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

Wed Sep 2 22:54:25 UTC 2020

Responding as a co-chair:

*       Rest assured that when I have my co-chair hat on I am not representing Verisign, the RySg, or any other party. My focus is on the proper and efficient administration of this WG in conformity with the applicable GNSO Guidelines.
*       If the final PDDRP proposal has sufficient support to become a WG recommendation, the three co-chairs will collectively discuss and determine, in consultation with staff,  whether it merits being put out for 21 days public comment under the applicable provisions of the Guidelines.
*       The principal reason why this proposal might merit public comment is that it is not a modification based upon comments concerning a prior proposal included in the Initial Report, but  an entirely new proposal which received no prior comment.

The only PDDRP recommendation included in the Initial Report proposed to permit unrelated parties to jointly file a PDDRP against a registry operator, which is an entirely different subject (and it looks likely to be included in the Final Report).

The new proposal makes several changes to the text of the URS Rules to "deal with registries who may be trying to circumvent the Sunrise RPM" (Paul McGrady's description of its purpose in a prior email). While the proponents believe it is only a helpful clarification of the existing Rules, other members of the WG and community may hold a different view. The question is whether they should be afforded an opportunity to express such views for our consideration prior to the WG's disposition of this proposal in the Consensus Call.

Finally, if any member of the WG believes that any modification we have agreed upon for any other recommendation (or individual proposal that has been elevated to a recommendation) is so significant that it also should be considered for additional public comment, I would urge them to bring it to the attention of the co-chairs ASAP.

Best,

Philip

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: Wednesday, September 02, 2020 5:09 PM
To: Corwin, Philip <pcorwin at verisign.com>; saustin at vlplawgroup.com; jeff at jjnsolutions.com; brian.beckham at wipo.int; trachtenbergm at gtlaw.com; gnso-rpm-wg at icann.org
Subject: [EXTERNAL] RE: Question re: TM-PDDRP Draft from Small Group

Thanks Phil.  I appreciate you sharing the RySg's view.  Bit, I think it is the co-chairs who call that shot, right?  If the co-chairs decide that the proposal needs to go to public comment,  does the same standard apply to all changes being made as a result of public comment?  Or, is it just targeted at changes to the TM-PDDRP?  If targeted, why?  While I don't think that another round of public comment is necessary, I think we need to be consistent..

Staff, can you please help organize the next Small Team call with a doodle?  Thanks much!

Best,

Paul

From: Corwin, Philip <pcorwin at verisign.com<mailto:pcorwin at verisign.com>>
Sent: Wednesday, September 2, 2020 4:02 PM
To: McGrady, Paul D. <PMcGrady at taftlaw.com<mailto:PMcGrady at taftlaw.com>>; saustin at vlplawgroup.com<mailto:saustin at vlplawgroup.com>; jeff at jjnsolutions.com<mailto:jeff at jjnsolutions.com>; brian.beckham at wipo.int<mailto:brian.beckham at wipo.int>; trachtenbergm at gtlaw.com<mailto:trachtenbergm at gtlaw.com>; gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: RE: Question re: TM-PDDRP Draft from Small Group

Paul:

Again, in an individual capacity -

Do not regard my silence as consent. I have been required to focus on other matters today, but I will be getting back with further comments and questions to clarify the intent and effect of the proposed changes to the PDDRP Rules, either later today or tomorrow morning prior to the next WG call. The small group will have it prior to its next meeting, which I understand has not yet been scheduled.

I would also note that the RySg just completed a regularly scheduled call; and that the status of the RPM WG, including this new proposal, was reported on. The consensus view among those on the call is that any change to the PDDRP Rules that was not contained in the Initial Report must be put out for public comment.

