community.icann.org/x/9wWbAw). For the next call, we anticipate that Members will discuss the issues, concerns and suggestions raised in relation to the ease/difficulty of access to/use of the TM-PDDRP (currently listed in the document under Section A.III on Pages 4-6). Members are also requested to continue to send in your thoughts and comments regarding additional questions we can raise with ICANN Compliance, and the advisability/need to develop “use cases” for the TM-PDDRP (see Page 7). Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889<tel:%2B1-603-5744889> From: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> Date: Tuesday, July 19, 2016 at 18:22 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: For review & discussion: summary document on TM-PDDRP issues, concerns and suggestions Dear all, Further to the proposed agenda (below), please find attached a document that: (1) compiles the issues, concerns, suggestions received and email discussions to date relating to the TM-PDDRP stemming from the WG’s deliberations up to and in Helsinki; and (2) contains responses received from several WG members regarding the possibility of developing “use cases” and other additional suggestions. We apologize for the late notice, but hopefully Members will be able to review the document even briefly before the WG call tomorrow (Wednesday). Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889<tel:%2B1-603-5744889> From: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> Date: Tuesday, July 19, 2016 at 14:56 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Proposed agenda for Working Group meeting of 20 July Dear all, The proposed agenda for the next Working Group call, scheduled for Wednesday 20 July at 1600 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only) and updates to Statements of Interest 2. Discuss identified issues and concerns regarding the TM-PDDRP, including Working Group members’ responses on possible changes to, and things not to change about, the TM-PDDRP 3. Discuss follow up questions for ICANN Compliance and TM-PDDRP Providers, including suggestion for developing use cases 4. Agree on list of additional issues/concerns with the TM-PDDRP based on WG discussions to date 5. Next steps/next meeting A document setting out a framework for the discussion of issues and listing Working Group members’ suggestions will be sent out shortly. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889<tel:%2B1-603-5744889> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg __________________________________________________________________________ This email and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed. If you have received this email in error please notify the system manager. If you are not the named addressee you should not disseminate, distribute or copy this e-mail. ________________________________ <ACL>
Thanks, Brian and J. Scott. As the Working Group continues to discuss an appropriate term for this concept as well as additional details that may be needed, an immediate Action Item the group can also consider is asking the Providers to clarify whether the concept of consolidation in each of their Supplemental Rules: (1) extends to the filing of joint complaints by different trademark holders against the same registry (or not); and (2) applies only to a situation where the same complainant files multiple complaints against the same registry (or more broadly). Seeking such clarification could then allow the Working Group to consider – assuming there is consensus that such an option should be added – whether this would involve an amendment to the Procedure and/or the Rules, or if a clarifying guidance document would be more appropriate. Staff notes at this point for the record that there has not yet been a consensus call on the advisability of adding such an option. Cheers Mary From: <gnso-rpm-wg-bounces@icann.org> on behalf of "J. Scott Evans" <jsevans@adobe.com> Date: Wednesday, July 27, 2016 at 16:41 To: "Winterfeldt, Brian J." <BWinterfeldt@mayerbrown.com>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 I agree with Brian’s point here. J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336 (tel), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of "Winterfeldt, Brian J." <BWinterfeldt@mayerbrown.com<mailto:BWinterfeldt@mayerbrown.com>> Date: Wednesday, July 27, 2016 at 10:58 AM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 Hi all, Just to quickly clarify something from this discussion – while I agree that a “class action” PDDRP is probably not advisable, as that term is understood in the context of a formal litigation, it seems to be a slightly different concept from enabling multiple brand owners to jointly file a PDDRP complaint in cases where each of those brand owners’ marks are involved in the registry’s complained-of behavior. In the latter case, allowing multiple brand owners to jointly file a PDDRP complaint would help defray the cost of the complaint for each individual participating brand owner and improve efficiency (insofar as this would streamline multiple potential complaints by various brand owners into a single complaint), which we previously identified as possible hurdles to using the PDDRP. The PDDRP and providers’ supplemental rules do not appear to presently envision joint complaints. The PDDRP currently provides that “The parties to the dispute will be the trademark holder and the gTLD registry operator.” See ICANN, PDDRP § 1 (June 4, 2012). It further provides, “The mandatory administrative proceeding will commence when a third-party complainant (“Complainant”) has filed a Complaint with a Provider asserting that the Complainant is a trademark holder (which may include either registered or unregistered marks as defined below) claiming that one or more of its marks have been infringed, and thereby the Complainant has been harmed, by the registry operator’s manner of operation or use of the gTLD.” See id. § 5.1. The PDDRP itself briefly references “consolidation” without any additional context, stating “In the case where either party requests a three-member Expert Panel, each party (or each side of the dispute if a matter has been consolidated) shall select an Expert and the two selected Experts shall select the third Expert Panel member.” See id. § 13.3 (emphasis added). Each of the individual PDDRP providers’ supplemental rules envisage consolidation of complaints under certain circumstances (each set of supplemental rules differs somewhat in that regard), but not the filing of a joint complaint in the first instance. For example, the World Intellectual Property Organization (WIPO) allows itself the discretion to consolidate complaints against the same registry operator, provided all parties agree. See WIPO, Supplemental Rules for Trademark PDDRP<http://newgtlds.icann.org/en/applicants/agb/pddrp-rules-15oct13-en.pdf> § 12 (Feb. 20, 2014). The National Arbitration Forum PDDRP Supplemental Rules discuss consolidation of complaints between the same parties, but again it is not clear that these consolidation rules could be used to file a joint complaint by multiple individual trademark owner complainants. See National Arbitration Forum, The Forum’s Supplemental Rules to ICANN’s Trademark Post-Delegation Dispute Resolution Procedure and Rules<http://www.adrforum.com/resources/gTLD/Supplemental%20Rules-PDDRP.pdf> § 8 (Oct. 1, 2013). The Asian Domain Name Dispute Resolution Centre (ADNDRC) appears to have similar consolidation rules, although like the other providers’ rules, these also appear to consider the broader possibility that complaints of multiple different trademark owner complainants could be consolidated or joined if they are pending against the same registry operator. See ADNDRC, Supplemental Rules to the ICANN Trademark PDDRP<https://www.adndrc.org/mten/img/pdf/Supplemental_Rules_TMPDDRP_10-03-2014.pd...> § 10 (Mar. 10, 2014). Although the providers’ supplemental rules enable consolidation of cases post-filing, they do not provide for the kind of joint complaint envisaged above. Thus, the PDDRP itself, or the PDDRP rules or supplemental rules, would need to be further modified to accommodate a true joint complaint as opposed to mere consolidation of complaints. Of course, a joint proceeding would still need to be limited just to considering the specific trademarks at issue in the joint complaint to avoid a scenario where a small subset of aggrieved brand owners is acting as a “class representative” on behalf of other brand owners who are not directly involved (to avoid the concerns mentioned by Paul). In short, I think brand owners should have the ability under the PDDRP to file a joint complaint, but agree that it should be limited as described above and not be akin to a “class action.” Looking forward to our call later today. Best regards, Brian Brian J. Winterfeldt Co-Head of Global Brand Management and Internet Practice Mayer Brown LLP bwinterfeldt@mayerbrown.com<mailto:bwinterfeldt@mayerbrown.com> 1999 K Street, NW Washington, DC 20006-1101 202.263.3284 direct dial 202.830.0330 fax 1221 Avenue of the Americas New York, New York 10020-1001 212.506.2345 direct dial From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Petter Rindforth Sent: Sunday, July 24, 2016 8:33 AM To: Paul@law.es<mailto:Paul@law.es> ZIMBRA Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 Hi All, I echo on the support for mediation. And, of course, independently of which party that has requested mediation, it must be accepted by the other party (as in all normal mediation procedures). The mediation part must be confidential. If it fails, the “arbitration part” of the dispute shall not be handled by the same panelist that dealt with the mediation and the documents & comments filed through the mediation phase shall not be available for the panelist/s handling the full PDDRP. As to Paul’s comments on evidence: I don’t think any panelists, independently of the dispute resolution policy, accept a simple statement from the complainant that “we have trademark rights”, or accept “evidence” of that just in the form of a list of protected trademarks. Even in cases where the domain holder does not reply, you will lose your case if you cannot prove your trademark rights with further documentation, such a copies of valid Certificate of registrations, etc. Best, Petter -- Petter Rindforth, LL M Fenix Legal KB Stureplan 4c, 4tr 114 35 Stockholm Sweden Fax: +46(0)8-4631010 Direct phone: +46(0)702-369360 E-mail: petter.rindforth@fenixlegal.eu<mailto:petter.rindforth@fenixlegal.eu> www.fenixlegal.eu<http://www.fenixlegal.eu> NOTICE This e-mail message is intended solely for the individual or individuals to whom it is addressed. It may contain confidential attorney-client privileged information and attorney work product. If the reader of this message is not the intended recipient, you are requested not to read, copy or distribute it or any of the information it contains. Please delete it immediately and notify us by return e-mail. Fenix Legal KB, Sweden, www.fenixlegal.eu<http://www.fenixlegal.eu> Thank you 23 juli 2016 20:40:33 +02:00, skrev Paul@law.es<mailto:Paul@law.es> ZIMBRA <paul@law.es<mailto:paul@law.es>>: I agree with Darcy that we are trying to fixed something that no one has said was broken. I strongly favor asking registries for their input (have they even received complaints, etc.). I also strongly favor asking trademark holders if they have any instance of issues. Otherwise I suggest leaving this alone. I am in favor of mediation. My only issue is my experience shows that 90% of complaints are not serious or are seeking opportunistic settlement. As much as I like to avoid costs, it is important that complaints provide a formal complaint WITH EVIDENCE. I don't care how many pages it is. The idea is to require seriousness and avoid fishing expeditions. This can be accomplished. Y a rule that says if mediation fails the complaint filed will be the complaint for the dispute with any amendment being subject to th discretion of the arbitrators (and not favored). The response in turn should be formal and with evidence. This prevents gamesmanship by respondent. The law of jurisdiction MUST be established. We need to eliminate the convent of a "universal" law. Paul Keating On Fri, Jul 22, 2016 at 6:42 PM, Paul McGrady <policy@paulmcgrady.com<mailto:policy@paulmcgrady.com>> wrote: Thanks Darcy. I agree that mediation before