[gnso-rpm-wg] Actions & Notes: RPM PDP Working Group Meeting 01 August 2018

[Julie Hedlund]

Dear All,

 

Please see below the action items and brief notes captured by staff from the Working Group call held on 01 August 2018 (1700 UTC).  Please note that these will be high-level notes and are not meant as a substitute for the transcript or recording.  Staff have posted to the wiki space the action items and notes at: https://community.icann.org/display/RARPMRIAGPWG/2018+Meetings. 

 

Best regards,

Mary, Ariel, Berry, and Julie

 

ACTION ITEMS:
WG members should consider volunteering as beta testers for the Sunrise and Claims Surveys – around 3-4 beta testers per survey.  An email for a call for volunteers will be sent out.
WG members should review the attached documents from the URS Sub Teams, and also the data sources and the survey results and reports from each of the three URS Sub Teams for fuller details on the data collected, Sub Team deliberations and additional background (including the original URS Charter questions): 
Practitioners - https://community.icann.org/x/0IIpBQ
Providers - https://community.icann.org/x/FBu8B
Documents - https://community.icann.org/x/NgdpBQ    
NOTES:

1. Review Agenda/SOIs: No updates to SOIs.

2. Sunrise and Claims Survey Status:

-- The Analysis Group has sent the final surveys to the Data Sub Team.

-- We are seeking 3-4 testers per survey in the next week.

Discussion from the chat:

Mary Wong: We were advised that around 3-4 beta testers per survey is optimal, and as Julie is saying, to preferably include those not involved in developing the questions.

David McAuley: i prefer to look at it on list, see what skills might be needed

Mary Wong: @David, I think just a willingness to go through one or more of the surveys before end of next week :)

David McAuley: Thanks Mary - I will probably volunteer

Mary Wong: (though obviously if volunteers had some familiarity with the target group for that survey, all the better!)

Mary Wong: i.e. registry operators, registrars, TM/brand owners, actual registrants, potential registrants = the various target groups for the Sunrise and Claims surveys.

 

3. URS Sub Team Presentations:

  a. URS Practitioners Sub Team

Slide 4: Survey Results

-- Concern about the validity of the survey and how we use the data.

-- By its nature this survey has a structural limitation -- very few respondents retain counsel; in most cases it is just pro se responses.

-- Thus, we cannot get equal feedback from respondents, but that is not to saw that this feedback is not useful.

-- Good feedback on how the URS is working.

Slide 5-6: Overall Results

-- Context: There were many questions we debated about putting into the survey.  We should take back and reflect that while we may have concerns about what is happening in the URS, many of those concerns are not reflected in the data/survey responses.

Slide 7-8: Areas for Operational Fixes/Policy Recommendations

-- Good point to help practitioners, respondents, and panelists to have an "overview of URS decision", but might not have enough decisions at this point to make this useful.

-- Nothing is jumping out as a clear structural problem.

-- Need to look at the purpose of the URS and how it is different from the UDRP re: increasing the word limit or the evidentiary procedures.

Slide 9: Summary and Next Steps:

-- URS seems to be working for its intended purpose and the issues and "problems" with the URS are seemingly minor and fixable.

Discussion:

-- Reiterated concern with the small sample.

-- Responses are dominated by the complainants (structural limitation).

-- The Sub Team agreed on how the survey audience was selected -- looking to those respondents with multiple cases, but we did include those with many cases and those with only a few.  

-- Had a 41% response rate.

-- Could compare sample size to population size -- 34 out of not even 200 is not a bad sample size.

-- This was not meant to perfect replicate the population, but doesn't invalidate the fact of the survey.

-- Can't assume that respondents' counsels would have a different side.

-- Question: Was there outreach to practitioners that might be active in the space that might not have been captured in the survey?  Answer: Throughout this process, and even prior to the sub team being created, we did a lot of work trying to analyze the effectiveness of the URS itself.  There were times when respondents counsel had conversations regarding this, and we on our own looked at hundreds of cases.  We personally didn't find problems.  We also did not find many counsel representing respondents.  If it is a clear case of abuse they wouldn't be hiring counsel.  That is an anecdotal finding.