Regards,

Philip

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<mailto:PMcGrady at taftlaw.com>>
Sent: Wednesday, September 02, 2020 4:22 PM
To: Scott Austin <saustin at vlplawgroup.com<mailto:saustin at vlplawgroup.com>>; Jeff Neuman <jeff at jjnsolutions.com<mailto:jeff at jjnsolutions.com>>; BECKHAM Brian <brian.beckham at wipo.int<mailto:brian.beckham at wipo.int>>; Corwin, Philip <pcorwin at verisign.com<mailto:pcorwin at verisign.com>>; trachtenbergm at gtlaw.com<mailto:trachtenbergm at gtlaw.com>; gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: [EXTERNAL] RE: Question re: TM-PDDRP Draft from Small Group

Hi Scott, I think the Sunrise abuse that my small clarification is meant to address has to do with registry behavior, not registrar behavior.  If a registrar claims to be able to sell a Sunrise domain name and is insisting on a premium that the registry is not insisting on, a buyer will be able to go to a different registrar and purchase it.  So, I don't think we would need to address registrar activities within the very narrow scope of this clarifying amendment.

Phil and David, for the record, I don't think you have been jousted at my proposal.  You both have been very helpful in raising issues that need consideration on the list and on the calls.  So, thank you both.  I think what has emerged is a helpful clarification to the TM-PDDRP so that it will now clearly do what it was always intended to do (as Brian B. mentions when discussing the "legislative history").

Best,

Paul

From: Scott Austin <saustin at vlplawgroup.com<mailto:saustin at vlplawgroup.com>>
Sent: Wednesday, September 2, 2020 2:27 PM
To: Jeff Neuman <jeff at jjnsolutions.com<mailto:jeff at jjnsolutions.com>>; BECKHAM Brian <brian.beckham at wipo.int<mailto:brian.beckham at wipo.int>>; Corwin, Philip <pcorwin at verisign.com<mailto:pcorwin at verisign.com>>; trachtenbergm at gtlaw.com<mailto:trachtenbergm at gtlaw.com>; McGrady, Paul D. <PMcGrady at taftlaw.com<mailto:PMcGrady at taftlaw.com>>; gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: RE: Question re: TM-PDDRP Draft from Small Group

Jeff and All:

Although I could not be on the call Monday, I have had a chance to listen to the recording and Jeff

this is the best, most succinct response to David and Phil's jousts at Paul's proposal I have seen, and by someone with credibility having been in the 2012 trenches and working daily with both Ry and Rr issues daily thereafter. Thanks.

Having said that, and I have not thoroughly researched the issue, isn't there a need to address the contributory infringement issue of registries for registrars? Do you see the need for distinguishing language in the amendment to literally spell out its application to both registrars and registries?

Best regards,

Scott

Please click on a link below to calendar a 15, 30, or 60 minute call with me:

  a 15-minute call    a 30-minute call    a 60-minute call

    <http://www.avvo.com/attorneys/33308-fl-scott-austin-1261914.html>

Scott R. Austin | Board Certified Intellectual Property Attorney | VLP Law Group LLP

101 NE Third Avenue, Suite 1500, Fort Lauderdale, FL 33301

Phone: (954) 204-3744 | Fax: (954) 320-0233 | SAustin at VLPLawGroup.com<mailto:SAustin at VLPLawGroup.com>

From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org>> On Behalf Of Jeff Neuman
Sent: Wednesday, September 2, 2020 11:50 AM
To: BECKHAM Brian <brian.beckham at wipo.int<mailto:brian.beckham at wipo.int>>; Corwin, Philip <pcorwin at verisign.com<mailto:pcorwin at verisign.com>>; trachtenbergm at gtlaw.com<mailto:trachtenbergm at gtlaw.com>; PMcGrady at taftlaw.com<mailto:PMcGrady at taftlaw.com>; gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: Re: [GNSO-RPM-WG] Question re: TM-PDDRP Draft from Small Group

I believe applying the PDDRP in cases where Registries are charging exorbitant pricing for trademark owners only to lower them for the rest of the public is a great use case.

Though I disagree with Brian on the concept of willful blindness, and still believe a willful blindness standard should not apply to registries, this practice of overcharging brand owners is more than just turning a blind eye. It is the registry directly profiting off of trademark owners when implementing the required RPMs. The Sunrise / TMCH was supposed to be a cheaper, more efficient, mechanism for brand owners. But in many cases for the 2012 round, this actually did not come to fruition.

