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

Mon Feb 3 19:45:16 UTC 2020

Hi Brian,

Just so I’m crystal clear in what you’re saying here…can you confirm this is your viewpoint?

Trademark law is complex and nuanced, so we HAVE to automate disclosure of non-public data so that contracted parties aren’t burdened with the review of such disclosure requests?

Maybe a real-world example would help my non-legal mind here…

Brandsight has a trademark for “Brandsight”

Let’s say a party has registered brandsightconsulting.london

Is it your assertion that Brandsight would be entitled to automatic disclosure of non-public data only on the grounds of the registered trademark being included in the domain name?

Trying to boil down the discussion to something tangible. Thanks.

Matt

From: Gnso-epdp-team <gnso-epdp-team-bounces at icann.org> on behalf of "King, Brian via Gnso-epdp-team" <gnso-epdp-team at icann.org>
Reply-To: "King, Brian" <Brian.King at markmonitor.com>
Date: Monday, February 3, 2020 at 12:29 PM
To: "gnso-epdp-team at icann.org" <gnso-epdp-team at icann.org>
Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation

Hi Volker,

I appreciate the constructive examples.

In cases like the ones you mention, I think we should be careful about which “standard of review” is appropriate for ICANN and the SSAD to take. In the UDRP context the IP owner has to prove her 3.5 elements, but that’s not an appropriate (or possible) standard for disclosure for the purposes of the TM owner establishing her case.

As an aside, the fact that TM law has its complexities is all the more reason not to burden contracted parties (many of whom don’t employ a trademark attorney (or any attorney), a data protection officer, etc.) with understanding and evaluating even the level of nuance we’re discussing here.

We propose to establish sufficiently robust safeguards to ensure that disclosure is valid for the third-party purpose of establishing a legal claim. This should be possible within the parameters we’ve suggested. The law allows for Mr. Nike’s data to be processed for the limited time required for this limited purpose, with these safeguards in place.

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

From: Gnso-epdp-team <gnso-epdp-team-bounces at icann.org> On Behalf Of Volker Greimann
Sent: Monday, February 3, 2020 4:47 AM
To: gnso-epdp-team at icann.org
Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation

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
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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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