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
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<https://www.taftlaw.com/general/subscribe>. For additional resources, visit Taft's COVID-19 Resource Toolkit<https://www.taftlaw.com/general/coronavirus-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@icann.org> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 12:42 PM To: gnso-rpm-wg@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@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.
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@taftlaw.com> Sent: Tuesday, September 01, 2020 2:00 PM To: Corwin, Philip <pcorwin@verisign.com>; gnso-rpm-wg@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@icann.org> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 12:42 PM To: gnso-rpm-wg@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@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.
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. 1. " 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". 1. " 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. 1. "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"? 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@gtlaw.com | www.gtlaw.com -----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 2:35 PM To: PMcGrady@taftlaw.com; gnso-rpm-wg@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@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Tuesday, September 01, 2020 2:00 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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 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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 12:42 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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. 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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@gtlaw.com <trachtenbergm@gtlaw.com> Sent: Tuesday, September 01, 2020 5:21 PM To: Corwin, Philip <pcorwin@verisign.com>; PMcGrady@taftlaw.com Cc: gnso-rpm-wg@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 addressing), 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 examiner given 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@gtlaw.com | www.gtlaw.com -----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 2:35 PM To: PMcGrady@taftlaw.com; gnso-rpm-wg@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@taftlaw.com> Sent: Tuesday, September 01, 2020 2:00 PM To: Corwin, Philip <pcorwin@verisign.com>; gnso-rpm-wg@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 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@icann.org> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 12:42 PM To: gnso-rpm-wg@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@icann.org https://urldefense.com/v3/__https://mm.icann.org/mailman/listinfo/gnso-rpm-w... _______________________________________________ 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_TFP... ) and the website Terms of Service (https://urldefense.com/v3/__https://www.icann.org/privacy/tos__;!!DUT_TFPxUQ... ). 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Thanks Phil. Without going into much more detail, it appears that you may be, respectfully, missing the point of the proposed change which is to deal with registries who may be trying to circumvent the Sunrise RPM. So, the comments about second level infringement do not appear to be on point. As for dealing with the language concern you raise, although I don't think it is a concern, I think Marc's formulation of "offers for sale or otherwise makes available for registration" certainly is all encompassing enough. While I think the average Examiner will not buy the argument that registries aren't selling domain names (akin to claiming that Amway isn't selling product since you have to buy through one of their independent sales reps), Marc's language assuredly casts a very broad net, so we will include it in the next draft. Thanks! Best, Paul -----Original Message----- From: Corwin, Philip <pcorwin@verisign.com> Sent: Tuesday, September 1, 2020 6:31 PM To: trachtenbergm@gtlaw.com; McGrady, Paul D. <PMcGrady@taftlaw.com> Cc: gnso-rpm-wg@icann.org Subject: RE: 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@gtlaw.com <trachtenbergm@gtlaw.com> Sent: Tuesday, September 01, 2020 5:21 PM To: Corwin, Philip <pcorwin@verisign.com>; PMcGrady@taftlaw.com Cc: gnso-rpm-wg@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 addressing), 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 examiner given 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@gtlaw.com | www.gtlaw.com -----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 2:35 PM To: PMcGrady@taftlaw.com; gnso-rpm-wg@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@taftlaw.com> Sent: Tuesday, September 01, 2020 2:00 PM To: Corwin, Philip <pcorwin@verisign.com>; gnso-rpm-wg@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 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@icann.org> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 12:42 PM To: gnso-rpm-wg@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. 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Paul: Continuing in a personal capacity (to be clear, these and my prior emails are solely personal views and not official positions of Verisign) - INTRODUCTION Thank you, Paul, for leading this effort and for responding to emails from me and others. However, I remain unconvinced that the proposed amendment is required to accomplish its proponents' aims, and continue to have substantial concerns about some of the language of the proposed amendment. For the record, below you will find a detailed discussion of those concerns, as well as some specific modifying proposals. TYPES OF CIRCUMVENTION BEING TARGETED Thank you for clarifying that "the point of the proposed change...is to deal with registries who may be trying to circumvent the Sunrise RPM". From what I recall from WG discussions, trademark holders feel that circumvention occurs due to exorbitant pricing of premium names, or by placing DNs corresponding to valuable marks on their reserved list (but if there are other perceived means of circumvention you are seeking to target, please clarify that point). "SYSTEMATIC OFFERING FOR SALE" I continue to be concerned that this proposed phrase inaccurately describes the general B2B business model of registries, which is to enter into contracts for the provision of registry services with registrars, who are the B2C parties that offer registrants the ability to register domain names of their choosing. I have previously discussed this matter, as well as observed that registries do not warehouse inventories of domains (such "inventory" in both undefined and infinite); and that the designation of certain combinations of certain letters and numbers as "premium" is not an "offering" but a pricing. As you concede in your email, "Marc's language assuredly casts a very broad net"; in my view it is too broad and imprecise. If the focus is intended to be certain pricing and reserve name decisions, and direct registry sales activities, that should be spelled out with more accuracy and precision. While I do not have substitute language to suggest at this time, this clearly is an area that would benefit from community review and comment. STANDING TO BRING A PDDRP CLAIM As I noted in a prior email, Section 5.1 of Section 5 [Standing] of the PDDRP states: "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." Clearly, to have standing the complainant must allege infringement of one or more of its marks. While in no way condoning the types of direct registry sales practices that Marc described in a prior email - and of which I was previously unaware - and while such practices might well be described as unsavory or with other words of condemnation, I hope that we can agree that the circumvention of the Sunrise registration RPM by a registry does not in and of itself constitute infringement, and does not necessarily lead to infringement. The DN that is spurned by a mark holder due to pricing, or unavailable due to its placement on a reserve list, may remain unregistered. Or the DN may be sold to another party who makes legitimate non-infringing use of it, regardless of whether they are or are not a rights holder. Subsequent infringement is not the inevitable result of Sunrise circumvention. It would also be contradictory to regard a TMCH recorded term that has been priced at a "reasonable" premium level as complying with the sunrise RPM, while regarding its offering for sale at what is perceived to be an "unreasonable" price as not just effective circumvention but also infringement; especially since judgments about the reasonableness of a premium price are largely subjective. Your proposed draft seems to recognize this with the phrase "significantly higher prices without "something more" (I will address the term "something more" in greater detail below). In certain circumstances, there may be fact scenarios, involving