Although overcharging brand owners during Sunrise is not profiting off of infringement directly, it is either forcing brand owners to pay an artificially high price or alternatively discourage brand owners from participating in the RPM and thereby making it more likely an infringer could register the name later at a cheaper price.

Jeffrey J. Neuman
Founder & CEO
JJN Solutions, LLC
p: +1.202.549.5079
E: jeff at jjnsolutions.com<mailto:jeff at jjnsolutions.com>
http://jjnsolutions.com

-----Original Message-----
From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org>> On Behalf Of BECKHAM Brian
Sent: Wednesday, September 2, 2020 4:42 AM
To: Corwin, Philip <pcorwin at verisign.com<mailto:pcorwin at verisign.com>>; trachtenbergm at gtlaw.com<mailto:trachtenbergm at gtlaw.com>; PMcGrady at taftlaw.com<mailto:PMcGrady at taftlaw.com>; gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: Re: [GNSO-RPM-WG] Question re: TM-PDDRP Draft from Small Group

Hi Phil (all),

Speaking in a personal capacity here.

In addition to what Marc and Paul are saying, with respect Phil, when you say "The PDDRP targets direct infringement or encouragement of second level of infringement by registrants, not pricing at a level that a mark holder may regard as exorbitant." you seem to be overlooking / conflating third party infringement with the actual legal criteria -- namely 6.2(b)(i) -- which states:

"the registry operator's bad faith intent to profit from the [systemic] 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"

It seems clear that you (and one assumes, Verisign) disagree with this criteria (i.e., "takes unfair advantage of the distinctive character or the reputation of the complainant's mark"), but it is hard to argue against its clear meaning.

In other words, "taking unfair advantage of" would include "exorbitant pricing" and not merely "direct infringement ...by [third party] registrants". As I understand Paul's proposal, it seeks to provide an illustration of such conduct (to your point about assisting vs confusing examiners).

To read in your proposed exclusion would render the entire PDDRP a glossy rewrite of the existing UDRP and ACPA (and a futile one given that under the latter damages may be available).

The same holds true for your interpretation of standing under 5.1 that the "manner of operation or use" would exclude such conduct.

I would also add FWIW that the above is in line with the "legislative history" of the PDDRP (during which registration interests added several procedural layers, and removed the legal concept of willful blindness -- good law under the eBay v Tiffany case stating inter alia that "A service provider is not, we think, permitted willful blindness."). See, e.g., https://www.wipo.int/amc/en/docs/icann130309.pdf<https://secure-web.cisco.com/1sEI4HfC2RT7Wy4l5dOU8J2t33GykKU1P0zpUbLZTosJIWWNLJKeNynLVM8q0ywqPTJgejhF-WYuHSHwxmKbPIwW4nI9esJn138zKFk5LkRwRDELRI2sDNGJdBiAIxY1A_SjGNrhlH3CVu-tQer-eO6SLByXurADrz-zs2zjf2rqYH_3o6NVJWy9oJWOziJjYO0s6-G4kT2OK5YtrBV-Sz26dr0RD98Bb1jCp_X5ADJEXXlZGLqtbN5dzRS65YQ14MqUkaX27B2WhT1fWbSxVAA/https%3A%2F%2Fwww.wipo.int%2Famc%2Fen%2Fdocs%2Ficann130309.pdf> which was stated to cover conduct occurring "through domain name registrations in the TLD".

As to your question why the PDDRP has not been used, that is difficult to speculate on; I can however say that when it was being drafted the intent was not that it would be some "regular" enforcement mechanism but that it would complement the pre-delegation LRO and would moreover encourage registration interests to implement "lower level" RPMs (e.g., a UDRP complement) and at the same time to discourage certain behavior (e.g., the current conversation around exorbitant (sunrise) pricing taking clear advantage of a brand owner) so as to even avoid the need for its invocation altogether.

