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@freundandbrackey.com] Sent: Tuesday, August 23, 2016 11:10 AM To: Paul McGrady <policy@paulmcgrady.com> Cc: Phil Corwin <psc@vlaw-dc.com>; Mary Wong <mary.wong@icann.org>; Jeff Neuman <jeff.neuman@comlaude.com>; gnso-rpm-wg@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@freundandbrackey.com <mailto:tbrackey@freundandbrackey.com> On Aug 23, 2016, at 8:48 AM, Paul McGrady <policy@paulmcgrady.com <mailto:policy@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@freundandbrackey.com] Sent: Tuesday, August 23, 2016 10:32 AM To: Paul McGrady <policy@paulmcgrady.com <mailto:policy@paulmcgrady.com> > Cc: Phil Corwin <psc@vlaw-dc.com <mailto:psc@vlaw-dc.com> >; Mary Wong <mary.wong@icann.org <mailto:mary.wong@icann.org> >; Jeff Neuman <jeff.neuman@comlaude.com <mailto:jeff.neuman@comlaude.com> >; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@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@freundandbrackey.com> tbrackey@freundandbrackey.com On Aug 23, 2016, at 8:11 AM, Paul McGrady < <mailto:policy@paulmcgrady.com> policy@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@paulmcgrady.com> policy@paulmcgrady.com From: <mailto:gnso-rpm-wg-bounces@icann.org> gnso-rpm-wg-bounces@icann.org [ <mailto:gnso-rpm-wg-bounces@icann.org> mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Tuesday, August 23, 2016 9:40 AM To: Mary Wong < <mailto:mary.wong@icann.org> mary.wong@icann.org>; Jeff Neuman < <mailto:jeff.neuman@comlaude.com> jeff.neuman@comlaude.com> Cc: <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg@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@icann.org> gnso-rpm-wg-bounces@icann.org [ <mailto:gnso-rpm-wg-bounces@icann.org> mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, August 22, 2016 9:44 PM To: Jeff Neuman Cc: <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg@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@comlaude.com> jeff.neuman@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@valideus.com> jeff.neuman@valideus.com or <mailto:jeff.neuman@comlaude.com> jeff.neuman@comlaude.com T: +1.703.635.7514 M: +1.202.549.5079 @Jintlaw _______________________________________________ gnso-rpm-wg mailing list <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg@icann.org <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _____ No virus found in this message. 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