Phil, With respect to Reveal in the context of allegations that a domain name is infringing, we advocate Disclosure (to the Requestor only) of information sufficient to help the Requestor determine if further action against the Customer is warranted. This is especially important in the context of IP rights enforcement. Disclosure of the Customer's identity would help the Requestor determine, before having to file a URS or UDRP, whether or not the Customer: -has legitimate rights in the domain name; -is a cybersquatter; -is stockpiling domain names, without adding any website content; or -has prior UDRP decisions against him or her. All of the foregoing indicate bad faith registration and use of the domain name. As Paul pointed out on today's call, the Requestor must be able to ascertain this information before it is obliged undergo the time and expense of bringing a UDRP or other legal proceeding. In that way, it can possibly avoid the need for a UDRP. And if it has to bring a UDRP, it can do so in good faith. That is why Disclosure is valuable in cases involving infringing domain names, not just infringing website content. To address another point that has come up in the past, Disclosure does not equate to a finding of guilt. Disclosure is not a remedy of the UDRP or the URS; it would occur before a case is decided on the merits. It is my understanding that once a UDRP is filed, one or both of the following generally happens: 1) registrar receives a request for information to confirm registrant, which it then sends to the Complainant to amend the Complaint; or 2) the P/P Provider named in the complaint discloses or publishes the information. So under the status quo, there generally is a Reveal before a decision on the merits, but only after the Requestor is forced to file a complaint, without essential information, at a high cost. As you correctly observed, not all allegations are successful -- we don't want to encourage more with a policy that requires premature legal actions. Best regards, Val Valeriya Sherman Silverberg, Goldman & Bikoff, L.L.P. 1101 30th Street, N.W. Suite 120 Washington, D.C. 20007 Tel 202.944.3300 Cell 303.589.7477 vsherman@sgbdc.com<mailto:vsherman@law.gwu.edu> ________________________________ From: gnso-ppsai-pdp-wg-bounces@icann.org [gnso-ppsai-pdp-wg-bounces@icann.org] on behalf of Volker Greimann [vgreimann@key-systems.net] Sent: Tuesday, October 28, 2014 12:37 PM To: gnso-ppsai-pdp-wg@icann.org Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark Hi Phil, I agree that a mere allegation is never enough for any form of required result. The bar needs to be set a lot higher, such as a sworn statement that includes legal consequences in case any part of it is incorrect that would allow the injured party and the provider to sue the pants off of the complainant. Also, the violation must be clear and obvious to an untrained third party observer, which is usually not the case in trademark violation due to the fact that trademark law is simply too complex for a layman to understand. And frankly, there also is no need for an immediate reveal as there are, as you point out, already sufficient means to deal with such cases. As for content, that is a hosting issue outside the realm of ICANN. Go to the hosting provider instead. Infringing content has nothing to do with the domain name whatsoever. Best, Volker Am 28.10.2014 17:30, schrieb Phil Corwin: I want to reiterate the concerns I raised during today's call about recommending a policy that would require a privacy/proxy provider (PPP) to reveal/disclose a registrant's identity and contact information based on a mere allegation that the domain name is infringing a trademark. ICANN has established the URDP and URS to deal with such allegations. And every day WIPO, NAF, and other providers deny complainant allegations. In fact, it appears that instances of attempted reverse domain hijacking are on the rise. A registrant who is targeted in a UDRP or URS has a choice of responding (in which case they will be revealing their identity) or to default and let the provider decide the allegation based solely upon the complaint. The proposed policy would compel disclosure of registrant data even when no UDRP, URS, or trademark infringement litigation was filed, or even if the allegation was subsequently found to fail to meet the required burden of proof. I am not convinced by arguments that such mandatory disclosure might facilitate resolution absent the filing of arbitration or litigation. That can be accomplished by requiring the PPP to relay a cease-and-desist letter or other communication to the registrant. Mandatory disclosure based on an unproven allegation does not further the claimed goal. Summing up, I believe that our WG should not create any new policy related to allegations of TM infringement by a domain name but should leave this issue to the new gTLD RPM and UDRP review that will be commencing next spring. As for allegations of trademark infringement based upon a website's content that is a separate matter. However, I believe our discussions should recognize that PPPs are unlikely to weigh the merits of an allegation and that their likely default position will be to reveal registrant data once a complaint addresses all the relevant points required by any new policy on this subject. Given that likelihood, we should certainly consider the extent to which such a policy might be abused by a private sector or governmental actor. Thank you for taking these views into account. 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 _______________________________________________ Gnso-ppsai-pdp-wg mailing list Gnso-ppsai-pdp-wg@icann.org<mailto:Gnso-ppsai-pdp-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-ppsai-pdp-wg -- Bei weiteren Fragen stehen wir Ihnen gerne zur Verfügung. Mit freundlichen Grüßen, Volker A. Greimann - Rechtsabteilung - Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net<mailto:vgreimann@key-systems.net> Web: www.key-systems.net<http://www.key-systems.net> / www.RRPproxy.net<http://www.RRPproxy.net> www.domaindiscount24.com<http://www.domaindiscount24.com> / www.BrandShelter.com<http://www.BrandShelter.com> Folgen Sie uns bei Twitter oder werden Sie unser Fan bei Facebook: www.facebook.com/KeySystems<http://www.facebook.com/KeySystems> www.twitter.com/key_systems<http://www.twitter.com/key_systems> Geschäftsführer: Alexander Siffrin Handelsregister Nr.: HR B 18835 - Saarbruecken Umsatzsteuer ID.: DE211006534 Member of the KEYDRIVE GROUP www.keydrive.lu<http://www.keydrive.lu> Der Inhalt dieser Nachricht ist vertraulich und nur für den angegebenen Empfänger bestimmt. Jede Form der Kenntnisgabe, Veröffentlichung oder Weitergabe an Dritte durch den Empfänger ist unzulässig. Sollte diese Nachricht nicht für Sie bestimmt sein, so bitten wir Sie, sich mit uns per E-Mail oder telefonisch in Verbindung zu setzen. -------------------------------------------- Should you have any further questions, please do not hesitate to contact us. Best regards, Volker A. Greimann - legal department - Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net<mailto:vgreimann@key-systems.net> Web: www.key-systems.net<http://www.key-systems.net> / www.RRPproxy.net<http://www.RRPproxy.net> www.domaindiscount24.com<http://www.domaindiscount24.com> / www.BrandShelter.com<http://www.BrandShelter.com> Follow us on Twitter or join our fan community on Facebook and stay updated: www.facebook.com/KeySystems<http://www.facebook.com/KeySystems> www.twitter.com/key_systems<http://www.twitter.com/key_systems> CEO: Alexander Siffrin Registration No.: HR B 18835 - Saarbruecken V.A.T. ID.: DE211006534 Member of the KEYDRIVE GROUP www.keydrive.lu<http://www.keydrive.lu> This e-mail and its attachments is intended only for the person to whom it is addressed. Furthermore it is not permitted to publish any content of this email. You must not use, disclose, copy, print or rely on this e-mail. If an addressing or transmission error has misdirected this e-mail, kindly notify the author by replying to this e-mail or contacting us by telephone.

Following up on Michele's comment: Valeriya: Your argument has two parts. Reversing their order, the first seems to be that privacy protection will be lifted when a UDRP or URS is filed (and I have checked on that and it seems that you are correct) so why put the potential complainant through the expense? A plausible response might be that, while we have seen UDRP abuse and findings of RDNH, the cost of filing and the knowledge that the allegations will be adjudged by expert trademark counsel, and that the registrant has a right to respond, minimizes the abuse. If PPPs are required to disclose registrant identity on a mere allegation of TM infringement (as they will, because they are not going to judge it on the merits - and we are in fact contemplating a requirement that they do so as a condition of accreditation) those constraints against abuse dissolve. The other argument is that disclosure will be beneficial because it "would help the Requestor determine, before having to file a URS or UDRP, whether or not the Customer: -has legitimate rights in the domain name; -is a cybersquatter; -is stockpiling domain names, without adding any website content; or -has prior UDRP decisions against him or her. All of the foregoing indicate bad faith registration and use of the domain name. " (Emphasis added) With due respect, I take issue with that assertion. Only the last factor you cite may be indicative of bad faith registration and abuse. Revelation of the registrant's identity may provide no additional useful data regarding whether the registrant has legitimate rights in the DN. As for being "a cybersquatter", if by that you mean a TM infringer with a history of UDRP losses then the reference is redundant. If you mean someone who amasses a domain portfolio for investment and monetization - "stockpiling domain names", as you put it -- then that is entirely permissible so long as the domains are not used for infringing or other unlawful purposes. As for having domains "without adding any website content", that is also entirely permissible and has no bearing on bad faith registration or use. In fact, a domain registrant may well choose to keep a valuable domain "dark" until it is developed or resold out of concern that one unintended and potentially infringing PPC ad placed by a third party advertising service could be the basis of a UDRP and result in loss of the domain. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") http://www.wipo.int/amc/en/domains/search/overview2.0/ is quite clear on this-- 2.6 Do parking and landing pages or pay-per-click links generate rights or legitimate interests in the disputed domain name? See also the relevant section<http://www.wipo.int/amc/en/domains/search/legalindex.jsp?id=11601> in the WIPO Legal Index. Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services" [see also paragraph 3.8 below] or from "legitimate noncommercial or fair use" of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion. 3.2 Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or contact the trademark holder (passive holding)? See also the relevant section<http://www.wipo.int/amc/en/domains/search/legalindex.jsp?id=11880> in the WIPO Legal Index. Consensus view: With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere "parking" by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals). [Emphasis added] So neither PPC landing pages or passive holding of a domain automatically gives rise to evidence of bad faith registration and use. Given the limited utility of compelling disclosure of the registrant's identity, as well as the significantly increased potential for abuse of such a policy, I maintain that the most balanced approach is to require the PPP to relay the requestor's communication to the registrant customer and let them decide, with knowledge of the fact that any threatened UDRP or URS will cause data revelation, whether they wish to communicate with the requestor. Regards, 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 Michele Neylon - Blacknight Sent: Tuesday, October 28, 2014 6:36 PM To: Valeriya Sherman; Volker Greimann; gnso-ppsai-pdp-wg@icann.org Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark Valeriya I can easily see how your proposal could be abused. Example Blogger registers $bigbrandcustomerservicesucks.tld and use a privacy service. Blogger uses the domain to setup a blog where they talk about the bad customer service they've received OR Maybe it's a whistleblower who wants to talk about how $bigbrand is abusing their staff Big brands lawyers decide to use trademark infringement (or similar) as an angle to get the blogger's contact details. If the bar is too low then they can get what they want - the underlying details, but without having to go through any proper process eg. UDRP, URS or something else with some level of checks and balances. Regards Michele PS: I don't understand the reference to "stockpiling domain names" and the link to "website content". There are thousands of domain names that are used for services other than running websites and will have zero content if you go looking at the "website". The example I keep alive is: http://log.ie/ - parked domain http://b.log.ie/ - active website -- Mr Michele Neylon Blacknight Solutions Hosting & Colocation, Domains http://www.blacknight.host/ http://blog.blacknight.com/ http://www.blacknight.press/ http://www.technology.ie/ Intl. +353 (0) 59 9183072 Direct Dial: +353 (0)59 9183090 Social: http://mneylon.social ------------------------------- Blacknight Internet Solutions Ltd, Unit 12A,Barrowside Business Park,Sleaty Road,Graiguecullen,Carlow,Ireland Company No.: 370845 From: gnso-ppsai-pdp-wg-bounces@icann.org<mailto:gnso-ppsai-pdp-wg-bounces@icann.org> [mailto:gnso-ppsai-pdp-wg-bounces@icann.org] On Behalf Of Valeriya Sherman Sent: Tuesday, October 28, 2014 7:38 PM To: Volker Greimann; gnso-ppsai-pdp-wg@icann.org<mailto:gnso-ppsai-pdp-wg@icann.org> Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark Phil, With respect to Reveal in the context of allegations that a domain name is infringing, we advocate Disclosure (to the Requestor only) of information sufficient to help the Requestor determine if further action against the Customer is warranted. This is especially important in the context of IP rights enforcement. Disclosure of the Customer's identity would help the Requestor determine, before having to file a URS or UDRP, whether or not the Customer: -has legitimate rights in the domain name; -is a cybersquatter; -is stockpiling domain names, without adding any website content; or -has prior UDRP decisions against him or her. All of the foregoing indicate bad faith registration and use of the domain name. As Paul pointed out on today's call, the Requestor must be able to ascertain this information before it is obliged undergo the time and expense of bringing a UDRP or other legal proceeding. In that way, it can possibly avoid the need for a UDRP. And if it has to bring a UDRP, it can do so in good faith. That is why Disclosure is valuable in cases involving infringing domain names, not just infringing website content. To address another point that has come up in the past, Disclosure does not equate to a finding of guilt. Disclosure is not a remedy of the UDRP or the URS; it would occur before a case is decided on the merits. It is my understanding that once a UDRP is filed, one or both of the following generally happens: 1) registrar receives a request for information to confirm registrant, which it then sends to the Complainant to amend the Complaint; or 2) the P/P Provider named in the complaint discloses or publishes the information. So under the status quo, there generally is a Reveal before a decision on the merits, but only after the Requestor is forced to file a complaint, without essential information, at a high cost. As you correctly observed, not all allegations are successful -- we don't want to encourage more with a policy that requires premature legal actions. Best regards, Val Valeriya Sherman Silverberg, Goldman & Bikoff, L.L.P. 1101 30th Street, N.W. Suite 120 Washington, D.C. 20007 Tel 202.944.3300 Cell 303.589.7477 vsherman@sgbdc.com<mailto:vsherman@law.gwu.edu> ________________________________ From: gnso-ppsai-pdp-wg-bounces@icann.org<mailto:gnso-ppsai-pdp-wg-bounces@icann.org> [gnso-ppsai-pdp-wg-bounces@icann.org] on behalf of Volker Greimann [vgreimann@key-systems.net] Sent: Tuesday, October 28, 2014 12:37 PM To: gnso-ppsai-pdp-wg@icann.org<mailto:gnso-ppsai-pdp-wg@icann.org> Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark Hi Phil, I agree that a mere allegation is never enough for any form of required result. The bar needs to be set a lot higher, such as a sworn statement that includes legal consequences in case any part of it is incorrect that would allow the injured party and the provider to sue the pants off of the complainant. Also, the violation must be clear and obvious to an untrained third party observer, which is usually not the case in trademark violation due to the fact that trademark law is simply too complex for a layman to understand. And frankly, there also is no need for an immediate reveal as there are, as you point out, already sufficient means to deal with such cases. As for content, that is a hosting issue outside the realm of ICANN. Go to the hosting provider instead. Infringing content has nothing to do with the domain name whatsoever. Best, Volker Am 28.10.2014 17:30, schrieb Phil Corwin: I want to reiterate the concerns I raised during today's call about recommending a policy that would require a privacy/proxy provider (PPP) to reveal/disclose a registrant's identity and contact information based on a mere allegation that the domain name is infringing a trademark. ICANN has established the URDP and URS to deal with such allegations. And every day WIPO, NAF, and other providers deny complainant allegations. In fact, it appears that instances of attempted reverse domain hijacking are on the rise. A registrant who is targeted in a UDRP or URS has a choice of responding (in which case they will be revealing their identity) or to default and let the provider decide the allegation based solely upon the complaint. The proposed policy would compel disclosure of registrant data even when no UDRP, URS, or trademark infringement litigation was filed, or even if the allegation was subsequently found to fail to meet the required burden of proof. I am not convinced by arguments that such mandatory disclosure might facilitate resolution absent the filing of arbitration or litigation. That can be accomplished by requiring the PPP to relay a cease-and-desist letter or other communication to the registrant. Mandatory disclosure based on an unproven allegation does not further the claimed goal. Summing up, I believe that our WG should not create any new policy related to allegations of TM infringement by a domain name but should leave this issue to the new gTLD RPM and UDRP review that will be commencing next spring. As for allegations of trademark infringement based upon a website's content that is a separate matter. However, I believe our discussions should recognize that PPPs are unlikely to weigh the merits of an allegation and that their likely default position will be to reveal registrant data once a complaint addresses all the relevant points required by any new policy on this subject. Given that likelihood, we should certainly consider the extent to which such a policy might be abused by a private sector or governmental actor. Thank you for taking these views into account. 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 _______________________________________________ Gnso-ppsai-pdp-wg mailing list Gnso-ppsai-pdp-wg@icann.org<mailto:Gnso-ppsai-pdp-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-ppsai-pdp-wg -- Bei weiteren Fragen stehen wir Ihnen gerne zur Verfügung. Mit freundlichen Grüßen, Volker A. Greimann - Rechtsabteilung - Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net<mailto:vgreimann@key-systems.net> Web: www.key-systems.net<http://www.key-systems.net> / www.RRPproxy.net<http://www.RRPproxy.net> www.domaindiscount24.com<http://www.domaindiscount24.com> / www.BrandShelter.com<http://www.BrandShelter.com> Folgen Sie uns bei Twitter oder werden Sie unser Fan bei Facebook: www.facebook.com/KeySystems<http://www.facebook.com/KeySystems> www.twitter.com/key_systems<http://www.twitter.com/key_systems> Geschäftsführer: Alexander Siffrin Handelsregister Nr.: HR B 18835 - Saarbruecken Umsatzsteuer ID.: DE211006534 Member of the KEYDRIVE GROUP www.keydrive.lu<http://www.keydrive.lu> Der Inhalt dieser Nachricht ist vertraulich und nur für den angegebenen Empfänger bestimmt. Jede Form der Kenntnisgabe, Veröffentlichung oder Weitergabe an Dritte durch den Empfänger ist unzulässig. Sollte diese Nachricht nicht für Sie bestimmt sein, so bitten wir Sie, sich mit uns per E-Mail oder telefonisch in Verbindung zu setzen. -------------------------------------------- Should you have any further questions, please do not hesitate to contact us. Best regards, Volker A. Greimann - legal department - Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net<mailto:vgreimann@key-systems.net> Web: www.key-systems.net<http://www.key-systems.net> / www.RRPproxy.net<http://www.RRPproxy.net> www.domaindiscount24.com<http://www.domaindiscount24.com> / www.BrandShelter.com<http://www.BrandShelter.com> Follow us on Twitter or join our fan community on Facebook and stay updated: www.facebook.com/KeySystems<http://www.facebook.com/KeySystems> www.twitter.com/key_systems<http://www.twitter.com/key_systems> CEO: Alexander Siffrin Registration No.: HR B 18835 - Saarbruecken V.A.T. ID.: DE211006534 Member of the KEYDRIVE GROUP www.keydrive.lu<http://www.keydrive.lu> This e-mail and its attachments is intended only for the person to whom it is addressed. Furthermore it is not permitted to publish any content of this email. You must not use, disclose, copy, print or rely on this e-mail. If an addressing or transmission error has misdirected this e-mail, kindly notify the author by replying to this e-mail or contacting us by telephone. ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com> Version: 2015.0.5315 / Virus Database: 4189/8462 - Release Date: 10/27/14

