[GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS & NOTES: RPM PDP WG 08 August 2018]

Mon Feb 10 18:42:03 UTC 2020

All,

Here is the Georges Nahitchevansky email that was referred to in last
week's discussion of the percentage of URS decisions that lacked a
rationale.  There was a subsequent discussion, so I recommend going back to
the list if you want to see the follow-up.

Greg

---------- Forwarded message ---------
From: Nahitchevansky, Georges <ghn at kilpatricktownsend.com>
Date: Thu, Aug 9, 2018 at 3:27 PM
Subject: Re: [gnso-rpm-wg] ACTIONS & NOTES: RPM PDP WG 08 August 2018
To: Tushnet, Rebecca <rtushnet at law.harvard.edu>, Ariel Liang <
ariel.liang at icann.org>, gnso-rpm-wg at icann.org <gnso-rpm-wg at icann.org>

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
<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_uwNpBQ&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=gcgRms-bmezGQQmwXCqLMQXOdSv3gly_0bWYNSuRlY8&e=>

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
   <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_gnsosoi_George-2BKirikos-2BSOI&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=8-YfNNseZ7YW77BHJT9ciEr_I08JQcazWKn1rxNI900&e=>

*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
   <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearinghouse.com_help_faq_which-2Dinformation-2Ddoes-2Dsmd-2Dfile-2Dcontain&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=v3df_qE8Dw_U7YY7_IfhIMgGSxt-a44LbNskorrbTIg&e=>

   - 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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