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

Tue Feb 11 00:46:12 UTC 2020

Of course in BT the domain names were confusingly similar to household
marks. It is trickier when complainant asserts its mark is well-known but
offers no evidence to establish it as a fact. The important point,
well-established in UDRP cases, is that mark owners are not given benefit of
the doubt on the bad faith requirement. This should equally be case with
URS. GmLevine

From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> On Behalf Of BECKHAM,
Brian
Sent: Monday, February 10, 2020 3:35 PM
To: Mitch Stoltz <mitch at eff.org>; gnso-rpm-wg at icann.org
Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS &
NOTES: RPM PDP WG 08 August 2018]

Mitch, all

Apologies that I missed last week's call and have not yet had a chance to
listen to the recording, but with respect to the below, just for one quick
reference, the BT v One in a Million case speaks to this:
http://www.bailii.org/ew/cases/EWCA/Civ/1998/1272.html.

Brian 

  _____  

From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org
<mailto:gnso-rpm-wg-bounces at icann.org> > on behalf of Mitch Stoltz
<mitch at eff.org <mailto:mitch at eff.org> >
Sent: Monday, February 10, 2020 9:04 PM
To: gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org> 
Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS &
NOTES: RPM PDP WG 08 August 2018] 

It would be inappropriate to presume cybersquatting from the use of a "well
known" brand name alone. There are any number of legitimate reasons for
registering <brand>.<new gTLD>. And we have no working standard for what
"well known" means, especially internationally. Cybersquatting requires
intent, and if some percentage of URS proceedings are presuming intent based
on no facts but the domain name itself, that's highly relevant information
that should not be buried here.

Mitch Stoltz
Senior Staff Attorney, EFF | 415-436-9333 x142
https://www.eff.org/donate | https://act.eff.org/ 

On 2/10/20 11:53 AM, cking at modernip.com <mailto:cking at modernip.com>  wrote:

Agree Georges.

We don't need a percent figure.  We can simply observe that ICANN needs
specific info for data collection/oversight & outline those required fields.

Cyntia King

O:  +1 816.633.7647

C:  +1 818.209.6088

From: GNSO-RPM-WG  <mailto:gnso-rpm-wg-bounces at icann.org>
<gnso-rpm-wg-bounces at icann.org> On Behalf Of Nahitchevansky, Georges
Sent: Monday, February 10, 2020 1:37 PM
To: Greg Shatan  <mailto:gregshatanipc at gmail.com> <gregshatanipc at gmail.com>;
gnso-rpm-wg  <mailto:gnso-rpm-wg at icann.org> <gnso-rpm-wg at icann.org>
Subject: Re: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS &
NOTES: RPM PDP WG 08 August 2018]

Thank you Greg.  I was looking for that email and went back through what I
had reviewed.  The bottom line is that of the 103 cases that had been marked
as having no rational, there were 45 that included enough to know what the
case had been about and the rationale.  That meant that 7% just reiterated
the standard and ruled in favor of a party with nothing to deduce the
rationale.  Of those 7%, though, a number of cases involved domain names
that were based on a well-known trademark and it would not take much to
understand that a domain name that was simply BRAND + gTLD likely involved
cybersquatting.  So in my view while there are some cases that had no
rationale, I do not believe we are talking overall about cases that involved
rulings with no explanations regarding domain names that primarily involved
a generic word with a gTLD.  Most of the 58 cases (or 103) that arguably had
no specific rationale involved domain names that related to trademarks that
are known, which again suggests something about the ruling.  Put another
way, there is a conceptual difference between a case that involves a domain
name based on a well-known brand such as <cocacola.beverage> and one that
involves a generic word such as <fashion.clothes>.  If the cases that have
no articulated rationale primarily involved the latter type of domains, I
would be much more concerned.  But if they mostly relate to known brands,
I'm not sure that this suggests that there were errors committed by the
panelist.  Also, I do not believe that the 58 decisions at issue actually
resulted in any appeals, which does suggest that perhaps the decisions were
not unfounded.