Don Yup I'm seeing domains being used ONLY for email all the time - the .email TLD lends itself to this Regards Michele -- Mr Michele Neylon Blacknight Solutions Hosting, Colocation & Domains http://www.blacknight.host/ http://blog.blacknight.com/ http://www.blacknight.press - get our latest news & media coverage http://www.technology.ie Intl. +353 (0) 59 9183072 Direct Dial: +353 (0)59 9183090 Social: http://mneylon.social ------------------------------- Blacknight Internet Solutions Ltd, Unit 12A,Barrowside Business Park,Sleaty Road,Graiguecullen,Carlow,Ireland Company No.: 370845 ________________________________ From: gnso-ppsai-pdp-wg-bounces@icann.org [gnso-ppsai-pdp-wg-bounces@icann.org] on behalf of Don Blumenthal [dblumenthal@pir.org] Sent: 29 October 2014 00:29 To: Phil Corwin; gnso-ppsai-pdp-wg@icann.org Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark I want to pick up on one point that Phil made in his cybersquatter discussion that I often have mentioned in other contexts, and take it another step. It is not unusual for domains to be registered with no intention of ever hosting a website. Don From: gnso-ppsai-pdp-wg-bounces@icann.org [mailto:gnso-ppsai-pdp-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Tuesday, October 28, 2014 8:12 PM To: Michele Neylon - Blacknight; Valeriya Sherman; Volker Greimann; gnso-ppsai-pdp-wg@icann.org Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark Following up on Michele’s comment: Valeriya: Your argument has two parts. Reversing their order, the first seems to be that privacy protection will be lifted when a UDRP or URS is filed (and I have checked on that and it seems that you are correct) so why put the potential complainant through the expense? A plausible response might be that, while we have seen UDRP abuse and findings of RDNH, the cost of filing and the knowledge that the allegations will be adjudged by expert trademark counsel, and that the registrant has a right to respond, minimizes the abuse. If PPPs are required to disclose registrant identity on a mere allegation of TM infringement (as they will, because they are not going to judge it on the merits – and we are in fact contemplating a requirement that they do so as a condition of accreditation) those constraints against abuse dissolve. The other argument is that disclosure will be beneficial because it “would help the Requestor determine, before having to file a URS or UDRP, whether or not the Customer: -has legitimate rights in the domain name; -is a cybersquatter; -is stockpiling domain names, without adding any website content; or -has prior UDRP decisions against him or her. All of the foregoing indicate bad faith registration and use of the domain name. “ (Emphasis added) With due respect, I take issue with that assertion. Only the last factor you cite may be indicative of bad faith registration and abuse. Revelation of the registrant’s identity may provide no additional useful data regarding whether the registrant has legitimate rights in the DN. As for being “a cybersquatter”, if by that you mean a TM infringer with a history of UDRP losses then the reference is redundant. If you mean someone who amasses a domain portfolio for investment and monetization – “stockpiling domain names”, as you put it -- then that is entirely permissible so long as the domains are not used for infringing or other unlawful purposes. As for having domains “without adding any website content”, that is also entirely permissible and has no bearing on bad faith registration or use. In fact, a domain registrant may well choose to keep a valuable domain “dark” until it is developed or resold out of concern that one unintended and potentially infringing PPC ad placed by a third party advertising service could be the basis of a UDRP and result in loss of the domain. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") http://www.wipo.int/amc/en/domains/search/overview2.0/ is quite clear on this-- 2.6 Do parking and landing pages or pay-per-click links generate rights or legitimate interests in the disputed domain name? See also the relevant section<http://www.wipo.int/amc/en/domains/search/legalindex.jsp?id=11601> in the WIPO Legal Index. Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services" [see also paragraph 3.8 below] or from "legitimate noncommercial or fair use" of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion. 3.2 Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or contact the trademark holder (passive holding)? See also the relevant section<http://www.wipo.int/amc/en/domains/search/legalindex.jsp?id=11880> in the WIPO Legal Index. Consensus view: With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere "parking" by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals). [Emphasis added] So neither PPC landing pages or passive holding of a domain automatically gives rise to evidence of bad faith registration and use. Given the limited utility of compelling disclosure of the registrant’s identity, as well as the significantly increased potential for abuse of such a policy, I maintain that the most balanced approach is to require the PPP to relay the requestor’s communication to the registrant customer and let them decide, with knowledge of the fact that any threatened UDRP or URS will cause data revelation, whether they wish to communicate with the requestor. Regards, 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> [mailto:gnso-ppsai-pdp-wg-bounces@icann.org] On Behalf Of Michele Neylon - Blacknight Sent: Tuesday, October 28, 2014 6:36 PM To: Valeriya Sherman; Volker Greimann; gnso-ppsai-pdp-wg@icann.org<mailto:gnso-ppsai-pdp-wg@icann.org> Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark Valeriya I can easily see how your proposal could be abused. Example Blogger registers $bigbrandcustomerservicesucks.tld and use a privacy service. Blogger uses the domain to setup a blog where they talk about the bad customer service they’ve received OR Maybe it’s a whistleblower who wants to talk about how $bigbrand is abusing their staff Big brands lawyers decide to use trademark infringement (or similar) as an angle to get the blogger’s contact details. If the bar is too low then they can get what they want – the underlying details, but without having to go through any proper process eg. UDRP, URS or something else with some level of checks and balances. Regards Michele PS: I don’t understand the reference to “stockpiling domain names” and the link to “website content”. There are thousands of domain names that are used for services other than running websites and will have zero content if you go looking at the “website”. The example I keep alive is: http://log.ie/ - parked domain http://b.log.ie/ - active website -- Mr Michele Neylon Blacknight Solutions Hosting & Colocation, Domains http://www.blacknight.host/ http://blog.blacknight.com/ http://www.blacknight.press/ http://www.technology.ie/ Intl. +353 (0) 59 9183072 Direct Dial: +353 (0)59 9183090 Social: http://mneylon.social ------------------------------- Blacknight Internet Solutions Ltd, Unit 12A,Barrowside Business Park,Sleaty Road,Graiguecullen,Carlow,Ireland Company No.: 370845 From: gnso-ppsai-pdp-wg-bounces@icann.org<mailto:gnso-ppsai-pdp-wg-bounces@icann.org> [mailto:gnso-ppsai-pdp-wg-bounces@icann.org] On Behalf Of Valeriya Sherman Sent: Tuesday, October 28, 2014 7:38 PM To: Volker Greimann; gnso-ppsai-pdp-wg@icann.org<mailto:gnso-ppsai-pdp-wg@icann.org> Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark Phil, With respect to Reveal in the context of allegations that a domain name is infringing, we advocate Disclosure (to the Requestor only) of information sufficient to help the Requestor determine if further action against the Customer is warranted. This is especially important in the context of IP rights enforcement. Disclosure of the Customer's identity would help the Requestor determine, before having to file a URS or UDRP, whether or not the Customer: -has legitimate rights in the domain name; -is a cybersquatter; -is stockpiling domain names, without adding any website content; or -has prior UDRP decisions against him or her. All of the foregoing indicate bad faith registration and use of the domain name. As Paul pointed out on today's call, the Requestor must be able to ascertain this information before it is obliged undergo the time and expense of bringing a UDRP or other legal proceeding. In that way, it can possibly avoid the need for a UDRP. And if it has to bring a UDRP, it can do so in good faith. That is why Disclosure is valuable in cases involving infringing domain names, not just infringing website content. To address another point that has come up in the past, Disclosure does not equate to a finding of guilt. Disclosure is not a remedy of the UDRP or the URS; it would occur before a case is decided on the merits. It is my understanding that once a UDRP is filed, one or both of the following generally happens: 1) registrar receives a request for information to confirm registrant, which it then sends to the Complainant to amend the Complaint; or 2) the P/P Provider named in the complaint discloses or publishes the information. So under the status quo, there generally is a Reveal before a decision on the merits, but only after the Requestor is forced to file a complaint, without essential information, at a high cost. As you correctly observed, not all allegations are successful -- we don't want to encourage more with a policy that requires premature legal actions. Best regards, Val Valeriya Sherman Silverberg, Goldman & Bikoff, L.L.P. 1101 30th Street, N.W. Suite 120 Washington, D.C. 20007 Tel 202.944.3300 Cell 303.589.7477 vsherman@sgbdc.com<mailto:vsherman@law.gwu.edu> ________________________________ From: gnso-ppsai-pdp-wg-bounces@icann.org<mailto:gnso-ppsai-pdp-wg-bounces@icann.org> [gnso-ppsai-pdp-wg-bounces@icann.org] on behalf of Volker Greimann [vgreimann@key-systems.net] Sent: Tuesday, October 28, 2014 12:37 PM To: gnso-ppsai-pdp-wg@icann.org<mailto:gnso-ppsai-pdp-wg@icann.org> Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark Hi Phil, I agree that a mere allegation is never enough for any form of required result. The bar needs to be set a lot higher, such as a sworn statement that includes legal consequences in case any part of it is incorrect that would allow the injured party and the provider to sue the pants off of the complainant. Also, the violation must be clear and obvious to an untrained third party observer, which is usually not the case in trademark violation due to the fact that trademark law is simply too complex for a layman to understand. And frankly, there also is no need for an immediate reveal as there are, as you point out, already sufficient means to deal with such cases. As for content, that is a hosting issue outside the realm of ICANN. Go to the hosting provider instead. Infringing content has nothing to do with the domain name whatsoever. Best, Volker Am 28.10.2014 17:30, schrieb Phil Corwin: I want to reiterate the concerns I raised during today's call about recommending a policy that would require a privacy/proxy provider (PPP) to reveal/disclose a registrant's identity and contact information based on a mere allegation that the domain name is infringing a trademark. ICANN has established the URDP and URS to deal with such allegations. And every day WIPO, NAF, and other providers deny complainant allegations. In fact, it appears that instances of attempted reverse domain hijacking are on the rise. A registrant who is targeted in a UDRP or URS has a choice of responding (in which case they will be revealing their identity) or to default and let the provider decide the allegation based solely upon the complaint. The proposed policy would compel disclosure of registrant data even when no UDRP, URS, or trademark infringement litigation was filed, or even if the allegation was subsequently found to fail to meet the required burden of proof. I am not convinced by arguments that such mandatory disclosure might facilitate resolution absent the filing of arbitration or litigation. That can be accomplished by requiring the PPP to relay a cease-and-desist letter or other communication to the registrant. Mandatory disclosure based on an unproven allegation does not further the claimed goal. Summing up, I believe that our WG should not create any new policy related to allegations of TM infringement by a domain name but should leave this issue to the new gTLD RPM and UDRP review that will be commencing next spring. As for allegations of trademark infringement based upon a website's content that is a separate matter. However, I believe our discussions should recognize that PPPs are unlikely to weigh the merits of an allegation and that their likely default position will be to reveal registrant data once a complaint addresses all the relevant points required by any new policy on this subject. Given that likelihood, we should certainly consider the extent to which such a policy might be abused by a private sector or governmental actor. Thank you for taking these views into account. 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 _______________________________________________ Gnso-ppsai-pdp-wg mailing list Gnso-ppsai-pdp-wg@icann.org<mailto:Gnso-ppsai-pdp-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-ppsai-pdp-wg -- Bei weiteren Fragen stehen wir Ihnen gerne zur Verfügung. Mit freundlichen Grüßen, Volker A. Greimann - Rechtsabteilung - Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net<mailto:vgreimann@key-systems.net> Web: www.key-systems.net<http://www.key-systems.net> / www.RRPproxy.net<http://www.RRPproxy.net> www.domaindiscount24.com<http://www.domaindiscount24.com> / www.BrandShelter.com<http://www.BrandShelter.com> Folgen Sie uns bei Twitter oder werden Sie unser Fan bei Facebook: www.facebook.com/KeySystems<http://www.facebook.com/KeySystems> www.twitter.com/key_systems<http://www.twitter.com/key_systems> Geschäftsführer: Alexander Siffrin Handelsregister Nr.: HR B 18835 - Saarbruecken Umsatzsteuer ID.: DE211006534 Member of the KEYDRIVE GROUP www.keydrive.lu<http://www.keydrive.lu> Der Inhalt dieser Nachricht ist vertraulich und nur für den angegebenen Empfänger bestimmt. Jede Form der Kenntnisgabe, Veröffentlichung oder Weitergabe an Dritte durch den Empfänger ist unzulässig. 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All, in relation to this discussion, it may be worth pointing out that the current status quo, which will be further codified as a result of the locking of a domain name subject to UDRP Proceedings Policy Development Process, is that the P/P service will publish the underlying customer information in Whois within two days of the UDDR being filed, unless the P/P service has no objection to being listed in the complaint/ruling as the registrant. If I understand the current proposal under consideration correctly, the idea is that an intermediate step could be introduced which may provide potential benefits to both parties as it would provide the requestor with additional information that may be helpful in deciding whether a UDRP/URS or alternative approach would be best suited to address the issue while the P/P customer information would only be disclosed to the requestor instead of published in Whois (and presumably it would also offer another path for remediation to the P/P customer instead of having to go directly to a UDRP which might require hiring of a lawyer?). Obviously there are other issues that need to be considered in relation to such a possible intermediate step such as how to avoid misuse, but I thought it might be helpful to consider this in light of the status quo. Best regards, Marika From: David Cake <dave@difference.com.au> Date: Wednesday 29 October 2014 08:57 To: Valeriya Sherman <VSherman@sgbdc.com> Cc: "gnso-ppsai-pdp-wg@icann.org" <gnso-ppsai-pdp-wg@icann.org> Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark On 29 Oct 2014, at 3:38 am, Valeriya Sherman <VSherman@sgbdc.com> wrote:

Phil,

With respect to Reveal in the context of allegations that a domain name is infringing, we advocate Disclosure (to the Requestor only) of information sufficient to help the Requestor determine if further action against the Customer is warranted. This is especially important in the context of IP rights enforcement.

