[GNSO-RPM-WG] [gnso-rpm-wg] URS / UDRP proposals -- data on registrar/registry compliance costs

Wed Oct 17 22:55:19 UTC 2018

Seems a potential issue that would arise regardless of the proposed penalties and create just as much havoc.

Michael R.

-----Original Message-----
From: gnso-rpm-wg [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of George Kirikos
Sent: Wednesday, September 12, 2018 4:02 AM
To: gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] URS / UDRP proposals -- data on registrar/registry compliance costs

Hi Michael,

How would you overcome the issue of a cybersquatter putting Expedia's name into the "WHOIS" as the registrant (i.e. identity theft), and the ensuing damage when "Expedia" is determined to be a 'cybersquatter' by a panel? I brought this up in the thread at:

https://mm.icann.org/pipermail/gnso-rpm-wg/2018-September/003291.html

Conceivably (depending on any policies that are adopted for penalties), Expedia might then be prevented from making any new registrations, being blacklisted, having to put up a security deposit for new registrations, etc., all of which would be disruptive to your company.

While I'm very sympathetic to your concern (I too want penalties for the bad actors), I think this and similar problems would need to be solved first, before ICANN implements such penalties. The courts would be the best place for that now, given they have better tools at their disposal (for ensuring proper service of a complaint, multiple levels of appeals, subpoena powers, etc.). [And I've put my money where my mouth is on this issue -- in the only domain dispute involving my company under the UDRP, I instead went to court and won costs against the other side.]

