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

Mon Nov 20 07:44:08 UTC 2017

George,

My reading of the case is different. I don't think anything in the RBS decision (attached) interfere with existing legal rights of a TM holder or a domain name registrant. On the contrary, the court simply says that the UDRP does not of itself creates a cause of action to either party under English law. The court does not say that the parties cannot bring an action under available causes of action they have under English law. The Claimant simply didn't do so (with the URS/UDRP in existence or without it). Nothing in the decision prevented the Claimant or future claimants from filing proceedings in the UK to challenge a UDRP decision under existing causes of action.  The court actually says that UDRP does not replace or interfere with English law or the available causes of action. 

If you read the decision you should come at the conclusion that the court heard the parties de novo and stated that in view of its finding the application for declaratory judgment was rendered otiose {Par 31(5) which you didn't cite} and the application for summary judgment on behalf of the TM holder was accepted. Courts in the UK do not provide remedy when its application serves no practical utility. I have not read the Australian decision but I have not seen to date a decision which disturbs the assumptions that ADR mechanisms, which parties agree to interfere with existing legal rights (unless the parties agreed to such changes and local law allows such changes to be made). I am of course happy to review such, if they exist. 

I believe there was nothing for the claimant [Yoyo Mail] to appeal because it lost on the evidence. It is also important to note that the remedy the disputed domain name holder sought was one for declaratory judgment. It did not argue any other cause of action. In contrast, the TM holder RBS counterclaimed with trademark infringement and passing off. The court discuss at length the causes of action brought by the RBS, the trademark holder in the counterclaim and finds them well established and that "actionable passing off occurred at the point of registration of the Domain Names..." [at par. 17]. The court goes on to state that misrepresentation cannot be corrected: "there is nothing in that first stage of the claimant's system which would neutralise or correct the misrepresentation and confusion which, in my judgment, would be created by registration of the Domain Names in the first place." [Par. 18]. The court reviewed evidence and even watched videos during the hearing. The court states that "[e]ven taking its evidence at its highest the claimant does not satisfy me that it has a realistic, as opposed, to fanciful prospect of successfully defending the counterclaim." [At par. 22] The Judge then accepts the counterclaim through the application for summary judgment. In other words the Claimant's case was heard and rejected. 

But even more importantly, the parties agreed that if the application for summary judgment is successful, the judge does not have to rule on the application for declaratory judgment. The court statement that the Claimant has no cause of action relates to the fact that he moved for a declaratory judgment that the court will state that the Claimant registered and used the disputed domain name in bad faith, but the Court refuses to do so because in view of the acceptance of the application for summary judgment, there is no practical utility in deciding that request. The result is a direct flow of the fact that the court accepted the application for summary judgment. The Claimant simply didn't state any other claim and the UDRP was not intended to nor does it provide new causes of action under UK law (or any other law for that matter). To have new causes of action you require the legislator to legislate. 

If you are suggesting a change to this situation (applying ACPA to other countries outside the US) you may be looking at enhancing the URDP/URS to the level of international treaties, which when accepted by countries would generate new causes of action (and this can be done according to the internal treaty implementation provisions of each member country).  

I do agree with you that Paul's suggestion that applicants should all file action in the US is impractical for many reasons and may at most times be impossible from a US law perspective.

Jonathan

-----Original Message-----
From: gnso-rpm-wg [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of George Kirikos
Sent: Monday, November 20, 2017 6:50 AM
To: gnso-rpm-wg <gnso-rpm-wg at icann.org>
Subject: [gnso-rpm-wg] Availability of Court for Domain Name owners challenging a URS decision -- false assumption?

Hi folks,

I brought up this topic on Wednesday's RPM PDP call, and Kathy suggested that I put the issue in writing for the benefit of the broader working group that hadn't attended the call.

There's been an implicit and fundamental assumption that the URS (and similarly, the UDRP) doesn't interfere with the existing legal rights of a TM holder or a domain name registrant, and that either party can bring an action in court, heard on a de novo basis, to challenge the outcome of a URS (or a UDRP), either before, during or after the ADR procedure devised by ICANN. The ADR was intended to complement existing law, and wasn't intended to interfere with or replace existing law.