complaint is a good idea and that the policy should require both sides to consent to it. I think instead of a skeletal complaint, the aggrieved party should do a simple “mediation statement” (which is the normal thing) and then the registry could do a reply statement. I suggest we limit pages to no more than 10 so that this doesn’t become proxy litigation. The mediation (including the statements) should be confidential – in other words nothing shared in mediation while pursuing settlement should be used later by the parties if the complaint goes forward. As for “class actions” I also agree with you on that. Not only do I not think they are feasible in this setting, I will invoke the highest authority on Earth to rebut the entire idea, namely Jimmy Buffett, and simply sayas a brand owner “I don’t want other people [people’s lawyers] thinking for me.” Could you imagine the disaster if a brand owner filed a complaint for abuses of its mark only to learn that a “class action” included them and was already lost? It would be Heck on Earth (especially for the poor law firm that “done it”). Yikes. While I understand the desire for efficiency, there is nothing keeping unhappy brand owners from filing a joint complaint to which they consent in advance. Best, Paul From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Darcy Southwell Sent: Friday, July 22, 2016 4:38 PM To: Mary Wong; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 I have to admit I’m struggling with how to evaluate the effectiveness of a policy that’s never been used ~ like we’re proposing solutions for unidentified problems. I don’t want to suggest that we identify and detail all possible use cases and apply the PDDRP to identify flaws. But when we consider the existing Standards (§6) and Burden of Proof (§17), do we have any concrete examples of when the PDDRP maybe should have been used that would indicate needed improvements? Or maybe the better question is … do we have specific examples of registry behavior that doesn’t meet existing standards but is nonetheless concerning when it comes to profiting from sale of infringing domains? As for a couple of issues discussed on the list and at our last meeting: Mediation Mediation is often a successful way for parties to reach a workable resolution, and I support the concept of non-binding mediation as an option with the PDDRP. If the PDDRP were to allow for the filing of “skeletal” complaints, do we intend that the filing party is the sole determiner of whether the complaint goes to mediation? It seems that the mediation option should be open to both parties to request. In the end, both parties need to be amenable to mediation for it ever have an effective outcome. Class Actions The term “class action” seems problematic because of how it is used in many judicial systems. If what we’re trying to get to is a method for trademark owner to identify prolific abuses by a registry and to then have a more aggressive method for pursuing the registry, is there instead a way to build (1) public disclosure of filings and decisions (the way UDRPs work) and (2) place a burden on panel reviewers to rely on the precedence of prior findings (unlike the UDRP) and take those into account when determining remedies? Thanks, Darcy From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Mary Wong Date: Friday, July 22, 2016 at 10:22 AM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" Subject: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 Dear all, Please find attached an updated document containing issues, concerns and suggestions received to date relating to the TM-PDDRP, the first version of which had been circulated on 19 July to the Working Group (see message below). Both documents have also been uploaded to the Working Group wiki space for your convenience: https://community.icann.org/x/9wWbAw. The updated document contains summaries of the discussion during the last call relating to the suggested options for mediation and class action (see the boxed text on Page 2 and Page 4, respectively). Please review the updates and continue discussion of the suggestions on this mailing list (NOTE: the text summaries do not attempt to replicate or summarize the full discussions that took place on the call – please refer to the meeting transcript, recording and Adobe Connect chat transcript for context and additional explanations offered by participating Members on these topics: https://community.icann.org/x/9wWbAw). For the next call, we anticipate that Members will discuss the issues, concerns and suggestions raised in relation to the ease/difficulty of access to/use of the TM-PDDRP (currently listed in the document under Section A.III on Pages 4-6). Members are also requested to continue to send in your thoughts and comments regarding additional questions we can raise with ICANN Compliance, and the advisability/need to develop “use cases” for the TM-PDDRP (see Page 7). Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889<tel:%2B1-603-5744889> From: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> Date: Tuesday, July 19, 2016 at 18:22 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: For review & discussion: summary document on TM-PDDRP issues, concerns and suggestions Dear all, Further to the proposed agenda (below), please find attached a document that: (1) compiles the issues, concerns, suggestions received and email discussions to date relating to the TM-PDDRP stemming from the WG’s deliberations up to and in Helsinki; and (2) contains responses received from several WG members regarding the possibility of developing “use cases” and other additional suggestions. We apologize for the late notice, but hopefully Members will be able to review the document even briefly before the WG call tomorrow (Wednesday). Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889<tel:%2B1-603-5744889> From: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> Date: Tuesday, July 19, 2016 at 14:56 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Proposed agenda for Working Group meeting of 20 July Dear all, The proposed agenda for the next Working Group call, scheduled for Wednesday 20 July at 1600 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only) and updates to Statements of Interest 2. Discuss identified issues and concerns regarding the TM-PDDRP, including Working Group members’ responses on possible changes to, and things not to change about, the TM-PDDRP 3. Discuss follow up questions for ICANN Compliance and TM-PDDRP Providers, including suggestion for developing use cases 4. Agree on list of additional issues/concerns with the TM-PDDRP based on WG discussions to date 5. Next steps/next meeting A document setting out a framework for the discussion of issues and listing Working Group members’ suggestions will be sent out shortly. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889<tel:%2B1-603-5744889> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg __________________________________________________________________________ This email and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed. If you have received this email in error please notify the system manager. If you are not the named addressee you should not disseminate, distribute or copy this e-mail. ________________________________ <ACL>
Thanks Mary. J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336 (tel), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> Date: Wednesday, July 27, 2016 at 1:50 PM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 Thanks, Brian and J. Scott. As the Working Group continues to discuss an appropriate term for this concept as well as additional details that may be needed, an immediate Action Item the group can also consider is asking the Providers to clarify whether the concept of consolidation in each of their Supplemental Rules: (1) extends to the filing of joint complaints by different trademark holders against the same registry (or not); and (2) applies only to a situation where the same complainant files multiple complaints against the same registry (or more broadly). Seeking such clarification could then allow the Working Group to consider – assuming there is consensus that such an option should be added – whether this would involve an amendment to the Procedure and/or the Rules, or if a clarifying guidance document would be more appropriate. Staff notes at this point for the record that there has not yet been a consensus call on the advisability of adding such an option. Cheers Mary From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>> Date: Wednesday, July 27, 2016 at 16:41 To: "Winterfeldt, Brian J." <BWinterfeldt@mayerbrown.com<mailto:BWinterfeldt@mayerbrown.com>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 I agree with Brian’s point here. J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336 (tel), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of "Winterfeldt, Brian J." <BWinterfeldt@mayerbrown.com<mailto:BWinterfeldt@mayerbrown.com>> Date: Wednesday, July 27, 2016 at 10:58 AM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 Hi all, Just to quickly clarify something from this discussion – while I agree that a “class action” PDDRP is probably not advisable, as that term is understood in the context of a formal litigation, it seems to be a slightly different concept from enabling multiple brand owners to jointly file a PDDRP complaint in cases where each of those brand owners’ marks are involved in the registry’s complained-of behavior. In the latter case, allowing multiple brand owners to jointly file a PDDRP complaint would help defray the cost of the complaint for each individual participating brand owner and improve efficiency (insofar as this would streamline multiple potential complaints by various brand owners into a single complaint), which we previously identified as possible hurdles to using the PDDRP. The PDDRP and providers’ supplemental rules do not appear to presently envision joint complaints. The PDDRP currently provides that “The parties to the dispute will be the trademark holder and the gTLD registry operator.” See ICANN, PDDRP § 1 (June 4, 2012). It further provides, “The mandatory administrative proceeding will commence when a third-party complainant (“Complainant”) has filed a Complaint with a Provider asserting that the Complainant is a trademark holder (which may include either registered or unregistered marks as defined below) claiming that one or more of its marks have been infringed, and thereby the Complainant has been harmed, by the registry operator’s manner of operation or use of the gTLD.” See id. § 5.1. The PDDRP itself briefly references “consolidation” without any additional context, stating “In the case where either party requests a three-member Expert Panel, each party (or each side of the dispute if a matter has been consolidated) shall select an Expert and the two selected Experts shall select the third Expert Panel member.” See id. § 13.3 (emphasis added). Each of the individual PDDRP providers’ supplemental rules envisage consolidation of complaints under certain circumstances (each set of supplemental rules differs somewhat in that regard), but not the filing of a joint complaint in the first instance. For example, the World Intellectual Property Organization (WIPO) allows itself the discretion to consolidate complaints against the same registry operator, provided all parties agree. See WIPO, Supplemental Rules for Trademark PDDRP<http://newgtlds.icann.org/en/applicants/agb/pddrp-rules-15oct13-en.pdf> § 12 (Feb. 20, 2014). The National Arbitration Forum PDDRP Supplemental Rules discuss consolidation of complaints between the same parties, but again it is not clear that these consolidation rules could be used to file a joint complaint by multiple individual trademark owner complainants. See National Arbitration Forum, The Forum’s Supplemental Rules to ICANN’s Trademark Post-Delegation Dispute Resolution Procedure and Rules<http://www.adrforum.com/resources/gTLD/Supplemental%20Rules-PDDRP.pdf> § 8 (Oct. 1, 2013). The Asian Domain Name Dispute Resolution Centre (ADNDRC) appears to have similar consolidation rules, although like the other providers’ rules, these also appear to consider the broader possibility that complaints of multiple different trademark owner complainants could be consolidated or joined if they are pending against the same registry operator. See ADNDRC, Supplemental Rules to the ICANN Trademark PDDRP<https://www.adndrc.org/mten/img/pdf/Supplemental_Rules_TMPDDRP_10-03-2014.pd...