[gnso-rpm-wg] [Ext] RE: REMINDER FOR REVIEW: Revised Questions to URS Practitioners - Please Comment by Tuesday, 24 April

Tue Apr 24 22:03:41 UTC 2018

Thanks Greg for your comments and suggested edits.  They are noted.

Best regards,

Julie

From: Greg Shatan <gregshatanipc at gmail.com>
Date: Tuesday, April 24, 2018 at 6:00 PM
To: Julie Hedlund <julie.hedlund at icann.org>
Cc: Scott Austin <SAustin at vlplawgroup.com>, "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
Subject: Re: [gnso-rpm-wg] [Ext] RE: REMINDER FOR REVIEW: Revised Questions to URS Practitioners - Please Comment by Tuesday, 24 April

Julie and all,

Here are a few comments and suggestions:

URS Practitioner Background 

In the newly suggested follow-up questions in 3 and 7, there should be a choice C:

I have represented both Complainants and Respondents.

Procedural Issues

Numbering should restart at 1

5.  In the newly suggested text, it should read “not including a delay in the Respondent sending the notice to its representative”

Substantive Issues

1.  Either add a “No opinion” choice, or use the A-E scale in Q2.

In Questions 7 and 8, the spectrum of answers should be the same.  So, in 8, options A and B should be reversed (so they much are aligned with A and B in 7).

Practical Issues

Question 1 doesn’t account for the fact that there are two mechanisms for proving use.  There will be no way to distinguish between a practitioner who believes both methods are inadequate and a practitioner who believes one method is adequate and the other is inadequate.  Both would have to answer “Disagree” or “Strongly Disagree.”  At the least, the options provided should allow for answers that cover the various options where one method is adequate and the other is not.  However, there are too many combinations of levels of agreement on one and disagreement on the other, and which is the one you agree with, that it would be unwieldy to have the combination options each laid out separately.  It would be far better to have one question about each type of use.

I suggest that Q1 be deleted and replaced with a question that allows the practitioner to respond separately regarding each type of evidence of use.  We already have a question about the SMD file but not one about submitting a declaration and a specimen (which is a problem in and of itself, in terms of survey design).  

Also, Question 1 also doesn’t align with the text of the rules and procedures, which refer to “evidence of use” not “proof of use.”  As well, the Questions 1 and 2 are flawed — under the Rules and Procedures, both a declaration/specimen or an SMD file are adequate evidence of use.  The question is whether they should be adequate evidence of use as set forth in the Rules and Procedures.

Taking all this into account I suggest the following for Q1:

Do you believe that the submission of a declaration and a specimen of current use in commerce should be adequate evidence of use for a URS case?

Question 2 should be reworked slightly to be more faithful to the rules and procedures:

Do you believe that the submission of an SMD file from the Trademark Clearing House to demonstrate that evidence of use was filed with the TMCH should be adequate proof of use for a URS case?

Greg

On Tue, Apr 24, 2018 at 3:45 PM Julie Hedlund <julie.hedlund at icann.org> wrote:

Scott,

Thank you for your comments.  They are noted.  

With respect to the footnotes, superscripts appear as follows (highlighted in yellow):

1.     Do you believe the current mechanisms for proving use in a URS case are adequate?[1]

Footnote: “Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use – which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse;” Section 3(v). The Complaint, at: http://newgtlds.icann.org/en/applicants/urs/rules-28jun13-en.pdf[newgtlds.icann.org]; See also Section 1.2.6.1(a) and 8.1.2.1 at: http://newgtlds.icann.org/en/applicants/urs/procedure-01mar13-en.pdf[newgtlds.icann.org] 

6.     Do you believe the existing time frames for submitting filings in a URS proceeding are appropriate?[2]

Footnote: These are: 14 days for a response (including a right to request 7 days extension), seeking de novo review (from default) for up to six months plus an option to request an additional 6 months, and filing an appeal for up to 14 days after default or a determination.  See: The Procedure: http://newgtlds.icann.org/en/applicants/urs/procedure-01mar13-en.pdf[newgtlds.icann.org] and the Rules: http://newgtlds.icann.org/en/applicants/urs/rules-28jun13-en.pdf[newgtlds.icann.org].

Following the end of the deadline today for comments, staff will send to the WG a revised redlined document reflecting all of the comments and suggested edits, including the title and the introductory remarks provided previously by the Sub Team.

