Hi Doug, Tx you for your thoughtful comments. We circulated these Practitioners questions over the last few weeks with requests for limited edits, as the questions have been worked and re-worked by subteam members dedicated to the task. The Practitioners Subteam wanted these questions to be accessible and approachable, and worked hard to make them so.  Your points are noted, but the group is not going to be able to go through another full redraft. Last week, in the final round of review, a few new questions were introduced that brought about intense response.  A group from the Practitioners Subteam met on Friday for 1.5 hours to finalize these questions, and work to see if they could achieve consensus, and this is the version being re-circulated for review now -- just for review of the final two questions. We appreciate your thoughts and response. I am told by Jason Schaeffer, Practitioners Subteam Chair, that the group has completed its work, and passed on its results, with his thanks.   With that said, the Subteam is agreeing to make the discreet change in Other Question #5 from “neutral or impartial manner” to “impartial and independent” to mirror the requirements set forth in Rule 6(b) of the URS.    Otherwise we have finished this discussion and need to pass this document to Staff for creation of the survey. Best regards, Kathy On 5/7/2018 9:25 AM, Doug Isenberg wrote:

A couple of quick questions/comments:

1. Why does Practical Issues question #7 include a footnote with citation to the Procedure and the Rules to explain what is meant by “existing time frames” when other questions do not take a similar approach?  (For example, there are no citations to what is meant by the “word limitation” in Practical Issues question #6, the “filing fee” for Practical Issues question #3, the “limitations on submission of evidence” in Practical Issues question #8, etc.)  Because many questions could include such citations, perhaps it would be better (or at least more consistent) not to include footnotes for any question, because doing so seems to bring unnecessary attention to certain questions. 2. I wonder whether it is appropriate to include Substantive Issues question #1, which asks about creating an “Overview” of URS determinations, since there have been relatively few URS determinations at this stage that contain anything more than little to no substantive analysis.  I believe that WIPO’s original Overview of the UDRP was not published until 2004 or 2005, when there had already been several thousand UDRP decisions (most all of which contain substantive analysis).  So, I’m not sure that it would be practical to create a comparable Overview for the URS, regardless of whether users would want tone. 3. Practical Issues question #4 (“Do you believe the response fee for a URS is appropriate”) seems to imply that there is always a response fee, which is not the case. 4. Consider changing the language in Other question #5 from “neutral or impartial manner” to “impartial and independent” to mirror the requirements set forth in Rule 6(b) of the URS.

*Douglas M. Isenberg*

Attorney at Law

<https://giga.law/>

Phone:1-404-348-0368

Email:Doug@Giga.Law <mailto:Doug@Giga.Law>

Website*:* Giga.Law <https://giga.law/>

*From:*gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Jason Schaeffer *Sent:* Sunday, May 6, 2018 11:39 PM *To:* Kathy Kleiman <kathy@kathykleiman.com>; Corwin, Philip <pcorwin@verisign.com>; Corwin, Philip via gnso-rpm-wg (gnso-rpm-wg@icann.org) <gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] [Gnso-rpm-practitioner] Final Draft Questions for Practitioners -- Final due

Hi Kathy and Phil,

As requested, I am pleased to report that we were able to successfully take the discussion off line and return to the WG with an updated Final Draft of Questions for Practitioners.   Attached for final review and approval is a revised redline that incorporates all questions that were _previously_ accepted and the new edits (on Page 8) that amend the questions from Paul Keating regarding handling of potential conflicts of interests.

The edits are the work of those on copy here, and reflect over 1.5 hours of collaboration on our Friday conference call on the topic.

I understand from Staff and the co-chairs that these surveys need to be finalized.   Thus the rapid turnaround for the WG.

