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

Tue Aug 23 18:30:47 UTC 2016

Thanks Thomas.  While I think you may be relying on the examples of 6.2 in your response to my hypothetical, rather than the text of 6.2, your comments on pricing as a deterrent to squatting is an interesting one, worthy of further thought.

I’m a little afraid that we may be boring the other members of the listserv with our microscope session.  I’d enjoy continuing this discussion sometime though – perhaps in Hyderabad.  

Thanks again for your comments on this today.  Lot’s to think about.

Best,

Paul

From: Thomas Brackey II [mailto:tbrackey at freundandbrackey.com] 
Sent: Tuesday, August 23, 2016 11:10 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

Hello Paul,

It is indeed a tangled web.  

I suppose PDDRP 6.1 is the analog to infringement analysis that will be conducted by the PDDRP tribunal.  Though not a definition per se, it nonetheless provides a familiar framework.

Your hypothetical is interesting, while Registry pricing may be an indication of bad faith, it is not necessarily determinative.  For example, some Registry Operators may place famous names in a high pricing tier precisely to deter cybersquatters.

In any event, a Registry Operator would not be liable under the PDDRP for any second level registrations by unaffiliated third parties per 6.2.  I believe the RO would have to be either the registrant, or the beneficial owner of the infringing second level domain name in order to face liability.

All the best,

TAB

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 <mailto:tbrackey at freundandbrackey.com> 

On Aug 23, 2016, at 8:48 AM, Paul McGrady <policy at paulmcgrady.com <mailto: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 <mailto:policy at paulmcgrady.com> >
Cc: Phil Corwin <psc at vlaw-dc.com <mailto:psc at vlaw-dc.com> >; Mary Wong <mary.wong at icann.org <mailto:mary.wong at icann.org> >; Jeff Neuman <jeff.neuman at comlaude.com <mailto:jeff.neuman at comlaude.com> >; gnso-rpm-wg at icann.org <mailto: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

 <mailto:tbrackey at freundandbrackey.com> tbrackey at freundandbrackey.com

On Aug 23, 2016, at 8:11 AM, Paul McGrady < <mailto:policy at paulmcgrady.com> 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.

 <mailto:policy at paulmcgrady.com> policy at paulmcgrady.com

From:  <mailto:gnso-rpm-wg-bounces at icann.org> gnso-rpm-wg-bounces at icann.org [ <mailto:gnso-rpm-wg-bounces at icann.org> mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Phil Corwin
Sent: Tuesday, August 23, 2016 9:40 AM
To: Mary Wong < <mailto:mary.wong at icann.org> mary.wong at icann.org>; Jeff Neuman < <mailto:jeff.neuman at comlaude.com> jeff.neuman at comlaude.com>
Cc:  <mailto:gnso-rpm-wg at icann.org> 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/Direct

202-559-8750/Fax

202-255-6172/Cell

Twitter: @VlawDC

"Luck is the residue of design" -- Branch Rickey

From:  <mailto:gnso-rpm-wg-bounces at icann.org> gnso-rpm-wg-bounces at icann.org [ <mailto:gnso-rpm-wg-bounces at icann.org> mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Mary Wong
Sent: Monday, August 22, 2016 9:44 PM
To: Jeff Neuman
Cc:  <mailto:gnso-rpm-wg at icann.org> 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 < <mailto:jeff.neuman at comlaude.com> 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 :)  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:  <mailto:jeff.neuman at valideus.com> jeff.neuman at valideus.com or  <mailto: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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