REMINDER: Proposed agenda for RPM Working Group call on 30 May 2018 at 1200 UTC
Dear RPM PDP WG members, Per the WG Co-Chairs, here is the proposed agenda for the Working Group call Wednesday, 30 May 2018, scheduled for 1200 UTC – note the usual earlier time for the last meeting of the month. WG members are encouraged to review the data at the link below to prepare for the discussion on agenda item 2. Draft Agenda, 30 May 2018, 1200 UTC: Review agenda/SOIs; Discuss what quantitative data from Rebecca’s research can be used to address Documents Sub Team questions about the 250 “response received” and 58 “respondent prevailed” cases, See: https://www.dropbox.com/s/1dodxsqkauqp1vr/URS%20Case%20Review%20-%20Final.xl...; ICANN62 Planning; AOB Best, Mary, Ariel, Berry, and Julie
Dear RPM PDP WG members, Per the WG Co-Chairs, here is the proposed agenda for the Working Group call Wednesday, 30 May 2018, scheduled for 1200 UTC – note the usual earlier time for the last meeting of the month. WG members are encouraged to review the data at the link below to prepare for the discussion on agenda item 2. Draft Agenda, 30 May 2018, 1200 UTC: Review agenda/SOIs; Discuss what quantitative data from Rebecca’s research can be used to address Documents Sub Team questions about the 250 “response received” and 58 “respondent prevailed” cases, See: https://www.dropbox.com/s/1dodxsqkauqp1vr/URS%20Case%20Review%20-%20Final.xl...; ICANN62 Planning; AOB Best, Mary, Ariel, Berry, and Julie
Thanks Mary, Ariel, Berry, and Julie, With apologies, I am unlikely to be able to attend Wednesday’s call. In advance of this week’s call, and in particular given that there was significant discussion some months back on whether and to what extent the WG and/or Subteams should evaluate past decisions, it may be worth recalling that the Summary Report from the URS Documents Subteam (shared with the full WG) stated that “overall the URS appears to be functioning as intended” and that the Subteam “wishes to consult with the full Working Group on the advisability of and need to proceed with this [250/58] analysis.” At the same time, the Documents Subteam suggested a possible policy recommendation that the WG consider the utility in an “examiner’s guide” to outline the core elements that should normally be included in URS determinations (e.g., the mark, domain name, website use, parties’ names, defenses, etc.). Therefore a first question might be whether Prof Tushnet’s research is of assistance to the WG in considering additional core elements (if any) that the WG may wish to recommend be included as a template “examiner’s guide” for URS determinations. Aside from these more threshold questions, time permitting, it may be useful to better understand the placement e.g., of “ibm” in the “TM is arbitrary/suggestive for category” column (Z) or “bbva” in the “TM is descriptive for category” column (AA). Similarly, for columns (AE, AD, and AF) capturing “likely confusion” it is not clear if this is meant to cover the URS’ confusingly similar standard (it seems to be), or a more traditional trademark likelihood of confusion assessment (which is usually conceptually captured under the legitimate interests and bad faith criteria). I hope this is useful for tomorrow’s call. Brian From: gnso-rpm-wg [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Julie Hedlund Sent: Tuesday, May 29, 2018 3:51 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] REMINDER: Proposed agenda for RPM Working Group call on 30 May 2018 at 1200 UTC Dear RPM PDP WG members, Per the WG Co-Chairs, here is the proposed agenda for the Working Group call Wednesday, 30 May 2018, scheduled for 1200 UTC – note the usual earlier time for the last meeting of the month. WG members are encouraged to review the data at the link below to prepare for the discussion on agenda item 2. Draft Agenda, 30 May 2018, 1200 UTC: 1. Review agenda/SOIs; 2. Discuss what quantitative data from Rebecca’s research can be used to address Documents Sub Team questions about the 250 “response received” and 58 “respondent prevailed” cases, See: https://www.dropbox.com/s/1dodxsqkauqp1vr/URS%20Case%20Review%20-%20Final.xl...; 3. ICANN62 Planning; 4. AOB Best, Mary, Ariel, Berry, and Julie World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
