IPC Proposal for Day 1 Automation
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<http://www.markmonitor.com> MarkMonitor Protecting companies and consumers in a digital world
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 Am 27.01.2020 um 21:52 schrieb King, Brian via Gnso-epdp-team:
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 <http://www.markmonitor.com>_
*MarkMonitor *Protecting companies and consumers in a digital world
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-- Volker A. Greimann General Counsel and Policy Manager *KEY-SYSTEMS GMBH* T: +49 6894 9396901 M: +49 6894 9396851 F: +49 6894 9396851 W: www.key-systems.net Key-Systems GmbH is a company registered at the local court of Saarbruecken, Germany with the registration no. HR B 18835 CEO: Alexander Siffrin Part of the CentralNic Group PLC (LON: CNIC) a company registered in England and Wales with company number 8576358.
Hi Volker, I appreciate the constructive examples. In cases like the ones you mention, I think we should be careful about which "standard of review" is appropriate for ICANN and the SSAD to take. In the UDRP context the IP owner has to prove her 3.5 elements, but that's not an appropriate (or possible) standard for disclosure for the purposes of the TM owner establishing her case. As an aside, the fact that TM law has its complexities is all the more reason not to burden contracted parties (many of whom don't employ a trademark attorney (or any attorney), a data protection officer, etc.) with understanding and evaluating even the level of nuance we're discussing here. We propose to establish sufficiently robust safeguards to ensure that disclosure is valid for the third-party purpose of establishing a legal claim. This should be possible within the parameters we've suggested. The law allows for Mr. Nike's data to be processed for the limited time required for this limited purpose, with these safeguards in place. Brian J. King Director of Internet Policy and Industry Affairs T +1 443 761 3726 markmonitor.com<http://www.markmonitor.com> MarkMonitor Protecting companies and consumers in a digital world From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org> On Behalf Of Volker Greimann Sent: Monday, February 3, 2020 4:47 AM To: gnso-epdp-team@icann.org Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation 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 Am 27.01.2020 um 21:52 schrieb King, Brian via Gnso-epdp-team: 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<http://www.markmonitor.com> MarkMonitor Protecting companies and consumers in a digital world _______________________________________________ Gnso-epdp-team mailing list Gnso-epdp-team@icann.org<mailto:Gnso-epdp-team@icann.org> https://mm.icann.org/mailman/listinfo/gnso-epdp-team<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Depdp-2Dteam&d=DwMD-g&c=OGmtg_3SI10Cogwk-ShFiw&r=qQNCXqU_XE2XIdXbawYmk-YDflYH6pd8ffXlzxU37OA&m=tNewvfZExL8wSOcbrqGkVHZnOauBo5glaeBMsDDZvHU&s=3b5SYIQJ3FUgChckembgp_NmBrWqddZO2d0jjz-eT9o&e=> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_policy&d=DwMD-g&c=OGmtg_3SI10Cogwk-ShFiw&r=qQNCXqU_XE2XIdXbawYmk-YDflYH6pd8ffXlzxU37OA&m=tNewvfZExL8wSOcbrqGkVHZnOauBo5glaeBMsDDZvHU&s=sMm6twdvRmgfvumjTyWWXRVVOFxK5Ten0ok893vjsZ0&e=>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_tos&d=DwMD-g&c=OGmtg_3SI10Cogwk-ShFiw&r=qQNCXqU_XE2XIdXbawYmk-YDflYH6pd8ffXlzxU37OA&m=tNewvfZExL8wSOcbrqGkVHZnOauBo5glaeBMsDDZvHU&s=xjk7wHHcQJVUa-C4L2vH685cETCxLBpRqePmY6NirVs&e=>). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. -- Volker A. Greimann General Counsel and Policy Manager KEY-SYSTEMS GMBH T: +49 6894 9396901 M: +49 6894 9396851 F: +49 6894 9396851 W: www.key-systems.net<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.key-2Dsystems.net&d=...> Key-Systems GmbH is a company registered at the local court of Saarbruecken, Germany with the registration no. HR B 18835 CEO: Alexander Siffrin Part of the CentralNic Group PLC (LON: CNIC) a company registered in England and Wales with company number 8576358.
Hi Brian, Just so I’m crystal clear in what you’re saying here…can you confirm this is your viewpoint? Trademark law is complex and nuanced, so we HAVE to automate disclosure of non-public data so that contracted parties aren’t burdened with the review of such disclosure requests? Maybe a real-world example would help my non-legal mind here… Brandsight has a trademark for “Brandsight” Let’s say a party has registered brandsightconsulting.london Is it your assertion that Brandsight would be entitled to automatic disclosure of non-public data only on the grounds of the registered trademark being included in the domain name? Trying to boil down the discussion to something tangible. Thanks. Matt From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org> on behalf of "King, Brian via Gnso-epdp-team" <gnso-epdp-team@icann.org> Reply-To: "King, Brian" <Brian.King@markmonitor.com> Date: Monday, February 3, 2020 at 12:29 PM To: "gnso-epdp-team@icann.org" <gnso-epdp-team@icann.org> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Hi Volker, I appreciate the constructive examples. In cases like the ones you mention, I think we should be careful about which “standard of review” is appropriate for ICANN and the SSAD to take. In the UDRP context the IP owner has to prove her 3.5 elements, but that’s not an appropriate (or possible) standard for disclosure for the purposes of the TM owner establishing her case. As an aside, the fact that TM law has its complexities is all the more reason not to burden contracted parties (many of whom don’t employ a trademark attorney (or any attorney), a data protection officer, etc.) with understanding and evaluating even the level of nuance we’re discussing here. We propose to establish sufficiently robust safeguards to ensure that disclosure is valid for the third-party purpose of establishing a legal claim. This should be possible within the parameters we’ve suggested. The law allows for Mr. Nike’s data to be processed for the limited time required for this limited purpose, with these safeguards in place. Brian J. King Director of Internet Policy and Industry Affairs T +1 443 761 3726 markmonitor.com<http://www.markmonitor.com> MarkMonitor Protecting companies and consumers in a digital world From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org> On Behalf Of Volker Greimann Sent: Monday, February 3, 2020 4:47 AM To: gnso-epdp-team@icann.org Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation 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 Am 27.01.2020 um 21:52 schrieb King, Brian via Gnso-epdp-team: 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<http://www.markmonitor.com> MarkMonitor Protecting companies and consumers in a digital world _______________________________________________ Gnso-epdp-team mailing list Gnso-epdp-team@icann.org<mailto:Gnso-epdp-team@icann.org> https://mm.icann.org/mailman/listinfo/gnso-epdp-team<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Depdp-2Dteam&d=DwMD-g&c=OGmtg_3SI10Cogwk-ShFiw&r=qQNCXqU_XE2XIdXbawYmk-YDflYH6pd8ffXlzxU37OA&m=tNewvfZExL8wSOcbrqGkVHZnOauBo5glaeBMsDDZvHU&s=3b5SYIQJ3FUgChckembgp_NmBrWqddZO2d0jjz-eT9o&e=> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_policy&d=DwMD-g&c=OGmtg_3SI10Cogwk-ShFiw&r=qQNCXqU_XE2XIdXbawYmk-YDflYH6pd8ffXlzxU37OA&m=tNewvfZExL8wSOcbrqGkVHZnOauBo5glaeBMsDDZvHU&s=sMm6twdvRmgfvumjTyWWXRVVOFxK5Ten0ok893vjsZ0&e=>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_tos&d=DwMD-g&c=OGmtg_3SI10Cogwk-ShFiw&r=qQNCXqU_XE2XIdXbawYmk-YDflYH6pd8ffXlzxU37OA&m=tNewvfZExL8wSOcbrqGkVHZnOauBo5glaeBMsDDZvHU&s=xjk7wHHcQJVUa-C4L2vH685cETCxLBpRqePmY6NirVs&e=>). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. -- Volker A. Greimann General Counsel and Policy Manager KEY-SYSTEMS GMBH T: +49 6894 9396901 M: +49 6894 9396851 F: +49 6894 9396851 W: www.key-systems.net<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.key-2Dsystems.net&d=...> Key-Systems GmbH is a company registered at the local court of Saarbruecken, Germany with the registration no. HR B 18835 CEO: Alexander Siffrin Part of the CentralNic Group PLC (LON: CNIC) a company registered in England and Wales with company number 8576358.
Hi- Trying to boil this down to something that easier to understand. The proposal doesn’t say that all trademark requests by any trademark holder are to be automated. Instead we are focusing on a smaller subset that is defined narrowly --- those trademarks that have already been validated in the Trademark Clearinghouse, coupled with an assertion of agency by the requestor for the trademark owner that has been made to the authentication body. The domain-name string would need to include that trademark. The requestor would be subject to the safeguards, and risk losing its accreditation if it submits requests that are improper. A requester does not need to prove its entire trademark infringement case to justify disclosure of the redacted data – the data is provided to enable the TM holder to investigate whether it has a case it wishes to pursue. The SSAD and contracted parties should not be imposing their understanding of trademark law to judge the veracity of the requestor’ rights – that’s the role of attorneys, judges or UDRP mediators. Margie [https://facebook.design/public/images/logo.gif] Margie Milam Online IP Enforcement & Protection Lead | Legal IP NOTICE: This email (including any attachments) may contain information that is private, confidential, or protected by attorney-client or other privilege. Unless you are the intended recipient, you may not use, copy, or retransmit the email or its contents. From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org> on behalf of Matt Serlin <matt@brandsight.com> Date: Monday, February 3, 2020 at 11:45 AM To: "brian.kingATmarkmonitor.com" <brian.king@markmonitor.com>, "gnso-epdp-team@icann.org" <gnso-epdp-team@icann.org> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Hi Brian, Just so I’m crystal clear in what you’re saying here…can you confirm this is your viewpoint? Trademark law is complex and nuanced, so we HAVE to automate disclosure of non-public data so that contracted parties aren’t burdened with the review of such disclosure requests? Maybe a real-world example would help my non-legal mind here… Brandsight has a trademark for “Brandsight” Let’s say a party has registered brandsightconsulting.london Is it your assertion that Brandsight would be entitled to automatic disclosure of non-public data only on the grounds of the registered trademark being included in the domain name? Trying to boil down the discussion to something tangible. Thanks. Matt From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org> on behalf of "King, Brian via Gnso-epdp-team" <gnso-epdp-team@icann.org> Reply-To: "King, Brian" <Brian.King@markmonitor.com> Date: Monday, February 3, 2020 at 12:29 PM To: "gnso-epdp-team@icann.org" <gnso-epdp-team@icann.org> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Hi Volker, I appreciate the constructive examples. In cases like the ones you mention, I think we should be careful about which “standard of review” is appropriate for ICANN and the SSAD to take. In the UDRP context the IP owner has to prove her 3.5 elements, but that’s not an appropriate (or possible) standard for disclosure for the purposes of the TM owner establishing her case. As an aside, the fact that TM law has its complexities is all the more reason not to burden contracted parties (many of whom don’t employ a trademark attorney (or any attorney), a data protection officer, etc.) with understanding and evaluating even the level of nuance we’re discussing here. We propose to establish sufficiently robust safeguards to ensure that disclosure is valid for the third-party purpose of establishing a legal claim. This should be possible within the parameters we’ve suggested. The law allows for Mr. Nike’s data to be processed for the limited time required for this limited purpose, with these safeguards in place. Brian J. King Director of Internet Policy and Industry Affairs T +1 443 761 3726 markmonitor.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.markmonitor.com&d=Dw...> MarkMonitor Protecting companies and consumers in a digital world From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org> On Behalf Of Volker Greimann Sent: Monday, February 3, 2020 4:47 AM To: gnso-epdp-team@icann.org Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation 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 Am 27.01.2020 um 21:52 schrieb King, Brian via Gnso-epdp-team: 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<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.markmonitor.com&d=Dw...> MarkMonitor Protecting companies and consumers in a digital world _______________________________________________ Gnso-epdp-team mailing list Gnso-epdp-team@icann.org<mailto:Gnso-epdp-team@icann.org> https://mm.icann.org/mailman/listinfo/gnso-epdp-team<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Depdp-2Dteam&d=DwMD-g&c=OGmtg_3SI10Cogwk-ShFiw&r=qQNCXqU_XE2XIdXbawYmk-YDflYH6pd8ffXlzxU37OA&m=tNewvfZExL8wSOcbrqGkVHZnOauBo5glaeBMsDDZvHU&s=3b5SYIQJ3FUgChckembgp_NmBrWqddZO2d0jjz-eT9o&e=> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_policy&d=DwMD-g&c=OGmtg_3SI10Cogwk-ShFiw&r=qQNCXqU_XE2XIdXbawYmk-YDflYH6pd8ffXlzxU37OA&m=tNewvfZExL8wSOcbrqGkVHZnOauBo5glaeBMsDDZvHU&s=sMm6twdvRmgfvumjTyWWXRVVOFxK5Ten0ok893vjsZ0&e=>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_tos&d=DwMD-g&c=OGmtg_3SI10Cogwk-ShFiw&r=qQNCXqU_XE2XIdXbawYmk-YDflYH6pd8ffXlzxU37OA&m=tNewvfZExL8wSOcbrqGkVHZnOauBo5glaeBMsDDZvHU&s=xjk7wHHcQJVUa-C4L2vH685cETCxLBpRqePmY6NirVs&e=>). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. -- Volker A. Greimann General Counsel and Policy Manager KEY-SYSTEMS GMBH T: +49 6894 9396901 M: +49 6894 9396851 F: +49 6894 9396851 W: www.key-systems.net<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.key-2Dsystems.net&d=...> Key-Systems GmbH is a company registered at the local court of Saarbruecken, Germany with the registration no. HR B 18835 CEO: Alexander Siffrin Part of the CentralNic Group PLC (LON: CNIC) a company registered in England and Wales with company number 8576358.
