Hello Phil and everyone, I went back and looked at the various iterations and evolution of the draft framework since it was first presented for discussion. I hope that my notes (below, in blue and bolded) are helpful to you and the rest of the WG in resolving the questions you raised. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names & Numbers (ICANN) Telephone: +1 603 574 4889 Email: mary.wong@icann.org From: Phil Corwin <psc@vlaw-dc.com> Date: Wednesday, November 4, 2015 at 11:49 To: Mary Wong <mary.wong@icann.org>, "gnso-ppsai-pdp-wg@icann.org" <gnso-ppsai-pdp-wg@icann.org> Subject: RE: [Gnso-ppsai-pdp-wg] Agenda and documents for review on 3 November 2015
Following up on yesterday¹s call, and amplifying/further explaining my oral comments in regard to the ³Revised Illustrative Draft Disclosure Framework for Intellectual Property Rights-holders² --- · Section IIA, starting on page 2, addresses situations where ³Where a domain name allegedly infringes a trademark² and thus coincides with scenarios where a rights holder could employ the URS (at new gTLDs) or the UDRP (at all gTLDs; and noting that most ccTLDs have adopted similar arbitration procedures) as well as initiate litigation under applicable national laws. The ICANN-adopted RPMs allow an action to be initiated even when the identity of the registrant is not known, and many national laws provide for In Rem filings to address such circumstances.
· Subsection 6a requires the rights holder (or its representative) seeking registrant disclosure to provide a good faith statement that ³provides a basis for reasonably believing that the use of the trademark in the domain name -i. allegedly infringes the trademark holder¹s rights; and ii. is not defensible². Some questions that may require clarifying modifications : 1) Does the phrase ³use of the trademark in the domain name² mean that this process is only available where the actual trademark, and not an allegedly confusingly similar variant, constitutes the domain name or is wholly incorporated within it? 2) Given that the rights holder is seeking a lifting of privacy protection chosen by the registrant, is it sufficient that its statement merely recite a basis for believing that the domain name ³allegedly infringes² its trademark or should there be a higher threshold that is, a requirement that the statement allege that the use of the TM in the domain actually infringes its rights? 3) Does the phrase ³is not defensible² mean that disclosure should only occur (or at least be seriously considered) when the domain name presents a black-and-white, know-it-when-you-see-it scenario such as that for which the URS is designed? (Noting that in many UDRP cases a defense is raised, and where it is raised it is often successful.)(Further noting that Section III.C.ii and iii allows the provider to refuse disclosure where it has a basis for reasonably believing that ³use of the claimed intellectual property is
defensible².)
MW: The phrase ³in the domain name² in Section IIA subsection 6(a) was inserted, to parallel the requirements for Sections IIB & IIC (where the infringement is not in the domain name but use of a copyright or trademark on a website) - in both the latter instances the alleged infringement is specifically tied to that use, whereas the original language in 6(a) merely said ³use of a trademark² without a specific limitation. All three situations now require the same showing by the requester and the same good faith statement, including the reasonable belief that the customer¹s use of the copyright or trademark in question ³is not defensible². The phrase ³is not defensible² was in the original draft Framework document and has not changed since but any change now will have to be made to all three sections/situations.
· Subsection 6b requires the rights holder or representative thereof to use the Customer¹s contact details only for certain purposes, one of which is ³in a legal proceeding concerning the issue². Is it intended that a URS or UDRP filing fall within the meaning of ³a legal proceeding²? If so, can that be clarified as some may assume it only references court proceedings?
MW: This phrase has also been present since the original draft should we add the clarification (again to apply to all three requester situations) that this ³including a UDRP or URS filing²?
· Subsection 6c requires the Requestor¹s statement that it ³c) agrees that the Requestor will submit, without prejudice to other potentially applicable
jurisdictions, to the jurisdiction of the courts (1) where the trademark holder is incorporated and (2) where Provider is located for purposes of any disputes arising from alleged improper disclosures caused by knowingly false statements made by the Requester, or from Requester¹s knowing misuse of information disclosed to it in response to its request². Given that the allegation of an infringing domain name may also be subject to a contemporaneous or subsequent URS or UDRP action, for the sake of completeness should this agreement be expanded to include submitting to the jurisdiction of an accredited dispute resolution provider (DRP) based upon the applicable jurisdiction rules so that such bad conduct could be taken into account to find either abuse of the URS or attempted reverse domain name hijacking under the UDRP?
