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

Thu Sep 6 16:06:35 UTC 2018

Instead of talking about "penalties", let's instead turn it around and
think about providing additional *benefits* for signalling desirable
behaviour. While I don't agree with everything Georges N., wrote, I think
he's on the right track that brainstorming imaginative ideas can be
beneficial.

For example, the popular game Fortnite added a new emote to their game,
that was only available to those who enabled 2-factor authentication:

https://techcrunch.com/2018/08/23/fortnite-players-can-unlock-a-new-emote-if-they-enable-two-factor-authentication/

So, they wanted to promote security (which reduces support costs, stolen
accounts, etc.), and provided a benefit to encourage adoption.

This is an example of "gamification" --
https://en.wikipedia.org/wiki/Gamification

In the ICANN context, perhaps we want to encourage registrants to become
more familiar with the URS and UDRP, i.e. an educational goal. One
possibility is to develop an online course or quiz about cybersquatting,
doing TM lookups before registering domains, etc.. Upon successful
completion by registrants, one can get a reward, e.g. the ability to add an
emoji or checkmark or badge next to your name in the WHOIS/RDAP. Or 5 extra
days to respond to a URS/UDRP. Or some other creative benefit. (1 cent per
year reduction in ICANN fees for all domains!) Folks will expend efforts to
gain "meaningless" social status like a checkmark in Twitter, or unlocking
an emote in Fortnite, etc.

Add a registered legal contact to your WHOIS (which encourages contact and
settlement of disputes brought by 3rd parties even before getting to a
URS/UDRP), and get similar kinds of benefits.

Have a below-average rate of abuse, UDRP complaints, URS complaints etc. at
your registrar, and get a certificate from ICANN which can be used for
marketing (gold star, etc.) (or some other benefits, fee reduction).

Have a faster-than-average turnaround time for making decisions by URS/UDRP
panelists, and get your name in "bold" on the list of panelists, or have a
rabbit icon next to your name. :-)

Sincerely,

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

On Thu, Sep 6, 2018 at 11:33 AM, 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
>>>>
>>>> _______________________________________________
>>>> gnso-rpm-wg mailing list
>>>> gnso-rpm-wg at icann.org
>>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>>>
>>>> _______________________________________________
>>>> gnso-rpm-wg mailing list
>>>> gnso-rpm-wg at icann.org
>>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>>>
>>>>
>>>> ------------------------------
>>>>
>>>> Confidentiality Notice:
>>>> This communication constitutes an electronic communication within the
>>>> meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section
>>>> 2510, and its disclosure is strictly limited to the recipient intended by
>>>> the sender of this message. This transmission, and any attachments, may
>>>> contain confidential attorney-client privileged information and attorney
>>>> work product. If you are not the intended recipient, any disclosure,
>>>> copying, distribution or use of any of the information contained in or
>>>> attached to this transmission is STRICTLY PROHIBITED. Please contact us
>>>> immediately by return e-mail or at 404 815 6500, and destroy the original
>>>> transmission and its attachments without reading or saving in any manner.
>>>>
>>>> ------------------------------
>>>>
>>>> ***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal
>>>> tax advice contained in this communication (including any attachments) is
>>>> not intended or written to be used, and cannot be used, for the purpose of
>>>> (i) avoiding penalties under the Internal Revenue Code or (ii) promoting,
>>>> marketing or recommending to another party any transaction or matter
>>>> addressed herein.
>>>> _______________________________________________
>>>> gnso-rpm-wg mailing list
>>>> gnso-rpm-wg at icann.org
>>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>>
>>>
>>>
>>> _______________________________________________
>>> gnso-rpm-wg mailing listgnso-rpm-wg at icann.orghttps://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>>
>>>
>>> _______________________________________________
>>> gnso-rpm-wg mailing list
>>> gnso-rpm-wg at icann.org
>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>
>>
> _______________________________________________
> gnso-rpm-wg mailing list
> gnso-rpm-wg at icann.org
> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20180906/cd49ebc8/attachment-0001.html>