Finally, apropos of our conversations around the proposal to make the URS a consensus policy, and possible options for Phase II of this WG, I would point out item No. 3 on pg 5 at the above link proposing the idea of an expedited takedown option to complement the existing UDRP. Suffice it to say that the URS has thoroughly failed to match the intent behind that concept.

Brian

-----Original Message-----
From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org>> On Behalf Of Corwin, Philip via GNSO-RPM-WG
Sent: Wednesday, September 2, 2020 1:31 AM
To: trachtenbergm at gtlaw.com<mailto:trachtenbergm at gtlaw.com>; PMcGrady at taftlaw.com<mailto:PMcGrady at taftlaw.com>
Cc: gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: Re: [GNSO-RPM-WG] Question re: TM-PDDRP Draft from Small Group

My replies below, again in a personal capacity.

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: trachtenbergm at gtlaw.com<mailto:trachtenbergm at gtlaw.com> <trachtenbergm at gtlaw.com<mailto:trachtenbergm at gtlaw.com>>
Sent: Tuesday, September 01, 2020 5:21 PM
To: Corwin, Philip <pcorwin at verisign.com<mailto:pcorwin at verisign.com>>; PMcGrady at taftlaw.com<mailto:PMcGrady at taftlaw.com>
Cc: gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: [EXTERNAL] RE: Question re: TM-PDDRP Draft from Small Group

Phil,

Just a couple of quick points. History has proven that some of your statements are not accurate, namely:

1." No registry is offering/promoting the sale of the DN paulmcgrady.tld or any other particular DN" - Incorrect. Registries were doing exactly that in the last round. They solicited brands with "premium" domains or entertained offers from specific parties to take names off the reserved list in exchange for compensation. The fact that the sale technically went through a registrar is irrelevant. - The PDDRP targets direct infringement or encouragement of second level of infringement by registrants, not pricing at a level that a mark holder may regard as exorbitant. I'm not saying that is right, but that this is mixing apples and oranges. Now if a mark holder chooses not purchase the domain, and the registry then actively solicits third parties with no legitimate rights and interests to pay that high price to profit from infringement, that should already be covered (see my further response below referencing 6g).

In regard to the focus of this RPM, Section 5.1 is quite clear - "The mandatory administrative proceeding will commence when a third-party complainant ("Complainant") has filed a Complaint with a Provider asserting that the Complainant is a trademark holder (which may include either registered or unregistered marks as defined below) claiming that one or more of its marks have been infringed, and thereby the Complainant has been harmed, by the registry operator's manner of operation or use of the gTLD." Again, approaching a rights holder directly and trying to extort an unreasonable price for a potentially infringing domain name is an unsavory practice, but what is the connection to infringement and resulting harm?

2." 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" - Per the above, history has proven this also not to be true. In the first round if you went to certain registries and asked them to sell you a particular DN, their response would be (and was): "which one and for how much". - I thought the concern was that certain premium and reserved domain name practices frustrated the exercise of sunrise registration rights for domains that were exact matches of marks recorded in the TMCH. If the requested DN was such an exact match, why was the sunrise registration unavailable through a registrar? If the requested DN was not an exact match, how is this within the jurisdiction of this WG established to review the RPMs - and has this practice been discussed within SubPro?

Also, given that section 6.2(f) makes clear that "the direct or indirect encouragement, inducement, initiation or direction of any person or entity affiliated with the registry operator" can be indicia of "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", and that 6(g) says, "An example of infringement at the second level is where a registry operator has a pattern or practice of actively and systematically encouraging registrants to register second level domain names and to take unfair advantage of the trademark to the extent and degree that bad faith is apparent" (which would cover the scenario where the mark holder elects not to pay the high price and the registry then solicits third parties with no legitimate rights), why has the PDDRP never been used - is it the cost, the high burden of proof, the inability of unrelated parties to bring joint actions (which we are add
r essing), the uncertainty of consequence even if the complainant meets the burden?

3." 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." - This may be your view but it is a legal fiction an doesn't represent the reality of what we saw in the first round. - See my response to #2.