MW: This new paragraph was added in the event that the WG agrees to adopt Option Two from the annex as such, the final language (if any) of this paragraph will have to mirror the WG¹s final agreement on the language for Option Two. Presumably this will be discussed and hopefully confirmed by the next call.
· Noting that, while the UDRP and URS are not always directly applicable, many of these same questions and requests for clarification arise in regard to Section II.C (Domain name resolves to website where trademark is allegedly infringed).
· Section III.D states, ³Disclosure cannot be refused solely for lack of any of the following: (i) a court order; (ii) a subpoena; (iii) a pending civil action; or (iv) a UDRP or URS proceeding; nor can refusal to disclose be solely based on the fact that the Request is founded on alleged intellectual property infringement in content on a website associated with the domain name². I take issue with the notion that the provider should still continue to determine whether to disclose the customer¹s contact information where a related civil action for trademark infringement, or a URS or UDRP, have been initiated (presumably by the rights holder, since it is unlikely that the customer would do so and thereby make its identity known, in which event further consideration of disclosure would be moot). The request for disclosure is based upon allegations of trademark infringement and a court and/or accredited DRP have far greater expertise than a P/P provider to determine whether actual infringement exists. Given that disparity of expertise, my view is that the filing of such action by the rights holder should stay the disclosure request and relieve the provider from any further obligation to decide on it. Allowing the process to continue could result in a situation where privacy is violated and the court or DRP subsequently finds no actual infringement.
MW: The primary reason for the language in this section is to clarify what grounds cannot be used by a provider as a reason to refuse disclosure (e.g. there¹s not been a UDRP filed so there is no reason for me to disclose that information). It doesn¹t address the situation where there IS a UDRP (or other action) filed already though perhaps in these situations there will likely be few situations where a requester would still need the customer¹s details. Should we clarify this?
Thank you for considering these questions and views as the WG moves toward a final version of this document.
Best to all, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-ppsai-pdp-wg-bounces@icann.org [mailto:gnso-ppsai-pdp-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, November 02, 2015 5:13 PM To: gnso-ppsai-pdp-wg@icann.org Subject: [Gnso-ppsai-pdp-wg] Agenda and documents for review on 3 November 2015
Dear WG members,
The agenda for our next meeting, on Tuesday 3 November, is as follows. PLEASE NOTE THE UTC TIME CHANGE due to daylight savings time in a number of countries the call will be at 1500 UTC (07:00 PST, 10:00 EST, 15:00 London, 16:00 CET). 1. Roll call/updates to SOI 2. Continued discussion of Illustrative Disclosure Framework (latest version attached please also see the note below) 3. Discussion of proposed revised text for de-accreditation (see attached draft text) and possible data escrow recommendation 4. Next steps For agenda item #2, please note that the draft being circulated is still under discussion by Sub Team 3 and is subject to further revision and recommendations by the group. As such, the ³redlined² edits that were presented during the Dublin F2F meeting have been retained rather than ³accepted² as changes. For your easier review, please note that the main changes since Dublin that incorporate the WG¹s discussion points and agreement in Dublin include: (1) clarification in Section III.A regarding an exception to disclosure in cases where personal safety is endangered; and (2) an addition to Section III.C (as sub-section (vii)) to clarify that providers will not need to disclose if the verifiable evidence spelled out in Section II is not fully produced by the requester.
In addition, this current draft includes new language on dispute resolution (see, e.g., Section II.A(6)(c)). The new language was inserted to cover what has been termed ³Option 2² in the annex, concerning dispute resolution in the event of disclosure due to improper requests. The Sub Team acknowledges that while this topic was discussed briefly in Dublin, there was no WG agreement on a specific recommendation. The new language in the current draft document as well as specific edits to the ³annex² containing Options One and Two reflects a suggestion by some Sub Team members to adopt Option Two. This suggestion, which may not reflect the view of all Sub Team members as it is still being discussed, is nevertheless being presented to the full WG for further consideration.
Thanks and cheers
Mary
Mary Wong
Senior Policy Director
Internet Corporation for Assigned Names & Numbers (ICANN)
Telephone: +1 603 574 4889
Email: mary.wong@icann.org
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