[Gnso-rpm-practitioner] REVISED FOR REVIEW re: Action & Notes: RPM Sub Team for URS Practitioners call on Thursday, 14 June 2018 17:00 UTC

Thu Jun 21 14:21:58 UTC 2018

Dear all,

Seeing no further comments, staff will send the slides and survey results out to the WG today noting that they are for reference for the presentation to be provided by the Sub Team in Panama.

Thanks so much for all your help!

Best,

Julie

From: Gnso-rpm-practitioner <gnso-rpm-practitioner-bounces at icann.org> on behalf of Julie Hedlund <julie.hedlund at icann.org>
Date: Wednesday, June 20, 2018 at 11:33 AM
To: "gnso-rpm-practitioner at icann.org" <gnso-rpm-practitioner at icann.org>
Subject: [Gnso-rpm-practitioner] REVISED FOR REVIEW re: Action & Notes: RPM Sub Team for URS Practitioners call on Thursday, 14 June 2018 17:00 UTC

Dear all,

Please see the attached revised slides for review.  If there are no further changes staff will send these and the survey results (also attached) to the WG for reference by COB today.  

Note: On today’s WG call at 17:00 the Sub Team can provide the brief update that the survey results and presentations slides will be send to the WG today, and that the presentation is scheduled to take place during the first RPM PDP WG session at ICANN62 on Wednesday, 27 June from 10:30 to Noon local time (UTC-5).

Best, 

Mary, Ariel, Berry, and Julie

From: "Nahitchevansky, Georges" <ghn at kilpatricktownsend.com>
Date: Wednesday, June 20, 2018 at 12:46 AM
To: Kathy Kleiman <kathy at kathykleiman.com>, "Corwin, Philip via Gnso-rpm-practitioner" <gnso-rpm-practitioner at icann.org>, Julie Hedlund <julie.hedlund at icann.org>
Subject: [Ext] Re: [Gnso-rpm-practitioner] REMINDER FOR REVIEW re: Action & Notes: RPM Sub Team for URS Practitioners call on Thursday, 14 June 2018 17:00 UTC

Kathy

Thanks for the comments.  I still think that two thirds or more of the folks flagged this as an issue.  So while some may have thought the URS was satisfactory in solving their immediate problem, many thought the relief was inadequate.  Consequently, I don't think at this stage we should be picking what relief is recommended, but we should be saying this is an issue and should be addressed, and here are some suggestions how.

From: kathy at kathykleiman.com
Sent: June 19, 2018 10:44 PM
To: gnso-rpm-practitioner at icann.org; julie.hedlund at icann.org
Subject: Re: [Gnso-rpm-practitioner] REMINDER FOR REVIEW re: Action & Notes: RPM Sub Team for URS Practitioners call on Thursday, 14 June 2018 17:00 UTC

Hi Julie, Georges, Jason and All,

If the promised relief were actually provided, I wonder whether people would be more satisfied? (p.7)  I think implementation, as the slides note, will be key. 

But I'm not sure that the slides say that relief is not adequate and something better is needed. (p.10)  One-third of practitioners said it was adequate (agree and strongly agree). That would include both complainant and respondent practitioners (since we only have two respondent attorneys).  So it seems that the responses are mixed on this one, and the slide summary seems right to me. 

Circling back to implementation - if parties actually got the remedy they were promised, how much more satisfied would they be?

Best, Kathy

On 6/19/2018 6:31 PM, Nahitchevansky, Georges wrote:

Julie:

Thank you for this.  Overall it looks good.  My one comment is on the award.  we suggest a negotiated transfer, but comments also suggested an out and out transfer to a winning party as opposed to suspension, so this should be included as one of the possible options. I think the point is that the responses suggest that the relief is not adequate and something better is needed.  

Thanks,

Georges

From: julie.hedlund at icann.org
Sent: June 18, 2018 10:12 AM
To: gnso-rpm-practitioner at icann.org
Subject: [Gnso-rpm-practitioner] REMINDER FOR REVIEW re: Action & Notes: RPM Sub Team for URS Practitioners call on Thursday, 14 June 2018 17:00 UTC

Dear all,

This is a reminder of the actions below.

