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

Paul Tattersfield gpmgroup at gmail.com
Tue Nov 21 12:59:19 UTC 2017


UDRP is an administrative proceeding not arbitration it makes provisions
for parties to resolve their differences by arbitration or court
proceedings

On Tue, Nov 21, 2017 at 12:16 PM, George Kirikos <icann at leap.com> wrote:

> Jonathan,
>
> My understanding is that these UK cases which appear to deny the de novo
> review, which is at odds with the "bargain" that was made when the policies
> were adopted (i.e. that they were not final, not binding arbitration at
> all), might have started 5 years ago with a case between Toth and Emirates
> Airlines, as mentioned in this article:
>
> https://www.theregister.co.uk/2012/03/22/nominet_rules_mean_
> abusive_domain_name_registrations_finding_cannot_
> be_reheard_says_high_court/
>
> (that was a DRS case under .uk, but then it impacted some ICANN-regulated
> gTLD cases)
>
> While you suggest that "the domain name holder agrees with the registrar
> on binding arbitration", I respectfully disagree. At some point we can go
> back to the history of the development of these ADR procedures (and it
> helps that folks like Kathy, J. Scott, etc. were all around for the UDRP,
> and others for the URS, and others for PDDRP, etc.), and they can refer to
> the primary documents and discussions, as to whether any of those policies
> were intended to be the "final word" via binding arbitration, or instead
> were lightweight procedures that were subject to de novo review.
>
> Have a nice Thanksgiving holiday week.
>
> Sincerely,
>
> George Kirikos
> 416-588-0269 <(416)%20588-0269>
> http://www.leap.com/
>
>
> On Mon, Nov 20, 2017 at 7:23 PM, Jonathan_agmon icann <
> jonathan.agmon.icann at ip-law.legal> wrote:
>
>> George,
>>
>> I think it is best to stick to the facts and read the decision. It speaks
>> for itself.
>>
>> As to the statements you refer to below I am unclear what you propose.
>> Clearly the UDRP/URS were not designed to create an appealate jurisdiction
>> on a national level. I believe that fhe fact that ACPA exists in the US is
>> an exception not the international norm.
>>
>> As I wrote below, I believe amending the UDRP/URS to provide a national
>> appealate jurisdiction would require an international convention to be
>> ratified by the member states. I'm not sure this exercise is within the WG
>> charter scope.
>>
>> Rebecca below says the ADR decision is binding and she is correct because
>> the domain name holder agrees with the registrar on binding arbitration.
>> Again, I am unclear whats wrong with that. This does not take away any
>> rights the parties already have. The domain name holder can still use
>> whatever cause of action he has under national law to bring suit against
>> the TM owner.
>>
>> Again, nothing in the decision prevents the domain holder from filing
>> oroceedings in UK courts. I believe nothing cited below syas otherwise. As
>> with any national court a plaintiff has to identify what is his cause of
>> action. In the yoyo.mail case the Claimant failed to do so. This is not an
>> usual case in that respect. I think the few articles that tried to make big
>> news out of a rather simple outcome cannot really change this.
>>
>>
>>
>>
>> *From:* icann at leap.com
>> *Sent:* 20 November 2017 9:37 pm
>> *To:* gnso-rpm-wg at icann.org
>> *Subject:* Re: [gnso-rpm-wg] Availability of Court for Domain Name
>> owners challenging a URS decision -- false assumption?
>>
>> Hi Jonathan,
>>
>> I believe your reading of the case is inconsistent with how others
>> have analyzed it. In my initial post I linked to 3 separate articles
>> analyzing the decision. I didn't bother to quote from them, but let me
>> do so now:
>>
>> [1] https://www.out-law.com/en/articles/2015/december/ruling-mea
>> ns-uk-courts-will-not-overturn-decisions-by-domain-name-
>> dispute-resolution-panels-says-expert/
>>
>> "Ruling means UK courts will not overturn decisions by domain name
>> dispute resolution panels, says expert
>> ...
>> A UK court ruling that it did not have the jurisdiction to hear and
>> determine an appeal against a decision taken by domain name dispute
>> resolution panel will be welcomed by brand owners, an expert has said.
>>
>> Intellectual property law specialist Rebecca Mitton of Pinsent Masons,
>> the law firm behind Out-Law.com, said the High Court's judgment is
>> important as it means decisions taken in accordance with the Uniform
>> Dispute Resolution Policy (UDRP) can be considered binding with no
>> right of appeal to UK courts.
>> ...
>> However, in a ruling seen by Out-Law.com, His Honour Judge Dight said
>> that there was no "cause of action" that Yoyo.email could cite under