the subsequent registration of a domain where the sunrise registration right is perceived to have been circumvented, indicating that the "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 already". That is already actionable under the PDDRP. While such infringement may result from the frustration of the exercise of the sunrise registration right, it is a separate act; and, as I just noted, infringement is not the inevitable result of that circumvention. The practice of setting what may be perceived as excessively high premium prices could constitute one element of evidence of a pattern and practice laying the groundwork for subsequent infringing registrations, but does not seem actionable in and of itself under the current PDDRP. But a subsequent practice of "actively and systematically encouraging other parties to register the DN to take unfair advantage of the trademark" is already actionable and does not require any amendment to be so, or to have evidence supporting the allegation of such pattern and practice considered. At this point I would note that the WG's likely Final Report recommendation that unrelated rights holders may file a joint PDDRP action against a registry operator will make it substantially easier to establish a pattern and practice of specific bad faith intent, because the examiner can be made aware of facts and circumstances involving more than one complainant. "SOMETHING MORE" The inclusion of this phrase as a modifier for "significantly higher prices" would seem to indicate that the small group does not intend "excessive" premium pricing, in and of itself, to constitute infringement. Intentional circumvention of Sunrise rights by a registry operator may be a violation of a registry agreement, but that is a compliance matter. While it may sometimes be a predicate to subsequent infringement, it is not infringement without "something more" - and that something more, and the ability to present the alleged circumvention as evidence of a pattern or practice, already seems covered and permitted by the current language of the PDDRP. However, one portion of the draft proposes that listing an otherwise generic name at a significantly higher price when it is "specifically targeted based on the TLD term" does seem to take the position that a pricing decision in and of itself, and absent subsequent infringement through the registration of that domain name by a party other than the rights holder, can be that basis for bringing a PDDRP. I believe that phrase is a serious overstep and urge its removal. Proponents of the proposed amendment must be aware that ICANN's "picket fence" prohibits any consensus policy from prescribing or limiting the pricing of registry services, yet the referenced phrase appears to do just that and characterizes a stand-alone pricing decision as equivalent to the infringement required to establish standing. Finally, the phrase "something more" is just too indeterminate to provide effective guidance to a PDDRP examiner. I would suggest that we strike it and bring it into accord with the Standing requirements of Section 5 as follows - "higher prices without additional evidence that the registry operator's manner of operation or use of the gTLD infringed one or more of the complainant's marks". CONCLUSION I remain unconvinced that the proposed amendment is necessary to accomplish its purported aims. As discussed above, I believe that the current language of the PDDRP is sufficient, and will be bolstered by our likely recommendation to permit joint claims from unrelated parties. I hope that these personal observations are helpful in focusing our discussion of this matter today, and look forward to the dialogue. 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@taftlaw.com> Sent: Tuesday, September 01, 2020 8:19 PM To: Corwin, Philip <pcorwin@verisign.com>; trachtenbergm@gtlaw.com Cc: gnso-rpm-wg@icann.org Subject: [EXTERNAL] RE: Question re: TM-PDDRP Draft from Small Group Thanks Phil. Without going into much more detail, it appears that you may be, respectfully, missing the point of the proposed change which is to deal with registries who may be trying to circumvent the Sunrise RPM. So, the comments about second level infringement do not appear to be on point. As for dealing with the language concern you raise, although I don't think it is a concern, I think Marc's formulation of "offers for sale or otherwise makes available for registration" certainly is all encompassing enough. While I think the average Examiner will not buy the argument that registries aren't selling domain names (akin to claiming that Amway isn't selling product since you have to buy through one of their independent sales reps), Marc's language assuredly casts a very broad net, so we will include it in the next draft. Thanks! Best, Paul -----Original Message----- From: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> Sent: Tuesday, September 1, 2020 6:31 PM To: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: 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@gtlaw.com<mailto:trachtenbergm@gtlaw.com> <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Sent: Tuesday, September 01, 2020 5:21 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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 addressing), 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 examiner given 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@gtlaw.com<mailto:trac@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com> -----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 2:35 PM To: PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Tuesday, September 01, 2020 2:00 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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 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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 12:42 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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. 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Thanks Phil: Since I only have a few minutes left before the call, I will do my best to address your points in line. Paul: Continuing in a personal capacity (to be clear, these and my prior emails are solely personal views and not official positions of Verisign) - INTRODUCTION Thank you, Paul, for leading this effort and for responding to emails from me and others. However, I remain unconvinced that the proposed amendment is required to accomplish its proponents' aims, and continue to have substantial concerns about some of the language of the proposed amendment. For the record, below you will find a detailed discussion of those concerns, as well as some specific modifying proposals. TYPES OF CIRCUMVENTION BEING TARGETED Thank you for clarifying that "the point of the proposed change...is to deal with registries who may be trying to circumvent the Sunrise RPM". From what I recall from WG discussions, trademark holders feel that circumvention occurs due to exorbitant pricing of premium names, or by placing DNs corresponding to valuable marks on their reserved list (but if there are other perceived means of circumvention you are seeking to target, please clarify that point). Those are some examples, but they are not exhaustive. For example, a registry could insist that in order to get a Sunrise registration a famous brand would have to use the second level domain name in a prescribed manner and allow the registry to use that famous brand's mark on its website to promote the registry. These are both economic terms that have nothing to do with pricing. "SYSTEMATIC OFFERING FOR SALE" I continue to be concerned that this proposed phrase inaccurately describes the general B2B business model of registries, which is to enter into contracts for the provision of registry services with registrars, who are the B2C parties that offer registrants the ability to register domain names of their choosing. I have previously discussed this matter, as well as observed that registries do not warehouse inventories of domains (such "inventory" in both undefined and infinite); and that the designation of certain combinations of certain letters and numbers as "premium" is not an "offering" but a pricing. As you concede in your email, "Marc's language assuredly casts a very broad net"; in my view it is too broad and imprecise. If the focus is intended to be certain pricing and reserve name decisions, and direct registry sales activities, that should be spelled out with more accuracy and precision. While I do not have substitute language to suggest at this time, this clearly is an area that would benefit from community review and comment. Thanks Phil. Respectfully, if the only reason to put this out to comment is a philosophical discussion about whether or not registries sell domain names, that seems like a complete waste of time. Mary Kay sells cosmetics, even if they are through independent distributors. This seems like straw-grasping to me. STANDING TO BRING A PDDRP CLAIM As I noted in a prior email, Section 5.1 