Hi all, I truly believe we need to talk about what we mean by automation. Reading the latest e-mails I got the impression that we are not thinking along the same lines. As I tried to outline in LA, I think automation can work if the following parameters are met: 1. Requestor is a trademark owner, which needs to be verified with the respective trademark office. 2. The trademark must be life (not just applied for, rejected or expired). 3. The domain name non-public registration data is asked for is either identical with the trademark or the trademark is a prefix, infix or suffix of the domain name. Additonally, all safeguards we have identified apply. Automation would not work for figurative marks or where the domain name is allegedly confusingly similar to the trademark. Such cases require manual review. You might remember I said in LA that our policies require more detail or the use cases require more work. This is exactly what I meant. We need to be specific in what can or must be done in certain cases. The use cases are too broad brush, but I think we can make progress if we continue the exchange of thoughts (as Janis said, this would likely take place before we publish the final report. Best, Thomas
Am 03.02.2020 um 21:12 schrieb Margie Milam <margiemilam@fb.com>:
Hi-
Trying to boil this down to something that easier to understand.
The proposal doesn’t say that all trademark requests by any trademark holder are to be automated. Instead we are focusing on a smaller subset that is defined narrowly --- those trademarks that have already been validated in the Trademark Clearinghouse, coupled with an assertion of agency by the requestor for the trademark owner that has been made to the authentication body. The domain-name string would need to include that trademark. The requestor would be subject to the safeguards, and risk losing its accreditation if it submits requests that are improper.
A requester does not need to prove its entire trademark infringement case to justify disclosure of the redacted data – the data is provided to enable the TM holder to investigate whether it has a case it wishes to pursue. The SSAD and contracted parties should not be imposing their understanding of trademark law to judge the veracity of the requestor’ rights – that’s the role of attorneys, judges or UDRP mediators.
Margie
Margie Milam Online IP Enforcement & Protection Lead | Legal IP NOTICE: This email (including any attachments) may contain information that is private, confidential, or protected by attorney-client or other privilege. Unless you are the intended recipient, you may not use, copy, or retransmit the email or its contents.
From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org <mailto:gnso-epdp-team-bounces@icann.org>> on behalf of Matt Serlin <matt@brandsight.com <mailto:matt@brandsight.com>> Date: Monday, February 3, 2020 at 11:45 AM To: "brian.kingATmarkmonitor.com <http://brian.kingatmarkmonitor.com/>" <brian.king@markmonitor.com <mailto:brian.king@markmonitor.com>>, "gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation
Hi Brian,
Just so I’m crystal clear in what you’re saying here…can you confirm this is your viewpoint?
Trademark law is complex and nuanced, so we HAVE to automate disclosure of non-public data so that contracted parties aren’t burdened with the review of such disclosure requests?
Maybe a real-world example would help my non-legal mind here…
Brandsight has a trademark for “Brandsight”
Let’s say a party has registered brandsightconsulting.london
Is it your assertion that Brandsight would be entitled to automatic disclosure of non-public data only on the grounds of the registered trademark being included in the domain name?
Trying to boil down the discussion to something tangible. Thanks.
Matt
From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org <mailto:gnso-epdp-team-bounces@icann.org>> on behalf of "King, Brian via Gnso-epdp-team" <gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>> Reply-To: "King, Brian" <Brian.King@markmonitor.com <mailto:Brian.King@markmonitor.com>> Date: Monday, February 3, 2020 at 12:29 PM To: "gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation
Hi Volker,
I appreciate the constructive examples.
In cases like the ones you mention, I think we should be careful about which “standard of review” is appropriate for ICANN and the SSAD to take. In the UDRP context the IP owner has to prove her 3.5 elements, but that’s not an appropriate (or possible) standard for disclosure for the purposes of the TM owner establishing her case.
As an aside, the fact that TM law has its complexities is all the more reason not to burden contracted parties (many of whom don’t employ a trademark attorney (or any attorney), a data protection officer, etc.) with understanding and evaluating even the level of nuance we’re discussing here.
We propose to establish sufficiently robust safeguards to ensure that disclosure is valid for the third-party purpose of establishing a legal claim. This should be possible within the parameters we’ve suggested. The law allows for Mr. Nike’s data to be processed for the limited time required for this limited purpose, with these safeguards in place.
Brian J. King Director of Internet Policy and Industry Affairs
T +1 443 761 3726 markmonitor.com <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.markmonitor.com&d=Dw...>
MarkMonitor Protecting companies and consumers in a digital world
From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org <mailto:gnso-epdp-team-bounces@icann.org>> On Behalf Of Volker Greimann Sent: Monday, February 3, 2020 4:47 AM To: gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation
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 <http://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
Am 27.01.2020 um 21:52 schrieb King, Brian via Gnso-epdp-team:
Hello EPDP Team,
Please find below our first proposal for automated disclosure.
Trademark Infringement in Domain Name
Requestor Safeguards Accreditation Authority determines that the trademark is valid. Accreditation Authority determines that Requestor is the legal owner, agent, or service provider of the trademark.
Request Safeguards Requestor alleges that the domain name infringes Requestor’s trademark. 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. 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 Registrant committed not to infringe the rights of third parties in its registration agreement, as required by the RA and RAA. 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 <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.markmonitor.com&d=Dw...>
MarkMonitor Protecting companies and consumers in a digital world
_______________________________________________ Gnso-epdp-team mailing list Gnso-epdp-team@icann.org <mailto:Gnso-epdp-team@icann.org> https://mm.icann.org/mailman/listinfo/gnso-epdp-team <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_p...>) and the website Terms of Service (https://www.icann.org/privacy/tos <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_t...>). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. -- Volker A. Greimann General Counsel and Policy Manager KEY-SYSTEMS GMBH
T: +49 6894 9396901 M: +49 6894 9396851 F: +49 6894 9396851 W: www.key-systems.net <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.key-2Dsystems.net&d=...>
Key-Systems GmbH is a company registered at the local court of Saarbruecken, Germany with the registration no. HR B 18835 CEO: Alexander Siffrin
Part of the CentralNic Group PLC (LON: CNIC) a company registered in England and Wales with company number 8576358. _______________________________________________ Gnso-epdp-team mailing list Gnso-epdp-team@icann.org <mailto:Gnso-epdp-team@icann.org> https://mm.icann.org/mailman/listinfo/gnso-epdp-team <https://mm.icann.org/mailman/listinfo/gnso-epdp-team> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy <https://www.icann.org/privacy/policy>) and the website Terms of Service (https://www.icann.org/privacy/tos <https://www.icann.org/privacy/tos>). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.
Hi Matt, Please let me know if the below does not answer your question(s). Brian J. King Director of Internet Policy and Industry Affairs T +1 443 761 3726 markmonitor.com<http://www.markmonitor.com> MarkMonitor Protecting companies and consumers in a digital world From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org> On Behalf Of Thomas Rickert Sent: Monday, February 3, 2020 3:29 PM To: gnso-epdp-team@icann.org Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Hi all, I truly believe we need to talk about what we mean by automation. Reading the latest e-mails I got the impression that we are not thinking along the same lines. As I tried to outline in LA, I think automation can work if the following parameters are met: 1. Requestor is a trademark owner, which needs to be verified with the respective trademark office. 2. The trademark must be life (not just applied for, rejected or expired). 3. The domain name non-public registration data is asked for is either identical with the trademark or the trademark is a prefix, infix or suffix of the domain name. Additonally, all safeguards we have identified apply. Automation would not work for figurative marks or where the domain name is allegedly confusingly similar to the trademark. Such cases require manual review. You might remember I said in LA that our policies require more detail or the use cases require more work. This is exactly what I meant. We need to be specific in what can or must be done in certain cases. The use cases are too broad brush, but I think we can make progress if we continue the exchange of thoughts (as Janis said, this would likely take place before we publish the final report. Best, Thomas Am 03.02.2020 um 21:12 schrieb Margie Milam <margiemilam@fb.com<mailto:margiemilam@fb.com>>: Hi- Trying to boil this down to something that easier to understand. The proposal doesn’t say that all trademark requests by any trademark holder are to be automated. Instead we are focusing on a smaller subset that is defined narrowly --- those trademarks that have already been validated in the Trademark Clearinghouse, coupled with an assertion of agency by the requestor for the trademark owner that has been made to the authentication body. The domain-name string would need to include that trademark. The requestor would be subject to the safeguards, and risk losing its accreditation if it submits requests that are improper. A requester does not need to prove its entire trademark infringement case to justify disclosure of the redacted data – the data is provided to enable the TM holder to investigate whether it has a case it wishes to pursue. The SSAD and contracted parties should not be imposing their understanding of trademark law to judge the veracity of the requestor’ rights – that’s the role of attorneys, judges or UDRP mediators. Margie [Image removed by sender.] Margie Milam Online IP Enforcement & Protection Lead | Legal IP NOTICE: This email (including any attachments) may contain information that is private, confidential, or protected by attorney-client or other privilege. Unless you are the intended recipient, you may not use, copy, or retransmit the email or its contents. From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> on behalf of Matt Serlin <matt@brandsight.com<mailto:matt@brandsight.com>> Date: Monday, February 3, 2020 at 11:45 AM To: "brian.kingATmarkmonitor.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__brian.kingatmarkmonitor....>" <brian.king@markmonitor.com<mailto:brian.king@markmonitor.com>>, "gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Hi Brian, Just so I’m crystal clear in what you’re saying here…can you confirm this is your viewpoint? Trademark law is complex and nuanced, so we HAVE to automate disclosure of non-public data so that contracted parties aren’t burdened with the review of such disclosure requests? Maybe a real-world example would help my non-legal mind here… Brandsight has a trademark for “Brandsight” Let’s say a party has registered brandsightconsulting.london Is it your assertion that Brandsight would be entitled to automatic disclosure of non-public data only on the grounds of the registered trademark being included in the domain name? Trying to boil down the discussion to something tangible. Thanks. Matt From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> on behalf of "King, Brian via Gnso-epdp-team" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Reply-To: "King, Brian" <Brian.King@markmonitor.com<mailto:Brian.King@markmonitor.com>> Date: Monday, February 3, 2020 at 12:29 PM To: "gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Hi Volker, I appreciate the constructive examples. In cases like the ones you mention, I think we should be careful about which “standard of review” is appropriate for ICANN and the SSAD to take. In the UDRP context the IP owner has to prove her 3.5 elements, but that’s not an appropriate (or possible) standard for disclosure for the purposes of the TM owner establishing her case. As an aside, the fact that TM law has its complexities is all the more reason not to burden contracted parties (many of whom don’t employ a trademark attorney (or any attorney), a data protection officer, etc.) with understanding and evaluating even the level of nuance we’re discussing here. We propose to establish sufficiently robust safeguards to ensure that disclosure is valid for the third-party purpose of establishing a legal claim. This should be possible within the parameters we’ve suggested. The law allows for Mr. Nike’s data to be processed for the limited time required for this limited purpose, with these safeguards in place. Brian J. King Director of Internet Policy and Industry Affairs T +1 443 761 3726 markmonitor.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.markmonitor.com&d=Dw...