[Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark
Michele Neylon - Blacknight
michele at blacknight.com
Thu Oct 30 12:51:42 UTC 2014
Valeriya
I'm sorry, but just because we do not agree with your position does not mean that we do not understand why this proposal is attractive to you.
We understand it. We do not agree with it.
Regards
Michele
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Mr Michele Neylon
Blacknight Solutions
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From: gnso-ppsai-pdp-wg-bounces at icann.org [mailto:gnso-ppsai-pdp-wg-bounces at icann.org] On Behalf Of Valeriya Sherman
Sent: Wednesday, October 29, 2014 8:45 PM
To: Williams, Todd; Phil Corwin; Marika Konings; David Cake
Cc: 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
All,
Respectfully, a few of the comments in response to my email miss the main point, which is that Disclosure helps the Requestor determine--before having to file a UDRP against the Provider-- whether or not the Customer has legitimate rights in the domain name or whether it has registered and used the domain name in bad faith.
Based on our experience filing numerous UDRP complaints on behalf of IP owners, once the UDRP Complaint is filed, the arbitration service (NAF or WIPO) automatically directs that the Customer's identity be disclosed to the UDRP Complainant. This is not done by the UDRP panelist; it is done ministerially by a Case Coordinator. Then the Complainant's attorneys have to amend the UDRP Complaint to name the true registrant.
Disclosing the true registrant's identity earlier helps the Requestor determine if the UDRP is warranted, in two ways.
First, it helps determine if the true registrant has a legitimate interest in the domain name. For example, it would be useful for the owner of the U.S. trademark BUDWEISER to know if the registrant of DrinkBudweiserBeer.com<http://www.drinkbudweiserbeer.com/> is the brewery in the Czech Republic that also owns a BUDWEISER trademark before it files a UDRP against this registrant.
Second, it helps determine if the domain name was registered and used in bad faith. The examples I gave were various indicia that have long been accepted in UDRP decisions as evidencing bad faith.
* If a registrant has prior UDRP decisions against him. See, e.g. Intel Corporation v. Marcel Engenheiro / Pentium Capital, Case No. D2013-1745 (WIPO Jan. 21, 2014) (found that Respondent had engaged in a pattern of abusive registration of domain names based on two prior UDRP decisions issued against him);
* If he stockpiles infringing domain names. See, e.g., TV Globo Ltda. v. Green Card Transportes e Eventos Ltda., Case No. D2000-0351 (WIPO July 17, 2001) (found that "existence of a long list of domain names ... is evidence that registration has been effected in bad faith.");
* If he simply holds the infringing domain names for sale. See, e.g., Federal Cartridge Co. v. Madmouse Communications, Case No. D2001-0756 (WIPO July 24, 2001) (found use in bad faith when registrant held a domain name that incorporated another's protected mark without any effort to use it for any purpose).
These and other indicia evidence bad faith, and are highly useful in determining if a UDRP is warranted.
For all the reasons above, a limited disclosure to a single third party Requestor before a UDRP filing is better in the long run for Customers, P/P Providers, and Requestors alike.
We look forward to further discussing these issues, but we still believe (as we did when this was first discussed in September) that disclosure should be attainable without the need to first file a UDRP or other legal proceeding.
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: Williams, Todd [Todd.Williams at turner.com]
Sent: Wednesday, October 29, 2014 4:04 PM
To: Phil Corwin; Marika Konings; David Cake; Valeriya Sherman
Cc: 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
Thanks Philip. At least a partial answer to your question ("do we know how often that occurs") was included in the "compilation of p/p provider responses to specific WG questions" - which is attached to the attached email. In it, you'll see that for at least DBP and the "others," the default was to "publish" to the world (not just to "disclose" to the individual complainant) upon filing of a UDRP. Based at least in part on that, Kathy and I - and presumably the others in the WG (having received no objection to our email string) - agreed that an accreditation policy that intentionally funnels these types of complaints into UDRPs was less preferable for all parties involved: the registrant/beneficial user, the p/p provider, and the complainant. I don't want to speak for Kathy or the others, so I've attached the email string. But just to reiterate what we discussed there:
* The registrant/beneficial user gets to avoid the more drastic result of publication to the world. If, as Michele and Chris and others have suggested, we need to be mindful of how our standards may impinge on privacy rights, then surely publication to the world is a much more severe impingement of that privacy right than disclosure to an individual complainant.
* The p/p provider gets to avoid being named as a respondent in a UDRP proceeding (which James has noted can be problematic for the provider), and may get to keep a paying customer that it would otherwise lose once the UDRP is filed and the contact information is published to the world.
* The complainant gets to save the money that it would otherwise spend on a UDRP, and may in fact choose to forgo the UDRP all together (as I mentioned, perhaps learning the beneficial user's identity will cause the complainant to question its original analysis that the domain name was being used in bad faith).
Because of that, I can't really think of anybody who benefits from a system that intentionally pushes these types of matters into UDRPs (except perhaps for UDRP providers like NAF, or for attorneys who get paid to litigate UDRPs I suppose).
Thanks.
Todd.
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 Phil Corwin
Sent: Wednesday, October 29, 2014 11:56 AM
To: Marika Konings; David Cake; Valeriya Sherman
Cc: 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
Marika:
Thanks for the clarification.
In regard to this -
"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"
--that seems to say that disclosure of the registrant data will not always automatically occur if the P/P service agrees to be listed as registrant. Do we know how often that occurs, or the basis on which the providers currently make that decision?
At any rate, the argument for revelation to the requestor upon a mere allegation of an IP infringement (and more specifically, upon an allegation based solely upon the domain name as trademark infringing) was based on the assertion that it will be revealed to the world via the WHOIS record if the requestor has to escalate to a UDRP or URS. But it appears there is a major exception to that argument.
Best, 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> [mailto:gnso-ppsai-pdp-wg-bounces at icann.org] On Behalf Of Marika Konings
Sent: Wednesday, October 29, 2014 4:53 AM
To: David Cake; Valeriya Sherman
Cc: 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
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<mailto:dave at difference.com.au>>
Date: Wednesday 29 October 2014 08:57
To: Valeriya Sherman <VSherman at sgbdc.com<mailto:VSherman at sgbdc.com>>
Cc: "gnso-ppsai-pdp-wg at icann.org<mailto:gnso-ppsai-pdp-wg at icann.org>" <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
On 29 Oct 2014, at 3:38 am, Valeriya Sherman <VSherman at sgbdc.com<mailto: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<mailto:gnso-ppsai-pdp-wg-bounces at icann.org> [gnso-ppsai-pdp-wg-bounces at icann.org<mailto:gnso-ppsai-pdp-wg-bounces at icann.org>] on behalf of Volker Greimann [vgreimann at key-systems.net<mailto: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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