Thanks,

Jason

*From:*Kathy Kleiman [mailto:kathy@kathykleiman.com] *Sent:* Thursday, May 03, 2018 10:48 AM *To:* Corwin, Philip; Jason Schaeffer *Cc:* Scott Austin; Georges Nahitchevansky; Petter Rindforth; paul@law.es <mailto:paul@law.es>; Greg Shatan; gnso-rpm-practitioner@icann.org <mailto:gnso-rpm-practitioner@icann.org> *Subject:* Re: Conference to Address Issue [Gnso-rpm-practitioner] REMINDER FOR REVIEW: Final Draft Questions for Practitioners -- Final due Monday, 30 April

Hi Jason and All,

I've cc'd the full Practitioners Subteam.  Per Jason's request, I think we have a forum here for discussion. So let's take this off the main list and resolve it here in the subteam - with Paul Keating now added.

I've talked with Phil, and because the issue may take a day or two to discuss, our deadline is now cob Sunday.

Best, Kathy

On 5/3/2018 10:05 AM, Corwin, Philip wrote:

Please do take it off list because it has introduced a divisiveness that was absent until now. This is the problem when questions are submitted after sub team and WG review deadlines have passed.

Try to reach a solution, but the questions must be final by cob Friday.

Sent from my iPhone

On May 3, 2018, at 9:23 AM, Jason Schaeffer <jason@esqwire.com <mailto:jason@esqwire.com>> wrote:

Hi All:

I’m writing to our sub-group volunteers to invite Paul into this group to take the discussion “off line” from the WG and see if we can work together to find a suitable solution to allow us to move forward with our survey.

We worked for many weeks to bring this forward to the Sub Team and WG.  I’d like to see if we can use the same collaborative effort to see if we can find a manner to improve upon the questions  added by Paul and see if there is a path forward that does not raise such extreme objections.

Can we discuss over the next two days and see if we can move this forward and present to the WG?

Thanks,

Jason

On May 2, 2018, at 12:42 AM, Scott Austin <SAustin@vlplawgroup.com <mailto:SAustin@vlplawgroup.com>> wrote:

Greg:

Thank you Greg, I agree as a member of the sub team who worked long and hard on the survey questions to encourage practitioners to respond, this 11^th hour add on will have exactly the opposite effect, by insinuation it reads like a malpractice interrogatory, addressed to examiners not practitioners, at a minimum chilling candid response and possibly skewing the results entirely. Should be deleted from a survey of practitioners.

Best regards,

Scott

*/Please click below to  use my booking calendar to schedule:/*

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Phone: (954) 204-3744 | Fax: (954) 320-0233 | SAustin@VLPLawGroup.com <mailto:SAustin@VLPLawGroup.com>

*From:* Gnso-rpm-practitioner <gnso-rpm-practitioner-bounces@icann.org <mailto:gnso-rpm-practitioner-bounces@icann.org>> *On Behalf Of *Greg Shatan *Sent:* Wednesday, May 2, 2018 12:24 AM *To:* Corwin, Philip <pcorwin@verisign.com <mailto:pcorwin@verisign.com>> *Cc:* gnso-rpm-practitioner@icann.org <mailto:gnso-rpm-practitioner@icann.org> *Subject:* Re: [Gnso-rpm-practitioner] REMINDER FOR REVIEW: Final Draft Questions for Practitioners -- Final due Monday, 30 April

I have an issue, which I guess I will have to bring up to the RPM group as a whole. I had not really focused on the questions tacked on to the very end.  I don't believe we ever discussed these in the sub-team or the sub-sub-team.  I believe these questions are inappropriate in a poll of practitioners, as these are questions directed to "panelists."   (The proper term is Examiner....) It feels like a "bait and switch" tactic.  If we are going to survey Examiners, let's survey Examiners -- not ambush practitioners.  On that basis alone, we should eliminate these questions.

I am also troubled by the questions themselves.  I've reviewed the URS Procedures and Rules, and none of these questions comes out of a Procedure or Rule.  The Examiners are supposed to declare conflicts of interest, but there is no instruction on how to implement that.  As such, there is no requirement that an Examiner undertake any type of conflicts check much less something as specific as "a law firm-wide conflicts check to verify that neither you nor your law firm has any actual or potentially adverse conflict of interest to the complainant and/or respondent."  Asking the question implies that this is an imperative when it is not.