> MarkMonitor Protecting companies and consumers in a digital world From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> On Behalf Of Volker Greimann Sent: Monday, February 3, 2020 4:47 AM To: gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation 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<https://urldefense.proofpoint.com/v2/url?u=http-3A__nissan.com_&d=DwMFaQ&c=O...>. 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 Am 27.01.2020 um 21:52 schrieb King, Brian via Gnso-epdp-team: 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<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.markmonitor.com&d=Dw...> MarkMonitor Protecting companies and consumers in a digital world _______________________________________________ Gnso-epdp-team mailing list Gnso-epdp-team@icann.org<mailto:Gnso-epdp-team@icann.org> https://mm.icann.org/mailman/listinfo/gnso-epdp-team<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Depdp-2Dteam&d=DwMD-g&c=OGmtg_3SI10Cogwk-ShFiw&r=qQNCXqU_XE2XIdXbawYmk-YDflYH6pd8ffXlzxU37OA&m=tNewvfZExL8wSOcbrqGkVHZnOauBo5glaeBMsDDZvHU&s=3b5SYIQJ3FUgChckembgp_NmBrWqddZO2d0jjz-eT9o&e=> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_policy&d=DwMD-g&c=OGmtg_3SI10Cogwk-ShFiw&r=qQNCXqU_XE2XIdXbawYmk-YDflYH6pd8ffXlzxU37OA&m=tNewvfZExL8wSOcbrqGkVHZnOauBo5glaeBMsDDZvHU&s=sMm6twdvRmgfvumjTyWWXRVVOFxK5Ten0ok893vjsZ0&e=>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_tos&d=DwMD-g&c=OGmtg_3SI10Cogwk-ShFiw&r=qQNCXqU_XE2XIdXbawYmk-YDflYH6pd8ffXlzxU37OA&m=tNewvfZExL8wSOcbrqGkVHZnOauBo5glaeBMsDDZvHU&s=xjk7wHHcQJVUa-C4L2vH685cETCxLBpRqePmY6NirVs&e=>). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. -- Volker A. Greimann General Counsel and Policy Manager KEY-SYSTEMS GMBH T: +49 6894 9396901 M: +49 6894 9396851 F: +49 6894 9396851 W: www.key-systems.net<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.key-2Dsystems.net&d=...> Key-Systems GmbH is a company registered at the local court of Saarbruecken, Germany with the registration no. HR B 18835 CEO: Alexander Siffrin Part of the CentralNic Group PLC (LON: CNIC) a company registered in England and Wales with company number 8576358. _______________________________________________ Gnso-epdp-team mailing list Gnso-epdp-team@icann.org<mailto:Gnso-epdp-team@icann.org> https://mm.icann.org/mailman/listinfo/gnso-epdp-team<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Depdp-2Dteam&d=DwMFaQ&c=OGmtg_3SI10Cogwk-ShFiw&r=qQNCXqU_XE2XIdXbawYmk-YDflYH6pd8ffXlzxU37OA&m=gfBUjbXa92X_x_J3_1TrJsIiVaIPIOyZ1vvmz5XnQWo&s=9z9oXRjeqfdgchCGYtnbswhxImdqioVW7MespLJI8KY&e=> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_policy&d=DwMFaQ&c=OGmtg_3SI10Cogwk-ShFiw&r=qQNCXqU_XE2XIdXbawYmk-YDflYH6pd8ffXlzxU37OA&m=gfBUjbXa92X_x_J3_1TrJsIiVaIPIOyZ1vvmz5XnQWo&s=pmrhBKgxTcJS4BKYrgVCmXSaUBROSQaFXVYZEWhLzVQ&e=>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_tos&d=DwMFaQ&c=OGmtg_3SI10Cogwk-ShFiw&r=qQNCXqU_XE2XIdXbawYmk-YDflYH6pd8ffXlzxU37OA&m=gfBUjbXa92X_x_J3_1TrJsIiVaIPIOyZ1vvmz5XnQWo&s=ZskKTpQMAtAshgeGpT_rSXq6Su1CcdrxuOxVXtZUYUM&e=>). 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Hi Brian and Thomas. I was with you until I got to the second part of #3: “…prefix, infix or suffix of the domain name.” This is exactly the sort of thing that should be kicked out of automation in favor of human review, as there is too much potential for false hits via string collision. (e.g.: “facebook.TLD” and “microsoftsurfacebook.TLD”). The simplest and most effective automation approach is for exact match, which is aligned with existing systems, like the Trademark Clearinghouse. Thanks - J. ------------- James Bladel GoDaddy From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org> on behalf of "King, Brian via Gnso-epdp-team" <gnso-epdp-team@icann.org> Reply-To: "King, Brian" <Brian.King@markmonitor.com> Date: Monday, February 3, 2020 at 3:44 PM To: "gnso-epdp-team@icann.org" <gnso-epdp-team@icann.org> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Notice: This email is from an external sender. Hi Matt, Please let me know if the below does not answer your question(s). Brian J. King Director of Internet Policy and Industry Affairs T +1 443 761 3726 markmonitor.com<http://www.markmonitor.com> MarkMonitor Protecting companies and consumers in a digital world From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org> On Behalf Of Thomas Rickert Sent: Monday, February 3, 2020 3:29 PM To: gnso-epdp-team@icann.org Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Hi all, I truly believe we need to talk about what we mean by automation. Reading the latest e-mails I got the impression that we are not thinking along the same lines. As I tried to outline in LA, I think automation can work if the following parameters are met: 1. Requestor is a trademark owner, which needs to be verified with the respective trademark office. 2. The trademark must be life (not just applied for, rejected or expired). 3. The domain name non-public registration data is asked for is either identical with the trademark or the trademark is a prefix, infix or suffix of the domain name. Additonally, all safeguards we have identified apply. Automation would not work for figurative marks or where the domain name is allegedly confusingly similar to the trademark. Such cases require manual review. You might remember I said in LA that our policies require more detail or the use cases require more work. This is exactly what I meant. We need to be specific in what can or must be done in certain cases. The use cases are too broad brush, but I think we can make progress if we continue the exchange of thoughts (as Janis said, this would likely take place before we publish the final report. Best, Thomas Am 03.02.2020 um 21:12 schrieb Margie Milam <margiemilam@fb.com<mailto:margiemilam@fb.com>>: Hi- Trying to boil this down to something that easier to understand. The proposal doesn’t say that all trademark requests by any trademark holder are to be automated. Instead we are focusing on a smaller subset that is defined narrowly --- those trademarks that have already been validated in the Trademark Clearinghouse, coupled with an assertion of agency by the requestor for the trademark owner that has been made to the authentication body. The domain-name string would need to include that trademark. The requestor would be subject to the safeguards, and risk losing its accreditation if it submits requests that are improper. A requester does not need to prove its entire trademark infringement case to justify disclosure of the redacted data – the data is provided to enable the TM holder to investigate whether it has a case it wishes to pursue. The SSAD and contracted parties should not be imposing their understanding of trademark law to judge the veracity of the requestor’ rights – that’s the role of attorneys, judges or UDRP mediators. Margie [Image removed by sender.] Margie Milam Online IP Enforcement & Protection Lead | Legal IP NOTICE: This email (including any attachments) may contain information that is private, confidential, or protected by attorney-client or other privilege. Unless you are the intended recipient, you may not use, copy, or retransmit the email or its contents. From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> on behalf of Matt Serlin <matt@brandsight.com<mailto:matt@brandsight.com>> Date: Monday, February 3, 2020 at 11:45 AM To: "brian.kingATmarkmonitor.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__brian.kingatmarkmonitor....>" <brian.king@markmonitor.com<mailto:brian.king@markmonitor.com>>, "gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Hi Brian, Just so I’m crystal clear in what you’re saying here…can you confirm this is your viewpoint? Trademark law is complex and nuanced, so we HAVE to automate disclosure of non-public data so that contracted parties aren’t burdened with the review of such disclosure requests? Maybe a real-world example would help my non-legal mind here… Brandsight has a trademark for “Brandsight” Let’s say a party has registered brandsightconsulting.london Is it your assertion that Brandsight would be entitled to automatic disclosure of non-public data only on the grounds of the registered trademark being included in the domain name? Trying to boil down the discussion to something tangible. Thanks. Matt From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> on behalf of "King, Brian via Gnso-epdp-team" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Reply-To: "King, Brian" <Brian.King@markmonitor.com<mailto:Brian.King@markmonitor.com>> Date: Monday, February 3, 2020 at 12:29 PM To: "gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Hi Volker, I appreciate the constructive examples. In cases like the ones you mention, I think we should be careful about which “standard of review” is appropriate for ICANN and the SSAD to take. In the UDRP context the IP owner has to prove her 3.5 elements, but that’s not an appropriate (or possible) standard for disclosure for the purposes of the TM owner establishing her case. As an aside, the fact that TM law has its complexities is all the more reason not to burden contracted parties (many of whom don’t employ a trademark attorney (or any attorney), a data protection officer, etc.) with understanding and evaluating even the level of nuance we’re discussing here. We propose to establish sufficiently robust safeguards to ensure that disclosure is valid for the third-party purpose of establishing a legal claim. This should be possible within the parameters we’ve suggested. The law allows for Mr. Nike’s data to be processed for the limited time required for this limited purpose, with these safeguards in place. Brian J. King Director of Internet Policy and Industry Affairs T +1 443 761 3726 markmonitor.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.markmonitor.com&d=Dw...> MarkMonitor Protecting companies and consumers in a digital world From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> On Behalf Of Volker Greimann Sent: Monday, February 3, 2020 4:47 AM To: gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation 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<https://urldefense.proofpoint.com/v2/url?u=http-3A__nissan.com_&d=DwMFaQ&c=O...>. 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 Am 27.01.2020 um 21:52 schrieb King, Brian via Gnso-epdp-team: 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<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.markmonitor.com&d=Dw...> MarkMonitor Protecting companies and consumers in a digital world _______________________________________________ Gnso-epdp-team mailing list Gnso-epdp-team@icann.org<mailto:Gnso-epdp-team@icann.org> https://mm.icann.org/mailman/listinfo/gnso-epdp-team<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Depdp-2Dteam&d=DwMD-g&c=OGmtg_3SI10Cogwk-ShFiw&r=qQNCXqU_XE2XIdXbawYmk-YDflYH6pd8ffXlzxU37OA&m=tNewvfZExL8wSOcbrqGkVHZnOauBo5glaeBMsDDZvHU&s=3b5SYIQJ3FUgChckembgp_NmBrWqddZO2d0jjz-eT9o&e=> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_policy&d=DwMD-g&c=OGmtg_3SI10Cogwk-ShFiw&r=qQNCXqU_XE2XIdXbawYmk-YDflYH6pd8ffXlzxU37OA&m=tNewvfZExL8wSOcbrqGkVHZnOauBo5glaeBMsDDZvHU&s=sMm6twdvRmgfvumjTyWWXRVVOFxK5Ten0ok893vjsZ0&e=>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_tos&d=DwMD-g&c=OGmtg_3SI10Cogwk-ShFiw&r=qQNCXqU_XE2XIdXbawYmk-YDflYH6pd8ffXlzxU37OA&m=tNewvfZExL8wSOcbrqGkVHZnOauBo5glaeBMsDDZvHU&s=xjk7wHHcQJVUa-C4L2vH685cETCxLBpRqePmY6NirVs&e=>). 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I keep thinking that I am done and ready to send the doc into the list, but I keep seeing interesting feedback. James, I didn’t understand your examples. Sorry, pls clarify “facebook.TLD” seems like a direct match “microsoftsurfacebook.TLD” is a concatenation of two trademarks, each of which is an exact match. From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org> On Behalf Of James M. Bladel Sent: Monday, February 3, 2020 2:51 PM To: King, Brian <Brian.King@markmonitor.com>; gnso-epdp-team@icann.org Subject: [EXTERNAL] Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Hi Brian and Thomas. I was with you until I got to the second part of #3: “…prefix, infix or suffix of the domain name.” This is exactly the sort of thing that should be kicked out of automation in favor of human review, as there is too much potential for false hits via string collision. (e.g.: “facebook.TLD” and “microsoftsurfacebook.TLD”). The simplest and most effective automation approach is for exact match, which is aligned with existing systems, like the Trademark Clearinghouse. Thanks - J. ------------- James Bladel GoDaddy From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> on behalf of "King, Brian via Gnso-epdp-team" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Reply-To: "King, Brian" <Brian.King@markmonitor.com<mailto:Brian.King@markmonitor.com>> Date: Monday, February 3, 2020 at 3:44 PM To: "gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Notice: This email is from an external sender. Hi Matt, Please let me know if the below does not answer your question(s). Brian J. King Director of Internet Policy and Industry Affairs T +1 443 761 3726 markmonitor.com<https://nam06.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.markmon...> MarkMonitor Protecting companies and consumers in a digital world From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> On Behalf Of Thomas Rickert Sent: Monday, February 3, 2020 3:29 PM To: gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Hi all, I truly believe we need to talk about what we mean by automation. Reading the latest e-mails I got the impression that we are not thinking along the same lines. As I tried to outline in LA, I think automation can work if the following parameters are met: 1. Requestor is a trademark owner, which needs to be verified with the respective trademark office. 2. The trademark must be life (not just applied for, rejected or expired). 