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

Thomas Rickert epdp at gdpr.ninja
Tue Feb 4 21:21:03 UTC 2020


Hi James,
I agree with Brian’s suggestion not to have a substantive discussion on use cases now. 

Let me iust note that I have a robust legal explanation for my suggested wording, which I am happy to share at a later stage. I will keep it to myself for now in order not to distract us from finalizing the initial report.

Best,
Thomas

> Am 03.02.2020 um 23:50 schrieb James M. Bladel <jbladel at godaddy.com>:
> 
> Hi Brian and Thomas.  
> 
> I was with you until I got to the second part of #3:  “…prefix, infix or suffix of the domain name.” 
>  
> This is exactly the sort of thing that should be kicked out of automation in favor of human review, as there is too much potential for false hits via string collision.  (e.g.:  “facebook.TLD” and “microsoftsurfacebook.TLD”).
>  
> The simplest and most effective automation approach is for exact match, which is aligned with existing systems, like the Trademark Clearinghouse.
>  
> Thanks - 
>  
> J.
>  
> -------------
> James Bladel
> GoDaddy
>  
>  
>  
> From: Gnso-epdp-team <gnso-epdp-team-bounces at icann.org <mailto:gnso-epdp-team-bounces at icann.org>> on behalf of "King, Brian via Gnso-epdp-team" <gnso-epdp-team at icann.org <mailto:gnso-epdp-team at icann.org>>
> Reply-To: "King, Brian" <Brian.King at markmonitor.com <mailto:Brian.King at markmonitor.com>>
> Date: Monday, February 3, 2020 at 3:44 PM
> To: "gnso-epdp-team at icann.org <mailto:gnso-epdp-team at icann.org>" <gnso-epdp-team at icann.org <mailto:gnso-epdp-team at icann.org>>
> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation
>  
> Notice: This email is from an external sender.
>  
> Hi Matt,
>  
> Please let me know if the below does not answer your question(s).
>  
> 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 <mailto:gnso-epdp-team-bounces at icann.org>> On Behalf Of Thomas Rickert
> Sent: Monday, February 3, 2020 3:29 PM
> To: gnso-epdp-team at icann.org <mailto:gnso-epdp-team at icann.org>
> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation
>  
> Hi all,
> I truly believe we need to talk about what we mean by automation. Reading the latest e-mails I got the impression that we are not thinking along the same lines. 
>  
> As I tried to outline in LA, I think automation can work if the following parameters are met:
>  
> 1. Requestor is a trademark owner, which needs to be verified with the respective trademark office.
> 2. The trademark must be life (not just applied for, rejected or expired).
> 3. The domain name non-public registration data is asked for is either identical with the trademark or the trademark is a prefix, infix or suffix of the domain name.
>  
> Additonally, all safeguards we have identified apply. Automation would not work for figurative marks or where the domain name is allegedly confusingly similar to the trademark. Such cases require manual review. 
>  
> You might remember I said in LA that our policies require more detail or the use cases require more work. This is exactly what I meant. We need to be specific in what can or must be done in certain cases. The use cases are too broad brush, but I think we can make progress if we continue the exchange of thoughts (as Janis said, this would likely take place before we publish the final report. 
>  
> Best,
> Thomas
> 
> 
> 
>> Am 03.02.2020 um 21:12 schrieb Margie Milam <margiemilam at fb.com <mailto:margiemilam at fb.com>>:
>>  
>> Hi-
>>  
>> Trying to boil this down to something that easier to understand.   
>>  
>> The proposal doesn’t say that all trademark requests by any trademark holder are to be automated. Instead we are focusing on a smaller subset that is defined narrowly --- those trademarks that have already been validated in the Trademark Clearinghouse, coupled with an assertion of agency by the requestor for the trademark owner that has been made to the authentication body.  The domain-name string would need to include that trademark.  The requestor would be subject to the safeguards, and risk losing its accreditation if it submits requests that are improper.   
