[gnso-rpm-wg] URS / UDRP proposals -- data on registrar/registry compliance costs
Mitch Stoltz
mitch at eff.org
Thu Sep 6 00:21:09 UTC 2018
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 <mailto: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
> <mailto: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
> <mailto: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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