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

Fri Oct 12 20:27:43 UTC 2018

Very well said by Nat Cohen.

Zak

On Fri, Oct 12, 2018 at 4:14 PM Paul Keating <Paul at law.es> wrote:

> +1
>
>
>
> *From: *GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> on behalf of Nat
> Cohen <ncohen at telepathy.com>
> *Date: *Friday, October 12, 2018 at 9:55 PM
> *To: *Georges Nahitchevansky <ghn at kilpatricktownsend.com>
> *Cc: *<gnso-rpm-wg at icann.org>
> *Subject: *Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action"
> followup (URS proposals #18, #19, #20)
>
>
>
>
>
> Georges,
>
>
>
> Thank you for your thoughtful and considered response.
>
>
>
> I would like to respond to your comments on-
>
>
>
> 1.  the relevance of settled court challenges to UDRP transfer orders
>
> 2.  the nature of the URS sanction
>
> 3.  the likelihood that respondents will go to court to challenge a URS
> decision
>
> 4.  how much weight to give to the 'clear and convincing' standard
>
>
>
> You are right that most of the UDRP transfers challenged in court are
> settled, for as you mention due to the high costs involved that is usually
> the sensible thing to do for both parties.  While these settled cases may
> not have precedential value in a court of law, those cases do offer us
> useful information for our considerations.  When I review with my attorney
> whether to go to court, we carefully weigh the merits of our position and
> our likelihood of success should the case go all the way to judgment.  The
> UDRP complainant/defendant engages in a similar evaluation in deciding
> whether to settle and for how much.  While other considerations may come
> into play besides only the merits of the case, that a domain owner is
> willing to risk tens of thousands of dollars in legal fees to have a judge
> weigh the merits of the case, and that the complainant/defendant is willing
> to pay tens of thousands of dollars in a settlement rather than proceed to
> a decision by the court, is not divorced entirely from the underlying
> merits of the case.
>
>
>
> In short, some domains owners so strongly believe that the UDRP transfer
> order was wrongly issued that they are willing to go to court to overturn
> the panel decision.  Whether the domain owner is correct on the merits is
> not even that important.  Rather it points to the strong desire of
> respondents to be able to avail of a court for determination of the issues
> raised in the UDRP dispute.
>
>
>
> The consequences of losing a URS are currently in flux as numerous
> proposals have been raised in this WG including the transfer of rights from
> respondent to complainant.  As I understand how the URS is current written,
> the domain owner loses the right to use the disputed domain, to transfer
> the domain, and eventually to renew the domain name.  This is equivalent to
> a loss of ownership rights to the domain, even in the absence of a
> transfer.  Unless I misunderstand, the consequence is much greater than a
> temporary suspension after which the domain owner gains back full rights to
> the domain.  Since the domain owner is being deprived of rights to his or
> her asset, it is appropriate to allow the domain owner to bring the matter
> to court to ensure that the URS decision is consistent with national laws.
>
>
>
> That the loser of a URS decision would challenge the decision in court
> strikes me as an exceedingly rare possibility.  As you point out, nearly
> all cases are defaults as the domain owner's position is indefensible.
> These are also mostly throwaway domains - registered for $10 and worth
> little more than that to either party.  Why would a domain owner spend
> substantial sums to engage in a court proceeding over a domain that has so
> little value to the domain owner?  I also recognized that the URS is less
> vulnerable to hijacking attempts because transfer of the domain is not
> available and because of the higher standard of proof.
>
>
>
> To address your concern that domain owners would go to court as a way to
> defeat the URS, as unlikely as that seems, perhaps a way to address that is
> to leave the domain suspended pending the outcome of the court case.  The
> court case would be about the domain owner's ultimate rights to remain the
> lawful owner of the domain, and as to whether the domain owner can show it
> has a lawful use for the domain.
>
>
>
> In the view of many domain owners, and at times neutral observers, UDRP
> transfer decisions are sometimes made where the evidence falls far below a
> preponderance of the evidence standard.  The URS is still new.  The ability
> of any panelist to unilaterally decide how much weight to give to any
> evidence, or any inference from evidence, means that "clear and convincing"
> is ultimately a subjective standard that differs from panelist to
> panelist.  So whether, in the absence of clear and binding community
> guidelines, "clear and convincing" degrades over time to "preponderance" or