Is that assumption correct in all jurisdictions worldwide? If not, what must be done to correct the situation? (since this violates the fundamental "bargain" that led to the establishment of those policies in the first place)

This is not some theoretical concern. Consider the Yoyo.email case, described at:

https://www.out-law.com/en/articles/2015/december/ruling-means-uk-courts-will-not-overturn-decisions-by-domain-name-dispute-resolution-panels-says-expert/
https://www.lexology.com/library/detail.aspx?g=b19a14df-9dc5-494e-bb6e-6351f7e0e35b
https://www.lexology.com/library/detail.aspx?g=4f1b77cc-8474-4e9f-b02d-f6547ef7490f
http://www.bailii.org/ew/cases/EWHC/Ch/2015/3509.html

"31. My conclusions on the application to strike out the Claim are:

1) adopting the reasoning of Ms Proudman in Patel drives me to hold that on a proper construction of the UDRP clause 4k does not give rise to a separate cause of action in favour of the claimant;

2) nor does it afford any jurisdiction to this Court to act as an appeal or review body from the Decision;"

While the Yoyo.email court complainant is not a sympathetic party to some, the above decision attacks the very foundation of the URS (and UDRP). This should be a high priority for remedial policymaking, as it was an unintended consequence that is now having real-world effects.

While the above is in the context of a court challenge to a UDRP decision against a domain name registrant, the exact same analysis applies to the URS. Thus, now is the appropriate time to tackle the issue (and kill two birds with one stone).

This jurisprudence appears limited to the UK, and perhaps Australia where apparently a few other cases may have encountered the same problem (as has been discussed in the IGOs PDP where I and a few other members of this RPM PDP first discussed the issue).

The cause of the problem is easy to identify.

If there was no URS (or UDRP) policy in place what would be the "law"
and the procedural path to justice? Clearly, a trademark holder would have a "cause of action" under trademark law against a domain name registrant. The TM holder would file a lawsuit (as plaintiff) against the domain name registrant (as defendant).

With the URS (or UDRP), the procedural path to justice is altered in the event a TM holder uses it and is successful under the ADR. To challenge the outcome of the ADR, the domain name registrant now has the role of the plaintiff in court, and the TM holder is the defendant. The parties have switched their prior positions as plaintiffs and defendants, and it turns out that might cause a significant problem in some jurisdictions. i.e. it might make a difference which party to the dispute files in court as plaintiff in some jurisdictions.

That UK court is saying that ICANN can't simply conjure a "cause of action" out of thin air. If the domain name registrant brings a case in that UK court, that court is saying "you have no cause of action, ICANN can't create one for you, bye bye, case dismissed."

Now, under the ACPA in the USA, there is a clear cause of action for domain name registrants that they can follow, so it's not a problem.
And other courts in other jurisdictions have heard cases similarly brought by a domain name registrant challenging ADR procedures devised by ICANN.

If we look at the language of URS itself:

http://newgtlds.icann.org/en/applicants/urs/procedure-01mar13-en.pdf

"13. Other Available Remedies
The URS Determination shall not preclude any other remedies available to the appellant, such as UDRP (if appellant is the Complainant), or other remedies as may be available in a court of competent jurisdiction. A URS Determination for or against a party shall not prejudice the party in UDRP or any other proceedings."

It's clear that in some jurisdictions, there appears to be that exact "prejudice" to the domain name registrant, who now becomes a "plaintiff with no cause of action". Without the procedure, they would have been a "defendant with available defenses to the cause of action brought by the trademark holder." The ADR procedure itself, by switching who becomes plaintiff and who becomes defendant in a lawsuit, is interfering with the rights those parties had before the policies were adopted by ICANN.

What could be done to restore the proper balance?

(1) the URS (and/or UDRP) could be eliminated entirely (or made optional for the domain name owner),

or

(2) in the event a court refuses to hear a case brought by the domain name owner challenging a URS (or UDRP) ruling, then the URS (or UDRP) decision needs to be set aside, and the TM owner can instead file a TM dispute themselves directly in real court if they want to take the dispute further.

Paul McGrady suggested a third option on Wednesday, namely:

(3) allowing all domain registrants to file actions in US courts

which, I think would be problematic for obvious reasons (but I do applaud him for participating in the active discussions, thinking on his feet and helping to brainstorm during a live call). [Why should a Chinese registrant in a dispute with a Pakistani TM holder for a domain at an Irish TLD / registry operator and a German registrar be compelled to have the dispute heard in the USA?] We have to make policies that are robust to global law and international jurisdictions.

I look forward to a productive discussion on this important topic.

Sincerely,

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