> § 10 (Mar. 10, 2014). Although the providers’ supplemental rules enable consolidation of cases post-filing, they do not provide for the kind of joint complaint envisaged above. Thus, the PDDRP itself, or the PDDRP rules or supplemental rules, would need to be further modified to accommodate a true joint complaint as opposed to mere consolidation of complaints. Of course, a joint proceeding would still need to be limited just to considering the specific trademarks at issue in the joint complaint to avoid a scenario where a small subset of aggrieved brand owners is acting as a “class representative” on behalf of other brand owners who are not directly involved (to avoid the concerns mentioned by Paul). In short, I think brand owners should have the ability under the PDDRP to file a joint complaint, but agree that it should be limited as described above and not be akin to a “class action.” Looking forward to our call later today. Best regards, Brian Brian J. Winterfeldt Co-Head of Global Brand Management and Internet Practice Mayer Brown LLP bwinterfeldt@mayerbrown.com<mailto:bwinterfeldt@mayerbrown.com> 1999 K Street, NW Washington, DC 20006-1101 202.263.3284 direct dial 202.830.0330 fax 1221 Avenue of the Americas New York, New York 10020-1001 212.506.2345 direct dial From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Petter Rindforth Sent: Sunday, July 24, 2016 8:33 AM To: Paul@law.es<mailto:Paul@law.es> ZIMBRA Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 Hi All, I echo on the support for mediation. And, of course, independently of which party that has requested mediation, it must be accepted by the other party (as in all normal mediation procedures). The mediation part must be confidential. If it fails, the “arbitration part” of the dispute shall not be handled by the same panelist that dealt with the mediation and the documents & comments filed through the mediation phase shall not be available for the panelist/s handling the full PDDRP. As to Paul’s comments on evidence: I don’t think any panelists, independently of the dispute resolution policy, accept a simple statement from the complainant that “we have trademark rights”, or accept “evidence” of that just in the form of a list of protected trademarks. Even in cases where the domain holder does not reply, you will lose your case if you cannot prove your trademark rights with further documentation, such a copies of valid Certificate of registrations, etc. Best, Petter -- Petter Rindforth, LL M Fenix Legal KB Stureplan 4c, 4tr 114 35 Stockholm Sweden Fax: +46(0)8-4631010 Direct phone: +46(0)702-369360 E-mail: petter.rindforth@fenixlegal.eu<mailto:petter.rindforth@fenixlegal.eu> www.fenixlegal.eu<http://www.fenixlegal.eu> NOTICE This e-mail message is intended solely for the individual or individuals to whom it is addressed. It may contain confidential attorney-client privileged information and attorney work product. If the reader of this message is not the intended recipient, you are requested not to read, copy or distribute it or any of the information it contains. Please delete it immediately and notify us by return e-mail. Fenix Legal KB, Sweden, www.fenixlegal.eu<http://www.fenixlegal.eu> Thank you 23 juli 2016 20:40:33 +02:00, skrev Paul@law.es<mailto:Paul@law.es> ZIMBRA <paul@law.es<mailto:paul@law.es>>: I agree with Darcy that we are trying to fixed something that no one has said was broken. I strongly favor asking registries for their input (have they even received complaints, etc.). I also strongly favor asking trademark holders if they have any instance of issues. Otherwise I suggest leaving this alone. I am in favor of mediation. My only issue is my experience shows that 90% of complaints are not serious or are seeking opportunistic settlement. As much as I like to avoid costs, it is important that complaints provide a formal complaint WITH EVIDENCE. I don't care how many pages it is. The idea is to require seriousness and avoid fishing expeditions. This can be accomplished. Y a rule that says if mediation fails the complaint filed will be the complaint for the dispute with any amendment being subject to th discretion of the arbitrators (and not favored). The response in turn should be formal and with evidence. This prevents gamesmanship by respondent. The law of jurisdiction MUST be established. We need to eliminate the convent of a "universal" law. Paul Keating On Fri, Jul 22, 2016 at 6:42 PM, Paul McGrady <policy@paulmcgrady.com<mailto:policy@paulmcgrady.com>> wrote: Thanks Darcy. I agree that mediation before complaint is a good idea and that the policy should require both sides to consent to it. I think instead of a skeletal complaint, the aggrieved party should do a simple “mediation statement” (which is the normal thing) and then the registry could do a reply statement. I suggest we limit pages to no more than 10 so that this doesn’t become proxy litigation. The mediation (including the statements) should be confidential – in other words nothing shared in mediation while pursuing settlement should be used later by the parties if the complaint goes forward. As for “class actions” I also agree with you on that. Not only do I not think they are feasible in this setting, I will invoke the highest authority on Earth to rebut the entire idea, namely Jimmy Buffett, and simply sayas a brand owner “I don’t want other people [people’s lawyers] thinking for me.” Could you imagine the disaster if a brand owner filed a complaint for abuses of its mark only to learn that a “class action” included them and was already lost? It would be Heck on Earth (especially for the poor law firm that “done it”). Yikes. While I understand the desire for efficiency, there is nothing keeping unhappy brand owners from filing a joint complaint to which they consent in advance. Best, Paul From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Darcy Southwell Sent: Friday, July 22, 2016 4:38 PM To: Mary Wong; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 I have to admit I’m struggling with how to evaluate the effectiveness of a policy that’s never been used ~ like we’re proposing solutions for unidentified problems. I don’t want to suggest that we identify and detail all possible use cases and apply the PDDRP to identify flaws. But when we consider the existing Standards (§6) and Burden of Proof (§17), do we have any concrete examples of when the PDDRP maybe should have been used that would indicate needed improvements? Or maybe the better question is … do we have specific examples of registry behavior that doesn’t meet existing standards but is nonetheless concerning when it comes to profiting from sale of infringing domains? As for a couple of issues discussed on the list and at our last meeting: Mediation Mediation is often a successful way for parties to reach a workable resolution, and I support the concept of non-binding mediation as an option with the PDDRP. If the PDDRP were to allow for the filing of “skeletal” complaints, do we intend that the filing party is the sole determiner of whether the complaint goes to mediation? It seems that the mediation option should be open to both parties to request. In the end, both parties need to be amenable to mediation for it ever have an effective outcome. Class Actions The term “class action” seems problematic because of how it is used in many judicial systems. If what we’re trying to get to is a method for trademark owner to identify prolific abuses by a registry and to then have a more aggressive method for pursuing the registry, is there instead a way to build (1) public disclosure of filings and decisions (the way UDRPs work) and (2) place a burden on panel reviewers to rely on the precedence of prior findings (unlike the UDRP) and take those into account when determining remedies? Thanks, Darcy From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Mary Wong Date: Friday, July 22, 2016 at 10:22 AM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" Subject: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 Dear all, Please find attached an updated document containing issues, concerns and suggestions received to date relating to the TM-PDDRP, the first version of which had been circulated on 19 July to the Working Group (see message below). Both documents have also been uploaded to the Working Group wiki space for your convenience: https://community.icann.org/x/9wWbAw. The updated document contains summaries of the discussion during the last call relating to the suggested options for mediation and class action (see the boxed text on Page 2 and Page 4, respectively). Please review the updates and continue discussion of the suggestions on this mailing list (NOTE: the text summaries do not attempt to replicate or summarize the full discussions that took place on the call – please refer to the meeting transcript, recording and Adobe Connect chat transcript for context and additional explanations offered by participating Members on these topics: https://community.icann.org/x/9wWbAw). For the next call, we anticipate that Members will discuss the issues, concerns and suggestions raised in relation to the ease/difficulty of access to/use of the TM-PDDRP (currently listed in the document under Section A.III on Pages 4-6). Members are also requested to continue to send in your thoughts and comments regarding additional questions we can raise with ICANN Compliance, and the advisability/need to develop “use cases” for the TM-PDDRP (see Page 7). Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889<tel:%2B1-603-5744889> From: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> Date: Tuesday, July 19, 2016 at 18:22 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: For review & discussion: summary document on TM-PDDRP issues, concerns and suggestions Dear all, Further to the proposed agenda (below), please find attached a document that: (1) compiles the issues, concerns, suggestions received and email discussions to date relating to the TM-PDDRP stemming from the WG’s deliberations up to and in Helsinki; and (2) contains responses received from several WG members regarding the possibility of developing “use cases” and other additional suggestions. We apologize for the late notice, but hopefully Members will be able to review the document even briefly before the WG call tomorrow (Wednesday). Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889<tel:%2B1-603-5744889> From: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> Date: Tuesday, July 19, 2016 at 14:56 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Proposed agenda for Working Group meeting of 20 July Dear all, The proposed agenda for the next Working Group call, scheduled for Wednesday 20 July at 1600 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only) and updates to Statements of Interest 2. Discuss identified issues and concerns regarding the TM-PDDRP, including Working Group members’ responses on possible changes to, and things not to change about, the TM-PDDRP 3. Discuss follow up questions for ICANN Compliance and TM-PDDRP Providers, including suggestion for developing use cases 4. Agree on list of additional issues/concerns with the TM-PDDRP based on WG discussions to date 5. Next steps/next meeting A document setting out a framework for the discussion of issues and listing Working Group members’ suggestions will be sent out shortly. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889<tel:%2B1-603-5744889> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg __________________________________________________________________________ This email and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed. If you have received this email in error please notify the system manager. If you are not the named addressee you should not disseminate, distribute or copy this e-mail. ________________________________ <ACL>
Agree with Brian as well. The term "class action" is misleading and has drawn us down some rabbit holes. I think there are two questions here: 1. Cases with multiple plaintiffs. This has two subtopics: (a) joint plaintiffs, and (b) consolidation. 2. Evidence of "pattern or practice" where the evidence involves trademarks owned by entities that are not parties. Greg On Wed, Jul 27, 2016 at 4:52 PM, J. Scott Evans <jsevans@adobe.com> wrote:
Thanks Mary.
