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

Wed Jul 27 21:04:05 UTC 2016

Agree with Brian as well.  The term "class action" is misleading and has
drawn us down some rabbit holes.  I think there are two questions here:

1. Cases with multiple plaintiffs.  This has two subtopics: (a) joint
plaintiffs, and (b) consolidation.
2. Evidence of "pattern or practice" where the evidence involves trademarks
owned by entities that are not parties.

Greg

On Wed, Jul 27, 2016 at 4:52 PM, J. Scott Evans <jsevans at adobe.com> wrote:

> Thanks Mary.
>
> *J. Scott Evans* *| Associate General Counsel - Trademarks, Copyright,
> Domains & Marketing |*
>
> *Adobe *
>
> 345 Park Avenue
>
> San Jose, CA 95110
> 408.536.5336 (tel), 408.709.6162 (cell)
> jsevans at adobe.com
>
> www.adobe.com
>
>
>
> From: <gnso-rpm-wg-bounces at icann.org> on behalf of Mary Wong <
> mary.wong at icann.org>
> Date: Wednesday, July 27, 2016 at 1:50 PM
>
> To: "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
> Subject: Re: [gnso-rpm-wg] Action items and updated document following
> the WG call on 20 July 2016
>
> Thanks, Brian and J. Scott. As the Working Group continues to discuss an
> appropriate term for this concept as well as additional details that may be
> needed, an immediate Action Item the group can also consider is asking the
> Providers to clarify whether the concept of consolidation in each of their
> Supplemental Rules: (1) extends to the filing of joint complaints by
> different trademark holders against the same registry (or not); and (2)
> applies only to a situation where the same complainant files multiple
> complaints against the same registry (or more broadly).
>
>
>
> Seeking such clarification could then allow the Working Group to consider
> – assuming there is consensus that such an option should be added – whether
> this would involve an amendment to the Procedure and/or the Rules, or if a
> clarifying guidance document would be more appropriate. Staff notes at this
> point for the record that there has not yet been a consensus call on the
> advisability of adding such an option.
>
>
>
> Cheers
>
> Mary
>
>
>
> *From: *<gnso-rpm-wg-bounces at icann.org> on behalf of "J. Scott Evans" <
> jsevans at adobe.com>
> *Date: *Wednesday, July 27, 2016 at 16:41
> *To: *"Winterfeldt, Brian J." <BWinterfeldt at mayerbrown.com>, "
> gnso-rpm-wg at icann.org" <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 agree with Brian’s point here.
>
>
>
>
>
> *J. Scott Evans* *| Associate General Counsel - Trademarks, Copyright,
> Domains & Marketing |*
>
> *Adobe *
>
> 345 Park Avenue
>
> San Jose, CA 95110
> 408.536.5336 (tel), 408.709.6162 (cell)
> jsevans at adobe.com
>
> www.adobe.com
>
>
>
>
>
>
>
> *From: *<gnso-rpm-wg-bounces at icann.org> on behalf of "Winterfeldt, Brian
> J." <BWinterfeldt at mayerbrown.com>
> *Date: *Wednesday, July 27, 2016 at 10:58 AM
> *To: *"gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
> *Subject: *Re: [gnso-rpm-wg] Action items and updated document following
> the WG call on 20 July 2016
>
>
>
> Hi all,
>
>
>
> Just to quickly clarify something from this discussion – while I agree
> that a “class action” PDDRP is probably not advisable, as that term is
> understood in the context of a formal litigation, it seems to be a slightly
> different concept from enabling multiple brand owners to jointly file a
> PDDRP complaint in cases where each of those brand owners’ marks are
> involved in the registry’s complained-of behavior.  In the latter case,
> allowing multiple brand owners to jointly file a PDDRP complaint would help
> defray the cost of the complaint for each individual participating brand
> owner and improve efficiency (insofar as this would streamline multiple
> potential complaints by various brand owners into a single complaint),
> which we previously identified as possible hurdles to using the PDDRP.
>
>
>
> The PDDRP and providers’ supplemental rules do not appear to presently
> envision joint complaints.  The PDDRP currently provides that “The parties
> to the dispute will be the trademark holder and the gTLD registry
> operator.”  *See *ICANN, PDDRP § 1 (June 4, 2012).  It further provides,
