[GNSO-RPM-WG] Question re: TM-PDDRP Draft from Small Group

Tue Sep 1 19:34:38 UTC 2020

Thanks for your response, Paul. With respect, I disagree.

Trust me that I am not trying to play word games or engage in sophistry, just trying to be very precise about language we might recommend that has potential  legal import. ICANN PDPs sometimes make very imprecise, excessively wordy, and somewhat muddled recommendations that subsequently lead to implementation problems and disputes, and then fail to do what was intended.

To repeat, registries do not sell domain names, and therefore cannot offer them for sale. No registry is offering/promoting the sale of the DN paulmcgrady.tld or any other particular DN, they are providing an opportunity for someone to register that DN via a registrar, and the supporting services that make for a viable website associated with the DN. Registries enter into contracts with registrars, and the way they get paid is through a contractual clause that essentially says ''if you facilitate the registration of a domain in .tld, you will pay us this wholesale price for each registration and subsequent renewal, and you are free to set your retail price as you wish and keep the difference - and in return we will maintain an accurate database of .tld registrations and related technical data, and provide secure and stable resolution services that facilitate finding the associated website on the Internet".

If you go to a registry and ask it to sell you a particular DN, their reply will be  "we don't sell DNs, but here is a list of our accredited registrars for the TLD you are interested in". If you ask a registry to show you its list of DN inventory, they will reply, "we have none, but you can register any combination of letters and numbers that hasn't already been registered by someone else - through an accredited registrar, not us". No TLD has a DN warehouse, but if one existed its inventory would be undefined and infinite.

So far as premium names are concerned, my view is that the registry is not offering inventory for sale, but is saying that there are certain potential domain names that it believes should command a wholesale price that is higher than standard. But it is the registrar that offers to facilitate that registration opportunity (sells the DN), and it is the registrant that that engages in registration and use that may be proper or infringing.

My concern is that adding the phrase "offering for sale" to the existing language of 6.2 does not provide clarification but adds further confusion. It does not assist trademark owners to add a reference to an activity that registries do not engage in. If an action is ever brought against a registry based upon that suggested clause its likely response will be "we do not offer domain names for sale to registrants, we provide registry services to businesses called registrars - and therefore we are not in violation". 

In fact, I'd go further and suggest that the current PDDRP reference to "registration of domain names" is also incorrect --  because registries do not register domain names; they are registered by registrants, and that transaction is facilitated by registrars who subsequently notify the registry operator of the registration. If we want an effective RPM that can be used to discipline bad actor registries that actively encourage second level infringement, it should reference and name the actual activities that they engage in and the services they provide, not things they don't do. So maybe the small group should consider deleting "registration' and coming up with a description of activities that registries actually engage in and that mesh with the intent of this RPM.

So I'd end this response the same way I did my first post -- I would therefore urge the small group to determine more precisely what acts by registry operators not already covered by the current PDDRP they are seeking to target, and to bring back different language that does not use the phrase "offering for sale". 

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way
Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

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

From: McGrady, Paul D. <PMcGrady at taftlaw.com> 
Sent: Tuesday, September 01, 2020 2:00 PM
To: Corwin, Philip <pcorwin at verisign.com>; gnso-rpm-wg at icann.org
Subject: [EXTERNAL] RE: Question re: TM-PDDRP Draft from Small Group

Thanks Phil.  While registries may use intermediaries (registrars) to sell domain names to end users, registries most certainly sell domain names.  If they do not, where does their revenue come from?  While the registry's inventory of an unregistered domain name may not leave its quiescent state until the registration request from the registrar is put through, it is still inventory and is offered for sale through a fairly classic, if instantaneous, distributor system.  Importantly, placing a price premium on a domain name and then informing a group of registrars the price for which a domain name needs to sell is most certainly "offering for sale" that domain name, which is why I wrote it that way.  Once identified, marked up, and advertised to the registrars (wholesalers) by the registry for possible resale, a latent premium domain name inarguably becomes inventory for sale even if there has not yet been a request from an end user (retail) customer to the wholesaler (registrar) for registration (sale) by the manufacturer (registry).