of Section 5 [Standing] of the PDDRP states: "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." Clearly, to have standing the complainant must allege infringement of one or more of its marks. While in no way condoning the types of direct registry sales practices that Marc described in a prior email - and of which I was previously unaware - and while such practices might well be described as unsavory or with other words of condemnation, I hope that we can agree that the circumvention of the Sunrise registration RPM by a registry does not in and of itself constitute infringement, and does not necessarily lead to infringement. The DN that is spurned by a mark holder due to pricing, or unavailable due to its placement on a reserve list, may remain unregistered. Or the DN may be sold to another party who makes legitimate non-infringing use of it, regardless of whether they are or are not a rights holder. Subsequent infringement is not the inevitable result of Sunrise circumvention. As mentioned above, there are more bad actions that could be taken beyond mere pricing. Additionally, the word "infringement" isn't tied to any particular statutory framework, so I believe you may be reading the Lanham Act into the TM-PDDRP and ending up with a narrow result. Better to take a definition of infringement from the dictionary "the action of limiting or undermining something". Certainly holding a trademark owner up for big bucks during Sunrise limits the registration of the mark in the Sunrise domain name and undermines the value of the mark by weaponizing it against the owner. It would also be contradictory to regard a TMCH recorded term that has been priced at a "reasonable" premium level as complying with the sunrise RPM, while regarding its offering for sale at what is perceived to be an "unreasonable" price as not just effective circumvention but also infringement; especially since judgments about the reasonableness of a premium price are largely subjective. Your proposed draft seems to recognize this with the phrase "significantly higher prices without "something more" (I will address the term "something more" in greater detail below). I'm not sure what you are getting at here. In certain circumstances, there may be fact scenarios, involving the subsequent registration of a domain where the sunrise registration right is perceived to have been circumvented, indicating that the "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 already". That is already actionable under the PDDRP. I'm not sure how saying some things are already actionable would preclude us from clarifying that yet other things are actionable too. While such infringement may result from the frustration of the exercise of the sunrise registration right, it is a separate act; and, as I just noted, infringement is not the inevitable result of that circumvention. The practice of setting what may be perceived as excessively high premium prices could constitute one element of evidence of a pattern and practice laying the groundwork for subsequent infringing registrations, but does not seem actionable in and of itself under the current PDDRP. But a subsequent practice of "actively and systematically encouraging other parties to register the DN to take unfair advantage of the trademark" is already actionable and does not require any amendment to be so, or to have evidence supporting the allegation of such pattern and practice considered. See comments above on the definition of infringement. At this point I would note that the WG's likely Final Report recommendation that unrelated rights holders may file a joint PDDRP action against a registry operator will make it substantially easier to establish a pattern and practice of specific bad faith intent, because the examiner can be made aware of facts and circumstances involving more than one complainant. I have no beef with that, but it isn't on point. "SOMETHING MORE" The inclusion of this phrase as a modifier for "significantly higher prices" would seem to indicate that the small group does not intend "excessive" premium pricing, in and of itself, to constitute infringement. Intentional circumvention of Sunrise rights by a registry operator may be a violation of a registry agreement, but that is a compliance matter. While it may sometimes be a predicate to subsequent infringement, it is not infringement without "something more" - and that something more, and the ability to present the alleged circumvention as evidence of a pattern or practice, already seems covered and permitted by the current language of the PDDRP. However, one portion of the draft proposes that listing an otherwise generic name at a significantly higher price when it is "specifically targeted based on the TLD term" does seem to take the position that a pricing decision in and of itself, and absent subsequent infringement through the registration of that domain name by a party other than the rights holder, can be that basis for bringing a PDDRP. I believe that phrase is a serious overstep and urge its removal. Proponents of the proposed amendment must be aware that ICANN's "picket fence" prohibits any consensus policy from prescribing or limiting the pricing of registry services, yet the referenced phrase appears to do just that and characterizes a stand-alone pricing decision as equivalent to the infringement required to establish standing. It is an example Phil not a pricing prescription. Further, it is an example that is helpful to registries as it illustrates what that "something more" might look like. We aren't anywhere near the famous "picket fence" here. Finally, the phrase "something more" is just too indeterminate to provide effective guidance to a PDDRP examiner. I would suggest that we strike it and bring it into accord with the Standing requirements of Section 5 as follows - "higher prices without additional evidence that the registry operator's manner of operation or use of the gTLD infringed one or more of the complainant's marks". Doesn't quite get us there since operation and use comes after registration while Sunrise abuses come before. CONCLUSION I remain unconvinced that the proposed amendment is necessary to accomplish its purported aims. As discussed above, I believe that the current language of the PDDRP is sufficient, and will be bolstered by our likely recommendation to permit joint claims from unrelated parties. I hope that these personal observations are helpful in focusing our discussion of this matter today, and look forward to the dialogue. Best, Philip From: Corwin, Philip <pcorwin@verisign.com> Sent: Thursday, September 3, 2020 10:52 AM To: McGrady, Paul D. <PMcGrady@taftlaw.com>; trachtenbergm@gtlaw.com Cc: gnso-rpm-wg@icann.org Subject: RE: Question re: TM-PDDRP Draft from Small Group Paul: Continuing in a personal capacity (to be clear, these and my prior emails are solely personal views and not official positions of Verisign) - INTRODUCTION Thank you, Paul, for leading this effort and for responding to emails from me and others. However, I remain unconvinced that the proposed amendment is required to accomplish its proponents' aims, and continue to have substantial concerns about some of the language of the proposed amendment. For the record, below you will find a detailed discussion of those concerns, as well as some specific modifying proposals. TYPES OF CIRCUMVENTION BEING TARGETED Thank you for clarifying that "the point of the proposed change...is to deal with registries who may be trying to circumvent the Sunrise RPM". From what I recall from WG discussions, trademark holders feel that circumvention occurs due to exorbitant pricing of premium names, or by placing DNs corresponding to valuable marks on their reserved list (but if there are other perceived means of circumvention you are seeking to target, please clarify that point). "SYSTEMATIC OFFERING FOR SALE" I continue to be concerned that this proposed phrase inaccurately describes the general B2B business model of registries, which is to enter into contracts for the provision of registry services with registrars, who are the B2C parties that offer registrants the ability to register domain names of their choosing. I have previously discussed this matter, as well as observed that registries do not warehouse inventories of domains (such "inventory" in both undefined and infinite); and that the designation of certain combinations of certain letters and numbers as "premium" is not an "offering" but a pricing. As you concede in your email, "Marc's language assuredly casts a very broad net"; in my view it is too broad and imprecise. If the focus is intended to be certain pricing and reserve name decisions, and direct registry sales activities, that should be spelled out with more accuracy and precision. While I do not have substitute language to suggest at this time, this clearly is an area that would benefit from community review and comment. STANDING TO BRING A PDDRP CLAIM As I noted in a prior email, Section 5.1 of Section 5 [Standing] of the PDDRP states: "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." Clearly, to have standing the complainant must allege infringement of one or more of its marks. While in no way condoning the types of direct registry sales practices that Marc described in a prior email - and of which I was previously unaware - and while such practices might well be described as unsavory or with other words of condemnation, I hope that we can agree that the circumvention of the Sunrise registration RPM by a registry does not in and of itself constitute infringement, and does not necessarily lead to infringement. The DN that is spurned by a mark holder due to pricing, or unavailable due to its placement on a reserve list, may remain unregistered. Or the DN may be sold to another party who makes legitimate non-infringing use of it, regardless of whether they are or are not a rights holder. Subsequent infringement is not the inevitable result of Sunrise circumvention. It would also be contradictory to regard a TMCH recorded term that has been priced at a "reasonable" premium level as complying with the sunrise RPM, while regarding its offering for sale at what is perceived to be an "unreasonable" price as not just effective circumvention but also infringement; especially since judgments about the reasonableness of a premium price are largely subjective. Your proposed draft seems to recognize this with the phrase "significantly higher prices without "something more" (I will address the term "something more" in greater detail below). In certain circumstances, there may be fact scenarios, involving the subsequent registration of a domain where the sunrise registration right is perceived to have been circumvented, indicating that the "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 already". That is already actionable under the PDDRP. While such infringement may result from the frustration of the exercise of the sunrise registration right, it is a separate act; and, as I just noted, infringement is not the inevitable result of that circumvention. The practice of setting what may be perceived as excessively high premium prices could constitute one element of evidence of a pattern and practice laying the groundwork for subsequent infringing registrations, but does not seem actionable in and of itself under the current PDDRP. But a subsequent practice of "actively and systematically encouraging other parties to register the DN to take unfair advantage of the trademark" is already actionable and does not require any amendment to be so, or to have evidence supporting the allegation of such pattern and practice considered. At this point I would note that the WG's likely Final Report recommendation that unrelated rights holders may file a joint PDDRP action against a registry operator will make it substantially easier to establish a pattern and practice of specific bad faith intent, because the examiner can be made aware of facts and circumstances involving more than one complainant. "SOMETHING MORE" The inclusion of this phrase as a modifier for "significantly higher prices" would seem to indicate that the small group does not intend "excessive" premium pricing, in and of itself, to constitute infringement. Intentional circumvention of Sunrise rights by a registry operator may be a violation of a registry agreement, but that is a compliance matter. While it may sometimes be a predicate to subsequent infringement, it is not infringement without "something more" - and that something more, and the ability to present the alleged circumvention as evidence of a pattern or practice, already seems covered and permitted by the current language of the PDDRP. However, one portion of the draft proposes that listing an otherwise generic name at a significantly higher price when it is "specifically targeted based on the TLD term" does seem to take the position that a pricing decision in and of itself, and absent subsequent infringement through the registration of that domain name by a party other than the rights holder, can be that basis for bringing a PDDRP. I believe that phrase is a serious overstep and urge its removal. Proponents of the proposed amendment must be aware that ICANN's "picket fence" prohibits any consensus policy from prescribing or limiting the pricing of registry services, yet the referenced phrase appears to do just that and characterizes a stand-alone pricing decision as equivalent to the infringement required to establish standing. Finally, the phrase "something more" is just too indeterminate to provide effective guidance to a PDDRP examiner. I would suggest that we strike it and bring it into accord with the Standing requirements of Section 5 as follows - "higher prices without additional evidence that the registry operator's manner of operation or use of the gTLD infringed one or more of the complainant's marks". CONCLUSION I remain unconvinced that the proposed amendment is necessary to accomplish its purported aims. As discussed above, I believe that the current language of the PDDRP is sufficient, and will be bolstered by our likely recommendation to permit joint claims from unrelated parties. I hope that these personal observations are helpful in focusing our discussion of this matter today, and look forward to the dialogue. 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@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Tuesday, September 01, 2020 8:19 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [EXTERNAL] RE: Question re: TM-PDDRP Draft from Small Group Thanks Phil. Without going into much more detail, it appears that you may be, respectfully, missing the point of the proposed change which is to deal with registries who may be trying to circumvent the Sunrise RPM. So, the comments about second level infringement do not appear to be on point. As for dealing with the language concern you raise, although I don't think it is a concern, I think Marc's formulation of "offers for sale or otherwise makes available for registration" certainly is all encompassing enough. While I think the average Examiner will not buy the argument that registries aren't selling domain names (akin to claiming that Amway isn't selling product since you have to buy through one of their independent sales reps), Marc's language assuredly casts a very broad net, so we will include it in the next draft. Thanks! Best, Paul -----Original Message----- From: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> Sent: Tuesday, September 1, 2020 6:31 PM To: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: 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@gtlaw.com<mailto:trachtenbergm@gtlaw.com> <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Sent: Tuesday, September 01, 2020 5:21 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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 addressing), 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 examiner given 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@gtlaw.com<mailto:trac@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com> -----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 2:35 PM To: PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Tuesday, September 01, 2020 2:00 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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 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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 12:42 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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. 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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 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@icann.org> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Wednesday, September 2, 2020 1:31 AM To: trachtenbergm@gtlaw.com; PMcGrady@taftlaw.com Cc: gnso-rpm-wg@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@gtlaw.com <trachtenbergm@gtlaw.com> Sent: Tuesday, September 01, 2020 5:21 PM To: Corwin, Philip <pcorwin@verisign.com>; PMcGrady@taftlaw.com Cc: gnso-rpm-wg@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 addr 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 giv 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@gtlaw.com | www.gtlaw.com -----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 2:35 PM To: PMcGrady@taftlaw.com; gnso-rpm-wg@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@taftlaw.com> Sent: Tuesday, September 01, 2020 2:00 PM To: Corwin, Philip <pcorwin@verisign.com>; gnso-rpm-wg@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@icann.org> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 12:42 PM To: gnso-rpm-wg@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. 