[gnso-rpm-wg] FOR REVIEW/ACTION - Members', staff and co-chairs' action items from the WG meeting today

Paul Keating Paul at law.es
Mon Jul 18 14:49:19 UTC 2016 

Hi All,

My comments to the below string are:

1. Substantial infringement.  I work for a number of registrars and they
generally have millions of registrations.  It is a low profit, high-volume
business.  I therefore have difficulties in imposing any further burdens
upon them.  While policing trademark violations has a cost, I am becoming
more and more opposed to the idea of having the rest of the world suffer
this cost for the benefit of the IP rights holders.  In reality this is an
issue for ICANN to deal with under its accreditation program.

2. Mediation is a great idea but it should be a process of the UDRP as it is
the DRS.  This is extremely effective and greatly reduces the number of
complaints moving towards the panel.  The only problem I have with the DRS
model is that both the complainant and respondent have then already spent
the time and money to file the complaint and response.  We could structure
the proposal so as to permit mediation on a skeletal complaint and upon
failure of the mediation the complainant would have the right to file a
formal complaint which would then proceed to the panelists.   Nominet could
give very clear guidance on the effectiveness of their program and if not I
know several panelist and mediators and can reach out to them.

3. Petter, Class actions already exist to the extent of commonality of
registrant (a low threshold).  I would not suggest adding to this as it
greatly increases the burden of the panelists (who are on a fixed fee) and
will lead to lax decision making on their part ­ a natural consequence of
not having sufficient time to deal with every domain in the class.

4. "use cases".  Although a great idea they require a great deal of time and
are largely met with "I will not respond to a hypo" type responses we heard
the other day.  Of the disputes 99.99% are simple easy fact patters.
However, these do not typically generate the "issues".  The remainder are
all factually intensive and a answering one by way of a use case may not
necessarily answer the others.

5. At the registration/notification of potential trademark conflict, I don't
know of may that result in a decision not to register.  HOWEVER, I think
that the notice should also specify the goods/classes in which the asserted
trademark is registered AND contain a link to a public source to determine
the classifications.

Thus are my thoughts,

PRK

From:  <gnso-rpm-wg-bounces at icann.org> on behalf of Phil Corwin
<psc at vlaw-dc.com>
Date:  Monday, July 18, 2016 1:05 AM
To:  "petter.rindforth at fenixlegal.eu" <petter.rindforth at fenixlegal.eu>, Mary
Wong <mary.wong at icann.org>
Cc:  "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
Subject:  Re: [gnso-rpm-wg] FOR REVIEW/ACTION - Members', staff and
co-chairs' action items from the WG meeting today

