Rebecca: I do not disagree with the notion that we should discuss what a decision should contain, but I don't think we have a consensus as to what that should be in the URS context (given the pricing of URS proceedings). Moreover, a review of the URS cases makes your 13% number and comment of "significant due process and implementation issues" point questionable. At NAF for example, there were 827 cases that that your research assistants reviewed. I found a total of about 103 that your team flagged as having no articulated decisions. I would agree that in 58 cases the decisions lacked details, but in 45 cases there were details that sufficiently let you know what the case was about and the basis of the resolution. I am sure we can argue about these 45 cases and whether they should say more, but ultimately we are really only talking about 58 cases that actually do not have any specific details and just provide the standard and a resolution (although I note that most of these cases involve domain names based on fairly well known marks such as NISSAN, DATSUN, TEXACO, BLOOMBERG, BNP PARIBAS etc., so you pretty much know what trademark was involved.). In all, we are really talking about 7% of the cases that have no details, which is not significant. Again, we can discuss what the decisions should provide, but I don't think we ought to be qualifying this as a "significant" issue per se (as 93% of them have details). There are other issues being considered in the URS review that have better percentage numbers as an issue that are viewed as not being significant per se. The point is that the URS looks to be working appropriately and there are probably some tweaks and refinements needed but this is not sky is falling issue. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Thursday, August 9, 2018 1:22 PM To: Ariel Liang <ariel.liang@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 My apologies for missing the meeting. Comment on the big document: This is currently only covered under Defenses but I would put it for discussion/recommendations under 2. Examiners' Guide/3. Other Issues because it goes beyond defenses: Decisions should contain basic information, including what the trademark is, what the finding of abuse is and/or what findings are on any defenses-13% of decisions did not, and this raises significant due process and implementation issues. ________________________________ From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>> Sent: Wednesday, August 8, 2018 3:56:54 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 Dear All, Please see below the action items and notes captured by staff from the RPM PDP WG call held on 08 August 2018 (17:00-18:30 UTC). Staff have posted to the wiki space the action items and notes. Please note that these will be high-level notes and are not meant as a substitute for the recording. The recording, AC chat, and attendance records are posted on the wiki at: https://community.icann.org/x/uwNpBQ<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_uwNpBQ&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=gcgRms-bmezGQQmwXCqLMQXOdSv3gly_0bWYNSuRlY8&e=> Best Regards, Ariel Ariel Xinyue Liang GNSO Policy Support Specialist Internet Corporation for Assigned Names and Numbers (ICANN) == ACTION ITEMS: * Brian Beckham to send to the WG a WIPO FAQ with regard to "Doe Complaint". * Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. * Staff to recirculate the Super Consolidated URS Topics Table document * WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * WG members to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, during next week's call. Later period to discuss larger policy issues. NOTES: Review Agenda/Statements of Interest * George Kirikos has become a member of the At-Large Community: https://community.icann.org/display/gnsosoi/George+Kirikos+SOI<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_gnsosoi_George-2BKirikos-2BSOI&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=8-YfNNseZ7YW77BHJT9ciEr_I08JQcazWKn1rxNI900&e=> General Comment on the Super Consolidated URS Topics Table Document * The topics in the table were developed by the WG members and deliberated on by the WG & URS Sub Teams. Each Sub Team then did very substantial work on data collection and reviewing what came back. While the actual Sub Team recommendations and suggestions captured in this document are what is intended the WG should discuss - to see if it wishes to develop policy or operational recommendations - discussion over what should be on the actual list of topics should not be reopened unless the WG agrees to do so. We encourage all WG members to review all the previous reports from each Sub Team, and all the documents they worked on. They are linked in this Super Consolidated document (page 2). * The Super Consolidated document is a summary of findings and suggestions by the Sub Teams. The Table does not mean to limit/restrict recommendations from the WG members. If there is any issue overlapping with UDRP, can possibly be carried over to the phase II of the PDP. * Is it possible to add additional topics to the Super Consolidated Table? One WG member said that access to the Courts, for example, is a topic he raised, which isn't in the table. Statute of Limitations, whether URS should apply to legacy gTLDs as a consensus policy, are just a few of the topics not in the table. He brought it up in November 2017 (see: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html ) and it was reflected in a later document. That's a critical issue for registrants. if they don't have access to the courts to challenge a URS decision, then it's a huge denial of their rights. * While the chart is not meant to foreclose further discussion, it is a good faith attempt at capturing the work of the sub teams. The purpose of today's, and likely the next few, calls was to make sure this was an accurate and comprehensive reflection of our discussions so far. That said, WG members should bear in mind that we are seeking consensus, so items which are unlikely to achieve that may not be appropriate to reflect as a recommendation, but could be included in public comments on the Initial Report. Also, before adding items to this chart, we will want to work with staff to see whether such topics was previously discussed, and if so, the level of agreement/consensus. In other words, it is not necessary final, but is equally an opportunity to reintroduce topics which have been discussed, but for which consensus is/was not possible. * Could we create a list of "missing issues" -- a list of issues raised in this call (and calls to follow); we can evaluate the nature and weight of these ideas later. * Regarding the Action Items highlighted in column 3 of the table, Providers ST will do a first pass of the responses from the Providers to the follow-up questions, and then discuss the issues that they identified and proposed suggestions with the full WG. Limited filing period (page 3) * One WG member believes that there should be limitation for filing period to bring URS Complaints, so the domain registered many years ago would not be subject to unfair treatment. He said a registrant who owns a domain for 20 years, for example, shouldn't have to be concerned about a policy that can take their domain down with very short time period to respond. * Other WG members said this was discussed, and did not achieve agreement. That would only even be an option if the trademark pre-dated. This is unlikely to be a situation in practice where a URS was brought because it would probably not be a "slam dunk" case after 20 years unless there had been a change of circumstances. * On the issue of delay and laches - as reported by the Docs Sub Team, the data did not provide any basis for which a policy recommendation should be made. The Providers and Practitioners Sub Teams also did not uncover any specific issues that came to either practitioners' or providers' attention. Administrative Review (page 3-4) * One WG member asked whether ICANN should bring Providers into contractual relationship in order to enforce the URS Rules & Procedures. Another member said it probably need to be ICANN's legal department to enforce the rules & procedure. * URS Providers have MoU with ICANN. Whether it is ICANN's compliance department or legal department to enforce the rules & procedures, it should not be controversial that Providers must abide by them. * An MOU could be legally enforceable, depending on the circumstances. 500-word Complaint limit (page 4-5) * On 500-word Complaint Limit - Practitioners' survey results were split (out of 12, 5 agree it's sufficient, 4 disagree); results included feedback from some that the word limit was too low: "arbitrary and often insufficient" and "should be slightly increased". * One member said he understands and generally agrees with the decision not to suggest an expansion of the word limit, he wonders if there aren't situations (multi- domain challenges, etc.) where a Complainant or Respondent might be given the opportunity to request an expansion. This point can be captured for decisional phase. * Another member suggested that perhaps providers can provide stats on the average word length of complaints, to see how close to the 500 words they are at present. (i.e. a table of distributions, e.g. 10% under 200 words, 20% between 201 and 300, etc.) Amending the Complaint in light of GDPR/Temp Spec (page 5-6) * One member believes that 2-3 days might not be a good rule (e.g. weekends, time to research, etc.). Maybe 5 business days. * WIPO's approach to "doe complaints" has been very helpful and provides some comfort that the lack of true registrant/registrant organization data masked due to GDPR will not result in a deficient complaint for an omitted respondent. * ACTION ITEM: Brian Beckham to send to the WG a WIPO FAQ with regard to "Doe Complaint". * Forum is asking for amendment of the complaint in UDRP - under the rules that's not allowed in URS. SMD Files (page 6-7) * SMD files are used for limited purpose of demonstrating the use. * Recollection is that SMD files would be passed to the Examiners and relay the critical information related to the TM registration. That's why some people are surprised by the limited info SMD files would provide. * The SMD files contain some basic human-readable information, with the rest of the information coded. For example, the trademark itself is human-readable but the applicable Nice classification is coded. A SMD file is used by registries/registrars for validation, and as Greg noted, to demonstrate use. From the TMCH provider: http://www.trademark-clearinghouse.com/help/faq/which-information-does-smd-file-contain<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearinghouse.com_help_faq_which-2Dinformation-2Ddoes-2Dsmd-2Dfile-2Dcontain&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=v3df_qE8Dw_U7YY7_IfhIMgGSxt-a44LbNskorrbTIg&e=> * If the intent of the STI was that the SMD file would be a file summary, that got lost somewhere along the way, way before the SMD file was designed by the TMCH providers. * Rules 3(b)(v) Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use -which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse * It might be useful to look at the spec that they relied on. But the real question is how should the examiner get the relevant data about the Complainant's mark. The SMD file is probably not the answer, if it was ever intended to be. * the Examiner is not required to second-guess the SMD file. Its existence is sufficient that the mark has had use validated by the TMCH. Other Topics (page 7-8) * These are policy proposals can be brought up when WG members are proposing changes to the URS policy itself. Charter asks us to address the question whether the URS should become a consensus policy applicable to legacy domains. Charter is not specific regarding whether such discussion should occur in phase I or phase II. This feedback illustrates that the ST didn't get to propose policy changes, it is for the WG to discuss and propose changes. * when we reference the STI and IRT reports, we need to keep in mind they only had about 1-2 months to complete their work and produce a report; they were not standard PDP working groups and had limited charters and mandates, which were set by the Board * This is feedback from one Provider, who may want to grow their business. Practitioners survey are from Complaints' side. Need to have a balanced solution when considering the input. * There were plenty of practitioners that represent registrants in the Subgroup, although their experience was largely with the UDRP. Duration of response period (Page 11) * One member believes that if the URS continues in its current form, it would affect valuable domain names. The ones the registrants that do want to defend them, 14 days are not sufficient. 20 days may be more appropriate. It should be based on the age of the domain name. If a domain is 3 months, it will have a shorter period to respond. If you own a domain name for 5-10 years, response period would be longer so less urgency. * Several other WG members disagree. The URS is supposed to be an expedited proceeding so increasing the length of time of a streamlined proceeding defeats the purpose. At most, there could be an additional 3 or 4 days extension period for cause. The point is that there are enough circumstances that give rise to the URS 'quick response' that we should NOT make assumptions into policy. It is an assumption that an "aged" domain would not require a fast response. In Mexico, we have not been able to file a domain name case due to Courts ignorance about the subject and also, because it could take years to be solved. We're spinning out fo control - extending the time to respond to URS cases just because a domain registration is not new defeats the purpose of fast action to take down an infringing domain once it's discovered. The URS is meant to address clear and convincing cases of infringement. A person registers a domain name for less than $50 and brand owner find out about at some point and then files an injunction in court for tens of thousands of dollars. Where is the balance. Examiners Guide (page 13) * The WIPO guidance for examiners took 1500 hours to develop. * The WIPO guidance is relevant to the URS, the elements are shown are the same and the differences include the burden of proof, word limit, etc. A lot of WIPO guidance goes to the shade of grey issues. URS is for clear black/white cases, so if there is a URS guidance it would likely be abbreviated. Duration of Suspension Period & Review of Implementation (page 21-23) * One WG member suggests to find out how much cost for registries & registrars to comply with the URS rules and procedures. Need to get data/feedback from the registries/registrars. * Other WG members are not sure "cost of implementation of URS" for Registries/Registrars is relevant to effectiveness of URS. We don't need to do a cost/benefit analysis (the costs & benefits aren't ICANN's), the providers, registrars, registries need to be asked if they are overburdened by the costs of compliance. * There is an action item to contact the registries/registrars about these issues. Timing TBD due to Sunrise & Claims survey launch. Other topics (page 23-24) * One WG member thinks the HSTS issue is not difficult to fix. The Providers need to improve their technical applicability to resolve the issue. Renee Fossen from Forum disagrees. * ACTION ITEM: Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. NEXT STEPS * ACTION ITEM: Staff to recirculate the Super Consolidated URS Topics Table document and ask all WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * ACTION ITEM: WG to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35. Later period to discuss larger policy issues. ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. 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Thank you for your comments. Well, while the sky is falling is obviously not the standard but saying and acting as though something is a significant due process issue, when it isn't, is quite misleading. I think we can agree that what should be in a decision should be discussed (as noted in the documents already), but that has to be tempered by the fees being charged for a URS, the fees paid to panelists from such and the time needed to draft a decision. I just thought I would make this clear because some editorializing was being thrown out up front. Your welcome! Georges Nahitchevansky Kilpatrick Townsend & Stockton LLP The Grace Building | 1114 Avenue of the Americas | New York, NY 10036-7703 office 212 775 8720 | fax 212 775 8820 ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com> | My Profile<http://www.kilpatricktownsend.com/en/People/N/NahitchevanskyGeorges> | vCard<http://www.kilpatricktownsend.com/vcard/GeorgesNahitchevansky.vcf> From: Tushnet, Rebecca <rtushnet@law.harvard.edu> Sent: Thursday, August 9, 2018 3:35 PM To: Nahitchevansky, Georges <ghn@kilpatricktownsend.com>; Ariel Liang <ariel.liang@icann.org>; gnso-rpm-wg@icann.org Subject: Re: ACTIONS & NOTES: RPM PDP WG 08 August 2018 I'm happy to take this up on the merits (among other things, I don't recall saying the sky was falling or understanding that there was consensus that sky disaster was the standard for recommending fixes) but I expect we will repeat ourselves a lot when we get to the "for WG Discussion" parts. My current request is for this suggestion/potential recommendation, which is already present in the document, to be repeated or otherwise cross-referenced so that it is part of more than Defenses in the main document. Thank you! ________________________________ From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Sent: Thursday, August 9, 2018 3:27:09 PM To: Tushnet, Rebecca; Ariel Liang; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: ACTIONS & NOTES: RPM PDP WG 08 August 2018 Rebecca: I do not disagree with the notion that we should discuss what a decision should contain, but I don't think we have a consensus as to what that should be in the URS context (given the pricing of URS proceedings). Moreover, a review of the URS cases makes your 13% number and comment of "significant due process and implementation issues" point questionable. At NAF for example, there were 827 cases that that your research assistants reviewed. I found a total of about 103 that your team flagged as having no articulated decisions. I would agree that in 58 cases the decisions lacked details, but in 45 cases there were details that sufficiently let you know what the case was about and the basis of the resolution. I am sure we can argue about these 45 cases and whether they should say more, but ultimately we are really only talking about 58 cases that actually do not have any specific details and just provide the standard and a resolution (although I note that most of these cases involve domain names based on fairly well known marks such as NISSAN, DATSUN, TEXACO, BLOOMBERG, BNP PARIBAS etc., so you pretty much know what trademark was involved.). In all, we are really talking about 7% of the cases that have no details, which is not significant. Again, we can discuss what the decisions should provide, but I don't think we ought to be qualifying this as a "significant" issue per se (as 93% of them have details). There are other issues being considered in the URS review that have better percentage numbers as an issue that are viewed as not being significant per se. The point is that the URS looks to be working appropriately and there are probably some tweaks and refinements needed but this is not sky is falling issue. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Thursday, August 9, 2018 1:22 PM To: Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 My apologies for missing the meeting. Comment on the big document: This is currently only covered under Defenses but I would put it for discussion/recommendations under 2. Examiners' Guide/3. Other Issues because it goes beyond defenses: Decisions should contain basic information, including what the trademark is, what the finding of abuse is and/or what findings are on any defenses-13% of decisions did not, and this raises significant due process and implementation issues. ________________________________ From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>> Sent: Wednesday, August 8, 2018 3:56:54 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 Dear All, Please see below the action items and notes captured by staff from the RPM PDP WG call held on 08 August 2018 (17:00-18:30 UTC). Staff have posted to the wiki space the action items and notes. Please note that these will be high-level notes and are not meant as a substitute for the recording. The recording, AC chat, and attendance records are posted on the wiki at: https://community.icann.org/x/uwNpBQ<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_uwNpBQ&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=gcgRms-bmezGQQmwXCqLMQXOdSv3gly_0bWYNSuRlY8&e=> Best Regards, Ariel Ariel Xinyue Liang GNSO Policy Support Specialist Internet Corporation for Assigned Names and Numbers (ICANN) == ACTION ITEMS: * Brian Beckham to send to the WG a WIPO FAQ with regard to "Doe Complaint". * Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. * Staff to recirculate the Super Consolidated URS Topics Table document * WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * WG members to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, during next week's call. Later period to discuss larger policy issues. NOTES: Review Agenda/Statements of Interest * George Kirikos has become a member of the At-Large Community: https://community.icann.org/display/gnsosoi/George+Kirikos+SOI<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_gnsosoi_George-2BKirikos-2BSOI&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=8-YfNNseZ7YW77BHJT9ciEr_I08JQcazWKn1rxNI900&e=> General Comment on the Super Consolidated URS Topics Table Document * The topics in the table were developed by the WG members and deliberated on by the WG & URS Sub Teams. Each Sub Team then did very substantial work on data collection and reviewing what came back. While the actual Sub Team recommendations and suggestions captured in this document are what is intended the WG should discuss - to see if it wishes to develop policy or operational recommendations - discussion over what should be on the actual list of topics should not be reopened unless the WG agrees to do so. We encourage all WG members to review all the previous reports from each Sub Team, and all the documents they worked on. They are linked in this Super Consolidated document (page 2). * The Super Consolidated document is a summary of findings and suggestions by the Sub Teams. The Table does not mean to limit/restrict recommendations from the WG members. If there is any issue overlapping with UDRP, can possibly be carried over to the phase II of the PDP. * Is it possible to add additional topics to the Super Consolidated Table? One WG member said that access to the Courts, for example, is a topic he raised, which isn't in the table. Statute of Limitations, whether URS should apply to legacy gTLDs as a consensus policy, are just a few of the topics not in the table. He brought it up in November 2017 (see: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_pipermail_gnso-2Drpm-2Dwg_2017-2DNovember_002585.html&d=DwMFAg&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=8rOit2K986hGs3COiNgEQLimxG2ahNIOz9xEsNv16zs&s=XnJQUl9g3H1YE0uzuZyjzvuFq5HhG822LcBSTZTeANE&e=> ) and it was reflected in a later document. That's a critical issue for registrants. if they don't have access to the courts to challenge a URS decision, then it's a huge denial of their rights. * While the chart is not meant to foreclose further discussion, it is a good faith attempt at capturing the work of the sub teams. The purpose of today's, and likely the next few, calls was to make sure this was an accurate and comprehensive reflection of our discussions so far. That said, WG members should bear in mind that we are seeking consensus, so items which are unlikely to achieve that may not be appropriate to reflect as a recommendation, but could be included in public comments on the Initial Report. Also, before adding items to this chart, we will want to work with staff to see whether such topics was previously discussed, and if so, the level of agreement/consensus. In other words, it is not necessary final, but is equally an opportunity to reintroduce topics which have been discussed, but for which consensus is/was not possible. * Could we create a list of "missing issues" -- a list of issues raised in this call (and calls to follow); we can evaluate the nature and weight of these ideas later. * Regarding the Action Items highlighted in column 3 of the table, Providers ST will do a first pass of the responses from the Providers to the follow-up questions, and then discuss the issues that they identified and proposed suggestions with the full WG. Limited filing period (page 3) * One WG member believes that there should be limitation for filing period to bring URS Complaints, so the domain registered many years ago would not be subject to unfair treatment. He said a registrant who owns a domain for 20 years, for example, shouldn't have to be concerned about a policy that can take their domain down with very short time period to respond. * Other WG members said this was discussed, and did not achieve agreement. That would only even be an option if the trademark pre-dated. This is unlikely to be a situation in practice where a URS was brought because it would probably not be a "slam dunk" case after 20 years unless there had been a change of circumstances. * On the issue of delay and laches - as reported by the Docs Sub Team, the data did not provide any basis for which a policy recommendation should be made. The Providers and Practitioners Sub Teams also did not uncover any specific issues that came to either practitioners' or providers' attention. Administrative Review (page 3-4) * One WG member asked whether ICANN should bring Providers into contractual relationship in order to enforce the URS Rules & Procedures. Another member said it probably need to be ICANN's legal department to enforce the rules & procedure. * URS Providers have MoU with ICANN. Whether it is ICANN's compliance department or legal department to enforce the rules & procedures, it should not be controversial that Providers must abide by them. * An MOU could be legally enforceable, depending on the circumstances. 500-word Complaint limit (page 4-5) * On 500-word Complaint Limit - Practitioners' survey results were split (out of 12, 5 agree it's sufficient, 4 disagree); results included feedback from some that the word limit was too low: "arbitrary and often insufficient" and "should be slightly increased". * One member said he understands and generally agrees with the decision not to suggest an expansion of the word limit, he wonders if there aren't situations (multi- domain challenges, etc.) where a Complainant or Respondent might be given the opportunity to request an expansion. This point can be captured for decisional phase. * Another member suggested that perhaps providers can provide stats on the average word length of complaints, to see how close to the 500 words they are at present. (i.e. a table of distributions, e.g. 10% under 200 words, 20% between 201 and 300, etc.) Amending the Complaint in light of GDPR/Temp Spec (page 5-6) * One member believes that 2-3 days might not be a good rule (e.g. weekends, time to research, etc.). Maybe 5 business days. * WIPO's approach to "doe complaints" has been very helpful and provides some comfort that the lack of true registrant/registrant organization data masked due to GDPR will not result in a deficient complaint for an omitted respondent. * ACTION ITEM: Brian Beckham to send to the WG a WIPO FAQ with regard to "Doe Complaint". * Forum is asking for amendment of the complaint in UDRP - under the rules that's not allowed in URS. SMD Files (page 6-7) * SMD files are used for limited purpose of demonstrating the use. * Recollection is that SMD files would be passed to the Examiners and relay the critical information related to the TM registration. That's why some people are surprised by the limited info SMD files would provide. * The SMD files contain some basic human-readable information, with the rest of the information coded. For example, the trademark itself is human-readable but the applicable Nice classification is coded. A SMD file is used by registries/registrars for validation, and as Greg noted, to demonstrate use. From the TMCH provider: http://www.trademark-clearinghouse.com/help/faq/which-information-does-smd-file-contain<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearinghouse.com_help_faq_which-2Dinformation-2Ddoes-2Dsmd-2Dfile-2Dcontain&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=v3df_qE8Dw_U7YY7_IfhIMgGSxt-a44LbNskorrbTIg&e=> * If the intent of the STI was that the SMD file would be a file summary, that got lost somewhere along the way, way before the SMD file was designed by the TMCH providers. * Rules 3(b)(v) Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use -which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse * It might be useful to look at the spec that they relied on. But the real question is how should the examiner get the relevant data about the Complainant's mark. The SMD file is probably not the answer, if it was ever intended to be. * the Examiner is not required to second-guess the SMD file. Its existence is sufficient that the mark has had use validated by the TMCH. Other Topics (page 7-8) * These are policy proposals can be brought up when WG members are proposing changes to the URS policy itself. Charter asks us to address the question whether the URS should become a consensus policy applicable to legacy domains. Charter is not specific regarding whether such discussion should occur in phase I or phase II. This feedback illustrates that the ST didn't get to propose policy changes, it is for the WG to discuss and propose changes. * when we reference the STI and IRT reports, we need to keep in mind they only had about 1-2 months to complete their work and produce a report; they were not standard PDP working groups and had limited charters and mandates, which were set by the Board * This is feedback from one Provider, who may want to grow their business. Practitioners survey are from Complaints' side. Need to have a balanced solution when considering the input. * There were plenty of practitioners that represent registrants in the Subgroup, although their experience was largely with the UDRP. Duration of response period (Page 11) * One member believes that if the URS continues in its current form, it would affect valuable domain names. The ones the registrants that do want to defend them, 14 days are not sufficient. 20 days may be more appropriate. It should be based on the age of the domain name. If a domain is 3 months, it will have a shorter period to respond. If you own a domain name for 5-10 years, response period would be longer so less urgency. * Several other WG members disagree. The URS is supposed to be an expedited proceeding so increasing the length of time of a streamlined proceeding defeats the purpose. At most, there could be an additional 3 or 4 days extension period for cause. The point is that there are enough circumstances that give rise to the URS 'quick response' that we should NOT make assumptions into policy. It is an assumption that an "aged" domain would not require a fast response. In Mexico, we have not been able to file a domain name case due to Courts ignorance about the subject and also, because it could take years to be solved. We're spinning out fo control - extending the time to respond to URS cases just because a domain registration is not new defeats the purpose of fast action to take down an infringing domain once it's discovered. The URS is meant to address clear and convincing cases of infringement. A person registers a domain name for less than $50 and brand owner find out about at some point and then files an injunction in court for tens of thousands of dollars. Where is the balance. Examiners Guide (page 13) * The WIPO guidance for examiners took 1500 hours to develop. * The WIPO guidance is relevant to the URS, the elements are shown are the same and the differences include the burden of proof, word limit, etc. A lot of WIPO guidance goes to the shade of grey issues. URS is for clear black/white cases, so if there is a URS guidance it would likely be abbreviated. Duration of Suspension Period & Review of Implementation (page 21-23) * One WG member suggests to find out how much cost for registries & registrars to comply with the URS rules and procedures. Need to get data/feedback from the registries/registrars. * Other WG members are not sure "cost of implementation of URS" for Registries/Registrars is relevant to effectiveness of URS. We don't need to do a cost/benefit analysis (the costs & benefits aren't ICANN's), the providers, registrars, registries need to be asked if they are overburdened by the costs of compliance. * There is an action item to contact the registries/registrars about these issues. Timing TBD due to Sunrise & Claims survey launch. Other topics (page 23-24) * One WG member thinks the HSTS issue is not difficult to fix. The Providers need to improve their technical applicability to resolve the issue. Renee Fossen from Forum disagrees. * ACTION ITEM: Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. NEXT STEPS * ACTION ITEM: Staff to recirculate the Super Consolidated URS Topics Table document and ask all WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * ACTION ITEM: WG to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35. Later period to discuss larger policy issues. ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner. ________________________________ ***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.

The issue of costs is that Panelists get paid a fairly low amount from the $300 or so filing. If you want decent panelists, we can't make the process so burdensome that folks do not want to get involved. I recognize that being a panelist is more or less pro bono work, but the more requirements you impose on the decision the more burdensome it will become (particularly as this is an expedited proceeding with a short turn-around time frame). The bottom line is that in 93% of the cases (or even your 87% number) there were details provided (some more robust than others) - so panelists are as a whole providing decisions where the logic can be ascertained. We just need to come up with something easy and workable to address the 7% issue (or 13% by your count) in the context of an expedited proceeding. Georges Nahitchevansky Kilpatrick Townsend & Stockton LLP The Grace Building | 1114 Avenue of the Americas | New York, NY 10036-7703 office 212 775 8720 | fax 212 775 8820 ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com> | My Profile<http://www.kilpatricktownsend.com/en/People/N/NahitchevanskyGeorges> | vCard<http://www.kilpatricktownsend.com/vcard/GeorgesNahitchevansky.vcf> From: Tushnet, Rebecca <rtushnet@law.harvard.edu> Sent: Thursday, August 9, 2018 4:32 PM To: Nahitchevansky, Georges <ghn@kilpatricktownsend.com>; Ariel Liang <ariel.liang@icann.org>; gnso-rpm-wg@icann.org Subject: Re: ACTIONS & NOTES: RPM PDP WG 08 August 2018 I would think that the rules should aim for decisions that meet minimal standards for everyone, not just for most people. I have heard cost mentioned before, but I'm not sure what makes the 87% of decisions with at least a sentence explaining the basis for decision more costly or noticeably harder to create (especially if standard forms are provided), since I presume that the panelist has a basis for decision in his or her mind and thus doesn't need to do more work to generate that reason. Does NAF charge more for decisions that specify their reasoning? ________________________________ From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Sent: Thursday, August 9, 2018 4:02:07 PM To: Tushnet, Rebecca; Ariel Liang; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: ACTIONS & NOTES: RPM PDP WG 08 August 2018 Thank you for your comments. Well, while the sky is falling is obviously not the standard but saying and acting as though something is a significant due process issue, when it isn't, is quite misleading. I think we can agree that what should be in a decision should be discussed (as noted in the documents already), but that has to be tempered by the fees being charged for a URS, the fees paid to panelists from such and the time needed to draft a decision. I just thought I would make this clear because some editorializing was being thrown out up front. Your welcome! Georges Nahitchevansky Kilpatrick Townsend & Stockton LLP The Grace Building | 1114 Avenue of the Americas | New York, NY 10036-7703 office 212 775 8720 | fax 212 775 8820 ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com> | My Profile<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.kilpatricktownsend.c...> | vCard<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.kilpatricktownsend.c...> From: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Sent: Thursday, August 9, 2018 3:35 PM To: Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>; Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: ACTIONS & NOTES: RPM PDP WG 08 August 2018 I'm happy to take this up on the merits (among other things, I don't recall saying the sky was falling or understanding that there was consensus that sky disaster was the standard for recommending fixes) but I expect we will repeat ourselves a lot when we get to the "for WG Discussion" parts. My current request is for this suggestion/potential recommendation, which is already present in the document, to be repeated or otherwise cross-referenced so that it is part of more than Defenses in the main document. Thank you! ________________________________ From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Sent: Thursday, August 9, 2018 3:27:09 PM To: Tushnet, Rebecca; Ariel Liang; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: ACTIONS & NOTES: RPM PDP WG 08 August 2018 Rebecca: I do not disagree with the notion that we should discuss what a decision should contain, but I don't think we have a consensus as to what that should be in the URS context (given the pricing of URS proceedings). Moreover, a review of the URS cases makes your 13% number and comment of "significant due process and implementation issues" point questionable. At NAF for example, there were 827 cases that that your research assistants reviewed. I found a total of about 103 that your team flagged as having no articulated decisions. I would agree that in 58 cases the decisions lacked details, but in 45 cases there were details that sufficiently let you know what the case was about and the basis of the resolution. I am sure we can argue about these 45 cases and whether they should say more, but ultimately we are really only talking about 58 cases that actually do not have any specific details and just provide the standard and a resolution (although I note that most of these cases involve domain names based on fairly well known marks such as NISSAN, DATSUN, TEXACO, BLOOMBERG, BNP PARIBAS etc., so you pretty much know what trademark was involved.). In all, we are really talking about 7% of the cases that have no details, which is not significant. Again, we can discuss what the decisions should provide, but I don't think we ought to be qualifying this as a "significant" issue per se (as 93% of them have details). There are other issues being considered in the URS review that have better percentage numbers as an issue that are viewed as not being significant per se. The point is that the URS looks to be working appropriately and there are probably some tweaks and refinements needed but this is not sky is falling issue. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Thursday, August 9, 2018 1:22 PM To: Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 My apologies for missing the meeting. Comment on the big document: This is currently only covered under Defenses but I would put it for discussion/recommendations under 2. Examiners' Guide/3. Other Issues because it goes beyond defenses: Decisions should contain basic information, including what the trademark is, what the finding of abuse is and/or what findings are on any defenses-13% of decisions did not, and this raises significant due process and implementation issues. ________________________________ From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>> Sent: Wednesday, August 8, 2018 3:56:54 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 Dear All, Please see below the action items and notes captured by staff from the RPM PDP WG call held on 08 August 2018 (17:00-18:30 UTC). Staff have posted to the wiki space the action items and notes. Please note that these will be high-level notes and are not meant as a substitute for the recording. The recording, AC chat, and attendance records are posted on the wiki at: https://community.icann.org/x/uwNpBQ<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_uwNpBQ&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=gcgRms-bmezGQQmwXCqLMQXOdSv3gly_0bWYNSuRlY8&e=> Best Regards, Ariel Ariel Xinyue Liang GNSO Policy Support Specialist Internet Corporation for Assigned Names and Numbers (ICANN) == ACTION ITEMS: * Brian Beckham to send to the WG a WIPO FAQ with regard to "Doe Complaint". * Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. * Staff to recirculate the Super Consolidated URS Topics Table document * WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * WG members to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, during next week's call. Later period to discuss larger policy issues. NOTES: Review Agenda/Statements of Interest * George Kirikos has become a member of the At-Large Community: https://community.icann.org/display/gnsosoi/George+Kirikos+SOI<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_gnsosoi_George-2BKirikos-2BSOI&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=8-YfNNseZ7YW77BHJT9ciEr_I08JQcazWKn1rxNI900&e=> General Comment on the Super Consolidated URS Topics Table Document * The topics in the table were developed by the WG members and deliberated on by the WG & URS Sub Teams. Each Sub Team then did very substantial work on data collection and reviewing what came back. While the actual Sub Team recommendations and suggestions captured in this document are what is intended the WG should discuss - to see if it wishes to develop policy or operational recommendations - discussion over what should be on the actual list of topics should not be reopened unless the WG agrees to do so. We encourage all WG members to review all the previous reports from each Sub Team, and all the documents they worked on. They are linked in this Super Consolidated document (page 2). * The Super Consolidated document is a summary of findings and suggestions by the Sub Teams. The Table does not mean to limit/restrict recommendations from the WG members. If there is any issue overlapping with UDRP, can possibly be carried over to the phase II of the PDP. * Is it possible to add additional topics to the Super Consolidated Table? One WG member said that access to the Courts, for example, is a topic he raised, which isn't in the table. Statute of Limitations, whether URS should apply to legacy gTLDs as a consensus policy, are just a few of the topics not in the table. He brought it up in November 2017 (see: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_pipermail_gnso-2Drpm-2Dwg_2017-2DNovember_002585.html&d=DwMFAg&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=8rOit2K986hGs3COiNgEQLimxG2ahNIOz9xEsNv16zs&s=XnJQUl9g3H1YE0uzuZyjzvuFq5HhG822LcBSTZTeANE&e=> ) and it was reflected in a later document. That's a critical issue for registrants. if they don't have access to the courts to challenge a URS decision, then it's a huge denial of their rights. * While the chart is not meant to foreclose further discussion, it is a good faith attempt at capturing the work of the sub teams. The purpose of today's, and likely the next few, calls was to make sure this was an accurate and comprehensive reflection of our discussions so far. That said, WG members should bear in mind that we are seeking consensus, so items which are unlikely to achieve that may not be appropriate to reflect as a recommendation, but could be included in public comments on the Initial Report. Also, before adding items to this chart, we will want to work with staff to see whether such topics was previously discussed, and if so, the level of agreement/consensus. In other words, it is not necessary final, but is equally an opportunity to reintroduce topics which have been discussed, but for which consensus is/was not possible. * Could we create a list of "missing issues" -- a list of issues raised in this call (and calls to follow); we can evaluate the nature and weight of these ideas later. * Regarding the Action Items highlighted in column 3 of the table, Providers ST will do a first pass of the responses from the Providers to the follow-up questions, and then discuss the issues that they identified and proposed suggestions with the full WG. Limited filing period (page 3) * One WG member believes that there should be limitation for filing period to bring URS Complaints, so the domain registered many years ago would not be subject to unfair treatment. He said a registrant who owns a domain for 20 years, for example, shouldn't have to be concerned about a policy that can take their domain down with very short time period to respond. * Other WG members said this was discussed, and did not achieve agreement. That would only even be an option if the trademark pre-dated. This is unlikely to be a situation in practice where a URS was brought because it would probably not be a "slam dunk" case after 20 years unless there had been a change of circumstances. * On the issue of delay and laches - as reported by the Docs Sub Team, the data did not provide any basis for which a policy recommendation should be made. The Providers and Practitioners Sub Teams also did not uncover any specific issues that came to either practitioners' or providers' attention. Administrative Review (page 3-4) * One WG member asked whether ICANN should bring Providers into contractual relationship in order to enforce the URS Rules & Procedures. Another member said it probably need to be ICANN's legal department to enforce the rules & procedure. * URS Providers have MoU with ICANN. Whether it is ICANN's compliance department or legal department to enforce the rules & procedures, it should not be controversial that Providers must abide by them. * An MOU could be legally enforceable, depending on the circumstances. 500-word Complaint limit (page 4-5) * On 500-word Complaint Limit - Practitioners' survey results were split (out of 12, 5 agree it's sufficient, 4 disagree); results included feedback from some that the word limit was too low: "arbitrary and often insufficient" and "should be slightly increased". * One member said he understands and generally agrees with the decision not to suggest an expansion of the word limit, he wonders if there aren't situations (multi- domain challenges, etc.) where a Complainant or Respondent might be given the opportunity to request an expansion. This point can be captured for decisional phase. * Another member suggested that perhaps providers can provide stats on the average word length of complaints, to see how close to the 500 words they are at present. (i.e. a table of distributions, e.g. 10% under 200 words, 20% between 201 and 300, etc.) Amending the Complaint in light of GDPR/Temp Spec (page 5-6) * One member believes that 2-3 days might not be a good rule (e.g. weekends, time to research, etc.). Maybe 5 business days. * WIPO's approach to "doe complaints" has been very helpful and provides some comfort that the lack of true registrant/registrant organization data masked due to GDPR will not result in a deficient complaint for an omitted respondent. * ACTION ITEM: Brian Beckham to send to the WG a WIPO FAQ with regard to "Doe Complaint". * Forum is asking for amendment of the complaint in UDRP - under the rules that's not allowed in URS. SMD Files (page 6-7) * SMD files are used for limited purpose of demonstrating the use. * Recollection is that SMD files would be passed to the Examiners and relay the critical information related to the TM registration. That's why some people are surprised by the limited info SMD files would provide. * The SMD files contain some basic human-readable information, with the rest of the information coded. For example, the trademark itself is human-readable but the applicable Nice classification is coded. A SMD file is used by registries/registrars for validation, and as Greg noted, to demonstrate use. From the TMCH provider: http://www.trademark-clearinghouse.com/help/faq/which-information-does-smd-file-contain<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearinghouse.com_help_faq_which-2Dinformation-2Ddoes-2Dsmd-2Dfile-2Dcontain&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=v3df_qE8Dw_U7YY7_IfhIMgGSxt-a44LbNskorrbTIg&e=> * If the intent of the STI was that the SMD file would be a file summary, that got lost somewhere along the way, way before the SMD file was designed by the TMCH providers. * Rules 3(b)(v) Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use -which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse * It might be useful to look at the spec that they relied on. But the real question is how should the examiner get the relevant data about the Complainant's mark. The SMD file is probably not the answer, if it was ever intended to be. * the Examiner is not required to second-guess the SMD file. Its existence is sufficient that the mark has had use validated by the TMCH. Other Topics (page 7-8) * These are policy proposals can be brought up when WG members are proposing changes to the URS policy itself. Charter asks us to address the question whether the URS should become a consensus policy applicable to legacy domains. Charter is not specific regarding whether such discussion should occur in phase I or phase II. This feedback illustrates that the ST didn't get to propose policy changes, it is for the WG to discuss and propose changes. * when we reference the STI and IRT reports, we need to keep in mind they only had about 1-2 months to complete their work and produce a report; they were not standard PDP working groups and had limited charters and mandates, which were set by the Board * This is feedback from one Provider, who may want to grow their business. Practitioners survey are from Complaints' side. Need to have a balanced solution when considering the input. * There were plenty of practitioners that represent registrants in the Subgroup, although their experience was largely with the UDRP. Duration of response period (Page 11) * One member believes that if the URS continues in its current form, it would affect valuable domain names. The ones the registrants that do want to defend them, 14 days are not sufficient. 20 days may be more appropriate. It should be based on the age of the domain name. If a domain is 3 months, it will have a shorter period to respond. If you own a domain name for 5-10 years, response period would be longer so less urgency. * Several other WG members disagree. The URS is supposed to be an expedited proceeding so increasing the length of time of a streamlined proceeding defeats the purpose. At most, there could be an additional 3 or 4 days extension period for cause. The point is that there are enough circumstances that give rise to the URS 'quick response' that we should NOT make assumptions into policy. It is an assumption that an "aged" domain would not require a fast response. In Mexico, we have not been able to file a domain name case due to Courts ignorance about the subject and also, because it could take years to be solved. We're spinning out fo control - extending the time to respond to URS cases just because a domain registration is not new defeats the purpose of fast action to take down an infringing domain once it's discovered. The URS is meant to address clear and convincing cases of infringement. A person registers a domain name for less than $50 and brand owner find out about at some point and then files an injunction in court for tens of thousands of dollars. Where is the balance. Examiners Guide (page 13) * The WIPO guidance for examiners took 1500 hours to develop. * The WIPO guidance is relevant to the URS, the elements are shown are the same and the differences include the burden of proof, word limit, etc. A lot of WIPO guidance goes to the shade of grey issues. URS is for clear black/white cases, so if there is a URS guidance it would likely be abbreviated. Duration of Suspension Period & Review of Implementation (page 21-23) * One WG member suggests to find out how much cost for registries & registrars to comply with the URS rules and procedures. Need to get data/feedback from the registries/registrars. * Other WG members are not sure "cost of implementation of URS" for Registries/Registrars is relevant to effectiveness of URS. We don't need to do a cost/benefit analysis (the costs & benefits aren't ICANN's), the providers, registrars, registries need to be asked if they are overburdened by the costs of compliance. * There is an action item to contact the registries/registrars about these issues. Timing TBD due to Sunrise & Claims survey launch. Other topics (page 23-24) * One WG member thinks the HSTS issue is not difficult to fix. The Providers need to improve their technical applicability to resolve the issue. Renee Fossen from Forum disagrees. * ACTION ITEM: Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. NEXT STEPS * ACTION ITEM: Staff to recirculate the Super Consolidated URS Topics Table document and ask all WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * ACTION ITEM: WG to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35. Later period to discuss larger policy issues. ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner. ________________________________ ***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.

George K. You miss the point. No one is arguing against discussing the issue on what a decision should contain or addressing the 7% issue. The renumeration point goes to the point of how detailed, etc a decision has to be in an expedited matter where a Panelist gets paid very little and has to turn around a decision quite quickly. It's all about finding a workable balance if you want quality panelists. On your panelist point, there is something that some do not seem to appreciate or want to understand. A panelist usually spends much time reviewing a matter and the submissions made. As with any case, the claims will ultimately rise or fall on the parties' submissions and evidence and on how well the parties marshal/present their evidence and arguments. Ultimately, many of the decisions will turn on the evidence presented to the Panel and on the quality and credibility of such evidence. Georges Nahitchevansky Kilpatrick Townsend & Stockton LLP The Grace Building | 1114 Avenue of the Americas | New York, NY 10036-7703 office 212 775 8720 | fax 212 775 8820 ghn@kilpatricktownsend.com | www.kilpatricktownsend.com -----Original Message----- From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org> On Behalf Of George Kirikos Sent: Thursday, August 9, 2018 5:43 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 As Michael correctly noted, *all* cases should have reasons to support the determination. That's basic quality control that is missing here. Georges N is trying to mix in panelist remuneration to the debate, which is not relevant. I'm sure he considers himself a "good" panelist, but even he makes mistakes in judgment, which isn't correlated to what he's paid. Case in point is the OpenTime.com UDRP: http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-2328 which he ordered transferred to the complainant (in a long decision, which took time to write presumably). As it turns out, this went to court, and the outcome was that the domain stays with the domain owner (see attached judgment). So, I don't think "getting it right" is correlated in any way with the remuneration. You can be paid a lot and "get it wrong", or you can be paid peanuts but "get it right" -- it's all about one's standards. For a given remuneration, panelists are expected to do the job with diligence, which includes giving reasons so that both sides (and the public) understand why the determination was made. Panelists shouldn't cut corners as some form of protest over pay that they willingly agreed to do for the job. Given how short URS complaints are (500 words max) and typical reading speed (100+ words per minute), the actual hourly rate of URS panelists is not insignificant (I believe they are batched in groups of 5 cases per panelist, too). Most responses start off with a standard template, so it should only take minutes to do proper reasons in most cases (especially the "slam dunk" ones). Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Thu, Aug 9, 2018 at 5:14 PM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:

The issue of costs is that Panelists get paid a fairly low amount from the $300 or so filing. If you want decent panelists, we can’t make the process so burdensome that folks do not want to get involved. I recognize that being a panelist is more or less pro bono work, but the more requirements you impose on the decision the more burdensome it will become (particularly as this is an expedited proceeding with a short turn-around time frame). The bottom line is that in 93% of the cases (or even your 87% number) there were details provided (some more robust than others) – so panelists are as a whole providing decisions where the logic can be ascertained. We just need to come up with something easy and workable to address the 7% issue (or 13% by your count) in the context of an expedited proceeding.

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

From: Tushnet, Rebecca <rtushnet@law.harvard.edu> Sent: Thursday, August 9, 2018 4:32 PM

To: Nahitchevansky, Georges <ghn@kilpatricktownsend.com>; Ariel Liang <ariel.liang@icann.org>; gnso-rpm-wg@icann.org Subject: Re: ACTIONS & NOTES: RPM PDP WG 08 August 2018

I would think that the rules should aim for decisions that meet minimal standards for everyone, not just for most people. I have heard cost mentioned before, but I'm not sure what makes the 87% of decisions with at least a sentence explaining the basis for decision more costly or noticeably harder to create (especially if standard forms are provided), since I presume that the panelist has a basis for decision in his or her mind and thus doesn't need to do more work to generate that reason. Does NAF charge more for decisions that specify their reasoning?

________________________________

From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com> Sent: Thursday, August 9, 2018 4:02:07 PM To: Tushnet, Rebecca; Ariel Liang; gnso-rpm-wg@icann.org Subject: RE: ACTIONS & NOTES: RPM PDP WG 08 August 2018

Thank you for your comments. Well, while the sky is falling is obviously not the standard but saying and acting as though something is a significant due process issue, when it isn’t, is quite misleading. I think we can agree that what should be in a decision should be discussed (as noted in the documents already), but that has to be tempered by the fees being charged for a URS, the fees paid to panelists from such and the time needed to draft a decision. I just thought I would make this clear because some editorializing was being thrown out up front. Your welcome!