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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@jjnsolutions.com http://jjnsolutions.com -----Original Message----- From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of BECKHAM Brian Sent: Wednesday, September 2, 2020 4:42 AM To: Corwin, Philip <pcorwin@verisign.com>; trachtenbergm@gtlaw.com; PMcGrady@taftlaw.com; gnso-rpm-wg@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 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@icann.org> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Wednesday, September 2, 2020 1:31 AM To: trachtenbergm@gtlaw.com; PMcGrady@taftlaw.com Cc: gnso-rpm-wg@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@gtlaw.com <trachtenbergm@gtlaw.com> Sent: Tuesday, September 01, 2020 5:21 PM To: Corwin, Philip <pcorwin@verisign.com>; PMcGrady@taftlaw.com Cc: gnso-rpm-wg@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 giv 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@gtlaw.com | www.gtlaw.com -----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 2:35 PM To: PMcGrady@taftlaw.com; gnso-rpm-wg@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@taftlaw.com> Sent: Tuesday, September 01, 2020 2:00 PM To: Corwin, Philip <pcorwin@verisign.com>; gnso-rpm-wg@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@icann.org> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 12:42 PM To: gnso-rpm-wg@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. 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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<calendly.com/saustin2/15min> a 30-minute call<calendly.com/saustin2/30min> a 60-minute call<calendly.com/saustin2/60min> [cid:image001.png@01D68134.CB72A8E0][IntellectualPropertyLaw 100] [microbadge[1]] <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@VLPLawGroup.com<mailto:SAustin@VLPLawGroup.com> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Jeff Neuman Sent: Wednesday, September 2, 2020 11:50 AM To: BECKHAM Brian <brian.beckham@wipo.int>; Corwin, Philip <pcorwin@verisign.com>; trachtenbergm@gtlaw.com; PMcGrady@taftlaw.com; gnso-rpm-wg@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@jjnsolutions.com<mailto:jeff@jjnsolutions.com> http://jjnsolutions.com<http://jjnsolutions.com> -----Original Message----- From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of BECKHAM Brian Sent: Wednesday, September 2, 2020 4:42 AM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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://www.wipo.int/amc/en/docs/icann130309.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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Wednesday, September 2, 2020 1:31 AM To: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@gtlaw.com<mailto:trachtenbergm@gtlaw.com> <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Sent: Tuesday, September 01, 2020 5:21 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@gtlaw.com<mailto:trac@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com> -----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 2:35 PM To: PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Tuesday, September 01, 2020 2:00 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 12:42 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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. 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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@vlplawgroup.com> Sent: Wednesday, September 2, 2020 2:27 PM To: Jeff Neuman <jeff@jjnsolutions.com>; BECKHAM Brian <brian.beckham@wipo.int>; Corwin, Philip <pcorwin@verisign.com>; trachtenbergm@gtlaw.com; McGrady, Paul D. <PMcGrady@taftlaw.com>; gnso-rpm-wg@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<calendly.com/saustin2/15min> a 30-minute call<calendly.com/saustin2/30min> a 60-minute call<calendly.com/saustin2/60min> [cid:image001.png@01D6813C.C66818A0][IntellectualPropertyLaw 100] [microbadge[1]] <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@VLPLawGroup.com<mailto:SAustin@VLPLawGroup.com> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Jeff Neuman Sent: Wednesday, September 2, 2020 11:50 AM To: BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@jjnsolutions.com<mailto:jeff@jjnsolutions.com> http://jjnsolutions.com -----Original Message----- From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of BECKHAM Brian Sent: Wednesday, September 2, 2020 4:42 AM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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 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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Wednesday, September 2, 2020 1:31 AM To: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@gtlaw.com<mailto:trachtenbergm@gtlaw.com> <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Sent: Tuesday, September 01, 2020 5:21 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@gtlaw.com<mailto:trac@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com> -----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 2:35 PM To: PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Tuesday, September 01, 2020 2:00 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 12:42 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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. 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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@taftlaw.com> Sent: Wednesday, September 02, 2020 4:22 PM To: Scott Austin <saustin@vlplawgroup.com>; Jeff Neuman <jeff@jjnsolutions.com>; BECKHAM Brian <brian.beckham@wipo.int>; Corwin, Philip <pcorwin@verisign.com>; trachtenbergm@gtlaw.com; gnso-rpm-wg@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@vlplawgroup.com<mailto:saustin@vlplawgroup.com>> Sent: Wednesday, September 2, 2020 2:27 PM To: Jeff Neuman <jeff@jjnsolutions.com<mailto:jeff@jjnsolutions.com>>; BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@VLPLawGroup.com<mailto:SAustin@VLPLawGroup.com> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Jeff Neuman Sent: Wednesday, September 2, 2020 11:50 AM To: BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@jjnsolutions.com<mailto:jeff@jjnsolutions.com> http://jjnsolutions.com -----Original Message----- From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of BECKHAM Brian Sent: Wednesday, September 2, 2020 4:42 AM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Wednesday, September 2, 2020 1:31 AM To: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@gtlaw.com<mailto:trachtenbergm@gtlaw.com> <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Sent: Tuesday, September 01, 2020 5:21 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@gtlaw.com<mailto:trac@gtlaw.com> | www.gtlaw.com<http://secure-web.cisco.com/1VdTk8pk0M_-iCfxCgOnBd17BtnoAdOezcpZTBTE2X3u4bgy...> -----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 2:35 PM To: PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Tuesday, September 01, 2020 2:00 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 12:42 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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. 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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@verisign.com> Sent: Wednesday, September 2, 2020 4:02 PM To: McGrady, Paul D. <PMcGrady@taftlaw.com>; saustin@vlplawgroup.com; jeff@jjnsolutions.com; brian.beckham@wipo.int; trachtenbergm@gtlaw.com; gnso-rpm-wg@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@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Wednesday, September 02, 2020 4:22 PM To: Scott Austin <saustin@vlplawgroup.com<mailto:saustin@vlplawgroup.com>>; Jeff Neuman <jeff@jjnsolutions.com<mailto:jeff@jjnsolutions.com>>; BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@vlplawgroup.com<mailto:saustin@vlplawgroup.com>> Sent: Wednesday, September 2, 2020 2:27 PM To: Jeff Neuman <jeff@jjnsolutions.com<mailto:jeff@jjnsolutions.com>>; BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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<calendly.com/saustin2/15min> a 30-minute call<calendly.com/saustin2/30min> a 60-minute call<calendly.com/saustin2/60min> [cid:image001.png@01D68143.4AD7B1D0][IntellectualPropertyLaw 100] [microbadge[1]] <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@VLPLawGroup.com<mailto:SAustin@VLPLawGroup.com> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Jeff Neuman Sent: Wednesday, September 2, 2020 11:50 AM To: BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@jjnsolutions.com<mailto:jeff@jjnsolutions.com> http://jjnsolutions.com -----Original Message----- From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of BECKHAM Brian Sent: Wednesday, September 2, 2020 4:42 AM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Wednesday, September 2, 2020 1:31 AM To: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@gtlaw.com<mailto:trachtenbergm@gtlaw.com> <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Sent: Tuesday, September 01, 2020 5:21 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@gtlaw.com<mailto:trac@gtlaw.com> | www.gtlaw.com<http://secure-web.cisco.com/1VdTk8pk0M_-iCfxCgOnBd17BtnoAdOezcpZTBTE2X3u4bgy...