On top of that, this verbiage does not accurately describe a conflict check. What is a "potentially adverse conflict of interest"? Why is it only asking about adverse conflicts?  I note that the Forum does have a Supplementary Rule that "A Examiner will be disqualified if circumstances exist that create a conflict of interest or cause the Examiner to be unfair and biased, including but not limited to ...  The Examiner has served as an attorney to any party or the Examiner has been associated with an attorney who has represented a party during that association."  This does not ask the Examiner to run a conflict check, but notably, the issue it raises is the exact _opposite_ of the issue implied in these proposed questions -- the Forum is highlighting representing a party, not being adverse (much less "potentially adverse) to a party.

Now, I'm not saying it's a bad idea for an Examiner to run a (properly defined) conflict check, but the very fact that we are debating Examiner actions and requirements in a practitioners poll should tell us we're in the wrong place.

For that reason, I will not discuss the problems in the follow-up questions.

The final question is even worse. ("Have you ever communicated with a third party regarding an ongoing URS dispute in which you were a panelist?')  As far as I know, this is not prohibited behavior, especially not this broadly described.  It seems designed to make people feel like they might have done something wrong.  (If this is expressly prohibited by the Rules or Procedures, then perhaps we could fashion a question out of that Rule/Procedure _if we were putting together a poll for Examiners_.)  Is it improper to "communicate" with your spouse about a URS case?  With one of your law partners? With a fellow Examiner?

Long story short, these questions should be deleted.

Greg

On Mon, Apr 30, 2018 at 4:06 PM, Greg Shatan <gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com>> wrote:

Jason,

Thank you for guiding us through this process.  I think this turned out to be a very successful and collaborative sub-team — due in no small part to your approach in working with this group. We had good contributions from across the subteam (and the sub-sub-team) as well.

I believe we ended up with fair, well-formed questions that will maximize the amount of useful information that results from this process — both in terms of the raw data and in terms of analysis and results that will arise from working with the data.

Thanks again!

Greg

On Mon, Apr 30, 2018 at 3:09 PM Corwin, Philip via Gnso-rpm-practitioner <gnso-rpm-practitioner@icann.org <mailto:gnso-rpm-practitioner@icann.org>> wrote:

Well done, and thanks and congratulations to the sub-team members and to all other who helped shape the final questions.

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

/"Luck is the residue of design" -- Branch Rickey/

*From:* Gnso-rpm-practitioner [mailto:gnso-rpm-practitioner-bounces@icann.org <mailto:gnso-rpm-practitioner-bounces@icann.org>] *On Behalf Of *Jason Schaeffer *Sent:* Monday, April 30, 2018 2:44 PM *To:* Julie Hedlund <julie.hedlund@icann.org <mailto:julie.hedlund@icann.org>>; gnso-rpm-practitioner@icann.org <mailto:gnso-rpm-practitioner@icann.org> *Subject:* [EXTERNAL] Re: [Gnso-rpm-practitioner] REMINDER FOR REVIEW: Final Draft Questions for Practitioners -- Final due Monday, 30 April

Hi Julie,

Thank you and staff for your ongoing assistance.

Having heard no objection and considering the thoughtful debate and input from members to help finalize these questions, I would be comfortable using your latest edit as the final document from our sub-team.

Thanks,

Jason

*From:*Gnso-rpm-practitioner [mailto:gnso-rpm-practitioner-bounces@icann.org] *On Behalf Of *Julie Hedlund *Sent:* Monday, April 30, 2018 9:05 AM *To:* gnso-rpm-practitioner@icann.org <mailto:gnso-rpm-practitioner@icann.org> *Subject:* [Gnso-rpm-practitioner] REMINDER FOR REVIEW: Final Draft Questions for Practitioners -- Final due Monday, 30 April *Importance:* High

Dear Jason and Practitioner Sub Team members,

Per the message below, please note that any comments from your review of the attached questions are due COB today, 30 April.