3. The domain name non-public registration data is asked for is either identical with the trademark or the trademark is a prefix, infix or suffix of the domain name. Additonally, all safeguards we have identified apply. Automation would not work for figurative marks or where the domain name is allegedly confusingly similar to the trademark. Such cases require manual review. You might remember I said in LA that our policies require more detail or the use cases require more work. This is exactly what I meant. We need to be specific in what can or must be done in certain cases. The use cases are too broad brush, but I think we can make progress if we continue the exchange of thoughts (as Janis said, this would likely take place before we publish the final report. Best, Thomas Am 03.02.2020 um 21:12 schrieb Margie Milam <margiemilam@fb.com<mailto:margiemilam@fb.com>>: Hi- Trying to boil this down to something that easier to understand. The proposal doesn’t say that all trademark requests by any trademark holder are to be automated. Instead we are focusing on a smaller subset that is defined narrowly --- those trademarks that have already been validated in the Trademark Clearinghouse, coupled with an assertion of agency by the requestor for the trademark owner that has been made to the authentication body. The domain-name string would need to include that trademark. The requestor would be subject to the safeguards, and risk losing its accreditation if it submits requests that are improper. A requester does not need to prove its entire trademark infringement case to justify disclosure of the redacted data – the data is provided to enable the TM holder to investigate whether it has a case it wishes to pursue. The SSAD and contracted parties should not be imposing their understanding of trademark law to judge the veracity of the requestor’ rights – that’s the role of attorneys, judges or UDRP mediators. Margie [Image removed by sender.] Margie Milam Online IP Enforcement & Protection Lead | Legal IP NOTICE: This email (including any attachments) may contain information that is private, confidential, or protected by attorney-client or other privilege. Unless you are the intended recipient, you may not use, copy, or retransmit the email or its contents. From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> on behalf of Matt Serlin <matt@brandsight.com<mailto:matt@brandsight.com>> Date: Monday, February 3, 2020 at 11:45 AM To: "brian.kingATmarkmonitor.com<https://nam06.safelinks.protection.outlook.com/?url=https%3A%2F%2Furldefense...>" <brian.king@markmonitor.com<mailto:brian.king@markmonitor.com>>, "gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Hi Brian, Just so I’m crystal clear in what you’re saying here…can you confirm this is your viewpoint? Trademark law is complex and nuanced, so we HAVE to automate disclosure of non-public data so that contracted parties aren’t burdened with the review of such disclosure requests? Maybe a real-world example would help my non-legal mind here… Brandsight has a trademark for “Brandsight” Let’s say a party has registered brandsightconsulting.london Is it your assertion that Brandsight would be entitled to automatic disclosure of non-public data only on the grounds of the registered trademark being included in the domain name? Trying to boil down the discussion to something tangible. Thanks. Matt From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> on behalf of "King, Brian via Gnso-epdp-team" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Reply-To: "King, Brian" <Brian.King@markmonitor.com<mailto:Brian.King@markmonitor.com>> Date: Monday, February 3, 2020 at 12:29 PM To: "gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Hi Volker, I appreciate the constructive examples. In cases like the ones you mention, I think we should be careful about which “standard of review” is appropriate for ICANN and the SSAD to take. In the UDRP context the IP owner has to prove her 3.5 elements, but that’s not an appropriate (or possible) standard for disclosure for the purposes of the TM owner establishing her case. As an aside, the fact that TM law has its complexities is all the more reason not to burden contracted parties (many of whom don’t employ a trademark attorney (or any attorney), a data protection officer, etc.) with understanding and evaluating even the level of nuance we’re discussing here. We propose to establish sufficiently robust safeguards to ensure that disclosure is valid for the third-party purpose of establishing a legal claim. This should be possible within the parameters we’ve suggested. The law allows for Mr. Nike’s data to be processed for the limited time required for this limited purpose, with these safeguards in place. Brian J. King Director of Internet Policy and Industry Affairs T +1 443 761 3726 markmonitor.com<https://nam06.safelinks.protection.outlook.com/?url=https%3A%2F%2Furldefense...> MarkMonitor Protecting companies and consumers in a digital world From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> On Behalf Of Volker Greimann Sent: Monday, February 3, 2020 4:47 AM To: gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation 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<https://nam06.safelinks.protection.outlook.com/?url=https%3A%2F%2Furldefense...>. 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 Am 27.01.2020 um 21:52 schrieb King, Brian via Gnso-epdp-team: 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. 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“facebook” is a suffix of “microsoftsurfacebook”. An algorithm would see the strings, not the trademarks. ------------- James Bladel GoDaddy ________________________________ From: Mark Svancarek (CELA) <marksv@microsoft.com> Sent: Monday, February 3, 2020 16:10 To: James M. Bladel; King, Brian; gnso-epdp-team@icann.org Subject: RE: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Notice: This email is from an external sender. I keep thinking that I am done and ready to send the doc into the list, but I keep seeing interesting feedback. James, I didn’t understand your examples. Sorry, pls clarify “facebook.TLD” seems like a direct match “microsoftsurfacebook.TLD” is a concatenation of two trademarks, each of which is an exact match. From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org> On Behalf Of James M. Bladel Sent: Monday, February 3, 2020 2:51 PM To: King, Brian <Brian.King@markmonitor.com>; gnso-epdp-team@icann.org Subject: [EXTERNAL] Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Hi Brian and Thomas. I was with you until I got to the second part of #3: “…prefix, infix or suffix of the domain name.” This is exactly the sort of thing that should be kicked out of automation in favor of human review, as there is too much potential for false hits via string collision. (e.g.: “facebook.TLD” and “microsoftsurfacebook.TLD”). The simplest and most effective automation approach is for exact match, which is aligned with existing systems, like the Trademark Clearinghouse. Thanks - J. ------------- James Bladel GoDaddy From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> on behalf of "King, Brian via Gnso-epdp-team" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Reply-To: "King, Brian" <Brian.King@markmonitor.com<mailto:Brian.King@markmonitor.com>> Date: Monday, February 3, 2020 at 3:44 PM To: "gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Notice: This email is from an external sender. Hi Matt, Please let me know if the below does not answer your question(s). Brian J. King Director of Internet Policy and Industry Affairs T +1 443 761 3726 markmonitor.com<https://nam06.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.markmon...> MarkMonitor Protecting companies and consumers in a digital world From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> On Behalf Of Thomas Rickert Sent: Monday, February 3, 2020 3:29 PM To: gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Hi all, I truly believe we need to talk about what we mean by automation. Reading the latest e-mails I got the impression that we are not thinking along the same lines. As I tried to outline in LA, I think automation can work if the following parameters are met: 1. Requestor is a trademark owner, which needs to be verified with the respective trademark office. 2. The trademark must be life (not just applied for, rejected or expired). 3. The domain name non-public registration data is asked for is either identical with the trademark or the trademark is a prefix, infix or suffix of the domain name. Additonally, all safeguards we have identified apply. Automation would not work for figurative marks or where the domain name is allegedly confusingly similar to the trademark. Such cases require manual review. You might remember I said in LA that our policies require more detail or the use cases require more work. This is exactly what I meant. We need to be specific in what can or must be done in certain cases. The use cases are too broad brush, but I think we can make progress if we continue the exchange of thoughts (as Janis said, this would likely take place before we publish the final report. Best, Thomas Am 03.02.2020 um 21:12 schrieb Margie Milam <margiemilam@fb.com<mailto:margiemilam@fb.com>>: Hi- Trying to boil this down to something that easier to understand. The proposal doesn’t say that all trademark requests by any trademark holder are to be automated. Instead we are focusing on a smaller subset that is defined narrowly --- those trademarks that have already been validated in the Trademark Clearinghouse, coupled with an assertion of agency by the requestor for the trademark owner that has been made to the authentication body. The domain-name string would need to include that trademark. The requestor would be subject to the safeguards, and risk losing its accreditation if it submits requests that are improper. A requester does not need to prove its entire trademark infringement case to justify disclosure of the redacted data – the data is provided to enable the TM holder to investigate whether it has a case it wishes to pursue. The SSAD and contracted parties should not be imposing their understanding of trademark law to judge the veracity of the requestor’ rights – that’s the role of attorneys, judges or UDRP mediators. Margie [Image removed by sender.] Margie Milam Online IP Enforcement & Protection Lead | Legal IP NOTICE: This email (including any attachments) may contain information that is private, confidential, or protected by attorney-client or other privilege. Unless you are the intended recipient, you may not use, copy, or retransmit the email or its contents. From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> on behalf of Matt Serlin <matt@brandsight.com<mailto:matt@brandsight.com>> Date: Monday, February 3, 2020 at 11:45 AM To: "brian.kingATmarkmonitor.com<https://nam06.safelinks.protection.outlook.com/?url=https%3A%2F%2Furldefense...>" <brian.king@markmonitor.com<mailto:brian.king@markmonitor.com>>, "gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Hi Brian, Just so I’m crystal clear in what you’re saying here…can you confirm this is your viewpoint? Trademark law is complex and nuanced, so we HAVE to automate disclosure of non-public data so that contracted parties aren’t burdened with the review of such disclosure requests? Maybe a real-world example would help my non-legal mind here… Brandsight has a trademark for “Brandsight” Let’s say a party has registered brandsightconsulting.london Is it your assertion that Brandsight would be entitled to automatic disclosure of non-public data only on the grounds of the registered trademark being included in the domain name? Trying to boil down the discussion to something tangible. Thanks. Matt From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> on behalf of "King, Brian via Gnso-epdp-team" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Reply-To: "King, Brian" <Brian.King@markmonitor.com<mailto:Brian.King@markmonitor.com>> Date: Monday, February 3, 2020 at 12:29 PM To: "gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Hi Volker, I appreciate the constructive examples. In cases like the ones you mention, I think we should be careful about which “standard of review” is appropriate for ICANN and the SSAD to take. In the UDRP context the IP owner has to prove her 3.5 elements, but that’s not an appropriate (or possible) standard for disclosure for the purposes of the TM owner establishing her case. As an aside, the fact that TM law has its complexities is all the more reason not to burden contracted parties (many of whom don’t employ a trademark attorney (or any attorney), a data protection officer, etc.) with understanding and evaluating even the level of nuance we’re discussing here. We propose to establish sufficiently robust safeguards to ensure that disclosure is valid for the third-party purpose of establishing a legal claim. This should be possible within the parameters we’ve suggested. The law allows for Mr. Nike’s data to be processed for the limited time required for this limited purpose, with these safeguards in place. Brian J. King Director of Internet Policy and Industry Affairs T +1 443 761 3726 markmonitor.com<https://nam06.safelinks.protection.outlook.com/?url=https%3A%2F%2Furldefense...> MarkMonitor Protecting companies and consumers in a digital world From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> On Behalf Of Volker Greimann Sent: Monday, February 3, 2020 4:47 AM To: gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation 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<https://nam06.safelinks.protection.outlook.com/?url=https%3A%2F%2Furldefense...>. 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 Am 27.01.2020 um 21:52 schrieb King, Brian via Gnso-epdp-team: 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. 