Sincerely,

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

On Tue, Sep 11, 2018 at 9:08 PM, Michael Graham (ELCA) via gnso-rpm-wg <gnso-rpm-wg at icann.org> wrote:
> Disagree.  Determining appropriate penalties for abuse and misuse of 
> domain names and the DNS is entirely within the scope of ICANN’s 
> powers and purview in order to ensure the stable and secure operation 
> of the internet.  Under Section 4.6(d) of its bylaws, ICANN is 
> committed to ensuring that it will adequately address issues of 
> competition, consumer protection, security, stability and resiliency, 
> malicious abuse issues, sovereignty concerns, and rights protection in 
> the New gTLD program.  Thus, determining whether a “loser pays” 
> program in connection with URS or UDRP proceedings would further the 
> interests of safety, stability and security is certainly within the scope of ICANN policy and this PDP’s review.
>
>
>
> Michael R. Graham
>
>
>
> From: gnso-rpm-wg [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of 
> Paul Keating
> Sent: Thursday, September 06, 2018 7:56 AM
> To: Mitch Stoltz <mitch at eff.org>
> Cc: gnso-rpm-wg at icann.org
>
>
> Subject: Re: [gnso-rpm-wg] URS / UDRP proposals -- data on 
> registrar/registry compliance costs
>
>
>
> I completely agree with the comments of Mr Stoltz!!
>
>
>
> This is a huge attempt at over reach.
>
>
>
> Paul Keating.
>
> Sent from my iPhone
>
>
> On 6 Sep 2018, at 03:21, Mitch Stoltz <mitch at eff.org> wrote:
>
> Monetary "penalties" on registrants, and any recovery of costs beyond 
> the arbitration itself, are beyond the scope of URS, UDRP, or indeed 
> any ICANN policy. Those are matters for national courts. Aside from 
> being a vast expansion of these dispute resolution policies, what 
> Georges proposes is unworkable in practice. How would "penalties" and 
> second- and third-order costs be collected from registrants? Would 
> registrars have to sue their customers to collect these funds on 
> behalf of trademark holders? Or would every registrant have to submit 
> to potentially unbounded contractual liability to unknown third parties as a condition of registration?
>
> Establishing a workable fee structure for URS (and UDRP) arbitrations 
> is one thing. Expanding these policies to become systems for 
> punishment of bad actors and broadly defined cost recovery is quite 
> another—that's the domain of courts and trademark law, not ICANN policies.
>
>
> Mitch Stoltz
>
> Senior Staff Attorney, EFF | 415-436-9333 x142
>
> https://www.eff.org/donate | https://act.eff.org/
>
> On 9/5/18 2:55 PM, Paul Tattersfield wrote:
>
> Georges I tend to agree....
>
> If this is going to be considered further then I think we need to look 
> at
>
> 1) if some registrars are suffering a disproportionate amount of costs 
> in proportion to the total number of domains they have under 
> management? and
>
> 2) if there any is correlation between the age of the domain and the 
> number of complaints?
>
>
>
> On Wed, Sep 5, 2018 at 8:31 PM Nahitchevansky, Georges 
> <ghn at kilpatricktownsend.com> wrote:
>
> Will this not raise the cost of URS and UDRP proceedings.  If so, who 
> pays that?  The problem is that what is being proposed is just another 
> cost shifting.  The basic cost issue arises from the fact that there 
> exists a sub-group of bad actor domain name registrants who register 
> infringing domain names at a fairly low cost and use such in often 
> nefarious ways (including in deceiving and defrauding consumers), 
> which then forces brand owners to expend large amounts of money to 
> enforce and protect their rights (staff time, investigator and 
> attorney’s fees, filing fees, responding at times to government 
> agencies, post URS and UDRP fees to secure a suspension or a transfer 
> of a domain name etc.).  All of this is further complicated by the 
> GDRP, which just adds more costs.  So the question in regards to 
> registrar and registry costs ignores the question about the brand 
> owner costs?  Typically the view espoused is that enforcement is part 
> of the brand owners cost of doing business, so the question is why 
> isn’t this cost to registrar and registries not the cost of doing 
> business. Registrars and registries, after all, basically promote the 
> registration (sale) of domain names for profit (registration of domain 
> names is the service/ product being sold, just like a brand owner 
> sells a product or service).  Registrar and registries are not akin to 
> a provider such as WIPO or NAF.  If we start going down the path of 
> costs, what about the added costs that result when registrars, for 
> example, promote the sales of infringing domain names or unnecessarily 
> complicate transfers of domains names after a successful UDRP, or 
> otherwise act in other ways that are prejudicial to the brand owner 
> constituency.  Perhaps what should be looked at in a more focused way 
> is the sub-group of domain name registrants that engage in actual and 
> clear cybersquatting and then figuring out some meaningful penalty 
> that can compensate everyone who bears a cost (i.e., brand owners, 
> providers, registrars and registrants).  It just seems that cost 
> shifting arguments miss the point that someone can waltz in, register 
> an infringing domain name for often less than $20 USD and create 
> significantly higher costs for a number of parties that in the 
> aggregate are quite significant.  My point here is that yes there are 
> costs, but they should not fall disproportionately on one constituency.  So if we start going down this path, then we should look at everyone’s costs and discuss what is fair and appropriate, as well as what penalties should be placed on bad actors.
>
>
>
>
>
> From: gnso-rpm-wg <gnso-rpm-wg-bounces at icann.org> On Behalf Of 
> Jonathan Frost
> Sent: Wednesday, September 5, 2018 2:39 PM
> To: Doug at giga.law
> Cc: gnso-rpm-wg <gnso-rpm-wg at icann.org>
> Subject: Re: [gnso-rpm-wg] URS / UDRP proposals -- data on 
> registrar/registry compliance costs
>
>
>
> I agree that it's not an issue that will arise with frequency, however 
> these types of issues do arise, they do create costs for the 
> Registries/Registrars.  In fact, like George pointed out, it arises 
> when a TM Holder prevails in URS, then decides that it actually wants 
> possession of the domain, and subsequently files a UDRP.
>
>
>
> My main point was that, in addition to the day to day time 
> commitments, there are unpredictable legal costs associated with the 
> administration of URS/UDRP (in part because rule sets laws or 
> contracts cannot cover all scenarios without being inefficiently burdensome).
>
>
>
> That's why it makes sense for there to be a cost-recovery mechanism, 
> so that the Registries/Registrars can be compensated costs related to 
> administration overhead in the same way that NAF/WIPO are compensated.
>
>
>
> Jonathan
>
>
>
> On Wed, Sep 5, 2018 at 2:19 PM Doug Isenberg <Doug at giga.law> wrote:
>
> Thanks, Jonathan, this seems like a very discrete issue that is 
> unlikely to arise with any frequency.  (Actually, now that I reread 
> your email, I’m not even sure what a “lifetime lock” is in the context 
> of a URS proceeding – can you explain?)  I’d love to know of any 
> real-life disputes that fit the situation you’ve described.
>
>
>
> Doug
>
>
>
>
>
> From: Jonathan Frost <jonathan at get.club>
> Sent: Wednesday, September 5, 2018 1:59 PM
> To: Doug at giga.law
> Cc: gnso-rpm-wg <gnso-rpm-wg at icann.org>
> Subject: Re: [gnso-rpm-wg] URS / UDRP proposals -- data on 
> registrar/registry compliance costs
>
>
>
> For instance, there is ambiguity about what action a registry should 
> take when a domain which is already the subject of a URS judgement & 
> lifetime lock receives a UDPR judgement that requires unlock & 
> transfer.  The URS rules don't account for this situation, and by 
> their letter, require that the domain not be unlocked.  However, the 
> registries are also required to comply with consensus policies (such as UDRP).
>
>
>
> Jonathan
>
>
>
> On Wed, Sep 5, 2018 at 1:47 PM Doug Isenberg <Doug at giga.law> wrote:
>
> What are some of the “ambiguities in complying with the rules”?
>
>
>
> Doug
>
>
>
>
>
> From: gnso-rpm-wg <gnso-rpm-wg-bounces at icann.org> On Behalf Of 
> Jonathan Frost
> Sent: Wednesday, September 5, 2018 1:15 PM
> To: icann at leap.com
> Cc: gnso-rpm-wg <gnso-rpm-wg at icann.org>
> Subject: Re: [gnso-rpm-wg] URS / UDRP proposals -- data on 
> registrar/registry compliance costs
>
>
>
> I agree that Registries and Registrars need to be able to recover the 
> cost of administering the URS/UDRPs, as part of the filing fee.
>
>
>
> The costs that the Registries/Registrars bear actually goes beyond 
> what Reg has said.  There are situations where we have to go to 
> outside counsel or even ICANN to resolve ambiguities in complying with the rules.
> Additionally, the 24 hour action requirement on locking a domain that 
> has received a URS complaint actually increases the resources that 
> have to be dedicated, beyond the actual number of minutes per 
> complaint, because compliance personal has to allocate/reserve a 
> certain time per day to perform the tasks, even if no complaint is received that day.
>
>
>
> Just like the arbitration administrators charge a cost recovery fee 
> for administration as part of the filing fee, it's just common since 
> that the Registries/Registrars would too.
>
>
>
> Jonathan Frost
>
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