Best,

Julie

From: Gnso-rpm-practitioner <gnso-rpm-practitioner-bounces at icann.org> on behalf of Julie Hedlund <julie.hedlund at icann.org>
Date: Thursday, June 14, 2018 at 7:18 PM
To: "gnso-rpm-practitioner at icann.org" <gnso-rpm-practitioner at icann.org>
Subject: [Gnso-rpm-practitioner] FOR REVIEW re: Action & Notes: RPM Sub Team for URS Practitioners call on Thursday, 14 June 2018 17:00 UTC

Dear all,

Per the actions items below from today’s meeting, please see the attached documents for review:

Survey results converted to a Word and PDF document; 
PowerPoint Presentation and PDF including current status, next steps, explanation of the list of practitioners, number of responses, and issues identified with possible actions (including bullet points based on today’s discussion). 

Please send your comments ASAP but no later than COB on Tuesday, 19 June.  Staff will incorporate the changes and send the documents in PDF to the WG to review on 20 June.

Thank you very much for your help!

Best,

Mary, Ariel, Berry, and Julie

From: Gnso-rpm-practitioner <gnso-rpm-practitioner-bounces at icann.org> on behalf of Julie Hedlund <julie.hedlund at icann.org>
Date: Thursday, June 14, 2018 at 2:52 PM
To: "gnso-rpm-practitioner at icann.org" <gnso-rpm-practitioner at icann.org>
Subject: [Gnso-rpm-practitioner] Action & Notes: RPM Sub Team for URS Practitioners call on Thursday, 14 June 2018 17:00 UTC

Dear all,

Below are the action items and notes staff captured from the RPM Sub Team for URS Practitioners meeting today (14 June 2018).  The notes from the call are posted to the Sub Team wiki space, together with the call recording and attendance records.  See: https://community.icann.org/display/RARPMRIAGPWG/2018-06-14+Sub+Team+for+URS+Practitioners [community.icann.org]. 

Best Regards,

Julie

Julie Hedlund, Policy Director

ACTION ITEMS

- Staff to convert the survey results into a word/PDF doc and insert sub headings by Today (Thu, 14 June)

- Staff to identify issues raised and responses that may result in actions, and circulate the information in the PowerPoint format by Today (Thu, 14 June). The possible issues include relief awarded, issues with relief (e.g. Chinese registrar) and length of submissions

- Staff to send out the survey results and staff document on Wednesday, 20 June and ask WG members to review them before they arrive in Panama.

- Sub Team to provide comment/input on the staff document via email by Tuesday, 19 June

- Sub Team to focus on the significant responses and key areas highlighted in the staff document

NOTES

Overview of the Practitioners Survey Results 

- Survey is broken into several sections 

- 38 practitioners on the distribution list, got 14 responses

- Survey was open for three-week period; INTA/GDD Summit may have hindered the response rates

- Two slides per question for two different views (i.e., chart, percentage) 

- Results are displayed based on how SurveyMonkey captured them

- Were there any practitioners who tried to file later but were turned away? 

- Survey is still open, other practitioners may still file if they wish. 

SECTION 1: Background & Perspectives

Q1. In how many URS proceedings have you been involved as Complainant or its representative?

- Will a 13 out of 38 responses be challenged by the usual suspects as not statistically significant and challenged on that basis? However, the survey should be given credibility because the people who responded provided thoughtful comments. 

- Some practitioners filed 10 or more complaints, and you get 100 total cases out of 800+ cases. The data is not insignificant. 

- Need to know who these parties are – it could be the brand protection firms or large law firms that filed the cases. Assume that a lot of brand protection firms have responded here. 

Q2. In how many URS proceedings have you been involved as Respondent or its representative?

- Isn't the response to 2 and 4 inconsistent?

- Respondents may have mistakenly answered these two questions or overlooked 

Q3. Overall, leaving aside the result of the proceeding, how was your experience with the process of a URS proceeding?