Thanks, Brian. As I noted on the call introducing the research, I don't think a few words from a subteam should be treated as settling much of anything, especially without reviewing the information we have available about what's going on, which is what I hope we'll do on the call. My own takeaway from the research is that the URS is generally functioning well for easy cases, but there is a serious issue of lack of reasoning and thus lack of information in a significant subset of cases. Following up on a question asked last time, Alex separated the cases by provider and found that examiners only copied and pasted in ADR Forum. All ADNDRC and MFSD cases had at least some explanation provided. On the categorization of trademarks, a note on the reasons for some of these categories: I wanted to understand whether URS cases had the same pattern as the TMCH alert system apparently does, with terms like "hotel" being the basis for URS cases, or whether there were issues with trademark owners with rights that were limited to particular areas (e.g., Apple for computers and not farms, Delta for pick your favorite Delta business, etc.) asserting claims in the URS beyond the scope of their marks. The very good news is that, with the arguable exception of Richard Branson's claims, that doesn't seem to be happening in any systematic way. As for the specific IBM/BBVA question Brian poses, my coders put IBM in "suggestive" because they are young; I'd have put that in descriptive. BBVA is an acronym for Banco Bilbao Vizcaya Argentaria (combination of generic/geographic terms) so they followed the general rule about acronyms for such terms. The columns to which Brian refers (AE, AD, and AF) are designed to track the URS standard, not the full trademark infringement test. 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, May 29, 2018 12:28 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] FW: REMINDER: Proposed agenda for RPM Working Group call on 30 May 2018 at 1200 UTC Thanks Mary, Ariel, Berry, and Julie, With apologies, I am unlikely to be able to attend Wednesday’s call. In advance of this week’s call, and in particular given that there was significant discussion some months back on whether and to what extent the WG and/or Subteams should evaluate past decisions, it may be worth recalling that the Summary Report from the URS Documents Subteam (shared with the full WG) stated that “overall the URS appears to be functioning as intended” and that the Subteam “wishes to consult with the full Working Group on the advisability of and need to proceed with this [250/58] analysis.” At the same time, the Documents Subteam suggested a possible policy recommendation that the WG consider the utility in an “examiner’s guide” to outline the core elements that should normally be included in URS determinations (e.g., the mark, domain name, website use, parties’ names, defenses, etc.). Therefore a first question might be whether Prof Tushnet’s research is of assistance to the WG in considering additional core elements (if any) that the WG may wish to recommend be included as a template “examiner’s guide” for URS determinations. Aside from these more threshold questions, time permitting, it may be useful to better understand the placement e.g., of “ibm” in the “TM is arbitrary/suggestive for category” column (Z) or “bbva” in the “TM is descriptive for category” column (AA). Similarly, for columns (AE, AD, and AF) capturing “likely confusion” it is not clear if this is meant to cover the URS’ confusingly similar standard (it seems to be), or a more traditional trademark likelihood of confusion assessment (which is usually conceptually captured under the legitimate interests and bad faith criteria). I hope this is useful for tomorrow’s call. Brian From: gnso-rpm-wg [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Julie Hedlund Sent: Tuesday, May 29, 2018 3:51 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] REMINDER: Proposed agenda for RPM Working Group call on 30 May 2018 at 1200 UTC Dear RPM PDP WG members, Per the WG Co-Chairs, here is the proposed agenda for the Working Group call Wednesday, 30 May 2018, scheduled for 1200 UTC – note the usual earlier time for the last meeting of the month. WG members are encouraged to review the data at the link below to prepare for the discussion on agenda item 2. Draft Agenda, 30 May 2018, 1200 UTC: 1. Review agenda/SOIs; 2. Discuss what quantitative data from Rebecca’s research can be used to address Documents Sub Team questions about the 250 “response received” and 58 “respondent prevailed” cases, See: https://www.dropbox.com/s/1dodxsqkauqp1vr/URS%20Case%20Review%20-%20Final.xl...; 3. ICANN62 Planning; 4. AOB Best, Mary, Ariel, Berry, and Julie World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
Hi everyone, I apologize for missing the call. I wanted to follow up on this statement, which I've trimmed from Prof. Tushnet's email, to reduce the message length.