-- We have people on this WG who are practitioners who would know if there were problems.

-- There was a lot of work in the sub team to identify the survey recipients and many reminders to get responses.

-- We did have two presentations from practitioners that could be useful to include.

-- The survey results are useful and they contribute to our understanding of the group.  The conclusions are indicative of the views of the 14 practitioners.  That is an important sources of data.  That is not to say that there is not another way to understand how the URS is working -- that is from participants in this group.

-- Welcome input from any member of this WG.

-- General caution for all of the surveys and data collection: there seems to be a tendency to not look to the WG experience and viewpoints.

-- Consider sending the survey to those with fewer than 5 cases.

-- We do have a respondent perspective here (1 response out of 14).  

-- A quick data element: of the 870 cases there were only 38 cases that contained a response where legal Counsel was part of that case.  Very small universe.

Discussion from the chat:

Mary Wong: The Providers Sub Team have also noted a few operational communications issues with some registry operators and registrars.

Philip Corwin: While URS Guidelines might be beneficial, as URS is a supplement to UDRP the WIPO Guidance is relevant. Also, a lot of that guidance concerns shades of grey situations, whereas URS only for black-and-white -- so any supplementary guidance would likely be shorter

Lori Schulman: URS is intended for slam-dunk cases.  Not grey cases.  That the results  favor complainants demonstrates the intended purpose is fulfilled.

Michael R. Graham: Agree with the Practitioner Sub Team assessment.  

George Kirikos: I disagree with the entire subteam's assessment, then, for the reasons previously statement.

George Kirikos: What are the errors (+/-) of a sample of 14? It'll be like +/- 25% or something.

George Kirikos: Even in the smaller unrepresentative group of "repeat customers" (34), it's +/- 20%.

George Kirikos: That "structural" problem is one of the subgroup's own creation. When we designed the survey, it wasn't intended only for those who were involved in 5 or more disputes.

George Kirikos: Go back and collect more data --- it's easy.

Gerald M. Levine: I noticed there were a number of pro se respondents. Any reach out to those respondents?

George Kirikos: Send it to ALL parties, regardless of number of disputes.

Kristine Dorrain: How do you expect to get that information, George?

Greg Shatan: George, where did you get your population size of 300?  “Error rate” is only relevant to the extent that one seeks to claim this is representative of the whole population.

Brian Beckham: I would add to what Jason has said that there have been concerns raised about SMD files, I beleive by John Berryhill , and that this SMD file issue has been captured

George Kirikos: A number like 800 or more might be more appropriate, though.

George Kirikos: Even with a universe of 34, though, it's +/- 20%.

Greg Shatan: That’s a problem with your analysis then.  I said I didn’t know what the population was.

Greg Shatan: I never said my number was accurate, nor that it was “my” number.

George Kirikos: A guesstimate, i.e. 1000 upper limit (really 2000, since there are 2 sides to a dispute).

George Kirikos: Subtracting multiple cases, another guesstimate.

Greg Shatan: Thanks for providing your basis, George.

Kathy Kleiman: the presentation of John Berryhill and Doug Isenberg earlier... 

Mary Wong: A quick scan of the cases seems to show that (privacy/proxy aside) cases where a respondent engaged counsel may be fewer than 5% of all total cases, which is less than 20% of all the cases which saw a Response filed. 

George Kirikos: Some of those 14 people are likely participants of this Working Group, too. So, it would be elevating their input, to place them above other participants, since they were part of the survey.

Kathy Kleiman: survey anonymous

Michael R. Graham: @Phil -- Excellent points.  We should not lose sight of the forest for the tree of the survey.  All these surveys were intended to seek illumination, not to seek resolution.

Brian Beckham: So @Berry, that is 14 of the 20 that were surveyed?