- 85% - positive & extremely positive 

Q4: With respect to question 3 above, please indicate if you are

- No comment

Q5: With respect to question 3 above, please indicate what URS provider you used:

- FORUM (Renee) helped promote / circulate the survey, hence many respondents are associated with NAF 

SECTION 2: Procedural

Q1: When involved as Complainant or its representative in a URS proceeding, were there any difficulties with delivering notice of the proceeding to the Respondent?

- Assume with GDPR that will increase as a problem

- Unless of course the registrant's real name is DOE

- MFSD accepts Doe Complaints in light of GDPR, based on their responses 

Q2: When involved as Respondent or its representative in a URS proceeding did the Respondent experience any issues with receiving notice of the proceeding, not including a delay in the Respondent sending the notice to its representative?

- Either No or N/A

Q3: Have you filed or been involved in an appeal of a URS decision?

- No comment

Q4: If you answered "yes" to question 3 "Have you filed or been involved in an appeal of a URS decision?", and leaving aside the result of the proceeding, from the choices below how would you characterize your experience with the appeal process after a URS proceeding?

- No comment

Q5: Have you or a party adverse to you in a URS proceeding ever sought de novo review under Paragraph 6.4 of the URS Procedure?

- No comment

Q6: If you answered "yes" to Question 5, and leaving aside the result of the proceeding, from your experience with de novo review under Paragraph 6.4 of the URS Procedure, do you believe this procedure should be retained, modified or removed?

- No comment

Q7: Please provide any comments you wish to add in explanation of any of your answers to questions 3 through 6 above. 

- No comment

SECTION 3: Substantive Issues

Q1: Do you believe that URS dispute resolution providers should provide a resource similar to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions for the URS?

- No comment

Q2: In your URS proceeding(s) do you believe the Decision/Determination provided the reasons upon which the decision was based, as required by Section 13(b) of the URS Rules?

- No comment

Q3: Do you believe that the URS is primarily being used for the types of cases for which it was intended, namely, clear cases of abuse?

- No comment

Q4: Have you encountered any problems with the implementation of the relief awarded following a URS decision?

- No comment

Q5: Do you believe the relief provided by a URS proceeding is adequate?

- Not a surprising response and probably also explains why not a huge a number of cases filed

- Q 22 comments on remedy among most useful responses of the survey

- Procedural problem because registrars should be responding

- The issue on the Chinese registrar is that it is often very hard to get Chinese registrars to implement decisions appropriately

- Do you think language is an issue?

- Not really all language issues. I have used native Chinese speakers and we still run into issues.  The registrars put up a number of what appear road blocks.  Some issues in the UDRP for example, may involve PRC laws re .com registration, so not surprised that there would be implementation issues with URS relief

- Chinese registrars are not implementing the suspension and not obeying the rule. Need to find out what the issues are to resolve the problem. 

Q6: Should there be more guidance provided to educate or instruct practitioners on what is needed to meet the “clear and convincing” burden of proof in a URS proceeding?

- No comment

Q7: Based on your experience as a URS practitioner, is the standard of “clear and convincing evidence” for the burden of proof in a URS proceeding appropriate?

- No comment

Q8: Based on your experience with the URS, should the standard for the burden of proof be modified?

- Highlight the second response and revisit at an appropriate time: Regarding remedies, would like to see an option of a voluntary (negotiated) transfer from a losing respondent to a prevailing complainant before the domain expires. There are negotiated transfers taking place, not sure how it is implemented. 

- It would be interesting to look at several of the suggested remedies to see if they were considered in the history of the promulgation of the URS.

SECTION 4: Practical Issues

Q1: Do you believe that the submission of a declaration and a specimen of current use in commerce should be adequate evidence of use for a URS case?

- Also "a right of first refusal to purchase the domain when it next becomes available." and "an established process for requesting suspension renewals"

- Those were additional remedies raised that I wondered if they were considered in the original discussion of URS remedies when it was created.

