[gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20)

Wed Oct 10 23:11:56 UTC 2018

George,

I am still trying to understand what specific language you could insert into the URS (or UDRP) that would obligate a UK national court to decide to take jurisdiction or accept a cause of action.  Those are issues of sovereignty for individual countries.  The URS has no authority over national courts.  They alone decide what they will and won't hear.

Case in point: early on in UDRP, Korean law said a domain dispute case involving a Korean registrar can only be resolved by cancellation of a domain, not transfer.  When complainants won UDRP cases with a transfer remedy, Korean registrars would cancel the domains instead of transferring them per the UDRP (and they'd be drop-caught by the respondent).  There was nothing complainants or registrars could do - compliance said the registrars had to comply with their national laws (much like GDPR issues today).  The KIDRC held a training for Korean judges and lawyers and industry folks and invited folks from ICANN and the providers to come speak; we discussed this issue.  The local legislators and judges worked to change the Korean laws and after a year or two, UDRP decisions can now result in transfer in Korea.  The UDRP could not force a remedy that went against national laws - the changes had to come from the country itself.

If you allow a losing respondent (who has lost a case because the use of the domain name was so transparently infringing to a jurist that they found against the respondent in their absence or despite their participation) to strip a complainant of their URS win in order to force them to court, it has the effect of nullifying the URS...why bother?  I realize that you have a proposal in to remove the URS entirely, so perhaps this is just another way to achieve the same goal, but I'm merely trying to address practicality here.

Kristine

-----Original Message-----
From: gnso-rpm-wg [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of George Kirikos
Sent: Wednesday, October 10, 2018 12:35 PM
To: gnso-rpm-wg <gnso-rpm-wg at icann.org>
Subject: [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20)

Hi folks,

Just to followup on our call, in regards to proposals #18, #19, and #20:

https://community.icann.org/download/attachments/93126760/URS-Proposal-18.pdf?api=v2
https://community.icann.org/download/attachments/93126760/URS-Proposal-19.pdf?api=v2
https://community.icann.org/download/attachments/93126760/URS-Proposal-20.pdf?api=v2

attempting to solve the "lack of a cause of action" problem, whereby a registrant attempting to bring a court action to challenge the outcome of an adverse URS/UDRP would be denied a decision on the underlying merits in the courts, as the case would be tossed for lack of a cause of action:, there were questions regarding whether the Yoyo.email case was an outlier, etc., i.e. whether there was any real issue.

First, it wasn't just one case in the UK. There were others (albeit, not involving the UDRP, but the very similar Nominet DRS), see:

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.)"

So, there's "Toth", which is mentioned too. Toth v Emirates is discussed at:

https://www.brownejacobson.com/about-us/news-and-media/published-articles/2012/04/toth-v-emirates

https://www.theregister.co.uk/2012/03/22/nominet_rules_mean_abusive_domain_name_registrations_finding_cannot_be_reheard_says_high_court/

"The High Court has struck out an application for a declaration that a domain name was not an abusive registration, and found that the question of whether or not a registration is abusive is one for the expert only."

Here's a third example, Patel v. Allos Therapeutics:

https://www.edwincoe.com/blogs/main/court-confirms-principles-applied-domain-name-cases/

"In Patel, the unsuccessful respondent at UDRP commenced proceedings in the Chancery Division and was met with an application for striking out, which was granted, the judge holding that the proceedings disclosed no cause of action and were totally without merit. Referring to clause 4(k) of the UDRP the judge in Patel had noted that this clause speaks of “referring the dispute” to the court for “independent resolution” but had made it clear that this cannot confer a jurisdiction on the court which it does not otherwise have, and that the claimant must demonstrate some independent right of action."

Furthermore, this is also apparently a problem in Australia (Paul Keating had mentioned this in the IGO PDP, although I don't have any case citations -- perhaps he'd share).

So, to deny the existence of this problem in the face of actual court precedents does not seem credible to me, especially when you have law firms openly stating (as per the most recent link above) that:

"The High Court has confirmed that (1) unsuccessful respondents in UDRP or DRS proceedings have no right of appeal to the English Court..."

The three solutions proposed address an actual problem for registrants, namely access to the courts, that were part of the "grand bargain" that was made when these policies were adopted. The DRP policies from ICANN were never intended to be the "final word."

I also refer folks back to the original thread in November 2017 on this topic:

https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/002585.html
https://mm.icann.org/pipermail/gnso-rpm-wg/2017-November/date.html

Sincerely,

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