Best regards,

Mary, Ariel, Berry, and Julie

*From: *Gnso-rpm-practitioner <gnso-rpm-practitioner-bounces@icann.org <mailto:gnso-rpm-practitioner-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org <mailto:julie.hedlund@icann.org>> *Date: *Wednesday, April 25, 2018 at 1:56 PM *To: *"gnso-rpm-practitioner@icann.org <mailto:gnso-rpm-practitioner@icann.org>" <gnso-rpm-practitioner@icann.org <mailto:gnso-rpm-practitioner@icann.org>> *Subject: *[Gnso-rpm-practitioner] FOR REVIEW: Final Draft Questions for Practitioners -- Final due Monday, 30 April

Dear Jason and Practitioner Sub Team members,

Per the notes below from today’s RPM WG meeting, the Practitioners Sub Team is requested to review the attached final draft of the questions for practitioners.  This redlined version includes the changes received since last week’s RPM WG call from Scott Austin, Brian Beckham, George Kirikos, Greg Shatan, and David McAuley as of 24 April, which was the deadline for comments.

Also included for your review are new questions received from Paul Keating on 25 April. These new questions are included at the end of the “Other” section on page 8.

In your review of the revised questions, please indicate whether there are revisions with which you do not agree, and whether you have comments or edits to suggest.  As noted above, the Sub Team is tasked with agreeing to a final version of the questions by COB on Monday, 30 April, that staff will then turn into a survey to be provided to the list of practitioners previously agreed to by the Sub Team.

Please let staff know if you have any questions or need assistance.

Best,

Mary, Ariel, Berry, and Julie

*From: *gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org <mailto:julie.hedlund@icann.org>> *Date: *Wednesday, April 25, 2018 at 1:08 PM *To: *"gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> *Subject: *[gnso-rpm-wg] Actions & Notes: RPM PDP WG 25 April 2018

Dear All,

Please see below the action items and brief notes captured by staff from the Working Group call held on 25 April 2018 (1200 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 transcript or recording./  The recording, transcript, Adobe Connect chat, and attendance records are posted on the wiki.

The referenced document is attached.

Best Regards,

Julie

Julie Hedlund, Policy Director

*Action Items:*

**

1. _Questions for URS Practitioners_:

1. The Sub Team will finalize the questions by Monday, 30 April. 2. Staff will create a survey and send to the Practitioners.

2. _Questions for Providers_:

1. Staff will close the document for review by Friday, 27 April and send it to the Sub Team for a final review. 2. The Sub Team will complete a review of the questions by COB Monday, 30 April. 3. Staff will send the questions to the Providers.

*Notes:*

1. Questions for URS Practitioners:

-- Question 3: Edit from George re: Question three – Reword as two separate questions – filing and response fees.

-- The Sub Team will finalize the questions by Monday, 30 April.

2. Questions for URS Providers:

-- Responses from most Providers that they can respond in 30 days for most questions, and 45-60 days for questions that require a review of decisions.

-- Close the document for review by this Friday, 27 April and then send to the Providers.

Review of the Questions:

Communications:

Question 2 – changes accepted.

Question 5 – new question b captures the concern from Brian Beckham, and c addresses George’s concern.

Question 6 – changes accepted.

Question 7 – changes accepted.

Complaints:

Question 4 – Correct the grammar; providers may need to consult with examiners. Question stays as amended. It can stay in and that we understand the limitations around it.

Notice of Complaint and Locking of Domain

Question 5: This has been moved to another section, question 2 in Communications: Rule 4(c): "The electronic copy of the Notice of Complaint may be provided via email or an emailed link to an online platform requiring users to create an account." It can be deleted here.  George and Brian have accepted the edits.

