[bc-gnso] DRAFT BC Public Comments on DAGv4

Mon Jul 19 19:25:43 UTC 2010

Jon,

Thanks for clarifying.  If this is the case, then it looks like ICANN
kept the high burden of proof for trademark owners on the one hand and
ditched other parts of the deal, including that it be in exchange for a
rapid (hence the "R" in the name URS) process.

As a practical matter, I don't see how any trademark owner will be able
to prove anything more than they already prove in filing a UDRP case.
For example, in most cases, you'll know the infringer took your domain
name, which is identical or confusingly similar to your trademark.  You
may or may not have screen shots of ads on their infringing webpages.
You may or may not have accurate WHOIS information about the infringer.
You may or may not have evidence that the infringer stole other third
party trademarks.  

There is no certainty for trademark owners about what is meant by "clear
and convincing evidence" and how to meet that standard over the evidence
we typically submit in the UDRP process.  Obviously, there's no way to
know the subjective intent of the infringer without full blown
litigation and discovery.  At a minimum, ICANN needs to give more
guidance on this issue.

This burden of evidence standard is just one more reason why brand
owners will avoid using the URS.    

Sarah

Sarah B. Deutsch 
Vice President & Associate General Counsel 
Verizon Communications 
Phone: 703-351-3044 
Fax: 703-351-3670 

________________________________

From: Jon Nevett [mailto:jon at nevett.net] 
Sent: Monday, July 19, 2010 3:10 PM
To: Deutsch, Sarah B
Cc: Zahid Jamil; Phil Corwin; michaelc at traveler.com; mike at haven2.com;
jb7454 at att.com; randruff at rnapartners.com; ffelman at markmonitor.com;
bc-GNSO at icann.org
Subject: Re: Re[2]: [bc-gnso] DRAFT BC Public Comments on DAGv4

Sarah:

Sorry if I was unclear.  The intent of the IRT was to have the same
legal standard for the UDRP and URS (the same elements -- registration
with bad fait intent, etc.), but having a higher burden of proof (clear
and convincing vs. preponderance.

Here are the relevant quotes from the IRT report --
http://www.icann.org/en/announcements/announcement-4-29may09-en.htm

"The Final Evaluation analysis involves consideration of three basic
issues, similar to the standards for a UDRP decision, but requires a
much higher burden of proof." (emphasis added)

"If the Examiner finds that all of these elements are satisfied by clear
and convincing evidence and that there is no genuine contestable issue,
then the Examiner shall issue a decision in favor of the Complainant."
(emphasis added)

http://www.icann.org/en/announcements/announcement-4-29may09-en.htm

These positions had a unanimous consensus of the IRT.  Not sure the
relevance of my status on the IRT, but for the record I was told by the
IPC that I wasn't representing registrars on the IRT.  If you had heard
the crap that I got from my former registrar colleagues, you would
understand that I definitely wasn't representing them on the IRT :-).

As I don't believe that the BC complained about this burden of proof in
the past on the IRT, on the STI, or any public comments thereafter, I
don't think that we should raise it here.  If we think that the URS was
changed in a way that is problematic, let's focus on those changes
instead of trying to go back on issues that had complete consensus and
haven't changed at all.

Thanks!

jon

On Jul 19, 2010, at 2:39 PM, Deutsch, Sarah B wrote:

	Jon,

	Thank you for your many constructive changes.  I want to respond
to one suggested edit you made below:

	*I deleted the clear and convincing evidence issue with regard
to the URS.  As a member of the IRT, I can say that it clearly was our
intent for the URS to have a higher burden of proof  than the UDRP --
the legal standard is exactly the same.  We wanted the URS to be for
"slam dunk" cases.  The URS was to be a less expensive alternative to
the UDRP cognizant of the fact that 70% of UDRPs go unanswered.  

	1.  I don't disagree that the URS, like the UDRP, should be used
for slam dunk cases.  I'm glad you confirmed that the legal standard was
supposed to be exactly the same.  It's my understanding that proof under
the UDRP is in fact based on a preponderance of the evidence standard,
not a clear and convincing evidence standard.  See below.  