My own takeaway from the research is that the URS is generally functioning well for easy cases, but there is a serious issue of lack of reasoning and thus lack of information in a significant subset of cases. Following up on a question asked last time, Alex separated the cases by provider and found that examiners only copied and pasted in ADR Forum. All ADNDRC and MFSD cases had at least some explanation provided.
I hope that our STI/IRT members and maybe even staff, can pull more from their collective brains on this, but I here is my recollection of how the reasoning question went down (full disclosure: I was with Forum at the time and substantially wrote their RFI to be a URS provider). --STI created a "tapestry" of RPMs and created a "light/fast" URS that was for such straight-forward cases that the complaint and decision should just be tick-boxes. --community outrage at exclusive use of tick boxes so, --IRT said it must NOT be tick box-only. The Examiner must have a chance to make remarks. There was no community requirement that there be reasoning, merely the option. --Indeed, in light of the anticipated low fees, it was anticipated that the Examiners would do a quick review and if the complainant didn't quickly win on its face, they should have the option to go back and file a UDRP for a deeper look. I request correction if I'm wrong, but, if I'm right, then we need to back up and determine: 1. What's the harm in the level of reasoning in URS decisions currently (recall this is always our threshold question - what is broken)? 2. Would enforcing more "reasoning" solve the problem? 3. Is the WG prepared to re-assess the fees charged to parties if a more UDRP-level of work will be required? I have no opinion on the answers to the questions, but just wanted to remind everyone that a pretty bright, diverse group actually spent a lot of time debating tick-box vs reasoning and ended up deciding reasoning should be optional, so we shouldn't *assume* that "the more reasoning, the better." Best, Kristine
Thanks for this, Kristine. As to your third question, does ADR Forum charge less than the other providers for providing less reasoning? Relatedly, I didn't understand my suggestion to be asking for "UDRP level work," especially given the mandate of the URS to do easy cases. It seems to me that if the case is not easy, then the examiner can say that the record doesn't allow resolution of the URS elements in the complainant's favor. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Dorrain, Kristine <dorraink@amazon.com> Sent: Monday, June 4, 2018 4:47:08 PM To: Tushnet, Rebecca; BECKHAM, Brian; gnso-rpm-wg@icann.org Subject: RE: REMINDER: Proposed agenda for RPM Working Group call on 30 May 2018 at 1200 UTC Hi everyone, I apologize for missing the call. I wanted to follow up on this statement, which I’ve trimmed from Prof. Tushnet’s email, to reduce the message length.
My own takeaway from the research is that the URS is generally functioning well for easy cases, but there is a serious issue of lack of reasoning and thus lack of information in a significant subset of cases. Following up on a question asked last time, Alex separated the cases by provider and found that examiners only copied and pasted in ADR Forum. All ADNDRC and MFSD cases had at least some explanation provided.
