[Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark

Wed Oct 29 00:12:10 UTC 2014

Following up on Michele's comment:

Valeriya: Your argument has two parts. Reversing their order, the first seems to be that privacy protection will be lifted when a UDRP or URS is filed (and I have checked on that and it seems that you are correct) so why put the potential complainant through the expense? A plausible response might be that, while we have seen UDRP abuse and findings of RDNH, the cost of filing and the knowledge that the allegations will be adjudged by expert trademark counsel, and that the registrant has a right to respond, minimizes the abuse. If PPPs are required to disclose registrant identity on a mere allegation of TM infringement (as they will, because they are not going to judge it on the merits - and we are in fact contemplating  a requirement that they do so as a condition of accreditation) those constraints against abuse dissolve.

The other argument is that disclosure will be beneficial  because it "would help the Requestor determine, before having to file a URS or UDRP, whether or not the Customer:

-has legitimate rights in the domain name;
-is a cybersquatter;
-is stockpiling domain names, without adding any website content; or
-has prior UDRP decisions against him or her.

All of the foregoing indicate bad faith registration and use of the domain name. " (Emphasis added)

With due respect, I take issue with that assertion.  Only the last factor you cite may be indicative of bad faith registration and abuse. Revelation of the registrant's identity may provide no additional useful data regarding whether the registrant has legitimate rights in the DN.

As for being "a cybersquatter", if by that you mean a TM infringer with a history of UDRP losses then the reference is redundant. If you mean someone who amasses a domain portfolio for investment and monetization - "stockpiling domain names", as you put it -- then that is entirely permissible so long as the domains are not used for infringing or other unlawful purposes. As for having domains "without adding any website content", that is also entirely permissible and has no bearing on bad faith registration or use. In fact, a domain registrant may well choose to keep a valuable domain "dark" until it is developed or resold out of concern that one unintended and potentially infringing PPC ad placed by a third party advertising service could be the basis of a UDRP and result in loss of the domain.

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") http://www.wipo.int/amc/en/domains/search/overview2.0/ is quite clear on this--

2.6 Do parking and landing pages or pay-per-click links generate rights or legitimate interests in the disputed domain name?
See also the relevant section<http://www.wipo.int/amc/en/domains/search/legalindex.jsp?id=11601> in the WIPO Legal Index.
Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services" [see also paragraph 3.8 below] or from "legitimate noncommercial or fair use" of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.

3.2 Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or contact the trademark holder (passive holding)?
See also the relevant section<http://www.wipo.int/amc/en/domains/search/legalindex.jsp?id=11880> in the WIPO Legal Index.
Consensus view: With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere "parking" by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals). [Emphasis added]
So neither PPC landing pages or passive holding of a domain automatically gives rise to evidence of bad faith registration and use.
Given the limited utility of compelling disclosure of the registrant's identity, as well as the significantly increased potential for abuse of such a policy, I maintain that the most balanced approach is to require the PPP to relay the requestor's communication to the registrant customer and let them decide, with knowledge of the fact that any threatened UDRP or URS will cause data revelation, whether they wish to communicate with the requestor.
Regards, Philip

Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/cell

Twitter: @VlawDC

"Luck is the residue of design" -- Branch Rickey

From: gnso-ppsai-pdp-wg-bounces at icann.org [mailto:gnso-ppsai-pdp-wg-bounces at icann.org] On Behalf Of Michele Neylon - Blacknight
Sent: Tuesday, October 28, 2014 6:36 PM
To: Valeriya Sherman; Volker Greimann; gnso-ppsai-pdp-wg at icann.org
Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark

Valeriya

I can easily see how your proposal could be abused.

Example

Blogger registers $bigbrandcustomerservicesucks.tld and use a privacy service. Blogger uses the domain to setup a blog where they talk about the bad customer service they've received
OR
Maybe it's a whistleblower who wants to talk about how $bigbrand is abusing their staff

Big brands lawyers decide to use trademark infringement (or similar) as an angle to get the blogger's contact details.

If the bar is too low then they can get what they want - the underlying details, but without having to go through any proper process eg. UDRP, URS or something else with some level of checks and balances.

Regards

Michele

PS: I don't understand the reference to "stockpiling domain names" and the link to "website content". There are thousands of domain names that are used for services other than running websites and will have zero content if you go looking at the "website". The example I keep alive is:
http://log.ie/ - parked domain
http://b.log.ie/ - active website

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http://www.blacknight.host/
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From: gnso-ppsai-pdp-wg-bounces at icann.org<mailto:gnso-ppsai-pdp-wg-bounces at icann.org> [mailto:gnso-ppsai-pdp-wg-bounces at icann.org] On Behalf Of Valeriya Sherman
Sent: Tuesday, October 28, 2014 7:38 PM
To: Volker Greimann; gnso-ppsai-pdp-wg at icann.org<mailto:gnso-ppsai-pdp-wg at icann.org>
Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark

Phil,

With respect to Reveal in the context of allegations that a domain name is infringing, we advocate Disclosure (to the Requestor only) of information sufficient to help the Requestor determine if further action against the Customer is warranted.  This is especially important in the context of IP rights enforcement.  Disclosure of the Customer's identity would help the Requestor determine, before having to file a URS or UDRP, whether or not the Customer:

-has legitimate rights in the domain name;
-is a cybersquatter;
-is stockpiling domain names, without adding any website content; or
-has prior UDRP decisions against him or her.