4."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." - So what "offers for sale or otherwise makes available for registration"? - Given the high burden of proof ("clear and convincing evidence") to prove the required elements, I just don't see how the proposed language helps address registry practices that encourage infringement at the second level by third party registrants. We shouldn't leave examiners scratching their heads over what constitutes actionable conduct, nor should we leave them free to make it up as they go along. If the intent is to target specific premium or reserved name practices that demonstrably result in infringement and associated harm, that should be spelled out; "offering for sale" seems just too broad and imprecise, leaves the registry with an easy defense (unless engaged in the unsavory practices you describe), and provides little guidance to the exam iner gi
v en the other provisions of section 6 that narrow the range of registry practices that are actionable.

Best regards,

Marc H. Trachtenberg

Shareholder

Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601

Tel 312.456.1020

Mobile 773.677.3305

trac at gtlaw.com<mailto:trac at gtlaw.com> | www.gtlaw.com<http://secure-web.cisco.com/1VdTk8pk0M_-iCfxCgOnBd17BtnoAdOezcpZTBTE2X3u4bgyxZZ0uYgF1iP_3Z_kSs-vLfbiwZE1HqylP3T_sj1Ap-PKl5CzB3D8PaNy1Q-Ymfv3UWtqhG0be9VVVXWqxo-FBzulYNgVvKSpewtYlVZWqgLVq8OkwNwH-RUp1_bTWSqapcFOaYXosRvZxllSeTapptm_DWA1uxtDh_pa0F7wInk5PHLEvKH0UX4Rx80xEEkfyAsso0ZBHbGFNY-01C4LKhRrkRYqXSWbCPmqS6Q/http%3A%2F%2Fwww.gtlaw.com>

-----Original Message-----
From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Corwin, Philip via GNSO-RPM-WG
Sent: Tuesday, September 1, 2020 2:35 PM
To: PMcGrady at taftlaw.com<mailto:PMcGrady at taftlaw.com>; gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: Re: [GNSO-RPM-WG] Question re: TM-PDDRP Draft from Small Group

*EXTERNAL TO GT*

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<mailto:PMcGrady at taftlaw.com>>

Sent: Tuesday, September 01, 2020 2:00 PM

To: Corwin, Philip <pcorwin at verisign.com<mailto:pcorwin at verisign.com>>; gnso-rpm-wg at icann.org<mailto: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 (registra
r) for r
egistration (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<mailto: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<mailto: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<mailto:GNSO-RPM-WG at icann.org>

https://urldefense.com/v3/__https://mm.icann.org/mailman/listinfo/gnso-rpm-wg__;!!DUT_TFPxUQ!W-ZFnH0pVPg4CaG4tidigLYGE3YzMBKDOeIZGpLQ12_cW2L_Ht0fTeKpJC1dpUAiaPU$<https://urldefense.com/v3/__https:/mm.icann.org/mailman/listinfo/gnso-rpm-wg__;!!DUT_TFPxUQ!W-ZFnH0pVPg4CaG4tidigLYGE3YzMBKDOeIZGpLQ12_cW2L_Ht0fTeKpJC1dpUAiaPU$>

_______________________________________________

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://urldefense.com/v3/__https://www.icann.org/privacy/policy__;!!DUT_TFPxUQ!W-ZFnH0pVPg4CaG4tidigLYGE3YzMBKDOeIZGpLQ12_cW2L_Ht0fTeKpJC1dPaTZliY$<https://urldefense.com/v3/__https:/www.icann.org/privacy/policy__;!!DUT_TFPxUQ!W-ZFnH0pVPg4CaG4tidigLYGE3YzMBKDOeIZGpLQ12_cW2L_Ht0fTeKpJC1dPaTZliY$> ) and the website Terms of Service (https://urldefense.com/v3/__https://www.icann.org/privacy/tos__;!!DUT_TFPxUQ!W-ZFnH0pVPg4CaG4tidigLYGE3YzMBKDOeIZGpLQ12_cW2L_Ht0fTeKpJC1dvvUNlBM$<https://urldefense.com/v3/__https:/www.icann.org/privacy/tos__;!!DUT_TFPxUQ!W-ZFnH0pVPg4CaG4tidigLYGE3YzMBKDOeIZGpLQ12_cW2L_Ht0fTeKpJC1dvvUNlBM$> ). 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.

