[gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018

gmlevine at researchtheworld.com gmlevine at researchtheworld.com
Fri Aug 10 17:34:18 UTC 2018


I just want to jump in for the record regarding <opentime.com>.  I have no skin in this exchange.  The topic started out with URS decisions and suddenly swerved to "wrong" UDRP decisions.  The <opentime.com> decision is not a "wrong" decision if by wrong one means that the record was crystal clear in Respondent's favor. As I read Georges' decision, Respondent's representative did less than a stellar job in presenting a defense: "Given the misrepresentations, conflicting and unsubstantiated statements, and lack of explanations by Respondent, this Panel based on the evidentiary record place before it, has doubts about the credibility of Respondent's claim of prior use of OPEN TIME and thus concludes that Complainant has prior and superior rights in OPENTIME."  I take the decision to be a cautionary tale, one that defense counsel should pay attention to and learn from. Fortunately, Kyle Burns went to litigation counsel who understand how to marshal a defense (or in this case since the matter was settled by declaration that the registration was not unlawful, a proper claim under the ACPA).  Gmlevine 

-----Original Message-----
From: gnso-rpm-wg <gnso-rpm-wg-bounces at icann.org> On Behalf Of Nahitchevansky, Georges
Sent: Thursday, August 9, 2018 6:16 PM
To: George Kirikos <icann at leap.com>; gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018

George K.  You miss the point.  No one is arguing against discussing the issue on what a decision should contain or addressing the 7% issue.  The renumeration point goes to the point of how detailed, etc a decision has to be in an expedited matter where a Panelist gets paid very little and has to turn around a decision quite quickly.  It's all about finding a workable balance if you want quality panelists.

On your panelist point, there is something that some do not seem to appreciate or want to understand.  A panelist usually spends much time reviewing a matter and the submissions made.  As with any case, the claims will ultimately rise or fall on the parties' submissions and evidence and on how well the parties marshal/present their evidence and arguments.  Ultimately, many of the decisions will turn on the evidence presented to the Panel and on the quality and credibility of such evidence.  

Georges Nahitchevansky       
Kilpatrick Townsend & Stockton LLP  
The Grace Building | 1114 Avenue of the Americas | New York, NY  10036-7703   
office 212 775 8720 | fax 212 775 8820
ghn at kilpatricktownsend.com | www.kilpatricktownsend.com


-----Original Message-----
From: gnso-rpm-wg <gnso-rpm-wg-bounces at icann.org> On Behalf Of George Kirikos
Sent: Thursday, August 9, 2018 5:43 PM
To: gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018

As Michael correctly noted, *all* cases should have reasons to support the determination. That's basic quality control that is missing here.

Georges N is trying to mix in panelist remuneration to the debate, which is not relevant. I'm sure he considers himself a "good"
panelist, but even he makes mistakes in judgment, which isn't correlated to what he's paid. Case in point is the OpenTime.com UDRP:

http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-2328

which he ordered transferred to the complainant (in a long decision, which took time to write presumably). As it turns out, this went to court, and the outcome was that the domain stays with the domain owner (see attached judgment). So, I don't think "getting it right" is correlated in any way with the remuneration. You can be paid a lot and "get it wrong", or you can be paid peanuts but "get it right" -- it's all about one's standards.

For a given remuneration, panelists are expected to do the job with diligence, which includes giving reasons so that both sides (and the
public) understand why the determination was made. Panelists shouldn't cut corners as some form of protest over pay that they willingly agreed to do for the job. Given how short URS complaints are (500 words max) and typical reading speed (100+ words per minute), the actual hourly rate of URS panelists is not insignificant (I believe they are batched in groups of 5 cases per panelist, too). Most responses start off with a standard template, so it should only take minutes to do proper reasons in most cases (especially the "slam dunk"
ones).

