Hi Brian,

we need to discuss this internally, but I see little chance for such an automation proposal at this stage due to issues with the request safeguards.

Trademark law is a very complex matter and does not lend itself well to automated decision making. Trademark rights are not all-encompassing. To the contary, they are limited both by geographic scope as well as by the trademark categories. The use of an identical string outside the scope is perfectly legal, and even within the scope a legal use is usually possible.

In your example, a Mr. Nike who is a car dealer could very well register domains that include the words cheap and Nike. If he is a shoe seller, maybe even nike.shoes could be a legitimate use of the string. Just like a Mr. Nissan who still owns Nissan.com.

So request safeguard 1 already falls short as it will usually need an independant determination of that legal question, not just a statement to that effect by the interested party.

Best,

Volker

Hello EPDP Team,

 

Please find below our first proposal for automated disclosure.

 

Trademark Infringement in Domain Name

 

Requestor Safeguards

1. Accreditation Authority determines that the trademark is valid.
2. Accreditation Authority determines that Requestor is the legal owner, agent, or service provider of the trademark.

 

Request Safeguards

1. Requestor alleges that the domain name infringes Requestor’s trademark.
2. Requestor states its own legal basis and purpose for processing the data. Requestor makes a syntactically correct and complete request, including any/all required Authorization Assertions. Requestor makes all representations required by policy: use will be limited to stated purpose, data retention, etc.
3. Domain string contains exact match of trademark string (potentially including prefix or suffix, e.g. “nike-shoes.TLD” or “cheap-nike.TLD”).

 

Additional Noteworthy Safeguards

1. Registrant committed not to infringe the rights of third parties in its registration agreement, as required by the RA and RAA.
2. Registrant was informed at the time that its data was collected that it could be processed for third-party purposes, including intellectual property protection.

 

In these cases, disclosure can be automated.

 

 

Brian J. King  
Director of Internet Policy and Industry Affairs

 

T +1 443 761 3726
markmonitor.com

 

MarkMonitor
Protecting companies and consumers in a digital world

 

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