Kind regards,

Julie

From: Scott Austin <SAustin at vlplawgroup.com>
Date: Tuesday, April 24, 2018 at 2:16 PM
To: Julie Hedlund <julie.hedlund at icann.org>, "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
Subject: [Ext] RE: REMINDER FOR REVIEW: Revised Questions to URS Practitioners - Please Comment by Tuesday, 24 April

Julie:

I am reluctant to dive back in with any more changes, but several items I believe are worth mentioning on the redline I received today.
The centered “title” of the document is really a heading intended for the first set of questions (which has no heading) and should be moved down to the left margin as an initial heading above the first question at a left justified location similar to the un numbered headings which follow (perhaps an A, B, C, outline format would be useful, but its in PDF so can’t insert.)
There are footnote texts at the bottom of pages 5 and 6 but I could not find the superscript notes to which they relate. 
Does the document have a title or do these questions just appear after the introductory remarks and caveat we created previously? Perhaps we should see the entire document in final. 

Best regards,

Scott

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From: gnso-rpm-wg <gnso-rpm-wg-bounces at icann.org> On Behalf Of Julie Hedlund
Sent: Tuesday, April 24, 2018 12:15 PM
To: gnso-rpm-wg at icann.org
Subject: [gnso-rpm-wg] REMINDER FOR REVIEW: Revised Questions to URS Practitioners - Please Comment by Tuesday, 24 April

Dear all,

Further to the message below, this is a reminder to send in any comments or suggested edits not later than today, Tuesday, 24 April.  Any further suggestions will be considered along with those received thus far from Brian Beckham and George Kirikos.

Best Regards,

Mary, Julie, Berry, and Ariel 

From: gnso-rpm-wg <gnso-rpm-wg-bounces at icann.org> on behalf of Julie Hedlund <julie.hedlund at icann.org>
Date: Wednesday, April 18, 2018 at 7:27 PM
To: "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
Subject: [gnso-rpm-wg] FOR REVIEW: Revised Questions to URS Practitioners - Please Comment by Tuesday, 24 April

Dear All, 

Please see the attached revised document “URS Practitioner Background Experience and Perspective” based on the comments and suggestions received during the RPM PDP WG meeting today, 18 April.  Please review the document per the following action item highlighted below.  The suggested edits are indicated by redline and strikethrough in the attached document.

Questions for URS Practitioners: 
Staff will provide to the WG a redlined document with suggested revisions by 18 April (DONE-Attached)
WG members are encouraged to provide any further comments/suggestions by COB Friday, 20 April, but not later than Tuesday, 24 April;
Staff will provide to the WG a final redlined document before the meeting on Wednesday, 25 April.

Please note: 
When the proposed questions are finalized, staff will proofread and correct typos, formatting errors, etc. before the questions are converted into a survey; WG members are encouraged to focus your comments/suggestions on the substance. 
Only the PDF version is provided to ensure the WG is commenting/suggesting edits to the content in one master document, so as to avoid any potential version confusion caused by Word file(s). 

Thank you for your time and review!

Best Regards,

Mary, Julie, Berry, and Ariel 

This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. Any tax advice provided by VLP is for your use only and cannot be used to avoid tax penalties or for promotional or marketing purposes.

[1] “Specify the trademark(s) or service mark(s) on which the complaint is based and the goods or services with which the mark is used including evidence of use – which can be a declaration and a specimen of current use in commerce - submitted directly or by including a relevant SMD (Signed Mark Data) from the Trademark Clearinghouse;” Section 3(v). The Complaint, at: http://newgtlds.icann.org/en/applicants/urs/rules-28jun13-en.pdf[newgtlds.icann.org]; See also Section 1.2.6.1(a) and 8.1.2.1 at: http://newgtlds.icann.org/en/applicants/urs/procedure-01mar13-en.pdf[newgtlds.icann.org] 

[2] These are: 14 days for a response (including a right to request 7 days extension), seeking de novo review (from default) for up to six months plus an option to request an additional 6 months, and filing an appeal for up to 14 days after default or a determination.  See: The Procedure: http://newgtlds.icann.org/en/applicants/urs/procedure-01mar13-en.pdf[newgtlds.icann.org] and the Rules: http://newgtlds.icann.org/en/applicants/urs/rules-28jun13-en.pdf[newgtlds.icann.org].

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