> Good suggestions, Petter.
>  
> We should probably also look at the sufficiency of the relief if one prevails
> ­ we¹ve had feedback that the result is too weak to justify the expense.
>  
> Finally, although we don¹t have any specific complaints as of yet regarding a
> registry that may be in violation of the PDDRP standards, we should probably
> survey the community and ask if there are any registries or registry operators
> that are either actively encouraging or turning a blind eye to substantial
> infringement (and we¹ll need to define what substantial is). If we get any
> specific feedback we might look at whether there is any correlation between a
> greater percentage of infringement and domain pricing; we¹ve seen a lot of new
> registries give domains by the millions away for free or very low prices, and
> it just seems intuitive that bad actors may be attracted by the very low cost
> of entry.
>  
> Best, Philip
>  
> Philip S. Corwin, Founding Principal
> Virtualaw LLC
> 1155 F Street, NW
> Suite 1050
> Washington, DC 20004
> 202-559-8597/Direct
> 202-559-8750/Fax
> 202-255-6172/Cell
>  
> Twitter: @VlawDC
>  
> "Luck is the residue of design" -- Branch Rickey
>  
> From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On
> Behalf Of Petter Rindforth
> Sent: Sunday, July 17, 2016 6:23 PM
> To: Mary Wong
> Cc: gnso-rpm-wg at icann.org
> Subject: Re: [gnso-rpm-wg] FOR REVIEW/ACTION - Members', staff and co-chairs'
> action items from the WG meeting today
>  
> 4 thingsŠ well, at least: 2 things that can be improved/changed about the
> PDDRP:
> 1) Considering the possibility to clearly introduce online mediation as a
> natural part of the initial phase (adding to PDDRP Section7.2.3(d), where the
> TM owner notify the Registry operator about its specific concerns and the
> resulting infringement and indicated its willingness to meet to resolve the
> issue).
> 2) Reach out to RySG to discuss the possibility to introduce ³class action² ­
> at least regarding 2nd level complaints. It may be necessary to make it
> possible to show infringement atthis level where a registry operator has a
> pattern or practice of actively and systematically encouraging registrants to
> register second level domain names and to take unfair advantage of the
> trademark to the extent and degree that bad faith is apparent, and/or where a
> registry operator has a pattern or practice of acting as the registrant or
> beneficial user of infringing registrations, to monetize and profit in bad
> faith.
> 
>  
> 
> All the best,
> 
> Petter
> 
>  
> 
> -- 
> 
> Petter Rindforth, LL M
> 
>  
> 
> Fenix Legal KB 
> 
> Stureplan 4c, 4tr
> 
> 114 35 Stockholm 
> 
> Sweden 
> 
> Fax: +46(0)8-4631010
> 
> Direct phone: +46(0)702-369360
> 
> E-mail: petter.rindforth at fenixlegal.eu
> 
> www.fenixlegal.eu <http://www.fenixlegal.eu>
> 
>  
> 
>  
> 
> NOTICE 
> 
> This e-mail message is intended solely for the individual or individuals to
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> Fenix Legal KB, Sweden, www.fenixlegal.eu <http://www.fenixlegal.eu>
> 
> Thank you
> 
>  
> 
> 14 juli 2016 00:40:45 +02:00, skrev Mary Wong <mary.wong at icann.org>:
>> 
>> Dear all,
>> 
>>  
>> 
>> The following are the action items captured by staff based on the Working
>> Group members¹ call earlier today. We will work with the co-chairs to refine
>> and generate an up to date list of all the additional questions and issues
>> relating to the TM-PDDRP identified in discussions in Helsinki and on the
>> call today, and will circulate that list as soon as possible.
>> 
>>  
>> 
>> WORKING GROUP MEMBERS¹ ACTION ITEMS:
>> 
>>  
>> 
>> 1.      Members to provide input on whether it will be helpful to generate
>> ³use cases² that can be referred to experienced counsel for input, and ICANN
>> staff. The aim here is to learn what they would do in those situations and
>> discover any gaps not adequately or otherwise handled that would fall to be
>> dealt with under the TM-PDDRP. Please feel free to discuss this idea via this
>> email list.
>> 
>>  
>> 
>> 2.      Members to send in their list of up to 4 things that they think can
>> be improved/changed about the PDDRP (and up to 4 that should not). Please do
>> so ­ either directly to ICANN staff or to this email list ­ by Monday 18 July
>> if at all possible.
>> 
>>  
>> 
>> STAFF ACTION ITEMS:
>> 
>>  
>> 
>> 1.      Contact ICANN Compliance with the following questions:
>> 
>> ·        Has ICANN Compliance received complaints from TM owners regarding
>> issues that might be covered under the TM-PDDRP?
>> 
>> ·        If/when use cases are developed, ask which (if any) Compliance will
>> refuse to handle on the basis that this ought to be dealt with under the
>> TM-PDDRP (WG to consider related point ­ is the TM-PDDRP the mechanism of
>> last resort after Compliance options are exhausted, or is it the only
>> possible mechanism?)
>> 
>>  
>> 
>> 2.      Invite Compliance colleagues to the next WG meeting (next week).
>> 
>>  
>> 
>> 3.      Send calendar invitations for all WG calls through end-October.
>> 
>>  
>> 
>> STAFF/CO-CHAIRS ACTION ITEMS:
>> 
>>  
>> 
>> 1.      Check with gTLD registries (possibly via letter to the Registries
>> Stakeholder Group) to see if the informal pre-complaint notification
>> procedure has even been invoked, and if issues were resolved without there
>> being a need to invoke the TM-PDDRP
>> 
>>  
>> 
>> 2.      Refine and generate updated list of additional issues/questions on
>> the TM-PDDRP.
>> 
>>  
>> 
>> 3.      Determine whether a half or full day PDP face to face (with remote
>> participation) meeting on Day 1 of ICANN57 is necessary/feasible.
>> 
>>  
>> 
>>  
>> 
>> Thanks and cheers
>> 
>> Mary
>> 
>>  
>> 
>>  
>> 
>> Mary Wong
>> 
>> Senior Policy Director
>> 
>> Internet Corporation for Assigned Names and Numbers (ICANN)
>> 
>> Email: mary.wong at icann.org
>> 
>> Telephone: +1-603-5744889
>> 
>>  
>> 
>>  
>> 
>> _______________________________________________
>> 
>> gnso-rpm-wg mailing list
>> 
>> gnso-rpm-wg at icann.org
>> 
>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
> 
>  
> 
> 
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