*J. Scott Evans* *| Associate General Counsel - Trademarks, Copyright, Domains & Marketing |*
*Adobe *
345 Park Avenue
San Jose, CA 95110 408.536.5336 (tel), 408.709.6162 (cell) jsevans@adobe.com
www.adobe.com
From: <gnso-rpm-wg-bounces@icann.org> on behalf of Mary Wong < mary.wong@icann.org> Date: Wednesday, July 27, 2016 at 1:50 PM
To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016
Thanks, Brian and J. Scott. As the Working Group continues to discuss an appropriate term for this concept as well as additional details that may be needed, an immediate Action Item the group can also consider is asking the Providers to clarify whether the concept of consolidation in each of their Supplemental Rules: (1) extends to the filing of joint complaints by different trademark holders against the same registry (or not); and (2) applies only to a situation where the same complainant files multiple complaints against the same registry (or more broadly).
Seeking such clarification could then allow the Working Group to consider – assuming there is consensus that such an option should be added – whether this would involve an amendment to the Procedure and/or the Rules, or if a clarifying guidance document would be more appropriate. Staff notes at this point for the record that there has not yet been a consensus call on the advisability of adding such an option.
Cheers
Mary
*From: *<gnso-rpm-wg-bounces@icann.org> on behalf of "J. Scott Evans" < jsevans@adobe.com> *Date: *Wednesday, July 27, 2016 at 16:41 *To: *"Winterfeldt, Brian J." <BWinterfeldt@mayerbrown.com>, " gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> *Subject: *Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016
I agree with Brian’s point here.
*J. Scott Evans* *| Associate General Counsel - Trademarks, Copyright, Domains & Marketing |*
*Adobe *
345 Park Avenue
San Jose, CA 95110 408.536.5336 (tel), 408.709.6162 (cell) jsevans@adobe.com
www.adobe.com
*From: *<gnso-rpm-wg-bounces@icann.org> on behalf of "Winterfeldt, Brian J." <BWinterfeldt@mayerbrown.com> *Date: *Wednesday, July 27, 2016 at 10:58 AM *To: *"gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> *Subject: *Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016
Hi all,
Just to quickly clarify something from this discussion – while I agree that a “class action” PDDRP is probably not advisable, as that term is understood in the context of a formal litigation, it seems to be a slightly different concept from enabling multiple brand owners to jointly file a PDDRP complaint in cases where each of those brand owners’ marks are involved in the registry’s complained-of behavior. In the latter case, allowing multiple brand owners to jointly file a PDDRP complaint would help defray the cost of the complaint for each individual participating brand owner and improve efficiency (insofar as this would streamline multiple potential complaints by various brand owners into a single complaint), which we previously identified as possible hurdles to using the PDDRP.
The PDDRP and providers’ supplemental rules do not appear to presently envision joint complaints. The PDDRP currently provides that “The parties to the dispute will be the trademark holder and the gTLD registry operator.” *See *ICANN, PDDRP § 1 (June 4, 2012). It further provides, “The mandatory administrative proceeding will commence when a third-party complainant (“Complainant”) has filed a Complaint with a Provider asserting that the Complainant is a trademark holder (which may include either registered or unregistered marks as defined below) claiming that one or more of its marks have been infringed, and thereby the Complainant has been harmed, by the registry operator’s manner of operation or use of the gTLD.” *See id. *§ 5.1. The PDDRP itself briefly references “consolidation” without any additional context, stating “In the case where either party requests a three-member Expert Panel, each party (*or each side of the dispute if a matter has been consolidated*) shall select an Expert and the two selected Experts shall select the third Expert Panel member.” *See id.* § 13.3 (emphasis added).
Each of the individual PDDRP providers’ supplemental rules envisage *consolidation* of complaints under certain circumstances (each set of supplemental rules differs somewhat in that regard), but not the filing of a joint complaint in the first instance. For example, the World Intellectual Property Organization (WIPO) allows itself the discretion to consolidate complaints against the same registry operator, provided all parties agree. *See *WIPO, Supplemental Rules for Trademark PDDRP <http://newgtlds.icann.org/en/applicants/agb/pddrp-rules-15oct13-en.pdf> § 12 (Feb. 20, 2014). The National Arbitration Forum PDDRP Supplemental Rules discuss consolidation of complaints between the same parties, but again it is not clear that these consolidation rules could be used to file a joint complaint by multiple individual trademark owner complainants. *See *National Arbitration Forum, The Forum’s Supplemental Rules to ICANN’s Trademark Post-Delegation Dispute Resolution Procedure and Rules <http://www.adrforum.com/resources/gTLD/Supplemental%20Rules-PDDRP.pdf> § 8 (Oct. 1, 2013). The Asian Domain Name Dispute Resolution Centre (ADNDRC) appears to have similar consolidation rules, although like the other providers’ rules, these also appear to consider the broader possibility that complaints of multiple different trademark owner complainants could be consolidated or joined if they are pending against the same registry operator. *See *ADNDRC, Supplemental Rules to the ICANN Trademark PDDRP <https://www.adndrc.org/mten/img/pdf/Supplemental_Rules_TMPDDRP_10-03-2014.pd...> § 10 (Mar. 10, 2014).
Although the providers’ supplemental rules enable consolidation of cases post-filing, they do not provide for the kind of joint complaint envisaged above. Thus, the PDDRP itself, or the PDDRP rules or supplemental rules, would need to be further modified to accommodate a true joint complaint as opposed to mere consolidation of complaints.
Of course, a joint proceeding would still need to be limited just to considering the specific trademarks at issue in the joint complaint to avoid a scenario where a small subset of aggrieved brand owners is acting as a “class representative” on behalf of other brand owners who are not directly involved (to avoid the concerns mentioned by Paul). In short, I think brand owners should have the ability under the PDDRP to file a joint complaint, but agree that it should be limited as described above and not be akin to a “class action.”
Looking forward to our call later today.
Best regards,
Brian
*Brian J. Winterfeldt*
Co-Head of Global Brand Management and Internet Practice
Mayer Brown LLP
bwinterfeldt@mayerbrown.com
1999 K Street, NW
Washington, DC 20006-1101
202.263.3284 direct dial
202.830.0330 fax
1221 Avenue of the Americas
New York, New York 10020-1001
212.506.2345 direct dial
*From:*gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *Petter Rindforth *Sent:* Sunday, July 24, 2016 8:33 AM *To:* Paul@law.es ZIMBRA *Cc:* gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016
Hi All,
I echo on the support for mediation. And, of course, independently of which party that has requested mediation, it must be accepted by the other party (as in all normal mediation procedures).
