[gnso-rpm-wg] Food for Thought: DMCA procedure at YouTube contrast with URS/UDRP

Paul Keating Paul at law.es
Mon Jan 8 16:13:52 UTC 2018

I would be very opposed to having cancellation available in a URS
proceeding, particularly given the issues discussed concerning notice and
language.  If the complainant wants the domain they should proceed to the
UDRP route

From:  gnso-rpm-wg <gnso-rpm-wg-bounces at icann.org> on behalf of Paul
Tattersfield <gpmgroup at gmail.com>
Date:  Monday, January 8, 2018 at 4:58 PM
To:  claudio di gangi <ipcdigangi at gmail.com>
Cc:  gnso-rpm-wg <gnso-rpm-wg at icann.org>
Subject:  Re: [gnso-rpm-wg] Food for Thought: DMCA procedure at YouTube
contrast with URS/UDRP

> Has there ever been an instance where someone has made a nuisance of
> themselves by re-registering and abusing names that they have had suspended
> under a URS determination?
> On Mon, Jan 8, 2018 at 3:26 PM, claudio di gangi <ipcdigangi at gmail.com> wrote:
>> George, all,
>> Thanks for this note.
>> Just for clarification on the last point, as I understand the current
>> remedies available under the URS does not include cancellation of the domain.
>> As a result, upon expiry the suspended domain can be renewed and used
>> (including for abusive purposes) by the losing registrant of the URS
>> decision.
>> To address this issue we can consider adding cancellation as a remedy (or
>> otherwise modifying the URS) to minimize the need for repeated, serial
>> enforcement against previously suspended domains.
>> Best regards,
>> Claudio
>> On Mon, Jan 8, 2018 at 8:09 AM, George Kirikos <icann at leap.com> wrote:
>>> Hi Paul,
>>> Thanks for your thoughts. I agree that they are different. Just
>>> pointing out that there are other systems out there that don't have
>>> that role reversal feature.
>>> Also, I believe some folks had mused about the possibility of a single
>>> DRP that integrated the URS and UDRP. The issue of creation of a
>>> "Notice of Dispute", that preceded the actual dispute, also has
>>> arisen. If such a system also handled the high number of defaults
>>> differently than today, then one result might be a much lower cost
>>> procedure in the case of defaults (i.e. it could be very lightweight
>>> like the YouTube procedure), and then reference to the courts for the
>>> disputes when both sides show up and are heavily contesting the
>>> matter.
>>> In terms of integration, one way to look at the URS is that it's very
>>> similar to a UDRP where the Complainant (TM holder) asks only for
>>> cancellation, albeit that the URS cancellation happens with a delay
>>> (under the UDRP, the cancellation would happen almost immediately,
>>> after allowing for the appeal to the courts)
>>> Sincerely,
>>> George Kirikos
>>> 416-588-0269 <tel:416-588-0269>
>>> http://www.leap.com/
>>> On Mon, Jan 8, 2018 at 6:30 AM, Paul Keating <Paul at law.es> wrote:
>>>> > George,
>>>> >
>>>> > I know that a response has already been posted but I wanted to add my
>>>> > quick thoughts.
>>>> >
>>>> > I agree that the DMCA and the UDRP/URS are not identical.  In fact the
>>>> > roles remain reversed throughout the UDRP/URS process.  The DMCA merely
>>>> > provides a notice, take-down followed by the opportunity to revive the
>>>> > posting.  Once reposting occurs the issue remains as it was before the
>>>> > notice - the copyright owner must proceed with litigation.  The UDRP/URS
>>>> > however, results in the domain being transferred/suspended or not.  In
>>>> the
>>>> > case of transfer, it is the registrant that must file.  In the case the
>>>> > complaint is denied then the trademark owner has that burden (like the
>>>> > copyright owner in the DMCA example).
>>>> >
>>>> > PRK
>>>> >
>>>> > On 1/6/18, 12:23 AM, "gnso-rpm-wg on behalf of George Kirikos"
>>>> > <gnso-rpm-wg-bounces at icann.org on behalf of icann at leap.com> wrote:
>>>> >
>>>>> >>Hi folks,
>>>>> >>
>>>>> >>There was an interesting article published today about a copyright
>>>>> >>dispute involving "white noise" videos on YouTube:
>>>>> >>
>>>>> >>i-1821804093
>>>>> >>
>>>>> >>which linked to the dispute procedure that YouTube follows:
>>>>> >>
>>>>> >>https://support.google.com/youtube/answer/2797454
>>>>> >>
>>>>> >>Going through the various links, it was very interesting that they
>>>>> >>even have a "Copyright School", see:
>>>>> >>
>>>>> >>https://support.google.com/youtube/answer/2814000
>>>>> >>
>>>>> >>(expand the "How to resolve a copyright strike" to see the link to
>>>>> >>it), which is quite interesting, given how often the education aspect
>>>>> >>for registrants has come up in our PDP's work.
>>>>> >>
>>>>> >>Also of interest is the section on "Counter Notification Basics":
>>>>> >>
>>>>> >>https://support.google.com/youtube/answer/2807684
>>>>> >>
>>>>> >>where importantly it says:
>>>>> >>
>>>>> >>"After we process your counter notification by forwarding it to the
>>>>> >>claimant, the claimant has 10 business days to provide us with
>>>>> >>evidence that they have initiated a court action to keep the content
>>>>> >>down."
>>>>> >>
>>>>> >>and it's the content creator who posts the relevant jurisdiction:
>>>>> >>
>>>>> >>https://support.google.com/youtube/answer/6005919
>>>>> >>
>>>>> >>""I consent to the jurisdiction of the Federal District Court for the
>>>>> >>district in which my address is located, or if my address is outside
>>>>> >>of the United States, the judicial district in which YouTube is
>>>>> >>located, and will accept service of process from the claimant."
>>>>> >>
>>>>> >>As noted in prior threads, various issues arise under the URS (and
>>>>> >>UDRP) when the natural role of plaintiffs vs. defendants (had the
>>>>> >>URS/UDRP not existed) gets reversed (e.g. the Yoyo.email UK "cause of
>>>>> >>action issue", as well as IGO and other groups' claimed "sovereign
>>>>> >>immunity").
>>>>> >>
>>>>> >>With the dispute resolution procedure followed by YouTube, instead the
>>>>> >>onus is on the copyright owner (the "claimant") to file the lawsuit,
>>>>> >>in the same natural way that would exist had that dispute resolution
>>>>> >>procedure not existed. Thus, none of the issues due to reversal of
>>>>> >>plaintiff/defendant arise.
>>>>> >>
>>>>> >>I thought it would be of interest, especially as it also might also
>>>>> >>give insights as to how "defaults" are handled.
>>>>> >>
>>>>> >>Food for thought.
>>>>> >>
>>>>> >>Sincerely,
>>>>> >>
>>>>> >>George Kirikos
>>>>> >>416-588-0269 <tel:416-588-0269>
>>>>> >>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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