[Gnso-igo-ingo-crp] Option #6 -- adjusting the UDRP language of paragraph 4(k) itself

[George Kirikos]

Hi folks,

Over the weekend, I was thinking about some of the topics that came up
in the last 2 or 3 conference calls, especially as it relates to how
registrars handle court challenges to a UDRP dispute, and I believe I
found a new option, let's call it Option #6, which might be a path
forward.

Different opinions were put forth regarding how a registrar might
handle an "in rem" or "quasi in rem" court challenge brought by a UDRP
respondent (i.e. the domain name registrant). In my view (and after
talking to my own registrar), the registrar would likely maintain the
status quo, until *all* litigation concerning the domain name was
complete. Others held the view that registrars might not do that,
given that paragraph 4(k) of the rules:

https://www.icann.org/resources/pages/policy-2012-02-25-en

only specifically contemplates "in personam" court cases brought by
the UDRP respondent (domain owner) against the party who filed the
UDRP (i.e. the UDRP complainant). The relevant part of paragraph 4(k)
is:

"We will then implement the decision unless we have received from you
during that ten (10) business day period official documentation (such
as a copy of a complaint, file-stamped by the clerk of the court) that
*****you have commenced a lawsuit against the complainant in a
jurisdiction to which the complainant has submitted****** under
Paragraph 3(b)(xiii) of the Rules of Procedure. "

(emphasis added, via the asterisks)

However, if the wording was changed very slightly, it would clarify
the situation with regards to "in rem" and/or "quasi in rem" suits,
i.e. the language in the asterisk section above could become:

"you have commenced a lawsuit ***concerning the domain name**** in a
jurisdiction to which the complainant has submitted"

i.e. by changing "against the complainant" to "concerning the domain
name", the latter language would cover not only in personam actions
brought against the UDRP complainant, but also cover both in rem and
quasi in rem actions too.

[Aside: the language of the UDRP is actually very poorly worded; by
the language of 4(k) as it stands now, it doesn't even say that the
lawsuit against the UDRP complainant even needs to relate to the
domain name under dispute! i.e. you could sue for *any* cause of
action, even unrelated to the domain name, and by a strict reading of
the 4(k) language, the registrar has to not implement the decision!
We'll need to fix that in 2018 or 2019 or beyond, in the RPM working
group PDP...]

As discussed previously, with an in rem or quasi in rem case, the only
issue in dispute is the fate of the domain name itself, and thus
avoids issues of "immunity" entirely for the IGO. The IGO is not a
named party (but would receive notice of the property dispute, so it
could intervene if it wants to).

Furthermore, the "best" way to proceed in such a court action by a
domain name registrant, in the event of a UDRP filed by an IGO, would
involve both the in rem *and* in personam filings, in a single lawsuit
(when I spoke with one my lawyers last week about this scenario, she
advised that it should be possible to have both methods in a single
lawsuit; indeed, judicial economy would prefer that to two separate
cases).  Now, if we go back to the scenario where we are concerned
about "what happens if an IGO successfully asserts immunity in the
courts", that would only result in a dismissal of the in personam
aspect of the lawsuit. It would leave unaffected the in rem or quasi
in rem aspect of the case. Thus, the domain name owner still has a
suitable forum *in the courts* to determine the fate of the domain
name, and would not be required to go to any binding arbitration to
appeal the UDRP decision. The court action would still be there, in
its in rem or quasi in rem context.

So, I put this forth as "Option #6", and ask that a few minutes of
time be allocated to discussing it at the next meeting (after Paul
Keating discusses any revisions to Option #5 that he might have).

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/