- Comment from Berry: within the Docs sub-team, we performed a domain disposition analysis.  In short, Brand Protection companies acquired the domain on behalf of their client (most likely deleted and immediately registered), some cases the brand itself acquired the domain, DPML or Registry Reservations.  Others chose to not renew the name.  And of course there are instances where the domain was registered after it was deleted by a different registrant.  We'll be presenting that snap shot of findings to the larger WG in the near future.

Q2: Do you believe that the submission of an SMD file from the Trademark Clearing House to demonstrate that evidence of use was filed with the TMCH should be adequate proof of use for a URS case?

- No comment

Q3: Do you believe the filing fee for a URS is appropriate?

- No comment

Q4: Do you believe the response fee for a URS is appropriate?

- Lowering the fee would probably impact on the quality of decisions

- If the URS fee is lowered ICANN had better start issuing Pro Bono awards to the panelists

Q5: Do you believe there are adequate means for searching prior URS cases?

- No comment

Q6: Do you believe the existing word limitation for filings in a URS proceeding is appropriate?

- Distributed responses

Q7: Do you believe the existing time frames for submitting filings in a URS proceeding are appropriate?

- Distributed responses 

Q8: Do you believe the existing limitations on the submission of evidence in a URS proceeding are appropriate?

- No comment

Q9. Please provide any comments you wish to add in explanation of any of your answers to questions 1 through 8 above:

- No comment

SECTION 5: Other

Q1: If you chose not to file a URS in a particular matter, what was the reason? Please choose from the following options:

- No comment

Q2: Do you believe that the URS Process as it now exists is an effective rights protection mechanism?

- No comment

Q3: If the URS was available in all gTLDs, would you use it? Why or why not?

- No comment

Q4: Please provide any comments you want to add to explain your answers to questions 1, 2 and 3 above:

- No comment

Q5: Leaving aside the result of the proceeding, have you had an experience with an Examiner having an actual or potential conflict of interest in a URS proceeding?

- No comment

Q6: Leaving aside the result of the proceeding, have you had an experience with an Examiner not being impartial and independent in a URS proceeding?

- No comment

General Comments 

- Good results but with small number of responses 

- Some of the suggestions in response to Q 39 and 43 seem like important procedural changes should not be particularly objectionable but would be easy fixes increasing the word limit to 1K words, allowing exhibits, and accommodations of additional evidence of bad faith

- Nothing jumps out to be overwhelmingly surprising or negative. Exception is that some people are pushing for a stronger process, more like UDRP. Other than those exceptions, it is a good starting point. 

- Folks are satisfied generally, but are concerned about the relief granted. 

- Do we need to present all the data/questions? Or present a selected set as action items. 

- Present this in Panama is wiser, and we can answer questions, instead of sending out the results via emails. Concern is members may over analyze the results. 

- If the respondents have more negative experience, then we may have more responses. If they are overall satisfied with the experience, they may not respond. We would know if there is any serious problem. 

- Agree with Phil, the lack of major negative responses is encouraging, and that the core is working. 

- Should there be a decision now to close the survey so there is no attempt to alter the results once the current result is released? Yes, close the survey now.

- Wed, 27 June 10:30-12:00 is the session to review Practitioner survey responses, kicking off the RPM sessions. 

- Jason would be in Panama, Georges would not, Jay would participate remotely. 

Next Steps 

- ACTION ITEM: Staff to convert the survey results into a word/PDF doc and insert sub headings by Today (Thu, 14 June)

- ACTION ITEM: Staff to identify issues raised and responses that may result in actions and circulate the information in the PowerPoint format by Today (Thu, 14 June). The possible issues include relief awarded, issues with relief (e.g. Chinese registrar) and length of submissions

- ACTION ITEM: Sub Team to provide comment/input on the staff documents via email by Tuesday, 19 June

- ACTION ITEM: Staff to send out the survey results and staff document on Wednesday, 20 June and ask WG members to review them before they arrive in Panama.

- ACTION ITEM: Sub Team to focus on the significant responses and key areas highlighted in the staff document

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