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/


On Thu, Aug 9, 2018 at 5:14 PM, Nahitchevansky, Georges <ghn at kilpatricktownsend.com> wrote:
> The issue of costs is that Panelists get paid a fairly low amount from 
> the
> $300 or so filing.  If you want decent panelists, we  can’t make the 
> process so burdensome that folks do not want to get involved.  I 
> recognize that being a panelist is more or less pro bono work, but the 
> more requirements you impose on the decision the more burdensome it 
> will become (particularly as this is an expedited proceeding with a short turn-around time frame).
> The bottom line is that in 93% of the cases (or even your 87% number) 
> there were details provided (some more robust than others) – so 
> panelists are as a whole providing decisions where the logic can be 
> ascertained.  We just need to come up with something easy and workable 
> to address the 7% issue (or 13% by your count) in the context of an expedited proceeding.
>
>
>
> Georges Nahitchevansky
> Kilpatrick Townsend & Stockton LLP
> The Grace Building | 1114 Avenue of the Americas | New York, NY
> 10036-7703 office 212 775 8720 | fax 212 775 8820 
> ghn at kilpatricktownsend.com | My Profile | vCard
>
> From: Tushnet, Rebecca <rtushnet at law.harvard.edu>
> Sent: Thursday, August 9, 2018 4:32 PM
>
>
> To: Nahitchevansky, Georges <ghn at kilpatricktownsend.com>; Ariel Liang 
> <ariel.liang at icann.org>; gnso-rpm-wg at icann.org
> Subject: Re: ACTIONS & NOTES: RPM PDP WG 08 August 2018
>
>
>
> I would think that the rules should aim for decisions that meet 
> minimal standards for everyone, not just for most people.  I have 
> heard cost mentioned before, but I'm not sure what makes the 87% of 
> decisions with at least a sentence explaining the basis for decision 
> more costly or noticeably harder to create (especially if standard 
> forms are provided), since I presume that the panelist has a basis for 
> decision in his or her mind and thus doesn't need to do more work to 
> generate that reason. Does NAF charge more for decisions that specify their reasoning?
>
> ________________________________
>
> From: Nahitchevansky, Georges <ghn at kilpatricktownsend.com>
> Sent: Thursday, August 9, 2018 4:02:07 PM
> To: Tushnet, Rebecca; Ariel Liang; gnso-rpm-wg at icann.org
> Subject: RE: ACTIONS & NOTES: RPM PDP WG 08 August 2018
>
>
>
> Thank you for your comments.  Well, while the sky is falling is 
> obviously not the standard but saying and acting as though something 
> is a significant due process issue, when it isn’t, is quite 
> misleading.  I think we can agree that what should be in a decision 
> should be discussed (as noted in the documents already), but that has 
> to be tempered by the fees being charged for a URS, the fees paid to 
> panelists from such and the time needed to draft a decision.  I just 
> thought I would make this clear because some editorializing was being thrown out up front.  Your welcome!
>
>
>
> Georges Nahitchevansky
> Kilpatrick Townsend & Stockton LLP
> The Grace Building | 1114 Avenue of the Americas | New York, NY
> 10036-7703 office 212 775 8720 | fax 212 775 8820 
> ghn at kilpatricktownsend.com | My Profile | vCard
>
> From: Tushnet, Rebecca <rtushnet at law.harvard.edu>
> Sent: Thursday, August 9, 2018 3:35 PM
> To: Nahitchevansky, Georges <ghn at kilpatricktownsend.com>; Ariel Liang 
> <ariel.liang at icann.org>; gnso-rpm-wg at icann.org
> Subject: Re: ACTIONS & NOTES: RPM PDP WG 08 August 2018
>
>
>
> I'm happy to take this up on the merits (among other things, I don't 
> recall saying the sky was falling or understanding that there was 
> consensus that sky disaster was the standard for recommending fixes) 
> but I expect we will repeat ourselves a lot when we get to the "for WG 
> Discussion" parts. My current request is for this suggestion/potential 
> recommendation, which is already present in the document, to be 
> repeated or otherwise cross-referenced so that it is part of more than 
> Defenses in the main document.  Thank you!
>
> ________________________________
>
> From: Nahitchevansky, Georges <ghn at kilpatricktownsend.com>
> Sent: Thursday, August 9, 2018 3:27:09 PM
> To: Tushnet, Rebecca; Ariel Liang; gnso-rpm-wg at icann.org