>> the UDRP to justify its arguments being considered and that the policy
>> also did not "afford any jurisdiction" to the High Court to "act as an
>> appeal or review body" from the domain name dispute resolution panel's
>> decision in August 2014."
>> ....
>> "It is also significant in setting a clear precedent that decisions
>> made by UDRP panels through the WIPO procedure are not capable of
>> being challenged through the courts. This provides certainty for brand
>> owners who have achieved a positive result in such proceedings, safe
>> in the knowledge that the decision is not open to review or appeal
>> through the courts," she said.
>>
>> [2] https://www.lexology.com/library/detail.aspx?g=b19a14df-
>> 9dc5-494e-bb6e-6351f7e0e35b
>>
>> "The High Court confirms that One in a Million is still good law,
>> despite alleged developments in internet knowledge, and the High Court
>> should not be used for appeals from domain name dispute panels
>> (Yoyo.email Limited v Royal Bank of Scotland Group Plc and others
>> [2015] EWHC 3509 (Ch))
>> ...
>> Issues
>> ...
>> 2. whether decisions under the ICANN UDRP are open to review by the High
>> Court.
>> ...
>> The decision on the second question surrounded the interpretation of a
>> clause in the UDRP, which stated as follows:
>>
>>  “Availability of Court Proceedings. The mandatory administrative
>> proceedings requirements set forth in Paragraph 4 shall not prevent
>> you or the complainant from submitting the dispute to a court of
>> competent jurisdiction for independent resolution before such
>> mandatory administrative proceeding is commenced or after such
>> proceeding is concluded…”
>>
>> Dight HHJ held that, on the proper construction of the clause, it did
>> not give rise to a separate cause of action in favour of Yoyo, nor did
>> it afford any jurisdiction to the High Court to act as an appeal or
>> review body from the decision of the Panel. He also confirmed that
>> there would be no material difference in seeking an appeal as from the
>> Dispute Resolution Service Policy (the “DRS”) operated by Nominet in
>> the UK than under the UDRP.
>>
>> The judge therefore proceeded to strike the claim out."
>> ...
>> The decision provides a useful lesson that the UK courts should not be
>> used as an appeals court for domain dispute resolution already
>> decision under the DRS or the UDRP. The judgment reinforces that the
>> people appointed to the relevant panel are often experts in
>> determining these kinds of cases and it generally would not be
>> appropriate for the courts to make comment. It is also important for
>> parties to remember that seeking declaratory relief from the court
>> would also not change the rights in respect of the Domain Names,
>> therefore meaning that there is no practical utility in granting the
>> declarations."
>>
>> [3] https://www.lexology.com/library/detail.aspx?g=4f1b77cc-
>> 8474-4e9f-b02d-f6547ef7490f
>>
>> "The High Court also clarified that it did not have jurisdiction to
>> hear appeals of uniform dispute resolution policy (UDRP) or Dispute
>> Resolution Service (DRS) decisions.
>> ...
>> In relation to the claimant's request for declaratory relief, the
>> court held that the UDRP did not "afford any jurisdiction" to the High
>> Court to "act as an appeal or review body" from the domain name
>> dispute resolution panel's decision in August 2014. The judge held
>> that clause 4k of the UDRP (which states that the parties are not
>> barred from taking the matter to court after its conclusion) did not
>> give rise to a separate cause of action in favour of the claimant, nor
>> give the court any jurisdiction to act as an appeal or review body in
>> relation to the UDRP decision. This is in line with the previous case
>> of 'Toth' which similarly held that the court did not have
>> jurisdiction to hear appeals of DRS policy decisions. (By way of
>> reminder, Nominet's DRS policy is applicable in relation to '.co.uk'
>> domain names whilst WIPO's UDRP is relevant to various other gTLDs,
>> such as '.email' in this case.)"
>>
>> Sincerely,
>>
>> George Kirikos
>> 416-588-0269 <(416)%20588-0269>
>> http://www.leap.com/
>>
>> On Mon, Nov 20, 2017 at 2:44 AM, Jonathan_agmon icann
>> <jonathan.agmon.icann at ip-law.legal> wrote:
>> > 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
>> <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-mea
>> ns-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 <(416)%20588-0269>
>> > http://www.leap.com/
>> > _______________________________________________
>> > gnso-rpm-wg mailing list
>> > gnso-rpm-wg at icann.org
>> > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>> >
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