Mary Wong: 38 cases out of 827 = less than 5% (as noted upthread). And of that 38, it's less than 20% of the total number of cases where a Response was filed.

Berry Cobb: I filtered Rebecca's spreadsheet that contains a column that list the Respondenet's Representative.  There were 38 cases that contained a representative.  A few contained privacy information, but ultimately narrowed down to 21 unique representatives.  John Berryhill had 3 cases.

Greg Shatan: The primary goal of the survey was not statistical extrapolation.

Berry Cobb: ....again this was just a very quick scan, subject to adjustment if more time is spent extracting that data set.

claudio: Goerge: I believe the purpose was to survey experienced practitioners, not registrants et al

George Kirikos: Let's suppose we only survey domain owners, when we sought data for UDRP reform? TM holders (representing complainants) would be up in arms.

Berry Cobb: and btw, of those 38 cases, 3 were denied.

Mary Wong: If you wish to review all the data and summary tables the Documents Sub Team collected and look at, the most recent versions are available here: https://community.icann.org/x/NgdpBQ 

Mary Wong: Staff is consolidating the various data tables into the primary URS Data Compilation Staff Report (an earlier version of which was presented to the full WG), and will circulate that when ready.

George Kirikos: 87% win rate for complainants when a response is filed is *much* higher than the win rate for complainants in UDRP cases where there's a response.

George Kirikos: (I believe it's closer to 50:50 in defended UDRP cases)

Gerald M. Levine: Not correct, George

Kristine Dorrain: ^This is likely data to show that complainants are generally filing cases only on clear-cut abuse cases that meet the  higher standard.

George Kirikos: What are your numbers, Gerald?

Gerald M. Levine: Very close

George Kirikos: 87% win rate for defended UDRPs?

Gerald M. Levine: Over the years it has run from 85% to 92% (roughtly)

George Kirikos: I'm thinking 3 member panels, true.

George Kirikos: Where it's closer to 50:50. You might be right for 1 member panels.

Gerald M. Levine: Correction for defended UDRPs. I think the % is 30% in Respondent's favor

 

b. URS Documents Sub Team

Slide 3: Potential Recommendations -- The Complaint

-- Overall things seem to be working, with some minor areas for improvement.

-- Additional policy recommendations must keep in mind that URS is intended to be a lightweight alternative to UDRP.

Action Item: Staff to find out if decoding software (public or from TMCH) is available to read SMD files, and whether it is possible to add relevant trademark info to an SMD.

Slide 4: Potential Recommendations -- The Notice

-- Be careful not to overload people, but action is to contact registry operators of the top (e.g., 25) gTLDs where URS czses have occurred (noted in the URS Staff Compilation Report).

Slide 5: Potential Recommendations -- The Response

-- Response fee for 15+ disputed domains -- can be flagged in the Initial Report for community input.

Slide 6: Potential Recommendations -- Standard of Proof

-- No data that pointed to a conclusion otherwise to changing the burden of proof.

-- Did identify the potential need for an examiner's guide.  Unlikely to be as comprehensive as the WIPO UDRP Overview since there are so few cases (<1000).

Slide 7: Potential Recommendations -- Defenses and Remedies:

-- URS is still relatively young.  The theory behind delay, it may be too early to tell.

-- Didn't see data for a strong need to change the suspension remedy, but could call it out for community input in the Phase 1 Initial Report.

Slide 8: Potential Recommendations -- Appeals and Overlapping Process Steps

-- Appeals in de novo review -- terminology needs to be standardized.  These are administrative issues:  template elements to be included in determinations; suggest that procedural history consistently indicate what happened previously.

Slide 9: Potential Recommendations -- Costs and Language

-- Consider developing guidance for examiners to assist with deciding what language to use in the URS proceeding and determination.

