Dear Sub Team 3 members, Staff thought we ought to follow up with you after the WG discussion on the call yesterday. As noted then, there are two basic categories of changes/issues that were brought up for WG consideration. The first category concerns the changes made to Section III of the Framework following the WG¹s Dublin discussions, which were described by Todd on the call, and for which Steve had asked WG members to send any further comments they may have to the WG mailing list by COB tomorrow (Thursday). The second, and remaining, topic is the two options in the annex, on which further WG contributions have also been requested by this week while the Sub Team continues to try to develop a final recommendation for the WG before the next call next Tuesday. Kathy, I¹m not sure if this is what you meant by Steve¹s suggested language, but here is the part of the transcript that I think you may be referring to: ³ we need to figure out whether or not we need to resolve that in order to provide that additional marginal comfort for the customer who feels that the information that was disclosed was misused. I mean, I don't think we're - we've reached a conclusion on this. But I would ask people to try to think about this and see first, whether they feel this is necessary to address this. And second, if so, then how should we be tweaking Option Two to make it clear? Two points really. One is really that there is some way for the requestor to know what jurisdiction he or she is submitting to. And the second is -- the other point I would make is we probably could say, "solely for the purpose of disputes arising from a less than proper disclosure, et cetera.² Because it's not a general -- you know -- "I agree to be sued by the customer for anything in this jurisdiction." It's just for certain types of allegations. So unless you people have other comments on this question or suggestions about how we might resolve this. I think we have gotten some of the issues out on the table here. And I appreciate everyone's participation in that.² Perhaps the Sub Team could agree on whether or not its answer to the first question is yes, it¹s necessary to address the question of jurisdiction to be agreed on by a Requester for the purpose of a customer¹s seeking legal recourse in the event of an improper disclosure. If so, then the Sub Team could try to agree on recommended language for Option Two, including starting with Steve¹s suggestion as pasted above. We hope this summary helps with the Sub Team¹s further discussions. Please let us know how we can assist with your deliberations this week. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names & Numbers (ICANN) Telephone: +1 603 574 4889 Email: mary.wong@icann.org From: <gnso-ppsai-pdp-wg-bounces@icann.org> on behalf of Kathy Kleiman <kathy@kathykleiman.com> Date: Wednesday, November 4, 2015 at 13:15 To: "gnso-ppsai-pdp-wg@icann.org" <gnso-ppsai-pdp-wg@icann.org>, "Metalitz, Steven" <met@msk.com> Subject: Re: [Gnso-ppsai-pdp-wg] Feedback on Illustrative Disclosure Framework
Tx Mary.
Hi Steve - could you please post the language that you suggested on the call yesterday - language that would limit the jurisdictional provision solely to matters in Annex E?
Tx, Kathy
On 11/4/2015 1:00 PM, Mary Wong wrote:
Thanks for the detailed follow up, Phil staff will in turn follow up with Sub Team 3 as they finalize their recommendations on the Framework for the WG this week.
As requested by Steve on the WG call yesterday, we¹d like to remind everyone to please raise any further questions or comments you may have on: (1) the latest proposed edits to the Framework as presented by Todd and Kathy on the call; and (2) the proposed new language on recommendations concerning de-accreditation, to the mailing list by the end of your respective working days tomorrow (Thursday 5 November). If no further issues are raised with the few post-Dublin changes made to the Framework language (except for the annex, which is still being worked on by the Sub Team) or the de-accreditation text, we¹ll proceed to insert those into the next iteration of the draft Final Report.
Staff will also follow up on the proposed discussion with our operational colleagues of implementation issues that may require refinement or reconsideration of the current language of the WG's policy recommendations please look out for a separate email on that topic.
Thank you.
Cheers Mary
Mary Wong Senior Policy Director Internet Corporation for Assigned Names & Numbers (ICANN) Telephone: +1 603 574 4889 Email: mary.wong@icann.org
From: Phil Corwin < <mailto:psc@vlaw-dc.com> psc@vlaw-dc.com> Date: Wednesday, November 4, 2015 at 11:49 To: Mary Wong <mary.wong@icann.org>, "gnso-ppsai-pdp-wg@icann.org" <gnso-ppsai-pdp-wg@icann.org> Subject: RE: [Gnso-ppsai-pdp-wg] Agenda and documents for review on 3 November 2015
Following up on yesterday¹s call, and amplifying/further explaining my oral comments in regard to the ³Revised Illustrative Draft Disclosure Framework for Intellectual Property Rights-holders² --- · Section IIA, starting on page 2, addresses situations where ³Where a domain name allegedly infringes a trademark² and thus coincides with scenarios where a rights holder could employ the URS (at new gTLDs) or the UDRP (at all gTLDs; and noting that most ccTLDs have adopted similar arbitration procedures) as well as initiate litigation under applicable national laws. The ICANN-adopted RPMs allow an action to be initiated even when the identity of the registrant is not known, and many national laws provide for In Rem filings to address such circumstances.
