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

Thu Oct 11 01:47:33 UTC 2018

George,

I’m getting the sense that we are going to start talking past each other
soon, if not already.

Since this concerns your proposal, my recommendation is that you supply
reference materials, e.g. a link, a citation, quoted language, etc. to the
following clause:

“That means the URS 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.”

This language does not appear in the UDRP or URS policy, rules and/or
implementation documents.

Once we have this language to review, we can examine and analyze the
material to see if we can obtain a shared understanding of the relevant
issues and facts to help steer the discussion in a positive manner.

Thank you.

Best regards,
Claudio

On Wednesday, October 10, 2018, George Kirikos <icann at leap.com> wrote:

> 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/
> _______________________________________________
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> gnso-rpm-wg at icann.org
> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>
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