[gnso-rpm-wg] Action items and updated document following the WG call on 20 July 2016

Fri Jul 22 23:44:39 UTC 2016

With regard to class actions, let's remember that we are talking about the
PDDRP, which is aimed at a pattern or practice by the Registry and not
abuses of a single party's mark.  A finding of "no pattern or practice"
does not mean that an individual abuse did not occur -- it only means that
the Registry's actions did not rise to a pattern or practice of abuse or
aiding and abetting abuse.  Requiring a complainant seeking to demonstrate
a pattern or practice to join every entity whose marks are being identified
as part of the pattern or practice will be incredibly unwieldy and further
discourage use of the PDDRP.  (On the other hand, I agree with Paul that
there should be nothing stopping multi-complainant cases from being
brought.)  It's highly likely that activity constituting a pattern or
practice will involve trademarks of dozens or even hundreds or thousands of
entities.  The PDDRP has to make a complaint about such activity feasible.
We can consider safeguards for non-parties so that they could separately
bring actions if they identify a pattern or practice (as well as safeguards
for Registries so that they are not dealing with innumerable cases over the
same activity (consolidation would work if cases are brought at one time;
it gets more complicated if cases are brought at significantly different
times). But we should not make this into a DRP that can never be used.

Greg

On Fri, Jul 22, 2016 at 6:42 PM, Paul McGrady <policy at paulmcgrady.com>
wrote:

> Thanks Darcy.
>
>
>
> I agree that mediation before complaint is a good idea and that the policy
> should require both sides to consent to it.  I think instead of a skeletal
> complaint, the aggrieved party  should do a simple “mediation statement”
> (which is the normal thing) and then the registry could do a reply
> statement.  I suggest we limit pages to no more than 10 so that this
> doesn’t become proxy litigation.  The mediation (including the statements)
> should be confidential – in other words nothing shared in mediation while
> pursuing settlement should be used later by the parties if the complaint
> goes forward.
>
>
> As for “class actions” I also agree with you on that.  Not only do I not
> think they are feasible in this setting, I will invoke the highest
> authority on Earth to rebut the entire idea, namely Jimmy Buffett, and
> simply say as a brand owner “I don’t want other people [people’s lawyers]
>  thinking for me.”  Could you imagine the disaster if a brand owner filed a
> complaint for abuses of its mark only to learn that a “class action”
> included them and was already lost?  It would be Heck on Earth (especially
> for the poor law firm that “done it”).  Yikes.  While I understand the
> desire for efficiency, there is nothing keeping unhappy brand owners from
> filing a joint complaint to which they consent in advance.
>
>
>
> Best,
>
> Paul
>
>
>
>
>
>
>
> *From:* gnso-rpm-wg-bounces at icann.org [mailto:
> gnso-rpm-wg-bounces at icann.org] *On Behalf Of *Darcy Southwell
> *Sent:* Friday, July 22, 2016 4:38 PM
> *To:* Mary Wong; gnso-rpm-wg at icann.org
> *Subject:* Re: [gnso-rpm-wg] Action items and updated document following
> the WG call on 20 July 2016
>
>
>
> I have to admit I’m struggling with how to evaluate the effectiveness of a
> policy that’s never been used ~ like we’re proposing solutions for
> unidentified problems. I don’t want to suggest that we identify and detail
> all possible use cases and apply the PDDRP to identify flaws.  But when we
> consider the existing Standards (§6) and Burden of Proof (§17), do we have
> any concrete examples of when the PDDRP maybe should have been used that
> would indicate needed improvements?
>
>
>
> Or maybe the better question is … do we have specific examples of registry
> behavior that doesn’t meet existing standards but is nonetheless concerning
> when it comes to profiting from sale of infringing domains?
>
>
>
> As for a couple of issues discussed on the list and at our last meeting:
>
>
>
> *Mediation*
>
> Mediation is often a successful way for parties to reach a workable
> resolution, and I support the concept of non-binding mediation as an option
> with the PDDRP.  If the PDDRP were to allow for the filing of “skeletal”
> complaints, do we intend that the filing party is the sole determiner of
> whether the complaint goes to mediation?  It seems that the mediation
> option should be open to both parties to request.  In the end, both parties
> need to be amenable to mediation for it ever have an effective outcome.
>
>
>
> *Class Actions*
>
> The term “class action” seems problematic because of how it is used in
> many judicial systems.  If what we’re trying to get to is a method for
> trademark owner to identify prolific abuses by a registry and to then have
> a more aggressive method for pursuing the registry, is there instead a way
> to build (1) public disclosure of filings and decisions (the way UDRPs
> work) and (2) place a burden on panel reviewers to rely on the precedence
> of prior findings (unlike the UDRP) and take those into account when
> determining remedies?
>
>
>
> Thanks,
>
> Darcy
>
>
>
> *From: *<gnso-rpm-wg-bounces at icann.org> on behalf of Mary Wong
> *Date: *Friday, July 22, 2016 at 10:22 AM
> *To: *"gnso-rpm-wg at icann.org"
> *Subject: *[gnso-rpm-wg] Action items and updated document following the
> WG call on 20 July 2016
>
>
>
> Dear all,
>
>
>
> Please find attached an updated document containing issues, concerns and
> suggestions received to date relating to the TM-PDDRP, the first version of
> which had been circulated on 19 July to the Working Group (see message
> below). Both documents have also been uploaded to the Working Group wiki
> space for your convenience: https://community.icann.org/x/9wWbAw.
>
>
>
> The updated document contains summaries of the discussion during the last
> call relating to the suggested options for mediation and class action (see
> the boxed text on Page 2 and Page 4, respectively). *Please review the
> updates and continue discussion of the suggestions on this mailing list*
> (NOTE: the text summaries do not attempt to replicate or summarize the full
> discussions that took place on the call – please refer to the meeting
> transcript, recording and Adobe Connect chat transcript for context and
> additional explanations offered by participating Members on these topics:
> https://community.icann.org/x/9wWbAw).
>
>
>
> For the next call, we anticipate that Members will discuss the issues,
> concerns and suggestions raised in relation to the ease/difficulty of
> access to/use of the TM-PDDRP (currently listed in the document under
> Section A.III on Pages 4-6). Members are also requested to continue to send
> in your thoughts and comments regarding *additional questions we can
> raise with ICANN Compliance, and the advisability/need to develop “use
> cases” for the TM-PDDRP* (see Page 7).
>
>
>
> 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
>
>
>
>
>
> *From: *Mary Wong <mary.wong at icann.org>
> *Date: *Tuesday, July 19, 2016 at 18:22
> *To: *"gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
> *Subject: *For review & discussion: summary document on TM-PDDRP issues,
> concerns and suggestions
>
>
>
> Dear all,
>
>
>
> Further to the proposed agenda (below), please find attached a document
> that: (1) compiles the issues, concerns, suggestions received and email
> discussions to date relating to the TM-PDDRP stemming from the WG’s
> deliberations up to and in Helsinki; and (2) contains responses received
> from several WG members regarding the possibility of developing “use cases”
> and other additional suggestions.
>
>
>
> We apologize for the late notice, but hopefully Members will be able to
> review the document even briefly before the WG call tomorrow (Wednesday).
>
>
>
> 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
>
>
>
>
>
>
>
> *From: *Mary Wong <mary.wong at icann.org>
> *Date: *Tuesday, July 19, 2016 at 14:56
> *To: *"gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
> *Subject: *Proposed agenda for Working Group meeting of 20 July
>
>
>
> Dear all,
>
>
>
> The proposed agenda for the next Working Group call, scheduled for
> Wednesday 20 July at 1600 UTC, is as follows:
>
>
>
> 1.      Roll call (via Adobe Connect and phone bridge only) and updates to
> Statements of Interest
>
> 2.      Discuss identified issues and concerns regarding the TM-PDDRP,
> including Working Group members’ responses on possible changes to, and
> things not to change about, the TM-PDDRP
>
> 3.      Discuss follow up questions for ICANN Compliance and TM-PDDRP
> Providers, including suggestion for developing use cases
>
> 4.      Agree on list of additional issues/concerns with the TM-PDDRP
> based on WG discussions to date
>
> 5.      Next steps/next meeting
>
>
>
> A document setting out a framework for the discussion of issues and
> listing Working Group members’ suggestions will be sent out shortly.
>
>
>
> 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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>
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