Slide 10: Potential Recommendations -- Abuse of Process and Education and Training

-- Documents Sub Team supports idea of creating a multilingual, basic FAQ for Complainants and Respondents-- Providers Sub Team may have additional suggestions

Slide 11: Potential Recommendations -- URS Providers and Alternative Processes to the URS

-- No specific recommendations from Documents Sub Team based on available data.

-- URS is already an alternative to the UDRP.

Discussion:

-- All of the findings and recommendations are meant to be presented to the full WG to consider.

-- Issue of laches and statute of limitations -- ridiculous to have 14-day response period.

Discussion from that chat:

George Kirikos: That idea isn't practical. If it's available for registation by anyone, a drop catching service can grab it.

claudio: registrants who lose URS decicions should not be able to RENEW the domain upon expiry

George Kirikos: @Claudio: I agree with you. Seems to be a poor implementation.

George Kirikos: Policy was to allow the URS winner to renew it, and keep the suspension notice.

George Kirikos: (URS winner ==>> URS complainant, if they won)

Berry Cobb: From a review of the domain disposition, I only found one case where the losing Respondent re-registered the domain after suspension.  Looking at the site, it appears to be consider legitimate use, although I wont claim to be an expert in that regard.

Berry Cobb: There are several cases after the domain suspensison was lifted that it was re-registered by what appeared to be a different Registrant.

Mary Wong: David had a few specific suggestions for operational/administrative improvements, which are now included in the Documents Sub Team's consolidated table (available at the wiki link posted upthread).

claudio: @berry, I'm not referring to re-registering, but merely renewal

Berry Cobb: @Claudio - my apologies.

David McAuley: Thanks Mary and i also had one potential policy issue as well in our report, outcome

Kristine Dorrain: The point of not tying up a domain in pepetuity for URS was: 1. The complainant didn't want it (otherwise they'd have filed a UDRP), 2. the registry/regsitrar didn't want to continue to pay ICANN fees for suspended domains, 3. there may be other, legitimate uses that the domain could be put to.

Mary Wong: @David, yes and that's been noted too :)

claudio: @berry no worres.. but you are correct that it doesn't happen often, but it happens enough to act as a deterrent for some brand owners

David McAuley: thanks Matry

David McAuley: Mary, that is

claudio: I'ved worked with some clients who are relunctant to bring URS cases after they've won and the registrant renewed

hilip Corwin: Setting aside dictionary words, if a domain targeted in a URS is identcal or substantially similar to a unique, non-dictionary trademark it is difficult to envision a non-infringing use by anyone other than the TM holder (noting that fair use criticism websites usually have an additional term in the domain name indicating that use).

Kathy Kleiman: The issue of "negotiated transfer" came up as a suggestion from some Practitioners -- which seemed to be a voluntary settlement -- with questions re: how to implement.

claudio: one issue we should consider is whether principles of res judicata (issue and claim preclusion) should be applied so a winning URS claimaint doesn't have to re-litigate the same facts under the UDRP (with a lower standard of proof) to obtain a transfer

George Kirikos: @Claudio: Ideally, if there was sufficient due process, there'd be an integrated single policy.

George Kirikos: So, one wouldn't have to do it twice. It would require some extra work to get it right, but I hope folks would consider that a potential goal.

 

c. URS Providers Sub Team

The full responses from the Providers are on the spreadsheet here: https://docs.google.com/spreadsheets/d/1I-qe_I4OkQT7IU_rjHMQVa9Ebj8Ik6vay1vr5Yt9ZIg/edit?usp=sharing

Recommendations:

Complaint:

-- Found some practices with ADN that raised some eyebrows.

SMD File:

-- Sub Team to ask all Providers to confirm whether their Examiners are able to obtain the jurisdiction information of the trademark/category of goods and services.

Administrative Check:

-- Sub Team to ask the ADNDRC how they conduct cross­checks to determine whether a domain name is already subject to an open and active URS or UDRP proceeding.

-- Sub Team to ask FORUM what triggers their suspicion that a domain name is subject to a pending URS or UDRP case.