The mediation part must be confidential. If it fails, the “arbitration part” of the dispute shall not be handled by the same panelist that dealt with the mediation and the documents & comments filed through the mediation phase shall not be available for the panelist/s handling the full PDDRP.
As to Paul’s comments on evidence: I don’t think any panelists, independently of the dispute resolution policy, accept a simple statement from the complainant that “we have trademark rights”, or accept “evidence” of that just in the form of a list of protected trademarks. Even in cases where the domain holder does not reply, you will lose your case if you cannot prove your trademark rights with further documentation, such a copies of valid Certificate of registrations, etc.
Best,
Petter
--
Petter Rindforth, LL M
Fenix Legal KB
Stureplan 4c, 4tr
114 35 Stockholm
Sweden
Fax: +46(0)8-4631010
Direct phone: +46(0)702-369360
E-mail: petter.rindforth@fenixlegal.eu
www.fenixlegal.eu
NOTICE
This e-mail message is intended solely for the individual or individuals to whom it is addressed. It may contain confidential attorney-client privileged information and attorney work product. If the reader of this message is not the intended recipient, you are requested not to read, copy or distribute it or any of the information it contains. Please delete it immediately and notify us by return e-mail.
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Thank you
23 juli 2016 20:40:33 +02:00, skrev Paul@law.es ZIMBRA <paul@law.es>:
I agree with Darcy that we are trying to fixed something that no one has said was broken. I strongly favor asking registries for their input (have they even received complaints, etc.). I also strongly favor asking trademark holders if they have any instance of issues. Otherwise I suggest leaving this alone.
I am in favor of mediation. My only issue is my experience shows that 90% of complaints are not serious or are seeking opportunistic settlement.
As much as I like to avoid costs, it is important that complaints provide a formal complaint WITH EVIDENCE. I don't care how many pages it is. The idea is to require seriousness and avoid fishing expeditions. This can be accomplished. Y a rule that says if mediation fails the complaint filed will be the complaint for the dispute with any amendment being subject to th discretion of the arbitrators (and not favored).
The response in turn should be formal and with evidence. This prevents gamesmanship by respondent.
The law of jurisdiction MUST be established. We need to eliminate the convent of a "universal" law.
Paul Keating
On Fri, Jul 22, 2016 at 6:42 PM, Paul McGrady <policy@paulmcgrady.com> wrote:
Thanks Darcy.
I agree that mediation before complaint is a good idea and that the policy should require both sides to consent to it. I think instead of a skeletal complaint, the aggrieved party should do a simple “mediation statement” (which is the normal thing) and then the registry could do a reply statement. I suggest we limit pages to no more than 10 so that this doesn’t become proxy litigation. The mediation (including the statements) should be confidential – in other words nothing shared in mediation while pursuing settlement should be used later by the parties if the complaint goes forward.
As for “class actions” I also agree with you on that. Not only do I not think they are feasible in this setting, I will invoke the highest authority on Earth to rebut the entire idea, namely Jimmy Buffett, and simply sayas a brand owner “I don’t want other people [people’s lawyers] thinking for me.” Could you imagine the disaster if a brand owner filed a complaint for abuses of its mark only to learn that a “class action” included them and was already lost? It would be Heck on Earth (especially for the poor law firm that “done it”). Yikes. While I understand the desire for efficiency, there is nothing keeping unhappy brand owners from filing a joint complaint to which they consent in advance.
Best,
Paul
*From:*gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *Darcy Southwell *Sent:* Friday, July 22, 2016 4:38 PM *To:* Mary Wong; gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016
I have to admit I’m struggling with how to evaluate the effectiveness of a policy that’s never been used ~ like we’re proposing solutions for unidentified problems. I don’t want to suggest that we identify and detail all possible use cases and apply the PDDRP to identify flaws. But when we consider the existing Standards (§6) and Burden of Proof (§17), do we have any concrete examples of when the PDDRP maybe should have been used that would indicate needed improvements?
Or maybe the better question is … do we have specific examples of registry behavior that doesn’t meet existing standards but is nonetheless concerning when it comes to profiting from sale of infringing domains?
As for a couple of issues discussed on the list and at our last meeting:
*Mediation*
Mediation is often a successful way for parties to reach a workable resolution, and I support the concept of non-binding mediation as an option with the PDDRP. If the PDDRP were to allow for the filing of “skeletal” complaints, do we intend that the filing party is the sole determiner of whether the complaint goes to mediation? It seems that the mediation option should be open to both parties to request. In the end, both parties need to be amenable to mediation for it ever have an effective outcome.
*Class Actions*
The term “class action” seems problematic because of how it is used in many judicial systems. If what we’re trying to get to is a method for trademark owner to identify prolific abuses by a registry and to then have a more aggressive method for pursuing the registry, is there instead a way to build (1) public disclosure of filings and decisions (the way UDRPs work) and (2) place a burden on panel reviewers to rely on the precedence of prior findings (unlike the UDRP) and take those into account when determining remedies?
Thanks,
Darcy
*From: *<gnso-rpm-wg-bounces@icann.org> on behalf of Mary Wong *Date: *Friday, July 22, 2016 at 10:22 AM *To: *"gnso-rpm-wg@icann.org" *Subject: *[gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016
Dear all,
Please find attached an updated document containing issues, concerns and suggestions received to date relating to the TM-PDDRP, the first version of which had been circulated on 19 July to the Working Group (see message below). Both documents have also been uploaded to the Working Group wiki space for your convenience: https://community.icann.org/x/9wWbAw.
The updated document contains summaries of the discussion during the last call relating to the suggested options for mediation and class action (see the boxed text on Page 2 and Page 4, respectively). *Please review the updates and continue discussion of the suggestions on this mailing list* (NOTE: the text summaries do not attempt to replicate or summarize the full discussions that took place on the call – please refer to the meeting transcript, recording and Adobe Connect chat transcript for context and additional explanations offered by participating Members on these topics: https://community.icann.org/x/9wWbAw).
For the next call, we anticipate that Members will discuss the issues, concerns and suggestions raised in relation to the ease/difficulty of access to/use of the TM-PDDRP (currently listed in the document under Section A.III on Pages 4-6). Members are also requested to continue to send in your thoughts and comments regarding *additional questions we can raise with ICANN Compliance, and the advisability/need to develop “use cases” for the TM-PDDRP* (see Page 7).
Thanks and cheers
Mary
Mary Wong
Senior Policy Director
Internet Corporation for Assigned Names and Numbers (ICANN)
Email: mary.wong@icann.org
Telephone: +1-603-5744889
*From: *Mary Wong <mary.wong@icann.org> *Date: *Tuesday, July 19, 2016 at 18:22 *To: *"gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> *Subject: *For review & discussion: summary document on TM-PDDRP issues, concerns and suggestions
Dear all,
Further to the proposed agenda (below), please find attached a document that: (1) compiles the issues, concerns, suggestions received and email discussions to date relating to the TM-PDDRP stemming from the WG’s deliberations up to and in Helsinki; and (2) contains responses received from several WG members regarding the possibility of developing “use cases” and other additional suggestions.
We apologize for the late notice, but hopefully Members will be able to review the document even briefly before the WG call tomorrow (Wednesday).
Thanks and cheers
Mary
Mary Wong
Senior Policy Director
Internet Corporation for Assigned Names and Numbers (ICANN)
Email: mary.wong@icann.org
Telephone: +1-603-5744889
*From: *Mary Wong <mary.wong@icann.org> *Date: *Tuesday, July 19, 2016 at 14:56 *To: *"gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> *Subject: *Proposed agenda for Working Group meeting of 20 July
Dear all,
The proposed agenda for the next Working Group call, scheduled for Wednesday 20 July at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only) and updates to Statements of Interest
2. Discuss identified issues and concerns regarding the TM-PDDRP, including Working Group members’ responses on possible changes to, and things not to change about, the TM-PDDRP
3. Discuss follow up questions for ICANN Compliance and TM-PDDRP Providers, including suggestion for developing use cases
4. Agree on list of additional issues/concerns with the TM-PDDRP based on WG discussions to date
5. Next steps/next meeting
A document setting out a framework for the discussion of issues and listing Working Group members’ suggestions will be sent out shortly.
