[gnso-rpm-wg] Inadvertent Error on PDDRP Survey

Tue Aug 23 17:46:08 UTC 2016

I don't agree with Thomas's framing of the issue, which was not really
answering Paul's question (which related to the *standard* for
infringement).

It's far too extreme to require decisions in adversarial proceedings in
order to prove "a substantial pattern or practice of specific bad faith
intent to profit from the sale of trademark infringing domain names."  Even
if we look at infringement disputes, only a small number of infringement
cases end in decisions of a court or arbitral panel.  Even among cases
where litigation is started, many are settled before any opinion is
issued.  Others may settle before litigation commences (e.g., after a
demand letter is received).  In other cases, it may be the judgment of a
particular brandowner not to pursue certain registered domains -- most
brandowners, even large ones, have to exercise restraint in filing
URS/UDRPs etc.

There was some recent buzz in one of the trade blogs when Accenture went
after a whole bushel of accenture-formative domains in .xyz -- this was
deemed aggressive and a way to send a message, since it was not business as
usual (though perhaps it was more usual 10-15 years ago to go after every
such instance).

Discouraging settlements and encouraging massive scorched-earth litigation
campaigns does not seem like the direction in which we want to go (though
it might please some litigators (who might see an increase in business,
along with an increase in pissed-off clients) and some registries (since it
builds their wall against the PDDRP higher).  It's all the more troubling a
suggestion in this instance, since the decision whether and how to handle a
particular infringement matter is based on the merits of the case and the
wishes of the client -- building a PDDRP case may not be on the radar
screen in any given situation, especially those that come before the
possibility of a "pattern or practice" is recognized.

Greg

P.S.  I note that Thomas's email did not get to the list.  I only saw it
because Paul McGrady (who was a direct addressee) responded to it.  A check
of the archive confirms this.

On Tue, Aug 23, 2016 at 11:48 AM, Paul McGrady <policy at paulmcgrady.com>
wrote:

