[Gnso-igo-ingo-crp] Follow up questions for IGO small group on sovereign immunity

[George Kirikos]

Paul made some excellent suggestions for additional questions.

I would suggest, in the same vein as his section #2, asking the IGOs
to elaborate on and quantify the extent of the alleged
"cybersquatting" activity. Are we talking about 50 alleged infringing
domain names? Are we talking about 50,000 alleged infringing domain
names? How are they gathering those statistics, and monitoring the
extent of the problem? To what extent is the cybersquatting taking
place on gTLDs, as opposed to ccTLDs? Don't the IGOs face identical
issues of 'standing' and exposure to 'legal jurisdiction' in ccTLD
disputes?

For instance, in the ADR rules of the EU:

http://eu.adr.eu/html/en/adr/adr_rules/eu%20adr%20rules.pdf

paragraph B.1.(b)(14) says (on page 9):

"State that the Complainant will submit, with respect to any
challenges to a decision in the ADR Proceeding revoking or
transferring the domain name, to the jurisdiction of the courts in at
least one specified Mutual Jurisdiction in accordance with Paragraph
A1"

For the DRS procedure of .uk domain names, it states in section 3(c)(viii):

http://www.nominet.org.uk/disputes/when-use-drs/policy-and-procedure/drs-procedure

"state that the Complainant will submit to the exclusive jurisdiction
of the English courts with respect to any legal proceedings seeking to
reverse the effect of a Decision requiring the suspension,
cancellation, transfer or other amendment to a Domain Name
registration, and that the Complainant agrees that any such legal
proceedings will be governed by English law;"


If we go back to the Bank for International Settlements (BIS) UDRPs
that I sent to the list yesterday, many of the domain names they won
in the complaints were not renewed by BIS, and are currently available
for registration. That might indicate that the problem has diminished
over time (especially as mechanisms to monetize infringing domain
names have decreased over the past 5 years, e.g. pay-per-click domain
name parking, affiliate programs, etc.). Perhaps it would also be
prudent to ask what other steps the IGOs take, in keeping with their
duty to mitigate damages (e.g. do they make complaints to webhosting
companies, do they file DMCA complaints for copyright infringement if
alleged cybersquatters are also infringing on copyrighted material, do
they make complaints to PPC providers like Google, do they make
complaints to payment processors like PayPal, VISA, Mastercard, etc.)