I hope that our STI/IRT members and maybe even staff, can pull more from their collective brains on this, but I here is my recollection of how the reasoning question went down (full disclosure: I was with Forum at the time and substantially wrote their RFI to be a URS provider). --STI created a “tapestry” of RPMs and created a “light/fast” URS that was for such straight-forward cases that the complaint and decision should just be tick-boxes. --community outrage at exclusive use of tick boxes so, --IRT said it must NOT be tick box-only. The Examiner must have a chance to make remarks. There was no community requirement that there be reasoning, merely the option. --Indeed, in light of the anticipated low fees, it was anticipated that the Examiners would do a quick review and if the complainant didn’t quickly win on its face, they should have the option to go back and file a UDRP for a deeper look. I request correction if I’m wrong, but, if I’m right, then we need to back up and determine: 1. What’s the harm in the level of reasoning in URS decisions currently (recall this is always our threshold question – what is broken)? 2. Would enforcing more “reasoning” solve the problem? 3. Is the WG prepared to re-assess the fees charged to parties if a more UDRP-level of work will be required? I have no opinion on the answers to the questions, but just wanted to remind everyone that a pretty bright, diverse group actually spent a lot of time debating tick-box vs reasoning and ended up deciding reasoning should be optional, so we shouldn’t *assume* that “the more reasoning, the better.” Best, Kristine
Hi Rebecca, I no longer work for Forum, so I'm unfamiliar with their current pricing in relation to other providers, but at the time, that was the rationale for why the bidding providers should be able to charge less. Again, not opining substantively, just raising some historical context. Best, Kristine From: Tushnet, Rebecca [mailto:rtushnet@law.harvard.edu] Sent: Monday, June 04, 2018 2:06 PM To: Dorrain, Kristine <dorraink@amazon.com>; BECKHAM, Brian <brian.beckham@wipo.int>; gnso-rpm-wg@icann.org Subject: Re: REMINDER: Proposed agenda for RPM Working Group call on 30 May 2018 at 1200 UTC Thanks for this, Kristine. As to your third question, does ADR Forum charge less than the other providers for providing less reasoning? Relatedly, I didn't understand my suggestion to be asking for "UDRP level work," especially given the mandate of the URS to do easy cases. It seems to me that if the case is not easy, then the examiner can say that the record doesn't allow resolution of the URS elements in the complainant's favor. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Dorrain, Kristine <dorraink@amazon.com<mailto:dorraink@amazon.com>> Sent: Monday, June 4, 2018 4:47:08 PM To: Tushnet, Rebecca; BECKHAM, Brian; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: REMINDER: Proposed agenda for RPM Working Group call on 30 May 2018 at 1200 UTC Hi everyone, I apologize for missing the call. I wanted to follow up on this statement, which I've trimmed from Prof. Tushnet's email, to reduce the message length.
My own takeaway from the research is that the URS is generally functioning well for easy cases, but there is a serious issue of lack of reasoning and thus lack of information in a significant subset of cases. Following up on a question asked last time, Alex separated the cases by provider and found that examiners only copied and pasted in ADR Forum. All ADNDRC and MFSD cases had at least some explanation provided.
I hope that our STI/IRT members and maybe even staff, can pull more from their collective brains on this, but I here is my recollection of how the reasoning question went down (full disclosure: I was with Forum at the time and substantially wrote their RFI to be a URS provider). --STI created a "tapestry" of RPMs and created a "light/fast" URS that was for such straight-forward cases that the complaint and decision should just be tick-boxes. --community outrage at exclusive use of tick boxes so, --IRT said it must NOT be tick box-only. The Examiner must have a chance to make remarks. There was no community requirement that there be reasoning, merely the option. --Indeed, in light of the anticipated low fees, it was anticipated that the Examiners would do a quick review and if the complainant didn't quickly win on its face, they should have the option to go back and file a UDRP for a deeper look. I request correction if I'm wrong, but, if I'm right, then we need to back up and determine: 1. What's the harm in the level of reasoning in URS decisions currently (recall this is always our threshold question - what is broken)? 2. Would enforcing more "reasoning" solve the problem? 3. Is the WG prepared to re-assess the fees charged to parties if a more UDRP-level of work will be required? I have no opinion on the answers to the questions, but just wanted to remind everyone that a pretty bright, diverse group actually spent a lot of time debating tick-box vs reasoning and ended up deciding reasoning should be optional, so we shouldn't *assume* that "the more reasoning, the better." Best, Kristine
participants (4)
-
BECKHAM, Brian -
Dorrain, Kristine -
Julie Hedlund -
Tushnet, Rebecca