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Hi James, In your example, if Facebook: 1. owns a national TM registration for FACEBOOK, 2. validates that TM and its proof us use with the TMCH, 3. asserts, under penalty of losing their SSAD access, that they allege that the domain is infringing, 4. requests data for a domain name that contains an exact match of that same TM, and 5. swears/affirms that it will only process the RDS data for the purpose of establishing its legal claim, and for no longer than required, then it’s legally sound for SSAD to automate that disclosure. There is no potential for “false hits” – the SSAD is able to rely on these safeguards for non-exact match domains. Also to your point, without limiting the generality of my point above, the TMCH does allow for related “labels” (e.g. brandplusterm). Brian J. King Director of Internet Policy and Industry Affairs T +1 443 761 3726 markmonitor.com<http://www.markmonitor.com> MarkMonitor Protecting companies and consumers in a digital world From: James M. Bladel <jbladel@godaddy.com> Sent: Monday, February 3, 2020 5:51 PM To: King, Brian <Brian.King@markmonitor.com>; gnso-epdp-team@icann.org Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Hi Brian and Thomas. I was with you until I got to the second part of #3: “…prefix, infix or suffix of the domain name.” This is exactly the sort of thing that should be kicked out of automation in favor of human review, as there is too much potential for false hits via string collision. (e.g.: “facebook.TLD” and “microsoftsurfacebook.TLD”). The simplest and most effective automation approach is for exact match, which is aligned with existing systems, like the Trademark Clearinghouse. Thanks - J. ------------- James Bladel GoDaddy From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> on behalf of "King, Brian via Gnso-epdp-team" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Reply-To: "King, Brian" <Brian.King@markmonitor.com<mailto:Brian.King@markmonitor.com>> Date: Monday, February 3, 2020 at 3:44 PM To: "gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Notice: This email is from an external sender. Hi Matt, Please let me know if the below does not answer your question(s). Brian J. King Director of Internet Policy and Industry Affairs T +1 443 761 3726 markmonitor.com<http://www.markmonitor.com> MarkMonitor Protecting companies and consumers in a digital world From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> On Behalf Of Thomas Rickert Sent: Monday, February 3, 2020 3:29 PM To: gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Hi all, I truly believe we need to talk about what we mean by automation. Reading the latest e-mails I got the impression that we are not thinking along the same lines. As I tried to outline in LA, I think automation can work if the following parameters are met: 1. Requestor is a trademark owner, which needs to be verified with the respective trademark office. 2. The trademark must be life (not just applied for, rejected or expired). 3. The domain name non-public registration data is asked for is either identical with the trademark or the trademark is a prefix, infix or suffix of the domain name. Additonally, all safeguards we have identified apply. Automation would not work for figurative marks or where the domain name is allegedly confusingly similar to the trademark. Such cases require manual review. You might remember I said in LA that our policies require more detail or the use cases require more work. This is exactly what I meant. We need to be specific in what can or must be done in certain cases. The use cases are too broad brush, but I think we can make progress if we continue the exchange of thoughts (as Janis said, this would likely take place before we publish the final report. Best, Thomas Am 03.02.2020 um 21:12 schrieb Margie Milam <margiemilam@fb.com<mailto:margiemilam@fb.com>>: Hi- Trying to boil this down to something that easier to understand. The proposal doesn’t say that all trademark requests by any trademark holder are to be automated. Instead we are focusing on a smaller subset that is defined narrowly --- those trademarks that have already been validated in the Trademark Clearinghouse, coupled with an assertion of agency by the requestor for the trademark owner that has been made to the authentication body. The domain-name string would need to include that trademark. The requestor would be subject to the safeguards, and risk losing its accreditation if it submits requests that are improper. A requester does not need to prove its entire trademark infringement case to justify disclosure of the redacted data – the data is provided to enable the TM holder to investigate whether it has a case it wishes to pursue. The SSAD and contracted parties should not be imposing their understanding of trademark law to judge the veracity of the requestor’ rights – that’s the role of attorneys, judges or UDRP mediators. Margie [Image removed by sender.] Margie Milam Online IP Enforcement & Protection Lead | Legal IP NOTICE: This email (including any attachments) may contain information that is private, confidential, or protected by attorney-client or other privilege. Unless you are the intended recipient, you may not use, copy, or retransmit the email or its contents. From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> on behalf of Matt Serlin <matt@brandsight.com<mailto:matt@brandsight.com>> Date: Monday, February 3, 2020 at 11:45 AM To: "brian.kingATmarkmonitor.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__brian.kingatmarkmonitor....>" <brian.king@markmonitor.com<mailto:brian.king@markmonitor.com>>, "gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Hi Brian, Just so I’m crystal clear in what you’re saying here…can you confirm this is your viewpoint? Trademark law is complex and nuanced, so we HAVE to automate disclosure of non-public data so that contracted parties aren’t burdened with the review of such disclosure requests? Maybe a real-world example would help my non-legal mind here… Brandsight has a trademark for “Brandsight” Let’s say a party has registered brandsightconsulting.london Is it your assertion that Brandsight would be entitled to automatic disclosure of non-public data only on the grounds of the registered trademark being included in the domain name? Trying to boil down the discussion to something tangible. Thanks. Matt From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> on behalf of "King, Brian via Gnso-epdp-team" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Reply-To: "King, Brian" <Brian.King@markmonitor.com<mailto:Brian.King@markmonitor.com>> Date: Monday, February 3, 2020 at 12:29 PM To: "gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Hi Volker, I appreciate the constructive examples. In cases like the ones you mention, I think we should be careful about which “standard of review” is appropriate for ICANN and the SSAD to take. In the UDRP context the IP owner has to prove her 3.5 elements, but that’s not an appropriate (or possible) standard for disclosure for the purposes of the TM owner establishing her case. As an aside, the fact that TM law has its complexities is all the more reason not to burden contracted parties (many of whom don’t employ a trademark attorney (or any attorney), a data protection officer, etc.) with understanding and evaluating even the level of nuance we’re discussing here. We propose to establish sufficiently robust safeguards to ensure that disclosure is valid for the third-party purpose of establishing a legal claim. This should be possible within the parameters we’ve suggested. The law allows for Mr. Nike’s data to be processed for the limited time required for this limited purpose, with these safeguards in place. Brian J. King Director of Internet Policy and Industry Affairs T +1 443 761 3726 markmonitor.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.markmonitor.com&d=Dw...> MarkMonitor Protecting companies and consumers in a digital world From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> On Behalf Of Volker Greimann Sent: Monday, February 3, 2020 4:47 AM To: gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation 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<https://urldefense.proofpoint.com/v2/url?u=http-3A__nissan.com_&d=DwMFaQ&c=O...>. 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 Am 27.01.2020 um 21:52 schrieb King, Brian via Gnso-epdp-team: 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. 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This is not how this works! This is not how any of this works! All trademark-related requests will always have to go through a balancing test, which is not automatable given our current knowledge. What you are suggesting is neither legally sound nor acceptable. People have been trademarking any old word, even single letters can be trademarked. The word sex, which is subject to dozens, if not more, trademarks is contained in such words as Essex, Sussex, Middlesex, etc. We also have been over the concept of assertations of infringement not being sufficient for CPs to release data on that basis alone. TM-related requests will not be automatable for the forseeable future. Best, Volker Am 04.02.2020 um 00:22 schrieb King, Brian via Gnso-epdp-team:
Hi James,
In your example, if Facebook:
1. owns a national TM registration for FACEBOOK, 2. validates that TM and its proof us use with the TMCH, 3. asserts, under penalty of losing their SSAD access, that they allege that the domain is infringing, 4. requests data for a domain name that contains an exact match of that same TM, and 5. swears/affirms that it will only process the RDS data for the purpose of establishing its legal claim, and for no longer than required, then
it’s legally sound for SSAD to automate that disclosure. There is no potential for “false hits” – the SSAD is able to rely on these safeguards for non-exact match domains.
Also to your point, without limiting the generality of my point above, the TMCH does allow for related “labels” (e.g. brandplusterm).
*Brian J. King * Director of Internet Policy and Industry Affairs
T +1 443 761 3726_ markmonitor.com <http://www.markmonitor.com>_
*MarkMonitor *Protecting companies and consumers in a digital world
*From:* James M. Bladel <jbladel@godaddy.com> *Sent:* Monday, February 3, 2020 5:51 PM *To:* King, Brian <Brian.King@markmonitor.com>; gnso-epdp-team@icann.org *Subject:* Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation
Hi Brian and Thomas.
I was with you until I got to the second part of #3: “…/prefix, infix or suffix of the domain name/.”
This is exactly the sort of thing that should be kicked out of automation in favor of human review, as there is too much potential for false hits via string collision. (e.g.: “facebook.TLD” and “microsoftsurfacebook.TLD”).
The simplest and most effective automation approach is for exact match, which is aligned with existing systems, like the Trademark Clearinghouse.
Thanks -
J.
-------------
*James Bladel*
*GoDaddy*
*From: *Gnso-epdp-team <gnso-epdp-team-bounces@icann.org <mailto:gnso-epdp-team-bounces@icann.org>> on behalf of "King, Brian via Gnso-epdp-team" <gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>> *Reply-To: *"King, Brian" <Brian.King@markmonitor.com <mailto:Brian.King@markmonitor.com>> *Date: *Monday, February 3, 2020 at 3:44 PM *To: *"gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>> *Subject: *Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation
Notice:This email is from an external sender.
Hi Matt,
Please let me know if the below does not answer your question(s).
*Brian J. King * Director of Internet Policy and Industry Affairs
T +1 443 761 3726_ markmonitor.com <http://www.markmonitor.com>_
*MarkMonitor *Protecting companies and consumers in a digital world
*From:* Gnso-epdp-team <gnso-epdp-team-bounces@icann.org <mailto:gnso-epdp-team-bounces@icann.org>> *On Behalf Of *Thomas Rickert *Sent:* Monday, February 3, 2020 3:29 PM *To:* gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org> *Subject:* Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation
Hi all,
I truly believe we need to talk about what we mean by automation. Reading the latest e-mails I got the impression that we are not thinking along the same lines.
As I tried to outline in LA, I think automation can work if the following parameters are met:
1. Requestor is a trademark owner, which needs to be verified with the respective trademark office.
2. The trademark must be life (not just applied for, rejected or expired).
3. The domain name non-public registration data is asked for is either identical with the trademark or the trademark is a prefix, infix or suffix of the domain name.
Additonally, all safeguards we have identified apply. Automation would not work for figurative marks or where the domain name is allegedly confusingly similar to the trademark. Such cases require manual review.
You might remember I said in LA that our policies require more detail or the use cases require more work. This is exactly what I meant. We need to be specific in what can or must be done in certain cases. The use cases are too broad brush, but I think we can make progress if we continue the exchange of thoughts (as Janis said, this would likely take place before we publish the final report.
Best,
Thomas
Am 03.02.2020 um 21:12 schrieb Margie Milam <margiemilam@fb.com <mailto:margiemilam@fb.com>>:
Hi-
Trying to boil this down to something that easier to understand.
The proposal doesn’t say that all trademark requests by any trademark holder are to be automated. Instead we are focusing on a smaller subset that is defined narrowly --- those trademarks that have already been validated in the Trademark Clearinghouse, coupled with an assertion of agency by the requestor for the trademark owner that has been made to the authentication body. The domain-name string would need to include that trademark. The requestor would be subject to the safeguards, and risk losing its accreditation if it submits requests that are improper.
A requester does not need to prove its entire trademark infringement case to justify disclosure of the redacted data – the data is provided to enable the TM holder to investigate whether it has a case it wishes to pursue. The SSAD and contracted parties should not be imposing their understanding of trademark law to judge the veracity of the requestor’ rights – that’s the role of attorneys, judges or UDRP mediators.
