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

Tue Aug 23 18:53:53 UTC 2016

In framing up this discussion, it might be a good idea before the call for participants to take a look at Section 6.2 of the TM PDDRP<https://newgtlds.icann.org/en/applicants/agb/pddrp-04jun12-en.pdf>, which deals with infringement at the Second Level.

That section states, in part:

“Complainants are required to prove, by clear and convincing evidence that, through the registry operator’s affirmative conduct:

(a) there is a substantial pattern or practice of specific bad faith intent by the registry operator to profit from the sale of trademark infringing domain names; and
(b) the registry operator’s bad faith intent to profit from the systematic registration of domain names within the gTLD that are identical or confusingly similar to the complainant’s mark, which:
(i) takes unfair advantage of the distinctive character or the reputation of the complainant's mark; or
(ii) impairs the distinctive character or the reputation of the complainant's mark, or
(iii) creates a likelihood of confusion with the complainant's mark.”

That Section also states:

“A registry operator is not liable under the PDDRP for any domain name registration that: (i) is registered by a person or entity that is unaffiliated with the registry operator; (ii) is registered without the direct or indirect encouragement, inducement, initiation or direction of any person or entity affiliated with the registry operator; and (iii) provides no direct or indirect benefit to the registry operator other than the typical registration fee (which may include other fees collected incidental to the registration process for value added services such enhanced registration security).”

Thanks,

Brian

Brian Cimbolic
Deputy General Counsel, Public Interest Registry
Office: +1 703 889-5752| Mobile: + 1 571 385-7871|
www.pir.org<http://www.pir.org/> | Facebook<http://www.facebook.com/PIRegistry> | Twitter<http://twitter.com/PIRegistry> | Instagram<http://instagram.com/PIRegistry> | YouTube<http://www.youtube.com/PIRegistry>

Confidentiality Note:  Proprietary and confidential to Public Interest Registry.  If received in error, please inform sender and then delete.

From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Paul McGrady
Sent: Tuesday, August 23, 2016 11:48 AM
To: 'Thomas Brackey II' <tbrackey at freundandbrackey.com>
Cc: gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] Inadvertent Error on PDDRP Survey

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

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

From: 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 <mary.wong at icann.org<mailto:mary.wong at icann.org>>; Jeff Neuman <jeff.neuman at comlaude.com<mailto:jeff.neuman at comlaude.com>>
Cc: gnso-rpm-wg at icann.org<mailto: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: 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: gnso-rpm-wg at icann.org<mailto: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<mailto: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: jeff.neuman at valideus.com<mailto:jeff.neuman at valideus.com> or jeff.neuman at comlaude.com<mailto:jeff.neuman at comlaude.com>
T: +1.703.635.7514
M: +1.202.549.5079
@Jintlaw

_______________________________________________
gnso-rpm-wg mailing list
gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
________________________________
No virus found in this message.
Checked by AVG - www.avg.com<http://www.avg.com/>
Version: 2016.0.7752 / Virus Database: 4633/12811 - Release Date: 08/15/16
Internal Virus Database is out of date.
_______________________________________________
gnso-rpm-wg mailing list
gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20160823/a3452b1c/attachment-0001.html>