· Subsection 6a requires the rights holder (or its representative) seeking registrant disclosure to provide a good faith statement that ³provides a basis for reasonably believing that the use of the trademark in the domain name -i. allegedly infringes the trademark holder¹s rights; and ii. is not defensible². Some questions that may require clarifying modifications : 1) Does the phrase ³use of the trademark in the domain name² mean that this process is only available where the actual trademark, and not an allegedly confusingly similar variant, constitutes the domain name or is wholly incorporated within it? 2) Given that the rights holder is seeking a lifting of privacy protection chosen by the registrant, is it sufficient that its statement merely recite a basis for believing that the domain name ³allegedly infringes² its trademark or should there be a higher threshold that is, a requirement that the statement allege that the use of the TM in the domain actually infringes its rights? 3) Does the phrase ³is not defensible² mean that disclosure should only occur (or at least be seriously considered) when the domain name presents a black-and-white, know-it-when-you-see-it scenario such as that for which the URS is designed? (Noting that in many UDRP cases a defense is raised, and where it is raised it is often successful.)(Further noting that Section III.C.ii and iii allows the provider to refuse disclosure where it has a basis for reasonably believing that ³use of the claimed intellectual property is
defensible².)
· Subsection 6b requires the rights holder or representative thereof to use the Customer¹s contact details only for certain purposes, one of which is ³in a legal proceeding concerning the issue². Is it intended that a URS or UDRP filing fall within the meaning of ³a legal proceeding²? If so, can that be clarified as some may assume it only references court proceedings?
· Subsection 6c requires the Requestor¹s statement that it ³c) agrees that the Requestor will submit, without prejudice to other potentially applicable
jurisdictions, to the jurisdiction of the courts (1) where the trademark holder is incorporated and (2) where Provider is located for purposes of any disputes arising from alleged improper disclosures caused by knowingly false statements made by the Requester, or from Requester¹s knowing misuse of information disclosed to it in response to its request². Given that the allegation of an infringing domain name may also be subject to a contemporaneous or subsequent URS or UDRP action, for the sake of completeness should this agreement be expanded to include submitting to the jurisdiction of an accredited dispute resolution provider (DRP) based upon the applicable jurisdiction rules so that such bad conduct could be taken into account to find either abuse of the URS or attempted reverse domain name hijacking under the UDRP?
· Noting that, while the UDRP and URS are not always directly applicable, many of these same questions and requests for clarification arise in regard to Section II.C (Domain name resolves to website where trademark is allegedly infringed).
· Section III.D states, ³Disclosure cannot be refused solely for lack of any of the following: (i) a court order; (ii) a subpoena; (iii) a pending civil action; or (iv) a UDRP or URS proceeding; nor can refusal to disclose be solely based on the fact that the Request is founded on alleged intellectual property infringement in content on a website associated with the domain name². I take issue with the notion that the provider should still continue to determine whether to disclose the customer¹s contact information where a related civil action for trademark infringement, or a URS or UDRP, have been initiated (presumably by the rights holder, since it is unlikely that the customer would do so and thereby make its identity known, in which event further consideration of disclosure would be moot). The request for disclosure is based upon allegations of trademark infringement and a court and/or accredited DRP have far greater expertise than a P/P provider to determine whether actual infringement exists. Given that disparity of expertise, my view is that the filing of such action by the rights holder should stay the disclosure request and relieve the provider from any further obligation to decide on it. Allowing the process to continue could result in a situation where privacy is violated and the court or DRP subsequently finds no actual infringement.
Thank you for considering these questions and views as the WG moves toward a final version of this document.
Best to all, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-ppsai-pdp-wg-bounces@icann.org [mailto:gnso-ppsai-pdp-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, November 02, 2015 5:13 PM To: gnso-ppsai-pdp-wg@icann.org Subject: [Gnso-ppsai-pdp-wg] Agenda and documents for review on 3 November 2015
Dear WG members,
The agenda for our next meeting, on Tuesday 3 November, is as follows. PLEASE NOTE THE UTC TIME CHANGE due to daylight savings time in a number of countries the call will be at 1500 UTC (07:00 PST, 10:00 EST, 15:00 London, 16:00 CET). 1. Roll call/updates to SOI 2. Continued discussion of Illustrative Disclosure Framework (latest version attached please also see the note below) 3. Discussion of proposed revised text for de-accreditation (see attached draft text) and possible data escrow recommendation 4. Next steps For agenda item #2, please note that the draft being circulated is still under discussion by Sub Team 3 and is subject to further revision and recommendations by the group. As such, the ³redlined² edits that were presented during the Dublin F2F meeting have been retained rather than ³accepted² as changes. For your easier review, please note that the main changes since Dublin that incorporate the WG¹s discussion points and agreement in Dublin include: (1) clarification in Section III.A regarding an exception to disclosure in cases where personal safety is endangered; and (2) an addition to Section III.C (as sub-section (vii)) to clarify that providers will not need to disclose if the verifiable evidence spelled out in Section II is not fully produced by the requester.
In addition, this current draft includes new language on dispute resolution (see, e.g., Section II.A(6)(c)). The new language was inserted to cover what has been termed ³Option 2² in the annex, concerning dispute resolution in the event of disclosure due to improper requests. The Sub Team acknowledges that while this topic was discussed briefly in Dublin, there was no WG agreement on a specific recommendation. The new language in the current draft document as well as specific edits to the ³annex² containing Options One and Two reflects a suggestion by some Sub Team members to adopt Option Two. This suggestion, which may not reflect the view of all Sub Team members as it is still being discussed, is nevertheless being presented to the full WG for further consideration.
Thanks and cheers
Mary
Mary Wong
Senior Policy Director
Internet Corporation for Assigned Names & Numbers (ICANN)
Telephone: +1 603 574 4889
Email: mary.wong@icann.org
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