[At-Large] Privacy and domain abuse vs the IP constituency
ebw at abenaki.wabanaki.net
Sun May 8 14:47:37 UTC 2011
In the context of the Post Delegation Dispute Resolution Process
(PDDRP), the World Intellectual Property Organization (WIPO) made a
comment (attached) which, while registry operator specific, has a
bearing upon the issue.
The WIPO proposal, if adopted, would hold a registry operator
accountable for trademark infringement that occurs within a TLD if it
"knowingly permitted, or could not have reasonably been unaware of"
infringing domain names within the TLD.
This is sometimes referred to as "Willful Blindness" and is used by
trademark owners to hold third parties liable for contributory
Support for this proposal came from the International Trademark
Association, the Intellectual Property Constituency of ICANN, the
International Olympic Committee and other trademark owners and
Quoting from Jeff Neuman's note to the Temporary Drafting Group Legal
(tdg-legal) mailing list of May 5th, 2010:
"In the United States, with respect to whether or not domain name
registries and registrars can be liable for contributory trademark
infringement is well settled. The 1999 case of Lockheed Martin v.
Network Solutions  controls. In that case, the United States Court
of Appeals for the Ninth Circuit found that Network Solutions was not
liable to Lockheed Martin for contributory infringement as a matter of
law because it was acting merely as a domain name registrar in
registering domain names. More specifically, it found that in order
for a service provider to be liable under the doctrine of contributory
infringement, the service provider must exercise sufficient control
over the infringing conduct itself. See also Tiffany v. Ebay 
decided on April 1, 2010. If a trademark owner cannot establish that a
service provider has sufficient control over the infringing conduct,
then whether or not the service provider knew, should have known or
turned a blind eye towards the infringing conduct, is irrelevant."
I suggest that asking the set of registrars which currently control
the Registrar Stakeholder Group's (RrSG) process if they would like a
registrar to held accountable for trademark infringement that occurs
within the TLDs it provides registrations if it "knowingly permitted,
or could not have reasonably been unaware of" infringing domain names
for which it is the registrar of record would have a similar outcome
to that provided by the set of registries which currently control the
A defect in the argument offered by NeuStar to the WIPO proposal that
wilfull blindness should be the sole basis for direct or contributory
infringement was shown by the authors of the .C variant of the
Conficker distributed system. The .C variant attempted to create
rendezvous points (domain names) in more than one namespace. The
proper scope of the issue is not the isolated affirmative acts of any
contracted party, but what contracted parties can reasonably know.
The NeuStar defense, if applied to the .C fact pattern, would hold a
registry operator or registrar immune from any claim arising from the
registry operator's or registrar's failure to block the portion of the
algorithmically predicted rendezvous point buys over which the
registry operator or registrar has control by the .C attack engine for
command and control purposes of a botnet consisting of hundreds of
thousands of covertly repurposed computors, if the immediate conduct
of the .C system was trademark infringement, aka "cybersquatting".
What registry operators can reasonably know, having access to their
own, and any and all other gTLD zone files through the zone file bulk
access right, is patterns of registration utilizing one or more
registrars, and one or more namespaces. I believe that that is the
expectation of Derek Smythe.
The issue of contracted party conduct and liability, under national
law or private contract, is not new, and my participation in an ALAC
regional organization is a few weeks short of six months, so I have
little idea of prior deliberation on the issue by ALAC or its regional
organizations. However, the interest of the contracted parties, or
rather, those amongst the contracted parties which manage to be
influential on issues which potentially affect their pecuniary
interests should not be limiting, nor should any particular national
law, on the deliberation of what is in the public interest, by the ALAC.
I think a useful and interesting "step" to take, one not in the
direction of "WHOIS", is determining what pattern(s) of conduct, by a
contracted party, rises to the level of "wilfull blindness", where
ever there is a public interest. This necessarily includes the area of
trademark infringement. This would form a basis for advice the ALAC
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