[Gnso-ppsai-pdp-wg] Agenda and documents for review on 3 November 2015

Wed Nov 4 16:49:15 UTC 2015

Following up on yesterday's call, and amplifying/further explaining my oral comments in regard to the "Revised Illustrative Draft Disclosure Framework for Intellectual Property Rights-holders" ---

*         Section IIA, starting on page 2, addresses situations where "Where a domain name allegedly infringes a trademark" and thus coincides with scenarios where a rights holder could employ the URS (at new gTLDs) or the UDRP (at all gTLDs; and noting that most ccTLDs have adopted similar arbitration procedures)  as well as initiate litigation under applicable national laws. The ICANN-adopted RPMs allow an action to be initiated even when the identity of the registrant is not known, and many national laws provide for In Rem filings to address such circumstances.

*         Subsection 6a requires the rights holder (or its representative) seeking registrant disclosure to provide a good faith statement that "provides a basis for reasonably believing that the use of the trademark in the domain name -i. allegedly infringes the trademark holder's rights; and ii. is not defensible". Some questions that may require clarifying modifications : 1) Does the phrase "use of the trademark in the domain name" mean that this process is only available where the actual trademark, and not an allegedly confusingly similar variant, constitutes the domain name or is wholly incorporated within it? 2) Given that the rights holder is seeking a lifting of privacy protection chosen by the registrant, is it sufficient that its statement merely recite a basis for believing that the domain name "allegedly infringes" its trademark or should there be a higher threshold - that is, a requirement that the statement allege that the use of the TM in the domain  actually infringes its rights? 3) Does the phrase "is not defensible" mean that disclosure should only occur (or at least be seriously considered) when the domain name presents a black-and-white, know-it-when-you-see-it scenario such as that for which the URS is designed? (Noting that in many UDRP cases a defense is raised, and where it is raised it is often successful.)(Further noting that Section III.C.ii and iii allows the provider to refuse disclosure where it has a basis for reasonably believing that "use of the claimed intellectual property is

defensible".)

*         Subsection 6b requires the rights holder or representative thereof to use the Customer's contact details only for certain purposes, one of which is "in a legal proceeding concerning the issue". Is it intended that a URS or UDRP filing fall within the meaning of "a legal proceeding"? If so, can that be clarified as some may assume it only references court proceedings?

*         Subsection 6c requires the Requestor's statement that it "c) agrees that the Requestor will submit, without prejudice to other potentially applicable

jurisdictions, to the jurisdiction of the courts (1) where the trademark holder is incorporated and (2) where Provider is located for purposes of any disputes arising from alleged improper disclosures caused by knowingly false statements made by the Requester, or from Requester's knowing misuse of information disclosed to it in response to its request". Given that the allegation of an infringing domain name may also be subject to a contemporaneous or subsequent URS or UDRP action, for the sake of completeness should this agreement be expanded to include submitting to the jurisdiction of an accredited dispute resolution provider (DRP) based upon the applicable jurisdiction rules so that such bad conduct could be taken into account to find either abuse of the URS or attempted reverse domain name hijacking under the UDRP?

*         Noting that, while the UDRP and URS are not always directly applicable, many of these same questions and requests for clarification arise in regard to Section II.C (Domain name resolves to website where trademark is allegedly infringed).

*         Section III.D states, "Disclosure cannot be refused solely for lack of any of the following: (i) a court order; (ii) a subpoena; (iii) a pending civil action; or (iv) a UDRP or URS proceeding; nor can refusal to disclose be solely based on the fact that the Request is founded on alleged intellectual property infringement in content on a website associated with the domain name". I take issue with the notion that the provider should still continue to determine whether to disclose the customer's contact information where a related civil action for trademark infringement, or a URS or UDRP, have been initiated (presumably by the rights holder, since it is unlikely that the customer would do so and thereby make its identity known, in which event further consideration of disclosure  would be moot). The request for disclosure is based upon allegations of trademark infringement and a court and/or accredited DRP have far greater expertise than a P/P provider to determine whether actual infringement exists. Given that disparity of expertise, my view is that the filing of such action by the rights holder should stay the disclosure request and relieve the provider from any further obligation to decide on it. Allowing the process to continue could result in a situation where privacy is violated and the court or DRP subsequently finds no actual infringement.

Thank you for considering these questions and views as the WG moves toward a final version of this document.

Best to all,
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
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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 Mary Wong
Sent: Monday, November 02, 2015 5:13 PM
To: gnso-ppsai-pdp-wg at icann.org
Subject: [Gnso-ppsai-pdp-wg] Agenda and documents for review on 3 November 2015

Dear WG members,

The agenda for our next meeting, on Tuesday 3 November, is as follows. PLEASE NOTE THE UTC TIME CHANGE due to daylight savings time in a number of countries - the call will be at 1500 UTC (07:00 PST, 10:00 EST, 15:00 London, 16:00 CET).

  1.  Roll call/updates to SOI
  2.  Continued discussion of Illustrative Disclosure Framework (latest version attached - please also see the note below)
  3.  Discussion of proposed revised text for de-accreditation (see attached draft text) and possible data escrow recommendation
  4.  Next steps
For agenda item #2, please note that the draft being circulated is still under discussion by Sub Team 3 and is subject to further revision and recommendations by the group. As such, the "redlined" edits that were presented during the Dublin F2F meeting have been retained rather than "accepted" as changes. For your easier review, please note that the main changes since Dublin that incorporate the WG's discussion points and agreement in Dublin include: (1) clarification in Section III.A regarding an exception to disclosure in cases where personal safety is endangered; and (2) an addition to Section III.C (as sub-section (vii)) to clarify that providers will not need to disclose if the verifiable evidence spelled out in Section II is not fully produced by the requester.

In addition, this current draft includes new language on dispute resolution (see, e.g., Section II.A(6)(c)). The new language was inserted to cover what has been termed "Option 2" in the annex, concerning dispute resolution in the event of disclosure due to improper requests. The Sub Team acknowledges that while this topic was discussed briefly in Dublin, there was no WG agreement on a specific recommendation. The new language in the current draft document - as well as specific edits to the "annex" containing Options One and Two - reflects a suggestion by some Sub Team members to adopt Option Two. This suggestion, which may not reflect the view of all Sub Team members as it is still being discussed, is nevertheless being presented to the full WG for further consideration.

Thanks and cheers
Mary

Mary Wong
Senior Policy Director
Internet Corporation for Assigned Names & Numbers (ICANN)
Telephone: +1 603 574 4889
Email: mary.wong at icann.org<mailto:mary.wong at icann.org>

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