Allegations are not proof. If the domain name itself is regarded as possibly infringing, we have the UDRP and URS to determine it a domain name is actually infringing.

Disclosure of the Customer's identity would help the Requestor determine, before having to file a URS or UDRP, whether or not the Customer:

Sure. But being helpful to the Requestor is not, by itself, sufficient to justify disclosure.

-has legitimate rights in the domain name; -is a cybersquatter;

These are the exact questions the UDRP/URS are designed to answer. Wanting to know the answers to them before filing is putting the cart before the horse somewhat.

-is stockpiling domain names, without adding any website content; or

The UDRP ultimately should succeed or fail based on the use of the domain in question, not what the registrant does with their other domains. And as Michele notes, website content is not the only use for domain names. ( eg I have a few friends who have used the adorably geeky rcpt.to domain for email only for over a decade now). Also, if the domain owner is actively using sub-domains of their domain, it may not necessarily be obvious to the requester.

-has prior UDRP decisions against him or her. Again, sure, helpful to know before filing your UDRP, but is helpful to potential filers sufficient to overrule the obvious desire of the registrant for privacy?

A desire to disassociate particular domains used for specific purposes from their general domaining business may even be the reason for using a PPP.

All of the foregoing indicate bad faith registration and use of the domain name.

Your first two criteria are decisions that the UDRP/URS will rule on. Your second two criteria might indicate a general pattern of bad behaviour by the registrant, but do not mean that an individual domain is part of that pattern of behaviour.

As Paul pointed out on today's call, the Requestor must be able to ascertain this information before it is obliged undergo the time and expense of bringing a UDRP or other legal proceeding.

I do not think this follows at all. There is a big difference between the requestor would like to, and the Requestor must be able to. I absolutely think that the Requestor should be able to use relay to request relevant information from the registrant. If the registrant wants to reply to a relayed request asserting their legitimate right to the domain, good. But it is not obvious to me that disclosure is necessary, and I can think of many cases in which it might be problematic.

In that way, it can possibly avoid the need for a UDRP. And if it has to bring a UDRP, it can do so in good faith. That is why Disclosure is valuable in cases involving infringing domain names, not just infringing website content.

To address another point that has come up in the past, Disclosure does not equate to a finding of guilt. Disclosure is not a remedy of the UDRP or the URS; it would occur before a case is decided on the merits.

Of course - but avoiding disclosure is, presumably, often a major reason for retaining a PPP in the first place, so we should not let it happen just because it would be beneficial to the requestor. Regards David

It is my understanding that once a UDRP is filed, one or both of the following generally happens: 1) registrar receives a request for information to confirm registrant, which it then sends to the Complainant to amend the Complaint; or 2) the P/P Provider named in the complaint discloses or publishes the information. So under the status quo, there generally is a Reveal before a decision on the merits, but only after the Requestor is forced to file a complaint, without essential information, at a high cost. As you correctly observed, not all allegations are successful -- we don't want to encourage more with a policy that requires premature legal actions.

Best regards,

Val

Valeriya Sherman Silverberg, Goldman & Bikoff, L.L.P. 1101 30th Street, N.W. Suite 120 Washington, D.C. 20007 Tel 202.944.3300 Cell 303.589.7477 vsherman@sgbdc.com <mailto:vsherman@law.gwu.edu>

From: gnso-ppsai-pdp-wg-bounces@icann.org [gnso-ppsai-pdp-wg-bounces@icann.org] on behalf of Volker Greimann [vgreimann@key-systems.net] Sent: Tuesday, October 28, 2014 12:37 PM To: gnso-ppsai-pdp-wg@icann.org Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark

Hi Phil,

I agree that a mere allegation is never enough for any form of required result. The bar needs to be set a lot higher, such as a sworn statement that includes legal consequences in case any part of it is incorrect that would allow the injured party and the provider to sue the pants off of the complainant.

Also, the violation must be clear and obvious to an untrained third party observer, which is usually not the case in trademark violation due to the fact that trademark law is simply too complex for a layman to understand. And frankly, there also is no need for an immediate reveal as there are, as you point out, already sufficient means to deal with such cases.

As for content, that is a hosting issue outside the realm of ICANN. Go to the hosting provider instead. Infringing content has nothing to do with the domain name whatsoever.

Best,

Volker

Am 28.10.2014 17:30, schrieb Phil Corwin:

...

I want to reiterate the concerns I raised during today's call about recommending a policy that would require a privacy/proxy provider (PPP) to reveal/disclose a registrant's identity and contact information based on a mere allegation that the domain name is infringing a trademark.

ICANN has established the URDP and URS to deal with such allegations. And every day WIPO, NAF, and other providers deny complainant allegations. In fact, it appears that instances of attempted reverse domain hijacking are on the rise.

A registrant who is targeted in a UDRP or URS has a choice of responding (in which case they will be revealing their identity) or to default and let the provider decide the allegation based solely upon the complaint. The proposed policy would compel disclosure of registrant data even when no UDRP, URS, or trademark infringement litigation was filed, or even if the allegation was subsequently found to fail to meet the required burden of proof.

I am not convinced by arguments that such mandatory disclosure might facilitate resolution absent the filing of arbitration or litigation. That can be accomplished by requiring the PPP to relay a cease-and-desist letter or other communication to the registrant. Mandatory disclosure based on an unproven allegation does not further the claimed goal.

Summing up, I believe that our WG should not create any new policy related to allegations of TM infringement by a domain name but should leave this issue to the new gTLD RPM and UDRP review that will be commencing next spring.

As for allegations of trademark infringement based upon a website's content that is a separate matter. However, I believe our discussions should recognize that PPPs are unlikely to weigh the merits of an allegation and that their likely default position will be to reveal registrant data once a complaint addresses all the relevant points required by any new policy on this subject. Given that likelihood, we should certainly consider the extent to which such a policy might be abused by a private sector or governmental actor.

Thank you for taking these views into account.

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

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Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net

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Der Inhalt dieser Nachricht ist vertraulich und nur für den angegebenen Empfänger bestimmt. Jede Form der Kenntnisgabe, Veröffentlichung oder Weitergabe an Dritte durch den Empfänger ist unzulässig. Sollte diese Nachricht nicht für Sie bestimmt sein, so bitten wir Sie, sich mit uns per E-Mail oder telefonisch in Verbindung zu setzen.

--------------------------------------------

Should you have any further questions, please do not hesitate to contact us.

Best regards,

Volker A. Greimann - legal department -

Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net

Web: www.key-systems.net <http://www.key-systems.net/> / www.RRPproxy.net <http://www.rrpproxy.net/> www.domaindiscount24.com <http://www.domaindiscount24.com/> / www.BrandShelter.com <http://www.brandshelter.com/>

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Thanks Philip. At least a partial answer to your question ("do we know how often that occurs") was included in the "compilation of p/p provider responses to specific WG questions" - which is attached to the attached email. In it, you'll see that for at least DBP and the "others," the default was to "publish" to the world (not just to "disclose" to the individual complainant) upon filing of a UDRP. Based at least in part on that, Kathy and I - and presumably the others in the WG (having received no objection to our email string) - agreed that an accreditation policy that intentionally funnels these types of complaints into UDRPs was less preferable for all parties involved: the registrant/beneficial user, the p/p provider, and the complainant. I don't want to speak for Kathy or the others, so I've attached the email string. But just to reiterate what we discussed there: · The registrant/beneficial user gets to avoid the more drastic result of publication to the world. If, as Michele and Chris and others have suggested, we need to be mindful of how our standards may impinge on privacy rights, then surely publication to the world is a much more severe impingement of that privacy right than disclosure to an individual complainant. · The p/p provider gets to avoid being named as a respondent in a UDRP proceeding (which James has noted can be problematic for the provider), and may get to keep a paying customer that it would otherwise lose once the UDRP is filed and the contact information is published to the world. · The complainant gets to save the money that it would otherwise spend on a UDRP, and may in fact choose to forgo the UDRP all together (as I mentioned, perhaps learning the beneficial user's identity will cause the complainant to question its original analysis that the domain name was being used in bad faith). Because of that, I can't really think of anybody who benefits from a system that intentionally pushes these types of matters into UDRPs (except perhaps for UDRP providers like NAF, or for attorneys who get paid to litigate UDRPs I suppose). Thanks. Todd. From: gnso-ppsai-pdp-wg-bounces@icann.org [mailto:gnso-ppsai-pdp-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Wednesday, October 29, 2014 11:56 AM To: Marika Konings; David Cake; Valeriya Sherman Cc: gnso-ppsai-pdp-wg@icann.org Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark Marika: Thanks for the clarification. In regard to this - "the P/P service will publish the underlying customer information in Whois within two days of the UDDR being filed, unless the P/P service has no objection to being listed in the complaint/ruling as the registrant" --that seems to say that disclosure of the registrant data will not always automatically occur if the P/P service agrees to be listed as registrant. Do we know how often that occurs, or the basis on which the providers currently make that decision? At any rate, the argument for revelation to the requestor upon a mere allegation of an IP infringement (and more specifically, upon an allegation based solely upon the domain name as trademark infringing) was based on the assertion that it will be revealed to the world via the WHOIS record if the requestor has to escalate to a UDRP or URS. But it appears there is a major exception to that argument. Best, 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 Marika Konings Sent: Wednesday, October 29, 2014 4:53 AM To: David Cake; Valeriya Sherman Cc: gnso-ppsai-pdp-wg@icann.org Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark All, in relation to this discussion, it may be worth pointing out that the current status quo, which will be further codified as a result of the locking of a domain name subject to UDRP Proceedings Policy Development Process, is that the P/P service will publish the underlying customer information in Whois within two days of the UDDR being filed, unless the P/P service has no objection to being listed in the complaint/ruling as the registrant. If I understand the current proposal under consideration correctly, the idea is that an intermediate step could be introduced which may provide potential benefits to both parties as it would provide the requestor with additional information that may be helpful in deciding whether a UDRP/URS or alternative approach would be best suited to address the issue while the P/P customer information would only be disclosed to the requestor instead of published in Whois (and presumably it would also offer another path for remediation to the P/P customer instead of having to go directly to a UDRP which might require hiring of a lawyer?). Obviously there are other issues that need to be considered in relation to such a possible intermediate step such as how to avoid misuse, but I thought it might be helpful to consider this in light of the status quo. Best regards, Marika From: David Cake <dave@difference.com.au<mailto:dave@difference.com.au>> Date: Wednesday 29 October 2014 08:57 To: Valeriya Sherman <VSherman@sgbdc.com<mailto:VSherman@sgbdc.com>> Cc: "gnso-ppsai-pdp-wg@icann.org<mailto:gnso-ppsai-pdp-wg@icann.org>" <gnso-ppsai-pdp-wg@icann.org<mailto:gnso-ppsai-pdp-wg@icann.org>> Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark On 29 Oct 2014, at 3:38 am, Valeriya Sherman <VSherman@sgbdc.com<mailto:VSherman@sgbdc.com>> wrote: Phil, With respect to Reveal in the context of allegations that a domain name is infringing, we advocate Disclosure (to the Requestor only) of information sufficient to help the Requestor determine if further action against the Customer is warranted. This is especially important in the context of IP rights enforcement. Allegations are not proof. If the domain name itself is regarded as possibly infringing, we have the UDRP and URS to determine it a domain name is actually infringing. Disclosure of the Customer's identity would help the Requestor determine, before having to file a URS or UDRP, whether or not the Customer: Sure. But being helpful to the Requestor is not, by itself, sufficient to justify disclosure. -has legitimate rights in the domain name; -is a cybersquatter; These are the exact questions the UDRP/URS are designed to answer. Wanting to know the answers to them before filing is putting the cart before the horse somewhat. -is stockpiling domain names, without adding any website content; or The UDRP ultimately should succeed or fail based on the use of the domain in question, not what the registrant does with their other domains. And as Michele notes, website content is not the only use for domain names. ( eg I have a few friends who have used the adorably geeky rcpt.to domain for email only for over a decade now). Also, if the domain owner is actively using sub-domains of their domain, it may not necessarily be obvious to the requester. -has prior UDRP decisions against him or her. Again, sure, helpful to know before filing your UDRP, but is helpful to potential filers sufficient to overrule the obvious desire of the registrant for privacy? A desire to disassociate particular domains used for specific purposes from their general domaining business may even be the reason for using a PPP. All of the foregoing indicate bad faith registration and use of the domain name. Your first two criteria are decisions that the UDRP/URS will rule on. Your second two criteria might indicate a general pattern of bad behaviour by the registrant, but do not mean that an individual domain is part of that pattern of behaviour. As Paul pointed out on today's call, the Requestor must be able to ascertain this information before it is obliged undergo the time and expense of bringing a UDRP or other legal proceeding. I do not think this follows at all. There is a big difference between the requestor would like to, and the Requestor must be able to. I absolutely think that the Requestor should be able to use relay to request relevant information from the registrant. If the registrant wants to reply to a relayed request asserting their legitimate right to the domain, good. But it is not obvious to me that disclosure is necessary, and I can think of many cases in which it might be problematic. In that way, it can possibly avoid the need for a UDRP. And if it has to bring a UDRP, it can do so in good faith. That is why Disclosure is valuable in cases involving infringing domain names, not just infringing website content. To address another point that has come up in the past, Disclosure does not equate to a finding of guilt. Disclosure is not a remedy of the UDRP or the URS; it would occur before a case is decided on the merits. Of course - but avoiding disclosure is, presumably, often a major reason for retaining a PPP in the first place, so we should not let it happen just because it would be beneficial to the requestor. Regards David It is my understanding that once a UDRP is filed, one or both of the following generally happens: 1) registrar receives a request for information to confirm registrant, which it then sends to the Complainant to amend the Complaint; or 2) the P/P Provider named in the complaint discloses or publishes the information. So under the status quo, there generally is a Reveal before a decision on the merits, but only after the Requestor is forced to file a complaint, without essential information, at a high cost. As you correctly observed, not all allegations are successful -- we don't want to encourage more with a policy that requires premature legal actions. Best regards, Val Valeriya Sherman Silverberg, Goldman & Bikoff, L.L.P. 1101 30th Street, N.W. Suite 120 Washington, D.C. 20007 Tel 202.944.3300 Cell 303.589.7477 vsherman@sgbdc.com<mailto:vsherman@law.gwu.edu> ________________________________ From: gnso-ppsai-pdp-wg-bounces@icann.org<mailto:gnso-ppsai-pdp-wg-bounces@icann.org> [gnso-ppsai-pdp-wg-bounces@icann.org<mailto:gnso-ppsai-pdp-wg-bounces@icann.org>] on behalf of Volker Greimann [vgreimann@key-systems.net<mailto:vgreimann@key-systems.net>] Sent: Tuesday, October 28, 2014 12:37 PM To: gnso-ppsai-pdp-wg@icann.org<mailto:gnso-ppsai-pdp-wg@icann.org> Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark Hi Phil, I agree that a mere allegation is never enough for any form of required result. The bar needs to be set a lot higher, such as a sworn statement that includes legal consequences in case any part of it is incorrect that would allow the injured party and the provider to sue the pants off of the complainant. Also, the violation must be clear and obvious to an untrained third party observer, which is usually not the case in trademark violation due to the fact that trademark law is simply too complex for a layman to understand. And frankly, there also is no need for an immediate reveal as there are, as you point out, already sufficient means to deal with such cases. As for content, that is a hosting issue outside the realm of ICANN. Go to the hosting provider instead. Infringing content has nothing to do with the domain name whatsoever. Best, Volker Am 28.10.2014 17:30, schrieb Phil Corwin: I want to reiterate the concerns I raised during today's call about recommending a policy that would require a privacy/proxy provider (PPP) to reveal/disclose a registrant's identity and contact information based on a mere allegation that the domain name is infringing a trademark. ICANN has established the URDP and URS to deal with such allegations. And every day WIPO, NAF, and other providers deny complainant allegations. In fact, it appears that instances of attempted reverse domain hijacking are on the rise. A registrant who is targeted in a UDRP or URS has a choice of responding (in which case they will be revealing their identity) or to default and let the provider decide the allegation based solely upon the complaint. The proposed policy would compel disclosure of registrant data even when no UDRP, URS, or trademark infringement litigation was filed, or even if the allegation was subsequently found to fail to meet the required burden of proof. I am not convinced by arguments that such mandatory disclosure might facilitate resolution absent the filing of arbitration or litigation. That can be accomplished by requiring the PPP to relay a cease-and-desist letter or other communication to the registrant. Mandatory disclosure based on an unproven allegation does not further the claimed goal. Summing up, I believe that our WG should not create any new policy related to allegations of TM infringement by a domain name but should leave this issue to the new gTLD RPM and UDRP review that will be commencing next spring. As for allegations of trademark infringement based upon a website's content that is a separate matter. However, I believe our discussions should recognize that PPPs are unlikely to weigh the merits of an allegation and that their likely default position will be to reveal registrant data once a complaint addresses all the relevant points required by any new policy on this subject. Given that likelihood, we should certainly consider the extent to which such a policy might be abused by a private sector or governmental actor. Thank you for taking these views into account. 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 _______________________________________________ Gnso-ppsai-pdp-wg mailing list Gnso-ppsai-pdp-wg@icann.org<mailto:Gnso-ppsai-pdp-wg@icann.org>https://mm.icann.org/mailman/listinfo/gnso-ppsai-pdp-wg -- Bei weiteren Fragen stehen wir Ihnen gerne zur Verfügung. Mit freundlichen Grüßen, Volker A. 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Sollte diese Nachricht nicht für Sie bestimmt sein, so bitten wir Sie, sich mit uns per E-Mail oder telefonisch in Verbindung zu setzen. -------------------------------------------- Should you have any further questions, please do not hesitate to contact us. Best regards, Volker A. Greimann - legal department - Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net<mailto:vgreimann@key-systems.net> Web: www.key-systems.net<http://www.key-systems.net/> / www.RRPproxy.net<http://www.rrpproxy.net/>www.domaindiscount24.com<http://www.domaindiscount24.com/> / www.BrandShelter.com<http://www.brandshelter.com/> Follow us on Twitter or join our fan community on Facebook and stay updated: www.facebook.com/KeySystems<http://www.facebook.com/KeySystems>www.twitter.com/key_systems<http://www.twitter.com/key_systems> CEO: Alexander Siffrin Registration No.: HR B 18835 - Saarbruecken V.A.T. 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I think we need to be cautious here. Just because a certain decision helps one party that does not make the decision good or reasonable. For example, while the wholesale spying of internet traffic by the NSA may help the US government catch a few extra bad guys, it does not really justify the mass invasion of privacy it entails. We also have to look at the big picture and also see how this could be abused. If it helps a third party determine if his rights have been infringed upon, does it also help a stalker find his victim? Does it help a corrupt government find a dissident? I do not dispute your argument that disclosing the registrant's identity helps the Requestor in many ways, I just do not believe it is warranted unless there is insurmountable evidence presence that an actual violation has occurred. Even one unwarranted disclosure of an innocent parties' data is one too many... Volker Am 29.10.2014 21:44, schrieb Valeriya Sherman:

All,

Respectfully, a few of the comments in response to my email miss the main point, which is that Disclosure helps the Requestor determine--before having to file a UDRP against the Provider-- whether or not the Customer has legitimate rights in the domain name or whether it has registered and used the domain name in bad faith.

Based on our experience filing numerous UDRP complaints on behalf of IP owners, once the UDRP Complaint is filed, the arbitration service (NAF or WIPO) automatically directs that the Customer's identity be disclosed to the UDRP Complainant. This is not done by the UDRP panelist; it is done ministerially by a Case Coordinator. Then the Complainant's attorneys have to amend the UDRP Complaint to name the true registrant.

Disclosing the true registrant's identity earlier helps the Requestor determine if the UDRP is warranted, in two ways.

First, it helps determine if the true registrant has a legitimate interest in the domain name. For example, it would be useful for the owner of the U.S. trademark BUDWEISER to know if the registrant of DrinkBudweiserBeer.com<http://www.drinkbudweiserbeer.com/> is the brewery in the Czech Republic that also owns a BUDWEISER trademark before it files a UDRP against this registrant.

Second, it helps determine if the domain name was registered and used in bad faith. The examples I gave were various indicia that have long been accepted in UDRP decisions as evidencing bad faith.

* If a registrant has prior UDRP decisions against him. See, e.g. Intel Corporation v. Marcel Engenheiro / Pentium Capital, Case No. D2013-1745 (WIPO Jan. 21, 2014) (found that Respondent had engaged in a pattern of abusive registration of domain names based on two prior UDRP decisions issued against him); * If he stockpiles infringing domain names. See, e.g., TV Globo Ltda. v. Green Card Transportes e Eventos Ltda., Case No. D2000-0351 (WIPO July 17, 2001) (found that "existence of a long list of domain names ... is evidence that registration has been effected in bad faith."); * If he simply holds the infringing domain names for sale. See, e.g., Federal Cartridge Co. v. Madmouse Communications, Case No. D2001-0756 (WIPO July 24, 2001) (found use in bad faith when registrant held a domain name that incorporated another's protected mark without any effort to use it for any purpose).

These and other indicia evidence bad faith, and are highly useful in determining if a UDRP is warranted.

For all the reasons above, a limited disclosure to a single third party Requestor before a UDRP filing is better in the long run for Customers, P/P Providers, and Requestors alike.

We look forward to further discussing these issues, but we still believe (as we did when this was first discussed in September) that disclosure should be attainable without the need to first file a UDRP or other legal proceeding.

Best regards,

Val

Valeriya Sherman Silverberg, Goldman & Bikoff, L.L.P. 1101 30th Street, N.W. Suite 120 Washington, D.C. 20007 Tel 202.944.3300 Cell 303.589.7477 vsherman@sgbdc.com<mailto:vsherman@law.gwu.edu> ________________________________ From: Williams, Todd [Todd.Williams@turner.com] Sent: Wednesday, October 29, 2014 4:04 PM To: Phil Corwin; Marika Konings; David Cake; Valeriya Sherman Cc: gnso-ppsai-pdp-wg@icann.org Subject: RE: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark

Thanks Philip. At least a partial answer to your question ("do we know how often that occurs") was included in the "compilation of p/p provider responses to specific WG questions" -- which is attached to the attached email. In it, you'll see that for at least DBP and the "others," the default was to "publish" to the world (not just to "disclose" to the individual complainant) upon filing of a UDRP. Based at least in part on that, Kathy and I -- and presumably the others in the WG (having received no objection to our email string) -- agreed that an accreditation policy that intentionally funnels these types of complaints into UDRPs was less preferable for all parties involved: the registrant/beneficial user, the p/p provider, and the complainant. I don't want to speak for Kathy or the others, so I've attached the email string. But just to reiterate what we discussed there:

· The registrant/beneficial user gets to avoid the more drastic result of publication to the world. If, as Michele and Chris and others have suggested, we need to be mindful of how our standards may impinge on privacy rights, then surely publication to the world is a much more severe impingement of that privacy right than disclosure to an individual complainant. · The p/p provider gets to avoid being named as a respondent in a UDRP proceeding (which James has noted can be problematic for the provider), and may get to keep a paying customer that it would otherwise lose once the UDRP is filed and the contact information is published to the world. · The complainant gets to save the money that it would otherwise spend on a UDRP, and may in fact choose to forgo the UDRP all together (as I mentioned, perhaps learning the beneficial user's identity will cause the complainant to question its original analysis that the domain name was being used in bad faith).

Because of that, I can't really think of anybody who benefits from a system that intentionally pushes these types of matters into UDRPs (except perhaps for UDRP providers like NAF, or for attorneys who get paid to litigate UDRPs I suppose).

Thanks.

Todd.

From: gnso-ppsai-pdp-wg-bounces@icann.org [mailto:gnso-ppsai-pdp-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Wednesday, October 29, 2014 11:56 AM To: Marika Konings; David Cake; Valeriya Sherman Cc: gnso-ppsai-pdp-wg@icann.org Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark

Marika:

Thanks for the clarification.

In regard to this -- "the P/P service will publish the underlying customer information in Whois within two days of the UDDR being filed, unless the P/P service has no objection to being listed in the complaint/ruling as the registrant" --that seems to say that disclosure of the registrant data will not always automatically occur if the P/P service agrees to be listed as registrant. Do we know how often that occurs, or the basis on which the providers currently make that decision?

At any rate, the argument for revelation to the requestor upon a mere allegation of an IP infringement (and more specifically, upon an allegation based solely upon the domain name as trademark infringing) was based on the assertion that it will be revealed to the world via the WHOIS record if the requestor has to escalate to a UDRP or URS. But it appears there is a major exception to that argument.

Best, 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 Marika Konings Sent: Wednesday, October 29, 2014 4:53 AM To: David Cake; Valeriya Sherman Cc: gnso-ppsai-pdp-wg@icann.org Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark

All, in relation to this discussion, it may be worth pointing out that the current status quo, which will be further codified as a result of the locking of a domain name subject to UDRP Proceedings Policy Development Process, is that the P/P service will publish the underlying customer information in Whois within two days of the UDDR being filed, unless the P/P service has no objection to being listed in the complaint/ruling as the registrant. If I understand the current proposal under consideration correctly, the idea is that an intermediate step could be introduced which may provide potential benefits to both parties as it would provide the requestor with additional information that may be helpful in deciding whether a UDRP/URS or alternative approach would be best suited to address the issue while the P/P customer information would only be disclosed to the requestor instead of published in Whois (and presumably it would also offer another path for remediation to the P/P customer instead of having to go directly to a UDRP which might require hiring of a lawyer?). Obviously there are other issues that need to be considered in relation to such a possible intermediate step such as how to avoid misuse, but I thought it might be helpful to consider this in light of the status quo.

Best regards,

Marika

From: David Cake <dave@difference.com.au<mailto:dave@difference.com.au>> Date: Wednesday 29 October 2014 08:57 To: Valeriya Sherman <VSherman@sgbdc.com<mailto:VSherman@sgbdc.com>> Cc: "gnso-ppsai-pdp-wg@icann.org<mailto:gnso-ppsai-pdp-wg@icann.org>" <gnso-ppsai-pdp-wg@icann.org<mailto:gnso-ppsai-pdp-wg@icann.org>> Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark

On 29 Oct 2014, at 3:38 am, Valeriya Sherman <VSherman@sgbdc.com<mailto:VSherman@sgbdc.com>> wrote:

Phil,

With respect to Reveal in the context of allegations that a domain name is infringing, we advocate Disclosure (to the Requestor only) of information sufficient to help the Requestor determine if further action against the Customer is warranted. This is especially important in the context of IP rights enforcement.

Allegations are not proof. If the domain name itself is regarded as possibly infringing, we have the UDRP and URS to determine it a domain name is actually infringing.

Disclosure of the Customer's identity would help the Requestor determine, before having to file a URS or UDRP, whether or not the Customer:

Sure. But being helpful to the Requestor is not, by itself, sufficient to justify disclosure.

-has legitimate rights in the domain name; -is a cybersquatter;

These are the exact questions the UDRP/URS are designed to answer. Wanting to know the answers to them before filing is putting the cart before the horse somewhat.

-is stockpiling domain names, without adding any website content; or

The UDRP ultimately should succeed or fail based on the use of the domain in question, not what the registrant does with their other domains. And as Michele notes, website content is not the only use for domain names. ( eg I have a few friends who have used the adorably geeky rcpt.to domain for email only for over a decade now). Also, if the domain owner is actively using sub-domains of their domain, it may not necessarily be obvious to the requester.

-has prior UDRP decisions against him or her. Again, sure, helpful to know before filing your UDRP, but is helpful to potential filers sufficient to overrule the obvious desire of the registrant for privacy?

A desire to disassociate particular domains used for specific purposes from their general domaining business may even be the reason for using a PPP.

All of the foregoing indicate bad faith registration and use of the domain name.

Your first two criteria are decisions that the UDRP/URS will rule on. Your second two criteria might indicate a general pattern of bad behaviour by the registrant, but do not mean that an individual domain is part of that pattern of behaviour.

As Paul pointed out on today's call, the Requestor must be able to ascertain this information before it is obliged undergo the time and expense of bringing a UDRP or other legal proceeding.

I do not think this follows at all. There is a big difference between the requestor would like to, and the Requestor must be able to. I absolutely think that the Requestor should be able to use relay to request relevant information from the registrant. If the registrant wants to reply to a relayed request asserting their legitimate right to the domain, good. But it is not obvious to me that disclosure is necessary, and I can think of many cases in which it might be problematic.

In that way, it can possibly avoid the need for a UDRP. And if it has to bring a UDRP, it can do so in good faith. That is why Disclosure is valuable in cases involving infringing domain names, not just infringing website content.

To address another point that has come up in the past, Disclosure does not equate to a finding of guilt. Disclosure is not a remedy of the UDRP or the URS; it would occur before a case is decided on the merits.

Of course - but avoiding disclosure is, presumably, often a major reason for retaining a PPP in the first place, so we should not let it happen just because it would be beneficial to the requestor.

Regards

David

It is my understanding that once a UDRP is filed, one or both of the following generally happens: 1) registrar receives a request for information to confirm registrant, which it then sends to the Complainant to amend the Complaint; or 2) the P/P Provider named in the complaint discloses or publishes the information. So under the status quo, there generally is a Reveal before a decision on the merits, but only after the Requestor is forced to file a complaint, without essential information, at a high cost. As you correctly observed, not all allegations are successful -- we don't want to encourage more with a policy that requires premature legal actions.

Best regards,

Val

Valeriya Sherman Silverberg, Goldman & Bikoff, L.L.P. 1101 30th Street, N.W. Suite 120 Washington, D.C. 20007 Tel 202.944.3300 Cell 303.589.7477 vsherman@sgbdc.com<mailto:vsherman@law.gwu.edu> ________________________________ From: gnso-ppsai-pdp-wg-bounces@icann.org<mailto:gnso-ppsai-pdp-wg-bounces@icann.org> [gnso-ppsai-pdp-wg-bounces@icann.org<mailto:gnso-ppsai-pdp-wg-bounces@icann.org>] on behalf of Volker Greimann [vgreimann@key-systems.net<mailto:vgreimann@key-systems.net>] Sent: Tuesday, October 28, 2014 12:37 PM To: gnso-ppsai-pdp-wg@icann.org<mailto:gnso-ppsai-pdp-wg@icann.org> Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark Hi Phil,

I agree that a mere allegation is never enough for any form of required result. The bar needs to be set a lot higher, such as a sworn statement that includes legal consequences in case any part of it is incorrect that would allow the injured party and the provider to sue the pants off of the complainant.

Also, the violation must be clear and obvious to an untrained third party observer, which is usually not the case in trademark violation due to the fact that trademark law is simply too complex for a layman to understand. And frankly, there also is no need for an immediate reveal as there are, as you point out, already sufficient means to deal with such cases.

As for content, that is a hosting issue outside the realm of ICANN. Go to the hosting provider instead. Infringing content has nothing to do with the domain name whatsoever.

Best,

Volker Am 28.10.2014 17:30, schrieb Phil Corwin:

I want to reiterate the concerns I raised during today's call about recommending a policy that would require a privacy/proxy provider (PPP) to reveal/disclose a registrant's identity and contact information based on a mere allegation that the domain name is infringing a trademark.

ICANN has established the URDP and URS to deal with such allegations. And every day WIPO, NAF, and other providers deny complainant allegations. In fact, it appears that instances of attempted reverse domain hijacking are on the rise.