> “The mandatory administrative proceeding will commence when a third-party
> complainant (“Complainant”) has filed a Complaint with a Provider asserting
> that the Complainant is a trademark holder (which may include either
> registered or unregistered marks as defined below) claiming that one or
> more of its marks have been infringed, and thereby the Complainant has been
> harmed, by the registry operator’s manner of operation or use of the
> gTLD.”  *See id. *§ 5.1.  The PDDRP itself briefly references
> “consolidation” without any additional context, stating “In the case where
> either party requests a three-member Expert Panel, each party (*or each
> side of the dispute if a matter has been consolidated*) shall select an
> Expert and the two selected Experts shall select the third Expert Panel
> member.”  *See id.* § 13.3 (emphasis added).
>
>
>
> Each of the individual PDDRP providers’ supplemental rules envisage
> *consolidation* of complaints under certain circumstances (each set of
> supplemental rules differs somewhat in that regard), but not the filing of
> a joint complaint in the first instance.  For example, the World
> Intellectual Property Organization (WIPO) allows itself the discretion to
> consolidate complaints against the same registry operator, provided all
> parties agree.  *See *WIPO, Supplemental Rules for Trademark PDDRP
> <http://newgtlds.icann.org/en/applicants/agb/pddrp-rules-15oct13-en.pdf>  §
> 12 (Feb. 20, 2014).  The National Arbitration Forum PDDRP Supplemental
> Rules discuss consolidation of complaints between the same parties, but
> again it is not clear that these consolidation rules could be used to file
> a joint complaint by multiple individual trademark owner complainants.  *See
> *National Arbitration Forum, The Forum’s Supplemental Rules to ICANN’s
> Trademark Post-Delegation Dispute Resolution Procedure and Rules
> <http://www.adrforum.com/resources/gTLD/Supplemental%20Rules-PDDRP.pdf> §
> 8 (Oct. 1, 2013).  The Asian Domain Name Dispute Resolution Centre (ADNDRC)
> appears to have similar consolidation rules, although like the other
> providers’ rules, these also appear to consider the broader possibility
> that complaints of multiple different trademark owner complainants could be
> consolidated or joined if they are pending against the same registry
> operator.  *See *ADNDRC, Supplemental Rules to the ICANN Trademark PDDRP
> <https://www.adndrc.org/mten/img/pdf/Supplemental_Rules_TMPDDRP_10-03-2014.pdf>
> § 10 (Mar. 10, 2014).
>
>
>
> Although the providers’ supplemental rules enable consolidation of cases
> post-filing, they do not provide for the kind of joint complaint envisaged
> above.  Thus, the PDDRP itself, or the PDDRP rules or supplemental rules,
> would need to be further modified to accommodate a true joint complaint as
> opposed to mere consolidation of complaints.
>
>
>
> Of course, a joint proceeding would still need to be limited just to
> considering the specific trademarks at issue in the joint complaint to
> avoid a scenario where a small subset of aggrieved brand owners is acting
> as a “class representative” on behalf of other brand owners who are not
> directly involved (to avoid the concerns mentioned by Paul).  In short, I
> think brand owners should have the ability under the PDDRP to file a joint
> complaint, but agree that it should be limited as described above and not
> be akin to a “class action.”
>
>
>
> Looking forward to our call later today.
>
>
>
> Best regards,
>
>
>
> Brian
>
>
>
> *Brian J. Winterfeldt*
>
> Co-Head of Global Brand Management and Internet Practice
>
> Mayer Brown LLP
>
> bwinterfeldt at mayerbrown.com
>
> 1999 K Street, NW
>
> Washington, DC  20006-1101
>
> 202.263.3284 direct dial
>
> 202.830.0330 fax
>
>
>
> 1221 Avenue of the Americas
>
> New York, New York  10020-1001
>
> 212.506.2345 direct dial
>
>
>
>
>
> *From:*gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org
> <gnso-rpm-wg-bounces at icann.org>] *On Behalf Of *Petter Rindforth
> *Sent:* Sunday, July 24, 2016 8:33 AM
> *To:* Paul at law.es ZIMBRA
> *Cc:* gnso-rpm-wg at icann.org
