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

Marika Konings marika.konings at icann.org
Wed Oct 29 08:52:31 UTC 2014 

All, in relation to this discussion, it may be worth pointing out that the
current status quo, which will be further codified as a result of the
locking of a domain name subject to UDRP Proceedings Policy Development
Process, is that the P/P service will publish the underlying customer
information in Whois within two days of the UDDR being filed, unless the P/P
service has no objection to being listed in the complaint/ruling as the
registrant. If I understand the current proposal under consideration
correctly, the idea is that an intermediate step could be introduced which
may provide potential benefits to both parties as it would provide the
requestor with additional information that may be helpful in deciding
whether a UDRP/URS or alternative approach would be best suited to address
the issue while the P/P customer information would only be disclosed to the
requestor instead of published in Whois (and presumably it would also offer
another path for remediation to the P/P customer instead of having to go
directly to a UDRP which might require hiring of a lawyer?). Obviously there
are other issues that need to be considered in relation to such a possible
intermediate step such as how to avoid misuse, but I thought it might be
helpful to consider this in light of the status quo.

Best regards,

Marika    

From:  David Cake <dave at difference.com.au>
Date:  Wednesday 29 October 2014 08:57
To:  Valeriya Sherman <VSherman at sgbdc.com>
Cc:  "gnso-ppsai-pdp-wg at icann.org" <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


On 29 Oct 2014, at 3:38 am, Valeriya Sherman <VSherman at sgbdc.com> wrote:

> 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.

Allegations are not proof. If the domain name itself is regarded as possibly
infringing, we have the UDRP and URS to determine it a domain name is
actually infringing.

> Disclosure of the Customer's identity would help the Requestor determine,
> before having to file a URS or UDRP, whether or not the Customer:

Sure. But being helpful to the Requestor is not, by itself, sufficient to
justify disclosure.

> -has legitimate rights in the domain name;
> -is a cybersquatter;

These are the exact questions the UDRP/URS are designed to answer. Wanting
to know the answers to them before filing is putting the cart before the
horse somewhat. 

> -is stockpiling domain names, without adding any website content; or

The UDRP ultimately should succeed or fail based on the use of the domain in
question, not what the registrant does with their other domains.
And as Michele notes, website content is not the only use for domain names.
( eg I have a few friends who have used the adorably geeky rcpt.to domain
for email only for over a decade now).
Also, if the domain owner is actively using sub-domains of their domain, it
may not necessarily be obvious to the requester.

> -has prior UDRP decisions against him or her.
Again, sure, helpful to know before filing your UDRP, but is helpful to
potential filers sufficient to overrule the obvious desire of the registrant
for privacy? 

A desire to disassociate particular domains used for specific purposes from
their general domaining business may even be the reason for using a PPP.

> All of the foregoing indicate bad faith registration and use of the domain
> name.

Your first two criteria are decisions that the UDRP/URS will rule on. Your
second two criteria might indicate a general pattern of bad behaviour by the
registrant, but do not mean that an individual domain is part of that
pattern of behaviour.

>  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.

I do not think this follows at all. There is a big difference between the
requestor would like to, and the Requestor must be able to.
I absolutely think that the Requestor should be able to use relay to request
relevant information from the registrant. If the registrant wants to reply
to a relayed request asserting their legitimate right to the domain, good.
But it is not obvious to me that disclosure is necessary, and I can think of
many cases in which it might be problematic.

> 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.

Of course - but avoiding disclosure is, presumably, often a major reason for
retaining a PPP in the first place, so we should not let it happen just
because it would be beneficial to the requestor.

Regards

David

> 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
> [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
> 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
>> 
>> 
>> 
>> 
>> _______________________________________________
>> Gnso-ppsai-pdp-wg mailing list
>> Gnso-ppsai-pdp-wg at icann.orghttps://mm.icann.org/mailman/listinfo/gnso-ppsai-p
>> dp-wg
> 
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> Mit freundlichen Grüßen,
> 
> Volker A. Greimann
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> 
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