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

Paul@law.es ZIMBRA paul at law.es
Sat Jul 23 18:30:48 UTC 2016


Greg,

First, your comment "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." is prosecutorial.  The failure of proof can mean anything.  Your statement lends too much weight to the complaint.  That you have structured the conclusion to include only the next lowest level is somewhat dispositive of your thought process.

Second, your comment "The PDDRP has to make a complaint about such activity feasible" is misguided,  the entire process is contractual and parallel to the law.  The goal was to provide a simplified process in which to provide for simplified complaints.  It was never intended as a substitute for legal process.  

My retort to your comment is:  while it may be difficult, it is incumbent upon a trademark holder seeking to raise such a claim that they enlist the support of other trademark holders who have suffered similarly.  This is not difficult and proceeding together can be accomplished by simple joinder.  Your argument seeks to avoid Complainant's having to work to coordinate so as to impose the entire burden upon (a) the responding party and (b) the panel.

That many have suffered injury has never been the reason for class actions.  For a class to exist, both the underlying facts of how the injury was sustains and the NATURE (not amount) of damage must be identical as to all claimants.   This has universally NOT been the case with trademark related claims because the very nature of trademark protection (and thus rights) arises in context - that is the the particular word/phrase is actually used.

I mean no offense whatsoever,  but as I see it Your argument is this one seeking lowering costs for your constituency and is not founded in the logical application of the law.

I am entirely opposed to any for of class action in any aspect of our discussions.

Paul Keating

> On 23 Jul 2016, at 1:44 AM, Greg Shatan <gregshatanipc at gmail.com> wrote:
> 
> 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
>> 
>>  
>> 
>>  
>> 
>> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg at icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>> 
>> 
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