[Gnso-epdp-team] IPC Proposal for Day 1 Automation

[Volker Greimann]

Hi Brian,

we need to discuss this internally, but I see little chance for such an 
automation proposal at this stage due to issues with the request safeguards.

Trademark law is a very complex matter and does not lend itself well to 
automated decision making. Trademark rights are not all-encompassing. To 
the contary, they are limited both by geographic scope as well as by the 
trademark categories. The use of an identical string outside the scope 
is perfectly legal, and even within the scope a legal use is usually 
possible.

In your example, a Mr. Nike who is a car dealer could very well register 
domains that include the words cheap and Nike. If he is a shoe seller, 
maybe even nike.shoes could be a legitimate use of the string. Just like 
a Mr. Nissan who still owns Nissan.com.

So request safeguard 1 already falls short as it will usually need an 
independant determination of that legal question, not just a statement 
to that effect by the interested party.

Best,

Volker


Am 27.01.2020 um 21:52 schrieb King, Brian via Gnso-epdp-team:
>
> Hello EPDP Team,
>
> Please find below our first proposal for automated disclosure.
>
> *Trademark Infringement in Domain Name*
>
> /Requestor Safeguards/
>
>  1. Accreditation Authority determines that the trademark is valid.
>  2. Accreditation Authority determines that Requestor is the legal
>     owner, agent, or service provider of the trademark.
>
> /Request Safeguards/
>
>  1. Requestor alleges that the domain name infringes Requestor’s
>     trademark.
>  2. Requestor states its own legal basis and purpose for processing
>     the data. Requestor makes a syntactically correct and complete
>     request, including any/all required Authorization Assertions.
>     Requestor makes all representations required by policy: use will
>     be limited to stated purpose, data retention, etc.
>  3. Domain string contains exact match of trademark string(potentially
>     including prefix or suffix, e.g. “nike-shoes.TLD” or
>     “cheap-nike.TLD”).
>
> /Additional Noteworthy Safeguards/
>
>  1. Registrant committed not to infringe the rights of third parties
>     in its registration agreement, as required by the RA and RAA.
>  2. Registrant was informed at the time that its data was collected
>     that it could be processed for third-party purposes, including
>     intellectual property protection.
>
> In these cases, disclosure can be automated.
>
> *Brian J. King *
> Director of Internet Policy and Industry Affairs
>
> T +1 443 761 3726_
> markmonitor.com <http://www.markmonitor.com>_
>
> *MarkMonitor
> *Protecting companies and consumers in a digital world
>
>
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-- 
Volker A. Greimann
General Counsel and Policy Manager
*KEY-SYSTEMS GMBH*

T: +49 6894 9396901
M: +49 6894 9396851
F: +49 6894 9396851
W: www.key-systems.net

Key-Systems GmbH is a company registered at the local court of 
Saarbruecken, Germany with the registration no. HR B 18835
CEO: Alexander Siffrin

Part of the CentralNic Group PLC (LON: CNIC) a company registered in 
England and Wales with company number 8576358.
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