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

Paul Tattersfield gpmgroup at gmail.com
Thu Sep 6 16:05:19 UTC 2018


It’s important not to confuse privacy with accountability. If a registrar
wishes to offer their client privacy that's a great service, but as the
registrar of record they are not innocent bystanders and they have to
accept a bit more responsibility for accountability..

On Thu, Sep 6, 2018 at 4:34 PM Michael Karanicolas <mkaranicolas at gmail.com>
wrote:

> Top marks for creativity, but if you're actually arguing that brand owners
> are not the primary beneficiaries of the URS and UDRP systems then we've
> entered the realm of the absurd. Clearly these systems were set up to
> protect IP interests - else the IPC would not be arguing so vociferously in
> support of them.
>
> I don't want to dig too much into the question of alternative penalties,
> as I think it drags us away from the core questions about cost recovery
> that this thread is focused on - but I will point out that privacy is not a
> "privilege" granted by companies - it is a human right.
>
> On Thu, Sep 6, 2018 at 10:35 AM Nahitchevansky, Georges <
> ghn at kilpatricktownsend.com> wrote:
>
>> Michael:
>>
>> Thank you for making my point. If the people who benefit from the
>> processes are expected to bear the cost, then registrars and registries who
>> benefit from the process of providing registration services and selling
>> domain names should likewise bear their costs. As they benefit from the
>> sale of domain names, they should bear their own costs just like brands
>> have to do so under the existing regime.  A simple solution would be for
>> registrars and registries to charge slightly more for a domain name to
>> cover these claimed costs.  After all you expect brand owners to do that.
>> What do you think ultimately happens.  These costs, which are not
>> insignificant and would be astronomical if you take George K's ill thought
>> out argument that everything should go to the courts, ultimately get passed
>> on to the consumer in some form or another (higher price point, lower
>> quality, less volume for the same cost, etc).  The bottom line is that
>> figuring out ways to address abusive registrations quickly and
>> efficiently is good for everyone, including consumers. (unless of course no
>> one cares about consumers, which I hope is not the case).
>>
>> As for penalties, you just need a little imagination here.  "Penalties"
>> does not simply mean pay money, it can include things such as losing
>> privileges or having obligations imposed.  For example, a repeat offender
>> that meets a certain threshold could risk losing privacy privileges,
>> disclosure of payment information, seizure of other names in their
>> portfolio, placement on a shared bad actor list etc..  Companies like eBay,
>> Amazon and others have found some ways to deal with repeat bad actors.
>> They are not full proof systems, but they help to some extent in  stemming
>> some bad activity.  Are registrars and registries not capable of coming up
>> with some measures as well to address known bad actors and their proxies.
>> I would propose that there be discussions on this point.
>>
>>
>>
>> *From:* mkaranicolas at gmail.com
>> *Sent:* September 5, 2018 10:07 PM
>> *To:* 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 agree with Mitch. It's completely impractical to expect registrars to
>> collect additional fees from parties that lose URS or UDRP proceedings.
>>
>> These systems are established to protect mark owners. It's only
>> reasonable to expect the people who benefit from these processes to pay for
>> them.
>>
>> On Wed, Sep 5, 2018 at 8:21 PM 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 x142https://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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