2018-02-21 Sub Team for URS Practitioners

Notes/ Action Items

Action Items:

1. Staff will prepare a Google spreadsheet of the list of practitioners.

2. Staff will prepare a Google doc with the questions and arrange them in buckets.

Notes:

1.  Overview of scope of work and selection of Sub Team chair(s) (if desired): Jason Schaeffer volunteered to Chair.

Scope of Work

-- Look to the expertise of this group on identifying practitioners.

-- Brainstorm on scope and nature of concerns to help drive the questions.

2.  Discussion:

 a) Identify a list of experienced URS practitioners:

-- Looking to identify a set of experienced URS practitioners.

-- Wondering if we should include on the agenda how we do the outreach to these practitioners?  What do we ask them?

-- Start filling in a spreadsheet of practitioners.

-- Start with who we know now and add to it, from URS cases.

-- Think it is important to think on the practitioner side -- there are a lot of people who practice in this space, but others who have decided not to do URS, but use UDRP instead.  Get insight from people who practice in online enforcement and find out why they don't use the URS.

List of Practitioners: David Taylor, John Berryhill, Richard Biagi... URS attorneys, yoyo.email of Dunstable, International, GB.; Doug Eisenberg, David Bernstein, Flip Petillon, Zak Muscovitch, CSC Digital Brand Services of Wilmington, DE (representative to TM owners), Mark Monitor, Stobbs Julius E Stobbs of Cambridge  (does a lot of the Virgin work), David E. Weslow of Washington, DC, China Trademark Association to help identify practitioners.

b) Develop a list of questions directed at these practitioners:

Organization: Seems that we will have procedural issues, substantive issues and practical issues (filing mechanics, word limitations, etc>)  Should we break up our work into different buckets?  The third bucket could be tactics and approaches or something similar, to cover questions to both URS and non-URS practitioners, eg those that chose alternate methods — UDRP, litigation, etc

Questions:

-- Do they use TMCH or a printout from active web sites.  Why they use one for evidence of use over the other one, for establishing the claim.

-- .SMD file -- is it a good basis for proof of use of the mark?  If not, what would they recommend?

-- Threshold question: whether or not a practitioner is choosing to use the URS and if not why are they bypassing the URS?

-- If they are bringing a claim are they happy with the process?  Is the process clear?  Any procedural problems?

-- Notice: Are practitioners finding that the notice is getting through to the registrant and which one is getting through?  Hard copy, email, etc.?

-- How do the practitioners feel about the ability to refile after 6 months, appeal process?  The extended mechanisms.

-- Questions on the burden of proof and the remedies available.

-- The appeal process -- what do they think about it?  Its use by domain name holders? What can we do to make it better?  May be very few cases that have appealed, is it being used?

-- Fees: Ask about whether the fee is too high or too low?  Whether or not the fee structure works for the URS and does it factor into a brand protector whether or not to file.

-- Response fee for multiple filing.

-- What do they think about the suspension for the duration of the registration?  Whether to have an extended time of the suspension.  The suspension may also apply to the decision whether or not to use the URS as a protection mechanism.

-- The way that the brand owner and practitioners -- how do they know about the URS? 

-- How do registrants know about the responses to the URS and the affirmative defenses?  Question about URS awareness generally and how it is desseminated to brand owners and others, and the effectiveness of that.

-- How do the practitioners feel about the expertise of the examiners and the fairness of the decisions.  Whether or not the practitioners are satisfied with the examiners and the fairness of their decisions.  Also gets to the issue of training of examiners.

-- Whether or not there should be something analogous for the URS that gives more certainty to the structure.  Should we have a analogous WIPO's reviews.

-- Apart from looking at remedies and effectiveness -- look at the burden of proof, is it clear, does it need to be modified?  Bad faith, and/or discussion.

-- Should there be more guidance regarding what meets the "clear and convincing" standard?  This might get into training for providers, for the larger group.

-- Other thought regards WHOIS issues  (innacuracy of such) and how that impacts -- particularl with the GPDR

3.  Next steps/next meeting:

-- Next steps:  Staff to produce Google docs and circulate.

-- Next meeting: 28 February at 1800 UTC.