>>  
>> A requester does not need to prove its entire trademark infringement case to justify disclosure of the redacted data – the data is provided to enable the TM holder to  investigate whether it has a case it wishes to pursue.  The SSAD and contracted parties should not be imposing their understanding of trademark law to judge the veracity of the requestor’ rights – that’s the role of attorneys, judges or UDRP mediators.
>>  
>> Margie
>>  
>>  
>>  
>>  
>>  
>>  
>>  
>> <image001.jpg>
>> Margie Milam
>> Online IP Enforcement & Protection Lead | Legal IP
>> NOTICE: This email (including any attachments) may contain information that is private, confidential, or protected by attorney-client or other privilege.  Unless you are the intended recipient, you may not use, copy, or retransmit the email or its contents.
>>  
>>  
>>  
>> From: Gnso-epdp-team <gnso-epdp-team-bounces at icann.org <mailto:gnso-epdp-team-bounces at icann.org>> on behalf of Matt Serlin <matt at brandsight.com <mailto:matt at brandsight.com>>
>> Date: Monday, February 3, 2020 at 11:45 AM
>> To: "brian.kingATmarkmonitor.com <https://urldefense.proofpoint.com/v2/url?u=http-3A__brian.kingatmarkmonitor.com_&d=DwMFaQ&c=OGmtg_3SI10Cogwk-ShFiw&r=qQNCXqU_XE2XIdXbawYmk-YDflYH6pd8ffXlzxU37OA&m=gfBUjbXa92X_x_J3_1TrJsIiVaIPIOyZ1vvmz5XnQWo&s=xgxN3P8VN_KhpDSFoasma4LiKHLj6A4y0eL17qe00Rs&e=>" <brian.king at markmonitor.com <mailto:brian.king at markmonitor.com>>, "gnso-epdp-team at icann.org <mailto:gnso-epdp-team at icann.org>" <gnso-epdp-team at icann.org <mailto:gnso-epdp-team at icann.org>>
>> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation
>>  
>> 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 <mailto:gnso-epdp-team-bounces at icann.org>> on behalf of "King, Brian via Gnso-epdp-team" <gnso-epdp-team at icann.org <mailto:gnso-epdp-team at icann.org>>
>> Reply-To: "King, Brian" <Brian.King at markmonitor.com <mailto:Brian.King at markmonitor.com>>
>> Date: Monday, February 3, 2020 at 12:29 PM
>> To: "gnso-epdp-team at icann.org <mailto:gnso-epdp-team at icann.org>" <gnso-epdp-team at icann.org <mailto: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 <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.markmonitor.com&d=DwMGaQ&c=5VD0RTtNlTh3ycd41b3MUw&r=_4XWSt8rUHZPiRG6CoP4Fnk_CCk4p550lffeMi3E1z8&m=8RC76GLir1NviF2oCoXbEWr-oiQyZgysXdFqccFVrDs&s=SaxJ8WbdGHpugdo4spOuk7Z01ZvutjzVUdTBqWbx1P0&e=>
>>  
>> MarkMonitor
>> Protecting companies and consumers in a digital world
>>  
>> From: Gnso-epdp-team <gnso-epdp-team-bounces at icann.org <mailto: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 <mailto: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 <https://urldefense.proofpoint.com/v2/url?u=http-3A__nissan.com_&d=DwMFaQ&c=OGmtg_3SI10Cogwk-ShFiw&r=qQNCXqU_XE2XIdXbawYmk-YDflYH6pd8ffXlzxU37OA&m=gfBUjbXa92X_x_J3_1TrJsIiVaIPIOyZ1vvmz5XnQWo&s=C1ljQtXAAaY6qy1Yw0JzQS-zxEhbSksZdCk8-RD7pA4&e=>.
>> 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
>>> Accreditation Authority determines that the trademark is valid.
>>> Accreditation Authority determines that Requestor is the legal owner, agent, or service provider of the trademark.
>>>  
>>> Request Safeguards
>>> Requestor alleges that the domain name infringes Requestor’s trademark.
>>> 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.
>>> 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
>>> Registrant committed not to infringe the rights of third parties in its registration agreement, as required by the RA and RAA.
>>> 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 <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.markmonitor.com&d=DwMGaQ&c=5VD0RTtNlTh3ycd41b3MUw&r=_4XWSt8rUHZPiRG6CoP4Fnk_CCk4p550lffeMi3E1z8&m=8RC76GLir1NviF2oCoXbEWr-oiQyZgysXdFqccFVrDs&s=SaxJ8WbdGHpugdo4spOuk7Z01ZvutjzVUdTBqWbx1P0&e=>
>>>  
>>> MarkMonitor
>>> Protecting companies and consumers in a digital world
>>>  
>>> 
>>> 
>>> 
>>> 
>>> 
>>> 
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>> -- 
>> Volker A. Greimann
>> General Counsel and Policy Manager
>> KEY-SYSTEMS GMBH
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