> -----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 2:35 PM To: PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Tuesday, September 01, 2020 2:00 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 12:42 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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. 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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@taftlaw.com> Sent: Wednesday, September 02, 2020 5:09 PM To: Corwin, Philip <pcorwin@verisign.com>; saustin@vlplawgroup.com; jeff@jjnsolutions.com; brian.beckham@wipo.int; trachtenbergm@gtlaw.com; gnso-rpm-wg@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@verisign.com<mailto:pcorwin@verisign.com>> Sent: Wednesday, September 2, 2020 4:02 PM To: McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>>; saustin@vlplawgroup.com<mailto:saustin@vlplawgroup.com>; jeff@jjnsolutions.com<mailto:jeff@jjnsolutions.com>; brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Wednesday, September 02, 2020 4:22 PM To: Scott Austin <saustin@vlplawgroup.com<mailto:saustin@vlplawgroup.com>>; Jeff Neuman <jeff@jjnsolutions.com<mailto:jeff@jjnsolutions.com>>; BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@vlplawgroup.com<mailto:saustin@vlplawgroup.com>> Sent: Wednesday, September 2, 2020 2:27 PM To: Jeff Neuman <jeff@jjnsolutions.com<mailto:jeff@jjnsolutions.com>>; BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@VLPLawGroup.com<mailto:SAustin@VLPLawGroup.com> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Jeff Neuman Sent: Wednesday, September 2, 2020 11:50 AM To: BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@jjnsolutions.com<mailto:jeff@jjnsolutions.com> http://jjnsolutions.com -----Original Message----- From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of BECKHAM Brian Sent: Wednesday, September 2, 2020 4:42 AM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Wednesday, September 2, 2020 1:31 AM To: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@gtlaw.com<mailto:trachtenbergm@gtlaw.com> <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Sent: Tuesday, September 01, 2020 5:21 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@gtlaw.com<mailto:trac@gtlaw.com> | www.gtlaw.com<http://secure-web.cisco.com/1VdTk8pk0M_-iCfxCgOnBd17BtnoAdOezcpZTBTE2X3u4bgy...> -----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 2:35 PM To: PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Tuesday, September 01, 2020 2:00 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 12:42 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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. 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Copying in the full WG so that they can get access to the latest draft of the proposal and to the exchange below which is informative. _________ Thanks Phil. My responses in line: 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. I'm not sure I raised any concerns about the hat swapping, which is sometimes hard to follow, but thanks all the same. * 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. Thanks Phil. This is consistent with what has been said before. * 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. This is your opinion. Another view is that it is further work on Recommendation 2 which called a similar kind of relief from Sunrise abuses. Both are clauses in agreements - one for ICANN Compliance to enforce and one that triggers a third party right to seek relief. Hopefully, this will be taken into account when the co-chairs make their decision on whether or not to allow this to proceed to public comment (assuming that Council approves a change request). I see no reason for the co-chairs not to see the change request and no reason for even-handed Council leadership to approve it. It's not like the next round is going to launch in the next 21 days and we have to get the RPMs settle by then. 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). Again, a point of view. A formulistic approach looks to the specific document under consideration. A thematic approach looks to expanding a smidge on Sunrise Recommendation 2 which is not controversial. 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. Let's move quickly! But, I think that by the end of the call tomorrow we should have a sense of where things stand, at least in terms of putting it out for public comment. I don't think we need to pre-deduce consensus levels at this point (in fact, I think we shouldn't be doing that at this point in the process). 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. Respectfully, it seems odd that for this issue it is top-down co-chair decision as to whether or not this needs to go to public comment whereas for all other issues it is only if a WG member elects to flag it. I think the co-chairs need to be consistent in their approach, not develop two different processes depending on the topic. Thanks! Best, Paul From: Corwin, Philip <pcorwin@verisign.com> Sent: Wednesday, September 2, 2020 5:54 PM To: McGrady, Paul D. <PMcGrady@taftlaw.com>; saustin@vlplawgroup.com; jeff@jjnsolutions.com; brian.beckham@wipo.int; trachtenbergm@gtlaw.com; gnso-rpm-wg@icann.org Subject: RE: Question re: TM-PDDRP Draft from Small Group 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@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Wednesday, September 02, 2020 5:09 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; saustin@vlplawgroup.com<mailto:saustin@vlplawgroup.com>; jeff@jjnsolutions.com<mailto:jeff@jjnsolutions.com>; brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@verisign.com<mailto:pcorwin@verisign.com>> Sent: Wednesday, September 2, 2020 4:02 PM To: McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>>; saustin@vlplawgroup.com<mailto:saustin@vlplawgroup.com>; jeff@jjnsolutions.com<mailto:jeff@jjnsolutions.com>; brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Wednesday, September 02, 2020 4:22 PM To: Scott Austin <saustin@vlplawgroup.com<mailto:saustin@vlplawgroup.com>>; Jeff Neuman <jeff@jjnsolutions.com<mailto:jeff@jjnsolutions.com>>; BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@vlplawgroup.com<mailto:saustin@vlplawgroup.com>> Sent: Wednesday, September 2, 2020 2:27 PM To: Jeff Neuman <jeff@jjnsolutions.com<mailto:jeff@jjnsolutions.com>>; BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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<calendly.com/saustin2/15min> a 30-minute call<calendly.com/saustin2/30min> a 60-minute call<calendly.com/saustin2/60min> [cid:image001.png@01D68158.2A5D48B0][IntellectualPropertyLaw 100] [microbadge[1]] <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@VLPLawGroup.com<mailto:SAustin@VLPLawGroup.com> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Jeff Neuman Sent: Wednesday, September 2, 2020 11:50 AM To: BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@jjnsolutions.com<mailto:jeff@jjnsolutions.com> http://jjnsolutions.com -----Original Message----- From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of BECKHAM Brian Sent: Wednesday, September 2, 2020 4:42 AM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Wednesday, September 2, 2020 1:31 AM To: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@gtlaw.com<mailto:trachtenbergm@gtlaw.com> <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Sent: Tuesday, September 01, 2020 5:21 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@gtlaw.com<mailto:trac@gtlaw.com> | www.gtlaw.com<http://secure-web.cisco.com/1VdTk8pk0M_-iCfxCgOnBd17BtnoAdOezcpZTBTE2X3u4bgy...> -----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 2:35 PM To: PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Tuesday, September 01, 2020 2:00 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 12:42 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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. 