Margie
**
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*Margie Milam*
Online IP Enforcement & Protection Lead | Legal IP
NOTICE: This email (including any attachments) may contain information that is private, confidential, or protected by attorney-client or other privilege. Unless you are the intended recipient, you may not use, copy, or retransmit the email or its contents.
*From:*Gnso-epdp-team <gnso-epdp-team-bounces@icann.org <mailto:gnso-epdp-team-bounces@icann.org>> on behalf of Matt Serlin <matt@brandsight.com <mailto:matt@brandsight.com>> *Date:*Monday, February 3, 2020 at 11:45 AM *To:*"brian.kingATmarkmonitor.com <https://urldefense.proofpoint.com/v2/url?u=http-3A__brian.kingatmarkmonitor....>" <brian.king@markmonitor.com <mailto:brian.king@markmonitor.com>>, "gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>> *Subject:*Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation
Hi Brian,
Just so I’m crystal clear in what you’re saying here…can you confirm this is your viewpoint?
*/Trademark law is complex and nuanced, so we HAVE to automate disclosure of non-public data so that contracted parties aren’t burdened with the review of such disclosure requests?/*
*//*
Maybe a real-world example would help my non-legal mind here…
Brandsight has a trademark for “Brandsight”
Let’s say a party has registered brandsightconsulting.london
Is it your assertion that Brandsight would be entitled to automatic disclosure of non-public data*/only/*on the grounds of the registered trademark being included in the domain name?
Trying to boil down the discussion to something tangible. Thanks.
Matt
*From:*Gnso-epdp-team <gnso-epdp-team-bounces@icann.org <mailto:gnso-epdp-team-bounces@icann.org>> on behalf of "King, Brian via Gnso-epdp-team" <gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>> *Reply-To:*"King, Brian" <Brian.King@markmonitor.com <mailto:Brian.King@markmonitor.com>> *Date:*Monday, February 3, 2020 at 12:29 PM *To:*"gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>> *Subject:*Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation
Hi Volker,
I appreciate the constructive examples.
In cases like the ones you mention, I think we should be careful about which “standard of review” is appropriate for ICANN and the SSAD to take. In the UDRP context the IP owner has to prove her 3.5 elements, but that’s not an appropriate (or possible) standard for disclosure for the purposes of the TM owner establishing her case.
As an aside, the fact that TM law has its complexities is all the more reason not to burden contracted parties (many of whom don’t employ a trademark attorney (or any attorney), a data protection officer, etc.) with understanding and evaluating even the level of nuance we’re discussing here.
We propose to establish sufficiently robust safeguards to ensure that disclosure is valid for the third-party purpose of establishing a legal claim. This should be possible within the parameters we’ve suggested. The law allows for Mr. Nike’s data to be processed for the limited time required for this limited purpose, with these safeguards in place.
*Brian J. King* Director of Internet Policy and Industry Affairs
T +1 443 761 3726_ markmonitor.com <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.markmonitor.com&d=DwMGaQ&c=5VD0RTtNlTh3ycd41b3MUw&r=_4XWSt8rUHZPiRG6CoP4Fnk_CCk4p550lffeMi3E1z8&m=8RC76GLir1NviF2oCoXbEWr-oiQyZgysXdFqccFVrDs&s=SaxJ8WbdGHpugdo4spOuk7Z01ZvutjzVUdTBqWbx1P0&e=>_
*MarkMonitor *Protecting companies and consumers in a digital world
*From:*Gnso-epdp-team <gnso-epdp-team-bounces@icann.org <mailto:gnso-epdp-team-bounces@icann.org>>*On Behalf Of*Volker Greimann *Sent:*Monday, February 3, 2020 4:47 AM *To:*gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org> *Subject:*Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation
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 ownsNissan.com <https://urldefense.proofpoint.com/v2/url?u=http-3A__nissan.com_&d=DwMFaQ&c=O...>.
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
Am 27.01.2020 um 21:52 schrieb King, Brian via Gnso-epdp-team:
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 <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.markmonitor.com&d=DwMGaQ&c=5VD0RTtNlTh3ycd41b3MUw&r=_4XWSt8rUHZPiRG6CoP4Fnk_CCk4p550lffeMi3E1z8&m=8RC76GLir1NviF2oCoXbEWr-oiQyZgysXdFqccFVrDs&s=SaxJ8WbdGHpugdo4spOuk7Z01ZvutjzVUdTBqWbx1P0&e=>_
*MarkMonitor *Protecting companies and consumers in a digital world
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Hi Volker, I appreciate the humor from the American TV commercial, in case non-western readers think you’re yelling at us :-) Since we’ve put a lot of legal thought behind this proposal (and two lawyers recommended this approach yesterday, one of whom is European), I’d like to request that you please articulate what risk you think exists to which parties in this scenario? If you can flesh that out, it will help us understand and address the risk you see. Thank you! Brian J. King Director of Internet Policy and Industry Affairs MarkMonitor / Part of Clarivate Analytics Phone: +1 (443) 761-3726 brian.king@markmonitor.com On Feb 4, 2020, at 4:23 AM, Volker Greimann <vgreimann@key-systems.net> wrote: This is not how this works! This is not how any of this works! All trademark-related requests will always have to go through a balancing test, which is not automatable given our current knowledge. What you are suggesting is neither legally sound nor acceptable. People have been trademarking any old word, even single letters can be trademarked. The word sex, which is subject to dozens, if not more, trademarks is contained in such words as Essex, Sussex, Middlesex, etc. We also have been over the concept of assertations of infringement not being sufficient for CPs to release data on that basis alone. TM-related requests will not be automatable for the forseeable future. Best, Volker Am 04.02.2020 um 00:22 schrieb King, Brian via Gnso-epdp-team: Hi James, In your example, if Facebook: 1. owns a national TM registration for FACEBOOK, 2. validates that TM and its proof us use with the TMCH, 3. asserts, under penalty of losing their SSAD access, that they allege that the domain is infringing, 4. requests data for a domain name that contains an exact match of that same TM, and 5. swears/affirms that it will only process the RDS data for the purpose of establishing its legal claim, and for no longer than required, then it’s legally sound for SSAD to automate that disclosure. There is no potential for “false hits” – the SSAD is able to rely on these safeguards for non-exact match domains. Also to your point, without limiting the generality of my point above, the TMCH does allow for related “labels” (e.g. brandplusterm). Brian J. King Director of Internet Policy and Industry Affairs T +1 443 761 3726 markmonitor.com<http://www.markmonitor.com> MarkMonitor Protecting companies and consumers in a digital world From: James M. Bladel <jbladel@godaddy.com><mailto:jbladel@godaddy.com> Sent: Monday, February 3, 2020 5:51 PM To: King, Brian <Brian.King@markmonitor.com><mailto:Brian.King@markmonitor.com>; gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Hi Brian and Thomas. I was with you until I got to the second part of #3: “…prefix, infix or suffix of the domain name.” This is exactly the sort of thing that should be kicked out of automation in favor of human review, as there is too much potential for false hits via string collision. (e.g.: “facebook.TLD” and “microsoftsurfacebook.TLD”). The simplest and most effective automation approach is for exact match, which is aligned with existing systems, like the Trademark Clearinghouse. Thanks - J. ------------- James Bladel GoDaddy From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> on behalf of "King, Brian via Gnso-epdp-team" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Reply-To: "King, Brian" <Brian.King@markmonitor.com<mailto:Brian.King@markmonitor.com>> Date: Monday, February 3, 2020 at 3:44 PM To: "gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Notice: This email is from an external sender. Hi Matt, Please let me know if the below does not answer your question(s). Brian J. King Director of Internet Policy and Industry Affairs T +1 443 761 3726 markmonitor.com<http://www.markmonitor.com> MarkMonitor Protecting companies and consumers in a digital world From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> On Behalf Of Thomas Rickert Sent: Monday, February 3, 2020 3:29 PM To: gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Hi all, I truly believe we need to talk about what we mean by automation. Reading the latest e-mails I got the impression that we are not thinking along the same lines. As I tried to outline in LA, I think automation can work if the following parameters are met: 1. Requestor is a trademark owner, which needs to be verified with the respective trademark office. 2. The trademark must be life (not just applied for, rejected or expired). 3. The domain name non-public registration data is asked for is either identical with the trademark or the trademark is a prefix, infix or suffix of the domain name. Additonally, all safeguards we have identified apply. Automation would not work for figurative marks or where the domain name is allegedly confusingly similar to the trademark. Such cases require manual review. You might remember I said in LA that our policies require more detail or the use cases require more work. This is exactly what I meant. We need to be specific in what can or must be done in certain cases. The use cases are too broad brush, but I think we can make progress if we continue the exchange of thoughts (as Janis said, this would likely take place before we publish the final report. Best, Thomas Am 03.02.2020 um 21:12 schrieb Margie Milam <margiemilam@fb.com<mailto:margiemilam@fb.com>>: Hi- Trying to boil this down to something that easier to understand. The proposal doesn’t say that all trademark requests by any trademark holder are to be automated. Instead we are focusing on a smaller subset that is defined narrowly --- those trademarks that have already been validated in the Trademark Clearinghouse, coupled with an assertion of agency by the requestor for the trademark owner that has been made to the authentication body. The domain-name string would need to include that trademark. The requestor would be subject to the safeguards, and risk losing its accreditation if it submits requests that are improper. A requester does not need to prove its entire trademark infringement case to justify disclosure of the redacted data – the data is provided to enable the TM holder to investigate whether it has a case it wishes to pursue. The SSAD and contracted parties should not be imposing their understanding of trademark law to judge the veracity of the requestor’ rights – that’s the role of attorneys, judges or UDRP mediators. Margie <image001.jpg> Margie Milam Online IP Enforcement & Protection Lead | Legal IP NOTICE: This email (including any attachments) may contain information that is private, confidential, or protected by attorney-client or other privilege. Unless you are the intended recipient, you may not use, copy, or retransmit the email or its contents. From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> on behalf of Matt Serlin <matt@brandsight.com<mailto:matt@brandsight.com>> Date: Monday, February 3, 2020 at 11:45 AM To: "brian.kingATmarkmonitor.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__brian.kingatmarkmonitor....>" <brian.king@markmonitor.com<mailto:brian.king@markmonitor.com>>, "gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Hi Brian, Just so I’m crystal clear in what you’re saying here…can you confirm this is your viewpoint? Trademark law is complex and nuanced, so we HAVE to automate disclosure of non-public data so that contracted parties aren’t burdened with the review of such disclosure requests? Maybe a real-world example would help my non-legal mind here… Brandsight has a trademark for “Brandsight” Let’s say a party has registered brandsightconsulting.london Is it your assertion that Brandsight would be entitled to automatic disclosure of non-public data only on the grounds of the registered trademark being included in the domain name? Trying to boil down the discussion to something tangible. Thanks. Matt From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> on behalf of "King, Brian via Gnso-epdp-team" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Reply-To: "King, Brian" <Brian.King@markmonitor.com<mailto:Brian.King@markmonitor.com>> Date: Monday, February 3, 2020 at 12:29 PM To: "gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org>> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation Hi Volker, I appreciate the constructive examples. In cases like the ones you mention, I think we should be careful about which “standard of review” is appropriate for ICANN and the SSAD to take. In the UDRP context the IP owner has to prove her 3.5 elements, but that’s not an appropriate (or possible) standard for disclosure for the purposes of the TM owner establishing her case. As an aside, the fact that TM law has its complexities is all the more reason not to burden contracted parties (many of whom don’t employ a trademark attorney (or any attorney), a data protection officer, etc.) with understanding and evaluating even the level of nuance we’re discussing here. We propose to establish sufficiently robust safeguards to ensure that disclosure is valid for the third-party purpose of establishing a legal claim. This should be possible within the parameters we’ve suggested. The law allows for Mr. Nike’s data to be processed for the limited time required for this limited purpose, with these safeguards in place. Brian J. King Director of Internet Policy and Industry Affairs T +1 443 761 3726 markmonitor.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.markmonitor.com&d=Dw...> MarkMonitor Protecting companies and consumers in a digital world From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org<mailto:gnso-epdp-team-bounces@icann.org>> On Behalf Of Volker Greimann Sent: Monday, February 3, 2020 4:47 AM To: gnso-epdp-team@icann.org<mailto:gnso-epdp-team@icann.org> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation 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<https://urldefense.proofpoint.com/v2/url?u=http-3A__nissan.com_&d=DwMFaQ&c=O...>. 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 Am 27.01.2020 um 21:52 schrieb King, Brian via Gnso-epdp-team: 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<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.markmonitor.com&d=Dw...> MarkMonitor Protecting companies and consumers in a digital world _______________________________________________ Gnso-epdp-team mailing list Gnso-epdp-team@icann.org<mailto:Gnso-epdp-team@icann.org> https://mm.icann.org/mailman/listinfo/gnso-epdp-team<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Depdp-2Dteam&d=DwMD-g&c=OGmtg_3SI10Cogwk-ShFiw&r=qQNCXqU_XE2XIdXbawYmk-YDflYH6pd8ffXlzxU37OA&m=tNewvfZExL8wSOcbrqGkVHZnOauBo5glaeBMsDDZvHU&s=3b5SYIQJ3FUgChckembgp_NmBrWqddZO2d0jjz-eT9o&e=> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_policy&d=DwMD-g&c=OGmtg_3SI10Cogwk-ShFiw&r=qQNCXqU_XE2XIdXbawYmk-YDflYH6pd8ffXlzxU37OA&m=tNewvfZExL8wSOcbrqGkVHZnOauBo5glaeBMsDDZvHU&s=sMm6twdvRmgfvumjTyWWXRVVOFxK5Ten0ok893vjsZ0&e=>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_tos&d=DwMD-g&c=OGmtg_3SI10Cogwk-ShFiw&r=qQNCXqU_XE2XIdXbawYmk-YDflYH6pd8ffXlzxU37OA&m=tNewvfZExL8wSOcbrqGkVHZnOauBo5glaeBMsDDZvHU&s=xjk7wHHcQJVUa-C4L2vH685cETCxLBpRqePmY6NirVs&e=>). 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You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. -- Volker A. Greimann General Counsel and Policy Manager KEY-SYSTEMS GMBH T: +49 6894 9396901 M: +49 6894 9396851 F: +49 6894 9396851 W: www.key-systems.net<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.key-2Dsystems.net&d=...> Key-Systems GmbH is a company registered at the local court of Saarbruecken, Germany with the registration no. HR B 18835 CEO: Alexander Siffrin Part of the CentralNic Group PLC (LON: CNIC) a company registered in England and Wales with company number 8576358. _______________________________________________ Gnso-epdp-team mailing list Gnso-epdp-team@icann.org https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li... _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_p... ) and the website Terms of Service (https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_t... ). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.