Thanks and cheers
Mary
Mary Wong
Senior Policy Director
Internet Corporation for Assigned Names and Numbers (ICANN)
Email: mary.wong@icann.org
Telephone: +1-603-5744889
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Thank you from me as well! Brian J. Winterfeldt Co-Head of Global Brand Management and Internet Practice Mayer Brown LLP bwinterfeldt@mayerbrown.com<mailto:bwinterfeldt@mayerbrown.com> 1999 K Street, NW<x-apple-data-detectors://2/2> Washington, DC 20006-1101<x-apple-data-detectors://2/2> 202.263.3284<tel:202.263.3284> direct dial 202.830.0330<tel:202.830.0330> fax 1221 Avenue of the Americas<x-apple-data-detectors://3/0> New York, New York 10020-1001<x-apple-data-detectors://3/0> 212.506.2345<tel:212.506.2345> direct dial On Jul 27, 2016, at 3:54 PM, J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> wrote: Thanks Mary. J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336 (tel), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.c<http://www.adobe.c>om From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> Date: Wednesday, July 27, 2016 at 1:50 PM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 Thanks, Brian and J. Scott. As the Working Group continues to discuss an appropriate term for this concept as well as additional details that may be needed, an immediate Action Item the group can also consider is asking the Providers to clarify whether the concept of consolidation in each of their Supplemental Rules: (1) extends to the filing of joint complaints by different trademark holders against the same registry (or not); and (2) applies only to a situation where the same complainant files multiple complaints against the same registry (or more broadly). Seeking such clarification could then allow the Working Group to consider – assuming there is consensus that such an option should be added – whether this would involve an amendment to the Procedure and/or the Rules, or if a clarifying guidance document would be more appropriate. Staff notes at this point for the record that there has not yet been a consensus call on the advisability of adding such an option. Cheers Mary From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>> Date: Wednesday, July 27, 2016 at 16:41 To: "Winterfeldt, Brian J." <BWinterfeldt@mayerbrown.com<mailto:BWinterfeldt@mayerbrown.com>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 I agree with Brian’s point here. J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336 (tel), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com> From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of "Winterfeldt, Brian J." <BWinterfeldt@mayerbrown.com<mailto:BWinterfeldt@mayerbrown.com>> Date: Wednesday, July 27, 2016 at 10:58 AM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 Hi all, Just to quickly clarify something from this discussion – while I agree that a “class action” PDDRP is probably not advisable, as that term is understood in the context of a formal litigation, it seems to be a slightly different concept from enabling multiple brand owners to jointly file a PDDRP complaint in cases where each of those brand owners’ marks are involved in the registry’s complained-of behavior. In the latter case, allowing multiple brand owners to jointly file a PDDRP complaint would help defray the cost of the complaint for each individual participating brand owner and improve efficiency (insofar as this would streamline multiple potential complaints by various brand owners into a single complaint), which we previously identified as possible hurdles to using the PDDRP. The PDDRP and providers’ supplemental rules do not appear to presently envision joint complaints. The PDDRP currently provides that “The parties to the dispute will be the trademark holder and the gTLD registry operator.” See ICANN, PDDRP § 1 (June 4, 2012). It further provides, “The mandatory administrative proceeding will commence when a third-party complainant (“Complainant”) has filed a Complaint with a Provider asserting that the Complainant is a trademark holder (which may include either registered or unregistered marks as defined below) claiming that one or more of its marks have been infringed, and thereby the Complainant has been harmed, by the registry operator’s manner of operation or use of the gTLD.” See id. § 5.1. The PDDRP itself briefly references “consolidation” without any additional context, stating “In the case where either party requests a three-member Expert Panel, each party (or each side of the dispute if a matter has been consolidated) shall select an Expert and the two selected Experts shall select the third Expert Panel member.” See id. § 13.3 (emphasis added). Each of the individual PDDRP providers’ supplemental rules envisage consolidation of complaints under certain circumstances (each set of supplemental rules differs somewhat in that regard), but not the filing of a joint complaint in the first instance. For example, the World Intellectual Property Organization (WIPO) allows itself the discretion to consolidate complaints against the same registry operator, provided all parties agree. See WIPO, Supplemental Rules for Trademark PDDRP<http://newgtlds.icann.org/en/applicants/agb/pddrp-rules-15oct13-en.pdf> § 12 (Feb. 20, 2014). The National Arbitration Forum PDDRP Supplemental Rules discuss consolidation of complaints between the same parties, but again it is not clear that these consolidation rules could be used to file a joint complaint by multiple individual trademark owner complainants. See National Arbitration Forum, The Forum’s Supplemental Rules to ICANN’s Trademark Post-Delegation Dispute Resolution Procedure and Rules<http://www.adrforum.com/resources/gTLD/Supplemental%20Rules-PDDRP.pdf> § 8 (Oct. 1, 2013). The Asian Domain Name Dispute Resolution Centre (ADNDRC) appears to have similar consolidation rules, although like the other providers’ rules, these also appear to consider the broader possibility that complaints of multiple different trademark owner complainants could be consolidated or joined if they are pending against the same registry operator. See ADNDRC, Supplemental Rules to the ICANN Trademark PDDRP<https://www.adndrc.org/mten/img/pdf/Supplemental_Rules_TMPDDRP_10-03-2014.pd...> § 10 (Mar. 10, 2014). Although the providers’ supplemental rules enable consolidation of cases post-filing, they do not provide for the kind of joint complaint envisaged above. Thus, the PDDRP itself, or the PDDRP rules or supplemental rules, would need to be further modified to accommodate a true joint complaint as opposed to mere consolidation of complaints. Of course, a joint proceeding would still need to be limited just to considering the specific trademarks at issue in the joint complaint to avoid a scenario where a small subset of aggrieved brand owners is acting as a “class representative” on behalf of other brand owners who are not directly involved (to avoid the concerns mentioned by Paul). In short, I think brand owners should have the ability under the PDDRP to file a joint complaint, but agree that it should be limited as described above and not be akin to a “class action.” Looking forward to our call later today. Best regards, Brian Brian J. Winterfeldt Co-Head of Global Brand Management and Internet Practice Mayer Brown LLP bwinterfeldt@mayerbrown.com<mailto:bwinterfeldt@mayerbrown.com> 1999 K Street, NW Washington, DC 20006-1101 202.263.3284 direct dial 202.830.0330 fax 1221 Avenue of the Americas New York, New York 10020-1001 212.506.2345 direct dial From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Petter Rindforth Sent: Sunday, July 24, 2016 8:33 AM To: Paul@law.es<mailto:Paul@law.es> ZIMBRA Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 Hi All, I echo on the support for mediation. And, of course, independently of which party that has requested mediation, it must be accepted by the other party (as in all normal mediation procedures). The mediation part must be confidential. If it fails, the “arbitration part” of the dispute shall not be handled by the same panelist that dealt with the mediation and the documents & comments filed through the mediation phase shall not be available for the panelist/s handling the full PDDRP. As to Paul’s comments on evidence: I don’t think any panelists, independently of the dispute resolution policy, accept a simple statement from the complainant that “we have trademark rights”, or accept “evidence” of that just in the form of a list of protected trademarks. Even in cases where the domain holder does not reply, you will lose your case if you cannot prove your trademark rights with further documentation, such a copies of valid Certificate of registrations, etc. Best, Petter -- Petter Rindforth, LL M Fenix Legal KB Stureplan 4c, 4tr 114 35 Stockholm Sweden Fax: +46(0)8-4631010 Direct phone: +46(0)702-369360 E-mail: petter.rindforth@fenixlegal.eu<mailto:petter.rindforth@fenixlegal.eu> www.fenixlegal.eu<http://www.fenixlegal.eu> NOTICE This e-mail message is intended solely for the individual or individuals to whom it is addressed. It may contain confidential attorney-client privileged information and attorney work product. If the reader of this message is not the intended recipient, you are requested not to read, copy or distribute it or any of the information it contains. Please delete it immediately and notify us by return e-mail. Fenix Legal KB, Sweden, www.fenixlegal.eu<http://www.fenixlegal.eu> Thank you 23 juli 2016 20:40:33 +02:00, skrev Paul@law.es<mailto:Paul@law.es> ZIMBRA <paul@law.es<mailto:paul@law.es>>: I agree with Darcy that we are trying to fixed something that no one has said was broken. I strongly favor asking registries for their input (have they even received complaints, etc.). I also strongly favor asking trademark holders if they have any instance of issues. Otherwise I suggest leaving this alone. I am in favor of mediation. My only issue is my experience shows that 90% of complaints are not serious or are seeking opportunistic settlement. As much as I like to avoid costs, it is important that complaints provide a formal complaint WITH EVIDENCE. I don't care how many pages it is. The idea is to require seriousness and avoid fishing expeditions. This can be accomplished. Y a rule that says if mediation fails the complaint filed will be the complaint for the dispute with any amendment being subject to th discretion of the arbitrators (and not favored). The response in turn should be formal and with evidence. This prevents gamesmanship by respondent. The law of jurisdiction MUST be established. We need to eliminate the convent of a "universal" law. Paul Keating On Fri, Jul 22, 2016 at 6:42 PM, Paul McGrady <policy@paulmcgrady.com<mailto:policy@paulmcgrady.com>> wrote: Thanks Darcy. I agree that mediation before complaint is a good idea and that the policy should require both sides to consent to it. I think instead of a skeletal complaint, the aggrieved party should do a simple “mediation statement” (which is the normal thing) and then the registry could do a reply statement. I suggest we limit pages to no more than 10 so that this doesn’t become proxy litigation. The mediation (including the statements) should be confidential – in other words nothing shared in mediation while pursuing settlement should be used later by the parties if the complaint goes forward. As for “class actions” I also agree with you on that. Not only do I not think they are feasible in this setting, I will invoke the highest authority on Earth to rebut the entire idea, namely Jimmy Buffett, and simply sayas a brand owner “I don’t want other people [people’s lawyers] thinking for me.” Could you imagine the disaster if a brand owner filed a