	Section 1.3.1.1 - Burden of Proof (How much proof is necessary?)

	In the administrative proceeding, the Complainant must prove
that each of the three elements contained in Section 4(a) of the Policy
are present.

	Comment:  In general, the Panels recognize a preponderance of
the evidence standard.  Preponderance of the evidence means that a fact
is proved when it is more likely than not that the fact is true.

	2. Rather than delete this sentence in its entirety, I would
recommend inserting back in the following single sentence: "The BC
recommends that while the URS is intended to deal with "slam dunk,"
cases, we ask ICANN to clarify that the legal standard remain the
exactly the same as that found in the UDRP.  ICANN should clarify that
while proof of bad faith must be clear, the evidence generally can be
established by a proponderance of evidence standard."

	3.  I know that you were a valuable member of the IRT and at
that time you were representing registrars' views.  Other IRT members
point out to me one additional point.  The "slam dunk" aspect of the URS
was in exchange for a quick and cheap process.  No one knows how cheap
this will wind up being, but there is no question that the "quick" part
of this trade off has disappeared.  Many IRT participants confirm that
the DAG4 doesn't represent anything akin to the deal they thought they
had struck.  

	Sarah

	Sarah B. Deutsch 
	Vice President & Associate General Counsel 
	Verizon Communications 
	Phone: 703-351-3044 
	Fax: 703-351-3670 

________________________________

	From: Jon Nevett [mailto:jon at nevett.net] 
	Sent: Sunday, July 18, 2010 9:40 PM
	To: Zahid Jamil
	Cc: Deutsch, Sarah B; 'Phil Corwin'; michaelc at traveler.com;
mike at haven2.com; jb7454 at att.com; randruff at rnapartners.com;
ffelman at markmonitor.com; bc-GNSO at icann.org
	Subject: Re: Re[2]: [bc-gnso] DRAFT BC Public Comments on DAGv4

	Folks: 

	Attached is a suggested redraft to bridge the gap.  I personally
don't agree with some of the arguments I left in the attached, but I
tried to keep the longstanding BC positions while toning down the
anti-TLD language.  I also deleted a couple of the arguments that were
objected to in some of the notes I reviewed.

	Here are some of the highlights:

	*I deleted the GPML section.

	*I deleted the clear and convincing evidence issue with regard
to the URS.  As a member of the IRT, I can say that it clearly was our
intent for the URS to have a higher burden of proof  than the UDRP --
the legal standard is exactly the same.  We wanted the URS to be for
"slam dunk" cases.  The URS was to be a less expensive alternative to
the UDRP cognizant of the fact that 70% of UDRPs go unanswered.  Has
this issue even been raised before by the BC?

	*Based on Sarah's helpful e-mail, I left alone the complaint
about transferring names after a successful URS as that has been an
issue that Zahid, Mike and others in the BC have argued consistently.  I
do note, however, that transfer was not in the IRT recommendation and
the STI agreed to add a year to the registration at the request of the
complainant as a compromise.  

	*Again based on Sarah's e-mail, I left the PDDRP section pretty
much alone except for an argument about registries warehousing names,
but not using them, as that argument didn't make much sense to me.
That's exactly the function of a registry to warehouse names until they
are sold by registrars.  If a registry "reserves" a name and it is not
in use at all, the mark holder should be thrilled that it can't be
registered by a squatter.

	*I also deleted the paragraph about the Director of Compliance.
I don't think it appropriate to comment on those kinds of personnel
matters. 

	*I didn't touch the arguments related to community and 13 points
(though I personally favor 14 points to avoid gaming -- sorry Ron), as
that seems to be longstanding BC position.

	*I didn't do much on the Market Differentiation section either
other than soften some of the language.

	I have no idea if my attempt will get consensus or not, but I
thought it worthwhile to offer alternative language and I tried hard to
find a balance.  

	Thanks.

	Jon

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