_______________________________________________

GNSO-RPM-WG mailing list

GNSO-RPM-WG at icann.org<mailto:GNSO-RPM-WG at icann.org>

https://urldefense.com/v3/__https://mm.icann.org/mailman/listinfo/gnso-rpm-wg__;!!DUT_TFPxUQ!W-ZFnH0pVPg4CaG4tidigLYGE3YzMBKDOeIZGpLQ12_cW2L_Ht0fTeKpJC1dpUAiaPU$<https://urldefense.com/v3/__https:/mm.icann.org/mailman/listinfo/gnso-rpm-wg__;!!DUT_TFPxUQ!W-ZFnH0pVPg4CaG4tidigLYGE3YzMBKDOeIZGpLQ12_cW2L_Ht0fTeKpJC1dpUAiaPU$>

_______________________________________________

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://urldefense.com/v3/__https://www.icann.org/privacy/policy__;!!DUT_TFPxUQ!W-ZFnH0pVPg4CaG4tidigLYGE3YzMBKDOeIZGpLQ12_cW2L_Ht0fTeKpJC1dPaTZliY$<https://urldefense.com/v3/__https:/www.icann.org/privacy/policy__;!!DUT_TFPxUQ!W-ZFnH0pVPg4CaG4tidigLYGE3YzMBKDOeIZGpLQ12_cW2L_Ht0fTeKpJC1dPaTZliY$> ) and the website Terms of Service (https://urldefense.com/v3/__https://www.icann.org/privacy/tos__;!!DUT_TFPxUQ!W-ZFnH0pVPg4CaG4tidigLYGE3YzMBKDOeIZGpLQ12_cW2L_Ht0fTeKpJC1dvvUNlBM$<https://urldefense.com/v3/__https:/www.icann.org/privacy/tos__;!!DUT_TFPxUQ!W-ZFnH0pVPg4CaG4tidigLYGE3YzMBKDOeIZGpLQ12_cW2L_Ht0fTeKpJC1dvvUNlBM$> ). 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.

_____

If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster at gtlaw.com<mailto:postmaster at gtlaw.com>, and do not use or disseminate the information.