> Subject: RE: ACTIONS & NOTES: RPM PDP WG 08 August 2018
>
>
>
> Rebecca:
>
>
>
> I do not disagree with the notion that we should discuss what a 
> decision should contain, but I don’t think we have a consensus as to 
> what that should be in the URS context (given the pricing of URS 
> proceedings).  Moreover, a review of the URS cases makes your 13% 
> number and comment of “significant due process and implementation 
> issues” point questionable.  At NAF for example, there were 827 cases that that your research assistants reviewed.
> I found a total of about 103 that your team flagged as having no 
> articulated decisions.  I would agree that in 58 cases the decisions 
> lacked details, but in 45 cases there were details that sufficiently 
> let you know what the case was about and the basis of the resolution.
> I am sure we can argue about these 45 cases and whether they should 
> say more, but ultimately we are really only talking about 58 cases 
> that actually do not have any specific details and just provide the 
> standard and a resolution (although I note that most of these cases 
> involve domain names based on fairly well known marks such as NISSAN, 
> DATSUN, TEXACO, BLOOMBERG, BNP PARIBAS etc., so you pretty much know 
> what trademark was involved.).  In all, we are really talking about 7% of the cases that have no details, which is not significant.
>
>
>
> Again, we can discuss what the decisions should provide, but I don’t 
> think we ought to be qualifying this as a “significant” issue per se 
> (as 93% of them have details).  There are other issues being 
> considered in the URS review that have better percentage numbers as an 
> issue that are viewed as not being significant per se. The point is 
> that the URS looks to be working appropriately and there are probably 
> some tweaks and refinements needed but this is not sky is falling issue.
>
>
>
>
>
>
>
>
>
>
>
>
>
>
>
> From: gnso-rpm-wg <gnso-rpm-wg-bounces at icann.org> On Behalf Of 
> Tushnet, Rebecca
> Sent: Thursday, August 9, 2018 1:22 PM
> To: Ariel Liang <ariel.liang at icann.org>; gnso-rpm-wg at icann.org
> Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018
>
>
>
> My apologies for missing the meeting.  Comment on the big document:
>
> This is currently only covered under Defenses but I would put it for 
> discussion/recommendations under 2. Examiners’ Guide/3. Other Issues 
> because it goes beyond defenses: Decisions should contain basic 
> information, including what the trademark is, what the finding of 
> abuse is and/or what findings are on any defenses—13% of decisions did 
> not, and this raises significant due process and implementation issues.
>
> ________________________________
>
> From: gnso-rpm-wg <gnso-rpm-wg-bounces at icann.org> on behalf of Ariel 
> Liang <ariel.liang at icann.org>
> Sent: Wednesday, August 8, 2018 3:56:54 PM
> To: gnso-rpm-wg at icann.org
> Subject: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018
>
>
>
> Dear All,
>
>
>
> Please see below the action items and notes captured by staff from the 
> RPM PDP WG call held on 08 August 2018 (17:00-18:30 UTC). Staff have 
> posted to the wiki space the action items and notes.  Please note that 
> these will be high-level notes and are not meant as a substitute for 
> the recording. The recording, AC chat, and attendance records are posted on the wiki at:
> https://community.icann.org/x/uwNpBQ
>
>
>
> Best Regards,
>
> Ariel
>
>
>
> Ariel Xinyue Liang
>
> GNSO Policy Support Specialist
>
> Internet Corporation for Assigned Names and Numbers (ICANN)
>
>
>
> ==
>
> ACTION ITEMS:
>
> Brian Beckham to send to the WG a WIPO FAQ with regard to “Doe Complaint”.
> Renee Fossen to provide more information on HSTS-preloaded domain 
> suspension issues in the written responses.
> Staff to recirculate the Super Consolidated URS Topics Table document 
> WG members to provide substantive comment and raise anything they 
> believe is missing on the WG mailing list by COB Tue, 14 Aug. 
> Co-Chairs will then discuss among themselves to determine further actions/process.
> WG members to finish reviewing the rest of the Super Consolidated URS 
> Topics Table document, including page 24-35, during next week’s call. 
