[gnso-rpm-wg] Availability of Court for Domain Name owners challenging a URS decision -- false assumption?

[George Kirikos]

Hi Claudio,

Thanks for your response.

On Sun, Nov 19, 2017 at 6:59 PM, claudio di gangi <ipcdigangi at gmail.com> wrote:
> 1) is the decision in the case you cite appealable to a higher court? If
> yes, the issue may not be 'settled law' until that potential appeal is
> raised by the moving party and considered by a 'higher' court within the
> jurisdiction.

I'm not aware of any domain name case has proceeded to a supreme court
or highest court in any jurisdiction worldwide. So, to talk about
"settled law" --- by what standard? These are real cases, where
ICANN's policy is causing the problem. And read the commentary on
out-law.com, lexology.com, etc. that I included (and there are other
articles too). TM lawyers are exploiting that vulnerability.

> 2) whether a court has jurisdiction over a particular case is a legal issue
> that can be changed potentially by passing a new statutory law (or sometimes
> even by amending the constitution). For example, this happened in the United
> States with the anti-cybersquatting legislation you mentioned. If this
> jurisprudence is limited to the UK and Australia, then it's possible the
> laws in these countries can be updated to bring them more in line with
> international norms.

Expecting that legislatures around the world are going to prioritize
creating new legislation to fix a problem that ICANN has created is
not realistic. That's reversing the way things should be. Countries
create their own legislation based on their own value systems, etc.
ICANN has to be careful to not create policies that interfere with
those laws (I don't want to open up the WHOIS debate, or GDPR, but see
that the identical issues are engaged there; they're not going to
change their laws to help fix ICANN's problems).

> One other thought: if the solution you mention in #2 below were to be
> adopted, then cybersquatters could simply register their domains with false
> Whois information corresponding to that country, and the ADR procedures
> would no longer be applicable. This would be an exception that swallows the
> rule.
>
> I recall this type of gaming has happened on a similar topic: a company
> based in India was offering 'services' to registrants because the appeals
> process takes a long time in India, so a trademark owner would have to wait
> years before they could get the domain transferred, see:
>
> https://www.inta.org/INTABulletin/Pages/UDRPHijackingAvoidinganInvoluntaryPassagetoIndia.aspx

The example you cite (perhaps I'm misreading it) doesn't appear to
involve fake WHOIS. It appears to be real WHOIS (i.e. they
incorporated a real entity in India; just like Amazon, Apple, etc.
incorporate entities around the world to take advantage of favourable
jurisdictions for taxes or IP in Ireland, Cayman Islands, etc.).

If it actually did involve fake WHOIS (i.e. a totally fabricated
entity that didn't exist), that fake entity wouldn't be able to have
standing to bring any case anywhere (i.e. I would think that the very
first thing a good law firm representing a TM owner would do is have
the case against them dismissed because the entity bringing the action
doesn't really exist!).

Fake WHOIS could also be handled via WHOIS accuracy complaints.

> I am qualifying my statements because I have not read the case you
> identified, but hope you find this feedback helpful.

I do find it helpful, yes. We should definitely consider any "edge
cases" to the "fixes" we deploy.

Sincerely,

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