A registrant who is targeted in a UDRP or URS has a choice of responding (in which case they will be revealing their identity) or to default and let the provider decide the allegation based solely upon the complaint. The proposed policy would compel disclosure of registrant data even when no UDRP, URS, or trademark infringement litigation was filed, or even if the allegation was subsequently found to fail to meet the required burden of proof.

I am not convinced by arguments that such mandatory disclosure might facilitate resolution absent the filing of arbitration or litigation. That can be accomplished by requiring the PPP to relay a cease-and-desist letter or other communication to the registrant. Mandatory disclosure based on an unproven allegation does not further the claimed goal.

Summing up, I believe that our WG should not create any new policy related to allegations of TM infringement by a domain name but should leave this issue to the new gTLD RPM and UDRP review that will be commencing next spring.

As for allegations of trademark infringement based upon a website's content that is a separate matter. However, I believe our discussions should recognize that PPPs are unlikely to weigh the merits of an allegation and that their likely default position will be to reveal registrant data once a complaint addresses all the relevant points required by any new policy on this subject. Given that likelihood, we should certainly consider the extent to which such a policy might be abused by a private sector or governmental actor.

Thank you for taking these views into account.

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

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Hi All, I feel the need to channel Maria Farrell in our discussion. Like Michele, I understand why Valeriya would like to see who the owner of a domain name is before she files a UDRP action. But I favor keeping some discretion with the Proxy/Privacy Service Providers because of the possibility of abuse. While the lawyers in our WG are acting in good faith and seek this information for their clients as part of due dilegence, not all lawyers and all people will (shocking, I know). When I hear about the death threats to Maria Farrell from her blogging and expression of legitimate and legal opinions, it is chilling. If we set up an express lane for those threatening her to get her private data, those making the threats will use it; if we have a checklist of requirements, without more/without discretion, they will check it off. There are those who will abuse any system we set into place: lawyers, individuals, others. So I think the only way to balance the clear rights, needs and legal protections on both sides is to stay in a moderate central course - of the type we were closing in on at our face to face meeting in LA. Best, Kathy :

Valeriya

I'm sorry, but just because we do not agree with your position does not mean that we do not understand why this proposal is attractive to you.

We understand it. We do not agree with it.

Regards

Michele

-- Mr Michele Neylon Blacknight Solutions Hosting, Colocation & Domains http://www.blacknight.host/ http://blog.blacknight.com/ http://www.technology.ie <http://www.technology.ie/>

http://www.blacknight.press <http://www.blacknight.press/> for all our news & media Intl. +353 (0) 59 9183072 Direct Dial: +353 (0)59 9183090 Social: http://mneylon.social ------------------------------- Blacknight Internet Solutions Ltd, Unit 12A,Barrowside Business Park,Sleaty Road,Graiguecullen,Carlow,Ireland Company No.: 370845

*From:*gnso-ppsai-pdp-wg-bounces@icann.org [mailto:gnso-ppsai-pdp-wg-bounces@icann.org] *On Behalf Of *Valeriya Sherman *Sent:* Wednesday, October 29, 2014 8:45 PM *To:* Williams, Todd; Phil Corwin; Marika Konings; David Cake *Cc:* gnso-ppsai-pdp-wg@icann.org *Subject:* Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark

All,

Respectfully, a few of the comments in response to my email miss the main point, which is that Disclosure helps the Requestor determine--before having to file a UDRP against the Provider-- whether or not the Customer has legitimate rights in the domain name or whether it has registered and used the domain name in bad faith.

Based on our experience filing numerous UDRP complaints on behalf of IP owners, once the UDRP Complaint is filed, the arbitration service (NAF or WIPO) automatically directs that the Customer's identity be disclosed to the UDRP Complainant. This is not done by the UDRP panelist; it is done ministerially by a Case Coordinator. Then the Complainant's attorneys have to amend the UDRP Complaint to name the true registrant.

Disclosing the true registrant's identity earlier helps the Requestor determine if the UDRP is warranted, in two ways.

*/First/*, it helps determine if the true registrant has a legitimate interest in the domain name. For example, it would be useful for the owner of the U.S. trademark BUDWEISER to know if the registrant of DrinkBudweiserBeer.com <http://www.drinkbudweiserbeer.com/> is the brewery in the Czech Republic that also owns a BUDWEISER trademark before it files a UDRP against this registrant.

*/Second/*, it helps determine if the domain name was registered and used in bad faith. The examples I gave were various indicia that have long been accepted in UDRP decisions as evidencing bad faith.

* If a registrant has prior UDRP decisions against him. See, e.g. _Intel Corporation v. Marcel Engenheiro / Pentium Capital_, Case No. D2013-1745 (WIPO Jan. 21, 2014) (found that Respondent had engaged in a pattern of abusive registration of domain names based on two prior UDRP decisions issued against him); * If he stockpiles infringing domain names. See, e.g.,**_TV Globo Ltda. v. Green Card Transportes e Eventos Ltda.,_ Case No. D2000-0351 (WIPO July 17, 2001) (found that "existence of a long list of domain names ... is evidence that registration has been effected in bad faith."); * If he simply holds the infringing domain names for sale. See, e.g., _Federal Cartridge Co. v. Madmouse Communications_, Case No. D2001-0756 (WIPO July 24, 2001) (found use in bad faith when registrant held a domain name that incorporated another's protected mark without any effort to use it for any purpose).

These and other indicia evidence bad faith, and are highly useful in determining if a UDRP is warranted.

For all the reasons above, a limited disclosure to a single third party Requestor before a UDRP filing is better in the long run for Customers, P/P Providers, and Requestors alike.

We look forward to further discussing these issues, but we still believe (as we did when this was first discussed in September) that disclosure should be attainable without the need to first file a UDRP or other legal proceeding.

Best regards,

Val

Valeriya Sherman Silverberg, Goldman & Bikoff, L.L.P. 1101 30th Street, N.W. Suite 120 Washington, D.C. 20007 Tel 202.944.3300 Cell 303.589.7477 vsherman@sgbdc.com <mailto:vsherman@law.gwu.edu>

------------------------------------------------------------------------

*From:*Williams, Todd [Todd.Williams@turner.com] *Sent:* Wednesday, October 29, 2014 4:04 PM *To:* Phil Corwin; Marika Konings; David Cake; Valeriya Sherman *Cc:* gnso-ppsai-pdp-wg@icann.org <mailto:gnso-ppsai-pdp-wg@icann.org> *Subject:* RE: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark

Thanks Philip. At least a partial answer to your question ("do we know how often that occurs") was included in the "compilation of p/p provider responses to specific WG questions" -- which is attached to the attached email. In it, you'll see that for at least DBP and the "others," the default was to "publish" to the world (not just to "disclose" to the individual complainant) upon filing of a UDRP. Based at least in part on that, Kathy and I -- and presumably the others in the WG (having received no objection to our email string) -- agreed that an accreditation policy that intentionally funnels these types of complaints into UDRPs was less preferable for all parties involved: the registrant/beneficial user, the p/p provider, and the complainant. I don't want to speak for Kathy or the others, so I've attached the email string. But just to reiterate what we discussed there:

·The registrant/beneficial user gets to avoid the more drastic result of publication to the world. If, as Michele and Chris and others have suggested, we need to be mindful of how our standards may impinge on privacy rights, then surely publication to the world is a much more severe impingement of that privacy right than disclosure to an individual complainant.

·The p/p provider gets to avoid being named as a respondent in a UDRP proceeding (which James has noted can be problematic for the provider), and may get to keep a paying customer that it would otherwise lose once the UDRP is filed and the contact information is published to the world.

·The complainant gets to save the money that it would otherwise spend on a UDRP, and may in fact choose to forgo the UDRP all together (as I mentioned, perhaps learning the beneficial user's identity will cause the complainant to question its original analysis that the domain name was being used in bad faith).

Because of that, I can't really think of anybody who benefits from a system that intentionally pushes these types of matters into UDRPs (except perhaps for UDRP providers like NAF, or for attorneys who get paid to litigate UDRPs I suppose).

Thanks.

Todd.

*From:*gnso-ppsai-pdp-wg-bounces@icann.org <mailto:gnso-ppsai-pdp-wg-bounces@icann.org> [mailto:gnso-ppsai-pdp-wg-bounces@icann.org] *On Behalf Of *Phil Corwin *Sent:* Wednesday, October 29, 2014 11:56 AM *To:* Marika Konings; David Cake; Valeriya Sherman *Cc:* gnso-ppsai-pdp-wg@icann.org <mailto:gnso-ppsai-pdp-wg@icann.org> *Subject:* Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark

Marika:

Thanks for the clarification.

In regard to this --

"the P/P service will publish the underlying customer information in Whois within two days of the UDDR being filed, unless the P/P service has no objection to being listed in the complaint/ruling as the registrant"

--that seems to say that disclosure of the registrant data will not always automatically occur if the P/P service agrees to be listed as registrant. Do we know how often that occurs, or the basis on which the providers currently make that decision?

At any rate, the argument for revelation to the requestor upon a mere allegation of an IP infringement (and more specifically, upon an allegation based solely upon the domain name as trademark infringing) was based on the assertion that it will be revealed to the world via the WHOIS record if the requestor has to escalate to a UDRP or URS. But it appears there is a major exception to that argument.

Best, 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> [mailto:gnso-ppsai-pdp-wg-bounces@icann.org] *On Behalf Of *Marika Konings *Sent:* Wednesday, October 29, 2014 4:53 AM *To:* David Cake; Valeriya Sherman *Cc:* gnso-ppsai-pdp-wg@icann.org <mailto:gnso-ppsai-pdp-wg@icann.org> *Subject:* Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark

All, in relation to this discussion, it may be worth pointing out that the current status quo, which will be further codified as a result of the locking of a domain name subject to UDRP Proceedings Policy Development Process, is that the P/P service will publish the underlying customer information in Whois within two days of the UDDR being filed, unless the P/P service has no objection to being listed in the complaint/ruling as the registrant. If I understand the current proposal under consideration correctly, the idea is that an intermediate step could be introduced which may provide potential benefits to both parties as it would provide the requestor with additional information that may be helpful in deciding whether a UDRP/URS or alternative approach would be best suited to address the issue while the P/P customer information would only be disclosed to the requestor instead of published in Whois (and presumably it would also offer another path for remediation to the P/P customer instead of having to go directly to a UDRP which might require hiring of a lawyer?). Obviously there are other issues that need to be considered in relation to such a possible intermediate step such as how to avoid misuse, but I thought it might be helpful to consider this in light of the status quo.

Best regards,

Marika

*From: *David Cake <dave@difference.com.au <mailto:dave@difference.com.au>> *Date: *Wednesday 29 October 2014 08:57 *To: *Valeriya Sherman <VSherman@sgbdc.com <mailto:VSherman@sgbdc.com>> *Cc: *"gnso-ppsai-pdp-wg@icann.org <mailto:gnso-ppsai-pdp-wg@icann.org>" <gnso-ppsai-pdp-wg@icann.org <mailto:gnso-ppsai-pdp-wg@icann.org>> *Subject: *Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark

On 29 Oct 2014, at 3:38 am, Valeriya Sherman <VSherman@sgbdc.com <mailto:VSherman@sgbdc.com>> wrote:

Phil,

With respect to Reveal in the context of allegations that a domain name is infringing, we advocate Disclosure (to the Requestor only) of information sufficient to help the Requestor determine if further action against the Customer is warranted. This is especially important in the context of IP rights enforcement.

Allegations are not proof. If the domain name itself is regarded as possibly infringing, we have the UDRP and URS to determine it a domain name is actually infringing.

Disclosure of the Customer's identity would help the Requestor determine, before having to file a URS or UDRP, whether or not the Customer:

Sure. But being helpful to the Requestor is not, by itself, sufficient to justify disclosure.

-has legitimate rights in the domain name;

-is a cybersquatter;

These are the exact questions the UDRP/URS are designed to answer. Wanting to know the answers to them before filing is putting the cart before the horse somewhat.

-is stockpiling domain names, without adding any website content; or

The UDRP ultimately should succeed or fail based on the use of the domain in question, not what the registrant does with their other domains.

And as Michele notes, website content is not the only use for domain names.

( eg I have a few friends who have used the adorably geeky rcpt.to domain for email only for over a decade now).

Also, if the domain owner is actively using sub-domains of their domain, it may not necessarily be obvious to the requester.

-has prior UDRP decisions against him or her.

Again, sure, helpful to know before filing your UDRP, but is helpful to potential filers sufficient to overrule the obvious desire of the registrant for privacy?

A desire to disassociate particular domains used for specific purposes from their general domaining business may even be the reason for using a PPP.

All of the foregoing indicate bad faith registration and use of the domain name.

Your first two criteria are decisions that the UDRP/URS will rule on. Your second two criteria might indicate a general pattern of bad behaviour by the registrant, but do not mean that an individual domain is part of that pattern of behaviour.

As Paul pointed out on today's call, the Requestor must be able to ascertain this information before it is obliged undergo the time and expense of bringing a UDRP or other legal proceeding.

I do not think this follows at all. There is a big difference between the requestor would like to, and the Requestor must be able to.

I absolutely think that the Requestor should be able to use relay to request relevant information from the registrant. If the registrant wants to reply to a relayed request asserting their legitimate right to the domain, good. But it is not obvious to me that disclosure is necessary, and I can think of many cases in which it might be problematic.

In that way, it can possibly avoid the need for a UDRP. And if it has to bring a UDRP, it can do so in good faith. That is why Disclosure is valuable in cases involving infringing domain names, not just infringing website content.

To address another point that has come up in the past, Disclosure does not equate to a finding of guilt. Disclosure is not a remedy of the UDRP or the URS; it would occur before a case is decided on the merits.

Of course - but avoiding disclosure is, presumably, often a major reason for retaining a PPP in the first place, so we should not let it happen just because it would be beneficial to the requestor.

Regards

David

It is my understanding that once a UDRP is filed, one or both of the following generally happens: 1) registrar receives a request for information to confirm registrant, which it then sends to the Complainant to amend the Complaint; or 2) the P/P Provider named in the complaint discloses or publishes the information. So under the status quo, there generally is a Reveal before a decision on the merits, but only after the Requestor is forced to file a complaint, without essential information, at a high cost. As you correctly observed, not all allegations are successful -- we don't want to encourage more with a policy that requires premature legal actions.

Best regards,

Val

Valeriya Sherman Silverberg, Goldman & Bikoff, L.L.P. 1101 30th Street, N.W. Suite 120 Washington, D.C. 20007 Tel 202.944.3300 Cell 303.589.7477 vsherman@sgbdc.com <mailto:vsherman@law.gwu.edu>

------------------------------------------------------------------------

*From:*gnso-ppsai-pdp-wg-bounces@icann.org <mailto:gnso-ppsai-pdp-wg-bounces@icann.org> [gnso-ppsai-pdp-wg-bounces@icann.org <mailto:gnso-ppsai-pdp-wg-bounces@icann.org>] on behalf of Volker Greimann [vgreimann@key-systems.net <mailto:vgreimann@key-systems.net>] *Sent:*Tuesday, October 28, 2014 12:37 PM *To:*gnso-ppsai-pdp-wg@icann.org <mailto:gnso-ppsai-pdp-wg@icann.org> *Subject:*Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark

Hi Phil,

I agree that a mere allegation is never enough for any form of required result. The bar needs to be set a lot higher, such as a sworn statement that includes legal consequences in case any part of it is incorrect that would allow the injured party and the provider to sue the pants off of the complainant.

Also, the violation must be clear and obvious to an untrained third party observer, which is usually not the case in trademark violation due to the fact that trademark law is simply too complex for a layman to understand. And frankly, there also is no need for an immediate reveal as there are, as you point out, already sufficient means to deal with such cases.

As for content, that is a hosting issue outside the realm of ICANN. Go to the hosting provider instead. Infringing content has nothing to do with the domain name whatsoever.

Best,

Volker

Am 28.10.2014 17:30, schrieb Phil Corwin:

I want to reiterate the concerns I raised during today's call about recommending a policy that would require a privacy/proxy provider (PPP) to reveal/disclose a registrant's identity and contact information based on a mere allegation that the domain name is infringing a trademark.