> Later period to discuss larger policy issues.
>
>
>
> NOTES:
>
> Review Agenda/Statements of Interest
>
> George Kirikos has become a member of the At-Large Community:
> https://community.icann.org/display/gnsosoi/George+Kirikos+SOI
>
>
>
> General Comment on the Super Consolidated URS Topics Table Document
>
> The topics in the table were developed by the WG members and 
> deliberated on by the WG & URS Sub Teams. Each Sub Team then did very 
> substantial work on data collection and reviewing what came back. 
> While the actual Sub Team recommendations and suggestions captured in 
> this document are what is intended the WG should discuss - to see if 
> it wishes to develop policy or operational recommendations - 
> discussion over what should be on the actual list of topics should not 
> be reopened unless the WG agrees to do so. We encourage all WG members 
> to review all the previous reports from each Sub Team, and all the 
> documents they worked on. They are linked in this Super Consolidated document (page 2).
> The Super Consolidated document is a summary of findings and 
> suggestions by the Sub Teams. The Table does not mean to 
> limit/restrict recommendations from the WG members. If there is any 
> issue overlapping with UDRP, can possibly be carried over to the phase II of the PDP.
> Is it possible to add additional topics to the Super Consolidated 
> Table? One WG member said that access to the Courts, for example, is a 
> topic he raised, which isn't in the table. Statute of Limitations, 
> whether URS should apply to legacy gTLDs as a consensus policy, are 
> just a few of the topics not in the table. He brought it up in November 2017 (see:
> https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html ) 
> and it was reflected in a later document. That's a critical issue for 
> registrants. if they don't have access to the courts to challenge a 
> URS decision, then it's a huge denial of their rights.
> While the chart is not meant to foreclose further discussion, it is a 
> good faith attempt at capturing the work of the sub teams.  The 
> purpose of today's, and likely the next few, calls was to make sure 
> this was an accurate and comprehensive reflection of our discussions 
> so far.  That said, WG members should bear in mind that we are seeking 
> consensus, so items which are unlikely to achieve that may not be 
> appropriate to reflect as a recommendation, but could be included in 
> public comments on the Initial Report.  Also, before adding items to 
> this chart, we will want to work with staff to see whether such topics 
> was previously discussed, and if so, the level of agreement/consensus.  
> In other words, it is not necessary final, but is equally an 
> opportunity to reintroduce topics which have been discussed, but for which consensus is/was not possible.
> Could we create a list of "missing issues" -- a list of issues raised 
> in this call (and calls to follow); we can evaluate the nature and 
> weight of these ideas later.
> Regarding the Action Items highlighted in column 3 of the table, 
> Providers ST will do a first pass of the responses from the Providers 
> to the follow-up questions, and then discuss the issues that they 
> identified and proposed suggestions with the full WG.
>
>
>
> Limited filing period (page 3)
>
> One WG member believes that there should be limitation for filing 
> period to bring URS Complaints, so the domain registered many years 
> ago would not be subject to unfair treatment. He said a registrant who 
> owns a domain for 20 years, for example, shouldn't have to be 
> concerned about a policy that can take their domain down with very short time period to respond.
> Other WG members said this was discussed, and did not achieve agreement.
> That would only even be an option if the trademark pre-dated. This is 
> unlikely to be a situation in practice where a URS was brought because 
> it would probably not be a "slam dunk" case after 20 years unless 
> there had been a change of circumstances.
> On the issue of delay and laches - as reported by the Docs Sub Team, 
> the data did not provide any basis for which a policy recommendation 
> should be made. The Providers and Practitioners Sub Teams also did not 
