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

[George Kirikos]

Hi Kristine,

On Wed, Oct 10, 2018 at 7:11 PM, Dorrain, Kristine <dorraink at amazon.com> wrote:
> 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.

Thanks for your post. In reviewing the call again this evening, the
proposals seem to be misunderstood, I'm hopeful I can provider greater
clarity in this email.

When you said " The URS has no authority over national courts.  They
alone decide what they will and won't hear." I agree! that's the
proper identification of the underlying *problem*. i.e. in some
jurisdictions, they won't permit a registrant (who loses a URS/UDRP
and wants to challenge the outcome in court) to bring a case in the
court. That means the URS outcome would be the "final word", violating
the principles upon which these policies were adopted, namely that
they *wouldn't* be the final word, that both side would have recourse
to the courts to challenge the outcome, if they disagreed with it.

So, I agree with you 100%, we *cannot* tell the courts what to do. We
cannot force them to permit a registrant to have a cause of action.
But, what we can do is make the URS (and UDRP later) policy not get
into that situation in the first place. We know the underlying problem
is caused by the role reversal (i.e. the registrant, as things stands
now, would be forced to become the complainant in court, if they want
to challenge an adverse URS/UDRP; but the natural role of the
registrant, had these procedures never existed, is to be the
*defendant*, and have the TM holder be the plaintiff in court.

How do we accomplish this? Proposal #18 does this by allowing the
losing registrant to simply file a "Notice of Objection" after losing
and paying the fee (and accepting that if a court action happens and
they don't do any better, they'll be on the hook for additional legal
costs at the discretion of the courts) -- just like in that British
Columbia Civil Resolution Tribunal system. So, under Proposal #18, the
registrant is *not* the complainant in court anymore. It's the TM
holder who would file a TM infringement case/cybersquatting claim in
court. The registrant makes a defense to that cybersquatting claim,
and the case proceeds in court de novo without the interference of the
prior URS/UDRP outcome. This is what we **wanted** all along, the
underlying dispute in the courts, with a fresh slate, and both sides
in their "natural" roles (TM holder as complainant, registrant as
defendant).

Proposal #19 also fixes the role reversal problem, albeit in a more
circuitous and inelegant manner. In proposal #19, the losing
registrant who wants to challenge the outcome of the URS/UDRP
initially files a court case, like today. If there's a cause of
action, it proceeds as normal, just like today. But, if this "lack of
cause of action" issue is encountered (e.g in the UK), denying the
registrant a de novo hearing of the dispute on the merits but instead
dismissing the action on a "technicality", then that would trigger
something "new", namely that the URS/UDRP outcome would be completely
set aside (vitiated). i.e. it's saying that the right to access the
courts is so important that we're going to fix the problem (lack of
court access in this scenario) by undoing the URS/UDRP, and letting
the parties go back to court with the TM holder as the plaintiff in
court (assuming they still want to pursue the matter), and with the
domain registrant as the defendant.

Proposal #20 doesn't address the problem in the same manner, but
instead says "Registrant can file a court case in the USA, where we
know a cause of action exists.

So, let me make it clear, since the proposals seem to be misunderstood
--- I am not proposing any language at all to obligate any courts to
decide to take jurisdiction of a case, or accept a cause of action.
That's entirely up to them.

But, we do know that trademark holders will have a cause of action as
plaintiff in the courts (for cybersquatting, TM infringement, etc.),
and courts will always allow registrants to put up a defense!

Now, if someone wants to raise the issue of "Well, what if courts
don't allow a Trademark holder to bring an action as plaintiff?" My
response would be "Too bad for you!" The URS/UDRP wasn't designed to
give TM holders *greater* rights or superior outcomes than those that
exist in the courts. If it turns out that TM holders don't have a
cause of action in a court for their dispute, then that's the PROPER
OUTCOME.

If it turns out that registrants don't have a cause of action, because
of this role reversal created by the URS/UDRP, then the solution is to
eliminate that role reversal in the current policies themselves (which
proposals #18 and #19 accomplish, albeit in different manners; #18 is
more elegant, and matches how it's actually done by an existing
tribunal in BC).

> 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.

Frankly, I'm shocked by the above statement. This is suggesting that
the URS/UDRP outcome is always correct, and should never be appealed.
But, we know that's not the case. We've seen reversals in the courts,
the various cases brought up on this mailing list repeatedly (the ones
that WIPO won't post to their website, for example!). Why bother to
have courts of appeal? Why bother to have a Supreme Court? It's
because lower courts can get it wrong! In the URS/UDRP especially,
there's no cross examination, no discovery, nor all the other due
process protections of a court. The URS/UDRP can and do get it wrong
from time to time. Even judges make mistakes.

This isn't attempting to deprive the TM holder of anything. The
expectation of all sides has been that the matter can go to the
courts. If it requires, procedurally, that the only way to get to that
proper state is to undo the URS/UDRP outcome, then that's how it has
to be done. The domain name registrant wants the matter decided by a
court. They have that right (unless the TM side wants to eliminate
that right --- be transparent about that if that's the case; i.e. not
fixing the problem achieves that outcome). If the domain name
registrant can't have their day in court as plaintiff, then make them
be the defendant instead, and force the TM holder to return to their
natural role as Plaintiff. The domain name owner isn't trying to "pull
a fast one" --- under Proposal #18, the domain name registrant would
make a good faith payment to file that Notice of Objection, and also
suffer cost consequences if they do no better in the courts. Under
proposal #19, the domain name registrant *already* went to court, but
the case got tossed on a technicality, and wasn't able to be heard on
the merits.

So, I'm not trying to "remove the URS" via these two proposals (#18
and #19). I'm instead trying to ensure that the URS/UDRP are not the
final word, and that there's real recourse (on the merits, de novo) to
the courts. If either side *insists* that the courts be the final
arbiter, then that is a *right*. They shouldn't lose that right to
have the court be the final arbiter, just because the URS/UDRP weren't
drafted properly, or made assumptions that are incorrect. Losing that
right to court access means that ICANN has implicitly created NEW LAW,
eliminating rights for registrants that they had prior to the adoption
of the policies, namely the right to have their disputes decided in
court.

Sincerely,

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