_______________________________________________
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<https://secure-web.cisco.com/1QJkhKDYCvM447dv3AW9EL8KQ6W7ciX-ACiPxIKTQzVXOxkAXAcl8lO1SUgSJALwYz0taPIINIhnIz62OiNVgLPlFUAsjd3NuLAcivKCnpUCc0EYtNCgcogje1bO6zRSmimreFXrNI1Khf_ND2C_hTxOv6fIDG33vXUS8rmbHK2NbJFI7oCzEYc8TSRBEr8G3XEXzDUKydjG1BOL7wPjt2vH9ZV2DwRXaDkhmuzaiMvO_3SGfxEXFXlbXusqBv4engcuVuXGGW6UWbfdYoygRSA/https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-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<https://secure-web.cisco.com/1mFW3321Yvb8xzhyyFi2IKRmDpRxBGdmGpn6CoOZbMDIpNqOBFsTl_ULFWmsipCDOHLT7wRns1-_WvLEUjvk191mUkNSiFnVsFazrOCvEMTaMOUwOiR9etoWgOCD9c2czxgxujnGRDkrklkA2PHBBhAmqVd3J5XjELq0y8TI3m_XoY4N2PUVomAmSM16rAVDjhjyzxMVFNIDdcDvxi0uKkMKCtqfIyofVLE14VVaA125ttP9XclCGzDhdVBMKegk0JF6nuAl0Gd2zEax0tdssDA/https%3A%2F%2Fwww.icann.org%2Fprivacy%2Fpolicy>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://secure-web.cisco.com/1pf2295RwekMq38Q3v9bp4d1-1-czXrIyFs95axOOlW2Kdu_mPX8JzyqUv7oo9WwxLhGv_FFawaMMS6NO4fWHrFzIrshzFEdW1IDCbusBdQyfVJsu5a5kDlZ_IjHV7dxxfs3yQ_m7ep8eVBG1arguM1kK8lNdgrDWKCGLHwNT_BVv16XbojlKaL8q6vHKBr-qaLTIvHYpJSjNVYtTAY_xrtGdm6BLC1Gl7wN1cilj9cp-prcNonN1Z6gXSsSM20BgrRAU9cx_XwWf6Nr_JZPFtQ/https%3A%2F%2Fwww.icann.org%2Fprivacy%2Ftos>). 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.
[The cover image of the 2020 GII features an icon in the shape of a female scientist, superimposed on a banknote motif, representing innovation finance. Global Innovation Index 2020. Who will finance innovation? Launch September 2 www.wipo.int/gii<http://secure-web.cisco.com/1wwKxX4xbLKYKG3yMDfHl2iIMTpu7QoMV5b2IWNuCbAJihB7oaytWU__nkdBBogjO_Hj41-pl4VkJSCiWVZtowEiJN8RYLr80RG-DrtBZiiyjkm-Ex-L0SVAF5OZnIVavN0cQl-3PyknxLcBQVnFFg-KJMovFrF0KXPy4chjuIzg6XfGu31E6i5aC0QwqPI_C7lLt6ofsxsUFU4rC75xKpNj5mPQyVMg7RqfGhQhWMwvcZQ4oH61kP8BEiJ8XJs3PAx0AdqubnNrT1nRoBgvlOw/http%3A%2F%2Fwww.wipo.int%2Fgii> hashtagGII2020] <http://www.wipo.int/gii/?utm_source=wipomail&utm_medium=signature&utm_campaign=gii2020<http://secure-web.cisco.com/1YQNiNMaNwm0RH5LoS4l81w77Gw-_Jxw642hfLrqtdyn79RuWOFIB1sBTqLPbikaJ1VEl_9Z886Q_ko6Yqj2oazdpSI0kYWjDeRvBhb6-9tYTynDC4EpUYFJLQQxUdZDh182uDYInkla6X2Vg2DGDY8vcjZiHI3-oSW1F3MYS6O-kBLiS6PPLc59UiG4jrDrNd5gYYEyvmJmDwautqr8ew4xN3y_rM0Y-cS2A8dLBub7kRzMUK4qtBjmWm3pxc0Psrl2GISmuFf93MnGh8B0G-g/http%3A%2F%2Fwww.wipo.int%2Fgii%2F%3Futm_source%3Dwipomail%26utm_medium%3Dsignature%26utm_campaign%3Dgii2020>>