In any event, rather than go back and forth about whether we are talking
about 7% or 13% of cases without a stated rationale, I think the solution is
to just say that there were several cases that had no clearly stated
rationale without getting into percentages. After all, we are more or less
in agreement that close to 90% of the cases had articulated rationale and
that there should be some tweak to address the minimum of what a URS
decision should provide. 

Georges Nahitchevansky        

From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org
<mailto:gnso-rpm-wg-bounces at icann.org> > On Behalf Of Greg Shatan
Sent: Monday, February 10, 2020 1:42 PM
To: gnso-rpm-wg <gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org> >
Subject: [GNSO-RPM-WG] The 7% Solution for URS Rationale [was: ACTIONS &
NOTES: RPM PDP WG 08 August 2018]

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
<mailto: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
<mailto:rtushnet at law.harvard.edu> >, Ariel Liang <ariel.liang at icann.org
<mailto:ariel.liang at icann.org> >, gnso-rpm-wg at icann.org
<mailto:gnso-rpm-wg at icann.org>  <gnso-rpm-wg at icann.org
<mailto: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
<mailto: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 <mailto:ariel.liang at icann.org> >;
gnso-rpm-wg at icann.org <mailto: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
<mailto:gnso-rpm-wg-bounces at icann.org> > on behalf of Ariel Liang
<ariel.liang at icann.org <mailto:ariel.liang at icann.org> >
Sent: Wednesday, August 8, 2018 3:56:54 PM
To: gnso-rpm-wg at icann.org <mailto: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-0
jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=gcgRms-bmezGQQmwX
CqLMQXOdSv3gly_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_di
splay_gnsosoi_George-2BKirikos-2BSOI&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M
4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kz
t4bzMuwnHU&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-f
ile-contain
<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearin
ghouse.com_help_faq_which-2Dinformation-2Ddoes-2Dsmd-2Dfile-2Dcontain&d=DwMG
aQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=
CypdnKxuYaImNW0ttGO-h5FbHiLxMQ2kzt4bzMuwnHU&s=v3df_qE8Dw_U7YY7_IfhIMgGSxt-a4
4LbNskorrbTIg&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.  

  _____  

Confidentiality Notice:
This communication constitutes an electronic communication within the
meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section
2510, and its disclosure is strictly limited to the recipient intended by
the sender of this message. This transmission, and any attachments, may
contain confidential attorney-client privileged information and attorney
work product. If you are not the intended recipient, any disclosure,
copying, distribution or use of any of the information contained in or
attached to this transmission is STRICTLY PROHIBITED. Please contact us
immediately by return e-mail or at 404 815 6500, and destroy the original
transmission and its attachments without reading or saving in any manner.

  _____  

***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax
advice contained in this communication (including any attachments) is not
intended or written to be used, and cannot be used, for the purpose of (i)
avoiding penalties under the Internal Revenue Code or (ii) promoting,
marketing or recommending to another party any transaction or matter
addressed herein.

_______________________________________________
gnso-rpm-wg mailing list
gnso-rpm-wg at icann.org <mailto: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 <mailto:GNSO-RPM-WG at icann.org> 
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________
By submitting your personal data, you consent to the processing of your
personal data for purposes of subscribing to this mailing list accordance
with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the
website Terms of Service (https://www.icann.org/privacy/tos). You can visit
the Mailman link above to change your membership status or configuration,
including unsubscribing, setting digest-style delivery or disabling delivery
altogether (e.g., for a vacation), and so on.

World Intellectual Property Organization Disclaimer: This electronic message
may contain privileged, confidential and copyright protected information. If
you have received this e-mail by mistake, please immediately notify the
sender and delete this e-mail and all its attachments. Please ensure all
e-mail attachments are scanned for viruses prior to opening or using. 

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20200210/7411e6a5/attachment-0001.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.jpg
Type: image/jpeg
Size: 5366 bytes
Desc: not available
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20200210/7411e6a5/image001-0001.jpg>