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

From: Tushnet, Rebecca <rtushnet@law.harvard.edu> Sent: Thursday, August 9, 2018 3:35 PM To: Nahitchevansky, Georges <ghn@kilpatricktownsend.com>; Ariel Liang <ariel.liang@icann.org>; gnso-rpm-wg@icann.org Subject: Re: ACTIONS & NOTES: RPM PDP WG 08 August 2018

I'm happy to take this up on the merits (among other things, I don't recall saying the sky was falling or understanding that there was consensus that sky disaster was the standard for recommending fixes) but I expect we will repeat ourselves a lot when we get to the "for WG Discussion" parts. My current request is for this suggestion/potential recommendation, which is already present in the document, to be repeated or otherwise cross-referenced so that it is part of more than Defenses in the main document. Thank you!

________________________________

From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com> Sent: Thursday, August 9, 2018 3:27:09 PM To: Tushnet, Rebecca; Ariel Liang; gnso-rpm-wg@icann.org Subject: RE: ACTIONS & NOTES: RPM PDP WG 08 August 2018

Rebecca:

I do not disagree with the notion that we should discuss what a decision should contain, but I don’t think we have a consensus as to what that should be in the URS context (given the pricing of URS proceedings). Moreover, a review of the URS cases makes your 13% number and comment of “significant due process and implementation issues” point questionable. At NAF for example, there were 827 cases that that your research assistants reviewed. I found a total of about 103 that your team flagged as having no articulated decisions. I would agree that in 58 cases the decisions lacked details, but in 45 cases there were details that sufficiently let you know what the case was about and the basis of the resolution. I am sure we can argue about these 45 cases and whether they should say more, but ultimately we are really only talking about 58 cases that actually do not have any specific details and just provide the standard and a resolution (although I note that most of these cases involve domain names based on fairly well known marks such as NISSAN, DATSUN, TEXACO, BLOOMBERG, BNP PARIBAS etc., so you pretty much know what trademark was involved.). In all, we are really talking about 7% of the cases that have no details, which is not significant.

Again, we can discuss what the decisions should provide, but I don’t think we ought to be qualifying this as a “significant” issue per se (as 93% of them have details). There are other issues being considered in the URS review that have better percentage numbers as an issue that are viewed as not being significant per se. The point is that the URS looks to be working appropriately and there are probably some tweaks and refinements needed but this is not sky is falling issue.

From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Thursday, August 9, 2018 1:22 PM To: Ariel Liang <ariel.liang@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018

My apologies for missing the meeting. Comment on the big document:

This is currently only covered under Defenses but I would put it for discussion/recommendations under 2. Examiners’ Guide/3. Other Issues because it goes beyond defenses: Decisions should contain basic information, including what the trademark is, what the finding of abuse is and/or what findings are on any defenses—13% of decisions did not, and this raises significant due process and implementation issues.

________________________________

From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org> on behalf of Ariel Liang <ariel.liang@icann.org> Sent: Wednesday, August 8, 2018 3:56:54 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018

Dear All,

Please see below the action items and notes captured by staff from the RPM PDP WG call held on 08 August 2018 (17:00-18:30 UTC). Staff have posted to the wiki space the action items and notes. Please note that these will be high-level notes and are not meant as a substitute for the recording. The recording, AC chat, and attendance records are posted on the wiki at: https://community.icann.org/x/uwNpBQ

Best Regards,

Ariel

Ariel Xinyue Liang

GNSO Policy Support Specialist

Internet Corporation for Assigned Names and Numbers (ICANN)

==

ACTION ITEMS:

Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. Staff to recirculate the Super Consolidated URS Topics Table document WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. WG members to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, during next week’s call. Later period to discuss larger policy issues.

NOTES:

Review Agenda/Statements of Interest

George Kirikos has become a member of the At-Large Community: https://community.icann.org/display/gnsosoi/George+Kirikos+SOI

General Comment on the Super Consolidated URS Topics Table Document

The topics in the table were developed by the WG members and deliberated on by the WG & URS Sub Teams. Each Sub Team then did very substantial work on data collection and reviewing what came back. While the actual Sub Team recommendations and suggestions captured in this document are what is intended the WG should discuss - to see if it wishes to develop policy or operational recommendations - discussion over what should be on the actual list of topics should not be reopened unless the WG agrees to do so. We encourage all WG members to review all the previous reports from each Sub Team, and all the documents they worked on. They are linked in this Super Consolidated document (page 2). The Super Consolidated document is a summary of findings and suggestions by the Sub Teams. The Table does not mean to limit/restrict recommendations from the WG members. If there is any issue overlapping with UDRP, can possibly be carried over to the phase II of the PDP. Is it possible to add additional topics to the Super Consolidated Table? One WG member said that access to the Courts, for example, is a topic he raised, which isn't in the table. Statute of Limitations, whether URS should apply to legacy gTLDs as a consensus policy, are just a few of the topics not in the table. He brought it up in November 2017 (see: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html ) and it was reflected in a later document. That's a critical issue for registrants. if they don't have access to the courts to challenge a URS decision, then it's a huge denial of their rights. While the chart is not meant to foreclose further discussion, it is a good faith attempt at capturing the work of the sub teams. The purpose of today's, and likely the next few, calls was to make sure this was an accurate and comprehensive reflection of our discussions so far. That said, WG members should bear in mind that we are seeking consensus, so items which are unlikely to achieve that may not be appropriate to reflect as a recommendation, but could be included in public comments on the Initial Report. Also, before adding items to this chart, we will want to work with staff to see whether such topics was previously discussed, and if so, the level of agreement/consensus. In other words, it is not necessary final, but is equally an opportunity to reintroduce topics which have been discussed, but for which consensus is/was not possible. Could we create a list of "missing issues" -- a list of issues raised in this call (and calls to follow); we can evaluate the nature and weight of these ideas later. Regarding the Action Items highlighted in column 3 of the table, Providers ST will do a first pass of the responses from the Providers to the follow-up questions, and then discuss the issues that they identified and proposed suggestions with the full WG.

Limited filing period (page 3)

One WG member believes that there should be limitation for filing period to bring URS Complaints, so the domain registered many years ago would not be subject to unfair treatment. He said a registrant who owns a domain for 20 years, for example, shouldn't have to be concerned about a policy that can take their domain down with very short time period to respond. Other WG members said this was discussed, and did not achieve agreement. That would only even be an option if the trademark pre-dated. This is unlikely to be a situation in practice where a URS was brought because it would probably not be a "slam dunk" case after 20 years unless there had been a change of circumstances. On the issue of delay and laches - as reported by the Docs Sub Team, the data did not provide any basis for which a policy recommendation should be made. The Providers and Practitioners Sub Teams also did not uncover any specific issues that came to either practitioners' or providers' attention.

Administrative Review (page 3-4)

One WG member asked whether ICANN should bring Providers into contractual relationship in order to enforce the URS Rules & Procedures. Another member said it probably need to be ICANN’s legal department to enforce the rules & procedure. URS Providers have MoU with ICANN. Whether it is ICANN’s compliance department or legal department to enforce the rules & procedures, it should not be controversial that Providers must abide by them. An MOU could be legally enforceable, depending on the circumstances.

500-word Complaint limit (page 4-5)

· On 500-word Complaint Limit - Practitioners' survey results were split (out of 12, 5 agree it's sufficient, 4 disagree); results included feedback from some that the word limit was too low: "arbitrary and often insufficient" and "should be slightly increased".

· One member said he understands and generally agrees with the decision not to suggest an expansion of the word limit, he wonders if there aren't situations (multi- domain challenges, etc.) where a Complainant or Respondent might be given the opportunity to request an expansion. This point can be captured for decisional phase.

· Another member suggested that perhaps providers can provide stats on the average word length of complaints, to see how close to the 500 words they are at present. (i.e. a table of distributions, e.g. 10% under 200 words, 20% between 201 and 300, etc.)

Amending the Complaint in light of GDPR/Temp Spec (page 5-6)

One member believes that 2-3 days might not be a good rule (e.g. weekends, time to research, etc.). Maybe 5 business days. WIPO’s approach to “doe complaints” has been very helpful and provides some comfort that the lack of true registrant/registrant organization data masked due to GDPR will not result in a deficient complaint for an omitted respondent. ACTION ITEM: Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. Forum is asking for amendment of the complaint in UDRP - under the rules that's not allowed in URS.

SMD Files (page 6-7)

SMD files are used for limited purpose of demonstrating the use. Recollection is that SMD files would be passed to the Examiners and relay the critical information related to the TM registration. That's why some people are surprised by the limited info SMD files would provide. The SMD files contain some basic human-readable information, with the rest of the information coded. For example, the trademark itself is human-readable but the applicable Nice classification is coded. A SMD file is used by registries/registrars for validation, and as Greg noted, to demonstrate use. From the TMCH provider: http://www.trademark-clearinghouse.com/help/faq/which-information-does -smd-file-contain If the intent of the STI was that the SMD file would be a file summary, that got lost somewhere along the way, way before the SMD file was designed by the TMCH providers. Rules 3(b)(v) Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use –which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse It might be useful to look at the spec that they relied on. But the real question is how should the examiner get the relevant data about the Complainant’s mark. The SMD file is probably not the answer, if it was ever intended to be. the Examiner is not required to second-guess the SMD file. Its existence is sufficient that the mark has had use validated by the TMCH.

Other Topics (page 7-8)

These are policy proposals can be brought up when WG members are proposing changes to the URS policy itself. Charter asks us to address the question whether the URS should become a consensus policy applicable to legacy domains. Charter is not specific regarding whether such discussion should occur in phase I or phase II. This feedback illustrates that the ST didn't get to propose policy changes, it is for the WG to discuss and propose changes. when we reference the STI and IRT reports, we need to keep in mind they only had about 1-2 months to complete their work and produce a report; they were not standard PDP working groups and had limited charters and mandates, which were set by the Board This is feedback from one Provider, who may want to grow their business. Practitioners survey are from Complaints' side. Need to have a balanced solution when considering the input. There were plenty of practitioners that represent registrants in the Subgroup, although their experience was largely with the UDRP.

Duration of response period (Page 11)

One member believes that if the URS continues in its current form, it would affect valuable domain names. The ones the registrants that do want to defend them, 14 days are not sufficient. 20 days may be more appropriate. It should be based on the age of the domain name. If a domain is 3 months, it will have a shorter period to respond. If you own a domain name for 5-10 years, response period would be longer so less urgency. Several other WG members disagree. The URS is supposed to be an expedited proceeding so increasing the length of time of a streamlined proceeding defeats the purpose. At most, there could be an additional 3 or 4 days extension period for cause. The point is that there are enough circumstances that give rise to the URS 'quick response' that we should NOT make assumptions into policy. It is an assumption that an "aged" domain would not require a fast response. In Mexico, we have not been able to file a domain name case due to Courts ignorance about the subject and also, because it could take years to be solved. We're spinning out fo control - extending the time to respond to URS cases just because a domain registration is not new defeats the purpose of fast action to take down an infringing domain once it's discovered. The URS is meant to address clear and convincing cases of infringement. A person registers a domain name for less than $50 and brand owner find out about at some point and then files an injunction in court for tens of thousands of dollars. Where is the balance.

Examiners Guide (page 13)

The WIPO guidance for examiners took 1500 hours to develop. The WIPO guidance is relevant to the URS, the elements are shown are the same and the differences include the burden of proof, word limit, etc. A lot of WIPO guidance goes to the shade of grey issues. URS is for clear black/white cases, so if there is a URS guidance it would likely be abbreviated.

Duration of Suspension Period & Review of Implementation (page 21-23)

One WG member suggests to find out how much cost for registries & registrars to comply with the URS rules and procedures. Need to get data/feedback from the registries/registrars. Other WG members are not sure "cost of implementation of URS" for Registries/Registrars is relevant to effectiveness of URS. We don't need to do a cost/benefit analysis (the costs & benefits aren't ICANN's), the providers, registrars, registries need to be asked if they are overburdened by the costs of compliance. There is an action item to contact the registries/registrars about these issues. Timing TBD due to Sunrise & Claims survey launch.

Other topics (page 23-24)

One WG member thinks the HSTS issue is not difficult to fix. The Providers need to improve their technical applicability to resolve the issue. Renee Fossen from Forum disagrees. ACTION ITEM: Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses.

NEXT STEPS

ACTION ITEM: Staff to recirculate the Super Consolidated URS Topics Table document and ask all WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. ACTION ITEM: WG to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35. Later period to discuss larger policy issues.

________________________________

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

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

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

Without commenting on the specific opentime decision, I will note that the URS was, I believe, designed to be a system where the respondents didn't necessarily need to have lawyers to defend themselves, so I'm not sure the "they should have had better counsel" argument holds up. Also, I believe that the burden of proof in URS cases is meant to lie with the trademark holders... On Fri, Aug 10, 2018 at 2:34 PM, <gmlevine@researchtheworld.com> wrote:

I just want to jump in for the record regarding <opentime.com>. I have no skin in this exchange. The topic started out with URS decisions and suddenly swerved to "wrong" UDRP decisions. The <opentime.com> decision is not a "wrong" decision if by wrong one means that the record was crystal clear in Respondent's favor. As I read Georges' decision, Respondent's representative did less than a stellar job in presenting a defense: "Given the misrepresentations, conflicting and unsubstantiated statements, and lack of explanations by Respondent, this Panel based on the evidentiary record place before it, has doubts about the credibility of Respondent's claim of prior use of OPEN TIME and thus concludes that Complainant has prior and superior rights in OPENTIME." I take the decision to be a cautionary tale, one that defense counsel should pay attention to and learn from. Fortunately, Kyle Burns went to litigation counsel who understand how to marshal a defense (or in this case since the matter was settled by declaration that the registration was not unlawful, a proper claim under the ACPA). Gmlevine

-----Original Message----- From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org> On Behalf Of Nahitchevansky, Georges Sent: Thursday, August 9, 2018 6:16 PM To: George Kirikos <icann@leap.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018

George K. You miss the point. No one is arguing against discussing the issue on what a decision should contain or addressing the 7% issue. The renumeration point goes to the point of how detailed, etc a decision has to be in an expedited matter where a Panelist gets paid very little and has to turn around a decision quite quickly. It's all about finding a workable balance if you want quality panelists.

On your panelist point, there is something that some do not seem to appreciate or want to understand. A panelist usually spends much time reviewing a matter and the submissions made. As with any case, the claims will ultimately rise or fall on the parties' submissions and evidence and on how well the parties marshal/present their evidence and arguments. Ultimately, many of the decisions will turn on the evidence presented to the Panel and on the quality and credibility of such evidence.

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

-----Original Message----- From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org> On Behalf Of George Kirikos Sent: Thursday, August 9, 2018 5:43 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018

As Michael correctly noted, *all* cases should have reasons to support the determination. That's basic quality control that is missing here.

Georges N is trying to mix in panelist remuneration to the debate, which is not relevant. I'm sure he considers himself a "good" panelist, but even he makes mistakes in judgment, which isn't correlated to what he's paid. Case in point is the OpenTime.com UDRP:

http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-2328

which he ordered transferred to the complainant (in a long decision, which took time to write presumably). As it turns out, this went to court, and the outcome was that the domain stays with the domain owner (see attached judgment). So, I don't think "getting it right" is correlated in any way with the remuneration. You can be paid a lot and "get it wrong", or you can be paid peanuts but "get it right" -- it's all about one's standards.

For a given remuneration, panelists are expected to do the job with diligence, which includes giving reasons so that both sides (and the public) understand why the determination was made. Panelists shouldn't cut corners as some form of protest over pay that they willingly agreed to do for the job. Given how short URS complaints are (500 words max) and typical reading speed (100+ words per minute), the actual hourly rate of URS panelists is not insignificant (I believe they are batched in groups of 5 cases per panelist, too). Most responses start off with a standard template, so it should only take minutes to do proper reasons in most cases (especially the "slam dunk" ones).

Sincerely,

George Kirikos 416-588-0269 http://www.leap.com/

On Thu, Aug 9, 2018 at 5:14 PM, Nahitchevansky, Georges < ghn@kilpatricktownsend.com> wrote:

...

The issue of costs is that Panelists get paid a fairly low amount from the $300 or so filing. If you want decent panelists, we can’t make the process so burdensome that folks do not want to get involved. I recognize that being a panelist is more or less pro bono work, but the more requirements you impose on the decision the more burdensome it will become (particularly as this is an expedited proceeding with a short turn-around time frame). The bottom line is that in 93% of the cases (or even your 87% number) there were details provided (some more robust than others) – so panelists are as a whole providing decisions where the logic can be ascertained. We just need to come up with something easy and workable to address the 7% issue (or 13% by your count) in the context of an expedited proceeding.

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

From: Tushnet, Rebecca <rtushnet@law.harvard.edu> Sent: Thursday, August 9, 2018 4:32 PM

To: Nahitchevansky, Georges <ghn@kilpatricktownsend.com>; Ariel Liang <ariel.liang@icann.org>; gnso-rpm-wg@icann.org Subject: Re: ACTIONS & NOTES: RPM PDP WG 08 August 2018

I would think that the rules should aim for decisions that meet minimal standards for everyone, not just for most people. I have heard cost mentioned before, but I'm not sure what makes the 87% of decisions with at least a sentence explaining the basis for decision more costly or noticeably harder to create (especially if standard forms are provided), since I presume that the panelist has a basis for decision in his or her mind and thus doesn't need to do more work to generate that reason. Does NAF charge more for decisions that specify their reasoning?

________________________________

From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com> Sent: Thursday, August 9, 2018 4:02:07 PM To: Tushnet, Rebecca; Ariel Liang; gnso-rpm-wg@icann.org Subject: RE: ACTIONS & NOTES: RPM PDP WG 08 August 2018

Thank you for your comments. Well, while the sky is falling is obviously not the standard but saying and acting as though something is a significant due process issue, when it isn’t, is quite misleading. I think we can agree that what should be in a decision should be discussed (as noted in the documents already), but that has to be tempered by the fees being charged for a URS, the fees paid to panelists from such and the time needed to draft a decision. I just thought I would make this clear because some editorializing was being thrown out up front. Your welcome!

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

From: Tushnet, Rebecca <rtushnet@law.harvard.edu> Sent: Thursday, August 9, 2018 3:35 PM To: Nahitchevansky, Georges <ghn@kilpatricktownsend.com>; Ariel Liang <ariel.liang@icann.org>; gnso-rpm-wg@icann.org Subject: Re: ACTIONS & NOTES: RPM PDP WG 08 August 2018

I'm happy to take this up on the merits (among other things, I don't recall saying the sky was falling or understanding that there was consensus that sky disaster was the standard for recommending fixes) but I expect we will repeat ourselves a lot when we get to the "for WG Discussion" parts. My current request is for this suggestion/potential recommendation, which is already present in the document, to be repeated or otherwise cross-referenced so that it is part of more than Defenses in the main document. Thank you!

________________________________

From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com> Sent: Thursday, August 9, 2018 3:27:09 PM To: Tushnet, Rebecca; Ariel Liang; gnso-rpm-wg@icann.org Subject: RE: ACTIONS & NOTES: RPM PDP WG 08 August 2018

Rebecca:

I do not disagree with the notion that we should discuss what a decision should contain, but I don’t think we have a consensus as to what that should be in the URS context (given the pricing of URS proceedings). Moreover, a review of the URS cases makes your 13% number and comment of “significant due process and implementation issues” point questionable. At NAF for example, there were 827 cases that that your research assistants reviewed. I found a total of about 103 that your team flagged as having no articulated decisions. I would agree that in 58 cases the decisions lacked details, but in 45 cases there were details that sufficiently let you know what the case was about and the basis of the resolution. I am sure we can argue about these 45 cases and whether they should say more, but ultimately we are really only talking about 58 cases that actually do not have any specific details and just provide the standard and a resolution (although I note that most of these cases involve domain names based on fairly well known marks such as NISSAN, DATSUN, TEXACO, BLOOMBERG, BNP PARIBAS etc., so you pretty much know what trademark was involved.). In all, we are really talking about 7% of the cases that have no details, which is not significant.

Again, we can discuss what the decisions should provide, but I don’t think we ought to be qualifying this as a “significant” issue per se (as 93% of them have details). There are other issues being considered in the URS review that have better percentage numbers as an issue that are viewed as not being significant per se. The point is that the URS looks to be working appropriately and there are probably some tweaks and refinements needed but this is not sky is falling issue.

From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Thursday, August 9, 2018 1:22 PM To: Ariel Liang <ariel.liang@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018

My apologies for missing the meeting. Comment on the big document:

This is currently only covered under Defenses but I would put it for discussion/recommendations under 2. Examiners’ Guide/3. Other Issues because it goes beyond defenses: Decisions should contain basic information, including what the trademark is, what the finding of abuse is and/or what findings are on any defenses—13% of decisions did not, and this raises significant due process and implementation issues.

________________________________

From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org> on behalf of Ariel Liang <ariel.liang@icann.org> Sent: Wednesday, August 8, 2018 3:56:54 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018

Dear All,

Please see below the action items and notes captured by staff from the RPM PDP WG call held on 08 August 2018 (17:00-18:30 UTC). Staff have posted to the wiki space the action items and notes. Please note that these will be high-level notes and are not meant as a substitute for the recording. The recording, AC chat, and attendance records are posted on the wiki at: https://community.icann.org/x/uwNpBQ

Best Regards,

Ariel

Ariel Xinyue Liang

GNSO Policy Support Specialist

Internet Corporation for Assigned Names and Numbers (ICANN)

==

ACTION ITEMS:

Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. Staff to recirculate the Super Consolidated URS Topics Table document WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. WG members to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, during next week’s call. Later period to discuss larger policy issues.

NOTES:

Review Agenda/Statements of Interest

George Kirikos has become a member of the At-Large Community: https://community.icann.org/display/gnsosoi/George+Kirikos+SOI

General Comment on the Super Consolidated URS Topics Table Document

The topics in the table were developed by the WG members and deliberated on by the WG & URS Sub Teams. Each Sub Team then did very substantial work on data collection and reviewing what came back. While the actual Sub Team recommendations and suggestions captured in this document are what is intended the WG should discuss - to see if it wishes to develop policy or operational recommendations - discussion over what should be on the actual list of topics should not be reopened unless the WG agrees to do so. We encourage all WG members to review all the previous reports from each Sub Team, and all the documents they worked on. They are linked in this Super Consolidated document (page 2). The Super Consolidated document is a summary of findings and suggestions by the Sub Teams. The Table does not mean to limit/restrict recommendations from the WG members. If there is any issue overlapping with UDRP, can possibly be carried over to the phase II of the PDP. Is it possible to add additional topics to the Super Consolidated Table? One WG member said that access to the Courts, for example, is a topic he raised, which isn't in the table. Statute of Limitations, whether URS should apply to legacy gTLDs as a consensus policy, are just a few of the topics not in the table. He brought it up in November 2017 (see: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html ) and it was reflected in a later document. That's a critical issue for registrants. if they don't have access to the courts to challenge a URS decision, then it's a huge denial of their rights. While the chart is not meant to foreclose further discussion, it is a good faith attempt at capturing the work of the sub teams. The purpose of today's, and likely the next few, calls was to make sure this was an accurate and comprehensive reflection of our discussions so far. That said, WG members should bear in mind that we are seeking consensus, so items which are unlikely to achieve that may not be appropriate to reflect as a recommendation, but could be included in public comments on the Initial Report. Also, before adding items to this chart, we will want to work with staff to see whether such topics was previously discussed, and if so, the level of agreement/consensus. In other words, it is not necessary final, but is equally an opportunity to reintroduce topics which have been discussed, but for which consensus is/was not possible. Could we create a list of "missing issues" -- a list of issues raised in this call (and calls to follow); we can evaluate the nature and weight of these ideas later. Regarding the Action Items highlighted in column 3 of the table, Providers ST will do a first pass of the responses from the Providers to the follow-up questions, and then discuss the issues that they identified and proposed suggestions with the full WG.

Limited filing period (page 3)

One WG member believes that there should be limitation for filing period to bring URS Complaints, so the domain registered many years ago would not be subject to unfair treatment. He said a registrant who owns a domain for 20 years, for example, shouldn't have to be concerned about a policy that can take their domain down with very short time period to respond. Other WG members said this was discussed, and did not achieve agreement. That would only even be an option if the trademark pre-dated. This is unlikely to be a situation in practice where a URS was brought because it would probably not be a "slam dunk" case after 20 years unless there had been a change of circumstances. On the issue of delay and laches - as reported by the Docs Sub Team, the data did not provide any basis for which a policy recommendation should be made. The Providers and Practitioners Sub Teams also did not uncover any specific issues that came to either practitioners' or providers' attention.

Administrative Review (page 3-4)

One WG member asked whether ICANN should bring Providers into contractual relationship in order to enforce the URS Rules & Procedures. Another member said it probably need to be ICANN’s legal department to enforce the rules & procedure. URS Providers have MoU with ICANN. Whether it is ICANN’s compliance department or legal department to enforce the rules & procedures, it should not be controversial that Providers must abide by them. An MOU could be legally enforceable, depending on the circumstances.

500-word Complaint limit (page 4-5)

· On 500-word Complaint Limit - Practitioners' survey results were split (out of 12, 5 agree it's sufficient, 4 disagree); results included feedback from some that the word limit was too low: "arbitrary and often insufficient" and "should be slightly increased".

· One member said he understands and generally agrees with the decision not to suggest an expansion of the word limit, he wonders if there aren't situations (multi- domain challenges, etc.) where a Complainant or Respondent might be given the opportunity to request an expansion. This point can be captured for decisional phase.

· Another member suggested that perhaps providers can provide stats on the average word length of complaints, to see how close to the 500 words they are at present. (i.e. a table of distributions, e.g. 10% under 200 words, 20% between 201 and 300, etc.)

Amending the Complaint in light of GDPR/Temp Spec (page 5-6)

One member believes that 2-3 days might not be a good rule (e.g. weekends, time to research, etc.). Maybe 5 business days. WIPO’s approach to “doe complaints” has been very helpful and provides some comfort that the lack of true registrant/registrant organization data masked due to GDPR will not result in a deficient complaint for an omitted respondent. ACTION ITEM: Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. Forum is asking for amendment of the complaint in UDRP - under the rules that's not allowed in URS.

SMD Files (page 6-7)

SMD files are used for limited purpose of demonstrating the use. Recollection is that SMD files would be passed to the Examiners and relay the critical information related to the TM registration. That's why some people are surprised by the limited info SMD files would provide. The SMD files contain some basic human-readable information, with the rest of the information coded. For example, the trademark itself is human-readable but the applicable Nice classification is coded. A SMD file is used by registries/registrars for validation, and as Greg noted, to demonstrate use. From the TMCH provider: http://www.trademark-clearinghouse.com/help/faq/which-information-does -smd-file-contain If the intent of the STI was that the SMD file would be a file summary, that got lost somewhere along the way, way before the SMD file was designed by the TMCH providers. Rules 3(b)(v) Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use –which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse It might be useful to look at the spec that they relied on. But the real question is how should the examiner get the relevant data about the Complainant’s mark. The SMD file is probably not the answer, if it was ever intended to be. the Examiner is not required to second-guess the SMD file. Its existence is sufficient that the mark has had use validated by the TMCH.

Other Topics (page 7-8)

These are policy proposals can be brought up when WG members are proposing changes to the URS policy itself. Charter asks us to address the question whether the URS should become a consensus policy applicable to legacy domains. Charter is not specific regarding whether such discussion should occur in phase I or phase II. This feedback illustrates that the ST didn't get to propose policy changes, it is for the WG to discuss and propose changes. when we reference the STI and IRT reports, we need to keep in mind they only had about 1-2 months to complete their work and produce a report; they were not standard PDP working groups and had limited charters and mandates, which were set by the Board This is feedback from one Provider, who may want to grow their business. Practitioners survey are from Complaints' side. Need to have a balanced solution when considering the input. There were plenty of practitioners that represent registrants in the Subgroup, although their experience was largely with the UDRP.

Duration of response period (Page 11)

One member believes that if the URS continues in its current form, it would affect valuable domain names. The ones the registrants that do want to defend them, 14 days are not sufficient. 20 days may be more appropriate. It should be based on the age of the domain name. If a domain is 3 months, it will have a shorter period to respond. If you own a domain name for 5-10 years, response period would be longer so less urgency. Several other WG members disagree. The URS is supposed to be an expedited proceeding so increasing the length of time of a streamlined proceeding defeats the purpose. At most, there could be an additional 3 or 4 days extension period for cause. The point is that there are enough circumstances that give rise to the URS 'quick response' that we should NOT make assumptions into policy. It is an assumption that an "aged" domain would not require a fast response. In Mexico, we have not been able to file a domain name case due to Courts ignorance about the subject and also, because it could take years to be solved. We're spinning out fo control - extending the time to respond to URS cases just because a domain registration is not new defeats the purpose of fast action to take down an infringing domain once it's discovered. The URS is meant to address clear and convincing cases of infringement. A person registers a domain name for less than $50 and brand owner find out about at some point and then files an injunction in court for tens of thousands of dollars. Where is the balance.

Examiners Guide (page 13)

The WIPO guidance for examiners took 1500 hours to develop. The WIPO guidance is relevant to the URS, the elements are shown are the same and the differences include the burden of proof, word limit, etc. A lot of WIPO guidance goes to the shade of grey issues. URS is for clear black/white cases, so if there is a URS guidance it would likely be abbreviated.

Duration of Suspension Period & Review of Implementation (page 21-23)

One WG member suggests to find out how much cost for registries & registrars to comply with the URS rules and procedures. Need to get data/feedback from the registries/registrars. Other WG members are not sure "cost of implementation of URS" for Registries/Registrars is relevant to effectiveness of URS. We don't need to do a cost/benefit analysis (the costs & benefits aren't ICANN's), the providers, registrars, registries need to be asked if they are overburdened by the costs of compliance. There is an action item to contact the registries/registrars about these issues. Timing TBD due to Sunrise & Claims survey launch.

Other topics (page 23-24)

One WG member thinks the HSTS issue is not difficult to fix. The Providers need to improve their technical applicability to resolve the issue. Renee Fossen from Forum disagrees. ACTION ITEM: Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses.

NEXT STEPS

ACTION ITEM: Staff to recirculate the Super Consolidated URS Topics Table document and ask all WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. ACTION ITEM: WG to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35. Later period to discuss larger policy issues.

________________________________

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I'm unaware of URS cases being "batched in groups of 5 cases per panelist." (Any examples to support that statement would be appreciated.) And, given the relatively few URS cases that are being decided, I don't think that could practically even be an option. Examiners at the Forum have issued 96 URS determinations so far in 2018, over 220 days. So, that’s less than one determination every other day. At that rate, batching seems impossible. Finally, even if cases were batched, presumably they would involve different parties, different marks, different facts, etc., so I don't know that batching would make anything more efficient. Doug -----Original Message----- From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org> On Behalf Of George Kirikos Sent: Thursday, August 9, 2018 5:43 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 As Michael correctly noted, *all* cases should have reasons to support the determination. That's basic quality control that is missing here. Georges N is trying to mix in panelist remuneration to the debate, which is not relevant. I'm sure he considers himself a "good" panelist, but even he makes mistakes in judgment, which isn't correlated to what he's paid. Case in point is the OpenTime.com UDRP: http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-2328 which he ordered transferred to the complainant (in a long decision, which took time to write presumably). As it turns out, this went to court, and the outcome was that the domain stays with the domain owner (see attached judgment). So, I don't think "getting it right" is correlated in any way with the remuneration. You can be paid a lot and "get it wrong", or you can be paid peanuts but "get it right" -- it's all about one's standards. For a given remuneration, panelists are expected to do the job with diligence, which includes giving reasons so that both sides (and the public) understand why the determination was made. Panelists shouldn't cut corners as some form of protest over pay that they willingly agreed to do for the job. Given how short URS complaints are (500 words max) and typical reading speed (100+ words per minute), the actual hourly rate of URS panelists is not insignificant (I believe they are batched in groups of 5 cases per panelist, too). Most responses start off with a standard template, so it should only take minutes to do proper reasons in most cases (especially the "slam dunk" ones). Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Thu, Aug 9, 2018 at 5:14 PM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:

The issue of costs is that Panelists get paid a fairly low amount from the $300 or so filing. If you want decent panelists, we can’t make the process so burdensome that folks do not want to get involved. I recognize that being a panelist is more or less pro bono work, but the more requirements you impose on the decision the more burdensome it will become (particularly as this is an expedited proceeding with a short turn-around time frame). The bottom line is that in 93% of the cases (or even your 87% number) there were details provided (some more robust than others) – so panelists are as a whole providing decisions where the logic can be ascertained. We just need to come up with something easy and workable to address the 7% issue (or 13% by your count) in the context of an expedited proceeding.

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

From: Tushnet, Rebecca <rtushnet@law.harvard.edu> Sent: Thursday, August 9, 2018 4:32 PM

To: Nahitchevansky, Georges <ghn@kilpatricktownsend.com>; Ariel Liang <ariel.liang@icann.org>; gnso-rpm-wg@icann.org Subject: Re: ACTIONS & NOTES: RPM PDP WG 08 August 2018

I would think that the rules should aim for decisions that meet minimal standards for everyone, not just for most people. I have heard cost mentioned before, but I'm not sure what makes the 87% of decisions with at least a sentence explaining the basis for decision more costly or noticeably harder to create (especially if standard forms are provided), since I presume that the panelist has a basis for decision in his or her mind and thus doesn't need to do more work to generate that reason. Does NAF charge more for decisions that specify their reasoning?

________________________________

From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com> Sent: Thursday, August 9, 2018 4:02:07 PM To: Tushnet, Rebecca; Ariel Liang; gnso-rpm-wg@icann.org Subject: RE: ACTIONS & NOTES: RPM PDP WG 08 August 2018

Thank you for your comments. Well, while the sky is falling is obviously not the standard but saying and acting as though something is a significant due process issue, when it isn’t, is quite misleading. I think we can agree that what should be in a decision should be discussed (as noted in the documents already), but that has to be tempered by the fees being charged for a URS, the fees paid to panelists from such and the time needed to draft a decision. I just thought I would make this clear because some editorializing was being thrown out up front. Your welcome!

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

From: Tushnet, Rebecca <rtushnet@law.harvard.edu> Sent: Thursday, August 9, 2018 3:35 PM To: Nahitchevansky, Georges <ghn@kilpatricktownsend.com>; Ariel Liang <ariel.liang@icann.org>; gnso-rpm-wg@icann.org Subject: Re: ACTIONS & NOTES: RPM PDP WG 08 August 2018

I'm happy to take this up on the merits (among other things, I don't recall saying the sky was falling or understanding that there was consensus that sky disaster was the standard for recommending fixes) but I expect we will repeat ourselves a lot when we get to the "for WG Discussion" parts. My current request is for this suggestion/potential recommendation, which is already present in the document, to be repeated or otherwise cross-referenced so that it is part of more than Defenses in the main document. Thank you!

________________________________

From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com> Sent: Thursday, August 9, 2018 3:27:09 PM To: Tushnet, Rebecca; Ariel Liang; gnso-rpm-wg@icann.org Subject: RE: ACTIONS & NOTES: RPM PDP WG 08 August 2018

Rebecca:

I do not disagree with the notion that we should discuss what a decision should contain, but I don’t think we have a consensus as to what that should be in the URS context (given the pricing of URS proceedings). Moreover, a review of the URS cases makes your 13% number and comment of “significant due process and implementation issues” point questionable. At NAF for example, there were 827 cases that that your research assistants reviewed. I found a total of about 103 that your team flagged as having no articulated decisions. I would agree that in 58 cases the decisions lacked details, but in 45 cases there were details that sufficiently let you know what the case was about and the basis of the resolution. I am sure we can argue about these 45 cases and whether they should say more, but ultimately we are really only talking about 58 cases that actually do not have any specific details and just provide the standard and a resolution (although I note that most of these cases involve domain names based on fairly well known marks such as NISSAN, DATSUN, TEXACO, BLOOMBERG, BNP PARIBAS etc., so you pretty much know what trademark was involved.). In all, we are really talking about 7% of the cases that have no details, which is not significant.

Again, we can discuss what the decisions should provide, but I don’t think we ought to be qualifying this as a “significant” issue per se (as 93% of them have details). There are other issues being considered in the URS review that have better percentage numbers as an issue that are viewed as not being significant per se. The point is that the URS looks to be working appropriately and there are probably some tweaks and refinements needed but this is not sky is falling issue.

From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Thursday, August 9, 2018 1:22 PM To: Ariel Liang <ariel.liang@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018

My apologies for missing the meeting. Comment on the big document:

This is currently only covered under Defenses but I would put it for discussion/recommendations under 2. Examiners’ Guide/3. Other Issues because it goes beyond defenses: Decisions should contain basic information, including what the trademark is, what the finding of abuse is and/or what findings are on any defenses—13% of decisions did not, and this raises significant due process and implementation issues.

________________________________

From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org> on behalf of Ariel Liang <ariel.liang@icann.org> Sent: Wednesday, August 8, 2018 3:56:54 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018

Dear All,

Please see below the action items and notes captured by staff from the RPM PDP WG call held on 08 August 2018 (17:00-18:30 UTC). Staff have posted to the wiki space the action items and notes. Please note that these will be high-level notes and are not meant as a substitute for the recording. The recording, AC chat, and attendance records are posted on the wiki at: https://community.icann.org/x/uwNpBQ

Best Regards,

Ariel

Ariel Xinyue Liang

GNSO Policy Support Specialist

Internet Corporation for Assigned Names and Numbers (ICANN)

==

ACTION ITEMS:

Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. Staff to recirculate the Super Consolidated URS Topics Table document WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. WG members to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, during next week’s call. Later period to discuss larger policy issues.

NOTES:

Review Agenda/Statements of Interest

George Kirikos has become a member of the At-Large Community: https://community.icann.org/display/gnsosoi/George+Kirikos+SOI

General Comment on the Super Consolidated URS Topics Table Document

The topics in the table were developed by the WG members and deliberated on by the WG & URS Sub Teams. Each Sub Team then did very substantial work on data collection and reviewing what came back. While the actual Sub Team recommendations and suggestions captured in this document are what is intended the WG should discuss - to see if it wishes to develop policy or operational recommendations - discussion over what should be on the actual list of topics should not be reopened unless the WG agrees to do so. We encourage all WG members to review all the previous reports from each Sub Team, and all the documents they worked on. They are linked in this Super Consolidated document (page 2). The Super Consolidated document is a summary of findings and suggestions by the Sub Teams. The Table does not mean to limit/restrict recommendations from the WG members. If there is any issue overlapping with UDRP, can possibly be carried over to the phase II of the PDP. Is it possible to add additional topics to the Super Consolidated Table? One WG member said that access to the Courts, for example, is a topic he raised, which isn't in the table. Statute of Limitations, whether URS should apply to legacy gTLDs as a consensus policy, are just a few of the topics not in the table. He brought it up in November 2017 (see: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html ) and it was reflected in a later document. That's a critical issue for registrants. if they don't have access to the courts to challenge a URS decision, then it's a huge denial of their rights. While the chart is not meant to foreclose further discussion, it is a good faith attempt at capturing the work of the sub teams. The purpose of today's, and likely the next few, calls was to make sure this was an accurate and comprehensive reflection of our discussions so far. That said, WG members should bear in mind that we are seeking consensus, so items which are unlikely to achieve that may not be appropriate to reflect as a recommendation, but could be included in public comments on the Initial Report. Also, before adding items to this chart, we will want to work with staff to see whether such topics was previously discussed, and if so, the level of agreement/consensus. In other words, it is not necessary final, but is equally an opportunity to reintroduce topics which have been discussed, but for which consensus is/was not possible. Could we create a list of "missing issues" -- a list of issues raised in this call (and calls to follow); we can evaluate the nature and weight of these ideas later. Regarding the Action Items highlighted in column 3 of the table, Providers ST will do a first pass of the responses from the Providers to the follow-up questions, and then discuss the issues that they identified and proposed suggestions with the full WG.

Limited filing period (page 3)

One WG member believes that there should be limitation for filing period to bring URS Complaints, so the domain registered many years ago would not be subject to unfair treatment. He said a registrant who owns a domain for 20 years, for example, shouldn't have to be concerned about a policy that can take their domain down with very short time period to respond. Other WG members said this was discussed, and did not achieve agreement. That would only even be an option if the trademark pre-dated. This is unlikely to be a situation in practice where a URS was brought because it would probably not be a "slam dunk" case after 20 years unless there had been a change of circumstances. On the issue of delay and laches - as reported by the Docs Sub Team, the data did not provide any basis for which a policy recommendation should be made. The Providers and Practitioners Sub Teams also did not uncover any specific issues that came to either practitioners' or providers' attention.

Administrative Review (page 3-4)

One WG member asked whether ICANN should bring Providers into contractual relationship in order to enforce the URS Rules & Procedures. Another member said it probably need to be ICANN’s legal department to enforce the rules & procedure. URS Providers have MoU with ICANN. Whether it is ICANN’s compliance department or legal department to enforce the rules & procedures, it should not be controversial that Providers must abide by them. An MOU could be legally enforceable, depending on the circumstances.

500-word Complaint limit (page 4-5)

· On 500-word Complaint Limit - Practitioners' survey results were split (out of 12, 5 agree it's sufficient, 4 disagree); results included feedback from some that the word limit was too low: "arbitrary and often insufficient" and "should be slightly increased".

· One member said he understands and generally agrees with the decision not to suggest an expansion of the word limit, he wonders if there aren't situations (multi- domain challenges, etc.) where a Complainant or Respondent might be given the opportunity to request an expansion. This point can be captured for decisional phase.

· Another member suggested that perhaps providers can provide stats on the average word length of complaints, to see how close to the 500 words they are at present. (i.e. a table of distributions, e.g. 10% under 200 words, 20% between 201 and 300, etc.)

Amending the Complaint in light of GDPR/Temp Spec (page 5-6)

One member believes that 2-3 days might not be a good rule (e.g. weekends, time to research, etc.). Maybe 5 business days. WIPO’s approach to “doe complaints” has been very helpful and provides some comfort that the lack of true registrant/registrant organization data masked due to GDPR will not result in a deficient complaint for an omitted respondent. ACTION ITEM: Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. Forum is asking for amendment of the complaint in UDRP - under the rules that's not allowed in URS.

SMD Files (page 6-7)

SMD files are used for limited purpose of demonstrating the use. Recollection is that SMD files would be passed to the Examiners and relay the critical information related to the TM registration. That's why some people are surprised by the limited info SMD files would provide. The SMD files contain some basic human-readable information, with the rest of the information coded. For example, the trademark itself is human-readable but the applicable Nice classification is coded. A SMD file is used by registries/registrars for validation, and as Greg noted, to demonstrate use. From the TMCH provider: http://www.trademark-clearinghouse.com/help/faq/which-information-does -smd-file-contain If the intent of the STI was that the SMD file would be a file summary, that got lost somewhere along the way, way before the SMD file was designed by the TMCH providers. Rules 3(b)(v) Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use –which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse It might be useful to look at the spec that they relied on. But the real question is how should the examiner get the relevant data about the Complainant’s mark. The SMD file is probably not the answer, if it was ever intended to be. the Examiner is not required to second-guess the SMD file. Its existence is sufficient that the mark has had use validated by the TMCH.

Other Topics (page 7-8)

These are policy proposals can be brought up when WG members are proposing changes to the URS policy itself. Charter asks us to address the question whether the URS should become a consensus policy applicable to legacy domains. Charter is not specific regarding whether such discussion should occur in phase I or phase II. This feedback illustrates that the ST didn't get to propose policy changes, it is for the WG to discuss and propose changes. when we reference the STI and IRT reports, we need to keep in mind they only had about 1-2 months to complete their work and produce a report; they were not standard PDP working groups and had limited charters and mandates, which were set by the Board This is feedback from one Provider, who may want to grow their business. Practitioners survey are from Complaints' side. Need to have a balanced solution when considering the input. There were plenty of practitioners that represent registrants in the Subgroup, although their experience was largely with the UDRP.

Duration of response period (Page 11)

One member believes that if the URS continues in its current form, it would affect valuable domain names. The ones the registrants that do want to defend them, 14 days are not sufficient. 20 days may be more appropriate. It should be based on the age of the domain name. If a domain is 3 months, it will have a shorter period to respond. If you own a domain name for 5-10 years, response period would be longer so less urgency. Several other WG members disagree. The URS is supposed to be an expedited proceeding so increasing the length of time of a streamlined proceeding defeats the purpose. At most, there could be an additional 3 or 4 days extension period for cause. The point is that there are enough circumstances that give rise to the URS 'quick response' that we should NOT make assumptions into policy. It is an assumption that an "aged" domain would not require a fast response. In Mexico, we have not been able to file a domain name case due to Courts ignorance about the subject and also, because it could take years to be solved. We're spinning out fo control - extending the time to respond to URS cases just because a domain registration is not new defeats the purpose of fast action to take down an infringing domain once it's discovered. The URS is meant to address clear and convincing cases of infringement. A person registers a domain name for less than $50 and brand owner find out about at some point and then files an injunction in court for tens of thousands of dollars. Where is the balance.

Examiners Guide (page 13)

The WIPO guidance for examiners took 1500 hours to develop. The WIPO guidance is relevant to the URS, the elements are shown are the same and the differences include the burden of proof, word limit, etc. A lot of WIPO guidance goes to the shade of grey issues. URS is for clear black/white cases, so if there is a URS guidance it would likely be abbreviated.