World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
_______________________________________________
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<https://secure-web.cisco.com/1QJkhKDYCvM447dv3AW9EL8KQ6W7ciX-ACiPxIKTQzVXOxkAXAcl8lO1SUgSJALwYz0taPIINIhnIz62OiNVgLPlFUAsjd3NuLAcivKCnpUCc0EYtNCgcogje1bO6zRSmimreFXrNI1Khf_ND2C_hTxOv6fIDG33vXUS8rmbHK2NbJFI7oCzEYc8TSRBEr8G3XEXzDUKydjG1BOL7wPjt2vH9ZV2DwRXaDkhmuzaiMvO_3SGfxEXFXlbXusqBv4engcuVuXGGW6UWbfdYoygRSA/https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-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<https://secure-web.cisco.com/1mFW3321Yvb8xzhyyFi2IKRmDpRxBGdmGpn6CoOZbMDIpNqOBFsTl_ULFWmsipCDOHLT7wRns1-_WvLEUjvk191mUkNSiFnVsFazrOCvEMTaMOUwOiR9etoWgOCD9c2czxgxujnGRDkrklkA2PHBBhAmqVd3J5XjELq0y8TI3m_XoY4N2PUVomAmSM16rAVDjhjyzxMVFNIDdcDvxi0uKkMKCtqfIyofVLE14VVaA125ttP9XclCGzDhdVBMKegk0JF6nuAl0Gd2zEax0tdssDA/https%3A%2F%2Fwww.icann.org%2Fprivacy%2Fpolicy>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://secure-web.cisco.com/1pf2295RwekMq38Q3v9bp4d1-1-czXrIyFs95axOOlW2Kdu_mPX8JzyqUv7oo9WwxLhGv_FFawaMMS6NO4fWHrFzIrshzFEdW1IDCbusBdQyfVJsu5a5kDlZ_IjHV7dxxfs3yQ_m7ep8eVBG1arguM1kK8lNdgrDWKCGLHwNT_BVv16XbojlKaL8q6vHKBr-qaLTIvHYpJSjNVYtTAY_xrtGdm6BLC1Gl7wN1cilj9cp-prcNonN1Z6gXSsSM20BgrRAU9cx_XwWf6Nr_JZPFtQ/https%3A%2F%2Fwww.icann.org%2Fprivacy%2Ftos>). 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.
_______________________________________________
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<https://secure-web.cisco.com/1QJkhKDYCvM447dv3AW9EL8KQ6W7ciX-ACiPxIKTQzVXOxkAXAcl8lO1SUgSJALwYz0taPIINIhnIz62OiNVgLPlFUAsjd3NuLAcivKCnpUCc0EYtNCgcogje1bO6zRSmimreFXrNI1Khf_ND2C_hTxOv6fIDG33vXUS8rmbHK2NbJFI7oCzEYc8TSRBEr8G3XEXzDUKydjG1BOL7wPjt2vH9ZV2DwRXaDkhmuzaiMvO_3SGfxEXFXlbXusqBv4engcuVuXGGW6UWbfdYoygRSA/https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-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<https://secure-web.cisco.com/1mFW3321Yvb8xzhyyFi2IKRmDpRxBGdmGpn6CoOZbMDIpNqOBFsTl_ULFWmsipCDOHLT7wRns1-_WvLEUjvk191mUkNSiFnVsFazrOCvEMTaMOUwOiR9etoWgOCD9c2czxgxujnGRDkrklkA2PHBBhAmqVd3J5XjELq0y8TI3m_XoY4N2PUVomAmSM16rAVDjhjyzxMVFNIDdcDvxi0uKkMKCtqfIyofVLE14VVaA125ttP9XclCGzDhdVBMKegk0JF6nuAl0Gd2zEax0tdssDA/https%3A%2F%2Fwww.icann.org%2Fprivacy%2Fpolicy>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://secure-web.cisco.com/1pf2295RwekMq38Q3v9bp4d1-1-czXrIyFs95axOOlW2Kdu_mPX8JzyqUv7oo9WwxLhGv_FFawaMMS6NO4fWHrFzIrshzFEdW1IDCbusBdQyfVJsu5a5kDlZ_IjHV7dxxfs3yQ_m7ep8eVBG1arguM1kK8lNdgrDWKCGLHwNT_BVv16XbojlKaL8q6vHKBr-qaLTIvHYpJSjNVYtTAY_xrtGdm6BLC1Gl7wN1cilj9cp-prcNonN1Z6gXSsSM20BgrRAU9cx_XwWf6Nr_JZPFtQ/https%3A%2F%2Fwww.icann.org%2Fprivacy%2Ftos>). 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.

This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. Any tax advice provided by VLP is for your use only and cannot be used to avoid tax penalties or for promotional or marketing purposes.

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20200902/714d3a17/attachment-0001.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 11048 bytes
Desc: image001.png
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20200902/714d3a17/image001-0001.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image002.jpg
Type: image/jpeg
Size: 1121 bytes
Desc: image002.jpg
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20200902/714d3a17/image002-0001.jpg>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image003.jpg
Type: image/jpeg
Size: 1901 bytes
Desc: image003.jpg
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20200902/714d3a17/image003-0001.jpg>