> uncover any specific issues that came to either practitioners' or providers' attention.
>
>
>
> Administrative Review (page 3-4)
>
> One WG member asked whether ICANN should bring Providers into 
> contractual relationship in order to enforce the URS Rules & 
> Procedures. Another member said it probably need to be ICANN’s legal 
> department to enforce the rules & procedure.
> URS Providers have MoU with ICANN. Whether it is ICANN’s compliance 
> department or legal department to enforce the rules & procedures, it 
> should not be controversial that Providers must abide by them.
> An MOU could be legally enforceable, depending on the circumstances.
>
>
>
> 500-word Complaint limit (page 4-5)
>
> ·        On 500-word Complaint Limit - Practitioners' survey results were
> split (out of 12, 5 agree it's sufficient, 4 disagree); results 
> included feedback from some that the word limit was too low: 
> "arbitrary and often insufficient" and "should be slightly increased".
>
> ·        One member said he understands and generally agrees with the
> decision not to suggest an expansion of the word limit, he wonders if 
> there aren't situations (multi- domain challenges, etc.) where a 
> Complainant or Respondent might be given the opportunity to request an 
> expansion. This point can be captured for decisional phase.
>
> ·        Another member suggested that perhaps providers can provide stats
> on the average word length of complaints, to see how close to the 500 
> words they are at present. (i.e. a table of distributions, e.g. 10% 
> under 200 words, 20% between 201 and 300, etc.)
>
>
>
> Amending the Complaint in light of GDPR/Temp Spec (page 5-6)
>
> One member believes that 2-3 days might not be a good rule (e.g. 
> weekends, time to research, etc.). Maybe 5 business days.
> WIPO’s approach to “doe complaints” has been very helpful and provides 
> some comfort that the lack of true registrant/registrant organization 
> data masked due to GDPR will not result in a deficient complaint for 
> an omitted respondent.
> ACTION ITEM: Brian Beckham to send to the WG a WIPO FAQ with regard to 
> “Doe Complaint”.
> Forum is asking for amendment of the complaint in UDRP - under the 
> rules that's not allowed in URS.
>
>
>
> SMD Files (page 6-7)
>
> SMD files are used for limited purpose of demonstrating the use.
> Recollection is that SMD files would be passed to the Examiners and 
> relay the critical information related to the TM registration. That's 
> why some people are surprised by the limited info SMD files would provide.
> The SMD files contain some basic human-readable information, with the 
> rest of the information coded. For example, the trademark itself is 
> human-readable but the applicable Nice classification is coded. A SMD 
> file is used by registries/registrars for validation, and as Greg 
> noted, to demonstrate use. From the TMCH provider:
> http://www.trademark-clearinghouse.com/help/faq/which-information-does
> -smd-file-contain If the intent of the STI was that the SMD file would 
> be a file summary, that got lost somewhere along the way, way before 
> the SMD file was designed by the TMCH providers.
> Rules 3(b)(v) 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 It might be useful to look at the spec that they relied 
> on.  But the real question is how should the examiner get the relevant 
> data about the Complainant’s mark. The SMD file is probably not the 
> answer, if it was ever intended to be.
> the Examiner is not required to second-guess the SMD file. Its 
> existence is sufficient that the mark has had use validated by the TMCH.
>
>
>
> Other Topics (page 7-8)
>
> These are policy proposals can be brought up when WG members are 
> proposing changes to the URS policy itself. Charter asks us to address 
> the question whether the URS should become a consensus policy 
> applicable to legacy domains. Charter is not specific regarding 
> whether such discussion should occur in phase I or phase II. This 
> feedback illustrates that the ST didn't get to propose policy changes, 
> it is for the WG to discuss and propose changes.
> when we reference the STI and IRT reports, we need to keep in mind 