Duration of Suspension Period & Review of Implementation (page 21-23)

One WG member suggests to find out how much cost for registries & registrars to comply with the URS rules and procedures. Need to get data/feedback from the registries/registrars. Other WG members are not sure "cost of implementation of URS" for Registries/Registrars is relevant to effectiveness of URS. We don't need to do a cost/benefit analysis (the costs & benefits aren't ICANN's), the providers, registrars, registries need to be asked if they are overburdened by the costs of compliance. There is an action item to contact the registries/registrars about these issues. Timing TBD due to Sunrise & Claims survey launch.

Other topics (page 23-24)

One WG member thinks the HSTS issue is not difficult to fix. The Providers need to improve their technical applicability to resolve the issue. Renee Fossen from Forum disagrees. ACTION ITEM: Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses.

NEXT STEPS

ACTION ITEM: Staff to recirculate the Super Consolidated URS Topics Table document and ask all WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. ACTION ITEM: WG to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35. Later period to discuss larger policy issues.

________________________________

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

________________________________

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

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

Without going into whether the correct number is 7% or 13%, it strikes me that either would be sufficient for the group to look into, and to seek a remedy for. 7% is not an insubstantial number, considering the appropriate number of decisions which should be rendered without details is 0. Sent from my iPhone

On Aug 9, 2018, at 4:27 PM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:

Rebecca:

I do not disagree with the notion that we should discuss what a decision should contain, but I don’t think we have a consensus as to what that should be in the URS context (given the pricing of URS proceedings). Moreover, a review of the URS cases makes your 13% number and comment of “significant due process and implementation issues” point questionable. At NAF for example, there were 827 cases that that your research assistants reviewed. I found a total of about 103 that your team flagged as having no articulated decisions. I would agree that in 58 cases the decisions lacked details, but in 45 cases there were details that sufficiently let you know what the case was about and the basis of the resolution. I am sure we can argue about these 45 cases and whether they should say more, but ultimately we are really only talking about 58 cases that actually do not have any specific details and just provide the standard and a resolution (although I note that most of these cases involve domain names based on fairly well known marks such as NISSAN, DATSUN, TEXACO, BLOOMBERG, BNP PARIBAS etc., so you pretty much know what trademark was involved.). In all, we are really talking about 7% of the cases that have no details, which is not significant.

Again, we can discuss what the decisions should provide, but I don’t think we ought to be qualifying this as a “significant” issue per se (as 93% of them have details). There are other issues being considered in the URS review that have better percentage numbers as an issue that are viewed as not being significant per se. The point is that the URS looks to be working appropriately and there are probably some tweaks and refinements needed but this is not sky is falling issue.

From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Thursday, August 9, 2018 1:22 PM To: Ariel Liang <ariel.liang@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018

My apologies for missing the meeting. Comment on the big document: This is currently only covered under Defenses but I would put it for discussion/recommendations under 2. Examiners’ Guide/3. Other Issues because it goes beyond defenses: Decisions should contain basic information, including what the trademark is, what the finding of abuse is and/or what findings are on any defenses—13% of decisions did not, and this raises significant due process and implementation issues. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org> on behalf of Ariel Liang <ariel.liang@icann.org> Sent: Wednesday, August 8, 2018 3:56:54 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018

Dear All,

Please see below the action items and notes captured by staff from the RPM PDP WG call held on 08 August 2018 (17:00-18:30 UTC). Staff have posted to the wiki space the action items and notes. Please note that these will be high-level notes and are not meant as a substitute for the recording. The recording, AC chat, and attendance records are posted on the wiki at: https://community.icann.org/x/uwNpBQ

Best Regards, Ariel

Ariel Xinyue Liang GNSO Policy Support Specialist Internet Corporation for Assigned Names and Numbers (ICANN)

== ACTION ITEMS: Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. Staff to recirculate the Super Consolidated URS Topics Table document WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. WG members to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, during next week’s call. Later period to discuss larger policy issues.

NOTES: Review Agenda/Statements of Interest George Kirikos has become a member of the At-Large Community: https://community.icann.org/display/gnsosoi/George+Kirikos+SOI

General Comment on the Super Consolidated URS Topics Table Document The topics in the table were developed by the WG members and deliberated on by the WG & URS Sub Teams. Each Sub Team then did very substantial work on data collection and reviewing what came back. While the actual Sub Team recommendations and suggestions captured in this document are what is intended the WG should discuss - to see if it wishes to develop policy or operational recommendations - discussion over what should be on the actual list of topics should not be reopened unless the WG agrees to do so. We encourage all WG members to review all the previous reports from each Sub Team, and all the documents they worked on. They are linked in this Super Consolidated document (page 2). The Super Consolidated document is a summary of findings and suggestions by the Sub Teams. The Table does not mean to limit/restrict recommendations from the WG members. If there is any issue overlapping with UDRP, can possibly be carried over to the phase II of the PDP. Is it possible to add additional topics to the Super Consolidated Table? One WG member said that access to the Courts, for example, is a topic he raised, which isn't in the table. Statute of Limitations, whether URS should apply to legacy gTLDs as a consensus policy, are just a few of the topics not in the table. He brought it up in November 2017 (see: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html ) and it was reflected in a later document. That's a critical issue for registrants. if they don't have access to the courts to challenge a URS decision, then it's a huge denial of their rights. While the chart is not meant to foreclose further discussion, it is a good faith attempt at capturing the work of the sub teams. The purpose of today's, and likely the next few, calls was to make sure this was an accurate and comprehensive reflection of our discussions so far. That said, WG members should bear in mind that we are seeking consensus, so items which are unlikely to achieve that may not be appropriate to reflect as a recommendation, but could be included in public comments on the Initial Report. Also, before adding items to this chart, we will want to work with staff to see whether such topics was previously discussed, and if so, the level of agreement/consensus. In other words, it is not necessary final, but is equally an opportunity to reintroduce topics which have been discussed, but for which consensus is/was not possible. Could we create a list of "missing issues" -- a list of issues raised in this call (and calls to follow); we can evaluate the nature and weight of these ideas later. Regarding the Action Items highlighted in column 3 of the table, Providers ST will do a first pass of the responses from the Providers to the follow-up questions, and then discuss the issues that they identified and proposed suggestions with the full WG.

Limited filing period (page 3) One WG member believes that there should be limitation for filing period to bring URS Complaints, so the domain registered many years ago would not be subject to unfair treatment. He said a registrant who owns a domain for 20 years, for example, shouldn't have to be concerned about a policy that can take their domain down with very short time period to respond. Other WG members said this was discussed, and did not achieve agreement. That would only even be an option if the trademark pre-dated. This is unlikely to be a situation in practice where a URS was brought because it would probably not be a "slam dunk" case after 20 years unless there had been a change of circumstances. On the issue of delay and laches - as reported by the Docs Sub Team, the data did not provide any basis for which a policy recommendation should be made. The Providers and Practitioners Sub Teams also did not uncover any specific issues that came to either practitioners' or providers' attention.

Administrative Review (page 3-4) One WG member asked whether ICANN should bring Providers into contractual relationship in order to enforce the URS Rules & Procedures. Another member said it probably need to be ICANN’s legal department to enforce the rules & procedure. URS Providers have MoU with ICANN. Whether it is ICANN’s compliance department or legal department to enforce the rules & procedures, it should not be controversial that Providers must abide by them. An MOU could be legally enforceable, depending on the circumstances.

500-word Complaint limit (page 4-5) · On 500-word Complaint Limit - Practitioners' survey results were split (out of 12, 5 agree it's sufficient, 4 disagree); results included feedback from some that the word limit was too low: "arbitrary and often insufficient" and "should be slightly increased". · One member said he understands and generally agrees with the decision not to suggest an expansion of the word limit, he wonders if there aren't situations (multi- domain challenges, etc.) where a Complainant or Respondent might be given the opportunity to request an expansion. This point can be captured for decisional phase. · Another member suggested that perhaps providers can provide stats on the average word length of complaints, to see how close to the 500 words they are at present. (i.e. a table of distributions, e.g. 10% under 200 words, 20% between 201 and 300, etc.)

Amending the Complaint in light of GDPR/Temp Spec (page 5-6) One member believes that 2-3 days might not be a good rule (e.g. weekends, time to research, etc.). Maybe 5 business days. WIPO’s approach to “doe complaints” has been very helpful and provides some comfort that the lack of true registrant/registrant organization data masked due to GDPR will not result in a deficient complaint for an omitted respondent. ACTION ITEM: Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. Forum is asking for amendment of the complaint in UDRP - under the rules that's not allowed in URS.

SMD Files (page 6-7) SMD files are used for limited purpose of demonstrating the use. Recollection is that SMD files would be passed to the Examiners and relay the critical information related to the TM registration. That's why some people are surprised by the limited info SMD files would provide. The SMD files contain some basic human-readable information, with the rest of the information coded. For example, the trademark itself is human-readable but the applicable Nice classification is coded. A SMD file is used by registries/registrars for validation, and as Greg noted, to demonstrate use. From the TMCH provider: http://www.trademark-clearinghouse.com/help/faq/which-information-does-smd-f... If the intent of the STI was that the SMD file would be a file summary, that got lost somewhere along the way, way before the SMD file was designed by the TMCH providers. Rules 3(b)(v) Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use –which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse It might be useful to look at the spec that they relied on. But the real question is how should the examiner get the relevant data about the Complainant’s mark. The SMD file is probably not the answer, if it was ever intended to be. the Examiner is not required to second-guess the SMD file. Its existence is sufficient that the mark has had use validated by the TMCH.

Other Topics (page 7-8) These are policy proposals can be brought up when WG members are proposing changes to the URS policy itself. Charter asks us to address the question whether the URS should become a consensus policy applicable to legacy domains. Charter is not specific regarding whether such discussion should occur in phase I or phase II. This feedback illustrates that the ST didn't get to propose policy changes, it is for the WG to discuss and propose changes. when we reference the STI and IRT reports, we need to keep in mind they only had about 1-2 months to complete their work and produce a report; they were not standard PDP working groups and had limited charters and mandates, which were set by the Board This is feedback from one Provider, who may want to grow their business. Practitioners survey are from Complaints' side. Need to have a balanced solution when considering the input. There were plenty of practitioners that represent registrants in the Subgroup, although their experience was largely with the UDRP.

Duration of response period (Page 11) One member believes that if the URS continues in its current form, it would affect valuable domain names. The ones the registrants that do want to defend them, 14 days are not sufficient. 20 days may be more appropriate. It should be based on the age of the domain name. If a domain is 3 months, it will have a shorter period to respond. If you own a domain name for 5-10 years, response period would be longer so less urgency. Several other WG members disagree. The URS is supposed to be an expedited proceeding so increasing the length of time of a streamlined proceeding defeats the purpose. At most, there could be an additional 3 or 4 days extension period for cause. The point is that there are enough circumstances that give rise to the URS 'quick response' that we should NOT make assumptions into policy. It is an assumption that an "aged" domain would not require a fast response. In Mexico, we have not been able to file a domain name case due to Courts ignorance about the subject and also, because it could take years to be solved. We're spinning out fo control - extending the time to respond to URS cases just because a domain registration is not new defeats the purpose of fast action to take down an infringing domain once it's discovered. The URS is meant to address clear and convincing cases of infringement. A person registers a domain name for less than $50 and brand owner find out about at some point and then files an injunction in court for tens of thousands of dollars. Where is the balance.

Examiners Guide (page 13) The WIPO guidance for examiners took 1500 hours to develop. The WIPO guidance is relevant to the URS, the elements are shown are the same and the differences include the burden of proof, word limit, etc. A lot of WIPO guidance goes to the shade of grey issues. URS is for clear black/white cases, so if there is a URS guidance it would likely be abbreviated.

Duration of Suspension Period & Review of Implementation (page 21-23) One WG member suggests to find out how much cost for registries & registrars to comply with the URS rules and procedures. Need to get data/feedback from the registries/registrars. Other WG members are not sure "cost of implementation of URS" for Registries/Registrars is relevant to effectiveness of URS. We don't need to do a cost/benefit analysis (the costs & benefits aren't ICANN's), the providers, registrars, registries need to be asked if they are overburdened by the costs of compliance. There is an action item to contact the registries/registrars about these issues. Timing TBD due to Sunrise & Claims survey launch.

Other topics (page 23-24) One WG member thinks the HSTS issue is not difficult to fix. The Providers need to improve their technical applicability to resolve the issue. Renee Fossen from Forum disagrees. ACTION ITEM: Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses.

NEXT STEPS ACTION ITEM: Staff to recirculate the Super Consolidated URS Topics Table document and ask all WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. ACTION ITEM: WG to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35. Later period to discuss larger policy issues.

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

***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

Thank you Greg. I was looking for that email and went back through what I had reviewed. The bottom line is that of the 103 cases that had been marked as having no rational, there were 45 that included enough to know what the case had been about and the rationale. That meant that 7% just reiterated the standard and ruled in favor of a party with nothing to deduce the rationale. Of those 7%, though, a number of cases involved domain names that were based on a well-known trademark and it would not take much to understand that a domain name that was simply BRAND + gTLD likely involved cybersquatting. So in my view while there are some cases that had no rationale, I do not believe we are talking overall about cases that involved rulings with no explanations regarding domain names that primarily involved a generic word with a gTLD. Most of the 58 cases (or 103) that arguably had no specific rationale involved domain names that related to trademarks that are known, which again suggests something about the ruling. Put another way, there is a conceptual difference between a case that involves a domain name based on a well-known brand such as <cocacola.beverage> and one that involves a generic word such as <fashion.clothes>. If the cases that have no articulated rationale primarily involved the latter type of domains, I would be much more concerned. But if they mostly relate to known brands, I’m not sure that this suggests that there were errors committed by the panelist. Also, I do not believe that the 58 decisions at issue actually resulted in any appeals, which does suggest that perhaps the decisions were not unfounded. In any event, rather than go back and forth about whether we are talking about 7% or 13% of cases without a stated rationale, I think the solution is to just say that there were several cases that had no clearly stated rationale without getting into percentages. After all, we are more or less in agreement that close to 90% of the cases had articulated rationale and that there should be some tweak to address the minimum of what a URS decision should provide. Georges Nahitchevansky From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Greg Shatan Sent: Monday, February 10, 2020 1:42 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] All, Here is the Georges Nahitchevansky email that was referred to in last week's discussion of the percentage of URS decisions that lacked a rationale. There was a subsequent discussion, so I recommend going back to the list if you want to see the follow-up. Greg ---------- Forwarded message --------- From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Date: Thu, Aug 9, 2018 at 3:27 PM Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>, Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>, gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Rebecca: I do not disagree with the notion that we should discuss what a decision should contain, but I don’t think we have a consensus as to what that should be in the URS context (given the pricing of URS proceedings). Moreover, a review of the URS cases makes your 13% number and comment of “significant due process and implementation issues” point questionable. At NAF for example, there were 827 cases that that your research assistants reviewed. I found a total of about 103 that your team flagged as having no articulated decisions. I would agree that in 58 cases the decisions lacked details, but in 45 cases there were details that sufficiently let you know what the case was about and the basis of the resolution. I am sure we can argue about these 45 cases and whether they should say more, but ultimately we are really only talking about 58 cases that actually do not have any specific details and just provide the standard and a resolution (although I note that most of these cases involve domain names based on fairly well known marks such as NISSAN, DATSUN, TEXACO, BLOOMBERG, BNP PARIBAS etc., so you pretty much know what trademark was involved.). In all, we are really talking about 7% of the cases that have no details, which is not significant. Again, we can discuss what the decisions should provide, but I don’t think we ought to be qualifying this as a “significant” issue per se (as 93% of them have details). There are other issues being considered in the URS review that have better percentage numbers as an issue that are viewed as not being significant per se. The point is that the URS looks to be working appropriately and there are probably some tweaks and refinements needed but this is not sky is falling issue. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Thursday, August 9, 2018 1:22 PM To: Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 My apologies for missing the meeting. Comment on the big document: This is currently only covered under Defenses but I would put it for discussion/recommendations under 2. Examiners’ Guide/3. Other Issues because it goes beyond defenses: Decisions should contain basic information, including what the trademark is, what the finding of abuse is and/or what findings are on any defenses—13% of decisions did not, and this raises significant due process and implementation issues. ________________________________ From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>> Sent: Wednesday, August 8, 2018 3:56:54 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 Dear All, Please see below the action items and notes captured by staff from the RPM PDP WG call held on 08 August 2018 (17:00-18:30 UTC). Staff have posted to the wiki space the action items and notes. Please note that these will be high-level notes and are not meant as a substitute for the recording. The recording, AC chat, and attendance records are posted on the wiki at: https://community.icann.org/x/uwNpBQ<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_uwNpBQ&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=gcgRms-bmezGQQmwXCqLMQXOdSv3gly_0bWYNSuRlY8&e=> Best Regards, Ariel Ariel Xinyue Liang GNSO Policy Support Specialist Internet Corporation for Assigned Names and Numbers (ICANN) == ACTION ITEMS: * Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. * Staff to recirculate the Super Consolidated URS Topics Table document * WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * WG members to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, during next week’s call. Later period to discuss larger policy issues. NOTES: Review Agenda/Statements of Interest * George Kirikos has become a member of the At-Large Community: https://community.icann.org/display/gnsosoi/George+Kirikos+SOI<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_gnsosoi_George-2BKirikos-2BSOI&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=8-YfNNseZ7YW77BHJT9ciEr_I08JQcazWKn1rxNI900&e=> General Comment on the Super Consolidated URS Topics Table Document * The topics in the table were developed by the WG members and deliberated on by the WG & URS Sub Teams. Each Sub Team then did very substantial work on data collection and reviewing what came back. While the actual Sub Team recommendations and suggestions captured in this document are what is intended the WG should discuss - to see if it wishes to develop policy or operational recommendations - discussion over what should be on the actual list of topics should not be reopened unless the WG agrees to do so. We encourage all WG members to review all the previous reports from each Sub Team, and all the documents they worked on. They are linked in this Super Consolidated document (page 2). * The Super Consolidated document is a summary of findings and suggestions by the Sub Teams. The Table does not mean to limit/restrict recommendations from the WG members. If there is any issue overlapping with UDRP, can possibly be carried over to the phase II of the PDP. * Is it possible to add additional topics to the Super Consolidated Table? One WG member said that access to the Courts, for example, is a topic he raised, which isn't in the table. Statute of Limitations, whether URS should apply to legacy gTLDs as a consensus policy, are just a few of the topics not in the table. He brought it up in November 2017 (see: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html ) and it was reflected in a later document. That's a critical issue for registrants. if they don't have access to the courts to challenge a URS decision, then it's a huge denial of their rights. * While the chart is not meant to foreclose further discussion, it is a good faith attempt at capturing the work of the sub teams. The purpose of today's, and likely the next few, calls was to make sure this was an accurate and comprehensive reflection of our discussions so far. That said, WG members should bear in mind that we are seeking consensus, so items which are unlikely to achieve that may not be appropriate to reflect as a recommendation, but could be included in public comments on the Initial Report. Also, before adding items to this chart, we will want to work with staff to see whether such topics was previously discussed, and if so, the level of agreement/consensus. In other words, it is not necessary final, but is equally an opportunity to reintroduce topics which have been discussed, but for which consensus is/was not possible. * Could we create a list of "missing issues" -- a list of issues raised in this call (and calls to follow); we can evaluate the nature and weight of these ideas later. * Regarding the Action Items highlighted in column 3 of the table, Providers ST will do a first pass of the responses from the Providers to the follow-up questions, and then discuss the issues that they identified and proposed suggestions with the full WG. Limited filing period (page 3) * One WG member believes that there should be limitation for filing period to bring URS Complaints, so the domain registered many years ago would not be subject to unfair treatment. He said a registrant who owns a domain for 20 years, for example, shouldn't have to be concerned about a policy that can take their domain down with very short time period to respond. * Other WG members said this was discussed, and did not achieve agreement. That would only even be an option if the trademark pre-dated. This is unlikely to be a situation in practice where a URS was brought because it would probably not be a "slam dunk" case after 20 years unless there had been a change of circumstances. * On the issue of delay and laches - as reported by the Docs Sub Team, the data did not provide any basis for which a policy recommendation should be made. The Providers and Practitioners Sub Teams also did not uncover any specific issues that came to either practitioners' or providers' attention. Administrative Review (page 3-4) * One WG member asked whether ICANN should bring Providers into contractual relationship in order to enforce the URS Rules & Procedures. Another member said it probably need to be ICANN’s legal department to enforce the rules & procedure. * URS Providers have MoU with ICANN. Whether it is ICANN’s compliance department or legal department to enforce the rules & procedures, it should not be controversial that Providers must abide by them. * An MOU could be legally enforceable, depending on the circumstances. 500-word Complaint limit (page 4-5) • On 500-word Complaint Limit - Practitioners' survey results were split (out of 12, 5 agree it's sufficient, 4 disagree); results included feedback from some that the word limit was too low: "arbitrary and often insufficient" and "should be slightly increased". • One member said he understands and generally agrees with the decision not to suggest an expansion of the word limit, he wonders if there aren't situations (multi- domain challenges, etc.) where a Complainant or Respondent might be given the opportunity to request an expansion. This point can be captured for decisional phase. • Another member suggested that perhaps providers can provide stats on the average word length of complaints, to see how close to the 500 words they are at present. (i.e. a table of distributions, e.g. 10% under 200 words, 20% between 201 and 300, etc.) Amending the Complaint in light of GDPR/Temp Spec (page 5-6) * One member believes that 2-3 days might not be a good rule (e.g. weekends, time to research, etc.). Maybe 5 business days. * WIPO’s approach to “doe complaints” has been very helpful and provides some comfort that the lack of true registrant/registrant organization data masked due to GDPR will not result in a deficient complaint for an omitted respondent. * ACTION ITEM: Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Forum is asking for amendment of the complaint in UDRP - under the rules that's not allowed in URS. SMD Files (page 6-7) * SMD files are used for limited purpose of demonstrating the use. * Recollection is that SMD files would be passed to the Examiners and relay the critical information related to the TM registration. That's why some people are surprised by the limited info SMD files would provide. * The SMD files contain some basic human-readable information, with the rest of the information coded. For example, the trademark itself is human-readable but the applicable Nice classification is coded. A SMD file is used by registries/registrars for validation, and as Greg noted, to demonstrate use. From the TMCH provider: http://www.trademark-clearinghouse.com/help/faq/which-information-does-smd-file-contain<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearinghouse.com_help_faq_which-2Dinformation-2Ddoes-2Dsmd-2Dfile-2Dcontain&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=v3df_qE8Dw_U7YY7_IfhIMgGSxt-a44LbNskorrbTIg&e=> * If the intent of the STI was that the SMD file would be a file summary, that got lost somewhere along the way, way before the SMD file was designed by the TMCH providers. * Rules 3(b)(v) Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use –which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse * It might be useful to look at the spec that they relied on. But the real question is how should the examiner get the relevant data about the Complainant’s mark. The SMD file is probably not the answer, if it was ever intended to be. * the Examiner is not required to second-guess the SMD file. Its existence is sufficient that the mark has had use validated by the TMCH. Other Topics (page 7-8) * These are policy proposals can be brought up when WG members are proposing changes to the URS policy itself. Charter asks us to address the question whether the URS should become a consensus policy applicable to legacy domains. Charter is not specific regarding whether such discussion should occur in phase I or phase II. This feedback illustrates that the ST didn't get to propose policy changes, it is for the WG to discuss and propose changes. * when we reference the STI and IRT reports, we need to keep in mind they only had about 1-2 months to complete their work and produce a report; they were not standard PDP working groups and had limited charters and mandates, which were set by the Board * This is feedback from one Provider, who may want to grow their business. Practitioners survey are from Complaints' side. Need to have a balanced solution when considering the input. * There were plenty of practitioners that represent registrants in the Subgroup, although their experience was largely with the UDRP. Duration of response period (Page 11) * One member believes that if the URS continues in its current form, it would affect valuable domain names. The ones the registrants that do want to defend them, 14 days are not sufficient. 20 days may be more appropriate. It should be based on the age of the domain name. If a domain is 3 months, it will have a shorter period to respond. If you own a domain name for 5-10 years, response period would be longer so less urgency. * Several other WG members disagree. The URS is supposed to be an expedited proceeding so increasing the length of time of a streamlined proceeding defeats the purpose. At most, there could be an additional 3 or 4 days extension period for cause. The point is that there are enough circumstances that give rise to the URS 'quick response' that we should NOT make assumptions into policy. It is an assumption that an "aged" domain would not require a fast response. In Mexico, we have not been able to file a domain name case due to Courts ignorance about the subject and also, because it could take years to be solved. We're spinning out fo control - extending the time to respond to URS cases just because a domain registration is not new defeats the purpose of fast action to take down an infringing domain once it's discovered. The URS is meant to address clear and convincing cases of infringement. A person registers a domain name for less than $50 and brand owner find out about at some point and then files an injunction in court for tens of thousands of dollars. Where is the balance. Examiners Guide (page 13) * The WIPO guidance for examiners took 1500 hours to develop. * The WIPO guidance is relevant to the URS, the elements are shown are the same and the differences include the burden of proof, word limit, etc. A lot of WIPO guidance goes to the shade of grey issues. URS is for clear black/white cases, so if there is a URS guidance it would likely be abbreviated. Duration of Suspension Period & Review of Implementation (page 21-23) * One WG member suggests to find out how much cost for registries & registrars to comply with the URS rules and procedures. Need to get data/feedback from the registries/registrars. * Other WG members are not sure "cost of implementation of URS" for Registries/Registrars is relevant to effectiveness of URS. We don't need to do a cost/benefit analysis (the costs & benefits aren't ICANN's), the providers, registrars, registries need to be asked if they are overburdened by the costs of compliance. * There is an action item to contact the registries/registrars about these issues. Timing TBD due to Sunrise & Claims survey launch. Other topics (page 23-24) * One WG member thinks the HSTS issue is not difficult to fix. The Providers need to improve their technical applicability to resolve the issue. Renee Fossen from Forum disagrees. * ACTION ITEM: Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. NEXT STEPS * ACTION ITEM: Staff to recirculate the Super Consolidated URS Topics Table document and ask all WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * ACTION ITEM: WG to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35. Later period to discuss larger policy issues. ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner. ________________________________ ***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

It would be inappropriate to presume cybersquatting from the use of a "well known" brand name alone. There are any number of legitimate reasons for registering <brand>.<new gTLD>. And we have no working standard for what "well known" means, especially internationally. Cybersquatting requires intent, and if some percentage of URS proceedings are presuming intent based on no facts but the domain name itself, that's highly relevant information that should not be buried here. Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate | https://act.eff.org/ On 2/10/20 11:53 AM, cking@modernip.com wrote:

Agree Georges.

We don’t need a percent figure.  We can simply observe that ICANN needs specific info for data collection/oversight & outline those required fields.

**

*Cyntia King*

O:  +1 816.633.7647

C:  +1 818.209.6088

Email Logo5

*From:*GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Nahitchevansky, Georges *Sent:* Monday, February 10, 2020 1:37 PM *To:* Greg Shatan <gregshatanipc@gmail.com>; gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018]

Thank you Greg.  I was looking for that email and went back through what I had reviewed.  The bottom line is that of the 103 cases that had been marked as having no rational, there were 45 that included enough to know what the case had been about and the rationale.  That meant that 7% just reiterated the standard and ruled in favor of a party with nothing to deduce the rationale.  Of those 7%, though, a number of cases involved domain names that were based on a well-known trademark and it would not take much to understand that a domain name that was simply BRAND + gTLD likely involved cybersquatting.  So in my view while there are some cases that had no rationale, I do not believe we are talking overall about cases that involved rulings with no explanations regarding domain names that primarily involved a generic word with a gTLD.  Most of the 58 cases (or 103) that arguably had no specific rationale involved domain names that related to trademarks that are known, which again suggests something about the ruling.  Put another way, there is a conceptual difference between a case that involves a domain name based on a well-known brand such as <cocacola.beverage> and one that involves a generic word such as <fashion.clothes>.  If the cases that have no articulated rationale primarily involved the latter type of domains, I would be much more concerned.  But if they mostly relate to known brands, I’m not sure that this suggests that there were errors committed by the panelist. Also, I do not believe that the 58 decisions at issue actually resulted in any appeals, which does suggest that perhaps the decisions were not unfounded.

In any event, rather than go back and forth about whether we are talking about 7% or 13% of cases without a stated rationale, I think the solution is to just say that there were several cases that had no clearly stated rationale without getting into percentages. After all, we are more or less in agreement that close to 90% of the cases had articulated rationale and that there should be some tweak to address the minimum of what a URS decision should provide.

Georges Nahitchevansky

*From:*GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>> *On Behalf Of *Greg Shatan *Sent:* Monday, February 10, 2020 1:42 PM *To:* gnso-rpm-wg <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> *Subject:* [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018]

All,

Here is the Georges Nahitchevansky email that was referred to in last week's discussion of the percentage of URS decisions that lacked a rationale.  There was a subsequent discussion, so I recommend going back to the list if you want to see the follow-up.

Greg

---------- Forwarded message --------- From: *Nahitchevansky, Georges* <ghn@kilpatricktownsend.com <mailto:ghn@kilpatricktownsend.com>> Date: Thu, Aug 9, 2018 at 3:27 PM Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 To: Tushnet, Rebecca <rtushnet@law.harvard.edu <mailto:rtushnet@law.harvard.edu>>, Ariel Liang <ariel.liang@icann.org <mailto:ariel.liang@icann.org>>, gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>>

Rebecca:

I do not disagree with the notion that we should discuss what a decision should contain, but I don’t think we have a consensus as to what that should be in the URS context (given the pricing of URS proceedings).  Moreover, a review of the URS cases makes your 13% number and comment of “significant due process and implementation issues” point questionable.  At NAF for example, there were 827 cases that that your research assistants reviewed. I found a total of about 103 that your team flagged as having no articulated decisions.  I would agree that in 58 cases the decisions lacked details, but in 45 cases there were details that sufficiently let you know what the case was about and the basis of the resolution.  I am sure we can argue about these 45 cases and whether they should say more, but ultimately we are really only talking about 58 cases that actually do not have any specific details and just provide the standard and a resolution (although I note that most of these cases involve domain names based on fairly well known marks such as NISSAN, DATSUN, TEXACO, BLOOMBERG, BNP PARIBAS etc., so you pretty much know what trademark was involved.).  In all, we are really talking about 7% of the cases that have no details, which is not significant.

Again, we can discuss what the decisions should provide, but I don’t think we ought to be qualifying this as a “significant” issue per se (as 93% of them have details).  There are other issues being considered in the URS review that have better percentage numbers as an issue that are viewed as not being significant per se. The point is that the URS looks to be working appropriately and there are probably some tweaks and refinements needed but this is not sky is falling issue.

*From:*gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>> *On Behalf Of *Tushnet, Rebecca *Sent:* Thursday, August 9, 2018 1:22 PM *To:* Ariel Liang <ariel.liang@icann.org <mailto:ariel.liang@icann.org>>; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018

My apologies for missing the meeting.  Comment on the big document:

This is currently only covered under Defenses but I would put it for discussion/recommendations under 2. Examiners’ Guide/3. Other Issues because it goes beyond defenses: Decisions should contain basic information, including what the trademark is, what the finding of abuse is and/or what findings are on any defenses—13% of decisions did not, and this raises significant due process and implementation issues.

------------------------------------------------------------------------

*From:*gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Ariel Liang <ariel.liang@icann.org <mailto:ariel.liang@icann.org>> *Sent:* Wednesday, August 8, 2018 3:56:54 PM *To:* gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> *Subject:* [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018

Dear All,

Please see below the action items and notes captured by staff from the RPM PDP WG call held on 08 August 2018 (17:00-18:30 UTC). Staff have posted to the wiki space the action items and notes. /Please note that these will be high-level notes and are not meant as a substitute for the recording./ The recording, AC chat, and attendance records are posted on the wiki at: https://community.icann.org/x/uwNpBQ <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_u...>

Best Regards,

Ariel

Ariel Xinyue Liang

GNSO Policy Support Specialist

Internet Corporation for Assigned Names and Numbers (ICANN)

**

*==*

*ACTION ITEMS:*

* Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. * Staff to recirculate the Super Consolidated URS Topics Table document * WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by *COB Tue, 14 Aug*. Co-Chairs will then discuss among themselves to determine further actions/process. * WG members to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, during next week’s call. Later period to discuss larger policy issues.

*NOTES:*

*Review Agenda/Statements of Interest*

* George Kirikos has become a member of the At-Large Community: https://community.icann.org/display/gnsosoi/George+Kirikos+SOI <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dis...>

*General Comment on the Super Consolidated URS Topics Table Document *

* The topics in the table were developed by the WG members and deliberated on by the WG & URS Sub Teams. Each Sub Team then did very substantial work on data collection and reviewing what came back. While the actual Sub Team recommendations and suggestions captured in this document are what is intended the WG should discuss - to see if it wishes to develop policy or operational recommendations - discussion over what should be on the actual list of topics should not be reopened unless the WG agrees to do so. We encourage all WG members to review all the previous reports from each Sub Team, and all the documents they worked on. They are linked in this Super Consolidated document (page 2). * The Super Consolidated document is a summary of findings and suggestions by the Sub Teams. The Table does not mean to limit/restrict recommendations from the WG members. If there is any issue overlapping with UDRP, can possibly be carried over to the phase II of the PDP. * Is it possible to add additional topics to the Super Consolidated Table? One WG member said that access to the Courts, for example, is a topic he raised, which isn't in the table. Statute of Limitations, whether URS should apply to legacy gTLDs as a consensus policy, are just a few of the topics not in the table. He brought it up in November 2017 (see: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html ) and it was reflected in a later document. That's a critical issue for registrants. if they don't have access to the courts to challenge a URS decision, then it's a huge denial of their rights. * While the chart is not meant to foreclose further discussion, it is a good faith attempt at capturing the work of the sub teams.  The purpose of today's, and likely the next few, calls was to make sure this was an accurate and comprehensive reflection of our discussions so far.  That said, WG members should bear in mind that we are seeking consensus, so items which are unlikely to achieve that may not be appropriate to reflect as a recommendation, but could be included in public comments on the Initial Report.  Also, before adding items to this chart, we will want to work with staff to see whether such topics was previously discussed, and if so, the level of agreement/consensus.  In other words, it is not necessary final, but is equally an opportunity to reintroduce topics which have been discussed, but for which consensus is/was not possible. * Could we create a list of "missing issues" -- a list of issues raised in this call (and calls to follow); we can evaluate the nature and weight of these ideas later. * Regarding the Action Items highlighted in column 3 of the table, Providers ST will do a first pass of the responses from the Providers to the follow-up questions, and then discuss the issues that they identified and proposed suggestions with the full WG.

*Limited filing period (page 3) *

* One WG member believes that there should be limitation for filing period to bring URS Complaints, so the domain registered many years ago would not be subject to unfair treatment. He said a registrant who owns a domain for 20 years, for example, shouldn't have to be concerned about a policy that can take their domain down with very short time period to respond. * Other WG members said this was discussed, and did not achieve agreement. That would only even be an option if the trademark pre-dated. This is unlikely to be a situation in practice where a URS was brought because it would probably not be a "slam dunk" case after 20 years unless there had been a change of circumstances. * On the issue of delay and laches - as reported by the Docs Sub Team, the data did not provide any basis for which a policy recommendation should be made. The Providers and Practitioners Sub Teams also did not uncover any specific issues that came to either practitioners' or providers' attention.

*Administrative Review (page 3-4) *

* One WG member asked whether ICANN should bring Providers into contractual relationship in order to enforce the URS Rules & Procedures. Another member said it probably need to be ICANN’s legal department to enforce the rules & procedure. * URS Providers have MoU with ICANN. Whether it is ICANN’s compliance department or legal department to enforce the rules & procedures, it should not be controversial that Providers must abide by them. * An MOU could be legally enforceable, depending on the circumstances.

*500-word Complaint limit (page 4-5)*

·On 500-word Complaint Limit - Practitioners' survey results were split (out of 12, 5 agree it's sufficient, 4 disagree); results included feedback from some that the word limit was too low: "arbitrary and often insufficient" and "should be slightly increased".

·One member said he understands and generally agrees with the decision not to suggest an expansion of the word limit, he wonders if there aren't situations (multi- domain challenges, etc.) where a Complainant or Respondent might be given the opportunity to request an expansion. This point can be captured for decisional phase.

·Another member suggested that perhaps providers can provide stats on the average word length of complaints, to see how close to the 500 words they are at present. (i.e. a table of distributions, e.g. 10% under 200 words, 20% between 201 and 300, etc.)

*Amending the Complaint in light of GDPR/Temp Spec (page 5-6)*

* One member believes that 2-3 days might not be a good rule (e.g. weekends, time to research, etc.). Maybe 5 business days. * WIPO’s approach to “doe complaints” has been very helpful and provides some comfort that the lack of true registrant/registrant organization data masked due to GDPR will not result in a deficient complaint for an omitted respondent. * *ACTION ITEM: *Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Forum is asking for amendment of the complaint in UDRP - under the rules that's not allowed in URS.

*SMD Files (page 6-7)*

* SMD files are used for limited purpose of demonstrating the use. * Recollection is that SMD files would be passed to the Examiners and relay the critical information related to the TM registration. That's why some people are surprised by the limited info SMD files would provide. * The SMD files contain some basic human-readable information, with the rest of the information coded. For example, the trademark itself is human-readable but the applicable Nice classification is coded. A SMD file is used by registries/registrars for validation, and as Greg noted, to demonstrate use. From the TMCH provider: http://www.trademark-clearinghouse.com/help/faq/which-information-does-smd-f... <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearing...>

* If the intent of the STI was that the SMD file would be a file summary, that got lost somewhere along the way, way before the SMD file was designed by the TMCH providers. * Rules 3(b)(v) Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use –which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse * It might be useful to look at the spec that they relied on.  But the real question is how should the examiner get the relevant data about the Complainant’s mark. The SMD file is probably not the answer, if it was ever intended to be. * the Examiner is not required to second-guess the SMD file. Its existence is sufficient that the mark has had use validated by the TMCH.

*Other Topics (page 7-8)*

* These are policy proposals can be brought up when WG members are proposing changes to the URS policy itself. Charter asks us to address the question whether the URS should become a consensus policy applicable to legacy domains. Charter is not specific regarding whether such discussion should occur in phase I or phase II. This feedback illustrates that the ST didn't get to propose policy changes, it is for the WG to discuss and propose changes. * when we reference the STI and IRT reports, we need to keep in mind they only had about 1-2 months to complete their work and produce a report; they were not standard PDP working groups and had limited charters and mandates, which were set by the Board * This is feedback from one Provider, who may want to grow their business. Practitioners survey are from Complaints' side. Need to have a balanced solution when considering the input. * There were plenty of practitioners that represent registrants in the Subgroup, although their experience was largely with the UDRP.

*Duration of response period (Page 11)*

* One member believes that if the URS continues in its current form, it would affect valuable domain names. The ones the registrants that do want to defend them, 14 days are not sufficient. 20 days may be more appropriate. It should be based on the age of the domain name. If a domain is 3 months, it will have a shorter period to respond. If you own a domain name for 5-10 years, response period would be longer so less urgency. * Several other WG members disagree. The URS is supposed to be an expedited proceeding so increasing the length of time of a streamlined proceeding defeats the purpose.  At most, there could be an additional 3 or 4 days extension period for cause. The point is that there are enough circumstances that give rise to the URS 'quick response' that we should NOT make assumptions into policy.  It is an assumption that an "aged" domain would not require a fast response. In Mexico, we have not been able to file a domain name case due to Courts ignorance about the subject and also, because it could take years to be solved. We're spinning out fo control - extending the time to respond to URS cases just because a domain registration is not new defeats the purpose of fast action to take down an infringing domain once it's discovered. The URS is meant to address clear and convincing cases of infringement. A person registers a domain name for less than $50 and brand owner find out about at some point and then files an injunction in court for tens of thousands of dollars.  Where is the balance.

*Examiners Guide (page 13) *

* The WIPO guidance for examiners took 1500 hours to develop. * The WIPO guidance is relevant to the URS, the elements are shown are the same and the differences include the burden of proof, word limit, etc. A lot of WIPO guidance goes to the shade of grey issues. URS is for clear black/white cases, so if there is a URS guidance it would likely be abbreviated.

*Duration of Suspension Period & Review of Implementation (page 21-23)*

* One WG member suggests to find out how much cost for registries & registrars to comply with the URS rules and procedures. Need to get data/feedback from the registries/registrars. * Other WG members are not sure "cost of implementation of URS" for Registries/Registrars is relevant to effectiveness of URS. We don't need to do a cost/benefit analysis (the costs & benefits aren't ICANN's), the providers, registrars, registries need to be asked if they are overburdened by the costs of compliance. * There is an action item to contact the registries/registrars about these issues. Timing TBD due to Sunrise & Claims survey launch.

*Other topics (page 23-24)*

* One WG member thinks the HSTS issue is not difficult to fix. The Providers need to improve their technical applicability to resolve the issue. Renee Fossen from Forum disagrees. * *ACTION ITEM*: Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses.

*NEXT STEPS *

* *ACTION ITEM*: Staff to recirculate the Super Consolidated URS Topics Table document and ask all WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * *ACTION ITEM*: WG to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35. Later period to discuss larger policy issues.