> *Subject:* Re: [gnso-rpm-wg] Action items and updated document following
> the WG call on 20 July 2016
>
>
>
> Hi All,
>
> I echo on the support for mediation. And, of course, independently of
> which party that has requested mediation, it must be accepted by the other
> party (as in all normal mediation procedures).
>
> The mediation part must be confidential. If it fails, the “arbitration
> part” of the dispute shall not be handled by the same panelist that dealt
> with the mediation and the documents & comments filed through the mediation
> phase shall not be available for the panelist/s handling the full PDDRP.
>
> As to Paul’s comments on evidence: I don’t think any panelists,
> independently of the dispute resolution policy, accept a simple statement
> from the complainant that “we have trademark rights”, or accept “evidence”
> of that just in the form of a list of protected trademarks. Even in cases
> where the domain holder does not reply, you will lose your case if you
> cannot prove your trademark rights with further documentation, such a
> copies of valid Certificate of registrations, etc.
>
>
>
> 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
>
>
>
>
>
> NOTICE
>
> This e-mail message is intended solely for the individual or individuals
> to whom it is addressed. It may contain confidential attorney-client
> privileged information and attorney work product. If the reader of this
> message is not the intended recipient, you are requested not to read, copy
> or distribute it or any of the information it contains. Please delete it
> immediately and notify us by return e-mail.
>
> Fenix Legal KB, Sweden, www.fenixlegal.eu
>
> Thank you
>
>
>
> 23 juli 2016 20:40:33 +02:00, skrev Paul at law.es ZIMBRA <paul at law.es>:
>
> I agree with Darcy that we are trying to fixed something that no one has
> said was broken.  I strongly favor asking registries for their input (have
> they even received complaints, etc.). I also strongly favor asking
> trademark holders if they have any instance of issues.  Otherwise I suggest
> leaving this alone.
>
>
>
> I am in favor of mediation.  My only issue is my experience shows that 90%
> of complaints are not serious or are seeking opportunistic settlement.
>
>
>
> As much as I like to avoid costs, it is important that complaints provide
> a formal complaint WITH EVIDENCE.  I don't care how many pages it is.  The
> idea is to require seriousness and avoid fishing expeditions.  This can be
> accomplished. Y a rule that says if mediation fails the complaint filed
> will be the complaint for the dispute with any amendment being subject to
> th discretion of the arbitrators (and not favored).
>
>
>
> The response in turn should be formal and with evidence.  This prevents
> gamesmanship by respondent.
>
>
>
> The law of jurisdiction MUST be established.  We need to eliminate the
> convent of a "universal" law.
>
>
>
> Paul Keating
>
>
>
> 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 sayas 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
>
>
>
> _______________________________________________
>
> gnso-rpm-wg mailing list
>
> gnso-rpm-wg at icann.org
>
> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>
> _______________________________________________
>
> gnso-rpm-wg mailing list
>
> gnso-rpm-wg at icann.org
>
> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>
> _______________________________________________
>
> gnso-rpm-wg mailing list
>
> gnso-rpm-wg at icann.org
>
> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>
>
>
> __________________________________________________________________________
>
>
>
> This email and any files transmitted with it are intended solely for the
> use of the individual or entity to whom they are addressed. If you have
> received this email in error please notify the system manager. If you are
> not the named addressee you should not disseminate, distribute or copy this
> e-mail.
>
>
>
>
> ------------------------------
>
>
> <ACL>
>
> _______________________________________________
> gnso-rpm-wg mailing list
> gnso-rpm-wg at icann.org
> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20160727/936ab489/attachment-0001.html>