> Thanks Thomas.
>
>
>
> I agree that similarity is only one factor in the normal U.S. based
> infringement analysis, as is scienter.  There are a raft of other factors
> as well.  However, I still ask whether or not “infringement” is defined
> anywhere in this ICANN policy or if we are all just assuming into it a U.S.
> understanding of what that word means.  Do we also mean to include dilution
> and other brand abuses in “infringement”?  Is the Indian definition
> different in any meaningful way and, if so, what ways?  Russian, EU?  Of
> course, applying infringement theory in the domain name context is a bit of
> a misfit, since infringement requires use on similar goods and services,
> which is why the US Congress brought the US the ACPA which has its own
> elements and factors.
>
>
>
> Let’s us a hypothetical example.  Let’s assume the existence of a
> hypothetical registry for .Mark.
>
>
>
> If .Mark charged $10 for Kratos.Mark but $10,000 for Nike.Mark, it would
> seem that the value being extracted was tied to the trademark nature of
> “nike” rather than to any reference to Greek mythology (or else we would
> see a similar price for Kratos.Mark). But a second level domain name is not
> shoes, so would “infringement” ever apply?
>
>
>
> So, I think we should examine on an upcoming call what “infringement” is
> meant to mean in this context.  It could be that it is meant to mean a US
> based notion of “infringement” (marks applied to goods and services) – in
> which case we may have diagnosed why there haven’t been any PDDRP filings
> to date.
>
>
>
> Best,
>
> Paul
>
>
>
>
>
>
>
> *From:* Thomas Brackey II [mailto:tbrackey at freundandbrackey.com]
> *Sent:* Tuesday, August 23, 2016 10:32 AM
> *To:* Paul McGrady <policy at paulmcgrady.com>
> *Cc:* Phil Corwin <psc at vlaw-dc.com>; Mary Wong <mary.wong at icann.org>;
> Jeff Neuman <jeff.neuman at comlaude.com>; gnso-rpm-wg at icann.org
> *Subject:* Re: [gnso-rpm-wg] Inadvertent Error on PDDRP Survey
>
>
>
> A letter string, or word, by itself is not “infringing” even if it is
> identical to a famous mark.  Only a tribunal of competent jurisdiction can
> determine whether, under the particular circumstances of each case, a
> second level domain is infringing.  It seems to me the way to frame the
> issue is to determine whether a Registry has engaged in a pattern or
> practice of selling domain names that are later judged to be infringing in
> an adversarial proceeding.  Liability under the PDDRP would then turn on
> the Registry’s knowledge, scienter and/or reaction once it has been
> determined that the names in question have been used in a manner giving
> rise to a finding of infringement.   Of course once a TLD reaches a certain
> scale, there are bound to be instances of second level domains used in an
> infringing manner.  One need look no further than .com.
>
>
>
>
>
> Thomas A. Brackey II
>
> FREUND & BRACKEY LLP
>
> 427 North Camden Drive
>
> Beverly Hills, CA 90210
>
> USA
>
> tel:  310-247-2165, ext. 26
>
> fax: 310-247-2190
>
> tbrackey at freundandbrackey.com
>
>
>
> On Aug 23, 2016, at 8:11 AM, Paul McGrady <policy at paulmcgrady.com> wrote:
>
>
>
> Is “infringement” defined anywhere?  Would it include dilution and other
> acts of using brands to obtain payments for second levels that otherwise
> would have very little value but for their identicalness or confusing
> similarity to brands?
>
>
>
> Best,
>
> Paul
>
>
>
>
>
> Paul D. McGrady, Jr.
>
> policy at paulmcgrady.com
>
>
>
>
>
>
>
> *From:* gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces@
> icann.org <gnso-rpm-wg-bounces at icann.org>] *On Behalf Of *Phil Corwin
> *Sent:* Tuesday, August 23, 2016 9:40 AM
> *To:* Mary Wong <mary.wong at icann.org>; Jeff Neuman <
> jeff.neuman at comlaude.com>
> *Cc:* gnso-rpm-wg at icann.org
> *Subject:* Re: [gnso-rpm-wg] Inadvertent Error on PDDRP Survey
>
>
>
> Thank you Mary.
>
>
>
> Clearly, profiting from the sale of second level domains is not and should
> not be a cause of action for any RPMs, Our concern is intentional TM
> infringement.
>
>
>
> *Philip S. Corwin, Founding Principal*
>
> *Virtualaw LLC*
>
> *1155 F Street, NW*
>
> *Suite 1050*
>
> *Washington, DC 20004*
>
> *202-559-8597 <202-559-8597>/Direct*
>
> *202-559-8750 <202-559-8750>/Fax*
>
> *202-255-6172 <202-255-6172>/Cell*
>
>
>
> *Twitter: @VlawDC*
>
>
>
> *"Luck is the residue of design" -- Branch Rickey*
>
>
>
> *From:* gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-
> bounces at icann.org <gnso-rpm-wg-bounces at icann.org>] *On Behalf Of *Mary
> Wong
> *Sent:* Monday, August 22, 2016 9:44 PM
> *To:* Jeff Neuman
> *Cc:* gnso-rpm-wg at icann.org
> *Subject:* Re: [gnso-rpm-wg] Inadvertent Error on PDDRP Survey
>
>
>
> Thank you, Jeff - our apologies to all for the inadvertent omission. We
> will fix it as soon as we can and resend the link to all community group
> chairs with a short explanatory note.
>
>
>
> Cheers
>
> Mary
>
> Sent from my iPhone
>
>
> On Aug 23, 2016, at 09:36, Jeff Neuman <jeff.neuman at comlaude.com> wrote:
>
> All,
>
>
>
> A Registry just pointed out to me that we have an error in question 7 of
> the PDDRP Survey that just went out which we can easily fix, but definitely
> need to fix.
> Question 7 currently states:  “7. Has there been any conduct by new gTLD
> registry operators that you believe constitutes a “substantial pattern or
> practice of specific bad faith intent to profit” from the sale of domain
> names at the second level?”
>
> However, the PDDRP only applies where it constitutes a “substantial
> pattern or practice of specific bad faith intent to profit” from the sale of
>  *trademark infringing *domain names at the second level. [The Underlined
> portion was left out].
>
>
>
> The portion that was left out is KEY to the cause of action.  As he
> jokingly put it, some believe that the sale of all second level domains
> constitute a bad faith intent to profit J  However, at this point the
> PDDRP does not apply in any situations other than selling trademark
> infringing domain names.
>
>
>
> Can we please fix and reissue the survey?
>
>
> Thanks.
>
>
>
>
>
>
>
>
>
> *Jeffrey J. Neuman*
>
> *Senior Vice President *|*Valideus USA* | *Com Laude USA*
>
> 1751 Pinnacle Drive, Suite 600
>
> Mclean, VA 22102, United States
>
> E: *jeff.neuman at valideus.com <jeff.neuman at valideus.com>* or *jeff.neuman at comlaude.com
> <jeff.neuman at comlaude.com>*
>
> T: +1.703.635.7514
>
> M: +1.202.549.5079
>
> @Jintlaw
>
>
>
>
>
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