> worse, remains to be seen.
>
>
>
> Like the children's game of "telephone" (
> https://en.wikipedia.org/wiki/Chinese_whispers), the nuance of
> precedential decisions is often lost when cited by future panelists.
> Telstra held that under certain circumstances, including that the mark is
> famous, passive holding can be evidence of bad faith.  Over time that
> holding degraded to some panelists citing Telstra for the view that
> "passive holding is evidence of bad faith".  Similarly, the retroactive bad
> faith theory, illegitimate as it was, started with rulings limited to
> intentional repurposing of a domain to target late arriving trademark
> rights.  Over time that degraded to panelists finding that an unintended
> appearance of a Google ad on landing page converted a good faith
> registration into a bad faith registration.
>
>
>
> The lack of predictability in both the UDRP and the URS is a challenge for
> both the IP side and domain registrant side in trying to find common
> ground.  We each have our own set of outlier cases that cause us concern.
> My view is that the domain registrants have more cause for concern as the
> IP side controls all aspects of the process while it is the domain
> registrants' assets that are at risk.   Addressing the underlying sources
> of unpredictability would allow us all to collaborate more productively on
> improvements to the policies.
>
>
>
> Regards,
>
>
>
> Nat
>
>
>
>
>
>
>
>
>
> On Fri, Oct 12, 2018 at 11:22 AM Nahitchevansky, Georges <
> ghn at kilpatricktownsend.com> wrote:
>
> Nat:
>
>
>
> Just a few comments.  The case you refer to was not a fully litigated
> case, but was a settlement.  As you likely know, people and companies often
> settle because they do not want the extensive cost of a US litigation ,
> which can be in the hundreds of thousands of dollars (and even in the
> millions depending on the matter).  So absent a litigated court decision,
> what you have are parties transacting a resolution – albeit in this case
> apparently favorable to the Respondent.  It is not a decided case and has
> no precedential value.
>
>
>
> The court review proposal for the URS is actually something that is
> frought with issues.  You have to begin that the URS is a
> streamlined/expedited procedure that is meant to address a very specific
> group of domain names being abused.  The URS has a higher burden proof than
> the UDRP (clear and convincing versus preponderance of the evidence
> standard) and only results in suspension of the domain name for a short
> period as opposed to a full transfer of the domain name to the complainant,
> as is the case in the UDRP.  That means there needs to be fairly compelling
> proof of abuse just to get a temporary suspension.  Second the URS has
> already built in procedural measures that allow a Respondent to challenge a
> decision – namely, a defaulting Respondent has a time period after a
> decision is rendered to challenge the decision and there is an appeal
> mechanism in place.  Third, the statistics prove that very few Respondents
> actually challenge the decisions rendered through the existing mechanisms.
> Now some argue with no evidence that the default rate is somehow based on a
> lack of notice, but quite frankly that is absurd.  Domain name registrants
> at the very least have a provided a valid address to the registrars for
> their domain names (they have an obligation to do so).  So they get an
> email that there is an action involving their domain name.  There is no
> evidence that respondents are not receiving emails from providers.
> Moreover, perhaps the reason Respondents default in so many instances is
> the fact that their cases are indefensible and they know it.  I would
> venture that a number of Respondents simply do not bother defending cases
> that they are likely going to lose.  Simply look at the list of domains
> subject of the URS and it is fairly clear that the vast majority involve
> known brands either alone or with terms that relate to the businesses under
> the marks.  Lastly, adding on a court review over a short term suspension
> (the relief currently in place) is likely to create a windfall to
> Respondents that will allow bad actors to easily defeat the entire URS
> process.  I am not sure if you have ever litigated cases in countries
> around the world, but in some countries court proceedings can last for
> years (up to ten years in some instances).  If a court proceeding can
> simply prevent the suspension, then I can see a situation where a
> Respondent falsely uses an address in a country where proceedings take
> forever and where they can be filed cheaply and essentially defeat the
> entire suspension period.
>
>
>
> So in all, if you want to pursue court proceedings post URS, then I think
> there needs to be procedural safeguards put in place for Complainants, such
> as (1) a shorter time frame for a Respondent to challenge a decision on a
