[GNSO-RPM-WG] ICE domain name seizures -- potential source of data for RPM PDP?

Greg Shatan gregshatanipc at gmail.com
Fri Jan 4 21:15:46 UTC 2019


It seems unlikely that a single list exists, since agencies from 26
countries plus Europol and Interpol were involved in the criminal seizures,
and an untold number of entities were involved in the civil seizures.

We can glean some information from the latest ICE press release, as well as
previous press releases.

The domain names cited in the latest press release were chinaseatbelt.com,
airbagpart.com, chinasafetybelt.com, fareurope.com, far-Europe.com, and
PRBlogics.com.  The first three domains appear to be using these terms in
their generic meanings, while the next two are the domains based on the
name of the company operating the websites (selling counterfeit seatbelt
and airbag parts) found at the first three domains. PRBlogics.com is
derived from the name of the company selling counterfeit chips (primarily
field programmable gate arrays, apparently).  None of these domain names
has relevance to ICANN RPMs.

We can also see that the target of Operatio In Our Sites is the sale and
distribution of counterfeit goods — not the domain names per se. That is a
major distinction from RPMs.  Of course, it’s possible that some of the
websites selling counterfeit goods had trademark-infringing domain names,
too (in prior iterations, both cheapjerseysite.net and cheapnfljerseys.com
were seized, along with 300+ other domains).  But given the focus on
counterfeit goods in Operation In Our Sites, these actions are clearly not
a substitute for ICANN RPMs.

Looking at prior descriptions In Our Sites efforts, they specifically
discuss “websites which closely mimicked legitimate websites” — in other
words “copyright-infringing websites.”  So, IP claims involved here may be:
(1) trademark, based on the trademark being used on counterfeit goods, (2)
copyright, based on copying of legitimate website content, (3) copyright,
based on copyright in the goods themselves (e.g., movies, music, software,
games, decorative goods, etc.) and (4) trademark, based on an infringing
domain name.  Only the last is actionable under the RPMs we’re charged with
reviewing.

Prior descriptions also note that websites using domains with ccTLDs are
part of the target group, so this is another area of non-overlap with the
ICANN RPMs.

I would take issue with the idea that this all takes place in a way that is
“free” to the victimized companies.  There are all sorts of costs attached
to the ICE efforts that fall on the companies involved.  First, there are
the civil seizures noted in the press release; these are the financial
responsibility of the companies, at a high multiple to the cost of a URS or
UDRP.  Second, coordination between the victimized companies and the
multiple government agencies, necessary to support the criminal
investigations, comes at a cost as well.  Third, there are underlying costs
in maintaining systems, processes and staff dedicated to stopping
counterfeiting.

Finally, it is clear that there are a variety of ways to deal with
trademark-infringing domain names, in isolation or in combination with
other civil or criminal legal violations, and as a primary consideration or
as a sideshow.  These ICE-coordinated actions and ICANN RPMs are only two
of them. Some may involve criminal enforcement, others civil court
litigation, still others administrative remedies, others alternate dispute
resolution mechanisms, and others involve private resolutions.  It is not
uncommon to use more than one, either serially or in parallel, depending on
the circumstances.  But these methods are not fungible, and certain methods
will fit certain problems better.  Operation In Our Sites is significantly
different in numerous ways from ICANN RPMs, and is simply not a replacement
for the URS or UDRP; at best, it is a complement. As such, it would not
seem fruitful or a good use of resources to open up a major new line of
inquiry, unless we have developed an undue fondness for rabbit-holes.

Best regards,

Greg






















On Fri, Jan 4, 2019 at 2:33 PM Corwin, Philip via GNSO-RPM-WG <
gnso-rpm-wg at icann.org> wrote:

> Errata -- First sentence should read, " I was not involved with ICANN
> until late 2006, so I was not  a participant in the discussions that led to
> the UDRP being established at its inception."
>
> Philip S. Corwin
> Policy Counsel
> VeriSign, Inc.
> 12061 Bluemont Way
> Reston, VA 20190
> 703-948-4648/Direct
> 571-342-7489/Cell
>
> "Luck is the residue of design" -- Branch Rickey
>
> -----Original Message-----
> From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of
> Corwin, Philip via GNSO-RPM-WG
> Sent: Friday, January 04, 2019 2:29 PM
> To: icann at leap.com; gnso-rpm-wg at icann.org
> Subject: [EXTERNAL] Re: [GNSO-RPM-WG] ICE domain name seizures --
> potential source of data for RPM PDP?
>
> I was not involved with ICANN until late 2006, so I was not  PrticipNT in
> the discussions that led to the UDRP being established at its inception.
> Other members of this WG likely were and could knowledgeably respond to
> your initial question. While this WG's Charter requires it to consider
> whether URS should become an ICANN Consensus Policy, UDRP already has that
> status and I take it as a given that there is unlikely to ever be consensus
> within the ICANN community to do away with it. I therefore believe that our
> Phase 2 efforts will be better focused on improving it.
>
> As to the provision of non-judicial alternatives to resolution of other
> types of legal disputes, I would note that UDRP is not applicable to all
> types of trademark disputes concerning domains, but only one narrow and
> rather simple type of trademark dispute that can be resolved quickly and
> without personal appearances, discovery, or other attributes of full
> judicial process.  Complex civil disputes do not lend themselves to that
> type of approach; antitrust/competition law disputes, for example, involve
> exceedingly complex legal and econometric analysis and extended discovery
> and other procedural attributes, and generally extend for years between
> initial filing and final appeals.
>
> Philip S. Corwin
> Policy Counsel
> VeriSign, Inc.
> 12061 Bluemont Way
> Reston, VA 20190
> 703-948-4648/Direct
> 571-342-7489/Cell
>
> "Luck is the residue of design" -- Branch Rickey
>
> -----Original Message-----
> From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of
> George Kirikos
> Sent: Friday, January 04, 2019 1:08 PM
> To: gnso-rpm-wg at icann.org
> Subject: [EXTERNAL] Re: [GNSO-RPM-WG] ICE domain name seizures --
> potential source of data for RPM PDP?
>
> Phil:
>
> Remind me, what was so special about trademark owners that merit them
> having non-judicial RPMs?
>
> If a party had a dispute with a registrar or registry, that would
> typically be handled by the courts. e.g. if someone wanted to bring an
> anti-trust action against Verisign, that would happen in the courts.
> Are you in favour of the creation of non-judicial alternatives to civil
> litigation for those other entities and causes of action too, that would
> expose Verisign to anti-trust decisions outside of courts?
> If the "justification" for the ICANN-created RPMs is that they're lower
> cost alternatives to the courts, why not do the same for other causes of
> actions against registrars and registries, in the name of "self-help" which
> you appear to argue is desirable?
>
> Where are the non-judicial "self-help" remedies for removing entries from
> the TMCH, for example?
>
> Sincerely,
>
> George Kirikos
> 416-588-0269
> http://www.leap.com/
>
> On Fri, Jan 4, 2019 at 12:43 PM Corwin, Philip <pcorwin at verisign.com>
> wrote:
> >
> > Thanks for your feedback, Susan.
> >
> >
> >
> > A few additional personal comments—
> >
> > It appears from the ICE press release that a number of other national
> law enforcement agencies may have been involved in the seizures.
> > While the seizure may have been “free” to the trademark owner if the
> domain was one that met the criteria for bringing a UDRP or URS, there is
> considerable expenditure of public funds in these efforts.
> > These law enforcement agency domain actions are directed at criminal
> activity, whereas the great majority of UDRP and URS actions focus on
> domains that could be the subject of civil trademark litigation. I would
> not favor eliminating the availability of self-help to trademark
> registrants via non-judicial RPMs, but one unintended result of doing so
> might be to encourage some trademark owners to seek law enforcement actions
> against domains that previously would have merited the filing of a UDRP or
> URS.
> >
> >
> >
> > Best to all,
> >
> > Philip
> >
> >
> >
> > Philip S. Corwin
> >
> > Policy Counsel
> >
> > VeriSign, Inc.
> >
> > 12061 Bluemont Way
> > Reston, VA 20190
> >
> > 703-948-4648/Direct
> >
> > 571-342-7489/Cell
> >
> >
> >
> > "Luck is the residue of design" -- Branch Rickey
> >
> >
> >
> > From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of
> > Susan Payne
> > Sent: Friday, January 04, 2019 5:41 AM
> > To: George Kirikos <icann at leap.com>; gnso-rpm-wg
> > <gnso-rpm-wg at icann.org>
> > Subject: [EXTERNAL] Re: [GNSO-RPM-WG] ICE domain name seizures --
> potential source of data for RPM PDP?
