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

Wed Sep 5 19:31:21 UTC 2018

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<mailto: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<mailto:jonathan at get.club>>
Sent: Wednesday, September 5, 2018 1:59 PM
To: Doug at giga.law<mailto:Doug at giga.law>
Cc: gnso-rpm-wg <gnso-rpm-wg at icann.org<mailto: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<mailto: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<mailto: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<mailto:icann at leap.com>
Cc: gnso-rpm-wg <gnso-rpm-wg at icann.org<mailto: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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