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

Fri Jul 22 21:01:34 UTC 2016

Agree with Beth and Brian regarding keeping the bad faith intent standard of §6 and burden of proof of §17 for the same reasons they indicate.

Thanks,
Darcy

From:  <gnso-rpm-wg-bounces at icann.org> on behalf of "Brian F. Cimbolic"
Date:  Monday, July 18, 2016 at 10:35 AM
To:  Beth  Bacon, Paul Keating, Phil Corwin, "petter.rindforth at fenixlegal.eu", 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

All – Here is my and Beth Bacon’s (also of PIR) list of improvements and elements of the PDDRP that we would like to stay the same.  First, we think it’s worth noting that simply because the PDDRP hasn’t been used doesn’t mean it isn’t “working.” The PDDRP arguably has a deterrent/chilling effect against pervasive bad-faith infringement at the Top and Second level.  While it’s true that the PDDRP has not been used, we believe it is because there has not yet been an instance that meets the elements of a PDDRP claim. 

Elements of PDDRP that should Remain the Same:

(1)   Bad Faith Intent.    It is important to note that the PDDRP does not cover profiting from simple trademark infringement at the Second level, but rather, only covers the Second level when “through the Registry Operator’s affirmative conduct, there is a substantive pattern or practice of specific bad faith intent to profit from the sale of domain names that infringe the complainant’s trademark.”  The PDDRP is meant to address true bad-faith actors, not Registries that simply have some infringing names under management. 

(2)   Clear and Convincing Evidence.  Since the remedies that can be recommended under the PDDRP can be quite extreme, it is important that the Complainant’s burden of proof remain high.  Accordingly, the Clear and Convincing Evidence standard currently used in the PDDRP is proper. 

Possible Improvements: 

(1)   Clarity around ICANN Adoption of Remedies.  Section 18.6 of the PDDRP states “Imposition of remedies shall be at the discretion of ICANN, but absent extraordinary circumstances, those remedies will be in line with the remedies recommended by the Expert Panel.”  The PDDRP does not appear to set forth what circumstances might be considered “extraordinary.”  In the event ICANN deviates from a Panel recommendation, is there a mechanism to challenge the deviation within the PDDRP (instead of dispute resolution under the RA)? Is it possible that ICANN could adopt harsher penalties rather than what was adopted by the Panel?

(2)   Mediation at the Request of Registry.  The Registry may believe that there is some misunderstanding between the Complainant and itself when the PDDRP is initiated.  In that instance, upon receiving the Complaint, the Registry should be able to initiate non-binding Mediation within the confines of the PDDRP.  The Mediation should occur within a reasonable time from the Registry’s request (perhaps 30 days).  If the Mediation is successful, the PDDRP process will end.  If the Mediation is not successful, the current process under the PDDRP will continue. 

Thanks very much,

Beth Bacon and Brian Cimbolic, PIR. 

Brian Cimbolic

Deputy General Counsel, Public Interest Registry

Office: +1 703 889-5752| Mobile: + 1 571 385-7871| 

www.pir.org | Facebook | Twitter | Instagram | YouTube 

Confidentiality Note:  Proprietary and confidential to Public Interest Registry.  If received in error, please inform sender and then delete.

From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Paul Keating
Sent: Monday, July 18, 2016 10:49 AM
To: Phil Corwin <psc at vlaw-dc.com>; petter.rindforth at fenixlegal.eu; Mary Wong <mary.wong at icann.org>
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

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 – we’ve had feedback that the result is too weak to justify the expense.

Finally, although we don’t 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 we’ll 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; we’ve 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 things… 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 “class action” – 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 

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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 members’ 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 MEMBERS’ ACTION ITEMS:

1.      Members to provide input on whether it will be helpful to generate “use cases” 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

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