ICANN has established the URDP and URS to deal with such allegations. And every day WIPO, NAF, and other providers deny complainant allegations. In fact, it appears that instances of attempted reverse domain hijacking are on the rise.

A registrant who is targeted in a UDRP or URS has a choice of responding (in which case they will be revealing their identity) or to default and let the provider decide the allegation based solely upon the complaint. The proposed policy would compel disclosure of registrant data even when no UDRP, URS, or trademark infringement litigation was filed, or even if the allegation was subsequently found to fail to meet the required burden of proof.

I am not convinced by arguments that such mandatory disclosure might facilitate resolution absent the filing of arbitration or litigation. That can be accomplished by requiring the PPP to relay a cease-and-desist letter or other communication to the registrant. Mandatory disclosure based on an unproven allegation does not further the claimed goal.

Summing up, I believe that our WG should not create any new policy related to allegations of TM infringement by a domain name but should leave this issue to the new gTLD RPM and UDRP review that will be commencing next spring.

As for allegations of trademark infringement based upon a website's content that is a separate matter. However, I believe our discussions should recognize that PPPs are unlikely to weigh the merits of an allegation and that their likely default position will be to reveal registrant data once a complaint addresses all the relevant points required by any new policy on this subject. Given that likelihood, we should certainly consider the extent to which such a policy might be abused by a private sector or governmental actor.

Thank you for taking these views into account.

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

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Mit freundlichen Grüßen,

Volker A. Greimann - Rechtsabteilung -

Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email:vgreimann@key-systems.net <mailto:vgreimann@key-systems.net>

Web:www.key-systems.net <http://www.key-systems.net/> /www.RRPproxy.net <http://www.rrpproxy.net/>www.domaindiscount24.com <http://www.domaindiscount24.com/> /www.BrandShelter.com <http://www.brandshelter.com/>

Folgen Sie uns bei Twitter oder werden Sie unser Fan bei Facebook: www.facebook.com/KeySystems <http://www.facebook.com/KeySystems>www.twitter.com/key_systems <http://www.twitter.com/key_systems>

Geschäftsführer: Alexander Siffrin Handelsregister Nr.: HR B 18835 - Saarbruecken Umsatzsteuer ID.: DE211006534

Member of the KEYDRIVE GROUP www.keydrive.lu <http://www.keydrive.lu/>

Der Inhalt dieser Nachricht ist vertraulich und nur für den angegebenen Empfänger bestimmt. Jede Form der Kenntnisgabe, Veröffentlichung oder Weitergabe an Dritte durch den Empfänger ist unzulässig. Sollte diese Nachricht nicht für Sie bestimmt sein, so bitten wir Sie, sich mit uns per E-Mail oder telefonisch in Verbindung zu setzen.

--------------------------------------------

Should you have any further questions, please do not hesitate to contact us.

Best regards,

Volker A. Greimann - legal department -

Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email:vgreimann@key-systems.net <mailto:vgreimann@key-systems.net>

Web:www.key-systems.net <http://www.key-systems.net/> /www.RRPproxy.net <http://www.rrpproxy.net/>www.domaindiscount24.com <http://www.domaindiscount24.com/> /www.BrandShelter.com <http://www.brandshelter.com/>

Follow us on Twitter or join our fan community on Facebook and stay updated: www.facebook.com/KeySystems <http://www.facebook.com/KeySystems>www.twitter.com/key_systems <http://www.twitter.com/key_systems>

CEO: Alexander Siffrin Registration No.: HR B 18835 - Saarbruecken V.A.T. ID.: DE211006534

Member of the KEYDRIVE GROUP www.keydrive.lu <http://www.keydrive.lu/>

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+1 I was able to make sense of it, but only by closing one eye, squinting and drinking more coffee :) Regards Michele -- Mr Michele Neylon Blacknight Solutions Hosting, Colocation & Domains http://www.blacknight.host/ http://blog.blacknight.com/ http://www.technology.ie<http://www.technology.ie/> http://www.blacknight.press<http://www.blacknight.press/> for all our news & media Intl. +353 (0) 59 9183072 Direct Dial: +353 (0)59 9183090 Social: http://mneylon.social ------------------------------- Blacknight Internet Solutions Ltd, Unit 12A,Barrowside Business Park,Sleaty Road,Graiguecullen,Carlow,Ireland Company No.: 370845 From: gnso-ppsai-pdp-wg-bounces@icann.org [mailto:gnso-ppsai-pdp-wg-bounces@icann.org] On Behalf Of Rosette, Kristina Sent: Wednesday, October 29, 2014 1:49 PM To: David Cake; Valeriya Sherman Cc: gnso-ppsai-pdp-wg@icann.org Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark All, I can't for the life of me figure out in the string below which text is Val's, which is Phil's, and which is David's. Can we agree that if we're going to provide an inline reply that we'll somehow flag (initials, brackets, etc.) when we're adding text? Thanks. K From: gnso-ppsai-pdp-wg-bounces@icann.org<mailto:gnso-ppsai-pdp-wg-bounces@icann.org> [mailto:gnso-ppsai-pdp-wg-bounces@icann.org] On Behalf Of David Cake Sent: Wednesday, October 29, 2014 2:58 AM To: Valeriya Sherman Cc: gnso-ppsai-pdp-wg@icann.org<mailto:gnso-ppsai-pdp-wg@icann.org> Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark On 29 Oct 2014, at 3:38 am, Valeriya Sherman <VSherman@sgbdc.com<mailto:VSherman@sgbdc.com>> wrote: Phil, With respect to Reveal in the context of allegations that a domain name is infringing, we advocate Disclosure (to the Requestor only) of information sufficient to help the Requestor determine if further action against the Customer is warranted. This is especially important in the context of IP rights enforcement. Allegations are not proof. If the domain name itself is regarded as possibly infringing, we have the UDRP and URS to determine it a domain name is actually infringing. Disclosure of the Customer's identity would help the Requestor determine, before having to file a URS or UDRP, whether or not the Customer: Sure. But being helpful to the Requestor is not, by itself, sufficient to justify disclosure. -has legitimate rights in the domain name; -is a cybersquatter; These are the exact questions the UDRP/URS are designed to answer. Wanting to know the answers to them before filing is putting the cart before the horse somewhat. -is stockpiling domain names, without adding any website content; or The UDRP ultimately should succeed or fail based on the use of the domain in question, not what the registrant does with their other domains. And as Michele notes, website content is not the only use for domain names. ( eg I have a few friends who have used the adorably geeky rcpt.to domain for email only for over a decade now). Also, if the domain owner is actively using sub-domains of their domain, it may not necessarily be obvious to the requester. -has prior UDRP decisions against him or her. Again, sure, helpful to know before filing your UDRP, but is helpful to potential filers sufficient to overrule the obvious desire of the registrant for privacy? A desire to disassociate particular domains used for specific purposes from their general domaining business may even be the reason for using a PPP. All of the foregoing indicate bad faith registration and use of the domain name. Your first two criteria are decisions that the UDRP/URS will rule on. Your second two criteria might indicate a general pattern of bad behaviour by the registrant, but do not mean that an individual domain is part of that pattern of behaviour. As Paul pointed out on today's call, the Requestor must be able to ascertain this information before it is obliged undergo the time and expense of bringing a UDRP or other legal proceeding. I do not think this follows at all. There is a big difference between the requestor would like to, and the Requestor must be able to. I absolutely think that the Requestor should be able to use relay to request relevant information from the registrant. If the registrant wants to reply to a relayed request asserting their legitimate right to the domain, good. But it is not obvious to me that disclosure is necessary, and I can think of many cases in which it might be problematic. In that way, it can possibly avoid the need for a UDRP. And if it has to bring a UDRP, it can do so in good faith. That is why Disclosure is valuable in cases involving infringing domain names, not just infringing website content. To address another point that has come up in the past, Disclosure does not equate to a finding of guilt. Disclosure is not a remedy of the UDRP or the URS; it would occur before a case is decided on the merits. Of course - but avoiding disclosure is, presumably, often a major reason for retaining a PPP in the first place, so we should not let it happen just because it would be beneficial to the requestor. Regards David It is my understanding that once a UDRP is filed, one or both of the following generally happens: 1) registrar receives a request for information to confirm registrant, which it then sends to the Complainant to amend the Complaint; or 2) the P/P Provider named in the complaint discloses or publishes the information. So under the status quo, there generally is a Reveal before a decision on the merits, but only after the Requestor is forced to file a complaint, without essential information, at a high cost. As you correctly observed, not all allegations are successful -- we don't want to encourage more with a policy that requires premature legal actions. Best regards, Val Valeriya Sherman Silverberg, Goldman & Bikoff, L.L.P. 1101 30th Street, N.W. Suite 120 Washington, D.C. 20007 Tel 202.944.3300 Cell 303.589.7477 vsherman@sgbdc.com<mailto:vsherman@law.gwu.edu> ________________________________ From: gnso-ppsai-pdp-wg-bounces@icann.org<mailto:gnso-ppsai-pdp-wg-bounces@icann.org> [gnso-ppsai-pdp-wg-bounces@icann.org<mailto:gnso-ppsai-pdp-wg-bounces@icann.org>] on behalf of Volker Greimann [vgreimann@key-systems.net<mailto:vgreimann@key-systems.net>] Sent: Tuesday, October 28, 2014 12:37 PM To: gnso-ppsai-pdp-wg@icann.org<mailto:gnso-ppsai-pdp-wg@icann.org> Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark Hi Phil, I agree that a mere allegation is never enough for any form of required result. The bar needs to be set a lot higher, such as a sworn statement that includes legal consequences in case any part of it is incorrect that would allow the injured party and the provider to sue the pants off of the complainant. Also, the violation must be clear and obvious to an untrained third party observer, which is usually not the case in trademark violation due to the fact that trademark law is simply too complex for a layman to understand. And frankly, there also is no need for an immediate reveal as there are, as you point out, already sufficient means to deal with such cases. As for content, that is a hosting issue outside the realm of ICANN. Go to the hosting provider instead. Infringing content has nothing to do with the domain name whatsoever. Best, Volker Am 28.10.2014 17:30, schrieb Phil Corwin: I want to reiterate the concerns I raised during today's call about recommending a policy that would require a privacy/proxy provider (PPP) to reveal/disclose a registrant's identity and contact information based on a mere allegation that the domain name is infringing a trademark. ICANN has established the URDP and URS to deal with such allegations. And every day WIPO, NAF, and other providers deny complainant allegations. In fact, it appears that instances of attempted reverse domain hijacking are on the rise. A registrant who is targeted in a UDRP or URS has a choice of responding (in which case they will be revealing their identity) or to default and let the provider decide the allegation based solely upon the complaint. The proposed policy would compel disclosure of registrant data even when no UDRP, URS, or trademark infringement litigation was filed, or even if the allegation was subsequently found to fail to meet the required burden of proof. I am not convinced by arguments that such mandatory disclosure might facilitate resolution absent the filing of arbitration or litigation. That can be accomplished by requiring the PPP to relay a cease-and-desist letter or other communication to the registrant. Mandatory disclosure based on an unproven allegation does not further the claimed goal. Summing up, I believe that our WG should not create any new policy related to allegations of TM infringement by a domain name but should leave this issue to the new gTLD RPM and UDRP review that will be commencing next spring. As for allegations of trademark infringement based upon a website's content that is a separate matter. However, I believe our discussions should recognize that PPPs are unlikely to weigh the merits of an allegation and that their likely default position will be to reveal registrant data once a complaint addresses all the relevant points required by any new policy on this subject. Given that likelihood, we should certainly consider the extent to which such a policy might be abused by a private sector or governmental actor. Thank you for taking these views into account. 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 _______________________________________________ Gnso-ppsai-pdp-wg mailing list Gnso-ppsai-pdp-wg@icann.org<mailto:Gnso-ppsai-pdp-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-ppsai-pdp-wg -- Bei weiteren Fragen stehen wir Ihnen gerne zur Verfügung. Mit freundlichen Grüßen, Volker A. Greimann - Rechtsabteilung - Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net<mailto:vgreimann@key-systems.net> Web: www.key-systems.net<http://www.key-systems.net/> / www.RRPproxy.net<http://www.rrpproxy.net/> www.domaindiscount24.com<http://www.domaindiscount24.com/> / www.BrandShelter.com<http://www.brandshelter.com/> Folgen Sie uns bei Twitter oder werden Sie unser Fan bei Facebook: www.facebook.com/KeySystems<http://www.facebook.com/KeySystems> www.twitter.com/key_systems<http://www.twitter.com/key_systems> Geschäftsführer: Alexander Siffrin Handelsregister Nr.: HR B 18835 - Saarbruecken Umsatzsteuer ID.: DE211006534 Member of the KEYDRIVE GROUP www.keydrive.lu<http://www.keydrive.lu/> Der Inhalt dieser Nachricht ist vertraulich und nur für den angegebenen Empfänger bestimmt. Jede Form der Kenntnisgabe, Veröffentlichung oder Weitergabe an Dritte durch den Empfänger ist unzulässig. Sollte diese Nachricht nicht für Sie bestimmt sein, so bitten wir Sie, sich mit uns per E-Mail oder telefonisch in Verbindung zu setzen. -------------------------------------------- Should you have any further questions, please do not hesitate to contact us. Best regards, Volker A. Greimann - legal department - Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net<mailto:vgreimann@key-systems.net> Web: www.key-systems.net<http://www.key-systems.net/> / www.RRPproxy.net<http://www.rrpproxy.net/> www.domaindiscount24.com<http://www.domaindiscount24.com/> / www.BrandShelter.com<http://www.brandshelter.com/> Follow us on Twitter or join our fan community on Facebook and stay updated: www.facebook.com/KeySystems<http://www.facebook.com/KeySystems> www.twitter.com/key_systems<http://www.twitter.com/key_systems> CEO: Alexander Siffrin Registration No.: HR B 18835 - Saarbruecken V.A.T. ID.: DE211006534 Member of the KEYDRIVE GROUP www.keydrive.lu<http://www.keydrive.lu/> This e-mail and its attachments is intended only for the person to whom it is addressed. Furthermore it is not permitted to publish any content of this email. You must not use, disclose, copy, print or rely on this e-mail. If an addressing or transmission error has misdirected this e-mail, kindly notify the author by replying to this e-mail or contacting us by telephone. _______________________________________________ Gnso-ppsai-pdp-wg mailing list Gnso-ppsai-pdp-wg@icann.org<mailto:Gnso-ppsai-pdp-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-ppsai-pdp-wg