Hi Brian, I am not sure what legal thought you are referring to here, but it does not coform to our own legal risk analysis or the Bird and Bird memos. If you are refrerring to any legal work that you may have undertaken outside the EPDP, I cannot comment on its quality or neutrality. In any case, our recommendations should be based on the official legal work we received. You are welcome to include your further suggestions for automation in the public comments. Best, Volker Am 04.02.2020 um 16:22 schrieb King, Brian:
Hi Volker,
I appreciate the humor from the American TV commercial, in case non-western readers think you’re yelling at us :-)
Since we’ve put a lot of legal thought behind this proposal (and two lawyers recommended this approach yesterday, one of whom is European), I’d like to request that you please articulate what risk you think exists to which parties in this scenario? If you can flesh that out, it will help us understand and address the risk you see. Thank you!
Brian J. King Director of Internet Policy and Industry Affairs MarkMonitor / Part of Clarivate Analytics Phone: +1 (443) 761-3726 brian.king@markmonitor.com
On Feb 4, 2020, at 4:23 AM, Volker Greimann <vgreimann@key-systems.net> wrote:
This is not how this works! This is not how any of this works!
All trademark-related requests will always have to go through a balancing test, which is not automatable given our current knowledge. What you are suggesting is neither legally sound nor acceptable.
People have been trademarking any old word, even single letters can be trademarked. The word sex, which is subject to dozens, if not more, trademarks is contained in such words as Essex, Sussex, Middlesex, etc.
We also have been over the concept of assertations of infringement not being sufficient for CPs to release data on that basis alone.
TM-related requests will not be automatable for the forseeable future.
Best,
Volker
Am 04.02.2020 um 00:22 schrieb King, Brian via Gnso-epdp-team:
Hi James,
In your example, if Facebook:
1. owns a national TM registration for FACEBOOK, 2. validates that TM and its proof us use with the TMCH, 3. asserts, under penalty of losing their SSAD access, that they allege that the domain is infringing, 4. requests data for a domain name that contains an exact match of that same TM, and 5. swears/affirms that it will only process the RDS data for the purpose of establishing its legal claim, and for no longer than required, then
it’s legally sound for SSAD to automate that disclosure. There is no potential for “false hits” – the SSAD is able to rely on these safeguards for non-exact match domains.
Also to your point, without limiting the generality of my point above, the TMCH does allow for related “labels” (e.g. brandplusterm).
*Brian J. King * Director of Internet Policy and Industry Affairs
T +1 443 761 3726_ markmonitor.com <http://www.markmonitor.com>_
*MarkMonitor *Protecting companies and consumers in a digital world
*From:* James M. Bladel <jbladel@godaddy.com> *Sent:* Monday, February 3, 2020 5:51 PM *To:* King, Brian <Brian.King@markmonitor.com>; gnso-epdp-team@icann.org *Subject:* Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation
Hi Brian and Thomas.
I was with you until I got to the second part of #3: “…/prefix, infix or suffix of the domain name/.”
This is exactly the sort of thing that should be kicked out of automation in favor of human review, as there is too much potential for false hits via string collision. (e.g.: “facebook.TLD” and “microsoftsurfacebook.TLD”).
The simplest and most effective automation approach is for exact match, which is aligned with existing systems, like the Trademark Clearinghouse.
Thanks -
J.
-------------
*James Bladel*
*GoDaddy*
*From: *Gnso-epdp-team <gnso-epdp-team-bounces@icann.org <mailto:gnso-epdp-team-bounces@icann.org>> on behalf of "King, Brian via Gnso-epdp-team" <gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>> *Reply-To: *"King, Brian" <Brian.King@markmonitor.com <mailto:Brian.King@markmonitor.com>> *Date: *Monday, February 3, 2020 at 3:44 PM *To: *"gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>> *Subject: *Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation
Notice:This email is from an external sender.
Hi Matt,
Please let me know if the below does not answer your question(s).
*Brian J. King * Director of Internet Policy and Industry Affairs
T +1 443 761 3726_ markmonitor.com <http://www.markmonitor.com>_
*MarkMonitor *Protecting companies and consumers in a digital world
*From:* Gnso-epdp-team <gnso-epdp-team-bounces@icann.org <mailto:gnso-epdp-team-bounces@icann.org>> *On Behalf Of *Thomas Rickert *Sent:* Monday, February 3, 2020 3:29 PM *To:* gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org> *Subject:* Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation
Hi all,
I truly believe we need to talk about what we mean by automation. Reading the latest e-mails I got the impression that we are not thinking along the same lines.
As I tried to outline in LA, I think automation can work if the following parameters are met:
1. Requestor is a trademark owner, which needs to be verified with the respective trademark office.
2. The trademark must be life (not just applied for, rejected or expired).
3. The domain name non-public registration data is asked for is either identical with the trademark or the trademark is a prefix, infix or suffix of the domain name.
Additonally, all safeguards we have identified apply. Automation would not work for figurative marks or where the domain name is allegedly confusingly similar to the trademark. Such cases require manual review.
You might remember I said in LA that our policies require more detail or the use cases require more work. This is exactly what I meant. We need to be specific in what can or must be done in certain cases. The use cases are too broad brush, but I think we can make progress if we continue the exchange of thoughts (as Janis said, this would likely take place before we publish the final report.
Best,
Thomas
Am 03.02.2020 um 21:12 schrieb Margie Milam <margiemilam@fb.com <mailto:margiemilam@fb.com>>:
Hi-
Trying to boil this down to something that easier to understand.
The proposal doesn’t say that all trademark requests by any trademark holder are to be automated. Instead we are focusing on a smaller subset that is defined narrowly --- those trademarks that have already been validated in the Trademark Clearinghouse, coupled with an assertion of agency by the requestor for the trademark owner that has been made to the authentication body. The domain-name string would need to include that trademark. The requestor would be subject to the safeguards, and risk losing its accreditation if it submits requests that are improper.
A requester does not need to prove its entire trademark infringement case to justify disclosure of the redacted data – the data is provided to enable the TM holder to investigate whether it has a case it wishes to pursue. The SSAD and contracted parties should not be imposing their understanding of trademark law to judge the veracity of the requestor’ rights – that’s the role of attorneys, judges or UDRP mediators.
Margie
**
**
* <image001.jpg> *
*Margie Milam*
Online IP Enforcement & Protection Lead | Legal IP
NOTICE: This email (including any attachments) may contain information that is private, confidential, or protected by attorney-client or other privilege. Unless you are the intended recipient, you may not use, copy, or retransmit the email or its contents.
*From:*Gnso-epdp-team <gnso-epdp-team-bounces@icann.org <mailto:gnso-epdp-team-bounces@icann.org>> on behalf of Matt Serlin <matt@brandsight.com <mailto:matt@brandsight.com>> *Date:*Monday, February 3, 2020 at 11:45 AM *To:*"brian.kingATmarkmonitor.com <https://urldefense.proofpoint.com/v2/url?u=http-3A__brian.kingatmarkmonitor....>" <brian.king@markmonitor.com <mailto:brian.king@markmonitor.com>>, "gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>> *Subject:*Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation
Hi Brian,
Just so I’m crystal clear in what you’re saying here…can you confirm this is your viewpoint?
*/Trademark law is complex and nuanced, so we HAVE to automate disclosure of non-public data so that contracted parties aren’t burdened with the review of such disclosure requests?/*
*//*
Maybe a real-world example would help my non-legal mind here…
Brandsight has a trademark for “Brandsight”
Let’s say a party has registered brandsightconsulting.london
Is it your assertion that Brandsight would be entitled to automatic disclosure of non-public data*/only/*on the grounds of the registered trademark being included in the domain name?
Trying to boil down the discussion to something tangible. Thanks.
Matt
*From:*Gnso-epdp-team <gnso-epdp-team-bounces@icann.org <mailto:gnso-epdp-team-bounces@icann.org>> on behalf of "King, Brian via Gnso-epdp-team" <gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>> *Reply-To:*"King, Brian" <Brian.King@markmonitor.com <mailto:Brian.King@markmonitor.com>> *Date:*Monday, February 3, 2020 at 12:29 PM *To:*"gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>> *Subject:*Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation
Hi Volker,
I appreciate the constructive examples.
In cases like the ones you mention, I think we should be careful about which “standard of review” is appropriate for ICANN and the SSAD to take. In the UDRP context the IP owner has to prove her 3.5 elements, but that’s not an appropriate (or possible) standard for disclosure for the purposes of the TM owner establishing her case.
As an aside, the fact that TM law has its complexities is all the more reason not to burden contracted parties (many of whom don’t employ a trademark attorney (or any attorney), a data protection officer, etc.) with understanding and evaluating even the level of nuance we’re discussing here.
We propose to establish sufficiently robust safeguards to ensure that disclosure is valid for the third-party purpose of establishing a legal claim. This should be possible within the parameters we’ve suggested. The law allows for Mr. Nike’s data to be processed for the limited time required for this limited purpose, with these safeguards in place.