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Paul: No offense to Phil and David, like Paul I too am a creature of optimism, so lest I be scolded again, perhaps the better metaphor would be the thrust and parry of argument, which I agree we will all benefit from and that was my intent. My reference to registrars was based on the issue David raised that registries were not engaged in "selling" in Monday's discussion, which Phil reiterated and expanded upon in his Tuesday email. Paul, your response to Phil answered my question and went a long way to explain a Registry's role in selling and pricing using a new approach to the classic chain of distribution, albeit in the context of "quiescent" products. Thanks for that clarification. Best regards, Scott Please click on a link below to calendar a 15, 30, or 60 minute call with me: a 15-minute call<calendly.com/saustin2/15min> a 30-minute call<calendly.com/saustin2/30min> a 60-minute call<calendly.com/saustin2/60min> [cid:image001.png@01D68148.6D512070][IntellectualPropertyLaw 100] [microbadge[1]] <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@VLPLawGroup.com<mailto:SAustin@VLPLawGroup.com> From: McGrady, Paul D. <PMcGrady@taftlaw.com> Sent: Wednesday, September 2, 2020 4:22 PM To: Scott Austin <saustin@vlplawgroup.com>; Jeff Neuman <jeff@jjnsolutions.com>; BECKHAM Brian <brian.beckham@wipo.int>; Corwin, Philip <pcorwin@verisign.com>; trachtenbergm@gtlaw.com; gnso-rpm-wg@icann.org Subject: 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@vlplawgroup.com<mailto:saustin@vlplawgroup.com>> Sent: Wednesday, September 2, 2020 2:27 PM To: Jeff Neuman <jeff@jjnsolutions.com<mailto:jeff@jjnsolutions.com>>; BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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<http://calendly.com/saustin2/15min> a 30-minute call<http://calendly.com/saustin2/30min> a 60-minute call<http://calendly.com/saustin2/60min> [cid:image001.png@01D68148.6D512070][IntellectualPropertyLaw 100] [microbadge[1]] <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@VLPLawGroup.com<mailto:SAustin@VLPLawGroup.com> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Jeff Neuman Sent: Wednesday, September 2, 2020 11:50 AM To: BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@jjnsolutions.com<mailto:jeff@jjnsolutions.com> http://jjnsolutions.com<http://jjnsolutions.com> -----Original Message----- From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of BECKHAM Brian Sent: Wednesday, September 2, 2020 4:42 AM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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://www.wipo.int/amc/en/docs/icann130309.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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Wednesday, September 2, 2020 1:31 AM To: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@gtlaw.com<mailto:trachtenbergm@gtlaw.com> <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Sent: Tuesday, September 01, 2020 5:21 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@gtlaw.com<mailto:trac@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com> -----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 2:35 PM To: PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Tuesday, September 01, 2020 2:00 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 12:42 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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. 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Thanks Scott. Didn't mean to scold you or anyone. I just didn't want Phil and David to think we weren't appreciative of their substantive suggestions to refine this. We are. Best, Paul From: Scott Austin <saustin@vlplawgroup.com> Sent: Wednesday, September 2, 2020 6:31 PM To: McGrady, Paul D. <PMcGrady@taftlaw.com>; Jeff Neuman <jeff@jjnsolutions.com>; BECKHAM Brian <brian.beckham@wipo.int>; Corwin, Philip <pcorwin@verisign.com>; trachtenbergm@gtlaw.com; gnso-rpm-wg@icann.org Subject: RE: Question re: TM-PDDRP Draft from Small Group Paul: No offense to Phil and David, like Paul I too am a creature of optimism, so lest I be scolded again, perhaps the better metaphor would be the thrust and parry of argument, which I agree we will all benefit from and that was my intent. My reference to registrars was based on the issue David raised that registries were not engaged in "selling" in Monday's discussion, which Phil reiterated and expanded upon in his Tuesday email. Paul, your response to Phil answered my question and went a long way to explain a Registry's role in selling and pricing using a new approach to the classic chain of distribution, albeit in the context of "quiescent" products. Thanks for that clarification. Best regards, Scott Please click on a link below to calendar a 15, 30, or 60 minute call with me: a 15-minute call<calendly.com/saustin2/15min> a 30-minute call<calendly.com/saustin2/30min> a 60-minute call<calendly.com/saustin2/60min> [cid:image001.png@01D6815A.51052620][IntellectualPropertyLaw 100] [microbadge[1]] <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@VLPLawGroup.com<mailto:SAustin@VLPLawGroup.com> From: McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Wednesday, September 2, 2020 4:22 PM To: Scott Austin <saustin@vlplawgroup.com<mailto:saustin@vlplawgroup.com>>; Jeff Neuman <jeff@jjnsolutions.com<mailto:jeff@jjnsolutions.com>>; BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: 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@vlplawgroup.com<mailto:saustin@vlplawgroup.com>> Sent: Wednesday, September 2, 2020 2:27 PM To: Jeff Neuman <jeff@jjnsolutions.com<mailto:jeff@jjnsolutions.com>>; BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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<http://calendly.com/saustin2/15min> a 30-minute call<http://calendly.com/saustin2/30min> a 60-minute call<http://calendly.com/saustin2/60min> [cid:image001.png@01D6815A.51052620][IntellectualPropertyLaw 100] [microbadge[1]] <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@VLPLawGroup.com<mailto:SAustin@VLPLawGroup.com> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Jeff Neuman Sent: Wednesday, September 2, 2020 11:50 AM To: BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@jjnsolutions.com<mailto:jeff@jjnsolutions.com> http://jjnsolutions.com -----Original Message----- From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of BECKHAM Brian Sent: Wednesday, September 2, 2020 4:42 AM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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 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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Wednesday, September 2, 2020 1:31 AM To: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@gtlaw.com<mailto:trachtenbergm@gtlaw.com> <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Sent: Tuesday, September 01, 2020 5:21 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@gtlaw.com<mailto:trac@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com> -----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 2:35 PM To: PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Tuesday, September 01, 2020 2:00 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 12:42 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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. 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Paul: Fully agree. Excellent exchange of ideas this forum was meant for. Even legislative history thanks to Brian. Best regards, Scott Please click on a link below to calendar a 15, 30, or 60 minute call with me: a 15-minute call<calendly.com/saustin2/15min> a 30-minute call<calendly.com/saustin2/30min> a 60-minute call<calendly.com/saustin2/60min> [cid:image001.png@01D68163.68547840][IntellectualPropertyLaw 100] [microbadge[1]] <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@VLPLawGroup.com<mailto:SAustin@VLPLawGroup.com> From: McGrady, Paul D. <PMcGrady@taftlaw.com> Sent: Wednesday, September 2, 2020 7:53 PM To: Scott Austin <saustin@vlplawgroup.com>; Jeff Neuman <jeff@jjnsolutions.com>; BECKHAM Brian <brian.beckham@wipo.int>; Corwin, Philip <pcorwin@verisign.com>; trachtenbergm@gtlaw.com; gnso-rpm-wg@icann.org Subject: RE: Question re: TM-PDDRP Draft from Small Group Thanks Scott. Didn't mean to scold you or anyone. I just didn't want Phil and David to think we weren't appreciative of their substantive suggestions to refine this. We are. Best, Paul From: Scott Austin <saustin@vlplawgroup.com<mailto:saustin@vlplawgroup.com>> Sent: Wednesday, September 2, 2020 6:31 PM To: McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>>; Jeff Neuman <jeff@jjnsolutions.com<mailto:jeff@jjnsolutions.com>>; BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: Question re: TM-PDDRP Draft from Small Group Paul: No offense to Phil and David, like Paul I too am a creature of optimism, so lest I be scolded again, perhaps the better metaphor would be the thrust and parry of argument, which I agree we will all benefit from and that was my intent. My reference to registrars was based on the issue David raised that registries were not engaged in "selling" in Monday's discussion, which Phil reiterated and expanded upon in his Tuesday email. Paul, your response to Phil answered my question and went a long way to explain a Registry's role in selling and pricing using a new approach to the classic chain of distribution, albeit in the context of "quiescent" products. Thanks for that clarification. Best regards, Scott Please click on a link below to calendar a 15, 30, or 60 minute call with me: a 15-minute call<http://calendly.com/saustin2/15min> a 30-minute call<http://calendly.com/saustin2/30min> a 60-minute call<http://calendly.com/saustin2/60min> [cid:image001.png@01D68163.68547840][IntellectualPropertyLaw 100] [microbadge[1]] <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@VLPLawGroup.com<mailto:SAustin@VLPLawGroup.com> From: McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Wednesday, September 2, 2020 4:22 PM To: Scott Austin <saustin@vlplawgroup.com<mailto:saustin@vlplawgroup.com>>; Jeff Neuman <jeff@jjnsolutions.com<mailto:jeff@jjnsolutions.com>>; BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: 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@vlplawgroup.com<mailto:saustin@vlplawgroup.com>> Sent: Wednesday, September 2, 2020 2:27 PM To: Jeff Neuman <jeff@jjnsolutions.com<mailto:jeff@jjnsolutions.com>>; BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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<http://calendly.com/saustin2/15min> a 30-minute call<http://calendly.com/saustin2/30min> a 60-minute call<http://calendly.com/saustin2/60min> [cid:image001.png@01D68163.68547840][IntellectualPropertyLaw 100] [microbadge[1]] <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@VLPLawGroup.com<mailto:SAustin@VLPLawGroup.com> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Jeff Neuman Sent: Wednesday, September 2, 2020 11:50 AM To: BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@jjnsolutions.com<mailto:jeff@jjnsolutions.com> http://jjnsolutions.com<http://jjnsolutions.com> -----Original Message----- From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of BECKHAM Brian Sent: Wednesday, September 2, 2020 4:42 AM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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://www.wipo.int/amc/en/docs/icann130309.