Sincerely,

George

On Wed, Mar 18, 2015 at 6:39 AM, Paul Keating <Paul at law.es> wrote:
> Mary, please kindly include this in the file for the WG and circulate to
> the extent this email does not reach all participants.
>
>
>
> I agree with George.
>
> The most striking thing about both the research report and the proposed
> letter was that it used as foundational points, asserted "facts" that were
> not substantiated.  Examples:
>
> 1.      Those raised by George below.
>
> 2.      Statements that IGOs have complained about the current set up with
> Mutual Jurisdiction.  I have seen this phrase before but have never seen a
> listing of those NGOs and INGOs who have raised this issue.  Before
> embarking on anything we should ask for those complaining parties to be
> identified.  THEN we should compare that number and type with the universe
> of IGOs/NGOs to see if this is approaching a serious issue.
>
> 3.      Limitation of issues.  The issue is not merely jurisdictional immunity
> but also includes liability immunity.  In any action brought by a losing
> respondent, the respondent (now the plaintiff) has the ability to claim
> damages, including attorneys' fees and costs.
>
>         A.      Jurisdictional Immunity.  In those US courts having dealt with this
> issue (including parvi.org (see attached complaint, Default Motion and
> Final Judgment).  The judgment resulted in a 100K for interference and 27K
> for attorneys' fees and costs.  The City of Paris (though not an NGO/INGO
> has a long history of such behavior.
>
>         B.      Liability immunity.  RECOVERY of any judgment is subject to specific
> collection rules that vary by jurisdiction.  For example, in the US, the
> FISA governs collection as well and requires an additional level of
> service of the judgment so that the defendant (now judgment debtor) can
> assert immunity claims as to itself or any specific assets.
>
>         C.      Tied to the above, we  have no real understanding of how litigious the
> NGOs/INGOs have been.  A search of the US litigation (via PACER) would be
> very time-consuming but doable by ICANN Staff.  This would obviously not
> answer the issue as to non-US jurisdictions.  I thus believe that any
> letter should request not only the identity of the complaining NGOs/INGOs,
> but also request that they provide a listing of any and all litigation or
> other quasi-judicial proceedings they have been involved in.  To the
> extent ICANN staff, the ICANN legal dept. or the GAC is aware (or can find
> out) the answer should be given as to any other NGO/INGO
> litigation/quasi-litigation activities as well.
>
> Without the above it is impossible to understand the real nature of the
> asserted "problem".  Unless the problem is indeed prevalent, I would
> suggest that any change is unwarranted given the potential of disruption
> and cost of implementation (again remembering that the UDRP is based upon
> contract and ANY change requires modification of many contracts at many
> levels (Registry?ICANN, Registry/Registrar and Registrar/Registrant).
>
>
> 4.      The entire purpose of the UDRP was premised on the foundational stone
> that the UDRP was not intended to grant greater rights in the cyber-world
> than those which existed in the "real" world (Reference WIPO:  Final
> Report of the WIPO Internet Domain Name Process - copy attached).  As a
> result I see no reason to provide any particular participant in the UDRP
> with any greater rights or privileges then they would have in the "real"
> world.  In the real world, an NGO/INGO must pursue legal claims of
> trademark infringement using the judicial process.  To do so they must
> weigh the importance of asserting their "rights" against the risk that
> such assertive behavior entails.
>
> Thus, the proposed letter IMHO requires substantial revision to include
> these types of comments so that we are able to  obtain a clear picture in
> the form of any response and not merely a generalized statement of desires
> that are unsupported by any factual or legal basis.
>
>
> Regards,
>
> Paul Keating
>
>
> On 3/17/15 11:57 PM, "George Kirikos" <icann at leap.com> wrote:
>
>>There are more than simply 2 instances of IGOs bringing UDRPs. In
>>particular, I managed to find that the Bank for International
>>Settlements has five (5) other UDRPs that weren't referenced, namely:
>>
>>(1) bisettlement.com --
>>http://www.wipo.int/amc/en/domains/decisions/html/2004/d2004-0571.html
>>
>>(2) bfisonline.net --
>>http://www.wipo.int/amc/en/domains/decisions/html/2004/d2004-0575.html
>>
>>(3) bisonlinedept.com --
>>http://www.wipo.int/amc/en/domains/decisions/html/2003/d2003-0987.html
>>
>>(4) bankforinternationalsettlement.com -
>>http://www.wipo.int/amc/en/domains/decisions/html/2003/d2003-0986.html
>>
>>(5) bfis.net --
>>http://www.wipo.int/amc/en/domains/decisions/html/2003/d2003-0984.html
>>
>>I also found another one that was brought, and then terminated, for
>>"United States Fund for UNICEF", in relation to unicefonline.net/org:
>>
>>(6) http://www.udrpsearch.com/wipo/d2007-1920
>>
>>(both domains appear to have been transferred to the US Fund for UNICEF)
>>
>>Of course, there was also that UNITAID case we've discussed before,
>>brought by the law firm as a proxy:
>>
>>(7) http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2012-1922
>>
