[gnso-rpm-wg] Availability of Court for Domain Name owners challenging a URS decision -- false assumption?
Volker Greimann
vgreimann at key-systems.net
Tue Nov 21 13:59:39 UTC 2017
All true, but UK courts have set different precedents. As they say: "In
court and on the high seas..."
Volker
Am 21.11.2017 um 13:59 schrieb Paul Tattersfield:
> 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
> <mailto: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/
> <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 <tel:%28416%29%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
> <mailto: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 <mailto:icann at leap.com>
> *Sent:* 20 November 2017 9:37 pm
> *To:* gnso-rpm-wg at icann.org <mailto: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-means-uk-courts-will-not-overturn-decisions-by-domain-name-dispute-resolution-panels-says-expert/
> <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/>
>
> "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
> <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
> <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 <http://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 <tel:%28416%29%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
> <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
> <mailto: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.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=b19a14df-9dc5-494e-bb6e-6351f7e0e35b>
> >
> https://www.lexology.com/library/detail.aspx?g=4f1b77cc-8474-4e9f-b02d-f6547ef7490f
> <https://www.lexology.com/library/detail.aspx?g=4f1b77cc-8474-4e9f-b02d-f6547ef7490f>
> > http://www.bailii.org/ew/cases/EWHC/Ch/2015/3509.html
> <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
> <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 <tel:%28416%29%20588-0269>
> > http://www.leap.com/
> > _______________________________________________
> > gnso-rpm-wg mailing list
> > gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org>
> > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
> <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg>
> >
> >
> ************************************************************************************
> > This footnote confirms that this email message has been
> scanned by PineApp Mail-SeCure for the presence of malicious
> code, vandals & computer viruses.
> >
> ************************************************************************************
> >
> >
> _______________________________________________
> gnso-rpm-wg mailing list
> gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org>
> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
> <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg>
> ************************************************************************************
> This footnote confirms that this email message has been scanned by
> PineApp Mail-SeCure for the presence of malicious code,
> vandals & computer viruses.
> ************************************************************************************
>
>
>
> _______________________________________________
> gnso-rpm-wg mailing list
> gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org>
> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
> <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg>
>
>
>
>
> _______________________________________________
> gnso-rpm-wg mailing list
> gnso-rpm-wg at icann.org
> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
--
Bei weiteren Fragen stehen wir Ihnen gerne zur Verfügung.
Mit freundlichen Grüßen,
Volker A. Greimann
- Rechtsabteilung -
Key-Systems GmbH
Im Oberen Werk 1
66386 St. Ingbert
Tel.: +49 (0) 6894 - 9396 901
Fax.: +49 (0) 6894 - 9396 851
Email: vgreimann at key-systems.net
Web: www.key-systems.net / www.RRPproxy.net
www.domaindiscount24.com / www.BrandShelter.com
Folgen Sie uns bei Twitter oder werden Sie unser Fan bei Facebook:
www.facebook.com/KeySystems
www.twitter.com/key_systems
Geschäftsführer: Alexander Siffrin
Handelsregister Nr.: HR B 18835 - Saarbruecken
Umsatzsteuer ID.: DE211006534
Member of the KEYDRIVE GROUP
www.keydrive.lu
Der Inhalt dieser Nachricht ist vertraulich und nur für den angegebenen Empfänger bestimmt. Jede Form der Kenntnisgabe, Veröffentlichung oder Weitergabe an Dritte durch den Empfänger ist unzulässig. Sollte diese Nachricht nicht für Sie bestimmt sein, so bitten wir Sie, sich mit uns per E-Mail oder telefonisch in Verbindung zu setzen.
--------------------------------------------
Should you have any further questions, please do not hesitate to contact us.
Best regards,
Volker A. Greimann
- legal department -
Key-Systems GmbH
Im Oberen Werk 1
66386 St. Ingbert
Tel.: +49 (0) 6894 - 9396 901
Fax.: +49 (0) 6894 - 9396 851
Email: vgreimann at key-systems.net
Web: www.key-systems.net / www.RRPproxy.net
www.domaindiscount24.com / www.BrandShelter.com
Follow us on Twitter or join our fan community on Facebook and stay updated:
www.facebook.com/KeySystems
www.twitter.com/key_systems
CEO: Alexander Siffrin
Registration No.: HR B 18835 - Saarbruecken
V.A.T. ID.: DE211006534
Member of the KEYDRIVE GROUP
www.keydrive.lu
This e-mail and its attachments is intended only for the person to whom it is addressed. Furthermore it is not permitted to publish any content of this email. You must not use, disclose, copy, print or rely on this e-mail. If an addressing or transmission error has misdirected this e-mail, kindly notify the author by replying to this e-mail or contacting us by telephone.
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20171121/345db41a/attachment-0001.html>
More information about the gnso-rpm-wg
mailing list