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How about we say “a significant number”? Whether it is 7% or 13% or whatever, it was spotted as a significant issue and we should identify it as such, without overstating it as for example, “a substantial number”. Zak Muscovitch Law P.C. zak@muscovitch.com<mailto:zak@muscovitch.com> 1-866-654-7129 416-924-5084 http://www.trademarks-canada.com/ https://www.muscovitch.com/ https://dnattorney.com/ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of cking@modernip.com Sent: February-10-20 3:13 PM To: 'Mitch Stoltz' <mitch@eff.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Are we really going to quibble over 13% versus 7% in our proposal? Please let’s not rehash the rationale of decisions for 6% of URS cases. Let’s make the recommendation without a %, which isn’t needed for the proposal to stand. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 [Email Logo5] From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Mitch Stoltz Sent: Monday, February 10, 2020 2:05 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] It would be inappropriate to presume cybersquatting from the use of a "well known" brand name alone. There are any number of legitimate reasons for registering <brand>.<new gTLD>. And we have no working standard for what "well known" means, especially internationally. Cybersquatting requires intent, and if some percentage of URS proceedings are presuming intent based on no facts but the domain name itself, that's highly relevant information that should not be buried here. Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate | https://act.eff.org/ On 2/10/20 11:53 AM, cking@modernip.com<mailto:cking@modernip.com> wrote: Agree Georges. We don’t need a percent figure. We can simply observe that ICANN needs specific info for data collection/oversight & outline those required fields. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 [Email Logo5] From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> On Behalf Of Nahitchevansky, Georges Sent: Monday, February 10, 2020 1:37 PM To: Greg Shatan <gregshatanipc@gmail.com><mailto:gregshatanipc@gmail.com>; gnso-rpm-wg <gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Thank you Greg. I was looking for that email and went back through what I had reviewed. The bottom line is that of the 103 cases that had been marked as having no rational, there were 45 that included enough to know what the case had been about and the rationale. That meant that 7% just reiterated the standard and ruled in favor of a party with nothing to deduce the rationale. Of those 7%, though, a number of cases involved domain names that were based on a well-known trademark and it would not take much to understand that a domain name that was simply BRAND + gTLD likely involved cybersquatting. So in my view while there are some cases that had no rationale, I do not believe we are talking overall about cases that involved rulings with no explanations regarding domain names that primarily involved a generic word with a gTLD. Most of the 58 cases (or 103) that arguably had no specific rationale involved domain names that related to trademarks that are known, which again suggests something about the ruling. Put another way, there is a conceptual difference between a case that involves a domain name based on a well-known brand such as <cocacola.beverage> and one that involves a generic word such as <fashion.clothes>. If the cases that have no articulated rationale primarily involved the latter type of domains, I would be much more concerned. But if they mostly relate to known brands, I’m not sure that this suggests that there were errors committed by the panelist. Also, I do not believe that the 58 decisions at issue actually resulted in any appeals, which does suggest that perhaps the decisions were not unfounded. In any event, rather than go back and forth about whether we are talking about 7% or 13% of cases without a stated rationale, I think the solution is to just say that there were several cases that had no clearly stated rationale without getting into percentages. After all, we are more or less in agreement that close to 90% of the cases had articulated rationale and that there should be some tweak to address the minimum of what a URS decision should provide. Georges Nahitchevansky From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Greg Shatan Sent: Monday, February 10, 2020 1:42 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] All, Here is the Georges Nahitchevansky email that was referred to in last week's discussion of the percentage of URS decisions that lacked a rationale. There was a subsequent discussion, so I recommend going back to the list if you want to see the follow-up. Greg ---------- Forwarded message --------- From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Date: Thu, Aug 9, 2018 at 3:27 PM Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>, Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>, gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Rebecca: I do not disagree with the notion that we should discuss what a decision should contain, but I don’t think we have a consensus as to what that should be in the URS context (given the pricing of URS proceedings). Moreover, a review of the URS cases makes your 13% number and comment of “significant due process and implementation issues” point questionable. At NAF for example, there were 827 cases that that your research assistants reviewed. I found a total of about 103 that your team flagged as having no articulated decisions. I would agree that in 58 cases the decisions lacked details, but in 45 cases there were details that sufficiently let you know what the case was about and the basis of the resolution. I am sure we can argue about these 45 cases and whether they should say more, but ultimately we are really only talking about 58 cases that actually do not have any specific details and just provide the standard and a resolution (although I note that most of these cases involve domain names based on fairly well known marks such as NISSAN, DATSUN, TEXACO, BLOOMBERG, BNP PARIBAS etc., so you pretty much know what trademark was involved.). In all, we are really talking about 7% of the cases that have no details, which is not significant. Again, we can discuss what the decisions should provide, but I don’t think we ought to be qualifying this as a “significant” issue per se (as 93% of them have details). There are other issues being considered in the URS review that have better percentage numbers as an issue that are viewed as not being significant per se. The point is that the URS looks to be working appropriately and there are probably some tweaks and refinements needed but this is not sky is falling issue. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Thursday, August 9, 2018 1:22 PM To: Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 My apologies for missing the meeting. Comment on the big document: This is currently only covered under Defenses but I would put it for discussion/recommendations under 2. Examiners’ Guide/3. Other Issues because it goes beyond defenses: Decisions should contain basic information, including what the trademark is, what the finding of abuse is and/or what findings are on any defenses—13% of decisions did not, and this raises significant due process and implementation issues. ________________________________ From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>> Sent: Wednesday, August 8, 2018 3:56:54 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 Dear All, Please see below the action items and notes captured by staff from the RPM PDP WG call held on 08 August 2018 (17:00-18:30 UTC). Staff have posted to the wiki space the action items and notes. Please note that these will be high-level notes and are not meant as a substitute for the recording. The recording, AC chat, and attendance records are posted on the wiki at: https://community.icann.org/x/uwNpBQ<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_uwNpBQ&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=gcgRms-bmezGQQmwXCqLMQXOdSv3gly_0bWYNSuRlY8&e=> Best Regards, Ariel Ariel Xinyue Liang GNSO Policy Support Specialist Internet Corporation for Assigned Names and Numbers (ICANN) == ACTION ITEMS: * Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. * Staff to recirculate the Super Consolidated URS Topics Table document * WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * WG members to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, during next week’s call. Later period to discuss larger policy issues. NOTES: Review Agenda/Statements of Interest * George Kirikos has become a member of the At-Large Community: https://community.icann.org/display/gnsosoi/George+Kirikos+SOI<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_gnsosoi_George-2BKirikos-2BSOI&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=8-YfNNseZ7YW77BHJT9ciEr_I08JQcazWKn1rxNI900&e=> General Comment on the Super Consolidated URS Topics Table Document * The topics in the table were developed by the WG members and deliberated on by the WG & URS Sub Teams. Each Sub Team then did very substantial work on data collection and reviewing what came back. While the actual Sub Team recommendations and suggestions captured in this document are what is intended the WG should discuss - to see if it wishes to develop policy or operational recommendations - discussion over what should be on the actual list of topics should not be reopened unless the WG agrees to do so. We encourage all WG members to review all the previous reports from each Sub Team, and all the documents they worked on. They are linked in this Super Consolidated document (page 2). * The Super Consolidated document is a summary of findings and suggestions by the Sub Teams. The Table does not mean to limit/restrict recommendations from the WG members. If there is any issue overlapping with UDRP, can possibly be carried over to the phase II of the PDP. * Is it possible to add additional topics to the Super Consolidated Table? One WG member said that access to the Courts, for example, is a topic he raised, which isn't in the table. Statute of Limitations, whether URS should apply to legacy gTLDs as a consensus policy, are just a few of the topics not in the table. He brought it up in November 2017 (see: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html ) and it was reflected in a later document. That's a critical issue for registrants. if they don't have access to the courts to challenge a URS decision, then it's a huge denial of their rights. * While the chart is not meant to foreclose further discussion, it is a good faith attempt at capturing the work of the sub teams. The purpose of today's, and likely the next few, calls was to make sure this was an accurate and comprehensive reflection of our discussions so far. That said, WG members should bear in mind that we are seeking consensus, so items which are unlikely to achieve that may not be appropriate to reflect as a recommendation, but could be included in public comments on the Initial Report. Also, before adding items to this chart, we will want to work with staff to see whether such topics was previously discussed, and if so, the level of agreement/consensus. In other words, it is not necessary final, but is equally an opportunity to reintroduce topics which have been discussed, but for which consensus is/was not possible. * Could we create a list of "missing issues" -- a list of issues raised in this call (and calls to follow); we can evaluate the nature and weight of these ideas later. * Regarding the Action Items highlighted in column 3 of the table, Providers ST will do a first pass of the responses from the Providers to the follow-up questions, and then discuss the issues that they identified and proposed suggestions with the full WG. Limited filing period (page 3) * One WG member believes that there should be limitation for filing period to bring URS Complaints, so the domain registered many years ago would not be subject to unfair treatment. He said a registrant who owns a domain for 20 years, for example, shouldn't have to be concerned about a policy that can take their domain down with very short time period to respond. * Other WG members said this was discussed, and did not achieve agreement. That would only even be an option if the trademark pre-dated. This is unlikely to be a situation in practice where a URS was brought because it would probably not be a "slam dunk" case after 20 years unless there had been a change of circumstances. * On the issue of delay and laches - as reported by the Docs Sub Team, the data did not provide any basis for which a policy recommendation should be made. The Providers and Practitioners Sub Teams also did not uncover any specific issues that came to either practitioners' or providers' attention. Administrative Review (page 3-4) * One WG member asked whether ICANN should bring Providers into contractual relationship in order to enforce the URS Rules & Procedures. Another member said it probably need to be ICANN’s legal department to enforce the rules & procedure. * URS Providers have MoU with ICANN. Whether it is ICANN’s compliance department or legal department to enforce the rules & procedures, it should not be controversial that Providers must abide by them. * An MOU could be legally enforceable, depending on the circumstances. 500-word Complaint limit (page 4-5) • On 500-word Complaint Limit - Practitioners' survey results were split (out of 12, 5 agree it's sufficient, 4 disagree); results included feedback from some that the word limit was too low: "arbitrary and often insufficient" and "should be slightly increased". • One member said he understands and generally agrees with the decision not to suggest an expansion of the word limit, he wonders if there aren't situations (multi- domain challenges, etc.) where a Complainant or Respondent might be given the opportunity to request an expansion. This point can be captured for decisional phase. • Another member suggested that perhaps providers can provide stats on the average word length of complaints, to see how close to the 500 words they are at present. (i.e. a table of distributions, e.g. 10% under 200 words, 20% between 201 and 300, etc.) Amending the Complaint in light of GDPR/Temp Spec (page 5-6) * One member believes that 2-3 days might not be a good rule (e.g. weekends, time to research, etc.). Maybe 5 business days. * WIPO’s approach to “doe complaints” has been very helpful and provides some comfort that the lack of true registrant/registrant organization data masked due to GDPR will not result in a deficient complaint for an omitted respondent. * ACTION ITEM: Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Forum is asking for amendment of the complaint in UDRP - under the rules that's not allowed in URS. SMD Files (page 6-7) * SMD files are used for limited purpose of demonstrating the use. * Recollection is that SMD files would be passed to the Examiners and relay the critical information related to the TM registration. That's why some people are surprised by the limited info SMD files would provide. * The SMD files contain some basic human-readable information, with the rest of the information coded. For example, the trademark itself is human-readable but the applicable Nice classification is coded. A SMD file is used by registries/registrars for validation, and as Greg noted, to demonstrate use. From the TMCH provider: http://www.trademark-clearinghouse.com/help/faq/which-information-does-smd-file-contain<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearinghouse.com_help_faq_which-2Dinformation-2Ddoes-2Dsmd-2Dfile-2Dcontain&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=v3df_qE8Dw_U7YY7_IfhIMgGSxt-a44LbNskorrbTIg&e=> * If the intent of the STI was that the SMD file would be a file summary, that got lost somewhere along the way, way before the SMD file was designed by the TMCH providers. * Rules 3(b)(v) Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use –which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse * It might be useful to look at the spec that they relied on. But the real question is how should the examiner get the relevant data about the Complainant’s mark. The SMD file is probably not the answer, if it was ever intended to be. * the Examiner is not required to second-guess the SMD file. Its existence is sufficient that the mark has had use validated by the TMCH. Other Topics (page 7-8) * These are policy proposals can be brought up when WG members are proposing changes to the URS policy itself. Charter asks us to address the question whether the URS should become a consensus policy applicable to legacy domains. Charter is not specific regarding whether such discussion should occur in phase I or phase II. This feedback illustrates that the ST didn't get to propose policy changes, it is for the WG to discuss and propose changes. * when we reference the STI and IRT reports, we need to keep in mind they only had about 1-2 months to complete their work and produce a report; they were not standard PDP working groups and had limited charters and mandates, which were set by the Board * This is feedback from one Provider, who may want to grow their business. Practitioners survey are from Complaints' side. Need to have a balanced solution when considering the input. * There were plenty of practitioners that represent registrants in the Subgroup, although their experience was largely with the UDRP. Duration of response period (Page 11) * One member believes that if the URS continues in its current form, it would affect valuable domain names. The ones the registrants that do want to defend them, 14 days are not sufficient. 20 days may be more appropriate. It should be based on the age of the domain name. If a domain is 3 months, it will have a shorter period to respond. If you own a domain name for 5-10 years, response period would be longer so less urgency. * Several other WG members disagree. The URS is supposed to be an expedited proceeding so increasing the length of time of a streamlined proceeding defeats the purpose. At most, there could be an additional 3 or 4 days extension period for cause. The point is that there are enough circumstances that give rise to the URS 'quick response' that we should NOT make assumptions into policy. It is an assumption that an "aged" domain would not require a fast response. In Mexico, we have not been able to file a domain name case due to Courts ignorance about the subject and also, because it could take years to be solved. We're spinning out fo control - extending the time to respond to URS cases just because a domain registration is not new defeats the purpose of fast action to take down an infringing domain once it's discovered. The URS is meant to address clear and convincing cases of infringement. A person registers a domain name for less than $50 and brand owner find out about at some point and then files an injunction in court for tens of thousands of dollars. Where is the balance. Examiners Guide (page 13) * The WIPO guidance for examiners took 1500 hours to develop. * The WIPO guidance is relevant to the URS, the elements are shown are the same and the differences include the burden of proof, word limit, etc. A lot of WIPO guidance goes to the shade of grey issues. URS is for clear black/white cases, so if there is a URS guidance it would likely be abbreviated. Duration of Suspension Period & Review of Implementation (page 21-23) * One WG member suggests to find out how much cost for registries & registrars to comply with the URS rules and procedures. Need to get data/feedback from the registries/registrars. * Other WG members are not sure "cost of implementation of URS" for Registries/Registrars is relevant to effectiveness of URS. We don't need to do a cost/benefit analysis (the costs & benefits aren't ICANN's), the providers, registrars, registries need to be asked if they are overburdened by the costs of compliance. * There is an action item to contact the registries/registrars about these issues. Timing TBD due to Sunrise & Claims survey launch. Other topics (page 23-24) * One WG member thinks the HSTS issue is not difficult to fix. The Providers need to improve their technical applicability to resolve the issue. Renee Fossen from Forum disagrees. * ACTION ITEM: Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. NEXT STEPS * ACTION ITEM: Staff to recirculate the Super Consolidated URS Topics Table document and ask all WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * ACTION ITEM: WG to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35. Later period to discuss larger policy issues. ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. 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I prefer “noteworthy”. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 From: Griffin Barnett <Griffin@Winterfeldt.law> Sent: Monday, February 10, 2020 2:22 PM To: Zak Muscovitch <zak@muscovitch.com>; cking@modernip.com; 'Mitch Stoltz' <mitch@eff.org>; gnso-rpm-wg@icann.org Subject: RE: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] I don’t think we can call even 13% a “significant” number, but I support in principle the move toward a general description rather than going back and forth now about whether the number is 7% or 13% or somewhere in between. Perhaps “non-trivial,” “meaningful,” etc. rather than significant? From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Zak Muscovitch Sent: Monday, February 10, 2020 3:17 PM To: cking@modernip.com <mailto:cking@modernip.com> ; 'Mitch Stoltz' <mitch@eff.org <mailto:mitch@eff.org> >; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] How about we say “a significant number”? Whether it is 7% or 13% or whatever, it was spotted as a significant issue and we should identify it as such, without overstating it as for example, “a substantial number”. Zak Muscovitch Law P.C. <mailto:zak@muscovitch.com> zak@muscovitch.com 1-866-654-7129 416-924-5084 <http://www.trademarks-canada.com/> http://www.trademarks-canada.com/ <https://www.muscovitch.com/> https://www.muscovitch.com/ <https://dnattorney.com/> https://dnattorney.com/ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> > On Behalf Of cking@modernip.com <mailto:cking@modernip.com> Sent: February-10-20 3:13 PM To: 'Mitch Stoltz' <mitch@eff.org <mailto:mitch@eff.org> >; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Are we really going to quibble over 13% versus 7% in our proposal? Please let’s not rehash the rationale of decisions for 6% of URS cases. Let’s make the recommendation without a %, which isn’t needed for the proposal to stand. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> > On Behalf Of Mitch Stoltz Sent: Monday, February 10, 2020 2:05 PM To: gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] It would be inappropriate to presume cybersquatting from the use of a "well known" brand name alone. There are any number of legitimate reasons for registering <brand>.<new gTLD>. And we have no working standard for what "well known" means, especially internationally. Cybersquatting requires intent, and if some percentage of URS proceedings are presuming intent based on no facts but the domain name itself, that's highly relevant information that should not be buried here. Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate | https://act.eff.org/ On 2/10/20 11:53 AM, cking@modernip.com <mailto:cking@modernip.com> wrote: Agree Georges. We don’t need a percent figure. We can simply observe that ICANN needs specific info for data collection/oversight & outline those required fields. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 From: GNSO-RPM-WG <mailto:gnso-rpm-wg-bounces@icann.org> <gnso-rpm-wg-bounces@icann.org> On Behalf Of Nahitchevansky, Georges Sent: Monday, February 10, 2020 1:37 PM To: Greg Shatan <mailto:gregshatanipc@gmail.com> <gregshatanipc@gmail.com>; gnso-rpm-wg <mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Thank you Greg. I was looking for that email and went back through what I had reviewed. The bottom line is that of the 103 cases that had been marked as having no rational, there were 45 that included enough to know what the case had been about and the rationale. That meant that 7% just reiterated the standard and ruled in favor of a party with nothing to deduce the rationale. Of those 7%, though, a number of cases involved domain names that were based on a well-known trademark and it would not take much to understand that a domain name that was simply BRAND + gTLD likely involved cybersquatting. So in my view while there are some cases that had no rationale, I do not believe we are talking overall about cases that involved rulings with no explanations regarding domain names that primarily involved a generic word with a gTLD. Most of the 58 cases (or 103) that arguably had no specific rationale involved domain names that related to trademarks that are known, which again suggests something about the ruling. Put another way, there is a conceptual difference between a case that involves a domain name based on a well-known brand such as <cocacola.beverage> and one that involves a generic word such as <fashion.clothes>. If the cases that have no articulated rationale primarily involved the latter type of domains, I would be much more concerned. But if they mostly relate to known brands, I’m not sure that this suggests that there were errors committed by the panelist. Also, I do not believe that the 58 decisions at issue actually resulted in any appeals, which does suggest that perhaps the decisions were not unfounded. In any event, rather than go back and forth about whether we are talking about 7% or 13% of cases without a stated rationale, I think the solution is to just say that there were several cases that had no clearly stated rationale without getting into percentages. After all, we are more or less in agreement that close to 90% of the cases had articulated rationale and that there should be some tweak to address the minimum of what a URS decision should provide. Georges Nahitchevansky From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> > On Behalf Of Greg Shatan Sent: Monday, February 10, 2020 1:42 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> > Subject: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] All, Here is the Georges Nahitchevansky email that was referred to in last week's discussion of the percentage of URS decisions that lacked a rationale. There was a subsequent discussion, so I recommend going back to the list if you want to see the follow-up. Greg ---------- Forwarded message --------- From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com <mailto:ghn@kilpatricktownsend.com> > Date: Thu, Aug 9, 2018 at 3:27 PM Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 To: Tushnet, Rebecca <rtushnet@law.harvard.edu <mailto:rtushnet@law.harvard.edu> >, Ariel Liang <ariel.liang@icann.org <mailto:ariel.liang@icann.org> >, gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> > Rebecca: I do not disagree with the notion that we should discuss what a decision should contain, but I don’t think we have a consensus as to what that should be in the URS context (given the pricing of URS proceedings). Moreover, a review of the URS cases makes your 13% number and comment of “significant due process and implementation issues” point questionable. At NAF for example, there were 827 cases that that your research assistants reviewed. I found a total of about 103 that your team flagged as having no articulated decisions. I would agree that in 58 cases the decisions lacked details, but in 45 cases there were details that sufficiently let you know what the case was about and the basis of the resolution. I am sure we can argue about these 45 cases and whether they should say more, but ultimately we are really only talking about 58 cases that actually do not have any specific details and just provide the standard and a resolution (although I note that most of these cases involve domain names based on fairly well known marks such as NISSAN, DATSUN, TEXACO, BLOOMBERG, BNP PARIBAS etc., so you pretty much know what trademark was involved.). In all, we are really talking about 7% of the cases that have no details, which is not significant. Again, we can discuss what the decisions should provide, but I don’t think we ought to be qualifying this as a “significant” issue per se (as 93% of them have details). There are other issues being considered in the URS review that have better percentage numbers as an issue that are viewed as not being significant per se. The point is that the URS looks to be working appropriately and there are probably some tweaks and refinements needed but this is not sky is falling issue. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> > On Behalf Of Tushnet, Rebecca Sent: Thursday, August 9, 2018 1:22 PM To: Ariel Liang <ariel.liang@icann.org <mailto:ariel.liang@icann.org> >; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 My apologies for missing the meeting. Comment on the big document: This is currently only covered under Defenses but I would put it for discussion/recommendations under 2. Examiners’ Guide/3. Other Issues because it goes beyond defenses: Decisions should contain basic information, including what the trademark is, what the finding of abuse is and/or what findings are on any defenses—13% of decisions did not, and this raises significant due process and implementation issues. _____ From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> > on behalf of Ariel Liang <ariel.liang@icann.org <mailto:ariel.liang@icann.org> > Sent: Wednesday, August 8, 2018 3:56:54 PM To: gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 Dear All, Please see below the action items and notes captured by staff from the RPM PDP WG call held on 08 August 2018 (17:00-18:30 UTC). Staff have posted to the wiki space the action items and notes. Please note that these will be high-level notes and are not meant as a substitute for the recording. The recording, AC chat, and attendance records are posted on the wiki at: https://community.icann.org/x/uwNpBQ <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_u...> Best Regards, Ariel Ariel Xinyue Liang GNSO Policy Support Specialist Internet Corporation for Assigned Names and Numbers (ICANN) == ACTION ITEMS: * Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. * Staff to recirculate the Super Consolidated URS Topics Table document * WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * WG members to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, during next week’s call. Later period to discuss larger policy issues. NOTES: Review Agenda/Statements of Interest * George Kirikos has become a member of the At-Large Community: https://community.icann.org/display/gnsosoi/George+Kirikos+SOI <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dis...> General Comment on the Super Consolidated URS Topics Table Document * The topics in the table were developed by the WG members and deliberated on by the WG & URS Sub Teams. Each Sub Team then did very substantial work on data collection and reviewing what came back. While the actual Sub Team recommendations and suggestions captured in this document are what is intended the WG should discuss - to see if it wishes to develop policy or operational recommendations - discussion over what should be on the actual list of topics should not be reopened unless the WG agrees to do so. We encourage all WG members to review all the previous reports from each Sub Team, and all the documents they worked on. They are linked in this Super Consolidated document (page 2). * The Super Consolidated document is a summary of findings and suggestions by the Sub Teams. The Table does not mean to limit/restrict recommendations from the WG members. If there is any issue overlapping with UDRP, can possibly be carried over to the phase II of the PDP. * Is it possible to add additional topics to the Super Consolidated Table? One WG member said that access to the Courts, for example, is a topic he raised, which isn't in the table. Statute of Limitations, whether URS should apply to legacy gTLDs as a consensus policy, are just a few of the topics not in the table. He brought it up in November 2017 (see: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html ) and it was reflected in a later document. That's a critical issue for registrants. if they don't have access to the courts to challenge a URS decision, then it's a huge denial of their rights. * While the chart is not meant to foreclose further discussion, it is a good faith attempt at capturing the work of the sub teams. The purpose of today's, and likely the next few, calls was to make sure this was an accurate and comprehensive reflection of our discussions so far. That said, WG members should bear in mind that we are seeking consensus, so items which are unlikely to achieve that may not be appropriate to reflect as a recommendation, but could be included in public comments on the Initial Report. Also, before adding items to this chart, we will want to work with staff to see whether such topics was previously discussed, and if so, the level of agreement/consensus. In other words, it is not necessary final, but is equally an opportunity to reintroduce topics which have been discussed, but for which consensus is/was not possible. * Could we create a list of "missing issues" -- a list of issues raised in this call (and calls to follow); we can evaluate the nature and weight of these ideas later. * Regarding the Action Items highlighted in column 3 of the table, Providers ST will do a first pass of the responses from the Providers to the follow-up questions, and then discuss the issues that they identified and proposed suggestions with the full WG. Limited filing period (page 3) * One WG member believes that there should be limitation for filing period to bring URS Complaints, so the domain registered many years ago would not be subject to unfair treatment. He said a registrant who owns a domain for 20 years, for example, shouldn't have to be concerned about a policy that can take their domain down with very short time period to respond. * Other WG members said this was discussed, and did not achieve agreement. That would only even be an option if the trademark pre-dated. This is unlikely to be a situation in practice where a URS was brought because it would probably not be a "slam dunk" case after 20 years unless there had been a change of circumstances. * On the issue of delay and laches - as reported by the Docs Sub Team, the data did not provide any basis for which a policy recommendation should be made. The Providers and Practitioners Sub Teams also did not uncover any specific issues that came to either practitioners' or providers' attention. Administrative Review (page 3-4) * One WG member asked whether ICANN should bring Providers into contractual relationship in order to enforce the URS Rules & Procedures. Another member said it probably need to be ICANN’s legal department to enforce the rules & procedure. * URS Providers have MoU with ICANN. Whether it is ICANN’s compliance department or legal department to enforce the rules & procedures, it should not be controversial that Providers must abide by them. * An MOU could be legally enforceable, depending on the circumstances. 500-word Complaint limit (page 4-5) * On 500-word Complaint Limit - Practitioners' survey results were split (out of 12, 5 agree it's sufficient, 4 disagree); results included feedback from some that the word limit was too low: "arbitrary and often insufficient" and "should be slightly increased". * One member said he understands and generally agrees with the decision not to suggest an expansion of the word limit, he wonders if there aren't situations (multi- domain challenges, etc.) where a Complainant or Respondent might be given the opportunity to request an expansion. This point can be captured for decisional phase. * Another member suggested that perhaps providers can provide stats on the average word length of complaints, to see how close to the 500 words they are at present. (i.e. a table of distributions, e.g. 10% under 200 words, 20% between 201 and 300, etc.) Amending the Complaint in light of GDPR/Temp Spec (page 5-6) * One member believes that 2-3 days might not be a good rule (e.g. weekends, time to research, etc.). Maybe 5 business days. * WIPO’s approach to “doe complaints” has been very helpful and provides some comfort that the lack of true registrant/registrant organization data masked due to GDPR will not result in a deficient complaint for an omitted respondent. * ACTION ITEM: Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Forum is asking for amendment of the complaint in UDRP - under the rules that's not allowed in URS. SMD Files (page 6-7) * SMD files are used for limited purpose of demonstrating the use. * Recollection is that SMD files would be passed to the Examiners and relay the critical information related to the TM registration. That's why some people are surprised by the limited info SMD files would provide. * The SMD files contain some basic human-readable information, with the rest of the information coded. For example, the trademark itself is human-readable but the applicable Nice classification is coded. A SMD file is used by registries/registrars for validation, and as Greg noted, to demonstrate use. From the TMCH provider: http://www.trademark-clearinghouse.com/help/faq/which-information-does-smd-f... <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearing...> * If the intent of the STI was that the SMD file would be a file summary, that got lost somewhere along the way, way before the SMD file was designed by the TMCH providers. * Rules 3(b)(v) Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use –which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse * It might be useful to look at the spec that they relied on. But the real question is how should the examiner get the relevant data about the Complainant’s mark. The SMD file is probably not the answer, if it was ever intended to be. * the Examiner is not required to second-guess the SMD file. Its existence is sufficient that the mark has had use validated by the TMCH. Other Topics (page 7-8) * These are policy proposals can be brought up when WG members are proposing changes to the URS policy itself. Charter asks us to address the question whether the URS should become a consensus policy applicable to legacy domains. Charter is not specific regarding whether such discussion should occur in phase I or phase II. This feedback illustrates that the ST didn't get to propose policy changes, it is for the WG to discuss and propose changes. * when we reference the STI and IRT reports, we need to keep in mind they only had about 1-2 months to complete their work and produce a report; they were not standard PDP working groups and had limited charters and mandates, which were set by the Board * This is feedback from one Provider, who may want to grow their business. Practitioners survey are from Complaints' side. Need to have a balanced solution when considering the input. * There were plenty of practitioners that represent registrants in the Subgroup, although their experience was largely with the UDRP. Duration of response period (Page 11) * One member believes that if the URS continues in its current form, it would affect valuable domain names. The ones the registrants that do want to defend them, 14 days are not sufficient. 20 days may be more appropriate. It should be based on the age of the domain name. If a domain is 3 months, it will have a shorter period to respond. If you own a domain name for 5-10 years, response period would be longer so less urgency. * Several other WG members disagree. The URS is supposed to be an expedited proceeding so increasing the length of time of a streamlined proceeding defeats the purpose. At most, there could be an additional 3 or 4 days extension period for cause. The point is that there are enough circumstances that give rise to the URS 'quick response' that we should NOT make assumptions into policy. It is an assumption that an "aged" domain would not require a fast response. In Mexico, we have not been able to file a domain name case due to Courts ignorance about the subject and also, because it could take years to be solved. We're spinning out fo control - extending the time to respond to URS cases just because a domain registration is not new defeats the purpose of fast action to take down an infringing domain once it's discovered. The URS is meant to address clear and convincing cases of infringement. A person registers a domain name for less than $50 and brand owner find out about at some point and then files an injunction in court for tens of thousands of dollars. Where is the balance. Examiners Guide (page 13) * The WIPO guidance for examiners took 1500 hours to develop. * The WIPO guidance is relevant to the URS, the elements are shown are the same and the differences include the burden of proof, word limit, etc. A lot of WIPO guidance goes to the shade of grey issues. URS is for clear black/white cases, so if there is a URS guidance it would likely be abbreviated. Duration of Suspension Period & Review of Implementation (page 21-23) * One WG member suggests to find out how much cost for registries & registrars to comply with the URS rules and procedures. Need to get data/feedback from the registries/registrars. * Other WG members are not sure "cost of implementation of URS" for Registries/Registrars is relevant to effectiveness of URS. We don't need to do a cost/benefit analysis (the costs & benefits aren't ICANN's), the providers, registrars, registries need to be asked if they are overburdened by the costs of compliance. * There is an action item to contact the registries/registrars about these issues. Timing TBD due to Sunrise & Claims survey launch. Other topics (page 23-24) * One WG member thinks the HSTS issue is not difficult to fix. The Providers need to improve their technical applicability to resolve the issue. Renee Fossen from Forum disagrees. * ACTION ITEM: Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. NEXT STEPS * ACTION ITEM: Staff to recirculate the Super Consolidated URS Topics Table document and ask all WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * ACTION ITEM: WG to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35. Later period to discuss larger policy issues. _____ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. 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Several implies three or four. It’s not close to accurate—off by an order of magnitude—even accepting a standard “an expert could figure out what seems to have happened,” which is not in fact a good measure of whether there was an explanation of what happened in a proceeding. I can live with “unacceptable” but would prefer a footnote explaining the over 13% finding and its methodology as well as the competing methodology and its numbers. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Feb 10, 2020, at 3:29 PM, Julie Hedlund <julie.hedlund@icann.org> wrote:  Dear all, Here is the suggested language that staff captured in the brief notes that was provided by WG members in the chat and discussion: “Several Determinations did not appear to have an articulated rationale.” Kind regards, Julie From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of "cking@modernip.com" <cking@modernip.com> Date: Monday, February 10, 2020 at 3:26 PM To: 'Griffin Barnett' <Griffin@Winterfeldt.law>, 'Zak Muscovitch' <zak@muscovitch.com>, 'Mitch Stoltz' <mitch@eff.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] I prefer “noteworthy”. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 <image001.jpg> From: Griffin Barnett <Griffin@Winterfeldt.law> Sent: Monday, February 10, 2020 2:22 PM To: Zak Muscovitch <zak@muscovitch.com>; cking@modernip.com; 'Mitch Stoltz' <mitch@eff.org>; gnso-rpm-wg@icann.org Subject: RE: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] I don’t think we can call even 13% a “significant” number, but I support in principle the move toward a general description rather than going back and forth now about whether the number is 7% or 13% or somewhere in between. Perhaps “non-trivial,” “meaningful,” etc. rather than significant? From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Zak Muscovitch Sent: Monday, February 10, 2020 3:17 PM To: cking@modernip.com<mailto:cking@modernip.com>; 'Mitch Stoltz' <mitch@eff.org<mailto:mitch@eff.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] How about we say “a significant number”? Whether it is 7% or 13% or whatever, it was spotted as a significant issue and we should identify it as such, without overstating it as for example, “a substantial number”. Zak Muscovitch Law P.C. zak@muscovitch.com<mailto:zak@muscovitch.com> 1-866-654-7129 416-924-5084 http://www.trademarks-canada.com/ [trademarks-canada.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademarks-2Dcanada....> https://www.muscovitch.com/ [muscovitch.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.muscovitch.com_&d=D...> https://dnattorney.com/ [dnattorney.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__dnattorney.com_&d=DwMFa...> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of cking@modernip.com<mailto:cking@modernip.com> Sent: February-10-20 3:13 PM To: 'Mitch Stoltz' <mitch@eff.org<mailto:mitch@eff.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Are we really going to quibble over 13% versus 7% in our proposal? Please let’s not rehash the rationale of decisions for 6% of URS cases. Let’s make the recommendation without a %, which isn’t needed for the proposal to stand. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 <image001.jpg> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Mitch Stoltz Sent: Monday, February 10, 2020 2:05 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] It would be inappropriate to presume cybersquatting from the use of a "well known" brand name alone. There are any number of legitimate reasons for registering <brand>.<new gTLD>. And we have no working standard for what "well known" means, especially internationally. Cybersquatting requires intent, and if some percentage of URS proceedings are presuming intent based on no facts but the domain name itself, that's highly relevant information that should not be buried here. Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate [eff.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.eff.org_donate&d=Dw...> | https://act.eff.org/ [act.eff.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__act.eff.org_&d=DwMFaQ&c...> On 2/10/20 11:53 AM, cking@modernip.com<mailto:cking@modernip.com> wrote: Agree Georges. We don’t need a percent figure. We can simply observe that ICANN needs specific info for data collection/oversight & outline those required fields. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 <image001.jpg> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> On Behalf Of Nahitchevansky, Georges Sent: Monday, February 10, 2020 1:37 PM To: Greg Shatan <gregshatanipc@gmail.com><mailto:gregshatanipc@gmail.com>; gnso-rpm-wg <gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Thank you Greg. I was looking for that email and went back through what I had reviewed. The bottom line is that of the 103 cases that had been marked as having no rational, there were 45 that included enough to know what the case had been about and the rationale. That meant that 7% just reiterated the standard and ruled in favor of a party with nothing to deduce the rationale. Of those 7%, though, a number of cases involved domain names that were based on a well-known trademark and it would not take much to understand that a domain name that was simply BRAND + gTLD likely involved cybersquatting. So in my view while there are some cases that had no rationale, I do not believe we are talking overall about cases that involved rulings with no explanations regarding domain names that primarily involved a generic word with a gTLD. Most of the 58 cases (or 103) that arguably had no specific rationale involved domain names that related to trademarks that are known, which again suggests something about the ruling. Put another way, there is a conceptual difference between a case that involves a domain name based on a well-known brand such as <cocacola.beverage> and one that involves a generic word such as <fashion.clothes>. If the cases that have no articulated rationale primarily involved the latter type of domains, I would be much more concerned. But if they mostly relate to known brands, I’m not sure that this suggests that there were errors committed by the panelist. Also, I do not believe that the 58 decisions at issue actually resulted in any appeals, which does suggest that perhaps the decisions were not unfounded. In any event, rather than go back and forth about whether we are talking about 7% or 13% of cases without a stated rationale, I think the solution is to just say that there were several cases that had no clearly stated rationale without getting into percentages. After all, we are more or less in agreement that close to 90% of the cases had articulated rationale and that there should be some tweak to address the minimum of what a URS decision should provide. Georges Nahitchevansky From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Greg Shatan Sent: Monday, February 10, 2020 1:42 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] All, Here is the Georges Nahitchevansky email that was referred to in last week's discussion of the percentage of URS decisions that lacked a rationale. There was a subsequent discussion, so I recommend going back to the list if you want to see the follow-up. Greg ---------- Forwarded message --------- From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Date: Thu, Aug 9, 2018 at 3:27 PM Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>, Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>, gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Rebecca: I do not disagree with the notion that we should discuss what a decision should contain, but I don’t think we have a consensus as to what that should be in the URS context (given the pricing of URS proceedings). Moreover, a review of the URS cases makes your 13% number and comment of “significant due process and implementation issues” point questionable. At NAF for example, there were 827 cases that that your research assistants reviewed. I found a total of about 103 that your team flagged as having no articulated decisions. I would agree that in 58 cases the decisions lacked details, but in 45 cases there were details that sufficiently let you know what the case was about and the basis of the resolution. I am sure we can argue about these 45 cases and whether they should say more, but ultimately we are really only talking about 58 cases that actually do not have any specific details and just provide the standard and a resolution (although I note that most of these cases involve domain names based on fairly well known marks such as NISSAN, DATSUN, TEXACO, BLOOMBERG, BNP PARIBAS etc., so you pretty much know what trademark was involved.). In all, we are really talking about 7% of the cases that have no details, which is not significant. Again, we can discuss what the decisions should provide, but I don’t think we ought to be qualifying this as a “significant” issue per se (as 93% of them have details). There are other issues being considered in the URS review that have better percentage numbers as an issue that are viewed as not being significant per se. The point is that the URS looks to be working appropriately and there are probably some tweaks and refinements needed but this is not sky is falling issue. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Thursday, August 9, 2018 1:22 PM To: Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 My apologies for missing the meeting. Comment on the big document: This is currently only covered under Defenses but I would put it for discussion/recommendations under 2. Examiners’ Guide/3. Other Issues because it goes beyond defenses: Decisions should contain basic information, including what the trademark is, what the finding of abuse is and/or what findings are on any defenses—13% of decisions did not, and this raises significant due process and implementation issues. ________________________________ From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>> Sent: Wednesday, August 8, 2018 3:56:54 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 Dear All, Please see below the action items and notes captured by staff from the RPM PDP WG call held on 08 August 2018 (17:00-18:30 UTC). Staff have posted to the wiki space the action items and notes. Please note that these will be high-level notes and are not meant as a substitute for the recording. The recording, AC chat, and attendance records are posted on the wiki at: https://community.icann.org/x/uwNpBQ<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_uwNpBQ&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=gcgRms-bmezGQQmwXCqLMQXOdSv3gly_0bWYNSuRlY8&e=> Best Regards, Ariel Ariel Xinyue Liang GNSO Policy Support Specialist Internet Corporation for Assigned Names and Numbers (ICANN) == ACTION ITEMS: * Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. * Staff to recirculate the Super Consolidated URS Topics Table document * WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * WG members to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, during next week’s call. Later period to discuss larger policy issues. NOTES: Review Agenda/Statements of Interest * George Kirikos has become a member of the At-Large Community: https://community.icann.org/display/gnsosoi/George+Kirikos+SOI<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_gnsosoi_George-2BKirikos-2BSOI&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=8-YfNNseZ7YW77BHJT9ciEr_I08JQcazWKn1rxNI900&e=> General Comment on the Super Consolidated URS Topics Table Document * The topics in the table were developed by the WG members and deliberated on by the WG & URS Sub Teams. Each Sub Team then did very substantial work on data collection and reviewing what came back. While the actual Sub Team recommendations and suggestions captured in this document are what is intended the WG should discuss - to see if it wishes to develop policy or operational recommendations - discussion over what should be on the actual list of topics should not be reopened unless the WG agrees to do so. We encourage all WG members to review all the previous reports from each Sub Team, and all the documents they worked on. They are linked in this Super Consolidated document (page 2). * The Super Consolidated document is a summary of findings and suggestions by the Sub Teams. The Table does not mean to limit/restrict recommendations from the WG members. If there is any issue overlapping with UDRP, can possibly be carried over to the phase II of the PDP. * Is it possible to add additional topics to the Super Consolidated Table? One WG member said that access to the Courts, for example, is a topic he raised, which isn't in the table. Statute of Limitations, whether URS should apply to legacy gTLDs as a consensus policy, are just a few of the topics not in the table. He brought it up in November 2017 (see: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_pipermail_gnso-2Drpm-2Dwg_2017-2DNovember_002585.html&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=9K7tPlV0T8K_s66bG8NPn-lU3tl3EXzj_lNA8Ged40M&s=3vzTOYEzUyrFL-GGh2IjTUK16T9AmOrla3e-MZjl_80&e=> ) and it was reflected in a later document. That's a critical issue for registrants. if they don't have access to the courts to challenge a URS decision, then it's a huge denial of their rights. * While the chart is not meant to foreclose further discussion, it is a good faith attempt at capturing the work of the sub teams. The purpose of today's, and likely the next few, calls was to make sure this was an accurate and comprehensive reflection of our discussions so far. That said, WG members should bear in mind that we are seeking consensus, so items which are unlikely to achieve that may not be appropriate to reflect as a recommendation, but could be included in public comments on the Initial Report. Also, before adding items to this chart, we will want to work with staff to see whether such topics was previously discussed, and if so, the level of agreement/consensus. In other words, it is not necessary final, but is equally an opportunity to reintroduce topics which have been discussed, but for which consensus is/was not possible. * Could we create a list of "missing issues" -- a list of issues raised in this call (and calls to follow); we can evaluate the nature and weight of these ideas later. * Regarding the Action Items highlighted in column 3 of the table, Providers ST will do a first pass of the responses from the Providers to the follow-up questions, and then discuss the issues that they identified and proposed suggestions with the full WG. Limited filing period (page 3) * One WG member believes that there should be limitation for filing period to bring URS Complaints, so the domain registered many years ago would not be subject to unfair treatment. He said a registrant who owns a domain for 20 years, for example, shouldn't have to be concerned about a policy that can take their domain down with very short time period to respond. * Other WG members said this was discussed, and did not achieve agreement. That would only even be an option if the trademark pre-dated. This is unlikely to be a situation in practice where a URS was brought because it would probably not be a "slam dunk" case after 20 years unless there had been a change of circumstances. * On the issue of delay and laches - as reported by the Docs Sub Team, the data did not provide any basis for which a policy recommendation should be made. The Providers and Practitioners Sub Teams also did not uncover any specific issues that came to either practitioners' or providers' attention. Administrative Review (page 3-4) * One WG member asked whether ICANN should bring Providers into contractual relationship in order to enforce the URS Rules & Procedures. Another member said it probably need to be ICANN’s legal department to enforce the rules & procedure. * URS Providers have MoU with ICANN. Whether it is ICANN’s compliance department or legal department to enforce the rules & procedures, it should not be controversial that Providers must abide by them. * An MOU could be legally enforceable, depending on the circumstances. 500-word Complaint limit (page 4-5) • On 500-word Complaint Limit - Practitioners' survey results were split (out of 12, 5 agree it's sufficient, 4 disagree); results included feedback from some that the word limit was too low: "arbitrary and often insufficient" and "should be slightly increased". • One member said he understands and generally agrees with the decision not to suggest an expansion of the word limit, he wonders if there aren't situations (multi- domain challenges, etc.) where a Complainant or Respondent might be given the opportunity to request an expansion. This point can be captured for decisional phase. • Another member suggested that perhaps providers can provide stats on the average word length of complaints, to see how close to the 500 words they are at present. (i.e. a table of distributions, e.g. 10% under 200 words, 20% between 201 and 300, etc.) Amending the Complaint in light of GDPR/Temp Spec (page 5-6) * One member believes that 2-3 days might not be a good rule (e.g. weekends, time to research, etc.). Maybe 5 business days. * WIPO’s approach to “doe complaints” has been very helpful and provides some comfort that the lack of true registrant/registrant organization data masked due to GDPR will not result in a deficient complaint for an omitted respondent. * ACTION ITEM: Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Forum is asking for amendment of the complaint in UDRP - under the rules that's not allowed in URS. SMD Files (page 6-7) * SMD files are used for limited purpose of demonstrating the use. * Recollection is that SMD files would be passed to the Examiners and relay the critical information related to the TM registration. That's why some people are surprised by the limited info SMD files would provide. * The SMD files contain some basic human-readable information, with the rest of the information coded. For example, the trademark itself is human-readable but the applicable Nice classification is coded. A SMD file is used by registries/registrars for validation, and as Greg noted, to demonstrate use. From the TMCH provider: http://www.trademark-clearinghouse.com/help/faq/which-information-does-smd-file-contain<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearinghouse.com_help_faq_which-2Dinformation-2Ddoes-2Dsmd-2Dfile-2Dcontain&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=v3df_qE8Dw_U7YY7_IfhIMgGSxt-a44LbNskorrbTIg&e=> * If the intent of the STI was that the SMD file would be a file summary, that got lost somewhere along the way, way before the SMD file was designed by the TMCH providers. * Rules 3(b)(v) Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use –which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse * It might be useful to look at the spec that they relied on. But the real question is how should the examiner get the relevant data about the Complainant’s mark. The SMD file is probably not the answer, if it was ever intended to be. * the Examiner is not required to second-guess the SMD file. Its existence is sufficient that the mark has had use validated by the TMCH. Other Topics (page 7-8) * These are policy proposals can be brought up when WG members are proposing changes to the URS policy itself. Charter asks us to address the question whether the URS should become a consensus policy applicable to legacy domains. Charter is not specific regarding whether such discussion should occur in phase I or phase II. This feedback illustrates that the ST didn't get to propose policy changes, it is for the WG to discuss and propose changes. * when we reference the STI and IRT reports, we need to keep in mind they only had about 1-2 months to complete their work and produce a report; they were not standard PDP working groups and had limited charters and mandates, which were set by the Board * This is feedback from one Provider, who may want to grow their business. Practitioners survey are from Complaints' side. Need to have a balanced solution when considering the input. * There were plenty of practitioners that represent registrants in the Subgroup, although their experience was largely with the UDRP. Duration of response period (Page 11) * One member believes that if the URS continues in its current form, it would affect valuable domain names. The ones the registrants that do want to defend them, 14 days are not sufficient. 