The Response:

Question 1: Providers plan to look at decisions and consult with their examiners and get back to us in 60 days.  Leave the question in.

Question 4: Providers plan to look at decisions and consult with their examiners and get back to us in 60 days.  Leave the question in.

Question 11: Change to: “Have you received feedback that the Response period is inadequate?”

Question 14: Providers plan to look at decisions and consult with their examiners and get back to us in 60 days. Leave the question in.

Question 15: DELETE.  Concerned about the definition of “domain investors”.  It will be quite difficult if not impossible to get this information from providers. Doesn’t seem much utility in the answers.  Also may be able to get some of this information from determination data being gathered by Rebecca.

Examiner:

Question 12b: No case of an abusive complaint – no entry in the abuse case database – so is this question still necessary?  Leave it in because we want to know if they have a policy.  Revise to include the URDP concept of RDNH.  Rewrite to ask whether the provider has a policy of allowing someone to be an examiner if they also represent complainants.

Question 12c: is suggesting that part c of the question isn’t needed since we already have responses from the providers.  But there is a difference between how many examiners are on the roster and how many are actually deciding decisions.  Edit to make this a more targeted question regarding the size of the examiner pool, whether random assignment is used, etc. by COB 25 April.

Question 13: Providers would not know the status of their examiners.  Examiners may not be willing or able to say either.  Also seems to be suggesting that you can’t represent both respondents and complainants.  Not sure what is the point of the question.  ACTION: Rephrase to focus on panel selection policy to encourage diversity in trademark practice.  Suggestion: “What steps, if any, do you take to ensure that your Examiners have a diversity of relevant experience, e.g. have experience representing respondents as well as complainants?"

Language: Question 4: Providers plan to look at decisions and consult with their examiners and get back to us in 60 days.  Leave the question in.

In Person Hearings: DELETE. Question doesn’t make sense.

Default:

Question 1: Seems to ask providers how they do something for a procedure over which they have no control.  ACTION: Take it back to the Sub Team to consider deleting.

Question 2: DELETE. We already have this information from the case review for both within 6 months and after 6 months.

Question 3: Providers plan to look at decisions and consult with their examiners and get back to us in 60 days.  Leave the question in

Examiner Determination:

Question 3: Providers plan to look at decisions and consult with their examiners and get back to us in 60 days.  Leave the question in, but include Brian’s reformulation: “Noting URS Rules 13(a) that Examiners may ‘make a Determination …in accordance with …any rules and principles of law that it deems applicable.’ Are you aware whether any case that the Examiner has invoked this rule?”

Question 8: Possibly duplicative. ACTION: Take it back to the Sub Team to consider deleting, or rephrase it.

Question 10: DELETE.  Provider can’t know what the examiner assigns to others in their office.  But could rephrase if they are aware or provide any suggested language or clerical help to examiners. George will send revised language.

Remedies:

Question 4: This is seeking an opinion; keep it in.

Question 5: DELETE.  Keep it for the WG.

Question 6: Leave it in, but add: “If yes, what action did you take on receiving the notice or to resolve the query?”

Effect of Court Proceeding.

Question 1: Ask David McAuley to send revised language.  Done: “To your knowledge, have there been instances of legal proceedings relating to URS proceedings and, if so, what effect did such instance(s) have?”

Others:

Question 3: Leave it in, and ask, “If so can you provide the type of information or data requested..”  Also, combine with Question 4.

Question 4: See above.  Combine with question 3.

Question 6: Policy question.  Unless others have suggestions for rewriting it, the question will be deleted.

Question 7: DELETE.  Determined to be out of scope.  Or, we could ask if Providers support sanctions against abusers of the process whether Complainant or Respondent. Also, could ask all Providers if they clearly disclose potential conflicts?  Or could ask FORUM specifically.  Hold off decision on this call and discuss further, although leave it out of the list of questions for now.

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