>>involving unitaid.biz/com/info/net/org.
>>
>>Also, the United Nations World Food Programme brought a UDRP that was
>>terminated:
>>
>>(8) http://www.udrpsearch.com/wipo/d2005-0099
>>http://www.wipo.int/amc/en/domains/decisionsx/list.jsp?prefix=D&year=2005&
>>seq_min=1&seq_max=199
>>
>>regarding wfpafrica.com, wfpasia.com, wfpenvironment.com, wfpnews.com
>>worldfoodprogram.com, worldfoodprogrammes.com
>>
>>(seems some of those domains are now available!)
>>
>>Given the increase in the number of discovered cases, one might need
>>to rethink the use of phrases like "limited instances" (first
>>paragraph of page 2), or "rare decisions" (last paragraph of page 2).
>>Given the small number of IGOs in relation to all potential
>>complainants, it might turn out that they've filed a statistically
>>proportionate number of cases, all things considered (which might
>>inform the question as to whether they've actually been deterred from
>>filing cases, as they suggest -- statistics might prove otherwise).
>>
>>As for the questions on the list, I think Question #5 isn't one where
>>the IGOs can give an authoritative answer -- they're not the
>>individuals being prejudiced. IGOs should should only be asked
>>questions that are within their knowledge. Similarly #6 isn't
>>something they would be able to answer -- it's really something for us
>>to answer (like #5).
>>
>>One might expand on #4, in particular ask directly about IGOs
>>initiating their own actions in national courts, whether they *ever*
>>do that themselves -- we already know of at least 2 cases, as
>>discussed previously:
>>
>>http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2015-March/000302.html
>>
>>They should give us more examples where they've brought cases (e.g. in
>>other countries). I would be amazed if those were the only 2 cases
>>ever brought (indeed, I'd be skeptical if they couldn't produce
>>others). Why should IGOs be treated differently, if they've brought
>>cases themselves before the courts?
>>
>>One might also ask in relation to Paul Keating's idea that if the
>>nature of the mutual jurisdiction (waiver of immunity) was expressly
>>made limited, i.e. circumscribed to apply *only* to the domain name
>>under dispute for IGOs, and nothing else (i.e. not to attack the
>>assets of the IGOs), whether that accommodates the concerns of the
>>IGOs.
>>
>>For footnote #5, one might want to directly reference the UNITAID
>>case, in case the IGOs aren't aware of that technique.
>>
>>Sincerely,
>>
>>George Kirikos
>>416-588-0269
>>http://www.leap.com/
>>
>>On Tue, Mar 17, 2015 at 2:04 PM, Mary Wong <mary.wong at icann.org> wrote:
>>> Dear WG members,
>>>
>>> Please find attached a draft note addressed to the IGO small group that
>>>was
>>> prepared by the WG co-chairs and staff, based on recent WG discussions
>>>and
>>> research done to date on the sovereign immunity issue. The co-chairs
>>>propose
>>> that following review and approval from the WG, they send these
>>>questions
>>> along with a cover note to the IGO small group, in the hope that the IGO
>>> representatives will continue to be responsive and helpful to ICANN¹s
>>> efforts to work through the matter. The cover note will include the WG¹s
>>> thanks to the IGO small group for its January response, along with an
>>>update
>>> on the WG¹s current thinking on the ³standing² issue and Article 6ter
>>>of the
>>> Paris Convention.
>>>
>>> Please reply to the list via email with any comments you or your groups
>>>may
>>> have on the document as soon as you can. For your information, you will
>>>see
>>> from the draft that we have added another UDRP decision to the World
>>>Bank
>>> example that George provided earlier in our deliberations ­ this second
>>>case
>>> concerns the Bank for International Settlements, which also is on the
>>>GAC
>>> list of IGOs dating from 2013. I attach also an updated version of the
>>>staff
>>> Briefing Note on sovereign immunity and IGOs that was circulated last
>>>week ­
>>> this update adds a reference to the Canadian statute that the Canadian
>>> Supreme Court relies on in the NAFO case which George brought to the
>>>WG¹s
>>> attention last week.
>>>
>>> Finally, please note that the GNSO Council has been updated on the WG¹s
>>> progress during our recent face-to-face facilitated meeting in
>>>Singapore,
>>> and will take up at its meeting on Thursday the specific question of
>>>whether
>>> they agree with the WG¹s thinking that the list of IGOs in the WIPO
>>>database
>>> who requested Article 6ter protection should be the list upon which the
>>>WG¹s
>>> recommendations (if any) will be based, especially for ³standing² and in
>>> principled preference to the original GAC list, which contains IGOs
>>>selected
>>> based on fulfillment of the .int eligibility criteria and which was the
>>>list
>>> that our WG was chartered to discuss. We will provide the WG with a
>>>further
>>> update following the Council¹s deliberations on this point later this
>>>week.
>>>
>>> Thanks and cheers
>>> Mary
>>>
>>> Mary Wong
>>> Senior Policy Director
>>> Internet Corporation for Assigned Names & Numbers (ICANN)
>>> Telephone: +1 603 574 4892
>>> Email: mary.wong at icann.org
>>>
>>>
>>>
>>>
>>>
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>>> Gnso-igo-ingo-crp at icann.org
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