20 days may be more appropriate. It should be based on the age of the domain name. If a domain is 3 months, it will have a shorter period to respond. If you own a domain name for 5-10 years, response period would be longer so less urgency. * Several other WG members disagree. The URS is supposed to be an expedited proceeding so increasing the length of time of a streamlined proceeding defeats the purpose. At most, there could be an additional 3 or 4 days extension period for cause. The point is that there are enough circumstances that give rise to the URS 'quick response' that we should NOT make assumptions into policy. It is an assumption that an "aged" domain would not require a fast response. In Mexico, we have not been able to file a domain name case due to Courts ignorance about the subject and also, because it could take years to be solved. We're spinning out fo control - extending the time to respond to URS cases just because a domain registration is not new defeats the purpose of fast action to take down an infringing domain once it's discovered. The URS is meant to address clear and convincing cases of infringement. A person registers a domain name for less than $50 and brand owner find out about at some point and then files an injunction in court for tens of thousands of dollars. Where is the balance. Examiners Guide (page 13) * The WIPO guidance for examiners took 1500 hours to develop. * The WIPO guidance is relevant to the URS, the elements are shown are the same and the differences include the burden of proof, word limit, etc. A lot of WIPO guidance goes to the shade of grey issues. URS is for clear black/white cases, so if there is a URS guidance it would likely be abbreviated. Duration of Suspension Period & Review of Implementation (page 21-23) * One WG member suggests to find out how much cost for registries & registrars to comply with the URS rules and procedures. Need to get data/feedback from the registries/registrars. * Other WG members are not sure "cost of implementation of URS" for Registries/Registrars is relevant to effectiveness of URS. We don't need to do a cost/benefit analysis (the costs & benefits aren't ICANN's), the providers, registrars, registries need to be asked if they are overburdened by the costs of compliance. * There is an action item to contact the registries/registrars about these issues. Timing TBD due to Sunrise & Claims survey launch. Other topics (page 23-24) * One WG member thinks the HSTS issue is not difficult to fix. The Providers need to improve their technical applicability to resolve the issue. 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Cyntia, Georges and Greg: I agree. While it makes for a much easier and more shallow analysis that will fit within a statistical construct, my question is still: Seven percent or thirteen percent of what? Fixating on a statistic as “significant” evidence of a flawed URS process demanding amendment is itself flawed. There is no clarity arrived at on which standard was applied to reach this number and whether: “Lack of rationale”, “no rationale”, “limited rationale” “insufficient rationale”, is the proper standard? What is the basis upon which the rationale for each of these decisions is being characterized as deficient? Cases cited? Word count? Clear error? Abuse of discretion? Are we really reviewing each case “de novo” when we have no record of what each panel had before it. Judging hundreds of decisions by their outcome alone appears to me to be highly subjective, and even if an objective standard could be agreed upon, we are looking at the end result only. We have no accounting for a myriad of input factors that may have dictated, if not at least influenced the panel’s rationale submitted for that outcome. Those factors most likely reach far beyond some weakness in the URS process. They may for example result from a failure of the application of facts to the URS process based upon what was submitted to the panelist and how well or even if each party was represented. Best regards, Scott Please click below to schedule a call with me through my assistant for: a 15-minute call<calendly.com/saustin2/15min> a 30-minute call<calendly.com/saustin2/30min> a 60-minute call<calendly.com/saustin2/60min> [cid:image002.png@01D5E03A.548E8910][IntellectualPropertyLaw 100] [microbadge[1]] <http://www.avvo.com/attorneys/33308-fl-scott-austin-1261914.html> Scott R. Austin | Board Certified Intellectual Property Attorney | VLP Law Group LLP 101 NE Third Avenue, Suite 1500, Fort Lauderdale, FL 33301 Phone: (954) 204-3744 | Fax: (954) 320-0233 | SAustin@VLPLawGroup.com<mailto:SAustin@VLPLawGroup.com> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of cking@modernip.com Sent: Monday, February 10, 2020 4:18 PM To: 'Tushnet, Rebecca' <rtushnet@law.harvard.edu>; 'Julie Hedlund' <julie.hedlund@icann.org> Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] And now we have come full circle & are back to insisting we put a % figure in the proposal & qualify the number of incomplete decisions. Why can we not just say: * There were cases of incomplete info * This is worth noting * We recommend the creation a baseline standard for decision info collected going forward The proposal to et minimum standards for collection of URS decision info is not dependent on the % or a characterization. Let’s move on. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 [Email Logo5] From: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Sent: Monday, February 10, 2020 2:56 PM To: Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Cc: cking@modernip.com<mailto:cking@modernip.com>; Griffin Barnett <Griffin@winterfeldt.law<mailto:Griffin@winterfeldt.law>>; Zak Muscovitch <zak@muscovitch.com<mailto:zak@muscovitch.com>>; Mitch Stoltz <mitch@eff.org<mailto:mitch@eff.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Several implies three or four. It’s not close to accurate—off by an order of magnitude—even accepting a standard “an expert could figure out what seems to have happened,” which is not in fact a good measure of whether there was an explanation of what happened in a proceeding. I can live with “unacceptable” but would prefer a footnote explaining the over 13% finding and its methodology as well as the competing methodology and its numbers. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Feb 10, 2020, at 3:29 PM, Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> wrote:  Dear all, Here is the suggested language that staff captured in the brief notes that was provided by WG members in the chat and discussion: “Several Determinations did not appear to have an articulated rationale.” Kind regards, Julie From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of "cking@modernip.com<mailto:cking@modernip.com>" <cking@modernip.com<mailto:cking@modernip.com>> Date: Monday, February 10, 2020 at 3:26 PM To: 'Griffin Barnett' <Griffin@Winterfeldt.law<mailto:Griffin@Winterfeldt.law>>, 'Zak Muscovitch' <zak@muscovitch.com<mailto:zak@muscovitch.com>>, 'Mitch Stoltz' <mitch@eff.org<mailto:mitch@eff.org>>, "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] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] I prefer “noteworthy”. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 <image001.jpg> From: Griffin Barnett <Griffin@Winterfeldt.law<mailto:Griffin@Winterfeldt.law>> Sent: Monday, February 10, 2020 2:22 PM To: Zak Muscovitch <zak@muscovitch.com<mailto:zak@muscovitch.com>>; cking@modernip.com<mailto:cking@modernip.com>; 'Mitch Stoltz' <mitch@eff.org<mailto:mitch@eff.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] I don’t think we can call even 13% a “significant” number, but I support in principle the move toward a general description rather than going back and forth now about whether the number is 7% or 13% or somewhere in between. Perhaps “non-trivial,” “meaningful,” etc. rather than significant? From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Zak Muscovitch Sent: Monday, February 10, 2020 3:17 PM To: cking@modernip.com<mailto:cking@modernip.com>; 'Mitch Stoltz' <mitch@eff.org<mailto:mitch@eff.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] How about we say “a significant number”? Whether it is 7% or 13% or whatever, it was spotted as a significant issue and we should identify it as such, without overstating it as for example, “a substantial number”. Zak Muscovitch Law P.C. zak@muscovitch.com<mailto:zak@muscovitch.com> 1-866-654-7129 416-924-5084 http://www.trademarks-canada.com/ [trademarks-canada.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademarks-2Dcanada....> https://www.muscovitch.com/ [muscovitch.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.muscovitch.com_&d=D...> https://dnattorney.com/ [dnattorney.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__dnattorney.com_&d=DwMFa...> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of cking@modernip.com<mailto:cking@modernip.com> Sent: February-10-20 3:13 PM To: 'Mitch Stoltz' <mitch@eff.org<mailto:mitch@eff.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Are we really going to quibble over 13% versus 7% in our proposal? Please let’s not rehash the rationale of decisions for 6% of URS cases. Let’s make the recommendation without a %, which isn’t needed for the proposal to stand. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 <image001.jpg> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Mitch Stoltz Sent: Monday, February 10, 2020 2:05 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] It would be inappropriate to presume cybersquatting from the use of a "well known" brand name alone. There are any number of legitimate reasons for registering <brand>.<new gTLD>. And we have no working standard for what "well known" means, especially internationally. Cybersquatting requires intent, and if some percentage of URS proceedings are presuming intent based on no facts but the domain name itself, that's highly relevant information that should not be buried here. Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate [eff.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.eff.org_donate&d=Dw...> | https://act.eff.org/ [act.eff.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__act.eff.org_&d=DwMFaQ&c...> On 2/10/20 11:53 AM, cking@modernip.com<mailto:cking@modernip.com> wrote: Agree Georges. We don’t need a percent figure. We can simply observe that ICANN needs specific info for data collection/oversight & outline those required fields. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 <image001.jpg> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> On Behalf Of Nahitchevansky, Georges Sent: Monday, February 10, 2020 1:37 PM To: Greg Shatan <gregshatanipc@gmail.com><mailto:gregshatanipc@gmail.com>; gnso-rpm-wg <gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Thank you Greg. I was looking for that email and went back through what I had reviewed. The bottom line is that of the 103 cases that had been marked as having no rational, there were 45 that included enough to know what the case had been about and the rationale. That meant that 7% just reiterated the standard and ruled in favor of a party with nothing to deduce the rationale. Of those 7%, though, a number of cases involved domain names that were based on a well-known trademark and it would not take much to understand that a domain name that was simply BRAND + gTLD likely involved cybersquatting. So in my view while there are some cases that had no rationale, I do not believe we are talking overall about cases that involved rulings with no explanations regarding domain names that primarily involved a generic word with a gTLD. Most of the 58 cases (or 103) that arguably had no specific rationale involved domain names that related to trademarks that are known, which again suggests something about the ruling. Put another way, there is a conceptual difference between a case that involves a domain name based on a well-known brand such as <cocacola.beverage> and one that involves a generic word such as <fashion.clothes>. If the cases that have no articulated rationale primarily involved the latter type of domains, I would be much more concerned. But if they mostly relate to known brands, I’m not sure that this suggests that there were errors committed by the panelist. Also, I do not believe that the 58 decisions at issue actually resulted in any appeals, which does suggest that perhaps the decisions were not unfounded. In any event, rather than go back and forth about whether we are talking about 7% or 13% of cases without a stated rationale, I think the solution is to just say that there were several cases that had no clearly stated rationale without getting into percentages. After all, we are more or less in agreement that close to 90% of the cases had articulated rationale and that there should be some tweak to address the minimum of what a URS decision should provide. Georges Nahitchevansky From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Greg Shatan Sent: Monday, February 10, 2020 1:42 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] All, Here is the Georges Nahitchevansky email that was referred to in last week's discussion of the percentage of URS decisions that lacked a rationale. There was a subsequent discussion, so I recommend going back to the list if you want to see the follow-up. Greg ---------- Forwarded message --------- From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Date: Thu, Aug 9, 2018 at 3:27 PM Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>, Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>, gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Rebecca: I do not disagree with the notion that we should discuss what a decision should contain, but I don’t think we have a consensus as to what that should be in the URS context (given the pricing of URS proceedings). Moreover, a review of the URS cases makes your 13% number and comment of “significant due process and implementation issues” point questionable. At NAF for example, there were 827 cases that that your research assistants reviewed. I found a total of about 103 that your team flagged as having no articulated decisions. I would agree that in 58 cases the decisions lacked details, but in 45 cases there were details that sufficiently let you know what the case was about and the basis of the resolution. I am sure we can argue about these 45 cases and whether they should say more, but ultimately we are really only talking about 58 cases that actually do not have any specific details and just provide the standard and a resolution (although I note that most of these cases involve domain names based on fairly well known marks such as NISSAN, DATSUN, TEXACO, BLOOMBERG, BNP PARIBAS etc., so you pretty much know what trademark was involved.). In all, we are really talking about 7% of the cases that have no details, which is not significant. Again, we can discuss what the decisions should provide, but I don’t think we ought to be qualifying this as a “significant” issue per se (as 93% of them have details). There are other issues being considered in the URS review that have better percentage numbers as an issue that are viewed as not being significant per se. The point is that the URS looks to be working appropriately and there are probably some tweaks and refinements needed but this is not sky is falling issue. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Thursday, August 9, 2018 1:22 PM To: Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 My apologies for missing the meeting. Comment on the big document: This is currently only covered under Defenses but I would put it for discussion/recommendations under 2. Examiners’ Guide/3. Other Issues because it goes beyond defenses: Decisions should contain basic information, including what the trademark is, what the finding of abuse is and/or what findings are on any defenses—13% of decisions did not, and this raises significant due process and implementation issues. ________________________________ From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>> Sent: Wednesday, August 8, 2018 3:56:54 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 Dear All, Please see below the action items and notes captured by staff from the RPM PDP WG call held on 08 August 2018 (17:00-18:30 UTC). Staff have posted to the wiki space the action items and notes. Please note that these will be high-level notes and are not meant as a substitute for the recording. The recording, AC chat, and attendance records are posted on the wiki at: https://community.icann.org/x/uwNpBQ<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_uwNpBQ&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=gcgRms-bmezGQQmwXCqLMQXOdSv3gly_0bWYNSuRlY8&e=> Best Regards, Ariel Ariel Xinyue Liang GNSO Policy Support Specialist Internet Corporation for Assigned Names and Numbers (ICANN) == ACTION ITEMS: * Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. * Staff to recirculate the Super Consolidated URS Topics Table document * WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * WG members to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, during next week’s call. Later period to discuss larger policy issues. NOTES: Review Agenda/Statements of Interest * George Kirikos has become a member of the At-Large Community: https://community.icann.org/display/gnsosoi/George+Kirikos+SOI<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_gnsosoi_George-2BKirikos-2BSOI&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=8-YfNNseZ7YW77BHJT9ciEr_I08JQcazWKn1rxNI900&e=> General Comment on the Super Consolidated URS Topics Table Document * The topics in the table were developed by the WG members and deliberated on by the WG & URS Sub Teams. Each Sub Team then did very substantial work on data collection and reviewing what came back. While the actual Sub Team recommendations and suggestions captured in this document are what is intended the WG should discuss - to see if it wishes to develop policy or operational recommendations - discussion over what should be on the actual list of topics should not be reopened unless the WG agrees to do so. We encourage all WG members to review all the previous reports from each Sub Team, and all the documents they worked on. They are linked in this Super Consolidated document (page 2). * The Super Consolidated document is a summary of findings and suggestions by the Sub Teams. The Table does not mean to limit/restrict recommendations from the WG members. If there is any issue overlapping with UDRP, can possibly be carried over to the phase II of the PDP. * Is it possible to add additional topics to the Super Consolidated Table? One WG member said that access to the Courts, for example, is a topic he raised, which isn't in the table. Statute of Limitations, whether URS should apply to legacy gTLDs as a consensus policy, are just a few of the topics not in the table. He brought it up in November 2017 (see: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_pipermail_gnso-2Drpm-2Dwg_2017-2DNovember_002585.html&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=9K7tPlV0T8K_s66bG8NPn-lU3tl3EXzj_lNA8Ged40M&s=3vzTOYEzUyrFL-GGh2IjTUK16T9AmOrla3e-MZjl_80&e=> ) and it was reflected in a later document. That's a critical issue for registrants. if they don't have access to the courts to challenge a URS decision, then it's a huge denial of their rights. * While the chart is not meant to foreclose further discussion, it is a good faith attempt at capturing the work of the sub teams. The purpose of today's, and likely the next few, calls was to make sure this was an accurate and comprehensive reflection of our discussions so far. That said, WG members should bear in mind that we are seeking consensus, so items which are unlikely to achieve that may not be appropriate to reflect as a recommendation, but could be included in public comments on the Initial Report. Also, before adding items to this chart, we will want to work with staff to see whether such topics was previously discussed, and if so, the level of agreement/consensus. In other words, it is not necessary final, but is equally an opportunity to reintroduce topics which have been discussed, but for which consensus is/was not possible. * Could we create a list of "missing issues" -- a list of issues raised in this call (and calls to follow); we can evaluate the nature and weight of these ideas later. * Regarding the Action Items highlighted in column 3 of the table, Providers ST will do a first pass of the responses from the Providers to the follow-up questions, and then discuss the issues that they identified and proposed suggestions with the full WG. Limited filing period (page 3) * One WG member believes that there should be limitation for filing period to bring URS Complaints, so the domain registered many years ago would not be subject to unfair treatment. He said a registrant who owns a domain for 20 years, for example, shouldn't have to be concerned about a policy that can take their domain down with very short time period to respond. * Other WG members said this was discussed, and did not achieve agreement. That would only even be an option if the trademark pre-dated. This is unlikely to be a situation in practice where a URS was brought because it would probably not be a "slam dunk" case after 20 years unless there had been a change of circumstances. * On the issue of delay and laches - as reported by the Docs Sub Team, the data did not provide any basis for which a policy recommendation should be made. The Providers and Practitioners Sub Teams also did not uncover any specific issues that came to either practitioners' or providers' attention. Administrative Review (page 3-4) * One WG member asked whether ICANN should bring Providers into contractual relationship in order to enforce the URS Rules & Procedures. Another member said it probably need to be ICANN’s legal department to enforce the rules & procedure. * URS Providers have MoU with ICANN. Whether it is ICANN’s compliance department or legal department to enforce the rules & procedures, it should not be controversial that Providers must abide by them. * An MOU could be legally enforceable, depending on the circumstances. 500-word Complaint limit (page 4-5) • On 500-word Complaint Limit - Practitioners' survey results were split (out of 12, 5 agree it's sufficient, 4 disagree); results included feedback from some that the word limit was too low: "arbitrary and often insufficient" and "should be slightly increased". • One member said he understands and generally agrees with the decision not to suggest an expansion of the word limit, he wonders if there aren't situations (multi- domain challenges, etc.) where a Complainant or Respondent might be given the opportunity to request an expansion. This point can be captured for decisional phase. • Another member suggested that perhaps providers can provide stats on the average word length of complaints, to see how close to the 500 words they are at present. (i.e. a table of distributions, e.g. 10% under 200 words, 20% between 201 and 300, etc.) Amending the Complaint in light of GDPR/Temp Spec (page 5-6) * One member believes that 2-3 days might not be a good rule (e.g. weekends, time to research, etc.). Maybe 5 business days. * WIPO’s approach to “doe complaints” has been very helpful and provides some comfort that the lack of true registrant/registrant organization data masked due to GDPR will not result in a deficient complaint for an omitted respondent. * ACTION ITEM: Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Forum is asking for amendment of the complaint in UDRP - under the rules that's not allowed in URS. SMD Files (page 6-7) * SMD files are used for limited purpose of demonstrating the use. * Recollection is that SMD files would be passed to the Examiners and relay the critical information related to the TM registration. That's why some people are surprised by the limited info SMD files would provide. * The SMD files contain some basic human-readable information, with the rest of the information coded. For example, the trademark itself is human-readable but the applicable Nice classification is coded. A SMD file is used by registries/registrars for validation, and as Greg noted, to demonstrate use. From the TMCH provider: http://www.trademark-clearinghouse.com/help/faq/which-information-does-smd-file-contain<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearinghouse.com_help_faq_which-2Dinformation-2Ddoes-2Dsmd-2Dfile-2Dcontain&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=v3df_qE8Dw_U7YY7_IfhIMgGSxt-a44LbNskorrbTIg&e=> * If the intent of the STI was that the SMD file would be a file summary, that got lost somewhere along the way, way before the SMD file was designed by the TMCH providers. * Rules 3(b)(v) Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use –which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse * It might be useful to look at the spec that they relied on. But the real question is how should the examiner get the relevant data about the Complainant’s mark. The SMD file is probably not the answer, if it was ever intended to be. * the Examiner is not required to second-guess the SMD file. Its existence is sufficient that the mark has had use validated by the TMCH. Other Topics (page 7-8) * These are policy proposals can be brought up when WG members are proposing changes to the URS policy itself. Charter asks us to address the question whether the URS should become a consensus policy applicable to legacy domains. Charter is not specific regarding whether such discussion should occur in phase I or phase II. This feedback illustrates that the ST didn't get to propose policy changes, it is for the WG to discuss and propose changes. * when we reference the STI and IRT reports, we need to keep in mind they only had about 1-2 months to complete their work and produce a report; they were not standard PDP working groups and had limited charters and mandates, which were set by the Board * This is feedback from one Provider, who may want to grow their business. Practitioners survey are from Complaints' side. Need to have a balanced solution when considering the input. * There were plenty of practitioners that represent registrants in the Subgroup, although their experience was largely with the UDRP. Duration of response period (Page 11) * One member believes that if the URS continues in its current form, it would affect valuable domain names. The ones the registrants that do want to defend them, 14 days are not sufficient. 20 days may be more appropriate. It should be based on the age of the domain name. If a domain is 3 months, it will have a shorter period to respond. If you own a domain name for 5-10 years, response period would be longer so less urgency. * Several other WG members disagree. The URS is supposed to be an expedited proceeding so increasing the length of time of a streamlined proceeding defeats the purpose. At most, there could be an additional 3 or 4 days extension period for cause. The point is that there are enough circumstances that give rise to the URS 'quick response' that we should NOT make assumptions into policy. It is an assumption that an "aged" domain would not require a fast response. In Mexico, we have not been able to file a domain name case due to Courts ignorance about the subject and also, because it could take years to be solved. We're spinning out fo control - extending the time to respond to URS cases just because a domain registration is not new defeats the purpose of fast action to take down an infringing domain once it's discovered. The URS is meant to address clear and convincing cases of infringement. A person registers a domain name for less than $50 and brand owner find out about at some point and then files an injunction in court for tens of thousands of dollars. Where is the balance. Examiners Guide (page 13) * The WIPO guidance for examiners took 1500 hours to develop. * The WIPO guidance is relevant to the URS, the elements are shown are the same and the differences include the burden of proof, word limit, etc. A lot of WIPO guidance goes to the shade of grey issues. URS is for clear black/white cases, so if there is a URS guidance it would likely be abbreviated. Duration of Suspension Period & Review of Implementation (page 21-23) * One WG member suggests to find out how much cost for registries & registrars to comply with the URS rules and procedures. Need to get data/feedback from the registries/registrars. * Other WG members are not sure "cost of implementation of URS" for Registries/Registrars is relevant to effectiveness of URS. We don't need to do a cost/benefit analysis (the costs & benefits aren't ICANN's), the providers, registrars, registries need to be asked if they are overburdened by the costs of compliance. * There is an action item to contact the registries/registrars about these issues. Timing TBD due to Sunrise & Claims survey launch. Other topics (page 23-24) * One WG member thinks the HSTS issue is not difficult to fix. The Providers need to improve their technical applicability to resolve the issue. 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There is no reliable standard for reporting. Some panelists provided little/no rationale for URS decisions. We, therefore, propose a minimum set of standardized info be provided for each decision. The methodology is irrelevant. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 From: Tushnet, Rebecca <rtushnet@law.harvard.edu> Sent: Monday, February 10, 2020 4:57 PM To: Scott Austin <saustin@vlplawgroup.com> Cc: cking@modernip.com; Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] If you look at the summary and methodology sections of the spreadsheet I circulated, you will find your questions answered as to that analysis. The standard for saying there was no rationale was: was there anything more than a cut and paste copy of the standards or of a section number. If yes, then it was coded as having a rationale. I agree that Georges’ methodology involves many more judgment calls. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Feb 10, 2020, at 5:48 PM, Scott Austin <saustin@vlplawgroup.com <mailto:saustin@vlplawgroup.com> > wrote:  Cyntia, Georges and Greg: I agree. While it makes for a much easier and more shallow analysis that will fit within a statistical construct, my question is still: Seven percent or thirteen percent of what? Fixating on a statistic as “significant” evidence of a flawed URS process demanding amendment is itself flawed. There is no clarity arrived at on which standard was applied to reach this number and whether: “Lack of rationale”, “no rationale”, “limited rationale” “insufficient rationale”, is the proper standard? What is the basis upon which the rationale for each of these decisions is being characterized as deficient? Cases cited? Word count? Clear error? Abuse of discretion? Are we really reviewing each case “de novo” when we have no record of what each panel had before it. Judging hundreds of decisions by their outcome alone appears to me to be highly subjective, and even if an objective standard could be agreed upon, we are looking at the end result only. We have no accounting for a myriad of input factors that may have dictated, if not at least influenced the panel’s rationale submitted for that outcome. Those factors most likely reach far beyond some weakness in the URS process. They may for example result from a failure of the application of facts to the URS process based upon what was submitted to the panelist and how well or even if each party was represented. Best regards, Scott Please click below to schedule a call with me through my assistant for: a 15-minute call a 30-minute call a 60-minute call <image002.png> <image003.jpg> <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.avvo.com_attorneys_3...> <image004.jpg> Scott R. Austin | Board Certified Intellectual Property Attorney | VLP Law Group LLP 101 NE Third Avenue, Suite 1500, Fort Lauderdale, FL 33301 Phone: (954) 204-3744 | Fax: (954) 320-0233 | <mailto:SAustin@VLPLawGroup.com> SAustin@VLPLawGroup.com From: GNSO-RPM-WG < <mailto:gnso-rpm-wg-bounces@icann.org> gnso-rpm-wg-bounces@icann.org> On Behalf Of <mailto:cking@modernip.com> cking@modernip.com Sent: Monday, February 10, 2020 4:18 PM To: 'Tushnet, Rebecca' < <mailto:rtushnet@law.harvard.edu> rtushnet@law.harvard.edu>; 'Julie Hedlund' < <mailto:julie.hedlund@icann.org> julie.hedlund@icann.org> Cc: <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] And now we have come full circle & are back to insisting we put a % figure in the proposal & qualify the number of incomplete decisions. Why can we not just say: * There were cases of incomplete info * This is worth noting * We recommend the creation a baseline standard for decision info collected going forward The proposal to et minimum standards for collection of URS decision info is not dependent on the % or a characterization. Let’s move on. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 <image005.jpg> From: Tushnet, Rebecca < <mailto:rtushnet@law.harvard.edu> rtushnet@law.harvard.edu> Sent: Monday, February 10, 2020 2:56 PM To: Julie Hedlund < <mailto:julie.hedlund@icann.org> julie.hedlund@icann.org> Cc: <mailto:cking@modernip.com> cking@modernip.com; Griffin Barnett < <mailto:Griffin@winterfeldt.law> Griffin@winterfeldt.law>; Zak Muscovitch < <mailto:zak@muscovitch.com> zak@muscovitch.com>; Mitch Stoltz < <mailto:mitch@eff.org> mitch@eff.org>; <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Several implies three or four. It’s not close to accurate—off by an order of magnitude—even accepting a standard “an expert could figure out what seems to have happened,” which is not in fact a good measure of whether there was an explanation of what happened in a proceeding. I can live with “unacceptable” but would prefer a footnote explaining the over 13% finding and its methodology as well as the competing methodology and its numbers. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Feb 10, 2020, at 3:29 PM, Julie Hedlund <julie.hedlund@icann.org <mailto:julie.hedlund@icann.org> > wrote:  Dear all, Here is the suggested language that staff captured in the brief notes that was provided by WG members in the chat and discussion: “Several Determinations did not appear to have an articulated rationale.” Kind regards, Julie From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> > on behalf of "cking@modernip.com <mailto:cking@modernip.com> " <cking@modernip.com <mailto:cking@modernip.com> > Date: Monday, February 10, 2020 at 3:26 PM To: 'Griffin Barnett' <Griffin@Winterfeldt.law <mailto:Griffin@Winterfeldt.law> >, 'Zak Muscovitch' <zak@muscovitch.com <mailto:zak@muscovitch.com> >, 'Mitch Stoltz' <mitch@eff.org <mailto:mitch@eff.org> >, "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] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] I prefer “noteworthy”. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 <image001.jpg> From: Griffin Barnett < <mailto:Griffin@Winterfeldt.law> Griffin@Winterfeldt.law> Sent: Monday, February 10, 2020 2:22 PM To: Zak Muscovitch < <mailto:zak@muscovitch.com> zak@muscovitch.com>; <mailto:cking@modernip.com> cking@modernip.com; 'Mitch Stoltz' < <mailto:mitch@eff.org> mitch@eff.org>; <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg@icann.org Subject: RE: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] I don’t think we can call even 13% a “significant” number, but I support in principle the move toward a general description rather than going back and forth now about whether the number is 7% or 13% or somewhere in between. Perhaps “non-trivial,” “meaningful,” etc. rather than significant? From: GNSO-RPM-WG [ <mailto:gnso-rpm-wg-bounces@icann.org> mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Zak Muscovitch Sent: Monday, February 10, 2020 3:17 PM To: <mailto:cking@modernip.com> cking@modernip.com; 'Mitch Stoltz' < <mailto:mitch@eff.org> mitch@eff.org>; <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] How about we say “a significant number”? Whether it is 7% or 13% or whatever, it was spotted as a significant issue and we should identify it as such, without overstating it as for example, “a substantial number”. Zak Muscovitch Law P.C. <mailto:zak@muscovitch.com> zak@muscovitch.com 1-866-654-7129 416-924-5084 <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademarks-2Dcanada....> http://www.trademarks-canada.com/ [trademarks-canada.com] <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.muscovitch.com_&d=D...> https://www.muscovitch.com/ [muscovitch.com] <https://urldefense.proofpoint.com/v2/url?u=https-3A__dnattorney.com_&d=DwMFa...> https://dnattorney.com/ [dnattorney.com] From: GNSO-RPM-WG < <mailto:gnso-rpm-wg-bounces@icann.org> gnso-rpm-wg-bounces@icann.org> On Behalf Of <mailto:cking@modernip.com> cking@modernip.com Sent: February-10-20 3:13 PM To: 'Mitch Stoltz' < <mailto:mitch@eff.org> mitch@eff.org>; <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Are we really going to quibble over 13% versus 7% in our proposal? Please let’s not rehash the rationale of decisions for 6% of URS cases. Let’s make the recommendation without a %, which isn’t needed for the proposal to stand. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 <image001.jpg> From: GNSO-RPM-WG < <mailto:gnso-rpm-wg-bounces@icann.org> gnso-rpm-wg-bounces@icann.org> On Behalf Of Mitch Stoltz Sent: Monday, February 10, 2020 2:05 PM To: <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] It would be inappropriate to presume cybersquatting from the use of a "well known" brand name alone. There are any number of legitimate reasons for registering <brand>.<new gTLD>. And we have no working standard for what "well known" means, especially internationally. Cybersquatting requires intent, and if some percentage of URS proceedings are presuming intent based on no facts but the domain name itself, that's highly relevant information that should not be buried here. Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate [eff.org] <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.eff.org_donate&d=Dw...> | https://act.eff.org/ [act.eff.org] <https://urldefense.proofpoint.com/v2/url?u=https-3A__act.eff.org_&d=DwMFaQ&c...> On 2/10/20 11:53 AM, cking@modernip.com <mailto:cking@modernip.com> wrote: Agree Georges. We don’t need a percent figure. We can simply observe that ICANN needs specific info for data collection/oversight & outline those required fields. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 <image001.jpg> From: GNSO-RPM-WG <mailto:gnso-rpm-wg-bounces@icann.org> <gnso-rpm-wg-bounces@icann.org> On Behalf Of Nahitchevansky, Georges Sent: Monday, February 10, 2020 1:37 PM To: Greg Shatan <mailto:gregshatanipc@gmail.com> <gregshatanipc@gmail.com>; gnso-rpm-wg <mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Thank you Greg. I was looking for that email and went back through what I had reviewed. The bottom line is that of the 103 cases that had been marked as having no rational, there were 45 that included enough to know what the case had been about and the rationale. That meant that 7% just reiterated the standard and ruled in favor of a party with nothing to deduce the rationale. Of those 7%, though, a number of cases involved domain names that were based on a well-known trademark and it would not take much to understand that a domain name that was simply BRAND + gTLD likely involved cybersquatting. So in my view while there are some cases that had no rationale, I do not believe we are talking overall about cases that involved rulings with no explanations regarding domain names that primarily involved a generic word with a gTLD. Most of the 58 cases (or 103) that arguably had no specific rationale involved domain names that related to trademarks that are known, which again suggests something about the ruling. Put another way, there is a conceptual difference between a case that involves a domain name based on a well-known brand such as <cocacola.beverage> and one that involves a generic word such as <fashion.clothes>. If the cases that have no articulated rationale primarily involved the latter type of domains, I would be much more concerned. But if they mostly relate to known brands, I’m not sure that this suggests that there were errors committed by the panelist. Also, I do not believe that the 58 decisions at issue actually resulted in any appeals, which does suggest that perhaps the decisions were not unfounded. In any event, rather than go back and forth about whether we are talking about 7% or 13% of cases without a stated rationale, I think the solution is to just say that there were several cases that had no clearly stated rationale without getting into percentages. After all, we are more or less in agreement that close to 90% of the cases had articulated rationale and that there should be some tweak to address the minimum of what a URS decision should provide. Georges Nahitchevansky From: GNSO-RPM-WG < <mailto:gnso-rpm-wg-bounces@icann.org> gnso-rpm-wg-bounces@icann.org> On Behalf Of Greg Shatan Sent: Monday, February 10, 2020 1:42 PM To: gnso-rpm-wg < <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] All, Here is the Georges Nahitchevansky email that was referred to in last week's discussion of the percentage of URS decisions that lacked a rationale. There was a subsequent discussion, so I recommend going back to the list if you want to see the follow-up. Greg ---------- Forwarded message --------- From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com <mailto:ghn@kilpatricktownsend.com> > Date: Thu, Aug 9, 2018 at 3:27 PM Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 To: Tushnet, Rebecca <rtushnet@law.harvard.edu <mailto:rtushnet@law.harvard.edu> >, Ariel Liang <ariel.liang@icann.org <mailto:ariel.liang@icann.org> >, gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> > Rebecca: I do not disagree with the notion that we should discuss what a decision should contain, but I don’t think we have a consensus as to what that should be in the URS context (given the pricing of URS proceedings). Moreover, a review of the URS cases makes your 13% number and comment of “significant due process and implementation issues” point questionable. At NAF for example, there were 827 cases that that your research assistants reviewed. I found a total of about 103 that your team flagged as having no articulated decisions. I would agree that in 58 cases the decisions lacked details, but in 45 cases there were details that sufficiently let you know what the case was about and the basis of the resolution. I am sure we can argue about these 45 cases and whether they should say more, but ultimately we are really only talking about 58 cases that actually do not have any specific details and just provide the standard and a resolution (although I note that most of these cases involve domain names based on fairly well known marks such as NISSAN, DATSUN, TEXACO, BLOOMBERG, BNP PARIBAS etc., so you pretty much know what trademark was involved.). In all, we are really talking about 7% of the cases that have no details, which is not significant. Again, we can discuss what the decisions should provide, but I don’t think we ought to be qualifying this as a “significant” issue per se (as 93% of them have details). There are other issues being considered in the URS review that have better percentage numbers as an issue that are viewed as not being significant per se. The point is that the URS looks to be working appropriately and there are probably some tweaks and refinements needed but this is not sky is falling issue. From: gnso-rpm-wg < <mailto:gnso-rpm-wg-bounces@icann.org> gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Thursday, August 9, 2018 1:22 PM To: Ariel Liang < <mailto:ariel.liang@icann.org> ariel.liang@icann.org>; <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 My apologies for missing the meeting. Comment on the big document: This is currently only covered under Defenses but I would put it for discussion/recommendations under 2. Examiners’ Guide/3. Other Issues because it goes beyond defenses: Decisions should contain basic information, including what the trademark is, what the finding of abuse is and/or what findings are on any defenses—13% of decisions did not, and this raises significant due process and implementation issues. _____ From: gnso-rpm-wg < <mailto:gnso-rpm-wg-bounces@icann.org> gnso-rpm-wg-bounces@icann.org> on behalf of Ariel Liang < <mailto:ariel.liang@icann.org> ariel.liang@icann.org> Sent: Wednesday, August 8, 2018 3:56:54 PM To: <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 Dear All, Please see below the action items and notes captured by staff from the RPM PDP WG call held on 08 August 2018 (17:00-18:30 UTC). Staff have posted to the wiki space the action items and notes. Please note that these will be high-level notes and are not meant as a substitute for the recording. The recording, AC chat, and attendance records are posted on the wiki at: https://community.icann.org/x/uwNpBQ <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_u...> Best Regards, Ariel Ariel Xinyue Liang GNSO Policy Support Specialist Internet Corporation for Assigned Names and Numbers (ICANN) == ACTION ITEMS: * Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. * Staff to recirculate the Super Consolidated URS Topics Table document * WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * WG members to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, during next week’s call. Later period to discuss larger policy issues. NOTES: Review Agenda/Statements of Interest * George Kirikos has become a member of the At-Large Community: <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dis...> https://community.icann.org/display/gnsosoi/George+Kirikos+SOI General Comment on the Super Consolidated URS Topics Table Document * The topics in the table were developed by the WG members and deliberated on by the WG & URS Sub Teams. Each Sub Team then did very substantial work on data collection and reviewing what came back. While the actual Sub Team recommendations and suggestions captured in this document are what is intended the WG should discuss - to see if it wishes to develop policy or operational recommendations - discussion over what should be on the actual list of topics should not be reopened unless the WG agrees to do so. We encourage all WG members to review all the previous reports from each Sub Team, and all the documents they worked on. They are linked in this Super Consolidated document (page 2). * The Super Consolidated document is a summary of findings and suggestions by the Sub Teams. The Table does not mean to limit/restrict recommendations from the WG members. If there is any issue overlapping with UDRP, can possibly be carried over to the phase II of the PDP. * Is it possible to add additional topics to the Super Consolidated Table? One WG member said that access to the Courts, for example, is a topic he raised, which isn't in the table. Statute of Limitations, whether URS should apply to legacy gTLDs as a consensus policy, are just a few of the topics not in the table. He brought it up in November 2017 (see: <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_pipermail_...> https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html ) and it was reflected in a later document. That's a critical issue for registrants. if they don't have access to the courts to challenge a URS decision, then it's a huge denial of their rights. * While the chart is not meant to foreclose further discussion, it is a good faith attempt at capturing the work of the sub teams. The purpose of today's, and likely the next few, calls was to make sure this was an accurate and comprehensive reflection of our discussions so far. That said, WG members should bear in mind that we are seeking consensus, so items which are unlikely to achieve that may not be appropriate to reflect as a recommendation, but could be included in public comments on the Initial Report. Also, before adding items to this chart, we will want to work with staff to see whether such topics was previously discussed, and if so, the level of agreement/consensus. In other words, it is not necessary final, but is equally an opportunity to reintroduce topics which have been discussed, but for which consensus is/was not possible. * Could we create a list of "missing issues" -- a list of issues raised in this call (and calls to follow); we can evaluate the nature and weight of these ideas later. * Regarding the Action Items highlighted in column 3 of the table, Providers ST will do a first pass of the responses from the Providers to the follow-up questions, and then discuss the issues that they identified and proposed suggestions with the full WG. Limited filing period (page 3) * One WG member believes that there should be limitation for filing period to bring URS Complaints, so the domain registered many years ago would not be subject to unfair treatment. He said a registrant who owns a domain for 20 years, for example, shouldn't have to be concerned about a policy that can take their domain down with very short time period to respond. * Other WG members said this was discussed, and did not achieve agreement. That would only even be an option if the trademark pre-dated. This is unlikely to be a situation in practice where a URS was brought because it would probably not be a "slam dunk" case after 20 years unless there had been a change of circumstances. * On the issue of delay and laches - as reported by the Docs Sub Team, the data did not provide any basis for which a policy recommendation should be made. The Providers and Practitioners Sub Teams also did not uncover any specific issues that came to either practitioners' or providers' attention. Administrative Review (page 3-4) * One WG member asked whether ICANN should bring Providers into contractual relationship in order to enforce the URS Rules & Procedures. Another member said it probably need to be ICANN’s legal department to enforce the rules & procedure. * URS Providers have MoU with ICANN. Whether it is ICANN’s compliance department or legal department to enforce the rules & procedures, it should not be controversial that Providers must abide by them. * An MOU could be legally enforceable, depending on the circumstances. 500-word Complaint limit (page 4-5) * On 500-word Complaint Limit - Practitioners' survey results were split (out of 12, 5 agree it's sufficient, 4 disagree); results included feedback from some that the word limit was too low: "arbitrary and often insufficient" and "should be slightly increased". * One member said he understands and generally agrees with the decision not to suggest an expansion of the word limit, he wonders if there aren't situations (multi- domain challenges, etc.) where a Complainant or Respondent might be given the opportunity to request an expansion. This point can be captured for decisional phase. * Another member suggested that perhaps providers can provide stats on the average word length of complaints, to see how close to the 500 words they are at present. (i.e. a table of distributions, e.g. 10% under 200 words, 20% between 201 and 300, etc.) Amending the Complaint in light of GDPR/Temp Spec (page 5-6) * One member believes that 2-3 days might not be a good rule (e.g. weekends, time to research, etc.). Maybe 5 business days. * WIPO’s approach to “doe complaints” has been very helpful and provides some comfort that the lack of true registrant/registrant organization data masked due to GDPR will not result in a deficient complaint for an omitted respondent. * ACTION ITEM: Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Forum is asking for amendment of the complaint in UDRP - under the rules that's not allowed in URS. SMD Files (page 6-7) * SMD files are used for limited purpose of demonstrating the use. * Recollection is that SMD files would be passed to the Examiners and relay the critical information related to the TM registration. That's why some people are surprised by the limited info SMD files would provide. * The SMD files contain some basic human-readable information, with the rest of the information coded. For example, the trademark itself is human-readable but the applicable Nice classification is coded. A SMD file is used by registries/registrars for validation, and as Greg noted, to demonstrate use. From the TMCH provider: <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearing...> http://www.trademark-clearinghouse.com/help/faq/which-information-does-smd-f... * If the intent of the STI was that the SMD file would be a file summary, that got lost somewhere along the way, way before the SMD file was designed by the TMCH providers. * Rules 3(b)(v) Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use –which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse * It might be useful to look at the spec that they relied on. But the real question is how should the examiner get the relevant data about the Complainant’s mark. The SMD file is probably not the answer, if it was ever intended to be. * the Examiner is not required to second-guess the SMD file. Its existence is sufficient that the mark has had use validated by the TMCH. Other Topics (page 7-8) * These are policy proposals can be brought up when WG members are proposing changes to the URS policy itself. Charter asks us to address the question whether the URS should become a consensus policy applicable to legacy domains. Charter is not specific regarding whether such discussion should occur in phase I or phase II. This feedback illustrates that the ST didn't get to propose policy changes, it is for the WG to discuss and propose changes. * when we reference the STI and IRT reports, we need to keep in mind they only had about 1-2 months to complete their work and produce a report; they were not standard PDP working groups and had limited charters and mandates, which were set by the Board * This is feedback from one Provider, who may want to grow their business. Practitioners survey are from Complaints' side. Need to have a balanced solution when considering the input. * There were plenty of practitioners that represent registrants in the Subgroup, although their experience was largely with the UDRP. Duration of response period (Page 11) * One member believes that if the URS continues in its current form, it would affect valuable domain names. The ones the registrants that do want to defend them, 14 days are not sufficient. 20 days may be more appropriate. It should be based on the age of the domain name. If a domain is 3 months, it will have a shorter period to respond. If you own a domain name for 5-10 years, response period would be longer so less urgency. * Several other WG members disagree. The URS is supposed to be an expedited proceeding so increasing the length of time of a streamlined proceeding defeats the purpose. At most, there could be an additional 3 or 4 days extension period for cause. The point is that there are enough circumstances that give rise to the URS 'quick response' that we should NOT make assumptions into policy. It is an assumption that an "aged" domain would not require a fast response. In Mexico, we have not been able to file a domain name case due to Courts ignorance about the subject and also, because it could take years to be solved. We're spinning out fo control - extending the time to respond to URS cases just because a domain registration is not new defeats the purpose of fast action to take down an infringing domain once it's discovered. The URS is meant to address clear and convincing cases of infringement. A person registers a domain name for less than $50 and brand owner find out about at some point and then files an injunction in court for tens of thousands of dollars. Where is the balance. Examiners Guide (page 13) * The WIPO guidance for examiners took 1500 hours to develop. * The WIPO guidance is relevant to the URS, the elements are shown are the same and the differences include the burden of proof, word limit, etc. A lot of WIPO guidance goes to the shade of grey issues. URS is for clear black/white cases, so if there is a URS guidance it would likely be abbreviated. Duration of Suspension Period & Review of Implementation (page 21-23) * One WG member suggests to find out how much cost for registries & registrars to comply with the URS rules and procedures. Need to get data/feedback from the registries/registrars. * Other WG members are not sure "cost of implementation of URS" for Registries/Registrars is relevant to effectiveness of URS. We don't need to do a cost/benefit analysis (the costs & benefits aren't ICANN's), the providers, registrars, registries need to be asked if they are overburdened by the costs of compliance. * There is an action item to contact the registries/registrars about these issues. Timing TBD due to Sunrise & Claims survey launch. Other topics (page 23-24) * One WG member thinks the HSTS issue is not difficult to fix. The Providers need to improve their technical applicability to resolve the issue. 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Cyntia’s suggestion has great merit – truthful, non-presumptive, and notes that we recommend action. Michael R. [cid:image002.png@01D5E0C6.BEEE4390] Michael R. Graham Senior Counsel and Global Director, Intellectual Property, Expedia Group T +1 206 481 4330 | M +1 425 241 1459 1111 Expedia Group Way W | Seattle, WA 98119 expediagroup.com Email: migraham@expediagroup.com<mailto:migraham@expediagroup.com> [cid:image003.png@01D5E0C6.BEEE4390] From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of cking@modernip.com Sent: Monday, February 10, 2020 1:18 PM To: 'Tushnet, Rebecca' <rtushnet@law.harvard.edu>; 'Julie Hedlund' <julie.hedlund@icann.org> Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] And now we have come full circle & are back to insisting we put a % figure in the proposal & qualify the number of incomplete decisions. Why can we not just say: * There were cases of incomplete info * This is worth noting * We recommend the creation a baseline standard for decision info collected going forward The proposal to et minimum standards for collection of URS decision info is not dependent on the % or a characterization. Let’s move on. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 [Email Logo5] From: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Sent: Monday, February 10, 2020 2:56 PM To: Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Cc: cking@modernip.com<mailto:cking@modernip.com>; Griffin Barnett <Griffin@winterfeldt.law<mailto:Griffin@winterfeldt.law>>; Zak Muscovitch <zak@muscovitch.com<mailto:zak@muscovitch.com>>; Mitch Stoltz <mitch@eff.org<mailto:mitch@eff.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Several implies three or four. It’s not close to accurate—off by an order of magnitude—even accepting a standard “an expert could figure out what seems to have happened,” which is not in fact a good measure of whether there was an explanation of what happened in a proceeding. I can live with “unacceptable” but would prefer a footnote explaining the over 13% finding and its methodology as well as the competing methodology and its numbers. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Feb 10, 2020, at 3:29 PM, Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> wrote:  Dear all, Here is the suggested language that staff captured in the brief notes that was provided by WG members in the chat and discussion: “Several Determinations did not appear to have an articulated rationale.” Kind regards, Julie From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of "cking@modernip.com<mailto:cking@modernip.com>" <cking@modernip.com<mailto:cking@modernip.com>> Date: Monday, February 10, 2020 at 3:26 PM To: 'Griffin Barnett' <Griffin@Winterfeldt.law<mailto:Griffin@Winterfeldt.law>>, 'Zak Muscovitch' <zak@muscovitch.com<mailto:zak@muscovitch.com>>, 'Mitch Stoltz' <mitch@eff.org<mailto:mitch@eff.org>>, "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] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] I prefer “noteworthy”. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 <image001.jpg> From: Griffin Barnett <Griffin@Winterfeldt.law<mailto:Griffin@Winterfeldt.law>> Sent: Monday, February 10, 2020 2:22 PM To: Zak Muscovitch <zak@muscovitch.com<mailto:zak@muscovitch.com>>; cking@modernip.com<mailto:cking@modernip.com>; 'Mitch Stoltz' <mitch@eff.org<mailto:mitch@eff.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] I don’t think we can call even 13% a “significant” number, but I support in principle the move toward a general description rather than going back and forth now about whether the number is 7% or 13% or somewhere in between. Perhaps “non-trivial,” “meaningful,” etc. rather than significant? From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Zak Muscovitch Sent: Monday, February 10, 2020 3:17 PM To: cking@modernip.com<mailto:cking@modernip.com>; 'Mitch Stoltz' <mitch@eff.org<mailto:mitch@eff.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] How about we say “a significant number”? Whether it is 7% or 13% or whatever, it was spotted as a significant issue and we should identify it as such, without overstating it as for example, “a substantial number”. Zak Muscovitch Law P.C. zak@muscovitch.com<mailto:zak@muscovitch.com> 1-866-654-7129 416-924-5084 http://www.trademarks-canada.com/ [trademarks-canada.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademarks-2Dcanada....> https://www.muscovitch.com/ [muscovitch.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.muscovitch.com_&d=D...> https://dnattorney.com/ [dnattorney.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__dnattorney.com_&d=DwMFa...> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of cking@modernip.com<mailto:cking@modernip.com> Sent: February-10-20 3:13 PM To: 'Mitch Stoltz' <mitch@eff.org<mailto:mitch@eff.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Are we really going to quibble over 13% versus 7% in our proposal? Please let’s not rehash the rationale of decisions for 6% of URS cases. Let’s make the recommendation without a %, which isn’t needed for the proposal to stand. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 <image001.jpg> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Mitch Stoltz Sent: Monday, February 10, 2020 2:05 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] It would be inappropriate to presume cybersquatting from the use of a "well known" brand name alone. There are any number of legitimate reasons for registering <brand>.<new gTLD>. And we have no working standard for what "well known" means, especially internationally. Cybersquatting requires intent, and if some percentage of URS proceedings are presuming intent based on no facts but the domain name itself, that's highly relevant information that should not be buried here. Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate [eff.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.eff.org_donate&d=Dw...> | https://act.eff.org/ [act.eff.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__act.eff.org_&d=DwMFaQ&c...> On 2/10/20 11:53 AM, cking@modernip.com<mailto:cking@modernip.com> wrote: Agree Georges. We don’t need a percent figure. We can simply observe that ICANN needs specific info for data collection/oversight & outline those required fields. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 <image001.jpg> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> On Behalf Of Nahitchevansky, Georges Sent: Monday, February 10, 2020 1:37 PM To: Greg Shatan <gregshatanipc@gmail.com><mailto:gregshatanipc@gmail.com>; gnso-rpm-wg <gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Thank you Greg. I was looking for that email and went back through what I had reviewed. The bottom line is that of the 103 cases that had been marked as having no rational, there were 45 that included enough to know what the case had been about and the rationale. That meant that 7% just reiterated the standard and ruled in favor of a party with nothing to deduce the rationale. Of those 7%, though, a number of cases involved domain names that were based on a well-known trademark and it would not take much to understand that a domain name that was simply BRAND + gTLD likely involved cybersquatting. So in my view while there are some cases that had no rationale, I do not believe we are talking overall about cases that involved rulings with no explanations regarding domain names that primarily involved a generic word with a gTLD. Most of the 58 cases (or 103) that arguably had no specific rationale involved domain names that related to trademarks that are known, which again suggests something about the ruling. Put another way, there is a conceptual difference between a case that involves a domain name based on a well-known brand such as <cocacola.beverage> and one that involves a generic word such as <fashion.clothes>. If the cases that have no articulated rationale primarily involved the latter type of domains, I would be much more concerned. But if they mostly relate to known brands, I’m not sure that this suggests that there were errors committed by the panelist. Also, I do not believe that the 58 decisions at issue actually resulted in any appeals, which does suggest that perhaps the decisions were not unfounded. In any event, rather than go back and forth about whether we are talking about 7% or 13% of cases without a stated rationale, I think the solution is to just say that there were several cases that had no clearly stated rationale without getting into percentages. After all, we are more or less in agreement that close to 90% of the cases had articulated rationale and that there should be some tweak to address the minimum of what a URS decision should provide. Georges Nahitchevansky From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Greg Shatan Sent: Monday, February 10, 2020 1:42 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] All, Here is the Georges Nahitchevansky email that was referred to in last week's discussion of the percentage of URS decisions that lacked a rationale. There was a subsequent discussion, so I recommend going back to the list if you want to see the follow-up. Greg ---------- Forwarded message --------- From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Date: Thu, Aug 9, 2018 at 3:27 PM Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>, Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>, gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Rebecca: I do not disagree with the notion that we should discuss what a decision should contain, but I don’t think we have a consensus as to what that should be in the URS context (given the pricing of URS proceedings). Moreover, a review of the URS cases makes your 13% number and comment of “significant due process and implementation issues” point questionable. At NAF for example, there were 827 cases that that your research assistants reviewed. I found a total of about 103 that your team flagged as having no articulated decisions. I would agree that in 58 cases the decisions lacked details, but in 45 cases there were details that sufficiently let you know what the case was about and the basis of the resolution. I am sure we can argue about these 45 cases and whether they should say more, but ultimately we are really only talking about 58 cases that actually do not have any specific details and just provide the standard and a resolution (although I note that most of these cases involve domain names based on fairly well known marks such as NISSAN, DATSUN, TEXACO, BLOOMBERG, BNP PARIBAS etc., so you pretty much know what trademark was involved.). In all, we are really talking about 7% of the cases that have no details, which is not significant. Again, we can discuss what the decisions should provide, but I don’t think we ought to be qualifying this as a “significant” issue per se (as 93% of them have details). There are other issues being considered in the URS review that have better percentage numbers as an issue that are viewed as not being significant per se. The point is that the URS looks to be working appropriately and there are probably some tweaks and refinements needed but this is not sky is falling issue. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Thursday, August 9, 2018 1:22 PM To: Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 My apologies for missing the meeting. Comment on the big document: This is currently only covered under Defenses but I would put it for discussion/recommendations under 2. Examiners’ Guide/3. Other Issues because it goes beyond defenses: Decisions should contain basic information, including what the trademark is, what the finding of abuse is and/or what findings are on any defenses—13% of decisions did not, and this raises significant due process and implementation issues. ________________________________ From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>> Sent: Wednesday, August 8, 2018 3:56:54 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 Dear All, Please see below the action items and notes captured by staff from the RPM PDP WG call held on 08 August 2018 (17:00-18:30 UTC). Staff have posted to the wiki space the action items and notes. Please note that these will be high-level notes and are not meant as a substitute for the recording. The recording, AC chat, and attendance records are posted on the wiki at: https://community.icann.org/x/uwNpBQ<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_uwNpBQ&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=gcgRms-bmezGQQmwXCqLMQXOdSv3gly_0bWYNSuRlY8&e=> Best Regards, Ariel Ariel Xinyue Liang GNSO Policy Support Specialist Internet Corporation for Assigned Names and Numbers (ICANN) == ACTION ITEMS: * Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. * Staff to recirculate the Super Consolidated URS Topics Table document * WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * WG members to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, during next week’s call. Later period to discuss larger policy issues. NOTES: Review Agenda/Statements of Interest * George Kirikos has become a member of the At-Large Community: https://community.icann.org/display/gnsosoi/George+Kirikos+SOI<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_gnsosoi_George-2BKirikos-2BSOI&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=8-YfNNseZ7YW77BHJT9ciEr_I08JQcazWKn1rxNI900&e=> General Comment on the Super Consolidated URS Topics Table Document * The topics in the table were developed by the WG members and deliberated on by the WG & URS Sub Teams. Each Sub Team then did very substantial work on data collection and reviewing what came back. While the actual Sub Team recommendations and suggestions captured in this document are what is intended the WG should discuss - to see if it wishes to develop policy or operational recommendations - discussion over what should be on the actual list of topics should not be reopened unless the WG agrees to do so. We encourage all WG members to review all the previous reports from each Sub Team, and all the documents they worked on. They are linked in this Super Consolidated document (page 2). * The Super Consolidated document is a summary of findings and suggestions by the Sub Teams. The Table does not mean to limit/restrict recommendations from the WG members. If there is any issue overlapping with UDRP, can possibly be carried over to the phase II of the PDP. * Is it possible to add additional topics to the Super Consolidated Table? One WG member said that access to the Courts, for example, is a topic he raised, which isn't in the table. Statute of Limitations, whether URS should apply to legacy gTLDs as a consensus policy, are just a few of the topics not in the table. He brought it up in November 2017 (see: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_pipermail_gnso-2Drpm-2Dwg_2017-2DNovember_002585.html&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=9K7tPlV0T8K_s66bG8NPn-lU3tl3EXzj_lNA8Ged40M&s=3vzTOYEzUyrFL-GGh2IjTUK16T9AmOrla3e-MZjl_80&e=> ) and it was reflected in a later document. That's a critical issue for registrants. if they don't have access to the courts to challenge a URS decision, then it's a huge denial of their rights. * While the chart is not meant to foreclose further discussion, it is a good faith attempt at capturing the work of the sub teams. The purpose of today's, and likely the next few, calls was to make sure this was an accurate and comprehensive reflection of our discussions so far. That said, WG members should bear in mind that we are seeking consensus, so items which are unlikely to achieve that may not be appropriate to reflect as a recommendation, but could be included in public comments on the Initial Report. Also, before adding items to this chart, we will want to work with staff to see whether such topics was previously discussed, and if so, the level of agreement/consensus. In other words, it is not necessary final, but is equally an opportunity to reintroduce topics which have been discussed, but for which consensus is/was not possible. * Could we create a list of "missing issues" -- a list of issues raised in this call (and calls to follow); we can evaluate the nature and weight of these ideas later. * Regarding the Action Items highlighted in column 3 of the table, Providers ST will do a first pass of the responses from the Providers to the follow-up questions, and then discuss the issues that they identified and proposed suggestions with the full WG. Limited filing period (page 3) * One WG member believes that there should be limitation for filing period to bring URS Complaints, so the domain registered many years ago would not be subject to unfair treatment. He said a registrant who owns a domain for 20 years, for example, shouldn't have to be concerned about a policy that can take their domain down with very short time period to respond. * Other WG members said this was discussed, and did not achieve agreement. That would only even be an option if the trademark pre-dated. This is unlikely to be a situation in practice where a URS was brought because it would probably not be a "slam dunk" case after 20 years unless there had been a change of circumstances. * On the issue of delay and laches - as reported by the Docs Sub Team, the data did not provide any basis for which a policy recommendation should be made. The Providers and Practitioners Sub Teams also did not uncover any specific issues that came to either practitioners' or providers' attention. Administrative Review (page 3-4) * One WG member asked whether ICANN should bring Providers into contractual relationship in order to enforce the URS Rules & Procedures. Another member said it probably need to be ICANN’s legal department to enforce the rules & procedure. * URS Providers have MoU with ICANN. Whether it is ICANN’s compliance department or legal department to enforce the rules & procedures, it should not be controversial that Providers must abide by them. * An MOU could be legally enforceable, depending on the circumstances. 500-word Complaint limit (page 4-5) • On 500-word Complaint Limit - Practitioners' survey results were split (out of 12, 5 agree it's sufficient, 4 disagree); results included feedback from some that the word limit was too low: "arbitrary and often insufficient" and "should be slightly increased". • One member said he understands and generally agrees with the decision not to suggest an expansion of the word limit, he wonders if there aren't situations (multi- domain challenges, etc.) where a Complainant or Respondent might be given the opportunity to request an expansion. This point can be captured for decisional phase. • Another member suggested that perhaps providers can provide stats on the average word length of complaints, to see how close to the 500 words they are at present. (i.e. a table of distributions, e.g. 10% under 200 words, 20% between 201 and 300, etc.) Amending the Complaint in light of GDPR/Temp Spec (page 5-6) * One member believes that 2-3 days might not be a good rule (e.g. weekends, time to research, etc.). Maybe 5 business days. * WIPO’s approach to “doe complaints” has been very helpful and provides some comfort that the lack of true registrant/registrant organization data masked due to GDPR will not result in a deficient complaint for an omitted respondent. * ACTION ITEM: Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Forum is asking for amendment of the complaint in UDRP - under the rules that's not allowed in URS. SMD Files (page 6-7) * SMD files are used for limited purpose of demonstrating the use. * Recollection is that SMD files would be passed to the Examiners and relay the critical information related to the TM registration. That's why some people are surprised by the limited info SMD files would provide. * The SMD files contain some basic human-readable information, with the rest of the information coded. For example, the trademark itself is human-readable but the applicable Nice classification is coded. A SMD file is used by registries/registrars for validation, and as Greg noted, to demonstrate use. From the TMCH provider: http://www.trademark-clearinghouse.com/help/faq/which-information-does-smd-file-contain<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearinghouse.com_help_faq_which-2Dinformation-2Ddoes-2Dsmd-2Dfile-2Dcontain&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=v3df_qE8Dw_U7YY7_IfhIMgGSxt-a44LbNskorrbTIg&e=> * If the intent of the STI was that the SMD file would be a file summary, that got lost somewhere along the way, way before the SMD file was designed by the TMCH providers. * Rules 3(b)(v) Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use –which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse * It might be useful to look at the spec that they relied on. But the real question is how should the examiner get the relevant data about the Complainant’s mark. The SMD file is probably not the answer, if it was ever intended to be. * the Examiner is not required to second-guess the SMD file. Its existence is sufficient that the mark has had use validated by the TMCH. Other Topics (page 7-8) * These are policy proposals can be brought up when WG members are proposing changes to the URS policy itself. Charter asks us to address the question whether the URS should become a consensus policy applicable to legacy domains. Charter is not specific regarding whether such discussion should occur in phase I or phase II. This feedback illustrates that the ST didn't get to propose policy changes, it is for the WG to discuss and propose changes. * when we reference the STI and IRT reports, we need to keep in mind they only had about 1-2 months to complete their work and produce a report; they were not standard PDP working groups and had limited charters and mandates, which were set by the Board * This is feedback from one Provider, who may want to grow their business. Practitioners survey are from Complaints' side. Need to have a balanced solution when considering the input. * There were plenty of practitioners that represent registrants in the Subgroup, although their experience was largely with the UDRP. Duration of response period (Page 11) * One member believes that if the URS continues in its current form, it would affect valuable domain names. The ones the registrants that do want to defend them, 14 days are not sufficient. 20 days may be more appropriate. It should be based on the age of the domain name. If a domain is 3 months, it will have a shorter period to respond. If you own a domain name for 5-10 years, response period would be longer so less urgency. * Several other WG members disagree. The URS is supposed to be an expedited proceeding so increasing the length of time of a streamlined proceeding defeats the purpose. At most, there could be an additional 3 or 4 days extension period for cause. The point is that there are enough circumstances that give rise to the URS 'quick response' that we should NOT make assumptions into policy. It is an assumption that an "aged" domain would not require a fast response. In Mexico, we have not been able to file a domain name case due to Courts ignorance about the subject and also, because it could take years to be solved. We're spinning out fo control - extending the time to respond to URS cases just because a domain registration is not new defeats the purpose of fast action to take down an infringing domain once it's discovered. The URS is meant to address clear and convincing cases of infringement. A person registers a domain name for less than $50 and brand owner find out about at some point and then files an injunction in court for tens of thousands of dollars. Where is the balance. Examiners Guide (page 13) * The WIPO guidance for examiners took 1500 hours to develop. * The WIPO guidance is relevant to the URS, the elements are shown are the same and the differences include the burden of proof, word limit, etc. A lot of WIPO guidance goes to the shade of grey issues. URS is for clear black/white cases, so if there is a URS guidance it would likely be abbreviated. Duration of Suspension Period & Review of Implementation (page 21-23) * One WG member suggests to find out how much cost for registries & registrars to comply with the URS rules and procedures. Need to get data/feedback from the registries/registrars. * Other WG members are not sure "cost of implementation of URS" for Registries/Registrars is relevant to effectiveness of URS. We don't need to do a cost/benefit analysis (the costs & benefits aren't ICANN's), the providers, registrars, registries need to be asked if they are overburdened by the costs of compliance. * There is an action item to contact the registries/registrars about these issues. Timing TBD due to Sunrise & Claims survey launch. Other topics (page 23-24) * One WG member thinks the HSTS issue is not difficult to fix. The Providers need to improve their technical applicability to resolve the issue. Renee Fossen from Forum disagrees. * ACTION ITEM: Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. NEXT STEPS * ACTION ITEM: Staff to recirculate the Super Consolidated URS Topics Table document and ask all WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * ACTION ITEM: WG to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35. Later period to discuss larger policy issues. ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. 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Greg at al., What about “The WG agreed that a sufficient number of cases were reported without specific rationale, such that it recommends ..... "? Kind regards, Julie From: Greg Shatan <gregshatanipc@gmail.com> Date: Monday, February 10, 2020 at 4:24 PM To: "Tushnet, Rebecca" <rtushnet@law.harvard.edu> Cc: Julie Hedlund <julie.hedlund@icann.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [Ext] Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] I think "several" understates the case. I think "unacceptable" is unacceptable; we're trying to characterize a number (hard enough), not how we as a group feel about it (much harder) and what implications we want that characterization to have (harder still). I suggest "a substantial number of cases". Other options raise concerns: * a number of cases is too vague and might be seen as understating the case * a not-insignificant number of cases is too coy (see, also, below) * a significant number of cases gets us into discussions of statistical significance and we do not need to go there for this * numerous cases is also too vague and might be seen as overstating the case * a bunch of cases is too colloquial I don't think we should get bogged down with picking a particular number, much less going into the weeds of presenting competing numbers and competing methodologies. This in turn would lead us back into a discussion of what, exactly, constitutes a case without rationale and where to draw the line. None of this is necessary to present the proposal. Best regards, Greg On Mon, Feb 10, 2020 at 3:56 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: Several implies three or four. It’s not close to accurate—off by an order of magnitude—even accepting a standard “an expert could figure out what seems to have happened,” which is not in fact a good measure of whether there was an explanation of what happened in a proceeding. I can live with “unacceptable” but would prefer a footnote explaining the over 13% finding and its methodology as well as the competing methodology and its numbers. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Feb 10, 2020, at 3:29 PM, Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> wrote: Dear all, Here is the suggested language that staff captured in the brief notes that was provided by WG members in the chat and discussion: “Several Determinations did not appear to have an articulated rationale.” Kind regards, Julie From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of "cking@modernip.com<mailto:cking@modernip.com>" <cking@modernip.com<mailto:cking@modernip.com>> Date: Monday, February 10, 2020 at 3:26 PM To: 'Griffin Barnett' <Griffin@Winterfeldt.law>, 'Zak Muscovitch' <zak@muscovitch.com<mailto:zak@muscovitch.com>>, 'Mitch Stoltz' <mitch@eff.org<mailto:mitch@eff.org>>, "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] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] I prefer “noteworthy”. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 <image001.jpg> From: Griffin Barnett <Griffin@Winterfeldt.law> Sent: Monday, February 10, 2020 2:22 PM To: Zak Muscovitch <zak@muscovitch.com<mailto:zak@muscovitch.com>>; cking@modernip.com<mailto:cking@modernip.com>; 'Mitch Stoltz' <mitch@eff.org<mailto:mitch@eff.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] I don’t think we can call even 13% a “significant” number, but I support in principle the move toward a general description rather than going back and forth now about whether the number is 7% or 13% or somewhere in between. Perhaps “non-trivial,” “meaningful,” etc. rather than significant? From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Zak Muscovitch Sent: Monday, February 10, 2020 3:17 PM To: cking@modernip.com<mailto:cking@modernip.com>; 'Mitch Stoltz' <mitch@eff.org<mailto:mitch@eff.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] How about we say “a significant number”? Whether it is 7% or 13% or whatever, it was spotted as a significant issue and we should identify it as such, without overstating it as for example, “a substantial number”. Zak Muscovitch Law P.C. zak@muscovitch.com<mailto:zak@muscovitch.com> 1-866-654-7129 416-924-5084 http://www.trademarks-canada.com/ [trademarks-canada.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademarks-2Dcanada....> https://www.muscovitch.com/ [muscovitch.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.muscovitch.com_&d=D...> https://dnattorney.com/ [dnattorney.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__dnattorney.com_&d=DwMFa...> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of cking@modernip.com<mailto:cking@modernip.com> Sent: February-10-20 3:13 PM To: 'Mitch Stoltz' <mitch@eff.org<mailto:mitch@eff.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Are we really going to quibble over 13% versus 7% in our proposal? Please let’s not rehash the rationale of decisions for 6% of URS cases. Let’s make the recommendation without a %, which isn’t needed for the proposal to stand. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 <image001.jpg> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Mitch Stoltz Sent: Monday, February 10, 2020 2:05 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] It would be inappropriate to presume cybersquatting from the use of a "well known" brand name alone. There are any number of legitimate reasons for registering <brand>.<new gTLD>. And we have no working standard for what "well known" means, especially internationally. Cybersquatting requires intent, and if some percentage of URS proceedings are presuming intent based on no facts but the domain name itself, that's highly relevant information that should not be buried here. Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate [eff.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.eff.org_donate&d=Dw...> | https://act.eff.org/ [act.eff.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__act.eff.org_&d=DwMFaQ&c...> On 2/10/20 11:53 AM, cking@modernip.com<mailto:cking@modernip.com> wrote: Agree Georges. We don’t need a percent figure. We can simply observe that ICANN needs specific info for data collection/oversight & outline those required fields. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 <image001.jpg> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> On Behalf Of Nahitchevansky, Georges Sent: Monday, February 10, 2020 1:37 PM To: Greg Shatan <gregshatanipc@gmail.com><mailto:gregshatanipc@gmail.com>; gnso-rpm-wg <gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Thank you Greg. I was looking for that email and went back through what I had reviewed. The bottom line is that of the 103 cases that had been marked as having no rational, there were 45 that included enough to know what the case had been about and the rationale. That meant that 7% just reiterated the standard and ruled in favor of a party with nothing to deduce the rationale. Of those 7%, though, a number of cases involved domain names that were based on a well-known trademark and it would not take much to understand that a domain name that was simply BRAND + gTLD likely involved cybersquatting. So in my view while there are some cases that had no rationale, I do not believe we are talking overall about cases that involved rulings with no explanations regarding domain names that primarily involved a generic word with a gTLD. Most of the 58 cases (or 103) that arguably had no specific rationale involved domain names that related to trademarks that are known, which again suggests something about the ruling. Put another way, there is a conceptual difference between a case that involves a domain name based on a well-known brand such as <cocacola.beverage> and one that involves a generic word such as <fashion.clothes>. If the cases that have no articulated rationale primarily involved the latter type of domains, I would be much more concerned. But if they mostly relate to known brands, I’m not sure that this suggests that there were errors committed by the panelist. Also, I do not believe that the 58 decisions at issue actually resulted in any appeals, which does suggest that perhaps the decisions were not unfounded. In any event, rather than go back and forth about whether we are talking about 7% or 13% of cases without a stated rationale, I think the solution is to just say that there were several cases that had no clearly stated rationale without getting into percentages. After all, we are more or less in agreement that close to 90% of the cases had articulated rationale and that there should be some tweak to address the minimum of what a URS decision should provide. Georges Nahitchevansky From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Greg Shatan Sent: Monday, February 10, 2020 1:42 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] All, Here is the Georges Nahitchevansky email that was referred to in last week's discussion of the percentage of URS decisions that lacked a rationale. There was a subsequent discussion, so I recommend going back to the list if you want to see the follow-up. Greg ---------- Forwarded message --------- From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Date: Thu, Aug 9, 2018 at 3:27 PM Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>, Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>, gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Rebecca: I do not disagree with the notion that we should discuss what a decision should contain, but I don’t think we have a consensus as to what that should be in the URS context (given the pricing of URS proceedings). Moreover, a review of the URS cases makes your 13% number and comment of “significant due process and implementation issues” point questionable. At NAF for example, there were 827 cases that that your research assistants reviewed. I found a total of about 103 that your team flagged as having no articulated decisions. I would agree that in 58 cases the decisions lacked details, but in 45 cases there were details that sufficiently let you know what the case was about and the basis of the resolution. I am sure we can argue about these 45 cases and whether they should say more, but ultimately we are really only talking about 58 cases that actually do not have any specific details and just provide the standard and a resolution (although I note that most of these cases involve domain names based on fairly well known marks such as NISSAN, DATSUN, TEXACO, BLOOMBERG, BNP PARIBAS etc., so you pretty much know what trademark was involved.). In all, we are really talking about 7% of the cases that have no details, which is not significant. Again, we can discuss what the decisions should provide, but I don’t think we ought to be qualifying this as a “significant” issue per se (as 93% of them have details). There are other issues being considered in the URS review that have better percentage numbers as an issue that are viewed as not being significant per se. The point is that the URS looks to be working appropriately and there are probably some tweaks and refinements needed but this is not sky is falling issue. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Thursday, August 9, 2018 1:22 PM To: Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 My apologies for missing the meeting. Comment on the big document: This is currently only covered under Defenses but I would put it for discussion/recommendations under 2. Examiners’ Guide/3. Other Issues because it goes beyond defenses: Decisions should contain basic information, including what the trademark is, what the finding of abuse is and/or what findings are on any defenses—13% of decisions did not, and this raises significant due process and implementation issues. ________________________________ From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>> Sent: Wednesday, August 8, 2018 3:56:54 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 Dear All, Please see below the action items and notes captured by staff from the RPM PDP WG call held on 08 August 2018 (17:00-18:30 UTC). Staff have posted to the wiki space the action items and notes. Please note that these will be high-level notes and are not meant as a substitute for the recording. The recording, AC chat, and attendance records are posted on the wiki at: https://community.icann.org/x/uwNpBQ<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_uwNpBQ&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=gcgRms-bmezGQQmwXCqLMQXOdSv3gly_0bWYNSuRlY8&e=> Best Regards, Ariel Ariel Xinyue Liang GNSO Policy Support Specialist Internet Corporation for Assigned Names and Numbers (ICANN) == ACTION ITEMS: * Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. * Staff to recirculate the Super Consolidated URS Topics Table document * WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * WG members to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, during next week’s call. Later period to discuss larger policy issues. NOTES: Review Agenda/Statements of Interest * George Kirikos has become a member of the At-Large Community: https://community.icann.org/display/gnsosoi/George+Kirikos+SOI<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_gnsosoi_George-2BKirikos-2BSOI&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=8-YfNNseZ7YW77BHJT9ciEr_I08JQcazWKn1rxNI900&e=> General Comment on the Super Consolidated URS Topics Table Document * The topics in the table were developed by the WG members and deliberated on by the WG & URS Sub Teams. Each Sub Team then did very substantial work on data collection and reviewing what came back. While the actual Sub Team recommendations and suggestions captured in this document are what is intended the WG should discuss - to see if it wishes to develop policy or operational recommendations - discussion over what should be on the actual list of topics should not be reopened unless the WG agrees to do so. We encourage all WG members to review all the previous reports from each Sub Team, and all the documents they worked on. They are linked in this Super Consolidated document (page 2). * The Super Consolidated document is a summary of findings and suggestions by the Sub Teams. The Table does not mean to limit/restrict recommendations from the WG members. If there is any issue overlapping with UDRP, can possibly be carried over to the phase II of the PDP. * Is it possible to add additional topics to the Super Consolidated Table? One WG member said that access to the Courts, for example, is a topic he raised, which isn't in the table. Statute of Limitations, whether URS should apply to legacy gTLDs as a consensus policy, are just a few of the topics not in the table. He brought it up in November 2017 (see: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_pipermail_gnso-2Drpm-2Dwg_2017-2DNovember_002585.html&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=9K7tPlV0T8K_s66bG8NPn-lU3tl3EXzj_lNA8Ged40M&s=3vzTOYEzUyrFL-GGh2IjTUK16T9AmOrla3e-MZjl_80&e=> ) and it was reflected in a later document. That's a critical issue for registrants. if they don't have access to the courts to challenge a URS decision, then it's a huge denial of their rights. * While the chart is not meant to foreclose further discussion, it is a good faith attempt at capturing the work of the sub teams. The purpose of today's, and likely the next few, calls was to make sure this was an accurate and comprehensive reflection of our discussions so far. That said, WG members should bear in mind that we are seeking consensus, so items which are unlikely to achieve that may not be appropriate to reflect as a recommendation, but could be included in public comments on the Initial Report. Also, before adding items to this chart, we will want to work with staff to see whether such topics was previously discussed, and if so, the level of agreement/consensus. In other words, it is not necessary final, but is equally an opportunity to reintroduce topics which have been discussed, but for which consensus is/was not possible. * Could we create a list of "missing issues" -- a list of issues raised in this call (and calls to follow); we can evaluate the nature and weight of these ideas later. * Regarding the Action Items highlighted in column 3 of the table, Providers ST will do a first pass of the responses from the Providers to the follow-up questions, and then discuss the issues that they identified and proposed suggestions with the full WG. Limited filing period (page 3) * One WG member believes that there should be limitation for filing period to bring URS Complaints, so the domain registered many years ago would not be subject to unfair treatment. He said a registrant who owns a domain for 20 years, for example, shouldn't have to be concerned about a policy that can take their domain down with very short time period to respond. * Other WG members said this was discussed, and did not achieve agreement. That would only even be an option if the trademark pre-dated. This is unlikely to be a situation in practice where a URS was brought because it would probably not be a "slam dunk" case after 20 years unless there had been a change of circumstances. * On the issue of delay and laches - as reported by the Docs Sub Team, the data did not provide any basis for which a policy recommendation should be made. The Providers and Practitioners Sub Teams also did not uncover any specific issues that came to either practitioners' or providers' attention. Administrative Review (page 3-4) * One WG member asked whether ICANN should bring Providers into contractual relationship in order to enforce the URS Rules & Procedures. Another member said it probably need to be ICANN’s legal department to enforce the rules & procedure. * URS Providers have MoU with ICANN. Whether it is ICANN’s compliance department or legal department to enforce the rules & procedures, it should not be controversial that Providers must abide by them. * An MOU could be legally enforceable, depending on the circumstances. 500-word Complaint limit (page 4-5) • On 500-word Complaint Limit - Practitioners' survey results were split (out of 12, 5 agree it's sufficient, 4 disagree); results included feedback from some that the word limit was too low: "arbitrary and often insufficient" and "should be slightly increased". • One member said he understands and generally agrees with the decision not to suggest an expansion of the word limit, he wonders if there aren't situations (multi- domain challenges, etc.) where a Complainant or Respondent might be given the opportunity to request an expansion. This point can be captured for decisional phase. • Another member suggested that perhaps providers can provide stats on the average word length of complaints, to see how close to the 500 words they are at present. (i.e. a table of distributions, e.g. 10% under 200 words, 20% between 201 and 300, etc.) Amending the Complaint in light of GDPR/Temp Spec (page 5-6) * One member believes that 2-3 days might not be a good rule (e.g. weekends, time to research, etc.). Maybe 5 business days. * WIPO’s approach to “doe complaints” has been very helpful and provides some comfort that the lack of true registrant/registrant organization data masked due to GDPR will not result in a deficient complaint for an omitted respondent. * ACTION ITEM: Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Forum is asking for amendment of the complaint in UDRP - under the rules that's not allowed in URS. SMD Files (page 6-7) * SMD files are used for limited purpose of demonstrating the use. * Recollection is that SMD files would be passed to the Examiners and relay the critical information related to the TM registration. That's why some people are surprised by the limited info SMD files would provide. * The SMD files contain some basic human-readable information, with the rest of the information coded. For example, the trademark itself is human-readable but the applicable Nice classification is coded. A SMD file is used by registries/registrars for validation, and as Greg noted, to demonstrate use. From the TMCH provider: http://www.trademark-clearinghouse.com/help/faq/which-information-does-smd-file-contain<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearinghouse.com_help_faq_which-2Dinformation-2Ddoes-2Dsmd-2Dfile-2Dcontain&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=v3df_qE8Dw_U7YY7_IfhIMgGSxt-a44LbNskorrbTIg&e=> * If the intent of the STI was that the SMD file would be a file summary, that got lost somewhere along the way, way before the SMD file was designed by the TMCH providers. * Rules 3(b)(v) Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use –which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse * It might be useful to look at the spec that they relied on. But the real question is how should the examiner get the relevant data about the Complainant’s mark. The SMD file is probably not the answer, if it was ever intended to be. * the Examiner is not required to second-guess the SMD file. Its existence is sufficient that the mark has had use validated by the TMCH. Other Topics (page 7-8) * These are policy proposals can be brought up when WG members are proposing changes to the URS policy itself. Charter asks us to address the question whether the URS should become a consensus policy applicable to legacy domains. Charter is not specific regarding whether such discussion should occur in phase I or phase II. This feedback illustrates that the ST didn't get to propose policy changes, it is for the WG to discuss and propose changes. * when we reference the STI and IRT reports, we need to keep in mind they only had about 1-2 months to complete their work and produce a report; they were not standard PDP working groups and had limited charters and mandates, which were set by the Board * This is feedback from one Provider, who may want to grow their business. Practitioners survey are from Complaints' side. Need to have a balanced solution when considering the input. * There were plenty of practitioners that represent registrants in the Subgroup, although their experience was largely with the UDRP. Duration of response period (Page 11) * One member believes that if the URS continues in its current form, it would affect valuable domain names. The ones the registrants that do want to defend them, 14 days are not sufficient. 20 days may be more appropriate. It should be based on the age of the domain name. If a domain is 3 months, it will have a shorter period to respond. If you own a domain name for 5-10 years, response period would be longer so less urgency. * Several other WG members disagree. The URS is supposed to be an expedited proceeding so increasing the length of time of a streamlined proceeding defeats the purpose. At most, there could be an additional 3 or 4 days extension period for cause. The point is that there are enough circumstances that give rise to the URS 'quick response' that we should NOT make assumptions into policy. It is an assumption that an "aged" domain would not require a fast response. In Mexico, we have not been able to file a domain name case due to Courts ignorance about the subject and also, because it could take years to be solved. We're spinning out fo control - extending the time to respond to URS cases just because a domain registration is not new defeats the purpose of fast action to take down an infringing domain once it's discovered. The URS is meant to address clear and convincing cases of infringement. A person registers a domain name for less than $50 and brand owner find out about at some point and then files an injunction in court for tens of thousands of dollars. Where is the balance. Examiners Guide (page 13) * The WIPO guidance for examiners took 1500 hours to develop. * The WIPO guidance is relevant to the URS, the elements are shown are the same and the differences include the burden of proof, word limit, etc. A lot of WIPO guidance goes to the shade of grey issues. URS is for clear black/white cases, so if there is a URS guidance it would likely be abbreviated. Duration of Suspension Period & Review of Implementation (page 21-23) * One WG member suggests to find out how much cost for registries & registrars to comply with the URS rules and procedures. Need to get data/feedback from the registries/registrars. * Other WG members are not sure "cost of implementation of URS" for Registries/Registrars is relevant to effectiveness of URS. We don't need to do a cost/benefit analysis (the costs & benefits aren't ICANN's), the providers, registrars, registries need to be asked if they are overburdened by the costs of compliance. * There is an action item to contact the registries/registrars about these issues. Timing TBD due to Sunrise & Claims survey launch. Other topics (page 23-24) * One WG member thinks the HSTS issue is not difficult to fix. The Providers need to improve their technical applicability to resolve the issue. 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Getting into the weeds with percentages in a footnote does not add anything, particularly as it will be a long footnote of little overall interest. We all agree that there should be some baseline for a rationale in decisions. There is no fight about that. We hashed this issue already. The issue is what should the baseline be and that is what comments should elicit. What does it matter if its 1%, 3%, 7%, 10% or 13% if we are not debating whether or not there should be a change. If we were still arguing whether or not something should change here then the percentages might matter. But here we are recommending a baseline, so let’s put the issue as that and elicit comments. Georges Nahitchevansky Kilpatrick Townsend & Stockton LLP The Grace Building | 1114 Avenue of the Americas | New York, NY 10036-7703 office 212 775 8720 | fax 212 775 8820 ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com> | My Profile<http://www.kilpatricktownsend.com/en/People/N/NahitchevanskyGeorges> | vCard<http://www.kilpatricktownsend.com/vcard/GeorgesNahitchevansky.vcf> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Tushnet, Rebecca Sent: Monday, February 10, 2020 3:56 PM To: Julie Hedlund <julie.hedlund@icann.org> Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Several implies three or four. It’s not close to accurate—off by an order of magnitude—even accepting a standard “an expert could figure out what seems to have happened,” which is not in fact a good measure of whether there was an explanation of what happened in a proceeding. I can live with “unacceptable” but would prefer a footnote explaining the over 13% finding and its methodology as well as the competing methodology and its numbers. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Feb 10, 2020, at 3:29 PM, Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> wrote:  Dear all, Here is the suggested language that staff captured in the brief notes that was provided by WG members in the chat and discussion: “Several Determinations did not appear to have an articulated rationale.” Kind regards, Julie From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of "cking@modernip.com<mailto:cking@modernip.com>" <cking@modernip.com<mailto:cking@modernip.com>> Date: Monday, February 10, 2020 at 3:26 PM To: 'Griffin Barnett' <Griffin@Winterfeldt.law<mailto:Griffin@Winterfeldt.law>>, 'Zak Muscovitch' <zak@muscovitch.com<mailto:zak@muscovitch.com>>, 'Mitch Stoltz' <mitch@eff.org<mailto:mitch@eff.org>>, "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] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] I prefer “noteworthy”. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 <image001.jpg> From: Griffin Barnett <Griffin@Winterfeldt.law<mailto:Griffin@Winterfeldt.law>> Sent: Monday, February 10, 2020 2:22 PM To: Zak Muscovitch <zak@muscovitch.com<mailto:zak@muscovitch.com>>; cking@modernip.com<mailto:cking@modernip.com>; 'Mitch Stoltz' <mitch@eff.org<mailto:mitch@eff.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] I don’t think we can call even 13% a “significant” number, but I support in principle the move toward a general description rather than going back and forth now about whether the number is 7% or 13% or somewhere in between. Perhaps “non-trivial,” “meaningful,” etc. rather than significant? From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Zak Muscovitch Sent: Monday, February 10, 2020 3:17 PM To: cking@modernip.com<mailto:cking@modernip.com>; 'Mitch Stoltz' <mitch@eff.org<mailto:mitch@eff.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] How about we say “a significant number”? Whether it is 7% or 13% or whatever, it was spotted as a significant issue and we should identify it as such, without overstating it as for example, “a substantial number”. Zak Muscovitch Law P.C. zak@muscovitch.com<mailto:zak@muscovitch.com> 1-866-654-7129 416-924-5084 http://www.trademarks-canada.com/ [trademarks-canada.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademarks-2Dcanada....> https://www.muscovitch.com/ [muscovitch.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.muscovitch.com_&d=D...> https://dnattorney.com/ [dnattorney.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__dnattorney.com_&d=DwMFa...> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of cking@modernip.com<mailto:cking@modernip.com> Sent: February-10-20 3:13 PM To: 'Mitch Stoltz' <mitch@eff.org<mailto:mitch@eff.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Are we really going to quibble over 13% versus 7% in our proposal? Please let’s not rehash the rationale of decisions for 6% of URS cases. Let’s make the recommendation without a %, which isn’t needed for the proposal to stand. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 <image001.jpg> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Mitch Stoltz Sent: Monday, February 10, 2020 2:05 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] It would be inappropriate to presume cybersquatting from the use of a "well known" brand name alone. There are any number of legitimate reasons for registering <brand>.<new gTLD>. And we have no working standard for what "well known" means, especially internationally. Cybersquatting requires intent, and if some percentage of URS proceedings are presuming intent based on no facts but the domain name itself, that's highly relevant information that should not be buried here. Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate [eff.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.eff.org_donate&d=Dw...> | https://act.eff.org/ [act.eff.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__act.eff.org_&d=DwMFaQ&c...> On 2/10/20 11:53 AM, cking@modernip.com<mailto:cking@modernip.com> wrote: Agree Georges. We don’t need a percent figure. We can simply observe that ICANN needs specific info for data collection/oversight & outline those required fields. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 <image001.jpg> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> On Behalf Of Nahitchevansky, Georges Sent: Monday, February 10, 2020 1:37 PM To: Greg Shatan <gregshatanipc@gmail.com><mailto:gregshatanipc@gmail.com>; gnso-rpm-wg <gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Thank you Greg. I was looking for that email and went back through what I had reviewed. The bottom line is that of the 103 cases that had been marked as having no rational, there were 45 that included enough to know what the case had been about and the rationale. That meant that 7% just reiterated the standard and ruled in favor of a party with nothing to deduce the rationale. Of those 7%, though, a number of cases involved domain names that were based on a well-known trademark and it would not take much to understand that a domain name that was simply BRAND + gTLD likely involved cybersquatting. So in my view while there are some cases that had no rationale, I do not believe we are talking overall about cases that involved rulings with no explanations regarding domain names that primarily involved a generic word with a gTLD. Most of the 58 cases (or 103) that arguably had no specific rationale involved domain names that related to trademarks that are known, which again suggests something about the ruling. Put another way, there is a conceptual difference between a case that involves a domain name based on a well-known brand such as <cocacola.beverage> and one that involves a generic word such as <fashion.clothes>. If the cases that have no articulated rationale primarily involved the latter type of domains, I would be much more concerned. But if they mostly relate to known brands, I’m not sure that this suggests that there were errors committed by the panelist. Also, I do not believe that the 58 decisions at issue actually resulted in any appeals, which does suggest that perhaps the decisions were not unfounded. In any event, rather than go back and forth about whether we are talking about 7% or 13% of cases without a stated rationale, I think the solution is to just say that there were several cases that had no clearly stated rationale without getting into percentages. After all, we are more or less in agreement that close to 90% of the cases had articulated rationale and that there should be some tweak to address the minimum of what a URS decision should provide. Georges Nahitchevansky From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Greg Shatan Sent: Monday, February 10, 2020 1:42 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] All, Here is the Georges Nahitchevansky email that was referred to in last week's discussion of the percentage of URS decisions that lacked a rationale. There was a subsequent discussion, so I recommend going back to the list if you want to see the follow-up. Greg ---------- Forwarded message --------- From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Date: Thu, Aug 9, 2018 at 3:27 PM Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>, Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>, gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Rebecca: I do not disagree with the notion that we should discuss what a decision should contain, but I don’t think we have a consensus as to what that should be in the URS context (given the pricing of URS proceedings). Moreover, a review of the URS cases makes your 13% number and comment of “significant due process and implementation issues” point questionable. At NAF for example, there were 827 cases that that your research assistants reviewed. I found a total of about 103 that your team flagged as having no articulated decisions. I would agree that in 58 cases the decisions lacked details, but in 45 cases there were details that sufficiently let you know what the case was about and the basis of the resolution. I am sure we can argue about these 45 cases and whether they should say more, but ultimately we are really only talking about 58 cases that actually do not have any specific details and just provide the standard and a resolution (although I note that most of these cases involve domain names based on fairly well known marks such as NISSAN, DATSUN, TEXACO, BLOOMBERG, BNP PARIBAS etc., so you pretty much know what trademark was involved.). In all, we are really talking about 7% of the cases that have no details, which is not significant. Again, we can discuss what the decisions should provide, but I don’t think we ought to be qualifying this as a “significant” issue per se (as 93% of them have details). There are other issues being considered in the URS review that have better percentage numbers as an issue that are viewed as not being significant per se. The point is that the URS looks to be working appropriately and there are probably some tweaks and refinements needed but this is not sky is falling issue. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Thursday, August 9, 2018 1:22 PM To: Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 My apologies for missing the meeting. Comment on the big document: This is currently only covered under Defenses but I would put it for discussion/recommendations under 2. Examiners’ Guide/3. Other Issues because it goes beyond defenses: Decisions should contain basic information, including what the trademark is, what the finding of abuse is and/or what findings are on any defenses—13% of decisions did not, and this raises significant due process and implementation issues. ________________________________ From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>> Sent: Wednesday, August 8, 2018 3:56:54 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 Dear All, Please see below the action items and notes captured by staff from the RPM PDP WG call held on 08 August 2018 (17:00-18:30 UTC). Staff have posted to the wiki space the action items and notes. Please note that these will be high-level notes and are not meant as a substitute for the recording. The recording, AC chat, and attendance records are posted on the wiki at: https://community.icann.org/x/uwNpBQ<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_uwNpBQ&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=gcgRms-bmezGQQmwXCqLMQXOdSv3gly_0bWYNSuRlY8&e=> Best Regards, Ariel Ariel Xinyue Liang GNSO Policy Support Specialist Internet Corporation for Assigned Names and Numbers (ICANN) == ACTION ITEMS: * Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. * Staff to recirculate the Super Consolidated URS Topics Table document * WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * WG members to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, during next week’s call. Later period to discuss larger policy issues. NOTES: Review Agenda/Statements of Interest * George Kirikos has become a member of the At-Large Community: https://community.icann.org/display/gnsosoi/George+Kirikos+SOI<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_gnsosoi_George-2BKirikos-2BSOI&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=8-YfNNseZ7YW77BHJT9ciEr_I08JQcazWKn1rxNI900&e=> General Comment on the Super Consolidated URS Topics Table Document * The topics in the table were developed by the WG members and deliberated on by the WG & URS Sub Teams. Each Sub Team then did very substantial work on data collection and reviewing what came back. While the actual Sub Team recommendations and suggestions captured in this document are what is intended the WG should discuss - to see if it wishes to develop policy or operational recommendations - discussion over what should be on the actual list of topics should not be reopened unless the WG agrees to do so. We encourage all WG members to review all the previous reports from each Sub Team, and all the documents they worked on. They are linked in this Super Consolidated document (page 2). * The Super Consolidated document is a summary of findings and suggestions by the Sub Teams. The Table does not mean to limit/restrict recommendations from the WG members. If there is any issue overlapping with UDRP, can possibly be carried over to the phase II of the PDP. * Is it possible to add additional topics to the Super Consolidated Table? One WG member said that access to the Courts, for example, is a topic he raised, which isn't in the table. Statute of Limitations, whether URS should apply to legacy gTLDs as a consensus policy, are just a few of the topics not in the table. He brought it up in November 2017 (see: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_pipermail_gnso-2Drpm-2Dwg_2017-2DNovember_002585.html&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=9K7tPlV0T8K_s66bG8NPn-lU3tl3EXzj_lNA8Ged40M&s=3vzTOYEzUyrFL-GGh2IjTUK16T9AmOrla3e-MZjl_80&e=> ) and it was reflected in a later document. That's a critical issue for registrants. if they don't have access to the courts to challenge a URS decision, then it's a huge denial of their rights. * While the chart is not meant to foreclose further discussion, it is a good faith attempt at capturing the work of the sub teams. The purpose of today's, and likely the next few, calls was to make sure this was an accurate and comprehensive reflection of our discussions so far. That said, WG members should bear in mind that we are seeking consensus, so items which are unlikely to achieve that may not be appropriate to reflect as a recommendation, but could be included in public comments on the Initial Report. Also, before adding items to this chart, we will want to work with staff to see whether such topics was previously discussed, and if so, the level of agreement/consensus. In other words, it is not necessary final, but is equally an opportunity to reintroduce topics which have been discussed, but for which consensus is/was not possible. * Could we create a list of "missing issues" -- a list of issues raised in this call (and calls to follow); we can evaluate the nature and weight of these ideas later. * Regarding the Action Items highlighted in column 3 of the table, Providers ST will do a first pass of the responses from the Providers to the follow-up questions, and then discuss the issues that they identified and proposed suggestions with the full WG. Limited filing period (page 3) * One WG member believes that there should be limitation for filing period to bring URS Complaints, so the domain registered many years ago would not be subject to unfair treatment. He said a registrant who owns a domain for 20 years, for example, shouldn't have to be concerned about a policy that can take their domain down with very short time period to respond. * Other WG members said this was discussed, and did not achieve agreement. That would only even be an option if the trademark pre-dated. This is unlikely to be a situation in practice where a URS was brought because it would probably not be a "slam dunk" case after 20 years unless there had been a change of circumstances. * On the issue of delay and laches - as reported by the Docs Sub Team, the data did not provide any basis for which a policy recommendation should be made. The Providers and Practitioners Sub Teams also did not uncover any specific issues that came to either practitioners' or providers' attention. Administrative Review (page 3-4) * One WG member asked whether ICANN should bring Providers into contractual relationship in order to enforce the URS Rules & Procedures. Another member said it probably need to be ICANN’s legal department to enforce the rules & procedure. * URS Providers have MoU with ICANN. Whether it is ICANN’s compliance department or legal department to enforce the rules & procedures, it should not be controversial that Providers must abide by them. * An MOU could be legally enforceable, depending on the circumstances. 500-word Complaint limit (page 4-5) • On 500-word Complaint Limit - Practitioners' survey results were split (out of 12, 5 agree it's sufficient, 4 disagree); results included feedback from some that the word limit was too low: "arbitrary and often insufficient" and "should be slightly increased". • One member said he understands and generally agrees with the decision not to suggest an expansion of the word limit, he wonders if there aren't situations (multi- domain challenges, etc.) where a Complainant or Respondent might be given the opportunity to request an expansion. This point can be captured for decisional phase. • Another member suggested that perhaps providers can provide stats on the average word length of complaints, to see how close to the 500 words they are at present. (i.e. a table of distributions, e.g. 10% under 200 words, 20% between 201 and 300, etc.) Amending the Complaint in light of GDPR/Temp Spec (page 5-6) * One member believes that 2-3 days might not be a good rule (e.g. weekends, time to research, etc.). Maybe 5 business days. * WIPO’s approach to “doe complaints” has been very helpful and provides some comfort that the lack of true registrant/registrant organization data masked due to GDPR will not result in a deficient complaint for an omitted respondent. * ACTION ITEM: Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Forum is asking for amendment of the complaint in UDRP - under the rules that's not allowed in URS. SMD Files (page 6-7) * SMD files are used for limited purpose of demonstrating the use. * Recollection is that SMD files would be passed to the Examiners and relay the critical information related to the TM registration. That's why some people are surprised by the limited info SMD files would provide. * The SMD files contain some basic human-readable information, with the rest of the information coded. For example, the trademark itself is human-readable but the applicable Nice classification is coded. A SMD file is used by registries/registrars for validation, and as Greg noted, to demonstrate use. From the TMCH provider: http://www.trademark-clearinghouse.com/help/faq/which-information-does-smd-file-contain<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearinghouse.com_help_faq_which-2Dinformation-2Ddoes-2Dsmd-2Dfile-2Dcontain&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=v3df_qE8Dw_U7YY7_IfhIMgGSxt-a44LbNskorrbTIg&e=> * If the intent of the STI was that the SMD file would be a file summary, that got lost somewhere along the way, way before the SMD file was designed by the TMCH providers. * Rules 3(b)(v) Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use –which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse * It might be useful to look at the spec that they relied on. But the real question is how should the examiner get the relevant data about the Complainant’s mark. The SMD file is probably not the answer, if it was ever intended to be. * the Examiner is not required to second-guess the SMD file. Its existence is sufficient that the mark has had use validated by the TMCH. Other Topics (page 7-8) * These are policy proposals can be brought up when WG members are proposing changes to the URS policy itself. Charter asks us to address the question whether the URS should become a consensus policy applicable to legacy domains. Charter is not specific regarding whether such discussion should occur in phase I or phase II. This feedback illustrates that the ST didn't get to propose policy changes, it is for the WG to discuss and propose changes. * when we reference the STI and IRT reports, we need to keep in mind they only had about 1-2 months to complete their work and produce a report; they were not standard PDP working groups and had limited charters and mandates, which were set by the Board * This is feedback from one Provider, who may want to grow their business. Practitioners survey are from Complaints' side. Need to have a balanced solution when considering the input. * There were plenty of practitioners that represent registrants in the Subgroup, although their experience was largely with the UDRP. Duration of response period (Page 11) * One member believes that if the URS continues in its current form, it would affect valuable domain names. The ones the registrants that do want to defend them, 14 days are not sufficient. 20 days may be more appropriate. It should be based on the age of the domain name. If a domain is 3 months, it will have a shorter period to respond. If you own a domain name for 5-10 years, response period would be longer so less urgency. * Several other WG members disagree. The URS is supposed to be an expedited proceeding so increasing the length of time of a streamlined proceeding defeats the purpose. At most, there could be an additional 3 or 4 days extension period for cause. The point is that there are enough circumstances that give rise to the URS 'quick response' that we should NOT make assumptions into policy. It is an assumption that an "aged" domain would not require a fast response. In Mexico, we have not been able to file a domain name case due to Courts ignorance about the subject and also, because it could take years to be solved. We're spinning out fo control - extending the time to respond to URS cases just because a domain registration is not new defeats the purpose of fast action to take down an infringing domain once it's discovered. The URS is meant to address clear and convincing cases of infringement. A person registers a domain name for less than $50 and brand owner find out about at some point and then files an injunction in court for tens of thousands of dollars. Where is the balance. Examiners Guide (page 13) * The WIPO guidance for examiners took 1500 hours to develop. * The WIPO guidance is relevant to the URS, the elements are shown are the same and the differences include the burden of proof, word limit, etc. A lot of WIPO guidance goes to the shade of grey issues. URS is for clear black/white cases, so if there is a URS guidance it would likely be abbreviated. Duration of Suspension Period & Review of Implementation (page 21-23) * One WG member suggests to find out how much cost for registries & registrars to comply with the URS rules and procedures. Need to get data/feedback from the registries/registrars. * Other WG members are not sure "cost of implementation of URS" for Registries/Registrars is relevant to effectiveness of URS. We don't need to do a cost/benefit analysis (the costs & benefits aren't ICANN's), the providers, registrars, registries need to be asked if they are overburdened by the costs of compliance. * There is an action item to contact the registries/registrars about these issues. Timing TBD due to Sunrise & Claims survey launch. Other topics (page 23-24) * One WG member thinks the HSTS issue is not difficult to fix. The Providers need to improve their technical applicability to resolve the issue. Renee Fossen from Forum disagrees. * ACTION ITEM: Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. NEXT STEPS * ACTION ITEM: Staff to recirculate the Super Consolidated URS Topics Table document and ask all WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * ACTION ITEM: WG to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35. Later period to discuss larger policy issues. ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. 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Mitch, all Apologies that I missed last week's call and have not yet had a chance to listen to the recording, but with respect to the below, just for one quick reference, the BT v One in a Million case speaks to this: http://www.bailii.org/ew/cases/EWCA/Civ/1998/1272.html. Brian ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Mitch Stoltz <mitch@eff.org> Sent: Monday, February 10, 2020 9:04 PM To: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] It would be inappropriate to presume cybersquatting from the use of a "well known" brand name alone. There are any number of legitimate reasons for registering <brand>.<new gTLD>. And we have no working standard for what "well known" means, especially internationally. Cybersquatting requires intent, and if some percentage of URS proceedings are presuming intent based on no facts but the domain name itself, that's highly relevant information that should not be buried here. Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate | https://act.eff.org/ On 2/10/20 11:53 AM, cking@modernip.com<mailto:cking@modernip.com> wrote: Agree Georges. We don’t need a percent figure. We can simply observe that ICANN needs specific info for data collection/oversight & outline those required fields. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 [Email Logo5] From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> On Behalf Of Nahitchevansky, Georges Sent: Monday, February 10, 2020 1:37 PM To: Greg Shatan <gregshatanipc@gmail.com><mailto:gregshatanipc@gmail.com>; gnso-rpm-wg <gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Thank you Greg. I was looking for that email and went back through what I had reviewed. The bottom line is that of the 103 cases that had been marked as having no rational, there were 45 that included enough to know what the case had been about and the rationale. That meant that 7% just reiterated the standard and ruled in favor of a party with nothing to deduce the rationale. Of those 7%, though, a number of cases involved domain names that were based on a well-known trademark and it would not take much to understand that a domain name that was simply BRAND + gTLD likely involved cybersquatting. So in my view while there are some cases that had no rationale, I do not believe we are talking overall about cases that involved rulings with no explanations regarding domain names that primarily involved a generic word with a gTLD. Most of the 58 cases (or 103) that arguably had no specific rationale involved domain names that related to trademarks that are known, which again suggests something about the ruling. Put another way, there is a conceptual difference between a case that involves a domain name based on a well-known brand such as <cocacola.beverage> and one that involves a generic word such as <fashion.clothes>. If the cases that have no articulated rationale primarily involved the latter type of domains, I would be much more concerned. But if they mostly relate to known brands, I’m not sure that this suggests that there were errors committed by the panelist. Also, I do not believe that the 58 decisions at issue actually resulted in any appeals, which does suggest that perhaps the decisions were not unfounded. In any event, rather than go back and forth about whether we are talking about 7% or 13% of cases without a stated rationale, I think the solution is to just say that there were several cases that had no clearly stated rationale without getting into percentages. After all, we are more or less in agreement that close to 90% of the cases had articulated rationale and that there should be some tweak to address the minimum of what a URS decision should provide. Georges Nahitchevansky From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Greg Shatan Sent: Monday, February 10, 2020 1:42 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] All, Here is the Georges Nahitchevansky email that was referred to in last week's discussion of the percentage of URS decisions that lacked a rationale. There was a subsequent discussion, so I recommend going back to the list if you want to see the follow-up. Greg ---------- Forwarded message --------- From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Date: Thu, Aug 9, 2018 at 3:27 PM Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>, Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>, gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Rebecca: I do not disagree with the notion that we should discuss what a decision should contain, but I don’t think we have a consensus as to what that should be in the URS context (given the pricing of URS proceedings). Moreover, a review of the URS cases makes your 13% number and comment of “significant due process and implementation issues” point questionable. At NAF for example, there were 827 cases that that your research assistants reviewed. I found a total of about 103 that your team flagged as having no articulated decisions. I would agree that in 58 cases the decisions lacked details, but in 45 cases there were details that sufficiently let you know what the case was about and the basis of the resolution. I am sure we can argue about these 45 cases and whether they should say more, but ultimately we are really only talking about 58 cases that actually do not have any specific details and just provide the standard and a resolution (although I note that most of these cases involve domain names based on fairly well known marks such as NISSAN, DATSUN, TEXACO, BLOOMBERG, BNP PARIBAS etc., so you pretty much know what trademark was involved.). In all, we are really talking about 7% of the cases that have no details, which is not significant. Again, we can discuss what the decisions should provide, but I don’t think we ought to be qualifying this as a “significant” issue per se (as 93% of them have details). There are other issues being considered in the URS review that have better percentage numbers as an issue that are viewed as not being significant per se. The point is that the URS looks to be working appropriately and there are probably some tweaks and refinements needed but this is not sky is falling issue. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Thursday, August 9, 2018 1:22 PM To: Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 My apologies for missing the meeting. Comment on the big document: This is currently only covered under Defenses but I would put it for discussion/recommendations under 2. Examiners’ Guide/3. Other Issues because it goes beyond defenses: Decisions should contain basic information, including what the trademark is, what the finding of abuse is and/or what findings are on any defenses—13% of decisions did not, and this raises significant due process and implementation issues. ________________________________ From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>> Sent: Wednesday, August 8, 2018 3:56:54 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 Dear All, Please see below the action items and notes captured by staff from the RPM PDP WG call held on 08 August 2018 (17:00-18:30 UTC). Staff have posted to the wiki space the action items and notes. Please note that these will be high-level notes and are not meant as a substitute for the recording. The recording, AC chat, and attendance records are posted on the wiki at: https://community.icann.org/x/uwNpBQ<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_uwNpBQ&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=gcgRms-bmezGQQmwXCqLMQXOdSv3gly_0bWYNSuRlY8&e=> Best Regards, Ariel Ariel Xinyue Liang GNSO Policy Support Specialist Internet Corporation for Assigned Names and Numbers (ICANN) == ACTION ITEMS: * Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. * Staff to recirculate the Super Consolidated URS Topics Table document * WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * WG members to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, during next week’s call. Later period to discuss larger policy issues. NOTES: Review Agenda/Statements of Interest * George Kirikos has become a member of the At-Large Community: https://community.icann.org/display/gnsosoi/George+Kirikos+SOI<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_gnsosoi_George-2BKirikos-2BSOI&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=8-YfNNseZ7YW77BHJT9ciEr_I08JQcazWKn1rxNI900&e=> General Comment on the Super Consolidated URS Topics Table Document * The topics in the table were developed by the WG members and deliberated on by the WG & URS Sub Teams. Each Sub Team then did very substantial work on data collection and reviewing what came back. While the actual Sub Team recommendations and suggestions captured in this document are what is intended the WG should discuss - to see if it wishes to develop policy or operational recommendations - discussion over what should be on the actual list of topics should not be reopened unless the WG agrees to do so. We encourage all WG members to review all the previous reports from each Sub Team, and all the documents they worked on. They are linked in this Super Consolidated document (page 2). * The Super Consolidated document is a summary of findings and suggestions by the Sub Teams. The Table does not mean to limit/restrict recommendations from the WG members. If there is any issue overlapping with UDRP, can possibly be carried over to the phase II of the PDP. * Is it possible to add additional topics to the Super Consolidated Table? One WG member said that access to the Courts, for example, is a topic he raised, which isn't in the table. Statute of Limitations, whether URS should apply to legacy gTLDs as a consensus policy, are just a few of the topics not in the table. He brought it up in November 2017 (see: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html ) and it was reflected in a later document. That's a critical issue for registrants. if they don't have access to the courts to challenge a URS decision, then it's a huge denial of their rights. * While the chart is not meant to foreclose further discussion, it is a good faith attempt at capturing the work of the sub teams. The purpose of today's, and likely the next few, calls was to make sure this was an accurate and comprehensive reflection of our discussions so far. That said, WG members should bear in mind that we are seeking consensus, so items which are unlikely to achieve that may not be appropriate to reflect as a recommendation, but could be included in public comments on the Initial Report. Also, before adding items to this chart, we will want to work with staff to see whether such topics was previously discussed, and if so, the level of agreement/consensus. In other words, it is not necessary final, but is equally an opportunity to reintroduce topics which have been discussed, but for which consensus is/was not possible. * Could we create a list of "missing issues" -- a list of issues raised in this call (and calls to follow); we can evaluate the nature and weight of these ideas later. * Regarding the Action Items highlighted in column 3 of the table, Providers ST will do a first pass of the responses from the Providers to the follow-up questions, and then discuss the issues that they identified and proposed suggestions with the full WG. Limited filing period (page 3) * One WG member believes that there should be limitation for filing period to bring URS Complaints, so the domain registered many years ago would not be subject to unfair treatment. He said a registrant who owns a domain for 20 years, for example, shouldn't have to be concerned about a policy that can take their domain down with very short time period to respond. * Other WG members said this was discussed, and did not achieve agreement. That would only even be an option if the trademark pre-dated. This is unlikely to be a situation in practice where a URS was brought because it would probably not be a "slam dunk" case after 20 years unless there had been a change of circumstances. * On the issue of delay and laches - as reported by the Docs Sub Team, the data did not provide any basis for which a policy recommendation should be made. The Providers and Practitioners Sub Teams also did not uncover any specific issues that came to either practitioners' or providers' attention. Administrative Review (page 3-4) * One WG member asked whether ICANN should bring Providers into contractual relationship in order to enforce the URS Rules & Procedures. Another member said it probably need to be ICANN’s legal department to enforce the rules & procedure. * URS Providers have MoU with ICANN. Whether it is ICANN’s compliance department or legal department to enforce the rules & procedures, it should not be controversial that Providers must abide by them. * An MOU could be legally enforceable, depending on the circumstances. 500-word Complaint limit (page 4-5) • On 500-word Complaint Limit - Practitioners' survey results were split (out of 12, 5 agree it's sufficient, 4 disagree); results included feedback from some that the word limit was too low: "arbitrary and often insufficient" and "should be slightly increased". • One member said he understands and generally agrees with the decision not to suggest an expansion of the word limit, he wonders if there aren't situations (multi- domain challenges, etc.) where a Complainant or Respondent might be given the opportunity to request an expansion. This point can be captured for decisional phase. • Another member suggested that perhaps providers can provide stats on the average word length of complaints, to see how close to the 500 words they are at present. (i.e. a table of distributions, e.g. 10% under 200 words, 20% between 201 and 300, etc.) Amending the Complaint in light of GDPR/Temp Spec (page 5-6) * One member believes that 2-3 days might not be a good rule (e.g. weekends, time to research, etc.). Maybe 5 business days. * WIPO’s approach to “doe complaints” has been very helpful and provides some comfort that the lack of true registrant/registrant organization data masked due to GDPR will not result in a deficient complaint for an omitted respondent. * ACTION ITEM: Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. * Forum is asking for amendment of the complaint in UDRP - under the rules that's not allowed in URS. SMD Files (page 6-7) * SMD files are used for limited purpose of demonstrating the use. * Recollection is that SMD files would be passed to the Examiners and relay the critical information related to the TM registration. That's why some people are surprised by the limited info SMD files would provide. * The SMD files contain some basic human-readable information, with the rest of the information coded. For example, the trademark itself is human-readable but the applicable Nice classification is coded. A SMD file is used by registries/registrars for validation, and as Greg noted, to demonstrate use. From the TMCH provider: http://www.trademark-clearinghouse.com/help/faq/which-information-does-smd-file-contain<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearinghouse.com_help_faq_which-2Dinformation-2Ddoes-2Dsmd-2Dfile-2Dcontain&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=v3df_qE8Dw_U7YY7_IfhIMgGSxt-a44LbNskorrbTIg&e=> * If the intent of the STI was that the SMD file would be a file summary, that got lost somewhere along the way, way before the SMD file was designed by the TMCH providers. * Rules 3(b)(v) Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use –which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse * It might be useful to look at the spec that they relied on. But the real question is how should the examiner get the relevant data about the Complainant’s mark. The SMD file is probably not the answer, if it was ever intended to be. * the Examiner is not required to second-guess the SMD file. Its existence is sufficient that the mark has had use validated by the TMCH. Other Topics (page 7-8) * These are policy proposals can be brought up when WG members are proposing changes to the URS policy itself. Charter asks us to address the question whether the URS should become a consensus policy applicable to legacy domains. Charter is not specific regarding whether such discussion should occur in phase I or phase II. This feedback illustrates that the ST didn't get to propose policy changes, it is for the WG to discuss and propose changes. * when we reference the STI and IRT reports, we need to keep in mind they only had about 1-2 months to complete their work and produce a report; they were not standard PDP working groups and had limited charters and mandates, which were set by the Board * This is feedback from one Provider, who may want to grow their business. Practitioners survey are from Complaints' side. Need to have a balanced solution when considering the input. * There were plenty of practitioners that represent registrants in the Subgroup, although their experience was largely with the UDRP. Duration of response period (Page 11) * One member believes that if the URS continues in its current form, it would affect valuable domain names. The ones the registrants that do want to defend them, 14 days are not sufficient. 20 days may be more appropriate. It should be based on the age of the domain name. If a domain is 3 months, it will have a shorter period to respond. If you own a domain name for 5-10 years, response period would be longer so less urgency. * Several other WG members disagree. The URS is supposed to be an expedited proceeding so increasing the length of time of a streamlined proceeding defeats the purpose. At most, there could be an additional 3 or 4 days extension period for cause. The point is that there are enough circumstances that give rise to the URS 'quick response' that we should NOT make assumptions into policy. It is an assumption that an "aged" domain would not require a fast response. In Mexico, we have not been able to file a domain name case due to Courts ignorance about the subject and also, because it could take years to be solved. We're spinning out fo control - extending the time to respond to URS cases just because a domain registration is not new defeats the purpose of fast action to take down an infringing domain once it's discovered. The URS is meant to address clear and convincing cases of infringement. A person registers a domain name for less than $50 and brand owner find out about at some point and then files an injunction in court for tens of thousands of dollars. Where is the balance. Examiners Guide (page 13) * The WIPO guidance for examiners took 1500 hours to develop. * The WIPO guidance is relevant to the URS, the elements are shown are the same and the differences include the burden of proof, word limit, etc. A lot of WIPO guidance goes to the shade of grey issues. URS is for clear black/white cases, so if there is a URS guidance it would likely be abbreviated. Duration of Suspension Period & Review of Implementation (page 21-23) * One WG member suggests to find out how much cost for registries & registrars to comply with the URS rules and procedures. Need to get data/feedback from the registries/registrars. * Other WG members are not sure "cost of implementation of URS" for Registries/Registrars is relevant to effectiveness of URS. We don't need to do a cost/benefit analysis (the costs & benefits aren't ICANN's), the providers, registrars, registries need to be asked if they are overburdened by the costs of compliance. * There is an action item to contact the registries/registrars about these issues. Timing TBD due to Sunrise & Claims survey launch. Other topics (page 23-24) * One WG member thinks the HSTS issue is not difficult to fix. The Providers need to improve their technical applicability to resolve the issue. Renee Fossen from Forum disagrees. * ACTION ITEM: Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. NEXT STEPS * ACTION ITEM: Staff to recirculate the Super Consolidated URS Topics Table document and ask all WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. * ACTION ITEM: WG to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35. Later period to discuss larger policy issues. ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. 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Regardless of the percentage, I see no reason why there cannot simply be a rule that in ANY URS decision, the panelist must set forth the facts deemed established and the rationale for the decision. That simply corrects the apparent problem without having to guess at the reasons used to reach the conclusion. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Gerald Levine <gmlevine@researchtheworld.com> Date: Tuesday, February 11, 2020 at 1:47 AM To: "'BECKHAM, Brian'" <brian.beckham@wipo.int>, 'Mitch Stoltz' <mitch@eff.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Of course in BT the domain names were confusingly similar to household marks. It is trickier when complainant asserts its mark is well-known but offers no evidence to establish it as a fact. The important point, well-established in UDRP cases, is that mark owners are not given benefit of the doubt on the bad faith requirement. This should equally be case with URS. GmLevine From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of BECKHAM, Brian Sent: Monday, February 10, 2020 3:35 PM To: Mitch Stoltz <mitch@eff.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Mitch, all Apologies that I missed last week's call and have not yet had a chance to listen to the recording, but with respect to the below, just for one quick reference, the BT v One in a Million case speaks to this: http://www.bailii.org/ew/cases/EWCA/Civ/1998/1272.html. Brian ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Mitch Stoltz <mitch@eff.org<mailto:mitch@eff.org>> Sent: Monday, February 10, 2020 9:04 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] It would be inappropriate to presume cybersquatting from the use of a "well known" brand name alone. There are any number of legitimate reasons for registering <brand>.<new gTLD>. And we have no working standard for what "well known" means, especially internationally. Cybersquatting requires intent, and if some percentage of URS proceedings are presuming intent based on no facts but the domain name itself, that's highly relevant information that should not be buried here. Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate | https://act.eff.org/ On 2/10/20 11:53 AM, cking@modernip.com<mailto:cking@modernip.com> wrote: Agree Georges. We don’t need a percent figure. We can simply observe that ICANN needs specific info for data collection/oversight & outline those required fields. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 [Email Logo5] From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> On Behalf Of Nahitchevansky, Georges Sent: Monday, February 10, 2020 1:37 PM To: Greg Shatan <gregshatanipc@gmail.com><mailto:gregshatanipc@gmail.com>; gnso-rpm-wg <gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Thank you Greg. I was looking for that email and went back through what I had reviewed. The bottom line is that of the 103 cases that had been marked as having no rational, there were 45 that included enough to know what the case had been about and the rationale. That meant that 7% just reiterated the standard and ruled in favor of a party with nothing to deduce the rationale. Of those 7%, though, a number of cases involved domain names that were based on a well-known trademark and it would not take much to understand that a domain name that was simply BRAND + gTLD likely involved cybersquatting. So in my view while there are some cases that had no rationale, I do not believe we are talking overall about cases that involved rulings with no explanations regarding domain names that primarily involved a generic word with a gTLD. Most of the 58 cases (or 103) that arguably had no specific rationale involved domain names that related to trademarks that are known, which again suggests something about the ruling. Put another way, there is a conceptual difference between a case that involves a domain name based on a well-known brand such as <cocacola.beverage> and one that involves a generic word such as <fashion.clothes>. If the cases that have no articulated rationale primarily involved the latter type of domains, I would be much more concerned. But if they mostly relate to known brands, I’m not sure that this suggests that there were errors committed by the panelist. Also, I do not believe that the 58 decisions at issue actually resulted in any appeals, which does suggest that perhaps the decisions were not unfounded. In any event, rather than go back and forth about whether we are talking about 7% or 13% of cases without a stated rationale, I think the solution is to just say that there were several cases that had no clearly stated rationale without getting into percentages. After all, we are more or less in agreement that close to 90% of the cases had articulated rationale and that there should be some tweak to address the minimum of what a URS decision should provide. Georges Nahitchevansky From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Greg Shatan Sent: Monday, February 10, 2020 1:42 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] All, Here is the Georges Nahitchevansky email that was referred to in last week's discussion of the percentage of URS decisions that lacked a rationale. There was a subsequent discussion, so I recommend going back to the list if you want to see the follow-up. Greg ---------- Forwarded message --------- From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Date: Thu, Aug 9, 2018 at 3:27 PM Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>, Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>, gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Rebecca: I do not disagree with the notion that we should discuss what a decision should contain, but I don’t think we have a consensus as to what that should be in the URS context (given the pricing of URS proceedings). Moreover, a review of the URS cases makes your 13% number and comment of “significant due process and implementation issues” point questionable. At NAF for example, there were 827 cases that that your research assistants reviewed. I found a total of about 103 that your team flagged as having no articulated decisions. I would agree that in 58 cases the decisions lacked details, but in 45 cases there were details that sufficiently let you know what the case was about and the basis of the resolution. I am sure we can argue about these 45 cases and whether they should say more, but ultimately we are really only talking about 58 cases that actually do not have any specific details and just provide the standard and a resolution (although I note that most of these cases involve domain names based on fairly well known marks such as NISSAN, DATSUN, TEXACO, BLOOMBERG, BNP PARIBAS etc., so you pretty much know what trademark was involved.). In all, we are really talking about 7% of the cases that have no details, which is not significant. Again, we can discuss what the decisions should provide, but I don’t think we ought to be qualifying this as a “significant” issue per se (as 93% of them have details). There are other issues being considered in the URS review that have better percentage numbers as an issue that are viewed as not being significant per se. The point is that the URS looks to be working appropriately and there are probably some tweaks and refinements needed but this is not sky is falling issue. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Thursday, August 9, 2018 1:22 PM To: Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 My apologies for missing the meeting. Comment on the big document: This is currently only covered under Defenses but I would put it for discussion/recommendations under 2. Examiners’ Guide/3. Other Issues because it goes beyond defenses: Decisions should contain basic information, including what the trademark is, what the finding of abuse is and/or what findings are on any defenses—13% of decisions did not, and this raises significant due process and implementation issues. ________________________________ From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>> Sent: Wednesday, August 8, 2018 3:56:54 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 Dear All, Please see below the action items and notes captured by staff from the RPM PDP WG call held on 08 August 2018 (17:00-18:30 UTC). Staff have posted to the wiki space the action items and notes. Please note that these will be high-level notes and are not meant as a substitute for the recording. The recording, AC chat, and attendance records are posted on the wiki at: https://community.icann.org/x/uwNpBQ<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_uwNpBQ&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=gcgRms-bmezGQQmwXCqLMQXOdSv3gly_0bWYNSuRlY8&e=> Best Regards, Ariel Ariel Xinyue Liang GNSO Policy Support Specialist Internet Corporation for Assigned Names and Numbers (ICANN) == ACTION ITEMS: · Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. · Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. · Staff to recirculate the Super Consolidated URS Topics Table document · WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. · WG members to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, during next week’s call. Later period to discuss larger policy issues. NOTES: Review Agenda/Statements of Interest · George Kirikos has become a member of the At-Large Community: https://community.icann.org/display/gnsosoi/George+Kirikos+SOI<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_gnsosoi_George-2BKirikos-2BSOI&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=8-YfNNseZ7YW77BHJT9ciEr_I08JQcazWKn1rxNI900&e=> General Comment on the Super Consolidated URS Topics Table Document · The topics in the table were developed by the WG members and deliberated on by the WG & URS Sub Teams. Each Sub Team then did very substantial work on data collection and reviewing what came back. While the actual Sub Team recommendations and suggestions captured in this document are what is intended the WG should discuss - to see if it wishes to develop policy or operational recommendations - discussion over what should be on the actual list of topics should not be reopened unless the WG agrees to do so. We encourage all WG members to review all the previous reports from each Sub Team, and all the documents they worked on. They are linked in this Super Consolidated document (page 2). · The Super Consolidated document is a summary of findings and suggestions by the Sub Teams. The Table does not mean to limit/restrict recommendations from the WG members. If there is any issue overlapping with UDRP, can possibly be carried over to the phase II of the PDP. · Is it possible to add additional topics to the Super Consolidated Table? One WG member said that access to the Courts, for example, is a topic he raised, which isn't in the table. Statute of Limitations, whether URS should apply to legacy gTLDs as a consensus policy, are just a few of the topics not in the table. He brought it up in November 2017 (see: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html ) and it was reflected in a later document. That's a critical issue for registrants. if they don't have access to the courts to challenge a URS decision, then it's a huge denial of their rights. · While the chart is not meant to foreclose further discussion, it is a good faith attempt at capturing the work of the sub teams. The purpose of today's, and likely the next few, calls was to make sure this was an accurate and comprehensive reflection of our discussions so far. That said, WG members should bear in mind that we are seeking consensus, so items which are unlikely to achieve that may not be appropriate to reflect as a recommendation, but could be included in public comments on the Initial Report. Also, before adding items to this chart, we will want to work with staff to see whether such topics was previously discussed, and if so, the level of agreement/consensus. In other words, it is not necessary final, but is equally an opportunity to reintroduce topics which have been discussed, but for which consensus is/was not possible. · Could we create a list of "missing issues" -- a list of issues raised in this call (and calls to follow); we can evaluate the nature and weight of these ideas later. · Regarding the Action Items highlighted in column 3 of the table, Providers ST will do a first pass of the responses from the Providers to the follow-up questions, and then discuss the issues that they identified and proposed suggestions with the full WG. Limited filing period (page 3) · One WG member believes that there should be limitation for filing period to bring URS Complaints, so the domain registered many years ago would not be subject to unfair treatment. He said a registrant who owns a domain for 20 years, for example, shouldn't have to be concerned about a policy that can take their domain down with very short time period to respond. · Other WG members said this was discussed, and did not achieve agreement. That would only even be an option if the trademark pre-dated. This is unlikely to be a situation in practice where a URS was brought because it would probably not be a "slam dunk" case after 20 years unless there had been a change of circumstances. · On the issue of delay and laches - as reported by the Docs Sub Team, the data did not provide any basis for which a policy recommendation should be made. The Providers and Practitioners Sub Teams also did not uncover any specific issues that came to either practitioners' or providers' attention. Administrative Review (page 3-4) · One WG member asked whether ICANN should bring Providers into contractual relationship in order to enforce the URS Rules & Procedures. Another member said it probably need to be ICANN’s legal department to enforce the rules & procedure. · URS Providers have MoU with ICANN. Whether it is ICANN’s compliance department or legal department to enforce the rules & procedures, it should not be controversial that Providers must abide by them. · An MOU could be legally enforceable, depending on the circumstances. 500-word Complaint limit (page 4-5) • On 500-word Complaint Limit - Practitioners' survey results were split (out of 12, 5 agree it's sufficient, 4 disagree); results included feedback from some that the word limit was too low: "arbitrary and often insufficient" and "should be slightly increased". • One member said he understands and generally agrees with the decision not to suggest an expansion of the word limit, he wonders if there aren't situations (multi- domain challenges, etc.) where a Complainant or Respondent might be given the opportunity to request an expansion. This point can be captured for decisional phase. • Another member suggested that perhaps providers can provide stats on the average word length of complaints, to see how close to the 500 words they are at present. (i.e. a table of distributions, e.g. 10% under 200 words, 20% between 201 and 300, etc.) Amending the Complaint in light of GDPR/Temp Spec (page 5-6) · One member believes that 2-3 days might not be a good rule (e.g. weekends, time to research, etc.). Maybe 5 business days. · WIPO’s approach to “doe complaints” has been very helpful and provides some comfort that the lack of true registrant/registrant organization data masked due to GDPR will not result in a deficient complaint for an omitted respondent. · ACTION ITEM: Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. · Forum is asking for amendment of the complaint in UDRP - under the rules that's not allowed in URS. SMD Files (page 6-7) · SMD files are used for limited purpose of demonstrating the use. · Recollection is that SMD files would be passed to the Examiners and relay the critical information related to the TM registration. That's why some people are surprised by the limited info SMD files would provide. · The SMD files contain some basic human-readable information, with the rest of the information coded. For example, the trademark itself is human-readable but the applicable Nice classification is coded. A SMD file is used by registries/registrars for validation, and as Greg noted, to demonstrate use. From the TMCH provider: http://www.trademark-clearinghouse.com/help/faq/which-information-does-smd-file-contain<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearinghouse.com_help_faq_which-2Dinformation-2Ddoes-2Dsmd-2Dfile-2Dcontain&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=v3df_qE8Dw_U7YY7_IfhIMgGSxt-a44LbNskorrbTIg&e=> · If the intent of the STI was that the SMD file would be a file summary, that got lost somewhere along the way, way before the SMD file was designed by the TMCH providers. · Rules 3(b)(v) Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use –which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse · It might be useful to look at the spec that they relied on. But the real question is how should the examiner get the relevant data about the Complainant’s mark. The SMD file is probably not the answer, if it was ever intended to be. · the Examiner is not required to second-guess the SMD file. Its existence is sufficient that the mark has had use validated by the TMCH. Other Topics (page 7-8) · These are policy proposals can be brought up when WG members are proposing changes to the URS policy itself. Charter asks us to address the question whether the URS should become a consensus policy applicable to legacy domains. Charter is not specific regarding whether such discussion should occur in phase I or phase II. This feedback illustrates that the ST didn't get to propose policy changes, it is for the WG to discuss and propose changes. · when we reference the STI and IRT reports, we need to keep in mind they only had about 1-2 months to complete their work and produce a report; they were not standard PDP working groups and had limited charters and mandates, which were set by the Board · This is feedback from one Provider, who may want to grow their business. Practitioners survey are from Complaints' side. Need to have a balanced solution when considering the input. · There were plenty of practitioners that represent registrants in the Subgroup, although their experience was largely with the UDRP. Duration of response period (Page 11) · One member believes that if the URS continues in its current form, it would affect valuable domain names. The ones the registrants that do want to defend them, 14 days are not sufficient. 20 days may be more appropriate. It should be based on the age of the domain name. If a domain is 3 months, it will have a shorter period to respond. If you own a domain name for 5-10 years, response period would be longer so less urgency. · Several other WG members disagree. The URS is supposed to be an expedited proceeding so increasing the length of time of a streamlined proceeding defeats the purpose. At most, there could be an additional 3 or 4 days extension period for cause. The point is that there are enough circumstances that give rise to the URS 'quick response' that we should NOT make assumptions into policy. It is an assumption that an "aged" domain would not require a fast response. In Mexico, we have not been able to file a domain name case due to Courts ignorance about the subject and also, because it could take years to be solved. We're spinning out fo control - extending the time to respond to URS cases just because a domain registration is not new defeats the purpose of fast action to take down an infringing domain once it's discovered. The URS is meant to address clear and convincing cases of infringement. A person registers a domain name for less than $50 and brand owner find out about at some point and then files an injunction in court for tens of thousands of dollars. Where is the balance. Examiners Guide (page 13) · The WIPO guidance for examiners took 1500 hours to develop. · The WIPO guidance is relevant to the URS, the elements are shown are the same and the differences include the burden of proof, word limit, etc. A lot of WIPO guidance goes to the shade of grey issues. URS is for clear black/white cases, so if there is a URS guidance it would likely be abbreviated. Duration of Suspension Period & Review of Implementation (page 21-23) · One WG member suggests to find out how much cost for registries & registrars to comply with the URS rules and procedures. Need to get data/feedback from the registries/registrars. · Other WG members are not sure "cost of implementation of URS" for Registries/Registrars is relevant to effectiveness of URS. We don't need to do a cost/benefit analysis (the costs & benefits aren't ICANN's), the providers, registrars, registries need to be asked if they are overburdened by the costs of compliance. · There is an action item to contact the registries/registrars about these issues. Timing TBD due to Sunrise & Claims survey launch. Other topics (page 23-24) · One WG member thinks the HSTS issue is not difficult to fix. The Providers need to improve their technical applicability to resolve the issue. Renee Fossen from Forum disagrees. · ACTION ITEM: Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. NEXT STEPS · ACTION ITEM: Staff to recirculate the Super Consolidated URS Topics Table document and ask all WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. · ACTION ITEM: WG to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35. Later period to discuss larger policy issues. ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. 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I agree and support Brian's proposed text. ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of BECKHAM, Brian <brian.beckham@wipo.int> Sent: Tuesday, February 11, 2020 6:21:39 AM To: Paul Keating <paul@law.es>; Gerald Levine <gmlevine@researchtheworld.com>; 'Mitch Stoltz' <mitch@eff.org>; gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Thanks Paul, Agreed, and arguably this is a failing of the Providers to properly manage the case/educate examiners as this requirement already exists in URS para 13(b) which states "The Examiner's Determination shall [ ] provide the reasons on which it is based..." I have now been able to listen to last week's call, and in particular noting the disagreement about which statistic is "correct", wonder if -- rather than debating the precise verbiage to describe whichever statistic -- the following might work for the context para for Recommendation 7: "Depending on the criteria applied, it was observed that between 7% and 17% of Determinations in URS cases did not meet the requirement of adequately articulating the reasoning on which the Determination was based." Brian ________________________________ From: Paul Keating <paul@law.es> Sent: Tuesday, February 11, 2020 11:47 AM To: Gerald Levine; BECKHAM, Brian; 'Mitch Stoltz'; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Regardless of the percentage, I see no reason why there cannot simply be a rule that in ANY URS decision, the panelist must set forth the facts deemed established and the rationale for the decision. That simply corrects the apparent problem without having to guess at the reasons used to reach the conclusion. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Gerald Levine <gmlevine@researchtheworld.com> Date: Tuesday, February 11, 2020 at 1:47 AM To: "'BECKHAM, Brian'" <brian.beckham@wipo.int>, 'Mitch Stoltz' <mitch@eff.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Of course in BT the domain names were confusingly similar to household marks. It is trickier when complainant asserts its mark is well-known but offers no evidence to establish it as a fact. The important point, well-established in UDRP cases, is that mark owners are not given benefit of the doubt on the bad faith requirement. This should equally be case with URS. GmLevine From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of BECKHAM, Brian Sent: Monday, February 10, 2020 3:35 PM To: Mitch Stoltz <mitch@eff.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Mitch, all Apologies that I missed last week's call and have not yet had a chance to listen to the recording, but with respect to the below, just for one quick reference, the BT v One in a Million case speaks to this: http://www.bailii.org/ew/cases/EWCA/Civ/1998/1272.html<http://www.bailii.org/ew/cases/EWCA/Civ/1998/1272.html>. Brian ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Mitch Stoltz <mitch@eff.org<mailto:mitch@eff.org>> Sent: Monday, February 10, 2020 9:04 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] It would be inappropriate to presume cybersquatting from the use of a "well known" brand name alone. There are any number of legitimate reasons for registering <brand>.<new gTLD>. And we have no working standard for what "well known" means, especially internationally. Cybersquatting requires intent, and if some percentage of URS proceedings are presuming intent based on no facts but the domain name itself, that's highly relevant information that should not be buried here. Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate<https://www.eff.org/donate> | https://act.eff.org/<https://act.eff.org/> On 2/10/20 11:53 AM, cking@modernip.com<mailto:cking@modernip.com> wrote: Agree Georges. We don’t need a percent figure. We can simply observe that ICANN needs specific info for data collection/oversight & outline those required fields. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 [Email Logo5] From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> On Behalf Of Nahitchevansky, Georges Sent: Monday, February 10, 2020 1:37 PM To: Greg Shatan <gregshatanipc@gmail.com><mailto:gregshatanipc@gmail.com>; gnso-rpm-wg <gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Thank you Greg. I was looking for that email and went back through what I had reviewed. The bottom line is that of the 103 cases that had been marked as having no rational, there were 45 that included enough to know what the case had been about and the rationale. That meant that 7% just reiterated the standard and ruled in favor of a party with nothing to deduce the rationale. Of those 7%, though, a number of cases involved domain names that were based on a well-known trademark and it would not take much to understand that a domain name that was simply BRAND + gTLD likely involved cybersquatting. So in my view while there are some cases that had no rationale, I do not believe we are talking overall about cases that involved rulings with no explanations regarding domain names that primarily involved a generic word with a gTLD. Most of the 58 cases (or 103) that arguably had no specific rationale involved domain names that related to trademarks that are known, which again suggests something about the ruling. Put another way, there is a conceptual difference between a case that involves a domain name based on a well-known brand such as <cocacola.beverage> and one that involves a generic word such as <fashion.clothes>. If the cases that have no articulated rationale primarily involved the latter type of domains, I would be much more concerned. But if they mostly relate to known brands, I’m not sure that this suggests that there were errors committed by the panelist. Also, I do not believe that the 58 decisions at issue actually resulted in any appeals, which does suggest that perhaps the decisions were not unfounded. In any event, rather than go back and forth about whether we are talking about 7% or 13% of cases without a stated rationale, I think the solution is to just say that there were several cases that had no clearly stated rationale without getting into percentages. After all, we are more or less in agreement that close to 90% of the cases had articulated rationale and that there should be some tweak to address the minimum of what a URS decision should provide. Georges Nahitchevansky From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Greg Shatan Sent: Monday, February 10, 2020 1:42 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] All, Here is the Georges Nahitchevansky email that was referred to in last week's discussion of the percentage of URS decisions that lacked a rationale. There was a subsequent discussion, so I recommend going back to the list if you want to see the follow-up. Greg ---------- Forwarded message --------- From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Date: Thu, Aug 9, 2018 at 3:27 PM Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>, Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>, gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Rebecca: I do not disagree with the notion that we should discuss what a decision should contain, but I don’t think we have a consensus as to what that should be in the URS context (given the pricing of URS proceedings). Moreover, a review of the URS cases makes your 13% number and comment of “significant due process and implementation issues” point questionable. At NAF for example, there were 827 cases that that your research assistants reviewed. I found a total of about 103 that your team flagged as having no articulated decisions. I would agree that in 58 cases the decisions lacked details, but in 45 cases there were details that sufficiently let you know what the case was about and the basis of the resolution. I am sure we can argue about these 45 cases and whether they should say more, but ultimately we are really only talking about 58 cases that actually do not have any specific details and just provide the standard and a resolution (although I note that most of these cases involve domain names based on fairly well known marks such as NISSAN, DATSUN, TEXACO, BLOOMBERG, BNP PARIBAS etc., so you pretty much know what trademark was involved.). In all, we are really talking about 7% of the cases that have no details, which is not significant. Again, we can discuss what the decisions should provide, but I don’t think we ought to be qualifying this as a “significant” issue per se (as 93% of them have details). There are other issues being considered in the URS review that have better percentage numbers as an issue that are viewed as not being significant per se. The point is that the URS looks to be working appropriately and there are probably some tweaks and refinements needed but this is not sky is falling issue. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Thursday, August 9, 2018 1:22 PM To: Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 My apologies for missing the meeting. Comment on the big document: This is currently only covered under Defenses but I would put it for discussion/recommendations under 2. Examiners’ Guide/3. Other Issues because it goes beyond defenses: Decisions should contain basic information, including what the trademark is, what the finding of abuse is and/or what findings are on any defenses—13% of decisions did not, and this raises significant due process and implementation issues. ________________________________ From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>> Sent: Wednesday, August 8, 2018 3:56:54 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 Dear All, Please see below the action items and notes captured by staff from the RPM PDP WG call held on 08 August 2018 (17:00-18:30 UTC). Staff have posted to the wiki space the action items and notes. Please note that these will be high-level notes and are not meant as a substitute for the recording. The recording, AC chat, and attendance records are posted on the wiki at: https://community.icann.org/x/uwNpBQ<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_uwNpBQ&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=gcgRms-bmezGQQmwXCqLMQXOdSv3gly_0bWYNSuRlY8&e=> Best Regards, Ariel Ariel Xinyue Liang GNSO Policy Support Specialist Internet Corporation for Assigned Names and Numbers (ICANN) == ACTION ITEMS: · Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. · Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. · Staff to recirculate the Super Consolidated URS Topics Table document · WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. · WG members to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, during next week’s call. Later period to discuss larger policy issues. NOTES: Review Agenda/Statements of Interest George Kirikos has become a member of the At-Large Community: https://community.icann.org/display/gnsosoi/George+Kirikos+SOI<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_gnsosoi_George-2BKirikos-2BSOI&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=8-YfNNseZ7YW77BHJT9ciEr_I08JQcazWKn1rxNI900&e=> General Comment on the Super Consolidated URS Topics Table Document · The topics in the table were developed by the WG members and deliberated on by the WG & URS Sub Teams. Each Sub Team then did very substantial work on data collection and reviewing what came back. While the actual Sub Team recommendations and suggestions captured in this document are what is intended the WG should discuss - to see if it wishes to develop policy or operational recommendations - discussion over what should be on the actual list of topics should not be reopened unless the WG agrees to do so. We encourage all WG members to review all the previous reports from each Sub Team, and all the documents they worked on. They are linked in this Super Consolidated document (page 2). · The Super Consolidated document is a summary of findings and suggestions by the Sub Teams. The Table does not mean to limit/restrict recommendations from the WG members. If there is any issue overlapping with UDRP, can possibly be carried over to the phase II of the PDP. Is it possible to add additional topics to the Super Consolidated Table? One WG member said that access to the Courts, for example, is a topic he raised, which isn't in the table. Statute of Limitations, whether URS should apply to legacy gTLDs as a consensus policy, are just a few of the topics not in the table. He brought it up in November 2017 (see: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html<https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html> ) and it was reflected in a later document. That's a critical issue for registrants. if they don't have access to the courts to challenge a URS decision, then it's a huge denial of their rights. · While the chart is not meant to foreclose further discussion, it is a good faith attempt at capturing the work of the sub teams. The purpose of today's, and likely the next few, calls was to make sure this was an accurate and comprehensive reflection of our discussions so far. That said, WG members should bear in mind that we are seeking consensus, so items which are unlikely to achieve that may not be appropriate to reflect as a recommendation, but could be included in public comments on the Initial Report. Also, before adding items to this chart, we will want to work with staff to see whether such topics was previously discussed, and if so, the level of agreement/consensus. In other words, it is not necessary final, but is equally an opportunity to reintroduce topics which have been discussed, but for which consensus is/was not possible. · Could we create a list of "missing issues" -- a list of issues raised in this call (and calls to follow); we can evaluate the nature and weight of these ideas later. · Regarding the Action Items highlighted in column 3 of the table, Providers ST will do a first pass of the responses from the Providers to the follow-up questions, and then discuss the issues that they identified and proposed suggestions with the full WG. Limited filing period (page 3) · One WG member believes that there should be limitation for filing period to bring URS Complaints, so the domain registered many years ago would not be subject to unfair treatment. He said a registrant who owns a domain for 20 years, for example, shouldn't have to be concerned about a policy that can take their domain down with very short time period to respond. · Other WG members said this was discussed, and did not achieve agreement. That would only even be an option if the trademark pre-dated. This is unlikely to be a situation in practice where a URS was brought because it would probably not be a "slam dunk" case after 20 years unless there had been a change of circumstances. · On the issue of delay and laches - as reported by the Docs Sub Team, the data did not provide any basis for which a policy recommendation should be made. The Providers and Practitioners Sub Teams also did not uncover any specific issues that came to either practitioners' or providers' attention. Administrative Review (page 3-4) · One WG member asked whether ICANN should bring Providers into contractual relationship in order to enforce the URS Rules & Procedures. Another member said it probably need to be ICANN’s legal department to enforce the rules & procedure. · URS Providers have MoU with ICANN. Whether it is ICANN’s compliance department or legal department to enforce the rules & procedures, it should not be controversial that Providers must abide by them. · An MOU could be legally enforceable, depending on the circumstances. 500-word Complaint limit (page 4-5) • On 500-word Complaint Limit - Practitioners' survey results were split (out of 12, 5 agree it's sufficient, 4 disagree); results included feedback from some that the word limit was too low: "arbitrary and often insufficient" and "should be slightly increased". • One member said he understands and generally agrees with the decision not to suggest an expansion of the word limit, he wonders if there aren't situations (multi- domain challenges, etc.) where a Complainant or Respondent might be given the opportunity to request an expansion. This point can be captured for decisional phase. • Another member suggested that perhaps providers can provide stats on the average word length of complaints, to see how close to the 500 words they are at present. (i.e. a table of distributions, e.g. 10% under 200 words, 20% between 201 and 300, etc.) Amending the Complaint in light of GDPR/Temp Spec (page 5-6) · One member believes that 2-3 days might not be a good rule (e.g. weekends, time to research, etc.). Maybe 5 business days. · WIPO’s approach to “doe complaints” has been very helpful and provides some comfort that the lack of true registrant/registrant organization data masked due to GDPR will not result in a deficient complaint for an omitted respondent. · ACTION ITEM: Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. · Forum is asking for amendment of the complaint in UDRP - under the rules that's not allowed in URS. SMD Files (page 6-7) · SMD files are used for limited purpose of demonstrating the use. · Recollection is that SMD files would be passed to the Examiners and relay the critical information related to the TM registration. That's why some people are surprised by the limited info SMD files would provide. The SMD files contain some basic human-readable information, with the rest of the information coded. For example, the trademark itself is human-readable but the applicable Nice classification is coded. A SMD file is used by registries/registrars for validation, and as Greg noted, to demonstrate use. From the TMCH provider: http://www.trademark-clearinghouse.com/help/faq/which-information-does-smd-file-contain<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearinghouse.com_help_faq_which-2Dinformation-2Ddoes-2Dsmd-2Dfile-2Dcontain&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=v3df_qE8Dw_U7YY7_IfhIMgGSxt-a44LbNskorrbTIg&e=> · If the intent of the STI was that the SMD file would be a file summary, that got lost somewhere along the way, way before the SMD file was designed by the TMCH providers. · Rules 3(b)(v) Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use –which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse · It might be useful to look at the spec that they relied on. But the real question is how should the examiner get the relevant data about the Complainant’s mark. The SMD file is probably not the answer, if it was ever intended to be. · the Examiner is not required to second-guess the SMD file. Its existence is sufficient that the mark has had use validated by the TMCH. Other Topics (page 7-8) · These are policy proposals can be brought up when WG members are proposing changes to the URS policy itself. Charter asks us to address the question whether the URS should become a consensus policy applicable to legacy domains. Charter is not specific regarding whether such discussion should occur in phase I or phase II. This feedback illustrates that the ST didn't get to propose policy changes, it is for the WG to discuss and propose changes. · when we reference the STI and IRT reports, we need to keep in mind they only had about 1-2 months to complete their work and produce a report; they were not standard PDP working groups and had limited charters and mandates, which were set by the Board · This is feedback from one Provider, who may want to grow their business. Practitioners survey are from Complaints' side. Need to have a balanced solution when considering the input. · There were plenty of practitioners that represent registrants in the Subgroup, although their experience was largely with the UDRP. Duration of response period (Page 11) · One member believes that if the URS continues in its current form, it would affect valuable domain names. The ones the registrants that do want to defend them, 14 days are not sufficient. 20 days may be more appropriate. It should be based on the age of the domain name. If a domain is 3 months, it will have a shorter period to respond. If you own a domain name for 5-10 years, response period would be longer so less urgency. · Several other WG members disagree. The URS is supposed to be an expedited proceeding so increasing the length of time of a streamlined proceeding defeats the purpose. At most, there could be an additional 3 or 4 days extension period for cause. The point is that there are enough circumstances that give rise to the URS 'quick response' that we should NOT make assumptions into policy. It is an assumption that an "aged" domain would not require a fast response. In Mexico, we have not been able to file a domain name case due to Courts ignorance about the subject and also, because it could take years to be solved. We're spinning out fo control - extending the time to respond to URS cases just because a domain registration is not new defeats the purpose of fast action to take down an infringing domain once it's discovered. The URS is meant to address clear and convincing cases of infringement. A person registers a domain name for less than $50 and brand owner find out about at some point and then files an injunction in court for tens of thousands of dollars. Where is the balance. Examiners Guide (page 13) · The WIPO guidance for examiners took 1500 hours to develop. · The WIPO guidance is relevant to the URS, the elements are shown are the same and the differences include the burden of proof, word limit, etc. A lot of WIPO guidance goes to the shade of grey issues. URS is for clear black/white cases, so if there is a URS guidance it would likely be abbreviated. Duration of Suspension Period & Review of Implementation (page 21-23) · One WG member suggests to find out how much cost for registries & registrars to comply with the URS rules and procedures. Need to get data/feedback from the registries/registrars. · Other WG members are not sure "cost of implementation of URS" for Registries/Registrars is relevant to effectiveness of URS. We don't need to do a cost/benefit analysis (the costs & benefits aren't ICANN's), the providers, registrars, registries need to be asked if they are overburdened by the costs of compliance. · There is an action item to contact the registries/registrars about these issues. Timing TBD due to Sunrise & Claims survey launch. Other topics (page 23-24) · One WG member thinks the HSTS issue is not difficult to fix. The Providers need to improve their technical applicability to resolve the issue. Renee Fossen from Forum disagrees. · ACTION ITEM: Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. NEXT STEPS · ACTION ITEM: Staff to recirculate the Super Consolidated URS Topics Table document and ask all WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. · ACTION ITEM: WG to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35. Later period to discuss larger policy issues. ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. 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Fine with me. Thank you Brian. From: Zak Muscovitch <zak@muscovitch.com> Date: Tuesday, February 11, 2020 at 1:27 PM To: Scott Austin <saustin@vlplawgroup.com>, "BECKHAM, Brian" <brian.beckham@wipo.int>, Paul Keating <paul@law.es>, Gerald Levine <gmlevine@researchtheworld.com>, 'Mitch Stoltz' <mitch@eff.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] I can agree with Brian’s formulation as well. Zak From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Scott Austin <saustin@vlplawgroup.com> Date: Tuesday, February 11, 2020 at 7:25 AM To: "BECKHAM, Brian" <brian.beckham@wipo.int>, "Paul Keating \(LAW. es\)" <paul@law.es>, Gerald Levine <gmlevine@researchtheworld.com>, 'Mitch Stoltz' <mitch@eff.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] I agree and support Brian's proposed text. ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of BECKHAM, Brian <brian.beckham@wipo.int> Sent: Tuesday, February 11, 2020 6:21:39 AM To: Paul Keating <paul@law.es>; Gerald Levine <gmlevine@researchtheworld.com>; 'Mitch Stoltz' <mitch@eff.org>; gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Thanks Paul, Agreed, and arguably this is a failing of the Providers to properly manage the case/educate examiners as this requirement already exists in URS para 13(b) which states "The Examiner's Determination shall [ ] provide the reasons on which it is based..." I have now been able to listen to last week's call, and in particular noting the disagreement about which statistic is "correct", wonder if -- rather than debating the precise verbiage to describe whichever statistic -- the following might work for the context para for Recommendation 7: "Depending on the criteria applied, it was observed that between 7% and 17% of Determinations in URS cases did not meet the requirement of adequately articulating the reasoning on which the Determination was based." Brian ________________________________ From: Paul Keating <paul@law.es> Sent: Tuesday, February 11, 2020 11:47 AM To: Gerald Levine; BECKHAM, Brian; 'Mitch Stoltz'; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Regardless of the percentage, I see no reason why there cannot simply be a rule that in ANY URS decision, the panelist must set forth the facts deemed established and the rationale for the decision. That simply corrects the apparent problem without having to guess at the reasons used to reach the conclusion. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Gerald Levine <gmlevine@researchtheworld.com> Date: Tuesday, February 11, 2020 at 1:47 AM To: "'BECKHAM, Brian'" <brian.beckham@wipo.int>, 'Mitch Stoltz' <mitch@eff.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Of course in BT the domain names were confusingly similar to household marks. It is trickier when complainant asserts its mark is well-known but offers no evidence to establish it as a fact. The important point, well-established in UDRP cases, is that mark owners are not given benefit of the doubt on the bad faith requirement. This should equally be case with URS. GmLevine From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of BECKHAM, Brian Sent: Monday, February 10, 2020 3:35 PM To: Mitch Stoltz <mitch@eff.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Mitch, all Apologies that I missed last week's call and have not yet had a chance to listen to the recording, but with respect to the below, just for one quick reference, the BT v One in a Million case speaks to this: http://www.bailii.org/ew/cases/EWCA/Civ/1998/1272.html. Brian ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Mitch Stoltz <mitch@eff.org<mailto:mitch@eff.org>> Sent: Monday, February 10, 2020 9:04 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] It would be inappropriate to presume cybersquatting from the use of a "well known" brand name alone. There are any number of legitimate reasons for registering <brand>.<new gTLD>. And we have no working standard for what "well known" means, especially internationally. Cybersquatting requires intent, and if some percentage of URS proceedings are presuming intent based on no facts but the domain name itself, that's highly relevant information that should not be buried here. Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate | https://act.eff.org/ On 2/10/20 11:53 AM, cking@modernip.com<mailto:cking@modernip.com> wrote: Agree Georges. We don’t need a percent figure. We can simply observe that ICANN needs specific info for data collection/oversight & outline those required fields. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 [Email Logo5] From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> On Behalf Of Nahitchevansky, Georges Sent: Monday, February 10, 2020 1:37 PM To: Greg Shatan <gregshatanipc@gmail.com><mailto:gregshatanipc@gmail.com>; gnso-rpm-wg <gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Thank you Greg. I was looking for that email and went back through what I had reviewed. The bottom line is that of the 103 cases that had been marked as having no rational, there were 45 that included enough to know what the case had been about and the rationale. That meant that 7% just reiterated the standard and ruled in favor of a party with nothing to deduce the rationale. Of those 7%, though, a number of cases involved domain names that were based on a well-known trademark and it would not take much to understand that a domain name that was simply BRAND + gTLD likely involved cybersquatting. So in my view while there are some cases that had no rationale, I do not believe we are talking overall about cases that involved rulings with no explanations regarding domain names that primarily involved a generic word with a gTLD. Most of the 58 cases (or 103) that arguably had no specific rationale involved domain names that related to trademarks that are known, which again suggests something about the ruling. Put another way, there is a conceptual difference between a case that involves a domain name based on a well-known brand such as <cocacola.beverage> and one that involves a generic word such as <fashion.clothes>. If the cases that have no articulated rationale primarily involved the latter type of domains, I would be much more concerned. But if they mostly relate to known brands, I’m not sure that this suggests that there were errors committed by the panelist. Also, I do not believe that the 58 decisions at issue actually resulted in any appeals, which does suggest that perhaps the decisions were not unfounded. In any event, rather than go back and forth about whether we are talking about 7% or 13% of cases without a stated rationale, I think the solution is to just say that there were several cases that had no clearly stated rationale without getting into percentages. After all, we are more or less in agreement that close to 90% of the cases had articulated rationale and that there should be some tweak to address the minimum of what a URS decision should provide. Georges Nahitchevansky From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Greg Shatan Sent: Monday, February 10, 2020 1:42 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] All, Here is the Georges Nahitchevansky email that was referred to in last week's discussion of the percentage of URS decisions that lacked a rationale. There was a subsequent discussion, so I recommend going back to the list if you want to see the follow-up. Greg ---------- Forwarded message --------- From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Date: Thu, Aug 9, 2018 at 3:27 PM Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>, Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>, gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Rebecca: I do not disagree with the notion that we should discuss what a decision should contain, but I don’t think we have a consensus as to what that should be in the URS context (given the pricing of URS proceedings). Moreover, a review of the URS cases makes your 13% number and comment of “significant due process and implementation issues” point questionable. At NAF for example, there were 827 cases that that your research assistants reviewed. I found a total of about 103 that your team flagged as having no articulated decisions. I would agree that in 58 cases the decisions lacked details, but in 45 cases there were details that sufficiently let you know what the case was about and the basis of the resolution. I am sure we can argue about these 45 cases and whether they should say more, but ultimately we are really only talking about 58 cases that actually do not have any specific details and just provide the standard and a resolution (although I note that most of these cases involve domain names based on fairly well known marks such as NISSAN, DATSUN, TEXACO, BLOOMBERG, BNP PARIBAS etc., so you pretty much know what trademark was involved.). In all, we are really talking about 7% of the cases that have no details, which is not significant. Again, we can discuss what the decisions should provide, but I don’t think we ought to be qualifying this as a “significant” issue per se (as 93% of them have details). There are other issues being considered in the URS review that have better percentage numbers as an issue that are viewed as not being significant per se. The point is that the URS looks to be working appropriately and there are probably some tweaks and refinements needed but this is not sky is falling issue. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Thursday, August 9, 2018 1:22 PM To: Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 My apologies for missing the meeting. Comment on the big document: This is currently only covered under Defenses but I would put it for discussion/recommendations under 2. Examiners’ Guide/3. Other Issues because it goes beyond defenses: Decisions should contain basic information, including what the trademark is, what the finding of abuse is and/or what findings are on any defenses—13% of decisions did not, and this raises significant due process and implementation issues. ________________________________ From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>> Sent: Wednesday, August 8, 2018 3:56:54 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 Dear All, Please see below the action items and notes captured by staff from the RPM PDP WG call held on 08 August 2018 (17:00-18:30 UTC). Staff have posted to the wiki space the action items and notes. Please note that these will be high-level notes and are not meant as a substitute for the recording. The recording, AC chat, and attendance records are posted on the wiki at: https://community.icann.org/x/uwNpBQ<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_uwNpBQ&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=gcgRms-bmezGQQmwXCqLMQXOdSv3gly_0bWYNSuRlY8&e=> Best Regards, Ariel Ariel Xinyue Liang GNSO Policy Support Specialist Internet Corporation for Assigned Names and Numbers (ICANN) == ACTION ITEMS: • Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. • Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. • Staff to recirculate the Super Consolidated URS Topics Table document • WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. • WG members to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, during next week’s call. Later period to discuss larger policy issues. NOTES: Review Agenda/Statements of Interest • George Kirikos has become a member of the At-Large Community: https://community.icann.org/display/gnsosoi/George+Kirikos+SOI<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_gnsosoi_George-2BKirikos-2BSOI&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=8-YfNNseZ7YW77BHJT9ciEr_I08JQcazWKn1rxNI900&e=> General Comment on the Super Consolidated URS Topics Table Document • The topics in the table were developed by the WG members and deliberated on by the WG & URS Sub Teams. Each Sub Team then did very substantial work on data collection and reviewing what came back. While the actual Sub Team recommendations and suggestions captured in this document are what is intended the WG should discuss - to see if it wishes to develop policy or operational recommendations - discussion over what should be on the actual list of topics should not be reopened unless the WG agrees to do so. We encourage all WG members to review all the previous reports from each Sub Team, and all the documents they worked on. They are linked in this Super Consolidated document (page 2). • The Super Consolidated document is a summary of findings and suggestions by the Sub Teams. The Table does not mean to limit/restrict recommendations from the WG members. If there is any issue overlapping with UDRP, can possibly be carried over to the phase II of the PDP. • Is it possible to add additional topics to the Super Consolidated Table? One WG member said that access to the Courts, for example, is a topic he raised, which isn't in the table. Statute of Limitations, whether URS should apply to legacy gTLDs as a consensus policy, are just a few of the topics not in the table. He brought it up in November 2017 (see: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html ) and it was reflected in a later document. That's a critical issue for registrants. if they don't have access to the courts to challenge a URS decision, then it's a huge denial of their rights. • While the chart is not meant to foreclose further discussion, it is a good faith attempt at capturing the work of the sub teams. The purpose of today's, and likely the next few, calls was to make sure this was an accurate and comprehensive reflection of our discussions so far. That said, WG members should bear in mind that we are seeking consensus, so items which are unlikely to achieve that may not be appropriate to reflect as a recommendation, but could be included in public comments on the Initial Report. Also, before adding items to this chart, we will want to work with staff to see whether such topics was previously discussed, and if so, the level of agreement/consensus. In other words, it is not necessary final, but is equally an opportunity to reintroduce topics which have been discussed, but for which consensus is/was not possible. • Could we create a list of "missing issues" -- a list of issues raised in this call (and calls to follow); we can evaluate the nature and weight of these ideas later. • Regarding the Action Items highlighted in column 3 of the table, Providers ST will do a first pass of the responses from the Providers to the follow-up questions, and then discuss the issues that they identified and proposed suggestions with the full WG. Limited filing period (page 3) • One WG member believes that there should be limitation for filing period to bring URS Complaints, so the domain registered many years ago would not be subject to unfair treatment. He said a registrant who owns a domain for 20 years, for example, shouldn't have to be concerned about a policy that can take their domain down with very short time period to respond. • Other WG members said this was discussed, and did not achieve agreement. That would only even be an option if the trademark pre-dated. This is unlikely to be a situation in practice where a URS was brought because it would probably not be a "slam dunk" case after 20 years unless there had been a change of circumstances. • On the issue of delay and laches - as reported by the Docs Sub Team, the data did not provide any basis for which a policy recommendation should be made. The Providers and Practitioners Sub Teams also did not uncover any specific issues that came to either practitioners' or providers' attention. Administrative Review (page 3-4) • One WG member asked whether ICANN should bring Providers into contractual relationship in order to enforce the URS Rules & Procedures. Another member said it probably need to be ICANN’s legal department to enforce the rules & procedure. • URS Providers have MoU with ICANN. Whether it is ICANN’s compliance department or legal department to enforce the rules & procedures, it should not be controversial that Providers must abide by them. • An MOU could be legally enforceable, depending on the circumstances. 500-word Complaint limit (page 4-5) • On 500-word Complaint Limit - Practitioners' survey results were split (out of 12, 5 agree it's sufficient, 4 disagree); results included feedback from some that the word limit was too low: "arbitrary and often insufficient" and "should be slightly increased". • One member said he understands and generally agrees with the decision not to suggest an expansion of the word limit, he wonders if there aren't situations (multi- domain challenges, etc.) where a Complainant or Respondent might be given the opportunity to request an expansion. This point can be captured for decisional phase. • Another member suggested that perhaps providers can provide stats on the average word length of complaints, to see how close to the 500 words they are at present. (i.e. a table of distributions, e.g. 10% under 200 words, 20% between 201 and 300, etc.) Amending the Complaint in light of GDPR/Temp Spec (page 5-6) • One member believes that 2-3 days might not be a good rule (e.g. weekends, time to research, etc.). Maybe 5 business days. • WIPO’s approach to “doe complaints” has been very helpful and provides some comfort that the lack of true registrant/registrant organization data masked due to GDPR will not result in a deficient complaint for an omitted respondent. • ACTION ITEM: Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. • Forum is asking for amendment of the complaint in UDRP - under the rules that's not allowed in URS. SMD Files (page 6-7) • SMD files are used for limited purpose of demonstrating the use. • Recollection is that SMD files would be passed to the Examiners and relay the critical information related to the TM registration. That's why some people are surprised by the limited info SMD files would provide. • The SMD files contain some basic human-readable information, with the rest of the information coded. For example, the trademark itself is human-readable but the applicable Nice classification is coded. A SMD file is used by registries/registrars for validation, and as Greg noted, to demonstrate use. From the TMCH provider: http://www.trademark-clearinghouse.com/help/faq/which-information-does-smd-file-contain<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearinghouse.com_help_faq_which-2Dinformation-2Ddoes-2Dsmd-2Dfile-2Dcontain&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=v3df_qE8Dw_U7YY7_IfhIMgGSxt-a44LbNskorrbTIg&e=> • If the intent of the STI was that the SMD file would be a file summary, that got lost somewhere along the way, way before the SMD file was designed by the TMCH providers. • Rules 3(b)(v) Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use –which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse • It might be useful to look at the spec that they relied on. But the real question is how should the examiner get the relevant data about the Complainant’s mark. The SMD file is probably not the answer, if it was ever intended to be. • the Examiner is not required to second-guess the SMD file. Its existence is sufficient that the mark has had use validated by the TMCH. Other Topics (page 7-8) • These are policy proposals can be brought up when WG members are proposing changes to the URS policy itself. Charter asks us to address the question whether the URS should become a consensus policy applicable to legacy domains. Charter is not specific regarding whether such discussion should occur in phase I or phase II. This feedback illustrates that the ST didn't get to propose policy changes, it is for the WG to discuss and propose changes. • when we reference the STI and IRT reports, we need to keep in mind they only had about 1-2 months to complete their work and produce a report; they were not standard PDP working groups and had limited charters and mandates, which were set by the Board • This is feedback from one Provider, who may want to grow their business. Practitioners survey are from Complaints' side. Need to have a balanced solution when considering the input. • There were plenty of practitioners that represent registrants in the Subgroup, although their experience was largely with the UDRP. Duration of response period (Page 11) • One member believes that if the URS continues in its current form, it would affect valuable domain names. The ones the registrants that do want to defend them, 14 days are not sufficient. 20 days may be more appropriate. It should be based on the age of the domain name. If a domain is 3 months, it will have a shorter period to respond. If you own a domain name for 5-10 years, response period would be longer so less urgency. • Several other WG members disagree. The URS is supposed to be an expedited proceeding so increasing the length of time of a streamlined proceeding defeats the purpose. At most, there could be an additional 3 or 4 days extension period for cause. The point is that there are enough circumstances that give rise to the URS 'quick response' that we should NOT make assumptions into policy. It is an assumption that an "aged" domain would not require a fast response. In Mexico, we have not been able to file a domain name case due to Courts ignorance about the subject and also, because it could take years to be solved. We're spinning out fo control - extending the time to respond to URS cases just because a domain registration is not new defeats the purpose of fast action to take down an infringing domain once it's discovered. The URS is meant to address clear and convincing cases of infringement. A person registers a domain name for less than $50 and brand owner find out about at some point and then files an injunction in court for tens of thousands of dollars. Where is the balance. Examiners Guide (page 13) • The WIPO guidance for examiners took 1500 hours to develop. • The WIPO guidance is relevant to the URS, the elements are shown are the same and the differences include the burden of proof, word limit, etc. A lot of WIPO guidance goes to the shade of grey issues. URS is for clear black/white cases, so if there is a URS guidance it would likely be abbreviated. Duration of Suspension Period & Review of Implementation (page 21-23) • One WG member suggests to find out how much cost for registries & registrars to comply with the URS rules and procedures. Need to get data/feedback from the registries/registrars. • Other WG members are not sure "cost of implementation of URS" for Registries/Registrars is relevant to effectiveness of URS. We don't need to do a cost/benefit analysis (the costs & benefits aren't ICANN's), the providers, registrars, registries need to be asked if they are overburdened by the costs of compliance. • There is an action item to contact the registries/registrars about these issues. Timing TBD due to Sunrise & Claims survey launch. Other topics (page 23-24) • One WG member thinks the HSTS issue is not difficult to fix. The Providers need to improve their technical applicability to resolve the issue. Renee Fossen from Forum disagrees. • ACTION ITEM: Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. NEXT STEPS • ACTION ITEM: Staff to recirculate the Super Consolidated URS Topics Table document and ask all WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. • ACTION ITEM: WG to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35. Later period to discuss larger policy issues. ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. 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I'm fine with that though the larger number should read 13.3%. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of BECKHAM, Brian <brian.beckham@wipo.int> Sent: Tuesday, February 11, 2020 6:21 AM To: Paul Keating <paul@law.es>; Gerald Levine <gmlevine@researchtheworld.com>; 'Mitch Stoltz' <mitch@eff.org>; gnso-rpm-wg@icann.org <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Thanks Paul, Agreed, and arguably this is a failing of the Providers to properly manage the case/educate examiners as this requirement already exists in URS para 13(b) which states "The Examiner's Determination shall [ ] provide the reasons on which it is based..." I have now been able to listen to last week's call, and in particular noting the disagreement about which statistic is "correct", wonder if -- rather than debating the precise verbiage to describe whichever statistic -- the following might work for the context para for Recommendation 7: "Depending on the criteria applied, it was observed that between 7% and 17% of Determinations in URS cases did not meet the requirement of adequately articulating the reasoning on which the Determination was based." Brian ________________________________ From: Paul Keating <paul@law.es> Sent: Tuesday, February 11, 2020 11:47 AM To: Gerald Levine; BECKHAM, Brian; 'Mitch Stoltz'; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Regardless of the percentage, I see no reason why there cannot simply be a rule that in ANY URS decision, the panelist must set forth the facts deemed established and the rationale for the decision. That simply corrects the apparent problem without having to guess at the reasons used to reach the conclusion. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Gerald Levine <gmlevine@researchtheworld.com> Date: Tuesday, February 11, 2020 at 1:47 AM To: "'BECKHAM, Brian'" <brian.beckham@wipo.int>, 'Mitch Stoltz' <mitch@eff.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Of course in BT the domain names were confusingly similar to household marks. It is trickier when complainant asserts its mark is well-known but offers no evidence to establish it as a fact. The important point, well-established in UDRP cases, is that mark owners are not given benefit of the doubt on the bad faith requirement. This should equally be case with URS. GmLevine From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of BECKHAM, Brian Sent: Monday, February 10, 2020 3:35 PM To: Mitch Stoltz <mitch@eff.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Mitch, all Apologies that I missed last week's call and have not yet had a chance to listen to the recording, but with respect to the below, just for one quick reference, the BT v One in a Million case speaks to this: http://www.bailii.org/ew/cases/EWCA/Civ/1998/1272.html<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.bailii.org_ew_cases_EWCA_Civ_1998_1272.html&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=foUZsmE0rfYxLKJOXvdkkHc8HyrTciBZvgSpbkjQZcY&s=SREx_rMR8b_E2etaUb3mmUh71nWR6c5hDmQDTk9CpEg&e=>. Brian ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Mitch Stoltz <mitch@eff.org<mailto:mitch@eff.org>> Sent: Monday, February 10, 2020 9:04 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] It would be inappropriate to presume cybersquatting from the use of a "well known" brand name alone. There are any number of legitimate reasons for registering <brand>.<new gTLD>. And we have no working standard for what "well known" means, especially internationally. Cybersquatting requires intent, and if some percentage of URS proceedings are presuming intent based on no facts but the domain name itself, that's highly relevant information that should not be buried here. Mitch Stoltz Senior Staff Attorney, EFF | 415-436-9333 x142 https://www.eff.org/donate<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.eff.org_donate&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=foUZsmE0rfYxLKJOXvdkkHc8HyrTciBZvgSpbkjQZcY&s=v5hAyBNNEx_7iJG2qcOAwigjyWOa1wmY-Djbl3xghdQ&e=> | https://act.eff.org/<https://urldefense.proofpoint.com/v2/url?u=https-3A__act.eff.org_&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=foUZsmE0rfYxLKJOXvdkkHc8HyrTciBZvgSpbkjQZcY&s=u7D2rQPOweegZwUDczBuIKXu0Na230ho5SDCWpkYjqA&e=> On 2/10/20 11:53 AM, cking@modernip.com<mailto:cking@modernip.com> wrote: Agree Georges. We don’t need a percent figure. We can simply observe that ICANN needs specific info for data collection/oversight & outline those required fields. Cyntia King O: +1 816.633.7647 C: +1 818.209.6088 [Email Logo5] From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> On Behalf Of Nahitchevansky, Georges Sent: Monday, February 10, 2020 1:37 PM To: Greg Shatan <gregshatanipc@gmail.com><mailto:gregshatanipc@gmail.com>; gnso-rpm-wg <gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] Thank you Greg. I was looking for that email and went back through what I had reviewed. The bottom line is that of the 103 cases that had been marked as having no rational, there were 45 that included enough to know what the case had been about and the rationale. That meant that 7% just reiterated the standard and ruled in favor of a party with nothing to deduce the rationale. Of those 7%, though, a number of cases involved domain names that were based on a well-known trademark and it would not take much to understand that a domain name that was simply BRAND + gTLD likely involved cybersquatting. So in my view while there are some cases that had no rationale, I do not believe we are talking overall about cases that involved rulings with no explanations regarding domain names that primarily involved a generic word with a gTLD. Most of the 58 cases (or 103) that arguably had no specific rationale involved domain names that related to trademarks that are known, which again suggests something about the ruling. Put another way, there is a conceptual difference between a case that involves a domain name based on a well-known brand such as <cocacola.beverage> and one that involves a generic word such as <fashion.clothes>. If the cases that have no articulated rationale primarily involved the latter type of domains, I would be much more concerned. But if they mostly relate to known brands, I’m not sure that this suggests that there were errors committed by the panelist. Also, I do not believe that the 58 decisions at issue actually resulted in any appeals, which does suggest that perhaps the decisions were not unfounded. In any event, rather than go back and forth about whether we are talking about 7% or 13% of cases without a stated rationale, I think the solution is to just say that there were several cases that had no clearly stated rationale without getting into percentages. After all, we are more or less in agreement that close to 90% of the cases had articulated rationale and that there should be some tweak to address the minimum of what a URS decision should provide. Georges Nahitchevansky From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Greg Shatan Sent: Monday, February 10, 2020 1:42 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018] All, Here is the Georges Nahitchevansky email that was referred to in last week's discussion of the percentage of URS decisions that lacked a rationale. There was a subsequent discussion, so I recommend going back to the list if you want to see the follow-up. Greg ---------- Forwarded message --------- From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Date: Thu, Aug 9, 2018 at 3:27 PM Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>, Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>, gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Rebecca: I do not disagree with the notion that we should discuss what a decision should contain, but I don’t think we have a consensus as to what that should be in the URS context (given the pricing of URS proceedings). Moreover, a review of the URS cases makes your 13% number and comment of “significant due process and implementation issues” point questionable. At NAF for example, there were 827 cases that that your research assistants reviewed. I found a total of about 103 that your team flagged as having no articulated decisions. I would agree that in 58 cases the decisions lacked details, but in 45 cases there were details that sufficiently let you know what the case was about and the basis of the resolution. I am sure we can argue about these 45 cases and whether they should say more, but ultimately we are really only talking about 58 cases that actually do not have any specific details and just provide the standard and a resolution (although I note that most of these cases involve domain names based on fairly well known marks such as NISSAN, DATSUN, TEXACO, BLOOMBERG, BNP PARIBAS etc., so you pretty much know what trademark was involved.). In all, we are really talking about 7% of the cases that have no details, which is not significant. Again, we can discuss what the decisions should provide, but I don’t think we ought to be qualifying this as a “significant” issue per se (as 93% of them have details). There are other issues being considered in the URS review that have better percentage numbers as an issue that are viewed as not being significant per se. The point is that the URS looks to be working appropriately and there are probably some tweaks and refinements needed but this is not sky is falling issue. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Thursday, August 9, 2018 1:22 PM To: Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 My apologies for missing the meeting. Comment on the big document: This is currently only covered under Defenses but I would put it for discussion/recommendations under 2. Examiners’ Guide/3. Other Issues because it goes beyond defenses: Decisions should contain basic information, including what the trademark is, what the finding of abuse is and/or what findings are on any defenses—13% of decisions did not, and this raises significant due process and implementation issues. ________________________________ From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Ariel Liang <ariel.liang@icann.org<mailto:ariel.liang@icann.org>> Sent: Wednesday, August 8, 2018 3:56:54 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018 Dear All, Please see below the action items and notes captured by staff from the RPM PDP WG call held on 08 August 2018 (17:00-18:30 UTC). Staff have posted to the wiki space the action items and notes. Please note that these will be high-level notes and are not meant as a substitute for the recording. The recording, AC chat, and attendance records are posted on the wiki at: https://community.icann.org/x/uwNpBQ<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_uwNpBQ&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=gcgRms-bmezGQQmwXCqLMQXOdSv3gly_0bWYNSuRlY8&e=> Best Regards, Ariel Ariel Xinyue Liang GNSO Policy Support Specialist Internet Corporation for Assigned Names and Numbers (ICANN) == ACTION ITEMS: · Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. · Renee Fossen to provide more information on HSTS-preloaded domain suspension issues in the written responses. · Staff to recirculate the Super Consolidated URS Topics Table document · WG members to provide substantive comment and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug. Co-Chairs will then discuss among themselves to determine further actions/process. · WG members to finish reviewing the rest of the Super Consolidated URS Topics Table document, including page 24-35, during next week’s call. Later period to discuss larger policy issues. NOTES: Review Agenda/Statements of Interest · George Kirikos has become a member of the At-Large Community: https://community.icann.org/display/gnsosoi/George+Kirikos+SOI<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_gnsosoi_George-2BKirikos-2BSOI&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=8-YfNNseZ7YW77BHJT9ciEr_I08JQcazWKn1rxNI900&e=> General Comment on the Super Consolidated URS Topics Table Document · The topics in the table were developed by the WG members and deliberated on by the WG & URS Sub Teams. Each Sub Team then did very substantial work on data collection and reviewing what came back. While the actual Sub Team recommendations and suggestions captured in this document are what is intended the WG should discuss - to see if it wishes to develop policy or operational recommendations - discussion over what should be on the actual list of topics should not be reopened unless the WG agrees to do so. We encourage all WG members to review all the previous reports from each Sub Team, and all the documents they worked on. They are linked in this Super Consolidated document (page 2). · The Super Consolidated document is a summary of findings and suggestions by the Sub Teams. The Table does not mean to limit/restrict recommendations from the WG members. If there is any issue overlapping with UDRP, can possibly be carried over to the phase II of the PDP. · Is it possible to add additional topics to the Super Consolidated Table? One WG member said that access to the Courts, for example, is a topic he raised, which isn't in the table. Statute of Limitations, whether URS should apply to legacy gTLDs as a consensus policy, are just a few of the topics not in the table. He brought it up in November 2017 (see: https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_pipermail_gnso-2Drpm-2Dwg_2017-2DNovember_002585.html&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=foUZsmE0rfYxLKJOXvdkkHc8HyrTciBZvgSpbkjQZcY&s=ukip4cNpHDh02pXs4VHKTD55lHnJpCSsOItIUPXGKEE&e=> ) and it was reflected in a later document. That's a critical issue for registrants. if they don't have access to the courts to challenge a URS decision, then it's a huge denial of their rights. · While the chart is not meant to foreclose further discussion, it is a good faith attempt at capturing the work of the sub teams. The purpose of today's, and likely the next few, calls was to make sure this was an accurate and comprehensive reflection of our discussions so far. That said, WG members should bear in mind that we are seeking consensus, so items which are unlikely to achieve that may not be appropriate to reflect as a recommendation, but could be included in public comments on the Initial Report. Also, before adding items to this chart, we will want to work with staff to see whether such topics was previously discussed, and if so, the level of agreement/consensus. In other words, it is not necessary final, but is equally an opportunity to reintroduce topics which have been discussed, but for which consensus is/was not possible. · Could we create a list of "missing issues" -- a list of issues raised in this call (and calls to follow); we can evaluate the nature and weight of these ideas later. · Regarding the Action Items highlighted in column 3 of the table, Providers ST will do a first pass of the responses from the Providers to the follow-up questions, and then discuss the issues that they identified and proposed suggestions with the full WG. Limited filing period (page 3) · One WG member believes that there should be limitation for filing period to bring URS Complaints, so the domain registered many years ago would not be subject to unfair treatment. He said a registrant who owns a domain for 20 years, for example, shouldn't have to be concerned about a policy that can take their domain down with very short time period to respond. · Other WG members said this was discussed, and did not achieve agreement. That would only even be an option if the trademark pre-dated. This is unlikely to be a situation in practice where a URS was brought because it would probably not be a "slam dunk" case after 20 years unless there had been a change of circumstances. · On the issue of delay and laches - as reported by the Docs Sub Team, the data did not provide any basis for which a policy recommendation should be made. The Providers and Practitioners Sub Teams also did not uncover any specific issues that came to either practitioners' or providers' attention. Administrative Review (page 3-4) · One WG member asked whether ICANN should bring Providers into contractual relationship in order to enforce the URS Rules & Procedures. Another member said it probably need to be ICANN’s legal department to enforce the rules & procedure. · URS Providers have MoU with ICANN. Whether it is ICANN’s compliance department or legal department to enforce the rules & procedures, it should not be controversial that Providers must abide by them. · An MOU could be legally enforceable, depending on the circumstances. 500-word Complaint limit (page 4-5) • On 500-word Complaint Limit - Practitioners' survey results were split (out of 12, 5 agree it's sufficient, 4 disagree); results included feedback from some that the word limit was too low: "arbitrary and often insufficient" and "should be slightly increased". • One member said he understands and generally agrees with the decision not to suggest an expansion of the word limit, he wonders if there aren't situations (multi- domain challenges, etc.) where a Complainant or Respondent might be given the opportunity to request an expansion. This point can be captured for decisional phase. • Another member suggested that perhaps providers can provide stats on the average word length of complaints, to see how close to the 500 words they are at present. (i.e. a table of distributions, e.g. 10% under 200 words, 20% between 201 and 300, etc.) Amending the Complaint in light of GDPR/Temp Spec (page 5-6) · One member believes that 2-3 days might not be a good rule (e.g. weekends, time to research, etc.). Maybe 5 business days. · WIPO’s approach to “doe complaints” has been very helpful and provides some comfort that the lack of true registrant/registrant organization data masked due to GDPR will not result in a deficient complaint for an omitted respondent. · ACTION ITEM: Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”. · Forum is asking for amendment of the complaint in UDRP - under the rules that's not allowed in URS. SMD Files (page 6-7) · SMD files are used for limited purpose of demonstrating the use. · Recollection is that SMD files would be passed to the Examiners and relay the critical information related to the TM registration. That's why some people are surprised by the limited info SMD files would provide. · The SMD files contain some basic human-readable information, with the rest of the information coded. For example, the trademark itself is human-readable but the applicable Nice classification is coded. A SMD file is used by registries/registrars for validation, and as Greg noted, to demonstrate use. From the TMCH provider: http://www.trademark-clearinghouse.com/help/faq/which-information-does-smd-file-contain<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearinghouse.com_help_faq_which-2Dinformation-2Ddoes-2Dsmd-2Dfile-2Dcontain&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=v3df_qE8Dw_U7YY7_IfhIMgGSxt-a44LbNskorrbTIg&e=> · If the intent of the STI was that the SMD file would be a file summary, that got lost somewhere along the way, way before the SMD file was designed by the TMCH providers. · Rules 3(b)(v) Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use –which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse · It might be useful to look at the spec that they relied on. But the real question is how should the examiner get the relevant data about the Complainant’s mark. The SMD file is probably not the answer, if it was ever intended to be. · the Examiner is not required to second-guess the SMD file. Its existence is sufficient that the mark has had use validated by the TMCH. Other Topics (page 7-8) · These are policy proposals can be brought up when WG members are proposing changes to the URS policy itself. Charter asks us to address the question whether the URS should become a consensus policy applicable to legacy domains. Charter is not specific regarding whether such discussion should occur in phase I or phase II. This feedback illustrates that the ST didn't get to propose policy changes, it is for the WG to discuss and propose changes. · when we reference the STI and IRT reports, we need to keep in mind they only had about 1-2 months to complete their work and produce a report; they were not standard PDP working groups and had limited charters and mandates, which were set by the Board · This is feedback from one Provider, who may want to grow their business. Practitioners survey are from Complaints' side. Need to have a balanced solution when considering the input. · There were plenty of practitioners that represent registrants in the Subgroup, although their experience was largely with the UDRP. Duration of response period (Page 11) · One member believes that if the URS continues in its current form, it would affect valuable domain names. The ones the registrants that do want to defend them, 14 days are not sufficient. 20 days may be more appropriate. It should be based on the age of the domain name. If a domain is 3 months, it will have a shorter period to respond. If you own a domain name for 5-10 years, response period would be longer so less urgency. · Several other WG members disagree. The URS is supposed to be an expedited proceeding so increasing the length of time of a streamlined proceeding defeats the purpose. At most, there could be an additional 3 or 4 days extension period for cause. The point is that there are enough circumstances that give rise to the URS 'quick response' that we should NOT make assumptions into policy. It is an assumption that an "aged" domain would not require a fast response. In Mexico, we have not been able to file a domain name case due to Courts ignorance about the subject and also, because it could take years to be solved. We're spinning out fo control - extending the time to respond to URS cases just because a domain registration is not new defeats the purpose of fast action to take down an infringing domain once it's discovered. The URS is meant to address clear and convincing cases of infringement. A person registers a domain name for less than $50 and brand owner find out about at some point and then files an injunction in court for tens of thousands of dollars. Where is the balance. Examiners Guide (page 13) · The WIPO guidance for examiners took 1500 hours to develop. · The WIPO guidance is relevant to the URS, the elements are shown are the same and the differences include the burden of proof, word limit, etc. A lot of WIPO guidance goes to the shade of grey issues. URS is for clear black/white cases, so if there is a URS guidance it would likely be abbreviated. Duration of Suspension Period & Review of Implementation (page 21-23) · One WG member suggests to find out how much cost for registries & registrars to comply with the URS rules and procedures. Need to get data/feedback from the registries/registrars. · Other WG members are not sure "cost of implementation of URS" for Registries/Registrars is relevant to effectiveness of URS. We don't need to do a cost/benefit analysis (the costs & benefits aren't ICANN's), the providers, registrars, registries need to be asked if they are overburdened by the costs of compliance. · There is an action item to contact the registries/registrars about these issues. Timing TBD due to Sunrise & Claims survey launch. Other topics (page 23-24) · One WG member thinks the HSTS issue is not difficult to fix. The Providers need to improve their technical applicability to resolve the issue. 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