> >
> >
> >
> > I completely agree with Phil's comments.
> >
> >
> >
> > In addition:
> >
> > 1. Can we try to remember that not all rights infringement or
> enforcement happens in the US or has a US-connection.  From ICE's website
> the mission is "to protect the national security and public safety of the
> United States by disrupting and dismantling transnational criminal
> organizations that engage in cross-border crime".
> >
> >
> >
> > 2. Also from ICE's website: "Due to the lapse in federal funding, this
> website will not be actively managed".  Presumably there are also other
> impacts on ICE activity, and this is hardly the first time this has
> happened.
> >
> >
> >
> > Let's not argue for replacement of ICANN measures by a so-called "free"
> option which is not available to all, where any action taken depends on the
> US's current priorities, and whose funding generally is subject to whatever
> US political squabble happens to be occurring.
> >
> >
> >
> > Susan Payne
> >
> > Head of Legal Policy
> >
> >
> >
> > Valideus
> >
> > 28-30 Little Russell Street
> >
> > London WC1A 2HN
> >
> > United Kingdom
> >
> >
> >
> > E: susan.payne at valideus.com
> >
> > www.valideus.com
> >
> >
> >
> > Liability cannot be accepted for statements made which are clearly the
> sender’s own and not made on behalf of Valideus.
> >
> > This message is intended solely for the addressee and may contain
> confidential information. If you have received this message in error,
> please send it back to us, and immediately and permanently delete it. Do
> not use, copy or disclose the information contained in this message or in
> any attachment.
> >
> > Valideus Ltd is registered in England and Wales with company number
> 06181291 and VAT number 272 9057 85.  Our registered office is at 28-30
> Little Russell Street, London, WC1A 2HN.
> >
> >
> >
> >
> >
> > -----Original Message-----
> >
> > From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of
> > George Kirikos
> >
> > Sent: 02 January 2019 21:13
> >
> > To: gnso-rpm-wg <gnso-rpm-wg at icann.org>
> >
> > Subject: Re: [GNSO-RPM-WG] ICE domain name seizures -- potential source
> of data for RPM PDP?
> >
> >
> >
> > Hi Theo,
> >
> >
> >
> > If it was only about copyright issues, then the list will likely be
> useless, as I agree that it's out of our scope.
> >
> >
> >
> > But, it's possible (as per the TechDirt article) that it was actually TM
> issues too, in which case ICE might have gone after cybersquatting.
> >
> > One will be able to quickly determine things by looking at the actual
> list of domains.
> >
> >
> >
> > In the last paragraph of the TechDirt article, the author writes:
> >
> >
> >
> > "I've fired off a FOIA request asking for the details of these "seized"
> domains and the communications with those industry partners.
> >
> > Should ICE ever decide to obey the law and respond to the FOIA, we'll
> share it here."
> >
> >
> >
> > But, perhaps someone else here already has the list and is allowed to
> publish it.
> >
> >
> >
> > Sincerely,
> >
> >
> >
> > George Kirikos
> >
> > 416-588-0269
> >
> > http://www.leap.com/
> >
> >
> >
> > On Wed, Jan 2, 2019 at 4:03 PM theo geurts <gtheo at xs4all.nl> wrote:
> >
> > >
> >
> > > Hi George,
> >
> > >
> >
> > > Is a full list going to help us here? ICE is focussed on copyright
> "issues."
> >
> > > Sure we can discuss if they do it correctly or not, but it seems to
> > > be
> >
> > > out of our scope.
> >
> > > Our bylaws are pretty clear, not to mention;
> >
> > > https://www.icann.org/news/blog/icann-is-not-the-internet-content-po
> > > li
> >
> > > ce
> >
> > >
> >
> > > Feel free to correct me, I somewhat lost track of this group, so I
> >
> > > apologize in advance.
> >
> > >
> >
> > > Thanks,
> >
> > >
> >
> > > Theo Geurts CIPP/E
> >
> > >
> >
> > >
> >
> > > On 2-1-2019 17:48, George Kirikos wrote:
> >
> > > > Hi folks,
> >
> > > >
> >
> > > > Happy New Year.
> >
> > > >
> >
> > > > There was news about ICE seizing over 1 million domain names, see:
> >
> > > >
> >
> > > > https://www.ice.gov/news/releases/over-million-websites-seized-glo
> > > > ba
> >
> > > > l-operation
> >
> > > >
> >
> > > > https://www.techdirt.com/articles/20181213/18030341224/ice-seizes-
> > > > ov
> >
> > > > er-1-million-websites-with-no-due-process-apparently-unaware-that-
> > > > co
> >
> > > > pyright-trademark-are-different.shtml
> >
> > > >
> >
> > > > I was curious whether anyone (maybe a registrar, registry, or TM
> >
> > > > holders who were involved, i.e. the "industry partners") has and
> > > > can
> >
> > > > share the complete list of domain names that were seized, as that
> >
> > > > might be a potential source of data for our work.
> >
> > > >
> >
> > > > Sincerely,
> >
> > > >
> >
> > > > George Kirikos
> >
> > > > 416-588-0269
> >
> > > > http://www.leap.com/
> >
> > > > _______________________________________________
> >
> > > > GNSO-RPM-WG mailing list
> >
> > > > 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
> >
> > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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