*Brian J. King* Director of Internet Policy and Industry Affairs
T +1 443 761 3726_ markmonitor.com <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.markmonitor.com&d=DwMGaQ&c=5VD0RTtNlTh3ycd41b3MUw&r=_4XWSt8rUHZPiRG6CoP4Fnk_CCk4p550lffeMi3E1z8&m=8RC76GLir1NviF2oCoXbEWr-oiQyZgysXdFqccFVrDs&s=SaxJ8WbdGHpugdo4spOuk7Z01ZvutjzVUdTBqWbx1P0&e=>_
*MarkMonitor *Protecting companies and consumers in a digital world
*From:*Gnso-epdp-team <gnso-epdp-team-bounces@icann.org <mailto:gnso-epdp-team-bounces@icann.org>>*On Behalf Of*Volker Greimann *Sent:*Monday, February 3, 2020 4:47 AM *To:*gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org> *Subject:*Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation
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 ownsNissan.com <https://urldefense.proofpoint.com/v2/url?u=http-3A__nissan.com_&d=DwMFaQ&c=O...>.
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
Am 27.01.2020 um 21:52 schrieb King, Brian via Gnso-epdp-team:
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 <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.markmonitor.com&d=DwMGaQ&c=5VD0RTtNlTh3ycd41b3MUw&r=_4XWSt8rUHZPiRG6CoP4Fnk_CCk4p550lffeMi3E1z8&m=8RC76GLir1NviF2oCoXbEWr-oiQyZgysXdFqccFVrDs&s=SaxJ8WbdGHpugdo4spOuk7Z01ZvutjzVUdTBqWbx1P0&e=>_
*MarkMonitor *Protecting companies and consumers in a digital world
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By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_p...>) and the website Terms of Service (https://www.icann.org/privacy/tos <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_t...>). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.
-- Volker A. Greimann General Counsel and Policy Manager *KEY-SYSTEMS GMBH*
T: +49 6894 9396901 M: +49 6894 9396851 F: +49 6894 9396851 W:www.key-systems.net <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.key-2Dsystems.net&d=...>
Key-Systems GmbH is a company registered at the local court of Saarbruecken, Germany with the registration no. HR B 18835 CEO: Alexander Siffrin
Part of the CentralNic Group PLC (LON: CNIC) a company registered in England and Wales with company number 8576358.
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_______________________________________________ Gnso-epdp-team mailing list Gnso-epdp-team@icann.org https://mm.icann.org/mailman/listinfo/gnso-epdp-team _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.
-- Volker A. Greimann General Counsel and Policy Manager *KEY-SYSTEMS GMBH*
T: +49 6894 9396901 M: +49 6894 9396851 F: +49 6894 9396851 W: www.key-systems.net
Key-Systems GmbH is a company registered at the local court of Saarbruecken, Germany with the registration no. HR B 18835 CEO: Alexander Siffrin
Part of the CentralNic Group PLC (LON: CNIC) a company registered in England and Wales with company number 8576358. _______________________________________________ Gnso-epdp-team mailing list Gnso-epdp-team@icann.org https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...
_______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_p... ) and the website Terms of Service (https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_t... ). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. -- Volker A. Greimann General Counsel and Policy Manager *KEY-SYSTEMS GMBH*
T: +49 6894 9396901 M: +49 6894 9396851 F: +49 6894 9396851 W: www.key-systems.net Key-Systems GmbH is a company registered at the local court of Saarbruecken, Germany with the registration no. HR B 18835 CEO: Alexander Siffrin Part of the CentralNic Group PLC (LON: CNIC) a company registered in England and Wales with company number 8576358.
Hi James, I agree with Brian’s suggestion not to have a substantive discussion on use cases now. Let me iust note that I have a robust legal explanation for my suggested wording, which I am happy to share at a later stage. I will keep it to myself for now in order not to distract us from finalizing the initial report. Best, Thomas
Am 03.02.2020 um 23:50 schrieb James M. Bladel <jbladel@godaddy.com>:
Hi Brian and Thomas.
I was with you until I got to the second part of #3: “…prefix, infix or suffix of the domain name.”
This is exactly the sort of thing that should be kicked out of automation in favor of human review, as there is too much potential for false hits via string collision. (e.g.: “facebook.TLD” and “microsoftsurfacebook.TLD”).
The simplest and most effective automation approach is for exact match, which is aligned with existing systems, like the Trademark Clearinghouse.
Thanks -
J.
------------- James Bladel GoDaddy
From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org <mailto:gnso-epdp-team-bounces@icann.org>> on behalf of "King, Brian via Gnso-epdp-team" <gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>> Reply-To: "King, Brian" <Brian.King@markmonitor.com <mailto:Brian.King@markmonitor.com>> Date: Monday, February 3, 2020 at 3:44 PM To: "gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation
Notice: This email is from an external sender.
Hi Matt,
Please let me know if the below does not answer your question(s).
Brian J. King Director of Internet Policy and Industry Affairs
T +1 443 761 3726 markmonitor.com <http://www.markmonitor.com/>
MarkMonitor Protecting companies and consumers in a digital world
From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org <mailto:gnso-epdp-team-bounces@icann.org>> On Behalf Of Thomas Rickert Sent: Monday, February 3, 2020 3:29 PM To: gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation
Hi all, I truly believe we need to talk about what we mean by automation. Reading the latest e-mails I got the impression that we are not thinking along the same lines.
As I tried to outline in LA, I think automation can work if the following parameters are met:
1. Requestor is a trademark owner, which needs to be verified with the respective trademark office. 2. The trademark must be life (not just applied for, rejected or expired). 3. The domain name non-public registration data is asked for is either identical with the trademark or the trademark is a prefix, infix or suffix of the domain name.
Additonally, all safeguards we have identified apply. Automation would not work for figurative marks or where the domain name is allegedly confusingly similar to the trademark. Such cases require manual review.
You might remember I said in LA that our policies require more detail or the use cases require more work. This is exactly what I meant. We need to be specific in what can or must be done in certain cases. The use cases are too broad brush, but I think we can make progress if we continue the exchange of thoughts (as Janis said, this would likely take place before we publish the final report.
Best, Thomas
Am 03.02.2020 um 21:12 schrieb Margie Milam <margiemilam@fb.com <mailto:margiemilam@fb.com>>:
Hi-
Trying to boil this down to something that easier to understand.
The proposal doesn’t say that all trademark requests by any trademark holder are to be automated. Instead we are focusing on a smaller subset that is defined narrowly --- those trademarks that have already been validated in the Trademark Clearinghouse, coupled with an assertion of agency by the requestor for the trademark owner that has been made to the authentication body. The domain-name string would need to include that trademark. The requestor would be subject to the safeguards, and risk losing its accreditation if it submits requests that are improper.
A requester does not need to prove its entire trademark infringement case to justify disclosure of the redacted data – the data is provided to enable the TM holder to investigate whether it has a case it wishes to pursue. The SSAD and contracted parties should not be imposing their understanding of trademark law to judge the veracity of the requestor’ rights – that’s the role of attorneys, judges or UDRP mediators.
Margie
<image001.jpg> Margie Milam Online IP Enforcement & Protection Lead | Legal IP NOTICE: This email (including any attachments) may contain information that is private, confidential, or protected by attorney-client or other privilege. Unless you are the intended recipient, you may not use, copy, or retransmit the email or its contents.
From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org <mailto:gnso-epdp-team-bounces@icann.org>> on behalf of Matt Serlin <matt@brandsight.com <mailto:matt@brandsight.com>> Date: Monday, February 3, 2020 at 11:45 AM To: "brian.kingATmarkmonitor.com <https://urldefense.proofpoint.com/v2/url?u=http-3A__brian.kingatmarkmonitor....>" <brian.king@markmonitor.com <mailto:brian.king@markmonitor.com>>, "gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation
Hi Brian,
Just so I’m crystal clear in what you’re saying here…can you confirm this is your viewpoint?
Trademark law is complex and nuanced, so we HAVE to automate disclosure of non-public data so that contracted parties aren’t burdened with the review of such disclosure requests?
Maybe a real-world example would help my non-legal mind here…
Brandsight has a trademark for “Brandsight”
Let’s say a party has registered brandsightconsulting.london
Is it your assertion that Brandsight would be entitled to automatic disclosure of non-public data only on the grounds of the registered trademark being included in the domain name?
Trying to boil down the discussion to something tangible. Thanks.
Matt
From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org <mailto:gnso-epdp-team-bounces@icann.org>> on behalf of "King, Brian via Gnso-epdp-team" <gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>> Reply-To: "King, Brian" <Brian.King@markmonitor.com <mailto:Brian.King@markmonitor.com>> Date: Monday, February 3, 2020 at 12:29 PM To: "gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>" <gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org>> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation
Hi Volker,
I appreciate the constructive examples.
In cases like the ones you mention, I think we should be careful about which “standard of review” is appropriate for ICANN and the SSAD to take. In the UDRP context the IP owner has to prove her 3.5 elements, but that’s not an appropriate (or possible) standard for disclosure for the purposes of the TM owner establishing her case.
As an aside, the fact that TM law has its complexities is all the more reason not to burden contracted parties (many of whom don’t employ a trademark attorney (or any attorney), a data protection officer, etc.) with understanding and evaluating even the level of nuance we’re discussing here.
We propose to establish sufficiently robust safeguards to ensure that disclosure is valid for the third-party purpose of establishing a legal claim. This should be possible within the parameters we’ve suggested. The law allows for Mr. Nike’s data to be processed for the limited time required for this limited purpose, with these safeguards in place.
Brian J. King Director of Internet Policy and Industry Affairs
T +1 443 761 3726 markmonitor.com <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.markmonitor.com&d=Dw...>
MarkMonitor Protecting companies and consumers in a digital world
From: Gnso-epdp-team <gnso-epdp-team-bounces@icann.org <mailto:gnso-epdp-team-bounces@icann.org>> On Behalf Of Volker Greimann Sent: Monday, February 3, 2020 4:47 AM To: gnso-epdp-team@icann.org <mailto:gnso-epdp-team@icann.org> Subject: Re: [Gnso-epdp-team] IPC Proposal for Day 1 Automation
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 <https://urldefense.proofpoint.com/v2/url?u=http-3A__nissan.com_&d=DwMFaQ&c=O...>. 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
Am 27.01.2020 um 21:52 schrieb King, Brian via Gnso-epdp-team:
Hello EPDP Team,
Please find below our first proposal for automated disclosure.
Trademark Infringement in Domain Name
Requestor Safeguards Accreditation Authority determines that the trademark is valid. Accreditation Authority determines that Requestor is the legal owner, agent, or service provider of the trademark.
Request Safeguards Requestor alleges that the domain name infringes Requestor’s trademark. 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. 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 Registrant committed not to infringe the rights of third parties in its registration agreement, as required by the RA and RAA. 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 <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.markmonitor.com&d=Dw...>
MarkMonitor Protecting companies and consumers in a digital world
_______________________________________________ Gnso-epdp-team mailing list Gnso-epdp-team@icann.org <mailto:Gnso-epdp-team@icann.org> https://mm.icann.org/mailman/listinfo/gnso-epdp-team <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_p...>) and the website Terms of Service (https://www.icann.org/privacy/tos <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_t...>). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. -- Volker A. Greimann General Counsel and Policy Manager KEY-SYSTEMS GMBH
T: +49 6894 9396901 M: +49 6894 9396851 F: +49 6894 9396851 W: www.key-systems.net <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.key-2Dsystems.net&d=...>
Key-Systems GmbH is a company registered at the local court of Saarbruecken, Germany with the registration no. HR B 18835 CEO: Alexander Siffrin
Part of the CentralNic Group PLC (LON: CNIC) a company registered in England and Wales with company number 8576358. _______________________________________________ Gnso-epdp-team mailing list Gnso-epdp-team@icann.org <mailto:Gnso-epdp-team@icann.org> https://mm.icann.org/mailman/listinfo/gnso-epdp-team <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_p...>) and the website Terms of Service (https://www.icann.org/privacy/tos <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_t...>). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.
_______________________________________________ Gnso-epdp-team mailing list Gnso-epdp-team@icann.org <mailto:Gnso-epdp-team@icann.org> https://mm.icann.org/mailman/listinfo/gnso-epdp-team <https://mm.icann.org/mailman/listinfo/gnso-epdp-team> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy <https://www.icann.org/privacy/policy>) and the website Terms of Service (https://www.icann.org/privacy/tos <https://www.icann.org/privacy/tos>). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.
participants (7)
-
James M. Bladel -
King, Brian -
Margie Milam -
Mark Svancarek (CELA) -
Matt Serlin -
Thomas Rickert -
Volker Greimann