Notice to Respondent -- Delivery:

-- WG to discuss whether changes may be needed to Provider (especially ADNDRC)’s operational rules to comply with URS Rule 2(a).

The Response -- Compliance Check:

-- Sub Team to review the following documents to consider whether further deliberation is needed:

Defenses -- Reasoning in Determination:

-- WG to further examine the divergent practice/requirements of Providers with regard to Examiner providing reasoning in support of their Determinations.

-- WG to deliberate on FORUM’s practice, which significantly deviates from that of ADNDRC and MFSD.

-- WG to discuss whether Providers should give further guidance to Examiners as to what basic elements should be included in every URS decision.

Technical Requirement:

-- WG to re­examine the URS technical requirements and discuss whether URS Technical Requirements 3 and Registry Requirement 10 should be amended.

Late Response Fee:

-- WG to discuss whether any of the late Response fees create a burden for the Respondent.

Allegation of an Abusive Complaint:

-- WG to consider potential recommendation on the incorporation of penalties for the abuse of the process by the Respondent in the URS Rules. The abuse of “what” needs to be clarified.

Complainant and Respondent Education:

-- Sub Team/WG to review the Notice of Complaint and Providers’ online forms/instructions before considering whether any additional educational materials should be developed.

Examiner Education and Training:

-- Sub Team to ask ADNDRC to elaborate on their panel selection processes.

Examiner:

-- WG to deliberate on these issues.

-- Sub Team to ask ADNDRC to confirm whether any of their Examiners voluntarily disclosed any conflict of interest.

-- WG to deliberate on whether any explicit standard for the removal of Examiners with particular background is needed (e.g., someone has repeatedly represented serial cyber squatters).

-- Sub Team/WG to examine the following cases to determine whether further deliberation is needed:

Discussion from the chat:

Mary Wong: For clarity, please note that this document from the Providers' Sub Team is limited only to those specific issues that the Sub Team noted may requrie follow up or policy deliberation. As Ariel has posted, the actual provider responses is available as a separate document on the wiki page.

George Kirikos: Nat made an excellent point today, see third comment at: https://domaininvesting.com/complainants-winning-more-at-wipo-each-year-but/#comments  (in relation to UDRP, but logic applies to URS too). One needs to weight "errors" in decisions by the value of the domain name.

George Kirikos: If the panel makes an incorrect decision on a $100,000 domain, that has more impact than "getting it right" on a 1000 cases involving $10 "throwaway" domains.

Paul Tattersfield: it should be left alone

Greg Shatan: If one were to follow that logic (not recommended) one would also have to consider the value of the Complainant’s rights as well.  However, I don’t think the “resale value” of a domain is germane in analyzing case outcomes.

Griffin Barnett: Agree w/ Greg

Michael R. Graham: @George K -- Weighting decisions by domain name valuation is an interesting concept -- but impossible to apply because domain names have no inherent or determinable value.

George Kirikos: @MichaelG: no inherent value?? Read DNJournal.com's weekly list.

Michael R. Graham: @Greg -- Agree "resale value" is not germane, even if determinable (which it is not).

Nat Cohen: @claudio - the URS decision would be based on the evidence presented, or lack of evidence presented if the respondent self-represents or fails to appear.  As we've seen respondents rarely engage an attorney for URS disputes.  A respondent may put more effort into developing defense for a UDRP dispute, and may engage an attorney if the transfer of a domain is at stake.  Wouldn't want to see an assumption that prevailing on a URS should lead to an automatic transfer order through the UDRP.

Michael R. Graham: @George -- resale price has no place in the analysis.

George Kirikos: @MichaelG: I'll happily buy Expedia's Hotels.com domain name for $1 million, since it has no 'inherent' value. :-)

George Kirikos: @MichaelG: some disputes are about more valuable assets, plain and simple. THat's why there are small claims courts, vs. higher courts.

Griffin Barnett: Yeah but determining whether the processes are working properly and as intended has nothing to do with the value of the domain name(s) at issue

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