Can you please clarify what your concern is?  Thanks Phil!

Best,
Paul

To receive regular COVID-19 updates from Taft, subscribe here. For additional resources, visit Taft's COVID-19 Resource Toolkit.

This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential. If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments.

-----Original Message-----
From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> On Behalf Of Corwin, Philip via GNSO-RPM-WG
Sent: Tuesday, September 1, 2020 12:42 PM
To: gnso-rpm-wg at icann.org
Subject: [GNSO-RPM-WG] Question re: TM-PDDRP Draft from Small Group

During this morning's call I said I had a question/concern about an aspect of the revised draft coming from the TM-PDDRP small group, and that I would post it on the WG list. This is it (referenced section of the PDDRP below), and it is posted in a personal capacity and not in my role as a co-chair.

As we are aware, the purpose of the as yet unutilized PDDRP is to allow a mechanism for complaints by trademark owners, and enforceable remediation where they prevail, when a new gTLD registry operator directly and intentionally infringes a trademark, or when it encourages registrants to register infringing domain names and does so with bad faith intent to profit.

My question and concern relates to the proposed addition of the phrase "offering for sale...of domain names". This is problematic because registries do not sell domain names; they enter into standard and uniform registry-registrar agreements with registrars, and it is the registrars who enter into contractual relationships with registrants for the sale and renewal of domain names (DNs). A registry has no control over a registrar's pricing, sales practices, or any domain names it may suggest to a prospective purchaser either via human agent or automated naming suggestion tool. A registry has no power to block a DN from being registered, and only learns the exact DN after it receives notification of the registration from the registrar, along with the technical information required to maintain an accurate database and provide the registry service of directing an inquiry for that DN to the correct server where the website will resolve.

Now registries do designate premium status for certain domain names, and the small group may intend to target aspects of that practice to the extent it can be demonstrated to be tied to deliberate encouragement of second level infringement.

Also, some registries offer their own name suggestion tools, which may occasionally suggest the registration of a trademarked term. But we have to be very careful in that regard, because-

*Almost every dictionary name in every major language is trademarked for something, somewhere
*It is unreasonable and impractical to expect registry operators to know, much less proactively check for identical or confusing similarity, every unique trademark registered in every national jurisdiction
*Under the current UDRP and URS, actionable cybersquatting cannot be based on registration of a trademarked term alone, even if the registrant does so with bad faith intent - there must also be some bad faith use, and it would be even more unreasonable and impractical to imply that registry operators have some duty to monitor the content of every DN that has been registered in a gTLD they operate to check its use.

While I realize that a violation of 6.2 requires "bad faith intent to profit", and while the closing lines of this section provide some protection for registry operators -

"it is not sufficient to show that the registry operator is on notice of possible trademark infringement through registrations in the gTLD. The registry operator is not liable under the PDDRP solely because: (i) infringing names are in its registry; or (ii) the registry operator knows that infringing names are in its registry; or (iii) the registry operator did not monitor the registrations within its registry" -

it remains problematic to use the term "'offering for sale" because registries do not sell DNs to registrants and have no direct relationship with them; registries offer and sell registry services to customers known as registrars.

I would therefore urge the small group to determine more precisely what acts by registry operators not already covered by the current PDDRP they are seeking to target, and to bring back different language that does not use the phrase "offering for sale".

Thanks in advance for consideration of this input.

New proposed language in bold

               6.2          Second Level

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 offering for sale or 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. In other words, it is not sufficient to show that the registry operator is on notice of possible trademark infringement through registrations in the gTLD. The registry operator is not liable under the PDDRP solely because: (i) infringing names are in its registry; or (ii) the registry operator knows that infringing names are in its registry; or (iii) the registry operator did not monitor the registrations within its registry.

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way
Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

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

_______________________________________________
GNSO-RPM-WG mailing list
GNSO-RPM-WG at icann.org
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________
By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.