So we are going to have a religious argument about MUAs? *sigh* Mr Michele Neylon Blacknight Hosting & Domains http://www.blacknight.host/ http://www.mneylon.social On 29 Oct 2014, at 16:56, David Cake <dave@difference.com.au<mailto:dave@difference.com.au>> wrote: I assume you people use terrible email clients. Outlook perhaps, which is notably awful on dealing with inline quoting *sigh* (because its perfectly clear on mine, and find the 'roll your own quote style' variants equally painful, as it usually result in indiscriminate mixing of multiple quote styles) David On 29 Oct 2014, at 10:27 pm, Michele Neylon - Blacknight <michele@blacknight.com<mailto:michele@blacknight.com>> wrote: +1 I was able to make sense of it, but only by closing one eye, squinting and drinking more coffee :) Regards Michele -- Mr Michele Neylon Blacknight Solutions Hosting, Colocation & Domains http://www.blacknight.host/ http://blog.blacknight.com/ http://www.technology.ie<http://www.technology.ie/> http://www.blacknight.press<http://www.blacknight.press/> for all our news & media Intl. +353 (0) 59 9183072 Direct Dial: +353 (0)59 9183090 Social: http://mneylon.social<http://mneylon.social/> ------------------------------- Blacknight Internet Solutions Ltd, Unit 12A,Barrowside Business Park,Sleaty Road,Graiguecullen,Carlow,Ireland Company No.: 370845 From: gnso-ppsai-pdp-wg-bounces@icann.org<mailto:gnso-ppsai-pdp-wg-bounces@icann.org> [mailto:gnso-ppsai-pdp-wg-bounces@icann.org] On Behalf Of Rosette, Kristina Sent: Wednesday, October 29, 2014 1:49 PM To: David Cake; Valeriya Sherman Cc: gnso-ppsai-pdp-wg@icann.org<mailto:gnso-ppsai-pdp-wg@icann.org> Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark All, I can’t for the life of me figure out in the string below which text is Val’s, which is Phil’s, and which is David’s. Can we agree that if we’re going to provide an inline reply that we’ll somehow flag (initials, brackets, etc.) when we’re adding text? Thanks. K From: gnso-ppsai-pdp-wg-bounces@icann.org<mailto:gnso-ppsai-pdp-wg-bounces@icann.org> [mailto:gnso-ppsai-pdp-wg-bounces@icann.org] On Behalf Of David Cake Sent: Wednesday, October 29, 2014 2:58 AM To: Valeriya Sherman Cc: gnso-ppsai-pdp-wg@icann.org<mailto:gnso-ppsai-pdp-wg@icann.org> Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark On 29 Oct 2014, at 3:38 am, Valeriya Sherman <VSherman@sgbdc.com<mailto:VSherman@sgbdc.com>> wrote: Phil, With respect to Reveal in the context of allegations that a domain name is infringing, we advocate Disclosure (to the Requestor only) of information sufficient to help the Requestor determine if further action against the Customer is warranted. This is especially important in the context of IP rights enforcement. Allegations are not proof. If the domain name itself is regarded as possibly infringing, we have the UDRP and URS to determine it a domain name is actually infringing. Disclosure of the Customer's identity would help the Requestor determine, before having to file a URS or UDRP, whether or not the Customer: Sure. But being helpful to the Requestor is not, by itself, sufficient to justify disclosure. -has legitimate rights in the domain name; -is a cybersquatter; These are the exact questions the UDRP/URS are designed to answer. Wanting to know the answers to them before filing is putting the cart before the horse somewhat. -is stockpiling domain names, without adding any website content; or The UDRP ultimately should succeed or fail based on the use of the domain in question, not what the registrant does with their other domains. And as Michele notes, website content is not the only use for domain names. ( eg I have a few friends who have used the adorably geeky rcpt.to domain for email only for over a decade now). Also, if the domain owner is actively using sub-domains of their domain, it may not necessarily be obvious to the requester. -has prior UDRP decisions against him or her. Again, sure, helpful to know before filing your UDRP, but is helpful to potential filers sufficient to overrule the obvious desire of the registrant for privacy? A desire to disassociate particular domains used for specific purposes from their general domaining business may even be the reason for using a PPP. All of the foregoing indicate bad faith registration and use of the domain name. Your first two criteria are decisions that the UDRP/URS will rule on. Your second two criteria might indicate a general pattern of bad behaviour by the registrant, but do not mean that an individual domain is part of that pattern of behaviour. As Paul pointed out on today's call, the Requestor must be able to ascertain this information before it is obliged undergo the time and expense of bringing a UDRP or other legal proceeding. I do not think this follows at all. There is a big difference between the requestor would like to, and the Requestor must be able to. I absolutely think that the Requestor should be able to use relay to request relevant information from the registrant. If the registrant wants to reply to a relayed request asserting their legitimate right to the domain, good. But it is not obvious to me that disclosure is necessary, and I can think of many cases in which it might be problematic. In that way, it can possibly avoid the need for a UDRP. And if it has to bring a UDRP, it can do so in good faith. That is why Disclosure is valuable in cases involving infringing domain names, not just infringing website content. To address another point that has come up in the past, Disclosure does not equate to a finding of guilt. Disclosure is not a remedy of the UDRP or the URS; it would occur before a case is decided on the merits. Of course - but avoiding disclosure is, presumably, often a major reason for retaining a PPP in the first place, so we should not let it happen just because it would be beneficial to the requestor. Regards David It is my understanding that once a UDRP is filed, one or both of the following generally happens: 1) registrar receives a request for information to confirm registrant, which it then sends to the Complainant to amend the Complaint; or 2) the P/P Provider named in the complaint discloses or publishes the information. So under the status quo, there generally is a Reveal before a decision on the merits, but only after the Requestor is forced to file a complaint, without essential information, at a high cost. As you correctly observed, not all allegations are successful -- we don't want to encourage more with a policy that requires premature legal actions. Best regards, Val Valeriya Sherman Silverberg, Goldman & Bikoff, L.L.P. 1101 30th Street, N.W. Suite 120 Washington, D.C. 20007 Tel 202.944.3300 Cell 303.589.7477 vsherman@sgbdc.com<mailto:vsherman@law.gwu.edu> ________________________________ From: gnso-ppsai-pdp-wg-bounces@icann.org<mailto:gnso-ppsai-pdp-wg-bounces@icann.org> [gnso-ppsai-pdp-wg-bounces@icann.org<mailto:gnso-ppsai-pdp-wg-bounces@icann.org>] on behalf of Volker Greimann [vgreimann@key-systems.net<mailto:vgreimann@key-systems.net>] Sent: Tuesday, October 28, 2014 12:37 PM To: gnso-ppsai-pdp-wg@icann.org<mailto:gnso-ppsai-pdp-wg@icann.org> Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark Hi Phil, I agree that a mere allegation is never enough for any form of required result. The bar needs to be set a lot higher, such as a sworn statement that includes legal consequences in case any part of it is incorrect that would allow the injured party and the provider to sue the pants off of the complainant. Also, the violation must be clear and obvious to an untrained third party observer, which is usually not the case in trademark violation due to the fact that trademark law is simply too complex for a layman to understand. And frankly, there also is no need for an immediate reveal as there are, as you point out, already sufficient means to deal with such cases. As for content, that is a hosting issue outside the realm of ICANN. Go to the hosting provider instead. Infringing content has nothing to do with the domain name whatsoever. Best, Volker Am 28.10.2014 17:30, schrieb Phil Corwin: I want to reiterate the concerns I raised during today's call about recommending a policy that would require a privacy/proxy provider (PPP) to reveal/disclose a registrant's identity and contact information based on a mere allegation that the domain name is infringing a trademark. ICANN has established the URDP and URS to deal with such allegations. And every day WIPO, NAF, and other providers deny complainant allegations. In fact, it appears that instances of attempted reverse domain hijacking are on the rise. A registrant who is targeted in a UDRP or URS has a choice of responding (in which case they will be revealing their identity) or to default and let the provider decide the allegation based solely upon the complaint. The proposed policy would compel disclosure of registrant data even when no UDRP, URS, or trademark infringement litigation was filed, or even if the allegation was subsequently found to fail to meet the required burden of proof. I am not convinced by arguments that such mandatory disclosure might facilitate resolution absent the filing of arbitration or litigation. That can be accomplished by requiring the PPP to relay a cease-and-desist letter or other communication to the registrant. Mandatory disclosure based on an unproven allegation does not further the claimed goal. Summing up, I believe that our WG should not create any new policy related to allegations of TM infringement by a domain name but should leave this issue to the new gTLD RPM and UDRP review that will be commencing next spring. As for allegations of trademark infringement based upon a website's content that is a separate matter. However, I believe our discussions should recognize that PPPs are unlikely to weigh the merits of an allegation and that their likely default position will be to reveal registrant data once a complaint addresses all the relevant points required by any new policy on this subject. Given that likelihood, we should certainly consider the extent to which such a policy might be abused by a private sector or governmental actor. Thank you for taking these views into account. 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 _______________________________________________ Gnso-ppsai-pdp-wg mailing list Gnso-ppsai-pdp-wg@icann.org<mailto:Gnso-ppsai-pdp-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-ppsai-pdp-wg -- Bei weiteren Fragen stehen wir Ihnen gerne zur Verfügung. Mit freundlichen Grüßen, Volker A. Greimann - Rechtsabteilung - Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net<mailto:vgreimann@key-systems.net> Web: www.key-systems.net<http://www.key-systems.net/> / www.RRPproxy.net<http://www.rrpproxy.net/> www.domaindiscount24.com<http://www.domaindiscount24.com/> / www.BrandShelter.com<http://www.brandshelter.com/> Folgen Sie uns bei Twitter oder werden Sie unser Fan bei Facebook: www.facebook.com/KeySystems<http://www.facebook.com/KeySystems> www.twitter.com/key_systems<http://www.twitter.com/key_systems> Geschäftsführer: Alexander Siffrin Handelsregister Nr.: HR B 18835 - Saarbruecken Umsatzsteuer ID.: DE211006534 Member of the KEYDRIVE GROUP www.keydrive.lu<http://www.keydrive.lu/> Der Inhalt dieser Nachricht ist vertraulich und nur für den angegebenen Empfänger bestimmt. Jede Form der Kenntnisgabe, Veröffentlichung oder Weitergabe an Dritte durch den Empfänger ist unzulässig. Sollte diese Nachricht nicht für Sie bestimmt sein, so bitten wir Sie, sich mit uns per E-Mail oder telefonisch in Verbindung zu setzen. -------------------------------------------- Should you have any further questions, please do not hesitate to contact us. Best regards, Volker A. Greimann - legal department - Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net<mailto:vgreimann@key-systems.net> Web: www.key-systems.net<http://www.key-systems.net/> / www.RRPproxy.net<http://www.rrpproxy.net/> www.domaindiscount24.com<http://www.domaindiscount24.com/> / www.BrandShelter.com<http://www.brandshelter.com/> Follow us on Twitter or join our fan community on Facebook and stay updated: www.facebook.com/KeySystems<http://www.facebook.com/KeySystems> www.twitter.com/key_systems<http://www.twitter.com/key_systems> CEO: Alexander Siffrin Registration No.: HR B 18835 - Saarbruecken V.A.T. ID.: DE211006534 Member of the KEYDRIVE GROUP www.keydrive.lu<http://www.keydrive.lu/> This e-mail and its attachments is intended only for the person to whom it is addressed. Furthermore it is not permitted to publish any content of this email. You must not use, disclose, copy, print or rely on this e-mail. If an addressing or transmission error has misdirected this e-mail, kindly notify the author by replying to this e-mail or contacting us by telephone. _______________________________________________ Gnso-ppsai-pdp-wg mailing list Gnso-ppsai-pdp-wg@icann.org<mailto:Gnso-ppsai-pdp-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-ppsai-pdp-wg

How would the requestor determine I the registrant has legitimate rights of they don't know who/what they are? Kiran Malancharuvil Internet Policy Counselor MarkMonitor 415-419-9138 (m) Sent from my mobile, please excuse any typos.

On Oct 29, 2014, at 4:27 AM, Volker Greimann <vgreimann@key-systems.net> wrote:

Hi Valeriya,

you do not seem to realize that disclosure already constitutes a violation of the privacy rights of the customer.

...

Disclosure of the Customer's identity would help the Requestor determine, before having to file a URS or UDRP, whether or not the Customer:

-has legitimate rights in the domain name; Frankly, the requestor should try to figure this out before making the request. All of the foregoing indicate bad faith registration and use of the domain name. As Paul pointed out on today's call, the Requestor must be able to ascertain this information before it is obliged undergo the time and expense of bringing a UDRP or other legal proceeding. In that way, it can possibly avoid the need for a UDRP. And if it has to bring a UDRP, it can do so in good faith. That is why Disclosure is valuable in cases involving infringing domain names, not just infringing website content. All of the foregoing? Even having legitimate rights? To address another point that has come up in the past, Disclosure does not equate to a finding of guilt. Disclosure is not a remedy of the UDRP or the URS; it would occur before a case is decided on the merits. It is my understanding that once a UDRP is filed, one or both of the following generally happens: 1) registrar receives a request for information to confirm registrant, which it then sends to the Complainant to amend the Complaint; or 2) the P/P Provider named in the complaint discloses or publishes the information. So under the status quo, there generally is a Reveal before a decision on the merits, but only after the Requestor is forced to file a complaint, without essential information, at a high cost. As you correctly observed, not all allegations are successful -- we don't want to encourage more with a policy that requires premature legal actions. Disclosure may not equate a finding of guilt, but it does equate a violation of privacy.

Best regards,

Volker

...

Valeriya Sherman Silverberg, Goldman & Bikoff, L.L.P. 1101 30th Street, N.W. Suite 120 Washington, D.C. 20007 Tel 202.944.3300 Cell 303.589.7477 vsherman@sgbdc.com<mailto:vsherman@law.gwu.edu> ________________________________ From: gnso-ppsai-pdp-wg-bounces@icann.org [gnso-ppsai-pdp-wg-bounces@icann.org] on behalf of Volker Greimann [vgreimann@key-systems.net] Sent: Tuesday, October 28, 2014 12:37 PM To: gnso-ppsai-pdp-wg@icann.org Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark

Hi Phil,

I agree that a mere allegation is never enough for any form of required result. The bar needs to be set a lot higher, such as a sworn statement that includes legal consequences in case any part of it is incorrect that would allow the injured party and the provider to sue the pants off of the complainant.

Also, the violation must be clear and obvious to an untrained third party observer, which is usually not the case in trademark violation due to the fact that trademark law is simply too complex for a layman to understand. And frankly, there also is no need for an immediate reveal as there are, as you point out, already sufficient means to deal with such cases.

As for content, that is a hosting issue outside the realm of ICANN. Go to the hosting provider instead. Infringing content has nothing to do with the domain name whatsoever.

Best,

Volker

Am 28.10.2014 17:30, schrieb Phil Corwin:

I want to reiterate the concerns I raised during today's call about recommending a policy that would require a privacy/proxy provider (PPP) to reveal/disclose a registrant's identity and contact information based on a mere allegation that the domain name is infringing a trademark.

ICANN has established the URDP and URS to deal with such allegations. And every day WIPO, NAF, and other providers deny complainant allegations. In fact, it appears that instances of attempted reverse domain hijacking are on the rise.

A registrant who is targeted in a UDRP or URS has a choice of responding (in which case they will be revealing their identity) or to default and let the provider decide the allegation based solely upon the complaint. The proposed policy would compel disclosure of registrant data even when no UDRP, URS, or trademark infringement litigation was filed, or even if the allegation was subsequently found to fail to meet the required burden of proof.

I am not convinced by arguments that such mandatory disclosure might facilitate resolution absent the filing of arbitration or litigation. That can be accomplished by requiring the PPP to relay a cease-and-desist letter or other communication to the registrant. Mandatory disclosure based on an unproven allegation does not further the claimed goal.

Summing up, I believe that our WG should not create any new policy related to allegations of TM infringement by a domain name but should leave this issue to the new gTLD RPM and UDRP review that will be commencing next spring.

As for allegations of trademark infringement based upon a website's content that is a separate matter. However, I believe our discussions should recognize that PPPs are unlikely to weigh the merits of an allegation and that their likely default position will be to reveal registrant data once a complaint addresses all the relevant points required by any new policy on this subject. Given that likelihood, we should certainly consider the extent to which such a policy might be abused by a private sector or governmental actor.

Thank you for taking these views into account.

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

_______________________________________________ Gnso-ppsai-pdp-wg mailing list Gnso-ppsai-pdp-wg@icann.org<mailto:Gnso-ppsai-pdp-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-ppsai-pdp-wg

-- Bei weiteren Fragen stehen wir Ihnen gerne zur Verfügung.

Mit freundlichen Grüßen,

Volker A. Greimann - Rechtsabteilung -

Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net<mailto:vgreimann@key-systems.net>

Web: www.key-systems.net<http://www.key-systems.net> / www.RRPproxy.net<http://www.RRPproxy.net> www.domaindiscount24.com<http://www.domaindiscount24.com> / www.BrandShelter.com<http://www.BrandShelter.com>

Folgen Sie uns bei Twitter oder werden Sie unser Fan bei Facebook: www.facebook.com/KeySystems<http://www.facebook.com/KeySystems> www.twitter.com/key_systems<http://www.twitter.com/key_systems>

Geschäftsführer: Alexander Siffrin Handelsregister Nr.: HR B 18835 - Saarbruecken Umsatzsteuer ID.: DE211006534

Member of the KEYDRIVE GROUP www.keydrive.lu<http://www.keydrive.lu>

Der Inhalt dieser Nachricht ist vertraulich und nur für den angegebenen Empfänger bestimmt. Jede Form der Kenntnisgabe, Veröffentlichung oder Weitergabe an Dritte durch den Empfänger ist unzulässig. Sollte diese Nachricht nicht für Sie bestimmt sein, so bitten wir Sie, sich mit uns per E-Mail oder telefonisch in Verbindung zu setzen.