All of the foregoing indicate bad faith registration and use of the domain name. As Paul pointed out on today's call, the Requestor must be able to  ascertain  this  information  before it is obliged undergo the time and expense of bringing a UDRP or other legal proceeding.  In that way, it can possibly avoid the need for a UDRP. And if it has to bring a UDRP, it can do so in good faith. That is why Disclosure is valuable in cases involving infringing domain names, not just infringing website content.

To address another point that has come up in the past, Disclosure does not equate to a finding of guilt. Disclosure is not a remedy of the UDRP or the URS; it would occur before a case is decided on  the merits. It is my understanding that once a UDRP is filed, one or both of the following generally happens: 1) registrar receives a request for information to confirm registrant, which it then sends to the Complainant to amend the Complaint; or 2) the P/P Provider named in the complaint discloses or publishes the information. So under the status quo, there generally is a Reveal before a decision on the merits, but only after the Requestor is forced to file a complaint, without essential information, at a high cost. As you correctly observed, not all allegations are successful -- we don't want to encourage more with a policy that requires premature legal actions.

Best regards,

Val

Valeriya Sherman
Silverberg, Goldman & Bikoff, L.L.P.
1101 30th Street, N.W.
Suite 120
Washington, D.C. 20007
Tel 202.944.3300
Cell 303.589.7477
vsherman at sgbdc.com<mailto:vsherman at law.gwu.edu>
________________________________
From: gnso-ppsai-pdp-wg-bounces at icann.org<mailto:gnso-ppsai-pdp-wg-bounces at icann.org> [gnso-ppsai-pdp-wg-bounces at icann.org] on behalf of Volker Greimann [vgreimann at key-systems.net]
Sent: Tuesday, October 28, 2014 12:37 PM
To: gnso-ppsai-pdp-wg at icann.org<mailto:gnso-ppsai-pdp-wg at icann.org>
Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark
Hi Phil,

I agree that a mere allegation is never enough for any form of required result. The bar needs to be set a lot higher, such as a sworn statement that includes legal consequences in case any part of it is incorrect that would allow the injured party and the provider to sue the pants off of the complainant.

Also, the violation must be clear and obvious to an untrained third party observer, which is usually not the case in trademark violation due to the fact that trademark law is simply too complex for a layman to understand. And frankly, there also is no need for an immediate reveal as there are, as you point out, already sufficient means to deal with such cases.

As for content, that is a hosting issue outside the realm of ICANN. Go to the hosting provider instead. Infringing content has nothing to do with the domain name whatsoever.

Best,

Volker
Am 28.10.2014 17:30, schrieb Phil Corwin:

I want to reiterate the concerns I raised during today's call about recommending a policy that would require a privacy/proxy provider (PPP) to reveal/disclose a registrant's identity and contact information based on a mere allegation that the domain name is infringing a trademark.

ICANN has established the URDP and URS to deal with such allegations. And every day WIPO, NAF, and other providers deny complainant allegations. In fact, it appears that instances of attempted reverse domain hijacking are on the rise.

A registrant who is targeted in a UDRP or URS has a choice of responding (in which case they will be revealing their identity) or to default and let the provider decide the allegation based solely upon the complaint. The proposed policy would compel disclosure of registrant data even when no UDRP, URS, or trademark infringement litigation was filed, or even if the allegation was subsequently found to fail to meet the required burden of proof.

I am not convinced by arguments that such mandatory disclosure might facilitate resolution absent the filing of arbitration or litigation. That can be accomplished by requiring the PPP to relay a cease-and-desist letter or other communication to the registrant. Mandatory disclosure based on an unproven allegation does not further the claimed goal.

Summing up, I believe that our WG should not create any new policy related to allegations of TM infringement by a domain name but should leave this issue to the new gTLD RPM and UDRP review that will be commencing next spring.

As for allegations of trademark infringement based upon a  website's content that is a separate matter. However, I believe our discussions should recognize that PPPs are unlikely to weigh the merits of an allegation and that their likely default position will be to reveal registrant data once a complaint addresses all the relevant points required by any new policy on this subject. Given that likelihood, we should certainly consider the extent to which such a policy might be abused by a private sector or governmental actor.

Thank you for taking these views into account.

Philip S. Corwin, Founding Principal

Virtualaw LLC

1155 F Street, NW

Suite 1050

Washington, DC 20004

202-559-8597/Direct

202-559-8750/Fax

202-255-6172/cell

Twitter: @VlawDC

"Luck is the residue of design" -- Branch Rickey

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