[Gnso-ppsai-pdp-wg] Feedback on Illustrative Disclosure Framework
Kathy Kleiman
kathy at kathykleiman.com
Wed Nov 4 18:15:48 UTC 2015
Tx Mary.
Hi Steve - could you please post the language that you suggested on the
call yesterday - language that would limit the jurisdictional provision
solely to matters in Annex E?
Tx,
Kathy
On 11/4/2015 1:00 PM, Mary Wong wrote:
> Thanks for the detailed follow up, Phil – staff will in turn follow up
> with Sub Team 3 as they finalize their recommendations on the
> Framework for the WG this week.
>
> As requested by Steve on the WG call yesterday, we’d like to remind
> everyone to _please raise any further questions or comments you may
> have on: (1) the latest proposed edits to the Framework as presented
> by Todd and Kathy on the call; and (2) the proposed new language on
> recommendations concerning de-accreditation, to the mailing list_ by
> the end of your respective working days tomorrow (*Thursday 5
> November*). If no further issues are raised with the few post-Dublin
> changes made to the Framework language (except for the annex, which is
> still being worked on by the Sub Team) or the de-accreditation text,
> we’ll proceed to insert those into the next iteration of the draft
> Final Report.
>
> Staff will also follow up on the proposed discussion with our
> operational colleagues of implementation issues that may require
> refinement or reconsideration of the current language of the WG's
> policy recommendations – please look out for a separate email on that
> topic.
>
> Thank you.
>
> 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
>
>
> From: Phil Corwin <psc at vlaw-dc.com <mailto:psc at vlaw-dc.com>>
> Date: Wednesday, November 4, 2015 at 11:49
> To: Mary Wong <mary.wong at icann.org <mailto:mary.wong at icann.org>>,
> "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] Agenda and documents for review on 3
> November 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*
>
> *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 *Mary Wong
> *Sent:* Monday, November 02, 2015 5:13 PM
> *To:* gnso-ppsai-pdp-wg at icann.org <mailto: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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