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

Tue Feb 11 10:47:38 UTC 2020

Regardless of the percentage, I see no reason why there cannot simply be a rule that in ANY URS decision, the panelist must set forth the facts deemed established and the rationale for the decision.  That simply corrects the apparent problem without having to guess at the reasons used to reach the conclusion.

From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> on behalf of Gerald Levine <gmlevine at researchtheworld.com>
Date: Tuesday, February 11, 2020 at 1:47 AM
To: "'BECKHAM, Brian'" <brian.beckham at wipo.int>, 'Mitch Stoltz' <mitch at eff.org>, "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]

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
[Email                 Logo5]

From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org><mailto:gnso-rpm-wg-bounces at icann.org> On Behalf Of Nahitchevansky, Georges
Sent: Monday, February 10, 2020 1:37 PM
To: Greg Shatan <gregshatanipc at gmail.com><mailto:gregshatanipc at gmail.com>; gnso-rpm-wg <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]

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-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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