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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Wednesday, September 2, 2020 1:31 AM To: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@gtlaw.com<mailto:trachtenbergm@gtlaw.com> <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Sent: Tuesday, September 01, 2020 5:21 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@gtlaw.com<mailto:trac@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com> -----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 2:35 PM To: PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Tuesday, September 01, 2020 2:00 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 12:42 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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. 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Hi all, I have been partially following these exchanges, admittedly without full attention as I have been focused on other matters today. However, I wonder whether it may move us forward productively to consider the proposed amendments to the TM-PDDRP as a component of implementing Sunrise Recommendation 2 rather than as an entirely new proposal specific to the TM-PDDRP in a vacuum. The proposed changes to the TM-PDDRP that are being presented, to my mind at least, aim to address the same problem that Sunrise Rec 2 is aimed at addressing, namely the use of certain practices by registries that have the effect of circumventing the Sunrise mechanism. If we frame it in this manner - i.e. as potential implementation guidance for Sunrise Rec 2 - perhaps that not only helps us reach broad support/consensus on the changes (at least in principle, even if we leave it to IRT to continue refining/wordsmithing), but also helps us avoid the need for a further public comment period and needlessly delaying our timeline. Just food for thought, although I think it would be helpful to spend some time on an upcoming call to continue the discussion of this item. Best regards, Griffin ________________________________ [https://daks2k3a4ib2z.cloudfront.net/59358b8cf7332631232417e8/595fb59d73c5b113a1d2a61b_WIPG_LogoMark.png]<https://www.winterfeldt.law/> Griffin M. Barnett Associate Winterfeldt IP Group 1601 K Street NW, Ste 1050 Washington, DC 20006<x-apple-data-detectors://12/1> griffin@winterfeldt.law<mailto:griffin@winterfeldt.law> +1 202 759 5836 From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Scott Austin Sent: Wednesday, September 2, 2020 7:59 PM To: McGrady, Paul D. <PMcGrady@taftlaw.com>; Jeff Neuman <jeff@jjnsolutions.com>; BECKHAM Brian <brian.beckham@wipo.int>; Corwin, Philip <pcorwin@verisign.com>; trachtenbergm@gtlaw.com; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Question re: TM-PDDRP Draft from Small Group Paul: Fully agree. Excellent exchange of ideas this forum was meant for. Even legislative history thanks to Brian. Best regards, Scott Please click on a link below to calendar a 15, 30, or 60 minute call with me: a 15-minute call<calendly.com/saustin2/15min> a 30-minute call<calendly.com/saustin2/30min> a 60-minute call<calendly.com/saustin2/60min> [cid:image006.png@01D68166.6B0E39B0][IntellectualPropertyLaw 100] [microbadge[1]] <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@VLPLawGroup.com<mailto:SAustin@VLPLawGroup.com> From: McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Wednesday, September 2, 2020 7:53 PM To: Scott Austin <saustin@vlplawgroup.com<mailto:saustin@vlplawgroup.com>>; Jeff Neuman <jeff@jjnsolutions.com<mailto:jeff@jjnsolutions.com>>; BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: Question re: TM-PDDRP Draft from Small Group Thanks Scott. Didn't mean to scold you or anyone. I just didn't want Phil and David to think we weren't appreciative of their substantive suggestions to refine this. We are. Best, Paul From: Scott Austin <saustin@vlplawgroup.com<mailto:saustin@vlplawgroup.com>> Sent: Wednesday, September 2, 2020 6:31 PM To: McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>>; Jeff Neuman <jeff@jjnsolutions.com<mailto:jeff@jjnsolutions.com>>; BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: Question re: TM-PDDRP Draft from Small Group Paul: No offense to Phil and David, like Paul I too am a creature of optimism, so lest I be scolded again, perhaps the better metaphor would be the thrust and parry of argument, which I agree we will all benefit from and that was my intent. My reference to registrars was based on the issue David raised that registries were not engaged in "selling" in Monday's discussion, which Phil reiterated and expanded upon in his Tuesday email. Paul, your response to Phil answered my question and went a long way to explain a Registry's role in selling and pricing using a new approach to the classic chain of distribution, albeit in the context of "quiescent" products. Thanks for that clarification. Best regards, Scott Please click on a link below to calendar a 15, 30, or 60 minute call with me: a 15-minute call<http://calendly.com/saustin2/15min> a 30-minute call<http://calendly.com/saustin2/30min> a 60-minute call<http://calendly.com/saustin2/60min> [cid:image006.png@01D68166.6B0E39B0][IntellectualPropertyLaw 100] [microbadge[1]] <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@VLPLawGroup.com<mailto:SAustin@VLPLawGroup.com> From: McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Wednesday, September 2, 2020 4:22 PM To: Scott Austin <saustin@vlplawgroup.com<mailto:saustin@vlplawgroup.com>>; Jeff Neuman <jeff@jjnsolutions.com<mailto:jeff@jjnsolutions.com>>; BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: 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@vlplawgroup.com<mailto:saustin@vlplawgroup.com>> Sent: Wednesday, September 2, 2020 2:27 PM To: Jeff Neuman <jeff@jjnsolutions.com<mailto:jeff@jjnsolutions.com>>; BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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<http://calendly.com/saustin2/15min> a 30-minute call<http://calendly.com/saustin2/30min> a 60-minute call<http://calendly.com/saustin2/60min> [cid:image006.png@01D68166.6B0E39B0][IntellectualPropertyLaw 100] [microbadge[1]] <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@VLPLawGroup.com<mailto:SAustin@VLPLawGroup.com> From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Jeff Neuman Sent: Wednesday, September 2, 2020 11:50 AM To: BECKHAM Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@jjnsolutions.com<mailto:jeff@jjnsolutions.com> http://jjnsolutions.com -----Original Message----- From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of BECKHAM Brian Sent: Wednesday, September 2, 2020 4:42 AM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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 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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Wednesday, September 2, 2020 1:31 AM To: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@gtlaw.com<mailto:trachtenbergm@gtlaw.com> <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Sent: Tuesday, September 01, 2020 5:21 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@gtlaw.com<mailto:trac@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com> -----Original Message----- From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 2:35 PM To: PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Tuesday, September 01, 2020 2:00 PM To: Corwin, Philip <pcorwin@verisign.com<mailto:pcorwin@verisign.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Corwin, Philip via GNSO-RPM-WG Sent: Tuesday, September 1, 2020 12:42 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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. 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participants (7)
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BECKHAM Brian -
Corwin, Philip -
Griffin Barnett -
Jeff Neuman -
McGrady, Paul D. -
Scott Austin -
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