> they only had about 1-2 months to complete their work and produce a 
> report; they were not standard PDP working groups and had limited 
> charters and mandates, which were set by the Board This is feedback 
> from one Provider, who may want to grow their business.
> Practitioners survey are from Complaints' side. Need to have a 
> balanced solution when considering the input.
> There were plenty of practitioners that represent registrants in the 
> Subgroup, although their experience was largely with the UDRP.
>
>
>
> Duration of response period (Page 11)
>
> One member believes that if the URS continues in its current form, it 
> would affect valuable domain names. The ones the registrants that do 
> want to defend them, 14 days are not sufficient. 20 days may be more 
> appropriate. It should be based on the age of the domain name. If a 
> domain is 3 months, it will have a shorter period to respond. If you 
> own a domain name for 5-10 years, response period would be longer so less urgency.
> Several other WG members disagree. The URS is supposed to be an 
> expedited proceeding so increasing the length of time of a streamlined 
> proceeding defeats the purpose.  At most, there could be an additional 
> 3 or 4 days extension period for cause. The point is that there are 
> enough circumstances that give rise to the URS 'quick response' that 
> we should NOT make assumptions into policy.  It is an assumption that 
> an "aged" domain would not require a fast response. In Mexico, we have 
> not been able to file a domain name case due to Courts ignorance about 
> the subject and also, because it could take years to be solved. We're 
> spinning out fo control - extending the time to respond to URS cases 
> just because a domain registration is not new defeats the purpose of 
> fast action to take down an infringing domain once it's discovered. 
> The URS is meant to address clear and convincing cases of 
> infringement. A person registers a domain name for less than $50 and 
> brand owner find out about at some point and then files an injunction in court for tens of thousands of dollars.  Where is the balance.
>
>
>
> Examiners Guide (page 13)
>
> The WIPO guidance for examiners took 1500 hours to develop.
> The WIPO guidance is relevant to the URS, the elements are shown are 
> the same and the differences include the burden of proof, word limit, 
> etc. A lot of WIPO guidance goes to the shade of grey issues. URS is 
> for clear black/white cases, so if there is a URS guidance it would 
> likely be abbreviated.
>
>
>
> Duration of Suspension Period & Review of Implementation (page 21-23)
>
> One WG member suggests to find out how much cost for registries & 
> registrars to comply with the URS rules and procedures. Need to get 
> data/feedback from the registries/registrars.
> Other WG members are not sure "cost of implementation of URS" for 
> Registries/Registrars is relevant to effectiveness of URS. We don't 
> need to do a cost/benefit analysis (the costs & benefits aren't 
> ICANN's), the providers, registrars, registries need to be asked if 
> they are overburdened by the costs of compliance.
> There is an action item to contact the registries/registrars about 
> these issues. Timing TBD due to Sunrise & Claims survey launch.
>
>
>
> Other topics (page 23-24)
>
> One WG member thinks the HSTS issue is not difficult to fix. The 
> Providers need to improve their technical applicability to resolve the 
> issue. Renee Fossen from Forum disagrees.
> ACTION ITEM: Renee Fossen to provide more information on 
> HSTS-preloaded domain suspension issues in the written responses.
>
>
>
>
>
> NEXT STEPS
>
> ACTION ITEM: Staff to recirculate the Super Consolidated URS Topics 
> Table document and ask all WG members to provide substantive comment 
> and raise anything they believe is missing on the WG mailing list by COB Tue, 14 Aug.
> Co-Chairs will then discuss among themselves to determine further 
> actions/process.
> ACTION ITEM: WG to finish reviewing the rest of the Super Consolidated 
> URS Topics Table document, including page 24-35. Later period to 
> discuss larger policy issues.
>
>
>
>
>
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>
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