--------------------------------------------

Should you have any further questions, please do not hesitate to contact us.

Best regards,

Volker A. Greimann - legal department -

Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net<mailto:vgreimann@key-systems.net>

Web: www.key-systems.net<http://www.key-systems.net> / www.RRPproxy.net<http://www.RRPproxy.net> www.domaindiscount24.com<http://www.domaindiscount24.com> / www.BrandShelter.com<http://www.BrandShelter.com>

Follow us on Twitter or join our fan community on Facebook and stay updated: www.facebook.com/KeySystems<http://www.facebook.com/KeySystems> www.twitter.com/key_systems<http://www.twitter.com/key_systems>

CEO: Alexander Siffrin Registration No.: HR B 18835 - Saarbruecken V.A.T. ID.: DE211006534

Member of the KEYDRIVE GROUP www.keydrive.lu<http://www.keydrive.lu>

This e-mail and its attachments is intended only for the person to whom it is addressed. Furthermore it is not permitted to publish any content of this email. You must not use, disclose, copy, print or rely on this e-mail. If an addressing or transmission error has misdirected this e-mail, kindly notify the author by replying to this e-mail or contacting us by telephone.

-- Bei weiteren Fragen stehen wir Ihnen gerne zur Verfügung.

Mit freundlichen Grüßen,

Volker A. Greimann - Rechtsabteilung -

Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net

Web: www.key-systems.net / www.RRPproxy.net www.domaindiscount24.com / www.BrandShelter.com

Folgen Sie uns bei Twitter oder werden Sie unser Fan bei Facebook: www.facebook.com/KeySystems www.twitter.com/key_systems

Geschäftsführer: Alexander Siffrin Handelsregister Nr.: HR B 18835 - Saarbruecken Umsatzsteuer ID.: DE211006534

Member of the KEYDRIVE GROUP www.keydrive.lu

Der Inhalt dieser Nachricht ist vertraulich und nur für den angegebenen Empfänger bestimmt. Jede Form der Kenntnisgabe, Veröffentlichung oder Weitergabe an Dritte durch den Empfänger ist unzulässig. Sollte diese Nachricht nicht für Sie bestimmt sein, so bitten wir Sie, sich mit uns per E-Mail oder telefonisch in Verbindung zu setzen.

--------------------------------------------

Should you have any further questions, please do not hesitate to contact us.

Best regards,

Volker A. Greimann - legal department -

Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net

Web: www.key-systems.net / www.RRPproxy.net www.domaindiscount24.com / www.BrandShelter.com

Follow us on Twitter or join our fan community on Facebook and stay updated: www.facebook.com/KeySystems www.twitter.com/key_systems

CEO: Alexander Siffrin Registration No.: HR B 18835 - Saarbruecken V.A.T. ID.: DE211006534

Member of the KEYDRIVE GROUP www.keydrive.lu

This e-mail and its attachments is intended only for the person to whom it is addressed. Furthermore it is not permitted to publish any content of this email. You must not use, disclose, copy, print or rely on this e-mail. If an addressing or transmission error has misdirected this e-mail, kindly notify the author by replying to this e-mail or contacting us by telephone.

_______________________________________________ Gnso-ppsai-pdp-wg mailing list Gnso-ppsai-pdp-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-ppsai-pdp-wg

On 29 Oct 2014, at 7:52 pm, Volker Greimann <vgreimann@key-systems.net> wrote:

Well, they could do their research and find out how the domain is used, if there are other rights registered somewhere that would legitimize the registration.

Absolutely. While knowing who they are can tell you if they have a relevant trademark of their own registered, which would strengthen their defence, in most cases that should not be necessary.

Or launch a UDRP to find out.

Or use relay to ask them prior to launching the UDRP.

The mere possibility of a violation of some rights does not justify violating other rights.

Absolutely.

What you are asking for is this: "Hey, we are not sure, but this registration could conceivably violate our rights, so please go ahead and make it so that we can violate the rights of the registrant to privacy based on this possibilty...".

And I do not think we will end up there. What I can see myself agreeing to is a position where is a right is violated (obviously, with uncircumventable proof to back up that violation), then a right to certain information may follow. The granting of that right may of course be subject to certain procedures, such as giving the complained about party an opportunity to respond and perhaps counter the allegation.

Best, Volker

Am 29.10.2014 12:37, schrieb Kiran Malancharuvil:

...

How would the requestor determine I the registrant has legitimate rights of they don't know who/what they are?

Kiran Malancharuvil Internet Policy Counselor MarkMonitor 415-419-9138 (m)

Sent from my mobile, please excuse any typos.

...

On Oct 29, 2014, at 4:27 AM, Volker Greimann <vgreimann@key-systems.net> wrote:

Hi Valeriya,

you do not seem to realize that disclosure already constitutes a violation of the privacy rights of the customer.

...

Disclosure of the Customer's identity would help the Requestor determine, before having to file a URS or UDRP, whether or not the Customer:

-has legitimate rights in the domain name; Frankly, the requestor should try to figure this out before making the request. All of the foregoing indicate bad faith registration and use of the domain name. As Paul pointed out on today's call, the Requestor must be able to ascertain this information before it is obliged undergo the time and expense of bringing a UDRP or other legal proceeding. In that way, it can possibly avoid the need for a UDRP. And if it has to bring a UDRP, it can do so in good faith. That is why Disclosure is valuable in cases involving infringing domain names, not just infringing website content. All of the foregoing? Even having legitimate rights? To address another point that has come up in the past, Disclosure does not equate to a finding of guilt. Disclosure is not a remedy of the UDRP or the URS; it would occur before a case is decided on the merits. It is my understanding that once a UDRP is filed, one or both of the following generally happens: 1) registrar receives a request for information to confirm registrant, which it then sends to the Complainant to amend the Complaint; or 2) the P/P Provider named in the complaint discloses or publishes the information. So under the status quo, there generally is a Reveal before a decision on the merits, but only after the Requestor is forced to file a complaint, without essential information, at a high cost. As you correctly observed, not all allegations are successful -- we don't want to encourage more with a policy that requires premature legal actions. Disclosure may not equate a finding of guilt, but it does equate a violation of privacy.

Best regards,

Volker

...

Valeriya Sherman Silverberg, Goldman & Bikoff, L.L.P. 1101 30th Street, N.W. Suite 120 Washington, D.C. 20007 Tel 202.944.3300 Cell 303.589.7477 vsherman@sgbdc.com<mailto:vsherman@law.gwu.edu> ________________________________ From: gnso-ppsai-pdp-wg-bounces@icann.org [gnso-ppsai-pdp-wg-bounces@icann.org] on behalf of Volker Greimann [vgreimann@key-systems.net] Sent: Tuesday, October 28, 2014 12:37 PM To: gnso-ppsai-pdp-wg@icann.org Subject: Re: [Gnso-ppsai-pdp-wg] Mandatory Reveal in Context of Allegations that a Domain Name is Infringing Trademark

Hi Phil,

I agree that a mere allegation is never enough for any form of required result. The bar needs to be set a lot higher, such as a sworn statement that includes legal consequences in case any part of it is incorrect that would allow the injured party and the provider to sue the pants off of the complainant.

Also, the violation must be clear and obvious to an untrained third party observer, which is usually not the case in trademark violation due to the fact that trademark law is simply too complex for a layman to understand. And frankly, there also is no need for an immediate reveal as there are, as you point out, already sufficient means to deal with such cases.

As for content, that is a hosting issue outside the realm of ICANN. Go to the hosting provider instead. Infringing content has nothing to do with the domain name whatsoever.

Best,

Volker

Am 28.10.2014 17:30, schrieb Phil Corwin:

I want to reiterate the concerns I raised during today's call about recommending a policy that would require a privacy/proxy provider (PPP) to reveal/disclose a registrant's identity and contact information based on a mere allegation that the domain name is infringing a trademark.

ICANN has established the URDP and URS to deal with such allegations. And every day WIPO, NAF, and other providers deny complainant allegations. In fact, it appears that instances of attempted reverse domain hijacking are on the rise.

A registrant who is targeted in a UDRP or URS has a choice of responding (in which case they will be revealing their identity) or to default and let the provider decide the allegation based solely upon the complaint. The proposed policy would compel disclosure of registrant data even when no UDRP, URS, or trademark infringement litigation was filed, or even if the allegation was subsequently found to fail to meet the required burden of proof.

I am not convinced by arguments that such mandatory disclosure might facilitate resolution absent the filing of arbitration or litigation. That can be accomplished by requiring the PPP to relay a cease-and-desist letter or other communication to the registrant. Mandatory disclosure based on an unproven allegation does not further the claimed goal.

Summing up, I believe that our WG should not create any new policy related to allegations of TM infringement by a domain name but should leave this issue to the new gTLD RPM and UDRP review that will be commencing next spring.

As for allegations of trademark infringement based upon a website's content that is a separate matter. However, I believe our discussions should recognize that PPPs are unlikely to weigh the merits of an allegation and that their likely default position will be to reveal registrant data once a complaint addresses all the relevant points required by any new policy on this subject. Given that likelihood, we should certainly consider the extent to which such a policy might be abused by a private sector or governmental actor.

Thank you for taking these views into account.

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

_______________________________________________ Gnso-ppsai-pdp-wg mailing list Gnso-ppsai-pdp-wg@icann.org<mailto:Gnso-ppsai-pdp-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-ppsai-pdp-wg

-- Bei weiteren Fragen stehen wir Ihnen gerne zur Verfügung.

Mit freundlichen Grüßen,

Volker A. Greimann - Rechtsabteilung -

Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net<mailto:vgreimann@key-systems.net>

Web: www.key-systems.net<http://www.key-systems.net> / www.RRPproxy.net<http://www.RRPproxy.net> www.domaindiscount24.com<http://www.domaindiscount24.com> / www.BrandShelter.com<http://www.BrandShelter.com>

Folgen Sie uns bei Twitter oder werden Sie unser Fan bei Facebook: www.facebook.com/KeySystems<http://www.facebook.com/KeySystems> www.twitter.com/key_systems<http://www.twitter.com/key_systems>

Geschäftsführer: Alexander Siffrin Handelsregister Nr.: HR B 18835 - Saarbruecken Umsatzsteuer ID.: DE211006534

Member of the KEYDRIVE GROUP www.keydrive.lu<http://www.keydrive.lu>

Der Inhalt dieser Nachricht ist vertraulich und nur für den angegebenen Empfänger bestimmt. Jede Form der Kenntnisgabe, Veröffentlichung oder Weitergabe an Dritte durch den Empfänger ist unzulässig. Sollte diese Nachricht nicht für Sie bestimmt sein, so bitten wir Sie, sich mit uns per E-Mail oder telefonisch in Verbindung zu setzen.

--------------------------------------------

Should you have any further questions, please do not hesitate to contact us.

Best regards,

Volker A. Greimann - legal department -

Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net<mailto:vgreimann@key-systems.net>

Web: www.key-systems.net<http://www.key-systems.net> / www.RRPproxy.net<http://www.RRPproxy.net> www.domaindiscount24.com<http://www.domaindiscount24.com> / www.BrandShelter.com<http://www.BrandShelter.com>

Follow us on Twitter or join our fan community on Facebook and stay updated: www.facebook.com/KeySystems<http://www.facebook.com/KeySystems> www.twitter.com/key_systems<http://www.twitter.com/key_systems>

CEO: Alexander Siffrin Registration No.: HR B 18835 - Saarbruecken V.A.T. ID.: DE211006534

Member of the KEYDRIVE GROUP www.keydrive.lu<http://www.keydrive.lu>

This e-mail and its attachments is intended only for the person to whom it is addressed. Furthermore it is not permitted to publish any content of this email. You must not use, disclose, copy, print or rely on this e-mail. If an addressing or transmission error has misdirected this e-mail, kindly notify the author by replying to this e-mail or contacting us by telephone.

-- Bei weiteren Fragen stehen wir Ihnen gerne zur Verfügung.

Mit freundlichen Grüßen,

Volker A. Greimann - Rechtsabteilung -

Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net

Web: www.key-systems.net / www.RRPproxy.net www.domaindiscount24.com / www.BrandShelter.com

Folgen Sie uns bei Twitter oder werden Sie unser Fan bei Facebook: www.facebook.com/KeySystems www.twitter.com/key_systems

Geschäftsführer: Alexander Siffrin Handelsregister Nr.: HR B 18835 - Saarbruecken Umsatzsteuer ID.: DE211006534

Member of the KEYDRIVE GROUP www.keydrive.lu

Der Inhalt dieser Nachricht ist vertraulich und nur für den angegebenen Empfänger bestimmt. Jede Form der Kenntnisgabe, Veröffentlichung oder Weitergabe an Dritte durch den Empfänger ist unzulässig. Sollte diese Nachricht nicht für Sie bestimmt sein, so bitten wir Sie, sich mit uns per E-Mail oder telefonisch in Verbindung zu setzen.

--------------------------------------------

Should you have any further questions, please do not hesitate to contact us.

Best regards,

Volker A. Greimann - legal department -

Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net

Web: www.key-systems.net / www.RRPproxy.net www.domaindiscount24.com / www.BrandShelter.com

Follow us on Twitter or join our fan community on Facebook and stay updated: www.facebook.com/KeySystems www.twitter.com/key_systems

CEO: Alexander Siffrin Registration No.: HR B 18835 - Saarbruecken V.A.T. ID.: DE211006534

Member of the KEYDRIVE GROUP www.keydrive.lu

This e-mail and its attachments is intended only for the person to whom it is addressed. Furthermore it is not permitted to publish any content of this email. You must not use, disclose, copy, print or rely on this e-mail. If an addressing or transmission error has misdirected this e-mail, kindly notify the author by replying to this e-mail or contacting us by telephone.

_______________________________________________ Gnso-ppsai-pdp-wg mailing list Gnso-ppsai-pdp-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-ppsai-pdp-wg

-- Bei weiteren Fragen stehen wir Ihnen gerne zur Verfügung.

Mit freundlichen Grüßen,

Volker A. Greimann - Rechtsabteilung -

Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net

Web: www.key-systems.net / www.RRPproxy.net www.domaindiscount24.com / www.BrandShelter.com

Folgen Sie uns bei Twitter oder werden Sie unser Fan bei Facebook: www.facebook.com/KeySystems www.twitter.com/key_systems

Geschäftsführer: Alexander Siffrin Handelsregister Nr.: HR B 18835 - Saarbruecken Umsatzsteuer ID.: DE211006534

Member of the KEYDRIVE GROUP www.keydrive.lu

Der Inhalt dieser Nachricht ist vertraulich und nur für den angegebenen Empfänger bestimmt. Jede Form der Kenntnisgabe, Veröffentlichung oder Weitergabe an Dritte durch den Empfänger ist unzulässig. Sollte diese Nachricht nicht für Sie bestimmt sein, so bitten wir Sie, sich mit uns per E-Mail oder telefonisch in Verbindung zu setzen.

--------------------------------------------

Should you have any further questions, please do not hesitate to contact us.

Best regards,

Volker A. Greimann - legal department -

Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net

Web: www.key-systems.net / www.RRPproxy.net www.domaindiscount24.com / www.BrandShelter.com

Follow us on Twitter or join our fan community on Facebook and stay updated: www.facebook.com/KeySystems www.twitter.com/key_systems

CEO: Alexander Siffrin Registration No.: HR B 18835 - Saarbruecken V.A.T. ID.: DE211006534

Member of the KEYDRIVE GROUP www.keydrive.lu

This e-mail and its attachments is intended only for the person to whom it is addressed. Furthermore it is not permitted to publish any content of this email. You must not use, disclose, copy, print or rely on this e-mail. If an addressing or transmission error has misdirected this e-mail, kindly notify the author by replying to this e-mail or contacting us by telephone.

_______________________________________________ Gnso-ppsai-pdp-wg mailing list Gnso-ppsai-pdp-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-ppsai-pdp-wg