complaint for abuses of its mark only to learn that a “class action” included them and was already lost? It would be Heck on Earth (especially for the poor law firm that “done it”). Yikes. While I understand the desire for efficiency, there is nothing keeping unhappy brand owners from filing a joint complaint to which they consent in advance. Best, Paul From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Darcy Southwell Sent: Friday, July 22, 2016 4:38 PM To: Mary Wong; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 I have to admit I’m struggling with how to evaluate the effectiveness of a policy that’s never been used ~ like we’re proposing solutions for unidentified problems. I don’t want to suggest that we identify and detail all possible use cases and apply the PDDRP to identify flaws. But when we consider the existing Standards (§6) and Burden of Proof (§17), do we have any concrete examples of when the PDDRP maybe should have been used that would indicate needed improvements? Or maybe the better question is … do we have specific examples of registry behavior that doesn’t meet existing standards but is nonetheless concerning when it comes to profiting from sale of infringing domains? As for a couple of issues discussed on the list and at our last meeting: Mediation Mediation is often a successful way for parties to reach a workable resolution, and I support the concept of non-binding mediation as an option with the PDDRP. If the PDDRP were to allow for the filing of “skeletal” complaints, do we intend that the filing party is the sole determiner of whether the complaint goes to mediation? It seems that the mediation option should be open to both parties to request. In the end, both parties need to be amenable to mediation for it ever have an effective outcome. Class Actions The term “class action” seems problematic because of how it is used in many judicial systems. If what we’re trying to get to is a method for trademark owner to identify prolific abuses by a registry and to then have a more aggressive method for pursuing the registry, is there instead a way to build (1) public disclosure of filings and decisions (the way UDRPs work) and (2) place a burden on panel reviewers to rely on the precedence of prior findings (unlike the UDRP) and take those into account when determining remedies? Thanks, Darcy From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Mary Wong Date: Friday, July 22, 2016 at 10:22 AM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" Subject: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 Dear all, Please find attached an updated document containing issues, concerns and suggestions received to date relating to the TM-PDDRP, the first version of which had been circulated on 19 July to the Working Group (see message below). Both documents have also been uploaded to the Working Group wiki space for your convenience: https://community.icann.org/x/9wWbAw. The updated document contains summaries of the discussion during the last call relating to the suggested options for mediation and class action (see the boxed text on Page 2 and Page 4, respectively). Please review the updates and continue discussion of the suggestions on this mailing list (NOTE: the text summaries do not attempt to replicate or summarize the full discussions that took place on the call – please refer to the meeting transcript, recording and Adobe Connect chat transcript for context and additional explanations offered by participating Members on these topics: https://community.icann.org/x/9wWbAw). For the next call, we anticipate that Members will discuss the issues, concerns and suggestions raised in relation to the ease/difficulty of access to/use of the TM-PDDRP (currently listed in the document under Section A.III on Pages 4-6). Members are also requested to continue to send in your thoughts and comments regarding additional questions we can raise with ICANN Compliance, and the advisability/need to develop “use cases” for the TM-PDDRP (see Page 7). Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889<tel:%2B1-603-5744889> From: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> Date: Tuesday, July 19, 2016 at 18:22 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: For review & discussion: summary document on TM-PDDRP issues, concerns and suggestions Dear all, Further to the proposed agenda (below), please find attached a document that: (1) compiles the issues, concerns, suggestions received and email discussions to date relating to the TM-PDDRP stemming from the WG’s deliberations up to and in Helsinki; and (2) contains responses received from several WG members regarding the possibility of developing “use cases” and other additional suggestions. We apologize for the late notice, but hopefully Members will be able to review the document even briefly before the WG call tomorrow (Wednesday). Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889<tel:%2B1-603-5744889> From: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> Date: Tuesday, July 19, 2016 at 14:56 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Proposed agenda for Working Group meeting of 20 July Dear all, The proposed agenda for the next Working Group call, scheduled for Wednesday 20 July at 1600 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only) and updates to Statements of Interest 2. Discuss identified issues and concerns regarding the TM-PDDRP, including Working Group members’ responses on possible changes to, and things not to change about, the TM-PDDRP 3. Discuss follow up questions for ICANN Compliance and TM-PDDRP Providers, including suggestion for developing use cases 4. Agree on list of additional issues/concerns with the TM-PDDRP based on WG discussions to date 5. Next steps/next meeting A document setting out a framework for the discussion of issues and listing Working Group members’ suggestions will be sent out shortly. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889<tel:%2B1-603-5744889> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg __________________________________________________________________________ This email and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed. 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Thanks Brian, and Mary. Very useful information and analysis. Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Wednesday, July 27, 2016 4:50 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 Thanks, Brian and J. Scott. As the Working Group continues to discuss an appropriate term for this concept as well as additional details that may be needed, an immediate Action Item the group can also consider is asking the Providers to clarify whether the concept of consolidation in each of their Supplemental Rules: (1) extends to the filing of joint complaints by different trademark holders against the same registry (or not); and (2) applies only to a situation where the same complainant files multiple complaints against the same registry (or more broadly). Seeking such clarification could then allow the Working Group to consider – assuming there is consensus that such an option should be added – whether this would involve an amendment to the Procedure and/or the Rules, or if a clarifying guidance document would be more appropriate. Staff notes at this point for the record that there has not yet been a consensus call on the advisability of adding such an option. Cheers Mary From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>> Date: Wednesday, July 27, 2016 at 16:41 To: "Winterfeldt, Brian J." <BWinterfeldt@mayerbrown.com<mailto:BWinterfeldt@mayerbrown.com>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 I agree with Brian’s point here. J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336 (tel), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com> From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of "Winterfeldt, Brian J." <BWinterfeldt@mayerbrown.com<mailto:BWinterfeldt@mayerbrown.com>> Date: Wednesday, July 27, 2016 at 10:58 AM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 Hi all, Just to quickly clarify something from this discussion – while I agree that a “class action” PDDRP is probably not advisable, as that term is understood in the context of a formal litigation, it seems to be a slightly different concept from enabling multiple brand owners to jointly file a PDDRP complaint in cases where each of those brand owners’ marks are involved in the registry’s complained-of behavior. In the latter case, allowing multiple brand owners to jointly file a PDDRP complaint would help defray the cost of the complaint for each individual participating brand owner and improve efficiency (insofar as this would streamline multiple potential complaints by various brand owners into a single complaint), which we previously identified as possible hurdles to using the PDDRP. The PDDRP and providers’ supplemental rules do not appear to presently envision joint complaints. The PDDRP currently provides that “The parties to the dispute will be the trademark holder and the gTLD registry operator.” See ICANN, PDDRP § 1 (June 4, 2012). It further provides, “The mandatory administrative proceeding will commence when a third-party complainant (“Complainant”) has filed a Complaint with a Provider asserting that the Complainant is a trademark holder (which may include either registered or unregistered marks as defined below) claiming that one or more of its marks have been infringed, and thereby the Complainant has been harmed, by the registry operator’s manner of operation or use of the gTLD.” See id. § 5.1. The PDDRP itself briefly references “consolidation” without any additional context, stating “In the case where either party requests a three-member Expert Panel, each party (or each side of the dispute if a matter has been consolidated) shall select an Expert and the two selected Experts shall select the third Expert Panel member.” See id. § 13.3 (emphasis added). Each of the individual PDDRP providers’ supplemental rules envisage consolidation of complaints under certain circumstances (each set of supplemental rules differs somewhat in that regard), but not the filing of a joint complaint in the first instance. For example, the World Intellectual Property Organization (WIPO) allows itself the discretion to consolidate complaints against the same registry operator, provided all parties agree. See WIPO, Supplemental Rules for Trademark PDDRP<http://newgtlds.icann.org/en/applicants/agb/pddrp-rules-15oct13-en.pdf> § 12 (Feb. 20, 2014). The National Arbitration Forum PDDRP Supplemental Rules discuss consolidation of complaints between the same parties, but again it is not clear that these consolidation rules could be used to file a joint complaint by multiple individual trademark owner complainants. See National Arbitration Forum, The Forum’s Supplemental Rules to ICANN’s Trademark Post-Delegation Dispute Resolution Procedure and Rules<http://www.adrforum.com/resources/gTLD/Supplemental%20Rules-PDDRP.pdf> § 8 (Oct. 1, 2013). The Asian Domain Name Dispute Resolution Centre (ADNDRC) appears to have similar consolidation rules, although like the other providers’ rules, these also appear to consider the broader possibility that complaints of multiple different trademark owner complainants could be consolidated or joined if they are pending against the same registry operator. See ADNDRC, Supplemental Rules to the ICANN Trademark PDDRP<https://www.adndrc.org/mten/img/pdf/Supplemental_Rules_TMPDDRP_10-03-2014.pd...