> default, or the removal of such a procedure, (2) a shortened appeal period
> (20 to 30 days), (3) a transfer of the domain name post URS as opposed to a
> suspension and/or a lock preventing use of the domain name during
> proceedings, and (4) some form of bond being posted by a challenging
> respondent or complainant that wants to ultimately proceed in court.  On
> the last point, the challenging party would need to file the appeal first
> and if the party lost the appeal it could then proceed to court, but would
> have to post a bond with the provider to cover costs if the appeal is
> deemed frivolous by a court.
>
>
>
>
>
> *From:* gnso-rpm-wg <gnso-rpm-wg-bounces at icann.org> *On Behalf Of *Nat
> Cohen
> *Sent:* Thursday, October 11, 2018 10:28 AM
> *To:* George Kirikos <icann at leap.com>
> *Cc:* gnso-rpm-wg at icann.org
> *Subject:* Re: [gnso-rpm-wg] "Lack of cause of action" followup (URS
> proposals #18, #19, #20)
>
>
>
> George,
>
>
>
> Thanks for providing this background.
>
>
>
> Speaking for myself, and I believe many other domain registrants, the
> ability to have judicial review of any URS/UDRP decision is an important
> safeguard.  Even unanimous 3-member panel UDRP transfer orders have been
> overturned in court, as with the austinpain.com dispute (
> http://kellywarnerlaw.com/udrp-law-ruling-overturned/).
>
>
>
> The IGO/INGO WG just spent years wrestling with the issue of whether a
> variant of the UDRP could be devised specifically for IGOs that would
> indeed be the "final word".  The strongly held view of many participants in
> that WG was that access to the courts for a final determination of any
> issues in dispute was a fundamental right, and could not be conceded.
>
>
>
> I support the effort to ensure that a respondent, wherever they may be in
> the world, has access to judicial review of a URS decision.
>
>
>
> Regards,
>
>
>
> Nat Cohen
>
>
>
>
>
>
>
> On Thu, Oct 11, 2018 at 12:02 AM George Kirikos <icann at leap.com> wrote:
>
> Hi Claudio,
>
> David Maher gave a history in the context of the UDRP, when discussing
> this various issue of access to the courts, see:
>
> http://www.circleid.com/posts/20180103_the_udrp_and_judicial_review/
>
> which goes back to the very early WIPO Recommendations:
>
> ""140. It is recommended that any dispute-resolution system, which is
> alternative to litigation and to which domain name applicants are
> required to submit, should not deny the parties to the dispute access
> to court litigation."
>
> One can also look to section 4(k) of the UDRP policy, and sections
> 3(b)(xii) and 18 of the UDRP Rules to see that UDRP was never intended
> to be the final word.
>
> https://www.icann.org/en/help/dndr/udrp/policy
> https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en
>
> For the history of the URS, you can go back to the reports that
> preceded its adoption, such as the STI:
>
>
> https://gnso.icann.org/sites/default/files/filefield_8000/sti-wt-recommendations-11dec09-en.pdf
>
> Section 8.3 at the bottom of page 21 (and continuing to page 22),
> unanimous consensus, stated:
>
> "A URS decision should 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 finding in URS for or against a party should not
> prejudice the party in UDRP."
>
> or look to the text of the URS Policy (e.g. section 13) and section
> 3(b)(ix) of the URS Rules to see that the URS was never intended to be
> the final word.
>
> http://newgtlds.icann.org/en/applicants/urs/procedure-01mar13-en.pdf
> http://newgtlds.icann.org/en/applicants/urs/rules-28jun13-en.pdf
>
> I hope that answers your question sufficiently. Some of the people who
> were on the teams that developed the UDRP and URS are members of this
> PDP, so you can simply ask them (or consult the archived documents on
> ICANN's website that led to the policies).
>
> If you're asserting that the UDRP/URS *were* intended to be the "final
> word", that's a very bold claim to make (unlike mine, which was
> non-controversial), and I think the onus is on you to back that claim.
> And, even if that claim could be backed (which I doubt), I think that
> would be a scary thought, and reinforce the need to properly review
> the policies to eliminate such errors in policymaking.
>
> In other words, I've been trying to correct what I (and many others)
> feel are *unintended consequences* of poor drafting of the UDRP/URS.
> If you're asserting that those are the *intended outcomes* (i.e.
> inability to have one's day in court, to challenge the outcome of a
> UDRP/URS), that's a bold claim.
>
> Sincerely,
>
> George Kirikos
> 416-588-0269
> http://www.leap.com/
>
>
>
>
>
> On Wed, Oct 10, 2018 at 9:47 PM, claudio di gangi <ipcdigangi at gmail.com>
> wrote:
> > 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/
> >> _______________________________________________
> >> gnso-rpm-wg mailing list
> >> gnso-rpm-wg at icann.org
> >> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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