> § 10 (Mar. 10, 2014). Although the providers’ supplemental rules enable consolidation of cases post-filing, they do not provide for the kind of joint complaint envisaged above. Thus, the PDDRP itself, or the PDDRP rules or supplemental rules, would need to be further modified to accommodate a true joint complaint as opposed to mere consolidation of complaints. Of course, a joint proceeding would still need to be limited just to considering the specific trademarks at issue in the joint complaint to avoid a scenario where a small subset of aggrieved brand owners is acting as a “class representative” on behalf of other brand owners who are not directly involved (to avoid the concerns mentioned by Paul). In short, I think brand owners should have the ability under the PDDRP to file a joint complaint, but agree that it should be limited as described above and not be akin to a “class action.” Looking forward to our call later today. Best regards, Brian Brian J. Winterfeldt Co-Head of Global Brand Management and Internet Practice Mayer Brown LLP bwinterfeldt@mayerbrown.com<mailto:bwinterfeldt@mayerbrown.com> 1999 K Street, NW Washington, DC 20006-1101 202.263.3284 direct dial 202.830.0330 fax 1221 Avenue of the Americas New York, New York 10020-1001 212.506.2345 direct dial From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Petter Rindforth Sent: Sunday, July 24, 2016 8:33 AM To: Paul@law.es<mailto:Paul@law.es> ZIMBRA Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 Hi All, I echo on the support for mediation. And, of course, independently of which party that has requested mediation, it must be accepted by the other party (as in all normal mediation procedures). The mediation part must be confidential. If it fails, the “arbitration part” of the dispute shall not be handled by the same panelist that dealt with the mediation and the documents & comments filed through the mediation phase shall not be available for the panelist/s handling the full PDDRP. As to Paul’s comments on evidence: I don’t think any panelists, independently of the dispute resolution policy, accept a simple statement from the complainant that “we have trademark rights”, or accept “evidence” of that just in the form of a list of protected trademarks. Even in cases where the domain holder does not reply, you will lose your case if you cannot prove your trademark rights with further documentation, such a copies of valid Certificate of registrations, etc. Best, Petter -- Petter Rindforth, LL M Fenix Legal KB Stureplan 4c, 4tr 114 35 Stockholm Sweden Fax: +46(0)8-4631010 Direct phone: +46(0)702-369360 E-mail: petter.rindforth@fenixlegal.eu<mailto:petter.rindforth@fenixlegal.eu> www.fenixlegal.eu<http://www.fenixlegal.eu> NOTICE This e-mail message is intended solely for the individual or individuals to whom it is addressed. It may contain confidential attorney-client privileged information and attorney work product. If the reader of this message is not the intended recipient, you are requested not to read, copy or distribute it or any of the information it contains. Please delete it immediately and notify us by return e-mail. Fenix Legal KB, Sweden, www.fenixlegal.eu<http://www.fenixlegal.eu> Thank you 23 juli 2016 20:40:33 +02:00, skrev Paul@law.es<mailto:Paul@law.es> ZIMBRA <paul@law.es<mailto:paul@law.es>>: I agree with Darcy that we are trying to fixed something that no one has said was broken. I strongly favor asking registries for their input (have they even received complaints, etc.). I also strongly favor asking trademark holders if they have any instance of issues. Otherwise I suggest leaving this alone. I am in favor of mediation. My only issue is my experience shows that 90% of complaints are not serious or are seeking opportunistic settlement. As much as I like to avoid costs, it is important that complaints provide a formal complaint WITH EVIDENCE. I don't care how many pages it is. The idea is to require seriousness and avoid fishing expeditions. This can be accomplished. Y a rule that says if mediation fails the complaint filed will be the complaint for the dispute with any amendment being subject to th discretion of the arbitrators (and not favored). The response in turn should be formal and with evidence. This prevents gamesmanship by respondent. The law of jurisdiction MUST be established. We need to eliminate the convent of a "universal" law. Paul Keating On Fri, Jul 22, 2016 at 6:42 PM, Paul McGrady <policy@paulmcgrady.com<mailto:policy@paulmcgrady.com>> wrote: Thanks Darcy. I agree that mediation before complaint is a good idea and that the policy should require both sides to consent to it. I think instead of a skeletal complaint, the aggrieved party should do a simple “mediation statement” (which is the normal thing) and then the registry could do a reply statement. I suggest we limit pages to no more than 10 so that this doesn’t become proxy litigation. The mediation (including the statements) should be confidential – in other words nothing shared in mediation while pursuing settlement should be used later by the parties if the complaint goes forward. As for “class actions” I also agree with you on that. Not only do I not think they are feasible in this setting, I will invoke the highest authority on Earth to rebut the entire idea, namely Jimmy Buffett, and simply sayas a brand owner “I don’t want other people [people’s lawyers] thinking for me.” Could you imagine the disaster if a brand owner filed a complaint for abuses of its mark only to learn that a “class action” included them and was already lost? It would be Heck on Earth (especially for the poor law firm that “done it”). Yikes. While I understand the desire for efficiency, there is nothing keeping unhappy brand owners from filing a joint complaint to which they consent in advance. Best, Paul From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Darcy Southwell Sent: Friday, July 22, 2016 4:38 PM To: Mary Wong; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 I have to admit I’m struggling with how to evaluate the effectiveness of a policy that’s never been used ~ like we’re proposing solutions for unidentified problems. I don’t want to suggest that we identify and detail all possible use cases and apply the PDDRP to identify flaws. But when we consider the existing Standards (§6) and Burden of Proof (§17), do we have any concrete examples of when the PDDRP maybe should have been used that would indicate needed improvements? Or maybe the better question is … do we have specific examples of registry behavior that doesn’t meet existing standards but is nonetheless concerning when it comes to profiting from sale of infringing domains? As for a couple of issues discussed on the list and at our last meeting: Mediation Mediation is often a successful way for parties to reach a workable resolution, and I support the concept of non-binding mediation as an option with the PDDRP. If the PDDRP were to allow for the filing of “skeletal” complaints, do we intend that the filing party is the sole determiner of whether the complaint goes to mediation? It seems that the mediation option should be open to both parties to request. In the end, both parties need to be amenable to mediation for it ever have an effective outcome. Class Actions The term “class action” seems problematic because of how it is used in many judicial systems. If what we’re trying to get to is a method for trademark owner to identify prolific abuses by a registry and to then have a more aggressive method for pursuing the registry, is there instead a way to build (1) public disclosure of filings and decisions (the way UDRPs work) and (2) place a burden on panel reviewers to rely on the precedence of prior findings (unlike the UDRP) and take those into account when determining remedies? Thanks, Darcy From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Mary Wong Date: Friday, July 22, 2016 at 10:22 AM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" Subject: [gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016 Dear all, Please find attached an updated document containing issues, concerns and suggestions received to date relating to the TM-PDDRP, the first version of which had been circulated on 19 July to the Working Group (see message below). Both documents have also been uploaded to the Working Group wiki space for your convenience: https://community.icann.org/x/9wWbAw. The updated document contains summaries of the discussion during the last call relating to the suggested options for mediation and class action (see the boxed text on Page 2 and Page 4, respectively). Please review the updates and continue discussion of the suggestions on this mailing list (NOTE: the text summaries do not attempt to replicate or summarize the full discussions that took place on the call – please refer to the meeting transcript, recording and Adobe Connect chat transcript for context and additional explanations offered by participating Members on these topics: https://community.icann.org/x/9wWbAw). For the next call, we anticipate that Members will discuss the issues, concerns and suggestions raised in relation to the ease/difficulty of access to/use of the TM-PDDRP (currently listed in the document under Section A.III on Pages 4-6). Members are also requested to continue to send in your thoughts and comments regarding additional questions we can raise with ICANN Compliance, and the advisability/need to develop “use cases” for the TM-PDDRP (see Page 7). Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889<tel:%2B1-603-5744889> From: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> Date: Tuesday, July 19, 2016 at 18:22 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: For review & discussion: summary document on TM-PDDRP issues, concerns and suggestions Dear all, Further to the proposed agenda (below), please find attached a document that: (1) compiles the issues, concerns, suggestions received and email discussions to date relating to the TM-PDDRP stemming from the WG’s deliberations up to and in Helsinki; and (2) contains responses received from several WG members regarding the possibility of developing “use cases” and other additional suggestions. We apologize for the late notice, but hopefully Members will be able to review the document even briefly before the WG call tomorrow (Wednesday). Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889<tel:%2B1-603-5744889> From: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> Date: Tuesday, July 19, 2016 at 14:56 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Proposed agenda for Working Group meeting of 20 July Dear all, The proposed agenda for the next Working Group call, scheduled for Wednesday 20 July at 1600 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only) and updates to Statements of Interest 2. Discuss identified issues and concerns regarding the TM-PDDRP, including Working Group members’ responses on possible changes to, and things not to change about, the TM-PDDRP 3. Discuss follow up questions for ICANN Compliance and TM-PDDRP Providers, including suggestion for developing use cases 4. Agree on list of additional issues/concerns with the TM-PDDRP based on WG discussions to date 5. Next steps/next meeting A document setting out a framework for the discussion of issues and listing Working Group members’ suggestions will be sent out shortly. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889<tel:%2B1-603-5744889> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg __________________________________________________________________________ This email and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed. 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participants (5)
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Greg Shatan -
J. Scott Evans -
Mary Wong -
Phil Corwin -
Winterfeldt, Brian J.